Intellectual Property Law ►►| 1
INTELLECTUAL PROPERTY LAW
Atty. Alex Ferdinand Fider
INTRODUCTION
What is Intellectual Property?
Intellectual property (IP) refers to creations
of the mind, such as inventions; literary and
artistic works; designs; and symbols, names
and images used in commerce:
“the finer manifestations of human
achievement". (Prof. William W. Cornish,
Intellectual Property Law: Patents,
Copyright, Trademarks and Allied Rights
(2007))
What is Intellectual Property Law?
That branch of law which enables people to
earn recognition or financial benefit from
what they invent or create (examples:
patents, trademarks and copyrights).
By striking the right balance between the
interests of innovators and the wider public
interest, the IP system aims to foster an
environment in which creativity and
innovation can flourish. (World Intellectual
Property Organization (WIPO))
Intellectual Property Creations: A incentive).
demonstration of Man’s Original
Solitude?
We are distinguished from other living
beings because of our intellectual creativity,
among others.
Man cannot be considered on equal footing
with any other species of living being on
earth. Man alone can cultivate and
transform it to his own needs with his “self-
knowledge, self-consciousness and self-
determination.” (St. John Paul II Theology of
the Body (31 October 1979))
No other living being, can rule the earth.
This demonstrates man's original solitude.
In exercising freely our self-knowledge (or
intellect), self-consciousness and self-
determination, we become authors of
genuinely human activity. Thus, man's
creative works is an extension of his being
as a person. They are manifested in his
intellectual creations that include literary
and artistic works, designs, inventions and
other intellectual properties. (St. John Paul
II, Theology of the Body)
Interests to consider:
1. Intellectual property - an extension of
the personality of the creator.
It becomes a matter of justice then that an
inventor or creator of an intellectual
property has the right to be compensated
or recognized for the labor, intellect and
will contributed in creating that intellectual
property. It would be unjust for others to
benefit from a creator’s time, labor and
expenditure.
2. The legal protection given to inventors
or creators consists of an exclusive right
to undertake an activity (monopoly as an
3. On the other hand, it has been said that
a monopoly will create economies of
scale because it allows for a more
efficient production system.
A monopoly will likewise guarantee security
of profits which will give incentive to develop
or introduce new intellectual properties.
Monopoly Rights
This exclusive right encourages
monopolistic behavior and may not be
ordained to the “common good.”
A monopolist is able to control market prices
and determine the nature of products and
services it can deliver to the prejudice of the
 Intellectual Property Law ►►| 2

consuming public. In this case, there is no Intellectual Property Defined

incentive to bring down costs. The public Intellectual property rights consist of:
will have to pay the monopoly price offered. 1. Copyright and Related Rights;
In this global economy, there is a perception 2. Trademarks and Service Marks;
that foreign corporations use intellectual 3. Geographic Indications;
property law to legitimize monopoly. 4. Industrial Designs;
5. Patents;
IP Code, Section 2 6. Layout-Designs (Topographies) of
Declaration of State Policy. — Integrated Circuits; and
The State recognizes that an effective 7. Protection of Undisclosed Information.
intellectual and industrial property system (IP Code, Sec.4.1)
is vital to the development of domestic and
creative activity, facilitates transfer of Qualificatio Term of Subject
technology, attracts foreign investments, n IP Right matter of
and ensures market access for our monopoly
products. It shall protect and secure the
exclusive rights of scientists, inventors, Patent Novelty 20 years Invention
artists and other gifted citizens to their
intellectual property and creations, Copyright Originality Life of the Literary,
author musical
particularly when beneficial to the people,
+50 years and artistic
for such periods as provided in this Act.
(in works, etc.
The use of intellectual property bears a
general) (expressio
social function. To this end, the State
n of ideas)
shall promote the diffusion of knowledge
and information for the promotion of Trademark No prior 10 years; The mark
national development and progress and s similar marks extendibl with
the common good. and capable e respect to
It is also the policy of the State to of the goods
streamline administrative procedures of distinguishin or services
registering patents, trademarks and g goods or where it is
copyright, to liberalize the registration on services registered/
the transfer of technology, and to used.
enhance the enforcement of intellectual
property rights in the Philippines.
International Obligations (first
In the Philippines, the new Intellectual instruments to emerge)
Property Code recognizes exclusive rights 1. Paris Convention for the Protection
of intellectual property owners. of Industrial Property (revised 1965 &
1980) – patents, utility models, industrial
However, it declares that the use of designs, trademarks, service marks,
intellectual property bears a social function. trade names, and unfair competition
While monopoly right is permitted, there 2. Berne Convention for the Protection
must be recognition of intellectual property's of Literary and Artistic Works (revised
social function. 1948) –“literary and artistic works”

There are limitations in the exercise of these

exclusive rights, including a fixed term and
other qualifying conditions. The royalties
payable should likewise bear this function.

Two Features Characterize The Treaties:
1. Protection and national treatment for
foreigners:
IP Code, Section 3
International Conventions and Reciprocity. —
Any person who is a national or who is
domiciled or has a real and effective
industrial establishment in a country which is
a party to any convention, treaty or
agreement relating to intellectual property
rights or the repression of unfair competition,
to which the Philippines is also a party, or
extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to
benefits to the extent necessary to give effect
to any provision of such convention, treaty or
reciprocal law, in addition to the rights to
which any owner of an intellectual property
right is otherwise entitled by this Act.
2. Harmonizing standards of protection
Other International Agreements
1. Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPS)
2. Rome Convention (International
Convention for the Protection of
Performers, Producers of Phonograms
and Broadcasting Organizations)
3. Patent Cooperation Treaty
4. Madrid Protocol (Trademarks)
LAW ON COPYRIGHT
HISTORY
Modern copyright began in 18th century
mainly for printed books. At that time,
copyright was primarily a statutory right and
for a term provided by law.
In the 19th century, copyright extended to
works of arts and drama.
Berne Convention (1886)
Covered artistic and literary works
1. Minimum standards
a. Copyright arise from the moment
of creation and no need for
registration (Art. 5(2));
Intellectual Property Law ►►| 3
b. Minimum term of copyright is
author’s lifetime plus 50 years.
(Art. 7)
2. ‘The protection of the rights of authors in
their literary and artistic works’ (Art. 1)
Emphasis of authorship in copyright
3. Moral Rights (Art. 6bis)
Author is still recognized even if he
is no longer the copyright owner.
Rome Convention (1961)
Extended copyright protection to:
1. Performers,
2. Producers of Phonograms and
3. Broadcasting Organizations.
The Rome Convention secures protection in
performances for performers, in phonograms
for producers of phonograms and in
broadcasts for broadcasting organizations.
These are also called the related rights.
TRIPS Agreement (1994)
The Agreement on Trade-Related Aspects
of Intellectual Property Rights
Required states to comply with the
provisions of the Berne Convention
especially on national treatment and
minimum standards.
Also it called for the protection of computer
programs and databases. (Art.10)
LAW ON COPYRIGHT
Rationale: Author must be able to retain
some control over the dissemination of his
work.
Otherwise: others would be free to exploit
his work without paying compensation.
Copyright is the right granted by statute to the
proprietor of an intellectual production to its
exclusive use and enjoyment to the extent
specified in the statute. (Dissenting opinion of
CJ Davide, Habana v. Robles, 1999)
 Intellectual Property Law ►►| 4

“Copyright, in the strict sense of the term, is Economic Rights Moral Rights
purely a statutory right. Being a mere essentially linked
statutory grant, the rights are limited to what to the author’s
the statute confers. (Pearl & Dean v. interests in the
Shoemart, 409 SCRA 231, 2003) work as an
expression of an
Merely a statutory right; covers only the individual’s
works falling within the statutory personality.
enumeration.

Copyright protects expressions rather than Moral rights

ideas and information. (IP Code, Secs. 172 include:
and 173) Economic rights
1. Right of
include:
Attributio
Other Rights recognized under the IP Code: 1. Reproduction
n
1. Economic Right (IP Code, Sec.177) 2. Dramatization
2. Right of
2. Moral Right (IP Code, Secs. 193-199) 3. First public
Alteration
distribution
3. Right of
Economic rights are so known because it is 4. Rental
Integrity
essentially through these rights that copyright 5. Public display
(object to
can become a source of income for its owner, 6. Public
any
by selling them or licensing others to perform performance
prejudicial
the acts restricted by the rights 7. Other
distortion)
communicatio
4. Right to
Moral rights, on the other hand, cannot be n to the public
Restrain
transferred to person other than the author of the work.
use of his
of the work, and are essentially linked to the name.
author’s interests in the work as an
expression of an individual’s personality
SUBJECT MATTER
Economic Rights Moral Rights
ORIGINAL WORKS (IP Code, Sec.172)
They enable the These rights Created by the author through his own skill,
creator to obtain make it possible labor and judgment, without directly copying
remuneration from the for the creator to or evasively imitating the work of another.
exploitation of his undertake (Sambar v Levis 2002)
works by third parties measures to 1. Literary
maintain and a. Books, pamphlets, articles and other
protect the writings;
personal b. Periodicals and newspapers;
connection c. Lectures, sermons, addresses,
between himself dissertations prepared for oral
and the work. delivery, whether or not reduced in
writing or other material form;
d. Letters;
Can be transferred or Cannot be 2. Musical
assigned transferred to a. Dramatic or dramatico-musical
person other than compositions; choreographic works
the author of the or entertainment in dumb shows;
work, and are

b. Musical compositions, with or
without words;
3. Artistic
a. Works of drawing, painting,
architecture, sculpture, engraving,
lithography or other works of art;
models or designs for works of art;
b. Original ornamental designs or
models for articles of manufacture,
whether or not registrable as an
industrial design and other works of
applied art;
c. Illustrations, maps, plans, sketches,
charts and three dimensional works
relative to geography, topography,
architecture or science;
d. Drawings or plastic works of a
scientific or technical character;
4. Photographs, Films
a. Photographic works including works
produced by a process analogous to
photography; lantern slides;
b. Audiovisual works and
cinematographic works and works
produced by a process analogous to
cinematography or any process for
making audiovisual recordings;
c. Pictorial illustrations and
advertisements
5. Others
a. Computer programs; and
b. Other literary, scholarly, scientific
and artistic works
Note: No copyright protection for works of
applied art or industrial design which have
aesthetic or artistic features that cannot be
identified separately from the utilitarian
aspects of the article. Functional
components of useful articles, no matter
how artistically designed, have generally
been denied copyright protection unless
they are separable from the useful article.
(Ching v. Salinas, Sr. G.R. No.161295)
DERIVATIVE WORKS
Protected by Copyright
IP Code, Section 173.2
Derivative works shall be protected as
new works: Provided, however, That such
new work shall not affect the force of any
Intellectual Property Law ►►| 5
subsisting copyright upon the original
works employed or any part thereof, or be
construed to imply any right to such use
of the original works, or to secure or
extend copyright in such original works.
List of Derivative Works Protected by Law
1. Dramatizations, translations,
adaptations, abridgments,
arrangements, and other alterations of
literary or artistic works;
2. Collections of literary, scholarly or
artistic works, and compilations of data
and other materials which are original by
reason of the selection or coordination
or arrangement of their contents. (IP
Code, Sec.173.1)
Typographical Arrangement
IP Code, Section 174
Published Edition of Work –
In addition to the right to publish granted
by the author, his heirs, or assigns, the
publisher shall have a copyright
consisting merely of the right of
reproduction of the typographical
arrangement of the published edition of
the work.
Economic Rights (IP Code, Sec. 177)
Under the Berne Convention
In addition to the non-transferable moral
rights, the Berne Convention recognizes
transferable economic rights enabling
copyright owners to control the following
activities in relation to their works:
1. Translation
2. Reproduction
3. Public performance and communication
of dramatic and musical works
4. Broadcasting
5. Adaptation
Modern copyright activity is focused on
economic rights.
To illustrate, the TRIPS Agreement of 1994
require members to provide commercial
rental rights in respect of computer
programs and films
 Intellectual Property Law ►►| 6

Author is the natural person who has

There are 6 major exclusive economic rights created the work.
arising from ownership of the copyright in
any protected work. Section 171.2
The restricted acts for which a license must be Collective work is a work which has been
sought if they are to be lawfully carried out by created by 2 or more natural persons at
a person other than the copyright owner: the initiative and under the direction of
Reproduction Copying another with the understanding that it will
Dramatization Making an be disclosed by the latter under his own
adaptation of the name and that contributing natural
work persons will not be identified. Section
(adaptation right) 171.3
Public Issuing copies of Communication to the public or
Distribution the work to the communicate to the public means the
public making of a work available to the public
(first sale or by wire or wireless means in such a way
distribution right) that members of the public may access
Rental Renting or lending these works from a place and time
the work to the individually chosen by them.
public
(rental/lending Section 171.4
right) Computer is an electronic or similar
Public Display Communicating the device having information-processing
work to the public capabilities, and a "computer program" is
(public a set of instructions expressed in words,
communication codes, schemes or in any other form,
right) which is capable when incorporated in a
Public Performing, medium that the computer can read, or
Performance showing, or playing causing the computer to perform or
the work in public achieve a particular task or result.
(public performance
right) Section 171.5
Other Public lending is the transfer of
communications possession of the original or a copy of a
to the public work or sound recording for a limited
(IP Code, Sec. 177) period, for non-profit purposes, by an
institution the services of which are
available to the public, such as public
library or archive.
The restricted acts may be described as
methods of reproducing the work. Defining
their scope is important for the copyright
owner to determine: Section 171.6
Public performance
1. Kind of licensing arrangement (with the
1. If other than an audiovisual work - is
licensee); and
the recitation, playing, dancing,
2. Action may be taken in respect of
acting or otherwise performing the
infringement of copyright;
work, either directly or by means of
any device or process
IP Code, Section 171
Definition of Terms –
2. If audiovisual work – is the showing
Section 171.1
of its images in sequence and the

making of the sounds accompanying
it audible;
3. If a sound recording - is the making
the recorded sounds audible at a
place or at places where persons
outside the normal circle of a family
and that family’s closest social
acquaintances are or can be present,
irrespective of whether they are or
can be present at the same place and
at the same time, or at different
places and/or at different times, and
where the performance can be
perceived without the need for
communication within the meaning of
Subsection 171.3.
Section 171.7
Published works means works, which,
with the consent of the authors, are made
available to the public by wire or wireless
means in such a way that members of the
public may access these works from a
place and time individually chosen by
them: Provided, That availability of such
copies has been such, as to satisfy the
reasonable requirements of the public,
having regard to the nature of the work.
Section 171.8
Rental is the transfer of the possession of
the original or a copy of a work or a
sound recording for a limited period of
time, for profit
-making purposes.
Section 171.9
Reproduction is the making of one (1) or
more copies of a work or a sound
recording in any manner or form. Section
171.10
Work of applied art is an artistic creation
with utilitarian functions or incorporated
in a useful article, whether made by hand
or produced on an industrial scale.
Section 171.11
Work of the Government of the Philippines
is a work created by an officer or employee
of the Philippine Government or any of its
Intellectual Property Law ►►| 7
subdivisions and instrumentalities,
including government-owned or
controlled corporations as part of his
regularly prescribed official duties.
CRITERIA FOR PROTECTION
Unprotected Subject Matter
1. Any idea, procedure, system method or
operation, concept, principle, discovery
or mere data as such, even if they are
expressed, explained, illustrated or
embodied in a work;
2. News of the day and other miscellaneous
facts having the character of mere items
of press information; or
3. Any official text of a legislative,
administrative or legal nature, as well as
any official translation thereof. (IP Code,
Sec.175)
Government and Copyright
IP Code, Section 176
Works of the Government –
No copyright shall subsist in any work of
the Government of the Philippines.
However, prior approval of the government
agency or office wherein the work is
created shall be necessary for exploitation
of such work for profit. Such agency or
office may, among other things, impose as
a condition the payment of royalties. No
prior approval or conditions shall be
required for the use of any purpose of
statutes, rules and regulations, and
speeches, lectures, sermons,
addresses, and dissertations,
pronounced, read or rendered in courts
of justice, before administrative agencies,
in deliberative assemblies and in
meetings of public character.
The Author of speeches,
lectures, sermons, addresses, and
dissertations mentioned in the preceding
paragraphs shall have the exclusive right
of making a collection of his works.
Notwithstanding the foregoing
provisions, the Government is not
precluded from receiving and holding

copyrights transferred to it by
assignment, bequest or otherwise; nor
shall publication or republication by the
government in a public document of any
work in which copy right is subsisting be
taken to cause any abridgment or
annulment of the copyright or to
authorize any use or appropriation of
such work without the consent of the
copyright owners.
OWNERSHIP OF COPYRIGHT
The IP Code provides that initial copyright
ownership shall belong to the author of the
work.
In case of works of joint authorship, the co-
authors shall be the original owners of the
copyright.
However, if a work of joint authorship
consists of parts that can be used
separately and the author of each part can
be identified, the author of each part shall
be the original owner of the copyright in the
part that he has created
Other Rules on Copyright Ownership
1. Employee
In the case of work created by an author
during and in the course of his
employment, ownership belongs to:
a. The employee, if the creation of the
object of copyright is not a part of his
regular duties even if the employee
uses the time, facilities and materials
of the employer.
b. The employer, if the work is the
result of the performance of his
regularly-assigned duties, unless
there is an agreement, expressed or
implied, to the contrary.
2. Commissioned Work
GENERAL RULE: Material object - one
who commissioned
Copyright – creator
EXCEPTION: if there is a written
stipulation to the contrary.
Intellectual Property Law ►►| 8
3. Audiovisual Work
Copyright - producer, the author of the
scenario, the composer of the music,
the film director, and the author of the
work so adapted.
4. Letters
Copyright – writer subject to Art. 723
Civil Code
From the moment of the work’s creation, it
may already contain a notice bearing the
name of the copyright owner, and the year
of its first publication and, in copies
produced after the creator's death, the year
of such death. (IP Code, Sec.192)
RELATED RIGHTS
1. Performers
Performers are actors, singers,
musicians, dancers, and other persons
who act, sing, declaim, play in, interpret,
or otherwise perform literary and artistic
work. (IP Code, Sec.202.1)
Performers’ Rights
a. As regards their performances, the
right of authorizing:
i. The broadcasting and other
communication to the public
of their performance; and
ii. The fixation of their unfixed
performance. (IP Code,
Sec.203.1)
b. The right of authorizing the direct or
indirect reproduction of their
performances fixed in sound
recordings or audiovisual works or
fixations in any manner or form; (IP
Code, Sec.203.2)
c. Subject to the provisions of Section
206, the right of authorizing the first
public distribution of the original and
copies of their performance fixed in
the sound recordings or audiovisual
works or fixations through sale or
rental or other forms of transfer of
ownership; (IP Code, Sec.203.3)

d. The right of authorizing the
commercial rental to the public of the
original and copies of their
performances fixed in sound
recordings or audiovisual works or
fixations, even after distribution of
them by, or pursuant to the
authorization by the performer; (IP
Code, Sec.203.4)
e. The right of authorizing the making
available to the public of their
performances fixed in sound
recordings or audiovisual works or
fixations, by wire or wireless means,
in such a way that members of the
public may access them from a
place and time individually chosen
by them. (IP Code, Sec.203.5)
Moral Rights of Performers
a. right to claim to be identified as
the performer of his
performances
except where the omission is
dictated by the manner of the
use of the performance,
b. right to object to any distortion,
mutilation or other modification
of his performances that would
be prejudicial to his reputation
2. Producers of Phonograms
IP Code, Section 202.5
Producer of a sound recording means the
person, or the legal entity, who or which
takes the initiative and has the
responsibility for the first fixation of the
sounds of a performance or other
sounds, or the representation of sounds.
IP Code, Section 202.2
Sound recording means the fixation of
the sounds of a performance or of other
sounds, or representation of sound, other
than in the form of a fixation incorporated
in a cinematographic or other audiovisual
work.
Intellectual Property Law ►►| 9
Right of Producers of Phonograms
a. The right to authorize the direct or
indirect reproduction of their sound
recordings, in any manner or form;
the placing of these reproductions in
the market and the right of rental or
lending; (IP Code, Sec.208.1)
b. The right to authorize the first public
distribution of the original and copies
of their sound recordings through
sale or rental or other forms of
transferring ownership; (IP Code,
Sec.208.2)
c. The right to authorize the commercial
rental to the public of the original and
copies of their sound recordings, even
after distribution by them by or
pursuant to authorization by the
producer. (IP Code, Sec.208.3)
d. The right to authorize or make
available to the public of their sound
recordings in such a way that
members of the public may access the
sound recording from a place and
a time individually chosen or
selected by them, as well as other
transmissions of a sound recording
with like effect. (IP Code, Sec.208.4)
3. Broadcasting Organizations
IP Code, Section 202.7
Broadcasting means the transmission by
wireless means for the public reception of
sounds or of images or of representations
thereof; such transmission by satellite is
also "broadcasting" where the means for
decrypting are provided to the public by the
broadcasting organization or with its
consent.
IP Code, Section 202.8
Broadcasting organization shall include a
natural person or a juridical entity duly
authorized to engage in broadcasting.
Exclusive Right to Carry Out,
Authorize or Prevent:
a. The rebroadcasting of their
broadcasts; (IP Code, Sec.211.1)

b. The recording in any manner,
including the making of films or
the use of video tape, of their
broadcasts for the purpose of
communication to the public of
television broadcasts of the
same; (IP Code, Sec.211.2)
c. The use of such records for fresh
transmissions or for fresh
recording. (IP Code, Sec.211.3)
DATA PRIVACY ACT
Data Privacy Act of 2012 (RA 10173), Section
4 Scope –
This Act applies to the processing of all
types of personal information and to any
natural and juridical person involved in
personal information processing
including those personal information
controllers and processors who, although
not found or established in the
Philippines, use equipment that are
located in the Philippines, or those who
maintain an office, branch or agency in
the Philippines subject to the immediately
succeeding paragraph: Provided, That
the requirements of Section 5 are
complied with.
Habana v. Robles
The SC said that Respondent’s act of lifting
from the book of Habana et al substantial
portions of discussions and examples, and
her failure to acknowledge the same in her
book is an infringement of Habana et al’s
copyrights.
Kho v. Court of Appeals
Trademark, copyright and patents are
different intellectual property rights that
cannot be interchanged with one another.
A trademark is any visible sign capable of
distinguishing the goods (trademark) or
services (service mark) of an enterprise and
shall include a stamped or marked container
of goods. In relation thereto, a trade name
Intellectual Property Law ►►| 10
means the name or designation identifying
or distinguishing an enterprise.
Meanwhile, the scope of a copyright is
confined to literary and artistic works which
are original intellectual creations in the
literary and artistic domain protected from
the moment of their creation. Patentable
inventions, on the other hand, refer to any
technical solution of a problem in any field
of human activity which is new, involves an
inventive step and is industrially applicable.
Pearl & Dean v. Shoemart
Copyright does not extend to structures
themselves.
Joaquin v. Drilon
Ideas, concepts, formats, or schemes in
their abstract form clearly do not fall within
the class of works or materials susceptible
of copyright registration as provided in PD.
No. 49.
Baker v. Selden
But there is a clear distinction between the
book, as such, and the art which it is
intended to illustrate.
The novelty of the art or thing described or
explained has nothing to do with the validity
of the copyright. To give to the author of the
book an exclusive property in the art
described therein, when no examination of
its novelty has ever been officially made,
would be a surprise and a fraud upon the
public. That is the province of letters-patent,
not of copyright.
NATURE OF THE RIGHT
Limitations
1. Specific limitations (IP Code, Sec.184)
2. Fair Use (IP Code, Sec.185)
General Defense Against Infringement
IP Code, Section 185
Fair Use of a Copyrighted Work –
Section 185.1
 Intellectual Property Law ►►| 11

