Intellectual Property Law by Prof. Ferdinand Negre

BENGZON
NEGRE
UNTALAN
Intellectual Property Attorneys
INTELLECTUAL PROPERTY LAW
FERDINAND M. NEGRE 4 July 2021

Outline
 Introduction
 IP and the Constitution
 IP in the International Regime
 IP Rights under the IP Code
 Patents, Utility Models and Industrial Designs
Trademarks, Tradenames and Unfair Competition

 Copyrights and Moral Rights
 Special Rules and Jurisdiction on IPR Cases
 Relevant and Recent Jurisprudence

2019 Bar Questions
A.8.
KLM Printers, Inc. operated a small outlet located at the ground floor
of a university building in Quezon City. It possessed soft copies of
certain textbooks on file, and would print "book-alikes" of these
textbooks (or in other words, reproduced the entire textbooks) upon
order and for a fee. It would even display samples of such "book-
alikes" in its stall for sale to the public.
Upon learning of KLM Printers, Inc.'s activities, the authors of the
textbooks filed a suit against it for copyright infringement. In its
defense, KLM Printers, Inc. invoked the doctrine of fair use,
contending that the "book-alikes" are being used for educational
purposes by those who avail of them.
(a) What is the doctrine of fair use? (2%)

(b) Is KLM Printers, Inc.'s invocation of the doctrine of fair use
proper in this case? Explain. (3%)
2019 Bar Questions
A.9.
X Pharmaceuticals, Inc. has been manufacturing the antibiotic
ointment Marvelopis, which is covered by a patent expiring in the
year 2020. In January 2019, the company filed an application for a
new patent for Disilopis, which, although constituting the same
substance as Marvelopis, is no longer treated as an antibiotic but is
targeted and marketed for a new use, i.e., skin whitening.
(a) What are the three (3) requisites of patentability under the
Intellectual Property Code? (3%)
(b) Should X Pharmaceuticals, Inc.'s patent application for Disilopis

be granted? Explain. (2%)
2019 Bar Questions
A.10. In 2005, W Hotels, Inc., a multinational corporation engaged in the
hospitality business, applied for and was able to register its trademark "W" with
the Intellectual Property Office of the Philippines (IPO) in connection with its
hotels found in different parts of the world.
In 2009, a Filipino corporation, RST Corp., filed before the IPO a petition for
cancellation of W Hotels, Inc.'s "W" trademark on the ground of non-use,
claiming that W Hotels, Inc. failed to use its mark in the Philippines because it
is not operating any hotel in the country which bears the "W" trademark.
In its defense, W Hotels, Inc. maintained that it has used its "W" trademark in
Philippine commerce, pointing out that while it did not have any hotel
establishment in the Philippines, it should still be considered as conducting its
business herein because its hotel reservation services, albeit for its hotels
abroad, are made accessible to Philippine residents through its interactive
websites prominently displaying the "W" trademark. W Hotels, Inc. also
presented proof of actual booking transactions made by Philippine residents
through such websites.
Is W Hotels, Inc.'s defense against the petition for cancellation of trademark
tenable? Explain. (5%)
So, why IP?
➢ IP may make or unmake you as a bar passer, as a

lawyer
➢ IP may make or unmake you as a bar top-notcher
➢ You will know what to do when confronted with an
IP case
➢ IP practice is very international
➢ IP practice is closely related to business, art and
technology
➢ We are all consumers here -
➢ IP is closest to everyone’s [daily] life!
Why IP?
BAR QUESTIONS on IP (2007-2018)

 2007 5% or .75 pt. copyright
 2008 12% or 1.8 pts. 2 copyrights
 2009 9% or .1.35 pts. 2 copyrights, TM
 2010 15% or 2.25 pts licensing, TM, patent
 2011-12 MCQs only
 2013 8% or 1.2 pts copyright
 2014 13% or 1.95 pts 2 TMs, copyright
 2015 13% or 1.95 pts copyright, patent, 2 TMs
 2016 15% or 2.25 pts 3 trademarks
 2017 10% or 1.5 pts 2 copyrights, patent
 2018 12.5% or 1.875 pts trademark, patent
2014 BAR EXAMS
 Only 11.43% (684 out of 5,984) passed

 28.65% (1,709) passed in mercantile law
 13% or 3 questions on IP
 13% at 15% weight = 1.95 percentage points in total
grade
• 984 examinees garnered a grade between 71.05-74.99
◼ 429 garnered a grade between 73 - 74.99
◼ 555 garnered a grade between 71.05 - 72.99
 Difference between 10th and 11th place: 00.15

percentage points
Why IP?
The next hours can make a big difference in

your life!
Intellectual Property Defined
 the legal rights which result from intellectual

activities in the industrial, scientific, literary and
artistic fields
 creations of the mind, such as
 inventions;
 literary and artistic works;
 designs; and
 symbols, names and images used in commerce.
Intellectual Property and the Constitution
Article 14, Section 13, 1987 Constitution
“The State shall protect and secure the exclusive

rights of scientists, inventors, artists, and other
gifted citizens to their intellectual property and
creations, particularly when beneficial to the people,
for such period as may be provided by law.”
Intellectual Property and the Constitution
Article 14, Section 13, 1987 Constitution
“The State shall protect and secure the exclusive rights

of scientists, inventors, artists, and other gifted citizens
to their intellectual property and creations, particularly
when beneficial to the people, for such period as may be
provided by law.”
 Exclusive Rights
 Limited in time, scope and space
 exceptions and limitations

 Territory
“Intellectual Property Rights”
 It is property
 Articles 520-522 (Trademarks) and 721-724
(Copyrights/Patents), Civil Code
 Creations of the human mind or intellect
 Intangible asset
 Vs. Object/Embodiment
 Intellectual property rights
 Exclusive rights to do or prohibit

 May be assigned or licensed to others
 May be infringed
Kinds of IP rights
Trademarks Patents
Trade name Utility Model
Industrial Design
Geographic Indications
Layout design
Copyright
Trade Secret
IP Rights Protected Under the IP Code
 Copyright – Programs: OS and Apps

 Patent – Camera; Facial recognition
 Trademark – word mark or logo
 Industrial Design – Design and

Shape of the phone
 Layout Design of Integrated Circuits
– The circuits or the map that
compose the microchip in the phone
 Geographic Indications
 Trade Secret – ?
IP Rights Under the IP Code
 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:
 R.A. 9502, ”Universally Accessible Cheaper and

Quality Medicines Act of 2008”
 R.A. 10372 on Copyrights (2013)


 Amendments:
 R.A. 9502, "Universally Accessible Cheaper and

Quality Medicines Act of 2008".
◼ Compulsory Licensing on the manufacture of
patented medicines
◼ Compulsory licensing on the importation of
medicines protected by patent or trademark
◼ Non-patentability of second use of known substance
unless there is enhanced efficacy

 Amendments:
 R.A. 10372 on Copyrights (2013)

◼ Retransmission of broadcast made a right
(reversing ABS-CBN vs. Phil. Media [2009])
◼ Vicarious liability including landlord liability
◼ Providing as aggravating circumstances the ff.:
◼ circumvention of effective technological
protection measures and
◼ electronic rights management information
RA 8293, IP Code
Section 2. Declaration of State Policy. - 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. It shall protect and secure the exclusive
rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations,
particularly when beneficial to the people, for such
periods as provided in this Act.
The use of intellectual property bears a social
function. To this end, the State shall promote the
diffusion of knowledge and information for the promotion
of national development and progress and the common
good.
Article XII, Constitution
SECTION 6. The use of property bears a social

function, and all economic agents shall contribute to
the common good. Individuals and private groups,
including corporations, cooperatives, and similar
collective organizations, shall have the right to own,
establish, and operate economic enterprises, subject to
the duty of the State to promote distributive justice
and to intervene when the common good so demands.
Nature of IP Protection
SC:
“…intellectual property protection is merely a means

towards the end of making society benefit from the
creation of its men and women of talent and genius .
This is the essence of intellectual property laws, and it
explains why certain products of ingenuity that are
concealed from the public are outside the pale of
protection afforded by the law. It also explains why
the author or the creator enjoys no more rights than
are consistent with public welfare .” [ABS-CBN v. Phil.
Multi-Media, G.R. Nos. 175769-70, Jan 19, 2009]
Important Distinctions
“Trademark, copyright and patents are different intellectual

property rights that cannot be interchanged with one another.
A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the
scope of a copyright is confined to literary and artistic works
which are original intellectual creations in the literary and
artistic domain protected from the moment of their creation.
Patentable inventions, on the other hand, refer to any technical
solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable.”
(Kho vs. CA, G.R. No. 115758, [2002])
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)
1. Pearl & Dean is engaged in the manufacture of advertising

display units or light boxes. These units utilize specially
printed posters sandwiched between plastic sheets and
illuminated with back lights.
2. P&D secured a Copyright Registration over the drawings of
these light boxes. The light boxes were marketed under the
trademark “Poster Ads.” P&D secured trademark registration
for “stationeries such as letterheads, envelopes, calling cards
and newsletters."
3. Without going through P&D, SM ordered exact same boxes
from NEMI, P&D’s former contractor-manufacturer. P&D
sued SM and NEMI for Copyright Infringement, Trademark
Infringement and Unfair Competition.
Light Boxes under the brand “POSTER ADS”
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)
1. Copyright Infringement
1. Drawings v. Products
2. Patents
2. Trademark Infringement
1. Stationeries v. Products
2. POSTER ADS
3. Unfair Competition
1. POSTER ADS
Distinctions
PATENT COPYRIGHT TRADEMARK
Subject Invention: Literary or artistic Any visible sign

matter of Technical Solution work which is an capable of
of a problem which original distinguishing the
Protection is new, involves an intellectual goods or services of
inventive step and creation; an enterprise;
is industrially Expression Brand
applicable
Office where Bureau of Patents, Not required; Bureau of

right is Intellectual Optional at The Trademarks,
Property Office National Library Intellectual
registered or IPO Property Office
Duration of 20 years from Generally, 50 10 years, renewable
Right filing or priority years after the indefinitely
date death of author
International Regime of IP Rights
 Berne Convention (WIPO)

 Paris Convention (WIPO)
 Patent Cooperation Treaty (WIPO)
 Madrid Protocol (WIPO)
 TRIPs Agreement (WTO)
 The Marrakesh Treaty to Facilitate Access to
Published Works for Persons who are Blind, Visually

Impaired
MIRPURI vs. CA, et al., G.R. No. 114508, [1999]
“Intellectual and industrial property rights cases

are not simple property cases... For this reason, all
agreements concerning industrial property, like those
on trademarks and tradenames, are intimately
connected with economic development. Industrial
property encourages investments in new ideas and
inventions and stimulates creative efforts for the
satisfaction of human needs. They speed up transfer
of technology and industrialization, and thereby
bring about social and economic progress.”
The Intellectual Property Code of the Philippines

declares that "an effective intellectual and industrial
property system is vital to the development of
domestic and creative activity, facilitates transfer of
technology, it attracts foreign investments, and
ensures market access for our products." … The
Code was enacted 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 (WTO).
The WTO is a common institutional framework for

the conduct of trade relations among its members in
matters related to the multilateral and plurilateral trade
agreements annexed to the WTO Agreement. 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. Members to this Agreement "desire to reduce
distortions and impediments to international trade,
taking into account the 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."
To fulfill these objectives, the members have agreed

to adhere to minimum standards of protection set
by several Conventions. These Conventions are: the
Berne Convention for the Protection of Literary
and Artistic Works (1971), … and the Paris
Convention (1967), as revised in Stockholm on July
14, 1967.
A major proportion of international trade depends on

the protection of intellectual property rights. Since the
late 1970's, the unauthorized counterfeiting of
industrial property and trademarked products has had
a considerable adverse impact on domestic and
international trade revenues. The TRIPs Agreement
seeks to grant adequate protection of intellectual
property rights by creating a favorable economic
environment to encourage the inflow of foreign
investments, and strengthening the multi-lateral
trading system to bring about economic, cultural and
technological independence.
Berne Convention for the Protection of Literary and

Artistic Works (1971)
 3 Basic Principles
◼ National Treatment
◼ Automatic Protection
◼ Independence of Protection
 Minimum Standards of Protection

Paris Convention on the Protection of Industrial

Property (1967)
 including patents, trademarks, industrial designs,
utility models, service marks, trade names,
geographical indications and the repression of
unfair competition.
 Basicprinciples
◼ National Treatment
◼ Right of Priority (date of filing)
◼ Common Rules [Minimum Standards]
Trade-Related aspects of Intellectual Property

Agreement or TRIPs (WTO)
 Annex C to the General Agreement on Tariffs and
Trade or GATT
 Basic principles
 National Treatment
 Most-Favoured-Nation Treatment
 3 Main Sets of Provisions
 Minimum Standards: Berne-Plus and Paris-Plus

 Enforcement: Inaudita Altera Parte; border
enforcement
 Dispute Settlement: WTO Procedures
Patent Cooperation Treaty or PCT (WIPO)

 A filing system. A PCT application has the effect of
automatically designating all Contracting States bound
by the PCT on the international filing date, as if a
national patent application had been filed with the
national patent office of that member State.
 Advantages:
 brings the world within reach;

 provides a strong basis – through ISR - for patenting
decisions
 Postpones [by 18 months] the major costs associated
with international patent protection.
Madrid Protocol (WIPO)
 The Madrid System for the International

Registration of Marks:
◼ filing one application with the International
Bureau (through the office of the home country),
◼ in one language (either English, French or
Spanish)
◼ and paying one set of fees.
 Includesmaintenance, renewals, amendments and

assignments.
Madrid System
Applicant
Office of Origin
Designated Designated Designated

Contracting Party Contracting Party Contracting Party
Madrid System
□ Application through National or Regional IP

Office
□ Formality Examination by WIPO
□ Substantive examination by Office of the

designated country
□ Contracting Party [Local Application]
Local Trademark Application
IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
Background:
 In 2012, the Philippines acceded to the Madrid

Protocol through mere ratification by the
President.
 The IPAP petitioned the SC to declare the

accession as unconstitutional on the ground that
it was in the nature of the treaty and the
accession had not been approved by Congress.
IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
 Whether or not the IPAP has locus standi to challenge

the President's ratification of the Madrid Protocol
 Whether or not the President's ratification of the

Madrid Protocol is valid and constitutional; and
 Whether or not the Madrid Protocol is in conflict with

the IP Code.
IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
 On 19 July 2016, the Supreme Court voted 13-0 in

denying the petition as executive agreements do not
require the consent of Congress
 “The ruling upheld the ‘exercise of discretion’ of the

Secretary of Foreign Affairs to determine whether an
agreement should be considered an executive
agreement or a treaty”
 Moreover, the SC categorically stated that the

accession was not in conflict with the IP Code.
IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
“I have no doubt that many of the lawyers who

practice in the field of trademark protection in
Intellectual Property Law do not have the myopic
goal of simply being administrative agents or local
post offices for owners of foreign marks. I have full
confidence that they can meet the skill and
accreditation requirements to work under the
Madrid Protocol as well as any foreign lawyer…”
IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
“…In an era of more transnational transactions and

markets evolving from national boundaries, we
should adapt as a profession, as surely as our
products become more competitive. The sooner our
profession adapts, the better it can assist our
entrepreneurs and our own industries to weather
the difficult political economies of the world
market.”
Recap: Basic General IP principles
 Territoriality
 Registration
 Exc. Copyright
 First-to-File
 Exc. Copyright
 Nothing Absolute: Exceptions and Limitations
The Marrakesh Treaty
The MARRAKESH VIP TREATY:
The Marrakesh Treaty to Facilitate Access to

Published Works by Visually Impaired Persons
and Persons with Print Disabilities
 The Treaty was signed in Marrakesh on June
27, 2013, and came into force on September

