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Ipl Reviewer
Ipl Reviewer
ALYSSA CABALANG
REPUBLIC ACT NO. 8293: An Act Prescribing the Section 2. DECLARATION OF STATE POLICY. — The State
Intellectual Property Code and Establishing the Intellectual recognizes that an effective intellectual and industrial
Property Office, Providing For Its Powers and Functions, and property system is
For Other Purposes (Approved on June 6, 1997, took effect 1. vital to the development of domestic and creative
on January 1, 1998) activity
2. facilitates transfer of technology
INTELLECTUAL PROPERTY refers to the creations of the 3. attracts foreign investments and
mind: inventions, literary and artistic works, symbols, 4. ensures market access for our products
names, images, and designs used in commerce. I means the
legal rights which result from intellectual activity in the It shall protect and secure the exclusive rights of
industrial, scientific, literary, and artistic fields. scientists, inventors, artists and other gifted citizens to their
intellectual property and creations, particularly when
INTELLECTUAL PROPERTY RIGHTS beneficial to the people, for such periods as provided in this
The term "intellectual property rights" consists of: Act.
a. Copyright and Related Rights;
b. Trademarks and Service Marks; The use of intellectual property bears a social function.
c. Geographic Indications; To this end, the State shall promote the diffusion of
d. Industrial Designs; knowledge and information for the promotion of national
e. Patents; development and progress and the common good.
f. Layout-Designs (Topographies) of Integrated
Circuits; It is also the policy of the State to streamline administrative
g. Protection of Undisclosed Information procedures of registering patents, trademarks and
copyright, to liberalize the registration on the transfer of
Copyright – right granted by statute to the author or technology, and to enhance the enforcement of intellectual
originator of literary, scholarly, scientific, or artistic property rights in the Philippines.
productions including computer programs. A copyright
gives him the legal right to determine how the work is used STATE POLICIES
and to obtain economic benefits from the work. It is confined
to literary and artistic works which are original intellectual a. To protect and secure the exclusive rights of
creations in the literary and artistic domain protected from scientists, investors, artists, and other gifted
the moment of their creation. citizens to their intellectual property and creations,
particularly when beneficial to the people, for such
Trademarks – any visible sign capable of distinguishing the periods as provided R.A. No. 8293.
goods (trademark) or services (service mark) of an enterprise b. To promote the diffusion of knowledge and
and shall include a stamped or marked container of goods. information for the promotion of national
It is vested from registration. development and progress and the common good.
c. To streamline administrative procedures of
Geographic Indications – one which identifies a good as registering patents, trademarks and copyright, to
originating in the territory of a TRIPS member, or a region liberalize the registration on the transfer of
or locality in that territory where a given quality, reputation technology, and to enhance the enforcement of
or other characteristic of a good is essentially attributable intellectual property rights in the Philippines
to its geographical origin.
The term "technology transfer arrangements" refers to:
Industrial Design – any composition of lines or colors or a) contracts or agreements
any three-dimensional form, whether or not associated with b) involving the transfer of systematic knowledge
lines or colors: Provided, that such composition or form c) for the manufacture of a product, the application of
gives a special appearance to and can serve as pattern for a process, or rendering of a service
an industrial product or handicraft. d) including management contracts;
e) and the transfer, assignment or licensing of all forms
Patents – a government authority or license conferring a of intellectual property rights,
right or title for a set period, especially the sole right to f) including licensing of computer software
exclude others from making, using, or selling an invention. g) except computer software developed for mass
market.
Layout-Design (Topography) of Integrated Circuit – the
three-dimensional disposition, however expressed, of the Nature:
elements, at least one of which is an active element, and of It is a licensing contract between an intellectual property
some or all the interconnections of an integrated circuit, or right owner, as the licensor, and a second party, as the
such a three-dimensional disposition prepared for an licensee who was granted the authority to commercially
integrated circuit intended for manufacture. It must be exploit the same intellectual property right under specified
original in a sense that they are the result of their creators’ terms and conditions.
own intellectual effort.
This is a highly-regulated contract given its role in the
Undisclosed information – Information which: fulfillment of the State’s desire to bring technologies into
a. Is a secret in a sense that it is not, as a body or in public domain through disclosures.
the precise configuration and assembly of
components, generally known among or readily Trade Related Aspects of the Intellectual Property
accessible to persons within the circles that Rights (TRIPS) – ratified by the Philippine Senate on
normally deal with the kind of information in December 14, 1994.
question;
b. Has a commercial value because it is secret; and Paris Convention on the Protection of the Industrial
c. Has been subject to reasonable steps under the Property – Right of Priority refers to an applicant after
circumstances, by the person lawfully in control of filing in one of the Contracting States may, within a period
the information, to keep it secret. of time, apply for the protection in any of the other
Contracting States, the latter application will be regarded as
if it had been filed on the same day as the first application
(September 27, 1965)
1|ALYNOTES
e. The Management Information System and EDP
RIGHT OF A FOREIGNER TO SUE FOR PROTECTION OF Bureau;
IP RIGHTS (PRINCIPLE OF RECIPROCITY) f. The Administrative, Financial and Personnel
Services Bureau.
Section 3. INTERNATIONAL CONVENTIONS AND
RECIPROCITY. — Any person who is a: The Director General, Deputies Director General, Directors
a) national or who is domiciled and Assistant Directors shall be appointed by the President
b) or has a real and effective industrial establishment
c) in a country which is a party to any convention, The other officers and employees of the Office by the
treaty or agreement Secretary of Trade and Industry, conformably with and
d) relating to intellectual property rights or the under the Civil Service Law
repression of unfair competition,
e) to which the Philippines is also a party, Section 5. FUNCTIONS OF THE INTELLECTUAL
f) or extends reciprocal rights to nationals of the PROPERTY OFFICE (IPO)
Philippines by law, a. Examine applications for grant of letters patent for
inventions and register utility models and
Shall be entitled to benefits to the extent necessary to give industrial designs;
effect to any provision of such convention, treaty or b. Examine applications for the registration of marks,
reciprocal law, in addition to the rights to which any owner geographic indication, integrated circuits;
of an intellectual property right is otherwise entitled by this c. Register technology transfer arrangements and
Act. settle disputes involving technology transfer
payments covered by the provisions of Part II,
Section 160. RIGHT OF FOREIGN CORPORATION TO SUE Chapter IX on Voluntary Licensing and develop and
IN TRADEMARK OR SERVICE MARK ENFORCEMENT implement strategies to promote and facilitate
ACTION. — Any foreign national or juridical person who technology transfer;
meets the requirements of Section 3 of this Act and does d. Promote the use of patent information as a tool for
not engage in business in the Philippines may bring a technology development;
civil or administrative action hereunder for opposition, e. Publish regularly in its own publication the patents,
cancellation, infringement, unfair competition, or false marks, utility models and industrial designs, issued
designation of origin and false description, whether or not it and approved, and the technology transfer
is licensed to do business in the Philippines under existing arrangements registered;
laws f. Administratively adjudicate contested proceedings
affecting intellectual property rights; and
Section 231. REVERSE RECIPROCITY OF FOREIGN g. Coordinate with other government agencies and the
LAWS. — Any condition, restriction, limitation, diminution, private sector efforts to formulate and implement
requirement, penalty or any similar burden imposed by the plans and policies to strengthen the protection of
law of a foreign country on a Philippine national seeking intellectual property rights in the country.
