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TRADEMARKS, PATENTS A N D COPYRIGHT

two ways of acquiring ownership of a mark,


namely: (1) by registration thereof without alleging or claiming
use and (2) by actual use of the mark in trade or commerce with
or without registration thereof
Section 122 of RA 8293 specifically provides that "The rights
in a mark shall be acquired through registration made validly
in accordance with the provisions of this law."
Section 2-A of RA 166,
amended, on the other hand, provides that ownership of a mark can be
acquired "by actual use thereof."

The enjoyment of priority right is subject to the following


conditions:
1. The application claiming priority right must be filed
within six (6) months from the date the earlier foreign application
was filed. A certified copy of the corresponding foreign application
together with an English translation must be filed within three
(3) months from the date of filing in the Philippines.46
2. The Philippine application will not be granted until the
mark has been registered in the country of origin of the applicant.
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3. The foreign registrant shall not be entitled to sue for
acts committed prior to the date on which his mark was
registered in the Philippines.
When application may be refused.
1. Where the mark constitutes a reproduction of wellknown
mark.

For this reason,


it has been held that in a complaint for infringement involving
two similar trademarks, the trademark owner who is the prior
user thereof prevails. And as between two (2) competing marks
which are both registered, the registrant who has prior use
thereof has a better right than that of the non-user or later user.7
The registration does not confer upon the registrant an absolute
right to the registered mark. The certificate of registration
is merely a prima facie evidence that the registrant is the
owner of the registered mark or tradename.1 3 Unless the applicant
or registrant submits proof of actual use of the mark in commerce
within three (3) years from the date of the filing of the
application, the application will be refused or the mark removed from
the registry of trademarks. Evidence of prior and continuous
use of the mark or tradename by another can overcome the
presumption and entitles the latter to be declared owner in an
appropriate case.

The use
of the mark must be in the Philippines because foreign use
creates no trademark right in the country, following the
nationality principle upon which Philippine trademark law
rests.17
Since a mark or tradename or other mark of ownership is
acquired by adoption and use thereof in commerce in the
Philippines, it belongs to the person who first used and gave it
value.
Rights of foreign nationals pertaining to trademarks,
generally.
1) those provided by local laws in favor of
nationals of countries which, by their laws, grant similar rights or
privileges to citizens of the Philippines, which may be called reciprocity
rights and privileges; and (2) those provided by the Paris
Convention and by Philippine laws, as a result of the Philippines'
adherence to said Convention, which may be designated as
convention
rights and privileges.
Paris Convention,
is a covenant among member countries for the protection of industrial
property. The protection of industrial property is concerned
with patents, utility models, industrial designs, trademarks,
trade names, servicemarks, and indications of source or appellations
of origin, and the repression of unfair competition.38

Right of priority is the right accorded to an application who


has previously filed an application in any of the member countries
of considering his application filed in the Philippines as if
it were filed on the date the first application was filed in the
country of origin.

2. Where mark is an armorial bearing, flag, etc.


3. Where mark infringes rights of others, is devoid of distinctiveness,
or is contrary to public morals.
Right to assign trademark.
(1) the assignment may be with or without the
transfer of the business using the mark;
(2) the assignment shall
be in writing and require the signatures of the contracting parties.
(3) the assignment
shall be recorded at the Intellectual Property Office on
payment of the required fee, provisionally in the case of an application
and when the mark is registered, it shall be in the name
of the assignee or transferee; and
(4) the assignment shall not
mislead the public, particularly as regards the nature, source,
manufacturing process, characteristics, or suitability for their
purpose, of the goods or services which the mark is applied
, otherwise
the assignment or transfer shall be null and void.6 4
A "collective mark" means any visible sign designated as
such in the application for registration and capable of
distinguishing the origin or any other common characteristics,
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.
A servicemark is any visible sign capable of distinguishing
the services of an enterprise.
Leviton Industries v. Salvador,
foreign corporation, not doing nor licensed to do business in the
country, may bring an action for infringement by alleging
and showing that:
(1) its mark is registered in the Philippines
or it is the assignee of such mark, or it has been in use in commerce
therein, and
(2) the country, of which it is a citizen or is
domiciled, grants Filipino corporations the same reciprocal treatment,
either by law, convention or treaty;
The legal remedies available to foreign nationals against
invasion of their trademark or trade name rights are the
following:
1. Action for damages and injunction based on infringement.
2. Action for damages and injunction based on unfair
competition
3. Actions for damages and injunction based on false
designation and false description
4. Petition to oppose registration.

