0. LAWS ON INTELLECTUAL PROPERTY Course Outline ‘Atty. Risel G. Castillo-Taleon (2019 - 2020) INTELLECTUAL PROPERTY RIGHTS IN GENERAL - Intellectual Property Rights - Sec. 4 IP Code Right of a Foreigner to Sue for Protection of IP Rights ~ Sec. 3 and 160 1. Ecole de Cuisine vs. Renaud Cointreau 697 SCRA 345 b. IPO Rules of Procedure - 1, Paolo vs. Florentino III International 814 SCRA 448 + Differences between Copyrights, Trademarks and Patent @. Juan vs. Juan 837 SCRA 613 . Madrid Protocol a. Intellectual Property Association of the Phils. vs. Ochoa 797 SCRA 134 TRADEMARKS + Definition of Marks, Collective Marks, Trade Names, Slogan ~ Sec. 121 a. Juan vs. Juan 837 SCRA 613 - Acquisition of Ownership of Mark a, Sec. 122 . Birkenstock GmbH vs. Phil Shoe Marketing GR #194307, Nov. 29, 2013 c. W Land Holdings Inc. vs. Starwood Hotels 847 SCRA 403 . Acquisition of Ownership of Trade Name — Sec. 165 . Non-Registrable Marks a. Sec. 123b. Secondary Meaning, Sec. 123.2 Fanciful, Arbitrary, Suggestive, Composite and Coined Marks 5. Prior Use of Mark as a Requirement - Sec. 122, 152 6. Opposition 7. Tests to Determine Confusing Similarity between Marks @. Dominancy Test 1. Asia Brewery, Inc. vs. Court of Appeals, et al. G.R. No, 103543 2. McDonald's Corporation vs. L.C. Big Mak Burgers, Inc. G.R. No. 143993 3. Societes Des Produits Nestle, S.A. et al. vs. Court of Appeals, et al. G.R. No. 112012 4. Seri Somboonsakdikul vs, Orlane SA, G.R. No, 188996 Feb. 1, 2017 b. Holistic Test 1. Emerald Garment Manufacturing Corp. vs. CA, G.R. No. 100098 2. Bristol Myers Co. vs. Dir. Of Patents & United American Pharmaceuticals, Inc., G.R. No. L-21587, May 19, 1966 €. Identical/Similar Related Goods 1. Mang Inasal Philippines vs. IFP Manufacturing Corp. 827 SCRA 461. 2. Taiwan Kolin vs. Kolin Electronics 754 SCRA 556 8. Well-Known Marks a. Sec. 123 (e) (A) b. Criteria 1. Dy vs. Koninklijke vs. Philips Electronics 821 SCRA 241 9. Rights Conferred by Registration - Sec. 147 10. Use by Third Parties of Names, etc. Similar to Registered Mark - Sec. 148 11. Infringement and Remedies12. a. Trademark Infringement 1. Sec. 155 a. Elements €.1 Diaz vs. People 691 SCRA 139 a.2 Republic Gas Corp. vs. Petron Corp. 698 SCRA 666 Confusion of goods vs. confusion of business When is confusion greater When ts confusion remote Parallel Importation ~ Exhaustion of Trademark Rights wren b. Damages 1. Sec. 156-157, 179 2. Givil vs. Criminal Infringement ¢. Jurisdiction 1. AM No. 2-1-1, Feb. 9, 2002 2. AM No. 03-03-03, July 1, 2003 3. Sec. 10.2 d. Requirement of Notice e. Confiscation of Counterfeit 1. Century Chinese Medicine vs. People 709 SCRA 177 Unfair Competition Sec. 168 Infringement vs. Unfair Competition Pilipinas Shell Petroleum, et al. vs. Romars Int. GR 189669, Feb. 16, 2015 Sony Computer Entertainment vs. Supergreen March 22, 2007 Willaware Products Corp. vs. Jesicrhris Mfg. Corp. GR 195549, Sep. 3, 2014 Shang Properties Realty Corp. vs. St. Francis Devt. 730 SCRA 275 ->epange13. Trade Names or Business Names 14. Collective Marks. 15. Grounds for Cancellation Tl. COPYRIGHT 1. DEFINITION OF COPYRIGHT 1.1 Olafio vs. Lim Eng Co 787 SCRA 272 1.2 It is the element of a person’s ownership of his intellectual creation that Permits him (author, composer or artist) to exclusively print, publish and vend the product of his creation. Common law copyright ~ That which secures to the owner exclusivity nti its public dissemination b. Statutory copyright - That which secures protection and exclusivity in the ‘owner by force of law even when the work has been made accessible to the public. 