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LAW ON INTELLECTUAL PROPERTY  Trademark Law

Atty. Risel G. Castillo-Taleon  Copyright Law

MIDTERMS Q: What is Intellectual Property?


 It refers to “CREATIONS OF THE MIND”
Introduction  Inventions, literary and artistic works, symbols, names,
 Paris Convention on Protection of Intellectual Property images, and designs used in commerce. (ILAWS-NID)
 RA 166 – Trademark Law  Legal rights which result from INTELLECTUAL ACTIVITY in
 RA 165 – Patent Law the industrial, scientific, literary, and artistic (ISLA) fields
 President Marcos promulgated PD 72 – Copyright Law and
other neighboring rights such as those granted to Q: Are ideas or conceptions protected by law?
musicians and performers  NO. Even if embodied in a work, news, other mere items
 General Agreement on Tariffs and Trade of press information or official text, translation, or work of
o TRIPS agreement to protect Intellectual government ARE NOT PROTECTED BY LAW
Property. Some provision were different from
Treaty of Paris I. INTELLECTUAL PROPERTY RIGHTS IN GENERAL
 Patent – used to be protected for the span of 17 years
from the date of the grant  It is now 20 years from the 1. INTELLECTUAL PROPERTY RIGHTS
date of filing
 Because of the need to codify the requirements under the INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
Paris Convention, GATT, and TRIPS agreement, RA 8293 or [Republic Act No. 8293]
the Intellectual Property Code was enacted
 TRIPS Agreement required the establishment of IPR Office Q: What comprises of Intellectual Property Rights?
headed by a director general  Sec. 4. Definitions.- 4.1. The term "intellectual property
 The IPC does not contain a bureau on copyright. Instead, rights" consists of:
Copyright must be registered with the National Library  o [a] Copyright and Related Rights;
Bureau of Patents  Now with the IP Office. o [b] Trademarks and Service Marks;
 Come the entry of pirated shirts from China. All things fake o [c] Geographic Indications;
were being manufactured in the PH. We were watch listed o [d] Industrial Designs;
by the U.S. We had to intensify our drive against piracy. o [e] Patents;
Thus, the Optical Media Act was enacted creating an o [f] Layout-Designs (Topographies) of Integrated
Optical Media Board in order to bend to the dictates of Circuits; and
industrial countries o [g] Protection of Undisclosed Information
 Protection of IP is TERRITORIAL – your registration in the [TRIPS].

Philippines does NOT protect your IP in another country if
you did not register it there. Thus, if you have a mark that Q: What is COPYRIGHT?
you want to register, you must register it in each and every  It is confined to LITERARY or ARTISTIC work which are
country. You need to hire a lawyer in each country to ORIGINAL CREATIONS in the literary or artistic domain
assist in the registration. PROTECTED from the moment of creation.
o However, the Madrid Protocol system permits
the filing, registration and maintenance of trade Q: What are TRADEMARKS OR SERVICE MARKS?
mark rights in more than one jurisdiction,  Any VISIBLE SIGN capable of distinguishing the GOODS and
provided that the target jurisdiction is a party to SERVICES of an enterprise. It shall include STAMPED or
the system. Here, you only need to list down the MARKED container of goods
countries in which you want your trademark
protected and pay the corresponding filing fees. Q: What are GEOGRAPHIC INDICATIONS?
If rejected, this is the time you go directly to  It identifies a GOOD originating in the territory of a TRADE-
each country and hire a lawyer there. RELATED ASPECTS of INTELLECTUAL PROPERTY RIGHTS
o There was a debate that Madrid Protocol is a (TRIPS) MEMBER, or a region or locality in that territory,
treaty which requires ratification from the where a given QUALITY, REPUTATION, or other
Senate. However, the Senate did not ratify. CHARACTERSTIC of the good is essentially attributable to
Hence, a petition was filed in the SC. However, its geographical origin
this petition was denied for the reason that it is
the choice of the executive department to Q: What are INDUSTRIAL DESIGNS?
determine what is a treaty or an executive  Any composition of LINES or COLORS or any 3-D FORM,
agreement. In this case, the President treated it whether or not associated with lines or colors
as the latter. Thus, concurrence of the congress  Such composition or form should give a SPECIAL
is not required APPEARANCE to and can serve as a PATTERN for an
industrial product or handicraft
Q: What comprises the Law on Intellectual Property?
 Intellectual Property Code – R.A. 8293 Q: What PATENTS?
o Took effect on January 1, 1998  PATENTABLE INVENTION – any TECHNICAL SOLUTION of a
 Patent Law problem in ANY FIELD of human activity which is NEW,

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involves an INVENTIVE STEP, and is INDUSTRIALLY
APPLICABLE Q: Can a foreign corporation sue in the Philippines an action
involving its intellectual property rights?
Q: What are LAYOUT DESIGNS? What are INTEGRATED CIRCUITS?  YES, under Section 3 and Section 160
 LAYOUT DESIGN (TOPOGRAPHIES) – A 3-D DISPOSITION,  Section. 3 provides for the right to sue an action for the
however expressed, of the ELEMENTS, at least 1 of which enforcement of INTELLECTUAL PROPERTY RIGHTS or
is an ACTIVE ELEMENT, REPRESSION OF UNFAIR COMPETITION.
o And of some or all the 3-D disposition prepared o Requisites:
for an INTEGRATED CIRCUIT intended for  1. The person is a NATIONAL or
manufacture  DOMICILED or has an effective
o Must be ORIGINAL industrial ESTABLISHMENT in a foreign
 ORIGINAL – they are the result of their country
CREATOR’S OWN INTELLECTUAL  2. The foreign country is a PARTY to a
EFFORT and are NOT COMMONPLACE convention, treaty or agreement
among creators of layout designs and relating to IPR or repression of unfair
manufacturers of layout circuits at the competition, to which the Philippines
time of creation. is also a PARTY
 INTEGRATED CIRCUITS – it is a PRODUCT in its FINAL  OR if the foreign country also
FORM or an IMMEDIATE FORM, extends RECIPROCAL RIGHTS
o In which the elements, at least 1 of which is an to PH nationals
ACTIVE ELEMENT,  Sec. 3. International Conventions and Reciprocity. - Any
o And some or all of the INTERCONNECTIONS are person who is a national or who is domiciled or has a real
integrally formed in and/or on a piece of and effective industrial establishment in a country which is
material which is intended to perform an a party to any convention, treaty or agreement relating to
ELECTRIC FUNCTION intellectual property rights or the repression of unfair
competition, to which the Philippines is also a party, or
Q: What is UNDISCLOSED INFORMATION? extends reciprocal rights to nationals of the Philippines by
 Information which is: law, shall be entitled to benefits to the extent necessary to
o SECRET – not generally known or readily give effect to any provision of such convention, treaty or
available to persons within the obligation which reciprocal law, in addition to the rights to which any owner
normally deals with the kind of information in of an intellectual property right is otherwise entitled by
question this Act.
o Has COMMERCIAL VALUE – because it is a secret  Sec. 160 provides for the right to sue for an action of
o Subject to REASONABLE STEPS under the enforcement of TRADE OR SERVICE MARK.
circumstances o Requisites:
 By the person lawfully IN CONTROL of  1. The foreign national or juridical
the information to keep it in secret person must comply with the
requirements under Sec. 3
Q: What are TECHNOLOGY TRANSFER ARRANGEMENTS?  2. Does NOT ENGAGE IN BUSINESS in
 4.2. The term "technology transfer arrangements" refers the Philippines
to contracts or agreements involving the transfer of  Note: W/N it is licensed to do
systematic knowledge for the manufacture of a product, business in the Philippines.
the application of a process, or rendering of a service  Sec. 160. Right of Foreign Corporation to Sue in Trademark
including management contracts; or Service Mark Enforcement Action.- Any foreign national
o and the transfer, assignment or licensing of all or juridical person who meets the requirements of Section
forms of intellectual property rights, including 3 of this Act and does not engage in business in the
licensing of computer software except computer Philippines may bring a civil or administrative action
software developed for mass market. hereunder for opposition, cancellation, infringement,
 NATURE: Licensing Contract unfair competition, or false designation of origin and false
 LICENSOR: Intellectual Property Rights Owner description, whether or not it is licensed to do business in
 LICENSEE: 2nd party who was granted authority to the Philippines under existing laws.
commercially exploit the same intellectual property right
2. DIFFERENCES BETWEEN COPYRIGHTS, TRADEMARKS, AND
Q: Are TECHNLOGICAL TRANSFER ARRANGEMENTS the same as PATENT
LICENSING CONTRACTS?
 NO. TTA’s are merely in the nature of licensing contract. Q: What is the difference between COPYRIGHT, TRADEMARKS, and
PATENT?
4.3. The term "Office" refers to the Intellectual Property Office  In the case of ELIDAD KHO VS. CA, the SC held: trademark,
created by this Act.
 copyright and patents are DIFFERENT intellectual property
rights that cannot be interchanged with one another.
4.4 The term "IPO Gazette" refers to the gazette published by the COPYRIGHT TRADEMARK PATENT
Office under this Act. A TRADEMARK is Meanwhile, the PATENTABLE
any visible sign scope of a INVENTIONS, on the
A. RIGHT OF A FOREIGNER TO SUE FOR PROTECTION OF IP RIGHTS capable of COPYRIGHT is other hand, refer to
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distinguishing the confined to literary any technical   EXEMPTION from any of the above
goods (trademark) and artistic works solution of a requirements may be allowed by the
or services (service which are original problem in any field Documentation, Information and
mark) of an intellectual creations of human activity Technology Transfer Bureau (DITTB) after
enterprise and shall in the literary and which is new, evaluation thereof on a case by case basis
include a stamped artistic domain involves an inventive
or marked container protected from the step and is 1. PROHIBITED CLAUSES
of goods. moment of their industrially
creation. applicable. Q: What are the PROHOBITED CLAUSES in a VLC? (2010 Bar: State 3
In relation thereto, a Prohibited Clauses)
TRADE NAME means Sec. 87. Prohibited Clauses. - Except in cases under Section 91, the
the name or following provisions shall be deemed PRIMA FACIE to have an
designation ADVERSE EFFECT on COMPETITION and TRADE:
identifying or  87.1. Those which impose upon the licensee the obligation
distinguishing an to acquire from a specific source capital goods,
enterprise. intermediate products, raw materials, and other
technologies, or of permanently employing personnel
3. TECHNOLOGY TRANSFER ARRANGEMENTS indicated by the licensor;
 87.2. Those pursuant to which the licensor reserves the
A. VOLUNTARY LICENSE CONTRACT right to fix the sale or resale prices of the products
manufactured on the basis of the license;
Chapter IX 
Voluntary Licensing  87.3. Those that contain restrictions regarding the volume
and structure of production;
Q: What is a VOLUNTARY LICENSING CONTRACT?  87.4 Those that prohibit the use of competitive
 A Voluntary Licensing Contract is an agreement for the use of technologies in a non-exclusive technology transfer
any Intellectual Property Right. agreement;
o Includes franchising agreement  87.5. Those that establish a full or partial purchase option
o I.e. the contract for the use of trademark, service in favor of the licensor;
mark, or technology of McDo, iHop, etc.  87.6. Those that obligate the licensee to transfer for free
o Includes Distributorship Right to exclusively distribute to the licensor the inventions or improvements that may
products using the mark of another be obtained through the use of the licensed technology;
o So long as it is a contract for the use of any  87.7. Those that require payment of royalties to the
intellectual property right, it is a Licensing Agreement owners of patents for patents which are not used;
o Thus, it must comply with the prohibited clauses and  87.8. Those that prohibit the licensee to export the
mandatory provisions  IN ORDER TO BE VALID licensed product unless justified for the protection of the
BETWEEN THE PARTIES legitimate interest of the licensor such as exports to
o Also, it must be registered with the IPO  IN ORDER countries where exclusive licenses to manufacture and/or
TO BE BINDING AGAINST 3RD PERSONS distribute the licensed product(s) have already been
granted;
Sec. 85. Voluntary License Contract. - To encourage the transfer and  87.9. Those which restrict the use of the technology
dissemination of technology, prevent or control practices and supplied after the expiration of the technology transfer
conditions that may in particular cases constitute an abuse of arrangement, except in cases of early termination of the
intellectual property rights having an adverse effect on competition technology transfer arrangement due to reason(s)
and trade, all technology transfer arrangements shall comply with attributable to the licensee;
the provisions of this Chapter.  87.10. Those which require payments for patents and
other industrial property rights after their expiration,
Q: What are the rights of a licensee in a VLC? termination arrangement;
 Sec. 90. Rights of Licensee. - The licensee shall be entitled to  87.11. Those which require that the technology recipient
exploit the subject matter of the technology transfer shall not contest the validity of any of the patents of the
arrangement during the whole term of the technology transfer technology supplier;
arrangement  87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
Q: Who are exempt from the requirements for a VLC? transferred technology to local conditions or to initiate
 Sec. 91. Exceptional Cases. - In exceptional or meritorious cases research and development programs in connection with
where SUBSTANTIAL BENEFITS will accrue to the economy, such new products, processes or equipment;
as  87.13. Those which prevent the licensee from adapting the
o (HIREP) imported technology to local conditions, or introducing
o High technology content, innovation to it, as long as it does not impair the quality
o Increase in foreign exchange earnings, standards prescribed by the licensor;
o Employment generation,  87.14. Those which exempt the licensor for liability for
o Regional dispersal of industries and/or substitution non-fulfillment of his responsibilities under the technology
with or use of local raw materials, or transfer arrangement and/or liability arising from third
o In the case of Board of Investments, registered
companies with pioneer status,
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party suits brought about by the use of the licensed involving semi-conductor technology, the license may only be
product or the licensed technology; and granted in case of public non-commercial use or to remedy a
 87.15. Other clauses with equivalent effects practice determined after judicial or administrative process to be
anti-competitive.
2. MANDATORY PROVISIONS
Sec. 97. Compulsory License Based on Interdependence of Patents. -
Q: What are the MANDATORY PROVISIONS in a VLC? (2010 Bar: Are If the invention protected by a patent, hereafter referred to as the
there Mandatory Provisions in VLC?) "second patent," within the country cannot be worked without
Sec. 88. Mandatory Provisions. - The following provisions shall be infringing another patent, hereafter referred to as the "first patent,"
included in voluntary license contracts: granted on a prior application or benefiting from an earlier priority,
 88.1. That the laws of the Philippines shall govern the a compulsory license may be granted to the owner of the second
interpretation of the same and in the event of litigation, patent to the extent necessary for the working of his invention,
the venue shall be the proper court in the place where the subject to the following conditions:
licensee has its principal office;  97.1. The invention claimed in the second patent involves
 88.2. Continued access to improvements in techniques and an important technical advance of considerable economic
processes related to the technology shall be made significance in relation to the first patent;
available during the period of the technology transfer  97.2. The owner of the first patent shall be entitled to a
arrangement; cross-license on reasonable terms to use the invention
 88.3. In the event the technology transfer arrangement claimed in the second patent;
shall provide for arbitration, the Procedure of Arbitration  97.3. The use authorized in respect of the first patent shall
of the Arbitration Law of the Philippines or the Arbitration be non-assignable except with the assignment of the
Rules of the United Nations Commission on International second patent; and
Trade Law (UNCITRAL) or the Rules of Conciliation and  97.4. The terms and conditions of Sections 95, 96 and 98
Arbitration of the International Chamber of Commerce to 100 of this Act.
(ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; and 2. REQUIREMENT TO OBTAIN LICENSE
 88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the Q: What are the requirements to obtain a license?
licensor. o 1. MUST FILE A PETITION WITH THE IPO
o 2. GR: EFFORTS TO OBTAIN AUTHORIZATION were made
B. COMPULSORY LICENSING as provided for in Sec. 95. (This only applies if the IPR
owner REFUSES to give authorization)
1. GROUNDS o Sec. 95. Requirement to Obtain a License on Reasonable
Commercial Terms. - 95.1. The license will only be granted
Chapter X 
 after the petitioner has made EFFORTS TO OBTAIN
COMPULSORY LICENSING AUTHORIZATION from the patent owner on REASONABLE
COMMERCIAL TERMS AND CONDITIONS but such efforts
Q: What are the grounds for the issuance of a COMPULSORY have NOT BEEN SUCCESSFUL within a reasonable period of
LICENSE? time.
Sec. 93. Grounds for Compulsory Licensing. - The Director of Legal o EXPN:
Affairs may grant a license to exploit a patented invention, even o 95.2. The requirement under Subsection 95.1
without the agreement of the patent owner, in favor of any person shall NOT APPLY in the following cases:
who has shown his capability to exploit the invention, under any of  (a) Where the petition for compulsory
the following circumstances: license seeks to remedy a practice
 93.1. National EMERGENCY or other circumstances of determined after judicial or
extreme urgency; administrative process to be anti-
 93.2. Where the PUBLIC INTEREST, in particular, national competitive;
security, nutrition, health or the development of other  (b) In situations of national emergency
vital sectors of the national economy as determined by the or other circumstances of extreme
appropriate agency of the Government, so requires; or urgency;
 93.3. Where a JUDICIAL OR ADMINISTRATIVE BODY HAS  (c) In cases of public non-commercial
DETERMINED that the manner of exploitation by the use.
owner of the patent or his licensee is ANTI-COMPETITIVE; o 95.3. In situations of national emergency or other
or circumstances of extreme urgency, the right holder shall
 93.4. In case of PUBLIC NON-COMMERCIAL USE of the be NOTIFIED as soon as reasonably practicable.
patent by the patentee, without satisfactory reason; o 95.4. In the case of public non-commercial use, where the
 93.5. If the patented invention is NOT BEING WORKED IN government or contractor, without making a patent
THE PHILIPPINES ON A COMMERCIAL SCALE, although search, knows or has demonstrable grounds to know that
capable of being worked, without satisfactory reason: a valid patent is or will be used by or for the government,
Provided, That the importation of the patented article THE RIGHT HOLDER SHALL BE INFORMED PROMPTLY
shall constitute working or using the patent. o 3. THE PETITION MUST BE FILED WITHIN THE
PRESCRIPTIVE PERIOD under Sec. 94.
Sec. 96. Compulsory Licensing of Patents Involving Semi-Conductor
Technology. - In the case of compulsory licensing of patents C. PERIOD TO FILE A PETITION
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Chapter II
Sec. 94. Period for Filing a Petition for a Compulsory License. – PATENTABILITY

