LIP Classnotes - Atty. Castillo

LIP
Class Notes 2016 Atty. Castillo
LAW ON INTELLECTUAL PROPERTY Q: What comprises the Law on Intellectual Property?

Atty. Risel G. Castillo-Taleon Intellectual Property Code R.A. 8293
o Took effect on January 1, 1998
MIDTERMS Patent Law
Trademark Law
Introduction Copyright Law
Paris Convention on Protection of Intellectual Property
RA 166 Trademark Law Q: What is Intellectual Property?
RA 165 Patent Law It refers to CREATIONS OF THE MIND
President Marcos promulgated PD 72 Copyright Law and other neighboring rights Inventions, literary and artistic works, symbols, names, images, and designs used in
such as those granted to musicians and performers commerce. (ILAWS-NID)
General Agreement on Tariffs and Trade Legal rights which result from INTELLECTUAL ACTIVITY in the industrial, scientific,
o TRIPS agreement to protect Intellectual Property. Some provision were literary, and artistic (ISLA) fields
different from Treaty of Paris
Patent used to be protected for the span of 17 years from the date of the grant Q: Are ideas or conceptions protected by law?
It is now 20 years from the date of filing NO. Even if embodied in a work, news, other mere items of press information or
Because of the need to codify the requirements under the Paris Convention, GATT, official text, translation, or work of government ARE NOT PROTECTED BY LAW
and TRIPS agreement, RA 8293 or the Intellectual Property Code was enacted
TRIPS Agreement required the establishment of IPR Office headed by a director I. INTELLECTUAL PROPERTY RIGHTS IN GENERAL
general
The IPC does not contain a bureau on copyright. Instead, Copyright must be 1. INTELLECTUAL PROPERTY RIGHTS
registered with the National Library Bureau of Patents Now with the IP
Office. INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
Come the entry of pirated shirts from China. All things fake were being [Republic Act No. 8293]
manufactured in the PH. We were watch listed by the U.S. We had to intensify our
drive against piracy. Thus, the Optical Media Act was enacted creating an Optical Q: What comprises of Intellectual Property Rights?
Media Board in order to bend to the dictates of industrial countries Sec. 4. Definitions.- 4.1. The term "intellectual property rights" consists of:
Protection of IP is TERRITORIAL your registration in the Philippines does NOT o [a] Copyright and Related Rights;
protect your IP in another country if you did not register it there. Thus, if you have o [b] Trademarks and Service Marks;
a mark that you want to register, you must register it in each and every country. o [c] Geographic Indications;
You need to hire a lawyer in each country to assist in the registration. o [d] Industrial Designs;
o However, the Madrid Protocol system permits the filing, registration and o [e] Patents;
maintenance of trade mark rights in more than one jurisdiction, o [f] Layout-Designs (Topographies) of Integrated Circuits; and
provided that the target jurisdiction is a party to the system. Here, you o [g] Protection of Undisclosed Information [TRIPS].
only need to list down the countries in which you want your trademark
protected and pay the corresponding filing fees. If rejected, this is the Q: What is COPYRIGHT?
time you go directly to each country and hire a lawyer there. It is confined to LITERARY or ARTISTIC work which are ORIGINAL CREATIONS in the
o There was a debate that Madrid Protocol is a treaty which requires literary or artistic domain PROTECTED from the moment of creation.
ratification from the Senate. However, the Senate did not ratify. Hence,
a petition was filed in the SC. However, this petition was denied for the Q: What are TRADEMARKS OR SERVICE MARKS?
reason that it is the choice of the executive department to determine Any VISIBLE SIGN capable of distinguishing the GOODS and SERVICES of an
what is a treaty or an executive agreement. In this case, the President enterprise. It shall include STAMPED or MARKED container of goods
treated it as the latter. Thus, concurrence of the congress is not required
Q: What are GEOGRAPHIC INDICATIONS?
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LIP Class Notes 2016 Atty. Castillo
It identifies a GOOD originating in the territory of a TRADE-RELATED ASPECTS of 4.2. The term "technology transfer arrangements" refers to contracts or
INTELLECTUAL PROPERTY RIGHTS (TRIPS) MEMBER, or a region or locality in that agreements involving the transfer of systematic knowledge for the manufacture of
territory, where a given QUALITY, REPUTATION, or other CHARACTERSTIC of the a product, the application of a process, or rendering of a service including
good is essentially attributable to its geographical origin management contracts;
o and the transfer, assignment or licensing of all forms of intellectual
Q: What are INDUSTRIAL DESIGNS? property rights, including licensing of computer software except
Any composition of LINES or COLORS or any 3-D FORM, whether or not associated computer software developed for mass market.
with lines or colors NATURE: Licensing Contract
Such composition or form should give a SPECIAL APPEARANCE to and can serve as LICENSOR: Intellectual Property Rights Owner
a PATTERN for an industrial product or handicraft LICENSEE: 2nd party who was granted authority to commercially exploit the same
intellectual property right
Q: What PATENTS?
PATENTABLE INVENTION any TECHNICAL SOLUTION of a problem in ANY FIELD of Q: Are TECHNLOGICAL TRANSFER ARRANGEMENTS the same as LICENSING CONTRACTS?
human activity which is NEW, involves an INVENTIVE STEP, and is INDUSTRIALLY NO. TTAs are merely in the nature of licensing contract.
APPLICABLE
4.3. The term "Office" refers to the Intellectual Property Office created by this Act.
Q: What are LAYOUT DESIGNS? What are INTEGRATED CIRCUITS?
LAYOUT DESIGN (TOPOGRAPHIES) A 3-D DISPOSITION, however expressed, of 4.4 The term "IPO Gazette" refers to the gazette published by the Office under this Act.
the ELEMENTS, at least 1 of which is an ACTIVE ELEMENT,
o And of some or all the 3-D disposition prepared for an INTEGRATED A. RIGHT OF A FOREIGNER TO SUE FOR PROTECTION OF IP RIGHTS
CIRCUIT intended for manufacture
o Must be ORIGINAL Q: Can a foreign corporation sue in the Philippines an action involving its intellectual
ORIGINAL they are the result of their CREATORS OWN property rights?
INTELLECTUAL EFFORT and are NOT COMMONPLACE among YES, under Section 3 and Section 160
creators of layout designs and manufacturers of layout circuits Section. 3 provides for the right to sue an action for the enforcement of
at the time of creation. INTELLECTUAL PROPERTY RIGHTS or REPRESSION OF UNFAIR COMPETITION.
INTEGRATED CIRCUITS it is a PRODUCT in its FINAL FORM or an IMMEDIATE This is also known as the Principle of Reciprocity.
FORM, o Requisites:
o In which the elements, at least 1 of which is an ACTIVE ELEMENT, 1. The person is a NATIONAL or DOMICILED or has an effective
o And some or all of the INTERCONNECTIONS are integrally formed in industrial ESTABLISHMENT in a foreign country
and/or on a piece of material which is intended to perform an ELECTRIC 2. The foreign country is a PARTY to a convention, treaty or
FUNCTION agreement relating to IPR or repression of unfair competition,
to which the Philippines is also a PARTY
Q: What is UNDISCLOSED INFORMATION? OR if the foreign country also extends RECIPROCAL
Information which is: RIGHTS to PH nationals
o SECRET not generally known or readily available to persons within the Sec. 3. International Conventions and Reciprocity. - Any person who is a national or
obligation which normally deals with the kind of information in question who is domiciled or has a real and effective industrial establishment in a country
o Has COMMERCIAL VALUE because it is a secret which is a party to any convention, treaty or agreement relating to intellectual
o Subject to REASONABLE STEPS under the circumstances property rights or the repression of unfair competition, to which the Philippines is
By the person lawfully IN CONTROL of the information to keep also a party, or extends reciprocal rights to nationals of the Philippines by law, shall
it in secret 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
Q: What are TECHNOLOGY TRANSFER ARRANGEMENTS? owner of an intellectual property right is otherwise entitled by this Act.
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Sec. 160 provides for the right to sue for an action of enforcement of TRADE OR A Voluntary Licensing Contract is an agreement for the use of any Intellectual Property
SERVICE MARK. Right.
o Requisites: o Includes franchising agreement
1. The foreign national or juridical person must comply with o I.e. the contract for the use of trademark, service mark, or technology of
the requirements under Sec. 3 McDo, iHop, etc.
2. Does NOT ENGAGE IN BUSINESS in the Philippines o Includes Distributorship Right to exclusively distribute products using the
Note: W/N it is licensed to do business in the mark of another
Philippines. o So long as it is a contract for the use of any intellectual property right, it is a
Sec. 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Licensing Agreement
Enforcement Action.- Any foreign national or juridical person who meets the o Thus, it must comply with the prohibited clauses and mandatory provisions
requirements of Section 3 of this Act and does not engage in business in the IN ORDER TO BE VALID BETWEEN THE PARTIES
Philippines may bring a civil or administrative action hereunder for opposition, o Also, it must be registered with the IPO IN ORDER TO BE BINDING AGAINST
cancellation, infringement, unfair competition, or false designation of origin and 3RD PERSONS
false description, whether or not it is licensed to do business in the Philippines
under existing laws. Sec. 85. Voluntary License Contract. - To encourage the transfer and dissemination of
technology, prevent or control practices and conditions that may in particular cases
2. DIFFERENCES BETWEEN COPYRIGHTS, TRADEMARKS, AND PATENT constitute an abuse of intellectual property rights having an adverse effect on competition
and trade, all technology transfer arrangements shall comply with the provisions of this
Q: What is the difference between COPYRIGHT, TRADEMARKS, and PATENT? Chapter.
In the case of ELIDAD KHO VS. CA, the SC held: trademark, copyright and patents
are DIFFERENT intellectual property rights that cannot be interchanged with one Q: What are the rights of a licensee in a VLC?
another. Sec. 90. Rights of Licensee. - The licensee shall be entitled to exploit the subject matter
COPYRIGHT TRADEMARK PATENT of the technology transfer arrangement during the whole term of the technology
A TRADEMARK is any visible Meanwhile, the scope of a PATENTABLE INVENTIONS, transfer arrangement
sign capable of COPYRIGHT is confined to on the other hand, refer to
distinguishing the goods literary and artistic works any technical solution of a Q: Who are exempt from the requirements for a VLC?
(trademark) or services which are original problem in any field of Sec. 91. Exceptional Cases. - In exceptional or meritorious cases where SUBSTANTIAL
(service mark) of an intellectual creations in the human activity which is new, BENEFITS will accrue to the economy, such as
enterprise and shall include literary and artistic domain involves an inventive step o (HIREP)
a stamped or marked protected from the moment and is industrially applicable. o High technology content,
container of goods. of their creation. o Increase in foreign exchange earnings,
o Employment generation,
In relation thereto, a TRADE o Regional dispersal of industries and/or substitution with or use of local raw
NAME means the name or materials, or
designation identifying or o In the case of Board of Investments, registered companies with pioneer
distinguishing an enterprise. status,
EXEMPTION from any of the above requirements may be
3. TECHNOLOGY TRANSFER ARRANGEMENTS allowed by the Documentation, Information and Technology
Transfer Bureau (DITTB) after evaluation thereof on a case by case
A. VOLUNTARY LICENSE CONTRACT basis

Chapter IX Voluntary Licensing 1. PROHIBITED CLAUSES

Q: What is a VOLUNTARY LICENSING CONTRACT? Q: What are the PROHOBITED CLAUSES in a VLC? (2010 Bar: State 3 Prohibited Clauses)
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Sec. 87. Prohibited Clauses. - Except in cases under Section 91, the following provisions shall Q: What are the MANDATORY PROVISIONS in a VLC? (2010 Bar: Are there Mandatory
be deemed PRIMA FACIE to have an ADVERSE EFFECT on COMPETITION and TRADE: Provisions in VLC?)
87.1. Those which impose upon the licensee the obligation to acquire from a Sec. 88. Mandatory Provisions. - The following provisions shall be included in voluntary
specific source capital goods, intermediate products, raw materials, and other license contracts:
technologies, or of permanently employing personnel indicated by the licensor; 88.1. That the laws of the Philippines shall govern the interpretation of the same
87.2. Those pursuant to which the licensor reserves the right to fix the sale or and in the event of litigation, the venue shall be the proper court in the place
resale prices of the products manufactured on the basis of the license; where the licensee has its principal office;
87.3. Those that contain restrictions regarding the volume and structure of 88.2. Continued access to improvements in techniques and processes related to
production; the technology shall be made available during the period of the technology
87.4 Those that prohibit the use of competitive technologies in a non-exclusive transfer arrangement;
technology transfer agreement; 88.3. In the event the technology transfer arrangement shall provide for
87.5. Those that establish a full or partial purchase option in favor of the licensor; arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines
87.6. Those that obligate the licensee to transfer for free to the licensor the or the Arbitration Rules of the United Nations Commission on International Trade
inventions or improvements that may be obtained through the use of the licensed Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International
technology; Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the
87.7. Those that require payment of royalties to the owners of patents for patents Philippines or any neutral country; and
which are not used; 88.4. The Philippine taxes on all payments relating to the technology transfer
87.8. Those that prohibit the licensee to export the licensed product unless arrangement shall be borne by the licensor.
justified for the protection of the legitimate interest of the licensor such as exports
to countries where exclusive licenses to manufacture and/or distribute the B. COMPULSORY LICENSING
licensed product(s) have already been granted;
87.9. Those which restrict the use of the technology supplied after the expiration 1. GROUNDS
of the technology transfer arrangement, except in cases of early termination of the
technology transfer arrangement due to reason(s) attributable to the licensee; Chapter X
87.10. Those which require payments for patents and other industrial property COMPULSORY LICENSING
rights after their expiration, termination arrangement;
87.11. Those which require that the technology recipient shall not contest the Q: What are the grounds for the issuance of a COMPULSORY LICENSE?
validity of any of the patents of the technology supplier; Sec. 93. Grounds for Compulsory Licensing. - The Director of Legal Affairs may grant a license
87.12. Those which restrict the research and development activities of the licensee to exploit a patented invention, even without the agreement of the patent owner, in favor of
designed to absorb and adapt the transferred technology to local conditions or to any person who has shown his capability to exploit the invention, under any of the following
initiate research and development programs in connection with new products, circumstances:
processes or equipment; 93.1. National EMERGENCY or other circumstances of extreme urgency;
87.13. Those which prevent the licensee from adapting the imported technology to 93.2. Where the PUBLIC INTEREST, in particular, national security, nutrition, health
local conditions, or introducing innovation to it, as long as it does not impair the or the development of other vital sectors of the national economy as determined
quality standards prescribed by the licensor; by the appropriate agency of the Government, so requires; or
87.14. Those which exempt the licensor for liability for non-fulfillment of his 93.3. Where a JUDICIAL OR ADMINISTRATIVE BODY HAS DETERMINED that the
responsibilities under the technology transfer arrangement and/or liability arising manner of exploitation by the owner of the patent or his licensee is ANTI-
from third party suits brought about by the use of the licensed product or the COMPETITIVE; or
licensed technology; and 93.4. In case of PUBLIC NON-COMMERCIAL USE of the patent by the patentee,
87.15. Other clauses with equivalent effects without satisfactory reason;
93.5. If the patented invention is NOT BEING WORKED IN THE PHILIPPINES ON A
2. MANDATORY PROVISIONS COMMERCIAL SCALE, although capable of being worked, without satisfactory
reason: Provided, That the importation of the patented article shall constitute
working or using the patent.
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to know that a valid patent is or will be used by or for the government, THE RIGHT
Sec. 96. Compulsory Licensing of Patents Involving Semi-Conductor Technology. - In the case HOLDER SHALL BE INFORMED PROMPTLY
of compulsory licensing of patents involving semi-conductor technology, the license may only o 3. THE PETITION MUST BE FILED WITHIN THE PRESCRIPTIVE PERIOD under Sec.
be granted in case of public non-commercial use or to remedy a practice determined after 94.
judicial or administrative process to be anti-competitive.
C. PERIOD TO FILE A PETITION
Sec. 97. Compulsory License Based on Interdependence of Patents. - If the invention protected
by a patent, hereafter referred to as the "second patent," within the country cannot be Sec. 94. Period for Filing a Petition for a Compulsory License.
worked without infringing another patent, hereafter referred to as the "first patent," granted
on a prior application or benefiting from an earlier priority, a compulsory license may be 94.1. A compulsory license may not be applied for on the ground stated in Subsection 93.5
granted to the owner of the second patent to the extent necessary for the working of his before the expiration of a period of four (4) years from the date of filing of the application or
invention, subject to the following conditions: three (3) years from the date of the patent whichever period expires last.
97.1. The invention claimed in the second patent involves an important technical
advance of considerable economic significance in relation to the first patent; 94.2. A compulsory license which is applied for on any of the grounds stated in Subsections
97.2. The owner of the first patent shall be entitled to a cross-license on 93.2, 93.3, and 93.4 and Section 97 may be applied for at any time after the grant of the
reasonable terms to use the invention claimed in the second patent; patent.
97.3. The use authorized in respect of the first patent shall be non-assignable
except with the assignment of the second patent; and II. PATENTS
97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act.
Patent
2. REQUIREMENT TO OBTAIN LICENSE Q: What is the difference between a patentable invention and other intellectual
property rights such as Industrial Design and Undisclosed Information?
Q: What are the requirements to obtain a license? o The latter does not require an inventive step. Thus, they have shorter
o 1. MUST FILE A PETITION WITH THE IPO period of protection
o 2. GR: EFFORTS TO OBTAIN AUTHORIZATION were made as provided for in Sec. A Patent is a right granted to the inventor of a process, product or improvement
95. (This only applies if the IPR owner REFUSES to give authorization) In the IPC, the tenure of protection is 20 years from the date of the filing of the
o Sec. 95. Requirement to Obtain a License on Reasonable Commercial Terms. - 95.1. application
The license will only be granted after the petitioner has made EFFORTS TO OBTAIN o From this time, all rights shall pertain to the patentee (We say to the
AUTHORIZATION from the patent owner on REASONABLE COMMERCIAL TERMS patentee instead of inventor because it is not necessarily granted to the
AND CONDITIONS but such efforts have NOT BEEN SUCCESSFUL within a inventor. Reason: it may be transferred)
reasonable period of time. Ex: Paracetamol. The right to manufacture is subject of annuity (annual fees).
o EXPN: Otherwise, the patent lapses and the public can make use of it. Also, after the
o 95.2. The requirement under Subsection 95.1 shall NOT APPLY in the lapse of 20 years, anyone can use it.
following cases:
(a) Where the petition for compulsory license seeks to remedy 1. PATENTABLE INVENTIONS
a practice determined after judicial or administrative process
to be anti-competitive; Q: What are the Conditions of Patentability?
(b) In situations of national emergency or other circumstances 1. Any TECHNICAL SOLUTION of a problem in any field of human activity
of extreme urgency; o Ex of such problems: getting sick medicine, need for communication
(c) In cases of public non-commercial use. cellphone
o 95.3. In situations of national emergency or other circumstances of extreme 2. Must be NOVEL (or new)
urgency, the right holder shall be NOTIFIED as soon as reasonably practicable. o When it does NOT form a PRIOR ART
o 95.4. In the case of public non-commercial use, where the government or 3. Must involve an INVENTIVE STEP (most important)
contractor, without making a patent search, knows or has demonstrable grounds o Should not be obvious to a person skilled in the art
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o Ex: the spraying over the top of crops does not involve an inventive step. 25.1. The disclosure of information contained in the application during the twelve
This is customarily done (12) months preceding the filing date or the priority date of the application shall
4. INDUSTRIALLY APPLICABLE not prejudice the applicant on the ground of lack of novelty if such disclosure was
o May be produced or used in an industry and that there is a market which made by:
demands such invention o (a) The inventor;
o (b) A patent office and the information was contained
Q: For instance, Miguel invented the eraser. Laida invented the pencil. Michael put together (a) in another application filed by the inventor and should not
the 2 inventions. Is this patentable? have been disclosed by the office, or
NO. If the combination of the patent will NOT produce something which is (b) in an application filed without the knowledge or consent of
different, (i.e. the culmination of which did NOT produce ANOTHER USE) then the the inventor by a third party which obtained the information
same is not patentable directly or indirectly from the inventor; or
In this case, the inherent elements of each patent is still present. There is no o (c) A third party which obtained the information directly or indirectly
novelty to the combination. There is nothing unusual. There is no surprising change from the inventor.
of the 2 patents. Thus, the same is not patentable. Q: For instance, a new gadget better than the iPhone was published in FB on Feb
Not new; Does not involve an inventive step. 14, 2016 by the inventor. The next day, the inventor applied for patent. Is this
invention patentable? Will it be considered new or a prior art?
Chapter II o YES, It is considered a non-prejudicial disclosure. Thus, it is still
PATENTABILITY patentable
o It is still considered novel.
Sec. 21. Patentable Inventions. - Any technical solution of a problem in any field of human Q: If the same was made on June 1, 2015, in FB. The inventor filed an application
activity which is new, involves an inventive step and is industrially applicable shall be today. Is the invention still considered new?
patentable. It may be, or may relate to, a product, or process, or an improvement of any of o NO. It is no longer a non-prejudicial disclosure because it is no longer
the foregoing. within 12 months preceding the application.

