Law on Intellectual Property

Among the major concerns or issues that an IP I. Different Intellectual Property

practitioner commonly encounters in the
Rights
enforcement and prosecution of intellectual
Trademark, copyright and patents are different
property rights are: (1) charging the proper offense
intellectual property rights that cannot be
(i.e., trademark infringement vs. unfair competition,
interchanged with one another.
or copyright infringement vs. patent infringement);
(2) sufficiency of the evidence during search
Trademark
warrant application; (3) sufficiency of the evidence
A trademark is any visible sign capable of
during preliminary investigation; (4) validity of an
distinguishing the goods (trademark) or services
infringer's defense of good faith to an action for
(service mark) of an enterprise and shall include a
infringement or unfair competition; (5) foreign
stamped or marked container of goods. In relation
corporation's capacity to sue; and (6) sufficiency of
thereto, a trade name means the name or
the Information.
designation identifying or distinguishing an
enterprise.
The following discussion addresses these concerns
and will hopefully give the key answers to these
Copyrights
issues.
The scope of a copyright is confined to literary and
artistic works which are original intellectual
creations in the literary and artistic domain
protected from the moment of their creation.
Patents
Patentable inventions refer to any technical solution
of a problem in any field of human activity which is
new, involves an inventive step and is industrially
applicable.
II. Trademark Infringement
Elements of trademark infringement
The elements of trademark infringement, which is
defined under Section 155 of the IP Code, are as
follows:
i. the trademark is registered in the
Philippines;
ii. the trademark is used by another person
in connection with the sale, offering for
sale, or advertising of any goods,
business or services, or such trademark
is reproduced, counterfeited, copied or
colorably imitated by another person
and applied to labels, signs, prints,
packages, wrappers, receptacles or
advertisements intended to be used
upon or in connection with such goods,
business or services;
iii. the trademark is used for similar or
closely related goods;
iv. such act is done without the consent of
the trademark registrant or assignee;
and
v. such use will likely cause confusion,
mistake or deception among the
purchasers/consumers.
Likelihood of Confusion
In cases of trademark infringement, it is not
necessary to prove actual confusion or deception of
the public. What the law merely requires is
"likelihood of confusion." In Philips Export B.V., et
al. vs. Court of Appeals, et al.1 the Supreme Court
held: "Respondents maintain, however, that
Petitioners did not present an iota of proof of actual
confusion or deception of the public much less a
single purchaser or their product who has been
deceived or confused or showed any likelihood of
confusion. It is settled, however, that proof of actual
confusion need not be shown. It suffices that
confusion is probably or likely to occur."
Thus, failure to present proof of actual confusion
does not negate claim of trademark infringement.
As noted in American Wire & Cable Co. v. Director
of Patents,2 the Trademark Law requires the less
stringent standard of "likelihood of confusion" only.
While proof of actual confusion is the best evidence
of infringement, its absence is inconsequential.3
Confusion of Goods v. Confusion of
Business
There are two types of confusion in trademark
infringement: confusion of goods and confusion of
business.
"Confusion of goods" is evident where the
conflicting marks are actually in competition, i.e.,
the products are directly competitive.
"Confusion of business" may arise between non-
competing goods. Thus, there is likelihood of
confusion when, although the goods of the parties
are different, they are so related that the
defendant's product can reasonably be assumed to
originate from the plaintiff. "ANG TIBAY," which was
used both as trade name and trademark for
slippers and shoes, was not allowed to be
registered by a junior applicant for use on shirts
and pants.
Dominancy Test v. Holistic Test
In determining likelihood of confusion,
jurisprudence has developed two tests, the
dominancy test and the holistic test.
The Dominancy Test
The dominancy test considers the dominant or
prevalent features of the competing marks in
determining whether they are confusingly similar.
Courts give greater weight to the similarity of the
appearance of the product arising from the
adoption of the dominant features of the registered
mark, disregarding minor differences.4 Courts will
consider more the aural and visual impressions
created by the marks in the public mind, giving little
weight to factors like prices, quality, sales outlets
and market segments.
Similarity in size, form and color, while relevant, is
not conclusive. If the competing trademark contains
the main or essential or dominant features of
another, and confusion and deception is likely to
result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that
the infringing label should suggest an effort to
imitate.5
The test of dominancy is explicitly incorporated into
law in Section 155.1 of the IP Code which defines
