John Evan Raymund O.

Besid Saturday
2016-0158 10:00-12:00PM

INTELLECTUAL PROPERTY LAW

FINAL EXAMINATION
PART I
A
To a gifted person endowed with natural talents, how important is the knowledge of the law on
intellectual property in the acquisition of wealth? Moreover, in the preparation of your IPL Project,
did you gain enough knowledge and understanding of what the subject law is all about? Please
express your views.
The knowledge in IPL is very important to gifted persons in their acquisition of wealth personally and for the
country because the state recognizes that an effective intellectual and industrial property system that is vital to
the development of domestic and creative activity, facilitates transfer of technology, attracts foreign
investments, and ensures market access for our products. It shall protect and secure the exclusive rights of
scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly
when beneficial to the people, for such periods as provided in this Act.

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of
knowledge and information for the promotion of national development and progress and the common good.1

Here, gifted persons contribute to the national development and progress by attracting free flow of investment
to the country and by show casing their talents. They became the partner of the government in countrywide goal
of continuous improvement, technology innovation and upgrading the life of every Filipinos. These are the
reasons why their person and creations became the core of Intellectual Properties protection. By this
protection, with which each of them should be familiar, they can exclude all others in using their creations
unless this is in exchange for a monetary compensation for usage. That, when infringement is capable of being
ascertained they must be knowledgeable in exercising their right against the infringer. They must of course
know how their creation would work for them for accumulation of their wealth and contributory to the wealth
as well of the country. Note that when infringement is apparent and there was inaction to the rightful owner, the
opportunity to earn is lost. Hence, as a talented person, we need to know more than any other people in terms of
our intellectual properties and the corresponding rights attached to it.

Yes. I definitely gained knowledge on the subject matter. The more important one I took note are the individual
definitions of Intellectual properties to wit:

1. Patentable Inventions. - Any technical solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may
relate to, a product, or process, or an improvement of any of the foregoing.2

2. An invention qualifies for registration as a utility model if it is new and industrially applicable.3

3. An Industrial Design is 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;

4. Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements,
at least one of which is an active element, and some or all of the interconnections are integrally formed
in and/or on a piece of material, and which is intended to perform an electronic function; and

5. Layout-Design is synonymous with ‘Topography’ and means the three-dimensional disposition,

however expressed, of the elements, at least one of which is an active element, and of some or all of the

1
Section 2, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines
2
Section 21, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines
3
Section 9, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines

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interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an
integrated circuit intended for manufacture.4

6. 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.

7. 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 that use the sign under the control of the registered owner of the
collective mark.

8. Trade name means the name or designation identifying or distinguishing an enterprise. 5

9. Literary and artistic works, hereinafter referred to as “works”, are original intellectual creations in
the literary and artistic domain protected from the moment of their creation6 (Copyright)

There is patent important to know the definitions of the different intellectual properties. We must be
able to completely distinguish one from the other in order to avail of the right protection under each
category and register them rightfully in its proper classification.

PART II
A
Ronald invented a machine that can create an infinite source of clean energy. It’s a wonder machine
that can put the oil industry into oblivion, as well as providing the ultimate solution to the
environmental concern on air pollution.
If this concept is a reality, and you are Ronald, would you have the invention patented?
Yes, I would have the invention patented

The law provides that any technical solution of a problem in any field of human activity that is new, involve an
inventive step and industrially applicable shall be patentable. It may be, or may relate to, a product, or process,
or an improvement of any foregoing.

Here, the invention of Ronald of the machine that can create an infinite source of clean energy that can put the
oil industry to oblivion is a new, has inventive step and industrially applicable to the oil industry. Hence, the
machine invented by Ronald shall is patentable.

Assuming Ronald had obtained a Philippines Patent, do you think his invention will be protected in
other countries?
Your discussion.
Yes, this will be protected in other countries.

