Intellectual Property Law

INTELLECTUAL PROPERTY LAW
C. Related Rights
1. Moral Rights
Article 6bis, Berne
Sections 193-197, 198 As Amended, 199, IPC
193.2. To make any alterations of his work prior to, or to withhold it from
publication;
193.3. To object to any distortion, mutilation or other modification of, or other
derogatory action in relation to, his work which would be prejudicial to his honor or
reputation; and
Article 6bis, Berne

Moral Rights:
1. To claim authorship; to object to certain modifications and other derogatory
actions;
2. After the author's death; 3. Means of redress
(1) Independently of the author's economic rights, and even after the transfer of the
said rights, the author shall have the right to claim authorship of the work and to
object to any distortion, mutilation or other modification of, or other derogatory
action in relation to, the said work, which would be prejudicial to his honor or
reputation.
(2) The rights granted to the author in accordance with the preceding paragraph
shall, after his death, be maintained, at least until the expiry of the economic rights,
and shall be exercisable by the persons or institutions authorized by the legislation
of the country where protection is claimed. However, those countries whose
legislation, at the moment of their ratification of or accession to this Act, does not
provide for the protection after the death of the author of all the rights set out in the
preceding paragraph may provide that some of these rights may, after his death,
cease to be maintained.
(3) The means of redress for safeguarding the rights granted by this Article shall be
governed by the legislation of the country where protection is claimed.
Sections 193-197, 198 As Amended, 199, IPC
CHAPTER X
MORAL RIGHTS
Section 193. Scope of Moral Rights. - The author of a work shall, independently of
the economic rights in Section 177 or the grant of an assignment or license with
respect to such right, have the right:
193.1. To require that the authorship of the works be attributed to him, in
particular, the right that his name, as far as practicable, be indicated in a prominent
way on the copies, and in connection with the public use of his work;
193.4. To restrain the use of his name with respect to any work not of his own
creation or in a distorted version of his work. (Sec. 34, P.D. No. 49)
Section 194. Breach of Contract. - An author cannot be compelled to perform his
contract to create a work or for the publication of his work already in existence.
However, he may be held liable for damages for breach of such contract. (Sec. 35,
P.D. No. 49)
Section 195. Waiver of Moral Rights. - An author may waive his rights mentioned in
Section 193 by a written instrument, but no such waiver shall be valid where its
effects is to permit another:
195.1. To use the name of the author, or the title of his work, or otherwise to
make use of his reputation with respect to any version or adaptation of his work
which, because of alterations therein, would substantially tend to injure the literary
or artistic reputation of another author; or
195.2. To use the name of the author with respect to a work he did not create.
(Sec. 36, P.D. No. 49)
Section 196. Contribution to Collective Work. - When an author contributes to a
collective work, his right to have his contribution attributed to him is deemed waived
unless he expressly reserves it. (Sec. 37, P.D. No. 49)
Section 197. Editing, Arranging and Adaptation of Work. - In the absence of a
contrary stipulation at the time an author licenses or permits another to use his
work, the necessary editing, arranging or adaptation of such work, for publication,
broadcast, use in a motion picture, dramatization, or mechanical or electrical
reproduction in accordance with the reasonable and customary standards or
requirements of the medium in which the work is to be used, shall not be deemed
to contravene the author's rights secured by this chapter. Nor shall complete
destruction of a work unconditionally transferred by the author be deemed to violate
such rights. (Sec. 38, P.D. No. 49)
SEC. 198. Term of Moral Rights. 198.1. the right of an author under Section
193.1. shall last during the lifetime of the author and in perpetuity after his death
while the rights under Sections 193.2. 193.3. and 193.4. shall be coterminous with
the economic rights, the moral rights shall not be assignable or subject to license.
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the person or persons to be charged with the posthumous enforcement of these
rights shall be named in a written instrument which shall be filed with the National
Library. In default of such person or persons, such enforcement shall devolve upon
either the authors heirs, and in default of the heirs, the Director of the National
Library. (Sec. 17, R.A. 10372)
Section 199. Enforcement Remedies. - Violation of any of the rights conferred by
this Chapter shall entitle those charged with their enforcement to the same rights
and remedies available to a copyright owner. In addition, damages which may be
availed of under the Civil Code may also be recovered. Any damage recovered
after the creator's death shall be held in trust for and remitted to his heirs, and in
default of the heirs, shall belong to the government. (Sec. 40, P D No. 49)
2. Rights to Proceeds in Subsequent Transfers (Droit De Suite or

Follow Up Rights)
Sections 200-201, IPC
CHAPTER XI
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
Section 200. Sale or Lease of Work. - In every sale or lease of an original work of
painting or sculpture or of the original manuscript of a writer or composer,
subsequent to the first disposition thereof by the author, the author or his heirs shall
have an inalienable right to participate in the gross proceeds of the sale or lease to
the extent of five percent (5%). This right shall exist during the lifetime of the author
and for fifty (50) years after his death. (Sec. 31, P.D. No. 49)
Section 202. Definitions. - For the purpose of this Act, the following terms shall
have the following meanings:
202.1. "Performers" are actors, singers, musicians, dancers, and other persons
who act, sing, declaim, play in, interpret, or otherwise perform literary and artistic
work;
202.2. "Sound recording" means the fixation of the sounds of a performance or of
other sounds, or representation of sound, other than in the form of a fixation
incorporated in a cinematographic or other audiovisual work;
202.3. An "audiovisual work or fixation" is a work that consists of a series of
related images which impart the impression of motion, with or without
accompanying sounds, susceptible of being made visible and, where accompanied
by sounds, susceptible of being made audible;
202.4. "Fixation" means the embodiment of sounds, or of the representations
thereof, from which they can be perceived, reproduced or communicated through a
device;
202. 5. "Producer of a sound recording" means the person, or the legal entity, who
or which takes the initiative and has the responsibility for the first fixation of the
sounds of a performance or other sounds, or the representation of sounds;
202.6. "Publication of a fixed performance or a sound recording" means the
offering of copies of the fixed performance or the sound recording to the public, with
the consent of the right holder: Provided, That copies are offered to the public in
reasonable quality;
Section 201. Works Not Covered. - The provisions of this Chapter shall not apply
to prints, etchings, engravings, works of applied art, or works of similar kind
wherein the author primarily derives gain from the proceeds of reproductions. (Sec.
33, P.D. No. 49)
202.7. "Broadcasting" means the transmission by wireless means for the public
reception of sounds or of images or of representations thereof; such transmission
by satellite is also "broadcasting" where the means for decrypting are provided to
the public by the broadcasting organization or with its consent;
3. Neighboring Rights
202.8. "Broadcasting organization" shall include a natural person or a juridical

entity duly authorized to engage in broadcasting; and
Sec. 202, IPC

Sec. 212, IPC
Sec. 202, IPC
CHAPTER XII
RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND
BROADCASTING ORGANIZATIONS
202.9 "Communication to the public of a performance or a sound recording"

means the transmission to the public, by any medium, otherwise than by
broadcasting, of sounds of a performance or the representations of sounds fixed in
a sound recording. For purposes of Section 209, "communication to the public"
includes making the sounds or representations of sounds fixed in a sound
recording audible to the public.
Sec. 212, IPC
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CHAPTER XV
LIMITATIONS ON PROTECTION
Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply
where the acts referred to in those Sections are related to:
212.1.
The use by a natural person exclusively for his own personal purposes;
212.2.
Using short excerpts for reporting current events;
212.3.
Use solely for the purpose of teaching or for scientific research; and
212.4. Fair use of the broadcast subject to the conditions under Section 185.
(Sec. 44, P.D. No. 49a)
a. Rights of Performers
Sections 203-204, as amended, 205-207, IPC
Sec. 215, IPC
Section 203. Scope of Performers' Rights. - Subject to the provisions of Section
212, performers shall enjoy the following exclusive rights:
203.1.
As regards their performances, the right of authorizing:
(a)
The broadcasting and other communication to the public of their
performance; and
(b)
The fixation of their unfixed performance.
203.2. the right of authorizing the direct or indirect reproduction of their

performances fixed in sound recordings or audiovisual works or fixations in any
manner or form;
203.3. Subject to the provisions of Section 206, the right of authorizing the first
public distribution of the original and copies of their performance fixed in sound
recordings or audiovisual works or fixations through sale or rental of other forms of
transfer of ownership;
203.4. the right of authorizing the commercial rental to the public of the original and
copies of their performances fixed in sound recordings or audiovisual works or
fixations, even after distribution of them by, or pursuant to the authorization by the
performer; and
203.5. the right of authorizing the making available to the public of their
performances fixed in sound recordings or audiovisual works or fixations, by wire or
wireless means, in such a way that members of the public may access them from a
place and time individually chosen by them. (Sec. 42, P.D. No. 49A) (Sec. 18, R.A.
10372)
Section 204. Moral Rights of Performers. - 204.1. Independently of a performers
economic rights, the performer shall, as regards his live aural performances or
performances fixed in sound recordings or in audiovisual works or fixations, have
the right to claim to be identified as the performer of his performances, except
where the omission is dictated by the manner of the use of the performance, and to
object to any distortion, mutilation or other modification of his performances that
would be prejudicial to his reputation. (Sec. 19, R.A. 10372)
204.2. The rights granted to a performer in accordance with Subsection 203.1
shall be maintained and exercised fifty (50) years after his death, by his heirs, and
in default of heirs, the government, where protection is claimed. (Sec. 43, P.D. No.
49)
Section 205. Limitation on Right. - 205.1. Subject to the provisions of Section 206,
once the performer has authorized the broadcasting or fixation of his performance,
the provisions of Sections 203 shall have no further application.
205.2. The provisions of Section 184 and Section 185 shall apply mutatis
mutandis to performers. (n)
Section 206. Additional Remuneration for Subsequent Communications or
Broadcasts. - Unless otherwise provided in the contract, in every communication to
the public or broadcast of a performance subsequent to the first communication or
broadcast thereof by the broadcasting organization, the performer shall be entitled
to an additional remuneration equivalent to at least five percent (5%) of the original
compensation he or she received for the first communication or broadcast. (n)
Section 207. Contract Terms. - Nothing in this Chapter shall be construed to
deprive performers of the right to agree by contracts on terms and conditions more
favorable for them in respect of any use of their performance. (n)
Sec. 215, IPC
Section 215. Term of Protection for Performers, Producers and Broadcasting
Organizations. - 215.1. The rights granted to performers and producers of sound
recordings under this law shall expire:
(a)
For performances not incorporated in recordings, fifty (50) years from the
end of the year in which the performance took place; and
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(b)
For sound or image and sound recordings and for performances
incorporated therein, fifty (50) years from the end of the year in which the recording
took place.
215.2. In case of broadcasts, the term shall be twenty (20) years from the date
the broadcast took place. The extended term shall be applied only to old works with
subsisting protection under the prior law. (Sec. 55, P.D. No. 49a)
b. Rights of Producers of Sound Recording