infringement as the "colorable imitation of a
registered mark . . . or a dominant feature thereof."
The Holistic Test
The holistic test requires the court to consider the
entirety of the marks as applied to the products,
including the labels and packaging, in determining
confusing similarity. Factors such as age, training
and education of the usual purchaser, the nature
and cost of the article, whether the article is bought
for immediate consumption and also the conditions
under which it is usually purchased are considered.
III. Unfair Competition
A person who has identified in the mind of the
public the goods he manufactures or deals in, his
business or services from those of others, whether
or not a registered mark is employed, has a
property right in the goodwill of the said goods,
business or services so identified, which will be
protected in the same manner as other property
rights.
Any acts calculated to result in the passing off of
other goods for those of the one having established
such goodwill is "unfair competition."
A name or phrase incapable of appropriation as a
trademark or trade name may, by long and
exclusive use by a business (such that the name or
phrase becomes associated with the business or
product in the mind of the purchasing public, i.e., it
has become "distinctive" or "well-known"), be
entitled to protection against unfair competition.
The essential elements of an action for unfair
competition are:
a. The offender gives his goods the general
appearance of the goods of another
manufacturer or dealer;
b. The general appearance is shown in the (1)
goods themselves, (2) wrapping of their
packages, (3) device or words therein, or in
(4) any other feature of their appearance.
c. There is confusing similarity in the general
appearance of the goods.
d. There is intent to deceive the public and
defraud a competitor.
Passing Off
Passing off (or palming off) takes place where the
defendant, by imitative devices on the general
appearance of the goods, misleads prospective
purchasers into buying his merchandise under the
impression that they are buying that of his
competitors.6 Thus, the defendant gives his goods
the general appearance of the goods of his
competitor with the intention of deceiving the public
that the goods are those of his competitor.
Confusing Similarity
The confusing similarity may or may not result from
similarity in the marks, but may result from other
external factors in the packaging or presentation of
the goods.
Intent to Deceive or Defraud
The intent to deceive and defraud may be inferred
from the similarity of the appearance of the goods
as offered for sale to the public.7 Actual fraudulent
intent need not be shown.8
IV. Trademark Infringement vs. Unfair
Competition
Trademark infringement is a form of unfair
competition
Unfair competition is broader than trademark
infringement and includes passing off goods with or
without trademark infringement. Trademark
infringement is a form of unfair competition.9
Trademark infringement constitutes unfair
competition when there is not merely likelihood of
confusion, but also actual or probable deception on
the public because of the general appearance of
the goods. There can be trademark infringement
without unfair competition as when the infringer
discloses on the labels containing the mark that he
manufactures the goods, thus preventing the public
from being deceived that the goods originate from
the trademark owner.10
Tests/Indications Whether an Act Constitutes
Trademark Infringement, Unfair Competition, or
Both
In McDonald's Corp., et al. v. L.C. Big Mak
Burger,11 the SC laid down certain tests or
indications whether an act constitutes trademark
infringement, unfair competition, or both. Thus:
Respondents' goods are hamburgers which are
also the goods of petitioners. If respondents sold
egg sandwiches only instead of hamburger
sandwiches, their use of the "Big Mak" mark would
not give their goods the general appearance of
petitioners' "Big Mac" hamburgers. In such case,
there is only trademark infringement but no unfair
competition. However, since respondents chose to
apply the "Big Mak" mark on hamburgers, just like
petitioner's use of the "Big Mac" mark on
hamburgers, respondents have obviously clothed
their goods with the general appearance of
petitioners' goods.
Lack of notice to the public that the "Big Mak"
hamburgers are products of "L.C. Big Mak Burger,
Inc." and not those of petitioners clearly shows
respondents' intent to deceive the public. Had
respondents placed a notice on their plastic
wrappers and bags that the hamburgers are sold by
"L.C. Big Mak Burger, Inc.," then they could validly
claim that they did not intend to deceive the public.
In such case, there is only trademark infringement
but no unfair competition.
Distinctions between trademark infringement and
unfair competition
Infringement of trademark is the unauthorized use
of a trademark; unfair competition is the passing off
of one's goods as those of another;
Registration of trademark is a prerequisite to an
action for trademark infringement. Whereas, an
action for unfair competition may be brought not
only by persons who have registered their
trademarks but also by those who have long been
using them, although they may not have registered
