LIP Class Notes 2016 Atty.
Castillo
LAW ON INTELLECTUAL PROPERTY
Atty. Risel G. Castillo-Taleon
MIDTERMS
Introduction
Paris Convention on Protection of Intellectual Property
RA 166 Trademark Law
RA 165 Patent Law
President Marcos promulgated PD 72 Copyright Law and other
neighboring rights such as those granted to musicians and
performers
General Agreement on Tariffs and Trade
o TRIPS agreement to protect Intellectual Property. Some
provision were different from Treaty of Paris
Patent used to be protected for the span of 17 years from the
date of the grant It is now 20 years from the date of filing
Because of the need to codify the requirements under the Paris
Convention, GATT, and TRIPS agreement, RA 8293 or the
Intellectual Property Code was enacted
TRIPS Agreement required the establishment of IPR Office headed
by a director general
The IPC does not contain a bureau on copyright. Instead, Copyright
must be registered with the National Library Bureau of Patents
Now with the IP Office.
Come the entry of pirated shirts from China. All things fake were
being manufactured in the PH. We were watch listed by the U.S.
We had to intensify our drive against piracy. Thus, the Optical
Media Act was enacted creating an Optical Media Board in order to
bend to the dictates of industrial countries
Protection of IP is TERRITORIAL your registration in the
Philippines does NOT protect your IP in another country if you did
not register it there. Thus, if you have a mark that you want to
register, you must register it in each and every country. You need
to hire a lawyer in each country to assist in the registration.
o However, the Madrid Protocol system permits the filing,
registration and maintenance of trade mark rights in more
than one jurisdiction, provided that the target jurisdiction
is a party to the system. Here, you only need to list down
the countries in which you want your trademark protected
and pay the corresponding filing fees. If rejected, this is
the time you go directly to each country and hire a lawyer
there.
o There was a debate that Madrid Protocol is a treaty which
requires ratification from the Senate. However, the Senate
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did not ratify. Hence, a petition was filed in the SC.
However, this petition was denied for the reason that it is
the choice of the executive department to determine what
is a treaty or an executive agreement. In this case, the
President treated it as the latter. Thus, concurrence of the
congress is not required
Q: What comprises the Law on Intellectual Property?
Intellectual Property Code R.A. 8293
o Took effect on January 1, 1998
Patent Law
Trademark Law
Copyright Law
Q: What is Intellectual Property?
It refers to CREATIONS OF THE MIND
Inventions, literary and artistic works, symbols, names, images,
and designs used in commerce. (ILAWS-NID)
Legal rights which result from INTELLECTUAL ACTIVITY in the
industrial, scientific, literary, and artistic (ISLA) fields
Q: Are ideas or conceptions protected by law?
NO. Even if embodied in a work, news, other mere items of press
information or official text, translation, or work of government ARE
NOT PROTECTED BY LAW
I. INTELLECTUAL PROPERTY RIGHTS IN GENERAL
1. INTELLECTUAL PROPERTY RIGHTS
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
[Republic Act No. 8293]
Q: What comprises of Intellectual Property Rights?
Sec. 4. Definitions.- 4.1. The term "intellectual property rights"
consists of:
o [a] Copyright and Related Rights;
o [b] Trademarks and Service Marks;
o [c] Geographic Indications;
o [d] Industrial Designs;
o [e] Patents;
o [f] Layout-Designs (Topographies) of Integrated Circuits;
and
o [g] Protection of Undisclosed Information [TRIPS].
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LIP Class Notes 2016 Atty. Castillo
Q: What is COPYRIGHT?
It is confined to LITERARY or ARTISTIC work which are ORIGINAL
CREATIONS in the literary or artistic domain PROTECTED from the
moment of creation.
Q: What are TRADEMARKS OR SERVICE MARKS?
Any VISIBLE SIGN capable of distinguishing the GOODS and
SERVICES of an enterprise. It shall include STAMPED or MARKED
container of goods
Q: What are GEOGRAPHIC INDICATIONS?
It identifies a GOOD originating in the territory of a TRADE-
RELATED ASPECTS of INTELLECTUAL PROPERTY RIGHTS (TRIPS)
MEMBER, or a region or locality in that territory, where a given
QUALITY, REPUTATION, or other CHARACTERSTIC of the good is
essentially attributable to its geographical origin
Q: What are INDUSTRIAL DESIGNS?
Any composition of LINES or COLORS or any 3-D FORM, whether or
not associated with lines or colors
Such composition or form should give a SPECIAL APPEARANCE to
and can serve as a PATTERN for an industrial product or handicraft
Q: What PATENTS?
PATENTABLE INVENTION any TECHNICAL SOLUTION of a
problem in ANY FIELD of human activity which is NEW, involves an
INVENTIVE STEP, and is INDUSTRIALLY APPLICABLE
Q: What are LAYOUT DESIGNS? What are INTEGRATED CIRCUITS?
LAYOUT DESIGN (TOPOGRAPHIES) A 3-D DISPOSITION,
however expressed, of the ELEMENTS, at least 1 of which is an
ACTIVE ELEMENT,
o And of some or all the 3-D disposition prepared for an
INTEGRATED CIRCUIT intended for manufacture
o Must be ORIGINAL
ORIGINAL they are the result of their CREATORS
OWN INTELLECTUAL EFFORT and are NOT
COMMONPLACE among creators of layout designs
and manufacturers of layout circuits at the time of
creation.
INTEGRATED CIRCUITS it is a PRODUCT in its FINAL FORM or an
IMMEDIATE FORM,
o In which the elements, at least 1 of which is an ACTIVE
ELEMENT,
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o And some or all of the INTERCONNECTIONS are integrally
formed in and/or on a piece of material which is intended
to perform an ELECTRIC FUNCTION
Q: What is UNDISCLOSED INFORMATION?
Information which is:
o SECRET not generally known or readily available to
persons within the obligation which normally deals with
the kind of information in question
o Has COMMERCIAL VALUE because it is a secret
o Subject to REASONABLE STEPS under the circumstances
By the person lawfully IN CONTROL of the
information to keep it in secret
Q: What are TECHNOLOGY TRANSFER ARRANGEMENTS?
4.2. The term "technology transfer arrangements" refers to
contracts or agreements involving the transfer of systematic
knowledge for the manufacture of a product, the application of a
process, or rendering of a service including management
contracts;
o and the transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of
computer software except computer software developed
for mass market.
NATURE: Licensing Contract
LICENSOR: Intellectual Property Rights Owner
LICENSEE: 2nd party who was granted authority to commercially
exploit the same intellectual property right
Q: Are TECHNLOGICAL TRANSFER ARRANGEMENTS the same as
LICENSING CONTRACTS?
NO. TTAs are merely in the nature of licensing contract.
4.3. The term "Office" refers to the Intellectual Property Office created by
this Act.
4.4 The term "IPO Gazette" refers to the gazette published by the Office
under this Act.
A. RIGHT OF A FOREIGNER TO SUE FOR PROTECTION OF IP RIGHTS
Q: Can a foreign corporation sue in the Philippines an action
involving its intellectual property rights?
YES, under Section 3 and Section 160
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LIP Class Notes 2016 Atty. Castillo

Section. 3 provides for the right to sue an action for the Q: What is the difference between COPYRIGHT, TRADEMARKS, and
enforcement of INTELLECTUAL PROPERTY RIGHTS or REPRESSION PATENT?
OF UNFAIR COMPETITION. In the case of ELIDAD KHO VS. CA, the SC held: trademark,
This is also known as the Principle of Reciprocity. copyright and patents are DIFFERENT intellectual property rights
o Requisites: that cannot be interchanged with one another.
1. The person is a NATIONAL or DOMICILED or has COPYRIGHT TRADEMARK PATENT
an effective industrial ESTABLISHMENT in a A TRADEMARK is any Meanwhile, the scope PATENTABLE
foreign country visible sign capable of of a COPYRIGHT is INVENTIONS, on the
2. The foreign country is a PARTY to a convention, distinguishing the confined to literary other hand, refer to
treaty or agreement relating to IPR or repression goods (trademark) or and artistic works any technical solution
of unfair competition, to which the Philippines is services (service which are original of a problem in any
also a PARTY mark) of an enterprise intellectual creations field of human activity
OR if the foreign country also extends and shall include a in the literary and which is new, involves
RECIPROCAL RIGHTS to PH nationals stamped or marked artistic domain an inventive step and
Sec. 3. International Conventions and Reciprocity. - Any person container of goods. protected from the is industrially
moment of their applicable.
who is a national or who is domiciled or has a real and effective
In relation thereto, a creation.
industrial establishment in a country which is a party to any
TRADE NAME means
convention, treaty or agreement relating to intellectual property
the name or
rights or the repression of unfair competition, to which the
designation
Philippines is also a party, or extends reciprocal rights to nationals
identifying or
of the Philippines by law, shall be entitled to benefits to the extent
distinguishing an
necessary to give effect to any provision of such convention, treaty
enterprise.
or reciprocal law, in addition to the rights to which any owner of an
intellectual property right is otherwise entitled by this Act.
3. TECHNOLOGY TRANSFER ARRANGEMENTS
Sec. 160 provides for the right to sue for an action of enforcement
of TRADE OR SERVICE MARK.
A. VOLUNTARY LICENSE CONTRACT
o Requisites:
1. The foreign national or juridical person must Chapter IX Voluntary Licensing
comply with the requirements under Sec. 3
2. Does NOT ENGAGE IN BUSINESS in the Q: What is a VOLUNTARY LICENSING CONTRACT?
Philippines A Voluntary Licensing Contract is an agreement for the use of any
Note: W/N it is licensed to do business in Intellectual Property Right.
the Philippines. o Includes franchising agreement
Sec. 160. Right of Foreign Corporation to Sue in Trademark or o I.e. the contract for the use of trademark, service mark, or
Service Mark Enforcement Action.- Any foreign national or juridical technology of McDo, iHop, etc.
person who meets the requirements of Section 3 of this Act and o Includes Distributorship Right to exclusively distribute products
does not engage in business in the Philippines may bring a civil or using the mark of another
administrative action hereunder for opposition, cancellation, o So long as it is a contract for the use of any intellectual
infringement, unfair competition, or false designation of origin and property right, it is a Licensing Agreement
false description, whether or not it is licensed to do business in the o Thus, it must comply with the prohibited clauses and
Philippines under existing laws.
mandatory provisions IN ORDER TO BE VALID BETWEEN THE
PARTIES
2. DIFFERENCES BETWEEN COPYRIGHTS, TRADEMARKS, AND
o Also, it must be registered with the IPO IN ORDER TO BE
PATENT
BINDING AGAINST 3RD PERSONS