Sec. 23. Novelty. - An invention shall not be considered new if it forms part of a prior art. 25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the
filing date of application, had the right to the patent.
Q: What constitutes PRIOR ART?
Everything not made available to the public from the date of filing of the Sec. 26. Inventive Step. - An invention involves an inventive step if, having regard to prior art,
application it is not obvious to a person skilled in the art at the time of the filing date or priority date of
Sec. 24. Prior Art. - Prior art shall consist of: the application claiming the invention.
o 24.1. Everything which has been made available to the public anywhere
in the world, before the filing date or the priority date of the application Sec. 27. Industrial Applicability. - An invention that can be produced and used in any industry
claiming the invention; and shall be industrially applicable
o 24.2. The whole contents of an application for a patent, utility model, or
industrial design registration, published in accordance with this Act, filed 2. NON-PATENTABLE INVENTIONS
or effective in the Philippines, with a filing or priority date that is earlier
than the filing or priority date of the application: Provided, That the Q: What are NON-PATENTABLE INVENTIONS? (Memorize)
application which has validly claimed the filing date of an earlier Sec. 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:
application under Section 31 of this Act, shall be prior art with effect as 22.1. Discoveries, scientific theories and mathematical methods;
of the filing date of such earlier application: Provided further, That the 22.2. Schemes, rules and methods of performing mental acts, playing games or
applicant or the inventor identified in both applications are not one and doing business, and programs for computers;
the same. 22.3 Methods for treatment of the human or animal body by surgery or therapy
Note: Sec. 24 must be read together with Sec. 25 and diagnostic methods practiced on the human or animal body. This provision
Sec. 25. Non-Prejudicial Disclosure. shall not apply to products and composition for use in any of these methods;
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22.4. Plant varieties or animal breeds or essentially biological process for the If made by 2 or more persons JOINTLY owned by them jointly
production of plants or animals. This provision shall not apply to micro-organisms Sec. 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs,
and non-biological and microbiological processes. or assigns. When two (2) or more persons have jointly made an invention, the right
o Provisions under this subsection shall not preclude Congress to consider to a patent shall belong to them jointly
the enactment of a law providing sui generis protection of plant varieties Q: What if 2 or more persons made use of the patent SEPARATELY, who has the
and animal breeds and a system of community intellectual rights right to the patent?
protection: o It depends. Whoever filed the application first will have the right to the
22.5. Aesthetic creations; and patent. (First-to-File Rule)
22.6. Anything which is contrary to public order or morality.
B. FIRST-TO-FILE RULE
Q: Assuming Einstein filed an application in the IPO for his theory of relativity. If you were
the examiner, will you allow his application? Q: What is the First-To-File Rule?
NO, I will REJECT his application. It falls under 22.1 of the non-patentable Sec. 29. First to File Rule. - If two (2) or more persons have made the invention
inventions, scientific theory separately and independently of each other, the right to the patent shall belong to
the person who filed an application for such invention, or where two or more
Q: For instance, Miguel disclosed a new method for Alzheimers disease. It is a new applications are filed for the same invention, to the applicant who has the earliest
medicine, applied by topical application and diagnosis of disease. Assuming you are an IP filing date or, the earliest priority date.
lawyer, how do you protect this new method of application, diagnosis, and the medicine?
You advise him to file an application for patent but only with respect to the Q: For instance, Miguel steals Laidas idea. He filed an application for patent. Laira
medicine. The application and diagnosis are not patentable. subsequently filed a patent application. Who is entitled to the issuance of patent?
If all the requirements of a valid application are present, the patent will necessarily
Q: Glutathione is a known substance which is good for the liver. It was later on discovered issue in favor of Miguel.
to have side effects of skin whitening. Can glutathione be patented anew as a skin However, the First-To-File Rule applies when 2 or more persons create an
whitening agent? invention separately and independently. It is not applied in a case of stealing the
NO. Mere discovery of a new use for a property is not patentable. It does not invention of another.
involve an inventive step. Thus, Laida is not without remedy. She has the right to file a petition for
Another example of a new use for another property is instead of ingesting a cancellation of the patent. If the application is still pending, she can go to the court
substance thru pills, it is done thru a patch. This is not patentable. It does not BAR 2005: Cezar works in a car manufacturing company owned by Joab. Cezar is quite
involve an inventive step. innovative and loves to tinker with things. With the materials and parts of the car, he was
Before, pharmaceutical companies were in the practice of finding new uses of the able to invent a gas-saving device that will enable cars to consume less gas. Francis, a co-
same medicine by adding a few ingredients. This way, they can file repeatedly worker, saw how Cezar created the device and likewise, came up with a similar gadget, also
applications for patent despite the lapse of the 20-year period of protection. using scrap materials and spare parts of the company. Thereafter, Francis filed an
The question asked should be: Is there a substantial improvement? Must check application for registration of his device with the Bureau of Patents. Eighteen months later,
the ACTIVE INGREDIENT. If it provides for a substantial improvement, a higher Cezar filed his application for the registration of his device with the Bureau of Patents.
efficacy as compared before, then it could be considered as patentable. 1. Is the gas-saving device patentable? Explain.
o SUGGESTED ANSWER: Yes, the gas-saving device is patentable because it
3. OWNERSHIP OF PATENT provides a technical solution to a problem in a field of human activity. It
is new and involves an inventive step, and certainly industrially
A. RIGHT TO A PATENT applicable. It therefore fulfills the requisites mandated by the
intellectual Property Code for what is patentable.
Chapter III RIGHT TO A PATENT 2. Assuming that it is patentable, who is entitled to the patent? What, if any, is
the remedy of the losing party?
Q: Who has the right to the patent? o SUGGESTED ANSWER: Cezar is entitled to the patent because he was the
If only made by 1 PERSON the inventor, his heirs, or assigns real inventor. Francis, copying from the work of Cezar, cannot claim the
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essential criteria of an inventor, who must possess essential elements of

novelty, originality and precedence to be entitled to protection. D. RIGHT OF PRIORITY
Nevertheless, under the "first to file rule," Francis application would
have to be given priority. Cezar, however, has within three months from Q: What is the right of priority?
the decision, to have it cancelled as the rightful inventor; or within one Sec. 31. Right of Priority. - An application for patent filed by any person who has
year from publication, to file an action to prove his priority to the previously applied for the same invention in another country which by treaty,
invention, which has been taken from him and fraudulently registered convention, or law affords similar privileges to Filipino citizens, shall be considered
by Francis. as filed as of the date of filing the foreign application: Provided, That:
3. Supposing Joab got wind of the inventions of his employees and also laid claim o (a) the local application expressly claims priority;
to the patents, asserting that Cezar and Francis were using his materials and o (b) it is filed within twelve (12) months from the date the earliest foreign
company time in making the devices, will his claim prevail over those of his application was filed; and
employees? Explain. o (c) a certified copy of the foreign application together with an English
o SUGGESTED ANSWER: No, Joab's claim cannot prevail over those of his translation is filed within six (6) months from the date of filing in the
employees. In the first place, Joab did not commission any of the two Philippines.
employees to invent the device, and its invention did not fall within their
regular duties. What prevails is the provision of the Intellectual Property Q: For instance, Miguel made an invention which was already an invention of Nikon Corp.
Code that holds that the invention belongs to the employee, if the without knowing that the latter had first thought of it. The inventions were similar, though
inventive activity is not a part of his regular duties, even if he uses the not identical. Nikon filed an application for patent with the Japan Patent Office on January
time, facilities and materials of the employer. 2, 2014. Miguel filed an application for patent with the IPO Philippines on June 1 ,2014. On
January 2, 2016, Nikon filed an application for patent in the IPO Philippines. To whom shall
C. INVENTIONS CREATED PURSUANT TO A COMMISSION the patent be issued?
If we follow the First-To-File Rule, the patent should be issued in favor of Miguel
Q: In the case inventions made by employee, who has the right to the patent? But there is also another rule to take into consideration: Right of Priority under
IF PURSUANT TO A COMMISSION: Sec. 31.
o Sec. 30. Inventions Created Pursuant to a Commission. 30.1. The o The priority right provided under the Paris Convention requires that if
person who commissions the work shall own the patent, unless patentee in one country desires to have priority right in another country,
otherwise provided in the contract. he must file an application in the other country within a period of 2
GR: The person who commissions the work EMPLOYER months from the first application
o Thus, if the employee is the one who invented a process or product, he o The period was lengthened to 13 months in the Patent Cooperation
must assign it to the employer. Treaty.
EXPN: Unless otherwise provided in the contract EMPLOYEE o If the application was filed within the prescribed period, the date of first
o The usual agreement is that when an employee invented something application shall be considered the date in which the second application
pursuant to a commission, the employer shall own the patent but the was filed. Thus, having a priority right in time
employee shall be entitled to royalties o Section 31 provides for a period of 12 months
IF IN THE COURSE OF EMPLOYMENT: o IPC took effect on 1998. The Philippines became a signatory of the
o 30.2. In case the employee made the invention in the course of his Patent Cooperation Treaty only in 2001.
employment contract, the patent shall belong to: In this case, Nikon filed its application in Japan on January 2, 2014. It filed its
(a) The EMPLOYEE, if the inventive activity is not a part of his application in the Philippines on January 2, 2016. There is a 2 year difference. Thus,
regular duties even if the employee uses the time, facilities not having filed the same within 12 months as provided in the IPC, Nikon does not
and materials of the employer. have priority right over the patent. The patent should issue in Miguels favor.
(b) The EMPLOYER, if the invention is the result of the
performance of his regularly-assigned duties, 4. GROUNDS FOR CANCELLATION OF A PATENT
EXPN: unless there is an agreement, express or
implied, to the contrary Chapter VI CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE
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Sec. 70. Time to File Action in Court. - The actions indicated in Sections 67 and 68 shall be filed
Q: What are the grounds for cancellation of patents? within one (1) year from the date of publication made in accordance with Sections 44 and 51,
Sec. 61. Cancellation of Patents. respectively.
61.1. Any interested person may, upon payment of the required FEE, PETITION to
cancel the patent or any claim thereof, or parts of the claim, on any of the 6. RIGHTS CONFERRED BY A PATENTEE
following GROUNDS:
o (a) That what is claimed as the invention is NOT NEW OR PATENTABLE; Chapter VIII RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
o (b) That the patent DOES NOT DISCLOSE THE INVENTION IN A MANNER
SUFFICIENTLY CLEAR AND COMPLETE for it to be carried out by any Q: What are the rights conferred by a patentee?
person skilled in the art; or Sec. 71. Rights Conferred by Patent.
o (c) That the patent is CONTRARY TO PUBLIC ORDER OR MORALITY. 71.1. A patent shall confer on its owner the following EXCLUSIVE RIGHTS:
61.2. Where the grounds for cancellation relate to some of the claims or parts of (a) Where the subject matter of a patent is a product, to restrain, PROHIBIT AND
the claim, cancellation may be effected to such extent only. PREVENT any unauthorized person or entity from making, using, offering for sale,
selling or importing that product;
5. REMEDY OF THE TRUE AND ACTUAL INVENTOR (b) Where the subject matter of a patent is a process, to RESTRAIN, PREVENT OR
PROHIBIT any unauthorized person or entity from using the process, and from
Sec. 29. First to File Rule. - If two (2) or more persons have made the invention separately and manufacturing, dealing in, using, selling or offering for sale, or importing any
independently of each other, the right to the patent shall belong to the person who filed an product obtained directly or indirectly from such process.
application for such invention, or where two or more applications are filed for the same 71.2. Patent owners shall also have the right to ASSIGN, OR TRANSFER by succession the
invention, to the applicant who has the earliest filing date or, the earliest priority date. patent, and to CONCLUDE LICENSING CONTRACTS for the same.

Chapter VII REMEDIES OF A PERSON WITH A RIGHT TO A PATENT Sec. 55. Annual Fees.
55.1. To maintain the patent application or patent, an annual fee shall be paid upon the
Sec. 67. Patent Application by Persons Not Having the Right to a Patent. expiration of four (4) years from the date the application was published pursuant to Section
67.1. If a person referred to in Section 29 other than the applicant, is declared by final court 44 hereof, and on each subsequent anniversary of such date. Payment may be made within
order or decision as having the right to the patent, such person may, within three (3) months three (3) months before the due date. The obligation to pay the annual fees shall terminate
after the decision has become final: should the application be withdrawn, refused, or cancelled.
(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention; 55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the
(c) Request that the application be refused; or patent considered as lapsed from the day following the expiration of the period within which
(d) Seek cancellation of the patent, if one has already been issued. the annual fees were due. A notice that the application is deemed withdrawn or the lapse of
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application a patent for non-payment of any annual fee shall be published in the IPO Gazette and the
filed under Subsection 67.1(b). lapse shall be recorded in the Register of the Office.

Q: What are the remedies of a true and actual inventor? 55.3. A grace period of six (6) months shall be granted for the payment of the annual fee,
Sec. 68. Remedies of the True and Actual Inventor. - If a person, who was deprived upon payment of the prescribed surcharge for delayed payment
of the patent without his consent or through fraud is declared by final court order
or decision to be the true and actual inventor, the court shall order for his 7. LIMITATIONS OF PATENT RIGHTS
SUBSTITUTION as patentee, or at the option of the true inventor, CANCEL the
patent, and award actual and other DAMAGES in his favor if warranted by the Sec. 71. Rights Conferred by Patent.
circumstances 71.1. A patent shall confer on its owner the following exclusive rights:
(a) Where the subject matter of a patent is a product, to restrain, prohibit and
prevent any unauthorized person or entity from making, using, offering for sale,
selling or importing that product;
Nudibranch 9
(b) Where the subject matter of a patent is a process, to restrain, prevent or Q: When may government validly use the invention even without agreement of patent
prohibit any unauthorized person or entity from using the process, and from owner?
manufacturing, dealing in, using, selling or offering for sale, or importing any Sec. 74. Use of Invention by Government.
product obtained directly or indirectly from such process. 74.1. A Government agency or third person authorized by the Government may exploit the
71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, invention even without agreement of the patent owner where:
and to conclude licensing contracts for the same. (a) the public interest, in particular, national security, nutrition, health or the
development of other sectors, as determined by the appropriate agency of the
Sec. 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent third government, so requires; or
parties from performing, without his authorization, the acts referred to in Section 71 hereof (b) A judicial or administrative body has determined that the manner of
in the following circumstances: exploitation, by the owner of the patent or his licensee, is anti-competitive.
72.1 Using a patented product which has been put on the market in the Philippines 74.2. The use by the Government, or third person authorized by the Government shall be
by the owner of the product, or with his express consent, insofar as such use is subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102.
performed after that product has been so put on the said market
72.2. Where the act is done privately and on a non-commercial scale or for a non- 8. PATENT INFRINGEMENT
commercial purpose: Provided, That it does not significantly prejudice the
economic interests of the owner of the patent; If there is a violation of patent right criminal action for infringement
72.3. Where the act consists of making or using exclusively for the purpose of
experiments that relate to the subject matter of the patented invention; If an unauthorized person makes use of patent only civil action for infringement. Criminal
72.4. Where the act consists of the preparation for individual cases, in a pharmacy action will only apply AFTER judgment
or by a medical professional, of a medicine in accordance with a medical
prescription or acts concerning the medicine so prepared; Sec. 76. Civil Action for Infringement.
72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any 76.1. The making, using, offering for sale, selling, or importing a patented product or a
other country entering the territory of the Philippines temporarily or accidentally: product obtained directly or indirectly from a patented process, or the use of a patented
Provided, That such invention is used exclusively for the needs of the ship, vessel, process without the authorization of the patentee constitutes patent infringement.
aircraft, or land vehicle and not used for the manufacturing of anything to be sold
within the Philippines. 76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented
invention, whose rights have been infringed, may bring a civil action before a court of
A. PRIOR USER competent jurisdiction, to recover from the infringer such damages sustained thereby, plus
attorneys fees and other expenses of litigation, and to secure an injunction for the
Q: What is the right of prior user? protection of his rights.
Sec. 73. Prior User.
73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was 76.3. If the damages are inadequate or cannot be readily ascertained with reasonable
using the invention or has undertaken serious preparations to use the invention in certainty, the court may award by way of damages a sum equivalent to reasonable royalty.
his enterprise or business, before the filing date or priority date of the application
on which a patent is granted, shall have the right to continue the use thereof as 76.4. The court may, according to the circumstances of the case, award damages in a sum
envisaged in such preparations within the territory where the patent produces its above the amount found as actual damages sustained: Provided, That the award does not
effect. exceed three (3) times the amount of such actual damages.

