INTELLECTUAL PROPERTY REVIEWER
popularity thus causing confusion on the
By: Dhang Teoxon
RA 8293- Intellectual property Code
- Approved by President Fidel Ramos
- January 1, 199
- It has no retroactive effect
State policies
- It shall protect and secure the exclusive
rights of scientists, inventors, artists
and other gifted citizen to their
intellectual property and creations,
particularly when beneficial to the
people
- The state shall promote the diffusion of
knowledge and information for the
promotion of national development and
progress and the common good.
- To streamline administrative
procedures of registering patents,
trademarks and copyright
- To liberalize the registration on the
transfer of technology
- To enhance the enforcement of
intellectual property rights in the
Philippines.
Case Mighty Corp. and La Campana Fabrica de
tobacco Inc. vs. E & J Gallo winery and
Andersons Group Inc.
Facts:
Gallo Winery is foreign corporation not doing
business in the Philippines but organized and
existing under the laws of the state of
California. It sells and produces different kinds
of wines and brandy products under different
registered trademarks including Gallo and
Ernest and Julio Gallo wine trademarks.
Andersons, Gallo winery’s exclusive wine
importer and distributor in the Philippines
selling the products in its own name and or its
own account.
Gallo wine trademark was registered in the
Philippine register IPO on November 16, 1979
renewed on November 16, 1991. It also applied
for registration of E&J Gallo wine but no record
of it being approved.
Mighty corp & La Campana & their sister
company Tobacco industries are engaged in the
cultivation of tobacco products for which they
have been using the Gallo cigarette trademark.
Gallo winery sued mighty for trademark and
tradename infringement and unfair
competition.
Gallo contends that mighty adapted the Gallo
trademark to ride in Gallo winery, E&J gallo
trademarks established reputation and
purchasing public who associate Gallo
trademarks with Gallo winery.
Mighty corp. contends that Gallo cigarettes and
Gallo winery are totally unrelated products; the
latter’s registration certificate covered wines
only not cigarettes and sold through different
channels of trade.
The Makati RTC ruled in favor of Mighty corp
holding that Gallo’s trademarks reg. certificate
covered wines only and that respondent’s wines
and petitioner’s cigarettes were unrelated
goods.
The CA dismissed the petition for certiorari for
the denial of the writ of preliminary injunction
but the RTC ruled the petitioners liable for TM
infringement and unfair competition and
enjoined them from using E&J registered
trademark
Issue:
Whether or not RA 8293 was applicable in the
case
Ruling:
No. It is the trademark law and Paris convention
which is applicable and not the INP code
The suit was filed March 12, 1993 for trademark
infringement and unfair competition committed
during the effectivity of the Paris convention
and trademark law.
It is a fundamental principle that the validity
and obligatory force of law proceed from the
fact that it has first been promulgated. A law
that is not yet effective cannot be considered as
conclusively known by the populace. To make a
law binding even before it takes effect may lead
to the arbitrary exercise of the legislative
power. A new state of law ought to affect the
future, not the past.
Intellectual Property rights
1. Copyright and related rights
2. Trademarks and service marks
3. Geographic indications
4. Industrial designs
5. Patents
6. Layout designs of integrated circuits
7. Protection of undisclosed information
Trademarks – any visible sign capable of
distinguishing the goods or services of an
enterprise and shall include a stamped or
marked container of goods.
Tradename – the name or designation
identifying or distinguishing an enterprise.
Copyright- confined to literary and artistic
works which are original intellectual creations in
the literary and artistic domain protected from
the moment of their creation.
Patentable invention – any technical solution of
a problem in any field of human activity which is
new involves an inventive step & is industrially
applicable.
Doctrine of secondary meaning
- A word or phrase originally incapable of
exclusive appropriation with reference
to an article in the market might
nevertheless have been used for so long
& so exclusively by one producer with
reference to his article that, in the trade
and to that branch of the purchasing
public, the word or phrase has come to
mean that the article was his property.
Case Pearl and Dean vs Shoemart Inc
Facts:
Pearl and Dean (Phil.), Inc. is a corporation
engaged in the manufacture of advertising
display units simply referred to as light boxe.