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LIP Class Notes 2016 Atty. Castillo
Sec. 85. Voluntary License Contract. - To encourage the transfer and
dissemination of technology, prevent or control practices and conditions
that may in particular cases constitute an abuse of intellectual property
rights having an adverse effect on competition and trade, all technology
transfer arrangements shall comply with the provisions of this Chapter.
Q: What are the rights of a licensee in a VLC?
Sec. 90. Rights of Licensee. - The licensee shall be entitled to exploit
the subject matter of the technology transfer arrangement during the
whole term of the technology transfer arrangement
Q: Who are exempt from the requirements for a VLC?
Sec. 91. Exceptional Cases. - In exceptional or meritorious cases where
SUBSTANTIAL BENEFITS will accrue to the economy, such as
o (HIREP)
o High technology content,
o Increase in foreign exchange earnings,
o Employment generation,
o Regional dispersal of industries and/or substitution with or use
of local raw materials, or
o In the case of Board of Investments, registered companies with
pioneer status,
EXEMPTION from any of the above requirements
may be allowed by the Documentation, Information
and Technology Transfer Bureau (DITTB) after
evaluation thereof on a case by case basis
1. PROHIBITED CLAUSES
Q: What are the PROHOBITED CLAUSES in a VLC? (2010 Bar: State 3
Prohibited Clauses)
Sec. 87. Prohibited Clauses. - Except in cases under Section 91, the
following provisions shall be deemed PRIMA FACIE to have an ADVERSE
EFFECT on COMPETITION and TRADE:
87.1. Those which impose upon the licensee the obligation to
acquire from a specific source capital goods, intermediate
products, raw materials, and other technologies, or of permanently
employing personnel indicated by the licensor;
87.2. Those pursuant to which the licensor reserves the right to fix
the sale or resale prices of the products manufactured on the basis
of the license;
87.3. Those that contain restrictions regarding the volume and
structure of production;
87.4 Those that prohibit the use of competitive technologies in a
non-exclusive technology transfer agreement;
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87.5. Those that establish a full or partial purchase option in favor
of the licensor;
87.6. Those that obligate the licensee to transfer for free to the
licensor the inventions or improvements that may be obtained
through the use of the licensed technology;
87.7. Those that require payment of royalties to the owners of
patents for patents which are not used;
87.8. Those that prohibit the licensee to export the licensed
product unless justified for the protection of the legitimate interest
of the licensor such as exports to countries where exclusive
licenses to manufacture and/or distribute the licensed product(s)
have already been granted;
87.9. Those which restrict the use of the technology supplied after
the expiration of the technology transfer arrangement, except in
cases of early termination of the technology transfer arrangement
due to reason(s) attributable to the licensee;
87.10. Those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
87.11. Those which require that the technology recipient shall not
contest the validity of any of the patents of the technology
supplier;
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate research
and development programs in connection with new products,
processes or equipment;
87.13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing innovation
to it, as long as it does not impair the quality standards prescribed
by the licensor;
87.14. Those which exempt the licensor for liability for non-
fulfillment of his responsibilities under the technology transfer
arrangement and/or liability arising from third party suits brought
about by the use of the licensed product or the licensed
technology; and
87.15. Other clauses with equivalent effects
2. MANDATORY PROVISIONS
Q: What are the MANDATORY PROVISIONS in a VLC? (2010 Bar: Are
there Mandatory Provisions in VLC?)
Sec. 88. Mandatory Provisions. - The following provisions shall be included
in voluntary license contracts:
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LIP Class Notes 2016 Atty. Castillo
88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation, the venue
shall be the proper court in the place where the licensee has its
principal office;
88.2. Continued access to improvements in techniques and non-commercial use or to remedy a practice determined after judicial or
processes related to the technology shall be made available during
the period of the technology transfer arrangement;
88.3. In the event the technology transfer arrangement shall Sec. 97. Compulsory License Based on Interdependence of Patents. - If the
provide for arbitration, the Procedure of Arbitration of the
Arbitration Law of the Philippines or the Arbitration Rules of the
United Nations Commission on International Trade Law (UNCITRAL)
or the Rules of Conciliation and Arbitration of the International
Chamber of Commerce (ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral country; and
88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the licensor.
B. COMPULSORY LICENSING
1. GROUNDS
Chapter X
COMPULSORY LICENSING
Q: What are the grounds for the issuance of a COMPULSORY
LICENSE?
Sec. 93. Grounds for Compulsory Licensing. - The Director of Legal Affairs
may grant a license to exploit a patented invention, even without the
agreement of the patent owner, in favor of any person who has shown his
capability to exploit the invention, under any of the following
circumstances:
93.1. National EMERGENCY or other circumstances of extreme
urgency;
93.2. Where the PUBLIC INTEREST, in particular, national security,
nutrition, health or the development of other vital sectors of the
national economy as determined by the appropriate agency of the
Government, so requires; or
93.3. Where a JUDICIAL OR ADMINISTRATIVE BODY HAS
DETERMINED that the manner of exploitation by the owner of the
patent or his licensee is ANTI-COMPETITIVE; or
93.4. In case of PUBLIC NON-COMMERCIAL USE of the patent by
the patentee, without satisfactory reason;
93.5. If the patented invention is NOT BEING WORKED IN THE
PHILIPPINES ON A COMMERCIAL SCALE, although capable of being
worked, without satisfactory reason: Provided, That the importation
of the patented article shall constitute working or using the patent.
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Sec. 96. Compulsory Licensing of Patents Involving Semi-Conductor
Technology. - In the case of compulsory licensing of patents involving semi-
conductor technology, the license may only be granted in case of public
administrative process to be anti-competitive.
invention protected by a patent, hereafter referred to as the "second
patent," within the country cannot be worked without infringing another
patent, hereafter referred to as the "first patent," granted on a prior
application or benefiting from an earlier priority, a compulsory license may
be granted to the owner of the second patent to the extent necessary for
the working of his invention, subject to the following conditions:
97.1. The invention claimed in the second patent involves an
important technical advance of considerable economic significance
in relation to the first patent;
97.2. The owner of the first patent shall be entitled to a cross-
license on reasonable terms to use the invention claimed in the
second patent;
97.3. The use authorized in respect of the first patent shall be non-
assignable except with the assignment of the second patent; and
97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of
this Act.
2. REQUIREMENT TO OBTAIN LICENSE
Q: What are the requirements to obtain a license?
o 1. MUST FILE A PETITION WITH THE IPO
o 2. GR: EFFORTS TO OBTAIN AUTHORIZATION were made as
provided for in Sec. 95. (This only applies if the IPR owner
REFUSES to give authorization)
o Sec. 95. Requirement to Obtain a License on Reasonable
Commercial Terms. - 95.1. The license will only be granted after
the petitioner has made EFFORTS TO OBTAIN AUTHORIZATION from
the patent owner on REASONABLE COMMERCIAL TERMS AND
CONDITIONS but such efforts have NOT BEEN SUCCESSFUL within
a reasonable period of time.
o EXPN:
o 95.2. The requirement under Subsection 95.1 shall NOT
APPLY in the following cases:
(a) Where the petition for compulsory license
seeks to remedy a practice determined after
judicial or administrative process to be anti-
competitive;
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LIP Class Notes 2016 Atty. Castillo
(b) In situations of national emergency or other
circumstances of extreme urgency;
(c) In cases of public non-commercial use.
o 95.3. In situations of national emergency or other circumstances of
extreme urgency, the right holder shall be NOTIFIED as soon as
reasonably practicable.
o 95.4. In the case of public non-commercial use, where the
government or contractor, without making a patent search, knows
or has demonstrable grounds to know that a valid patent is or will
be used by or for the government, THE RIGHT HOLDER SHALL BE
INFORMED PROMPTLY
o 3. THE PETITION MUST BE FILED WITHIN THE PRESCRIPTIVE
PERIOD under Sec. 94.
C. PERIOD TO FILE A PETITION
Sec. 94. Period for Filing a Petition for a Compulsory License.
94.1. A compulsory license may not be applied for on the ground stated in
Subsection 93.5 before the expiration of a period of four (4) years from the
date of filing of the application or three (3) years from the date of the
patent whichever period expires last.
94.2. A compulsory license which is applied for on any of the grounds
stated in Subsections 93.2, 93.3, and 93.4 and Section 97 may be applied
for at any time after the grant of the patent.
II. PATENTS
Patent
Q: What is the difference between a patentable invention
and other intellectual property rights such as Industrial
Design and Undisclosed Information?
o The latter does not require an inventive step. Thus, they
have shorter period of protection
A Patent is a right granted to the inventor of a process, product or
improvement
In the IPC, the tenure of protection is 20 years from the date of
the filing of the application
o From this time, all rights shall pertain to the patentee (We
say to the patentee instead of inventor because it is not
necessarily granted to the inventor. Reason: it may be
transferred)
Ex: Paracetamol. The right to manufacture is subject of annuity
(annual fees). Otherwise, the patent lapses and the public can
make use of it. Also, after the lapse of 20 years, anyone can use it.
Nudibranch
1. PATENTABLE INVENTIONS
Q: What are the Conditions of Patentability?
1. Any TECHNICAL SOLUTION of a problem in any field of human
activity
o Ex of such problems: getting sick medicine, need for
communication cellphone
2. Must be NOVEL (or new)
o When it does NOT form a PRIOR ART
3. Must involve an INVENTIVE STEP (most important)
o Should not be obvious to a person skilled in the art
o Ex: the spraying over the top of crops does not involve an
inventive step. This is customarily done
4. INDUSTRIALLY APPLICABLE
o May be produced or used in an industry and that there is a
market which demands such invention
Q: For instance, Miguel invented the eraser. Laida invented the
pencil. Michael put together the 2 inventions. Is this patentable?
NO. If the combination of the patent will NOT produce something
which is different, (i.e. the culmination of which did NOT produce
ANOTHER USE) then the same is not patentable
In this case, the inherent elements of each patent is still present.
There is no novelty to the combination. There is nothing unusual.
There is no surprising change of the 2 patents. Thus, the same is
not patentable.
Not new; Does not involve an inventive step.
Chapter II
PATENTABILITY
Sec. 21. Patentable Inventions. - Any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is
industrially applicable shall be patentable. It may be, or may relate to, a
product, or process, or an improvement of any of the foregoing.
Sec. 23. Novelty. - An invention shall not be considered new if it forms part
of a prior art.
Q: What constitutes PRIOR ART?
Everything not made available to the public from the date of filing
of the application
Sec. 24. Prior Art. - Prior art shall consist of:
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LIP Class Notes 2016 Atty. Castillo
o 24.1. Everything which has been made available to the
public anywhere in the world, before the filing date or the
priority date of the application claiming the invention; and
o 24.2. The whole contents of an application for a patent,
utility model, or industrial design registration, published in
accordance with this Act, filed or effective in the
Philippines, with a filing or priority date that is earlier than
the filing or priority date of the application: Provided, That
the application which has validly claimed the filing date of
an earlier application under Section 31 of this Act, shall be
prior art with effect as of the filing date of such earlier
application: Provided further, That the applicant or the
inventor identified in both applications are not one and the
same.
Note: Sec. 24 must be read together with Sec. 25
Sec. 25. Non-Prejudicial Disclosure.
25.1. The disclosure of information contained in the application
during the twelve (12) months preceding the filing date or the
priority date of the application shall not prejudice the applicant on
the ground of lack of novelty if such disclosure was made by:
o (a) The inventor;
o (b) A patent office and the information was contained
(a) in another application filed by the inventor and
should not have been disclosed by the office, or
(b) in an application filed without the knowledge
or consent of the inventor by a third party which
obtained the information directly or indirectly
from the inventor; or
o (c) A third party which obtained the information directly or
indirectly from the inventor.
Q: For instance, a new gadget better than the iPhone was
published in FB on Feb 14, 2016 by the inventor. The next
day, the inventor applied for patent. Is this invention
patentable? Will it be considered new or a prior art?
o YES, It is considered a non-prejudicial disclosure. Thus, it is
still patentable
o It is still considered novel.
Q: If the same was made on June 1, 2015, in FB. The Q: For instance, Miguel disclosed a new method for Alzheimers
inventor filed an application today. Is the invention still
considered new?
o NO. It is no longer a non-prejudicial disclosure because it is
no longer within 12 months preceding the application.
25.2. For the purposes of Subsection 25.1, "inventor" also means any
person who, at the filing date of application, had the right to the patent.
Nudibranch
Sec. 26. Inventive Step. - An invention involves an inventive step if, having
regard to prior art, it is not obvious to a person skilled in the art at the time
of the filing date or priority date of the application claiming the invention.
Sec. 27. Industrial Applicability. - An invention that can be produced and
used in any industry shall be industrially applicable
2. NON-PATENTABLE INVENTIONS
Q: What are NON-PATENTABLE INVENTIONS? (Memorize)
Sec. 22. Non-Patentable Inventions. - The following shall be excluded from
patent protection:
22.1. Discoveries, scientific theories and mathematical methods;
22.2. Schemes, rules and methods of performing mental acts,
playing games or doing business, and programs for computers;
22.3 Methods for treatment of the human or animal body by
surgery or therapy and diagnostic methods practiced on the
human or animal body. This provision shall not apply to products
and composition for use in any of these methods;
22.4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision shall
not apply to micro-organisms and non-biological and
microbiological processes.
o Provisions under this subsection shall not preclude
Congress to consider the enactment of a law providing sui
generis protection of plant varieties and animal breeds
and a system of community intellectual rights protection:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality.
Q: Assuming Einstein filed an application in the IPO for his theory
of relativity. If you were the examiner, will you allow his
application?
NO, I will REJECT his application. It falls under 22.1 of the non-
patentable inventions, scientific theory
disease. It is a new medicine, applied by topical application and
diagnosis of disease. Assuming you are an IP lawyer, how do you
protect this new method of application, diagnosis, and the
medicine?
You advise him to file an application for patent but only with
respect to the medicine. The application and diagnosis are not
patentable.
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LIP Class Notes 2016 Atty. Castillo
Q: Glutathione is a known substance which is good for the liver. It
was later on discovered to have side effects of skin whitening. Can
glutathione be patented anew as a skin whitening agent?
NO. Mere discovery of a new use for a property is not patentable. It
does not involve an inventive step.
Another example of a new use for another property is instead of
ingesting a substance thru pills, it is done thru a patch. This is not
patentable. It does not involve an inventive step.
Before, pharmaceutical companies were in the practice of finding
new uses of the same medicine by adding a few ingredients. This
way, they can file repeatedly applications for patent despite the
lapse of the 20-year period of protection.
The question asked should be: Is there a substantial improvement?
Must check the ACTIVE INGREDIENT. If it provides for a
substantial improvement, a higher efficacy as compared before,
then it could be considered as patentable.
3. OWNERSHIP OF PATENT
A. RIGHT TO A PATENT
Chapter III RIGHT TO A PATENT
Q: Who has the right to the patent?
If only made by 1 PERSON the inventor, his heirs, or assigns
If made by 2 or more persons JOINTLY owned by them jointly
Sec. 28. Right to a Patent. - The right to a patent belongs to the
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
Q: What if 2 or more persons made use of the patent
SEPARATELY, who has the right to the patent?
o It depends. Whoever filed the application first will have the
right to the patent. (First-to-File Rule)
B. FIRST-TO-FILE RULE
Q: What is the First-To-File Rule?
Sec. 29. First to File Rule. - 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 are filed for
the same invention, to the applicant who has the earliest filing
date or, the earliest priority date.
Nudibranch
Q: For instance, Miguel steals Laidas idea. He filed an application
for patent. Laira subsequently filed a patent application. Who is
entitled to the issuance of patent?
If all the requirements of a valid application are present, the patent
will necessarily issue in favor of Miguel.
However, the First-To-File Rule applies when 2 or more persons
create an invention separately and independently. It is not
applied in a case of stealing the invention of another.
Thus, Laida is not without remedy. She has the right to file a
petition for cancellation of the patent. If the application is still
pending, she can go to the court
BAR 2005: Cezar works in a car manufacturing company owned by
Joab. Cezar is quite innovative and loves to tinker with things.
With the materials and parts of the car, he was able to invent a
gas-saving device that will enable cars to consume less gas.
Francis, a co-worker, saw how Cezar created the device and
likewise, came up with a similar gadget, also using scrap materials
and spare parts of the company. Thereafter, Francis filed an
application for registration of his device with the Bureau of
Patents. Eighteen months later, Cezar filed his application for the
registration of his device with the Bureau of Patents.
1. Is the gas-saving device patentable? Explain.
o SUGGESTED ANSWER: Yes, the gas-saving device is
patentable because it provides a technical solution to a
problem in a field of human activity. It is new and involves
an inventive step, and certainly industrially applicable. It
therefore fulfills the requisites mandated by the
intellectual Property Code for what is patentable.
2. Assuming that it is patentable, who is entitled to the
patent? What, if any, is the remedy of the losing party?
o SUGGESTED ANSWER: Cezar is entitled to the patent
because he was the real inventor. Francis, copying from
the work of Cezar, cannot claim the essential criteria of an
inventor, who must possess essential elements of novelty,
originality and precedence to be entitled to protection.
Nevertheless, under the "first to file rule," Francis
application would have to be given priority. Cezar,
however, has within three months from the decision, to
have it cancelled as the rightful inventor; or within one
year from publication, to file an action to prove his priority
to the invention, which has been taken from him and
fraudulently registered by Francis.
3. Supposing Joab got wind of the inventions of his
employees and also laid claim to the patents, asserting
that Cezar and Francis were using his materials and
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LIP Class Notes 2016 Atty. Castillo
company time in making the devices, will his claim prevail
over those of his employees? Explain.
o SUGGESTED ANSWER: No, Joab's claim cannot prevail over
those of his employees. In the first place, Joab did not
commission any of the two employees to invent the
device, and its invention did not fall within their regular
duties. What prevails is the provision of the Intellectual
Property Code that holds that the invention belongs to the
employee, if the inventive activity is not a part of his
regular duties, even if he uses the time, facilities and
materials of the employer.
C. INVENTIONS CREATED PURSUANT TO A COMMISSION
Q: In the case inventions made by employee, who has the right to
the patent?
IF PURSUANT TO A COMMISSION:
o Sec. 30. Inventions Created Pursuant to a Commission.
30.1. The person who commissions the work shall own the
patent, unless otherwise provided in the contract.
GR: The person who commissions the work EMPLOYER
o Thus, if the employee is the one who invented a process
or product, he must assign it to the employer.
EXPN: Unless otherwise provided in the contract EMPLOYEE
o The usual agreement is that when an employee invented
something pursuant to a commission, the employer shall
own the patent but the employee shall be entitled to
royalties
IF IN THE COURSE OF EMPLOYMENT:
o 30.2. In case the employee made the invention in the
course of his employment contract, the patent shall
belong to:
(a) The EMPLOYEE, if the inventive activity is not a
part of his regular duties even if the employee
uses the time, facilities and materials of the
employer.
(b) The EMPLOYER, if the invention is the result of
the performance of his regularly-assigned duties ,
EXPN: unless there is an agreement,
express or implied, to the contrary
D. RIGHT OF PRIORITY
Q: What is the right of priority?
Sec. 31. Right of Priority. - An application for patent filed by any Chapter VI CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE
person who has previously applied for the same invention in
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another country which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed as of the
date of filing the foreign application: Provided, That:
o (a) the local application expressly claims priority;
o (b) it is filed within twelve (12) months from the date the
earliest foreign application was filed; and
o (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 the Philippines.
Q: For instance, Miguel made an invention which was already an
invention of Nikon Corp. without knowing that the latter had first
thought of it. The inventions were similar, though not identical.
Nikon filed an application for patent with the Japan Patent Office
on January 2, 2014. Miguel filed an application for patent with the
IPO Philippines on June 1 ,2014. On January 2, 2016, Nikon filed an
application for patent in the IPO Philippines. To whom shall the
patent be issued?
If we follow the First-To-File Rule, the patent should be issued in
favor of Miguel
But there is also another rule to take into consideration: Right of
Priority under Sec. 31.
o The priority right provided under the Paris Convention
requires that if patentee in one country desires to have
priority right in another country, he must file an
application in the other country within a period of 2
months from the first application
o The period was lengthened to 13 months in the Patent
Cooperation Treaty.
o If the application was filed within the prescribed period,
the date of first application shall be considered the date in
which the second application was filed. Thus, having a
priority right in time
o Section 31 provides for a period of 12 months
o IPC took effect on 1998. The Philippines became a
signatory of the Patent Cooperation Treaty only in 2001.
In this case, Nikon filed its application in Japan on January 2, 2014.
It filed its application in the Philippines on January 2, 2016. There is
a 2 year difference. Thus, not having filed the same within 12
months as provided in the IPC, Nikon does not have priority right
over the patent. The patent should issue in Miguels favor.
4. GROUNDS FOR CANCELLATION OF A PATENT
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LIP Class Notes 2016 Atty. Castillo
Q: What are the grounds for cancellation of patents?
Sec. 61. Cancellation of Patents.
61.1. Any interested person may, upon payment of the required
FEE, PETITION to cancel the patent or any claim thereof, or parts of
the claim, on any of the following GROUNDS:
o (a) That what is claimed as the invention is NOT NEW OR
PATENTABLE;
o (b) That the patent DOES NOT DISCLOSE THE INVENTION
IN A MANNER SUFFICIENTLY CLEAR AND COMPLETE for it
to be carried out by any person skilled in the art; or
o (c) That the patent is CONTRARY TO PUBLIC ORDER OR
MORALITY.
61.2. Where the grounds for cancellation relate to some of the
claims or parts of the claim, cancellation may be effected to such
extent only.
5. REMEDY OF THE TRUE AND ACTUAL INVENTOR
Sec. 29. First to File Rule. - 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 are filed for the same
invention, to the applicant who has the earliest filing date or, the earliest
priority date.
Chapter VII REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
Sec. 67. Patent Application by Persons Not Having the Right to a Patent.
67.1. If a person referred to in Section 29 other than the applicant, is
declared by final court order or decision as having the right to the patent,
such person may, within three (3) months after the decision has become
final:
(a) Prosecute the application as his own application in place of the should the application be withdrawn, refused, or cancelled.
applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or expiration of the period within which the annual fees were due. A notice
(d) Seek cancellation of the patent, if one has already been issued. that the application is deemed withdrawn or the lapse of a patent for non-
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a
new application filed under Subsection 67.1(b).
Q: What are the remedies of a true and actual inventor?
Sec. 68. Remedies of the True and Actual Inventor. - If a person, the annual fee, upon payment of the prescribed surcharge for delayed
who was deprived of the patent without his consent or through
fraud is declared by final court order or decision to be the true and
actual inventor, the court shall order for his SUBSTITUTION as
patentee, or at the option of the true inventor, CANCEL the patent,
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and award actual and other DAMAGES in his favor if warranted by
the circumstances
Sec. 70. Time to File Action in Court. - The actions indicated in Sections 67
and 68 shall be filed within one (1) year from the date of publication made
in accordance with Sections 44 and 51, respectively.
6. RIGHTS CONFERRED BY A PATENTEE
Chapter VIII RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
Q: What are the rights conferred by a patentee?
Sec. 71. Rights Conferred by Patent.
71.1. A patent shall confer on its owner the following EXCLUSIVE RIGHTS:
(a) Where the subject matter of a patent is a product, to restrain,
PROHIBIT AND PREVENT any unauthorized person or entity from
making, using, offering for sale, selling or importing that product;
(b) Where the subject matter of a patent is a process, to RESTRAIN,
PREVENT OR PROHIBIT any unauthorized person or entity from
using the process, and from manufacturing, dealing in, using,
selling or offering for sale, or importing any product obtained
directly or indirectly from such process.
71.2. Patent owners shall also have the right to ASSIGN, OR TRANSFER by
succession the patent, and to CONCLUDE LICENSING CONTRACTS for the
same.
Sec. 55. Annual Fees.
55.1. To maintain the patent application or patent, an annual fee shall be
paid upon the expiration of four (4) years from the date the application was
published pursuant to Section 44 hereof, and on each subsequent
anniversary of such date. Payment may be made within three (3) months
before the due date. The obligation to pay the annual fees shall terminate
55.2. If the annual fee is not paid, the patent application shall be deemed
withdrawn or the patent considered as lapsed from the day following the
payment of any annual fee shall be published in the IPO Gazette and the
lapse shall be recorded in the Register of the Office.
55.3. A grace period of six (6) months shall be granted for the payment of
payment
7. LIMITATIONS OF PATENT RIGHTS
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LIP Class Notes 2016 Atty. Castillo

Sec. 71. Rights Conferred by Patent. patent is granted, shall have the right to continue the use thereof
71.1. A patent shall confer on its owner the following exclusive rights: as envisaged in such preparations within the territory where the
(a) Where the subject matter of a patent is a product, to restrain, patent produces its effect.
prohibit and prevent any unauthorized person or entity from
making, using, offering for sale, selling or importing that product; 73.2. The right of the prior user may only be transferred or assigned
(b) Where the subject matter of a patent is a process, to restrain, together with his enterprise or business, or with that part of his enterprise
prevent or prohibit any unauthorized person or entity from using or business in which the use or preparations for use have been made.
the process, and from manufacturing, dealing in, using, selling or
offering for sale, or importing any product obtained directly or B. USE BY GOVERNMENT
indirectly from such process.
71.2. Patent owners shall also have the right to assign, or transfer by Q: When may government validly use the invention even without
succession the patent, and to conclude licensing contracts for the same. agreement of patent owner?
Sec. 74. Use of Invention by Government.
Sec. 72. Limitations of Patent Rights. - The owner of a patent has no right 74.1. A Government agency or third person authorized by the Government
to prevent third parties from performing, without his authorization, the acts may exploit the invention even without agreement of the patent owner
referred to in Section 71 hereof in the following circumstances: where:
72.1 Using a patented product which has been put on the market (a) the public interest, in particular, national security, nutrition,
in the Philippines by the owner of the product, or with his express health or the development of other sectors, as determined by the
consent, insofar as such use is performed after that product has appropriate agency of the government, so requires; or
been so put on the said market (b) A judicial or administrative body has determined that the
72.2. Where the act is done privately and on a non-commercial manner of exploitation, by the owner of the patent or his licensee,
scale or for a non-commercial purpose: Provided, That it does not is anti-competitive.
significantly prejudice the economic interests of the owner of the 74.2. The use by the Government, or third person authorized by the
patent; Government shall be subject, mutatis mutandis, to the conditions set forth
72.3. Where the act consists of making or using exclusively for the in Sections 95 to 97 and 100 to 102.
purpose of experiments that relate to the subject matter of the
patented invention; 8. PATENT INFRINGEMENT
72.4. Where the act consists of the preparation for individual
If there is a violation of patent right criminal action for infringement
cases, in a pharmacy or by a medical professional, of a medicine in
accordance with a medical prescription or acts concerning the
If an unauthorized person makes use of patent only civil action for
medicine so prepared;
infringement. Criminal action will only apply AFTER judgment
72.5. Where the invention is used in any ship, vessel, aircraft, or
land vehicle of any other country entering the territory of the Sec. 76. Civil Action for Infringement.
Philippines temporarily or accidentally: Provided, That such 76.1. The making, using, offering for sale, selling, or importing a patented
invention is used exclusively for the needs of the ship, vessel, product or a product obtained directly or indirectly from a patented
aircraft, or land vehicle and not used for the manufacturing of process, or the use of a patented process without the authorization of the
anything to be sold within the Philippines. patentee constitutes patent infringement.
A. PRIOR USER 76.2. Any patentee, or anyone possessing any right, title or interest in and
to the patented invention, whose rights have been infringed, may bring a
Q: What is the right of prior user? civil action before a court of competent jurisdiction, to recover from the
Sec. 73. Prior User. infringer such damages sustained thereby, plus attorneys fees and other
73.1. Notwithstanding Section 72 hereof, any prior user, who, in expenses of litigation, and to secure an injunction for the protection of his
good faith was using the invention or has undertaken serious rights.
preparations to use the invention in his enterprise or business,
before the filing date or priority date of the application on which a

