THE PHILIPPINES

By: Jacinto D. Jimenez

This monograph is updated to March 2001. TABLE OF CONTENTS

The Author List of Abbreviations Preface Selected Bibliography General Introduction 1. General Background I. II. III. IV. 2. Geography Cultural Composition Political System Population Statistics

Historical Background I. II. III. IV. Prehistory Spanish Era American Era The Philippine Republic

Intellectual Property Law

Chapter 1. COPYRIGHT AND NEIGHBOURING RIGHTS
1. 2. Sources - Legislation Subject Matter of Protection I. II. III. 3. Different Categories of Protected Works Derivative Works Works Excluded of Protection

Conditions of Protection

2

I. II. 4.

Formal Requirements Substantive Requirements

Ownership I. II. III. The Author Joint Works/Works created by Several Persons Works Made for Hire

5.

Transfer I. II. Assignment of Copyright Licenses

6.

Scope of Exclusive Rights I. II. Moral Rights Exploitation Rights A. Economic Rights B. Other Rights I. Droit de suite 2. Work of Architecture

7.

Limitations or Exemptions to the Scope of Copyright Protection I. II. III. IV. V. VI. Limitation of Copyright Fair Use Reproduction of Published Works Repographic Reproduction by Libraries Reproduction of Computer Programmes Importation for Personal Purposes

8.

Duration of Protection I. II. Literary, Scholarly, Scientific and Artistic Works Neighbouring Rights

9.

Neighbouring Rights I. Scope of Rights of Performers

3

A. Exclusive Rights B. Moral Rights C. Droit de suite II. Producers of Sound Recording A. Exclusive Rights B. Communication to the Public C. Limitations III. IV. 10. Broadcasting Organizations Limitations to the Scope of Protection

Infringement and Remedies I. II. Concept Defenses A. Ignorance and Lack of Intention B. Loss of Rights C. Statute of Limitations III. Remedies A. Civil Action B. Criminal Prosecution 1. Criminal Liability 2. Penalty C. Evidence 1. Civil Action 2. Presumptions

11.

Points of Attachment I. II. III. IV. Literary, Scholarly, Scientific and Artistic Works and Derivative Works Performances Sound Recordings Broadcasts

12.

Overlapping and Relation to Other Intellectual Property Laws

4

III. Novelty Invention Industrial Applicability 4. II. C.Chapter 2. PATENTS Sources . B. Ownership Assignment Voluntary Licenses A. Application Publication Grant and Publication of Patent 5. 1. III. II. Patentable Inventions Non-Patentable Inventions 3. D. Limitations of Patent Rights B. Conditions of Patentability I.Legislation Patentable Subject Matters I. Limitations A. Formalities I. 2. Ownership and Transfer I. III. Grounds 5 . Prohibited Provisions Mandatory Provisions Exceptions Effect of Violation 6. 7. II. Scope of Exclusive Rights Limitations and Exceptions to the Scope of Patent Protection I. Exclusion of Prior User C. II. Compulsory Licensing A. Use by the Government II.

II. Interdependence 3. Concept of Infringement Civil Action A. Other Defenses F. E. Period for Filing Petition Requirement of Reasonable Efforts Terms and Conditions Cancellation Duration of Protection Infringement and Remedies I. Exception B. Presumptions of Evidence G. B. III. II. D. Concept Conditions of Registration Formalities 6 . Criminal Prosecution 10. Jurisdiction Pendency of Petition for Cancellation of Patent Institution by Foreign National Parties Liable Defenses 1. 1. D. E. 2. Issuance of Injunction 3. Destruction of Infringing Materials III. 9. C. Chapter 3. Award of Damages 2. C.1. 8. Remedies 1. Statute of Limitations 2. Specific Grounds 2. Cancellation of Patent UTILITY MODELS Sources-Legislation The Protection of Utility Models I.

III. 7. Formalities I. II. Assignment Licensing Agreements 6. III. 2. 1.IV. VI. Conditions of Protection I. Duration of Protection Infringement Cancellation of Registration TRADEMARKS Sources-Legislation Subject Matter of Protection I. II. Prior Use Importer or Distributor Foreign Applicant 4. V. II. II. V. Signs Which May or May Not Serve as Trademarks Secondary Meaning 3. Requirements of Application Priority Right Examination and Publication Opposition Issuance of Certificate and Publication 5. Scope of Exclusive Rights Limitation of the Scope of Trademark Protection Use Requirements I. III. Duration of Protection I. Declaration of Use Non-Use 9. 8. IV. Chapter 4. II. II. Duration Renewal Cancellation 7 . Ownership and Transfer I.

TRADE NAMES Source-Legislation 8 . Equitable Principles D. 11. Concept of Unfair Competition 3. Period and Grounds for Filing 10. Acts Constituting Unfair Competition 5. False Declaration False Designation of Origin or Description Prohibition of Importation Criminal Prosecution Overlapping and Relation to Other Intellectual Property Laws I.A. II. Protection of Goodwill 2. II. V. 3. VI. 2. 4. Rights of Foreign Corporations C. Concept B. Recovery of Damages Issuance of Injunction Destruction of Infringing Materials Limitation of Remedies Unfair Competition 1. Non-Registrability of Trademark 2. Defenses 1. Statute of Limitations 3. Alternative Remedy C. Infringement of Trademark A. Remedies 1. Containers Unfair Competition Chapter 5. Infringement and Remedies I. Procedure III. 1. Distinction between Infringement of Trademark and Unfair Competition 4. Petitioner B. IV.

Ownership and Transfer Scope of Exclusive Rights Limitations of the Scope of Protection Duration of Protection 9 . III. Examination Registration and Publication 5.2. II. 4. Priority II. C. Multiple Industrial Designs C. D. Transfer of Ownership Infringement and Remedies INDUSTRIAL DESIGNS Sources-Legislation Subject Matter of Protection Conditions of Protection I. 1. Concept and Protection Limitation of the Scope of Trade Name Protection A. Generic Words Geographical Names Legal Prohibitions Confusing Similarity 3. 2. Novelty Ornamentation Industrial Applicability 4. 8. Application 1. III. The Protection of Trade Names I. 6. II. Chapter 6. 3. B. 7. Formalities I. Contents B.

Chapter 7. Criminal Liability Relation to Civil Code Index 10 . The Protection of Trade Secrets/Confidential Information I. Public Officers Private Individuals A. II. Public Officers Private Individuals 2.9. II. II. Concept and Remedies Defense 10. 1. Cancellation of Registration TRADE SECRETS/CONFIDENTIAL INFORMATION Sources-Legislation I. Infringement and Remedies I. B.

The Author

Jacinto D. Jimenez was born in Manila on 16 August 1944. He obtained his Bachelor of Arts degree from the Ateneo de Manila University in 1964 and his Bachelor of Laws degree from the same university in 1968. He was admitted to the Philippine bar in 1969. He has been a member of the faculty of the Ateneo de Manila University since 1970 and of the University of Santo Tomas since 1989. Commercial Law and Constitutional Law. He teaches

He held the Alexander Sycip

Professorial Chair from 1986 to 1988, the Chief Justice Claudio Teehankee Professorial Chair from 1989 to 1990 and from 1994 to 1997, and the Raymundo Dizon Professorial Chair from 1999 to 2000. He has been a partner in the law firm of Romulo Mabanta Buenaventura Sayoc and De los Angeles since 1988. He has written a book entitled Political Law Compendium, which was one of the books given by the Supreme Court the Centenary Book Award in 2001 as a scholarly reference in the field of law. He also wrote the monographs on

Philippine laws in the books `Intellectual Property Laws of East Asia,’ `Commercial Laws of East Asia,’ and `International Insurance Law and Regulation.’

11

List of Abbreviations

ACR CAR (2s) CARA O.G. Phil. SCRA U.S.

Appellate Court Reports Court of Appeals Reports (Second Series) Court of Appeals Reports Annotated Official Gazette Philippine Reports Supreme Court Reports Annotated United States Supreme Court Reports

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PREFACE
The first law on intellectual property that was enforced in the Philippines was the Patent Law of Spain, which was promulgated by the Cortes on 27 March 1826 and which was extended to the Philippines. Since then, through the years, the Philippine laws governing intellectual property have been amended, supplemented and supplanted to cope with the challenges of the times and the changes in technology. On 20 June 1947, Republic Act 165 allowed the issuance of patents for industrial designs. On 16 June 1953, this law was amended by Republic Act 864, which authorized the grant of patents for utility models. On 14 November 1972, the Decree on Intellectual Property extended copyright protection to audio-visual recordings and computer programmes. On 5 October 1985, Presidential Decree 1988 penalized the unauthorized copying and distribution of video tapes. On 6 June 1997, the Intellectual Property Code, Republic Act 8293, overhauled the Philippine laws on copyright, patents and trademarks. It

harmonized Philippine law with the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Berne Convention for the Protection of Literary and Artistic Rights. It included microorganisms and non-biological and microbiological processes among the patentable inventions. It shifted from the first-to-invent system to the first-to-file system for applications for patents. It

abolished prior use in commerce in the Philippines as a condition for the registration of trademarks and trade names.

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The first decision of the Supreme Court on intellectual property was handed down on 26 October 1905 in the case of Baxter v. Zuazua, 5 Phil. 160. Since then, the Supreme Court and the Court of Appeals have rendered hundreds of decisions involving intellectual property. The history of the development of Philippine legislation and jurisprudence on intellectual property is the story of how the legislatures, the courts and the administrative agencies have strived under different times and conditions to strike a balance between the protection of intellectual property rights and the promotion of public interest. This they have done by defining and refining the scope and the limitations of intellectual property rights.

14

.. V. Manila: Central Book Supply. 1991 Agpalo.. Vol. Quezon City: Central Professional Books. 1998 Bautista. A. 2000 Amador. Commentaries and Jurisprudence on the Commercial Laws of the Philippines. Amador.Selected Bibliography Agbayani.. Inc. Copyright under the Intellectual Property Code. 1975 Madrilejos. 2. Patents under the Intellectual Property Code. V. 1998 Amador. Trademarks under the Intellectual Property Code. Manila: Rex Book Store. A. E. 1999 Martin. 2001. 2. Manila: Rex Book Store. Quezon City: University of the Philippines Law Center. Infringement and Unfair Competition.. V. Tradenames and Business Names....). Inc. (ed. Quezon City: AFA Publications. Law on Intellectual and Industrial Property. Intellectual Property Law. The Law on Trademark. R. Servicemarks. Registration and Protection of Trademarks. 1999 Aquino. Manila: Rex Book Store. 1986 15 . As Well As. Vol. Manila: Rex Book Store. Brandnames.. Inc.. R.T. Marked or Stamped Containers in the Philippines. Manila: Rex Book Store. Product Names. Commentaries and Jurisprudence on the Philippine Commercial Laws.

A. 1. 1994 Tolentino. 1958 16 . I..Sapalo. Geneva: World Intellectual Property Organization. Background Reading Material on the Intellectual Property System of the Philippines. Commentaries and Jurisprudence on the Commercial Laws of the Philippines. Vol. Manila: Acme Publishing Company..

p. The Philippines has a land area of around 300. 1. respectively. GEOGRAPHY The Philippines is an archipelago consisting of some 7.000 square kilometers. By and large. It is characterized by high temperature. 2. 3. The Philippine Atlas. 3. 16.000 and 95. p. Fund for Assistance to Private Education. p. 2.1 The climate is tropical. Eleven islands account for 95 per cent of the total land area.GENERAL INTRODUCTION 1. 1975). Luzon and Mindanao. 1.107 islands. Fund for Assistance to Private Education. 17 . have a land area of 105. (Manila. 15. 2.2 1.000 square kilometers. 15. Fund for Assistance to Private Education.1 1. 3. the two largest islands. Its land area is about the same size as that of Italy. Fund for Assistance to Private Education. Vol. The Philippines lies between the southern tip of Taiwan and the northern parts of Borneo and Indonesia.2 1. It is thus located in the center of Southeast Asia. p.1 Only 462 islands are a square mile or more in area. p. the Philippines is mountainous. General Background I. Fund for Assistance to Private Education. high humidity and abundant rainfall..

McKenna. The Moslems.. Section I. because the United States introduced Protestantism in the Philippines.1 There are also clusters of indigenous tribes. and judicial power is lodged in the Judiciary. Section 1. Article Vi. The principal agricultural products are rice. The Constitution of 1987 has set up a presidential form of government. T. There are also some Protestants. 2. who have preserved their way of life. Anvil Publishing.M. 1. p. Muslim Rulers and Rebels (Manila. legislative power is conferred upon Congress. executive power is vested upon the President. CULTURAL COMPOSITION 5. II. constitute five per cent of the population and are concentrated in Mindanao. and nickel. 7. POLITICAL SYSTEM 6. Constitution of 1987.1 1. 1998). Article VIII. corn. coconut. Many Filipinos have Chinese and Spanish bloods in their veins. the Senate and the House of Representatives. and tobacco. Congress consists of two chambers. Inc.1 The Senate is composed of twenty-four senators elected on a 18 . Section 1.4. III. Farming and fishing are the major occupations in the rural areas. copper. In accordance with the principle of separation of powers. The Filipinos trace their origins to the Malayan stock. Article VII. The Filipinos are overwhelmingly Catholics. The Philippines also has rich deposits of gold. sugar.

Constitution of 1987. Constitution of 1987. Article VII. 4. Article VIII. Section 3. equal protection. which is composed of a Chief Justice and fourteen Associate Justices. Constitution of 1987. Article VIII.4 1. Constitution of 1987.3 The President is elected for a sixyear term and is not eligible for re-election. Constitution of 1987. Section 4 (1). 3.2 The Constitution of 1987 assiduously guarantees the independence of the Judiciary. 6. 9. Article VIII. Article VI. Article VIII. Two hundred congressmen are elected by districts. Article VIII. and the remaining fifty are sectoral representatives. 8. 3. Section 2. 4 Their salaries cannot be reduced. Section 11. Sections 1 and 5 (2). Article VI. security 19 . 2. 4.3 The members of the Judiciary have a fixed tenure and serve until the age of seventy years. Article VI. Sections 8 (5) and 9. Constitution of 1987. Section 4. Section 1.nation-wide basis. Constitution of 1987. Constitution of 1987. 5. Section 5 (1). Constitution of 1987.6 1.2 The House of Representatives is composed of two hundred fifty congressmen. Article VIII. 2. The Bill of Rights contains numerous guarantees found in the Constitution of the United States such as due process.1 The Judiciary has the power to review the constitutionality of the acts of Congress and the President. Constitution of 1987.5 The budget for the Judiciary cannot be reduced below the amount appropriated for the previous year and must be automatically released. Appointments to the Judiciary are taken from a list of nominees drawn up by the Judicial and Bar Council. Section 10. At the top of the Judiciary is the Supreme Court.

1995 Census of Population Report No. Around 45. p. 2000 Philippine Statistical Yearbook. p.735.against unreasonable searches and seizures. and the right to form associations. 1-18.1 percent have obtained a college degree. National Statistics Office. 20 . freedom of religion. Constitution of 1987. XXIV. Around 29. p. freedom of speech and of the press. 2000 Census of Population and Housing.000 islands of the Philippines are populated.3 1. 11. 2.1 Around 35.6 per cent of the population have completed elementary education. 3. Vol. 1.7 per cent of the population live in Mindanao.85 per cent of the population are between twenty and forty-four years old. I. National Statistics Office.7 per cent of the population have finished high school.1 1. 1 Around 56 per cent of the population reside in Luzon. 3. p. p. 2. 2000 Philippine Statistical Yearbook. Around 20. Fund for Assistance to Private Education. 2: Socio-Economic and Demographic Characteristics. POPULATION STATISTICS As of 1 May 2000.1 1. Around 8. p.3 per cent of the population dwell in the islands in the Visayas. privacy of communication. 10-4. 1. Around 23. 10.2 The rate of literacy is 93. 2000 Census of Population and Housing. Section 11. IV. National Statistical Coordination Board. Article VIII. Only 1. 12. National Statistical Coordination Board. the population of the Philippines stood at 76.498. National Statistics Office.9 per cent.2 1.

p. 1999). 76. 2 Then it spread slowly to Mindanao. The Chinese were among the early groups of traders who had direct contacts with the inhabitants of the Philippines. University of the Philippines Press. 146.2 The datu acted as legislator. C.000 and 22. Quezon City. pp. The prehistoric socio-political units in the Philippines were the barangays. 197. Punlad Research House. 13. Majul. 1998). particularly between the ninth and the fifteenth centuries. Traders from India. Majul. mediator. judge. 152. Cambodia and Vietnam also came to do business with the inhabitants of the Philippines.2 1. Filipino Prehistory (Quezon City. Between the 10th and 12th centuries. arbitrator. Thailand. Jocano. and 197. C. PREHISTORY People inhabited the Philippines between 24. 2. 49. p.2. 56. and war 21 . F.. p. p. Historical Background I. 2.1 15. 14.1 It started in Sulu in the southern Philippines.C. Most of them came from southern China and arrived in junks loaded with porcelain ceramics.1 1. Jocano. 144.1 The head was a leader called datu. 16. p. 17.000 B. F. Muslims in the Philippines (3rd ed. Jocano. Islamism started gaining roots as a religion in the Philippines. 3. F.3 1. Jocano. The leadership was usually hereditary.

SPANISH ERA It was Ferdinand Magellan. a Portuguese navigator sailing under the Spanish flag. theft. 2. The Philippine Islands (Cleveland. p. pp. E. Vol. 2. Blair and J. XXXIII. contracts. E. E. From 1525 to 1542. instructing him to send an expedition to colonize the 22 . Robertson. A. Robertson. p. A. 103. XXXIII. Blair and J. 149-159. Jocano. p.4 1. A. Vol. he introduced Christianity in the Philippines. Robertson. H. property. 1903). A.leader. E. F. The customary laws were based on social and religious usage. and rape. Jocano. Jocano. With his 19. Jocano. H. Vol. They regulated domestic relations. II. and inheritance. Robertson. p.H. II. F. H. They imposed punishments for crimes like murder. 3. who discovered the Philippines for the Western world when he sighted the towering heights of Samar Island on 16 March 1521. Spain sent four unsuccessful expeditions to secure its possession of the Philippines. King Philip II wrote Luis de Velasco.1 It was Ruy Lopez de Villalobos who in 1542 named the archipelago Ferdinand Magellan had discovered Filipinas (Philippines) in honor of Philip II. pp. 4. pp. Vol. A. Clark Company. 153. 11-13. the viceroy of Mexico. Blair and J. II. 20. 47. 158. On 24 September 1559. Blair and J. 18.3 Each barangay had a system of customary laws.1 arrival. 159.2 1. F.H. 162 and 199. F. 2. p.2 1. the crown prince of Spain.

who had accompanied the expedition headed by Garcia Jofre de Loasia in 1525. On 21 June 1571. They brought silk from China and spices from the Far East to Mexico. III. 2. II. The last galleon cast anchor in Mexico in 1815. Vol. A. pp. was placed in command of the expedition. Blair and J.1 1. Robertson. Miguel Lopez de Legaspi named Manila a city and organized a city government three days later. 2. 62-66. A. Vol. 83-84. In June 1565. Robertson. Robertson.3 On 14 August 1569.H. Blair and J. It only ended when Mexico fought to wrest its independence from Spain.H. Schwarz. This started the galleon trade between the Philippines and Mexico. A. 28. Blair and J. W. A. W. E. the grandson of Miguel Lopez de Legaspi. Robertson. Vol. pp. Schwarz. Miguel Lopez de Legaspi. 21. Spanish galleons plied the route between Manila and Acapulco under the most difficult navigating conditions. L. Vol. E. A.Philippines1. 201-216. P.2 1. p. E. It brought a shipment of cinammon. Robertson.H. Blair and J. King Philip II appointed Miguel Lopez de Legaspi the first governor and captain general of the Philippines. E.Dulton and Company.1 For two and a half centuries. Vol. III. 4.H. a Spanish soldier. 21. p. Blair and J. L.4 1. pp.H. II. 23 . the vessel San Pablo returned to Mexico under the command of Felipe de Salcedo. 1939). 78-79.2 Miguel Lopez de Legaspi proceeded to lay the foundations for Spanish rule in the Philippines. E. acted as the chief pilot. E. 1 22. 3. 173-174. pp. II. pp. an Augustinian priest. The Manila Galleon (New York. Father Andres Urdaneta.

de la Costa.J. 2. This was an arrangement based on the Bull Universalis Ecclesiae of Pope Julius II.1 1. de la Costa. S.23. ‘The Development of the Native Clergy in the Philippines. H. S. V. S. de la Costa. V. the secular priests were reduced to being assistants of the religious parish priests. VIII. H. Since no territory was available for secular priests. abbacies. King Philip II divided the Philippines among the different religious orders. 24.. 25. H. the schools established in the Philippines for Spaniards began educating Filipinos for priesthood. Theological Studies. 2.J. Pope Julius II granted King Ferdinand and his successors to the Spanish throne the exclusive right to construct or to permit the construction of churches in the Spanish colonies and to present ecclesiastical candidates for bishoprics.. The Philippines was evangelized as a Spanish colony under the regime of the Patronato. V. 225. 223. No.’ p. This concession was given in view of the undertaking of the Spanish king to promote the evangelization of his subjects and to provide for the support of the Catholic Church. in effect they became salaried government officials.2 They became the representatives of the Spanish government outside Manila. June 1947. ‘The Development of the Native Clergy in the Philippines. In the 18th century. for 24 . p.. ‘The Development of the Native Clergy in the Philippines’ in Vol.1 Since the Spanish priests were the only Spaniards willing to reside outside Manila and since they depended on the Spanish crown for support. 224. canonries and other ecclesiastical benefices. 1.1 The religious orders in charge of the parishes came to look upon them as a threat to their security.J.’ p.

234. de la Costa. Vol.. V. the majority of the secular priests were Filipinos. XLIX. when General William Draper and Admiral Samuel Cornish appeared. H. J. Robertson. susceptible to control than the secular clergy because the secular priests were subject to bishops and the bishops were appointed by the Spanish crown. 8-10. Ateneo de Manila University Press.J. the government turned over the parishes to the secular clergy. the only way the secular priests could obtain parishes was to displace the priests belonging to the religious orders. Vol. ‘The Development of the Native Clergy in the Philippines. pp. Vol. Robertson. 1999). XLIX. V. 3.’ p. p.2 The English relinquished their possession of Manila when a Treaty of Paris was signed between Spain and England. ‘The Development of the Native Clergy in the Philippines. 238239. Father Jose Burgos (Quezon City. The Seven Years War reached the shores of the Philippines on 22 September 1762. 26. the English troops breached the Spanish defenses and occupied Manila. N. 2. S.’ p.. E. pp. 27. 2. 25 . 23. However. A. E. S. he tried to Since the religious orders were less gain control of the Catholic Church. de la Costa.2 1. H.1 On 5 October 1762.within the framework of the Patronato. H. A. L. Recalling that it was the native priests who led the revolution against Spain in Mexico and Peru. Blair and J. Blair and J. the government looked upon the Filipino priests with suspicion. When King Charles III ascended to the Spanish throne.3 1.1 1. 125-127. Schumacher.J. pp. Blair and J. 109-110.. H. E. Robertson. A.J. S. H.

J. Father Jose Burgos. J. Graciano Lopez Jaena and Marcelo del Pilar wrote a series of articles clamoring 26 . J. They banded together and they started publishing in Barcelona a forthnightly newspaper bearing the title La Solidaridad. Schumacher. N. The first issue appeared on 15 February 1888. 2 However. Father Jose Burgos. a royal decree ordered that the parishes be turned over to the religious orders. a Filipino priest. 2. S. p.2 1. 30. Sergeant Lamadrid led a mutiny in a Spanish garrison. J. On 20 January 1872. guilty of inciting the mutiny. J.1 A military court found Father Jose Burgos and two other Filipino priests. The Filipinos studying in Spain were exposed to the wave of liberalism sweeping Europe.. N. Schumacher. The mutiny was swiftly crushed.. They were sentenced to death. pp. pp. Fathers Jacinto Zamora and Mariano Gomez. p. the Archbishop Gregorio Meliton Martinez of Manila refused to defrock them. 29. Father Jose Burgos.J. Father Jose Burgos. led the struggle for the repeal of the royal decree. pp.J. N. S. In 1826. Its alleged purpose was to establish a provisional government to be headed by Father Jose Burgos. N. 19. as he was not convinced of their guilt. N.1 Father Jose Burgos. S. Schumacher.J.28. Schumacher. 8-10. 3. The impassioned plea of Father Jose Burgos for nationalism was taken up by other Filipinos.J. S.J. 270-271. S..3 1.. 2. Schumacher. Father Jose Burgos.1 Filipino patriots like Jose Rizal. 28-29. This drew protests from the Filipino secular priests.. 26.

The Propaganda Movement 1880-1895. tore up their cedulas. Noli Me Tangere and El Filibusterismo. The Propaganda Movement failed to wring from Spain the reforms it was asking for. Guerrero. (rev. Noli Me Tangere was published in Berlin in 1887. 273.J. 31. 1 When the Spanish government discovered its existence.3 On 26 August 1896.2 Andres Bonifacio and his followers escaped. Jacinto Zamora and Mariano Gomez. 157. L. p. p. 2.J. p. The Propaganda Movement 1880-1895. 33. The First Filipino (Manila: National Historical Institute. N. p.2 Jose Rizal dedicated El Filibusterismo to Fathers Jose Burgos.for social and political reforms. L. The Propaganda Movement 1880-1895. L. Ateneo de Manila University Press. it ordered the arrest of those implicated in the conspiracy.. S. 283. Guerrero.1 El Filibusterismo was published in Ghent in 1891. they gathered at the nearby town of Balintawak. Schumacher.1 It served as the prelude to the Philippine Revolution. Quezon City. p. ed. a secret society founded along Masonic lines whose purpose was to revolt from Spain. N.. J. S. the tribute that recognized Spanish sovereignty over the 27 . 300.2 This came to be known as the Propaganda Movement. On 7 July 1892.. which exposed the social and political conditions in the Philippines. 1997). Andres Bonifacio founded the Katipunan. Jose Rizal wrote two political novels. but it awakened among the Filipinos a sense of national unity. S.3 1. 2. 135.N. 32.2 1. J. Guerrero. p. 1. 145. J. Schumacher. 3. Schumacher. 1963).J.

L.2 1. 3. S. A convention was called on 22 March 1897 for the sake of unity. p.J. 1 This spawned rivalry between the factions of Andres Bonifacio and Emilio Aguinaldo.3 Jose Rizal was executed by a firing squad on 30 December 1896. 1961). G. 156. 170. 1. Loyal Press. 166. 103. 104. History of the Katipunan (Manila. L. The Katipunan was using the name of Jose Rizal as a rallying cry. V. 3. 4. Jose Rizal was arrested and charged before a military court with founding illegal associations and inducing the commission of rebellion. and shouted ‘Long live the Philippine Republic!’ 4 The Philippine Revolution had broken out. Zaide. V. de la Costa. Zaide. S. 490. The Philippine Revolution was spreading. 2. 2 and 60. Ateneo de Manila University Press. 34. The Trial of Rizal p. Zaide.2 The military court found him guilty and sentenced him to death. de la Costa. Guerrero. p. Zaide. H. Zaide. 2. G. It was decided to set up a revolutionary government. In the nearby Province of Cavite.. G.1 Rizal was against the revolution. 4. pp. G. 422-425. 68. G. p. H. 28 . p.J. p. Guerrero. Emilio Aguinaldo led the uprising and was winning a string of victories.Philippines. 1939). 35. 1. pp.. The Trial of Rizal (Quezon City.4 The execution of Rizal stoked the flames of the Philippine Revolution. Emilio Aguinaldo was elected president. p. He believed in reforms instead.

1 1. 1900) pp. Harper & Brothers Publishers. Admiral George Dewey.2.1 Philippines to the United States. Meanwhile.). 121-123. 37-40 37. pp. Charles Scribner’s Sons. Zaide. S. 2. pp. 226-230. pp. III. 59. 36.2 1. National Historical Institute. Harper’s History of the War in the Philippines (New York.). The Laws of the First Philippine Republic (Manila. Guevara (ed. President Emilio Aguinaldo proclaimed Philippine independence. G. received on 25 April 1898 a cable instructing him to proceed to the Philippines and to attack the Spanish fleet. Autobiography of George Dewey (New York. war broke out between Spain and the United States when the cruiser Maine blew up in Havana on 15 February 1898. Dewey. On 20 January 1899. 195 2. p.1 On 1 May 1898. M. on 12 June 1898. 1994). 39. Wilcox (ed. The Spanish-American War ended when Spain and the United Spain ceded the States signed the Treaty of Paris on 10 December 1898. who was with his squadron in Hong Kong. he defeated the Spanish fleet.1 29 . Guevara (ed. the Malolos Congress adopted a constitution for the revolutionary government. American Era 38. 203-206. p.). M. While the Philippine Revolution was raging. The Philippines protested against the treaty in vain. W Wilcox (ed. S. G. 1913).2 1.).

