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2005 CENTRALIZED BAR OPERATIONS

152

INTELLECTUAL PROPERTY CODE (IPC)


(R.A. No. 8293, as amended by R.A. No. 9150)

I. GENERAL PRINCIPLES
PURPOSE:
To strengthen the intellectual and
industrial property system in the
Philippines as mandated by the countrys
accession to the Agreement Establishing
the World Trade Organization (WTO).
(Mirpuri v. CA, 318 SCRA 516)
LAWS SPECIFICALLY REPEALED BY THE
IPC
1. Patent Law (RA 165)
2. Trademark Law (RA 166)
3. Copyright Law (PD 49)
4. Articles 188 & 189 of RPC
II. INTELLECTUAL PROPERTY
Those property rights which result from
the physical manifestation of original
thought. (Ballantine's Law Dictionary)
"INTELLECTUAL PROPERTY RIGHTS"
(Sec. 4)
1. Copyright
2. Related rights or neighboring rights
of copyright
3. Patents
4. Mark
5. Geographic indications
6. Industrial designs
7. Layout designs (topographies) of
integrated circuits
8. Protection
of
Undisclosed
information
GEOGRAPHIC INDICATION
One which identifies a good as
originating in the territory of a TRIPS
member, or a region or locality in that
territory, where a given quality,
reputation or other characteristic of the
good is essentially attributable to its
geographical origin. (Art. 22, TRIPS
Agreement)
LAYOUT-DESIGN (TOPOGRAPHY) OF AN
INTEGRATED CIRCUIT
Integrated circuit a product, in its
final form or an immediate form, in
which the elements, at least one of
which is an element, and some or all of
the interconnections are integrally
formed in and/ or on a piece of material

and which is intended to perform an


electric function. (Art. 35, TRIPS
Agreement)
Layout-design (topography) The
three-dimensional disposition, however
expressed, of the elements, at least one
of which is an active element, and some
or all of the interconnections of an
integrated circuit, or such a threedimensional disposition prepared for an
integrated
circuit
intended
for
manufacture.
Note: For a layout-design to be entitled
to protection it must be original in the
sense that they are the result of their
creators own intellectual effort and are
not commonplace among creators of
layout-designs
(topographies)
and
manufacturers of integrated circuits at
the time of their creation.
TECHNOLOGY TRANSFER
ARRANGEMENTS
Contracts or agreements involving the
transfer of systematic knowledge for the
manufacture
of
a
product,
the
application of a process, or rendering of
a
service
including
management
contracts; and the transfer, assignment
or licensing of all forms of intellectual
property rights, including licensing of
computer software except computer
software developed for mass market.
(Sec. 4)
UNDISCLOSED INFORMATION
Information which :
1. is a secret in the sense that it is not,
as a body or in the precise configuration
and assembly of components generally
known among or readily accessible to
persons within the circles that normally
deal with the kind of information in
question;
2. has commercial value because it is
secret; and
3. has been subject to reasonable steps
under the circumstances, by the person
lawfully in control of the information, to
keep it secret. (Art. 39, TRIPS
Agreement)

2005 CENTRALIZED BAR OPERATIONS EXECUTIVE COMMITTEE AND


SUBJECT CHAIRPERSONS

Maricel Abarentos (Over-all Chairperson), Ronald Jalmanzar (Over-all Vice Chair), Yolanda
Tolentino(VC-Acads), Jennifer Ang(VC- Secretariat), Joy Inductivo (VC-Finance), Elaine Masukat (VCEDP), Anna Margarita Eres (VC-Logistics) Jonathan
Mangundayao (Political Law), Francis Benedict Reotutar (Labor Law), Romuald Padilla (Civil Law),
Charmaine Torres (Taxation Law), Mark David Martinez (Criminal Law), Garny Luisa Alegre (Commercial
Law), Jinky Ann Uy (Remedial Law), Jackie Lou Bautista (Legal Ethics)

153

III. INTERNATIONAL
PROVISIONS

2005 CENTRALIZED BAR OPERATIONS

LAW

RELATED

PERSONS ENTITLED TO THE BENEFITS


OF
THE
IPC
(PRINCIPLE
OF
RECIPROCITY)
Any person who is a national or who is
domiciled or has a real and effective
industrial establishment in a country
which:
1. is a party to any convention,
treaty, or agreement relating to
intellectual property rights or the
repression of unfair competition to
which the Philippines is also a party,
or
2.
extends reciprocal rights to
nationals of the Philippines by law,
shall be entitled to benefits to the
extent necessary to give effect to any
provision of such convention, treaty, or
reciprocal law, in addition to the rights
to which any owner of an intellectual
property right is otherwise entitled by
the IPC. (Sec. 3)
PRINCIPLE OF REVERSE RECIPROCITY
Any condition, restriction, limitation,
diminution, requirement, penalty or any
similar burden imposed by the law of a
foreign country on a Philippine national
seeking
protection
of
intellectual
property rights in that country, shall
reciprocally
be
enforceable
upon
nationals of said country within
Philippine jurisdiction. (Sec. 231)
NATIONAL TREATMENT PRINCIPLE
The Philippines, upon becoming a
member of the WTO, has adhered to the
Trade-Related Aspects of Intellectual
Property Rights (TRIPS), which provides
that protection afforded to the memberstate (with respect to intellectual
property) must be extended to the
nationals of other member-states.
MOST-FAVORED NATION PRINCIPLE

Whatever
favor,
allowance,
consideration, privilege or immunity a
member-state grants the nationals of
another country, it immediately and
unconditionally accords the nationals of
other member-states. (TRIPS, Art. 4)

IV. JURISDICTION OVER DISPUTES


UNDER IPC
(i) Original Jurisdiction
1. DIRECTOR GENERAL
Over disputes relating to the terms of a
license involving the authors right to
public
performance
or
other
communication of his work. (Sec. 7.1[c])
2. BUREAU OF LEGAL AFFAIRS
Over:
a. Opposition to applications for
registration of marks;
b. Cancellation of trademarks;
c. Cancellation of patents, utility
models, and industrial designs;
d. Petitions for compulsory licensing;
e. Administrative
complaints
for
violation
of
laws
involving
intellectual property rights where
the total damages claimed are not
less than P200,000. The Director of
Legal Affairs has the power to
punish contempt. (Sec. 10)
3. DOCUMENTATION, INFORMATION AND
TECHNOLOGY TRANSFER BUREAU
Over disputes involving technology
transfer payments. (Sec. 11.8)
4. REGULAR COURTS (Sec. 225)
B. Appellate jurisdiction
1. DIRECTOR GENERAL
Over all decision rendered by the:
a. Director of Legal Affairs;
b. Director of Patents;
c. Director of Trademarks; and
d. Director of the Documentation,
Information
and
Technology
Transfer. (Sec. 7.1[b])
2. COURT OF APPEALS
Over decisions of the Director General
in the exercise of his appellate
jurisdiction over the decisions of the a)
Director of Legal Affairs, b) Director of
Patents, c) Director of Trademarks. (Sec.
7.1[b])
3. SECRETARY OF TRADE AND INDUSTRY
a. Over decisions of the Director
General in the exercise of his
appellate jurisdiction over the
decisions of the Director of the

