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17/07/17

Intellectual Property
•  Intellectual property (IP) refers to creations of the mind,
such as inventions; literary and artistic works; designs;
and symbols, names and images used in commerce.

•  IP is protected in law by, for example, patents, copyright
INTELLECTUAL and trademarks, which enable people to earn recognition
PROPERTY or financial benefit from what they invent or create. By
striking the right balance between the interests of
RIGHTS innovators and the wider public interest, the IP system
aims to foster an environment in which creativity and
innovation can flourish.

Figure 1. CONCEPTUAL FRAMEWORK:
Industry Inter-relationship in the Economy

Pharmaceutical
Industry
Applicable Laws
Biotechnology
Chemical Industry

•  R.A. 10372 An Act Amending Certain Provisions
Industry
Licensing
Patents

of Republic Act No. 8293, Otherwise known as
Licensing Licensing
Patents Patents

Manufacturing
Industry
Trademarks
Copyright Movie
Industry
the "Intellectual Property Code of the  
Philippines", and for Other Purposes  
Patents
INTELLECTUAL
PROPERTY
RIGHTS

Copyright
Licensing
Copyright •  R.A. 8293 Intellectual Property Code of the
Information
Technology Copyright Music Industry
Philippines
Software Industry

•  R.A. 3720 Food and Drug Administration
Literary/
Publishing
Industry

•  R.A. 9239 Optical Media Act •  Ordinances
•  Rules and Regulations in the Exercise of Enforcement Functions
•  R.A. 10088 Anti-Camcording Act and Visitorial Power of the Intellectual Property Office, and Creating
•  R.A.8792 E-Commerce Act Thereby an Intellectual Property Rights (IPR) Enforcement Office
•  Implementing Rules and Regulations on Republic Act 10515 or the
•  R.A. 10175 Cybercrime Act Anti-Cable Television and Cable Internet Tapping Act of 2013
•  Supreme Court Rules on Procedure for •  Rules and Regulations in the Exercise of Enforcement Functions
and Visitorial Power of the Intellectual Property Office, and Creating
Intellectual Property Rights Cases (A.M. No. thereby an Intellectual Property Rights (IPR) Enforcement Office
10-3-10-SC) •  Enhancing the Enforcement of Intellectual Property Rights by
•  E.O 736 (Creation of National Committee on Amending Certain Provisions of the Regulations of Administrative
Complains  for Violation of Law Involving Intellectual Property
Intellectual Property Rights) Rights (IPV)

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17/07/17

Intellectual Property Wars

Outline of Discussions Intellectual Property Rights in General

•  Intellectual Property Rights in General •  Intellectual Property Rights
•  Patents •  Differences between copyrights, trademarks, and
•  Trademarks patent
•  Copyrights

Intellectual Property Rights •  Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another.
A trademark is any visible sign capable of distinguishing the
§  "Intellectual property rights" have furthermore been goods or service of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name
defined under Section 4 of the Code to consist of: a) means the name or designation identifying or distinguishing an
Copyright and Related Rights; b) Trademarks and enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual
Service Marks; c) Geographic Indications; d) creations in the literary and artistic domain protected from the
Industrial Designs; e) Patents; f) Layout-Designs moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of
(Topographies) of Integrated Circuits; and g) human activity which is new, involves an inventive step and is
Protection of Undisclosed Information. industrially applicable.

•  Jessie G. Ching vs. William Salinas, GR no.161295, June 29,
Coca-Cola Bottlers, Phils., Inc. vs. Quintin J. 2005; Kho vs. CA, GR no. 115758, March 19, 2002
Gomez, et al., G.R. No. 154491, November 14, 2008

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In gives the trademark owner (50) years after his death. a group literary. or         • An improvement of any of the foregoing         • Microorganism         • Non-biological & microbiological   process 3 . you will need to file applications in the countries where you want your mark registered. and will in turn promote the Philippines.  owner of the rights in an inventor significant registration. It is an marketing tool that makes return. the patent owner the exclusive right to use The Code specifies the exclusive right granted for the public identify goods “Original work” refers to must share the full the mark and to prevent terms of protection for the a product. improvement of a product can be one word. 17/07/17 Differences Patents Trade Marks Copyrights Patents Trade Marks Copyrights Differences Grant issued by the government through the A tool used that differentiates goods and Copyright is the legal protection extended to the A patent has a term of protection of twenty (20) In the Philippines.21) §  Patentable inventions • A Technical Solution to a Problem §  Non-patentable inventions • In any field of human activity §  Ownership of a patent • It must be NEW (“novelty’) §  Grounds for cancellation of patent • It must involve an INVENTIVE STEP §  Remedy of true and actual inventor • It must be INDUSTRIALLY APPLICABLE §  Rights conferred by a patent §  Limitations of patent rights §  Patent Infringement §  Licensing §  Assignment and Transmission of Rights Patentable Inventions Requirements for Patentability §  Statutory Classes of Invention         • NOVELTY         • A useful machine         • INVENTIVE STEP         • A product or composition         • INDUSTRIAL APPLICABILITY         • A method or process.  A trademark every production in the description of the others from using the different types of works. sign. artistic domain. scientific and invention. outside the country. a trademark can be The term of protection of copyright for original and years providing an protected through derivative works is the life Intellectual Property services from each other. services only. Patents (Points of Discussion) Patentable Inventions (Sec. This logo. (IP Philippines). symbol. and can be utilized as granted by IP Philippines making. exclusive right gives the any of these. or selling mark. Generally. of words. or a combination of the literary and artistic available to the public in and services. films. development. using. innovation and want your mark protected the patent. process or an and services. Among information is made identical or related goods inventive and useful. basis for future research protects your mark only in the product of his mark is used to identify paintings and other works.  If you invention during the life of those marks used for and computer programs. commercial gain. Registration of the author plus fifty Office of the Philippines It is a very important original work. a works enumerated in the the form of the Intellectual inventor the right to trademark refers to both IP Code includes books Property Official Gazette The trademark protection exclude others from trademark and service and other writings. This same or similar marks on or process which is new. although a service musical works.

or industrial design registration. before the filing date or the priority date of (Sec.An invention shall not be considered new if it forms part of a prior art. .  Whether evidence presented comes within the filing of the foreign application for the same scope of prior art is a factual issue to be resolved by the invention referred to in Section 31 of this Act. 165a) Prior Art Novelty and utility are likewise questions of fact.2. 24. and 24. Novelty. the court. 113388. No. utility model.An invention shall not be §  The element of novelty is an essential requisite of the patentability of an invention or discovery. 1997 4 . No. §  Angelita Manzano vs.. (n) Patent Office. 165a) the application claiming the invention.  The Section 20. Court of Appeals. R. If a device or considered new if it forms part of a prior art. . No.R. . The whole contents of an application for a patent. Court of Appeals. (Sec. an application for a (Sec. That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act.6. R. their relation to each other and to the whole and the probabilities of the situation. and if the application has been granted. Prior Art. It has been repeatedly held that an invention must possess the essential elements of novelty.R. and for the patentee to be entitled to the protection the invention must be new to the world. 17/07/17 On Novelty On Novelty Section 23. 113388. September 5. No. 9. There is question of fact when the doubt or difference arises as to the truth or falsehood of alleged facts or when the query necessarily invites calibration of the whole evidence considering mainly the credibility of witnesses. existence and relevance of specific surrounding circumstances. That the applicant or the inventor identified in both applications are not one and the same. 9.A.Prior art shall consist of: Section 23.1.A. G. . September 5.A. 165a) patent therefor should be denied. R. process has been known or used by others prior to its invention or discovery by the applicant. et al. et al.. in a judicial proceeding in which the validity of the patent is drawn in question. Novelty. 1997 On Novelty Prior Art §  Section 24. published in accordance with this Act. will hold it void and ineffective. No. . G. shall be prior art with effect as of the filing date of such earlier application: Provided further. with a filing or priority date that is earlier than the filing or priority date of the application: Provided. "Priority date" means the date of validity of patent is decided on the basis of factual inquiries. 9. §  Angelita Manzano vs. filed or effective in the Philippines. originality and precedence. Everything which has been made available to the public anywhere in the world.

