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INTELLECTUAL PROPERTY LAW 2018

Brief Background
The Philippine government has made it a State policy to protect and promote intellectual
property rights. This policy was enshrined both in the 1973 Constitution which provides
that “the exclusive right to inventions, writings and artistic creations shall be secured to
inventors, authors, and artists for a limited period” and in the 1987 Constitution which
explicitly mandates that the State shall protect intellectual property.

The Philippines became a member of the World Intellectual Property Organization [WIPO] in
1980. It was a signatory to a number of significant multilateral international agreements
and treaties for the protection and promotion of intellectual property rights.
The use of intellectual property bears a social function. To this end, the State shall promote
the diffusion of knowledge and information for the promotion of national development and
progress and the common good.

Laws repealed:
Republic Act No. 8293 repealed all Acts and parts of Acts inconsistent therewith, more
particularly:
1. Republic Act No. 165, as amended [An Act Creating a Patent Office, Prescribing its
Powers and Duties, Regulating the Issuance of Patents, and Appropriating Funds Therefor];
2. Republic Act No. 166, as amended[An Act to Provide for the Registration and
Protection of Trademarks, Trade-Names, and Service-Marks, Defining Unfair Competition
and False Marking and Providing Remedies Against the Same, and for Other Purposes].
3. Presidential Decree No. 49 [Decree on the Protection of Intellectual Property];
4. Presidential Decree No. 285, as amended [Decree on the Protection of Intellectual
Property];
5. Articles 188 and 189 of the Revised Penal Code of the Philippines.

Parts of the law:

The Intellectual Property Code of the Philippines is divided into five [5] parts, to wit:
PART I - The Intellectual Property Office
PART II - The Law on Patents
PART III - The Law on Trademarks, Service Marks and Trade Names
PART IV - The Law on Copyright
PART V - Final Provisions

What are Intellectual Properties?

Intellectual property (IP) refers to any creation or product of the human mind or intellect.
It can be an invention, an original design, a practical application of a good idea, a mark of
ownership such as trademark, literary and artistic works, among other things.

-those property rights which results from the physical manifestation of an original thought.

Sec 2. The state recognizes that an effective intellectual and industrial property system is
vital to the development of domestic and creative activity, facilities transfer of technology,
attracts foreign investments, and ensures market access for our products.
It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations, particularly when beneficial to the people,
for such periods as provided in this act.

Aside from patents, copyrights, there are other means of protecting intellectual property in
other nations:

International Conventions Governing Intellectual Property Rights

1. Berne Convention for the Protection of Literary and Artistic Works as revised by the
Brussels Act (August 1, 1951)-
Berne Convention – established in Aug. 1, 1951, for protection of literary works
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Core Principles:
1. National treatment – nationals from other states should have protection of their own
works
2. Principle of automatic protection – no need to register copyrights, from the moment
of creation right attaches
3. Principle of independence of protection – treat foreigners the way you protect
nationals

2. Paris Convention for the Protection of Industrial Property Rights (September 27, 1965)
3. International Convention for the Protection of Performers, producers of Phonograms and
Broadcasting Organizations (Rome Convention, September 25, 1984)
4. Convention establishing the World Intellectual Property Organization (July 14, 1980)
5. Budapest Treaty on the International Recognition of the deposit of microorganisms for the
purposes of patent procedure (October 21, 1981)
6. Agreement on Trade Related aspects of Intellectual Property including trade in counterfeit
goods of general agreement on Tariffs and trade
- a sub-agreement of the GATT, Principles:
1. Establishment of minimum standards of protection as to enforcement of IPR
transnationally
2. National treatment – of the IP owner
7. Patent Cooperation Treaty (August 17, 2001)
8. Madrid Protocol - entered into force in the Philippines on July 25, 2012

Intellectual Property Association of the Philippines (IPAP) v. Hon. Paquito Ochoa in

his capacity as Executive Secretary, et al. G. R. No. 204605, 19 July 2016
On 14 December 2012, the Intellectual Property Association of the Philippines (IPAP) filed
an action seeking to declare the accession of the Philippines to the Madrid Protocol as
unconstitutional. The IPAP claimed that the accession, signed only by the president,
needed the concurrence of the Senate, and that it was in conflict with Republic Act No.
8293 (the IP Code) which required that foreign trademark owners seeking protection of
their trademarks in the Philippines must file their applications through a resident agent.
On 19 July 2016, the Supreme Court issued its decision dismissing the petition of the
IPAP and ruled that the Protocol is an executive agreement that does not require the
concurrence of the Senate. It further ruled that ‘there is no conflict between the Madrid
Protocol and the IP Code’, as ‘the method of registration through the IPOPHL, as laid down
by the IP Code, is distinct and separate from the method of registration through the WIPO,
as set in the Madrid Protocol’.

9. WIPO Copyright Treaty - ratified Feb. 2002, protecting rights of authors in new
technologies

Most favored nation principle – treat all signatories similarly, no special treatment should
be given to any nation

INTERNATIONAL CONVENTION AND RECIPROCITY

Any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which:
1) 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
2) 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
rights is otherwise provided by law. (Sec. 3)

REVERSE RECIPROCITY OF FOREIGN LAWS

Section 231 – making enforceable on nationals of a foreign state all conditions,
restrictions, limitations, diminutions, requirements or penalties that may be imposed by such
foreign state on a Filipino national seeking intellectual property protection.
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❖ Reciprocal application is not automatic

Rather, the Phils. may apply to the foreign national those restrictions that his country
imposes on Filipino applicants

Mighty Corporation vs. E & J Gallo Winery

Procedural facts
Respondents sued TI in the Makati RTC for trademark and tradename infringement and
unfair competition, with a prayer for damages and preliminary injunction.
Also violating Article 6bis of the Paris Convention for the Protection of Industrial Property
(Paris Convention)[18] and RA 166 (Trademark Law),[19] specifically, Sections 22 and 23
(for trademark infringement),[20] 29 and 30[21] (for unfair competition and false
designation of origin) and 37 (for tradename infringement).
- That TI was riding in the popularity of Gallo wines.

Defense:
1. Wines and cigarettes totally unrelated products;
2. Gallo winery registration GALLO cigarettes and GALLO wines were sold through
different channels of trade;
3. GALLO cigarettes, sold at P4.60 for GALLO filters and P3 for GALLO menthols, were
low-cost items compared to Gallo Winery’s high-priced luxury wines which cost between
P98 to P242.50;
4. the target market of Gallo Winery’s wines was the middle or high-income bracket with
at least P10,000 monthly income while GALLO cigarette buyers were farmers, fishermen,
laborers and other low-income workers;
5. the dominant feature of the GALLO cigarette mark was the rooster device with the
manufacturer’s name clearly indicated as MIGHTY CORPORATION while, in the case of
Gallo Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO
GALLO or just their surname GALLO;
6. by their inaction and conduct, respondents were guilty of laches and estoppel; and 7.
petitioners acted with honesty, justice and good faith in the exercise of their right to
manufacture and sell GALLO cigarettes.

Issue: Laws applicable IP Law or Paris Convention and Trademark Law?

SC:
In summary, the Paris Convention protects well-known trademarks only (to be
determined by domestic authorities), while the Trademark Law protects all trademarks,
whether well-known or not, provided that they have been registered and are in actual
commercial use in the Philippines. Following universal acquiescence and comity, in case
of domestic legal disputes on any conflicting provisions between the Paris Convention
(which is an international agreement) and the Trademark law (which is a municipal law)
the latter will prevail.

THE GALLO WINE TRADEMARK IS NOT A WELL-KNOWN MARK IN THE CONTEXT

OF THE PARIS CONVENTION IN THIS CASE SINCE WINES AND CIGARETTES ARE NOT
IDENTICAL OR SIMILAR GOODS
GALLO wines and GALLO cigarettes are neither the same, identical, similar nor related
goods, a requisite element under both the Trademark Law and the Paris Convention.
Second, the GALLO trademark cannot be considered a strong and distinct mark in the
Philippines.
Third and most important, pursuant to our ruling in Canon Kabushiki Kaisha vs. Court
of Appeals and NSR Rubber Corporation:
“GALLO” cannot be considered a “well-known” mark within the contemplation and
protection of the Paris Convention in this case since wines and cigarettes are not identical
or similar goods:
In Kabushiki Kaisha Isetan vs. The Intermediate Appellate Court, et. al., G.R. No. 75420,
15 November 1991, the Honorable Supreme Court held that:
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‘The Paris Convention for the Protection of Industrial Property does not automatically
exclude all countries of the world which have signed it from using a tradename which
happens to be used in one country. To illustrate — if a taxicab or bus company in a town
in the United Kingdom or India happens to use the tradename ‘Rapid Transportation,’ it
does not necessarily follow that ‘Rapid’ can no longer be registered in Uganda, Fiji, or the
Philippines.

Set of guidelines in the implementation of Article 6bis of the Treaty of Paris. These
conditions are:
a) the mark must be internationally known;
b) the subject of the right must be a trademark, not a patent or copyright or anything else;
c) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark (The Parties Convention
Commentary on the Paris Convention. Article by Dr. Bogsch, Director General of the World
Intellectual Property Organization, Geneva, Switzerland, 1985)

Intellectual property rights under the I. P. Code:

The intellectual property rights under the Intellectual Property Code are as follows:
1. Copyright and related rights;
Under Part IV of the IP Code,3 which covers the law on copyright, literary and artistic
works refer to original intellectual creations in the literary and artistic domain, which are
protected from the moment of their creation.
Copyright registration is not required, but in an action for infringement, registration
shall be prima facie proof of the matters stated therein, until proved otherwise, and of
ownership of the copyright.
Under the newly amended IP Code (Republic Act No. 10372 – An Act Amending Certain
Provisions of Republic Act No. 8293, Otherwise Known as the “Intellectual Property Code of
the Philippines” and for Other Purposes, July 23, 2012) the moral right of an author insofar
as his or her right of attribution as author is concerned shall last during his or her lifetime
and in perpetuity after death and shall not be assignable or subject to license.
Copyright infringement is actionable by administrative, civil and criminal proceedings
and in the latter case punishable by imprisonment and fine. The Philippines is a signatory to
the Berne Convention for protection of literary works.

Creative Rights – protect unique expression of an idea

a. Copyright – moral right- what is protected is unique expression of an idea. So Einstein’s
e=mc2 is not protected, but the dissertation where he explained the idea is protected.
b. Neighboring rights – performer’s rights
What is protected is not idea but distinct/unique expression

2. Trademarks and service marks; – don’t protect innovation, protects goodwill

-specific mark on goods – trademarks, service marks, certification marks, geographic
indicators, trade names, trade dress
-even if not registered, as long as there is goodwill, you can sue, a “business
identification system”
-before Jan. 1, 1998, RP used first to use system (whoever uses first has the trademark)
with an exception to internationally known marks (e.g. Lacoste case)
-now, RP is a first to file jurisdiction

- Only visible signs capable of distinguishing the goods (trademarks) or services (service
marks) of an enterprise, including a stamped or marked container, are registrable in the
Philippines.
-The rights in a mark are acquired through registration made validly.
-The filing of a declaration of actual use (DAU) is required within three years from the filing
date of the applicant, with evidence of such use, otherwise the application shall be refused
or the mark shall be removed from the register.
-A certificate of trademark registration shall remain in force for 10 years, renewable for
periods of 10 years at its expiration provided that a DAU is filed within one year from the fifth
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anniversary of the date of registration of the mark, otherwise the mark shall be removed from
the register.

3. Geographic indications;
Marks consisting exclusively of signs or indications that may serve in trade to designate
a geographical origin - are not registrable in the Philippines.

4. Industrial designs – has an artistic/aesthetic appeal

The law on industrial designs and layout-designs (topographies) of integrated circuits
is included in the law on patents.
An industrial design refers to any composition of lines or colours or any three-
dimensional form that gives a special appearance to and can serve as a pattern for an
industrial product or handicraft.
It must be new or ornamental to be registrable.
Two or more industrial designs may be the subject of the same application provided
that they relate to the same subclass of the international classification or to the same set or
composition of articles. No substantive examination is conducted on an industrial design
application.
Registration ensues upon compliance with the formal requirements and shall be for a
period of five years from the filing date of the application, renewable for two consecutive
periods of five years each.

5. Patents;
Grants by the State given to someone so he will have monopoly right over his property
in exchange for him revealing something 1)new, 2) useful, and 3) has an inventive step, state
gives protection
The law on patents is Part II of the IP Code. Any technical solution of a problem in any
field of human activity that is new, involves an inventive step and is industrially applicable,
is patentable. It may relate to a product, or process or an improvement of the foregoing.

Utility Model – no inventive step so lesser right and protection but it is still useful

6. Layout designs [topographies] of integrated circuits; and

7. Protection of undisclosed information.

Trade Secrets – anything that will provide business with competitive advantage, e.g. list of
customers of marketing company
-not protected under the IP Code, but governed by contracts e.g. employee
contracts

DIFFERENCE BETWEEN COPYRIGHT, PATENT AND TRADEMARK

1) Subject Matter of the Right:
Copyright – literary, scientific or artistic work;
Patent – new, useful, and industrially applicable inventions;
Trademark – goods manufactured or produced

2) Where Right Registered:

Copyright – National Library
Patent and Trademark – IPO

3) Duration of Right:
Patent – 20 years from filing or priority date
Trademark – 10 years
Copyright – Generally up to 50 years after the death of the author.