30, 2016
 Total Contracting Parties : 80+ (Bolivia)
A “Book Famine” Crisis
Each year, of the millions of books published

worldwide, only 1–7% are made available to the
285 million persons in the world who are blind
and visually impaired, 90 percent of whom live
in low-income settings in developing countries .
In the Philippines…
According to the DOH, over two million

people nationwide are blind or suffering from
poor vision.
The Problem…
Copyright infringement:
There is a lack of legal fair use provisions for:
• Local production and distribution of books in accessible
formats;
• Cross-border distribution of books in accessible formats
to institutions and individuals.
The Treaty’s Objectives
 It has a clear humanitarian and social

development dimension.
 Main goal is to create a set of mandatory

limitations and exceptions for the benefit of
VIPs.
In line with the human rights principles

outlined in the UDHR and the UN Convention
on the Rights of Persons with Disabilities
(UNCRPD), the Marrakesh Treaty is the first
copyright treaty with a clear HR perspective.
 The treaty allows for copyright exceptions to

facilitate the creation of accessible versions of
books and other copyrighted works for visually
impaired persons.
 It sets a norm for countries ratifying the treaty

to have a domestic copyright exception
covering these activities, and allowing for the
import and export of such materials.
“Beneficiary”
 A beneficiary
person is a person
who:
(a) is blind;
“Beneficiary”
(b) has a visual

impairment or a
perceptual or
reading disability;
“Beneficiary”
(c) is otherwise unable,

through physical
disability,
...regardless of any other

disabilities.
“WORKS”
 Literary and artistic

works…, in the form of text,
notation and/or related
illustrations, whether
published or otherwise
made publicly available in
any media.
“Accessible Format Copy”
 A copy of a work in an
alternative manner or
form which gives a
beneficiary person
access to the work, as
feasibly and comfortably
as a person without
visual impairment or
other print disability.
A “Book Famine” Crisis
Accessible formats:
 large print for people with low vision,
 Braille for those with total loss of sight

(blind), and
 audio information (for both).
 Currently only 1.7% of the world’s published

books ever make it into accessible formats.
THE MARRAKESH TREATY
vis-à-vis
THE INTELLECTUAL
PROPERTY CODE
IP Code of the PHILIPPINES
SEC. 184. Limitations on Copyright. –

The following acts shall not constitute infringement of
copyright:
…
“184.1 (l) the reproduction or distribution of published
articles or materials in a specialized format exclusively
for the use of the blind, visually- and reading-impaired
persons: Provided, That such copies and distribution
shall be made on a nonprofit basis and shall indicate
the copyright owner and the date of the original
publication (RA 10372 amending RA 8292 [2013])
PH accedes to the Marrakesh Treaty
PHL Amb. Evan Garcia hands over the Instrument of Accession of the Philippines to the Marrakesh Treaty to WIPO Director Francis Gurry in Geneva on
18 December 2018
BENGZON
END OF SESSION 1
NEGRE
UNTALAN
THANK YOU !☺
FERDINAND M. NEGRE
BENGZON
NEGRE
UNTALAN
SESSION II: PATENTS

A set of small blocks made “of light wood, preferably
cork” automatically release and “fall into the sleeper's
face” when the alarm goes off.
INVENTIONS
3
4
5
Computer-related Inventions
The first ever kidney delivered by drone was a
flying success (University of Maryland)
Computer-related Inventions
Human Organ Monitoring and Quality Assurance
Apparatus for Long-Distance Travel
Computer-related
Inventions
Ride-sharing App
Computer-related
Inventions
Locking & Unlocking a

Mobile Device Using Facial
Recognition
BASIC PATENT PRINCIPLES
1. TERRITORIALITY - patents are only valid in the

country or region in which they have been granted
2. FIRST-TO-FILE –applicant who files first will
get the patent
3. DISCLOSURE –applicant shall disclose the invention
in a manner sufficiently clear and complete
- Quid pro quo principle – protection in exchange
for disclosure
4. CONDITIONAL – patents are granted only upon
compliance with the criteria of patentability
5. LIMITED RIGHTS…
LIMITATIONS OF A PATENT
Territory
Scope
- Claims
- Exceptions and Limitations
Time
- Expired
- Lapsed
What is a patent?
INVENTION = PATENT?
INVENTION ≠ PATENT
INVENTION
Section 21. Patentable Inventions. - Any

technical solution of a problem in any field
of human activity which is new, involves an
inventive step and is industrially applicable
shall be patentable. It may be, or may
relate to, a product, or process, or an
improvement of any of the foregoing.
INVENTION
ANY TECHNICAL SOLUTION TO A PROBLEM

IN ANY FIELD OF HUMAN ACTIVITY. (Sec. 21,
IPC)
INVENTION

IPC)
INVENTION

IPC)
INVENTION

IPC)
PROBLEM-SOLUTION APPROACH
INVENTION
It may be, or may relate to, a product, or

process, or an improvement of any of the
foregoing.
INVENTION
1. A product, such as a machine, a device, an

article of manufacture, a composition of matter
(food, medicine, disinfectant, etc.), a
microorganism;
2. A process, such as a method of use, a method of
manufacturing, a non-biological process, a
microbiological process;
• Computer-related
inventions; and
3. An improvement of any of the foregoing.
NON-PATENTABLE INVENTIONS (Sec. 22)
1. Discoveries
2. Scientific theories
3. Mathematical methods
4. Schemes, rules and methods of
-performing mental acts
-playing games
-doing business
and programs for computers
5. Methods for treatment of the human or
animal body by surgery or therapy &
diagnostic methods practised on the
human & animal body
NON-PATENTABLE INVENTIONS
6. Plant varieties or animal

breeds or essentially biological
processes for the production of
plants and animals
7. Aesthetic creations
8. Contrary to public order or
morality
Patentable Subject-Matter?
Plant variety?
Section 21 of the R.A. 8293 requires
that an invention be:
NEW (NOVEL)
[Requirement #1]
TEST OF NOVELTY
An invention shall not be considered

new if it forms part of a prior art.
(Sec. 23, R.A.8293)

NOVELTY
Prior Art :
1. Everything which is made available to the
public anywhere in the world, before the
filing date or the priority date of the
application. It may refer to:
- patents & registered utility models and
industrial designs
- printed publications (printed and
published)
- prior knowledge
- prior use and sale
PRIOR ART - Everything made available to the public
by means of:
PRIOR
ART
NOVELTY
Prior Art :
2. The whole contents of an application for a
patent, utility model or industrial design
registration,
- published in accordance with the IP Code
- filed or effective in the Philippines
- with filing or priority date earlier than the
application
NOVELTY ANALYSIS
How much information from prior art is sufficient?
“The defense of lack of novelty (i.e. 'anticipation') can

only be established by a single prior art reference
which discloses each and every element of the
claimed invention.
Structural Rubber Products Co. v. Park Rubber
Co.,749 F.2d 707,715-16, 223 U.S.P.Q. (BNA) 1264
(Fed. Cir. 1984).
Inventor’s OWN DISCLOSURE
Rule: If you publish your inventions in a journal,

demonstrate, sell or discuss your invention in
public before you file a patent application, you
cannot get a patent
BUT…
GRACE PERIOD
Non-Prejudicial Disclosure
If you have already disclosed or published your
inventions in a journal, demonstrate, sell or discuss
your invention in public, you can still file a patent
application within 12 months (1 year) from the date
of disclosure or publication. (Sec. 25)
INVENTIVE STEP (Requirement #2)
An invention involves an inventive step if, having

regard to prior art, it is NOT OBVIOUS to a person
skilled in the art at the time of the filing date or
priority date of the application claiming the
invention. (Sec. 26, IP Code)
INVENTIVE STEP = NON-OBVIOUSNESS

TEST OF 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.
(Sec. 26, R.A.8293)
Can we combine prior art references
in determining inventive step?
Graham v. John Deere, 383 U.S. 1 (1966)
Graham v. John Deere Prior Art: ‘811 Patent
Upper Plate
Shank
Hinge
Plate
Graham v. John Deere
Claimed Invention ‘798
(Modified ‘811 Patent)
Upper Plate
Shank
Hinge
Plate
Graham v. John Deere
Is it obvious to move the hinge plate from position A
under the shank to position 1 above the shank?
C
3
B 1
A
The Graham Test
• Scope and content of the prior art

• Difference between the prior art and the claims at
issue
• Level of ordinary skill in the pertinent art
Secondary considerations
• Commercial success
• Long felt need
• Failure of others
PERSON SKILLED IN THE ART
1. Ordinary practitioner (fictional person)
a. Has access and understanding of all the prior art

b. Aware of common general knowledge in the specific
art
c. Observes developments in the related technical field
2. Could be a team
3. Need not have inventive ability
Section 21 of R.A. 8293
Requires that an invention be:
✓NOVEL
✓INVENTIVE
EXAMPLE: GOLF BALL CASE
1. Problem: Abrasion Resistance
2. Solution to the Problem: Applying rigid polyurethane
material to the surface of the golf ball
3. Inventive Step?
- No. Rigid polyurethane is known to be highly abrasion
resistant
- Applying the substance to solve the abrasion problems in
golf balls would be an obvious matter to a person skilled in the
art
4. Might be Inventive, IF
- There is an improved and unexpected result by
significantly increasing the flight of the ball (strong evidence of
the presence of invention)
EXAMPLE 2
Problem: Gripping problems

with regard to handles of sports
rackets [such as tennis rackets]
greatly affect the performance
of a player.
Solution: A gripping contour is

provided on the handle of the
racket to allow a firm grip
thereon.
NOVELTY ISSUE:
Prior Art A INVENTION

Teaches a tennis Tennis Racket with
racket Gripping Contour
INVENTIVE STEP
ISSUE:
Prior Art A Prior Art B

Teaches a tennis Teaches a gripping
racket contour on the
handle of a golf
sports racket
INDUSTRIAL APPLICABILITY
(Requirement #3)
An invention that can be produced and

used in any industry shall be industrially
applicable.
(Sec. 27 R.A. 8293)
IS DENGVAXIA PATENTABLE?
Recap: PATENTABLE INVENTION

IN ANY FIELD OF HUMAN ACTIVITY
WHICH IS NEW, INVOLVES AN INVENTIVE
STEP AND IS INDUSTRIALLY APPLICABLE
SHALL BE PATENTABLE. Sec. 21.
Provided that the invention does not fall under

Sec. 22 on non-patentable subject matter.
Ownership of Patents
SECTION 28. Right to a Patent. - The right to a

patent belongs to the inventor, his heirs, or assigns.
When two (2) or more persons have jointly made an
invention, the right to a patent shall belong to them
jointly.
First-to-File Rule (Sec. 29, IP Code)
* If 2 or more persons have made the INVENTION

SEPARATELY and independently of each other,
the right to the patent shall belong to the person
who FILED (a patent application) an application
for each invention; OR
* where 2 or more application are filed for the

same invention, to the applicant who has the
EARLIEST filing date, or the earliest priority
date.
SECTION 30. Inventions Created Pursuant to a

Commission. - 30.1. The person who commissions the work
shall own the patent, unless otherwise provided in the
contract.
30.2. In case the employee made the invention in the course
of his employment contract, the patent shall belong to:
(a) The employee, if the inventive activity is not a part of
his regular duties even if the employee uses the time,
facilities and materials of the employer.
(b) The employer, if the invention is the result of the
performance of his regularly-assigned duties, unless there
is an agreement, express or implied, to the contrary.
SECTION 30. Inventions Created Pursuant to a

Commission. - 30.1. The person who commissions the work
shall own the patent, unless otherwise provided in the
contract.
30.2. In case the employee made the invention in the course
of his employment contract, the patent shall belong to:
(a) The employee, if the inventive activity is not a part of
his regular duties even if the employee uses the time,
facilities and materials of the employer.
(b) The employer, if the invention is the result of the
performance of his regularly-assigned duties, unless there
is an agreement, express or implied, to the contrary.
PARTS OF A LETTERS PATENT
• Abstract
• Description
- Title, Background, Summary, Detailed

Description
• Claims
• Drawings (if applicable)

DISCLOSURES and CLAIMS
• SECTION 35. Disclosure and Description of the

Invention. - 35.1. Disclosure. - The application shall
disclose the invention in a manner sufficiently clear
and complete for it to be carried out by a person
skilled in the art.
• SECTION 36. The Claims. - 36.1. The application

shall contain one (1) or more claims which shall
define the matter for which protection is sought.
Each claim shall be clear and concise, and shall be
supported by the description.
CLAIMS
Mandatory Publication
SECTION 44. Publication of Patent

Application. - 44.1. The patent application shall be
published in the IPO Gazette together with a search
document established by or on behalf of the Office
citing any documents that reflect prior art, after the
expiration of eighteen (18) months from the filing date
or priority date.
44.2. After publication of a patent application, any

interested party may inspect the application
documents filed with the Office.
Term of Patent
SECTION 54. Term of Patent. - The term of a patent

shall be twenty (20) years from the filing date of the
application.
Grounds for Cancellation
SECTION 61. Cancellation of Patents. - 61.1. Any

interested person may, upon payment of the required
fee, petition to cancel the patent or any claim thereof, or
parts of the claim, on any of the following grounds:
(a) That what is claimed as the invention is not new or

patentable;
(b) 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
(c) That the patent is contrary to public order or
morality.
True and Actual Inventor
Section 68. Remedies of the True and Actual Inventor.

- If a person, who was deprived of the patent without
his consent or through fraud is declared by final court
order or decision to be the true and actual inventor,
the court shall order for his substitution as patentee,
or at the option of the true inventor, cancel the patent,
and award actual and other damages in his favor if
warranted by the circumstances.
Extent of Protection
SECTION 75. Extent of Protection and

Interpretation of Claims. - 75.1. The extent of
protection conferred by the patent shall be
determined by the claims, which are to be
interpreted in the light of the description and
drawings.
75.2. …
PROPER CLAIMS CONSTRUCTION
Extent of protection afforded by a patent is determined
by its claims.
“When the language of its claims is clear and distinct,

the patentee is bound thereby and may not claim
anything beyond them. And so are the courts bound
which may not add to or detract from the claims matters
not expressed or necessarily implied, nor may they
enlarge the patent beyond the scope of that which the
inventor claimed and the patent office allowed, even if
the patentee may have been entitled to something more
than the words it had chosen would include.” (Smith
Kline Beckman vs. CA, G.R. No. 126627 [2003])
PUBLIC DOMAIN
CLAIMS
LIMITATIONS of Patent Rights
Section 72. Limitations of Patent Rights. - The owner of a
patent has no right to prevent third parties from
performing, without his authorization, the acts referred to
in Section 71 hereof:
72.1. Using a patented product which has been put on the
market in the Philippines by the owner of the product, or
with his express consent, …;
72.2. Where the act is done privately and on a non-
commercial scale or for a non-commercial purpose:
72.3. Where the act consists of making or using
exclusively for the purpose of experiments that relate to
the subject matter of the patented invention;
More LIMITATIONS…

in Section 71 hereof:….
72.4. In the case of drugs and medicines, where the act…
solely for purposes reasonably related to the development
and submission of information and issuance of approvals
by government regulatory agencies…
And More LIMITATIONS…
in Section 71 hereof:….
72.5. Where the act consists of the preparation for
individual cases, in a pharmacy or by a medical
professional, of a medicine…;
72.6. Where the invention is used in any ship, vessel,
aircraft, or land vehicle of any other country entering the
territory…
Other LIMITATIONS: PRIOR USER
Section 73. Prior User. - 73.1. Notwithstanding Section

72 [71] hereof, any prior user, who, in good faith was
using the invention or has undertaken serious
preparations to use the invention in his enterprise or
business, before the filing date or priority date of the
application on which a patent is granted, shall have the
right to continue the use thereof as envisaged in such
preparations within the territory where the patent
produces its effect.
73.2. The right of the prior user may only be transferred
or assigned together with his enterprise or business, or
with that part of his enterprise or business in which the
use or preparations for use have been made.
Other LIMITATIONS: Use by Government
Section 74. Use of Invention by Government. - 74.1. A

Government agency or third person authorized by the
Government may exploit the invention even without
agreement of the patent owner where:
(a) The public interest, in particular, national security,
nutrition, health or the development of other sectors, as
determined by the appropriate agency of the government,
so requires; or
(b) A judicial or administrative body has determined
that the manner of exploitation, by the owner of the
patent or his licensee is anti-competitive.
Other LIMITATIONS: Use by Government
Section 74. Use of Invention by Government. - 74.1. A Government
agency or third person authorized by the Government may exploit
the invention even without agreement of the patent owner where:
(c) In the case of drugs and medicines, there is a national

emergency or other circumstance of extreme urgency requiring the
use of the invention; or
(d) In the case of drugs and medicines, there is a public non-
commercial use of the patent by the patentee, without satisfactory
reason; or
(e) In the case of drugs and medicines, the demand for the patented
article in the Philippines is not being met to an adequate extent
and on reasonable terms, as determined by the Secretary of the
Department of Health.
Other Limitations: Compulsory Licensing
Section 93. Grounds for Compulsory Licensing. - The Director

of Legal Affairs may grant a license to exploit a patented
invention, even without the agreement of the patent owner, in
favor of any person who has shown his capability to exploit the
invention, under any of the following circumstances:
93.1. National emergency or other circumstances of extreme

urgency;
93.2. Where the public interest, in particular, national security,
nutrition, health or the development of other vital sectors of
the national economy as determined by the appropriate agency
of the Government, so requires; or
93.3. Where a judicial or administrative body has determined
that the manner of exploitation by the owner of the patent or
his licensee is anti-competitive; or
Other Limitations: Compulsory Licensing
Section 93. Grounds for Compulsory Licensing. –