94.1. A compulsory license may not be applied for on the ground Sec. 21. Patentable Inventions. - Any technical solution of a problem
stated in Subsection 93.5 before the expiration of a period of four in any field of human activity which is new, involves an inventive
(4) years from the date of filing of the application or three (3) years step and is industrially applicable shall be patentable. It may be, or
from the date of the patent whichever period expires last. may relate to, a product, or process, or an improvement of any of
the foregoing.
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 Sec. 23. Novelty. - An invention shall not be considered new if it
may be applied for at any time after the grant of the patent. forms part of a prior art.

II. PATENTS Q: What constitutes PRIOR ART?


 Everything not made available to the public from the date
Patent of filing of the application
 Q: What is the difference between a patentable invention  Sec. 24. Prior Art. - Prior art shall consist of:
and other intellectual property rights such as Industrial o 24.1. Everything which has been made available
Design and Undisclosed Information? to the public anywhere in the world, before the
o The latter does not require an “inventive step”. filing date or the priority date of the application
Thus, they have shorter period of protection claiming the invention; and
 A Patent is a right granted to the inventor of a process, o 24.2. The whole contents of an application for a
product or improvement patent, utility model, or industrial design
 In the IPC, the tenure of protection is 20 years from the registration, published in accordance with this
date of the filing of the application Act, filed or effective in the Philippines, with a
o From this time, all rights shall pertain to the filing or priority date that is earlier than the filing
patentee (We say to the patentee instead of or priority date of the application: Provided, That
inventor because it is not necessarily granted to the application which has validly claimed the
the inventor. Reason: it may be transferred) filing date of an earlier application under Section
 Ex: Paracetamol. The right to manufacture is subject of 31 of this Act, shall be prior art with effect as of
annuity (annual fees). Otherwise, the patent lapses and the filing date of such earlier application:
the public can make use of it. Also, after the lapse of 20 Provided further, That the applicant or the
years, anyone can use it. inventor identified in both applications are not
one and the same.
1. PATENTABLE INVENTIONS  Note: Sec. 24 must be read together with Sec. 25
 Sec. 25. Non-Prejudicial Disclosure. –
Q: What are the Conditions of Patentability?  25.1. The disclosure of information contained in the
 1. Any TECHNICAL SOLUTION of a problem in any field of application during the twelve (12) months preceding the
human activity filing date or the priority date of the application shall not
o Ex of such problems: getting sick  medicine, prejudice the applicant on the ground of lack of novelty if
need for communication  cellphone such disclosure was made by:
 2. Must be NOVEL (or new) o (a) The inventor;
o When it does NOT form a PRIOR ART o (b) A patent office and the information was
 3. Must involve an INVENTIVE STEP (most important) contained
o Should not be obvious to a person skilled in the  (a) in another application filed by the
art inventor and should not have been
o Ex: the spraying over the top of crops does not disclosed by the office, or
involve an inventive step. This is customarily  (b) in an application filed without the
done knowledge or consent of the inventor
 4. INDUSTRIALLY APPLICABLE by a third party which obtained the
o May be produced or used in an industry and that information directly or indirectly from
there is a market which demands such invention the inventor; or
o (c) A third party which obtained the information
Q: For instance, Miguel invented the eraser. Laida invented the directly or indirectly from the inventor.
pencil. Michael put together the 2 inventions. Is this patentable?  Q: For instance, a new gadget better than the iPhone was
 NO. If the combination of the patent will NOT produce published in FB on Feb 14, 2016 by the inventor. The next
something which is different, (i.e. the culmination of which day, the inventor applied for patent. Is this invention
did NOT produce ANOTHER USE) then the same is not patentable? Will it be considered new or a prior art?
patentable o YES, It is considered a non-prejudicial disclosure.
 In this case, the inherent elements of each patent is still Thus, it is still patentable
present. There is no novelty to the combination. There is o It is still considered novel.
nothing unusual. There is no surprising change of the 2  Q: If the same was made on June 1, 2015, in FB. The
patents. Thus, the same is not patentable. inventor filed an application today. Is the invention still
 Not new; Does not involve an inventive step. considered new?

Nudibranch 5
o NO. It is no longer a non-prejudicial disclosure  Another example of a new use for another property is
because it is no longer within 12 months instead of ingesting a substance thru pills, it is done thru a
preceding the application. patch. This is not patentable. It does not involve an
inventive step.
25.2. For the purposes of Subsection 25.1, "inventor" also means  Before, pharmaceutical companies were in the practice of
any person who, at the filing date of application, had the right to the finding new uses of the same medicine by adding a few
patent. ingredients. This way, they can file repeatedly applications
for patent despite the lapse of the 20-year period of
Sec. 26. Inventive Step. - An invention involves an inventive step if, protection.
having regard to prior art, it is not obvious to a person skilled in the  The question asked should be: Is there a substantial
art at the time of the filing date or priority date of the application improvement?  Must check the ACTIVE INGREDIENT. If it
claiming the invention. provides for a substantial improvement, a higher efficacy
as compared before, then it could be considered as
Sec. 27. Industrial Applicability. - An invention that can be produced patentable.
and used in any industry shall be industrially applicable
3. OWNERSHIP OF PATENT
2. NON-PATENTABLE INVENTIONS
A. RIGHT TO A PATENT
Q: What are NON-PATENTABLE INVENTIONS? (Memorize)
Sec. 22. Non-Patentable Inventions. - The following shall be excluded Chapter III 
RIGHT TO A PATENT
from patent protection:
 22.1. Discoveries, scientific theories and mathematical Q: Who has the right to the patent?
methods;  If only made by 1 PERSON  the inventor, his heirs, or
 22.2. Schemes, rules and methods of performing mental assigns
acts, playing games or doing business, and programs for  If made by 2 or more persons JOINTLY  owned by them
computers; jointly
 22.3 Methods for treatment of the human or animal body  Sec. 28. Right to a Patent. - The right to a patent belongs
by surgery or therapy and diagnostic methods practiced on to the inventor, his heirs, or assigns. When two (2) or more
the human or animal body. This provision shall not apply persons have jointly made an invention, the right to a
to products and composition for use in any of these patent shall belong to them jointly
methods;  Q: What if 2 or more persons made use of the patent
 22.4. Plant varieties or animal breeds or essentially SEPARATELY, who has the right to the patent?
biological process for the production of plants or animals. o It depends. Whoever filed the application first
This provision shall not apply to micro-organisms and non- will have the right to the patent. (First-to-File
biological and microbiological processes. Rule)
o Provisions under this subsection shall not
preclude Congress to consider the enactment of B. FIRST-TO-FILE RULE
a law providing sui generis protection of plant
varieties and animal breeds and a system of Q: What is the First-To-File Rule?
community intellectual rights protection:  Sec. 29. First to File Rule. - If two (2) or more persons have
 22.5. Aesthetic creations; and made the invention separately and independently of each
 22.6. Anything which is contrary to public order or other, the right to the patent shall belong to the person
morality. who filed an application for such invention, or where two
or more applications are filed for the same invention, to
Q: Assuming Einstein filed an application in the IPO for his theory the applicant who has the earliest filing date or, the
of relativity. If you were the examiner, will you allow his earliest priority date.
application?
 NO, I will REJECT his application. It falls under 22.1 of the Q: For instance, Miguel steals Laida’s idea. He filed an application
non-patentable inventions, “scientific theory” for patent. Laira subsequently filed a patent application. Who is
entitled to the issuance of patent?
Q: For instance, Miguel disclosed a new method for Alzheimer’s  If all the requirements of a valid application are present,
disease. It is a new medicine, applied by topical application and the patent will necessarily issue in favor of Miguel.
diagnosis of disease. Assuming you are an IP lawyer, how do you  However, the First-To-File Rule applies when 2 or more
protect this new method of application, diagnosis, and the persons create an invention separately and
medicine? independently. It is not applied in a case of stealing the
 You advise him to file an application for patent but only invention of another.
with respect to the medicine. The application and  Thus, Laida is not without remedy. She has the right to file
diagnosis are not patentable. a petition for cancellation of the patent. If the application
is still pending, she can go to the court
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 C. INVENTIONS CREATED PURSUANT TO A COMMISSION
glutathione be patented anew as a skin whitening agent?
 NO. Mere discovery of a new use for a property is not Q: In the case inventions made by employee, who has the right to
patentable. It does not involve an inventive step. the patent?
Nudibranch 6
 IF PURSUANT TO A COMMISSION: country, he must file an application in the other
o Sec. 30. Inventions Created Pursuant to a country within a period of 2 months from the
Commission. – 30.1. The person who first application
commissions the work shall own the patent, o The period was lengthened to 13 months in the
unless otherwise provided in the contract. Patent Cooperation Treaty.
 GR: The person who commissions the work  EMPLOYER o If the application was filed within the prescribed
o Thus, if the employee is the one who invented a period, the date of first application shall be
process or product, he must assign it to the considered the date in which the second
employer. application was filed. Thus, having a priority right
 EXPN: Unless otherwise provided in the contract  in time
EMPLOYEE o Section 31 provides for a period of 12 months
o The usual agreement is that when an employee o IPC took effect on 1998. The Philippines became
invented something pursuant to a commission, a signatory of the Patent Cooperation Treaty
the employer shall own the patent but the only in 2001.
employee shall be entitled to royalties  In this case, Nikon filed its application in Japan on January
 IF IN THE COURSE OF EMPLOYMENT: 2, 2014. It filed its application in the Philippines on January
o 30.2. In case the employee made the invention 2, 2016. There is a 2 year difference. Thus, not having filed
in the course of his employment contract, the the same within 12 months as provided in the IPC, Nikon
patent shall belong to: does not have priority right over the patent. The patent
 (a) The EMPLOYEE, if the inventive should issue in Miguel’s favor.
activity is not a part of his regular
duties even if the employee uses the 4. GROUNDS FOR CANCELLATION OF A PATENT
time, facilities and materials of the
employer. Chapter VI CANCELLATION OF PATENTS 
AND SUBSTITUTION OF
 (b) The EMPLOYER, if the invention is PATENTEE
the result of the performance of his
regularly-assigned duties, Q: What are the grounds for cancellation of patents?
 EXPN: unless there is an  Sec. 61. Cancellation of Patents. –
agreement, express or  61.1. Any interested person may, upon payment of the
implied, to the contrary required FEE, PETITION to cancel the patent or any claim
thereof, or parts of the claim, on any of the following
D. RIGHT OF PRIORITY GROUNDS:
o (a) That what is claimed as the invention is NOT
Q: What is the right of priority? NEW OR PATENTABLE;
 Sec. 31. Right of Priority. - An application for patent filed o (b) That the patent DOES NOT DISCLOSE THE
by any person who has previously applied for the same INVENTION IN A MANNER SUFFICIENTLY CLEAR
invention in another country which by treaty, convention, AND COMPLETE for it to be carried out by any
or law affords similar privileges to Filipino citizens, shall be person skilled in the art; or
considered as filed as of the date of filing the foreign o (c) That the patent is CONTRARY TO PUBLIC
application: Provided, That: ORDER OR MORALITY.
o (a) the local application expressly claims priority;  61.2. Where the grounds for cancellation relate to some of
o (b) it is filed within twelve (12) months from the the claims or parts of the claim, cancellation may be
date the earliest foreign application was filed; effected to such extent only.
and
o (c) a certified copy of the foreign application 5. REMEDY OF THE TRUE AND ACTUAL INVENTOR
together with an English translation is filed
within six (6) months from the date of filing in Sec. 29. First to File Rule. - If two (2) or more persons have made the
the Philippines. invention separately and independently of each other, the right to
the patent shall belong to the person who filed an application for
Q: For instance, Miguel made an invention which was already an such invention, or where two or more applications are filed for the
invention of Nikon Corp. without knowing that the latter had first same invention, to the applicant who has the earliest filing date or,
thought of it. The inventions were similar, though not identical. the earliest priority date.
Nikon filed an application for patent with the Japan Patent Office
on January 2, 2014. Miguel filed an application for patent with the Chapter VII 
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
IPO Philippines on June 1 ,2014. On January 2, 2016, Nikon filed an
application for patent in the IPO Philippines. To whom shall the Sec. 67. Patent Application by Persons Not Having the Right to a
patent be issued? Patent. –
 If we follow the First-To-File Rule, the patent should be 67.1. If a person referred to in Section 29 other than the applicant, is
issued in favor of Miguel declared by final court order or decision as having the right to the
 But there is also another rule to take into consideration: patent, such person may, within three (3) months after the decision
Right of Priority under Sec. 31. has become final:
o The priority right provided under the Paris  (a) Prosecute the application as his own application in
Convention requires that if patentee in one place of the applicant;
country desires to have priority right in another
Nudibranch 7
 (b) File a new patent application in respect of the same 55.3. A grace period of six (6) months shall be granted for the
invention; payment of the annual fee, upon payment of the prescribed
 (c) Request that the application be refused; or surcharge for delayed payment
 (d) Seek cancellation of the patent, if one has already been
issued. 7. LIMITATIONS OF PATENT RIGHTS
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis
to a new application filed under Subsection 67.1(b). Sec. 71. Rights Conferred by Patent. –
71.1. A patent shall confer on its owner the following exclusive
Q: What are the remedies of a true and actual inventor? rights:
 Sec. 68. Remedies of the True and Actual Inventor. - If a  (a) Where the subject matter of a patent is a product, to
person, who was deprived of the patent without his restrain, prohibit and prevent any unauthorized person or
consent or through fraud is declared by final court order or entity from making, using, offering for sale, selling or
decision to be the true and actual inventor, the court shall importing that product;
order for his SUBSTITUTION as patentee, or at the option  (b) Where the subject matter of a patent is a process, to
of the true inventor, CANCEL the patent, and award actual restrain, prevent or prohibit any unauthorized person or
and other DAMAGES in his favor if warranted by the entity from using the process, and from manufacturing,
circumstances dealing in, using, selling or offering for sale, or importing
any product obtained directly or indirectly from such
Sec. 70. Time to File Action in Court. - The actions indicated in process.
Sections 67 and 68 shall be filed within one (1) year from the date of 71.2. Patent owners shall also have the right to assign, or transfer by
publication made in accordance with Sections 44 and 51, succession the patent, and to conclude licensing contracts for the
respectively. same.