Pearl & Dean

Facts:
Issues: (1) if the engineering or technical drawings of an advertising display unit (light box)
are granted copyright protection (copyright certificate of registration) by the National Library,
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is the light box depicted in such engineering drawings ipso facto also protected by such
copyright?
(2) or should the light box be registered separately and protected by a patent issued by the
Bureau of Patents Trademarks and Technology Transfer (now Intellectual Property Office) —
in addition to the copyright of the engineering drawings?
(3) can the owner of a registered trademark legally prevent others from using such trademark
if it is a mere abbreviation of a term descriptive of his goods, services or business?

Held:
petitioner’s position was premised on its belief that its copyright over the engineering
drawings extended ipso facto to the light boxes depicted or illustrated in said drawings.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory
grant, the rights are limited to what the statute confers. It may be obtained and enjoyed
only with respect to the subjects and by the persons, and on terms and conditions
specified in the statute. Accordingly, it can cover only the works falling within the
statutory enumeration or description.
P & D secured its copyright under the classification class “O” work. This being so, petitioner’s
copyright protection extended only to the technical drawings and not to the light box
itself because the latter was not at all in the category of “prints, pictorial illustrations,
advertising copies, labels, tags and box wraps.”
Stated otherwise, even as we find that P & D indeed owned a valid copyright, the same could
have referred only to the technical drawings within the category of “pictorial illustrations.” It
could not have possibly stretched out to include the underlying light box.

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another.

Liability for Patent Infringement?

No. For some reason or another, petitioner never secured a patent for the light boxes. It
therefore acquired no patent rights which could have protected its invention, if in fact it really
was. And because it had no patent, petitioner could not legally prevent anyone from
manufacturing or commercially using the contraption.

To be able to effectively and legally preclude others from copying and profiting from the
invention, a patent is a primordial requirement. No patent, no protection.

The difference between the two things, letters patent and copyright, may be illustrated by
reference to the subjects just enumerated. Take the case of medicines. Certain mixtures
are found to be of great value in the healing art. If the discoverer writes and publishes a
book on the subject (as regular physicians generally do), he gains no exclusive right to the
manufacture and sale of the medicine; he gives that to the public. If he desires to acquire
such exclusive right, he must obtain a patent for the mixture as a new art, manufacture or
composition of matter. He may copyright his book, if he pleases; but that only secures to
him the exclusive right of printing and publishing his book. So of all other inventions or
discoveries.

Now, whilst no one has a right to print or publish his book, or any material part thereof,
as a book intended to convey instruction in the art, any person may practice and use the art
itself which he has described and illustrated therein. The use of the art is a totally different
thing from a publication of the book explaining it. The copyright of a book on bookkeeping
cannot secure the exclusive right to make, sell and use account books prepared upon the
plan set forth in such book. Whether the art might or might not have been patented, is a
question, which is not before us. It was not patented, and is open and free to the use of the
public. And, of course, in using the art, the ruled lines and headings of accounts must
necessarily be used as incident to it.

ISSUE OF TRADEMARK INFRINGEMENT?

This issue concerns the use by respondents of the mark “Poster Ads” which petitioner’s
president said was a contraction of “poster advertising.” P & D was able to secure a trademark
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certificate for it, but one where the goods specified were “stationeries such as letterheads,
envelopes, calling cards and newsletters.”

invoking Section 20 of the old Trademark Law, ruled that “the certificate of registration
issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its
own symbol only to those goods specified in the certificate, subject to any conditions and
limitations specified in the certificate x x x. One who has adopted and used a trademark on
his goods does not prevent the adoption and use of the same trademark by others for
products which are of a different description.”

Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of P &
D to secure a trademark registration for specific use on the light boxes meant that there could
not have been any trademark infringement since registration was an essential element thereof.

Kho vs CA
KEC Cosmetics Laboratory is the registered owner of the copyrights Chin Chun Su and Oval
Facial Cream Container/Case, that she also has patent rights on Chin Chun Su & Device and
Chin Chun Su for medicated cream.
Respondent Summerville advertised and sold petitioner’s cream products under the brand
name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public.
Defense- Summerville is the exclusive and authorized importer, re-packer and distributor of
Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese
manufacturing company authorized Summerville to register its trade name Chin Chun Su
Medicated Cream with the Philippine Patent Office and other appropriate governmental
agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through
misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the
patent registration certificate, to distribute and market Chin Chun Su products in the
Philippines had already been terminated by the said Taiwanese Manufacturing Company.

-->whether the copyright and patent over the name and container of a beauty cream
product would entitle the registrant to the use and ownership over the same to the exclusion
of others.

Sc:
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another.

- Petitioner has no right to support her claim for the exclusive use of the subject trade name
and its container. The name and container of a beauty cream product are proper subjects of
a trademark inasmuch as the same falls squarely within its definition. In order to be entitled
to exclusively use the same in the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The petitioner’s copyright and
patent registration of the name and container would not guarantee her the right to the
exclusive use of the same for the reason that they are not appropriate subjects of the said
intellectual rights. Consequently, a preliminary injunction order cannot be issued for the
reason that the petitioner has not proven that she has a clear right over the said name and
container to the exclusion of others, not having proven that she has registered a trademark
thereto or used the same before anyone did.

II RECENT DEVELOPMENTS
i. Nagoya Protocol
On 28 December 2015, the Philippines acceded to the Nagoya Protocol on Access to Genetic
Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization.
The Protocol is a supplementary agreement to the 1992 Convention on Biological Diversity
(CBD), and the latter’s instrument for the implementation of its access and benefit provisions.
-The Philippines joined in approving the Cancun Declaration crafted in December 2016
during the 13th Meeting of the Conference of the Parties to the Convention on Biological
Diversity (COP 13), which recognises that ‘it is essential to live in harmony with nature as a
fundamental condition for the well-being of all life’.
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Enhancing the ability of the Philippines to contribute to the implementation of the objectives
of the CBD, on 28 February 2017, the president of the Philippines signed the Instrument of
Accession to the Paris Agreement on Climate Change, which the Senate ratified on 14 March
2017 voting 22-0.
This officially binds the Philippines to limit its average global temperatures to ‘well below 2
degrees Celsius (3.6 degrees Fahrenheit) above pre-industrial levels and to pursue efforts to
limit the temperature increase to 1.5 degrees Celsius above pre-industrial levels’.
-The Philippines is not a major carbon emitter.

ii. Patent Prosecution Highway (PPH)

On 9 February 2012, the IPOPHL joined the expanding PPH network to avail itself of the work-
sharing arrangement among IP offices. Work products from one IP office can be used
as reference by another IP office for substantive examination, thereby increasing
efficiency of examination of applications.
This agreement with the United States Patent and Trademark Office (USPTO) took effect on
29 January 2013 and would have expired on 28 January 2014, but was extended by
the IPOPHL for an indefinite period.
The PPH Agreement with the Japan Patent Office expired on 10 March 2018, the JPO and
the IPOPHL agreed to extend the program for additional three years from 12 March
2018. The trial period which will end on 11 March 2021 may be extended if necessary.
On 1 May 2015, the IPOPHL and the Korean Intellectual Property Office commenced its PPH
pilot programme that lasted for two years ending on 30 April 2017, and renewed it also
on this date.

iii. ASEAN Patent Examination Cooperation programme (ASPEC)

The ASPEC commenced on 15 June 2009, but it is only in 2014 that the IPOPHL begun
accepting ASPEC request forms, and after rules implementing the said programme had
been modified or amended.
The nine participating ASEAN Member States (AMS) are: Brunei, Cambodia, Indonesia, Laos,
Malaysia, the Philippines, Singapore, Thailand and Vietnam. The ASPEC is the first
regional patent cooperation project among intellectual property offices in the ASEAN to
use the search and examination results from another participating AMS IP Office as its
reference in its own search and examination work.
The participating AMS Office may consider the search and examination documents it shall
receive under the ASPEC. It is not, however, obliged to adopt any of the findings and
conclusions reached by the other IP Office, and shall decide whether to grant the patent
in the manner in accordance with its national laws.
The objectives of the ASPEC are to reduce work and have a faster turnaround time, and better
search and examination. All documents for the purpose of the ASPEC must be in
English.

iv. IPOPHL Regulations

a. The IPOPHL issued the Office Order No. 15-067 series of 2015, which took effect on 7 May
2015, allowing parties to have their cases mediated by the World Intellectual Property
Organization (WIPO).
This option is advantageous for international parties or those desiring to settle their disputes
involving multiple jurisdictions, and the mediation meetings can be done in locations
other than the Philippines.
Referral to mediation is mandatory for IPOPHL cases.

v. Data Privacy Act of 2012

The Data Privacy Act of 2012 of the Philippines (RA 10173) took effect on 8 September 2012
mandating the creation of the National Privacy Commission (NPC).
The NPC, however, was established some time only in March, 2016, and the implementing
rules and regulations of the Act became effective on 9 September 2016.
This brings the Philippines, with a growing IT and business processing industry, on a par with
international data protection standards.
Protected information under the implementing rules and regulations refers to personal
information such as ‘any information, whether recorded in a material form or not, from
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which the identity of an individual is apparent or can be reasonably and directly

ascertained by the entity holding the information, or when put together with other
information would directly and certainly identify an individual’.
The implementing rules and regulations also protect privileged information, such as client–
attorney communications. The implementing rules and regulations impose penalties of
imprisonment and fine for violations. Personal information controllers and processors
have one year to register data-processing systems that process sensitive personal
information of 1,000 data subjects or more with the NPC.

vi. Philippine Design Competitiveness Act of 2013 (RA 10557)

On 15 May 2013, President Aquino signed into law Republic Act No. 10557 or the Philippine
Design Competitiveness Act of 2013 with the objective of promoting and strengthening
the Philippine design industry.
One of the provisions of the Act is to promote the protection of designs by registration and
licensing through the Intellectual Property Office of the Philippines.
The implementing rules and regulations of the Act took effect on 25 October 2015.

vii. The Philippine Competition Act

The Philippine Competition Act (RA No. 10667) was signed into law on 21 July 2015 and
created the Philippine Competition Commission, a quasi-judicial body, to enforce it.
Its implementing rules and regulations took effect on 19 June 2016 with the main objective
of regulating and prohibiting combinations in restraint of trade or unfair competition.
Some of its major provisions are:

a. prohibiting: (1) anti-competitive agreements; (2) abuse of dominant position; and (3)
anticompetitive mergers and acquisitions; and
b. compulsory notification of mergers and acquisitions wherein the value of the
transactions exceed 1 billion pesos.
Anticompetitive agreements may be classified into two types: those are prohibited per se (e.g.,
price fixing) and those that contemplate controlling or setting production, markets,
technical developments, etc.
The PCA imposes administrative, civil and criminal liabilities that apply to anticompetitive
agreements. For violations involving abuse of dominant position and anticompetitive
mergers, only administrative and civil liabilities shall be imposed.

Government Agencies:
The agency of the government in charge of the implementation of the Intellectual Property
Code is the Intellectual Property Office which replaced the Bureau of Patents, Trademarks
and Technology Transfer.
-lead agency responsible for handling the registration and conflict resolution of
intellectual property rights. It was created by virtue of Republic Act No. 8293 or the
Intellectual Property Code of the Philippines, which took effect on January 1, 1998.

It is divided into six [6] Bureaus, namely:

[1] Bureau of Patents;
[2] Bureau of Trademarks;
[3] Bureau of Legal Affairs;
[4] Documentation, Information and Technology Transfer Bureau;
[5] Management Information System and EDP Bureau; and
[6] Administrative, Financial and Personnel Services Bureau.

Functions of the Intellectual Property Office:

The Intellectual Property Office is mandated under the law to:
1. Examine applications for the grant of letters patent for inventions and register utility
models and industrial designs;
2. Examine applications for the registration of marks, geographic indication and
integrated circuits;
3. Register technology transfer arrangements and settle disputes involving technology
transfer payments covered by the provisions of Part II, Chapter IX on Voluntary
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Licensing and develop and implement strategies to promote and facilitate technology
transfer;
4. Promote the use of patent information as a tool for technology development;
5. Publish regularly in its own publication the patents, marks, utility models and
industrial designs, issued and approved, and the technology transfer arrangements
registered;
6. Administratively adjudicate contested proceedings affecting intellectual property
rights; and
7. Coordinate with other government agencies and the private sector efforts to
formulate and implement plans and policies to strengthen the protection of intellectual
property rights in the country.
JURISDICTION OVER DISPUTES UNDER IPC
A. Original Jurisdiction
1) Director General (IPO)
-has original jurisdiction to resolve disputes relating to the terms of a license involving
the author’s right to public performance or other communication of his work.

2) Bureau of Legal Affairs

-has jurisdiction over the ff:
i. Opposition to applications for registration of marks;
- b. On 11 July 2016, the IPOPHL in Memorandum Circular No. 16-007 issued the Revised
Rules and Regulations on Inter Partes Proceedings (IPC).
IPC’s cover trademark opposition and cancellation actions, patent cancellations and
compulsory licensing. Its salient points are:

a. hearing/adjudication officers are authorised to issue and sign decisions and final
orders;
b. for opposition cases, for documents executed outside the Philippines, the execution
of said documents must be made within the opposition period, but the authentication
by the Philippine Consulate Office can be done after the filing of the case but the
submission of said authenticated documents must be done before the issuance of a
default order or conduct of the preliminary conference;
c. extension of period to file oppositions and answers to a total of 120 days, the third
motion for extension of which shall be based on compelling grounds;
d. decisions of the adjudication officers are appealable to the director of the Bureau of
Legal Affairs (BLA) within 10 days of receipt of the decisions; and
e. decisions of the BLA director are appealable to the Office of the Director General
within 30 days of receipt of the BLA Decision.

ii. Cancellation of trademarks;

iii. Cancellation of patents, utility models and industrial designs;
iv. Petition for compulsory licensing of patents;
v. Administrative Complaints for violations of laws involving IPR where the total
damages claimed is not less than P200,000.00

The BLA is the IPOPHL’s adjudications bureau. It has jurisdiction over intellectual
property violation cases claiming not less than 200,000 Philippine pesos in damages.
These proceedings are adversarial and trial of the case is required.
Below this amount, administrative action can be filed before the Department of Trade
and Industry’s Office of Legal Affairs.

