Banking Laws
Republic Act No. 1405
- Secrecy of Bank Deposits Law
- Bank Secrecy Law
Section 1: Purposes
● Encourage people to deposit their money in banking institutions and
● Discourage private hoarding.
Prohibited Acts
● All deposits of whatever nature with banks or banking institutions in the Philippines
including investments in bonds issued by the Government of the Philippines, its political
subdivisions and its instrumentalities, are hereby considered as of an absolutely
confidential nature.
○ Said deposits may not be examined, inquired or looked into by any person,
government official, bureau or office. (Section 2)
○ It shall be unlawful for any official or employee of a banking institution to
disclose to any person other than those mentioned in Section two hereof any
information concerning said deposits. (Section 3)
Covered Deposits -- what deposits are considered absolutely confidential in nature
● All deposits of whatever nature
● Investment bonds
● Trust accounts
Exceptions; Peso Deposits: -- as indicated in RA 1405
● When there is a written permission of the depositor or investor
○ Permission of the depositor or investor must be WRITTEN, hindi pwedeng oral
permission lang
● In case of impeachment cases
● Upon the order of a competent court in cases of bribery or dereliction of duty of public
officials including plunder.
● Upon the order of a competent court in cases where the money deposited or invested is
the subject of litigation.
Other Exceptions; Peso Deposits: -- based on other laws
● Upon the order of a competent court or tribunal in cases involving unexplained wealth
under RA 3019, or the Anti-Graft and Corrupt Practices Act.
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● Upon the order of a competent court by the AMLC (Anti-Money Laundering Council)
where there is possible cause of money laundering and in some instances even without
court order.
● Upon inquiry by the Commissioner of BIR for the purpose of determining the net estate
of a deceased depositor.
● Disclosure to the Treasurer of the Philippines for dormant deposits of at least 10 years
under the Unclaimed Balances Act (RA 3936).
● Report of banks to AMLC of covered and/or suspicious transactions.
● Upon order of the Court of Appeals, examination of law enforcement officers in terrorism
case under Human Security Act of 2007 (RA 9372).
● Examination is made in the course of a special or general examination of bank and is
specifically authorized by the Monetary Board.
● Examination is made by an independent auditor hired by the bank to conduct its regular
audit provided that the examination is for audit purposes only and the results thereof shall
be for the exclusive use of the bank.
● Examination by PDIC (Philippine Deposit Insurance Corporation) who may inquire into
bank deposits when there is a finding of unsafe or unsound banking practices.
● Examination by PCGG (Presidential Commission on Good Government) in the conduct
of its investigation to recover ill-gotten wealth accumulated by former President Marcos.
Garnishment of bank deposits:
Is it possible that the creditor of a depositor may garnish bank deposits?
YES, According to the decision of the Supreme Court, pwedeng ang isang creditor ay
ipa-garnish niya yung bank deposits ng kanyang debtor.
● Does not violate RA 1405
○ It was not the intention of the legislature to place bank deposits beyond the reach
of the execution to satisfy a final judgement.
Penalty in violation of RA 1405
● Imprisonment of not more than five years or a fine not more than twenty thousand pesos
or both, in discretion of the court.
Republic Act 3591
- Philippine Deposit Insurance Corporation Act
Philippine Deposit Insurance Corporation Act (PDIC)
● Government instrumentality created in 1963 by virtue of Republic Act 3591 to insure the
deposits of all banks which are entitled to the benefits of the insurance.
● The PDIC is an attached agency of the Department of Finance.
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Functions of PDIC:
● Deposit Insurer
○ Provide permanent and continuing insurance coverage on all insured deposits.
● Co-regulator of banks
○ Empowered to examine and investigate banks
● Receiver and Liquidator of closed banks
○ The PDIC as receiver shall control, manage and administer the affairs of the bank
Insured Deposits
● Amount due to a bona fide depositor for legitimate deposits in an insured bank net of any
obligation of the depositor to the insured bank as of the date of closure, but not to exceed
P500,000.
○ Maximum insurance coverage shall not exceed P500,000.
○ Coverage of the insurance is bank closure ordered by the Monetary Board.
Deposits not entitled to payment
- Kapag yung banko nagsara upon the order of the Monetary Board, these deposits are not
entitled to payment.
● Investment products such as bonds and securities, trust accounts and other similar
instruments.
● Deposit accounts or transactions which are unfunded and that are fictitious or fraudulent.
● Deposit accounts or transactions constituting and/or emanating from unsafe and unsound
banking practice/s, as determined by PDIC.
● Deposits that are determined to be the proceeds of an unlawful activity as defined the
Anti-Money Laundering Act, as amended.
● Deposits payable in a place outside the Philippines (like those in foreign branches).
● Money placements by the head office of a foreign bank in its branch in the Philippines
because there is only one entity.
● Deposit products that resulted from splitting of deposit.
Rules in Determination of Amount Due
● Per Bank
○ The entitlement to deposit insurance is on a per bank basis.
● Per Depositor, Per Capacity Rule
○ All deposits in the bank maintained in the same right and capacity for his benefit
either in his own name or in the name of others shall be added together in
determining the insured amount.
● Accounts “By”, “In Trust For (ITF)” or “For the Account of (FAO)” another person:
○ In a “By” account — Juan by Pedro
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■ Juan is the depositor
○ In an “ITF” account — Juan ITF Pedro
■ Pedro is the depositor
○ In a “FAO” account — Juan FAO Pedro
■ Pedro is the depositor
● Individual Accounts
○ All individual accounts of a depositor where ownership is vested in him shall be
insured to a maximum of P500,000.
● Joint Accounts
○ Joint accounts regardless of whether the conjunction “and”, “or”, “and/or” is used
shall he insured separated from any individually owned deposit accounts,
provided that:
■ If the account is held jointly by two or more natural persons, or by two or
more juridical persons or entities, the maximum insured deposit shall be
divided as many equal shares as there are individuals. juridical persons or
entities, unless a different sharing is stipulated in the document of deposit,
and
■ If the account is held by a juridical person or entity jointly with one or
more natural persons, the maximum insured deposits shall be presumed to
belong entirely with such juridical person or entity.
Illustration:
1. How much is Juan dela Cruz’ insured deposit if he has the following three deposit
accounts in the same bank?
-
P600,000 is not the amount of insured deposit dahil ang maximum insured deposit must
not exceed P500,000. In this case only P500,000 is the insured deposit while P100,000 is
considered an uninsured deposit.
2. Juan dela Cruz has the following accounts with XYZ Bank
How much is the total insured and uninsured deposit of Juan dela Cruz?
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-
Dalawa yung accounts ni Juan, isang individual account and yung dalawa joint accounts.
According to the law, the individual account is insured separately sa joint accounts. Sa
individual account ni Juan dela Cruz, ang insured deposit is P500,000 and the uninsured
deposit is P200,000 which is the excess of 500k. Sa joint accounts naman, the insured
deposit must be divided with as many depositors doon sa joint account. Sa joint checking
account P500,000 will be divided into two, P250,000 kay Juan dela Cruz and P250,000
kay Pedro Santos. While sa joint demand account, P250,000 is the insured deposit for
Juan dela Cruz and also P250,000 for Maria Santos. The remaining P100,000 is the
uninsured deposit which will also be divided by the number of depositors sa account na
yon, therefore, P50,000 each ang uninsured deposit sa joint demand account.
- Yung maximum na P500,000 insured deposit will be divided into as many
individuals, juridical persons or entities as they are.
- Kaya imbes na P300,000 yung share ni Juan dela Cruz and Maria Santos, nagging
P250,000 dahil sa maximum na 500k.
Mode of Payment
Paano babayaran ng PDIC yung insurance proceeds?
● By cash
● By making available to each depositor a transferred deposit in another insured bank in an
amount equal to insured deposit of such depositor.
Effect of Payment
● PDIC shall be subrogated to all rights of the depositor against the closed bank to the
extent of such payment.
○ Kapag nagbayad ang PDIC sa depositor, may subrogation na mangyayari. The
PDIC can go against the closed bank.
● Payment of an insured deposit to any person by PDIC shall discharge the PDIC.
Period for the depositor to file and enforce claim:
● Period to file claim
○ 2 years from actual takeover of the closed bank
● Period to enforce claim
○ 2 years after the 2-year period to file claim
Period for the PDIC to settle claim
● Within 6 months from the date of filing of claim
● Failure on the part of PDIC to settle within the said period
○ Imprisonment from 6 months to 1 year
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Anti-Money Laundering Act (RA 9160)
● Law that governs or punishes money laundering here in the Philippines
● Special penal law
● As amended by RA 9194, RA 10167, RA 10365 and RA 10929
Money Laundering
● A process of making illegally obtained proceeds appeared legal
● Cleaning of dirty money (dirty money - proceeds of an illegal activity)
Stages of Money Laundering
● Placement
○ Illegitimate funds will be introduced into legitimate financial system
● Layering
○ Money is moved around by sending money to different financial transactions to
create confusion and changed its form
● Integration
○ Integrated into the financial system through additional transactions until the dirty
money appears clean
How is money laundering committed as provided under AMLA?
● Money laundering is committed by any person knowing that any monetary instrument or
property represents involves, or relates to the proceeds of any unlawful activity
a. Transacts said instrument or property
b. Converts, transfers, disposes of, moves, acquires, possesses o uses said monetary
instrument or property
c. Conceals or disguises the true nature, source, location, disposition, movement or
ownership of or rights with respect to said monetary instrument or property
d. Attempts or conspires to commit money laundering offenses referred to in
paragraphs (a), (b), (c)
e. Aids, abets, assists in or counsels the commission of the money laundering
offenses referred to in paragraphs (a), (b) or (c) above; and
f. Or fails to perform any act as a result of which he facilitates the offense of money
laundering referred to in paragraphs (a), (b) or (c) above.
Money laundering is also committed by any covered person who, knowing that a covered or
suspicious transaction is required under this Act to be reported to the Anti-Money Laundering
Council (AMLC), fails to do so.
Unlawful activities - very specific as provided by AMLA
● Kidnapping for ransom
● Qualified theft
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Robbery and Extortion
Bribery
Malversation of public funds and property
Swindling
Forgeries and counterfeiting
Frauds and illegal exactions
Piracy on the high seas
Hijacking, Destructive arson and murder (not including homicide)
Comprehensive Dangerous Drugs Act
Anti Graft and Corrupt Practices Act
Plunder
Jueteng and Masiao
Smuggling
Law on Illegal/ Unlawful Possession, Manufacture, Dealing In, Acquisition or
Disposition of Firearms, Ammunition or Explosives
Terrorism and conspiracy to commit terrorism
Financing of terrorism
Revised Forestry Code of the Philippines, as amended
Philippine Fisheries Code
Philippine Mining Act
Wildlife Resources Conservation and Protection Act
National Caves and Cave Resources Management Protection Act
Anti-Carnapping Act
Anti-Fencing Law
Anti-Trafficking in Persons
Anti-Photo and Video Voyeurism Act of 2009
Anti-Child Pornography Act
Special Protection of Children Against Exploitation and Disrimination
Migrant Workers and Overseas Filipinos Act
Intellectual Property Code of the Philippines
Securities Regulation Code of 2000
Electronic Commerce Act of 2000
Felonies or offenses of a similar nature that are punishable under the penal laws of other
countries
Covered Persons
● Those regulated by Banko Sentral ng Pilipinas
○ banks / non-banks
● Those regulated by Insurance Commission
○ Insurance companies
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● Those regulated by Securities and Exchange Commission
○ Security dealers
● Jewelry dealers in precious metals who as a business, trade in precious metals, for
transactions in excess of one million pesos (P1,000,000.00)
● Jewelry dealers in precious stones who as a business, trade in precious stones, for
transactions in excess of one million pesos (P1,000,000.00)
● Company service providers which, as a business, provide any of the following services to
third parties:
○ acting as a formation agent of juridical persons;
○ acting as (or arranging for another person to act as) a director or corporate
secretary of a company, a partner of a partnership, or a similar position in relation
to other juridical persons;
○ providing a registered office; business address or accommodation, correspondence
or administrative address for a company, a partnership or any other legal person or
arrangement; and
○ acting as (or arranging for another person to act as) a nominee shareholder for
another person.
● Persons, including lawyers and accountants, who provide any of the following services:
○ Managing of client money, securities or other assets;
○ Management of bank, savings, securities or other assets;
○ Organization of contributions for the creation, operation or management of
companies; and
○ Creation, operation or management of juridical persons or arrangements, and
buying and selling business entities.
● Casinos including internet and ship-based casinos, with respect to their casino cash
transactions related to their gaming operations.
Note: The term covered persons shall exclude lawyers and accountants acting as independent
legal professionals in relation to information concerning their clients or where disclosure of
information would compromise client confidences or the attorney-client relationship.
Obligations of Covered Persons
● Customer identification
○ Covered institutions shall establish and record the true identity of its clients based
on official documents
● Record keeping
○ All records of all transactions of covered institutions must be maintained and
safely stored for five (5) years from the date of transactions
● Reporting of Covered and Suspicious Transactions
○ Requirement of the covered persons to report to the Anti-money laundering
council all covered and suspicious transactions within five (5) working days from
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the date of occurrence thereof, unless the Anti-Money Laundering Council
prescribes a different period not exceeding fifteen (15) working days, from the
occurrence thereof.
Note: Lawyers and accountants acting as independent legal professionals are not required to
report covered and suspicious transactions if the relevant information was obtained in
circumstances where they are subject to professional secrecy or legal professional privilege.
Safe Harbor Provision : When covered persons are reporting, it shall not be considered as a
violation of Bank Secrecy Laws and other similar laws. No administrative, criminal, or civil
proceedings shall lie against any person for having made a covered or suspicious transaction
report in the regular performance of his duties in good faith, whether or not such reporting results
in any criminal prosecution under this Act or any other law.
Covered Transaction
● transaction in cash or other equivalent monetary instrument involving a total amount in
excess of Five hundred thousand pesos (P500,000.00) within one (1) banking day
● For jewelry dealers in precious metals, who, as a business, trade in precious metals, for
transactions in excess of One million pesos (P1,000,000.00)
● For jewelry dealers in precious stones, who, as a business, trade in precious stones, for
transactions in excess of One million pesos (P1,000,000.00)
● For casino, a single casino transaction involving an amount in excess of Five million
pesos (P5,000,000.00) or its equivalent in any other currency.
Suspicious transactions
● A transaction with covered institutions, regardless of the amount involved, where any of
the following circumstances exist:
○ there is no underlying legal or trade obligation, purpose or economic justification;
○ the client is not properly identified;
○ the amount involved is not commensurate with the business or financial capacity
of the client;
○ taking into account all known circumstances, it may be perceived that the client’s
transaction is structured in order to avoid being the subject of reporting
requirements under the AMLA;
○ any circumstance relating to the transaction which is observed to deviate from the
profile of the client and/or the client’s past transactions with the covered person;
○ the transaction is in any way related to an unlawful activity or any money
laundering activity or offense that is about to be committed, is being or has been
committed; or
○ any transaction that is similar, analogous or identical to any of the foregoing.
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Anti-Money Laundering Council (AMLC)
● Created as pursuant to AMLA
● To protect the integrity and confidentiality of bank accounts and to ensure that the
Philippines will not be used as a money laundering site for the proceeds of any unlawful
activity.
● Composition
○ Banko Sentral ng Pilipinas - chairman
○ Commissioner of Insurance Commission and Commissioner of Securities and
Exchange Commission - members
○ AMLC is assisted by a secretariat headed by an executive director
● Power to inquire into bank deposits
○ Upon the order of Court of Appeals
■ Based on an ex parte applicable in cases of violation of the AMLA when it
has been established that probable cause exists that the deposits or
investments involved, including related accounts, are in any way related to
an unlawful activity or a money laundering offense.
■ Application will be filed before the Court of Appeals
○ Or even without court order
■ No court order shall be filed with respect to unlawful activities like
● Kidnapping for ransom
● Comprehensive Dangerous Act
● Hikacking, destructive arson and murder
● Offenses similar to a, b, and c
● Terrorism and conspiracy to commit terrorism
■ In these cases, court order is not a requirement for AMLC to examine
bank deposits
Freezing of monetary instrument or property
● Based upon verified ex parte petition by AMLC
● After determination of probable cause
● Petition is to be filed before the Court of Appeals
● The Court of Appeals may issue a freeze order which shall be effective immediately for a
period of 20 days.
● Within a 20 day period, the Court of Appeals shall conduct a summary hearing.
● The total period of the freeze order shall not exceed six (6) months.
● If no case filed, the freeze order shall ipso facto lifted after its expiration, unless a money
laundering complaint against the person whose monetary instrument or property was
frozen, or a petition for civil forfeiture against the frozen monetary instrument or
property, has been filed, in which case the freeze order shall remain effective until the
money laundering case is terminated or an asset preservation order is issued, respectively.
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PON'J'II-ICt\l. ANI> ROYAi,
UNIVHRSl'l'Y OF SANTO TOMAS
The CatholicUnivcrsi1yof the Philippiocs
fi.,1,\NII,:\
ALFREDO M. VELt\YO COLLEGE OF ACCOUNTANCY
OUTLINEIN
INTELLECTUAL
PROPERTYLAW
i\ny. Clark Edwllrd ltunes U)'tico,,l,D,, lt.N.
Basic Reference:
fntellecrual Property Code of the Philippines (Republic 1\ct No. 8293, as amended)
• Unk•t1,uchcrwiliC
provitk-d,:ill11'-'c:'
ion'i«) ci1ed1n Ihit ,.-11liM P'-rrnint•) "'-'C:'
i,>n"o( , he Intdk-cw:1
I I ~-rupcn)'
C,11.lc,
CHAPTER I
PRELIMINARY
OVERVIEW
State Policies'
(1) To protect and sccu,·e rhe exclusive rights of scienrisrs, inventors, ar1is1sand 01hc1·gifred
ci1izens lO their intellectual property and crca1ions, particularly when beneficial lO the people, for such
periods as provided in chis i\c1.
(2) To promote 1hc diffusion of knowledge and informnion for the promo1ion of na1ional
development and proi;ress and the common good.
(3) To sLrcamline administrative procedures of registering pa1ents, trademarks and copyrighL,
10 liberalize the regis1ra1ion on 1he iransfer of 1echnolo1,')',and 10 enhance the enforcement of
intellccwal property right~ in the Pl1ilippines
Constitutional Basis
(1) The use of properly bears a social funcuon, and all economic agents shall contribute LOLhe
common good. lndividu:tls and privMe groups, including corpor:11ions, cooperatives, and similar
collective organi,-ations, shall have the right to own, establish, and operate economic enterprises,
subject LOLheduty of the SLale Lo promote distributive justice and lo intervene when the common
good so demands.'
(2) 'J'he Stale shall protect and st'Cure Lheexclusive rights of scicnLisls, invenLOrs,artists, and
other gi~ed citi:f.ens to their intellectual property and creations, particularly when beneficial to the
people, for such period as may be provided by law.'
(3) 'T'he sustained development of a reservoir of national talents consisting of Filipino
scientists, entrepreneurs,professionals,managers,high.level technicalmanpower:1ndskilledworkers
§2, lntcllccnmlPropertyC<xlc.
1987 CONS'ITl'U'l'ION;i\rciclc X11,§6.
S,,pm;i\rc;cle XII, §'13.
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'l'IY. CiARK EDWARD R. U\TIC:O,J.D., R.N.
and craftsmen in all fields shall be promoted by the State. The State shall encourage appropriate
technology::inc.l
rcgulntcits transferfor the nntional bcncfit.4
International Treaties and Conventions Governing Intellectual Property
I.
2.
3.
4.
5.
6.
7.
8.
Berne Convention for the Protection of Literary and Artistic Works as revised by the
Brussels /\ct (01 August 1951)
Paris Convention for the Protection of Industrial Property Rights (27 September 1965)
International Convention for the Protection of Performers, Producers of Phonograms
and Broadcasting Organizations (Rome Convention, 25 Septcm ber 191!4}
Convention 11stablishingthe World Intellectual Property Orh-:inization (14 July 1980)
Budapest 'J'reaty on 1he ln1crnational Rccognii:ionof the Deposit of Microorganisms for
the Purposes of Patent Procedure (21 October ·1981)
Agreement on 'l'radc Rcla1cd AspG-ci:sof l111cllec1ualProperty Including 'J'radc in
Counterfeit (ioods of Ciencral Agreement on Tariffs and Trade
Paicnt Cooperation Treaty (17 August 2001)
i\fodrid Protocol Relating to 1he llfadrid Agreement Concerning 1-he lnternarional
Rcgis1ration of Marks (0I April 1996)
I n1cllccrual Property Rights; Dcfinilion
According LO 13allan1inc'sI.aw Oiclionary, ln1ellcc1ual Proper!)' arc those propcriy rights
which resulr from 1-hephysical manifcsrn1ion of original 1-houglH.
Black's I.aw Oictionary defines lntellcc1ual Propcny as "/\ cniegory of intangible rights
pro1ec1ingcommercially valuable product~ of the human inrcllect. 'l'hc ca1egory comprises p,·imarily
trademark, copyright, and patent rights, but also includes trade secret rights, publicity rights, moral
rights, and rights against unfair competition."s
lntcUectual Property Rights under the Intellectual Property Code
a. Copy,·ight;
b. Related Rights of Copyright;
c. Trademarks and Service Marks;
d. Geographic Indications;
e. Industrial Designs;
r. Patents;
g. l .iyout-Designs (ropographies) of Integrated Circuits''
h. Protection of Undisclosed lnformation under the Agreement on Trade-Related J\spects
of lntclk-ctual Properly Rights (l"IUPS}
J,,pm; Article XII, §14.
111:ick'sI.aw Dictionarr, 9"' Ed. (2009), p. 88 I.
§4.
2
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
ArlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
CHAPTERU
PATENTS
Patent; Definition
i\ pntcntis a grnntissued by the governmentgiving an inventor,designer,or makerthe right
10 exclude others from making, using, or selling his invention, design, or utility model within the
country for a specific tenn, in exchange for his patentable disclosure. Patent owners may also give
permissionto, or license. other pnrticsto use their inventionson mutuallyilhrrccd
tcnns. Owners m;1y
also sell their i,wention rights to someone else, who then becomes the new owner of the patent.
What is a patentable invention?
A patentable invention is any technical solu1ion of a problem in any field or human activity
which is new, involves an invemive step and is indusrrially applicable shall be Patentable. l! may be,
or may relate to, a produc1·,or process, or an improvement or any or 1hc foregoing.'
Kinds of Pn1en1s
a. Invention Patentovclry, inventiveness, industrial applicabili1y
b. Design Pa1en1- Novelly, ornamen1.ali1.y
c. Urili1yModel - ovelry, industrial applicabiliry
Invention Patent; Definition
It is any technical solurion of a problem in any field of human ac1ivi1ywhich is new, involves
an invcmivc step and is industrially applicable. It may be, or may rclnie 10, a product, or process, or
an impl'Ovemeni of any of the roregoing.
Elements for Patcnrnblc Inventions
I.
Nnychy- An invention shall not be conside,·ed new if it fonns part of a prior al't.'
11or
this puq,ose, prior art shall consist of:
a. l'.ve1·y1hingwhich has been m:,de available to the public anywhere in 1-heworld,
before the (i~ng dAtc nr the priority elate of the application claiming the invention;''
nnd
b. The whole contents of :,n earlier published Philippine application or application
with carLlerpriority date of a different inventor."'
Doctrine of Prejudicial Disclosure
The right to pntcnt arises from application date. Jf the inventor voluntarily disclnscs
his creation, such as by offering it ror sale, the world is free to copy and use it with
impunity. Ideas, once disclosed to the pubLlcwithnut the protection nf a valid patent, arc
subject to appropriation without significant restraint. 11
§21.
§23,
'
1(1
II
§24.1.
§24.2.
Pead& Dean(Phi.I.),locorpot:uc<l
vs.Shoernatr,locotpormed,C.R. No. 148222,15 August2003.
3
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
The ultimate goal of a patent system is co bring new designs and technologies into
the public through disclosure; hence ideas, once disclosed to the public without protection
of a valid patent, arc subject to appropriation without significant rcscraint.12 Thus. when
a work has already been made available
for lack of novelcy.
