INTELLECTUAL PROPERTY LAW REVIEWER
ALYSSA CABALANG
REPUBLIC ACT NO. 8293: An Act Prescribing the
Intellectual Property Code and Establishing the Intellectual
Property Office, Providing For Its Powers and Functions, and
For Other Purposes (Approved on June 6, 1997, took effect
on January 1, 1998)
INTELLECTUAL PROPERTY refers to the creations of the
mind: inventions, literary and artistic works, symbols,
names, images, and designs used in commerce. I means the
legal rights which result from intellectual activity in the
industrial, scientific, literary, and artistic fields.
INTELLECTUAL PROPERTY RIGHTS
The term "intellectual property rights" consists of:
a. Copyright and Related Rights;
b. Trademarks and Service Marks;
c. Geographic Indications;
d. Industrial Designs;
e. Patents;
f. Layout-Designs
(Topographies)
of
Integrated
Circuits;
g. Protection of Undisclosed Information
Copyright – right granted by statute to the author or
originator of literary, scholarly, scientific, or artistic
productions including computer programs. A copyright
gives him the legal right to determine how the work is used
and to obtain economic benefits from the work. It 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.
Trademarks – 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.
It is vested from registration.
Geographic Indications – one which identifies a good as
originating in the territory of a TRIPS member, or a region
or locality in that territory where a given quality, reputation
or other characteristic of a good is essentially attributable
to its geographical origin.
Industrial Design – any composition of lines or colors or
any three-dimensional form, whether or not associated with
lines or colors: Provided, that such composition or form
gives a special appearance to and can serve as pattern for
an industrial product or handicraft.
Patents – a government authority or license conferring a
right or title for a set period, especially the sole right to
exclude others from making, using, or selling an invention.
Layout-Design (Topography) of Integrated Circuit – the
three-dimensional disposition, however expressed, of the
elements, at least one of which is an active element, and of
some or all the interconnections of an integrated circuit, or
such a three-dimensional disposition prepared for an
integrated circuit intended for manufacture. It must be
original in a sense that they are the result of their creators’
own intellectual effort.
Undisclosed information – Information which:
a. Is a secret in a sense that it is not, as a body or in
the precise configuration and assembly of
components, generally known among or readily
accessible to persons within the circles that
normally deal with the kind of information in
question;
b. Has a commercial value because it is secret; and
c. Has been subject to reasonable steps under the
circumstances, by the person lawfully in control of
the information, to keep it secret.
Section 2. DECLARATION OF STATE POLICY. — The State
recognizes that an effective intellectual and industrial
property system is
1. vital to the development of domestic and creative
activity
2. facilitates transfer of technology
3. attracts foreign investments and
4. ensures market access for our products
It shall protect and secure the exclusive rights of
scientists, inventors, artists and other gifted citizens to their
intellectual property and creations, particularly when
beneficial to the people, for such periods as provided in this
Act.
The use of intellectual property bears a social function.
To this end, the State shall promote the diffusion of
knowledge and information for the promotion of national
development and progress and the common good.
It is also the policy of the State to streamline administrative
procedures of registering patents, trademarks and
copyright, to liberalize the registration on the transfer of
technology, and to enhance the enforcement of intellectual
property rights in the Philippines.
STATE POLICIES
a.
b.
c.
To protect and secure the exclusive rights of
scientists, investors, artists, and other gifted
citizens to their intellectual property and creations,
particularly when beneficial to the people, for such
periods as provided R.A. No. 8293.
To promote the diffusion of knowledge and
information for the promotion of national
development and progress and the common good.
To streamline administrative procedures of
registering patents, trademarks and copyright, to
liberalize the registration on the transfer of
technology, and to enhance the enforcement of
intellectual property rights in the Philippines
The term "technology transfer arrangements" refers to:
a) contracts or agreements
b) involving the transfer of systematic knowledge
c) for the manufacture of a product, the application of
a process, or rendering of a service
d) including management contracts;
e) and the transfer, assignment or licensing of all forms
of intellectual property rights,
f) including licensing of computer software
g) except computer software developed for mass
market.
Nature:
It is a licensing contract between an intellectual property
right owner, as the licensor, and a second party, as the
licensee who was granted the authority to commercially
exploit the same intellectual property right under specified
terms and conditions.
This is a highly-regulated contract given its role in the
fulfillment of the State’s desire to bring technologies into
public domain through disclosures.
Trade Related Aspects of the Intellectual Property
Rights (TRIPS) – ratified by the Philippine Senate on
December 14, 1994.
Paris Convention on the Protection of the Industrial
Property – Right of Priority refers to an applicant after
filing in one of the Contracting States may, within a period
of time, apply for the protection in any of the other
Contracting States, the latter application will be regarded as
if it had been filed on the same day as the first application
(September 27, 1965)
1|ALYNOTES
RIGHT OF A FOREIGNER TO SUE FOR PROTECTION OF
IP RIGHTS (PRINCIPLE OF RECIPROCITY)
Section 3. INTERNATIONAL CONVENTIONS AND
RECIPROCITY. — Any person who is a:
a) national or who is domiciled
b) or has a real and effective industrial establishment
c) in a country which is a party to any convention,
treaty or agreement
d) relating to intellectual property rights or the
repression of unfair competition,
e) to which the Philippines is also a party,
f) or extends reciprocal rights to nationals of the
Philippines by law,
Shall be entitled to benefits to the extent necessary to give
effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner
of an intellectual property right is otherwise entitled by this
Act.
Section 160. RIGHT OF FOREIGN CORPORATION TO SUE
IN TRADEMARK OR SERVICE MARK ENFORCEMENT
ACTION. — Any foreign national or juridical person who
meets the requirements of Section 3 of this Act and does
not engage in business in the Philippines may bring a
civil or administrative action hereunder for opposition,
cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it
is licensed to do business in the Philippines under existing
laws
Section 231. REVERSE RECIPROCITY OF FOREIGN
LAWS. — Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed by the
law of a foreign country on a Philippine national seeking
protection of intellectual property rights in that country,
shall reciprocally be enforceable upon nationals of said
country, within Philippine jurisdiction
➢
If a foreign corporation NOT doing business in the
Philippines is suing as a party of a treaty to which
the Philippines is a signatory the fact that it is suing
under Section 3 of RA 8293 NEED NOT be alleged
as the court must take judicial notice of such fact
➢
However, if a foreign corporation IS SUING under
any other agreement other than RA 8293 failure to
allege reciprocity is fatal to foreign corporation’s
cause
NATIONAL TREATMENT PRINCIPLE
The Philippines, upon becoming a member of the World
Trade Organization (WTO) has adhered to the TRIPS
Agreement, which provides that protection afforded to the
member-states must be extended to the nationals of other
member-states
MOST-FAVORED NATION PRINCIPLE
Whatever favor, allowance, consideration, privilege or
immunity a member0states grants the nationals of another
country is immediately and unconditionally accorded to
the nationals of other member-states
INTELLECTUAL PROPERTY OFFICE
The Office is headed by a Director General who shall be
assisted by two (2) Deputies Director General.
The Office shall be divided into six (6) Bureaus, each of
which shall be headed by a Director and assisted by an
Assistant Director. These Bureaus are:
a. The Bureau of Patents;
b. The Bureau of Trademarks;
c. The Bureau of Legal Affairs;
d. The Documentation, Information and Technology
Transfer Bureau;
e. The Management Information System and EDP
Bureau;
f. The Administrative, Financial and Personnel
Services Bureau.
The Director General, Deputies Director General, Directors
and Assistant Directors shall be appointed by the President
The other officers and employees of the Office by the
Secretary of Trade and Industry, conformably with and
under the Civil Service Law
Section 5. FUNCTIONS OF THE INTELLECTUAL
PROPERTY OFFICE (IPO)
a. Examine applications for grant of letters patent for
inventions and register utility models and
industrial designs;
b. Examine applications for the registration of marks,
geographic indication, integrated circuits;
c. 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;
d. Promote the use of patent information as a tool for
technology development;
e. Publish regularly in its own publication the patents,
marks, utility models and industrial designs, issued
and approved, and the technology transfer
arrangements registered;
f. Administratively adjudicate contested proceedings
affecting intellectual property rights; and
g. Coordinate with other government agencies and the
private sector efforts to formulate and implement
plans and policies to strengthen the protection of
intellectual property rights in the country.
The Director General and Deputies Director General
Manage and direct all functions and activities of the Office,
including the promulgation of rules and regulations to
implement the objectives, policies, plans, programs and
projects of the Office. This managing function is limited by
the proviso that the Director General shall be subject to the
supervision of the Secretary of the Department of Trade and
Industry when the exercise of authority is to propose
policies and standards in relation to the following:
i. the effective, efficient, and economical operations of
the Office requiring statutory enactment
ii. coordination with other agencies of government in
relation to the enforcement of intellectual property
rights
iii. the recognition of attorneys, agents, or other persons
representing applicants or other parties before the
Office
iv. the establishment of fees for the filing and processing
of an application for a patent, utility model or
industrial design or mark or a collective mark,
geographic indication and other marks of ownership,
and for all other services performed and materials
furnished by the Office
Qualifications:
1. Must be natural born citizens of the Philippines
2. At least 35 years of age on the day of their
appointment
3. Holders of a college degree
4. Provided that the Director General and at least 1
Deputy Director General shall be members of the
Philippine Bar who have engaged in the practice of
law for at least 10 years
5. Proven
competence,
integrity,
probity
and
independence
6. Selection of the Director General and the Deputies
Director General, consideration shall be given to
such qualifications as would result, as far as
practicable, in the balanced representation in the
Directorate General of the various fields of
intellectual property
2|ALYNOTES
Term of Office
The Director General and the Deputies Director General
shall be appointed by the President for a term of 5 years and
shall be eligible for reappointment only once. Appointment
to any vacancy shall be only for the unexpired term of the
predecessor.
It is also provided that the first Director General (Atty.
Emma Francisco 1998-2004) appointed under that law
shall have a first term of 7 years.
JURISDICTION
Original Jurisdiction of Director General (Section 7.1-C)
Over disputes relating to the terms of a license
involving the authors right to public performance of other
communications of his work
Original Jurisdiction of Bureau of Legal Affairs
Hear and decide
a. opposition to the application for registration of
marks;
b. cancellation of trademarks;
c. cancellation of patents, utility models, and
industrial designs;
d. petitions for compulsory licensing of patents.
e. administrative complaints for violations of laws
involving intellectual property rights. Jurisdiction is
limited to complaints where the total damages
claimed are not less than P200,000.
f. the Director of Legal Affairs shall have the power to
hold and punish for contempt all those who
disregard orders or writs issued in the course of the
proceedings.
Regular Courts (Section 225)
Without prejudice to the provisions of Subsection 7.1-C,
actions under this Act shall be cognizable by the courts with
appropriate jurisdiction under existing law
WHERE TO APPEAL DECISIONS
A. To Director General over all decisions rendered by:
i. Bureau of Copyrights & Other related rights
ii. Director of Legal Affairs
iii. Director of Patents
iv. Director of Trademarks
v. Director of the Documentation, Information
and Technology Transfer Bureau
B. To Court of Appeals over decisions of Director
General in the exercise of his appellate jurisdiction
over the decisions of:
i. Director of Legal Affairs
ii. Director of Patents
iii. Director of Trademarks
C. To Secretary of Trade and Industry over decisions
of Director General in the exercise of his appellate
jurisdiction over the decisions of:
i.
Director of the Documentation, Information
and Technology Transfer Bureau
ii.
