UNIVERSITY OF SOUTHERN PHILIPPINES – FOUNDATION

College of Law
INTELLECTUAL PROPERTY LAW
LS 310
AY 2021-2022
Course Outline
Atty. Francisca P. Pilapil
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I. INTELLECTUAL PROPERTY RIGHTS
A. Historical Background
- Tañada vs. Angara GR No. 118295
- Mirpuri vs. Court of Appeals GR No. 114508
B. Non-Retroactivity of RA 8293
- Mighty Corporation v. E and J Gallo Winery GR No. 154342
It is a fundamental principle that the validity and obligatory force of a 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. Nova constitutio futuris formam imponere debet non praeteritis. A
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new state of the law ought to affect the future, not the past. Any doubt must generally be resolved
against the retroactive operation of laws, whether these are original enactments, amendments or
repeals. There are only a few instances when laws may be given retroactive effect, none of which is
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present in this case.

C. International Conventions and Reciprocity
- Melbarose R. Sasot and Allandale R. Sasot v. People of the Philippines GR No.
143193(NBA merchandise)
In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our
duties and the rights of foreign states under the Paris Convention for the Protection of Industrial
Property to which the Philippines and France are parties. We are simply interpreting and enforcing a
solemn international commitment of the Philippines embodied in a multilateral treaty to which we are
a party and which we entered into because it is in our national interest to do so.

The Court held that the crime of Unfair Competition punishable under Article 189 of the Revised
Penal Code is a public crime. It is essentially an act against the State and it is the latter which
principally stands as the injured party although there is a private right violated. The complainants
capacity to sue in such case becomes immaterial. Thus, the information shall be in the name of the
People of the Philippines and no longer the petitioner which is only an aggrieved party since a
criminal offense is essentially an act against the State. State is entitled to prosecute the offense
even without the participation of the private offended party, as the crime charged is a public crime.

D. Differences Between Copyrights, Patents and Trademarks

- Pearl and Dean Phil., Inc. v. Shoemart, Inc., and North Edsa Marketing, Inc. GR No.
148222 (light box)
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.[7] Accordingly, it can
cover only the works falling within the statutory enumeration or description.
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.
here can be no infringement of a patent until a patent has been issued, since whatever right one has to the
invention... covered by the patent arises alone from the grant of patent. x x x (A)n inventor has no
common law right to a monopoly of his invention. He has the right to make use of and vend his invention,
but if he voluntarily discloses it, such as by offering it for sale, the world... is free to copy and use it with
impunity. A patent, however, gives the inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, selling or using the invention
On the assumption that petitioner's advertising units... were patentable inventions, petitioner revealed
them fully to the public by submitting the engineering drawings thereof to the National Library.
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.[14] Ideas, once
disclosed to the public without the protection of a valid patent, are subject to appropriation without
significant restraint

- Elidad C. Kho v. Hon. Court of Appeals, Summerville General Merchandising Company

and Ang Tiam Chay GR No. 115758 (Chin Chun Su)
whether the copyright and patent over the name and container of a beauty cream product would entitle
the registrant to the use and ownership over the same to the exclusion of other
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 the 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.
- Fernando U. Juan v. Roberto U. Juan and Laundromatic Corporation GR No. 221732
(Lavandera Ko)
The above ruling is erroneous as it confused trade or business name with copyright.
By their very definitions, copyright and trade or service name are different. Copyright is the right of
literary property as recognized and sanctioned by positive law.[14] An intangible, incorporeal right
granted by statute to the author or originator of certain literary or artistic productions, whereby he is
invested, for a limited period, with the sole and exclusive privilege of multiplying copies of the same and
publishing and selling them.[15] Trade name, on the other hand, is any designation which (a) is adopted
and used by person to denominate goods which he markets, or services which he renders, or business
which he conducts, or has come to be so used by other, and (b) through its association with such goods,
services or business, has acquired a special significance as the name thereof, and (c) the use of which for
the purpose stated in (a) is prohibited neither by legislative enactment nor by otherwise defined public
policy.
"Lavandera Ko," the mark in question in this case is being used as a trade name or specifically, a service
name since the business in which it pertains involves the rendering of laundry services. Under Section
121.1 of R.A. No. 8293, "mark" is defined as 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. As such, the basic contention of the parties is, who has the better right to use "Lavandera Ko"
as a service name because Section 165.2[13] of the said law, guarantees the protection of trade names
and business names even prior to or without registration, against any unlawful act committed by third
parties.

