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The Philippines
by
ALELI ANGELA G. QUIRINO
APAA 50th Council Meeting
24-27 October 2004
Fukuoka, Japan
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I. Changes in Intellectual
Property Laws
 Optical Media Act of 2004
- Enacted into law on 02 March 2004.
- Implementing agency: Optical Media
Board (“OMB”)
- IRR, not yet promulgated
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I. Changes in Intellectual
Property Laws

Optical Media Act of 2004
- Optical Media (elements):
1. A storage medium or device
2. Contains information, including
sounds and/or images, or
software code, which has been
stored, either by mastering or
replication
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
I. Changes in Intellectual
Property Laws
Optical Media Act of 2004
- Optical Media (elements):
3. May be accessed & read using a lens
scanning mechanism employing a high
intensity light source such as a laser or
such other means as may be
developed in the future
4. Includes, but is not limited to, devices
which shall be listed in the IRR, or as
prescribed by the OMB
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
I. Changes in Intellectual
Property Laws
Optical Media Act of 2004
- Regulated activities (license, required
from OMB):
1. Importation, exportation, acquisition,
sale & distribution of optical media &
equipment for manufacturing or
replicating optical media
2. Possession or operation of optical
media manufacturing/replicating
equipment
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
I. Changes in Intellectual
Property Laws
Optical Media Act of 2004
- Regulated activities (license, required
from OMB):
3. Mastering, manufacture, replication,
importation, or exportation of optical
media
- License, valid for a period of three (3)
years
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
I. Changes in Intellectual
Property Laws
Optical Media Act of 2004
- Source Identification Code (“SID Code”):
A system of codes used to identify the
source of all optical media mastered,
manufactured, or replicated by any
establishment or entity
- OMB prescribes the SID Codes for all
licensed/registered persons & entities.
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
I. Changes in Intellectual
Property Laws
Optical Media Act of 2004
- Punishable Acts:
1. Engaging in a regulated activity
without the necessary license from
the OMB
2. Failing to affix the proper SID Code
3. Affixing a false SID Code
4. Affixing the SID Code assigned to
another person
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I. Changes in Intellectual
Property Laws

Optical Media Act of 2004
- Punishable Acts:
5. Manufacturing/replicating any
intellectual property in optical
media without the authority or
consent of the owner thereof
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
II. Changes in Intellectual
Property Practice
Amendments to the Philippine Rules
on PCT Applications
1. IPO Office Order No. 123
- Int’l application, deemed regularly
filed with the IPO as of the int’l
filing date, subject to certain
requisites
2. IPO Office Order No. 124
- Guidelines for requesting early
publication of application
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

II. Changes in Intellectual
Property Practice
Incorporation of Classes 42, 43,
44 & 45 of the Nice Classification in
the IPO Rules
- IPO Office Order No. 104
Optional registration of trademark
agents, patent agents, patent &
trademark agents, and resident
representatives
- IPO Office Order Nos. 129 and 14
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II. Changes in Intellectual
Property Practice

Rental of IPO Boxes
- IPO Office Order No. 127
To be eligible, law offices must
have at least one (1) senior officer
who is duly registered with the IPO
as a resident representative or a
patent agent.
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
II. Changes in Intellectual
Property Practice
Increase in the IPO fees
- IPO Office Order No. 128
 Increases ranging from 30% to
300%
 50% reduction for youth filers
 20% reduction for electronic
filing
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
II. Changes in Intellectual
Property Practice
Notice of IP registration to recover
damages in infringement cases
- IPO Office Order No. 02
Types of registration notice:
1. “Registered Mark”, “®”, or
“Reg.IPOPHIL”, for registered marks
2. “Philippine Patent” or “Reg.IPOPHIL”
& patent number, for registered
patents
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II. Changes in Intellectual
Property Practice

Protection of state emblems &
logos
- IPO Memorandum Circular No. 4
Government agencies are
encouraged to submit to the IPO
two (2) sets of the representation
of their official logos, seals, etc..
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A.

