On Intellectual Property Rights

Legal Research and Thesis Writing

Atty. Regina Venturanza-Cortez

GROUP 2

Agaloos, Ruth
Bernardez, Karen
Dela Paz, Pauline
Esber, Polly
Gumiran, Geraldine
Hosaka, Enrique
Ladaga, Joshua
Sante, Gabriel
Somera, Jyra

FEU-IL Block 3
ABC CORPORATION owns and uses a mark known as “MAY” since 1999 for its non-
alcoholic sparkling juices products. However, ABC Corporation failed to have it registered
with the IPO. In 2010, FICA Corporation registered a similar mark “MAY” under the
same class and channel, which, based on its record, have been the company’s logo since
2000. Another corporation, DEF Company wanted to have its mark “MAY PREMIUM”
registered under the same classification and product.

GUIDE QUESTION A: If you were the counsel of “MAY PREMIUM”, you may need to find
out if there are existing marks locally that has been registered with the IPO. How will you
manage the search? What if you wish to extend your research to international registration?

Assuming there is an existing trademark that has been registered with the IPO under the mark
MAY, MAY GOLD, MAY PREMIUM, what are the chances that the proposed mark “MAY
PREMIUM” will be approved or denied?

If you were the counsel of “MAY PREMIUM”, you may need to find out if there are
existing marks locally that has been registered with the IPO. How will you manage the
search?

Assuming that I am the counsel of “MAY PREMIUM”, I can find out if there are existing marks
locally by visiting the websites of the following:

1. Intellectual Property Office of the Philippines (IPOPHIL)

Click Services, then click Trademark here: https://www.ipophil.gov.ph/services/trademark/. On

the right side of the webpage, click TM Search to go to the Philippine Trademark Database. It
can also be directly accessed here: https://www3.wipo.int/branddb/ph/en/.

2. ASEAN TMview

Another option to search for existing local marks is to go to the website of ASEAN TM View.
On the right side of the IPOPHIL Trademark Database webpage
(https://www.ipophil.gov.ph/services/trademark/) shows a link to the ASEAN TM Database. It
can also be accessed directly through this link: http://www.asean-tmview.org/tmview/welcome.

3. World Intellectual Property Organization (WIPO)

The WIPO website performs a trademark search by text or image in brand data from multiple
national and international sources, including trademarks. Existing marks in the Philippines can
also be searched here. The link to the website is: https://www3.wipo.int/branddb/en/.

4. Marcaria

To ensure if such marks exist, it is relevant to also look for it on other trademark databases.
However, one is advised to access the above mentioned websites first before resorting to other
websites such as this. The website marcaria.com provides an at-a-glance information to a
trademark. Nice Class, Status, Filing Number, Filing Date, Registration Number, and Applicant
can be found on the specific trademark to be researched. The link to the website is:
https://trademark-search.marcaria.com/en/asia/philippines-trademark-search.

What if you wish to extend your research to international registration?

1. World Intellectual Property Organization (WIPO) website

One only needs to click on the Global Brand Database, situated on the left side of the Philippine
Trademark Database to extend the research to international registration. The link to the WIPO
website is: https://www3.wipo.int/branddb/en/

2. ASEAN TMview

It is of import that the ASEAN has its own database of trademarks as well. On the right side of
the IPOPHIL Trademark Database webpage (https://www.ipophil.gov.ph/services/trademark/),
shows a link to the ASEAN TM Database. It can also be directly accessed here:
http://www.asean-tmview.org/tmview/welcome.

3. Marcaria

Select a country among those listed or simply input the trademark term here: https://trademark-
search.marcaria.com/en.

Assuming there is an existing trademark that has been registered with the IPO under the
mark MAY, MAY GOLD, MAY PREMIUM, what are the chances that the proposed mark
“MAY PREMIUM” will be approved or denied?

The chances that the proposed mark “MAY PREMIUM” will be approved are close to nil.
MAY, and MAY GOLD are already registered with the IPO. The proposed trademark, MAY
PREMIUM is similar to those previously registered with regards to the products registered under
those names, adding also that they are used on the same class of products. The IPO may reject or
cancel the proposed mark on such basis as to prevent confusion among the consumers.1

Section 123.1 paragraph (d) of the Intellectual Property Code provides that a mark cannot be
registered if it is identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of: (i) The same goods or services; or (ii) Closely
related goods or services; or (iii) If it nearly resembles such a mark as to be likely or deceive or
cause confusion.

In Gabriel-Almoradie v. Court of Appeals2, the Court, noting that “Wonder” had already been
registered as a trademark for a beauty soap, ruled “Wonder GH” ineligible for registration, even
going so far as to find that there was “bad faith in attempting to vest an already registered

1 Dennis B. Funa, Intellectual Property Law 294 (2012).

2 229 SCRA 15 (1994).
trademark with eligibility by the mere addition of the letters ‘GH.’” Not even if the later
applicant were to apply the mark to laundry soap (as against the beauty soap of the earlier
registrant) would the situation be legitimate, since confusion is bound to occur on account of the
relation between the goods.

GUIDE QUESTION B: If you were the counsel of ABC Corporation, how will you assert your
right, if any, without having your mark registered with the IPO? How will you find the relevant
laws and jurisprudence? If one of the arguments that you wish to present is that of “prior use”,
amended prior rulings on the principle of “prior use”? How did the SC rule on the prior
registration and prior use principles; where did it tilt the scale (in favor of prior registration or
prior use)?

If you were the counsel of ABC Corporation, how will you assert your right, if any, without
having your mark registered with the IPO?