6. RIGHTS CONFERRED BY A PATENTEE Sec. 72. Limitations of Patent Rights. - The owner of a patent has no
right to prevent third parties from performing, without his
Chapter VIII 
RIGHTS OF PATENTEES AND INFRINGEMENT OF authorization, the acts referred to in Section 71 hereof in the
PATENTS following circumstances:
 72.1 Using a patented product which has been put on the
Q: What are the rights conferred by a patentee? market in the Philippines by the owner of the product, or
Sec. 71. Rights Conferred by Patent. – with his express consent, insofar as such use is performed
71.1. A patent shall confer on its owner the following EXCLUSIVE after that product has been so put on the said market
RIGHTS:  72.2. Where the act is done privately and on a non-
 (a) Where the subject matter of a patent is a product, to commercial scale or for a non-commercial purpose:
restrain, PROHIBIT AND PREVENT any unauthorized person Provided, That it does not significantly prejudice the
or entity from making, using, offering for sale, selling or economic interests of the owner of the patent;
importing that product;  72.3. Where the act consists of making or using exclusively
 (b) Where the subject matter of a patent is a process, to for the purpose of experiments that relate to the subject
RESTRAIN, PREVENT OR PROHIBIT any unauthorized matter of the patented invention;
person or entity from using the process, and from  72.4. Where the act consists of the preparation for
manufacturing, dealing in, using, selling or offering for individual cases, in a pharmacy or by a medical
sale, or importing any product obtained directly or professional, of a medicine in accordance with a medical
indirectly from such process. prescription or acts concerning the medicine so prepared;
71.2. Patent owners shall also have the right to ASSIGN, OR  72.5. Where the invention is used in any ship, vessel,
TRANSFER by succession the patent, and to CONCLUDE LICENSING aircraft, or land vehicle of any other country entering the
CONTRACTS for the same. territory of the Philippines temporarily or accidentally:
Provided, That such invention is used exclusively for the
Sec. 55. Annual Fees. – needs of the ship, vessel, aircraft, or land vehicle and not
55.1. To maintain the patent application or patent, an annual fee used for the manufacturing of anything to be sold within
shall be paid upon the expiration of four (4) years from the date the the Philippines.
application was published pursuant to Section 44 hereof, and on
each subsequent anniversary of such date. Payment may be made A. PRIOR USER
within three (3) months before the due date. The obligation to pay
the annual fees shall terminate should the application be Q: What is the right of prior user?
withdrawn, refused, or cancelled.  Sec. 73. Prior User. –
 73.1. Notwithstanding Section 72 hereof, any prior user,
55.2. If the annual fee is not paid, the patent application shall be who, in good faith was using the invention or has
deemed withdrawn or the patent considered as lapsed from the day undertaken serious preparations to use the invention in
following the expiration of the period within which the annual fees his enterprise or business, before the filing date or priority
were due. A notice that the application is deemed withdrawn or the date of the application on which a patent is granted, shall
lapse of a patent for non-payment of any annual fee shall be have the right to continue the use thereof as envisaged in
published in the IPO Gazette and the lapse shall be recorded in the such preparations within the territory where the patent
Register of the Office. produces its effect.

Nudibranch 8
73.2. The right of the prior user may only be transferred or assigned contributory infringer and shall be jointly and severally liable with
together with his enterprise or business, or with that part of his the infringer.
enterprise or business in which the use or preparations for use have
been made. Amendment – 76.6  a person actively inducing another is liable for
patent infringement as a contributory infringer = jointly and
B. USE BY GOVERNMENT severally liable
 In other words, contributory infringers are solidarily liable
Q: When may government validly use the invention even without with the infringer
agreement of patent owner?
Sec. 74. Use of Invention by Government. – A. JURISDICTION
74.1. A Government agency or third person authorized by the
Government may exploit the invention even without agreement of 1. A.M. No. 02-1-11
the patent owner where:
 (a) the public interest, in particular, national security, Q: Which court has jurisdiction for an action of infringement?
nutrition, health or the development of other sectors, as  Concurrent jurisdiction is granted to the RTC and IPO for
determined by the appropriate agency of the government, infringement and damages (200,000)
so requires; or  SC Memorandum Circular 02-1-11-SC dated Feb. 19, 2013
 (b) A judicial or administrative body has determined that  designation of the RTC as an IPC Court
the manner of exploitation, by the owner of the patent or  Was amended further designating RTC as a Special
his licensee, is anti-competitive. Commercial Court
74.2. The use by the Government, or third person authorized by the
Government shall be subject, mutatis mutandis, to the conditions 2. SAMSON VS. CABANOS
set forth in Sections 95 to 97 and 100 to 102.
SAMSON vs. HON. DAWAY / SAMSON vs. HON. CABANOS
8. PATENT INFRINGEMENT
FACTS: The petitioner, owner/proprietor of ITTI Shoes/Mano Shoes
If there is a violation of patent right  criminal action for Manufactuirng Corporation, allegedly sold or offers the sale of
infringement garment product using the trademark “Caterpillar” to the prejudice
of Caterpillar, Inc., private respondent in this case. The respondent
If an unauthorized person makes use of patent  only civil action filed the case with the RTC. The petitioner questioned the
for infringement. Criminal action will only apply AFTER judgment jurisdiction of the trial court over the offense charged contending
that the case should be filed with the MTC because violation of
Sec. 76. Civil Action for Infringement. – unfair competition is penalized with imprisonment not exceeding 6
76.1. The making, using, offering for sale, selling, or importing a years under RA 7691.
patented product or a product obtained directly or indirectly from a
patented process, or the use of a patented process without the ISSUE: Which court has jurisdiction over criminal and civil cases for
authorization of the patentee constitutes patent infringement. violation of intellectual property rights?

76.2. Any patentee, or anyone possessing any right, title or interest HELD: The SC held that under Section 163 of the IPC, actions for
in and to the patented invention, whose rights have been infringed, unfair competition shall be brought before the proper courts with
may bring a civil action before a court of competent jurisdiction, to appropriate jurisdiction under existing laws. The law contemplated
recover from the infringer such damages sustained thereby, plus in Section 163 of IPC is RA 166 otherwise known as the Trademark
attorney’s fees and other expenses of litigation, and to secure an Law. Section 27 of the Trademark Law provides that jurisdiction over
injunction for the protection of his rights. cases for infringement of registered marks, unfair competition, false
designation of origin and false description or representation, is
76.3. If the damages are inadequate or cannot be readily ascertained lodged with the Court of First Instance (now Regional Trial Court).
with reasonable certainty, the court may award by way of damages Since RA 7691 is a general law and IPC in relation to Trademark
a sum equivalent to reasonable royalty. Law is a special law, the latter shall prevail. Actions for unfair
competition therefore should be filed with the RTC.
76.4. The court may, according to the circumstances of the case,
award damages in a sum above the amount found as actual B. CRIMINAL ACTION FOR PATENT INFRINGEMENT
damages sustained: Provided, That the award does not exceed three
(3) times the amount of such actual damages. Sec. 84. Criminal Action for Repetition of Infringement. - If
infringement is repeated by the infringer or by anyone in connivance
76.5. The court may, in its discretion, order that the infringing goods, with him after finality of the judgment of the court against the
materials and implements predominantly used in the infringement infringer, the offenders shall, without prejudice to the institution of
be disposed of outside the channels of commerce or destroyed, a civil action for damages, be criminally liable therefor and, upon
without compensation. 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
76.6. Anyone who actively induces the infringement of a patent or less than One hundred thousand pesos (P100,000) but not more
provides the infringer with a component of a patented product or of than Three hundred thousand pesos (P300,000), at the discretion of
a product produced because of a patented process knowing it to be the court. The criminal action herein provided shall prescribed in
especially adopted for infringing the patented invention and not three (3) years from date of the commission of the crime.
suitable for substantial non-infringing use shall be liable as a
Nudibranch 9
C. TESTS IN PATENT INFRINGEMENT o Q: W/N it achieves something in the same way?

In the case of drawings, it is easily to tell if there is infringement. Just D. DEFENSES IN ACTION FOR INFRINGEMENT
compare the different DESIGN VIEWS to and determine whether or
not there is infringement Q: What are the valid defenses in an action for infringement?
 1. Patent is not a claim covered by protection
In the case of patents, instead of views, we have what is called  2. Invention is not patentable
SPECIFICATIONS and CLAIMS  3. Any of the grounds for cancellation are present
 Ex: a shoe has 5 claims. 1st is the sole; 2nd is the lace; 3rd is  4. Invalid patent or claim
the design on the right side; 4th is the design in the left  5. Grounds for petition for cancellation
side; 5th is the inside of the shoe. The inventor applies for a  Sec. 81. Defenses in Action for Infringement. - In an action
patent over these 5 claims. for infringement, the defendant, in addition to other
defenses available to him, may show the INVALIDITY OF
Q: What are the 2 tests to determine whether or not there is patent THE PATENT, OR ANY CLAIM thereof, on any of the
infringement? GROUNDS ON WHICH A PETITION OF CANCELLATION can
 1. Literal Infringement be brought under Section 61 hereof
o Exactness rule
o Addition rule E. CONTRIBUTORY PATENT INFRINGEMENT
 2. Doctrine of equivalence
Sec. 75. Extent of Protection and Interpretation of Claims. -
i. LITERAL INFRINGEMENT 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
Q: What is the test of LITERAL INFRINGEMENT? the description and drawings.
 Sec. 75. Extent of Protection and Interpretation of Claims.
– 75.1. The extent of protection conferred by the patent 9. ASSIGNMENT AND TRANSMISSION OF RIGHTS
shall be determined by the claims, which are to be
interpreted in the light of the description and drawings. Chapter XI 
ASSIGNMENT AND TRANSMISSION OF RIGHTS

Q: What are the 2 rules associated with the Literal Infringement Sec. 103. Transmission of Rights. –
test? 103.1 Patents or applications for patents and invention to which
 1. EXACTNESS RULE – the infringing material copies exactly they relate, shall be protected in the same way as the rights of other
the same claims and specifications property under the Civil Code.
o Ex: the applicant of a patent has the same exact
claims as that of a patentee’s invention: i.e. all 5 103.2. Inventions and any right, title or interest in and to patents
claims are identical: in the shoe example, it has and inventions covered thereby, may be assigned or transmitted by
the same design, same sole, same lace, etc. inheritance or bequest or may be the subject of a license contract.
 2. ADDITION RULE – the infringing material merely adds
additional claims or specifications without substantial Sec. 104. Assignment of Inventions. - An assignment may be of the
modification of the original patent entire right, title or interest in and to the patent and the invention
o Ex: in the shoe example, the applicant copies all covered thereby, or of an undivided share of the entire patent and
5 claims, but adds an additional 6th claim. invention, in which event the parties become joint owners thereof.
However, the additional claim does not An assignment may be limited to a specified territory.
substantially modify the patent.
Sec. 105. Form of Assignment. - The assignment must be in writing,
ii. DOCTRINE OF EQUIVALENTS acknowledged before a notary public or other officer authorized to
administer oath or perform notarial acts, and certified under the
Q: What is the DOCTRINE OF EQUIVALENTS? (Bar question) hand and official seal of the notary or such other officer.
 75.2. For the purpose of determining the extent of
protection conferred by the patent, due account shall be Sec. 106. Recording. –
taken of elements which are equivalent to the elements 106.1. The Office shall record assignments, licenses and other
expressed in the claims, so that a claim shall be considered instruments relating to the transmission of any right, title or interest
to cover not only all the elements as expressed therein, in and to inventions, and patents or application for patents or
but also equivalents inventions to which they relate, which are presented in due form to
o Ex: for instance, in the shoe example, only 3 the Office for registration, in books and records kept for the
claims are identical. In determining whether or purpose. The original documents together with a signed duplicate
not there is infringement applying the Doctrine thereof shall be filed, and the contents thereof should be kept
of Equivalents, the question is whether or not confidential. If the original is not available, an authenticated copy
these 3 claims are elements which are thereof in duplicate may be filed. Upon recording, the Office shall
equivalent to the elements expressed in the retain the duplicate, return the original or the authenticated copy to
original patent. the party who filed the same and notice of the recording shall be
o Q: W/N the new patent introduces substantial published in the IPO Gazette.
modification or changes in the claim?
o Q: W/N it produces the same function or same 106.2. Such instruments shall be void as against any subsequent
product? purchaser or mortgagee for valuable consideration and without
Nudibranch 10
notice, unless, it is so recorded in the Office, within three (3) months Besides, it is clear from the problem that the corporation
from the date of said instrument, or prior to the subsequent was only used as a conduit of Che-che for the filing of the
purchase or mortgage. application.

