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patents

trademark
trade name
copyright
PRIVATE INTERNATIONAL LAW

APRIL 9, 2019
• Took effect on
January 1, 1998
• The Intellectual
Property Code
(IPC, for brevity)
breathes life to
Sec. 13, Art. XIV
• Enforced soon
after the PH
ratified TRIPS
Any person who is a national or
who is domiciled or has a real and
effective industrial establishment
in a country which is a party to any
convention, treaty or agreement
relating to intellectual property
rights or the repression of unfair
competition, to which the
Philippines is also a party, or
extends reciprocal rights to
nationals of the Philippines by law,
shall be entitled to benefits to the Sec. 3 (International Convention
extent necessary to give effect to and Reciprocity)
any provision of such convention,
treaty or reciprocal law, in addition
to the rights to which any owner of
an intellectual property right is
otherwise entitled by this Act.
Philippine-acceded
IP treaties
• Protocol Relating to the Madrid
Agreement Concerning the International
Registration of Marks (2012)
• WIPO Copyright Treaty (2002)
• WIPO Performances and Phonograms
Treaty (2002)
• Patent Cooperation Treaty (2001)
• Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS
Agreement) (1994)
• Rome Convention for the Protection of
Performers, Producers of Phonograms
and Broadcasting Organizations (1984)
Philippine-acceded
IP treaties
• Budapest Treaty on the International
Recognition of the Deposit of
Microorganisms for the Purposes of
Patent Procedure (Entered 1981)
• Convention Establishing the World
Intellectual Property Organization
(1980)
• Paris Convention for the Protection of
Industrial Property Rights (1965)
• Berne Convention for the Protection
of Literary and Artistic Works (1951)
1. Copyright and Related 5. Patents;
Rights;
6. Layout designs
2. Trademarks and Service (Topographies) of
Marks; Integrated Circuits;
3. Geographic indications; 7. Protection of
Undisclosed Information
4. Industrial designs;
(TRIPS).
patent
• Any technical solution of a problem in
any field of human activity which is new,
involves an inventive step and is
industrially applicable.
• It may be, or may relate to, a product, or
process, or an improvement of any of the
foregoing.
patent
• INVENTION – any technical solution of a
problem in any field of human activity
which is new, involves an inventive step
and is industrially applicable. It may be, or
may relate to, a product, or process, or an
improvement of any of the foregoing
(Sec. 21, IPC)
patent
• UTILITY MODEL – An invention qualifies for
registration as a utility model if it is new and
industrially applicable (Sec. 109, IPC).

• INDUSTRIAL DESIGN – any composition of


lines or colors or any three-dimensional form,
whether or not associated with lines or
colors, provided that such composition or
form gives a special appearance to and can
serve as pattern for an industrial product or
handicraft. It must be new or ornamental
(Sec. 112, 113 IPC).
copyright
• Exists over original and derivative
intellectual creations in the literary and
artistic domain protected from the
moment of their creation.
• Works are protected from the time of
their creation, irrespective of their mode
or form of expression, as well as of their
content, quality and purpose
copyright
• Elements:
• Originality – Must have been created by the
author’s own skill, labor, and judgment
without directly copying or evasively
imitating the work of another (Ching Kian
Chuan v. CA, G.R. No. 130360, Aug. 15, 2001).
• Expression – Must be embodied in a medium
sufficiently permanent or stable to permit it
to be perceived, reproduced or
communicated for a period more than a
transitory duration.
copyright
Rights granted:
• Economic rights
• Right to carry out, authorize or prevent the
following acts: reproduction, derivative work,
etc.
• Moral rights
• Attribution right, right to preserve integrity of
work
copyrightable
works
• Literary and artistic works (IPC, Sec. 172.1)

• Derivative works (IPC, Sec. 173)


non-copyrightable
works
• Idea, procedure, system, or SCAD as these already fall
method or operation, concept, under the classification of
principle, discovery or mere derivative works, hence
data as such; copyrightable
• News of the day and other • Any work of the government of
items of press information the Philippines
• Any official text of a legislative, • TV programs, format of TV
administrative or legal nature, programs (Joaquin v. Drilon,
as well as any official G.R. No. 108946, Jan. 28, 1999)
translation thereof
• Systems of bookkeeping; and
• Pleadings
• Statutes.
• Decisions of courts and
tribunals – this refers to original
decisions and not to annotated
decisions such as the SCRA
trade name
• The name or designation identifying or distinguishing an
enterprise. (IPC, Sec. 121.1, 121.2, 121.3)

