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INTELLECTUAL PROPERTY LAW

INTELLECTUAL PROPERTY LAW REVIEWER RA 8293, as amended by RA 9150 INTELLECTUAL GENERAL I State Policies Sec. 2. Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. II Intellectual Property Rights Sec. 4.1 The term "intellectual property rights" consists of: 1. Copyright and Related Rights; 2. Trademarks and Service Marks; 3. Geographic Indications; 4. Industrial Designs; 5. Patents; PROPERTY RIGHTS IN 6. Layout-Designs (Topographies) of Integrated Circuits; and 7. Protection of Undisclosed Information [TRIPS]. Kho v. CA, et al., 379 SCRA 410 [2002] 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. III Reverse Reciprocity Sec. 231. Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. PATENTS I What are Patentable 1. Inventions Sec. 21. Patentable Inventions. - Any technical solution of a problem in any field

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of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 7, RA 165a) Sec. 23. Novelty. - An invention shall not be considered new if it forms part of a prior art. (Sec. 9, RA 165a) Sec. 24. Prior Art. - Prior art shall consist of: 24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and 24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same. (Sec. 9, RA 165a) Sec. 26. Inventive Step. - An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. Sec. 27. Industrial Applicability. - An invention that can be produced and used in any industry shall be industrially applicable. 2. Utility Model Sec. 109.1 (a) An invention qualifies for registration as a utility model if it is new and industrially applicable. (b) Section 21, "Patentable Inventions", shall apply except the reference to inventive step as a condition of protection. 3. Industrial Designs Sec. 112.1 An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft; 4. Lay-out Designs Integrated Circuits (Topographies) of

Sec. 112.2 Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function; and Sec. 112.3 Layout-Design is synonymous with 'Topography' and means the threedimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.

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Exclusions from Patent Protection Sec. 22. Non-Patentable Inventions. The following shall be excluded from patent protection: 22.1. Discoveries, scientific theories and mathematical methods; 22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 22.3 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; 22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and nonbiological and microbiological processes. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection: 22.5. Aesthetic creations; and 22.6. Anything which is contrary to public order or morality. (Sec. 8, RA 165a) First-To-File Rule Sec. 29. First to File Rule. - If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. (3rd Sentence, Sec. 10, RA 165a.) II Right of Priority Sec. 31. Right of Priority. - An application for patent filed by any 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: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (12) months from the date the earliest foreign application was filed; and (c) a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines. (Sec. 15, RA 165a) III Contents of the Application for Patent Sec. 32. The Application. 32.1. The patent application shall be in Filipino or English and shall contain the following: (a) A request for the grant of a patent; (b) A description of the invention; (c) Drawings necessary for the understanding of the invention; (d) One or more claims; and (e) An abstract.

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(Sec. claims and drawings in preferably not more than one hundred fifty (150) words.1. (Sec. The Request. and such material is not available to the public. 35. If any of these elements is not submitted within the period set by the Regulations. Disclosure and Description of the Invention.2. The Abstract. and the principal use or uses of the invention. If the date of filing cannot be accorded. 36. 34.2. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements: (a) An express or implicit indication that a Philippine patent is sought.1. the Office may require him to submit said authority. . the name and other data of the applicant.The Regulations shall prescribe the contents of the description and the order of presentation. RA 165a) Sec. and (c) Description of the invention and one (1) or more claims in Filipino or English.2. Sec. the inventor and the agent and the title of the invention. Disclosure. 41. If the applicant is not the inventor. . the gist of the solution of that problem through the invention. Where the application concerns a microbiological process or the product thereof and involves the use of a microorganism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art.1. 40. and shall be supported by the description.The request shall contain a petition for the grant of the patent.The Office shall examine whether the patent application satisfies the requirements for the grant of date of filing as provided in Section 40 hereof. IV Procedure for Grant of Patent 1. 40. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. RA 165a) Sec. 13.The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. the applicant shall be given an opportunity to correct the deficiencies in accordance with the implementing Regulations. Filing Date Sec. 36. Sec. 14. .The abstract shall consist of a concise summary of the disclosure of the invention as contained in the description. 35.INTELLECTUAL PROPERTY LAW 32. The abstract shall merely serve for technical information. 36.2. Filing Date Requirements. The Regulations shall prescribe the manner of the presentation of claims. (b) Information identifying the applicant. the application shall be supplemented by a deposit of such material with an international depository institution. It must be drafted in a way which allows the clear understanding of the technical problem. . the application shall be considered withdrawn. 40. Sec. 37. According a Filing Date. 35. Each claim shall be clear and concise. The Claims. If the JUNE S RADI COPYRIGHT 2010 . No patent may be granted unless the application identifies the inventor. . Description.

any person may present observations in writing concerning the patentability of the invention. (Sec.2. may prohibit or restrict the publication of an application. 4.INTELLECTUAL PROPERTY LAW application does not contain all the elements indicated in Section 40. Publication Sec. After publication of a patent application. shall not be made available for inspection without the consent of the applicant. 44. . The patent application shall be published in the IPO Gazette together with a search document established by or on behalf of the Office citing any documents that reflect prior art. Formality Examination. if in his opinion. 45. 44. The Director General. 5. . and all related documents. subject to the approval of the Secretary of Trade and Industry. a written request to JUNE S RADI COPYRIGHT 2010 . Formality Examination Sec. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. otherwise the application shall be considered withdrawn. 48. Request Examination.2. Classification and Search Sec. 42. Inspection Sec. the application shall be considered withdrawn. to do so would be prejudicial to the national security and interests of the Republic of the Philippines.A patent application. 42. After the patent application has been accorded a filing date and the required fees have been paid on time in accordance with the Regulations. Observation by Third Parties. Sec. RA 165a) 3. any interested party may inspect the application documents filed with the Office.1. The Regulations shall determine the procedure for the reexamination and revival of an application as well as the appeal to the Director of Patents from any final action by the examiner. after the expiration of eighteen (18) months from the filing date or priority date. Request for Substantive Examination Sec. for Substantive 48. 42. 44. 44.An application that has complied with the formal requirement shall be classified and a search conducted to determine the prior art. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41. Classification and Search. the applicant shall comply with the formal requirements specified by Section 32 and the Regulations within the prescribed period. Confidentiality Before Publication. Publication of Patent Application. Following the publication of the patent application.3. Such observations shall be communicated to the applicant who may comment on them. which has not yet been published. 47.1.1. 6. 16. 43. 2. If the deficiencies are not remedied within the prescribed time limit. Sec. the filing date should be that date when all the elements are received.

71. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette.An applicant may amend the patent application during examination: Provided. (Sec. 52. RA 165a) V Rights Conferred by Patent Sec. RA 165a) Sec. 51. Grant of Patent. and from manufacturing. the application shall be deemed to be withdrawn.1. 48. Refusal of the Application. 7. 50. 8. 52. prevent or prohibit any unauthorized person or entity from using the process. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. 18. to restrain. 71. 51. Any interested party may inspect the complete description. Publication Upon Grant of Patent.2. selling or importing that product. If the required fees for grant and printing are not paid in due time. 50.1. or importing any product obtained directly or indirectly from such process.2. That all the fees are paid on time. A patent shall confer on its owner the following exclusive rights: (a) Where the subject matter of a patent is a product. The final order of refusal of the examiner to grant the patent shall be appealable to the Director in accordance with this Act. 50.3. .2. Publication of the Grant of Patent Sec. If the application meets the requirements of this Act. 37. Patent owners shall also have the right to assign. Rights Conferred by Patent.1. offering for sale. dealing in. to restrain. SEC. 49. Amendment of Application. 52. That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. (Sec. using. and to conclude licensing contracts for the same. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be undertaken. selling or offering for sale.1. The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by the Regulations. or transfer by succession the patent. 51. - (b) 71. 18.2. (Sec.INTELLECTUAL PROPERTY LAW determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time. using. and drawings of the patent on file with the Office. claims. the Office shall grant the patent: Provided. RA 165a) JUNE S RADI COPYRIGHT 2010 .2. Grant or Refusal of Application Sec. 50. prohibit and prevent any unauthorized person or entity from making. Where the subject matter of a patent is a process.

That it does not significantly prejudice the economic interests of the owner of the patent. The registration of an industrial design shall be for a period of five (5) years from the filing date of the application. vessel.3.The term of a patent shall be twenty (20) years from the filing date of the application. in a pharmacy or by a medical professional.5. 72. 118. of the layout-design by or with the consent of the right holder: Provided. Where the invention is used in any ship. . 54. without any possibility of renewal. Limitations of Patent Rights. VII Limitations on Rights of Patentees Sec.2. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each. Using a patented product which has been put on the market in the Philippines by the owner of the product. Term of Patent. of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared.1.5. 118. That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation. Where the act is done privately and on a non-commercial scale or for a noncommercial purpose: Provided. aircraft. A utility model registration shall expire. 109. RA 165a) Sec. 72.The owner of a patent has no right to prevent third parties from performing. xxx xxx xxx 118. That such invention is used exclusively for the needs b) JUNE S RADI COPYRIGHT 2010 . . without his authorization. 72. Registration of a layout-design shall be valid for a period often (10) years.3.INTELLECTUAL PROPERTY LAW VI Term Sec. or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided. or on the filing date accorded to the application for the registration of the layout-design if the layout-design has not been previously exploited commercially anywhere in the world. . The Term of Industrial Design or Layout-Design Registration.2. anywhere in the world. or with his express consent. insofar as such use is performed after that product has been so put on the said market. 21.118.4. 72. (Sec.1. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention. and such validity to be counted from the date of commencement of the protection accorded to the layout-design. Sec. 72. without renewal. at the end of the seventh year after the date of the filing of the application. by paying the renewal fee. The protection of a layout-design under this Act shall commence: a) on the date of the first commercial exploitation. the acts referred to in Section 71 hereof in the following circumstances: 72. Where the act consists of the preparation for individual cases.

Damages. (Sec. The making. 74. 73. so requires. vessel. Notwithstanding Section 72 hereof. - JUNE S RADI COPYRIGHT 2010 . The use by the Government. to recover from the infringer such damages sustained thereby. national security. Civil Action Sec. or importing a patented product or a product obtained directly or indirectly from a patented process. and to secure an injunction for the protection of his rights. are placed the words "Philippine Patent" with the number of the patent. may bring a civil action before a court of competent jurisdiction. Prior User. or (b) A judicial or administrative body has determined that the manner of exploitation. Use of Invention by Government. 76. RA 165a) Sec. or on the advertising material relating to the patented product or process. or third person authorized by the 76. or on the container or package in which the article is supplied to the public. by the owner of the patent or his licensee. Requirement of Notice. or had reasonable grounds to know of the patent. or the use of a patented process without the authorization of the patentee constitutes patent infringement. 40. RA 165a) Sec.1. is anti-competitive. 74. nutrition. 73. before the filing date or priority date of the application on which a patent is granted. Civil Action for Infringement. as determined by the appropriate agency of the government. Any patentee. 74. health or the development of other sectors. mutatis mutandis.2. or anyone possessing any right. Damages cannot be recovered for acts of infringement committed before the infringer had known.2. or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. 44. Government shall be subject. 73. to the conditions set forth in Sections 95 to 97 and 100 to 102. RA 165a) IX Patent Infringement 1. who. offering for sale. aircraft. It is presumed that the infringer had known of the patent if on the patented product. title or interest in and to the patented invention. in particular.INTELLECTUAL PROPERTY LAW of the ship. (Secs. 38 and 39. in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business. (Sec. plus attorney¶s fees and other expenses of litigation. selling. (Sec. whose rights have been infringed.1. A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: (a) the public interest. The right of the prior user may only be transferred or assigned together with his enterprise or business. using. RA 165a) VIII Notice Requirement Sec.1. 76. any prior user. 80. or with that part of his enterprise or business in which the use or preparations for use have been made.2. 41. shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.

000) but not more than Three hundred thousand pesos (P300.. The court may. the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications. the court may award by way of damages a sum equivalent to reasonable royalty. (Sec. RA 165a) X Tests of infringement Godines v. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. an infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and. 42. In using literal infringement as a test. in its discretion. et al.6. materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed. albeit with some modification and change. award damages in a sum above the amount found as actual damages sustained: Provided. CA. These are [a] literal infringement. Inc. (Sec. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime. without prejudice to the institution of a civil XI Patent infringement Creser Precision Systems. 76.3.000). without compensation. according to the circumstances of the case. under the doctrine of equivalents. order that the infringing goods. to determine whether there is exact identity of all material elements. the offenders shall. 84. and [b] the doctrine of equivalents. CA. upon conviction. That the award does not exceed three (3) times the amount of such actual damages. JUNE S RADI COPYRIGHT 2010 . at the discretion of the court. On the other hand.INTELLECTUAL PROPERTY LAW 76.5. shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100. be criminally liable therefor and.If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer. Moreover. If the damages are inadequate or cannot be readily ascertained with reasonable certainty. resort must be had in the first instance to the words of the claim. there can be no infringement of a patent until a action for damages. Criminal Action for Repetition of Infringement. 76. Criminal Action Sec. 226 SCRA 576 [1993] Tests have been established to determine infringement. The court may. performs substantially the same function in substantially the same way to achieve substantially the same result. 286 SCRA 13 [1998] Only the patentee or his successor-in-interest may file an action for infringement. . To determine whether the particular item falls within the literal meaning of the patent claims.4. 76. 48. v. RA 165a) 2.

To encourage the transfer and dissemination of technology. Sec.INTELLECTUAL PROPERTY LAW patent has been issued. Those that contain restrictions regarding the volume and structure of production. and other technologies. Voluntary License Contract.5. 87.3. or of permanently employing personnel indicated by the licensor. the venue shall be the proper court in the place where the licensee has its principal office.4. .3. Those that establish a full or partial purchase option in favor of the licensor. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology. In short. Sec. Those which impose upon the licensee the obligation to acquire from a specific source capital goods. 88. 85. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement.1. has no cause of action for infringement because the right to maintain an infringement suit depends upon the existence of a patent. Mandatory Provisions. and 88. 88. XII Voluntary Licensing Sec. all technology transfer arrangements shall comply with the provisions of this Chapter. 87. the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country.1.2.4. 88. . . The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor. Prohibited Clauses.2. In the event the technology transfer arrangement shall provide for arbitration. 87. prevent or control practices and conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition and trade. 87. a person or entity who has not been granted letter of patent over an invention and has not acquired any rights or title thereto either as an assignee or a licensee.6. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation. 87. Those that prohibit the use of competitive technologies in a nonexclusive technology transfer agreement. raw materials.Except in cases under Section 91. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license. 87.The following provisions shall be included in voluntary license contracts: 88. since whatever right one has to the invention covered by the patent arises alone from the grant of patent. intermediate products. the following provisions shall be deemed prima facie to have an adverse on competition and trade: 87. JUNE S RADI COPYRIGHT 2010 .

or 93.15. Those which exempt the licensor for liability for non-fulfillment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted. Those which prevent the licensee from adapting the imported technology to local conditions.3. In case of public non-commercial use of the patent by the patentee.2. Those which restrict the research and development activities of the licensee designed to absorb and adapt the transferred technology to local conditions or to initiate research and development programs in connection with new products. processes or equipment.8. even without the agreement of the patent owner. 93. 87. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement.5. (Sec.INTELLECTUAL PROPERTY LAW 87. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive. National emergency or other circumstances of extreme urgency. 87. in particular. without satisfactory reason: Provided. 87. nutrition. The Director of Legal Affairs may grant a license to exploit a patented invention. 87. Where the public interest. under any of the following circumstances: 93. 93. That the importation of the patented article JUNE S RADI COPYRIGHT 2010 . without satisfactory reason. Those which require payments for patents and other industrial property rights after their expiration.14.4. as long as it does not impair the quality standards prescribed by the licensor. 87.1.10. or introducing innovation to it. 33-C[2].9. although capable of being worked.13. in favor of any person who has shown his capability to exploit the invention. except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee. Those that require payment of royalties to the owners of patents for patents which are not used. 93. If the patented invention is not being worked in the Philippines on a commercial scale. or 93. and 87.7.12. RA 165a) XIII Compulsory Licensing Sec. 87. Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier. Grounds for Compulsory Licensing. 87. so requires. termination arrangement. health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government.11. Other clauses with equivalent effects. national security.

