INTELLECTUAL PROPERTY CODE

R.A. No. 8293

INTELLECTUAL PROPERTIES
Those property rights which result from the physical manifestation of an original thought.
(Ballantine’s Law Dictionary)

Purpose: to strengthen the intellectual and industrial property system in the Philippines as
mandated by the country’s accession to the Agreement establishing the World Trade Organization
(Mirpuri vs. CA GR no 114508)

COVERAGE -intellectual property rights consists of:

a) Copyrights 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. (Sec. 4)

ROMA DRUG vs. RTC OF GUAGUA, PAMPANGA (G.R. No. 149907, April 16, 2009)
FACTS: NBI operatives and inspectors of the BFAD conducted a raid on Roma Drug. The raiding
team seized several imported medicines. The seized medicines, which were manufactured by
SmithKline, were imported directly from abroad and not purchased through the local SmithKline,
the authorized Philippine distributor of these products. The NBI subsequently filed a complaint
against Rodriguez for violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No.
8203, also known as the Special Law on Counterfeit Drugs (SLCD). In this case, there is no doubt
that the subject seized drugs are identical in content with their Philippine-registered counterparts.
There is no claim that they were adulterated in any way or mislabeled at least. Their classification
as "counterfeit" is based solely on the fact that they were imported from abroad and not purchased
from the Philippine-registered owner of the patent or trademark of the drugs.
ISSUE: May Rodriguez, the proprietor of Roma Drug, be prosecuted under the RA 8203?

HELD: No. The issue has been mooted with the passage in 2008 of Republic Act No. 9502, also
known as the "Universally Accessible Cheaper and Quality Medicines Act of 2008".
Section 7 of Rep. Act No. 9502 amends Section 72 of the Intellectual Property Code in that the later
law unequivocally grants third persons the right to import drugs or medicines whose patent were
registered in the Philippines by the owner of the product.
The challenged provisions of the SLCD apparently proscribe a range of constitutionally permissible
behavior. It is laudable that with the passage of Rep. Act No. 9502, the State has reversed course
and allowed for a sensible and compassionate approach with respect to the importation of
pharmaceutical drugs urgently necessary for the people’s constitutionally-recognized right to
health.

STATE POLICY IN RESPECT OF INTELLECTUAL PROPERTY RIGHTS (IPR)

 -There is a declaration of State Policy that, among others, the State recognizes that an
effective intellectual and industrial property system is vital to the development of domestic and
creative activity, facilitates transfer of technology, attracts foreign investments and ensures market
access for our products, hence it shall protect and secure exclusive rights of scientists, inventors,
artists, and other gifted citizens to their intellectual property and creations. (Sec. 2)

INTERNATIONAL CONVENTION AND RECIPROCITY

-any person who is a national or who is domiciled or has a real and effective industrial
establishment in a country which:
1) 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
2) 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 provided by law. (Sec. 3)

REVERSE RECIPROCITY OF FOREIGN LAWS

– makes reciprocally enforceable on nationals of a foreign state within Philippine
jurisdiction all conditions, restrictions, limitations, diminutions, requirements or penalties that may
be imposed by such foreign state on a Filipino national seeking intellectual property protection in
that country. (Section 231)

TECHNOLOGY TRANSFER ARRANGEMENTS

-contracts or agreements involving the transfer of systematic knowledge for the

manufacture of a product, the application of a process, or rendering of a service including
management contracts; and the transfer, assignment or licensing of all forms of intellectual
property rights, including licensing of computer software except computer software developed for
mass market. (Sec. 4)

PRESCRIPTIVE PERIOD OF ACTIONS FOR DAMAGES UNDER THE IPC

-No damages may be recovered after four (4) years from the time the cause of action arose
(Sec. 226)

JURISDICTION OVER DISPUTES UNDER IPC

A. Original Jurisdiction
1) Director General (IPO)
-has original jurisdiction to resolve disputes relating to the terms of a license involving the
author’s right to public performance or other communication of his work.

2) Bureau of Legal Affairs

-has jurisdiction over the ff:
i. Opposition to applications for registration of marks;
ii. Cancellation of trademarks;
iii. Cancellation of patents, utility models and industrial designs;
iv. Petition for compulsory licensing of patents;
 v. Administrative Complaints for violations of laws involving IPR where the total
damages claimed is not less than P200,000.00

3) Documentation, Information and Technology Transfer Bureau

-has jurisdiction to settle disputes involving technology transfer payments
4) Regular Courts

B. Appellate Jurisdiction
1) Director General
-over all decisions rendered by the ff:
 Dir. of Legal Affairs
 Dir. of Patents
 Dir. of Trademarks
 Dir. of the Documentation, Information and Technology Transfer

2) Court of Appeals
-over decisions of the Director General in the exercise of his appellate jurisdiction over the
decisions of the:
 Dir. of Legal Affairs
 Dir. of Patents
 Dir. of Trademarks

3) Secretary of Trade and Industry

-over decisions of the Director General on the exercise of his appellate jurisdiction of the
Director of Documentation, Information and Technology Transfer; AND
-over decisions of the Director General in the exercise of his original jurisdiction relating to
the terms of license involving the author’s right.