If I were the counsel of ABC Corporation, I will assert my client’s right as the prior user in good
faith. I will invoke Section 159.1 of the Intellectual Property Code, which states that “a
registered mark shall have no effect against any person who, in good faith, before the filing date
or the priority date, was using the mark for the purposes of his business or enterprise.” Also,
registration is not compulsory. There are no statutory sanctions for not registering, but there may
be business consequences for such failure.

The First-to-File for Registration Rule3

The “First-to-File” Rule is stated in Section 123.1 (d) of the Intellectual Property Code which
states that a mark cannot be registered if it is identical with a registered mark belonging to a
different proprietor or a mark belonging to a different proprietor or a mark with an earlier filing
or priority date. The First-to-File Rule establishes the urgency of registering your trademark.
Thus, where two marks, belonging to a different proprietors, are identical or nearly resemble
each other such as to likely deceive or cause confusion and the marks pertain to the same goods
or services or are closely related goods or services, the mark first filed for registration would
prima facie be the superior registration.

This rule, however, is not absolute. It would not apply:

a. To prior registrations made in bad faith.
b. Where the prior registration was preceded by a prior use in good faith and in the concept
of an owner by another.
c. Where it would conflict with a claim to priority right.

Prior User in Good Faith4

3Funa, supra note 1, at 295-296.

4Office of Bagay-Villamor & Fabiosa, The Law on Trademarks, available at http://iprotect.ph/intellectual-
property-code-trademark-01.htm (last accessed Oct. 25, 2019).
It is provided in Section 159.1 of the Intellectual Property Code that notwithstanding the
provisions of Section 155 of the Code, a registered mark shall have no effect against any person
who, in good faith, before the filing date or the priority date, was using the mark for the purposes
of his business or enterprise: Provided, That his right may only be transferred or assigned
together with his enterprise or business or with that part of his enterprise or business in which the
mark is used.

However, as adopted by the Court in Shangri-La International Hotel Mngt. case, when a
trademark copycat adopts the word portion of another's trademark as his own, there may still be
some doubt that the adoption is intentional. But if he copies not only the word but also the word's
exact font and lettering style and in addition, he copies also the logo portion of the trademark, the
slightest doubt vanishes. It is then replaced by the certainty that the adoption was deliberate,
malicious and in bad faith.

How are trademarks acquired5

According to Section 122 of the Intellectual Property Code, the rights in a mark shall be acquired
through registration made validly in accordance with the provisions of this law. Section 124.2 of
the IP Code also provides that the applicant or the registrant shall file a declaration of actual use
of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years
from the filing date of the application. Otherwise, the application shall be refused or the mark
shall be removed from the Register by the Director.

Under the present system, trademarks are acquired through registration and subsequent actual
use. Thus, the present system may be called the “Registration and Subsequent Actual Use
System,” with much importance to be given the actual use. Moreover, a Declaration of Actual
Use alone, without proof of actual use, would not be sufficient to establish actual use. The Court
ruled in E.Y. Industrial Sales, Inc. v. Shen Dar Electricity and Machinery Co., Ltd. that: “While a
Declaration of Actual Use is a notarized document, hence, a public document, it is not conclusive
as to the fact of first use of a mark. The declaration must be accompanied by proof of actual use
as of the date claimed. In a declaration of actual use, the application must, therefore, present
evidence of such actual use.”

Abandonment of Prior Actual Use in Commerce6

The Intellectual Property Code has dispensed with the requirement of prior actual use in
commerce at the time of or before registration. The old Trademark Law (RA 166) required prior
actual use in commerce as a requirement for registration. Hence, under RA 166, registration
alone without compliance with the actual use requirement only bestows presumptive ownership
by the registrant over the registered mark. It has, in fact, been held in Shangri-La International
Hotel Mngt. v. Developers Group of Companies that: “As between actual use of a mark without
registration and registration of the mark without actual use thereof, the former prevails over the
latter.” However, under the present system, the absence of actual use does not become a
hindrance to registration. A trademark registration may be registered on the basis of mere intent

5 Funa, supra note 1, at 310-311.

6 Id. at 311-313.
to use. A start-up businessman may therefore already register a trademark that he has not yet
started using.

How will you find the relevant laws and jurisprudence?

There are websites wherein one can search for jurisprudence relating to Intellectual Property.

1. IPOPHL website

This is the official website of the Intellectual Property Office of the Philippines (IPOPHL). The
page contains the Philippine laws on Intellectual Property and other rules. The laws and rules
relating to intellectual property relations in the Philippines can be found in the References tab >
Laws & Rules:
https://www.ipophil.gov.ph/intellectual-property-code-implementing-rules-and-regulations/

2. Federis website

Federis is one of the top filers of trademark and patent applications in the Philippines, as well as
one of the highest in official fee remittances for the last three years. The firm has been identified
as one of the top law firms for patent prosecution by Managing IP, and its attorneys have been
cited by Asialaw Leading Lawyers as one of the leading experts in the Asia-Pacific region.

Jurisprudence relating to Intellectual Property can be found in the Library tab > Jurisprudence:
http://www.federislaw.com.ph/library/jurisprudence/

3. ASEAN Intellectual Property Portal

The webpage tackles the Intellectual Property Office of the Philippines (IPOPHL). It has the
basic information regarding the office such as: its address; mandate of the agency; vision and
mission; strategic goals; organization of the agency; registration procedure; and laws as well as
regulations governing intellectual property relations.