protection of intellectual property rights in that country,
shall reciprocally be enforceable upon nationals of said The Director General and Deputies Director General
country, within Philippine jurisdiction Manage and direct all functions and activities of the Office,
including the promulgation of rules and regulations to
implement the objectives, policies, plans, programs and
➢ If a foreign corporation NOT doing business in the projects of the Office. This managing function is limited by
Philippines is suing as a party of a treaty to which the proviso that the Director General shall be subject to the
the Philippines is a signatory the fact that it is suing supervision of the Secretary of the Department of Trade and
under Section 3 of RA 8293 NEED NOT be alleged Industry when the exercise of authority is to propose
as the court must take judicial notice of such fact policies and standards in relation to the following:
i. the effective, efficient, and economical operations of
➢ However, if a foreign corporation IS SUING under the Office requiring statutory enactment
any other agreement other than RA 8293 failure to ii. coordination with other agencies of government in
allege reciprocity is fatal to foreign corporation’s relation to the enforcement of intellectual property
cause rights
iii. the recognition of attorneys, agents, or other persons
representing applicants or other parties before the
NATIONAL TREATMENT PRINCIPLE Office
The Philippines, upon becoming a member of the World iv. the establishment of fees for the filing and processing
Trade Organization (WTO) has adhered to the TRIPS of an application for a patent, utility model or
Agreement, which provides that protection afforded to the industrial design or mark or a collective mark,
member-states must be extended to the nationals of other geographic indication and other marks of ownership,
member-states and for all other services performed and materials
furnished by the Office
MOST-FAVORED NATION PRINCIPLE
Whatever favor, allowance, consideration, privilege or Qualifications:
immunity a member0states grants the nationals of another 1. Must be natural born citizens of the Philippines
country is immediately and unconditionally accorded to 2. At least 35 years of age on the day of their
the nationals of other member-states appointment
3. Holders of a college degree
INTELLECTUAL PROPERTY OFFICE 4. Provided that the Director General and at least 1
Deputy Director General shall be members of the
The Office is headed by a Director General who shall be Philippine Bar who have engaged in the practice of
assisted by two (2) Deputies Director General. law for at least 10 years
5. Proven competence, integrity, probity and
The Office shall be divided into six (6) Bureaus, each of independence
which shall be headed by a Director and assisted by an 6. Selection of the Director General and the Deputies
Assistant Director. These Bureaus are: Director General, consideration shall be given to
a. The Bureau of Patents; such qualifications as would result, as far as
b. The Bureau of Trademarks; practicable, in the balanced representation in the
c. The Bureau of Legal Affairs; Directorate General of the various fields of
d. The Documentation, Information and Technology intellectual property
Transfer Bureau;
2|ALYNOTES
Term of Office
The Director General and the Deputies Director General TRADEMARKS
shall be appointed by the President for a term of 5 years and
shall be eligible for reappointment only once. Appointment
to any vacancy shall be only for the unexpired term of the "Mark" means any visible sign capable of distinguishing the
predecessor. goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods
It is also provided that the first Director General (Atty.
Emma Francisco 1998-2004) appointed under that law Collective Mark – means any visible sign designated as
shall have a first term of 7 years. such in the application for registration and capable of
distinguishing the origin or any other common
JURISDICTION characteristic, including the quality of goods or services of
different enterprises which use the sign under the control of
Original Jurisdiction of Director General (Section 7.1-C) the registered owner of the collective mark. A collective mark
Over disputes relating to the terms of a license is generally owned by an association or cooperative whose
involving the authors right to public performance of other members may use the collective marks to market their
communications of his work products
Original Jurisdiction of Bureau of Legal Affairs Service Mark – used to distinguish certain services as those
Hear and decide provided by a specific enterprise. A service mark is very
a. opposition to the application for registration of similar in nature to a trademark. Both are distinctive signs.
marks; Services may be any kind such as financial, banking, travel,
b. cancellation of trademarks; advertising or catering.
c. cancellation of patents, utility models, and
industrial designs; Trade name – the name of designation identifying or
d. petitions for compulsory licensing of patents. distinguishing an enterprise; any individual name or
e. administrative complaints for violations of laws surname, firm name, device or word used by
involving intellectual property rights. Jurisdiction is manufacturers, industrialists, merchants, and others to
limited to complaints where the total damages identify their businesses, vocations or occupations.
claimed are not less than P200,000.
f. the Director of Legal Affairs shall have the power to Well-known Mark – a mark considered well-known by the
hold and punish for contempt all those who competent authority of the country where protection for the
disregard orders or writs issued in the course of the mark is sought.
proceedings.
Sounds and scent as trademarks – signs consisting of a
Regular Courts (Section 225) sound which are capable of distinguishing goods or services
Without prejudice to the provisions of Subsection 7.1-C, of one undertaking from those of the others. IP Code of the
actions under this Act shall be cognizable by the courts with Philippines requires a mark to be “any visible sign.” The
appropriate jurisdiction under existing law Requirement of visibility rules out sounds and smell as
possible trademarks in our jurisdiction
WHERE TO APPEAL DECISIONS
Device – a catch-all term which usually refers to the word
A. To Director General over all decisions rendered by: or sign comprising the trademark. It can take on any form,
i. Bureau of Copyrights & Other related rights e.g. letters, words, logos, pictures, a combination of words
ii. Director of Legal Affairs and logo, slogans, colors, product shapes, and sounds
iii. Director of Patents
iv. Director of Trademarks Slogan (word marks) – short words or phrases that capture
v. Director of the Documentation, Information a company’s brand essence, personality, and positioning,
and Technology Transfer Bureau and distinguish the firm from competitors. Slogans may be
registered as trademarks provided it is capable of
B. To Court of Appeals over decisions of Director distinguishing the goods or services.
General in the exercise of his appellate jurisdiction
over the decisions of: Goodwill – reputation and public confidence that a
i. Director of Legal Affairs business venture has earned through a period of creditable
ii. Director of Patents dealings. Article 521 of NCC provides that a goodwill of a
iii. Director of Trademarks business is a property and may be transferred together with
the right to use the name under which the business is
C. To Secretary of Trade and Industry over decisions conducted
of Director General in the exercise of his appellate
jurisdiction over the decisions of: Brand Name – a name that us given to a product by the
i. Director of the Documentation, Information company that produces or sells it
and Technology Transfer Bureau
ii. And his original jurisdiction over disputes FUNCTIONS OF TRADEMARKS
relating to the terms of a license involving 1. To identify the product and distinguish it from
the authors right to public performance of other identical or similar products
other communications of his work (Section 2. To indicate distinctly the origin or ownership of the
7.1-C) goods to which they are attached;
3. To guarantee the standard if quality of the goods
INTER PARTES CASES ▬ These are contested cases filed 4. To advertise the goods they symbolize;
before the IPO and are administrative in nature. 4 Kinds: 5. To assure the public that they are producing the
Opposition Proceedings, Cancellation, Interference genuine article;
(abolished), Concurrent Use Proceedings (not applicable 6. To prevent fraud and imposition; and
under IP Code) 7. To protect the manufacturer against substitution
and sale of an inferior and different article as its
product
3|ALYNOTES
ACQUISITON OF OWNERSHIP OF MARK c. use of a mark in connection with one or more of the
goods or services belonging to the class in respect
Section 122. How Marks are acquired — the rights in a of which the mark is registered
mark shall be acquired through registration made validly d. use of a mark by a company related with the
in accordance with the provisions of this law. registrant or applicant shall inure to the latter's
benefit
Section 146. A certificate of registration shall remain in e. use of a mark by a person is controlled by the
force for 10 years and may be renewed for periods of 10 registrant or applicant with respect to the nature
years as its expiration upon payment of the prescribed fee and quality of the goods or services
and upon filing of a request.
Registration is NOT compulsory
Trade Names or Business Names (Section 165) — A name While it is not compulsory, it is highly advisable, as
or designation may not be used as a trade name if by its registration provides the exclusive right to prevent
nature or the use to which such name or designation may unauthorized use of the trademark. Hence, there are no
be put, it is contrary to public order or morals and if, in statutory sanctions for not registering, but there are
particular, it is liable to deceive trade circles or the public business consequences for such failure.
as to the nature of the enterprise identified by that name.
4|ALYNOTES
of the principal parts of the mark which are in that mark has been registered in the country of origin of the
color applicant.
j. Where the mark is a three-dimensional mark, a
statement to that effect There must be an earlier foreign trademark application
k. Reproductions of the mark before priority rights become relevant. Note that this right is
l. A transliteration or translation of the mark or of a “time-limited” right. Thus, an application with a claim of
some parts of the mark priority right must be filed within 6 months from the date
the earliest foreign application was filed.
Transliteration: is an act, process, or instance representing
or spelling of words, letters, or characters of one language TERRITORIALITY PRINCIPLE
in the letters and characters of another language. This means that trademarks rights are recognized within a
state only when the goods or services are used in commerce
When a trademark concerning an international trademark within that said state. Thus, the law on trademarks rests
application consists of characters other than Roman upon territoriality. A foreign trademark may enjoy protection
alphabet, for example Japanese characters, or contains rights in the Philippines only when the good or services are
some such characters, the characters must be used in commerce in the Philippines. HOWEVER, while
transliterated according to the pronunciation in the under the territoriality principle, internationally well-known
language allowed for international trademark applications marks are the exceptions to this rule
and describes them in Roman alphabet.
TELLE QUELLE RULE
Translation: is an act, process, or instance of translating Provides that a country must accept for filing and protect a
as rendering from one language of representational system trademark duly registered in the (foreign) applicant’s
into another country of origin as to the form of the tr4ademark as
registered in the applicant’s country of origin.
NICE CLASSIFICATION
(International Trademark Classification System) is the OPPOSITION
system by which a trademark applications are classified.
