CHAPTER III

Registration Disputes

Sec. 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark
may, upon payment of the required fee and within thirty (30) days after the publication referred to in
Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing
and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the
grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of
registration of marks registered in other countries or other supporting documents mentioned in the
opposition shall be filed therewith, together with the translation in English, if not in the English language.
For good cause shown and upon payment of the required surcharge, the time for filing an opposition may
be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The
Regulations shall fix the maximum period of time within which to file the opposition. (Sec. 8, R. A. No.
165a)

Sec. 135. Notice and Hearing. - Upon the filing of an opposition, the Office shall serve notice of the filing
on the applicant, and of the date of the hearing thereof upon the applicant and the oppositor and all other
persons having any right, title or interest in the mark covered by the application, as appear of record in the
Office. (Sec. 9 R. A. No. 165)

Notes:

1. Only Procedural Aspects
a. Substantive matters such as confusing similarity and infringement will be discussed in
Ch 8
2. Trademark Regulation Provisions
a. Examiner is in charge of Publication for Opposition
b. Prior Publication for Opposition, access to files per se will not be given without written
authority of the applicant
c. However, an index of pending applications containing name and address of applicant,
description of the marks, etc., will be available for public inspection
3. The IPO Arbitration Proceedings
a. IPO Order 61 provides the rules on arbitration proceedings
b. Arbitration is the legal technique for the resolution of disputes outside the courts
wherein the parties refer the dispute to one or more persons by whose decision they agree
to be legally bound. Its objective is the final disposition of disputes in a speedy and
inexpensive way.
4. Inter Partes Proceedings
a. It is a proceeding in which more than one party is involved. While one of the parties must
be an applicant or registrant, the remaining need not necessarily be either.
b. Kinds:
i. Opposition
ii. Cancellation
iii. Interference (now abolished)
iv. Concurrent Use (N/A under IP Code)
c. Kinds of Inter Partes Cases under Rules and Regulations
i. Oppositions to applications for the registration of trademark or service mark
ii. Petitions to cancel the registrations of trademarks or service mark
iii. Petition to cancel invention patents, utility model registrations, etc.
iv. Petitions for Compulsory Licensing
5. Application of Res Judicata in Inter Partes Proceedings
a. Res Judicata and its requisite elements apply to Inter Partes proceedings, as discussed in
the Mirpuri case.
6. Trademark Opposition
a. If all requirements for application for registration (S124) are in order, an examination is
conducted to determine if mark is registrable (S121 and S123) and filing date has been
established (S127). AFTER this, the application shall be published (S133.2).
b. Upon payment of the required fee and within 30 days after publication (S134), a person
who believes that he would be damaged by the registration may file a Notice of
Opposition which should:
i. Be in writing
ii. Be verified by the oppositor or by any person on his behalf who knows the facts;
if not verified within 2 months from date of filing, it will be dismissed motu
proprio
iii. Specify the grounds on which the damage is based and include a statement of
the facts relied upon
iv. Be filed with copies of certificates of registration of marks registered in other
countries or supporting documents
v. Be filed within 30 days after publication, BUT for good cause shown and upon
payment, the time for filing may be extended by the Director of Legal Affairs
who shall notify the applicant of such extension. (MAX: 120 days)
vi. Party may file an opposition in a form other than the original, such as facsimile
or photocopy provided that it is within the period to file the notice of opposition,
and that the original is filed within one month from the submission of fax or
photocopy
7. The Dismissal of Opposition does not follow that Application should be granted
8. Covering Letter does not determine Filing Date of pleading
a. A covering letter is not part of the pleading. What is important is that the pleading
reached the official within the prescribed time, regardless of the mistake in the
indorsement or covering letter.
9. Judicial Appellate Recourse; Questions of Facts
a. The decision of the IPO may be brought to the CA, and then to the SC.
b. It is well settled that the SC is not a trier of facts, but IF there is a conflicting finding of
facts between the IPO and the CA, there is a justification of the SCs review of facts. This
is one of the exceptions when the SC may review facts.
10. Opposition Proceedings vis--vis Cancellation Proceedings
a. Opposition to a registration and a petition for cancellation are alternative proceedings.
11. Equity Considerations
a. In Inter Partes proceedings, laches, estoppel may be considered and applied. Meaning,
that equity cannot be invoked when the party invoking had been in bad faith and had
come to court with unclean hands.
12. Representative or Lawyer filing Motion for Extension to file Notice of Opposition does not need
to have SPA
13. Evidence before the BLA
a. The evidence presented before the BLA may NOT be formally offered. As long as the
petition is verified and the pieces of evidence consisting of the affidavits of the witnesses
and the original of other documentary evidence are attached to the petition and properly
marked, then these shall be considered as the evidence of the petition. Quasi-judicial
agencies are not bound by technical rules of procedure.











CHAPTER IV:
THE CERTIFICATE OF REGISTRATION

Section 136. Issuance and Publication of Certificate When the period for filing the opposition has
expired, or when the Director of Legal Affairs shall have denied the opposition, the Office upon payment of
the required fee, shall issue the certificate of registration. Upon issuance of a certificate of registration,
notice thereof making reference to the publication of the application shall be published in the IPO Gazette.
(Sec. 10, R.A. No. 165)

Section 137. Registration of Mark and Issuance of a Certificate to the Owner of his Assignee.
137.1. The Office shall maintain a Register in which shall be registered marks, numbered in the order of
their registration, and all transactions in respect of each mark, required to be recorded by virtue of this law.
137.2. The registration of a mark shall include a reproduction of the mark and shall mention: its number;
the name and address of the registered owner and, if the registered owners address is outside the country,
his address for service within the country; the dates of application and registration; if priority is claimed, an
indication of this fact, and the number, date and country of the application, basis of the priority claims; the
list of goods or services in respect of which registration has been granted, with the indication of the
corresponding class or classes; and such other data as the Regulations may prescribe from time to time.
137.3. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided, That
the assignment is recorded in the Office. In case of a change of ownership, the Office shall at the written
request signed by the owner, or his representative, or by the new owner, or his representative and upon a
proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of
registration of the said mark in the name of such assignee, and for the unexpired part of the original period.
137.4. The Office shall record any change of address, or address for service, which shall be notified to it by
the registered owner.

137.5. In the absence of any provision to the contrary in this Act, communications to be made to the
registered owner by virtue of this Act shall be sent to him at his last recorded address and, at the same, at
his last recorded address for service. (Sec. 19, R.A. No. 166a)

Rule 703. Allowance of application and Issuance of Certificate of Registration
(a) When no opposition is filed within thirty (30) days after the publication for opposition, the Director of
the Bureau of Legal Affairs shall certify to the effect within two (2) months from the date of release of
the IPO Gazette where the application was published, or within fifteen (15) days from the deadline of
submission of the opposition if an extension was granted and the application is not deficient in any
formal manner. The mark shall be deemed registered the date after the expiration of the
aforementioned 30-day period for filing of opposition, or if the application is deficient in any formal
matter, on the date of the applicant has fully complied with the formal deficiencies.