Sec. 107. Rights of Joint Owners. - If two (2) or more persons jointly Q: Supposing Albert Einstein were alive today and he filed with the
own a patent and the invention covered thereby, either by the Intellectual Property Office (IPO) an application for patent for his
issuance of the patent in their joint favor or by reason of the theory of relativity expressed in the formula E = mc2. The IPO
assignment of an undivided share in the patent and invention or by disapproved Einstein's application on the ground that his theory of
reason of the succession in title to such share, each of the joint relativity is not patentable. Is the IPO' s action correct?
owners shall be entitled to personally make, use, sell, or import the  YES, the IPO is correct.
invention for his own profit: Provided, however, That neither of the  Discoveries, scientific theories and mathematical methods
joint owners shall be entitled to grant licenses or to assign his right, are “non-patentable inventions” under Sec. 22.1 of the IPC
title or interest or part thereof without the consent of the other  A scientific theory like Einstein’s theory of relativity is
owner or owners, or without proportionally dividing the proceeds discovered, it is not invented
with such other owner or owners.
III. TRADEMARKS
BAR PROBLEMS:
Q: X invented a method of improving the tenderness of meat by 1. DEFINITION OF MARKS, COLLECTIVE MARKS, TRADE NAMES,
injecting an enzyme solution into the liver of the animal shortly SLOGAN
before a slaughter. Is the invention patentable?
 The invention is patentable. Q: Generally, what is a Trademark?
 Section 21 of IPC provides that "any technical solution of a  It is any word, mark, symbol, sign, 3-dimensional mark, or
problem in any field of human activity which is new, combination which distinguishes the goods of an
involves an inventive step and is industrially applicable enterprise as opposed to the goods of others
shall be patentable. It may be, or may relate to, a product,  If it distinguishes services, it is called Service Mark
or process, or an improvement of any of the foregoing."  If it distinguishes goods or services owned by a group or
 The process of improving the tenderness of meat appears association, it is called Collective Mark
to be a new technical solution.  A Slogan is a short phrase used to capture brand essence
or personality
Q: X invented a bogus coin detector which can be used exclusively
on self-operating gambling devices otherwise known as one-armed PART III 
THE LAW ON TRADEMARKS, SERVICE MARKS 
AND TRADE
bandits. Can X apply for a patent? NAMES
 X may not apply for the patent.
 Section 22.6 provides that anything that is contrary to Sec. 121. Definitions. - As used in Part III, the following terms have
public order or morality shall be excluded from patent the following meanings:
protection.  121.1. "Mark" means any visible sign capable of
 The machine involved in this case appears to be a distinguishing the goods (trademark) or services (service
gambling device or a tool that is used to cheat in gambling mark) of an enterprise and shall include a stamped or
or in gambling itself, hence it is contrary to public order marked container of goods;
and morality. However, if the machine can be used in  121.2. "Collective mark" means any visible sign designated
legalized gambling such as if the in cases of exclusive use as such in the application for registration and capable of
of casinos established by the government, such device can distinguishing the origin or any other common
be patented. characteristic, including the quality of goods or services of
different enterprises which use the sign under the control
Q: Che-che invented a device that can convert rainwater to of the registered owner of the collective mark;
automobile fuel. She asked Macon, a lawyer, to assist in getting  121.3. "Trade name" means the name or designation
her invention patented. Macon suggested that they form a identifying or distinguishing an enterprise;
corporation with other friends and have the corporation apply for  121.4. "Bureau" means the Bureau of Trademarks;
the patent, 80% of the shares of stock thereof to be subscribed by  121.5. "Director" means the Director of Trademarks;
Che-che and 5% by Macon. The corporation was formed and the  121.6. "Regulations" means the Rules of Practice in
patent application was filed. However, Che-che dies three months Trademarks and Service Marks formulated by the Director
later of a heart attack. Franco, the estranged husband of Che-che, of Trademarks and approved by the Director General; and
contested the application of the corporation and filed his own  121.7. "Examiner" means the trademark examiner
patent application as the sole surviving heir of Che-che. Decide the
issue with reasons. Q: Is smell registrable as a mark?
 The case should be decided in favor of Franco.  NO. In the Philippines, it is not yet registrable.
 Section 28 of the IPC provides that the right to a patent  Q: How about snippets of sounds, are they reigstrable as
belongs to the inventor, his heirs or assigns. Since Che-che marks?
is already dead, the heirs, including Franco, can file the o NO. In the Philippines, they are not yet
application. registrable.
 In addition Section 32.2 of the IPC provides that if the  (See, however, the opinion of FUNA on the registrability of
applicant is not the inventor, the IPO shall require the scent and sound in memaid)
applicant to submit the inventor's authority. In this case, it
does not appear that the corporation was authorized.
Nudibranch 11
2. ACQUISITION OF OWNERSHIP OF MARK Q: How long is the duration of protection of the Trademark?
 10 YEARS subject to indefinite renewal for periods of 10
A. SEC. 122 years each
 Sec. 145. Duration.- A certificate of registration shall
Q: How do you acquire ownership of a mark? remain in force for ten (10) years:
 1. REGISTRATION o Provided, That the registrant shall file a
 2. SUBSEQUENT ACTUAL USE declaration of actual use and evidence to that
 Sec. 122. How Marks are Acquired. - The rights in a mark effect, or shall show valid reasons based on the
shall be acquired through registration made validly in existence of obstacles to such use, as prescribed
accordance with the provisions of this law. by the Regulations, within one (1) year from the
fifth anniversary of the date of the registration
Q: What is the requirement of ACTUAL USE? of the mark. Otherwise, the mark shall be
 124.2. The applicant or the registrant shall file a removed from the Register by the Office.
declaration of actual use of the mark with evidence to that o This is also known as Declaration of Non-Use. It
effect, as prescribed by the Regulations within three (3) is in essence another required DAU but this time
years from the filing date of the application. Otherwise, within 1 year from the 5th anniversary of the
the application shall be refused or the mark shall be date of registration. Thus, 2 DAU’s are required
removed from the Register by the Director. to be filed
 The IPC no longer provides for PRIOR USE before o See Sec. 152 for exception on Declaration of
registration as a condition for ownership of a mark. Non-Use
Registration is the sole basis.
o EXPN: A trade name or business Q: A trademark registration MAY be owned in perpetuity.
 However, there must be ACTUAL USE after registration  A. True
 An applicant of a mark must have been in ACTUALLY USE o The duration of protection of a Trademark is 10
IN COMMERCE IN THE PHILIPPINES of the mark and file a YEARS subject to indefinite renewal for periods
DECLARATION OF ACTUAL USE OF MARK (DAUM). He must of 10 years each
use it within 3 years from the date of the filing of the  B. False
application
o However, this is notwithstanding the possibility Q: What is the difference between the Declaration of Prior Use and
of the refusal of the application or the Declaration of Non-Use?
cancellation of the grant of the application DAU (SEC. 124.2) DNU (SEC. 145)
o Note: DAUM alone, without proof of actual use As to Required within 3 years Within 1 year from the 5th
would not be sufficient to establish actual use period from the filing date of the anniversary of the date of
o Actual use – registration > Registration – actual of application the registration of the
use filing trademark
 Rights of a trademark are acquired thru: As to Even if registration has Mark shall be removed from
o 1. Registration; and Effect been granted, such the Register by the office
o 2. Actual Use of registration would be
 Q: Doc Martens is a brand from Germany. They wanted Failure cancelled and the mark
to sell their products in the Philippines. However, they to File removed from the
discovered that Chinese-Filipino have applied for register. If the application
trademark and were granted the same. What is the is still pending by the end
remedy of Doc Martens? of the 3 year period and
o File a petition for cancellation no declaration of actual
 Q: Assuming Doc Martens was able to file a petition and use is filed, then the
the same was granted. It now seeks to file its application application is denied
for Trademark in the Philippines. Is it necessary that Doc As to Declaration of actual use 1. Declaration of actual
Martens comply with the requirement of actual use? what with evidence to that use with evidence to
o YES. The IPO of the Philippines is lenient on the to file effect that effect; or
requirement for foreign enterprises. It considers 2. Show valid reasons
selling in a website as actual use. based on the existence
of obstacles to such use
Q: Ownership of a trademark is acquired by: (declaration of non-
 A. Long and continued use of the trademark, perfected by use)
registration thereof
 B. Registration of a trademark, together with the actual B. BIRKENSTOCK ORTHOPAEDIE GMBH VS. PHIL SHOE EXPO
use thereof MARKETING CORP.
 C. Long and continued use of a trademark, with or without
registration thereof DOCTRINE: It must be emphasized that registration of a trademark,
 D. Registration of a trademark validly acquired, with or by itself, is not a mode of acquiring ownership. If the applicant is
without actual use thereof not the owner of the trademark, he has no right to apply for its
 E. None of the above registration. Registration merely creates a prima facie presumption
of the validity of the registration

Nudibranch 12
FACTS: Petitioner, a corporation duly organized and existing under functions, is rebuttable and must give way to evidence to the
the laws of Germany applied for various trademark registrations contrary. Besides, petitioner has duly established its true and lawful
before the IPO. However, the applications were suspended in view ownership of the mark “BIRKENSTOCK”. It submitted evidence
of the existing registration of the mark “BIRKENSTOCK AND DEVICE” relating to the origin and history of “BIRKENSTOCK” and it use in
under Registration No. 56334 dated October 21, 1993 in the name of commerce long before respondent was able to register the same
Shoe Town International and Industrial Corporation, the here in the Philippines. Petitioner also submitted various certificates
predecessor-in-interest of respondent Philippine Shoe Expo of registration of the mark “BIRKENSTOCK” in various countries and
Marketing Corporation. that it has used such mark in different countries worldwide,
including the Philippines.
On May 27, 1997, petitioner filed a petition (Cancellation Case) for
cancellation of Registration No. 564334 on the ground that it is the Q: What is the effect of issuance of a certificate of registration to a
lawful and rightful owner of the Birkenstock marks. During its person?
pendency, however, respondent and/or it predecessor-in-interest  It creates a Prima Facie Presumption
failed to file the required 10th Year Declaration of Actual Use (10th  Sec. 138. Certificates of Registration. - A certificate of
Year DAU) for Registration No. 56334 on or before October 21, 2004, registration of a mark shall be prima facie evidence of:
thereby resulting the cancellation of such mark. Accordingly, the o (VOE)
cancellation case was dismissed for being moot and academic o 1. The VALIDITY of the registration,
thereby paving the way for the publication of the subject o 2. The registrant’s OWENRSHIP of the mark, and
applications. of
o 3. The registrant’s EXCLUSIVE RIGHT to use the
In response, respondent filed with the Bureau of Legal Affairs (BLA) same in connection with the goods or services
of the IPO three separate verified notices of opposition to the and those that are related thereto specified in
subject applications docketed as Inter Partes Cases claiming, among the certificate.
others, it, together with its predecessor-in-interest, has been using  Q: How is the prima facie presumption rebutted?
the Birkenstock marks in the Philippines for more than 16 years o 1. Evidence of the nullity of the registration
through the mark “BIRKENSTOCK AND DEVICE”. In its Decision, the o 2. Prior use by another
BLA of the IPO sustained respondent’s opposition, thus ordering the
rejection of the subject applications. Aggrieved, petitioner appealed Q: Which of the following statement is false?
to the IPO Director General whereby in its decision, the latter  A. The certificate of registration of a mark shall be prima
reversed and set aside the ruling of the BLA thus allowing the facie evidence of the validity of the registration
registration of the subject applications.  B. The certificate of registration of a mark shall be prima
facie evidence of the registrant’s ownership of the mark
Finding the IPO Director General’s reversal of the BLA unacceptable,  C. The certificate of registration of a mark shall be prima
respondent filed a petition for review with the Court of Appeals. In facie evidence of the registrant’s a prior use of the
its decision dated June 25, 2010, the CA reversed and set aside the subject mark
ruling of the IPO Director General and reinstated that of the BLA. o Reason: it is not one of those enumerated under
The petitioner filed a Motion for Reconsideration but was denied by Sec. 138 of the IPC
the CA. Hence , this petition to the Supreme Court.  D. The certificate of registration of a mark shall be prima
facie evidence of the registrant’s exclusive right to use the
ISSUE: Whether or not the subject marks should be allowed same in connection with the goods or services and those
registration in the name of the petitioner? that are related thereto specified in the certificate.
 E. None of the above
HELD: YES. The court ruled in favour of the petitioner. Under Section
12 of Republic Act 166, it provides that, “Each certificate of Q: Who may register a trademark?
registration shall remain in force for twenty years: Provided, that the  Under the Trademark Law, only the owner of the
registration under the provisions of this Act shall be cancelled by the trademark, trade name, or service mark to distinguish
Director, unless within one year following the fifth, tenth and goods, business or services from the goods, business, or
fifteenth anniversaries of the date of issue of the certificate of services of others is entitled to register the same (UNNO
registration, the registrant shall file in the Patent Office an affidavit COMMERCIAL ENTERPRISES VS. GENERAL MILLING
showing that the mark or trade-name is still in use or showing that CORPORATION)
its non-use is due to special circumstance which excuse such non- o A mere distributor of the products bearing
use and is not due to any intention to abandon the same, and pay trademark, even if permitted to use the
the required fee.” trademark has no right to and cannot register it
in his name unless it has been validly assigned to
In the case at bar, respondent admitted that it failed to file the 10th him
Year DAU for Registration No. 56334 within the requisite period, or
on or before October 21, 2004. As a consequence, it was deemed to 3. ACQUISITION OF OWNERSHIP OF TRADE NAME
have abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that registration of a Sec. 165. Trade Names or Business Names. –
trademark, by itself, is not a mode of acquiring ownership. If the 165.1. A name or designation may not be used as a trade name if by
applicant is not the owner of the trademark, he has no right to apply its nature or the use to which such name or designation may be put,
for its registration. Registration merely creates a prima facie it is contrary to public order or morals and if, in particular, it is liable
presumption of the validity of the registration. Such presumption, to deceive trade circles or the public as to the nature of the
just like the presumptive regularity in the performance of official enterprise identified by that name.
Nudibranch 13
 (f) Is identical with, or confusingly similar to, or
165.2. (a) Notwithstanding any laws or regulations providing for any constitutes a translation of a mark considered well-
obligation to register trade names, such names shall be protected, known mark in accordance with the preceding paragraph,
even prior to or without registration, against any unlawful act which is registered in the Philippines with respect to goods
committed by third parties. or services which are not similar to those with respect to
which registration is applied for:
(b) In particular, any subsequent use of the trade name by a third o Provided, That use of the mark in relation to
party, whether as a trade name or a mark or collective mark, or any those goods or services would indicate a
such use of a similar trade name or mark, likely to mislead the connection between those goods or services,
public, shall be deemed unlawful. and the owner of the registered mark:
 Provided further, That the interests of
165.3. The remedies provided for in Sections 153 to 156 and the owner of the registered mark are
Sections 166 and 167 shall apply mutatis mutandis. likely to be damaged by such use;
 Mutatis Mutandis – literally, “once the necessary changes  (g) Is likely to mislead the public, particularly as to the
have been made”. It means making necessary alterations nature, quality, characteristics or geographical origin of
while not affecting the main point at issue. the goods or services;
 (h) Consists exclusively of signs that are generic for the
165.4. Any change in the ownership of a trade name shall be made goods or services that they seek to identify;
with the transfer of the enterprise or part thereof identified by that  (i) Consists exclusively of signs or of indications that have
name. The provisions of Subsections 149.2 to 149.4 shall apply become customary or usual to designate the goods or
mutatis mutandis. services in everyday language or in bona fide and
established trade practice;
4. NON-REGISTRABLE MARKS  (j) Consists exclusively of signs or of indications that may
serve in trade to designate the kind, quality, quantity,
A. SEC. 123 intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or
Q: What are the non-registrable marks? (Memorize) other characteristics of the goods or services;
Sec. 123. Registrability. –  (k) Consists of shapes that may be necessitated by
123.1. A mark cannot be registered if it: technical factors or by the nature of the goods themselves
 IFNIII-MG-CD-SCC or factors that affect their intrinsic value;
 (a) Consists of immoral, deceptive or scandalous matter,  (l) Consists of color alone, unless defined by a given form;
or matter which may disparage or falsely suggest a or
connection with persons, living or dead, institutions,  (m) Is contrary to public order or morality.
beliefs, or national symbols, or bring them into contempt
or disrepute; Q: The United Parcel Service also known as UPS, claimed to be the
 (b) Consists of the flag or coat of arms or other insignia of world’s largest package delivery company and service provider of
the Philippines or any of its political subdivisions, or of any supply chain management solutions, utilizes globally and in the
foreign nation, or any simulation thereof; Philippines, a fleet of brown painted delivery trucks. All of the
 (c) Consists of a name, portrait or signature identifying a employees and delivery staff of UPS also wear brown uniforms.
particular living individual except by his written consent, or UPS therefore may successfully register with the Philippine IPO the
the name, signature, or portrait of a deceased President of shade of brown it uses for use on trucks and on delivery personnel
the Philippines, during the life of his widow, if any, except uniforms.
by written consent of the widow;  A. TRUE
 (d) Is identical with a registered mark belonging to a  B. FALSE
different proprietor or a mark with an earlier filing or
priority date, in respect of: Q: In the question above, UPS may also register as its service mark
o (i) The same goods or services, or the word, “brown” for “package delivery and supply chain
o (ii) Closely related goods or services, or management services” on condition that UPS will use the subject
o (iii) If it nearly resembles such a mark as to be word to identify its said services
likely to deceive or cause confusion;  A. TRUE
 (e) Is identical with, or confusingly similar to, or  B. FALSE
constitutes a translation of a mark which is considered by
the competent authority of the Philippines to be well- 123.2. As regards signs or devices mentioned in paragraphs (j), (k),
known internationally and in the Philippines, whether or and (l), nothing shall prevent the registration of any such sign or
not it is registered here, as being already the mark of a device which has become distinctive IN RELATION TO THE GOODS
person other than the applicant for registration, and used for which registration is requested as a result of the use that have
for identical or similar goods or services: been made of it in commerce in the Philippines.
o Provided, That in determining whether a mark is  The Office may accept as prima facie evidence that the
well-known, account shall be taken of the mark has become distinctive, as used in connection with
knowledge of the relevant sector of the public, the applicant’s goods or services in commerce, proof of
rather than of the public at large, including substantially exclusive and continuous use thereof by the
knowledge in the Philippines which has been applicant in commerce in the Philippines for five (5) years
obtained as a result of the promotion of the
mark;
Nudibranch 14
before the date on which the claim of distinctiveness is composite mark as long as they provide a disclaimer. The
made. person who registers them as part of a mark will not
acquire ownership thereto. (nabubuo sa 2 o higit pang
123.3. The nature of the goods to which the mark is applied will not mga bahagi)
constitute an obstacle to registration. o “20th Century Nylon Shirts Factory” must be
required to disclaim “nylon” and “shirts factory”
B. SECONDARY MEANING
Q: What are COINED MARKS?
Q: What is the doctrine of secondary meaning?  Those which may be registered even if they are
 GR: generic, indicative or descriptive marks (j,k, and l of contractions of or coined from generic and descriptive
Sec. 123.1) are NON-REGISTRABLE terms. (pinagdugtong na mga salita)
o EXPN: they are REGISTRABLE when such kind of o Ex: “Starbrite” for metal polish; “Mirrorlike” for
mark/design has become DISTINCTIVE as a result floor and furniture polish
of the uses that have been made of it in
commerce in the Philippines. This is proved by: 5. PRIOR USE OF MARK AS A REQUIREMENT
 1. Long, continuous use for 5 years, as
used in connection with the applicants Sec. 122. How Marks are Acquired. - The rights in a mark shall be
goods or services in commerce, and acquired through registration made validly in accordance with the
 2. In the mind of the public indicates a provisions of this law
single source to consumers
 123.2. As regards signs or devices mentioned in Sec. 152. Non-use of a Mark When Excused. –
paragraphs (j), (k), and (l), nothing shall prevent the 152.1. Non-use of a mark may be excused if caused by
registration of any such sign or device which has become circumstances arising independently of the will of the trademark
distinctive in relation to the goods for which registration is owner. Lack of funds shall not excuse non-use of a mark.
requested as a result of the use that have been made of it
in commerce in the Philippines. 152.2. The use of the mark in a form different from the form in
o The Office may accept as prima facie evidence which it is registered, which does not alter its distinctive character,
that the mark has become distinctive, as used in shall not be ground for cancellation or removal of the mark and shall
connection with the applicant’s goods or services not diminish the protection granted to the mark.
in commerce, proof of substantially exclusive
and continuous use thereof by the applicant in 152.3. The use of a mark in connection with one or more of the
commerce in the Philippines for five (5) years goods or services belonging to the class in respect of which the mark
before the date on which the claim of is registered shall prevent its cancellation or removal in respect of
distinctiveness is made all other goods or services of the same class.