There are 34 classes of goods and 8 classes of businesses or Any person who believes that he would be damaged by the
services. registration of a mark may, upon payment of the required
fee and within 30 days after the publication, file with the
Rights if Distributor – The right to register trademark is Office an opposition to the application.
based on ownership. When the applicant is not the owner of
the trademark, he has no right to apply for the registration Such opposition shall be—
of the same. Thus, a mere distributor of products bearing a a. in writing
trademark, even if permitted to use said trademark has no b. verified by the oppositor or by any person on his
right to and cannot register said trademark. behalf who knows the facts
c. shall specify the grounds on which it is based and
An exclusive distributor does not acquire any propriety include a statement of the facts relied upon
interest as well as the authorized manufacturer and seller d. copies of certificates of registration of marks or other
is not the owner of the trademark of the products he was supporting documents
authorized to manufacture and sell. ➢ Dismissal of opposition does not follow that application
should be granted
TRADEMARK AGENT ➢ Upon the filing of an opposition, the Office shall serve
If the applicant is not domiciled or has no real and effective notice of the filing on the applicant, and of the date of
commercial establishment in the Philippines, he shall the hearing thereof upon the applicant and the
designate by a written document filed in the Office, the oppositor and all other persons having any right, title or
name and address of a Philippine resident who may be interest in the mark covered by the application
served notices or process in proceedings affecting the mark.
Section 142. CORRECTION OF MISTAKES MADE BY THE
The agent of the applicant need not be a member of the OFFICE — Whenever a material mistake in a registration
Philippine bar. However, where registration disputes arise incurred through the fault of the Office is clearly disclosed
and there becomes a need to prepare and file an opposition by the records of the Office, a certificate stating the fact and
or answer to an opposition, or where an inter partes case nature of such mistake shall be issued without charge,
arise, knowledge of the law and jurisprudence becomes recorded and a printed copy thereof shall be attached to
imperative and participation of a member of the Philippine each printed copy of the registration
bar will be needed.
FILING DATE
The filing date of an application shall be the date on which
the Office received payment for the required fee and the
following indications and elements in English or Filipino—
a. Request for a Philippine registration
b. Identity of applicant
c. Reproduction of the mark
d. Indications sufficient to contact the applicant
e. List of goods or services for which the registration
is sought
5|ALYNOTES
CANCELLATION ECOLE DE CUISINE MANILLE, INC. VS. COINTREAU:
A petition to cancel a registration of a mark under PRESENT LAW ON TRADEMARKS, THE INTELLECTUAL
this Act may be filed with the Bureau of Legal Affairs by any PROPERTY CODE OF THE PHILIPPINES, HAS ALREADY
person who believes that he is or will be damaged by the DISPENSED WITH THE REQUIREMENT OF PRIOR
registration of a mark under this Act ACTUAL USE AT THE TIME OF REGISTRATION
It is significant to note that Section 2-A does not require that
the actual use of a trademark must be within the
Within five (5) years Philippines. Thus, under R.A. No. 166, one may be an owner
from the date of the of a mark due to its actual use but may not yet have the
At any time
registration of the right to register such ownership here due to the owner’s
mark under this Act failure to use the same in the Philippines for 2 months prior
to registration. In the instant case, it is undisputed that
Cointreau has been using the subject mark in France, prior
1. any person who 1. if the registered mark to Ecole’s averred first use of the same in the Philippines, of
believes that he becomes the generic which the latter was fully aware thereof. On the other hand,
is or will be name for the goods or Ecole has no certificate of registration over the subject mark
damaged by the services, or a portion but only a pending application. Under the foregoing
registration of a thereof, for which it is circumstances, even if Ecole was the first to use the mark
mark under this registered in the Philippines, it cannot be said to have validly
Act appropriated the same.
2. mark has been
abandoned REGISTRABILITY OF MARKS (Section 123)
6|ALYNOTES
If it is not made by that person, or with his consent in the owner of the registered mark are likely to be damaged
writing, such application must be refused. by such use
There is no particular provision in the IP Code dealing EVEN DISSIMILAR GOODS DOCTRINE — if goods or
specifically with surnames or persons. Nonetheless, services are NOT identical or similar, such registration (of
surnames cannot, as a rule, be registered as trademarks on the mark identical to a well-known mark) will still not be
the ground of non-distinctiveness and public policy. The allowed if:
public policy is that surnames are free to be used by all a. There is a connection between goods or services of
persons having that surname. Exceptions— junior and senior users of well-known mark
a. Surname has acquired distinctiveness by acquiring b. The interests of the owner of the registered mark
secondary meaning are likely to be damaged
b. Surname has another meaning c. The well-known mark is registered in the
Philippines
Examples of descriptive marks are: “Certified” for motor oil, Fanciful Mark – invented for the sole purpose of functioning
“Turbodiesel” foe diesel engines, “Maskuline” foe men’s as a trademark and have no other meaning than acting as
underwear, outerwear, pajamas, and shirts. a mark. Coined words have the advantage of being easy to
protect as they are more likely to be considered inherently
The statute provides for refusal ONLY when the mark is distinctive
merely descriptive as applied to applicant’s good or services
Arbitrary Mark – utilized as a device having a common
GEORGRAPHICAL MARKS geographical origin of the goods meaning that has no relation to the goods or services being
or rendering of the service. Note that a mere geographical sold. They bear no logical relation to the product they
name or term per se is NOT prohibited. What are prohibited advertise and to the actual characteristics of the product it
are the use of geographical names in the misdescriptive or represents
descriptive manner. It must be the likelihood of goods
originating in the areas in question that is prohibited. Suggestive Mark – hint at one or some of the attributes of
Exceptions— the products. The appeal of suggestive mark is that they act
a. When the mark acquired secondary meaning as a form of advertising.
b. When the geographical mark was not used in a
descriptive sense Composite Mark – consisting of two or more elements or
combination of words, phrases, designs, symbols or color
schemes. Although they cannot be registered by themselves,
Consists of shapes that may be necessitated by together they may be a part of a composite mark as long as
technical factors or by the nature of the goods they provide a disclaimer
11
themselves or factors that affect their intrinsic
value Coined Mark – marks which are contractions of or coined
from generic or descriptive terms
Note that ordinary geometric shapes cannot be registered. DOCTRINE OF SECONDARY MEANING
The rationale for the prohibition is to prevent trademark While as a general rule, generic, indicative or descriptive
protection from granting its proprietor a monopoly on marks are incapable of appropriation, nothing shall prevent
technical solutions or functional characteristics of a the registration of such mark when such kind of mark has
product which a user is likely to seek in the products of become distinctive in relation to the goods for which
competitors. registration is requested.
The Office may accept as prima facie evidence that the mark
Consists of color alone, UNLESS defined by a has become distinctive, as used in connection with the
12 applicant's goods or services in commerce, proof of
given form
substantially exclusive and continuous use thereof by the
applicant in commerce in the Philippines for 5 years before
Where the applicant claims color as a distinctive feature of the date on which the claim of distinctiveness is made.
the mark, a statement to that effect as well as the name or
names of the color or colors claimed and an indication, in RIGHTS CONFERRED BY REGISTRATION
respect of each color, of the principal parts of the mark
which are in that color. The owner of a registered mark shall have the exclusive
right to prevent all third parties not having the owner's
COLOR DEPLETION RULE consent from using in the course of trade identical or similar
The registration of color alone is prohibited because signs or containers for goods or services which are identical
eventually all types of colors will be exhausted if exclusive or similar to those in respect of which the trademark is
acquisition is permitted. registered where such use would result in a likelihood of
confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be
13 Is contrary to public order or morality presumed.
8|ALYNOTES
services which are not similar to those in respect of which i. Sale
the mark is registered: Provided, That use of that mark in ii. Offering for sale
relation to those goods or services would indicate a iii. Distribution
connection between those goods or services and the owner iv. Advertising of any goods or services including
of the registered mark: Provided further, That the interests other preparatory steps necessary to carry out
of the owner of the registered mark are likely to be damaged the sale of any goods or services on or in
by such use. connection with which such use is likely to
cause confusion, or to cause mistake, or to
Limitations on Trademarks Involving Medicines deceive
In case the use of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed. ELEMENTS OF INFRINGEMENT UNDER R.A. NO. 8293
EXCEPT in cases of importation of drugs, and medicines 1. The trademark being infringed is registered in the
allowed under Section 72.1 and of off-patent drugs and Intellectual Property Office; however, in infringement of
medicines. Provided that such drugs and medicines bear the trade name, the same need not be registered
registered marks that have not been tampered, unlawfully 2. The trademark or trade name is reproduced,
modified, or infringed upon. counterfeited, copied, or colorably imitated by the
infringer
Limitation on the Right to Preclude Use of Third Parties 3. The infringing mark or trade name is used in connection
of Names, etc. (Section 148) with the sale, offering for sale, or advertising of any
Registration of the mark shall not confer on the registered goods, business or services; or the infringing mark or
owner the right to preclude third parties from using trade name is applied to labels, signs, prints, packages,
bona fide their names, addresses, pseudonyms, a wrappers, receptacles or advertisements intended to be
geographical name, or exact indications concerning the used upon or in connection with such goods, business
kind, quality, quantity, destination, value, place of origin, or or services
time of production or of supply, of their goods or services: 4. The use or application of the infringing mark or trade
Provided, that such use is confined to the purposes of mere name is likely to cause confusion or mistake or to
identification or information and cannot mislead the public deceive purchasers or others as to the goods or services
as to the source of the goods or services themselves or as to the source or origin of such goods
or services or the identity of such business
LICENSE CONTRACTS 5. It is without the consent of the trademark or trade name
owner or the assignee thereof
Any license contract concerning the registration of a mark,
or an application therefor, shall provide for effective control ✓ Among the elements, the element of likelihood of
by the licensor of the quality of the goods or services of the confusion is the gravamen of trademark infringement.