The information of the Intellectual Property Office of the Philippines can be found in the
Resources tab > ASEAN IP Offices Details > Philippines:
https://www.aseanip.org/Resources/ASEAN-IP-Offices-Details/Philippines

If one of the arguments that you wish to present is that of “prior use”, amended prior
rulings on the principle of “prior use”? How did the SC rule on the prior registration and
prior use principles; where did it tilt the scale (in favor of prior registration or prior use)?7

In Shangri-La International Hotel Management v. Developers Group of Companies, the prior or

first registration made by DGC of the “Shangri-la” mark and “S” logo was ruled as void since
there was no prior actual use in commerce before DGC’s registration. It was found that DGC’s
registration was made on October 18, 1982 but the artist who created the mark and logo

7 Id. at 314-318.
submitted his designs only on December 1982 and that the restaurant where the mark and logo
was used opened for business only on December 1982.

The Supreme Court ruled in numerous cases that prior actual commercial use in the Philippines
before registration would still be a prerequisite to the acquisition of ownership of a trademark.

As ruled in Emerald Garment Manufacturing Corp. v. Court of Appeals:

In addition to the foregoing, we are constrained to agree with petitioner's contention that
private respondent failed to prove prior actual commercial use of its "LEE" trademark in
the Philippines before filing its application for registration with the BPTTT and hence,
has not acquired ownership over said mark.

Actual use in commerce in the Philippines is an essential prerequisite for the acquisition
of ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark
Law (R.A. No. 166) x x x

The rulings in Pagasa Industrial Corp. v. Court of Appeals and Converse Rubber Corp. v.
Universal Rubber Products, Inc., respectively, are instructive:

The Trademark Law is very clear. It requires actual commercial use of the mark prior to
its registration. There is no dispute that respondent corporation was the first registrant,
yet it failed to fully substantiate its claim that it used in trade or business in the
Philippines the subject mark; it did not present proof to invest it with exclusive,
continuous adoption of the trademark which should consist among others, of considerable
sales since its first use. The invoices submitted by respondent which were dated way back
in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of
no commercial value." The evidence for respondent must be clear, definite and free from
inconsistencies. "Samples" are not for sale and therefore, the fact of exporting them to the
Philippines cannot be considered to be equivalent to the "use" contemplated by law.
Respondent did not expect income from such "samples." There were no receipts to
establish sale, and no proof were presented to show that they were subsequently sold in
the Philippines.

In Mighty Corp. v. E&J Gallo Winery, it was factually established that the Gallo wine trademark
was registered in the Philippines in 1971 but the wine itself was first marketed and sold in the
Philippines only in 1974. The Court ruled: “In view of the foregoing jurisprudence and
respondents’ judicial admission that the actual commercial use of the GALLO wine trademark
was subsequent to its registration in 1971 and to Tobacco Industries’ commercial use of the
GALLO cigarette trademark in 1973, we rule that, on this account, respondents never enjoyed
the exclusive right to use the GALLO wine trademark to the prejudice of Tobacco Industries and
its successors-in-interest, herein petitioners, either under the Trademark Law or the Paris
Convention.

In Sta. Ana v. Maliwat, “an application for registration is not bound by the date of first use as
stated by him in his application, but is entitled to carry back said stated date of first use to a prior
date by proper evidence; but in order to show an earlier date of use, he is then under a heavy
burden, and his proof must be clear and convincing (Anchor Trading Co., Inc. vs. The Director
of Patents, et al., L-8004, 30 May 1956; Chung Te vs. Ng Kian Giab, et al.,
L-23791, 23 November 1966). In the case at bar, the proof of date of first use (1953), earlier than
that alleged in respondent Maliwat's application (1962), can be no less than clear and convincing
because the fact was stipulated and no proof was needed.”

GUIDE QUESTION C: If you were the counsel of FICA Corporation, how will you protect
your registered mark? Do you have grounds to oppose “MAY PREMIUM” since in the bottle
label design, the prominent mark is “MAY”. What are the remedies available to you to stop and
prevent DEF Company from maintaining registered mark? What if “MAY PREMIUM” has
already been successfully registered, how will you have it revoked? What arguments and
grounds will you use to acquire better rights on the mark? How will you conduct your research.
Give legal support.

If you were the counsel of FICA Corporation, how will you protect your registered mark?
Do you have grounds to oppose “MAY PREMIUM” since in the bottle label design, the
prominent mark is “MAY”.

If i were the counsel for FCA Corporation, the registered trademark “MAY” properly belongs to
FCA Corporation and not ABC for the latter’s failure to renew its registration within 10 years
from 1999.

Request for Renewal (Rule 1200 of IPOPHL Memorandum Circular No. 17-010)

A registration may be renewed for periods of ten (10) years at its expiration upon filing of a
request and payment of the prescribed fee. The request shall contain the following indications
and/or supporting documents: (a) An indication that renewal is sought; (b) The name, address
and other contact details of the registrant or successor-in-interest, hereafter referred to as the
"right holder"; (c) The registration number; (d) The filing date of the application which resulted
in the registration to be renewed; (e) Where the right holder has an authorized representative or
agent, the name and address of that representative or agent; (f) The recorded goods or services
for which the renewal is requested, grouped according to the classes of the Nice Classification;
and (g) A signature by the right holder or the right holder's authorized representative or agent.

What are the remedies available to you to stop and prevent DEF Company from
maintaining registered mark?

To stop DEF Corporation, I would invoke FCA Corporation’s exclusive right to prevent third
parties, without consent, to use identical or similar signs which would result in a likelihood of
confusion.