• Ownership of a mark or trade name may be acquired not


necessarily by registration but by adoption and use in
trade or commerce. As between actual use of a mark
without registration, and registration of the mark without
actual use thereof, the former prevails over the latter. For a
rule widely accepted and firmly entrenched is that actual
use in commerce or business is a prerequisite to the
acquisition of the right of ownership (Shangri-la Hotel
Management Ltd. v Developers Group of companies,
March 31, 2006 G.R. No. 159938).
trade mark
• Mark means any visible sign capable of
distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall
include a stamped or marked container of
goods.
• Collective mark means any visible sign
designated as such in the application for
registration and capable of distinguishing the
origin or any other common characteristic,
including the quality of goods or services of
different enterprises which use the sign under
the control of the registered owner of the
collective mark.
trade mark
• Requirements for a mark to be
registered:
1. A visible sign (not sounds or scents);
and
2. Capable of distinguishing one’s
goods and services from another.
• Consists of immoral, deceptive
or scandalous matter or falsely
suggest a connection with
persons, institutions, beliefs, or
national symbols

• Consists of the flag or coat of


arms or other insignia of the
Philippines or any of its political
subdivisions, or of any foreign
nation;
what
• Consists of a name, portrait or
signature identifying a
cannot be
registered?
particular living individual
except by his written consent,
or the name, signature, or
portrait of a deceased
President of the Philippines,
during the life of his widow
except by written consent of the
widow;
• Identical with a registered mark
belonging to a different proprietor
or a mark with an earlier filing or
priority date, in respect of:
• The same goods or services, or
• Closely related goods or
services, or
• If it nearly resembles such a

what
mark as to be likely to deceive
or cause confusion;

• Is identical with an internationally

cannot be
well-known mark, whether or not it
is registered here, used for identical
or similar goods or services

registered?
• Is identical with an internationally
well-known mark which is
registered in the Philippines with
respect to non-similar goods or
services. Provided, that the interests
of the owner of the registered mark
are likely to be damaged by such use
internationally
well-known mark
The following constitutes internationally well- known mark:
1. Considered by the competent authority of the Philippines
to be “well-known” internationally and in the Philippines
as the mark of a person other than the applicant or
registrant
2. Need not be used or registered in the Philippines
3. Need not be known by the public at large but only by
relevant sector of the public.
• Is likely to mislead the public
as to the nature, quality,
characteristics or geographical
origin of the goods or services;

• Consists exclusively of signs that


are generic for the goods or
services that they seek to

what
identify;

• Consists exclusively of signs that


have become customary or
usual to designate the goods
or services in everyday language
and established trade practice;
cannot be
• Consists exclusively that may
serve in trade to designate the
registered?
kind, quality, quantity, intended
purpose, value, geographical
origin, time or production of the
goods or rendering of the
services, or other characteristics
of the goods or services;
• Consists of shapes that may be
necessitated by technical

what
factors or by the nature of the
goods themselves or factors
that affect their intrinsic value;

• Consists of color alone, unless


defined by a given form; or cannot be
registered?
• Is contrary to public order or
morality. (IPC, Sec. 123)
• Filing of
application
• Search and
registration examination

procedure • Publication
• Opposition
• Registration
remedies
civil admin criminal
• Actual damages • Damages For commissions of:
• Injunction, seizure, • Cancellation • Infringement
destruction proceedings
• Unfair Competition
• Action for False or • IP rights violation
Fraudulent • False Designation
Declaration • Seizure and of Origin
condemnation
• Action for False • False Description or
Designation of • Prohibition to the Representation
Origin importation
• Complaint before
the FDA
Any foreign national or
juridical person who meets
the requirements of Section 3
of this Act and does not
engage in business in the
foreign Philippines may bring a civil
or administrative action

corporations hereunder for opposition,


cancellation, infringement,
unfair competition, or false
right to sue designation of origin and false
description, whether or not it
is licensed to do business in
the Philippines under
existing laws. (Sec. 160, IPC)
Use of a company’s corporate
and trade name is a property
right which may be asserted
against the whole world.
Western
Since it is the trade and not
Equipment and the mark that is to be
Supply Co. v. protected, a trademark
acknowledges no territorial
Reyes boundaries of municipalities
or states or nations, but
(G.R. No. L-27897, extends to every market
where the trader’s goods have
December 2, 1927) become known and identified
by the use of the mark.
cases
HOLISTIC TEST DOMINANCY TEST

