Final Exam in IPL

Atty. John Paul Gaba

Jan Uriel David

10/26/2015

JD 2 AUF School of Law

Part I. Choose from the following list the statements that are true (there are 10). Just write/list
down the numbers corresponding to the statements which you believe are true. (20 points)
2. Registration of a copyrightable work is not mandatory in order to secure copyright protection
4. After the end of the term of copyright protection, the work becomes part of the public domain.
8. It is a declared State policy that use of intellectual property bears a social function.
10. Generic marks can never acquire secondary meaning.
11. Protection from a trademark registration is generally territorial in nature.
6. Any agreement that contains provisions on the use of any intellectual property right is a technology
transfer arrangement.
12. A regular court (e.g., Regional Trial Court) is a competent authority under the law to declare the
well-known status of a trademark.
14. Non-use of a mark shall result in the automatic cancellation of a trademark registration.

19. Trademark registration secured from the IPO is different from a business name registration issued
by the DTI and corporate name registration issued by the SEC.
20. Civil, criminal, and administrative sanctions are imposed on those found guilty of trademark
infringement and unfair competition.

PART II.
1.
2.
3.
4.
5.
6.
7.

Valid
Valid
Valid
Valid
Valid
Valid
Not valid- the first phrase in the provision states that
Licensee shall not modify, develop or otherwise make improvements to Technology,
Patents or Copyrights without prior written consent of Licensor however under par. 2,
Sec. 88 of the IPC, it is mandated that Continued access to improvements in
techniques and processes related to the technology shall be made available during the
period of the technology transfer arrangement; the provision in the arrangement
contravenes the stated provision of the law
8. Valid
9. Valid
10. Valid

Part III. Classify each type of mark whether it is Generic, Descriptive, Suggestive,
Arbitrary, or Fanciful, and your reason for your answer. (20 points)
1. BEAUTIFUL (for perfume) Arbitrary- although beautiful has a common or ordinary meaning, the
meaning is unrelated to a perfume; beautiful is normally used to describe something which is seen, on
the other hand, what is enhanced by a perfume is scent.
2. AGUA (for water-refilling stations) Generic- Agua means water in Spanish, although not the name
of service itself, the mark is the actual name of the product provided by the service
3. STRONG (for coffee) Descriptive because the term strong describes coffee and may be
considered one its characteristics.
4. CODAC (for cameras) Fanciful- the mark is coined or made up that has no meaning except as a
brand
5. DELISHOES (for shoes and sandals) Fanciful- the mark is coined or made up that has no
meaning except as a brand
6. MILKTI (for milk tea) Fanciful- the mark is coined or made up that has no meaning except as a
brand
7. KAPITAN (for gin) Arbitrary- although Kapitan has a common or ordinary meaning, the meaning
is unrelated to a gin. Kapitan is a title used for a person.
8. EL PRESIDENTE (for rubber shoes) Arbitrary- although El presidente has a common or ordinary
meaning, that is, the president in Spanish, the meaning is unrelated to a gin. El presidente is a title
for persons and not for shoes.
9. TOYOMANSI (for flavored soy sauce) Fanciful- the mark is coined or made up that has no
meaning except as a brand
10. DAILY BREAD (for bread and pastries) Descriptive- although daily and bread have ordinary
meanings when separately used, if combined or used together, it acquires a meaning that describes the
product but does not denote the actual name of the product, which is bread. A disclaimer for the term
bread, it being generic, may be used to allow the registration of the entire mark daily bread.

