Intellectual Property

San Beda College of Law
Laws on Intellectual Property
the three-dimensional disposition prepared for property right is otherwise entitled by the
an integrated circuit intended for manufacture IPC (Sec. 3).
(Sec. 112 [3], R.A. No. 8293, as amended).
Note: If the foreign corporation not doing
Note: For a layout-design to be entitled to business in the Philippines is suing as a party
protection it must be original in the sense that of a treaty to which the Philippines is a
they are the result of their creators’ own signatory, the fact that it is suing under Sec 3,
intellectual effort and are not commonplace RA 8293 need not be alleged anymore and the
among creators of layout-designs court may take judicial notice of such fact as it
(topographies) and manufacturers of is embodied in and supplied by the Paris
integrated circuits at the time of their creation. Convention which forms part of the law of the
land, provided that the party suing
Technology Transfer Arrangements substantially complied with the requirements
Contracts or agreements involving the transfer of the law (Puma Sportschufabriken Rudolf
of systematic knowledge for the manufacture Dassler,K.G. vs. IAC, GR 75067, Feb. 26,
of a product, the application of a process, or 1988).
rendering of a service including management
contracts; and the transfer, assignment or  In another case, Leviton Industries, Inc.
licensing of all forms of intellectual property vs. Salvador, (GR No. 40163, June 19,
rights, including licensing of computer software 1982), the Court held that failure to allege
except computer software developed for mass reciprocity is fatal to foreign corporation’s
market (Sec. 4.2, IPC). cause it being shown that it failed to
comply with the requirements of the law.
Undisclosed Information
Information which: Principle of Reverse Reciprocity
1. is a secret in the sense that it is not, as a Any condition, restriction, limitation,
body or in the precise configuration and diminution, requirement, penalty or any similar
assembly of components, generally burden imposed by the law of a foreign
known among or readily accessible to country on a Philippine national seeking
persons within the circles that normally protection of intellectual property rights in that
deal with the kind of information in country, shall reciprocally be enforceable upon
question; nationals of said country within Philippine
2. has commercial value because it is jurisdiction (Sec. 231, IPC).
secret; and
3. has been subject to reasonable steps National Treatment Principle
under the circumstances, by the person The Philippines, upon becoming a member of
lawfully in control of the information, to the WTO, has adhered to the Trade-Related
keep it secret (Art. 39, TRIPS Aspects of Intellectual Property Rights
Agreement). (TRIPS), which provides that protection
afforded to the member-state (with respect to
INTERNATIONAL LAW RELATED intellectual property) must be extended to the
PROVISIONS nationals of other member-states.
Persons Entitled to the Benefits of the IPC Most-favored Nation Principle

(Principle of Reciprocity) Whatever favor, allowance, consideration,
Any person who is a national or who is privilege or immunity a member-state grants
domiciled or has a real and effective industrial the nationals of another country is
establishment in a country which: “immediately and unconditionally” accorded to
1. is a party to any convention, treaty, or the nationals of other member-states (Art. 4,
agreement relating to intellectual property TRIPS).
rights or the repression of unfair
competition to which the Philippines is also JURISDICTION OVER DISPUTES
a party; or
2. Extends Reciprocal rights to nationals A. Original Jurisdiction
of the Philippines by law, shall be entitled 1. Director General
to benefits to the extent necessary to give Over disputes relating to the terms of
effect to any provision of such convention, a license involving the author’s right to
treaty, or reciprocal law, in addition to the public performance or other
rights to which any owner of an intellectual communication of his work (Sec.
7.1[c], IPC).
2
2010 Centralized Bar Operations
2. Bureau of Legal Affairs communication of his work (Sec.

a. Opposition to 7.1[c]).
applications for registration of
marks; Inter Parties
Civil Proceedings
b. Cancellation of Proceedings
trademarks; Kinds
c. Cancellation of 1. Patent 1. Copyright, Patent,
patent, utility models, and a. Petition to Trademark
cancel an Action for
industrial designs;
invention, patent, infringement
d. Petitions for utility model
compulsory licensing; registration,
e. Administrative industrial design
complaints for violation of laws registration, or any
involving intellectual property claim or parts of a
rights where the total damages claim.
claimed are not less than b. Petition for
P200,000. The Director of Legal compulsory
licensing or a
Affairs has the power to punish
license to exploit a
contempt (Sec. 10, Ibid.) patented
3. Documentation, Information invention.
and Technology Transfer Bureau 2. Trademark 2. Trademark
Over disputes involving technology a. Opposition Action for unfair
transfer payments (Sec. 11.8). against the competition
4. Regular Courts (Sec. 225) registration of a
mark published for
B. Appellate Jurisdiction opposition.
b. Petition to
1. Director General
cancel the
Over all decision rendered by the: registration of a
a. Director of Legal mark.
Affairs; Nature of Proceedings
b. Director of Patents; Administrative Judicial
c. Director of Jurisdiction
Trademarks; and IPO (Bureau of Legal Regular courts
d. Director of the Affairs)
Documentation, Information and Quantum of Evidence
Technology Transfer (Sec. 7.1[b]). Substantial evidence Preponderance of
2. Court of Appeals evidence
Over decisions of the Director General
in the exercise of his appellate COPYRIGHT
jurisdiction over the decisions of the:
a. Director of Legal Principles
Affairs, 1. Copyright is that system of legal
b. Director of Patents, protection an author enjoys of the form of
c. Director of expression of ideas (Intellectual Property
Trademarks (Sec. 7.1[b]). Law, Comments and Annotations, Aquino,
3. Secretary of Trade and 2003).
Industry 2. Relates to artistic creations, such as
a. Over decisions of books, music, paintings, and sculptures,
the Director General in the films and technology-based works as well
exercise of his appellate as to the main act which, in respect of
jurisdiction over the decisions of literary and artistic creations, may be
the Director of the Documentation, made only by the author or his
Information and Technology authorization (Understanding Copyright
Transfer (Sec. 7.1[b]). and Related Rights, World Intellectual
b. Over decisions of Property Organization).
the Director General in the 3. Works are protected by the sole fact of
exercise of his original jurisdiction their creation, irrespective of their mode or
relating to terms of license form of expression, as well as their
involving the author’s right to content, quality or purpose (Sec. 172.2).
public performance or other
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4. Copyright is not a right to do anything (i) There must be "fixation". To be

but to stop others from doing something; it "fixed", a work must be embodied in a
is therefore a negative right (Copyright medium sufficiently permanent or
Under the Intellectual Property Code, stable to permit it to be perceived,
Amador, V., 1998ed). reproduced, or otherwise
5. Protection extends only to the communicated for a period of more
expression of the idea, not to the idea than transitory duration.
itself or to any procedure, system, method (ii) Strictly speaking, there is no work for
or operation, concept or principle, copyright purpose, unless there is
discovery, or mere data (Sec. 175). something tangible.
6. The copyright is distinct from the (iii) It is fixation that defines the time
property in the material object subject to it from when copyright subsists. Before
(Sec. 181). the time of fixation there can be no
7. Copyright, in the strict sense of the term, infringement.
is purely a statutory right. Being a mere
statutory grant, the rights are limited to Creator To Whom it Belongs
what the statute confers. It may be Author of the work, his
obtained and enjoyed only with respect to Single Creator
heirs or assigns.
the subjects and by the persons, and on If work consists of
terms and conditions specified in the UNIDENTIFIABLE
statute. Accordingly, it can cover only the parts: co-authors jointly
works falling within the statutory as co-owners, unless
enumeration or description (Pearl & Dean there is agreement to
Joint Creator the contrary.
(Phil.) vs. Shoemart, GR No. 148222,
If work consists of
August 15, 2003). IDENTIFIABLE parts:
author of each part
Primary Purpose of Copyright owns the part that he
Not to reward the labor of authors, but to has created.
promote the progress of science and useful If the creation is PART
arts (Copyright Under the Intellectual Property of his regular duties:
Code, Ibid). employer, unless there
Employee’s Creation
is agreement to the
Requisites for the Creation of a contrary
If it is NOT: employee
Copyrightable Work
Work itself: person
1. Originality commissioning
 It does not mean novelty or ingenuity; Copyright: creator,
neither uniqueness nor creativity. It Commissioned Work
unless there is a
simply means that the work "owes its written stipulation to
origin to the author.” the contrary.
 Constituents of originality: For exhibition
 The work is an independent purposes: producer
creation of the author; For all other purposes:
Cinematographic
 It must NOT be copied; and producer, author of the
Works
scenario, composer,
 It must involve some intellectual film director, author of
effort. the work
2. Expression Publishers are deemed
representative of the
author, unless:
i. the contrary
appears;
Anonymous and
ii. pseudonyms or
pseudonymous
adopted
works
name leaves no
doubt as to the
author’s identity; or
author discloses his
identity.
Collective Works Contributor is deemed
to have waived his
right, unless he
expressly reserves it
4
(Sec. 196). by the latter under his

