San Beda College of Law
Laws on Intellectual Property
the three-dimensional disposition prepared for
an integrated circuit intended for manufacture
(Sec. 112 [3], R.A. No. 8293, as amended).
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. 4.2, IPC).
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).
INTERNATIONAL LAW RELATED
PROVISIONS
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
2
property right is otherwise entitled by the
IPC (Sec. 3).
Note: If the foreign corporation not doing
business in the Philippines is suing as a party
of a treaty to which the Philippines is a
signatory, the fact that it is suing under Sec 3,
RA 8293 need not be alleged anymore and the
court may take judicial notice of such fact as it
is embodied in and supplied by the Paris
Convention which forms part of the law of the
land, provided that the party suing
substantially complied with the requirements
of the law (Puma Sportschufabriken Rudolf
Dassler,K.G. vs. IAC, GR 75067, Feb. 26,
1988).
 In another case, Leviton Industries, Inc.
vs. Salvador, (GR No. 40163, June 19,
1982), the Court held that failure to allege
reciprocity is fatal to foreign corporation’s
cause it being shown that it failed to
comply with the requirements of the law.
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, IPC).
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 member-state (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 is
“immediately and unconditionally” accorded to
the nationals of other member-states (Art. 4,
TRIPS).
JURISDICTION OVER DISPUTES
A. Original Jurisdiction
1. Director General
Over disputes relating to the terms of
a license involving the author’s right to
public performance or other
communication of his work (Sec.
7.1[c], IPC).
 San Beda College of Law
Laws on Intellectual Property

2. Bureau of Legal Affairs communication of his work (Sec.

a. Opposition to 7.1[c]).
applications for registration of
marks; Inter Parties
Civil Proceedings
b. Cancellation of Proceedings
trademarks; Kinds
c. Cancellation of 1. Patent 1. Copyright, Patent,
patent, utility models, and a. Petition to Trademark
cancel an invention, Action for
industrial designs;
patent, utility model infringement
d. Petitions for registration,
compulsory licensing; industrial design
e. Administrative registration, or any
complaints for violation of laws claim or parts of a
involving intellectual property claim.
rights where the total damages b. Petition for
claimed are not less than compulsory
P200,000. The Director of Legal licensing or a
license to exploit a
Affairs has the power to punish
patented invention.
contempt (Sec. 10, Ibid.) 2. Trademark 2. Trademark
3. Documentation, Information a. Opposition Action for unfair
and Technology Transfer Bureau against the competition
Over disputes involving technology registration of a
transfer payments (Sec. 11.8). mark published for
4. Regular Courts (Sec. 225) opposition.
b. Petition to
B. Appellate Jurisdiction cancel the
registration of a
1. Director General
mark.
Over all decision rendered by the: Nature of Proceedings
a. Director of Legal Administrative Judicial
Affairs; Jurisdiction
b. Director of Patents; IPO (Bureau of Legal Regular courts
c. Director of Affairs)
Trademarks; and Quantum of Evidence
d. Director of the Substantial evidence Preponderance of
Documentation, Information and evidence
Technology Transfer (Sec. 7.1[b]).
2. Court of Appeals COPYRIGHT
Over decisions of the Director General
in the exercise of his appellate Principles
jurisdiction over the decisions of the: 1. Copyright is that system of legal
a. Director of Legal protection an author enjoys of the form of
Affairs, expression of ideas (Intellectual Property
b. Director of Patents, Law, Comments and Annotations, Aquino,
c. Director of 2003).
Trademarks (Sec. 7.1[b]). 2. Relates to artistic creations, such as
3. Secretary of Trade and books, music, paintings, and sculptures,
Industry films and technology-based works as well
a. Over decisions of as to the main act which, in respect of
the Director General in the literary and artistic creations, may be
exercise of his appellate made only by the author or his
jurisdiction over the decisions of authorization (Understanding Copyright
the Director of the Documentation, and Related Rights, World Intellectual
Information and Technology Property Organization).
Transfer (Sec. 7.1[b]). 3. Works are protected by the sole fact of
b. Over decisions of their creation, irrespective of their mode or
the Director General in the form of expression, as well as their
exercise of his original jurisdiction content, quality or purpose (Sec. 172.2).
relating to terms of license 4. Copyright is not a right to do anything
involving the author’s right to but to stop others from doing something; it
public performance or other is therefore a negative right (Copyright

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 San Beda College of Law
2010 Centralized Bar Operations

Under the Intellectual Property Code, heirs or assigns.

Amador, V., 1998ed). If work consists of
5. Protection extends only to the UNIDENTIFIABLE
expression of the idea, not to the idea parts: co-authors jointly
as co-owners, unless
itself or to any procedure, system, method
there is agreement to
or operation, concept or principle, Joint Creator the contrary.
discovery, or mere data (Sec. 175). If work consists of
6. The copyright is distinct from the IDENTIFIABLE parts:
property in the material object subject to it author of each part
(Sec. 181). owns the part that he
7. Copyright, in the strict sense of the term, has created.
is purely a statutory right. Being a mere If the creation is PART
statutory grant, the rights are limited to of his regular duties:
what the statute confers. It may be employer, unless there
Employee’s Creation
is agreement to the
obtained and enjoyed only with respect to
contrary
the subjects and by the persons, and on If it is NOT: employee
terms and conditions specified in the Work itself: person
statute. Accordingly, it can cover only the commissioning
works falling within the statutory Copyright: creator,
enumeration or description (Pearl & Dean Commissioned Work
unless there is a written
(Phil.) vs. Shoemart, GR No. 148222, stipulation to the
August 15, 2003). contrary.
For exhibition purposes:
Primary Purpose of Copyright producer
Not to reward the labor of authors, but to For all other purposes:
Cinematographic
producer, author of the
promote the progress of science and useful Works
scenario, composer, film
arts (Copyright Under the Intellectual Property director, author of the
Code, Ibid). work
Publishers are deemed
Requisites for the Creation of a representative of the
Copyrightable Work author, unless:
1. Originality i. the contrary appears;
 It does not mean novelty or ingenuity; Anonymous and ii. pseudonyms or
neither uniqueness nor creativity. It pseudonymous works adopted name
leaves no doubt as to
simply means that the work "owes its
the author’s identity;
origin to the author.” or author discloses
 Constituents of originality: his identity.
 The work is an independent Contributor is deemed to
creation of the author; have waived his right,
Collective Works
 It must NOT be copied; and unless he expressly
 It must involve some intellectual reserves it (Sec. 196).
effort. Writer.
2. Expression However, the court may
authorize their
(i) There must be "fixation". To be
publication or
"fixed", a work must be embodied in a Letters dissemination if the
medium sufficiently permanent or public good or the
stable to permit it to be perceived, interest of justice so
reproduced, or otherwise requires (Art.723, New
communicated for a period of more Civil Code).
than transitory duration.
(ii) Strictly speaking, there is no work for Duration of Copyright (Sec. 213)
copyright purpose, unless there is
Type of Work Duration
something tangible.
Lifetime of the creator
(iii) It is fixation that defines the time Single Creation and for 50 years after
from when copyright subsists. Before his death
the time of fixation there can be no Lifetime of the last
infringement. surviving co-creator and
Joint Creation
for 50 years after his
Creator To Whom it Belongs death
Single Creator Author of the work, his Anonymous or a 50 years after the date