Section 171, IP Code as amended
Sections 208 as amended, 209-210, IPC
Sec. 215, IPC
Section 171. Definitions. - For the purpose of this Act, the following terms have the
following meaning:
171.1.
"Author" is the natural person who has created the work;
171.2. A "collective work" is a work which has been created by two (2) or more
natural persons at the initiative and under the direction of another with the
understanding that it will be disclosed by the latter under his own name and that
contributing natural persons will not be identified;
171.3. Communication to the public or communicate to the public means any
communication to the public, including broadcasting, rebroadcasting, retransmitting
by cable, broadcasting and retransmitting by satellite, and includes the making of a
work available to the public by wire or wireless means in such a way that members
of the public may access these works from a place and time individually chosen by
them; (Sec. 4, R.A. 10372)
171.4. A "computer" is an electronic or similar device having informationprocessing capabilities, and a "computer program" is a set of instructions
expressed in words, codes, schemes or in any other form, which is capable when
incorporated in a medium that the computer can read, of causing the computer to
perform or achieve a particular task or result;
171.5. "Public lending" is the transfer of possession of the original or a copy of a
work or sound recording for a limited period, for non-profit purposes, by an
institution the services of which are available to the public, such as public library or
archive;
171.6. "Public performance", in the case of a work other than an audiovisual
work, is the recitation, playing, dancing, acting or otherwise performing the work,
either directly or by means of any device or process; in the case of an audiovisual

work, the showing of its images in sequence and the making of the sounds
accompanying it audible; and, in the case of a sound recording, making the
recorded sounds audible at a place or at places where persons outside the normal
circle of a family and that family's closest social acquaintances are or can be
present, irrespective of whether they are or can be present at the same place and
at the same time, or at different places and/or at different times, and where the
performance can be perceived without the need for communication within the
meaning of Subsection 171.3;
171.7. "Published works" means works, which, with the consent of the authors,
are made available to the public by wire or wireless means in such a way that
members of the public may access these works from a place and time individually
chosen by them: Provided, That availability of such copies has been such, as to
satisfy the reasonable requirements of the public, having regard to the nature of the
work;
171.8. "Rental" is the transfer of the possession of the original or a copy of a
work or a sound recording for a limited period of time, for profit-making purposes;
171.9. Reproduction is the making of one (1) or more copies, temporary or
permanent, in whole or in part, of a work or a sound recording in any manner or
form without prejudice to the provisions of Section 185 of this Act (Sec. 41[E], P.D.
No. 49a)(Sec. 5, R.A. 10372);
171.10. A "work of applied art" is an artistic creation with utilitarian functions or
incorporated in a useful article, whether made by hand or produced on an industrial
scale;
171.11. A "work of the Government of the Philippines" is a work created by an
officer or employee of the Philippine Government or any of its subdivisions and
instrumentalities, including government-owned or controlled corporations as a part
of his regularly prescribed official duties;
171.12. Technological measure means any technology, device or component that,
in the normal course of its operation, restricts acts in respect of a work,
performance or sound recording, which are not authorized by the authors,
performers or producers of sound recordings concerned or permitted by law;
171.13. Rights management information means information which identifies the
work, sound recording or performance; the author of the work, producer of the
sound recording or performer of the performance; the owner of any right in the
work, sound recording or performance; or information about the terms and
conditions of the use of the work, sound recording or performance; and any number
or code that represent such information, when any of these items is attached to a
copy of the work, sound recording or fixation of performance or appears in
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conjunction with the communication to the public of a work, sound recording or
performance. (Sec. 6, R.A. 10372)
(a)
For performances not incorporated in recordings, fifty (50) years from the
end of the year in which the performance took place; and
Sections 208 as amended, 209-210, IPC

CHAPTER XIII
PRODUCERS OF SOUND RECORDINGS
Section 208. Scope of Right. - Subject to the provisions of Section 212, producers
of sound recordings shall enjoy the following exclusive rights:
208.1. The right to authorize the direct or indirect reproduction of their sound
recordings, in any manner or form; the placing of these reproductions in the market
and the right of rental or lending;
208.2. The right to authorize the first public distribution of the original and copies
of their sound recordings through sale or rental or other forms of transferring
ownership; and
208.3. The right to authorize the commercial rental to the public of the original
and copies of their sound recordings, even after distribution by them by or pursuant
to authorization by the producer. (Sec. 46, P.D. No. 49a)
208.4. the right to authorize the making available to the public of their sound
recordings in such a way that members of the public may access the sound
recording from a place and at a time individually chosen or selected by them, as
well as other transmissions of a sound recording with like effect. (Sec. 20, R.A.
10372)
Section 209. Communication to the Public. - If a sound recording published for
commercial purposes, or a reproduction of such sound recording, is used directly
for broadcasting or for other communication to the public, or is publicly performed
with the intention of making and enhancing profit, a single equitable remuneration
for the performer or performers, and the producer of the sound recording shall be
paid by the user to both the performers and the producer, who, in the absence of
any agreement shall share equally. (Sec. 47, P.D. No. 49a)
Section 210. Limitation of Right. - Sections 184 and 185 shall apply mutatis
mutandis to the producer of sound recordings. (Sec. 48, P.D. No. 49a)
Sec. 215, IPC
Organizations. - 215.1. The rights granted to performers and producers of sound
recordings under this law shall expire:
(b)
For sound or image and sound recordings and for performances
incorporated therein, fifty (50) years from the end of the year in which the recording
took place.
c. Rights of Broadcasting Organizations

Section 171.3, IPC as amended,
Section 211, IPC
Sec. 215.2, IPC
ABC-CBN v. Phil. Multi-Media (2009)
Section 171.3, IPC as amended,
171.3. Communication to the public or communicate to the public means any
communication to the public, including broadcasting, rebroadcasting, retransmitting
by cable, broadcasting and retransmitting by satellite, and includes the making of a
work available to the public by wire or wireless means in such a way that members
of the public may access these works from a place and time individually chosen by
them (Sec. 4, R.A. 10372)
Section 211, IPC
CHAPTER XIV
BROADCASTING ORGANIZATIONS
Section 211. Scope of Right. - Subject to the provisions of Section 212,
broadcasting organizations shall enjoy the exclusive right to carry out, authorize or
prevent any of the following acts:
211.1.
The rebroadcasting of their broadcasts;
211.2. The recording in any manner, including the making of films or the use of
video tape, of their broadcasts for the purpose of communication to the public of
television broadcasts of the same; and
211.3. The use of such records for fresh transmissions or for fresh recording.
(Sec. 52, P.D. No. 49)
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Sec. 215.2, IPC
Organizations.
ABS-CBN Broadcasting v. Philippine Multi-Media System (2009)

FACTS: ABS-CBN contends that PMSIs unauthorized rebroadcasting of Channels
2 and 23 by replaying shows therefrom on digital direct-to-home (DTH) television all
over the Philippines is an infringement of ABS-CBNs broadcasting rights and
copyright under the IP Code. PMSI counters that it is merely following the mustcarry rule, which requires all cable television system operators, to which it is akin,
to must-carry the television signals of the authorized television broadcast stations
ISSUE: Is PMSI engaged in rebroadcasting and is therefore in violation of ABSCBNs rights?
HELD: PMSI is not engaged in rebroadcasting and thus cannot be considered to
have infringed ABS-CBNs broadcasting rights and copyright
Section 202.7 of the IP Code, thus, provides two instances wherein there is
broadcasting, to wit:
1. The transmission by wireless means for the public reception of sounds or of
images or of representations thereof; and
2. The transmission by satellite for the public reception of sounds or of images or of
representations thereof where the means for decrypting are provided to the public
by the broadcasting organization or with its consent.
It is under the second category that PMSIs service must be examined since it is
satellite-based. The elements of such category are as follows:
1. There is transmission of sounds or images or of representations thereof;
2. The transmission is through satellite;
3. The transmission is for public reception; and
4. The means for decrypting are provided to the public by the broadcasting
organization or with its consent.
On the other hand, rebroadcasting as defined in Article 3(g) of the International
Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of
which the Republic of the Philippines is a signatory, is the simultaneous
broadcasting by one broadcasting organization of the broadcast of another
broadcasting organization.
It is only the presence of all the above elements can a determination that PMSI is
broadcasting and consequently, rebroadcasting ABS-CBNs signals in violation of
Sections 211 and 177 of the IP Code, may be arrived at.
Accordingly, the transmission contemplated under Section 202.7 of the IP Code
presupposes that the origin of the signals is the broadcaster. Hence, a program that
is broadcasted is attributed to the broadcaster. In the same manner, the
rebroadcasted program is attributed to the rebroadcaster.
In the case at hand, PMSI is not the origin nor does it claim to be the origin of the
programs broadcasted by the Appellee. Appellant did not make and transmit on its
own but merely carried the existing signals of the Appellee. When Appellants
subscribers view Appellees programs in Channels 2 and 23, they know that the
origin thereof was the Appellee.
ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not
pass itself off as the origin or author of such programs. Insofar as Channels 2 and
23 are concerned, PMSI merely retransmits the same in accordance with
Memorandum Circular 04-08-88. With regard to its premium channels, it buys the
channels from content providers and transmits on an as-is basis to its viewers.
Clearly, PMSI does not perform the functions of a broadcasting organization; thus,
it cannot be said that it is engaged in rebroadcasting Channels 2 and 23.
PMSIs services are similar to a cable television system because the services it
renders fall under cable retransmission. When a radio or television program is
being broadcast, it can be retransmitted to new audiences by means of cable or
wire. In the early days of cable television, it was mainly used to improve signal
reception, particularly in so-called shadow zones, or to distribute the signals in
large buildings or building complexes. With improvements in technology, cable
operators now often receive signals from satellites before retransmitting them in an
unaltered form to their subscribers through cable.
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In principle, cable retransmission can be either simultaneous with the broadcast

over-the-air or delayed (deferred transmission) on the basis of a fixation or a
reproduction of a fixation. Furthermore, they might be unaltered or altered, for
example through replacement of commercials, etc. In general, however, the term
retransmission seems to be reserved for such transmissions which are both
simultaneous and unaltered.
The Rome Convention does not grant rights against unauthorized cable
retransmission. Without such a right, cable operators can retransmit both domestic
and foreign over the air broadcasts simultaneously to their subscribers without
permission from the broadcasting organizations or other rightholders and without
obligation to pay remuneration.
Thus, while the Rome Convention gives broadcasting organizations the right to
authorize or prohibit the rebroadcasting of its broadcast, however, this protection
does not extend to cable retransmission. The retransmission of ABS-CBNs signals
by PMSI which functions essentially as a cable television does not therefore
constitute rebroadcasting in violation of the formers intellectual property rights
under the IP Code.
and more effective use of communications, radio and television broadcasting

facilities, and to maintain effective competition among private entities in these
activities whenever the Commission finds it reasonably feasible.
The Must-Carry Rule favors both broadcasting organizations and the public. It
prevents cable television companies from excluding broadcasting organization
especially in those places not reached by signal. Also, the rule prevents cable
television companies from depriving viewers in far-flung areas the enjoyment of
programs available to city viewers. In fact, this Office finds the rule more
burdensome on the part of the cable television companies. The latter carries the
television signals and shoulders the costs without any recourse of charging. On the
other hand, the signals that are carried by cable television companies are
dispersed and scattered by the television stations and anybody with a television set
is free to pick them up.
Indeed, intellectual property protection is merely a means towards the end of
making society benefit from the creation of its men and women of talent and
genius. This is the essence of intellectual property laws, and it explains why certain
products of ingenuity that are concealed from the public are outside the pale of
protection afforded by the law. It also explains why the author or the creator enjoys
no more rights than are consistent with public welfare.
MUST-CARRY RULE
It must be emphasized that the law on copyright is not absolute. The IP Code
provides that:
Sec. 184. Limitations on Copyright. 184.1. Notwithstanding the provisions of Chapter V, the following acts shall not
constitute infringement of copyright:
xxxx
(h) The use made of a work by or under the direction or control of the Government,
by the National Library or by educational, scientific or professional institutions
where such use is in the public interest and is compatible with fair use;
The carriage of ABS-CBNs signals by virtue of the must-carry rule in Memorandum
Circular No. 04-08-88 is under the direction and control of the government though
the NTC which is vested with exclusive jurisdiction to supervise, regulate and
control telecommunications and broadcast services/facilities in the Philippines.26
The imposition of the must-carry rule is within the NTCs power to promulgate rules
and regulations, as public safety and interest may require, to encourage a larger
NATURE OF FRANCHISE
ABS-CBN was granted a legislative franchise under Republic Act No. 7966, Section
1 of which authorizes it to construct, operate and maintain, for commercial
purposes and in the public interest, television and radio broadcasting in and
throughout the Philippines x x x. Section 4 thereof mandates that it shall provide
adequate public service time to enable the government, through the said
broadcasting stations, to reach the population on important public issues; provide at
all times sound and balanced programming; promote public participation such as in
community programming; assist in the functions of public information and education
x x x.
A franchise is a mere privilege which may be reasonably burdened with some form
of public service. In truth, radio and television broadcasting companies, which are
given franchises, do not own the airwaves and frequencies through which they
transmit broadcast signals and images. They are merely given the temporary
privilege of using them. Since a franchise is a mere privilege, the exercise of the
privilege may reasonably be burdened with the performance by the grantee of
some form of public service.
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D. Presidential Decree No. 285 (Repealed by R.A. 8293, Sec. 239.1)