73.2. The right of the prior user may only be transferred or assigned together with his 76.5. The court may, in its discretion, order that the infringing goods, materials and
enterprise or business, or with that part of his enterprise or business in which the use or implements predominantly used in the infringement be disposed of outside the channels of
preparations for use have been made. commerce or destroyed, without compensation.

B. USE BY GOVERNMENT 76.6. Anyone who actively induces the infringement of a patent or provides the infringer with
a component of a patented product or of a product produced because of a patented process
knowing it to be especially adopted for infringing the patented invention and not suitable for
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substantial non-infringing use shall be liable as a contributory infringer and shall be jointly HELD: The SC held that under Section 163 of the IPC, actions for unfair competition shall be
and severally liable with the infringer. brought before the proper courts with appropriate jurisdiction under existing laws. The law
contemplated in Section 163 of IPC is RA 166 otherwise known as the Trademark Law. Section
Amendment 76.6 a person actively inducing another is liable for patent infringement as 27 of the Trademark Law provides that jurisdiction over cases for infringement of registered
a contributory infringer = jointly and severally liable marks, unfair competition, false designation of origin and false description or representation,
In other words, contributory infringers are solidarily liable with the infringer is lodged with the Court of First Instance (now Regional Trial Court). Since RA 7691 is a
general law and IPC in relation to Trademark Law is a special law, the latter shall prevail.
A. JURISDICTION Actions for unfair competition therefore should be filed with the RTC.

1. A.M. No. 02-1-11 BAR 2003: K-9 Corporation, a foreign corporation alleging itself to be the registered owner
The SC has designated several Special Intellectual Property Courts (SIPC) which of trademark K-9 and logo K, filed an Inter Partes case with the Intellectual Property
shall try and decide cases involving violations of intellectual property rights defined Office against Kanin Corporation for the cancellation of the latters mark K-9 and logo
under the Intellectual Property Code committed within their respective territorial K. During the pendency of the case before the IPO, Kanin Corporation brought suit
areas. against K-9 Corporation before the RTC for infringement and damages. Could the action
Since there are only a few cases of violations of intellectual property rights now before the RTC prosper? Why?
pending in other branches of the aforementioned RTCs, such cases shall remain
with and shall be decided by the branches to which they have been assigned. Only B. CRIMINAL ACTION FOR PATENT INFRINGEMENT
cases hereafter filed may be assigned to the designated special courts.
Sec. 84. Criminal Action for Repetition of Infringement. - If infringement is repeated by the
Q: Which court has jurisdiction for an action of infringement? infringer or by anyone in connivance with him after finality of the judgment of the court
Concurrent jurisdiction is granted to the RTC and IPO for infringement and against the infringer, the offenders shall, without prejudice to the institution of a civil action
damages (IPO for damages not less than 200,000; RTC without regard as to for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for
amount of damages) the period of not less than six (6) months but not more than three (3) years and/or a fine of
o RTC Criminal and Civil Actions not less than One hundred thousand pesos (P100,000) but not more than Three hundred
o IPO Administrative Actions thousand pesos (P300,000), at the discretion of the court. The criminal action herein
SC Memorandum Circular 02-1-11-SC dated Feb. 19, 2013 designation of the provided shall prescribed in three (3) years from date of the commission of the crime.
RTC as an IPC Court
Was amended further designating RTC as a Special Commercial Court C. TESTS IN PATENT INFRINGEMENT

2. SAMSON VS. CABANOS In the case of drawings, it is easily to tell if there is infringement. Just compare the different
DESIGN VIEWS to and determine whether or not there is infringement
SAMSON vs. HON. DAWAY / SAMSON vs. HON. CABANOS
In the case of patents, instead of views, we have what is called SPECIFICATIONS and CLAIMS
FACTS: The petitioner, owner/proprietor of ITTI Shoes/Mano Shoes Manufactuirng Ex: a shoe has 5 claims. 1st is the sole; 2nd is the lace; 3rd is the design on the right
Corporation, allegedly sold or offers the sale of garment product using the trademark side; 4th is the design in the left side; 5th is the inside of the shoe. The inventor
Caterpillar to the prejudice of Caterpillar, Inc., private respondent in this case. The applies for a patent over these 5 claims.
respondent filed the case with the RTC. The petitioner questioned the jurisdiction of the trial
court over the offense charged contending that the case should be filed with the MTC Q: What are the 2 tests to determine whether or not there is patent infringement?
because violation of unfair competition is penalized with imprisonment not exceeding 6 years 1. Literal Infringement
under RA 7691. o Exactness rule
o Addition rule
ISSUE: Which court has jurisdiction over criminal and civil cases for violation of intellectual 2. Doctrine of equivalence
property rights?
i. LITERAL INFRINGEMENT
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Sec. 81. Defenses in Action for Infringement. - In an action for infringement, the
Q: What is the test of LITERAL INFRINGEMENT? defendant, in addition to other defenses available to him, may show the
Sec. 75. Extent of Protection and Interpretation of Claims. 75.1. The extent of INVALIDITY OF THE PATENT, OR ANY CLAIM thereof, on any of the GROUNDS ON
protection conferred by the patent shall be determined by the claims, which are to WHICH A PETITION OF CANCELLATION can be brought under Section 61 hereof
be interpreted in the light of the description and drawings.
E. CONTRIBUTORY PATENT INFRINGEMENT
Q: What are the 2 rules associated with the Literal Infringement test?
1. EXACTNESS RULE the infringing material copies exactly the same claims and Sec. 75. Extent of Protection and Interpretation of Claims. -
specifications 75.1. The extent of protection conferred by the patent shall be determined by the claims,
o Ex: the applicant of a patent has the same exact claims as that of a which are to be interpreted in the light of the description and drawings.
patentees invention: i.e. all 5 claims are identical: in the shoe example,
it has the same design, same sole, same lace, etc. 9. ASSIGNMENT AND TRANSMISSION OF RIGHTS
2. ADDITION RULE the infringing material merely adds additional claims or
specifications without substantial modification of the original patent Chapter XI ASSIGNMENT AND TRANSMISSION OF RIGHTS
o Ex: in the shoe example, the applicant copies all 5 claims, but adds an
additional 6th claim. However, the additional claim does not substantially Sec. 103. Transmission of Rights.
modify the patent. 103.1 Patents or applications for patents and invention to which they relate, shall be
protected in the same way as the rights of other property under the Civil Code.
ii. DOCTRINE OF EQUIVALENTS
103.2. Inventions and any right, title or interest in and to patents and inventions covered
Q: What is the DOCTRINE OF EQUIVALENTS? (Bar question) thereby, may be assigned or transmitted by inheritance or bequest or may be the subject of a
75.2. For the purpose of determining the extent of protection conferred by the license contract.
patent, due account shall be taken of elements which are equivalent to the
elements expressed in the claims, so that a claim shall be considered to cover not Sec. 104. Assignment of Inventions. - An assignment may be of the entire right, title or
only all the elements as expressed therein, but also equivalents interest in and to the patent and the invention covered thereby, or of an undivided share of
o Ex: for instance, in the shoe example, only 3 claims are identical. In the entire patent and invention, in which event the parties become joint owners thereof. An
determining whether or not there is infringement applying the Doctrine assignment may be limited to a specified territory.
of Equivalents, the question is whether or not these 3 claims are
elements which are equivalent to the elements expressed in the original Sec. 105. Form of Assignment. - The assignment must be in writing, acknowledged before a
patent. notary public or other officer authorized to administer oath or perform notarial acts, and
o Q: W/N the new patent introduces substantial modification or changes certified under the hand and official seal of the notary or such other officer.
in the claim?
o Q: W/N it produces the same function or same product? Sec. 106. Recording.
o Q: W/N it achieves something in the same way? 106.1. The Office shall record assignments, licenses and other instruments relating to the
transmission of any right, title or interest in and to inventions, and patents or application for
D. DEFENSES IN ACTION FOR INFRINGEMENT patents or inventions to which they relate, which are presented in due form to the Office for
registration, in books and records kept for the purpose. The original documents together with
Q: What are the valid defenses in an action for infringement? a signed duplicate thereof shall be filed, and the contents thereof should be kept
1. Patent is not a claim covered by protection confidential. If the original is not available, an authenticated copy thereof in duplicate may be
2. Invention is not new or not patentable filed. Upon recording, the Office shall retain the duplicate, return the original or the
3. Any of the grounds for cancellation are present authenticated copy to the party who filed the same and notice of the recording shall be
4. Invalid patent or claim published in the IPO Gazette.
5. Grounds for petition for cancellation
106.2. Such instruments shall be void as against any subsequent purchaser or mortgagee for
valuable consideration and without notice, unless, it is so recorded in the Office, within three
Nudibranch 12
(3) months from the date of said instrument, or prior to the subsequent purchase or Section 28 of the IPC provides that the right to a patent belongs to the inventor, his
mortgage. heirs or assigns. Since Che-che is already dead, the heirs, including Franco, can file
the application.
Sec. 107. Rights of Joint Owners. - If two (2) or more persons jointly own a patent and the In addition Section 32.2 of the IPC provides that if the applicant is not the inventor,
invention covered thereby, either by the issuance of the patent in their joint favor or by the IPO shall require the applicant to submit the inventor's authority. In this case, it
reason of the assignment of an undivided share in the patent and invention or by reason of does not appear that the corporation was authorized. Besides, it is clear from the
the succession in title to such share, each of the joint owners shall be entitled to personally problem that the corporation was only used as a conduit of Che-che for the filing of
make, use, sell, or import the invention for his own profit: Provided, however, That neither of the application.
the joint owners shall be entitled to grant licenses or to assign his right, title or interest or
part thereof without the consent of the other owner or owners, or without proportionally Q: Supposing Albert Einstein were alive today and he filed with the Intellectual Property
dividing the proceeds with such other owner or owners. Office (IPO) an application for patent for his theory of relativity expressed in the formula E =
mc2. The IPO disapproved Einstein's application on the ground that his theory of relativity is
BAR PROBLEMS: not patentable. Is the IPO' s action correct?
Q: X invented a method of improving the tenderness of meat by injecting an enzyme YES, the IPO is correct.
solution into the liver of the animal shortly before a slaughter. Is the invention patentable? Discoveries, scientific theories and mathematical methods are non-patentable
The invention is patentable. inventions under Sec. 22.1 of the IPC
Section 21 of IPC provides that "any technical solution of a problem in any field of A scientific theory like Einsteins theory of relativity is discovered, it is not invented
human activity which is new, involves an inventive step and is industrially
applicable shall be patentable. It may be, or may relate to, a product, or process, or III. TRADEMARKS
an improvement of any of the foregoing."
The process of improving the tenderness of meat appears to be a new technical 1. DEFINITION OF MARKS, COLLECTIVE MARKS, TRADE NAMES, SLOGAN
solution.
Q: Generally, what is a Trademark?
Q: X invented a bogus coin detector which can be used exclusively on self-operating It is any word, mark, symbol, sign, 3-dimensional mark, or combination which
gambling devices otherwise known as one-armed bandits. Can X apply for a patent? distinguishes the goods of an enterprise as opposed to the goods of others
X may not apply for the patent. If it distinguishes services, it is called Service Mark
Section 22.6 provides that anything that is contrary to public order or morality shall If it distinguishes goods or services owned by a group or association, it is called
be excluded from patent protection. Collective Mark
The machine involved in this case appears to be a gambling device or a tool that is A Slogan is a short phrase used to capture brand essence or personality
used to cheat in gambling or in gambling itself, hence it is contrary to public order
and morality. However, if the machine can be used in legalized gambling such as if PART III THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES
the in cases of exclusive use of casinos established by the government, such device
can be patented. Sec. 121. Definitions. - As used in Part III, the following terms have the following meanings:
121.1. "Mark" means any visible sign capable of distinguishing the goods
Q: Che-che invented a device that can convert rainwater to automobile fuel. She asked (trademark) or services (service mark) of an enterprise and shall include a stamped
Macon, a lawyer, to assist in getting her invention patented. Macon suggested that they or marked container of goods;
form a corporation with other friends and have the corporation apply for the patent, 80% of 121.2. "Collective mark" means any visible sign designated as such in the
the shares of stock thereof to be subscribed by Che-che and 5% by Macon. The corporation application for registration and capable of distinguishing the origin or any other
was formed and the patent application was filed. However, Che-che dies three months later common characteristic, including the quality of goods or services of different
of a heart attack. Franco, the estranged husband of Che-che, contested the application of enterprises which use the sign under the control of the registered owner of the
the corporation and filed his own patent application as the sole surviving heir of Che-che. collective mark;
Decide the issue with reasons. 121.3. "Trade name" means the name or designation identifying or distinguishing
The case should be decided in favor of Franco. an enterprise;
121.4. "Bureau" means the Bureau of Trademarks;
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121.5. "Director" means the Director of Trademarks; complied with. Even the mere sale of the license to an affiliate qualifies
121.6. "Regulations" means the Rules of Practice in Trademarks and Service Marks as actual use.
formulated by the Director of Trademarks and approved by the Director General; Rights of a trademark are acquired thru:
and o 1. Registration; and
121.7. "Examiner" means the trademark examiner o 2. Actual Use
Q: Doc Martens is a brand from Germany. They wanted to sell their products in
Q: Is smell registrable as a mark? the Philippines. However, they discovered that Chinese-Filipino have applied for
NO. In the Philippines, it is not yet registrable. trademark and were granted the same. What is the remedy of Doc Martens?
Q: How about snippets of sounds, are they reigstrable as marks? o File a petition for cancellation
o NO. In the Philippines, they are not yet registrable. Q: Assuming Doc Martens was able to file a petition and the same was granted.
(See, however, the opinion of FUNA on the registrability of scent and sound in It now seeks to file its application for Trademark in the Philippines. Is it necessary
memaid) that Doc Martens comply with the requirement of actual use?
o YES. The IPO of the Philippines is lenient on the requirement for foreign
2. ACQUISITION OF OWNERSHIP OF MARK enterprises. It considers selling in a website as actual use.
Limitation: The website must be accessible by the Philippine
A. SEC. 122 IPO and the goods must be offered for sale to Filipinos in the
Philippines
Q: How do you acquire ownership of a mark?
1. REGISTRATION Q: What is the significance of registration?
2. SUBSEQUENT ACTUAL USE Ownership of a mark is acquired by registration and actual use
Sec. 122. How Marks are Acquired. - The rights in a mark shall be acquired through If the mark is not registered, the owner cannot file for an action for infringement
registration made validly in accordance with the provisions of this law. However, he may still file an action for unfair competition