2005 CENTRALIZED BAR OPERATIONS EXECUTIVE COMMITTEE AND


SUBJECT CHAIRPERSONS

Maricel Abarentos (Over-all Chairperson), Ronald Jalmanzar (Over-all Vice Chair), Yolanda
Tolentino(VC-Acads), Jennifer Ang(VC- Secretariat), Joy Inductivo (VC-Finance), Elaine Masukat (VCEDP), Anna Margarita Eres (VC-Logistics) Jonathan
Mangundayao (Political Law), Francis Benedict Reotutar (Labor Law), Romuald Padilla (Civil Law),
Charmaine Torres (Taxation Law), Mark David Martinez (Criminal Law), Garny Luisa Alegre (Commercial
Law), Jinky Ann Uy (Remedial Law), Jackie Lou Bautista (Legal Ethics)

San Beda College of Law


154
MEMORY AID
Documentation, Information and
Technology
Transfer.
(Sec.
7.1[b])
b. Over decisions of the Director
General in the exercise of his
original jurisdiction relating to
terms of license involving the
authors right. (Sec. 7.1[c])
INTER PARTES
PROCEEDINGS

CIVIL
PROCEEDINGS

Kinds
A.
Copyright,
Patent, Trademark
1.
Action
for
infringement
B. Trademark
1. Action for unfair

A. Patent
1. Petition to cancel
an invention patent,
utility
model
registration, industrial
design registration, or
any claim or parts of a
claim
2.
Petition
for
compulsory
licensing
or a license to exploit
a patented invention
B. Trademark
1. Opposition against
the registration of a
mark published for
opposition
2. Petition to cancel
the registration of a
mark

Nature of Proceedings
Administrative
Judicial
Jurisdiction
IPO (Bureau of Legal
Regular courts
Affairs)
Degree of Proof
Substantial evidence
Preponderance of
evidence

V. COPYRIGHT
PRINCIPLES
1. Works are protected by the sole fact
of their creation, irrespective of
their mode or form of expression, as
well as their content, quality or
purpose (Sec. 172.2)
2. The copyright of original literary and
artistic works belong to the author of
the work. (Sec. 178.1)
3. Protection extends only to the
expression of the idea, not to the
idea itself or to any procedure,
system, method or operation,
concept or principle, discovery, or
mere data. (Sec. 175)

IN

COMMERCIAL LAW

4. The copyright is distinct from the


property in the material object
subject to it. (Sec. 181)
5. Copyright, in the strict sense of the
term, is purely a statutory right.
Being a mere statutory grant, the
rights are limited to what the statute
confers. It may be obtained and
enjoyed only with respect to the
subjects and by the persons, and on
terms and conditions specified in the
statute. Accordingly, it can cover
only the works falling within the
statutory
enumeration
or
description. (Pearl & Dean(Phil.) vs.
Shoemart, G.R. No. 148222. August
15, 2003)
REQUISITES
1. Originality
It does not mean novelty or ingenuity;
neither uniqueness nor creativity. It
simply means that the work "owes its
origin to the author".
a. The work is an independent
creation of the author
b. It must not be copied;
c. It must involve some intellectual
effort.
2. Expression
There must be "fixation". To be "fixed"
a work must be embodied in a medium
sufficiently permanent or stable to
permit it to be perceived, reproduced,
or otherwise communicated for a period
of more than transitory duration.
Strictly speaking, there is no work for
copyright purpose, unless there is
something tangible.
It is fixation that defines the time
from when copyright subsists. Before
the time of fixation there can be no
infringement.
It is the crucial event or act that
allows the author to invoke the law:
It must be when a work of authorship
is at least expressed in some
determinate form, i.e. fixation.
FORMALITIES
No formality is required for the author
to be vested with the rights of copyright.
(PRINCIPLE OF AUTOMATIC PROTECTION)

COMMERCIAL LAW COMMITTEE


CHAIRPERSON: Garny Luisa Alegre ASST. CHAIRPERSON:Jayson OS Ramos EDP: Beatrix I. Ramos SUBJECT HEADS:
Marichelle De Vera (Negotiable Instruments Law); Jose Fernando Llave (Insurance); Aldrich Del Rosario
(Transportation Laws);
Shirley Mae Tabangcura, Bon Vincent Agustin (Corporation Law); Karl Steven Co (Special Laws); John Lemuel
Gatdula (Banking Laws); Robespierre CU (Law on Intellectual Property)

COPYRIGHT, PATENT & MARK


COPYRIGHT

PATENT

MARK

Definition
It is that system of legal protection
an author enjoys in the form of
expression
of
ideas.
(World
Intellectual Property Organization;
WIPO)
An intangible, incorporeal right
granted by statute to the author or
originator of certain literary or
artistic productions, whereby he is
invested, for a limited period, with
the sole exclusive privilege of
multiplying copies of the same and
publishing and selling them.
(Blacks Law Dictionary)

1.
To stimulate artistic
creativity for the general
public good
2.
To promote the progress
of science and useful arts.

1.
2.

An exclusive right acquired over


an invention, to sell, use and make
the same whether for commerce or
industry.
Refers to either the grant of
rights,
or
the
instrument
(sometimes called letters patent)
containing the grant, giving an
inventor a monopoly on the
inventors invention for a limited
period.

Purposes
1.
Not only to reward the
individual,
but
the
advancement of the arts and
sciences
2.
To add to the sum of useful
knowledge
3.
To encourage dissemination
of
information
concerning
discoveries and inventions

Requirements
Any technical solution of a
problem in any field of human
activity which is:
1. New or novel
2. Inventive
3. Industrially applicable (Sec.
21)

Originality
Expression

Any visible sign capable of


distinguishing the goods of an
enterprise (trademark) or the
services of an enterprise (service
mark), and includes a stamped or
marked container of goods.

1. To indicate origin or ownership of


articles to which they are attached
2. To guarantee that those articles
come up to a certain kind of
quality;
3. To advertise
articles
they
symbolize
4. To assure the public that they
are producing genuine article, and
5.To protect the manufacturer
against substitution and sale of an
inferior and different article,

1.Upon application:
Must not be non-registrable
(Sec. 123.1):
a. Absolutely
nonregistrable (a-i) & (m) of
Sec. 123.1
b. Qualifiedly registrable (j), (k), (l) of Sec. 123.1;
Doctrine
of
secondary
meaning (Sec. 123.2)
2. Within 3 years from
application:
Declaration and evidence of
actual use

Term

See Table
Copyright

on

Duration

of

From the moment of creation


(fixation)

20 years from the filing date of


the application (Sec. 54).

How created/acquired
First-to-file system

10 years from the filing date of the


application, provided the registrant
shall file a declaration of actual use
within a year from the 5 th
anniversary of registration date
(Sec. 145), and renewable for
another 10 years (Sec. 146).

