INTELLECTUAL PROPERTY RIGHTS LAW
On
Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged
with one another.
Trademark
- is any visible sign capable of distinguishing the
goods (trademark)
- or services (service mark) of an enterprise
- shall include a stamped or marked container of
goods.
Trade name
- means the name or designation identifying or
distinguishing an enterprise.
Simply put, a trade name refers to the business and
its goodwill; a trademark refers to the goods.
Copyright
- is confined to literary and artistic works which
are original intellectual creations in the literary
and artistic domain
- protected from the moment of their creation.
- only the expression of an idea is protected by
copyright, not the idea itself.
Patentable inventions
- refer to any technical solution of a problem in
any field of human activity:
which is new, involves an inventive step and
is industrially applicable
_______________________________________
Patent Infringement; Doctrine of Equivalents
infringement also takes place when a device
appropriates a prior invention by incorporating its
innovative concept and, although with some
modification and change
- performs substantially the same function
- in substantially the same way
- to achieve substantially the same result.
Rights of a patent holder
Gives the inventor the right to exclude all others He has
the right to make use of and vend his invention, but if
he voluntarily discloses it, such as by offering it for sale,
the world is free to copy and use it with impunity.
the assumption that petitioners advertising units were
patentable inventions, petitioner revealed them fully to
the public by submitting the engineering drawings
thereof to the National Library (PEARL AND DEAN V
SHOEMART)
There can be no infringement of a patent until a patent
has been issued since the right one has over the
invention covered by the patent arises from the grant
of the patent alone.
Therefore, a person who has not been granted letter of
patent over an invention has not acquired right or title
over the invention and thus has no cause of action for
infringement
According to Sec. 42 (Civil action for infringement) of
the IP Code], only the patentee or his successors-in-
interest may file an action for infringement.
patentee has in its favor not only the presumption of
validity of its patent, but that of a legal and factual first
and true inventor of the invention.
Patentees remedy is not to file an action for injunction
or infringement but to file a petition for cancellation of
private respondent's patent. The reason for this is that
the said remedy is available only to the patent holder
or his successors-in-interest.
Action to Cancel Patent- within three (3) years from the
publication of said patent with the Director of Patents
and raise as ground therefor that the person to whom
the patent was issued is not the true and actual
inventor.
TRADEMARK
- any visible sign capable of distinguishing
goods."
- is not merely a symbol of origin and goodwill
- The mark has become the "silent salesman,"
the conduit through which direct contact
between the trademark owner and the
consumer is assured.
Certificate of Registration
- A certificate of registration of a mark or trade-
name shall be prima facie evidence of the
validity of the registration,
- the registrant's ownership of the mark or trade-
name,
- and of the registrant's exclusive right to use the
same in connection with the goods, business or
 services specified in the certificate, subject to
any conditions and limitations stated therein
One who has adopted and used a trademark on his
goods does not prevent the adoption and use of the
same trademark by other for products which are of
different description.
The protective mantle of the Trademark Law extends
only to the goods used by the first user as specified in
the certificate of registration
A slight goodwill generated by a foreign company
before World War II can be considered an abandoned
after more than 35 years (IPL BATA INDUSTRIES v
CA)
Generic terms
- are those which constitute "the common
descriptive name of an article or substance,"
- or comprise the "genus of which the particular
product is a species,"
- or are "commonly used as the name or
description of a kind of goods,"
- or "imply reference to every member of a genus
and the exclusion of individuating characters,"
- or "refer to the basic nature of the wares or
services provided rather than to the more
idiosyncratic characteristics of a particular
product," and are not legally protectable.
DESCRIPTIVE TERM
- a term is descriptive and therefore invalid as a
trademark
- if, as understood in its normal and natural
sense
- it "forthwith conveys the characteristics,
functions, qualities or ingredients of a product
to one who has never seen it and does not
know what it is,"
- or "if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of
the goods,"
- or if it clearly denotes what goods or services
are provided in such a way that the consumer
does not have to exercise powers of perception
or imagination.
