Professional Documents
Culture Documents
Trademark
INTELLECTUAL PROPERTY It is any visible sign capable of distinguishing the
goods or services of an enterprise and shall include
Intellectual Property a stamped or marked container of goods (IPC,
It refers to creations of the mind: inventions, literary Section 121.1; Elidad Kho v. CA, G.R. No. 115758,
and artistic works, symbols, names, images, and March 19, 2002).
designs used in commerce.
Patentable Invention
It means the legal rights which result from It refers to any technical solution of a problem in any
intellectual activity in the industrial, scientific, literary field of human activity which is new, involves an
and artistic fields (World Intellectual Property inventive step and is industrially applicable (IPC,
Organization (WIPO) Intellectual Property Handbook Sec. 21).
(2004)).
Layout Design (Topography) of an Integrated
Note: There are NO property rights protected by law Circuit
in mere ideas or mental conceptions. Specifically, It is a product, in its final form or an immediate form,
even if expressed or embodied in a work, news of in which the elements, at least one of which is an
the day and others, having the character of mere element, and some or all of the interconnections are
items of press information or any official text, integrally formed in and/ or on a piece of material
translation or work of the government and which is intended to perform an electric function
(INTELLECTUAL PROPERTY CODE OF THE (THE AGREEMENT ON TRADE RELATED
PHILIPPINES [IPC], Sec. 175). Those works under ASPECTS OF INTELLECTUAL PROPERTY
Non-Patentable Inventions are also not protected by RIGHTS AGREEMENT, Art. 35 [hereinafter TRIPS
law. AGREEMENT]).
EXECUTIVE COMMITTEE SUBJECT COMMITTEE MEMBERS
SYLVESTER AUSTRIA overall chairperson, LARA ANGELA MAGULTA subject chair, Jeffrey Bajita, Mark Julius Batugal,
REYNOLD ORSUA chairperson for JOSE AMELITO BELARMINO II assistant Frances Juliene Buendia, Dan Yunus
academics, JOE VINCENT AGUILA subject chair, CAMILLE MAY MEDINA Cabrera, Jennel Chu, Edgar Cruz, Charles
chairperson for hotel operations, LYNDON edp, ROWNEYLIN SIA negotiable De Belen, Jennyllette Dignadice, Clarissa
RUTOR vice-chairperson for operations, instruments law, ALFREDERICK Heromina Esguerra, Pamela Faller,
RODEL JAMES PULMA vice-chairperson ARANETA insurance law, YVETE MARIE Hanna Sharleen Florendo, Celine-Maria
for secretariat, DENISE DIANE SOLA, transportation law, LOWELL Janolo, Charlotte King, Lorena Lerma
Lunar, Rosecellini Mamaclay, Jasmine
MAGBUHOS vice-chairperson for finance, FREDRICK MADRILENO, corporation
Rose Maquiling, Florianne Marzan, Rose
IAN DANIEL GALANG vice-chairperson for law, LE BON EIRRES PASCUA, law on Anne Menor, Trixie Jane Neri,
electronic data processing, JOMARC intellectual property, KHARIS Charmagne Pedrozo, Louisa Marie
PHILIP DIMAPILIS vice-chairperson for MANAHAN, banking law, REI-ANNE Quintos, Toni Faye Tan, Patricia Ester
logisticsALBERTO RECALDE, JR. vice- SANTOS, special laws Verzosa
chairperson for membership
Layout Design (Topography) repression of unfair competition to which the
It refers to the three-dimensional disposition, Philippines is also a party; or
however expressed, of the elements, at least one of 2. Extends reciprocal rights to nationals of the
which is an active element, and of some or all the Philippines by law shall be entitled to benefits to
three-dimensional disposition prepared for an the extent necessary to give effect to any
integrated circuit intended for manufacture (IPC, provision of such convention, treaty, or reciprocal
Sec. 112.3). law, in addition to the rights to which any owner
of an intellectual property right is otherwise
For a layout-design to be entitled to protection it entitled by the IPC (IPC, Sec. 3).
must be original in the sense that they are the result
of their creators’ own intellectual effort and are not If a foreign corporation not doing business in the
commonplace among creators of layout-designs Philippines is suing as a party of a treaty to which
(topographies) and manufacturers of integrated the Philippines is a signatory, the fact that it is suing
circuits at the time of their creation. under Section 3 of R.A. 8293 need not be alleged as
the court must take judicial notice of such fact as it is
A layout-design consisting of a combination of embodied in and supplied by the Paris Convention
elements and interconnections that are which forms part of the law of the land, provided that
commonplace shall be protected only if the the party suing substantially complied with the
combination, taken as a whole, is original (IPC, Sec requirements of the law (Puma Sportschufabriken
113.4). Rudolf Dassler, K.G. v. IAC, G.R. No. 75067,
February 26, 1988).
Technology Transfer Arrangements
These are contracts or agreements involving the However, if a foreign corporation is suing under any
transfer of systematic knowledge for the other agreement other than R.A. 8293, failure to
manufacture of a product, the application of a allege reciprocity is fatal to foreign corporation’s
process, or rendering of a service including cause, it being shown that it failed to comply with the
management contracts; and the transfer, requirements of the law (Leviton Industries, Inc. v.
assignment or licensing of all forms of intellectual Salvador, G.R. No. L- 40163, June 19, 1982)
property rights, including licensing of computer
software except computer software developed for Principle of Reverse Reciprocity
mass market (IPC, Sec. 4.2). Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed
Undisclosed Information by the law of a foreign country on a Philippine
It refers to information which: national seeking protection of intellectual property
1. Is a secret in the sense that it is not, as a body or rights in that country, shall reciprocally be
in the precise configuration and assembly of enforceable upon nationals of said country within
components, generally known among or readily Philippine jurisdiction (IPC, Sec. 231).
accessible to persons within the circles that
normally deal with the kind of information in National Treatment Principle
question; The Philippines, upon becoming a member of the
2. Has commercial value because it is a secret; and World Trade Organization (WTO), has adhered to
3. Has been subject to reasonable steps under the the TRIPS, which provides that protection afforded
circumstances, by the person lawfully in control to the member-state (with respect to intellectual
of the information, to keep it in secret (TRIPS property) must be extended to the nationals of other
AGREEMENT, Art. 39). member-states.