Non-Patentable Inventions OWNERSHIP OF PATENTS §  22. and programs for computers.6.2. (b) it is filed within twelve (12) months from the date the earliest (n) foreign application was filed. When two (2) or more persons have of community intellectual rights protection: jointly made an invention. Non-Patentable Inventions. having regard to treaty.An invention patent filed by any person who has previously applied for the same invention in another country which by involves an inventive step if. Right of Priority. Schemes.A.5.Patentable Inventions Section 27. No. No. Plant varieties or animal breeds or essentially biological •  Ownership of Patent (Section 28-31. 165a) 22. rules and methods of performing mental acts.The following shall be excluded from patent protection: invention that can be produced and used in any industry shall be industrially applicable. and shall belong to them jointly. Discoveries. . This provision shall not apply to micro-organisms and non- biological and microbiological processes. 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. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. (Sec. playing games or doing business. the right to a patent 22. Anything which is contrary to public order or morality. R. the local application expressly claims priority. . or to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system assigns. or law affords similar privileges to prior art. 10. convention. (n) 22. it is not obvious to a person skilled in Filipino citizens. Inventive Step. 22. shall be considered as filed as of the the art at the time of the filing date or priority date of filing the foreign application: Provided.A.A. That: (a) date of the application claiming the invention. . 17/07/17 Prior Art Patent (Inventive Step) §  Section 31. R. 15. SRC) process for the production of plants or animals. (Sec. . 165a) Patent (Industrially Applicable) Non. Right to a Patent. 8. his heirs.An §  Section 22. (Sec. 22. Section 28. This provision shall not apply to products and composition for use in any of these methods.An application for •  Section 26. .4. Aesthetic creations. R. Industrial Applicability.1. .The right to a Provisions under this subsection shall not preclude Congress patent belongs to the inventor. No.3. scientific theories and mathematical methods. 165a) 5 .

the earliest priority date. taking into consideration the amendment made by the patentee during the cancellation proceedings. Any interested person may. the patent should be revoked.4. and (c) a certified copy of the foreign application together with an English (c) That the patent is contrary to public order or morality. it may decide to maintain the patent as amended: Provided. or foreign application was filed. (Sec. earliest filing date or. 10. If the fee for the printing of a new patent is not paid in due time. convention. First to File Rule. the 30. to the applicant who has the and materials of the employer. R. That the fee for terminate. if the inventive activity is not a part of his where two or more applications are filed for the regular duties even if the employee uses the time. express or implied. .A. unless otherwise provided in the contract.A. R. .) performance of his regularly-assigned duties. (n) 6 . the patent and any specified claim or claims cancelled shall the invention to which it relates meet the requirement of this Act. at the same time as it publishes the mention of the cancellation decision. R. or law affords similar privileges to Filipino citizens.2 hereof. published in the IPO Gazette. 165a. No. Claim.1. Unless restrained by the Director General. (b) The employer. 28 and 29. shall. Notice of the cancellation shall be printing of a new patent is paid within the time limit prescribed in the Regulations.1. shall be considered as filed as of the (a) That what is claimed as the invention is not new or Patentable. The person who commissions the work shall own the more persons have made the invention patent.A. If the Committee finds that. the decision or order to 65. No.2. or (a) The employee. . 165a) CANCELLATION OF PATENT Effect of Cancellation of Patent or Claim §  Section 65. the Bureau immediately executory even pending appeal. 15. it shall order the patent or any Section 66. unless there is an agreement. No. petition to cancel the patent patent filed by any person who has previously applied or any claim thereof. If the patent is amended under Subsection 65.An application for §  Section 61. (n) OWNERSHIP OF PATENT GROUNDS FOR CANCELLATION §  Section 31.2. publish the abstract. date of filing the foreign application: Provided. 165a) claims or parts of the claim. In case the employee made the invention in the course right to the patent shall belong to the person of his employment contract. Cancellation of the Patent. if the invention is the result of the (3rd sentence. Right of Priority.30. No. . or parts of the claim. R.65. Effect of Cancellation of Patent or specified claim or claims thereof cancelled.3.61. on any of the following for the same invention in another country which by grounds: treaty. Cancellation of Patents. facilities same invention.1. Inventions Created Pursuant to a Commission.2. upon payment of the required fee. . . . the patent shall belong to: who filed an application for such invention.The rights conferred by the patent or §  65.A. (Secs. representative claims and drawings (Sec. cancellation may be effected to such extent only. That: (a) (b) That the patent does not disclose the invention in a manner the local application expressly claims priority. 32. separately and independently of each other. Where the grounds for cancellation relate to some of the filing in the Philippines. Sec. cancel by Director of Legal Affairs shall be 65. If the Committee finds that a case for cancellation has been proved.If two (2) or §  Section 30. 165a) indicating clearly what the amendments consist of. to the contrary. (b) it is sufficiently clear and complete for it to be carried out by any person filed within twelve (12) months from the date the earliest skilled in the art. 17/07/17 OWNERSHIP OF PATENT OWNERSHIP OF PATENT §  Section 29. translation is filed within six (6) months from the date of 61.

and shall be recorded in the register of the Office. offering for sale. or order for his substitution as patentee. actions indicated in Sections 67 and 68 shall be filed within one (1) year from the date of publication 71. Limitations of Patent Rights. That it does not significantly prejudice the economic interests of the owner of the patent. is declared by final court order or decision as having the right to the patent. the court shall (c) Request that the application be refused. The provisions of Subsection 38. . (Sec. (d) Seek cancellation of the patent. or importing any product obtained directly or indirectly from such process.71. Patent Application by Persons Not Having the Right to a Patent. 37.A. 7 . (n) same. . succession the patent. 1(b). such person may.1. 165a) Limitation of Rights Limitation of Rights •  Section 72. .2.1. became final and executory.2.The §  72. to restrain. which (a) Where the subject matter of a patent is a product. dealing in.67.The offering for sale. Rights Conferred by Patent. 72. and to conclude licensing contracts for the respectively. . prevent or prohibit any unauthorized person or entity from using the process. Patent owners shall also have the right to assign. 165a) Remedies Rights conferred by a patent §  Section 69. (n) (b) Where the subject matter of a patent is a process. If a person referred to in Section 29 other than the §  Section 68. R. . to restrain. using. or at the option of the true inventor. No. selling or importing that product.1. A patent shall court shall furnish the Office a copy of the order or confer on its owner the following exclusive rights: decision referred to in Sections 67 and 68. 33. insofar as such authorization. and from manufacturing. if one has already been issued. new application filed under Subsection 67.2. R. or transfer by made in accordance with Sections 44 and 51. 17/07/17 Remedies of person with patent Remedies Section 67. Where the act is done privately and on a non- commercial scale or for a non-commercial purpose: Provided. . within three (3) months after the decision has Inventor. declared by final court order or decision to be (b) File a new patent application in respect of the same invention. Remedies of the True and Actual applicant.The §  Section 71. the acts referred to in Section 71 use is performed after that product has been so put hereof in the following circumstances: on the said market. using.If a person. the true and actual inventor. who was deprived of the become final: patent without his consent or through fraud is (a) Prosecute the application as his own application in place of the applicant. (n) No. shall be published in the IPO Gazette within three prohibit and prevent any unauthorized person or entity from (3) months from the date such order or decision making. selling or Section 70. Publication of the Court Order. . without his product. and award actual and other damages in his favor 67. Using a patented product which has been put owner of a patent has no right to prevent third on the market in the Philippines by the owner of the parties from performing.2 shall apply mutatis mutandis to a if warranted by the circumstances. Time to File Action in Court. cancel the patent. (Sec.A. or with his express consent.