5. Petition to cancel registration.


6. Petition for seizure of prohibited goods
Section 155 of R.A. 8293 defines infringement as follows:
"Any person who shall, without the consent of the
owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or
the same container or a dominant feature thereof in
connection with the sale, offering for sale, distribution,
advertising of any goods or services including other preparatory
steps 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 mistake, or to
deceive; or
"155.2. Reproduce, counterfeit, copy or colorably imitate
a registered mark or a dominant feature thereof and
apply such reproduction, counterfeit, copy or colorable
imitation to labels, signs prints, packages, wrappers,
receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering
for sale, distribution, or advertising of goods or services
on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive,
Provided, That
infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are
committed regardless of whether there is actual sale of
goods or services using the infringing material."
Infringement of trademark or trade name results from the fraudulent
use, either as a trademark, or trade name or as part of a
corporate name, of another's trademark or trade name, or a
colorable imitation thereof.
Infringement and unfair competition distinguished.
"infringement" of trademark or trade name is
the violation of trademark or trade name right established by the
registration
of the mark or the use of the trade name.
"unfair competition" includes wrongful acts of competition not
involving
any violation of trademark right
*Thus, an owner of a trademark
may bring an action for unfair competition even though he has
not registered such trademark, but he cannot institute an action
for infringement of trademark, registration being a condition
precedent for its maintenance,1 0 2 except infringement of trade
name, which requires no registration thereof to maintain i t . 1
1. The infringement of trademark presupposes that the
injured party has a valid trademark as understood and provided
for in law, which he has registered in the principal register in
the Intellectual Property Office.
In unfair competition, no proprietary interest in the words, names, or
labels by which fraud is perpetrated is a pre-requisite to its
maintenance, and the aggrieved party need not have registered
it as a trademark. To be able to maintain an action for unfair
competition, it is sufficient that the complainant is entitled to
the goodwill of a business, and that his business is injured
2. In infringement of trademark, the offending party
should have used such trademark in selling goods of a similar
kind to those sold by the owner of the trademark.
3. The mere fact that a merchant owns a trademark,
which he uses in selling goods of a certain kind, does not in any
wise discapacitate him from maintaining an action for unfair
competition in respect to the sale of similar goods by a
competitor; and one who fails to establish the exclusive property
right which is necessary to the validity of a trademark may in
an appropriate case obtain relief on the ground of unfair
competition.
4. In infringement, the cause generally takes no account
of the actual intent on the part of the infringer to mislead the
public and defraud the owner of the trademark; nevertheless this
factor, if present, may be taken in the discretion of the court as
ground for assessment of double damages. On the other hand,