Other proceedings are summary in nature and no trial is conducted.

-Referral to mediation is compulsory except in cases where preliminary injunctive relief is

sought.

3) Documentation, Information and Technology Transfer Bureau

-has jurisdiction to settle disputes involving technology transfer payments
 11

Border control measures

Complying with the TRIPS agreement on special border control to prohibit the entry of
certain prohibited merchandise, the Bureau of Customs (BoC) Customs Administrative
Order 6-2002 was issued establishing the administrative guidelines to expedite the
handling and disposition of prohibited goods. (defined under Trademark part)

Civil and criminal actions involving intellectual property

The regional trial courts (RTCs) designated as special commercial courts have
jurisdiction over civil and criminal actions involving intellectual property. RTCs can
issue search warrants in the case of criminal actions and writs of seizure in the case
of civil actions.

The Rules of Procedure for Intellectual Property Rights Cases govern these actions, but
the Rules of Court are applied supplementarily.

Independent of the civil and administrative sanctions imposed by law, a criminal

penalty of imprisonment from two years to five years (2-5) and a fine ranging from
50,000 to 200,000 Philippine pesos shall be imposed on any person found guilty.

Obtaining relevant evidence of infringement and discovery

Discovery is allowed for administrative, civil and criminal actions involving intellectual
property violations. However, discovery is not as widely used in the Philippines as in the
United States. In the case of administrative actions, if the information sought in discovery
can be obtained from witnesses presented during the trial, motions for discovery will be
denied.

Special commercial courts

These are regional trial courts presided over by one judge per court designated by the
Supreme Court to handle civil and criminal cases involving intellectual property cases. In
patent infringement cases, the court, on its own motion or upon motion by a party, may order
the creation of a committee of three experts to provide advice on the technical aspects of the
patent in dispute. To assist in trials involving highly technical evidence or matters, the court
may also request the IPOPHL to provide equipment, technical facilities and personnel.

Administrative cases
In actions for the cancellation of patents or any claims therein, involving highly technical
issues, on motion of any party, the Director of the BLA may order that the petition be heard
and decided by a committee composed of the Director as chairman and two members who
have the experience or expertise in the field of technology to which the patent relates.

Time to first-level decision

i. For administrative actions, it usually takes two to three years from the filing of the
complaint to the issuance of the decision by the BLA.

ii. For civil and criminal cases, it takes a little longer, about three to five years, because of
the backlog of the regional trial courts.

However, the issuance of the new procedures by the Supreme Court, allowing for the
resolution of a case on the basis of position papers, may well reduce the period for the
issuance of the decision at the regional trial court level.

Remedies
At any time before the decision is issued, whether the action is administrative or civil, the
plaintiffs or any proper party may move for and avail of the provisional remedies of
preliminary attachment and preliminary injunction.

Preliminary attachment of the adverse party’s property as security for the satisfaction of any
judgment is allowed in the following cases:
 12

(1) in an action against a party who has been guilty of fraud in procuring the registration of
a mark by false or fraudulent declaration or representation, or by any false means;

(2) in an action for unfair competition;

(3) in an action against a party who does not reside and is not found in the Philippines, or
on whom summons may be served by publication;

(4) in an action for the recovery of a specified amount of money or damages on a cause arising
from a violation of the IP Code against a party who is about to depart from the Philippines
with intent to evade the execution or judgment; or

(5) in an action against a party who has removed or disposed of property, or is about to do
so, with intent to defraud the aggrieved party.

The party applying for the order of attachment must give a bond in the amount fixed by the
court, on the condition that the applicant will pay all the costs that may be adjudged to the
adverse party and all damages he or she may sustain by reason of the attachment, if the
court shall finally adjudge the applicant was not entitled thereto.

Preliminary injunction may be granted when it is established that the applicant has a right in
esse, that the commission, continuance or non-performance of the act complained of during
the litigation would probably cause injustice to the applicant, or that a party is doing,
threatening to do or attempting to do some act in violation of the rights of the applicant
tending to render the judgment ineffectual.

Damages
No damages can be recovered for acts of infringement committed more than four years before
the institution of the action for infringement.

PRESCRIPTIVE PERIOD OF ACTIONS FOR DAMAGES UNDER THE IPC

-No damages may be recovered after four (4) years from the time the cause of action
arose (Sec. 226)

The amount of damages may be based on reasonable profit or business loss of the
complaining party.

The court may impound during the pendency of the action sales invoices and other
documents evidencing sale. For civil actions, the special commercial court may issue a writ
of seizure of the infringing goods.

Border control measures

The BoC has the power to issue a warrant of seizure and detention if it has found that a
shipment violated the Tariff and Customs Code or the IP Code. It will then give an opportunity
to the intellectual property owners to be heard. If, with due notification, no claimant, owner
or agent can be found, then such properties will be forfeited in favour of the government.

B. Appellate Jurisdiction
1) Director General
-over all decisions rendered by the ff:
• Dir. of Legal Affairs
• Dir. of Patents
• Dir. of Trademarks
• Dir. of the Documentation, Information and Technology Transfer

2) Court of Appeals
-over decisions of the Director General in the exercise of his appellate jurisdiction over
the decisions of the:
• Dir. of Legal Affairs
 13

• Dir. of Patents
• Dir. of Trademarks

3) Secretary of Trade and Industry

-over decisions of the Director General on the exercise of his appellate jurisdiction of
the Director of Documentation, Information and Technology Transfer; AND
-over decisions of the Director General in the exercise of his original jurisdiction
relating to the terms of license involving the author’s right.
Appellate review
Administrative actions, including inter partes cases decided by the BLA, are appealable
to the ODG within 30 days of the date the parties receive the decision. The ODG can
refer the case again to mediation. The ODG will request the adverse party to file its
comments. No oral argument is allowed. Decisions of the ODG are appealable to the
Court of Appeals, and the decision of the latter to the Supreme Court. A division of the
Court of Appeals is composed of three justices. Oral arguments may be allowed. The
Court of Appeals will review the facts of the case and issue its decision. The Supreme
Court, in general, only deals with questions of law, but on exceptional grounds will
rule upon questions of fact.

Alternatives to litigation
For both the IPOPHL and the regular courts, referral to mediation is mandatory. For
the IPOPHL, an alternative dispute resolution office has recently been created, giving
parties access to any and all alternative modes of dispute resolution, such as mediation
and arbitration.

TRENDS AND OUTLOOK

The IPOPHL’s efforts for the Philippines to be finally removed from the United States
Trade Representative ‘Special 301’ Report (Special 301 Report, identifying trading
partners that do not adequately or effectively protect and enforce intellectual property
(IP) rights or otherwise deny market access to U.S. innovators and creators that rely
on protection of their IP rights. The Report calls on U.S. trading partners to address
IP-related challenges with a special focus on the countries identified on the Watch List
and Priority Watch List.), which have received support from the international
community, finally bore fruit. On 28 April 2014, it was removed from the 301 List.
The Philippines remained out of the watch list from 2016 to present.

In March and April 2017, the IPOPHL issued notices to the public asking for comments
on the proposed Revised Rules and Regulations on Trademarks, and also on the IP
Violation Rules of the Bureau of Legal Affairs.

ADMINISTRATIVE PENALTIES IMPOSED FOR VIOLATIONS OF LAWS INVOLVING IPR

-The Director for Legal Affairs may impose the ff:
a) Issuance of a cease and desist order (CDO);
b) Acceptance of voluntary assurance compliance (VAC) or voluntary assurance of
discontinuance (VAD);
c) Condemnation or seizure of products subject of the offense;
d) Forfeiture of properties used in the commission of the offense;
e) Imposition of administrative fines;
f) Cancellation of permit, license, authority or registration;
g) Withholding of permit, license, authority or registration;
h) Assessment of damages;
i) Censure;
j) Analogous penalties or sanctions (Sec. 10.2 [b])
International Service for the Acquisition of Agri-Biotech Applications Inc and other
petitioners v. Greenpeace and other respondents (G.R. Nos. 209271, 209276, 209301
and 209430), 26 July 2016
On 8 December 2015, the Supreme Court, in a decision in four consolidated cases (G.R. Nos.
209271, 209276, 209301 and 209430) permanently enjoined the field testing for Bt talong
 14

(genetically modified eggplant), declared Department of Agriculture Administrative Order No.

08, series of 2002 (DAO 08) as null and void, and temporarily enjoined any application for
contained use, field testing, propagation, commercialisation and importation of genetically
modified organisms until a new administrative order is promulgated in accordance with law.
This case arose from a petition filed on 26 April 2012 by Greenpeace Southeast Asia
(Philippines), a regional office of Greenpeace International, a non-governmental
environmental organisation known for its campaign to preserve the environment and promote
peace, and some Filipino scientists, professors and ordinary citizens invoking their
constitutional right, and the right of future generations of Filipinos, to health and balanced
ecology. The objection was directed to the research and development project partly funded
by the USAID, on eggplants that are resistant to the fruit and shoot borer. As quoted by the
Supreme Court from the Field Trial Proposal of the project proponents, the crystal toxin genes
from the soil bacterium Bacillus thuringiensis (Bt) were incorporated into the eggplant
genome to produce the protein Cry1Ac, which is toxic to the targeted fruit and shoot borer,
the most destructive of insect pest of eggplants. Greenpeace claimed that the required
environmental compliance certificate was not obtained prior to project implementation; no
independent peer-reviewed study on the safety of Bt talong for human consumption and the
environment was conducted; and no public consultation was made on the areas chosen for
field testing, hence, the precautionary principle must be applied. The petitioners argued that
the precautionary principle did not apply because the field testing is only part of a continuing
study being done to ensure that the field trials have no significant and negative impact on
the environment, and that the issues raised by Greenpeace involved technical matters
pertaining to the special competence of the Bureau of Plant Industry whose determination is
entitled to great respect, and charged with the implementation of DAO 08, which covers the
importation or release into the environment of any plant that has been altered or produced
through the use of modern biotechnology, etc., and EO 514 on the National Biosafety
Framework (NBF).

On 26 July 2016, the Supreme Court reversed the above December 2015 Decision and
granted the nine motions for reconsideration filed by the proponents of Bt talong. In a
unanimous decision, the Supreme Court ruled that said cases were deemed moot and
academic by the expiration of the biosafety permits issued by the Bureau of Plant Industry
and the termination of Bt talong field trials subject of the permits, which negated the need
for the relief sought by the respondents as there was no longer any field testing to stop.

WHAT IS TECHNOLOGY TRANSFER ARRANGEMENTS

-contracts or agreements involving the transfer of systematic knowledge for the
manufacture of a product, the application of a process, or rendering of a service including
management contracts; and the transfer, assignment or licensing of all forms of intellectual
property rights, including licensing of computer software except computer software developed
for mass market. (Sec. 4)

The signing of Republic Act 8293, otherwise known as the Intellectual Property (IP) Code, on
June 6, 1997 liberalizes regulations on technology transfer registration particularly the rate
of fees or royalties and strengthens intellectual property rights protection in the Philippines.
Voluntary Licensing has been provided by the Code. Recordal with the IP Philippines of
agreements that involve transmission of rights is necessary. However, registration is no
longer required where the agreement is in conformity of the requirements of the law under
Sections 87 and 88.

Section 87 of the IP Code covers the prohibited clauses which are adverse to competition and
trade.

MANDATORY PROVISIONS
The law requires that certain mandatory provisions be incorporated in the technology
transfer agreement (TTA)
a. Philippine Law should govern the interpretation of contracts and that in case of
litigation, the venue shall be the peace where the licensee has its principal office.
 15

b. The licensee shall have continued access to improvements in techniques and

processes related to the technology for the duration of the TTA.
c. In cases of arbitration, the arbitration laws of the Philippines or of the UN
Commission or International trade law or of the International Chamber of
Commerce shall apply and the venue shall be the Philippine or any neutral
country, and
d. Payment of Philippine Taxes relating to the TTA shall be borne by the licensor.

Prohibited Clauses (Section 87, IP Code)

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;
2. Those pursuant to which the licensee reserves the right to fix the sale or resale prices
of the products manufactured on the basis of the license;
3. Those that contain restrictions regarding the volume and structure of production;
4. Those that prohibit the use of competitive technologies in a non-exclusive technology
transfer arrangement;
5. Those that establish full or partial purchase option in favor of the licensor;
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;
7. Those that require payment of royalties to the owners of patents for patents which are
not used;
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;
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;
10. Those which require payments for patents and other industrial property rights
after their expiration or termination of the technology transfer arrangement;
11. Those which require that the technology recipient shall not contest the validity
of any of the patents of the technology supplier;
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;

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 standards
prescribed by the licensor; and
14. Those which exempt the licensor from liability for non-fulfillment of his
responsibilities under the technology transfer arrangement and/or liability arising
from third party suits brought about by the use of the licensed product or the licensed
technology.

On the other hand, Section 88 of the IP Code contains provisions which need to be included
in voluntary license agreement as follows:
1. That the laws of the Philippines shall govern the interpretation of the agreement and
in the event of litigation, the venue shall be the proper court in the place where the
licensee has its principal office;
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;
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 Law
of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules
 16

of Conciliation and Arbitration of the International Chamber of Commerce shall apply

and the venue of arbitration shall be the Philippines or any neutral country; and
4. The Philippine taxes on all payments relating to the technology transfer arrangement
shall be borne by the licensor.