Rights Conferred (Rule 800 of IPOPHL Memorandum Circular No. 17-010)

The owner of a registered mark shall have the exclusive right to prevent all third parties not
having the owner's consent from using in the course of trade identical or similar signs or
containers for goods or services which are identical or similar to those in respect of which the
mark is registered, where such use would result in a likelihood of confusion. In case of the use of
an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The
exclusive right of the owner of a well-known mark which is registered in the Philippines, shall
extend to goods and services which are not similar to those in respect of which the mark is
registered: Provided, That use of the mark in relation to those goods or services would indicate a
connection between those goods or services and the owner of the registered mark: Provided
further, That the interests of the owner of the registered mark are likely to be damaged by such
use.

What if “MAY PREMIUM” has already been successfully registered, how will you have it
revoked?8

To revoke DEF Corporation’s trademark, I would file a/an:

1. Criminal Action

A criminal action may be initiated by filing a complaint with the prosecutor. The prosecutor then
conducts the preliminary investigation to determine if there are reasonable grounds for
infringement. If there are reasonable grounds, the prosecutor will issue an order recommending
the filing of criminal information in court.

After the filing of the criminal information, the court will issue a warrant of arrest. The accused
has the option to post bail. Once the accused is arrested and/or posts bail, he or she will be
arraigned. The court will then proceed to try the criminal case and if the accused is found guilty
of infringement beyond a reasonable doubt, it will issue a decision of conviction.

The IP owner will participate in the civil aspect of the criminal action if he is claiming damages.

A person found guilty in a criminal case for trademark infringement, unfair competition, and/or
false designation will be imprisoned for a term of two (2) to five (5) years, and will be ordered to
pay a fine ranging from Php 50,000 to Php 200,000.

2. Civil Action

An IP owner may file a civil action to recover damages from any person who infringes his or her
rights. The award of damages shall be either the reasonable profit the IP owner would have
made, had the infringer not infringed his rights, or the profit that the infringer actually received
from the infringement. In the event that such damages cannot be ascertained with reasonable
certainty, the court may award as damages a reasonable percentage based upon the amount of
gross sales received by the infringer in connection with the use of the IP owner’s trademark. In

8Federis, Trademark enforcement, available at http://www.federislaw.com.ph/faqs-resources/trademark-

enforcement/ (last accessed Oct. 25, 2019).
cases where actual intent to mislead the public or to defraud the IP owner is shown, the damages
may be doubled upon the discretion of the court.

Other forms of relief, such as injunction and the impounding of the counterfeit products, sales
invoices and other documents evidencing sales, are also available as remedies to the IP owner.

3. Administrative Action

An administrative action for trademark infringement, unfair competition and/or false designation
may be filed with the Bureau of Legal Affairs (BLA) of the IPO within four (4) years from the
date of commission of the violation, or if the date be unknown, from the date of discovery of the
violation. The total amount of damages claimed should be Php 200,000 or more. Provisional
remedies, such as an injunction, are available.

The administrative penalties available may include the issuance of a cease and desist order;
condemnation and seizure of infringing products; imposition of administrative fines ranging
from Php 5,000 to Php 150,000 and an additional fine of up to Php 1,000 for each day of
continuing violation; cancellation or withholding of any permit, license, or registration granted or
being secured from the IPO; the assessment of damages; censure; and other analogous penalties
or sanctions.

What arguments and grounds will you use to acquire better rights on the mark? How will
you conduct your research. Give legal support.

What is infringement9
Intellectual property law gives the rights to the owner of the property permitting him to do
certain acts in respect of the things in which the right subsists. Any person who does one of these
acts without the permission or authority of the right-owner is said to infringe the right unless the
act concerned is permitted by law or a defence applies. Thus, it is usual to speak of an
infringement of copyright or or to say that a patent has been infringed.
Nature of infringement10
Infringement of a copyright is a trespass on a private domain owned and occupied by the owner
of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy,
which is synonymous term in connection, consists in 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 the
statute on the owner of the copyright.
Damage is not an element in an infringement suit11
It is not required that the plaintiff copyright owner establish that damage was caused to him. The
right of the owner of copyright is not determined or measured by the amount of actual damages

9 Funa, supra note 1, at 672.

10 Id. at 673.
11 Id. at 673.
to him by reason of the infringement. Copyright is a right of property, and he is entitled to come
to the court for the protection of that property, even though he does not show or prove actual
damages.
Determination of valid copyright during determination of probable cause in an infringement
case12
The trial court has the jurisdiction to delve into and resolve the issue of whether the petitioner’s
work is copyrightable. Thus, in determining probable cause for a search warrant, the trial court
may determine the ownership of a valid copyright. Where the trial judge is satisfied that no
copyright exists, he may refuse the application for a search warrant or already issued.
Remedies; Infringement (Section 155 of the Intellectual Property Code)
Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark or the same container or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or services including other preparatory
steps necessary to carry out the sale of any goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon
or in connection with the sale, offering for sale, distribution, or advertising of goods or services
on or in connection with which such use is likely to cause confusion, or to cause mistake, or to
deceive, shall be liable in a civil action for infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual
sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)
Remedies for Infringement (Section 216.1 of the Intellectual Property Code)
Any person infringing a right protected under this law shall be liable:
(a) To an injunction restraining such infringement. The court may also order the defendant to
desist from an infringement, among others, to prevent the entry into the channels of
commerce of imported goods that involve an infringement, immediately after customs
clearance of such goods.
(b) Pay to the copyright proprietor or his assigns or heirs such actual damages, including
legal costs and other expenses, as he may have incurred due to the infringement as well
as the profits the infringer may have made due to such infringement, and in proving
profits the plaintiff shall be required to prove every element of cost which he claims, or,
in lieu of actual damages and profits, such damages which to the court shall appear to be
just and shall not be regarded as penalty.
(c) Deliver under oath, for impounding during the pendency of the action, upon such terms
and conditions as the court may prescribe, sales invoices and other documents evidencing