And his original jurisdiction over disputes
relating to the terms of a license involving
the authors right to public performance of
other communications of his work (Section
7.1-C)
INTER PARTES CASES ▬ These are contested cases filed
before the IPO and are administrative in nature. 4 Kinds:
Opposition
Proceedings,
Cancellation,
Interference
(abolished), Concurrent Use Proceedings (not applicable
under IP Code)
TRADEMARKS
"Mark" means any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods
Collective Mark – means any visible sign designated as
such in the application for registration and capable of
distinguishing the origin or any other common
characteristic, including the quality of goods or services of
different enterprises which use the sign under the control of
the registered owner of the collective mark. A collective mark
is generally owned by an association or cooperative whose
members may use the collective marks to market their
products
Service Mark – used to distinguish certain services as those
provided by a specific enterprise. A service mark is very
similar in nature to a trademark. Both are distinctive signs.
Services may be any kind such as financial, banking, travel,
advertising or catering.
Trade name – the name of designation identifying
distinguishing an enterprise; any individual name
surname, firm name, device or word used
manufacturers, industrialists, merchants, and others
identify their businesses, vocations or occupations.
or
or
by
to
Well-known Mark – a mark considered well-known by the
competent authority of the country where protection for the
mark is sought.
Sounds and scent as trademarks – signs consisting of a
sound which are capable of distinguishing goods or services
of one undertaking from those of the others. IP Code of the
Philippines requires a mark to be “any visible sign.” The
Requirement of visibility rules out sounds and smell as
possible trademarks in our jurisdiction
Device – a catch-all term which usually refers to the word
or sign comprising the trademark. It can take on any form,
e.g. letters, words, logos, pictures, a combination of words
and logo, slogans, colors, product shapes, and sounds
Slogan (word marks) – short words or phrases that capture
a company’s brand essence, personality, and positioning,
and distinguish the firm from competitors. Slogans may be
registered as trademarks provided it is capable of
distinguishing the goods or services.
Goodwill – reputation and public confidence that a
business venture has earned through a period of creditable
dealings. Article 521 of NCC provides that a goodwill of a
business is a property and may be transferred together with
the right to use the name under which the business is
conducted
Brand Name – a name that us given to a product by the
company that produces or sells it
FUNCTIONS OF TRADEMARKS
1. To identify the product and distinguish it from
other identical or similar products
2. To indicate distinctly the origin or ownership of the
goods to which they are attached;
3. To guarantee the standard if quality of the goods
4. To advertise the goods they symbolize;
5. To assure the public that they are producing the
genuine article;
6. To prevent fraud and imposition; and
7. To protect the manufacturer against substitution
and sale of an inferior and different article as its
product
3|ALYNOTES
ACQUISITON OF OWNERSHIP OF MARK
c.
Section 122. How Marks are acquired — the rights in a
mark shall be acquired through registration made validly
in accordance with the provisions of this law.
d.
Section 146. A certificate of registration shall remain in
force for 10 years and may be renewed for periods of 10
years as its expiration upon payment of the prescribed fee
and upon filing of a request.
Trade Names or Business Names (Section 165) — A name
or designation may not be used as a trade name if by its
nature or the use to which such name or designation may
be put, it is contrary to public order or morals and if, in
particular, it is liable to deceive trade circles or the public
as to the nature of the enterprise identified by that name.
Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be
protected, even prior to or without registration, against
any unlawful act committed by third parties.
SECTION 122 + SECTION 124.2
Section 122 should be read together with Section 124.2
which provides that the applicant or the registrant shall file
a declaration of actual use of the mark with evidence to that
effect, as prescribed by the Regulations within three (3)
years from the filing date of the application. Otherwise, the
application shall be refused or the mark shall be removed
from the Register by the Director.
Declaration of Actual Use: notarized document that is
required within 3 years from the filing date of application.
The declaration must be accompanied by proof of actual
use as of the date claimed. Note that DAU alone, without
proof of actual use, would not be sufficient to establish
actual use. Contents—
a. The declaration must be under oath
b. It must refer only to one application or registration
c. Must contain the name and address of the
applicant
d. Registrant must declare that the mark is in actual
use in the Philippines
Declaration of Non-Use: may be filed within 1 year from
the 5th anniversary of the date of registration of the mark.
Registrant must show valid reasons based on the existence
of obstacles to such use. Otherwise, the mark shall be
removed from the Register by the Office.
W LAND HOLDINGS INC. VS. STARWOOD HOTELS:
ACTUAL USE OF THE MARK REPRESENTING THE
GOODS OR SERVICES INTRODUCED AND TRANSACTED
IN COMMERCE OVER A PERIOD OF TIME CREATES
THAT GOODWILL WHICH THE LAW SEEKS TO PROTECT
The IP Code, under Section 124.2, requires the registrant or
owner of a registered mark to declare “actual use of the
mark” and present evidence of such use within the
prescribed period. Failing in which, the IPO DG may cause
the motu propio removal from the register of the mark’s
registration. Also, any person, believing that “he or she will
be damaged by the registration of a mark,” which has not
been used within the Philippines, may file a petition for
cancellation. The IP Code and the Trademark Regulations
have not specifically defined “use.” However, it is
understood that the “use” which the law requires to
maintain the registration of a mark must be genuine , and
not merely token. Based on foreign authorities, genuine use
may be characterized as a bona fide use which results or
tends to result, in one way or another, into a commercial
interaction or transaction “in the ordinary course of trade.”
Section 152. NON-USE OF A MARK WHEN EXCUSED —
a. if caused by circumstances arising independently of
the will of the trademark owner. Lack of funds shall
not excuse non-use of a mark
b. use of the mark in a form different from the form in
which it is registered, which does not alter its
distinctive character
e.
use of a mark in connection with one or more of the
goods or services belonging to the class in respect
of which the mark is registered
use of a mark by a company related with the
registrant or applicant shall inure to the latter's
benefit
use of a mark by a person is controlled by the
registrant or applicant with respect to the nature
and quality of the goods or services
Registration is NOT compulsory
While it is not compulsory, it is highly advisable, as
registration provides the exclusive right to prevent
unauthorized use of the trademark. Hence, there are no
statutory sanctions for not registering, but there are
business consequences for such failure.
TRADEMARK APPLICATION
Certificate of Registration is a prima facie evidence of:
1. Validity of registration
2. Ownership of the mark by the registrant\
3. Exclusive right of the registrant to use the same in
connection with the goods or services and those
that are related thereto
LEVI STRAUSS & CO. VS. CLINTON APPARELLE:
CERTIFICATE OF REGISTRATION IS PRIMA FACIE
EVIDENCE OF THE VALIDITY OF THE REGISTRATION,
THE REGISTRANT’S OWNERSHIP OF THE MARK AND
OF THE EXCLUSIVE RIGHT TO USE THE SAME IN
CONNECTION WITH THE GOODS OR SERVICES AND
THOSE THAT ARE RELATED THERETO SPECIFIED IN
THE CERTIFICATE
Attention should be given to the fact that LS & Co. and LSPI’
registered trademark consists of 2 elements: (1) the word
mark “Dockers” and (2) the wing-shaped design or logo.
Notably, there is only one registration for both features of
the trademark giving the impression that the 2 should be
considered as a single unit. Clinton Apparelle’s trademark,
on the other hand, uses the “Paddocks” word mark on top
of a logo which according to LS & Co. and LSPI is a slavish
imitation of the “Dockers” design. Given the single
registration of the trademark “Dockers and Design” and
considering that Clinton Apparelle only uses the assailed
device but a different word mark, the right to prevent the
latter from using the challenged “Paddocks” device is far
from clear. Stated otherwise, it is not evident whether the
single registration of the trademark “Dockers and Design”
confers on the owner the right to prevent the use without
the owner’s consent of a portion of a trademark registered
in its entirety constitutes material or substantial invasion of
the owner’s right.
Section 124. REQUIREMENTS OF APPLICATION —
a. Request for registration;
b. Applicant’s name and address;
c. Name of a State of which the applicant is a national
or where he has domicile; and the name of a State
in which the applicant has a real and effective
industrial or commercial establishment, if any;
d. If juridical entity, the law under which it is
organized and existing;
e. Appointment of an agent or representative, if the
applicant is not domiciled in the Philippines;
f. Where the applicant claims the priority of an earlier
application, an indication of—
i. Where the earlier application was filed
ii. Date of earlier application
iii. If available, application number
g. Names of the goods or services for which the
registration is sought
h. Signature by, or other self-identification of, the
applicant or his representative
i. Where the applicant claims color as a distinctive
feature of the mark, a statement to that effect as
well as the name or names of the color or colors
claimed and an indication, in respect of each color,
4|ALYNOTES
of the principal parts of the mark which are in that
color
j. Where the mark is a three-dimensional mark, a
statement to that effect
k. Reproductions of the mark
l. A transliteration or translation of the mark or of
some parts of the mark
Transliteration: is an act, process, or instance representing
or spelling of words, letters, or characters of one language
in the letters and characters of another language.
When a trademark concerning an international trademark
application consists of characters other than Roman
alphabet, for example Japanese characters, or contains
some such characters, the characters must be
transliterated according to the pronunciation in the
language allowed for international trademark applications
and describes them in Roman alphabet.
Translation: is an act, process, or instance of translating
as rendering from one language of representational system
into another
NICE CLASSIFICATION
(International Trademark Classification System) is the
system by which a trademark applications are classified.
There are 34 classes of goods and 8 classes of businesses or
services.
Rights if Distributor – The right to register trademark is
based on ownership. When the applicant is not the owner of
the trademark, he has no right to apply for the registration
of the same. Thus, a mere distributor of products bearing a
trademark, even if permitted to use said trademark has no
right to and cannot register said trademark.
An exclusive distributor does not acquire any propriety
interest as well as the authorized manufacturer and seller
is not the owner of the trademark of the products he was
authorized to manufacture and sell.
TRADEMARK AGENT
If the applicant is not domiciled or has no real and effective
commercial establishment in the Philippines, he shall
designate by a written document filed in the Office, the
name and address of a Philippine resident who may be
served notices or process in proceedings affecting the mark.
The agent of the applicant need not be a member of the
Philippine bar. However, where registration disputes arise
and there becomes a need to prepare and file an opposition
or answer to an opposition, or where an inter partes case
arise, knowledge of the law and jurisprudence becomes
imperative and participation of a member of the Philippine
bar will be needed.
mark has been registered in the country of origin of the
applicant.
There must be an earlier foreign trademark application
before priority rights become relevant. Note that this right is
a “time-limited” right. Thus, an application with a claim of
priority right must be filed within 6 months from the date
the earliest foreign application was filed.
TERRITORIALITY PRINCIPLE
This means that trademarks rights are recognized within a
state only when the goods or services are used in commerce
within that said state. Thus, the law on trademarks rests
upon territoriality. A foreign trademark may enjoy protection
rights in the Philippines only when the good or services are
used in commerce in the Philippines. HOWEVER, while
under the territoriality principle, internationally well-known
marks are the exceptions to this rule
TELLE QUELLE RULE
Provides that a country must accept for filing and protect a
trademark duly registered in the (foreign) applicant’s
country of origin as to the form of the tr4ademark as
registered in the applicant’s country of origin.
OPPOSITION
Any person who believes that he would be damaged by the
registration of a mark may, upon payment of the required
fee and within 30 days after the publication, file with the
Office an opposition to the application.