III. Relevant Intellectual
Property Decisions
Court Decisions
Smith Kline v. Court of Appeals
(GR No. 126627, 8/14/2003): The Supreme
Court (“SC”) refused to apply the doctrine
of equivalents and dismissed Smith Kline’s
infringement case against Tryco Pharma for
failure to show that its patent covers the
compound “Albendazole”.
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III. Relevant Intellectual
Property Decisions

246 Corp./Rolex Music Lounge v.
Daway & Montres Rolex S.A. (GR No.
157216; 11/20/2003): The SC held that the
determination of the existence/absence of
the requisites for the application of the IP
Code provision on well-known marks
registered in the Philippines, i.e., Sec.
123.1(f), is lodged with the trial courts.
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
III. Relevant Intellectual
Property Decisions
Mighty Corporation v. E&J Gallo
Winery (GR No. 154342; 7/14/2004):
The SC dismissed the infringement &
unfair competition case filed by Gallo
Winery, finding that no damage &
likelihood of confusion will result due to –
1. Unrelated goods (cigarettes v. wines)
2. Differences in the marks, applying both
the dominancy & holistic tests
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
III. Relevant Intellectual
Property Decisions
McDonald’s Corp. & McGeorge Foods
Industries v. L.C. Big Mak Burger,
Inc. (GR No. 143993; 8/18/2004):
Applying the dominancy test, the SC
found L.C. Big Mak guilty of trademark
infringement & unfair competition for
using the mark “BIG MAK”, a colorable
imitation of McDonald’s “BIG MAC” mark,
for hamburger sandwiches.
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
III. Relevant Intellectual
Property Decisions
Sonic Steel Industries v. Steel Corp.
(Case No. 04110958, Manila RTC Branch
24; 9/28/2004): Manila trial court
dismissed Sonic’s case against Steel Corp.
and upheld the latter’s copyright over a
certain metal ornamentation & design
found on its aluminum-zinc coated G.I.
sheets.
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B.
III. Relevant Intellectual
Property Decisions
Bureau of Legal Affairs, IPO
(“BLA-IPO”) Decisions
Patents

No significant patent cases were decided
by the BLA-IPO.
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III. Relevant Intellectual
Property Decisions
Trademarks
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
Absolute & complete ownership of a
trademark is acquired through actual
commercial use of the same.
- Mighty Corporation v. Associated Anglo
American Tobacco Corp.: “HONGTASHAN” &
“MILLION” marks for cigarettes; BLA-IPO
ruled that Mighty Corp. is the true owner of
the marks for having presented adequate
proof of actual use (tax clearance, sales
records, etc.).
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
III. Relevant Intellectual
Property Decisions
Absolute & complete ownership of a
trademark is acquired through actual
commercial use of the same.
- Storm Products, Inc. v. Sun 99 Limited of
London (IPC No. 14-2002-00021;
3/31/2004): “STORM” mark for Classes 25
& 28; BLA-IPO upheld Sun 99’s TM
application for “STORM” since it was able to
present proof of actual use & due to Storm’s
failure to substantiate its claim of actual use.
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
III. Relevant Intellectual
Property Decisions
Absolute & complete ownership of a
trademark is acquired through actual
commercial use of the same.
- Macario Co Yu Kang v. BTR Industries
Limited (IPC No. 14-2003-00051;
7/29/2004): “DUNLOP” mark for Class 25;
BLA-IPO upheld Kang’s cancellation petition
since he was able to present sufficient proof
of actual use of “DUNLOP” & BTR Industries
abandoned its registration by not using &
renewing the same.
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III. Relevant Intellectual
Property Decisions
Cases decided applying the holistic
test
- DC Comics v. William Lim: “SUPERMAN”
for magazines v. “SUPERBITES” for corn
snacks; BLA-IPO found that the similarity
in the two marks, i.e., “SUPER”, fades in
the light of the substantial differences in
meaning, pronunciation, spelling, & goods
covered.

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
III. Relevant Intellectual
Property Decisions
Cases decided applying the holistic
test
- Origin Products Ltd. v. Carmelita Cruz
(IPC No. 14-2002-00057; 2/26/2004):
“POLLY POCKET” for Class 28 v. “POLLY
POCKET & Design” for Class 25; BLA-IPO
found that Cruz’s mark (“POLLY POCKET
& Design”) is identical in all aspects with
Origin’s mark (“POLLY POCKET”)
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III. Relevant Intellectual
Property Decisions