PATENT
 Is a document, issued, upon application, by a government office, which describes an
invention and creates a legal situation in which the patented invention can normally only be
exploited (manufactured, used, sold, imported) with the authorization of the owner of the
patent
 is an exclusive right acquired over an invention, to sell, use and make the same whether
for commerce or industry.

DISTINCTIONS :
PATENT COPYRIGHT
– When a person, - It may be
by independent vested in a
research work closely
arrives at the similar or even
same product identical to an
or that already earlier, already
patented, he is patented work,
restrained by provided that
the arm of the the former is
law from truly original,
exploiting such ie., it owes its
an invention by existence to its
reason of the creator.
patent granted
the earlier
discoverer.

 It will be remembered that what is not patentable may nevertheless be protected under
copyright law.

Patent purpose
The patent law has a three-fold purpose: “first, patent law seeks to foster and reward
invention; second, it promotes disclosures of inventions to stimulate further innovation
and to permit the public to practice the invention once the patent expires; third, the
stringent requirements for patent protection seek to ensure that ideas in the public
domain remain there for the free use of the public.”[18]

It is only after an exhaustive examination by the patent office that a patent is issued. Such
an in-depth investigation is required because “in rewarding a useful invention, the
rights and welfare of the community must be fairly dealt with and effectively guarded.
To that end, the prerequisites to obtaining a patent are strictly observed and when a
patent is issued, the limitations on its exercise are equally strictly enforced. To begin
with, a genuine invention or discovery must be demonstrated lest in the constant
demand for new appliances, the heavy hand of tribute be laid on each slight
technological advance in art.

MANZANO vs. COURT OF APPEALS [G.R. No. 113388. September 5, 1997]

The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the sum of useful
knowledge and one of the purposes of the patent system is to encourage dissemination of
information concerning discoveries and inventions.
 17

A patent has a term of protection of twenty (20) years providing an inventor significant
commercial gain. In return, the patent owner must share the full description of the invention.
This information is made available to the public in the form of the Intellectual Property Official
Gazette and can be utilized as basis for future research and will in turn promote innovation
and development.
Patentable inventions offer a technical solution to a problem in any field of human activity.
However, theories, mathematical methods, methods of treatment and artistic creations are
Non-Patentable inventions.

PATENTABILITY
To be patentable, a product must be:
a. a technical solution of a problem in any field of human activity
b. novel
c. an invention
d. industrially applicable
These criteria may apply to:
a. products
b. processes
c. improvements of either products or processes

PROCESS- consists of an act, operation, or steps or a series thereof, performed upon a

specified subject matter to produce physical result.
 where the patent is for a process, the law forbids others from using the process, and also
from manufacturing, dealing in , or importing any product obtained directly or indirectly from
such process.

PRODUCT-is broad enough a term to include every output of human ingenuity, every
tangible result of craftsmanship or partnership. It is to be noted that not all
products are patentable because not all process the requirements of patentability.
IMPROVEMENTS- to be patentable, the improvement should be non-obvious to one
skilled in the art of the original invention and is truly novel. If it is merely a
consequence of technical configuration of the original invention and is thus
“suggested” by the invention itself, the improvement is still within the dominion of
the original invention.

WHAT ARE NOT PATENTABLE?

EXCLUDED FROM PATENT PROTECTION:
1. discoveries, scientific theories and mathematical method
2. schemes, rules and methods of performing mental acts, playing games, or doing business,
and programs for computer
3. methods for treatment of the human body or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body.
4. Plant varieties or animal breeds of essentially biological process for the production of
plants or animals
5. Aesthetic creations
6. Anything which is contrary to public order or morality (Sec. 22).

-Among the inventions that are not patentable in the Philippines are methods of doing
business; computer programs; methods for treatment of the human body by surgery or
therapy; and diagnostic methods practised on humans or animals.

OBTAINING PROTECTION
i Genetic material- DNA is the hereditary material found in the nucleus of eukaryotic cells
(animal and plant) and the cytoplasm of prokaryotic cells (bacteria) that determines the
composition of the organism. DNA is found in the nucleus of every cell, and it is exactly the
 18

same in each cell. There is another type of genetic material found in cells and viruses known
as ribonucleic acid (RNA).

Genetic material may be protected by patent. Such protection is implied in Section 35.1,
which states:
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
microbiological process or the product thereof and involves the use of a microorganism that
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.

The Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial
Designs (Revised IRRs) are clearer on the protection of genetic material in Rules 408 and 409,
which are provisions on the requirements of application relating to biological materials and
microorganisms and the requirements of application relating to biological materials and
microorganisms before allowance, respectively. These rules require that a culture of the
microorganism used in the subject of the patent application be deposited in a depositary
institution.

ii Genetically altered cells, plants and animals

Genetically altered cells are protected by patent as discussed previously. A genetically altered
plant may be protected under (RA 9168) Philippine Plant Variety Protection Act of 2002. A
certificate of plant variety protection will be granted for varieties that are new, distinct,
uniform and stable. According to Section 36 of that law, the right holders of plant varieties
have the right to authorize any of the following acts:
a production or reproduction;
b conditioning for the purpose of propagation;
c offering for sale;
d selling or other marketing;
e exporting;
f importing; and
g stocking for any purpose mentioned above.

Animal breeds are excluded from the protection of a patent in Section 22.2 of the IP Code;
however, the provision includes the phrase ‘shall not preclude Congress to consider the
enactment of a law providing sui generis protection of […] animal breeds’. There is currently
no policy proposal regarding the protection of animal breeds.

iii Methods of production in cells, plants, animals

The methods of production in cells, plants and animals may be covered by microbiological
processes (see Section III.i, supra).

iv Business methods
Among the non-patentable inventions enumerated in Section 22 of the IP Code are ‘schemes,
rules and methods of […] doing business’. The Revised IRRs expand on this non-patentable
invention further in Rule 202(d) as a ‘method of doing business, such as a method or system
for transacting business without the technical means for carrying out the method or system’.

v Computer software
The provision regarding patents in the IP Code states in Section 22.2 that ‘programs for
computers’ are excluded from patent protection. However, in the Section 172.1(n) or the IP
Code, concerning copyright, ‘computer program’ is included in the enumeration of literary
and artistic works protected from the moment of their creation.

vi Methods for treating patients, both with drugs and medical procedures
 19

The method for treatment of humans or animals by surgery or therapy and diagnostic
methods practiced on the human or animal body is another item excluded from patent
protection by Section 22 of the IP Code.
REQUIREMENTS FOR PATENT:
1. NOVELTY- that which does not form part of the prior art (Sec. 23).
“Prior art” is specified under Sec. 24, to wit:
a. that which has been made available to the public anywhere in the world before the
filing date or the priority date of application
b. that which forms part of an application whether for patent, utility model or
industrial design effective in the Philippines, provided that:
b.1. the inventor or applicants are not the same
b.2. the contents of the application are published in accordance with the
requirements of patent application rules
b.3. the filing date of prior art is earlier
 thus prior art is synonymous with prejudicial disclosure
 Sec. 25 RA 8293 embodies the exception to prior art under the heading “non-prejudicial
disclosure” any disclosure of the invention made within twelve (12) months before the filing
date does not prejudice the application if the disclosure is made by:
a. inventor himself (or by anyone who has the right to patent, Sec. 25, 2)
b. patent office- when the information of the latter office comes another application
filed by the inventor that should not have been disclosed by the office
c. third person’s application when such persons information directly/indirectly comes
from the inventor himself without the inventor’s permission, or from any third
persons who obtained his information from the inventor.

2. INVENTIVENESS
 an invention involves an inventive step if, having regard to prior art, it is not obvious to
a person skilled in the art at the time of the filing date or priority date of the application
claiming the invention (Sec. 26, RA 8293).
It is suggested that the test of non-obviousness be pursued in four steps:
1. the scope and content of the prior art are determined
2. the differences between the prior art and the claims at issue are ascertained
3. the level of ordinary skill in the pertinent art is resolved
4. against this background, the obviousness or non-obviousness of the subject matter is
ascertained (60 AM JUR 2d, Patents, Sec. 144).

3. CAPABLE OF INDUSTRIAL APPLICATION (TRIPS, Sec. 5 Art. 27, par. 1)

Two requirements of industrial applicability shall be fulfilled:
a. it can be produced
b. can be used in industry (Sec. 27)

 according to TRIPS, it is synonymous with “useful”

 (Sec. 5 Art. 29 year 1, TRIPS) “an applicant for a patent shall disclose the invention in a
manner sufficiently clear and complete for the invention to be carried out by a person skilled
in the art and may require the applicant to indicate the best mode for carrying out the
invention known to the inventor at the filing date”

VARGAS vs. CHUA, et al. [G.R. No. 36650. January 27, 1933]
We have carefully examined all the plows presented as exhibits as well as the designs of those
covered by the patents, and we are convinced that no substantial difference exists between
the plow, Exhibit F, and the plow, Exhibit 3-Chua which was originally patented by the
appellee, Vargas. The only difference noted by us is the suppression of the bolt and the three
holes on the metal strap attached to the handle bar. These holes and bolt with its nut were
suppressed in Exhibit F in which the beam is movable as in the original plow. The members
of this court, with the plows in view, arrived at the conclusion that not only is there no
fundamental difference between the two plows but no improvement whatever has been made
on the latest model, for the same working and movement of the beam existed in the original
 20

model with the advantage, perhaps, that its graduation could be carried through with more
certainty by the use of the bolt which as has already been stated, was adjustable and
movable. As to the fact, upon which much emphasis was laid, that deeper furrows can be
made with the new model, we have seen that the same result can be had with the old
implement.
The appellee is not entitled to the protection he seeks for the simple reason that his plow,
Exhibit F, does not constitute an invention in the legal sense, and because, according to the
evidence, the same type of plows had been manufactured in this country and had been in
use in many parts of the Philippine Archipelago, especially in the Province of Iloilo, long before
he obtained his last patent. Consequently, its production does not presuppose the exercise
of the inventive faculty but merely of mechanical skill, which does not give a right to a patent
of an invention under the provisions of the Patent Law." In thus finding, the court may have
been right, since the Vargas plow does not appear to be such a "combination" as contains a
novel assemblage of parts exhibiting invention.

FRANK and GOHN vs. G. KOSUYAMA [G.R. No. 38010. December 21, 1933]
We agree with the trial court that, strictly speaking, the hemp stripping machine of the
plaintiffs does not constitute an invention on the ground that it lacks the elements of novelty,
originality and precedence. In fact, before the plaintiffs herein obtained their patent, they
themselves had already publicly used the same kind of machine for some months, at least,
and, various other machines, having in general, the same characteristics and important parts
as that of the said plaintiffs, were known in the Province of Davao.

AGUAS vs. DE LEON [G.R. No. L-32160. January 30, 1982]

Where the records disclose that private respondent's process is an improvement of the old
process of tile-making and that such improvement is indeed inventive and goes beyond the
exercise of mechanical skill by which private respondent has introduced a new kind of tile
for a new purpose.
The records disclose that de Leon's process is an improvement of the old process of tile
making. The tiles produced from de Leon's process are suitable for construction and
ornamentation, which previously had not been achieved by tiles made out of the old process
of tile making. De Leon's invention has therefore brought about a new and useful kind of tile.
The old type of tiles were usually intended for floors although there is nothing to prevent one
from using them for walling purposes. These tiles are neither artistic nor ornamental. They
are heavy and massive.

MANZANO vs. COURT OF APPEALS [G.R. No. 113388. September 5, 1997]

A utility model shall not be considered "new" if before the application for a patent it has been
publicly known or publicly used in this country or has been described in a printed publication
or publications circulated within the country, or if it is substantially similar to any other
utility model so known, used or described within the country.

MAGUAN vs. COURT OF APPEALS [G.R. No. L-45101. November 28, 1986]
It has been repeatedly held that an invention must possess the essential elements of novelty,
originality and precedence and for the patentee to be entitled to protection, the invention
must be new to the world. Accordingly, a single instance of public use of the invention by a
patentee for more than two years (now for more than one year only under Sec. 9 of the Patent
Law) before the date of his application for his patent, will be fatal to the validity of the patent
when issued. (Frank, et al. v. Kosuyama; Vargas v. F.M. Yaptico & Co. and Vargas v. Chua,
et al., supra).
FIRST TO FILE RULE
 Under Sec. 29 R.A. 8293, if two or more person have made the invention separately and
independently of each other the right to the patent shall belong to the person who first filed
an application for such invention.
The Philippines switched from the first-to-invent rule to the first-to-file rule when the IP
Code took effect on 1 January 1998. The Philippines acceded to the Patent Cooperation
Treaty on 17 August 2001. There are no pre-grant or post-grant oppositions to patent
 21

applications, but third parties are allowed to submit their observations in writing within
six months of publication date of the application in the e-Gazette or the request for
substantive examination by the applicant, whichever is later.

In the case of utility models and designs, the Intellectual Property Office of the Philippines
(IPOPHL) notifies the concerned community upon publication. Any person may present
written adverse information in the form of a sworn statement concerning the registrability
of the utility model or design application within 30 days of the date of publication.

These third-party observations are communicated to the applicant by the IPOPHL for
comment, and these comments are considered by the Director of Patents when granting
the patent. After the patent is granted, the available action is one of cancellation of the
patent itself, or any of the claims thereof on the grounds of lack of novelty, failure to
disclose the invention sufficiently clear and complete for it to be carried out by any person
skilled in the art, or that the patent is contrary to public order or morality.

The making, using, offering for sale, selling or importing of a patented product or a product
obtained directly or indirectly from a patented process without the authorization of the
patentee constitutes patent infringement.