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 San Beda College of Law
Laws on Intellectual Property

of their first publication; BUT a column or published comment

except where, before will. When newspapers and
the expiration of said periodicals include works enjoying
period, the author’s independent copyrights, the works so
identity is revealed or is
pseudonymous work included continue enjoying the rights
no longer in doubt, the
1st two mentioned rules for duration proper to them.
shall apply; or if 3. Lectu
unpublished, 50 years res, sermons, addresses, dissertations
from their making prepared for oral delivery, whether or
Work of applied art, an not reduced in writing or other material
artistic creation with form
utilitarian functions or 4. Letter
incorporated in a s
25 years from the date
useful article, whether
of making 5. Dram
made by hand or
produced on an
atic or dramatico-musical
industrial scale (Sec. compositions, choreographic works or
171.10). entertainment in dumb shows
Photographic work, 6. Music
50 years from the
audiovisual work al compositions, with or without words;
publication of the work,
produced by
or if unpublished, from
7. Work
photography or s of drawing, painting, architecture,
making the same
analogous processes sculpture, engraving, lithography or
Lifetime of the author other works of art; models or designs
Newspaper article
and 50 years thereafter
for works of art;
8. Origin
Note: The term of protection shall be counted al ornamental designs or models for
from the 1st day of January of the year articles of manufacture, whether or not
following the death or of last publication (Sec. registrable as an industrial design, and
214). other works of applied art;
9. Illustr
Collective Work Joint Work
ations, maps, plans, sketches, charts
Elements remain Separate elements
unintegrated and merge into a unified
and three dimensional works relative
disparate whole to geography, topography, architecture
Work created by 2 or or science;
more persons at the 10. Drawi
initiative and under Work prepared by 2 or ngs or plastic works of a scientific or
direction of another with more authors with the technical character;
the understanding that it intention that their 11. Photo
will be disclosed by the contributions be merged graphic works including works
latter under his own into inseparable or produced by a process analogous to
name and that interdependent parts of
photography; lantern slides;
contributions of natural the unitary whole.
persons will NOT be 12. Audio
identified visual works and cinematographic
Each author shall enjoy Joint authors shall be works and works produced by a
copyright to his own co-owners. Co- process analogous to cinematography
contribution ownership shall apply or any process for making audiovisual
Unless the contributor
Joint authors shall be
recordings;
expressly reserves his 13. Pictor
entitled both to be
right, it is the putative ial illustrations and advertisements;
acknowledged as
author to whom the 14. Comp
authors of the work
work will be attributed
uter programs; and
15. Other
Works Protected: literary, scholarly, scientific and artistic
A. Original Works (BO2P3-CL2AIM-D2W) works (Sec. 172).
1. Book
s, pamphlets, articles and other B. Derivative Works
writings 1. Dramatizations, translations,
2. Perio adaptations, abridgments,
dicals and newspapers arrangements, and other alterations of
Note: A pure news report no longer literary or artistic works; and
finds protection under the new law,

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2010 Centralized Bar Operations

2. Collections of literary, scholarly or deliberative assemblies and in meetings of

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. 173t).
Note: Derivative works shall be protected
as new works. Provided however, that
such new works shall not:
a.
affect the force of any subsisting copyright
upon the original works employed or
any part thereof
b.
be construed to imply any right to such
use of the original works, or to secure
or extend copyright in such original
work (Sec. 173.2)
public character (Sec. 176).
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 (CMD)
1. Copyright or Economic rights (Sec. 177);
2. Moral rights (Sec. 193); and
3. Right to participate in the gross proceeds
of the sale or lease of the original work or
droit de suite (Sec. 200).

Works Not Protected: (PIN-DOG)

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);

Note: Format or mechanics of a television

show are not copyrightable. The law in
enumerating what are subject to copyright
refers to finished works and not to
concepts (Joaquin Jr. v. Drilon, GR
108946, January 28, 1999).

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;

General Rule: Condition Imposed prior

approval of then 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.

Exception: 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

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 San Beda College of Law
Laws on Intellectual Property
A. Copyright or Economic Rights
Exclusive right to (a) carry out, (b)
authorize or (c) prevent the following acts
(CAP):
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
Note: Economic rights allows the owner to
derive financial reward from the use of his
works by others (WIPO, Understanding
Copyright and Related Rights, p.9).
B. Moral Rights
1. Right of Paternity – 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. Right of Integrity – 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).
a. These rights are distinct from
economic rights and remain with
the author even after he has
transferred or assigned to another
“other rights of copyright” (WIPO,
215).
b. Moral rights allow the author
to take certain actions to preserve
the personal link between himself
and the work (WIPO,
Understanding Copyright and
Related Rights, p.9).
7
Term/ Duration
Lifetime of the author and 50 years after
his death. And is NOT assignable or
subject to license (Sec. 198).
These rights may be waived by:
1. by a written instrument (Sec. 195); or
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 (Sec. 200).
Requisites:
1. Sale or lease of the work;
2. Original work;
3. Painting or sculpture, or manuscript;
and
4. Subsequent to the first disposition by
the author
Term/ Duration:
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; and
5. Similar works wherein the author
primarily derives gain from the
proceeds of reproductions (Sec. 201).
Transfer or Assignment of Copyright
The transfer or assignment of the copyright
shall not itself constitute a transfer of the
material object. A transfer or assignment of the
copyright of the sole copy or of one or several
copies of the work shall not imply transfer or
assignment of copyright (Sec 181).
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
author’s right to control distribution of copies.
Limitations to the Rights of Copyright
(GF-PARRI)
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
 San Beda College of Law
2010 Centralized Bar Operations
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 (R4QP2I-MU2)
Acts that do 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
8
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; and
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, of 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 does not constitute infringement.
Examples:
1. Criticizing, commenting, and news
reporting;
2. Using for instructional purposes, including
producing multiple copies for classroom
use, for scholarship, research and similar
purposes
3. Decompilation – the reproduction of the
code and translation of the forms of the
computer program to achieve the inter-
operability of an independently created
computer program with other computer
programs (Sec. 185).
Criteria to determine whether use is fair or
not:
1. Purpose and the character of the use;
2. Nature of the copyrighted work;
3. Amount and substantiality of the portions
used;
4. 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 non-
copyrightable material.
 San Beda College of Law
Laws on Intellectual Property
 Quotations from a published work if
they are compatible with fair use and only
to the extent justified by the purpose,
including quotations from newspaper
articles, and periodicals in the form of
press summaries are allowed provided
that the source and the name of the
author, if appearing on the work, are
mentioned (Habana v. Robles, GR No.
131522, July 19, 1999).
Infringement or Piracy
Any violation of the owner’s exclusive rights
conferred by law (Pandect of Commercial Law
and Jurisprudence, Justice Jose Vitug, 2006
ed).
 An appropriation of a copyrighted work
by another who is not authorized (Black’s
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, Ibid;
Columbia Pictures v. CA, GR No. 131522,
July 19, 1999).
 Copying alone is not what is
prohibited. The copying must produce an
injurious effect. (Habana v. Robles, 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 (Ibid.).
 It is the overall appearance or
impression that establishes infringement.
Trivial or minor changes do not
necessarily negate infringement
(Boorstyn, Copyright Law, 1981 Ed., 293,
cited in Intellectual Property Law,
Comments and Annotations, Aquino, R.,
1998ed).
 A copy of a piracy is an infringement
of the original and it is no defense that the
pirate in such cases did not know whether
or not he was infringing any copyright; he
at least knew that what he was copying
was not his and he copied at his peril
(Habana v. Robles, Ibid.).
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
one’s mind.
9
The incorporation in one’s own work that of
another without the proper acknowledgement
thereof (Pandect of Commercial Law and
Jurisprudence, Vitug, 2006ed).
Remedies for Infringement
A. Judicial (Secs. 216-217)
1. Action for damages;
2. Criminal action;
Any person who at the time when
copyright subsists in a work has in his
possession an article which he knows,
or ought to know, to be an infringing
copy of his work for the purpose of:
a. Selling, letting for hire, or by way
of trade offering or exposing for
sale, or hire, the article;
b. Distributing the article for purpose
of trade, or for any other purpose
to an extent that will prejudice the
rights of the copyright owner in the
work; or
c. Trade exhibit of the article in
public, shall be guilty of an offense
and shall be liable on conviction to
imprisonment and fine (Section
217.3).
3. Injunction;
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;
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
Affidavit Evidence
An affidavit made before a notary public in
actions for infringement, reciting the facts
required to be stated under the IP Code (Sec.
218.1).
Note: As prima facie proof, the affidavit shifts
the burden of proof to the defendant, to prove
the ownership of the copyrighted work.
Presumption of Authorship
The natural person whose name is indicated
on a work in the usual manner as the author
shall, in the absence of proof to the contrary,
be presumed to be the author of the work.
 San Beda College of Law
2010 Centralized Bar Operations

