Intellectual Property Code of the Philippines 6.

Coordinate with other government agencies and the

Defined:The legal rights which result form intellectual private sector efforts to formulate and implement plans to
activities in the industrial, scientific and literary and artistic polices to strengthen the protection of intellectual property
fields. right in the country.
Principal purpose of Intellectual Property law:
To protect and secure the exclusive rights of scientist, Bureau under the Intellectual Property office
inventors artist and other gifted citizens to their intellectual 1. Bureau of Trademark
property and creations, particularly when beneficial to the 2. Bureau of Copyright
people for such periods as provided by law. 3. Bureau of patent
4. The documentation, information and technology transfer
Purpose: bureau
It shall protect and secure the exclusive right of 5. The management information system and the EDP
scientist, inventors, artist and other gifted citizen Bureau
to their intellectual property and creators 6. The administrative , financial and personnel services
particularly wen beneficial to the people for such bureau
periods as provided in the act
Technology Transfer Arrangement: Intellectual Property Office
 Ratio: One might have intellectual property but This is headed by the Director General. Just in case there is
he or she cannot mass produce for the public an issue where must appeal be made from the decision of
consumption. Through this arrangement one can the bureau of intellectual property office?
enter into a contract with another to mass produce
the invention and then they will share this to the BUREAU - ( appeal) Director General of the
public. Intellectual Property Office because the decision is
rendered by the director of the Director of legal affairs.
It refers to contracts or agreement involving the transfer of
systematic knowledge for the manufacture of the product , Trademark Tradename Copyright Patentable
the application of a process or rendering of a service Any visible Name or Literary and Technical
including management contract and the signs capable designation artistic solution to
transfer ,assignment or licensing of all forms of intellectual of identifying or work a problem
property rights, including licensing of computer software. distinguishin distinguishin in any
g goods or g an field of
Government Office tasked to promote an protect service of an enterprise human
intellectual property rights enterprise activity
The Philippine Intellectual Property office. which
Functions: involves
1. Examine application for grant of letter patent for new, an
inventions and register utility models and industrial inventive
designs; ( patent) step and
industriall
2. Examine application for the registration mark, y
geographic indication integrated circuits ( Trademark) applicable

3. Registration of technology transfer arrangement and

settle disputes involving technology transfer payments and PATENT Copyright Trademark
implement strategies to promote and facilitate technology Invention , Literary and Any visible sign
transfer. technical solution artistic work capable of
to a problem which is original distinguishing
4. Promote the use of patent information as a tool for which is new, intellectional goods or servies
technology development; involves an creation of an enterprise
inventive step or a brand
- After the period of protection assuming covid and industrially
19 is still around there can be a copy of this applciabel
invention the one who copies the invention is not Bureau of Patents Not required Bureau of
liable because the period of protection had IPO optional at the trademark and
already expired. National Library intellectual
5. Adjudicate contested proceeding affecting intellectual or PO property office
property rights; 20 years from Genreally 50 10 years
- Bureau of legal affairs: Intellectual property filing or priority years after the renewable
office, they can conduct hearings and decide as to data death of the indefinitely
the respective rights and duties of the parties author
involved.
Pearl and Dean vs Shoemark
1.Pearl and dean is engagaged in the manufacture of
advertising display unit and light boxes. These unit utilize
specially printed poster sandwiched between plastic sheet
and illuminated back light. Pd secured a copyright
restriction over the drawing of these light boxes The light
boxes were marketened under the trademark Pster Ads. P
and Dean secured trademark registration for stationaries,
such as letter, head envelopes calling card and newsletter.
Without going through Pearl and Dean, SM ordered the
same boxes from NEMI Pearl and Dean former contractor.
PD sued SM and NEMI for COpyriht infringement ,
Trademark and unfair competition
Held: They should have secured a patent over the product.
The trademark is only as to the stationaries and not the
product itself. Poster ads is generic.
Laws under the Intellectural Property code
1. Law on Patent
2. Trademark
3. Copyright.
Patent
Definition: Is the grant of exclusive right to make, use and
sell patented object personally or through others as well as
the grant of rights to effectively prohibit others from
practicing the invention or profiting therefor without the
consent of owner.
- When granted a patent one cannot copy the
patented product without his consent of the
inventor himself.
Purpose : To provide right and protection to the inventor
after the invention is disclosed to the public. It also seeks to
restrain and prevent unauthorized persons from unjustly
profiting from a protection invention .
A. What are the Patentable Invention
RA 9502: University Accesible Cheaper Quality
Medicine
a. Compulsory Licensing on the manufacture of
patented medicine
b. Compulsory licensing on importation of
medicine protected by patent or trademark
c. Non patentability of second use of known
substance unless there is enhanced efficacy
Example: Viagra except enhanced efficiacy
BASIC Patent Principles:
1. Territoriality : Patents are only valid in the
country or region which they are granted
2. First to File rule: Applicant who files first gets the
patent
3. Disclosure : Applicant shall disclose the
invention in a manner sufficiently clear and
complete. Disclosure in exchange of protection
4. Conditional: Patents are granted only upon
compliance with the rules
5.Limited Right
Any technical solution to a problem in any field of
human activity which is new, involves an inventive step
and industrially applicable shall be patentable .It may
relate to a product , process or improvement or the forgoing
( Section 21)
1. New( Novel): An invention shall not be
considered new if it forms part of a prior
a. Everything which is made available to the public
anywhere in the word before the filing date or
priority date the application. ( Written
description, use oral description)
Prior Art: The whole content of application for a patent
utility model or industry ( first to file rule)
- Published in accordance with the IP Code
- Filed or effective in the Philppines
- With filing or priority date earlier than
application
- The defense of lack of novelty can be
established by a single prior art reference
that discloses each and every element of
claimed invention ( Single lang and not
combined reference)
Gen Rule: If you publish your invention in a journal
demonstrate, sell or discuss your invention to the public
before you file a patent you cannot get a patent
Exception: If you have disclosed or published your
invention in a journal, demonstrate or sell or discuss your
invention to the public you can still file a patent application
within 12 months from the date of disclosure or
publication.
b. Inventive Step: Having regard to prior art is it
not obvious to a person skilled in art ( Ordinary
person skilled in the art) at the time of the filing
date or priority date of the application claiming
invention
Inventive Step= Non obviousness’
Graham vs Deere: Scope and content of prior art at the time
of filing. Difference between the prior art and the claims at
issue and level of ordinary skill in the pertinent art.
Person Skilled in the art:
1. Ordinary practitioner
A. Has access and understanding of all the prior
art
B. Aware of common general knowledge in
specific art
C. Observes development in related technical
field
2. Could be a team
3. Need not have inventive ability.
c. Industrially applicable: An invention that can
be produced and use in industry shall be
industrially appcable
B. Non -Patentable Invention
1. Discoveries, scientific theories and mathematical
methods.
- Na discover mo lang e medicinal plant
-Law on gravity
2. Scheme, rules and method of performing mental act,
playing games or doing business program for computer
- Ex: He was able to conceptualize how to solve a
specific problem involving a game and that when
he use it he will be able to solve a particular
problem
3. Method for treatment of the human body or animal body
by surgery or therapy and diagnostic method practiced on
the human or animal body by surgery or therapy and
diagnostic methods practiced on human or animal body
- Ex: Technique for operation, for policy
consideration, it will prevent the development of
medicine and promotion of science
4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This
provision shall not apply to micro-organism and non
biological and microbiological process
- One is able to develop a hybrid plant resistant to
flooding
5. Aesthetic creation
- Plastic Surgery
6. Anything which is contrary to public order or morality
- Anything is scandalous : Sunglass which is able
to look into the body of the person being looked
at.
Person Entitled to the Right
a. The right to a patent belongs to the inventor, his heirs or
assigns
- Q: Why are heirs included?
A: Patent is a property, it is an intellectual
property such that the owner may be able to allow
these properties to be succeeded by his heirs.
Q: If the inventor sold his invention for a huge
amount of money can he sign a deed of
assignment in favor of one who purchase it?
A: Yes. This is a property right.
b. When two or more person have jointly made an
invention the right to a patent shall belong to them jointly
c. First to file rule: If two or more person have made the
invention separately and independently the right of
patent shall belong to the first person who filed the
application for the said invention, or where two or more
application are filed for the same invention to the
applicant who has earliest filing date or the earliest
priority date. ( The right to the patent shall belong to the
person who filed for application for each invention)
- In the old code, we have not adhered to the
first to file rule, what was observed was the
first to use rule. But this practice is
problematic since there is difficulty to
determine who actually uses the invention
first.
- The first to file rule is a mechanism where
the right to patent is given to the one who
registered his inventio first.
Employee made the invention in the course of his
employment contract the patent belongs to
a. The employee if the inventive activity is not a
part of his regular duties even if the employee
uses the time and facilities and material of the
employer
b. The employer if the invention is a result of the
performance of his regularly assigned duties
unless there is an agreement express or implied
c. Commission Work they can agree as to the
contact
“ Priority date”
 Check mo muna first to file
 Then apply right of priory rule
An application for patent filed by any person
who has previously applied for the same invention in
another country which by treaty , convention or law affords
similar privileges to Filipino Citizen shall be considered as
filed as of the date of filing by the foreign application.
-Assuming that there is foreign pharma company
they applied for the registration of this vaccine with the US
they were given patent over the invention.
Requirement:
1. The local application expressly claim priority
2. It is filed within twelve month period from the date the
earliest foreign application was filed
3.A certified copy of a foreign application together with an
English translation is filed within six months from the date
of filing in the Philippines
How to determine earlier filer?
- Documentary Proof as to when the
application was filed
Contents of A PATENT
The patent applicant shall be issued in the name
of the Republic of Philippines under the seal of office shall
be signed by the Director, and registered together with
description ,claims and drawings if any on books and
records of the office. ( * Drawings: For the public after the
period of patent expired the public can mass produce
leading to lower prices”
Disclosure: The application shall disclose the invention in
a manner sufficiency clear and complete for it to be carried
out by a person skilled in art. The application shall contain
one or more claim which shall define the matter for
which the protection is sought. Each claim is clear and
concise and shall be supported by description.
“When the language of its claim is clear and distinct the
patentee is bound thereby and may not claim anything
beyond them and so are the courts bound which may not
add to or detract form claims matters not expressed or
implied nor may they enlarge the patent beyond the scope
of that which the ivnetor claimed and the patent office
allowed even if the patentee may have been entitled to
something more than the words it has chosen would
include.
Term of Patent: The term of the patent shall be twenty
years from the date of the filing of application .
May the patent be canceled once it is issued?
Yes, The patent is merely a grant of privilege by the
government and may be canceled based on the ground
specified by law.
Mandatory Application:
Publication:
The patent application shall be published in the IPO
Gazette together with a search document established by or
on behalf of the office citing any document that reflects
prior art , after the expiration of eighteen months from the
filing date or priority date. After publication of a patent
application any interested party may inspect the application
open to the public.
Grounds of cancellation: Any person can file for a
petition to cancel citing the ff grounds
1. That what was claimed as an invention is not new or
patentable. ( Novelty is absent)
2. That the patent does not disclose the invention in a
manner sufficiently clear and complete for it to be carried
out by any person skilled in art ( complete disclosure)
3. That the patent is contrary to public order or morality.
( non patentable product)
Limitations :
The owner of the patent has no right to prevent third parties
form performing without his authorization the acts referred
to in section 71.
1. Using a patented product which has been put in
the market in the Philippines by the owner of the
product or with his express consent
Ako mismo nakalagay sa market.
2. Where the act is done privately and non
commercial scale or for non commercial purpose
3. Where the act consist of making or using for the
purpose experiments that related to the subject
matter of the patented invention.
4. In case of drugs and medicines where the act
solely for purpose reasonably related to
development and submission of information and
issuance of approval by government regulatory
agencies.
5. Where the act consist of preparation for
individual cases in pharmacy or by medical
professional of a medicine
6. Where the invention is used in any ship, vessel ,
aircraft, land vehicle of any country entering the
territory
Prior User:
Prior user who in good faith was using the invention or
has undertaken serious preparation to use the invention in
his enterprise or business before the filing date or priority
date of the application on which the patent Is granted shall
have the right to continue the use thereof as envisaged in
such preparation within the terrirory where the patent
produces its effect.
- You cannot sue the prior use
The right of prior user may only be transferred or assigned
together with his enterprise or business or with the part of
his enterprise or business in which the use or preparation
for the use have been made
Use of the government
Use by the government: Government agency or third
person authorized by the government may exploit the
invention without agreement of the patent owner when :
1. Public interest in particular national security,
nutrition, health or development of other sectors
determined by appropriate agency of the
government
2. Judicial or administrative body determined that
the manner of exploitation by the owner of the
patent or his licensee is anti competitive
A government agency third person authorized by
government may exploit an invention even without
agreement of the patent owner when:
3. Drugs and medicine there is a national
emergency or other circumstance of extreme
urgency requiring the use of invention
4. In case of drugs and medicine there is a public
non commercial use of the patent by th patentee
without satisfactory reason
5. In case of drugs and medicine the demand for
patented article in the Philippines is not being
met to an adequate extend and or reasonable term
as determined by the DOH
Other Limitation : Compulsory Licensing
Ground for Compulsory Licensing : The director of legal
affairs may grant a license to exploit a patented legal
invention even without agreement of the patent owner in
favor of any person who has shown his capability to exploit
the invention ( 3rd person)
1. National Emergency and extreme urgency
2. Public interest, national security ,nutrition, health
or development of other vital sectors of the
national economy as determined by the
appropriate agency of the govenremnt
3. When the judicial or administrative body has
determined that the manner of exploitation by the
owner of the patent or his license is anti
competitive
Patent Rights and Infingements:
Patent owner:
1. Patent owner: Product: Restrain, prohibit and
prevent any unauthorize person from
making ,using offering for sale, selling or
importing the product.
2. Process: Exclusive right to restrain prohibit and
prevent any unauthorized person from using the
 process xx…
3. Assign: Right to assign or transfer by succession
the patent and to conclude licensing contracts for
the patent.
Patent Infringement
Patent Infringement: The making, using offering for selling
or importing of a patented product or a product obtained
directly or indirectly from a patented process or the use of
the patented process without the authorization of the
parties.
Extent of protection:
Literal Infringement The extent of protection conferred by
the patent shall be determined by the claims which are
interpreted in the light of description and drawings. ( means
and bound)
Doctrine of Equivalents: Due account shall be taken of the
elements which are equivalent to the elements expressed in
the claims so that the claim shall be considered to cover not
only all the claims expressed therein but also equivalents.
Patents :
1. Literally
2. Equivalents.
Steps to determine the presence of infringement
1. Determine if there is literal infringement. If there is a
literal infringement the defendant is liable
2. If there is no literal infringement then apply the doctrine
of equivalent should be applied
Literal Infringement: There is a infringement of patent
under this test if one makes, uses or sells an item that
contains all the elements of the patent claim
a. Exactness rule: The item is being sold made
or used conforms exactly to the patent claim of
another
b. Addition rule : One makes, use or sells an
item that has all the elements of patent claim of
another plus other elements
Example:
1.Patent claim : Biodegradable composition comprising 1.
Resin and Soy protein
Accused Product: 1. Resin + Elastomeric Material 2. Soy
protein
There is literal infringement in this case
Doctrine of Equivalents: An infringement also takes place
when a device appropriate a prior invention by
incorporating its innovative concept and although with
some modification and change, performs substantially
the same function in substantially in the same way to
achieve substantially the same result. In other words, the
principle or mode of operation must be the same or
substantially the same. Hence it must pass the function
means result test. The patentee has the burden to show that
all the three element of equivalent is present
Defenses:
1. The patent is invalid
2 One of the grounds on which a petition for cancellation
can be brought is present
Example:
1.Patent claim : Biodegradable composition comprising 1.
Resin and Soy protein
Accused: 1. Resin 2. Potato starch
 They can work in the same result they are
equivalents
Defenses :
1. May show invalidity of the patent or any claim
thereof on any ground on which the petition for
cancellation may be brought
1. Smith Kline Beckham Corp. vs. CA, GR No.
126627, Aug. 14, 2003
Smith Kline filed before Philippine Patent office an
application of
Smith Kline filed an application before the Philippine
Patent office an application of patent over its invention
application of patent over an invention Methods and
Composition for producing parasite activity, the patent was
issued to the petitioner for a period of seventeen years. The
petitioner filed a case of infringement and unfair
competition against the respondent claiming that the patent
overs the substance Albendazole and the respondent cannot
use the same without his consent. The respondent then
averred that the latter patent did not include the said
compound as the said substance is not patentable.
Issue: Whether the respondent is liable for patent
infringement
No. The patent does not include the compound
Albendazole. The doctrine of equivalent provides that
infringement takes place when a device appropriates a prior
invention by incorporating its innovative concept although
with some modification and change , however the same still
performs the same function and the same result.
In this case, the Doctrine of Equivalent does not apply, both
compounds have the effect of neutralizing parasite in
animal, identity in result does not amount to patent of
infringement unless Albendazole operates substantially in
the same way or same means as the patented compound.
Hence, this means that the principle or mode of operation
must be the same or substantially the same.
Divisional Application: This comes to play when two or
more inventions are claimed in a single application but are
of such a nature that as single patent may not be issued for
them The applicant is required to divide that is to limit the
claims to whichever invention he may elect , whereas those
invention not elected may be subject of separate application
which are called divisional application. Here the petitioner
Methly proplitho benzimonac is an invention that is distinct
form the other invention claimed in the original application
divided. ( Hence it is necessary that a patent for Methyl
must be obtained.
 2. E.I. Dupont De Nemours and Co. et. al. vs. Dir.
Emma Francisco et. al., G.R. No. 174379, Aug.
31, 2016
Ideas not covered by a patent are free for the public to use
and to exploit . Thus there are procedural rules on the
application and grant of patents established to protect
against infringement. To balance the public interest
involved failure to comply with the strict procedural rules
will result to failure to obtain a patent. A patent is
monopoly granted only for specific purpose and objective
thus its proceure must be complied with to attain its social
objective.