However, there are certain acts that patentees cannot prevent third parties from
performing without their authorization: using a patented product that has been put on
the Philippine market by the owner of the product or with their express consent; when the
act is done privately and on a non-commercial scale or for a non-commercial purpose;
and for experiments.

An action for patent infringement may be administrative or civil. A criminal action for
patent infringement is available only if it is repeated by the infringer or by anyone in
connivance with him or her after the finality of the judgment of the court against the
infringer.

OWNERSHIP OF PATENT RIGHTS:

The right to a patent belongs to:

a. inventor, his heirs, or assigns
b. when two (2) or more persons have jointly made an invention – to them jointly
c. if two (2) or more persons have the invention separately and independent of each
other – to the person who filed an application for such invention
d. where 2 or more application are filed for the same invention – to the applicant who
has the earliest filing date or the earliest priority date (Sec. 28)

Inventions Created Pursuant to a Commission

The person who commissions the work shall own the patent, unless otherwise provided in
the contract.

In case the employee made the invention in the course of his employment contract, the patent
shall belong to:
(a) The employee, if the inventive activity is not a part of his regular duties even if
the employee uses the time, facilities and materials of the employer.
(b) The employer, if the invention is the result of the performance of his regularly-
assigned duties, unless there is an agreement, express or implied, to the contrary.

Patent Application by Persons Not Having the Right to a Patent

If a person other than the applicant, is declared by final court order or decision as having the
right to the patent, such person may, within three (3) months after the decision has become
final:
(a) Prosecute the application as his own application in place of the applicant;
(b) File a new patent application in respect of the same invention;
(c) Request that the application be refused; or
 22

(d) Seek cancellation of the patent, if one has already been issued.

Remedies of the True and Actual Inventor

If a person, who was deprived of the patent without his consent or through fraud is declared
by final court order or decision to be the true and actual inventor, the court shall order for
his substitution as patentee, or at the option of the true inventor, cancel the patent, and
award actual and other damages in his favor if warranted by the circumstances.

TERM OF A PATENT

 The term of a patent shall be twenty (20) years from the filing date of application (Sec. 54 ).
The Application.
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.
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.

Unity of Invention
The application shall relate to one invention only or to a group of inventions forming a single
general inventive concept.

Priority Date
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.

BOOTHE vs. DIRECTOR OF PATENTS [G.R. No. L-24919. January 28, 1980]
It is imperative that the application be complete in order that it may be accepted. It is
essential to the validity of Letters Patent that the specifications be full, definite, and specific.
The purpose of requiring a definite and accurate description of the process is to apprise the
public of what the patentee claims as his invention, to inform the Courts as to what they are
called upon to construe, and to convey to competing manufacturers and the dealers
information of exactly what they are bound to avoid.
The specification which petitioners submitted on March 5, 1954 was far from complete. The
defect was one of substance and not merely one of form. What petitioners claimed as their
invention was not complete determinable therefrom. Petitioners' application could be deemed
as complete only on July 2, 1963 when they submitted the additional pages on the
Specifications and Claims.
d. Filing Date
The filing date of a patent application shall be the date of receipt by the Office of at least the
following elements:
(a) An express or implicit indication that a Philippine patent is sought;
(b) Information identifying the applicant; and
(c) Description of the invention and one (1) or more claims in Filipino or English.
If any of these elements is not submitted within the period set by the Regulations, the
application shall be considered withdrawn.

Formality Examination
-if all the requirements under Sec 32 are complete.
 23

Classification and Search

An application that has complied with the formal requirements shall be classified and a
search conducted to determine the prior art.

Confidentiality Before Publication

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.

Publication of Patent Application

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 eighteen (18) months from the filing date or priority date.
After publication of a patent application, any interested party may inspect the application
documents filed with the Office.

Rights Conferred by a Patent Application

all the rights of a patentee against any person who, without his authorization, exercised any
of the rights conferred under the IP Code on Patents 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:
a. Actual knowledge that the invention that he was using was the subject matter of a
published application; or
b. 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:

→ 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.

Observation by Third Parties

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.

Request for Substantive Examination

The application shall be deemed withdrawn unless within six (6) months from the date of
publication, a written request to determine whether a patent application meets the
requirements and the fees have been paid on time.
Withdrawal of the request for examination shall be irrevocable and shall not authorize the
refund of any fee.

Amendment
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.

ISSUANCE AND REFUSAL OF PATENTS

If the application meets the requirements the Office shall grant the patent: Provided, That all
the fees are paid on time.
---If the required fees for grant and printing are not paid in due time, the application shall be
deemed to be withdrawn.
---A patent shall take effect on the date of the publication of the grant of the patent in the
IPO Gazette.

Refusal of the Application

The final order of refusal of the examiner to grant the patent shall be appealable to the
Director in accordance with this Act.
 24

EI du Pont De Nemours v. Emma Francisco in her capacity as Director General of the

Intellectual Property Office of the Philippines (IPOPHL), Et Al, G. R. 174379, 31
August 2016

This case refers to Nemours’ patent application No. 35526 filed on 10 July 1987 for
Angiotensin II Receptor Blocking Imidazole (losartan), an invention related to the treatment
of hypertension and congestive heart fracture (brand names Cozaar and Hyzaar), which was
declared by the examiner as abandoned for failure to respond to an office action issued in
1988. Nemours filed a petition for revival through another patent agent on 19 December 2000
(13 years later), claiming that the former patent agent died and they were not aware of his
death nor of the office action. The examiner denied the petition for revival, which was
sustained by the director of Patents and the Office of the Director General. On appeal to the
Court of Appeals (CA), the latter reversed the decision of the IPOPHL and ruled in favour of
Nemours, stating that there was justification ‘to relax the rules and to afford the petitioner
some relief from the gross negligence of its former lawyer’. At this point, Therapharma –
claiming that it had vested rights that would be affected by the CA decision, having produced
losartan product Lipezar, relying on the IPOPHL information that Nemours has no losartan
patent – moved to intervene in the case, which the CA granted. However, the CA corrected
itself when resolving the motions for reconsideration filed by both parties: it issued an
amended decision and ruled that the public interest would be prejudiced by the revival of
Nemours’ application. It found that losartan was used to treat hypertension, ‘a chronic
ailment afflicting an estimated 12.6 million Filipinos’, and noted that the presence of
competition lowered the price for losartan products. It also found that the revival of the
application prejudiced Therapharma Inc.’s interest, in that it had already invested more than
20 million pesos to develop its own losartan product and that it acted in good faith when it
marketed its product.

On appeal, the Supreme Court affirmed the amended decision of the CA and ruled that:

Public interest will be prejudiced if, despite petitioner’s inexcusable negligence, its Petition
for Revival is granted. Even without a pending patent application and the absence of any
exception to extend the period for revival, [the] petitioner was already threatening to pursue
legal action against respondent Therapharma, Inc. if it continued to develop and market its
losartan product, Lifezar. Once [the] petitioner is granted a patent for its losartan products,
Cozaar and Hyzaar, the loss of competition in the market for losartan products may result
in higher prices. For the protection of public interest, Philippine Patent Application No.
35526 should be considered a forfeited patent application.

Contents of Patent
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. (Secs. 19 and 20, R.A. No.
165a)

PUBLICATION UPON GRANT OF PATENTS

The grant of the patent together with other related information shall be published in the IPO
Gazette within the time prescribed by the Regulations.
Any interested party may inspect the complete description, claims, and drawings of the
patent on file with the Office.

ANNUAL FEES
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.
 25

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.

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.

SURRENDER, CORRECTION AND AMENDMENT

The owner of the patent, with the consent of all persons having grants or licenses or other
right, title or interest in and to the patent and the invention covered thereby, which have
been recorded in the Office, may surrender his patent or any claim or claims forming part
thereof to the Office for cancellation.

CANCELLATION OF PATENTS
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.
Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only.

Who may file?

Any interested person may, upon payment of the required fee, petition to cancel the patent
or any claim thereof, or parts of the claim

b. Proceedings
The petition for cancellation shall be in writing, verified by the petitioner or by any person in
his behalf who knows the facts, specify the grounds upon which it is based, include a
statement of the facts to be relied upon, and filed with the Office.
Copies of printed publications or of patents of other countries, and other supporting
documents mentioned in the petition shall be attached thereto, together with the translation
thereof in English, if not in the English language.

Notice of Hearing
Upon filing of a petition for cancellation, the Director of Legal Affairs(now Adjudication Officer)
shall forthwith serve notice of the filing thereof upon the patentee and all persons having
grants or licenses, or any other right, title or interest in and to the patent and the invention
covered thereby, as appears of record in the Office, and of notice of the date of hearing thereon
on such persons and the petitioner. Notice of the filing of the petition shall be published in
the IPO Gazette.

Cancellation of the Patent

If the Committee(Adjudication Officer) finds that a case for cancellation has been proved, it
shall order the patent or any specified claim or claims thereof cancelled.
If the Committee (Adjudication Officer) finds that, taking into consideration the amendment
made by the patentee during the cancellation proceedings, the patent and the invention to
which it relates meet the requirement of this Act, it may decide to maintain the patent as
amended: Provided, That the fee for printing of a new patent is paid within the time limit
prescribed in the Regulations.
If the fee for the printing of a new patent is not paid in due time, the patent should be
revoked.
 26

If the patent is amended under Subsection 65.2 hereof, the Bureau shall, at the same
time as it publishes the mention of the cancellation decision, publish the abstract,
representative claims and drawings indicating clearly what the amendments consist of.

Effect of Cancellation of Patent or Claim

The rights conferred by the patent or any specified claim or claims cancelled shall terminate.
Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by the
Director of Legal Affairs the decision or order to cancel by the Adjudication Officer shall be
immediately executory even pending appeal.

TRADEMARKS AND SERVICE MARKS

►DEFINITIONS:
[distinguish a trade mark from service mark from a collective mark;
distinguish a trade name from a trade or service mark]
a. Mark – 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.
b. Collective Mark –
b.1. Any visible sign designated as such in the application for registration;
b.2. Capable of distinguishing the origin or any other common characteristic, including the
quality of goods or services of different enterprises which use the sign;
b.3. Under the control of the registered owner of the collective mark.
c. Trade Name – name or designation identifying or distinguishing an enterprise.
Note: Under the IP Code, it provides for the registration of the trademarks and NOT of trade
names.

►FUNCTIONS OF TRADEMARKS:
a. Source-indicating Function;
b. Economic Function;
c. Guarantee Function;
d. Advertisement Function
a. Source-indicating Function – ability of the trademarks to distinguish the product, to which
it is affixed, from all other competing products of other manufacturers. It indicates the source
or origin of the goods on which it is used.
Since trademarks are considered as properties, application for it or its registration may be
assigned or transferred, with or without transfer of business which uses the trademark.
b. Economic Function – it plays an important role in the vast marketplace of competing goods,
targeting to attrack consumers or purchasers. The distinctiveness of a trademark plays an
important role in identifying, promoting and in appealing the product(s) to the purchasers.
c. Guarantee Function – it guarantees that the product to which the trademark is affixed,
comes up to a certain standard of quality and considered as a dinstinctive mark of the
product’s authenticity as distinguished from those of ohter manufacturers.
“Customers rely upon the trademark owner’s reputation when selecting the trademarked
goods.”
d. Advertisement Function – the guarantee function of trademarks gives effect to its
advertisement function.
The more widely advertise a branded product is, the more the courts may concede that it has
become distinctive of its proprietor’s goods.
Through advertisement, in the broadcast or print media, the owner of the product is able to
establish a nexus between the trademarked products and the public, in regions where the
owner does not manufacture or sell its own products. Therefore, the manufacturer may well
estabish and earn a reputation in countries where the trademark owner has itself no
established business connection.

►REGISTRABILITY OF TRADEMARKS:
SECTION 123. Registrability. —
123.1. A mark CANNOT be registered if it:
 27

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
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;
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;
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;
g. Is likely to mislead the public, particularly as to the nature, quality, characteristics or
geographical origin of the goods or services;
h. Consists exclusively of signs that are generic for the goods or services that they seek to
identify;
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;
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 m. Is contrary to public order or
morality.

►DOMINANCY TEST VIS-A-VIS HOLISTIC TEST:

In determining the similarity or likelihood of the confusion, jurisprdence has developed tests
– the Dominancy Test and the Holistic or Totality Test.

Dominancy Test –
a. Focuses on the similarity of the prevalent or dominant features of the competing
trademarks that might cause confusion, mistake and deception in the mind of the purchasing
public.
b. Duplication or imitation is not necessary;
c. Neither is it required that the mark sought to be registered suggest an effort to imitate;
d. Given more consideration are the aural and visual impressions created by the marks on
the buyers of the goods, giving little weight to factors like prices, quality, sales outlets, and
market segments.
 28

Holistic or Totality Test –

a. Consideration on the entirety of the mark as applied to the products, including the labels
and packaging, in determining confusing similarity.
b. The discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other.

UNFAIR COMPETITION – is the employment of deception or any other means contrary to

good faith by which a person shall pass off the goods manufactured by him or in which he
deals, or his business, or services, for those of another who has already established goodwill
for his similar goods, business or services, or any acts calculated to produce the same result.
(Sec. 29, Republic Act No. 166, as amended.)

►IDENTICAL OR RELATED GOODS AND CONFUSION OF BUSINESS:

DISTINCTIONS BETWEEN TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION:
TRADEMARK INFRINGEMENT UNFAIR COMPETITION
A person shall not be permitted to misrepresent his goods or his business as the goods or
business of another.
More limited; Broader and more inclusive.
The unauthorized use of a trademark; The passing off of one's
goods as those of another;

TRADEMARK INFRINGEMENT UNFAIR COMPETITION

Fraudulent intent is Fraudulent intent is

unnecessary; essential;

Prior registration of the Registration is not

trademark is a prerequisite necessary.