ADMINISTRATIVE PENALTIES IMPOSED FOR VIOLATIONS OF LAWS INVOLVING IPR

-The Director for Legal Affairs may impose the ff:
a) Issuance of a cease and desist order (CDO);
b) Acceptance of voluntary assurance compliance (VAC) or voluntary assurance of discontinuance
(VAD);
c) Condemnation or seizure of products subject of the offense;
d) Forfeiture of properties used in the commission of the offense;
e) Imposition of administrative fines;
f) Cancellation of permit, license, authority or registration;
g) Withholding of permit, license, authority or registration;
h) Assessment of damages;
i) Censure;
j) Analogous penalties or sanctions (Sec. 10.2 [b])

On the issue of unfair competition.

The essential elements of an action for unfair competition are (1) confusing similarity in the general
appearance of the goods and (2) intent to deceive the public and defraud a competitor.  The
confusing similarity may or may not result from similarity in the marks, but may result from other
external factors in the packaging or presentation of the goods. The intent to deceive and defraud
may be inferred from the similarity of the appearance of the goods as offered for sale to the
public. Actual fraudulent intent need not be shown.

MERRIAM SCHOOL AND OFFICE SUPPLIES CORP vs. CA (G.R. No. L-48413 June 30, 1980)
FACTS: National Book Store was awarded the right to reprint the book entitled The Head Nurse:
Her Leadership Role. This, notwithstanding, Merriam School and Office Supplies Corporation
violated National's reprinting right by printing two thousand copies of the said book, and, in
concert with Webster School and Office Supplies, Inc., have sold and distributed the reprinted
copies.

HELD: It appears that National Book Store, Inc. had complained to the Reprinting Committee about
the supposed violation of the Presidential Decree No. 285 by the Merriam and Webster firms.
Acting on that complaint, the Reprinting Committee, through its staff attorney, informed National
bookstore, Inc. in a letter dated October 19, 1976 that its complaint about the printing distribution
of the book in question by the Merriam and Webster firms, which were not authorized by the
committee, is not the conflict or claim contemplated in section 4 and is thereof, outside the
Committee's jurisdiction.
The Reprinting Committee opined that the Merriam firm, not being awardees, did not have any
claim or right which was in conflict with the right of National Book Store, Inc. and which should be
adjudicated by the Committee under section 4.
Without prejudging Civil Case No. 109414 for injunction and damages, we hold that the Court of
First Instance has jurisdiction over the case and that there is no merit in petitioners, contention that
National Book Store, Inc. did not exhaust its administrative remedies.

LAW ON PATENTS

PATENT – an exclusive right acquired over an invention, to sell, use, and make the same whether
for commerce or industry.(2005 2006 bar exams)

PATENTABLE INVENTIONS
-any technical solution of a problem in any field of human activity which is
(a.)NEW(NOVELTY), involves an (b).INVENTIVE STEP and is (c).INDUSTRIALLY APPLICABLE shall
be patentable. ( Elidad Kho s C, March 19,2002)The patentable invention may be, or may relate to,
a product, or process, or an improvement of any of the foregoing. (Sec. 21)

Requirements:

1.Technical solution of a problem in any field of human activity

2.Novelty – that which does not form part of a prior art. (Section 23)

Prior Arts:
a. that which has been made available to the public anywhere in the world before the filing date
or the priority date of the application
b. that which forms part of an application whether for patent, utility or industrial design,
effective in the Philippines, provided that:
i. the inventors or applicants are not the same
 ii. The contents of the application are published in accordance with the requirements of
patent application rules.
iii. The filing date of the prior art is earlier.

Non-prejudicial Disclosures
-the disclosure of information contained in the application during the twelve (12) months
preceding the filing date or the priority date of the application shall not prejudice the applicant on
the ground of lack of novelty if such disclosure was made by:
(a) The inventor (includes any person who, at the filing date of application, had the right to the
patent);
(b) A patent office and the information was contained (a) in another application filed by the
inventor and should not have been disclosed by the office, or (b) in an application filed without
the knowledge or consent of the inventor by a third party which obtained the information directly
or indirectly from the inventor; or
(c) A third party which obtained the information directly or indirectly from the inventor. (Section
25)

1.)Inventiveness/Inventive Step
-an invention involves an inventive step if, having regard to prior art, it is not obvious to a
person skilled in the art of the time of the filing date or priority date of the application claiming the
invention. (Sec. 26)

2.)Industrial Applicability
-an invention that can be produced and used in any industry. (Sec. 27)

NON-PATENTABLE INVENTIONS
The following shall be excluded from patent protection:
a) Discoveries, Scientific Theories and Mathematical Methods;
b) Schemes, rules and methods of performing mental acts, playing games or doing business, and
programs for computer;
c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic
methods practiced on the human or animal body;
d) Plant varieties or animal breeds of essentially biological process for the production of plants
or animals;
e) Aesthetic creations;
f) Anything which is contrary to public order or morality (Sec. 22)