The fair use of a copyrighted work for of acts which do not reasonable
criticism, comment, news reporting, constitute copyright manner without his
teaching including multiple copies for infringement even if consent,
classroom use, scholarship, research, done without the notwithstanding
and similar purposes is not an consent of the the monopoly
infringement of copyright. copyright holder. granted to the
Decompilation, which is understood owner by the
here to be the reproduction of the code copyright.
and translation of the forms of the
computer program to achieve the inter- It is meant to
operability of an independently created balance the
computer program with other programs monopolies
may also constitute fair use. In enjoyed by the
determining whether the use made of a copyright owner
work in any particular case is fair use, the with the interests
factors to be considered shall include: (P- of the public and of
N-A-E) society.
(a) The Purpose and character of the These limitations, The fair use of
use, including whether such use is of however, should be copyrighted work
a commercial nature or is for non- interpreted in such a for criticism,
profit education purposes; way as to allow the news reporting,
(b) The Nature of the copyrighted work; work to be used in a teaching
(c) The Amount and substantiality of the manner which does (including
portion used in relation to the not conflict with the multiple copies
copyrighted work as a whole; and normal exploitation for classroom
(d) The Effect of the use upon the of the work and does use), research
potential market for or value of the not unreasonably and similar
copyrighted work. prejudice the right purposes is not
The fact that a work is unpublished holder’s legitimate an infringement of
shall not by itself bar a finding of fair use interest. copyright.
if such finding is made upon
consideration of all the above factors.

The above factors are formerly known as MORAL RIGHTS

the three-step test.
Moral Right recognizes certain non-
economic interests which an author may
continue to exercise even though he is no
Limitations on Fair Use (Section longer the owner of the copyright (or the
Copyright (Section 185) material object)
184)
Specific limitations General defense 1. Paternity Right
against To require that the authorship of
infringement the works be attributed to him, in
A privilege, in particular, the right that his name, as far
The law provides for persons other than as practicable, be indicated in a
limitations (“statutory the owner of the prominent way on the copies, and in
fair uses”) on the copyright, to use connection with the public use of his
economic rights of the copyrighted work; (IP Code, Sec.193.1)
authors comprising material in a

This right shall last during the
lifetime of the author and in perpetuity
after his death.
To restrain the use of his name
with respect to any work not of his own
creation or in a distorted version of his
work. (IP Code, Sec.193.4)
2. Right to Integrity (of the work)
To make any alterations of his
work prior to, or to withhold it from
publication (IP Code, Sec. 193.2)
To object to any distortion,
mutilation or other modification of, or other
derogatory action in relation to, his work
which would be prejudicial to his honor or
reputation (IP Code, Sec.193.3)
Moral right may be waived but the
authorship will always be there.
Term
Only right of attribution (IP Code,
Sec.193.1) is in perpetuity.
Other moral rights are coterminous with the
economic rights. (IP Code, Sec.198, as
amended)
DURATION OF COPYRIGHT
GENERAL RULE: For Original and
Derivative works – lifetime of the author plus
50 years
SPECIAL RULES:
1. Works of joint authorship - the
economic rights shall be protected
during the life of the last surviving author
and for 50 years after his death.
2. Anonymous or pseudonymous works
The copyright shall be protected for 50
years from the date on which the work
was first lawfully published
Where, before the expiration of the
said period, the author's identity is
revealed or is no longer in doubt, the
general rule shall apply
Intellectual Property Law ►►| 12
Such works if not published before
shall be protected for 50 years counted
from the making of the work.
3. Works of applied art - the protection
shall be for a period of 25 years from the
date of making.
4. Photographic works - the protection
shall be for 50 years from publication of
the work and, if unpublished, fifty 50
years from the making.
5. Audio-visual works including those
produced by process analogous to
photography or any process for making
audio-visual recordings - the term shall be
50 years from date of publication and, if
unpublished, from the date of making.
Term of Protection for Performances and
Sound Recordings
1. For performances not incorporated in
recordings, 50 years from the end of the
year in which the performance took
place; and
2. For sound or image and sound
recordings and for performances
incorporated therein, 50 years from the
end of the year in which the recording
took place.
Term of Protection for Broadcast
The term shall be 20 years from the date
the broadcast took place. The extended
term shall be applied only to old works with
subsisting protection under the prior law.
ABS-CBN v. Philippine Multi-Media
System
The must-carry rule falls under the
“limitations of copyright” provided under
Sec. 184 (h) of the IP Code, which states
that “the use made of a work by or under
the direction or control of the Government,
xxx, where such use is in the public interest
and is compatible with fair use”, shall not
constitute copyright infringement.

Filipino Society of Composers v.
Benjamin Tan
The word “perform” as used in the Act has
been applied to “One who plays a musical
composition on a piano, thereby producing
in the air sound waves w/c are heard as
music… and if the instrument he plays on is
a piano plus a broadcasting apparatus so
that waves are thrown out, not only upon
the air, but upon the other, then also he is
performing the musical composition.”
The playing of music in dine and dance
establishment which was paid for by the
public in purchases of food and drink
constituted “performance for profit” within a
Copyright Law.
Philippine Education Co. v. Sotto
Analyzing the language used, such news
items, editorial paragraphs and articles in
periodicals may be reproduced unless they
contain a notice that their publication is
reserved or unless they contain a notice of
copyright. In either event, the law specifically
provides that the source of the reproduction or
original reproduced shall be cited.
NBI-Microsoft Corp. v. Judy Hwang
These circumstances give rise to the
reasonable inference that respondents
mass-produced the CD-ROMs in question
without securing Microsoft’s prior
authorization.
INFRINGEMENT AND DEFENSES
IP Code as amended, Section 216
Infringement –
A person infringes a right protected under this
Act when one:
(a) Directly commits an infringement;
(b) Benefits from the infringing activity
of another person who commits an
infringement if the person benefiting
has been given notice of the
infringing activity and has the right
and ability to control the activities of
the other person;
Intellectual Property Law ►►| 13
(c) With knowledge of infringing activity,
induces, causes or materially
contributes to the infringing conduct
of another.
Vicarious liability (benefited)
Contributory infringement liability (provided
the environment/setting for infringement)
Primary infringement liability – (a)
Secondary infringement liability – (b) and (c)
IP Code as amended, Section 216.1
Remedies for Infringement –
Any person infringing a right protected
under this law shall be liable: x x x
(b) To pay to the copyright proprietor or
his assigns or heirs such actual
damages, including legal costs and other
expenses, as he may have incurred due
to the infringement as well as the profits
the infringer may have made due to such
infringement, and in proving profits the
plaintiff shall be required to prove sales
only and the defendant shall be required
to prove every element of cost which he
claims, or, in lieu of actual damages and
profits, such damages which to the court
shall appear to be just and shall not be
regarded as penalty: Provided, That the
amount of damages to be awarded shall
be doubled against any person who:
(i) Circumvents effective
technological measures; or
(ii) Having reasonable grounds to
know that it will induce, enable,
facilitate or conceal the
infringement, remove or alter any
electronic rights management
information from a copy of a work,
sound recording, or fixation of a
performance, or distribute, import
for distribution, broadcast, or
communicate to the public works
or copies of works without
authority, knowing that electronic
rights management information
has been removed or altered
without authority.

xxx
In cases of circumventions of Technological
Protection Measure and Rights Management
(TPMRM), the amount of damages shall be
doubled. (Double damages).
The circumventions are treated as
aggravating circumstances.
IP Code as amended, Sec.171.12
Technological measure means any
technology, device or component that, in
the normal course of its operation,
restricts acts in respect of a work,
performance or sound recording, which
are not authorized by the authors,
performers or producers of sound
recordings concerned or permitted by law
IP Code as amended, Sec.171.13
Rights management information means
information which identifies the work,
sound recording or performance; the
author of the work, producer of the sound
recording or performer of the
performance; the owner of any right in
the work, sound recording or
performance; or information about the
terms and conditions of the use of the
work, sound recording or performance;
and any number or code that represent
such information, when any of these
items is attached to a copy of the work,
sound recording or fixation of
performance or appears in conjunction
with the communication to the public of a
work, sound recording or performance.
IP Code as amended, Section 216.1
xxx
The copyright owner may elect, at any
time before final judgment is rendered, to
recover instead of actual damages and
profits, an award of statutory damages
for all infringements involved in an action
in a sum equivalent to the filing fee of the
infringement action but not less than Fifty
thousand pesos (Php50,000.00).
Intellectual Property Law ►►| 14
The effect of this provision is to facilitate in
the enforcement of copyrights especially in
cases where damages is not quantifiable.
IP Code, Section 217
Criminal Penalties –
Section 217. 1 Any person infringing any
right secured by provisions of Part IV of
this Act or aiding or abetting such
infringement shall be guilty of a crime
punishable by:
(a) Imprisonment of one (1) year
to three (3) years plus a fine
ranging from Fifty thousand
pesos (P50,000) to One hundred
fifty thousand pesos (P150,000)
for the first offense.
(b) Imprisonment of three (3)
years and one (1) day to six (6)
years plus a fine ranging from
One hundred fifty thousand
pesos (P150,000) to Five hundred
thousand pesos (P500,000) for
the second offense.
(c) Imprisonment of six (6) years
and one (1) day to nine (9) years
plus a fine ranging from Five
hundred thousand pesos
(P500,000) to One million five
hundred thousand pesos
(P1,500,000) for the third and
subsequent offenses.
(d) In all cases, subsidiary
imprisonment in cases of
insolvency.
217.2. In determining the number of years
of imprisonment and the amount of fine,
the court shall consider the value of the
infringing materials that the defendant
has produced or manufactured and the
damage that the copyright owner has
suffered by reason of the infringement.
217.3. Any person who at the time when
copyright subsists in a work has in his

possession an article which he knows, or
ought to know, to be an infringing copy of
the work for the purpose of:
(a) Selling, letting for hire, or by
way of trade offering or exposing
for sale, or hire, the article;
(b) Distributing the article for
purpose of trade, or for any other
purpose to an extent that will
prejudice the rights of the
copyright owner in the work; or
(c) Trade exhibit of the article in
public, shall be guilty of an
offense and shall be liable on
conviction to imprisonment and
fine as above mentioned.
Damages
No damages may be recovered under this
Act after 4 years from the time the cause of
action arose.
IP Code, as amended, Section 218
Affidavit Evidence –
218.1. In an action under this Chapter, an
affidavit made before a notary public by
or on behalf of the owner of the copyright
in any work or other subject matter and
stating that:
(a) At the time specified therein,
copyright subsisted in the work or
other subject matter;
(b) He or the person named therein is the
owner of the copyright; and
(c) The copy of the work or other subject
matter annexed thereto is a true copy
thereof.
The affidavit shall be admitted in
evidence in any proceedings under this
Chapter and shall be prima facie proof of
the matters therein stated until the
contrary is proved, and the court before
which such affidavit is produced shall
assume that the affidavit was made by or
on behalf of the owner of the copyright
218.2. In an action under this Chapter.
(a) Copyright shall be presumed to
subsist in the work or other subject
Intellectual Property Law ►►| 15
matter to which the action relates if
the defendant does not put in issue
the question whether copyright
subsists in the work or other subject
matter; and
(b) Where the subsistence of the
copyright is established, the plaintiff
shall be presumed to be the owner of
the copyright if he claims to be the
owner of the copyright and the
defendant does not put in issue the
question of his ownership.
(c) Where the defendant, without good
faith, puts in issue the questions of
whether copyright subsists in a work
or other subject matter to which the
action relates, or the ownership of
copyright in such work or subject
matter, thereby occasioning
unnecessary costs or delay in the
proceedings, the court may direct that
any costs to the defendant in respect
of the action shall not be allowed by
him and that any costs occasioned by
the defendant to other parties shall be
paid by him to such other parties.
Anton Piller Order
In the nature of civil search warrants in
order to prevent the removal or destruction
of evidence in copyright infringement cases.
Rule on Search and Seizure in Civil
Actions for Infringement of IPR (A.M. No.
02-1-06-SC)
This is our own version of the Anton Piller
order.
Section 1
Coverage –
This Rule shall govern the provisional
seizure and impounding of documents and
articles in pending and intended civil
actions for the purpose of preventing
infringement and preserving relevant
evidence in regard to alleged infringement
under Republic Act No. 8293, otherwise
known as the Intellectual property Code of
the Philippines, Article 50 of the Agreement
on Trade Related Aspects of intellectual
Property Rights, otherwise
 Intellectual Property Law ►►| 16

known as TRIPS and other related laws (a) give impartial advise to the
and international conventions. alleged infringing defendant,
expected adverse party or to the
Section 6 person in charge of the premises
Grounds for the issuance of the order – to be searched as to the meaning
Before the Order can be issued, the and coverage of the writ;
evidence proffered by the applicant and (b) attempt to achieve agreement on
personally evaluated by the judge must a suitable search procedure;
show that: (c) assess what documents or
(a) the applicant is the right holder or articles come within the terms of
his duly authorized the writ;
representative; (d) ensure the accuracy of the list of
(b) there is probable cause to believe documents and articles searched,
that the applicant's right is being inspected, copied or seized by the
infringed or that such sheriff;
infringement is imminent and (e) prepare his own report on the
there is a prima facie case for final search and seizure and verify and
relief against the alleged sign the return prepared by the
infringing defendant or expected sheriff; and
adverse party; (f) generally, assist in the proper
(c) damage, potential or actual, likely execution of the writ.
to be caused to the applicant is The Commissioner shall be a member of
irreparable; the Philippine Bar and of proven
(d) there is demonstrable risk of competence, integrity and probity. He
evidence that the alleged shall receive such reasonable
infringing defendant or expected compensation as may be determined by
adverse party may destroy, hide the court which can be charged as cost of
or remove the documents or suit.
articles before any application
inter partes can be made; and
(e) the documents and articles to be
seized constitute evidence of the Section 20
alleged infringing defendant's or Failure to file Complaint -
expected adverse party's The writ shall also, upon motion of the
infringing activity or that they expected adverse party, be set aside and
infringe upon the intellectual the seized documents and articles
property right of the applicant or returned to the expected adverse party if
that they are used or intended to no case is filed with the appropriate court
be used as means of infringing or authority within thirty-one (31) calendar
the applicant's intellectual days from the date of issuance of the writ.
property right.
Section 21
Section 12 Claims for damages -
Commissioner, duties, qualifications, and Where the writ is discharged on
fees - any of the grounds provided in this Rule,
The enforcement of the writ shall be or where it is found after trial that there
supervised by the independent has been no infringement or threat of
Commissioner appointed by the court. In infringement of an intellectual property
the performance of his duty, the right, the court. Upon motion of the
Commissioner shall: alleged infringing defendant or expected
adverse party and after due hearing, shall

order the applicant to compensate the
defendant or expected adverse party
upon the cash bond, surety bond or other
equivalent security for any injury or
damage the latter suffered by the
issuance and enforcement of the writ.
Should the damages exceed the amount
of the bond, the applicant shall be liable
for the payment of the excess.
When a complaint is already filed
in court, the motion shall be filed with the
same court during the trial or before
appeal is perfected or before judgment
becomes executory, with due notice to
the applicant, setting forth the facts
showing the defendant's right to
damage's and the amount thereof. The
award of damages shall be included in
the judgment in the main case.
Where no complaint is filed
against the expected adverse party, the
motion shall be filed with the court which
issued the writ. In such a case, the court
shall set the motion for summary hearing
and immediately determine the expected
adverse party's right to damages.
A judgment in favor of the
applicant in its principal claim, should not
necessarily bar the alleged infringing
defendant from recovering damages
where he suffered losses by reason of the
wrongful issuance or enforcement of the
writ.
The damages provided for in this
section shall be independent from the
damages claimed by the defendant in his
counterclaim.
Electronic Commerce Act (RA 8792)
Section 3
Objective –
This Act aims to facilitate domestic and
international dealings, transactions,
arrangements agreements, contracts and
exchanges and storage of information
through the utilization of electronic,
optical and similar medium, mode
instrumentality and technology to
recognize the authenticity and reliability
of electronic data messages or electronic
documents related to such activities and
Intellectual Property Law ►►| 17
to promote the universal use of electronic
transactions in the government and by
the general public.
Section 4
Sphere of Application –
This Act shall apply to any kind of
electronic document used in the context
of commercial and non-commercial
activities to include domestic and
international dealings, transactions,
arrangements, agreements contracts and
exchanges and storage of information.
Section 33(b)
Penalties –
Piracy or the unauthorized copying,
reproduction, dissemination, or
distribution, importation, use, removal,
alteration, substitution, modification,
storage, uploading, downloading,
communication, making available to the
public, or broadcasting of protected
material, electronic signature or
copyrighted works including legally
protected sound recording or phonograms
or information material on protected works,
through the use of telecommunication
networks, such as, but not limited to, the
internet, in a manner that infringes
intellectual property rights shall be
punished by a minimum fine of One
Hundred Thousand pesos (P
100,000.00) and a maximum
commensurate to the damage incurred
and a mandatory imprisonment of six (6)
months to three (3) years.
EXPLOITATION OF RIGHTS
Commercialization of Copyright
(Assignment and Licensing)
Copyright may be assigned in whole or in
part.
IP Code, Section 181
Material Object -
The copyright is distinct from the property
in the material object subject to it.
Consequently, the transfer or assignment

of the copyright shall not itself constitute
a transfer of the material object. Nor shall
a transfer or assignment of the sole copy
or of one or several copies of the work
imply transfer or assignment of the
copyright.
Recordation
IP Code, Section 182
Filing of Assignment or License –
An assignment or exclusive license may
be filed in duplicate with the National
Library upon payment of the prescribed
fee for registration in books and records
kept for the purpose. Upon recording, a
copy of the instrument shall be, returned
to the sender with a notation of the fact of
record. Notice of the record shall be
published in the IPO Gazette.
Collecting Societies
IP Code, Section 183
Designation of Society –
The owners of copyright and related
rights or their heirs may designate a
society of artists, writers, composers and
other right-holders to collectively manage
their economic or moral rights on their
behalf. For the said societies to enforce
the rights of their members, they shall
first secure the necessary accreditation
form the Intellectual Property Office.
Note: Read Secs. 186-189 in the Codal
20th Century Fox v. CA
Essence of copyright infringement is the
similarity of at least substantial similarity of
the purported pirated works to the
copyrighted work. Applicant must present to
the court the copyrighted films to compare
them with the purchased evidence of the
video tapes allegedly pirated to determine
whether the latter is an unauthorized
reproduction of the former.
Intellectual Property Law ►►| 18
People v. Ramos
The Copyright Law provides a two-year
period of prescription for acts punishable
thereunder, hence the four-year period of
prescription in Act No. 3326 is not
applicable for Copyright Law violations.
Serrano Laktaw v. Paglinawan
Where one in publishing a Spanish-Tagalog
dictionary has but copied the equivalents,
definitions and different meanings given in
another's Spanish-Tagalog dictionary,
although making some additions of his own
and some unimportant changes in the
examples to illustrate the meanings of the
words, such as substituting "Tayabas" for
"Bulacan" in the expression "Voy a Bulacan"
(I am going to Bulacan), it is evident that he
merely reproduced the dictionary of the
other author in violation of the Law of
January 10, 1879, on Intellectual Property.
Columbia Pictures Inc. v. CA
It is our considered view that the 20th Century
Fox ruling cannot be retroactively applied to
the instant case to justify the quashal of
Search Warrant No. 87–053. Herein
petitioners’ consistent position that the order
of the lower court of September 5, 1988
denying therein defendant’s motion to lift the
order of search warrant was properly issued,
there having been satisfactory compliance
with the then prevailing standards under the
law for determination of probable cause, is
indeed well taken. The lower court could not
possibly have expected more evidence from
petitioners in their application for a search
warrant other than what the law and
jurisprudence, then existing and judicially
accepted, required with respect to the finding
of probable cause.
LAW ON TRADEMARKS AND
UNFAIR COMPETITION
To confirm the existing Philippine Intellectual
property regime with the TRIPS Agreement,
the new IP Code was enacted in 1998.
Certain changes were introduced in the