2. Cancellation of Patents. in books and records kept for the purpose. a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention." within the country cannot be worked without infringing another patent. 105. Recording.1. Upon recording. The original documents together with a signed duplicate thereof shall be filed. RA 165a) Assignment and Transfer of Patent Sec.4. unless. or of an undivided share of the entire patent and invention.3. 51. and certified under the hand and official seal of the notary or such other officer. the Office shall retain the duplicate. (Sec. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent. hereafter referred to as the "second patent. An assignment may be limited to a specified territory. 97. 34. 52." granted on a prior application or benefiting from an earlier priority. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent. . The terms and conditions of Sections 95. title or interest in and to inventions. (Secs. . 53. 97. hereafter referred to as the "first patent.The assignment must be in writing. within three (3) months from the date of said instrument. licenses and other instruments relating to the transmission of any right. Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice.1. 106. or prior to the subsequent purchase or mortgage. 106. and 34-B. 34-C. in which event the parties become joint owners thereof. RA 165a) Cancellation of Patent Sec. - JUNE S RADI COPYRIGHT 2010 .INTELLECTUAL PROPERTY LAW shall constitute working or using the patent. The Office shall record assignments. 61. Assignment of Inventions. If the original is not available. (Sec. 106. and patents or application for patents or inventions to which they relate. RA 165) Sec. subject to the following conditions: 97. and 97.An assignment may be of the entire right. an authenticated copy thereof in duplicate may be filed. RA 165a) Sec. . 96 and 98 to 100 of this Act. Form of Assignment. which are presented in due form to the Office for registration. title or interest in and to the patent and the invention covered thereby. acknowledged before a notary public or other officer authorized to administer oath or perform notarial acts. Compulsory License Based on Interdependence of Patents. 104. RA 165) Sec. and the contents thereof should be kept confidential. (Sec. return the original or the authenticated copy to the party who filed the same and notice of the recording shall be published in the IPO Gazette. it is so recorded in the Office. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent. 97.If the invention protected by a patent. 34-A.2. (Sec.

include a statement of the facts to be relied upon. 30. .1. or parts of the claim. RA 165a) INDUSTRIAL DESIGNSAND LAY-OUT DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS I Substantive Conditions for Protection Sec. or (c) That the patent is contrary to public order or morality. 63. specify the grounds upon which it is based.The rights conferred by the patent or any specified claim or claims cancelled shall terminate. 113. and other supporting documents mentioned in the petition shall be attached thereto. upon payment of the required fee. Notice of the filing of the petition shall be published in the IPO Gazette.1. (b) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art. (Sec. 66. 62. the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants or licenses. RA 165) Sec. 31. (Sec. 113. Any interested person may. Effect of Cancellation of Patent or Claim.2. 28 and 29.The petition for cancellation shall be in writing. Substantive Conditions for Protection. if not in English language. cancellation may be effected to such extent only. verified by the petitioner or by any person in his behalf who knows the facts. Only layout -designs of integrated circuits that are original shall benefit from protection under this Act. and of notice of the date of hearing thereon on such persons and the petitioner. (Sec. Notice of the cancellation shall be published in the IPO Gazette. on any of the following grounds: (a) That what is claimed as the invention is not new or patentable. Requirement of the Petition. . RA 165a) Sec. 113. 32. title or interest in and to the patent and the invention covered thereby. (Secs. A layout-design shall be considered original if it is the result of its creator's own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation. Where the grounds for cancellation relate to some of the claims or parts of the claim.113. 113. Notice of Hearing. Copies of printed publications or of patents of other countries. RA 165a) Sec. Only industrial designs that are new or ornamental shall benefit from protection under this Act.Upon filing of a petition for cancellation. petition to cancel the patent or any claim thereof. and filed with the Office. Unless restrained by the Director General. or any other right. health or morals shall not be protected. . the decision or order to cancel by Director of Legal Affairs shall be immediately executory even pending appeal.3. together with the translation thereof in English. A layout-design consisting of a combination of elements and interconnections that are commonplace JUNE S RADI COPYRIGHT 2010 . .2.INTELLECTUAL PROPERTY LAW 61.4. 61. as appears of record in the Office. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order.

Where the act is performed in respect of a layout-design created on the basis of such analysis or evaluation and which is itself original in the meaning as provided herein. Cancellation of Design Registration. That after the time that such person has received sufficient notice that the layout-design was unlawfully reproduced. the registered layout-design in its entirety or any part thereof. selling or otherwise distributing for commercial purposes the registered layoutdesign in the following circumstances: (1) Reproduction of the registered layout-design for private purposes or for the sole purpose of evaluation. and to sell or otherwise distribute for commercial purposes the registered layout design. The owner of a layout design has no right to prevent third parties from reproducing. Where the act is performed in respect of a registered lay-out- Grounds for Cancellation of Registration Sec. research or teaching. 119. At any time during the term of the industrial design registration. (6) (5) design. Rights Conferred on Registered Owner of Lay-out Design Sec.INTELLECTUAL PROPERTY LAW shall be protected only if the combination. In respect of an integrated circuit where the person performing or ordering such an act did not know and had no reasonable ground to know when acquiring the integrated circuit or the article incorporating such an integrated circuit.4. any person upon payment of the required fee. analysis.The owner of a layout-design registration shall enjoy the following rights: (1) to reproduce. however. Limitations of Layout Rights. 120. that has been put on the market by or with the consent of the right holder. is original. 119. taken as a whole. . ± 120.1. or in respect of an integrated circuit in which such a layout-design is incorporated. an article or an integrated circuit in which the registered layout-design is incorporated. that it incorporated an unlawfully reproduced layout-design: Provided. may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds: (3) (4) JUNE S RADI COPYRIGHT 2010 . except the act of reproducing any part that does not comply with the requirement of originality.5. Rights Conferred to the Owner of a Layout-Design Registration. or Where the act is performed in respect of an identical layout-design which is original and has been created independently by a third party. whether by incorporation in an integrated circuit or otherwise. that person may perform any of the said acts only with respect to the stock on hand or ordered before such time and shall be liable to pay to the right holder a sum equivalent to at least 5% of net sales or such other reasonable royalty as would be payable under a freely negotiated license in respect of such layoutdesign. (2) Sec.

RA 166a) 121.2.. (Sec.1. shall be regarded as null and void from the beginning and may be expunged from the records of the Intellectual Property Office. In order to be entitled to exclusively use the same in the sale of the beauty cream product. 120. et al. The restriction may be effected in the form of an alteration of the effected features of the design. or (c) If the subject matter of the industrial design extends beyond the content of the application as originally filed. "Trade name" means the name or designation identifying or distinguishing an enterprise. RA 166a) Product name and container not proper subjects of copyright and patent registration Kho v. cancellation may be effected to such extent only. Definitions. Any canceled layout-design registration or part thereof. the user must sufficiently prove that she registered or used it before anybody else did.INTELLECTUAL PROPERTY LAW (a) If the subject matter of the industrial design is not registerable within the terms of Sections 112 and 113. CA.3. 38. 38. .As used in Part III. Where the grounds for cancellation relate to a part of the industrial design. Grounds for Cancellation of Layout-Design of Integrated Circuits. including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. 379 SCRA 410 [2002] The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. 120. was not filed within two (2) years from its first commercial exploitation anywhere in the world. (b) If the subject matter is not new. the following terms have the following meanings: 121. 121. or where the application for registration of the layoutdesign. "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic. all canceled layout-design registration shall be published in the IPO Gazette.Any interested person may petition that the registration of a layout-design be canceled on the ground that: (a) (b) (c) the layout-design is not protectable under this Act.2. only the corresponding part of the registration shall be canceled. the right holder is not entitled to protection under this Act. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. (Sec. 40. Reference to JUNE S RADI COPYRIGHT 2010 . 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 Where the grounds for cancellation are established with respect only to a part of the layout-design. (Sec.3. RA 166a) 121. TRADEMARKS Marks and Names Sec.

165. Consequently. signature. Acquisition of Ownership Sec. or national symbols. (Sec. it is contrary to public order or morals and if. . portrait or signature identifying a particular living individual except by his written consent. Otherwise. living or dead. 122. institutions. beliefs.INTELLECTUAL PROPERTY LAW appropriate subjects of the said intellectual rights.2. (a) Notwithstanding any laws or regulations providing for any obligation to register trade names. not having proven that she has registered a trademark thereto or used the same before anyone did. 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. in particular. RA 166a) (b) Sec. the application shall be refused or the mark shall be removed from the Register by the Director. such names shall be protected. any subsequent use of the trade name by a third party. A mark cannot be registered if it: (a) Consists of immoral. during the life of his widow. 124. or of any foreign nation. or any such use of a similar trade name or mark. except by written consent of the widow. Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date. or the name. or any simulation thereof. (b) In particular. it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect. Is identical with. against any unlawful act committed by third parties. Consists of a name. or portrait of a deceased President of the Philippines. 123. or 3) If it nearly resembles such a mark as to be likely to deceive or cause confusion. shall be deemed unlawful. How Marks are Acquired. whether or not it is (c) (d) (e) JUNE S RADI COPYRIGHT 2010 . 165. deceptive or scandalous matter. if any. A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put. Trade Names or Business Names. as prescribed by the Regulations within three (3) years from the filing date of the application. whether as a trade name or a mark or collective mark. Non-Registrable Marks Sec.1. even prior to or without registration. or 2) Closely related goods or services. 165. Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions.1. or bring them into contempt or disrepute. or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines. likely to mislead the public.The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. 2-A. or confusingly similar to. or matter which may disparage or falsely suggest a connection with persons.2. Use of Mark as a Requirement Sec. in respect of: 1) The same goods or services.

In ascertaining whether one mark is confusingly similar to or is a colorable imitation of another. as being already the mark of a person other than the applicant for registration. S. particularly as to the nature. 356 SCRA 207 [2001] Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons.A. and used for identical or similar goods or services: Provided. and the owner of the registered mark: Provided further. Each case must be decided on its own merits. 181 SCRA 410 [1990] To determine whether a trademark has been infringed. Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice. Holistic test Del Monte Corporation. Tests to Determine Confusing Similarity Between Marks Colorable imitation Societe des Produits Nestlé. Is likely to mislead the public. or confusingly similar to. including knowledge in the Philippines which has been obtained as a result of the promotion of the mark. v. Consists exclusively of signs that are generic for the goods or services that they seek to identify. et al. we must consider the mark as a (f) (g) (h) (i) (j) JUNE S RADI COPYRIGHT 2010 . no set rules can be deduced. or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. account shall be taken of the knowledge of the relevant sector of the public.INTELLECTUAL PROPERTY LAW registered here. The complexities attendant to an accurate assessment of likelihood of confusion require that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided. value. Consists exclusively of signs or of indications that may serve in trade to designate the kind. or (m) Is contrary to public order or morality. as to cause him to purchase the one supposing it to be the other. quality. Is identical with. That use of the mark in relation to those goods or services would indicate a connection between those goods or services. quantity. unless defined by a given form. geographical origin. quality. characteristics or geographical origin of the goods or services. or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph. time or production of the goods or rendering of the services. v. (l) Consists of color alone. CA. CA. rather than of the public at large. intended purpose. That in determining whether a mark is wellknown. (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value. or other characteristics of the goods or services. That the interests of the owner of the registered mark are likely to be damaged by such use.

it is attributable to the marks as a totality. That the interests of the owner of the registered mark are likely to be damaged by such use. That use of the mark in relation to those goods or services would indicate a connection between those goods or services. form and color. Sec. Sec. (f) Is identical with. and the owner of the registered mark: Provided further. services which are not similar to those with respect to which registration is applied for: Provided. 124. If the competing trademark contains the main or essential or dominant features of another. Test of dominancy Asia Brewery v. whether or not it is registered here. and confusion is likely to result.2. and used for identical or similar goods or services: Provided. account shall be taken of the knowledge of the relevant sector of the public. including knowledge in the Philippines which has been obtained as a result of the promotion of the mark. CA and San Miguel. The application for the registration of the mark shall be in Filipino or in English and shall contain the following: (a) (b) (c) A request for registration. while relevant. 224 SCRA 437 [1993] Infringement is determined by the test of ³dominancy´ rather than by differences or variations in the details of one trademark and of another. Similarity in size. the value of which may be dissipated as soon as the court assumed to analyze carefully the respective features of the mark. The name and address of the applicant.1. or confusingly similar to. Formal Application Requirements (d) JUNE S RADI COPYRIGHT 2010 . infringement takes place. or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph. If the buyer is deceived. Where the applicant is a juridical entity. That in determining whether a mark is well-known. or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines. as being already the mark of a person other than the applicant for registration. and the name of a State in which the applicant has a real and effective industrial or commercial establishment.1. the law under which it is organized and existing. which is registered in the Philippines with respect to goods or 124. (e) Is identical with. or confusingly similar to. for the buyer acts quickly and is governed by a casual glance. rather than of the public at large. Requirements of Application. Well-known Marks Sec. The court therefore should be guided by its first impression. 147. is not conclusive. shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided. 123.INTELLECTUAL PROPERTY LAW whole and not as dissected.1(e) which is registered in the Philippines. further. The exclusive right of the owner of a well-known mark defined in Subsection 123. The name of a State of which the applicant is a national or where he has domicile. That the interests of the owner of the registered mark are likely to be damaged by such use. if any. not usually to any part of it. That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided.

INTELLECTUAL PROPERTY LAW (e) The appointment of an agent or representative. the applicant or his representative. the application shall be refused or the mark shall be removed from the Register by the Director.2. 131. Where the applicant claims the priority of an earlier application. as prescribed in the Regulations. as prescribed in the Regulations. An application for registration of a mark filed in the Philippines by a person referred to in Section 3. shall be considered as filed as of the day the application was first filed in the foreign country. an indication of: 1) The name of the State with whose national office the earlier application was filed or it filed with an office other than a national office. and 3) Where available. One (1) application may relate to several goods and/or services. the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application. 2) The date on which the earlier application was filed. (Sec. it may require the applicant to submit sufficient evidence to remove the doubt.3. the name of that office. of the principal parts of the mark which are in that color. RA 166a) Priority Right Sec. 124. (f) (l) 124. the application number of the earlier application. and who previously duly filed an application for registration of the same mark in one of those countries. Otherwise. whether they belong to one (1) class or to several classes of the Nice Classification. (g) (h) (i) (j) (k) JUNE S RADI COPYRIGHT 2010 . The names of the goods or services for which the registration is sought. and A signature by. Where the applicant claims color as a distinctive feature of the mark. a statement to that effect. 131. 5. Priority Right. if the applicant is not domiciled in the Philippines. A transliteration or translation of the mark or of some parts of the mark. One or more reproductions of the mark. a statement to that effect as well as the name or names of the color or colors claimed and an indication. grouped according to the classes of the Nice Classification. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect. in respect of each color. Where the mark is a threedimensional mark.1. as prescribed by the Regulations within three (3) years from the filing date of the application.4. together with the number of the class of the said Classification to which each group of goods or services belongs. or other selfidentification of. If during the examination of the application. 124.

the application shall be considered withdrawn. RA 166a) Classification of Goods and Services Sec. abandoned. it shall be numbered in the sequential order. notwithstanding the foregoing. or petition the cancellation of its registration or sue for unfair competition. Application Number and Filing Date. Sec. 132. That. The Office shall examine whether the application satisfies the requirements for the grant of a filing date as provided in Section 127 and Regulations relating thereto. they appear in different classes of the Nice Classification. 37. 144. 133. Once an application meets the filing requirements of Section 127. 144. RA 166a) Registration Procedure Sec. presented in the order of the classes of the said Classification. In like manner and subject to the same conditions and requirements. and has not served. 132. and each group shall be preceded by the number of the class of that Classification to which that group of goods or services belongs. as a basis for claiming a right of priority. the owner of a well-known mark as defined in Section 123.1. against an identical or confusingly similar mark. 144.1. without prejudice to availing himself of other remedies provided for under the law. (Sec. may.3.2.4. Goods or services may not be considered as being similar or dissimilar to each other on the ground that. 131. If the application does not satisfy the filing requirements. 132. and any publication of the Office which concerns an application or registration effected by the Office shall indicate the goods or services by their names. That any foreign application filed prior to such subsequent application has been withdrawn. oppose its registration. or otherwise disposed of. 133. (Sec. grouped according to the classes of the Nice Classification. otherwise. without having been laid open to public inspection and without leaving any rights outstanding. nor thereafter shall serve.INTELLECTUAL PROPERTY LAW 131. Examination and Publication. Once the application meets the filing requirements of Section 127.1(e) of this Act. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant.2.2. the Office shall examine whether the application meets the requirements of JUNE S RADI COPYRIGHT 2010 . Each registration. the Office shall notify the applicant who shall within a period fixed by the Regulations complete or correct the application as required. 131. that is not registered in the Philippines. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided.1. and the applicant shall be informed of the application number and the filing date of the application will be deemed to have been abandoned. the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided. 6. in any registration or publication by the Office. Classification of Goods and Services.

Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith. If after the examination. For good cause shown and upon payment of the required surcharge. (Sec. notice thereof making reference to the publication of the application shall be published in the IPO Gazette. . 133. file with the Office an opposition to the application. 9 RA 165) Sec. The applicant shall have a period of four (4) months in which to reply or amend his application. which shall then be re-examined. upon payment of the prescribed fee. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment.3. 134. title or interest in the mark covered by the application. 135.INTELLECTUAL PROPERTY LAW Section 124 and the mark as defined in Section 121 is registrable under Section 123.5. Notice and Hearing. the Office upon payment of the required fee. and of the registrant¶s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. who shall notify the applicant of such extension.2. as filed. 136. the Office shall serve notice of the filing on the applicant.Any person who believes that he would be damaged by the registration of a mark may. Where the Office finds that the conditions referred to in Subsection 133. 133. or when the Director of Legal Affairs shall have denied the opposition. . upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133. and shall specify the grounds on which it is based and include a statement of the facts relied upon. RA 166a) Sec. . Opposition. it shall. (Sec. RA 165) Duration of Registration JUNE S RADI COPYRIGHT 2010 . . 138. 10. if not in the English language.A certificate of registration of a mark shall be prima facie evidence of the validity of the registration. as appear of record in the Office. the time for filing an opposition may be extended by the Director of Legal Affairs. 8. the registrant¶s ownership of the mark.When the period for filing the opposition has expired.2. 133. 7. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner.Upon the filing of an opposition. Upon issuance of a certificate of registration. the Office shall advise the applicant thereof and the reasons therefor. (Sec. 133. (Sec. to be published in the prescribed manner. (Sec. and of the date of the hearing thereof upon the applicant and the oppositor and all other persons having any right. 20. together with the translation in English. the applicant is not entitled to registration for any reason.1 are fulfilled. RA 165a) Sec. Certificates of Registration. upon good cause shown and the payment of the required fee. The Regulations shall fix the maximum period of time within which to file the opposition.4. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations. RA 165) Sec. shall issue the certificate of registration. Issuance and Publication of Certificate. Forthwith cause the application.

