Intellectual Property Code of the Philippines
Principal purpose of Intellectual Property law:
To protect and secure the exclusive rights of scientist, inventors artist
and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people for such periods as
provided by law.
Purpose:
1. Protection of gifted citizen
2. Protection of general public
- The protection is only for periods provided by law. The
right is not forever, it is provided for by law.
Technology Transfer Arrangement:
• Ratio: One might have intellectual property but he or
she cannot mass produce for the public consumption.
Through this arrangement one can enter into a contract
with another to mass produce the invention and then they
will share this to the public.
It refers to contracts or agreement involving the transfer of
systematic knowledge for the manufacture of the product , the
application of a process or rendering of a service including
management contract and the transfer ,assignment or licensing of
all forms of intellectual property rights, including licensing of
computer software.
Government Office tasked to promote an protect intellectual
property rights
The Philippine Intellectual Property office.
Functions:
1. Examine application for grant of letter patent for inventions and
register utility models and industrial designs; ( patent)
2. Examine application for the registration mark, geographic
indication integrated circuits ( Trademark)
3. Registration of technology transfer arrangement and settle
disputes involving technology transfer payments and implement
strategies to promote and facilitate technology transfer.
4. Promote the use of patent information as a tool for technology
development;
- After the period of protection assuming covid 19 is still
around there can be a copy of this invention the one
who copies the invention is not liable because the
period of protection had already expired.
5. Adjudicate contested proceeding affecting intellectual property
rights;
- Bureau of legal affairs: Intellectual property office,
they can conduct hearings and decide as to the
respective rights and duties of the parties involved.
6. Coordinate with other government agencies and the private
sector efforts to formulate and implement plans to polices to
strengthen the protection of intellectual property right in the
country.
Bureau under the Intellectual Property office
1. Bureau of Trademark
2. Bureau of Copyright
3. Bureau of patent
4. The documentation, information and technology transfer bureau
5. The management information system and the EDP Bureau
6. The administrative , financial and personnel services bureau
Intellectual Property Office
This is headed by the Director General. Just in case there is an issue
where must appeal be made from the decision of the bureau of
intellectual property office?
BUREAU -→ ( appeal)→ Director General of the Intellectual
Property Office because the decision is rendered by the director of
the Director of legal affairs.
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
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)
- New: Not be introduced to the market prior to the
invention of the particular product process and
invention. Not only to the end product but also
process.
Ex: Process: The production line in a factory may
be peculiar to a particular factory. ( This is
patentable)
- Beneficial: Must solve a particular problem in
human activity( ex : Drug for the purpose of curing
a particular disease)
B. Non -Patentable Invention
1. Discoveries, scientific theories and mathematical methods.
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.
- 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.
“ 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”
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.
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)
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.
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
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
Grounds for Cancellation
a. When one of the invention is not new or patentable
b. When the patent does not disclose the invention in a
manner clear and complete for it to be carried out by a
person that is skilled at art or
c. The patent is contrary to public order or morality.
d. That the patent includes matters that is outside the
scope obtained in the application filed.
1. Smith Kline Beckham Corp. vs. CA, GR No. 126627,
Aug. 14, 2003
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 burden of proof to substantiate the change for patent
infringement rest on the plaintiff.( Smith Kline) 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
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.
Trademark
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.
Tradename: In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise
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.
How Marks are Acquired
1. The right and the use of the marks are acquired through the
registration to the intellectual property office
- Ownership of a mark or trade name may be acquired
not necessarily be registration but by the adoption and
use I ntrade or commerce. As between actual use of a
mark without registration and registration of the mark
without actual use thereof, the former prevails over the
latter. For the rule widely accepted and firmly
entrenched is that actual use in commerce or business is
a pre-requisite to the acquisition of the right of
ownership.
- Once you register you need to use the trademark in actual
business or commerce.
Trademark Ownership”
It must be emphasized that the registration of a
trademark by itself is not a mode of acquiring ownership. If the
applicant is not the owner of the trademark he has no right to
apply for its registration. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant’s
ownership of the trademark and of exclusive right to the use
thereof. ( Bireknstock)
It is not the application or registration of the trademark
that vest ownership thereof. But it is the ownership of the trademark
that confers the right to register the same. A trademark is an
industrial property over which its owner is entitled to property right
which cannot be appropriated by unscrupulous entities that in one
way or another happen to register such trademark ahead of its
owner.
Benefit of Registration :
Merely a prima facie presumption of the valid
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.
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
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
10. Customary sign in every day language.
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)
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
Internationally well known marks
1. The person who may question the mark include those person
whose internationally well known marks are not registered is
identical with or confusingly similar to or constitute a translation of a
mark that is sought to be registered
2. A well-known mark is protected against reproduction ,translation
and confusingly similar mark even if it is not registered in the
Philippines such protection extends to unrelated goods.