El Dupont is an American corporation , filed an application

before the Bureau of Patent and Trademark ofr the patent of
an invention Angiotensin which is related to the treatment
of hypertension and congestive heart failure. The former
petitioner of the petitioner failed to provide the necessary
document , hence the petitioner through his new counsel
filed a petition for revival of its application . The issue here
is whether application is considered as abandoned.

Yes. The application is abandoned. An application is

deemed withdrawn for failure to prosecute and may be
revived as pending application within the period of four
months from the date of notice of withdrawal ( mailing
date of the notice of abandonment). If it is shown that the
failure was due to fraud, accident or mistake or excusable
negligence. Here, the agent of the petitioner was negligent
in failing to respond to the letter sent by the Bureau of
patent . He was again negligent when he failed to revive the
abandoned application within four months from the time it
was abandoned.

3.PHIL Pharma Wealth vs Pfizer

The exclusive right to monopolize the subject matter of the
patent exist only within the term of its patent. It is clear
form the provision of law that the exclusive right of a
patentee to make, use and sell a patented product , article or
process exist only during the term of patent

4.Roma Drug vs Guagua

Raiding team seized several imported medicine including
Augmentin tablet, Orbenin capsules seized medicine were
manufactured by smith Kline but imported directly from
abroad and not purchased through local smith kline the
authorized Philippine distributor of the product. ( Ung bent
ani Roma Drug are no registered). SLCD classficiaiton of
unregistered importated drug as counterfeit drug in conflict
with RA 9502 which grant third person the unqualified
right to import. – You can sell the product even without
registering the same pero may penalty. – Cheaper medicine
act