Had Ronald obtain a Philippines patent on the invention, his rights conferred by the patents may be protected in
other countries provided that such countries are also party to a treaty or convention protecting such rights of
the members. By virtue of the International Law Principle of Pacta Sunt Servanda whereby the Contracting
States are set to be bounded by their obligations of complying in good faith in giving credence to such treaty or
convention provision. However, his rights under the patent may not be protected in country which is not a
signatory to such treaty or convention.

4
Section 112, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines
5
Section 121, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines
6
Section 172, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines

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It is a known fact that developing countries want to have access to new technologies specially related
to the production of goods and to basic services. Explain how these developing countries can make
arrangement to access this technology transfer, and making sure that the contract will not be
disadvantageous to them.
Technology Transfer Arrangement is the process by which one party systematically transfers to another party
the knowledge for the manufacture of a product, the application of a process, or rendering of a service, which
may involve the transfer, assignment or licensing of intellectual property rights. The Agreement as this is must
be mutually agreed do not operate at the disadvantage of either of the parties. This should not be a unilateral
agreement whereby it only favors one of the contracting country.

C
Alex owns ACE Farm. Over the years he was able to develop a feed formulation for the native pigs
that are raised in the farm. With his farm-to-table advocacy, he also produces lechon, which according
to his customers, has unique savory taste.
If you were Alex, would you apply for a patent for your feed formulation and the process for roasting
the native pigs as lechon? Your views.
Yes. The feed formulation and the roasting process may successfully be registered as a patent.

The requirements of patentability are:

1. It must be novel
2. Inventive Step
3. Industrial Applicability

Here, the requisites are complied with such that the feed formulation and roasting process is unique. The
development stage took time to finally create an invention that was not yet available. This may be used and
utilized for farming and hog raising and with the food industry.

PART III
A
a. What is on-line selling of goods?
Online selling is the act or process of selling goods, products or services by means of using electronic platforms
and medium which tend to me more scalable, easier and faster with not so much time and effort given.

b. When an on-line seller brings into the market certain goods bearing a well-known mark, but
was a substitution as it was shown to have inferior quality than the genuine goods of the trademark
owner, will the trademark owner be impleaded, together with the on-line seller under the Consumer
Protection Act?
Yes. The trademark owner can be impleaded together with the online seller. Being a trademark owner, he has a
direct interest in the settlement of a Consumer Protection case in that the resolution would affect or impact the
transaction of the trademark owner. Since he is a party in interest. A party in interest will be affected whether
favorably or adversely by the decision to be rendered. Hence, the person of the trademark owner may be validly
impleaded.

B
Jollibee Foods Corporation is the owner of the mark Jollibee. Given the growing popularity of
Jollibee in other countries where there are big groups of Filipinos, a businessman in China opened a
food store using the mark “Joy-Rul-Bee” which words represent a translation of the mark Jollibee,
and operates in exactly the same business concept as Jollibee, including the store designs and logos.

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Will this constitute an infringement and unfair competition of Jollibee’s intellectual property rights?
Your views.
Yes, this will constitute trademark infringement and unfair competition.

Any person who shall, without the consent of the owner of the registered mark:

1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same
container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of
any goods or services including other preparatory steps necessary to carry out the sale of any goods or services
on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant
for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts
stated above or this subsection are committed regardless of whether there is actual sale of goods or services
using the infringing material.7

Further, in particular and without in any way limiting the scope of protection against unfair competition, the
following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely
to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the
actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the
public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any
vendor engaged in selling such goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false
belief that such person is offering the services of another who has identified such services in the mind of the
public; or

(c) Any person who shall make any false statement in the course of trade or who shall commit any other act
contrary to good faith of a nature calculated to discredit the goods, business or services of another. 8

Here, since Joy-Rul-Bee which words represent a translation of the mark Jollibee, and operates in exactly the
same business concept as Jollibee, including the store designs and logos without being authorized by the
Jollibee in the Philippines who holds an exclusive right to use in commerce. The act shall fall under the
circumstances defining an infringement. The Jollibee trademark was used in China by Joy-Rul-Bee in such a
way that they would profit from it and would deceive the public. Finally, the act of using the trademark of
Jollibee without authority and deriving profits therefrom causing misrepresentation, deception and fraudulent
transaction. Hence, trademark infringement sets in.

