Law on Intellectual Property Notes

Atty. Taleon

I. Intellectual Property Rights in General

Intellectual Property – creations of the mind: inventions, literary and artistic works, symbols,
names, images, and designs used in commerce; legal rights which result from intellectual
activity in the industrial, scientific, literary and artistic fields

1. Intellectual Property Rights

SECTION 4
4.1. The term "intellectual property rights" consists of:
a. Copyright and Related Rights;
b. Trademarks and Service Marks;
c. Geographic Indications;
d. Industrial Designs;
e. Patents;
f. Layout-Designs (Topographies) of Integrated Circuits; and
g. Protection of Undisclosed Information (n, TRIPS).

Copyright and Related Rights – confined to literary and artistic works which are original
creations in the literary or artistic domain; protected from moment of creation (Sec. 172.1)
Trademarks and Service Marks - 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 (Sec. 121.1)
Geographic Indications – indications which identify a good as originating in the territory of
a Member, or a region or locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical origin (TRIPS, Art. 22)
Industrial Designs – 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 (Sec.
112)
Patent – set of exclusive rights granted by a state to an inventor or his assignee for a fixed
period of time in exchange for a disclosure of an invention (Salao)
Layout-Designs (Topographies) – three-dimensional disposition, however expressed, of the
elements, at least one of which is an active element, and some or all of the interconnections
of an integrated circuit, or such a three-dimensional disposition prepared for an integrated
circuit intended for manufacture (Sec. 112)
Integrated Circuit – a product, in its final form, or an intermediate form, in which the
elements, or all of the interconnections are integrally form in and/or on a piece of material,
and which is intended to perform an electronic function (Sec. 112)
Undisclosed Information - information: (a) is secret in the sense that it is not, as a body or in
the precise configuration and assembly of its components, generally known among or readily

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 accessible to persons within the circles that normally deal with the kind of information in
question; (b) has commercial value because it is secret; and (c) has been subject to
reasonable steps under the cir

a. Right of a Foreigner to Sue for Protection of IP Rights

SECTION 3
International Conventions and Reciprocity. — 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
extent necessary to give effect to any provision of such convention, treaty or reciprocal
law, in addition to the rights to which any owner of an intellectual property right is
otherwise entitled by this Act. (n)

SECTION 160
Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. —
Any foreign national or juridical person who meets the requirements of Section 3 of this
Act and does not engage in business in the Philippines may bring a civil or administrative
action hereunder for opposition, cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it is licensed to do business in
the Philippines under existing laws. (Sec. 21-A, R.A. No. 166a)

2. Differences between Copyrights, Trademarks, and Patent

ELIDAD C. KHO vs. HON. COURT OF APPEALS G.R. No. 115758 March 19, 2002
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 goods (trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods.12 In relation thereto, a trade name means the
name or designation identifying or distinguishing an enterprise.13 Meanwhile, the scope
of a copyright is confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the moment of their
creation.14 Patentable inventions, on the other hand, refer to any technical solution of a
problem in any field of human activity which is new, involves an inventive step and is
industrially applicable.15

II. Trademarks

1. Definition of Marks, Collective Marks, Trade Names, Slogan

SEC 121
Definitions. — As used in Part III, the following terms have the following meanings:

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 121.1. "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; (Sec. 38, R.A. No. 166a)
121.2. "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; (Sec. 40, R.A. No. 166a)
121.3. "Trade name" means the name or designation identifying or distinguishing an
enterprise; (Sec. 38, R.A. No. 166a)

2. Acquisition of Ownership Mark

a. Section 122

SECTION 122
How Marks are Acquired. — The rights in a mark shall be acquired through registration
made validly in accordance with the provisions of this law. (Sec. 2-A, R.A. No. 166a)

b. Birkenstock vs. Phil Shoe Marketing

BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG vs. PHILIPPINE SHOE EXPO MARKETING
CORPORATION G.R. No. 194307 November 20, 2013
Facts: Petitioner, a corporation duly organized and existing under the laws of Germany,
applied for various trademark registrations before the IPO – BIRKENSTOCK. However,
registration proceedings of the subject applications were suspended in view of an existing
registration of the mark. During its pendency, however, respondent failed to file the
required 10th Year Declaration of Actual Use (10th Year DAU) for Registration, thereby
resulting in the cancellation of such mark. Accordingly, the cancellation case was
dismissed for being moot and academic.
Ruling of BLA: Sustained respondent’s opposition; ordered rejection of the applications;
competing marks are confusingly similar since they contained the word "BIRKENSTOCK"
and are used on the same and related goods; respondent as the prior user and adopter in
the Philippines; petitioner failed to present evidence of actual use in the trade and
business in this country; cancellation of registration does not follow that prior right over
the mark was lost, for there was continuous and uninterrupted use in trade and business;
petitioner’s marks are not well -known in the Philippines and internationally; the various
certificates of registration submitted by petitioners were all photocopies and, therefore,
not admissible as evidence.
Ruling of IPO DG: reversed and set aside ruling of the BLA; allowing the registration;
cancellation of prior registration, there is no more reason to reject the subject
applications on the ground of prior registration; evidence presented proved that
petitioner is the true and lawful owner and prior user of "BIRKENSTOCK"; respondent’s
copyright for the word "BIRKENSTOCK" is of no moment since copyright and trademark
are different forms of intellectual property that cannot be interchanged.
Ruling of the CA: reversed and set aside the ruling of the IPO Director General and
reinstated that of the BLA.