Trademark
- Study the zueica
- Study the kOlin
Case Updates:
1.Starwoods hotels applied for registration of mark W in
2005 for hotel services and others. W land applied for
registration of W for its buildings pertaining to financial,
insurance real estate. Starwood opposed. W filed a petition
to cancel starwood because there is no actual use on the
part of starwood. Whether actual use is a pre requisite in
registrability?
A: Yes. W is actually using the mark in the Philippines,
even if they do no t have hotel in the Philippines. Use
pertains to a genuine not mere token bona fide use
which results to tends to result into a commercial
transaction. Sufficient proof of actual use : Website
showing goods bing sold or services being rendered. Use of
mark on interactive website. Wmark is predominately used
in website.
2.IFP filed an application for registration of the mark OK
hotdog insal under Class 30 flour and preparation made
from cereals. Mang Insal is the owner of the mark Mang
Inasal? Whether OK Hotdog Insal mark is confusingly
similar to Mang Inasal Mark? Whether Inasal Can be
appropriated as a mark.?
IFP copied the dominant feature of Inasal of Mang Inasal.
The servies of IFP and Mang INasal are related to another .
An average buyer who comes across the curls marked
under OK Hotdog Insal mark is likely to be confused as to
the true source of such curls. The dominant element Inasal
as stylized in Mang INasal mark is different from the term
INasal per se. The term inasal per se is a descriptive that
cannot be appriated . However the dominant element
Inasal as stylized in the Mang Inasal Mark can claim
exclusive use of such element ( Ung design is not
descriptive ) dapat ng iba siya ng form di dpaat stylized-
The term can be used by anyone but ung as stylized hindi
Kolin vs Kolin: Lalabas to Caguioa dECISION 2021
Taiwan Kolin : Hosehold applicance particularly television
set cassette. Kolin Electronics: Automatic voltage regulator
covereted booster AC-DC regulated power step down
transformer and PA amplified AC-DC.
Abandonment of the holistic test :
1.The SC made it crystal celar that the use of the holistic
test in determining the resemblance of the mark has been
abandoned. The IP code is explicit that colorable imitation
of a registered mark or dominant feature thereof.
Legislative intent in explicitly adopting the dominancy test
as shown in the legislative deliberation in drafting the IP
Code
Protection over word mark:
1.Word mark protect the word itself
2.The minor difference between KOLIN and Kolin were
completely disregarded. Degree of distinctiveness : Kolin is
a fanciful or coined words hence it is a highly distinctive .
The use of product service classification under the NICE
classification as a factor in determining relatedness and non
relatedness is explicitly abandoned ( ung NICE
classification only pertains to registration issues)
Normal Expansion of business : Such potential expansion
in related products and market areas is within the right
enjoyed by the registered trademark owner. ( The
protectionextends to normal expansion of business)
The action of KP11 acted bad faith when it filed the
application for Kolin despite KECI.
Definition: Any visible sign capable of distinguishing the
goods ( trademark) or service mark of an enterprise and
shall include a stamped or marked container of hoods.
-Marks actually sells the goods, The mark becomes silent
salesman the conduit through which direct contact between
the trademark owner and the consumer is assured.
Can you register a trademark for a generic name or
something you did not event?
Visible sign: Words letter numerals, figures, color or any
combination, sound smell touch, non traditional marks.
Distinctive : To be able to distinguish the goods and
services of one enterprise to one to others. You cannot
claim the generic term. Arbitrary or fanciful : Inherently
distinctive ( apple for the electronic) Fanciful mark:
Something that you have coined. Descriptive : You desciber
the product Suggest: It merely suggest and not describe
Generic---_> Descriptive- Suggestive  Arbitrary
Fanciful
Requisites:
1. There must be a visible sign .
2. It must be capable of distinguishing the goods of an
enterprise.
b.Collective Mark: Any visible sign designated as such in
the application for registration and capable of
distinguishing the origin or any other common
characteristics including the quantity of goods or service of
different enterprise which use the sign under the control of
the registered owner of the mark.
- Geographic Indicators : Guimaras
MANGOS
- Certification marks
- May registered owner madami licensees.
- Islamic Council
C.Service Mark:
Smart vs Globe , Banking Services BDO vs BPI
d.Well Known Mark: Prohibits th use of a trademark
whinch constitutes a reproduction an imitation or a
translation liable to create confusion of a mark considered
liable to create confusion of a mark considered by
competent authority of a country of registration or use to be
well known in that country as being already mark a
person entitled to the benefit of this convention and
used for identical or similar goods ( Rolex and Watch)
The trademark to be protected must be well known in the
country where the projection is sought the power to
determine whether a trademark is well known lies in
competent authority of the country of registration or use.
This competent authority would be either the registering
authority if it has power to decide this or the courts of the
country in question if the issue comes before a court
In determining whether a mark is well known account shall
be taken of the knowledge of the relevant sector of
public rather than of the public at large including
knowledge in the Philippines which has been obtained as a
result of the mark.
Note:If the mark is registered here in the Phlippines its
protection extends to those not similar goods. ( Mas
malawak) provided that the use of the mark in relation to
those good indicate a connection between goods or service
(ng venture out na) and the owner of the mark.
Criteria: Any combination
a. Duration , extent and geographical area of any
use of the mark
b. The market share in the Philippines and in other
country
c. The degree of inherent acquired distinction.
Mark That cannot be registered
1. Immoral, deceptive or scandalous matters or matter
which may disparage or falsely suggest a connection with
persons, living or dead institution, beliefs or national
symbols or bring them into contempt or dispute.
- A dick cannot be registered
-Manny pacquiao without his consent
2. Consist of the flag, or coat of arms or other insigna of
the Philippines or any of its political subdivision, or of any
foreign nation or any simulation
3. Consist of a name, portrait or signature , identifying a
particular living individual except by his written consent
or the name signature or portrait of the deceased President
of the Philippines during the life of his widow if any except
by written consent of the widow
4. Identical with a registered mark with an earlier priority
date in respect to ( First to file rule)
a. The same goods or service
b. Closely related good or service
c. If it nearly resembles such mark and likely
cause confusion
5. Generic terms for goods and service
6. Descriptive mark including characteristics of goods like
quality and quantity
7. Customary sign in everyday language
8. Color by itself
9. Shapes by technical factor : Shape of lego: Functional
10. Customary sign in every day language.
11. Misleading
Limitation
a. Doctrine of Secondary meaning : A generic or
descriptive mark may later acquire the
characteristic of distinctiveness and can later be
registered if it acquires a meaning which is
different from its ordinary connotation ( Example
: Ang tibay for shoes)
Substantially exclusive and continuous use thereof by
application in commence in the Philippines for five years.-
There is a presumption of distinctiveness
Requisite:
1. The secondary meaning must have arisen as
a result of substantial commercial use of the
mark
2. Such use must result in distinctiveness of the
mark insofar as the goods or the products are
concerned
3. Proof of substantially exclusive and
continuous commercial use in the
Philippines for a period of five years before
the date on which the claim for
distinctiveness is made
b. Composite mark: Although they cannot be registered
themselves , generic and descriptive mark, colors and shape
may be a part of the composite mark but there must be a
disclaimer to the person who registers them as part of a
mark will not acquire ownership thereto
c. Contraction and coined mark: Marks may be registered
even if they are coined from generic and descriptive mark (
Salonpas)
d. Arbitrary use: Generic and descriptive may also be
registered as trademark if they are used in the arbitrary and
fanciful manner
- Ivory ( elephant tusk) : For soap
Acquisition of Ownership over a trademark
The ownership of a trademark is acquired by registration
- The actual use for the use of commerce and
business is mandatory
Q: 1st user or 1st registrator?
A: Yung 1st user di mo pede kasuhan ng first registrator, ung
first registrator can prevent the first user from expanding
his business
Acquired through a valid registration
Prior use is not a requirement but there must be actual use
after application. Declaration of actual use within three
years from the filing of application.
Term of protection: 10 years from registration
Renewable for period of ten years each indefinitely
provided a declaration of use is filed within one year from
the filing and from the 5th year of registration
- Registration is the first step towards
ownership of the trademark but this alone
will not grant ownership over the trademark
because t is necessary that DAU be filed.
- Once the trademark is registered, there is a
requirement that the registered owner must
use the trademark in actual business or
commerce for ownership to attach in
accordance with law
It must be emphasized that registration of a trademark by it-
self is not a mode of acquiring ownership .If the applicant
is not the owner of the trademark he has no right to apply
for the registration. Registration merely creates a prima
facie presumption of the validity if the registration of the
registrant’s ownership of the trademark and the exclusive
right to use thereof
- Birenstock is a registered owner of mark
abroad, Philippine Shoe was able to register
in the Philippines
A: Although Shoe was able to register the trademark regis-
tration the trademark in the Ph there is no use hence no
trademark can prosper.
It is not the application or registration of the trademark that
vest ownership thereof, but it is the ownership of the trade-
mark the right to register the same.
Benefit of Registration of a Trademark
Right to exclusive use of the mark in connection with one’s
own goods and services resulting in the likelihood of confu-
sion.
The right to prevent others from the use of identical mark
for the same or similar or related goods or services.
Q: Will a trademark registration abroad be valid and bind-
ing in the Philippines?
A NO. Principle of territoriality except well known mark
except bad faith.
Registration merely creates a prima facie presumption of
validity of registrant’s ownership of the trademark and of
the exercise of the exclusive right to use thereof. Such pre-
sumption just like presumptive regularity in the perfor-
mance of the official function is rebuttable and must give
way ot the evidence to the contrary
- Note only prima facie only
Registration does not confer upon the registrant an absolute
right to the registered mark. The certificate of registration is
a merely prima facie proof of that the registrant is the
owner of the registered mark or trade name. Evidence of
prior and continuous use of the mark and trade name by an-
other can overcome the presumptive ownership of the reg-
istrant and may very well entitle the former to be declared
owner in an appropriate case.
The certificate of registration of the mark shall be prima fa-
cie evidence of the validity of the registration the registrant
ownership of the mark and of the registrant exclusive right
to use the same in connection with the goods or services
and those related thereto are specified in the certificate
- BPI vs GSIS Family Bank
Extent of PROTECTION granted to registered trade-
mark
The Scope of protection afforded to registered trademark
owner is not limited to protection from infringers with iden-
tical goods. The scope of protection extends to protection
from infringers with related goods and to market areas that
are the normal expansion of business of the registered
trademark owners
- Generally the protection is given to those be-
longing for the same classification. In the
 case of UFC ( PAPA) mark in Ketshup,
Bario Fiestra is applying the registration of
PAPA in Lechon sauce. Is it proper to say
that UFC Philippines can rightfully oppose
the registration of Papa boy since it is simi-
lar. Or is barrio fiesta correct since they be-
long to different group>
A: UFC is correct. Both Lechon and Ketshup are condi-
ments,
What is the protection to Trademark owners under the
Paris Convention
Under the Partis Convention the Philippines is obligated to
assure nationals of signatory countries that they are af-
forded an effective protection against violation of their in-
tellectual property rights in the Philippines in the same way
that their own countries are obligated to accord similar pro-
tection to Philippine Nationals.
- Not because the owner of a trademark
abroad being used in another country, it will
automatically allow Filipinos to register the
mark owned by a foreigner
Thus under Philippine law a trade name of a national of the
state that is a party to the Paris Convention whether or not
the trade name forms a part of the trademark is protected
without the obligation of filing or registration.
- Even if no registration is made particularly
on those trademark that are world famous
prior registration is not required and the
Philippines must adhere and observe this in
the Paris Convention .
Declaration of Actual Use
Failure to file DAU within the requisite period results in
automatic cancellation of registration of a trademark. In
turn such failure is tantamount to the abandonment or
withdrawal of any right or interest the registrant has over
his trademark.
- The local applicant or owner of trademark
was able to register but was not able to use
the same ( DAU), the trademark registration
is deemed abandoned.
Priority Use of the mark
The determination of priority use of the mark is a question
of fact.Adoption of the mark alone does not suffice. One
may make advertisement issues, circulars distribute price
list on certain goods but these alone will not inure to the
claim of ownership of the mark until the goods bearing the
mark are sold to the public in the market. Accordingly re-
ceipts, sales, invoices and testimonies of witness as cus-
tomers or orders of buyers best prove the actual use of the
mark in trade and commerce during a certain period of time
Q: Whether the trademark used in the Internet indicate that
this is used in trade and commerce
A: No, there must be proof that the mark is sold in public as
evidenced by receipt, invoice, and customers
What are the reasons for providing protection to trade-
mark as intellectual property?
The protection of trademark as intellectual property is in-
tended not only to preserve the goodwill and reputation of
the business established on the goods bearing the mark
through actual use over a period of time but also to safe-
guard the public as consumer on these goods.
Test to Determine if the competing Marks would likely
cause confusion
1. Dominancy test: Focuses on the similarity of the main
prevalent or essential features of competing trademark that
might cause confusion, Infringement takes place when the
competing trademark contains the essential features of an-
other. Imitation or an effort to initiate is unnecessary. The
question whether the use of the marks is likely to cause
confusion or to deceive the purchasers.
2. Holistic Test : The holistic test considers the entirety of
the marks including labels and packaging in determining
only on the predominant words but also other features.
What is the factor that is given greater consideration in
determining if the marks are confusingly similar
Greater consideration should be given to the aural and vis-
ual impression created by the marks in the public mind,
giving little weight to factors like price, quality sales outlet,
market segments.
Registration of word famous mark in the Philippines
A trade name of a national of the state that is a party to the
partis convention whether or not the trade name forms a
part of the trademark is protected without the obligation of
filing or registration. It has been ruled that the essential re-
quirement of registration is not applicable in a well known
mark
Harvard is the trade name of the world famous Harvard
University and is also a trademark of Harvard university ,
Under Article 8 of the Paris convention as well as Section
37 of RA 166 . Harvard University is entitled protection in
the Philippines of its trade name Harvard even without reg-
istration
This means that no educational entity in the Philippines can
use the name Harvard without the consent of Harvard Uni-
versity. Likewise no entity in the Philippines can claim ex-
pressly or impliedly through the use of the name and mark
Harvard that its products or service are authorized, ap-
proved or licensed by or soured from Harvard without its
consent
Determination if the trademark is well known
The power to determine whether a trademark is well known
lies in the competent authority of the country of the reg-
istration or use. The competent authority would either be
the registering authority if it has the power to decide this or
the courts in question if the issue comes before the court.
- Not the owner, government nor opposing
counsel but the government entity as to
where the registration
Cancellation OF Registration
1.Within five years from the date of registration of the
mark under this act
2.At the time it is registered mark becomes generic name
for goods, or service or a portion thereof which it is regis-
tered or has been abandoned or its registration was ob-
tained fraudulently or contrary to provision of this act or
if the registered mark is being use by the registrant so as to
misrepresent the source of the goods or service on or in
connection with which the mark is used ( anytime not lim-
ited to five years)
3. At any time if the registered owner without anytime did
not use the mark during uninterrupted period of 3 year or
longer
Non use: excused ;
1.if arising independently from the will of the trademark
owner. Lack of funds shall not excuse the owner .
2.If the use of the mark in a form different from the form in
which it was registered which does not alter its distinctive
character shall not be a ground for cancellation or removal
of the mark and shall not diminish its protection.
3.The use of a mark in connection with one or more of the
goods or service belonging to the class in respect of which
the mark is registered shall prevent its cancellation or re-
moval in respect of all goods or services in the same class
( Sa 2 class mo lang ginamint)
4. The use of the mark by a company related registrant or
applicant shall inure to the latter benefit and such use shall
not affect the validity of such mark or its registration pro-
vided that the mark is not used in a manner to deceive the
public.- ( If ginamit ng Affiliate mo this inures to you)
Trademark Infringement
Unauthorized used of a registered trademark or a colorable
imitation of the same for the similar of related goods in