Rights that a re conferred by registration
1.The right to the exclusive use of the mark for one’s own goods
or service
2. The right to prevent others from the use of the same mark for
identical goods in the course of trade
3. The right to the exclusive use of one’s already registered mark
even if the goods or service into one’s venture expands if used by
others for dissimilar product is likely to damage the business
interest.
Duration: The duration is ten years subject to indefinite period of
renewal for periods of ten years each
Infringement
1. The trademark being infringed is registered in the Intellectual
property office, however in infringement of the trade name the
same need not be registered
2. The trademark, tradename is reproduced, counterfeited , copied
or colorable 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
tradename is applied to labels,s sign , packages wrappers,
receptacles or advertisement intended to be used upon in
connection with such goods, business and service
4. The use or application of infringing the mark or trade name is
likely to cause confusion or mistake or to deceive purchaser or
others as to the goods or service themselves or as to the source or
origin of such goods or service or identity of such business
5. It is without the consent of the trademark or trade name owner or
the assignee thereof.
Types of Confusion
1. Confusion of goods : When an otherwise prudent purchaser is
induced to purchase one product in the belief that he is purchasing
another in which case the defendant’s good are then bought as the
plaintiff’s and its poor quality reflects badly on the reputation of
the plaintiff
2. Confusion of business: Wherein the goods of the parties are
different but the defendant product can reasonably be assumed to
originate form the plaintiff thus deceiving the public into believing
that there is some connection between the plaintiff and the
defendant which does not exist.
Test:
1. Dominancy test: Focuses on the similarity of the prevalent
features of the competing trademark which might cause confusion,
or deception and thus infringement. If the competing trademark
contains the main and dominant feature of another and
confusion is likely to occur infringement takes place. The question
here is whether the marks involved are likely to cause confusion or
mistake in the mind of the public or deceive purchasers ( This is now
the controlling test embodied under Section 155 of the IPL)
2. Holistic test: Requires the entirety of the mark in question be
considered in resolving similarity. Comparison of the words is not
the only determining factor . The trademarks in their entirety as
they may appear in their respective labels or hand tags must also
be considered in relation to the goods to which it is attached.
Therefore, it is not only the predominant words which must be
considered but also other features that he may draw conclusion
whether one is similar with the other.
Some of the grounds for cancelling a trademark registration are
as follows:
1. The trademark has become the generic name for the
goods or services, or a portion thereof.
2. The trademark has been abandoned.
3. The trademark was obtained fraudulently or contrary to
the provisions of the Intellectual Property Code;
4. The trademark is being used by, or with the permission
of, the registrant so as to misrepresent the source of the
goods or services on or in connection with which the
trademark is used;
5. The owner of the trademark, without legitimate reason,
fails to use the mark in the Philippines, or to cause it to
be used in the Philippines by virtue of a license during
an uninterrupted period of three (3) years or longer.
6. The trademark is confusingly similar to another
trademark or trade name owned by the person who
claims to be damaged and who has superior rights
thereto.
UNFAIR COMPETITION
The essential element of unfair competition with respect to goods
are
1. Confusing similarity in the general appearance of
goods
2. Fraud or intent to deceive the public and defraud a
competitor
Test : Whether the acts of the defendant have intent of deceiving 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 use of 1. The passing of the goods
a trademark as one of those another and
giving one’s goods the
appearance of another
2. It is not necessary to 2. It is necessary to establish
establish fraudulent intent in fraudulent intent for unfair
case for infringement of trade competition
mark
3. Registration of the 3. Prior registration is not
trademark is necessary for the necessary in unfair
filing of infringement of competition
trademark
4. Covered by IPC Covered by the IPC and
article 27 of the NCC
3. 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 10th 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.
4. 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 10th 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.
5. 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.
6. 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 dominancy 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, the public could
think that UFC expanded its product to include lechon sauce.
Therefore, to allow registration leads to confusion of business.
7. Taiwan Kolin Corp. Ltd. vs. Kolin Electronics, Inc., G.R.
No. 209843, Mar. 25, 2015
The petitioner filed with the intellectual property office, then the
Bureau of Patents and Trademark for the use of Kolin ( Combination
of Goods, colored tv etc) . This application was abandoned since
Taiwan Kolin failed to respondent to IPO paper that requires it to
elect one class of goods. This was subsequently revived when the
petitioner elected Class 9.
The petitioner argued that its goods are not closely related to Kolin
Electronics. There must be proof here that the petitioner is entitled
to its trademark registration. The issue is whether the petitioner is
entitled to trademark registration.