Q: What is the requirement of ACTUAL USE? Q: When is non-use excused?
124.2. The applicant or the registrant shall file a declaration of actual use of the If the registrant does not actually use the mark yet because of circumstances out of
mark with evidence to that effect, as prescribed by the Regulations within three (3) his control.
years from the filing date of the application. Otherwise, the application shall be For example, a company wants to enter into the foods business with the use of a
refused or the mark shall be removed from the Register by the Director. particular mark. However, it still needs the approval of the FDA before it can start
The IPC no longer provides for PRIOR USE before registration as a condition for its business. While the application is pending and the approval of the FDA is not yet
ownership of a mark. Registration is the sole basis. given, the non-use of the mark is excusable.
o EXPN: A trade name or business In other words, non-use is excused in instances such as when a government agency
However, there must be ACTUAL USE after registration regulating the business has not yet given approval and other causes not
An applicant of a mark must have been in ACTUALLY USE IN COMMERCE IN THE attributable to the applicant of the mark.
PHILIPPINES of the mark and file a DECLARATION OF ACTUAL USE OF MARK The applicant will merely need to file an affidavit that it cannot yet actually use the
(DAUM). He must use it within 3 years from the date of the filing of the application mark. Thus, the application for trademark will not yet be cancelled
o However, this is notwithstanding the possibility of the refusal of the
application or the cancellation of the grant of the application Q: Ownership of a trademark is acquired by:
o Note: DAUM alone, without proof of actual use would not be sufficient A. Long and continued use of the trademark, perfected by registration thereof
to establish actual use B. Registration of a trademark, together with the actual use thereof
o Actual use registration > Registration actual use C. Long and continued use of a trademark, with or without registration thereof
o DAU it is not required that the company actually sells its products. As D. Registration of a trademark validly acquired, with or without actual use thereof
long as it offers its products in the market while USING the mark, it is E. None of the above
sufficient. Even if only one person bought it, actual use is already
Q: How long is the duration of protection of the Trademark?
Nudibranch 14
10 YEARS subject to indefinite renewal for periods of 10 years each apply for its registration. Registration merely creates a prima facie presumption of the
Sec. 145. Duration.- A certificate of registration shall remain in force for ten (10) validity of the registration
years:
o Provided, That the registrant shall file a declaration of actual use and FACTS: Petitioner, a corporation duly organized and existing under the laws of Germany
evidence to that effect, or shall show valid reasons based on the applied for various trademark registrations before the IPO. However, the applications were
existence of obstacles to such use, as prescribed by the Regulations, suspended in view of the existing registration of the mark BIRKENSTOCK AND DEVICE under
within one (1) year from the fifth anniversary of the date of the Registration No. 56334 dated October 21, 1993 in the name of Shoe Town International and
registration of the mark. Otherwise, the mark shall be removed from Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo
the Register by the Office. Marketing Corporation.
o This is also known as Declaration of Non-Use. It is in essence another
required DAU but this time within 1 year from the 5th anniversary of the On May 27, 1997, petitioner filed a petition (Cancellation Case) for cancellation of
date of registration. Thus, 2 DAUs are required to be filed Registration No. 564334 on the ground that it is the lawful and rightful owner of the
o See Sec. 152 for exception on Declaration of Non-Use Birkenstock marks. During its pendency, however, respondent and/or it predecessor-in-
interest failed to file the required 10th Year Declaration of Actual Use (10th Year DAU) for
Q: A trademark registration MAY be owned in perpetuity. Registration No. 56334 on or before October 21, 2004, thereby resulting the cancellation of
A. True such mark. Accordingly, the cancellation case was dismissed for being moot and academic
o The duration of protection of a Trademark is 10 YEARS subject to thereby paving the way for the publication of the subject applications.
indefinite renewal for periods of 10 years each
B. False In response, respondent filed with the Bureau of Legal Affairs (BLA) of the IPO three separate
verified notices of opposition to the subject applications docketed as Inter Partes Cases
Q: What is the difference between the Declaration of Prior Use and Declaration of Non-Use? claiming, among others, it, together with its predecessor-in-interest, has been using the
DAU (SEC. 124.2) DNU (SEC. 145) Birkenstock marks in the Philippines for more than 16 years through the mark BIRKENSTOCK
As to Required within 3 years from the Within 1 year from the 5th anniversary AND DEVICE. In its Decision, the BLA of the IPO sustained respondents opposition, thus
period of filing date of the application of the date of the registration of the ordering the rejection of the subject applications. Aggrieved, petitioner appealed to the IPO
filing trademark Director General whereby in its decision, the latter reversed and set aside the ruling of the
As to Even if registration has been Mark shall be removed from the BLA thus allowing the registration of the subject applications.
Effect of granted, such registration would be Register by the office
Failure to cancelled and the mark removed Finding the IPO Director Generals reversal of the BLA unacceptable, respondent filed a
File from the register. If the application petition for review with the Court of Appeals. In its decision dated June 25, 2010, the CA
is still pending by the end of the 3 reversed and set aside the ruling of the IPO Director General and reinstated that of the BLA.
year period and no declaration of The petitioner filed a Motion for Reconsideration but was denied by the CA. Hence , this
actual use is filed, then the petition to the Supreme Court.
application is denied
As to Declaration of actual use with 1. Declaration of actual use with ISSUE: Whether or not the subject marks should be allowed registration in the name of the
what to evidence to that effect evidence to that effect; or petitioner?
file 2. Show valid reasons based on the
existence of obstacles to such use HELD: YES. The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166,
(declaration of non-use) it provides that, Each certificate of registration shall remain in force for twenty years:
Provided, that the registration under the provisions of this Act shall be cancelled by the

Director, unless within one year following the fifth, tenth and fifteenth anniversaries of the
B. BIRKENSTOCK ORTHOPAEDIE GMBH VS. PHIL SHOE EXPO MARKETING CORP.
date of issue of the certificate of registration, the registrant shall file in the Patent Office an

affidavit showing that the mark or trade-name is still in use or showing that its non-use is
DOCTRINE: It must be emphasized that registration of a trademark, by itself, is not a mode
due to special circumstance which excuse such non-use and is not due to any intention to
of acquiring ownership. If the applicant is not the owner of the trademark, he has no right to
abandon the same, and pay the required fee.

Nudibranch 15
In the case at bar, respondent admitted that it failed to file the 10th Year DAU for Registration Under the Trademark Law, only the owner of the trademark, trade name, or
No. 56334 within the requisite period, or on or before October 21, 2004. As a consequence, it service mark to distinguish goods, business or services from the goods, business, or
was deemed to have abandoned or withdrawn any right or interest over the mark services of others is entitled to register the same (UNNO COMMERCIAL
BIRKENSTOCK. It must be emphasized that registration of a trademark, by itself, is not a ENTERPRISES VS. GENERAL MILLING CORPORATION)
mode of acquiring ownership. If the applicant is not the owner of the trademark, he has no o A mere distributor of the products bearing trademark, even if permitted
right to apply for its registration. Registration merely creates a prima facie presumption of to use the trademark has no right to and cannot register it in his name
the validity of the registration. Such presumption, just like the presumptive regularity in the unless it has been validly assigned to him
performance of official functions, is rebuttable and must give way to evidence to the
contrary. Besides, petitioner has duly established its true and lawful ownership of the mark 3. ACQUISITION OF OWNERSHIP OF TRADE NAME
BIRKENSTOCK. It submitted evidence relating to the origin and history of BIRKENSTOCK
and it use in commerce long before respondent was able to register the same here in the Sec. 165. Trade Names or Business Names.
Philippines. Petitioner also submitted various certificates of registration of the mark 165.1. A name or designation may not be used as a trade name if by its nature or the use to
BIRKENSTOCK in various countries and that it has used such mark in different countries which such name or designation may be put, it is contrary to public order or morals and if, in
worldwide, including the Philippines. particular, it is liable to deceive trade circles or the public as to the nature of the enterprise
identified by that name.
Q: What is the effect of issuance of a certificate of registration to a person?
It creates a Prima Facie Presumption 165.2. (a) Notwithstanding any laws or regulations providing for any obligation to register
Sec. 138. Certificates of Registration. - A certificate of registration of a mark shall trade names, such names shall be protected, even prior to or without registration, against
be prima facie evidence of: any unlawful act committed by third parties.
o (VOE)
o 1. The VALIDITY of the registration, (b) In particular, any subsequent use of the trade name by a third party, whether as a trade
o 2. The registrants OWENRSHIP of the mark, and of name or a mark or collective mark, or any such use of a similar trade name or mark, likely to
o 3. The registrants EXCLUSIVE RIGHT to use the same in connection with mislead the public, shall be deemed unlawful.
the goods or services and those that are related thereto specified in the
certificate. 165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply
Q: How is the prima facie presumption rebutted? mutatis mutandis.
o 1. Evidence of the nullity of the registration Mutatis Mutandis literally, once the necessary changes have been made. It
o 2. Prior use by another means making necessary alterations while not affecting the main point at issue.

Q: Which of the following statement is false? 165.4. Any change in the ownership of a trade name shall be made with the transfer of the
A. The certificate of registration of a mark shall be prima facie evidence of the enterprise or part thereof identified by that name. The provisions of Subsections 149.2 to
validity of the registration 149.4 shall apply mutatis mutandis.
B. The certificate of registration of a mark shall be prima facie evidence of the
registrants ownership of the mark Q: What is the difference between a trademark and a trade name?
C. The certificate of registration of a mark shall be prima facie evidence of the A trademark needs to be registered in the IPO order to be protected whereas a
registrants a prior use of the subject mark trade name need not be registered to be protected against any unlawful act
o Reason: it is not one of those enumerated under Sec. 138 of the IPC committed by third parties since what is required is merely prior use of the trade
D. The certificate of registration of a mark shall be prima facie evidence of the mark in commerce in the Philippines.
registrants exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate. BAR 2005: S Development Corporation sued Shangrila Corporation for using the S logo
E. None of the above and the tradename Shangrila. The former claims that it was the first to register the logo
and the tradename in the Philippines and that it had been using the same in its restaurant
Q: Who may register a trademark? business. Shangrila Corporation counters that it is an affiliate of an international
organization which has been using such logo and tradename Shangrila for over 20 years.
Nudibranch 16
However, Shangrila Corporation registered the tradename and logo in the Philippines only (d) Is identical with a registered mark belonging to a different proprietor or a mark
after the suit was filed. with an earlier filing or priority date, in respect of:
o (i) The same goods or services, or
Which of the two corporations has a better right to use the logo and the tradename? o (ii) Closely related goods or services, or
Explain. o (iii) If it nearly resembles such a mark as to be likely to deceive or cause
SUGGESTED ANSWER: S Development Corporation has a better right to use the confusion;
logo and the tradename, since the protective benefits of the law are conferred by (e) Is identical with, or confusingly similar to, or constitutes a translation of a
the fact of registration and not by use. Although Shangrila Corporation's parent mark which is considered by the competent authority of the Philippines to be well-
had used the tradename and logo long before, the protection of the laws will be known internationally and in the Philippines, whether or not it is registered here,
for S Development Corporation because it was the first entity to register the as being already the mark of a person other than the applicant for registration, and
intellectual properties. used for identical or similar goods or services:
o Provided, That in determining whether a mark is well-known, account
How does the international affiliation of Shangrila Corporation affect the outcome of the shall be taken of the knowledge of the relevant sector of the public,
dispute? Explain. rather than of the public at large, including knowledge in the Philippines
SUGGESTED ANSWER: The international affiliation of Shangrila Corporation may be which has been obtained as a result of the promotion of the mark;
critical in the event that its affiliates or parent company abroad had registered in a (f) Is identical with, or confusingly similar to, or constitutes a translation of a
foreign jurisdiction the tradename and the logo. A well-known mark and mark considered well-known mark in accordance with the preceding paragraph,
tradename is subject to protection under Treaty of Paris for the Protection of which is registered in the Philippines with respect to goods or services which are
Intellectual Property to which the Philippines is a member. not similar to those with respect to which registration is applied for:
o Provided, That use of the mark in relation to those goods or services
4. NON-REGISTRABLE MARKS would indicate a connection between those goods or services, and the
owner of the registered mark:
A. SEC. 123 Provided further, That the interests of the owner of the
registered mark are likely to be damaged by such use;
Q: What are the non-registrable marks? (Memorize) (g) Is likely to mislead the public, particularly as to the nature, quality,
Generally, GENERIC or DESCRIPTIVE marks cannot be registered characteristics or geographical origin of the goods or services;
o GENERIC describes a particular genus or class (h) Consists exclusively of signs that are generic for the goods or services that they
o DESCRIPTIVE describes a quality of goods or services seek to identify;
Ex: the word delicious for food; ang tibay for shoes. These (i) Consists exclusively of signs or of indications that have become customary or
words characterize qualities of goods or services. usual to designate the goods or services in everyday language or in bona fide and
The word mango used for clothes is not descriptive because established trade practice;
the word is used in an arbitrary or fanciful manner (j) Consists exclusively of signs or of indications that may serve in trade to
Sec. 123. Registrability. designate the kind, quality, quantity, intended purpose, value, geographical origin,
123.1. A mark cannot be registered if it: time or production of the goods or rendering of the services, or other
IFNIII-MG-CD-SCC characteristics of the goods or services;
(a) Consists of immoral, deceptive or scandalous matter, or matter which may (k) Consists of shapes that may be necessitated by technical factors or by the
disparage or falsely suggest a connection with persons, living or dead, institutions, nature of the goods themselves or factors that affect their intrinsic value;
beliefs, or national symbols, or bring them into contempt or disrepute; (l) Consists of color alone, unless defined by a given form; or
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of o Color alone is not registrable. It must be defined in a given form. For
its political subdivisions, or of any foreign nation, or any simulation thereof; instance, KFC cannot register color red. However, it can register 3-D
(c) Consists of a name, portrait or signature identifying a particular living individual design of colonel sanders together with the claim of colors like red, black
except by his written consent, or the name, signature, or portrait of a deceased (m) Is contrary to public order or morality.
President of the Philippines, during the life of his widow, if any, except by written
consent of the widow;
Nudibranch 17
Q: The United Parcel Service also known as UPS, claimed to be the worlds largest package 2. In the mind of the public indicates a single source to
delivery company and service provider of supply chain management solutions, utilizes consumers
globally and in the Philippines, a fleet of brown painted delivery trucks. All of the 123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing
employees and delivery staff of UPS also wear brown uniforms. UPS therefore may shall prevent the registration of any such sign or device which has become
successfully register with the Philippine IPO the shade of brown it uses for use on trucks and distinctive in relation to the goods for which registration is requested as a result of
on delivery personnel uniforms. the use that have been made of it in commerce in the Philippines.
A. TRUE o The Office may accept as prima facie evidence that the mark has
B. FALSE become distinctive, as used in connection with the applicants goods or
services in commerce, proof of substantially exclusive and continuous
Q: In the question above, UPS may also register as its service mark the word, brown for use thereof by the applicant in commerce in the Philippines for five (5)
package delivery and supply chain management services on condition that UPS will use years before the date on which the claim of distinctiveness is made
the subject word to identify its said services
A. TRUE C. FANCIFUL, ARBITRARY, SUGGESTIVE, COMPOSITE, AND COINED MARKS
B. FALSE
Q: What are FANCIFUL MARKS?
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall Those invented for the sole purpose of functioning as a trademark and have no
prevent the registration of any such sign or device which has become distinctive IN other meaning than acting as a mark (imbento lang)
RELATION TO THE GOODS for which registration is requested as a result of the use that o Ex: Kodak for camera; Xerox for photocopying machine
have been made of it in commerce in the Philippines.
The Office may accept as prima facie evidence that the mark has become Q: What are ARBITRARY MARKS?
distinctive, as used in connection with the applicants goods or services in Those utilized as a device having common meaning that has no relation to the
commerce, proof of substantially exclusive and continuous use thereof by the goods or services being (binigyan ng ibang kahulugan)
applicant in commerce in the Philippines for five (5) years before the date on o Ex: Dutch Boy for paints and paint color solutions
which the claim of distinctiveness is made.
Q: What are SUGGESTIVE MARKS?
123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to Those that hint at one or some of the attributes of the products (clue sa product)
registration. o Ex: SUNNY trademark for marketing electric heaters hinting the fact
that the product is to keep your house warm
B. SECONDARY MEANING
Q: What are COMPOSITE MARKS?
Q: What is the doctrine of secondary meaning? Those marks consisting of 2 or more elements/combinations of words, phrases,
Generally, a mark can attain secondary meaning when it is used for a long period designs, symbols, or color schemes. Although they cannot be registered by
of time, characterized by exclusivity or notoriety, and in the minds of the public themselves, together they may be a part of a composite mark as long as they
identifies the mark with a particular companys goods or services. provide a disclaimer. The person who registers them as part of a mark will not
o Ex: Pampangas Best. Although Pampanga is a geographical term, thus acquire ownership thereto. (nabubuo sa 2 o higit pang mga bahagi)
not registrable, the mark can attain secondary meaning after long and o 20th Century Nylon Shirts Factory must be required to disclaim nylon
notorious use and shirts factory
GR: j,k, and l of Sec. 123.1 are NON-REGISTRABLE
o EXPN: they are REGISTRABLE when such kind of mark/design has Q: What are COINED MARKS?
become DISTINCTIVE as a result of the uses that have been made of it in Those which may be registered even if they are contractions of or coined from
commerce in the Philippines. This is proved by: generic and descriptive terms. (pinagdugtong na mga salita)
1. Long, continuous use for 5 years, as used in connection with o Ex: Starbrite for metal polish; Mirrorlike for floor and furniture
the applicants goods or services in commerce, and polish

Nudibranch 18
5. PRIOR USE OF MARK AS A REQUIREMENT Relies on visual, aural, and connotative comparisons and overall impressions
between the 2 trademarks
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 Cases where SC used the Dominancy Test:
1. ASIA BREWERY, INC. VS. CA
Sec. 152. Non-use of a Mark When Excused. o SC: There is NO confusing similarity. The fact that PALE PILSEN are part
152.1. Non-use of a mark may be excused if caused by circumstances arising independently of ABIs trademark does not constitute infringement of SMCs
of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark. trademark: San Miguel Pale Pilsen. Reason: pale pilsen are generic
words descriptive of the color pale and of the type of beer, pilsen
152.2. The use of the mark in a form different from the form in which it is registered, which 2. MCDONALDS CORPORATION VS. L.C. BIG MAK MURGERS
does not alter its distinctive character, shall not be ground for cancellation or removal of the o Big Mac and Big Mak
mark and shall not diminish the protection granted to the mark. o SC: They are confusingly similar. Aurally (aura!), the 2 marks are the
same. Big Mac and Big Mak: the 1st and 2nd words are phoenetically the
152.3. The use of a mark in connection with one or more of the goods or services belonging same; Visually, the 2 marks have 6 letters, with the first to letters of the
to the class in respect of which the mark is registered shall prevent its cancellation or 2nd word being the same.
removal in respect of all other goods or services of the same class. 3. SOCIETES DES PRODUITS NESTLE, S.A ET. AL. VS. CA
o Master Roast and Master Blend vs. Flavor Master
152.4. The use of a mark by a company related with the registrant or applicant shall inure o SC: They are confusingly similar. The dominance of the word master
to the latters benefit, and such use shall not affect the validity of such mark or of its has acquired thru Nestles advertising is carried over when incorporated
registration: Provided, That such mark is not used in such manner as to deceive the public. If into CFCs trademark flavor master. Such that when one looks at the
use of a mark by a person is controlled by the registrant or applicant with respect to the label with the trademark flavor master, ones attention is easily
nature and quality of the goods or services, such use shall inure to the benefit of the attracted to the word master rather than to the differences which
registrant or applicant. exist.

