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INTELLECTUAL
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A. INTELLECTUAL
PROPERTY RIGHTS IN
GENERAL
1. Intellectual Property Rights
a. Definition
Intangible property rights granted by law to
owners of intellectual creations such as
inventions, designs, signs and names used in
commerce, and literary and artistic works.
b. Intellectual Property Rights under the
Intellectual Property Code (RA 8293)
Copyright and Related Rights;
Trademarks and Service Marks;
Geographic Indications;
Industrial Designs;
Patents;
Utility Models; [Chapter XII]
Layout-Designs (Topographies) of Integrated
Circuits;
Protection of Undisclosed Information. [Sec.
4.1, RA 8293]
2. Differences
between
copyright, trademarks, and
patents
The difference between copyright, trademarks,
and patent lies in the scope of protection.
A trademark is any visible sign capable of
distinguishing the goods (trademark) or
services (service mark) of an enterprise from
that of another and shall include a stamped or
marked container of goods. In relation thereto,
a trade name means the name or designation
identifying or distinguishing an enterprise.
Meanwhile, 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.
Patentable inventions, on the other hand,
refer to any technical solution of a problem in
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any field of human activity which is new,
involves an inventive step and is industrially
applicable. [Kho v. Court of Appeals, 379
SCRA 410 (2002)]
3. Technology
Arrangements
Transfer
Definition
Contracts/Agreements involving:
1. The transfer of systematic knowledge for:
a. The manufacture of a product,
b. The application of a process,
c. Rendering of a service including
management contracts; and
2. The transfer, assignment or licensing of all
forms of intellectual property rights,
including the licensing of computer
software except computer software
developed for mass market. [Sec. 4.2, RA
8293]
Functions of the Intellectual Property Office
(IPOPHL)
1. Examine applications for grant of letters
patent for inventions and register utility
models and industrial designs;
2. Examine applications for the registration of
marks, geographic indication, integrated
circuits;
3. Register technology transfer arrangements
and settle disputes involving technology
transfer payments covered by the
provisions of Part II, Chapter IX on
Voluntary Licensing and develop and
implement strategies to promote and
facilitate technology transfer;
4. Promote the use of patent information as a
tool for technology development;
5. Publish regularly in its own publication the
patents, marks, utility models and industrial
designs, issued and approved, and the
technology
transfer
arrangements
registered;
6. Administratively adjudicate contested
proceedings affecting intellectual property
rights;
7. Coordinate
with
other
government
agencies and the private sector efforts to
formulate and implement plans and
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policies to strengthen the protection of
intellectual property rights in the country
[Sec. 5, RA 8293];
8. Undertake
enforcement
functions
supported by concerned agencies such as
the Philippine National Police, National
Bureau of Investigation, Bureau of
Customs, Optical Media Board, Local
Government Units, among others [Sec. 7.
(c) RA 8293, as amended by R.A. 10372];
9. Conduct visits during reasonable hours
to establishments and business engaging
in activities violating intellectual property
rights and provisions of this act based on
report, information or complaint received
by the office. [Sec. 7.(d) RA 8293, as
amended by R.A. 10372]
IPOPHL JURISDICTIONAL THRESHOLD in
administrative complaints for violations of
laws involving intellectual property rights:
Two hundred thousand pesos (P200,000) or
more in total damages claimed
Role of the IPO with Respect to Technology
Transfer Arrangements
The IPO shall:
1. Register technology transfer arrangements
and settle disputes involving technology
transfer payments
2. Develop and implement strategies to
promote and facilitate technology transfer;
3. Promote the use of patent information as a
tool for technology development;
4. Publish regularly in its own publication the
technology
transfer
arrangements
registered. [Sec. 4.4, RA 8293]
Voluntary Licensing & Registration of
Technology Transfer Arrangements
See 9. Licensing, a. Voluntary
B. PATENTS
1. Patentable Invention
a. Inventions;
b. Utility Model;
c. Industrial Designs; and
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d. Lay-Out Designs (Topographies of
Integrated Circuits) [Note: this is actually a
sui generis regime but the amendment to
RA 8293 placed this in the Law on Patents]
Invention Patent
A patentable invention is 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, or may relate
to, a product, or process, or an improvement of
any of the foregoing. [Sec. 21, RA 8293]
Non-patentable inventions [Sec. 22]
1. Discoveries, scientific theories and
mathematical methods, and in the case of
drugs and medicines:
a. The mere discovery of a new form
or new property of a known
substance which does not result in
enhancement of the known efficacy
of that substance;
b. The mere discovery of any new
property or new use for a known
substance; or
c. The mere use of a known process
unless such known process results
in a new product that employs at
least one new reactant. [RA 8293
as amended by RA 9502, The
Cheaper Medicine Act of 2008]
2. Schemes, rules and methods of performing
mental acts, playing games or doing
business, and programs for computers
3. Methods for treatment of the human and
animal body by surgery or therapy and
diagnostic methods practiced on the
human and animal body.
Exceptions: products and composition for
use in any of these methods
4. Plant varieties or animal breeds or
essentially biological process for the
production of plants or animals
Exceptions:
micro-organisms;
nonbiological and microbiological processes
5. Aesthetic creations
6. Anything contrary to public order or
morality
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Standards or requirements for registrability
of Invention Patent [Sec. 21]
i.
Novelty;
ii.
Involves an inventive step; and
iii.
Industrially applicable.
Additional Requirements
iv.
Patentable subject matter [Sec. 22]
v.
Sufficient disclosure [Sec. 35]
i.
Novelty
An invention shall not be considered new if it
forms part of a prior art. [Sec. 23, RA 8293]
Prior art
This shall consist of:
a. Everything which has been made available
to the public anywhere in the world, before
the filing date or the priority date of the
application claiming the invention; [Sec.
24.1, RA 8293]
b. The whole contents of an application for a
patent, utility model, or industrial design
registration, published in accordance with
this Act, filed or effective in the Philippines,
with a filing or priority date that is earlier
than the filing or priority date of the
application: Provided, That –
(i)
The application which has validly
claimed the filing date of an earlier
application under Section 31 of this
Act, shall be prior art with effect as
of the filing date of such earlier
application
(ii)
The applicant or the inventor
identified in both applications are
not one and the same. [Sec. 24.2,
RA 8293]
Non-prejudicial disclosures
This is an exception to the General Rule on
Prior Art under Sec. 24. It provides that the
disclosure of the information contained in the
application during the 12 months preceding the
filing date or the priority date of the application
shall not prejudice the applicant on the ground
of lack of novelty if such disclosure was made
by:
a. The inventor
b. A patent office and the information was
contained
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a. in another application filed by
the inventor and should not
have been disclosed by the
office, or
b. in an application filed, without
the knowledge or consent of
the inventor, by a third party
which obtained the information
directly or indirectly from the
inventor
c. A third party which obtained the
information directly or indirectly from
the inventor [Sec. 25, RA 8293]
ii.
Inventive Step
An invention involves an inventive step if,
having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing
date or priority date of the application claiming
the invention. [Sec. 26.1, RA 8293, as
amended by RA 9502]
Cheaper Medicines Act: In case of drugs and
medicines, there is no inventive step if the
invention results from:
a. The mere discovery of a new form or new
property of a known substance which does
not result in enhancement of the known
efficacy of that substance;
b. The mere discovery of any new property or
new use for a known substance; or
c. The mere use of a known process unless
such known process results in a new
product that employs at least one new
reactant. [Sec. 26.2, RA 8293 as amended
by RA 9502]
iii.
Industrial Applicability
An invention that can be produced and used in
any industry shall be industrially applicable.
[Sec. 27, RA 8293]
2. Non-Patentable Inventions
The following shall be excluded from patent
protection:
a. Discoveries, scientific theories and
mathematical methods, and in the case of
drugs and medicines, the mere discovery
of a new form or new property of a known
substance which does not result in the
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b.
c.
d.
e.
f.
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enhancement of the known efficacy of that
substance, or the mere discovery of any
new property or new use for a known
substance, or the mere use of a known
process unless such known process
results in a new product that employs at
least one new reactant. Salts, esters,
ethers, polymorphs, metabolites, pure
form, particle size, isomers, mixtures of
isomers, complexes, combinations, and
other derivatives of a known substance
shall be considered to be the same
substance, unless they differ significantly in
properties with regard to efficacy; [Sec.
22.1, RA 8293 as amended by RA 9502]
Schemes, rules and methods of performing
mental acts, playing games or doing
business, and programs for computers;
[Sec. 22.2, RA 8293]
Methods for treatment of the human or
animal body by surgery or therapy and
diagnostic methods practiced on the
human or animal body. This provision shall
not apply to products and composition for
use in any of these methods; [Sec. 22.3,
RA 8293]
Plant varieties or animal breeds or
essentially biological process for the
production of plants or animals. This
provision shall not apply to microorganisms
and
non-biological
and
microbiological processes; [Sec. 22.4, RA
8293]
Aesthetic creations; [Sec. 22.5, RA 8293]
Anything which is contrary to public order
or morality. [Sec. 22.6, RA 8293]
Cheaper Medicines Act: In addition to
discoveries,
scientific
theories
and
mathematical methods, the IP Code now
includes (as non-patentable), in case of drugs
and medicines:
a. The mere discovery of a new form or new
property of a known substance which does
not result in the enhancement of the known
efficacy of that substance
b. The mere discovery of any new property or
new use of a known substance
c. The mere use of a known process unless
such known process results in a new
product that employs at least one reactant
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[Sec. 26.2, RA 8293 as amended by RA
9502]
3. Ownership of a Patent
Right to a Patent
General Rule: The right to a patent belongs to
the inventor, his heirs, or assigns. When two or
more persons have jointly made an invention,
the right to a patent shall belong to them jointly.
[Sec. 28, RA 8293]
Exceptions: Inventions created pursuant to
employment or a commissioned work
1. The person who commissions the work
shall own the patent. [Sec. 30.1, RA 8293]
2. The employer has the right to the patent if
the invention is the result of the
performance of the employee’s regularly
assigned duties. [Sec. 30.2, RA 8293]
First-to-file rule
RA 8293 changed the basis of ownership of a
patent from First-to-Invent under RA 165 to
First-to-File.
If two or more persons have made the invention
separately and independently of each other,
the right to the patent shall belong to the person
who filed an application for such invention, or
where two or more applications are filed for the
same invention, to the applicant who has the
earliest filing date or, the earliest priority date.
[Sec. 29, RA 8293]
Filing Date
The filing date of a patent application shall be
the date of receipt by the Office of at least the
following elements:
a. An express or implicit indication that a
Philippine patent is sought;
b. Information identifying the applicant; and
c. Description of the invention and one (1) or
more claims in Filipino or English. [Sec.
40.1, RA 8293]
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Invention created pursuant to a
commission/in the course of
employment
The person who commissions the work shall
own the patent, unless otherwise provided in
the contract. [Sec. 30.1, RA 8293]
In case the employee made the invention in the
course of his employment contract, the patent
shall belong to:
a. The employee, if the inventive activity is not
a part of his regular duties even if the
employee uses the time, facilities and
materials of the employer.
b. The employer, if the invention is the result
of the performance of his regularlyassigned duties, unless there is an
agreement, express or implied, to the
contrary. [Sec. 30.2, RA 8293]
Right of priority
An application for patent filed by any person
who has previously applied for the same
invention in another country which by treaty,
convention, or law affords similar privileges to
Filipino citizens, shall be considered filed as of
the date of filing the foreign application:
Provided, That:
1. The local application expressly claims
priority;
2. It is filed within 12 months from the date the
earliest foreign application was filed; and
3. A certified copy of the foreign application
together with an English translation is filed
within 6 months from the date of filing in the
Philippines. [Sec. 31, RA 8293]
4. Grounds for Cancellation of a
Patent
Any interested person may petition to cancel
the patent or any claim thereof, or parts of the
claim, on any of the following grounds:
1. That what is claimed as the invention is not
new or patentable;
2. That the patent does not disclose the
invention in a manner sufficiently clear and
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complete for it to be carried out by any
person skilled in the art; or
3. That the patent is contrary to public order
or morality. [Sec. 61.1, RA 8293]
Where the grounds for cancellation relate to
some of the claims or parts of the claim,
cancellation may be effected to such extent
only. [Sec. 61.2, RA 8293]
Effect of Cancellation of Patent or Claim
The rights conferred by the patent or any
specified claim or claims cancelled shall
terminate. Notice of the cancellation shall be
published in the IPO Gazette. Unless
restrained by the Director General, the decision
or order to cancel by Director of Legal Affairs
shall be immediately executory even pending
appeal. [Sec. 66, RA 8293]
Remedies of a Person with a Right to a
Patent
Patent Application by Persons Not Having the
Right to a Patent. — If a person referred to in
Section 29 (First-to-File) other than the
applicant, is declared by final court order or
decision as having the right to the patent, such
person may, within three (3) months after the
decision has become final:
a. Prosecute the application as his own
application in place of the applicant;
b. File a new patent application in respect of
the same invention;
c. Request that the application be refused; or
d. Seek cancellation of the patent, if one has
already been issued. [Sec. 67, RA 8293]
5. Remedy of the True and
Actual inventor
If a person, who was deprived of the patent
without his consent or through fraud, is
declared by final court order or decision to be
the true and actual inventor, the court shall:
(1) Order for his substitution as patentee, or
(2) At the option of the true inventor, cancel the
patent, and
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(3) Award actual and other damages in his
favor, if warranted by the circumstances.
[Sec. 68, RA 8293]
The action shall be filed within 1 year from the
date of publication made in accordance with
Sections 44 and 51, respectively. [Sec. 70, RA
8293]
6. Rights Conferred by a Patent
Where the
subject
matter of a
patent is a
product
Where the
subject
matter of a
patent is a
process
Other
rights of
Patent
Owners
To restrain, prohibit and
prevent any unauthorized
person or entity from making,
using, offering for sale, selling
or importing that product.
[Sec. 71.1(a), RA 8293]
To restrain, prevent or prohibit
any unauthorized person or
entity from using the process,
and from manufacturing,
dealing in, using, selling or
offering for sale, or importing
any product obtained directly
or indirectly from such
process. [Sec. 71.1(b), RA
8293]
Patent owners shall also have
the right to assign, or transfer
by succession the patent, and
to
conclude
licensing
contracts for the same. [Sec.
71.2, RA 8293]
b.
c.
d.
e.
7. Limitations of Patent Rights
The owner of a patent has no right to prevent
third parties from performing, without his
authorization, the acts referred to in Section 71
hereof in the following circumstances:
a. Owner’s Consent:
1. National exhaustion - Using a patented
product which has been put on the
market in the Philippines by the owner
of the product, or with his express
consent, insofar as such use is
performed after that product has been
so put on the said market;
2. International exhaustion (for drugs and
medicines) - A drug or medicine has
f.
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been introduced anywhere else in the
world by the patent owner, or by any
party authorized to use the invention.