MASTER in a MASTER ROAST and MASTER BLEND
is neither descriptive and generic but a suggestive term
brought about by the advertising scheme of Nestle.
Suggestive terms are those which, in the phraseology
of one court, require "imagination, thought and
perception to reach a conclusion as to the nature of the
goods." Such terms, "which subtly connote something
about the product," are eligible for protection in the
absence of secondary meaning. While suggestive
marks are capable of shedding "some light" upon
certain characteristics of the goods or services in
dispute, they nevertheless involve "an element of
incongruity," "figurativeness," or " imaginative effort on
the part of the observer. (NESTLE V CA)
Rights of a Trademark Owner:
The certificate of registration confers upon the
trademark owner the exclusive right to use its own
symbol only to those goods specified in the certificate,
subject to the conditions and limitations stated therein.
Unfair competition
- is broader than trademark infringement and
includes passing off goods with or without
trademark infringement.
The essential elements of an action for unfair
competition are
- confusing similarity in the general appearance
of the goods, and (2) i
- intent to deceive the public and defraud a
competitor
Trademark infringement- The use of someone else's
registered trademark, trade name or service mark is
unauthorized, hence, actionable, if it is done "without
the consent of the registrant."
- is a form of unfair competition.
Constitutes unfair competition when there is not merely
likelihood of confusion, but also actual or probable
deception on the public because of the general
appearance of the goods.
There can be trademark infringement without unfair
competition as when the infringer discloses on the
labels containing the mark that he manufactures the
goodsthus preventing the public from being deceived
that the goods originate from the trademark owner.
To establish trademark infringement the following
elements must be shown:
- the validity of plaintiff's mark;
- the plaintiff's ownership of the mark;
- the use of the mark or its colorable imitation by
the alleged infringer results in "likelihood of
confusion."
Of these, it is the element of likelihood of confusion that
is the gravamen of trademark infringement.
Infringement of trademark did not require exact
similarity. Colorable imitation is enough to cause
confusion among the public, was sufficient for a
trademark to be infringed.
Colorable imitation
- denotes such a close or ingenious imitation
as to be calculated to deceive ordinary
persons,
- or such a resemblance to the original as to
deceive an ordinary purchaser, as to cause him
to purchase the one supposing it to be the
other.
In determining if colorable imitation exists,
jurisprudence has developed two kinds of tests:
The dominancy test
- focuses on the similarity of the prevalent features of
the competing trademarks that might cause confusion.
- Courts will consider more the aural and visual
impressions created by the marks in the public
mind, giving little weight to factors like prices, quality,
sales outlets and market segments.
the holistic test
requires the court to consider the entirety of the marks
as applied to the products, including the labels and
packaging, in determining confusing similarity
NESTLE V CA:
The application of the totality or holistic test is
improper since the ordinary purchaser would not be
inclined to notice the specific features, similarities or
dissimilarities, considering that the product is an
inexpensive and common household item
It must be emphasized that the products bearing
the trademarks in question are "inexpensive and
common" household items bought off the shelf by
"undiscerningly rash" purchasers. As such, if the
ordinary purchaser is "undiscerningly rash", then he
would not have the time nor the inclination to make a
keen and perceptive examination of the physical
discrepancies in the trademarks of the products in
order to exercise his choice.
McDONALDS CORPORATION, vs. MACJOY
FASTFOOD CORPORATION,
The trademark "Big Mak" was found to be confusingly
similar with the "Big Mac" mark of the petitioner.
The predominant features such as the "M," "Mc," and
"Mac" appearing in both McDonalds marks and the
MACJOY & DEVICE" easily attract the attention of
would-be customers.
The differences and variations in styles as the device
depicting a head of chicken with cap and bowtie and
wings sprouting on both sides of the chicken head, the
heart-shaped "M," and the stylistic letters in "MACJOY
& DEVICE;" in contrast to the arch-like "M" and the
one-styled gothic letters in McDonalds marks are of no
moment. These minuscule variations are
overshadowed by the appearance of the predominant
features mentioned hereinabove.