Valid registration

(ii)

General limitations
1. Duration/temporal The owner is limited by the terms of their property rights
Territorial/geographical The owner is protected by the law of the country where the violation is committed.
For violations in another country, resort must be made to the law of the other country, subject to the principle
of reciprocity in Sec. 3.

n actions for infringement, intent to infringe by the defendant is not essential

(Notes on Selected Commercial Laws A


Guide for Bar Reviewees, Tristan
Catindig, 2003 ed.)
Registration and Deposit with the
National Library and the Supreme Court
Library of 2 copies of the work within 3
weeks after first public dissemination is
only for the purpose of completing the
records of these libraries. Failure to do
so after formal demand subjects the
author to a fine (Sec. 191).
OWNERSHIP OF COPYRIGHT
CREATOR
TO WHOM BELONGS
Single creator
Joint creation

Employees
creation
Commissioned
work

Cinematographic
works

Anonymous
and
pseudonymous
works

Collective
works

Author of the work, his


heirs or assigns.
Work
consists
of
unidentifiable parts: coauthors jointly as coowners.
Work
consists
of
identifiable parts: author
of each part owns the
part that he has created.
If the creation is part
of his regular duties:
employer
If it is not: employee
Work per se: person
commissioning
Copyright:
creator,
unless there is a written
stipulation
to
the
contrary.
For
exhibition
purposes: producer
For all other purposes:
producer, author of
the
scenario,
composer,
film
director, author of the
work
Publishers are deemed
representative of the
author, unless:
a.
the
contrary
appears
b. pseudonyms or
adopted
name
leaves no doubt as
to the authors
identity, or
c. author discloses his
identity. (Sec. 179)
Contributor is deemed to
have waived his right,
unless
he
expressly
reserves it. (Sec. 196)

Letters

Writer
(Sec.
178)
However, the court may
authorize
their
publication
or
dissemination
if
the
public good or the
interest of justice so
requires. (Art.723 New
Civil Code)

DURATION OF COPYRIGHT (Sec. 213)


TYPE OF WORK

DURATION

1. Single creation

Lifetime of the creator


and for 50 years after
his death
Lifetime of the last
surviving co-creator and
for 50 years after his
death
50 years after the date
of
their
first
publication;
except where, before
the expiration of said
period, the authors
identity is revealed or
is no longer in doubt,
(1) and (2) shall apply
25 years from the date
of making

2. Joint creation

3. Anonymous or a
pseudonymous
work

4. Work of applied
art

An
artistic
creation
with
utilitarian
functions
or
incorporated in a
useful
article,
whether made by
hand or produced
on an industrial
scale.
(Sec.
171.10)
5. Photographic
work,
audiovisual
work produced
by photography
or analogous
processes

50 years from the


publication of the work,
or if unpublished, from
making the same

6. Newspaper
article

Lifetime of the author


and 50 years thereafter

However, relative to newspapers and


periodicals, Sec. 175 denies copyright
protection to "news of the day and other
miscellaneous facts having the character
of mere items of press information." A
pure news report will no longer find

protection under the new law, BUT a


column or published comment will.
When newspapers and periodicals
include works enjoying independent
copyrights, the works so included
continue enjoying the rights for duration
proper to them.

6. Musical
compositions,
with or
without words;
7. Works
of
drawing,
painting,
architecture, sculpture, engraving,
lithography or other works of art;
models or designs for works of art;
8. Original ornamental designs or
models for articles of manufacture,
whether or not registrable as an
industrial design, and other works of
applied art;
9. Illustrations, maps, plans, sketches,
charts and three dimensional works
relative to geography, topography,
architecture or science;
10. Drawings or plastic works of a
scientific or technical character;
11. Photographic works including works
produced by a process analogous to
photography; lantern slides;
12. Audiovisual
works
and
cinematographic works and works
produced by a process analogous to
cinematography or any process for
making audiovisual recordings;
13. Pictorial
illustrations
and
advertisements;
14. Computer programs; and
15. Other literary, scholarly, scientific
and artistic works. (Sec. 172)

The term of protection shall be


counted from the first day of January of
the year following the death or of last
publication. (Sec. 214)
COLLECTIVE
WORK

JOINT
WORK

Elements
remain
unintegrated and
disparate
Work created by 2
or more persons at
the initiative and
under direction of
another with the
understanding that
it will be disclosed
by the latter under
his own name and
that contributions
of natural persons
will
not
be
identified
Each author shall
enjoy copyright to
his
own
contribution
Unless
the
contributor
expressly reserves
his right, it is the
putative author to
whom the work
will be attributed

Separate elements
merge into a unified
whole
Work prepared by 2
or more authors
with the intention
that
their
contributions
be
merged
into
inseparable
or
interdependent
parts of the unitary
whole.

Joint authors shall


be co-owners. Coownership
shall
apply
Joint authors shall
be entitled both to
be acknowledged as
authors of the work

WORKS PROTECTED
A. Original Works
1. Books, pamphlets, articles and other
writings;
2. Periodicals and newspapers;
3. Lectures,
sermons,
addresses,
dissertations prepared for oral
delivery, whether or not reduced in
writing or other material form;
4. Letters;
5. Dramatic
or
dramatico-musical
compositions, choreographic works
or entertainment in dumb shows;

(iii)

Derivative Works
1. Dramatizations,
translations,
adaptations,
abridgments,
arrangements, and other alterations
of literary or artistic works; and
2. Collections of literary, scholarly or
artistic works, and compilations of
data and other materials which are
original by reason of the selection or
coordination or arrangement of their
contents. (Sec. 173)
WORKS NOT PROTECTED
1. Idea, procedure, system, method or
operation,
concept,
principle,
discovery or mere data as such, even
if they are expressed, explained,
illustrated or embodied in a work;
(Sec. 175)
2. News of the day and other
miscellaneous facts having the
character of mere items of press
information; (Sec. 175)
3. Any official text of a legislative,
administrative or legal nature, as

well as any official translation


thereof. (Sec. 175)
4. Any work of the Government of the
Philippines;
However, prior approval of the
government agency or office wherein
the work is created shall be
necessary for exploitation of such
work for profit. Such agency or
office may, among other things,
impose as a condition the payment
of royalties.
No prior approval or conditions
shall be required for the use of any
purpose of statutes, rules and
regulations, and speeches, lectures,
sermons,
addresses,
and
dissertations, pronounced, read or
rendered in courts of justice, before
administrative
agencies,
in
deliberative assemblies and in
meetings of public character. (Sec.
176)
The Government
is
not
precluded from receiving and holding
copyrights transferred to it by
assignment, bequest or otherwise;
nor shall publication or republication
by the Government in a public
document of any work in which
copyright is subsisting be taken to
cause any abridgement or annulment
of the copyright or to authorize any
use or appropriation of such work
without the consent of the copyright
owner.
5. Pleadings;
6. Decisions of courts and tribunals.
They may therefore be freely used
or quoted.
Note: This pertains to the "original
decisions" not the SCRA published
volumes since these are protected
under derivative works under Sec.
173.1 (b)
RIGHTS CONFERRED BY COPYRIGHT
A. Copyright or Economic rights (Sec.
177)
B. Moral rights (Sec. 193)
C. Right to participate in the gross
proceeds of the sale or lease of the
original work or DROIT DE SUITE
(Sec. 200)

