Intellectual Property
That is
Take note that the state recognizes that the use of intellectual property bears
a social function. Also, the Constitution gives protection to IP, particularly
under Article 14, Section 13 of the Constitution – protect and secure the
exclusive rights of scientists, inventors, artists, and other gifted citizens to
their IP and creations.
For purposes of study of IP, we not only look at IP Code (RA 8293) but also
consider that treaties since they are part of our code. Therefore, the IP Code,
has incorporated some treaties where the Philippines is a signatory. For
instance, we have the WTO Agreement on trade-related aspects of IP rights
or what we call TRIPS Agreement, which is already incorporated in our IP
Code.
When we talk about IP, the term consists of copyright and related rights,
trademarks and service marks, patents, geographic indications, layout-
designs of integrated circuits, protection of undisclosed information and
industrial design. But for our purposes we will focus our study on copyright,
trademark, patent, protection of undisclosed information and geographic
indications.
Geography meaning area or place. Geographic indications are indications
that identify a good as coming or originating from a particular region or
locality. For instance, pognac or scotch or tequila. These indications identify
where this wine comes from. But what is important to know in geographic
indication is that it does not only identify a certain geographic are of location
where this wine comes from, but it carries a certain reputation or
characteristic which is attributable to the area.
Later on we will be discussing about protection of undisclosed information or
trade secrets. And then we have trademarks, trade names, service marks.
We also have utility models. There is confusion between utility model and
what is patentable. Note that to determine if you will apply for a patent or for
a utility model registration, a utility model is a technical solution to a
problem to any field of human activity which is new and industrially
applicable. Same as patent, except that it is not inventive. New but no
inventive characteristic. It is short of a patent (will not qualify as a patent
since patent has an inventive step).
Note that IP Code prohibits, kasi iyung iba nagbabakasali, kapag hindi
pumasa sa patent, mag-aapply ng utility model registration. Hindi pwede na
sabay iyung application mo so you have to choose. So kapag nadeny ka sa
patent, that is the time that you apply to utility model application. Pwede rin
naman na nag-apply ka ng patent, before siya ma-approve or madeny,
pwede mo i-convert iyung application mo to utility model application.
allowed but you can only convert once.
Industrial Designs are any composition applied for colors or any three-
dimensional forms (e.g. kahon ng Toblerone – kapag nakita mo iyung box,
alam mo agad na Toblerone).
Treaties form part of our law and many treaties concerning IP are now part of
our IP Code (e.g. TRIPS agreement under WTO).
a. Paris Convention – protection to patents and trademarks
b. Berne Convention – copyrights
c. Rome Convention – protection of performers or songs,
broadcasting corporation
In connection to International Law, familiarize yourself to certain terms such
as reciprocity which is of course incorporated under Section 3 of IP Code.
What does the reciprocity provision provide? Any person who is a
national of a country which is a party to a treaty relating to IP rights
must extend reciprocal rights to nationals of the Philippines and must
be entitled to the same benefits which our country accords to these
nationalities.
National Treatment (Section 3 of the TRIPS Agreement)
Each member of the TRIPS, according to the WTO, must accord its nationals
or other member countries no less favorable treatment than it accords its
nationals. IF this is how you treat your nationals, this is the same treatment
you accord to other signatories to the TRIPS Agreement.
Most Favored Nation (MFN Treatment)
With regards to the protection of IP, if you provide any advantage, or
privilege, or favor to any member signatory of the TRIPS Agreement, you
must also accord that same privilege, favor or advantage to other countries
or other nationals.
IPO administers and implements the policies as provided under IP Code.
This where you apply for patents, register utility models or industrial design
and trademarks. The IPO can also adjudicate contest relating to IP rights.
Different Kinds of IP Rights
Copyrights – Rights over literary and artistic works. You don’t have to
register your copyright in order to be given protection to your work. The
moment your work is created, it is already protected – your rights are already
protected.
Why do some submit copies of their work (e.g. to the IPO or National Library
Office)? It is to provide proof of your work. But even if don’t submit a copy to
NLO or IPO, you can assert your right to your literary or artistic work.

No Formality Rule – One does not need to apply for a copyright. Your rights
are vested upon creation of your work.
What is the basis for the No Formality Rule? Under the Berne Convention, it
provides that. The enjoyment and exercise of this right should not be subject
to any formality. The most that the National Library can do is register or
record your copyright, but it does not grant it.