(b) When an opposition is filed a mark shall be considered registered within (30) days after receipt by
oppose of a copy of the decision or final order of the Director of the BLA dismissing the opposition. If
the oppose files a motion for reconsideration but which was denied, the date of registration shall be the
date after the expiration of the balance of the period aforementioned counted from the said partys
receipt of a copy of the order denying the motion. But if the opposition is sustained but subsequently
reconsidered, the mark shall be deemed registered thirty (30) days after receipt by the opposer of the
order granting the motion for reconsideration. In all cases, the BLA Director shall issue certificates
stating the date of receipt by the parties concerned of the decision or final order.

Where the decision or the final order of the Director of BLA is appealed to the Director General, the
mark shall be deemed registered fifteen (15) days after receipt by both parties of the decision or final
order allowing the registration, unless ordered otherwise by the Court of Appeals. The office of the
Director General shall issue certificates stating the dates of receipt by the parties of the decision or
final order.

(c) If the application is deficient in any formal matter relating to form, documents, or other papers
necessary for the preparation and issuance of the certificate of registration or the publication of such
registration, or the payment for the issuance of the certificate of registration has not been paid, the
examiner shall send a notice thereof to the applicant. The applicant shall complete such deficiency
and/or pay the corresponding fee for the issuance of the certificate of registration within two (2)
months from mailing date of the notice; otherwise the application shall be declared abandoned. The
abandoned application, however, may be revived subject to the requirements of these Regulations.

(d) The issuance of the certificate of registration shall be published in the IPO Gazette and shall be entered
on the records of this Office.

The single registry system The IP Code no longer provides for a Supplemental Register. Pursuant to
Section 137, the IPO adopts a single registry system. Under Section 239, marks registered in the
Supplemental Register under RA No. 166 will remain in force but are no longer subject to renewal.

Section 138. Certificate of Registration A certificate of registration of a mark shall be prima facie
evidence of the validity of the registration, the registrants ownership of the mark, and of the registrants
exclusive right to use the same in connection with the goods or services and those that are related thereto
specified in the certificate. (Sec. 20, R.A. No. 165)
The certificate of registration is not a conclusive evidence of ownership. It is not indefeasible thus it is
no guarantee for protection.
It could become indefeasible only upon the court affirmation after a challenge has been made
It is not a mode of acquiring ownership. It creates a presumption which is rebuttable and must give
way to evidence to the contrary.
Related Goods Doctrine goods, although not specified in the certificate of registration, but are related to
the goods specified in the certificate of registration would be covered by the trademark protection extended
for that certificate of registration.
*in old trademark law, the protection is only extended to the goods specified in the certificate of
registration
The right to a trademark is limited one, in the sense that others may use the same mark on unrelated
goods.

Rationale : in unrelated goods, there is no likelihood of confusion.

Exception : Rule on well-known marks

Several factors that may be considered in determining whether goods are related
1. The business and its location to which the goods belong
2. The class of product to which the goods belong
3. The products quality, quantity, or size, including the nature of package, wrapper or container
4. The nature and cost of the articles
5. The descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality
6. The purpose of the goods
7. Whether the article is bought for immediate consumption, that is day-to-day household items
8. The field of manufacture
9. The conditions under which the article is usually purchased
10. The channels of trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

The test of whether or not the goods are related to each other is the similarity of the products involved
and not the arbitrary classification or general description of their properties or characteristics.
*important SC decision : products which are unrelated may be considered related only in cases
involving special circumstances which exist only if a famous mark is involved and there is a
demonstrated intent to capitalize on it.

Section 139. Publication of Registered Marks; Inspection of Register
139.1. The Office shall publish, in the form and within the period fixed by the Regulations, the mark
registered, in the order of their registration, reproducing all the particulars referred to in Subsection 137.2.
139.2. Marks registered at the Office may be inspected free of charge and any person may obtain copies
thereof at his own expense. This provision shall also be applicable to transactions recorded in respect of
any registered mark. (n)

Section 140. Cancellation upon Application by Registrant; Amendment or Disclaimer of Registration
Upon application of the registrant, the Office may permit any registration to be surrendered for
cancellation, and upon cancellation the appropriate entry shall be made in the records of the Office. Upon
application of the registrant and payment of the prescribed fee, the Office for good cause may permit any
registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does
not alter materially the character of the mark. Appropriate entry shall be made in the records of the Office
upon the certificate of registration or, if said certificates is lost or destroyed, upon a certified copy thereof.
(Sec. 14, R.A. No. 166)

Jurisdiction of the Examiner The Examiner shall have original jurisdiction over all matters relating to
voluntary surrender, voluntary cancellation, voluntary amendment, and voluntary disclaimer of registration,
and his decisions, when final, shall be subject to appeal to the Director in the same manner that final
decisions of the Examiners in respect of applications for registration may be appealed to the Director. In all
such matters, registrants or assignees, their attorneys or agents will deal with him exclusively, or with such
other officials and employees whom the Director may designate to assist him.
The application for cancellation of registration shall be under oath and shall be duly authenticated or
legalized if the registrant is a no non-resident
Section 141. Sealed and Certified Copies of Evidence Copies of any records, books, papers, or drawings
belonging to the Office relating to marks, and copies of registrations, when authenticated by the seal of the
Office and certified by the Director of the Administrative, Financial and Human Resource Development
Service Bureau or in his name by an employee of the Office duly authorized by said Director, shall be
evidence in all cases wherein the originals would be evidence; and any person who applies and pays the
prescribed fee shall secure such copies. (n)

Section 142. Correction of Mistakes Made by the Office Whenever a material mistake in a registration
incurred through the fault of the Office is clearly disclosed by the records of the Office, a certificate stating
the fact and nature of such mistake shall be issued without charge, recorded and a printed copy thereof shall
be attached to each printed copy of the registration. Such corrected registration shall thereafter have the
same effect as the original certificate; or in the discretion of the Director of the Administrative, Financial
and Human Resource Development Service Bureau a new certificate of registration may be issued without
charge. All certificates of correction heretofore issued in accordance with the Regulations and the
registration to which they are attached shall have the same force and effect as if such certificates and their
issuance had been authorized by this Act. (n)

Section 143. Correction of Mistakes Made by Applicant Whenever a mistake is made in a registration
and such mistake occurred in good faith through the fault of the applicant, the Office may issue a certificate
upon the payment of the prescribed fee: Provided, That the correction does not involve any change in the
registration that requires republication of the mark. (n)
The application for correction must be under oath and must specify the mistake for which correction is
sought, the manner in which it arose ad must state that it occurred in good faith.
Section 145. Duration A certificate of registration shall remain in force for ten (10) years: Provided,
That the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid
reasons based on the existence of obstacles to such use, as prescribed by the Regulations, within one (1)
year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec. 12, R.A. No. 166a)
the period of trademark protection shall be 10 years from the date of issuance of the certificate,
renewable for a period of 10 years at a time.
Within 1 month from the receipt of the declaration of actual use or reason for non-use, the Examiner
shall notify the registrant of the action taken thereon such as acceptance or refusal.
Consequence in case the mark is not continuously used A petition to cancel a registration of a mark
may be filed with the BLA by any person who believes that he is or will be damaged by the registration of
a mark at any time, if the registered owner of the mark without legitimate reason fails to use the mark
within the Phil or to cause it to be used in the Phil by virtue of a license during an uninterrupted period of
3 years or longer.