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Angara, G.R. No. 118295, May 2, 1997). PCT likewise provides for an international search
and written opinion (AMADOR, Patents supra at
2. Agreement on Trade-Related Aspects of 18).
Intellectual Property Rights (TRIPS)
Substantive Provisions:
a. National Treatment – Each member of the PATENTABILITY
WTO must treat the nationals of every other S E C T I O N S 21-27
member as favorable as its own with respect
to intellectual properties. Patentable Invention
b. Most-Favored Nation Treatment – It precludes It refers to any technical solution of a problem in any
preferences against members’ nationals in field of human activity which is new, involves an
bilateral or smaller multilateral compacts with inventive step and is industrially applicable.
members or non-members.
c. Public Order as an Exception to Patentable Requisites of Patentability: (TINI-P)
subject matter – Members are allowed to 1. Any Technical solution of a problem in any field
exclude invention, the prevention of which of human activity;
within their territory is necessary to protect 2. Inventive Step;
public order or morality, including the An invention involves inventive step if, having
protection of human, animal, plant, life, health regard to prior art, it is not obvious to a person
or to avoid serious prejudice to the skilled in the art at the time of the filing date or
environment. priority date of the application claiming the
d. Exclusive Rights invention (IPC, Sec. 26).
i. The minimum level of exclusive rights: 3. Novelty;
ii. Product patentee: Right to prevent others, An invention shall be considered new if it does
without authorization, from making, using, not form part of a prior art (IPC, Sec. 23).
offering for sale, selling, or importing the 4. Industrial applicability; and
patented product. An invention that can be produced and used in
iii. Process patentee: Right to prevent others, any industry (IPC, Sec. 27).
without authorization, from using the 5. Patentable Subject Matter
process and from using, offering for sale, An invention that does not fall within the
selling, or importing the product obtained prohibitions of a Non-Patentable Invention under
directly by that process. Sec. 22 of the IPC.
iv. In either case, the rights must be capable of
assignment, transfer by succession and A Person Skilled in the Art
transfer by licensing. He is presumed to be an ordinary practitioner aware
e. Aspects of Compulsory Licensing of what was common general knowledge in the art
i. Procedural: Considered on its individual at the relevant date. He is presumed to have
merits, on a case-to-case basis and only knowledge of all references that are sufficiently
after negotiations toward a commercial related to one another and to the pertinent art and to
license over a reasonable period of time have knowledge of all arts reasonably pertinent to
have failed to bear fruit; the particular problems with which the inventor was
ii. Substantive: Terms of the license; involved. He is presumed also to have had at his
iii. Non-exclusive and non-transferable; and disposal the normal means and capacity for routine
iv. Adequate remuneration to the patentee work and experimentation (RULES AND
based upon the economic value of the REGULATIONS ON INVENTIONS, Rule 207).
authorization.
f. Term of Protection Note: If application relates to a Utility Model,
i. The protection must be available for at least requisite 3 (Novelty) is not necessary. If the
a period of twenty (20) years counted from application relates to an Industrial Design,
the filing date. requisites 3 (Novelty) and 4 (Industrial Applicability)
are not necessary.
3. Patent Cooperation Treaty (PCT)
A U.S. applicant can file an "international
application" in a standardized format in English in
the U.S. Receiving Office and have that
application acknowledged as a regular national or
regional filing in as many Contracting States to
the PCT as the applicant "designates" or "elects". Utility Model v. Industrial Design
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use for a known substance; or
3. The mere use of a known process, unless such First-to-File Rule
known process results in a new product that Patent priority is determined by which inventor was
employs at least one new reactant (R.A. 9502, the first to file a patent application rather than who
Sec. 5). was the first to actually invent it. This is the system
of patent registration adopted under the IPC in lieu
Prior Art (Sec. 24, IPC) of the first-to-invent system.
General Rule
Prior art shall consist of: If two or more persons have made the invention
1. That which has been made available to the public separately and independently of each other, the
anywhere in the world before the filing date or the right to the patent shall belong to the person who
priority date of the application claiming the filed an application for such invention, or where two
invention; or or more applications are filed for the same invention,
2. The whole contents of an application for a patent, to the applicant who has the earliest filing date, or
utility model, or industrial design registration, filed the earliest priority date (IPC, Sec. 29).
or effective in the Philippines, with a filing or
priority date that is earlier than the filing or priority First-to-Invent Rule
date of the application. The right to patent belongs to the first true and
actual inventor, his heirs, legal representatives or
Note: Under item 2, the application that has validly assigns (AMADOR, Patents, supra at 253).
claimed the filing date of an earlier application under
Right of Priority (IPC, Sec. 31), shall be prior art with Note: The Philippines adheres to the first to file rule.
effect as of the filing date of such earlier application.
Also, the applicant or the inventor identified in both General Rule: The conditions of novelty and
applications must not be one and the same (IPC, inventive step must exist at a certain date, generally
Sec. 24). the date on which the application is filed.
When two or more persons have jointly made an Rules for Multiple Priorities
invention, the right to a patent shall belong to them 1. An application can claim more than one priority
jointly (IPC, Sec. 28). even from different countries. If more than one
PATENT APPLICATION
S E C T I O N S 32-39
Requirements for Filing Applications
1. The patent application, shall be in Filipino or
English and shall consist of: (RDDCAI)
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a. Request, which shall contain the following:
i. Petition to grant patent; 4. Unity of Invention
ii. Applicant’s name and other data; The application shall relate to one inventive step
iii. Inventor and the agent; only or to a group of inventions forming a single
iv. Title of the invention; general inventive step.
v. If with claim for convention priority, it shall
contain the file number, country of origin Requirement for Restriction/ Requirement of
and the date of filing in the said country Division
where the application was first filed; If two or more independent and distinct inventions
are claimed in a single application and they are of
vi. Resident agent/representative if any and the
such nature that a single patent may not be issued
address of the agent; and
to cover them, the applicant will be required to elect
vii. Signature of the applicant. the invention to which his claim is restricted
(AMADOR, Patents, supra at 348).
b. Description of the Invention
Disclosure of the Invention
The application shall disclose the invention in PROCEDURE FOR THE GRANT
a manner sufficiently clear and complete for it
to be carried out by a person skilled in the art.
OF THE PATENT
S E C T I O N S 40-60
In case of microbiological process or the
product thereof involving the use of a micro- Requirements to Get a Filing Date
organism which cannot be sufficiently
On receipt of the application, an examiner checks if
disclosed, and such material is not available
the application includes the following requirements:
to the public, the application shall be
1. Request for a Philippine patent;
supplemented by a deposit of such material
2. Name and address of the applicant; and
with the international depository institution.
3. Description and claims of the invention in
English or Filipino (the extent of protection
c. Drawings necessary for the understanding conferred by a patent is determined by the
of the invention claims) (IPC, Sec. 40).
d. One or more Claims
The claims shall define the matter for which Note: If the application does not contain all the
protection is sought; must be clear, concise, elements, the filing date should be the date when all
and shall be supported by the description
the elements are received. If the deficiencies are not
e. Abstract
remedied within the prescribed time limit, the
It shall consist of a concise summary of the
application shall be considered withdrawn.
disclosure of the invention contained in the
description, claims and drawings in preferably
Payment of the filling fee is not included.
not more than one hundred fifty (150) words.
f. Identification of the Inventor
Filing Date is of great importance in the
If the applicant is not the inventor, he may be determination of who has the right to the patent in
required to submit authorization case of dispute with another applicant for the same
invention.
2. Appointment of Agent or Representative
An agent or representative is required if the An amendment of an application for patent which is
applicant is a non-resident of the Philippines.
seasonably and properly made and which does not
The non-resident applicant must appoint and
involve new matter relates back and speaks of the
maintain a resident agent or representative in the
date of the original application, the whole matter
Philippines upon whom notice or process for
being regarded as one continuous application.
judicial or administrative procedure relating to the
application for patent or the patent may be
Application
served. It is filed with the Bureau of Patents (BOP) of the
Intellectual Property Office (IPO) (IPC, Sec. 32).