licensee in connection with which the mark is used. If the
license contract does not provide for such quality control, or ✓ Intent to deceive is NOT required in trademark
if such quality control is not effectively carried out, the infringement and it is the LIKELIHOOD of confusion and
license contract shall not be valid. NOT actual confusion
9|ALYNOTES
TWO TESTS TO DETERMINE LIKELIHOOD OF MCDONALD'S CORPORATION VS. L.C. BIG MAK:
CONFUSION TRADEMARK INFRINGEMENT
DOMINANCY TEST HOLISTIC TEST To establish trademark infringement, the following
elements must be shown: (1) the validity of plaintiff's mark;
Focuses on the similarity (2) the plaintiff's ownership of the mark; and (3) the use
Considers the entirety of of the mark or its colorable imitation by the alleged infringer
of the main, prevalent or
the marks, including results in "likelihood of confusion." Of these, it is
essential features of the
labels and packaging, in the element of likelihood of confusion that is the gravamen
competing trademarks
determining confusing of trademark infringement. Clearly, respondents have
that might cause
similarity adopted in "Big Mak" not only the dominant but also almost
confusion
all the features of "Big Mac." Applied to the same food
product of hamburgers, the two marks will likely result in
Relies on visual, aural, confusion in the public mind. Certainly, "Big Mac" and "Big
and connotative Mak" for hamburgers create even greater confusion, not
comparisons and overall Relies only on visual only aurally but also visually. Absent proof that
impression between the respondents' adoption of the "Big Mak" mark was due to
two trademarks honest mistake or was fortuitous, the inescapable
conclusion is that respondents adopted the "Big Mak" mark
to "ride on the coattails" of the more established "Big Mac"
The test is whether the mark. There is actually no notice to the public that the "Big
general confusion made Mak" hamburgers are products of "L.C. Big Mak Burger,
The test is whether there by the article upon the Inc." and not those of petitioners who have the exclusive
is a similarity of the eye of the casual right to the "Big Mac" mark. This clearly shows respondents'
prevalent features of the purchaser, who is intent to deceive the public. Had respondents' placed a
competing trademarks unsuspicious and off his notice on their plastic wrappers and bags that the
which might cause guard, is such as to likely hamburgers are sold by "L.C. Big Mak Burger, Inc.", then
confusion result in the they could validly claim that they did not intend to deceive
confounding it with the the public. In such case, there is only trademark
original infringement but no unfair competition.
10 | A L Y N O T E S
REMEDIES AGAINST TRADEMARK INFRINGEMENT —
The IP Code does not expressly provide protection against 1. Civil action for damages (Section 156.1)
trademark dilution. Nonetheless, the concept of trademark 2. Impounding of infringing goods by the court (Section
dilution is very much present in the protection of 156.2)
internationally well-known marks. 3. Doubling of damages (Section 156.3)
4. Injunctive relief (Section 156.4)
Section 156. ACTIONS, AND DAMAGES AND 5. Dispose of infringing goods outside the channels of
INJUNCTION FOR INFRINGEMENT — commerce (Section 157.1)
The owner of a registered mark may recover damages from 6. Destruction of infringing goods (Section 157.1)
any person who infringes his rights, and the measure of the 7. Criminal action (Section 170)
damages suffered shall be either 8. Administrative action before IP Office
a) the reasonable profit which the complaining party 9. Prohibit importation of infringing goods (Section 166)
would have made, had the defendant not infringed
his rights LIMITATIONS TO ACTIONS FOR INFRINGEMENT
b) or the profit which the defendant actually made out
of the infringement A. Prior User (Section 159.1)
c) or in the event such measure of damages cannot be Notwithstanding the provisions of Section 155
readily ascertained with reasonable certainty, then hereof, a registered mark shall have no effect
the court may award as damages a reasonable against any person who, in good faith, before the
percentage based upon the amount of gross sales of filing date or the priority date, was using the mark
the defendant or the value of the services in for the purposes of his business or enterprise
connection with which the mark or trade name was
used in the infringement of the rights of the B. Printer of Infringing Mark (Section 159.2)
complaining party. Where an infringer who is engaged solely in the
business of printing the mark or other infringing
The court may impound during the pendency of the action, materials for others is an innocent infringer, the
sales invoices and other documents evidencing sales. owner of the right infringed shall be entitled as
against such infringer only to an injunction against
In cases where actual intent to mislead the public or to future printing
defraud the complainant is shown, in the discretion of the
court, the damages may be doubled. C. Advertisement (Section 159.3)
Where the infringement complained of is contained
The complainant, upon proper showing, may also be in or is part of paid advertisement in a newspaper,
granted injunction. magazine, or other similar periodical or in an
electronic communication, the remedies of the
owner of the right infringed as against the publisher
Section 157. POWER OF COURT TO ORDER INFRINGING or distributor of such newspaper, magazine, or
MATERIAL DESTROYED — other similar periodical or electronic
In any action arising under this Act, in which a violation of communication shall be limited to an injunction
any right of the owner of the registered mark is established, against the presentation of such advertising matter
the court may order that goods found to be infringing be, in future issues of such newspapers, magazines, or
without compensation of any sort, disposed of outside the other similar periodicals or in future transmissions
channels of commerce in such a manner as to avoid any of such electronic communications.
harm caused to the right holder, or destroyed; and all
labels, signs, prints, packages, wrappers, receptacles and The limitations of this subparagraph shall apply only to
advertisements in the possession of the defendant, bearing innocent infringers provided that such injunctive relief shall
the registered mark or trade name or any reproduction, not be available to the owner of the right infringed with
counterfeit, copy or colorable imitation thereof, all plates, respect to an issue of a newspaper, magazine, or other
molds, matrices and other means of making the same, shall similar periodical or an electronic communication
be delivered up and destroyed. containing infringing matter where restraining the
dissemination of such infringing matter in any particular
In regard to counterfeit goods, the simple removal of the issue of such periodical or in an electronic communication
trademark affixed shall NOT be sufficient other than in would delay the delivery of such issue or transmission
exceptional cases which shall be determined by the of such electronic communication is customarily
Regulations, to permit the release of the goods into the conducted in accordance with the sound business
channels of commerce. practice, and not due to any method or device adopted to
evade this section or to prevent or delay the issuance of an
REQUIREMENT OF NOTICE injunction or restraining order with respect to such
Registrant shall give notice that their marks are registered infringing matter
by displaying with the mark the words '"Registered Mark" or
the letter R within a circle or “Reg. IPOPHL.” Such mark FALSE OR FRAUDULENT DECLARATION (Section 162)
supplies the presumption of knowledge that such imitation Any person who shall procure registration in the Office of a
is likely to cause confusion, or to cause mistake, or to mark by a false or fraudulent declaration or representation,
deceive. This presumed knowledge establishes the basis for whether oral or in writing, or by any false means, shall be
recovery of damages. Without such notice, the registrant liable in a civil action by any person injured thereby for any
must prove that the infringer had knowledge of the damages sustained in consequence thereof
registration in order to recover damage.