12 Id. at 675.
 sales, all articles and their packaging alleged to infringe a copyright and implements for
making them.
(d) Deliver oath for destruction without any compensation all infringing copies or devices, as
well as plates, molds, or other means for making such infringing copies as the court may
order.
(e) Such other terms and conditions, including the payment of moral and exemplary
damages, which the court may deem proper, wise and equitable and the destruction of
infringing copies of the work even in the event of acquittal in a criminal case.
Kinds of infringement13
a. Direct Infringement
Copyright id deemed infringed by any person who, without the consent of the owner of the
copyright, does anything the sole right to do which is by law conferred on the owner of the
copyright. There is no infringement if there was no direct copying or use of another’s work no
matter the degree of similarity since the similarity could be due to “mere chance” There must be
proof of copying in addition to the similarity or somewhat similarity. The method of
reproduction or copyright is immaterial, what is considered is the result.
An exact reproduction is not required a substantial reproduction will suffice to constitute
infringement. “Substantial” refers also to quality and not only quantity. Copying vital portions,
though a minimal part of the complete work, any constitute infringement. To determine the
substantiality of the infringement, all circumstances are to be considered.
Examples of Direct Infringement:
i. Infringement by reproduction - This is the foremost act of infringement. An
author is granted the exclusive right to produce, reproduce, in whole or in a part,
in any form, his creation. Reproduction in a form different from the original form
is prohibited. Thus, reproduction of written work in the form of sound recordings,
braille, film or stenography constitutes infringement.
ii. Unauthorized Translations- The right to translate expressly include in copyright.
A copyright holder may restrain the publication of an unauthorized translation.
iii. Unauthorized Public Performance of a work- “Performance” was defined as “any
acoustic presentation of any dramatic action in a work, including such a
representation made by means of any mechanical instrument.” It is recognized
that the author has the exclusive right of performance in public. Accordingly,
there is infringement if the performance is held in any place. The determination of
what constitutes a public place is a question of fact. The objective of profit is not
necessary.

b. Indirect Infringement
This pertains to dealings with works of direct infringements. This should expressly penalized in
the statute and would be just to penalize only those who knowingly deal with the infringing
copies. Knowledge may be implied from the circumstances. Dealings would pertain to sale,

13 Id. at 676-677.
rental, exhibition in public, distribution, importation, or offer to sell, rent, exhibit, or distribute,
importation.
What are Moral Rights14

Moral rights refer to the rights that the author of a work of copyright has, independent to the
economic rights of the copyright owner. The moral rights are: to be identified as the author of the
work and to be able to object to a derogatory treatment of the work. These rights leave the author
with some control over his work even if he does not own the copyright. Any person also has a
right, under copyright law, not to have a work falsely attributed to him.

Scope of Moral Rights (Section 193 of the Intellectual Property Code)

The author of a work shall, independently of the economic rights in Section 177 or the grant of
an assignment or license with respect to such right, have the right:

193.1. To require that the authorship of the works be attributed to him, in particular, the right that
his name, as far as practicable, be indicated in a prominent way on the copies, and in connection
with the public use of his work.

193.2. To make any alterations of his work prior to, or to withhold it from publication

193.3. To object 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

193.4. To restrain the use of his name with respect to any work not of his own crearion of in a
distorted version of his work.

International disagreement over Moral Rights15

Moral rights is one of the several aspects of copyright where nations still differ. Thus, the
enumeration of rights comprising moral rights under the Philippine Intellectual Property Code
may differ from the moral right recognized.

Moral rights are inalienable and non-transferable16

Section 193 of the Intellectual Property Code provides that the author of a work shall enjoy his
moral rights independently of the economic rights in section 177 or the grant of an assignment or
license with respect to such right. As a consequence and by clear implication, moral rights are
inalienable and non-transferable.

Moral rights under the Berne Convention17

14 Id. at 641.
15 Funa, supra note 1, at 641-642.
16 Id. at 642.
17 Id.
The concept of moral rights was incorporated in the Berne Convention when it was revised at
Rome on June 2, 1928 (The Rome Act of 1928).

The collection of rights under the Moral Rights18

The four rights comprising the collection of rights known as the Moral Rights under Section 193
of the Intellectual Property Code:

a. The Paternity Right also known as the right to be identified or Right of attribution- The
right to be identified as the author of a work (Sec. 193.1)

i. Paternity right:
- Is the right to “require that the authorship of the work be attributed to him,
in particular, the right that his name, as far as practicable, be indicated in a
prominent way on the copies, and in connection with the public use of his
work.
- The right which “restricts any person, without license, from inserting or
affixing the name of another in or on a work of which that other is not the
author, or in or on reproduction of such work, in such ways as to imply
that the other person is the author of the work.

ii. Paternity right; to which “name” attributed

- The authorship must be attributed to the author’s name. This “name”
should be understood to include his initials or a monogram or a
pseudonym. Note that the author however, has the right not to be named as
he may desire to be anonymous or to use a pseudonym.