C. FANCIFUL, ARBITRARY, SUGGESTIVE, COMPOSITE, AND COINED 152.4. The use of a mark by a company related with the registrant
MARKS or applicant shall inure to the latter’s benefit, and such use shall
not affect the validity of such mark or of its registration: Provided,
Q: What are FANCIFUL MARKS? That such mark is not used in such manner as to deceive the public.
 Those invented for the sole purpose of functioning as a If use of a mark by a person is controlled by the registrant or
trademark and have no other meaning than acting as a applicant with respect to the nature and quality of the goods or
mark (imbento lang) services, such use shall inure to the benefit of the registrant or
o Ex: “Kodak” for camera; “Xerox” for applicant.
photocopying machine
6. TESTS TO DETERMINE CONFUSING SIMILARITY BETWEEN MARKS
Q: What are ARBITRARY MARKS?
 Those utilized as a device having common meaning that Note: In a Civil Action for Infringement (To be discussed under #10
has no relation to the goods or services being (binigyan ng in the outline), one of the requisites for Infringement is: there is, in
ibang kahulugan) the use or application a likelihood of CONFUSION.
o Ex: “Dutch Boy” for paints and paint color   In connection wit this, there are 2 types of confusion of
solutions Mark or Trade Names:
o 1. Confusion of GOODS OR SERVICES
Q: What are SUGGESTIVE MARKS?   2 Tests (see below)
 Those that hint at one or some of the attributes of the o 2. Confusion of BUSINESS
products (clue sa product)  Actual confusion is not required. The test is whether the
o Ex: “SUNNY” trademark for marketing electric public is likely to be deceived.
heaters hinting the fact that the product is to
keep your house warm Q: What are the tests to determine confusing similarity between
goods and services?
Q: What are COMPOSITE MARKS?  1. DOMINANCY TEST
 Those marks consisting of 2 or more  2. HOLISTIC TEST
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
Nudibranch 15
A. DOMINANCY TEST – whether there is similarity of the prevalent preference and will not be easily
features of the competing trademarks which might cause confusion distracted
or deception and thus constitute infringement  2. BRISTOL MYERS CO. VS. DIRECTOR OF PATENTS &
 Focuses on the similarity of the main, essential, dominant, UNITED AMERICAN PHARMACEUTICALS, INC.
or prevalent features of a mark o No confusion. The test is not to simply take the
 Relies on visual, aural, and connotative comparisons and words and compare the spelling and
overall impressions between the 2 trademarks pronunciation. Rather, must consider the marks
in their entirety, in relation to the goods to
Cases where SC used the Dominancy Test: which they are attached
 1. ASIA BREWERY, INC. VS. CA
o SC: There is NO confusing similarity. The fact that Q: What is the difference between the Dominancy and Holistic
“PALE PILSEN” are part of ABI’s trademark does Tests?
not constitute infringement of SMC’s trademark: DOMINANCY TEST HOLISTIC/TOTALITY TEST
San Miguel Pale Pilsen. Reason: “pale pilsen” are As to Focuses on the Mandates that the
generic words descriptive of the color “pale” and consideration similarity of the main, entirety of the marks in
of the type of beer, “pilsen” essential, dominant, question must be
 2. MCDONALD’S CORPORATION VS. L.C. BIG MAK or prevalent features considered in
MURGERS of a mark determining confusing
o Big Mac and Big Mak similarity
o SC: They are confusingly similar. Aurally (aura!), As to Basis of Relies on visual, Relies only on visual
the 2 marks are the same. Big Mac and Big Mak: the aural, and comparison
the 1st and 2nd words are phoenetically the same; Computation connotative
Visually, the 2 marks have 6 letters, with the first comparisons and
to letters of the 2nd word being the same. overall impressions
 3. SOCIETES DES PRODUITS NESTLE, S.A ET. AL. VS. CA between the 2
o Master Roast and Master Blend vs. Flavor trademarks
Master As to Test TEST: whether there TEST: whether the
o SC: They are confusingly similar. The dominance is similarity of the general confusion made
of the word “master” has acquired thru Nestle’s prevalent features of by the article upon the
advertising is carried over when incorporated the competing eye of the casual
into CFC’s trademark flavor master. Such that trademarks which purchaser who is
when one looks at the label with the trademark might cause unsuspicious and off his
flavor master, one’s attention is easily attracted confusion or guard, is such as to likely
to the word “master” rather than to the deception and thus result in his confounding
differences which exist. constitute it with the original
infringement
B. HOLISTIC/TOTALITY TEST – whether the general confusion made
by the article upon the eye of the casual purchaser who is 7. WELL-KNOWN MARKS – Even if the trademark is not registered in
unsuspicious and off his guard, is such as to likely result in his the Philippines, if it is a well-known mark, it will be protected here
confounding it with the original in the Philippines.
 Mandates that the entirety of the marks in question must  It does not require that the well-known mark be used in
be considered in determining confusing similarity commerce in the Philippines but only that it be well known
 Relies only on visual comparison in the Philippines

Cases where the SC used the Holistic/Totality Test: A. SEC. 123 (E) & (F)
 1. EMERALD GARMENT MANUFACTURING CORPORATION
VS. CA Sec. 123. Registrability. –
o Stylistic Mr. Lee vs. Lee (Jeans) 123.1. A mark cannot be registered if it:
o SC: No confusing similarity. “STYLISTIC MR. LEE”  (e) Is identical with, or confusingly similar to, or constitutes
is prominent. The trademark should be a translation of a mark which is considered by the
considered as a whole and not piecemeal. competent authority of the Philippines to be well-known
 With respect to Lee, the products are internationally and in the Philippines, whether or not it is
not ordinary house products. Also, the registered here, as being already the mark of a person
jeans are not inexpensive (mahal kaya other than the applicant for registration, and used for
lee). Thus, the casual buyer will be identical or similar goods or services:
more cautious and would prefer to o Provided, That in determining whether a mark is
mull over his purchase (mahal kasi). well-known, account shall be taken of the
Confusion and deception, then, is less knowledge of the relevant sector of the public,
likely rather than of the public at large, including
 Q: So will the public be deceived? No. knowledge in the Philippines which has been
The average Filipino consumer obtained as a result of the promotion of the
generally buys jeans by brand. He is mark;
more or less familiar with his  Theory of Dilution:

Nudibranch 16
 (f) Is identical with, or confusingly similar to, or constitutes  A. “HUGO BOSS” for soaps”
a translation of a mark considered well-known in  B. “HUGO BOSS MOBILE” for cellular phones
accordance with the preceding paragraph, which is  C. “SWEET HUGO BOSS” for candies and other
registered in the Philippines with respect to goods or confectionaries
services which are not similar to those with respect to  D. All of the above
which registration is applied for: o (Suggested Answer)
o Provided, That use of the mark in relation to o Reason: a well-known mark is protected in the
those goods or services would indicate a Philippines whether or not registered. However,
connection between those goods or services, with respect to goods & services which are not
and the owner of the registered mark: registered, protection extends only to goods or
 Provided further, That the services which are similar or identical.
interests of the owner of the o ITCAB, HUGO BOSS is well-known mark.
registered mark are likely to Although it was able to file an application, it
be damaged by such use; failed to file its DAU on time. Thus, the
application is revoked. When it filed a new
Q: What is the difference between Sec. 123.1(e) and Sec. 123.1(f)? application, the above-mentioned applications
SEC. 123.1(e) SEC. 123.1(f) were filed also. However, they are not similar or
Requirement The well-known mark Must be registered in identical to the goods or services of HUGO BOSS
of may or may not be the Phils. (clothing, footwear, and perfumes)
registration registered in the Phils. o Thus, the IPO may grant the application under A,
Similarity Mark is used for Goods or services B, and C.
between identical or similar between the well-  E. None of the above
goods & goods or services as that known mark and that
services of of the well-known mark applied for are not Q: Company X sold its wine under the brand “Rose” Brandy; it
mark applied similar became very popular. So, X registered trademark “Rose” for its
for v. well- brandy. Subsequently, Company Y manufactured bicycles and sold
known mark it under the name “Rose”. Company X now sues Company Y for
Extent of If well-known mark is By analogy, If well- violation of RPC. Rule on the dispute (Bar question)
protection REGISTERED: protection known mark is NOT  The ruling should be in favor of Company Y. No violation of
extends to goods or REGISTERED: protection the IPC was committed by Company Y. The goods of
services with are not does not extend to Company Y, bicycles, are so dissimilar from the goods of
similar to those in which goods or services which Company X that there would be no confusion as to the
the mark is registered, are not similar or origin of the goods
provided: (conditions) identical.  Sec. 123.1(f) of the IPC adopts what is known as the
1. The use of the mark Theory of Dilution. However, it is necessary for the
in relation to the In connection with this application of the doctrine that the public may have been,
unrelated goods or rule: EVEN DISSIMILAR or had actually been deceived or misled as to the source of
services would GOODS DOCTRINE – If the good. This is not the case in the given problem
indicate a goods and services are
connection not identical or similar, B. CRITERIA
between goods or registration is STILL NOT
services and the ALLOWED if: 8. RIGHTS CONFERRED BY REGISTRANT
owner of the mark 1. There is
2. The interests of the connection bet. Sec. 147. Rights Conferred. – 47.1. The owner of a registered mark
owner of the goods or services shall have:
registered mark are of the junior or  GR: The exclusive right to prevent all third parties not
likely to be senior users of the having the owner’s consent from using in the course of
damaged by such well-known mark trade identical or similar signs or containers for goods or
used 2. The interests of services which are identical or similar to those in respect
the senior user are of which the trademark is registered where such use
likely to be would result in a likelihood of confusion.
damaged. o EXPN: in case of importation of drugs and
medicines allowed under Sec. 72.1 and of off-
Q: “HUGO BOSS”, a well-known mark, having been declared by the patent drugs and medicines, provided that said
then Minister of Trade as such. It has been registered in the drugs or medicines bear the registered marks
Philippines since 1985 for goods falling under class 25 of the that have not been tampered, unlawfully
classification namely, clothing, footwear, and perfumes. On the modified, or infringed upone.
last day of filing its declaration of actual use in the Philippines, the  In case of the use, of an identical sign for identical goods
owner of the subject mark failed to do so and its registration or services, a likelihood of confusion shall be presumed.
revoked. To protect its mark, it immediately filed, on the following
day, a new application for registration of its mark for the same Principle of Related Goods or Services
goods. 3 days later, the following applications for trademark  There is infringement when there is use of similar marks
registrations were filed by different applicants. Which of these on goods that are so related that the public may be, or is
applications may be granted by the IP:
Nudibranch 17
actually deceived, and misled that the goods come from A. TRADEMARK INFRINGEMENT
the same maker or manufacturer
 Goods are related  when they belong to the same class i. SEC. 155 – CIVIL ACTION FOR INFRINGEMENT
or have the same descriptive properties; possess same
physical attributes; serve the same purpose or are sold in Sec. 155. Remedies; Infringement. - Any person who shall, without
groceries the consent of the owner of the registered mark:
 SC: biscuits were held related to mile because both are  155.1. Use in commerce any reproduction, counterfeit,
food products. Soap and perfume, lipstick and nail polish copy, or colorable imitation of a registered mark or the
are similarly related because they are common household same container or a dominant feature thereof in
items nowadays connection with the:
o Sale,
Q: Wally, a music instruments designer and manufacturer, applied o Offering for sale,
for registration of his mark, “Bamboo” for his line of electric o Distribution,
guitars. The former lead vocalist of the band Rivermaya, popularly o Advertising of any goods or services including
known as Bamboo, has legal basis to oppose Wally’s application other preparatory steps necessary to carry out
for registration even if his real name is Francisco Gaudencio Lope the sale of any goods or services on or in
Berardo Mañalac. connection with which such use is likely to cause
 A. TRUE confusion, or to cause mistake, or to deceive; or
 B. FALSE  155.2. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply
Territoriality Principle such reproduction, counterfeit, copy or colorable imitation
 Trademark rights are recognized within a state only when to labels, signs, prints, packages, wrappers, receptacles or
the goods or services are used in commerce within the advertisements intended to be used in commerce upon or
state in connection with the
 Applying the territoriality principle, a foreign trademark o Sale,
MAY enjoy protection rights in the Philippines only when o Offering for sale,
the goods or services are used in commerce in the o Distribution, or
Philippines. o Advertising of goods or services on or in
connection with which such use is likely to cause
Q: Telefonica, a telecommunications corporation from Spain, may confusion, or to cause mistake, or to deceive,
validly register its trademark “TelefonoIntelegente” for its goods shall be liable in a civil action for infringement
namely, smart phones, in the Philippines considering they have by the registrant for the remedies hereinafter
obtained their certificate of registration for the same mark in its set forth:
home country, 4 months ago o Provided, That the infringement takes place at
 A. TRUE the moment any of the acts stated in Subsection
 B. FALSE 155.1 or this subsection are committed
regardless of whether there is actual sale of
147.2. The exclusive right of the owner of a well-known mark goods or services using the infringing material.
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 Elements for Infringement (CRUIL)
respect of which the mark is registered: 1. Registration of trademark
 Provided, That use of that mark in relation to those goods a. Only the registrant of a mark can file a case for
or services would indicate a connection between those infringement.
goods or services and the owner of the registered mark: b. Any foreign national/juridical person who meets
o Provided, further, That the interests of the the requirements of Sec. 3 and does not engage
owner of the registered mark are likely to be in business in the Phils. May bring an action for
damaged by such use infringement W/N licensed to do business in the
Phils. (Sec. 160)
9. USE BY THIRD PARTIES OF NAMES, ETC. SIMILAR TO REGISTERED c. EXPN: Trade names, unlike trademarks, need not
MARK be registered with the IPO before an
infringement suit may be filed
Sec. 148. Use of Indications by Third Parties for Purposes Other than i. All that is required is that the trade
those for which the Mark is Used. - Registration of the mark shall not name be previously used in trade or
confer on the registered owner the right to preclude third parties commerce in the Phils.
from using bona fide their names, addresses, pseudonyms, a 2. Trademark is reproduced, copied, counterfeited, or
geographical name, or exact indications concerning the kind, colorably imitated
quality, quantity, destination, value, place of origin, or time of 3. It is used in connection with the sale, or it is offering for
production or of supply, of their goods or services: sale or advertising of goods, services, or business, or
 Provided, That such use is confined to the purposes of applied labels, signs, wrappers, etc. intended to be used in
mere identification or information and cannot mislead connection with such goods, services, or business
the public as to the source of the goods or services. 4. THERE IS, IN THE USE OR APPLICATION A LIKELIHOOD OF
CONFUSION
10. INFRINGEMENT AND REMEDIES