mutatis mutandis. patentee constitutes patent infringement.73. or importing a patented product or a product obtained directly or readily ascertained with reasonable certainty. to the conditions set forth expressed in the claims. using. before the filing date 72. who. 165a) anything to be sold within the Philippines. Civil Action for Infringement. Where the invention is used in any ship. 17/07/17 Limitation of Rights Rights of Prior User §  72. or third person authorized by the Government shall be subject. so that a claim shall be in Sections 95 to 97 and 100 to 102.3. The §  76. protection conferred by the patent.A. 165a) considered to cover not only all the elements as expressed therein. For the purpose of determining the extent of exploitation. plus Provided. offering for sale. . part of his enterprise or business in which the use or aircraft. 40.A. or with that invention is used exclusively for the needs of the ship. of a medicine in granted.1. R. health or the development of other sectors.3. due account shall be taken of elements which are equivalent to the elements 74.76. . (n) Civil Action Infringement §  Section 76. . or land vehicle of any other country entering the territory of the 73. Any patentee. of the government. (Sec.5.1. . or anyone possessing any right. as determined by the appropriate agency interpreted in the light of the description and drawings.1. R. invention or has undertaken serious preparations to use the invention in his enterprise or business.4. in good faith was using the patented invention. or the use of a court may award by way of damages a sum patented process without the authorization of the equivalent to reasonable royalty. but also equivalents. If the damages are inadequate or cannot be making. A Government §  Section 75. R. Use of Invention by Government. That the award does not exceed three (3) attorney's fees and other expenses of litigation. the indirectly from a patented process. (Sec.75. national security. or priority date of the application on which a patent is in a pharmacy or by a medical professional. No. may bring a civil action before a court of competent jurisdiction. patent produces its effect. 41. aircraft. whose of the case. title 76.4. award damages in a sum above the rights have been infringed. The use by the Government.2. 38 and 39. shall have the right to continue the use thereof as accordance with a medical prescription or acts concerning the envisaged in such preparations within the territory where the medicine so prepared.A. The court may. Where the act consists of making or using exclusively for the §  Section 73. 72. or land vehicle and not used for the manufacturing of preparations for use have been made. by the owner of the patent or his licensee is anti-competitive. and to times the amount of such actual damages.2. according to the circumstances or interest in and to the patented invention. Extent of Protection and Interpretation of agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: Claims. Where the act consists of the preparation for individual cases. or (b) A judicial or administrative body has determined that the manner of 75. vessel. The right of the prior user may only be transferred or Philippines temporarily or accidentally: Provided. to recover from amount found as actual damages sustained: the infringer such damages sustained thereby. any prior user.74. 165a) Rights of Prior User Rights of Prior User §  Section 74. The extent of protection conferred by the patent shall be determined by the claims. (Secs. so requires.1. Prior User. in particular. secure an injunction for the protection of his rights. 8 .2. That such assigned together with his enterprise or business. selling. which are to be (a) The public interest. Notwithstanding Section 72 purpose of experiments that relate to the subject matter of the hereof. 76. No. No. nutrition.2. vessel.

R. Anyone who actively induces the infringement of a to which a patent has been granted or assigned patent or provides the infringer with a component of a under this Act. 43. 76.A. 41-A. on any of the grounds on which a known. Defenses in Action for Infringement. 17/07/17 §  76. Process Patents. . R. without entity who meets the requirements of Section 3 compensation. R. may bring an action for patented product or of a product produced because of a patented process knowing it to be especially adopted for infringement of patent. order that the §  Section 77. or any claim thereof. No. or had reasonable grounds to know of the petition of cancellation can be brought under Section 61 hereof. and not engaged in business in the Philippines. 45. §  Section 81. No. The court may. or on the advertising material relating any claim to be invalid. It is presumed that the infringer had known of the patent if on the patented product. 165a) IPO Gazette. Infringement Action by a Foreign infringing goods. and the Director of Legal Affairs upon receipt of the final judgment of to the patented product or process.If the •  Section 79. 42. in addition to other Damages cannot be recovered for acts of defenses available to him.6. (Sec. materials and implements predominantly used in the infringement be disposed of National.5. his manufacturing and business secrets. may show the invalidity of the infringement committed before the infringer had patent. (n) §  Section 80. 46. 165) patent. No. Damages. .No damages can be recovered for acts of been obtained through the use of the patented process if infringement committed more than four (4) the product is new or there is substantial likelihood that the identical product was made by the process and the years before the institution of the action for owner of the patent has been unable despite reasonable infringement. (Sec. the court shall adopt measures to protect. Requirement of Notice. (Sec. if the court shall find the patent or to the public. No. R. (Sec. No. the defendant.A. Patent Found Invalid May be Cancelled. 165a) 9 . In ordering the defendant to prove that the process to obtain the identical product is different from the patented process. shall record that fact in the register words "Philippine Patent" with the number of the of the Office and shall publish a notice to that effect in the patent. 44. . 165) efforts.A. as far as practicable.A. (Sec. 165a) liable with the infringer.In an container or package in which the article is supplied action for infringement.In an action for infringement. whether or not it is infringing the patented invention and not suitable for licensed to do business in the Philippines under substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally existing law.A. R. (Sec. to determine the process actually used. or on the Section 82. . it shall cancel the same. 165a) Prescriptive period §  Section 78. Burden of Proof . in its discretion. . any identical product shall be presumed to have . No. are placed the cancellation by the court. subject matter of a patent is a process for obtaining a product.A. Limitation of Action for Damages. R.Any foreign national or juridical outside the channels of commerce or destroyed.