Section 147. Rights Conferred
147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having
the owners consent from using in the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the trademark is registered where such
use would result in a likelihood of confusion. In case of the use, of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is
registered in the Philippines, shall extend to goods and services which are not similar to those in respect of
which the mark is registered: Provided, That use of that mark in relation to those goods or services would
indicate a connection between those goods or services and the owner of the registered mark: Provided
further, That the interests of the owner of the registered mark are likely to be damaged by such use. (n)
While the registration of the mark confers a package of rights, the right against unfair
competition is not among them as such legal recourse can be taken even without trademark
registration.
Section 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark is
Used Registration of the mark shall not confer on the registered owner the right to preclude third parties
from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications
concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of
supply, of their goods or services: Provided, That such use is confined to the purposes of mere
identification or information and cannot mislead the public as to the source of the goods or services. (n)


CHAPTER V :
RENEWAL OF REGISTRATION

Section 146. Renewal
146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon
payment of the prescribed fee and upon filing of a request. The request shall contain the following
indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-in-interest, hereafter referred to as the
"right holder";
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the registration concerned to be renewed;
(e) Where the right holder has a representative, the name and address of that representative;
(f) The names of the recorded goods or services for which the renewal is requested or the names of
the recorded goods or services for which the renewal is not requested, grouped according to the classes of
the Nice Classification to which that group of goods or services belongs and presented in the order of the
classes of the said Classification; and
(g) A signature by the right holder or his representative.
146.2. Such request shall be in Filipino or English and may be made at any time within six (6) months
before the expiration of the period for which the registration was issued or renewed, or it may be made
within six (6) months after such expiration on payment of the additional fee herein prescribed.
146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the
reasons therefor.
146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the
requirements of this Act. (Sec. 15, R.A. No. 166a)

Rule 919. Jurisdiction of the Examiner. The Examiner shall have original jurisdiction over applications
for renewal registration, and his decisions, when final, are subject to appeal to the Director under the
conditions specified in these Regulations for appeals to the Director from the final decisions of the
Examiners in respect of applications for registration. If the Office refuses to renew the registration, it shall
notify the registrant of his refusal and the reasons therefor.
Rule 920. Need for appointing a resident agent. If the registrant, assignee or other owner of the mark
which is the subject of a petition for renewal registration is not domiciled in the Philippines, and if the
petition for renewal is being filed by a person who is not his representative or resident-agent of record, the
power of attorney appointing the person filing the petition as the representative of the registrant must be
filed and, upon payment of the required fee, must be recorded before the Office can act upon the petition
for renewal.

Rule 923. Refusal of renewal registration; appeal to the Director. The application for renewal may be
refused by the Examiner for any valid reason. The application for renewal may then be completed or
amended in response to the refusal, or the case may be appealed to the Director if the refusal has become
final.

Rule 924. Certificate of renewal of registration. The Office may issue a certificate of renewal of
registration in all cases where the request for renewal is approved and the registrant requests in writing and
pays the required fee for the issuance of said certificate. The certificate of renewal of registration shall
contain the number of the certificate of registration and the mark being renewed, the date of original
issuance thereof, the duration of the renewal registration, all the data required to be contained in a
certificate of registration provided in these Regulations including any limitation contained in the order of
the Director approving the renewal of the registration.



CHAPTER VI
ASSIGNMENT, TRANSFER, LICENSING

SECTION 149. Assignment and Transfer of Application and Registration.

149.1. An application for registration of a mark, or its registration, may be assigned or transferred with or
without the transfer of the business using the mark. (n)
149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead the public,
particularly as regards the nature, source, manufacturing process, characteristics, or suitability for their
purpose, of the goods or services to which the mark is applied.
149.3. The assignment of the application for registration of a mark, or of its registration, shall be in writing
and require the signatures of the contracting parties. Transfers by mergers or other forms of succession may
be made by any document supporting such transfer.
149.4. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the
prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee,
be provisionally recorded, and the mark, when registered, shall be in the name of the assignee or transferee.
149.5. Assignments and transfers shall have no effect against third parties until they are recorded at the
Office. (Sec. 31, R.A. No. 166a)

SECTION 150. License Contracts.
150.1. Any license contract concerning the registration of a mark, or an application therefor, shall provide
for effective control by the licensor of the quality of the goods or services of the licensee in connection with
which the mark is used. If the license contract does not provide for such quality control, or if such quality
control is not effectively carried out, the license contract shall not be valid.
150.2. A license contract shall be submitted to the Office which shall keep its contents confidential but
shall record it and publish a reference thereto. A license contract shall have no effect against third parties
until such recording is effected. The Regulations shall fix the procedure for the recording of the license
contract. (n)
*Assignment has been used to prevent a prior registrant from using the previously registered trademark;
some see this as a more convenient way to prevent the use of another similar trademark.
i.e. McDonalds simply acquired the trademark rights of a prior registrant (Rodolfo Topacio) by way of
assignment, averting any administrative or judicial case (McDonalds Corp et al v. L.C. Big Mak Burger).

TRADEMARK AS A TRANSFERABLE PROPERTY
Trademark can be a valuable asset that can be sold, transferred or assigned just like any other asset.

The Intellectual Property License
License permission to do something that, without the license, would be an infringement
of IP.
There may be more than one licensor or more than one licensee in a licence agreement.
Licensor and licensee usually agree those terms and conditions by negotiation. The
outcome of those negotiations will depend on the relative bargaining power of each
side(license-out or license-in):
a. License-out to another company or organization in return for a reward , financial
or other in-kind benefits or a combination of both.
b. License-in, if you want to use another companys IP to develop your own business
and products.
Licensing Agreementis a partnership between an intellectual property rights owner (licensor) and
another who is authorized to use such rights (licensee) in exchange for an agreed payment (fee or royalty).
Kinds of licensing agreement:
a. Technology License Agreement
b. Trademark Licensing and Franchising Agreement
c. Copyright License Agreement
Trademark License Agreement

Franchise Agreement where the owner of certain technical or other expertise who has actually gained a
reputation in connection with the use of a service mark (the franchiser) may team up with another
enterprise (franchisee) who will bring in expertise of his own or financial resources to provide goods or
services directly to the consumer.
The franchiser will ensure, through the supply of technical and management skills, that the franchisee
maintains the quality and other standards in relation to the use of the trade or service mark which often
require certain standardized features like, for example, a uniform trade dress.
*Trademark owner is well advised, and often by law or contract required, to maintain a close connection
with the licensee to ensure that the quality standards are maintained so that the consumer in not deceived.