…
93.4. In case of public non-commercial use of the patent
by the patentee, without satisfactory reason;
93.5. If the patented invention is not being worked in

the Philippines on a commercial scale, although capable
of being worked, without satisfactory reason: Provided,
That the importation of the patented article shall
constitute working or using the patent.
PATENT RIGHTS AND INFRINGEMENT
Patent owners have the following rights:
1. In case of a patent on a product, exclusive right to
RESTRAIN, PROHIBIT and PREVENT any unauthorized
person from MAKING, USING, OFFERING FOR SALE,
SELLING or IMPORTING the product. [M-U-O-S-I]
2. In case of a patent on a process, exclusive right to

RESTRAIN, PROHIBIT and PREVENT any unauthorized
person from USING the process, and from
MANUFACTURING, DEALING IN, USING, SELLING or
OFFERING FOR SALE or IMPORTING any product
obtained directly or indirectly from such process.
3. Right to ASSIGN, or TRANSFER BY SUCCESSION the

patent, and to CONCLUDE LICENSING CONTRACTS for
the patent. (Sec. 71)
Patent 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)
Extent of Protection
SECTION 75. Extent of Protection and Interpretation

of Claims. - 75.1. The extent of protection conferred by
the patent shall be determined by the claims, which
are to be interpreted in the light of the description and
drawings.
75.2. For the purpose of determining the extent of

protection conferred by the patent, due account shall
be taken of elements which are equivalent to the
elements expressed in the claims, so that a claim shall
be considered to cover not only all the elements as
expressed therein, but also equivalents.
A patent maybe infringed either:
1.Literally, or
2.By equivalents
PUBLIC DOMAIN
CLAIMS
Patent Infringement
• Types:
• Literal infringement
• Literal infringement exists if an accused device
falls directly within the scope of properly
interpreted claims.
Example:
Patent Claim Accused Product
A biodegradable A biodegradable
composition comprising: composition comprising:
1. A resin; and 1. A mixture of resin and
an elastomeric material;
2. A soy protein. 2. A soy protein
Patent Infringement
• Infringement by Equivalents
• Functions-Means-Results test:
If two devices do the same work in substantially
the same way and accomplish substantially the
same result, they are the same, even though they
differ in name, form or shape. (Smith Kline
Beckman vs. CA, G.R. No. 126627 [2003])
Patent Claim Accused Product

A biodegradable A biodegradable
composition comprising: composition comprising:
1. A resin; and 1. A resin; and
2. A corn starch. 2. A potato starch.
Patent Infringement
Section 78. Process Patents; Burden of Proof . - If the

subject matter of a patent is a process for obtaining a
product, any identical product shall be presumed to
have been obtained through the use of the patented
process if the product is new or there is substantial
likelihood that the identical product was made by the
process and the owner of the patent has been unable
despite reasonable efforts, to determine the process
actually used. In ordering the defendant to prove that
the process to obtain the identical product is different
from the patented process, the court shall adopt
measures to protect, as far as practicable, his
manufacturing and business secrets.
Patent Infringement
• As an incident to an infringement case pending

before it, courts have jurisdiction to pass upon
patentability of an invention.
“SECTION 81. Defenses in Action for Infringement. -

In an action for infringement, the defendant, in
addition to other defenses available to him, may show
the invalidity of the patent, or any claim thereof, on
any of the grounds on which a petition of cancellation
can be brought under Section 61 hereof.”
Patent Infringement
Section 84. Criminal Action for Repetition of Infringement.
- If infringement is repeated by the infringer or by anyone
in connivance with him after finality of the judgment of
the court against the infringer, the offenders shall, without
prejudice to the institution of a civil action for damages, be
criminally liable therefor and, upon conviction, shall suffer
imprisonment for the period of not less than six (6) months
but not more than three (3) years and/or a fine of not less
than One hundred thousand pesos (P100,000) but not
more than Three hundred thousand pesos (P300,000), at
the discretion of the court. The criminal action herein
provided shall prescribe in three (3) years from date of the
commission of the crime.
VOLUNTARY LICENSING
Article XII, Constitution
SECTION 19. The State shall regulate or prohibit

monopolies when the public interest so requires. No
combinations in restraint of trade or unfair
competition shall be allowed.
VOLUNTARY LICENSING
Section 85. Voluntary License Contract. - To encourage

the transfer and dissemination of technology, prevent
or control practices and conditions that may in
particular cases constitute an abuse of intellectual
property rights having an adverse effect on
competition and trade, all technology transfer
arrangements shall comply with the provisions of this
Chapter.
VOLUNTARY LICENSING
4.2. The term "technology transfer arrangements"

refers to 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.
VOLUNTARY LICENSING
Section 87. Prohibited Clauses. - Except in cases under

Section 91, the following provisions shall be deemed
prima facie to have an adverse effect on competition and
trade:
87.1. Those which impose upon the licensee the
obligation to acquire from a specific source capital goods,
intermediate products, raw materials, and other
technologies, or of permanently employing personnel
indicated by the licensor;
87.2. Those pursuant to which the licensor reserves the
right to fix the sale or resale prices of the products
manufactured on the basis of the license;
87.3. Those that contain restrictions regarding the
volume and structure of production;
VOLUNTARY LICENSING
87.4. Those that prohibit the use of competitive

technologies in a non-exclusive technology transfer
agreement;
87.5. Those that establish a full or partial purchase
option in favor of the licensor;
87.6. Those that obligate the licensee to transfer for free
to the licensor the inventions or improvements that may
be obtained through the use of the licensed technology;
87.7. Those that require payment of royalties to the
owners of patents for patents which are not used;
VOLUNTARY LICENSING
87.8. Those that prohibit the licensee to export the licensed

product unless justified for the protection of the legitimate
interest of the licensor such as exports to countries where
exclusive licenses to manufacture and/or distribute the licensed
product(s) have already been granted;
87.9. Those which restrict the use of the technology supplied
after the expiration of the technology transfer arrangement,
except in cases of early termination of the technology transfer
arrangement due to reason(s) attributable to the licensee;
87.10. Those which require payments for patents and other
industrial property rights after their expiration;
87.11. Those which require that the technology recipient shall
not contest the validity of any of the patents of the technology
supplier;
VOLUNTARY LICENSING
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate
research and development programs in connection with new
products, processes or equipment;
87.13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
87.14. Those which exempt the licensor for liability for non-
fulfilment of his responsibilities under the technology
transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed product
or the licensed technology; and
87.15. Other clauses with equivalent effects.
VOLUNTARY LICENSING
Section 88. Mandatory Provisions. - The following

provisions shall be included in voluntary license contracts:
88.1. That the laws of the Philippines shall govern the

interpretation of the same and in the event of litigation,
the venue shall be the proper court in the place where the
licensee has its principal office;
88.2. Continued access to improvements in techniques and
processes related to the technology shall be made available
during the period of the technology transfer arrangement;
VOLUNTARY LICENSING
88.3. In the event the technology transfer arrangement

shall provide for arbitration, the Procedure of Arbitration
of the Arbitration Law of the Philippines or the Arbitration
Rules of the United Nations Commission on International
Trade Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce
(ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; and
88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor.
VOLUNTARY LICENSING
Section 91. Exceptional Cases. - In exceptional or
meritorious cases where substantial benefits will
accrue to the economy, such as
high technology content,
increase in foreign exchange earnings,
employment generation,
regional dispersal of industries and/or
substitution with or use of local raw materials, or
in the case of Board of Investments, registered
companies with pioneer status,
exemption from any of the above requirements may be
allowed by the Documentation, Information and
Technology Transfer Bureau after evaluation thereof
on a case by case basis.
VOLUNTARY LICENSING
Section 92. Non-Registration with the Documentation,

Information and Technology Transfer Bureau. -
Technology transfer arrangements that conform with
the provisions of Sections 86 and 87 need not be
registered with the Documentation, Information and
Technology Transfer Bureau. Non-conformance with
any of the provisions of Sections 87 and 88, however,
shall automatically render the technology transfer
arrangement unenforceable, unless said technology
transfer arrangement is approved and registered with
the Documentation, Information and Technology
Transfer Bureau under the provisions of Section 91 on
exceptional cases.
UTILITY MODELS or UM
REQUIREMENTS FOR UM REGISTRATION:
1.New (Novelty)
2.Inventive Step
3.Industrial Applicability
Also called PETTY PATENT or SMALL PATENT

UTILITY MODELS
• Mere registration; no substantive

examination required of prior art
• Term: 7 years without extension or renewal
• Same rights as in patent invention

INDUSTRIAL DESIGNS
What is an INDUSTRIAL DESIGN?
Section 112. Definition of Industrial Design. -

An industrial design is any composition of
lines or colors or any three-dimensional form,
whether or not associated-with lines or colors:
Provided, That such composition or form gives
a special appearance to and can serve as
pattern for an industrial product or handicraft.
INDUSTRIAL DESIGNS
REQUIREMENTS FOR INDUSTRIAL DESIGN
Section 113. Substantive Conditions for Protection. -

113.1. Only industrial designs that are new or
original shall benefit from protection under this Act.
113.2. Industrial designs dictated essentially by
technical or functional considerations to obtain a
technical result or those that are contrary to public
order, health or morals shall not be protected.
Purpose of Industrial Design
– Make your product appealing to consumers

– Create a «niche» market
– Customize products in order to target different
customers (e.g. Swatch)
– Develop the brand (e.g. Apple ’s « Think Different »
strategy)
Two-dimensional Designs
Three-Dimensional Designs
Industrial Design Protection
• Industrial designs are compositions of lines or colors

or any three-dimensional forms which give a special
appearance to a product
• They protect the ornamental or aesthetic aspect of a
product
• Exclusive rights: Right to prevent others from
applying (making, selling or importing) the protected
design to commercial products for a period of 5 years
plus 2 renewals = 15 years
• Requirement of registration; no substantive
examination
DISTINCTIONS
UTILITY INDUSTRIAL
PATENTS
MODELS DESIGN
Novelty Novelty
REGISTRATION Inventive step
Novelty
REQUIREMENT Industrial Industrial
Applicability Applicability
SUBSTANTIVE
EXAMINATION
Required Not Required Not Required
TERM OF
20 7 5+5+5
PROTECTION
E.I. DUPONT V. IPO, G.R. NO. 174379 [31 August 2016]
• On July 10, 1987, E.I. Dupont filed a Patent

Applicant for medicine for hypertension (Losartan)
• On December 19, 2000, Dupont’s new counsel sent
IPO a request that action be taken on its Patent
Application
• The IPO responded stating that it already took
action and mailed notice on July 19, 1988, or 13
years earlier and the Application was deemed
abandoned for Applicant’s failure to respond. [only 4
months to revive]
• On May 29, 2002, Dupont replied stating that its
then counsel died in 1996
E.I. DUPONT V. IPO, G.R. NO. 174379
• IPO denied revival; on appeal, CA reversed on

ground that lawyer’s death was sufficient
justification.
• Therapharma then moved to intervene, arguing that

the CA decision directly affected its “vested rights to
sell its own product.”
• CA allowed Therapharma to intervene, stating that

it had an interest as a competitor in the revival of
Dupont’s Patent Application.
• Upon reconsideration, the CA ruled that the public

interest would be prejudiced by the revival of
Dupont‘s application.
• Losartan was used to treat hypertension, "a
chronic ailment afflicting an estimated 12.6
million Filipinos," and noted that the presence of
competition lowered the price for losartan
products.
SC:
“A patent is granted to provide rights and
protection to the inventor after an invention is
disclosed to the public. It also seeks to restrain and
prevent unauthorized persons from unjustly profiting
from a protected invention. However, ideas not
covered by a patent are free for the public to use and
exploit. Thus, there are procedural rules on the
application and grant of patents established to protect
against any infringement. To balance the public
interests involved, failure to comply with strict
procedural rules will result in the failure to obtain a
patent.”
SC:
“Dupont was inexcusably negligent in the prosecution

of its patent application; there was a correlative duty
on its part to be diligent in keeping itself updated on
the progress of its Patent Application. Its failure to be
informed of the abandonment of its Patent Application
was caused by its own lack of prudence.”
• SC: “The patent law has a three-fold purpose: (1)

patent law seeks to foster and reward invention; (2) it
promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the
invention once the patent expires; (3) the stringent
requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free
use of the public.
• “A patent is a monopoly granted only for specific
purposes and objectives. Thus, its procedures must be
complied with to attain its social objective.”
Phil PharmaWealth vs. Pfizer
635 SCRA 140 (2010)
Facts:
• Pfizer filed a Complaint for patent infringement against
Phil Pharmawealth with Bureau of Legal Affairs of the
Intellectual Property Office (BLA)
• Pharmawealth submitted bids for the supply of
Sulbactam Ampicillin in several hospitals without
consent of Pfizer, who had patent rights over the
substance
• BLA issued PI but denied an Extension;
• Pfizer filed Special Civil Action for Certiorari with CA
• Meantime, Pfizer filed another complaint with RTC of
Makati for patent infringement involving another patent
but covering the same Sulbactam Ampicillin
Phil PharmaWealth vs. Pfizer
635 SCRA 140 (2010)
• Issue #1:
• Can an injunctive relief be issued based on an
action of patent infringement when the patent
allegedly infringed has already lapsed?
• No.
• The “exclusive right to monopolize the subject
matter of the patent exists only within the term of
the patent.”
• “It is clear from the above-quoted provision of law
that the exclusive right of a patentee to make, use
and sell a patented product, article or process
exists only during the term of the patent.”
Phil Pharmawealth, Inc. vs. Pfizer, Inc
635 SCRA 140 (2010)
Does the filing of separate patent infringement actions
before the IPO and the RTC for different patents constitute
forum shopping?
• Yes. “It is clear from the foregoing that the ultimate

objective which respondents seek to achieve in their
separate complaints filed with the RTC and the IPO, is to
ask for damages for the alleged violation of their right to
exclusively sell Sulbactam Ampicillin products and to
permanently prevent or prohibit petitioner from selling
said products to any entity. Owing to the substantial
identity of parties, reliefs and issues in the IPO and RTC
cases, a decision in one case will necessarily amount to res
judicata in the other action.
ROMA DRUG vs. RTC Guagua, et al.,
G.R. No. 149907, 16 April 2009
➢raiding team seized several imported medicines,

including Augmentin tablets, Orbenin capsules,
Amoxil and Ampiclox
➢seized medicines were manufactured by
SmithKline but imported directly from abroad and
not purchased through the local SmithKline, the
authorized Philippine distributor of these
products
➢NBI filed a criminal complaint against Rodriguez for of R.A.
No. 8203 (Special Law on Counterfeit Drugs)
➢“Counterfeit” – includes an “unregistered imported drug
product”
o"Unregistered imported drug product” shall refer to
unregistered imported drug product without a registered
counterpart brand in the Philippines. If the unregistered
imported drug product has a registered counterpart brand
in the Philippines, their product shall be considered
counterfeit. (IRR)
o“registered” – contemplates registration with FDA
SC: SLCD's classification of "unregistered imported
drugs" as "counterfeit drugs” in conflict with Rep. Act
No. 9502 which grants private third persons the
unqualified right to import or otherwise use such
drugs.
Anyway…or by the way:
R.A. 9711, passed into law 3 months after the Roma

decision, penalizes among others the importation of
unregistered drugs.
Also…
May constitute patent infringement (exclusive right to

import)
Impressions v. Lexmark, 581 U.S. 1523 (2017)
Facts:
Lexmark International, Inc. designs, manufactures,
and sells toner cartridges to consumers in the United
States and abroad. It owns a number of patents that
cover components of those cartridges and the manner
in which they are used.
When Lexmark sells toner cartridges, it gives

consumers two options:
1. Buy a toner cartridge at full price, with no
restrictions.
2. Buy a cartridge at a discount through Lexmark’s
“Return Program.” In exchange for the lower price,
customers must sign a contract agreeing to use the
cartridge only once and to refrain from transferring the
cartridge to anyone but Lexmark.
Like Impressions, companies known as

remanufacturers acquire empty Lexmark toner
cartridges—including Return Program cartridges—
from purchasers in the United States, refill them with
toner, and then resell them.
They do the same with Lexmark cartridges that they
acquire from purchasers overseas and import into the
United States.
Issues:
I. Is Impressions guilty of patent infringement in the