(G. (n) Smith Kline Beckman Corp." The reason for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy Section 75. (Sec.103. covered thereby. and hence outside the reach of the claims. due grant into a hollow and useless thing. For the purpose of determining the any literal detail would be to convert the protection of the patent extent of protection conferred by the patent. and. hand. (G.A. Assignment of Inventions. Court of Appeals.the unscrupulous copyist to make account shall be taken of elements which are unimportant and insubstantial changes and substitutions in the patent which.R. 97343). performs substantially the same function in substantially the same way to achieve substantially the same result. Inventions and any right. R. 126627). . v. cover not only all the elements as expressed Pascual Godines v. 1993 therein. et al. Doctrine of Equivalents Doctrine invention byof Equivalents •  (a)n infringement also occurs when a device appropriates a prior incorporating its innovative concept and. title or relate.2. 17/07/17 Patent Infringement Patent Infringement •  Ordinarily understood to mean as the •  Literal infringement exists when every limitation recited unauthorized replication or use of a patented in a patent claim is found in the infringing device (or process). No. Such imitation would leave room for . performs substantially the same function in substantially the same way to achieve substantially the •  Legal Basis: same result. however. 50. 165a) territory. or of an undivided share of the 103. et al.1. 51.R. No. Transmission of Rights. albeit with some modification and change. title or interest in and to entire patent and invention. No. in which event the patents and inventions covered thereby. would be enough to take the equivalent to the elements expressed in the copied matter outside the claim. (Sec. 165) 10 . An or transmitted by inheritance or bequest or may be the assignment may be limited to a specified subject of a license contract. August 14. on the other invention or process. although with some modification and change. may be assigned parties become joint owners thereof. September 13. Patents •  Section 104.2.A. Infringement by equivalents.An or applications for patents and invention to which they assignment may be of the entire right. but also equivalents. though adding nothing. so that a claim shall be considered to law. R. Assignment and Transmission Assignment and Transmission •  Section 103. Court of Appeals. . shall be protected in the same way as the rights of interest in and to the patent and the invention other property under the Civil Code. happens when a device (or process) appropriates a patent infringement is committed either literally prior invention by incorporating its innovative concept or by equivalents. 2003). No. Technically.indeed encourage .

54. (Sec. No. . or import the certified under the hand and official seal of the invention for his own profit: Provided. Generally. Form of Assignment. Rights of Joint Owners. 52. No. 165) TRADEMARKS TRADEMARKS •  Definition of marks.. collective marks. however. or a •  Infringement and Remedies combination of any of these.Assignment •  Section 105. a •  Unfair Competition trademark refers to both trademark and •  Trade names or business names service mark. 17/07/17 Form of Assignment Joint Owners . a group of registered mark words.A. symbol. . (Sec. or without proportionally dividing the proceeds with such other owner or owners. and owners shall be entitled to personally make. acknowledged issuance of the patent in their joint favor or by reason of the before a notary public or other officer authorized assignment of an undivided share in the patent and invention or by reason of the succession in title to such share. trade • Dominancy Test names • Holistic Test •  Acquisition of ownership of mark • Well-known marks •  Acquisition of ownership of trade name •  Non-Registrable Marks • Rights conferred by registration •  Prior use of mark as a requirement •  Test to determine confusing similarity between marks TRADEMARKS Trademarks •  Use by third parties of names.If two (2) or more persons jointly own a patent and the invention covered thereby. use.A. and false description or misrepresentation 11 . unfair services only competition. joint owners shall be entitled to grant licenses or to assign his right. etc. That neither of the notary or such other officer. either by the assignment must be in writing. sell.The •  Section 107. false designation of origin. similar to • A trademark can be one word. each of the joint to administer oath or perform notarial acts. title or interest or part thereof without the consent of the other 165) owner or owners. logo. R. although a service mark is •  Collective Marks used to identify those marks used for •  Criminal Penalties for infringement. R. sign.

"Mark" means any visible sign capable of •  Section 122. 166a) •  Registration gives the trademark owner the exclusive right Registration to use the mark and to prevent others from using the same or similar marks on identical or related goods and Registration services. 12 . 166a) registration made validly in accordance with the provisions of this law.  Your mark should also meet the requirements for registrability of marks under Sec. No. (Sec. Registration What cannot be registered? •  The mark should be able to distinguish your •  Note Section 123 goods or services from those of others. R A. your mark registered. you will need to file would prevent the registration of your mark.1. •  The trademark protection granted by IP The right to a trademark is granted to the one who first files a trademark application with the IP Philippines. 40. it would help Philippines.The distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or rights in a mark shall be acquired through marked container of goods. No. (Sec. 38. "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic. Philippines protects your mark only in the Before applying for trademark registration. No. 17/07/17 Trademarks Acquisition of ownership •  Section 121.1 of the Intellectual Property Code. How Marks are Acquired. including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. . R. This is to applications in the countries where you want prevent future conflicts with marks that are already registered or with earlier filing dates.A. R.A. (Sec. 2-A.2.  If you want your mark protected if you conduct a search in the trademarks database to determine if there are identical or similar marks that outside the country. 123. 166a) •  Section 121.

“KAP KEYK” for cupcakes. Examples are tendency to misinform the consumers about the “DURABLE” for shoes (describes the quality). gives written consent Color alone is not accepted unless it is defined by a given form. “COLA” for “KITCHEN”  for cooking utensils (intended alcoholic beverages. For instance. 17/07/17 What cannot be registered What cannot be registered •  DESCRIPTIVE •  MISLEADING These are marks that describe the characteristics Marks that are likely to deceive or have the of the goods or services. “DIAMOND PEEL” for services involving cosmetic procedure. originating from or produced in Bulacan. PORTRAITS OF •  SHAPE AND COLOR PERSONS. MAPS. What cannot be registered? What cannot be registered? •  CONSISTS OF NAMES.   What cannot be registered? What cannot be registered? •  GENERIC and customary to trade •  Contrary to Public Order or Morality Generic marks are names of products they seek to identify. 13 . They no longer distinguish the goods and services because they are used so often to refer to the goods and services. actual characteristics of the goods or services “A LITER” for cooking oil (quantity). FLAGS AND OTHER POLITICAL SYMBOLS Shapes must be distinctive from the usual shape of goods or containers of the goods. in order to Marks that contain names or portraits of living be considered a trademark. “BULAKAN” for sweets not purpose). Example of this is “VCO” for virgin coconut oil. ”CAFFE” for coffee and Marks that are against the common standard of “MAKINAH” for machines. One classic example individuals may be rejected unless the individual is the COKE BOTTLE. An example is “PRO-TERRORISM” for clothing Marks and indications that have become common in everyday language or usage can not be registered. morality. and so is like “BOLPENS” for pencils.

. or confusingly similar to WELL-KNOWN MARKS Your mark cannot be registered if it is identical with or similar to a registered mark or a mark Marks that are identical with or similar to marks with earlier filing date for goods and services that are known internationally and in the that are exactly the same or for goods and Philippines will be refused registration. services that are related.2) Trademarks Copyrights § Use by third parties of names. similar to •  Basic Principles registered mark •  Copyrightable Works § Infringement and Remedies •  Original Works § Unfair Competition •  Derivative Works § Trade names or business names •  Non-copyrightable Works § Collective Marks •  Rights of copyright owner § Criminal Penalties for infringement. false designation of origin. (Section 123. 17/07/17 What cannot be registered? What cannot be registered? •  MARKS THAT MAY CAUSE CONFUSION •  Identical with. as used in •  Holistic Test connection with the applicant's goods or services in commerce. proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. and •  Limitations on Copyright false description or misrepresentation 14 . PRIOR USE OF MARK Trademarks •  The Office may accept as prima facie evidence •  Dominancy Test that the mark has become distinctive. etc.  Consumers should not confuse your mark with the marks of others. unfair •  Rules on ownership of copyright competition.