A. Copyright or Economic Rights


Exclusive right to a) carry out, b)
authorize or c) prevent the following
acts:
1. Reproduction of the work or
substantial portion of the work;
2. Dramatization,
translation,
adaptation,
abridgment,
arrangement or other transformation
of the work;
3. First public distribution of the
original and each copy of the work;
4. Rental of the original or a copy of an
audiovisual or cinematographic work;
5. Public display of the original or a
copy of the work;
6. Public performance of the work; and
7. Other communication to the public
of the work. (Sec. 177)
8. Assignment of the copyright and/or
the material object in whole or in
part
B. Moral Rights
1. To require that the authorship of the
works be attributed to him, in a
prominent way on the copies, and
with the public use of the work;
2. To make any alterations of his work
prior to, or to withhold it from
publication;
3. To object to any distortion,
mutilation or other modification of,
or other derogatory action in
relation to, his work which would be
prejudicial
to
his
honor
or
reputation; and
4. To restrain the use of his name with
respect to any work not of his own
creation or in a distorted version of
his work (Sec. 193).
These rights are distinct from
economic rights and remain with the
author even after he has transferred or
assigned to others other rights of
copyright. (WIPO, 215)
Term: Lifetime of the author and 50
years after his death.
Not assignable or subject to license.
(Sec. 198)
Waiver:
1. by a written instrument (Sec. 195)
2. by contribution to a collective work
unless expressly reserved. (Sec. 196)
C. Droit De Suit

Inalienable right to receive to the


extent of 5% of the gross proceeds of the
sale or lease of a work.
Requisites:
1. Sale or lease of the work
2. Original work
3. Painting
or
sculpture,
or
manuscript
4. Subsequent
to
the
first
disposition by the author
Term: Lifetime of the author and for 50
years after his death
Works not covered:
1. Prints
2. Etchings
3. Engravings
4. Works of applied art
5. Similar works wherein the author
primarily derives gain from the
proceeds of reproductions
First Sale Doctrine
After the first sale of the lawfully made
copy of the copyrighted work, anyone
who is the owner of that copy can sell or
dispose of that copy in any way without
any liability for copyright infringement.
The first sale of an authorized copy of
the work exhausts the authors right to
control distribution of copies.
LIMITATIONS TO THE RIGHTS OF
COPYRIGHT
1. General limitations (Sec. 184)
2. Fair use (Sec. 185)
3. In the case of a work of architecture,
the
right
to
control
the
reconstruction or rehabilitation in
the same style as the original of the
building (Sec. 186)
4. Private reproduction of published
work in a single copy by a natural
person for research and private
study (Sec. 187)
5. Reprographic reproduction in a single
copy by non-profit libraries, under
certain circumstances (Sec. 188)
6. Reproduction,
under
certain
circumstances, of a computer
program in one back-up copy by the
lawful owner of the program (Sec.
189)
7. Importation for personal purposes
under certain conditions (Sec. 190)
General Limitations

Acts that does not infringe copyright:


1. Recitation or performance of a work:
(i) made accessible to the public, (ii)
privately done, (iii) free of charge, (iv)
strictly for a charitable or religious
institution;
2. Making of quotations from a published
work: (i) compatible with fair use, (ii)
extent is justified by the purpose, (iii)
source and name of the author,
appearing on work, must be mentioned;
3. Reproduction or communication to the
public by mass media of articles on
current political, social, economic,
scientific or religious topic, lectures,
addresses and other works, delivered in
public: (i) for information purposes, (ii)
not expressly reserved, and (iii) source is
already indicated;
4. Reproduction and communication to
the public of literary, scientific or
artistic works as part of reports of
current events by means of photography,
cinematography or broadcasting to the
extent necessary for the purpose;
5. Inclusion of a work in a publication,
broadcast or other communication to the
public, sound recording or film if made
by way of illustration for teaching
purposes compatible with fair use and
the source and the name of the author
appearing on work, must be mentioned;
6.
Recording made in schools,
universities, or educational institutions
of a work included in a broadcast for the
use
of
schools,
universities
or
educational institutions. Such recording
must be deleted with in a reasonable
period; such recording may not be made
from audio-visual works which are part
of the general cinema, repertoire of
feature films except of brief excerpts of
the work;
7. Making of ephemeral recordings; (i)
by a broadcasting organization, (ii) by
means of its work or facilities, (iii) for
use in its own broadcast;
8. Use made of a work by or under the
direction or control of the government
for public interest compatible with fair
use;
9.
Public performance or the
communication to the public of a work in
a place where no admission fee is
charged by a club on institution for

charitable or educational purpose only


and the aim is not profit-making;
10. Public display of the original or a
copy of the work not made by means of
a film, slide, television, image or
otherwise on screen or by means of any
other device or process either the work
has been published, sold, given away, or
transferred to another person by the
author or his successor in title;
11. Use made of a work for the purpose
of any judicial proceedings or for the
giving of professional advice by a legal
practitioner. (Sec. 184)
Fair Use
A privilege, in persons other than the
owner of the copyright, to use the
copyrighted material in a reasonable
manner
without
his
consent,
notwithstanding the monopoly granted
to the owner by the copyright.
It is meant to balance the monopolies
enjoyed by the copyright owner with the
interests of the public and of society.
It does not constitute infringement.
Examples:
a. Criticizing, commenting, and
news reporting;
b. Using for instructional purposes,
including producing multiple
copies for classroom use, for
scholarship, research and similar
purposes
c. Decompilation the reproduction
of the code and translation of
the forms of the computer
program to achieve the interoperability of an independently
created computer program with
other computer programs. (Sec.
185)
Criteria to determine whether use is
fair or not:
a. Purpose and the character of the
use
b. Nature of the copyrighted work
c. Amount and substantiality of the
portions used
d. Effect of the use upon the
potential
market
of
the
copyrighted work (Sec. 185)
Note: Concept of fair use only applies to
copyrighted work and not to noncopyrightable material.

INFRINGEMENT OR PIRACY
Any violation of the owners exclusive
rights conferred by law. (Pandect of
Commercial Law and Jurisprudence,
Justice Jose Vitug, 1997 ed.)
An appropriation of a copyrighted work
by another who is not authorized.
(Blacks Law Dictionary)
The doing by any person, without the
consent of the owner of the copyright, of
anything the sole right to do which is
conferred by statute to the owner of the
copyright. (Habana v. Robles, Columbia
Pictures v. CA)
Copying alone is not what is prohibited.
The copying must produce an injurious
effect. The authors work is the product
of his long and assiduous research and
for another to represent it, as ones own
is injury enough. (Ibid.)
It is not necessary that the whole or
even a large portion of the work shall
have been copied. If so much is taken
that the value of the original is sensibly
diminished, or the labors of the original
author are substantially and to an
injurious extent appropriated by another,
that is sufficient in point of law to
constitute a piracy. (Columbia Pictures v.
CA)
Plagiarism
The act of appropriating the literary
composition of another, or parts or
passages of his writings, or the ideas or
language of the same and passing them
off as the product of ones mind. (Estela
v. Santiago)
The incorporation in ones own work
that of another without the proper
acknowledgement thereof. (Pandect of
Commercial Law and Juirsprudence,
Justice Jose Vitug, 1997 ed.)
REMEDIES FOR INFRINGEMENT
A. Judicial
1. Action for damages
2. Criminal action (Sec. 217)
3. Injunction (Sec. 216)
4. Court order for impounding or
destruction of infringing materials
5. Payment of moral and exemplary
damages even in case of acquittal by the
accused (Sec. 216)