Nudibranch 18
a. Note: Likelihood of confusion is the gravamen of  Q: What if the damages cannot be ascertained with
trademark infringement. Intent to deceive is not reasonable certainty?
required. Complete imitation is not required  in the event such measure of damages cannot be readily
b. (See: Tests To Determine Confusing Similarity ascertained with reasonable certainty, then the court may
Between Marks under #6 of the outline) award as damages:
5. Lack of consent on the part of the registered owner or o 1. A reasonable percentage based upon the
their assignee amount of gross sales of the defendant or
o 2. The value of the services in connection with
ii. CONFUSION OF GOOD VS. CONFUSION OF BUSINESS which the mark or trade name was used in the
infringement of the rights of the complaining
Q: In relation to trademark infringement, what are the types of party.
confusions as to trademarks or trade names?  Requirement of Notice – the owner of the registered mark
 1. Confusion of goods or services shall NOT be entitled tor recover profits or damages unless
 2. Confusion of business or origin the acts have been committed with knowledge: that such
imitation is likely to cause confusion or to cause mistake or
Q: What is the difference between these 2? deceive
CONFUSION OF GOODS & CONFUSION OF o Presumption of Knowledge:
SERVICES BUSINESS/ORIGIN  1. If the mark is displayed with the
Kind of Exists when the ordinary Exists when one party’s words “registered mark” or the symbol
similarity prudent purchase would product or service though “®”; or
be induced to purchase different from that of  2. If the damage had otherwise actual
one product or service another is such as might notice of the registration
bec. Of the similarity of reasonably be assumed to o Note: the “™” sign to indicate trademark or the
the marks or trade names originate from the latter “SM” sign to indicate service mark has no legal
used in the same kind of and the public would then significance in the Phils.
product or service be deceived into the
belief that there is some IMPOUNDING
connection between the  156.2. On application of the complainant, the court may
parties, which in fact is impound during the pendency of the action, sales invoices
absent and other documents evidencing sales.
Kind of Confusingly similar marks Confusingly similar marks
goods or are used on the same are employed in different DOUBLE DAMAGES
services kinds of goods/services or non-competing  156.3. In cases where actual intent to mislead the public
goods/service or to defraud the complainant is shown, in the discretion
Tests 2 TESTS: of the court, the damages may be doubled.
used 1. Dominancy Test; and
2. Holistic Test INJUNCTION
 156.4. The complainant, upon proper showing, may also
be granted injunction.
iii. PARALLEL IMPORTATION
COURT ORDER FOR DISPOSAL/DESTRUCTION OF THE INFRINGING
Importation of Medicine MATERIAL
 There is no infringement of trademarks or trade names if  Sec. 157. Power of Court to Order Infringing Material
imported or sold drugs and medicines as well as imported Destroyed.
or sold off-patent drugs and medicines which bears marks  157.1. In any action arising under this Act, in which a
that have not been tampered, unlawfully modified, or violation of any right of the owner of the registered mark
infringed upon (Sec. 159.4) is established, the court may order that goods found to be
infringing be, without compensation of any sort, disposed
B. DAMAGES of outside the channels of commerce in such a manner as
to avoid any harm caused to the right holder, or
i. SEC. 156-157, SEC. 179 destroyed; and all labels, signs, prints, packages, wrappers,
receptacles and advertisements in the possession of the
DAMAGES defendant, bearing the registered mark or trade name or
Sec. 156. Actions, and Damages and Injunction for Infringement. any reproduction, counterfeit, copy or colorable imitation
156.1. The owner of a registered mark may recover damages from thereof, all plates, molds, matrices and other means of
any person who infringes his rights, making the same, shall be delivered up and destroyed.
 Q: What is the measure of the damages?  157.2. In regard to counterfeit goods, the simple removal
 and the measure of the damages suffered shall be either: of the trademark affixed shall not be sufficient other than
o 1. The reasonable profit which the complaining in exceptional cases which shall be determined by the
party would have made, had the defendant not Regulations, to permit the release of the goods into the
infringed his rights, or channels of commerce.
o 2. The profit which the defendant actually made
out of the infringement, or Sec. 179. Anonymous and Pseudonymous Works. - For purposes of
this Act, the publishers shall be deemed to represent the authors of
Nudibranch 19
articles and other writings published without the names of the o Provided, That its jurisdiction is limited to
authors or under pseudonyms, unless the contrary appears, or the complaints where the total damages claimed are
pseudonyms or adopted name leaves no doubts as to the author’s not less than Two hundred thousand pesos
identity, or if the author of the anonymous works discloses his (P200,000):
identity  Provided, further, That availment of
the provisional remedies may be
ii. CIVIL VS. CRIMINAL INFRINGEMENT granted in accordance with the Rules
 Sec. 170. Penalties.—Independent of the civil and of Court. The Director of Legal Affairs
administrative sanctions imposed by law, a criminal shall have the power to hold and
penalty of imprisonment from two (2) years to five (5) punish for contempt all those who
years and a fine ranging from Fifty thousand pesos disregard orders or writs issued in the
(P50,000) to Two hundred thousand pesos (P200,000), course of the proceedings.
shall be imposed on any person who is found guilty of  (b) After formal investigation, the Director for Legal Affairs
committing any of the acts mentioned in Section 155, may impose one (1) or more of the following
Section 168 and Subsection 169.1. administrative penalties:
o (i) The issuance of a cease and desist order
C. JURISDICTION which shall specify the acts that the respondent
shall cease and desist from and shall require him
A. AM 2-1-11-SC, FEB. 9, 2002 to submit a compliance report within a
 To implement and ensure the speedy disposition of cases reasonable time which shall be fixed in the
involving violations of intellectual property rights under order;
R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC dated o (ii) The acceptance of a voluntary assurance of
February 19, 2002 designating certain Regional Trial compliance or discontinuance as may be
Courts as Intellectual Property Courts. On June 17, 2003, imposed. Such voluntary assurance may include
the Court further issued a Resolution consolidating one or more of the following:
jurisdiction to hear and decide Intellectual Property Code  (1) An assurance to comply with the
and Securities and Exchange Commission cases in specific provisions of the intellectual property
Regional Trial Courts designated as Special Commercial law violated;
Courts.  (2) An assurance to refrain from
engaging in unlawful and unfair acts
B. AM 03-03-03-SC JULY 1, 2003 and practices subject of the formal
 The Regional Courts previously designated as SEC investigation;
Courts through the: (a) Resolutions of this Court dated 21  (3) An assurance to recall, replace,
November 2000, 4 July 2001, 12 November 2002, and 9 repair, or refund the money value of
July 2002, all issued in A.M. No. 00-11-03-SC, (b) defective goods distributed in
Resolution dated 27 August 2001 in A.M. No. 01-5-298- commerce; and
RTC; and (c) Resolution dated 8 July 2002 in A.M. No. 01-  (4) An assurance to reimburse the
12-656-RTC are hereby DESIGNATED and shall complainant the expenses and costs
be CALLED as Special Commercial Courts to try and decide incurred in prosecuting the case in the
cases involving violations of Intellectual Property Rights Bureau of Legal Affairs.
which fall within their jurisdiction and those cases o The Director of Legal Affairs may also require the
formerly cognizable by the Securities and Exchange respondent to submit periodic compliance
Commission; reports and file a bond to guarantee compliance
 The Special Commercial Courts shall have jurisdiction of his undertaking;
over cases arising within their respective territorial o (iii) The condemnation or seizure of products
jurisdiction with respect to the National Capital Judicial which are subject of the offense. The goods
Region and within the respective provinces with respect to seized hereunder shall be disposed of in such
the First to Twelfth Judicial Regions. Thus, cases shall be manner as may be deemed appropriate by the
filed in the Office of the Clerk of Court in the official Director of Legal Affairs, such as by sale,
station of the designated Special Commercial Court; donation to distressed local governments or to
charitable or relief institutions, exportation,
C. SEC. 10.2 recycling into other goods, or any combination
thereof, under such guidelines as he may
Sec. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs provide;
shall have the following functions: o (iv) The forfeiture of paraphernalia and all real
and personal properties which have been used in
 10.1. Hear and decide opposition to the application for
the commission of the offense;
registration of marks; cancellation of trademarks; subject
o (v) The imposition of administrative fines in such
to the provisions of Section 64, cancellation of patents,
amount as deemed reasonable by the Director of
utility models, and industrial designs; and petitions for
Legal Affairs, which shall in no case be less than
compulsory licensing of patents;
Five thousand pesos (P5,000) nor more than One
 10.2. (a) Exercise original jurisdiction in administrative
hundred fifty thousand pesos (P150,000). In
complaints for violations of laws involving intellectual
addition, an additional fine of not more than
property rights:

Nudibranch 20
One thousand pesos (P1,000) shall be imposed manufacturer or dealer, either as to
for each day of continuing violation; the goods themselves or in the
o (vi) The cancellation of any permit, license, wrapping of the packages in which
authority, or registration which may have been they are contained, or the devices or
granted by the Office, or the suspension of the words thereon, or in any other feature
validity thereof for such period of time as the of their appearance, which would be
Director of Legal Affairs may deem reasonable likely to influence purchasers to
which shall not exceed one (1) year; believe that the goods offered are
o (vii) The withholding of any permit, license, those of a manufacturer or dealer,
authority, or registration which is being secured other than the actual manufacturer or
by the respondent from the Office; dealer, or
o (viii) The assessment of damages;  Who otherwise clothes the goods with
o (ix) Censure; and such appearance as shall DECEIVE the
o (x) Other analogous penalties or sanctions. public and defraud another of his
 10.3. The Director General may by Regulations establish legitimate trade, or any subsequent
the procedure to govern the implementation of this vendor of such goods or any agent of
Section. any vendor engaged in selling such
goods with a like purpose;
D. REQUIREMENT OF NOTICE o (b) Any person who by any artifice, or device, or
who employs any other means calculated to
Requirement of Notice – the owner of the registered mark shall induce the FALSE BELIEF that such person is
NOT be entitled tor recover profits or damages unless the acts have offering the services of another who has
been committed with knowledge: that such imitation is likely to identified such services in the mind of the public;
cause confusion or to cause mistake or deceive or
 Presumption of Knowledge: o (c) Any person who shall
o 1. If the mark is displayed with the words  Make any FALSE STATEMENT in the
“registered mark” or the symbol “®”; or course of trade or
o 2. If the damage had otherwise actual notice of  Who shall commit any other act
the registration contrary to good faith of a nature
calculated to DISCREDIT the goods,
11. UNFAIR COMPETITION business or services of another.

A. SEC. 168 168.4. The remedies provided by Sections 156, 157 and 161 shall
apply mutatis mutandis.
Sec. 168. Unfair Competition, Rights, Regulation and Remedies. -
168.1. A person who has identified in the mind of the public the TEST to determine Unfair Competition – whether certain goods have
goods he manufactures or deals in, his business or services from been intentionally clothed with an appearance which is likely to
those of others, whether or not a registered mark is employed, has a deceive the ordinary purchaser exercising ordinary care, and not
property right in the goodwill of the said goods, business or services whether certain limited class of purchasers with special knowledge
so identified, which will be protected in the same manner as other not possessed by the ordinary purchaser could avoid mistake by the
property rights. exercise of his special knowledge. Inherent element: fraud/deceit

Unfair Competition Q: N Corporation manufactures rubber shoes under the trademark


 168.2. Any person who shall employ deception or any “JORDAN” which hit the Philippine market in 1985, and registered
other means contrary to good faith by which he shall pass its trademark with the BPTTT in 1990. PK Company also
off the goods manufactured by him or in which he deals, manufactures rubber shoes with the trademark “JAVORSKI” which
or his business, or services for those of the one having it registered with the BPTTT in 1978. In 2002, PK Company adopted
established such goodwill, or who shall commit any acts and copied the design of N Corporation’s “JORDANN” rubber shoes,
calculated to produce said result, shall be guilty of unfair both as to shape and color, but retained the trademark “JAVORSKI”
competition, and shall be subject to an action therefor. on its products. May PK Company be held liable to N Corporation?
o Goodwill – the advantage or benefit which is Explain. (Bar question)
acquired by an establishment or business in  YES. PK Company may be held liable by N Corporation for
consequence of the general public patronage Unfair Competition
and encouragement which it receives from  Under Sec. 168.3(a) of the IPC, a person is committing
constant or habitual customers on account of its unfair competition if he sells goods and “and gives them
local position reputation for skill, or affluence, the general appearance of goods of another manufacturer
etc. or dealer, either as to the goods themselves or in the
 168.3. In particular, and without in any way limiting the wrapping of the packages in which they are contained, or
scope of protection against unfair competition, the the devices or words thereon, or in any other feature of
following shall be deemed guilty of unfair competition: their appearance, which would be likely to influence
o (a) Any person, who is selling his goods and purchasers to believe that the goods offered are those of a
 (GD-FF) manufacturer or dealer, other than the actual
 Gives them the GENERAL manufacturer or dealer”
APPEARANCE of goods of another
Nudibranch 21
 The circumstances contemplated by Sec. 168.3(a) are However, on March 27, 2003, respondent's new counsel filed an
present in this case because PK Company gave its shoes Appearance with Motion for Reconsideration. It was only in said
the appearance of the shoes of N corporation and the motion where respondent raised for the first time, the issue of the
same will tend to mislead the public as to the origin of the impropriety of filing the Application for Search Warrant at the RTC-
goods. Naga City when the alleged crime was committed in a place within
the territorial jurisdiction of the RTC-Iriga City. Respondent pointed
B. INFRINGEMENT VS. UNFAIR COMPETITION out that the application filed with the RTC-Naga failed to state any
INFRINGEMENT UNFAIR COMPETITION compelling reason to justify the filing of the same in a court which
As to There is unauthorized Involves passing off one’s does not have territorial jurisdiction over the place of the
Definition use of trademark goods as those of another commission of the crime, as required by Section 2 (b), Rule 126 of
and giving one’s goods the the Revised Rules of Criminal Procedure.
appearance of that of In an Order dated July 28, 2003, the RTC-Naga issued an Order
another granting respondent's Motion for Reconsideration, thereby quashing
As to Not necessary to Necessary to establish the Search Warrants. Petitioner then appealed to the CA, but the
Fraudulent establish fraudulent fraudulent intent appellate court, in its Decision dated March 13, 2009, affirmed the
Intent intent RTC Order quashing the search warrants. Petitioner's motion for
As to Registration of the Prior registration of a reconsideration of the CA Decision was denied per Resolution dated
Necessity of trademark is necessary trademark is not September 14, 2009.
prior for the filing of an necessary in unfair
registration action for infringement competition ISSUES:
As to Scope Limited Scope: only Wider scope: unfair 1. Whether venue in an application for search warrant is
those cases specified competition is broader jurisdictional? - NO
under the IPC because it includes cases 2. Whether the issue of lack of jurisdiction may be waived and
that are covered not only may even be raised for the first time on appeal? - NO
by the IPC but also by Art.
27 of the Civil Code HELD:
As to Goods Same class of goods or Different classes of goods SEC. 2. Court where applications for search warrant shall be filed. -
involved services must be or services may be An application for search warrant shall be filed with the following:
involved involved cralawred
(a) Any court within whose territorial jurisdiction a crime was
C. PILIPINAS SHELL PETROLEUM, ET AL. VS. ROMARS INT’L committed.