trademark law system to give substance to
the country’s accession to the TRIPS
Agreement.
HISTORY
During the 19th century, when a consumer
wanted to purchase particular goods, he had
to rely on the expertise of the storeowner for
advice as to the origin of the goods and
quality. In effect, it is the advice/expertise of
the storeowner that sells the product.
The Trademark register was first introduced
in the UK in 1875 – to help, among others,
the consumer in selecting or choosing the
products he wants to purchase. This is in
response to the growth in trade involving a
variety of UK goods.
At present, it is said that reputation/goodwill
of a trademark (the origin) that sells
products to the consumer – rather than the
expertise of the shopkeeper.
DEFINITION
A "trademark" is defined under R.A. 166,
the Trademark Law, as including "any word,
name, symbol, emblem, sign or device or
any combination thereof adopted and used
by a manufacturer or merchant to identify
his goods and distinguish them from those
manufactured, sold or dealt in by others."
(Mipuri v. Court of Appeals, 318 SCRA 516,
1999).
Mark
IP Code, Section 121.1
"Mark" means any visible sign capable of
distinguishing the goods (trademark) or
services (service mark) of an enterprise
and shall include a stamped or marked
container of goods.
METHODS OF PROTECTION
1. Registration
2. Opposition
3. Cancellation
Intellectual Property Law ►►| 19
Others
4. Maintenance of Civil and Criminal
Actions for Infringement (IP Code,
Sections 155-159)
5. Recordal of the COR in the Bureau of
Customs (to refuse entry of infringing
goods)
INTERNATIONAL AGREEMENTS
TRADEMARKS
1. Paris Convention on the Protection of
Industrial Property
- Art. 6bis (protection of well-known
marks)
2. Madrid Protocol
- National treatment
- Priority date: date in filing with the
WIPO also considered date of filing
in the country of application
COLLECTIVE MARKS
IP Code, Section 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.
Example: common mark on Swiss products
ACQUIRING A MARK
IP Code, Section 122
How marks are acquired? -
The rights in a mark shall be acquired
through a registration made validly in
accordance with the provisions of the law.
Can you use a mark before –
- The application?
- The registration?
YES to both! All you need to present is
intent to use.

Note:
IP Code, Section 124.2
The applicant or the registrant shall file a
declaration of actual use of the mark with
evidence to that effect, as prescribed by
the Regulations within three (3) years
from the filing date of the application.
Otherwise, the application shall be
refused or the mark shall be removed
from the Register by the Director.
FUNCTION
a. Indicate origin
b. Guarantee quality
c. Advertising
d. Investment
REGISTRABILITY OF MARKS
Examination of the trademark application
based on absolute and relative grounds:
Absolute
Tests: Does it meet the definition of
a mark? Is it distinctive?
Relative
Test: Is it identical or confusingly
similar to another mark?
IP Code, Section 123
Registrability –
123.1. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or
scandalous matter, or matter which
may disparage or falsely suggest a
connection with persons, living or
dead, institutions, beliefs, or national
symbols, or bring them into contempt
or disrepute;
(b) Consists of the flag or coat of arms
or other insignia of the Philippines or
any of its political subdivisions, or of
any foreign nation, or any simulation
thereof;
(c) Consists of a name, portrait or
signature identifying a particular living
individual except by his written
consent, or the name, signature, or
portrait of a deceased President of the
Intellectual Property Law ►►| 20
Philippines, during the life of his
widow, if any, except by written
consent of the widow;
(d) Is identical with a registered mark
belonging to a different proprietor or
a mark with an earlier filing or priority
date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or
services, or
(iii) If it nearly resembles such a
mark as to be likely to deceive
or cause confusion;
Q: In Dermaline Inc v. Myra
Pharmaceutical Inc., were the competing
marks used in closely related goods?
A: Yes. The competing trademarks of
Dermaline and Myra were used on closely
related goods. In this case the Supreme
Court held that even though the products of
Dermaline and Myra belong to different
classifications in their application for
trademark registration before the IPO, the
purchasing public may still associate Myra
with Dermaline especially considering that
both classifications pertain to treatments
for the skin.
Dermaline, Inc. v. Myra Pharmaceutical
Inc.
Thus, the public may mistakenly think that
Dermaline is connected to or associated
with Myra, such that, considering the current
proliferation of health and beauty products
in the market, the purchasers would likely
be misled that Myra has already expanded
its business through Dermaline from merely
carrying pharmaceutical topical applications
for the skin to health and beauty services.
Q: In Birkenstock v. Phil Shoe Expo
Marketing Corporation, why were the
registrations of petitioner Birkenstock
approved despite the earlier registration
issued to respondent Philippine Shoe
Expo for the same identical mark?
A: The registrations of petitioner Birkenstock
were approved despite the earlier

registration issued to Phil Shoe Expo for the
same identical mark because of two reasons:
First, Phil Shoe Expo failed to file its tenth
year DAU (Declaration of Actual Use) of the
mark resulting in its automatic cancellation by
virtue of Sec. 12 RA 166. In effect, Phil Shoe
Expo abandoned all its rights over the mark.
Second, and most important, is that
Birkenstock was able to establish its true and
lawful ownership over the mark
“BIRKENSTOCK”. The Court stated that to
be an owner, Section 2-A of RA 166 does
not require that the actual use of a
trademark must be within the Philippines.
IP Code, Section 123.1
(e) Is identical with, or confusingly similar
to, or constitutes a translation of a mark
which is considered by the competent
authority of the Philippines to be well-
known internationally and in the
Philippines, whether or not it is
registered here, as being already the
mark of a person other than the
applicant for registration, and used for
identical or similar goods or services:
Provided, That in determining whether a
mark is well-known, account shall be
taken of the knowledge of the relevant
sector of the public, rather than of the
public at large, including knowledge in
the Philippines which has been
obtained as a result of the promotion of
the mark;
Q: In the case of Ecole De Cuisine v.
Renaud Cointreau, Is Le Cordon Bleu a
well-known mark in the Philippines?
Ecole De Cuisine Manille v. Renaud
Cointreau
It is thus clear that at the time Ecole started
using the subject mark, the same was
already being used by Cointreau, albeit
abroad, of which Ecole’s directress was fully
aware, being an alumna of the latter’s
culinary school in Paris, France. Hence,
Ecole cannot claim any tinge of ownership
Intellectual Property Law ►►| 21
whatsoever over the subject mark as
Cointreau is the true and lawful owner
thereof. As such, the IPO Director
General and the CA were correct in
declaring Cointreau as the true and
lawful owner of the subject mark and as
such, is entitled to have the same
registered under its name.
Section 123.1
(f) Is identical with, or confusingly similar
to, or constitutes a translation of a mark
considered well-known in accordance
with the preceding paragraph, which is
registered in the Philippines with respect
to goods or services which are not
similar to those with respect to which
registration is applied for: Provided, That
use of the mark in relation to those goods
or services would indicate a connection
between those goods or services, and the
owner of the registered mark: Provided
further, That the interests of the owner of
the registered mark are likely to be
damaged by such use;
Q: In 246 Corporation v. Daway re: Roles
and Rolex Music Lounge: is determining
infringement a question of fact?
246 Corporation v. Daway
In the case at bar, the Court of Appeals did
not err in finding that no abuse of discretion
could be ascribed to the trial courts denial of
petitioner’s motion for preliminary hearing
on its affirmative defenses with motion to
dismiss. The issue of whether or not a
trademark infringement exists, is a
question of fact that could best be
determined by the trial court.
IP Code, Section 123.1 (g)
Is likely to mislead the public, particularly
as to the nature, quality, characteristics
or geographical origin of the goods or
services;

Q: In Shang Properties v. St. Francis, re:
“St. Francis”, is the mark a geographical
name hence not capable of registration?
Shang Properties v. St. Francis
What is the criteria for determining whether
a mark describes “geographical origin” of
the goods/services, hence not registrable?
“…In order to determine whether or not the
geographic term in question is descriptively
used, the following question is relevant: (1)
Is the mark the name of the place or
region from which the goods actually
come? If the answer is yes, then the
geographic term is probably used in a
descriptive sense, and secondary
meaning is required for protection.”
Shang Properties v. St. Francis
In the US case of Great Southern Bank v.
First Southern Bank, descriptive
geographical terms are in the ‘public
domain’ in the sense that every seller
should have the right to inform customers of
the geographical origin of his goods. A
‘geographically descriptive term’ is any noun
or adjective that designates geographical
location and would tend to be regarded by
buyers as descriptive of the geographic
location of origin of the goods or services. A
geographically descriptive term can indicate
any geographic location on earth, such as
continents, nations, regions, states, cities,
streets and addresses, areas of cities,
rivers, and any other location referred to by
a recognized name.
The word mark “St. Francis” is a geographic
name that is not capable of registration by
express provision of Section 123.1(j) of the IP
Code. St. Francis Development Corp. could
only have acquired exclusive right to the word
mark “St. Francis” if it was proven that its use
of the mark has acquired secondary meaning.
Under Section 123.2 specific requirements
have to be met in order to conclude that a
geographically-descriptive mark has acquired
secondary meaning, to wit: (a) the secondary
meaning must have arisen as a result of
substantial
Intellectual Property Law ►►| 22
commercial use of a mark in the
Philippines; (b) such use must result in
the distinctiveness of the mark insofar
as the goods or the products Shang
Properties Realty Corporation are
concerned; and (c) proof of substantially
exclusive and continuous commercial use in
the Philippines for five (5) years before the
date on which the claim of distinctiveness is
made.
In this case, records would reveal that while
it is true that respondent had been using the
mark “ST. FRANCIS” since 1992, its use
thereof has been merely confined to its
realty projects within the Ortigas Center, as
specifically mentioned. As its use of the
mark is clearly limited to a certain locality, it
cannot be said that there was substantial
commercial use of the same recognized all
throughout the country. Neither is there any
showing of a mental recognition in buyers’
and potential buyers’ minds that products
connected with the mark “ST. FRANCIS”
are associated with the same source — that
is, the enterprise of respondent. Thus,
absent any showing that there exists a clear
goods/service-association between the
realty projects located in the aforesaid area
and herein respondent as the developer
thereof, the latter cannot be said to have
acquired a secondary meaning as to its use
of the “ST. FRANCIS” mark.
IP Code, Section 123.1
(h) Consists exclusively of signs that are
generic for the goods or services that
they seek to identify;
(i) Consists exclusively of signs or of
indications that have become customary
or usual to designate the goods or
services in everyday language or in bona
fide and established trade practice;
(j) Consists exclusively of signs or of
indications that may serve in trade to
designate the kind, quality, quantity,
intended purpose, value, geographical
origin, time or production of the goods or

rendering of the services, or other
characteristics of the goods or services;
Q: In Society Des Produits Nestle v. CA,
re Master, if neither a generic nor
descriptive, what kind of mark is it?
A: "MASTER" is a suggestive term brought
about by the advertising scheme of Nestle.
Suggestive terms are those which, in the
phraseology of one court, require
"imagination, thought and perception to
reach a conclusion as to the nature of the
goods." Such terms, "which subtly connote
something about the product," are eligible
for protection in the absence of secondary
meaning. While suggestive marks are
capable of shedding "some light" upon
certain characteristics of the goods or
services in dispute, they nevertheless
involve "an element of incongruity,"
"figurativeness," or " imaginative effort on
the part of the observer."
See: IP Code, Section 123.1(j)
Societe Des Produits Nestle v. CA
Q: What trademark function was
illustrated in the case?
A: The trademark function illustrated in this
case is that trademarks advertise the
products they symbolize. This can be
gleaned from the fact that Robert Jaworski
and Atty. Ric Puno, Jr., the personalities
engaged to promote the product, are given
the titles Master of the Game and Master of
the Talk Show, respectively. In due time,
because of these advertising schemes the
mind of the buying public had come to learn
to associate the word MASTER with the
opposer’s goods.
Q: Did respondent infringe a valid mark?
A: There is still an infringement of the mark
MASTER since the use of the same or similar
mark is likely to cause mistake or confusion or
even deceive ordinary purchasers. MASTER
is not an invalid trademark or un-registrable
mark under Sec. 123.1 (j) of the IP Code since
it does not designate the characteristics of the
goods. MASTER is merely a suggestive term
which still require imagination, thought and
perception to reach
Intellectual Property Law ►►| 23
a conclusion as to the nature of the goods.
Suggestive terms are eligible for trademark
protection under the law.
IP Code, Section 123.1
(k) Consists of shapes that may be
necessitated by technical factors or by
the nature of the goods themselves or
factors that affect their intrinsic value;
(l) Consists of color alone, unless defined
by a given form; or
Doctrine of Secondary Meaning
It only applies to (j)Descriptive; (k)Shapes;
(l) Color;
Note: Lyceum v. CA, re: Lyceum
Doctrine of Secondary meaning is a word of
phrase originally incapable of exclusive
appropriation, might nevertheless have been
used so long and so exclusively by one
producer with reference to his article that, in
trade and to that branch of the purchasing
public, the word or phrase has come to mean
that the article was his product.
Lyceum of the Philippines has not gained
exclusive use of “Lyceum” by long passage
of time. The number alone of the private
respondents suggests strongly that the use
of Lyceum has not been attended with the
exclusivity essential for the applicability of
the doctrine. It may be noted that one of the
respondents – Western Pangasinan
Lyceum used such term 17 years before the
petitioner registered with the SEC.
Moreover, there may be other schools using
the name but not registered with the SEC
because they have not adopted the
corporate form of organization.
Ang v. Teodoro
Teodoro established a shoe and slipper
manufacturing business using the trademark
and tradename “Ang Tibay”. The business
became successful and “Ang Tibay” became
famous throughout the country. Ang
registered the trademark “Ang Tibay” for her
pants and shirts business. One year later

Teodoro registered “Ang Tibay” as trademark.
Ang filed a complaint. Court held that “Ang
Tibay” is not a descriptive word and that even
granting that it was a descriptive word,
Teodoro’s long and exclusive use of the mark
entitled him to registration under the doctrine
of secondary meaning.
Q: Why was it not necessary for the
Court to discuss the concept of
secondary meaning?
A: It was not necessary for the Court to
discuss the concept of secondary meaning
because it has already ruled that the phrase
“Ang Tibay” is not a descriptive word within
the meaning of the Trademark Law. Hence
it could be registered as trademark. The
Doctrine of Secondary Meaning only applies
when the subject mark is descriptive.
The Doctrine of Secondary Meaning is to
the effect that a word or phrase originally
incapable of exclusive appropriation
because geographically or otherwise
descriptive, might nevertheless be
registered because of long and exclusive
use of said phrase with reference to
products and business as to acquire a
proprietary connotation.
Maintenance
IP Code, Section 123.2
As regards signs or devices mentioned in
paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign
or device which has become distinctive in
relation to the goods for which
registration is requested as a result of the
use that have been made of it in
commerce in the Philippines. The Office
may accept as prima facie evidence that
the mark has become distinctive, as used
in connection with the applicant's goods
or services in commerce, proof of
substantially exclusive and continuous
use thereof by the applicant in commerce
in the Philippines for five (5) years before
the date on which the claim of
distinctiveness is made.
Intellectual Property Law ►►| 24
WELL-KNOWN MARK
La Chemise Lacoste v. Fernandez
Pursuant to Treaty obligation, the Ministry of
Trade directed the Director of the Patents
Office directing the latter: xxx xxx xxx
... to reject all pending applications for
Philippine registration of signature and other
world famous trademarks by applicants
other than its original owners or users.
The conflicting claims over internationally
known trademarks involve such name
brands as Lacoste, Jordache, Gloria
Vanderbilt, Sasson, Fila, Pierre Cardin,
Gucci, Christian Dior, Oscar de la Renta,
Calvin Klein, Givenchy, Ralph Lauren,
Geoffrey Beene, Lanvin and Ted Lapidus.
… where warranted, Philippine registrants
of such trademarks should be asked to
surrender their certificates of registration, if
any, to avoid suits for damages and other
legal action by the trademarks' foreign or
local owners or original users.
TEST TO DETERMINE CONFUSING
SIMILARITY
1. Dominancy Test
The Dominancy Test focuses on the
similarity of the prevalent features of the
competing trademarks that might cause
confusion or deception.
2. Totality or Holistic Test
Holistic Test entails a consideration of the
entirety of the marks as applied to the
products, including labels and packaging,
in determining confusing similarity. The
scrutinizing eye of the observer must
focus not only on the predominant words
but also on the other features appearing in
both labels so that a conclusion may be
drawn as to whether one is confusingly
similar to the other.

DOMINANCY TEST v. HOLISTIC TEST
Etepha v. Directory of Patents
Westmont Pharmaceuticals sought the
registration of its product ATUSSIN. Etepha
opposed the application for registration on the
ground that it is confusingly similar to its
product PERTUSSIN which has already been
registered and also serves as a treatment for
cough. Court held that by going into the whole
of the two marks, it could hardly be said that
they are similar. The appearance of the labels
were different, and the marks do not sound
alike. Moreover, it has been a practice by
pharma companies to use words suggestive
of the ailments they treat in naming their
products. TUSSIS is the Latin term for cough.
To add, the Court also held that the possibility
of confusion is even made more remote
because it is the practice of intending buyers
to first secure a prescription from the doctor.
Q: What test was used in the case?
The court used the Holistic Test. A practical
approach to the problem of similarity or
dissimilarity is to go into the whole of the
two trademarks pictured in their manner of
display. The trademark complained of
should be compared and contrasted with
the purchaser’s memory (not in
juxtaposition) of the trademark said to be
infringed. Some such factors as “sound;
appearance; form, style, shape, size or
format; color; ideas connoted by marks; the
meaning, spelling, and pronunciation of
words used and the setting in which the
words appears” may be considered.
Q: Identify a distinctive consumer
practice when purchasing medicines.
An intending buyer must have to go first to a
licensed doctor of medicine; he receives
instructions as to what to purchase; he reads
the doctor’s prescription; he knows what he is
to buy. He is not of the incautious, unwary,
unobservant or unsuspecting type; he
examines the product sold to him; he checks
to find out whether it conforms to the medical
Intellectual Property Law ►►| 25
prescription. The common trade channel is
the pharmacy or the drugstore.
Note: In this case, marks “ATUSSIN” and
“PERTUSSIN” were not said to be similar.
Their labels were written differently. As
they appear on the respective labels,
these words are presented to the public
in different styles of writing and methods
of design. The horizontal plain, block
letters of Atussin and the diagonally and
artistically upward writing of Pertussin
leave distinct visual impressions.
They do not sound alike. There is not
much phonetic similarity between the
two.
Emerald Garment Manufacturing v. CA
H.D. Lee & Co. is a US Corp which uses the
trademark “LEE” on its products such as pants
and jeans. Emerald Garment is a domestic
corporation which is also engaged in the
manufacture and selling of pants and jeans
using the trademark “STYLISTIC MR. LEE”.
H.D. Lee applied for the cancellation of the
trademark registration of “STYLISTIC MR.
LEE” on the ground that it is confusingly
similar to its trademark “LEE”. The Court held
that the two trademarks are dissimilar viewed
as a whole and by considering that consumers
are less likely to be deceived or misled by
either of the two marks. The Court also noted
that under RA 166 a personal name or
surname is not a registrable mark. Hence the
action for infringement against Emerald
Garment must necessarily fail.
Explain how the Court resolved the case
in “two ways.”
1. First, by determining whether there is
colorable imitation of the mark “LEE” in
the subsequent mark “STYLISTIC
MR.LEE”.
In determining whether colorable
imitation exists, jurisprudence has
developed two kinds of tests—the
Dominancy Test applied in Asia
Brewery, Inc. v. Court of Appeals and
other cases and the Holistic Test