This is applicable even if the name is a by broadcast qualifying for

pseudonym, where the pseudonym leaves no protection under the Code
doubt as to the identity of the author (Sec. (Secs. 203-207).
219.1). 2. Producers of sound recordings (Secs.
208-210), which includes:
The person or body corporate whose name a. Sound recordings the
appears on an audio-visual work in the usual producers of which are nationals of
manner shall, in the absence of proof to the the Philippines (Section 223.1);
contrary, be presumed to be the maker of said b. Sound recordings that were
work (Sec. 219.2). first published in the Philippines
(Section 223.2);
Related Parties c. Sound recordings which are to
1. Parties be protected by virtue of and in
a. Plaintiff accordance with any international
i. Legal owner; or convention or other international
ii. Beneficial owner; since they are agreement to which the Philippines is
"parties in interest." a party (Section 224.2).
b. Defendant
i. Direct infringer; or  If the general public has
ii. Contributory infringer (Sec. 217). made use of the object sought to be
copyrighted for thirty (30) days prior to
Note: A corner bookstore and magazine the copyright application the law
store that vends pirated copies of a work is deems the object to have been
in fact violating the copyright owner's right donated to the public domain and the
to exclusively distribute his work. Such same can no longer be copyrighted
store would therefore be infringing. The (Filipino Society of Composers,
printer who, though acting under Authors and Publishers, Inc. vs.
instructions from another, sets into motion Benjamin Tan, G. R. no. L-36402,
the illegal reproduction of protected March 16, 1987)
material would, in fact, be infringing
copyright. 3. Broadcasting organizations (Sec. 211)
Scope of Right: exclusive right to carry
2. Prescriptive out, authorize or prevent any of the
Period following acts:
4 years from the time a. The rebroadcasting of their
Action for damages the cause of action broadcasts;
arose (Sec. 226) b. The recording in any manner
subject to the general including the making of films or the
Criminal action rules of prescription of use of video tape, of their broadcasts
crimes for the purpose of communication to
Petition for injunctive none the public of television broadcasts of
relief the same; and
Petition for the none
c. The use of such records for
impounding and
destruction of infringing fresh transmissions or for fresh
material recording.

Related Rights or Neighboring Rights of Application of rights:

Copyright (Secs. 202-211)
Rights akin to but different from copyright,
granted by the law to –
1. Performers, who are:
a. Nationals of the Philippines;
b. Not nationals of the
Philippines but whose performances:
i. Take place in the Philippines;
ii. Are incorporated in sound
recordings protected under the
Intellectual Property Code; and
iii. Which has not been fixed in
sound recording but are carried
a. Broadcasts of broadcasting
organizations the headquarters of
which are situated in the Philippines;
b. Broadcasts transmitted from
transmitters situated in the Philippines;
c. Broadcasts by organizations which are
to be protected by virtue of and in
accordance with any international
convention or other international
agreement to which the Philippines is
a party (Section 224).
PATENT

10
 San Beda College of Law
Laws on Intellectual Property

arrives at the same

The right granted to an inventor by the State, product or that is
even identical to an
or by the regional office acting for several already patented, he is
earlier, or already
States, which allows the inventor to exclude restrained by the arm of
patented work, provided
the law from exploiting
anyone else from commercially exploiting his that the former is truly
such an invention by
invention for a limited period (World original, i.e., it owes its
reason of the patent
Intellectual Property Organization, existence to its creator.
granted the earlier
Understanding Industrial Property, p.5). discoverer.
Non-patentable
A patent is a statutory monopoly which inventions may be
protects against unlicensed use of the subject of a copyright.
patented device or process even by one who
discovers it properly through independent Classes of Patentable Non-patentable
research (60 Am Jur 2d, Patents, Section 6). Inventions Inventions
1. Useful machine 1. Discoveries, scientific
Purposes 2. A product theories and
3. A process mathematical method;
1. The patent law seeks to foster and reward 4. Improvement of (1), 2. Schemes, rules and
invention; (2), (3) methods of
2. it promotes disclosures of inventions to 5. Micro- organism performing mental
stimulate further innovation and to permit 6. Non-biological and acts, playing games
the public to practice the invention once microbiological or doing business,
the patent expires; process (Rule 201, and programs for
3. The stringent requirements for patent Rules and computers;
protection seeks to ensure that ideas in Regulations of 3. Methods for treatment
the public domain remain there for the free Inventions) of the human or
animal body;
use of the public (Pearl & Dean (Phil.)., 4. Plant varieties or
Inc. v. Shoemart, Inc., GR No. 148222, animal breeds of
August 15, 2003). essentially biological
process for the
Principles production of plants or
1. Test of Non-Obviousness – If any person animals;
possessing ordinary skill in the art was 5. Aesthetic creations;
able to draw the inferences and the 6. Anything which is
constructs that the supposed inventor contrary to public
drew from prior art, then the latter did not order or morality (Sec.
really invent. 22).
2. Unity of Invention – The application shall
relate to one invention only or to a group Note: In case of drugs and medicines, non-
of inventions forming a single general patentable products include the mere
inventive step (Sec. 38.1). discovery of a new form or new property of a
3. An applicant may not file 2 applications for known substance which does not result in the
the same subject, one for utility model enhancement of the known efficacy of that
registration and the other for the grant of a substance, or the mere discovery of a new
patent whether simultaneously or property or new use for known substance or
successively (Parallel Application, Sec. the mere use of the known process unless
111). such known process results in a new product
4. Whatever right one has to the invention that employs at least one new reactant (Sec 5
covered by the patent arises alone from RA 9502).
the grant of patent (Creser Precision
Systems vs. CA, GR No. 118708, Utility Model Industrial Design
February 2, 1998). Any new model of Any composition of lines
implements or tools of or colors or any three-
5. Patents or application for patents and any industrial product dimensional form
invention to which they relate, shall be even if not possessed of whether or not
protected in the same way as the rights of the quality of invention associated with lines or
other property under the Civil Code (Sec. but which is of “practical colors provided that
103.1). utility” (Del Rosario v. such composition or
CA, GR No. 115106, form gives a special
Patent Copyright March 15, 1996) appearance to and can
When a person, by It may be vested in a serve as pattern for an
independent research work closely similar or industrial product or
handicraft (Sec. 112.1).

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 San Beda College of Law
2010 Centralized Bar Operations

Requisites of Patentability (Sec. 21)

A. Technical Solution of a problem in any
field of human activity.
B. New (Novelty) – an invention shall not be
considered new if it forms part of a prior
Patent Utility Model
Industrial art (Sec. 23).
Design  Prior Art (Sec. 24)
Requisites That which has been made available
1. New (Novel) 1. New New to the public anywhere in the world
– That which 2. Industrially
BEFORE the filing date or the priority
does not Applicable
form part of date of the application;
a prior art
(Sec. 23); General Rule: That which forms part of an
2. Inventive – application whether for patent, utility model
An invention or industrial design, effective in the
involves an Philippines, provided that:
inventive 1. the inventors or applicants are not the
step if, same
having
2. the contents of the application are
regard to
prior act, it is published in accordance with the
not obvious requirements of patent application
to a person rules;
skilled in the 3. the filing date of the prior art is earlier
art at the
time of the Exception: Non-prejudicial disclosure
filing date or 1. Disclosure of information contained in
priority date the application;
of the
2. Made by:
application
claiming the a. The inventor;
invention b. Patent office and the information
(Sec. 26). was contained: a) in another
3. Industrially application filed by the inventor
patentable – and should not have been
An invention disclosed by the office; or b) in an
that can be application filed without the
produced knowledge or consent of the
and used in
inventor by a third party which
any industry
(Sec. 27). obtained the information directly
No inventive or indirectly from the inventor; or
Has all of the 4 No inventive c. A third party which obtained the
step and not
essential step information directly or indirectly
industrially
requisites
applicable from the inventor (Sec. 25).
Term 3. Made during the 12 months preceding
5 years from the filing date or the priority date of
the filing date the application.
of the
7 years from
20 years from application,
the filing date C. Involves an Inventive Step
the filing date which is
of the
of the
renewable for
(Inventiveness) – an invention involves
application; inventive step of, having regard to prior
application not more than
non-renewable art, it is not obvious to a person skilled in
2 consecutive
periods of 5 the art at the time of the filing date or
years each priority date of the application claiming the
Applicable Rules invention (Section 27).
Secs. 112-120 D. Industrially Applicable – an invention
Secs. 108-111
and certain that can be produced and used in any
and provisions
provisions on industry (Section 28).
on patents
Secs. 20-107 patents
applying
applying
mutatis
mutatis
mutandis
mutandis