in unfair competition, actual intent to deceive the public and


defraud the person injured is essential to the maintenance of the
action; however, such intent may be inferred from similarity of
the appearance of the goods as packed or offered for sale to those
of the complaining party.
5. The essential elements of unfair competition are,
first,
that the person complained of shall have given his goods the
general appearance of the goods of the complaining party, either
in the wrapper of the packages in which they are obtained, or
the devices or words thereon or in any other features of their
appearance which would be likely to influence the purchasers to
believe that the goods offered are those of the complaining party;
and second,
that the party complained of should have clothed the
goods with such appearance for the purpose of deceiving and
defrauding the complaining party of his legitimate trade
Del Monte Corp. v. Court of Appeals,110 summarized
the differences between infringement and unfair competition,
thus:
"(1) Infringement of trademark is the unauthorized
use of a trademark, whereas unfair competition is
the passing off of one's goods as those of another.
"(2) In infringement of trademark fraudulent intent
is unnecessary, whereas in unfair competition fraudulent
intent is essential.
"(3) In infringement of trademark the prior registration
of the trademark is a prerequisite to the action,
whereas in unfair competition registration is not necessary."
111
Philip Morris, Inc. v. Court of Appeals
The registration does not confer upon the registrant an absolute
right to the registered mark. The certificate of registration
is merely a prima facie evidence that the registrant is the
owner of the registered mark or tradename.1 2 1 Evidence of prior
and continuous use of the mark or tradename by another can
overcome the presumption and entitles the latter to be declared
owner in an appropriate case
Trademark is to goods, while trade name is to business
Infringement of trademark requires that the mark be registered. While
registration of a trade name is important to accord it the presumption
of validity of the registration, the registrant's ownership
thereof and its exclusive right to use the trade name in connection
with its business, registration is not a pre-requisite to
maintain an action for infringement of trade name.
Article 28 of the Civil Code of the Philippines
Unfair competition in agricultural,
commercial or industrial enterprises or in labor through the use
of force, intimidation, deceit, machination or any other unjust,
oppressive or highhanded method shall give rise to a right of
action by the person who thereby suffers damage."
In determining whether a mark is well-known, the following
criteria or any combination thereof may be taken into account
by competent authority of the Philippines:
1. The duration, extent and geographical area of any use
of the mark, in particular, the duration, extent and geographical
area of any promotion of the mark, including advertising or
publicity and the presentation, at fairs or exhibitions, of the
goods and/or services to which the mark applies;
2. The market share in the Philippines and in other
countries, of the goods and/services to which the mark applies;
3. The degree of the inherent or acquired distinction of
the mark;
4. The quality-image or reputation acquired by the mark;
5. The extent to which the mark has been registered in
the world;
6. The exclusivity of registration attained by the mark in
the world;
7. The extent to which the mark has been used in the
world;
8. The exclusivity of use attained by the mark in the
world;
9. The commercial value attributed to the mark in the

world;
10. The record of successful protection of the rights in the
mark;
11. The outcome of litigations dealing with the issue of
whether the mark is well-known mark; and
12. The presence or absence of identical or similar marks
validly registered for or used on identical or similar goods or
services and owned by persons other than the person claiming
that his mark is a well-known mark.
Copyright is a right granted by statute to the author or
originator of literary, scholarly, scientific, or artistic productions,
including computer programs.
Berne Convention is a union of countries,
which adhered thereto, for the protection of the rights of authors
in their literary and artistic works.
Article 5 of the Convention provides for the rights guaranteed
by the union members, namely:
(1) Authors shall enjoy, in respect of works for which they
are protected under this Convention, in countries of the Union
other than the country of origin, the rights which their respective
laws do now or may hereafter grant to their nationals, as
well as the rights specially granted by this Convention.
(2) The enjoyment and exercise of these rights shall not
be subject in any formality; such enjoyment and such exercise
shall be independent of the existence of protection in the country
of origin of the work. Consequently, apart from the provisions
of this Convention, the extent of protection, as well as the means
of redress afforded to the author to protect his rights, shall be
governed exclusively by the laws of the country where protection
is claimed.
(3) Protection in the country of origin is governed by domestic
law. However, when the author is not a national of the
country of origin of the work for which he is protected under the
Convention, he shall enjoy in that country the same rights as
national authors."
FOREIGN CORPORATIONS
A foreign corporation is one formed, organized or existing
under any laws other than those of the Philippines and whose
laws allow Filipino citizens and corporations to do business in
its own country or state.
(1) The law of the
country of its incorporation allows Filipino citizens and
corporations to do business in said country; and
(2) It must secure
a license to transact business in this country in accordance with
this Code and a certificate of authority from the appropriate
government agency.1
Application for a license.
1. The date and term of incorporation;
2. The address, including the street number, of the principal
office of the corporation in the country or state of incorporation;
3. The name and address of its resident agent authorized
to accept summons and process in all legal proceedings and,
pending the establishment of a local office, all notices affecting
the corporation;
4. The place in the Philippines where the corporation
intends to operate;
5. The specific purpose or purposes of the corporation
which it intends to pursue in the transaction of its business in
the Philippines: Provided, That said purpose or purposes are
those specifically stated in the certificate of authority issued by
the appropriate government agency;
6. The names and addresses of the present directors and
officers of the corporation;
7. A statement of its authorized capital stock and the
aggregate number of shares which the corporation has authority
to issue, itemized by classes, par value of shares, shares without
par value, and series, if any;
8. A statement of its outstanding capital stock and the
aggregate number of shares which the corporation has issued,
itemized by classes, par value of shares, shares without par
value, and series, if any;
9. A statement of the amount actually paid in; and
10. Such additional information as may be necessary or
appropriate in order to enable the Securities and Exchange