II. INTELLECTUAL PROPERTY OFFICE

A. Jurisdiction
- Phil. Pharmawealth, Inc. v. Pfizer, Inc. and Pfizer Phil, Inc. GR No. 167715
It is true that under Section 7(b) of RA 8293, otherwise known as the Intellectual Property Code of
the Philippines, which is the presently prevailing law, the Director General of the IPO exercises
exclusive appellate jurisdiction over all decisions rendered by the Director of the BLA-IPO. However,
what is being questioned before the CA is not a decision, but an interlocutory order of the BLA-IPO
denying respondents' motion to extend the life of the preliminary injunction issued in their favor.

RA 8293 is silent with respect to any remedy available to litigants who intend to question an
interlocutory order issued by the BLA-IPO. Moreover, Section 1(c), Rule 14 of the Rules and
Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights
simply provides that interlocutory orders shall not be appealable. The said Rules and Regulations do
not prescribe a procedure within the administrative machinery to be followed in assailing orders
issued by the BLA-IPO pending final resolution of a case filed with them. Hence, in the absence of
such a remedy, the provisions of the Rules of Court shall apply in a suppletory manner, as provided
under Section 3, Rule 1 of the same Rules and Regulations. Hence, in the present case,
respondents correctly resorted to the filing of a special civil action for certiorari with the CA to
question the assailed Orders of the BLA-IPO, as they cannot appeal therefrom and they have no
other plain, speedy and adequate remedy in the ordinary course of law. 
In the first place, respondents' act of filing their complaint originally with the BLA-IPO is already in
consonance with the doctrine of primary jurisdiction.

- In-N-Out Burger, Inc. v. Sehwani, Inc. and/or Benita’s Frites, Inc., GR No. 179127
petitioner's complaint, which seeks the cancellation of the disputed mark in the name of respondent
Sehwani, Incorporated, and damages for violation of petitioner's intellectual property rights, falls within
the jurisdiction of the IPO Director of Legal Affairs.
The Intellectual Property Code also expressly recognizes the appellate jurisdiction of the IPO Director
General over the decisions of the IPO Director of Legal Affairs
the IPO Director of Legal Affairs had jurisdiction to decide the petitioner's administrative case against
respondents and the IPO Director General had exclusive jurisdiction over the appeal of the judgment of
the IPO Director of Legal Affairs.

III. LAW ON PATENTS

A. Patentable Inventions
- Jessie Ching vs. William Salinas, et. al., G.R. No. 161295, June 29, 2005
As gleaned from the description of the models and their objectives, these articles are useful articles which
are defined as one having an intrinsic utilitarian function that is not merely to portray the appearance of
the article or to convey information. Indeed, while works of applied art, original intellectual, literary and
artistic works are copyrightable, useful articles and works of industrial design are not.
A useful article may be copyrightable only if and only to the extent that such design incorporates
pictorial, graphic, or sculptural features that can be identified separately from, and are capable of
existing independently of the utilitarian aspects of the article.
Functional components of useful articles, no matter how artistically designed, have generally been
denied copyright protection unless they are separable from the useful article
[I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and attractively
shaped will not qualify it as a work of art.
B. Utility Models
-Jessie G. Ching v. William M. Salinas et al., GR No. 161295 (ibid.)
A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any
of the aforesaid. Essentially, a utility model refers to an invention in the mechanical field. This is the
reason why its object is sometimes described as a device or useful object. A utility model varies
from an invention, for which a patent for invention is, likewise, available, on at least three aspects:
first, the requisite of "inventive step" in a patent for invention is not required; second, the
maximum term of protection is only seven years compared to a patent which is twenty years, both
reckoned from the date of the application; and third, the provisions on utility model dispense with
its substantive examination and prefer for a less complicated system.
C. Ownership of a Patent
C.1. Right to a Patent
- Pearl & Dean (Philippines), Inc. vs. Shoemart, Inc., G.R. No. 148222, ibid
- E.I. DUPONT DE NEMOURS AND CO. v. DIRECTOR EMMA C. FRANCISCO, GR. No.
174379, August 31, 2016
D. Rights Conferred by a Patent
-Domiciano Aguas vs. Conrado De Leon, G.R. No. L-32160, January 30, 1982
- Manzano vs. Court of Appeals, G.R. No. 113388, September 5, 1997
- Precision Systems, Inc.,vs. Court of Appeals, G.R. No. 118708, February 2, 1998
- Del Rosario vs. Court of Appeals, 255 SCRA 152 (1996)
- Smith Kline Beckman Corporation vs. Court of Appeals, G.R. No. 126627, August 14,
2003
- Philippine Pharmawealth, Inc.,vs. Pfizer, Inc., G.R. No. 167715, November 17, 2010
 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.