C
a) How would you differentiate confusion of goods from confusion of business?
 Jurisprudence has noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion), where
the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing
the other; and (2) confusion of business (source or origin confusion), where, although the goods of the parties
are different, the product, the mark of which registration is applied for by one party, is such as might
reasonably be assumed to originate with the registrant of an earlier product, and the public would then be

7
Section 155, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines
8
Section 168.3, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines

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deceived either into that belief or into the belief that there is some connection between the two parties, though
inexistent.9

b) Having read the case of Asia Brewery, Inc. v. SMI, describe in detail how the Supreme Court
applied the tests to determine if there were confusing similarities between the two marks.
In the case of Asia Brewery, Inc. vs. SMI, the Court held that there was no infringement. Infringement is
determined by the "test of dominancy" rather than by differences or variations in the details of one trademark
and of another. If the competing trademark 1) contains the main or essential or dominant features of another,
and 2) confusion and deception is likely to result, infringement takes place.

In the this case, the dominant feature of SMC is the words “SAN MIGUEL PALE PILSEN” with elaborate serifs
at the beginning and end of the letters "S" and "M." While the dominant feature of ABI's trademark is the name:
“BEER PALE PILSEN” with the word "Beer" written in large amber letters. Besides the dissimilarity in their
dominant feature, the following other dissimilarities in the appearance of the competing products abound:

1. San Miguel’s bottle has a slender tapered neck, while Beer na Beer’s bottle has a fat, bulging neck.
2. San Miguel’s bottle cap is stamped with a coat of arms and the words "San Miguel Brewery Philippines"
encircling the same, while Beer na Beer’s bottle cap is stamped with the name "BEER" in the center,
surrounded by the words "Asia Brewery Incorporated Philippines.”
3. San Miguel is "Bottled by the San Miguel Brewery, Philippines," while Beer na Beer is "Especially brewed
and bottled by Asia Brewery Incorporated, Philippines."
4. San Miguel is with SMC logo, while Beer na Beer has no logo
5. San Miguel’s price is P7.00 per bottle, while Beer na Beer’s price is P4.25 per bottle

Based on the dissimilarity in their dominant features as well as in sound, spelling & appearance, Beer na Beer
cannot be said to be similarly confusing with San Miguel Pale Pilsen.

The fact that the words ‘pale pilsen’ are part of ABI’s trademark does not constitute an infringement of SMC’s
trademark: SAN MIGUEL PALE PILSEN, for “pale pilsen” are generic words descriptive of the color
(“pale”), of a type of beer (“pilsen”), which is a light bohemian beer with a strong hops flavor that originated
in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages.  “Pilsen” is a “primarily
geographically descriptive word,” hence, non-registrable and not appropriable by any beer manufacturer. The
words “pale pilsen” may not be appropriated by SMC for its exclusive use even if they are part of its registered
trademark: SAN MIGUEL PALE PILSEN. No one may appropriate generic or descriptive words. They belong
to the public domain.10

PART IV
A
a) What are copyrightable works?
The following are the copyrightable works:
1. Literary and artistic works, hereinafter referred to as “works”, are original intellectual creations in the
literary and artistic domain protected from the moment of their creation and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or
other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or
designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an
industrial design, and other works of applied art;
9
Sketchers, U.S.A., Inc., Petitioner vs. Trendworks International Corporation, G.R. No. 164321, March 23, 2011
10
Asia Brewery, Inc. vs. The Honorable Court of Appeals & San Miguel Corporation, G.R. No. 103543, July 5,
1993

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(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography,
architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.11
2. Derivative Works:
(a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or
artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are
original by reason of the selection or coordination or arrangement of their contents.12

b) A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an
opening that resembles a window equipped with an escape in case of fire or emergency. It is by
nature, functional and utilitarian.
Assuming X is the owner of this design concept, and to protect his rights thereto, may he have it
patented as an industrial design or have it copyrighted as a design for a work of art?
It is more appropriate to register this creation as an industrial design. An Industrial Design is 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 giving a special appearance to and can serve as pattern for an industrial product or
handicraft. Here, since a hatch door is a small door, gate or opening that looks like a window is a three-
dimensional design as it involves height, width and length. Hatch doors, in this case have one or similar or like
appearances that has the effect of becoming pattern in that whenever hatch doors are being made they would
appear in like patterns and appearance.