developed in Del Monte Corporation
v. Court of Appeals and its
proponent cases.
Petitioner’s trademark is the whole
“STYLISTIC MR. LEE.” Although on
its label the word “LEE” is prominent,
the trademark should be considered
as a whole and not piecemeal. The
dissimilarities between the two marks
become conspicuous, noticeable and
substantial enough to matter
especially in the light of the following
variables that must be factored in.
Purchaser is more cautious and
discrimination in their purchase of
maong pants because they are
expensive.
The average Filipino consumer buys
his jeans by brand (just like in
purchase of beers).
The test of fraudulent simulation is
to be found in the likelihood of the
deception of some persons in some
measure acquainted with an
established design and desirous of
purchasing the commodity with which
that design has been associated. The
simulation, in order to be
objectionable, must be such as
appears likely to mislead the
ordinary intelligent buyer who has a
need to supply and is familiar with the
article that he seeks to purchase.
2. Second, by considering what marks
could be and could not be registered.
A personal name or surname may not be
monopolized as a trademark or tradename
as against others of the same name or
surname under Sec. 4 of R.A.
No.166. “LEE” is primarily a surname.
Private respondent cannot, therefore,
acquire exclusive ownership over and
singular use of said term.
Asia Brewery v. CA
San Miguel Corp (SMC) filed a case for
infringement and unfair competition against
Asia Brewery Inc (ABI) in connection with the
ABI’s BEER PALE PILSEN which competes
Intellectual Property Law ►►| 26
with its SAN MIGUEL PALE PILSEN. SC
RULING: (applying the dominancy test) The
trial court perceptively observed that the word
“BEER” does not appear in SMC’s trademark,
just as the words “SAN MIGUEL” do not
appear in ABI’s trademark. Hence, there is
absolutely no similarity in the dominant
features of both trademarks.
Neither in sound, spelling or appearance
can BEER PALE PILSEN be said to be
confusingly similar to SAN MIGUEL PALE
PILSEN. There are other dissimilarities like
bottle appearance, slogan and substantial
price difference. The fact that the words
pale pilsen are part of ABI’s trademark does
not constitute an infringement of SMC’s
trademark: SAN MIGUEL PALE PILSEN, for
“pale pilsen” are generic words descriptive
of the color (“pale”), of a type of beer
(“pilsen”), which is a light bohemian beer
with a strong hops flavor that originated in
the City of Pilsen in Czechoslovakia and
became famous in the Middle Ages.
HENCE NO INFRINGEMENT
When as in this case, the names of the
competing products are clearly different and
their respective sources are prominently
printed on the label and on other parts of the
bottle, mere similarity in the shape and size of
the container and label, does not constitute
unfair competition. Stenie bottle is a standard
for beer and universally used. No proof on
record that BEER PALE PILSEN is being
passed off as SAN MIGUEL PALE
PILSEN. HENCE NO UNFAIR
COMPETITION.
What is trade dress?
A trade dress refers to the characteristics of
the general appearance of a product.
Del Monte Corporation v. CA
Del Monte is a foreign corp not registered in
the PH but it has authorized PhilPack as its
representative to apply for trademark
registration of its name DEL MONTE and its
bottle configuration. Among the products in
the case is catsup PhilPack registered, in
behalf of Del Monte, the bottle configuration

and the mark DEL MONTE. Sunshine Sauce
Manufacturing is a domestic corp which sells
various sauces like the Sunshine fruit catsup.
It was discovered that Sunshine uses the
bottles of Del Monte which it bought from junk
shops in its catsup business. Del Monte and
PhilPack sued for infringement and unfair
competition. The court held that there was
infringement and unfair competition. There
was infringement because of the similarities in
the marks. There was unfair competition
because Sunshine used the bottles of DEL
MONTE even after the latter made a demand
for the former to stop.
What test was used in the case?
The test used was the holistic test. To
determine whether a trademark has been
infringed, we must consider the mark as a
whole and not as dissected.
What is the finding of the Court:
infringement or unfair competition?
Sunshine’s label is an infringement of the
Del Monte’s trademark, law and equity call
for the cancellation of the private
respondent’s registration and withdrawal of
all its products bearing the questioned label
from the market.
The predominant colors used in the Del
Monte label are green and red-orange, the
same with Sunshine. The word “catsup” in
both bottles is printed in white and the style
of the print/letter is the same. Although the
logo of Sunshine is not a tomato, the figure
nevertheless approximates that of a tomato.
With regard to the use of Del Monte’s bottle,
the same constitutes unfair competition;
hence, the respondent should be
permanently enjoined from the use of such
bottles.
Fruit of the Loom v. CA
Fruit of the Loom Inc. is the registrant of the
mark FRUIT OF THE LOOM mark and is
engaged in the business of selling
Intellectual Property Law ►►| 27
undergarments. Respondent General
Garments was the registrant of FRUIT OF
EVE mark also dealing with women’s
panties, pajamas etc. Fruit of the Loom Inc.
filed an action for infringement and unfair
competition against General Garments
claiming that the two marks are confusingly
similar The Court held that there was no
confusing similarity between the two there
were in fact glairing dissimilarities as to
appearance to the extent that the purchaser
would not be likely to be confused with the
two products.
What is the dominant feature of the
competing marks?
There was no common dominant features
between the competing marks. In this case
the court ruled that the similar word FRUIT
between the two marks does not even
constitute dominant feature. In the
trademarks FRUIT OF THE LOOM and
FRUIT FOR EVE, the lone similar word is
FRUIT. WE agree with the respondent court
that by mere pronouncing the two marks, it
could hardly be said that it will provoke a
confusion, as to mistake one for the other.
Standing by itself, FRUIT OF THE LOOM is
wholly different from FRUIT FOR EVE. The
dominant feature of both trademarks is
NOT the word FRUIT for even in the
printing of the trademark in both hang tags,
the word FRUIT is not at all made dominant
over the other words.
What test was used in the case?
No express mention but probably the
dominancy test because the Court tried to
determine the dominant features of the
marks
Berris Agricultural Co., Inc. v. Norvy
Abyadang
Abdayang applied for the registration of its
mark “NS D-10 PLUS” for use in connection
with fungicide. Berris Agricultural opposed the
application for registration on the ground that
it is confusingly similar to its registered mark
“D-10 80 WP” for the same product and

the same active ingredient. The Court ruled
that the two marks are confusingly similar
applying both the dominancy and holistic
tests.
How do you overcome prima facie
presumptions brought about by the
registration of a mark?
The prima facie presumption brought about by
the registration of a mark may be challenged
and overcome, in an appropriate action, by
proof of the nullity of the registration or of non-
use of the mark, except when excused.
Moreover, the presumption may likewise be
defeated by evidence of prior use by another
person, i.e., it will controvert a claim of legal
appropriation or of ownership based on
registration by a subsequent user. This is
because a trademark is a creation of use and
belongs to one who first used it in trade or
commerce.
What test was used in the case?
Both dominancy test and holistic test.
Applying the Dominancy Test, it cannot be
gainsaid that Abyadang’s “NS D-10 PLUS”
is similar to Berris’ “D-10 80 WP,” that
confusion or mistake is more likely to occur.
Undeniably, both marks pertain to the same
type of goods—fungicide with 80%
Mancozeb as an active ingredient and used
for the same group of fruits, crops,
vegetables, and ornamental plants, using
the same dosage and manner of
application. They also belong to the same
classification of goods under R.A. No. 8293.
Both depictions of “D-10,” as found in both
marks, are similar in size, such that this
portion is what catches the eye of the
purchaser. Undeniably, the likelihood of
confusion is present.
This likelihood of confusion and mistake is
made more manifest when the Holistic
Test is applied, taking into consideration the
packaging, for both use the same type of
material (foil type) and have identical color
Intellectual Property Law ►►| 28
schemes (red, green, and white); and the
marks are both predominantly red in color,
with the same phrase “BROAD SPECTRUM
FUNGICIDE” written underneath.
INTRODUCTION TO THE SYSTEM OF
REGISTRATION
WHO MAY APPLY?
Rules and Regulations on Trademarks, Rule 300
The Applicant –
(a) Applicant may be a person or juridical
person.
(b) Unless modified by this Chapter, all
applications for a mark should be in the
name of the applicant(s) who may sign
the application. If there are more than one
applicant, all of them should be named as
applicant but anyone may sign the
application for and in behalf of all the
applicants.
Rules and Regulations on Trademarks, Rule 303
Applicant may be represented by attorney.
—
The owner of a mark may file and prosecute
his own application for registration, or he
may be represented by any attorney or
other person authorized to practice in such
matters by the Office. The Office shall not
aid in the selection of an attorney or agent
other than the furnishing of the list of
Attorneys or agents authorized to practice
before the Office.
Note: Prior use of a mark (upon trademark
filing) not required.
Documents/Information Necessary to
Support a Philippine Trademark
Application:
1. Executed Trademark Application
The applicant must indicate the names of
the goods or services for which the
registration is sought, grouped according
to the Nice Classification. There are
 Intellectual Property Law ►►| 29

thirty-four (34) classes of goods and eight Applications before publication are
(8) classes of businesses and services. confidential.
2. Formal Drawing of the Mark;
3. Certified Copy of the Home/Foreign After Publication
Application (IP Code, Section 131) Publication is for opposition purposes.
NOTE: This document is required
only for applications claiming Public is given an opportunity to object the
Convention priority and must be filed application.
within six (6) months from date of Third party may commence an Opposition
earliest filing. (Rule 203) Proceeding (both parties to submit evidence
to support claims)

FOREIGN APPLICANTS After the proceedings, the application is

IP Code, Section 3 either approved or disapproved.
International Conventions and
Reciprocity. —
Any person who is a national or who is Trademark Application Procedure
domiciled or has a real and effective Overview
industrial establishment in a country
which is a party to any convention, treaty
or agreement relating to intellectual Filing of an
Application
property rights or the repression of unfair
competition, to which the Philippines is
also a party, or extends reciprocal rights
to nationals of the Philippines by law, Search &
Examination
shall be entitled to benefits to the extent
necessary to give effect to any provision
of such convention, treaty or reciprocal
Issuance of
law, in addition to the rights to which any Registrability
owner of an intellectual property right is Report
otherwise entitled by this Act

Response
PROCEDURE
PROCEDURE FOR REGISTRATION
(IP Code, Sections 127-132) Recommendation
Rejection
for Allowance
Prior to publication
Ex-Parte Proceedings or law contest
between the examiner (representing public
interest) and the applicant. Publication

The examiner determines whether the mark

is registrable (formal and substantive Issuance of the
requirements) Certificate of
Registration

If Yes, Director will commend to the Director

of the Bureau of Trademarks the publication Second
of the mark Publication

FILING DATE
IP Code, Section 127
Filing Date –
Section 127.1
Requirements. —
The filing date of an application shall be
the date on which the Office received the
following indications and elements in
English or Filipino:
(a) An express or implicit indication that
the registration of a mark is sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the
applicant or his representative, if any;
(d) A reproduction of the mark whose
registration is sought; and
(e) The list of the goods or services for
which the registration is sought.
127.2. No filing date shall be accorded until
the required fee is paid.
PRIORITY RIGHT
IP Code, Section 131.2
No registration of a mark in the
Philippines by a person described in this
section shall be granted until such mark
has been registered in the country of
origin of the applicant.
CERTIFICATES OF REGISTRATION
IP Code, Section 138
Certificates of Registration –
A certificate of registration of a mark shall
be prima facie evidence of the validity of
the registration, the registrant's
ownership of the mark, and of the
registrant's exclusive right to use the
same in connection with the goods or
services and those that are related
thereto specified in the certificate.
RIGHTS CONFERRED
IP Code, Section 147.1
Rights Conferred –
The owner of a registered mark shall have
the exclusive right to prevent all third
parties not having the owner's consent
from using in the course of trade identical
or similar signs or containers for goods or
services which are identical or similar to
Intellectual Property Law ►►| 30
those in respect of which the trademark
is registered where such use would result
in a likelihood of confusion. In case of the
use of an identical sign for identical
goods or services, a likelihood of
confusion shall be presumed.
NOTE: Actual confusion is not necessary.
DURATION
IP Code, Section 145
Duration –
A certificate of registration shall remain
in force for ten (10) years: Provided, That
the registrant shall file a declaration of
actual use and evidence to that effect, or
shall show valid reasons based on the
existence of obstacles to such use, as
prescribed by the Regulations, within one
(1) year from the fifth anniversary of the
date of the registration of the mark.
Otherwise, the mark shall be removed
from the Register by the Office.
RENEWAL
IP Code, Section 146
Renewal. –
146.1. A certificate of registration may be
renewed for periods of ten (10) years at its
expiration upon payment of the prescribed
fee and upon filing of a request.
COMMERCIALIZATION OF TRADE
MARKS
COMMERCIAL EXPLOITATION
IP Code, Section 149
Assignment and Transfer of Application
and Registration. –
149.1. An application for registration of a
mark, or its registration, may be assigned
or transferred with or without the transfer
of the business using the mark.
IP Code, Section 150
License Contracts. –
Any license contract concerning the
registration of a mark, or an application
therefor, shall provide for effective control
by the licensor of the quality of the goods

or services of the licensee in connection
with which the mark is used. If the license
contract does not provide for such
quality control, or if such quality control
is not effectively carried out, the license
contract shall not be valid.
BASIS OF REGISTRATION
BASIS OF REGISTRATION
1. Local Use (intent to use will suffice)
2. Foreign Application/Registration
Applicant may prosecute application by
himself or by an attorney (latter case,
Power of Attorney required)
Resident agent required for foreign
applicant
IMPORTANCE OF REGISTRATION
The registration of marks secures to the
registrant the advantages which are denied
to a non-registrant or ordinary user.
While failure to register will not prevent the
owner from continuing its use, the law
deprives him of benefits which the law
grants to registrants of marks.
Ecole De Cuisine Manille v. Renaud
Cointreau
Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the
Philippines, as amended, has already
dispensed with the requirement of prior actual
use at the time of registration. Thus, there is
more reason to allow the registration of the
subject mark under the name of Cointreau as
its true and lawful owner.
La Chemise Lacoste v. Fernandez
The law on trademarks and tradenames is
based on the principle of business integrity
and common justice' This law, both in letter
and spirit, is laid upon the premise that,
while it encourages fair trade in every way
and aims to foster, and not to hamper,
competition, no one, especially a trader, is
Intellectual Property Law ►►| 31
justified in damaging or jeopardizing
another's business by fraud, deceit, trickery
or unfair methods of any sort. This
necessarily precludes the trading by one
dealer upon the good name and reputation
built up by another (Baltimore v. Moses, 182
Md 229, 34 A (2d) 338).
Birkenstock v. Phil Shoe Expo Marketing
Corp.
Clearly, it is not the application or
registration of a trademark that vests
ownership thereof, but it is the ownership of
a trademark that confers the right to register
the same. A trademark is an industrial
property over which its owner is entitled to
property rights which cannot be
appropriated by unscrupulous entities that,
in one way or another, happen to register
such trademark ahead of its true and lawful
owner. The presumption of ownership
accorded to a registrant must then
necessarily yield to superior evidence of
actual and real ownership of a trademark.
The SC recognized normal potential
expansion of his business
Dermaline, Inc v. Myra Pharmaceutical
Inc.
Modern law recognizes that the protection to
which the owner of a trademark is entitled is
not limited to guarding his goods or business
from actual market competition with identical
or similar products of the parties, but extends
to all cases in which the use by a junior
appropriator of a trade-mark or trade-name is
likely to lead to a confusion of source, as
where prospective purchasers would be
misled into thinking that the complaining
party has extended his business into the
field or is in any way connected with the
activities of the infringer; or when it forestalls
the normal potential expansion of his
business
Fredco Manufacturing Corp v. Pres. &
Fellows of Harvard College
There are two compelling reasons why
Fredco’s petition must fail.

1. First, Fredcos registration of the mark
Harvard and its identification of origin as
Cambridge, Massachusetts falsely
suggest that Fredco or its goods are
connected with Harvard University;
2. Fredcos registration of the mark Harvard
should not have been allowed because
Section 4(a) of R.A. No. 166 prohibits
the registration of a mark which may
disparage or falsely suggest a
connection with persons, living or dead,
institutions, beliefs x x x. Section 4(a)
of R.A. No. 166
Mipuri v. Court of Appeals
In Philippine jurisprudence, the function of a
trademark is to point out distinctly the origin
or ownership of the goods to which it is
affixed; to secure to him, who has been
instrumental in bringing into the market a
superior article of merchandise, the fruit of
his industry and skill; to assure the public
that they are procuring the genuine article;
to prevent fraud and imposition; and to
protect the manufacturer against
substitution and sale of an inferior and
different article as his product.
Lyceum of the Philippines v. Court of
Appeals
The policy underlying the prohibition in
Section 18 against the registration of a
corporate name which is "identical or
deceptively or confusingly similar" to that of
any existing corporation or which is
"patently deceptive" or "patently confusing"
or "contrary to existing laws," is the
avoidance of fraud upon the public which
would have occasion to deal with the entity
concerned, the evasion of legal obligations
and duties, and the reduction of difficulties
of administration and supervision over
corporations.
Intellectual Property Law ►►| 32
DILUTION
Trademark dilution is the lessening of the
capacity of a famous mark to identify and
distinguish goods or services, regardless of
the presence or absence of:
1. Competition between the owner of the
famous mark and other parties; or
2. Likelihood of confusion, mistake or
deception.
Subject to the principles of equity, the owner
of a famous mark is entitled to an injunction
against another person’s commercial use in
the commerce of a mark or trade-name, if
such use begins after the mark has become
famous and causes dilution of the distinctive
quality of the mark.
OPPOSITION
IP Code, Section 134
Opposition –
Any person who believes that he would
be damaged by the registration of a mark
may, upon payment of the required fee
and within thirty (30) days after the
publication referred to in Subsection
133.2, file with the Office an opposition to
the application. Such opposition shall be
in writing and verified by the oppositor or
by any person on his behalf who knows
the facts, and shall specify the grounds
on which it is based and include a
statement of the facts relied upon. Copies
of certificates of registration of marks
registered in other countries or other
supporting documents mentioned in the
opposition shall be filed therewith,
together with the translation in English, if
not in the English language. For good
cause shown and upon payment of the
required surcharge, the time for filing an
opposition may be extended by the
Director of Legal Affairs, who shall notify
the applicant of such extension. The
Regulations shall fix the maximum period
of time within which to file the opposition.

Any person who believes that he would be
damaged by the registration of the mark
may file an opposition to the application.
CANCELLATION/ REVOCATION
IP Code, Section 151.1
Cancellation –
(a) Within five (5) years from the date of
the registration of the mark under
this Act.
(b) At any time, if the registered mark
becomes the generic name for the
goods or services, or a portion thereof,
for which it is registered, or has been
abandoned, or its registration was
obtained fraudulently or contrary to the
provisions of this Act, or if the
registered mark is being used by, or
with the permission of, the registrant
so as to misrepresent the source of the
goods or services on or in connection
with which the mark is used. xxx. (n)
(c) At any time, if the registered owner of
the mark without legitimate reason
fails to use the mark within the
Philippines, or to cause it to be used
in the Philippines by virtue of a
license during an uninterrupted
period of three (3) years or longer.
A petition to cancel a registration of a mark
may be filed with the Bureau of Legal Affairs
by any person who believes that he is or will
be damaged by the registration of a mark.
- Generally within 5 years
- At any time after the registration
under circumstances in (b) and
(c)
MAINTENANCE
See also Sec. 145 and 146.
Declaration of actual use and evidence to
that effect within 1 year from the 5th
anniversary of the date of the registration.
Intellectual Property Law ►►| 33
A certificate of registration may be renewed.
Note: This is different from that which is
required under Sec.124.2 (DAU after
application):
IP Code, Section 124.2
The applicant or the registrant shall file a
declaration of actual use of the mark with
evidence to that effect, as prescribed by
the Regulations within three (3) years
from the filing date of the application.
Otherwise, the application shall be
refused or the mark shall be removed
from the Register by the Director.
One time DAU (within three years from filing)
The submission of a DAU or Declaration of
Non-Use is required to maintain a trademark
application and registration. The acceptable
grounds for non-use are restricted to:
- Prohibition of sale imposed by
government regulation;
- Court-issued injunctions;
- Pending application with the Food
and Drugs;
- Administration; and
- Pending litigation or opposition
(IP Code, Section 124.2)
TRADE NAMES OR BUSINESS NAMES
IP Code, Section 165
Trade Names or Business Names –
165.1. A name or designation may not be
used as a trade name if by its nature or
the use to which such name or
designation may be put, it is contrary to
public order or morals and if, in
particular, it is liable to deceive trade
circles or the public as to the nature of
the enterprise identified by that name.
165.2.
(a) Notwithstanding any laws or
regulations providing for any

obligation to register trade names,
such names shall be protected, even
prior to or without registration,
against any unlawful act committed
by third parties.
(b) In particular, any subsequent use of
the trade name by a third party,
whether as a trade name or a mark or
collective mark, or any such use of a
similar trade name or mark, likely to
mislead the public, shall be deemed
unlawful.
165.3. The remedies provided for in
Sections 153 to 156 and Sections 166 and
167 shall apply mutatis mutandis.
165.4. Any change in the ownership of a
trade name shall be made with the
transfer of the enterprise or part thereof
identified by that name. The provisions of
Subsections 149.2 to 149.4 shall apply
mutatis mutandis.
TRADEMARK INFRINGEMENT
IP Code, Section 155
Remedies; Infringement. –
Any person who shall, without the consent
of the owner of the registered mark:
155.1. Use in commerce any reproduction,
counterfeit, copy, or colorable imitation of a
registered mark or the same container or a
dominant feature thereof in connection with
the sale, offering for sale, distribution,
advertising of any goods or services
including other preparatory steps
necessary to carry out the sale of any
goods or services on or in connection with
which such use is likely to cause
confusion, or to cause mistake, or to
deceive; or
Note: Dominancy test was expressly
adopted in the above provision of the IP
Code.
155.2. Reproduce, counterfeit, copy or
colorably imitate a registered mark or a
Intellectual Property Law ►►| 34
dominant feature thereof and apply such
reproduction, counterfeit, copy or
colorable imitation to labels, signs,
prints, packages, wrappers, receptacles
or advertisements intended to be used in
commerce upon or in connection with the
sale, offering for sale, distribution, or
advertising of goods or services on or in
connection with which such use is likely
to cause confusion, or to cause mistake,
or to deceive, shall be liable in a civil
action for infringement by the registrant
for the remedies hereinafter set forth:
Provided, That the infringement takes
place at the moment any of the acts
stated in Subsection 155.1 or this
subsection are committed regardless of
whether there is actual sale of goods or
services using the infringing material.
IP Code, Section 156
Actions, and Damages and Injunction for
Infringement. —
156.1. The owner of a registered mark
may recover damages from any person
who infringes his rights, and the measure
of the damages suffered shall be either
the reasonable profit which the
complaining party would have made, had
the defendant not infringed his rights, or
the profit which the defendant actually
made out of the infringement, or in the
event such measure of damages cannot
be readily ascertained with reasonable
certainty, then the court may award as
damages a reasonable percentage based
upon the amount of gross sales of the
defendant or the value of the services in
connection with which the mark or trade
name was used in the infringement of the
rights of the complaining party.
156.2. On application of the complainant,
the court may impound during the
pendency of the action, sales invoices
and other documents evidencing sales.