3. Request
It shall contain: Procedure for Application
a. A petition for the grant of the patent; 1. Formality Examination
b. The name and other data of the applicant;
It refers to the determination of whether the
c. The name of the inventor and the agent; and
application form has complied with the IP Code
d. The title of the invention.
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Upon petition, notice and hearing by any interested
Concept of Divisional Applications person, and after payment of the required fee.
When two or more inventions are claimed in a single The petition shall:
application but are of such a nature that a single 1. Be in writing;
patent may not be issued for them, the applicant is 2. Be verified;
required “to divide” or limit the claims to whichever 3. Specify the grounds upon which it is based;
the invention he may elect, whereas those 4. Include a statement of facts; and
inventions not elected may be made the subject of 5. Attach copies of printed publications, or of
separate applications which are called “divisional patents of other countries, together with their
applications” (Smith Kline Beckman Corp. v.CA, translations in English.
G.R. No. 126627, August 14, 2003).
Effect: Termination of rights conferred by the
Doctrine of File Wrapper Estoppel patent.
Patentee is precluded from claiming as part of
patented product that which he had to excise or Grounds: (CIN)
modify in order to avoid patent office rejection, and 1. Patent is Contrary to public order or morality
he may omit any additions he was compelled to add 2. Insufficient disclosure; and
by patent office regulations. It balances the Doctrine 3. What is claimed as the invention is not New or
of Equivalents. patentable (IPC, Sec. 61).
Inequitable conduct is the failure to disclose material Where the grounds for cancellation relate to some of
information, or the submission of false material the claims or parts of the claim, cancellation may be
information, with intent to deceive. A patent holder effected to such extent only.
cannot enforce his rights if he has committed
inequitable conduct in the prosecution of his patent
application. REMEDIES OF A PERSON WITH
Doctrine of Prosecution History Estoppel A RIGHT TO PATENT
Prosecution history estoppel applies when an S E C T I O N S 67-70
applicant during patent prosecution narrows a claim
to avoid the prior art, or otherwise to address a Remedies of Persons Not Having the Right to a
specific concern that arguably should have rendered Patent
the claimed subject matter unpatentable. If a person other than the applicant is declared by
final court order or decision as having the right to the
It precludes a patentee from obtaining under the patent, he may within three (3) months after such
doctrine of equivalents coverage of subject matter decision has become final:
that has been relinquished during the process of 1. Prosecute the application as his own;
patent application (FUNA, Intellectual Property Law 2. File a new patent application;
(2012), p. 154) [hereinafter FUNA, Intellectual 3. Request that the application be refused; or
Property]. 4. Seek cancellation of the patent (IPC, Sec. 67.1).
Similar to the File Wrapper Estoppel, this is used to Remedies of the True and Actual Inventor
indicate when a person who has filed a patent If a person, who was deprived of the patent without
application, subsequently makes narrowing his consent or through fraud is declared by final
amendments to the application to accommodate the court order or decision to be the true and actual
patent law. Such person may be precluded from inventor, the court shall order for his substitution as
invoking the doctrine of equivalents to broaden the patentee, or at the option of the true inventor, cancel
scope of their claims to cover subject matter ceded the patent, and award actual and other damages in
by the amendments. his favor if warranted by the circumstances (IPC,
Sec. 68).
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An infringement also takes place when a device
Infringement (MUSSI) appropriates a prior invention by incorporating its
The Making, Using, offering for Sale, Selling, or innovative concept and, although with some
Importing a patented product or a product obtained modification and change, performs substantially
directly or indirectly from a patented process, or the the same way to achieve the same result. In
use of a patented process without the authorization other words, the principle or mode of
of the patentee (IPC, Sec. 76.1). operation must be the same or substantially the
same. The doctrine of equivalents thus requires
Contributory Infringer satisfaction of the function-means-and-result test,
He actively induces the infringement of a patent or the patentee having the burden to show that all
provides the infringer with a component of a three components of such equivalency test are
patented product or of a product produced because met (Smith Kline Beckman v.CA, G.R. No.
of a patented process knowing it to be especially 126627, August 12, 2003).
adopted for infringing and not suitable for substantial
non-infringing. He is jointly and severally liable with The doctrine of equivalents cannot be applied
the infringer. when the infringing invention is clearly beyond
what is written in the claim.
Doctrine of Patent Exhaustion
It espouses that the patentee who has already sold
his invention and has received all the royalty and REMEDIES FOR PATENT
consideration for the same will be deemed to have INFRINGEMENT
released the invention from his monopoly. The
invention thus becomes open to the use of the 1. Action for damages plus attorney’s fees and
purchaser without further restriction (CATINDIG, other expenses for litigation
Notes on Selected Commercial Laws: A Guide for Any patentee, or anyone possessing any right,
Bar Reviewees (2003)). title or interest in and to the patented invention,
whose rights have been infringed, may bring a
Steps in Determining the Presence of civil action before a court of competent
Infringement: jurisdiction, to recover from the infringer such
1. Determine if there is literal infringement. If there damages sustained thereby, plus attorney's fees
is, defendant is liable. and other expenses of litigation, and to secure an
2. If there is no literal infringement, then the doctrine injunction for the protection of his rights (IPC,
of equivalents should be applied. Sec. 76 [2]).
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11. Those which require that the technology recipient a. Registration of the Technology Transfer
shall not contest the validity of any of the patents Agreement with the Bureau of Registration
of the technology supplier; is not needed if it does not contain any of the
12. Those which restrict the research and prohibited clauses and contains all the
development activities of the licensee designed mandatory provisions.
to absorb and adapt the transferred technology to b. Registration is needed if it contains any of the
local conditions or to initiate research and prohibited clauses or lacks any of the
development programs in connection with new mandatory provisions, otherwise the same
products, processes or equipment; shall be unenforceable.
13. Those which prevent the licensee from adapting Right of the Licensor
the imported technology to local conditions, or Unless otherwise provided in the technology transfer
introducing innovation to it, as long as it does not agreement, the licensor shall have the right to:
impair the standards prescribed by the licensor; 1. Grant further licenses to third person; and
14. Those which exempt the licensor from liability for 2. Exploit the subject matter of the technology
non-fulfillment of his responsibilities under the transfer agreement.
technology transfer arrangement and/or liability
arising from third party suits brought about by the Right of the Licensee
use of the licensed product or the licensed To exploit the subject matter of the technology
technology; and transfer arrangement during the whole term of the
15. Other cases with equivalent effects. agreement.
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surname, firm name, device or word used by
manufacturers, industrialists, merchants, and others Trademark v. Goodwill
to identify their businesses, vocations or Trademark Goodwill
occupations (Converse Rubber Corp., v. Universal
Rubber Products, Inc., G.R. No. L-27906, January 8, Reputation and public
Right which protects the
1987). confidence that a
interests of producers in
business venture has
their marks and in the
Principles earned through a period
goodwill earned.