-Roma Drug and Romeo Rodriguez v. RTC of Guagua, Pampanga, BFAD and Glaxo
SmithKline GR No. 149907
E. Patent Infringement
a. Tests in Patent Infringement
a.i. Literal Infringement
- Pascual Godines vs. Court of Appeals, G.R. No. 97343, September 13, 1993
a.ii. Doctrine of Equivalents
-Pascual Godines vs. Court of Appeals, G.R. No. 97343, ibid
-Smith Kline Beckman Corporation vs. Court of Appeals, G.R. No. 126627, ibid
b. Defenses in Action for Infringement
- Rosario Maguan vs. Court of Appeals, G.R. L-45101, November 28, 1986
-Schuartz vs. CA, GR No. 113407, July 12, 2000
- Creser Precision System vs.CA, GR No. 118708,Feb. 2, 1998
- G. Sell v. Yap Jue, 12 Phil 519, 1909
F. Licensing
- Prince vs. United Laboratories, Inc.,166 SCRA 133 (1988)
IV. LAW ON TRADEMARK
A. CONCEPT
- Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No. 114508, November 19, 1999
- INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. HON. PAQUITO
OCHOA, G .R. No. 204605, July 19, 2016
B. ACQUIRING A MARK
-Birkenstock Orthopädie GmbH and Co. KG vs. Philippine Shoe Expo Marketing Corp.
GR No. 194307 (2013)
-Unno Commercial vs. Gen. Milling Corp, 205 Phils.707
-E.Y. Industrial Sales vs. Shien Dar Electricity and Machinery Co., G.R. No. 184850,
-Superior Commercial Enterprises, Inc. vs. Kunnan Enterprises Ltd. and Sports Concept
& Distributor, Inc., G.R. No. 169974, April 20, 2010
-Taiwan Kolin Corporation, LTD. vs. Kolin Electronics Co., Inc.,G.R. No. 209843
-Emerald Garment Manufacturing Corporation v. H.D. Lee Company, Inc., G.R. No.
210693
C. FUNCTIONS
- Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No. 114508, November 19, 1999 (ibid.)
- Societé Des Produits Nestlé S.A. vs. Court of Appeals, GR No. 112012 (2001)
D. NON-REGISTRABLE MARKS
- Fredco Manufacturing Corp. vs. President and Fellows of Harvard College GR No.
185917 (2011)
- Lyceum of the Philippines vs. Court of Appeals, 219 SCRA 610 (1993)
- Kensonic, Inc. v. Uni-Line Multi-Resources, Inc., (Phil.), G.R. Nos. 211820-21 & 211834-
35, [June 6, 2018]
E. IDENTICAL MARK WITH RESPECT TO:
a) same goods or services
-Mc Donald's Corp. vs. LC Big Mak Burger, GR No. 243993, August 18, 2004
-Mc Donald's Corp. vs. MacJoy Fastfood Corporation,GR No 16615, February 2, 2007
-Mang Inasal Phils., Inc. vs. IFP Manufacturing Corporation GR No. 221717 (2017)
b) dissimilar goods
- Mighty Corp. vs. E.J Gallo Winery G.R. No. 154342 (2004)
c) closely related goods
c.i. concept of confusion of goods vs. confusion of business
- Ana Ang vs. Toribio Teodoro GR No. L-48226 (1942)
F. TESTS TO DETERMINE CONFUSING SIMILARITY BETWEEN MARKS
a. In General
- Skechers, USA Inc vs. Inter Pacific Industrial Corp., GRN. 164321, Mar. 23, 2011
b. Dominancy Test
- Societe Des Produits Nestle, S.A. vs. Martin T. Dy GR No. 172276 (2010)