6. Seizure and impounding of infringing


materials for the purpose of evidence
B. Administrative
1. Administrative action
2. Cease and desist order
3. Forfeiture of paraphernalia used in
committing the offense
4. Administrative fines
Related Parties
A. PARTIES
1. Plaintiff
a. Legal owner; or
b. Beneficial owner; since they
are "parties in interest."
2. Defendant
a. Direct infringer
b. Contributory infringer (Sec.
217)
A corner bookstore and magazine
store that vends pirated copies of a
work is in fact violating the
copyright
owner's
right
to
exclusively distribute his work.
Such store would therefore be
infringing. The printer who, though
acting under instructions from
another, sets into motion the illegal
reproduction of protected material
would, in fact, be infringing
copyright.
B. PRESCRIPTIVE PERIOD
1. Action for damages - 4 years from the
time the cause of action arose (Sec. 226)
2. Criminal action - subject to the
general rules of prescription of crimes
3. Petition for injunctive relief - none
4. Petition for the impounding and
destruction of infringing material - none
RELATED RIGHTS OR NEIGHBORING
RIGHTS OF COPYRIGHT (Secs. 202-211)
Rights akin to but different from
copyright, granted by the law to:
1. Performers (Secs. 203-207)
2. Producers of sound recordings (Secs.
208-210)
3. Broadcasting organizations (Sec. 211)
VI. PATENT
PRINCIPLES

1. Any technical solution of a problem in


any field of human activity which is new
involves an inventive step and is
industrially
applicable
shall
be
patentable. (Sec. 21)
2. If any person possessing ordinary skill
in the art was able to draw the
inferences and the constructs that the
supposed inventor drew from prior art,
then the latter did not really invent.
(Test of Non-Obviousness)
3. The application shall relate to one
invention only or to a group of inventions
forming a single general inventive step.
(Unity of Invention)
4. An applicant may not file 2
applications for the same subject, one
for utility model registration and the
other for the grant of a patent whether
simultaneously or successively. (Parallel
Application, Sec. 111)
5.Whatever right one has to the
invention covered by the patent arises
alone from the grant of patent. (Creser
Precision Systems vs. CA, 286 SCRA 13)
PATENT

COPYRIGHT

When a person, by
independent
research arrives at
the same product
or that is already
patented, he is
restrained by the
arm of the law
from
exploiting
such an invention
by reason of the
patent granted the
earlier discoverer.

It may be vested in
a
work
closely
similar
or
even
identical
to
an
earlier,
already
patented
work,
provided that the
former
is
truly
original,
i.e.,
it
owes its existence
to its creator.
Non-patentable
inventions may be
subject
of
a
copyright.

CLASSES OF
PATENTABLE
INVENTIONS

NONPATENTABLE
INVENTIONS

1. Useful machine
2. A product
3. A process
4. Improvement of
(1), (2), (3)
5. Micro- organism
6.
Non-biological
and microbiological
process (Rule 201,
Rules
and

1. Discoveries,
scientific theories
and mathematical
method;
2. Schemes, rules
and methods of
performing mental
acts,
playing
games or doing
business,
and

Regulations
Inventions)

of

programs
for
computers;
3. Methods
for
treatment of the
human or animal
body;
4. Plant varieties or
animal breeds of
essentially
biological process
for the production
of
plants
or
animals;
5. Aesthetic
creations;
6. Anything which is
contrary to public
order or morality
(Sec. 22).

UTILITY MODEL

INDUSTRIAL
DESIGN

any new model of


implements or tools
of any industrial
product even if not
possessed of the
quality of invention
but which is of
practical utility.
(Del rosario vs. ca,
255 scra 152)

Any composition
of lines or colors or
any
threedimensional form,
whether or not
associated
with
lines
or
colors
provided that such
composition
or
form gives a special
appearance to and
can
serve
as
pattern
for
an
industrial product
or handicraft. (Sec.
112.1)

PATENT

UTILITY
MODEL

INDUST
RIAL
DESIGN

1. New(Novel)

1. New
2. Industrially

New

That which
does not form
part of a prior
art (Sec. 23)

2. Inventive

An invention
involves
an
inventive
step
if, having regard
to prior act, it is
not obvious to a
person skilled in
the art at the
time of the filing
date or priority
date
of
the
application

applicable

claiming
invention
26)

the
(Sec.

Has all of the


4
essential
requisites

20 years from
the filing date
of
the
application

No inventive
step

Term:
7 years from
the filing
date of the
application;
nonrenewable

Applicable rules
Secs. 108-111
Secs. 20-107

and provisions
on
patents
applying
mutatis
mutandis

No
inventive
step and
not
industrial
ly
applicabl
e
5 years
from the
filing date
of the
applicatio
n, which is
renewable
for not
more than
2
consecutiv
e periods
of 5 years
each
Secs. 112120
and
certain
provisions
on patents
applying
mutatis
mutandis

Prior art
1. That which has been made available
to the public anywhere in the world
before the filing date or the priority
date of the application;
2. GENERAL RULE: That which forms
part of an application whether for
patent, utility model or industrial
design, effective in the Philippines,
provided that:
a. the inventors or applicants are
not the same
b. the contents of the application
are published in accordance with
the requirements of patent
application rules
c. the filing date of the prior art is
earlier
EXCEPTION: Non-prejudicial
disclosure
a. Disclosure
of
information
contained in the application
b. Made by
i. The inventor;

ii. Patent
office
and
the
information was contained:
a) in another application
filed by the inventor and
should
not
have
been
disclosed by the office; or b)
in an application filed
without the knowledge or
consent of the inventor by a
third party which obtained
the information directly or
indirectly from the inventor;
or
iii. A third party which obtained
the information directly or
indirectly from the inventor.
(Sec. 25)
c. Made during the 12 months
preceding the filing date or the
priority date of the application

Shoemart, G.R. No. 148222. August 15,


2003)

PERSONS
WHO
MAY
FILE
AN
APPLICATION FOR A PATENT IN THE
PHILIPPINES
1. As to nationality
a. Filipino Nationals
b. Foreign Nationals or those
domiciled or have a real and
effective
commercial
establishment in a country which
is bound by treaty (such as the
Paris Convention and the TRIPS
Agreement) to grant Filipinos the
same rights it grants to its own
nationals.
c.
Foreign Nationals whose
country also accepts the patent
application of Filipinos
2. As to the legal personality of the
applicant
a.Inventor or his attorney-in- fact
b. Assignee of the inventor

REQUIREMENTS TO GET A FILLING DATE


(Sec. 40)
On receipt of the application, an
examiner checks if the application
includes the following requirements:
1. Request for a Philippine patent
2. Name and address of the applicant
3. Description and claims of the
invention in English or Filipino
NOTE: Payment of the filling fee is not
included
The date of filling is very important
because it serves to determine in case of
a dispute with another applicant for the
same invention, who has the right to the
patent.

To be able to effectively and legally


preclude others from copying and
profiting from the invention, a patent is
a primordial requirement. No patent,
no protection. The ultimate goal of a
patent system is to bring new designs
and technologies into the public domain
through disclosure. Ideas, once disclosed
to the public without the protection of a
valid
patent,
are
subject
to
appropriation
without
significant
restraint. (Pearl & Dean (Phil.) vs.