The Trademark Regulation provisions:


Chapter 2
Recording of Assignments of Registration, or any Other Instrument Affecting the Title to any
Registered Mark, Including Licenses
Division of Registration

Rule 906. Assignment and transfer of application and registration. An application for registration of a
mark, or its registration, may be assigned or transferred with or without the transf*er of the business using
the mark.
Such assignment or transfer shall, however, be null and void if it is liable to mislead the public particularly
as regards the nature, source, manufacturing process, characteristics, or suitability for their purpose, of the
goods or services to which the mark is applied.

Rule 907. Form of assignment or transfer. (a) The assignment of the application for registration of a
mark, or of its registration, shall be notarized and require the signature of the applicant, registrant or the
assignee of record in case of subsequent assignment. Transfers by mergers or other forms of succession
may be evidenced by the deed of merger or by any document supporting such transfer.

Rule 908. Recordal of assignment or transfer. Assignments and transfers shall have no effect against
third parties until they are recorded at the Office. Assignments and transfers of registration of marks shall
be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for
registration shall, on payment of the same fee, be provisionally recorded, and the mark, when registered,
shall be in the name of the assignee or transferee.

Rule 909. Assignment, other instruments affecting the registration, or license, and translation, to be
submitted in duplicate. The original document of assignment, other instrument or license and its
translation, together with a signed duplicate thereof, shall be submitted. After recordal, the Office shall
retain the signed duplicate, and return the original to the party filing the instrument with a notation of the
fact of recording.

Rule 910. Date of receipt of instrument to be recorded considered its date of recording. The date of
recording of an assignment, other document or license is the date of its receipt at the Office in proper form
and accompanied by the full recording fee.

Rule 911. A new certificate of registration must be issued to assignee. Upon written request of an
assignee of record, and upon payment of the required fee, a new certificate of registration for the unexpired
period of the registration must be issued to the assignee.

Rule 912. Action may be taken by assignee of record in any proceeding in Office. Any action in
any proceeding in the Office which may or must be taken by a registrant or applicant may be taken by the
assignee to the exclusion of the original owner, registrant, applicant or earlier assignee, provided the
assignment has been recorded. Unless such assignment has been recorded, no assignee will be recognized
to take action.

Rule 913. Clearance of Trademark License Agreement prior to recordal.
Any trademark license agreement shall be applied for clearance with the Documentation Information and
Technology Transfer Bureau (DITTB) of the Office and shall be recorded only upon certification by the
Director of the DITTB that the agreement does not violate Sections 87 and 88 of the IP Code.

Assignment of Trademarks

Deed of Assignment is a transfer of the ownership of the mark; sufficient proof of ownership of a
trademark. It should be distinguished from a license agreement which is a contract giving another, the
licensee, the right to use the mark while the ownership of the mark is retained by the licensor.

Authorization to use a trademark may be limited to a particular product

i.e. Owner of trademark Otto for belts, bags, t-shirts, blouses, briefs, pants, jackets, jeans and bra
may authorize another (the licensee) to use the trademark for jeans only. Hence, the licensee violated the
grant of authority by illegally manufacturing and distributing aside from jeans, other products like shirts,
skirts and blouses. The owner may validly revoke the authority to use the trademark Otto (Samson v.
CA)

Trademark Royalties payment for the use of intellectual property.

Bothe licensor and licensee may use the trademark simultaneously, but not in the same market (i.e. same
type of product or service, or in the same geography).

Intellectual Property Royalty payments use or right or privilege to use in the Philippines any copyright,
patent, design or model, plan, secret formula or process, goodwill, trademark, trade brand or other like
property or right (National Internal Revenue Code).

Basis of Royalty Computation

a. Contingent Royalty Payments percentage of sales, revenues or profit.
b. Fixed Amount Amount payable up front or immediately in a lump sum amount or it can be on a
staggered basis payable on a pre-identified period of time.
c. Other schemes include minimum payable amount, milestone payments, and other payments
based upon agreement of parties

Tax implications on lease or use of intellectual property
Value Added Tax equivalent to 10% of the gross receipts, derived from sale or exchange of services,
including use or leased or properties is imposed upon sale, lease or use of intellectual properties (sec.8,
NIRC ).

Tax implications on royalties for trademark use (License Agreement)
-usually based upon the payment of royalty by the licensee to the licensor of royalty computed as a
percentage of sales (or net sales) subject to withholding tax (withholding tax on royalties).
-25% withholding tax is applied for foreign corporations

Passive vs Active Sources of Royalties
Passive subject to 20% Final Withholding tax pursuant to section 24 (B) or 27 (D) of the tax code
Active taxed in the same manner as service fees

Trademark Valuation- no hard and fast rule on ascertaining trademark value

3 Methodologies for Trademark Valuation:

a. Income approach to valuing trademarks income is discounted to present the trademark value
as a single amount. This calculates the amount trademark owner would need to pay n royalty
income if someone else owned the trademark.
b. Market approach to valuing trademarks comparable royalty rates are sourced to fuel income
approach. Comparable trademark transactions are also analyzed and benchmark to help support
the trademark valuation.
c. Cost approach to valuing trademarks - cost of creating the trademark and the cost and
associated risks of re-creating a similar trademark are key considerations when valuing
trademarks. These valuations are used primarily to support the other trademark valuation
methodologies.

Rules under voluntary licensing:

PART 3
SUMMARY PROCEDURES

CHAPTER 1. TRADEMARK LICENSE AGREEMENT

Rule 17. Clearance prior to recordal with the Office. Prior to its recordal,
any trademark license agreement covered by Section 150.1 and Section
150.2 of the IP Code shall be filed with the Bureau for clearance together with the proof of payment
of the filing fee.

Rule 18. Evaluation period. Within a period of ten (10) days, the Bureau
shall determine whether such agreement violates any of Prohibited Clauses or Mandatory the
Provisions of the IP Code.


Rule 19. Certificate of clearance. If an agreement submitted for clearance does not violate any of the
Prohibited Clauses or Mandatory Provisions of the IP Code, the Bureau
shall issue a certificate of clearance and the agreement shall be recorded by the appropriate officer in
the Office.

Rule 20. Notice to comply. Should any provision of the agreement violate any of the Prohibited
Clauses or Mandatory Provisions of the IP Code, the Bureau
shall issue a notice to the parties in the agreement informing them of the violation and
requiring them to comply with pertinent provision of the IP Code prior to recordal.


CHAPTER VIII
CANCELLATION AND NON-USE

IP CODE

SECTION 151. CANCELLATION.