In connection with copyright, you have to know who can be owners of
copyrights. With respect to literary works, books – authors, musical
compositions – composer, painting / sculptures – painter or sculptor,
discoveries / invention – scientist or technologist.
How about letters or private communications (e.g. Letters of Rizal to
Josephine Bracken)? Who owns the letters and (who has the right to give
permission) who will you ask permission from if you want to use the letters in
a book? Take note that these letters are owned by the person to whom the
letters are addressed.
Another problem that may arise is with regards to work done by the
employee. Sinong may-ari ng work ng employee? Si employee ba or si
employer? It depends. If it is a result of regular function or duties, it is the
employer. But, if it is not part of his regular duties, it is owned by the
employee.
How about films? Sinong may-ari ng films? And who has the right to exhibit
them to theaters? In connection with audio-visual work, you have the
producers – but, depende iyan sa agreement ng mga parties. Pwedeng iyung
producer, pwedeng iyung director, or iyung gumawa ng work.
Or you can ask somebody to do a work, like a sculpture, who owns the
sculpture? Of course, it is the person who commissions the work. But,
ownership of the copyright lies with the one who created it. So kapag
nagpagawa ka ng painting, ikaw ang may-ari ng painting but the copyright is
with the painter unless stipulated otherwise in an agreement.
How about co-authors? Who owns? Kung co-authors, their rights will be
governed by the rules of co-ownership, unless you can define kung anong
ginawa nung isa dun sa isa. If you can identify, they own whatever they
created. If you cannot identify, they co-owned.
You also need to know the duration of a copyright (Sec. 213 and 214). After
the expiration of a copyright, it becomes free for all – anybody can use it.
Literary / Artistic Works – Lifetime of the creator and 50 years after his
death
Broadcast – 20 years after the broadcast
What cannot be copyrighted?
a. Idea (e.g. E=MC2); Even if such idea is expressed or embodied in a
work, it cannot be subject to a copyright. In one case, the Supreme
Court held that the format of a TV Game Show is not subject to a
copyright (e.g. Singing Contest like The Voice, cannot be copyrighted
and can be copied).
b. News of the Day; A writer writes a comment on a newspaper, that is
subject to copyright. But if such writer is just mentioning about
something that happened (news), then he cannot claim protection
about the news (e.g. Discussion on the Senate about Ninja Cops).
c. Works of the Government; If you want to use such works for profit
(e.g. compile and sell Circulars of BIR), that becomes subject to
copyright.
Pearl & Dean vs Shoemart – Pearl & Dean created light boxes for SM and
then SM decided to create their own. According to the Supreme Court, the
idea of the light boxes themselves cannot be classified as copyrightable.
In connection with the rights of the person over his copyrights, we have 2
kinds of rights: economic rights (pera) and moral rights.
 Economic rights – Right to have your work reproduced; If I created
a book, and you want to create a movie or a play or any adaptation,
you have to get permission from the author.
 Moral rights – Not translatable to pesos; the right to have my name
or the work attributed to me; So if you have to use my work, you
have to indicate my name; If I allow you to use my work, I can tell
that you should not change the story or ending
Fair Use
This is an exception to copyright. You use a copyrighted work without the
need of getting permission from the one who created it. How do you know if
it constitutes fair use (4 factors to determine if there is fair use)?
a. You have to know the purposes and character of your use
b. You have to know the nature of the copyrighted work
c. Substantiality or amount of the portion used
d. Effect of the work upon the potential market of the copyright work
Example, for copies for classroom purposes, for mention on news article, for
research, that is considered as fair use. But if you start photocopying works,
and selling it, that will affect the market of the copyrighted work.
Who has jurisdiction over copyright infringement? It is the IPO, in
particular, the Bureau of Legal Affairs. It has jurisdiction over administrative
complaints, involving violation if IP rights provided that the total damages
claimed are not less than 200K.
Infringement and plagiarism are not the same.
Plagiarism is intellectual dishonesty – you pass of somebody else’s work
as your own. You can plagiarize something that is not copyrighted – meaning
there can be plagiarism even without copyright infringement.