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 SC Ruling: Petition is meritorious.
Admissibility of Petitioner’s Documentary Evidence
 The rules of procedure are mere tools aimed at facilitating the attainment
of justice, rather than its frustration. A strict and rigid application of the
rules must always be eschewed when it would subvert the primary
objective of the rules, that is, to enhance fair trials and expedite justice.
Technicalities should never be used to defeat the substantive rights of the
other party.
 While petitioner submitted mere photocopies as documentary evidence in
the Consolidated Opposition Cases, it should be noted that the IPO had
already obtained the originals of such documentary evidence in the related
Cancellation Case earlier filed before it.
Registration and ownership of "BIRKENSTOCK"
 Section 12 of Republic Act 166- Registrations under the provisions of this
Act shall be cancelled by the Director, unless within one year following the
fifth, tenth and fifteenth anniversaries of the date of issue of the certificate
of registration, the registrant shall file in the Patent Office an affidavit
showing that the mark or trade-name is still in use or showing that its non-
use is due to special circumstance which excuse such non-use and is not
due to any intention to abandon the same, and pay the required fee.
 Respondent admitted that it failed to file the 10th Year DAU for
Registration within the requisite period. As a consequence, it was deemed
to have abandoned or withdrawn any right or interest over the mark
"BIRKENSTOCK."
 Registration of a trademark, by itself, is not a mode of acquiring ownership.
If the applicant is not the owner of the trademark, he has no right to apply
for its registration. Registration merely creates a prima facie presumption
of the validity of the registration, of the registrant’s ownership of the
trademark, and of the exclusive right to the use thereof. It is not the
application or registration of a trademark that vests ownership thereof,
but it is the ownership of a trademark that confers the right to register the
same.
 Petitioner was able to establish that it is the owner of the mark
"BIRKENSTOCK." It submitted evidence relating to the origin and history of
"BIRKENSTOCK" and its use in commerce long before respondent was able
to register the same here in the Philippines.
 On the other hand, aside from Registration No. 56334 which had been
cancelled, respondent only presented copies of sales invoices and
advertisements, which are not conclusive evidence of its claim of
ownership.

3. Acquisition of Ownership of Trade Name

SECTION 165
Trade Names or Business Names
165.1. A name or designation may not be used as a trade name if by its nature or the use
to which such name or designation may be put, it is contrary to public order or

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 morals and if, in particular, it is liable to deceive trade circles or the public as to
the nature of the enterprise identified by that name.
165.2.
a. Notwithstanding any laws or regulations providing for any obligation to register
trade names, such names shall be protected, even prior to or without registration,
against any unlawful act committed by third parties.
b. In particular, any subsequent use of the trade name by a third party, whether
as a trade name or a mark or collective mark, or any such use of a similar trade
name or mark, likely to mislead the public, shall be deemed unlawful.
165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167
shall apply mutatis mutandis.
165.4. Any change in the ownership of a trade name shall be made with the
transfer of the enterprise or part thereof identified by that name. The provisions
of Subsections 149.2 to 149.4 shall apply mutatis mutandis.

Section 2-A added by RA 638 to RA 166 - Ownership of trademarks, trade names and
service marks; how acquired. Anyone who lawfully produces or deals in
merchandise of any kind or who engages in any lawful business, or who renders
any lawful service in commerce, by actual use thereof in manufacture or trade, in
business, and in the service rendered, may appropriate to his exclusive use a
trademark, a trade name, or a service mark not so appropriated by another, to
distinguish his merchandise, business or service from the merchandise, business
or services of others. The ownership or possession of a trademark, trade name,
service mark, heretofore or hereafter appropriated, as in this section provided,
shall be recognized and protected in the same manner and to the same extent as
are other property rights known to this law.

4. Non-registrable Marks

a. Section 123

SECTION 123
Registrability
123.1. A mark cannot be registered if it:
a. Consists of immoral, deceptive or scandalous matter, or matter which may
disparage or falsely suggest a connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute;
b. Consists of the flag or coat of arms or other insignia of the Philippines or any of
its political subdivisions, or of any foreign nation, or any simulation thereof;
c. Consists of a name, portrait or signature identifying a particular living individual
except by his written consent, or the name, signature, or portrait of a deceased
President of the Philippines, during the life of his widow, if any, except by written
consent of the widow;
d. Is identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of: cd
i. The same goods or services, or
ii. Closely related goods or services, or