which such use is likely to cause confusion or mistake or to
deceive.
Elements :
1.Ownership of trademark through registration
2That the trademark is reproduced, counterfeited copied or
colorably imitated by another
- counterfeited: Gayang gaya
Colorably: Uy ginaya kamuka
3.No consent by a trademark owner or assignee
4.use in connection with the sale, offering for sale or ad-
vertising of any goods, business or services or those relat-
ing thereto
- Use of identifcal or similar marks for non identical dis-
similar or non related goods = There is no infringement
Exception: Internationally well known mark or dilution of
mark
5.Likelihood of confusion.
-Actual confusion is not necessary this is a relative concept
a. Goods : Wherein the goods of the parties are different but
the defendant product can reasonably be assumed to origi-
nate form the plaintiff thereby deceiving the public into be-
lieving that there is some connection between the plaintiff
and the defendant which does not exist.
b.Orgin: Confusion or origin of such goods
Likehood of confusion? Consumer
Dominancy: Prevalent features of the product
Hollistic Test: Marks compared in their entirety
Idem Sonas: Aural effects of the owrds an letters contained
in the marks are also considered in determining the issue of
confusing similarity ( pychoenol v pcogenol)
Trademark Fair use
Registration of the mark shall not confer on the registered
owner the right to preclude third parties from using bona
fide their names, pseudonyms a geographical name or exact
indication concerning kind, quality quantity or destination
value place of origin or time of production or supply of the
goods or service provided that such use is confined to the
purpose of mere identification or information and cannot
mislead the public as to the source of goods or service
( Shangrila St Francis in relation to the Street)
Tradename Infringement
- The corporate name or business name a
tradename need not be registered with the
IPO tradename are protected even without
registration.
 Confusing Similarty + Use in commerce
This exist when a person without consent of the owner of
the registered mark
1. Use in commerce any reproduction , counterfeit,
copy ,colorable or colorable imitation of a registered mark
or the same container or a dominant feature thereof in con-
nection with the sale, offering for sale, distribution advertis-
ing of any goods or service including other preparatory
steps necessary to carry out the sale of any goods or ser-
vices on or in connection with which such use is likely to
cause confusion or to cause mistake or to deceive or
There must be a use in commerce
2. Reproduce, counterfeit copy or colorably imitate a regis-
tered mark or a dominant feature thereof and apply such re-
production , counterfeit copy or colorable imitation to la-
bels, signs prints package wrappers receptacles or adver-
tisement intended to be used in commerce upon the connec-
tion with the sale, offering for sale, distribution or advertis-
ing of goods or services on or in connection with which
such use is likely to cause confusion or to cause mistake or
to deceive. ( causes confusion in the minds of public)
Elements of Trademark Infringement
1. The trademark being infringed is registered in the In-
tellectual Property office however n infringement of trade
name the same need not be registered
- Before one can file a case for trademark in-
fringement they have to make sure that the trade-
mark is registered, exception in trade name need
not be registered.
2. The trade mark or trade name is reproduced counter-
feited, copied or colorably imitated by the infringer
3. The infringing mark or trade name is used in connection
with the sale, offering for sale or advertising of any goods,
business or services or the infringing mark or trade name is
applied to label, signs prints , packages wrappers recepta-
cles, or advertisement intended to be used upon or in con-
nection with such goods, business or services.
- The mark is used in relation to trade and com-
merce
4. The use or application of infringing mark or trade name
is likely to cause confusion or mistake or to deceive pur-
chaser or others as to the goods or service themselves or as
to the source or origin of such goods or service or the iden-
tity of such business
5. It is without the consent of the trademark or trade name
owner or the assignee thereof
UNFAIR COMPETITION
*Protection of one’s good will to one’s good and service.
Unfair Competition is defined as the passing of or at-
tempting to pass off upon the public of the goods or busi -
ness of one person as the goods or business of another with
the end and probable effect of deceiving the public .This
takes place where the defendant gives his goods the general
appearance of the goods of his competitor with the inten-
tion of deceiving the public that goods are those of his
competitor .
Q: Hoarding is not an unfair competition under the IP code
because it does not pertain to passing of a goods.
The essential element of unfair competition with respect
to goods are
1. Confusing similarity in the gen-
eral appearance of goods
*Colgate : Mga toothwaste sa hotel
2. Fraud or intent to deceive the public and de-
fraud a competitor ( this distinguished from trade-
mark infringement)
Test : Whether the acts of the defendant have intent of de-
ceiving or are calculated to deceive the ordinary buyer
making his purchases under the ordinary condition of the
particular trade to which the controversy relates .
Distinguish infringement vs. unfair competition
Infringement Unfair competition
1. There is unauthorized 1. The passing of the
use of a trademark goods as one of those an-
other and giving one’s
goods the appearance of
another
2. It is not necessary to es- 2. It is necessary to estab-
tablish fraudulent intent in lish fraudulent intent for
case for infringement of unfair competition
trade mark
3. Registration of the 3. Prior registration is not
trademark is necessary for necessary in unfair com-
the filing of infringement petition
of trademark
4. Covered by IPC Covered by the IPC and
article 27 of the NCC
Trademark Tradename Unfair
Register No need No need
Unauthorized use Unautohrized use Passing of a
or reproduction of reproduction godos giving
counterfeiting counterfeiting them general
copying of a copying of a appearance of th
trademark or tradename goods of another
colorable
imitation thereof
Fraud No Fraud No Fraud yes
Infringement of Trade Name
A trade name need not be registered with the IPO
before an infringement suit may be filed by its owner
against the owner of an infringing trademark all that is
required is that the trade name previously used in trade or
commerce
The requirement of prior registration is not
present if there is an infringement of trade
name prior registration is not needed
Fredco Mfg. Corp. vs. Pres and Fellows of
Harvard College, GR No. 185917, June 1, 2011
Under Section 4, There is hereby established a register of trade
mark, trade names and service marks which are known as the
principal register. The owner of the trade name or service mark
used to distinguish his goods, business or service form the goods,
business or service of others shall have the right to register the
same on the principal register unless it 1. Consist of or comprises
immoral , deceptive or scandalous manner or matter which
disparage or falsely suggest a connection with persons , living or
dead institution belief or national symbols and bring them into
contempt/
The application of Fredco falsely suggest that it had
connections with Harvard University which used the same
mark. The court ruled that the fact that the mark of Harvard
is not registered in the Philippines does not hold water. The
paris convention protects a well known mark in the country
regardless of whether the mark is registered in the Ph or
not.
RA 166 Section 12: Each certificate of registration remains
in force for a period of twenty years provided that
registration under the provision of this act shall be
cancelled by the director unless within one year following
the fifth, tenth and fifteenth anniversaries of the date of
issue of certificate of registration, the registrant shall file in
the patent office affidavit showing that the mark or trade
name is still in use showing that its non-use is due to
special circumstance which excuse such non-use and not
due to any intent to abandon the same.
Here. The respondent failed to file the required 10 th year
DAU within the required period or on or before October 21
2004. As a consequence it is deemed to have abandoned to
withdrawn any right or interest over the said mark.
3. Birkenstock Orthopaedie GMBH and Co. KG
(Formerly Birkenstock Orthopaedie GMBH)
 vs. Philippine Shoe Expo Marketing Corp.,
G.R. No. 194307, Nov. 20, 2013
Here the respondent failed to file a DAU during the 10 th
year thereby resulting in the cancellation of the work. The
issue here is whether the non filing of the DAU results to
abandonment of registration.
4. GSIS Family Bank - Thrift Bank vs. BPI
Family Bank, G.R. No. 175278, Sept. 23, 2015
To fall within the prohibition of the law on the right to
exclusive use of the corporate name two requisites
must be proven 1. That the complaint had acquired a
prior right over the corporate name 2. That the
proposed name is either a. Identical 2. Deceptively or
confusingly similar 3. Patently deceptive or confusing
or contrary to existing law.
Prior Right: Priority of adoption rule to determine
prior right.
Here, BPI was incorporated in 1969 as Family Savings
bank and seven years later the petitioner started using
its name., therefore, BPI has better right.
Identical , confusingly similar and Patently deceptive
Identical: The word family bank is present in both the
petitioner and respondent corporate name.
Section 3 of the Revised Guidelines in the approval of
corporate name states that if there be identical,
misleading or confusingly similar to one already
registered by another corporation or partnership with
the SEC, the proposed name must have one distinctive
word. Here the words are not distinct to differentiate
the petitioner’s corporate name from the respondent.
While GSIS is merely an acronym of the proper name
by which the petitioner is identified the word thrift is
simply a classification of the petitioner bank
Deceptive and confusingly similar
DECEPTIVE:
The test to determine whether there is confusing
similarity is such as to mislead a person using ordinary
care and discrimination and even without such proof
of actual confusion between the two corporate names,
it suffices that the confusion is probable and most
likely to occur.
Petitioner's corporate name is "GSIS Family Bank—A
Thrift Bank" and the respondent's corporate name is
"BPI Family Bank." The only words that distinguish
the two are "BPI," "GSIS," and "Thrift." The first two
words are merely the acronyms of the proper names by
which the two corporations identify themselves; and
the third word simply describes the classification of
the bank. The overriding consideration in determining
whether a person, using ordinary care and
discrimination, might be misled is the circumstance
that both petitioner and respondent are engaged in the
same business of banking. "The likelihood of
confusion is accentuated in cases where the goods or
business of one corporation are the same or
substantially the same to that of another corporation
GENERIC
The petitioner cannot argue that the word Family is a
generic name which cannot be appropriated. Generic
marks are commonly used as the name or description
of a kind of goods. Descriptive marks on the other
hand convey characteristics, function , qualities or
ingredients of a product to one who has never seen it
or does not know it exist. Here, the word family
cannot be separated from the word bank. The coined
phrase are arbitrary marks which are “ Words or
phrases used as a mark that appear to be random in the
context of its use”. They are generally considered to be
easily remembered due to its arbitrariness.
Arbitrary Mark
The word "family" is defined as "a group consisting of
parents and children living together in a household" or
"a group of people related to one another by blood or
marriage."56 Bank, on the other hand, is defined as "a
financial establishment that invests money deposited
by customers, pays it out when requested, makes loans
at interest, and exchanges currency." 57 By definition,
there can be no expected relation between the word
"family" and the banking business of respondent.
Rather, the words suggest that respondent’s bank is
where family savings should be deposited. More, as in
the Ang case, the phrase "family bank" cannot be used
to define an object.
5. UFC Phils., Inc., et. al. vs. Fiesta Barrio Mfg.
Corp., G.R. No. 198889, Jan. 20, 2016
1. Dominancy Test: Focuses on the similarity of prevalent
and dominant features of the competing trademark that
causes confusion ,mistake and deception in the mind of the
purchasing public. Here, what is looked into is the
similarity in appearance arising from the dominant features
thereof.
2. Holistic Test : Considers the entirety of the mark as
applied to the products, including the label, packaging
product itself. The observer focuses not only on the
predominant words but also to other features that appear on
both labels so that the observer may draw conclusion on
whether one is confusingly similar to another
 Here the court should have applied the domi-
nancy test
The word PAPA is the dominant feature of UFC Mark Papa
Ketsarap. Ketsarap is merely descriptive. It is Papa which
have been in commercial use for decades and has
established awareness and goodwill among customers. In
the same way Papa is the dominant feature of Barrio Fiesta
Papa Boy and Device such that the word Papa is written on
top and before the other words and catches the eye.
Hence, since the mark of Barrio Fiestra is related to a
product, condiment and sauce is subject to great scrutiny by
a casual purchaser. Since UFC product is also a condiment, involved and not on the arbitrary classification or general
the public could think that UFC expanded its product to description of properties or characteristics
include lechon sauce. Therefore, to allow registration leads
to confusion of business. 7. Zuneca Pharmaceutical vs. Natrapharm, Inc.,
G.R. No. 211850, September 8, 2020
6. Taiwan Kolin Corp. Ltd. vs. Kolin Electronics, *Memorize possible bar question: 1st to file an not use!!
Inc., G.R. No. 209843, Mar. 25, 2015 Zynaps ( Carbamazepine) indication anti convulsant seizure
The petitioner filed with the intellectual property office, disorder no trademark registration prescription
then the Bureau of Patents and Trademark for the use of drug.CPC( 2003) Vs Zynapse ( Citicoline) indication
Kolin ( Combination of Goods, colored tv etc) . This ceberovascular disease or stroke , Trademark registration
application was abandoned since Taiwan Kolin failed to 2007. Zynapse sued Zynaps. The bill no longer requires
respondent to IPO paper that requires it to elect one class of prior use of the mark as requirement for filing a trademark
goods. This was subsequently revived when the petitioner application. It also abandoned the rule that ownership of
elected Class 9. a mark is acquired trough the use by now requiring the
registration of the mark in the intellectual property office.
The petitioner argued that its goods are not closely related
to Kolin Electronics. There must be proof here that the Knowledge = Fraud : alam mo na you have idea na pero
petitioner is entitled to its trademark registration. The issue you still registered it as your mark even though you knew
is whether the petitioner is entitled to trademark
registration.
Limitation to action for infringement: Notwistanding the
provision of Section 155 hereof a registered mark have no
YES. A certificate of trademark registration confers upon
effect against any person who in good faith before the filing
the trademark owner the exclusive right to sue those who
date or priority date was using the mark for the purpose of
have adopted a similar mark not only those in connection
his business and enterprise provided that his right may only
with the goods and service but also those related thereto In
be transferred or assigned together with his enterprise or
trademark cases, to ascertain whether one trademark is
business or with that part of his enterprise or business in
identical or confusingly similar to another the court decided
which the mark was used. Since Ganito mag coco exist
on its merit with due regard to the goods or services
concurrent using idnetifical or confusingly similar mark in
involved, the usual purchaser , character and attitude
the market even if there is likelihood of confusion while the
among others
situation is not ideal the court still allowed it to co exist.
The term ordinary purchaser is defined as one that is
It is the first registrant and not the first user who has a
accustomed to buy and therefore to some extent familiar
better right over the mark Section 122 of the IP Code
with the goods in question. The test to determine fraud is
states that rights in a mark shall be acquired through
when person in some measure acquainted with an
registration made validly in accordance with the provision
established design and desirous of purchasing the
of the law. While it in fact of registration which confers
commodity with which the design is associated. The
ownership over the mark and enables the owner thereof to
simulation, in order to be objectionable, must be such as
exercise the rights, the first to file rule prioritizes the first
appears likely to mislead the ordinary intelligent buyer
filer of the trademark and operates to prevent any
who has a need to supply and is familiar with the article
subsequent applicants thereto.
that he seeks to purchase
Ground for Cancellation
Here, the goods are relatively luxury items, the products of
The existence of bad faith in trademark registration may be
the contending parties are not easily affordable hence a
a ground for its cancellation at any time after filing of a
casual buyer is predisposed to be more cautious
petition for cancellation under Section 151 of IP Code. A
petition to cancel a registration of a mark under this act
The mere fact that one person has adopted and use a
may be filed with the Bureau of Legal Affidavit by any
trademark on his foods would not without more prevent the
person who is in bad faith at the time of registration. Bad
adoption and the use of the same trademark by others on
faith means that the application or registrant had prior
unrelated articles of a different kind. Therefore, the court
knowledge of prior creation, use and or registration by
allowed the trademark registration of Kolin over its specific
another of an identical or similar trademark
goods of television set and DVD players although another
corporation has prior registration for automatic voltage,
Zuneca alleged to be the first user of the mark, as it already
converter ,recharger , stereo booster, AC-DC regulated
owned the Zynaps mark prior to Natrapharm registration
power supply, step down transformer and PA amplieied AC-
Here, the mere interaction between Zueneca and
DC that also belons to Class 9 of the Nice Classification.
Natapharm does not show that Natrapharm acted in baith
faith. It is highly unlikely that participants would remember
The mere fact that the product both fall under the same
the medicine the drug exhibited in the convention as it
category of goods under the NICE classification of goods
happened two years ago.
does not by itself result in the finding of infringement. The
emphasis should be on the similarity of the product
Trademark Infringement and Unfair Competition