Cases decided applying the holistic
test
- Snak King Corp. v. JO-NA’s Int’l (IPC No.
14-2001-00050; 4/1/2004): “SNAK KING”
v. “SNAK KING & Crown Device”;BLA-IPO
ruled that both marks are identical both in
appearance and to the goods for which
they are used, i.e., pork rinds
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
III. Relevant Intellectual
Property Decisions
Cases decided applying the holistic
test
- ACCO World Corp. v. Choa Beng (Inter
Partes Case No. 3262; 4/12/2004): “ACCO”
for Class 16 v. “ARCO” for Class 16; BLA-IPO
ruled that the differences in spelling & sound,
despite the similarity in most of the letters
used, results in two distinct & dissimilar
marks
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
III. Relevant Intellectual
Property Decisions
Cases decided applying the holistic
test
- Warner Lambert Co. v. Perfetti S.p.A.
(IPC No. 4043; 5/31/2004): “CLORETS” v.
“CHLORALIT”; BLA-IPO ruled that the
two marks are not confusingly similar
finding that the only similarity between
the two is the use of four identical letters
in their first syllables, i.e., “C”, “L”, “O”
and “R”
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
III. Relevant Intellectual
Property Decisions
Case decided applying the dominancy
test
- Zamboanga Restaurant v. Cathay Pacific
Multi Commodities Corp. IPC No. 14-199800073; 3/31/2004): “ZAMBOANGA” for
restaurant services v. “ZAMBOANGA Brand &
Device” for seafood products; BLA-IPO ruled
that the two marks are confusingly similar,
finding that they both use the word
“ZAMBOANGA” as their dominant feature,
notwithstanding the presence of other words
& devices
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
III. Relevant Intellectual
Property Decisions
Abandonment, when considered
forfeiture of rights to a mark
- Westpoint Pepperell, Inc. v. Universal
Towel Mfg. Co. (IPC No. 3414; 5/28/2004):
Abandonment must be shown by clear &
convincing evidence. To work as a
forfeiture of one’s right, disuse must be
permanent, intentional, & voluntary. BLAIPO ruled that non-use due to a pending
case cannot be considered as
abandonment.
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
III. Relevant Intellectual
Property Decisions
Protection accorded to owner’s of wellknown marks applies only if covered
goods/services are similar
- DC Comics v. Fortune Tobacco (IPC No. 142002-00025; 3/31/2004): “SUPERMAN” for
magazines v. “SUPERMAN” for cigarettes;
BLA-IPO said that the protection of the Paris
Convention on well- known marks applies if
the goods/services covered by the competing
marks are similar or related. Nonetheless,
BLA-IPO ruled that DC Comics’ goodwill will
be whittled away by Fortune’s use of
“SUPERMAN”.
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IV. Other Matters
of General Interest

Supervision of the IPO transferred
from the Office of the President to
the Department of Trade & Industry
on 09 August 2004
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
IV. Other Matters
of General Interest
Creation of a Permanent IP Unit in
the Bureau of Customs
- Customs Special Order No. 19-2003:
Functions of the IP Unit include –
1. Supervising the implementation of
IP border control policies
2. Processing applications for Customs
recordal of IP rights
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
IV. Other Matters
of General Interest
Creation of a Permanent IP Unit in
the Bureau of Customs
- Functions of the IP Unit include:
3. Acting on requests for Alert or
Hold Order
4. Investigating & prosecuting IPR
violations in the proper
forfeiture proceedings
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
IV. Other Matters
of General Interest
Creation of an IPR Unit in the
National Telecommunications
Commission (“NTC”)
- Discussions ongoing between the IPO
and the NTC
- Possible regulation of cable TV
operations
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
IV. Other Matters
of General Interest
Consequences of abolition of special
IP courts and merging the same
with SEC courts; new courts named
Special Commercial Courts (“SCC”)
- Pending IP cases retained by the
original special IP courts
- Training of new SCC judges
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
IV. Other Matters
of General Interest
IP-REAP gaining ground
- Template ordinance adopted by LGUs
- Colloquium for judges (WIPO)
- Training of prosecutors/law enforcement
authorities
- IPR awareness caravans
- IPR awareness as part of values formation
in schools
- MOA with NTC
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
IV. Other Matters
of General Interest
IPR week Celebration
- ASEAN seminar/workshop (ECAP)
- Trademarks fair (“Catchy Marks to
Catch Your Customers”)
- On-the-spot painting contest /
poster making contest
- National essay writing contest
- “Bright ideas” contest
- Launching of book on IPO decisions
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MARAMING SALAMAT!