[Sec. 72.1, RA 8293 as amended by
RA 9502]
Parallel Importation: The right to import
the drugs and medicines shall be available
to any government agency or any private
third party; [Sec. 72.1, RA 8293 as
amended by RA 9502]
Non – Commercial: Where the act is done
privately and on a non-commercial scale or
for a non-commercial purpose: Provided,
That it does not significantly prejudice the
economic interests of the owner of the
patent; [Sec. 72.2, RA 8293 as amended
by RA 9502]
Experimental Use: Where the act consists
of making or using exclusively for
experimental use of the invention for
scientific
purposes
or
educational
purposes and such other activities directly
related to such scientific or educational
experimental use; [Sec. 72.3, RA 8293 as
amended by RA 9502]
Drugs and Medicine: In the case of drugs
and medicines, where the act includes
testing, using, making or selling the
invention including any data related
thereto, solely for purposes reasonably
related to the development and submission
of information and issuance of approvals
by government regulatory agencies
required under any law of the Philippines or
of another country that regulates the
manufacture, construction, use or sale of
any product: Provided, That, in order to
protect the data submitted by the original
patent holder from unfair commercial use
provided in Article 39.3 of the Agreement
on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the
Intellectual Property Office, in consultation
with the appropriate government agencies,
shall issue the appropriate rules and
regulations necessary therein not later than
120 days after the enactment of this law;
[Sec. 72.4, RA 8293 as amended by RA
9502]
Medicine Individual Preparation: Where
the act consists of the preparation for
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individual cases, in a pharmacy or by a
medical professional, of a medicine in
accordance with a medical shall apply after
a drug or medicine has been introduced in
the Philippines or anywhere else in the
world by the patent owner, or by any party
authorized to use the invention: Provided,
further, That the right to import the drugs
and medicines contemplated in this section
shall be available to any government
agency or any private third party; [Sec.
72.5, RA 8293 as amended by RA 9502]
g. Where the invention is used in any ship,
vessel, aircraft, or land vehicle of any other
country entering the territory of the
Philippines temporarily or accidentally:
Provided, That such invention is used
exclusively for the needs of the ship,
vessel, aircraft, or land vehicle and not
used for the manufacturing of anything to
be sold within the Philippines. [Sec. 72.6,
RA 8293 as amended by RA 9502]
There shall be no infringement of trademarks
or tradenames of imported or sold drugs and
medicines allowed as well as imported or sold
off-patent drugs and medicines: Provided, That
said drugs and medicines bear the registered
marks that have not been tampered, unlawfully
modified, or infringed. [Sec.159.4 RA 8293 as
amended by RA 9502]
Prior User
Any prior user, who, in good faith was using the
invention or has undertaken serious
preparations to use the invention in his
enterprise or business, before the filing date or
priority date of the application on which a
patent is granted, shall have the right to
continue the use thereof as envisaged in such
preparations within the territory where the
patent produces its effect. [Sec. 73.1, RA 8293]
The right of the prior user may only be
transferred or assigned together with his
enterprise or business, or with that part of his
enterprise or business in which the use or
preparations for use have been made. [Sec.
73.2, RA 8293]
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Use by the Government
A Government agency or third person
authorized by the Government may exploit the
invention even without agreement of the patent
owner where:
1. The public interest, in particular, national
security,
nutrition,
health
or
the
development of other sectors, as
determined by the appropriate agency of
the government, so requires; [Sec. 74.1(a),
RA 8293]
2. A judicial or administrative body has
determined that the manner of exploitation,
by the owner of the patent or his licensee,
is anti-competitive; [Sec. 74.1(b), RA 8293]
3. In the case of drugs and medicines, there
is a national emergency or other
circumstance of extreme urgency requiring
the use of the invention; [Sec. 74.1(c), RA
8293 as amended by RA 9502]
4. In the case of drugs and medicines, there
is public non-commercial use of the patent
by the patentee, without satisfactory
reason; [Sec. 74.1(d), RA 8293 as
amended by RA 9502]
5. In the case of drugs and medicines, the
demand for the patented article in the
Philippines is not being met to an adequate
extent and on reasonable terms, as
determined by the Secretary of the
Department of Health. [Sec. 74.1(e), RA
8293, as amended by RA 9502]
CONDITIONS ON THE USE BY
GOVERNMENT OR THIRD PERSONS
THE
Unless otherwise provided herein, the use by
the Government, or third person authorized by
the Government shall be subject, where
applicable, to the following provisions:
a. In situations of national emergency or other
circumstances of extreme urgency as
provided under Section 74.1 (c), the right
holder shall be notified as soon as
reasonably practicable;
b. In the case of public non-commercial use
of the patent by the patentee, without
satisfactory reason, as provided under
Section 74.1 (d), the right holder shall be
informed promptly: Provided, That, the
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Government or third person authorized by
the Government, without making a patent
search, knows or has demonstrable ground
to know that a valid patent is or will be used
by or for the Government;
If the demand for the patented article in the
Philippines is not being met to an adequate
extent and on reasonable terms as
provided under Section 74.1 (e), the right
holder shall be informed promptly;
The scope and duration of such use shall
be limited to the purpose for which it was
authorized;
Such use shall be non-exclusive;
The right holder shall be paid adequate
remuneration in the circumstances of each
case, taking into account the economic
value of the authorization; and
The existence of a national emergency or
other circumstances of extreme urgency,
referred to under Section 74.1 (c), shall be
subject to the determination of the
President of the Philippines for the purpose
of determining the need for such use or
other exploitation, which shall be
immediately executory. [Sec. 74.2, RA
8293 as amended by RA 9502]
Issuance of a Special Compulsory License
under the TRIPS Agreement) of this Code.
[Sec. 76.1, RA 8293 as amended by R.A. 9502]
All cases arising from the implementation of
this provision shall be cognizable by courts with
appropriate jurisdiction provided by law. No
court except the Supreme Court of the
Philippines, shall issue any temporary
restraining order or preliminary injunction or
such other provisional remedies that will
prevent its immediate execution. [Sec. 74.3,
RA 8293 as amended by RA 9502]
Under the doctrine of equivalents, an
infringement occurs when a device:
(1) Appropriates a prior invention by
incorporating its innovative concept, albeit
with some modification and change,
(2) Performs substantially the same function in
substantially the same way, and
(3) Achieves substantially the same result.
[Godinez v. CA, G.R. No. L-97343 (1993)]
8. Patent Infringement
The doctrine of equivalents thus requires
satisfaction of the function-means-and-result
test, the patentee having the burden to show
that all three components of such equivalency
test are met. [Smith Klein Beckman Corp. v.
CA, G.R. No. 126627 (2003)]
c.
d.
e.
f.
g.
The making, using, offering for sale, selling, or
importing a patented product or a product
obtained directly or indirectly from a patented
process, or the use of a patented process
without the authorization of the patentee
constitutes patent infringement: Provided,
That, this shall not apply to instances covered
by Sections 72.1 and 72.4 (Limitations of
Patent Rights); Section 74 (Use of Invention by
Government); Section 93.6 (Compulsory
Licensing); and Section 93-A (Procedures on
Tests in Patent Infringement
a. Literal Infringement
In using literal infringement as a test, resort
must be had in the first instance to the words of
the claim. To determine whether the particular
item falls within the literal meaning of the patent
claims, the court must juxtapose the claims of
the patent and the accused product within the
overall context of the claims and specifications,
to determine whether there is exact identity of
all material elements. [Godinez v. CA, G.R. No.
L-97343 (1993)]
The test is satisfied if:
The item that is being sold, made or used
conforms exactly to the patent claim of another;
One makes, uses or sells an item that has all
the elements of the patent claim of another plus
other elements.
b. Doctrine of Equivalents
Civil and Criminal Actions
Civil Action for Infringement
Any patentee, or anyone possessing any right,
title or interest in and to the patented invention,
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whose rights have been infringed, may bring a
civil action before a court of competent
jurisdiction:
1. To recover from the infringer such
damages
sustained
thereby,
plus
attorney’s fees and other expenses of
litigation, and
2. To secure an injunction for the protection of
his rights. [Sec. 76.2, RA 8293]
If the damages are inadequate or cannot be
readily ascertained with reasonable certainty,
the court may award, by way of damages, a
sum equivalent to reasonable royalty. [Sec.
76.3, RA 8293]
The court may, according to the circumstances
of the case, award damages in a sum above
the amount found as actual damages
sustained: Provided, That the award does not
exceed three (3) times the amount of such
actual damages. [Sec. 76.4, RA 8293]
Criminal Action Only After Finality of
Judgment in Civil Action and After
Repetition of Infringement
If infringement is repeated by the infringer or by
anyone in connivance with him after finality of
the judgment of the court against the infringer,
the offenders shall:
1. Be criminally liable therefor, and
2. Upon conviction, suffer imprisonment for
the period of not less than 6 months but not
more than 3 years and/or a fine of not less
than One hundred thousand pesos
(P100,000) but not more than Three
hundred thousand pesos (P300,000), at
the discretion of the court.
Note: Such criminal action is without prejudice
to the institution of a civil action for damages:
[Sec. 84, RA 8293]
Criminal Action: 3 years from date of the
commission of the crime. [Sec. 84, RA 8293]
Defenses
in
Infringement
for
In an action for infringement, the defendant, in
addition to other defenses available to him,
may show the invalidity of the patent, or any
claim thereof, on any of the grounds on which
a petition of cancellation can be brought under
Section 61. [Sec. 81, RA 8293]
Patent found invalid may be cancelled
In an action for infringement, if the court shall
find the patent or any claim to be invalid, it shall
cancel the same, and the Director of Legal
Affairs upon receipt of the final judgment of
cancellation by the court, shall record that fact
in the register of the Office and shall publish a
notice to that effect in the IPO Gazette. [Sec.
82, RA 8293]
Doctrine of File Wrapper Estoppel
Patentee is precluded from claiming as part of
a patented product that which he had to excise
or modify in order to avoid patent office
rejection, and he may omit any additions he
was compelled to add by patent office
regulations. [Advance Transformer Co. v.
Levinson, 837 F.2d 1081(1988)]
9. Licensing
Kinds of
License
IPOPHL
Office(s) with
Jurisdiction
Appellate
Jurisdiction
Voluntary
(Secs. 8592)
Documentation
,
Information
and
Technology
Transfer
Bureau
(DITTB)
Director General
-----> Secretary
of Trade and
Industry (Sec/ 7,
RA IP Code)
Compulsory
(General;
Secs. 93,
94-102)
Director
General &
Bureau of
Legal Affairs
Court of Appeals
(Rule 43, ROC)
Special
Compulsory
Director
General
Court of Appeals
(Rule 43, ROC)
Prescriptive Period
Civil Action: No damages can be recovered for
acts of infringement committed more than four
(4) years before the institution of the action for
infringement. [Sec. 79, RA 8293]
Actions
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(Special;
Sec. 93-A)
INTELLECTUAL PROPERTY LAW
(Supreme Court
for issuance of
provisional
remedies TRO/preliminary
injunction)
Voluntary
Voluntary Licensing is the grant by the patent
owner to a third person of the right to exploit
the patented invention. [Sec. 85, RA 8293]
To encourage the transfer and dissemination of
technology, prevent or control practices and
conditions that may in particular cases
constitute an abuse of intellectual property
rights having an adverse effect on competition
and trade, all voluntary technology transfer
arrangements or licensing contracts shall:
1. Not contain any of the prohibited clauses
for voluntary license contracts under Sec.
87
2. Contain all of the mandatory provisions for
voluntary license contracts under Sec. 88
3. Be approved and registered with the
Documentation,
Information
and
Technology Transfer Bureau [of the
IPOPHL] as an exceptional case under
Sec. 91, ONLY IF the agreement fails to
comply with Sec. 87 and 88. [See Secs. 85
& 92, RA 8293]
Mandatory Provisions
The following provisions shall be included in
voluntary license contracts:
1. That the laws of the Philippines shall
govern the interpretation of the same and
in the event of litigation, the venue shall be
the proper court in the place where the
licensee has its principal office; [Sec. 88.1,
RA 8293]
2. Continued access to improvements in
techniques and processes related to the
technology shall be made available during
the period of the technology transfer
arrangement; [Sec. 88.2, RA 8293]
3. In the event the technology transfer
arrangement shall provide for arbitration,
the Procedure of Arbitration of the
Arbitration Law of the Philippines or the
COMMERCIAL LAW
Arbitration Rules of the United Nations
Commission on International Trade Law
(UNCITRAL) or the Rules of Conciliation
and Arbitration of the International
Chamber of Commerce (ICC) shall apply
and the venue of arbitration shall be the
Philippines or any neutral country; [Sec.
88.3, RA 8293]
4. The Philippine taxes on all payments
relating to the technology transfer
arrangement shall be borne by the licensor.
[Sec. 88.4, RA 8293]
Prohibited Clauses
The following provisions shall be deemed
prima facie to have an adverse effect on
competition and trade:
1. Those which impose upon the licensee the
obligation to acquire from a specific source
capital goods, intermediate products, raw
materials, and other technologies, or of
permanently
employing
personnel
indicated by the licensor; [Sec. 87.1, RA
8293]
2. Those pursuant to which the licensor
reserves the right to fix the sale or resale
prices of the products manufactured on the
basis of the license; [Sec. 87.2, RA 8293]
3. Those that contain restrictions regarding
the volume and structure of production;
[Sec. 87.3, RA 8293]
4. Those that prohibit the use of competitive
technologies in a non-exclusive technology
transfer agreement; [Sec. 87.4, RA 8293]
5. Those that establish a full or partial
purchase option in favor of the licensor;
[Sec. 87.5, RA 8293]
6. Those that obligate the licensee to transfer
for free to the licensor the inventions or
improvements that may be obtained
through the use of the licensed technology;
[Sec. 87.6, RA 8293]
7. Those that require payment of royalties to
the owners of patents for patents which are
not used; [Sec. 87.7, RA 8293]
8. Those that prohibit the licensee to export
the licensed product unless justified for the
protection of the legitimate interest of the
licensor such as exports to countries where
exclusive licenses to manufacture and/or
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9.
10.
11.
12.
13.
14.
15.
INTELLECTUAL PROPERTY LAW
distribute the licensed product(s) have
already been granted; [Sec. 87.8, RA 8293]
Those which restrict the use of the
technology supplied after the expiration of
the technology transfer arrangement,
except in cases of early termination of the
technology transfer arrangement due to
reason(s) attributable to the licensee; [Sec.
87.9, RA 8293]
Those which require payments for patents
and other industrial property rights after
their expiration, termination arrangement;
[Sec. 87.10, RA 8293]
Those which require that the technology
recipient shall not contest the validity of any
of the patents of the technology supplier;
[Sec. 87.11, RA 8293]
Those which restrict the research and
development activities of the licensee
designed to absorb and adapt the
transferred technology to local conditions
or to initiate research and development
programs in connection with new products,
processes or equipment; [Sec. 87.12, RA
8293]
Those which prevent the licensee from
adapting the imported technology to local
conditions, or introducing innovation to it,
as long as it does not impair the quality
standards prescribed by the licensor; [Sec.