2. TERRITORIAL APPLICATION OF COPYRIGHT LAWS (IP CODE) Our copyright laws have no extra-territorial operation and the rights granted under our laws can onh ly be infringed by acts done within our territorial jurisdiction, 3. COPYRIGHT IS DISTINCT FROM TRADEMARK AND PATENTS A. 1. Pearl & Dean Phils. Inc. vs. Shoemart, Inc. 409 SCRA 23 (2003) 2. Kho vs. Court of Appeals 379 SCRA 410 (2002) 3. Ching vs. Salinas 462 SCRA 241 (2005) B. Denicola Test ~ This test inquires into which aspects of the work are dictated by the functional constraints of the article and which aspects reflect unconstrained perspective of the artist (Prof. Robert Denicola) C. Can an article of Commerce serve as a trademark and at the re same time enjoy patent and copyright protection? 4. COPYRIGHT OVER LITERARY AND WORKS IS VESTED FROM THE MOMENT OF CREATION1. Sec. 172.1 First paragraph 2. Sec, 172.2 3. Unilever Phils., Inc. vs. CA 498 SCRA 334 . WORKS PROTECTED BY COPYRIGHT A. 1, Original works ~ Sec. 172 2. Derivative works - Sec. 173 B. Requirements of originality - An original work is that which requires originality in skill or labor in execution such that the works became individual either in matter, forms, arrangement or treatment (not necessarily original thought, idea or research) 1. Samboy vs. Levi Strauss 378 SCRA 364 ). WORKS NOT PROTECTED BY COPYRIGHT 1. Sec. 175 2. Sec. 176 . RIGHTS CONFERRED BY COPYRIGHT 1. Economic Right - Sec, 177 2. Moral Rights - Sec. 193 3. Rights of Performers, Producers of Sounds Recording and Broadcasting Organizations ~ Secs. 203, 204, 206, 208 ._ LIMITATIONS OF COPYRIGHT 1. Sec. 184, 187 2. Fair use of Copyright Work ~ Sec. 185 a. Reproduction of Computer Program — Sec. 189 3. Importation for Personal Purposes ~ Sec. 190 |. OWNERSHIP OF COPYRIGHT 1. Sec, 1782. Anonymous & Pseudonymous Works - Sec. 179 10. DURATION OF COPYRIGHT 1. Sec, 213 411, INFRINGEMENT 1, Olaffo vs. Lim Eng Co 787 SCRA 272 2. Infringement vs. Plagiarism Infringement or piracy is any violation of the owner's exclusive rights conferred by law while plagiarism is confined to the incorporation in one’s ‘own work that of another without the proper acknowledgment thereof. 3. Animus furandi or intention to pirate is not an element of copyright infringement 4. An acknowledgement of the sources of the work infringed is not a defense to an infringement action. 5. Secs. 216, 217 6. Presumption of Author ~ Sec, 219 7. Fair Use as a Defense 1, ABS-CBN vs. Gozon 753 SCRA 1 12, PRESCRIPTION OF ACTION 1. Section 226 ‘TECHNOLOGY TRANSFER ARRANGEMENTS, 1. Voluntary License Contract - Sec. 85, 90, 91 Prohibited Clauses - Sec. 87 Mandatory Provisions ~ Sec. 88 2. Compulsory Licensing Grounds - Sec. 93, 96, 97= a 2 x Requirements to Obtain a License - Sec. 95 3. Period to File a Petition - Sec. 94 PATENTS Patentable Inventions - Sec. 21, 23, 24, 25, 26, 27 Non-Patentable Inventions - Sec. 22 . Ownership of a Patent a, Right to a Patent - Sec. 28 ', First-to-File Rule - Sec. 29 . Inventions Created Pursuant to a Commission d. - Sec. 30 . Right of Priority - Sec. 31 4.1 E.L. Dupont de Nemours vs. Francisco 801 SCRA 629 Grounds for Cancellation of a Patent - Sec. 61 Remedy of the True and Actual Inventor ~ Sec. 29, 67, 68, 70 . Rights Conferred by a Patent - Sec. 71 & 55 . E.l. Dupont de Nemours vs. Francisco 801 SCRA 629 Umitations of Patent Rights - Sec. 71 & 72 , Prior User - Sec, 73 b. Use by the Government - Sec, 74 . Patent Infringement — Sec, 76 a. Court which has Jurisdiction1. AM No, 02-1-11, dated Feb, 19, 2002 2. Samson vs. Cabanos, June 28, 2005 GR 161693 ©. Criminal action for Patent Infingement ~ Sec. 84 © Tests in Patent Infringement '. Uteral Infringement ~ Sec. 75.1 '. Doctrine of Equivalents ~ Sec. 75.2 dq. Defenses in Action for Infringement ~ Sec. 81 ©. Contributory Patent Infringement - Sec. 75.1 9. Assignment and Transmission of Rights ~ Sec. 103-107