the same.
In infringement of trademark, fraudulent intent is
unnecessary, whereas in unfair competition,
fraudulent intent is essential;
An action for unfair competition may be brought not
only by persons who have registered their
trademarks but also by those who have long been
using them, although they may not have registered
the same.
V. Copyright Infringement
Infringement of copyright or piracy 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 statute on the owner of the
copyright.
The most common modes of committing copyright
infringement are (a) violation of Section 177.1 of
the IP Code (unauthorized reproduction of the work
or substantial portion of the work; and (b) Section
217.3 of the IP Code (sale and distribution of
infringing copies of the work). The essence of
copyright infringement in these cases is the
similarity or at least substantial similarity of the
purported pirated works to the copyrighted work.
In determining the question of infringement, the
amount of matter copied from the copyrighted work
is an important consideration. To constitute
infringement, 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.12
VI. Copyright vs. Patent Rights
Copyright and patent rights are completely distinct
and separate from one another, and the protection
afforded by one cannot be used interchangeably to
cover items or works that exclusively pertain to the
other.
Distinctions between Copyrights and Patents
The scope of a copyright is confined to literary and
artistic works which are original intellectual
creations in the literary and artistic domain
protected from the moment of their creation. It
specifically includes computer programs, books,
pamphlets, articles, and other writings, among
others.
Patentable inventions, on the other hand, refer to
any technical solution of a problem in any field of
human activity which is new, involves an inventive
step and is industrially applicable. It may be a
product, or process, or an improvement of any of
the foregoing.
Works are protected by the sole fact of their
creation; hence, copyright subsists from the
moment of their creation. The enjoyment and the
exercise of these rights are not subject to any
formality.
Whereas, in patents the rule is: no patent, no
protection. To be able to effectively and legally
preclude others from copying and profiting from the
invention, a patent is a primordial requirement.
Copyright is strictly confined to the description or
expression of the objects and not the objects
themselves. Thus, by publishing a book without
getting a patent for the art contained therein, the art
is given to the public.
Useful Articles and Works of Industrial Design
Useful articles and works of industrial design are
not copyrightable. A useful article may be
copyrightable only if, and only to the extent that,
such design incorporates pictorial, graphic, or
sculptural features that can be identified separately
from, and are capable of existing independently of
the utilitarian aspects of the article.
Examples
Leaf spring eye bushing for automobile made up of
plastic. Although it is registered with the Copyright
Office, the Supreme Court held that the same may
not be considered as a work of applied art, but a
useful article, i.e., one having an intrinsic utilitarian
function that is not merely to portray the
appearance of the article or to convey
information.13
Statuettes of dancing male and female figures
which are used as bases for table lamps, with
electrical wirings, sockets and lampshades
attached. The US Supreme Court declared that
they are copyrightable works of art or models or
designs for works of art.14
Advertising display units or light boxes were
registered with the Copyright Office under Class
"O" works, namely: prints, pictorial illustrations,
advertising copies, labels, tags, and box wraps.
The SC said that copyright protection extended
only to the technical drawings within the category of
"pictorial illustrations" and not to the light box itself.
Hence, there could be copyright infringement only if
there is reprinting of the technical drawings for
purposes of sale to the public without license from
the copyright owner.
Since no patent for the light boxes was obtained,
no patent rights were therefore acquired to protect
the invention, if any. The copyright owner cannot
therefore prevent others from manufacturing the
object depicted in the drawings.
In another case, copyright registration was obtained
for a drawing showing a novel bridge approach to
unsnarl traffic congestion. It was held that
protection of the drawing does not extend to the
unauthorized duplication of the object drawn
because copyright extends only to the description
or expression of the object and not to the object
itself. It does not prevent one from using the
drawings to construct the object portrayed in the
drawing.15
Works of Architecture
Section 186 of the IP Code, however, may be
considered an exception to the above. It refers to
architectural works and specifically provides that:
Copyright in a work of architecture shall include the
right to control the erection of any building which
reproduces the whole or a substantial part of the
work either in its original form or in any form
recognizably derived from the original: Provided,
That the copyright in any such work shall not
