DINGLASAN, WENDEL C. ATTY.

ESPINAS
2016-0132 SUNDAY
10AM – 12PM

INTELLECTUAL PROPERTY LAW

FINAL EXAMINATION

PART I

To a gifted person endowed with natural talents, how important is the knowledge of the law on intellectual
property in the acquisition of wealth? Moreover, in the preparation of your IPL Project, did you gain
enough knowledge and understanding of what the subject law is all about?

Please express your views.

Answer:

A gifted person is already blessed with the tools to make it successful in his chosen field. But just
like any other possession, a gifted person who does not know how to properly take care of his
possessions, belongings and riches will soon realize that the fruits of his gifts can be taken away
easier than he expects. Knowing how to protect you intellectual property rights is as paramount as
having a gifted mind. It goes hand in hand in combat. An average person who knows how to
protect his intellectual property rights is better than a gifted person with no knowledge of his
rights.

As I went through with the discussions and readings of my IPL subject, I already realized how
important the subject is in protecting not only my own intellectual properties but also those of the
very people that I promised to serve by taking my law degree. It must be noted how important a
right is to be exercised and how important it is as well to know when your right starts and when it
ends. This subject thought me that even an originator cannot have a right over his creation when
he does not protect his rights that are available under our law. I did not know how equally
interesting and important this subject was until I personally have taken it up.

PART II

Ronald invented a machine that can create an infinite source of clean energy. It’s a wonder machine that
can put the oil industry into oblivion, as well as providing the ultimate solution to the environmental
concern on air pollution.

If this concept is a reality, and you are Ronald, would you have the invention patented?

Assuming Ronald had obtained a Philippines Patent, do you think his invention will be protected in other
countries?

Your discussion.

Answer:

I would have the invention patented because the machine is patentable. The requisites of
patentability such as the novelty, inventive step and industrial applicability are met on this given
invention. Since it is a wonder machine that could not only help the people in general, it could also
help save the environment from the worse effect of pollution and having it patented should not be
out of the question so that his rights may be protected.

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Assuming Ronald had obtained a Philippines patent on the invention, his rights conferred by the
patents may be protected in other countries provided that such countries are also party to a treaty
protecting such rights of the members. His rights under the patent may not be protected in country
which is not a signatory to such treaty.

It is a known fact that developing countries want to have access to new technologies specially related to
the production of goods and to basic services. Explain how these developing countries can make
arrangement to access this technology transfer, and making sure that the contract will not be
disadvantageous to them.

Answer:

For the developing countries to access this technology transfer, they must enter into a voluntary
license contract with the developed countries which have new technologies for the production of
goods and basic services. The developed countries must make sure that the licensing contract will
not contain any prohibited clause because such clauses will work to the disadvantage of the
licensee. These clauses will ensure that the licensor will not have an undue control on how the
licensee operates his business. The licensee must also be made aware that he has a right to
exploit the subject matter of the technology transfer arrangement during the whole term of the
technology transfer arrangement. It is equally important that in case of taxes, the developing
countries must be made aware that it is the licensor that has a duty to pay the taxes and not the
licensee.

Alex owns ACE Farm. Over the years he was able to develop a feed formulation for the native pigs that
are raised in the farm. With his farm-to-table advocacy, he also produces lechon, which according to his
customers, has unique savory taste.

If you were Alex, would you apply for a patent for your feed formulation and the process for roasting the
native pigs as lechon?

Your views.

Answer:

If I were Alex, I would apply for patent. Firstly, such development of feed formulation and the
process of roasting do not fall on those enumerated by law as non-patentable inventions.
Secondly, they both are new, and not obvious to those engaged in the similar art and it is
industrially applicable and they are an improvement of a process. If this feed formulation and the
process of roasting are not patented, sooner or later, people will be able to find ways to satisfy
their customers and learn his secret for the feed formulation and they might be the one to first
patent it. It would be a sad occasion that he will not be able to use such feed formulation and
process for roasting that originated from him without paying or without the consent of the first one
who patented them. It is better that as soon as possible, his right to his intellectual property of
feed formulation and roasting process be protected before it is too late.

