San Beda College of Law

2010 Centralized Bar Operations

INTELLECTUAL PROPERTY CODE 5. Geographic indications;

REPUBLIC ACT 8293
6. Industrial designs;
Purpose: To strengthen the intellectual and
industrial property system in the Philippines as 7. Layout designs (topographies) of
mandated by the country’s accession to the integrated circuits;
Agreement Establishing the World Trade
Organization (WTO) (Mirpuri vs. CA, GR No. 8. Protection of Undisclosed information
114508, November 19, 1999).
(Sec. 4).
LAWS SPECIFICALLY REPEALED BY THE
IPC

2. Patent Law (RA 165); Copyright

Confined to literary or artistic works which are
3. Trademark Law (RA 166); original creations in the literary or artistic
domain protected from the moment of their
4. Copyright Law (PD 49); and creation.

5. Articles 188 & 189 of the RPC Patent Inventions

Any technical solution of a problem in any field
of human activity which is new, involves an
INTELLECTUAL PROPERTY inventive step and is industrially applicable
(Section 21, IPC).
Intellectual Property - Those property rights
which result from the physical manifestation of Trademark
original thought (Ballantine's Law Dictionary). Any visible sign capable of distinguishing the
goods or services of an enterprise and shall
Note: There are NO property rights protected include a stamped or marked container of
by law in mere ideas or mental conceptions. goods (Section 121.1, IPC, and Elidad Kho v.
When creations of mind are put in tangible Court of Appeals, GR No. 115758, March 11,
form, there is appropriate subject of property 2002).
that is protected by law (63A Am Jur 3d,
Property, Section 5). Geographic Indication
One which identifies a good as originating in
Intellectual Property Rights the territory of a TRIPS member, or a region or
(CoRe-PIMP-LG) locality in that territory, where a given quality,
1. Copyright; reputation or other characteristic of the good is
essentially attributable to its geographical
2. Related rights or neighboring rights of origin (Art. 22, Trade-Related Aspects of
copyright; Intellectual Property Rights [TRIPS
Agreement]).
3. Patents;
Layout Design (Topography) of an
4. Mark; Integrated Circuit

EXECUTIVE COMMITTEE:
MANOLO ADEL SANTOS overall chair, KRISTINE ANNABELLEE HIPOS chair academic operations, MINISTER MOISES DU chair hotel operations,
EZEKIEL JOSHUA VILLENA vice chair for operations, RYAN DARYL PINEDA vice chair for secretariat, DJOANIVIE JOMARE JUNASA vice chair for
finance, MARIE MICAELA STA. ANA, vice chair for edp, DIOXENOS SULIT vice chair for logistics

SUBJECT COMMITTEE:
ANDREW ALCANTARA subject chair, JENNETTE ROBINO assistant subject chair, ACE ARVIN GANDO edp, SHERRY JANE GASPAY laws on intellectual
property, NOEL BURTON special laws, SARAH JEANE CARDONA banking laws, JOYFUL KIAMZON code of commerce, JONATHAN BAJETA negotiable
instruments laws, ALAN GUERRERO insurance laws, ANNA ROSE NAVA transportation laws, GUIA MARIE TOMANENG corporation laws

MEMBERS:
Stephanie Narvaez, Faith de Torres, Jerico Galvez, Thomas Santos, Christian Ocampo, Walter Fernandez, Aaron Marc Saludo, Anthony Villamor, Gian
Carlo Layson, Michael Ali, Jose Angelito Ilano, Dominic Paul Oso, Ronald Cubero, Maan Vanessa Doctor, Jaime del Rosario, Richelle Mari Marders,
Charles Cambaliza, Pia Urbano, Raymund Jonas Flores, Carissa Eñano, Gian Marlo Urbano, Donna Castronuevo, April Rose Javier, Mary Mae
Serafico, Clarence Octaviano, Adrienne Mae Aquino, Marilen Ang, Camhella Sandoval, Diane Dauz and Mapeps Andal
Integrated Circuit
A product, in its final form or an immediate
form, in which the elements, at least one of
which is an element, and some or all of the
interconnections are integrally formed in and/
or on a piece of material and which is intended
to perform an electric function (Art. 35, TRIPS
Agreement).
Layout Design (Topography)
The three-dimensional disposition, however
expressed, of the elements, at least one of
which is an active element, and of some or all
the three-dimensional disposition prepared for
an integrated circuit intended for manufacture
(Sec. 112 [3], R.A. No. 8293, as amended).
Note: For a layout-design to be entitled to
protection it must be original in the sense that
they are the result of their creators’ own
intellectual effort and are not commonplace
among creators of layout-designs
(topographies) and manufacturers of
integrated circuits at the time of their creation.
Technology Transfer Arrangements
Contracts or agreements involving the transfer
of systematic knowledge for the manufacture
of a product, the application of a process, or
rendering of a service including management
contracts; and the transfer, assignment or
licensing of all forms of intellectual property
rights, including licensing of computer software
except computer software developed for mass
market (Sec. 4.2, IPC).
Undisclosed Information
Information which:
1. is a secret in the sense that it is not, as a
body or in the precise configuration and
assembly of components, generally
known among or readily accessible to
persons within the circles that normally
deal with the kind of information in
question;
2. has commercial value because it is
secret; and
3. has been subject to reasonable steps
under the circumstances, by the person
lawfully in control of the information, to
keep it secret (Art. 39, TRIPS
Agreement).
INTERNATIONAL LAW RELATED
PROVISIONS
Persons Entitled to the Benefits of the IPC
(Principle of Reciprocity)
Any person who is a national or who is
domiciled or has a real and effective industrial
establishment in a country which:
1. is a party to any convention, treaty, or
agreement relating to intellectual property
rights or the repression of unfair
competition to which the Philippines is also
a party; or
2. Extends Reciprocal rights to nationals
of the Philippines by law, shall be entitled
to benefits to the extent necessary to give
effect to any provision of such convention,
treaty, or reciprocal law, in addition to the
rights to which any owner of an intellectual
property right is otherwise entitled by the
IPC (Sec. 3).
Note: If the foreign corporation not doing
business in the Philippines is suing as a party
of a treaty to which the Philippines is a
signatory, the fact that it is suing under Sec 3,
RA 8293 need not be alleged anymore and the
court may take judicial notice of such fact as it
is embodied in and supplied by the Paris
Convention which forms part of the law of the
land, provided that the party suing
substantially complied with the requirements of
the law (Puma Sportschufabriken Rudolf
Dassler,K.G. vs. IAC, GR 75067, Feb. 26,
1988).
 In another case, Leviton Industries, Inc.
vs. Salvador, (GR No. 40163, June 19,
1982), the Court held that failure to allege
reciprocity is fatal to foreign corporation’s
cause it being shown that it failed to
comply with the requirements of the law.
Principle of Reverse Reciprocity
Any condition, restriction, limitation,
diminution, requirement, penalty or any similar
burden imposed by the law of a foreign
country on a Philippine national seeking
protection of intellectual property rights in that
country, shall reciprocally be enforceable upon
nationals of said country within Philippine
jurisdiction (Sec. 231, IPC).
National Treatment Principle
The Philippines, upon becoming a member of
the WTO, has adhered to the Trade-Related
Aspects of Intellectual Property Rights
(TRIPS), which provides that protection
afforded to the member-state (with respect to
intellectual property) must be extended to the
nationals of other member-states.
Most-favored Nation Principle
Whatever favor, allowance, consideration,
privilege or immunity a member-state grants
 San Beda College of Law
2010 Centralized Bar Operations
the nationals of another country is 3. Secretary of Trade and
“immediately and unconditionally” accorded to Industry
the nationals of other member-states (Art. 4, a. Over decisions of
TRIPS). the Director General in the
exercise of his appellate
JURISDICTION OVER DISPUTES jurisdiction over the decisions of
the Director of the Documentation,
A. Original Jurisdiction Information and Technology
1. Director General Transfer (Sec. 7.1[b]).
Over disputes relating to the terms of b. Over decisions of
a license involving the author’s right to the Director General in the
public performance or other exercise of his original jurisdiction
communication of his work (Sec. relating to terms of license
7.1[c], IPC). involving the author’s right to
2. Bureau of Legal Affairs public performance or other
a. Opposition to communication of his work (Sec.
applications for registration of 7.1[c]).
marks;
b. Cancellation of Inter Parties
Civil Proceedings
trademarks; Proceedings
c. Cancellation of Kinds
patent, utility models, and 1. Patent 1. Copyright, Patent,
a. Petition to Trademark
industrial designs;
cancel an Action for
d. Petitions for invention, patent, infringement
compulsory licensing; utility model
e. Administrative registration,
complaints for violation of laws industrial design
involving intellectual property registration, or any
rights where the total damages claim or parts of a
claimed are not less than claim.
P200,000. The Director of Legal b. Petition for
compulsory
Affairs has the power to punish
licensing or a
contempt (Sec. 10, Ibid.) license to exploit a
3. Documentation, Information patented
and Technology Transfer Bureau invention.
Over disputes involving technology 2. Trademark 2. Trademark
transfer payments (Sec. 11.8). a. Opposition Action for unfair
4. Regular Courts (Sec. 225) against the competition
registration of a
B. Appellate Jurisdiction mark published for
opposition.
1. Director General
b. Petition to
Over all decision rendered by the: cancel the
a. Director of Legal registration of a
Affairs; mark.
b. Director of Patents; Nature of Proceedings
c. Director of Administrative Judicial
Trademarks; and Jurisdiction
d. Director of the IPO (Bureau of Legal Regular courts
Documentation, Information and Affairs)
Technology Transfer (Sec. 7.1[b]). Quantum of Evidence
2. Court of Appeals Substantial evidence Preponderance of
Over decisions of the Director General evidence
in the exercise of his appellate
jurisdiction over the decisions of the: COPYRIGHT
a. Director of Legal
Affairs, Principles
b. Director of Patents, 1. Copyright is that system of legal
c. Director of protection an author enjoys of the form of
Trademarks (Sec. 7.1[b]). expression of ideas (Intellectual Property