Thus, with the predominance of the letter "M," and
prefixes "Mac/Mc" found in both marks, the inevitable
conclusion is there is confusing similarity between the
trademarks Mc Donalds marks and "MACJOY AND
DEVICE" especially considering the fact that both
marks are being used on almost the same products
falling under Classes 29 and 30 of the International
Classification of Goods i.e. Food and ingredients of
food.
Esso Standard vs. CA and UNITED CIGARETTE
CORPORATION
Goods are related when they belong to the same class
or have the same descriptive properties; when they
possess the same physical attributes or essential
characteristics with reference to their form,
composition, texture or quality. They may also be
related because they serve the same purpose or are
sold in grocery stores
In the situation before us, the goods are obviously
different from each other with "absolutely no iota of
similitude". the Court ruled that the petroleum products
on which the petitioners therein used the trademark
ESSO, and the product of respondent, cigarettes are
"so foreign to each other as to make it unlikely that
purchasers would think that petitioner is the
manufacturer of respondent's goods"
Moreover, the fact that the goods involved therein flow
through different channels of trade highlighted their
dissimilarity, i.e. gasoline products are distributed
principally through gasoline service and lubrication
stations, automotive shops and hardware stores. On
the other hand, cigarettes are sold in sari-sari stores,
grocery store, and other small distributor outlets.
The mere fact that one person has adopted and
used a trademark on his goods does not prevent
the adoption and use of the same trademark by
others on unrelated articles of a different kind.
When a trademark is used by a party for a product
in which the other party does not deal, the use of
the same trademark on the latter's product cannot
be validly objected to.
EMERALD GARMENT MANUFACTURING
CORPORATION vs. HON. COURT OF APPEALS,
BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and H.D. LEE
COMPANY, INC.
The Holistic Test is used in this case to resolve the
issue of the conflicting marks in the same goods, The
SC said that Filipinos, as ordinary purchasers of
jeans, are fastidious consumers: The average Filipino
consumer generally buys his jeans by brand.
Emeralds Stylistic Mr. Lee is not confusingly
similar to private respondents "LEE trademark.
Colorable imitation DOES NOT APPLY because:
Petitioners trademark is the whole STYLISTIC MR.
LEE. Although on its label the word LEE is
prominent, the trademark should be considered as a
whole and not piecemeal.
The dissimilarities between the two marks become
conspicuous, noticeable and substantial enough to
matter especially in the light of the following variables
that must be factored in, among others: (a) Expensive
and valuable items are normally bought only after
deliberate, comparative and analytical investigation;
and (b) The average Filipino consumer generally buys
his jeans by brand.
Tradename
There is no automatic protection afforded an entity
whose tradename is alleged to have been infringed
through the use of that name as a trademark by a
local entity.
The controlling doctrine with respect to the applicability
of Article 8 of the Paris Convention is that established
in Kabushi Kaisha Isetan vs. Intermediate Appellate
Court.
The Supreme Court held that The Paris Convention for
the Protection of Industrial Property does not
automatically exclude all countries of the world
which have signed it from using a tradename which
happens to be used in one country.
To illustrate if a taxicab or bus company in a town in
the United Kingdom or India happens to use the
tradename "Rapid Transportation", it does not
necessarily follow that "Rapid" can no longer be
registered in Uganda, Fiji, or the Philippines. (CANON
KABUSHIKI KAISHA, CKK, vs. COURT OF
APPEALS and NSR RUBBER CORPORATION)
_________________________________________
Registration in the Supplemental Register is not
even a prima facie evidence of the validity of the
registrant's exclusive right to use the mark on the
goods specified in the certificate.
Well-known mark
While under the territoriality principle a mark must be
used in commerce in the Philippines to be entitled to
protection, internationally well-known marks are the
exceptions to this rule.