42. 41. 88-103. 3. p. On 24 March 1934.). p. p. L. 67. 1961). S. G. Cox (ed. 106. p. Vol. University of the Philippines. Fores-Ganzon (ed. Rizal.1 fulfillment of the prediction of Jose Rizal. in Spain and then let them have their independence. National Historical Institute. The struggle for Philippine independence shifted from the battlefields of Luzon to the halls of the United States Congress. The first shot of the war was fired on 4 February 1899. 2 It was inevitable that war would break out between the Philippines and the United States. pp. 4. 2. The war practically ended when President Emilio Aguinaldo was captured on 23 March 1904. pp. the United States Congress approved the It authorized the Philippine Legislature to call a Tydings-McDuffie Law. J. L. Jose Rizal had travelled in the United States in 1888. 2. L. M. 1991). Wolff. 1. Oxford University Press.1 In the essay ‘Filipinas dentro de Cien Años’ he wrote in La Solidaridad on 1 February 1890.).). 43. Guevara (ed. Little Brown Brother (Oxford. pp. 193. II. Wolff. La Solidaridad (Quezon City. The Filipinos took it for granted that the United States would defeat On the other hand. 344-345. 49. Constitutional Convention. 2 40. 1973). 147-149.1. provided for the establishment of a ten-year transitory 30 .2 1. Wolff. the United States had decided to keep the Philippines as a colony to increase American foreign trade. Reminiscences and Travels of Jose Rizal (Manila. he predicted that the United States would colonize the Philippines.

3. 46. J.. 14-17. Reminiscences (New York. II.1 On 8 February 1935. which overlooked Manila Bay. Whitman. 120123. p. D. On 15 November 1935. Hippocrene Books.2 1. the United States Armed Forces in the Far East would withdraw to the Province of Bataan. and set the recognition of Philippine independence on 4 July 1946. University Publishing Company. Vol. 2. 45.Commonwealth of the Philippines.1 General Douglas MacArthur. Inc. So long as the United States Armed Forces in the Far East controlled Bataan. pp. 44.3 1. and Manuel Quezon took his oath as President. Aruego. MacArthur. instead of defending the entire Philippines. the Commonwealth of the Philippines was inaugurated. 13. Vol. Aruego. Aruego. Delegates to the Constitutional Convention were elected on 10 July 1934. I. p. With the bombing of Pearl Harbor on 7 December 1941. II. Mc Graw-Hill Book Company. 2 It was ratified in a plebiscite held on 14 May 1935. pp. 1990). 31 . until the United States Navy could bring massive 2. the flames of the Second World War reached the Philippines. 709-712. It was expected that the Filipino-American forces would be able to hold Bataan for six months reinforcements. it approved the Constitution it had drafted. Bataan: Our Last Ditch (New York. Under it. 1964). 689. implemented War Plan Orange 3. 1936). pp. the commander of the United States Armed Forces in the Far East. the contingency plan which had been revised eight months earlier. Vol. enemy forces would be denied access to the ports of Manila. The Framing of the Philippine Constitution (Manila.

2. because it would be used as a base for a counter-offensive. 1974). disease. L. Hunger. 200. 320. M. Child of Two Worlds (Manila. p.47. D. General Douglas MacArthur pledged. p. University of New Mexico Press. It was preoccupied with the war in Europe.1 It was only a matter of time before General Jonathan Wainwright surrendered on 6 May 1942 all the Filipino and American troops in the nearby Island of Corregidor. Quezon. 1995). J. Inc. J. 2. and the crushing enemy attacks broke the defenses of Bataan. 1946). Quezon. 2 The Filipinos shifted to guerrilla warfare. 50. L. Mac Arthur and Wainwright (Albuquerque. 1. The Pacific fleet had been destroyed in Pearl Harbor. Anvil Publishing. The 32 . N.1 1. On 20 October 1944. p. 219. Beck. 145. MacArthur.1 Upon his arrival in Australia. M. The United States was fighting a world war in two fronts. The Good Fight (New York. ‘I came through and I shall return. p. 48. Reyes. No reinforcements were forthcoming. General Douglas MacArthur redeemed his pledge when the American liberation forces landed in the Province of Leyte. President Franklin Delano Roosevelt ordered General Douglas MacArthur to proceed to Australia. President Manuel Quezon decided to proceed to the United States. 280. 49. Bataan fell. p. On 9 April 1942.’2 1. where he formed a government in exile. President Franklin Delano Roosevelt asked President Manuel Quezon to join General Douglas MacArthur. Appleton-Century Company. D.

pp.000 civilians perished. However. the sixth President. On 4 July 1946.1 1. 251. shelling and burning reduced Manila into a rubble. by his military escort galvanized the nation and led to 33 . Manuel Roxas. and 405406.. Jr. Bookmark. MacArthur. took a step that changed the course of history. the leader of the opposition. which removed the limit on the term of the President. the authoritarian rule could not last forever. 51. 398-399. The Philippines had a working democracy until 23 September 1972.liberation forces advanced swiftly. 53. he supplanted it with a new Constitution. By Sword and Fire (Manila. Inc. Around 100. the Commonwealth of the Philippines was 1. restored. when Ferdinand Marcos. IV. It was the Battle of Manila which turned out to be the bloodiest. On 17 January 1973. Invoking the Communist rebellion as an excuse. The bombing. 393. D. 54.J. Fighting raged street by street and building by building. took his oath as the first President of the Republic of the Philippines. he proclaimed martial law. President Harry Truman proclaimed the independence of the Philippines. p. Ajuit. who had won in the election on 23 April 1946. A. 1994). The assassination on 21 August 1983 of Benigno Aquino. 3 The Philippine Republic 52. he could no longer remain in office beyond 1973. Under the Constitution of 1935.1 On 27 February 1945.

the Vice Chief of Staff. Public outrage mounted. Breakaway (Manila. 119-123. C. the widow of Benigno Aquino.massive protests. Juan Ponce Enrile. 56. the opposition pitted Corazon Aquino. 1. CTA & Associates. Jr. 158.1 Jaime Cardinal Sin. 1986). 3. President. Lieutenant General Fidel Ramos.2 The troops President Ferdinand Marcos sent to crush the mutiny refused to fire when they saw the mass of civilians blocking their path. joined them. President Ferdinand Marcos fled with his family to Hawaii on 25 February 1986. against Ferdinand Marcos. People from all walks of life flocked to the avenue fronting Camp Crame. C. Arillo. Corazon Aquino took her oath as the new A Constitutional Commission drafted a new Constitution. 34 . the Archbishop of Manila. pp.. 4. 78 C. and soldiers who had become disillusioned decided to break away from the Marcos administration. Arillo. they holed up at Camp Crame and announced their breakaway from the Marcos administration. 55. On the same day. p. It was ratified overwhelmingly in a plebiscite held on 2 February 1987. Arillo. T. 2. T. called upon the people to support the cause of Minister Juan Ponce Enrile and Lieutenant General Fidel Ramos. C.3 Finding himself unable to govern any longer. On 22 February 1986. Ferdinand Marcos was officially proclaimed elected in an election that was marred by unprecedented fraud. T. Arillo. pp. p. T. In the election held on 7 February 1986. 147-151 and 165-173. the Minister of National Defense.4 The Marcos regime was toppled by people power.

Madrid. Article XIII of the Treaty of Paris guaranteed continued protection for property rights granted by copyrights acquired by Spaniards in the Philippines. J. With the signing of the Treaty of Paris at the end of the Spanish- American War on 10 December 1898. p. Sapalo. 855. 1. Article 429 decreed that the general provisions of the Civil Code of Spain on property would apply in a suppletory manner to the Law on Intellectual Property. Tomo I. the Civil Code of Spain. Serrano v.M. Manresa. Article 428 provided that the author of a literary or scientific work had the right to exploit it and dispose of it according to his will. Background Reading Material on Intellectual Property System of the Philippines (Geneva.1 This was the first copyright law in the Philippines. World Intellectual Property Organization. Instituto Editorial Reus. COPYRIGHT AND NEIGHBOURING RIGHTS SOURCES-LEGISLATION The Law on Intellectual Property approved by the Spanish Cortes on 10 January 1879 was extended to the Philippines by the Royal Decree issued by Queen Regent Maria Cristina on 5 May 1887. Comentarios al Codigo Civil Español (7th ed. 117. 57.2 Likewise. I. 3. Pagkalinawan [1918] 44 Phil. was extended to the Philippines by the Royal Decree issued by Queen Regent Maria Cristina on 31 July 1889. which was based on the Code of Napoleon. 861-862. Spain ceded the Philippines to the United States.3 The Civil Code of Spain contained provisions on literary property. 58. 1994).. 1956). p. 133. 35 . 1. 2.INTELLECTUAL PROPERTY LAW CHAPTER 1.

4) The scientist or technologist or any other person with regard to his discovery or invention. dramatic. The Philippine Legislature enacted Act 3134. 855. p. 60. historical.1 1. Article 722 reads: `The author and the composer. Sapalo. with respect to the product of his art. the Civil Code took effect. mentioned in Nos.1 1. 863. 62. Article XIV. shall have the ownership of their creation even before 36 . 44 Phil. Article 721 of the Civil Code provides: ‘By intellectual creation. 59. Serrano v. which took effect on 26 March 1924. It was patterned after the Copyright Law of 1909 of the United States.The Law on Intellectual Property ceased to be in force and was replaced by the Copyright Law of the United States. as to his musical composition. Elaborating on this. 61. scientific or other work. Pagkalinawan. philosophical.1 In addition. [1918]. the Constitution took effect. legal. 133. sculptor. On 14 May 1935. the Copyright Law of the Philippine Islands. 1 and 2 of the preceding article. Section 4 secured to authors their exclusive rights to their writing for a limited period. the following persons acquire ownership: 1) The author with regard to his literary. On 30 August 1950. or other artist. 2) 3) The composer. I. Article 712 recognized intellectual creation as a mode of acquiring ownership of property. The painter.

’ 63. 21. On 17 January 1973. sculptor or other artist shall have dominion over the product of his art even before it is copyrighted. 65. It defined the rights of joint creators and employees. Once their work are published.the publication of the same.’ ‘The painter. Presidential Decree 49 entitled the Decree on Intellectual Property replaced Act 3134 on 14 November 1972. a new Constitution superseded the Constitution of 1935. their rights are governed by the Copyright Law. lengthened the duration of copyrights. 64. and broadened the remedies for infringement. 37 . Senate Resolution No. It extended protection to neighbouring rights. which penalized the unauthorized copying and distribution of video tapes. Section 9 (3) secured to authors and artists the exclusive right to their writings and artistic creations for a limited period. expanded the limitations to the scope of copyright protection. It extended protection to works produced by new methods like audio-visual recordings and computer programmes. Article XV. the Philippines acceded to the Berne Convention for the Protection of Literary and Artistic Rights. the Decree on Intellectual Property was amended by Presidential Decree 1988. To keep the law abreast of the great strides in science and technology.’ ‘The scientist or technologist has the ownership of his discovery or invention even before it is patented. On 1 August 1951.1 1. It conferred protection on the rights granted by it from the moment of creation.1 On 5 October 1985.

artists. Law on Intellectual and Industrial Property (Quezon City. abolished the provision on translations in the Decree on Intellectual Property. Article XIV.1 It included rental in the economic rights pertaining to a copyrighted work. pp. 67.’ 68.1. 137. and other gifted citizens to their intellectual property and creations. E. Bautista. expanded the limitations to the scope of copyright protection. particularly when beneficial to the people. University of the Philippines Law Center. Sapalo. provides: ‘The State shall protect and secure the exclusive rights of scientists. a new Constitution supplanted the 1973 Constitution. the Philippines acceded to the International Convention for the Protection of Performers. and allowed the reproduction of computer programmes under certain conditions. 1975). Producers of Phonograms and Broadcasting Organizations. on 25 September 1984. 2-6. ‘Salient Features of the Decree on Intellectual Property’ in E. Meanwhile. inventors. Republic Act 8293 entitled the Intellectual Property Code superseded the Decree on Intellectual Property. On 2 February 1987. p. I. 38 . Bautista (ed.). It harmonized the law with the provisions of the Berne Convention for the Protection of Literary and Artistic Rights. On 6 June 1997. Section 13.1 1. which was adopted in Rome on 26 October 1961. 66. for such period as may be provided by law.

II. sketches. Lectures. 133. Periodicals and newspapers. charts and three-dimensional works relative to geography. Works of drawing.1. lantern slides. f) g) Musical compositions. d) e) Letters. Vol. choreographic works or entertainment in dumb shows. dissertations prepared for oral delivery. whether or not reduced in writing or other material form. Explanatory Note of House Bill 6130. painting. pamphlets. with or without words. 39 . Dramatic or dramatico-musical compositions. maps. Different Categories of Protected Works Literary and artistic works which are protected include the following: a) b) c) Books. Record of the Senate. 69. SUBJECT MATTER OF PROTECTION I. architecture. architecture or science. Photographic works including works produced by a process analogous to photography. 29. i) Illustrations. No. lithography or other works of art. addresses. p. plans. engraving. 2. sculpture. topography. and other works of applied art. models or designs for works of art. sermons. h) Original ornamental designs or models for articles of manufacture. whether or not registrable as an industrial design. 8 October 1996. articles and other writings. j) k) Drawings or plastic works of a scientific or technical character.

CA-G. Computer programmes. Kho v. cannot be copyrighted. the examples given to explain their meanings. 862. Paglinawan. sun. 140.1. 855. No. Blank forms used for recording 40 . I. scholarly. [1918] 44 Phil. ‘beautiful’. Although words are not the property of anyone. p.R. Sapalo.1 1. Serrano v. Summerville General Merchandising & Company. the giving of a pleasing 1. The combination of the Chinese words chin. scientific and artistic works. 2 1.1 1. m) n) o) Pictorial illustrations and advertisements. 71. scientific or artistic work. 48043. and Other literary.1 information cannot be copyrighted. and si. which constitute the trademark of a face cream and which mean ‘youth’.1 Ornamentation signifies beauty. November 22. 70. their definitions. appearance. 1999. Intellectual Property Code. and ‘cream’.l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audiovisual recordings. Subsection 172. 72. The combination of such common words is not a literary scholarly. and the manner of expressing their meaning constitute an original work. A dictionary can be copyrighted.

Subsection 173. I.2 1. but the new works do not affect the force of any subsisting copyright upon the original works employed. format and lay-out.1 1. 73.g. the publisher is granted a copyright distinct from that of the author upon the printing configuration. Inc. Neither do they imply the right to use the original works without the authority of their authors or the extension of the copyright in the original works. the publisher can have a copyright consisting of the right of reproduction of the typographical arrangement of the published edition of the work. Central Professional Books. characters.. p. e. translations. Intellectual Property Code.2. 74.1 Thus.. fonts. arrangements. 12.1 1. These works are protected as new works. 75. adaptations. Aquino. Intellectual Property Code. 2. abridgements. 1998). 41 . In addition. a) DERIVATIVE WORKS The following derivative works are also protected by copyright: Dramatizations. R. scholarly or artistic works and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. R. p. 42.. Subsection 173.2. Section 174. and other alterations of literary or artistic works. Intellectual Property Code. Aquino. Intellectual Property Law (Quezon City.1. and b) Collections of literary.

2. prior approval of the government office which created the work is required for the exploitation of the work for profit. 78. 1951. No copyright shall subsist in any work of the Government of the Philippines.II.3 1. 1027-1029. 76. No. method or operation. Drilon [1999] 302 SCRA 225. Abiva v. 77. as well as any official translation of them. WORKS EXCLUDED OF PROTECTION No protection is extended to any idea. 239.R. news of the day and other miscellaneous facts having the character of mere items of press information. Section 175. system. discovery or mere data as such. Guidotti v. concept. However.1 Likewise. a racing programme with tips prepared by the publisher cannot be copyrighted. It is just a concept. 3. Joaquin v. The format of a television show which consists of matching the male and the female participants for a date by asking them a series of questions to find out who among them are most compatible cannot be copyrighted.1 1. Intellectual Property Code. administrative or legal nature. It is only his treatment of the subject and the expression of the idea that are protected by his copyrights. even if they are expressed. Weinbrenner [1964] 6 CAR (2s) 1023.2 One who printed Christmas cards depicting scenic spots in the Philippines cannot prevent somebody else from making similar Christmas cards provided that the scenic spots are photographed in a different way. 6268. principle. and the government 42 . procedure. explained. illustrated or embodied in a work. July 10. Inciong CA-G. or any official text of a legislative.

Section 191. Republic Act 3870. 3. addresses and dissertations. addresses and dissertations has the exclusive right to make a collection of his works. rules and regulations. Intellectual Property Code. and meetings of public character.1. Section 3.2. sermons. Intellectual Property Code. CONDITIONS OF PROTECTION I. Subsection 176. administrative agencies. 2. deliberative assemblies. No prior approval or payment of royalties shall be required for the use for any purpose of law. sermons. two copies must also be deposited with the University of the Philippines Law Center. Subsection 172. 2. Subsection 172. Intellectual Property Code. FORMAL REQUIREMENTS The works are protected from the moment of their creation.2 1.2 1. pronounced. 80 Within three weeks after the first public dissemination or performance of a work by authority of the owner of the copyright. 43 . 2.1 If the work is on law. Intellectual Property Code. and speeches. Intellectual Property Code.2 1. read or rendered in courts of justice.office may require the payment of royalties. lectures. 79.1. the author of the speeches.1 They are protected by the sole fact of their creation.2. Subsection 176. two complete copies or reproduction of the work shall be registered and deposited with the National Library and the Supreme Court Library merely for the purpose of completing their records.1 However. lectures.

Sapalo. Subsection 172. Originality means the work is the creation of the author and is not copied totally or substantially from another work.3 1. It simply means that the work is an independent 44 . Intellectual Property Code. or creativity. 2.2 uniqueness . I. creation of the author. Aquino. 1 Originality is required for the composition of the contents and the form of their expression but not in relation to ideas. Originality does not mean novelty. Section 192. Each copy of a work published or offered for sale may contain a notice bearing the name of the owner of the copyright and the year of its first publication and. Intellectual Property Code. information or methods embodied in the work.1 1. the year of his death. 13. it must be original. 3. ingenuity. in copies produced after the death of the author. 140. SUBSTANTIVE REQUIREMENTS For a work to be protected. p. II.81.1. R. p. 82.

Subsection 178. THE AUTHOR The copyright belongs to the author of the work.1. the publisher shall be deemed to represent the author. In the case of works published without the name of the author or under a pseudonym.1 1. 84. the co-authors are the owners of the copyright.3 1. If the work consists of parts that can be used separately and the author of each part can be identified. 85. 3. Article 723.2 The letters themselves are owned by the persons to whom they were addressed and delivered. or the author of the anonymous work discloses his identity. Intellectual Property code. Section 179. the author of each part is the original owner of the copyright in the part that he created. 45 . 83. OWNERSHIP I.1 1. 2. Intellectual Property Code. Civil Code. but they cannot be published or disseminated without the consent of the writer unless the court authorizes their publication or dissemination for the public good or in the interest of justice.2. II. Intellectual Property Code. Intellectual Property Code. Subsection 178. Subsection 178. the pseudonym leaves no doubt as to the identity of the author.4. JOINT WORKS/ WORKS CREATED BY SEVERAL PERSONS In the case of works of joint authorship.1 The copyright in letters belongs to the writer. unless the contrary appears.6.

If the creation of the work is not part of the regular duties of the employee.1 The phrase ‘course of employment’ means that the employee was doing what a man so employed may reasonably do within the time during which he is employed and at a place where he may reasonably be during that time to create the work. the composer of the music. 8. even if he used the time. with or without words. Subsection 178. III. except for the right to collect royalties for the performance of musical composition. the copyright belongs to the producer.3. and the author of the work adapted. In the case of an audiovisual work. which are incorporated into the work. WORKS MADE FOR HIRE In the case of a work created by an author during and in the course of his employment. Bautista.2 1. the copyright belongs to his employer. the film director. facilities and materials of the employer.5. the producer shall exercise the copyright to the extent required for the exhibition of the work. unless they have an express or implied agreement to the contrary. p. the copyright belongs to him.86. the author of the scenario. 46 . if the work is the result of his regular duties. Intellectual Property Code.1 1. If the creation of the work is not a part of the regular duties of the employee. the employee and the employer are barred from agreeing that the copyright will belong to the employer. Unless the creators stipulate to the contrary. Subsection 178. Intellectual Property Code. 87. 2.

and mortgage. C. p. Intellectual Property Code. 47 . 3. Intellectual Property Code.1 Thus. Aquino. Subsection 180. CV No. the person who commissioned the work owns the work. ASSIGNMENT OF COPYRIGHT The copyright is distinct from the property in the material object subject to it. An assignment of the copyrighted work does not transfer the copyright. Section 181.2. Ramon S. unless they have a written agreement to the contrary. August 28. However.88. Subsection 180. Licup Design Group.R. The assignment of the copyright does not of itself transfer the material object.2 1. hypothecation. 17618.2 The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention. R.3 1.4.1 Assignment includes conveyance. 1970. Gan v. Within the scope of the assignment. 2.A. the assignee is entitled to all the rights and remedies of the assignor with respect to the copyright. the copyright belongs to the author. Intellectual Property Code. 89. 90. Subsection 178. TRANSFER I. the owner of a building who commissioned an architect to prepare the architectural plan for the building may not use it again for another project without the consent of the architect. 5. The copyright may be assigned in whole or in part. Intellectual Property Code. Inc. 68.1.-G.1 1. 2. If the work was commissioned by someone other than the employer of the author.

6. An exclusive license may be filed with the National Library for Intellectual Property Code. Subsection 180. in particular. Intellectual Property Code. none of them may grant a license without the prior written consent of the other owner or owners.3. [1995] 95 O. Isle Originals.2 1.G. 2. magazine or periodical for publication is a license to make a single publication only unless a greater right is expressly granted. 93. 3479. 92. Inc.1 The failure to register an assignment does not affect its validity and does not preclude the assignee from suing for infringement of the copyright. be indicated in a 48 . MORAL RIGHTS The author of a work has the following moral rights: a) To require that the authorship of the work be attributed to him. The purpose of the assignment is to protect subsequent purchasers and mortgagees who have no knowledge of the assignment. as far as practicable. Subsection 182. Section 182.1 1. Intellectual Property Code. photographic. 94. Inc. registration.1 1. SCOPE OF EXCLUSIVE RIGHTS I. the right that his name. An assignment may be filed with the National Library for registration. Sosan Industries. v.91. LICENSES The submission of a literary. 3487. II. or artistic work to a newspaper. If two or more persons jointly own a copyright or a part of it.

prominent way on the copies. or to withhold it from publication.1 1. or b) To use the name of the author with respect to a work he did not create. Section 195. and d) 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. 96. When an author contributes to a collective work. R. p. and in connection with the public use of his work. An author may waive his moral rights by a written instrument. c) To object to any distortion. or other derogatory action in relation to. or otherwise to make use of his reputation with respect to any version or adaptation of his work which. his right to have his contribution attributed to him is deemed waived unless he expressly reserved it. Section 193. b) To make any alterations of his work prior to. mutilation or other modification of. 97. the author can destroy his work. Intellectual Property Code. 2. 50. his work which will be prejudicial to his honor or reputation. Thus. because of alterations in it. Intellectual Property Code. would substantially tend to injure the literary or artistic reputation of another author. but the waiver is not valid if its effect is to permit another: a) To use the name of the author. Aquino. or the title of his work.2 1.1 49 .1 95.

Damages recovered after the death of the author shall be held in trust for and remitted to his heirs. the Director of the National Library will enforce his moral rights. In default of such persons. Intellectual Property Code. will not be deemed to contravene his moral rights. 6 100. Intellectual Property Code. dramatization. Intellectual Property Code. Section 199. 5 99. The rights and remedies for the violation of the moral rights of an author are the same as those for the infringement of a copyright.1. or mechanical or electrical reproduction in accordance with the reasonable and customary standards or requirements of the medium in which the work is to be used. broadcast. persons to be charged with the posthumous enforcement of these rights should be named in writing to be filed with the National Library. arranging or adaptation of such work for publication. Subsection 198. use in a motion picture. The moral rights of an author last during his lifetime and for fifty The years after his death and are not assignable or subject to license.1 1. Damages under the Civil Code may also be recovered. Intellectual Property Code. the damages will belong to the Government of the Philippines. and in default of the heirs. the heirs of the author. The complete destruction of a work which the author unconditionally transferred will not be deemed to violate his moral rights.1. 50 .1 1. In the absence of a contrary stipulation at the time an author licenses or permits another to use his work. the necessary editing.1 1. If he has no heirs. Section 196. Section 197. 4 98.

d) Rental of the original or a copy of an audiovisual or cinematographic work.II. a compilation of data and other materials or a musical work in graphic form. e) f) g) Public display of the original or a copy of the work. translation. The author of a work has the exclusive right to carry out. irrespective of the ownership of the original or the copy which is the subject of the rental. arrangement or other transformation of the work. authorize or prevent the following acts: a) b) Reproduction of the work or substantial portion of the work. EXPLOITATION RIGHTS A. abridgement. The term ‘reproduction’ means the making of one or more copies of a work or a sound recording in any manner or form. Thus. Economic Rights 7 101. a computer programme. and Other communication to the public of the work. 1 A work is reproduced when it is fixed in tangible form in a manner sufficiently permanent to allow its retrieval. 8 102. a work embodied in a sound recording. Public performance of the work. Dramatization. if work is scanned and stored in the hard disk of a computer 51 . Section 177.1 1. adaptation. c) The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership. Intellectual Property Code.

103. it is being reproduced. The same holds true if a book is recorded on a cassette tape. R. 3. acting or otherwise performing the work. {1995] 95 O. v. and where the performance can be perceived without the need for communication. it signifies making the recorded sounds audible at a place or at places where persons outside the normal circle of a family and its closest social acquaintances are or can be present. Sosan Industries. Enriquez.G. No. In the case of an audiovisual work. CA-G. Villanueva v. it is the showing of its images in sequence and the making of the sounds accompanying it audible.or a compact disk. 1950. 4.1 1. 2. or at different places or different times. 7479. pp. 3657-R. irrespective of whether they are or can be present at the same place and at the same time. making the work available to the public 52 . The translation of a work without the knowledge and consent of the author is an infringement of the copyright. Isle Originals.2 The unauthorized reproduction of an article in a newspaper which contained a notice that all rights are reserved constitutes an infringement. either directly or by means of any device or process. Inc. 3488. 9 104. 680. v. Inc. dancing.9. playing. June 9. the recitation. Aquino.4 1. Subsection 171. Sotto [1929] 55 Phil. In the case of a sound recording. Inc.R. 42-43. Intellectual Property Code. Similarly. in the case of a work other than an audiovisual work. The term ‘public performance’ means. Philippine Education Company. 688. the manufacture of a wicker flower shop basket similar to the one copyrighted is an infringement of the copyright.

46. which resembled the character ‘Cookie Monster’ and wore a similar chef’s hat. singing or playing a musical composition.R. Since the copyright in the character ‘Charlie Brown’ in the comic strip Peanuts and its pictorial illustration granted the owner of the copyright exclusive rights. DROIT DE SUITE 106.2 1.6. In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer. United Feature Syndicate. Children’s Television Workshop v. 1985. OTHER RIGHTS 1. since the character ‘Cookie Monster’ in the television show Sesame Street has been copyrighted. the owner of a bakery and restaurant cannot use the trademark ‘Kookie Monster’. Inc.1 Public performance includes reading a literary work aloud. 2.by wire or wireless means in such a way that the public may access the work from a place and time individually chosen by them. 267.1 Similarly. v. A. May 15.3 and 171. dancing a ballet or other choreographic works. Inc. 2. and acting out a dramatic work or pantomine. Touch of Class. subsequent to its first disposition by the author. B. p. R. 105.G. Aquino.-G.2 1. SP No. Intellectual Property Code.. somebody else cannot use the character ‘Charlie Brown’ as a trademark. the author or his heirs have an inalienable right to 53 . 03423. Subsections 171. Munsingwear Creation Manufacturing Company [1989] 179 SCRA 260.

if done privately and free of charge or if made strictly for a charitable or religious institution or society. The right exists during the lifetime of the author and for fifty years after his death. 108. Intellectual Property Code. works of applied art. 107. Intellectual Property Code. LIMITATIONS OR EXEMPTIONS TO THE SCOPE OF COPYRIGHT PROTECTION I. etchings. 2. Section186. 54 .1 1. engraving. This copyright does not include the right to control the reconstruction or rehabilitation in the same style as the original of the building to which the copyright relates. LIMITATIONS OF COPYRIGHT The following acts do not constitute infringement of a copyright: a) The recitation or performance of a work.1 1.participate in the proceeds of the sale or lease to the extent of five per cent. or works of similar kind in which the author principally derives gains from the proceeds of reproduction. Intellectual Property Code. Section 201. once it has been lawfully made accessible to the public. 109. 7. This right does not apply to prints. Section 2001.1 1. WORK OF ARCHITECTURE The copyright in a work of architecture includes the right to control the erection of any building which reproduces the whole or a substantial part of the work in original form or in any form recognizably derived from the original.

b)

The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries; but the source and the name of the author, if appearing on the work, should be mentioned;

c)

The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved; but the source should be clearly indicated;

d)

The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose;

e)

The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use; but the source and the name of the author, if appearing in the work, should be mentioned;

f)

The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions; but such recording must be deleted within a reasonable period after they were first broadcast; and such recording may

55

not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work; g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast; h) The use made of a work by or under the direction or control of the Government of the Philippines, by the National Library or by educational, scientific or professional institutions if the use is in the public interest and is compatible with fair use; i) The public performance or the communication to the public of a work, in a place where no admission fee is charged for the public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the regulations; j) Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process; but either the work has been published, or the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title; and k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.1
1. Intellectual Property Code, Subsection 184.1.