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 Law, Comments and Annotations, Aquino, 2. Expression
2003).  There must be "fixation". To be "fixed",
2. Relates to artistic creations, such as a work must be embodied in a
books, music, paintings, and sculptures, medium sufficiently permanent or
films and technology-based works as well stable to permit it to be perceived,
as to the main act which, in respect of reproduced, or otherwise
literary and artistic creations, may be communicated for a period of more
made only by the author or his than transitory duration.
authorization (Understanding Copyright  Strictly speaking, there is no work for
and Related Rights, World Intellectual copyright purpose, unless there is
Property Organization). something tangible.
3. Works are protected by the sole fact of  It is fixation that defines the time from
their creation, irrespective of their mode or when copyright subsists. Before the
form of expression, as well as their time of fixation there can be no
content, quality or purpose (Sec. 172.2). infringement.
4. Copyright is not a right to do anything
but to stop others from doing something; it Creator To Whom it Belongs
is therefore a negative right (Copyright Author of the work, his
Single Creator
Under the Intellectual Property Code, heirs or assigns.
Amador, V., 1998ed). If work consists of
5. Protection extends only to the UNIDENTIFIABLE
expression of the idea, not to the idea parts: co-authors
itself or to any procedure, system, method jointly as co-owners,
unless there is
or operation, concept or principle,
agreement to the
discovery, or mere data (Sec. 175). Joint Creator
contrary.
6. The copyright is distinct from the If work consists of
property in the material object subject to it IDENTIFIABLE parts:
(Sec. 181). author of each part
7. Copyright, in the strict sense of the term, owns the part that he
is purely a statutory right. Being a mere has created.
statutory grant, the rights are limited to If the creation is PART
what the statute confers. It may be of his regular duties:
obtained and enjoyed only with respect to employer, unless there
Employee’s Creation
is agreement to the
the subjects and by the persons, and on contrary
terms and conditions specified in the If it is NOT: employee
statute. Accordingly, it can cover only the Work itself: person
works falling within the statutory commissioning
enumeration or description (Pearl & Dean Copyright: creator,
Commissioned Work
(Phil.) vs. Shoemart, GR No. 148222, unless there is a
August 15, 2003). written stipulation to
the contrary.
Primary Purpose of Copyright For exhibition
Not to reward the labor of authors, but to purposes: producer
promote the progress of science and useful For all other purposes:
Cinematographic
producer, author of the
arts (Copyright Under the Intellectual Property Works
scenario, composer,
Code, Ibid). film director, author of
the work
Requisites for the Creation of a Publishers are deemed
Copyrightable Work representative of the
1. Originality author, unless:
 It does not mean novelty or ingenuity; i. the contrary
neither uniqueness nor creativity. It appears;
Anonymous and
simply means that the work "owes its ii. pseudonyms or
pseudonymous
adopted
origin to the author.” works
name leaves no
 Constituents of originality: doubt as to the
 The work is an independent author’s identity; or
creation of the author; author discloses his
 It must NOT be copied; and identity.
 It must involve some intellectual Collective Works Contributor is deemed
effort. to have waived his
 San Beda College of Law
2010 Centralized Bar Operations
right, unless he direction of another
expressly reserves it with the understanding
contributions be
(Sec. 196). that it will be disclosed
merged into
Writer. by the latter under his
inseparable or
However, the court own name and that
interdependent parts of
may authorize their contributions of natural
the unitary whole.
publication or persons will NOT be
Letters dissemination if the identified
public good or the Each author shall Joint authors shall be
interest of justice so enjoy copyright to his co-owners. Co-
requires (Art.723, New own contribution ownership shall apply
Civil Code). Unless the contributor
Joint authors shall be
expressly reserves his
entitled both to be
Duration of Copyright (Sec. 213) right, it is the putative
acknowledged as
author to whom the
authors of the work
Type of Work Duration work will be attributed
Lifetime of the creator
Single Creation and for 50 years after Works Protected:
his death A. Original Works (BO2P3-CL2AIM-D2W)
Lifetime of the last 1. Book
surviving co-creator s, pamphlets, articles and other
Joint Creation
and for 50 years after writings
his death 2. Perio
50 years after the date
dicals and newspapers
of their first publication;
except where, before Note: A pure news report no longer
the expiration of said finds protection under the new law,
period, the author’s BUT a column or published comment
Anonymous or a
identity is revealed or will. When newspapers and
pseudonymous work
is no longer in doubt, periodicals include works enjoying
the 1st two mentioned independent copyrights, the works so
rules shall apply; or if included continue enjoying the rights
unpublished, 50 years for duration proper to them.
from their making
3. Lectu
Work of applied art,
an artistic creation res, sermons, addresses, dissertations
with utilitarian prepared for oral delivery, whether or
functions or not reduced in writing or other material
incorporated in a 25 years from the date form
useful article, of making 4. Letter
whether made by s
hand or produced on 5. Dram
an industrial scale atic or dramatico-musical
(Sec. 171.10).
compositions, choreographic works or
Photographic work,
50 years from the entertainment in dumb shows
audiovisual work
publication of the work, 6. Music
produced by
or if unpublished, from al compositions, with or without words;
photography or
making the same 7. Work
analogous processes
Lifetime of the author s of drawing, painting, architecture,
Newspaper article and 50 years sculpture, engraving, lithography or
thereafter other works of art; models or designs
for works of art;
Note: The term of protection shall be counted 8. Origin
from the 1st day of January of the year al ornamental designs or models for
following the death or of last publication (Sec. articles of manufacture, whether or not
214). registrable as an industrial design, and
other works of applied art;
Collective Work Joint Work 9. Illustr
Elements remain Separate elements ations, maps, plans, sketches, charts
unintegrated and merge into a unified and three dimensional works relative
disparate whole to geography, topography,
Work created by 2 or Work prepared by 2 or
architecture or science;
more persons at the more authors with the
initiative and under intention that their