ANONYMOUS & PSEUDONYMOUS WORKS (Section 179)
DEFENSES AGAINST INFRINGEMENT SUITS — The publishers shall be deemed to represent the authors of
1. Prior use by the defendant articles and other writings published without the names of
2. No likelihood of confusion or mistake or deception the authors or under pseudonyms, UNLESS:
3. Plaintiff’s claimed mark is not protected a) contrary appears
4. Plaintiff’s mark has become generic b) or the pseudonyms or adopted name leaves no
5. Plaintiff’s fraudulent registration doubt as to the author's identity
6. Plaintiff’s mark was abandoned c) or if the author of the anonymous works discloses
7. Plaintiff has not come to the court with clean hands his identity
8. Laches or estoppel
9. Non-competing products or services
10. Defendant’s good faith
11 | A L Y N O T E S
PENALTY AND JUSRISDICTION UNFAIR COMPETITION (Section 168)
Under Section 170 of R.A. No. 8293, which took effect on Any person who shall employ deception or any other means
January 1, 1998, the criminal penalty for infringement of contrary to good faith by which he shall pass off the goods
registered marks, unfair competition, false designation of manufactured by him or in which he deals, or his business,
origin and false description or representation, is for those of the one having established such goodwill, or who
imprisonment from 2 to 5 years and a fine ranging from Fifty shall commit any acts calculated to produce said results, is
Thousand Pesos to Two Hundred Thousand Pesos, to wit: guilty of unfair competition
SEC. 239. REPEALS. - 239.1. All Acts and parts of It is generally settled that unfair competition may consist in
Acts inconsistent herewith, more particularly the wrongful appropriation of a trade secret, defined as
Republic Act No. 165, as amended; Republic Act No. any formula, pattern, device or compilation of information
166, as amended; and Articles 188 and 189 of the which is used in a person’s business and which gives him
Revised Penal Code; Presidential Decree No. 49, an opportunity to obtain an advantage over competitors who
including Presidential Decree No. 285, as amended, do not know or use it.
are hereby repealed.
Goodwill – reputation and public confidence that a
business venture has earned through a period of creditable
Notably, the aforequoted clause did not expressly repeal dealings. Article 521 of NCC provides that a goodwill of a
R.A. No. 166 in its entirety, otherwise, it would not have business is a property and may be transferred together with
used the phrases parts of Acts and inconsistent herewith. the right to use the name under which the business is
The use of the phrases parts of Acts and inconsistent conducted
herewith only means that the repeal pertains only to
provisions which are repugnant or not susceptible of
INFRINGEMENT OF
harmonization with R.A. No. 8293. Section 27 of R.A. No. UNFAIR COMPETITION
TRADEMARK
166, however, is consistent and in harmony with Section
163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest
Unauthorized use of a Passing off one’s goods as
jurisdiction over violations of intellectual property rights
trademark those of another
with the Metropolitan Trial Courts, it would have expressly
stated so under Section 163 thereof.
Fraudulent intent is
Validity of special intellectual property courts or special Intent is essential
unnecessary
commercial court was upheld by the Supreme Court. A.M.
03-03-03-SC 2003-6-17 provides that all IP cases shall be
transferred to the designated Special Commercial Courts Prior registration of the
except those which have undergone the pretrial stage in civil Registration is not
trademark is a pre-
cases or those where any of the accused has been arraigned necessary
requisite to the action
in criminal cases which shall be retained by the court
previously assigned to try them. The Special Commercial
Courts shall have jurisdiction over cases arising within their
respective territorial jurisdiction
12 | A L Y N O T E S
Different classes of goods
Same class of goods or “PASSING OFF” takes place where the defendant by
or services may be
services must be involved imitative on the general appearances of the goods, misleads
involved
prospective purchasers into buying his merchandise under
the impression that they are buying that of his competitors
There can be trademark
infringement without SAN MIGUEL PURE FOODS VS. FOODSPHERE, INC: THE
unfair competition as CONFUSING SIMILARITY MAY OR MAY NOT RESULT
when the infringer Unfair competition is FROM SIMILARITY IN THE MARKS, BUT MAY RESULT
discloses on the labels broader than trademark FROM OTHER EXTERNAL FACTORS IN THE
containing the mark that infringement and PACKAGING OR PRESENTATION OF THE GOODS.
he manufactures the includes passing off The intent to deceive and defraud may be inferred from the
goods, thus preventing goods with or without similarity of the appearance of the goods as offered for sale
public from being trademark infringement to the public. Actual fraudulent intent need not be shown.
deceived that the goods In the instant case, the Court finds no error with the
originate from the findings of the CA and Director General insofar as the
trademark owner presence of the foregoing elements is concerned. First of all,
there exists a substantial and confusing similarity in the
packaging of Foodsphere's product with that of SMPFCI,
SHANG PROPERTIES REALTY CORP. VS. ST. FRANCIS which, as the records reveal, was changed by Foodsphere
DEVELOPMENT CORP: GEOGRAPHICALLY from a paper box to a paper ham bag that is significantly
DESCRIPTIVE TERM & SECONDARY MEANING similar to SMPFCI's paper ham bag. Thus, Foodsphere's
A ‘Geographically Descriptive Term’ is any noun or adjective packaging in its entirety, and not merely its "PISTA" mark
that designates geographical location and would tend to be thereon, renders the general appearance thereof confusingly
regarded by buyers as descriptive of the geographic location similar with the packaging of SMPFCI's ham, that would
of origin of the goods or services. A geographically likely influence purchasers to believe that these products
descriptive term can indicate any geographic location on are similar, if not the same, as those of SMPFCI.
earth, such as continents, nations, regions, states, cities,
streets and addresses, areas of cities, rivers, and any other EXHAUSTION OF INTELLECTUAL PROPERTY RIGHTS —
location referred to by a recognized name. In order to also referred to as the exhaustion doctrine or first sale
determine whether or not the geographic term in question doctrine. It constitutes one of the limits of intellectual
is descriptively used, the following question is relevant: (1) property rights. Once a given product has been sold under
Is the mark the name of the place or region from which the the authorization of the IP owner, the reselling, rental,
goods actually come? If the answer is yes, then the lending and other third party commercial uses of IP-
geographic term is probably used in a descriptive sense, and protected goods in domestic and international markets is
secondary meaning is required for protection. governed by the principle. After a product covered by an IP
right, such as by a patent right, has been sold by the IP right
owner or by others with the consent of the owner, the IP
ASIA BREWERY, INC. VS. COURT OF APPEALS: right is said to be exhausted. It can no longer be exercised
INFRINGEMENT OF TRADEMARK IS A FORM OF by the owner.
UNFAIR COMPETITION
It has been consistently held that the question of For example, if an inventor obtains a patent on a new kind
infringement of a trademark is to be determined by the test of umbrella, the inventor (or anyone else to whom he sells
of dominancy. Similarity in size, form and color, while his patent) can legally prohibit other companies from
relevant, is not conclusive. If the competing trademark making and selling this kind of umbrella, but cannot
contains the main or essential or dominant features of prohibit customers who have bought this umbrella from the
another, and confusion and deception is likely to result, patent owner from reselling the umbrella to third parties.
infringement takes place. Unfair Competition is the There is a "fairly broad consensus" throughout the world
employment of deception or any other means contrary to "that this applies at least within the context of the domestic
good faith by which a person shall pass off the goods market" (National Exhaustion)
manufactured by him or in which he deals, or his business,
or services, for those of another who has already established
goodwill for his similar goods, business or services, or any PATENTS
acts calculated to produce the same result.
The main thrust of SMC's complaint if not infringement of Patent is a statutory monopoly which protects against
its trademark, but unfair competition arising from the unlicensed use of the patent device or process even by the
allegedly "confusing similarity" in the general appearance or one who discovered it through independent research
trade dress of ABI's BEER PALE PILSEN beside SMC's SAN
MIGUEL PALE PILSEN. SMC's brand or trademark: "SAN Patentable Inventions — Any technical solution of a
MIGUEL PALE PILSEN" is not infringed by ABI's mark: problem in any field of human activity which is new,
"BEER NA BEER" or "BEER PALE PILSEN." involves an inventive step and is industrially applicable
shall be Patentable. It may be, or may relate to, a product,
CO VS. JERRY YEUNG: PASSING OFF OR PALMING OFF or process, or an improvement of any of the foregoing
Unfair competition is defined as the passing off (or palming
off) or attempting to pass off upon the public of the goods or REQUISITES OF PATENTABILITY
business of one person as the goods or business of another 1. Any technical solution of a problem in any field of
with the end and probable effect of deceiving the public. This human activity
takes place where the defendant gives his goods the general 2. Inventive Step - An invention involves an inventive
appearance of the goods of his competitor with the intention step if, having regard to prior art, it is not obvious to
of deceiving the public that the goods are those of his a person skilled in the art at the time of the filing date
competitor. In this relation, the distinctions between suits or priority date of the application claiming the
for trademark infringement and unfair competition prove invention
useful: (a) the former is the unauthorized use of a 3. Novelty - An invention shall not be considered new if
trademark, whereas the latter is the passing off of one's it forms part of a prior art
goods as those of another; (b) fraudulent intent is 4. Industrial Applicability - An invention that can be
unnecessary in the former, while it is essential in the latter; produced and used in any industry shall be
and (c) in the former, prior registration of the trademark is industrially applicable
a pre-requisite to the action, while it is not necessary in the
latter.
