I.

Review of Philippine Intellectual Property Law

a. Trademarks
i. Definition

ii. How ownership acquired (two modes – Emerald Garments vs CA; Sterling
Products Inc vs Farbenfabriken Bayer)
1. Registration – Sec 122 of RA 8293
a. Registration does not confer upon the registrant an absolute
right to the registered mark. The certificate of registration is
merely prima facie evidence that the registrant is the owner of
the registered mark or trade name.
b. Proof of actual use must be submitted within 3 years from the
filing of application.
2. Actual use in commerce – Sec 2-A of RA 166, as amended
a. Actual use where? Actual use must be in commerce within the
PH and not abroad. Foreign used creates no trademark right in
PH.
b. Actual use how? Not by mere adoption of the name and making
of advertisements but by the actual sale of goods and services
in the market.
iii. Importance of registration
1. Certificate of registration is prima facie evidence of validity of the
registration, registrant’s ownership of the mark, and the registrant’s
exclusive tight to use the same.
2. Pre-requisite to maintain an action for infringement
iv. Legal basis of rights of foreign nationals
1. Reciprocity Rights
Those provided by Philippine laws in favor of nationals of countries
which, by their laws, grant similar rights or privileges to citizens of PH.

Ex: RA 8293, Sec 3

“Section 3. International Conventions and Reciprocity. - Any person who is a

national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of unfair
competition, to which the Philippines is also a party, or extends reciprocal
rights to nationals of the Philippines by law, shall be entitled to benefits to
the extent necessary to give effect to any provision of such convention,
treaty or reciprocal law, in addition to the rights to which any owner of an
intellectual property right is otherwise entitled by this Act.”
 2. Convention Rights
Convention, treaty or agreement relating to IP rights to which PH is also
a party. (pacta sunt servanda)
Ex: Paris Convention (Expound. P388 Agpalo)
v. Legal requirements before a foreign national may maintain a suit (p400)
1. Foreign national not doing nor licensed to do business
a. Must show that
i. Mark is registered in PH or used in commerce herein,
AND
ii. The country of which he is a citizen or is domiciled
grants reciprocal treatment to PH citizens/corporations
either by law, convention or treaty
2. Foreign national doing business in PH
a. In addition to the abovementioned requirements, it must have a
license to do business in PH (
vi. Legal remedies of foreign nationals
1. Damages and Injuction
a. Based on Infringement
b. Based on Unfair Competition
c. Based on False designation and False description
2. Petition to oppose registration
3. Petition to cancel registration
4. Petition for seizure of prohibited goods
vii. Infringement vs Unfair Competition
1. Infringement of trademark vs Infringement of trade name
viii. Protection of well-known trademarks (p 431)
1. Cases
b. Patents
i. Definition
ii. Rights of foreigners under RA 8293 (idinagdag ko lang to. Diko alam kung meron
bah aha)
iii. Rights of foreigners under Paris convention(p 444)
1. Right to enjoy same rights, protection and legal remedy
2. Right of the inventor to be mentioned as such in the patent
3. Right not to be denied of patent on the ground that the sale of the
patented product is subject to restrictions of domestic law
4. Right against forfeiture in case the patentee imports manufactured
articles into the country where the patent has been granted
5. Right to protection of industrial designs
6. Right to file an action for infringement
c. Copyright
i. Definition
ii. Remedy or infringement