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 San Beda College of Law
Laws on Intellectual Property

Persons Who May File an Application for a Requirements for Filing Applications (Secs.
Patent in the Philippines 32-39)
As to the Legal 1. The application shall relate to one
As to Nationality Personality of the inventive step only or to a group of
Applicant inventions forming a single general
1. Filipino Nationals; 1. Inventor or his inventive step.
2. Foreign Nationals or attorney-in-fact; 2. The patent application shall be in Filipino
those domiciled or 2. Assignee of the
have a real and inventor
or English and shall consist of the
effective commercial following:
establishment in a  A request containing the following:
country which is a. a petition for the grant of patent;
bound by treaty (such b. name and other data of the
as the Paris applicant, inventor (if he is not the
Convention and the applicant) and the agent; and
TRIPS Agreement) to c. title of invention.
grant Filipinos the
same rights it grants  Disclosure of the invention in a
to its own nationals; manner sufficiently clear and complete
3. Foreign Nationals for it to be carried out by a person
whose country also skilled in the art;
accepts the patent  Description of the invention;
application of  Drawings;
Filipinos.
 One or more claims in clear and
concise language defining the matter
Note: To be able to effectively and legally for which protection is sought;
preclude others from copying and profiting
 An abstract of technical information
from the invention, a patent is a primordial
consisting of a concise summary of
requirement.
the disclosure, claims and drawings in
preferably not more than 150 words;
No Patent, No Protection
 Appointment of an agent or
The ultimate goal of a patent system is to bring
representative in the Philippines by a
new designs and technologies into the public
non-resident applicant upon whom
domain through disclosure. Ideas, once
notices or process for judicial or
disclosed to the public without the protection of
administrative procedure relating to
a valid patent, are subject to appropriation
the patent may be served; and
without significant restraint (Pearl & Dean
(Phil.) v. Shoemart, GR No. 148222, August  At the request of the Director, the
15, 2003). applicant shall furnish him with the
date and number of any application for
“First-to-File” Rule/ System a patent filed by him abroad relating to
This is the system of patent registration the same or essentially the same
adopted under the IPC in lieu of the first-to- invention as that claimed in the
invent system. application filed with the IPO and other
documents relating to such.
Right to Priority of an Earlier-filed Foreign
Persons Entitled to
Application (Sec. 31) Situation
Patent
Requisites: 2 or more persons
1. The local application expressly claims invent separately and He who first files.
priority; independently
2. It is filed within 12 months from the date of 2 or more applications Applicant who has the
the earliest foreign application; filed for the same earliest filing date or
3. Filing within 6 months from the certified invention earliest priority date
copy of the foreign application, with an Inventions created Person who
English translation, from the date of the pursuant to a commissioned the work,
local application. commission unless agreed otherwise.
In case an employee Employee – if invention
made the invention in NOT part of his regular
the course of his duties even if he uses
employment the time, facilities and
materials of the
employer;