Commission to determine whether such corporation is entitled


to a license to transact business in the Philippines, and to
determine and assess the fees payable.
Any foreign corporation lawfully doing business in the
Philippines shall be bound by all laws, rules and regulations
applicable to domestic corporations of the same class, save and
except such only as provide for the creation, formation,
organization or dissolution of corporations or those which fix the
relations, liabilities, responsibilities, or duties of stockholders
members or officers of corporations to each other or to the corporation.
9
internal matters, which are governed by the law of the country
where the foreign corporation is incorporated and organized:
(1) The creation, formation, organization or dissolution of
the foreign corporation; and
(2) Those which fix the relations, liabilities, responsibilities,
or duties of stockholders, members, or officers of foreign
corporations to each other or to the corporation.
Jurisdiction over internal matters
Regional Trial Court, and
proceedings therein are governed by the Interim Rules of Procedure
for Intra-corporate controversies.1
The merger or consolidation of one or more foreign corporations
with a domestic corporation or corporations may be allowed,
subject to the following requirements:
1. The law of the country where such foreign corporation
is established permits such merger or consolidation;
2. The purpose or purposes for which the foreign corporation
and the domestic corporation were created may legitimately
be undertaken by the surviving or consolidated corporation
under Philippine laws; and
3. The merger or consolidation is done in accordance with
the provisions of Sees. 76 to 80 and 132 of the Corporation Code.
one single or isolated
business transaction does not constitute "doing business" within
the contemplation of the law, and that transactions which are
occasional, incidental, and casual, not a character to indicate a
purpose to engage in business does not constitute the doing or
engaging in business contemplated by law.4 4
It has been held that where a single act or transaction of a
foreign corporation is not merely incidental or casual but is of
such a character as distinctly to indicate a purpose to do business,
such act constitutes doing business within the meaning of
the statute prescribing the conditions under which a foreign corporation
may be served with summons
Pleading and practice, requirements for suing.
1. Duly licensed foreign corporation.
2. Not licensed and not doing business foreign corporation
A foreign corporation not doing business and having no license
to do business in the country has the right to sue in connection
with an isolated order or transaction for business from the
Philippines
to seek redress in Philippine courts.
To be able to sue under the "isolated transaction rule," the complaint
must allege:
(a) that it is a foreign corporation not licensed and not doing
business in the country, that it is suing upon a singular and isolated
transaction, and that it has a right and interest in the
subject matter of the suit;
(b) it must allege sufficient facts from
which these requisites can be deduced to be present; and
(c) it must allege who its authorized representative or resident agent
in the Philippines for the purpose of said suit.
Jurisdiction means the power or capacity conferred by the
Constitution or by
law to a court or tribunal to entertain, hear and determine certain
controversies, and render judgment thereon.
Article 28(1) of the Warsaw Convention provides:, the complaint for
damages
may be filed, at the option of the plaintiff, only in the territory
of one of the contracting parties, before any of the following:

1. The court of the domicile of the carrier;


2. The court of its principal place of business;
3. The court where it has a place of business
through which the contract (i.e., ticket) had been made;
or
4. The court of the place of destination.
(1) A state has power to exercise judicial jurisdiction
over an individual on one or more of the following
basis:
(a) presence
(b) domicile
(c) residence
(d) nationality or citizenship
(e) consent
(f) appearance in an action
(g) doing business in the state
(h) an act done in the state
(i) causing an effect in the state by an act
done elsewhere
(j) ownership, use or possession of a thing in
the state
(k) other relationships to the state which
make the exercise of judicial jurisdiction reasonable."
The general rule is that unless a defendant can be properly
served with summons, or he voluntarily submits himself to the
jurisdiction of the court, no judgment may be validly rendered
against him, as the court may acquire jurisdiction over the
subject matter and the person of the defendant. There are
exceptions to the rule. These exceptions refer to the following:
1. when the action affects the personal status of
the plaintiff;
2. when the action relates to, or the subject of
which is property within the Philippines, in which the
defendant has or claims a lien or interest, actual or
contingent;
3. when the relief demanded in such action consists,
wholly or in part, in excluding the defendant from
any interest in the property located in the Philippines;
and
4. when defendant non-resident's property has
been attached within the Philippines.
forum non conveniens
refers to discretionary power of court to decline
jurisdiction when convenience of parties and ends of
justice would be better served if action were brought and
tried in another forum
After finding that the respondents in Manila Hotel Corp. v.
NLRC, had no employer-employee relationship with the claimant
and that the court did not acquire jurisdiction over the other
respondents who were foreign nationals, the Court had no choice
but to dismiss the case, even when the claimant was a Filipino
citizen. The case did not actually involve the doctrine of forum
non conveniens because this doctrine assumes that the court has
jurisdiction over the case, but has to dismiss it as it would be
more convenient to file the case in another court, which can have
jurisdiction over the case. These requisites are absent.
ARBITRATION
a substitution, by consent of the parties, of another tribunal for the
tribunal provided by
the ordinary processes of law, its object being the final
disposition, in a speedy and inexpensive way, of the matters
involved, so that they may not become the subject of future
litigation between the parties.1
Arbitration is the reference of a dispute to an impartial third person,
chosen by the parties or
appointed by statutory authority to hear and decide the case in
controversy.2
The country has at least four (4) laws on arbitration procedures
for settling disputes:

1.the Arbitration Law,


2.Construction Industry Arbitration Commission and
vesting it with original and exclusive jurisdiction to settle disputes
arising from construction contracts in the country
3.Philippine Clearing House Corporation, whose articles of
incorporation provide
for an arbitration of disputes arising from its functions in
clearing of checks and other clearing items.
4.Labor Code provides for arbitration of labor disputes
Grounds for vacating award:
(a) The award was procured by corruption, fraud,
or other undue means; or
(b) That there was evident partiality or corruption
in the arbitrators or any of them; or
(c) That the arbitrators were guilty of misconduct
in refusing to postpone the hearing upon sufficient cause
shown, or in refusing to hear evidence pertinent and
material to the controversy; that one or more of the arbitrators
was disqualified to act as such under section nine
hereof, and willfully refrained from disclosing such disqualifications or
of any other misbehavior by which the
rights of any party have been materially prejudiced;
(d) That the arbitrator exceeded their powers, or
so imperfectly executed them, that a mutual, final and
definite ward upon the subject matter submitted to them
was not made.
Grounds for modifying or correct award:
(a) Where there was an evident miscalculation of
figures, or an evident mistake in the description of any
person, thing or property referred to in the ward; or
(b) Where the arbitrators have awarded upon a
matter not submitted to them, not affecting the merits of
the decision upon the matter submitted; or
(c) Where the award is imperfect in a matter of
form not affecting the merits of the controversy, and if it
had been a commissioner's report, the defect could have
been amended or disregarded by the court.
Foreign arbitration as a system of setting commercial disputes
of an international character
Philippines adhered to the United Nations Convention on the
Recognition and the Enforcement of Foreign Arbitral Awards on
May 10, 1965 by adopting a Resolution of the Senate, giving
reciprocal recognition and allowing enforcement of international
arbitration agreements between parties of different nationalities
within a contracting state.11
The formal requirements of an agreement to arbitrate
are therefore the following:
(a) it must be in writing and
(b) it must be subscribed by the parties or their
representatives.
Challenge to submission to arbitrate or to award
First. The arbitration agreement and its submission may be
questioned on any of the grounds as provided in the Convention
on the Recognition and Enforcement of Foreign Awards
Second. The arbitration award is not self-executing, except
where the parties voluntarily execute the same. Where the
parties do not voluntarily implement the arbitration award, the
award is required to be confirmed by the court of the country
where the arbitration has taken place in accordance with the
arbitration law of said country, as agreed by the parties in the
arbitration clause because the award, by itself, is not subject to
execution.
Third. If the law of the foreign country where arbitration
takes place in accordance with the agreement of the parties is
not confirmed by the court in said foreign country, the award may
be pleaded in an action filed with the appropriate court in our
country, for its enforcement. The defendant may then question
the validity of the award.