include the right to control the reconstruction or
rehabilitation in the same style as the original of a
building to which that copyright relates.
VII. Probable Cause
In Search Warrant Cases
In Philippine jurisprudence, probable cause for the
issuance of a search warrant has been uniformly
defined as such facts and circumstances which
would lead a reasonable, discreet and prudent man
to believe that an offense has been committed, and
that the objects sought in connection with the
offense are in the place sought to be searched.
"Probable cause" has been understood to mean a
reasonable ground of suspicion, supported by
circumstances sufficiently strong in themselves to
warrant a cautious man in the belief that the person
accused is guilty of the offense with which he is
charged, or the existence of such facts and
circumstances as would excite an honest belief in a
reasonable mind acting on all the facts and
circumstances within the knowledge of the
magistrate that the charge made by the applicant
for the warrant is true.
Probable cause does not mean actual and positive
cause, nor does it import absolute certainty. The
determination of the existence of probable cause is
not concerned with the question of whether the
offense charged has been or is being committed in
fact, or whether the accused is guilty or innocent,
but only whether the affiant has reasonable
grounds for his belief. The requirement is less than
certainty or proof, but more than suspicion or
possibility.
The facts warranting the conclusion of probable
cause must be assessed at the time of such judicial
determination by necessarily using legal standards
then set forth in law and jurisprudence, and not
those that have yet to be crafted thereafter.
In 20th Century Fox Film Corp. v. Court of Appeals
(G.R. Nos. L-76649-51, 19 August 1988), an
applicant for search warrant is required to present
to the court the copyrighted films to compare them
with the purchased evidence of the video tapes
allegedly pirated to determine whether the latter is
an unauthorized reproduction of the former. This
linkage of the copyrighted films to the pirated films
must be established to satisfy the requirements of
probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve as
basis for the issuance of a search warrant.
This requirement, however, was relaxed by the
Supreme Court in Columbia Pictures, Inc. v. Court
of Appeals, et al. (G.R. No. 110318, 28 August
1996). It was explained that the supposed
pronunciamento in said case regarding the
necessity for the presentation of the master tapes
of the copyrighted films for the validity of search
warrants should at most be understood to merely
serve as a guidepost in determining the existence
of probable cause in copyright infringement cases
where there is doubt as to the true nexus between
the master tape and the pirated copies. Said
directive was hardly intended to be a sweeping and
inflexible requirement in all or similar copyright
infringement cases.
Thus, the Supreme Court said: "It is evidently
incorrect to suggest, as the ruling in 20th Century
Fox may appear to do, that in copyright
infringement cases, the presentation of master
tapes of the copyrighted films is always necessary
to meet the requirement of probable cause and
that, in the absence thereof, there can be no finding
of probable cause for the issuance of a search
warrant. It is true that such master tapes are object
evidence, with the merit that in this class of
evidence the ascertainment of the controverted fact
is made through demonstrations involving the direct
use of the senses of the presiding magistrate. Such
auxiliary procedure, however, does not rule out the
use of testimonial or documentary evidence,
depositions, admissions or other classes of
evidence tending to prove the factum probandum,
especially where the production in court of object
evidence would result in delay, inconvenience or
expenses out of proportion to its evidentiary value."
In Preliminary Investigation
When a fiscal investigates a complaint in order to
determine whether he should file charges with the
court against the person complained of, the scope
of the investigation is far short of a trial of an
accused before the court. It is not required that all
reasonable doubt of the guilt of the accused must
be removed; it is only required that the evidence be
sufficient to establish probable cause that the
accused committed the crime charged.16
The preliminary investigation is not the occasion for
the full and exhaustive display of the parties'
evidence. It is for the presentation of such evidence
as may engender a well-grounded belief that an
offense has been committed and that the accused
is probably guilty thereof.17
It is a means of discovering the persons who may
be reasonably charged with a crime.18 The validity
and merits of a party's defense and accusation, as
well as admissibility of testimonies and evidence,
are better ventilated during trial proper than at the
preliminary investigation level.19 The accused has
to prove his allegations when his turn to present
defense evidence comes because these allegations
are matters of defense to be proven in Court.20
VIII. Is Good Faith a Defense to
Violations of the IP Code?
Violations of special laws such as the IP Code are