Infringement (Different Venues)
a. You may file for injunction to stop
b. You can ask for damages, which you should file within 4 years
c. Carries with it criminal liability, imprisonment and fine
d. You can ask the court to impound, confiscate or destroy the work of
the infringer
e. You can file for administrative action with the IPO
Malls that sells pirated CDs/DVDs
1. First, nakinabang ba sila?
2. Second, alam ba nila?
3. Third, do I have the right and ability to control the activity of the
person who is doing the infringing?
If all the above are present, then the mall owner is liable for copyright
infringement.
Violation of the IP Code is malum prohibitum, so that good faith and lack of
intent is not a defense in copyright infringement. Of course, your defense is
fair use, not good faith.
TRADEMARKS- it has to be visible sign capable of distinguishing the goods
or services of an enterprise. It includes yung mga containers.
Pag goods- Trademark
Pag services- Service Mark
TRADENAME- it is the name identifying or distinguishing an enterprise.
Trademark/Service Mark- para malaman niyo kung pwede niyo siyang
iregister kailangan may visible sign. So yung amoy ng pabango or yung
tunog ng musical instrument hindi pwedeng maging trademark yan. Hindi
siya visible.
Pwede siyang logo, acronym, words e.g. San Miguel Corp. may logo tapos
followed by the word “San Miguel Corporation”. Pwede ring picture as a logo,
BUT hindi enough na may visible sign. Kailangan pag nakita mo yung sign
na yon, malaman mona yung goods bearing that sign na gawa siya by that
enterprise.
COLLECTIVE MARK- visible sign din siya kaya lang it can use by different
enterprises or different individuals.
E.g. yung 100% recycled paper boy, that is a collective mark that it should be
use by members of the recycled paper boy alliance.
Or girl scouts, it is also a collective mark na pwedeng gamitin lang of course
ng mga girl scouts. Or American automobile association- it is also a collective
mark that can only be use by the members of the association.
When we talked about TRADEMARK, SERVICE MARK and COLLECTIVE
MARK hindi automatic yung copyright na hindi na kailangang iregister na
protected na yung right mo. -you have to register first. Prior to registration
you do not have any right to prevent any anybody from using it.
TAKE NOTE: When it comes to TRADENAME, there is no need to register
them to secure protection.
G.R: Under the Intellectual Property Code it provides that the trademark
rights shall be acquired through registration before you can file an action for
trademark infringement.
XPN: Internationally well-known marks covering identical or similar goods or
services.
E.g. pag ginamit mo yung trademark ng lacoste which is international well-
known marks. Sa tshirt involving the same products or services kahit hindi pa
nakaregistered si Lacoste sa atin, you can already be charged for trademark
infringement.
Q: BUT if you use the word Lacoste para sa furniture e hindi naman
nakaregistered si Lacoste dito, pwede kabang idemanda for trademark
infringement?
A: NO. Only if Lacoste registered its trademark here.
(Magkaiba yung rule pag internationally well-known mark in the same goods
or services and internationally well-known marks and you use it for dissimilar
or different goods and services.)
Yung mga cases about trademark medyo nakakalito kasi before 1987 before
you can register the trademark kailangan muna may two (2) months actual
use. BUT now there is NO MORE requirement that pior two (2) months
used before you can register a trademark. Yung nirerequire lang AFTER mo
iregister yung trademark, within 3 years upon filing of the application
kailangan magsubmit ka ng declaration of actual use. To avoid yung
situation na ginagawang negosyo yung pagreregister ng trademark. Hindi ka
pwedeng maghold din ng trademark. You have to use it within three years
upon the filing of the application otherwise your registration will be
cancelled.
Let’s say naissuehan ka na ng registration of trademark. It doesn’t mean
however na that is a conclusive proof of ownership of the trademark because
it can be later be shown that somebody else has a better right.
There is one case na kineclaim niya na “ako yung unang nagregister ng
pangalan dito sa Pilipinas”. But the point is kahit nauna kang nagregister, eto
namang may ari internationally ng mark na yan, ay matagal na yang
ginagamit yang mark nay an. If such is the case and approved na hindi ibig
sabihin binigyan ka na ng registration ng IPO, you can exclude anybody else.
It is not conclusive proof of ownership nor it is a mode of acquiring
ownership yung registration of the trademark. Because the moment
somebody else proved that he has a better right over such trademark, then
your trademark registration can be cancelled.
Certificate of registration of a trademark is just prima facie evidence of the
validity of the registration or owner thereof.