An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the requirements of this Act.4.2.. the name and address of that representative. of an identical sign for identical goods or services.1(e) which is registered in the Philippines. grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classification. shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided. 147. That use of that mark in relation (c) (d) (e) (f) JUNE S RADI COPYRIGHT 2010 . 15. 147. Otherwise. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. In case of the use.A certificate of registration shall remain in force for ten (10) years: Provided. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner¶s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. Where the right holder has a representative. The request shall contain the following indications: (a) (b) An indication that renewal is sought. 146. Renewal. RA 166a) Sec. 146. or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed. or shall show valid reasons based on the existence of obstacles to such use. RA 166a) Rights Conferred by Registration Sec. If the Office refuses to renew the registration. the mark shall be removed from the Register by the Office. a likelihood of confusion shall be presumed. it shall notify the registrant of his refusal and the reasons therefor. Rights Conferred. within one (1) year from the fifth anniversary of the date of the registration of the mark. That the registrant shall file a declaration of actual use and evidence to that effect. (g) 146.1.2. The registration number of the registration concerned. 146.3. Duration. The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested. The exclusive right of the owner of a well-known mark defined in Subsection 123. 145. as prescribed by the Regulations.1. The name and address of the registrant or his successor-ininterest. 12. 146. (Sec. The filing date of the application which resulted in the registration concerned to be renewed. hereafter referred to as the "right holder". (Sec.INTELLECTUAL PROPERTY LAW Sec. and A signature by the right holder or his representative. 147.

Infringement and Remedies Sec. or advertising of goods or services on or in connection with which such use is likely to cause confusion. counterfeit. distribution. Inc. offering for sale. 155.1. counterfeit. Infringement. RA 166a) 156. advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description. had the defendant not infringed his rights. Protection limited to goods specified in registration certificate Faberge.INTELLECTUAL PROPERTY LAW to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided. v. or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. Reproduce.1. then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. copy. IAC and Co Beng Kay. or the profit which the defendant actually made out of the infringement. wrappers. or in the event such measure of damages cannot be readily ascertained with reasonable certainty. 22.2. sales invoices and other documents evidencing sales.Any person who shall. and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made. 23. offering for sale.. 156.1. or to deceive. or 155. signs. Use in commerce any reproduction. (Sec. the court may impound during the pendency of the action. and 156. packages. prints. On application of the complainant. JUNE S RADI COPYRIGHT 2010 . or to cause mistake. and Damages Injunction for Infringement. That the interests of the owner of the registered mark are likely to be damaged by such use. subject to any conditions a limitations stated therein. (Sec. Remedies. RA No 166a) Sec. counterfeit. or to deceive. distribution. The owner of a registered mark may recover damages from any person who infringes his rights. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. copy or colorable imitation to labels. First Par. . That the infringement takes place at the moment any of the acts stated in Subsection 155. Actions. without the consent of the owner of the registered mark: 155. shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided. or to cause mistake.2. further. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. 215 SCRA 316 [1992] The certificate of registration can confer upon the petitioner the exclusive right to use its own symbol only to those goods specified in the certificate. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction.

23. or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers. (Arts. before the filing date or the priority date. . 159. a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (P50. was using the mark for the purposes of his business or enterprise: Provided. Section 168 and Subsection 169. RA 166a).1. magazine. or other similar periodical or in an electronic communication. 157. packages.Notwithstanding any other provision of this Act. or destroyed. Limitations to Actions for Infringement. the remedies given to the owner of a right infringed under this Act shall be limited as follows: 159.1. in the discretion of the court. bearing the registered mark or trade name or any reproduction. a registered mark shall have no effect against any person who. disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder. The JUNE S RADI COPYRIGHT 2010 . in which a violation of any right of the owner of the registered mark is established. the court may order that goods found to be infringing be. signs. the damages may be doubled. . 23. That his right may only be transferred or assigned together with his enterprise or business or with that part of his enterprise or business in which the mark is used. the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper. copy or colorable imitation thereof. may also be granted injunction. RA 166a) Sec.000) to Two hundred thousand pesos (P200. Revised Penal Code) Sec. Sec. upon proper showing. matrices and other means of making the same. shall be delivered up and destroyed. The complainant. RA 166) 156.3. or other similar periodicals or in future transmissions of such electronic communications.1.Independent of the civil and administrative sanctions imposed by law. shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155. Second Par. Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer. In cases where actual intent to mislead the public or to defraud the complainant is shown. 188 and 189. 24. In any action arising under this Act. Notwithstanding the provisions of Section 155 hereof. all plates. 159. wrappers.. the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing. Where the infringement complained of is contained in or is part of paid advertisement in a newspaper. Penalties. without compensation of any sort. counterfeit. Power of Court to Order Infringing Material Destroyed. First Par.4. receptacles and advertisements in the possession of the defendant. In regard to counterfeit goods. magazine.. magazines. and all labels.2. (Sec. (Sec. 157.INTELLECTUAL PROPERTY LAW 156. 170. molds. the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations. 157.2.000). in good faith. (Sec. prints. 159.3. to permit the release of the goods into the channels of commerce.

A. 7691. L. [c] the likely effect on the purchaser. While there is confusion of goods when the products are competing. Likelihood of confusion is admittedly a relative term. Two types of confusion arise from the use of similar or colorable imitation marks. namely.A. it is the element of likelihood of confusion that is the gravamen of trademark infringement. [2] the plaintiff¶s ownership of the mark. and thereby render the trademark or tradenames confusingly similar.A. No. No. Gallo Winery. jurisdiction is properly lodged with the Regional Trial Court even if the penalty JUNE S RADI COPYRIGHT 2010 . composition.INTELLECTUAL PROPERTY LAW limitations of this subparagraph shall apply only to innocent infringers: Provided. to be determined rigidly according to the particular (and sometimes peculiar) circumstances of each case. That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of a newspaper. confusion of goods (product confusion) and confusion of business (³source or origin confusion). when they possess the same physical attributes or essential characteristics with reference to their form. the question that usually arises is whether the respective goods or services of the senior user and the junior user are so related as to likely cause confusion of business or origin. the following elements must be shown: [1] the validity of the mark. and [3] the use of the mark or its colorable imitation by the alleged infringer results in ³likelihood of confusion. Daway. 166 are special laws conferring jurisdiction over violations of intellectual property rights to the Regional Trial Court. In determining likelihood of confusion. Inc. et al. 434 SCRA 612 [2004] R. to be determined according to the particular. & J.. confusion of business exists when the products are non-competing but related enough to produce confusion of affiliation. Hence. or other similar periodical or an electronic communication containing infringing matter where restraining the dissemination of such infringing matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication is customarily conducted in accordance with the sound business practice.C. 8293 and R.´ Of these. Big Mak Burger. Goods are related when they belong to the same class or have the same descriptive properties.. and [d] the registrant¶s express or implied consent and other fair and equitable considerations. and sometimes peculiar. E. and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter. CA. Samson v. texture or quality. circumstances of each case. 437 SCRA 10 [2004] To establish trademark infringement.. source or origin of the goods or identity of the business as a consequence of using a certain mark. 434 SCRA 473 [2004] A crucial issue in any trademark infringement case is the likelihood of confusion. the court must consider: [a] the resemblance between the trademarks. which is a general law. 336 SCRA 266 [2000] The likelihood of confusion of goods or business is a relative concept. They should therefore prevail over R. mistake or deceit as to the identity. In cases of confusion of business or origin. [b] the similarity of the goods to which the trademarks are attached. McDonald¶s Corporation v. They may also be related because they serve the same purpose or are sold through the same channels of distribution. No. et al. Mighty Corporation v. magazine. Canon Kabushiki Kaisha v.

Rights. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals. shall be guilty of unfair JUNE S RADI COPYRIGHT 2010 . or the devices or words thereon. who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer. Notice Requirement Sec. competition. which will be protected in the same manner as other property rights.000 to P200. (b) Any person who by any artifice.3. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words "Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration. business or services so identified. Unfair Competition. or to cause mistake. or in any other feature of their appearance.INTELLECTUAL PROPERTY LAW therefore is imprisonment of less than six years. or who shall commit any acts calculated to produce said result. Requirement of Notice. or to deceive. 168. (Sec. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. 168. the following shall be deemed guilty of unfair competition: Any person. 21. the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion. either as to the goods themselves or in the wrapping of the packages in which they are contained. In particular. Regulation and Remedies. 168. and shall be subject to an action therefor. his business or services from those of others. and without in any way limiting the scope of protection against unfair competition. (a) 168. or his business.000. whether or not a registered mark is employed. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. has a property right in the goodwill of the said goods.1. other than the actual manufacturer or dealer. or from 2 to 5 years and a fine ranging from P50. Damages. A person who has identified in the mind of the public the goods he manufactures or deals in. or services for those of the one having established such goodwill. 158. or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public. RA 166a) Unfair Competition Sec. or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods. or device. In any suit for infringement.2. business or services of another.

The remedies provided by Sections 156. Works are protected by the sole fact of their creation.C. even if they are expressed. copyright or economic rights shall consist of the exclusive right to carry out. even if one fails to establish his exclusive property right to a trademark. whereas in unfair competition registration is not necessary. Copy or Economic Rights. 29. The confusing similarity may or may not result from similarity in the marks. 175.2. 181 SCRA 410 [1990] The following are the distinctions between infringement of trademark and unfair competition: 1. Infringement of trademark is the unauthorized use of a trademark. procedure. 2. irrespective of their mode or form of expression. Sec. fraudulent intent is unnecessary. 434 SCRA 473 [2004] The law on unfair competition is broader and more inclusive than the law on trademark infringement. concept. Gallo Winery. authorize or prevent the following acts: 177. quality and purpose.INTELLECTUAL PROPERTY LAW 168. 177.. Actual fraudulent intent need not be shown. 2. illustrated or embodied in a work. Reproduction of the work or substantial portion of the work. (Sec. 3. Protection extends only to the expression of an idea. JUNE S RADI COPYRIGHT 2010 . no protection shall extend.1. The intent to deceive and defraud may be inferred from the similarity in appearance of the goods as offered for sale to the public. In infringement of trademark. as well as of their content. 157 and 161 shall apply mutatis mutandis. explained. In infringement of trademark the prior registration of the trademark is a prerequisite to the action. to any idea. Notwithstanding the provisions of Sections 172 and 173. et al. Hence. under this law. Unprotected Subject Matter. but may result from other external factors in the packaging or presentation of the goods. . discovery or mere data as such. whereas unfair competition is the passing off of one¶s goods as those of another. Works are protected by the sole fact of their creation. Inc. he may still obtain relief on the ground of his competitor¶s unfairness or fraud. 172. COPYRIGHTS Basic Principles 1. 49a) 2. xxx xxx xxx Definition Sec. whereas in unfair competition fraudulent intent is essential. Big Mak Burger. system method or operation. The latter is more limited but it recognizes a more exclusive right derived from the trademark adoption and registration by the person whose goods or business is first associated with it. (Sec. 437 SCRA 10 [2004] The elements of an action for unfair competition are: [1] confusing similarity in the general appearance of the goods. RA 166a) Del Monte Corporation. Mighty Corporation v. v. PD No. CA. & J.4. Conduct constitutes unfair competition if the effect is to pass off on the public the goods of one man as the goods of another. E. L. et al. not the idea itself. and [2] intent to deceive the public and defraud a competitor. Sec. McDonald¶s Corporation v..Subject to the provisions of Chapter VIII. principle.

whether or not registrable as an industrial design. irrespective of the ownership of the original or the copy which is the subject of the rental.1. with or without words. sermons. Musical compositions. 173. PD No. maps. articles and other writings. models or designs for works of art. Literary and artistic works. translation. lithography or other works of art. dissertations prepared for oral delivery. abridgment. are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: (a) (b) (c) Books. Other communication to the public of the work (Sec. hereinafter referred to as "works". Periodicals and newspapers.5. Illustrations. addresses. 5. Pictorial illustrations and advertisements. 173.INTELLECTUAL PROPERTY LAW 177. 177. lantern slides.1.2. 172. arrangement or other transformation of the work. Derivative Works. adaptation. The following derivative works shall also be protected by copyright: (d) JUNE S RADI COPYRIGHT 2010 . Public display of the original or a copy of the work. plans.6. choreographic works or entertainment in dumb shows.3. 172. Computer programs. whether or not reduced in writing or other material form. Literary and Artistic Works. Lectures. sketches. and 177. Public performance of the work. painting. Photographic works including works produced by a process analogous to photography. Dramatization. architecture. scholarly. Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings. Works of drawing. 49a) Copyrightable Works Sec. charts and threedimensional works relative to geography. 177. Letters. topography. pamphlets. and other works of applied art. Original ornamental designs or models for articles of manufacture. a compilation of data and other materials or a musical work in graphic form. and Other literary. (f) (g) (h) (i) (m) (n) (o) Sec. (l) (j) (k) (e) Dramatic or dramatico-musical compositions. engraving.4. 177. Rental of the original or a copy of an audiovisual or cinematographic work. sculpture. a computer program. 177. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership.7. Drawings or plastic works of a scientific or technical character. architecture or science. scientific and artistic works. a work embodied in a sound recording.

adaptations. 49) (b) 173. et al.INTELLECTUAL PROPERTY LAW (a) Dramatizations. principle. addresses. (Sec. Non-copyrightable Works (175. before administrative agencies. rules and regulations. No copyright shall subsist in any work of the Government of the Philippines. 176. PD 49. Such agency or office may. even if they are expressed. 49. Format of a show not copyrightable Joaquin. v. news of the day and other miscellaneous facts having the character of mere items of press information. (Sec. illustrated or embodied in a work. discovery or mere data as such. 10. 2. in deliberative assemblies and in meetings of public character. and other alterations of literary or artistic works. scholarly or artistic works. 8. For this reason. et al. 174.1. TRIPS) Sec. (Sec. among other things. and speeches. to any idea. enumerates the classes of work entitled to copyright protection. or be construed to imply any right to such use of the original works. Published Edition of Work. concept. is purely a statutory right. procedure. the protection afforded by the law cannot be extended to cover them. Copyright. the rights are only such as the statute confers. PD No.. sermons. . and may be obtained and enjoyed only with respect to the subjects and by the persons. administrative or legal nature. Being a statutory grant. 176) Sec.A. Notwithstanding the provisions of Sections 172 and 173. arrangements. 9.. [P] and [Q]. Drilon.1 shall be protected as a new works: Provided however. No. or to secure or extend copyright in such original works. The works referred to in paragraphs (a) and (b) of Subsection 173. 176. and on terms and conditions specified in the statute. impose as a condition the payment of royalties. 49) works. No prior approval or conditions shall be required for the use of any purpose of statutes. abridgments. 175. lectures. Jr. This provision is substantially the same as Section 172 of the Intellectual Property Code (R. the publisher shall have a copy right consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work. translations. The format or mechanics of a television show is not included in the list of protected JUNE S RADI COPYRIGHT 2010 . in the strict sense of the term. 302 SCRA 225 [1999] The format of a show is not copyrightable.2. Section 2 of PD No. 8293). Art. and Collections of literary. read or rendered in courts of justice. prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. system method or operation. otherwise known as the Decree on Intellectual Property. However. PD No. under this law. as well as any official translation thereof.In addition to the right to publish granted by the author. That such new work shall not affect the force of any subsisting copyright upon the original works employed or any part thereof. and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. pronounced. and dissertations. or any official text of a legislative. Unprotected Subject Matter. Sec. First Par. no protection shall extend. explained. his heirs or assigns.. Works of the Government.