Sec. 239, IPC
PRESIDENTIAL DECREE No. 285 September 3, 1973
AUTHORIZING THE COMPULSORY LICENSING OR REPRINTING OF
EDUCATIONAL, SCIENTIFIC OR CULTURAL BOOKS AND MATERIALS AS A
TEMPORARY OR EMERGENCY MEASURE WHENEVER THE PRICES
THEREOF BECOME SO EXORBITANT AS TO BE DETRIMENTAL TO THE
NATIONAL INTEREST
WHEREAS, the spiralling of prices of educational, scientific or cultural books and
materials has reached very serious proportion;
WHEREAS, it is in the national interest that such books and materials be made
available to everybody at the least cost; and
WHEREAS, this can be achieved by the compulsory licensing and reprinting of
both domestic and foreign educational, scientific or cultural books and materials, as
a temporary or emergency measure, whenever their prices become exorbitant;
NOW, THEREFORE, I, FERDINAND E. MARCOS, President of the Philippines, by
virtue of the powers vested in me by the Constitution as Commander-in-Chief of all
the Armed Forces of the Philippines, and pursuant to Proclamation No. 1081 dated
September 21, 1972, and General Order No. 1 dated September 22, 1972, do
hereby order and decree as follows:
Section 1. Whenever the price of any educational, scientific or cultural book,
pamphlet and other written materials, whether of domestic or foreign origin, has
become so exorbitant as to be detrimental to the national interest, as determined
and declared by a committee composed of the Secretary of Education and Culture,
such book, pamphlet or written material may be reprinted by the Government or by
any private printer or printers for a limited period and only for the purpose of making
the same available to the people at reasonable cost.
Section 2. The reprinted books, pamphlets and materials shall bear proper
acknowledgment of the source, authorship, copyright proprietors and past printers,
if known, as well as the names and addresses of the reprinter or reprinters. If
abbreviated or edited in any manner, such fact shall be stated be stated. The
following inscription shall also appear on the covers thereof: "Export of this Book or
material from the Philippines is punishable by law." The export of such reprints
under any circumstance is hereby prohibited.
Section 3. The reprinting of the above books, pamphlets and materials shall be
subject to the condition that the reprinter shall pay, in local currency, a royalty of
three per centum (3%) of the gross selling price, if so demanded by the authors,
publishers or copyright proprietors concerned, whoever is legally entitled thereto:
Provided, That in the case of non-resident authors, publishers or copyright
proprietors, the payment of the royalties shall be made only to them personally in
the Philippines or their respective representative or branch offices in the
Philippines.
Section 4. Any person, natural or judicial, who shall violate the provisions of this
Decree shall, upon conviction thereof, be punished by imprisonment of not less
than Five Thousand Pesos nor more than two Ten Thousand Pesos. If the violation
is committed by a firm, company or corporation, the manager or person in charge of
the management of the business thereof shall be responsible thereof. Books and
materials printed or published or exported in violation of this Decree shall be
immediately confiscated and the establishment that printed or published or
exported them shall forthwith be closed and its operation discontinued.
Section 5. The Committee herein named shall promulgate rules and regulations for
the implementation of this Degree.
Section 6. This Decree shall take effect immediately, the provisions of any law,
decree, executive order, treaty or executive agreement to the contrary
notwithstanding.
Done in the City of Manila, this 3rd day of September, in the year of Our Lord,
nineteen hundred and seventy-three.
Sec. 239, IPC
Section 239. Repeals. - 239.1.
All Acts and parts of Acts inconsistent herewith,
more particularly Republic Act No. 165, as amended; Republic Act No. 166, as
amended; and Articles 188 and 189 of the Revised Penal Code; Presidential
Decree No. 49, including Presidential Decree No. 285, as amended, are hereby
repealed.
239.2. Marks registered under Republic Act No. 166 shall remain in force but
shall be deemed to have been granted under this Act and shall be due for renewal
within the period provided for under this Act and, upon renewal shall be reclassified
in accordance with the International Classification. Trade names and marks
registered in the Supplemental Register under Republic Act No. 166 shall remain in
force but shall no longer be subject to renewal.
239.3. The provisions of this Act shall apply to works in which copyright
protection obtained prior to the effectivity of this Act is subsisting: Provided, That
the application of this Act shall not result in the diminution of such protection. (n)
Page | 8
E. Republic Act. No. 9239 (Optical Media Act) and the Optical
Media Board Rules of Procedure
See Separate File
F. Republic Act No. 10088 or the Anti-Camcording Act of 2010.

REPUBLIC ACT NO. 10088
AN ACT TO PROHIBIT AND PENALIZE THE UNAUTHORIZED USE,
POSSESSION AND/OR CONTROL OF AUDIOVISUAL RECORDING DEVICES
FOR THE UNAUTHORIZED RECORDING OF CINEMATOGRAPHIC FILMS AND
OTHER AUDIOVISUAL WORKS AND/OR THEIR SOUNDTRACKS IN AN
EXHIBITION FACILITY, PROVIDING PENALTIES THEREFOR AND FOR OTHER
PURPOSES
Be it enacted by the Senate and House of Representatives of the Philippines in
Congress assembled:
Section 1. Short Title. - This Act shall be known as the "Anti-Camcording Act of
2010".
Section 2. Definition of Terms. - For purposes of this Act:
(a)"Audiovisual work" means a work that consists of a series of related images
which are intrinsically intended to be shown by the use of machines or devices
such as projectors, viewers or electronic equipment, together with accompanying
sounds, if any, regardless of the nature of the material objects, such as films or
tapes, in which the works are embodied.
(b)"Audiovisual recording device" means a digital or analog photographic or video
camera, or any other technology or device capable of enabling the recording or
transmission of a cinematographic film or other audiovisual work, or any part
thereof, regardless of whether audiovisual recording is the sole or primary purpose
of the device.
(c)"Authorized person" means the members of the Philippine National Police (PNP)
and the National Bureau of Investigation (NBI) and/or any other person duly
authorized by the same to exercise powers conferred upon by this Act.
(d)"Camcording" means any of the unlawful acts enumerated under Section 3 of
this Act.
(e)"Cinematographic film" means any audiovisual work consisting of a series of

related images which, when shown in succession, impart an impression of motion,
together with accompanying sounds, if any.
(f)"Copy" means any article or thing in which the visual images or sounds
comprised in any cinematographic film or audiovisual work are embodied, and
includes the making of a copy which is in electronic format or transient or incidental
to some other use thereof.
(g)"Copyright owner" means any one who has the exclusive rights comprised in a
copyright as provided under Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines and related international treaties,
conventions or agreements to which the Republic of the Philippines is a party.
(h)"Exclusive licensee" means a licensee who is authorized in writing and who, on
behalf of the owner or prospective owner of copyright, to the exclusion of all other
persons, is authorized to do an act within the Philippines that, by virtue of this Act,
the owner of the copyright would, but for the license, have the exclusive right to do
or to perform.
(i)"Exhibition facility" means any cinema, film theater, screening room, projection
room or other venue that is used for the public exhibition of a cinematographic film
or audiovisual work, whether or not a fee is chargeable.
(j)"Operator of an exhibition facility" means any person or entity who holds or is
required to hold a license by the Securities and Exchange Commission CSEC, for
companies and partnerships), the Department of Trade and Industry ('DTI', for sole
proprietorships), the Movie and Television Review and Classification Board
(MTRCB) or any and all other relevant government offices that have, or will have
jurisdiction over exhibition facilities to operate the exhibition facility.
(k)"Relevant authority" means the officers, members and responsible personnel of
law enforcement agencies such as the PNP and their adjuncts and the NBI.
(l)'Transmit" means to convey by any means, whether over a path or a combination
of paths, provided by a material substance or by wireless means or otherwise, and
whether or not in response to a request made.
Section 3. Acts Constituting Unauthorized Possession, Use and/or Control of
Audiovisual Recording Devices. - It shall be unlawful for any person, at a time when
copyright subsists in a cinematographic film or other audiovisual work or its
soundtrack and without the authorization of the copyright owner or exclusive
licensee thereof, to:
Page | 9

(a)use or attempt to use an audiovisual recording device to transmit or make a copy
of any performance in an exhibition facility of such cinematographic film or other
audiovisual work or its soundtrack, or any part thereof;
(b)have in his/her possession, an audiovisual recording device in an exhibition
facility, with the intent of using or attempts to use the audiovisual recording device
to transmit or make a copy of any performance in the exhibition facility of such
cinematographic film or other audiovisual work or its soundtrack, or any part
thereof; or
(c) aid, abet or connive in the commission of the acts prohibited under this section.
Section 4. Penalties. - A person who will be found guilty of violating the provisions
of Section 3 shall be subject to a fine of Fifty thousand pesos (Php50,000.00) but
not exceeding Seven hundred fifty thousand pesos (Php750,000.00) and
imprisonment of six (6) months and one (1) day to six (6) years and one (1) day.
If the purpose of the commission of the abovementioned acts is the sale, rental or
other commercial distribution of a copy of the cinematographic or audiovisual work
or its soundtrack, or any part thereof, the penalty shall be imposed in the maximum.
If the offender is an alien, said person shall immediately be deported after payment
of the fine and after serving his/her sentence. He/She shall thereafter be refused
entry into the Philippines.
If the offender is a government official or employee, the penalty shall include
perpetual disqualification from public office and forfeiture of his/her right to vote and
participate in any public election for a period of five (5) years.
Section 5. Presumptions as to the Subsistence of Copyright and/or Ownership of
Copyright. - For purposes of Section 3, copyright shall be presumed to subsist in
the subject cinematographic film or other audiovisual work or its soundtrack if the
accused does not put in issue the question as to whether copyright subsists
therein. However:
(a)where the accused puts such question in issue but does not satisfy the court that
he/she does so in good faith, the presumption as to the subsistence of copyright
herein shall apply, notwithstanding that the accused puts that question in issue;
(b)where the name of a person appears on copies of the subject cinematographic
film or other audiovisual work or its soundtrack as made available to the public in
such a way as to imply that the person was the maker thereof and, in the case of a
person other than a body corporate, that name was his/her true name or a name by
which he/she was commonly known, that person shall be presumed to be the
maker thereof and the copyright owner thereof, unless the contrary is established;
and/or
(c)where the accused puts in issue the question of whether copyright subsists in
the subject cinematographic film or other audiovisual work or its soundtrack, or the
ownership of the copyright therein, an affidavit made in behalf of the copyright
owner in which he/she makes assertions of facts relevant to showing that: (1)
copyright subsists in the work or other subject matter; and/or, as the case may be,
(2) he/she is the owner of the copyright, shall be admitted in evidence and shall be
prima facie proof of the matters stated therein until the contrary is proved, unless
the court requires that oral/testimonial evidence be adduced to prove those
matters.
Section 6. No Defense on Account of Use for Private or Domestic Purposes. - It
shall not be a defense that the transmission or making of the copy of the
cinematographic film or other audiovisual work or its soundtrack, or any part
thereof, was for private or domestic purposes or in connection with a fair use deal.
Section 7. Requirement for Posting of Notices in an Exhibition Facility on the
Prohibition Against the Bringing into Said Exhibition Facility of Audiovisual
Recording Devices and the Like. - All exhibition facilities, cinemas or theaters shall
be required to conspicuously post in at least two (2) areas in the exhibition facility
including, but not limited to, the areas where tickets are sold and the entrances of
the exhibition facilities, notices or signages warning against the bringing of
audiovisual recording devices into the cinematographic film/audiovisual
screening/exhibition area, with a reservation that the management/operator of the
exhibition facility will take into preventive and temporary custody such audiovisual
recording device/s until the film/movie theater patron leaves the
screening/exhibition area/facility.
Failure of the management/operator of the exhibition facility to comply with the
foregoing requirement will subject said management/operator liable to pay a fine of
Fifty thousand pesos (Php50,000.00).
Nothing in this Act shall prevent the management from performing such other
precautionary measures so as to prevent the commission of the acts punishable
herein.
Section 8. Powers of Authorized Persons to Enter an Exhibition Facility and Search
the Same. - An authorized person, without a warrant and without payment of any
admission fee or other charge, may enter and search any exhibition facility if the
authorized person has reasonable ground to believe that any violation of this Act
has been or is being committed and, due to the delay necessary to obtain a warrant
could result in the loss or destruction of evidence, or for any other reason it would
not be reasonably practicable to obtain a warrant.
Page | 10