6. TESTS TO DETERMINE CONFUSING SIMILARITY BETWEEN MARKS B. HOLISTIC/TOTALITY TEST whether the general confusion made by the article upon the
eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result
Note: In a Civil Action for Infringement (To be discussed under #10 in the outline), one of the in his confounding it with the original
requisites for Infringement is: there is, in the use or application a likelihood of CONFUSION. Mandates that the entirety of the marks in question must be considered in
In connection wit this, there are 2 types of confusion of Mark or Trade Names: determining confusing similarity
o 1. Confusion of GOODS OR SERVICES Relies only on visual comparison
2 Tests (see below)
o 2. Confusion of BUSINESS Cases where the SC used the Holistic/Totality Test:
Actual confusion is not required. The test is whether the public is likely to be 1. EMERALD GARMENT MANUFACTURING CORPORATION VS. CA
deceived. o Stylistic Mr. Lee vs. Lee (Jeans)
o SC: No confusing similarity. STYLISTIC MR. LEE is prominent. The
Q: What are the tests to determine confusing similarity between goods and services? trademark should be considered as a whole and not piecemeal.
1. DOMINANCY TEST With respect to Lee, the products are not ordinary house
2. HOLISTIC TEST products. Also, the jeans are not inexpensive (mahal kaya lee).
Thus, the casual buyer will be more cautious and would prefer
A. DOMINANCY TEST whether there is similarity of the prevalent features of the competing to mull over his purchase (mahal kasi). Confusion and
trademarks which might cause confusion or deception and thus constitute infringement deception, then, is less likely
Focuses on the similarity of the main, essential, dominant, or prevalent features Q: So will the public be deceived? No. The average Filipino
of a mark consumer generally buys jeans by brand. He is more or less
familiar with his preference and will not be easily distracted
Nudibranch 19
2. BRISTOL MYERS CO. VS. DIRECTOR OF PATENTS & UNITED AMERICAN The presence or absence of identical or similar marks validly registered for or used
PHARMACEUTICALS, INC. on identical or similar goods or services.
o No confusion. The test is not to simply take the words and compare the
spelling and pronunciation. Rather, must consider the marks in their A. SEC. 123 (E) & (F)
entirety, in relation to the goods to which they are attached
Sec. 123. Registrability.
Q: What is the difference between the Dominancy and Holistic Tests? 123.1. A mark cannot be registered if it:
DOMINANCY TEST HOLISTIC/TOTALITY TEST (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark
As to consideration Focuses on the similarity of Mandates that the entirety of the which is considered by the competent authority of the Philippines to be well-
the main, essential, marks in question must be known internationally and in the Philippines, whether or not it is registered here,
dominant, or prevalent considered in determining as being already the mark of a person other than the applicant for registration, and
features of a mark confusing similarity used for identical or similar goods or services:
As to Basis of the Relies on visual, aural, and Relies only on visual comparison o Provided, That in determining whether a mark is well-known, account
Computation connotative comparisons and shall be taken of the knowledge of the relevant sector of the public,
overall impressions between rather than of the public at large, including knowledge in the
the 2 trademarks Philippines which has been obtained as a result of the promotion of
As to Test TEST: whether there is TEST: whether the general the mark;
similarity of the prevalent confusion made by the article upon Theory of Dilution:
features of the competing the eye of the casual purchaser (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark
trademarks which might cause who is unsuspicious and off his considered well-known in accordance with the preceding paragraph, which is
confusion or deception and guard, is such as to likely result in registered in the Philippines with respect to goods or services which are not similar
thus constitute infringement his confounding it with the original to those with respect to which registration is applied for:
o Provided, That use of the mark in relation to those goods or services
7. WELL-KNOWN MARKS Even if the trademark is not registered in the Philippines, if it is a would indicate a connection between those goods or services, and the
well-known mark, it will be protected here in the Philippines. owner of the registered mark:
It does not require that the well-known mark be used in commerce in the Provided further, That the interests of the owner of
Philippines but only that it be well known in the Philippines the registered mark are likely to be damaged by
such use;
Q: What are the factors/criterion in determining whether or not a mark is a well-known
mark? Q: What is the difference between Sec. 123.1(e) and Sec. 123.1(f)?
RULE ON TRADEMARKS, Rule 102: SEC. 123.1(e) SEC. 123.1(f)
The duration, extent and geographical area of any use of the mark, Requirement of The well-known mark may or may Must be registered in the Phils.
The market share, in the Philippines and in other countries, of the goods and/or registration not be registered in the Phils.
services to which the mark applies; Similarity between Mark is used for identical or Goods or services between the
The degree of the inherent or acquired distinction of the mark; goods & services similar goods or services as that of well-known mark and that
The quality-image or reputation acquired by the mark; of mark applied the well-known mark applied for are not similar
The extent to which the mark has been registered in the world; for v. well-known
The exclusivity of registration attained by the mark in the world; mark
The extent to which the mark has been used in the world; Extent of If well-known mark is By analogy, If well-known mark
The exclusivity of use attained by the mark in the world; protection REGISTERED: protection extends is NOT REGISTERED: protection
The commercial value attributed to the mark in the world; to goods or services with are not does not extend to goods or
similar to those in which the mark services which are not similar or
The record of successful protection of the rights in the mark;
is registered, provided: identical.
The outcome of litigations dealing with the issue of whether the mark is a well-
(conditions)
known mark; and,
Nudibranch 20
1. The use of the mark in In connection with this rule: The ruling should be in favor of Company Y. No violation of the IPC was committed
relation to the unrelated EVEN DISSIMILAR GOODS by Company Y. The goods of Company Y, bicycles, are so dissimilar from the goods
goods or services would DOCTRINE If goods and services of Company X that there would be no confusion as to the origin of the goods
indicate a connection are not identical or similar, Sec. 123.1(f) of the IPC adopts what is known as the Theory of Dilution. However, it
between goods or services registration is STILL NOT is necessary for the application of the doctrine that the public may have been, or
and the owner of the mark ALLOWED if: had actually been deceived or misled as to the source of the good. This is not the
2. The interests of the owner of 1. There is connection bet. case in the given problem
the registered mark are likely goods or services of the
to be damaged by such used junior or senior users of the B. CRITERIA
well-known mark
2. The interests of the senior 8. RIGHTS CONFERRED BY REGISTRANT
user are likely to be
damaged. Sec. 147. Rights Conferred. 47.1. The owner of a registered mark shall have:
GR: The exclusive right to prevent all third parties not having the owners consent
Q: HUGO BOSS, a well-known mark, having been declared by the then Minister of Trade from using in the course of trade identical or similar signs or containers for goods
as such. It has been registered in the Philippines since 1985 for goods falling under class 25 or services which are identical or similar to those in respect of which the
of the classification namely, clothing, footwear, and perfumes. On the last day of filing its trademark is registered where such use would result in a likelihood of confusion.
declaration of actual use in the Philippines, the owner of the subject mark failed to do so o EXPN: in case of importation of drugs and medicines allowed under Sec.
and its registration revoked. To protect its mark, it immediately filed, on the following day, 72.1 and of off-patent drugs and medicines, provided that said drugs or
a new application for registration of its mark for the same goods. 3 days later, the following medicines bear the registered marks that have not been tampered,
applications for trademark registrations were filed by different applicants. Which of these unlawfully modified, or infringed upone.
applications may be granted by the IP: In case of the use, of an identical sign for identical goods or services, a likelihood of
A. HUGO BOSS for soaps confusion shall be presumed.
B. HUGO BOSS MOBILE for cellular phones
C. SWEET HUGO BOSS for candies and other confectionaries Principle of Related Goods or Services
D. All of the above There is infringement when there is use of similar marks on goods that are so
o (Suggested Answer) related that the public may be, or is actually deceived, and misled that the goods
o Reason: a well-known mark is protected in the Philippines whether or come from the same maker or manufacturer
not registered. However, with respect to goods & services which are not Goods are related when they belong to the same class or have the same
registered, protection extends only to goods or services which are descriptive properties; possess same physical attributes; serve the same purpose
similar or identical. or are sold in groceries
o ITCAB, HUGO BOSS is well-known mark. Although it was able to file an SC: biscuits were held related to mile because both are food products. Soap and
application, it failed to file its DAU on time. Thus, the application is perfume, lipstick and nail polish are similarly related because they are common
revoked. When it filed a new application, the above-mentioned household items nowadays
applications were filed also. However, they are not similar or identical to
the goods or services of HUGO BOSS (clothing, footwear, and perfumes) Q: Wally, a music instruments designer and manufacturer, applied for registration of his
o Thus, the IPO may grant the application under A, B, and C. mark, Bamboo for his line of electric guitars. The former lead vocalist of the band
E. None of the above Rivermaya, popularly known as Bamboo, has legal basis to oppose Wallys application for
registration even if his real name is Francisco Gaudencio Lope Berardo Maalac.
Q: Company X sold its wine under the brand Rose Brandy; it became very popular. So, X A. TRUE
registered trademark Rose for its brandy. Subsequently, Company Y manufactured B. FALSE
bicycles and sold it under the name Rose. Company X now sues Company Y for violation
of RPC. Rule on the dispute (Bar question) Territoriality Principle
Nudibranch 21
Trademark rights are recognized within a state only when the goods or services are o Sale,
used in commerce within the state o Offering for sale,
Applying the territoriality principle, a foreign trademark MAY enjoy protection o Distribution,
rights in the Philippines only when the goods or services are used in commerce in o Advertising of any goods or services including other preparatory steps
the Philippines. necessary to carry out the sale of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause
Q: Telefonica, a telecommunications corporation from Spain, may validly register its mistake, or to deceive; or
trademark TelefonoIntelegente for its goods namely, smart phones, in the Philippines 155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
considering they have obtained their certificate of registration for the same mark in its dominant feature thereof and apply such reproduction, counterfeit, copy or
home country, 4 months ago colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
A. TRUE advertisements intended to be used in commerce upon or in connection with the
B. FALSE o Sale,
o Offering for sale,
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) o Distribution, or
which is registered in the Philippines, shall extend to goods and services which are not similar o Advertising of goods or services on or in connection with which such use
to those in respect of which the mark is registered: is likely to cause confusion, or to cause mistake, or to deceive, shall be
Provided, That use of that mark in relation to those goods or services would liable in a civil action for infringement by the registrant for the remedies
indicate a connection between those goods or services and the owner of the hereinafter set forth:
registered mark: o Provided, That the infringement takes place at the moment any of the
o Provided, further, That the interests of the owner of the registered mark acts stated in Subsection 155.1 or this subsection are committed
are likely to be damaged by such use regardless of whether there is actual sale of goods or services using the
infringing material.
9. USE BY THIRD PARTIES OF NAMES, ETC. SIMILAR TO REGISTERED MARK
Elements for Infringement (CRUIL)
Sec. 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark 1. Registration of trademark
is Used. - Registration of the mark shall not confer on the registered owner the right to a. Only the registrant of a mark can file a case for infringement.
preclude third parties from using bona fide their names, addresses, pseudonyms, a b. Any foreign national/juridical person who meets the requirements of
geographical name, or exact indications concerning the kind, quality, quantity, destination, Sec. 3 and does not engage in business in the Phils. May bring an action
value, place of origin, or time of production or of supply, of their goods or services: for infringement W/N licensed to do business in the Phils. (Sec. 160)
Provided, That such use is confined to the purposes of mere identification or c. EXPN: Trade names, unlike trademarks, need not be registered with the
information and cannot mislead the public as to the source of the goods or IPO before an infringement suit may be filed
services. i. All that is required is that the trade name be previously used
in trade or commerce in the Phils.
10. INFRINGEMENT AND REMEDIES 2. Trademark is reproduced, copied, counterfeited, or colorably imitated
3. It is used in connection with the sale, or it is offering for sale or advertising of
A. TRADEMARK INFRINGEMENT goods, services, or business, or applied labels, signs, wrappers, etc. intended to be
used in connection with such goods, services, or business
i. SEC. 155 CIVIL ACTION FOR INFRINGEMENT (memorize) 4. THERE IS, IN THE USE OR APPLICATION A LIKELIHOOD OF CONFUSION
a. Note: Likelihood of confusion is the gravamen of trademark
Sec. 155. Remedies; Infringement. - Any person who shall, without the consent of the owner infringement. Intent to deceive is not required. Complete imitation is
of the registered mark: not required
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation b. (See: Tests To Determine Confusing Similarity Between Marks under #6
of a registered mark or the same container or a dominant feature thereof in of the outline)
connection with the: 5. Lack of consent on the part of the registered owner or their assignee