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 PART III

a. What is on-line selling of goods?

Answer:

Online selling is the act or process of selling goods, products or services via an internet or
mobile application, auction site, online classified advertisement, online shop, social networking,
social media or web shop.

b. When an on-line seller brings into the market certain goods bearing a well-known mark, but was a
substitution as it was shown to have inferior quality than the genuine goods of the trademark owner,
will the trademark owner be impleaded, together with the on-line seller under the Consumer
Protection Act?

Answer:

Yes. The trademark owner shall be impleaded together with the online seller because both are
indispensable parties. In a sense, both the trademark owner and online seller shall be impleaded
because it is a jurisdictional requirement before a court may render judgment for the protection of
the trademark owner’s rights. If they are not impleaded, no protection of trademark right may be
made and no violation of such right may be punished by court.

Jollibee Foods Corporation is the owner of the mark Jollibee. Given the growing popularity of Jollibee in
other countries where there are big groups of Filipinos, a businessman in China opened a food store using
the mark “Joy-Rul-Bee” which words represent a translation of the mark Jollibee, and operates in exactly
the same business concept as Jollibee, including the store designs and logos.

Will this constitute an infringement and unfair competition of Jollibee’s intellectual property rights?

Your views.

Answer:

Yes, it will constitute infringement and unfair competition of Jollibee’s intellectual property rights.

From the outset, it can readily be understood that Joy-Rul-Bee is falsely suggesting a connection
with Jollibee because it bears the translation of its mark and operates in exactly the same
business as Jollibee. Even if we can say that it is not falsely suggesting a connection, it is obvious
that there is a colorable imitation that results to confusion. Such confusion is even recognizable
visually. Hence, such situation is a case of trademark infringement.

On the case of unfair competition, under the law, anyone is guilty of unfair competition if he
employs deception, or any other means contrary to good faith by which he shall pass off the
goods manufactured by him or in which he deals, or his business, or services for those of the one
having established such goodwill. The essential element of an action for unfair competition are 1)
confusingly similarity in the general appearance of the goods; 2) intent to deceive the public and
the competitor. The intent to deceive maybe inferred from the similarity of the appearance of the
goods offered for sale to the public. Here, Joy-Rul-Bee’s products are confusingly similar to that of
Jollibee’s and that the intent to deceive is present due to the similarity of the appearance of the
goods. Hence, it constitutes both an infringement and an unfair competition of Jollibee’s rights.

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 C

a) How would you differentiate confusion of goods from confusion of business?

Answer:

There is confusion of goods when an otherwise prudent purchaser is induced to purchase one
product in the belief that he is purchasing another, in which case the defendant’s goods are then
bought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation. On the
other hand, there is confusion of business when the goods of the parties are different but the
defendant’s product can reasonably (although mistakenly) be assumed to originate from the
plaintiff, thus deceiving the public into believing that there is some connection between the
plaintiff and defendant which, in fact, does not exist.

b) Having read the case of Asia Brewery, Inc. v. SMI, describe in detail how the Supreme Court
applied the tests to determine if there were confusing similarities between the two marks.

Answer:

The Supreme Court in this case, held that infringement is determined by the "test of dominancy"
rather than by differences or variations in the details of one trademark and of another. Applying
this test, Supreme Court focused on the dominant feature of SMC which is the words “SAN
MIGUEL PALE PILSEN” with elaborate serifs at the beginning and end of the letters "S" and "M."
While the dominant feature of Asia Brewery's trademark is the name: “BEER PALE PILSEN” with
the word "Beer" written in large amber letters. Based on the dissimilarity in their dominant
features as well as in sound, spelling & appearance, “Beer na Beer” cannot be said to be similarly
confusing with San Miguel Pale Pilsen. Also, PALE PILSEN is a generic word descriptive of the
color (“pale“), of a type of beer (“pilsen”), which is a light bohemian beer with a strong hops
flavor that originated in the city of Pilsen, Czechoslovakia. The Supreme Court further said that
the words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are
part of its registered trademark. No one may appropriate generic or descriptive words. They
belong to the public domain.