deemed acts mala prohibita. In acts mala prohibita,
the only inquiry is "has the law been violated?" It is
not necessary that the offender should have acted
with criminal intent. In many crimes made such by
statutory enactment, the intention of the person
who commits the crime is entirely immaterial. This
is necessarily so. If it were not, the statute as a
deterrent influence would be substantially
worthless. It would be impossible of execution. In
many cases, the act complained of is itself that
which produces the pernicious effect the statute
seeks to avoid. In those cases the pernicious effect
is produced with precisely the same force and
result whether the intention of the person
performing the act is good or bad.21
With the exception of unfair competition where
fraudulent intent is an essential element,
infringement of intellectual property rights under the
IP Code does not require criminal intent on the part
of the infringer. Hence, good faith is not a valid
defense.
This is the clear import of the pronouncement made
by the Supreme Court in McDonald's Corp., et al. v.
L.C. Big Mak Burger.22 In that case, it was said
that: "Had respondents placed a notice on their
plastic wrappers and bags that the hamburgers are
sold by "L.C. Big Mak Burger, Inc.," then they could
validly claim that they did not intend to deceive the
public. In such case, there is only trademark
infringement but no unfair competition.
In Columbia Pictures, Inc. v. Court of Appeals, et
al.,23 it was held that 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 what
works he was indirectly copying, or 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.
With respect to infringement of patents, a criminal
action may only be filed upon repetition of
infringement. Evidently, the infringer may no longer
raise good faith as a defense.
IX. Foreign Corporation's Capacity to
Sue
A foreign corporation not doing business in the
Philippines needs no license to sue before
Philippine courts for infringement of trademark and
unfair competition.24
Where the purpose of a suit is to "protect its
reputation, its corporate name, its goodwill,
whenever that reputation, corporate name or
goodwill have, through the natural development of
its trade, established themselves," an unlicensed
foreign corporation may sue in the Philippines. So
interpreted by the Supreme Court, it is clear that
Section 29 of the Corporation Law does not
disqualify a foreign corporation , which does not
have a branch office in any part of the Philippines
and is not 'doing business' in the Philippines, from
filing and prosecuting an action for unfair
competition.25
In La Chemise Lacoste, S.A. vs. Fernandez, et al.
(G.R. No. 65659, 21 May 1984), the Supreme
Court stated that the foreign corporation's capacity
to sue is of not much significance in the main case
since a criminal offense is essentially an act against
the State. The Information shall be in the name of
the People of the Philippines and no longer the
foreign corporation which is only an aggrieved
party. It is the State which is principally the injured
party although there is a private right violated. In
the words of the Supreme Court: "We cannot allow
a possible violator of our criminal statutes to
escape prosecution upon a far-fetched contention
that the aggrieved party or victim of a crime has no
standing to sue."
How are trademark infringement, unfair
competition, and false designation prosecuted?
An IP owner may file a criminal, civil, or
administrative action against an infringer.
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.
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 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.
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.
X. Sufficiency of the Information
Following are model Information for Copyright
Infringement, Trademark Infringement and Unfair
Competition
Copyright Infringement (Section 217.3, IP
Code)
That on the 5th day of October 2000 and for
sometime prior thereto, in the City of Manila,
Philippines, and within the jurisdiction of this
Honorable Court, the above-named accused, in
violation of the above-mentioned law, did then and
there willfully and unlawfully sell, offer for sale and
distribute counterfeit copies of PlayStation
computer games software of various titles, which
the said accused knew and ought to know to be
infringing copies of the PlayStation computer
games software whose copyrights belong to Sony
Computer Entertainment, Inc. (SCEI), in violation of
SCEI's copyrights thereto.
Honorable Court, the above-named accused, in
violation of the above-mentioned law, did then and
there willfully and unlawfully sell, offer for sale and
distribute counterfeit copies of PlayStation
computer games software, and pass them off as
those of Sony Computer Entertainment, Inc. (SCEI)
by using SCEI's trademarks, trade name, logo and
labels which are used by SCEI on its PlayStation
game products, thereby deceiving the public and
defrauding the purchasers of their legitimate trade
and violating SCEI's property rights in the goodwill
of the subject products.
Final Note
The effective enforcement of intellectual property
rights does not end with the seizure of pirated
goods, but must result in the conviction of the
counterfeiters.