We said earlier that before you can file a case for trademark infringement
kailangan muna nakaregister yung trademark but if you want to file a case for
Unfair Competition or false designation of origin, hindi kailangan
nakaregister yung trademark.
Q: When is there unfair competition?
A: Hindi of course pareho yung unfair competition ng trademark and
infringement, when we talk abput unfair competition when someone passes
off a product as if it was his own or giving the appearance of the goods of
another and then claiming it as his own.
It is also possible kasi diba may mga multi-national companies nahindi lang
sa isang country nila nireregister yun g trademark, they registered it to
several countries. Let’s say nagfile si X company ng trademark sa US
January 1, 2019 and then nagfile siya sa Phils December 1, 2019. If that
country is also an assignatory under the reciprocity rule, the application is
deemed filed as of the date it was filed first ehich is January 1 even for
purposes of the Phils. This is what we call priority date rule, the right of a
trademark may be protected from the priority date.
Kaya lang pag clinaim mo yung benefits ng priority date, hindi ka
macoconsider na nakaregister dito ng hindi ka nakaregister doon. Kasi
nagapply ka January 1, so for purposes of the Phils. pag hindi ka naapprove-
an don, hindi ka registered dito.
Just like in the case of a copyright, you have to know works which CANNOT
be copyrighted. You also have to know what marks CANNOT be registered.
(section 123.1)- immoral, deceptives, scandalous matter or those which
suggest a connection with dead persons, national symbol so hindi mo
pwedeng gamitin yung mukha ni Jose Rizal doon sa trademark mo, or hindi
mo pwedeng gamitin yung flag ng Pilipinas or any of its political subdivisions.
Hindi mo din pwedeng gamitin yung flag ng ibang bansa. Pag buhay na tao
pa siyempre kailangang kumuha ng consent bago mo gamitin yung pangalan
sa trademark mo. Kung patay naman na, of course you get the consent of
the widow, or pag wala nang asawa yung heirs.
Pag nakaregister na yung mark locally, wala nang problema. Whether of
course dissimilar goods or similar goods, hindi mon a pwedeng icopyright.
Nagkakaproblema lang if yung mark na pinaguusapan natin is what we call
internationally well-known marks. The rule is,internationally well-known mark
and you want to use it for the same goods or services, hindi kailangan
nakaregister yung IWKM, you can be charged for the infringement of the
goods. But if it is an IWKM and you are going to use the mark a dissimilar
goods or services kailangan nakaregister dito sa Pilipinas yung mark
otherwise hindi ka pwedeng icharge ng infringement of trademark.
There is one case, yung GALLO na trademark ginamit ng Mighty Corporation
sa brand ng cigarette, hindi naman pareho yung produkto pero yung GALLO
na gawa nakaregister dito sa Pilipinas. Ang issue dito hindi yung
nakaregister ba siya, kundi kung IWKM ba siya. SC said that hindi ka naman
kilala e. Nagclaim ka na IWKM ka hindi ka pwedeng magapply nito kasi hindi
ka nga IWKM, it DOESN’T matter kung registered ka or hindi kasi unang una,
hindi naman IWKM. So hindi mo pwedeng gamitin yung Paris Convention as
basis for ascertaining your right over the trademark.
Q: What else can you NOT registered as Trademark?
A: Generic signs, Colors alone.
In connection with trademarks, we have what we call the doctrine of
secondary meaning.
G.R: You CANNOT register a generic mark because it belongs to
everybody.
XPN: BUT the moment that generic mark acquires a secondary meaning,
and it is already identified by a particular business/ enterprise and it has been
exclusively used continuously by that enterprise for at least 5 years that
generic mark can already be registered.
In the case of Selecta, hindi naman actually trademark infringement yung
finile na kaso but unfair competition kasi nga hindi naman nakaregister yung
selecta sakanya. Siyempre hindi siya pwedeng magfile ng trademark
infringement. Kasi diba sabi natin you can only file a trademark infringement
kung nakaregister na yung trademark. Sabi nung kalaban “bakit ka
nagsasabi ng unfair competition ikaw ba yung mayari ng selecta e generic
nga yan”, sabi niya it has already acquired a secondary meaning and yet it
has been exclusively used that name for so many years so we can exclude
you from using it.