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 10. Drawi
ngs or plastic works of a scientific or
technical character;
11. Photo
graphic works including works
produced by a process analogous to
photography; lantern slides;
12. Audio
visual works and cinematographic
works and works produced by a
process analogous to cinematography
or any process for making audiovisual
recordings;
13. Pictor
ial illustrations and advertisements;
14. Comp
uter programs; and
15. Other
literary, scholarly, scientific and artistic
works (Sec. 172).
B. Derivative Works
1. Dramatizations, translations,
adaptations, abridgments,
arrangements, and other alterations of
literary or artistic works; and
2. Collections of literary, scholarly or
artistic works, and compilations of
data and other materials which are
original by reason of the selection or
coordination or arrangement of their
contents (Sec. 173t).
Note: Derivative works shall be protected
as new works. Provided however, that
such new works shall not:
a. affect the force of any subsisting
copyright upon the original works
employed or any part thereof
b. be construed to imply any right to such
use of the original works, or to secure
or extend copyright in such original
work (Sec. 173.2)
Works Not Protected: (PIN-DOG)
1. Idea, procedure, system, method or
operation, concept, principle, discovery or
mere data as such, even if they are
expressed, explained, illustrated or
embodied in a work (Sec. 175);
Note: Format or mechanics of a television
show are not copyrightable. The law in
enumerating what are subject to copyright
refers to finished works and not to
concepts (Joaquin Jr. v. Drilon, GR
108946, January 28, 1999).
2. News of the day and other miscellaneous
facts having the character of mere items of
press information (Sec. 175);
3. Any official text of a legislative,
administrative or legal nature, as well as
any official translation thereof (Sec. 175);
4. Any work of the Government of the
Philippines;
General Rule: Condition Imposed prior
approval of then government agency or
office wherein the work is created shall be
necessary for exploitation of such work for
profit. Such agency or office may, among
other things, impose as a condition the
payment of royalties.
Exception: No prior approval or
conditions shall be required for the use of
any purpose of statutes, rules and
regulations, and speeches, lectures,
sermons, addresses, and dissertations,
pronounced, read or rendered in courts of
justice, before administrative agencies, in
deliberative assemblies and in meetings of
public character (Sec. 176).
5. Pleadings;
6. Decisions of courts and tribunals. They
may therefore be freely used or quoted.
Note: This pertains to the "original
decisions" not the SCRA published
volumes since these are protected under
derivative works under Sec. 173.1 (b).
Rights Conferred by Copyright (CMD)
1. Copyright or Economic rights (Sec. 177);
2. Moral rights (Sec. 193); and
3. Right to participate in the gross proceeds
of the sale or lease of the original work or
droit de suite (Sec. 200).
 San Beda College of Law
2010 Centralized Bar Operations
A. Copyright or Economic Rights
Exclusive right to (a) carry out, (b)
authorize or (c) prevent the following acts
(CAP):
1. Reproduction of the work or
substantial portion of the work;
2. Dramatization, translation, adaptation,
abridgment, arrangement or other
transformation of the work;
3. First public distribution of the original
and each copy of the work;
4. Rental of the original or a copy of an
audiovisual or cinematographic work;
5. Public display of the original or a copy
of the work;
6. Public performance of the work; and
7. Other communication to the public of
the work (Sec. 177);
8. Assignment of the copyright and/ or
the material object in whole or in part
Note: Economic rights allows the owner to
derive financial reward from the use of his
works by others (WIPO, Understanding
Copyright and Related Rights, p.9).
B. Moral Rights
1. Right of Paternity – To require that
the authorship of the works be
attributed to him, in a prominent way
on the copies, and with the public use
of the work;
2. To make any alterations of his work
prior to, or to withhold it from
publication;
3. Right of Integrity – 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
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. 193).
a. These rights are distinct from
economic rights and remain with
the author even after he has
transferred or assigned to another
“other rights of copyright” (WIPO,
215).
b. Moral rights allow the author
to take certain actions to preserve
the personal link between himself
and the work (WIPO,
Understanding Copyright and
Related Rights, p.9).
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Term/ Duration
Lifetime of the author and 50 years after
his death. And is NOT assignable or
subject to license (Sec. 198).
These rights may be waived by:
1. by a written instrument (Sec. 195); or
2. by contribution to a collective work
unless expressly reserved (Sec. 196).
C. Droit de Suit
Inalienable right to receive to the extent of
5% of the gross proceeds of the sale or
lease of a work (Sec. 200).
Requisites:
1. Sale or lease of the work;
2. Original work;
3. Painting or sculpture, or manuscript;
and
4. Subsequent to the first disposition by
the author
Term/ Duration:
Lifetime of the author and for 50 years
after his death.
Works NOT covered:
1. Prints;
2. Etchings;
3. Engravings;
4. Works of applied art; and
5. Similar works wherein the author
primarily derives gain from the
proceeds of reproductions (Sec. 201).
Transfer or Assignment of Copyright
The transfer or assignment of the copyright
shall not itself constitute a transfer of the
material object. A transfer or assignment of the
copyright of the sole copy or of one or several
copies of the work shall not imply transfer or
assignment of copyright (Sec 181).
First Sale Doctrine
After the first sale of the lawfully made copy of
the copyrighted work, anyone who is the
owner of that copy can sell or dispose of that
copy in any way without any liability for
copyright infringement. The first sale of an
authorized copy of the work exhausts the
author’s right to control distribution of copies.
Limitations to the Rights of Copyright
(GF-PARRI)
1. General limitations (Sec. 184);
2. Fair use (Sec. 185);
3. In the case of a work of architecture, the
right to control the reconstruction or
 rehabilitation in the same style as the
original of the building (Sec. 186);
4. Private reproduction of published work in a
single copy by a natural person for
research and private study (Sec. 187);
5. Reprographic reproduction in a single
copy by non-profit libraries, under certain
circumstances (Sec. 188);
6. Reproduction, under certain
circumstances, of a computer program in
one back-up copy by the lawful owner of
the program (Sec. 189);
7. Importation for personal purposes under
certain conditions (Sec. 190).
General Limitations (R4QP2I-MU2)
Acts that do not infringe copyright:
1. Recitation or performance of a work: (i)
made accessible to the public, (ii) privately
done, (iii) free of charge, (iv) strictly for a
charitable or religious institution;
2. Making of quotations from a published
work: (i) compatible with fair use, (ii) extent
is justified by the purpose, (iii) source and
name of the author, appearing on work,
must be mentioned;
3. Reproduction or communication to the
public by mass media of articles on current
political, social, economic, scientific or
religious topic, lectures, addresses and
other works, delivered in public: (i) for
information purposes, (ii) not expressly
reserved, and (iii) source is already
indicated;
4. Reproduction and communication to the
public of literary, scientific or artistic works
as part of reports of current events by
means of photography, cinematography or
broadcasting to the extent necessary for
the purpose;
5. Inclusion of a work in a publication,
broadcast or other communication to the
public, sound recording or film if made by
way of illustration for teaching purposes
compatible with fair use and the source
and the name of the author appearing on
work, must be mentioned;
6. Recording made in schools, universities,
or educational institutions of a work
included in a broadcast for the use of
schools, universities or educational
institutions. Such recording must be
deleted with in a reasonable period; such
recording may not be made from audio-
visual works which are part of the general
cinema, repertoire of feature films except
of brief excerpts of the work;
7. Making of ephemeral recordings; (i) by a
broadcasting organization, (ii) by means of
its work or facilities, (iii) for use in its own
broadcast;
8. Use made of a work by or under the
direction or control of the government for
public interest compatible with fair use;
9. Public performance or the communication
to the public of a work in a place where no
admission fee is charged by a club on
institution for charitable or educational
purpose only and the aim is not profit-
making;
10. Public display of the original or a copy of
the work not made by means of a film,
slide, television, image or otherwise on
screen or by means of any other device or
process either the work has been
published, sold, given away, or transferred
to another person by the author or his
successor in title; and
11. Use made of a work for the purpose of any
judicial proceedings or for the giving of
professional advice by a legal practitioner
(Sec. 184).
Fair Use
A privilege, of persons other than the owner of
the copyright, to use the copyrighted material
in a reasonable manner without his consent,
notwithstanding the monopoly granted to the
owner by the copyright.
It does not constitute infringement.
Examples:
1. Criticizing, commenting, and news
reporting;
2. Using for instructional purposes, including
producing multiple copies for classroom
use, for scholarship, research and similar
purposes
3. Decompilation – the reproduction of the
code and translation of the forms of the
computer program to achieve the inter-
operability of an independently created
computer program with other computer
programs (Sec. 185).
Criteria to determine whether use is fair or
not:
1. Purpose and the character of the use;
2. Nature of the copyrighted work;
3. Amount and substantiality of the portions
used;
4. Effect of the use upon the potential market
of the copyrighted work (Sec. 185).
Note: Concept of fair use only applies to
copyrighted work and NOT to non-
copyrightable material.
 San Beda College of Law
2010 Centralized Bar Operations
 Quotations from a published work if
they are compatible with fair use and only
to the extent justified by the purpose,
including quotations from newspaper
articles, and periodicals in the form of
press summaries are allowed provided
that the source and the name of the
author, if appearing on the work, are
mentioned (Habana v. Robles, GR No.
131522, July 19, 1999).
Infringement or Piracy
Any violation of the owner’s exclusive rights
conferred by law (Pandect of Commercial Law
and Jurisprudence, Justice Jose Vitug, 2006
ed).
 An appropriation of a copyrighted work
by another who is not authorized (Black’s
Law Dictionary).
 The doing by any person, without the
consent of the owner of the copyright, of
anything the sole right to do which is
conferred by statute to the owner of the
copyright (Habana v. Robles, Ibid;
Columbia Pictures v. CA, GR No. 131522,
July 19, 1999).
 Copying alone is not what is
prohibited. The copying must produce an
injurious effect. (Habana v. Robles, Ibid).
 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 a piracy (Ibid.).
 It is the overall appearance or
impression that establishes infringement.
Trivial or minor changes do not
necessarily negate infringement (Boorstyn,
Copyright Law, 1981 Ed., 293, cited in
Intellectual Property Law, Comments and
Annotations, Aquino, R., 1998ed).
 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 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
(Habana v. Robles, Ibid.).
Plagiarism
The act of appropriating the literary
composition of another, or parts or passages
of his writings, or the ideas or language of the
same and passing them off as the product of
one’s mind.
9
The incorporation in one’s own work that of
another without the proper acknowledgement
thereof (Pandect of Commercial Law and
Jurisprudence, Vitug, 2006ed).
Remedies for Infringement
A. Judicial (Secs. 216-217)
1. Action for damages;
2. Criminal action;
Any person who at the time when
copyright subsists in a work has in his
possession an article which he knows,
or ought to know, to be an infringing
copy of his work for the purpose of:
a. Selling, letting for hire, or by way
of trade offering or exposing for
sale, or hire, the article;
b. Distributing the article for purpose
of trade, or for any other purpose
to an extent that will prejudice the
rights of the copyright owner in the
work; or
c. Trade exhibit of the article in
public, shall be guilty of an offense
and shall be liable on conviction to
imprisonment and fine (Section
217.3).
3. Injunction;
4. Court order for impounding or
destruction of infringing materials;
5. Payment of moral and
exemplary damages even in case of
acquittal by the accused;
6. Seizure and impounding of
infringing materials for the purpose of
evidence
B. Administrative
1. Administrative action;
2. Cease and desist order;
3. Forfeiture of paraphernalia
used in committing the offense;
4. Administrative fines
Affidavit Evidence
An affidavit made before a notary public in
actions for infringement, reciting the facts
required to be stated under the IP Code (Sec.
218.1).
Note: As prima facie proof, the affidavit shifts
the burden of proof to the defendant, to prove
the ownership of the copyrighted work.
Presumption of Authorship
The natural person whose name is indicated
on a work in the usual manner as the author
shall, in the absence of proof to the contrary,
be presumed to be the author of the work.
This is applicable even if the name is a
pseudonym, where the pseudonym leaves no protection under the Code (Secs.
doubt as to the identity of the author (Sec. 203-207).
219.1). 2. Producers of sound recordings (Secs.
208-210), which includes:
The person or body corporate whose name a. Sound recordings the
appears on an audio-visual work in the usual producers of which are nationals of
manner shall, in the absence of proof to the the Philippines (Section 223.1);
contrary, be presumed to be the maker of said b. Sound recordings that were
work (Sec. 219.2). first published in the Philippines
(Section 223.2);
Related Parties c. Sound recordings which are to
1. Parties be protected by virtue of and in
a. Plaintiff accordance with any international
i. Legal owner; or convention or other international
ii. Beneficial owner; since they are agreement to which the Philippines is
"parties in interest." a party (Section 224.2).
b. Defendant
i. Direct infringer; or  If the general public has
ii. Contributory infringer (Sec. 217). made use of the object sought to be
copyrighted for thirty (30) days prior to
Note: A corner bookstore and magazine the copyright application the law
store that vends pirated copies of a work is deems the object to have been
in fact violating the copyright owner's right donated to the public domain and the
to exclusively distribute his work. Such same can no longer be copyrighted
store would therefore be infringing. The (Filipino Society of Composers,
printer who, though acting under Authors and Publishers, Inc. vs.
instructions from another, sets into motion Benjamin Tan, G. R. no. L-36402,
the illegal reproduction of protected March 16, 1987)
material would, in fact, be infringing
copyright. 3. Broadcasting organizations (Sec. 211)
Scope of Right: exclusive right to carry
2. Prescriptive out, authorize or prevent any of the
Period following acts:
4 years from the time a. The rebroadcasting of their
Action for damages the cause of action broadcasts;
arose (Sec. 226) b. The recording in any manner
subject to the general including the making of films or the
Criminal action rules of prescription of use of video tape, of their broadcasts
crimes for the purpose of communication to
Petition for injunctive none the public of television broadcasts of
relief the same; and
Petition for the none
c. The use of such records for
impounding and
destruction of infringing fresh transmissions or for fresh
material recording.

