Fauni, Katrizia Atty.

Marian Cloma
Intellectual Property Office Quiz

Quiz:

In the case of Mirpuri v. CA, the court discussed the TRIPs Agreement wherein the WTO
framework ensures a "single undertaking approach" to the administration and operation of all
agreements and arrangements attached to the WTO Agreement. Among those annexed is the
Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs.

According to the members of the Agreement, it desire to deduce impediments to international

trade because there is a need to promote effective and adequate protection of intellectual
property rights, and to ensure that measures and procedures to enforce intellectual property
rights do not themselves become barriers to legitimate trade. Because there is a need to fulfil
the said objectives, the members have agreed to the minimum standards of protection set by
several Conventions.

On the other hand, in the case of IPAP v. Ochoa, Madrid Protocol was an executive agreement.
The IPOPHL, the Department of Science and Technology, and the Department of Trade and
Industry concurred in the recommendation of the DFA. Moreover, President Benigno C. Aquino
III ratified the Madrid Protocol through an instrument of accession.

In the decision of the Court in Mirpuri v. CA, the issue of ownership of the trademark, the first
registration and use of the trademark in the United States and other countries, and the
international recognition and reputation of the trademark established by extensive use and
advertisement of private respondent's products for over forty years here and abroad. These are
different from the issues of confusing similarity and damage in first. The issue of prior use may
have been raised in first case but this claim was limited to prior use in the Philippines only. Prior
use in second stems from private respondent's claim as originator of the word and symbol
"Barbizon," as the first and registered user of the mark attached to its products which have been
sold and advertised worldwide for a considerable number of years prior to petitioner's first
application for registration of her trademark in the Philippines. Indeed, these are substantial
allegations that raised new issues and necessarily gave private respondent a new cause of
action. Res judicata does not apply to rights, claims or demands, although growing out of the
same subject matter, which constitute separate or distinct causes of action and were not put in
issue in the former action.

On the other hand, in the case of IPAP v. Ochoa, as to whether or not the Madrid Protocol is in
conflict with IP Code, the Court said that there is no conflict between the Madrid Protocol and
the IP Code.
Moreover, the IPAP also rests its challenge on the conflict between the Madrid Protocol and the
IP Code, arguing that the Madrid Protocol does away with the requirement of a resident agent
under the IP Code and that the Madrid Protocol is unconstitutional for being in conflict with the
local law, which it cannot modify, the IPAP's contentions stand on an erroneous premise. The
method of registration through the IPOPHL, as laid down by the IP Code, is distinct and
separate from the method of registration through the WIPO, as set in the Madrid Protocol.
Comparing the two methods of registration despite their being governed by two separate
systems of registration is thus misplaced. Also, In arguing that the Madrid Protocol conflicts with
IP Code, the IPAP highlights the importance of the requirement for the designation of a resident
Fauni, Katrizia Atty. Marian Cloma
Intellectual Property Office Quiz

agent, It submits that without such resident agent, there will be a need to resort to costly, time
consuming extraterritorial service of writs and processes. The IPAP misapprehends the
procedure for examination under the Madrid Protocol. The difficulty, which the IPAP illustrates,
is minimal, if not altogether inexistent. The IPOPHL actually requires the designation of the
resident agent when it refuses the registration of a mark. Local representation is further required
in the submission of the Declaration of Actual Use or DAU, as well as in the submission of the
license contract. The Madrid Protocol accords with the intent and spirit of the IP Code,
particularly on the subject of the registration of trademarks. The Madrid Protocol does not
amend or modify the IP Code on the acquisition of trademark rights considering that the
applications under the Madrid Protocol are still examined according to the relevant national law.
In that regard, the IPOPHL will only grant protection to a mark that meets the local registration
requirements.