Section 9. Other Powers of Authorized Persons. - An authorized person who has
reasonable ground to believe that a violation under this Act has been or is being
committed may:
(a)search any person if the person subject of the search has in his/her actual
possession, any audiovisual recording device, in respect of which an offense under
this Act has been or is being committed;
(b)seize, remove or detain any audiovisual recording device or other object which
appears to contain, or likely to contain evidence of an offense committed under this
Act;
(c)use reasonable force to remove any person or object obstructing the authorized
person in the exercise of any power conferred upon him/her by this Act;
(d)detain any person, within a reasonable time not exceeding eighteen (18) hours,
found in any place which the authorized person is empowered to enter and search
if, after inquiry made, said authorized person has reasonable ground to believe that
the person subject of the search is connected with the subject matter of the search
and it is considered necessary to detain the person subject of the search to be able
to adequately perform the search; and
Section 11. Enforcement. - The PNP, in coordination with the NBI, the Optical
Media Board (OMB), operators of the cinemas, theaters or exhibition facilities and
owners of the cinematographic films or audiovisual works and other soundtracks,
shall enforce the provisions of this Act. The PNP may deputize, for a defined period,
the heads or personnel of such agencies and instrumentalities of government or
private sector representatives or stakeholders of rights over cinematographic
films/audiovisual works and their soundtracks, to perform, the enforcement
functions required under this Act.
Section 12. Separability Clause. - If any provision of this Act is declared invalid, the
other parts or provisions hereof not affected thereby shall remain and continue to
be in full force and effect.
Section 13. Repealing Clause. - All laws, decrees, ordinances or rules and
regulations which are inconsistent with or contrary to the provisions of this Act are
hereby amended or repealed.
Section 14. Effectivity. - This Act shall take effect fifteen (15) days after its
complete publication in at least two (2) newspapers of national circulation.
Approved: MAY 13 2010
(e)require the operator of an exhibition facility or any other person who appears to
be at the time responsible for the control or management of the exhibition facility to
give information or render assistance that may be necessary to enable the
authorized person to carry out the functions under this Act.
Section 10. Forfeiture and Disposal of Unauthorized Copy of Cinematographic Film
or Other Audiovisual Work /Audiovisual Recording Devices Used in the
Commission of the Acts Penalized Under this Act. - The court before which a
person charged with an offense in violation/contravention of this Act, whether or not
said person charged is convicted of the offense, may order that any copy of a
cinematographic film or other audiovisual work in which copyright subsists, or parts
thereof which appears to the court to be an unauthorized copy, and any audiovisual
recording device or other equipment in the possession of the alleged offender or
the court, be destroyed or delivered to the owner or the exclusive licensee of the
copyright owner concerned or otherwise dealt with in such a manner as the court
deems fit.
In the event that the court retains representative samples of the unauthorized copy
of a cinematographic film or other audiovisual work, or audiovisual recording
devices or other equipment for evidentiary purposes in the prosecution of the
offense for which an accused is charged, the retained samples shall remain in
custodia legis until the final resolution of the court proceedings thereon.
Page | 11
VI. LAW ON TRADEMARKS, TRADENAMES AND SERVICE MARKS

A. Legislative History
R.A. 166
Sec. 239.2, IPC
Sec. 235.2, IPC
Sec. 236.2, IPC
Sec. 236, IPC
Sec. 241, IPC
Sec. 239, IPC
Note: R.A. 166 was amended by R.A. 638, AMONG OTHERS, before being
repealed.
Sec. 239, IPC
Section 239. Repeals. - 239.1.
All Acts and parts of Acts inconsistent
herewith, more particularly Republic Act No. 165, as amended; Republic Act No.
166, as amended; and Articles 188 and 189 of the Revised Penal Code;
Presidential Decree No. 49, including Presidential Decree No. 285, as amended,
are hereby repealed.
239.2. Marks registered under Republic Act No. 166 shall remain in force
but shall be deemed to have been granted under this Act and shall be due for
renewal within the period provided for under this Act and, upon renewal shall
be reclassified in accordance with the International Classification. Trade
names and marks registered in the Supplemental Register under Republic
Act No. 166 shall remain in force but shall no longer be subject to renewal.
239.3. The provisions of this Act shall apply to works in which copyright protection
obtained prior to the effectivity of this Act is subsisting: Provided, That the
application of this Act shall not result in the diminution of such protection.
Sec. 235.2, IPC
235.2. All applications for registration of marks or trade names pending in the
Bureau of Patents, Trademarks and Technology Transfer at the effective date of this
Act may be amended, if practicable to bring them under the provisions of this Act.
The prosecution of such applications so amended and the grant of registrations
thereon shall be proceeded with in accordance with the provisions of this Act. If
such amendments are not made, the prosecution of said applications shall be
proceeded with and registrations thereon granted in accordance with the Acts
under which said applications were filed, and said Acts are hereby continued in
force to this extent for this purpose only, notwithstanding the foregoing general
repeal thereof.
Section 236. Preservation of Existing Rights. Nothing herein shall adversely affect
the rights on the enforcement of rights in patents, utility models, industrial designs,
marks and works, acquired in good faith prior to the effective date of this Act.
Sec. 241, IPC
SECTION 241. Effectivity. This Act shall take effect on 1 January 1998.
B. Definition of trademarks
Section 121.1, IPC
Sec. 121.1, IPC
121.1. Mark means any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped
or marked container of goods
Distilleria Washington v. CA
Note: Republic Act No. 623 - An Act To Regulate The Use Of Duly Stamped Or
Marked Bottles, Boxes, Casks, Kegs, Barrels And Other Similar Containers
C. Functions of trademarks
Ang v. Teodoro
Etepha v. Director of Patents
Mirpuri v. CA (1999)
Ang v. Teodoro (1942)
Ozaeta, J. (En Banc)
DOCTRINE: The function of a trade-mark is to point distinctively, either by its own
meaning or by association, to the origin or ownership of the wares to which it is
applied.
DOCTRINE: A descriptive term is one that relate to the quality or description of the
merchandise to which a trade-mark has been applied.
DOCTRINE: The doctrine of secondary meaning states that a word or phrase
originally incapable of exclusive appropriation with reference to an article of the
market, because geographically or otherwise descriptive, might nevertheless have
been used so long and so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing public, the word or phrase
has come to mean that the article was his product and has acquired a proprietary
connotation.
Sec. 236, IPC
Page | 12

DOCTRINE: The test employed by the courts to determine whether noncompeting
goods are or are not of the same class is confusion as to the origin of the goods of
the second user of a trademark.
DOCTRINE:
FACTS: Toribio Teodoro, at first in partnership with Juan Katindig and later as sole
proprietor, has continuously used "Ang Tibay," both as a trade-mark and as a tradename, in the manufacture and sale of slippers, shoes, and indoor baseballs since
1910. He formally registered it as trade-mark on September 29, 1915, and as tradename on January 3, 1933. His expenses for advertisement from 1919 to 1938
aggregated P210,641.56.
Ana L. Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April
11, 1932, and established a factory for the manufacture of said articles in the year
1937. The records failed to show how much she has spent on advertisement.
Hence, Teodoro filed a complaint against Ang in the CFI of Manila.
CFI absolved the Ang based on the ground that the two trademarks are dissimilar
and are used on different and non-competing goods and that there had been no
exclusive use of the trade-mark by the Teodoro.
The CA reversed the CFIs judgment, holding that by uninterrupted an exclusive
use since 191 in the manufacture of slippers and shoes, respondent's trade-mark
has acquired a secondary meaning; that the goods or articles on which the two
trade-marks are used are similar or belong to the same class.
sapatos ang tibay to mean durable shoes, but matibay na sapatos or sapatos
na matibay. From all of this we deduce that Ang Tibay is not a descriptive term
within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase
which may properly and legally be appropriated as a trade-mark or trade-name.
Counsel for the petitioner says that the function of a trade-mark is to point
distinctively, either by its own meaning or by association, to the origin or
ownership of the wares to which it is applied. That is correct, and we find that
Ang Tibay, as used by the respondent to designate his wares, had exactly
performed that function for twenty-two years before the petitioner adopted it as a
trade-mark in her own business. Ang Tibay shoes and slippers are, by association,
known throughout the Philippines as products of the Ang Tibay factory owned and
operated by the respondent Toribio Teodoro.
ISSUE 2 In view of the SCs finding that Ang Tibay is not a descriptive term, it is
unnecessary to apply the doctrine of secondary meaning, which states that a
word or phrase originally incapable of exclusive appropriation with reference
to an article of the market, because geographically or otherwise descriptive,
might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article
was his product. The phrase Ang Tibay, being neither geographic nor
descriptive, was originally capable of exclusive appropriation as a trade-mark. But
were it not so, the application of the doctrine of secondary meaning made by the
Court of Appeals could nevertheless be fully sustained because, in any event, by
respondent's long and exclusive use of said phrase with reference to his products
and his business, it has acquired a proprietary connotation.
ISSUE 3 Is there infringement even if the goods are non-competing? Or, Are, in
the one hand, slippers, shoes, and indoor baseballs, and on the other hand, pants
and shirts, similar or belonging to the same class? YES
ISSUE 3 In the present state of development of the law on Trade-Marks, Unfair

Competition, and Unfair Trading, the test employed by the courts to determine
whether noncompeting goods are or are not of the same class is confusion
as to the origin of the goods of the second user. Although two noncompeting
articles may be classified under two different classes by the Patent Office because
they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the simultaneous
use on them of identical or closely similar trade-marks would be likely to cause
confusion as to the origin, or personal source, of the second user's goods. They
would be considered as not falling under the same class only if they are so
dissimilar or so foreign to each other as to make it unlikely that the purchaser would
think the first user made the second user's goods.
HELD: ISSUE 1 A descriptive term is one that relate to the quality or

description of the merchandise to which a trade-mark has been applied. The
phrase Ang Tibay is an exclamation denoting administration of strength or
durability. The phrase ang tibay is never used adjectively to define or describe an
object. One does not say, ang tibay sapatos or sapatos ang tibay is never used
adjectively to define or describe an object. One does not say, "ang tibay sapatos" or
Such construction of the law is induced by cogent reasons of equity and fair
dealing. The courts have come to realize that there can be unfair competition or
unfair trading even if the goods are non-competing, and that such unfair trading can
cause injury or damage to the first user of a given trade-mark, first, by prevention of
the natural expansion of his business and, second, by having his business
reputation confused with and put at the mercy of the second user. Then
ISSUE: ISSUE 1 Is Ang Tibay is descriptive term, which cannot be registered?