8. Victorio Diaz vs. People of the Phils. and Levi
Strauss [Phils.], Inc., G.R. No. 180677, Feb. 18,
2013
To be held liable for infringement 1. The trademark is being
infringed is registered in the Intellectual property office 2.
The trademark being reproduced, counterfeited copied or
colorable imitated by the infringer 3. The infringing mark is
used in connection with the sale , offering of sale or
advertising of any goods, business or service or infringing
of the mark is applied to label, signs , prints, package,
wrappers receptacles or advertisement intended to be used
in connection with goods and services.4. The use or
application of infringing mark is likely to cause confusion
or mistake or to deceive purchaser or others as to the goods
or service themselves or as to source or origin of such
goods and service or identity of such business 5.The use of
application of infringing mark is without the consent of
trademark owner
Test to determine trademark infringement
1. Dominancy test: This focuses on the similarity of main
prevalent and essential feature of competing trademark that
might cause confusion. Infringement takes place when the
competing trademark contains the essential feature of
another. Imitation or effort is unnecessary.
2. Holistic test: Consider the entirety of the mark, including
labels, packaging in determining similarity the focus is not
only the predominant words but also those appearing in the
label.
 Court applied the holistic test: ( NO trademark
infringement)
 2. Confusion of business: Where although the goods of the
1. The products involved in this case are various kinds of
jeans. These are not the ordinary household item of
minimal cost. Maong pants are not inexpensive , tence the
casual buyer is predisposed to be more cautious and
discriminating in and would prefer to mull over his
purchase. Confusion and deception is less likely
2. Like beer, Filipino consumer generally buys jeans by
brand. He does not ask the sales clerk for generic jeans. He
is therefore more knowledgeable and familiar with his
preference.
3. Lastly ordinary purchaser, this is not the complete
unwary consumer but the ordinary intelligent buyer. This
pertains to one that is accustomed to buy and therefore to
some extent familiar with the goods n question. The test of
fraudulent simulation so to be found in the likelihood of
deception of some person in some measure acquainted with
an established design and desirous of purchasing the
commodity with which that design has bee associated. The
test is not found in the deception, or the possibility of
deception, of the person who knows nothing about the
design which has been counterfeited, and who must be
indifferent between that and the other. The simulation, in
order to be objectionable, must be such as appears likely to
mislead the ordinary intelligent buyer who has a need to
supply and is familiar with the article that he seeks to
purchase
9. Asia Pacific Resources Int’l Holdings, Ltd. vs.
Paperone, Inc., G.R. Nos. 213365-66, Dec. 10,
2018
The petitioner alleged to be the owner of the well-known
trademark Paper One. The petitioner claimed that the
respondent used the corporate name Paperone without its
prior consent and authority was done in bad faith and to
unfairly ride on the good will of the petitioner. The
respondent argued that it had no obligation to secure
consent from the petitioner to adopt and use its corporate
name since the DTI and SEC allowed him to use the same.
The issue here is whether there is unfair competition
Elements of Unfair Competition
1. Confusing Similarity in the general appearance of goods
2. Intent to deceive the public and defraud the competitor
In this case, the confusing similarity may or many not result
from the similarity of the marks but from other external
factor such as packaging and presentation. A careful
scrutiny of the mark show that the use of the respondent
will likely deceive ordinary purchaser into exercising
ordinary care to believe that the goods belong to the same
enterprise.
Two Types of Confusion
1. Confusion of goods: Where ordinarily prudent purchaser
is induced to purchase one product in the belief that he was
purchasing the other
parties are different, the product the mark of which
registration is applied for by one party is such as might
reasonably be assumed to originate with the registratrant of
an earlier product and public would be deceived either into
belief or into belief that there is some connection between
the two parties though inexistent
- There is no confusion as to the tradename but
only as to the product
Intent to deceive
There is no need for actual fraudulent intent to be shown.
The circumstance were to establish to show that the
respondent adopted Paperone in its tradename even with
prior knowledge of Paperone as the petitioner’s trademark
shows the intent to ride on the good will of the petitioner.
10. Forietrans Mfg. Corp. vs. Davidoff Et. Cie Sa
& Japan Tobacco, Inc., G.R. No. 197482,
March 6, 2017
The essential element of trademark infringement is that the
mark is likely to cause confusion. Here there is confusing
similarity between Cigarette packs of the authentic
Davidoff Cigarette and the SAMPE Dageta. Though there
may be difference as to the packaging the most substantial
form of copying is to employ enough points of similarity to
confuse the public.
 11. San Miguel Pure Foods Co., Inc. vs. Food-
sphere, Inc., G.R. Nos. 217781 & 217788, June
20, 2018
Foodsphere launched the Pista ham. SMPCI launched its
Dapat ganito ka -espensyal campaign that utilize the
prom,otion material showing a picture of a whole meat ham
served on a plate with fresh fruits. Foodsphere introduced
its campaign which looked simil.ar with the bag of the peti-
tioner with the word Pista. The issue is whether there is in-
fringement