FIRST-TO-FILE RULE/SYSTEM
This is the system of patent registration
adopted under the IPC in lieu of the
first-to-invent system.
Right to priority of an earlier-filed
foreign application (Sec. 31)
Requisites:
1. The local application expressly
claims priority
2. It is filed within 12 months from the
date the earliest foreign application
3. Filing within 6 months from the
certified copy of the foreign
application,
with
an
English
translation, from the date of the
local application

ANNUAL FEES
To maintain the patent application or
patent, an annual fee shall be paid upon
the expiration of 4 years from the date
the application was published, and of its
subsequent anniversary of such date.
Payment maybe made within 3 months
before the due date.
If the annual fee is not paid, the
patent application shall be deemed with
drawn or the patent considered as laxed
from the day following the expiration of
the period with in which the annual fees
were due.
A grace period of 6 months shall be
granted for the payment of annual fee.
(Sec. 55)

SITUATION
2 or more persons
invent separately and
independently
2
or
more
applications filed for
the same invention
Inventions
created
pursuant
to
a
commission
In case an employee
made the invention in
the course of his
employment

PERSON ENTITLED
TO PATENT
He who first files.
Applicant who has
the earliest filing
date
or
earliest
priority date
Person
who
commissioned
the
work, unless agreed
otherwise.
1.
Employee if
invention not part of
his regular duties
even if he uses the
time, facilities and
materials
of
the
employer;
2. Employer if the
invention
is
the
result
of
the
performance of his
regularly
assigned
duties unless agreed
otherwise.

RIGHTS CONFERRED BY PATENT


1. Right to restrain/prohibit/prevent
a. Subject matter is PRODUCT
To restrain, prohibit, and
prevent
any
unauthorized
person or entity from making,
using, offering for sale, selling
or importing that product;
b. Subject matter is PROCESS
To restrain, prevent or
prohibit
any
unauthorized
person or entity from using the
process,
and
from
manufacturing, dealing in,
using, selling or offering for
sale, or importing any product
obtained directly or indirectly
from such process.
2. Right to assign or transfer
3. Right to conclude licensing
contracts
LIMITATIONS ON RIGHTS CONFERRED BY
PATENT
A. General Limitations (Sec. 72)
The owner of a patent has no right to
prevent third parties from performing,

without his authorization the following


acts:
1. Exploitation of the patent if done
privately and on a non-commercial scale
or purpose;
2. Act of making or using the patent if
for the sole purpose of scientific
research and experiment;
3. Using of a patented product which has
been put on the market in the
Philippines by the owner of the product,
or with his express consent;
4. Preparation for individual cases, in a
pharmacy or by a medical professional, a
medicine in accordance with a medical
prescription;
5. Use of the patented product if it
occurs in vehicles in transit in the
country.
B. Use by Prior User (Sec. 73)
A person other than the applicant, who
have started using in good faith the
invention
in
the
Philippines,
or
undertaken serious preparations to use
the same, before the filing date or
priority date of the application shall
have the right to continue the use
thereof but his right may only be
transferred or assigned further with his
enterprise or business.
C. Use by Government (Sec. 74)
The government or a third person
authorized by it may use the patent with
out authority of the patent owner if:
1. Public interest so requires
2. The manner of exploitation by the
owner of the patent is anti-competitive
CANCELLATION
Formalities: Upon petition, with notice
and hearing
Effect: Termination of rights conferred
by the patent
Grounds:
1.
What is claimed as the invention
is not new or patentable.
2.
Patent does not disclose the
invention
in
a
manner
sufficiently clear and complete
for it to be carried out by any
person skilled in the art.
3.
Patent is contrary to public order
or morality.

INFRINGEMENT
The making, using, offering for sale,
selling, or importing a patented product
or a product obtained directly or
indirectly from a patented process, or
the use of a patented process without
the authorization of the patentee.
Doctrine of patent exhaustion
It espouses that the patentee who has
already sold his invention and has
received
all
the
royalty
and
consideration for the same will be
deemed to have released the invention
from his monopoly. The invention thus
becomes open to the use of the
purchaser without further restriction.
(Adams vs. Burke, cited in Catindig p.
226)
TESTS OF PATENT INFRINGEMENT
1. Economic interest test

When
the
process-discoverers
economic interests are compromised,
i.e., when others can import the
products that result from the process, an
act is said to be prohibited.
2. Literal infringement test
Resort, in the first instance, must be
had to the words of the claim. If the
accused matter clearly falls within the
claim, infringement is made out and that
is the end of it.
The claims of patent and the accused
product must be juxtaposed within the
overall
context
of
claims
and
specification. (Godines vs. CA, 226 SCRA
338)
3. Doctrine of equivalents test
If two devices do the same work in
substantially the same way, the same
result, and produce substantially the
same result, they are the same even
though they differ in name, form or
shape. (Godines vs. CA, 226 SCRA 338)
The doctrine of equivalents provides
that an infringement also takes place
when a device appropriates a prior
invention by incorporating its innovative
concept and, although with some
modification and change, performs
substantially the same function in
substantially the same way to achieve
substantially the same result. (Smith

Kline Beckman Corp. vs. CA, G. R. No.


126627. August 14, 2003)
The doctrine of equivalents thus
requires satisfaction of the functionmeans-and-result test, the patentee
having the burden to show that all three
components of such equivalency test are
met. (Ibid.)
Doctrine of File Wrapper Estoppel
Balances the doctrine of equivalents
Patentee is precluded from claiming as
part of patented product that which he
had to excise or modify in order to avoid
patent office rejection, and he may omit
any additions he was compelled to add
by patent office regulations.
DEFENSES
IN
ACTION
FOR
INFRINGEMENT
1. Invalidity of patent or claim
2. Existence of ground for cancellation
REMEDIES FOR INFRINGEMENT
1.Action for damages
Limitations:
a. Recoverable damages are limited
to
acts
of
infringement
committed within 4 years before
institution of action. (Sec. 79)
b. Damages cannot be recovered if
the infringer did not know, or
had no reasonable grounds to
know, of the patent. (Sec. 80)
2. Injunction (Sec. 76)
3. Disposal or destruction by courts
order of the infringing goods, materials
and implements, without compensation.
(Sec. 76)
4. Criminal action for repetition of
infringement (Sec. 84)
The institution of an Inter Partes case
for cancellation of a mark with the
Bureau of Legal Affairs, IPO does not bar
the adverse party from filing a
subsequent action for infringement with
the regular courts of justice in
connection with the same registered
mark. This is because the certificate of
registration upon which the infringement
case is based, remains valid and
subsisting for as long as it has not been
cancelled by the Bureau. (Shangi-La vs.
CA)