RIGHT TO A PATENT
The right to a patent belongs:
a) to the inventor, his heirs, or assigns
b) when 2 or more persons have made the invention separately and independently – to
them jointly
c) if two (2) or more persons have made the invention separately and independently of
each other – to the person who filed an application for such invention (FIRST TO FILE
RULE)
d) where 2 or more applications are filed for the same invention – to the applicant who
has the earliest filing date or the earliest priority date (FIRST TO FILE RULE) (Sec. 29)
e) In case of inventions created pursuant to a commission – to the person who
commissions the work UNLESS agreed otherwise.
 f) in case an employee made the invention in the course of his employment, the patent
shall belong to:
 the employee – if invention not part of his regular duties even if he uses the
time, facilities and materials of the employer; OR
 The employer – if the invention is the result of the performance of his
regularly assigned duties unless agreed otherwise.
Right to Priority
-an application for patent filed by any person who has previously applied for the same invention in
another country which by treaty, convention, or law affords similar privileges to Filipino citizens,
shall be considered as filed as of the date of filing the foreign application Requisites:
(a) The local application expressly claims priority;
(b) It is filed within twelve (12) months from the date the earliest foreign application was
filed; and,
(c) A certified copy of the foreign application together with an English translation is filed
within six (6) months from the date of filing in the Philippines. (Sec. 15, R.A. No. 165a)

RIGHTS ACQUIRED BY THE PATENTEE

The patentee acquires the following rights under his patent:
a. Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing that
product;
b. Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
unauthorized person or entity from using the process, and from manufacturing, dealing in,
using or offering for sale, or importing any product obtained directly or indirectly from such
process;
c. to assign, or transfer by succession the patent, and to conclude licensing contracts for the
same (Sec. 71)

CONTENTS OF PATENT APPLICATION

A patent application shall contain:
1) a request for the grant of patent;
2) a description of the invention;
-the disclosure of the invention must be in a manner sufficiently clear and complete for
it to be carried out by a skilled in the art.
3) Drawings necessary for the understanding of the invention;
4) One or more claims
5) An abstract (Sec. 32)
 must contain relevant information as to the identity of the person (no anonymous person)
 if the applicant is not the inventor; he must show proof of authority to seek application for
registration

UNITY OF INVENTION
-every application for patent registration must contain an application over a single
invention or several inventions but must form part of a single general inventive concept

PROCEDURE FOR THE GRANT OF PATENT

a) According a filing date to the application (Sec. 41);
b) Examination of compliance by applicant with the formal requirements specified in Sec.
32, i.e., contents of application (Sec. 42);
c) Classification of application and search for prior art (Sec. 43)
 d) Publication of patent application in the IPO Gazette (Sec. 44);
e) Inspection of the application documents by any interested party and written
observations by any third party concerning the patentability of the invention (Sec. 44.2
and 47);
f) Written request by the applicant, within 6 months from the date of publication of his
patent application, for the substantive examination by the IPO of his application. (Sec
48);
g) Grant of the patent (Sec. 50), or refusal of the examiner to grant the patent (Sec. 51); in
the latter case, the refusal may be appealed to the Director of the Bureau of Patents;
h) Publication of the grant of patent in the IPO Gazette (Sec. 52)

TERM OF A PATENT, UTILITY MODEL, INDUSTRIAL DESIGN

a) Patent – 20 yrs from the filing date of application, without renewal
b) Utility model – 7 yrs, w/out renewal
c) Industrial design – 5 yrs, renewable twice
Utility Models
-models of implement or tools of any industrial product even if not possessed of the quality
of invention but which is of “practical utility”

Industrial Design
-any composition of lines or colors or any three-dimensional form, whether or not
associated with lines or colors provided that such composition or form gives a special appearance
to and can serve as pattern for an industrial product or handicraft.

CANCELLATION OF PATENTS
1. Who may file?
 any person
 IPO motu proprio
2. Grounds
a) That the patent is invalid (Sec. 81);
b) That what is claimed as the invention is not new or patentable;
c) That the patent does not disclose the invention in a manner sufficiently clear
and complete for it to be carried out by any person skilled in the art; or
d) That the patent is contrary to public order or morality. (Sec. 61)
e) failure to make payments of annual fees or dues
3. Where to file?
 BLA – if in violation of IPC (administrative)
 RTC – otherwise

INFRINGEMENT
-the making, using, offering for sale, selling or importing a patented product or a product
obtained directly or indirectly from a patented process or the use of a patented process without the
authorization of the patentee. (Sec. 76)
Test of Patent Infringement
Literal Infringement – resort is had to the “words” of the claim.
1)
2) Doctrine of Equivalents – if two devices do the same work in substantially the same way,
the same result, and produce substantially the same result, they are the same even though
they differ in name, form, or shape.
REMEDIES IN CASE OF INFRINGEMENT
A) File civil case for the following purposes:
1. To recover from the infringer such damages as the court may award considering the
circumstances of the case provided it shall not exceed 3 times the amount of the actual
damages sustained plus attorney’s fees and other expenses of litigation;
2.To secure an injunction for the protection of his rights;
3.To receive a reasonable royalty, if the damages are inadequate or cannot be readily
ascertained with reasonable certainty;
4. To have the infringing goods, materials and implements predominantly used in the
infringement disposed of outside the channels of commerce, or destroyed without
compensation;
5. To hold the contributory infringer jointly and severally liable with the infringer.