offering for Petitioner. No.. DY. or to cause mistake. when Nestle asked DY to stop using its Nanny mark on The Elements of infringement under R. offering for sale. 4.A. Reproduce. •  Tests are applied in cases involving INFRINGEMENT §  Section 155 of R.A. packages. The Court of Appeals reversed the trial court’s decision. signs. 2010 services on or in connection with which such use is likely to cause confusion. 8293 are as follows: “full cream milk for adults of all ages” and to undertake to stop infringing Nestle’s Nan trademark. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. INC. The trademark or trade name is reproduced. S. signs. INTER PACIFIC INDUSTRIAL TRADING CORPORATION. wrappers. 1. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction. 15 . 17/07/17 Trademarks Trademarks •  The totality or holistic test only relies on visual •  In determining similarity and likelihood of comparison between two trademarks whereas confusion. S. That the infringement takes place at the moment any of the acts stated in Subsection 155. The trial court found DY liable for infringement. G. there are dissimilarities between the trademarks as a   whole as they appear in their respective labels and also in relation to the goods bearing them. shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided.. the word Nanny. S. MARTIN T. or 155.1 or this subsection are committed regardless of whether §  G. 8293 states: LAWofRemedies. The trademark being infringed is registered in the Intellectual Property Trademarks and Technology Transfer (BPTTT) for Class 6 goods. sale. Respondent. No.A.. packages. 2010 172276. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. the same need not be specifically “dietetic preparations for infant feeding”. holding that while wrappers. ON INFRINGEMENT Infringement. vs.vs. counterfeit. as both goods are food products belonging to the same   class. counterfeit. or to deceive. that DY’s use of its Nanny mark would imply that the goods came from the manufacture of Nan. however. distribution. 1985. in infringement of trade name. copy or colorable SOCIETE DES PRODUITS NESTLE. counterfeit. Nestle filed a complaint for the infringement of its 2. SKECHERS USA. Use in commerce any reproduction. G. SOCIETE DES PRODUITS NESTLE. MARTIN T. SOCIETE DES PRODUITS NESTLE. holding colorably imitated by the infringer. counterfeited. copied. vs.R. registered. JR. MARTIN T. the dominancy test and the holistic but also on the aural and connotative test comparisons and overall impressions between the two trademarks. DY. business or services. advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or §  G. distribution.A.August 8. 172276.vs. without the consent of the owner JURISPRUDENCE 155.August 8. offering for sale. Office.. or to deceive. registered with the Bureau of Patents. JR. The infringing mark or trade name is used in connection with the sale. or advertising of any goods. copy. receptacles or advertisements intended to be used upon or in both Nan and Nanny are milk products and the word Nan is contained in connection with such goods. 2010 §  on August 1. or the infringing mark or trade name is applied to labels.R. business or services.R. No. No. or advertising of goods or services on or in connection with which such use is likely to cause confusion. 164321 there is actual sale of goods or services using the infringing material. 3.   As DY failed to comply. or Nan trademark.2.1. jurisprudence has developed two the dominancy test relies not only on the visual tests. prints. No. or to cause mistake. imitation to labels.R..A. — Any person who TRADEMARKS the registered mark: shall. prints. DY. 172276 August 8. No. JR.

JR. G. facts of each particular case.vs. S. MARTIN T..vs.  The question is whether originate with the plaintiff..R.vs. no marks. prevalent or essential features of the In which case.”  confusion. No. No. in fact. SOCIETE DES PRODUITS NESTLE.  idenity of such business.A..  Jurisprudential not only on the predominant words but also on precedents must be studied in the light of the the other features appearing on the labels. and   5. 2010 4.  SOCIETE DES PRODUITS NESTLE.. 172276.  Imitation or an effort to the goods of the parties are different.. MARTIN T.August 8. DY. including labels and packaging.  There are mistake or to deceive purchasers or others as to two types of confusion in trademark the goods or services themselves or as to the infringement: confusion of goods and source or origin of such goods or services or the confusion of business.A.August 8.R. G. MARTIN T. and the public would then be the use of the marks is likely to cause confusion deceived either into that belief or into the belief that there is some connection between the plaintiff and or deceive purchasers. S. DY. JR. JR. and the poorer quality of the former reflects adversely on the plaintiff’s reputation.A. SOCIETE DES PRODUITS NESTLE. The use or application of the infringing mark •  The element of likelihood of confusion is the or trade name is likely to cause confusion or gravamen of trademark infringement. defendant which. It is without the consent of the trademark or trade name owner or the assignee thereof.  Infringement takes place when the competing trademark contains the essential §  The other is the confusion of business: “Here though features of another. JR. S.  The focus is decided on its own merits.R. 17/07/17 SOCIETE DES PRODUITS NESTLE. 2010 The holistic test considers the entirety of the •  In cases involving trademark infringement.August 8. in set of rules can be deduced. S.R.”    SOCIETE DES PRODUITS NESTLE. does not exist. MARTIN T. 16 . G. No. the defendant’s product is such as might reasonably be assumed to imitate is unnecessary. S.August 8. DY.vs.R. 201 §  Confusion of goods “in which event the ordinarily •  The dominancy test focuses on the similarity prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other.A. G.  Each case must be determining confusing similarity. 172276.vs.A. 172276. No. JR. “defendant’s goods are then bought as competing trademarks that might cause the plaintiff’s. 2010 172276. 2010 172276. DY. DY. G.August 8. No.”  of the main. MARTIN T.

R. effect is confusingly similar. S.. GR no. Big Mak Burger. and to market areas that Company.A. Inc.vs. courts give greater weight to the similarity of the appearance of the product NAN-2.164321 (March 2011) CORPORATION. S. the aural quality. NAN-1. 172276.vs.C.”  “NAN” is the prevalent feature of Nestle’s line of infant powdered milk products. that defendants in cases of infringement do not normally copy but only make colorable changes. registration. “NANNY” contains the prevalent arising from the adoption of the dominant features of the feature “NAN. March 31. The dominancy test considers the dominant features in bold letters and used in all products. No. vs. but also to safeguard •  Use of the stylized “S” the public as consumers against confusion on these goods.. No.  Section 138 of R. Strong Rubber shoes Withal. (2004) the Court applied the dominancy test in holding that “BIG MAK” is Court finds that “NANNY” is confusingly similar to confusingly similar to “BIG MAC. NAN-H. (Emphasis supplied) and may properly become the subject of a trademark by §    combination with another word or phrase.A.vs. Inc.  The scope of protection extends to protection In Marvex Commercial Company. the Court held: are the normal expansion of business of the registered trademark owners. 17 . Petra Hawpia & from infringers with related goods. 2010 172276. the protection of trademarks as intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time. this Court cannot close its eye to the fact that for all intents and purpose. the registrant’s ownership of the mark.  The line in the competing marks in determining whether they are consists of PRE-NAN.A. respondent had deliberately attempted to copy petitioner’s mark and overall design and features of the shoes. SKECHERS USA.August 8. 8293 states:        It is our considered view that the trademarks “SALONPAS” and “LIONPAS” are confusingly similar in sound. and of “PAS. MARTIN T. G. SOCIETE DES PRODUITS NESTLE. 2010 §  The scope of protection afforded to registered trademark §  In determining the issue of confusing similarity..”  When marks in the public mind.. G. S.August 8. DY.. While respondent’s shoes contain some dissimilarities with petitioner’s shoes.R.. DY. 17/07/17 SOCIETE DES PRODUITS NESTLE.  identical goods. v. DY. G. L-20635. DY. S. Director of Patents. No. “NAN” and “NANNY” are pronounced. which is used to a mark shall be prima facie evidence of validity of the denote a plaster that adheres to the body with curative powers. the §  In McDonald’s Corporation v. JR. — A certificate of registration of Both these words have the same suffix. MARTIN T. No. INTER PACIFIC INDUSTRIAL TRADING SKECHERS USA. disregarding minor differences. Courts will consider more the aural and visual impressions created by the are exactly the same as the letters of “NAN. INC.  Clearly.A. Let it be remembered.” being merely descriptive. No. L. sales outlets and market segments. the Court takes owners is not limited to protection from infringers with into account the aural effect of the letters contained in the marks. GR no.”  The first three letters of “NANNY” registered mark.. vs. INTER PACIFIC INDUSTRIAL TRADING CORPORATION. giving little weight to factors like prices.August 8.. 2010 §  Applying the dominancy test in the present case.R. 172276.R.A.A. Certificates of Registration. “PAS”. with enough points of difference to confuse the courts. INC. 172276. Under the dominancy test. JR. and confusingly similar. MARTIN T. 2010 JR. MARTIN T.vs.”  The Court held: “NAN. G. SOCIETE DES PRODUITS NESTLE. furnishes no indication of the the registrant’s exclusive right to use the same in connection origin of the article and therefore is open for appropriation by with the goods or services and those that are related anyone (Ethepa vs. The most successful form of copying is to employ enough points of similarity to confuse the public. SOCIETE DES PRODUITS NESTLE.164321 (March 2011) •  Skechers vs.  It is written This Court x x x has relied on the dominancy test rather than the holistic test.August 8. 1966) thereto specified in the certificate. JR.