- Berries Agricultural Co., Inc. vs. Norvy Abyadang GR No. 183404 (2010)
- Asia Brewery, Inc., vs. The Honorable Court of Appeals and San Miguel Corporation
GR No. 103543 (1993)
- Prosource International vs. Horphag Research Management, SA, GR No.
180073, Nov. 25, 2009
- Mang Inasal Phils., Inc. vs. IFP Manufacturing Corporation GR No. 221717(2017) ibid.
-Kolin Electric Co. Inc., vs. Kolin Phils. Intl., Inc. GR no. 228165 (2021)
c. Holistic Test
- Del Monte Corp. vs. CA GR No. L-78325 (1990)
- Fruit of the Loom, Inc vs. CA and General Garments Corporation GR No. L-32747
(2004)
d. Use of Both Tests
- Berries Agricultural Co., Inc. vs. Norvy Abyadang GR No. 183404 (2010), ibid.
- Wilton Dy and/or Philites Electronic and Lighting Products vs. Koninklijke Philips
Electronics, N.V. GR No. 186088 (2017)
G. WELL-KNOWN MARKS
- Fredco Manufacturing Corp. vs. President and Fellows of Harvard College GR No.
185917 (2011), ibid.
- 246 Corporation vvs. Hon. Reynadlo B. Daway GR No. 157216 (2003)
- Ecole De Cuisine Manille Inc. vs. CIE and Le Cordon Bleu Intl., B.V. GR No.
185830 (2013)
H. GENERIC MARKS
- Societé Des Produits Nestlé S.A. vs. Court of Appeals, GR No. 112012 (2001), ibid.
- Lyceum of the Philippines vs. Court of Appeals, 219 SCRA 610 (1993), ibid.
- Asia Brewery, Inc., vs. The Honorable Court of Appeals and San Miguel
Corporation GR No. 103543 (1993), ibid.
I. MARKS INDICATING GEOGRAPHICAL ORIGIN
- GSIS Family Bank vs. BPI Family Bank GR No. 175278 (2015)
- Shang Properties Realty Corp. and Shang Properties, Inc. vs. St. Francis Development
Corp. GR No. 190706 (2014)
J . DECLARATION OF ACTUAL USE
- W Land Holdings, Inc. vs. Starwood Hotels and Resorts Worldwide, Inc. GR No.
222366 (2017)
K. EXCLUSIVE RIGHT OVER THE MARK
- Dermaline, Inc. vs. Myra Pharmaceuticals, Inc. GR No. 190065 (2010)
L. CANCELLATION OF TRADEMARK REGISTRATION
-Caterpillar, Inc., vs. Manolo Samson GR No. 164352 (2016)
M. REMEDIES AGAINST TRADEMARK INFRINGEMENT
- Prosource International Inc., vs. Horphag Research Management SA GR No. 180073
(2009)
N. TRADEMARK DILUTION
- Levi Strauss and Co. vs. Clinton Apparelle, Inc., GR No. 138900
O. TRADENAME PROTECTED EVEN WITHOUT REGISTRATION
- Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc. GR No. 169504 (2010)
a trade name need not be registered with the IPO before an infringement suit may be filed by its
owner against the owner of an infringing trademark. All that is required is that the trade name is
previously used in trade or commerce in the Philippines
P. CORPORATE NAME
- GSIS Family Bank vs. BPI Family Bank GR No. 175278 (2015), ibid.
Q. UNFAIR COMPETITION
a. Nature
-Coca-Cola Bottlers, Phils., Inc. Naga Plant vs. Quinitin J. Gomez and Danilo E. Galicia
GR No. 154491 (2008)