II.

FAIR USE

56

110.

The fair use of a copyrighted work for criticism, comment, news

reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright.

Decompilation, which is the reproduction of the code and translation of the forms of the computer programme to achieve the inter-operability of an independently created computer programme with other programmes, may also constitute fair use. In determining whether the use made of a work in any particular case is fair use, the factors to be considered include: a) The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; b) c) The nature of the copyrighted work; The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and d) The effect of the use upon the potential market for or value of the copyrighted work.1
1. Intellectual Property Code, Section 185.

III. 111.

REPRODUCTION OF PUBLISHED WORKS The private reproduction of a published work in a single copy, if the

reproduction is made by a natural person exclusively for research and private study, without the authorization of the owner of a copyright in the work, is permitted. The permission does not extend to the reproduction of the following: a) A work of architecture in the form of building or other construction;

57

b)

An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means;

c) d) e)

A compilation of data and other materials; A computer programme except as provided in Section 189; and Any work in cases where reproduction will unreasonably conflict with a normal exploitation of the work or will otherwise unreasonably prejudice the legitimate interests of the author.1
1. Intellectual Property Code, Subsections 187.1 and 187.2.

IV. 112.

REPOGRAPHIC REPRODUCTION BY LIBRARIES Any library or archive whose activities are not for profit may, without

the authorization of the author or copyright owner, make a single copy of the work by reprographic reproduction in the following case: a) The work by reason of its fragile character or rarity cannot be lent to users in its original form; b) The works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and c) The making of such a copy is to preserve and, if necessary in the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a

58

Aquino. However. Every library which is by law entitled to receive copies of a printed work is entitled to reproduce a copy of a published work if it is necessary for the collection of the library but is out of stock. by the lawful owner of the computer programme if the copy or adaptation is necessary for the following purposes: 59 . Subsection 188.1. Subsection 188.1 113. without the authorization of the author of. 114.1 1. The reproduction must be limited to the purposes of the library.copy which has been lost. The mode of copying authorized is limited to reprographic reproduction. 60-61.2. Intellectual Property Code. REPRODUCTION OF COMPUTER PROGRAMMES The reproduction in one back-up copy or adaptation of a computer programme is permitted. A library is not authorized to produce numerous copies of the work for the purpose of sale or donation. unless the volume. 115. V. pp. it is not permitted to reproduce a volume of a work consisting of several volumes or to produce missing tomes or pages of magazines or similar works. or other owner of copyright in. The permission does not extend to the reproduction of compact disks or video tapes. destroyed or rendered unusable and copies are not available with the publisher. R.2 1 2 Intellectual Property Code. tome or part is out of stock. a computer programme.

IMPORTATION FOR PERSONAL PURPOSES An individual may import a copy of a work for his personal purpose without the authorization of the author or other owner of the copyright in the following cases: a) If copies of the work are not available in the Philippines and: i) Not more than one copy at one time is imported for strictly individual use only . charitable. college. or free public library in the Philippines. Intellectual Property Code.1 1. or for any state school. 116. 60 . destroyed or rendered unusable. for the replacement of the lawfully owned copy of the computer programme in case the lawfully obtained copy of the computer programme is lost. or ii) The importation is by authority of and for the use of the Government of the Philippines. or is for the encouragement of the fine arts.1. consisting of not more than three copies or likenesses in any one invoice. university. or iii) The importation. and b) Archival purposes. is not for sale but for the use only of any religious. and. or educational society or institution duly incorporated or registered. VI. for which the computer programme has been obtained. and to the extent.a) The use of the computer programme in conjunction with a computer for the purpose. Subsection 189.

a) Literary. but the copies should not be more than three. Subsection 190.1. scholarly. SCIENTIFIC AND ARTISTIC WORKS The duration of copyrights may be tabulated as follows: Nature of Work Term a) The life of the author and 50 years after his death b) 50 years after the death of the author 117. scientific and artistic works b) Posthumous works c) Joint authorship c) The life of the last surviving author and 50 years after his death d) Anonymous or pseudonymous works e) Anonymous or pseudonymous works where the identity of the author is revealed f) Unpublished anonymous or pseudonymous works g) Photographic works d) 50 years from the date of first publication e) The life of the author and 50 years after his death f) 50 years from the date of the making g) 50 years from the date of publication 61 .1 1. 10 DURATION OF PROTECTION LITERARY. Intellectual Property Code.b) If such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale. 8. I. SCHOLARLY.

Intellectual Property Code. Intellectual Property Code. Section 214.2.1. 119. 2. The term of protection subsequent to the death of the author is counted from the date of his death or of publication. 2. Section 213. Subsection 215.h) Unpublished photographic works i) Published audio-visual works h) 50 years from the date of making i) 50 years from the date of publication j) 50 years from the date of making k) 25 years from the date of making1 j) Unpublished audio-visual works k) Works of applied art 118. II. Intellectual Property Code. Subsection 215. but the term shall always be deemed to begin on the first day of January of the year following the event which gave rise to it.2 1. 62 . Intellectual Property Code. NEIGHBOURING RIGHTS The duration of the neighbouring rights granted the performers and producers of sound recording may be tabulated as follows: NATURE OF NEIGHBOURING RIGHTS a) Performance not incorporated in recordings DURATION a) 50 years from the end of the year in which the performance took place b) Sound or image recording and performance incorporated in them b) 50 years from the end of the year in which the recording took place1 c) Broadcast c) 20 years from the date the broadcast took place2 1.

and e) The right of authorizing the making available to the public of their performances fixed in sound recordings. NEIGHBOURING RIGHTS SCOPE OF RIGHTS OF PERFORMERS A. Intellectual Property Code. even after distribution of them by.9. in such a way that members of the public may access them from a place and time individually chosen by them. (a) Performers have the following exclusive rights: The right of authorizing: i) The broadcasting and other communication to the public of their performance.1 1. in any manner or form: c) 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. I. b) The right of authorizing the direct or indirect reproduction of their performances fixed in sound recordings. d) The right of authorizing the commercial rental to the public of the original and copies of their performances fixed in sound recordings. by wire or wireless means. 63 . and ii) The fixation of their unfixed performance. Section 203. EXCLUSIVE RIGHTS 120. or pursuant to the authorization by the performer.

1 1. 123. Intellectual Property Code. 122.1 1. 64 . Once the performer has authorized the broadcasting or fixation of his performance. the right to claim to be identified as the performer of his performances. Subsection 205. Section 204. Section 206. MORAL RIGHTS The performer has.1 1. he has no more exclusive rights.121.2. B. Section 205. in every communication to the public or broadcast of a performance subsequent to the first communication or broadcast of it by the broadcasting organization. and to object to any distortion. the performer is entitled to an additional remuneration equivalent to at least five per cent of the original compensation he or she received for the first communication or broadcast. Intellectual Property Code. Intellectual Property Code. Unless otherwise provided in the contract. The limitations on copyright protection and the provisions on fair use are applicable to the exclusive rights of performers. Intellectual Property Code. except where the omission is dictated by the manner of the use of the performance.1 1. as regards his live aural performances or performances fixed in sound recordings. C. mutilation or other modification of his performances that would be prejudicial to his reputation. 11 DROIT DE SUITE 124.

even after distribution by them by or pursuant to authorization by the producer. or is publicly performed with the intention of making and enhancing profit. the playing of music in a restaurant for the entertainment of the customers is performance for profit. Producers of sound recordings have the following exclusive rights: a) The right to authorize the direct or indirect reproduction of their sound recordings. the placing of these reproductions in the market and the right of rental or lending. who. a single equitable remuneration for the performer or performers. and c) The right to authorize the commercial rental to the public of the original and copies of their sound recordings.1 1. B. is used directly for broadcasting or for other communication to the public. Intellectual Property Code. b) 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. in the absence of any agreement. shall share equally.1 Thus. Section 208. EXCLUSIVE RIGHTS 12 125.II. because the music is furnished to attract the public to 65 . even if the customers do not pay for the music. or a reproduction of such recording. COMMUNICATION TO THE PUBLIC If a sound recording published for commercial purposes. PRODUCERS OF SOUND RECORDINGS A. and the producers of the sound recording shall be paid by the user to both the performers and the producer. 126.

Section210. Intellectual Property Code. Authors and Publishers. LIMITATIONS The limitations on copyright protection and the provision on fair use are applicable to the rights of producers of sound recordings.1 1. 66 . Tan [1987] 148 SCRA 461. 2. 127.patronize the restaurant. C. v. 465-467. restaurant.2 1. This increases the volume of business of the Intellectual Property Code. Filipino Society of Composer. Inc. Section 209.

there must be a copying of a substantial portion of the copyrighted 67 . and Fair use of the broadcast.1 To constitute infringement. BROADCASTING ORGANIZATIONS Broadcasting organizations have the exclusive right to carry out. without the consent of the owner of the copyright. 129. of anything the sole right to do which is conferred by statute on the owner of the copyright. b) The recording in any manner.III. authorize or prevent any of the following acts: a) The rebroadcasting of their broadcasts. Intellectual Property Code. Section 211. The use solely for the purpose of teaching or for scientific research.1 1. Intellectual Property Code. Section 212. including the making of films or the use of video tape. IV. a) b) c) d) LIMITATIONS TO THE SCOPE OF PROTECTION The neighbouring rights do not apply in the following cases: The use by a natural person exclusively for his own personal purposes. The use of short excerpts for reporting current events. INFRINGEMENT AND REMEDIES I. of their broadcasts for the purpose of communication to the public of television broadcasts of the same. 128. CONCEPT Infringement of a copyright consists in the doing by any person. 10.1 1. and c) The use of such records for fresh transmissions or for fresh recording. 130.

Castillo [1964] 5 CAR (2s) 195. there is an infringement. arrangement. there is infringement. Inc. SP No.7 Similarly.4 To constitute infringement. Inc. Licup Designs Group. or the labours of the original author are substantially and to an injurious extent appropriated by another.. If so much is taken that the value of the original work is sensibly diminished. v. where eighty-eight per cent of the words in a dictionary were copied by another author. Ramon S.. it is not necessary that the whole or even a large portion of the original work be copied.6 Thus. where a second book on English grammar had the same style and manner of presentation and used the same examples as an earlier work. Gan v. CA-G. inconsequential differences between the original work and the imitation do not detract from the existence of infringement of the copyright. 208-209. that is sufficient to constitute infringement of the copyright. combination and composition. 1988. August 28. Licup Design Group. CV No. 09166.work so that it appears that the work of another was copied. 1990.3 However. mere similarity in the titles of two novels does not constitute infringement of a copyright. Serrano v. CV No. 3. 17618.R. 861. CA-G. Robles v. Abiva v. 1990. if they have different plots. 183-184. 2 Thus. August 15. 17618.R.R. Cristobal v. 30. Gan v.5 The test of infringement of a copyright is whether an ordinary observer comparing the works can readily see that one was copied from the other. 4. Inc. Ramon S. 2. 855. August 28.8 Where someone photographed the same scenic views shown in copyrighted Christmas cards and used the same design. Court of Appeals [1996] 261 SCRA 144. Weinbrenner. Inc. Paglinawan {1914) 44 Phil. [1964] 6 CAR (2s) 1023. 68 . CA-G. Santos [1963] 4 CAR (2s) 21.9 1. 1030. Columbia Pictures. Arceo v. Philippine Racing Club. there is an infringement.

1028. 1028. Arceo v. 184. 6183. [1991] 90 O. [1991] 90 O. 526. July 22. 7. De la Cruz. 184.5. DEFENSES A. He should know that the work he was copying did not belong to him. 6183 II. 6.. 1988. No. [1996] 261 SCRA 144. Habana v. The similarity must be due to copying. Parungao v. 525. Robles {1964] 6 CAR (2s) 2023. SP No. Inc. Habana v. CA-G.1 If the author of the similar work produced it by his own independent labour. there is no infringement.2 1. v. Hence. Inc. Columbia Pictures. Estella v. Philippine Racing Club. Robles [1999] 310 SCRA 511. It is not a defense to an action for infringement of a copyright that the defendant did not know that the work he was copying was copyrighted. [1999] 310 SCRA 511. Inc. August 15.G. Santiago [1942] 1 O. Court of Appeals. People v. Paglinawan [1918] 44 Phil. v. 1028. 17533-R. Inc.R.G. the author of the copyrighted work must prove that the author of the identical work had access to his work. Abiva v. Habana v. Robles. Abiva v. 6181. Bathala Films. 09166. Columbia Pictures. Mere similarity between two works does not constitute infringement.G. 69 . 9. 1 Neither is it a valid defense that the defendant had no intention to infringe the copyright. 8. 131. Weinbrenner [1964] 6 CAR (2s) 1023. 1957. 855. 2. 860. Inc. 6181. Parungao v. Bathala Films. CA-G. IGNORANCE AND LACK OF INTENTION 132. Court of Appeals [1996] 261 SCRA 144. Serrano v. Weinbrenner [1964] 6 CAR (2s) 1023. 792. 788.R.2 1.

Santiago [1992] 1 O. REMEDIES A. CA-G. 17618. CIVIL ACTION 136. Inc. Angeles v. Inc. October 21. Filipino Society of Composers.2.1 1. 1971. August 28. III. Inc.1 1.1 1. Premier Productions. Section 226. 133.. Licup Design Group.R. [1964] 6 CAR (2s) 159. No. Authors and Publishers. Tan [1987] 148 SCRA 461. 1990. LOSS OF RIGHTS An author who sold to a motion picture company the right to make a film out of his novel cannot sue the motion picture company for infringement of his copyright.G. CV No. 791. The composer of a musical composition who allowed it to become property of the public domain waives his right to the protection of his intellectual creation. 788. 134. B. Intellectual Property Code. 165. Ramon S. Pasicolan. CA-G. The court may also order the defendant to desist from an infringement to prevent the entry into the 70 .R. C. Icasiano v. Gan v. v. 467. Any person infringing a right protected under the Intellectual Property Code is liable for the following: a) An injunction restraining such infringement. 28748-R. Estella v. STATUTE OF LIMITATIONS No damages may be recovered for infringement of a copyright after four years from the time the infringement occurred. 135.

sales invoices and other documents evidencing sales.1 1. c) Delivery under oath. d) Delivery under oath for destruction without any compensation all infringing copies or devices. as well as all plates. Intellectual Property Code. molds. immediately after customs clearance of such goods. in lieu of actual damages and profits. including legal costs and other expenses. upon such terms and conditions as the court may prescribe. as they may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement.channels of commerce of imported goods that involve an infringement. all articles and their packaging alleged to infringe a copyright and implements for making them. 71 . such damages which to the court appear to be just and shall not be regarded as penalty. and in proving profits the plaintiff is required to prove sales only and the defendant is required to prove every element of cost which he claims. e) Such other terms and conditions. Subsection 216. or. including the payment of moral and exemplary damages. b) Payment to the copyright proprietor or his assigns or heirs of such actual damages. or other means for making such infringing copies as the court may order. wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case. for impounding during the pendency of the action.1. which the court may deem proper.

1 1. (1995) 95 O. [1989] 4 CARA 29.G. Chan. Inc. or ought to know. 3491. 72 . or c) Trade exhibit of the article in public. CRIMINAL PROSECUTION 1. letting for hire. No. 139. Any person who. has in his possession an article which he knows. 2. the author of a copyrighted book can recover the profits he failed to realize from the copies of his books which remain unsold because of the distribution of the infringing copies.1 If there is no satisfactory proof of the actual damages. Sosan Industries.. Subsection 217. or hire. 1031. shall be guilty of an offense and is liable on conviction to imprisonment and fine. a person who sells fake cassette tapes is criminally liable even if he was not the one who manufactured it. Inc. B. CRIMINAL LIABILITY 138. September 29. CA-G. Abiva v.137. at the time when a copyright subsists in a work. Thus. Isle Originals. 3479. 1976. or by way of trade offering or exposing for sale. v.3. to be an infringing copy of the work for the purpose of: a) Selling.2 1. the article. Ruiz v. or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work. b) Distributing the article for purpose of trade. Intellectual Property Code. People v.1 1. 38. Thus. Corpuz Enterprises. Inc. the court should award damages in accordance with the formula in the law. M. 48512-R. Weinbrenner [1964] 6 CAR (2s) 1023.R.

000 pesos for the first offense.1 and 217. EVIDENCE CIVIL ACTION The court can order the seizure and impounding of any article which may serve as evidence in an action for infringement.000 pesos to 500. PENALTY 140. d) In all cases. the court should 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. Subsection 216.2. Intellectual Property Code. Subsections 217.000 pesos to 150. 73 . b) Imprisonment of three years and one day to six years plus a fine ranging from 150.2.1 1. 1.000 pesos for the third and subsequent offenses.500. In determining the number of years of imprisonment and the amount of fine.1. Intellectual Property Code. subsidiary imprisonment in cases of insolvency. Any person infringing a copyright or aiding or abetting such infringement is guilty of a crime punishable by: a) Imprisonment of one year to three years plus a fine ranging from 50. Subsection 271.000 pesos for the second offense.000 pesos to 1.1 1.2. Intellectual Property Code. 142.1 1. C. c) Imprisonment of six years and one day to nine years plus a fine ranging from 500. 141.

Intellectual Property Code. 145. and b) If the subsistence of the copyright is established. 143. Subsection 218.1 1. The natural person whose name is indicated on a work in the usual manner as the author should. in the absence of proof to the contrary. PRESUMPTIONS 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 in it. and The copy of the work or other subject matter annexed to it is a true copy of it.2. should be admitted in evidence in any proceedings for an offense and is prima facie proof of the matters stated in it until the contrary is proved. the plaintiff will 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. Intellectual Property Code. a) In an action for infringement. the following matters are presumed: Copyright is presumed to subsist in the work or other subject matter to which the action related if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter.1 1.2. b) c) He or the person named in it is the owner of the copyright. and the court before which such affidavit is produced should assume that the affidavit was made by or on behalf of the owner of the copyright. Subsection 218. be 74 . copyright subsisted in the work or other subject matter.1. 144.

Intellectual Property Code. Section 220.1. 147.1 1. Subsection 219. b) If the statement is contradicted by another statement recorded in the international register.1 1. Intellectual Property Code. in the absence of proof of the contrary.1. Subsection 219. This is applicable even if the name is a pseudonym. should be construed as true until the contrary is proved except: a) If the statement cannot be valid under the Intellectual Property Code or any other law concerning intellectual property. presumed to be the maker of the work.1 1. recorded in an international register in accordance with an international treaty to which the Philippines is or may become a party. The person or body corporate whose name appears on an audio- visual work in the usual manner is. 146. Intellectual Property Code.presumed to be the author of the work. 75 . if the pseudonym leaves no doubt as to the identity of the author. A statement concerning a work.

SCHOLARLY. and Works first published in another country but also published in the Philippines within thirty days. c) Works of architecture erected in the Philippines or other artistic works incorporated in a building or other structure located in the Philippines. Intellectual Property Code. II.1 and 221. The protection afforded by the Intellectual Property Code to copyrightable works apply to the following: a) Works of authors who are nationals of or have their habitual residence in the Philippines. LITERARY. f) Works that are to be protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. irrespective of the nationality or residence of the authors. 149. Subsections 221.1 1.11.2. b) Audio-visual works the producer of which has his headquarters or habitual residence in the Philippines. SCIENTIFIC AND ARTISTIC WORKS AND DERIVATIVE WORKS 148. PERFORMERS The provisions of the Intellectual Property Code on the protection of performers apply to the following: 76 . d) e) Works first published in the Philippines. POINTS OF ATTACHMENT I.

2 Intellectual Property Code. 2. SOUND RECORDINGS The provisions of the Intellectual Property Code on the protection of sound recordings apply to the following: a) Sound recordings the producers of which are nationals of the Philippines. Subsections 223.2.1 and 222.a) Performers who are nationals of the Philippines. Subsection 224.1 iv) Who are to be protected by virtue of any international convention or international agreement to which the Philippines is a party. Intellectual Property Code.1 Sound recordings which are to be protected by virtue of any international convention or international agreement to which the Philippines is a party.1 and 223.2. 2.2 1. or Are incorporated in sound recordings that are protected under the Intellectual Property Code. b) Performers who are not nationals of the Philippines but whose performances: i) ii) Take place in the Philippines.2 1.2. BROADCASTS 77 . Intellectual Property Code. or iii) Which have not been fixed in sound recording but are carried by broadcast qualifying for protection under the Intellectual Property Code. Intellectual Property Code. 150. IV. Subsections 222. III. and b) c) Sound recordings that were first published in the Philippines. Subsection 224.

Intellectual Property Code.1. Subsection 224. I.2 12. First. 78 . 140. b) c) Broadcasts transmitted from transmitters situated in the Philippines. On the other hand.1 (h). OVERLAPPING AND RELATION TO OTHER INTELLECTUAL PROPERTY LAWS 152. An ornamental design may be copyrighted and registered as an There are advantages in having an industrial design at the same time. the owner of the copyright in an ornamental design obtains protection immediately from the moment of its creation. Subsection 172. 2.1 ornamental design copyrighted. Second. p. the application for the registration of an industrial design is subject to examination by the Intellectual Property Office to determine whether or not it is new or original.1 Broadcasts by organizations which are to be protected by virtue of any international convention or international agreement to which the Philippines is a party. Intellectual Property Code. Subsection 224.2 1.151. following: a) The provisions of the Intellectual Property Code apply to the Broadcasts of broadcasting organizations whose headquarters are situated in the Philippines. Sapalo.2 1. the duration of a copyright lasts longer than the registration of an industrial design. 2. Intellectual Property Code.

under the Paris Convention for the Protection of Industrial Property. Sapalo.1 1. First. 139-140. 79 .153. Second. I. pp. its registration after examination gives the owner a tangible basis for defending his rights. the owner may claim the date of his filing in the Philippines as the filing date for his application in another Member State. There are advantages in having an ornamental design registered also as an industrial design.

It resembled French law. 158. 80 . Patents granted for terms of five or ten years could be renewed for a similar period.1 1. 155. However. The Patent Law of Spain was revised on 30 July 1878. However. p. Patents for inventions were issued for terms of five. 2. 2. p. 154. PATENTS SOURCES-LEGISLATION The first Patent Law of Spain was promulgated on 27 March 1826. The new law extended the term of patents for invention to twenty years. no patent was valid for more than twenty years unless it was granted by a special law. which extended the patent laws of the United States to the Philippines. 157. Article XIII of the Treaty of Paris guaranteed that patents granted to Spaniards in the Philippines would continue to be respected.1 1. It is unknown when and how this law was adopted in the Philippines.1 1. 156. I. the sale. Sapalo. Sapalo. Sapalo. ten or twenty years depending on the wishes of the inventor. On 10 February 1913. I. the use or consumption of the invention. p. 2. records show that a system of regulation of patents existed in the Philippines before 1862.CHAPTER 2. The Patent Law of 1888 granted inventors the exclusive right to exploit their inventions. I. the Philippine Legislature approved Act 2235. including the fabrication. I.

On 9 June 1951. On 27 September 1965. Article XIV. Republic Act 864 amended Republic Act 165 by authorizing the grant of patents for utility models as in German law.1 1. Article XV. 69. the Philippines acceded to the Paris Convention for the Protection of Industrial Property. the Philippine Legislature approved Act 2793 entitled the Patent Law. Section 4. On 20 February 1919. It It also was essentially patterned after the Patent Law of the United States. 160. 164. No. On 16 June 1953. Explanatory Note of House Bill 1156. 2. Republic Act 637 amended Republic Act 165 by streamlining the procedure for the grant of patents. Senate Resolution.1 It also acceded on 14 July 1980 to the revision adopted in Stockholm. contained a compulsory licensing system similar to the one in Great Britain. 165.1 1. 542. 81 . Section 9 (3) of the Constitution of 1973 secured to inventors the exclusive right to their inventions.159.2 1. 162. Court of Appeals [1999] 318 SCRA 516. Act 2793 was superseded on 20 June 1947 by Republic Act 165. 163. Mirpuri v. 161. Explanatory Note of House Bill 2758. of the Constitution of 1935 secured to inventors the exclusive right to their inventions for a limited period.

On 21 October 1981. It introduced changes to adhere to the 1997. which was approved on 6 June. 167. 170.166. the Constitution of 1987 required the government to regulate licensing agreements. Article XII. 97. Section 12 reads: ‘The State shall regulate the transfer and adaptation of technology from all sources for the national benefit. Presidential Decree 1263 amended Republic Act 165 by expanding the grounds for compulsory licensing and regulating voluntary licensing. repealed Republic Act 165. The Intellectual Property Code.’ Likewise. 1 As a result.’ 169. On 14 December 1977. Aside from securing to inventors the exclusive rights to their inventions in Article XIV. the Senate ratified the accession by the Philippines to the Agreement Establishing the World Trade Organization. the Philippines acceded to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. Senate Resolution No. Section 14 provides: ‘The State shall encourage appropriate technology and regulate its transfer for the national benefit. provisions of the Agreement on Trade-Related Aspects of Intellectual Property 82 . On 14 December 1994. Section 13. 1. 168. Article XIV. the Philippines became bound to apply the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights.

PATENTABLE SUBJECT MATTER I. Section 21 and Subsection 22. II. 35. 13. ensured the durability of the tiles. Explanatory Note of House Bill 5648. an improved process for making mosaic pre-cast tiles which resulted in an improvement of the lip width of the tiles. 15. 171. 12 November 1996. 8 October 1996. pp. Vol. Thus. Journal of the House of Representatives. 1030-131 and 134. Journal of the House of Representatives.1 Likewise. 2. and prevented the flaking off of the edges of the tiles in the process of making tiles may be patented. No. product or process e) Micro-organisms.2 It also lengthened the terms of patents for inventions to twenty years. Record of the Senate. 29. No. No. f) Non-biological and microbiological processes1 1.1 It shifted from the first-to-invent system to the first-to-file system for applications for patents. 45. pp. 8 October 1996. 34-36.4. pp. 34. 10 December 1996. p. Rule 201. Journal of the House of Representatives. No. 29. an improvement in the mascots being used by fast food restaurants to attract customers by the use of an actuator 83 . 172. PATENTABLE INVENTIONS The following inventions can be patented: a) A machine b) A product c) A process d) An improvement of a machine. No. Intellectual Property Code. Record of the Senate. 12 November 1996. 45. and 38. Rules and Regulations on Inventions. Vol. 14 and 34. 1. Explanatory Note of House Bill 5648.Rights. II. 2.

Joaquin v. and it must be industrially applicable.1 1. it must involve an inventive step. 248. Aguas v.device to move the facial parts of the mascots is patentable. rules and methods of performing mental acts. and computer programmes. de Leon [1982] 111 SCRA 238. 3.1 1. d) Plant varieties or animal breeds or essentially biological process for the production of plants or animals. 173. b) Schemes. I. Intellectual Property Code. it must be new. 1. scientific theories and mathematical methods. II. playing games or doing business. NON-PATENTABLE INVENTIONS The following inventions cannot be patented: a) Discoveries. process or improvement of them may be patented. and f) Anything which is contrary to public order or morality. e) Aesthetic creations. Intellectual Property Code. product. Section 22. 2.G. 7931. In order that a machine. 7935. Nepomuceno [1996] 95 O. CONDITIONS OF PATENTABILITY 174. NOVELTY 84 . where the earlier contraption did not allow such movements. c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. Section 21.

F. Intellectual Property Code. filed or effective in the Philippines. utility model. 790. since it had been publicly used for months before an application for a patent for it was filed. Section 23. [1919] 40 Phil. or industrial design registration.175. Chua [1933] 57 Phil. Vargas v. and b) The whole contents of an application for a patent.3 An improved feed mixer was declared not patentable. 195. Vargas v. because most its major integral parts had been previously published and used. adjustable plow for more than two years before the filing of an application for a patent for it destroyed its novelty. An application which has validly claimed the filing date of an earlier application in another country which grants Filipino citizens the same privilege is considered prior art as of the filing date of the earlier application in the other country. 1 A hemp stripping machine with a tapering spindle around which the hemp to be stripped was wound was not an invention. Ltd. 2. The public use of an improved. 203. 85 . 176. Intellectual Property Code. An invention is not new if it forms part of a prior art. with a filing or priority date that is earlier than the filing or priority date of the application.4 1.2 1. Section 24.M. 1 Prior art consists of the following: a) Everything which has been made public anywhere in the world before the filing date or the priority date of the application claiming the invention. 784. Yaptico and Company. 2 An orhydrate formulation which was published before the filing of an application for a patent for it lacked novelty. published in accordance with the Intellectual Property Code.