Writer. own name and that
interdependent parts of
However, the court contributions of natural
the unitary whole.
may authorize their persons will NOT be
publication or identified
Letters dissemination if the Each author shall Joint authors shall be
public good or the enjoy copyright to his co-owners. Co-
interest of justice so own contribution ownership shall apply
requires (Art.723, New Unless the contributor
Joint authors shall be
Civil Code). expressly reserves his
entitled both to be
right, it is the putative
acknowledged as
Duration of Copyright (Sec. 213) author to whom the
authors of the work
work will be attributed
Type of Work Duration
Lifetime of the creator Works Protected:
Single Creation and for 50 years after A. Original Works (BO2P3-CL2AIM-D2W)
his death 1. Book
Lifetime of the last s, pamphlets, articles and other
surviving co-creator writings
Joint Creation
and for 50 years after
2. Perio
his death
dicals and newspapers
50 years after the date
of their first publication; Note: A pure news report no longer
except where, before finds protection under the new law,
the expiration of said BUT a column or published comment
period, the author’s will. When newspapers and
Anonymous or a
pseudonymous work
identity is revealed or periodicals include works enjoying
is no longer in doubt, independent copyrights, the works so
the 1st two mentioned included continue enjoying the rights
rules shall apply; or if for duration proper to them.
unpublished, 50 years
3. Lectu
from their making
Work of applied art, res, sermons, addresses, dissertations
an artistic creation prepared for oral delivery, whether or
with utilitarian not reduced in writing or other material
functions or form
incorporated in a 25 years from the date 4. Letter
useful article, of making s
whether made by 5. Dram
hand or produced on atic or dramatico-musical
an industrial scale
compositions, choreographic works or
(Sec. 171.10).
entertainment in dumb shows
Photographic work,
50 years from the 6. Music
audiovisual work
publication of the work, al compositions, with or without words;
produced by
or if unpublished, from 7. Work
photography or
making the same
analogous processes s of drawing, painting, architecture,
Newspaper article
Lifetime of the author sculpture, engraving, lithography or
and 50 years thereafter other works of art; models or designs
for works of art;
Note: The term of protection shall be counted 8. Origin
from the 1st day of January of the year al ornamental designs or models for
following the death or of last publication (Sec. articles of manufacture, whether or not
214). registrable as an industrial design, and
other works of applied art;
Collective Work Joint Work 9. Illustr
Elements remain Separate elements ations, maps, plans, sketches, charts
unintegrated and merge into a unified and three dimensional works relative
disparate whole to geography, topography,
Work created by 2 or Work prepared by 2 or
architecture or science;
more persons at the more authors with the
initiative and under intention that their 10. Drawi
direction of another contributions be ngs or plastic works of a scientific or
with the understanding merged into technical character;
that it will be disclosed inseparable or
5
11. Photo 3. Any official text of a legislative,

graphic works including works administrative or legal nature, as well as
produced by a process analogous to any official translation thereof (Sec. 175);
photography; lantern slides;
12. Audio 4. Any work of the Government of the
visual works and cinematographic Philippines;
works and works produced by a
process analogous to cinematography General Rule: Condition Imposed prior
or any process for making audiovisual approval of then government agency or
recordings; office wherein the work is created shall be
13. Pictor necessary for exploitation of such work for
ial illustrations and advertisements; profit. Such agency or office may, among
14. Comp other things, impose as a condition the
uter programs; and payment of royalties.
15. Other
literary, scholarly, scientific and artistic Exception: No prior approval or
works (Sec. 172). conditions shall be required for the use of
any purpose of statutes, rules and
B. Derivative Works regulations, and speeches, lectures,
1. Dramatizations, translations, sermons, addresses, and dissertations,
adaptations, abridgments, pronounced, read or rendered in courts of
arrangements, and other alterations of justice, before administrative agencies, in
literary or artistic works; and deliberative assemblies and in meetings of
2. Collections of literary, scholarly or public character (Sec. 176).
artistic works, and compilations of
data and other materials which are 5. Pleadings;
original by reason of the selection or
coordination or arrangement of their 6. Decisions of courts and tribunals. They
contents (Sec. 173t). may therefore be freely used or quoted.
Note: Derivative works shall be protected Note: This pertains to the "original
as new works. Provided however, that decisions" not the SCRA published
such new works shall not: volumes since these are protected under
a. affect the force
derivative
of anyworks
subsisting
under Sec. 173.1 (b).
copyright upon the original works
employed or any part thereof Rights Conferred by Copyright (CMD)
b. be construed
1. Copyright
to implyorany
Economic
right to rights
such (Sec. 177);
use of the original works, or to secure 2. Moral rights (Sec. 193); and
or extend copyright in such original 3. Right to participate in the gross proceeds
work (Sec. 173.2) of the sale or lease of the original work or
droit de suite (Sec. 200).
Works Not Protected: (PIN-DOG)
1. 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 (Sec. 175);
Note: Format or mechanics of a television

show are not copyrightable. The law in
enumerating what are subject to copyright
refers to finished works and not to
concepts (Joaquin Jr. v. Drilon, GR
108946, January 28, 1999).
2. News of the day and other miscellaneous

facts having the character of mere items of
press information (Sec. 175);
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A. Copyright or Economic Rights Term/ Duration

Exclusive right to (a) carry out, (b) Lifetime of the author and 50 years after
authorize or (c) prevent the following acts his death. And is NOT assignable or
(CAP): subject to license (Sec. 198).
1. Reproduction of the work or
substantial portion of the work; These rights may be waived by:
2. Dramatization, translation, adaptation, 1. by a written instrument (Sec. 195); or
abridgment, arrangement or other 2. by contribution to a collective work
transformation of the work; unless expressly reserved (Sec. 196).
3. First public distribution of the original
and each copy of the work; C. Droit de Suit
4. Rental of the original or a copy of an Inalienable right to receive to the extent of
audiovisual or cinematographic work; 5% of the gross proceeds of the sale or
5. Public display of the original or a copy lease of a work (Sec. 200).
of the work;
6. Public performance of the work; and Requisites:
7. Other communication to the public of 1. Sale or lease of the work;
the work (Sec. 177); 2. Original work;
8. Assignment of the copyright and/ or 3. Painting or sculpture, or manuscript;
the material object in whole or in part and
4. Subsequent to the first disposition by
Note: Economic rights allows the owner to the author
derive financial reward from the use of his
works by others (WIPO, Understanding Term/ Duration:
Copyright and Related Rights, p.9). Lifetime of the author and for 50 years
after his death.
B. Moral Rights
1. Right of Paternity – To require that Works NOT covered:
the authorship of the works be 1. Prints;
attributed to him, in a prominent way 2. Etchings;
on the copies, and with the public use 3. Engravings;
of the work; 4. Works of applied art; and
2. To make any alterations of his work 5. Similar works wherein the author
prior to, or to withhold it from primarily derives gain from the
publication; proceeds of reproductions (Sec. 201).
3. Right of Integrity – To object to any
distortion, mutilation or other Transfer or Assignment of Copyright
modification of, or other derogatory The transfer or assignment of the copyright
action in relation to, his work which shall not itself constitute a transfer of the
would be prejudicial to his honor or material object. A transfer or assignment of the
reputation; and copyright of the sole copy or of one or several
4. To restrain the use of his name with copies of the work shall not imply transfer or
respect to any work not of his own assignment of copyright (Sec 181).
creation or in a distorted version of his
work (Sec. 193). First Sale Doctrine
a. These rights are distinct from After the first sale of the lawfully made copy of
economic rights and remain with the copyrighted work, anyone who is the
the author even after he has owner of that copy can sell or dispose of that
transferred or assigned to another copy in any way without any liability for
“other rights of copyright” (WIPO, copyright infringement. The first sale of an
215). authorized copy of the work exhausts the
b. Moral rights allow the author author’s right to control distribution of copies.
to take certain actions to preserve
the personal link between himself Limitations to the Rights of Copyright
and the work (WIPO, (GF-PARRI)
Understanding Copyright and 1. General limitations (Sec. 184);
Related Rights, p.9). 2. Fair use (Sec. 185);
3. In the case of a work of architecture, the
right to control the reconstruction or
7
rehabilitation in the same style as the its work or facilities, (iii) for use in its own
original of the building (Sec. 186); broadcast;
4. Private reproduction of published work in a 8. Use made of a work by or under the
single copy by a natural person for direction or control of the government for
research and private study (Sec. 187); public interest compatible with fair use;
5. Reprographic reproduction in a single 9. Public performance or the communication
copy by non-profit libraries, under certain to the public of a work in a place where no
circumstances (Sec. 188); admission fee is charged by a club on
6. Reproduction, under certain institution for charitable or educational
circumstances, of a computer program in purpose only and the aim is not profit-
one back-up copy by the lawful owner of making;
the program (Sec. 189); 10. Public display of the original or a copy of
7. Importation for personal purposes under the work not made by means of a film,
certain conditions (Sec. 190). slide, television, image or otherwise on
screen or by means of any other device or
General Limitations (R4QP2I-MU2) process either the work has been
Acts that do not infringe copyright: published, sold, given away, or transferred
1. Recitation or performance of a work: (i) to another person by the author or his
made accessible to the public, (ii) privately successor in title; and
done, (iii) free of charge, (iv) strictly for a 11. Use made of a work for the purpose of any
charitable or religious institution; judicial proceedings or for the giving of
2. Making of quotations from a published professional advice by a legal practitioner
work: (i) compatible with fair use, (ii) extent (Sec. 184).
is justified by the purpose, (iii) source and
name of the author, appearing on work, Fair Use
must be mentioned; A privilege, of persons other than the owner of
3. Reproduction or communication to the the copyright, to use the copyrighted material
public by mass media of articles on current in a reasonable manner without his consent,
political, social, economic, scientific or notwithstanding the monopoly granted to the
religious topic, lectures, addresses and owner by the copyright.
other works, delivered in public: (i) for
information purposes, (ii) not expressly It does not constitute infringement.
reserved, and (iii) source is already
indicated; Examples:
4. Reproduction and communication to the 1. Criticizing, commenting, and news
public of literary, scientific or artistic works reporting;
as part of reports of current events by 2. Using for instructional purposes, including
means of photography, cinematography or producing multiple copies for classroom
broadcasting to the extent necessary for use, for scholarship, research and similar
the purpose; purposes
5. Inclusion of a work in a publication, 3. Decompilation – the reproduction of the
broadcast or other communication to the code and translation of the forms of the
public, sound recording or film if made by computer program to achieve the inter-
way of illustration for teaching purposes operability of an independently created
compatible with fair use and the source computer program with other computer
and the name of the author appearing on programs (Sec. 185).
work, must be mentioned;
6. Recording made in schools, universities, Criteria to determine whether use is fair or
or educational institutions of a work not:
included in a broadcast for the use of 1. Purpose and the character of the use;
schools, universities or educational 2. Nature of the copyrighted work;
institutions. Such recording must be 3. Amount and substantiality of the portions
deleted with in a reasonable period; such used;
recording may not be made from audio- 4. Effect of the use upon the potential market
visual works which are part of the general of the copyrighted work (Sec. 185).
cinema, repertoire of feature films except
of brief excerpts of the work; Note: Concept of fair use only applies to
7. Making of ephemeral recordings; (i) by a copyrighted work and NOT to non-
broadcasting organization, (ii) by means of copyrightable material.
8
 Quotations from a published work if