156.3. In cases where actual intent to
mislead the public or to defraud the
complainant is shown, in the discretion of
the court, the damages may be doubled.
IP Code, Section 159
156.4. The complainant, upon proper
showing, may also be granted injunction.
IP Code, Section 157
Power of Court to Order Infringing
Material Destroyed –
157.1. In any action arising under this
Act, in which a violation of any right of
the owner of the registered mark is
established, the court may order that
goods found to be infringing be, without
compensation of any sort, disposed of
outside the channels of commerce in
such a manner as to avoid any harm
caused to the right holder, or destroyed;
and all labels, signs, prints, packages,
wrappers, receptacles and
advertisements in the possession of the
defendant, bearing the registered mark or
trade name or any reproduction,
counterfeit, copy or colorable imitation
thereof, all plates, molds, matrices and
other means of making the same, shall be
delivered up and destroyed.
157.2. In regard to counterfeit goods, the
simple removal of the trademark affixed
shall not be sufficient other than in
exceptional cases which shall be
determined by the Regulations, to permit
the release of the goods into the
channels of commerce.
IP Code, Section 158
Damages; Requirement of Notice. —
In any suit for infringement, the owner of
the registered mark shall not be entitled to
recover profits or damages unless the acts
have been committed with knowledge that
such imitation is likely to cause confusion,
or to cause mistake, or to deceive. Such
knowledge is presumed if the registrant
gives notice that his mark is registered by
displaying with the mark the words
'"Registered Mark" or the letter R
Intellectual Property Law ►►| 35
within a circle or if the defendant had
otherwise actual notice of the registration.
Limitations to Actions for Infringement.
— Notwithstanding any other provision of
this Act, the remedies given to the owner
of a right infringed under this Act shall be
limited as follows:
159.1. Notwithstanding the
provisions of Section 155 hereof,
a registered mark shall have no
effect against any person who, in
good faith, before the filing date
or the priority date, was using
the mark for the purposes of his
business or enterprise: Provided,
That his right may only be
transferred or assigned together
with his enterprise or business
or with that part of his enterprise
or business in which the mark is
used.
159.2. Where an infringer who is
engaged solely in the business
of printing the mark or other
infringing materials for others is
an innocent infringer, the owner
of the right infringed shall be
entitled as against such infringer
only to an injunction against
future printing.
159.3. Where the infringement
complained of is contained in or is
part of paid advertisement in a
newspaper, magazine, or other
similar periodical or in an
electronic communication, the
remedies of the owner of the right
infringed as against the publisher
or distributor of such newspaper,
magazine, or other similar
periodical or electronic
communication shall be limited
to an injunction against the
presentation of such advertising
matter in future issues of such
newspapers, magazines, or other

similar periodicals or in future
transmissions of such electronic
communications. The limitations
of this subparagraph shall apply
only to innocent infringers:
Provided, That such injunctive
relief shall not be available to the
owner of the right infringed with
respect to an issue of a
newspaper, magazine, or other
similar periodical or an electronic
communication containing
infringing matter where restraining
the dissemination of such
infringing matter in any particular
issue of such periodical
or in an electronic
communication would delay the
delivery of such issue or
transmission of such electronic
communication is customarily
conducted in accordance with
the sound business practice, and
not due to any method or device
adopted to evade this section or
to prevent or delay the issuance
of an injunction or restraining
order with respect to such
infringing matter.
UNFAIR COMPETITION
What is Unfair Competition?
“Any act of competition contrary to honest
practices in industrial and commercial
matters.” (Art.10bis, Paris Convention)
Q: Is unfair competition an intellectual
property?
A: No. But the protection against unfair
competition is recognized under IP laws. It
becomes an extension of trademark law.
IP Code, Section 168
Unfair Competition, Rights, Regulation
and Remedies. –
168.1. A person who has identified in the
mind of the public the goods he
manufactures or deals in, his business or
Intellectual Property Law ►►| 36
services from those of others, whether or
not a registered mark is employed, has a
property right in the goodwill of the said
goods, business or services so identified,
which will be protected in the same
manner as other property rights.
168.2. Any person who shall employ
deception or any other means contrary to
good faith by which he shall pass off the
goods manufactured by him or in which
he deals, or his business, or services for
those of the one having established such
goodwill, or who shall commit any acts
calculated to produce said result, shall be
guilty of unfair competition, and shall be
subject to an action therefor.
168.3. In particular, and without in any way
limiting the scope of protection against
unfair competition, the following shall be
deemed guilty of unfair competition:
(a) Any person, who is selling his goods
and gives them the general
appearance of goods of another
manufacturer or dealer, either as to
the goods themselves or in the
wrapping of the packages in which
they are contained, or the devices or
words thereon, or in any other
feature of their appearance, which
would be likely to influence
purchasers to believe that the goods
offered are those of a manufacturer
or dealer, other than the actual
manufacturer or dealer, or who
otherwise clothes the goods with
such appearance as shall deceive the
public and defraud another of his
legitimate trade, or any subsequent
vendor of such goods or any agent of
any vendor engaged in selling such
goods with a like purpose;
(b) Any person who by any artifice, or
device, or who employs any other
means calculated to induce the false
belief that such person is offering the
services of another who has
identified such services in the mind
of the public; or

(c) Any person who shall make any false
statement in the course of trade or
who shall commit any other act
contrary to good faith of a nature
calculated to discredit the goods,
business or services of another
168.4. The remedies provided by Sections
156, 157 and 161 shall apply mutatis
mutandis.
Section 168.1 speaks of a person who has
earned goodwill with respect to his goods
and services and who is entitled to
protection under the Code, with or without a
registered mark.
Goodwill – property right that must be
protected
Section 168.2 refers to the general definition
of unfair competition.
Form of unfair competition – passing off
Note: another form of unfair competition is
false designation of origin
Section 168.3, on the other hand, refers to
the specific instances of unfair competition,
with Section 168.1 referring to the sale of
goods given the appearance of the goods of
another;
Section 168.2, to the inducement of belief
that his or her goods or services are that of
another who has earned goodwill; while the
disputed Section 168.3 being a “catch all”
clause whose coverage the parties now
dispute.
Trademark Unfair
Infringement Competition
Unauthorized use of Passing off of one’s
a trademark goods as those of
another
Fraudulent Intent is Fraudulent intent is
unnecessary. essential.
Prior registration of Registration is NOT
the trademark is a necessary.
prerequisite to the
action.
Intellectual Property Law ►►| 37
Jurisprudential Definition of Unfair
Competition
Alhambra Cigar v. Mojica
Unfair competition consists in passing off or
attempting to pass off upon the public the
goods or business of one person as and for
the goods or business of another. It consists
essentially in the conduct of a trade or
business in such a manner that there is
either an express or implied representation
to that effect.
Coca-Cola Bottlers v. Gomez
Jurisprudence defines unfair competition as
the passing off or attempting to pass off
upon the public the goods or business of
one person as the goods or business of
another with the end and probable effect of
deceiving the public.
True test of Unfair Competition: whether the
acts of defendant are such as are calculated
to deceive the ordinary buyer making his
purchases under the ordinary conditions
which prevail in the particular trade to which
the controversy relates.
Levi Strauss v. Tony Lim
Unfair competition consists in employing
deception or any other means contrary to
good faith by which any person shall pass
off the goods manufactured by him or in
which he deals, or his business, or services
for those of the one having established
goodwill, or committing any acts calculated
to produce such result.
Elements of Unfair Competition
1. Create/capable of creating confusion as
to the enterprise, goods, industrial
activities
2. Formulate false allegations in the course
of trade so as to discredit the enterprise,
goods, industrial activities
3. Indications or allegations that in the
course of trade….

Jurisprudential Elements of Unfair
Competition
NBI-Microsoft Corporation v. Judy
Hwang
The elements of unfair competition
under Article 189(1) of the Revised Penal
Code are:
1. That the offender gives his goods the
general appearance of the goods of
another manufacturer or dealer;
2. That the general appearance is shown
in the (1) goods themselves, or in the (2)
wrapping of their packages, or in the (3)
device or words therein, or in (4) any
other feature of their appearance [;]
3. That the offender offers to sell or sells
those goods or gives other persons a
chance or opportunity to do the same
with a like purpose[; and]
4. That there is actual intent to deceive the
public or defraud a competitor.
Note: Art. 189 of RPC was already repealed
by the IP code
In and Out Burger v. Sehwani
The essential elements of an action for
unfair competition are:
1. Confusing similarity in the general
appearance of the goods and
2. Intent to deceive the public and defraud
a competitor.
BUREAU OF CUSTOMS RECORDAL
IP Code, Section 166
Goods Bearing Infringing Marks or Trade
Names. —
No article of imported merchandise which
shall copy or simulate the name of any
domestic product, or manufacturer, or
dealer, or which shall copy or simulate a
mark registered in accordance with the
provisions of this Act, or shall bear a
mark or trade name calculated to induce
the public to believe that the article is
manufactured in the Philippines, or that it
is manufactured in any foreign country or
locality other than the country or locality
where it is in fact manufactured, shall be
Intellectual Property Law ►►| 38
admitted to entry at any customhouse of
the Philippines. In order to aid the officers
of the customs service in enforcing this
prohibition, any person who is entitled to
the benefits of this Act, may require that his
name and residence, and the name of the
locality in which his goods are
manufactured, a copy of the certificate of
registration of his mark or trade name, to
be recorded in books which shall be kept
for this purpose in the Bureau of Customs,
under such regulations as the Collector of
Customs with the approval of the Secretary
of Finance shall prescribe, and may furnish
to the said Bureau facsimiles of his name,
the name of the locality in which his goods
are manufactured, or his registered mark or
trade name, and thereupon the Collector of
Customs shall cause one (1) or more
copies of the same to be transmitted to
each collector or to other proper officer of
the Bureau of Customs.
Once you are registered, you can give your
certification your certificate of registration to
the Bureau of Customs so they can monitor
goods going in and out of the country
bearing similar marks.
RA 9502, Universally Accessible Cheaper
and Quality Medicines Act of 2008
SEC. 15. Section 159 of Republic Act No. 8293,
otherwise known as the Intellectual Property
Code of the Philippines, is hereby amended to
read as follows:
SEC. 159. Limitations to Actions for Infringement. -
Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed
under this Act shall be limited as follows:
159.4 There shall be no infringement of trademarks
or tradenames of imported or sold drugs and
medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and
medicines: Provided, That said drugs and medicines
bear the registered marks that have not

been tampered, unlawfully modified, or infringed
upon as defined under Section 155 of this Code.
FALSE DESIGNATION OF ORIGIN
IP Code, Section 169
False Designations of Origin; False
Description or Representation –
169.1. Any person who, on or in
connection with any goods or services,
or any container for goods, uses in
commerce any word, term, name, symbol,
or device, or any combination thereof, or
any false designation of origin, false or
misleading description of fact, or false or
misleading representation of fact, which:
(a) Is likely to cause confusion, or to
cause mistake, or to deceive as to the
affiliation, connection, or association
of such person with another person,
or as to the origin, sponsorship, or
approval of his or her goods,
services, or commercial activities by
another person; or
(b) In commercial advertising or
promotion, misrepresents the nature,
characteristics, qualities, or
geographic origin of his or her or
another person's goods, services, or
commercial activities, shall be liable
to a civil action for damages and
injunction provided in Sections 156
and 157 of this Act by any person
who believes that he or she is or is
likely to be damaged by such act.
169.2. Any goods marked or labelled in
contravention of the provisions of this
Section shall not be imported into the
Philippines or admitted entry at any
customhouse of the Philippines. The
owner, importer, or consignee of goods
refused entry at any customhouse under
this section may have any recourse under
the customs revenue laws or may have the
remedy given by this Act in cases involving
goods refused entry or seized.
Intellectual Property Law ►►| 39
McDonald’s Corp. v. L.C. Big Mak
Big Mak Burger Inc. applied for the
registration of the mark “BIG MAK” this was
opposed by McDonalds as this was a
colorable imitation of its mark “Big Mac” over
its double-decker hamburger sandwich. Big
Mak Inc. pointed out that another corp.(Isaiyas
Group) registered the mark “Big Mac” ahead
of McDonalds.In response McDonalds pointed
out that Isaiyas Group’s registration was only
in the supplemental register; Also there was a
deed of assignment made by Isaiyas Group in
favor of McDonalds. Trial court ruled that Big
Mak Inc is liable for infringement and unfair
competition. This was reversed by CA.
The Court ruled that LC Big Mak is guilty of
infringement and unfair competition. LC Big
Mak was deemed guilty of infringement
because of likelihood of confusion as to
goods and business and because it failed to
put notice that LC Big Mak is the
manufacturer of Big Mak burgers.
Distinguish Generic, Descriptive and
Fanciful/ Arbitrary marks.
Generic marks are commonly used as the
name or description of a kind of goods, such
as “Lite” for beeror “Chocolate Fudge” for
chocolate soda drink.
Descriptive marks, on the other hand,
convey the characteristics, functions,
qualities or ingredients of a product to one
who has never seen it or does not know it
exists, such as “Arthriticare” for arthritis
medication.
On the contrary, “Big Mac” falls under the
class of fanciful or arbitrary marks as it
bears no logical relation to the actual
characteristics of the product it represents.
Is there confusion of business in the
case?
YES. Respondents assert that their “Big
Mak” hamburgers cater mainly to the low-
income group while petitioners’ “Big Mac”
hamburgers cater to the middle and upper
income groups. Even if this is true, the

likelihood of confusion of business
remains, since the low-income group might
be led to believe that the “Big Mak”
hamburgers are the low-end hamburgers
marketed by petitioners. After all, petitioners
have the exclusive right to use the “Big
Mac” mark. On the other hand, respondents
would benefit by associating their low-end
hamburgers, through the use of the “Big
Mak” mark, with petitioners’ high-end “Big
Mac” hamburgers, leading to likelihood of
confusion in the identity of business.
Respondents have adopted in “Big Mak” not
only the dominant but also almost all the
features of “Big Mac.” They both sound the
same and that the letters are the same
except for the last (in tagalog “k” is used
instead of “c” as in Kalookan)
Explain how Respondents came to
choose their mark.
Defendants-appellants explained that the
name “Mak” in their corporate name (BIG
MAK) was derived from both the first names of
the mother and father of defendant Francis
Dy, whose names are Maxima and Kimsoy.
Is it possible to have trademark
infringement without unfair competition?
Cite example.
YES. There can be trademark infringement
without unfair competition as when the
infringer discloses on the labels containing
the mark that he manufactures the goods,
thus preventing the public from being
deceived that the goods originate from the
trademark owner.
McDonald’s Corp. v. Macjoy Fastfood
Corp.,
MacJoy Fastfood is a domestic corp in Cebu
engaged in the fast food business and it
applied for registration of the mark “MACJOY
AND DEVICE” McDonalds opposed the
application saying that there is colorable
imitation of their corporate logo in specifically
the golden arches or the “M” sign. The Court
applied the dominancy test and held that the
marks were similar and MacJoy has not
Intellectual Property Law ►►| 40
given a plausible reason for how they came
up with their mark.
Explain now Respondents came to
choose their mark. How did the Court
react to this?
“MACJOY” is based on the name of its
president’s niece, Scarlett Yu Carcell as an
expression of fondness and endearment.
The court found the explanation to be
implausible. The respondent’s implausible
and insufficient explanation as to how and
why out of the many choices of words it
could have used for its trade name and/or
trademark, it chose the word “MACJOY,”
lead to the only logical conclusion deducible
therefrom that the respondent would want to
ride high on the established reputation and
goodwill of the MCDONALD’s marks, which,
as applied to petitioner’s restaurant
business and food products, is undoubtedly
beyond question.
Prosource International, Inc. v. Horphag
Research
Horphag is a Swiss Corp. distributing food
supplement product in the Philippines with
the mark PYCNOGENOL. It discovered that
Prosource was also selling food supplement
products with the mark PCO-GENOLS and
it demanded that the latter cease from
distributing such products. Prosource the
products with PCO-GENOLS mark from the
market and changed it into PCO-PLUS.
Horphag then filed a case for infringement.
The Court held that there was an
infringement because applying the
dominancy test there is likelihood of
confusion as the two marks sounds similar
and are both food supplement products.
What test was used in the case?
Dominancy test. The court adhered to the
findings of both the trial court and CA which
both used the dominancy test. The products
are similar as to sounds; and both are food
supplements.

Skechers USA v. Pacific Industrial
Trading
Skechers applied for search warrants to
search the warehouses of Pacific Industrial on
the ground of infringement; search warrants
were issued. On its defense, Pacific industrial
that there is no confusing similarity between
the skechers rubber shoes and its own Strong
rubber shoes; hence it moved for the quashal
of the search warrants. This was granted. The
Court held that there was similarity with regard
to the dominant feature of the skechers rubber
shoes which is the stylized “S” and hence the
quashal of the warrants was set aside.
What is the dominant feature of the mark?
Is it registrable?
The dominant feature of the mark of
Skechers is the stylized “S” within an oval
design. YES in this case the Court
mentioned that indeed Skechers has a
registered mark for the stylized “S”.
Mighty Corporation v. E.J. Gallo Winery
Gallo Winery is a foreign corp and it has
registered trademark GALLO of its wine
products here in the Philippines. Mighty Corp
and La Compana are domestic corporations
engaged in the manufacture and sale of
tobacco products and they later acquired the
right to the registered trademark GALLO
earlier registered by Tobacco industries. Gallo
winery filed a complaint for infringement and
unfair competition against Mighty Corp and La
Compana alleging that the two wanted to ride
on the goodwill of its wine products. The Court
held that there was no infringement because
wines and cigarettes are not identical, similar
or related goods; that Gallo Winery’s
registration covered wines only and that
GALLO is not an internationally well-known
mark under the Paris Convention. There was
no unfair competition because Mighty Corp.
never intended to pass off their cigarette
products as that of Gallo winery.
Explain the reasoning of the Court in
concluding that Respondents never had
Intellectual Property Law ►►| 41
exclusive right to use the mark to the
prejudice of petitioner.
The GALLO trademark registration
certificates in the Philippines and in other
countries expressly state that they cover
wines only, without any evidence or
indication that registrant Gallo Winery
expanded or intended to expand its
business to cigarettes. Thus, by strict
application of Section 20 of the Trademark
Law, Gallo Winery’s exclusive right to use
the GALLO trademark should be limited to
wines, the only product indicated in its
registration certificates.
REVIEW OF UNFAIR COMPETITION
CASES UNDER TRADEMARK LAW
McDonalds Corp. v. Macjoy Fastfood
Corp.
There was a recognition of House Marks
(family of “Mc” marks of McDonalds were
impliedly recognized in this case).
Superior Enterprises v. Kunnan
Enterprises
Another type of unfair competition other
than passing off and false designation of
origin was shown in this case: discredit of
the goods, business and services of another
(IP Code, Sec. 168c)
Willaware Products v. Jesichris
Manufacturing
UC under the IP Code and Art. 28 Civil
Code (Unfair Trade Practices).
Art. 28 of the Civil Code could serve as a
basis for a claim if unfair competition under
the IP Code is not an option.
Chester Uyco v. Lo
UC and False designation of origin
(products indicated that they were made in
Portugal when in fact they were
manufactured in the PH)