In the case of AngTibay, hindi naman nakaregister actually kaya lang
matagal na niyang ginagamit yung pangalan na yon and it has already
acquired a secondary meaning. And then somebody else registered the
same trademark, SC said that hindi mona pwedeng iregister yan kahit hindi
niya niregister kasi it has already acquired a secondary meaning. It already
belongs to the AngTibay Company.
In the case of Salonpas and Lionpas, nauna si Salonpas. Ang nakaregister
ay salonpas tapos may nagregister lionpas naman, sabi ni Salonpas “it will
mislead the public it will create confudsion”. SC held that pareho yung tunog
na “pas” so it will create confusion and therefore hindi inallow si lionpas na
iregister yung trademark.
Q:Pag binigyan ka ng trademark registration, how long you enjoy exclusive
rights over the same?
A: 10 years, pero kailangang patunayan na within 3 years from the date of
application na ginamit mo. You have to submit declaration of actual use and
evidence that you use the trademark. OTHERWISE, it will be cancelled.
In determining WON there is trademark infringement or not hindi lang
tinitignan yung fact of registration, ang importante diyan ay pag pinayagan
bang gamitin ng iba to will it create confusion in the minds of the public
as to the source of the goods or services. Minsan kahit sound alike pero
hindi naman macoconfuse, walang confusion.
2 test to determine whether there is infringement:
1. Dominancy Test- tinitignan yung dominant feature of the same
goods. Similar ba yung dominant feature ng trademark? Or
E.g. Mcdonalds case, pag ginamit mo yung letter “M” which is the
main distinguishing mark of Mcdonalds of course obvious na under
dominancy test there is trademark infringement.
Bigmac you know that bigmac is a registered mark of
mcdonalds,mayroong local company niregister niya yung feature na
“bigmak. Sabi ng Mc Bigmak, “yung big generic mark hindi pwedeng
sabihin ng mcdonalds na hindi pwedeng gamitin ng iba yung big, and
of course magkaiba naman kami ng spelling”. SC held that there is a
likelihood of confusion na pagbumili ka dun sa Mc Bigmak baka isipin
mo bumili ka ng produkto ng Mcdonalds. May unfair competition din,
because not only the trademark use pinapass off din as if it was
another company’s products.
2. Hollistic Test- pag hindi kaya nung dominancy test tinitignan yung
entirety. Not only the main feature but also yung paligid na designs,
colors etc.
There is one case na yung Philip Morris mayroon siyang sigarilyo na
Mark 7 yung isang company naman na subsidiary ng Pm meron
siyang Mark 10, and yung kalaban niyang Fortune Tobacco naglabas
ng sigarilyo yung trademark pangalan “Mark”. Sabi ng SC wala daw
confusion, using holistic test.
Idem Sonans Rule- in connection with dominancy test the aural
effects of the words or letters contained in the marks should be
considered in determining the issue of confusing similarity. “ sounds
like” E.g. Dermaline and Dermline (confusingly similar), Nanny and
Nan (confusingly similar).
Expansion of business rule- e.g. Myra Pharmaceuticals,
gumagawa ng mga skin care products. Si Myra siya yung mayari ng
dermalin. There is also another company dermaline na nagregister
siya, pero ang beauty and health services. SC held that kahit hindi
pareho yung business pwedeng sabihin na expansion of business
siya ni Myra from beauty products, it is possible na pumunta siya into
health and beauty services. Kasi natural progression yan ng
negosyo. So pag binayaran kita dermaline, iregister ko sa name nay
an maprerevent na yung dermalin brand para gamitin yung product
ng Myra.
- Prospective purchasers would be misled into thinking that
the complaining party has extended his business into the
field or any way connected with the activities of the infringer
or when it can forestalls the normal potential expansion of
business.
Kung dalawa namang hindi pareho IWKM tapos nakaregister lang sa
Pilipinas gagamitin ng another business for another product
pinapayagan padin kasi hindi ka naman macoconfuse. XPN lang
talaga yung IWKM na kahit hindi pareho yung product pero niregister
niya sa Pilipinas you can be prevented from using it. Even for a
different product or goods. Kaya yung mga international brands hindi
lang sila nagreregister sa isang country, so kung ineexpect nila na
papasok sila sa Pilipinas they have to register it to prevent any
person for using the same name for a different product.