B) File criminal case

-within 3 years from date of commission of the crime for repetition of infringement, without
prejudice to the right for damages(Sec. 84)

1995 &2004 BAR

X Corporation commissioned W to paint the Mayon Volcano on the lobby of the new building of X
Corp. for a price of P1M. Who owns the painting? Who owns the copyright of the painting?
X Corporation owns the painting but the copyright belongs to W unless there is a written
stipulation to the contrary. (Sec.178.4)

ABS-CBN vs. PHILIPPINE MULTI-MEDIA SYSTEM, INC. ( G.R. Nos. 175769-70, January 19,
2009)

FACTS: PMSI is the operator of Dream Broadcasting System. ABS-CBN contends that PMSI’s
unauthorized rebroadcasting of Channels 2 and 23 is an infringement of its broadcasting rights and
copyright under the Intellectual Property Code (IP Code); that the Court of Appeals’ interpretation
of the must-carry rule violates Section 9 of Article IIIof the Constitution because it allows the taking
of property for public use without payment of just compensation.

Respondents, on the other hand, argue that PMSI’s rebroadcasting of Channels 2 and 23 is
sanctioned by Memorandum Circular No. 04-08-88; that the must-carry rule under the
Memorandum Circular is a valid exercise of police power.

ISSUES:
1. W/N PMSI rebroadcasts Channels 2 and 23 of ABS-CBN thus, infringing the broadcasting
rights and copyrights of the latter.
2. W/N the must-carry rule violates the rights of ABS-CBN under the IPL.

HELD: The Director-General of the IPO correctly found that PMSI is not engaged in rebroadcasting
and thus cannot be considered to have infringed ABS-CBN’s broadcasting rights and copyright.

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers
receive in its unaltered form.  PMSI does not produce, select, or determine the programs to be
shown in Channels 2 and 23.  Likewise, it does not pass itself off as the origin or author of such
programs.  Insofar as Channels 2 and 23 are concerned, PMSI merely retransmits the same in
accordance with Memorandum Circular 04-08-88.  With regard to its premium channels, it buys the
channels from content providers and transmits on an as-is basis to its viewers.  Clearly, PMSI does
not perform the functions of a broadcasting organization; thus, it cannot be said that it is engaged in
rebroadcasting Channels 2 and 23.

Thus, while the Rome Convention gives broadcasting organizations the right to authorize or
prohibit the rebroadcasting of its broadcast, however, this protection does not extend to cable
retransmission.  The retransmission of ABS-CBN’s signals by PMSI – which functions essentially as a
cable television – does not therefore constitute rebroadcasting in violation of the former’s
intellectual property rights under the IP Code. 

2.The “must-carry rule” under the Memorandum Circular 04-08-88 requires all cable television
system operators operating in a community within Grade “A” or “B” contours to carry the television
signals of the authorized television broadcast stations (Ex: broadcasting organizations with free-to-
air signals such as GMA-7, RPN-9, ABC-5, and IBC-13)

The carriage of ABS-CBN’s signals by virtue of the must-carry rule in Memorandum Circular No. 04-
08-88 is under the direction and control of the government though the NTC which is vested with
exclusive jurisdiction to supervise, regulate and control telecommunications and broadcast
services/facilities in the Philippines. The imposition of the must-carry rule is within the NTC’s
power to promulgate rules and regulations, as public safety and interest may require, to encourage
a larger and more effective use of communications, radio and television broadcasting facilities, and
to maintain effective competition among private entities in these activities whenever the
Commission finds it reasonably feasible. As correctly observed by the Director-General of the IPO:
 
Accordingly, the “Must-Carry Rule” under NTC Circular No. 4-08-88 falls under the foregoing
category of limitations on copyright.  

LAW ON TRADEMARKS

DEFINITIONS
Trademark – anything which is adopted and used to identify the source of origin of goods, and
which is capable of distinguishing them from goods emanating from a competitor

In Society Des Products Nestle vs. CA April 4, 2001, trademark is defined as any word, name
symbol or devise adopted and used by a manufacturer or merchant to identify his goods and
distinguish them from those manufactured and sold by other.

Service Mark – distinguishes the services of an enterprise from the service of other enterprises. It
performs for services what a trademark does for goods.

Collective Mark – 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 and services of different enterprises which use the sign under the control of the registered
owner of the collective mark (Sec. 121.2)

Trade Name – the person (whether natural or juridical) who does business and produces the
goods or the services is designated by a trade name.
-Under the law, there is no need to register trade names in order to secure protection for them.