4. Public display of the original or a copy of the work. irrespective of the ownership of the original or the copy which is the subject of the rental. Other communication to the public of the work (Sec. PD No.3. 177. 5. . independently of the economic rights in Section 177 or the grant of an sale or other forms of transfer of ownership. Copy or Economic Rights. (Sec. a compilation of data and other materials or a musical work in graphic form. (Sec. authorize or prevent the following acts: 177. Reproduction of the work or substantial portion of the work. 31. Notwithstanding the foregoing provisions. Third Par.5. Court of Appeals. nor shall publication or republication by the government in a public document of any work in which copy right is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owners. (Sec. . PD No.3. copyright or economic rights shall consist of the exclusive right to carry out.The author of a work shall. sermons. bequest or otherwise. The first public distribution of the original and each copy of the work by Sec. addresses. 176. 49a) JUNE S RADI COPYRIGHT 2010 . 177. 363 SCRA 142 [2001] A person to be entitled to a copyright must be the original creator of the work. 177. and judgment without directly copying or evasively imitating the work of another. etchings.2. PD No. works of applied art.7. Subject to the provisions of Chapter VIII. and 177. . engravings. Works Not Covered.INTELLECTUAL PROPERTY LAW 176. Public performance of the work. 193. 177. 177. 49) Standard for Copyright Protection Droit de Suite Ching Kian Chuan v. the Government is not precluded from receiving and holding copyrights transferred to it by assignment. and dissertations mentioned in the preceding paragraphs shall have the exclusive right of making a collection of his works. This right shall exist during the lifetime of the author and for fifty (50) years after his death. Dramatization. the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). He must have created it by his own skill.1. subsequent to the first disposition thereof by the author. adaptation. Rental of the original or a copy of an audiovisual or cinematographic work. 9. 201. a computer program. abridgment. arrangement or other transformation of the work. 49) Moral Rights Sec. 49) Sec. 177.6.2. lectures. Economic Rights Sec.In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer.The provisions of this Chapter shall not apply to prints. labor. or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions. Scope of Moral Rights. 33. translation. The Author of speeches. a work embodied in a sound recording. Sale or Lease of Work. 200. PD No..

178. 49) Ownership of Copyright Sec. (Sec. (b) The employer.2. However. have the right: 193. To require that the authorship of the works be attributed to him.4. In the case of a work-commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission. To make any alterations of his work prior to. mutilation or other modification of. the composer of the music. the co-authors shall be the original owners of the copyright and in the absence of agreement. and the author of the work so adapted.3. Rules on Copyright Ownership. 178.5. In the case of audiovisual work. PD No. in the case of original literary and artistic works. If. subject to contrary or other stipulations among the creators.INTELLECTUAL PROPERTY LAW assignment or license with respect to such right. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work. to the contrary. the person who so commissioned the work shall have ownership of work. the copyright shall belong to the producer. or other derogatory action in relation to. In respect of letters. unless there is an agreement. In the case of works of joint authorship. unless there is a written stipulation to the contrary. Copyright ownership shall be governed by the following rules: 178. with or without words. (Sec. the producers shall exercise the copyright to an extent required for the exhibition of the work in any manner. PD No. 49a) JUNE S RADI COPYRIGHT 2010 . which are incorporated into the work. as far as practicable. 178. and 178. Subject to the provisions of this section. except for the right to collect performing license fees for the performance of musical compositions. his work which would be prejudicial to his honor or reputation. 34. 178. and in connection with the public use of his work. copyright shall belong to the author of the work. if the creation of the object of copyright is not a part of his regular duties even if the employee uses the time. be indicated in a prominent way on the copies. the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code.3. 193. In the case of work created by an author during and in the course of his employment. the author of each part shall be the original owner of the copyright in the part that he has created. if the work is the result of the performance of his regularly-assigned duties. however. 178. their rights shall be governed by the rules on coownership. To object to any distortion. or to withhold it from publication. a work of joint authorship consists of parts that can be used separately and the author of each part can be identified.1.1. but the copyright thereto shall remain with the creator. in particular. the right that his name. the film director. the author of the scenario. facilities and materials of the employer. 193.4. 6.2. express or implied. and 193.6. the copyright shall belong to: (a) The employee.

(d) (b) (f) (c) JUNE S RADI COPYRIGHT 2010 . if appearing on the work. 11. Notwithstanding the provisions of Chapter V. PD No. 10(1). Third Par. once it has been lawfully made accessible to the public. (Sec. That the source and of the name of the author. universities. addresses and other works of the same nature. if done privately and free of charge or if made strictly for a charitable or religious institution or society. unless the contrary appears. 184.. That the source is clearly indicated. (Sec. . scientific or artistic works as part of reports of current events by means of photography. or if the author of the anonymous works discloses his identity. Anonymous and Pseudonymous Works. or other communication to the public. PD No.1. sound recording or film.INTELLECTUAL PROPERTY LAW Sec. The recording made in schools. (Sec. are mentioned. 49) The inclusion of a work in a publication. 179. Limitations on Copyright. economic. 49) The reproduction and communication to the public of literary. universities or educational institutions: Provided. cinematography or broadcasting to the extent necessary for the purpose. broadcast. 7.For purposes of this Act. 12. That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work. scientific or religious topic. further. PD No. 49) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose. are mentioned. lectures. social. the following acts shall not constitute infringement of copyright: (e) (a) the recitation or performance of a work. 49) The reproduction or communication to the public by mass media of articles on current political. PD No. or the pseudonyms or adopted name leaves no doubts as to the author¶s identity. or educational institutions of a work included in a broadcast for the use of such schools. which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided. PD 49) Limitations on Copyright Sec. the publishers shall be deemed to represent the authors of articles and other writings published without the names of the authors or under pseudonyms. That the source and the name of the author. if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided. 184. (Sec. if appearing in the work. including quotations from newspaper articles and periodicals in the form of press summaries: Provided. 11. That such recording must be deleted within a reasonable period after they were first broadcast: Provided. (Sec.

187. (c) A compilation of data and other materials. and Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.2. television image or otherwise on screen or by means of any other device or process: Provided. The public performance or the communication to the public of a work. whose aim is not profit making. shall be permitted. Notwithstanding the provision of Section 177.2. any library or archive whose activities are not for profit may. or a substantial past thereof. slide. in a place where no admission fee is charged in respect of such public performance or communication. The use made of a work by or under the direction or control of the Government. by the National Library or by educational. and (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author.INTELLECTUAL PROPERTY LAW (g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast. Sec. 187. subject to such other limitations as may be provided in the Regulations.1 shall not extend to the reproduction of: (a) A work of architecture in form of building or other construction. (h) (i) (j) (k) JUNE S RADI COPYRIGHT 2010 . the private reproduction of a published work in a single copy. 187.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interest.1. 184. or of a musical work in which graphics form by reprographic means. The permission granted under Subsection 187. by a club or institution for charitable or educational purpose only.1. given away or otherwise transferred to another person by the author or his successor in title. (b) An entire book. that original or the copy displayed has been sold. Reprographic Reproduction by Libraries. 188. (d) A computer program except as provided in Section 189. and subject to the provisions of Subsection 187. or. Sec. Public display of the original or a copy of the work not made by means of a film. Reproduction of Published Work. Notwithstanding the provisions of Subsection 177. where the reproduction is made by a natural person exclusively for research and private study. scientific or professional institutions where such use is in the public interest and is compatible with fair use. without the authorization of the owner of copyright in the work. 188.6. That either the work has been published.

in the permanent collection of another similar library or archive. to person requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them. and (b) Archival purposes. 190. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section. a copy which has been lost. is entitled to receive copies of a printed work. or other owner of copyright in.2.1.2. That every library which. (Sec. Notwithstanding the above provisions. (b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them.2. make a single copy of the work by reprographic reproduction: Where the work by reason of its fragile character or rarity cannot be lent to user in its original form.INTELLECTUAL PROPERTY LAW without the authorization of the author of copyright owner. replace a copy. or to replace. for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost. a computer program. to reproduce a copy of a published work which is considered necessary for the collection of the (a) library but which is out of stock. That the copy or adaptation is necessary for: (a) The use of the computer program in conjunction with a computer for the purpose. Notwithstanding the provisions of Section 177. destroyed or rendered unusable. by the lawful owner of that computer program: Provided. it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works. shall be entitled. but subject to the limitation under the Subsection 185. Reproduction of Computer Program. destroyed or rendered unusable and copies are not available with the publisher. Provided. and. the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted. 189. 188. and to the extent. This provision shall be without prejudice to the application of Section 185 whenever appropriate. for which the computer program has been obtained. by law. destroyed or rendered unusable. when special reasons so require. Notwithstanding the provision of Subsection 177. PD 49a) Sec. 190.3. Sec.1. without the authorization of the author of. and (c) Where the making of such a copy is in order to preserve and. when this is considered expedient. and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. 189.6. unless the volume. 13. if necessary in the event that it is lost. the importation of a copy of a work by an JUNE S RADI COPYRIGHT 2010 . ± 189. Importation for Personal Purposes. tome or part is out of stock. 189.

The fair use of a copyrighted work for criticism. including whether such use is of a commercial nature or is for non-profit education purposes.3. Subject to the approval of the Secretary of Finance. Decompilation. 49) Doctrine of Fair Use Sec. 185. or for any state school. consisting of not more than three (3) such copies or likenesses in any one invoice. college. 185. Fair Use of a Copyrighted Work. or other owner of copyright in. or 2) The importation is by authority of and for the use of the Philippine Government. (b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided. or is for the encouragement of the fine arts. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act. 30. is not for sale but for the use only of any religious. or free public library in the Philippines.INTELLECTUAL PROPERTY LAW individual for his personal purposes shall be permitted without the authorization of the author of. the factors to be considered shall include: (a) The purpose and character of the use. 190. and similar purposes is not an infringement of copyright. In determining whether the use made of a work in any particular case is fair use. the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported. charitable. That such copies do not exceed three (3).2. PD No. research. The nature of the copyrighted work. The amount and substantiality of the portion used in relation 1) Not more than one (1) copy at one time is imported for strictly individual use only. or 3) The importation. comment. or educational society or institution duly incorporated or registered.1. scholarship. (Sec. university. teaching including multiple copies for classroom use. and such (b) (c) JUNE S RADI COPYRIGHT 2010 . 190. which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use. news reporting. the work under the following circumstances: (a) When copies of the work are not available in the Philippines and: unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietor¶s right of action.

PD No. 214.2 to 213. .1 and 213. That where. PD No. the copyright in works under Sections 172 and 173 shall be protected during the life of the author and for fifty (50 years after his death.5. 24(C). before the expiration of the said period. 213. PD No. In case of works of joint authorship. . The copyright may be assigned in whole or in part. 192. (d) 185. Notice of Copyright Sec. PD 49a) 213. (Sec. and The effect of the use upon the potential market for or value of the copyrighted work. the author's identity is revealed or is no longer in doubt. 21. 49) 213. Within the scope of the assignment. in copies produced after the creator¶s death. In case of anonymous or pseudonymous works. (Sec. (Sec.INTELLECTUAL PROPERTY LAW to the copyrighted work as a whole. 21.6. the protection shall be for fifty (50) years from publication of the work and. (Sec. The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors. Calculation of Term. In case of works of applied art the protection shall be for a period of twentyfive (25) years from the date of making. 49a) 213. 23. Rights of Assignee.1.The term of protection subsequent to the death of the author provided in the preceding Section shall run from the date of his death or of publication. 49) Transfer and Assignment of Copyright Sec. 27.213. Second Sentence.4. the copyright shall be protected for fifty (50) years from the date on which the work was first lawfully published: Provided. as the case may be: Provided. First Sentence. (Sec. PD No. the economic rights shall be protected during the life of the last surviving author and for fifty (50) years after his death. fifty (50) years from the making. but such terms shall always be deemed to begin on the first day of January of the year following the event which gave rise to them.2. 49) 213. This rule also applies to posthumous works. the term shall be fifty (50) years from date of publication and. PD No. That such works if not published before shall be protected for fifty (50) years counted from the making of the work. 24(B). 25. the provisions JUNE S RADI COPYRIGHT 2010 . 24(C). In case of photographic works.1. Term of Protection. and. (Sec. (Sec. the assignee is entitled to all the rights and remedies which the assignor had with respect to the copyright. Notice of Copyright. and the year of its first publication. Subject to the provisions of Subsections 213. if unpublished.Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner. of Subsections 213. PD No.2 shall apply. In case of audio-visual works including those produced by process analogous to photography or any process for making audio-visual recordings. (Sec. . the year of such death. 49a) Duration of Copyright Sec. further. 49a) 213. 180.3. PD No. 180. from the date of making. 49a) Sec.2.5. if unpublished.

3. If two (2) or more persons jointly own a copyright or any part thereof. (Sec. the transfer or assignment of the copyright shall not itself constitute a transfer of the material object.2. Consequently. by wire or wireless means. The copyright is distinct from the property in the material object subject to it.The copyright owners or their heirs may designate a society of artists. Designation of Society. 182.4. 181. the right of authorizing the first public distribution of the original and copies of their performance fixed in the sound recording through sale or rental or other forms of transfer of ownership. . 49a) Sec. The right of authorizing the direct or indirect reproduction of their performances fixed in sound recordings. Filing of Assignment of License. . PD No. 183.3. PD No. 203. even after distribution of them by. 49a) Neighboring Rights Sec. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or assignment of the copyright. 32. producers of sound recordings shall enjoy the following exclusive rights: JUNE S RADI COPYRIGHT 2010 . PD No. 19. writers or composers to enforce their economic rights and moral rights on their behalf. Copyright and Material Object. (Sec.INTELLECTUAL PROPERTY LAW 180. The right of authorizing the commercial rental to the public of the original and copies of their performances fixed in sound recordings. and (b) The fixation of their unfixed performance. and 203. 208. 49a) Sec. 15. performers shall enjoy the following exclusive rights: 203. (Sec. (Sec. 49) Sec. As regards their performances. PD No. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention. Subject to the provisions of Section 206. or pursuant to the authorization by the performer. in such a way that members of the public may access them from a place and time individually chosen by them. Scope of Performers' Rights. a copy of the instrument shall be. PD No. Upon recording. 180. Subject to the provisions of Section 212. 16. 203. magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. 203. neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. (Sec. returned to the sender with a notation of the fact of record. 42. in any manner or form.1. The submission of a literary. 203. photographic or artistic work to a newspaper.5. Notice of the record shall be published in the IPO Gazette. An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for the purpose. the right of authorizing: (a) The broadcasting and other communication to the public of their performance.2. Scope of Right. The right of authorizing the making available to the public of their performances fixed in sound recordings. 49a) Sec.Subject to the provisions of Section 212.

The right to authorize the commercial rental to the public of the original and copies of their sound recordings. 215. The extended term shall be applied only to old works with subsisting protection under the prior law. copying alone is not what is prohibited. Term of Protection for Performers. even after distribution by them by or pursuant to authorization by the producer. The recording in any manner.Subject to the provisions of Section 212. 211. The use of such records for fresh transmissions or for fresh recording. 55. 49a) Sec. the work is appropriated. and 208. (Sec. In cases of infringement. (Sec.. The right to authorize the direct or indirect reproduction of their sound recordings. 208.1.2. 211. Producers and Broadcasting Organizations. PD No. without the consent of the owner of the copyright.. Robles. . 310 SCRA 511 [1999] Infringement consists in the doing by any person. authorize or prevent any of the following acts: 211. et al. 46.INTELLECTUAL PROPERTY LAW 208. the term shall be twenty (20) years from the date the broadcast took place. If so much is taken that the value of the original work is substantially diminished.1.2. fifty (50) years from the end of the year in which the recording took place. of their broadcasts for the purpose of communication to the public of television broadcasts of the same.1. et al. (Sec. or even a large portion of it. The rights granted to performers and producers of sound recordings under this law shall expire: (a) For performances not incorporated in recordings. broadcasting organizations shall enjoy the exclusive right to carry out. PD 49a) Infringement Habana. Civil Action JUNE S RADI COPYRIGHT 2010 . the placing of these reproductions in the market and the right of rental or lending. The rebroadcasting of their broadcasts. 215. there is an infringement of copyright and to an injurious extent. including the making of films or the use of video tape.3. and 211. For there to be substantial reproduction of a book it does not necessarily require that the entire copyrighted work. he at least knew that what he was copying was not his.215. In case of broadcasts. The act of lifting from another¶s book substantial portions of discussions and examples and the failure to acknowledge the same is an infringement of copyright. and (b) For sound or image and sound recordings and for performances incorporated therein. PD No. 49) Sec. fifty (50) years from the end of the year in which the performance took place. and he copied at his peril.2. of anything the sole right to do which is conferred by statute on the owner of the copyright. 52. v. It is no defense that the pirate did not know whether or not he was infringing any copyright. The right to authorize the first public distribution of the original and copies of their sound recordings through sale or rental or other forms of transferring ownership. in any manner or form. Scope of Right.3. be copied. The copying must produce an ³injurious effect´. Remedies for Infringement 1.

Pay to the copyright proprietor or his assigns or heirs such actual damages. Any person infringing a right protected under this law shall be liable: (a) To an injunction restraining such infringement. to prevent the entry into the channels of commerce of imported goods that involve an infringement. immediately after customs clearance of such goods. 217. as well as all plates. (Sec. 28. Such other terms and conditions. Deliver under oath. In an infringement action. Deliver under oath for destruction without any compensation all infringing copies or devices. 216.1. 2. in lieu of actual damages and profits. upon such terms and conditions as the court may prescribe. Criminal Penalties.INTELLECTUAL PROPERTY LAW Sec. The court may also order the defendant to desist from an infringement. all articles and their packaging alleged to infringe a copyright and implements for making them. 1. as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement. molds. 217. or other means for making such infringing copies as the court may order. or. including legal costs and other expenses. Any person infringing any right secured by provisions of Part IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by: (c) JUNE S RADI COPYRIGHT 2010 . the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case. 216. which the court may deem proper. such damages which to the court shall appear to be just and shall not be regarded as penalty. PD 49a) 2. for impounding during the pendency of the action. Remedies for Infringement. and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims. sales invoices and other documents evidencing sales. (d) (e) (b) 216. including the payment of moral and exemplary damages. Criminal Action Sec. among others.