10
the public, it shall be non-patentable
Exception to Prior Art: Doctrine of Non-Prejudicial Disclosure
This is an exception to the General Rule on Prior 1\ rt under Sec. 24. Tt provides
that the disclosure of the information coni:nincd in the application during the 12 mo,uhs
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;
2. A pnient office and the informario11 con1ained (1) in another applicaijon filed b)'
1he inven1or and should nOI have been disclos,.._Jby the office, or (2) i11 an
application filed wirhout the knowledge or consenl' of the invenror by a third party
which obtained the information directly or indirectly from the inventor;
3. A 1hircl parii• which obtained 1he informa1ion direc1ly or indirec1ly from 1hc
inventor.''
IL has been rcpcalcdly held 1ha1an invcn1ion musl possess 1hc cssc11Lialclcmc11ls
of novehy, originality and precedence and for rhe patencee m be enticlcd to protection,
lhe invcnLion must be new to Lhcworld."
2.
lnycnJjyc$1c12
- A11invention involves :1n inventive step if, having ,·cg:1,·dro prior nri, it is
nol obvious to a person skilled in Lhcart at Lhc time of lhe filing date or priority date of tl1e
applicaLion claiming 1hc invention.'s
Nota ~enc: Universally Accessible Ch~'!lper and Qualjl)' Nkclicincs Act of 2008 - In
case of drugsant.Inicc.licincst
therei~no inventive
step if theinvention1·esult"
fromthe mere
1 of a known
discovccy
of a newformor newproprC1)
subsrnnce
whichdocsnotrs:suh
in
t·nhaoccmcnl
of dwknownpfficac)'
of 1ha1
tmbsraocc,:r
oi: the
mere discovery or any new
property or new use of a known substance or the mere use of a known process unless such
known process results in a new product that employs at least one react.int."'
3.
"
",.
"
"
"
Industrial
Applicability - An invention that can be produced and use,! in any industry shall
be industrially applicable."
Pead& Dean (Phi.I.),locotpora1eJvs. Shocmart,I11corponned,
G.R. No. 148222,15 1\ugusl2003.
§25.
RosarioC. t\faguanvs. Coun o( 1\ppeals,G.R. No. L-45101,28 November 1986.
§26.1,as amendedby RepublicAcl No. 9502,othetwiseknowoas "UoivcrsaJly
AccessibleCheaperao<lQuality
~ledicinesAct of2008" 01cre1nafter,
"CheaperMedicinesAct'l
§26.2, :1samendedb)' the CheaperMedicinesAct.
§27.
OUTLINE
4
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
RIGHT TO A PATENT
General Rule to Patent Ownership: The right co patent belongs co che inventor, his heirs,
or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall
belong to them jointly."
Persons entitled to a patent:
'I. 'T'hcinventor, his heirs, or assij;,"lls;
2.
Joint invention - Joi,uly by the inventors;
3. Two or more persons invented separately and independently of each other - To the
4.
person who filed an application;
Two or more applications arc filed - 'I'o the applicaiu who has the eMlicsc filing date
or the earliest priority date (rirst to File Ruic)
First to File Ruic
If two (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 arc filed for the same invention, 10 the applicant who has the
earliest filing dnte 01·, che earliest priority dace.'''
Exccp1ions
10Pa1cn1
Ownc[jjhip;
/cf.Cooydgh1)
1nvcmions Created Pursuant to a Commission (Work for Hire Doctrine)
Person who commissions rhc work sh:,11own rhc p:11cnt, unless
Puc~11omto a Commis~inn:
otherwise provided in the contract.a'
Pucs11anrto on t·:m12loymt'OI'
ConlCact: In case chc employee m:,dc the invcn1ion in chc course
or his employment contract, the patent shall belong 10:
a.
b.
'l'hc employee: if the inventive :,ctivity is not a part of his regular duties even if the
employee uses the t,mc, faci~tics, and materials or the employer."
'l'hc employer: if the invention is the result of the perform:,nce of his regulnrly-assigned
duties, unless there is :u, agreement, express or in-lplicd,to the cuntrnry.22
Thus, the person who commissions the work owns the patent, nnd not only the end product.
(Cf. copyright)
Right of Priority
An application for patent fJed by any person who has previously applied for the same
invention in another country which by treaty, convention, or law affords similar privileges to l'i~pino
citi,.ens, shall be considered as filed as of the date of filing the foreign application: Provided, That: (a)
,.
"
,,
,.
"
§2l!.
§W.
§30.1.
§30.2(0).
§30.2(b).
OUTLINE IN INTIC:.LLECTlJAL
PR()lll!..RTY]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
5
the local appLlcation expressly claims priority; (b) it is filed within twelve (12) months from the date
the earliest foreign application was filed; and (c) a certified copy of the foreign application together
with an English translation is filed within six (6) months from the date of filing in d1e Philippines."
Filing Date is accorded only when all the requirements provided under Section 40 arc present.
Priority Dale comes into play when there is an application for paicnt for the same invention that was
filed in another country
Term of an lnvenlion Paten!
The tenn of a patent shall be twenty (20) years from the filing date of the application."
A pMent shall rnke effect
011
the date of rhe publication or 1he grant of the patent in the 11'0
Ga'l.cttc.2 \
Thus, a paieni's term expires cwenry (20) years ar1cr 1hc original application has been filed,
rq,>nrdlessof 1he date of the effec1ivity of the patent upon 1hc applicant's submission of all complete
requirements and after successfull)' prnving all the clements rhcrcro.
CANCELLATION OP PATENT
Grounds for CanceUa1ion
An)' inrcresred person may, upon parmcn1 of the re,1uircd fee, peririon ro cancel 1hc pa1ent or
any claim 1hcrcor, or parts of Lhcclaim, on any of the following grounds:
I.
2.
3.
That wha1 is cbimed as rhe invcn1ion is 1101new or pa1entnble;
Thal Lhepatent docs not disclose the invemion in a manner sufficienll)' clear and complete
for it 10 be carried out by any person skilled in the an; or
That 1he pa1cn1 is conirary 10 public orde,· or morality."
Where the grounds for canccllntion relate to some of 1he cl:,ims or par1s of the cl:iim,
canccll:ition may be effected to such extent only."
Remedy of the True and Actual I nvcntor
If a person, who w:,s deprived of the patent without his consent or through fraud is dccbred
by final court order or decision LO be the true and actual inventor, the court shaU order for his
substitution :,s patentee, or at the option of the true inventor, cancel the patent, and award actual and
other damages in his favor if warr-Jnted by the circumsrnnces. 2'
Thus, the trueandactunlinventormny<,lo1-hcfollowing:
a.
",.
""'
""'
Jf his invention is stiU subject of a pending appLlcation, 1.hcappLlcant can, within one (1)
year from date of first pubLlcation, file an action in court to prove he is the real inventor.
Once so ck-dared, he can:
§31.
§54.
§50.3.
§61.1.
§61.2.
§68.
OUTLINE
6
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
,.
Prosecute the application as his own;
rile new application but filing date will retroact to original filing date;
m. Request that application be refused;
iv. Seek cancellation of the patent."
Tf his invention is already patented, the patentee can, within one (1) year from publication
of the paient, but substituted as the patentee, or seek cancellation of the patent.
11.
b.
Time to file action in court
The actions indica1ed in Sec1ions 67 and 68 shall be filed wii:hin one (1) year from the date of
publication made in accordance with Sections 44 and 51, respectively."
Righ1s Conferred by a Paten!
A patent shall confer on its owner 1hc following exclusive rights:
1. Where rhe subject ma1ter of a pa1e111
is a produc1·, to restrain, prohibit and prevent any
unauthorized person or c111il)'from making, using, offering for sale, selling or importing
that product."
2. Where the subjee1·matter of a paten! is a process, to restrain, preveni or prohibi1· any
unau1horizcd person or e111i1yfrom using the process, and from manufacturing, dealing
in, using, selling or offering for sale, or imponing any product obrnined direct·ly or
indircc1ly from such process."
3. Pa1cn1owners shall also have 1he right 10 assign, or 1ransfer by succession 1he pa1e111,
and
to conclude licensing con1racts for 1hc same."
The ,·igh1s conferred by a paicnt applicarion 1akc effect after publication in the Offici:d
Gazette.
To be able LO effectively and legally preclude others from copying and profiting from the
invention, a paicnr is a primordial requirement. No patent. no protcctjon. 'Inc ultimate goal of:,
patent system is 10 bring new designs and technologies into the public domain through disclosure
Ideas, once disclosed 10 the public wi1hout 1he protection of a valid patent, arc subjec1 to appropri:,tion
,I
• ·r
•
u
w1t1out
s1g11mc~nt
rcstr:11n1.
NON-PATENTABLE INVENTIONS
The following shall be excluded from patent protection:
I. Discoveries, scientific thwries :md mathematical methods, and in the case of drugs and
medicines, the mere discovery of a new form or new property of a known substance which
docs not result in the enhancement of the known cflicacy of that substance, or the mere
diticovcf)' of any new property or new u:,;cfor a known substance, or the mere u:,;cof
:-i
known process unless such known process res,~ts in a new product that employs nL least
one new reactant. Salts, esters, ethers, polymorphs, metabo~tes, pure form, particle size,
isomers, mixturesof isomer:,;,complcxc:,;,
combinations,and other derivative:,;
of a known
".,
"
"
"
"
§67.
§67.
§71.l(a),
§71.t(b).
§71.2.
Pead& Dean (Phi.I.),locorpot:uc<l
vs. Shoernatr,locotpormed,G.R. No. 148222,15 1\ugus12003.
OUTLINE
7
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
2.
3.
4.
5.
6.
substance shall be considered to be the same substance, unless they differ significandy in
properties with regard to cfficacy;' 5
Schemes, rules and methods of performing mental acts, playing games or doing business,
anti programs for computers;"'
Methods for treatment of the human or animal body by surgery or therapy anti diagnostic
methods practiced on the human or animal body. This provision shall noc apply to
productsand composition for use in any of these mcthoUs;n
Plant varieties or animal b,-eeds or essentially biological process for the production of
planes or animals. '!'his provision shall not apply to microorganisms Md non-biological
anti microbiological processes;"
Aesthetic creations;"'
i\ny1hing which is conrrary to public order or morality.''''
Noia Ucne: In addition to discoveries, scien1jlic theories and ma1hcmarical mc1hods, rhe
lntellcc1ual P,-operty Code(" Il'C") now includes (as non-paicnrnble) drugs and medicines as follows:'"
The mere discovery of a new form or new property of a known subsm11ccwhich docs nor
result in the enhancement of the known eflicacy of 1hat subs1ance;
2. ·1·he mere discovery of any new pmper1y 01· 11ewuse of a known subsmnce;
3. The mere use of a known process unless such known process results in a new procluc1 1hat
employs at least one ,-eacrnnc.
'I.
LIMITATIONS OF PATENT RIGHTS
The owner of a pacenc has no ,·ighc to p,·cvenc chird pa,·cies from maki11g,usi11g,offering fo,·
sale, selling, or impor1ing a patenc.ed product in the following circumsmnces:
a.
Using a pacenced produce after it has been puc on che markec in che Philippines by the
owner or the product, or with his express consent.
In case of drugs or medicines, the s:aid limirncion applies after a drug or medici,,e
has been inu·oduced in the Philippines or anywhere else in the world by the pa lent owner,
or by :anyparty authorized lo use the invention. ·11,isallows parallel importation for tll'ugs
and medicines.
The right to impol't the drugs :and medicines shall be :available to any government
agency or any private thi,-tlparty. 42
§22.1,a:..amendedb)' LhcCheaperMedicinesAcc.
§22.2.
§22.3.
..
.,
§22.4.
§22.5.
§22.(,.
§22.t, :1samendedb)' the CheaperMedicinesAct.
§72.1,a:-.a1nendc<l
b)' t..hcCheapctMedicinesAcc.
8
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
b.
c.
d.
Where the act is done privately and on a non-commercial scale or for a non-commercial
purpose" Provided that it docs not significantly prejudice the economic interest of the
owner of the patent.
Exclusively for experimental use of the invention for scientific purposes or educational
purposes."
Jn the case of drugs and medicines, where the ace includes testing, using, making or selling
the invention including any dam related thereto, solely for purposes reasonably related to
the development and submission of infonnation and issuance of approvals by
government regulatory agencies required under any law nf the Philippines or of another
country that reh,i,lates 1he manufacture, constn,ction, use or sale of any product.
The dam submitted by the original patent holder may be protected from unfair
commercial use provided in 1\rticle 3?.3 of the TRlPS Agreement.' 1
e.
f.
Where the act consists of rhe preparation for individual cases, in a pharmacy or by a
medical professional, of a medicine in accordance with a medical prescription."'
Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other
country entering the territory of 1hc Philippines temporarily or accidentally: Provided,
'l'hat such invention is used exclusively for the needs of rhe ship, vessel, aircraft, or land
vehicle and not used for the manufacwring of anything 10 be sold within the Philippines."
Doctrine of Prior User
Any person mher than the npplicnnL, who, in b'OOdfaith, was using the invention in the
Philippines, or undertaken se,·ious preparntions to use the same, in his enterprise o,· business, befo,·c
the filing date or priority date of rhe application, shall have the right to continue the use thereof as
envisaged in such preparations within the territory where the pnLCnlproduces its effect. lluL tl1is right
may only be transferred or assigned together with his enterprise or business, or with thn1 pnrl of his
enterprise or business in which the use or preparations for use have b<:enmade.'"
Usc by Government
A govemment agency or any third person :,uthori~ed by the Government may exploit the
invcnLioneven withoul ngrccmcnlof Lhcpatent owner where:
a.
b.
..
.,
"
.,,
r,
..
.
"'
,
The public interest, in particular, national security, nutrition, health or the development
of otl1cr sectors, as determined by Lhe appropriate agency of Lhe government, so
41
rcc.1uircs;
f\ judicial or :,dministrntive body has determined th:,t the manner of exploitation, by the
51
owner of the pntcntor his licensee, is anti-compct.itivc;
•
§72.2.
§72.3.
§72.4.
§72.5.
§72.2.
§73.
§74.I (o).
§74.l(b).
9
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
The use by d1c Govcrnmcnc, or iliird person audlorizcd by the Government shall be subject,
the conditions set forth in Sections 95 to 97 and '100 to 102 on compulsory
licensing.
11111/alis11111/amli1,
to
,\11cases arising from the implementation of this provision shall be cognizable by courts with
appropriate jurisdiction provided by law. No court except the Supreme Court of c.hcPhilippines, shall
issueany temporary rcstrnining:order or preliminary injunction or such other provisional remedies
that will prevent its immediatecxccution.51
LICENSING
Modes of Obtaining I ,icense to Exploit Patent Rights
a. Voluntary Licensing"
b. Compulsory Licensinl-(''
Voluntary Licensing
The grant by the parent owner
to
a third person of rhe l'ight to exploit a parented invcnrion.l-1
Rights of a Licensor in Voluntary Licensing
In rhe absence of nny provision m rhe conlrnry in rhe technology tmnsfcr arrangement, chc
granl of a license shall 1101prcvcnl the licensor from granting furihcr licenses l0 1hird rc,·son nor r,·om
exrloiting 1hc subject mauer or lhe lechnology lransfcr arrangemcnl himsclr."
Liccnst-c shall be en1itl~'()lO exploil 1he subjecl mauer of the technology transfer armngemen1
during rhe whole term of rhe 1echnology transrer armngerneni. 51'
Mandatory Provisions5'
I.
2.
3.
The laws of lhe Jlhilirrines shall govern lhc inlerrrerauon of the same and in lhe event
of litigation; the venue shall be 1he proper court in the place where the licensee has i1s
principal office;
Continued access to improvements in techni4ues and processes ,·elated to the technology
sh:,11be ,rrnde :,vail:,bledul'ing the period of the technology tr:,nsfer a,·rangement;
ln the event the technolom• transfer arrangement shall provide for arbitration, the
Procedul'e of 1\1·bi1rationof the i\rbitration J.:1wof the Philippines or the i\rbitration
Rules of the United ations Commission on International Trade I .aw (U 1ClTRi\l .) OI'
the Rules of Conciliation and i\rbitration of Lhc International Chamber of Commerce
(]CC) shall :1pply and the venue of al'bitrntion shall be the Philippines or any neutral
country;anti
4.
"
"
",.
"
"
SI,
Philippine taxes on aU payments relating
borne by the licensor.
lO
the technology Lransfcr arrangement shall be
§74.3,as amendedb)' LhcChcapetMedicinesAct.
§85.
§93.
§85.
§89
§90.
§88, JPC.
OUTLINE
10
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
Effect of non-conformance with the prohibited clauses and mandatory provisions
General Ruic:
on-conformance shall automatically render the technology transfer
arrangement unenforceable.
r.xccption: Unless said technology tmnsfcr arrangement is approved and registered with the
Documentation, Information and Technology Transfer Bureau under the provisions of Section 91 on
exceptional cases.5"
Compulsory Licensing
Compulsory Licensing is the grant of the Director of Legal Affairs of a license to exploit a
p:1tcntcdinvention, even without the 11grccmcntof the patent owner, in favor of any person who has
shown his capability co exploit the invcmion. I lowcvcr, Republic J\ct No. 9502 (Universally Accessible
Cheaper and Quality lvfedicines Act of 2008) amended Sec. ?3 so that it is the Director General of the
IJ>Owho may grant a license co exploit patented invention under the grounds enumerated thercin.S?
Thus, 1he Director General of 1he lntellectual Property Office ("!.P.O.") may grant a license
m exploit a patenied invemion, even wirhout 1he aweement of 1he parent owner, in favor of any
person who has shown his capability IO exploit 1he inven1ion, under any of 1hc following
circumstances:
I.
2.
3.
4.
Na1ional emergency or oLher circumsiances of cxLremcurgency;
Where the public inrcrest, in parricular, national sccuri1y, nurrition, health or the
dcvclopmcnL of oLhcr vital scciors of Lhc naLional economy as determined b)• Lhe
appl'Op1·in1·e
agency of rhe Government, so rc<1uircs;
Where a judicial or ndminisirnrivc body has de1c,·mined rhnt the manner of exploira1ion
by 1hc owner of Lhepatent or his licensee is anLi-cnmpeLiLive;
In case of public non-commercial use of LhepaLent by the patentee, wiLhout sntisfactory
reason;
5.
6.
If the pnLcntcclinvcnLion is not being worked in Lhe Philippines on a commercial scale,
although capable of being worked, without saiisfocto,·y re:,son: Provided, rhar rhe
imponntion of the pa1en1ed:1nicle sh:dl cons1i1ute working or using rhe patent; or
Where Lhe demand for paLcntccldrugs and medic,nes is not being met lo an ndec1uaLe
extent and on re:,sonable terms, as determined by the Secretary of the Department of
J lenlth."'
PATENT INFRINGEMENT
It is the making, using, offering for sale, selling, or importing a paten Ledproduct or a product
obtained directly or indirectly from a patented process, or the use of a patented process without the
auLhorization of the paLcnLce."'
"
"'
"'
,.,
§92, IPC.
Act.
§93,:1samendedby the Chcnpcr!'vlcdic.incs
Act.
§93, :1samendedby the Cheapert\'1cdic.incs
§?G.1,a:-.a1nendc<l
b)' t..hcCheapctMcdicioesAcc.
I1
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
Kinds of Patent Infringement
'I. Civil Infringement
2. Criminal Infringement
- If infringement is repeated by the infringer or by anyone in
connivancewlthhim reftcrfinality of the judgmentof the court againstthe infringer, the
3.
offenders shall, without prejudice to the institution of a civil action for damages, be
criminally liable."
ContributOry InfringementOne 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 espccialli• adopted for in fringing the
patented invention and not suitable for substantial non-infringing use shall be liable as a
contributory infringer and shall be jointly and severally liable with the infringer.'"'
TESTS TO DETERMINE PATENT INFRINGEMENT
1\.
l ,i1crallnfrin~cmcm- In using literal infringement as a 1:es1,resort must be had in the first
instance to the words of the claim. To determine whether the particular item falls within
the literal meaning of 1hc patent claims, the couri must juxrnpose rhe claims of rhe patent
and 1he accused product within 1he overall context of the claims and specifications, 10
determine whether there is exacr identity of all material clements.'"
11. Doc1rjnc
o( I\Quivalcnts
- Under 1he,loc1rinc of e<1uivalents,an infringement also occurs
when a device appropriates a prior invention by incorporating its innovnrivc concept and,
albeit with some modification and change, performs substantially the same function in
substantially the same way IO achieve substantially the same ,·csuh."'
In order to infringe a patent, a machine or device must perform the same function,
or accomplish the same result by idcmical or substantially idcmical means and the
principle or mode of operation must be subsranti:dly the same,M
The doctrine of e<juiv:dentsprovides th:n an infringement also takes pince when a
device appropri:ucs:t prio1·invcn1ion by incoq,ur:i1ing its innov:uivcconcept :,nc.l,
alll1ough with some mocliGcation and change, performs subslal1lially the same function
in substantially the same wny t0 achieve substantially the same result. The principle or
mode of operation must be the same or subst.intinlly the same. The doctrine of et1uivalents
thus requires satisfaction of the function-means-and result test, the patentee having the
burden to show that all three components of such cquivalcncy test arc met.'"'
Meaning of "equivalent device"
It is :mch a:;a mcch:micof ordinaryskill in construction of simihirmachinery,having the
forms, spcciGcalions and machine before him, could substitute in the place of the mechanism
described without the exercise of the inventive faculty.
§84.
§7G.G.
PascualGodi.nesvs. Coun of Appeals,el al., G.R. No. 97343, 13 SepLembet194>3.
PascualGodinesvs. Courtof Appc.1ls,ct al.,(j.ll. No. 97343, 13 September1993.
Rob(..-rtoI .. dcl Rosario vs. Courtof Appeals :indJ:mitoCorp., (j.R. No. 115106.15 ~larch 1996.
SmithKli.oeBeckmaoCorp.vs. Coul'lof 1\ppealsandTryco PharmaCorp.,C.R. No. '126627,14 August2003.
12
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY, CiARK EOWARD R, U\TIC:O,J.D.,R.N.
Under the doctrine of mechanical equivalenL~, the patentee is protected from colorablc
invasions of his patent under the l-,'1.lise
of substitution of some part of his invention by some wellknown mechanical equivalent. It is an infringement of the patent, if the substin,te performs d1e same
function and was well known at the date of the patent as a proper substirutc for the omitted
in,:,rrcdicnt."'\
Defenses in Paten! Infringement
ln an action for infringement, the defendant, in nddition to other defenses :wailnblc to him,
may show the invalidity of i:hepatenc, or ani• claim thereof, on any of the grounds on which a petition
of cancellation can be brought under Section 61.'"
A. Patent found invalid may be cancelled:
In an action for infringement, if the court shall find the patent or any claim to be
invalid, it shall cancel rhe same, and rhe Director of Legal Affairs upon receipt of the final
judgment of cnncellacion by the court, shall record that fact in ehe register of ehe Office
and shall publish a notice to that effect in the l PO Gazene.'"
B. Doctrine of File Wrapper Estoppcl
This doctrine balances the doerrine of e<1uivalents.Patentee is precluded from
cbiming as part of patented product that which he had 10 excise o,· modify in order to
avoid patent office rej~-ction,nml he may omit any additions that he was compelled 10 add
by patent office regulnrions.
P:Hcnrce is precluded from cl:,iming as pa,·t of parented producr 1ha1which he had
to excise m modify in orderto avoid patent office ,·ejection, a,,d he may omit anpdditions
he was compelled to add by patent office regulations."
CarlosGsell vs. Valcti.a110
Veloso \'ap-Juc,G.R. No. L•4720, 19Jaouat)'1909.
§81
§82
71
A<lvaoceTransfonnctCo. vs. J..evi.oson,
No. Kl• 101I, 837 F.2d 1081,(Fed. Ci.r.1988).
13
OUTLINE IN IN'J'IC:.LLECTlJAL
PR()lll!..RTY
]..A\~1
i\rlY. CIARK EOWARD R. U\TIC:O,J.D.,R.N.
CHAPTER Ill
TRADEMARKS
Mark; Definition
,\ny visible sign capable of distinguishing the goods (trademark) or services (service mark) of
an cn1crprise and shall include a smmpcd or marked con miner of goods."
Nom fiene: A sound mark is still not )'Ctregistrable.
TYPES OP MARK
Trademark
Any visible sign which is adopted and used to identify rhe source of origin of goods, and which
is capable of dis1jnguishing them from goods cma11a1jngfrom a compe1i1or.