87.13, RA 8293]
Those which exempt the licensor for
liability
for
non-fulfillment
of
his
responsibilities under the technology
transfer arrangement and/or liability arising
from third party suits brought about by the
use of the licensed product or the licensed
technology; [Sec. 87.14, RA 8293]
Other clauses with equivalent effects. [Sec.
87.15, RA 8293]
Effect of Non-compliance with any
Provisions of Secs. 87 and 88
The technology transfer arrangement (TTA)
shall
automatically
be
rendered
unenforceable, unless said technology
transfer arrangement is approved and
registered with the Documentation, Information
and Technology Transfer Bureau (DITTB of the
IPOPHL) under the provisions of Section 91 on
exceptional cases. [Sec. 92, RA 8293]
COMMERCIAL LAW
Exceptional Cases
1. In exceptional or meritorious cases where
substantial benefits will accrue to the
economy, such as high technology content,
increase in foreign exchange earnings,
employment generation, regional dispersal
of industries and/or substitution with or use
of local raw materials;
2. The case of BOI-registered companies with
pioneer status. [Sec. 91, RA 8293]
Jurisdiction
Decisions of the Director of DITTB on TTAs
are appealable to the Director General,
IPOPHL, whose decisions thereon are
appealable to the Secretary of Trade and
Industry.
Right of Licensor
Unless otherwise provided in the technology
transfer agreement, the licensor shall have the
right to:
1. Grant further licenses to third person;
2. Exploit the subject matter of the technology
transfer agreement. [Sec. 89, RA 8293]
Right of the Licensee
To exploit the subject matter of the technology
transfer agreement during the whole term of
the agreement. [Sec. 90, RA 8293]
Compulsory
Compulsory Licensing is the grant of the
Director of Legal Affairs of a license to exploit
a patented invention, even without the
agreement of the patent owner, in favor of any
person who has shown his capability to exploit
the invention. [Sec. 93, RA 8293 as amended
by RA 9502]
Grounds
The Director General of the Intellectual
Property Office may grant a license to exploit a
patented invention, even without the
agreement of the patent owner, in favor of any
person who has shown his capability to exploit
the invention, under any of the following
circumstances:
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1. National
emergency
or
other
circumstances of extreme urgency; [Sec.
93.1, RA 8293 as amended by RA 9502]
2. Where the public interest, in particular,
national security, nutrition, health or the
development of other vital sectors of the
national economy as determined by the
appropriate agency of the Government, so
requires; [Sec. 93.2, RA 8293 as amended
by RA 9502]
3. Where a judicial or administrative body has
determined that the manner of exploitation
by the owner of the patent or his licensee
is anti-competitive; [Sec. 93.3, RA 8293 as
amended by RA 9502]
4. In case of public non-commercial use of the
patent by the patentee, without satisfactory
reason; [Sec. 93.4, RA 8293 as amended
by RA 9502]
5. If the patented invention is not being
worked in the Philippines on a commercial
scale, although capable of being worked,
without satisfactory reason: Provided, That
the importation of the patented article shall
constitute working or using the patent;
[Sec. 93.5, RA 8293 as amended by RA
9502]
6. Where the demand for patented drugs and
medicines is not being met to an adequate
extent and on reasonable terms, as
determined by the Secretary of the
Department of Health; [Sec. 93.6, RA 8293
as amended by RA 9502]
7. If the invention protected by a patent,
hereafter referred to as the "second
patent," within the country cannot be
worked without infringing another patent,
hereafter referred to as the "first patent,"
granted on a prior application or benefiting
from an earlier priority, a compulsory
license may be granted to the owner of the
second patent to the extent necessary for
the working of his invention, subject to
certain conditions; [Sec. 97, RA 8293]
8. Manufacture and export of drugs and
medicines to any country having
insufficient or no manufacturing capacity in
the pharmaceutical sector to address
public health problems: Provided, That, a
compulsory license has been granted by
such country or such country has, by
COMMERCIAL LAW
notification
or
otherwise,
allowed
importation into its jurisdiction of the
patented drugs and medicines from the
Philippines in compliance with the TRIPS
Agreement. [Sec. 93-A.2, RA 8293 as
amended by RA 9502]
Period for Filing a Petition for Compulsory
License
At any time after the grant of patent. However,
a compulsory license may not be applied for on
the ground stated in Sec. 93.5 before the
expiration of a period of 4 years from the date
of filing of the application or 3 years from the
date of the patent whichever period expires
last. [Sec. 94, RA 8293 as amended by RA
9502]
Requirement to Obtain a License on
Reasonable Commercial Terms
General Rule: The license will only be granted
after the petitioner has made efforts to obtain
authorization from the patent owner on
reasonable commercial terms and conditions
but such efforts have not been successful
within a reasonable period of time. [Sec. 95.1,
RA 8293 as amended by RA 9502]
Exceptions: The requirement of authorization
shall not apply in the following cases:
1. Where the petition for compulsory license
seeks to remedy a practice determined
after judicial or administrative process to be
anti-competitive;
2. In situations of national emergency or other
circumstances of extreme urgency;
3. In cases of public non-commercial use;
4. In cases where the demand for the
patented drugs and medicines in the
Philippines is not being met to an adequate
extent and on reasonable terms, as
determined by the Secretary of the
Department of Health. [Sec. 95.2, RA 8293
as amended by RA 9502]
Terms and Conditions of Compulsory
License
1. The scope and duration of such license
shall be limited to the purpose for which it
was authorized; [Sec. 100.1, RA 8293]
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INTELLECTUAL PROPERTY LAW
2. The license shall be non-exclusive; [Sec.
100.2, RA 8293]
3. The license shall be non-assignable,
except with that part of the enterprise or
business with which the invention is being
exploited; [Sec. 100.3, RA 8293]
4. Use of the subject matter of the license
shall be devoted predominantly for the
supply of the Philippine market: Provided,
that this limitation shall not apply where the
grant of the license is based on the ground
that the patentee's manner of exploiting the
patent is determined by judicial or
administrative process, to be anticompetitive; [Sec. 100.4, RA 8293]
5. The license may be terminated upon
proper showing that circumstances which
led to its grant have ceased to exist and are
unlikely to recur: Provided, That adequate
protection shall be afforded to the
legitimate interest of the licensee; [Sec.
100.5, RA 8293]
6. The patentee shall be paid adequate
remuneration taking into account the
economic value of the grant or
authorization, except that in cases where
the license was granted to remedy a
practice which was determined after
judicial or administrative process, to be
anti-competitive, the need to correct the
anti-competitive practice may be taken into
account in fixing the amount of
remuneration. [Sec. 100.6, RA 8293]
10. Assignment
Transmission of Rights
and
Inventions and any right, title or interest in and
to patents and inventions covered thereby,
may be assigned or transmitted by inheritance
or bequest or may be the subject of a license
contract. [Sec. 103.2, RA 8293]
An assignment may be limited to a specified
territory. [Sec. 104, RA 8293]
Rights of Joint Owners
If two or more persons jointly own a patent and
the invention covered thereby, each joint owner
shall be entitled to personally make, use, sell,
or import the invention for his own profit.
However, neither of the joint owners shall be
entitled to grant licenses or to assign his right,
title or interest or part thereof without the
consent of the other owner or owners, or
without proportionally dividing the proceeds
with such other owner or owners. [Sec. 107, RA
8293]
Form of Assignment
The assignment must be in writing and must be
notarized. [Sec. 105 RA 8293] It shall be void
as against any subsequent purchaser or
mortgagee for valuable consideration and
without notice, unless, it is so recorded in the
Office, within 3 months from the date of said
instrument, or prior to the subsequent
purchase or mortgage. [Sec. 106.2, RA 8293]
C. TRADEMARKS
1. Definition of Marks, Collective
Marks, and Trade Names
Definition
Marks
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. 121.1, RA
8293]
An assignment may be of:
(i)
The entire right, title or interest in and
to the patent and the invention covered
thereby, or
(ii)
An undivided share of the entire patent
and invention, in which event the
parties become joint owners thereof.
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Trademark
Any visible sign
which is:
Adopted and used to
identify the source or
origin of goods; and
Capable
of
distinguishing them
from
goods
emanating from a
competitor.
INTELLECTUAL PROPERTY LAW
Service Mark
Any visible sign
capable
of
distinguishing
the
services
of
an
enterprise from the
service of other
enterprises.
COMMERCIAL LAW
A trademark or service A
trade
name
mark owner can avail owner only has civil
of administrative, civil and administrative
and criminal remedies remedies
Assignment
A trademark or service A trade name can
mark can be assigned only be assigned
independent of the
with the business.
business
Functions of a Trademark
Collective Marks
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. 121.2, RA 8293]
Trade Name
The name or designation identifying or
distinguishing an enterprise [Sec. 121.3, RA
8293].
Any individual name or surname, firm name,
device or word used by manufacturers,
industrialists, merchants, and others to identify
their businesses, vocations or occupations.
[Converse Rubber Corp. v. Universal Rubber
Products, Inc., G.R. No. L-27906 (1987)]
DIFFERENCES BETWEEN A TRADEMARK/
SERVICE MARK AND A TRADENAME
UNDER THE IP CODE
Trademark/
Trade Name
Service Mark
Basis of Ownership
Registration
Prior
use
in
Philippine
commerce
When Protected
Upon registration
A trade name may
be protected even
if unregistered
Remedies
1. To point out distinctly the origin or
ownership of the goods and to which it is
affixed;
2. To secure him, who has been instrumental
in bringing into the market a superior article
of merchandise, the fruit of his industry and
skill;
3. To assure the public that they are
producing the genuine article;
4. To prevent fraud and imposition; and
5. To protect the manufacturer against
substitution and sale of an inferior and
different article as its product. [Mirpuri v.
CA, G.R. No. 114508 (1999)]
Spectrum of Distinctiveness
Generic Marks
Generic Marks are those which constitute the
name of an article or substance; or comprise
the genus of which the particular product is a
species of. [Societe Des Produits Nestle v. CA,
G.R. No. 112012, 2001]
These must remain in the public domain and
can never be registered as a trademark.
Examples: “SUGAR” for refined sugar, “KAPE”
for instant coffee, “WATER” for bottled water.
Descriptive Marks
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. [Sec.
123(j), RA 8293]
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These are words that merely describe the
product or service or refer to their quality or
characteristic.
General rule: Descriptive marks are not
entitled to protection and are too weak to
function as a trademark.
Exception: Doctrine of Secondary meaning,
infra.
Example: “YELLOW PAGES” for telephone
directory having yellow pages.
Suggestive Marks
Marks that hint or suggest the nature or quality
of the good or service without directly
describing it. They are “subtly descriptive” and
are entitled to protection despite lack of
distinctiveness.
Example: “JAGUAR” for automobile.
Arbitrary Marks
Common words used as marks, but are
unrelated to the good or service they represent.
They neither describe nor suggest the
characteristic of the goods or service, though
they are considered highly distinctive for
purposes of registration.
Example: “APPLE” for electronic product.
Fanciful or “Coined” Marks
These are invented or “coined” words that do
not have any meaning and are made solely for
the purpose of the mark. They are considered
“strong” marks for purposes of registration and
protection for being inherently distinctive.
Example: “KODAK” for camera.
2. Acquisition of Ownership of
Mark
General Rule: To acquire rights in a mark,
registration is required. [Sec. 122, RA 8293]
Exception: Well-known marks are protected
even without registration.
COMMERCIAL LAW
Note: However, when the well-known mark is
not registered, its protection is limited, as it only
prevents the registration of confusingly similar
marks that are used for identical or similar
goods or services. [Sec. 123.1(e), RA 8293]
While the IP Code expressly provides that the
rights to a mark shall be acquired through
registration, the Supreme Court held that
notwithstanding this express provision in the IP
Code, prior use is still the basis of trademark
ownership. [Berris Agricultural Co., Inc. vs.
Norvy Abyadang, G.R. No. 183404, (2010)]
Registration is not a mode of acquiring
ownership, rather, it merely gives rise to a
prima facie presumption of ownership of the
registrant over the mark [Sec. 138, RA 8293]
Said presumption of ownership may be
rebutted by the true owner of the mark in an
opposition or cancellation proceeding.
Filing Date
The filing date of an application shall be the
date on which the Office received the following
indications and elements in English or Filipino:
a. An express or implicit indication that the
registration of a mark is sought;
b. The identity of the applicant;
c. Indications sufficient to contact the
applicant or his representative, if any;
d. A reproduction of the mark whose
registration is sought; and
e. The list of the goods or services for which
the registration is sought. [Sec. 127.1, RA
8293]
Priority Right
An application for registration of a mark filed in
the Philippines by a person referred to in
Section 3, and who previously duly filed an
application for registration of the same mark in
one of those countries, shall be considered as
filed as of the day the application was first filed
in the foreign country (Provided, the Philippine
application is filed within 6 months from the
filing of the foreign application). [Sec. 131.1,
RA 8293]
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No registration of a mark in the Philippines by
a person described in this section shall be
granted until such mark has been registered in
the country of origin of the applicant. [Sec.
131.2, RA 8293]
Significance of Priority Right
A Philippine application filed by another
applicant after the priority date but earlier than
the foreign applicant’s actual filing may be
refused registration if it is identical to the mark
with a priority date. [Agpalo, The Law on
Trademark,
Infringement
and
Unfair
Competition (2000)]
3. Acquisition of Ownership of
Trade Name
The ownership of a trade name is acquired
through adoption and use.
Such names shall be protected, even prior to
or without registration, against any unlawful act
committed by third parties, [Sec. 165.2 (a), RA
8293]
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. [Sec. 165.2
(b), RA 8293]
A name or designation may not be used as a
trade name:
1. 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
2. If, in particular, it is liable to deceive trade
circles or the public as to the nature of the
enterprise identified by that name. [Sec.
165.1, RA 8293]
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. [Sec.
165.4, RA 8293]
COMMERCIAL LAW
4. Non-Registrable Marks
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; [Sec. 123.1(a),
RA 8293]
b. Consists of flags, coat of arms or other
insignia of the Philippines or any foreign
country; [Sec. 123.1(b), RA 8293]
c. Consists of a name, portrait or signature
identifying a particular living individual
except by his written consent, or of a
deceased President of the Philippines,
during the life of his widow, except by
written consent of the widow; [Sec.
123.1(c), RA 8293]
d. Is identical with a registered mark of
another or a mark with an earlier filing or
priority date, in respect of:
1. The same goods or services, or
2. Closely related goods or services,
or
3. If it nearly resembles such a mark
as to be likely to deceive or cause
confusion; [Sec. 123.1(d), RA
8293]
e. Is identical with, or confusingly similar to, or
constitutes a translation of a well-known
mark, whether or not registered in the
Philippines, and used for identical or similar
goods or services; [Sec. 123.1(e), RA
8293]
f. Is identical with, or confusingly similar to, or
constitutes a translation of a well-known
mark which is registered in the Philippines,
and used for goods or services which are
not similar; [Sec. 123.1(f), RA 8293]
g. Likely to mislead the public, particularly as
to the nature, quality, characteristics or
geographical origin of the goods or
services; [Sec. 123.1(g), RA 8293]
h. Consists exclusively of signs that are
generic for the goods or services that they
seek to identify; [Sec. 123.1(h), RA 8293]
i. Consists exclusively of signs or of
indications that have become customary or
usual to designate the goods or services in
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everyday language or in a bona fide and
established trade practice; [Sec. 123.1(i),
RA 8293]
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;
[Sec. 123.1(j), RA 8293]
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; [Sec.