b. The Right to Withhold Publication also called the Right of disclosure- the right to make
alterations of his work prior to or to withhold it from publication (Sec. 193.2)

c. The Integrity Right or the Right to Object to Derogatory Treatment of the work- The
right 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 (Sec.
193.3)

d. Right against False Attribution of a work- The right 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.
193.4)

Moral Rights not expressly granted under the Intellectual Property Code19

● One moral right recognized by other jurisdictions and authorities, but is not recognized in
the Philippines is the so-called “Right to Withdraw”. It may sometimes happen that, the
author’s thoughts or opinions on issues exposed in the work change and that the work no

18 Id.
19 Id. at 644.
 longer reflects his or her intellectual or artistic views. In case where this occurs after the
work has been lawfully brought to the public, the author cannot resort to the disclosure
right to prevent it from being distributed. Nevertheless, some copyright laws grant the
author the right to withdraw the work from the market.
● “Since the withdrawal affects the interests of those who have already acquired the right to
use the work, the right of withdrawal is normally subject to a range of conditions. Such
conditions are designed to take into account the legitimate interests of the persons who
have entered into contractual agreements with the author.

GUIDE QUESTION D: If FICA Corporation wishes to have its mark registered

internationally, how will this be done? How will it find existing similar marks, the dates of the
registration, registration number, classes of goods, and other details?

If FICA Corporation wishes to have its mark registered internationally, how will this be
done?

FICA may choose to file an application with the (a) national office of the Contracting State of
which the applicant (or at least one of the applicants) is a national or resident or (b) with the
International Bureau of WIPO. A resident or national of the Philippines may file with the IPO
Philippines or with the International Bureau (IB) of the World Intellectual Property Organization
(WIPO).

Application filed with WIPO’s Madrid System20

The international trademark system is called the Madrid System or the Madrid Protocol. And this
is administered by the World Intellectual Property Organization (WIPO) which is located in
Geneva, Switzerland. The Madrid System allows you to have a trademark protected in several
countries by filing an application directly with your own member country and the Philippines is a
member. The trademark registration granted through the Madrid Protocol is valid for 10 years
from the date of registration. You can renew the registration at the end of each 10-year period
directly with WIPO with effect in the designated Contracting Parties concerned.

FICA can register in the Madrid system to have its mark registered internationally. This can be
done through:21

20 The Balance Small Business, How do I register a trademark or service mark internationally, available at
https://www.wipo.int/pct/en/faqs/faqs.html (last accessed Oct. 25, 2019).
21 World Intellectual Property Organization, How the Madrid system works, available at

https://www.wipo.int/madrid/en/how_madrid_works.html (last accessed Oct. 25, 2019).

 1. Application through your National or Regional IP Office (Office of origin)

Before filing for international application, you need to have already registered, or have filed an
application in your “home” IP office. The registration or application is known as the basic mark.
You then need to submit your international application through this same IP Office, which will
certify and forward it to WIPO.

2. Formal Examination by WIPO

WIPO only conducts a formal examination of your international application. Once approved,
your mark is recorded in the International Register and published in the WIPO Gazette of
International Marks. WIPO will then send you a certificate of your international registration and
notify the IP Offices in all the territories where you wish to have your mark protected.

3. Substantive examination by National or Regional IP Offices (Office of the designated

Contracting Party)

The IP Offices of the territories where you want to protect your mark will make a decision within
the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will
record the decisions of the IP Offices in the International Register and then notify you.

Here’s how to file:

a. Filing online (https://www.ipophil.gov.ph/services/trademark/madrid-protocol/) to get the

MM2 Form. The form can be accessed here:
https://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2.pdf?fbclid=IwA
R3CmXJhGKFcocSLwUncPgTHhEqEzrZEuxH_hz_nctzNRKzWTf0jQSRIoZk
b. After answering the said form you can file the form with the IPOPHL as the office of
origin.
c. Pay the handling fee of Php 2, 617.92 at the cashier, ground floor in the IPOPHL.
d. Submit the MM2 Form with the stamped Statement of Accounts (SOA) to the cashier
 e. You can also track your application through the Madrid Monitor
(https://www.wipo.int/madrid/monitor/en/)
f. Once approved, your mark is recorded in the International Register and published in the
WIPO Gazette of International Marks. WIPO will then send you a certificate of your
international registration and notify the IP Offices in all the territories where you wish to
have your mark protected.

If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect
the decisions of other IP Offices. You can contest a refusal decision directly before the IP Office
concerned in accordance with its legislation. If an IP Office accepts to protect your mark, it will
issue a statement of grant of protection.

The international registration of your mark is valid for 10 years. The registration may be renewed
at the end of each 10-year period directly with WIPO with effect in the designated Contracting
Parties concerned.

How will it find existing similar marks, the dates of the registration, registration number,
classes of goods, and other details?

Prior to proceeding to file an application, FICA may access detailed information, including
existing similar marks, the dates of the registration, registration number, classes of goods, images
(if available) and other details, of all trademarks registered through the Madrid System at the
WIPO IP Portal https://www3.wipo.int/branddb/en/
(https://www3.wipo.int/madrid/monitor/en/index.jsp#gazette).

FICA may also check the official publication of the Madrid System, WIPO Gazette of
International Marks which publishes weekly data regarding new international registrations,
renewals, subsequent designations and modifications affecting existing international
registrations. Some of the most common information available are the following:22

1. Numbers - numbers associated with each record.

a. International Registration Number - numbers assigned to the record at the time of

publication. This is the most common reference number used to describe a
particular record.
b. Basic number - basic registration or application number associated with each
international registration.
c. Priority Number - priority number listed in any of the priority information fields
listed for the record.
d. Reference Number - international marks associated with a particular internal
WIPO reference number. This number is typically only of interest to the holders
of marks, and can be found in the Realtime status tab of each individual record.