A trademark refers to a word, name, symbol, emblem, sign or device or any combina1ion
1hereof adopted and used by a merchant IO idenrify, and disringuish from others, his goods of
commerce. It is basically an i111cllcc1ual
crca1ion 1hat is suscep1ible 10 ownership and, consistently
1herewi1h,gives rise ro its own clemenrs of ownership. '11,e incorporeal right, however, is distinc1 from
1he pror,cny in the ma1crialobject subject 10 it. Ownc,·ship in one docs 1101necessarily vest owncrshir,
in 1he 01hcr. Thus, 1he transfer or assig11mcn1of 1he intellectual pror,erty will not necessarily constitule
a conveyance of 1he thing i1 covers, nor would a conveyance of the lalter imr,ly the 1rnnsfcr or
assign men I of the intellectual right.71
Mark
Any visible sign capable of distinguishing 1he services of an e111.erpriscfrom the service of
other enterprises.
Service
Trnde Name
It is the n:,me or designation identifying or distinguishing an en1erprise."
Any individual name or surname, !inn name, device or word used by manufacturers,
industri:dists, merchan1s, and others to iden1ify their businesses, vocations or occupations."
Collective Marks
Any visible sign designated as such in the application for registrntion and capable of
distinh11.1ishing
the originor anyother common char:1ctcristic,
includingthe qualityof goods or services
of different enterprises which use 1.hesign under the control of tl1e registered owner of the collective
mark.u'
"
§121.1.
1\
Dist111cria
\V:1shington,Inc. vs. Court or Appc:,ls:ind l_.:1
Tondcii+l Distillers, Inc., G.R. No. 120961, 17 October
1!.>96.
,,
§121.3.
7(,
§121.2.
Converse Rubber Corp. vs. Univcnml Rubber Products, Inc. nnd Tiburcio S. I:.vallc,G.lt No. I~-2790(i,08 Jnnunry
1987.
14
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
Purpose of trademarks
The objects of a trndcmark arc to point out distinctly the origin or ownership of the articles
to which it is affixed, to secure to him who has been inscrumencal in bringing into market a superior
article or merchandise the fruit of his industry and skill, and to prevent frnucland imposition." llfodern
nuthoriticson trodcmark1::-iw
view trademarksas pcrfonning threedistinct functions:7~
I. Indicate origin or ownership of the articles co which they arc attached;
2. Guarantee that those articles come up to a certain standard of quality; and
3. /\dvcrtise the articles they symbolize.
Kjndsof Marks
Arbitrary Marks: arc commo11 words which, when applied 10 certain goods or services,
neither sup,gest or describe any characteristic of those goods or services. nxamplcs: I lr\\'(IT.!1Tl'1'1\CKJ\ RD (compu1:crs), IVORY (soap), KODAK (for pho1ogmphy), 1'1\LMOLl\lli (shampoo),
etc.
Fanciful Marks: arc marks 1ha1 partake of neologism, e,·eatcd solely for rhc purpose of
func1ioning as a mark. Noic 1hat archaic or obsolc1c 1crms may also func1ion as fanciful marks.
11xamplc:MICROSOl•T, GOOGI J,:,X 11ROX, Kl .FJ\ 11X,7.ONROX, 'i'UPPl1R\Xl1\RI'..
Suggestive Marks: arc marks LhaLdescribe some chamcLerisLicor alleged meriL of a produc1
or service. Because descriptive 1·crmsmay be 1ru1hfullyapplied m the goods and services, 1heyarc nm
c11LitlcdLoprotcc1ion u11less1hcy have acquired
secondary
meaning
io 1hcmarlsctrlocc.
1\ descriptive
ma,·k ae<1uircssecondary meaning when, in addi1ion 10 i1s li1cralo,· dic1ion:irymeaning, it co1111otcs10
1hc public a produc1 fmm a uni<1ucsource. 1'.xamplcs: /I PP! .I\ (elcc1ronics and software corporation),
/ING TIBAY (brand of Marikina foOLwear), PUllli (distilled waLCr), YliLLO\XI l'/\GES (for
directory), Cle.
Generic marks: arc marks that LcllwhaL a producL or service is, rather than indicating the
source of a product. These arc never registrable :,ml can never tunc1ion as a tradcmad<. 'l'hus, these
must remain in the public domain. 11xample:l'I .OWl-:RS (for a store that sells flowers), P1\Pl·'.R (for
a store that sells paper and stal.ioncr)'), SI 11lffS (for a store that manufactures shirts), etc.
No~, Bene: Arbitrary and fanciful mnrks nrc considered "inherently distinctive" and thus arc
eligible for registration and protccl.ion. 'J'hese arc commonly referred Loas "strong" marks.
Acquisition of Ownership of Mark
The rights in a mark shall be ac<Juiredthrough registration made validly in accordance with
the provisions of the lntcUcclUal Property Code~'. '!'he filing date of application is the operative act lO
acquire trademark righL~.
I lowcvcr, registration docs not confer upon the registrant an absolute right to the registered
mark, 'J'hc certificate of registration is mere!>'a prima facic proof that the;registrant is the owner of
",.
,,
1~tc..1)h:i,
A.G. vs. Director of Patentsand Westmont Ph:mnaccuticals,
Inc., G.R. No. L-20635, 31 ~larch 1966.
Pribhda.s
J.l\tirpuri vs. Court of Appeals,G.R. No. 114508, 19 November 1999.
§122.
15
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CiARK EDWARD R. U\TIC:O,J.D.,R.N.
the registered mark or trade name. Evidence of prior and continuous use of the mark or trade name
by another can overcome the presumptive ownership of the registrant and mny very well entitle the
former to be declared owner in an appropriate case.
The right to register a trademark should be based on ownership. When the applicant is not
1.hcowner of the trademark being applied for, he has no right to apply for 1.hcregistration of 1.hcsame.
Under the Tmdcmark l.:iw, only the owner of the tradcmnrk, trodc name or sc1vicc mark used to
distinh'l1ishhis goods, business or service from the goods, business or service of others is entitled to
register the same. i\n exclusive distributor docs not acquire any proprietary interest in the principal's
trademark and cannot register it in his own name unless it has been validly assigned to him."'
Nora Bene: It is not 1he application or rcgisrrai:ionof a trademark 1hat vesi:sownership rhereof,
but it is the ownership of a trademark that confers rhe right to register the same. 1\ trademark is an
indus1rial property over which i1s owner is en1i1led to properly righ1s which canno1 be appropriaied
by unscrupulous entities that, in one way or another, happen 10 register such rrademark ahead of i~s
irue and lawful owner. ·n,e presumprion of ownership accorded to a registrant must 1hen necessarily
yield to superior evidence of aclual and real ownership of a 1rademark."
Rights conferred
a.
b.
10
the owner of a registered mark
The owner of a registered mark shall have the exclusive right 10:"'
Use the mark for one's own goods or services;
Prcvcn1 third parties from using, wi1hou1 his consent, signs or conrnincrs which arc
identical or simibr to 1he registered trademark where such use would result in a likelihood
of confusion.
In case or 1he use of an identical sign for identical b't)Odsor services, a likelihood of
con fusion shall be presumed.
Dumtion or clTecti,•ity of Trademark Registration
It remains in force for 10 ye:irs, subject to i11deli11ite
renewals of 10 years each. The registrant
is re<1uiredto file a declaration of actual use and evidence to that effect, or show valid reasons based
on ll1eexistence of obstacles lo such use, with.in one (1) year from ll1e fifth anniversai:y of the date of
the registration of the mark. Otherwise, the mark shall be removed from the Register by the IPO."
Acquisition of Ownership ofTrade Name; Some lmportant Principles
Ownership of a mark or trade name may be ac<tuired by adoption and use in trade or
commerce, and not ncccss:trilyby rcgistr:ttiun. As between actual use of a mark without registration,
and registration of the mark without act11aluse thereof, the former prevails over ll1e lauer. I'or a rule
widelyaccepted and finnlyentrenched i:,;that actu:11
usein commerce
or business
isa pre rcqui~itc
to
the acquisition of the right of ownership.
.,
"
"
"
SuperiorCmnmcrcinlEnterprises,Inc. vs. KunnnnEnterprisesI.tJ. nnd SportsCont(.1)1 & Distributor,Inc.,(j.1-t
No. 169974,20 /\pra 2010.
Bi.tkenstock
OrtJ10paedie
GMBII and Co. KG vs. PhilippiocShoe Expo~latket.in.g
CocpomtiooG.R.No. 194307,
20 November 2013.
§147.1.
§§145-146.
OUTLINE
16
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
The two concepL~ of corporate name or business name and trademark or service mark, arc
not mutually exclusive. It is common, indeed likely, that the name of a corporation or business is also
a trade name, trademark or service mark."' A trade name of a national of a State that is a party to the
P::irisConvention, whether or not the trade name forms p::irtof a tn:idcmark,is protected"without the
obligationof prior filing or registration."'15
i\ny change in the ownership of a trade name shall be made with the transfer of the enterprise
or pMt thereof identified b}' that n;1mc.fil\
A nameordc:sirnarioo
maynorheusedas a trade nameif
by its nature or the use to which such name or designation 003)' be puc it js contrary co public order
orm0 ra)sandif,inparricular,
iris liableroc.kcelvt!
trackcirdcs0 c rbenuhlicas to thenan1rc
of rbe
cnrc:cpcisc
idcori
fin!bytbat name,,.,
In pa,ticular, any subsequent use of 1he trade name by a 1hird party, whether as a trade name
or a mark or collective mark, or any such use of a similar 1rade name or mark, likely JO mislead the
publicshall be deemedunlawful."'
,\ trade name need not be registered wirh the IPO before an infringement sui1·may be filed by
its owner against the ownc,· or an infringing 1rademark. 1\1!1hat is iccquired is 1ha11he trade name is
previously used in 1radc or commerce in the Philippines. 1\ corporation has 1hc exclusive right muse
it~ name. 'l'he right proceeds r,·om Lhe Lheory 1hat it is a fraud on the co,.porn1ion which has acquire,!
a righ1 10 LhaLname and pel'hap~ carried on its busines~ 1hcreunder, that ano1hcr should a11emp110
use the same name, or 1hc same name wi1h a sligh1 variaiion in such a way as to induce persons to deal
wi1h it in the belief LhaLthey arc dealing wiLh the corporation which has i:,ovcna repulaLion IO 1hc
n:111,c.ij'>
NON-REGISTRABLE MAru<S
A mark cannot be rcgislcrcd if:
I. Consists or immornl, deceptive or scandalous matter, or matter which may disparage
or folscly suAAeSI:, connection with pc,·sons, living or dead, ins1i1u1ions, bclids, or
,,ationnl symbols, or b,·ing them into co111emp101· disrepute;'"
2. Consists of nags, coal of arms or other insignia of the l'hi~ppincs or any foreign
country;'"
3. Consists of a name, por1r.1itor signature identifying a particubr living individunl except
by his wriucn consent, or of a deceased l'rcsidcnl of the Philippines, during the life of
his widow, except by written consent of the widow;''2
"
Shang.ri.J..a
lmcn1:H.io11al
I h)lel i\lanaHcmenL,Ltd,, ct al. vs, DevelopersGroup of Companies,Inc,, G.IL No,
"
1:rcdcoit:inur~1c1uring
Corpormionvs. Presidentnnd 1:cllow~ot I farv:1rdCollege(I lnrv:1rdUnivcrt-itr),c;.1-tNo.
185917,Ul June 201 I.
"'
§IG5.4,
§1(,S.I.
§IG5.
"
""
""
I 59938,3I March 2006.
Coffe1:P,aru1crs,
loc. vs, Sa.11
FrnnciscoCoffee & Roastcry,Inc., G.R. No. 169504, 03 f\lal'ch2010.
§123.l(a).
§123.l(b).
§12J.l(c).
17
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J'IY. CIARK EDWARD R. U\TIC:O,j.D., R.N.
4. Is identical with a registered mark nf another or a mark with an earlier filing or priority
elate, in respect of:
a. 'J'hc same goods or services, or
b. Closely related goods or services, or
c. If it nearly resembles such a mark as to be likely to deceive or cause
confusion;' 3
5.
ls identical with, or confusingly similnr to, or constitutes a tronslation of n well-known
mark. whether or not registered in 1.hcPhilippines, and used for identical or similar
goods or scrviccs;'H
6. ls identical with, or confusingly similar to, or constitutes a translation of a well-known
mark which is registered in the Philippines, and used for goods or services which arc
not sin1ik1r;'>'i
7. Likcl)' to mislead the public, particularli• as to 1hc nature, <1ualil)',characteristics or
geographical origin of 1he goods or services;"'
8. Consists exclusively of signs that arc generic for 1hc goods or services 1ha1they seek to
identify;'"
9. Consists exclusively of signs or of indica1ions 1hat have become customary or usual 10
designate 1hc goods or services in everyday lang<1ageor i11a bona fide and established
Lrac.lc
prac1ice;')"
10. Consists exclusivcli• of signs or of indica1ions that may serve in trade to designate 1hc
kind, <1uali1y,
<1uanri1y,
inrended purpose, value, geographical origin, lime or production
of the fl,~ods or rendering of 1hc services, or Olhcr charactcris1ics of 1he goods or
services;??
11. Consists of shapes rhar m:,y be necessirn1ed by technical factors or by 1he na1urc of 1he
goods themselves or factors 1hat affect tl1eir intrinsic value;''"
12. Consists of color alone, unless defined by a given form;''"
13. Is contrary 10 public order or mor:dity.'' 0
Meaning of "merely descriptive"
11
Tussin11 wn.sderived from the l.~tin "tussis"mc~ningcough. "Tussin"is mc1·clydcscriptlvc;
it is generic; it furnishes 10 the buyer no indication of tl1e origin of tl1e goods; it is open for
appropriation by anyone. It is barred from registration :,s trademark. While "1ussin" by itself cannot
1hus be used exclusively lo identify one's goods, it may properly become the subject of a tr:idemark
"bycombinaLionwith anoLhcrword or phra~c",e.g. "J\tussln","l-'crtussin."rn.l
§12.ll(d).
§123.l(c).
,,,
"'
"
1(0
§ 123.1(f).
§12.ll(g).
§12.llO>).
§123.l(i).
§12.llG),
§12.li(k).
§123.10)§123.l(m).
E1epha,AG. vs. Direcloror Pa1e111s
a11d\VestJnoocPhannaceutlcals,
Joe.,C.R. No. L·206J5,.11March1966.
18
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
The phrase "Ang tibayl" is never used "adjectively" to define or describe an object. One docs
not say, "J\ngtibaysapatos"or 11sapatos ang:tibay"to mean "durableshoes"; ratherwe say 11 matibay
na sap-atos"or "sapatosna matibay."'illus, the name "Ang:Tibay"is a fancifulor coined phraseand
not a descriptive tcnn, and therefore may be legally appropriated as a trademark or trade-name.""
The fact 1.hat the words "pale pilscn" arc part of Alli's trademark docs not constitute an
infringement of SMC's trademark: SA MTGUP.T.P1\LF PTLSP. , for "pale pilsen" are generic words
descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light bohemian beer with a
stmng hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the
Middle Ages.'"'
Doctrine of Secondary Meaning
This doctrine is to the effect that a word or phrase originally incapable of exclusive
appropria1jon with reference 10 an article on the market, because geographically or otherwise
descriptive, might ncvcrrheless have been used so long and so exclusively by one producer with
reference to his arriclc rhnt, in 1hat trade and m that branch of the purchasing public, the word or
phrase has come to mean rhnt the a,·ticle was his product.'"·
When rhe marks referred to in nos. 10, 11 and 12 has become disrinc1ive, because of its long,
continuous and exclusive use for S years, as used in connection with 1he applicant's goods or services
in commerce and in the mind of the public indicates a single source 10 consume,·s, it may be registered.
Thus, 1he 1.P.O. may accept as prima focie evidence 1ha1the mad; has become dis1incrivc, as used in
connection with the applicant's goods or services in commerce, proof of substantially exclusive and
continuous use thereof by the applicant· in commerce in the Philippines for five (5) years befo,·e rhc
date on which the cbim of dis1inc1ivencss is made.""
The nawrc of the broods to which the mark is applied will not constitute an obs111cleto
11
rcgis1r:1tio11.w
Well-Known Markg
A well-known mark is a mark which a competent :,u1hority of the Philippi,,es has designated
to be well-known internationaUy and in the Philipp,nes.
In determining whether a m:trk is well-known, :,ccount shall be taken of the knowledge of the
relevant sector of the pubLlc, raLher than LhepubLlc at large, including knowledge in the Philippines
which has been obtained as a result of the promotion of the m:irk. "'''
l{lt
l(IS
l{I(,
""
"·
""
Ann I...t\n,g vs. Toribio Tt:o<lom, G.lt No. I .-4822(i, 14 11(.-ccmbcr1942.
Asia Btewety,11\c.vs, C..outlof Appealsand San i\liguclCotporotion,G.R. No.
Aoa J_ Aog vs. Totibio TcoJoto, G.R. No. J..~48226,14 Decembet 1942,
10354.3,05 July 1993.
§123.2.
§123.3.
§12J.l(e).
19
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
Fredco Manufacturing Corporation vs.
President and Fellows of Harvard Colle,re (Harvard Univcrsi~)""
I~redco Manufacturing Corp. (Fr1.xlco)fikxl before the IPO a Petition for C:inccll:nionof RcgisLration
issued w l larvard Univcrsi1yfor 1hcmark "1lar\fard Vcri1nsShield Sy111bol.''
Frcdco clni,ns 1hatas early as 1982
the mark wns filrc-:l.Lly
useJ in the Philippines by it.~preJoccssor-in-inccresL 11:irvardUniver~ity,on 1he mher
h.1n<l.cl:limcd Lh:uLhcname :i.ndmark "I l:irv:1rd"w:1s:,<lop14,'(J
in 1639as the name of I larvard College of
hnJ been used in coininercc since IH72on<l
C:ombridgc,Massachuseu:s,Uoitcd .S1a1cl': of America. The 111.ark
\\r-:t.S
regi~1crcdio more th:in 50 coun1ries.
The Supreme Coo rt ruled that "I larv:mln is the trade n:,mc of the wmkl-famous I l;irv:wd UnivcNily,
and it i~olso a 1rndcmarkof I larvard U1livcrsi1y.
Un<lc.-Article 8 of 1he Pflrisf..onvc1uiun,M well ~s Scc1iun37
of Hcpublic J\c1 No, IM•, I lnrvnrd University is en1.i1lcdco prn1ec1ionin 1JlcPhilipl')ints ol i1s tradt nnmc
"11:wv:tr<l"
even wilhnu1 rc~istm1innor such lrndc n:,me in 1hc Philippines.This mc:,n;; 1h:u no t'Uuc:11ion:,I
entity in 1he Philippines cflnu;;e 1hctrade n:i.me"I lnrv:trd"wi1hout 1heconsent of I lnrvnrd University.Likewise,
no er11i1rin 1hc Philippinc.-q
can clnim, cxpress1)1 or impliedly1hrough 1hcuse of the n:-imcnnd mark "I lnrvarJ,"
1hill iu prn<luc1sor sen•iccs :trc mnhori:,,,cd,:1pprovcd, nr licensed by, or snurccd frnm, I l:1rwird Univcrsicy
wi1hnut 1hc l:,ucr's consent.
Tn be prmccit.x.lunder the 1wodircc1ivcsof I he Minis1ryorTrndc, an in1crn:uinnnllywcll-knnwn mark
or u;;ed in 1hc Philippines. All ch:u i" rct1uil\..xlis ch:11,he mark is well-known
need nm be rc~is1cr1...xl
irucrn:uionnlly:tnd in 1hc Philippines lor ic.lcn1icnl
01· !limil:irgoods, whc1her or no, 1hc 111:uk
i;; rcAis1crt-.J
or
uo;;c.'tl
in 1hc Philippine!!.
Seccion 123.l(c) of R.A. No. !1293now cntegmicallys1111es
tha1·"a mark which is considered
by Lhecompc1en1au1hori1yof 1hc l'hilippincs 10be well-known inlernaLionallyand in 1hc l'hilippincs,
whcchcr or not il is rcgisccred here," cnnnot be rch>isccredby another in Lhc Philippines. SecLion
12J.1(c)docs no1 re<1ui,·e
1ha11hewell-known ma,·k be used in commerce in the Philippines bu1only
1ha1i1be well-k,,own in 1he Philippi,,es.
TRADEMARK INFRINGEMENT
Any person who shall, wilhoul Lheconsenl of Lheowner of Lheregistered mark:
Use in commerce any reproduction, counlcl'fcit, copy, or colornble imitation of a
registered mark or the same container or a clominanl feature Lhereofin connection with
the sale, offering fur sale,dis1ribu1iun,advertisingof any goods or services including ocher
preparatory steps necessary to carry out the sale of any goods or services on or in
connccLion with which such use is Llkclyto cause confusion, or Locause misLakc,or Lo
clcccivc;111
2. Reproduce, counterfeit, copy or colorably imitate a registered mark or :1 dominant feature
thereof and apply such reproduction, counccrfcit, copy or colorable imitaLionLolabels,
I.
sign:;, prints, packages, wrapper:;, rcccptnclc:s or adv1.:rtiscmcnt:; intended to be used in
commerce upon or in connection with the sale, offering for s:1lc, di:;tribution, or
advertising of goods or services on or in connecLionwith which such use is Llkclyto cause
confusion, or to cause mistake. or to dcccivc. 112
11(1
Ill
'"
U.R.No.185917,01Junc2011.
§155.1.
§155.2,
20
OUTLINE IN INTIC:.LLECTlJALPR()lll!..RTYl.A\~ 1
i\'J'IY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
/\ crucial issue in any trademark infringement case is the Llkelihoodof confusion, mistake or
deceit as to the identity, source or origin of the goods or identity of the business as a consequence of
using a certain mark. Likelihood of confusion is admittedly a relative term, to be determined rigidly
according to the particular (anU sometimes peculiar) circumstances of
C}lch
c:-isc.Tn determining
likelihood of confusion, the court must consider:
a. The resemblance between the trademarks;
b. 'fhe similarity of the goods to which the trademarks arc attached;
c. 'fhe likely effect on the purchaser; and
d. The regim-anl's express or implied consent and other fair and equirnble considerations.'
To
I.
2.
3.
11
establish trademark infringement, the following clements must be shown:
The validity of rhe mark;
The plaintiffs ownership of the mark; and
The use of the mark or its colorable imitJ11ionby 1healleged infringer resuil:sin "likelihood
of con fu~ion.11
Of these, it is 1he clement of likelihood of confusion rhnt is 1he gravamen of rrademark
infringement. Two types of confusion arise from 1he use of similar or colorable imitation marks,
namely, confusion of goods (product confusion) and confusion of business (source or origin
confusion). While Lherc is confusion of goods when 1hc products arc compcLini;, confusion of
business exists when 1he products arc non-competing but rcla1cd enough IO produce confusion or
a ffili:uion.1"
In o,·der to bring a civil action fm infringemen1, iris nor requi,·ed thnr there is an acwal sale of
1he goods o,· services using the infrini;ing maicrial. 111 lnfringemen1 takes place upon 1he me,·c use o,·
reproduclion of 1hc registered mark.
No at'licle of imported merchandise which shall copy or simulate 1he name of any domestic
proclucl, or manufacwrer, or clenlcr, or which shall copy or simulate a mnrk registcr~'Clin accordance
wi1h 1he pt'ovisions of 1his /\ct, or shall b1.~•·a mark or 1mde name calcula1ed 10 induce the public to
believe that the anicle is m:111ufac1u,·ed
in the Philippines, or that it is manufactured in any foreign
country or locality other lhan the counlry or locality where it is in facl manufacLUrcd,shall be admitted
to enl ry nt :tny customhouse of the Philippines. 111'
/\ mere dislributor and not the owner cannot assert any protccuon from trademark
infringement as it had no ,·ight in the first pbce to the registration of the disputed trademarks. 117
Similarity Between Marks
The likelihood of confusion is a relative concept; to be determined only according to the
particular and sometime:,;peculiar circum:,;tanccs
of each case. .ln trademark ca:,;c5,
even more than in
any other Llugacion,precedent must be studied in Llghtof the facts of the particular case. 'l11c wisdom
..