TWO TYPES OF CONFUSION IN TRADEMARK INFRINGEMENT:

a. CONFUSION OF GOODS – prudent purchaser is induced to purchase one product in the
belief that he is purchasing another, in which case defendant’s goods are then bought as the
plaintiff’s and its poor quality reflects badly on the
plaintiff’s reputation.
b. CONFUSION OF BUSINESS – goods of the parties are different but the defendant’s product
can reasonably (though mistakenly) be assumed to originate from the plaintiff, thus deceiving
the public into believing that there is some connection between the plaintiff and defendant
which, in fact, does not exist.
In summary, the Paris Convention protects well-known trademarks only, while the
Trademark Law protects all trademarks, whether well-known or not, provided that they have
been registered and are in actual commercial use in the Philippines.
Under both the Paris Convention and the Trademark Law, the protection of a registered
trademark is limited only to goods identical or similar to those in respect of which such
trademark is registered and only when there is likelihood of confusion.
Under both laws, the time element in commencing infringement cases is material in
ascertaining the registrant’s express or implied consent to another’s use of its trademark or
a colorable imitation thereof.

*Confusion of goods is evident where the litigants are actually in competition; but confusion
of business may arise between noncompeting interests as well.
In resolving whether goods are related, several factors come into play:
(a) the business (and its location) to which the goods belong
(b) the class of product to which the goods belong
(c) the product's quality, quantity, or size, including the nature of the package, wrapper or
container
(d) the nature and cost of the articles
 29

(e) the descriptive properties, physical attributes or essential characteristics with reference
to their form, composition, texture or quality
(f) the purpose of the goods
(g) whether the article is bought for immediate consumption, that is, day-to-day
household items
(h) the fields of manufacture
(i) the conditions under which the article is usually purchased and
(j) the channels of trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

►INFRINGEMENT:
The elements of infringement under R.A. No. 8293 are as follows:
a. The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;
b. The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated
by the infringer;
c. The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is applied
to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be
used upon or in connection with such goods, business or services;
d. The use or application of the infringing mark or trade name is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to the
source or origin of such goods or services or the idenity of such business; and
e. It is without the consent of the trademark or trade name owner or the assignee thereof.

In plain language Section 29 of R.A. 166 declares that a "person who has Identified in the
public the goods he manufactures or deals in, his business or services from those of others,
whether or not a right in the goodwill of the said goods, business or services so Identified,
which will be protected in the same manner as other property rights."

Unfair Competition – "any acts" calculated to result in the passing off of other goods "for those
of the one having established such goodwill."
Absent is a requirement that the goodwill sought to be protected in an action for unfair
competition must have been established in an actual competitive situation. Nor does the law
require that the deception or other means contrary to good faith or any acts calculated to
pass off other goods for those of one who has established a goodwill must have been
committed in an actual competitive situation.

►REMEDIES:
Republic Act No.
5434, which provides in its Section 2;
Sec. 2. Appeals to Court of Appeals. - Appeals to the Court of Appeals shall be filed x x x then
within ten (10) days from notice or publication, when required by law, of the resolution
denying the motion for reconsideration. No more than one motion for reconsideration shall
be allowed any party. x x x x x x x x x.

The Court has invariably ruled that perfection of an appeal within the statutory or
reglementary period is not only mandatory but also jurisdictional; failure to do so renders
the questioned decision/final order final and executory, and deprives the appellate court of
jurisdiction to alter the judgment or final order, much less to entertain the appeal. True, this
rule had been relaxed but only in highly meritorious cases to prevent a grave injustice from
being done. Such does not obtain in this case.

The crime of Unfair Competition is punishable under Article 189 of the Revised Penal Code
is a public crime. It is essentially an act against the State and it is the latter which principally
stands as the injured party.
 30

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 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.”

This is intended to protect famous marks from subsequent uses that blur distinctiveness of
the mark or tarnish or disparage it.

Section 2 of R.A. 166 Section 2-A of R.A. 166

provides for what is sets out how ownership is
registrable; acquired;

actual use in commerce is

also the test of ownership
but the mark must not
have been so appropriated
by another.
in order to register a does not require that the
trademark, one must be the actual use of a trademark
owner thereof and must must be within the
have actually used the mark Philippines.
in commerce in the
Philippines for 2 months
prior to the application for
registration.

Following universal acquiescence and comity, our municipal law on trademarks regarding
the requirement of actual use in the Philippines must subordinate an international
agreement inasmuch as the apparent clash is being decided by a municipal tribunal.
Trademark is a creation of use and, therefore registration is only an administrative
confirmation of the existence of the right of ownership of the mark, but does not perfect such
right.

Registration merely creates a prima facie presumption of the validity of the registration, of
the registrant's ownership of the trademark and of the exclusive right to the use thereof.
Registration does not perfect a trademark right.

►REGISTRATION PROCESS:
FIRST-TO-FILE AND FIRST-TO-USE
Section 122 of the IP Code inaccurately suggests that trademark rights are acquired by mere
registration in accordance with the IP Code. In truth, mere registration without actual use
does not lead to the acquisition of trademark rights since the failure to use the mark in
commerce within three years from the date of filing of an application leads to the rejection of
the application or cancellation of the registration if the certificate has been issued.
However, a trademark owner who is first to file an application for the registration of the mark
acquires a limited right to have his application examined ahead of any identical or similar
mark.
The applicant who has the earliest filing date may not necessarily end up as the registered
owner of a mark since his application may be rejected if it is identical with or confusingly
similar to, or constitutes a translation of a mark which is considered, by competent
authorities, to be well-known internationally and in the Philippines, whether or not registered
here.
Q: Who are entitled for registration of Trademarks under our jursidiction?
A: Any person who is:
 31

a. A national or
b. who is domiciled or
c. 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
d. 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.

CONTENTS AND DECLARATION OF USE

The IP Code does not require any use in commerce of the trademark at the time of filing.
However, the applicant must file a declaration of actual use of trademark and evidence to
that effect, within three (3) years from filing of the application. Otherwise, the mark shall be
removed from the registry or the application shall be refused, whether the mark involved is
well-known or not.
The declaration must be under oath and refers to only one application or registration,
containing the name and address of the registrant declaring that the mark is in actual use
in the Philippines; mark attached; and the list and names and exact location of outlets where
the products are sold or services rendered.

OWNERSHIP AS A BASIS OF REGISTRATION

The notion of “registered owner” does not mean that ownership is established by mere
registration but such registration is only a “presumptive right of ownership.”

REQUIREMENTS FOR APPLICATION

Section 124. Requirements of Application. –
124.1. The application for the registration of the mark shall be in Filipino or in English and
shall contain the following:
(a) A request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national or where he has domicile; and
the name of a State in which the applicant has a real and effective industrial or commercial
establishment, if any;
(d) Where the applicant is a juridical entity, the law under which it is organized and existing;
(e) The appointment of an agent or representative, if the applicant is not domiciled in the
Philippines;
(f) Where the applicant claims the priority of an earlier application, an indication of:
i) The name of the State with whose national office the earlier application was filed or if filed
with an office other than a national office, the name of that office,
ii) The date on which the earlier application was filed, and
iii) Where available, the application number of the earlier application;
(g) Where the applicant claims color as a distinctive feature of the mark, a statement to that
effect as well as the name or names of the color or colors claimed and an indication, in respect
of each color, of the principal parts of the mark which are in that color;
(h) Where the mark is a three-dimensional mark, a statement to that effect;
(i) One or more reproductions of the mark, as prescribed in the Regulations;
(j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in
the Regulations;
(k) The names of the goods or services for which the registration is sought, grouped according
to the classes of the Nice Classification, together with the number of the class of the said
Classification to which each group of goods or services belongs; and
(l) A signature by, or other self-identification of, the applicant or his representative.

124.3. One (1) application may relate to several goods and/or services, whether they belong
to one (1) class or to several classes of the Nice Classification.
A non-resident foreigner may apply for trademark registration if he is a national of a
member country of the Paris Convention.
 32

An applicant seeking to register foreign trade mark, trade name, or service mark or other
marks of ownership in the Philippines must prove his ownership thereof by submitting a
certified and authenticated copy of the certificate of registration issued to him by his home
country.

RIGHT OF REGISTRANT
The owner of a registered trademark 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,
containers for goods, or services which are identical or similar to those in respect of which
the trademark is registered where such use would result into likelihood of confusion.
The exclusive right of an owner of a well-known mark under Sec.
123.1 (e), which is registered in the Philippines, extends to goods or services which are not
similar to those in respect of which the mark is registered.

THE LAW ON COPYRIGHT

Copyright
system of legal protection an author enjoys in the form of expression of ideas
– is a bundle of rights e.g. JKR can sell various rights like right to publish (Scholastic), right
to make a movie from her story (Warner), right to make toys from characters (e.g., Mattel)
– a “negative right” since it prevents you from enjoying, deriving benefit– property protected
is “intellectual” – use consists of derivative rights, e.g. reproduction, translation,
dramatization

BASIC PRINCIPLES
· Works are protected by the sole fact of their creation, irrespective of their mode or form of
expression, as well as their content, quality or purpose (Sec. 172.2)
· Protection extends only to the expression of the idea, not to the idea itself or to any
procedure, system, method or operation, concept or principle, discovery or mere data.

CREATION OF A WORK
A copyright work is created when the two(2) requirements are met:
1) Originality – does not mean novelty or ingenuity, neither uniqueness nor creativity. It
simply means that the work “owes its origin to the author”
2) Expression – there must be “fixation”
To be “fixed”, a work must be embodied in a medium sufficiently:
· permanent; or
· stable
to permit it to be perceived, reproduced, or otherwise communicated for a period of more
than transitory duration.
-if it is not required that the medium be visible as long as there is a possibility of retrieval,
then there is fixation
-it is fixation that defines the time from when copyright subsists. Before fixation, there can
be no infringement.
 33

WORKS PROTECTED BY COPYRIGHT

A. Original Work – Literary and artistic works are original intellectual creations in the literary
and artistic domain protected from the moment of their creation, irrespective of their mode
or form of expression, as well as of their content, quality and purpose, and shall include in
particular: a) Books, pamphlets, articles and other writings b) Periodicals and newspapers c)
Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form d) Letters e) Dramatic or dramatico-musical
compositions; choreographic works or entertainment in dumb shows f) Musical compositions,
with or without words g) Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art; models or designs for works of art h) Original ornamental
designs or models for articles of manufacture, whether or not registrable as an industrial
design, and other works of applied art. i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography, topography, architecture or science
j) Drawings or plastic works of a scientific or technical character k) Photographic works
including works produced by a process analogous to photography; lantern slides l)
Audiovisual works and cinematographic or any process for making audio-visual recordings
m) Pictorial illustrations and advertisements
n) Computer programs
o) Other literary, scholarly, scientific and artistic works (Sec. 172)

B. Derivative Works – the following derivative works shall also be protected:

a) Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary works
b) Collections of literary, scholarly or artistic works, and compilations of data and other
materials which are original by reason of the selection or coordination or arrangement of their
contents. (Sec. 173)

WORKS NOT PROTECTED

-The following works are not protected:
1) Any idea, procedure, system, method or operation, concept, principle, discovery or mere
data as such, even if expressed, explained, illustrated, or embodied in a work;
2) News of the day and other facts having the character of mere items of press information;
3) Any official text of a legislative, administrative or legal nature, as well as any official
translation thereof. (Sec. 175)
4) Any work of the Government of the Philippines. (Sec. 176)
-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
 34

5) Pleadings;
6) Decisions of courts and tribunals.
-This pertains to the “original decisions” not to the SCRA published in volumes since
these are protected under derivative works.

Novelty – an essential element in patentability

-means that no one else in the world has come up with the same invention anywhere, anytime
-not the same with originality, although in both, you come up with a new idea-
if you develop it without outside influence, you can copyright.
Several people can own the copyright but only one person can hold the patent

RIGHTS OF AN AUTHOR
(Author – a natural person who has created the work.)
A. Economic Rights (Sec. 177)
1) Right to reproduce;
2) Right to create derivative works;
3) Right to first public distribution or first sale;
4) Right to rent out the original or a cop of an audiovisual or cinematographic work;
5) Right to public performance;
6) Right to other communication of the work to the public.
B. Moral Rights (Sec.193)
1) Right of attribution or paternity right;
2) Right of alteration or non-publication;
3) Right to preservation of integrity
4) Right not to be identified with work of others or with distorted work. Term of moral
right-lifetime of the author and
50 years after his death Waiver of moral right
1) by a written instrument (Sec.195)
2) by contribution to a collective work unless expressly reserved (Sec. 196)

PRINCIPLE OF AUTOMATIC PROTECTION

Under the Berne Convention, the enjoyment and exercise of copyright, including moral rights,
shall not be the subject of any formality.

DEFINITIONS
FOR THE PURPOSE OF THIS ACT, THE FOLLOWING TERMS HAVE THE FOLLOWING
MEANING:171.1.
"AUTHOR" IS THE NATURAL PERSON WHO HAS CREATED THE
WORK;
 35

General rule: Creator has copyright. It can be co-owned. Copyright protection lasts until 50
years after death of author. If there are two authors, it is after the second death. So include
your son for the extra 30-40 years of protection.