1. The right to the mark is separate and distinct from of creditable dealings.
the business using such mark (IPC, Sec. 149.1). Trademark v. Label
2. The right of registration belongs to the owner of
Trademark Label
the mark (Unno Commercial Enterprises, Inc. v.
General Milling Corp., G.R. No. L-28554, Merely names what is
February 28, 1983). Designed to identify the within the container or
user or origin. package; may or may
Functions of a Trademark: not be trademark.
1. To indicate the origin of the goods to which they
are attached; In practice, a word, a name or a phrase, coupled
2. To guarantee the standard of quality of the with indicators of business organization, such as
goods; and “Inc.”, “Corp.” or “Co.” will not be registered as
3. To advertise the goods (Mirpuri v. CA, G.R. No. trademarks or service marks.
114508, November 19, 1999).
The IPC no longer provides for prior use as a
Trademark v. Trade Name condition for ownership of a mark (IPC, Sec. 122).
Registration is the sole basis. However, a trade
Trademark Trade Name
name or business name may be acquired by prior
Separate Existence use and need not be registered.
Has an existence
distinct from the Acquisition of Trademark
existence of the Attached to the natural A trademark is acquired through registration with the
proprietor or juridical or juridical person who IPO. Registration is necessary before one can file
person doing business does business and an action for infringement.
and producing the produces the goods or
goods or the services services. Prior use in the Philippines is not required before
offered by such person registration. However, there must be an actual use
or enterprise. after registration.
Examples
For the requirement of "actual use in commerce in
Nike or Coca-Cola (the
the Philippines" before one may register a
The Nike “swoosh” or latter is also an
trademark, trade name and service mark under the
the check mark looking example of the trade
law pertains to the territorial jurisdiction of the
logo or “Big Mac” name used as a
Philippines and is not only confined to a certain
trademark.
region, province, city or barangay (McDonald’s
Purpose Corporation v. McJoy Fastfood Corporation, G.R.
Designates the goods Identifies and No. 166115, February 2, 2007).
or services offered by distinguishes an
person or enterprise. enterprise. The Philippines is a signatory to the Paris
Registration Convention for the Protection of Industrial Property.
Must be registered in No need to register in Article 8 of the Paris Convention provides that a
order to secure order to secure trade name shall be protected in all countries of the
protection for them. protection for them. Union without the obligation of filing or registration,
whether or not it forms part of the trademark This
Transferability provision has been incorporated in Section 37 of RA
Change of ownership of No. 166 (Fredco Manufacturing Corporation v.
May be transferred with trade name must be President and Fellows of Harvard College, G.R. No.
or without transfer of made with transfer of 185917, June 1, 2011).
the business (IPC, Sec. enterprise or part
149.1) thereof (IPC, Sec.
165.4)
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General Rule:
Determinants: (UMD-RR-EEE-CSLI) Descriptive name, word or phrase of the character,
1. The duration, extent and geographical area of qualities or composition of an article cannot be
any Use of the mark; registered as trademark or trade name.
2. The Market share in the Philippines and other
countries of the goods/services to which the mark Exceptions:
applies; 1. If used in an arbitrary or fanciful manner and with
3. The degree of the inherent or acquired Distinction no relation to the product it identifies;
of the mark; 2. If used as part of coined mark;
4. The quality-image or Reputation acquired by the 3. If used as part of composite mark; and
mark; 4. If it acquired a secondary meaning.
5. The extent to which the mark has been Doctrine of Secondary Meaning
Registered in the world; While as a general rule, generic, indicative or
6. The Exclusivity of the registration attained by the descriptive marks ([j], [k], [l] of Sec. 123.1) are non-
mark in the world; registrable, when such kind of mark has become
7. The Extent of use of the mark in the world; distinctive, because of its long, continuous and
8. The Exclusivity of use in the world; exclusive use for five (5) years, as used in
9. The commercial value attributed to the mark in connection with the applicant's goods or services in
the world; commerce and in the mind of the public indicates a
10. The record of Successful protection of the rights single source to consumers, it may be registered
in the mark; (R.A. 8293, Section 123 [2]).
11. The outcome of Litigations dealing with the issue
of whether the mark is well-known; and Example: “Ang Tibay” for shoes (Ang v. Teodoro,
12. The presence or absence of Identical or similar G.R. No. L-48226, December 14, 1942)
marks validly registered or used on other similar
goods (RULE ON TRADEMARKS, Rule 102). Composite Marks
Marks consisting of two or more elements or
IPC, Sec. 123.1 (e) IPC, Sec. 123.1 (f) combination of words, phrases, designs, symbols or
Well-known mark may color schemes. Although they cannot be registered
or may not be Registered in the by themselves, together they may be a part of a
registered in the Philippines. composite mark as long as they provide a
Philippines. disclaimer. The person who registers them as part of
a mark will not acquire ownership thereto.
Mark is used for Goods or services
Example: “20th Century Nylon Shirts Factory”
identical or similar goods between the well-known
must be required to disclaim “nylon” and “shirts
or services as that of the mark and that applied for
factory”.
well-known mark. are not similar.
Coined Marks
Rights of a Well-known Mark: Marks may be registered even if they are
1. Right to be protected whether or not it is contractions of or coined from generic and
registered in the Philippines; descriptive terms.
2. If registered, extension of protection to goods and Examples: “Starbrite” for metal polish, “Gaslam”
services which are not similar to those in respect for lamps, and “Mirrorlike” for furniture and floor
of which the mark is registered, provided that: polish are corruptions or coined terms for “star
a. The use of the mark in relation to unrelated or bright”, “gas lamp”, or “mirror like”.
dissimilar goods or services would indicate a
connection between those goods or services Arbitrary Use
and the owner of the mark; and Generic and descriptive terms may be registered if
b. The interests of the owner of the registered they are used in an arbitrary or fanciful manner.
mark are likely to be damaged by such use.
(Exception to the Doctrine of Related Goods) Examples: “Adagio” as a musical instrument used
to identify brassieres or the word “Cosmopolite” for
Expiration of patent or copyright renders the name canned fish.
of the patented article or copyrighted works a
generic designation of such article or work and such Use of Identical Marks not Necessarily
name may not therefore be monopolized as a Prohibited
trademark (AGPALO, Trademark, supra at 37).
Declaration of Non-Use
A Declaration of Non-Use may be filed within three
SAN BEDA COLLEGE OF LAW 251
2014 CENTRALIZED BAR OPERATIONS
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Declaration of actual 1.Declaration of shall be issued but a single class shall also not be
use with evidence to actual use with subdivided (IPC, Sec. 129).
that effect. evidence to that
effect; or Priority Right
2. Show valid reasons An application for registration of mark filed in the
based on the Philippines by a person who qualifies under the
existence of reciprocity rule and who previously filed an
obstacles to such use application for registration of the same mark in one
(declaration of non- of those countries shall be considered as filed as of
use). the day the application was first filed in the foreign
country.
Under Sec. 145, the filing of a Declaration of Actual
Use is mandated as a condition for the continued Prior registration of the mark in the country of origin
validity of the registration after it is granted. is required to grant local registration under priority
right (IPC, Sec. 131).