Such opposition shall be—
a. in writing
b. verified by the oppositor or by any person on his
behalf who knows the facts
c. shall specify the grounds on which it is based and
include a statement of the facts relied upon
d. copies of certificates of registration of marks or other
supporting documents
➢ Dismissal of opposition does not follow that application
should be granted
➢ Upon the filing of an opposition, the Office shall serve
notice of the filing on the applicant, and of the date of
the hearing thereof upon the applicant and the
oppositor and all other persons having any right, title or
interest in the mark covered by the application
Section 142. CORRECTION OF MISTAKES MADE BY THE
OFFICE — Whenever a material mistake in a registration
incurred through the fault of the Office is clearly disclosed
by the records of the Office, a certificate stating the fact and
nature of such mistake shall be issued without charge,
recorded and a printed copy thereof shall be attached to
each printed copy of the registration
FILING DATE
The filing date of an application shall be the date on which
the Office received payment for the required fee and the
following indications and elements in English or Filipino—
a. Request for a Philippine registration
b. Identity of applicant
c. Reproduction of the mark
d. Indications sufficient to contact the applicant
e. List of goods or services for which the registration
is sought
PRIORITY RIGHT (Section 131)
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. No registration of a mark in the Philippines by a
person described in this section shall be granted until such
5|ALYNOTES
CANCELLATION
A petition to cancel a registration of a mark under
this Act may be filed with the Bureau of Legal Affairs by any
person who believes that he is or will be damaged by the
registration of a mark under this Act
Within five (5) years
from the date of the
registration of the
mark under this Act
1. any person who
believes that he
is or will be
damaged by the
registration of a
mark under this
Act
At any time
1. if the registered mark
becomes
the
generic
name for the goods or
services, or a portion
thereof, for which it is
registered
2. mark
has
abandoned
ECOLE DE CUISINE MANILLE, INC. VS. COINTREAU:
PRESENT LAW ON TRADEMARKS, THE INTELLECTUAL
PROPERTY CODE OF THE PHILIPPINES, HAS ALREADY
DISPENSED WITH THE REQUIREMENT OF PRIOR
ACTUAL USE AT THE TIME OF REGISTRATION
It is significant to note that Section 2-A does not require that
the actual use of a trademark must be within the
Philippines. Thus, under R.A. No. 166, one may be an owner
of a mark due to its actual use but may not yet have the
right to register such ownership here due to the owner’s
failure to use the same in the Philippines for 2 months prior
to registration. In the instant case, it is undisputed that
Cointreau has been using the subject mark in France, prior
to Ecole’s averred first use of the same in the Philippines, of
which the latter was fully aware thereof. On the other hand,
Ecole has no certificate of registration over the subject mark
but only a pending application. Under the foregoing
circumstances, even if Ecole was the first to use the mark
in the Philippines, it cannot be said to have validly
appropriated the same.
been
3. registration was obtained
fraudulently or contrary
to the provisions of this
Act
4. registered mark is being
used by, or with the
permission
of,
the
registrant
so
as
to
misrepresent the source
of the goods or services
on or in connection with
which the mark is used
5. registered owner of the
mark without legitimate
reason fails to use the
mark
within
the
Philippines, or to cause it
to be used in the
Philippines by virtue of a
license
during
an
uninterrupted period of
three (3) years or longer
If the registered mark becomes the generic name for less
than all of the goods or services for which it is registered, a
petition to cancel the registration for only those goods or
services may be filed.
REGISTRABILITY OF MARKS (Section 123)
A mark cannot be registered if it:
1
The law disallows false suggestion of connection to a person,
and institution, or a belief. Actual claim of connection is
unnecessary. Also, the popularity of person is immaterial.
However, popularity matters to infringers because they
unjustly ride on the goodwill of another.
Right of Publicity – this provision is intended to protect the
right of publicity of famous individuals and institutions
from commercial exploitation of their goodwill by others.
Words and illustrations that are considered to violate
commonly accepted norms or morality and religion are
generally not allowed to be registered as trademarks.
USE OF “JOSE RIZAL” in Jose Rizal University
There is apparently no prohibition to the use of the name
Jose Rizal since the use of the name of the dead person was
not in derogatory fashion nor can it be falsely represented
that Jose Rizal was connected with the said institution
(FUNA Book)
Upon the filing of cancellation, the Office shall serve notice
of the filing on the applicant, and of the date of the hearing
thereof
Opposition
proceedings
vis-à-vis
cancellation
proceedings
The opposition to a registration and the petition for
cancellation are alternative proceedings which a party may
avail of according to his purpose, needs, and predicaments,
and the petitioner has the right to choose which remedy it
deems best for the protection of its rights
BIRKENSTOCK ORTHOPAEDIE GMBH VS. PHILIPPINE
SHOE EXPO: REGISTRATION OF A TRADEMARK, BY
ITSELF, IS NOT A MODE OF ACQUIRING OWNERSHIP
Philippine Shoe Expo admitted that it failed to file the 10th
Year DAU within the requisite period. As a consequence, it
was deemed to have abandoned or withdrawn any right or
interest over the mark “BIRKENSTOCK.” It must be
emphasized that registration of a trademark, by itself, is not
a mode of acquiring ownership. If the applicant is not the
owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie
presumption of the validity of the registration. Such
presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must
give way to evidence to the contrary.
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
2
Consists of the flag or coat of arms or other
insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any
simulation thereof
3
Consists of a name, portrait or signature
identifying a particular living individual except
by his written consent, or the name, signature,
or portrait of a deceased President of the
Philippines, during the life of his widow, if any,
except by written consent of the widow
Thus, the name and image of a famous individual may be
registered provided there is consent. If the individual has
died, consent may be given by a representative such as an
administrator or executor.
Signature of a person. An application to register a person’s
signature can be made by that person or with his consent,
in writing, permitting the applicant to make the application.
6|ALYNOTES
If it is not made by that person, or with his consent in
writing, such application must be refused.
the owner of the registered mark are likely to be damaged
by such use
There is no particular provision in the IP Code dealing
specifically with surnames or persons. Nonetheless,
surnames cannot, as a rule, be registered as trademarks on
the ground of non-distinctiveness and public policy. The
public policy is that surnames are free to be used by all
persons having that surname. Exceptions—
a. Surname has acquired distinctiveness by acquiring
secondary meaning
b. Surname has another meaning
EVEN DISSIMILAR GOODS DOCTRINE — if goods or
services are NOT identical or similar, such registration (of
the mark identical to a well-known mark) will still not be
allowed if:
a. There is a connection between goods or services of
junior and senior users of well-known mark
b. The interests of the owner of the registered mark
are likely to be damaged
c. The well-known mark is registered in the
Philippines
4
Is identical with a registered mark belonging to a
different proprietor or a mark with an earlier
filing or priority date, in respect of:
i. The same goods or services
ii. Closely related goods or services
iii. If it nearly resembles such a mark as to be
likely to deceive or cause confusion
FIRST-TO-FILE RULE
Applications are rejected on “relative grounds” when the
trademark conflicts with prior trademark rights. Having two
identical trademarks for the same type of product could
cause confusion among consumers. Exceptions—
a. Prior registration made in bad faith
b. Prior registration was preceded by a prior use in
good faith and in concept of owner by another
c. There is a conflict with a claim to a priority right
RELATED GOODS DOCTRINE
Trademark protection under IP Code provides that although
not specified in the certificate of registration, but are
“related” to the goods specified in the certificate, such goods
would be covered by trademark protection. The test whether
or not the goods are related to each other is the similarity
of the products involved and not the arbitrary
classification or general description of their properties or
characteristics.
5
Is identical with, or confusingly similar to, or
constitutes a translation of a mark which is
considered by the competent authority of the
Philippines to be well-known internationally and
in the Philippines, WHETHER OR NOT IT IS
REGISTERED HERE, as being already the mark
of a person other than the applicant for
registration, and USED FOR IDENTICAL OR
SIMILAR GOODS OR SERVICES
WELL-KNOWN MARKS
In determining whether a mark is well-known, account shall
be taken of the knowledge of the relevant sector of the
public, rather than of the public at large including
knowledge in the Philippines which has been obtained as a
result of the promotion of the mark. It is not required that
the well-known mark be used in the commerce in the
Philippines but only that it be well-known. Even if the
trademark is not registered in the Philippines, if it is a wellknown mark, it will be protected.
6
Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered
well-known in accordance with the preceding
paragraph, WHICH IS REGISTERED IN THE
PHILIPPINES with respect to GOODS OR
SERVICES WHICH ARE NOT SIMILAR to those
with respect to which registration is applied for
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 that the interests of
Not all foreign marks are well-known marks
Well-known marks must be well-known internationally and
in the Philippines. As explained in Kabushi Kaisha Isetan
vs. IAC, where a mark is well-known in Japan, but not in
the Philippines, the mark cannot be considered as a wellknown mark. Thus, the trademark “Isetan” being claimed
by Kabushi Kaisha Isetan, a foreign corporation organized
and existing under the laws of Japan, is unknown to
Filipinos.
CRITERIA FOR DETERMINING WHETHER A MARK IS
WELL-KNOWN: (DRRUM-SICLEEE)
a) Degree of the inherent or acquired distinction of the
mark
b) Reputation acquired by the mark
c) extent to which the mark has been Registered in the
world
d) duration, extent and geographical area of any Use of
the mark
e) Market share, in the Philippines and in other countries
f) record of Successful protection of the rights in the
mark
g) presence or absence of Identical or similar marks
validly registered for or used on identical or similar
goods or services
h) Commercial value attributed to the mark in the world
i) outcome of Litigations dealing with the issue of
whether the mark is a well-known mark
j) Exclusivity of registration attained by the mark in the
world
k) Exclusivity of use attained by the mark in the world
l) Extent to which the mark has been registered in the
world
7
Is likely to mislead the public, particularly as to
the
nature,
quality,
characteristics
or
geographical origin of the goods or services
The test as to whether or not it is deceptive is how it
would be regarded by the majority of purchasers at the time
that the question arises and the fact that an ignorant person
might be deceived.
For example, “BOLPENS” for pencils, “COLA” for alcoholic
beverages. Marketing margarine under a trademark
featuring a COW would probably be rejected as it would be
considered misleading for consumers who are likely to
associate the mark with dairy products (butter).
8
Consists exclusively of signs that are generic for
the goods or services that they seek to identify
GENERIC MARKS are names of products they seek to
identify. They are juris publici, incapable of appropriation
by any single individual to the exclusion of others. The term
“generic” must be understood in reference to the goods or
services associated with the word or sign in question. They
cannot acquire secondary meaning. While descriptive or
generic terms may not be registered, an exception is
recognized where such descriptive or generic term is made
distinctive by combination with another word or phrase.
7|ALYNOTES
9
Consists exclusively of signs or of indications
that have become customary or usual to
designate the goods or services in everyday
language or in bona fide and established trade
practice
Thus, they no longer distinguish the goods or services
because they are used so often to refer to the good or
services. Example is VCO for virgin coconut oil, DIAMOND
PEEL for services involving cosmetic procedure
10
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
DESCRIPTIVE MARKS are words that are usually used in
trade to describe the product in question. They convey
characteristics, functions, qualities, or ingredients of a
product to one who has never seen it or does not know it.
Examples of descriptive marks are: “Certified” for motor oil,
“Turbodiesel” foe diesel engines, “Maskuline” foe men’s
underwear, outerwear, pajamas, and shirts.
The statute provides for refusal ONLY when the mark is
merely descriptive as applied to applicant’s good or services
GEORGRAPHICAL MARKS geographical origin of the goods
or rendering of the service. Note that a mere geographical
name or term per se is NOT prohibited. What are prohibited
are the use of geographical names in the misdescriptive or
descriptive manner. It must be the likelihood of goods
originating in the areas in question that is prohibited.
Exceptions—
a. When the mark acquired secondary meaning
b. When the geographical mark was not used in a
descriptive sense
11
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
Note that ordinary geometric shapes cannot be registered.
The rationale for the prohibition is to prevent trademark
protection from granting its proprietor a monopoly on
technical solutions or functional characteristics of a
product which a user is likely to seek in the products of
competitors.