Trade Dress– involves the total image of a product, including such features as size, shape, color or
color combinations, texture, and/or graphics.
HOW MARKS ARE ACQUIRED
-Under RA 8293, the rights in a mark shall be acquired through registration made validly in
accordance with its provisions. (Sec. 122)
-This proposition of law, however, may not be converted for it is not true that where there
is no registration, there is no protection.
Acquisition through use
 Whether or not a registered trademark is employed, when a person has identified in the
mind of the public the goods he manufactures or deals in his business or services from those
of others, such a person has a property right in the goodwill of said goods or services which
will be protected in the same manner as other property rights (Sec. 168.1)

RIGHTS CONFERRED
-the owner of a registered mark shall have the exclusive right to prevent all third parties not
having the owner’s consent from using in the course of trade identical or similar signs or containers
for goods or services which are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. (Sec. 147)

DURATION
-the certificate of registration of a trademark shall be ten (10) years from the filing date of
application provided the registrant shall file a declaration of actual use within a year from the 5 th
anniversary of registration date (Sec. 145)
-renewable for another 10 yrs. (Sec. 146)

NON-REGISTRABLE TRADEMARKS, TRADE NAMES AND SERVICE MARK

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 window;
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:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(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 trademark: 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 a bonafide and established trade
practice;
j) Consists exclusively of signs or 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 (Sec. 123)

FILING DATE OF AN APPLICATION

-The filing date of an application shall be the date on which the office received the following
indications and elements in English or Filipino:
a) An express or implicit indication that the registration of a mark is sought;
b) Indications sufficient to contact the applicant or his representative, if any;
c) Indications sufficient to contact the applicant or his representative, if any;
d) A reproduction of the mark where registration is sought; and
e) The list of the goods or services for which the registration is sought. (Sec. 127.1)

 NO filing date shall be accorded until the required fee is paid (Sec. 127.2)

PROCEDURE FOR REGISTRATION

a) Examination to determine whether the application satisfies the requirements for the
grant of a filing date.
b) Examination to determine whether the application meets the requirements of Sec. 124
and the mark is registrable under Sec. 123.
c) Denial of the application or amendment thereof or publication of the application;
d) Opposition to the application; notice; hearing; decision by examiner; appeal to the
Director of Bureau of Trademarks; appeal to the IPO Director General; appeal to the CA;
e) Issuance of Certificate of registration
f) Publication in the IPO Gazette of the fact of registration

CANCELLATION OF TRADEMARK OR TRADENAME

1. Who may file?
- any person who believes that he is and will be damaged by the registration of a
mark
2. Where to file?
- BLA
3. Grounds:
a) Mark becomes generic for goods for which it is registered;
 b) Abandonment of the mark;
c) Registration obtained fraudulently or contrary to provisions of RA 8293;
d) Mark used by, or with permission of, registrant;
e) Failure to use the mark within the Philippines for 3 uninterrupted years or longer.

EFFECTS OF NON-USE
 May be excused if caused by circumstances arising independently of the will of the
trademark owner, such as military coup, or political changes that impede commerce
 Registration is an administrative act declaratory of a pre-existing right that does not, of
itself, perfect a trademark, for what it does is actual use
 Non-use is a ground for removing a mark from the register

DOCTRINE OF SECONDARY MEANING

-While a generic, indicative or descriptive mark will, as a general rule, be denied
registration, there is a circumstance that will allow it to be registered. Under the doctrine of
secondary meaning, when a mark has become distinctive of the applicant’s goods in commerce and,
in the mind of the public, indicates a single source of consumers, it may be registered.

WHAT CONSTITUTES AN INFRINGEMENT

-Under RA 8293, any person 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 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 for infringement. (Sec.
155)

TEST OF TRADEMARK INFRINGEMENT

1) Dominancy Test – consists in seeking out the main, essential or dominant features of a
mark.
2) Holistic Test – takes stock of the other features of a mark, taking into consideration the
entirety of the marks.

DIFFERENTIATED FROM UNFAIR COMPETITION

1) Cause of action: in infringement, the cause of action is the unauthorized use of a
registered trademark; in unfair competition, it is the passing off of one’s goods as those
of another merchant.
2) Fraudulent intent is not necessary in infringement, but necessary in UC.
3) Registration of trademarks: in infringement, it is a pre-requisite; in UC, it is not
required.
4) Class of goods involved: in infringement, the goods must be of similar class; in UC, the
goods need not be of the same class.
  infringement is a form of unfair competition

REMEDIES AVAILABLE IN CASE OF INFRINGEMENT OF A REGISTERED MARK

a) Sue for damages (Sec. 156.1);
b) Have the infringing goods impounded (Sec. 156.2);
c) Ask for double damages (Sec. 156.3)
d) Ask for injunction (156.4)
e) Have the infringing goods disposed of outside the channels of commerce (Sec. 157.1)
f) Have the infringing goods destroyed (Sec. 157.1)
g) File criminal action (Sec. 170);
h) Administrative Sanctions

UNFAIR COMPETITION
-any person who shall employ deception or any other means contrary to good faith by
which he shall pass off the goods manufactured by him or in which he deals, or his business, or
services for those of the one having established such goodwill, or who shall commit any acts
calculated to produce said result, shall be guilty of unfair competition.