Pearl and Dean was able to secure a Certificate
of Copyright Registration over these illuminated
display units. Sometime in 1985, Pearl and Dean
negotiated with defendant-appellant Shoemart,
Inc. (SMI) for the lease and installation of the
light boxes in SM City North Edsa. Since SM City
North Edsa was under construction at that time,
SMI offered as an alternative, SM Makati and
SM Cubao, to which Pearl and Dean agreed.
Only the contract for SM Makati, however, was
returned signed. In 1986, SMI’s house counsel
informed Pearl and Dean that it was rescinding
the contract for SM Makati due to non-
performance of the terms thereof. Sometime in
1989, Pearl and Dean, received reports that
exact copies of its light boxes were installed at
SM City and in the fastfood section of SM
Cubao. Upon investigation, Pearl and Dean
found out that aside from the two (2) reported
SM branches, light boxes similar to those it
manufactures were also installed in two (2)
other SM stores. It further discovered that
defendant-appellant North Edsa Marketing Inc.
(NEMI). was set up primarily to sell advertising
space in lighted display units located in SMI’s
different branches. Pearl and Dean sent a letter
to both SMI and NEMI enjoining them to cease
using the subject light boxes and to remove the
same from SMI’s establishments. Upon receipt
of the demand letter, SMI suspended the
leasing of two hundred twenty-four (224) light
boxes and NEMI took down its advertisements
for “Poster Ads” from the lighted display units
in SMI’s stores. Claiming that both SMI and
NEMI failed to meet all its demands, Pearl and
Dean filed this instant case for infringement of
trademark and copyright, unfair competition
and damages.
RTC decided in favor of P & D
On appeal, however, the CA reversed the trial
court viz:
Since the light boxes cannot, by any stretch of
the imagination, be considered as either prints,
pictorial illustrations, advertising copies, labels,
tags or box wraps, to be properly classified as a
copyrightable class “O” work, we have to agree
with SMI when it posited that what was
copyrighted were the technical drawings only,
and not the light boxes themselves.
Ruling:
On the issue of copyright
Its claim of copyright infringement cannot be
sustained.
Copyright, in the strict sense of the term, is
purely a statutory right. Being a mere statutory
grant, the rights are limited to what the statute
confers. It may be obtained and enjoyed only
with respect to the subjects and by the persons,
and on terms and conditions specified in the
statute. Accordingly, it can cover only the works
falling within the statutory enumeration or
description.
P & D secured its copyright under the
classification class “O” work. This being so,
petitioner’s copyright protection extended only
to the technical drawings and not to the light
box itself because the latter was not at all in the
category of “prints, pictorial illustrations,
advertising copies, labels, tags and box
wraps.” Stated otherwise, even as we find that
P & D indeed owned a valid copyright, the same
could have referred only to the technical
drawings within the category of “pictorial
illustrations.” It could not have possibly
stretched out to include the underlying light
box. The strict application of the law’s
enumeration in Section 2 prevents us from
giving petitioner even a little leeway, that is,
even if its copyright certificate was entitled
“Advertising Display Units.” What the law does
not include, it excludes, and for the good
reason: the light box was not a literary or
artistic piece which could be copyrighted under
the copyright law. And no less clearly, neither
could the lack of statutory authority to make
the light box copyrightable be remedied by the
simplistic act of entitling the copyright
certificate issued by the National Library as
“Advertising Display Units.”
On the issue of patent infringement
Petitioner never secured a patent for the light
boxes. It therefore acquired no patent rights
which could have protected its invention, if in
fact it really was. And because it had no patent,
petitioner could not legally prevent anyone
from manufacturing or commercially using the
contraption.
To be able to effectively and legally preclude
others from copying and profiting from the
invention, a patent is a primordial
requirement. No patent, no protection. The
ultimate goal of a patent system is to bring new
designs and technologies into the public domain
through disclosure. Ideas, once disclosed to the
public without the protection of a valid patent,
are subject to appropriation without significant
restraint.
On the issue of trademark infringement
This issue concerns the use by respondents of
the mark “Poster Ads” which petitioner’s
president said was a contraction of “poster
advertising.” P & D was able to secure a
trademark certificate for it, but one where the
goods specified were “stationeries such as
letterheads, envelopes, calling cards and
newsletters”. Petitioner admitted it did not
commercially engage in or market these goods.
On the contrary, it dealt in electrically operated
backlit advertising units and the sale of
advertising spaces thereon, which, however,
were not at all specified in the trademark
certificate.