In determining the number of years of imprisonment and the amount of fine. 2.000) to One million five hundred thousand pesos (P1. (Sec. Any person who at the time when copyright subsists in a work has in his possession an article which he knows.000) for the first offense. shall be admitted in evidence in any proceedings for an offense under this Chapter and shall be prima facie proof of the matters therein stated until the contrary is proved.1. In an action under this Chapter. 218. 217. shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned. 29.000) for the second offense.500. the article. (b) He or the person named therein is the owner of the copyright. or hire. an affidavit made before a notary public by or on behalf of the owner of the copyright in any work or other subject matter and stating that: (a) At the time specified therein.000) to Five hundred thousand pesos (P500. (b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One hundred fifty thousand pesos (P150. Affidavit Evidence. JUNE S RADI COPYRIGHT 2010 . and (c) The copy of the work or other subject matter annexed thereto is a true copy thereof.000) to One hundred fifty thousand pesos (P150. letting for hire. PD No. or (c) Trade exhibit of the article in public. 49a) Affidavit Evidence Sec. or ought to know. to be an infringing copy of the work for the purpose of: (a) Selling. 218. copyright subsisted in the work or other subject matter. 3. subsidiary imprisonment in cases of insolvency. (c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from Five hundred thousand pesos (P500.INTELLECTUAL PROPERTY LAW (a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (P50.2. 217. the court shall consider the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement.000) for the third and subsequent offenses. (b) Distributing the article for purpose of trade. In an action under this Chapter. and the court before which such affidavit is produced shall assume that the affidavit was made by or on behalf of the owner of the copyright. or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work. 218. or by way of trade offering or exposing for sale. (d) In all cases.

trade names. without good faith. Definitions. Now. Unless otherwise specified. the following rules and regulations on trademarks. 219. puts in issue the questions of whether copyright subsists in a work or other subject matter to which the action relates. be presumed to be the author of the work. in the absence of proof to the contrary. The natural person whose name is indicated on a work in the usual manner as the author shall. TRADE NAMES AND MARKED OR STAMPED CONTAINERS Whereas. The person or body. thereby occasioning unnecessary costs or delay in the proceedings. and marked or stamped containers are hereby promulgated: PART 1 REGISTRATION OF SERVICE MARKS TRADEMARKS AND Rule 100. 219. be presumed to be the maker of said work. (d) Where the defendant. 8293. Whereas. 219. or the ownership of copyright in such work or subject matter. service marks. the court may direct that any costs to the defendant in respect of the action shall not be allowed by him and that any costs occasioned by the defendant to other parties shall be paid by him to such other parties. corporate whose name appears on an audio-visual work in the usual manner shall. where the pseudonym leaves no doubt as to the identity of the author. therefore. This provision shall be applicable even if the name is a pseudonym. Presumption of Authorship.1. it is the policy of the State to streamline administrative procedures in registering trademarks and enhance the enforcement of intellectual property rights in the Philippines. SERVICE MARKS. the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership. Presumption of Ownership Sec. JUNE S RADI COPYRIGHT 2010 . attracts foreign investments and ensures market access for our products. in the absence of proof to the contrary. the following terms shall have the meaning provided in this Rule: (a) ³Bureau´ means the Bureau of Trademarks of the Intellectual Property Office. and (b) Where the subsistence of the copyright is established. RULES AND REGULATIONS ON TRADEMARKS. otherwise known as the Intellectual Property Code of the Philippines. the State recognizes that an effective industrial property system is vital to the development of domestic creativity.INTELLECTUAL PROPERTY LAW (a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter.2. facilitates transfer of technology. pursuant to the provisions of Republic Act No.

the Director General. means the Court. or of any foreign nation. Rule 101. Registrability. including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. or bring them into contempt or disrepute. (h) ³IPO Gazette´ means the Intellectual Property Office¶s own publication where all matters required to be published under the IP Code shall be published. (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions. or national symbols.INTELLECTUAL PROPERTY LAW (b) ³Collective mark´ means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristics. portrait or signature identifying a particular living individual except by his written consent. also known or referred to as business identifier. (i) ³Mark´ means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. except by written consent of the widow. the Director of the Bureau of Legal Affairs. (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date. signature. (j) ³Office´ means the Intellectual Property Office. or (ii) Closely related goods or services. or portrait of a deceased President of the Philippines. (c) Consists of a name. living or dead. or any administrative agency or office vested with quasi-judicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights to a mark. (f) ³Examiner´ means the trademark examiner or any official or employee of the Bureau of Trademarks authorized to examine applications for registration or renewals thereof. if any. (d) ³Director´ means the Director of the Bureau of Trademarks. and (l) ³Trade name´ means the name or designation identifying or distinguishing an enterprise. (k) ³Regulations´ means these set of rules and regulations and such Rules of Practice in Trademarks and Service Marks as may be formulated by the Director of Trademarks and approved by the Director General. A mark cannot be registered if it: (a) Consists of immoral. (g) ³IP Code´ means Republic Act No. or any simulation thereof. (e) ³Director General´ means the head of the Intellectual Property Office. or JUNE S RADI COPYRIGHT 2010 . deceptive or scandalous matter. 8293 otherwise known as the Intellectual Property Code of the Philippines. or the name. institutions. beliefs. in respect of: (i) The same goods or services. or matter which may disparage or falsely suggest a connection with persons. during the life of his widow. (c) ³Competent authority´ for purposes of determining whether a mark is well-known.

or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines. account shall be taken of the knowledge of the relevant sector of the public. proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. or (m) Is contrary to public order or morality. The Office may accept as prima facie evidence that the mark has become distinctive. and the owner of the registered mark: Provided. That use of the mark in relation to those goods or services would indicate a connection between those goods or services. (e) Is identical with. JUNE S RADI COPYRIGHT 2010 . rather than of the public at large. quality. reputation or other characteristic of the good is essentially attributable to its geographical origin. or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph. as used in connection with the applicant¶s goods or services in commerce. That the interests of the owner of the registered mark are likely to be damaged by such use. (l) Consists of color alone. As regards signs or devices mentioned in paragraphs (j). quality. and used for identical or similar goods or services. nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods or services for which registration is requested as a result of the use that has been made of it in commerce in the Philippines. characteristics or geographical origin of the goods or services. particularly as to the nature.INTELLECTUAL PROPERTY LAW (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion. which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided. whether or not it is registered here. or a region or locality in that territory. geographical origin. or other characteristics of the goods or services. (i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona-fide and established trade practice. or confusingly similar to. where a given quality. Geographical indications are indications which identify a good as originating in the territory of a country which is a member of. Provided. (g) Is likely to mislead the public. or confusingly similar to. quantity. (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value. unless defined by a given form. (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind. further. (f) Is identical with. and (l). That in determining whether a mark is well-known. (k). (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify. intended purpose. including knowledge in the Philippines which has been obtained as a result of the promotion of the mark. value. as being already the mark of a person other than the applicant for registration. time or production of the goods or rendering of the services.

particularly as regards the nature. (a) A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put. even prior to or without registration. manufacturing process. and. (f) the exclusivity of registration attained by the mark in the world. of the goods or services to which the mark is applied. (d) the quality-image or reputation acquired by the mark. Rule 102. characteristics. shall be deemed unlawful. However. or suitability for their purpose. (g) the extent to which the mark has been used in the world. including advertising or publicity and the presentation. in particular. likely to mislead the public. in particular. or any such use of a similar trade name or mark. extent and geographical area of any promotion of the mark. against any unlawful act committed by third parties. it is contrary to public order or morals and if. of the goods and/or services to which the mark applies. (c) The remedies provided for cancellation and infringent of marks in Sections 153 to 156 and Sections 166 and 167 of the IP Code shall apply to tradenames mutatis mutandis. such names shall be protected. Rule 103. (d) Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name. (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark. Criteria for determining whether a mark is well-known. Trade Names or Business Names. (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark. any subsequent use of the trade name by a third party. (h) the exclusivity of use attained by the mark in the world. at fairs or exhibitions. In particular. such transfer or assignment shall be null and void if it is liable to mislead the public.INTELLECTUAL PROPERTY LAW The nature of the goods or services to which the mark is applied will not constitute an obstacle to registration. (i) the commercial value attributed to the mark in the world. the following criteria or any combination thereof may be taken into account: (a) the duration. JUNE S RADI COPYRIGHT 2010 . source. in the Philippines and in other countries. (b) Notwithstanding any laws or regulations providing for any obligation to register trade names. it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. (b) the market share. (c) the degree of the inherent or acquired distinction of the mark. (e) the extent to which the mark has been registered in the world. the duration. whether as a trade name or a mark or collective mark. extent and geographical area of any use of the mark. of the goods and/or services to which the mark applies. In determining whether a mark is well-known. (j) the record of successful protection of the rights in the mark.

in addition to the rights to which any owner of an intellectual property right is otherwise entitled by the Intellectual Property Code. Rule 203. or otherwise disposed of. (e) In like manner and subject to the same conditions and requirements. The rights in a mark shall be acquired through registration made validly in accordance with the law. shall be entitled to benefits to the extent necessary to give effect to any provision of such convention. That. that is not registered in the Philippines. (a) Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention. domiciled. and who previously duly filed an application for registration of the same mark in one of those countries. Rule 201. the priority right may be based upon a subsequent regularly filed application in the same foreign country: Provided. or extends reciprocal rights to nationals of the Philippines by law. shall be considered as filed as of the day the application was first filed in the foreign country. (b) No registration of a mark in the Philippines by a person described in this JUNE S RADI COPYRIGHT 2010 . (c) The country of origin of the applicant is the country in which he is a national. notwithstanding the foregoing. Requirements for Applications Claiming Priority Right. An application claiming priority right must be filed within six (6) months from the date the earliest foreign application was filed. That any foreign application that was made the basis of the priority right and filed prior to such subsequent application has been withdrawn. against an identical or confusingly similar mark. International Conventions and Reciprocity. without having been laid open to public inspection and without leaving any rights outstanding. treaty or reciprocal law. (a) An application for registration of a mark filed in the Philippines by a person referred to in Rule 201. Priority Right. or petition the cancellation of its registration or sue for unfair competition. treaty or agreement relating to intellectual property rights or the repression of unfair competition. (b) The registration of a mark of such person shall be independent of the registration in the country of origin and the duration. may. to which the Philippines is also a party. and has not served as a basis for claiming a right of priority shall not thereafter serve as a basis for claiming a right of priority. the owner of a well-known mark. A certified copy of the corresponding foreign application together with an English translation must filed within Rule 202.INTELLECTUAL PROPERTY LAW PART 2 RIGHT TO A MARK Rule 200. or has a bona fide and effective industrial or commercial establishment. without prejudice to availing himself of other remedies provided for under the law. Provided. rule shall be granted until such mark has been registered in the country of origin of the applicant. How Marks are Acquired. abandoned. (d) Nothing in this rule shall entitle the owner of a registration granted under this rule to sue for acts committed prior to the date on which his mark was registered in the Philippines. Basis for Claiming Priority Right. validity or transfer in the Philippines of such registration shall be governed by the IP Code and these Regulations. oppose its registration. as defined in the IP Code and these Regulations.

In case the whole interest in the mark is assigned. the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark. must contain the name and address of the applicant or registrant declaring that the mark is in actual use in the Philippines. The declarant should also attach five labels as actually used on the goods or the picture of the stamped or marked container visibly and legibly showing the mark as well as proof of payment of the prescribed fee. the application shall be refused or the mark shall be removed from the register by the Director motu proprio. sales invoices. Representation. without possibility of extension. Assigned marks. the application may be filed in the name of the assignee who may sign the application. each of the joint owners will sign the application. Applicant may be represented by attorney. (a) Applicant may be a person or juridical person. The declaration shall be under oath. must refer to not more than one application or registration. In case the assignee is a juridical person. all applicants or registrants shall file a declaration of actual use of the mark with evidence to that effect within three years. official receipts. he shall designate by a written document filed in the Office. Rule 303. list the name or names and the exact location or locations of the outlet or outlets where the products are being sold or where the services are being rendered. furnishing copies of printed advertisement and other proofs of advertising with a statement of the advertising cost in the immediately preceeding fiscal year as shown in the corresponding audited financial statements where applicable. The Applicant. Address for Service. Rule 205. The owner of a mark may file and prosecute his own application for registration. specifying the nature of such use. Rule 302. any officer thereof may sign the application in behalf of the said person. In case of an aliquot portion or undivided interest. without need of any notice from the Office. Contents of the declaration and evidence of actual use. from the filing date of the application. JUNE S RADI COPYRIGHT 2010 . list the goods where the mark is attached. The Office will not require any proof of use in commerce in the processing of trademark applications. If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines. Rule 204. Rule 301. (b) Unless modified by this Chapter. Declaration of actual use. stating the volume of sales during the fiscal year immediately preceding the filing of the declaration. recite sufficient facts to show that the mark described in the application or registration is being actually used in the Philippines. or income tax returns in all cases. Such notices or services may be served upon the person so designated by leaving a copy thereof at the address specified in the last designation filed. PART 3 WHO MAY APPLY FOR A MARK Rule 300. If the person so designated cannot be found at the address given in the last designation. If there are more than one applicant. all of them should be named as applicant but anyone may sign the application for and in behalf of all the applicants.INTELLECTUAL PROPERTY LAW three (3) months from the date of filing in the Philippines. However. such notice or process may be served upon the Director. Otherwise. attaching certified or original copies of purchase orders. all applications for a mark should be in the name of the applicant(s) who may sign the application.

the Office shall accept: (1) A handwritten signature. where the signature concerns the surrender of a registration. ex parte or inter partes. guardian. if any. The Office shall not aid in the selection of an attorney or agent other than the furnishing of the list of Attorneys or agents authorized to practise before the Office. or (2) The use of other forms of signature. it should be accompanied by an indication in letters of the name of the signatory. When the applicant dies. Rule 304. (f) where the applicant claims the priority of an earlier application. (d) where the applicant is a juridical entity. will be required. Signature. That where a seal is used. except. (b) the name and address of the applicant. the law under which it is organized and existing. becomes insane or otherwise incapacitated. All applications must be addressed to the Director and shall be in Filipino or English and shall contain the following: (a) a request for registration. or the use of a seal. Power of attorney or authorization. legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs. Death. A substitute or associate attorney may be appointed by an attorney only upon the written authorization of his principal. a declaration claiming the priority of that earlier application. conservator or representative of the dead or insane or incapacitated applicant may prosecute the application in behalf of the heirs and successors-in-interest of the applicant. administrator. (e) the appointment of an agent or representative. a power of attorney or authorization must be filed in that particular case or proceeding. together with an indication of: . but a third attorney appointed by the second will not be recognized. Rule 306. and other means of Selfidentification. instead of a hand-written signature: Provided. such as a printed or stamped signature. Rule 305.INTELLECTUAL PROPERTY LAW or he may be represented by any attorney or other person authorized to practice in such matters by the Office. the legally appointed executor. (c) the name of a State of which the applicant is a national or where he has domicile. incapacity of applicant. if the applicant is not domiciled in the Philippines. PART 4 TRADEMARK APPLICATION Rule 400. and the name of a State in which the applicant has a real and effective industrial or commercial establishment. (b) No attestation. Before any attorney-at-law or other recognized person will be allowed to file an application or take action in any case or proceeding. authentication. Requirements of application.the name of the State with whose National Office the earlier application was filed or if filed with an Office other JUNE S RADI COPYRIGHT 2010 . (a) Where a signature is required. notarization. insanity.

(l) where the application is for a collective mark. The applicant may include the label as actually used or intended to be used on the goods or a copy or duplicate made by photo engraving or some similar process. Office Application Form. of the principal parts of the mark which are in that color. (a) The drawing of the mark shall be substantially exact representation thereof as actually used or intended to be used on or in connection with. the name of that Office. (n) Power of Attorney if the filing is through a representative. (m) a signature by. . (j) a transliteration or translation of the mark or of some parts of the mark.INTELLECTUAL PROPERTY LAW than a National Office.where available. as prescribed in these Regulations. style of lettering. and (o) sworn Statement that the applicant is a small entity if such be the fact. the Office shall draw up and make available a standard application form which may be reproduced at will by applicants and other persons at their own cost. The mark must be bigger and more dominant than the generic term of goods except in the case of medicine as required by law. (g) where the applicant wishes to claim color as a distinctive feature of the mark. in respect of each color. or unusual forms of punctuation. JUNE S RADI COPYRIGHT 2010 . Drawing. a statement to that effect as well as the name or names of the color or colors claimed and an indication. diacritical marks. or other selfidentification of. (b) A typed drawing may be accepted by the Examiner if no special characteristics have to be shown such as design. Rule 401. For the convenience of applicants. color. a designation to that effect. the application number of the earlier application. grouped according to the classes of the Nice Classification. (h) where the mark is a threedimensional mark. the applicant or his representative. Label. a statement to that effect. A computer print-out may also be accepted by the Examiner if it substantially complies with the requirement that it must be the exact representation of the mark. (k) the names of the goods or services for which the registration is sought.the date on which the earlier application was filed. Rule 402. and . (i) a reproduction of the mark and facsimiles thereof as provided in these Regulations. together with the number of the class of the said Classification to which each group of goods or services belongs. the goods or services of the applicant. Rule 403.