Rules and Regulations on Invention. 1985. 4. Kosuyama [1933] 59 Phil. 206. SP-03628. 179. 810. Director of Patents. 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.G.R.1 A person skilled in the art is an ordinary practitioner aware of what was common general knowledge in the art at the relevant date. Salvador [1989] 7 CARA 799. because it is merely a mechanical operation.2 1. II. 2. 211. 178. Dimaano v. 3. Section 26. He is presumed to have at his disposal the normal means and capacity for routine work and experimentation.) v. Vercide [1991] 91 O. April 5. No. Changing the properties of an abrasive and its fineness in scouring cleanser is not an invention. Frank v. He is presumed to have knowledge of all references that are sufficiently related to one another and to the pertinent art and to have knowledge of all arts reasonably pertinent to the particular problems with which the inventor was involved. Intellectual Property Code. 2195.1 The 86 . Bajado v. Public knowledge means knowledge by others.2. Abbott Laboratories (Phils. having regard to prior art. The knowledge of the inventor is not public knowledge. 2198. Thus. AC-G. INVENTION An invention involves an inventive step if.1 1. Rule 107. 177. the fact that the inventor has a working model of his invention does not mean it has been exposed to public knowledge.

Dimaano v. Director of Patents.R. and An abstract. CA-G. Vercide [1991] 91 O. III. 2199. 2. 182.G. One or more claims. 181. SP-10952-R. 4. FORMALITIES I. INDUSTRIAL APPLICABILITY An invention is industrially applicable if it can be produced and used in any industry. because it merely combined existing devices.improvements in an existing feed mixer consisting of the use of a more compact and simplified structure and consistent production of homogenous feed mix involve merely the use of mechanical skills. Drawings necessary for the understanding of the invention.1 1. An applicant who is not a resident of the Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom 87 . 1975. 180. Intellectual Property Code. Vitale v. 2195. Section 27. A description of the invention.2 1.1 1. Section 32. No. APPLICATION An application should contain the following: a) b) c) d) e) A request for the grant of a patent.1. Intellectual Property Code. July 23.

The abstract should consist of a concise summary of the disclosure of the inventions as contained in the description. 186. If the application concerns a microbiological process or the product of it and involves the use of a micro-organism 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. and should be supported by the description. Intellectual Property Code.1 1. Intellectual Property Code. Intellectual Property Code.1. Subsection 36.notice or process for judicial or administrative procedure relating to the application for patent or the patent may be served. Each claim should be clear and concise. Intellectual Property Code.1 1.1 1. 184. 183. The application should contain one or more claims which should define the matter for which protection is sought. Subsection 35. claims and drawings in 88 .1 1. the name and other data of the applicant. The application should disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. the inventor and the agent and the title of the invention. the application should be supplemented by a deposit of such material with an international depository institution. and such material is not available to the public. Section 34.1. 185. Section 33. The request should contain a petition for the grant of the patent.

will be considered as filed as of the date of filing of the foreign application subject to the following conditions:1 a) b) The local application expressly claims priority. The abstract should merely serve for technical information. 328. convention or law affords similar privileges to Filipino citizens. It is filed within twelve months from the date the earliest foreign application was filed. 187.2 1. and the principal use or uses of the invention. 332. An applicant from a foreign country is not entitled to priority if his country does not grant a similar right to Filipino citizens. 188. Agrava [1952] 91 Phil. Section 31. Abbot Laboratories v. Rule 304.preferably not more than one hundred fifty words. Intellectual Property Code. PUBLICATION 89 . An application for a patent filed by a person who has previously applied for the same invention in another country which by treaty. 2. Section 37. Intellectual Property Code. the gist of the solution of that problem through the invention. It must be drafted in a way which allows the clear understanding of the technical problem. Rules and Regulations of Inventions. II. and c) A certified true copy of the foreign application together with an English translation is filed within six months from the date of filing in the Philippines.1 1. The six-month period may be extended for a maximum of six months upon showing of good cause or in compliance with treaty to which the Philippines is a party.1 1.

Intellectual Property Code. The application shall be published in the Intellectual Property Office Gazette together with a search document established by the Intellectual Property Office citing any documents that reflect prior art. Intellectual Property Code. 191.1 1.1. When two or more persons have jointly made an invention. Subsection 44. the patent belongs to: 90 . OWNERSHIP AND TRANSFER I. 190. it shall be granted. the right to a patent belongs to them jointly. or assigns. Intellectual Property Code. 192. GRANT AND PUBLICATION OF PATENT If the application meets the requirements of the Intellectual Property Code.189. 2. III. Subsection 50. OWNERSHIP The right to a patent belongs to the inventor.1. Section 28.1 The patent will take effect on the date of its publication in the Intellectual Property Office Gazette. Intellectual Property Code. 193. In case the employee made the invention in the course of his employment contract. unless otherwise provided in the contract.3 5.1 1. 2 1. The person who commissioned the work will own the patent. his heirs. Subsection 50. after eighteen months from the filing date or priority date.

If a person who was deprived of the patent without his consent or through fraud is declared by final court decision to be the true and actual 91 . 3285. 194. Pajalla v. to the contrary. unless there is an agreement. Rule 304. if the inventive activity is not a part of his regular duties even if the employee uses the time. the patent belongs to the applicant who has the earliest filing date or the earliest priority date. 3288. express or implied.1 1. b) The employer. National Food Authority [1992] 92 O. the right to the patent belongs to the person who filed an application for the invention. 196.G. If two or more applications were filed for the same invention. 2. 195. Section 29. Rules and Regulations on Inventions. If two or more persons made the invention separately and independently of each other. an employee of an office trading in rice who invented a machine to salvage the rotten or infected rice on his own is the owner and not as part of his duties is the owner of the invention.a) The employee. facilities and materials of the employer.1 If two or more applications for the same invention have the same filing date or priority date.1 1. Intellectual Property Code.2 1. Section 30. Intellectual Property Code. if the invention is the result of the performance of his regularly-assigned duties. Thus. the patent will be issued jointly to all the applicants.

An assignment may be of the entire right. Intellectual Property Code.2. title or interest in and to patents and inventions covered by them. or of an undivided share of the entire patent and invention. Subsections 103. title or interest in and to the patent and the invention covered by it. Intellectual Property Code. If two or more persons jointly own a patent and the invention covered by it. 200. Inventions and any right. at his option. each of the joint owners is entitled to 92 . and award damages in his favor. In such a case. the court shall order his substitution as owner of the patent or cancel the patent. 1 1. may be assigned or transmitted by inheritance or bequest or may be the subject of a licensing agreement. Intellectual Property Code. the parties become joint owners of it. II. Section 68. 199. Subsection 103. 197. ASSIGNMENT Patents or applications for patents and invention to which they relate shall be protected in the same way as the rights of other property under the Civil Code. 198.1 1. either by the issuance of the patent in their joint favor or by reason of the assignment of an undivided share in the patent and invention or by reason of the succession in title to such share.1 1. Intellectual Property Code.2. An assignment may be limited to a specified territory.inventor.1 1. Section 104.

the name of the applicant.1 1. title or interest or part of it without the consent of the other owner or owners. if it is in a language other than English or Filipino. or import the invention for his own profit. e) It must be accompanied by the required fees. Intellectual Property Code. or without proportionally dividing the proceeds with such other owner or owners. d) It must identify the letters patent involved by number and date and give the name of the owner of the patent and the title of the invention. an assignment must comply with the following requirements: a) It must be in writing and accompanied by an English translation. but none of the joint owners is entitled to grant licenses or to assign his right.1 1. it should state the application number and the filing date of the application and give the name of the applicant and the title of the invention. Intellectual Property Code. To be acceptable for recording. 93 . Section 107. 201. Rules and Regulations on Inventions. it should adequately identify the application by its date of execution. In the case of an application for a patent. use. and the title of the invention. It must be accompanied by an appointment of a resident agent. If the assignment was executed concurrently with or subsequent to the execution of the application but before the application is filed or before its application number is ascertained. Section 105. b) c) It must be notarized.personally make. sell. Rule 1200. if the assignee is not residing in the Philippines.

intermediate products. c) Those that contain restrictions regarding the volume and structure of production.202. d) Those that prohibit the use of competitive technologies in a non-exclusive licensing agreement. e) Those that establish a full or partial purchase option in favor of the licensor. or of permanently employing personnel indicated by the licensor. Intellectual Property Code. Section 106.1 Notice of the recording will be published in the Intellectual Property Office Gazette. Rules on Regulations on Inventions. Rule 1205. III. raw materials. PROHIBITED PROVISIONS 203. A. 94 . and other technologies.2 1. b) Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the product manufactured on the basis of the license. 2. VOLUNTARY LICENSES The Intellectual Property Code Regulates Voluntary Licenses. a) The following provisions are prohibited in licensing agreements: Those which impose upon the licensee the obligation to acquire from a specific source capital goods. The assignment of a patent is void as against any subsequent purchaser or mortgagee for valuable consideration and without notice unless it is recorded in the Intellectual Property Office within three months from the date of the assignment or prior to the subsequent purchase or mortgage.

j) Those which require payments for patents and other industrial property rights after their expiration or termination of the licensing agreement.f) 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. i) Those which restrict the use of the technology supplied after the expiration of the licensing agreement. m) Those which prevent the licensee from adapting the imported technology to local conditions. 95 . k) Those which require that the licensee will not contest the validity of any of the patents of the licensor. except in cases of early termination of the licensing agreement due to a reason attributable to the licensee. g) Those that require payment of royalties to the owners of patents for patents which are not used. or introducing innovation to it. l) 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. as long as it does not impair the quality standard prescribed by the licensor. h) 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 or distribute the licensed product have already been granted. processes or equipment.

c) In case the licensing agreement provides for arbitration. the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nationals Commission on International Trade Law or the Rules of Conciliation and Arbitration of the International Chamber of Commerce will apply and the venue of arbitration will be the Philippines or any neutral country. Intellectual Property Code. Section 88. Intellectual Property Code. B.n) Those which exempt the licensor from liability for non-fulfillment of his responsibilities under the licensing agreement or liability arising from third party suits brought about by the use of the licensed product or the licensed technology. a) MANDATORY PROVISIONS The following provisions must be included in licensing agreements: The laws of the Philippines will govern their interpretation of the same and in the event of litigation. b) Continued access to improvements in techniques and processes related to the technology will be made available during the period of the licensing agreement. 204. Section 87. the venue will be the proper court in the place where the licensee has its principal office. and o) Other clauses with equivalent effects. 96 .1 1. and d) The Philippine taxes on all payments relating to the licensing agreement will be borne by the licensor.1 1.

b) To restrain. such as high technology content. Section 91. increase in foreign exchange earnings. if the subject matter of the patent is process. prohibit and prevent any unauthorized person or entity from making. Section 92. Intellectual Property Code. A patent confers on its owner the following exclusive rights: a) To restrain. using. Intellectual Property Code. 6. EFFECT OF VIOLATION Failure to comply with the requirements of the Intellectual Property Code regarding prohibited and mandatory provisions will automatically render a licensing agreement unenforceable unless an exception was allowed. selling or importing that product. 206. or registration with the Board of Investments as a pioneer industry. 205. D. substitution with or use of local materials.1 1. or importing any product obtained directly or indirectly from such process.C. using. employment generation. selling or offering for sale. offering for sale. SCOPE OF EXCLUSIVE RIGHTS 207. prevent or prohibit any unauthorized person or entity from using the process. EXCEPTIONS The Intellectual Property Office may allow an exception from the prohibited or mandatory provisions in cases where substantial benefits will accrue to the economy. if the subject matter of the patent is a product.1 1. dealing in. and from manufacturing. regional dispersal of industries. 97 .

LIMITATIONS A.1 1. d) A pharmacy or a medical professional prepares for individual cases a medicine in accordance with a medical prescription. or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: but the invention should be used exclusively for the needs of 98 . Intellectual Property Code. and it does not significantly prejudice the economic interests of the owner of the patent. LIMITATIONS OF PATENT RIGHTS 208. Subsections 71. LIMITATIONS AND EXCEPTIONS TO THE SCOPE OF PATENT PROTECTION I. The owner of patent cannot prevent third parties from performing without his authorization the acts pertaining to him because of his exclusive rights in the following cases: a) The owner of a patented product which has been put on the market in the Philippines uses the products or expressly consents to its use insofar as the use is performed after the product has been on the market. e) The invention is used in any ship. 7.c) To assign or transfer by succession the patent and to conclude licensing agreements for it. vessel. c) The act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention.2. aircraft.1 and 71. b) The act is done privately and on a non-commercial scale or for a noncommercial purpose.

aircraft.1 1. national security. as determined by the appropriate agency of the government. or land vehicle and not for the manufacture of anything to be sold within the Philippines. so requires. B. Intellectual Property Code.the ship. in particular. 209. is anti-competitive. health or the development of other sectors.1. by the owner of the patent or his licensee. USE BY THE GOVERNMENT A government agency or third person authorized by the Government of the Philippines may exploit the invention even without agreement of the owner of the patent in the following cases: a) The public interest. 210.1 1. vessel. EXCLUSION OF PRIOR USER Any prior user who in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business. nutrition.1 99 . 211. or b) A judicial or administrative body has determined that the manner of exploitation. Section 72. Section 73. has the right to continue its use as envisaged in such preparations within the territory where the patent produces its effect. C. Intellectual Property Code. before the filing date or priority date of the application on which a patent is granted. The use by the Government of the Philippines or third persons authorized by the Government of the Philippines is subject to the conditions for the grant of compulsory licenses.

COMPULSORY LICENSING GROUNDS 1. Intellectual Property Code. national security. 100 . A. or e) The patented invention is not being worked in the Philippines on a commercial scale. II. A license to exploit a patented invention even without the agreement of the owner of the patent may be granted to any person who has shown his capability to exploit the invention under any of the following circumstances: a) b) A national emergency or other circumstances of extreme urgency exist.. without satisfactory reason.2. Section 93. the importation of the patented article constitutes working or using the patent. although capable of being worked. d) The owner of the patent has not devoted the invention to public commercial use without satisfactory reason. However. so requires. health or the development of other vital sectors of the national economy as determined by the appropriate agency of the government.1. c) A judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive. The public interest.1 and 74.1 1. Intellectual Property Code. nutrition. in particular. Subsections 74. SPECIFIC GROUNDS 212.

Smith. Each of these circumstances stands alone and is sufficient to support the grant of a compulsory license. Inc. Inc. 1975. Thus. v. a component of an anti-ulcer medicine.1 1. subject to the following conditions: a) The invention claimed in the later patent involves an important technical advance of considerable economic significance in relation to the prior patent. SP03651.4 and alphaaminobenzypenicillin. an antibiotic. a component of an anti-ulcer medicine. [1988] 166 SCRA 133.). a compulsory license may be granted to the owner of the later patent to the extent necessary for the working of his invention. 1094. CA-G. an antibiotic. Doctors Pharmaceuticals.2 cimetidine. Court of Appeals [1997] 276 SCRA 224.R. Inc.3 ampicillin. 215. Bristol Myers Company. v. United Laboratories. Compulsory licenses have usually been granted for medicines. 5. 4. [1965] 14 SCRA 1053. Kline & French Laboratories.. 139. Parke. Ltd. Davis & Company v. Inc. v. November 23. [1974] 19 CAR (2s) 1090. since they relate to public health. Davis & Company v. No. 239. 214. Price v. Doctors Pharmaceuticals. 2. Parke.1 aminoakylfuran derivative. Doctors Pharmaceuticals. 2. a medicine for gastro-enteritis. 1058. Beecham Research Laboratories. 3. Inc. compulsory licenses have granted for chloramphenicol. [1965] 14 SCRA 1053.213. INTERDEPENDENCE If the invention protected by a later patent cannot be worked without infringing a prior patent. 1058. Inc.5 1. 101 . Rachelle Laboratories (Phills.

V. Where the process for preparation of 6-amino penicillin acids is needed for the production of ampicillin. v. Knonkljke Nederlandsche Giat-en Spirutusfabriek N. Chemfields. 3. 217. Inc. Section 87. c) The use authorized in respect of the prior patent will not be assignable except with the assignment of the later patent. 218. PERIOD FOR FILING PETITION A petition for a compulsory license on the ground that the patented invention is not being worked in the Philippines on a commercial scale without 102 . Intellectual Property Code. EXCEPTION A compulsory license for semi-conductor technology may be granted only if it is not being devoted to public commercial use or it is needed to remedy a practice determined after judicial or administrative process to be anticompetitive. 216.1 1.1 1.b) The owner of the prior patent will be entitled to a cross-license on reasonable terms to use the invention claimed in the later patent. and d) The licensee tried to obtain authorization from the owner of the patent on reasonable commercial terms and conditions but failed to do so within a reasonable period of time. [1980] 1 CARA 729. the manufacturer of ampicillin may ask that it be granted a compulsory license. 735. B. Section 96.1 1. unless this requirement is not applicable. Intellectual Property Code.

Subsection 94.1. although capable of being worked. b) There is a national emergency or other circumstances of extreme urgency. TERMS AND CONDITIONS 103 . Subsection 95. Intellectual Property Code. Intellectual Property Code. REQUIREMENT OF REASONABLE EFFORTS A compulsory license may be granted only after the petitioner has exerted efforts to obtain a license from the owner of the patent on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. whichever period expires later.1 1. a) This requirement will not apply in the following cases: The petition for a compulsory license seeks to remedy a practice determined after judicial or administrative process to be anti-competitive.2. Intellectual Property Code. Subsection 95. 220.2. Intellectual Property Code. 219.1. A petition for a compulsory license on any other ground may be filed at any time. C. may not be filed within four years from the date of filing of the application for the patent or three years from the date of the patent. D.satisfactory reason.1 1. and c) The patented invention has not been devoted to public commercial use. 221.1 1.1 1. Subsection 94.

except when the grant of the license is based on the ground that the manner of the owner of the patent of exploiting the patent has been determined by judicial or administrative process to be anti-competitive. but adequate protection should be afforded to the legitimate interest of the licensee.1 104 . d) Use of the subject matter of the license will be devoted predominantly for the supply of the Philippine market.222. and f) The owner of the patent will be paid adequate remuneration taking into account the economic value of the grant or license. including the rate of royalty. b) c) The license will not be exclusive. the need to correct the anti-competitive practice may be taken into account in fixing the amount of remuneration. but in cases where the license was granted to remedy a practice which was determined after judicial or administrative process to be anti-competitive. The Director of Legal Affairs will fix the basic terms and conditions of a compulsory license. subject to the following conditions: a) The scope and duration of the license will be limited to the purpose for which it was authorized. The license will not be assignable. except with that part of the enterprise or business with which the invention is being exploited. e) The license may be terminated upon proper showing that the circumstances which led to its grant have ceased to exist and are unlikely to recur.

Parke. 8.1.1 1.1 1. 105 . Intellectual Property Code. 225. 9. Intellectual Property Code.1. INFRINGEMENT AND REMEDIES I. Inc. CONCEPT OF INFRINGEMENT The making. [1983] 124 SCRA 115. Intellectual Property Code. using. Subsection 76.1 1.1. offering for sale. Davis & Company v. Doctors Pharmaceuticals. Subsection 101. E. Section 54. 136. or c) The licensee has not complied with the prescribed terms of the license. Section 100.. or importing of a patented product or a product obtained directly or indirectly from a patented process. or the use of a patented process without the authorization of the owner of the patent constitutes infringement of a patent. 223. 118. The term of a patent is twenty years from the date of filing of the application. Price v. [1985] 166 SCRA 133. The license has not begun to supply the domestic market or made a serious preparation for it. CANCELLATION The Director of Legal Affairs may cancel a compulsory license in the following cases: a) b) The ground for its grant no longer exists and is unlikely to recur. selling. United Laboratories. DURATION OF PROTECTION 224. Inc. Intellectual Property Code.

1 Thus. and (b) the doctrine of equivalents. Court of Appeals. 4194. the use of a patented process for curving walking sticks and umbrella handles by exposing canes to the flames from a 106 . There are two tests to determine the existence of infringement of a patent: (a) literal infringement. 143. literal infringement exists. 227. an infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and. 228. 149. Creser Precision Systems. to determine whether there is exact identity of all material elements. 2. Thus. [1998] 286 SCRA 13. Yap-Jue [1906] 6 Phil. Court of Appeals. To determine whether the challenged matter falls within the literal meaning of the patent claim. performs substantially the same function in substantially the same way to achieve substantially the same result. imitating a patented process for curving walking sticks and umbrella handles by exposing canes to flames coming from a lamp or blowpipe fueled by oil is infringement of the patent. resort must be made to the words of the claim. 343. Inc. 1 In using literal infringement as a test. Godines v.226. 4198. despite some modification and change.G. v. the claims of the patent and the challenged matter should be compared within the overall context of the claims and specifications.1 1. If the challenged matter clearly falls within the claim. [1997] 286 SCRA 338. Mungcal [1990] 90 O. There can be no infringement of a patent if the application is still pending and the patent has not yet been granted.2 1. 21. Gsell v. According to the doctrine of equivalents. Castillo v.

Both can be used with more than one microphone. 230. 4194. Benito. Court of Appeals [1993] 226 SCRA 338. 716-718.G. Parke. 344. Yap-Jue [1909] 12 Phil. 4198. 53162-R. Infringement is not limited to the unauthorized manufacture of a If includes the importation. 526. Del Rosario v. 1981. 229.1 An improver of a patented invention is an infringes if he appropriates the basic invention of another without the consent of the owner of the patent. CA-G. 2. 712. Lukas Pharmaceuticals.lamp or blowpipe fueled by oil. Court of Appeals [1996] 255 SCRA 152. there is no infringement if it lacks the features. Godines v. 2. 165. 166. marketing and use of the patented invention. 107 . 3. Court of Appeals. by substituting alcohol for the oil is still infringement.3 1. No. On the other hand.. Davis & Company v. Inc.2 A later model of an audio equipment known as a sing-along system infringes the patent for a prior sing-along system if the later model uses the same modes of operation and produces the same result. Castillo v.R. Gsell v. Del Rosario v. Frank v. Both are equipped with two cassette tape decks so that one can be used to play back a song while the other is being used to record the voice of a singer. even if a device serves the same function as another device. patented invention without authorization of the patent owner. [1996] 255 SCRA 152. methods or arrangements of the other device.2 1. 519.1 1. September 23. Mungcal [1990] 90 O. [1928] 51 Phil.

PENDENCY OF PETITION FOR CANCELLATION OF PATENT A civil action for infringement of a patent may be filed despite the pendency of a petition in the Intellectual Property Office for cancellation of the patent. Section 77.R. PARTIES LIABLE 108 . Luchan v.1 1. 1976. SP No. CIVIL ACTION JURISDICTION 231. An action for infringement of patent falls within the jurisdiction of the regular courts rather than the Intellectual Property Office.) v. July 6.2. No. Subsection 76. Salas. A. CA-G.1 1. B. Intellectual Property Code. 808. Abbot Laboratories (Phils. Honrado. 232.R. v. D. Salvador [1989] 7 CARA 799. INSTITUTION BY FOREIGN NATIONAL A foreign national or juridical entity may bring a civil action for infringement of a patent. Intellectual Property Code.II. 04706-SP. AC-G. Inc. Amancor. C. whether or not it is licensed to do business in the Philippines. 1. 1985. 06049. October 10. 233. treaty or agreement relating to intellectual property rights to which the Philippines is also a party or which by law extends similar rights to Filipino citizens. if it is a national or is residing or has a real and effective establishment in a country which is a party to any convention.

235. However. or c) The patent is contrary to public order or morality.234.1 1. 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.6. Subsection 102. No damages can be recovered for acts of infringement committed more than four years before the filing of the civil actions for infringement. Intellectual Property Code. Subsection 76. OTHER DEFENSES In addition to other defenses.1 109 . Aside from the infringer. E. the defendant may show that the patent or any claim is not valid on any of the following grounds: a) b) What is claimed as the invention is not new or patentable. Section 225. Intellectual Property Code.1 1. a licensee is exempt from liability for infringement unless what he has is a voluntary license and he colluded with the licensor. 2. 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 is liable jointly and severally with the infringer as a contributory infringer. STATUTE OF LIMITATIONS 236.1 1. Intellectual Property Code. 237. DEFENSES 1.

Court of Appeals [1996] 255 SCRA 152. 239. AWARD OF DAMAGES 240 The owner of the patent or anyone possessing any right in the patented invention may recover from the infringer the damages he suffered because of the infringement. 712. Intellectual Property Code. [1919] 40 Phil. Benito [1928] 51 Phil. [1996] 95 O. 199. 116. CA-G. PRESUMPTIONS OF EVIDENCE It is presumed that a patent is valid. Frank v. 4198. 4194. F. 44731-R. 784. 76.G. Sections 61 and 81. Court of Appeals. F. 22.1 1. If the subject matter of a patent is a process for obtaining a product. November 18.2. Castillo v. Del Rosario v. 238. Quan. REMEDIES 1. as well as attorney’s fee and expenses of litigation. Vargas v. Ltd.1. Creser Precision Systems. 206. 7931. Court of Appeals [1997] 278 SCRA 688. 1972.G. Kosuyama [1933] 59 Phil. M. Joaquin v. 697. Manzano v. Lo Ho Men v. 110 . Nepomuceno. Vargas v. Yaptico & Company. any identical product shall be presumed to have been obtained through the use of the patented process if the product is new or there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable despite reasonable efforts. Intellectual Property Code. Inc. Frank v. 716. Maguan v. [1986] 146 SCRA 107. 195. 7933. Chua [1933] 57 Phil. v. G.R.1 1.1 1. 160. 790. Mungcal [1990] 90 O.. Court of Appeals [1998] 286 SCRA 17. Section 78. to determine the process actually used. 212. Intellectual Property Code.

Subsection 76. according to the circumstances of the case. Subsection 75.4. award damages in a sum above the amount found as actual damages suffered. 243. but the award should not exceed three times the amount of the actual damages.2. Del Rosario v. the court may award by way of damages a sum equivalent to a reasonable royalty. 244. Subsection 76. ISSUANCE OF INJUNCTION The owner of the patent or anyone possessing any right in the patented invention can secure an injunction for the protection of his rights.3. Intellectual Property Code.1 1.1 1. Intellectual Property Code. It is presumed that the infringer had known of the patent if on the patented product or on the container or package in which the article is supplied to the public or on the advertising material relating to the patented product or process. 2.1 1.241. 3. Damages cannot be recovered for infringement committed before the infringer had known or had reasonable grounds to know of the patent. the words ‘Philippine Patent’ with the number of the patent are placed.156. 242. If the damages are inadequate or cannot be readily ascertained with reasonable certainty. Section 80. Intellectual Property Code. Intellectual Property Code. Court of Appeals [1996] 255 SCRA 153.1 1. DESTRUCTION OF INFRINGING MATERIALS 111 . The court may.

10. in its discretion. 1.245. and 112 . shall be sentenced to suffer imprisonment for the period of not less than six months but not more than three years or to pay a fine of not less than 100. c) The patent is contrary to law and morality.000 pesos but not more than 300. III. The court may. Section 84.000 pesos or both imprisonment and payment of a fine at the discretion of the court. 1. without compensation. Any interested party may petition to cancel any patent or any claim or parts of a claim on any of the following grounds: a) b) What is claimed as the invention is not new or patentable. 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. Intellectual Property Code. materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed. order that the infringing goods. CRIMINAL PROSECUTION 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. upon conviction. the offender is criminally liable and. Subsection 76.5. Intellectual Property Code. The criminal action prescribes in three years from the date of the commission of the crime. 246. CANCELLATION OF PATENT 247.

d) The patent includes matters outside the scope of the disclosure contained in the application. Section 1. Section 61. 113 . Regulations on Inter Partes Proceedings.1 1. Intellectual Property Code. Rule 3.

1. Subsection 109. a utility model must be new and industrially applicable. Explanatory Note of House Bill 2758.1 1. Section 55. was amended by Republic Act 864 on 16 June 1953 by authorizing the issuance of patents for utility models.2 114 . configuration. a television antenna with novel variations from other antennas is a utility model. construction or composition. 249. 1. 1. THE PROTECTION OF UTILITY MODELS CONCEPT A utility model is a new model of implement or tools or of any industrial product or of part of it which does not possess the quality of invention but which is of practical utility by reason of its form. 250. because it is of practical utility. 251. I. II.1 Similarly. as amended by Republic Act 864. 2. which governed patents. 1 This has been retained in the Intellectual Property Code.CHAPTER 3. Republic Act 165.1 1. A wheelbarrow with a tray which could be tilted 170 degrees to the left or to the right to dump its contents by pulling a handle is a utility model. This was patterned after the law of Germany. CONDITIONS OF REGISTRATION To qualify for registration. UTILITY MODELS SOURCES – LEGISLATION Republic Act 165. 248. Section 1. Intellectual Property Code.

Samson v.R. 29. if identical folding doors were sold more than a year before the application for its registration. Chin v. 117. 28 October 1998. Vol. p. 022348-SP. FORMALITIES An application for a utility model will be registered without substantive examination.Rule 206. 2. 253. 131. III. Rules and Regulations on Utility Models and Industrial Design.1 Similarly.1 It will be examined merely as to the completeness of the formal requirements. On the other hand. Maguan v. No. Rules and Regulations on Utility Models and Industrial Design.Rule 205. Inc. 2.2 Substantive examination has been abolished because of the practical impossibility of determining whether a utility model is new or industrially applicable on account of the volume of applications. 1975.2 1. The following are the requirements for an application for registration of a utility model: a) Request for registration.1. CA-G. Hercules Metal Products. 2. No. De Leon. 115 . Record of the Senate. a powder puff for use in the cosmetics industry cannot be considered new if identical power puffs had been sold more than a year before the application for its registration. June 3.3 1. II. Court of Appeals [1986] 146 SCRA 107. Tarroza. v. 252. 254. [1969] 28 SCRA 792. a folding door which is like an accordion and which is used as a divider between the living room and the dining room cannot be considered new. 266. Ong Kim Sin [1972] 17 CAR (2s) 260. 3. 794.