Assuming arguendo that “Poster Ads” could
validly qualify as a trademark, the failure of P &
D to secure a trademark registration for specific
use on the light boxes meant that there could
not have been any trademark infringement
since registration was an essential element
thereof.
Case Elidad Kho vs. Court of Appeals
Trademark, copyright and patents are different
intellectual property rights that cannot be
interchanged with one another. A trademark is
any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of
an enterprise and shall include a stamped or
marked container of goods.] In relation thereto,
a trade name means the name or designation
identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined
to literary and artistic works which are original
intellectual creations in the literary and artistic
domain protected from the moment of their
creation. Patentable inventions, on the other
hand, refer to any technical solution of a
problem in any field of human activity which is
new, involves an inventive step and is
industrially applicable
Petitioner has no right to support her claim
for the exclusive use of the subject trade name
and its container. The name and container of a
beauty cream product are proper subjects of a
trademark inasmuch as the same falls squarely
within its definition. In order to be entitled to
exclusively use the same in the sale of the
beauty cream product, the user must
sufficiently prove that she registered or used it
before anybody else did. The petitioner’s
copyright and patent registration of the name
and container would not guarantee her right to
the exclusive use of the same for the reason
that they are not appropriate subjects of the
said intellectual rights. Consequently, a
preliminary injunction order cannot be issued
for the reason that the petitioner has not
proven that she has a clear right over the said
name and container to the exclusion of others,
not having proven that she has registered a
trademark thereto or used the same before
anyone did.
Technology transfer agreement
- Contracts or agreements involving the
transfer of systematic knowledge for
the manufacture of a product, the
application of a process, or rendering of
a service including management
contracts.
- A licensing contract between an
intellectual property right owner, as the
licensor and a second party as the
licensee who was granted the authority
to commercially exploit the same
intellectual property right under
specified terms and conditions.
- Failure to comply with the mandatory
and prohibited clauses would
automatically render the TTA,
UNENFORCEABLE.
Except in certain cases, it may still be
valid if the same is approved and
registered with the DITT Bureau.
Case In-N-Out Burger Inc. vs Sehwani Inc
Facts:
Petitioner IN-N-OUT BURGER, INC., a business
entity incorporated under the laws of California,
engaged mainly in the restaurant business, but
it has never engaged in business in
the Philippines.
Respondents Sehwani Incorporated and
Benita Frites, Inc. are corporations organized in
the Philippines.
Petitioner filed trademark and service mark
applications with the Bureau of Trademarks
(BOT) of the IPO for “IN-N-OUT” and “IN-N-OUT
Burger & Arrow Design.” Petitioner later found
out that respondent Sehwani, Incorporated had
already obtained Trademark Registration for
the mark “IN N OUT (the inside of the letter “O”
formed like a star).”
Petitioner eventually filed before the Bureau of
Legal Affairs of the IPO an administrative
complaint against respondents for unfair
competition and cancellation of trademark
registration. Following the filing of its
complaint petitioner sent a demand letter
directing respondent Sehwani Incorporated to
cease and desist from claiming ownership of the
mark “IN-N-OUT” and to voluntarily cancel its
trademark registration. Petitioner was able to
register the mark “Double Double.” It alleged
that respondents also used this mark, as well as
the menu color scheme.
The IPO Director of Legal Affairs rendered a
Decision in favor of petitioner.
Both parties filed their respective Motions for
Reconsideration of the aforementioned
Decision, which were denied by the Director on
Legal affairs.
Upon the denial of its Partial Motion for
Reconsideration of the Decision, petitioner was
able to file a timely appeal before the IPO
Director General which ruled that respondents
were guilty of unfair competition. Respondents
appealed their case to the Court of Appeals
The appellate court declared that Section 163 of
the Intellectual Property Code specifically
confers upon the regular courts, and not the
BLA-IPO, sole jurisdiction to hear and decide
cases involving provisions of the Intellectual
Property Code, particularly
trademarks. Consequently, the IPO Director
General had no jurisdiction to rule in its
Decision.
Ruling:
The Court disagrees with the Court of Appeals.
The Court of Appeals erroneously reasoned that
Section 10(a) of the Intellectual Property Code,
conferring upon the BLA-IPO jurisdiction over
administrative complaints for violations of
intellectual property rights, is a general
provision, over which the specific provision of
Section 163 of the same Code, found under Part
III thereof particularly governing trademarks,
service marks, and tradenames, must prevail.