DOCTRINE: Venue is jurisdictional (b) For compelling reasons stated in the application, any court within
the judicial region where the crime was committed if the place of
FACTS: Petitioners received information that respondent was selling, the commission of the crime is known, or any court within the
offering for sale, or distributing liquefied petroleum gas (LPG) by judicial region where the warrant shall be enforced.
illegally refilling the steel cylinders manufactured by and bearing the
duly registered trademark and device of respondent Petron. Petron However, if the criminal action has already been filed, the
then obtained the services of a paralegal investigation team who application shall only be made in the court where the criminal action
went to respondent's premises located in San Juan, Baao, Camarines is pending.
Sur, bringing along four empty cylinders of Shellane, Gasul, Total and
Superkalan and asked that the same be refilled. Respondent's However, the CA gravely erred in equating the proceedings for
employees then refilled said empty cylinders at respondent's applications for search warrants with criminal actions themselves.
refilling station. Petitioners then requested the NBI to further Proceedings for said applications are not criminal in nature and,
investigate this matter. They witnessed trucks coming from thus, the rule that venue is jurisdictional does not apply thereto.
respondent's refilling facility loaded with Gasul, Shellane and Evidently, the issue of whether the application should have been
Marsflame cylinders, which then deposit said cylinders in different filed in RTC-Iriga City or RTC-Naga, is not one involving jurisdiction
places, one of them a store called “Edrich Enterprises”. because, as stated in the afore-quoted case, the power to issue a
Thus, the NBI, in behalf of Petron and Shell, filed with the Regional special criminal process is inherent in all courts.
Trial Court of Naga City (RTC-Naga), two separate Applications for
Search Warrant. The RTC-Naga City issued an Order granting said Unfortunately, the foregoing reasoning of the CA, is inceptionally
Applications and Search Warrant Nos. 2002-27 and 2002-28 were flawed, because as pronounced by the Court in Malaloan v. Court of
issued. On the same day, the NBI served the warrants at the Appeals, and reiterated in the more recent Worldwide Web
respondent's premises in an orderly and peaceful manner, and Corporation v. People of the Philippines, to wit: an application for a
articles or items described in the warrants were seized. search warrant is a “special criminal process,” rather than a criminal
On November 4, 2002, respondent filed a Motion to Quash Search action. The basic flaw in this reasoning is in erroneously equating the
Warrants, where the only grounds cited were: (a) there was no application for and the obtention of a search warrant with the
probable cause; (b) there had been a lapse of four weeks from the institution and prosecution of a criminal action in a trial court. It
date of the test-buy to the date of the search and seizure would thus categorize what is only a special criminal process, the
operations; (c) most of the cylinders seized were not owned by power to issue which is inherent in all courts.
respondent but by a third person; and (d) Edrich Enterprises is an
authorized outlet of Gasul and Marsflame. In an Order dated Moreover, the Court must again emphasize its previous admonition
February 21, 2003, the RTC-Naga denied the Motion to Quash. in Spouses Anunciacion v. Bocanegra,that:

Nudibranch 22
We likewise cannot approve the trial court's act of entertaining
supplemental motions x x x which raise grounds that are already HELD: Prefatorily, we would like to stress that the instant case falls
deemed waived. To do so would encourage lawyers and litigants to under Article 28 of the Civil Code on human relations, and not unfair
file piecemeal objections to a complaint in order to delay or competition under Republic Act No. 8293,⁠1 as the present suit is a
frustrate the prosecution of the plaintiff's cause of action. damage suit and the products are not covered by patent
registration. A fortiori, the existence of patent registration is
D. WILLAWARE PRODUCTS CORP. V. JESICHRIS MFG. CORP. immaterial in the present case.

DOCTRINE: The concept of unfair competition under article 28 of the The concept of “unfair competition” under Article 28 is very much
civil code is very much broader than that covered by intellectual broader than that covered by intellectual property laws. Under the
property laws present article, which follows the extended concept of “unfair
competition” in American jurisdictions, the term covers even cases
FACTS: Jesichris Manufacuring Company (Jesichris) alleges in its of discovery of trade secrets of a competitor, bribery of his
complaint for damages for unfair competition that it is a company employees, misrepresentation of all kinds, interference with the
engaged in the manufacture and distribution of plastic and metal fulfillment of a competitor’s contracts, or any malicious interference
products. It pioneered the use of plastic in place of rubber in the with the latter’s business.⁠2
manufacture of automotive underchassis parts such as spring eye
bushing, stabiliser bushing, and others. Willaware Products With that settled, we now come to the issue of whether or not
Corporation, on the other hand is engaged in the manufacture of petitioner committed acts amounting to unfair competition under
kitchenware items made of plastic and metal, has an office with Article 28 of the Civil Code.
physical proximity to its office, and in view of the fact that some of
its employees had transferred to it, Jesichris discovered that We find the petition bereft of merit.
Willaware had been manufacturing and distributing the same
automotive parts with exactly similar design, same material and Article 28 of the Civil Code provides that “unfair competition in
colours as Jesichris manufactures and distributes, but at a lower agricultural, commercial or industrial enterprises or in labor through
price. Willware deliberately copied its product designs which the use of force, intimidation, deceit, machination or any other
constitute unfair competition. It thus prayed for damages in terms unjust, oppressive or high-handed method shall give rise to a right of
of unrealised profits in the amount of P2Million. On the other hand, action by the person who thereby suffers damage.”
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 From the foregoing, it is clear that what is being sought to be
some of its employees transferred to Willaware. As an affirmative prevented is not competition per se but the use of unjust,
defense, Willaware posits that there was no unfair competition as oppressive or high- handed methods which may deprive others of a
the plastic products were mere reproductions of the original parts fair chance to engage in business or to earn a living. Plainly, what the
which merely conform to their original designs and specifications. law prohibits is unfair competition and not competition where the
Thus, Jesichris cannot claim that it originated the use of the plastic means used are fair and legitimate.
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 In order to qualify the competition as “unfair,” it must have two
these products. In fact, other establishments were offering them for characteristics: (1) it must involve an injury to a competitor or trade
sale. rival, and (2) it must involve acts which are characterized as
“contrary to good conscience,” or “shocking to judicial sensibilities,”
After trial, the RTC rendered a decision in favour of Jesichris. It ruled or otherwise unlawful; in the language of our law, these include
that Willaware clearly invaded the right of Jesichris by deliberately force, intimidation, deceit, machination or any other unjust,
copying and performing acts amounting to unfair competition. It oppressive or high-handed method. The public injury or interest is a
enjoined Willaware from continuing its activity, and awarded minor factor; the essence of the matter appears to be a private
damages in favor of Jesichris. On appeal to the CA, the latter wrong perpetrated by unconscionable means⁠3.
affirmed with modification that RTC decision.
Here, both characteristics are present.
Willaware is now before the Supreme Court assailing the RTC and CA
decisions. First, both parties are competitors or trade rivals, both being
engaged in the manufacture of plastic-made automotive parts.
ISSUES: Second, the acts of the petitioner were clearly “contrary to good
1. Whether or not there is unfair competition under human relations conscience” as petitioner admitted having employed respondent’s
when the parties are not competitors and there is actually no former employees, deliberately copied respondent’s products and
damage on the part of Jesichris? even went to the extent of selling these products to respondent’s
2. Consequently, if there is no unfair competition, should there be customers.⁠4
moral damages and attorney’s fees?
3. Whether or not the addition of nominal damages is proper To bolster this point, the CA correctly pointed out that petitioner’s
although no rights have been established? hiring of the former employees of respondent and petitioner’s act of
4. If ever the right of Jesichris refers to its copyright on automotive copying the subject plastic parts of respondent were tantamount to
parts, should it be considered in the light of the said copyrights were unfair competition, viz.:
considered to be void by no less than this Honorable Court in SC GR
No. 161295? The testimonies of the witnesses indicate that [petitioner] was in
5. If the right involved is “goodwill” then the issue is: whether or not bad faith in competing with the business of [respondent].
Jesichris has established “goodwill?” [Petitioner’s] acts can be characterized as executed with
Nudibranch 23
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. [Petitioner’s]
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 petitioner’s 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

Nudibranch 24
FINALS o In this case, the SC distinguished Copyright
and Patent.
1. DEFINITION OF COPYRIGHTS COPYRIGHT PATENT
 It is the element of a person’s ownership of his creation Extends only to the Extends to the INVENTION.
that permits him (author, composer or artist) to DESCRIPTION or EXPRESSION of
exclusively print, publish and vend the product of his the idea/object and not to the
creation idea/object itself
o It gives the creator of an original work the  Thus, there is no
exclusive rights to it, usually for a limited period copyright infringement
of time. when one, who
o Literally: the “right to copy”, but also gives the without being
copyright-holder the right to be credited for his authorized, used a
work; to determine who may perform work; and copyrighted plan to
other related rights construct a structure.
o Scope: literary and artistic works which are  Reason: there is
original intellectual creations in the literary and protection only to the
artistic domain. (Kho vs. CA) description or
 2 Kinds of Copyright: expression, NOT the
o (a) Common Law Copyrights - that which structure itself.
secures to the owner exclusively until its public Purely a statutory right (it only
dissemination covers works falling within the
o (b) Statutory Copyright – that which secures statutory enumeration)
protection and exclusively in the owner by force Need not be registered to be There can be no patent
of law even when the work has been made protected (unlike patent and infringement if there is no
accessible to the public. trademark) patent issued. (no patent, no
protection)
2. TERRITORIAL APPLICATION OF COPYRIGHT LAWS Simple copyright registration Must have the patentable
 Our copyright laws have no extra-territorial operation and with the National library (Now invention scrutinized by the
the rights granted under our laws can only be infringed by with the IPO) Intellectual Property Office
acts done within our territorial jurisdiction Protected for 50 years Protected for 17 years (Now 20
years)
3. COPYRIGHT IS DISTINCT FROM TRADEMARKS AND PATENTS
 2. ELIDAD KHO VS. CA (2002)
Q: Inventions are within the scope of patents. Assuming that the o In this case, the SC held: trademark, copyright
inventor wrote a book describing how to create that invention and patents are DIFFERENT intellectual property
without, however, actually producing the invention. The book, rights that cannot be interchanged with one
being subject of copyright, is protected from the moment it was another.
completed. Would this mean that the invention described in the TRADEMARK COPYRIGHT PATENT
book is also protected? A TRADEMARK is Meanwhile, the PATENTABLE
 NO. See Pearl & Dean vs. SM any visible sign scope of a INVENTIONS, on the
capable of COPYRIGHT is other hand, refer to
A. Cases distinguishing the confined to literary any technical
 1. PEARL & DEAN PHILS. INC. VS. SHOEMART, INC. (2003) goods (trademark) and artistic works solution of a
o It was contended that the copyright over or services (service which are original problem in any field
the engineering drawings extended to the mark) of an intellectual creations of human activity
actual light boxes illustrated in the said enterprise and shall in the literary and which is new,
drawings include a stamped artistic domain involves an inventive
o SC sustained CA’s ruling that the light boxes or marked container protected from the step and is
are not protected by the copyright over the of goods. moment of their industrially
drawings. creation. applicable.
 Reason: when a drawing is In relation thereto, a
technical and depicts an object, a TRADE NAME means
copyright over the drawings will the name or
not extend to the actual object. designation
o In the case at bar, SMI is not liable for identifying or
infringing Pearl and Dean’s Copyright over distinguishing an
technical drawings of advertising display enterprise.
unit because the copyright does not extend
to the actual lightboxes.
 3. CHING VS. SALINAS
 What the law does not include, it
excludes, and for good reason:
B. Denicola test
the light box was not a literary or
 This test inquires into which aspects of the work are
artistic piece which could be
dictated by the functional constraints of the article and
copyrighted under the law.
Nudibranch 25
which aspects reflect unconstrained perspective of the
artist. (Professor Robert Denicola) 5. WORKS PROTECTED BY COPYRIGHT

C. Can an article of commerce serve as trademark and at the same A.1 ORIGINAL WORKS – Section 172 (See above)
time enjoy patent and copyright protection?
 YES. A.2 DERIVATIVE WORKS – these are creations that are based on an
existing work. Thus, the series of film “Harry Potter” is a derivative
4. COPYRIGHT OVER LITERARY AND WORKS IS VESTED FROM THE work based on the novel of the same title. A song that is a “re-make
MOMENT OF CREATION of an old song is another example of derivative works.
 The special thing about copyright as compared to patent  Section 173. Derivative Works. -173.1. The following
and trademark is that it need not be registered to be derivative works shall also be protected by copyright:
protected. o (a) Dramatizations, translations, adaptations,
o Reason: the law provides that original abridgments, arrangements, and other
intellectual creations are protected from alterations of literary or artistic works; and
the moment of its creation o (b) Collections of literary, scholarly or artistic
 ORIGINAL WORKS works, and compilations of data and other
 Section 172. Literary and Artistic Works. - materials which are original by reason of the
 Section 172.1. Literary and artistic works, hereinafter selection or coordination or arrangement of
referred to as "works", are original intellectual creations their contents.
in the literary and artistic domain protected from the  Sec. 173.2. The works referred to in paragraphs (a) and (b)
moment of their creation and shall include in particular: of Subsection Sec.173.1 shall be protected as a NEW
o (a) Books, pamphlets, articles and other WORKS:
writings; o Provided however, That such new work shall
o (b) Periodicals and newspapers; NOT:
o (c) Lectures, sermons, addresses,  Affect the force of any subsisting
dissertations prepared for oral delivery, copyright upon the original works
whether or not reduced in writing or other employed or any part thereof, or
material form;  Be construed to imply any right to
o (d) Letters; such use of the original works, or
o (e) Dramatic or dramatico-musical  To secure or extend copyright in such
compositions; choreographic works or original works
entertainment in dumb shows;
o (f) Musical compositions, with or without B. Requirements of Originality
words;  An original work is that which requires originality in skill or
o (g) Works of drawing, painting, labor in execution such that the works became individual
architecture, sculpture, engraving, either in matter, forms arrangement or treatment (not
lithography or other works of art; models or necessarily original thought, idea or research)
designs for works of art;  SAMBOY VS. LEVI STRAUSS
o (h) Original ornamental designs or models
for articles of manufacture, whether or not Q: What are the non-copyrightable works under the law?
registrable as an industrial design, and
other works of applied art; 6. WORKS NOT PROTECTED BY COPYRIGHT
o (i) Illustrations, maps, plans, sketches,  Sec. 175. Unprotected Subject Matter. - Notwithstanding
charts and three-dimensional works relative the provisions of Sections 172 and 173, no protection shall
to geography, topography, architecture or extend, under this law, to any:
science; o 1. Ideas, procedures, systems, etc. that are not
o (j) Drawings or plastic works of a scientific in tangible form
or technical character;  Idea, procedure, system method or
o (k) Photographic works including works operation, concept, principle,
produced by a process analogous to discovery or mere data as such, even if
photography; lantern slides; they are expressed, explained,
o (l) Audiovisual works and cinematographic illustrated or embodied in a work;
works and works produced by a process  Reason: only the expressions of the
analogous to cinematography or any idea, procedure, etc. are protected
process for making audio-visual recordings;  Ex: A book about healthy living thru
o (m) Pictorial illustrations and diet may be protected by copyright,
advertisements; but not the idea of healthy living thru
o (n) Computer programs; and said diet
o (o) Other literary, scholarly, scientific and o 2. News of the day
artistic works.  News of the day and other
 Section 172.2. Works are protected by the sole fact of miscellaneous facts having the
their creation, irrespective of their mode or form of character of mere items of press
expression, as well as of their content, quality and purpose information; or
 UNILEVER PHILIPPINES, INC. VS. CA
Nudibranch 26
 Reason: no one can have monopoly of appropriation of such work without
the news or current events the consent of the copyright owners.
o 3. Official government texts
 Any official text of a legislative, Q: What intellectual property rights are protected by copyright?
administrative or legal nature, as well
as any official translation thereof. 7. RIGHTS CONFERRED BY COPYRIGHT
 Sec. 176. Works of the Government. – these are works  1. Economic Right
created by an officer or employee of the Philippine o Sec. 177. Copy or Economic Rights. - Subject to
Government or any of its subdivisions and the provisions of Chapter VIII, copyright or
instrumentalities, including GOCC’s as part of his regularly economic rights shall consist of the exclusive
prescribed official duties (Sec. 171.11) right to carry out, authorize or prevent the
o This is broader than Sec. 175 because its scope is following acts:
beyond text or documents.  177.1. Reproduction of the work or
o Ex: an architectural work by a government substantial portion of the work;
engineer designed as part of his duty cannot be  177.2 Dramatization, translation,
protected by copyright adaptation, abridgment, arrangement
o 2 elements of a Work of Government: or other transformation of the work;
 1. Creator must be an officer or  177.3. The first public distribution of
employee of government; the original and each copy of the work
 2. The work is done as part of his by sale or other forms of transfer of
regularly prescribed official duties ownership;
o Sec. 176.1. No copyright shall subsist in any  177.4. Rental of the original or a copy
work of the Government of the Philippines. of an audiovisual or cinematographic
o When APPROVAL of gov’t agency is required: work, a work embodied in a sound
 GR: However, prior approval of the recording, a computer program, a
government agency or office wherein compilation of data and other
the work is created shall be necessary materials or a musical work in graphic
for EXPLOITATION of such work for form, irrespective of the ownership of
profit. Such agency or office may, the original or the copy which is the
among other things, impose as a subject of the rental;
condition the payment of royalties.  177.5. Public display of the original or
 EXPN: No prior approval or conditions a copy of the work;
shall be required for the use of any  177.6. Public performance of the
purpose of statutes, rules and work; and
regulations, and speeches, lectures,  177.7. Other communication to the
sermons, addresses, and public of the work
dissertations, pronounced, read or  2. Moral Rights
rendered in courts of justice, before o Sec. 193. Scope of Moral Rights. - The author of
administrative agencies, in deliberative a work shall, independently of the economic
assemblies and in meetings of public rights in Section 177 or the grant of an
character. assignment or license with respect to such right,
 HOWEVER: Sec. 176.2. The have the right:
Author of speeches, lectures,  193.1. To require that the authorship
sermons, addresses, and of the works be attributed to him, in
dissertations mentioned in particular, the right that his name, as
the preceding paragraphs far as practicable, be indicated in a
shall have the exclusive right prominent way on the copies, and in
of making a COLLECTION of connection with the public use of his
his works. work;
o Despite the above discussions, this does not  193.2. To make any alterations of his
mean the government cannot be a copyright work prior to, or to withhold it from
owner: publication;
 Sec. 176.3. Notwithstanding the  193.3. To object to any distortion,
foregoing provisions, the Government mutilation or other modification of, or
is not precluded from receiving and other derogatory action in relation to,
holding copyrights transferred to it by his work which would be prejudicial to
assignment, bequest or otherwise; his honor or reputation; and
nor shall publication or republication  193.4. To restrain the use of his name
by the government in a public with respect to any work not of his
document of any work in which copy own creation or in a distorted version
right is subsisting be taken to cause of his work
any abridgment or annulment of the  3. Rights of Performers, Producers of Sounds Recording
copyright or to authorize any use or and Broadcasting Organization