they are compatible with fair use and only The incorporation in one’s own work that of
to the extent justified by the purpose, another without the proper acknowledgement
including quotations from newspaper thereof (Pandect of Commercial Law and
articles, and periodicals in the form of Jurisprudence, Vitug, 2006ed).
press summaries are allowed provided
that the source and the name of the Remedies for Infringement
author, if appearing on the work, are A. Judicial (Secs. 216-217)
mentioned (Habana v. Robles, GR No. 1. Action for damages;
131522, July 19, 1999). 2. Criminal action;
Any person who at the time when
Infringement or Piracy copyright subsists in a work has in his
Any violation of the owner’s exclusive rights possession an article which he knows,
conferred by law (Pandect of Commercial Law or ought to know, to be an infringing
and Jurisprudence, Justice Jose Vitug, 2006 copy of his work for the purpose of:
ed). a. Selling, letting for hire, or by way
of trade offering or exposing for
 An appropriation of a copyrighted work sale, or hire, the article;
by another who is not authorized (Black’s b. Distributing the article for purpose
Law Dictionary). of trade, or for any other purpose
 The doing by any person, without the to an extent that will prejudice the
consent of the owner of the copyright, of rights of the copyright owner in the
anything the sole right to do which is work; or
conferred by statute to the owner of the c. Trade exhibit of the article in
copyright (Habana v. Robles, Ibid; public, shall be guilty of an offense
Columbia Pictures v. CA, GR No. 131522, and shall be liable on conviction to
July 19, 1999). imprisonment and fine (Section
 Copying alone is not what is 217.3).
prohibited. The copying must produce an 3. Injunction;
injurious effect. (Habana v. Robles, Ibid). 4. Court order for impounding or
 It is not necessary that the whole or destruction of infringing materials;
even a large portion of the work shall have 5. Payment of moral and
been copied. If so much is taken that the exemplary damages even in case of
value of the original is sensibly diminished, acquittal by the accused;
or the labors of the original author are 6. Seizure and impounding of
substantially and to an injurious extent infringing materials for the purpose of
appropriated by another, that is sufficient evidence
in point of law to constitute a piracy (Ibid.).
 It is the overall appearance or B. Administrative
impression that establishes infringement. 1. Administrative action;
Trivial or minor changes do not 2. Cease and desist order;
necessarily negate infringement 3. Forfeiture of paraphernalia
(Boorstyn, Copyright Law, 1981 Ed., 293, used in committing the offense;
cited in Intellectual Property Law, 4. Administrative fines
Comments and Annotations, Aquino, R.,
1998ed). Affidavit Evidence
An affidavit made before a notary public in
 A copy of a piracy is an infringement
actions for infringement, reciting the facts
of the original and it is no defense that the
required to be stated under the IP Code (Sec.
pirate in such cases did not know whether
218.1).
or not he was infringing any copyright; he
at least knew that what he was copying
Note: As prima facie proof, the affidavit shifts
was not his and he copied at his peril
the burden of proof to the defendant, to prove
(Habana v. Robles, Ibid.).
the ownership of the copyrighted work.
Plagiarism
Presumption of Authorship
The act of appropriating the literary
The natural person whose name is indicated
composition of another, or parts or passages
on a work in the usual manner as the author
of his writings, or the ideas or language of the
shall, in the absence of proof to the contrary,
same and passing them off as the product of
be presumed to be the author of the work.
one’s mind.
9
This is applicable even if the name is a by broadcast qualifying for

pseudonym, where the pseudonym leaves no protection under the Code
doubt as to the identity of the author (Sec. (Secs. 203-207).
219.1). 2. Producers of sound recordings (Secs.
208-210), which includes:
The person or body corporate whose name a. Sound recordings the
appears on an audio-visual work in the usual producers of which are nationals of
manner shall, in the absence of proof to the the Philippines (Section 223.1);
contrary, be presumed to be the maker of said b. Sound recordings that were
work (Sec. 219.2). first published in the Philippines
(Section 223.2);
Related Parties c. Sound recordings which are to
1. Parties be protected by virtue of and in
a. Plaintiff accordance with any international
i. Legal owner; or convention or other international
ii. Beneficial owner; since they are agreement to which the Philippines is
"parties in interest." a party (Section 224.2).
b. Defendant
i. Direct infringer; or  If the general public has
ii. Contributory infringer (Sec. 217). made use of the object sought to be
copyrighted for thirty (30) days prior to
Note: A corner bookstore and magazine the copyright application the law
store that vends pirated copies of a work is deems the object to have been
in fact violating the copyright owner's right donated to the public domain and the
to exclusively distribute his work. Such same can no longer be copyrighted
store would therefore be infringing. The (Filipino Society of Composers,
printer who, though acting under Authors and Publishers, Inc. vs.
instructions from another, sets into motion Benjamin Tan, G. R. no. L-36402,
the illegal reproduction of protected March 16, 1987)
material would, in fact, be infringing
copyright. 3. Broadcasting organizations (Sec. 211)
Scope of Right: exclusive right to carry
2. Prescriptive out, authorize or prevent any of the
Period following acts:
4 years from the time a. The rebroadcasting of their
Action for damages the cause of action broadcasts;
arose (Sec. 226) b. The recording in any manner
subject to the general including the making of films or the
Criminal action rules of prescription of use of video tape, of their broadcasts
crimes for the purpose of communication to
Petition for injunctive none the public of television broadcasts of
relief the same; and
Petition for the none
c. The use of such records for
impounding and
destruction of fresh transmissions or for fresh
infringing material recording.
Related Rights or Neighboring Rights of Application of rights:

Copyright (Secs. 202-211) a. Broadcasts of broadcasting
Rights akin to but different from copyright, organizations the headquarters of
granted by the law to – which are situated in the Philippines;
1. Performers, who are: b. Broadcasts transmitted from
a. Nationals of the Philippines; transmitters situated in the Philippines;
b. Not nationals of the c. Broadcasts by organizations which are
Philippines but whose performances: to be protected by virtue of and in
i. Take place in the Philippines; accordance with any international
ii. Are incorporated in sound convention or other international
recordings protected under the agreement to which the Philippines is
Intellectual Property Code; and a party (Section 224).
iii. Which has not been fixed in
sound recording but are carried PATENT
10
arrives at the same

The right granted to an inventor by the State, product or that is even identical to an
or by the regional office acting for several already patented, he is earlier, or already
States, which allows the inventor to exclude restrained by the arm patented work,
of the law from provided that the
anyone else from commercially exploiting his
exploiting such an former is truly original,
invention for a limited period (World invention by reason of i.e., it owes its
Intellectual Property Organization, the patent granted the existence to its creator.
Understanding Industrial Property, p.5). earlier discoverer.
Non-patentable
A patent is a statutory monopoly which inventions may be
protects against unlicensed use of the subject of a copyright.
patented device or process even by one who
discovers it properly through independent Classes of
Non-patentable
research (60 Am Jur 2d, Patents, Section 6). Patentable
Inventions
Inventions
Purposes 1. Useful machine 1. Discoveries,
2. A product scientific theories
1. The patent law seeks to foster and reward 3. A process and mathematical
invention; 4. Improvement of (1), method;
2. it promotes disclosures of inventions to (2), (3) 2. Schemes, rules and
stimulate further innovation and to permit 5. Micro- organism methods of
the public to practice the invention once 6. Non-biological and performing mental
the patent expires; microbiological acts, playing games
3. The stringent requirements for patent process (Rule 201, or doing business,
protection seeks to ensure that ideas in Rules and and programs for
the public domain remain there for the free Regulations of computers;
Inventions) 3. Methods for
use of the public (Pearl & Dean (Phil.)., treatment of the
Inc. v. Shoemart, Inc., GR No. 148222, human or animal
August 15, 2003). body;
4. Plant varieties or
Principles animal breeds of
1. Test of Non-Obviousness – If any essentially biological
person possessing ordinary skill in the art process for the
was able to draw the inferences and the production of plants
constructs that the supposed inventor or animals;
5. Aesthetic creations;
drew from prior art, then the latter did not 6. Anything which is
really invent. contrary to public
2. Unity of Invention – The application shall order or morality
relate to one invention only or to a group (Sec. 22).
of inventions forming a single general
inventive step (Sec. 38.1). Note: In case of drugs and medicines, non-
3. An applicant may not file 2 applications for patentable products include the mere
the same subject, one for utility model discovery of a new form or new property of a
registration and the other for the grant of a known substance which does not result in the
patent whether simultaneously or enhancement of the known efficacy of that
successively (Parallel Application, Sec. substance, or the mere discovery of a new
111). property or new use for known substance or
4. Whatever right one has to the invention the mere use of the known process unless
covered by the patent arises alone from such known process results in a new product
the grant of patent (Creser Precision that employs at least one new reactant (Sec 5
Systems vs. CA, GR No. 118708, RA 9502).
February 2, 1998).
5. Patents or application for patents and Utility Model Industrial Design
invention to which they relate, shall be Any new model of Any composition of
protected in the same way as the rights of implements or tools of lines or colors or any
other property under the Civil Code (Sec. any industrial product three-dimensional form
103.1). even if not possessed whether or not
of the quality of associated with lines or
invention but which is colors provided that
Patent Copyright
of “practical utility” (Del such composition or
When a person, by It may be vested in a
Rosario v. CA, GR No. form gives a special
independent research work closely similar or
115106, March 15, appearance to and can
11
1996) serve as pattern for an Applicable Rules