Godines v. Court of Appeals.b) Description of the utility model. there is infringement.1 1. Rule 203 IV. 343-344. 257. INFRINGEMENT Where a challenged hand tiller is similar in form.3. DURATION OF PROTECTION A utility model registration shall expire at the end of the seventh year after the date of the filing of the application without any renewal. design. 255. and e) Payment of the filing fee. 1. [1993] 226 SCRA 338. c) Claim or claims. Rules and Regulations on Utility Models and Industrial Design. Intellectual Property Code. appearance and components to a registered tiller. VI. configuration. CANCELLATION OF REGISTRATION The registration of a utility model will be cancelled on any of the following grounds: a) The claimed invention does not qualify for registration as a utility model and is among the inventions which are not patentable.1 1. V. d) Drawings or pictorial representation disclosing completely the utility model. 116 . 256. Subsection 109. b) The description and the claims do not comply with the prescribed requirements.

and d) The owner of the registration of the utility model is not the inventor or his successor in title. 117 .4.1 1.c) No drawing which is necessary for the understanding of the invention was furnished. Intellectual Property Code. Subsection 109.

p. 260.1 On 7 December 1926. Viada. Tamparong [1915] 31 Phil.1 Article 292 of the Spanish Penal Code penalized the substitution of the trademark or trade name of the manufacturer of an article of commerce with the trademark or trade name of another manufacturer. Codigo Penal (5th ed. p. 65. 118 . 259. It defined the property rights in trademarks and trade names. which served as the new trademark law of the Philippines. It abandoned the registration system under the Spanish law of 1888 and required actual use as the basis for the acquisition of exclusive rights in trademarks and trade names. 1926. TRADEMARKS SOURCES-LEGISLATION 258. It also penalized unfair competition. Madrid Librerias Editorial Reus). 321. I. On 26 October 1888. the Philippine Commission enacted Act 666. The law based protection on registration. 2. 323.1 1. Tomo IV. Act 3332 amended Act 666 by requiring registration of a trademark or trade name as condition for the recovery of damages for its infringement. 17. Sapalo.CHAPTER 4. 1. S. Queen Regent Maria Cristina promulgated a trademark law for the Philippines. United States v. On 6 March 1903. The Spanish Penal Code of 1870 was extended to the Philippines by the Royal Decree promulgated by King Alfonso XII on 4 September 1884 and the Royal Order issued by Queen Regent Maria Cristina on 17 December 1886 directing the enforcement of the decree.2 1.

Griño-Aquino. corporation. Aquino and C. 263. p. Article 188 of the Revised Penal Code. Explanatory Note of House Bill 1157. Central Professional Books. On 16 June 1953. The Revised Penal Code. Act 666 was superseded on 20 June 1947 by Republic Act 166. Inc. penalized the substitution and alteration of trademarks and trade names.1. Sapalo. Article 520 of the Civil Code provides: ‘A trade-mark or trade-name duly registered in the proper government bureau or office is owned by and pertains to the person. or firm registering the same. Republic Act 853 amended Republic Act 166 further by requiring actual use in commerce in the Philippines for at least two years as a condition for the registration of a trademark or a trade name and by granting foreigners the privilege to register their trademarks and trade names if their country granted Filipino citizens the same privilege. I. 65. These provisions were taken from the Spanish Penal Code of 1870 and Act 666.1 On 11 June 1951. R. Republic Act 638 amended Republic Act 166 by requiring actual use of trademarks and trade names as a condition for their registration and protection. which was enacted by the Philippine Legislature and which took effect on 1 January 1932. 1.). III.’ 119 . 262. pp. 336-338. subject to the provisions of special laws. Quezon City. 261. Republic Act 166 was patterned after the United States Trademark Act of 1946. Article 189 of the Revised Penal Code punished unfair competition.1 1. (1997. Vol.

264. 2.1. because it is being used as a trademark in an arbitrary and fanciful manner. which means a musical composition with a slow and easy manner. II. 1996. 132.1. Subsection 169. Section 170 and Subsection 239.1. I. Sections 1555 and 168. including a stamped or marked container of goods. 69. the word ‘adagio’. It abolished prior use in commerce in the Philippines as a condition for the registration of trademarks and trade names. selecta. Record of the Senate.1 It repealed Articles 188 and 189 of the Revised Penal Code and incorporated them instead in the Intellectual Property Code. October 8. 266.1 1. 120 . The Intellectual Property Code supplanted Republic Act 166 on 6 June 1997. can be registered as a trademark.1 Thus. Intellectual Property Code. 29. the Spanish translation of the English word ‘selected’ can be adopted as a trademark for food products.2 Likewise. 265. as it is a fanciful word. p. Intellectual Property Code. the Philippines acceded to the Lisbon Act of the Paris Convention for the Protection of Industrial Property. SUBJECT MATTER OF PROTECTION SIGNS WHICH MAY OR MAY NOT SERVE AS TRADE MARKS Any visible sign capable of distinguishing the goods or services of an enterprise. Vol. may be used as a trademark for a certain type of brassieres. On 27 September 1965. No. 2.3 The word ‘cosmopolite’ may be adopted as a trademark for canned fish. 2 1.4 1. Subsection 121. Senate Resolution No.

or portrait of a deceased President of the Philippines during the lifetime of his widow except by written consent of the widow. They refer to closely related goods or services. Director of Patents [1953] 94 Phil. Selecta Biscuit Company. 138-139.A. S. Romero v. Masso Hermanos. [1961] 110 Phil.2. Inc. v. Arce Sons & Company v. [1964] 10 SCRA 556. or It nearly resembles such a trademark as to be likely to deceive or cause confusion. signature. deceptive or scandalous matter or a matter which may disparage or falsely suggest a connection with persons living or dead. or national symbols. 3. 558. a) However. or bring them into contempt or disrepute. c) It consists of a name. b) It consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions. institutions. 121 . Maiden Form Brassiere Company. or of any foreign nation. the following trademarks cannot be registered: It consists of an immoral. 136. d) It is identical with a registered trademark belonging to a different proprietor or a trademark with an earlier filing or priority date under any of the following circumstances: i) ii) iii) They refer to the same goods or services. or any simulation of them. portrait or signature identifying a particular living individual except by his written consent. 869. Inc. beliefs. 267. 858. or the name. 4.

account should be taken of the knowledge of the relevant sector of the public. 122 . as being already the trademark of someone other than the applicant for registration. In determining whether a mark is well-known. and the interests of the owner of the registered trademarks are likely to be damaged by such use. characteristics or geographical origin of the goods or services. rather than of the public at large. the use of the trademark in relation to those goods or services indicates a connection between those goods and services and the owner of the registered trademark.. quality.. including knowledge in the Philippines which has been obtained as a result of the promotion of the trademark. h) It consists exclusively of signs that are generic for the goods or services they seek to identify. particularly as to the nature.e) It is identical with or confusingly similar to or is a translation of a trademark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines. whether or not it is registered in the Philippines. g) It is likely to mislead the public. f) It is identical with or confusingly similar to or is a translation of a trademark considered well-known 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. and used for identical or similar goods or services.

Section 1.1 123 . whether in its full or abbreviated form. in everyday language or in bona fide and established trade practice. n) It is the emblem. or name of the United Nations. j) It consists exclusively of signs or of indications that may serve in trade to designate the kind. Subsection 123. A. quantity. intended purpose. geographical origin.1 1. a shipping company may name its vessels after them.i) It consists exclusively of signs or of indications that have became customary or usual to designate the goods or services. 268. Intellectual Property Code. unless defined by a given form. Names of Deceased President The prohibition in this provision covers only the names of deceased Presidents. Since it does not extend to the names of the deceased wives of former Presidents. Republic Act 226. official seal.1 1. time or production of the goods or rendering of the services or other characteristics of the goods or service. l) It consists of colour alone. value. k) It 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. quality.1. m) It is contrary to public order or morality.

Pagasa Industrial Corporation v.G. mimeographing paper. since it has been previously registered in the name of a foreign corporation as a trademark for zippers. Goods are closely related when they belong to the same class or have the same descriptive properties or when they possess the same physical attributes or essential characteristics with reference to their form. v. Court decisions have held the following goods are closely related and should not bear the same trademarks since they were produced by different manufacturers: Prior User Later User 124 . [1984] 131 SCRA 565. 2. 120900. 568. No. 269. Apple Computer. since there is a prior application for registration of it as a trademark for computer paper and stationeries. 270. Court of Appeals. [1990] 90 O. texture or quality.1 1. composition. 583. Identical or Confusingly Similar Trademarks The letters ‘YKK’ cannot be registered as a trademark for zippers.2 1. v. De la Rama Steamship Company v. Canon Kabushiki Kaisha v. Inc.1. National Development Company [1970] 35 SCRA 567. B. Esso Standard Eastern. Court of Appeals [1982] 116 SCRA 336. Uy. Court of Appeals. bond paper.1 The word ‘apple’ cannot be registered as a trademark for pad paper. Inc. 342. 713. July 20. 271. carbon paper and notebooks. 709. G. 2000.R.

Toribio [1942] 74 Phil. Procter & Gamble Philippine Manufacturing Corporation v. Ana v.K. CPC International. Maliwat [1968] 24 SCRA 1018. 272.G. Chua Che v. Ang v. 8215. 6. 2. [1987] 85 O. Gabriel-Almoradie v. chemical products. lipstick and nail polish iv) Haberdashery goods v) Beauty soap vi) Laundry soap vii) Zippers 1. Yoshida Kogyo K. International Textile Mills v. Heirs of Crisanta Y. 7. Philippines Patent Office [1965] 13 SCRA 67. 50. Later User i) Chemicals1 ii) Soy sauce2 iii) Cigarettes3 iv) Briefs4 v) Sandals5 125 . 4. [1990] 229 SCRA 115. 5. 1027. Lever Brothers Company [1941] 83 Phil. 446. i) Pants and shirts1 ii) Hair pomade2 iii) Health soap3 iv) Shoes4 v) Laundry soap5 vi) Laundry starch6 vii) Thread7 Ng Khee v.i) Shoes and slippers ii) Health soap iii) Perfume. 3. 72.. 32. 54. 947. Inc. On the other hand. court decisions have held that the following goods are not closely related and may bear the same trademarks: Prior User i) Medicines ii) Edible oil iii) Petroleum products iv) Toilet articles v) Paints. [1979] 24 CAR (2s) 440. Court of Appeals. Sta. 962. 8218.

they do not move through the same channels of commerce. June 29.G. 330. In determining whether goods are closely related. 273. January 25. 1979. Bally Shuhfabricken A. the purposes they serve and the channels of commerce through which they are sold should also be considered.toner and dyestuffs vi) Shoes vii) Motor vehicles vi) Socks6 vii) Shoes. sandals.2 It is usually served on special occasions. G. Inc. 3792. Mil-Oro Manufacturing Corporation.R. 120900. Ltd. Court of Appeals. v. v. 49145. Ham is not a daily food fare for the average household. Intermediate Appellate Court [1992] 215 SCRA 316.1 Thus.G. July 20. Aktiebolaget Volvo v. 3. Esso Standard Eastern. Sapalo [1994] 94 O. 6. v. 342. Acoje Mining Company. 1226. 7.R. 126 . 482. 4. No. Farbenfabriken Bayer Aktiengesellschaft. could be used as a trademark for ham although it was being used by another manufacturer as a trademark for cooking oil. Although cooking oil and ham both fall under the classification of foods and food ingredients. Court of Appeals. the name of a flower. 3794. v.R. CA-G. Sterling Products International. SP No. G. Court of Appeals [1982] 116 SCRA 336. 10265. 5. v. Canon Kobushiki Kaisha v. Faberge. [1968] 27 SCRA 1214. it was held that the word camia. No. Cooking oil is a daily household item which is usually purchased by domestic helpers from retail establishments. v. Inc. Director of Patents [1971] 38 SCRA 480. 2000. Shell Company of the Philippines. 2. Inc. 1988. and slippers7 1. Inc.

Inc. There are two types of confusion. 1227. Delco Wire & Cable [1969] 27 SCRA 1214. it is sufficient if one is a colourable imitation of the other. 342. 120900. confusion of goods and confusion of origin. v. the ordinarily prudent purchaser is induced to purchase one product in the belief that he is purchasing the other product.R. 447. content. Inc. 2000. Inc. words. and to cause to purchase the one supposing it to be the other. Court of Appeals [1982] 916 SCRA 336. In determining if two trademarks are confusingly similar.2 Colourable imitation does not mean identity. special arrangement. Canon Kabushiki Kaisha v. 478. v. July 20. Corporation. Philippine Refining Company. 275. or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. or general appearance of the trademark with that of another trademark in their overall presentation or in their essential. 274. Sterling Products International. Inc. 2. SP-04860-R. In confusion of origin. It means such similarity in form. Ng Sam [1982] 115 SCRA 472. substantive and distinctive parts as would 127 .. 1976. No. In confusion of goods. CA-G. Farbenfabriken Bayer Aktiengesellschaft General Motors Corporation v.1 1.1. sound.R. v. No. Court of Appeals. but the challenged product might reasonably be assumed to originate from another manufacturer and the public would then be deceived to believe that there is some connection between the manufacturers of the two products. meaning. G. the goods are different. Esso Standard Eastern. It does not require that all the details be copied literally. October 29. 1 Colourable imitation means such a close or ingenious imitation as to be calculated to deceive ordinary persons. CPC International. [1979] 24 CAR (2s) 440. Procter & Gamble Philippine Manufacturing Corporation v.

v. Philippine courts have alternatively applied two tests. 716. The holistic test does not focus only on the predominant words but considers also the other features appearing in the labels. 614 276. 2001. Manila Candy Company [1917] 36 Phil. S. Inc. because the ordinary purchase is not inclined to notice their specific features. G. 2. 709. No.1 Under the dominancy test. 4 April 4. In determining whether or not a colourable imitation exists. Court of Appeals. Dargani [1972] 17 CAR (2s) 1133.3 1. 3. A. Fruit of the Loom. The trademarks in their entirety as they appear in their respective labels are considered in relation to the goods to which they are attached. infringement takes place. v. Director of Patents.3 However. a comparison of the words is not the only determining factor. the holistic test should not be applied to competing products which are common and inexpensive household products. 2 On the other hand.4 128 . 100. Clark v. 112012. similarities or dissimilarities. Societe des Produits Nestle. 1135. v.A.likely mislead or confuse the purchaser in the ordinary course of purchasing the genuine article.G.R. Emerald Garment Manufacturing Corporation v. Etepha. Court of Appeals [1995] 251 SCRA 600. under the holistic test. Duplication or imitation is not necessary. Balmaceda [1939] 67 Phil. [1966] 16 SCRA 495. if the competing trademark contains the main or essential or dominant features of another trademark by reason of which confusion and deception are likely to result. Sapolin Company. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks. 497-498. 113. the dominancy test and the holistic test. v. Inc. in determining whether or not two trademarks are confusingly similar.

2001. 2001. 1977. 139300. Inc.SP 02806-R. 2001. Lim Hoa v. v.G. No. 615. 199.. Remington Industrial Sales Corporation.1. v. v. 19187-R. 112012. 4791. Court of Appeals. Emerald Garment Manufacturing Corporation v. Director of Patents [1955] 100 Phil. Director of Patents [1970] 31 SCRA 544. Directors of Patents [1971] 38 SCRA 480. 771. SP-03385-R. Company. 4. Inc. Ovete. Prabody & Company v. Court of Appeals [1984] 133 SCRA 405. Court of Appeals [1995] 251 SCRA 600. 534. 4793.G. American Wire & Cable Company v. 278.R. Inc. Cluett Peabody. 456. Yebana Company v. May 31. 2. 2001. Francisco Chua Seco & Company [1909] 14 Phil. March 14. Emerald Garment Manufacturing Corporation v. Primunal v. Sehwani. Inc.R. Inc. CA G.G. 6702. v. CA. 1975. J. 1973. September 25. Court of Appeals. 410. S. Yu Hun & Company v. Director of Patents [1966] 17 SCRA 128. Amigo Manufacturing Inc.. Societe des Produits Nestle. April 4.R. N. Jonas Brooks Brothers v. 1969. 224. Insular Yebana Tobacco Corporation. Operators. Inc. January 26. No. v. CFC Corporation [1996] 93 O. Co Tiong Sa v. 615. 214. No. Findlay Fleming & Company v. v. 234. 585. Court of Appeals [1995] 251 SCRA 600. S. Director of Patents [1965] 15 SCRA 147. Villafania [1966] 9 CAR (2s) 42. CA-G. Court of Appeals [1990] 181 SCRA 410. Mead Ynchausti & Company v. Societe des Produits Neslte. Bristol Myers Company v. 214. No..G. Silver Swan Manufacturing Company. Ong Tan Chuan [1914] 26 Phil. 1975. Song Fo & Company [1912] 21 Phil. 5732. Inc. March 30. 43417-R. October 21. No. 13802. 227.G.R. [1968] 65 O.A. Edward J. Director of Patents [1954] 95 Phil. 45. 196. CA-G. v. Palting [1955] 51 O. CA-G. February 9.G. Jocson & Sons. Nell Company v. Societes des Produits Nestle. Alhambra Cigar & Cigarette Manufacturing Company v. Del Monte Corporation v. 6700. 580. Van Dorp. SP-01616-R. Emerald Garment Manufacturing Corporation v.R. 1. Societe des Produits Neslte. Johnson & Company v. Amigo Manufacturing. Froelich & Kuttner [1907] 8 Phil. Acoje Mining Company. No. v. 446. G. 5730. Court of Appeals [1993] 224 SCRA 437. Director of Patents [1970] 67 O. 139300. Alimentaires v. [1963] 7 SCRA 768. E. CA .R. Court of Appeals. April 4. Farbenfabriken Bayer Aktiengesellschaft v. 13807. Lorenzana v. SP-06298-R. 539. Eli Lilly & Company v. Neus Hesslein Corporation [1930] 54 Phil. American Cyanamid Company. Inc. 415. 482. S. 3. 216217. No. No. Cluett Peabody. Fruit of the Loom. S. Spinner & Company v. March 14.R. G. Felix Paglinawan & Company [1916] 33 Phil. Tanduay Distillery. 1977.V. April 4. Asia Brewery.A. Inc. 282-283. 129 . v.R. Consolidated Mills. Ltd. 131.R. G. 2001. v.A. v. Court of Appeals [1995] 251 SCRA 600. 615. Cheng U v. No. Rueda Hermanos & Company v. 150.A.

Director of Patents [1966] 16 SCRA 495. Cheng Ban Yek & Company [1975] 20 CAR (2s) 510. 1969. v. 1154. 348. Jordache Enterprises.. Roche International.R. v. 515. wrapper or container. Philippine Nut Industry.G. it is not likely that the purchasers will be confused. S. 278.R. 1976. some factors such as sound. October 28. the character of the purchaser. February 5. Societe des Produits Neslte. v.. 277. Court of Appeals.1 Other factors which may also be considered are the class of products. v. 1977.United Drug Company. SP-03975. Inc.R. nature of the package. CA-G. Bristol Myers Company v. Inc. 1719. Emerald Garment Manufacturing Corporation v. and the setting in which the words appear may be considered. v. Inc. Director of Patents [1974] 19 CAR (2s) 1147. [1995] 251 SCRA 600. No. v. Inc. 1969. A. Etepha. If the differences between two trademarks outweigh their similarities and the differences are distinctive. Director of Patents [1974] 19 CAR (2s) 1147. spelling and pronunciation of the words used. 7510. Ltd. Doctors Pharmaceuticals. [1975] 65 SCRA 575. the quality of the products. Eli Lilly & Company v. [1975] 73 O. 2001.R. v. No. 614. CA-G. Palmolive Company v. 4. designs and emblems used. 32079-R. 1717. colour. No. 131. Jordache Enterprises. CA-G. Medichem Pharmaceuticals. Inc. 582. Procter & Gamble Philippine Manufacturing Corporation v. February 5. size or format. Inc.. Industrial Pharmaceuticals. No. Doctors Colgate Pharmaceuticals.1 130 . Inc. Inc. 7508. appearance. Ltd. 33079-R. Cheng Ban Yek & Company. 56241-R. Standard Brands. form. Chua Lian Kiat [1996] 96 O. quantity. v. April 4.G. Court of Appeals. In approaching the problem of similarity of two trademarks as a whole.A. Davila [1989] 6 CARA 341. v. July 28.2 1. Inc. Sanrio Company. Director of Patents [1966] 17 SCRA 128. the meaning. 479. United Drug Company. Inc. style. CA-G. ideas connoted by the trademarks. Roche International.G. 348. 2. 1153. shape. Davila [1989] 6 CARA 341. Ltd. and location of the business. v.

R. Qui [1982] 59 O. Societe des Produits Nestle. Lorenzana v. 272. Alhambra Cigar & Cigarette Company v.G. Villafania [1968] 9 CAR (2s) 42. Del Monte Corporation v. Director of Patents [1960] 108 Phil.A. 53722.. [1937] 2 ACR 590. 2. 275. Inc. 49. 1999. 112012. 13867.C. Procter & Gamble Philippine Manufacturing Corporation v. v. Court of Appeals. 1976. 1097. 163. Cheng Ban Yek & Company. Inc. Etepha. 329. Court of Appeals [1990] 181 SCRA 410. American Sweets. New La Flor de la Isabela. April 4. November 26. 272. 1135. Acoje Mining Company.R. v. [1997] 147 SCRA 154. Marvex Commercial & Manufacturing Corporation. v. v. A. Fruit of the Loom. Cheng U v. Tan Chai v. Inc. G. American Wire & Cable Company v. Chiong [1965] 7 CAR (2s) 325. Director of Patents. Forbes Munn & Company v.2 1. American Sweets. v. 772. No. CA-G. N. 576. Inc. [1963] 7 SCRA 768. Ltd. Inc. April 30.. MacDonald’s Corporation v. 1977. Inc. 131 . 55276-R. May 3.R.G. v. [1937] 2 ACR 592. Dargani [1972] 17 CAR (2s) 1133. Jocson & Sons [1968] 65 O. CV No. it is not necessary that the challenged trademark actually cause confusion or deception of the purchasers. 599.V.R. 547. Continental Manufacturing Corporation v. Westmont Manufacturing. v. 836. CA-G. The purchaser does not usually make such scrutiny. 1093. Inc. 1977. No. Universal Rubber Products. 13862. Alhambra Industries. Inc. O’Racca Confectionery Company. Van Dorp. Director of Patents [1966] 16 SCRA 495. [1984] 133 SCRA 405. v. Fruit of the Loom. [1971] 38 SCRA 480. 44268-R.J. 482. Inc. S. Chuanchow Soy & Canning Company v..G. L. Inc.R. Inc. Inc. He often just relies on his recollection of the product he intends to purchase. 279. 2001. Director of Patents [1970] 31 SCRA 574. Mojica [1914] 27 Phil. Inc.1. American Cyanamid Company v. No. Court of Appeals [1977] 76 SCRA 568. Big Mak Burger. O’Racca Confectionery Company. 917. It is sufficient that the use will likely cause confusion or mistake on the part of the purchaser. 411. October 28. No. 266. 499. CA-G. v.1 Neither is it necessary that the two competing products be placed alongside each other and compared by viewing them together. Ang San To [1919] 40 Phil. For a challenged trademark to be considered confusingly similar to another. CAG. 599. Court of Appeals. Mead Johnson & Company v. Converse Rubber Corporation v. 833. 56241-R.

H. 112012. Converse Rubber Corporation v. should also be considered. G. 198.S. 6702. F. Court of Appeals [1990] 181 SCRA 410. United States v. 163. 232-233. 4. 132 .G. 229.R. Mojica [1914] 27 Phil. 146. Del Monte Corporation v. v. Alhambra Cigar & Cigarette Company v. 157. The standard for determining whether or not deception of the purchasing public is likely is the average person exercising the care that is ordinary under the circumstances to whom the product is sold in the normally prevailing conditions of trade. v. & J. Director of Patents [1970] 67 O. [1955] 97 Phil.3 The class of the ordinary purchaser of the product. 278. training and education of the average buyer. Neuss Hesslein Corporation [1930] 54 Phil. 2001. 221. 166. the age. S.A. 2. [1980] 97 SCRA 158. children. 266.. Heacock Company [1932] 285 U. Felix Paglinawan & Company [1916] 33 Phil.e. In this regard. April 4. the immediacy of the consumption of the article. Inc.280. Court of Appeals. E. 272. the nature and cost of the product. 225. v.419. Converse Rubber Corporation v. i. the standard is not a purchaser who has special knowledge which is not possessed by the ordinary purchaser of the product and who can avoid any mistake by the use of his special knowledge. [1987] 147 SCRA 154. 247. domestic helpers. Ltd. and the conditions under which the product is usually purchased should be considered. Tiu Ca Siong [1909] 13 Phil. Ang. Societe des Produits Nestle. R. 1. 143. No. 169. 255. 418. Inc. Alexander & Company. Universal Rubber Products.1 Thus. and skilled persons. Song Fo & Company [1915] 21 Phil. 6700. Rueda Hermanos & Company v. 3. Manuel [1906] 7 Phil. 196. Jacinto Rubber & Plastics Company. Tanduay Distillery. Inc. 285. American Trading Company v. Inchausti & Company v. Song Fo & Company v. Spinner & Company v.

catsup.1 1. 282. the likelihood of deception is remote. Nell Company v. 190. 2. 3 candies.R. because they are usually purchased only after a thorough. and loggers who acquire wire rope. 283. air-conditioning units. Court of Appeals. Emerald Garment Manufactures Corporation v. 454. 7034-R. The test of confusing similarity is the likelihood of the deception of the ordinary purchaser who has some measure of acquaintance with the trademarks of the product he wishes to purchase. The likelihood of confusion among the purchasing public is great when the goods with similar trademarks are low-priced commodities which are consumed every day.2 salted peanuts. v. January 15. the likelihood of deception is remote in the case of valuable and expensive articles like radios. On the other hand. [1993] 224 SCRA 432. 197. v. television sets. Tan Tiao Bok [1921] 42 Phil. comparative and analytical investigation. CA-G.281. Examples of these are food seasoning. Kerr & Company. Ltd. Court of Appeals. This is true in the case of drinkers who order beer. it cannot be said that he was deceived. If he knows nothing about the trademark which was imitated. 3.1 shoppers who buy blue jeans. Asia Brewery. No.5 coffee6 and chocolate bars7.4 soap. 8 133 . [1995] 251 SCRA 600.4 1. Edward J.R. If the ordinary purchaser is especially familiar with the product he is buying. and watches. CA-G. No. Remington Industrial Sales Corporation.2 sewers who purchase threads3.1 soy sauce. December 20. 4. Go Gee. Dy Buncio v. 1951. 1976. 43417-R. 617. Inc. deliberate. since they are purchased without great care.

Court of Appeals. 5735. [1975] 65 SCRA 575. No. 285. Director of Patents [1974] 19 CAR (2S) 1147. 5. 419. On the basis of the dominancy test.. Eli Lilly & Company v. 217.G. v. v. 33079R. 284. Del Monte Corporation v. 616. CFC Corporation [1996] 93 O. Ltd. Palting [1955] 51 O.R. The danger of confusion is remote in the case of medicines which are dispensed only upon prescription or sold with the intervention of a pharmacist. 4791.. V. Emerald Garment Manufacturing Corporation v. 3. S. Doctors Pharmaceuticals. 1719. Yu Hun & Company v. 217. CA-G. S. Roche International. 112012. 7. Philippine Nut Industry.A.1 1. April 4. Court of Appeals [1990] 181 SCRA 410. Lim Hoa v. 501-502. 584. July 28. Medichem Pharmaceuticals. February 5. 2001. 1969.R. Societe des Produits Nestle. v. 215. Societe des Produits Nestle. Inc. International Pharmaceuticals.G. 6. Del Monte Corporation v. Inc. v.. 4794. United Drug Company. SP No.R. Bristol Myers Companv. Director of Patents [1956] 100 Phil. 5730. Court of Appeals [1995] 251 SCRA 600. 833. the following trademarks have been held to be confusingly similar: Prior Trademark Later Trademark Product or Service 134 . Inc. Director of Patents [1956] 100 Phil. 13975. 1717. 215. A. Inc. Ltd. v. 1156. 8. 419. G.. Inc. Roche International. Director of Patents [1960] 108 Phil. Director of Patents [1966] 16 SCRA 495. 2.G. 132. Inc. Chuanchow Soy & Canning Company v. 1976. Standard Brands. Director of Patents [1966] 17 SCRA 128. 4. Lim Hoa v. No.G.1. CA-G. [1975] 73 O. Court of Appeals [1995] 181 SCRA 410. 836.A. Etepha. v.

i) Ginebra de la Campana i) Ginebra de Dos Campanas and Ginebra Tres Campanas i) Gin1 ii) Illustration of a rooster in a fighting stance iii) Illustration of three British soldiers with two kneeling and one standing iv) Palatol ii) Illustration of two roosters in a fighting stance iii) Illustration of five British soldiers with three kneeling and two standing iv) Pai Li To ii) Candy2 iii) Khaki cloth3 iv) Pharmaceutical product4 v) Sapolin vi) Freeman vii) Illustration of a hen v) Lusolin vi) Freedom vii) Illustration of two roosters v) Paint5 vi) Shirts6 vii) Food seasoning7 viii) Illustration of a carp viii) Illustration of a milkfish viii) Native sauce8 ix) Big 5 x) Nabisco xi) Salonpas ix) Big 3 x) Ambisco xi) Lionpas ix) Vegetable lard9 x) Bakery products10 xi) Medicated plaster11 xii) Flormann xii) Flormen xii) Shoes12 135 .