Related Rights or Neighboring Rights of Application of rights:

Copyright (Secs. 202-211)
Rights akin to but different from copyright,
granted by the law to –
1. Performers, who are:
a. Nationals of the Philippines;
b. Not nationals of the
Philippines but whose performances:
i. Take place in the Philippines;
ii. Are incorporated in sound
recordings protected under the
Intellectual Property Code; and
iii. Which has not been fixed in
sound recording but are carried
by broadcast qualifying for
a. Broadcasts of broadcasting
organizations the headquarters of
which are situated in the Philippines;
b. Broadcasts transmitted from
transmitters situated in the Philippines;
c. Broadcasts by organizations which are
to be protected by virtue of and in
accordance with any international
convention or other international
agreement to which the Philippines is
a party (Section 224).
PATENT
 San Beda College of Law
2010 Centralized Bar Operations
The right granted to an inventor by the State, already patented, he is
or by the regional office acting for several restrained by the arm patented work,
States, which allows the inventor to exclude of the law from provided that the
anyone else from commercially exploiting his exploiting such an former is truly original,
invention by reason of i.e., it owes its
invention for a limited period (World
the patent granted the existence to its creator.
Intellectual Property Organization, earlier discoverer.
Understanding Industrial Property, p.5). Non-patentable
inventions may be
A patent is a statutory monopoly which subject of a copyright.
protects against unlicensed use of the
patented device or process even by one who Classes of
Non-patentable
discovers it properly through independent Patentable
Inventions
research (60 Am Jur 2d, Patents, Section 6). Inventions
1. Useful machine 1. Discoveries,
Purposes 2. A product scientific theories
1. The patent law seeks to foster and reward 3. A process and mathematical
4. Improvement of (1), method;
invention; (2), (3) 2. Schemes, rules and
2. it promotes disclosures of inventions to 5. Micro- organism methods of
stimulate further innovation and to permit 6. Non-biological and performing mental
the public to practice the invention once microbiological acts, playing games
the patent expires; process (Rule 201, or doing business,
3. The stringent requirements for patent Rules and and programs for
protection seeks to ensure that ideas in Regulations of computers;
the public domain remain there for the free Inventions) 3. Methods for
use of the public (Pearl & Dean (Phil.)., treatment of the
human or animal
Inc. v. Shoemart, Inc., GR No. 148222, body;
August 15, 2003). 4. Plant varieties or
animal breeds of
Principles essentially biological
1. Test of Non-Obviousness – If any process for the
person possessing ordinary skill in the art production of plants
was able to draw the inferences and the or animals;
constructs that the supposed inventor 5. Aesthetic creations;
drew from prior art, then the latter did not 6. Anything which is
contrary to public
really invent. order or morality
2. Unity of Invention – The application shall (Sec. 22).
relate to one invention only or to a group
of inventions forming a single general Note: In case of drugs and medicines, non-
inventive step (Sec. 38.1). patentable products include the mere
3. An applicant may not file 2 applications for discovery of a new form or new property of a
the same subject, one for utility model known substance which does not result in the
registration and the other for the grant of a enhancement of the known efficacy of that
patent whether simultaneously or substance, or the mere discovery of a new
successively (Parallel Application, Sec. property or new use for known substance or
111). the mere use of the known process unless
4. Whatever right one has to the invention such known process results in a new product
covered by the patent arises alone from that employs at least one new reactant (Sec 5
the grant of patent (Creser Precision RA 9502).
Systems vs. CA, GR No. 118708,
February 2, 1998). Utility Model Industrial Design
5. Patents or application for patents and Any new model of Any composition of
invention to which they relate, shall be implements or tools of lines or colors or any
protected in the same way as the rights of any industrial product three-dimensional form
other property under the Civil Code (Sec. even if not possessed whether or not
103.1). of the quality of associated with lines
invention but which is or colors provided that
Patent Copyright of “practical utility” (Del such composition or
When a person, by It may be vested in a Rosario v. CA, GR No. form gives a special
independent research work closely similar or 115106, March 15, appearance to and can
arrives at the same even identical to an 1996) serve as pattern for an
product or that is earlier, or already industrial product or

11
 handicraft (Sec. and certain
and provisions
112.1). provisions on
on patents
patents
applying
applying
mutatis
mutatis
mutandis
mutandis

Industrial
Patent Utility Model
Design
Requisites
1. New 1. New New
(Novel) – 2. Industrially
That which Applicable
does not
form part of
a prior art
(Sec. 23);
2. Inventive –
An
invention
involves an
inventive
step if,
having
regard to
prior act, it
is not
obvious to a
person
skilled in
the art at
the time of
the filing
date or
priority date
of the
application
claiming the
invention
(Sec. 26).
3. Industrially
patentable
– An
invention
that can be
produced
and used in
any industry
(Sec. 27).
No inventive
Has all of the No inventive
step and not
4 essential step
industrially
requisites
applicable
Term
5 years from
the filing date
7 years from of the
20 years from the filing date application,
the filing date of the which is
of the application; renewable for
application non- not more than
renewable 2 consecutive
periods of 5
years each
Applicable Rules
Secs. 20-107 Secs. 108-111 Secs. 112-120
 San Beda College of Law
2010 Centralized Bar Operations
Requisites of Patentability (Sec. 21) Persons Who May File an Application for a
A. Technical Solution of a problem in any Patent in the Philippines
field of human activity. As to the Legal
B. New (Novelty) – an invention shall not be As to Nationality Personality of the
considered new if it forms part of a prior Applicant
art (Sec. 23). 1. Filipino Nationals; 1. Inventor or his
2. Foreign Nationals or attorney-in-fact;
 Prior Art (Sec. 24)
those domiciled or 2. Assignee of the
That which has been made available have a real and inventor
to the public anywhere in the world effective commercial
BEFORE the filing date or the priority establishment in a
date of the application; country which is
bound by treaty
General Rule: That which forms part of an (such as the Paris
application whether for patent, utility model Convention and the
or industrial design, effective in the TRIPS Agreement)
to grant Filipinos the
Philippines, provided that: same rights it grants
1. the inventors or applicants are not the to its own nationals;
same 3. Foreign Nationals
2. the contents of the application are whose country also
published in accordance with the accepts the patent
requirements of patent application application of
rules; Filipinos.
3. the filing date of the prior art is earlier
Note: To be able to effectively and legally
Exception: Non-prejudicial disclosure preclude others from copying and profiting
1. Disclosure of information contained in from the invention, a patent is a primordial
the application; requirement.
2. Made by:
a. The inventor; No Patent, No Protection
b. Patent office and the information The ultimate goal of a patent system is to bring
was contained: a) in another new designs and technologies into the public
application filed by the inventor domain through disclosure. Ideas, once
and should not have been disclosed to the public without the protection of
disclosed by the office; or b) in an a valid patent, are subject to appropriation
application filed without the without significant restraint (Pearl & Dean
knowledge or consent of the (Phil.) v. Shoemart, GR No. 148222, August
inventor by a third party which 15, 2003).
obtained the information directly
or indirectly from the inventor; or “First-to-File” Rule/ System
c. A third party which obtained the This is the system of patent registration
information directly or indirectly adopted under the IPC in lieu of the first-to-
from the inventor (Sec. 25). invent system.
3. Made during the 12 months preceding
the filing date or the priority date of Right to Priority of an Earlier-filed Foreign
the application. Application (Sec. 31)
Requisites:
C. Involves an Inventive Step 1. The local application expressly claims
(Inventiveness) – an invention involves priority;
inventive step of, having regard to prior 2. It is filed within 12 months from the date of
art, it is not obvious to a person skilled in the earliest foreign application;
the art at the time of the filing date or 3. Filing within 6 months from the certified
priority date of the application claiming the copy of the foreign application, with an
invention (Section 27). English translation, from the date of the
D. Industrially Applicable – an invention local application.
that can be produced and used in any
industry (Section 28).