NO
ISSUE 2 Had the words Ang Tibay acquired secondary meaning? YES
Page | 13

noncompetitive products are sold under the same mark, the gradual whittling away
or dispersion of the identity and hold upon the public mind of the mark created by
its first user, inevitably results. The original owner is entitled to the preservation of
the valuable link between him and the public that has been created by his ingenuity
and the merit of his wares or services. Experience has demonstrated that when a
well-known trade-mark is adopted by another even for a totally different class of
goods, it is done to get the benefit of the reputation and advertisements of the
originator of said mark, to convey to the public a false impression of some
supposed connection between the manufacturer of the article sold under the
original mark and the new articles being tendered to the public under the same or
similar mark. As trade has developed and commercial changes have come about,
the law of unfair competition has expanded to keep pace with the times and the
element of strict competition in itself has ceased to be the determining factor. The
owner of a trade-mark or trade-name has a property right in which he is entitled to
protection, since there is damage to him from confusion of reputation or goodwill in
the mind of the public as well as from confusion of goods. The modern trend is to
give emphasis to the unfairness of the acts and to classify and treat the issue as a
fraud.
We think reasonable men may not disagree that shoes and shirts are not as
unrelated as fountain pens and razor blades, for instance. The mere relation or
association of the articles is not controlling. As may readily be noted from what we
have heretofore said, the proprietary connotation that a trade-mark or trade-name
has acquired is of more paramount consideration. The Court of Appeals found in
this case that by uninterrupted and exclusive use since 1910 of respondent's
registered trade-mark on slippers and shoes manufactured by him, it has come to
indicate the origin and ownership of said goods. It is certainly not farfetched to
surmise that the selection by petitioner of the same trade-mark for pants and shirts
was motivated by a desire to get a free ride on the reputation and selling power it
has acquired at the hands of the respondent. As observed in another case, the field
from which a person may select a trade-mark is practically unlimited, and hence
there is no excuse for impinging upon or even closely approaching the mark of a
business rival. In the unlimited field of choice, what could have been petitioner's
purpose in selecting "Ang Tibay" if not for its fame?
Etepha v. Director of Patents (1966)
Sanchez, J.
DOCTRINE: The objects of a trademark are to point out distinctly the origin or
ownership of the articles to which it is affixed, to secure to him who has been
instrumental in bringing into market a superior article or merchandise the fruit of his
industry and skill, and to prevent fraud and imposition. The over-all task is to
ascertain whether or not one merchandise so resembles another as to be likely,
when applied to or used in connection with the goods of the applicant, to cause
confusion or mistake or to deceive purchasers.
DOCTRINE: We are to be guided by the rule that the validity of a cause for
infringement is predicated upon colorable imitation. The phrase colorable
imitation denotes such a close or ingenious imitation as to be calculated to deceive
ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser, giving such attention as a purchaser usually gives, and to cause him to
purchase the one supposing it to be the other.
DOCTRINE: A practical approach to the problem of similarity or dissimilarity is to go
into the whole of the two trademarks pictured in their manner of display. Inspection
should be undertaken from the viewpoint of a prospective buyer. The trademark
complained of should be compared and contrasted with the purchaser's memory
(not in juxtaposition) of the trademark said to be infringed.
FACTS: Westmont Pharmaceuticals, Inc., a New York corporation, sought
registration of trademark Atussin" placed on its medicinal preparation of
expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used
in the treatment of cough. The trademark has been used exclusively in the
Philippines since January 21, 1959.
Etepha, A. G., a Liechtenstin corporation, objected and claimed that it will be
damaged because Atussin is so confusedly similar to its Pertussin (Registration No.
6089, issued on September 25, 1957) used on a preparation for the treatment of
coughs, that the buying public will be misled into believing that Westmont's product
is that of petitioner's which allegedly enjoys goodwill.
ISSUE: ISSUE 1 Are Atussin or Pertussin non-descriptive words and
registrable in the first place? YES
ISSUE 2 W/N the trademark Atussin should be denied registration for being
confusingly similar to Pertussin, which has a prior registration. NO
HELD: ISSUE 1 That the word "tussin" figures as a component of both
trademarks is nothing to wonder at. It is the common practice in the drug and
pharmaceutical industries to fabricate marks by using syllables or words suggestive
of the ailments for which they are intended and adding thereto distinctive prefixes
or suffixes. Concededly, the "tussin" (in Pertussin and Atussin) was derived from
the Latin root-word "tussis" meaning cough. "Tussin" is merely descriptive; it is
generic; it furnishes to the buyer no indication of the origin of the goods; it is open
for appropriation by anyone. It is accordingly barred from registration as trademark.
With jurisprudence holding the line, we feel safe in making the statement that any
other conclusion would result in "appellant having practically a monopoly" of the
word "tussin" in a trademark. While "tussin" by itself cannot thus be used
exclusively to identify one's goods, it may properly become the subject of a
trademark "by combination with another word or phrase". And this union of words is
Page | 14

reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix
"Per" and the second with Prefix "A".
Puno, J. (First Division)
ISSUE 2 The objects of a trademark are to point out distinctly the origin or
confusion or mistake or to deceive purchasers. We are to be guided by the rule that
the validity of a cause for infringement is predicated upon colorable imitation. The
phrase colorable imitation denotes such a close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the original as to
deceive an ordinary purchaser, giving such attention as a purchaser usually gives,
and to cause him to purchase the one supposing it to be the other.
DOCTRINE: The function of a trademark is to point out distinctly the origin or

ownership of the goods to which it is affixed; to secure to him, who has been
instrumental in bringing into the market a superior article of merchandise, the fruit
of his industry and skill; to assure the public that they are procuring the genuine
article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product.
A practical approach to the problem of similarity or dissimilarity is to go into

the whole of the two trademarks pictured in their manner of display.
Inspection should be undertaken from the viewpoint of a prospective buyer.
The trademark complained of should be compared and contrasted with the
purchaser's memory (not in juxtaposition) of the trademark said to be
infringed.
DOCTRINE: Opposition
The two labels are entirely different in colors, contents, arrangement of words
thereon, sizes, shapes and general appearance. The contrasts in pictorial effects
and appeals to the eye is so pronounced that the label of one cannot be mistaken
for that of the other, not even by persons unfamiliar with the two trademarks. One
look is enough to denude the mind of that illuminating similarity so essential for a
trademark infringement case to prosper.
Private respondent Barbizon Corporation, a corporation from New York, U.S.A.,

opposed the application, claiming that Mirpuris Barbizon trademark is confusingly
similar to its own Barbizon trademark; and that it will be damaged by the
registration of the mark and its business reputation and goodwill will suffer great
and irreparable injury.
In the solution of a trademark infringement problem, regard too should be given to

the class of persons who buy the particular product and the circumstances
ordinarily attendant to its acquisition. Medicines such as those whose trademarks
are in question are unlike articles of everyday use which may be freely obtained by
anyone, anytime, anywhere. These products are to be dispensed upon medical
prescription. The buyer must first go to a licensed doctor to receive instructions as
to what to purchase; he reads the doctor's prescription; he knows what he is to buy.
He is not of the incautious, unwary, unobservant or unsuspecting type; he
examines the product sold to him; he checks to find out whether it conforms to the
medical prescription. The common trade channel is the pharmacy or the drugstore.
Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error
in the acquisition of one for the other is quite remote.
DOCTRINE: Modern authorities on trademark law view trademarks as performing

three distinct functions: (1) they indicate origin or ownership of the articles to which
they are attached; (2) they guarantee that those articles come up to a certain
standard of quality; and (3) they advertise the articles they symbolize
FACTS: On June 15, 1970, Lolita Escobari filed an application with the Bureau of
Patents for the registration of the trademark "Barbizon" for use in brassieres and
ladies undergarments. She alleged that she had been manufacturing and selling
these products under the firm name "L & BM Commercial" since March 3, 1970.
The Director of Patents dismissed the opposition and gave due course to Escobars
registration.
Later, Escobar assigned all her rights and interest over the trademark to petitioner
Pribhdas J. Mirpuri who, under his firm name then, the Bonito Enterprises,
becamse the sole and exclusive distributor of Escobar's Barbizon products.
ISSUE:
HELD:
D. How are Marks Acquired?

Section 122, IPC
Page | 15

Section 122, IPC
Sec. 122. How Marks are Acquired. The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of this law.
Milling and affirmed the Director of Patents when it ruled that a broker cannot
register a trademark of its principal unless it was assigned to it.
Contrast with Sec. 2-A of R.A. No. 166 and cases under R.A. 166:
FACTS: This concerns the trademark All Montana used in the sale of wheat flour.
The history of the trademark is summarized as follows:
Sec. 2 and 2-A, R.A. No. 166

Sec. 2. What are registrable. Trademarks, trade names and service marks owned
by persons, corporations, partnerships or associations domiciled in the Philippines
and by persons, corporations, partnerships or associations domiciled in any foreign
country may be registered in accordance with the provisions of this Act: Provided,
That said trademarks, trade names, or service marks are actually in use in
March 1955 Centennial Mills, Inc. (under the tradename Wenatchee Milling Co.)
of the State of Oregon, U.S.A., as owner and registrant of the trademark (in the
U.S.), and owner and prior user in the Philippines of the trademark, exported
flour to the Philippines, through its then local distributor, Unno Commercial
Enterprises, Inc.;
commerce and services not less than two months in the