MADRID PROTOCOL (Protocol
Relating to the Madrid Agreement
Concerning the International
Registration of Marks)
Only an executive agreement, hence no
need for 2/3 concurrence vote of the Senate
(IPAP v. Ochoa)
Effective date in PH: July 25, 2012
Philippines’ reservations/declarations when
it acceded to the Protocol:
1. Provisional Refusal: 18months +
2. No subsequent designations
3. IPOPHIL collects individual fee
Q: Is there a conflict between the Madrid
Protocol and the IP Code? (On the ground
that Madrid Protocol does away with the
resident agent requirement under the IP
Code) (IPAP v. Ochoa)
A: None. The Madrid Application would still
be subject to the same substantive
requirements under our laws.
A resident agent/local representative would
still be required when:
1. the IPOPHIL refuses registration of the
mark;
2. when the submission of the DAU is
required and
3. also upon submission of the license
contract
COMMON PROVISIONS FOR BOTH
MADRID AND NON-MADRID
APPLICATIONS
1. Substantive examination in accordance
with PH Laws
2. If Registration Report is issued, applicant
must be represented by a local agent
3. When required to submit DAU, applicant
must be represented by local agent
4. Submission and recordal of assignment:
license contracts before the IPO
HOW MADRID PROTOCOL WORKS
(See chart at the last page)
Intellectual Property Law ►►| 42
INTERNATIONAL APPLICATION AND
INTERNATIONAL REGISTRATION
Q: What is the difference between an
international application and
international registration?
A: International application refers to the
stage where the applicant files in its office of
origin the basic application which will be
forwarded to the IPO for formal
examination; or the stage before the
trademark is registered in the WIPO
international register of marks
International registration refers to the
stage where after the formal examination,
the trademark is registered in the WIPO
international register; then the application
would be forwarded to the DCPs
(Designated Contracting Parties)
Note: Certificate of Registrations (CORs)
are not issued by IPOPHIL for Madrid
Applications but only Statement of Grant of
Protection
ROLE OF ATTORNEYS (Sec.125)
IP Code, Sec. 125
Representation; Address for Service.
If the applicant is not domiciled or has no
real and effective commercial
establishment in the Philippines, he shall
designate by a written document filed in
the Office, the name and address of a
Philippine resident who may be served
notices or process in proceedings
affecting the mark. Such notices or
services may be served upon the person
so designated by leaving a copy thereof
at the address specified in the last
designation filed. If the person so
designated cannot be found at the
address given in the last designation,
such notice or process may be served
upon the Director.
ROLE OF IPO
1. As Office of Origin (Inbound
applications)- help clients in reviewing
the documents, review and filing of the
 Intellectual Property Law ►►| 43

Madrid Application through IPO; Class Items

General advices Class 5 Pharmaceutical, veterinary and
2. As Designated Contracting Party (DCP) sanitary preparations; dietetic
(Outbound applications) – reviewing substances adapted for medical use,
Form MM2 which must contain: food for babies; plasters, materials
- Name and contact details of for dressings; material for stopping
applicant teeth, dental wax; disinfectants;
- Reproduction of trademark preparations for destroying vermin;
- Specification of goods or service fungicides, herbicides
Class 6 Common metals and their alloys;
- Designated contracting parties metal building materials;
transportable buildings of metal;
materials of metal for railway tracks;
NICE CLASSIFICATION non-electric cables and wires of
common metal; ironmongery, small
The following are the general classifications items of metal hardware; pipes and
of goods (Classes 1-34) and services tubes of metal; safes; goods of
(Classes 35-45). common metal not included in other
Class Items classes;ores.
Class 1 Chemicals used in industry, science Class 7 Machines and machine tools; motors
and photography, as well as in and engines (except for land
agriculture, horticulture and forestry; vehicles); machine coupling and
unprocessed artificial resins, transmission components (except for
unprocessed plastics; manures fire land vehicles); agricultural
extinguishing compositions; implements other than hand-
tempering and soldering operated; incubators for eggs.
preparations; chemical substances Class 8 Hand tools and implements (hand-
for preserving foodstuffs; tanning operated); cutlery; side arms; razors.
substances; adhesives used in Class 9 Scientific, nautical, surveying,
industry electric, photographic,
cinematographic, optical, weighing,
Class 2 Paints, varnishes, lacquers; measuring, signaling, checking
preservatives against rust and (supervision), life-saving and
against deterioration of wood; teaching apparatus and instruments;
colorants; mordants; raw natural apparatus for recording, transmission
resins; metals in foil and powder form or reproduction of sound or images;
for painters, decorators, printers and magnetic data carriers, recording
artists. discs; automatic vending machines
and mechanisms for coin-operated
Class 3 Bleaching preparations and other apparatus; cash registers, calculating
substances for laundry use; cleaning, machines, data processing
polishing, scouring and abrasive equipment and computer; fire-
preparations; soaps; perfumery, extinguishing apparatus
essential oils, cosmetics, hair lotions; Class 10 Surgical, medical, dental and
dentifrices. veterinary apparatus and
Class 4 Industrial oils and greases; instruments, artificial limbs, eyes and
lubricants; dust absorbing, wetting teeth; orthopedic articles; suture
and binding compositions; fuels materials.
(including motor spirit) and Class 11 Apparatus for lighting, heating, steam
illuminants; candles, wicks. generating, cooking, refrigerating,

Class Items
drying, ventilating, water supply and
sanitary purposes
Class 12 Vehicles; apparatus for locomotion
by land, air or water.
Class 13 Firearms; ammunition and
projectiles; explosives; fireworks.
Class 14 Precious metals and their alloys and
goods in precious metals or coated
therewith, not included in other
classes; jewellery, precious stones;
horological and chronometric
instruments
Class 15 Musical instruments
Class 16 Paper, cardboard and goods made
from these materials, not included in
other classes; printed matter;
bookbinding material; photographs;
stationery; adhesives for stationery
or household purposes; artist's
materials; paint brushes; typewriters
and office requisites (except
furniture); instructional and teaching
material (except apparatus); plastic
materials for packaging (not included
in other classes); playing cards;
printers' type printing blocks.
Class 17 Rubber, gutta-percha, gum,
asbestos, mica and goods made
from these materials and not
included in other classes; plastics in
extruded form for use in
manufacture; packing, stopping and
insulating materials; flexible pipes,
not of metal.
Class 18 Leather and imitations of leather, and
goods made of these materials and
not included in other classes; animal
skins, hides; trunks and traveling
bags; umbrellas, parasols and
walking sticks; whips, harness and
saddlery.
Class 19 Building materials (non-metallic);
non-metallic rigid pipes for building;
asphalt, pitch and bitumen; non-
metallic transportable buildings;
monuments, not of metal.
Class 20 Furniture, mirrors, picture frames;
goods (not included in other classes)
of wood, cork, reed, cane, wicker,
Intellectual Property Law ►►| 44
Class Items
horn, bone, ivory, whalebone, shell,
amber, mother-of-pearl,
meerschaum and substitutes for all
these materials, or of plastics.
Class 21 Household or kitchen utensils and
containers (not of precious metal or
coated therewith); combs and
sponges; brushes (except paint
brushes); brush-making materials;
articles for cleaning purposes;
steelwool; unworked or semi-worked
glass (except glass use in building);
glassware, porcelain and
earthenware not included in other
classes.
Class 22 Ropes, string, nets, tents, awnings,
tarpaulins, sails, sacks and bags (not
included in other classes); padding
and stuffing materials (except of
rubber or plastics); raw fibrous textile
materials.
Class 23 Yarns and threads, for textile use.
Class 24 Textiles and textile goods, not
included in other classes; bed and
table covers.
Class 25 Clothing, footwear, headgear.
Class 26 Lace and embroidery, ribbons and
braid; buttons, hooks and eyes, pins
and needles; artificial flower
Class 27 Carpets, rugs, mats and matting,
linoleum and other materials for
covering existing floors; wall
hangings (non-textile).
Class 28 Games and playthings; gymnastic
and sporting articles not included in
other classes; decorations for
Christmas trees
Class 29 Meat, fish, poultry and game; meat
extracts; preserved, dried and
cooked fruits and vegetables; jellies,
jams, fruit sauces; eggs, milk and
milk products; edible oils and fats.
Class 30 Coffee, tea, cocoa, sugar, rice
tapioca, sago, artificial coffee; flour
and preparations made from cereals,
bread, pastry and confectionery,
ices; honey, treacle; yeast, baking-
powder; salt, mustard; vinegar,
sauces (condiments); spices; ice.
 Intellectual Property Law ►►| 45

Class Items the Madrid Protocol where the

Class 31 Agricultural, horticultural and forestry Philippines is a DCP. Can the trademark
products and grains not included in owner exclude third parties from using
other classes; live animals; fresh the mark registered under the
fruits and vegetables; seeds, natural International Register?
plants and flowers; foodstuffs for A: NO. Registration of the mark in the
animals; malt. International Register does not ipso facto
Class 32 Beers; mineral and aerated water give the trademark owner the right to
and other non-alcoholic drinks; fruit exclude parties from using the mark. The
drinks and fruit juices; syrups and trademark owner must apply for the
other preparations for making extension of the territorial protection of the
beverages. mark to the other contracting parties of the
Class 33 Alcoholic beverages (except beers). Madrid Protocol and the Paris Convention
Class 34 Tobacco; smokers' articles; matches for Protection of Industrial Property.
Class 35 Advertising; business management;
business administration; office
functions. THE LAW ON PATENTS
Class 36 Insurance; financial affairs; monetary
affairs; real estate affairs.
Class 37 Building construction; repair; INTRODUCTION
installation services.
Class 38 Telecommunications. Law on Patents is basically the interplay
Class 39 Transport; packaging and storage of between two concepts (confidential
goods; travel arrangement. information and Publication/disclosure).
Class 40 Treatment of materials.
Class 41 Education; providing of training; CONFIDENTIAL INFORMATION
entertainment; sporting and cultural
activities.
(e.g. Trade Secret)
Class 42 Scientific and technological services
1. Requisites for Liability
and research and design relating
thereto; industrial analysis and a. Subject matter that is capable of
research services; design and protection
development of computer hardware b. Confidential Obligation
and software; legal services. c. Unauthorized use
Class 43 Services for providing food and drink; 2. Remedies
temporary accommodation a. Injunction
Class 44 Medical services, veterinary b. Damages and other monetary reliefs
services; hygienic and beauty care
for human beings or animals; Examples of Patents: design details,
agriculture; horticulture and forestry manufacturing processes and
services. Product/chemical composition
Class 45 Personal and social services
rendered by others to meet the needs WAYS OF PROTECTING CONFIDENTIAL
of individuals; security services for INFORMATION (also types of confidential
the protection of property and obligation)
individuals. 1. Legal – Attorney-client privilege
Note: are paralegals covered?
2. Contractual
Q: A mark was just issued an a. Non-disclosure agreements –
International Registration number under especially during negotiations with

other companies for manufacturing
or mass production of the product
b. Restrictive covenants – applies to
employees (e.g. prohibited from
being employed with another
pharmaceutical company for a
limited time and place)
CHARACTERISTICS OF A PATENT
Pearl & Dean v. Shoemart
To be able to effectively preclude others
from profiting from the invention, a patent is
a primordial requirement. No patent, no
protection.
Ideas which are disclosed to the public
without the protection of a valid patent are
subject to appropriation.
Ching v. Salinas
Works of applied art
General Rule: works of applied art are
copyrightable (Copyright Law)
Exception: If it has aesthetic feature and
utilitarian function and you cannot separate
the two then patentable (Patent law)
Implication: If it can be separated then, the
aesthetic feature – copyrightable while the
utilitarian function – patentable
HISTORY OF THE PATENT
SYSTEM
KEY POINTS ON EARLY HISTORY
1. A form of social contract with obligations
on both sides.
State: patent protection (give monopoly
rights)
Inventor: disclose invention
2. Monopoly is viewed with suspicion
- No standards before; patronage and
favoritism; monopoly was given only
with new inventions
Intellectual Property Law ►►| 46
3. The 20th century show process if
internationalization in terms of
substantive law
- Standards on what is new or novel
a. Greeks
b. Venice – first formal law on patents
c. England – where industrial revolution
started
JUSTIFICATION OF THE PATENT
SYSTEM
THREEFOLD PURPOSE
1. Foster and reward invention
2. Promote disclosures of invention to
stimulate further inventions and to
permit the public to practice the
invention
3. Stringent requirements for patent
protection seek to ensure that ideas
in the public domain remain there for
the free use of the public
Ultimate goal of a patent system: to bring
new designs and technology into the public
domain through disclosure
INTERNATIONAL AGREEMENTS
MAIN FEATURES OF THE PARIS
CONVENTION
1. Principle of National Treatment
Each signatory state will afford the same
rights to foreigners of other signatory
states to its own nationals
2. Applicant enjoys a 12-month right of
priority from the date of first filing of a
patent in a signatory country. It also
means novelty of all such applications
will be tested by reference to the period
before the first filing.
3. National patent remain independent of
each other. (Art. 4bis)

4. The focus on the inventor who has the
right to be named as such in the patent.
(Art. 4ter)
Patent ownership:
a. Employer-employee – if part of the
employee’s regular work – employer
(through a deed of assignment
affixed in the patent application)
b. Commissioned work - commissioner
THE PATENT COOPERATION TREATY
AS AMENDED
1. Not a granting procedure — merely
provides a conduit whereby a single
application can be processed and
searched by a qualified international
body before being sent to national or
regional intellectual property offices for
full consideration
2. Anyone who is a national or resident of
a contracting state can file a single
international patent application
Note: This single application is then
subject to an ‘international search’ from
which an international research report is
prepared.
This international search body
determines if there is inventive step; can
help you decide whether to pursue your
international application
Difference with the Madrid Protocol: you
deal directly with the national Intellectual
Property Offices
TRIPS (1994)
1. It is administered by the WTO and
parties to the Agreement are subject to
WTO’s dispute settlement system
2. It links obligations to protect intellectual
property with the attractiveness of trade
privileges available under GATT
3. First international measure to harmonize
substantive patent provisions:
Article 27(1) TRIPS
Patentable Subject Matter
1. Subject to the provisions of
paragraphs 2 and 3, patents shall be
Intellectual Property Law ►►| 47
available for any inventions, whether
products or processes, in all fields of
technology, provided that they are
new, involve an inventive step and
are capable of industrial application.
Subject to paragraph 4 of Article 65,
paragraph 8 of Article 70 and
paragraph 3 of this Article, patents
shall be available and patent rights
enjoyable without discrimination as
to the place of invention, the field of
technology and whether products are
imported or locally produced.
FOUR BASIC REQUIREMENTS FOR
PATENTABILITY
1. There must be an invention that can be
considered as a technical solution of a
problem in any field of human activity;
2. The invention must be new;
3. The invention must involve an inventive
step;
4. The invention must be industrially
applicable;
PATENTABLE AND NON-
PATENTABLE INVENTIONS
PART A:
Define
1. Invention
IP Code, Section 21
Patentable Inventions
Any technical solution of a problem in
any field of human activity which is new,
involves an inventive step and is
industrially applicable shall be
patentable. It may be, or may relate to, a
product, or process, or an improvement
of any of the following.
- Technical character
- Solution
2. Product – any physical thing resulting
from a man’s skill
3. Process – mode of treatment of certain
materials to produce a certain effect

Only limitation: Laws of nature
Not patentable:
A new mineral discovered in the
earth A new plant found in the wild
Einstein’s E=mc2
Newton could not have patented the law
on gravity.
PART B:
Classes of Patentable Inventions
1. A product, such as machine, a device,
an article of manufacture, a composition
of matter, a microorganism
2. A process, such as method of use, a
method of manufacturing, a non-
biological process, a microbiological
process;
3. Computer-related inventions; and
Note: Computer programs per se not
patentable; if part of a process or when
related to a machine. Equipment of
procedure or a component of a whole
machine it is patentable.
4. An improvement of any of the foregoing.
NON-PATENTABLE INVENTIONS
- Abstract (22.1 and 22.2)
- Other non-technical things (22.5)
1. Discoveries, scientific theories and
mathematical methods
Note: Including known derivatives of a
known substance unless they differ
significantly in properties with regard to
efficacy
2. Schemes, rules and methods, for
performing mental acts, playing games
or doing business, and programs for
computers
3. Methods for treatment of the human or
animal body
4. Plant varieties or animal breeds,
essentially biological processes for plant
or animal production
Note: Does not apply to micro-
organisms and non-biological or
microbiological processes
Intellectual Property Law ►►| 48
5. Aesthetic creations
6. Contrary to public order or morality
BAR Q: Supposing Albert Einstein were
alive today and he filed with the
Intellectual Property Office an
application for patent of his theory of
relativity expressed in the formula
E=mc2.The IPO disapproved Einstein
application on the ground that his theory
of relativity is not patentable
Is the IPO action correct?
A: Yes, the IPO's action is correct that the
theory of relativity is not patentable. Under
section 22.1 of the IPC. "discoveries,
scientific theories and mathematical
methods" are not patentable.
BAR Q: Dr. Nobel discovered a new
method of treating Alzheimer’s involving
a special method of diagnosing the
disease, treating it with a new medicine
that has been discovered after long
experimentation and field testing, and
novel mental isometric exercises. He
comes to you for advice on how he can
have his discoveries protected. Can he
legally protect his new method of
diagnosis, the new medicine, and the
new method of treatment? If no, why? If
yes, how? (4%)
A: Dr. Nobel can be protected by a patent
for the new medicine as it falls within the
scope of Sec. 21 of the Intellectual Property
Code (Rep. Act No. 8293, as amended). But
no protection can be legally extended to him
for the method of diagnosis and method of
treatment which are expressly non-
patentable (IP Code, Sec.22).
Discoveries, scientific theories
Non-Patentable: new property of a known
material or article, that is a mere discovery
Patentable: person puts that property to
practical use, an invention has been made,
which may be patentable

Such discoveries are “manifestations of
nature, free, to all men and reserved
exclusively to none.”
Phenomena of nature, although just
discovered, mental processes, and abstract
intellectual concepts are not patentable, as
they are the basic tools of scientific and
technological work.
Mathematical methods Non-Patentable: a
shortcut method of division would not be
patentable
Patentable: a calculating machine construed
to operate the above described shortcut
method of division
Schemes, rules and methods for mental
acts
Non-Patentable: a scheme for learning a
language, a method of solving cross-word
puzzles, a game (as an abstract entity
defined by its rules) or a scheme for
organizing a commercial operation would
not be patentable
Patentable: novel apparatus for playing a
game or carrying out a scheme might be
patentable
Programs for computers Non-Patentable:
a computer program claimed by itself or as
a record on a carrier or when the computer
program is loaded into a known computer
Patentable: a computer program-controlled
process should be regarded as patentable
subject matter (practical use)
Contrary to public order or morality
Non-Patentable: letter bomb
Patentable: guns and ammunitions
Q: What if the invention is a process of
breaking open locked safes?
A: Not-patentable: to facilitate a burglar’s
robbery activity
Intellectual Property Law ►►| 49
Patentable: used by a locksmith in case of
emergency
A fair test to apply is to consider whether it is
probable that the public in general would
regard the invention as so abhorrent that the
grant of patent rights would be inconceivable
Plant varieties or animal breeds,
essentially biological processes for plant
and animal production
Not-patentable: no significant intervention of
man
Patentable: if such intervention plays a
significance part in determining or
controlling the result is desired to achieve
Patentable Microbiological Process
- industrial processes under micro-
organisms
- processes for producing new micro-
organisms
- product of a microbiological process may
be also patentable per se (product claim)
- micro-organism can also be protected
per se (IP Code, Sec. 22.4[2])
Methods for treatment of the human or
animal body by surgery or therapy Not-
patentable: methods of treatment by surgery
or therapy and diagnostic method
Patentable: other methods of treatment of
live human beings or animals or other
methods of measuring or recording
characteristics of the human or animal body
are patentable provided that such methods
are of a technical and are not essentially
biological in character
Q: Is this excluded: a treatment of or
diagnostic method practiced on dead
human or animal body?
A: NO. Only methods of surgery, treatment
and diagnosis on live human or animal are
excluded from patent protection under Sec.
22 of the IP Code.