13 | A L Y N O T E S
5. Patentable subject matter – An invention that does Exception to Prior Art:
not fall within the prohibitions of a non-patentable NON-PREJUDICIAL DISCLOSURE
invention The disclosure of information contained in the application
during the 12 months preceding the filing date or the
NON-PATENTABLE INVENTIONS priority date of the application shall not prejudice the
a) Discoveries, scientific theories and mathematical applicant on the ground of lack of novelty if such disclosure
methods; was made by:
b) Schemes, rules and methods of performing mental 1. The inventor; including any person, who, at the
acts, playing games or doing business, and filing date of application had the right to the patent
programs for computers; 2. A patent office and the information was contained
c) Methods for treatment of the human or animal body (a) in another application filed by the inventor
by surgery or therapy and diagnostic methods and should not have been disclosed by the
practiced on the human or animal body. This office, or
provision shall not apply to products and (b) in an application filed without the
composition for use in any of these methods; knowledge or consent of the inventor by a
d) Plant varieties or animal breeds or essentially third party which obtained the information
biological process for the production of plants or directly or indirectly from the inventor
animals. This provision shall not apply to micro- 3. A third party which obtained the information
organisms and non-biological and microbiological directly or indirectly from the inventor
processes.
e) Aesthetic creations; and RIGHT TO A PATENT
f) Anything which is contrary to public order or The right to a patent belongs to the inventor, his heirs, or
morality. assigns. When 2 or more persons have jointly made an
g) Aesthetic creations invention, the right to a patent shall belong to them jointly.
h) Program for computers
i) Plant varieties or animal breeds or essentially First to File Rule
biological process for the production of plants and If 2 or more persons have made the invention separately and
animals independently of each other, the right to the patent shall
In the case of drugs and medicines, there is no patentable belong to the person who filed an application for such
invention in the following instances: invention, or where two or more applications are filed for the
a) The mere discovery of a new form or new property same invention, to the applicant who has the earliest filing
of a known substance which oes not result in the date or, the earliest priority date
enhancement of a known efficacy of that substance
b) The mere discovery of a new property of new use for E.I. DUPONT DE NEMOURS AND CO. VS. FRANCISCO: AN
known substance ABANDONED PATENT APPLICATION MAY ONLY BE
c) The mere use of a known process unless such REVIVED WITHIN 4 MONTHS FROM THE DATE OF
known process results in a new product that ABANDONMENT IF THE DELAY WAS UNAVOIDABLE
employs at least one new reactant An application not revived within the specified period shall
be deemed forfeited. It is inaccurate for petitioner to argue
“Prior Art” shall consist of — that its prior patent application in the United States
A. Everything which has been made available to the removed the invention from the public domain in the
public anywhere in the world, before the filing date Philippines. A right of priority has no bearing in a case for
or the priority date of the application claiming the revival of an abandoned patent application. Since both the
invention;
United States and the Philippines are signatories to the
B. The whole contents of an application for a patent,
Paris Convention for the Protection of Industrial Property,
utility model, or industrial design registration,
published in accordance with this Act, filed or an applicant who has filed a patent application in the United
effective in the Philippines, with a filing or priority States may have a right of priority over the same invention
date that is earlier than the filing or priority in a patent application in the Philippines. However, this
date of the application right of priority does not immediately entitle a patent
applicant the grant of a patent. A right of priority is not
UTILITY INDUSTRIAL equivalent to a patent. Otherwise, a patent holder of any
PATENT
MODEL DESIGN member-state of the Paris Convention need not apply for
Any composition patents in other countries where it wishes to exercise its
of lines or colors patent.
or any three-
dimensional Right of Priority of an Earlier-Filed Foreign Application
Any technical Any new model form whether or An application for patent filed by any person who has
solution of a of implements or not associated previously applied for the same invention in another
problem in any tools of any with lines or country which by treaty, convention, or law affords similar
field of human industrial colors provided privileges to Filipino citizens, shall be considered as filed as
activity which is product even if that such of the date of filing the foreign application. Provided, that—
new, involves an not possessed of composition or 1. the local application expressly claims priority;
inventive step the quality of form gives a 2. it is filed within 12 months from the date the
and is invention which special earliest foreign application was filed; and
industrially is of “practical appearance to 3. a certified copy of the foreign application together
applicable utility” and can serve as with an English translation is filed within 6 months
pattern for an from the date of filing in the Philippines
industrial
product or
handicraft
Conversion
May be
If not inventive,
converted into a
may be May be
patent
converted to a registered as
application if it
utility model copyright work
complies with all
application
the requisites
Term
20 years 7 years 5 years
14 | A L Y N O T E S
WHO ARE ENTITLED TO A PATENT Notice and Hearing
Two or more Upon filing of a petition for cancellation, the Director of
persons have Legal Affairs shall forthwith serve notice of the filing thereof
made the Shall belong to the person who upon the patentee and all persons having grants or licenses,
invention filed an application for such or any other right, title or interest in and to the patent and
separately and invention the invention covered thereby, as appears of record in the
independently of Office, and of notice of the date of hearing thereon on such
each other persons and the petitioner. Notice of the filing of the petition
Two or more shall be published in the IPO Gazette
Applicant who has the earliest
applications are
filing date or, the earliest priority RIGHTS OF PATENTEES
filed for the same
date A patent shall confer on its owner the following exclusive
invention
Two or more rights:
persons have Right to a patent shall belong to A. Where the subject matter of a patent is a product
jointly made an them jointly To restrain, prohibit and prevent any
invention unauthorized person or entity from making,
Inventions created using, offering for sale, selling or importing that
The person who commissions the product;
pursuant to a
work shall own the patent B. Where the subject matter of a patent is a process
commission
The employee, if the inventive To restrain, prevent or prohibit any
activity is not a part of his regular unauthorized person or entity from using the
duties even if the employee uses process, and from manufacturing, dealing in,
Employee made the time, facilities and materials of using, selling or offering for sale, or importing
the invention in the employer any product obtained directly or indirectly from
the course of his such process
employment The employer, if the invention is C. Patent owners shall also have the right to assign, or
contract the result of the performance of his transfer by succession the patent, and to conclude
regularly-assigned duties, unless licensing contracts for the same
there is an agreement, express or D. Licensing contracts
implied, to the contrary
15 | A L Y N O T E S
(b) Judicial or administrative body has determined that SMITH KLINE BECKMAN CORP. VS. CA: DOCTRINE OF
the manner of exploitation, by the owner of the EQUIVALENTS
patent or his licensee is anti-competitive The burden of proof to substantiate a charge for patent
(c) In the case of drugs and medicines, there is a infringement rests on the plaintiff. Petitioner's evidence
national emergency or other circumstance of failed to show the substantial sameness of petitioner's
extreme urgency requiring the use of the invention patented compound and Albendazole. While both
(d) In the case of drugs and medicines, there is public compounds have the effect of neutralizing parasites in
non-commercial use of the patent by the patentee, animals, the identity of result does not amount to
without satisfactory reason infringement of patent unless Albendazole operates in
(e) In the case of drugs and medicines, the demand for substantially the same way as the patented compound, even
the patented article in the Philippines is not being though it performs the same function or the same result.
met to an adequate extent and on reasonable The doctrine of equivalents thus requires satisfaction of the
terms, as determined by the secretary of the function-means-and-result test, the patentee having the
department of health burden to show that all three components of such
equivalency test are met. As stated early on, petitioner's
Unless otherwise provided herein, the use by the evidence fails to explain how Albendazole is in every
Government, or person authorized by the Government shall essential detail identical to methyl 5 propylthio-2-
be subject to the following: benzimidazole carbamate.