Philippines before the time the applications for registration are filed; And
31 August 1955 General Milling Corporation started using the trademark;
provided, further, That the country of which the applicant for registration is a citizen
grants by law substantially similar privileges to citizens of the Philippines, and such
fact is officially certified, with a certified true copy of the foreign law translated into
the English language, by the government of the foreign country to the Government
of the Republic of the Philippines.
Sec. 2-A. Ownership of trademarks, trade names and service marks; how acquired.
Anyone who lawfully produces or deals in merchandise of any kind or who
engages in any lawful business, or who renders any lawful service in
commerce, by actual use thereof in manufacture or trade, in business, and in
the service rendered, may appropriate to his exclusive use a trademark, a trade
name, or a service mark not so appropriated by another, to distinguish his
merchandise, business or service from the merchandise, business or services of
others. The ownership or possession of a trademark, trade name, service mark,
heretofore or hereafter appropriated, as in this section provided, shall be
recognized and protected in the same manner and to the same extent as are other
property rights known to this law.
Unno Commercial Enterprises v. Gen. Milling Corp. (1983)
Teehankee (1st Division)
This is a case decided under R.A. 166. (Prior Use Requirement)
FAST FACTS: Unno Commercial was previously the broker of Centennial Mills
(USA) for All Montana flour in the Philippines. Unno then registered the trademark
in the PPO. Eventually, Centennial Mills (USA) stopped shipping All Montana flour
in the Philippines and sold the trademark to General Milling, a local Corp. When
General Milling tried to register the trademark, the prior registration by Unno
triggered a case before the Director of Patents. The SC sided with the General
30 June 1956 Unno Commercial started using the trademark as broker for S.H.
Huang Bros. & Co.;
8 March 1962 Unno Commercial registered the trademark in the Philippines;
(Sometime between March 1955 and 20 September 1962, increased taxes and
subsidies caused Centennial Mills to discontinue exporting flour to the Philippines.)
20 September 1962 General Milling acquired the trademark, along with half a
dozen other trademarks, from Centennial Mills by virtue of a deed of assignment in
exchange for 1,000 shares of stock, par value Php100.00;
11 December 1962 General Milling filed an application for the registration of the
trademark. However, prior registration of the same trademark in favour of Unno
Commercial caused an interference proceeding before the Director of the
Philippine Patents Office.
The Director of Patents ruled that General Milling is the prior user of the trademark
on wheat flour in the Philippines and ordered the cancellation of the certificate of
registration for the same trademark previously issued in favor of petitioner Unno
Commercial, it appearing that Unno Commercial merely acted as exclusive
distributor of All Montana wheat flour in the Philippines. (However, because All
Montana is primarily geographically descriptive, the application was remanded to
the Chief Trademark Examiner to determine if the applicant should claim and is
qualified to claim distinctiveness before issuance of the certificate of registration.
MR of Unno was denied. Hence this Petition.
Page | 16

ISSUE: W/N the broker (Unno Commercial) for the local importer of a product
(wheat flour) under a trademark (All Montana) owned by a prior user (Centennial
Mills), which has since assigned it to another (General Milling), is entitled to register
the trademark
Simply W/N the broker for the local importer of a product under a trademark
owned by a prior user, which has since assigned it to another, is entitled to register
the trademark.
RATIO: Only the owner of a trademark, trade name or service mark may apply for
its registration and an importer, broker, indentor or distributor acquires no rights to
the trademark of the goods he is dealing with in the absence of a valid transfer or
assignment of the trade mark.
The right to register trademark is based on ownership. When the applicant is not
the owner of the trademark being applied for, he has no right to apply for the
registration of the same. Under the Trademark Law only the owner of the
trademark, trade name or service mark used to distinguish his goods, business or
service from the goods, business or service of others is entitled to register the
same.
The term owner does not include the importer of the goods bearing the trademark,
trade name, service mark, or other mark of ownership, unless such importer is
actually the owner thereof in the country from which the goods are imported. A local
importer, however, may make application for the registration of a foreign trademark,
trade name or service mark if he is duly authorized by the actual owner of the name
or other mark of ownership.
E.Y. Industrial Sales, Inc. and Engracio Yap v. Shen Dar Electricity and Machinery
Co., Ltd. (2010)
Ecole De Cuisine Manjile (Cordon Bleu of the Philippines), Inc. b. Renaud
Cointreau & Cie and LE Cordon Bleu Intl, B.V., (2013)
E. Standard of Registrability
F. What Marks May Be Registered?
Sec. 123 (and its sub-paragraphs), IPC
IPC, Section 123. Registrability. - 123.1. A mark cannot be registered if it:
(a)
Consists of immoral, deceptive or scandalous matter, or matter which may
disparage or falsely suggest a connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute;
(b)
Consists of the flag or coat of arms or other insignia of the Philippines or
any of its political subdivisions, or of any foreign nation, or any simulation thereof;
(c)
Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of his widow, if any, except by
written consent of the widow;
(d)
Is identical with a registered mark belonging to a different proprietor or a
mark with an earlier filing or priority date, in respect of:
(i)
The same goods or services, or
Ownership of a trademark is not acquired by the mere fact of registration alone.

Registration merely creates a prima facie presumption of the validity of the
registration, of the registrant's ownership of the trademark and of the exclusive right
to the use thereof. Registration does not perfect a trademark right.
(ii)
Closely related goods or services, or
The appealed decision of the Director of Patents was affirmed.
(e)
Is identical with, or confusingly similar to, or constitutes a translation of a
mark which is considered by the competent authority of the Philippines to be wellknown internationally and in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for registration, and
used for identical or similar goods or services: Provided, That in determining
whether a mark is well-known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public at large, including knowledge
in the Philippines which has been obtained as a result of the promotion of the mark;
NOTE: This is a case decided under R.A. 166. (Prior Use Requirement)
Kabushi Kaisha Isetan v. IAC

Philip Morris v. CA
Philip Morris v. Fortune Tobacco
Shangrila v. DCCI
Berries Agricultural Co., Inc., v. Norvy Abyadang (2010)
(iii)
If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
(f)
Is identical with, or confusingly similar to, or constitutes a translation of a
mark considered well-known in accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or services which are not similar
Page | 17

to those with respect to which registration is applied for: Provided, That use of the
mark in relation to those goods or services would indicate a connection between
those goods or services, and the owner of the registered mark: Provided further,
That the interests of the owner of the registered mark are likely to be damaged by
such use;
(g)
Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;
(h)
Consists exclusively of signs that are generic for the goods or services
that they seek to identify;
(i)
Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday language or in
bona fide and established trade practice;
(j)
Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value, geographical origin,
time or production of the goods or rendering of the services, or other characteristics
of the goods or services;
(k)
Consists of shapes that may be necessitated by technical factors or by the
nature of the goods themselves or factors that affect their intrinsic value;
(l)
Consists of color alone, unless defined by a given form; or
(m)
Is contrary to public order or morality.
Etepha v. Director of Patents (1966)

Sanchez, J.
DOCTRINE: The objects of a trademark are to point out distinctly the origin or
confusion or mistake or to deceive purchasers.
DOCTRINE: We are to be guided by the rule that the validity of a cause for
infringement is predicated upon colorable imitation. The phrase colorable
imitation denotes such a close or ingenious imitation as to be calculated to deceive
ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser, giving such attention as a purchaser usually gives, and to cause him to
purchase the one supposing it to be the other.
DOCTRINE: A practical approach to the problem of similarity or dissimilarity is to go
into the whole of the two trademarks pictured in their manner of display. Inspection
should be undertaken from the viewpoint of a prospective buyer. The trademark
complained of should be compared and contrasted with the purchaser's memory
(not in juxtaposition) of the trademark said to be infringed.
FACTS: Westmont Pharmaceuticals, Inc., a New York corporation, sought
registration of trademark Atussin" placed on its medicinal preparation of
expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used
in the treatment of cough. The trademark has been used exclusively in the
Philippines since January 21, 1959.
Etepha, A. G., a Liechtenstin corporation, objected and claimed that it will be
damaged because Atussin is so confusedly similar to its Pertussin (Registration No.
6089, issued on September 25, 1957) used on a preparation for the treatment of
coughs, that the buying public will be misled into believing that Westmont's product
is that of petitioner's which allegedly enjoys goodwill.
ISSUE: ISSUE 1 Are Atussin or Pertussin non-descriptive words and
registrable in the first place? YES
ISSUE 2 W/N the trademark Atussin should be denied registration for being
confusingly similar to Pertussin, which has a prior registration. NO
HELD: ISSUE 1 That the word "tussin" figures as a component of both
trademarks is nothing to wonder at. It is the common practice in the drug and
pharmaceutical industries to fabricate marks by using syllables or words suggestive
of the ailments for which they are intended and adding thereto distinctive prefixes
or suffixes. Concededly, the "tussin" (in Pertussin and Atussin) was derived from
the Latin root-word "tussis" meaning cough. "Tussin" is merely descriptive; it is
generic; it furnishes to the buyer no indication of the origin of the goods; it is open
for appropriation by anyone. It is accordingly barred from registration as trademark.
With jurisprudence holding the line, we feel safe in making the statement that any
other conclusion would result in "appellant having practically a monopoly" of the
word "tussin" in a trademark. While "tussin" by itself cannot thus be used
exclusively to identify one's goods, it may properly become the subject of a
trademark "by combination with another word or phrase". And this union of words is
reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix
"Per" and the second with Prefix "A".
Page | 18

ISSUE 2 The objects of a trademark are to point out distinctly the origin or
confusion or mistake or to deceive purchasers. We are to be guided by the rule that
the validity of a cause for infringement is predicated upon colorable imitation. The
phrase colorable imitation denotes such a close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the original as to
deceive an ordinary purchaser, giving such attention as a purchaser usually gives,
and to cause him to purchase the one supposing it to be the other.
A practical approach to the problem of similarity or dissimilarity is to go into
the whole of the two trademarks pictured in their manner of display.
Inspection should be undertaken from the viewpoint of a prospective buyer.
The trademark complained of should be compared and contrasted with the
purchaser's memory (not in juxtaposition) of the trademark said to be
infringed.
The two labels are entirely different in colors, contents, arrangement of words
thereon, sizes, shapes and general appearance. The contrasts in pictorial effects
and appeals to the eye is so pronounced that the label of one cannot be mistaken
for that of the other, not even by persons unfamiliar with the two trademarks. One
look is enough to denude the mind of that illuminating similarity so essential for a
trademark infringement case to prosper.
In the solution of a trademark infringement problem, regard too should be given to
the class of persons who buy the particular product and the circumstances
ordinarily attendant to its acquisition. Medicines such as those whose trademarks
are in question are unlike articles of everyday use which may be freely obtained by
anyone, anytime, anywhere. These products are to be dispensed upon medical
prescription. The buyer must first go to a licensed doctor to receive instructions as
to what to purchase; he reads the doctor's prescription; he knows what he is to buy.
He is not of the incautious, unwary, unobservant or unsuspecting type; he
examines the product sold to him; he checks to find out whether it conforms to the
medical prescription. The common trade channel is the pharmacy or the drugstore.
Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error
in the acquisition of one for the other is quite remote.
Ang v. Teodoro (1942)
Ozaeta, J. (En Banc)
DOCTRINE: The function of a trade-mark is to point distinctively, either by its own

meaning or by association, to the origin or ownership of the wares to which it is
applied.
FACTS: Toribio Teodoro, at first in partnership with Juan Katindig and later as sole
proprietor, has continuously used "Ang Tibay," both as a trade-mark and as a tradename, in the manufacture and sale of slippers, shoes, and indoor baseballs since
1910. He formally registered it as trade-mark on September 29, 1915, and as tradename on January 3, 1933. His expenses for advertisement from 1919 to 1938
aggregated P210,641.56.
Ana L. Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April
11, 1932, and established a factory for the manufacture of said articles in the year
1937. The records failed to show how much she has spent on advertisement.
Hence, Teodoro filed a complaint against Ang in the CFI of Manila.
CFI absolved the Ang based on the ground that the two trademarks are dissimilar
and are used on different and non-competing goods and that there had been no
exclusive use of the trade-mark by the Teodoro.
The CA reversed the CFIs judgment, holding that by uninterrupted an exclusive
use since 191 in the manufacture of slippers and shoes, respondent's trade-mark
has acquired a secondary meaning; that the goods or articles on which the two
trade-marks are used are similar or belong to the same class.
ISSUE: ISSUE 1 Is Ang Tibay is descriptive term, which cannot be registered?
NO
ISSUE 2 Had the words Ang Tibay acquired secondary meaning? YES
ISSUE 3 Is there infringement even if the goods are non-competing? Or, Are, in
the one hand, slippers, shoes, and indoor baseballs, and on the other hand, pants
and shirts, similar or belonging to the same class? YES
HELD: ISSUE 1 A descriptive term is one that relate to the quality or
description of the merchandise to which a trade-mark has been applied. The
phrase Ang Tibay is an exclamation denoting administration of strength or
durability. The phrase ang tibay is never used adjectively to define or describe an
object. One does not say, ang tibay sapatos or sapatos ang tibay is never used
adjectively to define or describe an object. One does not say, "ang tibay sapatos" or
sapatos ang tibay to mean durable shoes, but matibay na sapatos or sapatos
na matibay. From all of this we deduce that Ang Tibay is not a descriptive term
Page | 19