INC.. KUNNAN ENTERPRISES LTD. refer to an intellectual property right as defined above. 18 .... G.No.. INC.No. KUNNAN ENTERPRISES LTD. a first test that should be made when a question arises on whether a matter is Burger. If it does not. No. G..C. KUNNAN ENTERPRISES LTD. vs.  The essential elements of ordinary conditions of the particular trade to unfair competition are (1) confusing similarity in which the controversy relates.April 2010 G. is whether it falls under the general "unfair competition" thus preventing the public from being concept and definition under Sections 168...169974. goods or services to be those of another who enjoys established goodwill. ENTERPRISES LTD.1 and 168. INC. Hoarding is not Unfair Competition G. actual or probable must be shown before the right to recover can exist. then coverage by the Code may be negated.April 2010 Unfair competition has been defined as the Jurisprudence also formulated the following passing off (or palming off) or attempting to “true test” of unfair competition:  whether the pass off upon the public of the goods or business acts of the defendant have the intent of of one person as the goods or business of deceiving or are calculated to deceive the another with the end and probable effect of ordinary buyer making his purchases under the deceiving the public. vs. KUNNAN ENTERPRISES LTD. Big Mak §  Given the IP Code's specific focus. One of the the general appearance of the goods.. AND SPORTS CONCEPT & DISTRIBUTOR.169974. April 2010 SUPERIOR COMMERCIAL ENTERPRISES INC.169974. vs. L.April 2010 UNFAIR COMPETITION IN TRADEMARKS LAW Jurisprudence: • Trademark ownership of SUPERIOR COMMERCIAL ENTERPRISES INC. KUNNAN SUPERIOR COMMERCIAL ENTERPRISES INC.2 of deceived that the goods originate from the Code.R. vs.No. to deceive. G.No.R. “Kennex” and “Pro Kennex” vs. AND SPORTS CONCEPT & DISTRIBUTOR. 169974. the intent competitor.R. INC.. 17/07/17 SUPERIOR COMMERCIAL ENTERPRISES INC. competition such as when the infringer discloses on the labels containing the §  A second test. AND SPORTS CONCEPT & DISTRIBUTOR. INC. AND SPORTS CONCEPT & DISTRIBUTOR.169974. and (2) essential requisites in an action to restrain intent to deceive the public and defraud a unfair competition is proof of fraud.R. SUPERIOR COMMERCIAL ENTERPRISES INC. The question then is whether there is "deception" or any other similar act in "passing off" of the trademark owner. AND SPORTS CONCEPT & DISTRIBUTOR. we held that there can be covered by the Code is to ask if it refers to an intellectual trademark infringement without unfair property as defined in the Code. if a disputed matter does not expressly mark that he manufactures the goods. Inc..April 2010 In McDonald’s Corporation v.R.

. vs. which would likely petitioner. G.does not fall within the coverage of the IP Code and of Section 168 in particular. R. we conclude that the "hoarding" . 154491. No.Any 156.R. . 170891.R.A. the court may §  Section 157. upon proper showing.A. showing the shadow of a black cat. G. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. Injunction 156.1. except that the jaw of the alligator of the respondents. The owner of a registered mark may recover designated as such in the application for damages from any person who infringes his rights. 23. (Sec. 168. 21-A. et al.156.4. The complainant. 23. Inc. On application of the complainant.. Damages. Power of Court to Order Infringing impound during the pendency of the action. §  Coca-Cola Bottlers. No. 166) administrative action hereunder for opposition. The respondents are latter. Actions.2. infringement. hoarding inflicts unfairness by seeking to limit the competitor is producing or selling popular tea bags with red tags opposition's sales by depriving it of the bottles it can use for these sales. trade name or service mark that the respondents have Essentially. 23.. first engage in business in the Philippines may bring a civil or par. What in fact the petitioner alleges is an in the former is closed. existing laws. (n) §  Section 160. unfair competition. vs. trademark. first par. cancellation. or the act of a producer or seller of tea bags act foreign to the Code. 2008 §  Manuel C.. intruded into or used without proper authority from the the general appearance of the goods of another. then the including the quality of goods or services of court may award as damages a reasonable percentage based upon different enterprises which use the sign under the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used the control of the registered owner of the in the infringement of the rights of the complaining party.A.. It does not relate to any patent. (Sec. sales Material Destroyed invoices and other documents evidencing sales. (Sec. as alleged. (Sec. et al. Quintin J. whether or not it is licensed to do business in the Philippines under be granted injunction. second par. in the discretion requirements of Section 3 of this Act and does not of the court..Who is deemed guilty of unfair competition defined and charged by the petitioner . Gomez. or in the event such measure of damages cannot be readily ascertained with reasonable certainty. R. 17/07/17 Hoarding is not Unfair Competition Who is deemed guilty of unfair competition §  Under all the above approaches. Injunction §  Section 156. 166a) collective mark. 2009 Collective Marks Actions.as §  Sec. Espiritu. Nor are the respondents alleged to be fraudulently "passing off" mislead the buyer into believing that such goods belong to the their products or services as those of the petitioner. No. (Section 122. November 14. No. No. In cases where actual intent to mislead the public foreign national or juridical person who meets the or to defraud the complainant is shown. what the law punishes is the act of giving one's goods invaded.3. Petron Corp. R.. or vice versa. may also designation of origin and false description. No. RA 8293) Actions. similar in design to the open- that would confuse or tend to confuse the goods of the petitioner with those jawed alligator in La Coste shirts. the damages may be doubled.3 . R. 166a) 166a) 19 .A. November 24. or the profit which the defendant actually made origin or any other common characteristic. Damages. et al. Examples of this would be the act of manufacturing or selling not also alleged to be undertaking any representation or misrepresentation shirts bearing the logo of an alligator.. Jr. Phils. . to the concepts it embodies and to the acts it with red tags showing the shadow of a black dog when his regulates. or false §  156. and the measure of the damages suffered shall be either the reasonable profit which registration and capable of distinguishing the the complaining party would have made. out of the infringement. had the defendant not infringed his rights. and Damages and Injunction for •  A “collective mark” as any visible sign Infringement.