b. Elements of Unfair Competition
- Mc Donald's Corp. vs. LC Big Mak Burger, GR No. 243993,August 18, 2004, ibid.
c. Unfair Competition vis-à-vis Used Containers
- Del Monte Corporations vs. Court of Appeals GR No. L-78325 (1990)
R. FALSE DESIGNATION OF ORIGIN
- Chester Uyco et., al., vs. Vicente Lo GR No. 202423 (2013)
S. UNFAIR COMPETITION UNDER ART. 28 OF THE NEW CIVIL CODE
- Willaware Products Corporation vs. Jesichris Manufacturing Corporation GR No.
195549 (2014)
T. PENAL PROVISION FOR TRADEMARK INFRINGEMENT
- Juno Batistis vs. People of the Philippines GR No. 181571 (2009)
V. LAW ON COPYRIGHT
A. CONCEPT OF COPYRIGHT
-Feist Publications vs. Rural Telephone 499 US 340 (1991)
-Elidad Kho vs. CA GR No 115758
- Malang Santos vs. McCullough Printing Co., GR No. 19439,
-Filipino Society of Composers, Authors and Publishers vs. Benjamin Tan, GR No. L
36402
-Ching vs. Salinas, GR No. 161295
-Manly Sportwear Manufacturing Inc.vs. Dadodette, GR No. 165306
B. DISTINGUISHED FROM PATENTS
-Pearl and Dean vs. Shoemart GR No 148222 (ibid.)
C. COPYRIGHTABLE WORKS
a. Original Works
b. Derivative Works
- United Features vs. Munsingwear Creation, 179 SCRA 260 (1989)
- Unilever Philippines Inc. vs. Court of Appeals, G.R. No. 119280
- Sambar vs. Levi Strauss & Co. GR No. 132604
-Bayanihan Music vs. BMG, Jose Mari Chan, GR No. 166337
D. NON-COPYRIGHTABLE WORKS
- Francisco Joaquin, Jr. vs. Franklin Drilon, et. al., G.R. No. 108946
· Pearl & Dean Inc. vs. Shoemart, Inc., G.R. No. 148222, ibid
-ABS-CBN Corp. vs. Gozon, et. al., GR No. 195956
-SISON OLAÑO v. LIM ENG CO, G.R. No. 195835
E. COPYRIGHT OWNERSHIP
- Columbia Pictures, Inc. vs. Court of Appeals, 261 SCRA 144 (1996)
F. LIMITATIONS ON COPYRIGHT
a. Doctrine of Fair Use
b. Permitted Use
- ABS-CBN Broadcasting Corporation vs. Philippine Multi-Media System, Inc., G.R. Nos.
175769-70
- Habana vs. Robles GR No. 131522
- GMA Network Inc., vs. Central CATV Inc., G.R. No. 176694
G. COPYRIGHT INFRINGEMENT
- Laktaw vs. Paglinawan GR No. L-11937
- NBI-Microsoft Corporation vs. Judy Hwang, et. al., G.R. No. 147043
- Filipino Society of Composers, Authors and Publishers, Inc. vs. Benjamin Tan, G.R. No.
L-36402 (ibid.)
- Columbia Pictures Inc. vs. CA, 237 SCRA 367 (1994)
- Microsoft Corp.vs. Maxicorp Inc., GR No. 140946
- 20th Century Fox Film Corp v. CA, GR No. L- 76649-51
H. EFFECT OF REGISTRATION AND DEPOSIT OF WORK
-Manly Sportwear Manufacturing Inc.vs. Dadodette, GR No. 165306 (ibid.)
VI. RULES OF PROCEDURE FOR INTELLECTUAL PROPERTY RIGHTS CASES
A. 2020 Revised Rules of Procedure for Intellectual Property Rights Cases
-AM No. 10-3-10-SC
a.i. Jurisdiction
-Samson vs. Daway GR Nos. 160054-55 (2004)
-Andre Tan, et al. vs. Bausch and Lomb, Inc. GR No. 148420 (2005)
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