industrial product or Secs. 112-
Secs. 108-
handicraft (Sec. 120 and
111 and
112.1). certain
provisions on
provisions on
Secs. 20-107 patents
patents
applying
applying
mutatis
mutatis
mutandis
mutandis
Industrial
Patent Utility Model
Design
Requisites
1. New 1. New New
(Novel) – 2. Industrially
That which Applicable
does not
form part of
a prior art
(Sec. 23);
2. Inventive –
An
invention
involves an
inventive
step if,
having
regard to
prior act, 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).
3. Industrially
patentable
– An
invention
that can be
produced
and used in
any industry
(Sec. 27).
No inventive
Has all of the No inventive
step and not
4 essential step
industrially
requisites
applicable
Term
5 years from
the filing date
7 years from of the
20 years from the filing date application,
the filing date of the which is
of the application; renewable for
application non- not more than
renewable 2 consecutive
periods of 5
years each
12
Requisites of Patentability (Sec. 21) Persons Who May File an Application for a
A. Technical Solution of a problem in any Patent in the Philippines
field of human activity. As to the Legal
B. New (Novelty) – an invention shall not be As to Nationality Personality of the
considered new if it forms part of a prior Applicant
art (Sec. 23). 1. Filipino Nationals; 1. Inventor or his
2. Foreign Nationals or attorney-in-fact;
 Prior Art (Sec. 24)
those domiciled or 2. Assignee of the
That which has been made available have a real and inventor
to the public anywhere in the world effective commercial
BEFORE the filing date or the priority establishment in a
date of the application; country which is
bound by treaty
General Rule: That which forms part of an (such as the Paris
application whether for patent, utility model Convention and the
or industrial design, effective in the TRIPS Agreement)
to grant Filipinos the
Philippines, provided that: same rights it grants
1. the inventors or applicants are not the to its own nationals;
same 3. Foreign Nationals
2. the contents of the application are whose country also
published in accordance with the accepts the patent
requirements of patent application application of
rules; Filipinos.
3. the filing date of the prior art is earlier
Note: To be able to effectively and legally
Exception: Non-prejudicial disclosure preclude others from copying and profiting
1. Disclosure of information contained in from the invention, a patent is a primordial
the application; requirement.
2. Made by:
a. The inventor; No Patent, No Protection
b. Patent office and the information The ultimate goal of a patent system is to bring
was contained: a) in another new designs and technologies into the public
application filed by the inventor domain through disclosure. Ideas, once
and should not have been disclosed to the public without the protection of
disclosed by the office; or b) in an a valid patent, are subject to appropriation
application filed without the without significant restraint (Pearl & Dean
knowledge or consent of the (Phil.) v. Shoemart, GR No. 148222, August
inventor by a third party which 15, 2003).
obtained the information directly
or indirectly from the inventor; or “First-to-File” Rule/ System
c. A third party which obtained the This is the system of patent registration
information directly or indirectly adopted under the IPC in lieu of the first-to-
from the inventor (Sec. 25). invent system.
3. Made during the 12 months preceding
the filing date or the priority date of Right to Priority of an Earlier-filed Foreign
the application. Application (Sec. 31)
Requisites:
C. Involves an Inventive Step 1. The local application expressly claims
(Inventiveness) – an invention involves priority;
inventive step of, having regard to prior 2. It is filed within 12 months from the date of
art, it is not obvious to a person skilled in the earliest foreign application;
the art at the time of the filing date or 3. Filing within 6 months from the certified
priority date of the application claiming the copy of the foreign application, with an
invention (Section 27). English translation, from the date of the
D. Industrially Applicable – an invention local application.
that can be produced and used in any
industry (Section 28).
13
Requirements for Filing Applications (Secs.

32-39) Employer – if the
1. The application shall relate to one invention is the result
inventive step only or to a group of of the performance of
his regularly assigned
inventions forming a single general
duties unless agreed
inventive step. otherwise (Sec. 30).
2. The patent application shall be in Filipino
or English and shall consist of the Requirements to Get a Filing Date (Sec. 40)
following: On receipt of the application, an examiner
 A request containing the following: checks if the application includes the following
a. a petition for the grant of patent; requirements:
b. name and other data of the 1. Request for a Philippine patent;
applicant, inventor (if he is not the 2. Name and address of the applicant; and
applicant) and the agent; and 3. Description and claims of the invention in
c. title of invention. English or Filipino (the extent of protection
 Disclosure of the invention in a conferred by a patent is determined by the
manner sufficiently clear and complete claims).
for it to be carried out by a person
skilled in the art;  Payment of the filling fee is not included.
 Description of the invention;  The date of filling is very important
 Drawings; because it serves to determine who has
 One or more claims in clear and the right to the patent in case of a dispute
concise language defining the matter with another applicant for the same
for which protection is sought; invention.
 An abstract of technical information
consisting of a concise summary of Annual Fees
the disclosure, claims and drawings in To maintain the patent application or patent,
preferably not more than 150 words; an annual fee shall be paid upon the expiration
 Appointment of an agent or of 4 years from the date the application was
representative in the Philippines by a published, and of its subsequent anniversary
non-resident applicant upon whom of such date. Payment maybe made within 3
notices or process for judicial or months before the due date.
administrative procedure relating to
the patent may be served; and If the annual fee is not paid, the patent
 At the request of the Director, the application shall be deemed withdrawn or the
applicant shall furnish him with the patent considered as lapsed from the day
date and number of any application for following the expiration of the period within
a patent filed by him abroad relating to which the annual fees were due.
the same or essentially the same
invention as that claimed in the A grace period of 6 months shall be granted
application filed with the IPO and other for the payment of annual fee (Sec. 55).
documents relating to such.
Concept of Divisional Applications
Situation
Persons Entitled to When two or more inventions are claimed in a
Patent single application but are of such a nature that
2 or more persons a single patent may not be issued for them.
invent separately and He who first files. The applicant is thus required “to divide” or
independently limit the claims to whichever the invention he
2 or more applications Applicant who has the
may elect, whereas those inventions not
filed for the same earliest filing date or
invention earliest priority date elected may be made the subject of separate
Inventions created Person who applications which are called “divisional
pursuant to a commissioned the applications” (Smith Kline Beckman Corp. v.
commission work, unless agreed Court of Appeals, GR No. 126627, August 14,
otherwise. 2003, cited in Reviewer on Commercial Law,
In case an employee Employee – if Sundiang and Aquino, 2006ed).
made the invention in invention NOT part of
the course of his his regular duties even
employment if he uses the time,
facilities and materials
of the employer;
14
data related thereto, solely for

Rights Conferred to an Applicant purposes reasonably related to the
All the rights of a patentee in relation to the development and submission of
invention claimed in the published patent information and issuances of
application if he had: approvals by government regulatory
1. actual knowledge that the invention was agencies required under any
the subject matter of a published Philippine or foreign law (Sec. 7 RA
application; or 9502)
2. received written notice that the invention
was the subject matter of a published 2. Use by Prior User (Sec. 73)
application; and A person other than the applicant, who
3. had not filed the action until after the grant have started using in good faith the
of a patent and within 4 years from the invention in the Philippines, or undertaken
commission of the acts complained of serious preparations to use the same,
(Sec. 46). before the filing date or priority date of the
application shall have the right to continue
Rights Conferred by Patent (Sec. 71) the use thereof but his right may only be
1. To restrain/ prohibit/ prevent; transferred or assigned further with his
a. Subject matter is PRODUCT enterprise or business.
To restrain, prohibit, and prevent any
unauthorized person or entity from 3. Use by Government (Sec. 74)
making, using, offering for sale, selling The government or a third person
or importing that product; authorized by it may use the patent
b. Subject matter is PROCESS without authority of the patent owner if:
To restrain, prevent or prohibit any a. Public interest so requires;
unauthorized person or entity from b. The manner of exploitation by the
using the process, and from owner of the patent is anti-competitive
manufacturing, dealing in, using, c. In case of drugs and medicines, there
selling or offering for sale, or importing is a national emergency or other
any product obtained directly or circumstance of extreme urgency
indirectly from such process. requiring the use of the invention.
2. To assign or transfer; and d. In case of drugs and medicines, there
3. To conclude licensing contracts is a public non- commercial use of the
patent by the patentee, without
Limitations of Rights Conferred by Patent satisfactory reason
1. General Limitations (Sec. 72) e. In case of drugs and medicines, the
The owner of a patent has no right to demand for the patented article in the
prevent third parties from performing, Philippines is not being met to an
without his authorization, the following adequate extent and under
acts: reasonable terms (Sec. 8 RA 9502).
a. Using of a patented product which has
been put on the market in the Cancellation of Patent Formalities
Philippines by the owner of the Upon petition, with notice and hearing.
product, or with his express consent;
b. Exploitation of the patent if done Effect
privately and on a non-commercial Termination of rights conferred by the patent
scale or purpose; (Sec. 66).
c. Act of making or using the patent if for
the sole purpose of scientific research Grounds:
and experiment; 1. What is claimed as the invention is not
d. Preparation for individual cases, in a new or patentable;
pharmacy or by a medical 2. Patent does not disclose the invention
professional, a medicine in in a manner sufficiently clear and complete
accordance with a medical for it to be carried out by any person
prescription; and skilled in the art; and
e. Use of the patented product if it occurs 3. Patent is contrary to public order or
in vehicles in transit in the country. morality (Sec. 61).
f. In case of drugs and medicines, where
the act includes testing, using, making
or selling the invention including any
15
Infringement (Sec. 76.1) components of such equivalency test are