'"
,
"'
II(,
'"
M;glll)' Co,porn,;on vs. lo. & J. Gallo Winery, G.R. No. I 54342, 14July 2004,
1\lcDom1ld'sCorpormion:ind Mc{j<..'Orgc
Food lndt1strics.Inc..vs. LC. Big 1\fak Burger, Inc., ct :11.,{j.lt No.
143993,I K 1\ugusi 2004.
§155.2.
§1(,6.
SuperiorCommercialEnterprises,Inc. vs. Ktmn:m EntcrpriM:sLtd. and SportsConcept& Distrib\ltor, Inc., G.lt
No. 1(,9974,20 J\p,;i 20IO.
21
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
of the likelihood of confusion ccsc lies in iL~rccognicion chat each trademark infringement case
presents its own unique set of facts.
Two (2) types of confusion
1. Confuajon of Goods
The ordinarily prudent purchaser would be induced to
purchase one product in the belief that he waspurchasing the other.
2. Confusion of Origin (Confusion of Business) - 'f'he goods of the parties arc different.
the defendant's product is such as might reasonably be assumed to originate from the
plaintiff, and the public would then be deceived either into 1hat belief or into the belief
that there is some connection between the plaintiff and defendant which. in fact. docs not
exist.
TESTS TO DETERMINE TRADEMARK INFRINGEMENT
Qoroioaoc;y
Test
Infringement is determined by 1hc 1.cstor "dominancy" m1hcr 1han by differences or varia1ions
in rhe details of one trademark anti of ano1her. Similari1yin size. fonn and color, while relevant is not
conclusive. If the compe1ing 1radcmark con1ains the main or csscniial or dominant foaturcs of ano1hcr.
anti conrusion is likcli· IO result. inrringemcn1 takes place."'
The dominancy 1es1considers the dominan1 rcniures in the compc1ing marks in determining
whc1he,· 1hey arc confosingly similar. Under rhc tlominancy 1es1,cour1s give g,-eatcr weight 1·0the
similari1yof 1he appearnnce or the produc1 arising from 1he :1dopiion of 1he dominani fca1ures of 1he
registered mark. disregarding minor differences. Courts will consider more the aural and visual
impressions creawd by the marks in the public mind. giving little weight to factors like prices. quality,
sales outlets and ma,·ket segments. 11•1
Caseswhere
D91ninnncy Test
wasapplied
121
'
PerrisAgricult11a1I
Co.. Inc,,vs, NorvyAbyndaog
("NS D-10 l'I.US" vs. "D-10 80 WI'")
Comp-:,rin!!,lkrris' m:Hk "D-10 8(1 WP" with l\b)'l'IJnng's m:trk "NS D-ICt PLUS," r,s :1pp~uing on
their rcl!opc..'Clivc
p:1ck:1gf...'S,
one <::1nno1but no1icc thlll bu1h have :'I common component which is "D-10." ()11
lkrris' packaw.:,the "D-10" is written with a bigger fo111Lhanthe "KOWP." 1\drniw..--Jly,1J1e "D-10" is Lhc
domin1mt fc::1turcof the ni:trk. '11tc "D-1 O," being nt lhc beginning of 1hc m:1rk,is whnl i~most remembered or
it. Ahhuugh it nppcnrs in lh:rris' ccrtific:uc of' rc..-gi.,Unlion
in 1hc same l<mt si1.e:,s the "80 WP," its Jomin:mcy
in the "D-10 80 WP" mark stmJs since the difference in 1hc h>nn docs not :1hcrits .._Ji,,i1inctivc
ch:1rnc1c-r.
Applying the Domin:inc)' Test, the Court finds Aby:idang's "NS D-10 Pl.US" is similnr lO ncrris' "D10 KO\'VP" :mt.Ithnl contusion or mismkc is more likely co 0<:ct1r.Um.lcni:,bl)',both mnrks pertain co the same
l)'pc of goods - fungicidewith 80% Manco~.ebas an act..ivei.ngrcclicm,lll<lm:cd for the same group of fn.1iu,
crops, vegeroblcs,a,1clotname,Halplams, usi.ngthe same clusagea,1d ma,1nerof applicatioo.'11leyalso belon,.;
.,,
.,,
Asia Btewety,Inc. vs. C..out·1
of Appealsand San i\liguclC..orporation,G.R. No. 103543,05 July 1993.
~-lcDonnld's Corpormion and Mc(j<..-orgcFood Industries, Inc. vs. I..C. Big Mnk lh1rger, Inc., cl al., G.ll. Nu .
143993, 18 Aub'\ISI2004.
G.R. No, ·183404, 13 Occobc, 201CJ.
22
OUTLINE IN IN'J'IC:.LLECTlJAL
PRC)llERTY]..A\~1
i\rlY. CiARK EDWARD R. U\TIC:O,J.D.,R.N.
to che same cfassific:-ition
of goods under ll.t\. No. R2?3. Both depictions of "D· 1O,"as found in both marks,
arc similar in size, such i.J,a11hjsportion is what catches the C)re of the purch..1ser.Undeniably, 1J,eJjkelihoodor
co,1fusionis present.
Societe Des Produits Ne~tle, S.A.vs. Martin T. Dy, Jr.'"
("NAN" vs. "NANNY")
Applying 1hedomioaocy 1es1,the C:ourt finds 1hmNANNY is confusingly similar LO NAN. NAN is
the prevalent rea1ureor Nestle's line of iofrm1powdered milk produc1s. I1.i-;wriucn in bold leners nnd u-;eJ in
all produc1s.'l11eline con,.isu of PIUt~NAN,N1\N~II.A., NAN•I, and N1\N~2.Clearly,NANNY contains the
p•·ev:ilcncfcatorc NAN. 'l11e firs, three leuers of NANNY :weexactly 1hes.:tme:,~the letters nf N,\N. When
NAN and NANNY nre proouuncc<l,1hcaurnl cfft.">CI
is confusi11gly
similar. NANNY nnd NAN have the snmc
clns-;i1ica1ion,
<le~criptivcproperties nnd physical attributes. Oo1harc classified under f.lns,; <•,bu1h me milk
pl'nduccs,:md bo1h :ire in powder form. Also, N1\NNY :-indNt\N arc Ji,.ph't)'Cdin the s:,me scc1innof swrcs
che milk sc.-c1ion.
Skcchcrs,U.S.A.,Inc.vs, Inter PacificIndustrialTradingCorp.,ccal."'
("S" rubber shoes vs. "Siron~" rubber shoes)
"S" br Pl'l'C in i,~ "Stmn~"
1\pplyin~chc Dnminnncr Tci;1.chc Crmr1line.I;;1hacthe ui;chf the i;1yli1.t'U
n1bbcr shoes infrinAe"on che mark alrendy regh.tcrcd by Ske1cherwi1h the IPO. \'(fhilcit j., undisputed thr11
Sketcher's s1yli1.,-d
"S" h, wi1hinan oval dcsiHn,io 1hcCouri't-omind, 1hcdominnn1 feature or 1he 1r:icJemark
is
chc i;1ylixcd"'S," :1.si1 i~ p1'ccisd)1 1hel<ril)'lwcd
"S" which c:ucht'<I1heeye of chc purcha,.c:1•,
Thus, even if Pl'l'C
ditl no1 u:-.enn ov:,Idc:-.iJJ,n,
che mel'e fac1th:11i1 u:-.cdI he snmc styliYcd"S", che snme bcinJJ,1he d,1111in:1111
fe:1.1urc
of Skcccher'sI ra.Jcmark,alrc:idr cou~ciwtcsinfrinAemcntunder che Domiminc)'Tcsl.
PITC tfo.lnot simply u;;c 1he lc11er"S." bu1 i1 appcMll 1hi1.1
bns<:dtu, 1hc fo111 aod 1he siYcof 1he
lc:11cl'if"lk,
1hesryliY<:d
"S" utili1.c:dby PITC is 1hcvery snmc Sl)1li:t.lxl"S" u;;l.'tJby Ske1cher;a i;tyliz<:d
"S" which
is u11ii.1uc
~ind di:uin~uishct,,Sk<:ccher'slr:tdcmnrk. lndubirnbly, 1hc llkclihoc.M.1
of confusinn it,,prcscnL :1.s
by ~kccchc:ror thn1PIT(;'t\
purchascnitwill:1.M1ociiue
the PIT(:'s use or 1hc"')'li1.l.-d
"S" n~hn,1iog bl'Cllnu1hoti1.c.-d
p1·c1<.l11c1
is cc,nf"ll'Cl<..-d
wi1hSkc1chcr'sbut--inct--s,
Societe Des Produits Nesti¢. S.A.and Nesti¢ Philippines. Inc, vs.
Courtor Appeals andCFCCorporation 11l
('Mi\STBI\ I\Oi\S'I"' :on,1"Mi\S'l'lm l}LhND" V>, "l'LJ\ VOi\ M1\STEI\")
Cf+'CCorf)lmlliun lilt."tlnn npplicmionfor the rl.-gi'<1rn1ion
or 1hc1r-:11Jc1r1:u-k
"l•I.AV()R ~IAS'l'lm" for
in-.uuu coffee. Socie1e Dcb Procluilb Nesth.~filed :m u1wcrilit"llNotice of Oppo:silion, clnlmlng 1h:u the
trnclemnrkof CFC Curp.'s product i~ "cunfu~inHlrsimLl:lf10 iL~trnclcmark~for coliCe and coffee cxtrnc1s.,10
wit: ~li\STl',ll ROAST :ind MAS'l'lm Bl.l~ND." Ne.;IICcl:iimedth:1tthc u~c. i( :u1)', by Cl,.Co(che 1rnJem:ark
1-'LA
VOR M.J\STBRand i1s.l'cgistrnLionwould likcl) cause confosion in the trnde: ol' clt-ct'1vcpurcha~erband
woulcJfalself :sUAACSCto the purchnsinJ,;public a coi111ccLion
in the businei;sof NestlC,as 1..hcclomi11an1
word
prcsenl in the 1hn..'C (3) 1nu.lcm:1rks
i.; "MJ\S~nm"; or 1h:1t1.hcgoods of CFC might be mismken :,.; h:1ving
orig.in:lte,
.."f..tfmm the hitter.
1
If the ordlnat}'purchaser i, "undisccrnjngl)1 r:tsh" in bu)'int i;uchcommon and inexpensivehousehold
prc1<.luccs
as in~t:mtcoffee, and would therefore be "let-sinclined to closclr exmnine~pccific<let1ilsof similnrities
and dissimilnrities"bc1weenthe two competing products, then it W0\1ldbe lcss likclyfor the ordin:iry purchascr
to nut.icethat CFC's traden'larkFl..1\VOR MASTER carries the colori;orange and rnucha while l11a1
of Nei;Lle'i;
uses red nnd brown. The npplication of the totnlity or holistic te~t is improper since the ordin:1rypurchaser
"'
"'
"'
CJ.It No. 172276,08 ""b"'" 2010.
U.R. No. 164321,23 March 2011.
G.R. No. ·1·12012,
04 1\p,il 200·1.
OUTLINE IN INTIC:.LLECTlJAL
PR()lll!..RTY]..A\~1
i\'i'IY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
23
would not be inclined to notice the sp(..-cificfc:uores. similarities or dissimilarities, considering that the prodoct
is an iocxpc11sivcand coirunon household itc1n.
I lcncc, in applying the dominant)' test, it is sufficienll)' esrnblishcd that the word MASTI m is the
dominant fcatore of opposer's mark. The word t\l ASTHR is printed :tcrnss the middle portion of lhe label in
bold lcucrs alinosc 1:wiceLhe size of the prin1ed word ROAST. Furlller, 1hc word MASTER has always been
given emphasis in the TV :1nd radio commercials and nlher :tdvcrtisemcnt.s m:1<lein promoting the prodoct.
Thi-. can be gle:1ne<lfrom lhe f:tcl that Robert J:1worski and Auy. Ric Puno Jr .., l-he pcrsonalitie-. eng,1gtxl 10
pro1no1e Lhe producL, ore given 1hc 1itles Mas1er of Lhe Game aoJ M11.s1er
of Lhe Tftlk Show, respec1ively. In
due 1ime, because of these ftLh1er1isingschemes 1hc mioJ of 1Jlebuying public hnJ come 10 learn 1t1 :,~socin1e
the wol'J {\IASTHR with the opposer's gocxk
McDonald's Comoration and McGcorge Food Industries, Inc, vs.
L.C.Bjg MakBurger, Inc., et al.'"
("Ill(; Mi\f." vs. "Ill(; MJ\K'1
McDomild's nwns 1hc "Bi~ Mnc" m:1rk for its "double-decker h:imburgcr snndwich. H:tscd on this
I lnmc R1..-gi-.1rntion,
McOon.llJ's applied for 1hc rc~i:itra1ion of 1he srunc m:uk in 1he PHP'IT (nnw IPO).
PBPTI' allowed registrn1ion of 1hc "Big Mac. On 1hc ocher hnnd, I..C. Big Mak BurJ,;er, Inc, is n dome~tic
corpnra1ion which oi,crnccs fos1-fnod nuclc1:1:111t.l
snack vans in Me1ro {\lanil.l :111tlnc·arb)' pmvinccs. 11npplicd
1he regi:,.trn110n ,he "Bi~ M:1k" m:1rk for i1iih.lmburv.cr ii:intlwiches, which was opposed
wi1h 1hc PBJYIT
b)' McDonald',.
ro,
or
1\1,pl)1inv. 1he t.lominanC)'1e~1.I ..C. Biv.~h1k BurHcr's u:-.efl( 1hc "Bi~ Mak" mnrk rc,uhsi in likdihuod
hf confu:ii1,n, Aurnll)' 1hc 1wo mn,ksi arc 1hc !l.:1mc,with 1hc firii1wo,·t.lofbn1h m:1rk-iphone1ic:1lly,he snmc. :ind
1hc :,.ecoud word ofbo1h mnrks nb.o phonc1ic:1llr 1he !1-:une.Vbw:1lly,chc 1wo m:1rk:1have bo1h 1wo won.I:,.nud
:ii:<lc.:uerii,with 1he t'irst wo,d ofbo1h m:ark-ih:1vinJ,1.
1hc !l.:1melc.:1teN1111d
1hc :,.ecrnhlword h:1vinA,he sr11nct'iri11
1wo lei ICf:,.,
125
AsiaBreweey,
Inc,vs, CourtofAppeal!,andSnnMiguelCornorA1ioo
('Ill ill.It Pi\1.1'. l'I 1.SI\N"' v,. '"S1\N ~!IC Ul'.I. l'i\ I.I'. Pl I $1 iN')
Aiii:, Brewery Inc.
On 15 September IIJKli,S:,n ~ligud Cc,rpum1jon (Srv1C)fikxl :, cc,mpl:iint n~Li1·1s1
1
s "BIH-:it PA 1.1,:Pl I $1:.N,.
(AUi) fur ir,rringcrne111of trndcm:1rk nnd m,fi1ircomp,c1ition on :,ccou,11of the l:111er
or "BIU-:it Ni\ Bl'.lm" J')toducLwhich ha,i been comr,c1ir1Hwi1h Sf\lC':,. "SAN rv11(;U1~1.PAI.I•: PII.Sl~N" ic,r
:, sh:,re of lhe local beer mnrkct...'l'l1c 1mlin d1rust of SMC'ii compl:,inl, if not infrin>;emcnt of iL-ilr:u.lem~rk, is
unr.1ir compc1i1ion :1ri~ingfrom 1he :1llegt'<.II)'
"confosin~ simifaritr" in lhe gcner:11:,ppc,.:nriu,ceor 1rnJe dre;i~ or
AHl's BF.Im PAJ.E 1'11.:·W.Nbeside St\lC'~SAN 1\1I( ;UF.1. PAI.I•: PII .Sl•:N.St\lC clnim;i thnc lhc "trnde drcs-i"
of BEEll PJ\l.l.i PIL"il!N i-i "confusingly simil:,r" to its SAN MIGUl-:L P1\LE PILSEN bccnusc bo1h nrc
bcmlcd in 320 ml. steinie 1ypc. :1mbcr-c:olo1·edboulc-i with white rectangular lr1bcls.'l'hc trinl coun hclJ 1h:u no
trndem:1rk in(,·ingement h:,~ bc..'t:ncummi1 lc..'<.I
by J\ Iii, U(lUn r1ppe:1Ib)' SMC, lhi:,.decision w:,~ re\'ersed by the
Coul'l or Appeal:; on 30 Scp1cmbcr IIJtJI.
The Supreme C.:Ourlrevcr;(..,J 1hc Coul't or J\ppc:als :mJ rein-.1:111..xl
the tk-ci01ionof the tri:,1 courl,
holding 1.ha1J\BI h:1s nci1hcr in(ring(..,JSMC's 1rndcmnrk nor commiucd unrnir compcti1ion \\~lh 1hc l:iuer's
SJ\N MIGUEL 1'1\U\ Pll-~EN product.
Note thnl the tlominnnt (catun.: or SMC's trndcm:1rk is the n:ime or the product: SAN MIGUl•:I.
PALE PJU;EN, wriue,1 in white Got.hie letters with elabotacc setifs al the bcJ.;i.nni,1g
and end of the lc11crs"S"
and "M .. un an amber backgtound across the uppet pottio,1 of the rccLangular desit,;n, 011 the other hn11d1 the
dominant fcnturc of A Bi's trademark is the n:1mc: Bl•:ER PAI .E Pll ..Sl·'.N,with the word "Heer" written in large
amber lenets, 1ntger th.-111
any of t.11eleucts found ill tl1c SMC Ltbcl. ·n\e trial coutt pctceplively observed tl1.1t
the wotd ..BEER" does 1\0l appear ill S~ICs t.rnJei-nark,just as the wol'ds "SAN MIGUEL" do 1101appear in
.,.
"'
U.R. No. 143993, 18 i\ub''"' 2004.
G.R. No. 'I43993, I K 1\ugust 2004.
OUTLINE IN INTIC:.LLECTlJAL
PR()lll!..RTY]...A\~1
i\'i'IY. f.JARK EDWARD R. U\TIC:O,J.D., R.N.
24
A Bi's tradem:irk. I lcnce. there is absolutely no similarity in the domimint fc;ituresof both trademarks. Neither
ln sound, spellingor appearance can BEER PALE Pll..~EN be sa;ldto be confusingl)'similar 10SAN tvtlGUEL
1'1\LBPIU)E:N, Moreover, there is a subsmn1jalprice differe11cebc1wcenBEE:RPALI~P1Lc;E.N(curren1lyat
1'4.25 per bottle) and SAN ~IIGUl'.1, PAI.le I'll.SEN (currently ot 1'7.00 per bottle). One whn pay, onl)' 1'4.25
for :1botde of beer c:innol expec1tn receive S:m ri.,tiguel
Pale Pilsen from the:storekeeper or bartender. Nn one:
who purchases HEER PALE Pll-~EN can possibly be deceived thnLit is SAN MIGUEL PALE 1'11-~EN.
\X'hile its nmm PAl.n PII.SEN :u.lmittcdlycompetes wilh the l:luer in 1hc:open market. lhat
compc1i1iuni.sneither unfoir nor frnudule1u.The words 1'p1le pil.sen''may 11u1.
be appropriated by SMC.for i1s
exclusiveu'le evcl\ if they nre part of its registered 1m<lcmnrk:
SAN MIGUHL PALE. PII..SHN,flny more 1ha1l
such dc:scripliveword" :1~"cvaporntt-xtmilk," "1om:110kc:1chup,""cl11..-Jd:1r
chcc:~e,""corn Aakc:~"wJ "conking
oil" innr be appropriated b)' an)' sil\glcmanufocturer of 1J,c:scfood producLs,for l\u u1.herrcMon 1.h:,n1.h:11
he
\\~S the fir1'lto u'le them in his rc.'gl'l1ercd
trademark. In MMso l lcr,nnnos,S.A. \'S. Direc1orof Pa1eocs,94 Phil.
136, 139 (1951),ic\\':IShclJ 1h:tca dealer in shnes canno1regi:,;1cr
"l.c:athc:rShoes" :1~hi:,;1mdcm;ukb1..-c:1usc
thai
woulJ be:mcrcl)rdescrip1iveand i1wnuld be unju:,;110deprive 01her dealers in lc:uhcr shncs nf 1hcrip.httn use
the :--:i.me
wonls wi1h reference 10 their merchnndisc. No one may :ippl'oprintcgeneric or dcscrip1ivewords,
Thc)1 beluni,;10chc public <lomail\,
12
UPCPhilinpincs,
Inc, vs,Boccio
Fic:uaManufacturing
Cornorntion
(i
('PAP1\" ll:tn.inaC.:11sup
vs. "PAPA BOY & DHVIC.I~"l.cchon Sauce)
narrio l-'ies1:1
Man1.111lc1ul'ing
f.orpur:11ionfiled applic:i.1innfor 1hcmark "P,\P,\ BOY & Ol~Vlf.E"
for f;(H)dsunJcr Clns;;30, specilic:i.llyfor lechon snucc. Nu1ri.Asi:1oppo;;cd 1heapplicnLion.contcndinH 1h:11
..P~1p.1
Bfly& Device" i~ confu~ingl)'i,,imilar\\,;lh i1s "Popa" m:1rk:,;,
coniiidcring 1h:11i1s kl-1chupproduc1 nncl
Barrifl Fici11n's
k-chnn 1'fluccproduc1 ore rcln,cd nrticlcs 1hi11fullunder ,he ii:1meCll1:,,ii
30.
J\pplyinK1heUomin:u1cytest, ii i;;found th:u 1heword "Popa" is the dmninaru fenlureof UFC's mrirk
"Paf'Y.lKc1i-i,mp."Con1Niry111llMrio Fics111':,,
contention, "Kc1snr:1p"c1111001
be 1he domin:1n1rc,uurc of 1he
mark a;;ii i1,, merelydescriptive of 1hcproduct Furthermore, it i;;1he"P:,pa" m:,rk th:u h:1i-been in commcrci:11
u;;c for dec:,dei-:111tl
h:1i-e:,.1~1bli;;hed
:1w:1rcncsii
nnd HooJwill :11no1·lH
consumers. Also, Lheword "P:,p:," i~ chc
domin:uu reiuurc n( Unrrio Fics111'i"Pnr:,aBo)' & Oc\1ice" mritk iiubjcc1or 1hcilf11'1licntion,
:,ouch1h:11
1heword
"Pap;!" i;;written on lop of nn<lbefore 1hcocher worJ;; :,ouchLh:uii is the fir'il worJ/ li>;ure1h;1tc:uchcs the
eres. The p;Lrluf lhrriu Fies1:,'sm:1rkwhich app<..":lrS
pmmirlcmly 10 1hecreii nnclc:u'!iii-che phrnsc "Papa lloy"
aot.11ha1i~ wh:1t:, purchi1scror U:,rrio Fic~1a'i1,
pwducc woulJ immcdi:uclr rccnll,1'lotthe Sl'nilini,;
hog in 1he
logo.
Since U1-<Cs
produce, ketchup, iiitLliioa household pro<luclfounJ on Lhcs:imc grocery :,isle,ln :,;imiJar
rv.,cbgini,;,the public could think 1h:11
U I•C hnd c:<pnndedit~rrmluc1 rnix.co include lcchoo Si1uce,rind th:u the
..l';1rv.1
Bur" lcchon !WUCe
i'l 110W p;irt or 1he"Pnpn" frunilrof S:'IUC:CS,
H0Hs1ic
TestorTornljty
Test
Confusing similarity is to be determined on the b:tsis of visual, :tumI, connomtive comparisons
and ovemll impressions engendered by the marks in controversy as they arc encountered in the
marketplace.
'l'o determine whether a trodcmark has been infringed, we must consider the mark as a whole
and not as dissected. 1f the buyer is deceived, it is attributable to the marks as a totality, not usually to
any part of it. 'I'hc court therefore should be guided by its first impression, for the buyer act.~quickly
"''
G.R. No. '198889,20 January WIG.
OUTLINE IN INTIC:.LLECTlJAL
PR()lll!..RTY]..A\~1
ArlY. CIARK EDWARD fl. U\TIC:O,J.D.,R.N.