Article 8 of the Paris Convention has been incorporated
in Section 37 of R.A. No. 166.
- Under Philippine law, a trade name of a
national of a State that is a party to the Paris
Convention, whether or not the trade name
forms part of a trademark, is protected
without the obligation of filing or
registration.
- Harvard is the trade name of the world famous
Harvard University, and it is also a trademark
of Harvard University.
- Under Article 8 of the Paris Convention, as well
as Section 37 of R.A. No. 166, Harvard
University is entitled to protection in the
Philippines of its trade name Harvard even
without registration of such trade name in the
Philippines.
Section 123.1(e) of R.A. No. 8293 now categorically
states that
- 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, cannot be
registered by another in the Philippines.
Well-known mark how determined
The power to determine whether a trademark is
well-known lies in the competent authority of the
country of registration or use. This competent
authority would be
- either the registering authority if it has the
power to decide this,
 - or the courts of the country in question if
the issue comes before a court.
Trademark dilution
-is the lessening of the capacity of a famous mark to
identify and distinguish good or services
To be eligible for the protection from dilution, there has
to be a finding that:
(1) the trademark sought to be protected is famous and
distinctive;
(2)the use by another began after the owners mark
became famous; and
(3) such subsequent use defames the owners mark.
Capacity to sue: Foreign Corporation
A foreign corporation which has never done any
business in the Philippines and which is unlicensed and
unregistered to do business here
-but is widely and favorably known in the Philippines
through the use therein of its products bearing its
corporate and tradename,
-has a legal right to maintain an action in the
Philippines
-to restrain the residents and inhabitants thereof from
organizing a corporation therein bearing the same
name as the foreign corporation
-when it appears that they have personal knowledge of
the existence of such a foreign corporation,
-and it is apparent that the purpose of the proposed
domestic corporation is to deal and trade in the same
goods as those of the foreign corporation
COPYRIGHT Infringement
- To constitute infringement, it is not necessary
that the whole or even a large portion of the
work shall have been copied.
- If so much is taken that the value of the original
is sensibly diminished, or the labors of the
original author are substantially and to an
injurious extent appropriated by another, that is
sufficient in point of law to constitute piracy.
- A copy of a piracy is an infringement of the
original, and it is no defense that the pirate, in
such cases, did not know whether or not he
was infringing any copyright; he at least
knew that what he was copying was not his,
and he copied at his peril
- In cases of infringement, copying alone is not
what is prohibited. The copying must produce
an "injurious effect".
_________________________________________
Trade secret
- is defined as a plan or process, tool,
mechanism or compound known only to its
owner and those of his employees to whom it
is necessary to confide it,
- which definition also extends to a secret
formula or process not patented, but known
only to certain individuals using it in
compounding some article of trade having a
commercial value.
Trade secrets should receive greater protection from
discovery, because they derive economic value
from being generally unknown and not readily
ascertainable by the public.
The party seeking disclosure of trade secrets should
show a compelling reason for the courts to lift the veil
of confidentiality which shields the other partys trade
secrets. The privilege is not absolute; the trial court
may compel disclosure where it is indispensable
for doing justice
CRIMINAL ACTION
If prosecution follows after the completion of the
preliminary investigation being conducted by the
Special Prosecutor the information shall be in the name
of the People of the Philippines and no longer the
petitioner which is only an aggrieved party since a
criminal offense is essentially an act against the State.
It is the latter which is principally the injured party
although there is a private right violated.
Petitioner's capacity to sue would become,
therefore, of not much significance in the main
case.
JURISDICTION OVER IP:
Jurisdiction over cases for infringement of registered
marks, unfair competition, false designation of origin
and false description or representation, is lodged with
the Regional Trial Court.

There is no prejudicial question if the civil and criminal

action can, according to law, proceed independently of
each other; An action for unfair competition is an
independent civil action under Article 33 of the Civil
Code, and, as such, it does not operate as a prejudicial
question that will justify the suspension of the criminal
case.