22 World Intellectual Property Organization, Madrid monitor help, available at

https://www3.wipo.int/madrid/monitor/en/ (last accessed Oct. 25, 2019).
2. Mark - text terms directly related to the trademark.Trademark can be found for exact
matches of the search terms, terms that sounded like the search term, terms that are
spelled similarly to the search term.

a. Trademark - textual elements of the mark.

3. Names - names associated with each record.

a. Holder - names contained in the holder of each record.

b. Representative - names listed as legal representatives in each record.
c. Prev. Holder - names contained in the previous holder of each record, if the mark
has been transferred.

4. Date - dates associated with each record.

a. The Registration Date- matches each record's registration date, if it has one.
Records that are pending may not include a registration date.
b. The Expiration Date- matches the expiration date of each record, if it has one.
Records for which an expiration date is not available, or which correspond to
types of records which do not expire will have no expiration date.
c. The Publication Date- matches each record's publication date.
d. The Priority Date- matches the date listed in any of the priority information listed
for the registration.

5. Classification - any classifications and related information associated with the records in
Madrid database. The types of classification information fields available are:

a. Nice Class - contains numerical codes that describe the Goods and Services
associated with the brand. You can search either directly for nice codes (i.e. '30')
or enter terms that are contained in the official Nice classification standard (i.e.
'coffee').
b. Goods/Services - contains the actual text of the list of goods and services
associated with each registration.
c. Vienna Class- contains numerical codes that describe the visual appearance of the
image associated with each record (if any). You can search for classifications that
match descriptive terms (i.e. 'dog') or codes (i.e. '03.08').

6. Country - any countries associated with each record. You can enter standard country
codes (i.e. 'AR' for Argentina) or enter the name of the country.

a. Origin- contains the country of origin for the record. This is usually the national
office of the original applicant.
b. Designation- contains countries that have been listed as affected by the record.
The exact meaning of this is a complex legal issue, and you should consult the
details for each record to determine its particular status.
 c. Priority- contains the office of origin for any priority information associated with
each record.
d. Holder Country- contains the country code of the address associated with the
holder on the mark.

7. Status - current status of an application

a. Active- is any record that is currently in force

b. Pending- is any record that is not yet in force, but is pending examination
c. Expired - is any record that has been removed from Active status through
expiration, withdrawal or other means. Note that for Madrid registrations, records
remain in Active status for 6 months after the expiration date.

Application filed with IPO under the Patent Cooperation Treaty23

Registration can be done via the Intellectual Property Office of the Philippines under the
International Phase: Patent Cooperation Treaty (PCT) if the subject of the application is an
invention. An international patent application is an application filed via the Patent Cooperation
Treaty (PCT). A resident or national of the Philippines may file an international application. If
there are two or more applicants, the right to file an international application shall exist if at least
one of them is a resident or national of the Philippines. It may be filed in paper format or through
ePCT
(https://pct.wipo.int/authpage/signin.xhtml?goto=https%3A%2F%2Fpct.wipo.int%3A443%2FeP
CT%2F).

Prior to granting the international patent application, International Searching Authorities (ISAs)
conduct International Search. This is usually done by the competent ISA such as Intellectual
Property Office of the Philippines, Australian Patent Office, European Patent Office, Japan
Patent Office, Korean Intellectual Property Office, United States Patent and Trademark Office.
Applicants may also have International Preliminary Examining Authorities (IPEAs) to conduct
international preliminary examination for applications filed. It provides you with an even
stronger basis on which to evaluate your chances of obtaining patents, in most cases on an
amended application, and, if the report is favorable, a stronger basis on which to continue with
your application before the national and regional patent Offices. The decision on the granting of
a patent remains the responsibility of each of the national or regional Offices in which you enter
the national phase.

A PCT international search is a high quality search of the relevant patent documents and other
technical literature in those languages in which most patent applications are filed (Chinese,
English, German and Japanese, and in certain cases, French, Korean, Russian and Spanish). The
high quality of the search is assured by the standards prescribed in the PCT for the
documentation to be consulted, and by the qualified staff and uniform search methods of the
ISAs, which are all experienced patent Offices. The results are published in an international
search report and a written opinion of the ISA on the potential patentability of your invention.

23 World Intellectual Property Organization, PCT FAQs, available at

https://www.wipo.int/pct/en/faqs/faqs.html (last accessed Oct. 25, 2019).
Here’s how you can file:

Patents are territorially limited. In order to protect your invention in multiple countries you have
a few options:

(a) Direct or Paris route: you can directly file separate patent applications at the same time in all
of the countries in which you would like to protect your invention (for some countries, regional
patents may be available) or, having filed in a Paris Convention country (one of the Member
States of the Paris Convention for the Protection of Industrial Property), then file separate patent
applications in other Paris Convention countries within 12 months from the filing date of that
first patent application, giving you the benefit in all those countries of claiming the filing date of
the first application

(b) PCT route: you can file an application under the PCT, directly or within the 12-month period
provided for by the Paris Convention from the filing date of a first application, which is valid in
all Contracting States of the PCT and, therefore, simpler, easier and more cost-effective than
both, direct or Paris route filings.