Unfair Competition
The passing off or attempting to pass upon the public of the
goods or business of ne person as the goods or business of
another. Therefore, the essential elements are 1. Confusing
Similarity ( This may or may not result from the similarity
of the mark , but may result from external factor such as
presentation of the goods) 2. Intent to deceive

There is Substantial Similarity

1, Foodsphere changed its paper ham box to one that is
similar with the petitioner
a. Both have red color and have similar layout
having sliced ham and fruits on the front and
other ham varieties offered at the back. It is not
only the mark which renders the general appear-
ance but also similar packaging
Foodsphere intended to choose a packaging that is closely
similar with that of the petitioner with the intent to pass of
its ham with that of the petitioner.
12. Prosel Pharmaceuticals & Distributors, Inc.
vs. Tynor Drug House, Inc., G.R. No. 248021,
Sept. 30, 2020
The petitioner alleged the Ceegefer was an improved ver-
sion of Selvon C derived from Chorella Growth Factor.The
respondent sent a letter to the petitioner to recall the prod-
uct that are already distributed since the mark was confus-
ingly similar to their mark Cherifer. The issue here is
whether there is trademark infringement ( when there is
colorable imitation of the respondent’s cherifer logo)

The court ruled that Yes.The names are similar as to the

sound and the spelling. The logo is strikingly similar both
packaging uses orange and yellow and that there is a boy
wearing a basket ball jersey slightly bent. Given the Pho-
netic similarities and visual there is colorable imitation be-
tween the two products. To determine trademark infringe-
ment there must be proof of likelihood of confusion.