How Committed
a) Making one’s goods appear as the goods of another;
b) Use of artifice or device to induce the false belief that one’s goods are those of
another;
c) False statements in the course of trade; or
d) Any act contrary to good faith calculated to discredit another’s goods

TEST OF UNFAIR COMPETITION

-The test is whether certain goods have been clothed with an appearance likely to deceive
the ordinary purchaser exercising ordinary care.

REMEDIES IN CASE OF UNFAIR COMPETITION

a) Damages which may either be:
 reasonable profit which would have been realized, or
 actual profits collected by the defendant, or
 a certain percentage over the gross sales of defendant in case of the measure of
damages cannot be readily ascertained;
b) Damages may be doubled in cases where actual intent to mislead the public or to
defraud the complaint is shown;
c) Impounding of sales invoices and other documents evidencing sales;
d) Injunction
e) Destruction of goods found to be infringing, and all paraphernalia.

TAÑADA vs. ANGARA (G.R. No. 118295, May 2, 1997)

The Constitution did not intend to pursue an isolationist policy.  It did not shut out foreign
investments, goods and services in the development of the Philippine economy. While the
Constitution does not encourage the unlimited entry of foreign goods, services and investments into
the country, it does not prohibit them either.  In fact, it allows an exchange on the basis of equality
and reciprocity, frowning only on foreign competition that is unfair.
Moreover, GATT itself has provided built-in protection from unfair foreign competition and trade
practices including anti-dumping measures, countervailing measures and safeguards against
import surges.  Where local businesses are jeopardized by unfair foreign competition, the
Philippines can avail of these measures.  There is hardly therefore any basis for the statement that
under the WTO, local industries and enterprises will all be wiped out and that Filipinos will be
deprived of control of the economy.  Quite the contrary, the weaker situations of developing nations
like the Philippines have been taken into account; thus, there would be no basis to say that in
joining the WTO, the respondents have gravely abused their discretion.  True, they have made a
bold decision to steer the ship of state into the yet uncharted sea of economic liberalization.  But
such decision cannot be set aside on the ground of  grave abuse of discretion, simply because we
disagree with it or simply because we believe only in other economic policies.   As earlier stated, the
Court in taking jurisdiction of this case will not pass upon the advantages and disadvantages of
trade liberalization as an economic policy.  It will only perform its constitutional duty of
determining whether the Senate committed grave abuse of discretion.

COPYRIGHT – system of legal protection an author enjoys in the form of expression of

ideas(2004,2006,2007,2009 bar exams)

BASIC PRINCIPLES
 Works are protected by the sole fact of their creation, irrespective of their mode or form
of expression, as well as their content, quality or purpose (Sec. 172.2)
 Protection extends only to the expression of the idea, not to the idea itself or to any
procedure, system, method or operation, concept or principle, discovery or mere data.
 The copyright is distinct from property in the material object subject to it.
 Copyright, in the strict sense, is purely statutory right. Being mere statutory right are
limited to what the statute confers. It may be obtained and enjoyed only with respect to
the subjects and by the persons, and on terms and conditions specified in the statute.
Accordingly, it can cover only works falling within the statutory enumeration or
description (Pearl & Dean Vs shoemart GR 148222 August 15,2003).

CREATION OF A WORK
A copyright work is created when the two (2) requirements are met:
1) Originality – does not mean novelty or ingenuity, neither uniqueness nor creativity. It
simply means that the work “owes its origin to the author”
2) Expression – there must be “fixation.” To be “fixed”, a work must be embodied in a medium
sufficiently:
 permanent; or
 stable
To permit it to be perceived, reproduced, or otherwise communicated for a period of more than
transitory duration.
-if it is not required that the medium be visible as long as there is a possibility of retrieval,
then there is fixation
-it is fixation that defines the time from when copyright subsists. Before fixation, there can
be no infringement.
WORKS PROTECTED BY COPYRIGHT

A. Original Work - Literary and artistic works are original intellectual creations in the literary
and artistic domain protected from the moment of their creation, irrespective of their mode or
form of expression, as well as of their content, quality and purpose, 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.
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 or any process for making audio-visual
recordings
m) Pictorial illustrations and advertisements
n) Computer programs
o) Other literary, scholarly, scientific and artistic works (Sec. 172)

B. Derivative Works – the following derivative works shall also be protected:

a) Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary works
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. (Sec. 173)

WORKS NOT PROTECTED

The following works are not protected:
1) Any idea, procedure, system, method or operation, concept, principle, discovery or mere
data as such, even if expressed, explained, illustrated, or embodied in a work;
2) News of the day and other facts having the character of mere items of press information;
3) Any official text of a legislative, administrative or legal nature, as well as any official
translation thereof. (Sec. 175)
4) Any work of the Government of the Philippines. (Sec. 176)
-however, prior approval of the government agency or office wherein the work is
created shall be necessary for exploitation of such work for profit. Such agency or office,
may, among other things, impose as a condition the payment of royalties
5) Pleadings;
6) Decisions of courts and tribunals.
 -this pertains to the “original decisions” not to the SCRA published in volumes since
these are protected under derivative works.