within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase
which may properly and legally be appropriated as a trade-mark or trade-name.
Counsel for the petitioner says that the function of a trade-mark is to point
distinctively, either by its own meaning or by association, to the origin or
ownership of the wares to which it is applied. That is correct, and we find that
Ang Tibay, as used by the respondent to designate his wares, had exactly
performed that function for twenty-two years before the petitioner adopted it as a
trade-mark in her own business. Ang Tibay shoes and slippers are, by association,
known throughout the Philippines as products of the Ang Tibay factory owned and
operated by the respondent Toribio Teodoro.
ISSUE 2 In view of the SCs finding that Ang Tibay is not a descriptive term, it is
unnecessary to apply the doctrine of secondary meaning, which states that a
word or phrase originally incapable of exclusive appropriation with reference
to an article of the market, because geographically or otherwise descriptive,
might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article
was his product. The phrase Ang Tibay, being neither geographic nor
descriptive, was originally capable of exclusive appropriation as a trade-mark. But
were it not so, the application of the doctrine of secondary meaning made by the
Court of Appeals could nevertheless be fully sustained because, in any event, by
respondent's long and exclusive use of said phrase with reference to his products
and his business, it has acquired a proprietary connotation.
ISSUE 3 In the present state of development of the law on Trade-Marks, Unfair
Competition, and Unfair Trading, the test employed by the courts to determine
whether noncompeting goods are or are not of the same class is confusion
as to the origin of the goods of the second user. Although two noncompeting
articles may be classified under two different classes by the Patent Office because
they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the simultaneous
use on them of identical or closely similar trade-marks would be likely to cause
confusion as to the origin, or personal source, of the second user's goods. They
would be considered as not falling under the same class only if they are so
dissimilar or so foreign to each other as to make it unlikely that the purchaser would
think the first user made the second user's goods.
Such construction of the law is induced by cogent reasons of equity and fair
dealing. The courts have come to realize that there can be unfair competition or
unfair trading even if the goods are non-competing, and that such unfair trading can
cause injury or damage to the first user of a given trade-mark, first, by prevention of
the natural expansion of his business and, second, by having his business
reputation confused with and put at the mercy of the second user. Then
noncompetitive products are sold under the same mark, the gradual whittling away
or dispersion of the identity and hold upon the public mind of the mark created by
its first user, inevitably results. The original owner is entitled to the preservation of
the valuable link between him and the public that has been created by his ingenuity
and the merit of his wares or services. Experience has demonstrated that when a
well-known trade-mark is adopted by another even for a totally different class of
goods, it is done to get the benefit of the reputation and advertisements of the
originator of said mark, to convey to the public a false impression of some
supposed connection between the manufacturer of the article sold under the
original mark and the new articles being tendered to the public under the same or
similar mark. As trade has developed and commercial changes have come about,
the law of unfair competition has expanded to keep pace with the times and the
element of strict competition in itself has ceased to be the determining factor. The
owner of a trade-mark or trade-name has a property right in which he is entitled to
protection, since there is damage to him from confusion of reputation or goodwill in
the mind of the public as well as from confusion of goods. The modern trend is to
give emphasis to the unfairness of the acts and to classify and treat the issue as a
fraud.
We think reasonable men may not disagree that shoes and shirts are not as
unrelated as fountain pens and razor blades, for instance. The mere relation or
association of the articles is not controlling. As may readily be noted from what we
have heretofore said, the proprietary connotation that a trade-mark or trade-name
has acquired is of more paramount consideration. The Court of Appeals found in
this case that by uninterrupted and exclusive use since 1910 of respondent's
registered trade-mark on slippers and shoes manufactured by him, it has come to
indicate the origin and ownership of said goods. It is certainly not farfetched to
surmise that the selection by petitioner of the same trade-mark for pants and shirts
was motivated by a desire to get a free ride on the reputation and selling power it
has acquired at the hands of the respondent. As observed in another case, the field
from which a person may select a trade-mark is practically unlimited, and hence
there is no excuse for impinging upon or even closely approaching the mark of a
business rival. In the unlimited field of choice, what could have been petitioner's
purpose in selecting "Ang Tibay" if not for its fame?
Arce Sons v. Selecta Biscuits
Asia Brewery v. CA (1993)
Emerald Garment Manufacturing v. CA
Fredco Manufacturing Corporation v. President and Fellows of Harvard College
(Harvard University) (2011)
G. Application for Registration

1. Application
Sec. 3, IPC
Sections 124 (and its sub-paragraphs), 125, 126, 128, 130 (and its subparagraphs), IPC
Page | 20

Sec. 124.2, IPC
Sec. 131 (and its sub-paragraphs, IPC
(Claim of Priority Date)
Sec. 239.2, IPC
IPC, Section 3. International Conventions and Reciprocity. - Any person who is a
national or who is domiciled or has a real and effective industrial establishment in a
country which is a party to any convention, treaty or agreement relating to
intellectual property rights or the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the extent necessary to give effect
to any provision of such convention, treaty or reciprocal law, in addition to the rights
to which any owner of an intellectual property right is otherwise entitled by this Act.
IPC, Section 124. Requirements of Application. - 124.1. The application for the
registration of the mark shall be in Filipino or in English and shall contain the
following:
(a)
A request for registration;
(b)
The name and address of the applicant;
(c)
The name of a State of which the applicant is a national or where he has
domicile; and the name of a State in which the applicant has a real and effective
industrial or commercial establishment, if any;
(d)
Where the applicant is a juridical entity, the law under which it is organized
and existing;
(e)
The appointment of an agent or representative, if the applicant is not
domiciled in the Philippines;
(f)
Where the applicant claims the priority of an earlier application, an
indication of:
i)
The name of the State with whose national office the earlier application
was filed or if filed with an office other than a national office, the name of that office,
ii)
The date on which the earlier application was filed, and
iii)
Where available, the application number of the earlier application;
(g)
Where the applicant claims color as a distinctive feature of the mark, a
statement to that effect as well as the name or names of the color or colors claimed
and an indication, in respect of each color, of the principal parts of the mark which
are in that color;
(h)
Where the mark is a three-dimensional mark, a statement to that effect;
(i)
One or more reproductions of the mark, as prescribed in the Regulations;
(j)
A transliteration or translation of the mark or of some parts of the mark, as
prescribed in the Regulations;
(k)
The names of the goods or services for which the registration is sought,
grouped according to the classes of the Nice Classification, together with the
number of the class of the said Classification to which each group of goods or
services belongs; and
(l)
A signature by, or other self-identification of, the applicant or his
representative.
124.2. The applicant or the registrant shall file a declaration of actual use of the
mark with evidence to that effect, as prescribed by the Regulations within three (3)
years from the filing date of the application. Otherwise, the application shall be
refused or the mark shall be removed from the Register by the Director.
124.3. One (1) application may relate to several goods and/or services, whether
they belong to one (1) class or to several classes of the Nice Classification.
124.4. If during the examination of the application, the Office finds factual basis to
reasonably doubt the veracity of any indication or element in the application, it may
require the applicant to submit sufficient evidence to remove the doubt.
Section 125. Representation; Address for Service. - If the applicant is not domiciled
or has no real and effective commercial establishment in the Philippines, he shall
designate by a written document filed in the Office, the name and address of a
Philippine resident who may be served notices or process in proceedings affecting
the mark. Such notices or services may be served upon the person so designated
by leaving a copy thereof at the address specified in the last designation filed. If the
person so designated cannot be found at the address given in the last designation,
such notice or process may be served upon the Director.
Section 126. Disclaimers. - The Office may allow or require the applicant to
disclaim an unregistrable component of an otherwise registrable mark but such
disclaimer shall not prejudice or affect the applicant's or owner's rights then existing
or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or
affect the applicant's or owner's right on another application of later date if the
Page | 21

disclaimed matter became distinctive of the applicant's or owner's goods, business
or services.
131.2. No registration of a mark in the Philippines by a person described in this

section shall be granted until such mark has been registered in the country of origin
of the applicant.
xxx
Section 128. Single Registration for Goods and/or Services. - Where goods and/or
services belonging to several classes of the Nice Classification have been included
in one (1) application, such an application shall result in one registration.
xxx
Section 130. Signature and Other Means of Self-Identification. - 130.1. Where a
signature is required, the Office shall accept:
(a)
A hand-written signature; or
(b)
The use of other forms of signature, such as a printed or stamped
signature, or the use of a seal instead of a hand-written signature: Provided, That
where a seal is used, it should be accompanied by an indication in letters of the
name of the signatory.
131.3. Nothing in this section shall entitle the owner of a registration granted
under this section to sue for acts committed prior to the date on which his mark was
registered in this country: Provided, That, notwithstanding the foregoing, the owner
of a well-known mark as defined in Section 123.1(e) of this Act, that is not
registered in the Philippines, may, against an identical or confusingly similar mark,
oppose its registration, or petition the cancellation of its registration or sue for unfair
competition, without prejudice to availing himself of other remedies provided for
under the law.
131.4. In like manner and subject to the same conditions and requirements, the
right provided in this section may be based upon a subsequent regularly filed
application in the same foreign country: Provided, That any foreign application filed
prior to such subsequent application has been withdrawn, abandoned, or otherwise
disposed of, without having been laid open to public inspection and without leaving
any rights outstanding, and has not served, nor thereafter shall serve, as a basis for
claiming a right of priority.
IPC, Section 239. Repeals.
130.2. The Office shall accept communications to it by telecopier, or by electronic

means subject to the conditions or requirements that will be prescribed by the
Regulations. When communications are made by telefacsimile, the reproduction of
the signature, or the reproduction of the seal together with, where required, the
indication in letters of the name of the natural person whose seal is used, appears.
The original communications must be received by the Office within thirty (30) days
from date of receipt of the telefacsimile.
130.3. No attestation, notarization, authentication, legalization or other
certification of any signature or other means of self-identification referred to in the
preceding paragraphs, will be required, except, where the signature concerns the
surrender of a registration.
IPC, Section 124.2. The applicant or the registrant shall file a declaration of actual
use of the mark with evidence to that effect, as prescribed by the Regulations within
three (3) years from the filing date of the application. Otherwise, the application
shall be refused or the mark shall be removed from the Register by the Director.
IPC, Section 131. Priority Right. - 131.1. An application for registration of a mark
filed in the Philippines by a person referred to in Section 3, and who previously duly
filed an application for registration of the same mark in one of those countries, shall
be considered as filed as of the day the application was first filed in the foreign
country.
xxx
239.2. Marks registered under Republic Act No. 166 shall remain in force but
shall be deemed to have been granted under this Act and shall be due for renewal
within the period provided for under this Act and, upon renewal shall be reclassified
in accordance with the International Classification. Trade names and marks
registered in the Supplemental Register under Republic Act No. 166 shall remain in
force but shall no longer be subject to renewal.
2. Assignment of Application Number and Filing Date