PATENTABILITY
PART 1:
Novelty
IP Code, Section 23,
Novelty. —
An invention shall not be considered new
if it forms part of a prior art.
Q: What constitutes prior art?
1. Available to the public anywhere in the
world before the filing date and the
priority date
2. Contents of an application with earlier
filing or priority date than the subject
application
Revised Rules for Patent Utility, Rule 204.1
Equivalents – a strict identity test is
required to be applied in assessing
novelty. A single prior art reference must
disclose each and every element of a
claimed invention in order to destroy
novelty. Equivalents are considered only
in assessing inventive step.
IP Code, Section 24
Prior Art. —
Prior art shall consist of:
24.1. Everything which has been made
available to the public anywhere in the
world, before the filing date or the priority
date of the application claiming the
invention; and
24.2. The whole contents of an application
for a patent, utility model, or industrial
design registration, published in
accordance with this Act, filed or effective
in the Philippines, with a filing or priority
date that is earlier than the filing or priority
date of the application: Provided, That the
application which has validly claimed the
filing date of an earlier application under
Section 31 of this Act, shall be prior art with
effect as of the filing date of such earlier
application: Provided further, That the
applicant or the inventor identified in
Intellectual Property Law ►►| 50
both applications are not one and the
same.
IP Code, Section 25.
Non-Prejudicial Disclosure. —
25.1. The disclosure of information
contained in the application during the
twelve (12) months preceding the filing
date or the priority date of the application
shall not prejudice the applicant on the
ground of lack of novelty if such
disclosure was made by:
a. The inventor;
b. A patent office and the information
was contained (a) in another
application filed by the inventor and
should not have been disclosed by
the office, or (b) in an application
filed without the knowledge or
consent of the inventor by a third
party which obtained the
information directly or indirectly
from the inventor; or
c. A third party which obtained the
information directly or indirectly
from the inventor.
25.2. For the purposes of Subsection
25.1, "inventor" also means any person
who, at the filing date of application, had
the right to the patent.
Manzano v. Court of Appeals
An invention must possess the essential
elements of novelty, originality and
precedence, and for the patentee to be
entitled to the protection the invention must
be new to the world.
The element of novelty is an essential
requisite of the patentability of an invention or
discovery. If a device or process has been
known or used by others prior to its invention
or discovery by the applicant, an application
for a patent therefor should be denied; and if
the application has been granted, the court, in
a judicial proceeding in which the validity of
the patent is drawn in ques/on, will hold it void
and ineffective. It has been repeatedly held
that an invention must possess the

essential elements of novelty, originality and
precedence
PART 2:
Inventive Step
IP Code, Section 26
Inventive Step –
26.1. An invention involves an inventive
step if, having regard to prior art, it is not
obvious to a person skilled in the art at
the time of the filing date or priority date
of the application claiming the invention.
26.2. In case of drugs and medicines, there
is no inventive step if the invention results
from mere discovery of a new form or new
property of a known substance which does
not result in the enhancement of the known
efficacy of that substance, or the mere
discovery of any new property or new use
for a known substance, or the mere use of a
known process unless such known process
results in a new product that employs at
least one new reactant.
Vargas v. FM Yaptico
The burden of proof to substantiate a charge
of infringement is with the plaintiff. Where,
however, the plaintiff introduces the patent in
evidence, if it is in due form, it affords a prima
facie presumption of its correctness and
validity. The decision of the Commissioner of
Patents in granting the patent is always
presumed to be correct. The burden then
shifts to the defendant to overcome by
competent evidence this legal presumption.
As said by the United States Supreme
Court, "it has been repeatedly held by this
court that a single instance of public use of
the invention by a patentee for more than
two years before the date of his application
for his patent will be fatal to the validity of
the patent when issued."
We are certain that he has at least
demonstrated the public use of the Vargas
plow over two years prior to the application
for a patent.
Intellectual Property Law ►►| 51
Aguas v. De Leon
Tile Making — Where improvement in /le
making is inventive and different from old
process of tile making, improvement is
patent able.
Moreover, it appears that appellee has been
deriving considerable profit from his
manufacture and sale of such tiles. This
commercial success is evidence of
patentability
Graham v. John Deere Co.
Ruling:
1. The flexing advantages flowing from the
‘798 arrangement are not, in fact, a
significant feature of the patent.
2. All of the elements of the ‘798 patent are
present in the Glencoe (clamp device).
Graham Factors – used in determining non-
obviousness:
1. Scope and content of prior art
2. Differences between the claimed
invention and the prior art
3. Level of ordinary skill in the prior art
Secondary considerations:
1. Commercial success
2. Long felt but unsolved needs
3. Failure of others
PART 3:
Industrial Applicability
IP Code, Section 27
An invention that can be produced and
used in any industry shall be industrially
applicable. (n)
Additional cases on Patents:
Law of Nature/Biological Activity
Diamond v. Charkabarty
Whether the micro-organism in this case is
an article of manufacture. YES.

A method for developing a bacterium that
could break down multiple components of
crude oil. His claim ranged from the process
of developing the bacterium to the bacterium
itself and an inoculum in which the bacterium
was stored with a carrier material.
Claims:
1. Process of producing a bacterial
organism
2. Method of using a bacterial organism
3. The bacterial organism itself
Why does the examiner allow 1 and 2 but
not 3?
Because the bacterium itself appears
natural and part of the laws of nature hence
not patentable. Patents cannot protect laws
of nature or physical phenomena.
In this case, the patent over the bacterium
itself was held valid because the law on
patent intended to separate products of
nature from products of human ingenuity.
The bacterium was a product of
Chakrabarty’s own ingenuity because it did
not occur in nature.
As a rule of statutory construction, is a
bacterial organism a “composition of
nature” or “manufacture”?
Naturally a composition of matter since it is
a natural living organism.
Q: What is the rule of Chakrabarty?
(What living things are patentable)
A: A live, human-made micro-organism,
which constitutes a non-natural composition
of matter or manufacture.
Treatment of Diseases
Mayo Collaborative Services v.
Promotheus Laboratories Inc.
Whether in adding the words “apply it” to a
known law of nature can make an invention
patentable. NO.
Intellectual Property Law ►►| 52
The two patents at issue concern the use of
thiopurine used to treat autoimmune
diseases.
When the thiopurine drugs are ingested, the
body metabolizes them, producing
metabolites in the bloodstream.
Because patients metabolize these drugs
differently, doctors found it difficult to
determine whether a particular patient’s
dose is too high, risking harmful side
effects, or too low, and so likely ineffective.
Ruling:
The concentrations of metabolites in the blood
and the likelihood that a thiopurine drugs
dosage will likely cause harm or prove
ineffective are laws of nature and hence not
themselves patentable absent any added
feature showing that the processes are
genuine application of those laws rather than
efforts to monopolize the relations.
Note: otherwise, it would constitute an
inhibition from using those laws of nature in
making further discoveries.
Abstract Ideas and Theories
Diamond v. Diehr
Is the process of using mathematical
formula in this case a patentable subject
matter? YES.
Involves a computer which repeatedly
recalculates the cure time by the use of
Arrhenius equation.
If the computer use is incorporated in the
process then the entire process is not made
entirely unpatentable.
Summary:
1. Mathematical formulas cannot be
patented in the abstract
2. When the claim containing a
mathematical formula implements the
said formula as part of an entire process
then the process becomes patentable.
Is computer software patentable?
- Per se, subject to copyright
- But can be if part of a process

Method of Doing Business:
Bilski v. Kappos
Whether the concept of hedging risk and the
application of that concept to energy
markets are patentable processes. NO.
The claimed invention explains how
commodities buyers and sellers in the
energy market can protect, or hedge,
against the risk of price changes.
Federal court applied the machine or
transformation test.
Machine or transformation test – a claimed
process is patent-eligible if:
1. It is tied to a particular machine or
apparatus
2. It transforms a particular article into a
different state or thing
Note: not the sole test for patent eligibility
Business methods are not categorically
excluded from patent protection.
However the claims in this case are not
patent-eligible because they represent an
abstract idea.
APPLICATION PROCESS
PATENT APPLICATION FLOW
CHART (See chart at the last page)
PROCEDURE FOR GRANT OF
PATENT Applicant
IP Code, Section 28
Right to a Patent. -
The right to a patent belongs to the
inventor, his heirs, or assigns. When two
(2) or more persons have jointly made an
invention, the right to a patent shall
belong to them jointly.
‘ microbiological process or the product
Intellectual Property Law ►►| 53
Specification (Sec.32 to 39)
IP Code, Section 32
Filing The Application –
32.1. The patent application shall be in
Filipino or English and shall contain the
following:
(a) A request for the grant of a patent;
(b) A description of the invention;
(c) Drawings necessary for the
understanding of the invention;
(d) One or more claims; and
(e) An abstract.
32.2. No patent may be granted unless the
application identifies the inventor. If the
applicant is not the inventor, the Office may
require him to submit said authority.
IP Code, Section 33.
Appointment of Agent or Representative
An applicant who is not a resident of the
Philippines must appoint and maintain a
resident agent or representative in the
Philippines upon whom notice or process
for judicial or administrative procedure
relating to the application for patent or
the patent may be served.
IP Code Section 34.
The Request
The request shall contain a petition for the
grant of the patent, the name and other data
of the applicant, the inventor and the agent
and the title of the invention.
IP Code Section 35.
Disclosure and Description of the
Invention
35.1. Disclosure. –
The application shall disclose the
invention in a manner sufficiently clear
and complete for it to be carried out by a
person skilled in the art.
Where the application concerns a
thereof and involves the use of a micro-
organism which cannot be sufficiently
disclosed in the application in such a way
as to enable the invention to be carried out
by a person skilled in the art, and such

material is not available to the public, the
application shall be supplemented by a
deposit of such material with an
international depository institution.
35.2. Description. –
The Regulations shall prescribe the
contents of the description and the order
of presentation.
IP Code, Section 36.
The Claims –
36.1. The application shall contain one (1)
or more claims which shall define the
matter for which protection is sought. Each
claim shall be clear and concise, and shall
be supported by the description.
36.2. The Regulations shall prescribe the
manner of the presentation of claims.
IP Code, Section 37.
The Abstract –
The abstract shall consist of a concise
summary of the disclosure of the
invention as contained in the description,
claims and drawings in preferably not
more than one hundred fifty (150) words.
It must be drafted in a way which allows
the clear understanding of the technical
problem, the gist of the solution of that
problem through the invention, and the
principal use or uses of the invention.
The abstract shall merely serve for
technical information.
IP Code, Section 38
38.1. The application shall relate to one
invention only or to a group of inventions
forming a single general inventive
concept.
38.2. If several independent inventions
which do not form a single general
inventive concept are claimed in one
application, the Director may require that
the application be restricted to a single
invention. A later application filed for an
invention divided out shall be considered
as having been filed on the same day as
the first application: Provided, That the
Intellectual Property Law ►►| 54
later application is filed within four (4)
months after the requirement to divide
becomes final, or within such additional
time, not exceeding four (4) months, as
may be granted: Provided further, That
each divisional application shall not go
beyond the disclosure in the initial
application.
8.3. The fact that a patent has been
granted on an application that did not
comply with the requirement of unity of
invention shall not be a ground to cancel
the patent.
IP Code Section 39.
Information Concerning Corresponding
Foreign Application for Patents –
The applicant shall, at the request of the
Director, furnish him with the date and
number of any application for a patent filed
by him abroad, hereafter referred to as the
"foreign application," relating to the same
or essentially the same invention as that
claimed in the application filed with the
Office and other documents relating to the
foreign application.
Priority Date
IP Code, Section 31
An application for patent filed by any
person who has previously applied for the
same invention in another country which by
treaty, convention, or law affords similar
privileges to Filipino citizens, shall be
considered as filed as of the date of filing
the foreign application: Provided, That: (a)
the local application expressly claims
priority; (b) it is filed within twelve
(12) months from the date the earliest
foreign application was filed; and (c) a
certified copy of the foreign application
together with an English translation is
filed within six (6) months from the date
of filing in the Philippines. (Sec. 15, R.A.
No. 165a)

Filing Date
It is accorded only when all the
requirements under Sec.40 are present:
1. An express or implicit indication that a
Philippine patent is sought
2. Information identifying the applicant
3. Description of the invention and one or
more claims in Filipino or English
Other possible requirements:
1. Contents for the request for Philippine
patent
2. Priority documents if with claim for
convention priority
3. Proof of authority, if applicant is not the
inventor
4. Deed of assignment
5. Payment of all fees
6. Signatures of the applicants
7. Identification of the inventor
8. Formal drawings
Formality Examination
After the patent application has been
accorded a filing date and the required fees
have been paid on time, the applicant shall
comply with the formal requirements under
Sec.32 of the law and the implementing
rules and regulations under the said section.
Classification and Search
An application that has complied with the
formal requirements shall be classified and
a search conducted to determine prior art.
- Examiner shall determine novelty
- IPO uses International Patent
Classification
Publication (before grant)
It should be made within 18 months from
filing or priority date.
IP Code, Section 44
Publication of Patent Application
44.1. The patent application shall be
published in the IPO Gazette together with
a search document established by or on
behalf of the Office citing any documents
that reflect prior art, after the expiration of
Intellectual Property Law ►►| 55
eighteen (18) months from the filing date
or priority date.
44.2. After publication of a patent
application, any interested party may
inspect the application documents filed
with the Office.
44.3. The Director General, subject to the
approval of the Secretary of Trade and
Industry, may prohibit or restrict the
publication of an application, if in his
opinion, to do so would be prejudicial to
the national security and interests of the
Republic of the
Philippines. (n)
Confidentiality Before
Publication IP Code, Section 45.
A patent application, which has not yet
been published, and all related
documents, shall not be made available
for inspection without the consent of the
applicant.
Rights Conferred After
Publication IP Code, Section 46
Rights Conferred by a Patent Application
After Publication –
The applicant shall have all the rights of a
patentee under Section 76 against any
person who, without his authorization,
exercised any of the rights conferred
under
Section 71 of this Act in relation to the
invention claimed in the published patent
application, as if a patent had been
granted for that invention: Provided, That
the said person had:
46.1. Actual knowledge that the invention
that he was using was the subject matter
of a published application; or
46.2. Received written notice that the
invention that he was using was the
subject matter of a published application
being identified in the said notice by its
serial number:
Provided, That the action may not be filed
until after the grant of a patent on the
published application and within four (4)
years from the commission of the acts
complained of. (n)

Note: Section 76
Observation By Third Parties
IP Code, Section 47
Following the publication of the patent
application, any person may present
observations in writing concerning the
patentability of the invention. Such
observations shall be communicated to
the applicant who may comment on them.
The Office shall acknowledge and put
such observations and comment in the
file of the application to which it relates.
Substantive Examination
Duty of applicant to file a written request for
substantive examination
IP Code, Section 48
Request for Substantive Examination
48.1. The application shall be deemed
withdrawn unless within six (6) months
from the date of publication under
Section 41, a written request to determine
whether a patent application meets the
requirements of Sections 21 to 27 and
Sections 32 to 39 and the fees have been
paid on time.
48.2. Withdrawal of the request for
examination shall be irrevocable and
shall not authorize the refund of any fee.
Law Contest
An application is prosecuted ex parte by the
applicant; that is, the proceedings are like a
lawsuit in which there is a plaintiff, but no
defendant, the court itself acting as adverse
party.
Amendment of Specification
IP Code, Section 49
An applicant may amend the patent
application during examination: Provided,
That such amendment shall not include
new matter outside the scope of the
disclosure contained in the application as
filed.
Grant of Patent
- Ultimate objective of patent application
Intellectual Property Law ►►| 56
- Granted that all the requirements of the
law and the implementing rules
including payments of fees are satisfied
- Patent shall take effect on the date of
the publication of the grant of patent in
the IPO gazette
Refusal of the Application
- Possible that application will be refused
because the grant is not matter of right
- Remedy is to appeal the decision of the
examiner to the Director of Bureau of
Patents
Publication After Grant
IP Code, Section 52
Publication Upon Grant of Patent
52.1. The grant of the patent together with
other related information shall be
published in the IPO Gazette within the
time prescribed by the Regulations.
52.2. Any interested party may inspect
the complete description, claims, and
drawings of the patent on file with the
Office.
Issuance of Certificate of Letters Patent
IP Code, Section 53
The patent shall be issued in the name of
the Republic of the Philippines under the
seal of the Office and shall be signed by
the Director, and registered together with
the description, claims, and drawings, if
any, in books and records of the Office.
Term
IP Code, Section 54
The term of a patent shall be twenty (20)
years from the filing date of the
application.
Note: for computing the term, use the local
filing date even if the applicant made use of
a priority date in a foreign application
Patent After Grant
IP Code, Section 55.
Annual Fees. —
55.1. To maintain the patent application or
patent, an annual fee shall be paid upon

the expiration of four (4) years from the
date the application was published
pursuant to Section 44 hereof, and on
each subsequent anniversary of such
date. Payment may be made within three
(3) months before the due date. The
obligation to pay the annual fees shall
terminate should the application be
withdrawn, refused, or cancelled.
55.2. If the annual fee is not paid, the
patent application shall be deemed
withdrawn or the patent considered as
lapsed from the day following the
expiration of the period within which the
annual fees were due. A notice that the
application is deemed withdrawn or the
lapse of a patent for non-payment of any
annual fee shall be published in the IPO
Gazette and the lapse shall be recorded in
the Register of the
Office.
55.3. A grace period of six (6) months shall
be granted for the payment of the annual
fee, upon payment of the prescribed
surcharge for delayed payment.
The first annual fee is due after the
expiration of four years from date of the
publication of the application and on each
subsequent anniversary thereafter.
Payments may be made 3 months before
due date.
Obligation to pay is terminated if application
is withdrawn, refused or cancelled.
RIGHTS CONFERRED BY A PATENT
Q: What are the exclusive rights
conferred by a patent? (Section 71)
A: The following are the exclusive rights
conferred by a patent:
1. Product v. Process
a. product – to restrain, prohibit and
prevent any unauthorized person or
entity from making, using, offering for
sale, selling or importing that product
b. process – to restrain, prevent or
prohibit any unauthorized person or
entity from using the process and
Intellectual Property Law ►►| 57
from manufacturing, dealing in,
using, selling, or offering for sale, or
importing any product obtained
directly or indirectly from such
process.
2. Assign, or transfer the patent, and
conclude licensing contracts
Cancellation of Patent
IP Code, Section61.
Cancellation of Patents –
61.1. Any interested person may, upon
payment of the required fee, petition to
cancel the patent or any claim thereof, or
parts of the claim, on any of the following
grounds:
(a) That what is claimed as the invention
is not new or patentable;
(b) That the patent does not disclose the
invention in a manner sufficiently clear
and complete for it to be carried out by
any person skilled in the art; or
(c) That the patent is contrary to public
order or morality.
61.2. Where the grounds for cancellation
relate to some of the claims or parts of
the claim, cancellation may be effected to
such extent only.
INFRINGEMENT
What constitutes infringement? (Section
76)
IP Code, Section 76
Civil Action for Infringement. ‑
76.1. The making, using, offering for sale,
selling, or importing a patented product or
a product obtained directly or indirectly
from a patented process, or the use of a
patented process without the
authorization of the patentee constitutes
patent infringement: Provided, That, this
shall not apply to instances covered by
Sections 72.1 and 72.4 (Limitations of
Patent Rights); Section 74 (Use of
Invention by Government); Section 93.6
(Compulsory Licensing); and Section 93-
A (Procedures on Issuance of a Special

Compulsory License under the TRIPS
Agreement) of this Code.
76.2. Any patentee, or anyone possessing
any right, title or interest in and to the
patented invention, whose rights have
been infringed, may bring a civil action
before a court of competent jurisdiction,
to recover from the infringer such
damages sustained thereby, plus
attorney’s fees and other expenses of
litigation, and to secure an injunction for
the protection of his rights.
Q: May a foreign national bring an action
for infringement of patent, whether or
not it is licensed to do business in the
Philippines?
A: Yes. See Sections 3 and 77
Q: What if damages are inadequate or
cannot be readily ascertained? (Sections
76.3 and 74)
IP Code Section 76.3.
If the damages are inadequate or cannot
be readily ascertained with reasonable
certainty, the court may award by way of
damages a sum equivalent to reasonable
royalty.
IP Code, Section 76.4.
The court may, according to the
circumstances of the case, award
damages in a sum above the amount
found as actual damages sustained:
Provided, That the award does not
exceed three (3) times the amount of
such actual damages.
Q: How do courts dispose infringing
goods? (Section 76.5)
IP Code, Section 76.5.
The court may, in its discretion, order
that the infringing goods, materials and
implements predominantly used in the
infringement be disposed of outside the
channels of commerce or destroyed,
without compensation.
Intellectual Property Law ►►| 58
Q: Can a contributory infringer be held
liable?
A: YES. (Section 76.6)
IP Code, Section 76.6.
Anyone who actively induces the
infringement of a patent or
provides the infringer with a
component of a patented product
or of a product produced because
of a patented process knowing it
to be especially adopted for
infringing the patented invention
and not suitable for substantial
non-infringing use shall be liable
as a contributory infringer and
shall be jointly and severally
liable with the infringer.
Q: Invention kits?
A: May constitute infringement
PRESUMPTION IN PROCESS PATENT;
SHIFTING THE BURDEN OF PROOF
IP Code, Section 78.
Process Patents; Burden of Proof. ‑
If the subject matter of a patent is a
process for obtaining a product, any
identical product shall be presumed to
have been obtained through the use of
the patented process if the product is
new or there is substantial likelihood that
the identical product was made by the
process and the owner of the patent has
been unable despite reasonable efforts,
to determine the process actually used. In
ordering the defendant to prove that the
process to obtain the identical product is
different from the patented process, the
court shall adopt measures to protect, as
far as practicable, his manufacturing and
business secrets.
PRESCRIPTION IN ACTION FOR
INFRINGEMENT
IP Code, Section 79.
Limitation of Action for Damages. ‑
No damages can be recovered for acts of
infringement committed more than four
(4) years before the institution of the
action for infringement.