CONTAINERS- use of a container can be a trademark infringement.
Yung mga bote na nakaengrave sa bote yung trademark.
E.g. Bote ng beer tapos nilagyan mo ng suka that is trademark
infringement.
Yung sa cylinder ng LPG nakalagay na diyan yung trademark, tapos
nirefill mo tapos binenta mo.-hindi lang trademark infringement
pwede ring unfair competition na pinapalabas mon a gawa yan ng
petron or shell. Pero kahit na sinasabi mong refill lang yan, pero may
bumibili pa din, trademark infringement pa din.
When it comes to protection of tradename, it need not registered
with the IPO before you can file an infringement suit. Kasi ang
ginagawa naman ng iba kumukuha sila ng tradename na imported
tapos ginagamit nila as trademark dito siyempre yung tradename
naman hindi naman kailangang iregister dito. SC held that hindi
naman talaga kailangang iregister ang tradename. Pero the moment
you used it you can be charge in court for infringement of a
tradename.
Geographical terms- pwede mo bang sabihin na you can
exclusively use it?
E.g. St. Francis in Ortigas and mayrong property wanted to use the
name St. Francis towers, may nagooppose sabi “St. Francis is a
geographical distinction,so it cannot be used and it cannot be
registered. It cannot be exclusively belong to one party” SC said the
general rule geographical terms are belong to the public domain.
Unless it has acquired a secondary meaning. Hindi naman nag-
acquire ang Shangrila ng secondary meaning. Ang St. Francis hindi
pinayagan na i-register ang St. Francis as part of the name of the
tower. Di ba meron din St. Francis Shangrila na condo na katabi ng
mall? Hindi siya pwede i-register. That would prevent others from
using the name St. Francis. So pwedeng magkaroon ng another
condominium using St Francis as a name.
Another case. Yung Levi’s. Itong Levi’s parehong pantalon. Ginamit
nung isa yung Levis na trademark dun sa mga pantalon. But sabi ng
Supreme Court, hindi niya ginamit yung dominancy. Ang ginamit niya
holistic test. Sabi niya, yung Levis na yan ginagawa sa tailoring,
malilito ka ba na yung binili mo dun sa tailoring original na Levis.
Tapos made to order. May made to order bang Levis. So, sabi ng
Supreme Court, walang likelihood of confusion. Malilito ba yung
public.So sabi ng Supreme Court in this case: the likelihood of
confusion is the gravamen of trademark of infringement. So, kung
walang likelihood of confusion, walang infringement. Kahit pa
pareho. Kasi 300 pesos binebenta yung pantalon, malilito k aba?
Wala naming 300 pesos na Levis.
So, lets go to the remedies available to you in case your trademark is
used by another party. Just like in case of copyright, you can file
injunction to prevent another party from using your tradename. You
can also file criminal action or you can also file civil action for
damages. And then you can also ask the court to confiscate,
impound and destroy the infringing products. You can also file an
administrative action to the IPO to cancel the infringing trademark.
You can also prohibit importation of the infringing goods.
Kailangan ba binebenta na yung produkto in order to constitute
trademark infringement? In one case, the Supreme Court said: NO.
Kahit yung actual sale ng infringement goods not necessary. Kahit
ginagawa pa lang, andun pa lang sa bodega, hindi pa binebenta –
that is already trademark infringement.
Minsan may makikita kayo na letter R na may bilog. Anong
significance ng R na to? Kailangan ba ilagay siya sa trademark mo?
Actually, before you can file for damages, you can file famages in a
case of trademark infringement, kailangan ma establish na the
infringer knows that the trademark is already registered. Kaya
nilalagay yung R na yun, it already supplies the presumption of
knowledge. So, kelangan you know – there is knowledge- in order to
claim for damages.
Yung iba naman nilalagay yung TM. Hindi R na bilog, but TM. Ano
naman significance ng TM? Actually sa Pilipinas, walang significance
yung TM. Kasi in the US, even unregistered trademarks are given
protection sa US. So in short, hindi mo kailangan lagyan ng TM or R.
Pero yung R again, supplies the presumption of knowledge. It’s
telling the world that it is a registered mark.