Paris Convention24

The Paris Convention applies to industrial property in the widest sense, including patents,
trademarks, industrial designs, utility models (a kind of "small-scale patent" provided for by the
laws of some countries), service marks, trade names (designations under which an industrial or
commercial activity is carried out), geographical indications (indications of source and
appellations of origin) and the repression of unfair competition.

 Trade Names. Protection must be granted to trade names in each Contracting State
without there being an obligation to file or register the names.

 Marks. The Paris Convention does not regulate the conditions for the filing and
registration of marks which are determined in each Contracting State by domestic law.
Consequently, no application for the registration of a mark filed by a national of a
Contracting State may be refused, nor may a registration be invalidated, on the ground
that filing, registration or renewal has not been effected in the country of origin. The
registration of a mark obtained in one Contracting State is independent of its possible
registration in any other country, including the country of origin; consequently, the lapse
or annulment of the registration of a mark in one Contracting State will not affect the
validity of the registration in other Contracting States.

Where a mark has been duly registered in the country of origin, it must, on request, be
accepted for filing and protected in its original form in the other Contracting States.
Nevertheless, registration may be refused in well-defined cases, such as where the mark

24World Intellectual Property Organization, Summary of the Paris Convention for the protection of the
industrial property, available at https://www.wipo.int/treaties/en/ip/paris/summary_paris.html (last
accessed Oct. 25, 2019).
 would infringe the acquired rights of third parties; where it is devoid of distinctive
character; where it is contrary to morality or public order; or where it is of such a nature
as to be liable to deceive the public.

If, in any Contracting State, the use of a registered mark is compulsory, the registration
cannot be canceled for non-use until after a reasonable period, and then only if the owner
cannot justify this inaction.

Each Contracting State must refuse registration and prohibit the use of marks that
constitute a reproduction, imitation or translation, liable to create confusion, of a mark
used for identical and similar goods and considered by the competent authority of that
State to be well known in that State and to already belong to a person entitled to the
benefits of the Convention.

Each Contracting State must likewise refuse registration and prohibit the use of marks
that consist of or contain, without authorization, armorial bearings, State emblems and
official signs and hallmarks of Contracting States, provided they have been
communicated through the International Bureau of WIPO. The same provisions apply to
armorial bearings, flags, other emblems, abbreviations and names of certain
intergovernmental organizations.

Collective marks must be granted protection.

GUIDE QUESTION E: If FICA Corporation has distinct bottle design, how will it know if
there are other similar existing bottle designs?25

If there are other existing similar bottle designs FICA can go to the Intellectual Property Office
to ascertain existing bottle designs, in relation to FICA Corporations’s Distinct Bottle Design.
All the Industrial Designs and Layout-Designs (Topographies) of Integrated Circuits are
protected and registered under the Intellectual Property Code. An Industrial Design is any
composition of lines or colors of any three-dimensional form, whether or not associated with
lines or colors: Provided That such composition or form gives a special appearance to and can
serve as a pattern for an industrial product or handicraft.

From the definitions provided “Any three-dimensional form” which FICA Corporations distinct
bottle falls under, if the layout-design is registered then it shall be protected under Sec. 113.3 of
the Intellectual Property Code, which states “Only layout-designs of integrated circuits that are
original shall benefit from protection under this Act. A layout design is considered original if it is
the result of its creator’s own intellectual effort designs and manufacturers of integrated circuits
at the time of its creation.

In cases wherein there is a similar design to FICA Corporation’s bottle design. It is mentioned
under Sec. 115 of the IP Code that two (2) or more industrial designs may be the subject of the

25 Narciso M. Aguilar, The Intellectual Property Code (2004).

same application: Provided, that they relate to the same subclass of the International
Classification or to the same set of composition of articles.

To cite the case of Godines vs. Court of Appeals, wherein there is a similarity in the design of
power tillers and their facts of the case stated that power tillers used and acquired by SV-Agro
Industries Enterprises Inc., altogether with its patent. Notified Pascual Godines in relation to its
existing patent and another issue which resulted to the decline of SV-Agro Industries Enterprises
Inc decline in sales by 50%. Demanded the latter to stop selling and manufacturing similar power
tillers. The case reiterated in relation to this subject matter,

Viewed from any perspective or angle, the power tiller of the defendant is identical and similar
to that of the turtle power tiller of plaintiff in form, configuration, design and appearance. The
parts or components thereof are virtually the same. Both have the circularly-shaped vacuumatic
housing float, a pair of paddy in front, a protective water covering, a transmission box housing
the transmission gears, a handle which is V-shaped and inclined upwardly, attached to the side of
vacuumatic housing float and supported by the upstanding G.I. pipes and an engine base at the
top midportion of the vacuumatic housing float to which the engine drive may be attached. The
court ruled in favor of SV-Agro Industries Enterprises Inc, by virtue of its Deed of Assignment
and concluded that it was Infringement.

Infringement is a criminal offense and therefore, punishable and defined under the Intellectual
Property Code under Sec. 217 Criminal Penalties 217.1. Any Person infringing any right secured
by provisions of Part IV of this Act or aiding or abetting such infringement shall be guilty of a
crime punishable by:

(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand
pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense.
(b) Imprisonment of three (3) years and one (1) day to six years plus a fine ranging from One
hundred fifty thousand pesos (P 150,000) to Five hundred thousand pesos (P 500,00) for
the second offense.
(c) Imprisonment of six (6) years and one (1) day to (9) years plus a fine ranging from Five
hundred thousand pesos (P 500,000) to One Million Five Hundred thousand pesos (P
1,500,000) for the third and subsequent offense.