151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal
Affairs by any person who believes that he is or will be damaged by the registration of a mark
under this Act as follows:
a. Within five (5) years from the date of the registration of the mark under this Act.
b. At any time, if the registered mark becomes the generic name for the goods or services, or a
portion thereof, for which it is registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is
being used by or with the permission of, the registrant so as to misrepresent the source of
the goods or services or in connection with which the mark is used. If the registered mark
becomes the generic name for less than all of the goods or services for which it is registered, a
petition to cancel the registration for only those goods or services may be filed. A
registered mark shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant public rather than purchaser
motivation shall be the test for determining whether the registered mark has become the
generic name of goods or services on or in connection with which it has been used.
c. At any time, if the registered owner of the mark without legitimate reason fails to use the
mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license
during an uninterrupted period of three (3) years or longer.

151. 2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall
likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled
in accordance with this Act. The filing of a suit to enforce the registered mark with the proper
court or agency shall exclude any other court or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of
petition to cancel the mark with the Bureau of Legal Affairs shall NOT constitute a
prejudicial question that must be resolved before an action to enforce the rights to same
registered mark may be decided. (underlined portion also Rule 8, Sec. 7 of the Regulations on
Inter Partes Proceedings)


TRADEMARK REGULATION

RULE 905. Surrender, cancellation, amendment, disclaimer, and correction to be given publicity.
Notice of cancellation, surrender, amendment, disclaimer, and correction shall be published in the IPO
Gazette. The cost of publication shall be for the account of the registrant or assignee of record, except when
the notice of correction refers to a mistake of the Office.


LOSS OF PROTECTIBILITY OF TRADEMARKS

A trademark may lose its protectability when:
1. The trademark becomes generic;
2. The trademark is abandoned;
3. Its registration was obtained fraudulently or contrary to the Code;
4. The trademark is being used to misrepresent the source of the goods or services;
5. Non-use (inexcused).

There is no time limit to cancel a mark registered or used in bad faith. (Sec. 17 of RA 166; Sec. 151 of
RA 8293; Art. 6bis(3) of the Paris Convention) Reason: EQUITY

EFFECT OF CANCELLATION: Deprive the registrant of protection from infringement from the
moment judgment or order of cancellation has become final. Registrant will have no cause of action
against an opponent.

ABANDONMENT
- May either be of the (1) application, or of the (2) trademark.
- May either be (1) voluntary, or (2) involuntary [which usually occurs by reason of neglect].

1. INVOLUNTARY ABANDONMENT

a. Abandonment of APPLICATION

Grounds:
1. Failure to satisfy the filing requirement
Office shall notify applicant who shall within a period fixed by the Regulations
complete or correct the application as required, otherwise, the application shall be
considered withdrawn. (Sec. 132.1)
An abandoned application may be REVIVED as a pending application within three
(3) months from the date of abandonment, upon good cause shown and the payment
of the required fee. (Sec. 133.4)
2. Failure to respond to an official action
Effect of a final decision of an Examiner which is NOT appealed: RES JUDICATA.
(Rule 1103)
3. Failure to pay fees
If the application is deficient in any formal matter relating to form, documents, or
other papers necessary for the preparation and issuance of the certificate of
registration or for the publication of such registration, or the payment for the
issuance of certificate of registration has not been paid, the Examiner shall send a
notice thereof to the applicant. The applicant shall complete such deficiency and/or
pay the corresponding fee for the issuance of the certificate of registration within two
(2) months from mailing date of the notice; otherwise the application shall be
declared abandoned. The abandoned application, however, may be revived subject to
the requirement of these Regulations. (Rule 703)
The applicant shall, within two (2) months from mailing date of such notice, pay the
corresponding fee for the publication of the application in the IPO Gazette;
otherwise, the application shall be declared abandoned. The abandoned application,
however, may be revived subject to the requirement of the Regulations. (Rule 700)

b. Abandonment of TRADEMARK

Filing of Declaration of Actual Use (DAU) is mandatory. (Sec. 124.2)
Failure to file DAU = abandonment/withdrawal of any right or interest in the
trademark
The application shall be refused or the mark shall be removed from the register by
the Director motu proprio (Rule 204)

2. VOLUNTARY ABANDONMENT

a. Express Abandonment of Application
An application may be expressly abandoned by filing with the Bureau a written
declaration of abandonment signed by the applicant himself or by the assignee of
record. (Rule 619)

b. Voluntary Abandonment of Trademark
Sec. 151.1(c) of IP Code
Failure to file DAU

Disuse must be permanent and not ephemeral.
It must be intentional and voluntary and NOT involuntary or even compulsory.
There must be a thoroughgoing discontinuance of any trademark use in the mark in
question.
Non-use of a trademark on an article of merchandise due to legal restrictions or
circumstances beyond ones control is NOT to be considered as abandonment.
Actual intention to abandon must be shown.


After the filing of an INTER PARTES case for cancellation of a mark by one party, the adverse party may
file a SUBSEQUENT ACTION FOR INFRINGEMENT with the regular courts in connection with the
same registered mark.
Rationale: Certificate of Registration remains valid and subsisting for as long as it has not been cancelled
by the Bureau or by an infringement court.

Cases:
1. Developers Group of Companies v. CA, et al.
2. Levi Strauss (Phils.), Inc. v. Vogue Traders Clothing Co.
3. La Chemise Lacoste, S.A. v. Fernandesz, et al.

A petition for the suspension of the criminal action based upon the pendency of a pre-judicial
question in a civil case, may only be presented by any party before or during the trial of the
criminal action.

The case which suspends the criminal prosecution must be a civil case which is determinative of
the innocence or, subject to the availability of other defenses, the guilt of the accused. The pending
case before the Patent Office is an administrative proceeding and not a civil case. The decision of
the Patent Office cannot be finally determinative of the private respondents innocence of the
charges against him. (Sec. 5, Rule 111, Rules of Court)


IP CODE

SECTION 152. NON-USE OF A MARK WHEN EXCUSED.

152.1. Non-use of mark may be excused if caused by circumstances arising independently of the will of
the trademark owner. Lack of funds shall not excuse non-use of a mark.

152.2. The use of the mark in a form different from the form in which it is registered, which does alter its
distinctive character, shall not be ground for cancellation or removal of the mark and shall not
diminish the protection granted to the mark.

152.3. The use of a mark in connection with one or more of the goods or services belonging to the class
in respect of which the mark is registered shall prevent its cancellation or removal in respect of all
other goods or services of the same class.

152.4. The use of a mark by a company related with the registrant or applicant shall inure to the latters
benefit, and such use shall not affect the validity of such mark or of its registration: Provided, That
such mark is NOT used in such a manner as to deceive the public. If use of a mark by a person is
controlled by the registrant or applicant with respect to the nature and quality of the goods or
services, such use shall inure to the benefit of the registrant or applicant.