Inc. whether or not reduced in writing or created and has a minimum of creativity. 8293 and Article 189 (1) of the Revised Penal Code. clearly. 2007 The LAW ON COPYRIGHT COPYRIGHT •  Basic Principles §  Copyright is the legal protection extended to the •  Copyrightable Works owner of the rights in an original work. March 22. creation. musical •  Rights of copyright owner works. (Arts.000) to Two Rule 126. quality and purpose. paintings and other works. articles and other writings of some critics. Inc. Revised Penal Code) Sony Computer Entertainment. petitioner may apply hundred thousand pesos(P200. sermons.Independent of the §  Respondent's imitation of the general appearance of petitioner's goods was done allegedly in Cavite. So long as it has been independently (c) Lectures. Among the •  Non-copyrightable Works literary and artistic works enumerated in the IP Code includes books and other writings. dissertations prepared for oral delivery. 17/07/17 CONTINUING OFFENSE §  Section 170. scientific and artistic domain. in the eyes (a) Books. irrespective of their mode or form of namely: expression. addresses. Act No.. 155. films. Metro Manila. 161823. Section 168 and Subsection 169. No. a criminal penalty of imprisonment from The alleged acts would constitute a transitory or two (2) years to five (5) years and a fine ranging continuing offense. . vs. G. Supergreen. shall be for a search warrant in any court where any element of imposed on any person who is found guilty of the alleged offense was committed. (d) Letters (e) Dramatic or dramatico-musical compositions. Thus. law. as well as their content. choreographic works or entertainment in dumb shows 20 . and •  Rules on ownership of copyright computer programs.R. under Section 2 (b) of from Fifty thousand pesos (P50. 188 and 189. Section 168 of Rep. a certain work has little artistic (b) Periodicals and newspapers value.000). it does not matter if. the other material form same enjoys copyright protection. •  Limitations on Copyright COPYRIGHT WORKS COVERED BY PROTECTION •  Works are protected by the sole fact of their §  Section 172 of the IP Code lists the works covered by copyright protection from the moment of their creation. Penalties. pamphlets.1. Thus. including any of the committing any of the acts mentioned in Section courts within the National Capital Region (Metro Manila). It sold civil and administrative sanctions imposed by the goods allegedly in Mandaluyong City. •  Original Works “Original work” refers to every production in the •  Derivative Works literary.

(k) Photographic works including works produced by a process analogous to photography. for publication. use in a motion picture. Two types of Rights Economic Rights §  There are two types of rights under copyright: •  Economic rights include: ▫  Reproduction (1) economic rights. creator to undertake measures to maintain and protect the personal connection between himself and the work. architecture. shall not be deemed to contravene the author's rights secured by this chapter. topography. (h) Original ornamental designs or models for articles of analogous to cinematography or any process for manufacture. maps. scholarly. A collective work is a work which has been created by two (2) or •  Right of Alteration more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own •  Right of Integrity (object to any prejudicial name and that contributing natural persons will not be identified. lantern slides. broadcast. with or without words. painting. distortion) §  In the absence of a contrary stipulation at the time an author licenses or permits another to use his work. 17/07/17 Works covered Works covered (f) Musical compositions. sculpture. charts and three. •  (l) Audiovisual works and cinematographic (g) Works of drawing. or mechanical or electrical reproduction in accordance with the reasonable and customary standards or requirements of the medium in which the work is to be used. arranging or •  Right to restrain use of his name. and other works of applied art. •  (m) Pictorial illustrations and advertisements dimensional works relative to geography. Nor shall complete destruction of a work unconditionally transferred by the author be deemed to violate such rights. Moral Rights Exception to Moral Rights §  When an author contributes to a collective work. dramatization. whether or not registrable as an industrial making audio-visual recordings design. artistic works. (j) Drawings or plastic works of a scientific or technical •  (o) Other literary. adaptation of such work. (i) Illustrations. plans. the necessary editing. scientific and character. (n) Computer programs architecture or science. his right to have his •  Right of Attribution contribution attributed to him is deemed waived unless he expressly reserves it. lithography or other work of art. and ▫  Public display ▫  Public performance (2) moral rights. 21 . which makes it possible for the ▫  Other communication to the public of the work. so-called because they enable ▫  Transformation First public distribution the creator to obtain remuneration from the ▫  Rental exploitation of his works by third parties. sketches. models or works and works produced by a process designs for works of art. engraving.

Hence. facilities and unless there is a written agreement to the materials of the employer. (b) •  The natural person who created the literary and producers of sound recordings. 17/07/17 Resale Right Related Rights §  In every sale or lease of an original work of §  Authors create works to disseminate them to as painting or sculpture or of the original large an audience as possible. Obviously. They manuscript of a writer or composer. the substantial creative. Employee -  if the work is not part of his regular duties. §  Employer . and (c) artistic work owns the copyright to the same. they cannot do the dissemination by themselves.if the work is the result of the performance of his regularly assigned duties. 22 . encourage them to continue with their work. broadcasting organizations. neighboring on the author’s copyright. subsequent need the help of persons or entities who contribute to the first disposition thereof by the author. unless there is an express or implied agreement to the contrary. contrary. For work created during or in the course of •  For commissioned works: the person who employment (works for hire): commissioned the work owns the work but the copyright thereto remains with the creator. their rights are referred to as “related rights” or This right shall exist during the lifetime of the “neighboring rights” since they are related to or are author and for fifty (50) years after his death. technical or organizational skill author or his heirs shall have an inalienable in the process of making the works available to the right to participate in the gross proceeds of the public  and whose interests ought to be protected to sale or lease to the extent of five percent (5%). even if he used the time. Related Rights Copyright Ownership The related rights of: (a) performers.

P. society. but such terms shall always be provides for limitations (“statutory fair uses”) deemed to begin on the first day of January of on the economic rights of authors comprising of the year following the event which gave rise to acts which do not constitute copyright them (i. the author •  In general. scientific or religious topic. once it §  The making of quotations from a published work if they are compatible with fair use and only to the extent has been lawfully made accessible to the public. making). Code specifies the terms of protection for the different types of works. 17/07/17 Term of Protection •  For audiovisual works: the producer. including quotations from if done privately and free of charge or if made newspaper articles and periodicals in the form of press summaries: Provided. infringement even if done without the consent of the copyright holder Limitations (No Infringement) Limitations (No Infringement) •  The recitation or performance of a work. The law publication. justified for the purpose. the term of •  Copyright protection is not intended to give the protection subsequent to the death of the author copyright owner absolute control over all shall run from the date of his death or of possible exploitation of his work. publication.D. social. which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided. lectures. the term of protection of copyright of the scenario. the for original and derivative works is the life of the film director. economic.49) §  The reproduction or communication to the public by mass media of articles on current political. addresses and other works of the same nature.e. death. Term of Protection Limitations on Copyright Use (No Infringement) •  In calculating the term of protection. That the source is clearly indicated. and the author of the work so author plus fifty (50) years after his death. the composer of the music. The adapted. 23 . No. are mentioned. That the source and the name of strictly for a charitable or religious institution or the author. if appearing on the work. 10(1). (Sec.