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LIP Class Notes 2016 Atty. Castillo
76.3. If the damages are inadequate or cannot be readily ascertained with
reasonable certainty, the court may award by way of damages a sum
equivalent to reasonable royalty.
76.4. The court may, according to the circumstances of the case, award
damages in a sum above the amount found as actual damages sustained:
Provided, That the award does not exceed three (3) times the amount of
such actual damages.
76.5. The court may, in its discretion, order that the infringing goods,
materials and implements predominantly used in the infringement be
disposed of outside the channels of commerce or destroyed, without
compensation.
76.6. Anyone who actively induces the infringement of a patent or provides
the infringer with a component of a patented product or of a product
produced because of a patented process knowing it to be especially
adopted for infringing the patented invention and not suitable for
substantial non-infringing use shall be liable as a contributory infringer and
shall be jointly and severally liable with the infringer.
Amendment 76.6 a person actively inducing another is liable for patent
infringement as a contributory infringer = jointly and severally liable
In other words, contributory infringers are solidarily liable with the
infringer
A. JURISDICTION
1. A.M. No. 02-1-11
The SC has designated several Special Intellectual Property Courts
(SIPC) which shall try and decide cases involving violations of
intellectual property rights defined under the Intellectual Property
Code committed within their respective territorial areas.
Since there are only a few cases of violations of intellectual
property rights now pending in other branches of the
aforementioned RTCs, such cases shall remain with and shall be
decided by the branches to which they have been assigned. Only
cases hereafter filed may be assigned to the designated special
courts.
Q: Which court has jurisdiction for an action of infringement?
Concurrent jurisdiction is granted to the RTC and IPO for
infringement and damages (IPO for damages not less than
200,000; RTC without regard as to amount of damages)
o RTC Criminal and Civil Actions
o IPO Administrative Actions
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SC Memorandum Circular 02-1-11-SC dated Feb. 19, 2013
designation of the RTC as an IPC Court
Was amended further designating RTC as a Special Commercial
Court
2. SAMSON VS. CABANOS
SAMSON vs. HON. DAWAY / SAMSON vs. HON. CABANOS
FACTS: The petitioner, owner/proprietor of ITTI Shoes/Mano Shoes
Manufactuirng Corporation, allegedly sold or offers the sale of garment
product using the trademark Caterpillar to the prejudice of Caterpillar,
Inc., private respondent in this case. The respondent filed the case with the
RTC. The petitioner questioned the jurisdiction of the trial court over the
offense charged contending that the case should be filed with the MTC
because violation of unfair competition is penalized with imprisonment not
exceeding 6 years under RA 7691.
ISSUE: Which court has jurisdiction over criminal and civil cases for
violation of intellectual property rights?
HELD: The SC held that under Section 163 of the IPC, actions for unfair
competition shall be brought before the proper courts with appropriate
jurisdiction under existing laws. The law contemplated in Section 163 of IPC
is RA 166 otherwise known as the Trademark Law. Section 27 of the
Trademark Law provides that jurisdiction over cases for infringement of
registered marks, unfair competition, false designation of origin and false
description or representation, is lodged with the Court of First Instance
(now Regional Trial Court). Since RA 7691 is a general law and IPC in
relation to Trademark Law is a special law, the latter shall prevail. Actions
for unfair competition therefore should be filed with the RTC.
BAR 2003: K-9 Corporation, a foreign corporation alleging itself to
be the registered owner of trademark K-9 and logo K, filed an
Inter Partes case with the Intellectual Property Office against
Kanin Corporation for the cancellation of the latters mark K-9
and logo K. During the pendency of the case before the IPO,
Kanin Corporation brought suit against K-9 Corporation before the
RTC for infringement and damages. Could the action before the
RTC prosper? Why?
B. CRIMINAL ACTION FOR PATENT INFRINGEMENT
Sec. 84. Criminal Action for Repetition of Infringement. - If infringement is
repeated by the infringer or by anyone in connivance with him after finality
of the judgment of the court against the infringer, the offenders shall,
without prejudice to the institution of a civil action for damages, be
12
LIP Class Notes 2016 Atty. Castillo
criminally liable therefor and, upon conviction, shall suffer imprisonment
for the period of not less than six (6) months but not more than three (3)
years and/or a fine of not less than One hundred thousand pesos
(P100,000) but not more than Three hundred thousand pesos (P300,000),
at the discretion of the court. The criminal action herein provided shall
prescribed in three (3) years from date of the commission of the crime.
C. TESTS IN PATENT INFRINGEMENT
In the case of drawings, it is easily to tell if there is infringement. Just
compare the different DESIGN VIEWS to and determine whether or not
there is infringement
In the case of patents, instead of views, we have what is called
SPECIFICATIONS and CLAIMS
Ex: a shoe has 5 claims. 1st is the sole; 2nd is the lace; 3rd is the
design on the right side; 4th is the design in the left side; 5th is the
inside of the shoe. The inventor applies for a patent over these 5
claims.
Q: What are the 2 tests to determine whether or not there is
patent infringement?
1. Literal Infringement
o Exactness rule
o Addition rule
2. Doctrine of equivalence
i. LITERAL INFRINGEMENT
Q: What is the test of LITERAL INFRINGEMENT?
Sec. 75. Extent of Protection and Interpretation of Claims. 75.1.
The extent of protection conferred by the patent shall be
determined by the claims, which are to be interpreted in the light
of the description and drawings.
Q: What are the 2 rules associated with the Literal Infringement
test?
1. EXACTNESS RULE the infringing material copies exactly the
same claims and specifications
o Ex: the applicant of a patent has the same exact claims as
that of a patentees invention: i.e. all 5 claims are
identical: in the shoe example, it has the same design,
same sole, same lace, etc.
2. ADDITION RULE the infringing material merely adds additional
claims or specifications without substantial modification of the
original patent
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o Ex: in the shoe example, the applicant copies all 5 claims,
but adds an additional 6th claim. However, the additional
claim does not substantially modify the patent.
ii. DOCTRINE OF EQUIVALENTS
Q: What is the DOCTRINE OF EQUIVALENTS? (Bar question)
75.2. For the purpose of determining the extent of protection
conferred by the patent, due account shall be taken of elements
which are equivalent to the elements expressed in the claims, so
that a claim shall be considered to cover not only all the elements
as expressed therein, but also equivalents
o Ex: for instance, in the shoe example, only 3 claims are
identical. In determining whether or not there is
infringement applying the Doctrine of Equivalents, the
question is whether or not these 3 claims are elements
which are equivalent to the elements expressed in the
original patent.
o Q: W/N the new patent introduces substantial modification
or changes in the claim?
o Q: W/N it produces the same function or same product?
o Q: W/N it achieves something in the same way?
D. DEFENSES IN ACTION FOR INFRINGEMENT
Q: What are the valid defenses in an action for infringement?
1. Patent is not a claim covered by protection
2. Invention is not new or not patentable
3. Any of the grounds for cancellation are present
4. Invalid patent or claim
5. Grounds for petition for cancellation
Sec. 81. Defenses in Action for Infringement. - In an action for
infringement, the defendant, in addition to other defenses
available to him, may show the INVALIDITY OF THE PATENT, OR
ANY CLAIM thereof, on any of the GROUNDS ON WHICH A PETITION
OF CANCELLATION can be brought under Section 61 hereof
E. CONTRIBUTORY PATENT INFRINGEMENT
Sec. 75. Extent of Protection and Interpretation of Claims. -
75.1. The extent of protection conferred by the patent shall be determined
by the claims, which are to be interpreted in the light of the description and
drawings.
9. ASSIGNMENT AND TRANSMISSION OF RIGHTS
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LIP Class Notes 2016 Atty. Castillo
Chapter XI ASSIGNMENT AND TRANSMISSION OF RIGHTS
Sec. 103. Transmission of Rights.
103.1 Patents or applications for patents and invention to which they
relate, shall be protected in the same way as the rights of other property
under the Civil Code.
103.2. Inventions and any right, title or interest in and to patents and
inventions covered thereby, may be assigned or transmitted by inheritance
or bequest or may be the subject of a license contract.
Sec. 104. Assignment of Inventions. - An assignment may be of the entire
right, title or interest in and to the patent and the invention covered
thereby, or of an undivided share of the entire patent and invention, in
which event the parties become joint owners thereof. An assignment may
be limited to a specified territory.
Sec. 105. Form of Assignment. - The assignment must be in writing,
acknowledged before a notary public or other officer authorized to
administer oath or perform notarial acts, and certified under the hand and
official seal of the notary or such other officer.
Sec. 106. Recording.
106.1. The Office shall record assignments, licenses and other instruments
relating to the transmission of any right, title or interest in and to
inventions, and patents or application for patents or inventions to which
they relate, which are presented in due form to the Office for registration,
in books and records kept for the purpose. The original documents together
with a signed duplicate thereof shall be filed, and the contents thereof
should be kept confidential. If the original is not available, an authenticated
copy thereof in duplicate may be filed. Upon recording, the Office shall
retain the duplicate, return the original or the authenticated copy to the
party who filed the same and notice of the recording shall be published in
the IPO Gazette.
106.2. Such instruments shall be void as against any subsequent purchaser
or mortgagee for valuable consideration and without notice, unless, it is so
recorded in the Office, within three (3) months from the date of said
instrument, or prior to the subsequent purchase or mortgage.
Sec. 107. Rights of Joint Owners. - If two (2) or more persons jointly own a
patent and the invention covered thereby, either by the issuance of the
patent in their joint favor or by reason of the assignment of an undivided
share in the patent and invention or by reason of the succession in title to
such share, each of the joint owners shall be entitled to personally make,
use, sell, or import the invention for his own profit: Provided, however, That
neither of the joint owners shall be entitled to grant licenses or to assign
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his right, title or interest or part thereof without the consent of the other
owner or owners, or without proportionally dividing the proceeds with such
other owner or owners.
BAR PROBLEMS:
Q: X invented a method of improving the tenderness of meat by
injecting an enzyme solution into the liver of the animal shortly
before a slaughter. Is the invention patentable?
The invention is patentable.
Section 21 of IPC provides that "any technical solution of a problem
in any field of human activity which is new, involves an inventive
step and is industrially applicable shall be patentable. It may be, or
may relate to, a product, or process, or an improvement of any of
the foregoing."
The process of improving the tenderness of meat appears to be a
new technical solution.
Q: X invented a bogus coin detector which can be used exclusively
on self-operating gambling devices otherwise known as one-armed
bandits. Can X apply for a patent?
X may not apply for the patent.
Section 22.6 provides that anything that is contrary to public order
or morality shall be excluded from patent protection.
The machine involved in this case appears to be a gambling device
or a tool that is used to cheat in gambling or in gambling itself,
hence it is contrary to public order and morality. However, if the
machine can be used in legalized gambling such as if the in cases
of exclusive use of casinos established by the government, such
device can be patented.
Q: Che-che invented a device that can convert rainwater to
automobile fuel. She asked Macon, a lawyer, to assist in getting
her invention patented. Macon suggested that they form a
corporation with other friends and have the corporation apply for
the patent, 80% of the shares of stock thereof to be subscribed by
Che-che and 5% by Macon. The corporation was formed and the
patent application was filed. However, Che-che dies three months
later of a heart attack. Franco, the estranged husband of Che-che,
contested the application of the corporation and filed his own
patent application as the sole surviving heir of Che-che. Decide
the issue with reasons.
The case should be decided in favor of Franco.
Section 28 of the IPC provides that the right to a patent belongs to
the inventor, his heirs or assigns. Since Che-che is already dead,
the heirs, including Franco, can file the application.
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LIP Class Notes 2016 Atty. Castillo
In addition Section 32.2 of the IPC provides that if the applicant is
not the inventor, the IPO shall require the applicant to submit the
inventor's authority. In this case, it does not appear that the
corporation was authorized. Besides, it is clear from the problem
that the corporation was only used as a conduit of Che-che for the
filing of the application.
Q: Supposing Albert Einstein were alive today and he filed with the
Intellectual Property Office (IPO) an application for patent for his
theory of relativity expressed in the formula E = mc2. The IPO
Q: Is smell registrable as a mark?
disapproved Einstein's application on the ground that his theory of
relativity is not patentable. Is the IPO' s action correct?
YES, the IPO is correct.
Discoveries, scientific theories and mathematical methods are
non-patentable inventions under Sec. 22.1 of the IPC
A scientific theory like Einsteins theory of relativity is discovered,
it is not invented
2. ACQUISITION OF OWNERSHIP OF MARK
III. TRADEMARKS
A. SEC. 122
1. DEFINITION OF MARKS, COLLECTIVE MARKS, TRADE NAMES,
SLOGAN
Q: How do you acquire ownership of a mark?
Q: Generally, what is a Trademark?
It is any word, mark, symbol, sign, 3-dimensional mark, or
combination which distinguishes the goods of an enterprise as
opposed to the goods of others
If it distinguishes services, it is called Service Mark
If it distinguishes goods or services owned by a group or
Q: What is the requirement of ACTUAL USE?
association, it is called Collective Mark
A Slogan is a short phrase used to capture brand essence or
personality
PART III THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES
Sec. 121. Definitions. - As used in Part III, the following terms have the
following meanings:
121.1. "Mark" means any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods;
121.2. "Collective mark" means any visible sign designated as
such in the application for registration and capable of
distinguishing the origin or any other common characteristic,
including the quality of goods or services of different enterprises
which use the sign under the control of the registered owner of the
collective mark;
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121.3. "Trade name" means the name or designation identifying or
distinguishing an enterprise;
121.4. "Bureau" means the Bureau of Trademarks;
121.5. "Director" means the Director of Trademarks;
121.6. "Regulations" means the Rules of Practice in Trademarks
and Service Marks formulated by the Director of Trademarks and
approved by the Director General; and
121.7. "Examiner" means the trademark examiner
NO. In the Philippines, it is not yet registrable.
Q: How about snippets of sounds, are they reigstrable as
marks?
o NO. In the Philippines, they are not yet registrable.
(See, however, the opinion of FUNA on the registrability of scent
and sound in memaid)
1. REGISTRATION
2. SUBSEQUENT ACTUAL USE
Sec. 122. How Marks are Acquired. - The rights in a mark shall be
acquired through registration made validly in accordance with the
provisions of this law.
124.2. The applicant or the registrant shall file a declaration of
actual use of the mark with evidence to that effect, as prescribed
by the Regulations within three (3) years from the filing date of the
application. Otherwise, the application shall be refused or the mark
shall be removed from the Register by the Director.
The IPC no longer provides for PRIOR USE before registration as a
condition for ownership of a mark. Registration is the sole basis.
o EXPN: A trade name or business
However, there must be ACTUAL USE after registration
An applicant of a mark must have been in ACTUALLY USE IN
COMMERCE IN THE PHILIPPINES of the mark and file a
DECLARATION OF ACTUAL USE OF MARK (DAUM). He must use it
within 3 years from the date of the filing of the application
o However, this is notwithstanding the possibility of the
refusal of the application or the cancellation of the grant
of the application
15
LIP Class Notes 2016 Atty. Castillo
o Note: DAUM alone, without proof of actual use would not
be sufficient to establish actual use
o Actual use registration > Registration actual use
o DAU it is not required that the company actually sells its
products. As long as it offers its products in the market
while USING the mark, it is sufficient. Even if only one
person bought it, actual use is already complied with.
Even the mere sale of the license to an affiliate qualifies
as actual use.
Rights of a trademark are acquired thru:
o 1. Registration; and
o 2. Actual Use
Q: Doc Martens is a brand from Germany. They wanted to
sell their products in the Philippines. However, they
discovered that Chinese-Filipino have applied for
trademark and were granted the same. What is the remedy
of Doc Martens?
o File a petition for cancellation
Q: Assuming Doc Martens was able to file a petition and
the same was granted. It now seeks to file its application
for Trademark in the Philippines. Is it necessary that Doc
Martens comply with the requirement of actual use?
o YES. The IPO of the Philippines is lenient on the
requirement for foreign enterprises. It considers selling in
a website as actual use.
Limitation: The website must be accessible by the
Philippine IPO and the goods must be offered for
sale to Filipinos in the Philippines
Q: What is the significance of registration?
Ownership of a mark is acquired by registration and actual use
If the mark is not registered, the owner cannot file for an action for
infringement
However, he may still file an action for unfair competition
Q: When is non-use excused?
If the registrant does not actually use the mark yet because of
circumstances out of his control.
For example, a company wants to enter into the foods business
with the use of a particular mark. However, it still needs the
approval of the FDA before it can start its business. While the
application is pending and the approval of the FDA is not yet given,
the non-use of the mark is excusable.
In other words, non-use is excused in instances such as when a
government agency regulating the business has not yet given
Nudibranch
approval and other causes not attributable to the applicant of the
mark.
The applicant will merely need to file an affidavit that it cannot yet
actually use the mark. Thus, the application for trademark will not
yet be cancelled
Q: Ownership of a trademark is acquired by:
A. Long and continued use of the trademark, perfected by
registration thereof
B. Registration of a trademark, together with the actual
use thereof
C. Long and continued use of a trademark, with or without
registration thereof
D. Registration of a trademark validly acquired, with or without
actual use thereof
E. None of the above
Q: How long is the duration of protection of the Trademark?
10 YEARS subject to indefinite renewal for periods of 10 years each
Sec. 145. Duration.- A certificate of registration shall remain in
force for ten (10) years:
o Provided, That the registrant shall file a declaration of
actual use and evidence to that effect, or shall show valid
reasons based on the existence of obstacles to such use,
as prescribed by the Regulations, within one (1) year
from the fifth anniversary of the date of the
registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office.
o This is also known as Declaration of Non-Use. It is in
essence another required DAU but this time within 1 year
from the 5th anniversary of the date of registration. Thus, 2
DAUs are required to be filed
o See Sec. 152 for exception on Declaration of Non-Use
Q: A trademark registration MAY be owned in perpetuity.
A. True
o The duration of protection of a Trademark is 10 YEARS
subject to indefinite renewal for periods of 10 years
each
B. False
Q: What is the difference between the Declaration of Prior Use and
Declaration of Non-Use?
DAU (SEC. 124.2) DNU (SEC. 145)
As to Required within 3 years Within 1 year from the 5th
16
LIP Class Notes 2016 Atty. Castillo