123.1(k), RA 8293]
l. Consists of color alone, unless defined by
a given form; [Sec. 123.1(l), RA 8293]
m. Is contrary to public order or morality. [Sec.
123.1(m), RA 8293]
Other instances when a mark may be
registered:
a. When it is part of a composite mark, though
there should be a disclaimer and the
person who registers them will not acquire
ownership thereto;
b. If they are contractions of or coined from
generic and descriptive terms;
c. If they are used in a fanciful or arbitrary
manner;
d. If the mark falls under the Doctrine of
Secondary Meaning.
DOCTRINE OF SECONDARY MEANING
Secondary meaning is acquired when a
descriptive mark or a mark that may serve in
trade that consists of a shape or color becomes
distinctive because of its exclusive and
continuous use in Philippine commerce.
A word or phrase originally incapable of
exclusive appropriation, might have been used
so long and so exclusively by one producer
with reference to his article that, in that trade
and to that branch of the purchasing public, the
word or phrase has come to mean that the
article was his product. [Ang v. Teodoro, G.R.
No. L-48226 (1942)]
COMMERCIAL LAW
The Office may accept as prima facie evidence
that the mark has become distinctive, proof of
substantially exclusive and continuous use
thereof by the applicant:
(i) In commerce in the Philippines
(ii) For 5 years before the date on which the
claim of distinctiveness is made. [Sec.
123.2, RA 8293]
DISCLAIMERS
The Office may allow or require the applicant to
disclaim an unregistrable component of an
otherwise registrable mark but such disclaimer
shall not prejudice or affect:
(i) The applicant’s or owner’s rights then
existing or thereafter arising in the
disclaimed matter; nor
(ii) The applicant’s or owner’s right on another
application of later date if the disclaimed
matter became distinctive of the applicant’s
or owner’s goods, business or services.
[Sec. 126]
The basic purpose of disclaimers is to make of
record, that a significant element of a
composite mark is not being exclusively
appropriated by itself apart from the composite.
[Rule 608, Rule on Trademarks]
DISCLAIMED WORDS
Words in a mark that are not being claimed for
exclusive use, including: 1. Generic terms; 2.
Descriptive words; and 3. Those that do not
function as part of the trademark. [Rule 608,
Rule on Trademarks]
Note: Except for generic terms, disclaimed
words can later on be registered as part of the
trademark if it acquires distinctiveness.
5. Prior use of
Requirement
mark
as
a
While RA 8293 No Longer Requires
Prior Use Before Filing the
Application, It Still Requires Use of
the Mark After Filing, Registration
and Renewal
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Under the old trademark law or R.A. 166, actual
commercial use of a trademark in the
Philippines was required prior to its
registration. [RA 166, Sec. 2-A]
RA 8293 no longer requires prior use before
filing the application (i.e., it shifted to an intent
to use system). However, the law still requires
use of the mark after filing.
Declaration of Actual Use (DAU)
The applicant or the registrant is required to file
a Declaration of Actual Use of the mark after
filing and registration.
Note: Failure to file declaration of actual use
automatically results in the denial of the
registration or the cancellation of the
registration by operation of law. [Secs. 124.2 &
145, RA 8293]
When to File Declaration of Actual Use
(DAU)
1. Within 3 years from the filing date of the
application (3rd Year DAU);
2. Within 1 year from the 5th anniversary of
the registration of the mark (5th Year DAU);
3. Within 1 year from the date of renewal; and
4. Within 1 year from the 5th anniversary of
each renewal. [Rule 204, Trademark
Regulations of 2017]
Non-Use of Mark When Excused
Non-use caused by circumstances arising
independently of the will of the trademark
owner shall be excused. However, non-use
due to lack of funds shall not excuse non-use
of a mark. [Sec. 152.1, RA 8293]
The ff. shall not be grounds for cancellation or
removal of a mark:
1. Use which does not alter its distinctive
character though the use is different from
the form in which it is registered. [Sec.
152.2, RA 8293]
2. Use of a mark in connection with one or
more of the goods/services belonging to
the class in which the mark is registered.
[Sec. 152.3, RA 8293]
COMMERCIAL LAW
3. Use of the mark by a company related to
the applicant or registrant. [Sec. 152.4, RA
8293]
4. Use of the mark by a person controlled by
the registrant. [Sec. 152.4, RA 8293]
Note: The use of a mark by a company related
with, or controlled by the registrant or applicant
shall inure to the latter's benefit: Provided, that
such mark is not used in such manner as to
deceive the public. [Sec.152.4, RA 8293]
Declaration of Non-Use (DNU)
In lieu of a DAU, an applicant or registrant,
when warranted, shall file a Declaration of NonUse indicating the grounds or justification
therefor.
Non-use of a mark may be excused in the
following cases:
1. Where the applicant or registrant is
prohibited from using the mark in
commerce because of a requirement
imposed by another government agency
prior to putting the goods in the market or
rendering of the services;
2. Where a restraining order or injunction was
issued by the Bureau of Legal Affairs, the
courts or quasi-judicial bodies prohibiting
the use of the mark; or
3. Where the mark is the subject of an
opposition or cancellation case. [Rule 211,
Trademark Regulations of 2017]
When to File Declaration of Non- Use (DNU)
1. Within three (3) years from filing date of
the application;
2. Within
the
prescribed
periods
mentioned in Rule 204 when use of a
registered mark or a mark subject of an
active application has been interrupted
or discontinued by a pending litigation.
[See Rule 212, Trademark Regulations
of 2017]
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6. Tests to Determine Confusing
Similarity between Marks
Dominancy Test
The dominancy test considers the dominant
features in the competing marks in determining
whether they are confusingly similar.
Under the dominancy test:
 Greater weight is given to the similarity of
the appearance of the product arising from
the adoption of the dominant features of
the registered mark.
 Minor differences between the registered
mark and the mark in question are
disregarded.
 The aural and visual impressions created
by the marks in the public mind are
considered.
 Little weight is given to factors like prices,
quality, sales outlets and market segments.
[McDonald’s Corporation v. L.C. Big Mak
Burger, Inc., et al., G.R. No. 143993
(2004)]
The dominancy test is now embodied in Sec.
155 of the IPC and is therefore the controlling
test. [Ibid.]
Holistic Test
The holistic test, to determine whether a
trademark has been infringed, considers the
mark as a whole and not as dissected. If the
buyer is deceived, it is attributable to the marks
as a totality, not usually to any part of it.
The court therefore should be guided by its first
impression.
 The buyer acts quickly and is governed by
a casual glance
 The value of such casual glance may be
dissipated, as soon as the court assumed
to analyze carefully the respective features
of the mark. [Del Monte Corporation, et al.
v. CA, G.R. No. L-78325 (1990)]
COMMERCIAL LAW
SIMILARITY/ DISSIMILARITY OF GOODS
and SERVICES
Goods or services may not be considered as
being similar or dissimilar to each other on the
ground that, in any registration or publication
by the Office, they appear in different classes
of the Nice Classification. [Sec. 44.2, RA 8293]
Related goods and services are those that,
though non-identical or non-similar, are so
logically connected to each other that they may
reasonably be assumed to originate from one
manufacturer or from economically-linked
manufacturers. [Mang Inasal Philippines v. IFP
Manufacturing Corporation, G.R. No. 221717,
June 19, 2017]
The mere fact that one person has adopted and
used a trademark on his goods would not
prevent the adoption and use of the same
trademark by others on unrelated articles of a
different kind. [Taiwan Kolin v. Kolin
Electronics Co., G.R. No. 209843 (2015)]
DOCTRINE
OF
RELATED
GOODS/SERVICES
1. Goods are related when they:
a. Belong to the same class; or
b. Have the same descriptive
properties or physical attributes; or
c. Serve the same purpose or flow
through the same channel of trade.
2. The use of identical marks on noncompeting but related goods may likely
cause confusion, as it can be reasonably
assumed that they originate from one
manufacturer.
3. Corollarily, the use of identical marks on
non-competing and unrelated goods is not
likely to cause confusion. [Esso Standard
Eastern, Inc. v. Court of Appeals, G.R. No.
L-29971 (1982)]
In resolving whether goods are related, several
factors come into play:
1. The business (and its location) to which the
goods belong
2. The class of product to which the goods
belong;
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3. The product's quality, quantity, or size,
including the nature of the package,
wrapper or container;
4. The nature and cost of the article;
5. The descriptive properties, physical
attributes or essential characteristics with
reference to their form, composition,
texture or quality;
6. The purpose of the goods;
7. Whether the article is bought for immediate
consumption, that is, day-to-day household
items;
8. The fields of manufacture;
9. The conditions under which the article is
usually purchased; and
10. The channels of trade through which the
goods flow, how they are distributed,
marketed, displayed and sold [Mighty
Corp. v. E&J Gallo, G.R. No. 154342,
(2004)]
Rationale: The wisdom of this approach is its
recognition that each trademark infringement
case presents its own unique set of facts. No
single factor is preeminent, nor can the
presence or absence of one determine, without
analysis of the others, the outcome of an
infringement suit. Rather, the court is required
to sift the evidence relevant to each of the
criteria. This requires that the entire panoply of
elements constituting the relevant factual
landscape be comprehensively examined. It is
a weighing and balancing process. With
reference to this ultimate question, and from a
balancing of the determinations reached on all
of the factors, a conclusion is reached whether
the parties have a right to the relief sought.
[Mang Inasal Philippines v. IFP Manufacturing
Corporation, G.R. No. 221717 (2017)]
It has been held that where the products are
different, the prior owner’s chance of success
is a function of many variables, such as the:
(1) Strength of his mark;
(2) Degree of similarity between the two
marks;
(3) Reciprocal of defendant’s good faith in
adopting its own mark;
(4) Quality of defendant’s product;
(5) Proximity of the products;
COMMERCIAL LAW
(6) Likelihood that the prior owner will bridge
the gap;
(7) Actual confusion; and
(8) Sophistication
of
the
buyers.
[Polaroid Corp. vs. Polaroid Elecs. Corp.,
287 F. 2d 492, 495 (2d Cir.), (1961), as
cited in Mighty Corp. v. E&J Gallo, G.R. No.
154342, Jul 14, 2004]
Idem Sonans
The rule on idem sonans is also a test to
resolve the confusing similarity of trademarks.
 A mark with a different spelling but is
similar in sound with a registered mark
when read, may be ruled as being
confusingly-similar with the said registered
mark or senior mark.
 Two names are said to be "idem sonantes"
if the attentive ear finds difficulty in
distinguishing them when pronounced.
[Martin v. State, 541 S.W. 2d 605 (1976)]
Similarity of sound is sufficient to rule that the
two marks are confusingly similar when applied
to merchandise of the same descriptive
properties. [Marvex Commercial v. Director of
Patent, G.R. No. L-19297 (1966)]
7. Well-Known Marks
A well-known mark is a mark which a
competent authority of the Philippines has
designated to be well-known internationally
and in the Philippines. [Sec. 123.1(e), RA
8293]
"Competent authority" for purposes of
determining whether a mark is well-known,
means:
 The Court;
 The Director General;
 The Director of the Bureau of Legal Affairs
[Rule 101 (d), Trademark Regulations of
2017];
 Any administrative agency or office vested
with quasi-judicial or judicial jurisdiction to
hear and adjudicate any action to enforce
the rights to a mark. [Dy v. Koninklijke
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Philips Electronics, N.V. G.R. No. 186088
(2017)]
In determining whether a mark is well-known,
account shall be taken of the knowledge of the
relevant sector of the public, rather than the
public at large, including knowledge in the
Philippines which has been obtained as a
result of the promotion of the mark. [Sec.
123.1(e), RA 8293]
Determinants
1. The duration, extent and geographical area
of any use of the mark;
2. The market share in the Philippines and
other countries of the goods/services to
which the mark applies;
3. The degree of the inherent or acquired
distinction of the mark;
4. The quality-image or reputation acquired
by the mark;
5. The extent to which the mark has been
registered in the world;
6. The exclusivity of the registration attained
by the mark in the world;
7. The extent of use of the mark in the world;
8. The exclusivity of use in the world;
9. The commercial value attributed to the
mark in the world;
10. The record of successful protection of the
rights in the mark;
11. The outcome of litigations dealing with the
issue of whether the mar is well-known;
and
12. The presence or absence of identical or
similar test marks validly registered or used
on other similar goods or services and
owned by others. [See Rule 103,
Trademark Regulations of 2017]
Note: The determinants need not concur.
Protection Extended
Known Marks
to
Well-
The owner of a well-known mark has the right
to be protected, whether or not the mark is
registered in the Philippines. [Sec. 123.1(e)]
COMMERCIAL LAW
If the well-known mark is registered or not
registered in the Philippines:
A mark cannot be registered if it is identical
with, or confusingly similar to, or constitutes a
translation of an internationally well-known
mark if used for identical or similar goods or
services. [Sec. 123.1(e)]
If the well-known mark is registered in the
Philippines:
A mark cannot be registered if it is identical
with, or confusingly similar to, or constitutes a
translation of an internationally well-known
mark even if it is used for goods or services
which are NOT similar to those with respect to
which registration is applied. [Sec. 123.1(f)]
Other persons or entities cannot use the
registered well-known mark even for unrelated
goods, provided that:
1. The 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; and
2. That the interests of the owner of the
registered mark are likely to be damaged
by such use. [Sec. 123.1(f)]
8.
Rights
Conferred
Registration
by
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:
(i) Identical or similar signs or containers,
(ii) For goods or services which are identical or
similar to those in respect of which the
trademark is registered,
(iii) Where such use would result in a likelihood
of confusion.
Note: In case of the use of an identical sign for
identical goods or services, a likelihood of
confusion shall be presumed. [Sec. 147.1, RA
8293 as amended by RA 9502]
Exception: In cases of importation of drugs
and medicines allowed under Section 72.1 of
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this Act and of off-patent drugs and medicines,
third parties can import the same even without
the owner’s consent, provided that:
 Said drugs and medicines bear the
registered marks
 The registered marks have not been
tampered, unlawfully modified, or infringed
upon [Sec. 147.1, RA 8293 as amended by
RA 9502]
2.
3.
When Such Rights Are Conferred
The rights of the owner are conferred upon
registration of the mark, and a mark is deemed
registered on the 31st day from the publication
for purposes of opposition, provided no
opposition is filed.
 On the 31st day from the publication for
purposes of opposition (if no opposition is
filed)
 On the date the decision or final order
giving due course to the application
becomes final and executory (if opposition
is filed). [See Rule 703, Trademarks
Regulations of 2017]
Certificates of Registration
A certificate of registration of a mark shall be
prima facie evidence of:
1. The validity of the registration,
2. The registrant's ownership of the mark,
and
3. The registrant's exclusive right to use
the same in connection with the goods
or services and those that are related
thereto specified in the certificate. [Sec.