That such recording necessary for the purpose. in a place where no admission fee is successor in title. are mentioned. scientific or artistic works as part of educational institutions of a work included in a reports of current events by means of photography. sound feature films except for brief excerpts of the work. has been published. given away or otherwise §  The public performance or the communication to the transferred to another person by the author or his public of a work. must be deleted within a reasonable period after they were first broadcast: Provided. universities or cinematography or broadcasting to the extent educational institutions: Provided. by a club or institution for charitable or educational purpose only. teaching including multiple copies for classroom use. broadcast. Limitations (No Infringement) §  The fair use of a copyrighted work for criticism. 24 . §  The purpose and character of the use. and charged in respect of such public performance or communication. the factors to be considered shall include: comment. whose aim is not profit §  Any use made of a work for the purpose of any making. research. news reporting. §  The nature of the copyrighted work. broadcast for the use of such schools. Decompilation. computer program with other programs may also constitute fair use. if appearing in the its own broadcast. In determining whether the use made of a work in any particular case is fair use. That either the work fair use. work. and similar purposes are not an infringement of copyright. further. universities. Limitations (No Infringement) Limitations (No Infringement) §  The use made of a work by or under the direction or §  Public display of the original or a copy of the work control of the Government. which are part of the general cinema repertoire of or other communication to the public. recording or film. by the National Library or by not made by means of a film. 17/07/17 Limitations (No Infringement) Limitations (No Infringement) §  The reproduction and communication to the public §  The recording made in schools. or. if such inclusion is made by way of illustration for teaching purposes and is §  The making of ephemeral recordings by a broadcasting compatible with fair use: Provided. scientific or professional institutions where or otherwise on screen or by means of any other such use is in the public interest and is compatible with device or process: Provided. That the source organization by means of its own facilities and for use in and of the name of the author. and computer program to achieve the inter- §  The effect of the use upon the potential market for or value of the operability of an independently created copyrighted work. scholarship. which is understood here to be the reproduction §  The amount and substantiality of the portion used in relation to the of the code and translation of the forms of the copyrighted work as a whole. slide. including whether such use is of a commercial nature or is for non-profit education purposes. subject to such other limitations as may be judicial proceedings or for the giving of professional provided in the Regulations advice by a legal practitioner. or of literary. That such recording may not be made from audiovisual works §  The inclusion of a work in a publication. television image educational. that original or the copy displayed has been sold.

JENNIFER Y. vs. JOHN ▫  Distributing the article for the purpose of trade. SALINAS. destroyed or rendered work. make a single copy of the work by reprographic reproduction: copyright and on fair use. unusable and copies are not available with the publisher. shall be permitted. •  Copyright infringement consists in infringing any right secured or protected INFRINGEMENT Jurisprudence under the Code. 161295. a copy which has been lost. the rights are only such validity of the facts stated in the certificate. it can cover only the works falling within the statutory enumeration or description. in the strict sense of the term. 25 . PRODUCT CORPORATION). authorization of the owner of copyright in the replace a copy. •  The law also provides for the liability of a person who at the time when copyright subsists in a work has in his possession an article which he knows. SR. as the statute confers. It may also consist in aiding or abetting such infringement. where the reproduction is made by a their loan for purposes of research or study instead of lending the volumes or booklets which contain them. when this is considered expedient. SALINAS. or to replace. in the permanent collection of another similar library or archive. JOSEPHINE L. respondents. and copyright validity. and natural person exclusively for research and private study.. or for any other purpose to an extent that will prejudice the rights of the copyright owner in the ERIC I. and on terms and conditions specified in the statute. 2005] Ching vs.  It is a new or evidence of originality which is one element of independent right granted by the statute. NOEL M. to person requesting single copy.  June 29. the article.  Accordingly. is •  A copyright certificate provides prima facie purely a statutory right.  evidence of both validity and ownership and the Being a statutory grant. WILLIAM M. petitioner.  It constitutes prima facie not simply a pre-existing right regulated by it. destroyed or rendered unusable. without the Aside from the provisions on the limitations on authorization of the author of copyright owner. the law allows the following reproductions: •  (a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form. or by way of trade offering or exposing for sale or hire. •  (b) Where the works are isolated articles contained in composite works or ▫  the private reproduction of a published work in a brief portions of other published works and the reproduction is necessary to supply them. CHING.R. 17/07/17 Any library or archive whose activities are not for profit may. purpose of: SALINAS. if necessary in the event that it is lost. WILLIAM M. and may be obtained and enjoyed only with respect to the subjects and by the persons. No. JR. without the §  (c) Where the making of such a copy is in order to preserve and. [G. SALINAS. or Directors and Officers of WILAWARE ▫  Trade exhibit of the article in public. SALINAS. Salinas §  Copyright. ALONTO SOLAIMAN SALLE. to be an infringing copy of the work for the •  JESSIE G. Salinas Ching vs. or ought to know.. ▫  Selling or letting for hire. YABUT (Board of work..

. et Composers vs. et al. especially where the production in court of object evidence would result in delay. No. 1988. L-36402. vs. 130360. Nos. does not rule out doing by any person. Inc.. et al. People of the Phil. No. G.R. 1996. non-registration and deposit of the work within the prescribed period only makes the copyright owner liable to pay a fine. et al. August 19. et al.R.R.. 1987 Infringement of a copyright is a trespass on a private §  The presentation of master tapes is not always necessary to meet the requirement of probable cause in copyright infringement cases domain owned and occupied by the owner of the copyright. No.. vs. It is not a conclusive proof of copyright ownership. Inc. Court of Appeals. Court of Appeals. This linkage of the copyrighted films to the pirated films must be established to satisfy infringement of copyright and to an injurious the requirements of probable cause. §  Pacita I. July 19. admissions or the copyright. Christopher Choi. et al. Columbia Pictures Entertainment. 110318.R.. therefore. 20th Century Fox Film Corp.. Filipino Society of L-76649-51. Benjamin Tan. 2006 August 15. 1999. 17/07/17 Remedies of Infingement When is there a substantial reproduction of a book? It §  The essence of a copyright infringement is the similarity or at least does not necessarily require that the entire substantial similarity of the purported pirated works to the copyrighted work. Hence.R. et al. Court of Appeals. G. however. No.R. August 3.. et al. Inc. 1994 March 16. of anything the sole right to do which is other classes of evidence tending to prove the factum probandum. 131522. Felicidad C. 165306.R. September 20. 97156. G. et al. vs. Manly Sportwear Mfg. conferred by statute on the owner of the copyright. or piracy. and. vs. G. 2005 26 . Habana. 131522. Court of Appeals.. G. the certificates of registration and deposit issued by the National Library and the Supreme Court Library serve merely as a notice of recording and registration of the work but do not confer any right or title upon the registered copyright owner or automatically put his work under the protective mantle of the copyright law.R. Robles.R. Columbia Pictures Industries. Chuan vs. G. vs. October 6. et al. Felicidad C. et al. No. be the copyrighted films to compare them with the purchased evidence copied. et al.. 1996. vs. Wilson Ong Ching Kian 28. inconvenience or expenses out of proportion to its evidentiary value. the work is appropriated. 2001 At most. 152950. al. vs. Mere allegations as to the extent. Such auxiliary procedure.. with the merit that in infringement of copyright. If so much is taken that the value of the of the video tapes allegedly pirated to determine whether the latter original work is substantially diminished. protected by law. Habana. G. Court of Appeals. the applicant must present to the court copyrighted work. there is an is an unauthorized reproduction of the former. Inc. No..R. G. G. Robles. consists in the through demonstrations involving the direct use of the senses of the presiding magistrate. As it is. and §  It is true that such master tapes are object evidence. which is a this class of evidence the ascertainment of the controverted fact is made synonymous term in this connection. §  Pacita I.. No. 111267. vs. July 19. Columbia Pictures. existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. without the consent of the owner of the use of testimonial or documentary evidence. Dadodette Ent. September 20. or even a large portion of it. No. No. depositions. August G. 1999.