SECTION 153. REQUIREMENTS OF PETITION; NOTICE AND HEARING. Insofar as applicable, the
petition for cancellation shall be in the same form as that provided in Section 134 hereof, and notice and
hearing shall be as provided in Section 135 hereof.

SECTION 154. CANCELLATION OF REGISTRATION. If the Bureau of Legal Affairs finds that a case
for cancellation has been made out, it shall order the cancellation of the registration. When the order or
judgment becomes final, any right conferred by such registration upon the registrant or any person in
interest of record shall terminate. Notice of cancellation shall be published in the IPO Gazette.

TRADEMARK REGULATION

RULE 802. Non-use of a Mark When Excused. (a) Non-use of a mark may be excused if
circumstances arising independently of the will of the trademark owner. Lack of funds
shall not excuse non-use of a mark.

(b) The special circumstances to excuse non-use in affidavits of non-use shall not be
accepted unless they are clearly beyond the control of the registrant such as the
prohibition of sale imposed by government regulation.

RULE 803. Use of a Mark in a different form. The use of the mark in a form different in which it
is registered, which does not alter its distinctive character, shall not be ground for
cancellation or removal of the mark and shall not diminish the protection granted to the
mark.

RULE 804. Use of a Mark for goods belonging to the class registered. The use of a mark in
connection with one or more of the goods or services belonging to the class in respect of
which the mark is registered shall prevent its cancellation or removal in respect of all
other goods or services of the same class.

RULE 805. Use of a Mark by Related Company. The use of a mark by a company related with
the registrant or applicant shall inure to the latters benefit, and such use shall not affect
the validity of such mark or of its registration: Provided: That such mark is not used in
such manner as to deceive the public. If use of a mark by a person is controlled by the
registrant or applicant with respect to the nature and quality of the goods or services, such
use shall inure to the benefit of the registrant or applicant.

REGULATIONS ON INTER PARTES PROCEEDINGS

RULE 8
CANCELLATION OF REGISTRATION OF MARKS

Section1. Who may file a petition for cancellation. Any person who believes that he is or will be damaged
by the registration of a mark may file with the Bureau a petition to cancel such registration.

Section 2. When may a petition be filed. The petition for cancellation of the registration of a mark may be
filed:
a. Within five (5) years from the date of registration of the mark under the IP Code;
b. At any time, if the registered mark becomes the generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently
or contrary to the provisions of the IP Code, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the goods or services on or in
connection with which the mark is used. If the registered mark becomes the generic name for less than
all of the goods or services for which it is registered, a petition to cancel the registration for only those
goods or services may be filed. A registered mark shall not be deemed to be the generic name of
goods or services solely because such mark is also used as a name of or to identify a unique product or
service. The primary significance of the registered mark to the relevant public rather than purchaser
motivation shall be the test for determining whether the registered mark has become the generic name
of goods or services on or in connection with which it has been used. Evidence on purchaser
motivation shall not be admitted;
c. At any time, if the registered owner of the mark without legitimate reason fails to use the mark within
the Philippines, or to cause it to be used in the Philippines by virtue of a license during an
uninterrupted period of at least three (3) years.

Section 3. Contents of petition for cancellation. The petition for cancellation shall give the name and
address of the petitioner as well as those of the necessary party or parties respondent; and shall state the
registration number and date of the registration sought to be cancelled; the name of the registrant; the
statutory ground or grounds upon which cancellation is sought; the ultimate facts constituting the
petitioners cause or causes of action and the relief sought.

Section 4. Verification of petition. A petition for cancellation filed in triplicate shall be verified by the
petitioner or by any person in his behalf who knows the facts.

Section 5. Service of petition and notice of hearing. Upon the filing of a petition for cancellation in proper
form and payment of the required fee, the Director shall cause a copy of such petition to be served on the
party or parties respondent, requiring such party or parties to answer the petition. After the issues have
been joined, the Director will cause a date to be set for the hearing of the case, which will be communicated
to both parties.

Section 6. Power of the Bureau to cancel the mark in the exercise of its power to hear and adjudicate any
action to enforce the rights to a registered mark. Notwithstanding the foregoing provisions, the court or
the Bureau shall, in the exercise of its power to hear and adjudicate any action to enforce the rights to a
registered mark, likewise determine whether the registration of said mark may be cancelled in accordance
with the IP Code.

Section 7. Effect of filing of a suit before the Bureau or with the proper court. The filing of a suit to
enforce the registered mark with the proper court or Bureau shall exclude any other court or agency from
assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the
earlier filing of petition to cancel the mark with the Bureau shall not constitute a prejudicial question that
must be resolved before an action to enforce the rights to same registered mark may be decided.

Section 8. Cancellation of registration. If the Bureau finds that a case for cancellation has been made out,
it shall order the cancellation of the registration. When the order or judgment becomes final, any right
conferred by such registration upon the registrant or any person in interest of record shall terminate. Notice
of cancellation shall be published in the IPO Gazette.


AFFIDAVIT OF NON-USE
- An instrument whose purpose is to put forth excusable reasons or justifiable circumstances for the
non-use of the mark. (for format, see pages 282-283, Trademark Law of the PH by Funa)

- DNU allowed only under Section 145., subject to the requirements of Sec. 152 that the non-use be
excused.

CANCELLATION PROCEEDING (for sample of cancellation, see page 288-289, Law of the PH by
Funa)
- An inter partes proceeding brought to eliminate the registration of a mark.
- Commenced by the filing of a Petition for Cancellation and paying the fee therefor.
- Shall be in the same form as in opposition proceedings.

CANCELLATION PETITIONER
- The party requesting the cancellation; a party plaintiff in a lawsuit

REGISTRANT
- The party owning the registration sought to be cancelled; defendant

The trademark registration of a petitioner in a Petition for Cancellation can be cancelled
notwithstanding the absence of a petition to cancel his registration.
REASON: Quasi-judicial and administrative bodies not required to observe technical rules of
procedure. Otherwise, purpose of trademark registration system shall be defeated.

Cases:
1. Superior Commercial Ent., Inc. v. Kunnan Ent. Ltd. et al.
2. American Cyanamid Company v. Director of Patents
3. E.Y. Industrial Sales, Inc. v. Shen Dar Electricity and Machinery Co., Ltd.


CHAPTER XI
OFFENSES RELATING TO TRADEMARKS

1. Infringement of trademark distinguished from unfair competition.

- Trademark infringement is a form of unfair competition. Infringement of trademark is distinguished
from unfair competition as follows:

Infringement of trademark is the unauthorized us of
a trademark
Whereas unfair competition is the passing off of
ones goods as those of another
In infringement of trademark fraudulent intent is
unnecessary
Whereas in unfair competition fraudulent intent is
essential
In infringement of trademark the prior registration
of the trademark is a prerequisite to the action
Whereas in unfair competition is registration is not
necessary

Mighty Corporation et al. v. E & J Gallo Winery et al.
The law on trademark is thus a specialized subject distinct from the law on unfair competition,
although the two subjects are entwined with each other and are dealt with together in the Trademark Law.