138, RA 8293]
Duration
A certificate of registration shall remain in force
for 10 years from registration and may be
renewed for periods of 10 years at its expiration
upon payment of the prescribed fee and upon
filing of a request. [Sec. 145-146, RA 8293]
Limitations on Such Rights
1. Duration (except that, inasmuch as the
registration of a trademark could be
renewed every 10 years, provided a
Declaration of Actual Use is timely
4.
5.
COMMERCIAL LAW
submitted, a trademark could conceivably
remain registered forever);
Territorial (except well-known marks);
Fair Use: The registration of the mark shall
not confer on the registered owner the right
to preclude third parties from using bona
fide their names, addresses, pseudonyms,
a geographical name, or exact indications
concerning the kind, quality, quantity,
destination, value, place of origin, or time
of production or of supply, of their goods or
services. Provided That:
a. Such use is confined to the
purposes of mere identification or
information; and
b. Such use cannot mislead the public
as to the source of the goods or
services. [Sec. 148, RA 8293]
Prior User: A registered mark shall have
no effect against any personwho, in good
faith,before the filing date or the priority
date,was using the mark for the purposes
of his business or enterprise. [Sec. 159.1,
RA 8293]
Non-Use: Failure to file declaration of
actual use automatically results in the
denial of the registration or the cancellation
of the registration by operation of law. [Sec.
124.2]
Assignment and Transfer
Application and Registration
of
1. An application for registration of a mark, or
its registration, may be assigned or
transferred with or without the transfer of
the business using the mark. [Sec. 149.1,
RA 8293]
2. Such assignment or transfer shall,
however, be null and void if it is liable to
mislead the public, particularly as regards
the nature, source, manufacturing process,
characteristics, or suitability for their
purpose, of the goods or services to which
the mark is applied. [Sec. 149.2, RA 8293]
3. The assignment of the application for
registration of a mark, or its registration,
shall be in writing and require the
signatures of the contracting parties.
Transfers by mergers or other forms of
succession may be made by any document
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supporting such transfer. [Sec. 149.3, RA
8293]
4. Assignments and transfers shall have no
effect against third parties until they are
recorded at the Office. [Sec. 149.5, RA
8293]
Any license contract concerning the
registration of a mark, or an application
therefor, shall provide for effective control by
the licensor of the quality of the goods or
services of the licensee in connection with
which the mark is used. If the license contract
does not provide for such quality control, or if
such quality control is not effectively carried
out, the license contract shall not be valid. [Sec.
150.1, RA 8293]
9. Use by third parties of names,
etc. similar to registered mark
Use of Indications by Third Parties for
Purposes Other than those for which the Mark
is Used. — Registration of the mark shall not
confer on the registered owner the right to
preclude third parties from using bona fide their
names,
addresses,
pseudonyms,
a
geographical name, or exact indications
concerning the kind, quality, quantity,
destination, value, place of origin, or time of
production or of supply, of their goods or
services: Provided, That such use is confined
to the purposes of mere identification or
information and cannot mislead the public as to
the source of the goods or services. [Sec. 148,
RA 8293]
The IPC deems unlawful 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. [Sec. 165.2 (b), RA
8293]
10.
Infringement and remedies
Trademark infringement
COMMERCIAL LAW
1. Any person who shall, without the consent
of the owner of the registered mark, use in
commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered
mark or the same container or a dominant
feature thereof:
a. 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
b. In connection with which such use
is likely to cause confusion, or to
cause mistake, or to deceive. [Sec.
155.1, RA 8293]
2. Any person who shall, without the consent
of the owner of the registered mark:
a. Reproduce, counterfeit, copy or
colorably imitate a registered mark
or a dominant feature thereof; and
b. Apply
such
reproduction,
counterfeit, copy or colorable
imitation to labels, signs, prints,
packages, wrappers, receptacles
or advertisements, intended to be
used in commerce:
i.
In connection with the sale,
offering for sale, distribution, or
advertising of goods or
services on; or
ii.
In connection with which such
use is likely to cause
confusion, or to cause
mistake, or to deceive. [Sec.
155.2, RA 8293]
Note: The infringement takes place at the
momentany of the acts stated in Subsection
155.1 or 155.2 are committed, regardless of
whether there is actual sale of goods or
services using the infringing material.
A mere distributor, and not the owner, cannot
assert any protection from trademark
infringement as it had no right in the first place
to the registration of the disputed trademarks.
[Superior Commercial Enterprises v. Kunnan
Enterprises, G.R. No. 169974 (2010)]
The ff. shall be liable in a civil action for
infringement:
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ELEMENTS
OF
TRADEMARK
INFRINGEMENT
1. The trademark being infringed is registered
in the Intellectual Property Office; however,
in infringement of trade name, the same
need not be registered;
2. The trademark or trade name is
reproduced, counterfeited, copied, or
colorably imitated by the infringer;
3. The infringing mark or trade name is used
in connection with the sale, offering for
sale, or advertising of any goods, business
or services; or the infringing mark or trade
name is applied to labels, signs, prints,
packages, wrappers, receptacles or
advertisements intended to be used upon
or in connection with such goods, business
or services;
4. The use or application of the infringing
mark or trade name is likely to cause
confusion or mistake or to deceive
purchasers or others as to the goods or
services themselves or as to the source or
origin of such goods or services or the
identity of such business;
5. It is without the consent of the trademark or
trade name owner or the assignee thereof.
[Prosource International, Inc. vs. Horphag
Research Management S.A., G.R. No.
180073 (2009)]
Of these, it is the element of likelihood of
confusion that is the gravamen of trademark
infringement. [McDonald’s Corporation v. L.C.
Big Mak Burger, Inc., et al., G.R. No. 143993
(2004)]
Whether a trademark causes confusion and is
likely to deceive the public hinges on
"colorable imitation" which has been defined
as "such similarity in form, content, words,
sound, meaning, special arrangement or
general appearance of the trademark or trade
name in their overall presentation or in their
essential and substantive and distinctive parts
as would likely mislead or confuse persons in
the ordinary course of purchasing the genuine
article." [Mighty Corporation v. E. & J. Gallo
Winery, G.R. No. 154342 (2004)]
COMMERCIAL LAW
Two types of confusion arise from the use of
similar or colorable imitation marks, namely –
1. Confusion of goods (product confusion)
and
2. Confusion of business (source or origin
confusion).
While there is confusion of goods when the
products are competing, confusion of business
exists when the products are non-competing
but related enough to produce confusion or
affiliation. [McDonald’s Corporation v. L.C. Big
Mak Burger, Inc., et al., G.R. No. 143993
(2004)]
Likelihood of confusion is admittedly a relative
term, to be determined rigidly according to the
particular
(and
sometimes
peculiar)
circumstances of each case. In determining
likelihood of confusion, the court must
consider:
1. The resemblance between the trademarks;
2. The similarity of the goods to which the
trademarks are attached;
3. The likely effect on the purchaser; and
4. The registrant’s express or implied consent
and other fair and equitable considerations.
[Mighty Corporation v. E. & J. Gallo Winery,
G.R. No. 154342 (2004)]
DOCTRINE OF NATURAL EXPANSION OF
BUSINESS
The protection to which the owner of a
trademark is entitled extends to cases in which
the use of by a junior appropriator of a
trademark of trade name is likely to lead to a
confusion of source.
 As where prospective purchasers would be
misled into thinking that the complaining
party has extended his business into the
field or is in any way connected with the
activities of the infringer; or when it
forestalls the normal potential expansion of
the business. [Dermaline v. Myra
Pharmaceuticals, Inc., G.R. No. 190065
(2010)]
 It is the fact that the underlying goods and
services of both marks deal with inasal and
inasal-flavored products which ultimately
fixes the relations between such goods and
services. It is not unlikely that the average
buyer would be led into the assumption that
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the curls are of petitioner and that the latter
has ventured into snack manufacturing or,
if not, that the petitioner has supplied the
flavorings for respondent's product. Either
way, the reputation of petitioner would be
taken advantage of and placed at the
mercy of respondent. [Mang Inasal
Philippines
v.
IFP
Manufacturing
Corporation, G.R. No. 221717 (2017)]
Damages
The owner of a registered mark may recover
damages from any person who infringes his
rights, and the measure of the damages
suffered shall be either:
(i) The
reasonable
profit which the
complaining party would have made, had
the defendant not infringed his rights; or
(ii) The profit which the defendant actually
made out of the infringement; or
(iii) In the event such measure of damages
cannot be readily ascertained with
reasonable certainty, then the court may
award as damages –
a. A reasonable percentage based
upon the amount of gross sales of
the defendant; or
b. The value of the services in
connection with which the mark or
trade name was used in the
infringement of the rights of the
complaining party. [Sec. 156.1, RA
8293]
Requirement of Notice
The owner of the registered mark shall not be
entitled to recover profits or damages unless
the acts have been committed with
knowledge that such imitation is likely to
cause confusion, or to cause mistake, or to
deceive.
Such knowledge is presumed if:
 The registrant gives notice that his mark is
registered by displaying with the mark the
words '"Registered Mark" or the letter R
within a circle or

COMMERCIAL LAW
The defendant had otherwise actual notice
of the registration. [Sec. 158, RA 8293]
Penalties
Independent of the civil and administrative
sanctions imposed by law, a criminal penalty of
imprisonment from two (2) years to five (5)
years and a fine ranging from Fifty thousand
pesos (P50,000) to Two hundred thousand
pesos (P200,000), shall be imposed on any
person who is found guilty of committing any of
the acts mentioned in Section 155, Section 168
and Subsection 169.1. (Arts. 188 and 189,
Revised Penal Code). [Sec. 170, RA 8293]
11.
Unfair Competition
The ff. shall be guilty of unfair competition, and
shall be subject to an action therefor:
(i) Any person who shall employ 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; or
(ii) Any person who shall commit any acts
calculated to produce said result. [Sec.
168.2, RA 8293]
Particular acts of unfair competition:
a. Selling one’s goods and giving them the
general appearance of goods of another
manufacturer or dealer, either:
 As to the goods themselves or in the
wrapping of the packages in which they
are contained, or the devices or words
thereon; or
 In any other feature of their
appearance, which would be likely to
influence purchasers to believe that the
goods offered are those of a
manufacturer or dealer, other than the
actual manufacturer or dealer. [Sec.
168.3(a), RA 8293]
b. Clothing
one’s
goods
with
such
appearance as shall deceive the public and
defraud another of his legitimate trade, or
any subsequent vendor of such goods or
any agent of any vendor engaged in selling
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such goods with a like purpose. [Sec.
168.3(a), RA 8293]
c. Using any artifice, or device, or employing
any other means calculated to induce the
false belief that such person is offering the
services of another who has identified such
services in the mind of the public. [Sec.
168.3(b), RA 8293]
d. Making any false statement in the course
of trade or committing any other act
contrary to good faith of a nature calculated
to discredit the goods, business or services
of another. [Sec. 168.3(c), RA 8293]
The elements of an action for unfair
competition are:
(1) Confusing similarity in the general
appearance of the goods, and
(2) Intent to deceive the public and defraud a
competitor.
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. The intent to
deceive and defraud may be inferred from the
similarity in appearance of the goods as offered
for sale to the public. Actual fraudulent intent
need not be shown. [McDonald’s Corporation
v. L.G. Big Mak Burger, Inc., et al., G.R. No.
143993 (2004)]
Who may file an action for unfair competition:
A person who has identified in the mind of the
publicthe goods he manufactures or deals in,
his business or services from those of others.
 Whether or not a registered mark is
employed
 Ratio: Such person has a property right in
the goodwillof the said goods, business or
services so identified,and said right shall
be protected in the same manner as other
property rights. [Sec. 168.1, RA 8293]
The "true test," therefore, of unfair competition
has thus been "whether the acts of the
defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer
making his purchases under the ordinary
conditions of the particular trade to which the
controversy relates.” [San Miguel Pure Foods
COMMERCIAL LAW
Company, Inc., vs. Foodsphere, G.R. No.
217781 (2018)]
Infringement of
Unfair Competition
Trademark or
Trade Name
Unauthorized use of Passing off of one’s
a trademark or trade goods as those of
name
another
Fraudulent intent is
Fraudulent intent is
unnecessary
essential
Prior registration of Registration is not
the trademark is a necessary
prerequisite to the
action
[In and Out Burger vs. Sehwani, G.R. No.
179127 (2008); Prosource International, Inc.
vs. Horphag Research Management S.A., G.R.
No. 180073 (2009)]
The law on unfair competition is broader and
more inclusive than the law on trademark
infringement.
 The latter is more limited but it recognizes
a more exclusive right derived from the
trademark adoption and registration by the
person whose goods or business is first
associated with it.
 Hence, even if one fails to establish his
exclusive property right to a trademark, he
may still obtain relief on the ground of his
competitor’s unfairness or fraud. [Mighty
Corporation v. E. & J. Gallo Winery, G.R.
No. 154342 (2004)]
12. Registration
of
marks
under the Madrid Protocol
Note: This part contains a simplified discussion
of the Madrid Protocol. For the full text, please
refer to the “PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCERNING THE
INTERNATIONAL
REGISTRATION
OF
MARKS”
The President's ratification [to the Madrid
Protocol] is valid and constitutional because
[it], being an executive agreement as
determined by the Department of Foreign
Affairs, does not require the concurrence of the
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Senate. [Intellectual Property Association of
the Philippines v. Ochoa et al., G.R. No.
204605, (2016)]
There is no conflict between the Madrid
Protocol and the IP Code […] The Madrid
Protocol accords with the intent and spirit of the
IP Code, particularly on the subject of the
registration of trademarks. The Madrid Protocol
does not amend or modify the IP Code on the
acquisition of trademark rights considering that
the applications under the Madrid Protocol are
still examined according to the relevant
national law. In that regard, the IPOPHL will
only grant protection to a mark that meets the
local registration requirements. [Intellectual
Property Association of the Philippines v.
Ochoa et al., G.R. No. 204605 (2016)]
Coverage
What is the Madrid Protocol
The Madrid Protocol is a system facilitating, by
way of a single international application and
registration:
1. The securing of protection of trademarks in
multiple designated territories that are
members to the Protocol [Art 2]; and
2. The management of such registered
trademarks.
Territorial Effect only on Designated
Territories
The protection resulting from the international
registration shall extend to any Contracting
Party only at the request of the person who files
the international application or who is the
holder of the international registration.
However, no such request can be made with
respect to the Contracting Party whose Office
is the Office of origin. [Art.3bis]
Rights conferred
An international registration is equivalent to a
bundle of national registrations in the
designated Contracting Parties.
The rights conferred to the registered owner of
the marks are the respective exclusive rights
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granted by the trademark law of each
designated country.