PART IV
1. If I will be assigned to hear the case, I will decide in favor of Showtime! There is no
trademark infringement, copy right infringement, and unfair competition in this case.
The requisites for trademark infringement are: 1. The trademark being infringed is
registered with the IPO;The trademark is copied by the infringer; 2. The infringing mark
is used in the sale or offering for sale of any goods; 3. The use is likely to cause
confusion as to the origin of such goods; and 4. The use of the infringing mark is without
the consent of the trademark owner. In this case, the third requisite is lacking- likely to
cause confusion
What thats my tomboy is a talent search for lesbians which is completely different from
thats my boy a talent search for young boys. The two are very different from each
other which would not cause any confusion to the viewers. A viewer would know how to
differentiate the two shows easily.
The essential elements of an action for unfair competition are 1. The offender gives his
goods the general appearance of the goods of another manufacturer; 2. There is
confusing similarity in the appearance of the goods; and 3. There is intent to deceive the
public and defraud a competitor. In this case, it must be proven by substantial evidence
that there is intent to deceive the public and defraud the competitor.
In the case of copyright infringement, the case shall be dismissed. Copyright protects
the finished works. It does not protect ideas and concept. Generally, talent shows and
segments are done by introducing contestants, these contestants will compete through
talent portion and question and answer. This type of show has been the concept of
many shows both local and international. Eat Bulaga cannot claim ownership over the
concept of a talent show.
2. Plain block letters
By filing a trademark application covering a mark represented in plain block letters, it
gives the broadest scope of protection to the applicant over those letters or words in
whatever font color they may use.

Logo or composite mark represented in black and white

A registration for a mark in black and white will give the owner maximum rights and
wide-ranging protection against all identical or confusingly similar marks of any color. He
may use any color which is sufficient to maintain the registration of the mark.
Logo or composite mark in color
Registration of a mark with claim of colors limits the scope of protection to the specific
colors claimed. This is a disadvantage, it is suggested that marks be registered in
grayscale or black and white.
3. As mentioned in Asia Brewery, Inc. v Court of Appeals, the test of dominancy focuses
on the similarity of the prevalent features of the competing trademarks which might
cause confusion or deception and thus constitutes infringement While holistic test as
mentioned in Del Monte v Court of Appeals mandates that the entirety of the marks in
question must be considered in determining confusing similarity

In my opinion the test which is more appropriate to use in a trademark case is the
holistic test because this prevents other businesses or persons from causing confusion.
This test is stricter which would require others to think deeper and be more creative.
4. No. The action cannot prosper because the CD compilation is not copyrightable. Listed
under sec. 172, IPC are works that are protected by copyright. These includes different
kinds of literary and artistic works. CD compilation of contacts among people cannot be
categorized among the listed in the Code. As decided in Feist Publications, Inc., v. Rural
Telephone Service Co., the facts under the compilation are not copyrightable and the
compilation that used the ordinary way to present the facts are not also copyrightable.
The US Supreme Court went further and said that The only conceivable expression is
the manner in which the compiler has selected and arranged the facts. Thus, if the
selection and arrangement are original, these elements of the work are eligible for
copyright protection. In the case at hand, the CD is a collection of facts are presented
and arranged in an ordinary manner without any uniqueness and creativity in its
presentation. Although it contained a search engine and other user-friendly features
which made it easier for users thereof to search a particular name or detail, such search
engine and easy search are not unique in a database.
However, despite not being copyrightable, Atty. X may file a criminal case against Atty.
Y under the Optical Media Board Act.
5. (a) Purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit education purposes;
The purpose of the use is to move public opinion sufficiently to achieve the legalization
of non-medical marijuana in the United States so that the responsible use of cannabis
by adults is no longer subject to penalty. This is for a non-profit organization.
(b) Nature of the copyrighted work
The use is a creative expression. The case for fair use becomes even stronger when
there are only a few ways to express the ideas or facts contained in a factual work.
(c) Amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
The portion taken from the photo to the reproduced copy has a high quantity. The
substantial elements of the original photo- the face, the marijuana, and the hand are
reproduced in the duplicated photo.
(d) Effect of the use upon the potential market for or value of the copyrighted work
This factor scrutinizes the expected effect of the use on the market for the copyrighted
work. If the proposed use would negatively affect the market for or value of the
copyrighted work, this factor would weigh against fair use. In this case, based on the
data produced by NORML, Fifty-eight percent of Americans believe that "the use of
marijuana should be made legal," therefore the effect of the use would positively affect
the photo because of the good percentage approving cannabis.
Based on the foregoing, it can be said that there is no copyright infringement based on
the four test weighing in favor of fair use.