Proceeding therefrom, the Court of Appeals
incorrectly concluded that all actions involving
trademarks, including charges of unfair
competition, are under the exclusive
jurisdiction of civil courts.
While Section 163 thereof vests in civil courts
jurisdiction over cases of unfair competition,
nothing in the said section states that the
regular courts have sole jurisdiction over unfair
competition cases, to the exclusion of
administrative bodies. On the contrary,
Sections 160 and 170, which are also found
under Part III of the Intellectual Property Code,
recognize the concurrent jurisdiction of civil
courts and the IPO over unfair competition
cases.
Case Phil.Pharmawealth Inc. vs Pfizer (Phil.) Inc
Facts:
Pfizer is the registered owner of Philippine
Letters Patent No. 21116 which covers
ampicillin sodium/sulbactam sodium (hereafter
“Sulbactam Ampicillin”). Ampicillin sodium is a
specific example of the broad beta-lactam
antibiotic disclosed and claimed in the Patent. It
is the compound which efficacy is being
enhanced by co-administering the same with
sulbactam sodium. Sulbactam sodium, on the
other hand, is a specific compound of the
formula IA disclosed and claimed in the Patent.
Pfizer is marketing Sulbactam Ampicillin under
the brand name “Unasyn.”
Sometime in January and February 2003,
complainants came to know that respondent
[herein petitioner] submitted bids for the
supply of Sulbactam Ampicillin to several
hospitals without the consent of complainants
and in violation of the complainants' intellectual
property rights.
Pfizer wrote the above hospitals and demanded
that the latter immediately cease and desist
from accepting bids for the supply [of]
Sulbactam Ampicillin or awarding the same to
entities other than complainants. Complainants,
in the same letters sent through undersigned
counsel, also demanded that respondent
immediately withdraw its bids to supply
Sulbactam Ampicillin.
Respondents prayed for permanent injunction,
damages and the forfeiture and impounding of
the alleged infringing products. They also asked
for the issuance of a temporary restraining
order and a preliminary injunction that would
prevent herein petitioner, its agents,
representatives and assigns, from importing,
distributing, selling or offering the subject
product for sale to any entity in the Philippines.
Issue:
Whether Pfizer still holds monopoly over the
substance by virtue of their issued patent
Ruling:
No.
Section 37 of Republic Act No. (RA) 165, which
was the governing law at the time of the
issuance of respondents' patent, provides:
Section 37. Rights of patentees. A
patentee shall have the exclusive
right to make, use and sell the
patented machine, article or
product, and to use the patented
process for the purpose of industry
or commerce, throughout the
territory of the Philippines for the
term of the patent; and such
making, using, or selling by any
person without the authorization
of the patentee constitutes
infringement of the patent.
It is clear from the above-quoted provision of
law that the exclusive right of a patentee to
make, use and sell a patented product, article
or process exists only during the term of the
patent. In the instant case, Philippine Letters
Patent No. 21116, which was the basis of
respondents in filing their complaint with the
BLA-IPO, was issued on July 16, 1987.
On the basis of the foregoing, the Court agrees
with petitioner that after July 16, 2004,
respondents no longer possess the exclusive
right to make, use and sell the articles or
products covered by Philippine Letters Patent
No. 21116.
Patents (Sec. 21- 120)
Patent
- A set of exclusive rights granted by a
state to an individual or his assignee for
a fixed period of time in exchange for a
disclosure of an invention.
Three-fold purpose
1. To foster and reward invention
2. It promotes disclosures of inventions to
stimulate further invention and to
permit the public to practice the
invention once the patent expires;
3. The stringent requirements for patent
protection seek to ensure that ideas in
the public domain remain there for the
free use of the public.
Ultimate goal of a patent system: To bring new
designs and technologies into the public domain
through disclosures.
Patentable Invention – any technical solution of
a problem in any field of human activity which is
new, involves an inventive step and is
industrially acceptable.
Non-Patentable inventions- inventions which
are not patentable and are excluded from
patent protection.