25
and is governed by a casual glance, the value of which may be dissipated as soon as the court assumed
to analyze carefully the respective features of the mark. ' 17
The dominancy test only relics on visual comparisons between two trademarks whereas the
totality or holistic test relics not only on the vism1lbut also on the aural and connotative comparisons
and overall impressions between the two tradcmarks. 12g
The trndcmarks in their entirety as they appear in their respective labels arc considered in
relation to the goods 1:0 which they arc auachcd. The discerning ei•c of the observer must focus not
only on the predominant words but also on the other features appearing in both labels in order that
he may draw his conclusion whether one is confusingly similar to the orher. '2''
Cases where Holistic Test wRs npplicd
EmeraldGarmentManufacturingCo,norationvs.CourtofAppeals.ct al."'
("STYJ.JSTIC.~Ill. I.Im" vs. "1.lcl!")
11,1),I .cc Co. Inc, :1 forci~ncorporn110n,lilcJ :~pcri1ion'" c~1nccl1hcn:git-itr:uiun
()Ir chc 1rndcm:uk
\,Ol'f'l, 11.D.Lee a~M:rl~
1h:u
"STYLISTIC.i\llt I.HI•:"issued in 1hcnnmc of Hmcr:1l<l
G:1rmc111
1\fonuinc1uring
l~mcrnld'scrndcmnrk1cru,h,IOmi~lc:,cJ:rnd confu;;c 1hcpublic nnd 1huw;
conl'odtutcsnn in(rinHcmcn1of i1sown
mark. since 1hcc.lominnnlfcarnrc1hel'l'inj;; chcwol'd"I ,I•:It" I•:mcrnldcomends 1h:ui,~ 1l'lulcmlll'k"STYI ,IS'l'I(:
MR. UH•:" is cn1ircl)1 tliffrrcm from :rnd no, confusin~I)'similnt10 11,1),Lee's "1.1•:E"1r,adcmark.
The holis1ic1c.~1
mancJn1c!oi
chat 1heemin.:1yof 1hcm:lfk~in quescionmust be con~idercdin de1erminin1-1,
confo~ing:-imili1tl1y.
1\pplyingchc fhrcwiini,;.l·'.metnld's"S'l'YI.IS'l'J(:Mlt 1,1,:1\ i:-nrn con(u~ingl)'similn,·10
I I.I). I A.:e's
"I .1\11."
uadc:,nntk.ltmctnld's ctndc:,nntkis 1hcwhole "S'l'YI.IS'l'ICMlt 1,1•:lt" 1\lchou~hon i,.. ll1bcl
chc word "I.El~" is rromincn1, chc Lradcm:u·kshouhJ be con~ide1·ed:1s n whole nnd not piecemc:,I.The
di"l'oimil:u·i1ics
bel\vecn 1he cwo marks become C0t'l!\(lic11011s
in ,1iew of 1he foll11wi11!,t
v:1riabll.!l\,
Fitl'ot,1he
n, b:1t Me, in 1hc ,n:1i11,
vMioul'okinds of jciu1s.'111c~cMC no1 rour otdinnl'y
p,·c1<.l11ccs
invol,1ed in 1he C{1sc
hou11cholditem~ like c:,1:,,up
01' so:,p which :u·e of mi,·1im,LI
co:,,t.M:mng p:int:,, or je;u1.;:Lre1101
1 :,,ny:-:tucc
incxpcn:;i,·c.Acc1)rcJinJJ,I)',
1hcc11sunl
buyer i:;prcdi~pu~4..'ll
u, be more cnuti,)u:;:tn<ldi~crimi11:,1ing
in n1,dwc,ulcl
p,·eforIO ,-null(>Ve,·
hi!\purchnse.Confusioi1~inddeccptim1,1hen,is lci:slikd)1, Second, likehi~beer. the ~1ve1·:1~c
1 buys hi< jcnn!\b)1 br:-ml. I le t.lm:
I~lipinocono;u,ncrgene~1ll)
.. 1101:1:,,k
1hc!.1{1lcs
cletk Co,·generic jc:1n<but for,
s:iy,:1 Levi:,,.Guc:;s,\'(/rnu>;lcl'
''" even :m J\rmnni. I le i:;, 1..hereforc.
more or less knowlecl14e"blc
:mt.Jfomili:ir
wi1h his pl'eferencc {111d
will r101e:1Sil)'be diMmCL.t..-...1.
1•i11nllr,
rnore credit should be ~ivc11co 1hc ordinnl')1
purch,1scrwho is.1101the "cornplecclyUl1\\~1r)'
conl'oumcr"bu1is the 11ordi11fll'il)'
intell1gen1bu)·cr" conl'oiJcring
the l)'pe or pl'o<lucli1wolveJ.
0
'
'"
.,.
Del Monte Cotporal.io11 and Philippine Packing Cotpomtion. vs, Coul't or 1\ppeals nod Sunshine Sauce
i\lanufacturing Industries, G,R, No, L-7K325,25 Jaouaty 1990.
5ocictc Des Produics NcstlC, S.J\. :ind NcsdC Philippine:;, Inc. vs. Co\1rt of Appeals and CFC Corpormion, G.R.
No. 112012, IJ4 /\p,;i 2001.
Driscol rvtyersC.ompa1\)'vs. Director or P:uc11tsand United 1\mcric:t1\Pharmaccul.icals, Inc., G .R. No, L,.21587, 19
i\l:1)' I9(i(i.See a/Jv.Fniit of the 1..oom,Inc. vs. Court of J\ppc:1ls:ind Gcncn1I G:1m1cntsCorpon1tion. (j ll No. I.•
32747, 29 November 1984.
G.R. No. '!00098, 29 December I \l'JS.
26
OUTLINE IN INTIC:.LLEC'TlJAL
PR()lll!..RTY]..A\~1
i\rlY. f.JARK EDWARD R. U\TIC:O,J.D., R.N.
Mighty Corporation and 1.,.,.Campana Fabrica de Tabaco, Inc. vs.
E. & T.Winery and the Andresons Group, Inc,'"
("GALLO" for cigarenes vs, "GALLO" for wines)
Might)' C.orpor:uion is engnged in Lhc cultiv:uion, innnufacture, dis1ributio,1 and snle of tobacco
rwoduc1s for which 1hcy hnvc been using 1he GALLO trademark for Lheircignrcu.cs. E..& J, Gt'tllo sued i\liR.hty
Corpnr:uion for tr;1<lcm.1rk
infringement and onfoir compccicinn,when one of their cmplO)'OCS
snw the Gallo
cignrcttcs displayed 1ogc1her wi1h Gallo wines irl a supcnnnrkec.
Applying the holistic test, wines anJ cigarcncs nrc: noc identical or cnmpcting producl's, neither Jo
thC)' belong tn the s:tmc class of goods. Prnduct cla,;;sific:nionalone cannot serve :1s the decisive factor 10
de1e:rminei( wines and ciguents MC related goods. Emphasis should be on 1he similnrity of 1hc pro<luc1s
involved on<l001 on the :1rhi1ra1•)1
cla.:;sificntionor gc1leruldescrip1ionof 1heirproperties or charac1cri.:;1ics.
The
mere face tha1 one pcrsnn hns adnpced and used :1 particular n~1dcmal'kfor his JJ,oocbdocs nm prevent 1he
ad111)1i1,n
nnd u-.cof 1hcsame trndemnrk b) 101hcr: on ar1.iclesof n difforcnt <lcscription,1'herc is no I radcmal'k
infringcmen1if 1hcpublic docs nm cxpc.-c1
1hephlin1.iff10mnke or sell 1hcsnme cln-.sof J,;110ds
a,;ithose ,nnde
m snld b)' lhc dcfcncfam.
PhiliDMorris,Inc.,ct ot.Yfi,FortuneTobaccoCocnoration
"2
("M1\RI<VII.. :ind "MARKTHN" vs... ~,11\HK")
Philip Morris, Inc. is 1hcrcJ,;is1credowner of 1hclrn<.kmark"MJ\HK VII" for cig.1rc11cs.
Two of its
s11bsidi:1ries
nre the reRis1crcdowner of lhc 1r:uJcm:1rkc;,
"M1\HK Tl~N" :md "MAHK." On Lhe01her hand,
l·or1unc Tobacco manufocn.11'eli
nnd 11dlsci~a•·eue,;iuliing the cradcmnrk "r-.,11\RI(,"Philip ~lorris filed a
C:mnploimfor Infriogcmcn1r.( Tt.·lllc1-Yu1rk
anti D:1,-Yrni,;cli
:1g~1iOlil
For1,1r1c
:ll'JJ,Uing
I ha, 1he loncr's use of 1he
crndcmnrk"MAHK" is likely co cnusc confusion or would deceive purchaser:,,nn.J the public in Rcncral iuw
bu)1ing 1hc.:M:
produc1.iuoder chc imprcsliiooi,nd mili1nkcnbelief 1hntthey arc buring Philip's produc1li,
Tbt·holi,1i,1n1 s·u1oils
a com•iilrra1ion
of 1hr1:·01io·o·
of dw morksas a11nlitsl
1H1lwnnxluGt,
in1kwnnini1w
rnn(usinv
similari1y,
In light of the r,eculinrit)'(If I hiitci,to-e.
ioclutlioi1hrhbd,tnnsl11ack01•inv
of con(u~i(lf'I,Af1ercrnnpnrinH1he 1mJcm:1rk;i
iovolved in 1hcircn,ircl)1 ns 1hcyt1p1')c~1r
chcrc i~ 110 l1kdihoc14,I
01, d,e products, the :i1riki1,g
tli1\:,.imil:,rit:ics
,,re ~iw·1ificn1,1
enn~h 10 w:,n, n1,ypur-ch:,~crLh:,1t111cis different
from the u1hcr. Indeed, nlLhuugh 1hc perceived offcnd111H
word "MARK'' is itself prumincnl in Philip':,,
crndc1n:irlc~
"~11\llK VI I" :11,J"MAHK'1'11.N." 1hecmire 1'n:ltkiogsys1cmithouldbe coni;,iJcrc..,J
ns ti whole t,nJ
1101 d1:,,SeCll'll,
bc..-cnu:,,c
:, 4Ji,;iccming
l')'C would focus 1101
unl)1 m'I 1hc11redmnin:1n1
word bu1:,l:,,i,on 1hc01her
features appc-:,rinHin 1hc 1:,bch,.Only then w1mklM.1chtlisccming observer dmw hi~ conch.1liionwhcLher,,ne
m:,rk would be confm•inglysimilar to Lheocher and wheLheror 11,,1suflicient difference~cxisl<..'tl
bc1wcenLhe
m:u·ks.
Doctrine of Related Goods/Services
Good~ arc related when the)' belong to the same class or have the same descriptive properties;
when they possess the same physical attributes or essential characteristics with reference ti) their form,
composition, textrnc or qua~ty. 'I'hc)' ma)' also be related because they serve the same purpose or arc
sold in grocery stores."' •·1
'hus:
I.
'"
'"
'"
Goods nre rclntcd when they belong to the snmc class or have the same descriptive
properties or physical attributes, or they serve the same purpose or now through the same
channel of trade.
G.R. No. 154342, 14 Julr 2004.
G.R. No. 158589, 27 June 2006.
1~ssoSt:mJnrd l·A1stcr,
Inc. vs. Court of Appeals :md Unit<..'tl
Cigart:UeCorporncion,G.R. No.1,-29971, 31 August
1982; Canon Kabushiki Kaisha vs. C<mrt of Appeals :md NSR Rubber C<,rporation,G.R. No. 120900, 20 J\1ly
2000.
27
OUTLINE IN INTIC:.LLECTlJAL
PR()lll!..RTY]..A\~1
i\rlY. CIARK EDWARO R. U\TIC:O,J.D., R.N.
2.
3.
The use of identical marks on noncompeting but related goods may likely cause
confusion.
C:orollarily,the use of identical marks on non-competing and unrelated goods is not likely
to c::iusc
confusion.
In resolving whether goods arc rclaicd, several factors come into play:'-"
a. Business (and its location) to which the goods belong;
b. Class of product to which the goods belong;
c. The product's quality, quantity, or size, including the nanire of the package, wrapper or
contf-lincr;
d.
e.
r.
g.
Nature and cost of the article;
Descriptive properi:ies, physical anribu1:es or essen1ial characieristics wirh reference IO
their form, composition, textureor quality;
Purpose of the goods;
Whe1her 1hc ar1icle is bought for immcdia1e consumprion, 1hot is, da)'-to-day household
itcn1s;
h.
1.
I·
Fields or manufac1urc;
Condi1ions under which the ariicle is usually purchased; and
Channels of rradc rhrough which rhc goods flow, how 1hey arc disrributcd, markeccd,
displayed and sold.
Non-Competing Goods
In defining 1radcmark infringconcnc, Scc1ion 22 or Republic 1\c1 No. 166 deleted chc
rc,1uircmcn1 in <1ucs1ionand expanded ics scope co include such use of che mad: or its colornble
irni1:11ion
th:11'
is likelyto ,·csuhin confusionon 111hcsourceor 01·igin of such goods 01· services,01·
idcn1ity of such business." Thus, while 1hcrc is confusion or goods when the products arc competing,
confusion or business exists when 1hc products arc non-competing buc related enough to produce
confusion of a rfiliaiion.
Non-competing goods may be those which, though they nrc 1101in actual compccition, a,·c so
rel:ncd to each ocher that it mighc rc:1sonablybe assumed that they originace from one manufac1urcr.
Non-competing goods may also be those which, being entirely unrelated, could 1101 wasonably be
assumed 10 have a common source. ln chc former c:,sc of relaccd goods, confusion of business could
arise out of the use of similnr marks; in the lnucr case of non-related goods, it could not."' Thus, the
Supreme Court held in C,1111111
Kt1hmhiki K,1isht1
t'J. C1111rf
'!fAppet1L<
t111tl
NJR R11b/)tlr
C111p,m1tio11''"'
that:
"Undoubtedly, the paints, chemical products, toner and dyestuff of CKK that carry
the Lradcmark CANON arc unrelated to sandals, the product of NSK. The 2 classes of
products in this case llow through different trade channels. The products of CK I< arc sold
through special chemical stores or distributors while che products of NSR arc sold in grocery
stores, sari-sari stores and department stores. 'l'hus, the evident disparity of these producL~
'"
"'
MightyCol'pomtio1land La CampanaFabricnde Tabaco,Joe.vs. E. & J.\Xfinel')'a11Jthe 1\ndresonsGroup,Inc.,
G.R. No. 154342,14Julr 2004.
1~ssoSt:mJnrdl·A1stcr,
Inc. vs. Court of Appc:1ls
nnd United Ciwirctlc Corporntion,(j.ll. No. 1.-29971,31 At1gust
1982.
G.R. No. ·120900,20 J ulr 2000.
28
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
/\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
renders unfounded the apprehension of CKK that confusion of business or origin might
occur if SR is allowed to use the mark C1\N01 "
Doctrine of Unrelated Goods
The mere fact that one person has adopted and used a trademark on his goods docs not
prevent the adoption Md use of the same trademark by ochers on unrcla1ed articles of a different kind.
Since in this case the tradcmnrk of petitioner is used in the sale of lcnthcr w;1llcts,key cnscs, money
folds made of leather, belts, men's briefs, neckties, handkerchiefs and men's socks, and the trademark
of rcgistra,u-appcllanc is used in the sale of shoes, which have different channels of 1radc, the Direc1or
of P:1tcntsought to have reached a different conclusion.1\7
Generic figure
A trademark device is susceptible to registrarion if it is crafted fancifully or arbitrarily and is
capable of idcnrifying and distinguishing 1hc goods of one manufoc1urcr or seller from those of
ano1hcr. Apart from its commercial urilicy,1hc benchmark of trademark regiscrabilityis distinctiveness.
Thus, a generic figure as rhnt of a shark, if employed and designed in a distinctive manner, can be a
regisrrablc trademark device, subject ro the provisions of the TPC.'"
Idem Sonnns Ruic
lde111,<0/11111.r
comes from two I.atin words, namely, itfe111
(meaning "same"), and .ro1111s
(meaning
"sound").'I11us,1ile111
.ro11mJJ'
mc:111"of Lhcs:1mcsound."Two names:1rcsaid 10 be "itle111
.ro11m1te/
if chc
a11cn1ivccar finds difficuhy in distinguishing chem when pronounced.'"
1
Similarity of sound is sufficient 10 rule rhat 1hc 1wo marks arc confusingly simila,· when applied
10 mc,·chandisc of 1hc same dcsc,·iptivc pl'Opcrtics.'~'
Colomble imitation
Such n close or ingenious imim1ion as to be calcula1ed 10 deceive ordinary rcrsons, or such a
resemblance 10 Lhcoriginal as to deceive an ordinary purchaser giving such attenLion as a purchaser
usually gives, as to cause him to purch:,se rhe one supposing it to be the other.'"
Doc1rine of Secondary Meaning
This doctrine is to the effect th:it :, word or phrase originally inc:,pablc of exclusive
appropriation with reference lo an article 011 the 111:irket,because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by one producer with
reference to his :irticlc that, in that trade and to that branch of the purchasing public, the wor<Ior
phrase has come to mean that the article was his product. 142
When the marks referred to in nos. 10, 1'I and 12 has become distinctive, because of its long,
continuous and exclusive use for 5 years, as used in connection with the applicant's goods or services
"'
""
""
,.,
I lickok MaoufocturingCo., Inc. vs, Courtor 1\ppeal:..
and S:1ntosLim Bun Liong,G.R. No. L-44707,31 J\ugusl
1~82.
Great \Xfhi1cSh:1rkEnterprises,Inc. vs. D:milo ~-1.C;m1ldc,Jr.,G.lt No. 192294,21 November 2012.
RcnrickKennedyManinvs, Srotcof Texas, No. 50921, 06 October 197G,541 S.\~.2d 605.
i\lan·es.Commcteialvs, PcLmI lnwpiaandC..o.,a11Jthe Diteclot or Patents,C.R. No. L-19297.22 December 19(>6,
Socictc Des ProduitsNcstlC,S.A. and NcsdCPhilippines,Inc. vs. Court of Appeals:mdCFC Corporation,(j.1-t
No. 112012, 04 April 200 I.
Aoa J_J\11g
vs. 1'01'.ibio
Teodoro, C.R. No. J...48226,14 Decembet 1942.
29
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J"IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
in commerce and in the mind of the public indicates a single source to consumers, it may be registered.
Thus, the l.P.0. may accept as prima facic evidence that the mark has bcxomc distinctive, ris used in
connection with the applicant's goods or services in commerce, proof of substantially exclusive and
continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the
d::1tcon which the daim of distinctiveness is mnclc.141
The nature of the goods co which the mark is applied will not constitute an obstacle to
rcgistrntion.144
Instanceswhenthereis no cnofusin~
...similarin,het\veenthe trademarks
Great White Shark Enterprises, Inc. vs. Danilo M. Caraldc'"
"GIU¼_;NOl!MJ\N SI lt\l(K 1.OC:O"vs. "Sl lJ\RK & 1.OC:O"
\'(lhilc bmh marks use 1hc sh:,pc or :, sh:1rk, 1hc Coun nrncd disrincl vil\ual :ind :1urnl diffcrcnet•.~
bc1wc..'Cn
them, In ( :re.it \'(lhi1c Sh:ttk'ii "GR I•:G NORMAN I,()( :o," lhcrc is :tn oullinc of:, shntk formed with
che use c,f >;rccn,yellow, blue :111cl rc<llincs/strokcs. 111co1'11rns1, 1he!'lharkin Cnrnldc's "SIIJ\ltK & l,OGO ..
mark is illu;;1rntcdin lc11crsnu1li1K"t.l
in 1hcfnrm of a sh:-irkwi1h,he lcut"r "S" rom,ing 1hchead, 1hcleuer "I I"
forming the lin14,the lcuc,·s../\"' :111J"R.. forming the body nnd che lc11cr"K" forming the mil. In :u.lJi1ion,1hc
l:mcr n1:1rkincluc.lcsi,.evcmlmorcclcmcn,~ such as 1hcword "SI 11\ltK.. inn different font undcmc:11h1hcshnrk
nullinc, lnycrsor w:,vcs,and a I rec on 1hcright side, nncJlibcmll)'u;;,-J 1hccolor blue wi1hsome part~ in n.:d,
)•clh1w,g«:cn nnd white. The whfllc cJc;;i>(n
is cnclo~cd in nn cllirtical shape wi1h two lining.~.'111evisual
di;;~imil:lriticsbclwl-cn the two (2) ,ru,rk;;Me evident M'ld:-ignif1C11111,
ncg.11in~chc po~sibil11y
or confoi-ionin
1hcminds or 1heor<l111:1ry
purch:1lK:r,
c~pt.--cinllr
considcrinK1hed1~liuctnur:,I(lirrcrcuccbe1wecnthe m:,rks.
Victorio P. Diaz vs. People of the Philippines and Levi Strauss(Phils.). Inc."'
"1.EVl's.. \'S, "ISJE,\NS"
of I.cvi's Phili1')pincsMUIDia~.mu,;:1be considc,·ed 11s:, whole in dc1crminiog
The jcMl"l1mJcm:1rko;
the likclihcHXI
of confu,ion between lhcm. The corl'illl1'ingpublic could e:u1ily
di<iCCrn
if Lhejc:mswere origin:,)
or fokc or were 1m1nuf:1ewr1.x.l
by mhcr bmnds of jc:u1s.Confusion :tnd deception were rc1111Jte
t1i11cc
mnon~
jc:10,i:
:,re expcllsive :ultl chc CMualbuyer i~ predispo•K>J
cu be more ci,utiou!ll:1nJ di~crirni,,:ui11g
in n,1dwould
pre for cu rnull 0\ 1er his purchnsc. I•'ur1hcr,Din1. used 1hc1~1dc•1r,nrk
"I.SJ Itr\ NS 'I',\ 11.()IUN(:" for che jciuH1
he product,1 :m<lsold.
I tis 1r-:11.Jc1r1:1rk
w:'l'I vi~unlly1111<.Inumlly <.1,rrcrc,11
from the trndc,nMk ..,.1~VI S'l'ltJ\USS & CC)"
:,p,,c:,rin>;on the p:uch of original jc:uu. Dlaz also :,ptlr nmed th:u 1..hc
design ust-J by LEVIS wns :u1im:,gcof
two horses but 1..he
evidence willshow th:ll 1..hcre
wa;;no such design in the seized jc:Uts,instcnJ, wh:-iti;;shown
is ''buffalc,design." i\lc,rcovcr,b:1scdcm 1hcccr1ificr1t·c
is~m.x.l
by 1hc In1cllcctu:1I
l'ropcny Office, "I .S.JI~I\NS
TA ILORING .. \\~Sa ,·cgiistcrcdlr.tlicmarkof Diaz. I le had rcgi:stcrcdhis 1.rndcmarkprior to the fi.li.ng
of the
preselll call-CS,
·111elntdlec1ual Propcl'ty Office would cert:1inlynm have allowl--Jlhe reHist.rntionhad Diaz'b
1rndcm:1rkb(..-cn
confu"lingly~imil:trwith 1hcrcgi~tercd1rnJcm:1rkfur I .EVl'S SOI jcnns.
Infringement of Name and Marks of Ownership Stamp Containers
General Ruic: Tt is unlawful for any person, without the consent of the manufacturer, bottler
or seller who has registered the mark of ownership to fill such bottles, boxes, kq,>s,barrels or other
containers so marked and scamped, for the purpose of sale, dispose of, or wantonly destroy the same,
..,
§12.l2.
§123.3
U.R. No. 192294,21 November 2012.
G.R. No. ·JK0677,IK f'ebtun<y201.l
30
OUTLINE IN INTIC:.LLECTlJAL
PR()lll!..RTY]..A\~1
J\rlY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
whether filled or not, to use the same for drinking vessels or drain pipes, foundation pipes, for any
other purpose than that registered."'
The use of the same without apparent permission from the trademark owners thereof shall be
primnfacic presumptionthat such possession or use is unlawful.1414
r-.xceptions:
14
'I. Use of the bottles ns containersfor sisi, bagoong, patis,and similnrnativeproducts~
'>
1511
2. Persons in whose favorlhc containerswere sold.
UNFAIR COMPETITION
Unfair competition has been consistently defined as the passing off (or palming ofl) or
a1.1cmp1ingto pass off upon 1he public the goods or business of one person as the goods or business
of another wi1h 1he end and probable effect of deceiving the public.