FAB xxiv) Dipterex 136 . dressed in white. and holding a steaming cup xxi) xxii) Lorenzana Fruit of the Loom xxi) Loring xxii) Beauty in the Bloom xxiii) FAS xxiv) Diphenex xxi) Native sauce21 xxii) Lingerie22 xxiii) Detergent23 xxiv) Agricultural chemical xx) Tea20 xxiii).xiii) Duraflex xiv) Race xv) Planters Cocktail Peanuts xiii) Dynaflex xiv) Sun Rays xv) Philippine Planters Cordial Peanuts xiii) Electrical wires13 xiv) Undershirts14 xv) Salted peanuts15 xvi) Gold Toe xvii) Master Roast and Master Blend xviii) Alexander xix) Vino Anti-Kabuki xvi) Gold Top xvii) Flavor Master xvi) Socks16 xvii) Coffee17 xviii) Advancer xix) Anti-Kabuki xviii) Thread18 xix) Medicine for stomach ailment19 xx) Illustration of black cat walking upright. dressed in white. and holding a steaming cup xx) Illustration of black dog walking upright.

products24 xxv) Hotel Esperanza 1. 217. Ana v.R. Maliwat [1968] 24 SCRA 1018. No. 1951.R. 11.. v. Davis & Company v. 10. 17. Recaro v. 13. Inc. Kiu Foo & Company. 928. Petra Hawpia & Company [1966] 18 SCRA 1178.R. Ubeda v. 276. 112012. Sta. Marvex Commercial Company. 18-19. Societe des Produits Nestle. No. Inc. Operators. 5. CA-G. Ltd.A. 836. 139300. 2001. Director of Patents [1965] 15 SCRA 147. Director of Patents [1970] 34 SCRA 570. 572. Director of Patents [1954] 95 Phil. 14. April 4. 7. Embisan [1961] 2 SCRA 544. Court of Appeals. Zialcita. [1934] 60 Phil. 1027. Co Tiong Sa v. 15. 12. 6. Clarke v. Inc. Cluett Peabody Company. Balmaceda [1939] 67 Phil. Forbes. Director of Patents [1970] 31 SCRA 544. 1. Ang San To [1919] 40 Phil. 137 . 551. v.S. 16. Zialcita [1909] 13 Phil.. Philippine Nut Industry. 932. 580. Parke. 2. 2001. 5603-R. Lim Hoa v. v. Inc. S. 551. [1975] 65 SCRA 575. 4. v. Inc. 149. 833. 272. 453. Murin & Company v. 11. May 10. Standard Brands. Kee Boc v. v. Inc. Cong Kong. Inc. 452. Sapolin. 100. Chuanchow Soy & Canning Company v. 716. 215. 3. 115. Ltd. v. 7. 8. 705. xxv) Hotel Esperana xxv) Hotel 25 Ubeda v. Kerr & Company. G. American Wire & Cable Company v. [1913] 226 U. v. 18. Manila Candy Company [1917] 36 Phil. Director of Patents [1960] 108 Phil. Director of Patents [1956] 100 Phil. March 14. G. No. 1183. Amigo Manufacturing. 9.

13862. Dargani [1972] 17 CAR (2s) 1133.G. 21. 517. Lorenzana v. Ltd. 13866. Villafania [1966] 9 CAR (2s) 42. Tan Chai v.19. Inc. 6879. 1335. v. Nikon Nohyaku Company. 7358. v.G. 6881. the following trademarks were held to be Prior Trademark i) Victorias ii) Alexander iii) Coconut iv) Green Dragon Later Trademark i) Valentino ii) Aloha iii) Co Co Co iv) Double Peacock Product i) Refined sugar1 ii) Thread2 iii) Thread3 iv) Canned salmon4 v) Lipton vi) Campbell’s vii) Transpulmin viii) Jordache ix) Dacron and Lycro x) Pediamox v) Calton vi) Capitol’s vii) Pulmin viii) Rawhide ix) Licron v) Tea5 vi) Soup6 vii) Cough syrup7 viii) Jeans8 ix) Textile fibers9 x) Diamox x) Medicines10 138 . Cheng Ban Yek & Company [1975] 20 CAR (2s) 24. 23. Bayer Aktiengesellschaft v.G. 25. Fruit of the Loom. Chiong [1965] 7 CAR (2s) 325. Cheng U v. 7362. 330. Po [1994] 94 O. dissimilar: On the other hand. 510. [1988] 87 O. Inc. Colgate Palmolive Company v. 20. 22. Rize Holdings. 49. Jocson & Son [1968] 65 O. 286.

Ltd.G. 9494. various trademarks have been adjudged dissimilar. August 6.R. Thus. Inc. No. v. CA-G. Doctors Pharmaceuticals. 1951. 9496- 287. On the basis of the holistic test. 1155. Alaska Packers Association v. Inc. 665. Kerr & Company.R. stone cylindrical bottle. People v. E. there was no confusing similarity between the two because the imported gin came in a long. No.R. 1095. CA-G. Kaw Ching Tiah. 10. 7034-R. 288. Inc. Pediatrica. 671.G. 1093. 6. December 20. although the label of an imported gin and the label of a local gin were almost similar. 4. June 26. 352. The trademark ‘Fruit of Eve’ was considered different from the trademark ‘Fruit of the Loom’ although they both dealt with lingerie because of numerous striking dissimilarites. Tiu Ca Siong [1909] 13 Phil. Qui [1962] 59 O. v. The label of ‘Fruit of the Loom’ was circular and 139 . 37534-R. No. 8. 1969. Ltd.1. v. Ong Siu [1977] 79 SCRA 207. CA-G. 1971. 2.R. v. No. Inc. 7. 35359-R. October 23. 3. 1969. Director of Patents [1974] 19 CAR (7s) 1147. Continental Manufacturing Corporation v. Lipton. Davila [1989] 6 CARA 341. Victorias Milling Company. Jordache Enterprises. 1 1. 9497. [1987] 96 O. 143.I Du Pont de Nemours & Company v. 151. 216. CA-G. 66405-Cr. Song Fo & Company v. v. 5. American Cyanamid Company v. Shu. Chua Be Sing. while the local gin came in a black quadrangular bottle and was smaller at the bottom than at the top. Lakeview Industrial Corporation [1989] 7 CAR (2s). 9. Go Gee.

Pedro Domecq. November 28. ‘Carlos II’. 1 1. while ‘Big Mak hamburger sandwiches are sold from parked snack vans to the low-income group at a much lower price. Fruit of the Loom. The trademark of ‘Fruit of Eve’ was written in a straight line. the trademark ‘Big Mak’ has been adjudged different from ‘Big Mac’ although they both dealt with hamburger sandwiches.1999. 411. ‘Carlos III’. the following factors or a combination of them may be considered: 140 . Inc. v..C. 03446.1 1. SP No. S. 10. while the trademark of ‘Fruit of the Loom’ showed an apple surrounded by a cluster of grapes.R. ‘Carlos IV’ and ‘Carlos V’ for Spanish brandy. The trademark ‘Don Carlos’ for local gin was considered different from the trademarks ‘Carlos I’. CA-G. Court of Appeals [1984] 133 SCRA 405. v. 289. Well-Known Trademarks In determining whether a trademark is well-known. C. McDonald’s Corporation v.had a base. 53722. Big Mak Burger. The trademark of ‘Fruit of Eve’ had an apple only. Likewise. 1985. Inc. AC-G. The buyers of local gin are ordinary wine lovers who buy it from retail stores at a much lower price.A. No. Destileria Limtuaco. while the trademark of ‘Fruit of the Loom’ was written in a semi-circle. 291. while the label of ‘Fruit of Eve’ was rectangular. Inc. April 290.1 1. L. The colours of the labels were different.. The purchasers of brandy are discriminating customers who order the brandy in exclusive restaurants and wine stores.R. The ‘Big Mac’ hamburger sandwiches are sold in plushy restaurants.

the extent to which the trademark has been registered in the world. Service Marks. the exclusivity of use attained by the trademark in the world. iv) v) vi) vii) viii) ix) x) xi) the quality-image or reputation acquired by the trademark. the commercial value attributed to the trademark in the world. the record of successful protection of the rights in the trademark. of the goods or services to which the trademark applies. Rule 102. iii) the degree of the inherent or acquired distinction of the trademark. 141 . extent and geographical area of any promotion of the trademark. the outcome of litigations dealing with the issue of whether the trademark is a well-known trademark. Trade Names and Marked or Stamped Containers. at fairs or exhibitions. the extent to which the trademark has been used in the world. extent and geographical area of any use of the trademark. ii) the market share. the exclusivity of registration attained by the trademark in the world. and xii) the presence or absence of identical or similar trademarks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his trademark is a wellknown trademark. of the goods or services to which the trademark applies. including advertising or publicity and the presentation. in the Philippines and in other countries. Rules and Regulation on Trademarks. the duration.i) the duration.1 1. in particular.

v. Gucci. Sadhwani. the name of a fragrant flower. AC-G. cannot be used as a trademark for cosmetic products if no extracts of it are being used in their preparation. 1 Since the trademark ‘Lacoste and Crocodile Device’ is owned by La Chemise Lacoste. Pierre Cardin. S. verbena. 550.2 The trademark ‘Nipa House’ for flour is confusingly similar to the trademark Casa Nipa also for flour. the name of a flower. Lanvin and Ted Lapidus. 3 1. De Castro [1941] 40 O. 294. Ralph Lauren. 1983.292. the word ‘Barbizon’.. 293. v. 1498. Deceptive Trademarks Thus. Givenchy. Thus. 2. Sasson. which is a well-known trademark for lingerie.P No. D.G. Wise & Company.R.A.1 Similarly. Calvin Klein. S. cannot be used as a trademark for toilet water when it had nothing to do with the toilet water. In a Memorandum to the Director of the Patents Office issued on 20 November 1980.3 142 . S. the Minister of Trade and Industry directed the Director of the Patents Office to reject all applications for registration of internationally known trademarks such as Lacoste. 1474.2 The word ‘nylon’ cannot be used as part of the trademark of shirts which are not made of nylon. since the former is just the English translation of the latter. Jordache. Fila. Vanderbilt.A. La Chemise Lacoste. Oscar de la Renta. Mirpuri v. 113356. cannot be registered as a trademark for lingerie by somebody else. Inc. 3. June 17. Court of Appeals [1999] 318 SCRA 516. Geoffrey Beene. Christian Dior. it cannot be registered by somebody else. kananga. because the trademark would be deceptive.

Director of the Philippines Patent Office [1955] 96 Phil. the Latin word for cough. 678. East Pacific Merchandising Corporation v. S. Court of Appeals. Societe des Produits Nestle. 2. 143 . 112012. No brewery can have a monopoly over it. Director of Patents [1960] 110 Phil 3. G. comprise the genus of which the particular product is a species. 295. 673. are commonly used as the name or description of a kind of goods.6 The phrase ‘pale pilsen’ is generic. 443.R. 451. is merely generic when used as part of the trademark of a medicine for cough.7 1. ‘leather shoes’. 2001. 165. Generic Terms Generic terms are those which constitute the common descriptive name of an article or substance. Baxter v. Del Rosario v. 160. Since the suffix ‘tussin’. 245.1. the words ‘funeral parlor’ 2. it may be used by any manufacturer of medicated plaster. Quioque [1910] 15 Phil. imply reference to every member of a genus and the exclusion of individuating characters. 347. Ong Ai Gui v. E. Zuazua [1905] 5 Phil. For instance. 2. since pas means plaster. or refer to the basic nature of wares or services provided rather than to the more idiosyncratic characteristics of a particular product. v. April 4. It refers to a light Bohemian beer with a strong hops flavor which originated in the City of Pilsen in Czechoslovakia. No.5 Likewise.A.1 The denomination generally used in commerce for designating a class of goods or services cannot be appropriated exclusively as a trademark by a business enterprise.3 and ‘bubble gum’4 are generic. which is derived from tussis. the manufacturer of a cough syrup cannot have a monopoly over it.

Petra Hawpia & Company [1966] 18 SCRA 1178. No. 6. CA-G. Inc. 215. qualities or characteristics of the goods. Inc. G. Procter & Gamble Philippine Manufacturing Corporation v. 601. or conveys an immediate idea of the ingredients. [1937] 2 ACR. qualities or ingredients of a product to one who has never seen it and does not know what it is. 297. Director of Patents [1966] 16 SCRA 495. Inc. 498. 2. Masso Hermanos. A. The word chorritos refers to a special kind of cigarettes the They cannot be tobacco of which is rolled in sweetened black paper.3. v. 592. v. Marvex Commercial Company.. Ong Siu [1977] 79 SCRA 207.R. Inc. American Sweets. 136. 2 The word 144 . Inc. Descriptive Terms A descriptive term conveys the characteristics. O’Racca Confectionery Company. 56241-R. 1977. functions. v. Asia Brewery. appropriated exclusively by a manufacturer of cigars and cigarettes. 448. Geometrical Shapes Geometrical shapes like a diamond1 or a pair of concentric circles2 may not be appropriated exclusively as a trademark: 1. 1183. Etepha. Cheng Ban Yek & Company. 5. 139. S. 4. or denotes what goods or services provided in such a way that the consumer does not have to exercise powers of perception or imagination. October 28. v. F. Inc. v. 1 The words corona. especiales and perfectos are commonly used by local cigar manufacturers to designate the different shapes or forms of cigars they manufacture. 296.G. Victorias Milling Company. 7. Court of Appeals [1993] 224 SCRA 437.A. Director of Patents [1953] 94 Phil. v.

Director of the Philippine Patent Office [1955] 96 Phil.6 The word ‘Super-Bee’ as a trademark for a vial containing vitamin B is merely descriptive of the product to which it is applied. 485. Alhambra Cigar & Cigarette Manufacturing Company [19331] 56 Phil. Alhambra Cigar & Cigarette Manufacturing Company [1916] 33 Phil. Inc. Palting [1955] 51 O. 106. Ex Parte Eagle Pencil.G. 676.1958. 3.7 1. 495-496. no cigarette which grows tobacco. 108.R. Compañia General de Tabacos de Filipinas v. 5733.‘nylon’ when used to refer to shirts is merely descriptive. v. It is merely descriptive because it refers to the tip of the ball pen. 6.5 The word ‘aquatogs’ is likewise merely descriptive of raincoats. Method of Packaging 145 . [1949] 45 O. 1 1. manufacturer can use it as a trademark. Court of Appeals. 1958.G. 3 The word ‘orbic’ cannot be registered as a trademark for ball pens.4 The word ‘omni-beta’ is merely descriptive of a vitamin B complex. No. G. Yu Hun & Company v. Geographical Names The word ‘Isabela’ is the name of a province in the Philippines Since it is merely a geographical name. 1956. 1955. 673. [1949] 45 O. Ex Parte Aquatogs. April 11. 298. 2. Inc. I. 5. 112012. 4. 1956. H. 2001. 5730. Ex Parte William R. Warner & Company [1949] 45 O. Societe des Produits Nestle.G. 1956. Ong Ai Gui v. A. La Yebana Company.G. v.A. 7.

No.2 Since a steinie bottle is a standard type of bottle used by breweries. 1098. Qui [1962] 59 O. 1951. Go Gee.5 Moreover. 1977. Inc. 2. Kerr & Company.299. no brewery may exclude others from using it. 451. December 20. Asia Brewery.6 1.2 146 . No. CA-G.1 Likewise. Ltd. CA-G. Court of Appeals [1993] 224 SCRA 437. 73-74. 3. cakes of soap. Dy Buncio v. v.R. 6. v. and cartons for cigarettes. Inc. Colour No cigarette manufacturer can have a monopoly over the use of brown in its labels. 5.R. 190. October 28. Continental Manufacturing Corporation v. 194-195. Compañia General de Tabacos de Filipinas [1916] 35 Phil. Procter & Gamble Philippine Manufacturing Corporation v. Neither can a brewery prevent a competitor from using amber-coloured bottles. 4. 7034-R. Amber is commonly used to prevent the transmission of light and to provide maximum protection to the beer. Tan Tiao Bok [1921] 42 Phil. a brewery cannot prevent a competitor from using white also in its labels. 56241-R. 300. Alhambra Cigar & Cigarette Manufacturing Company v. No manufacturer may appropriate exclusively to himself the method of labeling or packing his merchandise and prohibit others from using a common manner of labeling a particular class of goods such as spools of thread.1 The same holds true for tea bags.3 It is also common practice in the yarn industry to market thread in the form of balls4 and in cylindrical cardboard bobbins. J. 1093. no manufacturer can prevent his competitors from using the same sizes of packages. Cheng Ban Yek & Company.G. 62.

v. [1961] 110 Phil. Inc. 453.1 This is pursuant to the doctrine of secondary meaning. Court of Appeals. Philippine Nut Industry. 3. 452. Inc. [1975] 65 SCRA 575. 443.2. 2. Court of Appeals [1993] 224 SCRA 437. II. Lyceum of the Philippines. Company. Court of Appeals [1993] 219 SCRA 610. East Pacific Merchandising Corporation v. 301. v. Asia Brewery. 78. Subsection 123. Inc. SECONDARY MEANING The signs or devices mentioned in paragraphs (j) (k) and (l) of Subsection 123 of the Intellectual Property Code may be registered if they have become distinctive in relation to the goods for which registration is requested as a result of their use in commerce in the Philippines. v. 147 .2. the word or phrase has come to mean that the article is his product. Intellectual Property Code. Selecta Biscuit 2. v. 3 If it has been used exclusively and continuously in commerce in the Philippines for at least five years. Teodoro [1942] 74 Phil. [1993] 219 SCRA 610. Arce Sons & Company v. 53. Director of Patents [1960] 110 Phil. it may be presumed to have become distinctive as used in connection with the goods or services of the applicant for registration. Intellectual Property Code. 619. Compañia General de Tabacos de Filipinas [1916] 35 Phil. Lyceum of the Philippines.4 1. 62. Inc. the use must have been exclusive.1. 858. 869. Inc. 4. which states that a word or phrase originally incapable of exclusive appropriation with reference to an article in the market might nevertheless have been used so long and exclusively by one manufacturer with reference to his article that in that trade and to that branch of the purchasing public. 585. Standard Brands. Alhambra Cigar & Cigarette Manufacturing Company v. 50. Subsection 123. 2 For this doctrine to apply. Inc. Ang v. 617.

234. No. 303. Gabriel v. IMPORTER OR DISTRIBUTOR A mere importer or distributor cannot register the trademark of the products he is importing or distributing. 304. the name of a small town in England. Record of the Senate. November 12. H. Journal of the House of Representatives. 35. Spinner & Company v.1 Likewise. since the word ‘Wigan’. I. 259. Marvex Commercial Company. II. 2 1.1 1. p. 2. p. 34. CONDITIONS OF PROTECTION PRIOR USE The rights in a trademark are acquired through a valid registration. Heacock Company [1932] 285 U. October 8. Neuss Hesslein Corporation [1930] 54 Phil. 65. E. v.302. 224. 1996. 1996. II. because an agent cannot acquire the property of his principal. 52. 3. Vol. Section 122. Muñoz & Company v. American Trading Company v. Inc. 132. it had become identified with that product and was entitled to protection. 29. 2. Struckmann & Company [1907] 9 Phil. had been used for six years to describe a certain quality of khaki textile being sold in the Philippines. Perez 148 . it acquired a secondary meaning to refer to wares in which the manufacturer was dealing. Petra Hawpia & Company [1966] 18 SCRA 1178. Thus. 1182. 2 1.S. Intellectual Property Code. since the family name ‘Rogers’ had been used as a trademark for flatware being sold in the Philippines for twenty years. 247. No.E.1 Actual prior use in commerce in the Philippines has been abolished as a condition for the registration of a trademark.

the law under which it is organized and existing. General Milling Company [1983] 120 SCRA 804. REQUIREMENTS OF APPLICATION The application for the registration of a trademark should be in the Filipino or English language and should contain the following: a) b) c) A request for registration.1 1. The name of a State of which the applicant is a national or where he has his domicile. 3457 III. Tan [1986] 83 O. Inc. treaty or agreement relating to intellectual property rights or the repression of unfair competition to which the Philippines is also a party or which extends reciprocal rights to nationals of the Philippines may apply for the registration of a trademark. 305. Venezuela [1972] 17 CAR (2s) 294. d) If the applicant is a juridical entity. Section 3. 302. Torres v. if any. and the name of a State in which the applicant has a real and effective industrial or commercial establishment.G. Cua Lin Kiat v.[1974] 55 SCRA 406. v. FORMALITIES I. The name and address of the applicant. 3453. 306. Unno Commercial Enterprises. 416. 149 . 808. FOREIGN APPLICANT Any person who is a national or who is domiciled or has a real and effective industrial establishment in a foreign country which is a party to any convention. Intellectual Property Code. 4.

the name of that office. k) The names of the goods or services for which the registration is sought. in respect of each colour. A transliteration or translation of the trademark or of some parts of the trademark. if the applicant is not domiciled in the Philippines’ f) If the applicant claims the priority of an earlier application. the application number of the earlier application. h) if the trademark is a three-dimensional trademark.e) The appointment of an agent or representative. a declaration claiming the priority of that earlier application. i) j) A reproduction of the trademark and facsimiles. a statement to that effect. ii) iii) the date in which the earlier application was filed. together with an indication of the following: i) The name of the state with whose national office the earlier application was filed or if filed with an office other than a national office. a statement to that effect as well as the name or names of the colour or colours claimed and an indication. and If available. grouped according to the classes of the Nice Classification. together with the number of the class of the classification to which each group of goods or services belongs. 150 . of the principal parts of the trademark which are in that colour. g) If the applicant wishes to claim colour as a distinctive feature of the trademark.

Subsection 131. the applicant or his representative. or other self identification of. Intellectual Property Code. II. 307. and Sworn statement that the applicant is a small entity if such be the fact. n) o) Power of attorney if the filing is through a representative. A certified copy of the foreign application with an English translation must be filed within three months from the date of filing in the Philippines. PRIORITY RIGHT An application for registration of a trademark filed by a foreign national who previously filed an application for registration of the same trademark in a foreign country which grants nationals of the Philippine reciprocal rights is considered filed as of the day the application was first filed in the foreign country.1 1. Intellectual Property Code.1 1. Trade Names and Marked or Stamped Containers. 1414. 308. Intellectual Property Code. An application claiming priority right must be filed within six months from the date the earliest foreign application was filed. The application for registration of the trademark will not be granted until it has been registered in the country of origin of the applicant. 309. Trade Names and Marked or Stamped Containers. Service Marks.l) m) if the application is for a collective trademark.1. Rule 204. a designation to that effect. Section 124. Rules and Regulations on Trademarks. Subsection 131. Rule 400. Nutritive Snack Food corporation [1940] 90 O. Service Marks. 1409.1 1. Rules and Regulations on Trademarks.G.1 1. A signature by. v. Inc. 151 .2. Sunshine Biscuits.

1 1. The opposition should be in writing and should be verified by the oppositor or any person on his behalf who knows the facts and should specify the grounds for the opposition. The Director of Legal Affairs may extend the period for filing an opposition. OPPOSITION Any person who believes that he will be damaged by the registration of a trademark may within thirty days after the publication of the application file an opposition to the application. ISSUANCE OF CERTIFICATE AND PUBLICATION When the period for filing an opposition has expired or if the Director of Legal Affairs denies the opposition. Notice of the issuance of the certificate of registration will be published in the Intellectual Property Office Gazette. 311. Section 136. Section 134. Subsection 133. the application will be published in the Intellectual Property Office Gazette. Intellectual Property Code. V. Copies of certification of registration of the trademark in other countries or other supporting documents should be filed with the opposition.III. 1 152 . IV. EXAMINATION AND PUBLICATION If the Intellectual Property Office examines and finds that the application meets the filing requirements and that the trademark is registrable.2. 310. 312. the Intellectual Property Office will issue the certificate of registration. Intellectual Property Code. 1 1. Intellectual Property Code. 313.1 1.

1 1. 5.1. 315. Transfers by mergers or other forms of succession may be evidenced by the deed of merger or by any document supporting such transfer. Rules and Regulations on Trademarks Service Marks. Rule 906. Trade Names and Marked or Stamped Containers. OWNERSHIP AND TRANSFER I. Rule 907. Trade Names and Marked or Stamped Containers. Rules and Regulations on Trademarks. 153 . may be assigned or transferred with or without the transfer of the business using the trademark.1 1. registrant or the assignee of record in case of subsequent assignment. Service Marks. of the goods or services to which the trademark is applied. ASSIGNMENT An application for registration of a trademark. 1 1. or its registration. manufacturing process. The assignment or transfer is null and void if it is liable to mislead the public particularly as regards the nature. should be notarized and should contain the signature of the applicant. The assignment of the application for registration of a mark. 316. or of its registration. characteristics. source. Intellectual Property Code. 314. Section 136. Rules and Regulations on Trademarks. 317. Rule 908. Trade Names and Marked or Stamped Containers. or suitability for their purpose. Assignments and transfers have no effect against third parties until they are recorded at the Intellectual Property Office. Service Marks.

a new certificate of registration for the unexpired period of the registration will be issued to the assignee. Service Marks. 1 1. Rule 911.318. 319. 154 . II. Rules and Regulations on Trademarks. Trade Names and Marked or Stamped Containers. Service Marks. Trade Names and Marked or Stamped Containers. Rules and Regulations on Trademarks.1 1. Rule 913. Upon request of an assignee of record and upon payment of the required fee. LICENSING AGREEMENTS Any trademark licensing agreement must be applied for clearance with the Documentation Information and Technology Transfer Bureau of the Intellectual Property Office and will be recorded only upon certification by its Director that the agreement does not contain the prohibited provisions and contains the mandatory provisions for licensing agreements involving patents.

LIMITATIONS PROTECTION 322. Subsection 147. Subsection 147.2.6. SCOPE OF EXCLUSIVE RIGHTS 320. 7. if such use is confined to the purposes of 155 . place of origin. addresses. Intellectual Property Code. destination. quality.1 1.1 1. quantity. OF THE SCOPE OF TRADEMARK The registration of a trademark does not confer on the registered owner the right to prevent third parties from using bona fide their names. 321. of their goods or services. value.1. or time of production or of supply. a geographical name. The owner of a registered trademark has the exclusive right to prevent all third parties who do not have his consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar in respect of which the trademark is registered if use will result in a likelihood of confusion. or exact indications concerning the kind. pseudonyms. Intellectual Property Code. The exclusive right of the owner of a trademark which is well-known internationally and in the Philippines and which is registered in the Philippines extends to goods and services which are not similar to those in respect of which the trademark is registered if the use of the trademark in relation to those goods and services will indicate a connection between those goods and services and the owner of the registered trademark and the interests of the owner of the registered trademark are likely to be damaged by such use.

2. the applicant may waive his claim to priority right and request that the application be considered as based on intent to use. Section 148. Intellectual Property Code. Trade Names and Marked or Stamped Containers. counted from the expiration of the twenty-four month period. The period may be extended for not more than twelve months.1 1. without extension and without need of notice. Subsection 174.1 1. DECLARATION OF USE The applicant or the owner of a registered trademark must file a declaration of actual use of the trademark with evidence of the use within three years from the filing date of the application. Rule 618. USE REQUIREMENTS I.mere identification or information and cannot mislead the public as to the source of the goods or services. Otherwise. Intellectual Property Code. 323. Service Marks. If the only deficiency in an application based on foreign application claiming priority right is the submission of a certified copy of the foreign registration. Rules and Regulations on Trademarks. 324. Should the applicant fail to submit the certified copy of the foreign registration within the maximum period of twenty-four months. A declaration of actual use must be filed within twelve months. the application will be denied or the trademark will be removed from the register. 8. 156 . the application may be provisionally allowed and the submission of the certified copy of the foreign registration allowed within twelve months from the date of the provisional allowance.1 1.

2. Subsection 152. 327. Court of Appeals [1982] 118 SCRA 526. d) Use by a person controlled by the applicant or the registered owner of the trademark with respect to the nature and quality of goods or services.3 1. Intellectual Property Code.325.1 1.2 c) Use by a company related with the applicant or the owner of the registered trademark. Section 145. Subsection 152. Otherwise. 1 b) Use in connection with one or more of the goods or services belonging to the class in respect of which the trademark is registered. 3. Intellectual Property Code. the trademark will be removed from the register. the distribution of samples does not constitute use. 2. Subsection 152. 1 1.3. Intellectual Property Code. Pagasa Industrial Corporation v. However. Within one year from the fifth anniversary of the date of the registration of a trademark. 326. 157 . Intellectual Property Code. in such a manner which will not deceive the public. since they are not for sale. 533. The following uses constitute compliance with the requirement of actual use of a trademark: a) Use in a form different from the form in which the trademark is registered which does not alter its distinctive character.4. the owner must file a declaration of actual use.