IN THE CASE OF WORK CREATED BY AN AUTHOR DURING AND IN THE COURSE OF HIS
EMPLOYMENT, THE COPYRIGHT SHALL BELONG 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, EXPRESS OR
IMPLIED, TO THE CONTRARY
IN THE CASE OF A WORK- COMMISSIONED BY A PERSON OTHER THAN AN EMPLOYER
OF THE AUTHOR AND WHO PAYS FOR IT AND THE WORK IS MADE IN PURSUANCE OF
THE COMMISSION,
THE PERSON WHO SO COMMISSIONED THE WORK SHALL HAVE
OWNERSHIP OF WORK, BUT THE COPYRIGHT THERETO SHALL REMAIN WITH THE
CREATOR, UNLESS THERE IS A WRITTEN STIPULATION TO THE CONTRARY;
General rule: copyright remains with author. If commissioned work is photographed and
published, infringement of right of painter. Contract has to be IN WRITING. If it is not in
writing, artist/creator retains copyright.

IN THE CASE OF AUDIO VISUAL WORK, THE COPYRIGHT SHALL BELONG TO THE
PRODUCER, THE AUTHOR OF THE SCENARIO, THE COMPOSER OF THE MUSIC, THE
FILM DIRECTOR, AND THE AUTHOR OF THE WORK SO ADAPTED.
HOWEVER, SUBJECT TO CONTRARY OR OTHER STIPULATIONS
AMONG THE CREATORS, THE PRODUCERS SHALL EXERCISE THE COPYRIGHT TO AN
EXTENT REQUIRED FOR THE EXHIBITION OF THE WORK IN ANY MANNER, EXCEPT FOR
THE RIGHT TO COLLECT PERFORMING LICENSE FEES FOR THE PERFORMANCE OF
MUSICAL COMPOSITIONS, WITH OR WITHOUT WORDS, WHICH ARE INCORPORATED
INTO THE WORK;
Q. If you want to produce DVD, who do you talk to?
A. The producer. But for infringement case, who has cause of action?

IN RESPECT OF LETTERS, THE COPYRIGHT SHALL BELONG TO THE WRITER SUBJECT

TO THE PROVISIONS OF ARTICLE 723 OF THE CIVIL CODE.
Art. 723 – Letters and other private communications in writing are owned by the person
to whom they are addressed and delivered, but they cannot be published or disseminated
 36

without the consent of the writer or his heirs. However, the court may authorize their
publication or dissemination if the public good or the interest of justice so requires.

ANONYMOUS AND PSEUDONYMOUS WORKS

THE PUBLISHERS SHALL BE DEEMED TO REPRESENT THE AUTHORS OF ARTICLES AND
OTHER WRITINGS PUBLISHED WITHOUT THE NAMES OF THE AUTHORS OR UNDER
PSEUDONYMS, UNLESS THE CONTRARY APPEARS, OR THE PSEUDONYMS OR ADOPTED
NAME LEAVES NO DOUBTS AS TO THE AUTHOR’S IDENTITY, OR IF THE AUTHOR OF THE
ANONYMOUS WORKS DISCLOSES HIS IDENTITY.
TRANSFER OR ASSIGNMENT OF COPYRIGHT
THE COPYRIGHT MAY BE ASSIGNED IN WHOLE OR IN PART. WITHIN THE SCOPE OF THE
ASSIGNMENT, THE ASSIGNEE IS ENTITLED TO ALL THE RIGHTS AND REMEDIES WHICH
THE ASSIGNOR HAD WITH RESPECT TO THE COPYRIGHT.
THE COPYRIGHT IS NOT DEEMED ASSIGNED INTER VIVOS IN WHOLE OR IN PART
UNLESS THERE IS A WRITTEN INDICATION OF SUCH INTENTION.
THE SUBMISSION OF A LITERARY, PHOTOGRAPHIC OR ARTISTIC WORK TO A
NEWSPAPER, MAGAZINE OR PERIODICAL FOR PUBLICATION SHALL CONSTITUTE ONLY
A LICENSE TO MAKE A SINGLE PUBLICATION UNLESS A GREATER RIGHT IS EXPRESSLY
GRANTED.

IF TWO(2) OR MORE PERSONS JOINTLY OWN A COPYRIGHT OR ANY PART THEREOF,

NEITHER OF THE OWNERS SHALL BE ENTITLED TO GRANT LICENSES WITHOUT THE
PRIOR WRITTEN CONSENT OF THE OTHER OWNER OR OWNERS.
COPYRIGHT AND 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.

DURATION OF COPYRIGHT
· Literary artistic works and derivative works of a SINGLE CREATOR - lifetime of the creator
and for 50 years after his death
· Joint creation – lifetime of last surviving co-creator and for 50 years after his death.
· Anonymous or a work under a pseudonym not identifiable with the true name of the creator
– 50 years after the date of their first publication.
v Except where, before the expiration of said period, the author's identity is revealed or is no
longer in doubt, the rule for single and joint creation shall apply
 37

· Photographic works – 50 years from the publication of the work, or from making the same
term is given to audiovisual works produced by photography or analogous processes.
· Work of Applied Art – 25 years from the date of making
· Newspaper Article – lifetime
e of the author and 50 years after his death v A pure news report
will no longer find protection under he new law, BUT a column or
published comment will
· The work of performers not incorporated in RECORDING, PRODUCTS OF SOUND IMAGE
RECORDINGS, and BROADCASTS, are protected for periods of 50 years, 50 years, and 20
years, respectively, counted from the end of the year of performance, recording, or
broadcasts, respectively. The term of protection shall be counted from the first day of January
of the year following the death or of last publication (Sec. 214)
FILING OF ASSIGNMENT OF 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.
** The term of protection subsequent to the death of the author shall run from the date of
his death or of publication, but such terms shall always be deemed to begin on the first day
of January of the year following the event which gave rise to them.

ASSIGNMENT AND LICENSE

Possible defenses to infringement are: 1.) you acquired copyright already – copyright was
assigned
2.) You were allowed to do the stuff you did – you have a license

ASSIGNMENT
Copyright – a body of rights so you can assign some of these rights to other people (note, only
Economic Rights are assignable. Moral Rights are not assignable/alienable.)
License
-can be free or for a fee

Sec. 183.DESIGNATION OF SOCIETY.- THE COPYRIGHT OWNERS OR THEIR HEIRS MAY

DESIGNATE A SOCIETY OF ARTISTS, WRITERS OR COMPOSERS TO ENFORCE THEIR
ECONOMIC RIGHTS AND MORAL RIGHTS ON THEIR BEHALF. This is also known as
collective administration of copyright. There is an organization called “Philippine Society of
 38

Songwriters and Recording Artists” which is designated by all its members to take charge of
the collection of annual royalty fees from broadcast companies to broadcast their songs, then
you split it among all the artists. This does away with the need of collecting royalty fees
everytime a BSB song is played. But if you’re not a member, you can’t avail of their collection
services. Gotta collect on your own.

LIMITATIONS TO THE RIGHTS ON COPYRIGHT

1) Private performance, private and personal use – applicable only “when a work has been
lawfully made accessible to the public.”
Personal Use
-making a single reproduction, adaptation, arrangement or other transformation of another’s
work exclusively for one’s own individual use in such cases as personal research, learning or
amusement
Private Use
-making a reproduction, adaptation or other transformation of it, in a single person as in the
case of “personal use” but also for a common purpose by a specific circle of persons only.
2) Fair Use of a Copyrighted Work
Fair Use - A privilege in persons other than the owner of the copyright to use the copyrighted
material in a reasonable manner without its consent, notwithstanding the monopoly granted
to the owner by the copyright.
-the doctrine of fair use is meant to balance the monopolies enjoyed by the copyright owner
with interests of the public and of society.

CRITERIA TO DETERMINE WHETHER USE IS FAIR OR NOT:

a) Purpose and the character of the use
b) Nature of the copyrighted work
c) Amount and substantially of the portions used
d) Effect of the use upon the potential market of the copyrighted work (Sec.185)

THE “FAIR-USES” OF PROTECTED MATERIAL ARE:

a) Criticizing, commenting, and news reporting;
b) Using for instructional purposes including producing multiple copies of classroom use, for
scholarship, research and similar purposes (Sec. 185)

3) WORKING OF ARCHITECTURE (Sec. 186)

-include the right to control the erection of any building which reproduces the whole or a
substantial part of the work either in its original or in any form recognizably derived from the
original; Provided, that the copyright in any such work shall not include the right to control
 39

the reconstruction, or rehabilitation in the same style as the original of a building to which
that copyright relates

4) REPRODUCTION OF PUBLISHED WORK

-exclusively for research and private study.

5) REPROGRAPHIC REPRODUCTION BY LIBRARIES

-any library or archive whose activities are not for profit may, without the authorization
of the author of copyright owner, make a single copy of the work by reprographic
reproduction.

6) REPRODUCTION OF COMPUTER PROGRAMS

-allowed on the ff. conditions:
a) only one copy is made;
b) lawful owner made the copy;
c) purpose of which the reproduction is made is legal like:
· use to which the program is made and for which it was
purchased demand the reproduction of a copy; or
· the reproduction of a copy is necessary to guarantee against loss or destruction (Sec. 189.1)

7) IMPORTATION FOR PERSONAL PURPOSES

-The importation n of a copy of a work by an individual for his personal purposes shall be
permitted without the authorization n of the author of, or other owner of copyright in, the
work under the following circumstances:
a) Copies of the work are not available in the Philippines and:
i. not more than one copy at one time is imported for strict individual use;
ii. importation is by authority and for the use of Philippine Government; or
iii. Religious, charitable, or educational society imported not more than 3 copies per title
provided they are not for sale.
b) Copies form part of libraries and personal baggage belonging to persons or families arriving
from foreign countries and are not intended for sale: Provided, that such copies do not exceed
three
(3). (Sec. 190)

REMEDIES IN CASE OF INFRINGEMENT:

1) Injunction to prevent infringement
 40

2) Damages assessed on the basis of the proof alleged by the plaintiff of sales made by the
defendant of the infringing work minus whatever costs the defendant may be able to prove
and appreciated by the court.
3) Delivery under oath of all implements employed in the production of the infringing
products themselves and the infringing items, for impounding or destruction as the court
may order.
4) Payment of moral and exemplary damages in the discretion of court.
5) Criminal Action
Criminal Penalties. - 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. (Sec. 29, P.D. No. 49a)

IP CODE AMENDMENT RA 10372

Under the IP Code amendments, Filipinos returning from abroad can bring in more than
three (3) copies of legitimate copyrighted works. Under Section 190.1 of the present RA 8293,
importation for personal purposes means that you are only entitled to import in the
Philippines up to three (3) copies of copyrighted works in your personal baggage. Once
imported, the present law also states that such copies cannot be used to violate the rights
of the copyright owner, or else you will be liable for copyright infringement (Sec. 190.2). By
 41

deleting these provisions under the amendment, there is no longer any limit to the number
of copies that can be imported. Also, importation shall not be considered copyright
infringement if it falls under the general exceptions which includes fair use (Chapter VIII,
Sec. 185 IP Code).

The deletion of Sections 190.1 and 190.2 in fact allows for religious, charitable, or
educational institutions to import more copies, for as long as they are not infringing or
pirated copies, so that more Filipino students in the country may use such works. Moreover,
the IPOPHL has a very good working relationship with the Bureau of Customs, hence, there
can be no misinterpretation of the real intention of the amendment in the Rules to be drafted
by the Commissioner of Customs.

Jailbreaking is not a crime under the amendments.

Jailbreaking or any other form of circumvention of technological measures (as defined in
Sec. 6 of the amendments), are not crimes in themselves. The amendments require that you
first be found guilty of copyright infringement, and that is the only time that jailbreaking or
circumvention of technological measures increases the imposable penalty and damages that
can be awarded by the courts. You still need to be found guilty of copyright infringement, as
jailbreaking is merely an aggravating circumstance that increases the penalty.

Downloading Pirated Music has always been Illegal.

Downloading pirated music has always been illegal, and especially detrimental to our local
artists. In fact, all organizations of Philippine singers, performers, composers, artists, and
producers, have been pushing for the amendments because they have been severely affected
by music piracy. However, even before the E-Commerce Act provision against piracy and
hacking, downloading pirated music has already been penalized by R.A. 8293, enacted as
early as 1997, which punishes copyright infringement or the reproduction of a work without
authorization by the copyright owner (Sec 177, IP Code).