Nudibranch 22
Q: What if you buy a class AAA Louis Vuitton, are you liable for infringement? SUGGESTED ANSWER: X is correct. His rights under his exclusive distributorship
YES. Mere use of a counterfeit in connection with sale is already infringement. agreement are property rights entitled to protection. The importation and sale by Y
of MAGIC shoes constitute unfair competition (Yu v. Court of Appeals, 217 SCRA
ii. CONFUSION OF GOOD VS. CONFUSION OF BUSINESS 328 (1993)). Registration of the trademark is not necessary in case of an action for
unfair competition (Del Monte Corporation v. Court of Appeals, 181 SCRA 410
Q: In relation to trademark infringement, what are the types of confusions as to trademarks (1990)).
or trade names? ALTERNATIVE ANSWER: Y is correct. The rights in a trademark are acquired through
1. Confusion of goods or services registration made validly in accordance with the of the Intellectual Property Code).
2. Confusion of business or origin
(B) Suppose the shoes are covered by a Philippine patent issued to the owner, what would
Q: What is the difference between these 2? your answer be? Explain. (2%)
CONFUSION OF GOODS & SERVICES CONFUSION OF BUSINESS/ORIGIN SUGGESTED ANSWER: A patent for a product confers upon its owner the exclusive
Kind of Exists when the ordinary prudent Exists when one partys product or right of importing the product (Subsection 71.1 of the Intellectual Property Code).
similarity purchase would be induced to service though different from that of The importation of a patented product without the authorization of the owner of
purchase one product or service another is such as might reasonably the patent constitutes infringement of the patent (Subsection 76.1 of the
bec. Of the similarity of the marks be assumed to originate from the Intellectual Property Code). X can prevent the parallel importation of such shoes by
or trade names used in the same latter and the public would then be Y without its authorization.
kind of product or service deceived into the belief that there is
some connection between the B. DAMAGES
parties, which in fact is absent
Kind of goods Confusingly similar marks are used Confusingly similar marks are i. SEC. 156-157, SEC. 179
or services on the same kinds of employed in different or non-
goods/services competing goods/service DAMAGES
Tests used 2 TESTS: Sec. 156. Actions, and Damages and Injunction for Infringement.
1. Dominancy Test; and 156.1. The owner of a registered mark may recover damages from any person who infringes
2. Holistic Test his rights,
Q: What is the measure of the damages?
and the measure of the damages suffered shall be either:
iii. PARALLEL IMPORTATION o 1. The reasonable profit which the complaining party would have made,
had the defendant not infringed his rights, or
Importation of Medicine o 2. The profit which the defendant actually made out of the
There is no infringement of trademarks or trade names if imported or sold drugs infringement, or
and medicines as well as imported or sold off-patent drugs and medicines which Q: What if the damages cannot be ascertained with reasonable certainty?
bears marks that have not been tampered, unlawfully modified, or infringed upon in the event such measure of damages cannot be readily ascertained with
(Sec. 159.4) reasonable certainty, then the court may award as damages:
o 1. A reasonable percentage based upon the amount of gross sales of the
BAR 2010: For years, Y has been engaged in the parallel importation of famous brands, defendant or
including shoes carrying the foreign brand MAGIC. Exclusive distributor X demands that Y o 2. The value of the services in connection with which the mark or trade
cease importation because of his appointment as exclusive distributor of MAGIC shoes in name was used in the infringement of the rights of the complaining
the Philippines. party.
Requirement of Notice the owner of the registered mark shall NOT be entitled
Y counters that the trademark MAGIC is not registered with the Intellectual Property Office tor recover profits or damages unless the acts have been committed with
as a trademark and therefore no one has the right to prevent its parallel importation. knowledge: that such imitation is likely to cause confusion or to cause mistake or
(A) Who is correct? Why? (2%) deceive
Nudibranch 23
o Presumption of Knowledge: Sec. 170. Penalties.Independent of the civil and administrative sanctions
1. If the mark is displayed with the words registered mark or imposed by law, a criminal penalty of imprisonment from two (2) years to five (5)
the symbol ; or years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred
2. If the damage had otherwise actual notice of the thousand pesos (P200,000), shall be imposed on any person who is found guilty of
registration committing any of the acts mentioned in Section 155, Section 168 and Subsection
o Note: the sign to indicate trademark or the SM sign to indicate 169.1.
service mark has no legal significance in the Phils.
C. JURISDICTION
IMPOUNDING
156.2. On application of the complainant, the court may impound during the A. AM 2-1-11-SC, FEB. 9, 2002
pendency of the action, sales invoices and other documents evidencing sales. To implement and ensure the speedy disposition of cases involving violations of
intellectual property rights under R.A. No. 8293, the Court issued A.M. No. 02-1-11-
DOUBLE DAMAGES SC dated February 19, 2002 designating certain Regional Trial Courts as
156.3. In cases where actual intent to mislead the public or to defraud the Intellectual Property Courts. On June 17, 2003, the Court further issued a
complainant is shown, in the discretion of the court, the damages may be Resolution consolidating jurisdiction to hear and decide Intellectual Property Code
doubled. and Securities and Exchange Commission cases in specific Regional Trial Courts
designated as Special Commercial Courts.
INJUNCTION
156.4. The complainant, upon proper showing, may also be granted injunction. B. AM 03-03-03-SC JULY 1, 2003
The Regional Courts previously designated as SEC Courts through the: (a)
COURT ORDER FOR DISPOSAL/DESTRUCTION OF THE INFRINGING MATERIAL Resolutions of this Court dated 21 November 2000, 4 July 2001, 12 November
Sec. 157. Power of Court to Order Infringing Material Destroyed. 2002, and 9 July 2002, all issued in A.M. No. 00-11-03-SC, (b) Resolution dated 27
157.1. In any action arising under this Act, in which a violation of any right of the August 2001 in A.M. No. 01-5-298-RTC; and (c) Resolution dated 8 July 2002 in
owner of the registered mark is established, the court may order that goods found A.M. No. 01-12-656-RTC are hereby DESIGNATED and shall be CALLED as Special
to be infringing be, without compensation of any sort, disposed of outside the Commercial Courts to try and decide cases involving violations of Intellectual
channels of commerce in such a manner as to avoid any harm caused to the right Property Rights which fall within their jurisdiction and those cases formerly
holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles cognizable by the Securities and Exchange Commission;
and advertisements in the possession of the defendant, bearing the registered The Special Commercial Courts shall have jurisdiction over cases arising within
mark or trade name or any reproduction, counterfeit, copy or colorable imitation their respective territorial jurisdiction with respect to the National Capital Judicial
thereof, all plates, molds, matrices and other means of making the same, shall be Region and within the respective provinces with respect to the First to Twelfth
delivered up and destroyed. Judicial Regions. Thus, cases shall be filed in the Office of the Clerk of Court in the
157.2. In regard to counterfeit goods, the simple removal of the trademark affixed official station of the designated Special Commercial Court;
shall not be sufficient other than in exceptional cases which shall be determined
by the Regulations, to permit the release of the goods into the channels of C. SEC. 10.2
commerce.
Sec. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the following
Sec. 179. Anonymous and Pseudonymous Works. - For purposes of this Act, the publishers functions:
shall be deemed to represent the authors of articles and other writings published without the 10.1. Hear and decide opposition to the application for registration of marks;
names of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms cancellation of trademarks; subject to the provisions of Section 64, cancellation of
or adopted name leaves no doubts as to the authors identity, or if the author of the patents, utility models, and industrial designs; and petitions for compulsory
anonymous works discloses his identity licensing of patents;
10.2. (a) Exercise original jurisdiction in administrative complaints for violations of
ii. CIVIL VS. CRIMINAL INFRINGEMENT laws involving intellectual property rights:
Nudibranch 24
o Provided, That its jurisdiction is limited to complaints where the total validity thereof for such period of time as the Director of Legal Affairs
damages claimed are not less than Two hundred thousand pesos may deem reasonable which shall not exceed one (1) year;
(P200,000): o (vii) The withholding of any permit, license, authority, or registration
Provided, further, That availment of the provisional remedies which is being secured by the respondent from the Office;
may be granted in accordance with the Rules of Court. The o (viii) The assessment of damages;
Director of Legal Affairs shall have the power to hold and o (ix) Censure; and
punish for contempt all those who disregard orders or writs o (x) Other analogous penalties or sanctions.
issued in the course of the proceedings. 10.3. The Director General may by Regulations establish the procedure to govern
(b) After formal investigation, the Director for Legal Affairs may impose one (1) or the implementation of this Section.
more of the following administrative penalties:
o (i) The issuance of a cease and desist order which shall specify the acts D. REQUIREMENT OF NOTICE
that the respondent shall cease and desist from and shall require him to
submit a compliance report within a reasonable time which shall be Requirement of Notice the owner of the registered mark shall NOT be entitled tor recover
fixed in the order; profits or damages unless the acts have been committed with knowledge: that such imitation
o (ii) The acceptance of a voluntary assurance of compliance or is likely to cause confusion or to cause mistake or deceive
discontinuance as may be imposed. Such voluntary assurance may Presumption of Knowledge:
include one or more of the following: o 1. If the mark is displayed with the words registered mark or the
(1) An assurance to comply with the provisions of the symbol ; or
intellectual property law violated; o 2. If the damage had otherwise actual notice of the registration
(2) An assurance to refrain from engaging in unlawful and
unfair acts and practices subject of the formal investigation; 11. UNFAIR COMPETITION
(3) An assurance to recall, replace, repair, or refund the
money value of defective goods distributed in commerce; and A. SEC. 168
(4) An assurance to reimburse the complainant the expenses
and costs incurred in prosecuting the case in the Bureau of Sec. 168. Unfair Competition, Rights, Regulation and Remedies. -
Legal Affairs. 168.1. A person who has identified in the mind of the public the goods he manufactures or
o The Director of Legal Affairs may also require the respondent to submit deals in, his business or services from those of others, whether or not a registered mark is
periodic compliance reports and file a bond to guarantee compliance of employed, has a property right in the goodwill of the said goods, business or services so
his undertaking; identified, which will be protected in the same manner as other property rights.
o (iii) The condemnation or seizure of products which are subject of the
offense. The goods seized hereunder shall be disposed of in such Unfair Competition
manner as may be deemed appropriate by the Director of Legal Affairs, 168.2. Any person who shall employ deception or any other means contrary to
such as by sale, donation to distressed local governments or to good faith by which he shall pass off the goods manufactured by him or in which
charitable or relief institutions, exportation, recycling into other goods, he deals, or his business, or services for those of the one having established such
or any combination thereof, under such guidelines as he may provide; goodwill, or who shall commit any acts calculated to produce said result, shall be
o (iv) The forfeiture of paraphernalia and all real and personal properties guilty of unfair competition, and shall be subject to an action therefor.
which have been used in the commission of the offense; o Goodwill the advantage or benefit which is acquired by an
o (v) The imposition of administrative fines in such amount as deemed establishment or business in consequence of the general public
reasonable by the Director of Legal Affairs, which shall in no case be less patronage and encouragement which it receives from constant or
than Five thousand pesos (P5,000) nor more than One hundred fifty habitual customers on account of its local position reputation for skill, or
thousand pesos (P150,000). In addition, an additional fine of not more affluence, etc.
than One thousand pesos (P1,000) shall be imposed for each day of 168.3. In particular, and without in any way limiting the scope of protection against
continuing violation; unfair competition, the following shall be deemed guilty of unfair competition:
o (vi) The cancellation of any permit, license, authority, or registration o (a) Any person, who is selling his goods and
which may have been granted by the Office, or the suspension of the
Nudibranch 25
(GD-FF) purchasers to believe that the goods offered are those of a manufacturer or dealer,
Gives them the GENERAL APPEARANCE of goods of another other than the actual manufacturer or dealer
manufacturer or dealer, either as to the goods themselves or The circumstances contemplated by Sec. 168.3(a) are present in this case because
in the wrapping of the packages in which they are contained, PK Company gave its shoes the appearance of the shoes of N corporation and the
or the devices or words thereon, or in any other feature of same will tend to mislead the public as to the origin of the goods.
their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a B. INFRINGEMENT VS. UNFAIR COMPETITION
manufacturer or dealer, other than the actual manufacturer
or dealer, or Q: What is the difference between trademark infringement and unfair competition? (BAR
Who otherwise clothes the goods with such appearance as 1996)
shall DECEIVE the public and defraud another of his legitimate INFRINGEMENT UNFAIR COMPETITION
trade, or any subsequent vendor of such goods or any agent As to There is unauthorized Involves passing off ones
of any vendor engaged in selling such goods with a like Definition use of trademark goods as those of another
purpose; and giving ones goods the
o (b) Any person who by any artifice, or device, or who employs any other appearance of that of
means calculated to induce the FALSE BELIEF that such person is another
offering the services of another who has identified such services in the As to Not necessary to Necessary to establish
mind of the public; or Fraudulent establish fraudulent fraudulent intent
o (c) Any person who shall Intent intent
Make any FALSE STATEMENT in the course of trade or As to Registration of the Prior registration of a
Who shall commit any other act contrary to good faith of a Necessity of trademark is necessary trademark is not necessary
nature calculated to DISCREDIT the goods, business or prior for the filing of an action in unfair competition
services of another. registration for infringement
As to Scope Limited Scope: only Wider scope: unfair
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. those cases specified competition is broader
under the IPC because it includes cases
TEST to determine Unfair Competition whether certain goods have been intentionally that are covered not only by
clothed with an appearance which is likely to deceive the ordinary purchaser exercising the IPC but also by Art. 28
ordinary care, and not whether certain limited class of purchasers with special knowledge of the Civil Code
not possessed by the ordinary purchaser could avoid mistake by the exercise of his special As to Goods Same class of goods or Different classes of goods
knowledge. Inherent element: fraud/deceit involved services must be or services may be involved
involved
Q: N Corporation manufactures rubber shoes under the trademark JORDAN which hit the
Philippine market in 1985, and registered its trademark with the BPTTT in 1990. PK Q: In what way is an infringement of a trademark similar to that which pertains to unfair
Company also manufactures rubber shoes with the trademark JAVORSKI which it competition? (BAR 2003)
registered with the BPTTT in 1978. In 2002, PK Company adopted and copied the design of
N Corporations JORDANN rubber shoes, both as to shape and color, but retained the Q: Is smell registrable as a trademark in the Philippines?
trademark JAVORSKI on its products. May PK Company be held liable to N Corporation?
Not yet.
Explain. (Bar question)

YES. PK Company may be held liable by N Corporation for Unfair Competition Q: So what if someone in the Philippines registers their version of Dolce & Gabbana
Under Sec. 168.3(a) of the IPC, a person is committing unfair competition if he sells perfume, ca this constitute infringement?
goods and and gives them the general appearance of goods of another NO. However, it can still constitute Unfair Competition under Art. 28 of the Civil
manufacturer or dealer, either as to the goods themselves or in the wrapping of Code which is broader in scope than infringement.
the packages in which they are contained, or the devices or words thereon, or in
any other feature of their appearance, which would be likely to influence
Nudibranch 26
UNFAIR COMPETITION - Involves passing off ones goods as those of another and ISSUES:
giving ones goods the appearance of that of another 1. Whether venue in an application for search warrant is jurisdictional? - NO
2. Whether the issue of lack of jurisdiction may be waived and may even be raised for the
Q: Does unfair competition cover the divulging of trade secrets? first time on appeal? - NO
NO. However, it can fall within Abuse of Right under the Civil Code
HELD:
C. PILIPINAS SHELL PETROLEUM, ET AL. VS. ROMARS INTL SEC. 2. Court where applications for search warrant shall be filed. - An application for search
DOCTRINE: Venue is jurisdictional warrant shall be filed with the following:
cralawred
FACTS: Petitioners received information that respondent was selling, offering for sale, or (a) Any court within whose territorial jurisdiction a crime was committed.
distributing liquefied petroleum gas (LPG) by illegally refilling the steel cylinders
manufactured by and bearing the duly registered trademark and device of respondent (b) For compelling reasons stated in the application, any court within the judicial region
Petron. Petron then obtained the services of a paralegal investigation team who went to where the crime was committed if the place of the commission of the crime is known, or any
respondent's premises located in San Juan, Baao, Camarines Sur, bringing along four empty court within the judicial region where the warrant shall be enforced.
cylinders of Shellane, Gasul, Total and Superkalan and asked that the same be refilled.
Respondent's employees then refilled said empty cylinders at respondent's refilling station. However, if the criminal action has already been filed, the application shall only be
Petitioners then requested the NBI to further investigate this matter. They witnessed trucks made in the court where the criminal action is pending.
coming from respondent's refilling facility loaded with Gasul, Shellane and Marsflame
cylinders, which then deposit said cylinders in different places, one of them a store called However, the CA gravely erred in equating the proceedings for applications for search
Edrich Enterprises. warrants with criminal actions themselves. Proceedings for said applications are not criminal
Thus, the NBI, in behalf of Petron and Shell, filed with the Regional Trial Court of Naga City in nature and, thus, the rule that venue is jurisdictional does not apply thereto. Evidently, the
(RTC-Naga), two separate Applications for Search Warrant. The RTC-Naga City issued an issue of whether the application should have been filed in RTC-Iriga City or RTC-Naga, is not
Order granting said Applications and Search Warrant Nos. 2002-27 and 2002-28 were issued. one involving jurisdiction because, as stated in the afore-quoted case, the power to issue a
On the same day, the NBI served the warrants at the respondent's premises in an orderly and special criminal process is inherent in all courts.
peaceful manner, and articles or items described in the warrants were seized.
On November 4, 2002, respondent filed a Motion to Quash Search Warrants, where the only Unfortunately, the foregoing reasoning of the CA, is inceptionally flawed, because as
grounds cited were: (a) there was no probable cause; (b) there had been a lapse of four pronounced by the Court in Malaloan v. Court of Appeals, and reiterated in the more recent
weeks from the date of the test-buy to the date of the search and seizure operations; (c) Worldwide Web Corporation v. People of the Philippines, to wit: an application for a search
most of the cylinders seized were not owned by respondent but by a third person; and (d) warrant is a special criminal process, rather than a criminal action. The basic flaw in this
Edrich Enterprises is an authorized outlet of Gasul and Marsflame. In an Order dated reasoning is in erroneously equating the application for and the obtention of a search
February 21, 2003, the RTC-Naga denied the Motion to Quash. warrant with the institution and prosecution of a criminal action in a trial court. It would thus
However, on March 27, 2003, respondent's new counsel filed an Appearance with Motion for categorize what is only a special criminal process, the power to issue which is inherent in all
Reconsideration. It was only in said motion where respondent raised for the first time, the courts.
issue of the impropriety of filing the Application for Search Warrant at the RTC-Naga City
when the alleged crime was committed in a place within the territorial jurisdiction of the RTC- Moreover, the Court must again emphasize its previous admonition in Spouses Anunciacion
Iriga City. Respondent pointed out that the application filed with the RTC-Naga failed to state v. Bocanegra,that:
any compelling reason to justify the filing of the same in a court which does not have
territorial jurisdiction over the place of the commission of the crime, as required by Section 2 We likewise cannot approve the trial court's act of entertaining supplemental motions x x x
(b), Rule 126 of the Revised Rules of Criminal Procedure. which raise grounds that are already deemed waived. To do so would encourage lawyers and
In an Order dated July 28, 2003, the RTC-Naga issued an Order granting respondent's Motion litigants to file piecemeal objections to a complaint in order to delay or frustrate the
for Reconsideration, thereby quashing the Search Warrants. Petitioner then appealed to the prosecution of the plaintiff's cause of action.
CA, but the appellate court, in its Decision dated March 13, 2009, affirmed the RTC Order
quashing the search warrants. Petitioner's motion for reconsideration of the CA Decision was D. WILLAWARE PRODUCTS CORP. V. JESICHRIS MFG. CORP.
denied per Resolution dated September 14, 2009.

Nudibranch 27
DOCTRINE: The concept of unfair competition under article 28 of the civil code is very much HELD: Prefatorily, we would like to stress that the instant case falls under Article 28 of the
broader than that covered by intellectual property laws Civil Code on human relations, and not unfair competition under Republic Act No. 8293,1 as
the present suit is a damage suit and the products are not covered by patent registration. A
FACTS: Jesichris Manufacuring Company (Jesichris) alleges in its complaint for damages for fortiori, the existence of patent registration is immaterial in the present case.
unfair competition that it is a company engaged in the manufacture and distribution of
plastic and metal products. It pioneered the use of plastic in place of rubber in the The concept of unfair competition under Article 28 is very much broader than that covered
manufacture of automotive underchassis parts such as spring eye bushing, stabiliser bushing, by intellectual property laws. Under the present article, which follows the extended concept
and others. Willaware Products Corporation, on the other hand is engaged in the of unfair competition in American jurisdictions, the term covers even cases of discovery of
manufacture of kitchenware items made of plastic and metal, has an office with physical trade secrets of a competitor, bribery of his employees, misrepresentation of all kinds,
proximity to its office, and in view of the fact that some of its employees had transferred to interference with the fulfillment of a competitors contracts, or any malicious interference
it, Jesichris discovered that Willaware had been manufacturing and distributing the same with the latters business.2
automotive parts with exactly similar design, same material and colours as Jesichris
manufactures and distributes, but at a lower price. Willware deliberately copied its product With that settled, we now come to the issue of whether or not petitioner committed acts
designs which constitute unfair competition. It thus prayed for damages in terms of amounting to unfair competition under Article 28 of the Civil Code.
unrealised profits in the amount of P2Million. On the other hand, Willaware, in its defense,
denied all the allegations in the complaint except as to the proximity of their office to that of We find the petition bereft of merit.
Jesichris, and that some of its employees transferred to Willaware. As an affirmative
defense, Willaware posits that there was no unfair competition as the plastic products were Article 28 of the Civil Code provides that unfair competition in agricultural, commercial or
mere reproductions of the original parts which merely conform to their original designs and industrial enterprises or in labor through the use of force, intimidation, deceit, machination
specifications. Thus, Jesichris cannot claim that it originated the use of the plastic or any other unjust, oppressive or high-handed method shall give rise to a right of action by
automotive parts, and even assuming that it did so, it still has no exclusive right to sell these the person who thereby suffers damage.
products since it has no patent over these products. In fact, other establishments were
offering them for sale. From the foregoing, it is clear that what is being sought to be prevented is not competition
per se but the use of unjust, oppressive or high- handed methods which may deprive others
After trial, the RTC rendered a decision in favour of Jesichris. It ruled that Willaware clearly of a fair chance to engage in business or to earn a living. Plainly, what the law prohibits is
invaded the right of Jesichris by deliberately copying and performing acts amounting to unfair unfair competition and not competition where the means used are fair and legitimate.
competition. It enjoined Willaware from continuing its activity, and awarded damages in
favor of Jesichris. On appeal to the CA, the latter affirmed with modification that RTC In order to qualify the competition as unfair, it must have two characteristics: (1) it must
decision. involve an injury to a competitor or trade rival, and (2) it must involve acts which are
characterized as contrary to good conscience, or shocking to judicial sensibilities, or
Willaware is now before the Supreme Court assailing the RTC and CA decisions. otherwise unlawful; in the language of our law, these include force, intimidation, deceit,
machination or any other unjust, oppressive or high-handed method. The public injury or
ISSUES: interest is a minor factor; the essence of the matter appears to be a private wrong
1. Whether or not there is unfair competition under human relations when the parties are perpetrated by unconscionable means3.
not competitors and there is actually no damage on the part of Jesichris?
2. Consequently, if there is no unfair competition, should there be moral damages and Here, both characteristics are present.
attorneys fees?
3. Whether or not the addition of nominal damages is proper although no rights have been First, both parties are competitors or trade rivals, both being engaged in the manufacture of
established? plastic-made automotive parts. Second, the acts of the petitioner were clearly contrary to
4. If ever the right of Jesichris refers to its copyright on automotive parts, should it be good conscience as petitioner admitted having employed respondents former employees,
considered in the light of the said copyrights were considered to be void by no less than this deliberately copied respondents products and even went to the extent of selling these
Honorable Court in SC GR No. 161295? products to respondents customers.4
5. If the right involved is goodwill then the issue is: whether or not Jesichris has established
goodwill?

