XIV. A. Differentiate trademark, copyright and patent from each other.

(6%)

1. As to definition :

a. Trademark is any visible sign capable of distinguishing goods b. Copyright is an incorporeal right granted by statute
to the author or creator of original literary and artistic works whereby he is invested for a limited period of time with
the right carry out, authorize and prevent the reproduction, distribution, transformation, rental, public performance
and other forms of communication of his work to the public. c. Patent is any technical solution of any problem in any
field of human activity which is new, requires an inventive step and industrially applicable.

2. As to object

a. The object of trademark are goods b. The object of copyright are original literary and artistic works c. The object of
patent is invention 3. As to term

a. The term of trademark is ten years b. The term of copyright is generally 50 years c. The term of patent is 20 years
from application 4. As to how acquired

a. Trademark is acquired through registration and use b. Copyright is acquired from the moment of creation c. Patent
is acquired through application with the IPO

B. What is the doctrine of equivalents? (2%)

Under the doctrine of equivalents, infringement of patent occurs when a device appropriates a prior invention by
incorporating its innovative concept and albeit with some modifications and change performs the same function in
substantially the same way to achieve the same result. Godines vs Court of Appeals, 226 SCRA 338

C. In what ways would a case for infringement of trademark be different from a case for unfair competition? (3%)

1. In infringement of trademark, prior registration of the trademark is a prerequisite to the action whereas in unfair
competition trademark registration is not necessary 2. Trademark infringement is the unauthorized use of the
registered trademark while unfair competition is the passing off one’s goods as those of another 3. In infringement of
trademark, fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential ( Delmonte
Corporation vs Court of Appeals, 181 SCRA 410 )

XV. CHEN, Inc., a Taiwanese company, is a manufacturer of tires with the mark Light Year. From 2009 to 2014, Clark
Enterprises, a Philippine- registered corporation, imported tires from CHEN, Inc. under several sales contracts and sold
them here in the Philippines. In 2015, CHEN, Inc. filed a trademark application with the Intellectual Property Office
(IPO) for the mark Light Year to be used for tires. The IPO issued CHEN, Inc. a certificate of registration (COR) for said
mark. Clark Enterprises sought the cancellation of the COR and claimed it had a better right to register the mark Light
Year. CHEN, Inc. asserted that it was the owner of the mark and Clark Enterprises was a mere distributor. Clark
Enterprises argued that there was no evidence on record that the tires it imported from CHEN, Inc. bore the mark Light
Year and Clark Enterprises was able to prove that it was the first to use the mark here in the Philippines. Decide the
case. (4%)

While RA 8293 removed the previous requirement of proof of actual use prior to the filing of an application for
registration of a mark, proof of prior and continuous use is necessary to establish ownership of trademark. Such
ownership of the trademark confers the right to register the trademark. Since Chen owns the trademark as evidenced
by its actual and continuous use prior to the Clark Enterprises, then it is the one entitled to the registration of the
trademark. The fact that Clark was the first one to use the mark here in the Philippines will not matter. Chen’s prior
actual use of the trademark even in another country bars Clark from applying for the registration of the same
trademark.

Also, a mere distributor does not own the trademark to the goods he distributes and his right over the trademark can
not prevail over the owner. E.Y Industrial Sales vs. Shien Dar Electricity and Machinery, GR no. 184850, October 20,
2010; Ecole de Cuisine Manille vs Renaud Cointreau, GR 185830, June 5, 2013

2016
III.

ABC Appliances Corporation (ABC) is a domestic corporation engaged in the production and sale of televisions and
other appliances. YYY Engineers, a Taiwanese company, is the manufacturer of television and other appliances from
whom ABC actually purchases appliances. From 2000, when ABC started doing business with YYY, it has been using
the mark “TTubes” in the Philippines for the television units that were bought from YYY. In 2015, YYY filed a trademark
application for “ITubes”. Later, ABC also filed its application. Both claim the right over the trademark “TTubes” for
television products. YYY relies on the principle of “first to file” while ABC involves the “doctrine of prior use”

(A) Does the fact that YYY filed its application ahead of ABC mean that YYY has the prior right over the trademark?
Explain briefly. (2.5%).

(B) Does the prior registration also mean a conclusive assumption that YYY Engineers is in fact the owner of the
trademark “TTubes” Briefly explain your answer. (2.5%)

SUGGESTED ANSWER

(A) No. Since YYY is not the owner of the trademark, it has no right to apply for registration. Registration of trademark,
by itself, is not a mode of acquiring ownership. It is the ownership of a trademark that confers the right to register the
same (Birkenstock Orthopaedia GMBH v. Philippine Shoe Expo Marketing Corporation, G.R. No. 194307, November
20, 2013).

(B) No. Registration merely creates a prima facie presumption of the validity of the registration of the registrant’s
ownership of the trade mark and the exclusive right to the use thereof. The presumption of ownership accorded to a
registrant is rebuttable and must yield to evidence to the contrary.

IV

X’s “MINI-ME” burgers are bestsellers in the country. Its “MINI-ME” Logo, which bears the color blue, is a registered
mark and has been so since the year 2010. Y, a competitor of X, has her own burger which she named “ME-TOO” and
her logo thereon is printed in bluish-green. When X sued Y for trademark infringement, the trial court ruled in favor of
the plaintiff by applying the Holistic Test. The court held that Y infringed on X’s mark since the dissimilarities between
the two marks are too trifling and frivolous such that Y’s “ME-TOO,” when compared to X’s “MINI-ME,” will likely cause
confusion among consumers.

Is the application of the Holistic Test correct? (5%)

SUGGESTED ANSWER

The application of the Holistic Test is not correct. In cases involving burger products, the Supreme Court has
consistently applied the dominancy test. Under the dominancy test, the focus is on the dominant feature of the
competing trademarks. Big Mak has been held to be confusingly similar with Big Mac and so with McDo and Mcjoy
both under the dominancy test. Accordingly, MINI-ME trademark is confusingly similar with the ME-TOO mark
(McDonald’s Corporation v. LC Big Mak Burger, Inc., G.R. No. 143993, August 18, 2004).

2017

VII.

A.

Virtucio was a composer of llocano songs who has been quite popular in the llocos Region. Pascuala is a professor of
music in a local university with special focus on indigenous music. When she heard the musical works of Virtucio, she
purchased a CD of his works. She copied the CD and sent the second copy to her Music instructions for the class to
listen to the CD and analyze the works of Virtucio.

Did Pascuala thereby infringe Virtucio's copyright? Explain your answer. (4%)

B.
Super Biology Corporation (Super Biology) invented and patented a miracle medicine for the cure of AIDS. Being the
sole manufacturer, Super Biology sold the medicine at an exorbitant price. Because of the sudden prevalence of AIDS
cases in Metro Manila and other urban areas, the Department of Health (DOH) asked Super Biology for a license to
produce and sell the AIDS medicine to the public at a substantially lower price. Super Biology, citing the huge costs
and expenses incurred for research and development, refused.

Assuming you are asked your opinion as the legal consultant of the DOH, discuss how you will resolve the matter. (4%)