12
Consists of color alone, UNLESS defined by a
given form
Where the applicant claims color as a distinctive feature of
the mark, a statement to that effect as well as the name or
names of the color or colors claimed and an indication, in
respect of each color, of the principal parts of the mark
which are in that color.
COLOR DEPLETION RULE
The registration of color alone is prohibited because
eventually all types of colors will be exhausted if exclusive
acquisition is permitted.
13
Is contrary to public order or morality
Words and illustrations that are considered to violate
commonly accepted norms or morality and religion are
generally not allowed to be registered as trademarks. A
mark cannot also be registered if it is prohibited by express
provision of the law
WEAK AND STRONG MARKS
Distinctiveness is an essential element of a trademark. All
trademark must, therefore, be distinctive. Thus,
distinctiveness is a question of fact.
The weaker the mark is, in terms of distinctiveness, the
more likelihood of it being rejected. The stronger the mark,
the more likelihood of it being approved for registration. The
weaker the mark is the more likelihood of it becoming
“confusingly similar” with another mark.
Weak Marks —
a) Generic marks
b) Indications that have been customary for trade
c) Descriptive terms and geographical marks
d) Deceptive or misleading trademarks
e) Relating to a particular person
STRONG MARKS are marks which can be registered —
Fanciful Mark – invented for the sole purpose of functioning
as a trademark and have no other meaning than acting as
a mark. Coined words have the advantage of being easy to
protect as they are more likely to be considered inherently
distinctive
Arbitrary Mark – utilized as a device having a common
meaning that has no relation to the goods or services being
sold. They bear no logical relation to the product they
advertise and to the actual characteristics of the product it
represents
Suggestive Mark – hint at one or some of the attributes of
the products. The appeal of suggestive mark is that they act
as a form of advertising.
Composite Mark – consisting of two or more elements or
combination of words, phrases, designs, symbols or color
schemes. Although they cannot be registered by themselves,
together they may be a part of a composite mark as long as
they provide a disclaimer
Coined Mark – marks which are contractions of or coined
from generic or descriptive terms
DOCTRINE OF SECONDARY MEANING
While as a general rule, generic, indicative or descriptive
marks are incapable of appropriation, nothing shall prevent
the registration of such mark when such kind of mark has
become distinctive in relation to the goods for which
registration is requested.
The Office may accept as prima facie evidence that the mark
has become distinctive, as used in connection with the
applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the
applicant in commerce in the Philippines for 5 years before
the date on which the claim of distinctiveness is made.
RIGHTS CONFERRED BY REGISTRATION
The owner of a registered mark shall have the exclusive
right to prevent all third parties not having the owner's
consent from using in the course of trade identical or similar
signs or containers for goods or services which are identical
or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of
confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be
presumed.
The exclusive right of the owner of a well-known mark which
is registered in the Philippines, shall extend to goods and
8|ALYNOTES
services which are not similar to those in respect of which
the mark is registered: Provided, That use of that mark in
relation to those goods or services would indicate a
connection between those goods or services and the owner
of the registered mark: Provided further, That the interests
of the owner of the registered mark are likely to be damaged
by such use.
Limitations on Trademarks Involving Medicines
In case the use of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.
EXCEPT in cases of importation of drugs, and medicines
allowed under Section 72.1 and of off-patent drugs and
medicines. Provided that such drugs and medicines bear the
registered marks that have not been tampered, unlawfully
modified, or infringed upon.
Limitation on the Right to Preclude Use of Third Parties
of Names, etc. (Section 148)
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
LICENSE CONTRACTS
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.
Intellectual Property License
A license is a permission to do, something that, without the
license, would be an infringement of IP. The person granting
the license is usually the licensor, and the person receiving
the license is usually called the licensee. It is a partnership
between the intellectual property rights owners and another
who is authorized to use such rights in exchange for an
agreed payment.
Assignment of Trademarks
An assignment is a transfer of the ownership of the mark. It
should be distinguished from a license which is the contract
giving another, the licensee, the right to use the mark while
the ownership of the mark is retained by the licensor. The
Deed of Assignment itself constitutes sufficient proof of its
ownership of the trademark.
TRADEMARK INFRINGEMENT (Section 155)
Any person who shall, without the consent of the owner of
the registered mark:
A. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or
the same container or a dominant feature thereof in
connection with the—
i. Sale
ii. Offering for sale
iii. Distribution
iv. Advertising of any goods or services including
other preparatory steps necessary to carry out
the sale of any goods or services on or in
connection with which such use is likely to
cause confusion, or to cause mistake, or to
deceive
B. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and
apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to
be used in commerce upon or in connection with
the—
i.
ii.
iii.
iv.
Sale
Offering for sale
Distribution
Advertising of any goods or services including
other preparatory steps necessary to carry out
the sale of any goods or services on or in
connection with which such use is likely to
cause confusion, or to cause mistake, or to
deceive
ELEMENTS OF INFRINGEMENT UNDER R.A. NO. 8293
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
✓ Among the elements, the element of likelihood of
confusion is the gravamen of trademark infringement.
✓ Intent to deceive is NOT required in trademark
infringement and it is the LIKELIHOOD of confusion and
NOT actual confusion
TYPES OF CONFUSION
There are two types of confusion in trademark infringement:
confusion of goods and confusion of business.
•
Confusion of goods in which event the ordinarily
prudent purchaser would be induced to purchase
one product in the belief that he was purchasing
the other. In which case, defendant’s goods are then
bought as the plaintiffs, and the poorer quality of
the former reflects adversely on the plaintiff’s
reputation.
•
Confusion of business: Here though the goods of
the parties are different, the defendants product is
such as might reasonably be assumed to originate
with the plaintiff, and the public would then be
deceived either into that belief or into the belief that
there is some connection between the plaintiff and
defendant which, in fact, does not exist.
Confusion of Goods
Confusingly similar
marks are used on the
same kind of goods or
services
Confusion of Business
Confusingly similar
marks are employed in
different or noncompeting goods or
services
9|ALYNOTES
TWO TESTS TO DETERMINE LIKELIHOOD
CONFUSION
DOMINANCY TEST
HOLISTIC TEST
✓
Focuses on the similarity
of the main, prevalent or
essential features of the
competing trademarks
that might cause
confusion
Considers the entirety of
the marks, including
labels and packaging, in
determining confusing
similarity
Relies on visual, aural,
and connotative
comparisons and overall
impression between the
two trademarks
Relies only on visual
The test is whether there
is a similarity of the
prevalent features of the
competing trademarks
which might cause
confusion
The test is whether the
general confusion made
by the article upon the
eye of the casual
purchaser, who is
unsuspicious and off his
guard, is such as to likely
result in the
confounding it with the
original
OF
While proof of actual confusion is the best evidence of
infringement, its absence is inconsequential
UFC PHILIPPINES, INC. VS. BARRIO FIESTA: THE
WORD "PAPA" IS THE DOMINANT FEATURE OF
NUTRI-ASIA’S MARK "PAPA KETSARAP." THE
WORD "PAPA" IS ALSO THE DOMINANT FEATURE
OF BARRIO FIESTA’S "PAPA BOY & DEVICE"
MARK
Barrio Fiesta’s mark cannot be registered. The mark is
related to a product, lechon sauce, an everyday all-purpose
condiment and sauce, that is not subjected to great scrutiny
and care by the casual purchaser, who knows from regular
visits to the grocery store under what aisle to find it, in
which bottle it is contained, and approximately how much
it costs. Since UFC’s product, catsup, is also a household
product found on the same grocery aisle, in similar
packaging, the public could think that UFC had expanded
its product mix to include lechon sauce, and that the “PAPA
BOY” lechon sauce is now part of the “PAPA” family of
sauces, which is not unlikely considering the nature of
business that UFC is in. Thus, if allowed registration,
confusion of business may set in, and UFC’s hard-earned
goodwill may be associated to the newer product introduced
by Barrio Fiesta, all because of the use of the dominant
feature of UFC’s mark on Barrio Fiesta’s mark, which is the
word “PAPA.”
GREAT WHITE SHARK ENTERPRISES VS. CARALDE: A
TRADEMARK
DEVICE
IS
SUSCEPTIBLE
TO
REGISTRATION IF IT IS CRAFTED FANCIFULLY AND IS
CAPABLE OF IDENTIFYING AND DISTINGUISHING THE
GOODS OF ONE MANUFACTURER OR SELLER FROM
THOSE OF ANOTHER
Court finds no confusing similarity between the subject
marks. While both marks use the shape of a shark, the
Court noted distinct visual and aural differences between
them. In Great White Shark's "GREG NORMAN LOGO,"
there is an outline of a shark formed with the use of green,
yellow, blue and red lines/strokes. The visual dissimilarities
between the two marks are evident and significant, negating
the possibility of confusion in the minds of the ordinary
purchaser, especially considering the distinct aural
difference between the marks.
MCDONALD'S CORPORATION VS. L.C. BIG MAK:
TRADEMARK INFRINGEMENT
To establish trademark
infringement,
the
following
elements must be shown: (1) the validity of plaintiff's mark;
(2) the plaintiff's ownership of the mark; and (3) the use
of the mark or its colorable imitation by the alleged infringer
results in "likelihood of confusion." Of these, it is
the element of likelihood of confusion that is the gravamen
of trademark infringement. Clearly, respondents have
adopted in "Big Mak" not only the dominant but also almost
all the features of "Big Mac." Applied to the same food
product of hamburgers, the two marks will likely result in
confusion in the public mind. Certainly, "Big Mac" and "Big
Mak" for hamburgers create even greater confusion, not
only aurally but also visually. Absent proof that
respondents' adoption of the "Big Mak" mark was due to
honest mistake or was fortuitous, the inescapable
conclusion is that respondents adopted the "Big Mak" mark
to "ride on the coattails" of the more established "Big Mac"
mark. There is actually no notice to the public that the "Big
Mak" hamburgers are products of "L.C. Big Mak Burger,
Inc." and not those of petitioners who have the exclusive
right to the "Big Mac" mark. This clearly shows respondents'
intent to deceive the public. Had respondents' placed a
notice on their plastic wrappers and bags that the
hamburgers are sold by "L.C. Big Mak Burger, Inc.", then
they could validly claim that they did not intend to deceive
the public. In such case, there is only trademark
infringement but no unfair competition.
FACTORS IN DETERMINING WHETHER GOODS ARE
RELATED (Mighty Corporation v. E. & J. Gallo Winery)
1) Classification of the goods;
2) Nature of the goods;
3) Descriptive properties, physical attributes or
essential characteristics of the goods, with
reference to their form, composition, texture or
quality;
4) Style of distribution and marketing of the goods,
including how the goods are displayed and sold.
5) Relatedness of the goods
6) Similarity of marks
7) Similarity of appearance
8) Similarity in sound (Idem Sonans Rule)
9) Design marks
Colorable Imitation — that which denotes such a close or
ingenious imitation as to be calculated to deceive ordinary
persons. It refers to such similarity in form, content, words,
sound, meaning, and special arrangement of the mark with
that of the other mark in their overall presentation or in
their essential and substantive parts.
Idem Sonans Rule — two trademarks used on identical or
related goods may be confusingly similar if they have similar
sound of pronunciation
TRADEMARK DILUTION is the lessening of the capacity of
a famous mark to identify and distinguish goods or services,
regardless of the presence or absence of:
a) competition between the owner of the famous mark
and other parties
b) likelihood of confusion, mistake or deception
Subject to the principles of equity, the owner of a famous
mark is entitled to an injunction against another person’s
commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and
causes dilution of the distinctive quality of the mark. This
is intended to protect famous marks from subsequent uses
that blur distinctiveness of the mark or tarnish or disparage
it.