Nudibranch 28
To bolster this point, the CA correctly pointed out that petitioners hiring of the former enterprises which use the sign under the control of the registered owner of the
employees of respondent and petitioners act of copying the subject plastic parts of collective mark;
respondent were tantamount to unfair competition, viz.:
14. CASES
The testimonies of the witnesses indicate that [petitioner] was in bad faith in competing with
the business of [respondent]. [Petitioners] acts can be characterized as executed with
mischievous subtle calculation. To illustrate, in addition to the findings of the RTC, the Court
observes that [petitioner] is engaged in the production of plastic kitchenware previous to its
manufacturing of plastic automotive spare parts, it engaged the services of the then mold
setter and maintenance operator of [respondent], De Guzman, while he was employed by the
latter. De Guzman was hired by [petitioner] in order to adjust its machinery since quality
plastic automotive spare parts were not being made. It baffles the Court why [petitioner]
cannot rely on its own mold setter and maintenance operator to remedy its problem.
[Petitioners] engagement of De Guzman indicates that it is banking on his experience gained
from working for [respondent].

Another point we observe is that Yabut, who used to be a warehouse and delivery man of
[respondent], was fired because he was blamed of spying in favor of [petitioner]. Despite this
accusation, he did not get angry. Later on, he applied for and was hired by [petitioner] for the
same position he occupied with [respondent]. These sequence of events relating to his
employment by [petitioner] is suspect too like the situation with De Guzman5.

Thus, it is evident that petitioner is engaged in unfair competition as shown by his act of
suddenly shifting his business from manufacturing kitchenware to plastic-made automotive
parts; his luring the employees of the respondent to transfer to his employ and trying to
discover the trade secrets of the respondent.6

Moreover, when a person starts an opposing place of business, not for the sake of profit to
himself, but regardless of loss and for the sole purpose of driving his competitor out of
business so that later on he can take advantage of the effects of his malevolent purpose, he is
guilty of wanton wrong7. As aptly observed by the court a quo, the testimony of petitioners
witnesses indicate that it acted in bad faith in competing with the business of respondent, to
wit:

In sum, petitioner is guilty of unfair competition under Article 28 of the Civil Code.

12. TRADE NAMES OR BUSINESS NAMES
121.3. "Trade name" means the name or designation identifying or distinguishing
an enterprise;

13. COLLECTIVE MARKS
121.2. "Collective mark" means any visible sign designated as such in the
application for registration and capable of distinguishing the origin or any other
common characteristic, including the quality of goods or services of different

Nudibranch 29
FINALS NO. See Pearl & Dean vs. SM

1. DEFINITION OF COPYRIGHTS A. Cases
It is the element of a persons ownership of his creation that permits him (author, 1. PEARL & DEAN PHILS. INC. VS. SHOEMART, INC. (2003)
composer or artist) to exclusively print, publish and vend the product of his o It was contended that the copyright over the engineering drawings
creation extended to the actual light boxes illustrated in the said drawings
o It gives the creator of an original work the exclusive rights to it, usually o SC sustained CAs ruling that the light boxes are not protected by
for a limited period of time. the copyright over the drawings.
o Literally: the right to copy, but also gives the copyright-holder the Reason: when a drawing is technical and depicts an
right to be credited for his work; to determine who may perform work; object, a copyright over the drawings will not extend to
and other related rights the actual object.
o Scope: literary and artistic works which are original intellectual creations o In the case at bar, SMI is not liable for infringing Pearl and Deans
in the literary and artistic domain. (Kho vs. CA) Copyright over technical drawings of advertising display unit
2 Kinds of Copyright: because the copyright does not extend to the actual lightboxes.
o (a) Common Law Copyrights - that which secures to the owner What the law does not include, it excludes, and for good
exclusively until its public dissemination reason: the light box was not a literary or artistic piece
o (b) Statutory Copyright that which secures protection and exclusively which could be copyrighted under the law.
in the owner by force of law even when the work has been made o In this case, the SC distinguished Copyright and Patent.
accessible to the public. COPYRIGHT PATENT
Extends only to the DESCRIPTION or Extends to the INVENTION.
Q: What are the elements for the Creation of a Copyrightable work? EXPRESSION of the idea/object and not to
1. ORIGINALITY does not mean novelty nor uniqueness nor creativity. It simply the idea/object itself
means that the work owes its origin to the author Thus, there is no copyright
2. EXPRESSION there must be a fixation. To be fixed, the work must be embodied infringement when one, who
in a medium sufficiently permanent or stable to permit it to be perceived, without being authorized, used a
reproduced, or otherwise communicated for a period of more than a transitory copyrighted plan to construct a
duration structure.
Reason: there is protection only to
Q: If copyright is protected from the moment of creation and registration is not required for the description or expression, NOT
protection, what then is the purpose of registering the copyright with the IPO? the structure itself.
When copyright is registered, a copyright certificate is issued. The copyright Purely a statutory right (it only covers works
certificate provides prima facie evidence of originality which is one element of falling within the statutory enumeration)
copyright validity Need not be registered to be protected There can be no patent infringement if there
(unlike patent and trademark) is no patent issued. (no patent, no
2. TERRITORIAL APPLICATION OF COPYRIGHT LAWS protection)
Our copyright laws have no extra-territorial operation and the rights granted under Simple copyright registration with the Must have the patentable invention
our laws can only be infringed by acts done within our territorial jurisdiction National library (Now with the IPO) scrutinized by the Intellectual Property
Office
3. COPYRIGHT IS DISTINCT FROM TRADEMARKS AND PATENTS Protected for 50 years Protected for 17 years (Now 20 years)