INTELLECTUAL PROPERTY LAW
(c) The provisions of this Rule shall, however be construed liberally in determining whether the applications shall be considered complete for the purpose of granting a filing date. Rule 404. Drawing for a service mark may be dispensed with in certain cases. The drawing of a service mark may be dispensed with but the application must contain an adequate description of such mark. Rule 405. Drawing to be on Bristol board. The Drawing must be made upon pure white paper of a thickness of a Bristol board. The surface of the paper must be calendered and smooth. Rule 406. Size of board; ³sight´. The size of a sheet on which a Drawing is made must be exactly two hundred ten millimeters (210 mm) by two hundred ninety-seven millimeters (297 mm) or the size of an A4 paper. Nineteen millimeters (19 mm) from its edges, a single marginal line is to be drawn, leaving the ³sight´ precisely one hundred seventy-two millimeters (172 mm) by two hundred fifty-nine millimeters (259 mm). Within this margin all work and signatures must be included. One of the shorter sides of the sheet should be regarded as its top. Rule 407. Drawing to be with the pen or by other processing giving satisfactory results. If colors are not claimed, all Drawings must be made with pen only or by a process which will give them satisfactory reproduction characteristics. Every line and letter, signatures included, must be absolutely black. This direction applies to all lines, however fine, and to shading. All lines must be clean, sharp, and solid, and they must not be too fine or crowded. Surface shading, when used, should be open. Rule 408. The name of the owner to be within marginal lines. The name of the proprietor of the trademark or service mark trade name must be within the marginal lines and should not encroach upon the drawing. It should be signed by the owner or his Attorney of record. However, a printed or stamped signature or the use of seal accompanied by an indication in letters of the name of signatory is also accepted. Rule 409. When board may be turned on its side. When the view is longer than the width of the sheet, the sheet should be turned on its side. Rule 410. Manner of mailing the Drawing to the Bureau. Drawing transmitted to the Office should be sent flat, protected by a sheet of heavy binder¶s board, or should be rolled for transmission in a suitable mailing tube. They should never be folded. Rule 411. Color. Where color is a material feature of the mark as used or intended to be used, the color or colors employed may be actually reproduced in the drawings and facsimiles. Otherwise, a statement must be made giving the name or names of the color or colors claimed indicating the principal part or parts of the mark which are in such color or colors. Rule 412. Informal Drawing. A Drawing not executed in conformity with the foregoing rules may be accepted for the purpose of examination, but the Drawing must be corrected or a new one furnished, as may be required, before the mark can be published for opposition or the application allowed. Substitute Drawings will not be accepted unless they have been required by the Examiner or unless correction of original Drawing would require that the mark or trade name be substantially entirely redrawn.

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INTELLECTUAL PROPERTY LAW
Rule 413. Use of an old Drawing in a new application. In an application filed in place of an abandoned or rejected application, a new complete application is required, but the old Drawing, if suitable, may be used. The application must be accompanied by a request for the transfer of the Drawing, and by a permanent photographic copy, or an order for such copy, of the Drawing to be placed in the original file. A drawing so transferred or to be transferred cannot be amended. Rule 414. The Small facsimiles of the Drawing, how prepared. The ten small facsimiles of the Drawing must be printed in black ink or in color, if colors are claimed, one facsimile on Bristol board and the other nine facsimiles on an ordinary coupon bond paper and must be capable of being satisfactorily reproduced when published in the IPO Gazette. The size of the sheet on which these facsimiles are to be printed must be seventy millimeters (70 mm) long and thirty-five millimeters (35 mm) wide. Rule 415. Translation/Transliteration. A translation or transliteration of the mark or of some parts of the mark must accompany the application if the mark or of some parts of the mark is/are foreign word(s), letter(s) and character(s), or foreign sounding. Transliteration is an act, process or instance of representing or spelling of words, letters or characters of one language in the letters and characters of another language or alphabet. Translation is an act, process or instance of translating as rendering from one language or representational system into another. Rule 416. Nice Classification. The applicant must indicate the names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the Nice Classification to which each group of goods or services belongs. CLASSIFICATION OF GOODS TITLE CLASS 1 Chemical products used in industry, science, photography, agriculture, horticulture, forestry; artificial and synthetic resins; plastics in the form of powders, liquids or plates, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry. 2 Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; colouring matters; dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators. 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions, dentrifices. 4 Industrial oils and greases (other than edible oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, nightlights and wicks. 5 Pharmaceutical, veterinary and sanitary substances; infants¶; and invalids¶ foods; plasters, material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin.

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6 Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles); cables and wires (non-electric); lock-smith¶ work ; metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes; ores. 7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators. 8 Hand tools and instruments; cutlery, forks and spoons; side arms. 9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; coin or counterfreed apparatus; talking machines; cash registers; calculating machines; fireextinguishing apparatus. 10 Surgical, medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and teeth). 11 Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. 12 Vehicles; apparatus for locomotion by land, air or water. 13 Firearms; ammunition and projectiles; explosive substances; fireworks. 14 Precious metals and their alloys and goods in precious metals or coated therewith ( except cutlery, forks and spoons); jewellery, precious stones; horological and other choronometric instruments. 15 Musical instruments (other than talking machines and wireless apparatus). 16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding materials; photographs; stationery, adhesive materials (stationery); artists¶ materials; paint brushes; typewriters and Office requisites (other than furniture); instructional and teaching material (other than apparatus);playing cards; (printers¶) type and cliches (stereotype). 17 Gutta percha, indiarubber, balata and substitutes, articles made from these substances, and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacturers; materials for packing, stopping or insulating; asbestos, mica and their products; hose pipes (nonmetallic). 18 Leather and imitations of leather, articles made from these materials, and not included in other classes; skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. 19 Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; roadmaking materials; asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots. 20 Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl,

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including boots. rice. baking-powder. tarpaulins. raw or manufactured. tea. mats and matting. 21 Small domestic utensils and containers (not of precious metal. ribbons and braids. glassware. raw textile materials. eggs. ices. or of plastic. 30 Coffee. textile articles not included in other classes. malt. Broad terms. buttons. brushes (other than paint brushes). bread. horticultural and forestry products and grains not included in other classes. etc. jams. string. yeast. coffee substitutes. JUNE S RADI COPYRIGHT 2010 . spices. seeds. ice. cocoa. syrups and other preparations for making beverages. mineral and aerated waters and other non-alcoholic drinks. sugar. capoc. substitutes for all these material. spirits and liquors. flour. sauces. live plants and flowers. cakes pastry and confectionery. 27 Carpets. 24 Tissues (piece goods). vinegar. artificial flowers. 22 Rope. smokers¶ articles. tents. feathers. biscuits. instruments and materials for cleaning purposes. press buttons. hooks and eyes. preserves. dried and cooked fruits and vegetables.INTELLECTUAL PROPERTY LAW meerschaum. steel wool. threads. 29 Meat. pins and needles. rugs. poultry and game. the use of broad terms in identifying the goods. 25 Clothing. fresh fruits and vegetables. shoes and slippers. celluloid. padding and stuffing materials (hair. preserved. sacks.brush-making materials. and preparations made from cereals. 28 Games and playthings. matches. 32 Beer. pickles. (b) CLASSIFICATION OF BUSINESS OR SERVICES 35 Advertising and business 36 Insurance and financial 37 Construction and repair 38 Communication 39 Transportation and storage 40 Material treatment 41 Education and entertainment 42 Miscellaneous Rule 417.combs and sponges. linoleums and other materials for covering existing floors. unworked or semi-worked glass (excluding glass used in building). 33 Wines. Applicants whose application are based on foreign registration shall be required to specify the goods covered by such foreign registration in all cases where the foreign registration used broad terms in identifying the goods. sago. treachel. jellies. meat extracts. business or services. ale and porter. 34 Tobacco. 26 Lace and embroidery. nets. pepper. sails. gymnastic and sporting articles (except clothing). fish. business or services shall be unacceptable. porcelain and earthenware not included in other classes. seaweeds. living animals.). wall hangings (non-textile). awnings. 31 Agricultural. 23 Yarns. tapioca. milk and other dairy products. foodstuffs for animals. honey. ornaments and decorations for Christmas trees. nor coated therewith). bed and table covers. salt mustard. In any application. edible oils and fats.

Rule 419. complete or correct the application as required. (b) If the application did not satisfy the requirements for grant of a filing date at the time that the filing fee and other indications were received by the Office. Rule 501. (b) The identity of the applicant. The new filing date shall be the date on which the Office received the completed or corrected application as specified in the notice to the applicant.INTELLECTUAL PROPERTY LAW Rule 418. Where goods and/or services belonging to several classes of the Nice Classification have been included in one (1) application. shall examine whether the application satisfies the requirements for the grant of a filing date as provided in these Regulations. Subject to the provisions on priority right. the application shall be considered withdrawn. (c) Indications sufficient to contact the applicant or his representative. Division of Applications. (a) Before starting to examine the registrability of a mark. (b) A single class shall not be subdivided. PART 6 JUNE S RADI COPYRIGHT 2010 . otherwise. The divisional applications shall likewise preserve the benefit of the right of priority of the initial application. Filing Date. PART 5 THE FILING DATE Rule 500. within a period of one (1) month from mailing date of the notice. (d) Upon receipt of the divisional applications. whether they belong to one (1) class or to several classes of the Nice Classification. the Office shall cancel the initial application together with its application number. If the application does not satisfy the filing date requirements. the filing date that was given shall be cancelled and a new filing date shall be entered in the records of the Office. One (1) application may relate to several goods and/or services. such an application shall result in one registration. the Examiner or such other personnel as the Director may authorize. Single registration for goods and/or services. New application numbers shall be given to the divisional applications but the filing date shall be the same as the filing date of the initial application. the Bureau shall notify the applicant who shall. (a) Any application referring to several goods or services referred to as the ³ initial application´ may be divided by the applicant into two (2) or more applications hereafter referred to as the ³divisional applications´ by distributing among the latter the goods or services referred to in the initial application. (c) The divisional applications must be submitted before examination of the initial application or within two (2) months from mailing date of the first action of the Bureau. if any. and (e) The list of the goods or services for which the registration is sought. (d) A reproduction of the mark whose registration is sought. Application Number and Filing Date. the filing date of an application shall be the date on which the Office received the payment for the required fee and the following indications and elements in English or Filipino: (a) An express or implicit indication that the registration of a mark is sought.

Preliminary adverse action of the Examiner valuable to Applicant. Application prosecuted ex parte. ABANDONMENT. representing the interest of the public and the applicant (or his attorney). the court itself (the Examiner) acting as the adverse party. The Examiner is charged with the protection of the interests of the public and hence must be vigilant to see that no registration issues for a mark contrary to law and these Regulations. An applicant should remember that the Examiner may not be actually rejecting his application. An application for registration is prosecuted ex parte by the applicant. representing his own private interests. its decisions with respect to the grant of a registration. or on any point connected with it. Applicant supposed to look after his own interests. Rule 601. represented by the Examiner. Rule 603. Ordinarily. The law imposes that duty upon the applicant himself. A preliminary rejection should not be taken literally. when it may then be difficult for him to make the explanation. the order of the application number assigned to them by the Office will be followed and no application bearing a higher application number shall be examined in advance of the applications with lower application numbers Rule 600. The Office is empowered by law to pass upon applications for registration and. ACTION BY THE EXAMINER. Examiner is only trying to be helpful. The Examiner may in fact be quite prepared to admit the application. Order of examination. priority of action. A preliminary rejection by the Examiner is never to be taken literally. CHAPTER 2. protests. are presumed to be correct by the courts. Rule 605. PROCEEDINGS NATURE OF THE appreciated by the applicant or his attorney. MANNER OF EXAMINATION OF AN APPLICATION FOR REGISTRATION. An ex parte proceeding in the Office for the registration of a mark is a law contest between the Examiner. and is only trying to give the applicant a chance to explain away some reference or some difficulty rather than have him wait until the registration is granted and become involved in a litigation. Proceedings a contest between Examiner and the Applicant. The Office. REVIVAL. unless information of the pendency of these applications shall have been voluntarily communicated by the applicants.INTELLECTUAL PROPERTY LAW PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR REGISTRATION CHAPTER 1. Rule 602. is not supposed to look after the interest of an applicant. A hard-fought application will produce a registration much more likely to stand in court than a registration which has slid through the Office easily. the proceedings are like a lawsuit in which there is a plaintiff (the applicant) but no defendant. No attention shall be paid to ex parte statements or protests of persons concerning pending applications to which they are not parties. because of the authority vested in it. Applications shall be examined for registrability in the order in which the complete requirements for grant of filing date are received by the Office. The positive value of a preliminary adverse action of the Examiner should be fully JUNE S RADI COPYRIGHT 2010 . Rule 604. that is. RESPONSE BY THE APPLICANT. The reason for this is that every point raised by the Examiner and finally decided by the Office in favor of the applicant will give the applicant a prima facie standing on that point in court.

The Examiners shall have original jurisdiction over the examination of all applications for registration and over their allowance for publication in the IPO Gazette for purposes of opposition. (b) All Examiners are required to include all grounds of objection existing at the time of the issuance of an action in that action. Interview with the Examiners: when no interview is permitted. All interviews or conferences with Examiners shall be reduced to writing and signed by the Examiner and the applicant immediately after the conference. Rule 609. where the disclaimed matter has become distinctive of the applicant¶s goods. business or services. but such disclaimer shall not prejudice or affect the applicant¶s rights then existing under some other law or thereafter arising in the disclaimed matter. The basic purpose of disclaimers is to make of record. JUNE S RADI COPYRIGHT 2010 . (c) a matter which does not function as a trademark. The following portions of a mark when comprising less than the entire mark.INTELLECTUAL PROPERTY LAW unless the filing date or the priority date of the application bearing the higher number is earlier than those bearing a lower number. Rule 607. but in respect of which the Examiner has the discretion to grant the interview or instead reply to the query in writing. Their decision. Examination of the application. Applicants. and he will be given such information and references as may be helpful to him in the further prosecution of his application. The period to respond may be extended upon written request and upon payment of the required fee but in no case shall the total period to respond exceed four (4) months from the mailing date of the Examiner¶s action requiring the response. must be disclaimed to permit registration. or service mark or a trade name. action by the Examiner. Rule 610. after the examination. he will be so notified by the Examiner. Interviews for the discussion of pending applications shall not be held prior to the first official action thereon. shall be subject to petition and appeal to the Director. Piece meal action shall be prohibited. The interview shall take place within the premises of the Office and during regular office hours as specified by the Examiner. the applicant is found not entitled to registration for any reason. namely (a) a generic term. Jurisdiction of the Examiner. Deletion and/or disclaimer may be required. Such response may be made with or without amendment and must include such proper action by the applicant as the nature of the action of the Examiner and the condition of the case may require. (b) a descriptive matter in the composite mark. Rule 608. Such writing shall form part of the records of the Office. action by applicant. He will be advised of the reasons therefor and of any formal requirements or objections. when final. that a significant element of a composite mark is not being exclusively appropriated by itself apart from the composite. The applicant has two (2) months from the mailing date of any action of the Examiner to respond thereto. nor shall such disclaimer prejudice or affect the applicant¶s rights to registration on another application of later date. Rule 606. their attorneys or agents shall take up the problems arising from their pending applications only with the respective Examiners in charge and with no other person in the Office. The Examiners may require unregistrable matter to be deleted from the Drawing or disclaimed in the application. Interviews with Examiners concerning applications pending before the Office can be held only upon written request specifying the query he would want to propound and after payment of the required fee. Period for response. (a) If.