To be eligible for protection from dilution, there has to
be a finding that:
1. the trademark sought to be protected is famous and
distinctive
2. he use by respondent of mark began after the
petitioner’s mark became famous
3. such subsequent use defames petitioners mark
10 | A L Y N O T E S
The IP Code does not expressly provide protection against
trademark dilution. Nonetheless, the concept of trademark
dilution is very much present in the protection of
internationally well-known marks.
Section
156.
ACTIONS,
AND
DAMAGES
AND
INJUNCTION FOR INFRINGEMENT —
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
a) the reasonable profit which the complaining party
would have made, had the defendant not infringed
his rights
b) or the profit which the defendant actually made out
of the infringement
c) or in the event such measure of damages cannot be
readily ascertained with reasonable certainty, then
the court may award as damages a reasonable
percentage based upon the amount of gross sales of
the defendant or 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.
The court may impound during the pendency of the action,
sales invoices and other documents evidencing sales.
In cases where actual intent to mislead the public or to
defraud the complainant is shown, in the discretion of the
court, the damages may be doubled.
The complainant, upon proper showing, may also be
granted injunction.
Section 157. POWER OF COURT TO ORDER INFRINGING
MATERIAL DESTROYED —
In any action arising under this Act, in which a violation of
any right of the owner of the registered mark is established,
the court may order that goods found to be infringing be,
without compensation of any sort, disposed of outside the
channels of commerce in such a manner as to avoid any
harm caused to the right holder, or destroyed; and all
labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing
the registered mark or trade name or any reproduction,
counterfeit, copy or colorable imitation thereof, all plates,
molds, matrices and other means of making the same, shall
be delivered up and destroyed.
In regard to counterfeit goods, the simple removal of the
trademark affixed shall NOT be sufficient other than in
exceptional cases which shall be determined by the
Regulations, to permit the release of the goods into the
channels of commerce.
REQUIREMENT OF NOTICE
Registrant shall give notice that their marks are registered
by displaying with the mark the words '"Registered Mark" or
the letter R within a circle or “Reg. IPOPHL.” Such mark
supplies the presumption of knowledge that such imitation
is likely to cause confusion, or to cause mistake, or to
deceive. This presumed knowledge establishes the basis for
recovery of damages. Without such notice, the registrant
must prove that the infringer had knowledge of the
registration in order to recover damage.
DEFENSES AGAINST INFRINGEMENT SUITS —
1. Prior use by the defendant
2. No likelihood of confusion or mistake or deception
3. Plaintiff’s claimed mark is not protected
4. Plaintiff’s mark has become generic
5. Plaintiff’s fraudulent registration
6. Plaintiff’s mark was abandoned
7. Plaintiff has not come to the court with clean hands
8. Laches or estoppel
9. Non-competing products or services
10. Defendant’s good faith
REMEDIES AGAINST TRADEMARK INFRINGEMENT —
1. Civil action for damages (Section 156.1)
2. Impounding of infringing goods by the court (Section
156.2)
3. Doubling of damages (Section 156.3)
4. Injunctive relief (Section 156.4)
5. Dispose of infringing goods outside the channels of
commerce (Section 157.1)
6. Destruction of infringing goods (Section 157.1)
7. Criminal action (Section 170)
8. Administrative action before IP Office
9. Prohibit importation of infringing goods (Section 166)
LIMITATIONS TO ACTIONS FOR INFRINGEMENT
A. Prior User (Section 159.1)
Notwithstanding the provisions of Section 155
hereof, a registered mark shall have no effect
against any person who, in good faith, before the
filing date or the priority date, was using the mark
for the purposes of his business or enterprise
B. Printer of Infringing Mark (Section 159.2)
Where an infringer who is engaged solely in the
business of printing the mark or other infringing
materials for others is an innocent infringer, the
owner of the right infringed shall be entitled as
against such infringer only to an injunction against
future printing
C. Advertisement (Section 159.3)
Where the infringement complained of is contained
in or is part of paid advertisement in a newspaper,
magazine, or other similar periodical or in an
electronic communication, the remedies of the
owner of the right infringed as against the publisher
or distributor of such newspaper, magazine, or
other
similar
periodical
or
electronic
communication shall be limited to an injunction
against the presentation of such advertising matter
in future issues of such newspapers, magazines, or
other similar periodicals or in future transmissions
of such electronic communications.
The limitations of this subparagraph shall apply only to
innocent infringers provided that such injunctive relief shall
not be available to the owner of the right infringed with
respect to an issue of a newspaper, magazine, or other
similar periodical or an electronic communication
containing infringing matter where restraining the
dissemination of such infringing matter in any particular
issue of such periodical or in an electronic communication
would delay the delivery of such issue or transmission
of such electronic communication is customarily
conducted in accordance with the sound business
practice, and not due to any method or device adopted to
evade this section or to prevent or delay the issuance of an
injunction or restraining order with respect to such
infringing matter
FALSE OR FRAUDULENT DECLARATION (Section 162)
Any person who shall procure registration in the Office of a
mark by a false or fraudulent declaration or representation,
whether oral or in writing, or by any false means, shall be
liable in a civil action by any person injured thereby for any
damages sustained in consequence thereof
ANONYMOUS & PSEUDONYMOUS WORKS (Section 179)
The publishers shall be deemed to represent the authors of
articles and other writings published without the names of
the authors or under pseudonyms, UNLESS:
a) contrary appears
b) or the pseudonyms or adopted name leaves no
doubt as to the author's identity
c) or if the author of the anonymous works discloses
his identity
11 | A L Y N O T E S
PENALTY AND JUSRISDICTION
UNFAIR COMPETITION (Section 168)
Under Section 170 of R.A. No. 8293, which took effect on
January 1, 1998, the criminal penalty for infringement of
registered marks, unfair competition, false designation of
origin and false description or representation, is
imprisonment from 2 to 5 years and a fine ranging from Fifty
Thousand Pesos to Two Hundred Thousand Pesos, to wit:
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,
for those of the one having established such goodwill, or who
shall commit any acts calculated to produce said results, is
guilty of unfair competition
SEC. 170. 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 (P50,000.00) to Two hundred
thousand pesos (P200,000.00) shall be imposed on
any person who is found guilty of committing any
of the acts mentioned in Section 155 [Infringement],
Section 168 [Unfair Competition] and Section 169.1
[False Designation of Origin and False Description
or Representation].
Corollarily, Section 163 of the same Code states that actions
(including criminal and civil) under Sections 150, 155, 164,
166, 167, 168 and 169 shall be brought before the proper
courts with appropriate jurisdiction under existing laws,
thus SEC. 163. JURISDICTION OF COURT. - All actions
under Sections 150, 155, 164 and 166 to 169 shall
be brought before the proper courts with appropriate
jurisdiction under existing laws.
The existing law referred to in the foregoing provision is
Section 27 of R.A. No. 166 (The Old Trademark Law)
which provides that jurisdiction over cases for
infringement of registered marks, unfair competition,
false designation of origin and false description or
representation, is lodged with the Court of First
Instance (now Regional Trial Court)
SEC. 27. JURISDICTION OF COURT OF FIRST
INSTANCE. - All actions under this Chapter [V Infringement] and Chapters VI [Unfair Competition]
and VII [False Designatiion of Origin and False
Description or Representation], hereof shall be
brought before the Court of First Instance.
SEC. 239. REPEALS. - 239.1. All Acts and parts of
Acts inconsistent herewith, more particularly
Republic Act No. 165, as amended; Republic Act No.
166, as amended; and Articles 188 and 189 of the
Revised Penal Code; Presidential Decree No. 49,
including Presidential Decree No. 285, as amended,
are hereby repealed.
Notably, the aforequoted clause did not expressly repeal
R.A. No. 166 in its entirety, otherwise, it would not have
used the phrases parts of Acts and inconsistent herewith.
The use of the phrases parts of Acts and inconsistent
herewith only means that the repeal pertains only to
provisions which are repugnant or not susceptible of
harmonization with R.A. No. 8293. Section 27 of R.A. No.
166, however, is consistent and in harmony with Section
163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest
jurisdiction over violations of intellectual property rights
with the Metropolitan Trial Courts, it would have expressly
stated so under Section 163 thereof.
Validity of special intellectual property courts or special
commercial court was upheld by the Supreme Court. A.M.
03-03-03-SC 2003-6-17 provides that all IP cases shall be
transferred to the designated Special Commercial Courts
except those which have undergone the pretrial stage in civil
cases or those where any of the accused has been arraigned
in criminal cases which shall be retained by the court
previously assigned to try them. The Special Commercial
Courts shall have jurisdiction over cases arising within their
respective territorial jurisdiction
Elements of Unfair Competition
1. Employment of deception or any means contrary to
good faith
2. To pass off goods he deals in
3. As those of one who has established goodwill
✓ Among the elements, the element of passing off goods is
the gravamen of unfair competition.
In particular, and without in any way limiting the scope of
protection against unfair competition, the following shall be
deemed guilty of unfair competition:
a. Selling his goods and gives them the general
appearance of goods of another manufacturer or
dealer, as to
i. the goods themselves
ii. the wrapping of the packages in which they are
contained
iii. the devices or words thereon
iv. 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
b. Use any artifice, or device, or who employs 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
c. Making any false statement in the course of trade or
who shall commit any other act contrary to good
faith of a nature calculated to discredit the goods,
business or services of another.
Test to Determine Unfair Competition
Whether certain goods have been intentionally clothed with
an appearance which is likely to deceive the ordinary
purchaser exercising ordinary care
✓
Trademark Registration is NOT required in an Action
for Unfair Competition
It is generally settled that unfair competition may consist in
the wrongful appropriation of a trade secret, defined as
any formula, pattern, device or compilation of information
which is used in a person’s business and which gives him
an opportunity to obtain an advantage over competitors who
do not know or use it.
Goodwill – reputation and public confidence that a
business venture has earned through a period of creditable
dealings. Article 521 of NCC provides that a goodwill of a
business is a property and may be transferred together with
the right to use the name under which the business is
conducted
INFRINGEMENT OF
TRADEMARK
UNFAIR COMPETITION
Unauthorized use of a
trademark
Passing off one’s goods as
those of another
Fraudulent intent is
unnecessary
Intent is essential
Prior registration of the
trademark is a prerequisite to the action
Registration is not
necessary
12 | A L Y N O T E S
Same class of goods or
services must be involved
There can be trademark
infringement without
unfair competition as
when the infringer
discloses on the labels
containing the mark that
he manufactures the
goods, thus preventing
public from being
deceived that the goods
originate from the
trademark owner
Different classes of goods
or services may be
involved
Unfair competition is
broader than trademark
infringement and
includes passing off
goods with or without
trademark infringement
SHANG PROPERTIES REALTY CORP. VS. ST. FRANCIS
DEVELOPMENT
CORP:
GEOGRAPHICALLY
DESCRIPTIVE TERM & SECONDARY MEANING
A ‘Geographically Descriptive Term’ is any noun or adjective
that designates geographical location and would tend to be
regarded by buyers as descriptive of the geographic location
of origin of the goods or services. A geographically
descriptive term can indicate any geographic location on
earth, such as continents, nations, regions, states, cities,
streets and addresses, areas of cities, rivers, and any other
location referred to by a recognized name. In order to
determine whether or not the geographic term in question
is descriptively used, the following question is relevant: (1)
Is the mark the name of the place or region from which the
goods actually come? If the answer is yes, then the
geographic term is probably used in a descriptive sense, and
secondary meaning is required for protection.