It focuses on the similarity of


the prevalent features of the
competing marks. If the
competing trademark contains
Confusing similarity is to be the main or essential or
determined on the basis of dominant features of another,
visual, aural, connotative and confusion and deception
are likely to result,
comparisons and overall infringement takes place.
impressions engendered
Duplication or imitation is not
by the marks in controversy necessary; nor is it necessary
as they are encountered in that the infringing label should
the marketplace. suggest an effort to imitate.
The question is whether the
use of marks involved is likely
to cause of confusion or
mistake in the mind of the
public or deceive purchasers
Emerald Garment
Manufacturing
Corp. v.
CA, BPTTT, and
H.D. Lee Co., Inc.

G.R. No. 100098,


Dec. 29, 1995
Ruling:
• Petitioner's trademark is the whole
"STYLISTIC MR. LEE." Although on its
label the word "LEE" is prominent, the
trademark should be considered as a
whole and not piecemeal.

• The dissimilarities between the two


marks become conspicuous,
noticeable and substantial enough to
matter especially in the light of the
following variables that must be
factored in:
• The dissimilarities between the two marks
become conspicuous, noticeable and
substantial enough to matter especially in the
light of the following variables that must be
factored in:
• The products involved in the case at bar are, in
the main, various kinds of jeans. These are
not your ordinary household items like catsup,
soysauce or soap which are of minimal cost.
Maong pants or jeans are not inexpensive.
Accordingly, the casual buyer is predisposed
to be more cautious and discriminating in
and would prefer to mull over his purchase.
Confusion and deception, then, is less likely.
• Like his beer, the average Filipino consumer
generally buys his jeans by brand. He does
not ask the sales clerk for generic jeans but
for, say, a Levis, Guess, Wrangler or even an
Armani. He is, therefore, more or less
knowledgeable and familiar with his
preference and will not easily be distracted.
• Finally, more credit should be given to the
ordinary purchaser who is not the "completely
unwary consumer" but is the "ordinarily
intelligent buyer" considering the type of
product involved
McDonald’s
Corp v.
L.C. Big Mak
Burger, Inc.,

G.R. No. 143993,


Aug. 18, 2004
Ruling:
• Applying the dominancy test, L.C. Big
Mak Burger’s use of the "Big Mak" mark
results in likelihood of confusion.

• Aurally the two marks are the same,


with the first word of both marks
phonetically the same, and the second
word of both marks also phonetically
the same.

• Visually, the two marks have both two


words and six letters, with the first word
of both marks having the same letters
and the second word having the same
first two letters
HOLISTIC TEST DOMINANCY TEST

Ruled in favor of UFC Philippines (2016)


Ruled in favor of Fortune Tobacco
Philippines (2006)

Ruled in favor of Dermaline, Inc. (2010)

Ruled in favor of Puregold (Coffee Match)


(2017)
Fredco
Manufacturing
Corporation v.
President and
Fellows of Harvard
College (Harvard
University)

G.R. No. 185917,


June 1, 2011
Ruling:
Fredco’s registration should be prohibited
because both Trademarks Law and
Intellectual Property Code prohibits “the
registration of a mark which may disparage
or falsely suggest a connection with
persons, living or dead, institutions, beliefs…”

Also, both the United States and the


Philippines are signatories to the Paris
Convention which prohibit the registration
of a mark already belonging to a person
entitled to the benefits of the Convention
and used for identical or similar goods.
Ruling:
The Supreme Court declared Harvard an
internationally well-known mark for the reason
that it is rated as one of the most famous marks
in the world and registered in at least 50
countries.

The mark has been used and promoted


extensively in numerous publications around the
world, and considerable goodwill has attached
to it worldwide since the founding of Harvard
University more than 350 years ago.

Being a well-known mark, Harvard was entitled


to protection whether or not it is registered in
the Philippines, and the University could
prevent its unauthorized use on identical or
similar goods