as may be established by the Office from time to time. the Examiner shall confirm the date of receipt of the telefacsimile by means of a notice requiring the applicant to pay the cost. Unless the applicant is notified in writing that response is required in less than four months. the applicant may respond again. When communications are made by telefacsimile. the indication in letters of the name of the natural person whose seal is used. (a) An abandoned application may be revived as a pending application within three (3) months from the date of abandonment. Rule 612. (a) The applicant may be required to prosecute his application in a time shorter than four months but not less than one (1) month from the mailing date of the examiner¶s action whenever such shorter time is deemed necessary or expedient. Any application not revived within the specified time will be deemed forfeited upon the expiration of the threemonth period to revive. Time less than four months. the applicant¶s recourse is limited to an appeal to the Director or to a compliance with the requirement made by the Examiner. On the first or any subsequent re-examination or reconsideration. but not stated to be final. The Office shall accept communications to it by telecopier. Rule 613. the reproduction of the signature. (c) There shall be no revival of an abandoned application that has been revived once before on the same issue. The original copy such communication and the payment of the cost herein provided must be received by the Office within one (1) month from date of receipt of the telefacsimile. Rule 616. or the reproduction of the seal together with. the burden of proof lies on the applicant that such documents have been received by the Office. where required. a maximum period of four months is allowed. when request for extension should be made. must appear. mistake. Communications other than the original. Within twenty-four (24) hours from receipt of the telefacsimile by a machine of the Office. Thus. unless the same has been previously filed.INTELLECTUAL PROPERTY LAW Rule 611. ³Communication´ shall mean any response filed with the Office except compliance with filing date requirements. that the delay was due to fraud. In all cases. Final action. Re-examination. the application shall be deemed abandoned as of the day immediately following the last day of the aforesaid period. if it is shown to the satisfaction of the Director. Abandonment. Revival of abandoned application. or by electronic means. and if the registration is again refused or formal requirements insisted upon. JUNE S RADI COPYRIGHT 2010 . the Examiner may state that the refusal of the registration or the insistence upon a requirement is final. the communication shall be deemed withdrawn and expunged from the records. or excusable negligence. or to submit a complete response. If an applicant fails to respond. (b) A request to revive an abandoned application must be accompanied by a statement of the causes of the delay in submitting the complete response and by the proposed response. the application will be reexamined or reconsidered by the Examiner. Otherwise. accident. Rule 614. After response by the applicant. within the period given counted from the mailing date of an action of the Examiner. Rule 615. incomplete response. and upon payment of the required fee. incurred by the Office to enable the Office to receive such telefacsimile.

and written on only one side of the paper. If the only issue remaining in an application based on foreign application claiming priority right is the submission of a certified copy of the foreign or home registration. Rule 621. Amendments to the application. Rule 617. counted from expiration of the twenty four (24) month period. counted from the expiration of the maximum twenty four (24) month period without need of any notice from the Office. Rule 619. the maximum time within which to submit a response to an action shall not exceed four months from the mailing date of the action. The declaration of actual use shall be filed within twelve (12) months. said twelve month period may be extended for good cause by an additional period not exceeding twelve (12) months. JUNE S RADI COPYRIGHT 2010 . to overcome objections made by the Examiner. shall not be subject to suspension. which is awaiting a response by the applicant. the application shall be refused by the Director motu proprio. Action by the Bureau may be suspended upon written request of the applicant for good and sufficient cause. Rule 620. CHAPTER 3. or for other reasons arising in the course of examination. The application may be amended to correct formalities. without extension. An Examiner¶s action. and any further suspension shall be subject to the approval of the Director. Suspension of action by the Bureau. Express abandonment.INTELLECTUAL PROPERTY LAW (b) The time for reply. On request of the applicant and subject to the approval of the Director and payment of the required fee. Manner of making the amendment. An application may be expressly abandoned by filing with the Bureau a written declaration of abandonment signed by the applicant himself or by the assignee of record. Amendments to description or drawing. The Examiner may grant only one suspension. In every amendment the exact word or words to be stricken out or inserted must be specified and the precise point indicated where the erasure or insertion is to be made. Provisional Allowance. In all cases. but may not be made if the nature of the mark is changed thereby. without extension and without need of notice. All such amendments must be on sheets of paper separate from the papers previously filed. the application shall be deemed forfeited. Otherwise. will be extended only for good and sufficient cause and for a reasonable time specified. Should the applicant fail to submit the certified copy of the foreign or home registration within the maximum period of twenty four (24) months counted from allowance. Rule 618. Any request for such extension must be filed on or before the day on which the response of the applicant is due. AMENDMENTS TO THE APPLICATION. when a time less than four months has been set. Otherwise. Rule 622. Said waiver and request shall be filed within two (2) months. RESPONSE TO OBJECTIONS OF THE EXAMINER. the Examiner may provisionally allow the application and suspend the submission of the certified copy of the foreign or home registration for a period not exceeding twelve (12) months counted from allowance. for a reasonable time specified and upon payment of the required fee. the applicant may waive his claim to priority right in writing and request that the application be considered based on intent to use. Amendments to the description or drawing of the mark may be permitted only if warranted by the mark as shown on the labels originally filed.

after examination or re-examination of an application for registration. Examiner to be in charge of publication for opposition. whether or not verified and whether or not by means of the original copy. end of jurisdiction of the Examiner. addition. upon the recommendation of said Examiner. An application for registration is subject to opposition proceeding before issuance of the certificate of registration. Rule 701. business or service or container with which the mark or trade name or name or other mark of ownership is used. an index of pending applications stating the name and address of the applicant. and the applicant notified of such action. the office shall issue the certificate of registration. The Examiner shall be in charge of all matters relating to the publication for opposition of all marks and trade names ordered by the Director to be published as provided in these Regulations. of an allowed application. Examiner may petition for the remand to his jurisdiction. if it should appear to the Examiner in charge of the examination thereof that the applicant is entitled to have his mark registered.INTELLECTUAL PROPERTY LAW Rule 623. applications confidential prior to publication. and upon payment of the required fee. Prohibition against marking of papers or records of the Office by applicants. Rule 702. insertion. the Examiner may again exercise jurisdiction over an application upon petition by him to the Director on the ground of newly discovered ex parte objections to the registration of the mark. the application number and filing date of the application will be available for public inspection as soon as practicable after filing. Rule 703. without the written authority of the applicant. any amendment recommended by the Examiner may be approved by the Director and may be made without withdrawing the allowance. The issuance of the certificate of registration shall be JUNE S RADI COPYRIGHT 2010 . provided the payment for the issuance of the certificate has not been received by the Office. the goods. Publication in the IPO Gazette. the mark will. However. The jurisdiction of an Examiner over an application ceases after the Director has ordered the mark to be published for opposition. Access to files of pending applications will not be given to anyone prior to publication for opposition of the mark or trade name or name and other mark of ownership stamped on containers. After allowance and within one (1) month from publication of the allowed application. ALLOWANCE AND ISSUANCE OF CERTIFICATE OF REGISTRATION Rule 700. The applicant or his representative shall not make any erasure. the class number. The Director of the Bureau of Legal Affairs shall issue such certification within two (2) months from the date of release for ciriculation of any IPO Gazette publishing applications for opposition. (a) Upon certification by the Director of the Bureau of Legal Affairs that no notice of opposition. Thus. After an application has been remanded to the Examiner. has been filed within one (1) month from the date of release for circulation of the IPO Gazette publishing the application for opposition. Allowance of application and issuance of certificate of registration. or mutilations of any papers or records of the Office. PART 7 PUBLICATION. a description of the mark or trade name or name and other mark of ownership. be ordered by the Director to be published in the IPO Gazette for opposition.

Use of a mark in a different form. (b) The special circumstances to excuse nonuse in affidavits of non-use shall not be accepted unless they are clearly beyond the control of the registrant such as the prohibition of sale imposed by government regulation. That the interests of the owner of the registered mark are likely to be damaged by such use. however.INTELLECTUAL PROPERTY LAW published in the IPO Gazette and shall be entered on the records of the Office. which does not alter its distinctive character. the Office shall remove the mark from the Register. The abandoned application. Rule 803. Non-use of a mark when excused. (b) The exclusive right of the owner of a well-known mark which is registered in the Philippines. within one (1) year from the fifth anniversary of the date of the registration of the mark. Duration. Provided. or shall show valid reasons based on the existence of obstacles to such use. JUNE S RADI COPYRIGHT 2010 . Rights conferred. may be revived subject to the requirements of these Regulations. That use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further. the Examiner shall notify the registrant of the action taken thereon such as acceptance or refusal. That. A certificate of registration shall remain in force for ten (10) years. (b) If the application is deficient in any formal matter relating to form. Rule 801. shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark. In case of the use of an identical sign for identical goods or services. Within one (1) month from receipt of the declaration of actual use or reason for non-use. Otherwise. shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided. the registrant shall file a declaration of actual use and evidence to that effect. Rule 804. Rule 802. (a) The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner¶s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the mark is registered where such use would result in a likelihood of confusion. The applicant shall complete such deficiency within two (2) months from mailing date of the notice. or other papers necessary for the preparation and issuance of the certificate of registration or for the publication of such registration. without need of any notice from the Office. otherwise the application shall be declared abandoned. the Examiner shall send a notice thereof to the applicant. The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class. a likelihood of confusion shall be presumed. PART 8 EFFECT AND NOTICE OF REGISTRATION Rule 800. Lack of funds shall not excuse nonuse of a mark. Use of a mark for goods belonging to the class registered. as prescribed by these Regulations. The use of the mark in a form different from the form in which it is registered. (a) Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. documents.

Jurisdiction of the Examiner. Certificate of registration. and his decisions. the dates of application and registration. basis of the priority claims. his address for service within the country. registrants or assignees. and voluntary disclaimer of registration. such use shall inure to the benefit of the registrant or applicant. Upon application of the registrant. value. PART 9 OTHER PROCEEDINGS AFFECTING THE APPLICATION REGISTRATION OR CHAPTER 1. Use of a mark by related company. and the number. That such mark is not used in such manner as to deceive the public. or with such other officials and employees whom the Director may designate to assist him. The Examiner shall have original jurisdiction over all matters relating to voluntary surrender. an indication of this fact. place of origin. destination. the registrant¶s ownership of the mark. Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names. DISCLAIMER BY THE REGISTRANT OR BY ASSIGNEE OF RECORD. Contents of certificate of registration. quality. date and country of the application. with the indication of the corresponding class or classes. Rule 807. shall be subject to appeal to the Director in the same manner that final decisions of the Examiners in respect of applications for registration may be appealed to the Director. the name and address of the registered owner and. A certificate of registration of a mark shall be prima facie evidence of the validity of the registration. and such use shall not affect the validity of such mark or of its registration: Provided. or time of production or of supply. when final. and copies will be furnished upon payment of the required fees. and such other data as the Regulations may prescribe from time to time. a geographical name. addresses. if priority is claimed. records and copies in registered cases. the list of goods or services in respect of which registration has been granted. the Office may permit any registration to be JUNE S RADI COPYRIGHT 2010 . voluntary cancellation. The certificate of registration of a mark shall include a reproduction of the mark and shall mention its number. the statement. and all documents relating to the case are subject to general inspection. their attorneys or agents will deal with him exclusively. That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. Cancellation upon application by registrant. CORRECTION OF MISTAKES. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services. The use of a mark by a company related with the registrant or applicant shall inure to the latter¶s benefit. In all such matters. Rule 900. pseudonyms. or exact indications concerning the kind. Rule 806. AMENDMENT. of their goods or services: Provided. VOLUNTARY SURRENDER OR CANCELLATION. Rule 901. Rule 808. After a mark or trade name or name or other mark of ownership has been registered. Use of indications by third parties for purposes other than those for which the mark is used. the drawings.INTELLECTUAL PROPERTY LAW Rule 805. if the registered owner¶s address is outside the country. and of the registrant¶s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. voluntary amendment. quantity.

The application for cancellation of registration shall be under oath and shall be duly authenticated or legalized if the registrant is a non-resident. Appropriate entry shall be made in the records of the Office upon the certificate of registration or. surrender. (a) Upon application of the registrant and payment of the prescribed fee. Assignment and transfer of application and registration. (c) A copy of the certificate of correction shall be attached to each copy of the registration. and correction shall be published in the IPO Gazette. Rule 902. (b) The application for correction must be under oath and must specify the mistake for which correction is sought. All certificates of correction heretofore issued and the registration to which they are attached shall have the same force and effect as if such certificates and their issuance had been authorized by the IP Code. Correction of mistakes made by the Office. the Office. Surrender. (b) Upon application of the registrant and payment of the prescribed fee. or in the discretion of the Director of the Administrative. cancellation.INTELLECTUAL PROPERTY LAW surrendered for cancellation. CHAPTER 2. Rule 903. may permit any registration to be amended or to be disclaimed in part: Provided. RECORDING OF ASSIGNMENTS OF REGISTRATION OR ANY OTHER INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK. the manner in which it arose and must state that it occurred in good faith. amendment. That the correction does not involve any change in the registration that requires republication of the mark. and upon cancellation the appropriate entry shall be made in the records of the Office. Rule 904. INCLUDING LICENSES. Rule 906. and correction to be given publicity. Rule 905. That the amendment or disclaimer does not alter materially the character of the mark. if said certificate is lost or destroyed. for good cause. may JUNE S RADI COPYRIGHT 2010 . disclaimer. Corrections of mistakes made by applicant. a certificate stating the fact and nature of such mistake shall be issued without charge. upon a certified copy thereof. amendment. Notice of the cancellation. Such corrected registration shall thereafter have the same effect as the original certificate. Financial and Human Resource Development Service Bureau a new certificate of registration may be issued in accordance with these Regulations and without charge. except when the notice of correction refers to a mistake of the Office. The cost of publication shall be for the account of the registrant or assignee of record. A duplicate original of such replacement certificate shall be kept in the records of the Office. the Office may issue a certificate upon the payment of the prescribed fee: Provided. recorded and a printed copy thereof shall be attached to each printed copy of the registration. Whenever a material mistake in a registration incurred through the fault of the Office is clearly disclosed by the records of the Office. (a) Whenever a mistake is made in a registration and such mistake occurred in good faith through the fault of the applicant. An application for registration of a mark. DIVISION OF REGISTRATION. disclaimer. a replacement certificate may be issued by the Office stating on its face the fact that it is a replacement and bearing the same entry regarding the amendment or disclaimer that was made on the certified copy of a lost or destroyed certificate. or its registration. Amendment or disclaimer of registration.

The request must state the name and address of the owner of record or his representative of record. Assignments and transfers of registration of marks shall be recorded at the Office on payment of the prescribed fee. Upon written request of an assignee of record.INTELLECTUAL PROPERTY LAW be assigned or transferred with or without the transf*er of the business using the mark. to be submitted in duplicate. Assignment. of the goods or services to which the mark is applied. or of its registration. Rule 908. Rule 907. registrant. the owner of the registered mark may request in writing and under oath that the registration be divided. no assignee will be recognized to take action. however. assignment and transfers of applications for registration shall. the goods and/or services into which the registration is to be divided specifying the JUNE S RADI COPYRIGHT 2010 . other document or license is the date of its receipt at the Office in proper form and accompanied by the full recording fee. and return the original to the party filing the instrument with a notation of the fact of recording. At any time during the life of a certificate of registration. the mark. Recordal of assignment or transfer. applicant or earlier assignee. Any action in any proceeding in the Office which may or must be taken by a registrant or applicant may be taken by the assignee to the exclusion of the original owner. The date of recording of an assignment. Date of receipt of instrument to be recorded considered its date of recording. other instrument or license and its translation. The original document of assignment. Rule 914. (a) The assignment of the application for registration of a mark. the Office shall retain the signed duplicate. and upon payment of the required fee. Rule 913. or suitability for their purpose. other instruments affecting the registration. Assignments and transfers shall have no effect against third parties until they are recorded at the Office. Division of registration. Form of assignment or transfer. a new certificate of registration for the unexpired period of the registration must be issued to the assignee. Clearance of Trademark License Agreement prior to recordal. After recordal. shall be notarized and require the signature of the applicant. Transfers by mergers or other forms of succession may be evidenced by the deed of merger or by any document supporting such transfer. shall be in the name of the assignee or transferee. on payment of the same fee. source. shall be submitted. characteristics. registrant or the assignee of record in case of subsequent assignment. the number and date of issuance of the certificate to be divided. together with a signed duplicate thereof. Unless such assignment has been recorded. provided the assignment has been recorded. and translation. and upon payment of the required fee. Rule 912. when registered. manufacturing process. A new certificate of registration must be issued to assignee. and the mark. Such assignment or transfer shall. Rule 911. be null and void if it is liable to mislead the public particularly as regards the nature. be provisionally recorded. Rule 909. or license. Any trademark license agreement shall be applied for clearance with the Documentation Information and Technology Transfer Bureau (DITTB) of the Office and shall be recorded only upon certification by the Director of the DITTB that the agreement does not violate Sections 87 and 88 of the IP Code. Rule 910. Action may be taken by assignee of record in any proceeding in Office.

the Director shall order that the original certificate be cancelled and new certificates of registration be issued for the remainder of the term covered by the original certificate. the date of filing and registration of the original registration. date and country of the application which is the basis of the priority claims. RENEWAL OF REGISTRATION Rule 917. Upon approval of the request to divide a registration and payment of the required fee.INTELLECTUAL PROPERTY LAW number of the class of said goods and/or services according to the Nice Classification. the name and address of that representative. CHAPTER 3. five (5) sets of the new labels must be submitted with the application. and such other data as the Regulations may prescribe from time to time. the list of goods or services covered by the transfer certificate of registration with the indication of the corresponding class or classes. (d) The filing date of the application which resulted in the registration concerned to be renewed. the name and address of the registered owner. (f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested. Rule 915. hereafter referred to as the ³right holder´. if priority is claimed. The request shall contain the following indications: (a) An indication that renewal is sought. The Bureau may grant the request to divide the registration provided that the division shall not involve any change in the registration that requires republication of the mark and provided that a single class shall not be subdivided. JUNE S RADI COPYRIGHT 2010 . (c) The registration number of the registration concerned. (e) Where the right holder has a representative. the date of request for division of the original registration. Cancellation of original certificate and issuance of transfer certificates of registration. Rule 916. grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classifications. Contents of transfer certificates of registration. the date of the issuance of the transfer certificate of registration. Request for renewal. and the number. (b) The name and address of the registrant or his successor-in-interest. (h) In case there has been material variation in the manner of display. the name of the registered owner of the original certificate in case the owner of the transfer certificate be a different person. his address for service within the country. and (g) A signature by the right holder or his representative. an indication of this fact. The transfer certificates of registration shall include a reproduction of the mark and shall mention their numbers. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. and if the registered owner¶s address is outside the country.