13
Requirements for Filing Applications (Secs.
32-39) Employer – if the
1. The application shall relate to one invention is the result
inventive step only or to a group of of the performance of
his regularly assigned
inventions forming a single general
duties unless agreed
inventive step. otherwise (Sec. 30).
2. The patent application shall be in Filipino
or English and shall consist of the Requirements to Get a Filing Date (Sec. 40)
following: On receipt of the application, an examiner
 A request containing the following: checks if the application includes the following
a. a petition for the grant of patent; requirements:
b. name and other data of the 1. Request for a Philippine patent;
applicant, inventor (if he is not the 2. Name and address of the applicant; and
applicant) and the agent; and 3. Description and claims of the invention in
c. title of invention. English or Filipino (the extent of protection
 Disclosure of the invention in a conferred by a patent is determined by the
manner sufficiently clear and complete claims).
for it to be carried out by a person
skilled in the art;  Payment of the filling fee is not included.
 Description of the invention;  The date of filling is very important
 Drawings; because it serves to determine who has
 One or more claims in clear and the right to the patent in case of a dispute
concise language defining the matter with another applicant for the same
for which protection is sought; invention.
 An abstract of technical information
consisting of a concise summary of Annual Fees
the disclosure, claims and drawings in To maintain the patent application or patent,
preferably not more than 150 words; an annual fee shall be paid upon the expiration
 Appointment of an agent or of 4 years from the date the application was
representative in the Philippines by a published, and of its subsequent anniversary
non-resident applicant upon whom of such date. Payment maybe made within 3
notices or process for judicial or months before the due date.
administrative procedure relating to
the patent may be served; and If the annual fee is not paid, the patent
 At the request of the Director, the application shall be deemed withdrawn or the
applicant shall furnish him with the patent considered as lapsed from the day
date and number of any application for following the expiration of the period within
a patent filed by him abroad relating to which the annual fees were due.
the same or essentially the same
invention as that claimed in the A grace period of 6 months shall be granted
application filed with the IPO and other for the payment of annual fee (Sec. 55).
documents relating to such.
Concept of Divisional Applications
Situation
Persons Entitled to When two or more inventions are claimed in a
Patent single application but are of such a nature that
2 or more persons a single patent may not be issued for them.
invent separately and He who first files. The applicant is thus required “to divide” or
independently limit the claims to whichever the invention he
2 or more applications Applicant who has the
may elect, whereas those inventions not
filed for the same earliest filing date or
invention earliest priority date elected may be made the subject of separate
Inventions created Person who applications which are called “divisional
pursuant to a commissioned the applications” (Smith Kline Beckman Corp. v.
commission work, unless agreed Court of Appeals, GR No. 126627, August 14,
otherwise. 2003, cited in Reviewer on Commercial Law,
In case an employee Employee – if Sundiang and Aquino, 2006ed).
made the invention in invention NOT part of
the course of his his regular duties even
employment if he uses the time,
facilities and materials
of the employer;
 San Beda College of Law
2010 Centralized Bar Operations
Rights Conferred to an Applicant
All the rights of a patentee in relation to the
invention claimed in the published patent
application if he had:
1. actual knowledge that the invention was
the subject matter of a published
application; or
2. received written notice that the invention
was the subject matter of a published
application; and
3. had not filed the action until after the grant
of a patent and within 4 years from the
commission of the acts complained of
(Sec. 46).
Rights Conferred by Patent (Sec. 71)
1. To restrain/ prohibit/ prevent;
a. Subject matter is PRODUCT
To restrain, prohibit, and prevent any
unauthorized person or entity from
making, using, offering for sale, selling
or importing that product;
b. Subject matter is PROCESS
To restrain, prevent or prohibit any
unauthorized person or entity from
using the process, and from
manufacturing, dealing in, using,
selling or offering for sale, or importing
any product obtained directly or
indirectly from such process.
2. To assign or transfer; and
3. To conclude licensing contracts
Limitations of Rights Conferred by Patent
1. General Limitations (Sec. 72)
The owner of a patent has no right to
prevent third parties from performing,
without his authorization, the following
acts:
a. Using of a patented product which has
been put on the market in the
Philippines by the owner of the
product, or with his express consent;
b. Exploitation of the patent if done
privately and on a non-commercial
scale or purpose;
c. Act of making or using the patent if for
the sole purpose of scientific research
and experiment;
d. Preparation for individual cases, in a
pharmacy or by a medical
professional, a medicine in
accordance with a medical
prescription; and
e. Use of the patented product if it occurs
in vehicles in transit in the country.
f. In case of drugs and medicines, where
the act includes testing, using, making
or selling the invention including any
15
data related thereto, solely for
purposes reasonably related to the
development and submission of
information and issuances of
approvals by government regulatory
agencies required under any
Philippine or foreign law (Sec. 7 RA
9502)
2. Use by Prior User (Sec. 73)
A person other than the applicant, who
have started using in good faith the
invention in the Philippines, or undertaken
serious preparations to use the same,
before the filing date or priority date of the
application shall have the right to continue
the use thereof but his right may only be
transferred or assigned further with his
enterprise or business.
3. Use by Government (Sec. 74)
The government or a third person
authorized by it may use the patent
without authority of the patent owner if:
a. Public interest so requires;
b. The manner of exploitation by the
owner of the patent is anti-competitive
c. In case of drugs and medicines, there
is a national emergency or other
circumstance of extreme urgency
requiring the use of the invention.
d. In case of drugs and medicines, there
is a public non- commercial use of the
patent by the patentee, without
satisfactory reason
e. In case of drugs and medicines, the
demand for the patented article in the
Philippines is not being met to an
adequate extent and under
reasonable terms (Sec. 8 RA 9502).
Cancellation of Patent Formalities
Upon petition, with notice and hearing.
Effect
Termination of rights conferred by the patent
(Sec. 66).
Grounds:
1. What is claimed as the invention is not
new or patentable;
2. Patent does not disclose the invention
in a manner sufficiently clear and complete
for it to be carried out by any person
skilled in the art; and
3. Patent is contrary to public order or
morality (Sec. 61).
Infringement (Sec. 76.1)
The making, using, offering for sale, selling, or
importing a patented product or a product
obtained directly or indirectly from a patented
process, or the use of a patented process
without the authorization of the patentee.
Contributory Infringer
One who actively induces the infringement of a
patent or provides the infringer with a
component of a patented product or of a
product produced because of a patented
process knowing it to be especially adopted for
infringing and not suitable for substantial non-
infringing. He is jointly and severally liable with
the infringer.
Doctrine of Patent Exhaustion
It espouses that the patentee who has already
sold his invention and has received all the
royalty and consideration for the same will be
deemed to have released the invention from
his monopoly. The invention thus becomes
open to the use of the purchaser without
further restriction (Adams v. Burke, cited in
Notes on Selected Commercial Laws: A Guide
for Bar Reviewees, Catindig, 2003ed).
Tests of Patent Infringement
Economic Interest Test
When the process-discoverer’s economic
interests are compromised, i.e., when others
can import the products that result from the
process, an act is said to be prohibited.
1. Literal Infringement Test
Resort, in the first instance, must be had
to the “words” of the claim. If the accused
matter clearly falls within the claim,
infringement is made out and that is the
end of it.
The claims of patent and the accused
product must be juxtaposed within the
overall context of claims and specification
(Godines v. CA, GR 97343, September
13, 1993).
2. Doctrine of Equivalents Test
If two devices do the same work in
substantially the same way, the same
result, and produce substantially the same
result, they are the same even though they
differ in name, form or shape (Godines v.
CA, Ibid.).
Note: The doctrine of equivalents thus
requires satisfaction of the function-
means-and-result test, the patentee
having the burden to show that all three
components of such equivalency test are
met (Ibid).
The doctrine of equivalents cannot be
applied when the infringing invention is
clearly beyond what is written in the claim
(Reviewer on Commercial Law, Sundiang
and Aquino, 2006ed).
Doctrine of File Wrapper Estoppel
Balances the doctrine of equivalents. Patentee
is precluded from claiming as part of patented
product that which he had to excise or modify
in order to avoid patent office rejection, and he
may omit any additions he was compelled to
add by patent office regulations.
Defenses in Action for Infringement
(Sec. 81)
1. Invalidity of patent or claim; and
2. Existence of ground for cancellation
Remedies for Infringement
1. Action for damages
Limitations:
a. Recoverable damages are limited to
acts of infringement committed within
4 years before institution of action
(Sec. 79);
b. Damages cannot be recovered if the
infringer did not know, or had no
reasonable grounds to know, of the
patent (Sec. 80).
2. Injunction (Sec. 76)
3. Disposal or destruction by court’s order
of the infringing goods, materials and
implements, without compensation (Sec.
76)
4. Criminal action for repetition of
infringement (Sec. 84).
Note: The institution of an Inter Partes case
for cancellation of a mark with the Bureau of
Legal Affairs, IPO does not bar the adverse
party from filing a subsequent action for
infringement with the regular courts of justice
in connection with the same registered mark.
This is because the certificate of registration
upon which the infringement case is based,
remains valid and subsisting for as long as it
has not been cancelled by the Bureau
(Shangri-La International Hotel Mgt., Inc., v.
Court of Appeals, GR No. 111580. June 21,
2001).
Remedies of Persons not Having the Right
to a Patent (Sec. 67)
 San Beda College of Law
2010 Centralized Bar Operations
If a person other than the applicant is declared
by final court order or decision as having the
right to the patent, he may within 3 months
after such decision has become final (a)
prosecute the application as his own; (b) file a
new patent application; (c) request that the
application be refused; or (d) seek cancellation
of the patent.
Note: Applies to pending application and even
when patent is already granted.
Time to file: 1 year from date of publication of
the application (Sec. 70).
Assignment and Transfer
Inventions and any right, title, or interest in and
to patents and inventions covered thereby,
may be assigned or transmitted by inheritance
or bequest or may be the subject of a license
contract (Section 103.2).
Licensing
May be Voluntary (Secs. 85-92, IPC) or
Compulsory (93-102, IPC).
A. Voluntary (Secs.
85-92)
The grant by the patent owner to a third
person of the right to exploit a patented
invention.
Prohibited Clauses (Sec. 87)  
1. Those which impose upon the
licensee the obligation to acquire from
a specific source capital goods,
intermediate products, raw materials,
and other technologies, or of
permanently employing personnel
indicated by the licensor;
2. Those pursuant to which the
licensee reserves the right to fix the
sale or resale prices of the products
manufactured on the basis of the
license;
3. Those that contain restrictions
regarding the volume and structure of
production;
4. Those that prohibit the use of
competitive technologies in a non-
exclusive technology transfer
arrangement;
5. Those that establish full or partial
purchase option in favor of the
licensor;
6. Those that obligate the licensee to
transfer for free to the licensor the
inventions or improvements that may
17
be obtained through the use of the
licensed technology;
7. Those that require payment of
royalties to the owners of patents for
patents which are not used;
8. Those that prohibit the licensee to
export the licensed product unless
justified for the protection of the
legitimate interest of the licensor such
as exports to countries where
exclusive licenses to manufacture
and/or distribute the licensed
product(s) have already been granted;
9. Those which restrict the use of the
technology supplied after the
expiration of the technology transfer
arrangement, except in cases of early
termination of the technology transfer
arrangement due to reason(s)
attributable to the licensee;
10. Those which require payments for
patents and other industrial property
rights after their expiration or
termination of the technology transfer
arrangement;
11. Those which require that the
technology recipient shall not contest
the validity of any of the patents of the
technology supplier;
12. Those which restrict the research
and development activities of the
licensee designed to absorb and
adapt the transferred technology to
local conditions or to initiate research
and development programs in
connection with new products,
processes or equipment;
13. Those which prevent the licensee
from adapting the imported technology
to local conditions, or introducing
innovation to it, as long as it does not
impair the standards prescribed by the
licensor;
14. Those which exempt the licensor
from liability for non-fulfillment of his
responsibilities under the technology
transfer arrangement and/or liability
arising from third party suits brought
about by the use of the licensed
product or the licensed technology;
and
15. Other cases with equivalent
effects.
Mandatory Provisions (Sec. 88)