Fair Use Exceptions to Copyright Infringement are now Applicable both to Copyright and
Related Rights. A single song can be the subject of many IP rights. The composer, lyricist,
etc., has “copyright” over the song, while producers, performers, and broadcasters have
“related rights” over it. Under the present IP Code, there are limitations to copyright, which
do not apply to related rights. The Bill in fact broadened such limitations and exceptions
and narrows down what acts constitute copyright infringement as to related rights. The
amendment of Sec. 212 of the IP Code in fact reinforces the general exception of fair use for
infringement of related rights.
 42

Other Beneficial Provisions of the Amendments. Moreover, the amendments to the IP Code
also propose several provisions which are beneficial to copyright stakeholders, the creative
industries, and the country in general, namely:
1. Grant of enforcement powers to IPOPHL (Sec. 2) - The bill grants visitorial powers to
IPOPHL and allows it to undertake enforcement functions with the support of concerned
agencies such as PNP, NBI, BOC, OMB and LGUs. However, as IP rights remain to be private
rights, there must be a complaint from the IP right owner.
2. Establishment of the Bureau of Copyright and Other Related Rights (Secs. 1 and 3) -
At present there is no entity performing the more substantial function of policy formulation,
rule making, adjudication, research and education, which is envisioned to be handled by
the Bureau of Copyright. Although a Copyright Division exists in the National Library, the
function of such office is ministerial in nature: to be a depository of copyrighted works. A
bureau dedicated to serving the needs of the copyright-based industries and stakeholders
could give more focus and rally more resources for these sectors.
The Copyright Bureau will support the creative industry, which is very important for
protection of works by Filipinos both here and abroad.
3. Accreditation of collective management organizations or CMOs (Sec. 10) - CMOs are
organizations that enforce the copyright of the copyright holders. Through this mandate,
IPOPHL will be able to monitor and promote good corporate governance among CMOs,
benefitting not only the rights holders themselves but also the users of copyrighted works.
Mall owners, restaurants, and other heavy users of music in their establishments will greatly
benefit from this provision, as they are ensured that only legitimate collecting agencies can
collect royalties from them on behalf of copyright owners.
4. Clarification of the concept of copyright infringement, including secondary liability
(Secs. 22 and 23) - The provisions on copyright infringement have been refined to include
contributory infringement (secondary liability), circumvention of technological measures and
rights management information as aggravating circumstances, and the option to collect
statutory damages instead of actual damages. However, under Sec. 22 of the amendments,
to be secondarily liable, a landlord or mall must: (1) benefit from the infringing activity; (2)
must have been given notice of the infringing activity and a grace period to act on the same;
and (3) has the right and ability to control the activities of the person who is doing the
infringement. The complainant has the burden of proof to provide evidence that all 3
elements are present.
5. Fair use for the blind, visually- and reading-impaired (Sec. 11) - This provision would
give a special fair use exemption for the non-commercial reproduction of works for use by
visually-impaired persons. Before this amendment, hundreds of thousands of blind Filipinos
could not buy Braille works at cheap prices because copyright protection operates. Now with
this amendment, blind and visually impaired Filipinos can have easier access to copyrighted
works in Braille.
 43

6. Formulation of IP Policies within universities and colleges (Sec. 27) - This will ensure
that the rights of the academic community (professors, researchers, students) over their
literary, scholarly and artistic works are clearly delineated and respected.

COPYRIGHT INFRINGEMENT
The must-carry rule mandates that the local television (TV) broadcast signals of an authorized
TV broadcast station, such as the GMA Network, Inc., should be carried in full by the cable
antenna television (CATV) operator, without alteration or deletion. In this case, the Central
CATV, Inc. was found not to have violated the must-carry rule when it solicited and showed
advertisements in its cable television (CATV) system. Such solicitation and showing of
advertisements did not constitute an infringement of the “television and broadcast markets”
under Section 2 of E.O. No. 205. (GMA NETWORK, INC. vs. CENTRAL CATV, INC., G.R. No.
176694, July 18, 2014)

UNFAIR COMPETITION
Section 168 of Republic Act No. 8293, otherwise known as the “Intellectual Property Code of
the Philippines” (IP Code), provides for the rules and regulations on unfair competition.
Section 168.2 proceeds to the core of the provision, describing forthwith who may be found
guilty of and subject to an action of unfair competition — that is, “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 x x x.” In this case, the Court finds the element of fraud to be wanting; hence,
there can be no unfair competition. SHANG PROPERTIES REALTY CORPORATION (formerly
THE SHANG GRAND TOWER CORPORATION) and SHANG PROPERTIES, INC. (formerly
EDSA PROPERTIES HOLDINGS, INC.) vs. ST. FRANCIS DEVELOPMENT CORPORATION,
G.R. No. 190706, July 21, 2014)

Unfair competition is defined as the passing off (or palming off) or attempting to pass off upon
the public of the goods or business of one person as the goods or business of another with
the end and probable effect of deceiving the public. This takes place where the defendant
gives his goods the general appearance of the goods of his competitor with the intention of
deceiving the public that the goods are those of his competitor. Here, it has been established
that Co conspired with the Laus in the sale/distribution of counterfeit Greenstone products
to the public, which were even packaged in bottles identical to that of the original, thereby
giving rise to the presumption of fraudulent intent. In light of the foregoing definition, it is
thus clear that Co, together with the Laus, committed unfair competition, and should,
consequently, be held liable therefor. Although liable for unfair competition, the Court deems
it apt to clarify that Co was properly exculpated from the charge of trademark infringement
considering that the registration of the trademark "Greenstone" – essential as it is in a
trademark infringement case – was not proven to have existed during the time the acts
complained of were committed. (ROBERTO CO vs. KENG HUAN JERRY YEUNG and EMMA
YEUNG, G.R. No. 212705, September 10, 2014)

ACQUISITION OF OWNERSHIP OF MARK

In trademark registration, while both competing marks refer to the word “KOLIN” written in
upper case letters and in bold font, but one is italicized and colored black while the other is
white in pantone red color background and there are differing features between the two,
registration of the said mark could be granted. It is hornbook doctrine that emphasis should
be on the similarity of the products involved and not on the arbitrary classification or general
description of their properties or characteristics. The mere fact that one person has adopted
and used a trademark on his goods would not, without more, prevent the adoption and use
of the same trademark by others on unrelated articles of a different kind. (TAIWAN KOLIN
CORPORATION, LTD. vs. KOLIN ELECTRONICS CO., INC., G.R. No. 209843, March 25, 2015)

Victorio Diaz vs. People of the Philippines and Levi StraussG.R. No. 180677, February 18,
2013
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It is the tendency of the allegedly infringing mark to be confused with the registered
trademark that is the gravamen of the offense of infringement of a registered trademark. The
acquittal of the accused should follow if the allegedly infringing mark is not likely to cause
confusion. Thereby, the evidence of the State does not satisfy the quantum of proof beyond
reasonable doubt.
FACTS: After receiving information that Diaz was selling counterfeit LEVI’S 501 jeans in his
tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private
investigation group to verify the information. Armed with the search warrants, NBI agents
searched the tailoring shops of Diaz and seized several fake LEVI’S 501 jeans from them.
Levi’s Philippines claimed that it did not authorize the making and selling of the seized jeans;
that each of the jeans were mere imitations of genuine LEVI’S 501 jeans by each of them
bearing the registered trademarks, like the arcuate design, the tab, and the leather patch;
and that the seized jeans could be mistaken for original LEVI’S 501 jeans due to the
placement of the arcuate, tab, and two-horse leather patch. Department of Justice filed two
information in the RTC of Las Piñas City, charging Diaz with violation of Section 155, in
relation to Section 170, of Republic Act No. 8293, also known as the Intellectual Property
Code of the Philippines.

ISSUE:(1) Whether the CA properly dismissed the appeal of Diaz due to the late filing of his
appellant’s brief (2) Whether or not Diaz committed trademark infringement
RULING:(1) No (2) No Under Section 7, Rule 44 of the Rules of Court, the appellant is required
to file the appellant’s brief in the CA “within forty-five (45) days from receipt of the notice of
the clerk that all the evidence, oral and documentary, are attached to the record, seven (7)
copies of his legibly typewritten, mimeographed or printed brief, with proof of service of two
(2) copies thereof upon the appellee.” Section 1(e) of Rule 50 of the Rules of Court grants to
the CA the discretion to dismiss an appeal either motu proprio or on motion of the appellee
should the appellant fail to serve and file the required number of copies of the appellant’s
brief within the time provided by the Rules of Court. The usage of the word may in Section
1(e) of Rule 50 indicates that the dismissal of the appeal upon failure to file the appellant’s
brief is not mandatory, but discretionary. Verily, the failure to serve and file the required
number of copies of the appellant’s brief within the time provided by the Rules of Court does
not have the immediate effect of causing the outright dismissal of the appeal. Under the
circumstances, the failure to file the appellant’s brief on time rightly deserved the outright
rejection of the appeal. The acts of his counsel bound Diaz like any other client. It was, of
course, only the counsel who was well aware that the Rules of Court fixed the periods to file
pleadings and equally significant papers like the appellant’s brief with the lofty objective of
avoiding delays in the administration of justice. The elements of the offense of trademark
infringement under the Intellectual Property Code are, therefore, the following:
1. The trademark being infringed is registered in the Intellectual Property Office;
2.The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
3.The infringing mark is used in connection with the sale, offering for sale, or advertising of
any goods, business or services; or the infringing mark is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or in connection
with such goods, business or services; 4.The use or application of the infringing mark is
likely to cause confusion or mistake or to deceive purchasers or others as to the goods or
services themselves or as to the source or origin of such goods or services or the identity of
such business; and 5.The use or application of the infringing mark is without the consent
of the trademark owner or the assignee thereof.
As can be seen, the likelihood of confusion is the gravamen of the offense of trademark
infringement. There are two tests to determine likelihood of confusion, namely: the
dominancy test, and the holistic test. The dominancy test focuses on the similarity of the
main, prevalent or essential features of the competing trademarks that might cause
confusion. Infringement takes place when the competing trademark contains the essential
features of another. Imitation or an effort to imitate is unnecessary. The question is whether
the use of the marks is likely to cause confusion or deceive purchasers. The holistic test
considers the entirety of the marks, including labels and packaging, in determining confusing
similarity. The focus is not only on the predominant words but also on the other features
appearing on the labels.
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The holistic test is applicable here considering that the herein criminal cases also involved
trademark infringement in relation to jeans products. Accordingly, the jeans trademarks of
Levi’s Philippines and Diaz must be considered as a whole in determining the likelihood of
confusion between them. The maong pants or jeans made and sold by Levi’s Philippines,
which included LEVI’S 501, were very popular in the Philippines. The consuming public knew
that the original LEVI’S 501 jeans were under a foreign brand and quite expensive. Such
jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not
available in tailoring shops like those of Diaz’s as well as not acquired on a “made-to-order”
basis. Under the circumstances, the consuming public could easily discern if the jeans were
original or fake LEVI’S 501, or were manufactured by other brands of jeans. Confusion and
deception were remote. Diaz used the trademark “LS JEANS TAILORING” for the jeans he
produced and sold in his tailoring shops. His trademark was visually and aurally different
from the trademark “LEVI STRAUSS & CO” appearing on the patch of original jeans under
the trademark LEVI’S 501. The word “LS” could not be confused as a derivative from “LEVI
STRAUSS” by virtue of the “LS” being connected to the word “TAILORING”, thereby openly
suggesting that the jeans bearing the trademark “LS JEANS TAILORING” came or were
bought from the tailoring shops of Diaz, not from the malls or boutiques selling original
LEVI’S 501 jeans to the consuming public. There were other remarkable differences between
the two trademarks that the consuming public would easily perceive. Moreover, based on the
certificate issued by the Intellectual Property Office, “LS JEANS TAILORING” was a registered
trademark of Diaz. He had registered his trademark prior to the filing of the present cases.21
The Intellectual Property Office would certainly not have allowed the registration had Diaz’s
trademark been confusingly similar with the registered trademark for LEVI’S 501 jeans.

Microsoft Corporation vs. Rolando Manansala, G.R. No. 166391, October 21, 2015
The gravamen of copyright infringement is not merely the authorized manufacturing of
intellectual works but rather the unauthorized performance of any of the acts covered by Sec.
5. Accordingly, the commission of any of the acts mentioned in Sec. 5 of PD 49 without
copyright owner’s consent constituted actionable copyright infringement
FACTS: Petitioner is the copyright and trademark owner of all rights relating to all versions
and editions of Microsoft software (computer programs). Private Respondent-Rolando
Manansala is doing business under the name of DATAMAN TRADING COMPANY and/or
COMIC ALLEY with business address at 3rd Floor, University Mall Building, Taft Ave.,
Manila. Private Respondent Manansala, without authority from petitioner, was engaged in
distributing and selling Microsoft computer software programs. Mr. John Benedict A. Sacriz,
a private investigator accompanied by an agent from the National Bureau of Investigation
(NBI) was able to purchase six (6) CD-ROMs containing various computer programs belonging
to petitioner. Search Warrant was issued against the premises of the private respondent. The
search warrant was served on the private respondent’s premises and yielded several illegal
copies of Microsoft programs. Petitioner, through Atty. Teodoro Kalaw IV filed an Affidavit-
Complaint in the DOJ based on the results of the search and seizure operation conducted on
private respondent’s premises.
ISSUE: Whether or not the mere selling of pirated computer software constituted copyright
infringement.

RULING:Sec. 5 of PD 49 specifically defined copyright as an exclusive right in the following

manner:
A.To print, reprint, publish, copy, distribute, multiply, sell and make photographs, photo-
engravings and pictorial illustrations of the works;
B.To make any translation or other version or extracts or arrangements or adaptations
thereof; to dramatize it if it be a non-dramatic work; to convert it into a non-dramatic work
if it be a drama; to complete or execute if it be a model or design;
C.To exhibit, perform, represent, produce, or reproduce, the work in any manner or by any
method whatever for profit or otherwise; it not reproduced in copies for sale, to sell any
manuscript or any record whatsoever thereof;
D.To make any other use or disposition of the work consistent with the laws of the land.
The gravamen of copyright infringement is not merely the authorized manufacturing of
intellectual works but rather the unauthorized performance of any of the acts covered by Sec.
5. Accordingly, the commission of any of the acts mentioned in Sec. 5 of PD 49 without
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copyright owner’s consent constituted actionable copyright infringement. Presidential Decree

No. 49 thereby already acknowledged the existence of computer programs as works or
creations protected by copyright. To hold, as the CA incorrectly did, that the legislative intent
was to require that the computer programs be first photographed, photoengraved, or
pictorially illustrated as a condition for the commission of copyright infringement invites
ridicule. Such interpretation of Section 5(a) of Presidential Decree No. 49 defied logic and
common sense because it focused on terms like “copy,” “multiply,” and “sell,” but blatantly
ignored terms like “photographs,” “photo-engravings,” and “pictorial illustrations.” In this
case, the mere sale of the illicit copies of the software programs was enough by itself to show
the existence of probable cause for copyright infringement. There was no need for the
petitioner to still prove who copied, replicated or reproduced the software programs.