1. Discoveries, scientific theories and
mathematical methods, and in the case
of drugs and medicines, the mere
discovery of a new form or new
property of a known substance which
does not result in the enhancement of
the known efficacy of that substance, or
the mere discovery of any new property
or new use for a known substance, or
the mere use of a known process unless
such known process results in a new
product that employs at least one
reactant.
2. Schemes, rules and methods of
performing mental acts, playing games
or doing business, and programs for
computers;
3. Methods for treatment of the human or
animal body by surgery or therapy and
diagnostic methods practiced on the
human or animal body. This provision
shall not apply to products and
composition for use in any of these
methods;
4. Plant varieties or animal breeds or
essentially biological process for the
production of plants or animals. This
provision shall not apply to
microorganisms and non-biological and
microbiological processes.
5. Aesthetic creations
6. Anything which is contrary to public
order or morality.
Elements of patentability
1. Novelty- an invention shall not be
considered new if it forms part of a
prior art;
2. Inventive step
3. Industrially acceptable
Filing Date – only when all the requirements
provided under Section 40 are complied with:
a. An express or implicit indication that a
Philippines patent is sought;
b. Information identifying the applicant
c. Description of the invention and one
more claims in Filipino or English
Failure to comply with the requirements, the
application shall be considered withdrawn.
If the date of filing cannot be accorded, the
applicant shall be given an opportunity to
correct the deficiencies, otherwise it shall be
considered as withdrawn.
Priority date
A person who has previously applied for the
same invention in another country which by
treaty, convention or law affords similar
privileges to Filipino citizens shall be considered
as filed as of the date of filing the foreign
application (sec.31)
- The local application expressly claims
priority
- Filed within 12 months from the date
the earliest foreign application was filed
- A certified copy of the foreign
application together with an English
translation is filed within 6 months from
the date of filing in the Philippines.
“First to file” Rule
-In case of two or more applications for
patent over the same invention, an
application with latter local filing date may
still be the preferred application over a
previous local filing date provided that it
has an earlier foreign application assuming
that the requirements are all complied with.
Non-prejudicial disclosure
Novelty requires that the thing is not yet known
to anyone besides the inventor. There are
however disclosure which will not prejudice the
application:
1. Made during the 12 months preceding
the filing date or the priority of the
application;
2. The disclosure was made by any of the
ff. persons:
a. The inventor
b. Patent office and the
information was contained in i.)
another application filed by the
inventor and should not have
been disclosed by the office. Ii)
in an application filed without
the knowledge or consent of
the inventor by a third party
which obtained the information
directly or indirectly from the
inventor;
c. A third party which obtained
the information directly or
indirectly from the inventor.
Ownership of Patent
1. If two or more persons have made the
invention separately and independently
of each other, the right to the patent
shall belong to the person who filed an
application for such invention
2. If there are two or more application for
the same invention, to the applicant
who has the earliest filing date, or the
earliest priority date.
Inventions created pursuant to a commission
or employment
1. Where the invention is made pursuant
to a commission, the person who
commissions the work shall be the
owner of the patent, unless there was
an agreement to the contrary
2. When an invention is made by an
employee in the course of the
employment contract:
a. The employee, if the inventive
step is not part of his regular
duties even if the employee
uses the time and materials of
the employer
b. The employer, if the invention
is the result of the performance
of his regularly assigned duties,
unless there is an agreement,
express or implied to the
contrary.
Right of Priority
A person who has previously applied for the
same invention in another country which by
treaty, convention or law affords similar
privileges to Filipino citizens shall be considered
as filed as of the date of filing the foreign
application (sec.31)
- The local application expressly claims
priority
- Filed within 12 months from the date
the earliest foreign application was filed
A certified copy of the foreign
application together with an English
translation is filed within 6 months from
the date of filing in the Philippines
Procedure for the grant of patent
1. Filing of the application
- Must be in Filipino or English and shall
contain the ff:
o A request for the grant of a
patent;
 o A description of the invention
o Drawings necessary for the
understanding of the invention
o One or more claims
o An abstract
- No patent may be granted, unless the
application identifies the inventor. If
the applicant is not the inventor, the
office may require the submission of
said authority.
- The application must disclose the
invention is such a manner sufficiently
clear and complete for it to be carried
out by a person skilled in the art.
- An application which concerns a
microbiological process and involves
the use of microorganism which cannot
be sufficiently disclose in the
application and such material is not
available to the public, such application
must be supplemented by a deposit of
such material.