1. That the laws of the Philippines shall
govern the interpretation of the
 agreement and in the event of
litigation, the venue shall be the
proper court in the place where the
licensee has its principal office;
2. Continued access to improvements in
techniques and processes related to
the technology shall be made
available during the period of the
technology transfer arrangement;
3. In the event the technology transfer
arrangement shall provide for
arbitration, the Procedure of
Arbitration of the Arbitration Law of the
Philippines or the Arbitration Law of
the United Nations Commission on
International Trade Law (UNCITRAL)
or the Rules of Conciliation and
Arbitration of the International
Chamber of Commerce shall apply
and the venue of arbitration shall be
the Philippines or any neutral country;
and
4. The Philippine taxes on all payments
relating to the technology transfer
arrangement shall be borne by the
licensor.
B. Compulsory (Secs.
93-102)
The grant by the Director of Legal Affairs
of a license to exploit a patented invention
even without the agreement of the patent
owner in favor of any person who has
shown his capability to exploit the
invention under certain circumstances.
Terms and Conditions for Compulsory
License:
1. The scope and duration of such
license shall be limited to the purpose
for which it was authorized;
2. Non exclusive license;
3. Non assignable license;
4. Use of the subject matter of the
license shall be devoted
predominantly to the supply of the
Philippine market;
5. May be terminated if the
circumstances which led to its grant
have ceased; and
6. The patentee shall be paid
adequate remuneration.
Grounds:
1. National emergency or other
circumstances of extreme emergency;
2. When public interest requires;
3. Manner of exploitation of patent is
anti-competitive;
4. Public non-commercial use of the
patent;
5. Patented invention is not being
worked in the Philippines on a
commercial scale although capable of
being worked; and
6. Where the demand for the patented
drugs and medicines is not being met
to an adequate extent and on
reasonable terms (Sec. 10 RA 9502)
Procedure for Application of Patent
1. Application
Filed with the Bureau of Patents (BOP) of
the Intellectual Property Office (IPO) (Sec.
32).
2. Formality Examination
3. To determine whether the application form
has complied with the IP Code and
Regulations, after the filing date has been
accorded and the required fees have been
paid (Sec. 42).
Note: The date of filing is very important
under the present “first-to-file” system
because it serves to determine, in case of
a dispute with another applicant for the
same invention, who has the right to the
patent.
4. Classification and Search
An application which has complied with
the formal requirements shall be
classified and a search conducted to
determine prior art (Sec. 43).
5. Publication in the OG
The search and the classification of the
field of technology to which the invention is
assigned will be published in the IPO
Gazette after the expiration of 18 months
from the filing date or priority date (Sec.
44).
Note: After the publication of the
application, any person may present
observations in writing concerning the
patentability of the invention. Such
observation shall be communicated to the
applicant who may comment on them.
6. Request for Substantive Examination
Substantive examination is conducted
upon request. The request for substantive
examination of the application must be
filed within six (6) months from the date of
the publication. The application is
 San Beda College of Law
2010 Centralized Bar Operations
considered withdrawn if no request is
made within that period (Sec. 48).
7. Decision to Grant Patent Registration
or Decision of Refusal
If the examiner finds no reason for refusal
of the application, or if the notice of reason
for refusal is satisfactorily complied with by
amendment or correction, the examiner
issues a decision to grant the patent
registration. Otherwise, the examiner
refuses the application.
8. Inspection of Records
It shall be published in the IPO Gazette
within six (6) months. Any interested party
may inspect the complete description,
claims, and drawings of the patent on file
with the Office.
Appeal
Every applicant may appeal to the Director of
Patents the final refusal of the examiner to
grant the patent within two (2) months from the
mailing date of the final refusal. The decision
or order of the Director shall become final and
executory fifteen (15) days after receipt of a
copy by the appellant unless within the same
period, a motion for reconsideration is filed
with the Director or an appeal to the Director
General is filed together with the payment of
the required fee.
The decision of the Director General may be
appealed to the Court of Appeals. If the
applicant is still not satisfied with the decision
of the Court of Appeals, he may still appeal to
the Supreme Court.
TRADEMARK, SERVICE MARKS AND
TRADE NAMES
The IPC does NOT anymore provide for prior
use as a condition for ownership of a mark
(Sec. 122). REGISTRATION IS THE SOLE
BASIS. However, a trade name or business
name may be acquired by prior use and need
not be registered.
Principles
1. The right to the mark is separate and
distinct from the business using such mark
(Sec. 149.1).
2. The right of registration belongs to the
owner of the mark (Unno Commercial
Enterprises, Inc. v. General Milling Corp.,
GR 28554, February 28, 1983).
Trademark
19
Any visible sign capable of distinguishing the
goods (trademark) or services (service mark)
of an enterprise and shall include a stamped
or marked container of goods. In relation
thereto, a trade name means the name or
designation identifying or distinguishing an
enterprise (Elidad Kho v. Court of Appeals, GR
No. 115758, March 11, 2002).
Basic Requirements:
1. There must be a visible sign; and
2. It must be capable of distinguishing
the goods of an enterprise.
Functions:
1. To point out distinctly the origin or
ownership of the goods and to which it is
affixed;
2. To secure him, who has been
instrumental in bringing into the market a
superior article of merchandise, the fruit of
his industry and skill;
3. To assure the public that they are
producing the genuine article;
4. To prevent fraud and imposition; and
5. To protect the manufacturer against
substitution and sale of an inferior and
different article as its product (Mirpuri v.
CA, GR 114508, November 19, 1998).
Acquisition
Acquired through registration. Registration
is necessary before one can file an action
for infringement (Reviewer on Commercial
Law, Sundiang and Aquino, 2006ed).
Prior use in the Philippines is not required
before registration. However, there must
be an actual use after registration because
Sections 142.2 and 151[c] of the
Intellectual Property Code requires that
the registrant shall file a declaration of
actual use of the mark with evidence
within 3 years from the filing date of
application, otherwise, it would be
cancelled.
For the requirement of "actual use in
commerce in the Philippines" before one
may register a trademark, trade-name and
service mark under the law pertains to the
territorial jurisdiction of the Philippines and
is not only confined to a certain region,
province, city or barangay (McDonald’s
Corporation v. McJoy Fastfood
Corporation, GR No. 166115, February 2,
2007).
Registration is not necessary to file a case
for unfair competition (Sec. 168.1 & 2).
 competitor. goods or
What may NOT be registered (Sec. 133): services of
a. Immoral and deceptive matter; different
b. National flag or insignia; enterprises
which use the
c. Name, portrait or signature of living
sign under the
person or deceased President; control of the
d. Mark or trade name infringing another; registered
e. Mark constituting reproduction of owner of the
internationally well-known mark, collective
whether or not registered here; mark.
f. Mark identical with well-known mark,
on non-competing goods, registered Trademark Trade Name
here; Separate Existence
g. Mark likely to mislead the public; Has an existence
h. Mark consisting exclusively of signs distinct from the
generic for the goods or services; existence of the Attached to the natural
proprietor or juridical or juridical person who
i. Mark consisting exclusively of signs or person doing business does business and
of indications which are customary or and producing the produces the goods or
usual to designate goods or services goods or the services services
in everyday language or bona fide and offered by such person
established trade practices; or enterprise
j. Mark consisting of signs or of Purpose
indications used in trade; Designates the goods Identifies and
k. Mark consisting of shapes; or services offered by distinguishes an
l. Mark consisting of color alone, unless person or enterprise enterprise
defined by form; Registration
Must be registered in No need to register in
m. Contrary to public order or morality.
order to secure order to secure
protection for them protection for them
Note: Mere geographical names are Transferability
ordinarily regarded as common property, Change of ownership
and it is a general rule that the same May be transferred
of trade name must be
cannot be appropriated as the subject of with or without transfer
made with transfer of
of the business (Sec.
an exclusive trademark or trade name enterprise or part
149.1)
(Ang Si Heng v. Wellington Department thereof (Sec. 165.4)
Store, GR No. L-4531, January 10, 1953).
Trademark Goodwill
Trade Name Reputation and public
Right which protects
Any individual name or surname, firm name, confidence that a
the interests of
device or word used by manufacturers, business venture has
producers in their
earned through a
industrialists, merchants, and others to identify marks and in the
period of creditable
their businesses, vocations or occupations goodwill earned.
dealings.
(Converse Rubber Corp., v. Universal Rubber Trademark Label
Products, Inc., GR No. L-27425, L-30505, April Merely names what is
28, 1980). Designed to identify within the container or
the user or origin. package; may or may
Collective not be trademark.
Trademark Service Mark
Mark
Any visible Any visible Any visible Note: In practice, a word, a name or a phrase,
sign which is sign capable sign coupled with indicators of business
adopted and of designated as organization, such as “Inc.”, “Corp.” or “Co.”
used to distinguishing such in the
will NOT be registered as trademarks or
identify the the services of application for
source of an enterprise registration service marks.
origin of from the and capable
goods, and service of of Requirements to Get a Filing Date
which is other distinguishing On receipt of the application, an examiner
capable of enterprises. the origin or checks if the application includes the following
distinguishing any other requirements:
them from common  Request for a Philippine registration of
goods characteristic,
mark;
emanating including the
from a quality of  Identity of applicant;
 San Beda College of Law
2010 Centralized Bar Operations
 Indications sufficient to contact the
applicant; Exception: Expansion of Business Rule –
 Reproduction of the mark; and also to those goods or services that are
 List of goods or services related thereto specified in the certificate (Sec.
138).
Note: No filing date until the required fee is
paid.  All cases in which the use by the
Priority Right junior appropriator is likely to lead to a
An application for registration of mark filed in confusion of source as where prospective
the Philippines by a person who qualifies buyers would be misled into thinking that
under the reciprocity rule and who previously the complaining party has extended his
filed an application for registration of the same business into another field (Sta. Ana v.
mark in one of those countries shall be Maliwat, GR 23023, August 31, 1968).
considered as filed as of the day the
application was first filed in the foreign Declaration of Actual Use or Non-use
country(Sec. 131). Under Sec. 124.2 Under Sec. 145
When to File
Significance of Priority Right Within 3 years from the Within 1 year from the
A Philippine application filed by another filing date 5th anniversary of the
date of the registration
applicant after the priority date but earlier than of the mark
the foreign applicant’s actual filing may be Effect of Failure to File
refused registration if it is identical to the mark Application shall be Mark shall be removed
with a priority date (The Law on Trademark, refused of the mark from the Register by
Infringement and Unfair Competition, Agpalo, shall be removed from the office
2000ed). the register by the
Director
Conditions: What to File
1. The application must be filed within 6 Declaration of actual 1. declaration of actual
months from the date of earliest foreign use with evidence to use with evidence
that effect to that effect, or
application. Its certified copy passed within
2. show valid reasons
3 mos. from the date of filing in the based on the
Philippines. existence of
2. The following should concur: (a) the obstacles to such
foreign country / country of origin has use (declaration of
allowed the mark and (b) the country of non- use)
origin is the applicant’s domicile or has a
bona fide commercial establishment. Rights Conferred by a Trademark
3. The owner of the Philippine Registration 1. In case of
may not sue prior to the granting of the registered marks, in general:
registration, unless the mark is considered Exclusive right to restrain/ prohibit/ prevent
well-known as provided for the IP Code. third persons from using identical or
4. The priority right may not be based upon a similar signs for identical or similar goods
foreign application that has been or services (Sec. 147.1).
withdrawn, abandoned, or otherwise
disposed of in the country of origin (Rule 2. In case of a
202, Trademark Laws). registered well-known mark:
Exclusive right to restrain/ prohibit/ prevent
Certificate of Registration third persons from using identical or
It shall be a prima facie evidence of: similar signs even for dissimilar or
1. Validity of registration; unrelated goods or services, provided that
2. Registrant’s ownership of the mark; the use will indicate a connection between
and the goods and the owner of the mark and
3. The registrant’s exclusive right to use that the interest of the owner would likely
the same in connection with the goods or be damaged (Sec. 147.2).
services and those that are related thereto
(Sec. 138). Doctrine/ Principle of Related Goods or
Services
General Rule: The trademark protection There is infringement when there is use of
extends only to goods or services related to similar marks on goods that are so related that
those specified in the certificate. the public may be, or is actually deceived, and