A six-month extension period may be granted upon
request, provided such request is made prior to the Conditions:
expiration of the three-year period and the required 1. The application must be filed within six (6)
fee is paid (Rule 204 [b], Rules and Regulations on months from the date of earliest foreign
Trademarks, as amended by IPO Office Order No. application. Its certified copy passed within three
13-056, April 5, 2013). (3) months from the date of filing in the
Philippines.
Actual use of the mark may commence within the 2. The following should concur: (a) the foreign
extension period. The fee must be paid on the day country / country of origin has allowed the mark
of filing of the declaration of actual use or the and (b) the country of origin is the applicant’s
request for extension of time to file the document. domicile or has a bona fide commercial
The date of payment shall be considered as the date establishment.
of filing of the declaration. The date of first use of the 3. The owner of the Philippine Registration may not
mark shall not be required (Rules and Regulations sue prior to the granting of the registration,
on Trademarks, as amended by IPO Office Order unless the mark is considered well-known as
No. 13-056, Rule 204 [b], April 5, 2013). provided for the IP Code.
4. The priority right may not be based upon a
Filing Date foreign application that has been withdrawn,
The filing date of an application shall be the date on abandoned, or otherwise disposed of in the
which the Office received the following indications country of origin (TRADEMARK LAWS, Rule
and elements in English or Filipino: 202).
1. Request for a Philippine registration of mark;
2. Identity of applicant; Certificate of Registration
3. Indications sufficient to contact the applicant; It shall be a prima facie evidence of:
4. Reproduction of the mark; and 1. Validity of registration;
5. List of goods or services. 2. Registrant’s ownership of the mark; and
3. The registrant’s exclusive right to use the same in
No filing date shall be accorded until the required connection with the goods or services and those
fee is paid (IPC, Sec. 127). that are related thereto (IPC, Sec. 138).
The divisional application must be submitted within A certificate of registration shall remain in force for
two (2) months from the mailing date of the first ten (10) years. Provided, the applicant will file a
action of the Bureau of Trademarks. A new declaration of actual use.
application number shall be issued, and the priority
right of the initial application shall be preserved. General Rule:
The trademark protection extends only to goods or
An existing registration may also be subdivided services related to those specified in the certificate.
upon request by oath and writing. A new certificate
Nice Classification
RIGHTS CONFERRED BY A This is the system by which trademark applications
TRADEMARK are classified. There are 34 classes of goods and 8
classes of businesses or services.
`
Patents, G.R. No. L- 14086, January 20, 1961). Belief that the 1. Becoming the
registered mark has generic name for the
Grounds for Loss of Trademark Right damaged or will goods or services for
1. By sale or assignment; damage the petitioner. which it is registered;
2. By abandonment or non- use; 2. Abandonment;
To be considered as abandonment, the disuse of 3. Illegal or fraudulent
the mark or trade name must be permanent, registration;
intentional and voluntary. Non- use because of 4. Use by, or with the
legal restrictions is not evidence of an intent to permission of the
abandon. registrant so as to
3. Acquiescence; misrepresent the
4. Estoppel; source of the goods
5. Closure of business; or services in
6. Same manner and circumstances as any other connection with
property right; and which the mark is
7. When mark becomes descriptive. used;
5. Non-use for an
uninterrupted period
of three (3) years
without legitimate
CANCELLATION OF reason
REGISTRATION
The earlier filing of a petition to cancel the mark
shall not constitute a prejudicial question that must
Any person who believes that he is or will be be resolved before an action to enforce the rights to
damaged by the registration of a mark may file for the same registered mark may be decided (IPC,
the cancellation of the registration. Sec. 151.2).
Registration is an administrative act declaratory of a
pre-existing right that does not, of itself, perfect a Actual use may be done by substantial compliance
trademark. It is actual use which perfects a (IPC, Sec. 152.2-152.4).
trademark (AGPALO, Trademark, supra).
Exempting Circumstances:
Formalities: Upon petition, with due notice and Those arising independently of the will of the
hearing. trademark owner (IPC, Sec. 152.11), such as
prohibition of sale by government regulation, military
Grounds: coup, or political changes that impede commerce.
Within 5 Years from
At Any Time
Registration
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Exists when one party’s
product or service Test on Confusion of Goods or Services
Exists when the
though different from 1. Dominancy Test; and
ordinary prudent
that of another, is such 2. Holistic Test.
purchaser would be
as might reasonably be
induced to purchase
assumed to originate Other Factors to be Considered:
one product or service
from the latter and the 1. The class of purchasers;
because of the
public would then be 2. The nature and cost of articles; and
similarity of the marks
deceived into the belief 3. Conditions under which they are purchased.
or trade names used
that there is some
on the same kind of
connection between the The Court has said that in view of the difficulty of
product or service.
parties, which in fact is applying jurisprudential precedents to trademark
absent. cases due to the peculiarity of each case, judicial
Confusingly similar fora should not readily apply a certain test or
Confusingly similar standard just because of seeming similarities. There
marks are employed in
marks are used on the could be more telling differences than similarities as
different or non-
same kinds of to make a jurisprudential precedent inapplicable
competing
goods/services. (Societe Des Produits Nestle v. CA, G.R. No.
goods/services.
112012, April 4, 2001).
Colorable Imitation
It refers to such similarity in form, content, words, It has been consistently held that the question of
sound, meaning, special arrangement or general infringement of a trademark is to be determined by
appearance of the mark or trade name with that of the test of dominancy.
the other mark or trade name in their overall
presentation or in their essential, substantive or Similarity in size, form and color, while relevant, is
distinctive parts as would likely mislead or confuse not conclusive. If the competing trademark contains
persons in the ordinary course of purchasing the the main or essential or dominant features of
genuine article (Emerald Garment Manufacturing another, and confusion and deception is likely to
Corporation v. CA, G.R. No. 100098, December 29, result, infringement takes place (Asia Brewery Inc.
1995). v.CA, G.R. No. 103543, July 5, 1993).
Idem Sonans Rule Even if respondent did not use an oval design, the
Two trademarks used on identical or related goods mere fact that it used the same stylized “S”, the
may be confusingly similar if they have similar same being the dominant feature of the petitioner’s
sound or pronunciation. trademark, already constitutes infringement under
the Dominancy Test (Skechers, USA, Inc v. Inter
Similarity of sound or pronunciation and spelling Pacific Industrial Trading Corp, G.R. No. 164321
may be sufficient to make two marks confusingly March 23, 2011).
similar when applied to merchandise of the same
descriptive properties. Example: “Salonpas” and
“Lionpas” both for medical plaster (Marvex
Commercial Co. v. Petra Hawpia and Co., G.R. No.
L-19297, December 22, 1966).
Likelihood of confusion or mistake is greater when Test on Confusion of Origin
identical or closely similar marks are used on non- Whether the non-competing articles may be
competing but related and common household items classified under two different classes because they
because they are purchased by ordinary purchasers are deemed not to possess the same descriptive
who usually know them by their names or properties.
trademarks.