IP Code, Section 80.
Damages; Requirement of Notice. ‑
Damages cannot be recovered for acts of
infringement committed before the
infringer had known, or had reasonable
grounds to know of the patent. It is
presumed that the infringer had known of
the patent if on the patented product, or
on the container or package in which the
article is supplied to the public, or on the
advertising material relating to the
patented product or process, are placed
the words “Philippine Patent” with the
number of the patent.
IP Code, Section 81.
Defenses in Action for Infringement. ‑
In an action for infringement, the defendant,
in addition to other defenses available to
him, may show the invalidity of the patent,
or any claim thereof, on any of the grounds
on which a petition of cancellation can be
brought under Section
61 hereof.
Q: Can you file a criminal action for
infringement?
A: YES. (Section 84)
IP Code, Section 84.
Criminal Action for Repetition of
Infringement. ‑
If infringement is repeated by the
infringer or by anyone in connivance with
him after finality of the judgment of the
court against the infringer, the offenders
shall, without prejudice to the institution
of a civil action for damages, be
criminally liable therefor and, upon
conviction, shall suffer imprisonment for
the period of not less than six (6) months
but not more than three (3) years and/or a
fine of not less than One hundred
thousand pesos (P100,000) but not more
than Three hundred thousand pesos
(P300,000), at the discretion of the court.
The criminal action herein provided shall
prescribe in three (3) years from date of
the commission of the crime.
Intellectual Property Law ►►| 59
LITERAL INFRINGEMENT
Godines v. Court of Appeals
Infringement?
Tests have been established to determine
infringement. These are (a) literal
infringement; and (b) the doctrine of
equivalents. In using literal infringement as a
test, ". . . resort must be had, in the first
instance, to the words of the claim. If accused
matter clearly falls within the claim,
infringement is made out and that is the end of
it." To determine whether the particular item
falls within the literal meaning of the patent
claims, the court must juxtapose the claims of
the patent and the accused product within the
overall context of the claims and
specifications, to determine whether there is
exact identity of all material elements.
(Court observed that the patent and the
features of the patented utility model were
copied by the petitioner.)
The powers tillers are identical in
configuration, design and appearance.
DOCTRINE OF EQUIVALENTS
An infringement also occurs when a device
appropriates a prior invention by
incorporating its innovative concept and,
albeit with some modification and change,
performs substantially the same function in
substantially the same way to achieve
substantially the same result.
Carlos Gsell v. Valerioso Veloso Yap-
Jue
Infringement?
“The use of a process in all respects
identical with a process protected by a valid
patent, save only that a well-known
mechanical equivalent is substituted in lieu
of some particular part of the patented
process is an infringement upon the rights
of the owner of the patent, which will be
enjoined in appropriate proceeding…”

Q: Is the infringing feature (or claim)
insubstantial or not? (as used in the case
“unessential change [in the feature]?)”
A: NO. Doctrine of mechanical equivalents
was applied such that the patentee is
protected from colorable invasions of his
patent under the guise of a substitution of
some part of his invention by some well-
known mechanical equivalent.
Smithkline Beckman Corporation v.
Court of Appeals, August 14, 2003
No infringement?
The doctrine of equivalents thus requires
satisfaction of the function-means-and-
result test, the patentee having the burden
to show that all 3 components of such
equivalency test are met
(“Performs substantially the same function
in substantially the same way, yield
substantially the same result ”)
DOCTRINE OF EQUIVALENTS
LIMITATION:
In the US, the doctrine of equivalents is
limited by prosecution history estoppel.
Under the prosecution history estoppel, if
the patentee abandoned through an
amendment to the patent application certain
literal claim coverage (e.g. by narrowing the
literal scope of the patent claim), the
patentee is estopped from later arguing that
the surrendered coverage is insubstantially
different from the literally claimed limitation.
LIMITATIONS ON PATENT RIGHTS
IP Code, Section 72.
Limitations of Patent Rights. ‑
The owner of a patent has no right to
prevent third parties from performing,
without his authorization, the acts
referred to in Section 71 hereof in the
following circumstances:
Intellectual Property Law ►►| 60
Market Presence
IP Code, Section 72.1.
Using a patented product which has been
put on the market in the Philippines by
the owner of the product, or with his
express consent, insofar as such use is
performed after that product has been so
put on the said market: Provided, That,
with regard to drugs and medicines, the
limitation on patent rights shall apply
after a drug or medicine has been
introduced in the Philippines or anywhere
else in the world by the patent owner, or
by any party authorized to use the
invention: Provided, further, That the
right to import the drugs and medicines
contemplated in this section shall be
available to any government agency or
any private third party;
Act is done privately and on a
noncommercial scale
IP Code, Section 72.2.
Where the act is done privately and on a
non-commercial scale or for a non-
commercial purpose: Provided, That it
does not significantly prejudice the
economic interests of the owner of the
patent;
Acts done for experimental
purposes IP Code, Section 72.3
72.3. Where the act consists of making or
using exclusively for experimental use of
the invention for scientific purposes or
educational purposes and such other
activities directly related to such scientific
or educational experimental use;
Testing and using related to issuance of
approvals by government regulatory
agencies
IP Code, Section 72.4.
In the case of drugs and medicines, where
the act includes testing, using, making or
selling the invention including any data
related thereto, solely for purposes
reasonably related to the development and
submission of information and issuance of
approvals by government regulatory
agencies required under any

law of the Philippines or of another country
that regulates the manufacture,
construction, use or sale of any product:
Provided, That, in order to protect the data
submitted by the original patent holder
from unfair commercial use provided in
Article 39.3 of the Agreement on Trade-
Related Aspects of Intellectual Property
Rights (TRIPS Agreement), the Intellectual
Property Office, in consultation with the
appropriate government agencies, shall
issue the appropriate rules and regulations
necessary therein not later than one
hundred twenty (120) days after the
enactment of this law;
Medical prescription for individual cases
IP Code Section 72.5.
Where the act consists of the preparation
for individual cases, in a pharmacy or by
a medical professional, of a medicine in
accordance with a medical prescription
or acts concerning the medicine so
prepared; and
In Transit
IP Code, Section 72.6
Where the invention is used in any ship,
vessel, aircraft, or land vehicle of any
other country entering the territory of the
Philippines temporarily or accidentally:
Provided, That such invention is used
exclusively for the needs of the ship,
vessel, aircraft, or land vehicle and not
used for the manufacturing of anything to
be sold within the Philippines.
ADDITIONAL LIMITATIONS ON
PATENT RIGHTS
Use of Invention by Government
IP Code, Section 74.
Use of Invention by Government. ‑ 74.1.
A Government agency or third person
authorized by the Government may
exploit the invention even without
agreement of the patent owner where:
(a) The public interest, in particular,
national security, nutrition, health or
the development of other sectors, as
Intellectual Property Law ►►| 61
determined by the appropriate agency
of the government, so requires; or
(b) A judicial or administrative body has
determined that the manner of
exploitation, by the owner of the
patent or his licensee is anti-
competitive; or
(c) In the case of drugs and medicines,
there is a national emergency or other
circumstance of extreme urgency
requiring the use of the invention; or
(d) In the case of drugs and medicines,
there is public non-commercial use
of the patent by the patentee, without
satisfactory reason; or
(e) In the case of drugs and medicines, the
demand for the patented article in the
Philippines is not being met to an
adequate extent and on reasonable
terms, as determined by the Secretary
of the Department of Health.
IP Code, Section 74.2
Unless otherwise provided herein, the
use by the Government, or third person
authorized by the Government shall be
subject, where applicable, to the
following provisions:
(a) In situations of national emergency or
other circumstances of extreme urgency
as provided under Section 74.1(c), the
right holder shall be notified as soon as
reasonably practicable;
(b) In the case of public non-commercial
use of the patent by the patentee, without
satisfactory reason, as provided under
Section 74.1 (d), the right holder shall be
informed promptly: Provided, That, the
Government or third person authorized by
the Government, without making a patent
search, knows or has demonstrable ground
to know that a valid patent is or will be used
by or for the Government;
(c) If the demand for the patented article
in the Philippines is not being met to an
adequate extent and on reasonable terms
as provided under Section 74.1 (e), the
right holder shall be informed promptly;

IP Code, Section 74.3.
All cases arising from the implementation
of this provision shall be cognizable by
courts with appropriate jurisdiction
provided by law.
No court, except the Supreme Court of the
Philippines, shall issue any temporary
restraining order or preliminary injunction
or such other provisional remedies that will
prevent its immediate execution.
Review on Patents:
1. The legal consequence(s) when the
provisions of a Technology Transfer
Arrangement is inconsistent with the
provisions of Sec. 87 and 88 of the IP
Code.
2. The rules applicable when a third party
is entitled to use patented subject matter
without the consent of the owner of the
patent:
a. Use is covered by the Limitations on
Patent Rights
b. Use of invention by the Government
c. Third party is a prior user in good faith;
and
d. The reason for the use is among the
grounds for Compulsory Licensing
VOLUNTARY LICENSING
IP Code, Section 85.
Voluntary License Contract. –
To encourage the transfer and
dissemination of technology, prevent or
control practices and conditions that may
in particular cases constitute an abuse of
intellectual property rights having an
adverse effect on competition and trade,
all technology transfer arrangements
shall comply with the provisions of this
Chapter.
IP Code, Section 86.
Jurisdiction to Settle Disputes on
Royalties. –
The Director of the Documentation,
Information and Technology Transfer
Intellectual Property Law ►►| 62
Bureau shall exercise quasi-judicial
jurisdiction in the settlement of disputes
between parties to a technology transfer
arrangement arising from technology
transfer payments, including the fixing of
appropriate amount or rate of royalty.
IP Code, Section 87.
Prohibited Clauses. ‑
Except in cases under Section 91, the
following provisions shall be deemed
prima facie to have an adverse effect on
competition and trade:
87.1. Those which impose upon the
licensee the obligation to acquire from a
specific source capital goods,
intermediate products, raw materials, and
other technologies, or of permanently
employing personnel indicated by the
licensor;
87.2. Those pursuant to which the
licensor reserves the right to fix the sale
or resale prices of the products
manufactured on the basis of the license;
87.3. Those that contain restrictions
regarding the volume and structure of
production;
87.4. Those that prohibit the use of
competitive technologies in a non-
exclusive technology transfer agreement;
87.5. Those that establish a full or partial
purchase option in favor of the licensor;
87.6. Those that obligate the licensee to
transfer for free to the licensor the
inventions or improvements that may be
obtained through the use of the licensed
technology;
87.7. Those that require payment of
royalties to the owners of patents for
patents which are not used;
87.8. Those that prohibit the licensee to
export the licensed product unless

justified for the protection of the legitimate
interest of the licensor such as exports to
countries where exclusive licenses to
manufacture and/or distribute the licensed
product(s) have already been granted;
87.9. Those which restrict the use of the
technology supplied after the expiration
of the technology transfer arrangement,
except in cases of early termination of the
technology transfer arrangement due to
reason(s) attributable to the licensee;
87.10. Those which require payments for
patents and other industrial property
rights after their expiration, termination
arrangement;
87.11. Those which require that the
technology recipient shall not contest the
validity of any of the patents of the
technology supplier;
87.12. Those which restrict the research
and development activities of the licensee
designed to absorb and adapt the
transferred technology to local conditions
or to initiate research and development
programs in connection with new products,
processes or equipment;
87.13. Those which prevent the licensee
from adapting the imported technology to
local conditions, or introducing
innovation to it, as long as it does not
impair the quality standards prescribed
by the licensor;
87.14. Those which exempt the licensor
for liability for non-fulfilment of his
responsibilities under the technology
transfer arrangement and/or liability
arising from third party suits brought
about by the use of the licensed product
or the licensed technology; and
87.15. Other clauses with equivalent
effects.
Intellectual Property Law ►►| 63
BAR Q: What contractual stipulations are
required in all technology transfer
agreements?
A: The following are the stipulations
required:
IP Code, Section 88.
Mandatory Provisions. ‑
The following provisions shall be
included in voluntary license contracts:
88.1. That the laws of the Philippines shall
govern the interpretation of the same and in
the event of litigation, the venue shall be
the proper court in the place where the
licensee has its principal office;
88.2. Continued access to improvements
in techniques and processes related to
the technology shall be made available
during the period of the technology
transfer arrangement;
88.3. In the event the technology transfer
arrangement shall provide for arbitration,
the Procedure of Arbitration of the
Arbitration Law of the Philippines or the
Arbitration Rules of the United Nations
Commission on International Trade Law
(UNCITRAL) or the Rules of Conciliation
and Arbitration of the International
Chamber of Commerce (ICC) shall apply
and the venue of arbitration shall be the
Philippines or any neutral country; and
88.4. The Philippine taxes on all
payments relating to the technology
transfer arrangement shall be borne by
the licensor.
IP Code, Section 91.
Exceptional Cases. ‑
In exceptional or meritorious cases where
substantial benefits will accrue to the
economy, such as high technology
content, increase in foreign exchange
earnings, employment generation,
regional dispersal of industries and/or
substitution with or use of local raw
materials, or in the case of Board of

Investments, registered companies with
pioneer status, exemption from any of the
above requirements may be allowed by
the Documentation, Information and
Technology Transfer Bureau after
evaluation thereof on a case by case
basis.
IP Code, Section 92.
Non-Registration with the
Documentation, Information and
Technology Transfer Bureau. ‑
Technology transfer arrangements that
conform with the provisions of Sections
86 and 87 need not be registered with the
Documentation, Information and
Technology Transfer Bureau. Non-
conformance with any of the provisions
of Sections 87 and 88, however, shall
automatically render the technology
transfer arrangement unenforceable,
unless said technology transfer
arrangement is approved and registered
with the Documentation, Information and
Technology Transfer Bureau under the
provisions of Section 91 on exceptional
cases.
Q: Is an exclusive licensing arrangement
a Prohibited Act under the Philippine
Fair Competition Act?
A: No. This is a recognized exception to the
general rule. (The Philippine Competition
Act, Sec. 2 and 3 Chapter III)
COMPULSORY LICENSING
IP Code, Section 93.
Grounds for Compulsory Licensing. ‑
The Director General of the Intellectual
Property Office may grant a license to
exploit a patented invention, even without
the agreement of the patent owner, in
favor of any person who has shown his
capability to exploit the invention, under
any of the following circumstances:
93.1. National emergency or other
circumstances of extreme urgency;
Intellectual Property Law ►►| 64
93.2. Where the public interest, in
particular, national security, nutrition,
health or the development of other vital
sectors of the national economy as
determined by the appropriate agency of
the Government, so requires; or
93.3. Where a judicial or administrative
body has determined that the manner of
exploitation by the owner of the patent or
his licensee is anti-competitive; or
93.4. In case of public non-commercial
use of the patent by the patentee, without
satisfactory reason;
93.5. If the patented invention is not being
worked in the Philippines on a
commercial scale, although capable of
being worked, without satisfactory
reason: Provided, That the importation of
the patented article shall constitute
working or using the patent. (Secs. 34,
34-A, 34-B, R.A. No. 165a) and
93.6. Where the demand for patented
drugs and medicines is not being met to
an adequate extent and on reasonable
terms, as determined by the Secretary of
the Department of Health.
SPECIAL COMPULSORY LICENSE
UNDER THE TRIPS AGREEMENT
(SECTION 93A)
IP Code Section 93-A.
Procedures on Issuance of a Special
Compulsory License under the TRIPS
Agreement. ‑
Section 93-A.1. The Director General of
the Intellectual Property Office, upon the
written recommendation of the Secretary
of the Department of Health, shall, upon
filing of a petition, grant a special
compulsory license for the importation of
patented drugs and medicines. The
special compulsory license for the
importation contemplated under this
provision shall be an additional special
alternative procedure to ensure access to
quality affordable medicines and shall be

primarily for domestic consumption:
Provided, That adequate remuneration shall
be paid to the patent owner either by the
exporting or importing country. The
compulsory license shall also contain a
provision directing the grantee the license
to exercise reasonable measures to prevent
the re-exportation of the products imported
under this provision.
The grant of a special compulsory license
under this provision shall be an
exception to Sections 100.4 and 100.6 of
Republic Act No. 8293 and shall be
immediately executory.
No court, except the Supreme Court of
the Philippines, shall issue any temporary
restraining order or preliminary
injunction or such other provisional
remedies that will prevent the grant of the
special compulsory license.
Q: Whether incidental matters such as
issuance of an injunction should be
brought before the IPO Director General
or the Court of Appeals:
Philippine Pharmawealth v. Pfizer
Final orders – to the Director General
Interlocutory Orders – to the Court of
Appeals
Roma Drug v. RTC
Q: Parallel Importation involves genuine
goods.
IP Code allows parallel importation of
patented medicines.
Perke Davis & Co. v. Doctor’s
Pharmaceuticals Inc. et al
Q: What is the ground for filing for
Compulsory License in this case?
A: Public interest
Intellectual Property Law ►►| 65
Smith Kline & French Lab Ltd. V. Court
of Appeals, July 24, 1997
Q: Whether Smith Kline was deprived of its
property right with the grant of the
Compulsory License:
A: NO. Smith Kline would be entitled to
receive royalties.
Smith Kline & French Lab Ltd. V. Court
of Appeals, Oct. 23, 2001
Q: Whether the royalty rate under the
Compulsory License is unreasonable.
A: NO. The Director General is given
discretion to award royalty not more than
5% of net wholesale price. The 2.5% royalty
is reasonable especially because there is no
showing that petitioner granted technical
assistance to the respondent.
UTILITY MODELS
- Petty inventions
- As compared to patents, utility models
lack the element of inventive step
IP Code Section 108
Applicability of Provisions Relating to
Patents. —
108.1. Subject to Section 109, the
provisions governing patents shall apply,
mutatis mutandis, to the registration of
utility models.
108.2. Where the right to a patent conflicts
with the right to a utility model registration
in the case referred to in Section 29, the
said provision shall apply as if the word
"patent" were replaced by the words
"patent or utility model registration".
IP Code Section 109
Special Provisions Relating to Utility
Models. —
109.1.
a. An invention qualifies for registration
as a utility model if it is new and
industrially applicable.

b. Section 21, "Patentable Inventions",
shall apply except the reference to
inventive step as a condition of
protection.
109.2. Sections 43 to 49 shall not apply in
the case of applications for registration of
a utility model.
109.3. A utility model registration shall
expire, without any possibility of renewal,
at the end of the seventh year after the
date of the filing of the application.
109.4. In proceedings under Sections 61
to 64, the utility model registration shall
be canceled on the following grounds:
a. That the claimed invention does not
qualify for registration as a utility
model and does not meet the
requirements of registrability, in
particular having regard to
Subsection 109.1 and Sections 22,
23, 24 and 27;
b. That the description and the claims
do not comply with the prescribed
requirements;
c. That any drawing which is necessary
for the understanding of the
invention has not been furnished;
d. That the owner of the utility model
registration is not the inventor or his
successor in title. (Secs. 55, 56, and
57, R.A. No. 165a)
Ching v. Salinas
While works of applied art, original
intellectual, literary and artistic works are
copyrightable, useful articles and works of
industrial design are not.
INDUSTRIAL DESIGNS
IP Code, Section 112.
Definition of Industrial Design. –
An industrial design is any composition of
lines or colors or any three-dimensional
form, whether or not associated with lines
or colors: Provided, That such
Intellectual Property Law ►►| 66
composition or form gives a special
appearance to and can serve as pattern
for an industrial product or handicraft.
(Sec. 55, R.A. No. 165a)
IP Code, Section 118.
The Term of Industrial Design
Registration. —
118.1. The registration of an industrial
design shall be for a period of five
(5) years from the filing date of the
application.
118.2. The registration of an industrial
design may be renewed for not more than
two (2) consecutive periods of five (5)
years each, by paying the renewal fee.
The renewal fee shall be paid within
twelve (12) months preceding the
expiration of the period of registration.
However, a grace period of six (6) months
shall be granted for payment of the fees
after such expiration, upon payment of a
surcharge
118.3. The Regulations shall fix the
amount of renewal fee, the surcharge and
other requirements regarding the
recording of renewals of registration.
IP Code, Section 120.
Cancellation of Design Registration. –
120.1. At any time during the term of the
industrial design registration, any person
upon payment of the required fee, may
petition the Director of Legal Affairs to
cancel the industrial design on any of the
following grounds:
a. If the subject matter of the
industrial design is not registrable
within the terms of Sections 112
and 113;
b. If the subject matter is not new; or
c. If the subject matter of the
industrial design extends beyond
the content of the application as
originally filed.
 Intellectual Property Law ►►| 67

120.2. Where the grounds for cancellation

relate to a part of the industrial design,
cancellation may be effected to such
extent only. The restriction may be
effected in the form of an alteration of the
effected features of the design. (n)

Note: for utility models and industrial

designs, substantive examination is not
required

UTILITY MODEL AND INDUSTRIAL

DESIGN REGISTRATION PROCEDURE
(see chart at the last page)

Apple Inc. v. Samsung Electronics Co.

Ltd
1. 647 Patent – Quick links feature
2. 721 Patent – Slide to unlock feature
What were the two prior art references
cited in the Decision? What was the
problem 721 intended to resolve?
- Neonode (swipe right to unlock) and
Plaisant (toggle design)
- The problem addressed by the 721
patent is pocket dialing
3. 172 Patent - Autocorrect
What were the two prior art
references cited in the Decision?
How did the Court resolve that the
invention was not obvious (from the
prior inventions)?
- Robinson (keyboard system with
suggestions on misspelt words) and
Xrgomics (word completion patent –
makes suggestion of words once
you type letters)
- The court resorted to applying the
Graham factors; and found that not
all the elements of the claim are
present in the combination of the two
prior arts: Robinson and Xrgomics
 Intellectual Property Law ►►| 68

Figure 1: How Madrid Protocol Works

Figure 2: Patent Application Flowchart

 Intellectual Property Law ►►| 69

Figure 3: Utility Model and Industrial Design Registration Procedure