Trademark Infringement (Section 155.1, IP

Code)
That on the 5th day of October 2000 and for
sometime prior thereto, in the City of Manila,
Philippines, and within the jurisdiction of this
Honorable Court, the above-named accused, in
violation of the above-mentioned law, did then and
there willfully and unlawfully sell, offer for sale and
distribute counterfeit copies of PlayStation
computer games software bearing unauthorized
reproductions of the "PlayStation" and "PS Device"
marks without the consent of Sony Computer
Entertainment, Inc., the registered owner of the
marks and manufacturer of the PlayStation game
products on which the said marks are used, thereby
creating a likelihood of confusion, mistake and
deception among the consumers.
TO MEMORIZE:
Unfair Competition (Section 168, IP Code)
That on the 5th day of October 2000 and for SECTION 3. International Conventions and
sometime prior thereto, in the City of Manila, Reciprocity. — Any person who is a national or
Philippines, and within the jurisdiction of this
who is domiciled or has a real and effective
industrial establishment in a country which is a
party to any convention, treaty or agreement
relating to intellectual property rights or the
repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal
rights to nationals of the Philippines by law, shall be
entitled to benefits to the extent necessary to give
effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise
entitled by this Act. (n)
In relation to 160:
SECTION 160. Right of Foreign Corporation to
Sue in Trademark or Service Mark Enforcement
Action. — Any foreign national or juridical person
who meets the requirements of Section 3 of this Act
and does not engage in business in the Philippines
may bring a civil or administrative action hereunder
for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false
description, whether or not it is licensed to do
business in the Philippines under existing laws.
(Sec. 21-A, R.A. No. 166a)
SECTION 4. Definitions. —
4.1. The term "intellectual property rights" consists
of:
a. Copyright and Related Rights;
b. Trademarks and Service Marks;
c. Geographic Indications;
d. Industrial Designs;
e. Patents;
f. Layout-Designs (Topographies) of Integrated
Circuits; and
g. Protection of Undisclosed Information (n,
TRIPS).
4.2. The term "technology transfer arrangements"
refers to 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.
4.3. The term "Office" refers to the Intellectual
Property Office created by this Act.
4.4. The term "IPO Gazette" refers to the gazette
published by the Office under this Act. (n)
SECTION 121. Definitions. — As used in Part III,
the following terms have the following meanings:
121.1. "Mark" means 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; (Sec. 38,
R.A. No. 166a)
121.2. "Collective mark" means any visible sign
designated as such in the application for
registration and capable of distinguishing the origin
or any other common characteristic, including the
quality of goods or services of different enterprises
which use the sign under the control of the
registered owner of the collective mark; (Sec. 40,
R.A. No. 166a)
121.3. "Trade name" means the name or
designation identifying or distinguishing an
enterprise; (Sec. 38, R.A. No. 166a)
121.4. "Bureau" means the Bureau of Trademarks;
121.5. "Director" means the Director of
Trademarks;
121.6. "Regulations" means the Rules of Practice in
Trademarks and Service Marks formulated by the
Director of Trademarks and approved by the
Director General; and
121.7. "Examiner" means the trademark examiner.
(Sec. 38, R.A. No. 166a)
SECTION 122. How Marks are Acquired. — The
rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of this law. (Sec. 2-A, R.A. No. 166a)
In Relation to:
SECTION 155. Remedies; Infringement. — 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)
SECTION 165. Trade Names or Business
Names. —
165.1. A name or designation may not be used as a
trade name if by its nature or the use to which such
name or designation may be put, it is contrary to
public order or morals and if, in particular, it is liable
to deceive trade circles or the public as to the
nature of the enterprise identified by that name.
165.2.
a. Notwithstanding any laws or regulations