When goods are related, confusion of origin is likely
Aural effects of the words and letters contained in to arise. Goods are related when:
the marks should be considered in determining the 1. They belong to the same class or have same
issue of confusing similarity. descriptive properties;
2. Both possess the same physical attributes or
Example: “NANNY” is confusingly similar to essential characteristics with reference to form,
“NAN”,”NAN” being the prevalent feature (Societe composition, texture or quality; and
Des Produits Nestle, S.A. v. Dy, G.R. No. 172276,
August 8, 2010).
`
Rubber Corp. (Societe Des Produits Nestle, S.A. v. CA, G.R.
Confusingly similar. "CONVERSE" has grown to No. 112012, April 4, 2001).
be identified with Converse Rubber Corp's
products, and in this sense, has acquired a 8. Big Mac v. Big Mak
second meaning. The trademark of Universal Confusingly similar. Aurally the two marks are the
Rubber Product "UNIVERSAL CONVERSE and same, with the first word of both marks
DEVICE" is imprinted in a circular manner on the phonetically the same, and the second word
side of its rubber shoes while the trademark of of both marks also phonetically the same.
Converse Rubber Corp’s "CONVERSE CHUCK Visually, the two marks have both two words and
TAYLOR" is imprinted on a circular base six letters, with the first word of both marks
attached to the side of its rubber shoes. Even if having the same letters and the second word
the details were not identical, with the general having the same first two letters. In spelling,
appearance alone of the two products, any considering the Filipino language, even the last
ordinary, or even perhaps a not too perceptive letters of both marks are the same (McDonalds
and discriminating customer could be deceived Corporation and McGeorge Food Industries, Inc.
(Converse Rubber Corp. v. Universal Rubber, v. L.C. Big Mak Burger, Inc., G.R. No. 143993,
G.R. No. L-27906, January 8, 1997). August 18, 2003).
Measure of Damages
General Rule: a. The reasonable profit which the complaining
It is unlawful for any person, without written consent party would have made, had the defendant
of the manufacturer, bottler or seller who has not infringed his rights; or
registered the mark of ownership to fill such bottles, b. The profit which the defendant actually made
boxes, kegs, barrels or other containers so marked out of the infringement.
and stamped, for the purpose of sale, dispose of, or
wantonly destroy the same, whether filled or not, to If measure of damages cannot be ascertained
use the same for drinking vessels or drain pipes, with reasonable certainty, court may award as
foundation pipes, for any other purpose than that damages (i) a reasonable percentage based
registered (R.A. 623, Sec. 2). upon the amount of defendant’s gross sales or (ii)
the value of the services in connection with which
The use of the same, without apparent permission the mark or trade name was used in the
from the trademark owners thereof, shall be prima infringement of the rights of the complaining party
facie presumption that such possession or use is (IPC, Sec. 156.1).
unlawful (R.A. 623, Sec 3).
`
2. Injunction Limitations of Action for Infringement
The complainant, upon proper showing, may also 1. Right of Prior User – Registered mark shall be
be granted injunction (IPC, Sec. 156.4). without effect against any person who, in good
faith, before the filing or priority date, was using
3. Impounding the mark for purposes of his business.
On application of the complainant, the court may 2. Relief against Printer – Injunction against future
impound during the pendency of the action, sales printing against an innocent infringer who is
invoices and other documents evidencing sales engaged solely in the business of printing the
(Sec. 152.2). mark.
3. Relief against Newspaper – Injunction against the
4. Double Damages presentation of advertising matter in future issues
In cases where actual intent to mislead the public of the newspaper, magazine or in electronic
or to defraud the complainant is shown, in the communications in case the infringement
discretion of the court, the damages may be complained of is contained in or is part of paid
doubled (IPC, Sec. 156.3). advertisement in such materials (IPC, Sec.159).
5. Court order for the disposal or destruction of Possible Defenses for an Infringer:
the infringing material 1. The mark or trade name is invalid or incapable of
Court may order that goods found to be infringing registration;
be, without compensation, disposed of outside 2. The mark has become generic;
the channels of commerce, or destroyed; and all 3. The registration was fraudulently secured;
labels, signs, prints, packages, wrappers, 4. The mark has been abandoned for non-use for a
receptacles and advertisements in defendant’s long period;
possession, bearing the registered mark or trade 5. Plaintiff is guilty of laches, estoppel or consented
name or any reproduction, counterfeit, copy or to the use by defendant;
colorable imitation thereof, all plates, molds, 6. The mark or trade name is not confusingly
matrices and other means of making the same, similar; and
shall be delivered up and destroyed (IPC, Sec. 7. Superior rights as prior user.
157.1).
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justify issuance of an injunctive writ will depend on 1. Copyright has to do with the rights of intellectual
actual use of their trademarks in the Philippines. To creators, particularly those usually, though not
be entitled to an injunctive writ, a foreign corporation exclusively, connected with mass
must show that there exists a right to be protected communication.
and that the fact against which injunction is directed 2. It is that system of legal protection an author
are violative of such right (Philip Morris, et al. v. enjoys of the form of expression of ideas
Fortune Tobacco Corporation, G.R. No. 158589, (AQUINO, Intellectual Property Law, Comments
June 27, 2006). and Annotations, (2006)) [hereinafter AQUINO,
Intellectual Property].
Sale is not an indispensable element in an action for
infringement or unfair competition (Pro Line Sports Copyright
v. CA, G.R. No. 118192, October 23, 1997). It is the right over literary and artistic works which
are original intellectual creations in the literary and
artistic domain protected from the moment of
FALSE DESIGNATION creation (Elidad Kho v.CA, G.R. No. 115758, March
19, 2002).
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Lifetime of the creator and Work created by two or
Single Creation in perpetuity after his more persons at the
death. initiative and under Work prepared by two
direction of another with or more authors with
Lifetime of the last
the understanding that it the intention that their
Joint Creation surviving co-creator and in
will be disclosed by the contributions be merged
perpetuity after his death.
latter under his own into inseparable or
Fifty (50) years after the name and that interdependent parts of
date of their first contributions of natural the unitary whole.
publication; persons will not be
except where, before the identified
expiration of said period, Each author shall enjoy Joint authors shall be
Anonymous or a the author’s identity is copyright to his own co-owners. Co-
pseudonymous work revealed or is no longer in contribution ownership shall apply
doubt, the first two Unless the contributor
mentioned rules shall Joint authors shall be
expressly reserves his
apply; or if unpublished, entitled both to be
right, it is the putative
fifty (50) years from their acknowledged as
author to whom the
making authors of the work
work will be attributed
Work of applied art,
an artistic creation
with utilitarian
functions or
ORIGINAL WORKS
incorporated in a Twenty-five (25) years
useful article, from the date of making Works Protected:
whether made by
Original Works (BO-PPP-CLLAIM-DDWO)
hand or produced on
1. Books, pamphlets, articles and other writings;
an industrial scale
(IPC, Sec. 171.10). Note: It matters not whether the works are
published or not, whether they be in verbal or
Photographic work,
Fifty (50) years from the numerical symbol (AQUINO, Intellectual
audiovisual work
publication of the work, or Property, supra)
produced by
if unpublished, from 2. Original ornamental designs or models for
photography or
making the same articles of manufacture, whether or not
analogous processes
registrable as an industrial design, and other
Lifetime of the author and
works of applied art;
Newspaper article in perpetuity after his
Work of Applied Art - An artistic creation with
death.
utilitarian functions or incorporated in a useful
st article, whether made by hand or produce on an
The term of protection shall be counted from the 1
industrial scale (IPC, Sec, 171.10).
day of January of the year following the last
3. Periodicals and newspapers;
publication (IPC, Sec. 214).