period from the filing date of the anniversary of the date of the In response, respondent filed with the Bureau of Legal Affairs (BLA) of the
of filing application registration of the trademark IPO three separate verified notices of opposition to the subject applications
As to Even if registration has been Mark shall be removed from docketed as Inter Partes Cases claiming, among others, it, together with its
Effect granted, such registration the Register by the office predecessor-in-interest, has been using the Birkenstock marks in the
of would be cancelled and the Philippines for more than 16 years through the mark BIRKENSTOCK AND
Failure mark removed from the DEVICE. In its Decision, the BLA of the IPO sustained respondents
to File register. If the application is opposition, thus ordering the rejection of the subject applications.
still pending by the end of Aggrieved, petitioner appealed to the IPO Director General whereby in its
the 3 year period and no decision, the latter reversed and set aside the ruling of the BLA thus
declaration of actual use is allowing the registration of the subject applications.
filed, then the application is
denied Finding the IPO Director Generals reversal of the BLA unacceptable,
As to Declaration of actual use 1. Declaration of actual respondent filed a petition for review with the Court of Appeals. In its
what with evidence to that effect use with evidence to that decision dated June 25, 2010, the CA reversed and set aside the ruling of
to file effect; or the IPO Director General and reinstated that of the BLA. The petitioner
2. Show valid reasons filed a Motion for Reconsideration but was denied by the CA. Hence , this
based on the existence of petition to the Supreme Court.
obstacles to such use
(declaration of non-use) ISSUE: Whether or not the subject marks should be allowed registration in
the name of the petitioner?
B. BIRKENSTOCK ORTHOPAEDIE GMBH VS. PHIL SHOE EXPO
MARKETING CORP. HELD: YES. The court ruled in favour of the petitioner. Under Section 12 of
Republic Act 166, it provides that, Each certificate of registration shall
DOCTRINE: It must be emphasized that registration of a trademark, remain in force for twenty years: Provided, that the registration under the
by itself, is not a mode of acquiring ownership. If the applicant is not provisions of this Act shall be cancelled by the Director, unless within one
the owner of the trademark, he has no right to apply for its registration. year following the fifth, tenth and fifteenth anniversaries of the date
Registration merely creates a prima facie presumption of the validity of of issue of the certificate of registration, the registrant shall file in the
the registration Patent Office an affidavit showing that the mark or trade-name is still in
use or showing that its non-use is due to special circumstance which
FACTS: Petitioner, a corporation duly organized and existing under the excuse such non-use and is not due to any intention to abandon the same,
laws of Germany applied for various trademark registrations before the IPO. and pay the required fee.
However, the applications were suspended in view of the existing
registration of the mark BIRKENSTOCK AND DEVICE under Registration In the case at bar, respondent admitted that it failed to file the 10 th Year
No. 56334 dated October 21, 1993 in the name of Shoe Town International DAU for Registration No. 56334 within the requisite period, or on or before
and Industrial Corporation, the predecessor-in-interest of respondent October 21, 2004. As a consequence, it was deemed to have abandoned or
Philippine Shoe Expo Marketing Corporation. withdrawn any right or interest over the mark BIRKENSTOCK. It must be
emphasized that registration of a trademark, by itself, is not a mode of
On May 27, 1997, petitioner filed a petition (Cancellation Case) for acquiring ownership. If the applicant is not the owner of the trademark, he
cancellation of Registration No. 564334 on the ground that it is the lawful has no right to apply for its registration. Registration merely creates a
and rightful owner of the Birkenstock marks. During its pendency, however, prima facie presumption of the validity of the registration. Such
respondent and/or it predecessor-in-interest failed to file the required 10th presumption, just like the presumptive regularity in the performance of
Year Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on official functions, is rebuttable and must give way to evidence to the
or before October 21, 2004, thereby resulting the cancellation of such contrary. Besides, petitioner has duly established its true and lawful
mark. Accordingly, the cancellation case was dismissed for being moot and ownership of the mark BIRKENSTOCK. It submitted evidence relating to
academic thereby paving the way for the publication of the subject the origin and history of BIRKENSTOCK and it use in commerce long
applications. before respondent was able to register the same here in the Philippines.
Petitioner also submitted various certificates of registration of the mark

Nudibranch 17
LIP Class Notes 2016 Atty. Castillo
BIRKENSTOCK in various countries and that it has used such mark in
different countries worldwide, including the Philippines.
Q: What is the effect of issuance of a certificate of registration to
a person?
It creates a Prima Facie Presumption
Sec. 138. Certificates of Registration. - A certificate of registration
of a mark shall be prima facie evidence of:
o (VOE)
o 1. The VALIDITY of the registration,
o 2. The registrants OWENRSHIP of the mark, and of
o 3. The registrants EXCLUSIVE RIGHT to use the same
in connection with the goods or services and those that
are related thereto specified in the certificate.
Q: How is the prima facie presumption rebutted?
o 1. Evidence of the nullity of the registration
o 2. Prior use by another
Q: Which of the following statement is false?
A. The certificate of registration of a mark shall be prima facie
evidence of the validity of the registration
B. The certificate of registration of a mark shall be prima facie
evidence of the registrants ownership of the mark
C. The certificate of registration of a mark shall be prima
facie evidence of the registrants a prior use of the subject
mark
o Reason: it is not one of those enumerated under Sec. 138
of the IPC
D. The certificate of registration of a mark shall be prima facie
evidence of the registrants exclusive right to use the same in
connection with the goods or services and those that are related
thereto specified in the certificate.
E. None of the above
Q: Who may register a trademark?
Under the Trademark Law, only the owner of the trademark, trade
name, or service mark to distinguish goods, business or services
from the goods, business, or services of others is entitled to
register the same (UNNO COMMERCIAL ENTERPRISES VS. GENERAL
MILLING CORPORATION)
o A mere distributor of the products bearing trademark,
even if permitted to use the trademark has no right to and
cannot register it in his name unless it has been validly
assigned to him
Nudibranch
3. ACQUISITION OF OWNERSHIP OF TRADE NAME
Sec. 165. Trade Names or Business Names.
165.1. A name or designation may not be used as a trade name if by its
nature or the use to which such name or designation may be put, it is
contrary to public order or morals and if, in particular, it is liable to deceive
trade circles or the public as to the nature of the enterprise identified by
that name.
165.2. (a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected, even
prior to or without registration, against any unlawful act committed by
third parties.
(b) In particular, any subsequent use of the trade name by a third party,
whether as a trade name or a mark or collective mark, or any such use of a
similar trade name or mark, likely to mislead the public, shall be
deemed unlawful.
165.3. The remedies provided for in Sections 153 to 156 and Sections 166
and 167 shall apply mutatis mutandis.
Mutatis Mutandis literally, once the necessary changes have
been made. It means making necessary alterations while not
affecting the main point at issue.
165.4. Any change in the ownership of a trade name shall be made with
the transfer of the enterprise or part thereof identified by that name. The
provisions of Subsections 149.2 to 149.4 shall apply mutatis mutandis.
Q: What is the difference between a trademark and a trade name?
A trademark needs to be registered in the IPO order to be
protected whereas a trade name need not be registered to be
protected against any unlawful act committed by third parties
since what is required is merely prior use of the trade mark in
commerce in the Philippines.
BAR 2005: S Development Corporation sued Shangrila Corporation
for using the S logo and the tradename Shangrila. The former
claims that it was the first to register the logo and the tradename
in the Philippines and that it had been using the same in its
restaurant business. Shangrila Corporation counters that it is an
affiliate of an international organization which has been using
such logo and tradename Shangrila for over 20 years. However,
Shangrila Corporation registered the tradename and logo in the
Philippines only after the suit was filed.
18
LIP Class Notes 2016 Atty. Castillo
Which of the two corporations has a better right to use the logo
and the tradename? Explain.
SUGGESTED ANSWER:S Development Corporation has a better
right to use the logo and the tradename, since the protective
benefits ofthe law are conferred by the fact of registration and not
by use. Although Shangrila Corporation's parent had used the
tradename and logo long before, the protection of the laws will be
for S Development Corporation because it was the first entity to
register the intellectual properties.
How does the international affiliation of Shangrila Corporation
affect the outcome of the dispute? Explain.
SUGGESTED ANSWER: The international affiliation of Shangrila
Corporation may be critical in the event that its affiliates or parent
company abroad had registered in a foreign jurisdiction the
tradename and the logo. A well-known mark and tradename is
subject to protection under Treaty of Paris for the Protection of
Intellectual Property to which the Philippines is a member.
4. NON-REGISTRABLE MARKS
A. SEC. 123
Q: What are the non-registrable marks? (Memorize)
Generally, GENERIC or DESCRIPTIVE marks cannot be registered
o GENERIC describes a particular genus or class
o DESCRIPTIVE describes a quality of goods or services
Ex: the word delicious for food; ang tibay for
shoes. These words characterize qualities of
goods or services.
The word mango used for clothes is not
descriptive because the word is used in an
arbitrary or fanciful manner
Sec. 123. Registrability.
123.1. A mark cannot be registered if it:
IFNIII-MG-CD-SCC
(a) Consists of immoral, deceptive or scandalous matter, or (i) Consists exclusively of signs or of indications that have become
matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols, or
bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign
nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or the
name, signature, or portrait of a deceased President of the
Nudibranch
Philippines, during the life of his widow, if any, except by written
consent of the widow;
(d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in respect
of:
o (i) The same goods or services, or
o (ii) Closely related goods or services, or
o (iii) If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes
a translation of a mark which is considered by the competent
authority of the Philippines to be well-known internationally and in
the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services:
o Provided, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public
at large, including knowledge in the Philippines which has
been obtained as a result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes
a translation of a mark considered well-known mark in
accordance with the preceding paragraph, which is registered in
the Philippines with respect to goods or services which are not
similar to those with respect to which registration is applied for:
o Provided, That use of the mark in relation to those goods
or services would indicate a connection between those
goods or services, and the owner of the registered mark:
Provided further, That the interests of the owner
of the registered mark are likely to be damaged
by such use;
(g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;
(h) Consists exclusively of signs that are generic for the goods or
services that they seek to identify;
customary or usual to designate the goods or services in
everyday language or in bona fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in
trade to designate the kind, quality, quantity, intended purpose,
value, geographical origin, time or production of the goods or
rendering of the services, or other characteristics of the goods
or services;
19
LIP Class Notes 2016 Atty. Castillo
(k) Consists of shapes that may be necessitated by technical
factors or by the nature of the goods themselves or factors that
affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
o Color alone is not registrable. It must be defined in a given
form. For instance, KFC cannot register color red.
However, it can register 3-D design of colonel sanders
together with the claim of colors like red, black
(m) Is contrary to public order or morality.
Q: The United Parcel Service also known as UPS, claimed to be the
worlds largest package delivery company and service provider of
supply chain management solutions, utilizes globally and in the
Philippines, a fleet of brown painted delivery trucks. All of the
employees and delivery staff of UPS also wear brown uniforms.
UPS therefore may successfully register with the Philippine IPO
the shade of brown it uses for use on trucks and on delivery
personnel uniforms.
A. TRUE
B. FALSE
Q: In the question above, UPS may also register as its service
mark the word, brown for package delivery and supply chain
management services on condition that UPS will use the subject
word to identify its said services
A. TRUE
B. FALSE
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l),
nothing shall prevent the registration of any such sign or device which
has become distinctive IN RELATION TO THE GOODS for which
registration is requested as a result of the use that have been
made of it in commerce in the Philippines.
The Office may accept as prima facie evidence that the mark
has become distinctive, as used in connection with the
applicants 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 date on which the claim of distinctiveness is made.
123.3. The nature of the goods to which the mark is applied will not
constitute an obstacle to registration.
B. SECONDARY MEANING
Q: What is the doctrine of secondary meaning?
Nudibranch
Generally, a mark can attain secondary meaning when it is used
for a long period of time, characterized by exclusivity or notoriety,
and in the minds of the public identifies the mark with a particular
companys goods or services.
o Ex: Pampangas Best. Although Pampanga is a
geographical term, thus not registrable, the mark can
attain secondary meaning after long and notorious use
GR: j,k, and l of Sec. 123.1 are NON-REGISTRABLE
o EXPN: they are REGISTRABLE when such kind of
mark/design has become DISTINCTIVE as a result of the
uses that have been made of it in commerce in the
Philippines. This is proved by:
1. Long, continuous use for 5 years, as used in
connection with the applicants goods or services
in commerce, and
2. In the mind of the public indicates a single
source to consumers
123.2. As regards signs or devices mentioned in paragraphs (j), (k),
and (l), nothing shall prevent the registration of any such sign or
device which has become distinctive in relation to the goods for
which registration is requested as a result of the use that have
been made of it in commerce in the Philippines.
o The Office may accept as prima facie evidence that
the mark has become distinctive, as used in
connection with the applicants 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 date on which the
claim of distinctiveness is made
C. FANCIFUL, ARBITRARY, SUGGESTIVE, COMPOSITE, AND COINED
MARKS
Q: What are FANCIFUL MARKS?
Those invented for the sole purpose of functioning as a trademark
and have no other meaning than acting as a mark (imbento lang)
o Ex: Kodak for camera; Xerox for photocopying machine
Q: What are ARBITRARY MARKS?
Those utilized as a device having common meaning that has no
relation to the goods or services being (binigyan ng ibang
kahulugan)
o Ex: Dutch Boy for paints and paint color solutions
Q: What are SUGGESTIVE MARKS?
20
LIP Class Notes 2016 Atty. Castillo
Those that hint at one or some of the attributes of the products
(clue sa product)
o Ex: SUNNY trademark for marketing electric heaters
hinting the fact that the product is to keep your house
warm
Q: What are COMPOSITE MARKS?
Those marks consisting of 2 or more elements/combinations of
words, phrases, designs, symbols, or color schemes. Although they
cannot be registered by themselves, together they may be a part
of a composite mark as long as they provide a disclaimer. The
person who registers them as part of a mark will not acquire
ownership thereto. (nabubuo sa 2 o higit pang mga bahagi)
o 20th Century Nylon Shirts Factory must be required to
disclaim nylon and shirts factory
Q: What are COINED MARKS?
Those which may be registered even if they are contractions of or
coined from generic and descriptive terms. (pinagdugtong na mga
salita)
o Ex: Starbrite for metal polish; Mirrorlike for floor and goods and services?
furniture polish
5. PRIOR USE OF MARK AS A REQUIREMENT
Sec. 122. How Marks are Acquired. - The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of
this law
Sec. 152. Non-use of a Mark When Excused.
152.1. Non-use of a mark may be excused if caused by circumstances
arising independently of the will of the trademark owner . Lack of
funds shall not excuse non-use of a mark.
152.2. The use of the mark in a form different from the form in
which it is registered, which does not alter its distinctive
character, shall not be ground for cancellation or removal of the mark and
shall not diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the goods or
services belonging to the class in respect of which the mark is registered
shall prevent its cancellation or removal in respect of all other
goods or services of the same class.
152.4. The use of a mark by a company related with the registrant
or applicant shall inure to the latters benefit, and such use shall not
Nudibranch
affect the validity of such mark or of its registration: Provided, That such
mark is not used in such manner as to deceive the public. If use of a mark
by a person is controlled by the registrant or applicant with respect to the
nature and quality of the goods or services, such use shall inure to the
benefit of the registrant or applicant.
6. TESTS TO DETERMINE CONFUSING SIMILARITY BETWEEN MARKS
Note: In a Civil Action for Infringement (To be discussed under #10 in the
outline), one of the requisites for Infringement is: there is, in the use or
application a likelihood of CONFUSION.
In connection wit this, there are 2 types of confusion of Mark
or Trade Names:
o 1. Confusion of GOODS OR SERVICES
2 Tests (see below)
o 2. Confusion of BUSINESS
Actual confusion is not required. The test is whether the public is
likely to be deceived.
Q: What are the tests to determine confusing similarity between
1. DOMINANCY TEST
2. HOLISTIC TEST
A. DOMINANCY TEST whether there is similarity of the prevalent
features of the competing trademarks which might cause confusion or
deception and thus constitute infringement
Focuses on the similarity of the main, essential, dominant, or
prevalent features of a mark
Relies on visual, aural, and connotative comparisons and
overall impressions between the 2 trademarks
Cases where SC used the Dominancy Test:
1. ASIA BREWERY, INC. VS. CA
o SC: There is NO confusing similarity. The fact that PALE
PILSEN are part of ABIs trademark does not constitute
infringement of SMCs trademark: San Miguel Pale Pilsen.
Reason: pale pilsen are generic words descriptive of the
color pale and of the type of beer, pilsen
2. MCDONALDS CORPORATION VS. L.C. BIG MAK MURGERS
o Big Mac and Big Mak
o SC: They are confusingly similar. Aurally (aura!), the 2
marks are the same. Big Mac and Big Mak: the 1st and 2nd
words are phoenetically the same; Visually, the 2 marks
21
LIP Class Notes 2016 Atty. Castillo