The making, using, offering for sale, selling, or met (Ibid).
importing a patented product or a product
obtained directly or indirectly from a patented The doctrine of equivalents cannot be
process, or the use of a patented process applied when the infringing invention is
without the authorization of the patentee. clearly beyond what is written in the claim
(Reviewer on Commercial Law, Sundiang
Contributory Infringer and Aquino, 2006ed).
One who actively induces the infringement of a
patent or provides the infringer with a Doctrine of File Wrapper Estoppel
component of a patented product or of a Balances the doctrine of equivalents. Patentee
product produced because of a patented is precluded from claiming as part of patented
process knowing it to be especially adopted for product that which he had to excise or modify
infringing and not suitable for substantial non- in order to avoid patent office rejection, and he
infringing. He is jointly and severally liable with may omit any additions he was compelled to
the infringer. add by patent office regulations.
Doctrine of Patent Exhaustion Defenses in Action for Infringement

It espouses that the patentee who has already (Sec. 81)
sold his invention and has received all the 1. Invalidity of patent or claim; and
royalty and consideration for the same will be 2. Existence of ground for cancellation
deemed to have released the invention from
his monopoly. The invention thus becomes Remedies for Infringement
open to the use of the purchaser without 1. Action for damages
further restriction (Adams v. Burke, cited in
Notes on Selected Commercial Laws: A Guide Limitations:
for Bar Reviewees, Catindig, 2003ed). a. Recoverable damages are limited to
acts of infringement committed within
Tests of Patent Infringement 4 years before institution of action
Economic Interest Test (Sec. 79);
When the process-discoverer’s economic b. Damages cannot be recovered if the
interests are compromised, i.e., when others infringer did not know, or had no
can import the products that result from the reasonable grounds to know, of the
process, an act is said to be prohibited. patent (Sec. 80).
2. Injunction (Sec. 76)
1. Literal Infringement Test 3. Disposal or destruction by court’s order
Resort, in the first instance, must be had of the infringing goods, materials and
to the “words” of the claim. If the accused implements, without compensation (Sec.
matter clearly falls within the claim, 76)
infringement is made out and that is the 4. Criminal action for repetition of
end of it. infringement (Sec. 84).
The claims of patent and the accused Note: The institution of an Inter Partes case
product must be juxtaposed within the for cancellation of a mark with the Bureau of
overall context of claims and specification Legal Affairs, IPO does not bar the adverse
(Godines v. CA, GR 97343, September party from filing a subsequent action for
13, 1993). infringement with the regular courts of justice
in connection with the same registered mark.
2. Doctrine of Equivalents Test This is because the certificate of registration
If two devices do the same work in upon which the infringement case is based,
substantially the same way, the same remains valid and subsisting for as long as it
result, and produce substantially the same has not been cancelled by the Bureau
result, they are the same even though they (Shangri-La International Hotel Mgt., Inc., v.
differ in name, form or shape (Godines v. Court of Appeals, GR No. 111580. June 21,
CA, Ibid.). 2001).
Note: The doctrine of equivalents thus

requires satisfaction of the function-
means-and-result test, the patentee Remedies of Persons not Having the Right
having the burden to show that all three to a Patent (Sec. 67)
16
If a person other than the applicant is declared be obtained through the use of the
by final court order or decision as having the licensed technology;
right to the patent, he may within 3 months 7. Those that require payment of
after such decision has become final (a) royalties to the owners of patents for
prosecute the application as his own; (b) file a patents which are not used;
new patent application; (c) request that the
8. Those that prohibit the licensee to
application be refused; or (d) seek cancellation
export the licensed product unless
of the patent.
justified for the protection of the
legitimate interest of the licensor such
Note: Applies to pending application and even
as exports to countries where
when patent is already granted.
exclusive licenses to manufacture
and/or distribute the licensed
Time to file: 1 year from date of publication of
product(s) have already been granted;
the application (Sec. 70).
9. Those which restrict the use of the
Assignment and Transfer technology supplied after the
Inventions and any right, title, or interest in and expiration of the technology transfer
to patents and inventions covered thereby, arrangement, except in cases of early
may be assigned or transmitted by inheritance termination of the technology transfer
or bequest or may be the subject of a license arrangement due to reason(s)
contract (Section 103.2). attributable to the licensee;
10. Those which require payments for
Licensing patents and other industrial property
May be Voluntary (Secs. 85-92, IPC) or rights after their expiration or
Compulsory (93-102, IPC). termination of the technology transfer
arrangement;
A. Voluntary (Secs. 11. Those which require that the
85-92) technology recipient shall not contest
The grant by the patent owner to a third the validity of any of the patents of the
person of the right to exploit a patented technology supplier;
invention.
12. Those which restrict the research
and development activities of the
Prohibited Clauses (Sec. 87)
licensee designed to absorb and
1. Those which impose upon the adapt the transferred technology to
licensee the obligation to acquire from local conditions or to initiate research
a specific source capital goods, and development programs in
intermediate products, raw materials, connection with new products,
and other technologies, or of processes or equipment;
permanently employing personnel
13. Those which prevent the licensee
indicated by the licensor;
from adapting the imported technology
2. Those pursuant to which the to local conditions, or introducing
licensee reserves the right to fix the innovation to it, as long as it does not
sale or resale prices of the products impair the standards prescribed by the
manufactured on the basis of the licensor;
license;
14. Those which exempt the licensor
3. Those that contain restrictions from liability for non-fulfillment of his
regarding the volume and structure of responsibilities under the technology
production; transfer arrangement and/or liability
4. Those that prohibit the use of arising from third party suits brought
competitive technologies in a non- about by the use of the licensed
exclusive technology transfer product or the licensed technology;
arrangement; and
5. Those that establish full or partial 15. Other cases with equivalent
purchase option in favor of the effects.
licensor;
6. Those that obligate the licensee to Mandatory Provisions (Sec. 88)
transfer for free to the licensor the 1. That the laws of the Philippines shall
inventions or improvements that may govern the interpretation of the
17
agreement and in the event of 4. Public non-commercial use of the

litigation, the venue shall be the patent;
proper court in the place where the 5. Patented invention is not being
licensee has its principal office; worked in the Philippines on a
2. Continued access to improvements in commercial scale although capable of
techniques and processes related to being worked; and
the technology shall be made 6. Where the demand for the patented
available during the period of the drugs and medicines is not being met
technology transfer arrangement; to an adequate extent and on
3. In the event the technology transfer reasonable terms (Sec. 10 RA 9502)
arrangement shall provide for
arbitration, the Procedure of Procedure for Application of Patent
Arbitration of the Arbitration Law of the 1. Application
Philippines or the Arbitration Law of Filed with the Bureau of Patents (BOP) of
the United Nations Commission on the Intellectual Property Office (IPO) (Sec.
International Trade Law (UNCITRAL) 32).
or the Rules of Conciliation and
Arbitration of the International 2. Formality Examination
Chamber of Commerce shall apply
and the venue of arbitration shall be 3. To determine whether the application form
the Philippines or any neutral country; has complied with the IP Code and
and Regulations, after the filing date has been
4. The Philippine taxes on all payments accorded and the required fees have been
relating to the technology transfer paid (Sec. 42).
arrangement shall be borne by the
licensor. Note: The date of filing is very important
under the present “first-to-file” system
B. Compulsory (Secs. because it serves to determine, in case of
93-102) a dispute with another applicant for the
The grant by the Director of Legal Affairs same invention, who has the right to the
of a license to exploit a patented invention patent.
even without the agreement of the patent
owner in favor of any person who has 4. Classification and Search
shown his capability to exploit the An application which has complied with
invention under certain circumstances. the formal requirements shall be
classified and a search conducted to
Terms and Conditions for Compulsory determine prior art (Sec. 43).
License:
1. The scope and duration of such 5. Publication in the OG
license shall be limited to the purpose The search and the classification of the
for which it was authorized; field of technology to which the invention is
2. Non exclusive license; assigned will be published in the IPO
3. Non assignable license; Gazette after the expiration of 18 months
4. Use of the subject matter of the from the filing date or priority date (Sec.
license shall be devoted 44).
predominantly to the supply of the
Philippine market; Note: After the publication of the
5. May be terminated if the application, any person may present
circumstances which led to its grant observations in writing concerning the
have ceased; and patentability of the invention. Such
6. The patentee shall be paid observation shall be communicated to the
adequate remuneration. applicant who may comment on them.
Grounds: 6. Request for Substantive Examination

1. National emergency or other Substantive examination is conducted
circumstances of extreme emergency; upon request. The request for substantive
2. When public interest requires; examination of the application must be
3. Manner of exploitation of patent is filed within six (6) months from the date of
anti-competitive; the publication. The application is
18
considered withdrawn if no request is Any visible sign capable of distinguishing the