Return Program cartridges that it remanufactured
and sold in the United States.
II. Is Impressions guilty of patent infringement in the
imported cartridges that it remanufactured and sold
in the U.S.?
I. Lexmark exhausted its patent rights in the Return

Program cartridges that it sold in the United States. A
patentee’s decision to sell a product exhausts all of its
patent rights in that item, regardless of any
contractual restrictions the patentee purports to
impose. As a result, even if the restrictions in
Lexmark’s contracts with its customers were clear and
enforceable under contract law, they do not entitle
Lexmark to retain patent rights in an item that it has
elected to sell.
II. Lexmark also sold toner cartridges abroad, which

Impression Products acquired from purchasers and
imported into the United States. Lexmark cannot sue
Impression Products for infringement with respect to
these cartridges. An authorized sale outside the
United States, just as one within the United States,
exhausts all rights under the Patent Act.
Question: Will the ruling be good law in the

Philippines?
Partially, perhaps. YES as to Return Program but NO

to the Exhaustion issue.
IP Code provides: Section 71. Rights Conferred by
Patent. - 71.1. A patent shall confer on its owner the
following exclusive rights:
(a) Where the subject matter of a patent is a product,
to restrain, prohibit and prevent any unauthorized
person or entity making, using, offering for sale,
selling or importing that product;
Section 72. Limitations of Patent Rights. - The owner

of a patent has no right to prevent third parties from
performing, without his authorization, the acts
referred to in Section 71 hereof in the following
circumstances:
72.1. Using a patented product which has been put on
the market in the Philippines by the owner of the
product, or with his express consent, insofar as such
use is performed after that product has been so put on
the said market;
x x x
BENGZON
END OF SESSION II
NEGRE
UNTALAN
THANK YOU !☺
FERDINAND M. NEGRE
BENGZON
NEGRE
UNTALAN
SESSION III: TRADEMARKS

XV
A distinctive-tasting pastillas is well-known throughout the
country as having been developed within a close-knit women’s
group in Barangay San Ysmael which is located along a very
busy national highway. lts popularity has encouraged the
setting up of several shops selling similar delicacies, with the
most famous product being the pastillas of "Barangay San
Ysmael." Eventually, the pastillas of Aling Yoling under the brand
name "Ysmaellas" began to attract national distinction. Aling
Yoling therefore registered it as a copyright with the National
Library. Her neighbor, Aling Yasmin, realizing the commercial
value of the brand, started using the term "Ysmaellas" for her
pastillas but used different colors. Aling Yasmin registered the
brand name "Ysmaellas" with the Intellectual Property Office.
(a) Can Aling Yoling successfully obtain court relief to prohibit
Aling Yasmin from using the brand name "Ysmaellas" in her
products on the basis of her (Aling Yoling's) copyright? What is
the difference between registration as a copyright and
registration as a trade or brand name? (2.5%)
(b) Can Aling Yasmin seek injunctive relief against Aling Yoling
from using the brand name "Ysmaellas," the latter relying on the
doctrine of "prior use" as evidenced by her prior copyright
registration? (2.5%)
(c) Can Aling Yoling seek the cancellation of Aling Yasmin's
trademark registration of the brand name "Ysmaellas" on the
ground of "Well Known Brand" clearly evidenced by her (Aging
Yoling's) prior copyright registration, actual use of the brand, and
several magazine articles? (2.5%)
Trademarks
A “mark” means any visible sign capable of

distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or
marked container of goods. (Sec. 121.1)
[I]n R.A. No. 8293, the Intellectual Property Code of the

Philippines, which defines a "trademark" as "any visible sign
capable of distinguishing goods." In Philippine jurisprudence,
the function of a trademark is
to point out distinctly the origin or ownership of the goods to
which it is affixed;
to secure to him, who has been instrumental in bringing into the
market a superior article of merchandise, the fruit of his industry
and skill;
to assure the public that they are procuring the genuine article;
to prevent fraud and imposition; and
to protect the manufacturer against substitution and sale of an
inferior and different article as his product.
Modern authorities on trademark law view

trademarks as performing three distinct functions:
(1) they indicate origin or ownership of the articles
to which they are attached;
(2) they guarantee that those articles come up to a
certain standard of quality; and

(3) they advertise the articles they symbolize.
Today, the trademark is not merely a symbol of origin and goodwill; it

is often the most effective agent for the actual creation and protection
of goodwill. It imprints upon the public mind an anonymous and
impersonal guaranty of satisfaction, creating a desire for further
satisfaction. In other words, the mark actually sells the goods. The
mark has become the "silent salesman," the conduit through which
direct contact between the trademark owner and the consumer is
assured. It has invaded popular culture in ways never anticipated that
it has become a more convincing selling point than even the quality
of the article to which it refers.
In the last half century, the unparalleled growth of industry and

the rapid development of communications technology have
enabled trademarks, tradenames and other distinctive signs of a
product to penetrate regions where the owner does not actually
manufacture or sell the product itself. Goodwill is no longer
confined to the territory of actual market penetration; it extends
to zones where the marked article has been fixed in the public
mind through advertising. Whether in the print, broadcast or
electronic communications medium, particularly on the Internet,
advertising has paved the way for growth and expansion of
the product by creating and earning a reputation that
crosses over borders, virtually turning the whole world into
one vast marketplace.
Trademarks

Visible Sign
“visible”
 Words
 Letters
 Numerals
 Figures/Pictures
 Shapes
 Colors
 Logos
 Three dimensional
objects
 Combinations
Colors or shapes
Three dimensional objects
Not “visible”
 Sounds
 Smell
 Touch…
…called “non-traditional
marks”
Trademarks

Visible Sign
Distinctive
Distinctiveness
DISTINCTIVE!
DISTINCTIVE!
Distinctiveness
DISTINCTIVE!
Distinctiveness of a mark: A spectrum
Great White Shark v. Caralde, Jr., G.R. No.
192294, [November 21, 2012]
Great White Shark v. Caralde, Jr., G.R. No.
192294, [November 21, 2012]
A trademark device is susceptible to registration if it

is crafted fancifully or arbitrarily and is capable of
identifying and distinguishing the goods of one
manufacturer or seller from those of another. Apart
from its commercial utility, the benchmark
of trademark registrability is distinctiveness. Thus, a
generic figure, as that of a shark in this case, if
employed and designed in a distinctive manner, can be
a registrable trademark device, subject to the
provisions of the IP Code.
Types of Marks
 Trademarks vs. Service marks

 Collective marks
 Geographical Indications
 Certification marks
 Well known marks
Types of Trademarks
 Service marks
Types of Trademarks
"Collective mark" means any visible

sign designated as such in the
application for registration and
capable of distinguishing the origin
or any other common characteristic,
including the quality of goods or
services of different enterprises
which use the sign under the control
of the registered owner of the
collective mark
Collective Trademarks
Well-Known Marks: Paris Convention
Article 6bis
(1) The countries of the Union undertake, ex officio
if their legislation so permits, or at the request of an
interested party, to refuse or to cancel the registration,
and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a
translation, liable to create confusion, of a mark
considered by the competent authority of the country
of registration or use to be well known in that country
as being already the mark of a person entitled to the
benefits of this Convention and used for identical or
similar goods...
Sehwani v In-N-Out (Oct.15, 2007)
Article 6bis which governs the protection of well-

known trademarks, is a self-executing provision and does
not require legislative enactment to give it effect in the
member country. It may be applied directly by the
tribunals and officials of each member country by the
mere publication or proclamation of the Convention, after
its ratification according to the public law of each state
and the order for its execution.
The essential requirement under this Article is that

the trademark to be protected must be "well-known" in
the country where protection is sought. The power to
determine whether a trademark is well-known lies in the
"competent authority of the country of registration or
use." This competent authority would be either the
registering authority if it has the power to decide this, or
the courts of the country in question if the issue comes
before a court.
Fredco v. Harvard (June 1, 2011)
“Since "any combination" of the …criteria is

sufficient to determine that a mark is well-known, it
is clearly not necessary that the mark be used in
commerce in the Philippines. Thus, while under the
territoriality principle a mark must be used in
commerce in the Philippines to be entitled to
protection, internationally well-known marks are
the exceptions to this rule.”
Well-Known Marks: Factors
Rule 18, A.M. No. 10-3-10-SC
SEC. 2. Well-known mark. – 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.
Criteria - any combination

a) the duration, extent and geographical area of any use of
the mark;
b) the market share, in the Philippines and in other
countries;
c) the degree of the inherent or acquired distinction of the
mark;
d) the quality-image or reputation acquired by the mark;
e) the extent to which the mark has been registered in the
world;
f) the exclusivity of registration attained by the mark in the
world;
More Criteria or any combination

g) the extent to which the mark has been used in the world;
h) the exclusivity of use attained by the mark in the world
i) the commercial value attributed to the mark in the world;
j) the record of successful protection of the rights in the
mark;
k) the outcome of litigations dealing with the issue of
whether the mark is a well-known mark; and
l) the presence or absence of identical or similar marks
validly registered for or used on identical or similar goods
or services and owned by persons other than the person
claiming that his mark is a well-known mark.
“There is no question …that "Harvard" is a well-

known name and mark not only in the United States
but also internationally, including the Philippines. The
mark "Harvard" is rated as one of the most famous
marks in the world. It has been registered in at least 50
countries. It has been used and promoted extensively in
numerous publications worldwide. It has established a
considerable goodwill worldwide since the founding of
Harvard University more than 350 years ago…”
Recap: Types of Marks
 Trademarks vs. Service marks

 Geographical Indications
 Certification marks
 Well known marks
Non-registrable marks
- Immoral, deceptive, or scandalous matters

- Matter which may disparage or falsely
suggest a connection with persons, etc.
- Contrary to public order or morality
[Note: Sec. 123, rearranged according to
nature]
- Flags/coat of arms of nations

- Names, portraits or signature of living
persons
- Exception: with consent
- Names, portraits or signature of a
deceased President of the Philippines
- Exception: with written consent of
his/her living widow
Identical or confusingly similar with existing

registered or earlier filed application
trademarks including well-known marks
(Sec. 123.1 (d))
First-to-File Rule!
- Misleading marks Sec. 123.1 (g)

- Generic terms [signs or of indications that have become
customary or usual to designate the goods or services in
everyday language or in bona fide and established trade
practice] Sec. 123.1(h) and (i)
- Descriptive terms [signs or of indications that may serve
in trade to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time or production of
the goods or rendering of the services, or other
characteristics of the goods or services] Sec. 123.1(j)
- Color by itself;
- Shapes dictated by technical factors
Shang Properties v. St. Francis, G.R. No.
190706, [July 21, 2014]
190706, [July 21, 2014]
As deftly explained in the U.S. case of Great Southern

Bank v. First Southern Bank: "[d]escriptive
geographical terms are in the 'public domain' in the
sense that every seller should have the right to inform
customers of the geographical origin of his goods. A
'geographically descriptive term' is any noun or
adjective that designates geographical location and
would tend to be regarded by buyers as descriptive of
the geographic location of origin of the goods or
services.
190706, [July 21, 2014]
A geographically descriptive term can indicate any

geographic location on earth, such as continents,
nations, regions, states, cities, streets and addresses,
areas of cities, rivers, and any other location referred to
by a recognized name. In order to determine whether or
not the geographic term in question is descriptively
used, the following question is relevant: (1) Is the mark
the name of the place or region from which the goods
actually come? If the answer is yes, then the geographic
term is probably used in a descriptive sense, and
secondary meaning is required for protection“.
Non-Registrable Marks: Well-Known Marks
Sec. 123. A mark cannot be registered if it... (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;
Non-Registrable Marks: Well-Known Marks
Sec. 123. A mark cannot be registered if it... (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
Well-Known Marks
(f) is identical with, or confusingly similar to, or

constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to
goods or services which are not similar to those with
respect to which registration is applied for: Provided,
That use of the mark in relation to those goods or
services would indicate a connection between those
goods or services, and the owner of the registered
mark: Provided further, That the interests of the
owner of the registered mark are likely to be damaged
by such use; (Sec. 123)
Secondary Meaning
123.2. As regards signs or devices mentioned in

paragraphs (j), (k), and (l), nothing shall prevent the
registration of any such sign or device which has become
distinctive in relation to the goods for which registration
is requested as a result of the use that have been made of
it in commerce in the Philippines. The Office may accept
as prima facie evidence that the mark has become
distinctive, as used in connection with the applicant's
goods or services in commerce, proof of substantially
exclusive and continuous use thereof by the applicant in
commerce in the Philippines for five (5) years before the
date on which the claim of distinctiveness is made.
190706, [July 21, 2014]
“Under Section 123.2 of the IP Code, specific requirements

have to be met in order to conclude that a geographically-
descriptive mark has acquired secondary meaning, to wit:
(a) the secondary meaning must have arisen as a result of
substantial commercial use of a mark in the Philippines;
(b)such use must result in the distinctiveness of the mark
insofar as the goods or the products are concerned; and
(c) proof of substantially exclusive and continuous
commercial use in the Philippines for five (5) years before
the date on which the claim of distinctiveness is made.
Unless secondary meaning has been established, a
geographically-descriptive mark, due to its general public
domain classification, is perceptibly disqualified
from trademark registration.”
Recap: Trademarks

Visible Sign
Distinctive [inherent or acquired]
Not listed in Sec. 123 on non-registrable marks

Ownership of a mark
 How Marks are Acquired. - The rights in a mark shall

be acquired through registration made validly in
accordance with the provisions of this law. (Sec. 122)
 159.1. Notwithstanding the provisions of Section 155
hereof, a registered mark shall have no effect against
any person who, in good faith, before the filing date
or the priority date, was using the mark for the
purposes of his business or enterprise.
 TM rights are acquired through valid registration!

 BUT see Berris v. Abyadang and E.Y. Industrial v.
Shen Dar – ownership is acquired based on prior
use.
ZUNECA V. NATRAPHARM, G.R. No.
211850. September 8, 2020, En Banc
A. J. Caguioa, ponente
B. JJ. Leonen and Lazaro-Javier, dissenting
C. JJ. Perlas-Bernabe and Gesmundo, concurring
ZUNECA V. NATRAPHARM
Compare:
 TM: ZYNAPS  TM: ZYNAPSE

 GN: carbamazepine  GN: citicoline
 Indication: anti-convulsant;  Indication: cerebrovascular
seizure disorders like epilepsy disease or stroke
 CPR Registration: April 2003  TM Registration: Sept. 2007
 Prescription drug  Prescription drug
The action
Natrapharm sued Zuneca for Injunction, Trademark

Infringement, Damages… with Prayer for TRO and/or
Preliminary Injunction, alleging that Zuneca's "ZYNAPS" is
confusingly similar to its registered trademark "ZYNAPSE"
and the resulting likelihood of confusion is dangerous because
the marks cover medical drugs intended for different types of
illnesses. So, Natrapharm sought to enjoin Zuneca from using
"ZYNAPS", in addition to its demand for Zuneca's payment
of P2,000,000.00 in damages; P5,000,000.00 in exemplary
damages; and P300,000.00 as attorney's fees, expenses of
litigation, and costs of suit. Further, it prayed that all
infringing goods, labels, signs, etc. of Zuneca be impounded
and destroyed without compensation.
Legislative History of R.A. 8293

A. Sponsorship Speech of Sen. Raul Roco
“To comply with [the Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPS Agreement)] and
other international commitments, this bill no longer
requires prior use of the mark as a requirement for
filing a trademark application. It also abandons the rule
that ownership of a mark is acquired through use by
now requiring registration of the mark in the
Intellectual Property Office . Unlike the present law, it
establishes one procedure for the registration of marks. This
feature will facilitate the registration of marks.”
Jurisprudence under the IP Code

A. Berris Agricultural Co., Inc. v. Abyadang, GR
183404, Nachura, J., Second Division, October 13,
2010
B. E.Y. Industrial Sales, Inc., et al. v. Shen Dar, GR
184850. Velasco, J.. First Division, October 20,
2010
Berris Agricultural Co., Inc. Abyadang
TM:D-10 80 WP TM: NS D-10 PLUS

Goods: Fungicide Goods: Fungicide
Date of First Use: June 2002 Date of first use: July 2003
Date of TM Application: Nov. 2002 Date of TM Application: Jan.
Date of Registration: July 2004 2004
Berris Agricultural Co., Inc. v. Abyadang

 The ownership of a trademark is acquired by its registration and its
actual use by the manufacturer or distributor of the goods made
available to the purchasing public.
 Moreover, the presumption of validity and ownership under Sec.
138 [of the IP Code] may likewise be defeated by evidence of prior
use by another person, i.e., it will controvert a claim of legal
appropriation or of ownership based on registration by a
subsequent user. This is because a trademark is a creation of use
and belongs to one who first used it in trade or commerce.
E.Y. Industrial Sales, Inc., et al. v. Shen Dar

EYIS Shen Dar
TM: VESPA & Device TM: VESPA & Device

Goods: Air Compressor Goods: Air Compressor
Date of First Use: March 1995 Date of first use: Jan. 1997
Date of TM Application: July 1999 Date of TM Application: June
Date of TM Registration: Jan. 2004 1997
Date of TM Registration: Feb.
2007
ABS-CBN Publishing, Inc. v. Director of the Bureau of
Trademarks, G.R. No. 217916, [June 20, 2018]
In 2004, ABS-CBN filed with IPOPhils an

application for the registration of its trademark
"METRO" under Class 16 for "magazines." The case
was assigned to an examiner who, after examination,
refused the applicant mark's registration.
Per the Examiner, the mark is identical with 3
other marks, and is therefore unregistrable according
to Section 123.1 (d) of the Intellectual Property Code:
(1) "Metro" (word) with Application No.
42000002584, (2) "Metro" (logo) with Application No.
42000002585, and (3) "Inquirer Metro" with
Application No. 42000003811. BENGZON NEGRE UNTALAN
BENGZON NEGRE UNTALAN

ABS-CBN asserts that it has a vested right over the mark because
it has applied [thought its predecessor company] in 1994 for the
registration of the same under the old Trademark Law. Since
then, it actually used the mark in commerce. It claims that under
the old Trademark law, actual use in commerce is a pre-requisite
to the acquisition of ownership over a trademark and that its
actual use of the mark enabled it to automatically acquire
trademark rights, which should have extended under the IPC in
1998. However, ABS-CBN itself admitted that its 1994 application
was already "deemed abandoned."