An action for unfair competition is based on 1-heproposition that no dealer in merchandise
should be allowed 10 dress his goods in simulation of the goods of ano1her dealer, so 1hat purchasers
desiring ro buy 1hc goods of the lancr would be induced m buy rhc goods of rhe former. The most
usual devices employed in commining this crime arc 1hc simulation of labels and the reproductjon of
form, color and general appearance of the package used by the pioneer manufacturer or dealer. ' st
Test for Unfair Competition
Jurisp,·udcnce formulated
the"m,erest"of unfuir compc1i1ion:whether theacrsof defendant
an,·suchasarr ralculnrcd
to drGS'ivc
1bconlinal')'
buyrcmaki1w
bispurchasc,·s
w1tkcdw ordinacy
()nc of the c~scnti:tl
condi1inns
whichprevail
in theparticular
1cack:
towhichthecontroversy
relates
requisites in an action to restrain unfair competition is proof of fraud; the intent 10 deceive must be
shown before the right co recover cnn cxisr.112 Ir is therefore essential t0 pl'Ove the existence of fraud,
or Lhe inLenL10 deceive, ncwal or probable, determined through a judicious scrutiny of the factual
circumsrnnces attendant 10 a particular case."'
The advent of the l111cllcctualProperly Code has 1101 sib"1iGcantlychange-clthese rulings as
they arc fully in accord with what Scc1ion l6ij of the Code in its entirely provides. Dc-ceplion, passing
off and fraud upon the public arc still the key clements that must be prese11tfor unfair competition to
exist.
..
,
1
""'
§2, RepublicAceNo. 623, as amendedby RepublicAct No. 5700.
§3, RepublicAct No. 623, asMnendedby Republic1\cl No. 5700.
§G,RepublicAct No. 623, asMncndedby Republic1\ct No. 5700.
Dislillctia\'<fashington,
li1c,vs. Courcor 1\ppealsa,1JLaTonclc11a
Discillers,l11c.,G.R. No. I209(.J1 17 Oclobet
1!.>96.
'"
Calerpill:ir,Inc. vs. Manolo P. Smnson,G.lt No. 164(i05,27 October 200(,.
SupcriotCornrncrcinJ
Emc11)ri.ses,
Inc. vs. Kunna11
E1uetpriscsLcJ. and SpotL~Co11cep1
& DisLtibucor,
Inc.,C.R.
is,
ShangPropertiesRc:1lty
Corporntion(formerlyThe Sh:ingGrnndTower Corporncion)nnd ShangProperties,Inc.
(formerly l•:DSA PropertiesI loldings.Inc.) vs. St. FrancisDevelopmentCorporntion,(;.It No. 190706,21 Jt,I)'
2014.
m
No. 1(,9974,20 /\p,;i 20ICJ.
31
OUTLINE
i\rlY.
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
CIARK EDWARD
R. U\TIC:O,J.D., R.N.
/\ person who has identified in the mind of the public d1e goods he manufactures or deals in,
his businessor servicesfrom those of others, whcd1cror not a registeredmark is employed, has a
property right in d1e goodwill of the said goods, business or services so identified, which will be
protected in the same manner as other property rights. '54 Hence, any person who shall employ
deception or any other means contrary to good faith by which he shall pass off the 1-,,oods
manufactured by him or in which he deals, or his business, or services for 1.hose of the one having
established such goodwill, or who shall commit any acts calculated to produce said result, shall be
guilty of unfair competition, and shall be subject to an action therefor. 'IS
l'bc fnHowim•
sbaUhedeemed
m-1ilty
of unfaircompetition:
1.
/\ny person, who is selling his goods and gives them the general appearance of goods of
ano1her manufacwrer or dealer, cii-her as to the goods 1hemselves or in the wrapping of
the packages in which they arc contained, or rhe devices 01·words thereon, or in any other
feature of their appearance, which would be likely IO influence purchasers to believe 1ha1
the goods offered arc those or a manufacturer or dealer, orhcr than 1he actual
manufncn,rcr or deale,·, or who otherwise clo1hes rhc goods with such appearance as shall
deceive rhc public and defraud another of his legirimare trade, or any subsc1.1uenrvendor
of such goods or any agent of ani• vendor engaged in selling such goods with a like
purposc;U<,
2.
3.
/\ny person who by any artifice, or device, or who employs any 01he1·means calcula1ed to
induce the false belier that such person is offering the services of another who has
identified such services in rhe mind of 1he public;"'
/\ny person who shall make any false statement in the course of trade or who shall commit
any other act conirnry rogood fai1hof a na1u,·ccalcul:Hed10 discredi1 rhe goods, business
or servicesof :inothcr.11"'
Esscnti:tl Elements of an action for unfair competition
a.
b.
Confusing similarity in the general appearance of the goods, and
ln1cnt to deceive the public and dcfrnud :, competitor.
The confusing similarity may or may nol result from similarity in u1c marks, bm may result
from other ex1ernal faccors in the packaging or presenrncion of the goods. 'l11e in1ent lo deceive and
defraud may be inferred from the similari1yin appearance of the gootls as offered for sale to the public.
1\ctual fraud,~cnL iment need not be shown. w,
Articles 1GS.I and 168.2 provide the concept and genernl rule on the definition of unfair
competition. The law docs 1101thereby cover every unfair act commiucd in the course of business; it
coversonly actscharacterizedby "deceptionor any other mcilnscontr.1ryto good faith" in the passing
off of goods and services as those of another who has esL~blishedgoodwiU in relation with these
goods or services, or any other act calculated to produce the same result.
,,.
"'
"''
'"
""
'"'
§IGK.I.
§1(,8.2.
§IGK.3(n).
§IGK.3(b).
§l(,8.3(c)
~lcDonnld's Corpormion:md Mc(j<..-orgc
Food lndtistrics.Inc;.vs. LC. Big t\fak lh1rgcr,Inc., cl al.. (j.ll. No.
143993,I KAugust 2004.
32
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rtY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
\%at unfair competition is, is further particularized under Section 168.3 when it provides
specifics of what unfair competition is "without in any way limiting the scope of protection against
unfair competition." Part of these particulars is provided under Section 168.3(c) which provides the
general "catch-all" phrase that the petitioner cites. Under this phrase, a person shall be guilty of unfair
competition "who shall commit any other act contrary to good faith of a nature calcula1cclto discredit
the goods, business or services of another.ouo1,
Distinguish
lradcmark infringement
from unfair compclition
The law no unfaircompct:ition
is broaderand moreinclusivethan the law on
trademark infringement. The lauer is more limi1cd but it recognizes a more exclusive right derived
from the trademark adoption and registration by rhc person whose goods or business is first associawd
wi1h it. J lcnce, even if one foils 10 esrnblish his exclusive property right to a irademark, he may s1ill
obrnin relief on 1he ground of his compc1i1or's unfoirncss or fraud. Conduct constitu1es unfoir
competition if the effect is m pass off on the public the goods of one man as the goods of another. 11'1
Thus, the key differences arc:
I.
2.
3.
Infringement of trademnl'I< is the unauthorized use of a 1rademark, whereas unfai,·
compe1i1ion is the passing off of one's goods as 1hose or another.
In infringemen1 of trademark fraudulent inten1 is unnecessary, whereas in unfoir
compe1i1ion fraudulent intcnr is essential.
In infringement of trademark the prior registration of 1hc 1radcmark is a prerequisite 10
the nction,whereasin unfair compc1·ition
rcl{i~arn1ion
is nor ncccssn1·y.
Coca.ColaBottlers,Phils.,Inc.(CCBPI),NagaPlantvs. Quioti.oj.Gornczao<lDaoilo£, Galicia,G.R.No. 154497,
'"
14 November 2008.
~light)' Corporntion vs. Ii. &
J. Gallo Winery, (.;.R. No.
154342, 14July 2004; Roberto Co vs. Kcng I luan Jerry
Yeunga11dElt'unaYcuog,G,R. No. 212705, 10 September2014.
33
OUTLINE
i\rlY.
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
CIARK EDWARD R. U\TIC:O,J.D., R.N.
CHAPTER IV
COPYRIGHT
Copyright; Definition
i\ right over litcrnry and artistic works which arc original intellectual creations in the litcrnry
and artistic domain protec1cd from 1.hcmoment of creation.'"
Chdl Code Provisions on Ownership of Intellectual Creation
1\rciclc721. By intellectual creation, the following persons acquire ownership:
(1) The author wi1h regard 10 his liicrnry, dramatic, historical, legal, philosophical,
~cicntific or other work;
(2) The composer; as co his musical composi1ion;
(3) The painter, sculptor, or other anis1·,with respect m rhc product of his art;
(4) 'l11e scientist or technologist or any 01hcr person wi1h ,·egnrd to his discovery or
i11vcn1ion.(11)
Article 722. The aurhor and rhc composer, mentioned in Nos. 1 and 2 of 1he
preceding article, shall have the ownership of their creations even before the publication
of 1he same. Once 1heir works arc published, their righ1s arc governed by rhe Copy,·igh1
laws.
'l11e painlcr, sculplor or olhcr anis1 shall have dominion over Lheproclucl of his art
even before i1 is copyrighted.
The scientist or technologist has 1he owne,·ship of his discovery or invention even
befol'e it is pa1en1ed. (n)
Article 723. r.ctlers and other private communications in writing arc owned by the
pe,-son to whom they arc addressed and delivered, but they cannot be published or
clisscmina1cclwiLhout 1hc consent of 1hc wri1cr or his heirs. l lowevcr, 1hc court may
:1utho1izetheir publication or dissemination if the public good or the interest of justice so
rc<1uires.(n)
Article 724. Special laws govern copyright and patent. (429a)
Time when Copyright vests
Principle nf autoniatic protection
- \Xlorks arc protected from the time of their crcatlon,
irrespective of their mode or form of expression, as well as of their content, quality, and purpose."''
"'
§171.1.
§172.2.
34
OUTLINE IN INTIC:.LLECTlJALPRC)llERTY]..A\~1
i\'l'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
The issuance of the certificates of rcgisrration and deposit as provided by Sec. 2, Ruic 7 of the
Copyright Safeguards and Regulations, arc purely for recording the date of registration and deposit of
the work, and arc not conclusive as co copyright ownership (nor docs it determine chc time when
copyright vests).'"'
Duration of Copyright
Copyright shall last during the lifetime of the author and SOyears after his death. Copyright is
not an absolute right and has a limited term of protection. lt enjoys no absolute protection quite unlike
1hc protection available in mngiblc properties.
Rights of a Copyright Owner
Copyright or economic rights shall consist of the exclusive right
prevcni rhe following acts:",$
I. Reproduction of 1he work or substantial poriion of 1he work;
2.
:;,
4.
S.
6.
7.
IO
carry out, aurhorize or
Dr:imntizn1·ion,
translation,ndaptntion,nbl'idgmcnt,arrangementor orhcr transfonnacion
of the work;
The first public distribution of the original and each copy of 1he work by sale or other
forms of transfer of ownership;
Ren1al of 1hc ori1,,jnalo,· a copy of an audiovisual or cincmat0graphic work, a work
embodied in a sound recording, a computer program, a compilaLion of data and 01her
materials or a musical work in graphic form, i,·,·espcctiveof the ownership of 1hc original
or Lhecopy which is the subject of the rcn1al;
Public display of rhe original or a copy of the work;
Public pc,-formancc of rhc work; and
OL11crcommunicntion LO L11cpublic of the work.
SOME BASIC PRINCIPLES IN COPYRIGHT
Works arc pro1ectcd by the sole facl of their crea1ion
Copyright is vested from the very moment of creation. '!'his is also known as the Principle of
1\utoma tic Protection."''
The enjoyment and exercise of copyright, including moral rights, shall not be the subjt'Ct of
any ful'mality; such enjoyment and such exercise shall be independent of the existence of protection
in the country of origin of the work."'
The Denicola Test in intellectual pmpcrty law srntcs that if design clements of an article reflect
a merger of aesthetic and functional considerations, the artistic aspects of the work cannot be
conceptually separable from the utilitarian aspects; thus, the article cannot be copyrighted.
l(,S
'"
1(,7
i\lanJySpottwearMa11ufocturi11g.
Inc.vs. Dadodcllc Hrucrpri.ses
and/or l lcnncs SpurtsC..cntcr,
G.R. No. 165306,
30 September WOS.
§177.
§172.2.
Article5(2), Ber11e
(oovcmion for the Protcctiooof Liccmrya11dArtisLic
\X1orks.
:;5
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
Protection Extends only to the expression of an Idea, not the Idea itself
No protection shall extend, under this law, to any idea, procedure, system method or
operation, concept, principle, discovery or mere dam as such, even if d1cy arc expressed, explained,
illustrated or embodied in a work."'"
Copyright is distinct from the property in the material object subject to it.
The copyright is distinct from the property in the material object subject to it. Consequently,
the transfer, assignment or licensing of the copyright shall not itself constitute a transfer of the material
object. lor shall a transfer or assignment of the sole copy or of one or several copies of the work
imply tmnsfcr,nssignmcntor licensingof the copyright.1'•'>
Exception: \Xlork of J\rchjcectyrc - Copyright in a work of architecture shall include 1·he
right to control the erection of any building which r~-produces the whole or a substantial part
of 1he work either in its original form or in any form recognizabli• derived from the original:
Provided, Thai the copyright in any such work shall not include the right 1:0con1rol 1he
,·cconstrucrion or rehabilitation in the same scylc as chc original of a building to which that
copyright relates.'"'
Copyrighl is {I Stalutory right
Copyright, in 1he s1ric1sense of 1hc 1crm, is purely a statu1011• righc. 13cinga mere srn1utory
grant, chc righ1s arc limiccd 10 wha1 the s1aiu1c confers. IL may be obtained and enjoyed only with
rcspcc1 to 1hc subjects and by 1hc persons, and on terms and condirions specified in chc s1·a1urc.
1\ccordingly, it can only cover chc works falling wi1hin L11c
stntuLory cnumcracion or dcscrip1ion. Only
chc expression of an idea is pmrccccd by copyright, 1101the idea itself.'"
Elements of Copyrightabi(jty
I.
2.
Qci1•jnalil)'- Musr have been created by the author's own skill, labor, :,nd judgment
will1ou1directly copi•ing or evasively imitating the work of anoll,er. 172
l\xpl'cs~ion - Must be embodied inn medium sufficiently perm:1ncnt or stable 10 permit
it to be perceived, reproduced, or communicated for a period more than a transicory
duration.
Thus, functional components of useful articles, no macter how artistically designed, have
gencraUy been denic.xlcopyright prolcction unless L11ey
arc separable from the uscfL~article 1\ useful
aniclc may be copyrightable only if anti only to the extent th:1t such design incorporates pictorial,
graphic, and sculpturnl features th:11can be identified scpar.itcly from and arc capable of existing
independently of the utilitarian aspects of the article."'
Registration is not required for a creator to file an action for infringement
P.O. 49, as amended, docs not require registration and deposit for a creator to be able to fJe
an action for infringementof his rights.These conditions nrc merely prc-rct.iuisitcsto an ::ictionfor
,,.
§175.
§181,as amenJeJ by Republic/\c1 No. 10372.
§186,
'"
Pearl& Dean (Phil.), lncorpor:llcdvs. Shocmart.lncorporntc..'ll,
G.lt No. 148222, 15 Au1,rust
2003.
Wilson Ong Ching Kian Chunnvs. Court of Appcnlsaml 1.orcnzoT:1n, G.lt No. 130360, t 5 Aub,ust2001.
"'
rn
Jessie G. Chi.ngvs. \~illiamM. Salinas,St. Cl al.,G.R. No. ·161295,29 June 2005.
36
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
damages. So, as long as the proscribed acts arc shown to exist, an action for infringement may be
initiated.17"
The certificates of registration and deposit issued by the I ational Library and the Supreme
Court Library serve merely as a notice of recording and registration of the work but do not confer any
right or title upon the regiswrcd copyright owner or automatically put his work under the protective
mantle of the copyright law. Tt is not a conclusive proof of copyright ownership. 1\s it is, nonregistration and deposit of the work within the prescribed period only makes the copyright owner
liable co pay a fine. 175
COPYRIGHTABLE WORKS
Original Works'"
Literary and artisric works, hereinafter referred to as "works", arc original inrcllecrual creations
in 1he literary aml a,1js1jcdomain prncccted from the moment of 1heir creatio11and shall include, in
particular:
a. Books, pamphlers, articles and 01-herwritings;
b. Periodicals and newspapers;
c. l .ccrures, sermons, addresses, dissertations prepared fo,· oral delivery, whether or not
reduced in wri1jng or other material fonn;
d. J.Cltcrs;
e. Drnma1ic or dra1na1ico-musical composi1ions; choreographic works or e111erminmenrin
dumb shows;
f. Musical composi1ions, wirh or without wo,·ds;
g. Works of drawing, painting, archi1ecn11·e,sculp1t11·e,engrnving, lithography or 01her wo,·ks
of an; models or designs for works of art;
h. Original ornamental designs or models for articles of manufacture, whether or not
registrable as an indus1rial design, and other wo,·ks of applied ar1·;
,. Illustrations, maps, plans, sketches, chans and tlirec-dimensional works relative 10
geowaphy, topu11-mphy,a,·chitecturc or science;
I· Drawin11s01· plastic works of a scientific or technical char:,ctcr;
k. Photographic works including works produced by a process analogous to photography;
lantern slides;
I. Audiovisual works and cincmatuwaphic works anti works pro,lucctl by a process
analogous Lo cinematography or any process for making audio-visual recordings;
m. Pictori:11
illustr:ltiunsnnd :u.lvcniscmcnts~
n. Computer programs; anti
o. Otl1cr literary, scholarly, scientific, and artistic works
When is a work considered an "original"?
1. '!'he work is an independent creation of the author; and
2. l t must not be copied from the work of another.
"'
Ii(,
ColumbiaPicturcs,l11c.,cl aJ,vs. Courl of Appeals,ec al.,C.R. No. 11031K,28 August 1996.
i\lanly Sponswc:lrMnnufocl11ringInc. vs. D:ufodcttc1:,nccrpriscs
nnd/<>rI lcrm~ Sp<>rts
Center, G.R. N<>.16530G,
20 September2005.
§172.1.
37
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
/\ person to be entitled to a copyright must be the original creator of the work. I le must have
created it by his own skill, labor and judgment without directly copying or evasively imitating the work
of another."'
Ry originalityis rnc::1nt
thnt the materialwas not copied, and cviclcnccs at least minim::11
creativity; that ic was inclcpenclencJycreated by c.heauthor and that it possesses at least some minimal
degree of creativity. Copying is shown by proof of access to copyrighted material and substantial
similarity between the two works. 'f'hc applicant must thus demonstrntc the existence and validity of
copyright because in 1hc absence of copyright protection, even the original creation may be freely
copied.'"
Originality is not determined by novelty, aes1heric meri1, or ingenuity but that it is an
independent crention.
'!'he requirement in US Law that the expression should be fixed in a tangible medium is not
applicable here since our law expressly provides rhnt works arc protected irrespccrive of rheir mode
or form of expression.'"
Derivative Works
Derivative works arc those works which arc:
1. Oramarizarions, rranslations, adaprnrions, abridgmenL~,arrangements, and other alrcrntions of
literary or anistic works; and
2. Collccrions oflirernry, schol:irly or artistic wc)l'ks,and compilaiions of darn and othe,· m:ircri:ds
which arc original by reason of the sclccrion or coo,·dinarion or a,·rnngement of 1hcir
contcnts.1""'
Oeriva1ive works shall be protec1cd as new wo,·ks, provided that such new work shall 1101
affect the force of any subsisting copyright upon the original works employed or any pan thereof, or
be cons1rue<lto impli• any right to such use of 1hc original wo,·ks, or 10 secure or cxteml copyright in
~uchorigin:,1
works.1" 1
The provisions of 1he in1ellectual property code sh:,11apply to works in which coryright
protection obrnined prior to the effectivity of the law is subsisting. Provided thnt the application of
the code shall not rcsulLin the c~minution of such protection.'"'
/\ person entitled to copyright must be the original creator of the work. I le must have created
it by his own skill, labor, nnd judgment wiLhout dirccLly copying or evasively imitnting the work of
another.•~• Thus, to be entitled to copyright, the thing being copyrighted must be original, crelltcd by
\X1ilso11
Ong Ching Ki.anChunnvs, Courl of AppealsaoJ Lotcm,,0Tan, G.R. No. 130360,15 1\ugus12001.
"'
11'11 Jessie G. Chingvs. W'illiam
1\I. Snlinns,Sr. ct :11.,(].It No. 161295,29 June 2005.
,,. §172.2.
'"
"'
'"
§Sec.173.1.
§173.2.
§23?.3
\X'ilso11
Ong Ching KianChunnvs. Coul'lor AppealsaoJ Lotcm,,0Tan, G.R. No. 130360,15 1\ugus12001.
38
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
the author through his own judgment without directly copying or evasively imimcing the work of
nnothcr. •iw
There will still be originality sufficient to warrant copyright protection if "the author, through
his skill and effort, has contributed a distinguishable variation from the older works." In such a case,
of course, only those part~ which arc new arc protected by the new copyrighL I Jenee, in such a case,
there is no c11scof infringement.Juan Xf!vicris no less ::in"author11 because others have preceded
him.114$
NON-COPYRIGHTABLE WORKS
Unprotected Subject Maner'"'
l. /\ny idea, procedure, si•stem method or operation, concept, principle, discovery or mere data
as such, even if they arc expressed, explained, illustrated or embodied in a work;
2. News of 1hc day and other miscellaneous focts having the character of mere items of press
informacion;
3.
4.
S.
/\ny official text of a legislntive, administrative or legal nature, as well as any official
1rnnsla1ionthereof;
Pleadings;
Original decisions of courts and tribunals. Note that this pertains 10 the "original decisions"
not the Supreme Court Reports /\nno1a1ed (SCltA) published volumes since the SCltA
volumes arc protected as derivative works under Section 173.1.
Works of the Government of the Philippines
Work of the Government of the Philippines: Is a work c,·ea1ed by :,n officer or employee of
the Philippine Government or any of its subdivisions and ins1rumcn1alities,including governmentowned or controlled corporations as a part of his regularly prescribed official duties.'"'
General Rule: Government cannot own any copyright.
:Exception:
a. When copyright is assigned 01· bct1ucstcd in favor of the government.'"
b. Author of speeches, k<:1urcs,sermons, addresses, and disserrntions shall have exclusive
right of making a colkction of his work.
I lowcver, prior approval of the government agency or the office wherein the work is created
shall be necessary for the exploit:ttion of such work for profit."''
Notwithstanding the foregoing provisions, the (;overnmcnt is not precluded from receiving
and holding copyrights transferred to it by assiw1mcnt, belfuest or otherwise; nor shall publication or
republication by the Government in a pubLlcdocument of any work in which copyright is subsisting
..
,
Venancio Snmbnrvs. I.A.:vi
Str:n1ss& Co .. and 1.cviStn1uss(Phil.), Inc., (j.R. No. 132604, Q(i 1\l:1rch2002.
I. Ilabana,CL al.vs. FelicidadC. RoblesandGoodwill'rmdingCo., Inc.G.R. No. 131522,19July 1999.
"' Pacim
§175.
'"'' §171.11.
""
... §176.3.
"'' §I7(,. I.
39
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
be taken to cause any abridgment or annulment of d1c copyrighc or to authorize any use or
nppropriation of such work without the consentof the cop}rrightowncr. ••.1o
Works of the Public Domain
These include works whose term of copyright has expired. Examples would be classic novels
and writings such as Le Comte de lvlonte-Cristo (!'he Count of Monte Cristo) by Alexandre Dumas,
Les lVliscrables by Victor Hugo, Don Quixote de la llfancha by Mih,i,el de Cervantes Saavedra, 11
Principe (T'he Prince) by Niccolo Machiavelli, ct cetera. fiecause the copyright for these works have
prescribed in time, they thus bclo11gto the public domain a11dany publisher may now publish their
works subject to the moral rights of their respective authors.
Useful Articles Doctrine or Applied Art Doctrine
This is a lch-.ilprinciple which gives copyright protection to pictorial, h,raphic, or sculptural
work that has an inherem use apart from its appcarnncc, and which is also an expressive work apart
from i1sucjlity.'l'he useful arriclc doccrinc serves chc important policy of keeping patenc and copyright
separate by preve111ingpanics from using copyrighc to obrnin a "backdoor pntent" on a functional
article chat cannot be patented. 'l'his is also known as applied an doctrine. \Xlorkswhose sole purpose
is u1ilicarianand have no ar1is1icvalue can be distinguished from a work of applied ar1, which has
ucilitarian funci-ions, but there is nn identifiable artistic work 01· creation inco11)orated 1hcrcco.