Sec. 127, IPC
IPC, Section 127. Filing Date. - 127.1. Requirements. - The filing date of an
application shall be the date on which the Office received the following indications
and elements in English or Filipino:
(a)
An express or implicit indication that the registration of a mark is sought;
(b)
The identity of the applicant;
(c)
Indications sufficient to contact the applicant or his representative, if any;
Page | 22
(d)
A reproduction of the mark whose registration is sought; and
(e)
The list of the goods or services for which the registration is sought.
127.2.
No filing date shall be accorded until the required fee is paid.
IPC, Section 132. Application Number and Filing Date. - 132.1. The Office shall
examine whether the application satisfies the requirements for the grant of a filing
date as provided in Section 127 and Regulations relating thereto. If the application
does not satisfy the filing requirements, the Office shall notify the applicant who
shall within a period fixed by the Regulations complete or correct the application as
required, otherwise, the application shall be considered withdrawn.
132.2 Once an application meets the filing requirements of Section 127, it shall
be numbered in the sequential order, and the applicant shall be informed of the
application number and the filing date of the application will be deemed to have
been abandoned.
3. Examination
Sec. 126, IPC
Sec. 129, IPC
IPC, Section 133. Examination and Publication. - 133.1. Once the application
meets the filing requirements of Section 127, the Office shall examine whether the
application meets the requirements of Section 124 and the mark as defined in
Section 121 is registrable under Section 123.
133.2. Where the Office finds that the conditions referred to in Subsection 133.1
are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the
application, as filed, to be published in the prescribed manner.
133.3. If after the examination, the applicant is not entitled to registration for any
reason, the Office shall advise the applicant thereof and the reasons therefor. The
applicant shall have a period of four (4) months in which to reply or amend his
application, which shall then be re-examined. The Regulations shall determine the
procedure for the re-examination or revival of an application as well as the appeal
to the Director of Trademarks from any final action by the Examiner.
133.4. An abandoned application may be revived as a pending application within
three (3) months from the date of abandonment, upon good cause shown and the
payment of the required fee.
133.5. The final decision of refusal of the Director of Trademarks shall be

appealable to the Director General in accordance with the procedure fixed by the
Regulations.
IPC, Section 126. Disclaimers. - The Office may allow or require the applicant to
disclaim an unregistrable component of an otherwise registrable mark but such
disclaimer shall not prejudice or affect the applicant's or owner's rights then existing
or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or
affect the applicant's or owner's right on another application of later date if the
disclaimed matter became distinctive of the applicant's or owner's goods, business
or services.
IPC, Section 129. Division of Application. - Any application referring to several
goods or services, hereafter referred to as the "initial application," may be divided
by the applicant into two (2) or more applications, hereafter referred to as the
"divisional applications," by distributing among the latter the goods or services
referred to in the initial application. The divisional applications shall preserve the
filing date of the initial application or the benefit of the right of priority.
4. Publication
Sec. 133.2, IPC
IPC, Section 133. Examination and Publication.
xxx
133.2. Where the Office finds that the conditions referred to in Subsection 133.1
are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the
application, as filed, to be published in the prescribed manner.
5. Opposition
Sections 134 and 135, IPC
Bata Industries v. CA
IPC, Section 134. Opposition. - Any person who believes that he would be
damaged by the registration of a mark may, upon payment of the required fee and
within thirty (30) days after the publication referred to in Subsection 133.2, file with
the Office an opposition to the application. Such opposition shall be in writing and
verified by the oppositor or by any person on his behalf who knows the facts, and
shall specify the grounds on which it is based and include a statement of the facts
relied upon. Copies of certificates of registration of marks registered in other
countries or other supporting documents mentioned in the opposition shall be filed
therewith, together with the translation in English, if not in the English language. For
good cause shown and upon payment of the required surcharge, the time for filing
an opposition may be extended by the Director of Legal Affairs, who shall notify the
Page | 23

applicant of such extension. The Regulations shall fix the maximum period of time
within which to file the opposition.
certificate of registration of the said mark in the name of such assignee, and for the
unexpired part of the original period.
Section 135. Notice and Hearing. - Upon the filing of an opposition, the Office
shall serve notice of the filing on the applicant, and of the date of the hearing
thereof upon the applicant and the oppositor and all other persons having any right,
title or interest in the mark covered by the application, as appear of record in the
Office.
137.4. The Office shall record any change of address, or address for service,
which shall be notified to it by the registered owner.
Bata Industries v. CA
6. Issuance and Publication of Certificate

Sec. 138, IPC
Sec. 139, IPC
Sec. 144 (and its subp-paragraphs), IPC
Sec. 4.2, IPC
IPC, Section 136. Issuance and Publication of Certificate. - When the period for
filing the opposition has expired, or when the Director of Legal Affairs shall have
denied the opposition, the Office upon payment of the required fee, shall issue the
certificate of registration. Upon issuance of a certificate of registration, notice
thereof making reference to the publication of the application shall be published in
the IPO Gazette. (Sec. 10, R.A. No. 165)
Section 137. Registration of Mark and Issuance of a Certificate to the Owner or his
Assignee. - 137.1. The Office shall maintain a Register in which shall be registered
marks, numbered in the order of their registration, and all transactions in respect of
each mark, required to be recorded by virtue of this law.
137.2. The registration of a mark shall include a reproduction of the mark and
shall mention: its number; the name and address of the registered owner and, if the
registered owner's address is outside the country, his address for service within the
country; the dates of application and registration; if priority is claimed, an indication
of this fact, and the number, date and country of the application, basis of the priority
claims; the list of goods or services in respect of which registration has been
granted, with the indication of the corresponding class or classes; and such other
data as the Regulations may prescribe from time to time.
137.3. A certificate of registration of a mark may be issued to the assignee of the
applicant: Provided, That the assignment is recorded in the Office. In case of a
change of ownership, the Office shall at the written request signed by the owner, or
his representative, or by the new owner, or his representative and upon a proper
showing and the payment of the prescribed fee, issue to such assignee a new
137.5. In the absence of any provision to the contrary in this Act, communications
to be made to the registered owner by virtue of this Act shall be sent to him at his
last recorded address and, at the same, at his last recorded address for service.
IPC, Section 138. Certificates of Registration. - A certificate of registration of a
mark shall be prima facie evidence of the validity of the registration, the registrant's
ownership of the mark, and of the registrant's exclusive right to use the same in
connection with the goods or services and those that are related thereto specified
in the certificate.
IPC, Section 139. Publication of Registered Marks; Inspection of Register. 139.1. The Office shall publish, in the form and within the period fixed by the
Regulations, the marks registered, in the order of their registration, reproducing all
the particulars referred to in Subsection 137.2.
139.2. Marks registered at the Office may be inspected free of charge and any
person may obtain copies thereof at his own expense. This provision shall also be
applicable to transactions recorded in respect of any registered mark.
IPC, Section 144. Classification of Goods and Services. - 144.1. Each
registration, and any publication of the Office which concerns an application or
registration effected by the Office shall indicate the goods or services by their
names, grouped according to the classes of the Nice Classification, and each group
shall be preceded by the number of the class of that Classification to which that
group of goods or services belongs, presented in the order of the classes of the
said Classification.
144.2. Goods or services may not be considered as being similar or dissimilar to
each other on the ground that, in any registration or publication by the Office, they
appear in different classes of the Nice Classification.
IPC, Section 4. Definitions. xxx
4.2.
The term "technology transfer arrangements" refers to contracts or
agreements involving the transfer of systematic knowledge for the manufacture of a
product, the application of a process, or rendering of a service including
management contracts; and the transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of computer software except
computer software developed for mass market.
Page | 24
7. Duration of Certificate
10. Renewal
Sec. 145, IPC

IPC, Section 145. Duration. - A certificate of registration shall remain in force for
ten (10) years: Provided, That the registrant shall file a declaration of actual use
and evidence to that effect, or shall show valid reasons based on the existence of
obstacles to such use, as prescribed by the Regulations, within one (1) year from
the fifth anniversary of the date of the registration of the mark. Otherwise, the mark
shall be removed from the Register by the Office.
8. Voluntary Cancellation of Certificate

Sec. 140, IPC
IPC, Section 140. Cancellation upon Application by Registrant; Amendment or
Disclaimer of Registration. - Upon application of the registrant, the Office may
permit any registration to be surrendered for cancellation, and upon cancellation
the appropriate entry shall be made in the records of the Office. Upon application of
the registrant and payment of the prescribed fee, the Office for good cause may
permit any registration to be amended or to be disclaimed in part: Provided, That
the amendment or disclaimer does not alter materially the character of the mark.
Appropriate entry shall be made in the records of the Office upon the certificate of
registration or, if said certificate is lost or destroyed, upon a certified copy thereof
9. Correction of Mistakes
IPC, Section 142. Correction of Mistakes Made by the Office. - Whenever a
material mistake in a registration incurred through the fault of the Office is clearly
disclosed by the records of the Office, a certificate stating the fact and nature of
such mistake shall be issued without charge, recorded and a printed copy thereof
shall be attached to each printed copy of the registration. Such corrected
registration shall thereafter have the same effect as the original certificate; or in the
discretion of the Director of the Administrative, Financial and Human Resource
Development Service Bureau a new certificate of registration may be issued
without charge. All certificates of correction heretofore issued in accordance with
the Regulations and the registration to which they are attached shall have the same
force and effect as if such certificates and their issuance had been authorized by
this Act. (n)
Section 143. Correction of Mistakes Made by Applicant. - Whenever a mistake is
made in a registration and such mistake occurred in good faith through the fault of
the applicant, the Office may issue a certificate upon the payment of the prescribed
fee: Provided, That the correction does not involve any change in the registration
that requires republication of the mark.
IPC, Section 146. Renewal. - 146.1. A certificate of registration may be renewed

for periods of ten (10) years at its expiration upon payment of the prescribed fee
and upon filing of a request. The request shall contain the following indications:
(a)
An indication that renewal is sought;
(b)
The name and address of the registrant or his successor-in-interest,
hereafter referred to as the "right holder";
(c)
The registration number of the registration concerned;
(d)
The filing date of the application which resulted in the registration
concerned to be renewed;
(e)
Where the right holder has a representative, the name and address of that
representative;
(f)
The names of the recorded goods or services for which the renewal is
requested or the names of the recorded goods or services for which the renewal is
not requested, grouped according to the classes of the Nice Classification to which
that group of goods or services belongs and presented in the order of the classes
of the said Classification; and
(g)
A signature by the right holder or his representative.
146.2. Such request shall be in Filipino or English and may be made at any time
within six (6) months before the expiration of the period for which the registration
was issued or renewed, or it may be made within six (6) months after such
expiration on payment of the additional fee herein prescribed.
146.3. If the Office refuses to renew the registration, it shall notify the registrant of
his refusal and the reasons therefor.
146.4. An applicant for renewal not domiciled in the Philippines shall be subject
to and comply with the requirements of this Act.
H. Madrid Protocol
END MARKER
Page | 25

END MARKER
END MARKER
IMPORTANT NOTE:
Chua Che and Sta Ana cases which are en banc rulings. Faberge, a decision of a
division, cannot overturn them?
Faberge not only deviates from Chua Che and Sta Ana but even from Esso, Phil
Refining and Hickok. It severely restricted the scope of protection accorded to
trademark owners to only those enumerated in the certificate of registration.
The IP Code did not just relax the Faberge ruling. It did away with it.
Page | 26

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