Upon final rejection by the examiner, ABS-CBN

appealed to the BOT Director, who in turn denied the
appeal. ABS-CBN then filed another appeal to the DG.
DG again denied the appeal.
Undaunted, ABS-CBN appealed to the CA. The CA
dismissed the appeal for failure to file on time.
ABS-CBN appealed to the SC.

ABS-CBN Publishing, Inc. v. Director of the Bureau of Trademarks, G.R.
No. 217916, [June 20, 2018]
SC:
“While it is quite noticeable that the petitioner failed to
discuss the implications of this abandonment, it
remains a fact that once a trademark is considered
abandoned, the protection accorded by the IPC, or in
this case the old Trademark Law, is also withdrawn.
The petitioner, in allowing this abandonment, cannot
now come before the Court to cry foul if another entity
has, in the time that it has abandoned its trademark
and in full cognizance of the IPC and the IPO rules,
registered its own.”|
Ownership of a mark
 Acquired thourgh valid registration

- Prior use is not a requirement but there must be
actual use after application
- Declaration of Actual Use – within three (3) years
from filing of the application
 Term of Protection:
- Ten (10) years from registration

- renewable for periods of ten (10) years each –
indefinitely! – provided a declaration of use is filed
within 1 year from filing and from the 5 th year of
registration
Rights of a Trademark Owner
 Right to exclusive use of the mark in connection with

one’s own goods or services resulting in likelihood of
confusion
 Right to prevent others from use of an identical mark

for the same, similar or related goods or services. (Sec.
147)
Rights of a Trademark Owner
Q: Will trademark registration abroad be valid and

binding here in the Philippines?
- No.
- Principle of Territoriality
- Exception: Well-known marks
- Exception: Bad Faith
Trademark Infringement
Unauthorized use of a registered trademark, or of a

colorable imitation of the same, for similar or
related goods in which such use is likely to cause
confusion or mistake, or to deceive.
 Governed by section 155, IPC

Elements:
1. Ownership of a trademark through registration
2. That the trademark is reproduced,

counterfeited, copied, or colourably imitated by
another
3. No consent by the trademark owner or assignee
4. Use in connection with the sale, offering for sale,
or advertising of any such goods, business or

services or those related thereto
5. Likelihood of Confusion
(Prosource International, Inc. v. Horphag Research Management SA, G.R.

No. 180073, [November 25, 2009], 620 PHIL 539-553)
Element 1:
1. Ownership of a trademark
 R.A. 166 (Old trademark law): Prior user

 R.A. 8293 (IPC): Registration
Element 2:
the infringer;
Element 2:
another without consent;
 Exact reproduction/counterfeiting/copying of the
mark
Element 2:
2. That the trademark is reproduced, counterfeited,
copied, or colourably imitated by another without

consent;
 Use of a colorable imitation thereof
• “Colorable imitation” denotes such a close or
ingenious imitation as to be calculated to
deceive ordinary persons, or such a
resemblance to the original as to deceive an
ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to
purchase the one supposing it to be the other.
(Rule 18, Section 4, AM No. 10-3-10-SC)
Counterfeiting Colorable Imitation
Elements 3 and 4:
3. Unauthorized Use in connection with the sale,
offering for sale, or advertising of any such

goods, business or services, or those that are
related thereto
Elements 3 and 4:
3. Unauthorized use in connection with the sale,
offering for sale, or advertising of any such

goods, business or services or those that are
related thereto
 Use of identical or similar mark for non-
identical, dissimilar or non-related goods =
No infringement
• Exception : Internationally Well-Known
Marks or Dilution of Mark
Elements 5:
4. Likelihood of confusion
- Is actual confusion necessary?

Element 5:
Likelihood of confusion
In the foregoing enumeration, it is the
element of "likelihood of confusion" that is the
gravamen of trademark infringement. But
"likelihood of confusion" is a relative concept. The
particular, and sometimes peculiar, circumstances of each
case are determinative of its existence. Thus,
in trademark infringement cases, precedents must be
evaluated in the light of each particular case. (Prosource
International, Inc. v. Horphag Research Management SA,
G.R. No. 180073, [November 25, 2009], 620 PHIL 539-553)
Element 5:
 Types of confusion:
• As to the goods themselves (“Confusion of
goods”)
• As to the source or origin of such goods
(“Confusion of business”)
Element 5:
 Types of confusion:
• As to the goods themselves (“Confusion of
goods”)
◼Same or competing goods
• As to the source or origin of such goods
(“Confusion of business”)
Element 5:
Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion
of business”)
◼Wherein the goods of the parties are different but
the defendant’s product can reasonably be
assumed to originate from the plaintiff thereby
deceiving the public into believing that there is
some connection between the plaintiff and
defendant, which in fact, does not exist ( Mighty
Corporation vs. EJ Gallo, 434 SCRA 473, [2004]])
Element 5:
 Whose perspective?
 Tests of confusion:
• Dominancy Test
• Holistic Test
Element 5:
• Dominancy Test
◼Prevalent features of a product
Element 5:
• Dominancy Test
◼Prevalent features of a product
Element 5:
• Holistic Test
◼Marks compared in their entirety
Emerald v. CA, G.R. 100098 (1995)
 “LEE” v. "STYLISTIC MR. LEE" both for jeans or

pants
No. 217916, [June 20, 2018]

No. 217916, [June 20, 2018]
“To determine whether a mark is to be considered as

"identical" or that which is confusingly similar with
that of another, the Court has developed two (2) tests: the
dominancy and holistic tests. While the Court has time
and again ruled that the application of the tests is
on a case to case basis, upon the passage of the IPC, the
trend has been to veer away from the usage of the holistic
test and to focus more on the usage of the dominancy test.
As stated… in McDonald’s vs. L.C. Big Mak, the
"test of dominancy is now explicitly incorporated into law
in Sec. 155.1 of the IPC which defines infringement as the
'colorable imitation of a registered mark x x x
or a dominant feature thereof.'" ||| BENGZON NEGRE UNTALAN
Element 5:
 Other factors:
• Idem Sonans Rule – aural effects of the words
and letters contained in the marks are also
considered in determining the issue of
confusing similarity
• Examples:
◼ “Pycogenol” vs. “PCO-GENOL”
(Prosource vs. Horphag)
◼ “Dermaline” vs. “Dermalin” (Dermaline
Inc. vs. Myra Pharmaceuticals)
◼ “Nanny” vs. “Nan” (Nestle S.A. vs. Dy Jr.)
Recap: Trademark Infringement
Elements:
1. Ownership of a trademark, i.e. registration

counterfeited, copied, or colorably imitated by
the infringer
3. No consent by the trademark owner or assignee
or advertising of any goods, business or services,

or those that are related thereto
Trademark Fair Use
SECTION 148. Use of Indications by Third Parties for

Purposes Other than those for which the Mark is
used. - Registration of the mark shall not confer on
the registered owner the right to preclude third
parties from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity,
destination, value, place of origin, or time of
production or of supply, of their goods or services:
Provided, That such use is confined to the purposes of
mere identification or information and cannot mislead
the public as to the source of the goods or services.
Shang Properties v. St. Francis,
G.R. No. 190706, [July 21, 2014]
“…even on the assumption that secondary meaning had

been acquired, …this does not automatically trigger the
concurrence of the fraud element required under Section
168.2 of the IP Code, as exemplified by the acts
mentioned in Section 168.3 of the same. Ultimately, …
there can be no unfair competition without this element
[fraud]... considering too the notoriety of the Shangri-La
brand in the real estate industry …, the more
reasonable conclusion is that the former's use of the
marks "THE ST. FRANCIS TOWERS" and "THE ST.
FRANCIS SHANGRI-LA PLACE" was meant only to
identify, or at least associate, their real estate project/s
with its geographical location.”
Tradename Infringement
 Same protection as for trademark

 Section 165.3 in relation to Section 153 to 156,
IPC
 Only (but big) difference: registration is NOT a
requirement for ownership of a tradename

 Section 165.2 (a), IPC:
“Notwithstanding any laws or regulations
providing for any obligation to register trade
names, such names shall be protected, even
prior to or without registration, against any
unlawful act committed by third parties.”
In Coffee Partners, Inc. vs. San Francisco Coffee &
Roastery, Inc. (G.R. No. 169504, 3 March 2010), the
SC squarely ruled upon the issue of whether
petitioner’s use of the trademark "SAN FRANCISCO
COFFEE" constitutes infringement of respondent’s
trade name "SAN FRANCISCO COFFEE &
ROASTERY, INC.," even if the trade name is not
registered with the Intellectual Property Office (IPO).
The Supreme Court held that a trade name need
not be registered with the IPO before an
infringement suit may be filed by its owner against
the owner of an infringing trademark. All that is
required is that the trade name is previously used
in trade or commerce in the Philippines.
 Section 165.2 (b), IPC
In particular, any subsequent use of the trade name

by a third party, whether as a trade name or a
mark or collective mark, or any such use of a
similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
Elements:
1. Ownership of a tradename; registration with
IPO is not required.
2. That the tradename is reproduced,
counterfeited, copied, or colorably imitated by
the infringer;
or advertising of any goods, business or services,
or those that are related thereto
4. No consent by the tradename owner
Unfair Competition
 Governed by Section 168, IPC

 Premise: Protection of one’s goodwill over
his/her products/services
Unfair Competition
 Unfair competition has been defined as the passing

off (or palming off) or attempting to pass off upon
the public of the goods or business of one person as
the goods or business of another with the end and
probable effect of deceiving the public. (Superior
Commercial Enterprises vs. Kunnan, G.R. 169974
[2010])
 Is
“hoarding” of softdrink or beer bottles to stifle
supply a form of unfair competition under the IP
Code?
Unfair Competition
 Elements:
1. Confusing similarity in the general appearance
of the goods;
2. Intent to deceive the public and defraud a
competitor
 “True test" of unfair competition:

 “whether the acts of the defendant have the
intent of deceiving or are calculated to deceive
the ordinary buyer making his purchases
under the ordinary conditions of the particular
trade to which the controversy relates”
“General Appearance”
Distinctions
“The distinctions between suits for trademark

infringement and unfair competition prove useful:
(a) the former is the unauthorized use of a
trademark, whereas the latter is the passing off of
one's goods as those of another;
(b) fraudulent intent is unnecessary in the former,
while it is essential in the latter; and
(c) in the former, prior registration of the trademark
is a pre-requisite to the action, while it is not
necessary in the latter.”
(Co v. Spouses Yeung, G.R. No. 212705 , [September
10, 2014])
Distinctions
Trademark Tradename Unfair

infringement infringement Competition
Legal basis 155 165 168
Registration a Yes No No
requirement?
Acts prohibited Unauthorized Unauthorized Passing off of
use/reproduction/ use/reproduction/ one’s goods giving
counterfeiting/co counterfeiting/co them the general
pying of a pying of a appearance of the
trademark or tradename goods of another
colorable
imitation thereof
Is fraud an No No Yes
element?
False Designation of Origin
Section 169. False Designations of Origin; False

Description or Representation. - 169.1. Any person
who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading
representation of fact, which:
(a) Is likely to cause confusion, or to cause mistake,
or to deceive as to the affiliation, connection, or
association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person; or
False Designation of Origin
(b) In commercial advertising or promotion,

misrepresents the nature, characteristics, qualities,
or geographic origin of his or her or another
person's goods, services, or commercial activities,
shall be liable to a civil action for damages and
injunction provided in Sections 156 and 157 of this
Act by any person who believes that he or she is or
is likely to be damaged by such act.
Example: Ambush marketing

Uyco vs. Lo (Jan. 28, 2013)
Uyco vs. Lo (Jan. 28, 2013)
Vicente Lo filed a case against Uyco, et. al. for

manufacturing and selling KEROSENE BURNERS
with marks that were allegedly assigned to him
(“Casa Hipolito S.A. Portugal, HIPOLITO & SEA
HORSE & TRIANGLE DEVICE” etc.) and marked
“Made in Portugal” and “Original Portugal” even
though the burners were manufactured in the
Philippines
Recap: Causes of Action
 Trademark or Tradename Infringement

 Unfair Competition
 False Designation of Origin

Remedies and Jurisdiction
 Administrative action – IPO-BLA, concurrent

with RTC-SCCs
 Civil Action, RTC-SCC concurrent with IPO-BLA
 Criminal Action, exclusive with RTC-SCC
 2-5 years imprisonment

 P50,000-P200,000 in fine
Reliefs
Section 156. Actions, and Damages and Injunction for

Infringement. - 156.1. The owner of a registered mark may
recover damages from any person who infringes his rights,
and the measure of the damages suffered shall be either
the reasonable profit which the complaining party would
have made, had the defendant not infringed his rights, or
the profit which the defendant actually made out of the
infringement, or
in the event such measure of damages cannot be readily
ascertained with reasonable certainty, then the court may
award as damages a reasonable percentage based upon the
amount of gross sales of the defendant or the value of the
services in connection with which the mark or trade name
was used...
Reliefs
Section 156. Actions, and Damages and Injunction for

Infringement. - 156.1…
156.2. On application of the complainant, the court may
impound during the pendency of the action, sales invoices
and other documents evidencing sales.
156.3. In cases where actual intent to mislead the public
or to defraud the complainant is shown, in the discretion
of the court, the damages may be doubled.
156.4. The complainant, upon proper showing, may also
be granted injunction.
Reliefs
Section 157. Power of Court to Order Infringing Material

Destroyed. - 157.1 In any action arising under this Act, in
which a violation of any right of the owner of the registered
mark is established, the court may order that goods found to
be infringing be, without compensation of any sort, disposed of
outside the channels of commerce in such a manner as to avoid
any harm caused to the right holder, or destroyed; and all
labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the
registered mark or trade name or any reproduction,
counterfeit, copy or colorable imitation thereof, all plates,
molds, matrices and other means of making the same, shall be
delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal of the
trademark affixed shall not be sufficient other than in
exceptional cases which shall be determined by the
Regulations, to permit the release of the goods into the
channels of commerce.
Reliefs
Section 158. Damages; Requirement of Notice . - In any

suit for infringement, the owner of the registered
mark shall not be entitled to recover profits or
damages unless the acts have been committed with
knowledge that such imitation is likely to cause
confusion, or to cause mistake, or to deceive. Such
knowledge is presumed if the registrant gives notice
that his mark is registered by displaying with the
mark the words '"Registered Mark" or the letter R
within a circle or if the defendant had otherwise
actual notice of the registration.
Reliefs
Section 159. Limitations to Actions for Infringement. -

Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under
this Act shall be limited as follows:
159.1. Notwithstanding the provisions of Section 155
hereof, a registered mark shall have no effect against any
person who, in good faith, before the filing date or the
priority date, was using the mark for the purposes of his
business or enterprise: Provided, That his right may only
be transferred or assigned together with his enterprise or
business or with that part of his enterprise or business in
which the mark is used.
Reliefs
Section 159. Limitations to Actions for Infringement . -

Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under
this Act shall be limited as follows:
159.1…
159.2. Where an infringer who is engaged solely in the
business of printing the mark or other infringing
materials for others is an innocent infringer, the owner of
the right infringed shall be entitled as against such
infringer only to an injunction against future printing.
Reliefs

Notwithstanding any other provision of this Act, the remedies
given to the owner of a right infringed under this Act shall be
limited as follows:
…
159.3. Where the infringement complained of is contained in
or is part of paid advertisement in a newspaper, magazine, or
other similar periodical or in an electronic communication, the
remedies of the owner of the right infringed as against the
publisher or distributor of such newspaper, magazine, or other
similar periodical or electronic communication shall be limited
to an injunction against the presentation of such advertising
matter in future issues of such newspapers, magazines, or
other similar periodicals or in future transmissions of such
electronic communications. The limitations of this
subparagraph shall apply only to innocent infringers:…
Reliefs

Notwithstanding any other provision of this Act, the remedies
given to the owner of a right infringed under this Act shall be
limited as follows:
159.3. …Provided, That such injunctive relief shall not be
available to the owner of the right infringed with respect to an
issue of a newspaper, magazine, or other similar periodical or
an electronic communication containing infringing matter
where restraining the dissemination of such infringing matter
in any particular issue of such periodical or in an electronic
communication would delay the delivery of such issue or
transmission of such electronic communication is customarily
conducted in accordance with the sound business practice,
and not due to any method or device adopted to evade this
section or to prevent or delay the issuance of an injunction or
restraining order with respect to such infringing matter.
Case Law Updates
Wilton Dy and/or Philites v. Koninklijke Philips
G.R. No. 186088; March 22, 2017
Facts:
▪ Philites filed a trademark application covering its
fluorescent bulb, incandescent light, starter, and
ballast.

G.R. No. 186088; March 22, 2017
Facts:
▪ Philips:
o Filed an opposition
o Violates several provisions of the IP Code.
o Identical with, or confusingly similar to, or constitutes a
translation of a well-known mark

G.R. No. 186088; March 22, 2017
Issues:
1. Whether Respondent’s mark is well-known?
2. Whether the mark applied for by Petitioner is
identical or confusingly similar with that of
Respondent’s?

G.R. No. 186088; March 22, 2017
1
Ruling:
▪ The “PHILIPS” mark is well-known
▪ In Freco Manufacturing Corporation v Harvard University:
▪ When well-known: If considered to be well-known by a
competent authority
▪ Competent authority – Court, Director General, Director of the
Bureau of Legal Affairs, any admin agency or office vested with
quasi-judicial or judicial jurisdiction to hear and adjudicate any
action to enforce the rights to a mark.

G.R. No. 186088; March 22, 2017
2
Ruling:
▪ Determining similarity and likelihood of confusion
o Dominancy test – focuses on similarities of prevalent
features
o Holistic or totality test – consideration of the entirety of
marks as applied to the product
▪ The mark “PHILITES” bears an uncanny resemblance or
confusing similarity with respondent’s mark “PHILIPS”

G.R. No. 186088; March 22, 2017
Ruling:
▪ Ordinary purchaser can conclude an association or relation
between the marks
▪ Both trademarks are used in the sale of the same goods
▪ The container or actual wrapper/packaging of Petitioner’s light
bulbs show that there is a strong similitude and likeness
between the two trademarks that will likely cause deception or
confusion to the purchasing public

W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc.
G.R. No. 222366; Dec. 04, 2017
Facts:
▪ In 2005, Starwood Hotels applied for registration of the mark
“W”
▪ Class 43 – services for providing food and drink; temporary
accommodation; and
▪ Class 44 – medical services; veterinary services; hygienic and beauty
care for human beings or animals; agriculture, horticulture and forestry
services

G.R. No. 222366; Dec. 04, 2017
Facts:
▪ In 2006, W Land applied for registration of its own “W” mark
▪ Class 36 – insurance; financial affairs; monetary affairs; real
estate affairs)

G.R. No. 222366; Dec. 04, 2017
Facts:
▪ Starwood opposed
▪ W Land filed a petition to cancel Starwood’s mark for
non-use since it has no hotel or establishment
rendering the services covered by the registration.

G.R. No. 222366; Dec. 04, 2017
Issue:
Whether actual use is a pre-requisite in registrability of

a trademark?

G.R. No. 222366; Dec. 04, 2017
Ruling:
▪ Use
o Genuine, not merely token; bona fide use which results or
tends to result, into a commercial interaction
▪ Sufficient proof of actual use
o Website showing goods being sold or services being
rendered
o Use of the mark on an interactive website
o Respondent’s “W” mark is prominently displayed in the
website
Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation
G.R. No. 221717; June 19, 2017
Facts:
▪ IFP filed an application for
the registration of the mark
“OK Hotdog Inasal” under
Class 30 (flour and
preparations made from
cereals)
G.R. No. 221717; June 19, 2017
Facts:
▪ Mang Inasal is the owner
of the mark “Mang Inasal,
Home of Real Pinoy Style
Barbeque and Device”
under Class 43 (Services
providing food and drink)
o Registered with the
IPO in 2006
o Used since 2003

G.R. No. 221717; June 19, 2017
Issue:
Whether OK Hotdog Inasal mark is confusingly

similar to the Mang Inasal mark.
Sub-Issue:
Whether “INASAL” can be appropriated as a
mark.
G.R. No. 221717; June 19, 2017
Ruling:
▪ Concept of confusion:
o Confusion of goods – product confusion
o Confusion of business – source or origin confusion
▪ Dominancy Test
▪ Holistic or totality test

G.R. No. 221717; June 19, 2017
Ruling:
▪ IFP copied the dominant feature “INASAL” of
Mang Inasal
▪ The services of IFP and Mang Inasal are
related to each other
▪ An average buyer who comes across the curls
marketed under the OK Hotdog Inasal mark
is likely to be confused as to the true source of
such curls
G.R. No. 221717; June 19, 2017
Ruling:
“The dominant element "INASAL," as stylized in the

Mang Inasal mark, is different from the term "inasal"
per se. The term "inasal" per se is a descriptive term
that cannot be appropriated. However, the dominant
element "INASAL," as stylized in the
Mang Inasal mark, is not. Petitioner, as the registered
owner of the Mang Inasal mark, can claim exclusive use
of such element.”
Societe des Produits, Nestle, S.A. v. Puregold Price Club
G.R. No. 217194; Sept. 6, 2017
Facts:
▪ Puregold:
o Filed an application for the registration of the trademark
“COFFEE MATCH” with the IPO.
o Classified under Class 30 (coffee, tea, cocoa, sugar, artificial
coffee, flour, etc.)

G.R. No. 217194; Sept. 6, 2017
Facts:
▪ Nestle:
o Filed an opposition
o Exclusive owner of the “COFFEE-MATE” trademark
o Confusing similarity between “COFFEE-MATE” and
“COFFEE MATCH”
o "COFFEE-MATE" declared as an internationally well-
known mark

G.R. No. 217194; Sept. 6, 2017
Issue:
Whether Respondent’s mark may be registered?

G.R. No. 217194; Sept. 6, 2017
Ruling:
▪ It may be registered.
▪ Determining similarity or likelihood of confusion:
o Dominancy Test – similarity of prevalent features
o Holistic Test – consideration of the entirety of the marks
▪ “COFFEE” is the common dominant feature
▪ IP Code prohibits exclusive registration of generic marks
▪ The word "COFFEE" cannot be exclusively appropriated by
either Nestle or Puregold since it is generic or descriptive of
the goods they seek to identify.

G.R. No. 217194; Sept. 6, 2017
Ruling:
▪ Generic or descriptive words are not subject to
registration and belong to the public domain
▪ “MATE” v. “MATCH”
o Visual and aural characters are distinguishable
o Phonetic difference

U.E. v. Masangkay
Juan vs.
a Juan
G.R. No. August
G.R. No. 221732, 226727 23, 2017

U.E. v. Masangkay
Juan vs.
a Juan
G.R. No. August
G.R. No. 221732, 226727 23, 2017
FACTS:
 Roberto owns a laundry business called, Lavandera Ko. He
claims to have used said mark since 1994.
 Subsequently, his brother, Fernando, registered the same
mark with the IPO. Thus, he filed an action in RTC including
the cancellation of trademark registration.
 RTC dismissed the action, stating that neither Robert nor
Fernando has the right over the mark Lavandera Ko because
the true owner of the mark is Santiago Suarez.
 According to RTC, Suarez, in 1942, composed a song called,
Lavandera Ko. The RTC took notice of an article on the Internet.
Is the RTC correct in its
ruling?
U.E. v. Masangkay
Juan vs. Juan
G.R. No. August
G.R. No. 221732, 226727 23, 2017
RULING:
 Copyright should not be confused with trademark.
 Copyright - intangible, incorporeal right granted by statute to the author or
originator of certain literary or artistic productions
 Trademark - any designation which is adopted and used by a person to
denominate goods which he markets, or services which he renders, or
business which he conducts.
 The mark, Lavandera Ko, used by Fernando and Robert, is
used as a tradename or service name since the business
involved consists of rendering laundry services.
 The song, Lavandera Ko, composed by Suarez, is protected
by copyright, not trademark.
De La Salle Montessori International of Malolos, Inc. v.
De La Salle Brothers Inc.
G.R. No. 233073; Feb. 07, 2018
Facts:
▪ Petitioner reserved with the SEC its corporate name
De La Salle Montessori International Malolos Inc.
▪ Respondents filed a petition against Petitioner with
the SEC to change the latter’s corporate name

G.R. No. 233073; Feb. 07, 2018
Facts:
▪ Respondents' Argument:
o Petitioner’s corporate name is misleading or confusingly
similar
o Have acquired prior right to use the “De La Salle” and “La
Salle” names.
o The use of “De La Salle” gives an impression that it is part
of the “La Salle” group.
▪ Petitioner’s Argument:
o Respondents cannot claim the exclusive use “De La Salle”
because of the ruling in the Lyceum of the Philippines case.
De La Salle Montessori International of Malolos, Inc. v. De La Salle
Brothers Inc.
G.R. No. 233073; Feb. 07, 2018
Issues:
1. Whether there is confusing similarity in corporate names?
2. Whether the Lyceum of the Philippines case is applicable?

G.R. No. 233073; Feb. 07, 2018
Ruling:
▪ There is confusing similarity in corporate names
▪ Test is whether the similarity is such as to mislead a person
using ordinary care and discrimination
▪ Similarity in in the parties’ names but also the business they
are engaged in
▪ Proof of actual confusion not needed, it is enough that
confusion is probable or likely to occur.
G.R. No. 233073; Feb. 07, 2018
Ruling:
▪ The Lyceum of the Philippines case does not apply
▪ “Lyceum”
o Generally refers to a school or institution: Generic term
▪ "De La Salle"
o Means “the room”
o Suggestive or fanciful
Citigroup, Inc. v. Citystate Savings Bank,
Inc., G.R. No. 205409, [June 13, 2018]
VS.
Inc., G.R. No. 205409, [June 13, 2018]
Inc., G.R. No. 205409, [June 13, 2018]
“Examining these marks, this Court finds that
petitioner's marks can best be described as consisting
of the prefix "CITI" added to other words.
“Applying the dominancy test, this Court sees
that the prevalent feature of respondent's mark, the
golden lion's head device, is not present at all in any of
petitioner's marks. The only similar feature between
respondent's mark and petitioner's collection of marks
is the word "CITY" in the former, and the "CITI" prefix
found in the latter. This Court agrees with the findings
of the Court of Appeals that this similarity alone is not
enough to create a likelihood of confusion.
Asia Pacific Resources v. Paperone, Inc.,
G.R. Nos. 213365-66, [December 10, 2018]
G.R. Nos. 213365-66, [December 10, 2018]
“Relative to the issue on confusion of marks and trade

names, jurisprudence has noted two types of
confusion, viz.: (1) confusion of goods (product confusion),
where the ordinarily prudent purchaser would be induced
to purchase one product in the belief that he was
purchasing the other; and (2) confusion of business (source
or origin confusion), where, although the goods of the
parties are different, the product, …is such as might
reasonably be assumed to originate with the registrant of
an earlier product; and the public would then be deceived
either into that belief or into the belief that there is some
connection between the two parties, though inexistent.”
G.R. Nos. 213365-66, [December 10, 2018]
“Thus, while there is confusion of goods when the products

are competing, confusion of business exists when the
products are non-competing but related enough to produce
confusion of affiliation.
“This case falls under the second type of confusion. Although
we see a noticeable difference on how the trade name of
respondent is being used in its products as compared to
the trademark of petitioner, there could likely be confusion
as to the origin of the products. Thus, a consumer might
conclude that PAPER ONE products are manufactured by or
are products of Paperone, Inc. Additionally, …the goods of
the parties are obviously related as they are both kinds of
paper products.”
Kolin v. Kolin (March 25, 2015)
Round 1
Kolin v. Kolin (March 25, 2015)
TAIWAN KOLIN CORPORATION, LTD. KOLIN ELECTRONICS, INC.
Household appliances, particularly: Automatic voltage regulator, converter,

television sets, cassette recorder, VCD recharger, stereo booster, AC-DC
Amplifiers, camcorders, and other a/v regulated power supply, step-down
electronic equipment, flat iron, vacuum transformer, and PA amplified AC-DC
cleaner, etc...
Classification of Goods and Services
Section 144. Classification of Goods and Services. –

144.1. x x x
144.2. Goods or services may not be considered as being

similar or dissimilar to each other on the ground that, in
any registration or publication by the Office, they
appear in different classes of the Nice Classification.
Kensonic v. Uni-Line, G.R. Nos. 211820-21
& 211834-35, [June 6, 2018]
Based on the foregoing pronouncement in Taiwan
Kolin Corporation, Ltd. v. Kolin Electronics, Co., Inc.,
there are other sub-classifications present even if the
goods are classified under Class 09. For one,
Kensonic's goods belonged to the information
technology and audiovisual equipment sub-class, but
Uni-Line's goods pertained to the apparatus and
devices for controlling the distribution of electricity
sub-class. Also, the Class 09 goods of Kensonic were
final products but Uni-Line's Class 09 products were
spare parts. In view of these distinctions, the Court
agrees with Uni-Line that its Class 09 goods were
unrelated to the Class 09 goods of Kensonic.
Kolin v. Kolin (February 9, 2021)
Kolin Electronics Co. Inc.

v.
Kolin Philippines International, Inc.
Round 2
KECI’s registered KOLIN mark KPII’s application for kolin mark
4-1993-087497 4-2006-010021
Class 9: Automatic voltage Class 9: Televisions, DVD

regulator, converter, recharger, players
stereo booster, AC-DC regulated
power supply, step-down
transformer, PA amplified AC-
DC
Abandonment of the Holistic Test

 The Supreme Court made it crystal clear that the use of the
Holistic Test in determining the resemblance of mark has
been abandoned.
 Section 155.1 of the IP Code is explicit: “colorable
imitation of a registered mark […] or a dominant feature
thereof.”
 Legislative intent in explicitly adopting the Dominancy Test
as shown in the legislative deliberations in the drafting of
the IP Code.
 The Taiwan Kolin case used the Holistic Test in evaluating
trademark resemblance, making it an improper precedent
since the Dominancy Test is what is prescribed under the
law.
Protection over word marks

 Word marks protect the word itself.
 KECI owned the registration of the word mark
KOLIN. There are no special characteristics in

KECI’s KOLIN mark; the word itself is the subject
of protection.
 The minor differences between KOLIN and kolin
were completely disregarded.
Degree of Distinctiveness
 KOLIN is a fanciful / coined word, hence it is a
highly distinctive mark.