RIGHTS OF A COPYRIGHT OWNER
Copyright or Economic Rights
Copyright or economic rights shall consist of 1he exclusive righc co carry out, authorize or
prevenc 1he following acts:
I.
2.
3.
4.
5.
6.
7.
"''
191
192
19\
,,.
'"
"''
""
Reproduction of the work or substantial portion of the work;'"'
Dramatization, translation, adaptation, ab,·idgmcnt, :irrangcment or oi-hcr transformation
of the work;''/2
The first public distribution of the origin:d anti each copy of the work by sale or other
forms of transfer of ownership; 19'
Rcnt1I of the original 01: a copy of an audiovisual or cinemaLOgraphic work, a work
embodied in :1 sound recording, n computer progrnm, :1 compilation of data anti 01·hcr
materinls or n musical work in graphic form, irrespective of the ownership of the original
or tl1e copy which is the subject of the rcnt'll;""'
Public display of the original or a copy of the work; 195
Public performance of the work;'"'
Other communication LOthe public of the work.'"'
§176.3.
§177.1.
§177.2.
§177.3.
§177.4.
§177.5.
§177.6.
§177.7.
OUTLINE
40
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\"J"IY.CiARK EDWARD R. U\TIC:O,J.D., R.N.
Economic righcs also give the author che right to assign or license the copyright and/or the
materialobject in whole or in pr11t,and they allow the owner to derive financialrewardfrom the use
of his works by others.'"
Copyright in a work of archicecture shall include the right to control the erection of any
building which reproduces the whole or a substantial part of the work either in ics original form or in
any form recognizably derived from the original: Provided, That the copyright in any such work shall
not include the righc to control the reconstruction or rehabilimtion in the same scyle as che original of
a building co which chac copyrighc relates.'"'
C:ommuoicarion
to tlwPuhlic
of l.op)'tipbtcd\Voeks:
lncludcs point-to-point transmissionof
a work, including video on demand, and providing access co an clcccronic retrieval si•sccm, such as
compul'cr dat:ibascs,servers, or similar clcct1'onicstorage devices. Rroadcasting,rebroadcasting,
rc1ransmission bi• cable, and broadcast and rcc1"lnsmission by satellite arc all aces of "communicacion
co ehc public" within the meaning of 1hc IPC."'"
Fjr,;r PuhJjc Qjsrrjhurjon of Work:An c~clusivc right of first distriburion of work includes all
ac1s involving dis1ribu1ion, specifically including 1he firs1 impona1ion of an original and each copy or
che work into che jurisdictio11of che Republic of rhe Philippincs.•• 1
Moral Righcs
These arc personal rights indcpcndc11t from chc economic righrs. Bci11ga personal right, i1 can
only be i:,,ivenIO a nawral person. 1 lence, even if he has licensed or assigned his economic rights, he
co11tinues 10 enjoy 1he above-me11tioned moral ,·ighcs.a,,
The auLhor of a work shall, independently or 1he eco110111ic
rights in SecLion 177 or 1he grant
or an assignmenL or license wiLh respect LOsuch righL,have the righL:
I.
2.
3.
4.
1941
To require lhal Lheamhorship of Ll1eworks be aLlribu1c<lLohim, in particular, Lhe right
that his n:une, as for as pr:iccicablc, be indic:iced in a prominent way on the copies, and in
connection with the public use of his work;'''
'J'o make any alLcraLionsor his work prior LO,or lo will1hold it from pub~cation;"''
To object lo any disconion, mutibtion or other modification of, or other derow11ory
action in relation to, his work which would be prejmlici:d to his honor or repurntion; 2' 6
'J'o rcsLrain lhc use or his name with respect LOany work not or his own creation or in a
distorted version of his work."''
§18(U.
§186.
"'
...
Rule 11,C.op}1tigh1Safeguard:-.
and Regulations
.
Rule 12,Cop)'rightS:ifcg1.1-:m.ls
and Rct,,ul:itions.
VICENTE
B.AMADOR,
IN·n..:u.1:1.crUAJ.PROPERTY FUNDAMENTAl ...
'i (2007
E.d.).
§193.1.
§193.2.
§193.3.
§19.M.
41
OUTLINE IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J"IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
In addition to the right to publish granted by the author, his heirs, or assigns, the publisher
shall have a copyright consisting merely of the right of reproduction of the typo),>raphicalarrangement
of the published edition of d1e work."°
The author of speeches, lectures, sermons, addresses, and dissertations mentioned
preceding paragraphs shall have d1c exclusive right of making a collection of his works."''
in
the
Term of Moral Rights
The righLsof an author under section 193.1 shall last during i:hclifetime of the author and IN
P11RPP;rurrv after his death, while the rights under sections 193.2, 193.3 and 1?3.4 shall be
coterminous with the economic rights, the moral rights shall not be assiho1ablcor subject to license.
The person or persons 10 be charged with 1hepos1humous enforccmcni of these rights shall be named
in a written instrument which shall be filed with the National Library. In default of such person or
persons, such enrorccmen1 shall devolve upon ci1hcr rhe aurhor's heirs, and in default of1he heirs, the
Dirccinr of the Na1ional Library.'"
Exception to Moral Rights'"'
I. /\bsenc ani• special conimct at the time crca1or licenses/permi1s ano1her co use his work,
the following arc deemed not ro conimvene creator's moral righ1s, provided they arc done
in accordance wi1h reasonable cuswmnry standards or 1·cquisi1esof 1he medium:
n. I iditing
b. /\ rranging
c. /\daptation
d. Drnmaiixa1ion
e. 1'vlechnnicaland clecc1·ic,·eproducrion
2.
Complete destruction of work unconditionally 1ransrerrcd by creators.
Waiver of Moral Rights
Gcneml Ruic: Moml rights c:,n be waived in writing, expressly stating such w~ivcr211or by
contribution to:, collective work unless such is expressly reserved."'
Exceptions to Waiver:
Even if m~dc in writing,w:tivcris still nut validif:
I. Use of the name of tl1c author, Litle of his work, or his rcpuL~tion with respect lO any
version or adaptation of his work, which because of alterntions substantially tends to
injure the litcr:1ryor artisticreputation of another author;21 '
2.
.
M
,,
M
21(1
"'
"'
'"
,,.
JI uses the name of the author in a work that he did 1101create."'
§174.
§176.2.
§198.
§19K.
§195.
§1%.
§19,.1.
§195.1.
42
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
Moral righL~arc not assignable or subject to liccnsc.215
The right of an author under Section 193.1. shall last during the ~fccimc of the author and in
perpetuity after his death while the rights under Sections 193.2. 193.3.and 193.4. shall be coterminous
with the economic rights.116
Rights to Proceeds in Subsequent Transfer (Droit de Suite or Follow Up Rights)
Oroit de suite or "art proceeds 1·ight"is the nrtist's resale right, which requires that n percentage
of the resale price of an artistic work is paid to the author. The right is exercisable even after the
author's death, provided the work is still in copyright."'
In every sale or lease of an original work of pain1ing or sculpture or of rhc original manuscript
of a writer or composer, subsequent to the first disposition thereof by the aurhor, 1he author or his
heirs shall have an inalienable right 10 participate in the gross proceeds of 1he sale or lease to rhe extent
2
"
of live percent (5'1/c,).
Rights which arc not covered under a Droit de Suite
Prints, etchings, engravinb'S,works of applied ar1, or works of similar kind wherein the author
primarily derives gain from 1he proceeds of reproducrions. 21'1
FilioinoSocietyofCo,nooscrs,Authorsand Publishers,Inc,vs, BenjaminTann•
The i:-.sucin 1hisc:n,ci;;whether 1hcpl:,yiui,;nn.J signingor mu:iic:,Icompo:ii1ionswhich have been
cor,rrightcd undc1·the 1,rovii.:i110~
nr1hc COJ'))'tiglu
lilwioiiidc1hc rc:-1nurnn1
cor1~1iu11c
n pcl'fol'mnncc fol' l''ll'nli,?
The courl nilcd chm chc word "perform" a;; u~c.,Jin Lhc,\c1 hM bc..-cn
npplicd to one whn pl:l)'~:,
mu'iie:11
cc11npo:-i1ion
on n piiu111,
thcl'eby pmducin~ in I he ni,·sounJ \\""vcswhich :u·chc:ml ~l:<11nlU'iiC,,,and
np1,af'{1H1~.
so thn1 1hc wnves Mc 1hww11 0111, 1101
if 1hc ir,~1n11ncm
he play~on is n 1,inno1,lu~n bmadcns1i,1H
only upon Lhcnir bot \1por1ocher~, Lhcuhe ,llllopcrformil'1Ka nn1~ic11I
compm,ilion. In rcl(1liouLhcrc10
1 ii h(lll
lx:cn held Lh:,1"The pl:lyingnf music in dine m1dd:mcc esrnbli~hmentwhich was p:,id for by 1he public in
purchosc~of food :uRJdri11kcon~1i1u1ed
'perronnnocc ror pmfi1• wi1hi,1A Coprriglu l.nw." 'J'hus, i1 hns bce11
cxpl:1incd1h:1twhile it is po:-:-iblein i:uch ei.anbhshmcnl~for 1he r:umllS to pul'ch:1M:
their food nnd drinks :1nJ
b)' lhc orchcslr:1for lhc
:111..hcsame 1..imc
d:mcc 10 1hc music of 1..heorchesh111 the mu:.ic is f\1rnisheclnncl usc..'t.1
pu,rosc or inducin~ the public 10 rmtnmi~c 1hc c~rnblishr11c111
:md p:,y f1,,·the crucr1:1imr1cn1
ir11he purchMc
or food nnd drinks.
XX!<
In the cnsc nt b:,r, it is :u.lmitwJ1h:1t1hc p:11rnn.:;
of 1hc rcs.t-:-mr:mt
in tiucs1iun fY.•)'only fur lhc fimJ
:111J
Jrink~ nnd npparcn1lyno1 ior lis1c,1ingIO1he music. As. founJ by 1hc ui:11court, lhc mu~ic pruviJc...,J
i-:(or
the purpose of cntcr1t1ininganJ amu:slng1J1ecuslomcrl)ln order to make 1J1ecs1nbli:shmcntmore aurnc1ivcand
desirable. It will be 1101ed1.h:11
for 1J1eplayinHand sinHing1..hemusical cornpm:itioib involved, I.Jtecombo \\r-as
p-:1id
m; inJc...-pcndcnt
conlmcto~ b)' lhc :1ppcllant.II i~ 1hereroreobviou~ 1h:11
the cxpcn'1cscnwilcd 1hcrcby:1re
:1dt.lcdto the overhc...~u..l
or lhc restaur:mt which :arccilher even1u:1II)'
ch:1rgc...'(I
in the price or the food and Jrinks
or co the ovcrnUtotal of additional income pmduct.-.Jb)' the bi~>ervolume of business which the ..:nte1tainme11l
\\r-asproHmmmcd to aurncL.C..onscquentl)'i ic is beyond yuest..ion11,atI.Jtcplaring and singinHor the combo in
dcfcnd:mt---:1ppcllec's
rcst:1ur:mtconstilulc...-J
pcrformnnce rur profit contcmpl:1tedby th1;Cop)'righl I .aw.
"'
"'
21(,
'"
219
§198.
§I%, as amenJeJ by Republic Act No. IOJ72,
DAVIDBAINIJRIJ)(;E, IN"ll'.IJJlCJ"UAL PROPERTY (10" EJ., 2018),
§200.
§201.
G.R. No. 1~364-02,16 Mn<eh1987.
43
OUTLINE IN IN'J'IC:.LLECTlJAL
PR()lll!..RTY]..A\~1
ArlY. CIARK EDWARD R. U\TIC:O,J.0., R.N.
Ncvcrthc:lcs.s.
appcllccc:-innot
be saidto haveinfringt.-d
oponthe CopyrightI ~w. t\ppcllcc'.s
allcgmion
thm the co1nposers
or the cootcs1ccl
musicaloomposicioos
w.i.ivcdIJ,eirright io fovorof IJ,egeneralpublic
when 1ht)'allowed1Jwirin1ellec111al
crcatio,uto becomepropertyor 1hcpublicclomai,1beforeappl)'illgfor the
corresponding
cop)•rightsror the sameiscorn.,-ct.
(Cit:ationsomitwJ)
Performance of a contract
J\n author cannot be compelled 10 perform his contract to create a work or for the publication
of his work already in existence. 1lowevcr, he may be held liable for damages for breach of such
contract.221
Neighboring Rights
Neighboring rights
MC
i:hose which pertain 10 performers, producers, and broadcasi:ing
orga11i~a1ion,
namely:
l.
2.
3.
Performer's Rights;
Producers of sound recordings;
Broadcasting orgnniza1ions.
Performer's Rights
Performer's enjoy 1he following exclusive righ1s
1. /\s 1·c1,>111·ds
their pe.-formanccs, 1·heright of authorizing: 222
a. The broadcasting and 01her communication IO 1he public of their performance;
and
b. ·11,e fixa1ion of their unfixed pe,·formancc.
2.
3.
Such right shall be maintained and exercised fifty (50) yca,·s af1er his dcarh, by his
heirs, a,1d in default ,.Chei,·s, the government, where pro1ec1ion is cl:1i111ed."'
The right of authorizing the direct or indirect reproduction of their performances fixed
in sound recordings, or audiovisual works or fixations in any manner or form;'"
Subject to the provisions of Section 206, the right of :,urhorizing the first public
distribution of the original and copies of their performance fixed in the sound recording
or audiovisual works or Fixations through s:dc or rent.11or other forms of transfer of
5
owncr:-:hip;u
4.
5.
6.
"'
222
,,.
"'
m
,,.
w
The righl of authorizing Ilic commercial rental Lothe pubGc of the original and copies of
thci,· performances Foxedin sound recordings or audiovisual works or Fixations,even after
distribution of them by, or pursuant Lolhc authori,.ation by the pcrformcr; 221'
The right of autl1orizing the making available to the public of tl1eir perfonnances fixc.-cl
in
sound recordingsor :1udiuvisu:1l
works or fixations,by wire or wirelessmeans,in sucha
way that members of the public may access them from a place and time individually
chosen by them."'
Moral Rights of Performers - lndependently of a performer's economic rights, the
performer, shall, as regards his Gve aural performances or performances fixed in sound
§195,
§203.1.
§204.2.
§203.2, as amendeJ by Republic Ac1No.
§203.3, :is nmcndc-J by Republic Act No.
§203.4, as amcndc-J by Republic Act No.
§203.5, as amendeJ by Republic Act No,
10372,
10372.
10372.
10372.
44
OUTLINE IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
ArlY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
7.
recordings or audiovisual works or fixations, have the right to claim to be identified as the
pcrfonncr of his performances, except where the omission is dictated by the manner of
the use of the pcrfonnancc, and to object to any distortion, mutilation or other
modification of his performances that would be prejudicial to his reputation.•'•
Unless otherwise provided in the contract, in every communication to the public or
broadcast of a performance subsequent 10 the first communication or broadcast thereof
by the broadcasting organil\ation, the performer shall be entitled to an additional
remuneration equivalent to at least five percent (5%) of the original compensation he or
she received for the first communication or broadcast_.,.,
Loss of Performer's Rights
Once 1hc performer has aui-horizcd the broadcasting or fixation of his performance, his
performer's rights provided for in Section 203 shall have no further application.
Fair use and limi1a1ions IO copi•righl~ shall apply 11111/11/i.<
11111/rmtli.r
IO performers.""
Rights of Producers of Sound Recordings
Producers of sound recordings shall exclusively have 1he right 10 mathorizc 1hc:
I. Direcr or indirect reproduction of their sound recordings, in any manner or form; rhe
placing of 1hese reproduc1ions in Lhc marke1 and 1he righLof rcnLal or lending; 111
2. First public dis1ribu1ion of 1he original and copies of 1heir sound recordings tlirough sale
or rental or 01-herfonns of rrnnsfcr,·ing ownership;"'
3. Commercial renrnl 10 the public of rhe original and copies of Lheirsound recordings, even
af1e,·distribution by them by or pursu:111110 au1ho,•iza1ionby the pl'Oducer.111
4. Making available 10 the public of their sound ,·ec<)l'dingsin such a way rhai members of
Lhe public may access Lhesound recording from a place and at a Limeindividually chosen
or selected by Lhcm,as well as other Lrnnsmissions of a sound recording wiLhlike effect." 1 "
5. If a sound recording published fo,· commercial purposes, or a reprotluc1ion of such sound
recording, is used direcLly for broadcasting or for other communication LoLhe pubLic, or
is publicly performed with 1-heintention of making and enh:11,cingprofit, a single eyuirnble
remuneration for the performer or performers, :and the producer of the sound recording
shaU be paid by Lhc user LOboLh Lhcperformers and Lhcproducer, who, in Lhe absence of
any agreement shall sh:1reeqwdly. 211
rughts of Broadcasting Organizations
1. The rebroadcasting of their broadcasts; 1 ~'
""
§204.1, :is nmcndc'tl by Republic Act No. I0372.
229
§206.
§205.
'"
§208.1.
2l2
'"
"'
§2UK.2.
§20K.3.
§208.4.
§20?
§211.1.
45
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
ArlY. CiARK EDWARD R. U\TIC:O,J.D.,R.N.
2.
3.
'!'he recording in any manner, including the making of films or the use nf video tape, of
their broadcasts for the purpose of communication to the public of television broadcasts
of the same;217
The use of such records for fresh transmissions or for fresh recording.'"
Broadcasting - Transmission by wireless means for the public reception of sounds or of
imagesor of representationsthereof; such transmissionby sMcHitcis ;1lsobroadcastingwhere the
means for decrypting arc provided to the public by the broadcasting organization or with its consent. m
Rebroadcasting - 'f'he simulmneous broadcasting by one broadcasting organization of the
broadcast of another broadcasting organization. While the Rome Convention gives broadcasi-ing
organizations 1hc right to authorize or prohibit the rebroadcasting of ii:s broadcast, however, this
1
protection docsnot extend to cable rctran:m,ission.l-1(
Must-Carry Ruic: The "Must-Carry Ruic" favors both broaclcas1ing organizations and the
public. It prevents cable television companies from excluding bmadcasring or1,,nniza1ionespecially in
those places not reached by signal. Also, the rule prevents cable television companies from depriving
viewers in far-nung areas 1he enjoyment of programs available 10 city viewers. This is 10 give the
people wider access comore sources of new~, informtHion,education, sports event and cmcr1ilinmcnt
pro1,o·ams01her 1han 1hose provided for by mass media and affo,·dc,1 1elevision r,rograms 10 attain a
well-informed, well-versed and culturally relined citizenry and enhance their socio-economic
growth ... ,
This rule mandates 1ha1 the local television (l'V) b,·oadcast signals of an autho,·ized TV
broadcas1 sraiion, such :,s the GM/\ 1e1wmk, Inc., should be c:1ri1edin full by rhe cable antenm
television (CATV) operator, wi1hout alteration or deletion. In this case, the CcnLral Ct\TV, Inc. was
found 110110 have violated 1he must-carry rule when it solicited and show~-<ladvertisements in iLscable
television (Ci\'l'V) sysccm. Such solicim1io11and showing of advertisements did not consLitute an
infringement of the "television and broadcast markets" under S~ction 2 of E.0. No. 205... 2
NO'l'I'.: 'l'hc provisions of IPC sh:,11also apply to works, performers, producers of sound
recordings and broadcasting organi,.aLionsllial arc lo be protected by virtue of and in accordance wiLh
any international convention or other international agreement to which the Philir,r,ines is a party ... ,
Limitations on Protection
SEC. 212. I .imitations on Rights. - the provisions of Chapter Vil I shall apply 11111/oliJ'
11111/tmdis
lo the rights of performers, producers of sound recordings and broadcasting organization
'I. The use by a natural person exclusively for his own personal pu171oscs;
2. Using short excerpts for reporting current events;
3. Use solely for the purpose of teaching or for scientific research; and
,.,
"'
,.,
"'
§211.2.
§211.3.
ABS.CBNBtoadcasting
C..otp.vs. Philippi11e
~lulcimcdia
S)'Stcm, I11c., CLal. G.R. Nos, 175769.70,I!>
Janunt)'2C.K1J,
/hid.
/hid.
G1\IA Network, Inc. vs. Central CATV. Inc., G.lt No. 176694, l8July 2014.
§§221.2and 224.2.
OUTLINE
46
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
t\'!'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
4.
Fair use of the broadcast subject to certain conditions. 2•1•1
Term of Protection
The term of protection subsequent to the death of the author shall run from the date of his
death or of publication, but such terms shall always be deemed to begin on the first day of January of
1.hcyear following the event which gave rise to thcm. 245
a. For performances not incorporated in recordings, fifty (50) years from the end of the year
in which the performance took place;
b. For sound or image and sound recordings a11d for pcrfo,manccs incorporated therein,
fifty (50) years from the end of the year in which the recording took place;
c. ln case of broadcasts, the term shall be twenty (20) years from the date the broadcast took
place. The extended 1:ermshall be applied only 10 old works wi1h subsisti11gprotcc1ion
under 1hc prior law.""
Persons whom the rights arc gran1cd
1.
For works
a.
\Xlorks or au1hors who arc na1ionals or, or have 1heir habi1ual residence in, 1he
Philippines;
b.
Audio-visual works Lhc pmduccr of which has his hcad,1ua1'Lcrsor habilual
residence in 1hc Philippines;
c,
\Xlorks of a1·chitcc1ure crccred in the Philippines or Ol'her ar1is1ic works
incorpora1cd in a building or 01her s1rucwrc located in Lhc Philippines;
d,
\Xlorks first published in the Philippines;
e.
\Xlorks first published in :11101he1·
count1·y but also published i,1 rhe Philippi,1cs
wi1hin 1hi1'Ly
days, irrcspccLivc or ll1c naiionalily or residence of Lheaull10rs.24'
2.
For performers
a. Performers who arc naLionals of ll1c Philippines;
b, Pcrfun11crs who :ire nut n:,tionals of the Philippines but whose pcl'fori11anccs:
1.
Take pince in the Philippines;
11.
Arc incorporalCd in sound recordings that arc protected under I l'C; or
111. \Xlhich has not been fixed in sound recording but arc cMricd by
broadcast <1ualifyingfor protection under IPC.""'
3.
Sound recordings
a. Sound recordings the producers of which arc nationals of the Philippines;
b. Sound recordings that were first published in the Philippines."'
4.
Broadcasts
a.
llroadcasts of broadcasting organi;,,ations ll1c headquarters of which arc siwated
in the Philippines; and
,... §212.
,., §214,
"''
,..
,n
,..
§215,
§221.
§222.
§22J,
47
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J"IY, CiARK EDWARD R, U\TIC:O,J.D., R.N.
b.
llroadcasts transmitted from cransmitters situated in the PhiLlppines."''
Presumption of authorship
The n::itural
person whose n::imcis indicatedon ::iwork in the usualmnnncras the authorshall,
in the absence of proof to the contrary, presumed to be the author of the work. ·n,is is applicable
even if the name is a pseudonym, where the pseudonym leaves no doubt as IO identity of the author. 251
'l'hc person or body COl'poratc, whose nnmc appears on the audio-visuril wol'k in the usual
manner shall, in the absence of proof 1:0the contrary, be presumed to be the maker of said work."'