21
misled that the goods come from the same
maker or manufacturer (Esso Standard
Eastern Inc. v. CA, 116 GRN 29971, August
31, 1982).
An EXCEPTION to this doctrine is the
additional right granted to a registered well-
known mark.
Well-Known Mark
A mark which a competent authority of the
Philippines has designated to be well-known
internationally and in the Philippines.
In determining whether a mark is well-known,
the knowledge of the relevant sector of the
public, rather than the public at large, including
knowledge in the Philippines which has been
obtained as a result of the promotion of the
mark, shall be pertinent.
Rights:
1. Right to be protected whether or not it is
registered in the Philippines;
2. If registered, extension of protection to
goods and services which are not similar
to those in respect of which the mark is
registered, provided that:
a. The use of the mark in relation to
unrelated or dissimilar goods or
services would indicate a connection
between those goods or services and
the owner of the mark; and
b. The interests of the owner of the
registered mark are likely to be
damaged by such use. (Exception to
the doctrine of related goods)
Nice Classification
This is the system by which trademark
applications are classified. There are 34
classes of goods and 8 classes of businesses
or services.

Determinants: Divisional Applications

1. The duration, An initial application may be divided by the
extent and geographical area of any use of applicant into two or more applications.
the mark; However, a single class shall not be
2. The market subdivided.
share in the Philippines and other
countries of the goods/services to which The divisional application must be submitted
the mark applies; within 2 months from the mailing date of the 1 st
3. The degree of action of the Bureau of Trademarks. A new
the inherent or acquired distinction of the application number shall be issued, and the
mark; priority right of the initial application shall be
4. The quality- preserved.
image or reputation acquired by the mark;
5. The extent to An existing registration may also be
which the mark has been registered in the subdivided upon request by oath and writing.
world; A new certificate shall be issued but a single
6. The class shall also not be subdivided (Sec. 129).
exclusivity of the registration attained
by the mark in the world; Doctrine of Secondary Meaning
7. The extent of While as a general rule, generic, indicative or
use of the mark in the world; descriptive marks ([j], [k], [l] of Sec. 123.1) are
8. The non-registrable, when such kind of mark has
exclusivity of use in the world; become distinctive, because of its long,
9. The continuous and exclusive use for 5 years, as
commercial value attributed to the mark in used in connection with the applicant's goods
the world; or services in commerce and in the mind of the
10. The record of public indicates a single source to consumers,
successful protection of the rights in the it may be registered (Sec. 123.2).
mark;
11. The outcome Doctrine of Dilution
of litigations dealing with the issue of Copying which, while not sufficiently confusing
whether the mark is well-known; and to divert sales in the short run, will tend to
12. The presence divert them in the long run by weakening the
or absence of identical or similar marks instantaneous favorable associations the
validly registered or used on other similar public makes with highly regarded products.
goods (Rule on Trademarks, Rule 102).
 San Beda College of Law
2010 Centralized Bar Operations
Opposition not, of itself, perfect a trademark. It is actual
Any person who believes that he would be use which perfects a trademark.
damaged by the registration of a mark may,
upon payment of the fee file an opposition to Non-use of a Mark When Excused
application. 1. If caused by
circumstances arising independently of the
Form: will of the owner. Lack of funds not
1. In writing excused.
2. Verified 2. A use which does
3. Specified grounds not alter its distinctive character though
4. Statement of facts the use is different from the form in which
it is registered.
Time to file: 30 days after publication of 3. Use of mark in
application; if unverified, the verified opposition connection with one or more of the
must be filed within 2 months from such filing goods/services belonging to the class in
BUT It may be extended for 1 month and which the mark is registered.
maximum period does not exceed 4 months 4. The use of a mark
from publication of application (Sec. 134). by a company related to the
applicant/registrant.
5. The use of a mark
by a person controlled by the registrant
Cancellation (Sec. 151) (Sec. 152).
Formalities: Upon petition, with due notice
and hearing Infringement (Sec. 155)
1. Reproduction or colorable imitation of a
Grounds: registered mark or a dominant feature
With 5 Years from thereof and application of such
At Any Time
Registration reproduction or imitation of labels, etc.,
Belief that the 1. Becoming the intended to be used in commerce, or use
registered mark has generic name for the in commerce of any reproduction or
damage or will goods or services colorable imitation of a registered mark or
damage the petitioner for which it is a dominant feature thereof in connection
registered;
with the sale or advertising of goods or
2. Abandonment;
3. Illegal or fraudulent services;
registration; 2. Likelihood to cause confusion or mistakes
4. Use by, or with the in the mind of the public or deceive
permission of the purchasers.
registrant so as to
misrepresent the Note: This is presumed in case of the use of
source of the goods an identical sign for identical goods or
or services in services.
connection with
which the mark is
used;  There is infringement of trademark when
5. Non-use for an the use of the mark involved would be
uninterrupted period likely to cause confusion or mistake in the
of 3 years without mind of the public or to deceive
legitimate reason purchasers as to the origin of the source
of the commodity (Fruit of the Loom, Inc.,
Note: Actual use may be done by substantial v. Court of Appeals and General
compliance (Sec. 152.2-4). Garments, Corp., GR No. L-32747).