ASIA BREWERY, INC. VS. COURT OF APPEALS:
INFRINGEMENT OF TRADEMARK IS A FORM OF
UNFAIR COMPETITION
It has been consistently held that the question of
infringement of a trademark is to be determined by the test
of dominancy. Similarity in size, form and color, while
relevant, is not conclusive. If the competing trademark
contains the main or essential or dominant features of
another, and confusion and deception is likely to result,
infringement takes place. Unfair Competition is the
employment of deception or any other means contrary to
good faith by which a person shall pass off the goods
manufactured by him or in which he deals, or his business,
or services, for those of another who has already established
goodwill for his similar goods, business or services, or any
acts calculated to produce the same result.
The main thrust of SMC's complaint if not infringement of
its trademark, but unfair competition arising from the
allegedly "confusing similarity" in the general appearance or
trade dress of ABI's BEER PALE PILSEN beside SMC's SAN
MIGUEL PALE PILSEN. SMC's brand or trademark: "SAN
MIGUEL PALE PILSEN" is not infringed by ABI's mark:
"BEER NA BEER" or "BEER PALE PILSEN."
CO VS. JERRY YEUNG: PASSING OFF OR PALMING OFF
Unfair competition is defined as the passing off (or palming
off) or attempting to pass off upon the public of the goods or
business of one person as the goods or business of another
with the end and probable effect of deceiving the public. This
takes place where the defendant gives his goods the general
appearance of the goods of his competitor with the intention
of deceiving the public that the goods are those of his
competitor. In this relation, the distinctions between suits
for trademark infringement and unfair competition prove
useful: (a) the former is the unauthorized use of a
trademark, whereas the latter is the passing off of one's
goods as those of another; (b) fraudulent intent is
unnecessary in the former, while it is essential in the latter;
and (c) in the former, prior registration of the trademark is
a pre-requisite to the action, while it is not necessary in the
latter.
“PASSING OFF” takes place where the defendant by
imitative on the general appearances of the goods, misleads
prospective purchasers into buying his merchandise under
the impression that they are buying that of his competitors
SAN MIGUEL PURE FOODS VS. FOODSPHERE, INC: 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 of the appearance of the goods as offered for sale
to the public. Actual fraudulent intent need not be shown.
In the instant case, the Court finds no error with the
findings of the CA and Director General insofar as the
presence of the foregoing elements is concerned. First of all,
there exists a substantial and confusing similarity in the
packaging of Foodsphere's product with that of SMPFCI,
which, as the records reveal, was changed by Foodsphere
from a paper box to a paper ham bag that is significantly
similar to SMPFCI's paper ham bag. Thus, Foodsphere's
packaging in its entirety, and not merely its "PISTA" mark
thereon, renders the general appearance thereof confusingly
similar with the packaging of SMPFCI's ham, that would
likely influence purchasers to believe that these products
are similar, if not the same, as those of SMPFCI.
EXHAUSTION OF INTELLECTUAL PROPERTY RIGHTS —
also referred to as the exhaustion doctrine or first sale
doctrine. It constitutes one of the limits of intellectual
property rights. Once a given product has been sold under
the authorization of the IP owner, the reselling, rental,
lending and other third party commercial uses of IPprotected goods in domestic and international markets is
governed by the principle. After a product covered by an IP
right, such as by a patent right, has been sold by the IP right
owner or by others with the consent of the owner, the IP
right is said to be exhausted. It can no longer be exercised
by the owner.
For example, if an inventor obtains a patent on a new kind
of umbrella, the inventor (or anyone else to whom he sells
his patent) can legally prohibit other companies from
making and selling this kind of umbrella, but cannot
prohibit customers who have bought this umbrella from the
patent owner from reselling the umbrella to third parties.
There is a "fairly broad consensus" throughout the world
"that this applies at least within the context of the domestic
market" (National Exhaustion)
PATENTS
Patent is a statutory monopoly which protects against
unlicensed use of the patent device or process even by the
one who discovered it through independent research
Patentable Inventions — Any technical solution of a
problem in any field of human activity which is new,
involves an inventive step and is industrially applicable
shall be Patentable. It may be, or may relate to, a product,
or process, or an improvement of any of the foregoing
REQUISITES OF PATENTABILITY
1. Any technical solution of a problem in any field of
human activity
2. 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
3. Novelty - An invention shall not be considered new if
it forms part of a prior art
4. Industrial Applicability - An invention that can be
produced and used in any industry shall be
industrially applicable
13 | A L Y N O T E S
5.
Patentable subject matter – An invention that does
not fall within the prohibitions of a non-patentable
invention
NON-PATENTABLE INVENTIONS
a) Discoveries, scientific theories and mathematical
methods;
b) Schemes, rules and methods of performing mental
acts, playing games or doing business, and
programs for computers;
c) 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;
d) 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.
e) Aesthetic creations; and
f) Anything which is contrary to public order or
morality.
g) Aesthetic creations
h) Program for computers
i) Plant varieties or animal breeds or essentially
biological process for the production of plants and
animals
In the case of drugs and medicines, there is no patentable
invention in the following instances:
a) The mere discovery of a new form or new property
of a known substance which oes not result in the
enhancement of a known efficacy of that substance
b) The mere discovery of a new property of new use for
known substance
c) The mere use of a known process unless such
known process results in a new product that
employs at least one new reactant
“Prior Art” 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;
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
PATENT
UTILITY
MODEL
Any technical
solution of a
problem in any
field of human
activity which is
new, involves an
inventive step
and is
industrially
applicable
Any new model
of implements or
tools of any
industrial
product even if
not possessed of
the quality of
invention which
is of “practical
utility”
If not inventive,
may be
converted to a
utility model
application
20 years
Conversion
May be
converted into a
patent
application if it
complies with all
the requisites
Term
7 years
INDUSTRIAL
DESIGN
Any composition
of lines or colors
or any threedimensional
form whether or
not associated
with lines or
colors provided
that such
composition or
form gives a
special
appearance to
and can serve as
pattern for an
industrial
product or
handicraft
Exception to Prior Art:
NON-PREJUDICIAL DISCLOSURE
The disclosure of 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:
1. The inventor; including any person, who, at the
filing date of application had the right to the patent
2. A patent office and the information was contained
(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
3. A third party which obtained the information
directly or indirectly from the inventor
RIGHT TO A PATENT
The right to a patent belongs to the inventor, his heirs, or
assigns. When 2 or more persons have jointly made an
invention, the right to a patent shall belong to them jointly.
First to File Rule
If 2 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
E.I. DUPONT DE NEMOURS AND CO. VS. FRANCISCO: AN
ABANDONED PATENT APPLICATION MAY ONLY BE
REVIVED WITHIN 4 MONTHS FROM THE DATE OF
ABANDONMENT IF THE DELAY WAS UNAVOIDABLE
An application not revived within the specified period shall
be deemed forfeited. It is inaccurate for petitioner to argue
that its prior patent application in the United States
removed the invention from the public domain in the
Philippines. A right of priority has no bearing in a case for
revival of an abandoned patent application. Since both the
United States and the Philippines are signatories to the
Paris Convention for the Protection of Industrial Property,
an applicant who has filed a patent application in the United
States may have a right of priority over the same invention
in a patent application in the Philippines. However, this
right of priority does not immediately entitle a patent
applicant the grant of a patent. A right of priority is not
equivalent to a patent. Otherwise, a patent holder of any
member-state of the Paris Convention need not apply for
patents in other countries where it wishes to exercise its
patent.
Right of Priority of an Earlier-Filed Foreign Application
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 as 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
May be
registered as
copyright work
5 years
14 | A L Y N O T E S
WHO ARE
Two or more
persons have
made the
invention
separately and
independently of
each other
Two or more
applications are
filed for the same
invention
Two or more
persons have
jointly made an
invention
Inventions created
pursuant to a
commission
Employee made
the invention in
the course of his
employment
contract
ENTITLED TO A PATENT
Shall belong to the person who
filed an application for such
invention
Applicant who has the earliest
filing date or, the earliest priority
date
Right to a patent shall belong to
them jointly
The person who commissions the
work shall own the patent
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
The employer, if the invention is
the result of the performance of his
regularly-assigned duties, unless
there is an agreement, express or
implied, to the contrary
Doctrine of Equivalents
Provides that an infringement also takes place when a
device appropriates a prior invention by incorporating its
innovative concept and, although with some modification
and change, performs substantially the same function in
substantially the same way to achieve substantially the
same result
Doctrine of File Wrapper Estoppel
The pantentee is precluded from claiming as part of the
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. This doctrine balances the Doctrine of
Equivalents
Doctrine of Prosecution History Estoppel
Prosecution history estoppel applies when an applicant
during patent prosecution narrows a claim to avoid the prior
art, or otherwise to address a specific concern that arguably
should have rendered the claimed subject matter
unpatentable
CANCELLATION OF PATENTS
Any interested person may, upon payment of the required
fee, petition to cancel the patent or any claim thereof on any
of the following grounds:
(a) That what is claimed as the invention is not new or
patentable
(b) That the patent does not disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by any person skilled in the art
(c) That the patent is contrary to public order or
morality
Where the grounds for cancellation relate to some of the
claims or parts of the claim, cancellation may be effected to
such extent only
The petition for cancellation shall be:
1. In writing
2. Verified by the petitioner or by any person in his
behalf who knows the facts
3. Specify the grounds upon which it is based
4. Copies of printed publications or of patents of other
countries, and other supporting documents
mentioned in the petition shall be attached thereto,
together with the translation thereof in English, if
not in the English language
Notice and Hearing
Upon filing of a petition for cancellation, the Director of
Legal Affairs shall forthwith serve notice of the filing thereof
upon the patentee and all persons having grants or licenses,
or any other right, title or interest in and to the patent and
the invention covered thereby, as appears of record in the
Office, and of notice of the date of hearing thereon on such
persons and the petitioner. Notice of the filing of the petition
shall be published in the IPO Gazette
RIGHTS OF PATENTEES
A patent shall confer on its owner the following exclusive
rights:
A. Where the subject matter of a patent is a product
To restrain, prohibit and prevent any
unauthorized person or entity from making,
using, offering for sale, selling or importing that
product;
B. Where the subject matter of a patent is a process
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
C. Patent owners shall also have the right to assign, or
transfer by succession the patent, and to conclude
licensing contracts for the same
D. Licensing contracts
LIMITATIONS OF PATENT RIGHTS—
The owner of a patent has no right to prevent third parties
from performing, without his authorization, the following
circumstances:
A. General Limitations
(a) 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
(b) Act is done privately and on a non-commercial
scale or for a non-commercial purpose
(c) 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
(d) 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
(e) Act consists of the preparation for individual cases,
in a pharmacy or by a medical professional, of a
medicine in accordance with a medical prescription
(f) Invention is used in any ship, vessel, aircraft, or
land vehicle of any other country entering the
territory of the Philippines temporarily or
accidentally
II. Use by 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
III. Use by Government
(a) 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
15 | A L Y N O T E S
(b) Judicial or administrative body has determined that
the manner of exploitation, by the owner of the
patent or his licensee is anti-competitive
(c) In the case of drugs and medicines, there is a
national emergency or other circumstance of
extreme urgency requiring the use of the invention
(d) In the case of drugs and medicines, there is public
non-commercial use of the patent by the patentee,
without satisfactory reason
(e) 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
Unless otherwise provided herein, the use by the
Government, or person authorized by the Government shall
be subject to the following:
1. In situations under (c), (d) and (e), the right holder
shall be notified as soon as reasonably practicable
2. The scope and duration of such use shall be limited
to the purpose for which it was authorized
3. use shall be non-exclusive
4. The right holder shall be paid adequate
remuneration in the circumstances of each case,
taking into account the economic value of the
authorization
5. The existence of a national emergency or other
circumstances of extreme urgency, shall be subject
to the determination of the President of the
Philippines
INFRINGEMENT
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
Contributory Infringer
Anyone who actively induces the infringement of a patent or
provides the infringer with a component of a patented
product or of a product produced because of a patented
process knowing it to be especially adopted for infringing
the patented invention and not suitable for substantial noninfringing use shall be liable as a contributory infringer and
shall be jointly and severally liable with the infringer
TESTS OF PATENT INFRINGEMENT
A. Economic Interest Test: when the processdiscoverer’s economic interests are compromised
B. Literal Infringement Test: there is infringement of
patent under this test if one makes, uses, or sells
an item that contains all the elements of the patent
claim. It is satisfied by either of the following:
(i) Exactness rule – the item that is being sold,
made, or used conforms exactly to the patent
claim of another
(ii) Addition rule: one makes, uses, or sells an
item that has all the elements of the patent
claim of another plus other elements
C. Doctrine of Equivalents (function-means-andresults test): infringement takes place when a
device appropriates a prior invention by
incorporating its innovative concept and, although
with some modification and change, performs
substantially the same function in substantially the
same way to achieve substantially the same result
PEARL & DEAN INC. VS. SHOEMART, INC: TRADEMARK,
COPYRIGHT
AND
PATENTS
ARE
DIFFERENT
INTELLECTUAL PROPERTY RIGHTS THAT CANNOT BE
INTERCHANGED WITH ONE ANOTHER
The Court emphasized that to be able to effectively and
legally preclude others from copying and profiting from an
invention, a patent is a primordial requirement. No patent,
no protection. The ultimate goal of a patent system is to
bring new designs and technologies into the public domain
through disclosure. Ideas, once disclosed to the public
without the protection of a valid patent, are subject to
appropriation without significant restraint.