REMEDIES OF THE TRUE AND ACTUAL


INVENTOR
If a person, who was deprived of the
patent with out 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
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
circumstances. (Sec. 68)
ASSIGNMENT AND TRANSFER
Form:
1.In writing
2.Acknowledged before a notary public
3.Certified under hand and seal by
notary public
4.Registration with IPO (not for validity,
but in order to bind third persons)
LICENSING
1. Voluntary (Secs. 85-92) the grant by
the patent owner to a third person
of the right to exploit a patented
invention.
2. Compulsory (Secs. 93-102) the
grant by the Director of Legal Affairs
of a license to exploit a patented
invention
even
without
the
agreement of the patent owner in
favor of any person who has shown
his capability to exploit the
invention
under
certain
circumstances.
Terms and Conditions Compulsory
License:
a. The scope and duration of such license
shall be limited to the purpose for which
it was authorized
b. Non-exclusive license
c. Non-assignable license
d. Use of the subject matter of the
license shall be devoted predominantly
to the supply of the Philippine market
e.
May
be
terminated
if
the
circumstances which led to its grant
have ceased
f. The patentee shall be paid adequate
remuneration
Grounds:
a. National emergency or other
circumstances of extreme emergency
b. When public interest requires

c. Manner of exploitation of patent is


anti-competitive
d. Public non-commercial use of the
patent
e. Patented invention is not being
worked in the Philippines on a
commercial scale although capable of
being worked
VII. TRADEMARK, SERVICE MARKS
AND TRADENAMES
The IPC does not anymore provide for
prior use as a condition for ownership of
a mark. Registration is the sole basis.
However, a trade name or business name
may be acquired by prior use and need
not be registered.
PRINCIPLES
1. The right to the mark is separate and
distinct from the business using such
mark. (Sec. 149.1)
2. The right of registration belongs to
the owner of the mark.
TRADEMARK
Any visible sign which is adopted and
used to identify the source of origin of
goods, and which is capable of
distinguishing
them
from
goods
emanating from a competitor.
Functions:
1. To point out distinctly the origin
or ownership of the goods and to
which it is affixed
2. To secure him, who has been
instrumental in bringing into the
market a superior article of
merchandise, the fruit of his
industry and skill
3. To assure the public that they
are producing the genuine article
4. To prevent fraud and imposition
5. To protect the manufacturer
against substitution and sale of
an inferior and different article
as its product
How acquired: through registration
What may not be registered:
a. Immoral and deceptive matter
b. National flag or insignia
c. Name, portrait or signature of living
person or deceased President
d. Mark or trade name infringing another

e. Mark constituting reproduction of


internationally well-known mark
f. Mark identical with well-known mark,
on non-competing goods
g. Descriptive mark or trade name
h. Descriptive words as part of
composite mark or contraction of words
TRADEMARK

SERVICE
MARK

COLLECTIVE
MARK

Any visible
sign which
is adopted
and used to
identify the
source
of
origin
of
goods, and
which
is
capable of
distinguishi
ng
them
from goods
emanating
from
a
competitor.

Any visible
sign
capable of
distinguishi
ng
the
services of
an
enterprise
from
the
service of
other
enterprises
.

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
enterprises
which use the
sign under the
control of the
registered owner
of the collective
mark.

TRADEMARK

TRADE NAME

Has an existence
distinct from the
existence of the
proprietor
or
juridical
person
doing business and
producing
the
goods
or
the
services offered by
such person or
enterprise
Designates
the
goods or services
offered by person
or enterprise
Must be registered
in order to secure
protection
for
them

Attached
to
the
natural or juridical
person
who
does
business and produces
the goods or services

Identifies
distinguishes
enterprise

and
an

No need to register in
order
to
secure
protection for them

TRADEMARK
Right
which
protects
the
interests
of
producers in their
marks, and in the
goodwill earned.

TRADEMARK
Designed
to
identify the user or
origin.

GOODWILL
Reputation and public
confidence that a
business venture has
earned
through
a
period of creditable
dealings.

LABEL
Merely names what is
within the container
or package; may or
may
not
be
trademark.

In practice, a word, a name or a


phrase, coupled with indicators of
business organization, such as Inc.,
Corp. or Co. will not be registered
as trademarks or service marks.
PRIORITY RIGHT
An application for registration of mark
filed in the Philippines by a person who
qualifies under the reciprocity rule and
who previously filed an application for
registration of the same mark in one of
those countries shall be considered as
filed as of the day the application was
first filed in the foreign country. (Sec.
131)
Significance:
A
Philippine
application filed by another applicant
after the priority date but earlier than
the foreign applicants actual filing may
be refused registration if it is identical
to the mark with a priority date. (The
Law on Trademark, Infringement and
Unfair Competition, Ruben Agpalo, 2000
ed.)
CERTIFICATE OF REGISTRATION
It shall be a prima facie evidence of:
a. Validity of registration;
b. Registrants ownership of the mark;
c. The registrants exclusive right to use
the same in connection with the goods or
services and those that are related
thereto. (Sec. 138)
A certificate of registration shall
remain in force for 10 years provided
that the registrant shall file a
declaration of actual use or non-use

within 1 year from the 5 th anniversary of


the date of the registration of the mark.
(Sec. 145) Note: This declaration of
actual use is different from the
declaration of actual use which the
applicant is required to file within 3
years from the filing date of the
application. (Sec. 124.2)
RIGHTS CONFERRED BY A TRADEMARK
1. In case of registered marks, in
general:

Exclusive
right
to
restrain/prohibit/prevent third persons
from using identical or similar signs for
identical or similar goods or services.
2. In case of a registered well-known
mark:

Exclusive
right
to
restrain/prohibit/prevent third persons
from using identical or similar signs even
for dissimilar or unrelated goods or
services, provided that the use will
indicate a connection between the goods
and the owner of the mark and that the
interest of the owner would likely be
damaged.
DOCTRINE/PRINCIPLE
OF
RELATED
GOODS OR SERVICES
There is infringement when there is use
of similar marks on goods that are so
related that the public may be, or is
actually deceived, and misled that they
come from the same maker or
manufacturer. (Esso v. CA)
An exception to this doctrine is the
additional right granted to a registered
well-known mark.
Well-known Mark
A mark which a competent authority of
the Philippines has designated to be
well-known internationally and in the
Philippines
In determining whether a mark is
well-known, the knowledge of the
relevant sector of the public, rather than
the public at large, including knowledge
in the Philippines which has been
obtained as a result of the promotion of
the mark.
Rights:
1. Right to be protected whether or
not it is registered in the Philippines

2. If registered, extension of protection


to goods and services which are not
similar to those in respect of which
the mark is registered, provided
that:
a) The use of the mark in
relation
to
unrelated
or
dissimilar goods or services
would indicate a connection
between those goods or services
and the owner of the mark; and
b) The interests of the owner of
the registered mark are likely to
be damaged by such use.
(EXCEPTION TO DOCTRINE OF
RELATED GOODS)
DOCTRINE OF SECONDARY MEANING
While as a general rule, generic,
indicative or descriptive marks ([j], [k],
[l] of Sec. 123.1) are non-registrable,
when such kind of mark has become
distinctive, because of its long,
continuous and exclusive use for 5 years,
as used in connection with the
applicant's
goods
or
services
in
commerce and in the mind of the public
indicates a single source to consumers, it
may be registered. (Embodied in Sec.
123.2)
DOCTRINE OF DILUTION
Copying which, while not sufficiently
confusing to divert sales in the short run,
will tend to divert them in the long run
by
weakening
the
instantaneous
favorable associations the public makes
with highly regarded products.
CANCELLATION
Formalities: Upon petition, with due
notice and hearing
Grounds:
Within 5 years
from registration

At any time

Belief
that
the
registered mark has
damage
or
will
damage
the
petitioner

1. Becoming the
generic name for
the
goods
or
services for which it
is registered;
2. Abandonment;
3. Illegal
or
fraudulent
registration;