In McDonalds Corporation v. L.C. Big Mak Burger, Inc.:
There can be trademark infringement without unfair competition as when the infringer discloses on
the labels containing the mark that he manufactures the goods, thus preventing the public from being
deceived that the goods originate from the trademark owner.

La Insular Cigar and Cigarettte Factory Inc. V. B. E. Jao Oge
The generic tort is unfair competition, of which the other two may be considered special forms.


2. Trademark registration is not required in an action for unfair competition.

- this chapter speaks of offenses relating to trademarks; unfair competition is therefore not a trademark
offense but merely an offense relating to trademarks. An offense directly against a trademark would be a
trademark infringement.


The protection of goodwill. - Article 521 of the Civil Code characterizes goodwill: The goodwill of a
business is property and may be transferred together with the right to use the name under which the
business is conducted.


4. Unfair competitor with a registered trademark.

- one may be declared an unfair competitor even if his competing trademark is registered. La Yebana Co.
V. Chua Seco & Co. - there was unfair competition where the use of a validly registered trademark was
coupled with the use of certain elements which gave it similarity with the goods of another whose
trademark is also validly registered.

La Yebana
Lower courts ruling which stated:
Yet, the color and the general design of the wrappers of the defendant are so similar to those of
the plaintiff that unless they are examined by a person who is able to read he would be apt to believe
that the cigarettes offered by the defendants are such as are manufactured by the plaintiffs, and the
general public buying these cigarettes would thus be deceived.


The appellee states that it does not bring suit by reason of the usurpation of its trademark, nor does it raise
any question as to the right of the appellant to his own trademark, nor object to such use as the latter may
desire to make of the different details composing its label, which on being considered by themselves
separately are perfectly legitimate, but which when united produce the general appearance on those which
constitute his label, originating in this manner a resemblance that deceives the public.

The Supreme Court did not prohibit the use of the unfair competitors trademark, but merely prohibited the
unfair competitor from using the resembling or confusingly similar features.

In Parke, Davis & Co. V. Kiu Foo & Co., et al. - party found to be the unfair competitor was event the prior
registrant.


One may be declared unfair competitor even if his competing trade-mark is registered.

5. Elements of unfair competition.

(1) confusing similarity in the general appearance of the goods
(2) Intent to deceive the public and defraud a competitor

The confusing similarity may or may not result from similarity in the marks, but may result from other
external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be
inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual
fraudulent intent need not be shown.

true test - whether the acts of the defendant have the intent of deceiving or are calculated to deceive the
ordinary buyer making his purchases under the ordinary conditions of the particular trade to which the
controversy relates.

6. Standard of deception; the quality of the fake product; the ordinary buyer.

- deception must be to such a degree so as to deceive the ordinary buyer.

For the expert buyer, a very high degree of deception would be required such that the fake product would
be of a very high quality almost approximating the quality of the original. For the ignorant buyer, the
quality of deception need not be high, meaning the quality of the fake product need not be close to the
quality of the original. In between these two extremes would be the ordinary buyer.
Similarity must be such, but need only be such, as is likely to mislead purchasers of ordinary caution and
prudence, or in other words, the ordinary buyer

It is not necessary in either case that the resemblance be sufficient to deceive experts, dealers, or other
persons specially familiar with the trademark or goods involved.

7. Similarity in general appearance of the goods.
If the contents of the two packages are the same with the same commodity, it is no defense to an
action for unfair competition to show mino differences in the size or shape of the packages or in the
wording or color of the labels or wrappers of the packages.
those things which go to make up the general outside appearances of the article, are so substantially
similar as to likely deceive the ordinary purchaser exercising ordinary care, the defendant is guilty of
unfair competition .

8. There could be unfair competition even if the words are not similar or not the same.
It is immaterial that the words Aurora, Agatonica and Mayflower are different from Alexander. The
features and their appearance are so similar as to cause that confusion which the rules of unfair competition
seek to avoid. And unfair competition is not confined to the adoption of the same or similar names.
It is not necessary that the same words were used.

9. The element of intent.
Actual intent to imitate the product may be inferred from similarity in the appearance of the goods as
packed or offered for sale to those of the complaining party.

10. Passing off, defined.
Passing off (or palming off) takes place where the defendant, by imitative devices on the general
appearance of the goods, misleads prospective purchasers into buying his merchandise under the
impression that they are buying that of his competitors.

11.) Illustration of where there is only trademark infringement but no unfair competition.

Respondents goods are hamburgers which are also the goods of the petitioners. If the respondents
sold egg sandwiches only instead of hamburgers sandwiches, their use of the Big Mak mark would not
give their goods the general appearance petitioners Big Mac hamburgers. In such case, there is only
trademark infringement but no unfair competition.

12. Evidence required in actions for unfair competition; when actual products need not be presented.

While an examination of the products would be essential to establish unfair competition, peculiar
circumstances may render this requirement unnecessary. In Caterpillar, Inc v. Samson, seized the goods
had little or no evidentiary value in view of the peculiar facts of the case.

13. Search warrants; determination of the probable cause.

Probable cause means such reasons, supported by the facts and circumstances as will warrant a
cautious man in the belief that his action and the means taken in prosecuting it are legally just and proper.
It requires such facts and circumstances that would lead a reasonably prudent man to believe that an offense
has been committed and the objects sought in connection with that offense are in the place to be searched.
Probable cause does not mean actual and positive cause , nor does it import absolute certainty. The
determination of the existence of probable cause is not concerned with the question of whether the offense
charged has been or is being committed in fact, or whether the accused is being guilty or innocent, but only
whether the affiant has reasonable grounds for his belief. The requirement is less than the certainty or
proof, but more than suspicion or possibility.
In determining probable cause in the issuance of a search warrant, the oath required must refer to the
truth of the facts within the personal knowledge of the applicant or his witnesses.

14. Search warrants; participation of private complainant in search warrant proceedings.

A private individual or a private corporation complaining to the NBI or to a government agency
charged with the enforcement of special penal laws, appear, participate and file pleadings to maintain, inter
alia, the validity of the search warrant and the admissibility of the properties seized. The party may file an
opposition to a motion to quash the search warrant issued by the court, or a motion for the reconsideration.

15. Search warrants; when seized goods may be returned.

Goods seized by virtue of a search warrant were ordered returned when the Department of Justice had
dismissed the criminal complaints with finality. Secondary reason, these seized goods as evidence would
already be superfluous.

16. Search warrants; quashal by the isssuing court.

After a subsequent evaluation reveals no infringement exists.
After the judge has issued a warrant, he is not precluded to subsequently quash the same if he finds
upon re-evaluation of the evidence that no probable cause exists.

17. Search warrants; particularity of the items to be seized.

It is not required that the things to be seized must be described in precise and minute detail.