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 San Beda College of Law
2010 Centralized Bar Operations
Employer – if the
invention is the result of
the performance of his
regularly assigned
duties unless agreed
otherwise (Sec. 30).
Requirements to Get a Filing 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; and
3. Description and claims of the invention in
English or Filipino (the extent of protection
conferred by a patent is determined by the
claims).
 Payment of the filling fee is not included.
 The date of filling is very important
because it serves to determine who has
the right to the patent in case of a dispute
with another applicant for the same
invention.
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 withdrawn or the
patent considered as lapsed from the day
following the expiration of the period within
which the annual fees were due.
A grace period of 6 months shall be granted
for the payment of annual fee (Sec. 55).
Concept of Divisional Applications
When two or more inventions are claimed in a
single application but are of such a nature that
a single patent may not be issued for them.
The applicant is thus required “to divide” or
limit the claims to whichever the invention he
may elect, whereas those inventions not
elected may be made the subject of separate
applications which are called “divisional
applications” (Smith Kline Beckman Corp. v.
Court of Appeals, GR No. 126627, August 14,
2003, cited in Reviewer on Commercial Law,
Sundiang and Aquino, 2006ed).
Rights Conferred to an Applicant
All the rights of a patentee in relation to the
invention claimed in the published patent
application if he had:
14
1. actual knowledge that the invention was
the subject matter of a published
application; or
2. received written notice that the invention
was the subject matter of a published
application; and
3. had not filed the action until after the grant
of a patent and within 4 years from the
commission of the acts complained of
(Sec. 46).
Rights Conferred by Patent (Sec. 71)
1. 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. To assign or transfer; and
3. To conclude licensing contracts
Limitations of Rights Conferred by Patent
1. General Limitations (Sec. 72)
The owner of a patent has no right to
prevent third parties from performing,
without his authorization, the following
acts:
a. 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;
b. Exploitation of the patent if done
privately and on a non-commercial
scale or purpose;
c. Act of making or using the patent if for
the sole purpose of scientific research
and experiment;
d. Preparation for individual cases, in a
pharmacy or by a medical
professional, a medicine in
accordance with a medical
prescription; and
e. Use of the patented product if it occurs
in vehicles in transit in the country.
f. In case of drugs and medicines, where
the act includes testing, using, making
or selling the invention including any
data related thereto, solely for
purposes reasonably related to the
development and submission of
information and issuances of
approvals by government regulatory
 San Beda College of Law
Laws on Intellectual Property
agencies required under any
Philippine or foreign law (Sec. 7 RA
9502)
2. 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.
3. Use by Government (Sec. 74)
The government or a third person
authorized by it may use the patent
without authority of the patent owner if:
a. Public interest so requires;
b. The manner of exploitation by the
owner of the patent is anti-competitive
c. In case of drugs and medicines, there
is a national emergency or other
circumstance of extreme urgency
requiring the use of the invention.
d. In case of drugs and medicines, there
is a public non- commercial use of the
patent by the patentee, without
satisfactory reason
e. In case of drugs and medicines, the
demand for the patented article in the
Philippines is not being met to an
adequate extent and under
reasonable terms (Sec. 8 RA 9502).
Cancellation of Patent Formalities
Upon petition, with notice and hearing.
Effect
Termination of rights conferred by the patent
(Sec. 66).
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; and
3. Patent is contrary to public order or
morality (Sec. 61).
Infringement (Sec. 76.1)
The making, using, offering for sale, selling, or
importing a patented product or a product
obtained directly or indirectly from a patented
15
process, or the use of a patented process
without the authorization of the patentee.
Contributory Infringer
One who actively induces the infringement of a
patent or provides the infringer with a
component of a patented product or of a
product produced because of a patented
process knowing it to be especially adopted for
infringing and not suitable for substantial non-
infringing. He is jointly and severally liable with
the infringer.
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 v. Burke, cited in
Notes on Selected Commercial Laws: A Guide
for Bar Reviewees, Catindig, 2003ed).
Tests of Patent Infringement
Economic Interest Test
When the process-discoverer’s economic
interests are compromised, i.e., when others
can import the products that result from the
process, an act is said to be prohibited.
1. 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 v. CA, GR 97343, September
13, 1993).
2. 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 v.
CA, Ibid.).
Note: The doctrine of equivalents thus
requires satisfaction of the function-
means-and-result test, the patentee
having the burden to show that all three
components of such equivalency test are
met (Ibid).
 San Beda College of Law
2010 Centralized Bar Operations
The doctrine of equivalents cannot be
applied when the infringing invention is
clearly beyond what is written in the claim
(Reviewer on Commercial Law, Sundiang
and Aquino, 2006ed).
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
(Sec. 81)
1. Invalidity of patent or claim; and
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 court’s order
of the infringing goods, materials and
implements, without compensation (Sec.
76)
4. Criminal action for repetition of
infringement (Sec. 84).
Note: 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
(Shangri-La International Hotel Mgt., Inc., v.
Court of Appeals, GR No. 111580. June 21,
2001).
Remedies of Persons not Having the Right
to a Patent (Sec. 67)
If a person other than the applicant is declared
by final court order or decision as having the
right to the patent, he may within 3 months
16
after such decision has become final (a)
prosecute the application as his own; (b) file a
new patent application; (c) request that the
application be refused; or (d) seek cancellation
of the patent.
Note: Applies to pending application and even
when patent is already granted.
Time to file: 1 year from date of publication of
the application (Sec. 70).
Assignment and Transfer
Inventions and any right, title, or interest in and
to patents and inventions covered thereby,
may be assigned or transmitted by inheritance
or bequest or may be the subject of a license
contract (Section 103.2).
Licensing
May be Voluntary (Secs. 85-92, IPC) or
Compulsory (93-102, IPC).
A. Voluntary (Secs.
85-92)
The grant by the patent owner to a third
person of the right to exploit a patented
invention.
Prohibited Clauses (Sec. 87)
1. Those which impose upon the
licensee the obligation to acquire from
a specific source capital goods,
intermediate products, raw materials,
and other technologies, or of
permanently employing personnel
indicated by the licensor;
2. Those pursuant to which the
licensee reserves the right to fix the
sale or resale prices of the products
manufactured on the basis of the
license;
3. Those that contain restrictions
regarding the volume and structure of
production;
4. Those that prohibit the use of
competitive technologies in a non-
exclusive technology transfer
arrangement;
5. Those that establish full or partial
purchase option in favor of the
licensor;
6. Those that obligate the licensee to
transfer for free to the licensor the
inventions or improvements that may
be obtained through the use of the
licensed technology;
 San Beda College of Law
Laws on Intellectual Property
7. Those that require payment of
royalties to the owners of patents for
patents which are not used;
8. Those that prohibit the licensee to
export the licensed product unless
justified for the protection of the
legitimate interest of the licensor such
as exports to countries where
exclusive licenses to manufacture
and/or distribute the licensed
product(s) have already been granted;
9. Those which restrict the use of the
technology supplied after the
expiration of the technology transfer
arrangement, except in cases of early
termination of the technology transfer
arrangement due to reason(s)
attributable to the licensee;
10. Those which require payments for
patents and other industrial property
rights after their expiration or
termination of the technology transfer
arrangement;
11. Those which require that the
technology recipient shall not contest
the validity of any of the patents of the
technology supplier;
12. Those which restrict the research
and development activities of the
licensee designed to absorb and
adapt the transferred technology to
local conditions or to initiate research
and development programs
connection with new products,
processes or equipment;
13. Those which prevent the licensee
from adapting the imported technology
to local conditions, or introducing
innovation to it, as long as it does not
impair the standards prescribed by the
licensor;
14. Those which exempt the licensor
from liability for non-fulfillment of his
responsibilities under the technology
transfer arrangement and/or liability
arising from third party suits brought
about by the use of the licensed
product or the licensed technology;
and
15. Other cases with equivalent
effects.
Mandatory Provisions (Sec. 88)
1. That the laws of the Philippines shall
govern the interpretation of the
agreement and in the event of
litigation, the venue shall be the
proper court in the place where the
licensee has its principal office;
2. Continued access to improvements in
techniques and processes related to
the technology shall be made
available during the period of the
technology transfer arrangement;
3. In the event the technology transfer
arrangement shall provide for
arbitration, the Procedure of
Arbitration of the Arbitration Law of the
Philippines or the Arbitration Law of
the United Nations Commission on
International Trade Law (UNCITRAL)
or the Rules of Conciliation and
Arbitration of the International
Chamber of Commerce shall apply
and the venue of arbitration shall be
the Philippines or any neutral country;
and
4. The Philippine taxes on all payments
relating to the technology transfer
arrangement shall be borne by the
licensor.
B. 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.
in
Terms and Conditions for Compulsory
License:
1. The scope and duration of such
license shall be limited to the purpose
for which it was authorized;
2. Non exclusive license;
3. Non assignable license;
4. Use of the subject matter of the
license shall be devoted
predominantly to the supply of the
Philippine market;
5. May be terminated if the
circumstances which led to its grant
have ceased; and
6. The patentee shall be paid
adequate remuneration.
Grounds:
1. National emergency or other
circumstances of extreme emergency;
2. When public interest requires;
3. Manner of exploitation of patent is
anti-competitive;
4. Public non-commercial use of the
patent;
17
 San Beda College of Law
2010 Centralized Bar Operations
5. Patented invention is not being
worked in the Philippines on a
commercial scale although capable of
being worked; and
6. Where the demand for the patented
drugs and medicines is not being met
to an adequate extent and on
reasonable terms (Sec. 10 RA 9502)
Procedure for Application of Patent
1. Application
Filed with the Bureau of Patents (BOP) of
the Intellectual Property Office (IPO) (Sec.
32).
2. Formality Examination
3. To determine whether the application form
has complied with the IP Code and
Regulations, after the filing date has been
accorded and the required fees have been
paid (Sec. 42).
Note: The date of filing is very important
under the present “first-to-file” system
because it serves to determine, in case of
a dispute with another applicant for the
same invention, who has the right to the
patent.
4. Classification and Search
An application which has complied with
the formal requirements shall be
classified and a search conducted to
determine prior art (Sec. 43).
5. Publication in the OG
The search and the classification of the
field of technology to which the invention is
assigned will be published in the IPO
Gazette after the expiration of 18 months
from the filing date or priority date (Sec.
44).
Note: After the publication of the
application, any person may present
observations in writing concerning the
patentability of the invention. Such
observation shall be communicated to the
applicant who may comment on them.
6. Request for Substantive Examination
Substantive examination is conducted
upon request. The request for substantive
examination of the application must be
filed within six (6) months from the date of
the publication. The application is
considered withdrawn if no request is
made within that period (Sec. 48).
18
7. Decision to Grant Patent Registration
or Decision of Refusal
If the examiner finds no reason for refusal
of the application, or if the notice of reason
for refusal is satisfactorily complied with by
amendment or correction, the examiner
issues a decision to grant the patent
registration. Otherwise, the examiner
refuses the application.
8. Inspection of Records
It shall be published in the IPO Gazette
within six (6) months. Any interested party
may inspect the complete description,
claims, and drawings of the patent on file
with the Office.
Appeal
Every applicant may appeal to the Director of
Patents the final refusal of the examiner to
grant the patent within two (2) months from the
mailing date of the final refusal. The decision
or order of the Director shall become final and
executory fifteen (15) days after receipt of a
copy by the appellant unless within the same
period, a motion for reconsideration is filed
with the Director or an appeal to the Director
General is filed together with the payment of
the required fee.
The decision of the Director General may be
appealed to the Court of Appeals. If the
applicant is still not satisfied with the decision
of the Court of Appeals, he may still appeal to
the Supreme Court.
TRADEMARK, SERVICE MARKS AND
TRADE NAMES
The IPC does NOT anymore provide for prior
use as a condition for ownership of a mark
(Sec. 122). 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 (Unno Commercial
Enterprises, Inc. v. General Milling Corp.,
GR 28554, February 28, 1983).
Trademark
Any visible sign capable of distinguishing the
goods (trademark) or services (service mark)
of an enterprise and shall include a stamped
or marked container of goods. In relation
 San Beda College of Law
Laws on Intellectual Property

thereto, a trade name means the name or
designation identifying or distinguishing an
enterprise (Elidad Kho v. Court of Appeals, GR
No. 115758, March 11, 2002).
Basic Requirements:
1. There must be a visible sign; and
2. It must be capable of distinguishing
the goods of an enterprise.
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; and
5. To protect the manufacturer against
substitution and sale of an inferior and
different article as its product (Mirpuri v.
CA, GR 114508, November 19, 1998).
Acquisition
Acquired through registration. Registration
is necessary before one can file an action
for infringement (Reviewer on Commercial
Law, Sundiang and Aquino, 2006ed).
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,
whether or not registered here;
f. Mark identical with well-known mark,
on non-competing goods, registered
here;
g. Mark likely to mislead the public;
h. Mark consisting exclusively of signs
generic for the goods or services;
i. Mark consisting exclusively of signs or
of indications which are customary or
usual to designate goods or services
in everyday language or bona fide and
established trade practices;
j. Mark consisting of signs or of
indications used in trade;
k. Mark consisting of shapes;
l. Mark consisting of color alone, unless
defined by form;
m. Contrary to public order or morality.
Note: Mere geographical names are
ordinarily regarded as common property,
and it is a general rule that the same
cannot be appropriated as the subject of
an exclusive trademark or trade name
(Ang Si Heng v. Wellington Department
Store, GR No. L-4531, January 10, 1953).