RIGHTS OF AN AUTHOR
(Author – a natural person who has created the work.)
A. Economic Rights (Sec. 177)
-exclusive right to carry out, authorize or prevent the following acts
1. Reproduction of the work or substantial portion of the work
2. Dramatization, translation, adaptation, abridgement, arrangement or other transformation
of the work;
3. The first public distribution of the original and each copy of the work by sale or other forms
of transfer of ownership;
4. Rental of the original or a copy of an audiovisual or cinematographic work, a work
embodied in a sound recording, a computer program, a compilation of data and other
materials or a musical work in graphic form, irrespective of the ownership of the original or
the copy which is the subject of the rental; (n)
5. Public display of the original or copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work

B. Moral Rights (Sec. 193)

1) Right of attribution or paternity right
To require that the authorship of the works be attributed to him, in a prominent
way on the copies, and with the public use of the work;

2) Right of alteration or non-publication

3) Right to preservation of integrity

To object to any distortion, mutilation or other modification of, or other
derogatory action in relation to, his work which would be prejudicial to his honor or
reputation; and
4) Right not to be identified with work of others or with distorted work.

Term of moral right

-lifetime of the author and 50 years after his death

Waiver of moral right

1) by a written instrument (Sec. 195)
2) by contribution to a collective work unless expressly reserved (Sec. 196)

PRINCIPLE OF AUTOMATIC PROTECTION

Under the Berne Convention, the enjoyment and exercise of copyright, including moral
rights, shall not be the subject of any formality.

OWNERSHIP OF COPYRIGHT
1. Single creator – copyright belongs to the author of the work, his heirs or assigns.
2. Joint creation – copyright belongs to the co-authors jointly as co-owners. But if the work
consists of identifiable parts, the author of each part owns the part that he has created.
 3. Employee’s creation – copyright belongs to the employee if the creation is not part of his
regular duties even if he uses the time, facilities and materials of the employer; otherwise it
belongs to the employer
4. Commissioned work – the work belongs to the person commissioning but the copyright
remains with the creator unless there is a written stipulation to the contrary.
5. Cinematographic works – the producer has copyright for purposes of exhibition; for all
other purposes, the producer, the author of the scenario, the composer, the film director,
the author of the work are the creators.
6. Anonymous and pseudonymous works – the publishers shall be deemed the
representative of the author unless:
a. the contrary appears
b. the pseudonyms or adopted name leaves no doubt as to the author’s identity or
c. If the author discloses his identity (Sec. 179).
7. Collective works – the contributor is deemed to have waived his right unless he expressly
reserves it. (Sec. 196)
Collective Work – a work created by two or more persons at the initiative and under the
direction of another with the understanding that it will be disclosed by the latter under his
own name and that the contributions of natural persons will not be identified. (Sec. 171.2)
8. In case of transfers, the transferee shall own one or more or all the economic rights
transferred provided:
a. the assignment, if inter vivos, be in writing (Sec. 180.2)
b. The assignment be filed with the National Library upon payment of the prescribed
fee. (Sec. 182)

DURATION OF COPYRIGHT
 Literary artistic works and derivative works of a SINGLE CREATOR - lifetime of the
creator and for 50 years after his death
 Joint creation – lifetime of last surviving co-creator and for 50 years after his death.
 Anonymous or a work under a pseudonym not identifiable with the true name of the
creator – 50 years after the date of their first publication.
 Except where, before the expiration of said period, the author's identity is revealed or is no
longer in doubt, the rule for single and joint creation shall apply
 Photographic works – 50 years from the publication of the work, or from making the same
term is given to audiovisual works produced by photography or analogous processes.
 Work of Applied Art – 25 years from the date of making
 Newspaper Article – lifetime of the author and 50 years after his death
 A pure news report will no longer find protection under the new law, BUT a column or
published comment will.
 The work of performers not incorporated in RECORDING, PRODUCTS OF SOUND IMAGE
RECORDINGS, and BROADCASTS – protected for periods of 50 years, 50 years, and 20
years, respectively, counted from the end of the year of performance, recording, or
broadcasts, respectively.

 The term of protection shall be counted from the first day of January of the year following the
death of the author or of last publication (Sec. 214)

LIMITATIONS TO THE RIGHTS ON COPYRIGHT

 1) Private performance, private and personal use – applicable only “when a work has been
lawfully made accessible to the public.”
Personal Use
-making a single reproduction, adaptation, arrangement or other transformation of
another’s work exclusively for one’s own individual use in such cases as personal research,
learning or amusement
Private Use
-making a reproduction, adaptation or other transformation of it, in a single person as in the
case of “personal use” but also for a common purpose by a specific circle of persons only.