have 6 letters, with the first to letters of the 2nd word being DOMINANCY TEST HOLISTIC/TOTALITY TEST
the same. As to Focuses on the Mandates that the
3. SOCIETES DES PRODUITS NESTLE, S.A ET. AL. VS. CA consideration similarity of the main, entirety of the marks in
o Master Roast and Master Blend vs. Flavor Master essential, dominant, question must be
o SC: They are confusingly similar. The dominance of the or prevalent features considered in determining
word master has acquired thru Nestles advertising is of a mark confusing similarity
carried over when incorporated into CFCs trademark As to Basis of Relies on visual, Relies only on visual
flavor master. Such that when one looks at the label with the aural, and comparison
the trademark flavor master, ones attention is easily Computation connotative
attracted to the word master rather than to the comparisons and
differences which exist. overall impressions
between the 2
B. HOLISTIC/TOTALITY TEST whether the general confusion made by trademarks
the article upon the eye of the casual purchaser who is unsuspicious As to Test TEST: whether there is TEST: whether the general
and off his guard, is such as to likely result in his confounding it with the similarity of the confusion made by the
original prevalent features of article upon the eye of
Mandates that the entirety of the marks in question must be the competing the casual purchaser
considered in determining confusing similarity trademarks which who is unsuspicious and
Relies only on visual comparison might cause confusion off his guard, is such as to
or deception and thus likely result in his
Cases where the SC used the Holistic/Totality Test: constitute infringement confounding it with the
1. EMERALD GARMENT MANUFACTURING CORPORATION VS. original
CA
o Stylistic Mr. Lee vs. Lee (Jeans) 7. WELL-KNOWN MARKS Even if the trademark is not registered in
o SC: No confusing similarity. STYLISTIC MR. LEE is the Philippines, if it is a well-known mark, it will be protected here in the
Philippines.
prominent. The trademark should be considered as a
whole and not piecemeal. It does not require that the well-known mark be used in commerce
With respect to Lee, the products are not ordinary in the Philippines but only that it be well known in the Philippines
house products. Also, the jeans are not
inexpensive (mahal kaya lee). Thus, the casual Q: What are the factors/criterion in determining whether or not a
buyer will be more cautious and would prefer to mark is a well-known mark?
mull over his purchase (mahal kasi). Confusion RULE ON TRADEMARKS, Rule 102:
and deception, then, is less likely The duration, extent and geographical area of any use of the
Q: So will the public be deceived? No. The mark,
average Filipino consumer generally buys jeans by The market share, in the Philippines and in other countries, of the
brand. He is more or less familiar with his goods and/or services to which the mark applies;
preference and will not be easily distracted The degree of the inherent or acquired distinction of the mark;
2. BRISTOL MYERS CO. VS. DIRECTOR OF PATENTS & The quality-image or reputation acquired by the mark;
UNITED AMERICAN PHARMACEUTICALS, INC. The extent to which the mark has been registered in the world;
o No confusion. The test is not to simply take the words and The exclusivity of registration attained by the mark in the world;
compare the spelling and pronunciation. Rather, must The extent to which the mark has been used in the world;
consider the marks in their entirety, in relation to the The exclusivity of use attained by the mark in the world;
goods to which they are attached
The commercial value attributed to the mark in the world;
Q: What is the difference between the Dominancy and Holistic The record of successful protection of the rights in the mark;
Tests?

Nudibranch 22
LIP Class Notes 2016 Atty. Castillo

The outcome of litigations dealing with the issue of whether the Extent of If well-known mark is By analogy, If well-
mark is a well-known mark; and, protection REGISTERED: protection known mark is NOT
The presence or absence of identical or similar marks validly extends to goods or REGISTERED: protection
registered for or used on identical or similar goods or services. services with are not does not extend to goods
similar to those in which or services which are not
A. SEC. 123 (E) & (F) the mark is registered, similar or identical.
provided: (conditions)
Sec. 123. Registrability. 1. The use of the mark in In connection with this
123.1. A mark cannot be registered if it: relation to the rule: EVEN DISSIMILAR
(e) Is identical with, or confusingly similar to, or constitutes a unrelated goods or GOODS DOCTRINE If
translation of a mark which is considered by the competent services would goods and services are
authority of the Philippines to be well-known internationally and in indicate a connection not identical or similar,
the Philippines, whether or not it is registered here, as being between goods or registration is STILL NOT
already the mark of a person other than the applicant for services and the ALLOWED if:
registration, and used for identical or similar goods or services: owner of the mark 1. There is connection
o Provided, That in determining whether a mark is 2. The interests of the bet. goods or services
well-known, account shall be taken of the owner of the of the junior or senior
knowledge of the relevant sector of the public, registered mark are users of the well-
rather than of the public at large, including likely to be known mark
knowledge in the Philippines which has been damaged by such 2. The interests of the
obtained as a result of the promotion of the mark ; used senior user are likely
to be damaged.
Theory of Dilution:
(f) Is identical with, or confusingly similar to, or constitutes a
Q: HUGO BOSS, a well-known mark, having been declared by the
translation of a mark considered well-known in accordance with
then Minister of Trade as such. It has been registered in the
the preceding paragraph, which is registered in the Philippines with
Philippines since 1985 for goods falling under class 25 of the
respect to goods or services which are not similar to those with
classification namely, clothing, footwear, and perfumes. On the
respect to which registration is applied for:
last day of filing its declaration of actual use in the Philippines,
o Provided, That use of the mark in relation to those goods
the owner of the subject mark failed to do so and its registration
or services would indicate a connection between those revoked. To protect its mark, it immediately filed, on the following
goods or services, and the owner of the registered mark: day, a new application for registration of its mark for the same
Provided further, That the interests of the goods. 3 days later, the following applications for trademark
owner of the registered mark are likely to registrations were filed by different applicants. Which of these
be damaged by such use; applications may be granted by the IP:
A. HUGO BOSS for soaps
Q: What is the difference between Sec. 123.1(e) and Sec. 123.1(f)?
B. HUGO BOSS MOBILE for cellular phones
SEC. 123.1(e) SEC. 123.1(f)
C. SWEET HUGO BOSS for candies and other confectionaries
Requirement The well-known mark may Must be registered in
of registration or may not be the Phils. D. All of the above
registered in the Phils. o (Suggested Answer)
Similarity Mark is used for identical Goods or services o Reason: a well-known mark is protected in the Philippines
between or similar goods or between the well-known whether or not registered. However, with respect to goods
goods & services as that of the mark and that applied for & services which are not registered, protection extends
services of well-known mark are not similar only to goods or services which are similar or identical.
mark applied o ITCAB, HUGO BOSS is well-known mark. Although it was
for v. well- able to file an application, it failed to file its DAU on time.
known mark Thus, the application is revoked. When it filed a new

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LIP Class Notes 2016 Atty. Castillo
application, the above-mentioned applications were filed
also. However, they are not similar or identical to the
goods or services of HUGO BOSS (clothing, footwear, and
perfumes)
o Thus, the IPO may grant the application under A, B, and C.
E. None of the above
Q: Company X sold its wine under the brand Rose Brandy; it
became very popular. So, X registered trademark Rose for its
brandy. Subsequently, Company Y manufactured bicycles and sold
it under the name Rose. Company X now sues Company Y for
violation of RPC. Rule on the dispute (Bar question)
The ruling should be in favor of Company Y. No violation of the IPC
was committed by Company Y. The goods of Company Y, bicycles,
are so dissimilar from the goods of Company X that there would be
no confusion as to the origin of the goods
Sec. 123.1(f) of the IPC adopts what is known as the Theory of
Dilution. However, it is necessary for the application of the
doctrine that the public may have been, or had actually been
deceived or misled as to the source of the good. This is not the
case in the given problem
B. CRITERIA
8. RIGHTS CONFERRED BY REGISTRANT
Sec. 147. Rights Conferred. 47.1. The owner of a registered mark shall
have:
GR: The exclusive right to prevent all third parties not obtained their certificate of registration for the same mark in its
having the owners consent from using in the course of trade
identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the
trademark is registered where such use would result in a
likelihood of confusion.
o EXPN: in case of importation of drugs and medicines
allowed under Sec. 72.1 and of off-patent drugs and
medicines, provided that said drugs or medicines bear the
registered marks that have not been tampered, unlawfully
modified, or infringed upone.
In case of the use, of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.
Principle of Related Goods or Services
There is infringement when there is use of similar marks on goods
that are so related that the public may be, or is actually deceived,
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and misled that the goods come from the same maker or
manufacturer
Goods are related when they belong to the same class or have
the same descriptive properties; possess same physical attributes;
serve the same purpose or are sold in groceries
SC: biscuits were held related to mile because both are food
products. Soap and perfume, lipstick and nail polish are similarly
related because they are common household items nowadays
Q: Wally, a music instruments designer and manufacturer, applied
for registration of his mark, Bamboo for his line of electric
guitars. The former lead vocalist of the band Rivermaya, popularly
known as Bamboo, has legal basis to oppose Wallys application
for registration even if his real name is Francisco Gaudencio Lope
Berardo Maalac.
A. TRUE
B. FALSE
Territoriality Principle
Trademark rights are recognized within a state only when the
goods or services are used in commerce within the state
Applying the territoriality principle, a foreign trademark MAY enjoy
protection rights in the Philippines only when the goods or services
are used in commerce in the Philippines.
Q: Telefonica, a telecommunications corporation from Spain, may
validly register its trademark TelefonoIntelegente for its goods
namely, smart phones, in the Philippines considering they have
home country, 4 months ago
A. TRUE
B. FALSE
147.2. The exclusive right of the owner of a well-known mark defined in
Subsection 123.1(e) which is registered in the Philippines, shall extend to
goods and services which are not similar to those in respect of which the
mark is registered:
Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or
services and the owner of the registered mark:
o Provided, further, That the interests of the owner of the
registered mark are likely to be damaged by such use
9. USE BY THIRD PARTIES OF NAMES, ETC. SIMILAR TO REGISTERED
MARK
24
LIP Class Notes 2016 Atty. Castillo
Sec. 148. Use of Indications by Third Parties for Purposes Other than those
for which the Mark is Used. - Registration of the mark shall not confer on
the registered owner the right to preclude third parties from using bona
fide their names, addresses, pseudonyms, a geographical name, or
exact indications concerning the kind, quality, quantity,
destination, value, place of origin, or time of production or of
supply, of their goods or services:
Provided, That such use is confined to the purposes of mere
identification or information and cannot mislead the public as
to the source of the goods or services.
10. INFRINGEMENT AND REMEDIES
A. TRADEMARK INFRINGEMENT
i. SEC. 155 CIVIL ACTION FOR INFRINGEMENT (memorize)
Sec. 155. Remedies; Infringement. - Any person who shall, without the
consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the:
o Sale,
o Offering for sale,
o Distribution,
o Advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such use
is likely to cause confusion, or to cause mistake, or to
deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the
o Sale,
o Offering for sale,
o Distribution, or
o Advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause
mistake, or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies
hereinafter set forth:
o Provided, That the infringement takes place at the
moment any of the acts stated in Subsection 155.1 or this
subsection are committed regardless of whether there is
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actual sale of goods or services using the infringing
material.
Elements for Infringement (CRUIL)
1. Registration of trademark
a. Only the registrant of a mark can file a case for
infringement.
b. Any foreign national/juridical person who meets the
requirements of Sec. 3 and does not engage in business in
the Phils. May bring an action for infringement W/N
licensed to do business in the Phils. (Sec. 160)
c. EXPN: Trade names, unlike trademarks, need not be
registered with the IPO before an infringement suit may be
filed
i. All that is required is that the trade name be
previously used in trade or commerce in the
Phils.
2. Trademark is reproduced, copied, counterfeited, or colorably
imitated
3. It is used in connection with the sale, or it is offering for sale or
advertising of goods, services, or business, or applied labels,
signs, wrappers, etc. intended to be used in connection with such
goods, services, or business
4. THERE IS, IN THE USE OR APPLICATION A LIKELIHOOD OF
CONFUSION
a. Note: Likelihood of confusion is the gravamen of
trademark infringement. Intent to deceive is not required.
Complete imitation is not required
b. (See: Tests To Determine Confusing Similarity Between
Marks under #6 of the outline)
5. Lack of consent on the part of the registered owner or their
assignee
Q: What if you buy a class AAA Louis Vuitton, are you liable for
infringement?
YES. Mere use of a counterfeit in connection with sale is already
infringement.
ii. CONFUSION OF GOOD VS. CONFUSION OF BUSINESS
Q: In relation to trademark infringement, what are the types of
confusions as to trademarks or trade names?
1. Confusion of goods or services
2. Confusion of business or origin
Q: What is the difference between these 2?
25
LIP Class Notes 2016 Atty. Castillo

CONFUSION OF GOODS & CONFUSION OF of an action for unfair competition (Del Monte Corporation v. Court
SERVICES BUSINESS/ORIGIN of Appeals, 181 SCRA 410 (1990)).
Kind of Exists when the ordinary Exists when one partys ALTERNATIVE ANSWER:Y is correct. The rights in a trademark are
similarity prudent purchase would product or service though acquired through registration made validly in accordance with the
be induced to purchase one different from that of of the Intellectual Property Code).
product or service bec. Of another is such as might
the similarity of the marks reasonably be assumed (B) Suppose the shoes are covered by a Philippine patent issued
or trade names used in the to originate from the latter to the owner, what would your answer be? Explain. (2%)
same kind of product or and the public would then SUGGESTED ANSWER: A patent for a product confers upon its
service be deceived into the belief owner the exclusive right of importing the product (Subsection
that there is some 71.1 of the Intellectual Property Code). The importation of a
connection between the patented product without the authorization of the owner of the
parties, which in fact is patent constitutes infringement of the patent (Subsection 76.1 of
absent the Intellectual Property Code). X can prevent the parallel
Kind of Confusingly similar marks Confusingly similar marks importation of such shoes by Y without its authorization.
goods or are used on the same are employed in different
services kinds of goods/services or non-competing B. DAMAGES
goods/service
Tests 2 TESTS: i. SEC. 156-157, SEC. 179
used 1. Dominancy Test; and
2. Holistic Test DAMAGES
Sec. 156. Actions, and Damages and Injunction for Infringement.
156.1. The owner of a registered mark may recover damages from any
iii. PARALLEL IMPORTATION person who infringes his rights,
Q: What is the measure of the damages?
Importation of Medicine and the measure of the damages suffered shall be either:
There is no infringement of trademarks or trade names if imported o 1. The reasonable profit which the complaining party
or sold drugs and medicines as well as imported or sold off-patent would have made, had the defendant not infringed his
drugs and medicines which bears marks that have not been rights, or
tampered, unlawfully modified, or infringed upon (Sec. 159.4) o 2. The profit which the defendant actually made out
of the infringement, or
BAR 2010: For years, Y has been engaged in the parallel Q: What if the damages cannot be ascertained with
importation of famous brands, including shoes carrying the reasonable certainty?
foreign brand MAGIC. Exclusive distributor X demands that Y in the event such measure of damages cannot be readily
cease importation because of his appointment as exclusive
ascertained with reasonable certainty, then the court may award
distributor of MAGIC shoes in the Philippines.
as damages:
o 1. A reasonable percentage based upon the amount of
Y counters that the trademark MAGIC is not registered with the
gross sales of the defendant or
Intellectual Property Office as a trademark and therefore no one
o 2. The value of the services in connection with which
has the right to prevent its parallel importation.
(A) Who is correct? Why? (2%) the mark or trade name was used in the infringement of
the rights of the complaining party.
SUGGESTED ANSWER:X is correct. His rights under his exclusive
Requirement of Notice the owner of the registered mark shall
distributorship agreement are property rights entitled to
protection. The importation and sale by Y of MAGIC shoes NOT be entitled tor recover profits or damages unless the acts
constitute unfair competition (Yu v. Court of Appeals, 217 SCRA have been committed with knowledge: that such imitation is likely
328 (1993)). Registration of the trademark is not necessary in case to cause confusion or to cause mistake or deceive
o Presumption of Knowledge:

Nudibranch 26
LIP Class Notes 2016 Atty. Castillo
1. If the mark is displayed with the words
registered mark or the symbol ; or
2. If the damage had otherwise actual notice of
the registration
o Note: the sign to indicate trademark or the SM sign
to indicate service mark has no legal significance in the
Phils.
IMPOUNDING
156.2. On application of the complainant, the court may impound
during the pendency of the action, sales invoices and other
documents evidencing sales.
DOUBLE DAMAGES
156.3. In cases where actual intent to mislead the public or to A. AM 2-1-11-SC, FEB. 9, 2002
defraud the complainant is shown, in the discretion of the court,
the damages may be doubled.
INJUNCTION
156.4. The complainant, upon proper showing, may also be
granted injunction.
COURT ORDER FOR DISPOSAL/DESTRUCTION OF THE INFRINGING
MATERIAL
Sec. 157. Power of Court to Order Infringing Material Destroyed.
157.1. In any action arising under this Act, in which a violation of
any right of the owner of the registered mark is established, the
court may order that goods found to be infringing be, without
compensation of any sort, disposed of outside the channels
of commerce in such a manner as to avoid any harm caused to
the right holder, or destroyed; and all labels, signs, prints,
packages, wrappers, receptacles and advertisements in the
possession of the defendant, bearing the registered mark or trade
name or any reproduction, counterfeit, copy or colorable imitation
thereof, all plates, molds, matrices and other means of making the
same, shall be delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal of the
trademark affixed shall not be sufficient other than in
exceptional cases which shall be determined by the Regulations, to
permit the release of the goods into the channels of commerce.
Sec. 179. Anonymous and Pseudonymous Works. - For purposes of this Act,
the publishers shall be deemed to represent the authors of articles and
other writings published without the names of the authors or under
pseudonyms, unless the contrary appears, or the pseudonyms or adopted
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name leaves no doubts as to the authors identity, or if the author of the
anonymous works discloses his identity
ii. CIVIL VS. CRIMINAL INFRINGEMENT
Sec. 170. Penalties.Independent of the civil and administrative
sanctions imposed by law, a criminal penalty of imprisonment
from two (2) years to five (5) years and a fine ranging from Fifty
thousand pesos (P50,000) to Two hundred thousand pesos
(P200,000), shall be imposed on any person who is found
guilty of committing any of the acts mentioned in Section
155, Section 168 and Subsection 169.1.
C. JURISDICTION
To implement and ensure the speedy disposition of cases involving
violations of intellectual property rights under R.A. No. 8293, the
Court issued A.M. No. 02-1-11-SC dated February 19, 2002
designating certain Regional Trial Courts as Intellectual
Property Courts. On June 17, 2003, the Court further issued a
Resolution consolidating jurisdiction to hear and decide Intellectual
Property Code and Securities and Exchange Commission cases in
specific Regional Trial Courts designated as Special
Commercial Courts.
B. AM 03-03-03-SC JULY 1, 2003
The Regional Courts previously designated as SEC
Courts through the: (a) Resolutions of this Court dated 21
November 2000, 4 July 2001, 12 November 2002, and 9 July 2002,
all issued in A.M. No. 00-11-03-SC, (b) Resolution dated 27 August
2001 in A.M. No. 01-5-298-RTC; and (c) Resolution dated 8 July
2002 in A.M. No. 01-12-656-RTC are hereby DESIGNATED and
shall be CALLED as Special Commercial Courts to try and
decide cases involving violations of Intellectual Property Rights
which fall within their jurisdiction and those cases formerly
cognizable by the Securities and Exchange Commission;
The Special Commercial Courts shall have jurisdiction over
cases arising within their respective territorial
jurisdiction with respect to the National Capital Judicial Region
and within the respective provinces with respect to the First to
Twelfth Judicial Regions. Thus, cases shall be filed in the Office
of the Clerk of Court in the official station of the
designated Special Commercial Court;
C. SEC. 10.2
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LIP Class Notes 2016 Atty. Castillo
Sec. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall
have the following functions:
10.1. Hear and decide opposition to the application for registration
of marks; cancellation of trademarks; subject to the provisions of
Section 64, cancellation of patents, utility models, and industrial
designs; and petitions for compulsory licensing of patents;
10.2. (a) Exercise original jurisdiction in administrative
complaints for violations of laws involving intellectual property
rights:
o Provided, That its jurisdiction is limited to complaints
where the total damages claimed are not less than Two
hundred thousand pesos (P200,000):
Provided, further, That availment of the
provisional remedies may be granted in
accordance with the Rules of Court. The Director
of Legal Affairs shall have the power to hold and
punish for contempt all those who disregard
orders or writs issued in the course of the
proceedings.
(b) After formal investigation, the Director for Legal Affairs may
impose one (1) or more of the following administrative penalties:
o (i) The issuance of a cease and desist order which shall
specify the acts that the respondent shall cease and desist
from and shall require him to submit a compliance report
within a reasonable time which shall be fixed in the order;
o (ii) The acceptance of a voluntary assurance of compliance
or discontinuance as may be imposed. Such voluntary
assurance may include one or more of the following:
(1) An assurance to comply with the provisions of
the intellectual property law violated;
(2) An assurance to refrain from engaging in
unlawful and unfair acts and practices subject of
the formal investigation;
(3) An assurance to recall, replace, repair, or
refund the money value of defective goods
distributed in commerce; and
(4) An assurance to reimburse the complainant
the expenses and costs incurred in prosecuting
the case in the Bureau of Legal Affairs.
o The Director of Legal Affairs may also require the
respondent to submit periodic compliance reports and file
a bond to guarantee compliance of his undertaking;
o (iii) The condemnation or seizure of products which are
subject of the offense. The goods seized hereunder shall
be disposed of in such manner as may be deemed
appropriate by the Director of Legal Affairs, such as by
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sale, donation to distressed local governments or to
charitable or relief institutions, exportation, recycling into
other goods, or any combination thereof, under such
guidelines as he may provide;
o (iv) The forfeiture of paraphernalia and all real and
personal properties which have been used in the
commission of the offense;
o (v) The imposition of administrative fines in such amount
as deemed reasonable by the Director of Legal Affairs,
which shall in no case be less than Five thousand pesos
(P5,000) nor more than One hundred fifty thousand pesos
(P150,000). In addition, an additional fine of not more than
One thousand pesos (P1,000) shall be imposed for each
day of continuing violation;
o (vi) The cancellation of any permit, license, authority, or
registration which may have been granted by the Office,
or the suspension of the validity thereof for such period of
time as the Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
o (vii) The withholding of any permit, license, authority, or
registration which is being secured by the respondent from
the Office;
o (viii) The assessment of damages;
o (ix) Censure; and
o (x) Other analogous penalties or sanctions.
10.3. The Director General may by Regulations establish the
procedure to govern the implementation of this Section.
D. REQUIREMENT OF NOTICE
Requirement of Notice the owner of the registered mark shall NOT be
entitled tor recover profits or damages unless the acts have been
committed with knowledge: that such imitation is likely to cause confusion
or to cause mistake or deceive
Presumption of Knowledge:
o 1. If the mark is displayed with the words registered
mark or the symbol ; or
o 2. If the damage had otherwise actual notice of the
registration
11. UNFAIR COMPETITION
A. SEC. 168
Sec. 168. Unfair Competition, Rights, Regulation and Remedies. -
28
LIP Class Notes 2016 Atty. Castillo
168.1. A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others,
whether or not a registered mark is employed, has a property right in the
goodwill of the said goods, business or services so identified, which will be
protected in the same manner as other property rights.
Unfair Competition
168.2. Any person who shall employ deception or any other mutatis mutandis.
means contrary to good faith by which he shall pass off the
goods manufactured by him or in which he deals, or his business,
or services for those of the one having established such goodwill,
or who shall commit any acts calculated to produce said
result, shall be guilty of unfair competition, and shall be subject to
an action therefor.
o Goodwill the advantage or benefit which is acquired by
an establishment or business in consequence of the
general public patronage and encouragement which it
receives from constant or habitual customers on account
of its local position reputation for skill, or affluence, etc.
168.3. In particular, and without in any way limiting the scope of manufactures rubber shoes with the trademark JAVORSKI which
protection against unfair competition, the following shall be
deemed guilty of unfair competition:
o (a) Any person, who is selling his goods and
(GD-FF)
Gives them the GENERAL APPEARANCE of
goods of another manufacturer or dealer,
either as to the goods themselves or in the
wrapping of the packages in which they are
contained, or the devices or words thereon, or in
any other feature of their appearance, which
would be likely to influence purchasers to
believe that the goods offered are those of a
manufacturer or dealer, other than the actual
manufacturer or dealer, or
Who otherwise clothes the goods with such
appearance as shall DECEIVE the public and
defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of
any vendor engaged in selling such goods with a
like purpose;
o (b) Any person who by any artifice, or device, or who
employs any other means calculated to induce the
FALSE BELIEF that such person is offering the services
of another who has identified such services in the mind of
the public; or
o (c) Any person who shall
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Make any FALSE STATEMENT in the course of
trade or
Who shall commit any other act contrary to
good faith of a nature calculated to DISCREDIT
the goods, business or services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply
TEST to determine Unfair Competition whether certain goods have been
intentionally clothed with an appearance which is likely to deceive the
ordinary purchaser exercising ordinary care, and not whether certain
limited class of purchasers with special knowledge not possessed by the
ordinary purchaser could avoid mistake by the exercise of his special
knowledge. Inherent element: fraud/deceit
Q: N Corporation manufactures rubber shoes under the trademark
JORDAN which hit the Philippine market in 1985, and registered
its trademark with the BPTTT in 1990. PK Company also
it registered with the BPTTT in 1978. In 2002, PK Company
adopted and copied the design of N Corporations JORDANN
rubber shoes, both as to shape and color, but retained the
trademark JAVORSKI on its products. May PK Company be held
liable to N Corporation? Explain. (Bar question)
YES. PK Company may be held liable by N Corporation for Unfair
Competition
Under Sec. 168.3(a) of the IPC, a person is committing unfair
competition if he sells goods and and gives them the general
appearance of goods of another manufacturer or dealer, either as
to the goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon, or in
any other feature of their appearance, which would be likely to
influence purchasers to believe that the goods offered are those of
a manufacturer or dealer, other than the actual manufacturer or
dealer
The circumstances contemplated by Sec. 168.3(a) are present in
this case because PK Company gave its shoes the appearance of
the shoes of N corporation and the same will tend to mislead the
public as to the origin of the goods.
B. INFRINGEMENT VS. UNFAIR COMPETITION
Q: What is the difference between trademark infringement and
unfair competition? (BAR 1996)
INFRINGEMENT UNFAIR
29
LIP Class Notes 2016 Atty. Castillo

COMPETITION
As to There is Involves passing off FACTS: Petitioners received information that respondent was selling,
Definition unauthorized use ones goods as those offering for sale, or distributing liquefied petroleum gas (LPG) by illegally
of trademark of another and giving refilling the steel cylinders manufactured by and bearing the duly
ones goods the registered trademark and device of respondent Petron. Petron then
appearance of that of obtained the services of a paralegal investigation team who went to
another respondent's premises located in San Juan, Baao, Camarines Sur, bringing
As to Not necessary to Necessary to along four empty cylinders of Shellane, Gasul, Total and Superkalan and
Fraudulen establish fraudulent establish fraudulent asked that the same be refilled. Respondent's employees then refilled said
t Intent intent intent empty cylinders at respondent's refilling station. Petitioners then requested
As to Registration of the Prior registration of the NBI to further investigate this matter. They witnessed trucks coming
Necessity trademark is a trademark is not from respondent's refilling facility loaded with Gasul, Shellane and
of prior necessary for the necessary in unfair Marsflame cylinders, which then deposit said cylinders in different places,
registrati filing of an action competition one of them a store called Edrich Enterprises.
on for infringement Thus, the NBI, in behalf of Petron and Shell, filed with the Regional Trial
As to Limited Scope: only Wider scope: unfair Court of Naga City (RTC-Naga), two separate Applications for Search
Scope those cases competition is Warrant. The RTC-Naga City issued an Order granting said Applications and
specified under the broader because it Search Warrant Nos. 2002-27 and 2002-28 were issued. On the same day,
IPC includes cases that the NBI served the warrants at the respondent's premises in an orderly and
are covered not only peaceful manner, and articles or items described in the warrants were
by the IPC but also by seized.
Art. 28 of the Civil On November 4, 2002, respondent filed a Motion to Quash Search
Code Warrants, where the only grounds cited were: (a) there was no probable
As to Same class of Different classes of cause; (b) there had been a lapse of four weeks from the date of the test-
Goods goods or services goods or services may buy to the date of the search and seizure operations; (c) most of the
involved must be involved be involved cylinders seized were not owned by respondent but by a third person; and
(d) Edrich Enterprises is an authorized outlet of Gasul and Marsflame. In an
Q: In what way is an infringement of a trademark similar to that Order dated February 21, 2003, the RTC-Naga denied the Motion to Quash.
which pertains to unfair competition?(BAR 2003) However, on March 27, 2003, respondent's new counsel filed an
Appearance with Motion for Reconsideration. It was only in said motion
Q: Is smell registrable as a trademark in the Philippines? where respondent raised for the first time, the issue of the impropriety of
Not yet. filing the Application for Search Warrant at the RTC-Naga City when the
alleged crime was committed in a place within the territorial jurisdiction of
the RTC-Iriga City. Respondent pointed out that the application filed with
Q: So what if someone in the Philippines registers their version of
the RTC-Naga failed to state any compelling reason to justify the filing of
Dolce & Gabbana perfume, ca this constitute infringement?
the same in a court which does not have territorial jurisdiction over the
NO. However, it can still constitute Unfair Competition under Art.
place of the commission of the crime, as required by Section 2 (b), Rule
28 of the Civil Code which is broader in scope than infringement. 126 of the Revised Rules of Criminal Procedure.
UNFAIR COMPETITION - Involves passing off ones goods as In an Order dated July 28, 2003, the RTC-Naga issued an Order granting
those of another and giving ones goods the appearance of that of respondent's Motion for Reconsideration, thereby quashing the Search
another Warrants. Petitioner then appealed to the CA, but the appellate court, in its
Decision dated March 13, 2009, affirmed the RTC Order quashing the
Q: Does unfair competition cover the divulging of trade secrets? search warrants. Petitioner's motion for reconsideration of the CA Decision
NO. However, it can fall within Abuse of Right under the Civil Code was denied per Resolution dated September 14, 2009.

C. PILIPINAS SHELL PETROLEUM, ET AL. VS. ROMARS INTL ISSUES:

DOCTRINE: Venue is jurisdictional

Nudibranch 30
LIP Class Notes 2016 Atty. Castillo
1. Whether venue in an application for search warrant is jurisdictional? -
NO
2. Whether the issue of lack of jurisdiction may be waived and may even
be raised for the first time on appeal? - NO
HELD:
SEC. 2. Court where applications for search warrant shall be filed. - An
application for search warrant shall be filed with the following:
cralawred
(a) Any court within whose territorial jurisdiction a crime was committed.
(b) For compelling reasons stated in the application, any court within the
judicial region where the crime was committed if the place of the
commission of the crime is known, or any court within the judicial region
where the warrant shall be enforced.
However, if the criminal action has already been filed, the
application shall only be made in the court where the criminal action is
pending.
However, the CA gravely erred in equating the proceedings for applications
for search warrants with criminal actions themselves. Proceedings for said
applications are not criminal in nature and, thus, the rule that venue is
jurisdictional does not apply thereto. Evidently, the issue of whether the
application should have been filed in RTC-Iriga City or RTC-Naga, is not one
involving jurisdiction because, as stated in the afore-quoted case, the
power to issue a special criminal process is inherent in all courts.
Unfortunately, the foregoing reasoning of the CA, is inceptionally flawed,
because as pronounced by the Court in Malaloan v. Court of Appeals, and
reiterated in the more recent Worldwide Web Corporation v. People of the
Philippines, to wit: an application for a search warrant is a special criminal
process, rather than a criminal action. The basic flaw in this reasoning is in
erroneously equating the application for and the obtention of a search
warrant with the institution and prosecution of a criminal action in a trial
court. It would thus categorize what is only a special criminal process, the
power to issue which is inherent in all courts.
Moreover, the Court must again emphasize its previous admonition in
Spouses Anunciacion v. Bocanegra,that:
We likewise cannot approve the trial court's act of entertaining
supplemental motions x x x which raise grounds that are already deemed
waived. To do so would encourage lawyers and litigants to file piecemeal
objections to a complaint in order to delay or frustrate the prosecution of
the plaintiff's cause of action.
Nudibranch
D. WILLAWARE PRODUCTS CORP. V. JESICHRIS MFG. CORP.
DOCTRINE: The concept of unfair competition under article 28 of the civil
code is very much broader than that covered by intellectual property laws
FACTS: Jesichris Manufacuring Company (Jesichris) alleges in its complaint
for damages for unfair competition that it is a company engaged in the
manufacture and distribution of plastic and metal products. It pioneered
the use of plastic in place of rubber in the manufacture of automotive
underchassis parts such as spring eye bushing, stabiliser bushing, and
others. Willaware Products Corporation, on the other hand is engaged in
the manufacture of kitchenware items made of plastic and metal, has an
office with physical proximity to its office, and in view of the fact that some
of its employees had transferred to it, Jesichris discovered that Willaware
had been manufacturing and distributing the same automotive parts with
exactly similar design, same material and colours as Jesichris manufactures
and distributes, but at a lower price. Willware deliberately copied its
product designs which constitute unfair competition. It thus prayed for
damages in terms of unrealised profits in the amount of P2Million. On the
other hand, Willaware, in its defense, denied all the allegations in the
complaint except as to the proximity of their office to that of Jesichris, and
that some of its employees transferred to Willaware. As an affirmative
defense, Willaware posits that there was no unfair competition as the
plastic products were mere reproductions of the original parts which merely
conform to their original designs and specifications. Thus, Jesichris cannot
claim that it originated the use of the plastic automotive parts, and even
assuming that it did so, it still has no exclusive right to sell these products
since it has no patent over these products. In fact, other establishments
were offering them for sale.
After trial, the RTC rendered a decision in favour of Jesichris. It ruled that
Willaware clearly invaded the right of Jesichris by deliberately copying and
performing acts amounting to unfair competition. It enjoined Willaware
from continuing its activity, and awarded damages in favor of Jesichris. On
appeal to the CA, the latter affirmed with modification that RTC decision.
Willaware is now before the Supreme Court assailing the RTC and CA
decisions.
ISSUES:
1. Whether or not there is unfair competition under human relations when
the parties are not competitors and there is actually no damage on the
part of Jesichris?
2. Consequently, if there is no unfair competition, should there be moral
damages and attorneys fees?
3. Whether or not the addition of nominal damages is proper although no
rights have been established?
31
LIP Class Notes 2016 Atty. Castillo
4. If ever the right of Jesichris refers to its copyright on automotive parts,
should it be considered in the light of the said copyrights were considered
to be void by no less than this Honorable Court in SC GR No. 161295?
5. If the right involved is goodwill then the issue is: whether or not
Jesichris has established goodwill?
HELD: Prefatorily, we would like to stress that the instant case falls under
Article 28 of the Civil Code on human relations, and not unfair competition
under Republic Act No. 8293,1 as the present suit is a damage suit and the
products are not covered by patent registration. A fortiori, the existence of
patent registration is immaterial in the present case.
The concept of unfair competition under Article 28 is very much broader
than that covered by intellectual property laws. Under the present article,
which follows the extended concept of unfair competition in American
jurisdictions, the term covers even cases of discovery of trade secrets of a
competitor, bribery of his employees, misrepresentation of all kinds,
interference with the fulfillment of a competitors contracts, or any
malicious interference with the latters business.2
With that settled, we now come to the issue of whether or not petitioner
committed acts amounting to unfair competition under Article 28 of the
Civil Code.
We find the petition bereft of merit.
Article 28 of the Civil Code provides that unfair competition in agricultural,
commercial or industrial enterprises or in labor through the use of force,
intimidation, deceit, machination or any other unjust, oppressive or high-
handed method shall give rise to a right of action by the person who
thereby suffers damage.
From the foregoing, it is clear that what is being sought to be prevented is
not competition per se but the use of unjust, oppressive or high- handed
methods which may deprive others of a fair chance to engage in business
or to earn a living. Plainly, what the law prohibits is unfair competition and
not competition where the means used are fair and legitimate.
In order to qualify the competition as unfair, it must have two
characteristics: (1) it must involve an injury to a competitor or trade rival,
and (2) it must involve acts which are characterized as contrary to good
conscience, or shocking to judicial sensibilities, or otherwise unlawful; in
the language of our law, these include force, intimidation, deceit,
machination or any other unjust, oppressive or high-handed method. The
public injury or interest is a minor factor; the essence of the matter
appears to be a private wrong perpetrated by unconscionable means3.
Nudibranch
Here, both characteristics are present.
First, both parties are competitors or trade rivals, both being engaged in
the manufacture of plastic-made automotive parts. Second, the acts of the
petitioner were clearly contrary to good conscience as petitioner
admitted having employed respondents former employees, deliberately
copied respondents products and even went to the extent of selling these
products to respondents customers.4
To bolster this point, the CA correctly pointed out that petitioners hiring of
the former employees of respondent and petitioners act of copying the
subject plastic parts of respondent were tantamount to unfair competition,
viz.:
The testimonies of the witnesses indicate that [petitioner] was in bad faith
in competing with the business of [respondent]. [Petitioners] acts can be
characterized as executed with mischievous subtle calculation. To illustrate,
in addition to the findings of the RTC, the Court observes that [petitioner] is
engaged in the production of plastic kitchenware previous to its
manufacturing of plastic automotive spare parts, it engaged the services of
the then mold setter and maintenance operator of [respondent], De
Guzman, while he was employed by the latter. De Guzman was hired by
[petitioner] in order to adjust its machinery since quality plastic automotive
spare parts were not being made. It baffles the Court why [petitioner]
cannot rely on its own mold setter and maintenance operator to remedy its
problem. [Petitioners] engagement of De Guzman indicates that it is
banking on his experience gained from working for [respondent].
Another point we observe is that Yabut, who used to be a warehouse and
delivery man of [respondent], was fired because he was blamed of spying
in favor of [petitioner]. Despite this accusation, he did not get angry. Later
on, he applied for and was hired by [petitioner] for the same position he
occupied with [respondent]. These sequence of events relating to his
employment by [petitioner] is suspect too like the situation with De
Guzman5.
Thus, it is evident that petitioner is engaged in unfair competition as shown
by his act of suddenly shifting his business from manufacturing
kitchenware to plastic-made automotive parts; his luring the employees of
the respondent to transfer to his employ and trying to discover the trade
secrets of the respondent.6
Moreover, when a person starts an opposing place of business, not for the
sake of profit to himself, but regardless of loss and for the sole purpose of
driving his competitor out of business so that later on he can take
advantage of the effects of his malevolent purpose, he is guilty of wanton
wrong7. As aptly observed by the court a quo, the testimony of petitioners
32
LIP Class Notes 2016 Atty. Castillo

witnesses indicate that it acted in bad faith in competing with the business
of respondent, to wit:

In sum, petitioner is guilty of unfair competition under Article 28 of the Civil

Code.