Note: The Journal of the Integrated Bar of the
Philippines, as a journal, enjoys copyright
protection.
A writer, artist or photographer who submits a
work to a newspaper or periodical editor for
publication thereby licenses such editor to
Collective Work v. Joint Work
publish the work only once unless more ample
Collective Work Joint Work provision is otherwise made. While the work may
Elements remain Separate elements then belong to the newspaper or the periodical,
unintegrated and merge into a unified copyright is not comprehensively transferred by
disparate whole license for a single publication (IPC, Sec. 188.3).
A pure news report no longer finds protection
under the new law, but a column or published
comment will. When newspapers and periodicals
include works enjoying independent copyrights,
the works so included continue enjoying the
rights for duration proper to them.
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Exception: No prior approval or conditions shall be vii. To transmit or otherwise communicate a
required for the use of any purpose of statutes, rules performance of the work to a place specified
and regulations, and speeches, lectures, sermons, above or to the public, by means of any
addresses, and dissertations, pronounced, read or device or processes, whether the members
rendered in courts of justice, before administrative of the public capable of receiving the
agencies, in deliberative assemblies and in performance receive it in the same place or
meetings of public character (IPC, Sec. 176.1). in separate places and at the same time or
at different times;
viii. Other communication to the public of the
RIGHTS CONFERRED BY work (IPC, Sec. 177); and
COPYRIGHT ix. Assignment of the copyright and/ or the
material object in whole or in part.
Rights Conferred to a Copyright Owner: (CMD) Note: Economic rights allow the owner to derive
1. Copyright or Economic rights (IPC, Sec. 177); financial reward from the use of his works by
2. Moral rights (IPC, Sec. 193); and others (WIPO, Understanding Copyright and
3. Right to participate in the gross proceeds of the Related Rights], [hereinafter WIPO, Copyright
sale or lease of the original work or Droit de suite and Related Rights]).
(IPC, Sec. 200).
2. Moral Rights
1. Copyright or Economic Rights a. Right of Paternity – To require that the
Exclusive right to: authorship of the works be attributed to him, in
a. Carry out; a prominent way on the copies, and with the
b. Authorize; or public use of the work (IPC, Sec. 193.1);
c. Prevent the following acts: b. To make any alterations of his work prior to, or
i. Reproduction of the work or substantial to withhold it from publication (IPC, Sec.
portion of the work; 193.2);
Reproduction – The making of one or more c. Right of Integrity – To object to any
copies, temporary or permanent, in whole or distortion, mutilation or other modification of,
in part, of a work or a sound recording in or other derogatory action in relation to, his
any manner or form without prejudice to the work which would be prejudicial to his honor
provisions of Section 185 of this R.A. 10372. or reputation (IPC, Sec. 193.3); and
ii. Dramatization, translation, adaptation, d. To restrain the use of his name with respect to
abridgment, arrangement or other any work not of his own creation or in a
transformation of the work; distorted version of his work (Sec. 193.4).
Note: Article 12 of the Berne-Paris
Convention guarantees authors of literary or These rights are distinct from economic rights and
artistic works the exclusive right of remain with the author even after he has transferred
authorizing adaptations, arrangements and or assigned to another “other rights of copyright”
other alterations of their works. (WIPO, Copyright and Related Rights, supra at
iii. First public distribution of the original and 215).
each copy of the work;
iv. Rental of the original or a copy of an Moral rights allow the author to take certain actions
audiovisual or cinematographic work; to preserve the personal link between himself and
Rental – It refers to the transfer of the the work (WIPO, Copyright and Related Rights,
possession of the original or a copy of a supra at 9).
work for a limited period of time, for profit-
making purposes (IPC, Sec 171.8). Term/ Duration
v. Public display of the original or a copy of the Lifetime of the author and in perpetuity after his
work; death for the moral rights under Sec. 193.1 (i.e. to
vi. Public performance of the work; require that the authorship of the works be attributed
Public Performance – To perform it in a to him, in particular, the right that his name, as far as
place open to the public or at any place practicable, be indicated in a prominent way on the
where a substantial number of persons copies, and in connection with the public use of his
outside of a normal circle of a family and its work). The rights under Secs. 193.2, 193.3, 193.4,
social acquaintances is gathered shall be coterminous with the economic rights (R.A.
(BOORSTYN, Copyright Law, (1981) p. 10372, Sec. 17).
107).
`
4. Recording made in schools, universities, or constitute fair use (IPC, Sec. 185.1, as amended by
educational institutions of a work included in a R.A. 10372).
broadcast for the use of schools, universities or
educational institutions. Such recording must be Factors to be considered in determining whether
deleted within a reasonable period; such use is fair or not:
recording may not be made from audio-visual 1. Purpose and the character of the use;
works which are part of the general cinema, 2. Nature of the copyrighted work;
repertoire of feature films except of brief excerpts 3. Amount and substantiality of the portions used;
of the work; and
5. Making of Quotations from a published work: (i) 4. Effect of the use upon the potential market of the
compatible with fair use, (ii) extent is justified by copyrighted work (IPC, Sec. 185.1).
the purpose, (iii) source and name of the author,
appearing on work, must be mentioned; Note: Concept of fair use only applies to
6. Public performance or the communication to the copyrighted work and not to non-copyrightable
public of a work in a place where no admission material.
fee is charged by a club on institution for
charitable or educational purpose only and the Quotations from a published work if they are
aim is not profit-making; compatible with fair use and only to the extent
7. Public display of the original or a copy of the work justified by the purpose, including quotations from
not made by means of a film, slide, television, newspaper articles, and periodicals in the form of
image or otherwise on screen or by means of any press summaries are allowed provided that the
other device or process either the work has been source and the name of the author, if appearing on
published, sold, given away, or transferred to the work, are mentioned (Habana v. Robles, GR No.
another person by the author or his successor in 131522, July 19, 1999).
title;
8. Inclusion of a work in a publication, broadcast or Copyright Infringement
other communication to the public, sound A person infringes a right protected under R.A.
recording or film if made by way of illustration for 10372 when one:
teaching purposes compatible with fair use and 1. Directly commits an infringement;
the source and the name of the author appearing 2. Benefits from the infringing activity of another
on work, must be mentioned; person who commits an infringement if the
9. Making of ephemeral recordings; (i) by a person benefiting has been given notice of the
broadcasting organization, (ii) by means of its infringing activity and has the right and ability to
work or facilities, (iii) for use in its own broadcast; control the activities of the other person;
10. Use made of a work by or under the direction or 3. With knowledge of infringing activity, induces,
control of the government for public interest causes or materially contributes to the infringing
compatible with fair use; and conduct of another (IPC, Sec. 216, as amended
11. Use made of a work for the purpose of any by Sec. 22 of RA 10372).
judicial proceedings or for the giving of
professional advice by a legal practitioner (IPC, Infringement or Piracy
Sec. 184). Any violation of the owner’s exclusive rights
conferred by law.