SMITH KLINE BECKMAN CORP. VS. CA: DOCTRINE OF
EQUIVALENTS
The burden of proof to substantiate a charge for patent
infringement rests on the plaintiff. Petitioner's evidence
failed to show the substantial sameness of petitioner's
patented compound and Albendazole. While both
compounds have the effect of neutralizing parasites in
animals, the identity of result does not amount to
infringement of patent unless Albendazole operates in
substantially the same way as the patented compound, even
though it performs the same function or the same result.
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. As stated early on, petitioner's
evidence fails to explain how Albendazole is in every
essential detail identical to methyl 5 propylthio-2benzimidazole carbamate.
INFRINGEMENT ACTION BY A FOREIGN NATIONAL
Any foreign national or juridical entity who meets the
requirements under Reciprocity Rule and not engaged in
business in the Philippines, to which a patent has been
granted or assigned under this Act, may bring an action for
infringement of patent, whether or not it is licensed to do
business in the Philippines under existing law
Reciprocity Rule
Any person who is—
a. a national or who is domiciled or has a real and
effective industrial establishment
b. in a country which is a party to any convention, treaty
or agreement relating to intellectual property rights or
the repression of unfair competition
c. to which the Philippines is also a party, or extends
reciprocal rights to nationals of the Philippines by law
d. shall be entitled to benefits to the extent necessary to
give effect to any provision of such convention, treaty
or reciprocal law, in addition to the rights to which
any owner of an intellectual property right is
otherwise entitled
REMEDIES FOR PATENT INFRINGEMENT
1. Action for Damages
Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose rights
have been infringed, may bring a civil action before a
court of competent jurisdiction, to recover from the
infringer such damages sustained thereby. 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.
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 times the amount of such actual
damages.
Damages cannot be recovered for acts of infringement
committed before the infringer had known, or had
reasonable grounds to know of the patent. It is
presumed that the infringer had known of the patent if
on the patented product, or on the container or package
in which the article is supplied to the public, or on the
advertising material relating to the patented product or
process, are placed the words “Philippine Patent” with
the number of the patent
No damages can be recovered for acts of infringement
committed more than four years before the institution
of the action for infringement
2. Injunction
Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose rights
have been infringed, may bring a civil action before a
court of competent jurisdiction, to recover from the
16 | A L Y N O T E S
infringer such damages sustained thereby, plus
attorney’s fees and other expenses of litigation, and to
secure an injunction for the protection of his rights
3. Disposal or Destruction
The court may, in its discretion, order that the
infringing
goods,
materials
and
implements
predominantly used in the infringement be disposed of
outside the channels of commerce or destroyed, without
compensation
4. Criminal Action for 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,
without prejudice to the institution of a civil action for
damages, be criminally liable therefor and, upon
conviction, shall suffer imprisonment for the period of
not less than 6 months but not more than 3 years
and/or a fine of not less P100,000 but not more than
P300,000, at the discretion of the court. The criminal
action herein provided shall prescribe in three (3)
years from date of the commission of the crime
Burden of Proof
If the subject matter of a patent is a process for obtaining a
product, any identical product shall be presumed to have
been obtained through the use of the patented process if the
product is new or there is substantial likelihood that the
identical product was made by the process and the owner of
the patent has been unable despite reasonable efforts, to
determine the process actually used
Defenses in Action for Infringement
1. Invalidity of the patent or claim
2. Existence of ground for cancellation
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
VOLUNTARY LICENSING
Refers to the grant by the patent wonder to a third person
of the right to exploit a patented invention. It is 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
Technology Transfer Arrangements refers to contracts or
agreements involving the transfer of systematic knowledge
for the manufacture of a product, the application of a
process, or rendering of a service including management
contracts; and the transfer, assignment or licensing of all
forms of intellectual property rights, including licensing of
computer software except computer software developed for
mass market
(Note: check section 87 and 88 for prohibited and mandatory
provision in voluntary licensing)
Rights of Licensor
In the absence of any provision to the contrary in the
technology transfer arrangement, the grant of a license
shall not prevent the licensor from granting further
licenses to third person nor from exploiting the subject
matter of the technology transfer arrangement himself
Rights of Licensee
The licensee shall be entitled to exploit the subject matter
of the technology transfer arrangement during the whole
term of the technology transfer arrangement
COMPULSORY LICENSING
Refers to the grant by 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 either by
manufacture or through parallel importation.
Period of filing is any time after the grant of patent. Except
for those not being worked in the Philippines on a
commercial scale, before the expiration of a period of 4 years
from the date of the filing of the application or 3 years from
the date of patent whichever period expires last (Rules and
Regulations on Inter Partes Proceedings, RULE 6, SEC. 2)
Parallel Importation
It is the importation of drugs and medicines by a
government agency or by any third party
Parallel Importer
It refers to one which imports, distributes, and sells genuine
products in the market, independently of an exclusive
distributorship of agency agreement with the manufacturer
GROUNDS FOR COMPULSORY LICENSING
1. National emergency or other circumstances of
extreme urgency
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
3. Where a judicial or administrative body has
determined that the manner of exploitation by the
owner of the patent or his licensee is anticompetitive
4. In case of public non-commercial use of the patent
by the patentee, without satisfactory reason
5. If the patented invention is not being worked in
the Philippines on a commercial scale, although
capable of being worked
6. Where the demand for patented drugs and
medicines is not being met to an adequate extent
and on reasonable terms
VOLUNTARY
LICENSING
COMPULSORY LICENSING
Grantor
Director of Legal Affairs
Grounds
Those mentioned under
Section 93 of IP Code as
No specific grounds
amended by Section 10 of
enumerated
RA 9502 (see enumeration
above)
Patent owner
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Transmission of Rights
Patents or applications for patents and invention to which
they relate, shall be protected in the same way as the rights
of other property under the Civil Code
Assignment of Inventions
An assignment may be of the entire right, title or interest in
and to the patent and the invention covered thereby, or of
an undivided share of the entire patent and invention, in
which event the parties become joint owners thereof. An
assignment may be limited to a specified territory
Form of Assignment: The assignment must be—
1. In writing
2. Acknowledged before a notary public or other officer
authorized to administer oath or perform notarial
acts
3. Certified under the hand and official seal of the
notary or such other officer
Rights of Joint Owners
If two or more persons jointly own a patent and the
invention covered thereby, either by the issuance of the
patent in their joint favor or by reason of the assignment of
an undivided share in the patent and invention or by reason
of the succession in title to such share, each of the joint
owners 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
17 | A L Y N O T E S
consent of the other owner or owners, or without
proportionally dividing the proceeds with such other owner
or owner
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
COPYRIGHT
2
It is the right over literary and artistic works which are
original intellectual creations in the literary and artistic
domain protected from the moment of creation. It relates to
artistic creations, such as books, music, paintings, and
sculptures, films and technology-based works as well as to
the main act which, in respect of literary and artistic
creations, may be made only by the author or his
authorization.
However, protection only extends to the expression of idea,
not to the idea itself or any procedure, system, method or
operation, concept, principle, discovery or mere data.
No Formality Rule
The Berne Convention provides that copyright protection
shall not be subject to any formality (Article 5(2) of the Berne
Convention).
PATENT
Time of Accrual
When
a
person,
by
independent
research
arrives
at
the
same
It may be vested in a work
product or that which is
closely similar or even
already patented, he is
identical to an earlier, or
restrained by the arm of
already patented work,
the law from exploiting
provided that the former is
such an invention by
truly original
reason of the patent
already granted to the
earlier discoverer
Non-Patentable Inventions
Non-patentable inventions Non-patentable inventions
may be subject of a may not be subject of a
copyright
patent
Periodicals and newspapers
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
Pure new reports no longer finds protection under the new
law, but a column or published comment will. News of the
day and other miscellaneous facts having the character of
mere items of press information are not copyrightable.
However, the copyright protection subsists in any work once
it entails intellectual effort that may result in the creation of
news report such as news expressed in video footage.
COPYRIGHT
COPYRIGHT
It is the right of literary
property as recognized and
sanctioned by positive law.
An intangible, incorporeal
right granted by statute to
the author or original
creator with the sole and
exclusive
privilege
of
multiplying copies of the
same and publishing and
selling them
TRADENAME
It is the designation which
is adopted and used by
person
to
denominate
goods which he markets,
or services which he
renders, and through its
association
with
such
goods,
services,
or
business, has acquired a
special significance
REQUISITES OF A COPYRIGHTABLE WORK
1. Originality – Does not mean novelty. It simply
means that the work owes its origin existence to the
author
2. Expression – A work must be embodied in a
medium sufficiently permanent or stable to permit
it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory
duration
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
3
Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not
reduced in writing or other material form
Lectures may be copyrightable provided it is written.
4
Letters
Letters and other private communications in writing are
owned by the person to whom they are addressed and
delivered, but they cannot be published or disseminated
without the consent of the writer or his heirs (Civil Code,
Article 723)
The letter writer is generally the copyright owner. He may
restrain the publication of copies of his letter on the ground
of his lack of consent. The letter writer does not publish the
letter by merely sending the letter to his correspondent
unless it was sent to a newspaper with intent of publication.
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
Books, pamphlets, articles and other writings
18 | A L Y N O T E S
Work of Applied Art
An artistic creation with utilitarian functions or
incorporated in a useful article, whether made by hand or
produce on an industrial scale. It includes all original
pictorials, graphics, and sculptural works that are intended
to be or have been embodied in useful article
9
Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science
What is copyrightable in a map is the selection,
arrangement, and presentation of the component parts
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
No prior approval or conditions shall be
required for the use for any purpose of statutes,
rules and regulations, and speeches, lectures,
sermons,
addresses,
and
dissertations,
pronounced, read or rendered in courts of
justice, before administrative agencies, in
deliberative assemblies and in meetings of
public character
(e) Pleadings and decisions of courts and tribunals
This pertains to the “original decisions” and not
the SCRA published volumes since these are
protected under derivative works
OWNERSHIP OF COPYRIGHT
Copyright ownership shall be governed by the following
rules—
ORIGINAL
CREATOR
Computer programs
Computer Programs
Set of instructions expressed in words, codes, schemes or
in any other form, which is capable when incorporated in a
medium that the computer can read, of causing the
computer to perform or achieve a particular task or result
15
WORKS NOT PROTECTED
No protection shall extend, under this law, to:
(a) 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;
(b) News of the day and other miscellaneous facts
having the character of mere items of press
information; or
(c) Any official text of a legislative, administrative or
legal nature, as well as any official translation
thereof
(d) Any work of the government of the Philippines
Prior approval of the government agency or
office wherein the work is created shall be
necessary for exploitation of such work for profit.