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 iii. If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
e. Is identical with, or confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the Philippines to be well-
known internationally and in the Philippines, whether or not it is registered here,
as being already the mark of a person other than the applicant for registration, and
used for identical or similar goods or services: Provided, That in determining
whether a mark is well-known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the promotion
of the mark;
f. Is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or services which are not similar
to those with respect to which registration is applied for: Provided, That use of the
mark in relation to those goods or services would indicate a connection between
those goods or services, and the owner of the registered mark: Provided further,
That the interests of the owner of the registered mark are likely to be damaged by
such use;
g. Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;
h. Consists exclusively of signs that are generic for the goods or services that they
seek to identify;
i. Consists exclusively of signs or of indications that have become customary or
usual to designate the goods or services in everyday language or in bona fide and
established trade practice;
j. Consists exclusively of signs or of indications that may serve in trade to designate
the kind, quality, quantity, intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or other characteristics of
the goods or services;
k. Consists of shapes that may be necessitated by technical factors or by the nature
of the goods themselves or factors that affect their intrinsic value;
l. Consists of color alone, unless defined by a given form; or
m. Is contrary to public order or morality.

b. Secondary Meaning, Sec. 123.2

SECTION 123
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign or device which has become distinctive in
relation to the goods for which registration is requested as a result of the use that
have been made of it in commerce in the Philippines. The Office may accept as
prima facie evidence that the mark has become distinctive, as used in 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.

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 Doctrine of Secondary Meaning - a word or phrase originally incapable of exclusive
appropriation with reference to an article in the market has, through its long and exclusive
use by one entity has effectively been distinguished and identified as that representing
the user and its products; nothing shall prevent the registration of generic, indicative, or
descriptive marks when such kind of mark has become distinctive in relation to the goods
for which registration is requested as a result of the use that have been made of it in
commerce in the Philippines.
Section 123 (h) of Republic Act No. 8293 or the Intellectual Property Code ("IP Code")
disallows the registration of "signs that are generic for the goods or services that they
seek to identify." However, this rule admits of an exception as when the mark or sign has
obtained what jurisprudence term as "secondary meaning."

Requisites to Acquiring Secondary Meaning

1. secondary meaning must have arisen as a result of substantial commercial use of a
mark in the Philippines
2. use must result in the distinctiveness of the mark insofar as the goods are concerned
3. proof of substantially exclusive and continuous commercial use in the Philippines for
five years before the date on which the claim of distinctiveness is made perceptibly
disqualified from trademark registration

c. Fanciful, Arbitrary, Suggestive, Composite, and Coined Marks

Fanciful Mark – invented for the sole purpose of functioning as a trademark and has no
other meaning than acting as a mark (Funa)
Arbitrary Mark – utilized as a device having a common meaning that has no relation to
the goods or services being sold (Agpalo)
Suggestive Mark – capable of shedding some light upon certain characteristics of goods
or services in dispute; they involve an imaginative effort on the part of the observer
(Societe Des Produits Nestle v. CA)
Composite Mark – consisting of two or more elements or combination of words, phrases,
designs, symbols, or color schemes. Although they cannot be registered by themselves,
together they may be a part of a composite mark as long as they provide a disclaimer.
(Agpalo)
Coined Mark – marks may be registered even if they are contractions of or coined from
generic and descriptive terms (Agpalo)

5. Prior Use of Mark as a Requirement, Sec. 122, 152

SECTION 122
How Marks are Acquired. — The rights in a mark shall be acquired through registration
made validly in accordance with the provisions of this law. (Sec. 2-A, R.A. No. 166a)

SECTION 152
Non-use of a Mark When Excused.
152.1. Non-use of a mark may be excused if caused by circumstances arising
independently of the will of the trademark owner. Lack of funds shall not excuse
non-use of a mark.

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 152.2. The use of the mark in a form different from the form in which it is registered,
which does not alter its distinctive character, shall not be ground for cancellation
or removal of the mark and shall not diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the goods or services
belonging to the class in respect of which the mark is registered shall prevent its
cancellation or removal in respect of all other goods or services of the same class.
152.4. The use of a mark by a company related with the registrant or applicant shall inure
to the latter's benefit, and such use shall not affect the validity of such mark or of
its registration: Provided, That such mark is not used in such manner as to deceive
the public. If use of a mark by a person is controlled by the registrant or applicant
with respect to the nature and quality of the goods or services, such use shall
inure to the benefit of the registrant or applicant. (n)

6. Opposition

SECTION 134
Opposition
Any person who believes that he would be damaged by the registration of a mark may,
upon payment of the required fee and within thirty (30) days after the publication
referred to in Subsection133.2, file with the Office an opposition to the application.
Such opposition shall be in writing and verified by the oppositor or by any person on his
behalf who knows the facts, and shall specify the grounds on which it is based and include
a statement of the facts relied upon. Copies of certificates of registration of marks
registered in other countries or other supporting documents mentioned in the opposition
shall be filed therewith, together with the translation in English, if not in the English
language. For good cause shown and upon payment of the required surcharge, the time
for filing an opposition may be extended by the Director of Legal Affairs, who shall notify
the applicant of such extension. The Regulations shall fix the maximum period of time
within which to file the opposition. (Sec. 8, R.A. No. 165a)

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