2) Fair Use of a Copyrighted Work

Fair Use - a privilege in persons other than the owner of the copyright to use the
copyrighted material in a reasonable manner without its consent, notwithstanding the monopoly
granted to the owner by the copyright.
-the doctrine of fair use is meant to balance the monopolies enjoyed by the copyright owner
with interests of the public and of society.

CRITERIA TO DETERMINE WHETHER USE IS FAIR OR NOT

a) Purpose and the character of the use
b) Nature of the copyrighted work
c) Amount and substantially of the portions used
d) Effect of the use upon the potential market of the copyrighted work (Sec. 185)

THE “FAIR-USES” OF PROTECTED MATERIAL ARE

 Criticizing, commenting, and news reporting;
 Using for instructional purposes including producing multiple copies of classroom use, for
scholarship, research and similar purposes (Sec. 185)

3) Working of Architecture (Sec. 186)

-include the right to control the erection of any building which reproduces the
whole or a substantial part of the work either in its original or in any form recognizably
derived from the original; Provided, that the copyright in any such work shall not include
the right to control the reconstruction, or rehabilitation in the same style as the original of a
building to which that copyright relates

4) Reproduction of Published Work

-exclusively for research and private study.

5)Reprographic Reproduction by Libraries

-any library or archive whose activities are not for profit may, without the authorization of the
author of copyright owner, make a single copy of the work by reprographic reproduction.

6)Reproduction of Computer Programs

-allowed on the ff. conditions:
a) only one copy is made;
b) lawful owner made the copy;
c) purpose of which the reproduction is made is legal like:
 use to which the program is made and for which it was purchased demand the reproduction of
a copy; or
 the reproduction of a copy is necessary to guarantee against loss or destruction (Sec. 189.1)
5) Importation for Personal Purposes
-the importation of a copy of a work by an individual for his personal purposes shall be
permitted without the authorization of the author of, or other owner of copyright in, the work
under the following circumstances:
a) Copies of the work are not available in the Philippines and:
i. not more than one copy at one time is imported for strict individual use;
ii.importation is by authority and for the use of Philippine Government; or
iii. Religious, charitable, or educational society imported not more than 3 copies per
title provided they are not for sale.
b) Copies form part of libraries and personal baggage belonging to persons or families arriving
from foreign countries and are not intended for sale: Provided, that such copies do not exceed
three (3). (Sec. 190)

REMEDIES IN CASE OF INFRINGEMENT

1) Injunction to prevent infringement
2) Damages assessed on the basis of the proof alleged by the plaintiff of sales made by the
defendant of the infringing work minus whatever costs the defendant may be able to prove
and appreciated by the court.
3) Delivery under oath of all implements employed in the production of the infringing
products themselves and the infringing items, for impounding or destruction as the court
may order.
4) Payment of moral and exemplary damages under the discretion of court.
5) Criminal Action

DESTILERIA AYALA, INC. vs. TAN TAY & CO. (G.R. No. L-48793     August 6, 1943)

FACTS: By reason of shortage of bottles of its own, defendant Tan Tay & Co. in selling wine similar
to that of the plaintiff, had, prior to this action, been using bottles registered in the name of the
plaintiff but with the word "Ayala" generally erased or obliterated therefrom, leaving only the word
"Destileria" legible on said bottles.
Plaintiff prays that the respondent be inhibited from using glass receptacles duly registered by
former.
HELD: To make the use of such containers illegal, it is not essential that they be used by other
persons with the distinctive name, mark or design engraved thereon. If the containers originally
conformed to the description contained in the certificate of registration and it appears that they are
the same containers being used by the other persons, the use is illegal regardless of whether or not
their distinctive name, mark or design is partly or entirely erased therefrom. If the illegality of the
use may be removed by erasing or obliterating from the containers their distinctive name, mark or
design, the protection of the law would become useless. In other words, it is the use of the
containers themselves - not merely the use of the trade-mark engraved thereon - that is prohibited
by law.

A.M. No. 04-7-06-SC 

RE: CONDITIONS ON THE COMMERCIAL EXPLOITATIONOF SUPREME COURT DECISIONS  
RESOLUTION
a.     The person compiling and selling the decisions shall provide the Supreme Court Library
twenty (20) free copies of the compiled decisions in the format the compilation is sold to the
public; 
b.    If the compilation is in printed copies, the Supreme Court Library shall have the right to
digitize the compilation for exclusive use for research purposes by Justices, Judges and
court attorneys of the Judiciary; 
c.     If the compilation is in digitized format, the Supreme Court Library shall have the right to
make available the digitized compilation for exclusive use for research purposes by Justices,
Judges and court attorneys of the Judiciary.  The person compiling shall submit to the Supreme
Court Library a text-file digitized copy of the compilation;
d.    The Court shall have the right to purchase copies of the compilation at cost, that is, by
paying only the cost of reproducing the compilation, the cost of installation, and the cost of any
accompanying software license.  Such copies shall be used exclusively by Justices, Judges and
court attorneys of the Judiciary and shall not be re-sold by the Court;
e.    The compilation shall bear the notice “Compiled for sale to the public with the permission
of the Supreme Court”;
f.       These conditions apply to any updating of the compilation