PART IV

a) What are copyrightable works?

Answer:

Copyrightable works are either original works or derivative works. Original works are literary
and artistic works which are original intellectual creations in the literary and artistic domain
protected from the moment of their creation such as books, pamphlets, articles and other
writings; periodicals and newspapers; musical compositions, with or without words and
others of similar import. Derivative works are also copyrightable works which shall be
protected as new work provided however, that such new work shall not affect the force of
any subsisting copyright upon the original works employed or any part thereof, or be
construed to imply any right to such use of the original works, or to secure or extend
copyright in such original works.

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b) A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an
opening that resembles a window equipped with an escape in case of fire or emergency. It is by
nature, functional and utilitarian.

Assuming X is the owner of this design concept, and to protect his rights thereto, may he have it
patented as an industrial design or have it copyrighted as a design for a work of art?

Answer:

To protect this rights, X may have it patented as an industrial design.

Hatch doors, by its nature, are objects of utility, and therefore, cannot by protected by
copyright. Copyright is only reserved for literary and artistic works. Hatch doors are not
primarily an artistic creation but rather an object of utility designed to have aesthetic appeal
but is not eligible for copyright. On the other hand, an industrial design is the ornamental or
aesthetic aspect of a useful article. Hence, X’s creation falls under an industrial design
which may be a subject of patent and not of copyright.

a) John Grisham is the author of the novel “The Firm” which gained worldwide readership. Without the
knowledge of Grisham, Warner Brothers, Inc., a movie company produced a film based on
Grisham’s novel.

Is there a violation of Grisham’s intellectual property right? Discuss.

Answer:

Yes, the production of Warner Brothers of the film based on the novel violated Grisham’s
intellectual property right. The production of the movie based on a novel is considered a
derivative work of the original novel. However, only the owner of the copyright may be able
to produce such derivative works as new works. If no consent was given, the right of the
owner of the original work or copyrighted work is violated. Here, the act of Warner Brothers
in not getting the consent or authorization of Grisham constitutes a violation of his
intellectual property rights and is a basis for an action against copyright infringement.

b) Dr. Rocky was former Secretary of Health. After leaving his position in government, he immediately
worked on a book entitled “Covid-19 Pandemic in the Philippine Setting”, wherein he used
government data and information he obtained during his stint as Cabinet Secretary, but with due
acknowledgment of his sources. The newly-appointed Health Secretary objected to the publication
of his book, with his copyright on it for the main reason that the soon-to-be published book is
considered as “works of the government”.

Rule on the contention of the new DOH Secretary.

Answer:

The new DOH Secretary’s contention is not correct.

Under the law, the elements of “works of government of the Philippines” are 1) the creator
must be an officer or an employee of the government; 2) the work he has done must be part
of his regularly prescribed official duties.

Here, both requisites are not met. Dr. Rocky’s published book does not fall within the
meaning of “works of the government” because when the book was made, Dr. Rocky was
not an officer of the government anymore and the publishing of that book is not part of
official duties because he is not a government employee anymore. Hence, the new DOH

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 Secretary’s objection should not be sustained on the ground that the published book of Dr.
Rocky cannot be considered as “works of the government”.

a) If you will be doing a thesis for your masteral course, and you need to incorporate portions of
published work, how will you avoid being sued for plagiarism or infringement of copyright?

Answer:

In order to avoid being sued for plagiarism or an infringement of copyright, every time I
needed to incorporate portions of a published work, I will mention in my quotations, the
source and the name of the author. Such act of mentioning does not constitute an
infringement of copyright and cannot be a basis of plagiarism.

b) If Jose Rizal were alive today, how long will his copyright to his novels Noli Me Tangere and El
Filibusterismo subsist?

Answer:

If Jose Rizal were alive today, his copyright to his novels Noli Me Tangere and El
Filibusterismo will subsist during his lifetime and 50 years after his death.

Under the law, the copyright protection will subsist during the lifetime of the person and 50
years after death of the author.

Hence, if Jose Rizal were alive today, he would have enjoyed the rights conferred by his
copyright during his lifetime and 50 years his death.

 End 

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