made within that period (Sec. 48). goods (trademark) or services (service mark)
of an enterprise and shall include a stamped
7. Decision to Grant Patent Registration or marked container of goods. In relation
or Decision of Refusal thereto, a trade name means the name or
If the examiner finds no reason for refusal designation identifying or distinguishing an
of the application, or if the notice of reason enterprise (Elidad Kho v. Court of Appeals,
for refusal is satisfactorily complied with by GR No. 115758, March 11, 2002).
amendment or correction, the examiner
issues a decision to grant the patent Basic Requirements:
registration. Otherwise, the examiner 1. There must be a visible sign; and
refuses the application. 2. It must be capable of distinguishing
the goods of an enterprise.
8. Inspection of Records
It shall be published in the IPO Gazette Functions:
within six (6) months. Any interested party 1. To point out distinctly the origin or
may inspect the complete description, ownership of the goods and to which it is
claims, and drawings of the patent on file affixed;
with the Office. 2. To secure him, who has been
instrumental in bringing into the market a
Appeal superior article of merchandise, the fruit of
Every applicant may appeal to the Director of his industry and skill;
Patents the final refusal of the examiner to 3. To assure the public that they are
grant the patent within two (2) months from the producing the genuine article;
mailing date of the final refusal. The decision 4. To prevent fraud and imposition; and
or order of the Director shall become final and 5. To protect the manufacturer against
executory fifteen (15) days after receipt of a substitution and sale of an inferior and
copy by the appellant unless within the same different article as its product (Mirpuri v.
period, a motion for reconsideration is filed CA, GR 114508, November 19, 1998).
with the Director or an appeal to the Director
General is filed together with the payment of Acquisition
the required fee. Acquired through registration. Registration
is necessary before one can file an action
The decision of the Director General may be for infringement (Reviewer on Commercial
appealed to the Court of Appeals. If the Law, Sundiang and Aquino, 2006ed).
applicant is still not satisfied with the decision
of the Court of Appeals, he may still appeal to Prior use in the Philippines is not required
the Supreme Court. before registration. However, there must
be an actual use after registration because
TRADEMARK, SERVICE MARKS AND Sections 142.2 and 151[c] of the
TRADE NAMES Intellectual Property Code requires that
the registrant shall file a declaration of
The IPC does NOT anymore provide for prior actual use of the mark with evidence
use as a condition for ownership of a mark within 3 years from the filing date of
(Sec. 122). REGISTRATION IS THE SOLE application, otherwise, it would be
BASIS. However, a trade name or business cancelled.
name may be acquired by prior use and need
not be registered. For the requirement of "actual use in
commerce in the Philippines" before one
Principles may register a trademark, trade-name and
1. The right to the mark is separate and service mark under the law pertains to the
distinct from the business using such mark territorial jurisdiction of the Philippines and
(Sec. 149.1). is not only confined to a certain region,
2. The right of registration belongs to the province, city or barangay (McDonald’s
owner of the mark (Unno Commercial Corporation v. McJoy Fastfood
Enterprises, Inc. v. General Milling Corp., Corporation, GR No. 166115, February 2,
GR 28554, February 28, 1983). 2007).
Trademark Registration is not necessary to file a case

for unfair competition (Sec. 168.1 & 2).
19
competitor. goods or
What may NOT be registered (Sec. 133): services of
a. Immoral and deceptive matter; different
b. National flag or insignia; enterprises
which use the
c. Name, portrait or signature of living
sign under the
person or deceased President; control of the
d. Mark or trade name infringing another; registered
e. Mark constituting reproduction of owner of the
internationally well-known mark, collective
whether or not registered here; mark.
f. Mark identical with well-known mark,
on non-competing goods, registered Trademark Trade Name
here; Separate Existence
g. Mark likely to mislead the public; Has an existence
h. Mark consisting exclusively of signs distinct from the
generic for the goods or services; existence of the Attached to the natural
proprietor or juridical or juridical person who
i. Mark consisting exclusively of signs or person doing business does business and
of indications which are customary or and producing the produces the goods or
usual to designate goods or services goods or the services services
in everyday language or bona fide and offered by such person
established trade practices; or enterprise
j. Mark consisting of signs or of Purpose
indications used in trade; Designates the goods Identifies and
k. Mark consisting of shapes; or services offered by distinguishes an
l. Mark consisting of color alone, unless person or enterprise enterprise
defined by form; Registration
Must be registered in No need to register in
m. Contrary to public order or morality.
order to secure order to secure
protection for them protection for them
Note: Mere geographical names are Transferability
ordinarily regarded as common property, Change of ownership
and it is a general rule that the same May be transferred
of trade name must be
cannot be appropriated as the subject of with or without transfer
made with transfer of
of the business (Sec.
an exclusive trademark or trade name enterprise or part
149.1)
(Ang Si Heng v. Wellington Department thereof (Sec. 165.4)
Store, GR No. L-4531, January 10, 1953).
Trademark Goodwill
Trade Name Reputation and public
Right which protects
Any individual name or surname, firm name, confidence that a
the interests of
device or word used by manufacturers, business venture has
producers in their
earned through a
industrialists, merchants, and others to identify marks and in the
period of creditable
their businesses, vocations or occupations goodwill earned.
dealings.
(Converse Rubber Corp., v. Universal Rubber Trademark Label
Products, Inc., GR No. L-27425, L-30505, Merely names what is
April 28, 1980). Designed to identify within the container or
the user or origin. package; may or may
Collective not be trademark.
Trademark Service Mark
Mark
Any visible Any visible Any visible Note: In practice, a word, a name or a phrase,
sign which is sign capable sign coupled with indicators of business
adopted and of designated as organization, such as “Inc.”, “Corp.” or “Co.”
used to distinguishing such in the
will NOT be registered as trademarks or
identify the the services of application for
source of an enterprise registration service marks.
origin of from the and capable
goods, and service of of Requirements to Get a Filing Date
which is other distinguishing On receipt of the application, an examiner
capable of enterprises. the origin or checks if the application includes the following
distinguishing any other requirements:
them from common  Request for a Philippine registration of
goods characteristic,
mark;
emanating including the
from a quality of  Identity of applicant;
20
 Indications sufficient to contact the

applicant; Exception: Expansion of Business Rule –
 Reproduction of the mark; and also to those goods or services that are
 List of goods or services related thereto specified in the certificate (Sec.
138).
Note: No filing date until the required fee is
paid.  All cases in which the use by the
Priority Right junior appropriator is likely to lead to a
An application for registration of mark filed in confusion of source as where prospective
the Philippines by a person who qualifies buyers would be misled into thinking that
under the reciprocity rule and who previously the complaining party has extended his
filed an application for registration of the same business into another field (Sta. Ana v.
mark in one of those countries shall be Maliwat, GR 23023, August 31, 1968).
considered as filed as of the day the
application was first filed in the foreign Declaration of Actual Use or Non-use
country(Sec. 131). Under Sec. 124.2 Under Sec. 145
When to File
Significance of Priority Right Within 3 years from the Within 1 year from the
A Philippine application filed by another filing date 5th anniversary of the
date of the registration
applicant after the priority date but earlier than of the mark
the foreign applicant’s actual filing may be Effect of Failure to File
refused registration if it is identical to the mark Application shall be Mark shall be removed
with a priority date (The Law on Trademark, refused of the mark from the Register by
Infringement and Unfair Competition, Agpalo, shall be removed from the office
2000ed). the register by the
Director
Conditions: What to File
1. The application must be filed within 6 Declaration of actual 1. declaration of actual
months from the date of earliest foreign use with evidence to use with evidence
that effect to that effect, or
application. Its certified copy passed within
2. show valid reasons
3 mos. from the date of filing in the based on the
Philippines. existence of
2. The following should concur: (a) the obstacles to such
foreign country / country of origin has use (declaration of
allowed the mark and (b) the country of non- use)
origin is the applicant’s domicile or has a
bona fide commercial establishment. Rights Conferred by a Trademark
3. The owner of the Philippine Registration 1. In case of
may not sue prior to the granting of the registered marks, in general:
registration, unless the mark is considered Exclusive right to restrain/ prohibit/ prevent
well-known as provided for the IP Code. third persons from using identical or
4. The priority right may not be based upon a similar signs for identical or similar goods
foreign application that has been or services (Sec. 147.1).
withdrawn, abandoned, or otherwise
disposed of in the country of origin (Rule 2. In case of a
202, Trademark Laws). registered well-known mark:
Exclusive right to restrain/ prohibit/ prevent
Certificate of Registration third persons from using identical or
It shall be a prima facie evidence of: similar signs even for dissimilar or
1. Validity of registration; unrelated goods or services, provided that
2. Registrant’s ownership of the mark; the use will indicate a connection between
and the goods and the owner of the mark and
3. The registrant’s exclusive right to use that the interest of the owner would likely
the same in connection with the goods or be damaged (Sec. 147.2).
services and those that are related thereto
(Sec. 138). Doctrine/ Principle of Related Goods or
Services
General Rule: The trademark protection There is infringement when there is use of
extends only to goods or services related to similar marks on goods that are so related that
those specified in the certificate. the public may be, or is actually deceived, and
21
misled that the goods come from the same

maker or manufacturer (Esso Standard Rights:
Eastern Inc. v. CA, 116 GRN 29971, August 1. Right to be protected whether or not it is
31, 1982). registered in the Philippines;
2. If registered, extension of protection to
An EXCEPTION to this doctrine is the goods and services which are not similar
additional right granted to a registered well- to those in respect of which the mark is
known mark. registered, provided that:
a. The use of the mark in relation to
unrelated or dissimilar goods or
services would indicate a connection
between those goods or services and
Well-Known Mark the owner of the mark; and
A mark which a competent authority of the b. The interests of the owner of the
Philippines has designated to be well-known registered mark are likely to be
internationally and in the Philippines. damaged by such use. (Exception to
the doctrine of related goods)
In determining whether a mark is well-known,
the knowledge of the relevant sector of the Nice Classification
public, rather than the public at large, including This is the system by which trademark
knowledge in the Philippines which has been applications are classified. There are 34
obtained as a result of the promotion of the classes of goods and 8 classes of businesses
mark, shall be pertinent. or services.
Determinants: Divisional Applications

1. The duration, An initial application may be divided by the
extent and geographical area of any use of applicant into two or more applications.
the mark; However, a single class shall not be
2. The market subdivided.
share in the Philippines and other
countries of the goods/services to which The divisional application must be submitted
the mark applies; within 2 months from the mailing date of the 1 st
3. The degree of action of the Bureau of Trademarks. A new
the inherent or acquired distinction of the application number shall be issued, and the
mark; priority right of the initial application shall be
4. The quality- preserved.
image or reputation acquired by the mark;
5. The extent to An existing registration may also be
which the mark has been registered in the subdivided upon request by oath and writing.
world; A new certificate shall be issued but a single
6. The class shall also not be subdivided (Sec. 129).
exclusivity of the registration attained
by the mark in the world; Doctrine of Secondary Meaning
7. The extent of While as a general rule, generic, indicative or
use of the mark in the world; descriptive marks ([j], [k], [l] of Sec. 123.1) are
8. The non-registrable, when such kind of mark has
exclusivity of use in the world; become distinctive, because of its long,
9. The continuous and exclusive use for 5 years, as
commercial value attributed to the mark in used in connection with the applicant's goods
the world; or services in commerce and in the mind of the
10. The record of public indicates a single source to consumers,
successful protection of the rights in the it may be registered (Sec. 123.2).
mark;
11. The outcome Doctrine of Dilution
of litigations dealing with the issue of Copying which, while not sufficiently confusing
whether the mark is well-known; and to divert sales in the short run, will tend to
12. The presence divert them in the long run by weakening the
or absence of identical or similar marks instantaneous favorable associations the
validly registered or used on other similar public makes with highly regarded products.
goods (Rule on Trademarks, Rule 102).
22
Opposition not, of itself, perfect a trademark. It is actual