JOINT
AUTHORSHIP
Other literary, scholarly, scientific and artistic
works
DERIVATIVE WORKS
These are works based upon one or more pre-existing
works:
(A) Dramatizations,
translations,
adaptations,
abridgments, arrangements, and other alterations of
literary or artistic works;
(B) 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
Derivative works shall be protected as new works: Provided,
that such new work 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
The copyright protection only covers the additions, changes,
or other new material appearing for the first time in the
work. It does not extend to pre-existing material and does
not imply a copyright in that material.
COURSE OF
EMPLOYMENT
COMMISSIONED
WORK
LETTERS
AUDIOVISUAL
WORK
Copyright shall belong
author of the work
to
the
Co-authors shall be the original
owners of the copyright and in the
absence of agreement, their rights
shall be governed by the rules on
co-ownership
If a work consists of identifiable
parts that can be used separately:
the author of each part shall be the
original owner of the copyright in
the part that he has created
The employee, if the creation of the
object of copyright is not a part of
his regular duties
The employer, if the work is the
result of the performance of his
regularly-assigned duties
The person who so commissioned
the work shall have ownership of
the work.
The copyright thereto shall remain
with the creator, unless there is a
written stipulation to the contrary
Copyright shall belong to the writer
subject to the provisions of Article
723 of the civil code
The
a.
b.
c.
d.
copyright shall belong to:
The producer
The author of the scenario
The composer of the music
The film director
19 | A L Y N O T E S
e. The author of the work so
adapted
Subject to stipulations among the
creators
For the exhibition, the producer
shall exercise the copyright
ANONYMOUS
AND
PSEUDONYMOUS
WORKS
CONTRIBUTION
TO COLLECTIVE
WORK
The publishers shall be deemed to
represent the authors of articles
and other writings published
without the names of the authors
or under pseudonyms, unless—
1. the contrary appears, or
2. the pseudonyms or adopted
name leaves no doubt as to the
author’s identity, or
3. if the author of the anonymous
works discloses his identity
When an author contributes to a
collective work, his right to have his
contribution attributed to him is
deemed waived unless he expressly
reserves it
LIMITATIONS ON COPYRIGHT
I. Fair Use
The fair use of a copyrighted work for criticism, comment,
news reporting, teaching including multiple copies for
classroom use, scholarship, research, and similar purposes
is not an infringement of copyright. Fair use is defined as
the privilege to use the copyrighted material in a reasonable
manner without the consent of the copyright owner or as
copying theme or ideas rather than their expression
Decompilation, which is understood here to be 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 may also constitute fair use.
In determining whether the use made of a work in any
particular case is fair use, the factors to be considered shall
include:
(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
(d) The effect of the use upon the potential market for
or value of the copyrighted work
DURATION OF COPYRIGHT
SINGLE
CREATION
Protected during the life of the
author and for 50 years after his
death. This rule also applies to
posthumous works.
JOINT
CREATION
The economic rights shall be
protected during the life of the last
surviving author and for 50 years
after his death
Protected for fifty (50) years from
the date on which the work was
first lawfully published
ANONYMOUS
AND
PSEUDONYMOUS
WORKS
WORK OF
APPLIED ARTS
Except, before the expiration of the
said period, the author’s identity is
revealed or is no longer in doubt,
the rules on single and joint
creation shall govern; or if
unpublished, 50 years from their
making
Protection shall be for a period of 25
years from the date of making
PHOTOGRAPHIC
WORK,
AUDIOVISUAL
WORK
PRODUCED BY
PHOTOGRAPHY
OR ANALOGOUS
PROCESSES
Protection shall be for 50 years
from publication of the work and, if
unpublished, 50 years from the
making
NEWSPAPER
ARTICLE
Protected during the life of the
author and for 50 years after his
death
II. Reproduction of Published Work
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
III. 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 to persons requesting for purposes
of research or study instead of lending the volumes
or booklets which contain them;
(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
lost, destroyed or rendered unusable and copies are
not available with the publisher
IV. Reproduction of Computer Program
The reproduction in 1 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.
20 | A L Y N O T E S
V. Importation for Personal Purposes
The importation of a copy of a work by an individual for his
personal purposes shall be permitted without the
authorization of the author of, or other owner of copyright
in, the work under the following circumstances:
(a) When copies of the work are not available in the
Philippines and:
1. Not more than one copy at one time is
imported for strictly individual use only; or
2. The importation is by authority of and for
the use of the Philippine Government; or
3. The importation, consisting of not more
than three such copies or likenesses in any
one invoice, is not for sale but for the use
only of any religious, charitable, or
educational society or institution duly
incorporated or registered, or is for the
encouragement of the fine arts, or for any
state school, college, university, or free
public library in the Philippines.
(b) When such copies form parts of libraries and
personal baggage belonging to persons or families
arriving from foreign countries and are not intended
for sale
VI. General Limitations
1.
Recitation or performance of a work, once it has been
lawfully made accessible to the public, if done
privately and free of charge or if made strictly for a
charitable or religious institution or society
2. Making of quotations from a published work if they
are
i. compatible with fair use
ii. only to the extent justified for the purpose,
including quotations from newspaper articles and
periodicals in the form of press summaries
iii. the source and the name of the author, if
appearing on the work, are mentioned
3. 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 of the same nature
4. 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
5. Inclusion of a work in a publication, broadcast, or
other communication to the public, sound recording
or film, if such inclusion is made by way of illustration
for teaching purposes and is compatible with fair use
6. Recording made in schools, universities, or
educational institutions of a work included in a
broadcast for the use of such schools, universities or
educational institutions. Such recording must be
deleted within a reasonable period after they were
first broadcast and that such recording may not be
made from audiovisual works which are part of the
general cinema repertoire of feature films except for
brief excerpts of the work
7. Making of ephemeral recordings by a broadcasting
organization by means of its own facilities and for use
in its own broadcast;
8. Use made of a work by or under the direction or
control of the Government, by the National Library or
by educational, scientific or professional institutions
where such use is in the public interest and is
compatible with fair use;
9. Public performance or the communication to the
public of a work, in a place where no admission fee is
charged in respect of such public performance or
communication
10. 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. Provided that
i. either the work has been published, or
ii. that the original or the copy displayed has been
sold, given away or otherwise transferred to
another person by the author
11. Use made of a work for the purpose of any judicial
proceedings or for the giving of professional advice by
a legal practitioner.
COPYRIGHT INFRINGEMENT
A person infringes a right protected under RA 10372 when
one:
(a) Directly commits an infringement
(b) Benefits of the infringing activity of another person
who commits an infringement if the person
benefiting has been giving notice of the infringing
activity and has the right and ability to control the
activities of the other person
(c) With knowledge of infringing activity induces, cause
or materially contributes to the infringing conduct
of another
MICROSOFT CORPORATION VS. MANANSALA: THE
GRAVAMEN OF COPYRIGHT INFRINGEMENT IS NOT
MERELY THE UNAUTHORIZED MANUFACTURING OF
INTELLECTUAL
WORKS
BUT
RATHER
THE
UNAUTHORIZED PERFORMANCE OF ANY OF THE ACTS
COVERED BY SECTION 5 OF PD 49
The mere sale of the illicit copies of the software programs
was enough by itself to show the existence of probable cause
for copyright infringement. There was no need for the
petitioner to still prove who copied, replicated or reproduced
the software programs.
Piracy
Any unauthorized copying of copyrighted materials for
commercial purposes, and the unauthorized commercial
dealing in copied materials
Subconscious Copying Doctrine
It contemplates infringement or plagiarism by copying from
another work but committed subconsciously from memory
rather than conscious use by deliberately copying. The
overall appearance or impression establishes infringement.
Trivial or minor changes do not necessarily negate
infringement.
Plagiarism
It is the act of appropriating the literary composition of
another, or parts, or passages of his writings, or the ideas
or language of the same and passing them off as the
production of one’s mind. The incorporation in one’s work
of that of another without proper acknowledgement thereof
HABANA VS. ROBLES AND GOODWILL TRADING CO:
COPYING ALONE IS NOT WHAT IS PROHIBITED. THE
COPYING MUST PRODUCE AN INJURIOUS EFFECT
When is there a substantial reproduction of a book? It does
not necessarily require 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. A copy of a piracy is an
infringement of the original, and it is no defense that the
pirate, in such cases, did not know whether or not he was
infringing any copyright; he at least knew that what he was
copying was not his, and he copied at his peril.
KINDS OF INFRINGEMENT
A. Direct Infringement – it is an infringement by a
person who without the consent of the owner of the
copyright, does anything the sole right to do which
is by law conferred on the owner of the copyright
such as unauthorized translations, infringement by
reproduction, or unauthorized public performance
of work
B. Indirect Infringement – dealings with works of
direct infringement
21 | A L Y N O T E S
DEFENSES AGAINST CHARGE OF INFRINGEMENT
1. Fair dealing or fair use
2. Consent or permission of copyright holder
3. Common source
packaging alleged to infringe
implements for making them
De Minimis Principle
Refers to minimal things, small and trivial. Certain acts
would be considered too minimal to be considered acts of
infringement
REMEDIES FOR COPYRIGHT INFRINGEMENT
1. Injunction
The court may order the defendant to desist from an
infringement, among others, to prevent the entry into
the channels of commerce of imported goods that
involve an infringement, immediately after customs
clearance of such goods
2. Damages
Pay to the copyright proprietor or his assigns or heirs
such actual damages, including legal costs and other
expenses, as he may have incurred due to the
infringement as well as the profits the infringer may
have made due to such infringement, and in proving
profits the plaintiff shall be required to prove sales only
and the defendant shall be required to prove every
element of cost which he claims, or, in lieu of actual
damages and profits, such damages which to the court
shall appear to be just and shall not be regarded as
penalty.
Such other terms and conditions, including
payment of moral and exemplary damages, which
court may deem proper, wise and equitable and
destruction of infringing copies of the work even in
event of acquittal in a criminal case.
a
copyright
and
5. Destruction without any compensation
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
Presumption of Authorship
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. 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. 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.
PRESCRIPTION OF ACTIONS
REMEDY
Action for Damages
Criminal Action
Injunction
Impounding and
Destruction
PRESCRIPTIVE PERIOD
4 years from the time the cause
of action arose
Subject to the general rules of
prescription of crimes
None
None
the
the
the
the
3. Criminal Penalties
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:
FREQUENCY
PENALTY
P50,000 to
1st offense
1 – 3 years
P150,000
3 years and
P150,000 to
1 day – 6
2nd offense
P500,000
years
6 years and
P500,000 to
3rd offenses
1 day – 9
P1,500,000
years
In all cases, subsidiary imprisonment in cases of
insolvency
In determining the number of years of imprisonment
and the amount of fine, the court shall consider the
value of the infringing materials that the defendant has
produced or manufactured and the damage that the
copyright owner has suffered by reason of the
infringement
Persons Liable
Any person who at the time when copyright subsists in
a work has in his possession an article which he knows,
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;
(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
4. Seizure and Impounding
Deliver under oath, for impounding during the
pendency of the action, upon such terms and conditions
as the court may prescribe, sales invoices and other
documents evidencing sales, all articles and their
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