Rule 920. Rule 921. or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed. With the application for the renewal of a registration made under Republic Act No. the applicant for renewal may. including any renewal thereof. upon payment of the required fee. that marks whose registration have a remaining duration as of January 1. Renewal of prior Act registration. are subject to appeal to the Director under the conditions specified in these Regulations for appeals to the Director from the final decisions of the Examiners in respect of applications for registration. Prior Act certificate of registration to be surrendered. shall be reclassified in accordance with the Nice Classification. If the registrant. it shall notify the registrant of his refusal and the reasons therefor. if he so desires. when final. Need for appointing a resident agent. Refusal of renewal registration. 166 whose registration. provided. or the case may be appealed to the Director if the refusal has become final. 166. 166. and if the petition for renewal is being filed by a person who is not his representative or residentagent of record. and his decisions. must be recorded before the Office can act upon the petition for renewal. upon renewal. Marks registered under Republic Act No. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed. 1998 of more than six and one-half (6 ½) years shall be required to submit the declaration and evidence of actual use prescribed in these Regulations within one (1) year following the tenth and fifteenth anniversaries of the registration or renewal registration under Republic Act No. upon payment of the usual fees. appeal to the Director. If the Office refuses to renew the registration. provided. When to file request for renewal. After he has surrendered the certificate of registration granted under Republic Act No. that marks whose registrations have a remaining duration of six and one-half (6 ½) years or less may no longer be subject to the requirement of declaration and evidence of use but shall be renewed within the time and in the manner provided for renewal of registration by these Regulations and. Jurisdiction of the Examiner. further. if the official copy of such certificate of registration is not in the files of the Office. Trade names and marks registered in the Supplemental Register under Republic Act No. The application for renewal may be refused by the Examiner for any valid reason. obtain a certified copy thereof. 1998 shall remain in force but shall no longer be subject to renewal. Rule 922. The renewal shall be for a duration of ten (10) years. Rule 919.INTELLECTUAL PROPERTY LAW Rule 918. required. 166 the certificate of registration to be renewed must be surrendered to the Office. use and proof thereof. was subsisting as of January 1. The Examiner shall have original jurisdiction over applications for renewal registration. 166 shall remain in force and effect but shall be deemed to have been granted under the IP Code and shall be renewed within the time and manner provided for renewal of registration by these Regulations. assignee or other owner of the mark which is the subject of a petition for renewal registration is not domiciled in the Philippines. JUNE S RADI COPYRIGHT 2010 . the power of attorney appointing the person filing the petition as the representative of the registrant must be filed and. Rule 923. The application for renewal may then be completed or amended in response to the refusal.

Rule 1101. Such petition. showing clearly and legibly the mark sought to be registered. the applicant or his representative shall bring a sample of the container to the Bureau on a date and time specified by the Examiner. is a quasi-judicial function and involves the exercise of judicial discretion. Petition may be filed with the Director from any repeated action or requirement of the Examiner which is not subject to appeal and in other appropriate circumstances. all the data required to be contained in a certificate of registration provided in these Regulations including any limitation contained in the order of the Director approving the renewal of the registration. Certificate of renewal of registration. Thus. must contain a statement of the facts JUNE S RADI COPYRIGHT 2010 . If the Examiner so requires. duly signed by the applicant or his representative. No drawing is required for this registration. the registration of container marks shall be the same as that of trademarks and service marks. the duration of the renewal registration. Rules on registration of trademarks and service marks to apply. The function of determining whether or not an application for registration or renewal thereof should be allowed or denied under the facts disclosed in the application and in the references consulted by the Examiner and under the applicable law (statutory and decisional). sample may be required. PART 11 PETITIONS AND APPEAL Rule 1100. exercised through a review of the recommendation they may make for the grant of registration and of other actions. provided that the mark cannot be deleted or removed from the container. the Director cannot lawfully exercise direct control. and through a review of their adverse decisions by petition or appeal. The sample shall not be left in the Office and shall be brought by the applicant or his representative with him immediately after the viewing thereof by the Examiner. The Office may issue a certificate of renewal of registration in all cases where the request for renewal is approved and the registrant requests in writing and pays the required fee for the issuance of said certificate. Petition to the Director to question the correctness of the action of an Examiner on a matter not subject to appeal. the date of original issuance thereof. The photographs shall be of the same size as required for trademarks and service marks. The stamp or mark on the container must be legible and visible for registration. Rule 1001. ³Stamped or marked container´ defined. ³Stamped or marked container´ means any container of goods upon which a mark is impressed or molded which will give a distinctive effect. The certificate of renewal of registration shall contain the number of the certificate of registration and the mark being renewed.INTELLECTUAL PROPERTY LAW Rule 924. Unless otherwise provided by these Regulations. with respect to such function. direction and supervision over the Examiners but only general supervision. Nature of the function of Examiners. and any other petition which may be filed. two (2) photographs of the container. PART 10 REGISTRATION OF STAMPED OR MARKED CONTAINER Rule 1000. Rule 1002. Rule 1003. No labels required. No drawing required. No ³sight´ is required. shall be submitted. In lieu of the drawing.

Appeals to the Director. the appellant shall. A final decision of an Examiner which is not appealed to the Director within the time permitted. as the case may be. Appellant¶s brief required. file a brief of the authorities and arguments on which he relies to maintain his appeal. in no case. the appeal is not prosecuted. The decision or order of the Director shall become final and executory fifteen (15) days after receipt of a copy thereof by the appellant JUNE S RADI COPYRIGHT 2010 . if any. Rule 1107. Briefs or memoranda. exceed the maximum period of four (4) months from the mailing date of the action appealed from. as the case may be. the order declaring the application as abandoned which has become final shall likewise have the effect of res judicata. The mere filing of a petition will not stay the maximum period of four months counted from the mailing date of the Examiner¶s action subject of the appeal for replying to an Examiner¶s action nor act as a stay of other proceedings. Rule 1102. The Examiner¶s answer. Appellant¶s reply. may be directed by the Director to furnish a written statement setting forth the reasons for his decision upon the matter averred in the petition. and shall have the effect of res judicata in respect of any subsequent action on the same subject matter. Every applicant for the registration of a mark or other mark of ownership may. must specify the various grounds upon which the appeal is taken. Rule 1108. If an application is considered abandoned for failure of the applicant to respond to an action of the examiner on the merits e. citation of confusingly similar marks. or registrant for purposes of appeal. or. Time and manner of appeal. Rule 1104. The Examiner shall furnish a written statement in answer to the petition or appellant¶s brief. Effect of a final decision of an Examiner which is not appealed. The period herein provided shall. Rule 1106. shall be considered as final to all intents and purposes. Copy of such statement shall be served on the petitioner or appellant by the Examiner. Rule 1103. Appeal to the Director General. petitioner. if appealed. within two (2) months. appeal the matter to the Director. In case of an appeal. as the case may be. The Examiner. in support thereof should accompany or be embodied in the petition.g. within one (1) month from the date copy of such answer is received by him. upon the final refusal of the Examiner to allow registration. On failure to file the brief within the time allowed. Any petition or appeal must be taken by filing the petition in duplicate or a notice of appeal. the appeal shall stand dismissed. within two (2) months from the order of the Director directing him to submit such statement. In case of an appeal. and payment of the required fee within two (2) months from the mailing date of the action appealed from. without extension. the appellant may file a reply brief directed only to such new points as may be raised in the Examiner¶s answer. supplying a copy thereof to the petitioner. A second adverse decision by the Examiner on the same grounds may be considered as final by the applicant. from the date of filing of the notice of appeal.INTELLECTUAL PROPERTY LAW involved and the point or points to be reviewed. Appeal may also be taken to the Director from any adverse action of the Examiner in any matter over which these Regulations give original jurisdiction to the Examiner. and must be signed by the petitioner or appellant or by his attorney of record. Rule 1105.

(b) Personal attendance of applicants and other persons unnecessary. a motion for reconsideration is filed with the Director or an appeal to the Director General has been perfected by filing a notice of appeal and payment of the required fee. All Office letters with respect to matters within the jurisdiction of the Bureau must be sent in the name of the Director of Trademarks. No attention will be paid to any alleged oral promise. Rule 1109. Only one motion for reconsideration of the decision or order of the Director shall be allowed. When a letter concerns an application it shall state the name of the applicant. In every case. the mark registered. the mark or trade name or name or other mark of ownership sought to be registered. Unless otherwise provided. (e) Letter relating to applications. and the classes of goods or services according to the Nice Classification. FINAL PROVISIONS Section 1. a separate letter shall be written in relation to each distinct subject of inquiry. When the letter concerns a registered mark. it shall state the name of the registrant. file a brief of the authorities and arguments on which he relies to maintain his appeal. Director¶s comment. (f) Letter relating to registrations. the appeal shall stand dismissed.INTELLECTUAL PROPERTY LAW unless within the said period. Actions will be based exclusively on the written record. they will ordinarily be returned. Correspondence. Appellant¶s brief required. Their business can be transacted by correspondence. On failure to file the brief within the time allowed. Rule 1111. No motion for reconsideration of the decision or order of the Director General shall be allowed. (c) Correspondence to be in the name of the Director of Trademarks. JUNE S RADI COPYRIGHT 2010 . All business with the Office or Bureau shall be transacted in writing. the number and date of the certificate of registration. Rule 1110. or understanding. the personal attendance of applicants and other persons at the Office is unnecessary. (d) Separate letter for each case. All letters and other communications intended with respect to such matters must be addressed to him and if addressed to any other officer. The appellant shall. The Director shall submit within one (1) month his comments on the appellant¶s brief if so required by the Director General. The decision of the Director General shall be final and executory unless an appeal to the Court of Appeals is perfected in accordance with the Rules of Court applicable to appeals from decisions of Regional Trial Courts. The following regulations shall apply to correspondence between registrants/applicants and the Office or the Bureau: (a) Business to be transacted in writing. within one (1) month from the date of filing of the notice of appeal. stipulation. the application number and the filing date of the application. Appeal to the Court of Appeals.

Fees and charges to be prepaid. within three (3) years from the effectivity of these Regulations. JUNE S RADI COPYRIGHT 2010 . On the propriety of making an application for the registration of a mark. applicants with pending applications for registration in the former Supplemental Register who wish to pursue the grant of registration may amend their applications to comply with requirements for registration under the IP Code. declaration of actual use. without need of any notice from the Office. without possibility of extension. Filing date of pending applications. postage. fees and charges payable in advance. telephone. Applications pending on effective date of the IP Code. shall file the corresponding declaration of actual use with evidence to that effect as prescribed by these Regulations. and its records pertaining to all registrations granted may be inspected either by himself or by any attorney or agent he may call to his aid. Applicants which elected to prosecute their applications under Republic Act No. Express charges. set to the individual making an inquiry of the character referred to. with a section marked. or circular of information. The following regulations shall apply to applications pending on the effective date of the IP Code on January 1. The Office is open to him. to bring them under the provisions of the IP Code. On or before December 15. The filing fees and all other fees and charges payable to the Office shall be collected by the Office in advance of any service to be rendered. if practicable. particularly with reference to applications for registration based on use in the Philippines. rules. be interpreted to prohibit the Office from undertaking an information dissemination activity in whatever format. 1998. telefacsimile including cost of paper and other related expenses. Accordingly. the Office shall not receive nor perform any action on such matters. Pending applications shall retain their priority date or original date of filing with the Bureau of Patents Trademarks and Technology Transfer. Examiners' digests are not open to public inspection.2. the applicant must judge for himself or consult an attorney-atlaw. 1998 (referred to in this Section as ³pending applications´): Section 3. in any way. freight. is intended as a respectful answer by the Office. all pending applications may be amended. Amendment of pending applications. Otherwise. and all other charges on any matter sent to the Office must be prepaid in full. A copy of the law.1. 166 and its implementing rules and regulations under which they were required to submit proof of use of the mark. Further than this the Office can render him no assistance until his application comes regularly before it in the manner prescribed by law and by these Regulations. The foregoing shall not. The Office cannot respond to inquiries as to whether or not a mark is acceptable for registration in advance of the filing of an application. to increase awareness on the trademark law. Section 3. Section 3.INTELLECTUAL PROPERTY LAW (g) Subjects on which information cannot be given. Section 2.

and. Interference. as amended. In all cases where interference could have been declared under Republic Act No. pending applications that are not amended in accordance with this Section shall be proceeded with and registration thereof granted in accordance with the laws and regulations under which they were filed. The other applicant or applicants shall have the right to file a notice of opposition. the application which first meets all the requirements for registration shall be allowed and published for opposition in the IPO Gazette in accordance with these Regulations. Section 3.5. Section 3. Registration in the Supplemental Register. 166. A certificate of registration granted to an application filed on or before December 31. Section 3. 1998 shall be subject to the same conditions for maintenance as provided in these Regulations and shall have a term of twenty (20) years. and its implementing rules and regulations.INTELLECTUAL PROPERTY LAW Otherwise.3. the application shall be refused or the mark shall be removed from the register by the Director motu proprio. the IPO shall endeavor to issue certificates of registration that can stand up to scrutiny in infringement and other cases. Where there are no applicable provisions in the IP Code and these Regulations. The renewal of a registration granted under Republic Act No. Section 3. 166 are registrable in the Supplemental Register. 166 shall have the same term of ten (10) years and shall be subject to the same requirements for renewal as a registration granted under the IP Code. and.3. without need of paying the filing fee. (ii) marks or trade names not registrable on the said principal register are not registrable under the IP Code. Section 3. but the same can not be declared such as when one of the applications has been amended and prosecuted under the IP Code while the other application or applications were not. Duration of renewal of registration granted under Republic Act No. Duration of registration. 166. as amended. Considering that (i) marks or trade names that are not registrable on the principal register under Republic Act No.1. (iii) the Supplemental Register was abolished by the IP JUNE S RADI COPYRIGHT 2010 . 1997 and therefore pending on the effective date of the IP Code on January 1. all other issues including the registrability of the mark. to determine whether or not any of the applicant/s and/or oppositor/s has the right to the registration of the mark. In compliance with the State policy declared in the IP Code. Pending applications amended in accordance with this Section shall be proceeded with and registration thereof granted in accordance with these Regulations. Processing of pending applications.6.4.

such registration shall no longer be subject to renewal. The registration or extension thereof. all concerned Examiners together with the Chief of the Trademark Examining Division of the former Bureau of Patents Trademarks and Technology Transfer have been directed to mail to the applicants the corresponding notice to comply with requirements for JUNE S RADI COPYRIGHT 2010 .7.1.INTELLECTUAL PROPERTY LAW Code.7. 1997 may be granted as follows: (a) The application for renewal of registration in the Supplemental Register was seasonably filed including full payment of the required fee pursuant to Section 15 of Republic Act No. For the effective implementation of Section 3. However. or any extension thereof. Section 3. The following regulations shall apply to the renewal of a registration in the Supplemental Register under Republic Act No. 1998.7. all applications for registration in the Supplemental Register which do not meet requirements for registration under the IP Code shall be rejected. (b) Full compliance with all the requirements for renewal shall have been made by the applicant on or before December 31. 166: Section 3.2.2 (b). 1998. in the Supplemental Register under Republic Act No. 166 and the applicable regulations. Registrations subsisting on January 1. in the Supplemental Register whose term ended on or before December 31. or extension thereof. Registrations.7. Notice to comply. 1997. The renewal of a registration. 1998 shall remain in force for the entire term for which it was granted. Section 3. Renewal of a registration in the Supplemental Register. Section 3. 166 of a trade name or mark which was subsisting on the effectivity of the IP Code on January 1. (d) The renewal herein granted shall no longer be subject to renewal. (c) The renewal shall be for a term of twenty (20) years counted from the date of expiration of the registration or renewal subject of the application. and.3. with term ending on or before December 31.7.

Further. as amended. Provided. These rules and regulations shall take effect fifteen (15) days after publication in a newspaper of general circulation. All rules and regulations.INTELLECTUAL PROPERTY LAW renewal of registration. Repeals. Section 4. are hereby repealed: Provided. circulars. Effectivity. on or before October 31. Section 6. memoranda. Section 5. applicants who have not received said notice may request for a copy thereof from the examiner concerned who shall issue said copy within two (2) working days from receipt of the request. If any provision in these Regulations or application of such provision to any circumstance is held invalid. 17 dated 01 December 1998. That there are no applicable provisions in these Regulations. further. 1997 wherein the applicants expressly elected to prosecute said applications under Republic Act No. Separability. As Amended by Office Order No. the remainder of these Regulations shall not be affected thereby. or extension thereof. 1998. 166: and. JUNE S RADI COPYRIGHT 2010 . That such earlier rules or parts thereof shall be continued only for the purpose of prosecuting applications for registration in the principal register filed as of December 31. and memorandum circulars and parts thereof inconsistent with these Regulations particularly the Rules of Practice in Trademark Cases.