Any person who believes that he would be use which perfects a trademark.
damaged by the registration of a mark may,
upon payment of the fee file an opposition to Non-use of a Mark When Excused
application. 1. If caused by
circumstances arising independently of the
Form: will of the owner. Lack of funds not
1. In writing excused.
2. Verified 2. A use which does
3. Specified grounds not alter its distinctive character though
4. Statement of facts the use is different from the form in which
it is registered.
Time to file: 30 days after publication of 3. Use of mark in
application; if unverified, the verified opposition connection with one or more of the
must be filed within 2 months from such filing goods/services belonging to the class in
BUT It may be extended for 1 month and which the mark is registered.
maximum period does not exceed 4 months 4. The use of a mark
from publication of application (Sec. 134). by a company related to the
applicant/registrant.
5. The use of a mark
by a person controlled by the registrant
Cancellation (Sec. 151) (Sec. 152).
Formalities: Upon petition, with due notice
and hearing Infringement (Sec. 155)
1. Reproduction or colorable imitation of a
Grounds: registered mark or a dominant feature
With 5 Years from thereof and application of such
At Any Time
Registration reproduction or imitation of labels, etc.,
Belief that the 1. Becoming the intended to be used in commerce, or use
registered mark has generic name for the in commerce of any reproduction or
damage or will goods or services for colorable imitation of a registered mark or
damage the petitioner which it is a dominant feature thereof in connection
registered;
with the sale or advertising of goods or
2. Abandonment;
3. Illegal or fraudulent services;
registration; 2. Likelihood to cause confusion or mistakes
4. Use by, or with the in the mind of the public or deceive
permission of the purchasers.
registrant so as to
misrepresent the Note: This is presumed in case of the use of
source of the goods an identical sign for identical goods or
or services in services.
connection with
which the mark is
used;  There is infringement of trademark when
5. Non-use for an the use of the mark involved would be
uninterrupted period likely to cause confusion or mistake in the
of 3 years without mind of the public or to deceive
legitimate reason purchasers as to the origin of the source
of the commodity (Fruit of the Loom, Inc.,
Note: Actual use may be done by substantial v. Court of Appeals and General
compliance (Sec. 152.2-4). Garments, Corp., GR No. L-32747).
Exempting circumstances: those arising  Action for infringement may be

independently of the will of the trademark maintained without proof of anything
owner (Sec. 152.1), such as prohibition of sale more than the right to the exclusive use of
by government regulation, military coup, or the registered mark or trade name and
political changes that impede commerce. that the defendant has violated it. No
allegation or proof of fraud or intent to
Note: Registration is an administrative act defraud is necessary (Compania General
declaratory of a pre-existing right that does de Tabacos v. Alhambra Cigar, Co., 33
Phil 485 (1916) cited by Agpalo Ruben.
23
The Law on Trademark Infringement and 4. There is, in

Unfair Competition 1st ed. Rex Bookstore; the use or application a likelihood of
Manila, 200.p.172). confusion.
Factors to consider: 5. Lack of

1. Value of the Goods consent on the part of the registered
(Emerald Garment Manufacturing Corp. owner or their assignee (The Law on
vs. CA, GR 100098, December 29, 1995); Trademark, Infringement and Unfair
2. Common Trade Channel Competition, Agpalo, 2000ed).
(Ang vs. Teodoro, GR 48226, December
14, 1942); 6. There shall be
no infringement of trademarks or trade
3. Type of Consumers
names of imported or sold drugs and
(Mead Johnson vs. McCullough, GR No. medicine as defined in Sec.72.1 of the Act
6217, December 26, 1911); as well as imported or sold off- patent
4. Necessary Expansion of drugs and medicines (Sec. 14 RA 9502)
the Business (Sta. Ana vs. Maliwat, GR
23023, August 31, 1968; Ang vs. Teodoro, Confusion of Goods / Confusion of
GR No. 48226, December 14, 1992). Services Business/ Origin
Exists when one
Elements of Infringement party’s product or
1. Registration service though
of trademark in IPO; and different from that of
A person’s goods or
another, is such as
services are
might reasonably be
2. Trademark is purchased as those of
assumed to originate
reproduced, copied, counterfeited or another and the poorer
from the latter and the
colorably imitated. quality of the former
public would then be
reflects adversely on
deceived into the belief
the latter’s reputation.
Colorable Imitation that there is some
Such similarity in form, content, words, connection between
sound, meaning, special arrangement or the parties, which in
general appearance of the mark or trade fact is absent.
name with that of the other mark or trade Confusingly similar
Confusingly similar
marks are employed in
name in their overall presentation or in marks are used on the
different or non-
their essential, substantive or distinctive same kinds of
competing
parts as would likely mislead or confuse goods/services.
goods/services.
persons in the ordinary course of
purchasing the genuine article.
Denotes such a “close ingenious imitation” Idem Sonams Rule

as to be calculated to deceive ordinary Two trademarks used on identical or related
persons, or such a resemblance to the goods may be confusingly similar if they have
original as to deceive an ordinary similar sound or pronunciation.
purchaser, giving such attention as a
purchaser usually gives, and to cause him Note: Similarity of sound or pronunciation and
to purchase the one supposing it to be the spelling may be sufficient to make two marks
other (Etepha A.G. v. Director of Patents confusingly similar when applied to
and Westmont Pharmaceuticals, Inc., GR merchandise of the same descriptive
No. L-20635, March 31, 1966). properties. Example: “Salonpas” and
“Lionpas” both for medical plaster (Marvex
3. It is used in Commercial Co. v. Petra Hawpia and Co., GR
connection with the sale, or it is offering for 19297, December 22, 1966).
sale or advertising of goods, services or
business or applied to labels, signs, Likelihood of confusion or mistake is greater
wrappers, etc intended to be used in when identical or closely similar marks are
connection with such goods, services or used on non-competing but related and
business. common household items because they are
purchased by ordinary purchasers who usually
know them by their names or trademarks.
24
INFRINGEMENT OF NAME AND MARK 1. E. Spinner and Co. vs.