12. TRADE NAMES OR BUSINESS NAMES

121.3. "Trade name" means the name or designation identifying or
distinguishing an enterprise;

13. COLLECTIVE MARKS

121.2. "Collective mark" means any visible sign designated as
such in the application for registration and capable of
distinguishing the origin or any other common characteristic,
including the quality of goods or services of different enterprises
which use the sign under the control of the registered owner of the
collective mark;
14. CASES
FINALS
1. DEFINITION OF COPYRIGHTS
It is the element of a persons ownership of his creation that
permits him (author, composer or artist) to exclusively print,
publish and vend the product of his creation
o It gives the creator of an original work the exclusive rights
to it, usually for a limited period of time.
o Literally: the right to copy, but also gives the copyright-
holder the right to be credited for his work; to determine
who may perform work; and other related rights
o Scope: literary and artistic works which are original
intellectual creations in the literary and artistic domain.
(Kho vs. CA)
2 Kinds of Copyright:
o (a) Common Law Copyrights - that which secures to the
owner exclusively until its public dissemination
o (b) Statutory Copyright that which secures protection
and exclusively in the owner by force of law even when
the work has been made accessible to the public.

Q: What are the elements for the Creation of a Copyrightable

work?
1. ORIGINALITY does not mean novelty nor uniqueness nor
creativity. It simply means that the work owes its origin to the
author
2. EXPRESSION there must be a fixation. To be fixed, the work
must be embodied in a medium sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise communicated
for a period of more than a transitory duration

Nudibranch 33
LIP Class Notes 2016 Atty. Castillo

Q: If copyright is protected from the moment of creation and Thus, there is no copyright
registration is not required for protection, what then is the infringement when one,
purpose of registering the copyright with the IPO? who without being
When copyright is registered, a copyright certificate is issued. The authorized, used a
copyright certificate provides prima facie evidence of copyrighted plan to
originality which is one element of copyright validity construct a structure.
Reason: there is protection
2. TERRITORIAL APPLICATION OF COPYRIGHT LAWS only to the description or
Our copyright laws have no extra-territorial operation and the expression, NOT the
rights granted under our laws can only be infringed by acts done structure itself.
within our territorial jurisdiction Purely a statutory right (it only
covers works falling within the
3. COPYRIGHT IS DISTINCT FROM TRADEMARKS AND PATENTS statutory enumeration)
Need not be registered to be There can be no patent
Q: Inventions are within the scope of patents. Assuming that the protected (unlike patent and infringement if there is no patent
inventor wrote a book describing how to create that invention trademark) issued. (no patent, no protection)
without, however, actually producing the invention. The book, Simple copyright registration with Must have the patentable
being subject of copyright, is protected from the moment it was the National library (Now with the invention scrutinized by the
completed. Would this mean that the invention described in the IPO) Intellectual Property Office
book is also protected? Protected for 50 years Protected for 17 years (Now 20
NO. See Pearl & Dean vs. SM years)

A. Cases 2. ELIDAD KHO VS. CA (2002)

1. PEARL & DEAN PHILS. INC. VS. SHOEMART, INC. (2003) o In this case, the SC held: trademark, copyright and
o It was contended that the copyright over the patents are DIFFERENT intellectual property rights that
engineering drawings extended to the actual light cannot be interchanged with one another.
boxes illustrated in the said drawings TRADEMARK COPYRIGHT PATENT
o SC sustained CAs ruling that the light boxes are not A TRADEMARK is any Meanwhile, the scope PATENTABLE
protected by the copyright over the drawings. visible sign capable of of a COPYRIGHT is INVENTIONS, on the
Reason: when a drawing is technical and distinguishing the confined to literary other hand, refer to
depicts an object, a copyright over the goods (trademark) or and artistic works any technical solution
drawings will not extend to the actual object. services (service which are original of a problem in any
o In the case at bar, SMI is not liable for infringing Pearl mark) of an enterprise intellectual creations field of human activity
and Deans Copyright over technical drawings of and shall include a in the literary and which is new, involves
advertising display unit because the copyright does stamped or marked artistic domain an inventive step and
not extend to the actual lightboxes. container of goods. protected from the is industrially
What the law does not include, it excludes, moment of their applicable.
and for good reason: the light box was not a In relation thereto, a creation.
literary or artistic piece which could be TRADE NAME means
copyrighted under the law. the name or
o In this case, the SC distinguished Copyright and designation
Patent. identifying or
COPYRIGHT PATENT distinguishing an
Extends only to the DESCRIPTION Extends to the INVENTION. enterprise.
or EXPRESSION of the idea/object
and not to the idea/object itself 3. CHING VS. SALINAS