1. In situations under (c), (d) and (e), the right holder
shall be notified as soon as reasonably practicable INFRINGEMENT ACTION BY A FOREIGN NATIONAL
2. The scope and duration of such use shall be limited Any foreign national or juridical entity who meets the
to the purpose for which it was authorized requirements under Reciprocity Rule and not engaged in
3. use shall be non-exclusive business in the Philippines, to which a patent has been
4. The right holder shall be paid adequate granted or assigned under this Act, may bring an action for
remuneration in the circumstances of each case, infringement of patent, whether or not it is licensed to do
taking into account the economic value of the business in the Philippines under existing law
authorization
5. The existence of a national emergency or other Reciprocity Rule
circumstances of extreme urgency, shall be subject Any person who is—
to the determination of the President of the a. a national or who is domiciled or has a real and
Philippines effective industrial establishment
b. in a country which is a party to any convention, treaty
INFRINGEMENT or agreement relating to intellectual property rights or
The making, using, offering for sale, selling, or importing the repression of unfair competition
a patented product or a product obtained directly or c. to which the Philippines is also a party, or extends
indirectly from a patented process, or the use of a patented reciprocal rights to nationals of the Philippines by law
process without the authorization of the patentee d. shall be entitled to benefits to the extent necessary to
give effect to any provision of such convention, treaty
Contributory Infringer or reciprocal law, in addition to the rights to which
Anyone who actively induces the infringement of a patent or any owner of an intellectual property right is
provides the infringer with a component of a patented otherwise entitled
product or of a product produced because of a patented
process knowing it to be especially adopted for infringing REMEDIES FOR PATENT INFRINGEMENT
the patented invention and not suitable for substantial non-
infringing use shall be liable as a contributory infringer and 1. Action for Damages
shall be jointly and severally liable with the infringer Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose rights
TESTS OF PATENT INFRINGEMENT have been infringed, may bring a civil action before a
A. Economic Interest Test: when the process- court of competent jurisdiction, to recover from the
discoverer’s economic interests are compromised infringer such damages sustained thereby. If the
B. Literal Infringement Test: there is infringement of damages are inadequate or cannot be readily
patent under this test if one makes, uses, or sells ascertained with reasonable certainty, the court may
an item that contains all the elements of the patent award by way of damages a sum equivalent to
claim. It is satisfied by either of the following: reasonable royalty.
(i) Exactness rule – the item that is being sold,
made, or used conforms exactly to the patent The court may, according to the circumstances of the
claim of another case, award damages in a sum above the amount found
(ii) Addition rule: one makes, uses, or sells an as actual damages sustained provided that the award
item that has all the elements of the patent does not exceed three times the amount of such actual
claim of another plus other elements damages.
C. Doctrine of Equivalents (function-means-and-
results test): infringement takes place when a Damages cannot be recovered for acts of infringement
device appropriates a prior invention by committed before the infringer had known, or had
incorporating its innovative concept and, although reasonable grounds to know of the patent. It is
with some modification and change, performs presumed that the infringer had known of the patent if
substantially the same function in substantially the on the patented product, or on the container or package
same way to achieve substantially the same result in which the article is supplied to the public, or on the
advertising material relating to the patented product or
PEARL & DEAN INC. VS. SHOEMART, INC: TRADEMARK, process, are placed the words “Philippine Patent” with
COPYRIGHT AND PATENTS ARE DIFFERENT the number of the patent
INTELLECTUAL PROPERTY RIGHTS THAT CANNOT BE
INTERCHANGED WITH ONE ANOTHER No damages can be recovered for acts of infringement
The Court emphasized that to be able to effectively and committed more than four years before the institution
legally preclude others from copying and profiting from an of the action for infringement
invention, a patent is a primordial requirement. No patent,
no protection. The ultimate goal of a patent system is to 2. Injunction
bring new designs and technologies into the public domain Any patentee, or anyone possessing any right, title or
through disclosure. Ideas, once disclosed to the public interest in and to the patented invention, whose rights
without the protection of a valid patent, are subject to have been infringed, may bring a civil action before a
appropriation without significant restraint. court of competent jurisdiction, to recover from the
16 | A L Y N O T E S
infringer such damages sustained thereby, plus Period of filing is any time after the grant of patent. Except
attorney’s fees and other expenses of litigation, and to for those not being worked in the Philippines on a
secure an injunction for the protection of his rights commercial scale, before the expiration of a period of 4 years
from the date of the filing of the application or 3 years from
3. Disposal or Destruction the date of patent whichever period expires last (Rules and
The court may, in its discretion, order that the Regulations on Inter Partes Proceedings, RULE 6, SEC. 2)
infringing goods, materials and implements
predominantly used in the infringement be disposed of Parallel Importation
outside the channels of commerce or destroyed, without It is the importation of drugs and medicines by a
compensation government agency or by any third party
If the court shall find the patent or any claim to be invalid, VOLUNTARY
COMPULSORY LICENSING
it shall cancel the same, and the Director of Legal Affairs LICENSING
upon receipt of the final judgment of cancellation by the Grantor
court, shall record that fact in the register of the Office and Patent owner Director of Legal Affairs
shall publish a notice to that effect in the IPO Gazette Grounds
Those mentioned under
VOLUNTARY LICENSING Section 93 of IP Code as
Refers to the grant by the patent wonder to a third person No specific grounds
amended by Section 10 of
of the right to exploit a patented invention. It is to encourage enumerated
RA 9502 (see enumeration
the transfer and dissemination of technology, prevent or above)
control practices and conditions that may in particular
cases constitute an abuse of intellectual property rights ASSIGNMENT AND TRANSMISSION OF RIGHTS
having an adverse effect on competition and trade
Transmission of Rights
Technology Transfer Arrangements refers to contracts or Patents or applications for patents and invention to which
agreements involving the transfer of systematic knowledge they relate, shall be protected in the same way as the rights
for the manufacture of a product, the application of a of other property under the Civil Code
process, or rendering of a service including management
contracts; and the transfer, assignment or licensing of all Assignment of Inventions
forms of intellectual property rights, including licensing of An assignment may be of the entire right, title or interest in
computer software except computer software developed for and to the patent and the invention covered thereby, or of
mass market an undivided share of the entire patent and invention, in
which event the parties become joint owners thereof. An
(Note: check section 87 and 88 for prohibited and mandatory assignment may be limited to a specified territory
provision in voluntary licensing)
COPYRIGHT
2 Periodicals and newspapers
However, protection only extends to the expression of idea, Pure new reports no longer finds protection under the new
not to the idea itself or any procedure, system, method or law, but a column or published comment will. News of the
operation, concept, principle, discovery or mere data. day and other miscellaneous facts having the character of
mere items of press information are not copyrightable.
No Formality Rule However, the copyright protection subsists in any work once
The Berne Convention provides that copyright protection it entails intellectual effort that may result in the creation of
shall not be subject to any formality (Article 5(2) of the Berne news report such as news expressed in video footage.
Convention).
COPYRIGHT PATENT
Time of Accrual Lectures, sermons, addresses, dissertations
When a person, by 3 prepared for oral delivery, whether or not
independent research reduced in writing or other material form
arrives at the same
It may be vested in a work
product or that which is
closely similar or even
already patented, he is Lectures may be copyrightable provided it is written.
identical to an earlier, or
restrained by the arm of
already patented work,
the law from exploiting
provided that the former is
such an invention by 4 Letters
truly original
reason of the patent
already granted to the
earlier discoverer Letters and other private communications in writing are
Non-Patentable Inventions owned by the person to whom they are addressed and
Non-patentable inventions Non-patentable inventions delivered, but they cannot be published or disseminated
may be subject of a may not be subject of a without the consent of the writer or his heirs (Civil Code,
copyright patent Article 723)
ORIGINAL WORKS
Literary and artistic works, hereinafter referred to as
“works”, are original intellectual creations in the literary and Original ornamental designs or models for
artistic domain protected from the moment of their creation articles of manufacture, whether or not
and shall include in particular: 8
registrable as an industrial design, and other
works of applied art
18 | A L Y N O T E S
Work of Applied Art WORKS NOT PROTECTED
An artistic creation with utilitarian functions or No protection shall extend, under this law, to:
incorporated in a useful article, whether made by hand or (a) Any idea, procedure, system, method or operation,
produce on an industrial scale. It includes all original concept, principle, discovery or mere data as such,
pictorials, graphics, and sculptural works that are intended even if they are expressed, explained, illustrated or
to be or have been embodied in useful article embodied in a work;
(b) News of the day and other miscellaneous facts
having the character of mere items of press
Illustrations, maps, plans, sketches, charts and information; or
9 three-dimensional works relative to geography, (c) Any official text of a legislative, administrative or
topography, architecture or science legal nature, as well as any official translation
thereof
(d) Any work of the government of the Philippines
What is copyrightable in a map is the selection, Prior approval of the government agency or
arrangement, and presentation of the component parts office wherein the work is created shall be
necessary for exploitation of such work for profit.