329.1. Intellectual Property Code. 586.1 1. [1964] 10 SCRA 556. Inc.1. 158 . such as prohibition of sale imposed by government regulation. Rule 802 (b). Romero v. DURATION A certificate of registration of a trademark remains in force for ten years. 9. 563. Memorandum Circular BT 2K1-1-01.II. 3.1 1. Inc. Intellectual Property Code. 328. Subsection 152. Subsection 152. Maiden Form Brassiere Company. Section 145. Trade Names and Marked or Stamped Containers. Lack of funds will not excuse the non-use of a trademark. Intellectual Property Code. Philippine Nut Industries. DURATION OF PROTECTION I. Standard Brands. Service Marks. 330. 2.1 The special circumstances must be clearly beyond the control of the owner of the trademark.2 The owner of the trademark should submit supporting documents and an affidavit setting forth the steps being undertaken to comply with the government regulation and the reasonable period within which the trademark is expected to be used. Rules and Regulations on Trademarks. [1975] 65 SCRA 575. NON-USE Non-use of a trademark may be excused if caused by circumstances arising independently of the will of the owner of the trademark. v. Inc.3 1.

CANCELLATION PETITIONER Any person who believes that he is or will be damaged by the registration of a trademark may file a petition to cancel the registration. No. L-8004. Anchor Trading Company. Clorox Company v. C. Director of Patents [1967] 20 SCRA 965.1. 159 .1 1.1 1. A. 331. Intellectual Property Code. Subsection 146.1 1. 971.II. v.R. RENEWAL A certificate of registration may be renewed for periods of ten years at its expiration. May 30. Subsection 151.1. B. III. 333. 335. 334. 332. 1956. Director of Patents. G. These are alternative remedies granted by the law. Intellectual Property Code. Inc. PERIOD AND GROUNDS FOR FILING A petition to cancel the registration of a trademark may be filed under the following circumstances: a) within five years from the date of registration of the trademark. b) at any time on any of the following grounds: i) The trademark has become the generic name for the goods or services or a portion of them for which it is registered. ALTERNATIVE REMEDY A party who failed to oppose an application for the registration of a trademark may file a petition for its cancellation.

Pagasa Industrial Corporation v.5 iv) The trademark is being used by or with the permission of the owner so as to misrepresent the service of the goods or services in connection with which the trademark is being used. v) The owner of the trademark without any legitimate reason failed to use it within the Philippines or to license its use in the Philippines for an uninterrupted period of at least three years. Court of Appeals [1994] 229 SCRA 15. Intellectual Property Code. 5. 551.1 ii) iii) The trademark has been abandoned. 3. Subsection 151. Intellectual Property Code. 160 . 568.1 Intellectual Property Code. Court of Appeals [1984] 131 SCRA 565.1 (b). The test is the primary significance of the trademark to the relevant public rather than purchaser motivation.4 Likewise.1 (b).3 337. Subsection 151.336. Mirpuri v. Subsection 151. the registration of the trademark ‘Barbizon’ for lingerie. Heirs of Crisanta Y.6 1. the erroneous registration of the trademark ‘YKK’ for zippers in favor of another company when it had been previously registered in favor of a foreign corporation should be cancelled. 31. should be cancelled. Thus.2 The registration of the trademark was obtained fraudulently or contrary to the provisions of the Intellectual Property Code. Court of Appeals [1999] 318 SCRA 516. 2. which had been first used internationally by a foreign corporation. A trademark shall not be deemed to have become a generic name of goods or services solely because it is also used as a name of a unique product or service. 4. Gabriel – Almoradie v.

Subsection 151. or to deceive. wrappers. prints. INFRINGEMENT AND REMEDIES A. counterfeit. CONCEPT Any person who.1. or to cause mistake. copying or colourably imitating a registered trademark or a dominant feature of it and applying such reproduction. distribution. distribution. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. performs any of the following acts is liable for infringement: a) Use in commerce of any reproduction. or advertising of goods or services on or in connection with which such use is likely to cause confusion. without the consent of the owner of the registered trademark. copy or colourable imitation to labels. copy. 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. counterfeiting. Intellectual Property Code. signs. or to cause mistake.6. packages. INFRINGEMENT OF TRADEMARK 1. 161 . 10. counterfeit. or b) Reproducing. or colourable imitation of a registered trademark or the same container or a dominant feature of it in connection with the sale. 338. offering for sale. or to deceive. offering for sale.

No.2 162 . 1996 p.1 A dealer of spare parts of motor vehicles who uses the trademark of a motor vehicle is guilty of infringement of the trademark. 415. Journal of the House of Representatives. Court of Appeals [1990] 181 SCRA 410. because he has no authority to use it. Court of Appeals [1990] 181 SCRA 410.2 1.339. 490.1 1. Del Monte Corporation v. 1966. Compañia General de Tabacos de Filipinas v. The law has adopted the dominancy test for determining whether or not a trademark infringes a registered trademark. 342. There can be no infringement of trademark if the trademark is not registered. October 8. because the action is based on invasion of the rights of the owner in the trademark. General Garments Corporation v. 415. 58. II. 35. Section 155. People v. 29. Infringement takes place at the moment any of those acts is committed even if there is no actual sale of the goods or services using the infringing material. Go Yee Bio [1937] 2 ACR 437. 340. intent to defraud is not necessary. November 12. No. Intellectual Property Code. An advertisement showing cans of milk made by a manufacturer together with cans of milk produced by its competitor with a statement that it was the first processor of canned milk infringes the trademark of the competitor. Del Monte Corporation v. 447. 2. The readers could be misled into believing that it was also manufacturing the other brand. 341.1 However. 485. Vol.1 1. Record of the Senate. 132. Director of Patents [1971] 41 SCRA 50. Alhambra Cigar & Cigarette Manufacturing Company [1916] 33 Phil.

Fernandez [1984] 129 SCRA 373. 139300. the complaint may be dismissed for failure to allege that the foreign corporation has legal capacity to sue.3 1 Intellectual Property Code. Cluett Peabody Company. Universal Rubber Products. 238. 2 3 Leviton Industries. 113.1. General Garments Corporation v. 2. N. 424. 2001. RIGHTS OF FOREIGN CORPORATIONS A foreign corporation whose country grants Filipino corporations reciprocal rights may bring an action for infringement of trademark.2 However. 6233. Salvador [1982] 114 SCRA 420. v. G. Jacinto Rubber & Plastics Company. Converse Rubber Corporation v. 115.G. February 9. 60653R. v.G. 57. Daimler-Benz Aktiengesellschaft v. Director of Patents [1971] 41 SCRA 50. if the country of the foreign corporation is a signatory to the Paris Convention for the Protection of Industrial Property. false designation of origin and false description. The courts may take judicial notice of this. whether or not it is licensed to do business in the Philippines. [1980] 97 SCRA 158. 6229. Reyes [1927] 51 Phil. Section 160. Inc.A. 592. Inc. Inc. S. No. v. B.V. Western Equipment & Supply Company v. March 14. Inc. 1981.R. Court of Appeals [1984] 130 SCRA 104. Court of Appeals [1993] 224 SCRA 576.R. Philip Morris. v. No. DEFENSES 163 . Puma Sportschuhfabriken Rudolf Dassler. Consolidated Philippines. First Consolidated Trading & Development Corporation [1990] 89 O. CA-G. 343. Amigo Manufacturing Inc. C.1 The complaint must allege that the country of the foreign corporation grants Filipino corporations reciprocal rights. Holandes Blikmelk International v. Otherwise. grant of reciprocal rights to Filipino corporations need not be alleged. La Chemise Lacoste. v. Inc. 129. v. 173. Inc. K. 384-385. Intermediate Appellate Court [1988] 158 SCRA 233. unfair competition.

v. Section 161. and of the exclusive right of the registered owner to use it in connection with the goods or services and those related to them which are specified in the certificate. 139300. Intellectual Property Code. Del Monte Corporation v. Inc. 164 .1. No. Conrad & Company. March 14. Court of Appeals [1995] 246 SCRA 691. estoppel. 700. Court of Appeals [1990] 181 SCRA 410. 1 Hence. in an action for infringement of a trademark. v. 3. Section 138. Cluett Peabody Company. Inc. Statute of Limitations No damages may be recovered for infringement of trademark after four years from the time the cause of action arose. 2. and the court may order the cancellation of the registration.1 1 Intellectual Property Code. 420. and acquiescence may be applied in an action for infringement of trademark. 346. 2001. Inc. Amigo Manufacturing. Intellectual Property Code. the ownership of the trademark. the right of the plaintiff to its registration may be raised as an issue. Equitable Principles The equitable principles of laches.1 1.R. 345. Section 226. G. Intellectual Property Code.2 1. 344. Non-Registrability of Trademark A certificate of registration of a trademark is merely prima facie evidence of the validity of the registration. 2.. Section 230.

347.

A party who has imitated the trademark of another cannot bring an

action for imitation of his own trademark, because he would be coming to court with unclean hands.1
1. Ubeda v. Zialcita [1913] 226 U.S. 452, 454; Ubeda v. Zialcita [1909] 13 Phil. 11, 19.

348.

A party cannot invoke the equitable principles of laches, estoppel

and acquiescence if he usurped the trademark of another. Equity will not lend its aid to someone who is guilty of unlawful or inequitable conduct.1
1. Pagasa Industrial Corporation v. Court of Appeals [1984] 131 SCRA 565, 568.

349.

To give rise to laches, the delay must be lengthy.1

The delay

should be counted from the time the owner of the trademark first acquired knowledge of the infringement. A delay of eight years before the filing of an action for infringement of trademark was considered insufficient.2 However, a delay of twelve years was deemed unreasonable.3 1. 2. 3.
Emerald Garment Manufacturing Corporation v. Court of Appeals [1995] 251 SCRA 600, 612. La Insular v. Jao Oge [1924] 47 Phil. 75, 80. La Insular v. Yu Lo [1923] 45 Phil. 398, 399-400.

350.

In one case, the owner of a trademark for shoes was able to

register it despite the objection of somebody else who had registered it earlier as a trademark for socks, because of its contention that shoes and socks are unrelated products. Later on, the owner of the trademark for socks abandoned it and somebody else applied to register it as a trademark for socks. The owner of

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the trademark for shoes was estopped to oppose the application on the ground that there would be confusion as to the origin of the socks.1 1.
Bally Schuhfabricken A.G. v. Mil-Oro Manufacturing Corporation, CA-G.R. SP No. 10265, January 25, 1988.

351.

The failure to object for more than thirty years to the use of the

trademark of a registered owner by somebody else constitutes acquiescence.1 1.
Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellshaft [1969] 27 SCRA 1214, 1236.

352.

The owner of a registered trademark cannot recover damages if he

consented to its use by somebody else.1
1. Uy v. Santos [1934] 60 Phil. 109, 110.

D. 1. 353.

REMEDIES

RECOVERY OF DAMAGES The owner of a registered trademark may recover damages from The measure of the damage is the

any person who infringed his rights.

reasonable profit which the plaintiff would have made had the defendant not infringed his rights or the profits the defendant actually earned from the infringement.1 1.
Intellectual Property Code, Subsection 156.1; Forbes, Munn & Company, Ltd. v. Ang San To [1922] 43 Phil. 724, 727; Universal Rubber Products, Inc. v. Court of Appeals [1984] 130 SCRA 104, 112; Cheng U v. Villafania, [1966] 9 CAR (2s) 42, 51; Alhambra

Industries, Inc. v. New La Flor de la Isabela, Inc. CA-G.R. No. 55278-R, May 3, 1977.

166

354.

If the plaintiff wishes to recover damages because of his loss of

profits, it is not enough to prove the decrease in the sale of his goods. He must prove that the reduction was due to the infringement of his trademark. 1 Thus, if there was a general decline in the sale of all brands, the decrease in the sales of the owner of the registered trademark cannot be entirely attributed to its infringement.2 1.
La Sociedad ‘Germinal’ v. Nubla [1908] 10 Phil. 18, 22; Song Fo & Company v. Tiu Co Siong [1909] 13 Phil. 143, 151; American Sweets, Inc. v. O’Racca Confectionery

Company, Inc. [1937] 2 ACR 592, 603.

2.

Rueda Hermanos & Company v. Felix Paglinawan & Company [1916] 33 Phil 196, 210.

355.

If the plaintiff wishes to base his claim for damages on the profits

the defendant made, it should be based on the net profits.1 If the defendant wishes to reduce his liability for damages, he should prove his expenses or present his books of account.2 1. 2.
Converse Rubber Corporation v. Jacinto Rubber & Plastics Company, Inc. [1980] 95 SCRA 158, 176. Edward A. Keller & Company, Ltd. v. Kinkwa Meriyasu Company, Inc. [1932] 57 Phil. 262, 266.

356.

If the measure of damages cannot be readily ascertained with

reasonable certainty, the court may award as damages a reasonable percentage of the gross sales of the defendant or the value of the services in connection with which the trademark was used in infringing the rights of the plaintiff. 1 1.
Intellectual Property Code, Subsection 156.1; Universal Rubber Products, Inc. v. Court of Appeals [1984] 130 SCRA 104, 112.

167

357.

The court may impound during the pendency of the case the sales

invoices and other documents evidencing sales.1
1. Intellectual Property Code, Subsection 156.2.

358.

If actual intent to mislead the public or to defraud the plaintiff is

shown, the court may double the damages.1
1. Intellectual Property Code, Subsection 156.3.

359.

The plaintiff is not entitled to recover damages unless the acts were

committed with the knowledge that such imitation is likely to cause confusion, to cause mistake, or to deceive. Such knowledge is presumed if the owner of the trademark 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 actual notice of the registration.1
1. Intellectual Property Code, Section 158.

2. 360.

ISSUANCE OF INJUNCTION The court may also grant an injunction.1
1. Intellectual Property Code, Subsection 156.4.

3. 361.

DESTRUCTION OF INFRINGING MATERIALS The court may order that the goods found to be infringing be

disposed of without any compensation outside the channels of commerce in such a manner as to avoid any harm caused to the right of the owner, or be destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered trademark or any
168

the owner of the infringed trademark is entitled as against such infringer to an injunction against future printing only. Intellectual Property Code. counterfeit. the simple removal of the trademark affixed is not sufficient except in special cases which permit the release of the goods into the channels of commerce. magazine. c) If the infringement complained of is contained in or is part of a paid advertisement in a newspaper. the remedy of the owner of the trademark as against the publisher or distributor of the newspaper. matrices and other means of making them. was using the trademark for the purposes of his business or enterprise. In regard to counterfeit goods. 4.1 1. Intellectual Property Code. all plates. magazine.1. but 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 trademark is used.reproduction. Subsection 157. a) LIMITATION OF REMEDIES The remedies given to the plaintiff are limited as follows: A registered trademark has no effect against any person who. copy or colourable imitation of them. be delivered up and destroyed. or other 169 . 363.2.1 1. b) If an infringer who is engaged solely in the business of printing the trademark or other infringing materials for others is an innocent infringer. or other similar periodical or in an electronic communication. before the filing date or the priority date. 362. Subsection 157. molds. in good faith.

Concept of Unfair Competition Any person who employs deception or any other means contrary to good faith by which he shall pass off the goods he manufactured or in which he 170 . UNFAIR COMPETITION 1. Intellectual Property Code. his business or services from those of others.1.1 1. has a property right in the goodwill of his goods. whether or not a registered trademark is employed. magazines. Subsection 168.1 1. magazine. Protection of Goodwill A person who has identified in the mind of the public the goods he manufactures or deals in. 2. or other similar periodicals or in future transmissions of the electronic communications. Section 159. or other similar periodical or an electronic communication containing infringing matter if restraining the dissemination of the infringing matter in any particular issue of such periodical or in an electronic communication will delay the delivery of the issue or transmission of the electronic communication. The injunction is not available to the owner of the trademark with respect to an issue of a newspaper. II. which will be protected in the same manner as other property rights.similar periodical or electronic communication is limited to an injunction against the presentation of such advertising matter in future issues of the newspapers. 364. 365. business or services so identified. Intellectual Property Code. These limitations apply only to innocent infringers.

while unfair competition is the passing off of one’s goods for the goods of another. or services for those of one having established goodwill. Inc. Subsection 168. In infringement of trademark the prior registration of the trademark is a prerequisite for the action. 366. in unfair competition registration of the trademark is not necessary. 3. La Insular Cigar & Cigarette Factory. Infringement of trademark is the unauthorized use of a trademark. An action for unfair competition may be filed even if the owner of the trademark has not registered it.2. is guilty of unfair competition. Court of Appeals [1990] 181 SCRA 410. 367. v. 415.deals. or his business.1 1. or who commits any acts calculated to produce this result. 370. In infringement of trademark. 485. fraudulent intent is not necessary. 375. There are several distinctions between infringement of trademark and unfair competition. Jao Oge [1921] 42 Phil. because a trademark is entitled to protection even if it is not registered. Del Monte Corporation v.1 In fact. in unfair competition fraudulent intent is essential. Compañia General de Tabacos de Filipinas [1916] 33 Phil. 369. 368. Intellectual Property Code. 490. Distinction between Infringement of Trademark and Unfair Competition 366.1 1. a party who succeeded in registering a trademark can be held liable for unfair competition if it is proven that the 171 .

Alexander & Company. 454. Kui Foo & Company. Zialcita [1909] 13 Phil. because the certificate of registration is merely prima facie evidence of ownership of the trademark. 538. 199. Neus Hesslein Corporation [1930] 54 Phil. 452. Ang [1955] 97 Phil. Tan Chai v. 477. or who otherwise clothes the goods with 172 . or in any other feature of their appearance. v. 157. 196. 928. 471. Zialcita [1913] 226 U. Gow Chiong [1912] 23 Phil. Francisco Chua Seco & Company [1909] 14 Phil. 11. 162. Chiong [1965] 7 CAR (2s) 325. Felix Paglinawan & Company [1916] 33 Phil. 20. While a fraudulent intent is necessary in unfair competition. who is selling his goods and gives them the general appearance of the goods of another manufacturer or dealer. Francisco Chua Seco & Company [1909] 14 Phil. Inchausti & Company v. 143. Parke. 538.1 1. Ubeda v. either as to the goods themselves or in the wrapping of the packages in which they are contained. which will be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. 233.trademark actually belongs to the plaintiff.2 1. Yebana & Company v. 931. E. 138. United States v. 224. Ltd. R. Yebana & Company v. F. [1934] 60 Phil. Ubeda v. this can be inferred from the similarity in the appearance of the packaging of the challenged goods with that of the goods of a competitor. Acts Constituting Unfair Competition The following are guilty of unfair competition: a) Any person. 4. Ogura v. Sony Fo & Company [1912] 21 Phil. 372. Chua [1924] 59 Phil. 286. 534. 278. Rueda Hermanos & Company v. 2. 329. & J.S. or the devices or words on them. 371. Davis & Company v. Spinner & Company v. Ltd. 534.

By express provision of the law. unfair competition is not limited to these acts. It need not be proven that the imitation goods were actually sold. 2 imitation goods constitutes unfair competition. Court of Appeals [1997] 281 SCRA 162. for they were obviously manufactured to deceive the purchasing public. if the seller of the 173 . as they are cited only by way of illustration. The seller of fake medicines is guilty of unfair competition.such appearance will deceive the public and defraud another of his legitimate trade. Yap Peng Chong [1979] 24 CAR (2s) 921. Inc. 375. or c) Any person who makes any false statement in the course of trade or who commits any other act contrary to good faith of a nature calculated to discredit the goods. Subsection 168. business or services of another. or device.3 A mere offer to sell However. People v. 374. 173. Intellectual Property Code. v. or any subsequent vendor or such goods or any agent of any vendor engaged in selling such goods with a like purpose.1 1. or who employs any other means calculated to induce the false belief that he is offering the services of another who has identified such services in the mind of the public. Pro Line Sports Center.1 1. 373. the manufacturer of the imitation goods should also be held liable for unfair competition. 1 The same holds true of a manufacturer of cigars who tried to pass off his cigars for those of his competitor by putting around them a small paper ring which had the same general appearance as that used by his competitor. 929-930. b) Any person who by any artifice. Since the seller of imitation goods is liable for unfair competition.3.

332. 1954. 1994. 945. 345. 378. 11990 – Cr.imitation goods is not the manufacturer. Macsolutions. 610. People v. Del Rosario v. Mojica [1914] 27 Phil. Santos. 270. 1976. No. CA G. No. Yu v. Baer. Lim Ka Ping & Company.. Senior & Company [1906] 5 Phil.R. Gayatinea v.R.R. CA-G. 377. he is not liable for unfair competition if he did not know that the items he was selling are fake or bore a trademark similar to that of another brand. The owner of a new funeral parlor which opened with the trade name Nueva Funeraria Paz at the site previously occupied by another funeral parlor with the trade name Funeraria Paz and used in his sign the same style of lettering used by the old funeral parlor is guilty of unfair competition. People v. 34469. 4 1. Aliposa. 3. December 9. CA – G. People v. v. 2. 348. 1973. 608. January 29.1 1.CR. Inc. 928. SP No. 266. Alhambra Cigar & Cigarette Manufacturing Company v. Yap Peng Chong. 4. [1979] 24 CAR (2s) 921. People v. 376. Court of Appeals {1993] 217 SCRA 328. 10542-R. Detabali.R. Nelle v. Since the rights arising under an exclusive distributorship are property rights entitled to protection. 15320 . CA-G. February 19. The reproduction of a racing programme containing tips which was prepared after observing horses that are scheduled to take part in the races 174 . No. No. Quiogue [1910] 15 Phil. the importation and sale of the goods covered by the exclusive distributorship by somebody else constitute unfair competition. Caballero. [1963] 4 CAR (2s) 936.1 1. April 7.

4 and Section 226. or device. symbol. Subsection 168. or any combination of them. whether oral or written. 5. Section 162. the defenses available to an action for infringement of trademark. term.constitutes unfair competition. name. or any container for goods. Any person who procures registration of a trademark by a false or fraudulent declaration or representation. IV.1 1.1 1.1 1. the following cases: 175 . or any false designation of origin. July 10. and the remedies for infringement of trademark are applicable to unfair competition. 1951. 6268-R.R. FALSE DECLARATION 380. or by any false means is liable to any person injured for any damages suffered as a consequence of it. It amounts to appropriating material prepared by another and selling it as one’s own. Procedure The rules governing the right of foreign corporations to file an action for infringement of trademark. No. Intellectual Property Code. Section 3. Inciong. Guidotti v. Intellectual Property Code. or false or misleading representation of fact. 379. FALSE DESIGNATION OF ORIGIN OR DESCRIPTION 381. on or in connection with any goods or services. Any person who. III. is liable in a civil action for damages and injunction to any person who is damaged. uses in commerce any word. CA-G. false or misleading description of fact.

or commercial activities or those of another person.1. or b) The false statement misrepresents in commercial advertising or promotion the nature. or false 176 . services.000 pesos to 200. 382. VI.2. Parke. Intellectual Property Code. Davis & Company v. Intellectual Property Code. PROHIBITION OF IMPORTATION 383. characteristics. Subsection 169. qualities or geographical origin of his goods.1 1. 708. sponsorship.a) The false statement is likely to cause confusion or to cause mistake or to deceive as to the affiliation. services. CRIMINAL PROSECUTION 384. A penalty of imprisonment from two years to five years and a fine ranging from 50. or commercial activities by another person. Doctors Pharmaceuticals. or geographical origin shall not be imported.1 1. or to the origin. Inc. or association of such person with another person. [1981] 104 SCRA 700.1 1. a manufacturer of medicines who stated that the medicines contain chloramphenicol when they contain chloramphenico palmitate is guilty of making a false statement in the course of trade. V.000 pesos is imposed on any person who commits any act of infringement of trademark. characteristics. qualities. or approval of his goods. connection. Subsection 169. Thus. Any goods who are marked or labeled with a trademark which is confusingly similar to another trademark or which contain a false designation of origin or false description of their nature. unfair competition.

Rule 1001. freon. helium. tanks. methyl chloride or similar gases contained in steel cylinders. or selling of soda water. CONTAINERS 385. and other similar containers. cream or other lawful beverages in bottles. with their trade names or the trademarks of 177 . compressing or selling of gases such as oxygen. barrels. I. milk. Section 1 of Republic Act 623. as amended by Republic Act 5700. flasks. or in the manufacture. authorizes persons engaged in the manufacture. boxes. mineral or aerated waters. Service Marks. nitrogen.1 1.designation of the origin or false description of the nature and characteristics of his goods.1. OVERLAPPING AND RELATION TO OTHER INTELLECTUAL PROPERTY LAWS. Intellectual Property Code. propane. hydrogen. 2.1 A stamped or marked container means any container of goods upon which a mark is impressed or mold which will give a distinctive effect and which cannot be deleted or removed from the container. dioxide. 170. bottling. Rules and Regulations on Trademarks. Subsection 121. acetylene. cider. accumulators or similar containers. butane. 11. 2 1. Trade Names and Marked or Stamped Containers. kegs. sulphur. Intellectual Property Code. chloride. carbon dioxide. A stamped or marked container of goods capable of distinguishing the goods of a business enterprise may be considered a trademark. ammonia. 386.

Court of Appeals [1996] 263 SCRA 303. or to sell. boxes. dispose of. purpose of the exemption is to assist small-scale manufacturers of native sauces. Court of Appeals [1989] 179 SCRA 218. Court of Appeals [1997] 280 SCRA 884. Republic Act 623. Tan Tay & Company [1943] 74 Phil. Distileria Washington. v. Court of Appeals [1996] 263 SCRA 303. v. Distilleria Washington. he is liable for unfair competition or infringement of trademark. flasks. Inc. Inc.1 1. regardless of the nature of their contents. buy or traffic in. 387. steel cylinders.the products or other marks of ownership stamped or marked on them to register the trade names or trademarks. Court of Appeals [1989] 179 SCRA 218. as amended by Republic Act 5700. 389. Cagayan Valley Enterprises. v. Inc. somebody uses the registered trademark or adopts a colourable imitation of it. 3 1. Cagayan Valley Enterprises.1 Thus. Inc. v. or other similar containers. The use of the containers with registered trademarks as containers The for native sauces is exempted from the prohibition against their use. Court of Appeals [1989] 179 SCRA 218. kegs. or wantonly destroy them. 889. 3. 888. Section 6. Court of Appeals [1997] 280 SCRA 884. v. Twin Ace Holding Corporation v. Republic Act 623. tanks. 388. Inc. v. 2. Twin Ace Holding Corporation v. It is unlawful for any person. 301. to fill the bottles.2 The prohibition covers all lawful beverages. Distileria Ayala. and includes hard liquor. 303. If in addition to using the container with a registered trademark. 226-227.1 The mere use of the containers without the written consent of the owner of the registered trademarks is prohibited. without the written consent of the owner of the registered trademark. barrels. Inc. Cagayan Valley Enterprises. 309. 225. a 178 . 309. Section 2. for the purpose of sale. 225.

or industrial enterprises or in labor through the use of force. Destileria Ayala. Insular Petroleum Refining Company. 390. The purchasing public was not being deceived.manufacturer of sherry who used bottles whose shape was similar to that of the bottles of a competitor. The concept of unfair competition under this provision is broader It covers bribery of the than that under the Intellectual Property Code.3 1. 303. oppressive or high-handed method shall give rise to a right of action by the person who suffers thereby. 301. a manufacturer of catsup who used the bottles of an established competitor and adopted a similar label was found guilty of infringement of trademark. 2. 421. commercial.2 Similarly. intimidation. [1964] 11 SCRA 436.1 1. Ltd. employees of a competitor. interference with the 179 . 443. misrepresentation of all kinds. On the other hand. Tan Tay & Company [1943] 74 Phil. v. Del Monte Corporation v. United States v.” 392. Ltd. to deceive the public. Gow Chiong [1912] 23 Phil. v. or any other unjust. UNFAIR COMPETITION Article 28 of the Civil Code provides: “Unfair competition in agricultural. II. 391. 138. Inc. Court of Appeals [1990] 181 SCRA 410. 3. was not guilty of unfair competition. deceit. 143. machination. Shell Company of the Philippines. was declared guilty of unfair competition. the seller of recycled lubricating oil who used empty drums of oil companies but erased the trademarks on them and told the buyers that he was selling recycled lubricating oil.

3 1. 1987). Castro v. Section 1 provides: “However. 3. G. G. shocking to judicial sensibilities. 1437. Ice & Cold Storage Industries of the Philippines. J. No. Section 19 states: “No combinations in restraint of trade or unfair competition shall be allowed. 394. 2000. v. Tolentino. 2. Court of Appeals. the operator of a public utility who operates outside its authorized zone of operation and encroaches upon the allocated territory of a competitor may be held liable for unfair competition under this provision. Inc. 120. Central Lawbook Publishing Company.R. 1433. the State shall protect Filipino enterprises against unfair foreign competition and trade practices”. No. Inc.2 Giving someone the right to top the bid of a winner in a sealed public bidding is unfair competition. and any malicious interference with the business of a competitor.G. Fernandez [1957] 54 O. 1958. p. On the other hand. 1. competition.R. The Constitution of 1987 also contains several provisions on unfair Article XII. A. Commentaries and Jurisprudence on the Civil Code of the Philippines (Quezon City. Inc. v. Summit Holdings. November 20. Article XII. or otherwise unlawful.” 180 . 396. Davao Stevedore Terminal Company. must involve acts which are contrary to good conscience. to be unfair. 393.1 Thus. L-10147. Vol. 395. 124293. a mere offer of goods or services to the customers of a competitor does not constitute unfair competition. G.fulfillment of the contracts of a competitor. December 27. Competition.1 1.