18. Presentation in evidence of seized items.- In Summerville General Merchandise Co.
V. Court of Appeals et al.

Prosecution need not present each and every seized pack of playing cards in order to show or prove
the point that the Crown brand playing cards bear the reproduction, the rest wold just be surplus to
requirement.

19. Negative result of a search warrant raid.

A judicially ordered search that fils to yield the described illicit article does not of itself render the
courts order unlawful.

20. Concurrent jurisdiction of the civil courts and the Intellectual Property Office.

Civil courts and the Intellectual Property Office have concurrent jurisdiction over actions for
infringement and unfair competition.

22. The Intellectual Property Office may award damages for unfair competition.

Taking into account the deliberate intent of respondents to engage in unfair competition, it is only
proper that the petitioner be awarded exemplary damages.
However, exemplary damages are not meant to enrich one party or to impoverish another, but to serve
as a deterrent against or as negative incentive to curb socially deleterious action.

23. Unfair competition under the Revised Penal Code.
Unfair competition was criminally punishable under Article 189 of the Revised Penal Code and
civilly sanctioned under R.A. No. 166. However, Section 239 of the Intellectual Property Code has
already expressly repealed Article 189 of the Revised Penal Code.

24. The use of anothers containers; when there is unfair competition
With respect to containers, cases of Del Monte Corp. Et al. v. Court of Appeals et al. And Shell Co. V.
Insular Petroleum. Bottles for catsup were bought by the respondent from Junk shops for recycling to
contain also catsup produced by respondent. In Shell, respondent used some containers of Shell in selling
lubricating oil. Supreme Court found unfair competition in Del Monte but ruled no unfair competition in
Shell. .
The purpose of the law is clear. It is to afford a person a means of identifying the containers he uses in
the manufacture, preservation, packing or sale of his products so that he may secure their registration with
the Bureau of Commerce and Industry and thus prevent other persons from using them.
If the containers originally conformed to the description contained in the certificate of registration and
it appears that they are the same containers being used by the other persons, illegal regardless of whether or
not their distinctive name, mark or design is partly or entirely erased therefrom.

25. Hoarding of containers is not unfair competition.

The law does not thereby cover very unfair act committed in the course of business; it covers only acts
characterized by deception or any other means contrary to good faith in the passing of goods and
services as those of another who has established goodwill in relation with these goods or services, or any
other act calculated to produce the same result.

Hoarding as defined by the petitioner is not even an act within the contemplation of the IP code.

A first test that should be made when a question arises on whether a matter is covered by the Code is
to ask if it refers to an intellectual property as defined in the Code. If it does not, then coverage by the Code
may be negated.
A second test, if a disputed matter does not expressly refer to an intellectual property right as defined
above, is whether it falls under the general unfair competition concept and definition under Section 168.1
and 168.2 of the Code. The question then is whether there is deception or any other similar act in passing
off of goods or services to be those of another who enjoys established goodwill.

26. The act of selling is not an element of unfair competition.

Pro Line Sports Center, Inc. Et al. V. Court of Appeals et al.

Respondents act may constitute unfair competition even if the element of selling has not been proved.
To hold that the act of selling is an indispensable element of the crime of unfair competition is illogical
because if the law punishes the seller of imitation goods, then with more reason should the law penalize the
manufacturer. In U. S. V. Manuel, the test of unfair competition is whether certain goods have been
intentionally clothed with an appearance which is likely to deceive the ordinary purchasers exercising
ordinary care.

27. Standardized packaging, form and style for particular products.

In Dy Buncio v. Tan Tiao Bok.

One important consideration to be borne in mind is found in the conventional size and style of the
package adopted by tea merchants generally in putting his commodity before the consumer. As to this it is
agreed that the form of package used by both plaintiff and defendant is the same as the adopted by all
merchants engaged in selling tea in this country .


28. Who is liable for unfair competition?

Either a seller or a manufacturer of imitation of goods may be liable for unfair competition. Thus, a
mere seller, either a wholesaler or a retailer, may be held liable for unfair competition.

29. Can a complainant in a criminal action for unfair competition be sued for malicious prosecution
after the complaint and charged are dismissed?

A complaint cannot be adjudged liable for damages for an alleged unfounded suit where the complaints for
malicious prosecution are unable to prove:
a. Absence of probable cause
b. Legal malice

30. Civil and Criminal aspects in case for unfair competition

Pro Lines Sports Center, Inc. vs CA
Petitioners counterclaim for damages based on illegal and unauthorized manufacture of Spalding
balls certainly constitutes an independent cause of action which can be subject of a separate complaint for
damages against UNIVERSAL. However this separate civil action cannot anymore be pursued as it is
already barred by Res Judicata, the judgment in the criminal case (against Sehwani) involving both the
criminal and civil aspects of the case for unfair competition.

31. Prejudicial questions between the criminal and civil aspects of unfair competition

There is no prejudicial question if the civil and criminal action can, according to law, proceed
independently of each other.

32. Criminal aspect of unfair competition stated under Section 170

33. Determination of probable cause during preliminary investigation; judicial recourse

During preliminary investigation, the prosecutor is vested with authority and discretion to determine if
there is sufficient evidence to justify the filing of information.

Judicial recourse to challenge a resolution of the Secretary of Justice must be by petition for certiorari
under Rule 65, to be filed with the CA.

34. Related provisions under the Consumer Protection Act

c. A consumer product is new, original, unused, when in fact, it is in deteriorated, altered, reconditioned,
reclaimed or second-hand state
j. The seller or supplier has a sponsorship, approval, or affiliation he does not have.

35. Compulsory indication of trademarks in the products label

Article 74. Declaration Policy- The State shall enforce compulsory labeling and fair packaging to enable
the consumer to obtain accurate information as to the nature, quality, quantity of the contents of consumer
products and to facilitate his comparison of the value of such products.

36. For whose protection is the law against unfair competition?

Party against whom such competition is directed, and only incidentally for the protection of the public.
However with the rise of consumerism or the need to protect the consumers, 2 reasons would stand on
equal footing, that of the good will and reputation of the business and of the public.

37. Trade Dress Define

It is the design and appearance of a product together with the elements making up the overall image that
serves to identify the product presented to the consumer.\

38. Trade dress a three-dimensional trademark

Also has been describe as product configuration

39. World Anti-Counterfeiting Day
- celebrated in a day of June every year.

40. Special law for counterfeit drugs

Republic Act No. 8203

41. Unfair Competition and Protection of Undisclosed Information or trade Secrets; proprietary
information

-Although not forming part on the topic on trademarks, it shall be pointed out that Section 4 of the
Intellectual Property Code enumerates as part of the term intellectual property rights the protection of
undisclosed information or in common parlance trade secret

Under the TRIPS Agreement
In the course of ensuring effective protection against unfair competition...members shall protect
undisclosed information in accordance with par. 2 and data submitted to governments or governmental
agencies in accordance with paragraph 3.