Nudibranch 27
o Sec. 203. Scope of Performers' Rights. - Subject be entitled to an additional remuneration
to the provisions of Section 212, performers shall equivalent to at least five percent (5%) of the
enjoy the following exclusive rights: original compensation he or she received for the
 Sec. 203.1. As regards their first communication or broadcast
performances, the right of authorizing: o Producers of Sound Recordings: Sec. 208. Scope
 (a) The broadcasting and of Right. - Subject to the provisions of Section
other communication to the 212, producers of sound recordings shall enjoy
public of their performance; the following exclusive rights:
and  Sec. 208.1. The right to authorize the
 (b) The fixation of their direct or indirect reproduction of their
unfixed performance. sound recordings, in any manner or
 Sec. 203.2. The right of authorizing the form; the placing of these
direct or indirect reproduction of their reproductions in the market and the
performances fixed in sound right of rental or lending;
recordings, in any manner or form;  Sec. 208.2. The right to authorize the
 Sec. 203.3. Subject to the provisions of first public distribution of the original
Section 206, the right of authorizing and copies of their sound recordings
the first public distribution of the through sale or rental or other forms
original and copies of their of transferring ownership; and
performance fixed in the sound  Sec. 208.3. The right to authorize the
recording through sale or rental or commercial rental to the public of the
other forms of transfer of ownership; original and copies of their sound
 Sec. 203.4. The right of authorizing the recordings, even after distribution by
commercial rental to the public of the them by or pursuant to authorization
original and copies of their by the producer
performances fixed in sound
recordings, even after distribution of 8. LIMITATIONS OF COPYRIGHT
them by, or pursuant to the  Sec. 184. Limitations on Copyright. –
authorization by the performer; and  Sec. 184.1. Notwithstanding the provisions of Chapter V,
 Sec. 203.5. The right of authorizing the the following acts shall NOT CONSTITUTE INFRINGEMENT
making available to the public of their of copyright:
performances fixed in sound o (a) The recitation or performance of a work,
recordings, by wire or wireless means, once it has been lawfully made accessible to the
in such a way that members of the PUBLIC,
public may access them from a place  If done privately and free of charge OR
and time individually chosen by them. if made strictly for a charitable or
o Sec. 204. Moral Rights of Performers. - religious institution or society;
 Sec. 204.1. Independently of a o (b) The making of QUOTATIONS from a
performer's economic rights, the PUBLISHED WORK if they are compatible with
performer, shall, as regards his live fair use and only to the extent justified for the
aural performances or performances purpose, including quotations from newspaper
fixed in sound recordings, have the articles and periodicals in the form of press
right to claim to be identified as the summaries:
performer of his performances, except  Provided, That the source and the
where the omission is dictated by the name of the author, if appearing on
manner of the use of the performance, the work, are mentioned;
and to object to any distortion,  Sec. 171.7. "PUBLISHED WORKS" –
mutilation or other modification of his means works, which, with the consent
performances that would be of the authors, are made available to
prejudicial to his reputation. the public by wire or wireless means in
 Sec. 204.2. The rights granted to a such a way that members of the public
performer in accordance with may access these works from a place
Subsection 203.1 shall be maintained and time individually chosen by them
and exercised fifty (50) years after his o (c) The REPRODUCTION OR COMMUNICATION
death, by his heirs, and in default of to the public by mass media of ARTICLES on
heirs, the government, where current political, social, economic, scientific or
protection is claimed. religious topic, lectures, addresses and other
o Sec. 206. Additional Remuneration for works of the same nature, which are delivered in
Subsequent Communications or Broadcasts. - public if such use is for information purposes and
Unless otherwise provided in the contract, in has not been expressly reserved:
every communication to the public or broadcast  Provided, That the source is clearly
of a performance subsequent to the first indicated;
communication or broadcast thereof by the  Sec. 171.9. "REPRODUCTION" – is the
broadcasting organization, the performer shall making of one (1) or more copies of a
Nudibranch 28
work or a sound recording in any o (j) PUBLIC DISPLAY of the original or a copy of
manner or form. the work not made by means of a film, slide,
o (d) The REPRODUCTION AND COMMUNICATION television image or otherwise on screen or by
to the public of literary, scientific or artistic means of any other device or process:
works as part of reports of CURRENT EVENTS by  Provided, That either the work has
means of photography, cinematography or been published, or, that original or the
broadcasting to the extent necessary for the copy displayed has been sold, given
purpose; away or otherwise transferred to
o (e) The INCLUSION of a work in a publication, another person by the author or his
broadcast, or other communication to the successor in title; and
public, sound recording or film, if such inclusion o (k) Any use made of a work for the purpose of
is made by way of illustration for teaching any JUDICIAL PROCEEDINGS or for the giving of
purposes AND is compatible with fair use: professional advice by a legal practitioner.
 Provided, That the source and of the  Sec. 184.2. The provisions of this section shall be
name of the author, if appearing in the interpreted in such a way as to allow the work to be used
work, are mentioned; in a manner which does not conflict with the normal
o (f) The RECORDING made in schools, exploitation of the work and does not unreasonably
universities, or educational institutions of a prejudice the right holder's legitimate interest.
work included in a broadcast for the use of such  REPRODUCTION OF PUBLISHED WORK
schools, universities or educational institutions: o Sec. 187. Reproduction of Published Work. -
 Provided, That such recording must be o Sec. 187.1. Notwithstanding the provision of
deleted within a reasonable period Section 177, and subject to the provisions of
after they were first broadcast: Subsection 187.2, the private reproduction of a
 Provided, further, That such published work in a SINGLE COPY, where the
recording may not be made reproduction is made by a natural person
from audiovisual works exclusively for research and private study, shall
which are part of the general be PERMITTED, without the authorization of
cinema repertoire of feature the owner of copyright in the work.
films except for brief  ELEMENTS of a permissible practice of
excerpts of the work; reproducing a copyrighted book:
o (g) The making of EPHEMERAL recordings by a 1. By a Natural Person
broadcasting organization by means of its own 2. For purposes of research and
facilities and for use in its own broadcast; private study (not mere leisure)
 Thus, a short-lived sound clip from a 3. Not excluded under Sec. 187.2
song or a movie may be used in a radio o Sec. 187.2. The permission granted under
broadcast without infringing copyright Subsection 187.1 shall NOT EXTEND to the
o (h) The use made of a work by or under the reproduction of:
direction or control of the GOVERNMENT, by  (a) A work of architecture in form of
the National Library or by educational, scientific building or other construction;
or professional institutions where such use is in  (b) An entire book, or a substantial
the public interest and is compatible with fair past thereof, or of a musical work in
use; which graphics form by reprographic
 The government’s use of a work must means;
be for public interest. Unlike in  (c) A compilation of data and other
expropriation, payment of just materials;
compensation is not necessary  (d) A computer program except as
o (i) The PUBLIC PERFORMANCE or the provided in Section 189; and
communication to the public of a work, in a  (e) Any work in cases where
place where no admission fee is charged in reproduction would unreasonably
respect of such public performance or conflict with a normal exploitation of
communication, by a club or institution for the work or would otherwise
charitable or educational purpose only, whose unreasonably prejudice the legitimate
aim is not profit making, subject to such other interests of the author.
limitations as may be provided in the  FAIR USE OF COPYRIGHT WORK – Fair Use is using
Regulations; somebody else’s work fairly, i.e. what is reasonable under
 Sec. 171.3. "Communication to the the circumstances.
public" or "communicate to the o It is a universally accepted limitation on
public" means the making of a work copyright.
available to the public by wire or o But while the concept is simple, the application
wireless means in such a way that is definitely not. Reason: it is hard to determine
members of the public may access what is “fair” under certain circumstances
these works from a place and time especially since it may not be measured
individually chosen by them arithmetically.
o Sec. 185. Fair Use of a Copyrighted Work. -
Nudibranch 29
o Sec. 185.1. The FAIR USE of a copyrighted work o Sec. 190.1. Notwithstanding the provision of
for criticism, comment, news reporting, teaching Subsection 177.6, but subject to the limitation
including multiple copies for classroom use, under the Subsection 185.2, the importation of a
scholarship, research, and similar purposes is copy of a work by an individual for his personal
NOT an infringement of copyright. purposes shall be permitted without the
o DECOMPILATION, which is understood here to authorization of the author of, or other owner of
be the reproduction of the code and translation copyright in, the work under the following
of the forms of the computer program to circumstances:
achieve the inter-operability of an independently  (a) When copies of the work are not
created computer program with other programs available in the Philippines and:
may also constitute fair use.  (i) Not more than one (1)
o In determining whether the use made of a work copy at one time is imported
in any particular case is fair use, the FACTORS to for strictly individual use
be considered shall include: only; or
 (a) The purpose and character of the  (ii) The importation is by
use, including whether such use is of a authority of and for the use
commercial nature or is for non-profit of the Philippine
education purposes; Government; or
 (b) The nature of the copyrighted  (iii) The importation,
work; consisting of not more than
 (c) The amount and substantiality of three (3) such copies or
the portion used in relation to the likenesses in any one invoice,
copyrighted work as a whole; and is not for sale but for the use
 (d) The effect of the use upon the only of any religious,
potential market for or value of the charitable, or educational
copyrighted work. society or institution duly
o Sec. 185.2 The fact that a work is UNPUBLISHED incorporated or registered,
shall not by itself bar a finding of fair use if such or is for the encouragement
finding is made upon consideration of all the of the fine arts, or for any
above factors. state school, college,
 REPRODUCTION OF COMPUTER PROGRAM: university, or free public
o Sec. 189. Reproduction of Computer Program. - library in the Philippines.
o Sec. 189.1. Notwithstanding the provisions of  (b) When such copies form parts of
Section 177, the reproduction in one (1) back-up libraries and personal baggage
copy or adaptation of a computer program shall belonging to persons or families
be permitted, without the authorization of the arriving from foreign countries and are
author of, or other owner of copyright in, a not intended for sale: Provided, That
computer program, by the lawful owner of that such copies do not exceed three (3).
computer program: Provided, That the copy or o Sec. 190.2. Copies imported as allowed by this
adaptation is necessary for: Section may not lawfully be used in any way to
 (a) The use of the computer program violate the rights of owner the copyright or
in conjunction with a computer for the annul or limit the protection secured by this Act,
purpose, and to the extent, for which and such unlawful use shall be deemed an
the computer program has been infringement and shall be punishable as such
obtained; and without prejudice to the proprietor’s right of
 (b) Archival purposes, and, for the action.
replacement of the lawfully owned o Sec. 190.3. Subject to the approval of the
copy of the computer program in the Secretary of Finance, the Commissioner of
event that the lawfully obtained copy Customs is hereby empowered to make rules
of the computer program is lost, and regulations for preventing the importation
destroyed or rendered unusable. of articles the importation of which is prohibited
o Sec. 189.2. No copy or adaptation mentioned in under this Section and under treaties and
this Section shall be used for any purpose other conventions to which the Philippines may be a
than the ones determined in this Section, and party and for seizing and condemning and
any such copy or adaptation shall be destroyed disposing of the same in case they are
in the event that continued possession of the discovered after they have been imported
copy of the computer program ceases to be
lawful. 9. OWNERSHIP OF COPYRIGHT
o Sec. 189.3. This provision shall be without  Sec. 178. RULES on Copyright OWNERSHIP. - Copyright
prejudice to the application of Section 185 ownership shall be governed by the following rules:
whenever appropriate.  Q: Who has ownership over the copyright?
 Importation for Personal Uses:  If there is only ONE AUTHOR  AUTHOR
o Sec. 190. Importation for Personal Purposes. - o Sec. 178.1. Subject to the provisions of this
section, in the case of original literary and artistic
Nudibranch 30
works, copyright shall belong to the author of  The letter belongs to the addressee or
the work; the person to whom it is delivered
 If there are 2 OR MORE AUTHORS  It depends.  Art. 723, Civil Code: Letters and other
o Sec. 178.2. In the case of works of JOINT private communications in writing are
AUTHORSHIP, the co-authors shall be the owned by the person to whom they
original owners of the copyright and in the are addressed and delivered, but they
absence of agreement, their rights shall be cannot be published or disseminated
governed by the rules on co-ownership. without the consent of the writer or
 If, however, a work of joint authorship his heirs. However, the court may
consists of parts that can be used authorize their publication or
SEPARATELY and the author of each dissemination if the public good or the
part can be identified, the author of interest of justice so requires
each part shall be the original owner  In case of ANONYMOUS/PSEUDONYMOUS WORKS  the
of the copyright in the part that he has AUTHORS represented by their PUBLISHERS
created; o Sec. 179. Anonymous and Pseudonymous
 If in the COURSE OF EMPLOYMENT  It depends. Works. - For purposes of this Act, the
o Sec. 178.3. In the case of work created by an PUBLISHERS shall be deemed to represent the
author during and in the course of his AUTHORS of articles and other writings
employment, the copyright shall belong to: published without the names of the authors or
o (a) The EMPLOYEE, under pseudonyms,
 If the creation of the object of  EXPN: Unless the contrary appears, or
copyright is not a part of his regular the pseudonyms or adopted name
duties even if the employee uses the leaves no doubts as to the author’s
time, facilities and materials of the identity, or if the author of the
employer. anonymous works discloses his
o (b) The EMPLOYER, identity.
 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,
 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.
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.
Nudibranch 31