 Confusion is therefore more likely if someone else
were to be allowed to concurrently use the same

mark in commerce.
Relatedness of Goods and Services

 The Multifactor Test + complementarity of goods/services
 As laid down in Mighty Corp v. E&J Gallo Winery
 Business and its location; product’s quality, quantity or

size including nature of packaging; nature & cost of
articles; descriptive properties, physical attributes,
essential characteristics; purpose of goods; whether
article is bought for immediate consumption; fields of
manufacture; conditions under which it is purchased;
channels of trade
Relatedness of Goods and Services

 The use of product/service classification under the Nice
Classification as a factor in determining relatedness or non-

relatedness is explicitly abandoned.
 Section 6 of the 2020 Revised Rules of Procedure for IP
Rights cases.
 The goods covered by KECI’s KOLIN are related and
complementary to the goods of KPII’s kolin.

Actual Confusion and Sophistication of Buyers

 KECI presented evidence consisting of various e-mails it
received from consumers reflecting their complaints,

concerns, and other information about KPII’s goods.
 There was already actual proof of confusion among
consumers between KOLIN and kolin goods.

 Even repeat customers were confused. Evidence showed
that they actually associated kolin goods with KECI’s

business.
Normal Expansion of Business

 Since the goods covered by KOLIN and kolin are
related, the goods covered by kolin falls within KECI’s
normal expansion of business.
 Such potential expansion in related products and
market areas is within the right enjoyed by a registered

trademark owner.
Bad Faith
 The actions of KPII supported the conclusion that it
acted in bad faith when it filed the application for
kolin despite KECI already being the registered
owner of KOLIN.
Compare:
 TM: ZYNAPS  TM: ZYNAPSE

 GN: carbamazepine  GN: citicoline
 Indication: anti-convulsant;  Indication: cerebrovascular
seizure disorders like epilepsy disease or stroke
 CPR Registration: April 2003  TM Registration: Sept. 2007
 Prescription drug  Prescription drug
The action
Natrapharm sued Zuneca for Injunction, Trademark Infringement,

Damages and Destruction with Prayer for TRO and/or Preliminary
Injunction, alleging that Zuneca's "ZYNAPS" is confusingly similar
to its registered trademark "ZYNAPSE" and the resulting likelihood
of confusion is dangerous because the marks cover medical drugs
intended for different types of illnesses. Consequently, Natrapharm
sought to enjoin Zuneca from using "ZYNAPS" or other variations
thereof, in addition to its demand for Zuneca's payment of
P2,000,000.00 in damages; P5,000,000.00 in exemplary damages;
and Three Hundred Thousand Pesos P300,000.00 as attorney's fees,
expenses of litigation, and costs of suit. Further, it prayed that all
infringing goods, labels, signs, etc. of Zuneca be impounded and
destroyed without compensation.
Bad Faith – Good Faith in TM
Registration and Use
Zuneca alleged that it was impossible for Natrapharm not to

have known the existence of "ZYNAPS" before the latter's
registration of "ZYNAPSE" because Natrapharm had
promoted its products in the same publications where Zuneca
had advertised "ZYNAPS."
Further, Zuneca pointed out that both Natrapharm and
Zuneca had advertised their respective products in identical
conventions. Despite its knowledge of prior use by Zuneca of
"ZYNAPS," Natrapharm had allegedly fraudulently
appropriated the "ZYNAPSE" mark by registering the same
with the IPO.
Knowledge = Fraud
SECTION 151. Cancellation. — 151.1. A petition to cancel a

registration of a mark under this Act may be filed with the
Bureau of Legal Affairs by any person who believes that he is
or will be damaged by the registration of a mark under this Act
as follows:
x x x
(b) At any time, if the registered mark becomes the generic name
for the goods or services, or a portion thereof, for which it is
registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of
this Act,…
Knowledge = Fraud
 Shangri-la v. Developers Group [2006]

 President and CEO stayed in a Shangri-la Hotel in Kowloon
 Pag-Asa v. CA (YKK zippers) [1984]
 President visited Yoshida’s factory in Japan
 Birkenstock v. Phil. Shoe Expo [2013]
 German origin, highly distinct, incredible; competitor
 Add: Ecole de Cuisine v. Renaud Cointreau [Le Cordon
Bleu] [2013]
Prior User in good faith and Co-existence
“In the same vein, prior users in good faith are also protected in
the sense that they will not be made liable for trademark
infringement even if they are using a mark that was
subsequently registered by another person. This is expressed in
Section 159.1 of the IP Code, which reads:
 SECTION 159. Limitations to Actions for Infringement. —
159.1. Notwithstanding the provisions of Section 155 hereof,

a registered mark shall have no effect against any person
who, in good faith, before the filing date or the priority
date, was using the mark for the purposes of his business
or enterprise: Provided, That his right may only be
transferred or assigned together with his enterprise or
business or with that part of his enterprise or business in
Co-Existence
“In any event, the application of Section 159.1 of the IP

Code necessarily results in at least two entities — the
unregistered prior user in good faith or their assignee or
transferee, on one hand; and the first-to-file registrant in
good faith on the other — concurrently using identical or
confusingly similar marks in the market, even if there is
likelihood of confusion. While this situation may not be
ideal, as eruditely explained in the Concurring Opinion of
Justice Perlas-Bernabe, the Court is constrained to apply
Section 159.1 of the IP Code as written.”
On Co-Existence - possibility of medical
switching
“While there is no issue as to the likelihood of confusion

between "ZYNAPSE" and "ZYNAPS," the Court
believes that the evil of medical switching will likely not
arise, considering that the law requires the generic names
of drugs to be written in prescriptions.”
Prosel Pharmaceuticals v. Tynor Drug House, Inc., G.R.
No. 248021, [September 30, 2020]
Prosel v. Tynor, G.R. No. 248021,
[September 30, 2020])
This Court is aware that countless products circulate around

the market today which may be viewed as strikingly similar
and may bring forth a likelihood of confusion to its target
market. With increasing product and service competition, the
determination of a likelihood of confusion becomes more
complex. While jurisprudence has developed the Dominancy
Test and Holistic/Totality Test to determine whether there is a
likelihood of confusion between competing marks, the
application of such tests is normally left to the subjective
judgment of the IPO or the courts…”
Prosel v. Tynor, G.R. No. 248021,
[September 30, 2020])
“…Albeit this Court recognizes the expertise of the IPO on

matters involving trademark and copyright infringement, the
fact remains that the products are aimed at a particular target
market outside of the individual personalities of those in the IPO
and the courts. Therefore, there may be underlying factors in a
mark that are discernible by a product's target market which the
IPO or the courts might not observe. Conversely, there may be
factors which the IPO or the courts may deem considerable but
are immaterial to the target market. Thus, the ponencia adopts
the observations of Justice Leonen in Asia Pacific Resources
International Holdings, Ltd. v. Paperone, Inc. that there should
be "objective, scientific, and economic standards to
determine whether goods or services offered by two parties
are so related that there is a likelihood of confusion.“”|||
USPTO v. Booking.com,
591 U. S.____(2020)
591 U. S. ___(2020)
Issue: Is “Booking.com” generic?

In the USPTO’s view, when a generic term is combined with a
generic top-level domain like “.com,” the resulting combination
is generic.
Relying in significant part on Booking.com’s evidence of
consumer perception, the District Court concluded that
“Booking.com” - unlike “booking”—is not generic. The
“consuming public,” the court found, “primarily understands
that BOOKING.COM does not refer to a genus, rather it is
descriptive of services involving ‘booking’ available at that
domain name.”
591 U. S. ___(2020)
Guiding Principles:
1. A “generic” term names a “class” of goods or services,
rather than any particular feature or exemplification of
the class. “A generic term is one that refers to the
genus of which the particular product is a species.”
2. For a compound term, the distinctiveness inquiry
trains on the term’s meaning as a whole, not its parts
in isolation.
3. The relevant meaning of a term is its meaning to
consumers. “What do the buyers understand by the
word for whose use the parties are contending?”
591 U. S. ___(2020)
Guiding Principles:
Eligibility for registration turns on the mark’s capacity to
“distinguis[h]” goods “in commerce.”
“[t]he primary significance of the registered mark to the
relevant public . . . shall be the test for determining
whether the registered mark has become the generic
name of goods or services.”
BENGZON
END OF SESSION 3
NEGRE
UNTALAN
THANK YOU !☺
FERDINAND M. NEGRE
BENGZON
NEGRE
UNTALAN
SESSION IV: COPYRIGHTS
FERDINAND NEGRE July 4, 2021

http://adage.com/article/advertising/philippines-tourism-bureau-drops-mccann-demands-apology/309416/
What about this?
Outline
 Extent of protection: Originality + Creativity in Works

 Economic Rights
 Moral Rights
 Exceptions:
 Public Domain;
◼Section 175 - Unprotected Subject Matter
◼Expired Term
 Limitations:
 Fair Use as a matter right

◼Section 184 and Section 185
 Plagiarism
Extent of Protection: Original Works
 Section 172. Literary and Artistic Works. - 172.1.

Literary and artistic works, hereinafter referred to
as "works", are original intellectual creations in the
literary and artistic domain protected from the
moment of their creation…

as "works," are original intellectual creations in the

Subject Matter of Copyright: “Work”
Section 172. Literary and Artistic Works. …shall include:

(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;
Subject Matter of Copyright: “Work”
Section 172. Literary and Artistic Works. –

(i) Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process
analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or any
process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
Audiovisual & cinematographic
works
Musical compositions
Books, articles &

other writings
Dramatic or dramatico-
musical compositions
Computer
programs
Letters
Works of drawing, painting,

architecture, sculpture and other
works of art

Review: Acquisition of Copyright
▪ No formalities required (Automatic Protection), but

it must be original and it must be an artistic or
literary work:
a. Original
– personal involvement or creativity:
authorship
– “a modicum level of creativity”
b. Artistic or Literary Work = Expression
– Vs. Functional or Technical Work
Review: Acquisition of Copyright
▪ Automatic Protection: “From Moment of Creation”

a. Registration?
b. Deposit?
c. ©?
d. Fixed or Expressed?
Proof of Ownership?
Sec. 218 – Affidavit Evidence
Ownership of Copyright
SECTION 178. Rules on Copyright Ownership. -

Copyright ownership shall be governed by the following
rules:
178.1 …copyright shall belong to the author of the work;
Q: Who is an author?
178.2. In the case of works of joint authorship, the co-
authors shall be the original owners of the copyright and
in the absence of agreement, their rights shall be
governed by the rules on co-ownership. If, however, a
work of joint authorship consists of parts that can be
used separately and the author of each part can be
identified, the author of each part shall be the original
owner of the copyright in the part that he has created;
Work Under Employment
 178.3. In the case of work created by an author

during and in the course of his employment, the
copyright shall belong to:
(a) The employee, if the creation of the object of
copyright is not a part of his regular duties even if
the employee uses the time, facilities and materials
of the employer.
(b) The employer, if the work is the result of the
performance of his regularly-assigned duties, unless
there is an agreement, express or implied, to the
contrary.
Commissioned Work
178.4. In the case of a work commissioned by a

person other than an employer of the author and
who pays for it and the work is made in
pursuance of the commission, the person who so
commissioned the work shall have ownership of
the work, but the copyright thereto shall remain
with the creator, unless there is a written
stipulation to the contrary;
178.5. In the case of audiovisual work, the copyright

shall belong to the producer, the author of the
scenario, the composer of the music, the film director,
and the author of the work so adapted. However, …the
producer shall exercise the copyright to an extent
required for the exhibition of the work in any manner,
except for the right to collect performing license fees
for the performance of musical compositions, with or
without words, which are incorporated into the work;
Sec. 178.6. In respect of letters, the copyright shall

belong to the writer subject to the provisions of
Article 723 of the Civil Code.
Sec. 179. Anonymous and Pseudonymous Works. -

For purposes of this Act, the publishers shall be
deemed to represent the authors of articles and
other writings published without the names of the
authors or under pseudonyms, unless the contrary
appears, or the pseudonyms or adopted name
leaves no doubt as to the author's identity, or if the
author of the anonymous works discloses his
identity.
Extent of Protection: Derivative Works
Section 173. Derivative Works. - 173.1. The following

derivative works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations,

abridgments, arrangements, and other alterations of
literary or artistic works; and
(b) Collections of literary, scholarly or artistic

works, and compilations of data and other materials
which are original by reason of the selection or
coordination or arrangement of their contents.
DERIVATIVE WORKS
 Dramatizations,
translations,
arrangements
and other
alterations of
literary or
artistic works
DERIVATIVE WORKS
 Collections of
literary, scholarly or
artistic works, and
compilations of data
which are original by
reason of selection
or coordination or
arrangement of their
contents
Extent of Protection: Derivative Works
173.2. The works referred to in paragraphs (a) and (b) of

Subsection 173.1 shall be protected as new works:
Provided however, That such new work shall not
affect the force of any subsisting copyright upon the
original works employed or any part thereof, or
be construed to imply any right to such use of the original
works, or
to secure or extend copyright in such original works.
Extent of Protection: Economic Rights
1. Reproduction of the work or substantial portion of the

work;
2. Dramatization, translation, adaptation, abridgment,
arrangement;
3. The first public distribution of the original and each
copy of the work;
4. Rental 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,;
5. Public display of the original or a copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work. (Sec.
177, IPC)
DURATION OF ECONOMIC RIGHTS
WORK TERM OF PROTECTION

Literary and Artistic Works Life of the author + 50 years after his
Derivative Works death
Joint Authorship Life of the last surviving author + 50

years after his death
Anonymous or Pseudonymous Works 50 years from date it is first lawfully
published
If before expiration of period, identity is
revealed or no longer in doubt, the rule
on Literary and Joint Authorship applies
Work of Applied Art 25 years from date of making
Photographic works If published – 50 years from publication
Audiovisual works Unpublished – 50 years from making
Performances not incorporated in 50 years from end of the year in which
recordings performance took place
Sound recordings and performances 50 years from end of the year in which
 For the term of protection subsequent to

death of author, when do you start count?
 From date of
death or
publication
 BUT... Term
begins from
January 1 of the
year following
the event that
gave rise to them
Lyman Frank Baum
(May 15, 1856 – May 6, 1919)
(August 25, 1939) (February 14, 2013)

MORAL RIGHTS
Allows the author to take certain

actions to preserve the personal
link between himself and the work.
MORAL RIGHTS
1. Right of Attribution [Paternity Right]

2. Alteration and Non-Publication Right
3. Right to Preservation of Integrity
4. Right against False Attribution
DURATION OF MORAL RIGHTS
 “During the lifetime of the author and in

perpetuity after his death” - Paternity
Right/Right of Attribution
 Coterminous with Economic Rights -

Alteration and Non-Publication Right; Right
to Preservation of Integrity; and Right
against False Attribution
EXPIRATION OF COPYRIGHT
 Transfers to the PUBLIC DOMAIN

 Examples:
Copyright Infringement
Elements:
 Ownership of a valid copyright

◼Proof of Ownership: Sec. 218 – Affidavit Evidence
 Exercise of any of the exclusive economic rights in
Section 177
 without the consent of the copyright owner
◼UNLESS: FAIR USE
1. Is there an unauthorized use of a valid

copyright? If yes…
2. Is the use fair? If not…
COPYRIGHT INFRINGEMENT.
1. Is there an unauthorized use of a valid copyright? If

yes…
2. Is the use fair? If not…
COPYRIGHT INFRINGEMENT.
Meaning,…
NOT ALL ACTS OF COPYING IS INFRINGEMENT!

Copyright and Public Domain [Exceptions]
Works not Protected:

a. Duration of Copyright – Expired?
b. Unprotected Subject Matter
o Ideas, procedure, system, method of operation,
concept, principle, discovery and mere data (Sec. 175)
o News of the day & mere items of press information
(Sec. 175)
o …even if they are expressed, explained, illustrated
or embodied in a work
o Official text (and official translations thereof) of a
legislative, administrative or legal nature (Sec. 175)
o Works of the Government (Sec. 176)
Copyright Infringement and Fair Use
[Limitations]
Limitations
▪ The Fair Use Exception – fair use for criticism,
comment, news reporting, teaching [C-C-N-T]

including limited [multiple] number of copies for
classroom use, scholarship, research and similar
purposes [C-S-R] . (Sec. 185)
Copyright Infringement and Fair Use
Factors to be considered in determining fair use (Sec.