The protection of the mark in each of the
designated Contracting Parties is the same as
if the mark had been the subject of an
application for registration filed direct with the
Office of that Contracting Party. [Art. 4(1)]
If no provisional refusal is notified to the
International Bureau within the relevant time
limit, or if any such refusal is subsequently
withdrawn, the protection of the mark in each
designated Contracting Party is the same as if
it had been registered by the Office of that
Contracting Party. [Art. 4(1)]
When protection under international
registration lost
The protection resulting from the international
registration may no longer be invoked if, before
the expiry of five years from the date of the
international registration, the basic application
or the registration resulting therefrom, or the
basic registration, as the case may be, has
been 1) withdrawn, 2) has lapsed, 3) has been
renounced or 4) has been the subject of a final
decision of rejection, revocation, cancellation
or invalidation, in respect of all or some of the
goods and services listed in the international
registration.
The same applies if:
1. An appeal against a decision refusing the
effects of the basic application;
2. An action requesting the withdrawal of the
basic application or the revocation,
cancellation or invalidation of the
registration resulting from the basic
application or of the basic registration; or
3. An opposition to the basic application
results, after the expiry of the five-year
period, in a final decision of rejection,
revocation, cancellation or invalidation, or
ordering the withdrawal, of the basic
application, or the registration resulting
therefrom, or the basic registration, as the
case may be, provided that such appeal,
action or opposition had begun before the
expiry of the said period. [Art. 6(3)]
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Requirements for registration
Prior application or registration
An applicant must have first 1) applied for an
application (“basic application”) for, or 2)
registered (“basic registration”) the mark
sought to be internationally registered through
his “home” national or regional Intellectual
Property Office before filing an international
application.
The “Home” or Office of Origin
Must be in a territory that is: a Contracting Party
to the Protocol (e.g. Philippines), or within a
Contracting Organization (e.g. European
Union).
The Applicant Must:
1. be a national of;
2. be domiciled in; or
3. have a real and effective industrial or
commercial establishment in –
the Contracting State or Contracting
Organization. [Art.2]
Three-step Process
1. Application through the National or
Regional IP Office.
o Applicant needs to have first filed an
application or registered the mark
sought
to
be
internationally
registered through a national or
regional IP Office.
o Applicant
submits
international
application (see Art 3) of the Protocol
through the same IP Office, which
will certify and forward it to the World
Intellectual Property Organization
(WIPO).
2. Formal Examination by WIPO
o WIPO. through its International
Bureau (IB), conducts a formal
examination of the international
application.
o Once approved, the mark is
recorded
in
the
International
Register and published.
o The applicant a certificate of
international registration and notifies
the IP Offices designated where
protection is sought.
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3. Substantive Examination by National or
Regional designated Offices
o The respective IP Offices will assess
the application in accordance with
the local legislation and decide within
12-18 months whether the mark is
registrable therein, or will be
provisionally refused.
o WIPO will inform the applicant of the
decision of the IP Office.
The refusal of an IP Office to protect the mark
will not affect the decisions of other IP Offices.
Independence of International Registration
Upon expiry of a period of five years from the
date of the international registration, such
registration shall become independent of the
basic application or the registration resulting
therefrom, or of the basic registration, as the
case may be. [Art. 6(2)]
See discussion above on When protection
under international registration lost in relation
to this concept.
Term of Protection
Term
Registration of a mark at the International
Bureau is effected for ten years. [Art. 6(1)]
Renewal
Any international registration may be renewed
for a period of ten years from the expiry of the
preceding period, by the mere payment of the
basic fee, supplementary, and complementary
fees. [Art.7]
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The Copyright is Distinct from the
Property in the Material Object
Subject to it
D. COPYRIGHT
Copyright is the legal protection extended to
the owner of the rights in an “original work”,
which refers to every literary, scientific and
artistic production.
Copyright refers to the right granted by a
statute to the proprietor of an intellectual
production to its exclusive use and enjoyment
to the extent specified in the statute. [Olaño v.
Lim Eng Co, G.R. 195835 (2016)]
1. Basic Principles
Works are Protected by the Sole
Fact of Their Creation
PRINCIPLE OF AUTOMATIC PROTECTION
Copyright is vested from the very moment of
creation irrespective of their mode or form of
expression, as well as of their content, quality
and purpose. [Sec. 171.1-172.2, RA 8293]
The enjoyment and exercise of copyright,
including moral rights, shall not be the subject
of any formality; such enjoyment and such
exercise shall be independent of the existence
of protection in the country of origin of the work.
[Article 5(2), Berne Convention for the
Protection of Literary and Artistic Works]
Protection Extends Only to the
Expression of an Idea, Not the Idea
Itself
No protection shall extend, under this law, to
any idea, procedure, system method or
operation, concept, principle, discovery or
mere data as such, even if they are expressed,
explained, illustrated or embodied in a work.
[Sec. 175, RA 8293]
The copyright is distinct from the property in the
material object subject to it.
Consequently:
(1) The transfer or assignment of the
copyright shall NOT itself constitute a
transfer of the material object
(2) The transfer or assignment of the sole
copy or of one or several copies of the
work shall NOT imply transfer or
assignment of the copyright. [Sec. 181, RA
8293]
Copyright, like other intellectual
property rights, is a Statutory Right
Copyright, in the strict sense of the term is
purely a statutory right.
 The rights are limited to what the statute
confers.
 It may be obtained and enjoyed only with
respect to the subjects and by the persons,
and on terms and conditions specified in
the statute.
 It can cover only the works falling within the
statutory enumeration or description. [Pearl
and Dean vs. Shoemart, G.R. No. 148222
(2003)]
2. Copyrightable Works
Original Works
Literary and artistic works, hereinafter referred
to as "works", are original intellectual creations
in the literary and artistic domain protected
from the moment of their creation and shall
include in particular:
1. Books, pamphlets, articles and other
writings;
2. Periodicals and newspapers;
3. Lectures,
sermons,
addresses,
dissertations prepared for oral delivery,
whether or not reduced in writing or other
material form;
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4. Letters;
5. Dramatic
or
dramatico-musical
compositions; choreographic works or
entertainment in dumb shows;
6. Musical compositions, with or without
words;
7. Works of drawing, painting, architecture,
sculpture, engraving, lithography or other
works of art; models or designs for works
of art;
8. Original ornamental designs or models for
articles of manufacture, whether or not
registrable as an industrial design, and
other works of applied art;
9. Illustrations, maps, plans, sketches, charts
and three-dimensional works relative to
geography, topography, architecture or
science;
10. Drawings or plastic works of a scientific or
technical character;
11. Photographic works including works
produced by a process analogous to
photography; lantern slides;
12. Audiovisual works and cinematographic
works and works produced by a process
analogous to cinematography or any
process
for
making
audio-visual
recordings;
13. Pictorial illustrations and advertisements;
14. Computer programs; and
15. Other literary, scholarly, scientific and
artistic works [Sec. 172.1, RA 8293]
When a work is considered original:
1. The work is an independent creation of the
author; and
2. It must not be copied from the work of
another.
A person must be the original creator of the
work to be entitled to a copyright. He must have
created it by his own skill, labor and judgment
without directly copying or evasively imitating
the work of another. [Ching Kian Chuan vs. CA,
G.R. No. 130360 (2001)]
Originality is not determined by novelty,
aesthetic merit or ingenuity but that it is an
independent creation.
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Works are protected irrespective of their mode
or form of expression. [Sec. 172.2, RA 8293]
Derivative Works
The following derivative works shall also be
protected by copyright:
Dramatizations, translations, adaptations,
abridgments, arrangements, and other
alterations of literary or artistic works; and
Collections of literary, scholarly or artistic
works, and compilations of data and other
materials which are original by reason of the
selection or coordination or arrangement of
their contents. [Sec. 173.1, RA 8293]
Derivative works are protected as new
works, provided they shall not:
(1) Affect the force of any subsisting copyright
upon the original works employed or any
part thereof; or
(2) Be construed to imply any right to such use
of the original works, or to secure or extend
copyright in such original works. [Sec.
173.2, RA 8293]
3. Non-Copyrightable Works
Unprotected Subject Matter
(1) Any idea, procedure, system method or
operation, concept, principle, discovery or
mere data as such, even if they are
expressed, explained, illustrated or
embodied in a work;
(2) News of the day and other miscellaneous
facts having the character of mere items of
press information;
(3) Any official text of a legislative,
administrative or legal nature, as well as
any official translation thereof;
(4) Pleadings;
(5) Original decisions of courts and tribunals
(Note: This pertains to the “original
decisions” not the SCRA published
volumes since these are protected under
derivative works under Sec. 173.1). [Sec.
175, RA 8293]
Television newscasts are subject to copyright.
Although news or the events themselves are
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not copyrightable, expression of the news
particularly when it underwent a creative
process is entitled to copyright protection.
[ABS-CBN Corp. vs. Gozon, G.R. No. 195956
(2015)]
The format or mechanics of a TV show is not
copyrightable as copyright does not extend to
ideas, procedures, processes, systems,
methods of operation, concepts, principles or
discoveries regardless of the form in which
they are described, explained, illustrated or
embodied. [Joaquin Jr. et al vs. Drilon, et al,
G.R. No. 108946 (1999)]
No one may claim originality as to facts as
these do not owe their origin to an act of
authorship. The first person to find and report a
particular fact has not created the same; he has
merely discovered its existence. [Feist
Publication vs. Rural Telephone Services, 499
U.S. 340 (1991)]
A compilation is not copyrightable per se, but it
is copyrightable only if its facts have been
selected, coordinated, or arranged in such a
way that the resulting work as a while
constitutes an original work of authorship.
Otherwise known as the Sweat of the Brow or
Industrious
Collection
Test.
[Feist
Publication vs. Rural Telephone Services, 499
U.S. 340 (1991)]
Works of the Government of The
Philippines
Work of the Government of the Philippines
A work created by an officer or employee of the
Philippine Government or any of its
subdivisions and instrumentalities, including
government-owned or controlled corporations
as a part of his regularly prescribed official
duties. [Sec. 171.11, RA 8293]
General Rule: No copyright shall subsist in
any work of the Government.
COMMERCIAL LAW
2. Author of speeches, lectures, sermons,
addresses and dissertations shall have
exclusive right of making a collection of his
work.
However, prior approval of the government
agency or the office wherein the work is
created shall be necessary for the exploitation
of such work for profit. [Sec. 176.1]
Publication or republication by the Government
in a public document of any work in which
copyright is subsisting shall not be taken:
(1) To cause any abridgment or annulment of
the copyright; or
(2) To authorize any use or appropriation of
such work without the consent of the
copyright owner. [Sec. 176.3, RA 8293]
Note
Works made by an officer or employee of the
Government as part of his regularly prescribed
duty do not enjoy copyright. Works made by an
employee of the government which is not as a
part of his regularly prescribed official duties
(i.e. not considered a “Work of the
Government”) may enjoy copyright.
Works of the Public Domain
Works of the
copyrightable.
public
domain
are
non-
To this class of works belong:
1. Works, whose term of copyright has
expired;
2. Works wherein the copyright over them are
waived by the owner in favor of the public;
and
3. Works which did not enjoy copyright
protection in the first place, as in the case
of unregistered works made under
previous laws that required the registration
of copyright [See: Santos vs. McCullough
Printing Company, G.R. No. L-19439
(1964)]
Exceptions
1. When copyright is transferred by
assignment or bequest in favor of the
government [Sec. 176.3];
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4. Rights of Copyright Owner
Useful Articles
A “useful article” is defined as an article “having
intrinsic utilitarian function that is not merely to
portray the appearance of the article or to
convey information” is excluded from copyright
eligibility. The only instance when a useful
article may be the subject of copyright
protection is when it incorporates a design
element that is physically or conceptually
separable from the underlying product. [Olaño
v. Lim Eng Co, G.R. No. 195835 (2016)]
USEFUL ARTICLE DOCTRINE
Works whose sole purpose is utilitarian, and
have no separate artistic value are noncopyrightable works.
In contrast, a work of applied art, which has
utilitarian functions, but has an identifiable
artistic work or creation incorporated thereto,
can be the subject of a copyright to the extent
that the design features:
Can be identified separately from, and
Are capable of existing independently of the
utilitarian aspects of the article. [Brandir Int’l v.
Cascade Pacific, 834 F. 2nd 1142 (2nd Cir.)
(1987)]
Denicola Test: Conceptual Separability
(Aesthetics v. Functionality)
(1) The work cannot be copyrighted if its
design elements reflect a merger of
aesthetic and functional considerations,
and the artistic aspects of the work cannot
be conceptually separable from the
utilitarian aspects.
(2) Conceptual separability exists where
design elements can be identified as
reflecting the designer's artistic judgment,
exercised independently of functional
influences
(3) The relevant question should be whether
the design of a useful article, however
intertwined with the article’s utilitarian
aspects, causes an ordinary reasonable
observer to perceive an aesthetic concept
not related to the article’s use. [Brandir Int’l
v. Cascade Pacific, 834 F. 2nd 1142 (2nd
Cir.) (1987)]
Works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as of their content, quality
and purpose. [Sec. 172.2, RA 8293]
The issuance of the certificates of registration
and deposit as provided by Sec. 2, Rule 7 of
the Copyright Safeguards and Regulations, are
purely for recording the date of registration and
deposit of the work, and are not conclusive as
to copyright ownership (nor does it determine
the time when copyright vests). [Manly
Sportwear v. Dadodette Enterprises, G.R. No.
165306 (2005)]
Copyright or Economic Rights
Copyright or economic rights shall consist of
the exclusive right to carry out, authorize or
prevent the following acts:
1. Reproduction of the work or substantial
portion of the work;
2. Dramatization, translation, adaptation,
abridgment,
arrangement
or
other
transformation of the work;
3. The first public distribution of the original
and each copy of the work by sale or other
forms of transfer of ownership;
4. Rental of the original or a copy of:
a. An audiovisual or cinematographic
work,
b. A work embodied in a sound
recording,
c. A computer program,
d. A compilation of data and other
materials or a musical work in
graphic form
e. Irrespective of the ownership of the
original or the copy which is the
subject of the rental;
5. Public display of the original or a copy of
the work;
6. Public performance of the work; and
7. Other communication to the public of the
work. [Sec. 177, RA 8293]
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Publisher’s Copyright
In addition to the right to publish granted by the
author, his heirs, or assigns, the publisher shall
have a copyright consisting merely of the right
of reproduction of the
typographical
arrangement of the published edition of the
work. [Sec.174, RA 8293]
Copyright in a work of architecture
The copyright in any such work 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
However, it 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. [Sec. 186, RA 8293]
Communication
to
the
Public
of
Copyrighted Works
This includes point-to-point transmission of a
work, including:
(1) Video on demand, and
(2) Providing access to an electronic retrieval
system
- Such as computer databases, servers,
or similar electronic storage devices.
Broadcasting, rebroadcasting, retransmission
by cable, and broadcast and retransmission by
satellite are all acts of “communication to the
public” within the meaning of the IPC. [Rule 11,
Copyright Safeguards and Regulations]
First Public Distribution of Work
An exclusive right of first distribution of work
includes all acts involving distribution,
specifically including the first importation of an
original and each copy of the work into the
jurisdiction of the Republic of the Philippines.