Nudibranch 34
LIP Class Notes 2016 Atty. Castillo
o A copyright certificate provides prima facie evidence
of originality which is one element of copyright
validity
o In this case, the DENICOLA TEST was used
o SC: It bears stressing that there is no copyright
protection for works of applied art or industrial design
which have aesthetic or artistic features that cannot
be identified separately from the utilitarian aspects of
the article. Functional components of useful articles,
no matter how artistically designed, have generally
been denied copyright protection unless they are
separable from the useful article
o In other words, a design of an applied art is subject to
copyright if you can separate artistic aspect from
utility aspect. The artistic aspect is subject to
copyright. However, if the artisitic aspect cannot be
separated from the utility aspect, then it is not subject
to copyright.
B. Denicola test
This test inquires into which aspects of the work are dictated by
the functional constraints of the article and which aspects reflect
unconstrained perspective of the artist. (Professor Robert Denicola)
C. Can an article of commerce serve as trademark and at the same
time enjoy patent and copyright protection?
YES.
BAR 2010: Can an article of commerce serve as a trademark and at
the same time enjoy patent and copyright protection? Explain and
give an example. (2%)
SUGGESTED ANSWER:A stamped or marked container of goods can
be registered as trademark (subsections 113.1 of the Intellectual
Property Code). An original ornamental design or model for articles
of manufacturer can be copyrighted (Subsection 172.1 of the
Intellectual Property Code). An ornamental design cannot be
patented, because aesthetic creations cannot be patented (Section
22 of the Intellectual Property Code). However, it can be registered
as an industrial design (Subsections 113.1 and 172.1 of the
Intellectual Code). Thus, a container of goods which has an original
ornamental design can be registered as trademark, can be
copyrighted, and can be registered as an industrial design.
ALTERNATIVE ANSWER:It is entirely possible for an article of
commerce to bear a registered trademark, be protected by a
patent and have most, or some part of it copyrighted. A book is a
good example. The name of the publisher or the colophon used in
Nudibranch
the book may be registered trademarks, the ink used in producing
the book may be covered by a patent, and the text and design of
the book may be covered by copyrighted.
4. COPYRIGHT OVER LITERARY AND WORKS IS VESTED FROM THE
MOMENT OF CREATION
The special thing about copyright as compared to patent and
trademark is that it need not be registered to be protected.
o Reason: the law provides that original intellectual
creations are protected from the moment of its
creation
ORIGINAL WORKS
Section 172. Literary and Artistic Works. -
Section 172.1. Literary and artistic works, hereinafter referred to
as "works", are original intellectual creations in the literary and
artistic domain protected from the moment of their creation and
shall include in particular:
o (a) Books, pamphlets, articles and other writings;
o (b) Periodicals and newspapers;
o (c) Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not reduced in
writing or other material form;
o (d) Letters;
o (e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb shows;
o (f) Musical compositions, with or without words;
o (g) Works of drawing, painting, architecture,
sculpture, engraving, lithography or other works of
art; models or designs for works of art;
o (h) Original ornamental designs or models for articles
of manufacture, whether or not registrable as an
industrial design, and other works of applied art;
o (i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science;
o (j) Drawings or plastic works of a scientific or
technical character;
o (k) Photographic works including works produced by
a process analogous to photography; lantern slides;
o (l) Audiovisual works and cinematographic works
and works produced by a process analogous to
cinematography or any process for making audio-
visual recordings;
o (m) Pictorial illustrations and advertisements;
o (n) Computer programs; and
35
LIP Class Notes 2016 Atty. Castillo
o (o) Other literary, scholarly, scientific and artistic
works.
Section 172.2. Works are protected by the sole fact of their
creation, irrespective of their mode or form of expression, as well
as of their content, quality and purpose
UNILEVER PHILIPPINES, INC. VS. CA
o Statutory copyright is conferred by the statute when
the work is made under the Intellectual Property Code.
o Publication is not required. Copyright subsists from the
moment of creation. Acquisition of copyright is not
contingent or dependent on any formality or
registration
5. WORKS PROTECTED BY COPYRIGHT
A.1 ORIGINAL WORKS Section 172 (See above)
A.2 DERIVATIVE WORKS these are creations that are based on an
existing work. Thus, the series of film Harry Potter is a derivative work
based on the novel of the same title. A song that is a re-make of an old
song is another example of derivative works.
Section 173. Derivative Works. -173.1. The following derivative
works shall also be protected by copyright:
o (a) Dramatizations, translations, adaptations,
abridgments, arrangements, and other alterations of
literary or artistic works; and
o (b) Collections of literary, scholarly or artistic works, and
compilations of data and other materials which are
original by reason of the selection or coordination or
arrangement of their contents.
Sec. 173.2. The works referred to in paragraphs (a) and (b) of
Subsection Sec.173.1 shall be protected as a NEW WORKS:
o Provided however, That such new work shall NOT:
Affect the force of any subsisting copyright
upon the original works employed or any part
thereof, or
Be construed to imply any right to such use of
the original works, or
To secure or extend copyright in such original
works
B. Requirements of Originality
An original work is that which requires originality in skill or labor in
execution such that the works became individual either in matter,
forms arrangement or treatment (not necessarily original thought,
idea or research)
Nudibranch
SAMBOY VS. LEVI STRAUSS
o To be entitled to a copyright, the thing being copyrighted
must be original, created by the author through his own
skill, labor and judgment, without directly copying or
evasively imitating the work of another.
Q: What are the non-copyrightable works under the law?
6. WORKS NOT PROTECTED BY COPYRIGHT
Sec. 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall extend,
under this law, to any:
o 1. Ideas, procedures, systems, etc. that are not in
tangible form
Idea, procedure, system method or operation,
concept, principle, discovery or mere data as
such, even if they are expressed, explained,
illustrated or embodied in a work;
Reason: only the expressions of the idea,
procedure, etc. are protected
Ex: A book about healthy living thru diet may be
protected by copyright, but not the idea of
healthy living thru said diet
o 2. News of the day
News of the day and other miscellaneous facts
having the character of mere items of press
information; or
Reason: no one can have monopoly of the news or
current events
o 3. Official government texts
Any official text of a legislative, administrative
or legal nature, as well as any official translation
thereof.
Sec. 176. Works of the Government. these are works created
by an officer or employee of the Philippine Government or any of
its subdivisions and instrumentalities, including GOCCs as part of
his regularly prescribed official duties (Sec. 171.11)
o This is broader than Sec. 175 because its scope is beyond
text or documents.
o Ex: an architectural work by a government engineer
designed as part of his duty cannot be protected by
copyright
o 2 elements of a Work of Government:
1. Creator must be an officer or employee of
government;
36
LIP Class Notes 2016 Atty. Castillo
2. The work is done as part of his regularly
prescribed official duties
o Sec. 176.1. No copyright shall subsist in any work
of the Government of the Philippines.
o When APPROVAL of govt agency is required:
GR: However, prior approval of the government
agency or office wherein the work is created shall
be necessary for EXPLOITATION of such work
for profit. Such agency or office may, among
other things, impose as a condition the payment
of royalties.
EXPN: No prior approval or conditions shall
be required for the use of any purpose of
statutes, rules and regulations, and
speeches, lectures, sermons, addresses, and
dissertations, pronounced, read or rendered in
courts of justice, before administrative agencies,
in deliberative assemblies and in meetings of
public character.
HOWEVER: Sec. 176.2. The Author of
speeches, lectures, sermons, addresses,
and dissertations mentioned in the
preceding paragraphs shall have the
exclusive right of making a
COLLECTION of his works.
o Despite the above discussions, this does not mean the
government cannot be a copyright owner:
Sec. 176.3. Notwithstanding the foregoing
provisions, the Government is not precluded from
receiving and holding copyrights transferred to it
by assignment, bequest or otherwise; nor
shall publication or republication by the
government in a public document of any work in
which copy right is subsisting be taken to cause
any abridgment or annulment of the copyright or
to authorize any use or appropriation of such work
without the consent of the copyright owners.
Q: What intellectual property rights are protected by copyright?
7. RIGHTS CONFERRED BY COPYRIGHT
1. Economic Right
o Sec. 177. Copy or Economic Rights. - Subject to the
provisions of Chapter VIII, copyright or economic rights
shall consist of the exclusive right to carry out, authorize
or prevent the following acts:
Nudibranch
177.1. Reproduction of the work or substantial
portion of the work;
177.2 Dramatization, translation, adaptation,
abridgment, arrangement or other transformation
of the work;
177.3. The first public distribution of the
original and each copy of the work by sale or
other forms of transfer of ownership;
177.4. Rental of the original or a copy of an
audiovisual or cinematographic work, a work
embodied in a sound recording, a computer
program, a compilation of data and other
materials or a musical work in graphic form,
irrespective of the ownership of the original or the
copy which is the subject of the rental;
177.5. Public display of the original or a copy of
the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of
the work
2. Moral Rights
o Sec. 193. Scope of Moral Rights. - The author of a
work shall, independently of the economic rights in
Section 177 or the grant of an assignment or license with
respect to such right, have the right:
193.1. To require that the authorship of the works
be attributed to him, in particular, the right that
his name, as far as practicable, be indicated in a
prominent way on the copies, and in connection
with the public use of his work;
193.2. To make any alterations of his work prior
to, or to withhold it from publication;
193.3. To object to any distortion, mutilation or
other modification of, or other derogatory action
in relation to, his work which would be prejudicial
to his honor or reputation; and
193.4. To restrain the use of his name with
respect to any work not of his own creation or in a
distorted version of his work
3. Rights of Performers, Producers of Sounds Recording
and Broadcasting Organization
o Sec. 203. Scope of Performers' Rights. - Subject to
the provisions of Section 212, performers shall enjoy the
following exclusive rights:
Sec. 203.1. As regards their performances, the
right of authorizing:
37
LIP Class Notes 2016 Atty. Castillo
(a) The broadcasting and other
communication to the public of their
performance; and
(b) The fixation of their unfixed
performance.
Sec. 203.2. The right of authorizing the direct or
indirect reproduction of their performances fixed
in sound recordings, in any manner or form;
Sec. 203.3. Subject to the provisions of Section
206, the right of authorizing the first public
distribution of the original and copies of their
performance fixed in the sound recording through
sale or rental or other forms of transfer of
ownership;
Sec. 203.4. The right of authorizing the
commercial rental to the public of the original and
copies of their performances fixed in sound
recordings, even after distribution of them by, or
pursuant to the authorization by the performer;
and
Sec. 203.5. The right of authorizing the making
available to the public of their performances fixed
in sound recordings, by wire or wireless means, in
such a way that members of the public may
access them from a place and time individually
chosen by them.
o Sec. 204. Moral Rights of Performers. -
Sec. 204.1. Independently of a performer's
economic rights, the performer, shall, as regards
his live aural performances or performances fixed
in sound recordings, have the right to claim to be
identified as the performer of his performances,
except where the omission is dictated by the
manner of the use of the performance, and to
object to any distortion, mutilation or other
modification of his performances that would be
prejudicial to his reputation.
Sec. 204.2. The rights granted to a performer in
accordance with Subsection 203.1 shall be
maintained and exercised fifty (50) years after his
death, by his heirs, and in default of heirs, the
government, where protection is claimed.
o Sec. 206. Additional Remuneration for Subsequent
Communications or Broadcasts. - Unless otherwise
provided in the contract, in every communication to the
public or broadcast of a performance subsequent to the
Nudibranch
first communication or broadcast thereof by the
broadcasting organization, 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
o Producers of Sound Recordings: Sec. 208. Scope of
Right. - Subject to the provisions of Section 212,
producers of sound recordings shall enjoy the following
exclusive rights:
Sec. 208.1. The right to authorize the direct or
indirect reproduction of their sound recordings, in
any manner or form; the placing of these
reproductions in the market and the right of rental
or lending;
Sec. 208.2. The right to authorize the first public
distribution of the original and copies of their
sound recordings through sale or rental or other
forms of transferring ownership; and
Sec. 208.3. The right to authorize the
commercial rental to the public of the original and
copies of their sound recordings, even after
distribution by them by or pursuant to
authorization by the producer
Q: What is Droite De Suite?
Literally: art proceeds right. The right is exercisable even after
the authors death, provided that the work is still in copyright
Sec. 200. In every sale or lease of an original work of painting or
sculpture or of the original manuscript of a writer or composer,
subsequent to the first disposition thereof by the author, the
author or his heirs shall have an inalienable right to participate in
the gross proceeds of the sale or lease to the extent of 5%. The
right shall exist during the lifetime of the author and for 50 years
after his death
Requisites: (SOPS)
o 1. Sale or lease;
o 2. Of an original work;
o 3. Of painting or sculpture, or of the original manuscript
of a writer or composer; and
o 4. Subsequent to the first disposition thereof by the
author.
8. LIMITATIONS OF COPYRIGHT
Sec. 184. Limitations on Copyright.
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LIP Class Notes 2016 Atty. Castillo
Sec. 184.1. Notwithstanding the provisions of Chapter V, the
following acts shall NOT CONSTITUTE INFRINGEMENT of
copyright:
o (a) The recitation or performance of a work, once it has
been lawfully made accessible to the PUBLIC,
If done privately and free of charge OR if made
strictly for a charitable or religious institution or
society;
o (b) The making of QUOTATIONS from a PUBLISHED
WORK if they are compatible with fair use and only to the
extent justified for the purpose, including quotations from
newspaper articles and periodicals in the form of press
summaries:
Provided, That the source and the name of the
author, if appearing on the work, are
mentioned;
Sec. 171.7. "PUBLISHED WORKS" means
works, which, with the consent of the authors, are
made available to the public by wire or
wireless means in such a way that members of
the public may access these works from a place
and time individually chosen by them
o (c) The REPRODUCTION OR COMMUNICATION to the
public by mass media of ARTICLES on current political,
social, economic, scientific or religious topic, lectures,
addresses and other works of the same nature, which are
delivered in public if such use is for information purposes
and has not been expressly reserved:
Provided, That the source is clearly indicated;
Sec. 171.9. "REPRODUCTION" is the making
of one (1) or more copies of a work or a sound
recording in any manner or form.
o (d) The REPRODUCTION AND COMMUNICATION to the
public of literary, scientific or artistic works as part
of reports of CURRENT EVENTS by means of
photography, cinematography or broadcasting to the
extent necessary for the purpose;
o (e) The INCLUSION of a work in a publication, broadcast,
or other communication to the public, sound recording or
film, if such inclusion is made by way of illustration for
teaching purposes AND is compatible with fair use:
Provided, That the source and of the name of the
author, if appearing in the work, are mentioned;
o (f) The RECORDING made in schools, universities, or
educational institutions of a work included in a
Nudibranch
broadcast for the use of such schools, universities or
educational institutions:
Provided, That such recording must be deleted
within a reasonable period after they were first
broadcast:
Provided, further, That such recording
may not be made from audiovisual
works which are part of the general
cinema repertoire of feature films except
for brief excerpts of the work;
o (g) The making of EPHEMERAL recordings by a
broadcasting organization by means of its own facilities
and for use in its own broadcast;
Thus, a short-lived sound clip from a song or a
movie may be used in a radio broadcast without
infringing copyright
o (h) The use made of a work by or under the direction
or control of the GOVERNMENT, by the National Library
or by educational, scientific or professional institutions
where such use is in the public interest and is compatible
with fair use;
The governments use of a work must be for
public interest. Unlike in expropriation, payment
of just compensation is not necessary
o (i) The PUBLIC PERFORMANCE or the communication
to the public of a work, in a place where no admission
fee is charged in respect of such public performance or
communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making,
subject to such other limitations as may be provided in
the Regulations;
Sec. 171.3. "Communication to the public"
or "communicate to the public" means the
making of a work available to the public by wire or
wireless means in such a way that members of
the public may access these works from a place
and time individually chosen by them
o (j) PUBLIC DISPLAY of the original or a copy of the
work not made by means of a film, slide, television image
or otherwise on screen or by means of any other device or
process:
Provided, That either the work has been
published, or, that original or the copy displayed
has been sold, given away or otherwise
transferred to another person by the author or
his successor in title; and
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LIP Class Notes 2016 Atty. Castillo
o (k) Any use made of a work for the purpose of any
JUDICIAL PROCEEDINGS or for the giving of
professional advice by a legal practitioner.
Sec. 184.2. The provisions of this section shall be interpreted in
such a way as to allow the work to be used in a manner which
does not conflict with the normal exploitation of the work and does
not unreasonably prejudice the right holder's legitimate interest.
REPRODUCTION OF PUBLISHED WORK
o Sec. 187. Reproduction of Published Work. -
o Sec. 187.1. Notwithstanding the provision of Section 177,
and subject to the provisions of Subsection 187.2, the
private reproduction of a published work in a
SINGLE COPY, where the reproduction is made by a
natural person exclusively for research and private study ,
shall be PERMITTED, without the authorization of the
owner of copyright in the work.
ELEMENTS of a permissible practice of
reproducing a copyrighted book:
1. By a Natural Person
2. For purposes of research and private study
(not mere leisure)
3. Not excluded under Sec. 187.2
o Sec. 187.2. The permission granted under Subsection
187.1 shall NOT EXTEND to the reproduction of:
(a) A work of architecture in form of building or
other construction;
(b) An entire book, or a substantial past
thereof, or of a musical work in which graphics
form by reprographic means;
(c) A compilation of data and other materials;
(d) A computer program except as provided in
Section 189; and
(e) Any work in cases where reproduction
would unreasonably conflict with a normal
exploitation of the work or would otherwise
unreasonably prejudice the legitimate interests
of the author.
FAIR USE OF COPYRIGHT WORK Fair Use is using somebody
elses work fairly, i.e. what is reasonable under the circumstances.
o It is a universally accepted limitation on copyright.
o But while the concept is simple, the application is
definitely not. Reason: it is hard to determine what is fair
under certain circumstances especially since it may not be
measured arithmetically.
o Sec. 185. Fair Use of a Copyrighted Work. -
Nudibranch
o Sec. 185.1. The FAIR USE of a copyrighted work for
criticism, comment, news reporting, teaching including
multiple copies for classroom use, scholarship, research,
and similar purposes is NOT an infringement of
copyright.
o DECOMPILATION, which is understood here to be the
reproduction of the code and translation of the forms of
the computer program to achieve the inter-operability of
an independently created computer program with other
programs may also constitute fair use.
o In determining whether the use made of a work in
any particular case is fair use, the FACTORS to be
considered shall include:
(a) The purpose and character of the use,
including whether such use is of a commercial
nature or is for non-profit education purposes ;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the
portion used in relation to the copyrighted work
as a whole; and
(d) The effect of the use upon the potential
market for or value of the copyrighted work.
o Sec. 185.2 The fact that a work is UNPUBLISHED shall
not by itself bar a finding of fair use if such finding is
made upon consideration of all the above factors .
REPRODUCTION OF COMPUTER PROGRAM:
o Sec. 189. Reproduction of Computer Program. -
o Sec. 189.1. Notwithstanding the provisions of Section
177, the reproduction in one (1) back-up copy or
adaptation of a computer program shall be permitted,
without the authorization of the author of, or other owner
of copyright in, a computer program, by the lawful owner
of that computer program: Provided, That the copy or
adaptation is necessary for:
(a) The use of the computer program in
conjunction with a computer for the purpose, and
to the extent, for which the computer program
has been obtained; and
(b) Archival purposes, and, for the replacement of
the lawfully owned copy of the computer program
in the event that the lawfully obtained copy of the
computer program is lost, destroyed or rendered
unusable.
o Sec. 189.2. No copy or adaptation mentioned in this
Section shall be used for any purpose other than the ones
determined in this Section, and any such copy or
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LIP Class Notes 2016 Atty. Castillo
adaptation shall be destroyed in the event that continued
possession of the copy of the computer program ceases to
be lawful.
o Sec. 189.3. This provision shall be without prejudice to
the application of Section 185 whenever appropriate.
Importation for Personal Uses: 9. OWNERSHIP OF COPYRIGHT
o Sec. 190. Importation for Personal Purposes. -
o Sec. 190.1. Notwithstanding the provision of Subsection
177.6, but subject to the limitation under the Subsection
185.2, the importation of a copy of a work by an individual
for his personal purposes shall be permitted without the
authorization of the author of, or other owner of copyright
in, the work under the following circumstances:
(a) When copies of the work are not available in
the Philippines and:
(i) Not more than one (1) copy at one
time is imported for strictly individual use
only; or
(ii) The importation is by authority of and
for the use of the Philippine Government;
or
(iii) The importation, consisting of not
more than three (3) such copies or
likenesses in any one invoice, is not for
sale but for the use only of any religious,
charitable, or educational society or
institution duly incorporated or
registered, or is for the encouragement of
the fine arts, or for any state school,
college, university, or free public library
in the Philippines.
(b) When such copies form parts of libraries and
personal baggage belonging to persons or
families arriving from foreign countries and are
not intended for sale: Provided, That such copies
do not exceed three (3).
o Sec. 190.2. Copies imported as allowed by this Section
may not lawfully be used in any way to violate the rights
of owner the copyright or annul or limit the protection
secured by this Act, and such unlawful use shall be
deemed an infringement and shall be punishable as such
without prejudice to the proprietors right of action.
o Sec. 190.3. Subject to the approval of the Secretary of
Finance, the Commissioner of Customs is hereby
empowered to make rules and regulations for preventing
the importation of articles the importation of which is
Nudibranch
prohibited under this Section and under treaties and
conventions to which the Philippines may be a party and
for seizing and condemning and disposing of the same in
case they are discovered after they have been imported
Sec. 178. RULES on Copyright OWNERSHIP. - Copyright
ownership shall be governed by the following rules:
Q: Who has ownership over the copyright?
If there is only ONE AUTHOR AUTHOR
o Sec. 178.1. Subject to the provisions of this section, in
the case of original literary and artistic works, copyright
shall belong to the author of the work;
If there are 2 OR MORE AUTHORS It depends.
o Sec. 178.2. In the case of works of JOINT AUTHORSHIP,
the co-authors shall be the original owners of the
copyright and in the absence of agreement, their rights
shall be governed by the rules on co-ownership.
If, however, a work of joint authorship consists of
parts that can be used SEPARATELY and the
author of each part can be identified, the
author of each part shall be the original owner
of the copyright in the part that he has
created;
If in the COURSE OF EMPLOYMENT It depends.
o Sec. 178.3. In the case of work created by an author
during and in the course of his employment, the
copyright shall belong to:
o (a) The EMPLOYEE,
If the creation of the object of copyright is not a
part of his regular duties even if the employee
uses the time, facilities and materials of the
employer.
o (b) The EMPLOYER,
GR: If the work is the result of the
performance of his regularly-assigned
duties,
EXPN: Unless there is an agreement, express or
implied, to the contrary.
In case of COMMISSIONED WORK the CREATOR
o Sec. 178.4. In the case of a work-commissioned by a
person other than an employer of the author and who
pays for it and the work is made in pursuance of the
commission, the person who so commissioned the
work shall have ownership of WORK,
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LIP Class Notes 2016 Atty. Castillo
But the COPYRIGHT thereto shall remain with the
creator, unless there is a written stipulation to
the contrary;
In case of AUDIOVISUAL WORK the PRODUCER, etc. Dr. DL had to provide all the materials for the painting and pay for
o Sec. 178.5. In the case of audiovisual work, the copyright
shall belong to the producer, the author of the
scenario, the composer of the music, the film
director, and the author of the work so adapted.
EXTENT: However, subject to contrary or other
stipulations among the creators, the producers
shall exercise the copyright to an extent
required for the exhibition of the work in
any manner,
EXPN: except for the right to collect
performing license fees for the
performance of musical compositions,
with or without words, which are
incorporated into the work; and
In case of LETTERS the WRITER
o Sec. 178.6. In respect of letters, the copyright shall
belong to the WRITER subject to the provisions of Article
723 of the Civil Code.
The letter belongs to the addressee or the person
to whom it is delivered
Art. 723, Civil Code: Letters and other private
communications in writing are owned by the
person to whom they are addressed and
delivered, but they cannot be published or
disseminated without the consent of the writer or
his heirs. However, the court may authorize their
publication or dissemination if the public good or
the interest of justice so requires
In case of ANONYMOUS/PSEUDONYMOUS WORKS the
AUTHORS represented by their PUBLISHERS
o Sec. 179. Anonymous and Pseudonymous Works. -
For purposes of this Act, the PUBLISHERS shall be
deemed to represent the AUTHORS of articles and
other writings published without the names of the authors
or under pseudonyms,
EXPN: Unless the contrary appears, or the
pseudonyms or adopted name leaves no doubts
as to the authors identity, or if the author of the
anonymous works discloses his identity.
Q: BAR 2004: BR and CT are noted artists whose paintings are
highly prized by collectors. Dr. DL commissioned them to paint a
Nudibranch
mural at the main lobby of his new hospital for children. Both
agreed to collaborate on the project for a total fee of two million
pesos to be equally divided between them. It was also agreed that
the wages of technicians and laborers needed for the work on the
project.
Assume that the project is completed and both BR and CT are fully
paid the amount of P2M as artists' fee by DL. Under the law on
intellectual property, who will own the mural? Who will own the
copyright in the mural? Why? Explain.
SUGGESTED ANSWER:
Under Section 178.4 of the Intellectual Property Code, in case of
commissioned work, the creator (in the absence of a written
stipulation to the contrary) owns the copyright, but the work itself
belongs to the person who commissioned its creation. Accordingly,
the mural belongs to DL. However, BR and CT own the copyright,
since there is no stipulation to the contrary.
Unless there is a stipulation to the contrary in the contract, the
copyright shall belong to them in joint ownership
Q: What is the duration of the copyright?
TERM OF PROTECTION
SINGLE CREATION during lifetime of author + 50 years
after his death
o Sec. 213. Term of Protection. - 213.1. Subject to the
provisions of Subsections 213.2 to 213.5, the copyright in
works under Sections 172 and 173 shall be protected
during the life of the author and for fifty (50 years after his
death. This rule also applies to posthumous works.
JOINT CREATION during life of the last surviving author +
50 years after his death
o Sec. 213.2. In case of works of joint authorship, the
economic rights shall be protected during the life of the
last surviving author and for fifty (50) years after his
death.
ANONYMOUS OR PSEUDONYMOUS WORKS 50 years after
date of first publication unless authors identity is revealed
or is no longer in doubt in which case the term is: the same
as that of a single creation (If work is PUBLISHED) OR 50
years from making (If work is UNPUBLISHED)
o Sec. 213.3. In case of anonymous or pseudonymous
works, the copyright shall be protected for fifty (50) years
from the date on which the work was first lawfully
published:
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LIP Class Notes 2016 Atty. Castillo
Provided, That where, before the expiration of the
said period, the author's identity is revealed or is
no longer in doubt, the provisions of Subsections
213.1 and 213.2 shall apply, as the case may
be: Provided, further, That such works if not
published before shall be protected for fifty (50)
years counted from the making of the work.
WORKS OF APPLIED ART 25 years from the date of
making
o Sec. 213.4. In case of works of applied art the protection
shall be for a period of twenty-five (25) years from the
date of making.
PHOTOGRAPHIC WORKS 50 years from publication (If
PUBLISHED) OR 50 years from making (If UNPUBLISHED)
o Sec. 213.5. In case of photographic works, the protection
shall be for fifty (50) years from publication of the work
and, if unpublished, fifty (50) years from the making.
AUDIOVISUAL WORKS 50 years from publication (If
PUBLISHED) OR 50 years from making (If UNPUBLISHED)
o Sec. 213.6. In case of audio-visual works including those
produced by process analogous to photography or any
process for making audio-visual recordings, the term shall
be fifty (50) years from date of publication and, if
unpublished, from the date of making.
Q: How do you calculate the term of protection?
o Sec. 214. Calculation of Term. - The term of protection
subsequent to the death of the author provided in the
preceding Section shall run from the date of his death or
of publication, but such terms shall always be deemed to
begin on the first day of January of the year following the
event which gave rise to them.
PERFORMERS AND PRODUCERS OF SOUND RECORDINGS
o Sec. 215. Term of Protection for Performers,
Producers and Broadcasting Organizations.-
o Sec. 215.1. The rights granted to performers and
producers of sound recordings under this law shall expire:
(a) For performances not incorporated in
recordings, fifty (50) years from the end of the
year in which the performance took place; and
(b) For sound or image and sound recordings and
for performances incorporated therein, fifty (50)
Nudibranch
years from the end of the year in which the
recording took place.
BROADCASTS 20 years from the date the broadcast took
place
o Sec. 215.2. In case of broadcasts, the term shall be
twenty (20) years from the date the broadcast took place.
The extended term shall be applied only to old works with
subsisting protection under the prior law.
Q: When is there copyright infringement?
Elements: (IBI)
o 1. Directly commits an infringement
o 2. Benefits from the infringing activity of another person
who commits an infringement if the person benefitting has
been given notice of the infringing activity and has the
right and ability to control the activities of the other
person; and
o 3. With knowledge infringing activity, induces, causes or
materially contributes to the infringing conduct of
another
Presumption of Authorship the natural person whose name is
indicated on a work in the usual manner, as the author shall, in the
absence of proof to the contrary, be presumed to be the author of
the work. This is applicable even if the name is a pseudonym,
where the pseudonym leaves no doubt as to the identity of the
author
Q: What is the difference between infringement and plagiarism?
BAR 1998: Juan Xavier wrote and published a story similar to an
unpublished copyrighted story of Manoling Santiago. It was,
however, conclusively proven that Juan Xavier was not aware that
the story of Manoling Santiago was protected by copyright.
Manoling Santiago sued Juan Xavier for infringement of copyright.
Is Juan Xavier liable?
SUGGESTED ANSWER:
Yes. Juan Xavier is liable for infringement of copyright. It is not
necessary that Juan Xavier is aware that the story of Manoling
Santiago was protected by copyright. The work of Manoling
Santiago is protected at the time of its creation.
Note: good faith is not a defense in copyright infringement
43