185)
1. Purpose & character of the use
2. Nature of the copyrighted work
3. Amount & substantiality of the portion used in
relation to the copyrighted work as a whole; &
4. Effect of the use upon the potential market for or
value of the copyrighted work.
 Who is liable for infringement?

 Directly commits an infringement;
 Benefits from the infringing activity of another
person who commits an infringement if the
person benefiting has been given notice of the
infringing activity and has the right and ability
to control the activities of the other person;
 With knowledge of infringing activity, induces,
causes or materially contributes to the
infringing conduct of another
Q: is hacking a copyright infringement?

Section 216. Remedies for Infringement. - 216.1. Any person

infringing a right protected under this law shall be liable:
(a) To an injunction restraining such infringement. The court

may also order the defendant to desist from an infringement,
among others, to prevent the entry into the channels of commerce
of imported goods that involve an infringement, immediately after
customs clearance of such goods.
(b) Pay to the copyright proprietor or his assigns or heirs such

actual damages, including legal costs and other expenses, as he
may have incurred due to the infringement as well as the profits
the infringer may have made due to such infringement, and in
proving profits the plaintiff shall be required to prove sales only
and the defendant shall be required to prove every element of cost
which he claims, or, in lieu of actual damages and profits, such
damages which to the court shall appear to be just and shall not be
regarded as penalty.
Section 216. Remedies for Infringement. - 216.1. Any person infringing

a right protected under this law shall be liable:
(c) Deliver under oath, for impounding during the pendency of the
action, upon such terms and conditions as the court may prescribe,
sales invoices and other documents evidencing sales, all articles and
their packaging alleged to infringe a copyright...
(d) Deliver under oath for destruction without any compensation
all infringing copies or devices, as well as all plates, molds, or other
means for making such infringing copies as the court may order.
(e) Such other terms and conditions, including the payment of
moral and exemplary damages,… and the destruction of infringing
copies of the work even in the event of acquittal in a criminal case.
216.2. In an infringement action, the court shall also have the power
to order the seizure and impounding of any article which may serve as
evidence in the court proceedings.
Application: Case Law
ABS-CBN v. Gozon
G.R. No. 195956, March 11, 2015
J. Leonen
BENGZON
NEGRE
UNTALAN
ABS-CBN v. Gozon
First Issue
Is the video footage subject of copyright protection? Is a

fact copyrightable?
“Section 175. Unprotected Subject Matter. -

Notwithstanding the provisions of Sections 172 and
173, no protection shall extend, under this law, to any
idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they
are expressed, explained, illustrated or embodied in a
work; news of the day and other miscellaneous facts
having the character of mere items of press information;
or any official text of a legislative, administrative or
legal nature, as well as any official translation thereof.”
Is a fact copyrightable?
Television news footage is an expression of the news
“News or the event itself is not copyrightable.

However, an event can be captured and presented
in a specific medium. As recognized by this court
in Joaquin, television "involves a whole spectrum of
visuals and effects, video and audio." News
coverage in television involves framing shots, using
images, graphics, and sound effects. It involves
creative process and originality. Television news
footage is an expression of the news.” [ABS-CBN v.
Gozon]
“The idea/expression dichotomy is a complex matter if
one is trying to determine whether a certain material is
a copy of another. This dichotomy would be more
relevant in determining, for instance, whether a stage
play was an infringement of an author's book involving
the same characters and setting. In this case, however,
respondents admitted that the material under review —
which is the subject of the controversy — is an exact
copy of the original. Respondents did not subject ABS-
CBN's footage to any editing of their own. The news
footage did not undergo any transformation where there
is a need to track elements of the original.”
The Second Issue
 Is good faith (lack of knowledge of, OR intent to

commit infringement), available as defense in
copyright infringement cases?
 Volition vs. Criminal Intent
 5 seconds of 2 minutes and 40 seconds?
lack of knowledge as a defense
SC:
“Habana and Columbia Pictures did not require

knowledge of the infringement to constitute a
violation of the copyright. One does not need to
know that he or she is copying a work without
consent to violate copyright law.”
Volition vs. Criminal Intent
“Volition, or intent to commit the act, is different

from criminal intent. Volition or voluntariness refers
to knowledge of the act being done. On the other
hand, criminal intent — which is different from
motive, or the moving power for the commission of
the crime — refers to the state of mind beyond
voluntariness. It is this intent that is being
punished by crimes mala in se.”
SC:
“The Intellectual Property Code requires strict

liability for copyright infringement whether for a
civil action or a criminal prosecution; it does not
require mens rea or culpa: xxx “
Nature of Fair Use
“GMA-7's rebroadcast of ABS-CBN's news footage

without the latter's consent is not an issue. The mere
act of rebroadcasting without authority from the
owner of the broadcast gives rise to the probability
that a crime was committed under the Intellectual
Property Code.”
 DidSC create a presumption here?

 What exactly is the nature of fair use as a defense?
Revisiting Fair Use in the PH
SECTION 184. Limitations on Copyright. - 184.1.

Notwithstanding the provisions of Chapter V, the
following acts shall not constitute infringement of
copyright:
 (a) The recitation or performance of a work, once it
has been lawfully made accessible to the public, if

done privately and free of charge or if made strictly
for a charitable or religious institution or society;
 x x x
 (k) Any use made of a work for the purpose of any
judicial proceedings or for the giving of professional

advice by a legal practitioner.
Revisiting Fair Use in the PH
 Section 185 of the IP Code
185.1. The fair use of a copyrighted work for

criticism, comment, news reporting, teaching
including multiple copies for classroom use,
scholarship, research, and similar purposes is not
an infringement of copyright…
Last Issue: May Corporate Directors/Officers as such be
held Liable for Copyright Infringement?
Republic Gas v. Petron Corporation (GR 194062, June 11, 2013)
“Petitioners, being corporate officers and/or directors, through whose

act, default or omission the corporation commits a crime, may
themselves be individually held answerable for the crime. Veritably,
the CA appropriately pointed out that petitioners, being in direct
control and supervision in the management and conduct of the affairs
of the corporation, must have known or are aware that the
corporation is engaged in the act of refilling LPG cylinders bearing
the marks of the respondents without authority or consent from the
latter which, under the circumstances, could probably constitute the
crimes of trademark infringement and unfair competition. The
existence of the corporate entity does not shield from prosecution the
corporate agent who knowingly and intentionally caused the
corporation to commit a crime.”
- ABS-CBN v. Gozon:
Corporate directors are liable for copyright

infringement only if they actively participated in its
commission
- SC:
“Mere membership in the Board or being President

per se does not mean knowledge, approval, and
participation in the act alleged as criminal. There
must be a showing of active participation, not
simply a constructive one.”
 Difference in the treatment of Corporate directors in
the ABS-CBN and Republic Gas cases:
 Natureof the corporate directors’ roles in the

business operations
◼Direct Control and Supervision = Must Have
Known (Constructive Knowledge)
II. In re Justice Del Castillo
On April 28, 2010, the SC issued a decision which

dismissed a petition filed by the Malaya Lolas
Organization in the case of Vinuya vs Romulo. Atty.
Herminio Harry Roque Jr., counsel for Vinuya et al,
questioned the said decision. He raised, among others,
that the ponente in said case, Justice Mariano del
Castillo, plagiarized three books when the honorable
Justice “twisted the true intents” of these books to
support the assailed decision. As such, Justice del
Castillo is guilty of plagiarism, misconduct, and at
least inexcusable negligence.
In re Del Castillo
 No Plagiarism
 According to Black’s Law Dictionary: Plagiarism
is the “deliberate and knowing presentation of
another person’s original ideas or creative
expressions as one’s own.”
 This cannot be the case here because as proved by
evidence, in the original drafts of the assailed
decision, there was attribution to the three
authors but due to errors made by Justice del
Castillo’s researcher, the attributions were
inadvertently deleted. There is therefore no intent
by Justice del Castillo to take these foreign works
as his own.
In re Del Castillo: the relevant issues
 Is plagiarism the same as copyright infringement?
 May plagiarism be copyright infringement at the

same time?
 Can there be plagiarism without copyright
infringement?
 May copyright infringement and plagiarism be

committed at the same time?
 Can there be copyright infringement without
plagiarism?
CASE LAW UPDATES
U.E. v. Masangkay
Rentmeester v. Nike [2018]
G.R. No. 226727
Later, Nike commissioned

a similarly-posed photo,
Rentmeester is a but used Chicago’s skyline
professional as background, because
photographer. He took Jordan was then playing
several photos of MJ for for the NBA’s Chicago
a sports magazine. Bulls.
Rentmeester sued Nike

for copyright Nike used that photo to
infringement for market “Air Jordan”
allegedly sneakers, and to
misappropriating a photo eventually create the
he took of Michael Jumpman logo.
Jordan in 1984.
ISSUE 1:
Is Rentmeester’s photograph of a grand-jete

basketball pose copyright-protected? Or is it a
mere idea?
ISSUE 2:
Assuming it is, did Nike infringe on
Rentmeester’s copyright of the photograph?
Copyright Infringement?
U.E. v. Masangkay
Rentmeester v. Nike
G.R. No. 226727
U.E. v. Masangkay
Rentmeester v. Nike
G.R. No. 226727
Court considered
these:
• Grassy knoll v. Chicago
RULING: skyline
• Right knee is bent,
forward jump v.
The Court ruled straight knees, upward
that Rentmeester movement
can copyright the • Right arm is bent v.
right arm is straight
specific pose but and pointed downward
not any pose.
Naruto, et. al. v. Slater
No. 16-15469 (9th Cir. 2018)
Facts:
▪ Naruto was a 7 y.o. Crested Macaque that lived in
Sulawesi, Indonesia
▪ In 2011 wildlife photographer, Slater, looked for a
suitable area in the jungle, arranged his camera and
left it unattended; Naruto took several photograph of
himself (Monkey Selfies)
No. 16-15469 (9th Cir. 2018)
Facts:
▪ Slater and Wildlife Personalities, Ltd. published the
Monkey Selfies through Blurb, Inc. website in 2014.
▪ The book identifies Slater and Wildlife as the copyright
owners of the Monkey Selfies
▪ In 2015, PETA filed a complaint for copyright
infringement and assignment against Slater, et.al.
▪ Federal circuit court dismissed the complaint; PETA
appealed. Meantime, parties reached settlement.

No. 16-15469 (9th Cir. 2018)
Issues:
Whether an animal can own copyright?
Whether Naruto has Statutory Standing under the

Copyright Act?

No. 16-15469 (9th Cir. 2018)
Ruling:
▪ “If Congress and the President intended to take the

extraordinary step of authorizing animals as well as
people and legal entities to sue, they could, and should,
have said so plainly.”
▪ The Copyright Act does not expressly authorize
animals to file copyright infringement suits under the
statute.
▪ Naruto lacks statutory standing to sue under the
Copyright Act
Star Athletica, L.L.C. v. Varsity Brands, Inc.
580 U. S. ____ (2017)
Facts:
▪ Varsity Brands, Inc.:
o Designs and manufactures clothing and accessories
for use in various athletic activities, including
cheerleading.
o Received copyright registration for the 2D artwork of
the designs which were very similar to the ones that
Star Athletica were advertising
o Sued Star Athletica

580 U. S. ____ (2017)

580 U. S. ____ (2017)
Facts:
▪ Star Athletica:
o The designs were not copyrightable
o “Useful articles” cannot be copyrighted
o Designs cannot be separated from the uniforms thus
cannot be copyrighted
▪ Varsity Brands:
o Designs were separable and non-functional thus
copyrightable.

580 U. S. ____ (2017)
Issue:
Whether the designs are copyrightable?

580 U. S. ____ (2017)
Ruling:
▪ A feature of a useful article is copyrightable if:

1. It can be perceived as a two- or three-dimensional
artwork that is separable from the useful article;
and
2. It would be a protectable pictorial, graphical, or
sculptural work on its own.

580 U. S. ____ (2017)

580 U. S. ____ (2017)
Ruling:
▪ The decoration designs of the cheerleading uniforms
satisfy both requirements.
▪ The fact that the designs on their own still retained
the outline of the cheerleading uniforms did not
prevent them from being copyrightable
▪ Artwork designed to fit a particular space or object
does not replicate that space or object when applied to
a different medium

Google v. Oracle
593 U. S. ____ (2021)
Oracle America, Inc., owns a copyright in Java SE, a computer

platform that uses the popular Java computer programming
language. In 2005, Google acquired Android and sought to build a
new software platform for mobile devices. To allow the millions of
programmers familiar with the Java programming language to work
with its new Android platform, Google copied roughly 11,500 lines
of code from the Java SE program. The copied lines are part of a
tool called an Application Programming Interface (API). An API
allows programmers to call upon prewritten computing tasks for use
in their own programs.

Google v. Oracle
593 U. S. ____ (2021)
SCOTUS: Google’s copying of the Java SE API, which included

only those lines of code that were needed to allow programmers to
put their accrued talents to work in a new and transformative
program, was a fair use of that material as a matter of law.
The doctrine of “fair use” is flexible and takes account of changes
in technology. Computer programs differ to some extent from many
other copyrightable works because computer programs always serve
a functional purpose. Because of these differences, fair use has an
important role to play for computer programs by providing a
context-based check that keeps the copyright monopoly afforded to
computer programs within its lawful bounds.
Recap
 Extent of protection: Original + Creative Works

 Economic Rights
 Moral Rights
 Exceptions:
 Public Domain;
◼Section 175 – Unprotected Subject Matters
◼Expired Term
 Limitations:
 Fair Use as a matter right

◼Section 184 and Section 185
 Plagiarism is an ethical issue
BENGZON
END OF SESSION 4
NEGRE
UNTALAN
THANK YOU !☺
FERDINAND M. NEGRE

Intellectual Property Law by Prof. Ferdinand Negre

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BENGZON

INTELLECTUAL PROPERTY LAW

FERDINAND M. NEGRE 4 July 2021

 Relevant and Recent Jurisprudence

(a) What is the doctrine of fair use? (2%)

(b) Should X Pharmaceuticals, Inc.'s patent application for Disilopis

➢ IP may make or unmake you as a bar passer, as a

BAR QUESTIONS on IP (2007-2018)

 Only 11.43% (684 out of 5,984) passed

 Difference between 10th and 11th place: 00.15

The next hours can make a big difference in

 the legal rights which result from intellectual

Article 14, Section 13, 1987 Constitution

“The State shall protect and secure the exclusive

Article 14, Section 13, 1987 Constitution

“The State shall protect and secure the exclusive rights

 Limited in time, scope and space

 exceptions and limitations

 Exclusive rights to do or prohibit

 Copyright – Programs: OS and Apps

 Trademark – word mark or logo

 Industrial Design – Design and

 Intellectual Property Code, R.A. 8293, January 1, 1998

 R.A. 9502, ”Universally Accessible Cheaper and

 R.A. 10372 on Copyrights (2013)

 Intellectual Property Code, R.A. 8293, January 1, 1998

 R.A. 9502, "Universally Accessible Cheaper and

 Intellectual Property Code, R.A. 8293, January 1, 1998

 R.A. 10372 on Copyrights (2013)

Section 2. Declaration of State Policy. - The State

SECTION 6. The use of property bears a social

“…intellectual property protection is merely a means

“Trademark, copyright and patents are different intellectual

1. Pearl & Dean is engaged in the manufacture of advertising

PATENT COPYRIGHT TRADEMARK

Subject Invention: Literary or artistic Any visible sign

Office where Bureau of Patents, Not required; Bureau of

 Berne Convention (WIPO)

 Patent Cooperation Treaty (WIPO)

 Madrid Protocol (WIPO)

 TRIPs Agreement (WTO)

 The Marrakesh Treaty to Facilitate Access to

Published Works for Persons who are Blind, Visually

“Intellectual and industrial property rights cases

The Intellectual Property Code of the Philippines

The WTO is a common institutional framework for

Among those annexed is the Agreement on Trade-

To fulfill these objectives, the members have agreed

A major proportion of international trade depends on

Berne Convention for the Protection of Literary and

 Minimum Standards of Protection

Paris Convention on the Protection of Industrial

Trade-Related aspects of Intellectual Property

 Minimum Standards: Berne-Plus and Paris-Plus

Patent Cooperation Treaty or PCT (WIPO)

 brings the world within reach;

Madrid Protocol (WIPO)

 The Madrid System for the International

 Includesmaintenance, renewals, amendments and

Designated Designated Designated

□ Application through National or Regional IP

□ Substantive examination by Office of the

 In 2012, the Philippines acceded to the Madrid

 The IPAP petitioned the SC to declare the