Copyright
Amendments:
Retransmission of broadcasting made right
Vicarious liability including landlord
Providing as aggravating circumstance the ff :
a. Circumvention of effective technological
protection measure and ( reverse engineer mo ung
program to copy)
b. Electronic right management information
Literary and Artistic Work: Works are original
intellectual creation in the literary and artistic work domain
protected from the moment of their creation.
Works are protected by the sole fact of their creation
irrespective of their mode or form of expression as well
as their content quality and purpose.
1. The corry aquino maid in malacanang
picture is a literary and artistic work is
copyrightable
2. Offensive to the senses
No formalities are required it must be original and it must
be an artistic or literary work:
1. Original: Personal involvement or
creativity
- Modicum level of creativity
- 2.Artistic or literary work: Expression
- vsFunction or technical work
- 3.Non discrimination: against pangit na art
Automatic Protection:
1.From the moment of creation
2.Deposit is allowed : There is a requirement of deposit for
purpose of completing the work it does not affect
ownership or registrability. This is not a certificate of
copyright registration
3.Fixed or expression? You have to express your idea for it
to be copyrighted.
Proof of ownership: Affidavit Eivdence
Original Intellectual Creation include the following:
*This is not exclusive as long as it will form a literary and
artistic work it is not exclusive.
1. Books , pamphlets , articles and other writings.
2. Periodicals and newspaper
3. Lecture , sermon , address, dissertation prepared for oral
delivery whether or not reduced in writing or other material
form
- This is not limited to verbal delivery of
materials but includes matters of power point
presentation.
4. Letters
- The contents of the letter sent by one to another
5. Dramatic or dramatic musical composition
choreographic works or entertainment in dumb shows
- Even if there is no actual lyrics the fact that
there is music attached in rendition of a musical
piece.
6. Musicial composition with or without words
- Even without lyrics.
7. Works of drawing painting architecture , sculpture,
engraving , lithography or other works of art models or
design for works of art
8. Original ornamental design or models for articles of
manufacture and other works of applied art.
9 Illustration , maps , plans sketches charts and three
dimensional works relative to geography topography
architecture or science
10. Drawings, or plastic works of scientific or technical
character
11. Audiovidual works and cinematographic works and
works produced by the process analogous to
cinematography or any process for making audio visual
recording
12. Pictorial illustration and advertisement
13. Computer programs
14. Other literary , scholarly scientific and artistic works
Derivative Works:
* out the original work there is a derivative
1. Dramatization, translation adaptation, abridgments,
arrangement and other alteration of literary and artistic
works.
- Ex: Harry potter ( Novel ended up cinema)
2. Collections of literary, scholarly or artistic work and
compilations of data and other materials which are original
by reason of the selection or coordination or arrangement of
their contents.
Non Copyrightable works
1. Any Idea
- An idea in his mind, it did not came in writing.
There is no copyright because it is not
transformed.
2. Procedure
- It is merely a process
3. System Method or operation
- Procedure in operation
4. Principles
- Principles of law are not copyrightable
4. Discovery or mere data
- Once an individual discovered an idea which
can be useful it is not something that can be
covered by copyright law.
- Ex: Survey or mere data is not copyrightable,
but the narrative are copyrightable.
5. News of the day and other miscellaneous facts having the
character of mere items of press information or
- Newspaper are copyrightable, but news of the
day is not copyrightable.
Ex: A went to school how her school look like two years
after, while approaching the gate of UE recto she saw two
individuals trying to hurt each other can ms devilla make a
report?
A: Yes. No one can monopolize news of the day, but the
news is already in writing the news are now covered by
copyright law ( It is the news report and not the news which
is copyrightable)
6. Any official text of a legislative administrative or legal
nature as well as any official translation thereof.
7. No copyright shall subsist in any work of the
Government of the Philippines. However, prior approval of
the government agency or office wherein the work is
created shall necessary for exploitation of such work for
profit .
- If the material is obtained for business reason
are copyrightable
Copyright over News Footages
News or event itself is not copyrightable . However an
event can be captured and presented in a specific medium.
News coverage in a television involves framing shots, using
images, graphics and sound effects. It involves creative
process and originality. Television news footage is an
expression of the news.
Rules on Copyright Ownership
1. In case of original literary and artistic works copyright
shall belong to the author of the work
“ Author”: Natural author it must not be an animal or
computer generated.
2. In case of works of joint ownership , the co-authors shall
be the original owners of copyright and in the absence of an
agreement , their rights shall be governed by co-ownership.
- unless there is an arrangement, co -ownership
allies
Ex: In the last bar examination, rex bookstore wrote a book
( crim + com) who owns the book? So far as copyright as
concerned?
A: Since it can be divided the parts can be divided the
ownership shall belong to the one who wrote a particular
part.
If however, a work of joint authorship consist of parts that
can be used separately and the author of each part can be
identified the author of each part shall be the original owner
of the copyright in the part that he has created.
3. In case the work is created by an author during the
course of his employment the copyright shall belong to:
The employee if the creation of the object of
copyright is not a part of his regular duties even if the
employee uses the time, facilities and materials of the
employer.
The employer, if the work is a result of the
performance of his regular assigned duties unless there is
an agreement to the contrary
Q: There was an employee hired by a creatives to come up
with an art depicting the superhero that will catch the
interest of the children. During the break, the employee
started writing a novel pertaining to the particular
superhero. At the end of the employment, he was able to
come up drawing of superhero and novel which more or
less supports the drawing:
A: The drawing of the superhero is owned by the employer.
The novel belongs to the employee even though he used the
facility of the employee. Because he was not hired by the
employer to write the novel
4. In the case of a work-commissioned by a person other
than the employer of the author and who pays for it and the
work is made in pursuant of the commission , the person
who so commissioned the work shall have ownership of the
work but the copyright thereto shall remain with the creator
unless there is a written stipulation to the contrary
Vs Commission on commission work: The author owns the
copyright. IN patent you can decide kanino ung patent.
Q: The is a sexy actress who commissioned a well known
artist to paint her in total nudity. The agreement was that
she will own the paintings. Who owns the painting?
A: The actress will own the painting of the nude payment,
the painter owns the copyright.
- Vs PATENT:
5. In case of audio visual work the copyright belongs to the
produce , the author of the scenario the composer of the
music the film director, and the author of the work so
adopted . However, subject to contrary or other stipulation
among the creators, the produces shall exercise the
copyright to an extent required for the exhibition of the
work in any manner and
- It is the producer who exercise the right for and
behalf of the others.
Q: Before the pandemic , we go to MMFF and the different
producer put into display the films that they have produced.
If the movie is submitted to the MTRCB and the MTRCB
rates it with X rated provided that they cut the nude scenes
for the movie to be shown. Suppose the director will not
agree for the deletion of the sex and violence? Who must
prevail?
A: the producer prevails over the director. The director is
merely hired by the producer. Ownership is with the
producer.
6. In respect of the letters, the copyright shall belong to the
writer subject to the provision of Article 723 of the CIivl
Code
Article 723: Letters and other private communications in
writing are owned by the person to whom they are
addressed and delivered but they cannot be published and
disseminated without the consent of the writer or his heirs
Q; Boy gives girl a letter who owns the letter
A: The letter belongs to the receiver, but the copyright
remains with the writer hence the girl cannot publish the
letter. The recipient is the owner of the letter, but the
copyright ( contents) of the letter remains with the writer.
Derivative Works
*Paalam ka if you are to do the derivative work.
1.Dramatization translation, adaptation, arrangement and
other alteration of literary and artistic works
Example : Romeo and Juliet turned into a movie
2.Collection of literary scholarly or artistic works and
compilation of data and other materials which original by
reason of selection or coordination or arrangement of
their contents.
Example: SCRA na may syllabus there is an expression vs
those compilation lang ng SC decision. Encyclopedia by
reason of selection or coordination or arrangement yung
copyrightable dito is the arrangement and coordination
The work in these derivative work are protected as new
work
1. Not affect the force of any
subsisting copyright upon the
original works employed or
any part thereof
2. Not be Construed to imply
any right to such use of
original works
3. To secure or extend copyright
in such original works
Example : Birthday song if I create a new work out of that
it does not mean ma extend ung original copyright nun.
Copyright covers two kinds of right
1. Copyright or economic right
Section 177. Copyright or Economic Rights. - Subject to
the provisions of Chapter VIII, copyright or economic
rights shall consist of the exclusive right to carry out,
authorize or prevent the following acts : MEMORIZE
177.1. Reproduction of the work or substantial portion of
the work; ( the right to copy)
177.2. Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;(
DERIVATIVE)
177.3. The first public distribution of the original and
each copy of the work by sale or other forms of transfer of
ownership;( First distribution) ito lang ung right first
distribution
177.4. Rental of the original or a copy of an audiovisual
or cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data and
other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy
which is the subject of the rental; (n)( Rental)
177.5. Public display of the original or a copy of the work;
( PUBIC display)
177.6. Public performance of the work; and ( PUBLIC
PERFORMANCE:Yung mga nasa bar)
177.7. Other communication to the public of the work.
(Sec. 5, P. D. No. 49a)
Term
General Rule : Life of the author plus 50 years after his
death
*Death: January 1 of the year following the death of the
author ( July 1919 coount ka Jan 2020)
Except: Work of applied art 25 years from making
2. Moral right
1. Alternation and non publication right
2.Right of attribution ( ctto: you have to name the author)
3. Right to preservation of integrity ( binaboy mo pa)
4. False attribution.
General Rule: Life plus 50
Except: Attribution perpetual
SECTION 193. Scope of Moral Rights. - The author of a
work shall, independently of the economic rights in Section
177 or the grant of an assignment or license with respect to
such right, have the right:
( na bent ana and all nasayo padin yung moral right it is
with you forever – author lang_
193.1. To require that the authorship of the works be
attributed to him, in particular, the right that his name, as
far as practicable, be indicated in a prominent way on the
copies, and in connection with the public use of his work;
193.2. To make any alterations of his work prior to, or to
withhold it from publication;
How do you withhold? The author has the power of
injunction against publication, ( TRO)
193.3. To object to any distortion, mutilation or other
modification of, or other derogatory action in relation to,
his work which would be prejudicial to his honor or
reputation; and
193.4. To restrain the use of his name with respect to any
work not of his own creation or in a distorted version of his
work. (Sec. 34, P.D. No. 49)
SECTION 194. Breach of Contract. - An author cannot be
compelled to perform his contract to create a work or for
the publication of his work already in existence. However,
he may be held liable for damages for breach of such
contract. (Sec. 35, P.D. No. 49)
Penalty ranges from 50K to 1,5 M and or imprisonment of
1-9 years depending on the number of offenses committed
What is copyright infringement?
There must be an ownership of a valid copyright. ( Valid).
Proof of ownership: Affidavit evidence . The exercise of
any exclusive right without the consent of the owner unless
there is a fair use?
Is there an unauthorized use of valid copyright? Yes is the
use fair? If not copyright infringement.
To constitute infringement, it is not necessary that the
whole or even a large portion of the work shall have been
copied. If so much is taken that the value of the original is
sensibly diminished or the labors of the original author are
substantially and to an injurious extent appropriated by
another that is sufficient in point of law to constitute piracy.
- There is copying and that it was done without the
consent of the owner.
- Even if it a small part for as long as there is
copying there is copyright infringement it need
not be a substantial portion. Vs ABSCBN
( substantial)
Is it a valid defense for the infringer that did not know
that he was infringing a copyright?
NO . A copy of a piracy is an infringement of the original
and it is no defense that the pirate in such cases did not
know what works he was indirectly copying or did not
know whether or not he was infringing any copyright he at
least knew that what he was copying is not his or he copied
according to his own peril
A copy of piracy is an infringement of the original and it is
no defense that the pirate in such cases did not know
whether or not he was infringing any copyright he at least
knew that what he was copying was not his and he copied
at his peril
Limitation on Copyright: Does not constitute a copyright
1.The recitation or performance of a work once it has been
lawfully made accessible to the public if done privately
and free or charge or if make strictly for charitable or
religious institution or society
2. The public performance or communication to public of
work in a place where no admission fee is charged in
respect of such public performance or communication by a
club, institution for charitable or education purpose
only whose aim is not profit making subject to such other
limitation as provided in the regulation.
Example: Art exhbits and there is music , what if ADMU
charges fee for lighting cleaning etc? Pede na bai to? Did
you go there for the music or the artwork?
UV express point to point there is a music in the Van. The
Pasahero ng enjoy din is there a infringement? No . The
passenger are not paying for the song but only for the fair.
Restaurant with the loud speaker, playing for the song.
There is no copyright infringement it is not a educational
and charitable purpose
3.Any use made of a work for the purpose of any judicial
proceeding or for the giving of professional advice by a
legal practioner
4.The reproduction or distribution of published articles or
materials in a specialized format exclusively used for the
blind, visually and reading impaired person provided
that such copies and distribution shall be made in a non
profit basis and shall indicate the copyright owner and the
date of the original publication
5.faIR Use : Criticism comment news reporting teaching
including limited number of copies for classroom use,
scholarship research and similar purposes.
What is FAIR USE doctrine?
Criticism comment news reporting teaching including
limited number of copies for classroom use, scholarship
research and similar purposes.
Fair use is defined as a privilege to use the copyrighted
material in a reasonable manner without the consent of the
copyright owner or as copying the theme or ideas rather
than their expression
The right of the author over his material may be qualified
or limited on the exclusive ownership of the author over the
literary material. This material can be used by other
individual provided that the use is 1. Reasonable 2. Not
profit purpose.
( Memorize)
Factors:
1. The purpose and character of the use including whether
such use is commercial nature or is for non profit
educational purpose.
Q: There was a part of the book photocopied for
purpose of academic discussion
A: The fair use doctrine applies the material so
reproduced is not intended for profit.
-If it is for commercial it is not copyrighted work.
2. The nature of copyrighted work
- Painting vs book
3. The amount and substantially of the portion used in
relation to copyrighted work as a whole ( reproduction)
- If the entire work has been reproduced there is
no fair use
Note: In the Habanna case there was certain parts of the
book copied by another author she was claiming that this is
not in violation of copyright laws due to fair use since few
pages lang ang copied
SC: There was infringement regardless of the number of
pages or the volume of copied pages are concerned.
This section pertains to reproducing the portion of the book
for academic purpose . In the Havanna case it does not
pertain to reproduction but copying the contents of the book
it is not merely reproducing the contents of the book for
discussion.
- Amount and substantially ( the meat of the book)
4. The effect of the use upon the potential market for or
value of the copyrighted work
- Mawawalan ng benta si copyright owner
Q: There is a shop in recto that photocopies book and
materials and called is as a replica. Is this a violation?
A: Yes, because what was photocopied is substantial and
would have an effect on the potential market of the author.
Fair Use is an exception to the copyright owner’s monopoly
of the use of the work it avoid stifling the very creativity
which the law designed to foster. ( A limitation of the right
over copyrighted work)
Selling Illicit Copies of Software Program
The Commission of any of the acts Mentioned under PD 49
Section 5 without the copyright owner’s consent constituted
an actionable copyright infringement. The Graveman of
copyright infringement is not merely the unauthorized
manufacturing of intellectual works but rather the
unauthorized performance of the fact covered by section 5.
The mere sale of the illicit copies of the software program
was enough by itself to show the existence of probable
cause for copyright infringement
Who is liable?
1.The directly commits an infringement
2.Benefits from infringing activity of another person who
commits an infringement if the person beneging has been
given notice of the infringing activity and has the right and
ability to control the activities of other person ( mall owner)
3.With knowledge of infringing activity induces causes or
materiality contributories to infringing conduct of another
( Photox machine to reproduce the books)
Is hacking copyright infringement?
No. But if the purpose is to allow others to copy it will fall
under the indispensable cooperation.
ABS VS Gozon:
Corporate directors are liable for copyright infringement
only if they actively participate in its commission. ( This
governs) only those who active pariticipation for corporate
officer to be liable
Burden of Proof in Copyright
For the court to determine whether the crime of
infringement under RA 8293 is committed the complainant
needs to prove that
1. They were owners of the copyrighted material
2. The copyrighted material was being copied and
distributed by the respondent. Thus the ownership of a valid
copyright is essential
* there must be a proof that one claiming the ownership
over the copyrighted material
rEMedies
1.Injunction
2.Impounding
3.Destruction
Case law
1.An author is a natural human being a monkey is not a
human being
2.Can you copyright useful articles? Designs cannot be
separated from the uniform cannot be separated? A feature
of a useful article is copyrightable if : 1. It can be perceived
as a two or three dimensional artwork that is separate from
useful article . 2.It would be protectable pictorial graphical
and sculptural work on its own
3.Computer program differ to some extent from many other
copyrightable work because computer program always
serve a functional purpose .
1. Habana vs. Robles (GR No. 131522, July 19,
1999)
Infringement consist in the doing by any person without the
consent of the owner of the copyright of anything the sole
right to do which is conferred to the owner of the copyright.
The issue here is to what extend can copying be injurious to
the author of the book. Here, the book showed that there are
substantial similarity in the style and the manner of the
books and identical example cannot pass as similarities
because of technical consideration. In case of
infringement, copying alone is not what is prohibited .
The copying must produce and injurious effect. Here the
injury consist in that respondent Robles lifted form the
petitioner’s book materials that were a result of the latter’s
research work and compilation and misrepresented the
same as her own.
2. Filipino Society of Composers vs. Tan, G.R.
No. L-36402. March 16, 1987, 148 SCRA 461
(1987)
The Plaintiff field a case against the defendant for
copyright infringement for the playing of his music in the
restaurant. The defendant argued that there mere playing of
a popular song in his establishment does not constitute as
infringement. The issue here is whether copyright
infringement exist.
The court ruled there is no copyright infringement. Here,
the playing of the music was not done for profit, what the
customers pay for is the food and drinks. Hence the playing
of the song in public provided that it is not for profit does
not constitute as copyright infringement.
3. ABS-CBN Corp. vs. Felipe Gozon, et. al., G.R.
No. 195956, March 11, 2015
GMA was accused of using the footage of ABSCBN in
relation to the arrival of Angelo Dela Cruz at NAIA. The
court ruled that the said footage is copyrightable . Under
the law, works are protected from their sole fact of creation
regardless of their mode or form off expression as well as
their contents. This includes audio visual works,
cinematography , and etc.
Fair Use is not present
Given that substantial portion of Angelo Dela Cruz was
utilized by GMA cannot show that fair use exist. Good faith
also is not a defense news must be differentiated from
expression of news ( copyrighted ). News of the event is
not copyrightable, however an event can be captured and
presented in a specific medium . As recognized by the court
, television involves a whole spectrum of visuals and
effects, video and audio , News coverage in television
involves the framing shots, using images , graphics and
sound effects. It involves creative process or originality.
Television footage is an expression of the news.The news
footage did not undergo any transformation.
Is good faith or lack of knowledge or intent to commit
available as a defense in copyright infringement? No. What
does not need to know that he or she is copying a work
without the consent to violate copyright law. Good faith is
not a defense.
4. Juan vs. Juan, G.R. No. 221732, August 23,
2017
Roberto Juan claimed that he began using the name and
mark Lavandera Ko and was able to register the same with
the National Library for his laundry business. The respon-
dent filed a copyright infringement against Roberto . The
RTC dismissed the petition and ruled that neither of the
parties are entitled to use the trade name Lavandera Ko be-
cause there is an existing copyright over the song
Issue: Whether there is a copyright infringement
Held: No. There is no copyright infringement,, Lavandera
Ko is the mark in question is used as a tradename. A mark
is defined as any visible sign that is capable of distinguish-
ing goods and service of an enterprise from another. Copy-
tight on the other hand is the right of literary property as
recognized and sanctioned by law. Therefore, Lavandera
Ko, a musical composition is protected under the copyright
law and not the trademark law.
Copyright Infringement
Infringement of copyright is a trespass on the
private domain owned and occupied by the owner of
copyright and therefore, protected by law and infringement
of copyright or piracy consist in doing by any person
without the consent of the owner of the copyright anything
the sole right to do which is conferred by the Statute on
owner of copyright.
5. Pearl & Dean vs. Shoemart, Inc. et al. (GR
No. 148222) (Aug. 15, 2003)
Pearl and Dean is engaged in the manufacture of
advertising display unit referred as light boxes. It was able
to secure a certificate of copyright registration over the
illuminated display unit. It also filed a registration of
trademark over poster ads with the Bureau of Trademark.
Pear and Dean later received a report that exact copies of
the display unit were installed in SM Cubao . In light of the
discovery , Pear and dean filed a cease and desist order.
Difference
Trademark Patent Copyright
Any visible sign Technical Literary and
capable of solution of a artistic work that
distinguish the problem in any are original in
goods or service filed of human creation and are
of an enterprise activity which protected from
including a involves an the moment of
stamped or innovative step their creation
marked
container goods
Copyright Infringement
The Copyright that was secured here merely extended to
the technical drawings and not to the light boxes itself
because the later is not covered under print, pictorial,
illustration , advertising copies, label , box wrap. Therefore,
the copyright over the drawing cannot extend to the light
boxes.
Trademark infringement
Here the petitioner was able to seucre a trademark over
poster advertising, invoking section 20 .The issue here is
whether the use of Poster Ad is the contraction of poster
advertising, here assuming that the Poster Ads qualify as
trademark for failure to secure trademark registration for
specific use on light boxes meant that there could not have
bene any trademark infringement since registration is
essential element. ( Since wala registration ung mga boxes
there is no trademark infringement)
Patent
The petitioner did not secure a patent for the light boxes. It
is only after exhaustive examination by the patent office
that a patent is issued. The pre-requisite to obtain a patent
must be strictly observed. Here, since there is no issuance
of a patent the light boxes are not given protection
6. Columbia Pictures vs. Court of Appeals 261
SCRA 144 (1996)
Here there is an allegation that the presentation of master
tapes of copyrighted films are needed for the issuance of
the search warrant. The court ruled that the presentation of
mastertapes are merely to be understood to serve as a
guidepost to determine the existence of probable cause in
copyright infringement. The requirement of presentation of
master tape goes against the element of secrecy and speed
that underlie the investigative and surveillance operation in
police enforcement campaign considering that master
tapesa are bulky and would likely cause attention
Copyright is protected from the moment of protection
While there is a requirement under Section 26 that copies
must be registered and deposited with the National Library,
failure to register or comply with the deposit requirement
does not deprive the copyright owner of the right to sue for
enforcement. Copyright is protected from the moment of
creation
7. Microsoft Corporation vs. Rolando D.
Manansala, G.R. No. 166391, October 21, 2015
The respondent was accused of selling Microsoft software
bearing the copyright and trademark of the petitioner. The
petitioner filed a partial reconsideration arguing that the
printing, or copying is not essential for copyright
infringement under Section 29 PD 49.
The issue is whether printing or copying is essential in the
commission of the crime of copyright infringement under
Section 29 of PD 49.: NO
Section 5. Copyright shall consist in the exclusive right;
(A) To print, reprint, publish, copy, distribute,
multiply, sell, and make photographs, photo-en-
gravings, and pictorial illustrations of the works;
(B) To make any translation or other version or
extracts or arrangements or adaptations thereof;
to dramatize it if it be a non-dramatic work; to
convert it into a non-dramatic work if it be a
drama; to complete or execute if it be a model or
design;
(C) To exhibit, perform, represent, produce, or re-
produce, the work in any manner or by any
method whatever for profit or otherwise; it not re-
produced in copies for sale, to sell any manu-
script or any record whatsoever thereof;
(D) To make any other use or disposition of the
work consistent with the laws of the land.
To print, reprint, publish, copy, distribute, multiply, sell,
and make photographs, photo-engravings, and pictorial il-
lustrations of the works;- This pertains to the word or
hence it is not necessary that one needs to print before he
or she is liable for copyright infringement .
8. Olaño vs. Lim Eng Co, G.R. No. 195835,
March 14, 2016
There is no copyright infringement here because what
was copyrighted are sketches and not the hatch doors.
LEC was contracted by SKI-FB to manufacture and install
interior and exterior hatch door. LEC deposited to the
National Library the final shop plans and drawing and was
issued a certificate of copyright registration. Metrotech
denied the copyright infringement averring that the hatch
doors were functional invention, no patent, over the said
hatch door were issued. Issue: Whether there is a copyright
infringement.
Copyright infringement is committed by any person who
shall use the original literary and artistic works or
derivative works without the consent of the copyright
owner. For Copyright infringement to prevail there must be
proof that
1. Ownership of the validly copyrighted material
2. Infringement of the copyright by the respondent.
Here, there is no copyright infringement, the copyright of
LEC merely covers sketches, drawings and not the actual
hatch doors. There was no proof that the respondent
reprinted the copyright sketches and drawings of the LEC
hatch doors. Hatch doors cannot be considered as
illustration, maps and sketches and charts that are to be
classified as copyrightable class of work.
Useful Articles are not subject to Copyright
A useful article is defined as having intrinsic utilitarian
function that is not merely to portray the appearance of an
article or to convey information is not covered by
copyright. The only instance when useful article may be
subject of copyright protection is when it incorporates a
design element that is physically or conceptually separable
from the underlying product. ( It is the design element that
is subject to copyright protection)
Key Take aways:
1. Patents relate to new and useful invention
2. Trademarks related to distinguishing marks, names and
signs that identifies a product brand or service other
commercial activities as belonging to the trademark owner
3. Copyright related to work on literary and artistic domain
a. For patents
* New and useful invention: If the invention is not new .
novel beneficial will not make it patentable
1. Phil : Adopt for the first to file rule
- The PH abandoned its previous position that the
first use an invention is the owner of the invention.
2. Invention : Period to grant is 20 years
- The twenty year is counted from the time of
filing of the application for patent registration.
The reconning is the time for applicant for patent
has filed its application with the IPO.
3. For utility models: Period is seven years without
renewal.
4. For industrial design period is 5 years each
5. The law allows compulsory licensing in some cases
- In the case of covid 19 vaccines because of the
existing medical situation. In some cases the
government is allowed to limit the right of the
inventor for the benefit of the public.

Even the twenty year period has not yet expired one can
use the patent provided that it pertains to food and medicine
and a lead time of three years. The manufacturer must be
given exclusive right to manufacture within the three year
period, thereafter the royalty after three years will pertain to
the inventor.

6. Penalty for violation ranging from 100 k to 300K and for

6 months – 3 years imprisonment

b. Trademark
* distinguish identify a product, grant and service and other
commercial activities as belonging to trademark belonging
to it.
a. Actual use before the application is not required in the
registration process
b. Ownership is acquired by registration and actual use
-Ownership is granted upon registration but after
registration there must be actual use.
c. Term of grant is ten years renewable perpetually
vs. Patent: 20 years not renewable
d. Declaration of Actual use ( dau) is required to be filed
within three years from the filing of an application
e. Failure to file DAU is a ground for the declaration of
abandonment of a trademark
f. Penalty for violation increased ranging from P50k to
P200k and 2-5 years imprisonment

c. Copyright
* literary and artistic works whether it is original or
derivative.
a. Registration is not an absolute necessity
b. Term of protection is the entire lifetime of the creator and
50 years after his death. This pertain to the economic right
only.