providing for any obligation to register trade names,
such names shall be protected, even prior to or
without registration, against any unlawful act
committed by third parties.
b. In particular, any subsequent use of the trade
name by a third party, whether as a trade name or
a mark or collective mark, or any such use of a
similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
165.3. The remedies provided for in Sections 153
to 156 and Sections 166 and 167 shall apply
mutatis mutandis.
165.4. Any change in the ownership of a trade
name shall be made with the transfer of the
enterprise or part thereof identified by that name.
The provisions of Subsections 149.2 to 149.4 shall
apply mutatis mutandis.
SECTION 123. Registrability. —
123.1. A mark cannot be registered if it:
a. Consists of immoral, deceptive or scandalous
matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring
them into contempt or disrepute;
b. Consists of the flag or coat of arms or other
insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any
simulation thereof;
c. Consists of a name, portrait or signature
identifying a particular living individual except by his
written consent, or the name, signature, or portrait
of a deceased President of the Philippines, during
the life of his widow, if any, except by written
consent of the widow;
d. 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
to deceive or cause confusion;
e. Is identical with, or confusingly similar to, or
constitutes a translation of a mark which is
considered by the competent authority of the
Philippines to be well-known internationally and in
the Philippines, whether or not it is registered here,
as being already the mark of a person other than
the applicant for registration, and used for identical
or similar goods or services: Provided, That in
determining whether a mark is well-known, account
shall be taken of the knowledge of the relevant
sector of the public, rather than of the public at
large, including knowledge in the Philippines which
has been obtained as a result of the promotion of
the mark;
f. Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to
goods or services which are not similar to those
with respect to which registration is applied for:
Provided, That use of the mark in relation to those 123.3. The nature of the goods to which the mark is
goods or services would indicate a connection applied will not constitute an obstacle to
between those goods or services, and the owner of registration. (Sec. 4, R.A. No. 166a)
the registered mark: Provided further, That the
interests of the owner of the registered mark are
likely to be damaged by such use;

g. Is likely to mislead the public, particularly as to

the nature, quality, characteristics or geographical
origin of the goods or services;

h. Consists exclusively of signs that are generic for

the goods or services that they seek to identify;

i. Consists exclusively of signs or of indications that

have become customary or usual to designate the
goods or services in everyday language or in bona
fide and established trade practice;

j. Consists exclusively of signs or of indications that

may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical
origin, time or production of the goods or rendering
of the services, or other characteristics of the goods
or services;

k. Consists of shapes that may be necessitated by

technical factors or by the nature of the goods
themselves or factors that affect their intrinsic
value;

l. Consists of color alone, unless defined by a given

form; or
m. Is contrary to public order or morality.

123.2. As regards signs or devices mentioned in

paragraphs (j), (k), and (l), nothing shall prevent the
registration of any such sign or device which has
become distinctive in relation to the goods for which
registration is requested as a result of the use that
have been made of it in commerce in the
Philippines. The Office may accept as prima facie
evidence that the mark has become distinctive, as
used in connection with the applicant's goods or
services in commerce, proof of substantially
exclusive and continuous use thereof by the
applicant in commerce in the Philippines for five (5)
years before the date on which the claim of
distinctiveness is made.