Prior use in the Philippines is not required Trade Name

before registration. However, there must Any individual name or surname, firm name,
be an actual use after registration because device or word used by manufacturers,
Sections 142.2 and 151[c] of the industrialists, merchants, and others to identify
Intellectual Property Code requires that their businesses, vocations or occupations
the registrant shall file a declaration of (Converse Rubber Corp., v. Universal Rubber
actual use of the mark with evidence Products, Inc., GR No. L-27425, L-30505,
within 3 years from the filing date of April 28, 1980).
application, otherwise, it would be
cancelled. Trademark Service Mark
Collective
Mark
For the requirement of "actual use in Any visible Any visible Any visible sign
commerce in the Philippines" before one sign which is sign capable of designated as
adopted and distinguishing such in the
may register a trademark, trade-name and
used to identify the services of application for
service mark under the law pertains to the the source of an enterprise registration and
territorial jurisdiction of the Philippines and origin of goods, from the capable of
is not only confined to a certain region, and which is service of other distinguishing
province, city or barangay (McDonald’s capable of enterprises. the origin or
Corporation v. McJoy Fastfood distinguishing any other
Corporation, GR No. 166115, February 2, them from common
2007). goods characteristic,
emanating including the
from a quality of
Registration is not necessary to file a case
competitor. goods or
for unfair competition (Sec. 168.1 & 2). services of
different
What may NOT be registered (Sec. 133): enterprises
a. Immoral and deceptive matter; which use the
b. National flag or insignia; sign under the

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control of the Priority Right

registered An application for registration of mark filed in
owner of the the Philippines by a person who qualifies
collective mark. under the reciprocity rule and who previously
filed an application for registration of the same
Trademark Trade Name mark in one of those countries shall be
Separate Existence
considered as filed as of the day the
Has an existence
application was first filed in the foreign
distinct from the
existence of the Attached to the natural country(Sec. 131).
proprietor or juridical or juridical person who
person doing business does business and Significance of Priority Right
and producing the produces the goods or A Philippine application filed by another
goods or the services services applicant after the priority date but earlier than
offered by such person the foreign applicant’s actual filing may be
or enterprise refused registration if it is identical to the mark
Purpose with a priority date (The Law on Trademark,
Designates the goods or Identifies and Infringement and Unfair Competition, Agpalo,
services offered by distinguishes an
person or enterprise enterprise
2000ed).
Registration
Must be registered in No need to register in Conditions:
order to secure order to secure 1. The application must be filed within 6
protection for them protection for them months from the date of earliest foreign
Transferability application. Its certified copy passed within
Change of ownership of 3 mos. from the date of filing in the
May be transferred with trade name must be Philippines.
or without transfer of the made with transfer of 2. The following should concur: (a) the
business (Sec. 149.1) enterprise or part foreign country / country of origin has
thereof (Sec. 165.4)
allowed the mark and (b) the country of
origin is the applicant’s domicile or has a
Trademark Goodwill
bona fide commercial establishment.
Reputation and public
Right which protects the
confidence that a
3. The owner of the Philippine Registration
interests of producers in may not sue prior to the granting of the
business venture has
their marks and in the registration, unless the mark is considered
earned through a period
goodwill earned. well-known as provided for the IP Code.
of creditable dealings.
Trademark Label 4. The priority right may not be based upon a
Merely names what is foreign application that has been
Designed to identify the within the container or withdrawn, abandoned, or otherwise
user or origin. package; may or may disposed of in the country of origin (Rule
not be trademark. 202, Trademark Laws).

Note: In practice, a word, a name or a phrase, Certificate of Registration

coupled with indicators of business It shall be a prima facie evidence of:
organization, such as “Inc.”, “Corp.” or “Co.” 1. Validity of registration;
will NOT be registered as trademarks or 2. Registrant’s ownership of the mark;
service marks. and
3. The registrant’s exclusive right to use
Requirements to Get a Filing Date the same in connection with the goods or
On receipt of the application, an examiner services and those that are related thereto
checks if the application includes the following (Sec. 138).
requirements:
 Request for a Philippine registration of General Rule: The trademark protection
mark; extends only to goods or services related to
 Identity of applicant; those specified in the certificate.
 Indications sufficient to contact the
applicant; Exception: Expansion of Business Rule –
 Reproduction of the mark; and also to those goods or services that are
 List of goods or services related thereto specified in the certificate (Sec.
138).
Note: No filing date until the required fee is
paid.

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 All cases in which the use by the An EXCEPTION to this doctrine is the
junior appropriator is likely to lead to a additional right granted to a registered well-
confusion of source as where prospective known mark.
buyers would be misled into thinking that
the complaining party has extended his
business into another field (Sta. Ana v.
Maliwat, GR 23023, August 31, 1968).
Well-Known Mark
Declaration of Actual Use or Non-use A mark which a competent authority of the
Under Sec. 124.2 Under Sec. 145 Philippines has designated to be well-known
When to File internationally and in the Philippines.
Within 3 years from the Within 1 year from the
filing date 5th anniversary of the In determining whether a mark is well-known,
date of the registration the knowledge of the relevant sector of the
of the mark public, rather than the public at large, including
Effect of Failure to File
knowledge in the Philippines which has been
Application shall be Mark shall be removed
refused of the mark from the Register by the
obtained as a result of the promotion of the
shall be removed from office mark, shall be pertinent.
the register by the
Director Determinants:
What to File 1. The duration,
Declaration of actual 1. declaration of actual extent and geographical area of any use of
use with evidence to use with evidence to the mark;
that effect that effect, or 2. The market
2. show valid reasons share in the Philippines and other
based on the
countries of the goods/services to which
existence of
obstacles to such use the mark applies;
(declaration of non- 3. The degree of
use) the inherent or acquired distinction of the
mark;
Rights Conferred by a Trademark 4. The quality-
1. In case of image or reputation acquired by the mark;
registered marks, in general: 5. The extent to
Exclusive right to restrain/ prohibit/ prevent which the mark has been registered in the
third persons from using identical or world;
similar signs for identical or similar goods 6. The
or services (Sec. 147.1). exclusivity of the registration attained
by the mark in the world;
2. In case of a 7. The extent of
registered well-known mark: use of the mark in the world;
Exclusive right to restrain/ prohibit/ prevent 8. The
third persons from using identical or exclusivity of use in the world;
similar signs even for dissimilar or 9. The
unrelated goods or services, provided that commercial value attributed to the mark in
the use will indicate a connection between the world;
the goods and the owner of the mark and 10. The record of
that the interest of the owner would likely successful protection of the rights in the
be damaged (Sec. 147.2). mark;
11. The outcome
Doctrine/ Principle of Related Goods or of litigations dealing with the issue of
Services whether the mark is well-known; and
There is infringement when there is use of 12. The presence
similar marks on goods that are so related that or absence of identical or similar marks
the public may be, or is actually deceived, and validly registered or used on other similar
misled that the goods come from the same goods (Rule on Trademarks, Rule 102).
maker or manufacturer (Esso Standard
Eastern Inc. v. CA, 116 GRN 29971, August Rights:
31, 1982). 1. Right to be protected whether or not it is
registered in the Philippines;