[Rule 12, Copyright Safeguards and
Regulations]
Moral Rights
COMMERCIAL LAW
an assignment or license with respect to such
right, have the right:
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; [Sec. 193.1, RA 8293]
2. To make any alterations of his work prior
to, or to withhold it from publication; [Sec.
193.2, RA 8293]
3. 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, RA 8293]
4. To restrain the use of his name with respect
to any work not of his own creation or in a
distorted version of his work. [Sec. 193.4,
RA 8293]
ASSIGNMENT OR LICENSE OF MORAL
RIGHTS
Moral rights cannot be assigned or licensed.
[Sec. 198, RA 8293]
WAIVER OF MORAL RIGHTS
While Moral Rights cannot be assigned or
licensed, it can be waived. [Sec. 198, RA 8293]
General Rule: Moral rights can be waived in
writing, expressly stating such waiver. [Sec.
195, RA 8293]
Exceptions
Even if made in writing, waiver is still not valid
if:
1. Use of the name of the author, title of his
work, or his reputation with respect to any
version or adaptation of his work, which
because of alterations substantially tends
to injure the literary or artistic reputation of
another author; [Sec. 195.1, RA 8293]
2. It uses the name of the author in a work that
he did not create. [Sec. 195.1, RA 8293]
The right of attribution is waived by contribution
to a collective work unless such is expressly
reserved. [Sec. 196, RA 8293]
The author of a work shall, independently of the
economic rights in Section 177 or the grant of
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Transfer,
Assign,
or
The author has the right to assign or license the
copyright and/or the material object in whole or
in part, and they allow the owner to derive
financial reward from the use of his works by
others. [Sec. 180.1, RA 8293 as amended by
RA 10372]
Rights of Assignee or Licensee
The assignee or licensee is entitled to all the
rights and remedies which the assignor or
licensor had with respect to the copyright,
within the scope of the assignment or license.
[Sec. 180.1]
The submission of a literary, photographic or
artistic work to a newspaper, magazine or
periodical for publication shall constitute only a
license to make a single publication unless a
greater right is expressly granted. If two (2) or
more persons jointly own a copyright or any
part thereof, neither of the owners shall be
entitled to grant licenses without the prior
written consent of the other owner or owners.
[Sec. 180.3, RA 8293]
Any exclusivity in the economic rights in a work
may be exclusively licensed. Within the scope
of the exclusive license, the licensee is entitled
to all the rights and remedies which the licensor
had with respect to the copyright. [Sec. 180.4,
RA 8293]
Filing of Assignment or License
An assignment or exclusive license may be
filed in duplicate with the National Library upon
payment of the prescribed fee for registration in
books and records kept for the purpose. [Sec.
182, RA 8293]
Rights to Proceeds on Subsequent
Transfers (Droit De Suite or Follow
Up Rights)
In every sale or lease of an original work of
painting or sculpture or of the original
manuscript of a writer or composer,
COMMERCIAL LAW
subsequent to the first disposition thereof
by the author, the author or his heirs shall have:
 An inalienable right to participate in the
gross proceeds of the sale or lease to the
extent of five percent (5%)
Duration of Right
This right shall exist during the lifetime of the
author and for 50 years after his death. [Sec.
200, RA 8293]
Works not covered
Prints, etchings, engravings, works of applied
art, or works of similar kind wherein the author
primarily derives gain from the proceeds of
reproductions. [Sec. 201, RA 8293]
Related
Rights)
Rights
(Neighboring
Performer’s Rights
1) As regards their performances, the right of
authorizing:
a) The
broadcasting
and
other
communication to the public of their
performance; and
b) The
fixation
of
their
unfixed
performance. [Sec. 203.1, RA 8293]
c) Such right shall be maintained and
exercised 50 years after his death, by
his heirs, and in default of heirs, the
government, where protection is
claimed. [Sec. 204.2, RA 8293]
2) The right of authorizing the direct or indirect
reproduction of their performances fixed in
sound recordings, or audiovisual works or
fixations in any manner or form; [Sec.
203.2, RA 8293, as amended by 10372]
3) The right of authorizing the first public
distribution of the original and copies of
their performance fixed in the sound
recording or audiovisual works or fixations
through sale or rental or other forms of
transfer of ownership; [Sec. 203.3, RA
8293, as amended by RA 10372]
a) Subject to the provisions of Section
206
4) The right of authorizing the commercial
rental to the public of the original and
copies of their performances fixed in sound
recordings or audiovisual works or
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fixations, even after distribution of them by,
or pursuant to the authorization by the
performer; [Sec. 203.4, RA 8293, as
amended by RA 10372]
5) The right of authorizing the making
available to the public of their
performances fixed in sound recordings or
audiovisual works or fixations, by wire or
wireless means, in such a way that
members of the public may access them
from a place and time individually chosen
by them; [Sec. 203.5, RA 8293, as
amended by RA 10372]
6) The right to claim to be identified as the
performer of his performances, and to
object to any distortion, mutilation or other
modification of his performances that
would be prejudicial to his reputation, as
regards his live aural performances or
performances fixed in sound recordings or
audiovisual works or fixations;
a) Exception: Where the omission is
dictated by the manner of the use of the
performance. [Sec. 204.1, RA 8293, as
amended by RA 10372]
7) The right to an additional remuneration
equivalent to at least five percent (5%) of
the original compensation he or she
received for the first communication or
broadcast, in every communication to the
public or broadcast of a performance
subsequent to the first communication or
broadcast thereof by the broadcasting
organization. [Sec. 206, RA 8293]
a) Unless otherwise provided in the
contract
Rights of Producers of Sound Recordings
1. The right to authorize the direct or indirect
reproduction of their sound recordings, in
any manner or form; the placing of these
reproductions in the market and the right of
rental or lending; [Sec. 208.1, RA 8293]
2. The right to authorize the first public
distribution of the original and copies of
their sound recordings through sale or
rental or other forms of transferring
ownership; [Sec. 208.2, RA 8293]
3. The right to authorize the commercial
rental to the public of the original and
copies of their sound recordings, even after
COMMERCIAL LAW
distribution by them by or pursuant to
authorization by the producer. [Sec. 208.3,
RA 8293]
Single Equitable Remuneration
The right to be paid a single equitable
remuneration by the user to be shared with the
performers equally, in the absence of any
agreement, when a sound recording published
for commercial purposes, or a reproduction of
such sound recording, is:
a. Used directly for broadcasting or
b. Used for other communication to the
public; or
c. Publicly performed with the intention of
making and enhancing profit. [Sec. 209,
RA 8293]
Rights of Broadcasting Organizations
1. The rebroadcasting of their broadcasts;
[Sec. 211.1, RA 8293]
2. The recording in any manner, including the
making of films or the use of video tape, of
their broadcasts for the purpose of
communication to the public of television
broadcasts of the same; [Sec. 211.2, RA
8293]
3. The use of such records for fresh
transmissions or for fresh recording. [Sec.
211.3, RA 8293]
Must-Carry Rule
This rule prevents cable television companies
from excluding broadcasting organization
especially in those places not reached by
signal. Also, the rule prevents cable television
companies from depriving viewers in far-flung
areas the enjoyment of programs available to
city viewers. [ABS-CBN Broadcasting vs.
Philippine Multi-Media System, G.R. Nos.
175769-70 (2009)]
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5. Rules on
Copyright
Ownership
of
Ownership of Copyright
Work
Single Creator
of an Original
Work
Works of Joint
Authorship
Work created
during
the
course
of
employment
Work
commissioned
by a person
other than the
employer
Ownership
Belongs to the author of
the work [Sec. 178.1, RA
8293]
Belongs of the co-authors;
in
the
absence
of
agreement, their rights
shall be governed by the
rules on co-ownership.
However, if the work
consists of parts that can
be used separately and
identified, the author of
each part owns the
copyright of the part he
has created. [Sec. 178.2,
RA 8293]
Belongs to the employee if
the creation is not a part of
his regular duties, even if
he used the time, facilities
and materials of the
employer.
However,
copyright belongs to the
employer if the work is in
the performance of the
employee’s regular duties
unless
there
is
an
agreement to the contrary.
[Sec. 178.3, RA 8293]
The
person
who
commissioned the work
and pays for it holds
ownership of the work per
se, but copyright remains
with the creator unless
there was a stipulation to
the contrary. [Sec. 178.4,
RA 8293]
Audio
works
COMMERCIAL LAW
visual
Belongs to the producer,
author of the scenario,
composer of the music,
film director, and author of
the
adapted
work.
However,
subject
to
stipulations, the producers
shall
exercise
the
copyright as may be
required for the exhibition
of the work, except for the
right to collect license fees
for the performance of
musical compositions in
the work. [Sec. 178.5, RA
8293]
Letters
Belongs to the writer, but
the court may authorize
their
publication
or
dissemination of the public
good or interest of justice
requires, pursuant to Art.
723, New Civil Code. [Sec.
178.6, RA 8293]
Anonymous
Publishers are deemed to
represent the authors,
and
the
contrary
pseudonymous unless
appears, the pseudonyms
works
or adopted names leave
no doubt as to the author’s
identity or if the author
discloses his identity.
[Sec. 179, RA 8293]
Collective
A contributor is deemed to
works
have waived his right
unless he expressly
reserves it. [Sec. 196, RA
8293]
A person to be entitled to copyright must be the
original creator of the work. He must have
created it by his own skill, labor and judgment
without directly copying or evasively imitating
the work of another. [Wilson Ong Ching Kian
Chuan v. CA, G.R. 130360 (2001)]
Ownership of copyrighted material is shown by
proof of originality and copyrightability. While it
is true that where the complainant presents a
copyright certificate in support of the claim of
infringement, the validity and ownership of the
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copyright is presumed. This presumption
however is rebuttable and cannot be sustained
where other evidence in the record casts doubt
on the question of ownership.
xxx
Valid copyright ownership denotes originality of
the copyrighted material. Originality means that
the material was not copied, evidences at least
minimum creativity and was independently
created by the author. [Olaño v. Lim Eng Co,
G.R. 195835 (2016)]
Presumption of Authorship
General Rule: The natural person whose
name is indicated on a work in the usual
manner as the author shall, in the absence of
proof to the contrary, be presumed to be the
author of the work.
The person or body corporate, whose name
appears on an audio-visual work in the usual
manner, shall, in the absence of proof to the
contrary, be presumed to be the maker of said
work. [Sec. 219, RA 8293]
Use of Pseudonyms
This provision shall be applicable even if the
name is a pseudonym, where the pseudonym
leaves no doubt as to the identity of the author.
[Sec. 219, RA 8293]
Transfer
or
Copyright
Assignment
of
The copyright may be assigned or licensed in
whole or in part. [Sec. 180.1, RA 8293]
 The copyright is not deemed assigned or
licensed inter vivos in whole or in part
unless there is a written indication of such
intention. [Sec. 180.2, RA 8293 as
amended by RA 10372]
 If two or more persons jointly own a
copyright or any part thereof, neither of the
owners shall be entitled to grant licenses
without the prior written consent of the
other owner or owners. [Sec. 180.3, RA
8293]
COMMERCIAL LAW
Submitted Work
General Rule: The submission of a literary,
photographic or artistic work to a newspaper,
magazine or periodical for publication shall
constitute only a license to make a single
publication.
Exception: Unless a greater right is expressly
granted. [Sec. 180.3, RA 8293]
Collective
Management
Organizations (CMO)
CMOs are entities composed of artists, writers,
composers
and
other
creators,
or
copyright/related rights holders that manage
the bundle of copyrights that their members
own by providing the legal platform to efficiently
enforce their intellectual property rights.
The owners of copyright and related rights or
their heirs may designate a society of artists,
writers, composers and other right-holders to
collectively manage their economic or moral
rights on their behalf.
 For the said societies to enforce the
rights of their members, they shall first
secure the necessary accreditation
from the Intellectual Property Office.
[Sec. 183, RA 8293 as amended by RA
10372]
The primary purpose of a CMO is to collectively
manage copyright and/or related rights,
including any or all of the following activities:
(1) Negotiation with and grant of licenses to
users of protected literary, scholarly,
scientific and artistic works, derivative
works, performances, sound recordings,
audiovisual works and broadcasts;
(2) Collection of royalties and other forms of
remuneration for the use of protected
literary, scholarly, scientific and artistic
works, derivative works, performances,
sound recordings, audiovisual works and
broadcasts;
(3) Collection of proceeds In subsequent
transfers of the originals of paintings,
sculptures and manuscripts;
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(4) Collection of additional remuneration for
subsequent communication or broadcast of
a performance;
(5) Collection of single equitable remuneration
for the broadcast, other communication to
the public or public performance of a sound
recording; and
(6) Distribution of the abovementioned
collections to the rights holders. [IPOPHL
Office Order 13-173 s.2013]
6. Limitations on Copyright
Fair Use
DOCTRINE OF FAIR USE
The fair use of copyrighted work for criticism,
news reporting, teaching (including multiple
copies for classroom use), research and similar
purposes is not an infringement of copyright.
[Sec. 185.1, RA 8293]
A privilege, in persons other than the owner of
the copyright, to use the copyrighted material
in a reasonable manner without his consent,
notwithstanding the monopoly granted to the
owner by the copyright. It is meant to balance
the monopolies enjoyed by the copyright owner
with the interests of the public and of society.
Decompilation
Refers to the reproduction of the code and
translation of the forms of the computer
program to achieve the inter-operability of an
independently created computer program with
other programs. This may also constitute fair
use. [Sec. 185.1, RA 8293]
COMMERCIAL LAW
[Sec. 185.1, RA 8293; Harper & Row v.
Nation Enterprise, 471 US 539, (1985)]
The fact that a work is unpublished shall not by
itself bar a finding of fair use if such finding is
made upon consideration of all the above
factors. [Sec. 185.2, RA 8293]
Commercial use of the copyrighted work can
be weighed against fair use. [ABS–CBN Corp.
vs. Gozon, G.R. No. 195956 (2015)]
Parody, like other comment and criticism, may
claim fair use. The more transformative the
new work, the less will be the significance of
other factors, like commercialism. The heart of
any parodist's claim to quote from existing
material is the use of some elements of a prior
author's composition to create a new one that,
at least in part, comments on that author's
work. [Campbell v. Acuff-Rose Music Inc., 510
U.S. 569 (1994)]
Limitations on Protection
Neighboring Rights
of
Sections 203, 208 and 209 shall not apply
where the acts referred to in those Sections are
related to:
1. The use by a natural person exclusively for
his own personal purposes;
2. Using short excerpts for reporting current
events;
3. Use solely for the purpose of teaching or
for scientific research; and
4. Fair use of the broadcast subject to certain
conditions. [Sec. 212, RA 8293]
Term of Protection
Factors to consider in determining Fair Use
a. The purpose and character of the use,
including whether such use is of a
commercial nature or is for non-profit
educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the
portion used in relation to the copyrighted
work as a whole; and
d. The effect of the use upon the potential
market for or value of the copyrighted work
Duration of Copyright
Works
Original Literary and
Artistic
Works
including
Posthumous Works
Derivative
Works
including
Posthumous Works
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Term
Lifetime of author
and for 50 years after
his death [Sec.