YES. A certificate of trademark registration confers upon the
trademark owner the exclusive right to sue those who have adopted
a similar mark not only those in connection with the goods and
service but also those related thereto In trademark cases, to
ascertain whether one trademark is identical or confusingly similar
to another the court decided on its merit with due regard to the
goods or services involved, the usual purchaser , character and
attitude among others
The term ordinary purchaser is defined as one that is accustomed to
buy and therefore to some extent familiar with the goods in
question. The test to determine fraud is when person in some
measure acquainted with an established design and desirous of
purchasing the commodity with which the design is associated. 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
Here, the goods are relatively luxury items, the products of the
contending parties are not easily affordable hence a casual buyer
is predisposed to be more cautious
The mere fact that one person has adopted and use a trademark
on his goods would not without more prevent the adoption and the
use of the same trademark by others on unrelated articles of a
different kind. The emphasis should be on the similarity of the
product involved and not on the arbitrary classification or general
description of properties or characteristics
Therefore, the court allowed the trademark registration of Kolin
over its specific goods of television set and DVD players although
another corporation has prior registration for automatic voltage,
converter ,recharger , stereo booster, AC-DC regulated power
supply, step down transformer and PA amplieied AC-DC that also
belons to Class 9 of the Nice Classification.
8. Zuneca Pharmaceutical vs. Natrapharm, Inc., G.R. No.
211850, September 8, 2020
Zuneca alleged to be the first user of the mark, as it already
owned the Zynaps mark prior to Natrapharm registration Here, the
mere interaction between Zueneca and Natapharm does not show
that Natrapharm acted in baith faith. It is highly unlikely that
participants would remember the medicine the drug exhibited in the
convention as it happened two years ago.
Ground for Cancellation
The existence of bad faith in trademark registration may be a
ground for its cancellation at any time after filing of a petition for
cancellation under Section 151 of IP Code. A petition to cancel a
registration of a mark under this act may be filed with the Bureau
of Legal Affidavit by any person who is in bad faith at the time of
registration. Bad faith means that the application or registrant had
prior knowledge of prior creation, use and or registration by
another of an identical or similar trademark
Trademark Infringement and Unfair Competition
9. Victorio Diaz vs. People of the Phils. and Levi Strauss
[Phils.], Inc., G.R. No. 180677, Feb. 18, 2013
Levi Sought the help of NBI for purposes of applying for a search
warrant against Diaz to be served on his tailoring shops. The search
warrants were issued in due course and jeans were seized from the
petitioner.
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)
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
It is the first registrant and not the first user who has a better
right over the mark Section 122 of the IP Code states that rights in
a mark shall be acquired through registration made validly in
accordance with the provision of the law. While it in fact of
registration which confers ownership over the mark and enables the
owner thereof to exercise the rights, the first to file rule prioritizes
the first filer of the trademark and operates to prevent any
subsequent applicants thereto.
10. 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
2. Confusion of business: Where although the goods of the 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.
11. 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.
12. San Miguel Pure Foods Co., Inc. vs. Foodsphere, 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 promotions 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 petitioner with the word Pista. The issue
is whether there is infringement
Issue: Whether there is unfair competition
Yes
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 appearance 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.
13. Prosel Pharmaceuticals & Distributors, Inc. vs. Tynor
Drug House, Inc., G.R. No. 248021, Sept. 30, 2020
The petitioner alleged the Ceegefer was an improved version of
Selvon C derived from Chorella Growth Factor.The respondent sent
a letter to the petitioner to recall the product that are already
distributed since the mark was confusingly 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 Phonetic similarities and visual there
is colorable imitation between the two products. To determine
trademark infringement there must be proof of likelihood of
confusion. Given the phonetic and visual similarities between two
product how the product name are spelled the sound of both
product name and the colors and the shapes of product packaging
it is obvious that there is colorable imitation.
Copyright
Original Intellectual Creation include the following:
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
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
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.
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
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.
What is FAIR USE doctrine?
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.
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.
2. The nature of copyrighted work
- If a painting cannot be reproduced. If the thing is a
book then fair use is applicable.
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.
4. The effect of the use upon the potential market for or value of
the copyrighted work
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.
What is 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
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
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
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.
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;(
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)
177.7. Other communication to the public of the work. (Sec. 5, P. D.
No. 49a)
2. Moral right
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
14. Habana vs. Robles (GR No. 131522, July 19, 1999)
Habana is the author and copyright owners of duly issued
certificate of copyright covering published works produced through
combined resources. The respondent are authors and distributor of
the published works , in the course of revising their published works,
the petitioner looked around various bookstore and came upon the
book of the respondent and was surprised to see that the contents,
scheme and presentation are similar to its book. The petitioner filed
a cease and desist order, The respondent ignored the demand
hence the petitioner filed a complaint for infringement. The
respondent denied the allegation of plagiarism since DEP is a
product of its own research and the scope and syllabus which are
common to all . They attributed the similarities to fair use.