19 | A L Y N O T E S
e. The author of the work so LIMITATIONS ON COPYRIGHT
adapted
Subject to stipulations among the I. Fair Use
creators
The fair use of a copyrighted work for criticism, comment,
For the exhibition, the producer news reporting, teaching including multiple copies for
shall exercise the copyright classroom use, scholarship, research, and similar purposes
is not an infringement of copyright. Fair use is defined as
the privilege to use the copyrighted material in a reasonable
The publishers shall be deemed to manner without the consent of the copyright owner or as
represent the authors of articles copying theme or ideas rather than their expression
and other writings published
without the names of the authors Decompilation, which is understood here to be the
ANONYMOUS reproduction of the code and translation of the forms of the
or under pseudonyms, unless—
AND computer program to achieve the inter-operability of an
1. the contrary appears, or
PSEUDONYMOUS independently created computer program with other
2. the pseudonyms or adopted
WORKS programs may also constitute fair use.
name leaves no doubt as to the
author’s identity, or
3. if the author of the anonymous In determining whether the use made of a work in any
works discloses his identity particular case is fair use, the factors to be considered shall
include:
(a) The purpose and character of the use, including
When an author contributes to a whether such use is of a commercial nature or is for
CONTRIBUTION collective work, his right to have his non-profit educational purposes
TO COLLECTIVE contribution attributed to him is (b) The nature of the copyrighted work
WORK deemed waived unless he expressly (c) The amount and substantiality of the portion used
reserves it in relation to the copyrighted work as a whole
(d) The effect of the use upon the potential market for
or value of the copyrighted work
DURATION OF COPYRIGHT
20 | A L Y N O T E S
V. Importation for Personal Purposes ii. that the original or the copy displayed has been
sold, given away or otherwise transferred to
The importation of a copy of a work by an individual for his another person by the author
personal purposes shall be permitted without the 11. Use made of a work for the purpose of any judicial
authorization of the author of, or other owner of copyright proceedings or for the giving of professional advice by
in, the work under the following circumstances: a legal practitioner.
(a) When copies of the work are not available in the
Philippines and: COPYRIGHT INFRINGEMENT
1. Not more than one copy at one time is A person infringes a right protected under RA 10372 when
imported for strictly individual use only; or one:
2. The importation is by authority of and for (a) Directly commits an infringement
the use of the Philippine Government; or (b) Benefits of the infringing activity of another person
3. The importation, consisting of not more who commits an infringement if the person
than three such copies or likenesses in any benefiting has been giving notice of the infringing
one invoice, is not for sale but for the use activity and has the right and ability to control the
only of any religious, charitable, or activities of the other person
educational society or institution duly (c) With knowledge of infringing activity induces, cause
incorporated or registered, or is for the or materially contributes to the infringing conduct
encouragement of the fine arts, or for any of another
state school, college, university, or free
public library in the Philippines. MICROSOFT CORPORATION VS. MANANSALA: THE
(b) When such copies form parts of libraries and GRAVAMEN OF COPYRIGHT INFRINGEMENT IS NOT
personal baggage belonging to persons or families MERELY THE UNAUTHORIZED MANUFACTURING OF
arriving from foreign countries and are not intended INTELLECTUAL WORKS BUT RATHER THE
for sale UNAUTHORIZED PERFORMANCE OF ANY OF THE ACTS
COVERED BY SECTION 5 OF PD 49
VI. General Limitations The mere sale of the illicit copies of the software programs
was enough by itself to show the existence of probable cause
1. Recitation or performance of a work, once it has been for copyright infringement. There was no need for the
lawfully made accessible to the public, if done petitioner to still prove who copied, replicated or reproduced
privately and free of charge or if made strictly for a the software programs.
charitable or religious institution or society
2. Making of quotations from a published work if they
are Piracy
i. compatible with fair use Any unauthorized copying of copyrighted materials for
ii. only to the extent justified for the purpose, commercial purposes, and the unauthorized commercial
including quotations from newspaper articles and dealing in copied materials
periodicals in the form of press summaries
iii. the source and the name of the author, if Subconscious Copying Doctrine
appearing on the work, are mentioned It contemplates infringement or plagiarism by copying from
3. Reproduction or communication to the public by another work but committed subconsciously from memory
mass media of articles on current political, social, rather than conscious use by deliberately copying. The
economic, scientific or religious topic, lectures, overall appearance or impression establishes infringement.
addresses and other works of the same nature Trivial or minor changes do not necessarily negate
4. Reproduction and communication to the public of infringement.
literary, scientific or artistic works as part of
reports of current events by means of photography, Plagiarism
cinematography or broadcasting It is the act of appropriating the literary composition of
5. Inclusion of a work in a publication, broadcast, or another, or parts, or passages of his writings, or the ideas
other communication to the public, sound recording or language of the same and passing them off as the
or film, if such inclusion is made by way of illustration production of one’s mind. The incorporation in one’s work
for teaching purposes and is compatible with fair use of that of another without proper acknowledgement thereof
6. Recording made in schools, universities, or
educational institutions of a work included in a HABANA VS. ROBLES AND GOODWILL TRADING CO:
broadcast for the use of such schools, universities or COPYING ALONE IS NOT WHAT IS PROHIBITED. THE
educational institutions. Such recording must be COPYING MUST PRODUCE AN INJURIOUS EFFECT
deleted within a reasonable period after they were When is there a substantial reproduction of a book? It does
first broadcast and that such recording may not be not necessarily require that the entire copyrighted work, or
made from audiovisual works which are part of the even a large portion of it, be copied. If so much is taken that
general cinema repertoire of feature films except for the value of the original work is substantially diminished,
brief excerpts of the work there is an infringement of copyright and to an injurious
7. Making of ephemeral recordings by a broadcasting extent, the work is appropriated. A copy of a piracy is an
organization by means of its own facilities and for use infringement of the original, and it is no defense that the
in its own broadcast; pirate, in such cases, did not know whether or not he was
8. Use made of a work by or under the direction or infringing any copyright; he at least knew that what he was
control of the Government, by the National Library or copying was not his, and he copied at his peril.
by educational, scientific or professional institutions
where such use is in the public interest and is KINDS OF INFRINGEMENT
compatible with fair use; A. Direct Infringement – it is an infringement by a
9. Public performance or the communication to the person who without the consent of the owner of the
public of a work, in a place where no admission fee is copyright, does anything the sole right to do which
charged in respect of such public performance or is by law conferred on the owner of the copyright
communication such as unauthorized translations, infringement by
10. Public display of the original or a copy of the work not reproduction, or unauthorized public performance
made by means of a film, slide, television image or of work
otherwise on screen or by means of any other device B. Indirect Infringement – dealings with works of
or process. Provided that direct infringement
i. either the work has been published, or
21 | A L Y N O T E S
DEFENSES AGAINST CHARGE OF INFRINGEMENT packaging alleged to infringe a copyright and
1. Fair dealing or fair use implements for making them
2. Consent or permission of copyright holder
3. Common source 5. Destruction without any compensation
Deliver under oath for destruction without any
De Minimis Principle compensation all infringing copies or devices, as well as
Refers to minimal things, small and trivial. Certain acts all plates, molds, or other means for making such
would be considered too minimal to be considered acts of infringing copies as the court may order
infringement
Presumption of Authorship
REMEDIES FOR COPYRIGHT INFRINGEMENT The natural person whose name is indicated on a work in
the usual manner as the author shall, in the absence of
1. Injunction proof to the contrary, be presumed to be the author of the
The court may order the defendant to desist from an work. This provision shall be applicable even if the name is
infringement, among others, to prevent the entry into a pseudonym, where the pseudonym leaves no doubt as to
the channels of commerce of imported goods that the identity of the author. The person or body corporate
involve an infringement, immediately after customs whose name appears on an audio-visual work in the usual
clearance of such goods manner shall, in the absence of proof to the contrary, be
presumed to be the maker of said work.
2. Damages
Pay to the copyright proprietor or his assigns or heirs PRESCRIPTION OF ACTIONS
such actual damages, including legal costs and other
expenses, as he may have incurred due to the REMEDY PRESCRIPTIVE PERIOD
infringement as well as the profits the infringer may 4 years from the time the cause
have made due to such infringement, and in proving Action for Damages
of action arose
profits the plaintiff shall be required to prove sales only Subject to the general rules of
and the defendant shall be required to prove every Criminal Action
prescription of crimes
element of cost which he claims, or, in lieu of actual Injunction None
damages and profits, such damages which to the court Impounding and
shall appear to be just and shall not be regarded as None
Destruction
penalty.
3. Criminal Penalties
Any person infringing any right secured by provisions
of Part IV of this Act or aiding or abetting such
infringement shall be guilty of a crime punishable by:
FREQUENCY PENALTY
P50,000 to
1st offense 1 – 3 years
P150,000
3 years and
P150,000 to
2nd offense 1 day – 6
P500,000
years
6 years and
P500,000 to
3rd offenses 1 day – 9
P1,500,000
years
In all cases, subsidiary imprisonment in cases of
insolvency
Persons Liable
Any person who at the time when copyright subsists in
a work has in his possession an article which he knows,
or ought to know, to be an infringing copy of the work
for the purpose of:
(a) Selling, letting for hire, or by way of trade
offering or exposing for sale, or hire, the article;
(b) Distributing the article for purpose of trade, or
for any other purpose to an extent that will
prejudice the rights of the copyright owner in
the work; or
(c) Trade exhibit of the article in public