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2. If registered, extension of protection to upon payment of the fee file an opposition to

goods and services which are not similar application.
to those in respect of which the mark is
registered, provided that: Form:
a. The use of the mark in relation to 1. In writing
unrelated or dissimilar goods or 2. Verified
services would indicate a connection 3. Specified grounds
between those goods or services and 4. Statement of facts
the owner of the mark; and
b. The interests of the owner of the Time to file: 30 days after publication of
registered mark are likely to be application; if unverified, the verified opposition
damaged by such use. (Exception to must be filed within 2 months from such filing
the doctrine of related goods) BUT It may be extended for 1 month and
maximum period does not exceed 4 months
Nice Classification from publication of application (Sec. 134).
This is the system by which trademark
applications are classified. There are 34
classes of goods and 8 classes of businesses
or services. Cancellation (Sec. 151)
Formalities: Upon petition, with due notice
Divisional Applications and hearing
An initial application may be divided by the
applicant into two or more applications. Grounds:
However, a single class shall not be With 5 Years from
At Any Time
subdivided. Registration
Belief that the registered 1. Becoming the generic
The divisional application must be submitted mark has damage or will name for the goods or
within 2 months from the mailing date of the 1 st damage the petitioner services for which it is
action of the Bureau of Trademarks. A new registered;
2. Abandonment;
application number shall be issued, and the
3. Illegal or fraudulent
priority right of the initial application shall be registration;
preserved. 4. Use by, or with the
permission of the
An existing registration may also be registrant so as to
subdivided upon request by oath and writing. A misrepresent the
new certificate shall be issued but a single source of the goods
class shall also not be subdivided (Sec. 129). or services in
connection with which
the mark is used;
Doctrine of Secondary Meaning
5. Non-use for an
While as a general rule, generic, indicative or uninterrupted period
descriptive marks ([j], [k], [l] of Sec. 123.1) are of 3 years without
non-registrable, when such kind of mark has legitimate reason
become distinctive, because of its long,
continuous and exclusive use for 5 years, as Note: Actual use may be done by substantial
used in connection with the applicant's goods compliance (Sec. 152.2-4).
or services in commerce and in the mind of the
public indicates a single source to consumers, Exempting circumstances: those arising
it may be registered (Sec. 123.2). independently of the will of the trademark
owner (Sec. 152.1), such as prohibition of sale
Doctrine of Dilution by government regulation, military coup, or
Copying which, while not sufficiently confusing political changes that impede commerce.
to divert sales in the short run, will tend to
divert them in the long run by weakening the Note: Registration is an administrative act
instantaneous favorable associations the declaratory of a pre-existing right that does
public makes with highly regarded products. not, of itself, perfect a trademark. It is actual
use which perfects a trademark.
Opposition
Any person who believes that he would be Non-use of a Mark When Excused
damaged by the registration of a mark may, 1. If caused by
circumstances arising independently of the

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 San Beda College of Law
Laws on Intellectual Property
will of the owner. Lack of funds not
excused.
2. A use which does
not alter its distinctive character though
the use is different from the form in which
it is registered.
3. Use of mark in
connection with one or more of the
goods/services belonging to the class in
which the mark is registered.
4. The use of a mark
by a company related to the
applicant/registrant.
5. The use of a mark
by a person controlled by the registrant
(Sec. 152).
Infringement (Sec. 155)
1. Reproduction or colorable imitation of a
registered mark or a dominant feature
thereof and application of such
reproduction or imitation of 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;
2. Likelihood to cause confusion or mistakes
in the mind of the public or deceive
purchasers.
Note: This is presumed in case of the use of
an identical sign for identical goods or
services.
 There is infringement of trademark when
the use of the mark involved would be
likely to cause confusion or mistake in the
mind of the public or to deceive
purchasers as to the origin of the source
of the commodity (Fruit of the Loom, Inc.,
v. Court of Appeals and General
Garments, Corp., GR No. L-32747).
 Action for infringement may be
maintained without proof of anything
more than the right to the exclusive use of
the registered mark or trade name and
that the defendant has violated it. No
allegation or proof of fraud or intent to
defraud is necessary (Compania General
de Tabacos v. Alhambra Cigar, Co., 33
Phil 485 (1916) cited by Agpalo Ruben.
The Law on Trademark Infringement and
Unfair Competition 1st ed. Rex Bookstore;
Manila, 200.p.172).
Factors to consider:
23
1. Value of the Goods
(Emerald Garment Manufacturing Corp.
vs. CA, GR 100098, December 29, 1995);
2. Common Trade Channel
(Ang vs. Teodoro, GR 48226, December
14, 1942);
3. Type of Consumers
(Mead Johnson vs. McCullough, GR No.
6217, December 26, 1911);
4. Necessary Expansion of
the Business (Sta. Ana vs. Maliwat, GR
23023, August 31, 1968; Ang vs. Teodoro,
GR No. 48226, December 14, 1992).
Elements of Infringement
1. Registration
of trademark in IPO; and
2. Trademark is
reproduced, copied, counterfeited or
colorably imitated.
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 overall presentation or in
their essential, substantive or distinctive
parts as would likely mislead or confuse
persons in the ordinary course of
purchasing the genuine article.
Denotes such a “close ingenious imitation”
as to be calculated to deceive ordinary
persons, or such a resemblance to the
original as to deceive an ordinary
purchaser, giving such attention as a
purchaser usually gives, and to cause him
to purchase the one supposing it to be the
other (Etepha A.G. v. Director of Patents
and Westmont Pharmaceuticals, Inc., GR
No. L-20635, March 31, 1966).
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
 San Beda College of Law
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Trademark, Infringement and Unfair ownership to fill such bottles, boxes, kegs,
Competition, Agpalo, 2000ed). barrels or other containers so marked and
stamped, for the purpose of sale, dispose of,
6. There shall be or wantonly destroy the same, whether filled or
no infringement of trademarks or trade not, to use the same for drinking vessels or
names of imported or sold drugs and drain pipes, foundation pipes, for any other
medicine as defined in Sec.72.1 of the Act purpose than that registered (Sec. 2, RA 623).
as well as imported or sold off- patent
drugs and medicines (Sec. 14 RA 9502) The use of the same, without apparent
permission from the trademark owners thereof,
Confusion of Goods / Confusion of shall be prima facie presumption that such
Services Business/ Origin possession or use is unlawful (Sec 3, RA 623).
Exists when one party’s
product or service Exceptions:
though different from 1. Use of the bottles as
A person’s goods or that of another, is such
services are purchased as might reasonably be
containers for sisi, bagoong, patis and
as those of another and assumed to originate similar native products (Sec 6, RA 623);
the poorer quality of the from the latter and the and
former reflects public would then be 2. Persons in whose favor the
adversely on the latter’s deceived into the belief containers were sold (Distilleria
reputation. that there is some Washington, Inc. v. LA Tondeña Distillers,
connection between the GR 120961, October 2, 1997).
parties, which in fact is
absent. The general rule is that in the sale of
Confusingly similar
Confusingly similar beverages, it already includes the containers,
marks are employed in
marks are used on the unless there is an agreement to the contrary
different or non-
same kinds of (Law on Trademarks, Agpalo, R., 2000ed).
competing
goods/services.
goods/services.
The exemption under Sec. 6, RA 623 covers
not only criminal but also civil liability (Twin
Ace Holding Corp. v. CA, GR No. 123248,
Idem Sonams Rule October 16, 1997).
Two trademarks used on identical or related DOMINANCY TEST VS. HOLISTIC TEST
goods may be confusingly similar if they have
similar sound or pronunciation. Dominancy Test Holistic/ Totality Test
Focuses on the Mandates that the
Note: Similarity of sound or pronunciation and similarity of the main, entirety of the marks in
spelling may be sufficient to make two marks essential, dominant, or question must be
confusingly similar when applied to prevalent features of a considered in
merchandise of the same descriptive mark. determining confusing
properties. Example: “Salonpas” and similarity.
“Lionpas” both for medical plaster (Marvex Exact duplication or
Commercial Co. v. Petra Hawpia and Co., GR imitation is not
necessary.
19297, December 22, 1966).
This test is incorporated
Likelihood of confusion or mistake is greater in the Intellectual
when identical or closely similar marks are Property Code and is
used on non-competing but related and controlling.
common household items because they are
purchased by ordinary purchasers who usually Examples of Cases Explaining Tests:
know them by their names or trademarks. Case Issue
1. E. Spinner and Co. vs.
INFRINGEMENT OF NAME AND MARK OF The use of “Wigan” for
Neuss Hesslein Corp.
OWNERSHIP STAMP ON CONTAINERS (G.R No. 31380, khaki
(R.A. No. 623 as amended by R. A, No. January 13, 1930)
5700)
2. Lim Hoa vs. Dir of
Patents (GR No. L- Hen Brand vs. Marka
General Rule: It is unlawful for any person, Manok
8072, October 31,
without written consent of the manufacturer, 1956)
bottler or seller who has registered the mark of