Fair Use
A privilege, of persons other than the owner of the An appropriation of a copyrighted work by another
copyright, to use the copyrighted material in a who is not authorized (Black’s Law Dictionary).
reasonable manner without his consent,
notwithstanding the monopoly granted to the owner The doing by any person, without the consent of the
by the copyright. It does not constitute infringement. owner of the copyright, of anything the sole right to
do which is conferred by statute to the owner of the
The fair use of a copyrighted work for criticism, copyright (Habana v. Robles, GR No. 131522, July
comment, news reporting, teaching including limited 19, 1999; Columbia Pictures v. CA, G.R. No.
number of copies for classroom use, scholarship, 110318, August 28, 1996).
research, and similar purposes is not an
infringement of copyright. Decompilation or the Copying alone is not what is prohibited. The copying
reproduction of the code and translation of the forms must produce an injurious effect ( Habana v. Robles,
of a computer program to achieve the GR No. 131522, July 19, 1999; Columbia Pictures v.
interoperability of an independently created CA, G.R. No. 110318, August 28, 1996).
computer program with other programs may also
The fact that the work is unpublished shall not itself Moral Rights of a Performer
bar a finding of fair use (IPC, 185.2). As regards his live aural performances or
performances fixed in sound recording:
Copyright in a work of architecture shall include: (I) 1. The right to be identified as the performer of his
the right to control the erection of any building; (ii) performances, except, where the omission is
which reproduces the whole or a substantial part dictated by the use of the performance; and2.
thereof; (iii) shall not include the right to control the The right to object to any distortion, mutilation or
reconstruction or rehabilitation in the same style as other modification of his performance that will be
the original of a building to which the copyright prejudicial to his reputation (IPC, Sec. 204.1).
relates (IPC, Sec. 186).
Producers of Sound Recordings
Plagiarism The protection of sound recordings shall apply
It is the act of appropriating the literary composition to:
of another, or parts or passages of his writings, or 1. Sound recordings the producers of which are
the ideas or language of the same and passing them nationals of the Philippines (IPC, Sec. 223.1);
off as the product of one’s mind. 2. Sound recordings that were first published in the
Philippines (IPC, Sec. 223.1); and
The incorporation in one’s own work of that of 3. Sound recordings which are to be protected by
another without the proper acknowledgement virtue of and in accordance with any international
thereof. convention or other international agreement to
which the Philippines is a party (IPC, Sec. 224.1).
Related Rights or Neighboring Rights of
Copyright (IPC, Secs. 202-211) Scope of Right
Rights akin to but different from copyright, granted 1. The right to authorize the direct or indirect
by the law to: reproduction of their sound recordings;
1. Performers, who are: 2. The right of authorizing first public distribution
a. Nationals of the Philippines; through sale or rental or other forms of transfer of
b. Not nationals of the Philippines but whose ownership; and
performances: 3. The right of authorizing the commercial rental to
i. Take place in the Philippines; the public of the original even after distribution of
ii. Are incorporated in sound them by, or pursuant to the authorization by the
recordingsprotected under the Intellectual producer.
Property Code; and
iii. Which has not been fixed in sound Broadcasting Organizations
SAN BEDA COLLEGE OF LAW 269
2014 CENTRALIZED BAR OPERATIONS
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Scope of Right ii. Having reasonable grounds to know that it
Exclusive right to carry out, authorize or prevent any will induce, enable, facilitate or conceal the
of the following acts: infringement, remove or alter any electronic
1. The rebroadcasting of their broadcasts; rights management information from a copy
2. The recording in any manner including the of a work, sound recording, or fixation of a
making of films or the use of video tape, of their performance, or distribute, import for
broadcasts for the purpose of communication to distribution, broadcast, or communicate to
the public of television broadcasts of the same; the public works or copies of works without
and authority, knowing that electronic rights
3. The use of such records for fresh transmissions management information has been removed
or for fresh recording (IPC, Sec. 211). or altered without authority (IPC, Sec. 216.1
as amended by RA 10372).
Application of Rights
1. Broadcasts of broadcasting organizations the The copyright owner may elect, at any time
headquarters of which are situated in the before final judgment is rendered, to recover
Philippines; instead of actual damages and profits, an
2. Broadcasts transmitted from transmitters situated award of statutory damages for all
in the Philippines; and infringements involved in an action in a sum
3. Broadcasts by organizations which are to be equivalent to the filing fee of the infringement
protected by virtue of and in accordance with any action but not less than Fifty Thousand Pesos
international convention or other international (Php50,000.00) (IPC, Sec. 216.1 as amended
agreement to which the Philippines is a party by RA 10372).This is also subject to double
(IPC, Sec. 224). damages.
2. Administrative
FINAL PROVISIONS
a. Administrative action;
b. Cease and desist order;
1. Parties
c. Forfeiture of paraphernalia used in committing
a. Plaintiff
the offense; and
i. Legal owner; or
d. Administrative fines.
ii. Beneficial owner; since they are "parties in
interest."
Affidavit Evidence
b. Defendant
It is an affidavit made before a notary public in
i. Direct infringer; or
actions for infringement, reciting the facts required to
ii. Contributory infringer (IPC, Sec. 217).
be stated under the IP Code (IPC, Sec. 218.1).
A corner bookstore and magazine store that vends
pirated copies of a work is in fact violating the
Required Statement of Facts:
copyright owner's right to exclusively distribute his
1. Copyright subsisted in the work or other subject
work. Such store would therefore be infringing. The
matter at the time specified therein;
printer, who, though acting under instructions from
2. He or the person specified therein is the owner of
another, sets into motion the illegal reproduction of
the copyright; and
protected material would, in fact, be infringing
3. The copy of the work or subject matter annexed
copyright.
thereto is a true copy.
2. Prescriptive Period
As prima facie proof, the affidavit shifts the burden
of proof to the defendant, to prove the ownership of Remedy Prescriptive Period
the copyrighted work. Four (4) years from the time
Action for damages the cause of action arose
Defendant must put in issue the question of whether (IPC, Sec. 226)
copyright subsists in the work or other subject Subject to the general rules
Criminal action
matter, otherwise, copyright shall be presumed to of prescription of crimes
SAN BEDA COLLEGE OF LAW 271
2014 CENTRALIZED BAR OPERATIONS
`
Petition for Appeals from decisions of regular courts shall be
None
injunctive relief governed by the Rules of Court. Unless restrained
Petition for the by a higher court, the judgment of the trial court shall
impounding and be executory even pending appeal under such terms
None and conditions as the court may prescribe (IPC,
destruction of
infringing material 232.1).
Appeals