B
a) John Grisham is the author of the novel “The Firm” which gained worldwide readership.
Without the knowledge of Grisham, Warner Brothers, Inc., a movie company produced a film based
on Grisham’s novel.
Is there a violation of Grisham’s intellectual property right? Discuss.
No. This is not a violation of Grisham’s intellectual property right.

The following derivative works shall also be protected by copyright:

(a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or
artistic works; and

(b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are
original by reason of the selection or coordination or arrangement of their contents.

The works referred to in paragraphs (a) and (b) above shall be protected as new works: Provided, however,
that such new work shall not affect the force of any subsisting copyright upon the original works employed or
any part thereof, or be construed to imply any right to such use of the original works, or to secure or extend
copyright in such original works.

Here, since the novel of John Grisham, “The Firm” was dramatized and translated into a movie by Warner
Brothers, Inc., this shall now be effective a derivative work that originated from an original work which is the
novel. A derivative work is considered as new work which has the effect of a new copyright. That will now
covered by a new copyright protection.

11
Section 172, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines
12
Section 173, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines

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b) Dr. Rocky was former Secretary of Health. After leaving his position in government, he
immediately worked on a book entitled “Covid-19 Pandemic in the Philippine Setting”, wherein he
used government data and information he obtained during his stint as Cabinet Secretary, but with due
acknowledgment of his sources. The newly-appointed Health Secretary objected to the publication of
his book, with his copyright on it for the main reason that the soon-to-be published book is considered
as “works of the government”.
Rule on the contention of the new DOH Secretary.
The contention of the new DOH Secretary is incorrect.

The elements of “works of government of the Philippines” are 1) the creator must be an officer or an employee
of the government; 2) the work he has done must be part of his regularly prescribed official duties.

Here, Dr. Rocky’s soon-to-be published book does not fall within the meaning of “works of the government”
because when the book was made, Dr. Rocky have left his government post. He wrote said book entitled
COVID-19 Pandemic in the Philippine Settings when he was out of the Department. Since, Dr. Rocky was not
anymore doing an official duty at the time. Hence, the work of Dr. Rocky shall not become effective as works of
the government.

C
a) If you will be doing a thesis for your masteral course, and you need to incorporate portions of
published work, how will you avoid being sued for plagiarism or infringement of copyright?
The proper way to avoid being sued for plagiarism or infringement of copyright in doing a thesis in masteral
course, is that of making of quotations from a published work if they are compatible with fair use and only to
the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of
press summaries: Provided, that the source and the name of the author, if appearing on the work, are
mentioned.13

Here, by properly naming, making known of the source, quoting the writings and giving courtesy on the author
of a published work that are chosen to be part of the masteral thesis will not operate as violation of the
intellectual property of the writer. Hence, no action for infringement of copyright can be a cause of any legal
action.

b) If Jose Rizal were alive today, how long will his copyright to his novels Noli Me Tangere and
El Filibusterismo subsist?
The copyright in works under literary and artistic works and derivative works shall be protected during the life
of the author and for fifty (50) years after his death. This rule also applies to posthumous works. 14

Here, since the novels of Jose Rizal entitled Noli Me Tangere and El Filibusterismo fall under the classification
of literary and artistic works. Hence, if still living in the present his works shall be protected under the
copyright law during his lifetime, being the author of such work plus fifty (50) year after he died.

 End 

13
Section 184.b., R.A. 8293 otherwise known as Intellectual Property Code of the Philippines
14
Section 213, R.A. 8293 otherwise known as Intellectual Property Code of the Philippines

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