Transfer or Assignment of Copyright
The copyright may be assig,1ed or licensed in whole or in part. Within rhe scope of i:he
assignment or license, the assignee 01· licensee is entitled to all the rights and remedies which the
assignor or licensor had wi1h respect to 1he copyrighi. 111
Requisites for a transfer of copyright to take effect
'I. lf i111cr
11il'fll, rhcrcmust be a writteni11dic:nion
of such inrcntion~and
2. Filed in Na1ional Library upon payment of prescribed fees."''
The copyright is 1101deemed assigne,1 or licensed i11tori•i1'0.<
in whole or in rari unless there is
n wriucn imlica1ion of such in1en1ion.us
The submission of n li1erary, photographic or artistic work 10 a newspaper, magazine or
periodical for publicarion shall cons1i1ute only a license to make a single publica1ion unless a greatc,·
righ1 is expressly w~nted. If rwo (2) o,· more persons joinrly own a copy1·igh1or any pari 1hereof,
nei1her of 1he owners shall be entiiled 10 gram licenses without the prior wriuen consent of the other
owner or owncrs.nr'
The copyright is clisuncl Crom 1he property in the material object subject to i1.Conscc1ucn1ly,
1he transfer, :,ssignment or licensing of the copyright shall nut itself constitule a transfer of the material
object. or shall :, transfer or assignment of the sole coj'Y or of one or sever:tl copies of the work
imply transfer, assignment or licensing of the copyrighL"
The owners of copyright :,ml related rights or their heirs may desigMte :, society of artists,
writers, composers and other righu1olders to coUcctivcly manage their economic or moral rights on
their behalf.
For Ll1csaid societies to enforce the rights of Ll1eirmembers, Ll1eyshall first secure the
necessary accredirntion from the Intellectual Property Office."'
,.,
'"
"'
'"
"'
m
§224.
§219.1.
§219.2.
§180.1,:is nmcndc'tl by Republic Act No. I 0372.
§182.1.
§180.2,as amendeJ by Republic Act No. I 0:172.
§180.3,:is nmcndc'tl by n,,,ublic Act No. 10372.
§IRl.
""
§183.
OUTLINE
48
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
ArtY. CiARKEDWARDR. U\TIC:O,J.D., R.N.
LlMlTATlONS ON COPYRIGHT
General Limitations
Reproduction of Architecture Works
Copyright in a work of architecture shall include d1e right co control the erection of any
building which reproduces the whole or a substantial part of the work either in its original form or in
any form recognizably derived from the original, provided, that the copyright in any such work shall
not include the right to control the reconstruction or rehabilitation in the same style as the original of
a building to which that copyright relates.>Yi
Reproduction of Published Works
The private reproduction of a published work in a single copy, where the reproduc1io11is made
by a natural person exclusively for research and private study, shall be pcrmiu:ed, wi1hout 1hc
au1horization of the owner of copyright in the work but shall 1101exi:end LO the reproduction of:
a. /\ work of architecture in che form of building or other consrrucrion;
b. /\n encfre book, or a subsrnntial pnrt rhereof, or of a musical work in graphic fonn by
rcprographicmeans;
c. 1\ compilation of data and other materials;
d. /\ computer program except as provided in Section 189; and
e. /\ny work in cases where reproduccion would unreasonably connict wich a normal
exploirntion of 1he work or would otherwise unreasonably prejudice che legitimnre
in1eres1sof the author."''
Published works
Those works which, with the consent of the autl10rs, arc made available LOtl1c public by wire
or wireless means in such a way that members of the public may access these works from a place and
cimc individually chosen by them: provided, thar availabilicyof such copies has been such, as 10 satisfy
the reasonable rec1uiremcn1.of the public, having rcb,arclLOthe na11.11·e
of the work."''
Rcprographie Reproduction by Libraries"·'
Any ~brary or archive whose activities arc 1101for profit may, without the aull10rization of the
aut·hor or copyright owner, make a limited number of copies of the work, as may be necessary for
such institutions to fulfill their mnnd:1tc, by rcprographic reproduction:
a.
Where the work by reason of its fragile character or rarity cannot be lent tCJ user in its
original form;
b.
c.
Where the works arc isolated articles contained in composite works or brief portions of
other published works and the reproduction is necessary to supply them, when this is
considered expedient, to persons requesting their loan for purposes of research or study
instead of lending the volumes or booklets which contain them; and
Where the making of such limited copies 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
,,., §18(,,
§187.
§171.7.
§188.1,as amended by Republic /\ct No. 10372.
49
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
permanent collection of another similar ~brary or archive, a copy which has been lost,
clcstroycclor rcndcrccl unusable and copies arc not available with the publisher.
fiut it shall not be permissible to produce a volume of a work published in several
volumes or to produce missing tomes or pagesof magazinesor similnr works, unlessthe
volume, tome or part is out of stock.
Reproduction of Computer Program
The reproduction in one back-up copy or adaptation of a computer program shall be
permitted, without the authorization of the author of, or other owner of copyright in, a computer
program, by rhc lawful owner of that computer program, provided, the copy or adaptation is neccssar)'
ror:
a. 'l'hc use of rhc computer program in conjunction with a computer for 1he purpose, and
to 1he e<1en1,ror which the compu1er program has been obrained; and
b. Archival purposes, and, ror 1he replacement of 1he lawfully owned copy or 1hc compu1er
program in the evenr 1hat the lawfully obtained copy of 1hc computer program is lost,
dcs1roycd or rendered unusablc.261
No copy 01· adaptation mentioned in 1his Scc1ion shall be used for any purpose
other 1han 1he ones de1e1-minc,Iin 1his Scc1ion, and any such cory 01·adaptniion shall be
des1roycd in the evcn1 1ha1continued pMscssion of 1he copy of the compu1cr program
ceases to be lawful.
lmporrntion and Exportation of Infringing Materials
Subjec1 m the appn,val of 1he Scc1·c1aryof Finance, the Commissioner of Customs is hereby
empowered lO make rules and rcgulntions for rrevcnting the imrorrn1ion or exportation of infringing
articles prohibited under l'an IV of this /\ct and tinder relevant treaties and conventions 10 which the
Philippines m:,i• be a rarty and for seizing and condemning and disposing of the same in case they arc
discovered after they have b~-cnimponcd or before they arc exponcd."''
DOCTRINE OF FAIR USE
Fair Use is :1 privilege, in persons other than the owner of the copyright, tu use the copyrighted
m:,tcrial in a reasonable mnnner without his consent, notwithstanding the monopoly 11rantctltu the
owner by the copyright."" It is meant to balance the monopoljes enjoyed by the copyright owner with
the interests of the public and of society.
The fair use of a copyrighted work for criticism, comment, news reporting, teaching inclucling
limited number of copies for classroom use, :;cholf!rship,research, and :;imih,rpurposes is not an
infringement of copyright.
"Fair Use" permits a secondary use that "serve:,;the copyright objective of stimulating
productive thought and public instruccion without excessively diminishing the incentives for
creativity."
§18?.I.
§190, as amcndc'tl by Republic Ac< No. 10372.
I l()RA(:E G. BAU.., LAW()11COPYRl(;Jn· AND LnHRARY PROPERTY (1944}.
50
OUTLINE IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
ArlY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
Decompilation may be considered fair use
Refers lO 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 pro1,'fams,
may also constitute fair use under the criceria cscablishcd Sec. 1RS, to the extent chat such
decompilation is done for the purpose of obrnining the information necessary to achieve such
intcropc1;1bility.:?M
NO'J'Li: The fact that a work is unpublished shall not by itself bar a finding of fair use if such
finding is made upon considcracion of all the above factors."'' 1lowever, if the copy was reproduced
IO such an extent as tantamount to a rcduccion in the marketability of the book, it is no longer fair
use.
Factors 10 consider in determining Pair Use
1. The purpose and charac1er of the use, including whe1her such use is of a commercial na1urc
or is for non-profit educational purposes;
2. The nature of the copyrigh red work;
3. The amount anti subs1anciality of 1hc poriion used in rcla1ion lO 1hc copyrighted work as a
whole; and
4. The cffec1 of Lhcuse upon 1he rmcn1ial market fo,· or value of 1hc copyrigh1cd work."•
The format of a show is nm copyrighrnble."''
/I compilation is not copyrighrnble per se, bu1 it is copy,·ighmble only if irs foc1s have been
selected, coordina1ed, or a,·rangcd in such a way 1ha1 the rcsuhing wod, as a while consricu1es an
original work of authorship. Otl1crwisc known as the Sweat of the llrow or Industrious Collection
·r·csL.2?1)
Plagiorism
isessentially
rt founoffraud
wherei1uenttodeceiveis inherent,
'l'hcirLhcory
provides no room fo,· crro,·s in research, :,n w11'calisticposition considering that there is hardly nny
substnntial written wol'k in any field of discipline that is fr(,'C of :111ymisrnkc. 'J'he theory plnces an
automntic universal curse even on errors thnt, as in this case, have reasonable and lob-ical
explanntions. 271
lndccd, the 8th t,-<liLion
of Black's Law l)icLionary deGnes plagiarism as Lhc "delibernte and
knowing prcscnt:niun of another person's original ic.lc:isor creative expressionsas one's own."~
plagiarismpresupposesintentand a deliberate.consciouseffort10 steal another'sworkand
passit offas one'sown,212
§185.
§182.2.
§185.1.SeeoLro:
I larpel'& Row, Publishets.l11c,,cl al. vs, Natio11Emcrpriscs,et al., 71 U.S. 539 (1985).
Fn1nciscoG. Jo:ll1\1in,
Jr. and BJ Productions,Inc. vs. I lonor:,blc Fn1nklinDrilon, ct ;,I., G.lt No. 108946,28
January 1999.
'"
"'
Feis1PublicaLioo.s,
Joe.vs. RuralTclepho11e
SetviccC..omp:t1\}l,
Inc., 499 U.S. 340 (1991).
In the Mauer of the Chargesof Plagiarism,etc. Awiinst t\ssochtcJusticcMari:moC. Del Castillo,A.1\t No. I0-7-
17-SC,15 October 2010.
/hid.
OUTLINE
51
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CiARK EDWARD R. U\TIC:O,J.D.,R.N.
Plagiarism exception for Justices, Judges, Lawyers, and Court Officers
A judge writing to resolve a dispute, whether trial or appellate, is exempted from a charge of
plagiarism even if ideas, words or phrases from a law review article, novel thoughts published in a
legal periodical or language from a party's brief arc used without giving attribution. Thus judges arc
free to use whatever sources they deem appropriate to resolve the matter before them, without fear
of reprisal. This exemption applies to judicial writings intended 10 decide cases for two reasons: the
judge is not writinga litcmrywork ;1nd,more importnntl)r, the purpose of the writingis to resolve a
dispute. As a result, judges adjudicating cases arc not subject to a claim of lq,,al plngiarism.211
The Court will not, therefore, consistent with established practice in the Philippines and
elsewhere, dare permit the filing of actions to annul the decisions promulgated by its judges or expose
them to charges of plngiarism for honest work done. 'J'his rule should apply 10 practicing lawyers as
well. Counsels for the petitioners, like all lawyers handling cases before courts and administrntive
tribunals, connot object to this. Although as a rule they receive compensation for every pleading or
paper they lile i11court or for every opinio11 they render 10 clients, lawyers also need to strive for
technical occurocy in their writings. They should not be exposed ro charges of plagiarism in whnt they
write so long as they do not depart, as officers of rhe court, from rhe objective of assisting the Court
in 1he administration of justice.2"
COPYRIGHT INFRINGEMENT
lnfciJJPl'OO!'llC
of C!!ll)'til'bl aml llrlarrdRi1•IJ1s:
mcons any violation of the rights under the
lmellccwal l'ropcrty Code and/or Lhcapplicable l11tcllcc1uall'ropcny l~1w,including the ocl of ony
person who :u the time when copyright subsists in o wod( has in his possession an a,·1iclewhich he
known, or ought to know, to be an infringi,,g copy of the wod( for 1hc puq1osc of:
I.
2.
3.
Selling, lening for hire, or by way of Lmdeoffering or exposing for sale, or hire, the aniclc
Distribu1ing 1hc article fo,· purpose of Lrndc,or fo,· nny 01hcr purpose 10 an cxrcnt that
wilI prejudice Lhcrigh LSof Lhccopyrigh l owner in Lhcwork; or
'J'radc exhibir of the al'ticle in public."'
lnfongcmelll consists in the doing by any person, without Lheconsent of Lhc owner of Lhc
copyright, of anything the sole right to do which is conferred by statulc on the owner of the copyright.
For there to be substantial reproduction of a book, it docs not neccss:irily ret1uire that the entire
copyrighted work, or even a large porLion of it, be copied. If so much is tnken that Lhe value of the
original work is substantially diminished, there is an infringement of copyright and to an injurious
extent, the work :1ppropriated. lt is no defense th:,t the pirntc 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 nL his
peril. In cases of infringement, copying :done is not whnt is prohibited. The copying must produce an
"injuriou:,;
cffcct."27''
2n
SNpm:u 110Le 267.
,,,
/hid.
§I 0), lltilc I, lltilcs and Rcb,ul:itions
on AdministrativeComplaints for Viol:Hionof I .awsinvolving I ntclk.-ctrn1I
li(,
PropertyRights.
PacimI. 1labaoa,CLal. vs, FelicidadC. Roblesa.-ldGoodwillTrodi11gCo., loc. G.R. No. 131522,19Jul)'1999.
li-'
52
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\rlY. CIARK EDWARD R. U\TIC:O,J.D.,R.N.
Copyright infringement and unfair competition arc not ~mited to the act of selling counterfeit
goods. ·n,ey cover a whole rnnge of acts from copying, assembling, packaging to marketing, including
the mere offering for sale of counterfeit goods.m
,\ copy of a pirncy is an infringement of the original, and it is no defense that the pirate, in
such cases, did not know what works he was indirectly copying, or did not know whether or not he
was infringing:
any copyright~he at leastknew th;1twhnt he w;1scopying:w;1snot his, and he copied at
his peril. Tn determining the question of infringement, the amount of matter copied from the
copyrigh1cd work is an important consideration. To constitute infringement, it is not necessary that
the whole or even a large portion of the work shall have been copied. Tf so much is taken that the
value of the original is sensibly diminished, or the labors of the original author arc substantially and to
a11injurious extent appropriated by another, 1hat is suflicicnt in point of law co constitute a piracy.''"
The following acts shall NOT cons1im1e infringement of copyright:
L
Rcciro1ino
or Pcrfnrmnncp
of n work,onceit hns12"mlawfullymmkncc<'ssi!JI<10 rhc
lllJ]:ilic,if done privately and free of charge or if made strictly for a charitable or religious
ins1i1.L1Lion
or socicLy;rr-"}
2. Makinp
ofM11ornrioos
fromapublisbt·d
workifrbcyan·comparihlr
wil'hfairus,·andonly
to the extent jusLjficdfor the pumosc. including quorn1ions from newspaper ar1iclcs and
periodicals in the form of press summaries: Provided, That the source and the name of
the author, if appearing on rhc work, arc mentioned;""
3. R<:prnduction
or communicmion
IO 1hcnublicl2ymossmediaof nniclcs
on currcnc
pc.>licical,
socinl,cc<>n<>mic,
scicn1ific
<>rl'cligious
1·opic,
lcc1urcs,
nddrcsscs
nnd01hc1·
wo1·ks
of 1hc same nature, which arc delivered in public if such use is for ioforma!ion purposes
and has not been expressly reseLvcd: l'rovid~-d,That the source is clearly indicated;"'
4. )l{'produc1ion
nndcommunicn1ion
101hcp11blic
of lilL'rncy,
sciLnliGc
orar1is1ic
works
as
qf cnrrc;nr
S'YS'OUi
(e.g.musicpbycdor wncson chcocc:isionof:,spor1ing
parrof J'S'PJ2CJS
event and such tunes were picked up during a new covcrni,rcor Lhe event) by means or
photography, cinema1ography or broadcas1ing to the extent necessary for the purpose;'"
s. lncl11si1m
c,fa wc>rk
ln a publicmion
broadcast
or 01hrc
communicaiicm
rorbepubHc
soundrecording
or Glm.if suchinclusion
is madebywayoCillus1ra1ion
for leaching
pumoscs and is comratiblc with foir use: Provided, That the source and of the name of
the author, if appearing in the work, arc mentioned;'"
6. Recording
mads:
in l~ducaiional
inslitwions
ofa workinclt1ded
ina broadcasl
for1beuse
instiHuions,
provided th:ttsuch recordingmustbe deleted within :,
of sucheducational
reasonable period after they were first broadcast: Provided, further, ·111atsuch recording
may not be made from audiovisual works which arc part of the general cinema rcpcrLOirc
of feature films except for brief excerpts of the work;'"'
Corporntion ant.I LoIus Development Corporntion vs. ~l:1xicorp,Inc., (;Jt No. 14094(,, 13 Scplcmbcr
"' ~licmsoft
2004.
,.,, Columbia Pictures, l11c.,ct al. vs, Cour1or Appeals,ec al., C.R. No. II031K, 28 August 1996.
§184.t (,).
,.,. §184.t(b).
211)
""
""
""
""
§184,l(c).
§184.t(,Q.
§11\4.t (c).
§184.1(f).
53
OUTLINE
i\rlY.
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
CiARK EDWARD
R. U\TIC:O,J.D.,R.N.
7.
8.
9.
Making of ephemeral recordings by a broadcasting organization by means of its own
facilitiesand for use in its own broadcast;us
Use made of a work by or under the direction or control of the covernment, 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/"'
Public performance or the communication ro the public of a work in a place where no
ridmissionfee is chn.rgcdin respect of such public performanceor communication,by a
duh or instirurioo
for cbarimble
or educational
purpose
nn)y,
whose aim
is not profit
making, subject to such oi:hcr limitations as may be provided in the Regulations;"'
10.
PublicDisplay
of theorivinal
ora copyof rbc.·
w0 rknotmadebymeansof a film,slide,
rdcvision
imags;
or or)wovisc
on::;crccn
or b>'means
of ;myor)wrdeviceor process
(e.g.
Public display using pos1ers moumed on walls and display boards), Provided, 'J'hat either
the work has been published, or, thM original or the copy displayed has been sold, given
away or otherwise 1ransrerreclto ano1hcr person by rhc author or his successor in ritlc;""
11. Any use made of a work for the purpose of an)' judicial procccdinwi or for the i:rivi1wof
211
profcssional
advin· b)r a kvalpracririoocr~
•>
·12. Reproduction or djsrrjburjon of puhljslwd rnicl<•s or marnials io a specialized formar
cxduslvcly
(ortheuseof theblindvisualhandreadirw·lmpaircd
persons:
l>rovic.lcd,
chac
1..
such copies and disrribution shall be made on a nonprofit basis and shall indicate rhc
copyright ownc,· and Lhcdale or the original publica1ion.""
"''
§184 l(g),
§184.101).
§184.l(i).
§184 IQ).
§11\4l(k).
§ 184.10), as amended by Republic /\ct No. !0372.
54
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
/\rlY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
ANNEX "A" - RULES ON OWNERSHIP OF COPYRIGHT
WORK
Sine-le Creator of an Orieinal Work
Works of Joint Ownership
created
employment
Work
during
the
course
OWNERSHIP
l:lclongs to d1e author of the work."'
nelongs of the co-authors; in the absence of
agreement, their righL~shall be governed by the
rules on co-ownership. 1lowever, if the work
consists of parts that can be used separatcl)' and
identified, the author of each part owns the
convril!ht of the nart he has created.""
of 13elongsm 1he employee if Ihe creation is not a
part of his rq.,'l,lar duties, even if he used the
1imc, faciliries and ma1crials of 1he cmploi•er.
I lowevcr, belongs to 1he employer if the work is
in the performance of the employee's re1-,'l1l01·
duries unless 1hcrc is an agreement io 1he
conLrarv.2'J'\
Work commissioned
by a person other than
the employer
Audio-visual works
Letters
Anonymous and pseudonymous
works
Collective works
'l'hc person who commissioned the work holds
ownership of rhc work per se, but copyright
remains wich chc crcamr unless there was n
sdoula1ion to 1hc contmrv.''"'
flclongs 1·01he producer, au1·horof 1he seena,-io,
composer of the music, lilm director, and mathor
of rhc adapred wo,·k. I lowever, subjec1 10
slipulations, 1he protluccri, shall exercise 1he
copyright as ma)' be required for the exhibition
of I he work, except for I he riglu 10collecr license
fees for the perforrnance of musical
comnositions in the work!"
l:lclongs Lo tl1e writer, but the court ma)'
authorize their pubLication or dissemination of
che public good or interest of justice rc<1uires,
oursuant 10 J\n. 723, New Civil Co<lc?"
Publishers :ire deemed to represent the :tcathors,
unless the conuary appmrs, the pscudon)'ms or
adopted names leave no doubt as to the author's
identity or if the author discloses his identity."'
1\ contributor is deemed to have waivcd his right
unless he cxprc:;slyrc:,;crvcsit.2''it
"'
m
"'
"'
.,,
,x,
"'
""
§17K.I.
§17K.2.
§178.3.
§17K.4
.
§17K.5.
§178.(,.
§17?.
§1%.
55
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'l"IY. CiARK EDWARD R. U\TIC:O,J.D., R.N.
ANNEX "B" - DURATION OF COPYRIGHT
WORK
OWNERSHIP
Original
Literary
and Artistic Works
includin(? Posthumous Works
Derivative Works including Posthumous
Works
Joint Authorship
Lifetime of author and for fifty (50) years after
his death.,,,
Lifetime of author and for fifty (50) years after
his death."'
Lifetime of t.hc last surviving author and for fifty
(50) vca,·s after his dcach.'"
Fifty (50) years from date of first lawful
publication.'"
Twcnrv-live (25) vcars from dace of makin11:'''
Fiftv 50) vears from oublicacion. '''
Jliftv SO)years from che makinl!.'' 1
Fiftv Sm vears from nublication. "'
Fifty 50) years from chc makinl(.'''
Anonymous or Pseudonymous
Works
Annlicd Art
Published Photo1?raohic Works
Unoublished Phototmmhic Works
Published Audio-visual Works
Un1>ublished Audio-visual Works
ANNEX "C" -
COLLECTIVE
WORK
vs,JOINTWORK
COLLECTIVEWORK
JOINT WORK
Hlcmcnts remain unintc.u;r:1tcdand disparate.
Work crcmed by 2 or more persons al the
initi:uivc :111dunder the direccion of anoche,·,
with the understanding thac it will be disclosed
by the latter under his own nnmc and that nf the
con1ribu1ions of nawral persons will NOT be
identified.
Hach author sh:,11enjoy copyrighc 10 his own
contributions.
The work will be at111bu1~-..l
to the person under
whose Lnit.iatlvcand dircCLion it was created
unless the contributory expressly reserves his
riuht.
Sel)nraceclements meri,;einm a unified whole.
Wnrk prepared by two (2) or snore nuthnrs with
che intcncion 1ha1their concribucions be merged
into insepnrnble or independent pnrts of the
unitnry whole.
2911
...
...
'"
••,,
..,
••
'"
Joint authors sh:dl be co-owners. Co-ownership
under the Civil Code will annly.
Joint :,uthors sh:111be both entitled LO the
acknowledgement as authors of the work.
§213.1.
§213.1.
§213.2.
§213.3.
§213.4.
§213.5.
§213.5
§213.6.
§213.6.
56
OUTLINE IN INTIC:.LLECTlJAL
PR()lll!..RTY]..A\~1
i\"J'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.
ANNEX "D" - COPYRIGHT JNFRJNGMENT vs. PLAGJARJSM
Definition
Coverage
Public Document
Manner of copying
Expression
COPYRIGHT
INFRINGEMENT
The
unauthorized
of
use
copyrighted material in a manner
that violates one of the copyright
owner'sexclusiverights,such as the
righr to reproduce or perform the
copyrighted work, or 10 make
derivative works rhat build upon ir.
Copyright infringcmeiu is a very
broad term that describes a variety
of acts. It may be duplicarion of a
work, rewri1jng a piece, performing
a written work or doing anything
1hat is normally considered to be
1he exclusive righ 1.of Ihe copyrigh 1.
holder.
There is no copyright inf,·ingement
on public documents.
PLAGIARISM
·n,e
of
:mother's
USC
lnformation. language,
or
writing. when done without
proper acknowledgment of the
originalsource.
Plagiarism is specific as it refers
only to usmg someone cl~c's
work
wirhout
proper
acknowledgement.
l'ublic documents
C:111 be
plagiarized so long as it is 110!
acknowlcdited.
In copy,·igh1 infri,1gcmcn1, the In pl:tgi:lrism1·hccopying need
co1win1tmust be substamial.
1101be subsrnn1ial.
In copy,·igh1 infri11gcmcn1, the Plagiarism, may exist even if
copying must refer lO tl1c none of the same words arc used
10 express an idea.
expression of an idea.
57
OUTLINE
IN INTIC:.LLECTlJALPR()lll!..RTY ]..A\~1
i\'J'IY. CIARK EDWARD R. U\TIC:O,J.D., R.N.