213.1, RA 8293]
Lifetime of author
and for 50 years after
his death [Sec.
213.1, RA 8293]
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Joint Authorship
Anonymous
Pseudonymous
Works
or
Applied Art
Published
Photographic Works
Unpublished
Photographic Works
Published
Audiovisual Works
Unpublished Audiovisual Works
Lifetime of the last
surviving author and
for 50 years after his
death [Sec. 213.2,
RA 8293]
50 years from date of
first lawful publication
[Sec. 213.3, RA
8293]
25 years from date of
making [Sec. 213.4,
RA 8293]
50
years
from
publication
[Sec.
213.5, RA 8293]
50 years from the
making [Sec. 213.5,
RA 8293]
50
years
from
publication
[Sec.
213.6, RA 8293]
50 years from the
making [Sec. 213.6,
RA 8293]
The term of protection subsequent to the death
of the author shall run from the date of his
death or of publication, but such terms shall
always be deemed to begin on the first day of
January of the year following the event which
gave rise to them. [Sec. 214, RA 8293]
Term of Protection of Moral Rights
Moral Right
Term
Lifetime of author and in
Right
of perpetuity after his death
Attribution or [Sec. 198.1, RA 8293 as
Right
of amended by RA 10372]
Paternity
(Sec. 193.1)
Sec.
193.2193.4
Coterminous
with the
economic rights. [Sec.
198, RA 8293 as amended
by RA 10372]
COMMERCIAL LAW
Term of Protection of Neighboring Rights
Works
Term
For
50 years from the end of
performances
the year in which the
not incorporated performance took place
in recordings
[Sec. 215.1(a), RA 8293]
For sound or 50 years from the end of
image
and the year in which the
sound
recording took place.
recordings and
[Sec. 215.1(b), RA 8293]
for
performances
incorporated
therein
Broadcasts
20 years from the date
the broadcast took place
[Sec. 215.2, RA 8293]
7. Copyright Infringement
Infringement of Copyright
The IP Code was amended to expand
infringement not only to cover direct
infringement
but
also
third
party
infringement.
A person infringes a right protected under this
Act when one:
a. Directly commits an infringement;
b. Benefits from the infringing activity of
another person who commits an
infringement if the person benefiting:
i. Has been given notice of the
infringing activity; and
ii. Has the right and ability to control
the activities of the other person;
c. With knowledge of infringing activity,
induces, causes or materially contributes
to the infringing conduct of another. [Sec.
216, RA 8293 as amended by RA 10372]
It also includes the act of any person who at the
time when copyright subsists in a work has in
his possession an article which he known, or
ought to know, to be an infringing copy of the
work for the purpose of:
a. Selling, letting for hire, or by way of trade
offering or exposing for sale, or hire, the
article
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b. Distributing the article for purpose of trade,
or for any other purpose to an extent that
will prejudice the rights of the copyright
owner in the work; or
c. Trade exhibit of the article in public. [Sec.
217.3, RA 8293]
What Constitutes Infringement
Infringement 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.
It can cover a whole range of acts from
copying, assembling, packaging to marketing,
including the mere offering for sale of
counterfeit goods. [Habana et al vs. Robles et
al., G.R. No. 131522 (1999)]
Copyright infringement is thus committed by
any person who shall use original literary or
artistic works, or derivative works, without the
copyright owner’s consent in such a manner as
to violate the foregoing copy and economic
rights.
xxx
For a claim of copyright to prevail, the
evidence on record must demonstrate: (1)
ownership of a validly copyrighted material by
the complainant; and (2) infringement of the
copyright by the respondent.
xxx
[W]hat
was
copyrighted
were
their
sketches/drawings only, and not the actual
hatch doors themselves. To constitute
infringement, the usurper must have copied or
appropriated the original work of an author or
copyright proprietor, absent copying, there can
be no infringement of copyright. Absent
originality and copyrightability as elements of a
valid copyright ownership, no infringement can
subsist. [Olaño v. Lim Eng Co, G.R. 195835
(2016)]
COMMERCIAL LAW
Substantial Reproduction
It is not necessarily required that the entire
copyrighted work, or even a large portion of it,
be copied. If so much is taken that the value of
the original work is substantially diminished,
there is an infringement of copyright and to an
injurious extent, the work is appropriated.
In cases of infringement, copying alone is not
what is prohibited. The copying must produce
an “injurious effect.” [Habana et al vs. Robles
et al., G.R. No. 131522 (1999)]
Knowledge not an Element of Infringement
Knowledge of infringement is material only
when a person is charged of aiding and
abetting a copyright infringement. The liability
for copyright infringement is in the nature of
strict liability. It does not require mens rea or
culpa. [ABS–CBN Corp vs. Gozon, G.R. No.
195956 (2015)]
The following shall NOT constitute
infringement of copyright:
a. Recitation or performance of a work once it
has been made accessible to the public if
(1) privately done AND free of charge OR
(2) strictly for a charitable or religious
institution; [Sec. 184.1(a), RA 8293]
b. Making of quotations from a published
work: (1) compatible with fair use, (2)
extent is justified by the purpose, (3) source
and name of the author, appearing on
work, must be mentioned; [Sec. 184.1(b),
RA 8293]
c. Reproduction or communication to the
public by mass media of articles on current
political, social, economic, scientific or
religious topic, lectures, addresses and
other works, delivered in public: (1) for
information purposes, (2) not expressly
reserved, and (3) source is already
indicated; [Sec. 184.1(c), RA 8293]
d. Reproduction and communication to the
public of literary, scientific or artistic works
as part of reports of current events by
means of photography, cinematography or
broadcasting to the extent necessary for
the purpose; [Sec. 184.1(d), RA 8293]
e. Inclusion of a work in a publication,
broadcast or other communication to the
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public, sound recording or film if made by
way of illustration for teaching purposes
compatible with fair use and the source and
the name of the author appearing on work,
must be mentioned; [Sec. 184.1(e), RA
8293]
f. Recording made in schools, universities, or
educational institutions of a work included
in a broadcast for the use of schools,
universities or educational institutions.
Such recording must be deleted within a
reasonable period; such recording may not
be made from audio-visual works which are
part of the general cinema, repertoire of
feature films except of brief excerpts of the
work; [Sec. 184.1(f), RA 8293]
g. Making of ephemeral recordings; (1) by a
broadcasting organization, (2) by means of
its work or facilities, (3) for use in its own
broadcast; [Sec. 184.1(g), RA 8293]
h. Use made of a work by or under the
direction or control of the government for
public interest compatible with fair use;
[Sec. 184.1(h), RA 8293]
i. Public performance or the communication
to the public of a work in a place where no
admission fee is charged by a club on
institution for charitable or educational
purpose only and the aim is not profitmaking; [Sec. 184.1(i), RA 8293]
j. Public display of the original or a copy of
the work not made by means of a film,
slide, television, image or otherwise on
screen or by means of any other device or
process either the work has been
published, sold, given away, or transferred
to another person by the author or his
successor in title; [Sec. 184.1(j), RA 8293]
k. Use made of a work for the purpose of any
judicial proceedings or for the giving of
professional advice by a legal practitioner.
[Sec. 184.1(k), RA 8293]
l. The reproduction or distribution of
published articles or materials in a
specialized format exclusively for the use
of the blind, visually- and reading-impaired
persons: Provided, That such copies and
distribution shall be made on a nonprofit
basis and shall indicate the copyright
owner and the date of the original
COMMERCIAL LAW
publication. [Sec. 184.1(l), RA 8293 as
amended by RA 10372]
Reproduction of Published Work
General Rule: The private reproduction of a
published work in a single copy, where the
reproduction is made by a natural person
exclusively for research and private study, shall
be permitted, without the authorization of the
owner of copyright in the work. [Sec. 187.1, RA
8293]
Exceptions: Such permission shall not extend
to:
a. A work of architecture in the form of
building or other construction;
b. An entire book, or a substantial part
thereof, or of a musical work in graphic
form by reprographic means;
c. A compilation of data and other materials;
d. A computer program except as provided in
Section 189; and
e. Any work in cases where reproduction
would unreasonably conflict with a normal
exploitation of the work or would otherwise
unreasonably prejudice the legitimate
interests of the author. [187.2, RA 8293]
Reprographic Reproduction by Libraries
Any library or archive whose activities are not
for profit may, without the authorization of the
author of copyright owner, make a single copy
of the work by reprographic reproduction:
a. Where the work by reason of its fragile
character or rarity cannot be lent to user in
its original form;
b. Where the works are isolated articles
contained in composite works or brief
portions of other published works and the
reproduction is necessary to supply them,
when this is considered expedient, to
persons requesting their loan for purposes
of research or study instead of lending the
volumes or booklets which contain them;
and
c. Where the making of such a copy is in
order to preserve and, if necessary in the
event that it is lost, destroyed or rendered
unusable, replace a copy, or to replace, in
the permanent collection of another similar
library or archive, a copy which has been
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lost, destroyed or rendered unusable and
copies are not available with the publisher.
[Sec. 188.1, RA 8293]
It shall not be permissible to produce a volume
of a work published in several volumes or to
produce missing tomes or pages of magazines
or similar works, unless the volume, tome or
part is out of stock:
 Provided, That every library which, by
law, is entitled to receive copies of a
printed work, shall be entitled, when
special reasons so require, to
reproduce a copy of a published work
which is considered necessary for the
collection of the library but which is out
of stock. [Sec. 188.2, RA 8293]
Reproduction of Computer Program
The reproduction in one back-up copy or
adaptation of a computer program shall be
permitted, without the authorization of the
author of, or other owner of copyright in, a
computer program, by the lawful owner of that
computer program: Provided, That the copy or
adaptation is necessary for:
a. The use of the computer program in
conjunction with a computer for the
purpose, and to the extent, for which the
computer program has been obtained; and
b. Archival
purposes,
and,
for
the
replacement of the lawfully owned copy of
the computer program in the event that the
lawfully obtained copy of the computer
program is lost, destroyed or rendered
unusable. [Sec. 189.1, RA 8293]
Importation for Personal Purposes
Sec. 190.2 of RA 8293 that limited
importation of books was repealed by
10372. RA 10372 expressly limited
prohibition to import or export only
counterfeit goods.
the
RA
the
to
Remedies
Remedies for Infringement
(1) An
injunction
restraining
such
infringement; [Sec. 216.1(a)]
(2) Actual damages, including legal costs and
other expenses, as he may have incurred
(3)
(4)
(5)
(6)
(7)
COMMERCIAL LAW
due to the infringement, as well as the
profits the infringer may have made due to
such infringement;
 In proving profits: The plaintiff shall be
required to prove sales only, and the
defendant shall be required to prove
every element of cost which he claims
[Sec. 216.1(b)]
Such damages which to the court shall
appear to be just and shall not be regarded
as penalty, in lieu of actual damages and
profits; [Sec. 216.1(b)]
Impounding during the pendency of the
action, upon such terms and conditions as
the court may prescribe, sales invoices and
other documents evidencing sales, all
articles and their packaging alleged to
infringe a copyright and implements for
making them; [Sec. 216.1(c)]
Deliver under oath for destruction without
any compensation all infringing copies or
devices, as well as all plates, molds, or
other means for making such infringing
copies as the court may order; [Sec.
216.1(d)]
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; [Sec. 216.1(e)]
Criminal liability.
The copyright owner may elect, at any time
before final judgment is rendered, to recover
instead of actual damages and profits, an
award of statutory damages for all
infringements involved in an action in a sum
equivalent to the filing fee of the infringement
action but not less than Php50,000.00. In
awarding statutory damages, the court may
consider the following factors:
(1) The nature and purpose of the infringing
act;
(2) The flagrancy of the infringement;
(3) Whether the defendant acted in bad faith;
(4) The need for deterrence;
(5) Any loss that the plaintiff has suffered or is
likely to suffer by reason of the
infringement; and
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(6) Any benefit shown to have accrued to the
defendant by reason of the infringement.
In case the infringer was not aware and had no
reason to believe that his acts constitute an
infringement of copyright, the court in its
discretion may reduce the award of statutory
damages to a sum of not more than Ten
thousand pesos (Php10,000.00). [Sec. 216.1]
Note: The amount of damages to be awarded
shall be doubled against any person who:
i.
Circumvents effective technological
measures; or
ii.
Having reasonable grounds to know
that it will induce, enable, facilitate or
conceal the infringement:
a. Remove or alter any electronic
rights management information
from a copy of a work, sound
recording, or fixation of a
performance; or
b. Distribute,
import
for
distribution,
broadcast,
or
communicate to the public
works or copies of works
without authority, knowing that
electronic rights management
information has been removed
or altered without authority.
[Sec. 216.1(b)]
However, no damages may be recovered
under this Act after the lapse of four (4) years
from the time the cause of action arose. [Sec.
226, RA 8293]
Criminal penalties
Criminal Penalties for Infringement
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 (6) years plus a fine ranging from
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One hundred fifty thousand pesos
(P150,000) to Five hundred thousand
pesos (P500,000) for the second offense.
(c) Imprisonment of six (6) years and one (1)
day to nine (9) years plus a fine ranging
from Five hundred thousand pesos
(P500,000) to One million five hundred
thousand pesos (P1,500,000) for the third
and subsequent offenses.
(d) In all cases, subsidiary imprisonment in
cases of insolvency. [Sec. 217.1, RA 8293
as amended by RA 10372]
Determination of Penalty
In determining the number of years of
imprisonment and the amount of fine, the court
shall consider:
1. The value of the infringing materials that
the
defendant
has
produced
or
manufactured; and
2. The damage that the copyright owner has
suffered by reason of the infringement.
[Sec. 217.2, RA 8293 as amended by RA
10372]
The respective maximum penalty stated in
Section 217.1 for the first, second, third and
subsequent offense, shall be imposed when
the infringement is committed by:
(a) The
circumvention
of
effective
technological measures;
(b) The removal or alteration of any electronic
rights management information from a
copy of a work, sound recording, or fixation
of a performance, by a person, knowingly
and without authority; or
(c) The
distribution,
importation
for
distribution, broadcast, or communication
to the public of works or copies of works,
by a person without authority, knowing that
electronic rights management information
has been removed or altered without
authority. [Sec. 217.2, RA 8293 as
amended by RA 10372]
Certificate of Registration and Deposit
The issuance of the certificates of registration
and deposit as provided by Sec. 2, Rule 7 of
the Copyright Safeguards and Regulations, are
purely for recording the date of registration and
deposit of the work, and are not conclusive as
Page 374 of 450
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to copyright ownership (nor does it determine
the time when copyright vests). [Manly
Sportswear v. Dadodette Enterprises, G.R. No.
165306 (2005)]
Purpose of Registration and Deposit:
Completing the records of the National Library
and the Supreme Court Library; provided, that
only works in the field of law shall be deposited
with the Supreme Court Library. [Sec. 191, RA
8293 as amended by RA 10372]
The National Library has deputized the
IPOPHL to receive deposited works in its
behalf.
Page 375 of 450
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