Issue: Whether infringement exist
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.
15. 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. The playing of the songs in a public domain is not
infringement it only becomes infringement in this case because it
was made for profit.
16. 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.
Issue: Whether fair use is present
Fair Use is not present ( substantial copying- compare this with
Habana case)
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 is an
expression of the news.
17. 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 respondent 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 because 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 distinguishing goods and service of an
enterprise from another. Copytight 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.
18. 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 solution Literary and
capable of of a problem in artistic work that
distinguish the any filed of human are original in
goods or service activity which creation and are
of an enterprise involves an protected from the
including a innovative step moment of their
stamped or 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
19. Columbia Pictures vs. Court of Appeals 261 SCRA
144 (1996)
Columbia lodged a complaint with the NBI for violation of PD o 49
sought assistance for their anti-film piracy drive. NBI applied for a
search warrant seeking to seize the pirated video of copyrighted
films . The application for search warrant was later scrapped
because the master tapes of the copyright films from which
copyright films was not presented in the proceeding
Issue: Whether the Presentation of mastertapes is necessary
Held: 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.
20. Microsoft Corporation vs. Rolando D. Manansala,
G.R. No. 166391, October 21, 2015
The respondent without the authority of the petitioner engaged in
the distribution of software program. A search was done in the
premises of the respondent which should illegal copies of Mircosoft
program .The respondent argued that he should not be held liable
under Section 29 pf PD 49 since there is no proof that the
respondent was the one who really printed or copies the products
of the complainant. The petitioner filed a partial reconsideration
arguing that the act of printing or copying is not essential for the
crime of copyright infringement.
Issue: Whether the printing or copying is essential in the
commission of the crime of copyright infringement under Section
29 of PD 49.
Held: No. 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. There is no need to show that
petitioner still proved who copied replicated or reproduced the
said program. Infringement of copyright is trespass on private
domain owned and occupied by the owner of copyright and
therefore protected by law, infringement of copyright or piracy is
synonymous in connection consist in the doing by any person without
the cosent of the owner of the copyright of anything the sole right
to do which is conferred by the statute on the owner of the
copyright.
The mere sale of ilicit copies of the software program was enough
by itself to show the existence of probable cause for copyright
infringement. There is no need to show for the petition to still prove
who copied , replicated or reproduced the said program.
Section 5: To print, reprint , publish , copy distribute, multiply m sell
and make photograph, photo engraving, and pictorial illustriton of
the work → The word here is not AND but OR.
21. Olaño vs. Lim Eng Co, G.R. No. 195835, March 14,
2016
LEC was invited to submit a design or drawing specification for
hatched doors which it complied with by submitting drawing, and
plans. LEC was subcontracted by SKI-FB to install the interior or
exterior hatch door. LEC deposited with the national library its
plans and drawings were he was issued of copyright. Metrotech
was also subcontracted by SKI-FB to construct the hatch doors,
where LEC demanded Metrotech to cease and deist from infringing
its intellectual property rights. Metro tech argued that no copyright
infringement was committed because the hatch doors were
manufactured with the drawings of SKI-FB. Further MetroTech
argued that the hatch doors are subject to Patent and the record
reveals that there is no patent industrial design or utility model
registration of hatch doors.
Issue: Whether there is copyright infringement.
Held: No. There is no 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 to violate his economic right. He must demonstrate
the ff : 1. Ownership of a validly copyrighted material by the
complaint 2. Infringement of the copyright by the respondent. In this
case, there is no proof that the respondent reprint the copyright
sketches and drawings of the LEC hatch doors. Note also that
copyright is limited to literary and artistic works, hence Hatch Doors
are not considered to be copyrightable class of works. Because it is
not a literary and artistic work.
Useful article is not subject to copyright protection
A useful article is defined as one having intrinsic utilitarian function
that not merely to portray the appearance of an artlce or to
convey information is excluded from copyright eligibility. The only
instance when a useful article may be subject to copyright is when it
incorporates a design element that is physically or conceptually
separable from the underlying product. ( The design element must
be separated from the utilitarian function) Here, the hatch doors
does not bear any design element that are physically and
conceptually separable, independent and distinguishable from the
hatch door itself. The alleged distinct set of hinges and distinct jamb
were not related necessary hence not physically or conceptually
separable form the hatch door utilitarian function as apparatus , for
emergency egress without them the hatch door will not function