OF OWNERSHIP STAMP ON Neuss Hesslein Corp. The use of “Wigan” for
CONTAINERS (R.A. No. 623 as amended (G.R No. 31380, khaki
by R. A, No. 5700) January 13, 1930)
2. Lim Hoa vs. Dir of
General Rule: It is unlawful for any person, Patents (GR No. L- Hen Brand vs. Marka
without written consent of the manufacturer, 8072, October 31, Manok
1956)
bottler or seller who has registered the mark of
ownership to fill such bottles, boxes, kegs, 3. Sta. Ana vs. Maliwat
barrels or other containers so marked and (GR No. L-23023, Florman vs. Flormen
August 31, 1968)
stamped, for the purpose of sale, dispose of,
or wantonly destroy the same, whether filled or 4. Philippine Nut Industry Planters Cocktail
not, to use the same for drinking vessels or vs. Std Brands (GR Peanuts vs. Phil
No.L-23035, July 31, Planters Cordial
drain pipes, foundation pipes, for any other
1975). Peanuts
purpose than that registered (Sec. 2, RA 623).
5. Converse Rubber Corp
Universal Converse
vs. Universal Rubber
The use of the same, without apparent Deice vs. Converse
(GR No. L-27906,
permission from the trademark owners thereof, January 8, 1997)
Rubber Corp.
shall be prima facie presumption that such
Asia Brewery inc.’s
possession or use is unlawful (Sec 3, RA 623).
label of BEER PALE
6. Asia Brewery , Inc., vs.
PILSEN and its use of
Exceptions: Court of Appeals (GR
the steinie bottle vs.
1. Use of the bottles as No. 103543, July 5,
SMB’s PALE PILSEN
containers for sisi, bagoong, patis and 1993)
with Rectangular Malt
similar native products (Sec 6, RA 623); and Hops Design
and 7. Amigo Manufacturing
2. Persons in whose favor the Inc., vs. Cluelett
containers were sold (Distilleria Peabody Co., Inc. (GR Gold Toe vs. Gold Top
Washington, Inc. v. LA Tondeña Distillers, No. 139300, March 14,
GR 120961, October 2, 1997). 2001)
8. Societe Des Produits
Master Roast and
The general rule is that in the sale of Nestle, S.A. vs. Court
Master Blend vs. Flavor
beverages, it already includes the containers, of Appeals (GR No.
Master
unless there is an agreement to the contrary 112012, April 4, 2001)
(Law on Trademarks, Agpalo, R., 2000ed). 9. McDonalds
Corporation and
The exemption under Sec. 6, RA 623 covers McGeorge Food
Industries, Inc. vs. L.C. Big Mac vs. Big Mak
not only criminal but also civil liability (Twin Big Mak Burger, Inc.
Ace Holding Corp. v. CA, GR No. 123248, (GR No. 143993,
October 16, 1997). August 18, 2003)
DOMINANCY TEST VS. HOLISTIC TEST 10. McDonalds
Corporation vs.
Dominancy Test Holistic/ Totality Test MacJoy Fastfood
McDonalds vs. MacJoy
Focuses on the Mandates that the Corporation (GR No.
similarity of the main, entirety of the marks in 166115, February 2,
essential, dominant, or question must be 2007)
prevalent features of a considered in
mark. determining confusing Holistic Test
similarity. Case Issue
Exact duplication or
1. Emerald Garment
imitation is not
Mfg Corp. vs. CA
necessary. The use of “LEE” in the
(GR No. 100098,
manufacture of pants
December 29,
This test is
1995)
incorporated in the
Intellectual Property 2. Bristol Myers vs. Dir
Code and is of Patents (GR No. Bioferin vs. Bufferin
controlling. L-21587, May 19, both for medicine
1966)
Examples of Cases Explaining Tests: 3. American Sulmetine vs. Sulmet
Case Issue Cyanamide Co. vs. both for veterinary
25
Dir of Patents (GR person who, in good faith, before the filing
No.L-23954, April medicine or priority date, was using the mark for
29, 1977) purposes of his business.
4. Mead Johnson vs. 2. Relief against Printer – Injunction
Alaska for milk and
NVJ Van Dorp (GR against future printing against an innocent
Alacta for powdered
No. L-17501, April infringer who is engaged solely in the
half-skim milk
27, 2963) business of printing the mark.
3. Relief against newspaper –
Remedies for Infringement Injunction against the presentation of
1. Action for damages; advertising matter in future issues of the
General Rule: Only those acts of newspaper, magazine or in electronic
infringement committed from registration communications in case the infringement
onwards may be sued upon. complained of is contained in or is part of
Exception: In case of infringement of a paid advertisement in such materials.
well-known mark.
2. Injunction; Unfair Competition
3. Impounding of sales invoices and The employment by a person of deception or
other documents; any other means contrary to good faith by
4. Double damages in case of actual which he passes off the goods manufactured
intent to defraud or to misled (Sec. 156); by him or in which he deals, or his business or
5. Court order for the disposal or services, for those of another person who has
destruction of the infringing goods (Sec. established goodwill in the goods such person
157); manufactures or deals in, or his business or
6. Criminal action; services, or who shall commit any acts
7. Administrative sanctions calculated to produce said result, whether or
not registered mark is employed (Section
 In any suit for infringement, the owner 168.2).
of the registered mark shall not be entitled
to recover damages or profits unless the In particular, the following shall be deemed
acts have been committed with knowledge guilty of unfair competition:
that such imitation is likely to cause a. Any person who is selling his goods
confusion, or to cause mistake or to and gives them the general appearance of
deceive (Sec. 158). goods of another manufacturer or dealer
or who otherwise clothes the goods with
 The infringement case can and should such appearance as shall deceive the
proceed independently from the public and defraud another of his
cancellation case with the Bureau so as to legitimate trade, or any subsequent vendor
afford the owner of the certificates of of such good or any agent of any vendor
registration redress and injunctive writs engaged in selling such goods with a like
(Shangri-La International Hotel Mgt., Inc., purpose;
v. Court of Appeals, GR No. 111580. June b. Any person who by any artifice, or
21, 2001). device or who employs any other means
calculated to induce the false belief that
 Any foreign national, who qualifies such person is offering the services of
under the principle on reciprocity and does another who has identified such services
not engage in business in the Philippines, in the mind of the public or;
whether or not it is licensed to do business c. Any person who shall make any false
in the Philippines, may bring civil or statement in the course of trade or who
administrative action for: shall commit any other act contrary to
a. Opposition good faith of a nature calculated to
b. Cancellation discredit the goods, business or services
c. Infringement of another (Section 168.3).
d. Unfair competition
e. False designation of origin or false Test: Whether certain goods have been
description (Sec. 160). intentionally clothed with an appearance which
is likely to deceive the ordinary purchaser
Limitations of Action for Infringement exercising ordinary care, and not whether a
(Sec.159) certain limited class of purchasers with special
1. Right of Prior User – Registered knowledge not possessed by the ordinary
mark shall be without effect against any purchaser could avoid mistake by the exercise
26
of this special knowledge (U.S. v. Manuel, 7 maintain an action for unfair competition. This
Phil 221, GR 1999, December 27, 1906). is so because the crime of unfair competition
punishable under Article 189 of the Revised
Infringement of
Unfair Competition
Penal Code is a public crime. It is essentially
Trademark an act against the State and it is the latter
Definition which principally stands as the injured party.
The passing off of The complainant’s capacity to sue in such
Unauthorized use of a
one’s goods as those case becomes immaterial (Melbarose Sasot,
trademark
of another
et al., vs. People of the Philippines, GR No.
Fraudulent Intent
143193, June 29, 2005).
Fraudulent intent is Fraudulent intent is
unnecessary essential
Registration While foreign corporations may have the
Prior registration of the capacity to sue for infringement irrespective of
Registration is not a lack of business activity in the Philippines but
trademark is a
prerequisite to an
prerequisite to the the question of whether they have an
action.
action exclusive right over the symbol as to justify
Scope issuance of an injunctive writ will depend on
Limited scope Wider scope actual use of their trademarks in the
Goods Involved Philippines. To be entitled to an injunctive
Same class of goods Different classes of writ, a foreign corporation must show that
or services must be goods or services may
there exists a right to be protected and that the
involved be involved
fact against which injunction is directed are
violative of such right (Philip Morris, et al., vs.
Note: An action for infringement of a mark
Fortune Tobacco Corporation, GR No.
cannot be brought at the same time with an
158589, June 27, 2006).
action for unfair competition because the
element of fraud and deceit, which is essential
Sale is not an indispensable element in an
to the latter, is absent in the former (Clarke v.
action for infringement or unfair competition
Manila Candy Co., 36 Phil. 100, GR 10487,
(Pro Line Sports v. CA, GR 118192, October
January 23, 1917).
23, 1997).
A foreign corporation not engaged in and
licensed to do business in the Philippines may
27
Distinctions on Copyright Patent and Mark

Copyright Patent Mark
Definition
It is that system of legal protection An exclusive right acquired over Any visible sign capable of
an author enjoys in the form of an invention, to sell, use and make distinguishing the goods of an
expression of ideas (World the same whether for commerce enterprise (trademark) or the
Intellectual Property Organization or industry. services of an enterprise (service
[WIPO]). mark), and includes a stamped or
Refers to either the grant of rights, marked container of goods (Sec.
An intangible, incorporeal right OR the instrument (sometimes 121.1).
granted by statute to the author or called letters patent) containing
originator of certain literary or the grant, giving an inventor a
artistic productions, whereby he is monopoly on the inventor’s
invested, for a limited period, with invention for a limited period.
the sole exclusive privilege of
multiplying copies of the same and
publishing and selling them
(Black’s Law Dictionary).
Purposes
1. To stimulate artistic creativity for 1. Not only to reward the 1. To indicate origin or ownership
the general public good; and individual, but the advancement of articles to which they are
2. To promote the progress of of the arts and sciences; attached;
science and useful arts. 2. To add to the sum of useful 2. To guarantee that those articles
knowledge; and come up to a certain kind of
3. To encourage dissemination of quality;
information concerning 3. To advertise articles they
discoveries and inventions. symbolize;
4. To assure the public that they
are producing genuine article;
and
5. To protect the manufacturer
against substitution and sale of
an inferior and different article.
Requirements
1. Originality; and Any technical solution of a 1. Upon application:
2. Expression problem in any field of human Must be registrable (Sec.
activity which is: 123.1):
1. New or novel; a. Absolutely non-registrable –
2. Inventive; and (a-i) & (m) of Sec. 123.1
3. Industrially applicable b. Qualifiedly registrable – (j),
(Sec. 21) (k), (l) of Sec. 123.1; Doctrine
of secondary meaning (Sec.
123.2)
2. Within 3 years from application:
 Declaration and
evidence of actual use (Sec.
124.2)
Term
See Table on Duration of 20 years from the filing date of the 10 years from the filing date of the
Copyright application (Sec. 54). application, provided the registrant
shall file a declaration of actual
use within a year from the 5 th
anniversary of registration date
(Sec. 145), and renewable for
another 10 years (Sec. 146).
How Created/ Acquired

From the moment of creation First-to-file system Valid registration
(fixation)
General Limitations
1. Duration/temporal – The owner is limited by the terms of their property rights.
2. Territorial/geographical – The owner is protected by the law of the country where the violation is committed.
3. For violations in another country, resort must be made to the law of the other country, subject to the principle
of reciprocity in Sec. 3.
(Notes on Selected Commercial Laws A Guide for Bar Reviewees, Tristan Catindig, 2003ed)
28
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San Beda College of Law

Laws on Intellectual Property

Persons Entitled to the Benefits of the IPC Most-favored Nation Principle

2. Bureau of Legal Affairs communication of his work (Sec.

4. Copyright is not a right to do anything (i) There must be "fixation". To be

(Sec. 196). by the latter under his

11. Photo 3. Any official text of a legislative,

Note: Format or mechanics of a television

2. News of the day and other miscellaneous

A. Copyright or Economic Rights Term/ Duration

 Quotations from a published work if

This is applicable even if the name is a by broadcast qualifying for

Related Rights or Neighboring Rights of Application of rights:

arrives at the same

1996) serve as pattern for an Applicable Rules

Requirements for Filing Applications (Secs.

data related thereto, solely for

Infringement (Sec. 76.1) components of such equivalency test are

Doctrine of Patent Exhaustion Defenses in Action for Infringement

Note: The doctrine of equivalents thus

agreement and in the event of 4. Public non-commercial use of the

Grounds: 6. Request for Substantive Examination

considered withdrawn if no request is Any visible sign capable of distinguishing the

Trademark Registration is not necessary to file a case

 Indications sufficient to contact the

misled that the goods come from the same

Determinants: Divisional Applications

Opposition not, of itself, perfect a trademark. It is actual

Exempting circumstances: those arising  Action for infringement may be

The Law on Trademark Infringement and 4. There is, in

Factors to consider: 5. Lack of

Denotes such a “close ingenious imitation” Idem Sonams Rule

INFRINGEMENT OF NAME AND MARK 1. E. Spinner and Co. vs.

Distinctions on Copyright Patent and Mark

How Created/ Acquired

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