4. Use by, or with


the permission of
the registrant so as
to misrepresent the
source of the goods
or
services
in
connection
with
which the mark is
used;
5. Non-use for an
uninterrupted
period of 3 years
without legitimate
reason

Actual use may be done by substantial


compliance (Sec. 152.2-4)
Exempting circumstances: those
arising independently of the will of the
trademark owner (Sec. 152.1), such as
military coup, or political changes that
impede commerce.
Note: Registration is an administrative
act declaratory of a pre-existing right
that does not, of itself, perfect a
trademark, for what does is actual use.
NON-USE OF A MARK WHEN EXCUSED
a. If caused by circumstances arising
independently of the will of the owner.
Lack of funds not excused.
b. A use which does not alter its
distinctive character though the use is
different from the form in which it is
registered.
c. Use of mark in connection with one or
more of the goods/services belonging to
the class in which the mark is registered.
d. The use of a mark by a company
related to the applicant/registrant.
e. The use of a mark by a person
controlled by the registrant. (Sec. 152)
INFRINGEMENT
1. Reproduction or colorable imitation
of a registered mark or a dominant
feature thereof and application of
such reproduction or imitation to
labels, etc., intended to be used in
commerce, or use in commerce of
any reproduction or colorable
imitation of a registered mark or a
dominant
feature
thereof
in
connection with the sale or
advertising of goods or services; AND

2. Likelihood to cause confusion or


mistakes in the mind of the public or
deceive purchasers.
This is presumed in case of
the use of an identical sign for
identical goods or services.
ELEMENTS OF INFRINGEMENT
1. Registration of trademark in IPO.
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
goods, services or business or applied to
labels, signs, wrappers, etc intended to
be used in connection with such goods,
services or business.
4. There is in the use or application a
likelihood of confusion.
5. Lack of consent on the part of the
registered owner or their assignee. (The
Law on Trademark, Infringement and
Unfair Competition, Ruben Agpalo, 2000
ed.)
CONFUSION OF
GOODS/SERVICES

CONFUSION OF
BUSINESS OR
ORIGIN

A persons goods or
services
are
purchased as those
of another and the
poorer quality of
the former reflects
adversely on the
latters reputation.

Exists
when
one
partys product or
service
though
different from that
of another, is such as
might reasonably be
assumed to originate
from the latter and
the public would
then be deceived
into the belief that
there
is
some
connection between
the parties, which in
fact is absent.
Confusingly
similar
marks are employed
in different or noncompeting
goods/services.

Confusingly similar
marks are used on
the same kinds of
goods/services.

Colorable Imitation

Such similarity in form, content,


words,
sound,
meaning,
special
arrangement or general appearance of
the mark or trade name with that of the
other mark or trade name in their over
all presentation or in their essential,
substantive or distinctive parts as would
likely mislead or confuse persons in the

ordinary course
genuine article.

of

purchasing

the

NOTE:Similarity
of
sound
or
pronunciation and spelling may be
sufficient to make two marks confusingly
similar when applied to merchandise of
the
same
descriptive
properties.
Example:
Salonpas and Lionpas
both for medical plaster.
(Marvex
Commercial Co. vs. Petra Hawpia)
Likelihood of confusion or mistake is
greater when identical or closely similar
marks are used on non-competing but
related and common household items
because they are purchased by ordinary
purchasers who usually know them by
their names or trademarks.
INFRINGEMENT OF NAME AND MARK OF
OWNERSHIP STAMP ON CONTAINERS
(R.A. No. 623 as amended by R.A. No.
5700)

GENERAL RULE: It is unlawful for any


person, without written consent of the
manufacturer, bottler or seller who has
registered the mark of ownership to fill
such bottles, boxes, kegs, barrels or
other containers so marked and
stamped, for the purpose of sale,
dispose of, or wantonly destroyed the
same, whether filled or not, to use the
same for drinking vessels or drain pipes,
foundation pipes, for any other purpose
than that registered.
EXCEPTION: Use of the bottles as
containers for sisi, bagoong, patis and
similar native products
TESTS OF TRADEMARK INFRINGEMENT
DOMINANCY
HOLISTIC/
TEST
TOTALITY TEST
Focuses on the
similarity of the
main,
essential,
dominant,
or
prevalent features
of a mark.
Exact duplication
or imitation is not
necessary.

Mandates that the


entirety
of
the
marks in question
must be considered
in
determining
confusing similarity.

REMEDIES FOR INFRINGEMENT

1. Action for damages


GENERAL RULE: Only those acts of
infringement
committed
from
registration onwards may be sued
upon.
EXCEPTION:
In
case
of
infringement of a well-known mark.
2. Injunction
3. Impounding of sales invoices and
other documents
4. Double damages in case of actual
intent to defraud (Sec. 156)
5. Court order for the disposal or
destruction of the infringing goods
(Sec. 157)
6. Criminal action
7. Administrative sanctions
In any suit for infringement, the
owner of the registered mark shall not
be entitled to recover damages or profits
unless the acts have been committed
with knowledge that such imitation is
likely to cause confusion, or to cause
mistake or to deceive. (Sec. 158)
Any foreign national who qualifies
under the principle on reciprocity and
does not engage in business in the
Philippines
may
bring
civil
or
administrative action for:
a. Opposition
b. Cancellation
c. Infringement
d. Unfair competition
e. False designation of origin or false
description
Whether or not it is licensed to do
business in the Philippines
LIMITATIONS
ON
ACTION
FOR
INFRINGEMENT (Sec.159)
a. Registered mark shall be without
effect against any person who, in good
faith, before the filing or priority date,
was using the mark for purposes of his
business. (Right of Prior User)
b. Injunction against future printing
against an innocent infringer who is
engaged solely in the business of printing
the mark. (Relief against Printer)
c. Injunction against the presentation of
advertising matter in future issues of the
newspaper, magazine or in electronic
communications in case the infringement
complained of is contained in or is part

of paid advertisement in such materials.


(Relief against newspaper)
UNFAIR COMPETITION
The employment by a person of
deception or any other means contrary
to good faith by which he passes off the
goods manufactured by him or in which
he deals, or his business or services, for
those of another person who has
established goodwill in the goods such
person manufactures or deals in, or his
business or services, or who shall commit
any acts calculated to produce said
result.
Test: Whether certain goods have been
intentionally clothed with an appearance
which is likely to deceive the ordinary
purchaser exercising ordinary care, and
not whether a certain limited class of
purchasers with special knowledge not
possessed by the ordinary purchaser
could avoid mistake by the exercise of
this special knowledge. (U.S. vs. Manuel)

INFRINGEMENT
OF TRADEMARK

UNFAIR
COMPETITION

Unauthorized use of
a trademark

The passing off of


ones
goods
as
those of another
Fraudulent intent is
essential
Registration is not a
prerequisite to an
action.

Fraudulent intent is
unnecessary
Prior registration of
the trademark is a
prerequisite to the
action
Limited scope
Same class of goods
or services must be
involved

Wider scope
Different classes of
goods or services
may be involved

An action for infringement of a mark


cannot be brought at the same time with
an action for unfair competition because
the element of fraud and deceit, which
is essential to the latter, is absent in the
former. (Clarke v. Manila Candy Co.)