Q: Inventions are within the scope of patents. Assuming that the inventor wrote a book 2. ELIDAD KHO VS. CA (2002)
describing how to create that invention without, however, actually producing the invention. o In this case, the SC held: trademark, copyright and patents are
The book, being subject of copyright, is protected from the moment it was completed. DIFFERENT intellectual property rights that cannot be interchanged with
Would this mean that the invention described in the book is also protected? one another.
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TRADEMARK COPYRIGHT PATENT SUGGESTED ANSWER: A stamped or marked container of goods can be registered
A TRADEMARK is any visible Meanwhile, the scope of a PATENTABLE INVENTIONS, as trademark (subsections 113.1 of the Intellectual Property Code). An original
sign capable of COPYRIGHT is confined to on the other hand, refer to ornamental design or model for articles of manufacturer can be copyrighted
distinguishing the goods literary and artistic works any technical solution of a (Subsection 172.1 of the Intellectual Property Code). An ornamental design cannot
(trademark) or services which are original problem in any field of be patented, because aesthetic creations cannot be patented (Section 22 of the
(service mark) of an intellectual creations in the human activity which is new, Intellectual Property Code). However, it can be registered as an industrial design
enterprise and shall include literary and artistic domain involves an inventive step (Subsections 113.1 and 172.1 of the Intellectual Code). Thus, a container of goods
a stamped or marked protected from the moment and is industrially applicable. which has an original ornamental design can be registered as trademark, can be
container of goods. of their creation. copyrighted, and can be registered as an industrial design.
ALTERNATIVE ANSWER: It is entirely possible for an article of commerce to bear a
In relation thereto, a TRADE registered trademark, be protected by a patent and have most, or some part of it
NAME means the name or copyrighted. A book is a good example. The name of the publisher or the colophon
designation identifying or used in the book may be registered trademarks, the ink used in producing the book
distinguishing an enterprise. may be covered by a patent, and the text and design of the book may be covered
by copyrighted.
3. CHING VS. SALINAS
o A copyright certificate provides prima facie evidence of originality 4. COPYRIGHT OVER LITERARY AND WORKS IS VESTED FROM THE MOMENT OF CREATION
which is one element of copyright validity The special thing about copyright as compared to patent and trademark is that it
o In this case, the DENICOLA TEST was used need not be registered to be protected.
o SC: It bears stressing that there is no copyright protection for works o Reason: the law provides that original intellectual creations are
of applied art or industrial design which have aesthetic or artistic protected from the moment of its creation
features that cannot be identified separately from the utilitarian ORIGINAL WORKS
aspects of the article. Functional components of useful articles, no Section 172. Literary and Artistic Works. -
matter how artistically designed, have generally been denied Section 172.1. Literary and artistic works, hereinafter referred to as "works", are
copyright protection unless they are separable from the useful original intellectual creations in the literary and artistic domain protected from
article the moment of their creation and shall include in particular:
o In other words, a design of an applied art is subject to copyright if o (a) Books, pamphlets, articles and other writings;
you can separate artistic aspect from utility aspect. The artistic o (b) Periodicals and newspapers;
aspect is subject to copyright. However, if the artisitic aspect o (c) Lectures, sermons, addresses, dissertations prepared for oral
cannot be separated from the utility aspect, then it is not subject to delivery, whether or not reduced in writing or other material form;
copyright. o (d) Letters;
o (e) Dramatic or dramatico-musical compositions; choreographic
B. Denicola test works or entertainment in dumb shows;
This test inquires into which aspects of the work are dictated by the functional o (f) Musical compositions, with or without words;
constraints of the article and which aspects reflect unconstrained perspective of o (g) Works of drawing, painting, architecture, sculpture, engraving,
the artist. (Professor Robert Denicola) lithography or other works of art; models or designs for works of
art;
C. Can an article of commerce serve as trademark and at the same time enjoy patent and o (h) Original ornamental designs or models for articles of
copyright protection? manufacture, whether or not registrable as an industrial design,
YES. and other works of applied art;
o (i) Illustrations, maps, plans, sketches, charts and three-
BAR 2010: Can an article of commerce serve as a trademark and at the same time enjoy dimensional works relative to geography, topography, architecture
patent and copyright protection? Explain and give an example. (2%) or science;
o (j) Drawings or plastic works of a scientific or technical character;
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o (k) Photographic works including works produced by a process An original work is that which requires originality in skill or labor in execution such
analogous to photography; lantern slides; that the works became individual either in matter, forms arrangement or
o (l) Audiovisual works and cinematographic works and works treatment (not necessarily original thought, idea or research)
produced by a process analogous to cinematography or any SAMBOY VS. LEVI STRAUSS
process for making audio-visual recordings; o To be entitled to a copyright, the thing being copyrighted must be
o (m) Pictorial illustrations and advertisements; original, created by the author through his own skill, labor and
o (n) Computer programs; and judgment, without directly copying or evasively imitating the work of
o (o) Other literary, scholarly, scientific and artistic works. another.
Section 172.2. Works are protected by the sole fact of their creation, irrespective
of their mode or form of expression, as well as of their content, quality and Q: What are the non-copyrightable works under the law?
purpose
UNILEVER PHILIPPINES, INC. VS. CA 6. WORKS NOT PROTECTED BY COPYRIGHT
o Statutory copyright is conferred by the statute when the work is Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions of
made under the Intellectual Property Code. Sections 172 and 173, no protection shall extend, under this law, to any:
o Publication is not required. Copyright subsists from the moment of o 1. Ideas, procedures, systems, etc. that are not in tangible form
creation. Acquisition of copyright is not contingent or dependent Idea, procedure, system method or operation, concept,
on any formality or registration principle, discovery or mere data as such, even if they are
expressed, explained, illustrated or embodied in a work;
5. WORKS PROTECTED BY COPYRIGHT Reason: only the expressions of the idea, procedure, etc. are
protected
A.1 ORIGINAL WORKS Section 172 (See above) Ex: A book about healthy living thru diet may be protected by
copyright, but not the idea of healthy living thru said diet
A.2 DERIVATIVE WORKS these are creations that are based on an existing work. Thus, the o 2. News of the day
series of film Harry Potter is a derivative work based on the novel of the same title. A song News of the day and other miscellaneous facts having the
that is a re-make of an old song is another example of derivative works. character of mere items of press information; or
Section 173. Derivative Works. -173.1. The following derivative works shall also be Reason: no one can have monopoly of the news or current
protected by copyright: events
o (a) Dramatizations, translations, adaptations, abridgments, o 3. Official government texts
arrangements, and other alterations of literary or artistic works; and Any official text of a legislative, administrative or legal nature,
o (b) Collections of literary, scholarly or artistic works, and compilations of as well as any official translation thereof.
data and other materials which are original by reason of the selection or Sec. 176. Works of the Government. these are works created by an officer or
coordination or arrangement of their contents. employee of the Philippine Government or any of its subdivisions and
Sec. 173.2. The works referred to in paragraphs (a) and (b) of Subsection Sec.173.1 instrumentalities, including GOCCs as part of his regularly prescribed official duties
shall be protected as a NEW WORKS: (Sec. 171.11)
o Provided however, That such new work shall NOT: o This is broader than Sec. 175 because its scope is beyond text or
Affect the force of any subsisting copyright upon the original documents.
works employed or any part thereof, or o Ex: an architectural work by a government engineer designed as part of
Be construed to imply any right to such use of the original his duty cannot be protected by copyright
works, or o 2 elements of a Work of Government:
To secure or extend copyright in such original works 1. Creator must be an officer or employee of government;
2. The work is done as part of his regularly prescribed official
B. Requirements of Originality duties
o Sec. 176.1. No copyright shall subsist in any work of the Government of
the Philippines.
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o When APPROVAL of govt agency is required: recording, a computer program, a compilation of data and
GR: However, prior approval of the government agency or other materials or a musical work in graphic form, irrespective
office wherein the work is created shall be necessary for of the ownership of the original or the copy which is the
EXPLOITATION of such work for profit. Such agency or office subject of the rental;
may, among other things, impose as a condition the payment 177.5. Public display of the original or a copy of the work;
of royalties. 177.6. Public performance of the work; and
EXPN: No prior approval or conditions shall be required for 177.7. Other communication to the public of the work
the use of any purpose of statutes, rules and regulations, and 2. Moral Rights
speeches, lectures, sermons, addresses, and dissertations, o Sec. 193. Scope of Moral Rights. - The author of a work shall,
pronounced, read or rendered in courts of justice, before independently of the economic rights in Section 177 or the grant of an
administrative agencies, in deliberative assemblies and in assignment or license with respect to such right, have the right:
meetings of public character. 193.1. To require that the authorship of the works be
HOWEVER: Sec. 176.2. The Author of speeches, attributed to him, in particular, the right that his name, as far
lectures, sermons, addresses, and dissertations as practicable, be indicated in a prominent way on the copies,
mentioned in the preceding paragraphs shall have and in connection with the public use of his work;
the exclusive right of making a COLLECTION of his 193.2. To make any alterations of his work prior to, or to
works. withhold it from publication;
o Despite the above discussions, this does not mean the government 193.3. To object to any distortion, mutilation or other
cannot be a copyright owner: modification of, or other derogatory action in relation to, his
Sec. 176.3. Notwithstanding the foregoing provisions, the work which would be prejudicial to his honor or reputation;
Government is not precluded from receiving and holding and
copyrights transferred to it by assignment, bequest or 193.4. To restrain the use of his name with respect to any
otherwise; nor shall publication or republication by the work not of his own creation or in a distorted version of his
government in a public document of any work in which copy work
right is subsisting be taken to cause any abridgment or 3. Rights of Performers, Producers of Sounds Recording and Broadcasting
annulment of the copyright or to authorize any use or Organization
appropriation of such work without the consent of the o Sec. 203. Scope of Performers' Rights. - Subject to the provisions of
copyright owners. Section 212, performers shall enjoy the following exclusive rights:
Sec. 203.1. As regards their performances, the right of
Q: What intellectual property rights are protected by copyright? authorizing:
(a) The broadcasting and other communication to
7. RIGHTS CONFERRED BY COPYRIGHT the public of their performance; and
1. Economic Right (b) The fixation of their unfixed performance.
o Sec. 177. Copy or Economic Rights. - Subject to the provisions of Sec. 203.2. The right of authorizing the direct or indirect
Chapter VIII, copyright or economic rights shall consist of the exclusive reproduction of their performances fixed in sound recordings,
right to carry out, authorize or prevent the following acts: in any manner or form;
177.1. Reproduction of the work or substantial portion of the Sec. 203.3. Subject to the provisions of Section 206, the right
work; of authorizing the first public distribution of the original and
177.2 Dramatization, translation, adaptation, abridgment, copies of their performance fixed in the sound recording
arrangement or other transformation of the work; through sale or rental or other forms of transfer of ownership;
177.3. The first public distribution of the original and each Sec. 203.4. The right of authorizing the commercial rental to
copy of the work by sale or other forms of transfer of the public of the original and copies of their performances
ownership; fixed in sound recordings, even after distribution of them by,
177.4. Rental of the original or a copy of an audiovisual or or pursuant to the authorization by the performer; and
cinematographic work, a work embodied in a sound
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Sec. 203.5. The right of authorizing the making available to Sec. 200. In every sale or lease of an original work of painting or sculpture or of the
the public of their performances fixed in sound recordings, by original manuscript of a writer or composer, subsequent to the first disposition
wire or wireless means, in such a way that members of the thereof by the author, the author or his heirs shall have an inalienable right to
public may access them from a place and time individually participate in the gross proceeds of the sale or lease to the extent of 5%. The right
chosen by them. shall exist during the lifetime of the author and for 50 years after his death
o Sec. 204. Moral Rights of Performers. - Requisites: (SOPS)
Sec. 204.1. Independently of a performer's economic rights, o 1. Sale or lease;
the performer, shall, as regards his live aural performances or o 2. Of an original work;
performances fixed in sound recordings, have the right to o 3. Of painting or sculpture, or of the original manuscript of a writer or
claim to be identified as the performer of his performances, composer; and
except where the omission is dictated by the manner of the o 4. Subsequent to the first disposition thereof by the author.
use of the performance, and to object to any distortion,
mutilation or other modification of his performances that 8. LIMITATIONS OF COPYRIGHT
would be prejudicial to his reputation. Sec. 184. Limitations on Copyright.
Sec. 204.2. The rights granted to a performer in accordance Sec. 184.1. Notwithstanding the provisions of Chapter V, the following acts shall
with Subsection 203.1 shall be maintained and exercised fifty NOT CONSTITUTE INFRINGEMENT of copyright:
(50) years after his death, by his heirs, and in default of heirs, o (a) The recitation or performance of a work, once it has been lawfully
the government, where protection is claimed. made accessible to the PUBLIC,
o Sec. 206. Additional Remuneration for Subsequent Communications or If done privately and free of charge OR if made strictly for a
Broadcasts. - Unless otherwise provided in the contract, in every charitable or religious institution or society;
communication to the public or broadcast of a performance subsequent o (b) The making of QUOTATIONS from a PUBLISHED WORK if they are
to the first communication or broadcast thereof by the broadcasting compatible with fair use and only to the extent justified for the purpose,
organization, the performer shall be entitled to an additional including quotations from newspaper articles and periodicals in the form
remuneration equivalent to at least five percent (5%) of the original of press summaries:
compensation he or she received for the first communication or Provided, That the source and the name of the author, if
broadcast appearing on the work, are mentioned;
o Producers of Sound Recordings: Sec. 208. Scope of Right. - Subject to Sec. 171.7. "PUBLISHED WORKS" means works, which, with
the provisions of Section 212, producers of sound recordings shall enjoy the consent of the authors, are made available to the public
the following exclusive rights: by wire or wireless means in such a way that members of the
Sec. 208.1. The right to authorize the direct or indirect public may access these works from a place and time
reproduction of their sound recordings, in any manner or individually chosen by them
form; the placing of these reproductions in the market and o (c) The REPRODUCTION OR COMMUNICATION to the public by mass
the right of rental or lending; media of ARTICLES on current political, social, economic, scientific or
Sec. 208.2. The right to authorize the first public distribution religious topic, lectures, addresses and other works of the same nature,
of the original and copies of their sound recordings through which are delivered in public if such use is for information purposes and
sale or rental or other forms of transferring ownership; and has not been expressly reserved:
Sec. 208.3. The right to authorize the commercial rental to the Provided, That the source is clearly indicated;
public of the original and copies of their sound recordings, Sec. 171.9. "REPRODUCTION" is the making of one (1) or
even after distribution by them by or pursuant to more copies of a work or a sound recording in any manner or
authorization by the producer form.
o (d) The REPRODUCTION AND COMMUNICATION to the public of
Q: What is Droite De Suite? literary, scientific or artistic works as part of reports of CURRENT
Literally: art proceeds right. The right is exercisable even after the authors EVENTS by means of photography, cinematography or broadcasting to
death, provided that the work is still in copyright the extent necessary for the purpose;
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o (e) The INCLUSION of a work in a publication, broadcast, or other o (k) Any use made of a work for the purpose of any JUDICIAL
communication to the public, sound recording or film, if such inclusion is PROCEEDINGS or for the giving of professional advice by a legal
made by way of illustration for teaching purposes AND is compatible practitioner.
with fair use: Sec. 184.2. The provisions of this section shall be interpreted in such a way as to
Provided, That the source and of the name of the author, if allow the work to be used in a manner which does not conflict with the normal
appearing in the work, are mentioned; exploitation of the work and does not unreasonably prejudice the right holder's
o (f) The RECORDING made in schools, universities, or educational legitimate interest.
institutions of a work included in a broadcast for the use of such REPRODUCTION OF PUBLISHED WORK
schools, universities or educational institutions: o Sec. 187. Reproduction of Published Work. -
Provided, That such recording must be deleted within a o Sec. 187.1. Notwithstanding the provision of Section 177, and subject to
reasonable period after they were first broadcast: the provisions of Subsection 187.2, the private reproduction of a
Provided, further, That such recording may not be published work in a SINGLE COPY, where the reproduction is made by a
made from audiovisual works which are part of the natural person exclusively for research and private study, shall be
general cinema repertoire of feature films except PERMITTED, without the authorization of the owner of copyright in the
for brief excerpts of the work; work.
o (g) The making of EPHEMERAL recordings by a broadcasting ELEMENTS of a permissible practice of reproducing a
organization by means of its own facilities and for use in its own copyrighted book:
broadcast; 1. By a Natural Person
Thus, a short-lived sound clip from a song or a movie may be 2. For purposes of research and private study (not mere
used in a radio broadcast without infringing copyright leisure)
o (h) The use made of a work by or under the direction or control of the 3. Not excluded under Sec. 187.2
GOVERNMENT, by the National Library or by educational, scientific or o Sec. 187.2. The permission granted under Subsection 187.1 shall NOT
professional institutions where such use is in the public interest and is EXTEND to the reproduction of:
compatible with fair use; (a) A work of architecture in form of building or other
The governments use of a work must be for public interest. construction;
Unlike in expropriation, payment of just compensation is not (b) An entire book, or a substantial past thereof, or of a
necessary musical work in which graphics form by reprographic means;
o (i) The PUBLIC PERFORMANCE or the communication to the public of a (c) A compilation of data and other materials;
work, in a place where no admission fee is charged in respect of such (d) A computer program except as provided in Section 189;
public performance or communication, by a club or institution for and
charitable or educational purpose only, whose aim is not profit making, (e) Any work in cases where reproduction would
subject to such other limitations as may be provided in the Regulations; unreasonably conflict with a normal exploitation of the work
Sec. 171.3. "Communication to the public" or "communicate or would otherwise unreasonably prejudice the legitimate
to the public" means the making of a work available to the interests of the author.
public by wire or wireless means in such a way that members FAIR USE OF COPYRIGHT WORK Fair Use is using somebody elses work fairly, i.e.
of the public may access these works from a place and time what is reasonable under the circumstances.
individually chosen by them o It is a universally accepted limitation on copyright.
o (j) PUBLIC DISPLAY of the original or a copy of the work not made by o But while the concept is simple, the application is definitely not. Reason:
means of a film, slide, television image or otherwise on screen or by it is hard to determine what is fair under certain circumstances
means of any other device or process: especially since it may not be measured arithmetically.
Provided, That either the work has been published, or, that o Sec. 185. Fair Use of a Copyrighted Work. -
original or the copy displayed has been sold, given away or o Sec. 185.1. The FAIR USE of a copyrighted work for criticism, comment,
otherwise transferred to another person by the author or his news reporting, teaching including multiple copies for classroom use,
successor in title; and
Nudibranch 35
scholarship, research, and similar purposes is NOT an infringement of a copy of a work by an individual for his personal purposes shall be
copyright. permitted without the authorization of the author of, or other owner of
o DECOMPILATION, which is understood here to be the reproduction of copyright in, the work under the following circumstances:
the code and translation of the forms of the computer program to (a) When copies of the work are not available in the
achieve the inter-operability of an independently created computer Philippines and:
program with other programs may also constitute fair use. (i) Not more than one (1) copy at one time is
o In determining whether the use made of a work in any particular case imported for strictly individual use only; or
is fair use, the FACTORS to be considered shall include: (ii) The importation is by authority of and for the
(a) The purpose and character of the use, including whether use of the Philippine Government; or
such use is of a commercial nature or is for non-profit (iii) The importation, consisting of not more than
education purposes; three (3) such copies or likenesses in any one
(b) The nature of the copyrighted work; invoice, is not for sale but for the use only of any
(c) The amount and substantiality of the portion used in religious, charitable, or educational society or
relation to the copyrighted work as a whole; and institution duly incorporated or registered, or is for
(d) The effect of the use upon the potential market for or the encouragement of the fine arts, or for any state
value of the copyrighted work. school, college, university, or free public library in
o Sec. 185.2 The fact that a work is UNPUBLISHED shall not by itself bar a the Philippines.
finding of fair use if such finding is made upon consideration of all the (b) When such copies form parts of libraries and personal
above factors. baggage belonging to persons or families arriving from foreign
REPRODUCTION OF COMPUTER PROGRAM: countries and are not intended for sale: Provided, That such
o Sec. 189. Reproduction of Computer Program. - copies do not exceed three (3).
o Sec. 189.1. Notwithstanding the provisions of Section 177, the o Sec. 190.2. Copies imported as allowed by this Section may not lawfully
reproduction in one (1) back-up copy or adaptation of a computer be used in any way to violate the rights of owner the copyright or annul
program shall be permitted, without the authorization of the author of, or limit the protection secured by this Act, and such unlawful use shall
or other owner of copyright in, a computer program, by the lawful be deemed an infringement and shall be punishable as such without
owner of that computer program: Provided, That the copy or adaptation prejudice to the proprietors right of action.
is necessary for: o Sec. 190.3. Subject to the approval of the Secretary of Finance, the
(a) The use of the computer program in conjunction with a Commissioner of Customs is hereby empowered to make rules and
computer for the purpose, and to the extent, for which the regulations for preventing the importation of articles the importation of
computer program has been obtained; and which is prohibited under this Section and under treaties and
(b) Archival purposes, and, for the replacement of the lawfully conventions to which the Philippines may be a party and for seizing and
owned copy of the computer program in the event that the condemning and disposing of the same in case they are discovered after
lawfully obtained copy of the computer program is lost, they have been imported
destroyed or rendered unusable.
o Sec. 189.2. No copy or adaptation mentioned in this Section shall be 9. OWNERSHIP OF COPYRIGHT
used for any purpose other than the ones determined in this Section, Sec. 178. RULES on Copyright OWNERSHIP. - Copyright ownership shall be
and any such copy or adaptation shall be destroyed in the event that governed by the following rules:
continued possession of the copy of the computer program ceases to be Q: Who has ownership over the copyright?
lawful. If there is only ONE AUTHOR AUTHOR
o Sec. 189.3. This provision shall be without prejudice to the application of o Sec. 178.1. Subject to the provisions of this section, in the case of
Section 185 whenever appropriate. original literary and artistic works, copyright shall belong to the author
Importation for Personal Uses: of the work;
o Sec. 190. Importation for Personal Purposes. - If there are 2 OR MORE AUTHORS It depends.
o Sec. 190.1. Notwithstanding the provision of Subsection 177.6, but
subject to the limitation under the Subsection 185.2, the importation of
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o Sec. 178.2. In the case of works of JOINT AUTHORSHIP, the co-authors Art. 723, Civil Code: Letters and other private communications
shall be the original owners of the copyright and in the absence of in writing are owned by the person to whom they are
agreement, their rights shall be governed by the rules on co-ownership. addressed and delivered, but they cannot be published or
If, however, a work of joint authorship consists of parts that disseminated without the consent of the writer or his heirs.
can be used SEPARATELY and the author of each part can be However, the court may authorize their publication or
identified, the author of each part shall be the original owner dissemination if the public good or the interest of justice so
of the copyright in the part that he has created; requires
If in the COURSE OF EMPLOYMENT It depends. In case of ANONYMOUS/PSEUDONYMOUS WORKS the AUTHORS represented
o Sec. 178.3. In the case of work created by an author during and in the by their PUBLISHERS
course of his employment, the copyright shall belong to: o Sec. 179. Anonymous and Pseudonymous Works. - For purposes of this
o (a) The EMPLOYEE, Act, the PUBLISHERS shall be deemed to represent the AUTHORS of
If the creation of the object of copyright is not a part of his articles and other writings published without the names of the authors
regular duties even if the employee uses the time, facilities or under pseudonyms,
and materials of the employer. EXPN: Unless the contrary appears, or the pseudonyms or
o (b) The EMPLOYER, adopted name leaves no doubts as to the authors identity, or
GR: If the work is the result of the performance of his if the author of the anonymous works discloses his identity.
regularly-assigned duties,
EXPN: Unless there is an agreement, express or implied, to the Q: BAR 2004: BR and CT are noted artists whose paintings are highly prized by collectors.
contrary. Dr. DL commissioned them to paint a mural at the main lobby of his new hospital for
In case of COMMISSIONED WORK the CREATOR children. Both agreed to collaborate on the project for a total fee of two million pesos to be
o Sec. 178.4. In the case of a work-commissioned by a person other than equally divided between them. It was also agreed that Dr. DL had to provide all the
an employer of the author and who pays for it and the work is made in materials for the painting and pay for the wages of technicians and laborers needed for the
pursuance of the commission, the person who so commissioned the work on the project.
work shall have ownership of WORK,
But the COPYRIGHT thereto shall remain with the creator, Assume that the project is completed and both BR and CT are fully paid the amount of P2M
unless there is a written stipulation to the contrary; as artists' fee by DL. Under the law on intellectual property, who will own the mural? Who
In case of AUDIOVISUAL WORK the PRODUCER, etc. will own the copyright in the mural? Why? Explain.
o Sec. 178.5. In the case of audiovisual work, the copyright shall belong to SUGGESTED ANSWER:
the producer, the author of the scenario, the composer of the music, Under Section 178.4 of the Intellectual Property Code, in case of commissioned
the film director, and the author of the work so adapted. work, the creator (in the absence of a written stipulation to the contrary) owns the
EXTENT: However, subject to contrary or other stipulations copyright, but the work itself belongs to the person who commissioned its
among the creators, the producers shall exercise the copyright creation. Accordingly, the mural belongs to DL. However, BR and CT own the
to an extent required for the exhibition of the work in any copyright, since there is no stipulation to the contrary.
manner, Unless there is a stipulation to the contrary in the contract, the copyright shall
EXPN: except for the right to collect performing belong to them in joint ownership
license fees for the performance of musical
compositions, with or without words, which are Q: What is the duration of the copyright?
incorporated into the work; and TERM OF PROTECTION
In case of LETTERS the WRITER SINGLE CREATION during lifetime of author + 50 years after his death
o Sec. 178.6. In respect of letters, the copyright shall belong to the o Sec. 213. Term of Protection. - 213.1. Subject to the provisions of
WRITER subject to the provisions of Article 723 of the Civil Code. Subsections 213.2 to 213.5, the copyright in works under Sections 172
The letter belongs to the addressee or the person to whom it and 173 shall be protected during the life of the author and for fifty (50
is delivered years after his death. This rule also applies to posthumous works.
Nudibranch 37
JOINT CREATION during life of the last surviving author + 50 years after his (a) For performances not incorporated in recordings, fifty (50)
death years from the end of the year in which the performance took
o Sec. 213.2. In case of works of joint authorship, the economic rights shall place; and
be protected during the life of the last surviving author and for fifty (50) (b) For sound or image and sound recordings and for
years after his death. performances incorporated therein, fifty (50) years from the
ANONYMOUS OR PSEUDONYMOUS WORKS 50 years after date of first end of the year in which the recording took place.
publication unless authors identity is revealed or is no longer in doubt in which BROADCASTS 20 years from the date the broadcast took place
case the term is: the same as that of a single creation (If work is PUBLISHED) OR o Sec. 215.2. In case of broadcasts, the term shall be twenty (20) years
50 years from making (If work is UNPUBLISHED) from the date the broadcast took place. The extended term shall be
o Sec. 213.3. In case of anonymous or pseudonymous works, the copyright applied only to old works with subsisting protection under the prior law.
shall be protected for fifty (50) years from the date on which the work
was first lawfully published: Q: When is there copyright infringement?
Provided, That where, before the expiration of the said Elements: (IBI)
period, the author's identity is revealed or is no longer in o 1. Directly commits an infringement
doubt, the provisions of Subsections 213.1 and 213.2 shall o 2. Benefits from the infringing activity of another person who commits
apply, as the case may be: Provided, further, That such works an infringement if the person benefitting has been given notice of the
if not published before shall be protected for fifty (50) years infringing activity and has the right and ability to control the activities of
counted from the making of the work. the other person; and
WORKS OF APPLIED ART 25 years from the date of making o 3. With knowledge infringing activity, induces, causes or materially
o Sec. 213.4. In case of works of applied art the protection shall be for a contributes to the infringing conduct of another
period of twenty-five (25) years from the date of making. Presumption of Authorship the natural person whose name is indicated on a
PHOTOGRAPHIC WORKS 50 years from publication (If PUBLISHED) OR 50 years work in the usual manner, as the author shall, in the absence of proof to the
from making (If UNPUBLISHED) contrary, be presumed to be the author of the work. This is applicable even if the
o Sec. 213.5. In case of photographic works, the protection shall be for name is a pseudonym, where the pseudonym leaves no doubt as to the identity of
fifty (50) years from publication of the work and, if unpublished, fifty the author
(50) years from the making.
AUDIOVISUAL WORKS 50 years from publication (If PUBLISHED) OR 50 years Q: What is the difference between infringement and plagiarism?
from making (If UNPUBLISHED)
o Sec. 213.6. In case of audio-visual works including those produced by BAR 1998: Juan Xavier wrote and published a story similar to an unpublished copyrighted
process analogous to photography or any process for making audio- story of Manoling Santiago. It was, however, conclusively proven that Juan Xavier was not
visual recordings, the term shall be fifty (50) years from date of aware that the story of Manoling Santiago was protected by copyright. Manoling Santiago
publication and, if unpublished, from the date of making. sued Juan Xavier for infringement of copyright. Is Juan Xavier liable?
Q: How do you calculate the term of protection? SUGGESTED ANSWER:
o Sec. 214. Calculation of Term. - The term of protection subsequent to Yes. Juan Xavier is liable for infringement of copyright. It is not necessary that Juan
the death of the author provided in the preceding Section shall run from Xavier is aware that the story of Manoling Santiago was protected by copyright.
the date of his death or of publication, but such terms shall always be The work of Manoling Santiago is protected at the time of its creation.
deemed to begin on the first day of January of the year following the Note: good faith is not a defense in copyright infringement
event which gave rise to them.
PERFORMERS AND PRODUCERS OF SOUND RECORDINGS
o Sec. 215. Term of Protection for Performers, Producers and
Broadcasting Organizations.-
o Sec. 215.1. The rights granted to performers and producers of sound
recordings under this law shall expire:
Nudibranch 38

LIP Classnotes - Atty. Castillo

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LIP Classnotes - Atty. Castillo

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Class Notes 2016 Atty. Castillo

LAW ON INTELLECTUAL PROPERTY Q: What comprises the Law on Intellectual Property?

essential criteria of an inventor, who must possess essential elements of

FINALS NO. See Pearl & Dean vs. SM

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