Article XVI. Section 11 (1) reads: “The Congress shall regulate or prohibit monopolies in commercial mass media when the public interest so requires.” 181 . No combinations in restraint of trade or unfair competition therein shall be allowed.397.

In addition. 399. confusing or contrary to existing laws. Limitations of the Scope of Trade Name Protection Generic Words A business enterprise has no exclusive right to use a word as part of its trade name. 481. Red Line Transportation Company v. 401. The historical background and the sources of legislation on trademarks and trade names were discussed in Chapter 4. which was approved on 1 May 1980. Subsection 165. Kyburz [1914] 28 Phil. 549.2 1.CHAPTER 5. Subsection 121. SOURCES-LEGISLATION 398.3. A trade name is the name or designation identifying or distinguishing an enterprise. 475. II. if the word is generic. Concept and Protection 400. THE PROTECTION OF TRADE NAMES I.” 2. A.1 A trade name is entitled to be protected against any unlawful act of third parties even prior to or without registration. TRADE NAMES 1. Section 18 of the Corporation Code. 2. Intellectual Property Code.2 (a). Thus. Rural Transit Company [1934] 60 Phil. Intellectual Property Code. United States v. an educational institution has no 182 . 555. provides: “No corporate name may be allowed by the Securities and Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive.

1 It is unlawful to use the name of the United Nations as a trade 1. 1 The word ‘gaslam’ cannot be adopted as a trade name by a dealer of gas lamps. since it denotes a school and is generic. Lyceum of the Philippines v. Subsection 165. 404. Court of Appeals [1993] 219 SCRA 610. Section 1. 2. 402. 452. 448.1. 403. 405.1 183 . if the warehouse is not licensed under the General Bonded Warehouse Act or was not established under the Tariff and Customs Code. [1953] 92 Phil. Ang Si Heng v. Wellington Department Store. Chan Chu [1948] 45 O. 616-617.2 1. The word ‘bonded’ may not be used as part of the trade name of a business enterprise operating a warehouse.exclusive right to use the word ‘lyceum’. C. name.1 1. Intellectual Property Code. 3968.1 1. B. Inc. as it is merely a contraction of the words ‘gas lamp’ and is therefore merely descriptive of the articles he is selling. People v. Republic Act 226.G. it is merely a geographical name and cannot be appropriated as a trade name. Legal Prohibitions A name may not be used as trade name if it is contrary to public order or morals and is liable to deceive trade circles or the public as to the nature of the enterprise identified by it. Geographical Names Since Wellington is the capital of New Zealand. 3964.

No business enterprise may use the words ‘financing company’. ‘trust corporation’. Section 13. Section 14 (c) . Section 6. ‘leasing company.1 1. 407. Republic Act 6939. ‘building and loan association’. ‘banker’. 184 . Republic Act 337. Republic Act 337. 408. Republic Act 4093. Section 6. Republic Act 6938.1 1. Section 14.1 1. 409. ‘bank’. as amended by Republic Act 8556. Section 124 (1). Republic Act 3779. 410.’ ‘financing and leasing company’. No business enterprises may use the word. 1 1.1 1. Section 3. 406. Section 16.1. Republic Act 247. No business enterprise may use the words ‘development bank’ as part its trade name unless it has been authorized to operate as a development bank by the Monetary Board. ‘banking’. No business enterprise may use the word ‘cooperative’ as part of its trade name unless it has been registered as a cooperative. and ‘trust company’ unless it is authorized to engage in these businesses by the Monetary Board. Republic Act 5980. or ‘finance and investment company’ as part of its business name it has not been authorized to operate as a financing or leasing company by the Securities and Exchange Commission. No business enterprise may use the words ‘savings and loan association’ as part of its trade name unless it has been authorized to operate as a savings and loan association by the Monetary Board.

Revised Charter of the Philippine National Bank. Section 32 (d).1 Specifically.2 (b). misleading or confusingly similar to one already registered by another corporation or partnership with the Securities and Exchange Commission or a sole proprietorship registered with the Department of Trade and Industry. likely to mislead the public.411. The Securities and Exchange Commission has adopted the following guidelines in the approval of the names of corporations and partnerships: a) The name must not be identical. No bank may use the word ‘national’ as part of its trade name except the Philippine National Bank.2 1.1 1. 2. Intellectual Property Code. Section 35. No business enterprise may use the words ‘rural bank’ as part of its trade name unless it has been authorized to operate as a rural bank by the Monetary Board. 185 . Investment Company Act. Confusing Similarity It is unlawful to use a trade name which is similar to a prior trade name. Subsection 165. 412. investment companies are prohibited from using a word which is deceptive or misleading as part of their trade name. 413. 414. Section 28. Republic Act 7353.1 1. D.

If the proposed name is similar to the name of a registered firm, the proposed name must contain at least one distinctive word different from the name of the company already registered. b) A tradename or trademark duly registered with the Intellectual Property Office can not be used as part of a corporate or partnership name without the consent of the owner of such tradename or trademark. c) If the name or surname of a person is used as part of a corporate or partnership name, the consent of such person or his heirs must be submitted except if that person is a stockholder, member, partner or a declared national hero. If such person can not be identified or is nonexistent, an explanation for the use of such name is required. d) The meaning of initials in the name must be disclosed in writing by the registrant. e) A name containing a term descriptive of a business different from the business of a registered company whose name also bears similar term used by the former may be allowed. f) The name should not be patently deceptive, confusing or contrary to existing laws. g) A name which contains a word identical to a word in a registered name shall not be allowed if such word was coined or was already appropriated by a registered firm, regardless of the number of the different words in the proposed name, unless the registered firm consents or this firm is one of the stockholders or partners of the entity to be registered.

186

h)

The name of an internationally known foreign corporation or one similar to it may not be used by a domestic corporation without the consent of the former.

i)

The words “engineer”, engineering”, or “architects” can not be used as part of a corporate name.

j)

The word “national” cannot be used by any stock corporation and partnership.

k)

The words “Asean”, “Calabarzon” and “Philippines 2000” can not be used by any corporation or partnership.

l)

The name of a dissolved firm can not be used by any other firm within three years after the approval of the dissolution by the Securities and Exchange Commission unless it is allowed by the last stockholders representing at least majority of the outstanding capital stock of the dissolved firm 1.
1. Memorandum Circular No. 14-00.

415.

The way decisions have developed, new business enterprises are

not allowed to adopt a trade name on the ground that it is confusingly similar to that of an existing business enterprise if two requisites are present: (a) the

proposed name contains a dominant word or phrase in the trade name of the existing business enterprise; and (b) they are engaged in the same line of business. Thus, in the following cases, the new business enterprises were not allowed to use a trade name on the ground of confusing similarity with that of an existing business enterprise:

187

Prior User a) Funeraria Paz

Later User a) Nueva Funeraria Paz

Nature of Business a). Funeral service1

b) Universal Textile Mills b) Universal Mills Inc. c) Armco Steel Corporation d) Philips Export B.V. c) Corporation Armco Steel Corporation d) Philips Industrial Development . Corporation e) Industrial Refractories Corporation of the Philippines e) Industrial Refractories Corporation of the Philippines f) Malaya Books, Inc. f) Malaya Publishing Corporation g) General Telephone Directory Company h) Tropical Flora Philippines, Inc. i) St. Cyr Academy, Inc. i) Lycee D’ St. Cyr, Inc. j) Human Resources & j) C & A Human g) General Directory Company h) Tropflora, Inc.

b) Textile mill2

c) Manufacturer of steel products3 d) Sale of chains, rollers, belts, bearings and cutting saws.4 e) Manufacture of refractory materials5

f) Publication of books6 g) Publication of telephone directory7 h) Sale of plants8

i) School9

j) Recruitment of

188

Services, Inc.

Resources & Services, Inc.

Employees10

k) Allied Thread Corporation l) Rolls Royce Corporation

k) Alliance Thread Company, Inc. l) Rolls Royce Industrial Corporation

k)

Manufacture of thread11

l)

Sale of automotive products12

m) Mechanical Handling m) Mechanical Handling Company, Inc.

m) Sale of equipment13

Engineering (Philippines), Inc.

n) Oleo Fats, Inc.

n) Oleo Manufacturing Corporation

n) Manufacture of products using oil and fats14

o) Orient Ships Management Philippines, Inc.
1. 2. 3.

o) OSM Shipping Philippines, Inc.

o) Recruitment of seaman15

Del Rosario v. Quiogue [1910] 15 Phil. 345, 348. Universal Mills Corporation v. Universal Textile Mills, Inc. [1977] 78 SCRA 62, 65. Armco Steel Corporation v. Securities and Exchange Commission [1987] 156 SCRA 822, 829.

4. 5.

Philips Export B. V. v. Court of Appeals [1992] 206 SCRA 457, 464. Industrial Refractories Corporation of the Philippines v. Industrial Refractories Corporation of the Philippines, CA –G.R. S.P No. 35056, June 16, 1995.

6. 7.

Malaya Books, Inc. v. Malaya Publishing Corporation, SEC Case No. 1478, June 29, 1979. General Telephone Directory Company v. General Directory Company, SEC Case No. 2039, September 30, 1981.

189

December 5. July 30. Inc. 10. Inc. v. Inc. 452. SEC Case No. Inc. Rolls Royce Industrial Corporation. b) Lakeview Health Resort b) Operation of a resort b) Lakeview Industrial Corporation c) Firestone Tire & Rubber c) Manufacture of tires for motor c) Firestone Ceramic. Rolls Royce Corporation v. SEC Case No. 9. 14. August 10. yarn and textiles2 c) Manufacture of ceramic wares3 190 . 353. Lycee D’ St. 13. 1999. C & A Human Resources & Services. 2846. 1998. Inc. Oleo Manufacturing Corporation. 1992. Nature of Business a) Operating a pawnshop Later User a) Pilipinas Loan Company.. Mechanical Handling Equipment Company. Inc. Inc. because the business enterprises were engaged in different lines of business: Prior User a) Filipinas Pawnshop. SEC AC No. v. Mechanical Handling Engineering (Philippines). v. Cyr. 2765. Orient Ship Management Philippines. v. SEC Case No. Inc. OSM Shipping Philippines. Inc. 1994. August 12. Inc. 1990. Nature of Business a) Lending money without engaging in pawnbroking1 b) Manufacture of fiber. the following cases held that there was no confusing similarity between the two trade names in question. v. 12. On the other hand. 1985. 07-98-5388... Allied Thread Company. April 24. SEC Case No. Inc. 11. Inc. St.. 15. 1987.8. Inc. Oleo Fats. Human Resources & Services. SEC Case No. May 22. v. Tropiflora. January 10. SEC-AC No. March 9. Alliance Thread Company. 10-97-5800. Benedict Investment Realty Corporation v. 3357. 1990. Inc. Cyr Academy.. 2570. 416. SEC Case No. Inc.

2. while the respondent was engaged in business as a shipping broker and forwarding agent. 1309. March 24. Pilipinas Loan Company. Valdes & Company vehicles d) Accounting d) Valdes Consultants d) Management consultancy4 417. the Securities and Exchange Commission declared the trade name of the respondent confusingly similar to that of the complainant. 1991. 1980. Intermodal Transport Forwarders. the Securities and Exchange Commission also considered that both firms were catering to a small class of highly sophisticated businessmen. Sta. In the Matter of Valdes Consultants. SP No. Inc. the Securities and Exchange Commission adjudged the 191 . October 31. The complainant was engaged in business as a shipping agent and intermodal carrier. Inc. 304. 3. Securities and Exchange Commission. v.Company Philippines d) Carlos J. SEC – AC No. 1984.. SEC Case No. Inc. In Manila Credit Corporation v. 1990. Firestone Tire & Rubber Company Philippines v. 1341. In the last case. The Securities and Exchange Commission took into consideration that their business activities were related and that they were dealing with the same market. 2045. SEC Case No. Inc. Romana v.R. 419. 1. 1982. 418. 1991. 4. Inc. SEC Case No. CA – G... SEC Case No.. 3347. v. August 2. Credit Manila. In Intermodal Shipping Agencies. October 24. July 27. Lakeview Industrial Corporation. Inc. 25782. Firestone Ceramics.

Web TV Philippines. 05-98-5983.. Letters intended for the respondent were being delivered to the complainant. 422. INFRINGEMENT AND REMEDIES The remedies for infringement of trademarks are also applicable to infringement of trade names. v. 420. 4. while the respondent was dealing in securities. The adoption of the name ‘Web TV’ coupled with the word ‘Philippines’ would give the public the impression that the respondent was a subsidiary of the complainant.3. 1999. Subsection 165. Subsection 165. and customers of the respondent were calling the office of the complainant.name of the respondent as confusingly similar to that of the complainant. Inc. Intellectual Property Code. the trade name of the respondent did not reflect the nature of its business. 421. 192 . In Web TV Networks. TRANSFER OF OWNERSHIP The rules on assignment of trademarks are also applicable to the assignment of trade names. 1 1. the Securities and Exchange Commission ordered the respondent to change its trade name to avoid confusing similarity. Inc. The complainant and the respondent were engaged in different lines of business. The complainant was engaged in financing.4. 3. What persuaded the Securities and Exchange Commission was the fact that there had actually been confusion. However. Intellectual Property Code. SEC Case No. as the respondent was engaged in trading. 1 1. April 8.

The impression produced may be the result of the peculiarity of configuration or of ornament or both. upon the mind of the observer. with respect to the thing observed. by means of lines. The characteristic features of a design may reside in the symmetry and proportion of the manufacture or in its decorative design or in the combination of both. 424. industrial designs are now registered instead of being patented. whether or not associated with lines or colours. 1 193 . It gives a special or distinctive appearance to the thing to which it is applied. INDUSTRIAL DESIGNS SOURCES – LEGISLATION Philippine law extended protection to industrial designs for the first time when Republic Act 165 took effect on 20 June 1947. if such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. The essence of a design resides in the appearance of the design as a whole and not in its elements individually or in the method of arrangement. 2. 1. However.CHAPTER 6. 423. This has been retained in the Intellectual Property Code. 426. 1 1. A design is that characteristic of a physical substance which. Intellectual Property Code. token is a whole. configuration and the like. make an impression through the eye. 425. SUBJECT MATTER OF PROTECTION An industrial design is any composition of lines or colours or any three-dimensional form. of uniqueness and character. images. Section 112.

Intellectual Property Code. 3. ed. 466. 194 . Intellectual Property Code. C. p.1 1.1.1. Inc. Rule 301. Manila. of an article of manufacture. form or combination of them. 1986). 1 Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order. which imparts an aesthetic and pleasing appearance to the article.2. an industrial design must be a new or original creation relating to the ornamental features of shape. Rules and Regulations on Utility Models and Industrial Design. patterns or colours must be inseparable from the article and incapable of existing alone merely as a scheme of surface ornamentation. Subsection 113. 2. The design which is embodied in any composition of lines. Commentaries and Jurisprudence on the Commercial Laws of the Philippines (rev. Martin. pattern or colours. 428. T. configuration. 427. Central Book Supply. Subsection 113. CONDITIONS OF PROTECTION Only industrial designs that are new or original are protected. health or morals are not protected. 1 1. whether or not associated with lines. To be registrable. 2. Vol.

An industrial design is not considered new if it differs from prior designs only in minor respects that it can be mistaken as a prior design by an ordinary observer. 431. A mere abstract impression or picture is not an industrial design. Rule 302.I. Subsection 119.1. ORNAMENTATION An industrial design which merely pleases the eye may be registered. Intellectual Property Code. NOVELTY The standard of novelty established for inventions applies to industrial design.1 1. Rules and Regulations on Utility Models and Industrial Designs. Rule 302.1 It must significantly differ from prior designs or combinations of prior designs. 1 195 . Rule 301. Rules and Regulations on Utility Models and Industrial Designs. An industrial design must be ornamental. the giving of a pleasing appearance to an object or article. Rule 301.1. Rules and Regulations on Utility Models and Industrial Designs. Ornamentation implies beauty.1. Rules and Regulations on Utility Models and Industrial Designs. but the period of non-prejudicial disclosure is reduced to six months. 432. 430. 429.1 1. 2 1. III. 2. The industrial design must show a variance which enhances the aesthetic beauty and attractive appearance of the article. INDUSTRIAL APPLICABILITY The industrial design must be capable of application to an article of manufacture. II.

I. or any part of it. Rules and Regulations on Utility Models and Industrial Design. Rule 301. T. Intellectual Property Code. or if the applicant is not the creator.1. Martin. d) A representation of the article of manufacture or handicraft by way of drawings. which can be made and sold separately. and e) The name and address of the creator. 466. photographs or other adequate graphic representation of the design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which design protection is claimed.An article of manufacture is anything which belongs to the useful or practical art. 1 1. a statement indicating the origin of the right to the industrial design registration. p. Information identifying the applicant.C. 196 . FORMALITIES APPLICATION A. 4.1 1. Subsection 114. An indication of the kind of article of manufacture or handicraft to which the design will be applied. Contents 433. 2. Every application for registration of an industrial design must contain the following: a) b) c) A request for registration of the industrial design.

including the signature of the applicant or his representative. Rule 309 (b) 435. Rule 309 (c). Brief description of the different views of the drawings.2 1. Multiple Industrial Designs The same application may be filed for two or more industrial designs if they relate to the same sub-class of the International Classification or to the same set or composition of articles. B. Rules and Regulations on Utility Models and Industrial Designs. Photographs or other graphic representations of the design may be submitted instead.1 The Bureau of Patents of the Intellectual Property Office may require that the application be accompanied by a specimen. 2. the following: a) b) c) d) The application must be accompanied by a specification containing Title.1 1. and they should be of substantially similar dominant design features that are embodied in a single design concept. Rules and Regulations on Utility Models and Industrial Designs. Claim. A specimen is a sample or unit of the industrial product that is deliberately selected for examination. Rules and Regulations on Utility Models and Industrial Designs. Characteristic-feature description of the design. The application must also be accompanied by drawings of the different views of the design showing its complete appearance. 436. Rule 311.1 They should not be patently distinct from each other. display or study and chosen as typical of its kind.434. A set of articles which is 197 .

Rule 305. Section 115. the Bureau of Patents of the Intellectual Property Office will order that the design be registered and a certificate of registration will be issued to the applicant. The Bureau of Patents of the Intellectual Property Office will examine whether or not the industrial design complies with the requirements for registration. Subsection 119. Intellectual Property Code. Rules and Regulations on Utility Models and Industrial Design. Rules and Regulations on Utility Models and Industrial Designs. If the conditions for the registration of an industrial design are fulfilled. 198 .1 1. III.1 1. C. 437. Priority The rules on priority of application under the first-to-file system applicable to inventions is also applicable to industrial designs. Rule 313.2 1.4.1 1. Intellectual Property Code.1.customarily sold or used together as a set may be the subject matter of a single application if the articles have the same design or substantially the same design. Intellectual Property Code. EXAMINATION 438. 2. Intellectual Property Code. Section 117. REGISTRATION AND PUBLICATION 439. Subsection 116. II.

OWNERSHIP AND TRANSFER The provision applicable to the ownership and the assignment of inventions are also applicable to the assignment of industrial designs. SCOPE OF EXCLUSIVE RIGHTS The scope of the exclusive rights of the owner of an industrial design is the same as that of the owner of a patent for an invention. Intellectual Property Code. 199 . Intellectual Property Code.1. 443. DURATION OF PROTECTION The term of the registration of an industrial design is five years from the filing date of the application. Rules and Regulations on Utility Models and Industrial Designs. Subsection 119.1 1. 1 1. Intellectual Property Code. Registration of an industrial design will be published in the form of bibliographic data and representative drawing in the Intellectual Property Office Gazette within six months after registration. 6. 1 1. Intellectual Property Code. However. 7. Subsection 118.1. Subsection 119.1.1 The registration may be renewed for not more than two consecutive periods of five years each. 5. 441. Subsection 119. Rule 314. 2 1. 442.440. 444.1. 8. industrial designs may not be the subject of compulsory licensing. LIMITATIONS OF THE SCOPE OF PROTECTION The limitations on the scope of the protection granted to owners of the patents for inventions are applicable to owners of industrial design.1 1.

705. Intellectual Property Code. DEFENSE If the essential elements of an industrial design which is the subject of an application were obtained from the creation of another person without his consent. may petition the Director 200 .1 Thus. However.1 1. Savage v. he cannot be held liable for unfair competition. 447. 9.1. the owner of the industrial design cannot invoke the protection of the law against the other person whose creation he copied. Taypin.2. Intellectual Property Code. 2. I. any person. someone who manufactured wrought iron furniture sets similar to those covered by an industrial design is guilty of infringement. because the definition of unfair competition in the Intellectual Property Code does not include industrial designs. Subsection 119.2. [2000] 331 SCRA 697. CANCELLATION OF REGISTRATION At any time during the term of the registration of an industrial design. 10. Subsection 119.2 1. II. 446. upon payment of the required fee. Intellectual Property Code. Subsection 118. INFRINGEMENT AND REMEDIES CONCEPT AND REMEDIES The provisions applicable to the infringement of a patent for an invention and the remedies for the infringement are applicable to the infringement of an industrial design. 445.2.

1 1. 1 1. 94 Phil.1. Agrava [1954]. 201 . This may be made by altering the affected features of the design. or The subject matter of the industrial design extends beyond the content of the application as originally filed. Subsection 119. 448. 1 1. The subject matter is not new. 739. If the ground for cancellation relates only to a part of the industrial design. Intellectual Property Code. the cancellation should be limited to that extent only. Subsection 120.2.of Legal Affairs of the Intellectual Property Office to cancel the registration on any of the following grounds: a) b) c) The subject matter of the industrial design is not registrable. the registration of the design for ornamental strips placed on the borders of suitcases which were merely copied from the catalogues of foreign manufacturers of suitcases may be cancelled. 449. Thus. 741-742. Co San v. Intellectual Property Code.

450.LEGISLATION I. II.1 The Code of 1870. The Revised Penal Code.000 pesos any public officer who reveals the secrets of any private individual which became known to him by reason of his office. Griño . 202 . 451. Article 230 of the Revised Penal Code penalizes with imprisonment from one month and one day to six months and a fine not exceeding 1. SOURCES .Aquino. Inc. Sections 3 (k) and 9 of the Anti-Graft and Corrupt Practices Act penalize with imprisonment from one to ten years and perpetual disqualification from public office any public officer who divulges information of a confidential character acquired by his office or by him on account of his official position to unauthorized persons or releases such information in advance of its authorized released date.CHAPTER 7. as modified in accordance with the Penal recommendation of the Code Commission for Overseas Provinces. 2. 534). No. Public Officers There are various laws which penalize the disclosure of trade secrets by public officers. was extended to the Philippines.. Central Professional Books. [1915] 31 Phil. Vol.2 1. R. (4th ed. Tamparong. 453. 321. 452. Aquino and C. 1997). TRADE SECRETS/CONFIDENTIAL INFORMATION I. Spanish This was taken from the Spanish Penal Code of 1870. 323. by the Royal Decree of 4 September 1884 issued by King Alfonso XII. United States v. Quezon City. p.

for the following purposes: a) b) to further his private interest or to give undue advantage to anyone. style or work. operations. or both such fine and imprisonment any official.000 pesos or imprisonment from two years to five years. or a fine not exceeding 5.000 pesos or both such imprisonment and fine. or confidential information regarding the business of any taxpayer which came to his knowledge in the discharge of his official duties. or estate of any taxpayer. agent. Section 270 of the National Internal Revenue Code of 1997 punishes with a fine of 50. or to prejudice the public interest. Under Article 81 of the Omnibus Investments Code. income. 203 . all applications and their supporting documents filed with the Board of Investments are confidential and may not be disclosed to any person. 456. 455. Sections 7 (c) and 11 of the Code of Conduct and Ethical Standards for Public Officials and Employees penalize with imprisonment not exceeding five years.000 to 100.454. and disqualification to hold public office a public official or employee who uses or divulges confidential or classified information which became officially known to him by reason of his office and which is not made available to the public. the secrets. or apparatus of any manufacturer or producer. except with the consent of the applicant or on order of a court. or employee of the Bureau of Internal Revenue who divulges to any person information regarding the business.

C. 92. R. employee or worker of any manufacturing or industrial establishment who. The person in charge. drugs. III. any information concerning any method or process involving food. Public Officers Public officers are prohibited from disclosing the secrets of private individuals to maintain faith and trust in public service. Vol.II. 457. p.. cosmetics and devices which as a trade secret is entitled to protection. to the prejudice of its owner. reveals its industrial secrets. Aquino. 2. Section 40 (f) of the Consumer Act prohibits any person form using to his advantage or revealing to anyone except the Department of Health or to the courts when it is relevant in any judicial proceeding under the Consumer Act. It is an essential element of these crimes that the public officer acquired knowledge of the secrets because 204 . 1 1. and Grino-Aquino. 460. This provision was also taken from the Spanish Penal Code of 459. Private Individuals Article 292 of the Revised Penal Code penalizes with imprisonment from six months and one day to four years and a fine not exceeding five hundred pesos. 1870. THE PROTECTION OF TRADE SECRETS/CONFIDENTIAL INFORMATION I. 458.

1950).of his office. b) The manufacturing or industrial establishment has an industrial secret which the offender has learned. Rex Book Store. 208. 208. 205 . S. E. p. 431. Reyes. II. 374. 2. p.. c) He revealed such secrets without authority. b) He came to know of the secrets of a private individual by reason of his office. Tomo II. Derecho Penal (2nd ed. If he acquired his knowledge through some other way. Barcelona. 373. Tomo IV. Puig Peña. Casa Editorial. P.. Derecho Penal (12th ed. Manila. Criminal Liability 462. Tomo II. Puig Peña. The Revised Penal Code (145h ed. L. The following are the elements of violation of Article 292 of the Revised Penal Code: a) The offender is a person in charge. he is not criminally liable. Private Individuals A.. F. F. Vol. It is sufficient that they were revealed to another person even if the disclosure was made confidentially. p. Viada. B. 2000). p. 1. 2.1 It is not necessary that the secrets be disclosed publicly.2 It is also not necessary that the private person whose secrets were divulged be prejudiced. The following are the elements of violation of Article 230 of the Revised Penal Code: a) The offender is a public officer. Vol. Bosch. Barcelona. Cuello Calon.1 1. 1967). employee or worker of a manufacturing or industrial establishment. 461. 2 1.

It is not necessary that the industrial secret be patented. Puig Peña. if the process of the manufacturing or industrial establishment is being used generally. Establecimiento Tipografico de Hijos de J. or showing to him plans. p. Tomo V. Vol. Even if the offender has resigned when he revealed the industrial secret. 846. Garcia.1 1. El Codigo Penal de 1870 Concordado y Comentado. 2. 419. Viada. 757. The disclosure of the industrial secret may be made by any means. 758.c) d) The offender reveals such secret. A. p. Tomo II. Vol. 2.1 206 . E. People v. 102. it is not a secret and its disclosure is not a crime. What is decisive is that he learned of the industrial secret when he was still an employee. p. he is still liable. p. E. Madrid. L. 2. 463. F. Prejudice is caused to the manufacturing or industrial establishment. Groizard. B. Tomo II. p. 1913). 608.. knowingly allowing another person desiring to discover the industrial secret to enter the establishment.A. 2. Cuello Calon. 1 1. documents or formulas containing the industrial secret. Vol. (2nd ed. De la Merced. VI.1 However. 972. 465. 2 Thus. Cuello Colon. 2. [1979] 24 CAR (2s) 967. Reyes. a former foreman of a manufacturer of wire mesh who made a wire mesh machine for somebody else could not be convicted. because the wire mesh machine is commonly used and did not involve any industrial secret. such as writing a book or an article for a periodical. [1927] Vol. 3 1. p. 3. 464. S.

E. commercial or industrial enterprises or in labor through the use of force. p. 2. 207 . Tolentino. 2. 758. machination. A. 420. p. Cuello Calon. Cuello Calon. 120. Tomo II. 846. Groizard. 2 1. p. there is no criminal liability. 758. Tomo II. p. The concept of unfair competition under this provision is broad.1 1. oppressive or high-handed method shall give rise to a right of action by the person who thereby suffers damages. Tomo II. deceit. Vol. Groizard. p. 758. p. or any other unjust. F. 2. Vol. 846. Cuello Calon. 2. intimidation. E. If there was no prejudice to the owner of the manufacturing or commercial establishment. 467. A.” 468. Relation to Civil Code Article 28 of the Civil Code provides: “Unfair competition in agricultural. if the employees uses the industrial secret for his own benefit. B. Puig Peña.However. Vol. E. 466. he does not violate the law since he has not disclosed it to another person. It includes even cases of discovery of the trade secrets of a competitor. p.1 1.

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