Lets go to unfair competition. Magkaiba yung trademark
infringement. Pag trademark infringement – ginaya, kinopya. But
when you talk about unfair competition, eto yung you use deception
to pass off your goods as being the product of another. So, merong
intent. So there is fraud/intent to deceive the public and there is
confusing similarity to the general appearance of the goods. So pag
mag-fifile ka ng case of unfair competition, kailangan mo i-prove
yung fraud. But trademark infringement, you don’t have to prove
fraud.
So, again in trademark infringement, there is unauthorized use of a
trademark. But when it comes to unfair competition, you pass off
one’s goods as belonging to another. So as I said earlier, it is not
required to prove intent/deception in the case of trademark
infringement but it is necessary in the case of unfair competition.
If you want to file a case for trademark infringement, make sure
that your trademark is registered. Exception is – internationally
wellknown marks for the same goods or services. But if you
want to file a case of unfair competition, there is no need for
prior registration.
But note that, the term unfair competition is broader. It does not
only involve use of trademark, it also involves other cases under the
Civil Code.
Another term you may encounter is Inter Partes Cases. Pag sinabing
inter partes cases, these are contested cases filed before the IPO.
So pagdating sa trademark cases, ano yung tinatawag na inter
partes cases? You are opposing the application for registration of a
trademark or you want to cancel the registration of another.
Pagdating naman sa patents. You want to cancel a registration that
is already patented. So inter partes – contested by the other parties.
Which court has jurisdiction over unfair competition cases? It is the
RTC.
PATENTS
So pag patents, you have to remember the requisites. Ano yung
requisites?
1. Technical solution of a problem in any field of human
activity
2. It must be a novel invention;
3. Industrially applicable.
Ano yung wala yung utility model? Yung inventive – yung second. Yung
ulitily model technical solution din siya of a problem in human activity and it
has industrial application but it is not inventive kaya utility model lang siya.
What can you patent? Machine, products, process, improvements of
products/processes, microorganisms, etc. But again, alamin niyo yung hindi
pwede. Mas madali alamin yung pwede pag alam niyo yung hindi pwede.So
ano ang hindi pwede ipatent? Discoveries, scientific theories – e.g. E=MC2,
hindi pwedeng i-patent, mathematical methods, plant varieties or animal
breeds, etc, anything which is contrary to public order or morality.

So, in the case of drugs. Dati, liquid form siya. Nakaimbento siya ng solid
form, hindi naman nagbago yung efficacy nung gamot, hindi siya patentable.
Kasi you just discovered a new form. It does not result in the enhancement of
efficacy of the substance not patentable.
Who has a right to the patent? Of course, the inventor or his heirs or
assignees. What if two persons jointly made the invention? Of course, the
patent belongs to them jointly. The problem arises kapag dalawang tao yung
nagki-create separately na sila ang nauna. So we have what we call the first-
to-file rule. If two or more persons have made the invention separately and
independently of each other, of course the right to the patent belongs to the
one who first file an application to patent. The earliest filing date is the one
who is entitled to the patent.
So, say, ako, meron akong ininvent. Nag-file ako sa Pilipinas. Nagfile din ako
sa US. And then meron itong isa, tingin niya siya yung naka-invent, nag-file
din siya sa Pilipinas. Ang problema sabay kami nag-file sa Pilipinas. Pero
kung nauna ako mag-file sa US. Yan yung tinatawag na earliest priority
date.
Andthen another term in connection with patent is the “on-sale bar rule”.
The moment you put your product on sale, you lose a right to a patent before
you file a patent application. Ano ibig sabihin non? Hindi pa ako nagfifile ng
patent over my invention, tapos binenta ko na. Hindi na ako pwedeng bigyan
ng patent. Because the voluntary act of selling it to the public is also
considered as an abandonment of a patent right. Kasi ano baa ng purpose
mo bakit mo pinapatent? You try to prevent others from using it. E binenta
mon a yung produkto edi pwede na ganmitin ng lahat. E bakit ka pa bibigyan
ng patent right?
Prejudicial Disclosure – just like trademarks, prior to the grant of patent, you
do not have a right to prevent others from using it. Unlike copyright. Pwedeng
hindi i-register. Pero in the case of trademarks and patents, if you do not
register it, you do not have an exclusive right over it. As I said, but the
moment the inventor voluntarily discloses his formula or his process or he
sells it, he loses his right – his exclusive right over it.
How long is a patent good for? Twenty years from the date of application.