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3.Sta. Ana vs. Maliwat Remedies for Infringement

(GR No. L-23023, Florman vs. Flormen 1. Action for damages;
August 31, 1968) General Rule: Only those acts of
infringement committed from registration
4.Philippine Nut Industry Planters Cocktail
onwards may be sued upon.
vs. Std Brands (GR Peanuts vs. Phil
No.L-23035, July 31, Planters Cordial Exception: In case of infringement of a
1975). Peanuts well-known mark.
2. Injunction;
5.Converse Rubber Corp Universal Converse 3. Impounding of sales invoices and
vs. Universal Rubber Deice vs. Converse other documents;
(GR No. L-27906, Rubber Corp. 4. Double damages in case of actual
January 8, 1997)
intent to defraud or to misled (Sec. 156);
Asia Brewery inc.’s 5. Court order for the disposal or
label of BEER PALE
6.Asia Brewery , Inc., vs. PILSEN and its use of
destruction of the infringing goods (Sec.
Court of Appeals (GR the steinie bottle vs. 157);
No. 103543, July 5, SMB’s PALE PILSEN 6. Criminal action;
1993) with Rectangular Malt 7. Administrative sanctions
and Hops Design
7.Amigo Manufacturing  In any suit for infringement, the owner
Inc., vs. Cluelett of the registered mark shall not be entitled
Peabody Co., Inc. (GR Gold Toe vs. Gold Top to recover damages or profits unless the
No. 139300, March 14, acts have been committed with knowledge
2001) that such imitation is likely to cause
confusion, or to cause mistake or to
8.Societe Des Produits Master Roast and deceive (Sec. 158).
Nestle, S.A. vs. Court Master Blend vs. Flavor
of Appeals (GR No. Master
112012, April 4, 2001)  The infringement case can and should
proceed independently from the
9.McDonalds cancellation case with the Bureau so as to
Corporation and
afford the owner of the certificates of
McGeorge Food
Industries, Inc. vs. L.C. Big Mac vs. Big Mak registration redress and injunctive writs
Big Mak Burger, Inc. (Shangri-La International Hotel Mgt., Inc.,
(GR No. 143993, v. Court of Appeals, GR No. 111580. June
August 18, 2003) 21, 2001).
10. McDonalds
Corporation vs.  Any foreign national, who qualifies
MacJoy Fastfood under the principle on reciprocity and does
McDonalds vs. MacJoy
Corporation (GR No. not engage in business in the Philippines,
166115, February 2, whether or not it is licensed to do business
2007) in the Philippines, may bring civil or
administrative action for:
Holistic Test a. Opposition
Case Issue b. Cancellation
c. Infringement
1. Emerald Garment Mfg d. Unfair competition
Corp. vs. CA (GR No. The use of “LEE” in the
manufacture of pants e. False designation of origin or false
100098, December
29, 1995) description (Sec. 160).

2. Bristol Myers vs. Dir Bioferin vs. Bufferin both Limitations of Action for Infringement
of Patents (GR No. L- for medicine (Sec.159)
21587, May 19, 1966) 1. Right of Prior User – Registered
3. American Cyanamide Sulmetine vs. Sulmet mark shall be without effect against any
Co. vs. Dir of Patents both for veterinary person who, in good faith, before the filing
(GR No.L-23954, medicine or priority date, was using the mark for
April 29, 1977) purposes of his business.
4. Mead Johnson vs. 2. Relief against Printer – Injunction
Alaska for milk and
NVJ Van Dorp (GR against future printing against an innocent
Alacta for powdered
No. L-17501, April 27, half-skim milk infringer who is engaged solely in the
2963) business of printing the mark.

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 San Beda College of Law
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3. Relief against newspaper – another
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.
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, whether or
not registered mark is employed (Section
168.2).
In particular, the following shall be deemed
guilty of unfair competition:
a. Any person who is selling his goods
and gives them the general appearance of
goods of another manufacturer or dealer
or who otherwise clothes the goods with
such appearance as shall deceive the
public and defraud another of his
legitimate trade, or any subsequent vendor
of such good or any agent of any vendor
engaged in selling such goods with a like
purpose;
b. Any person who by any artifice, or
device or who employs any other means
calculated to induce the false belief that
such person is offering the services of
another who has identified such services
in the mind of the public or;
c. Any person who shall make any false
statement in the course of trade or who
shall commit any other act contrary to
good faith of a nature calculated to
discredit the goods, business or services
of another (Section 168.3).
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. v. Manuel, 7
Phil 221, GR 1999, December 27, 1906).
Infringement of
Unfair Competition
Trademark
Definition
Unauthorized use of a The passing off of one’s
trademark goods as those of
26
Fraudulent Intent
Fraudulent intent is Fraudulent intent is
unnecessary essential
Registration
Prior registration of the
trademark is a Registration is not a
prerequisite to the prerequisite to an action.
action
Scope
Limited scope Wider scope
Goods Involved
Same class of goods or Different classes of
services must be goods or services may
involved be involved
Note: 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., 36 Phil. 100, GR 10487,
January 23, 1917).
A foreign corporation not engaged in and
licensed to do business in the Philippines may
maintain an action for unfair competition. This
is so because the crime of unfair competition
punishable under Article 189 of the Revised
Penal Code is a public crime. It is essentially
an act against the State and it is the latter
which principally stands as the injured party.
The complainant’s capacity to sue in such
case becomes immaterial (Melbarose Sasot,
et al., vs. People of the Philippines, GR No.
143193, June 29, 2005).
While foreign corporations may have the
capacity to sue for infringement irrespective of
lack of business activity in the Philippines but
the question of whether they have an
exclusive right over the symbol as to justify
issuance of an injunctive writ will depend on
actual use of their trademarks in the
Philippines. To be entitled to an injunctive writ,
a foreign corporation must show that there
exists a right to be protected and that the fact
against which injunction is directed are
violative of such right (Philip Morris, et al., vs.
Fortune Tobacco Corporation, GR No.
158589, June 27, 2006).
Sale is not an indispensable element in an
action for infringement or unfair competition
(Pro Line Sports v. CA, GR 118192, October
23, 1997).
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Distinctions on Copyright Patent and Mark
Copyright Patent
Definition
It is that system of legal protection An exclusive right acquired over an
an author enjoys in the form of invention, to sell, use and make the
expression of ideas (World same whether for commerce or
Intellectual Property Organization industry.
[WIPO]).
Refers to either the grant of rights,
An intangible, incorporeal right OR the instrument (sometimes
granted by statute to the author or called letters patent) containing the
originator of certain literary or grant, giving an inventor a
artistic productions, whereby he is monopoly on the inventor’s
invested, for a limited period, with invention for a limited period.
the sole exclusive privilege of
multiplying copies of the same and
publishing and selling them
(Black’s Law Dictionary).
Purposes
1. To stimulate artistic creativity for 1. Not only to reward the individual,
the general public good; and but the advancement of the arts
2. To promote the progress of and sciences;
science and useful arts. 2. To add to the sum of useful
knowledge; and
3. To encourage dissemination of
information concerning
discoveries and inventions.
Requirements
1. Originality; and Any technical solution of a problem
2. Expression in any field of human activity which
is:
1. New or novel;
2. Inventive; and
3. Industrially applicable
(Sec. 21)
Term
See Table on Duration of Copyright 20 years from the filing date of the
application (Sec. 54).
How Created/ Acquired
From the moment of creation First-to-file system
(fixation)
General Limitations
1. Duration/temporal – The owner is limited by the terms of their property rights.
2. Territorial/geographical – The owner is protected by the law of the country where the violation is committed.
3. 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.
(Notes on Selected Commercial Laws A Guide for Bar Reviewees, Tristan Catindig, 2003ed)
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Mark
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 (Sec.
121.1).
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 be registrable (Sec. 123.1):
a. Absolutely non-registrable –
(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 (Sec.
124.2)
10 years from the filing date of the
application, provided the registrant
shall file a declaration of actual use
within a year from the 5th
anniversary of registration date
(Sec. 145), and renewable for
another 10 years (Sec. 146).
Valid registration
 San Beda College of Law
Laws on Intellectual Property

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