And then in the case of determining whether there is patent infringement or
not, we have two tests: literal infringement and the doctrine of
equivalents.
So, ang unang test na gagamitin, e literal infringement. Kung walang literal
infringement, saka titignan kung may equivalents. Saka pa lang gagamitin
yung doctrine of equivalents. Kasi pag sinabing literal infringement, pag
nagfifile ka kasi ng patent, dinedescribe mo yan detalyado. Kung process
yan, ineexplain mo yung buong process. Pag sinabing literal infringement –
eksakto. It contains all the contents of the patent claimed. Kaya literal
infringement. Eksakto, which is the exactness rule or addition rule. Eksakto,
or dinagdagan mo lang ng isa.
Kapag sinabi naming doctrine of equivalents, minodify mo onti pero it
performs the same way. It functions the same way basically. So, pareho.
Kung binago mo yan, pero sumatotal yun pa rin ang gagawin niya, that is
infringement under the doctrine of equivalents.
Sabi nga natin kanina di ba, registration of patent is necessary before you
can file a case for patent infringement. Because whatever right arises only
because you were granted a patent.
And then we have what we call compulsory licensing, which was asked in
the Bar a few years ago. Ano ibig sabihin nitong compulsory licensing?
Meron indention na naka-patent but there is need to allow somebody else to
be granted a license to import kasi may national emergency or there is
extreme urgency. Example, yung African swine flu. May gamot na ngayon.
Let’s say, may gamot pala un. And let’s say may isa sa Pilipinas na may
patent ng gamot na un. Ang problema, yung may exclusive patent, is not
producing enough vaccine. The government can import on its own or it can
license somebody else to import or to make/manufacture the vaccine just to
address the national emergency. But the moment the national emergency
ceases, magsi-cease din yung compulsory licensing.
Kailangan bang sabihan muna yung patent owner bago ka ma-grant ng
compulsory license? General rule is, the petitioner or somebody else who
wants to import or to produce the patented product, must at least make
reasonable efforts to obtain permission or authorization from the patent
owner but such authorization was not obtained. But of course, there are
cases when, kahit hindi pumayag or hindi in-authorize nung patent owner,
pwedeng mabigyan ng compulsory licensing. Sabi ko nga, national
emergency.
Technology Transfer Arrangements – Let’s say meron may-ari ng
technology abroad and you want to use it sa Philippines, so you can get a
license to use that technology in the Philippines. Usually, ung mga ganong
license, nire-register with the IPO. Although, actually hindi kailangan pero if
you want protection – if you want the government to protect you while the
agreement is in force, you register it with the Technology Transfer Bureau of
the IPO. And then yung agreement between the owner of technology and the
license, is what we call the technology transfer agreement. If you want to
register it in the Philippines, it must contain certain provisions. And it must not
contain prohibited provisions. Because the moment they contain prohibited
provisions, such technology agreements is unenforceable in the Philippines.
Sec. 87 of the IPC provides for ano yung mga prohibited provisions which
cannot be contained in the technology transfer agreements. Basically, they
are provisions which are adverse to competition and trade.

Trade Secrets – So what are trade secrets? These are plans, process made
known only to the employer and the employees. It is a secret formula or a
process which is not patented but is made only known to a few individuals. Of
course, the moment that somebody uses that formula without the permission
from the owner, that could be penalized under the Revised Penal Code. The
RPC has a provision for protection of trade secrets under Art. 291 and 292 of
the RPC. Punishable siya by imprisonment. Let’s say isa ako dun sa mga
may hawak nung secret formula, binenta ko. So, that is penalized under the
RPC.

Take note again that the trade secret is protected even if it is not patented.
Dati, it is covered by the propriety rights of the owner of the trade secret. Kasi
the moment that they patented, edi ilang taon lang nilang silang sikreto yun –
it can be made known to the world. So, wag mon a lang i-patent. Pero
kailangan may effort naman to make it secret. Tapos lahat ng empleyado,
naka-sign sila ng disclosure agreement.

Lastly,which court has jurisdiction over intellectual property cases? RTC,

specifically the special commercial courts. RTC is designated as special
commercial court which has jurisdiction over intellectual property cases. Or
civil actions for violations of IP rights or criminal action for violation of
IPrights. If you want to file a case for search and seizure, you apply for
search warrants – you apply it with the special commercial courts.