Exempting circumstances: those arising  Action for infringement may be

independently of the will of the trademark
owner (Sec. 152.1), such as prohibition of sale
by government regulation, military coup, or
political changes that impede commerce.
Note: Registration is an administrative act
declaratory of a pre-existing right that does
maintained without proof of anything
more than the right to the exclusive use of
the registered mark or trade name and
that the defendant has violated it. No
allegation or proof of fraud or intent to
defraud is necessary (Compania General
de Tabacos v. Alhambra Cigar, Co., 33
Phil 485 (1916) cited by Agpalo Ruben.

23
 The Law on Trademark Infringement and
Unfair Competition 1st ed. Rex Bookstore; 5. Lack of
Manila, 200.p.172). consent on the part of the registered
owner or their assignee (The Law on
Factors to consider: Trademark, Infringement and Unfair
1. Value of the Goods Competition, Agpalo, 2000ed).
(Emerald Garment Manufacturing Corp.
vs. CA, GR 100098, December 29, 1995); 6. There shall be
2. Common Trade Channel no infringement of trademarks or trade
(Ang vs. Teodoro, GR 48226, December names of imported or sold drugs and
14, 1942); medicine as defined in Sec.72.1 of the Act
3. Type of Consumers as well as imported or sold off- patent
(Mead Johnson vs. McCullough, GR No. drugs and medicines (Sec. 14 RA 9502)
6217, December 26, 1911);
4. Necessary Expansion of Confusion of Goods / Confusion of
the Business (Sta. Ana vs. Maliwat, GR Services Business/ Origin
23023, August 31, 1968; Ang vs. Teodoro, Exists when one
GR No. 48226, December 14, 1992). party’s product or
service though
different from that of
Elements of Infringement A person’s goods or
another, is such as
1. Registration services are
might reasonably be
of trademark in IPO; and purchased as those of
assumed to originate
another and the poorer
from the latter and the
quality of the former
2. Trademark is public would then be
reflects adversely on
reproduced, copied, counterfeited or deceived into the belief
the latter’s reputation.
colorably imitated. that there is some
connection between
the parties, which in
Colorable Imitation
fact is absent.
Such similarity in form, content, words,
Confusingly similar
sound, meaning, special arrangement or Confusingly similar
marks are employed in
general appearance of the mark or trade marks are used on the
different or non-
name with that of the other mark or trade same kinds of
competing
goods/services.
name in their overall presentation or in goods/services.
their essential, substantive or distinctive
parts as would likely mislead or confuse
persons in the ordinary course of
purchasing the genuine article. Idem Sonams Rule
Two trademarks used on identical or related
Denotes such a “close ingenious imitation” goods may be confusingly similar if they have
as to be calculated to deceive ordinary similar sound or pronunciation.
persons, or such a resemblance to the
original as to deceive an ordinary Note: Similarity of sound or pronunciation and
purchaser, giving such attention as a spelling may be sufficient to make two marks
purchaser usually gives, and to cause him confusingly similar when applied to
to purchase the one supposing it to be the merchandise of the same descriptive
other (Etepha A.G. v. Director of Patents properties. Example: “Salonpas” and
and Westmont Pharmaceuticals, Inc., GR “Lionpas” both for medical plaster (Marvex
No. L-20635, March 31, 1966). Commercial Co. v. Petra Hawpia and Co., GR
19297, December 22, 1966).
3. It is used in
connection with the sale, or it is offering for Likelihood of confusion or mistake is greater
sale or advertising of goods, services or when identical or closely similar marks are
business or applied to labels, signs, used on non-competing but related and
wrappers, etc intended to be used in common household items because they are
connection with such goods, services or purchased by ordinary purchasers who usually
business. know them by their names or trademarks.

4. There is, in INFRINGEMENT OF NAME AND MARK

the use or application a likelihood of OF OWNERSHIP STAMP ON
confusion. CONTAINERS (R.A. No. 623 as amended
 San Beda College of Law
2010 Centralized Bar Operations
by R. A, No. 5700) January 13, 1930)
2. Lim Hoa vs. Dir of
General Rule: It is unlawful for any person, Patents (GR No. L- Hen Brand vs. Marka
without written consent of the manufacturer, 8072, October 31, Manok
bottler or seller who has registered the mark of 1956)
ownership to fill such bottles, boxes, kegs, 3. Sta. Ana vs. Maliwat
barrels or other containers so marked and (GR No. L-23023, Florman vs. Flormen
stamped, for the purpose of sale, dispose of, August 31, 1968)
or wantonly destroy the same, whether filled or 4. Philippine Nut Industry Planters Cocktail
not, to use the same for drinking vessels or vs. Std Brands (GR Peanuts vs. Phil
drain pipes, foundation pipes, for any other No.L-23035, July 31, Planters Cordial
purpose than that registered (Sec. 2, RA 623). 1975). Peanuts
5. Converse Rubber Corp
Universal Converse
The use of the same, without apparent vs. Universal Rubber
Deice vs. Converse
permission from the trademark owners thereof, (GR No. L-27906,
Rubber Corp.
shall be prima facie presumption that such January 8, 1997)
possession or use is unlawful (Sec 3, RA 623). Asia Brewery inc.’s
label of BEER PALE
6. Asia Brewery , Inc., vs.
Exceptions: PILSEN and its use of
Court of Appeals (GR
the steinie bottle vs.
1. Use of the bottles as No. 103543, July 5,
SMB’s PALE PILSEN
containers for sisi, bagoong, patis and 1993)
with Rectangular Malt
similar native products (Sec 6, RA 623); and Hops Design
and
7. Amigo Manufacturing
2. Persons in whose favor the Inc., vs. Cluelett
containers were sold (Distilleria Peabody Co., Inc. (GR Gold Toe vs. Gold Top
Washington, Inc. v. LA Tondeña Distillers, No. 139300, March 14,
GR 120961, October 2, 1997). 2001)
8. Societe Des Produits
The general rule is that in the sale of Master Roast and
Nestle, S.A. vs. Court
beverages, it already includes the containers, Master Blend vs.
of Appeals (GR No.
Flavor Master
unless there is an agreement to the contrary 112012, April 4, 2001)
(Law on Trademarks, Agpalo, R., 2000ed). 9. McDonalds
Corporation and
The exemption under Sec. 6, RA 623 covers McGeorge Food
not only criminal but also civil liability (Twin Industries, Inc. vs. L.C. Big Mac vs. Big Mak
Big Mak Burger, Inc.
Ace Holding Corp. v. CA, GR No. 123248, (GR No. 143993,
October 16, 1997). August 18, 2003)
DOMINANCY TEST VS. HOLISTIC TEST 10. McDonalds
Corporation vs.
Dominancy Test Holistic/ Totality Test MacJoy Fastfood
McDonalds vs. MacJoy
Focuses on the Mandates that the Corporation (GR No.
similarity of the main, entirety of the marks in 166115, February 2,
essential, dominant, or question must be 2007)
prevalent features of a considered in
mark. determining confusing Holistic Test
similarity.
Case Issue
Exact duplication or
imitation is not 1. Emerald Garment
The use of “LEE” in
necessary. Mfg Corp. vs. CA
the manufacture of
(GR No. 100098,
pants
This test is December 29, 1995)
incorporated in the 2. Bristol Myers vs. Dir
Intellectual Property of Patents (GR No. Bioferin vs. Bufferin
Code and is L-21587, May 19, both for medicine
controlling. 1966)
3. American
Examples of Cases Explaining Tests: Cyanamide Co. vs. Sulmetine vs. Sulmet
Case Issue Dir of Patents (GR both for veterinary
1. E. Spinner and Co. vs. The use of “Wigan” for No.L-23954, April medicine
Neuss Hesslein Corp. khaki 29, 1977)
(G.R No. 31380, 4. Mead Johnson vs. Alaska for milk and

25
 NVJ Van Dorp (GR
Alacta for powdered
No. L-17501, April
half-skim milk
27, 2963)
Remedies for Infringement
1. Action for damages;
General Rule: Only those acts of
infringement committed from registration
onwards may be sued upon.
Exception: In case of infringement of a
well-known mark.
2. Injunction;
3. Impounding of sales invoices and
other documents;
4. Double damages in case of actual
intent to defraud or to misled (Sec. 156);
5. Court order for the disposal or
destruction of the infringing goods (Sec.
157);
6. Criminal action;
7. Administrative sanctions
 In any suit for infringement, the owner
of the registered mark shall not be entitled
to recover damages or profits unless the
acts have been committed with knowledge
that such imitation is likely to cause
confusion, or to cause mistake or to
deceive (Sec. 158).
 The infringement case can and should
proceed independently from the
cancellation case with the Bureau so as to
afford the owner of the certificates of
registration redress and injunctive writs
(Shangri-La International Hotel Mgt., Inc.,
v. Court of Appeals, GR No. 111580. June
21, 2001).
 Any foreign national, who qualifies
under the principle on reciprocity and does
not engage in business in the Philippines,
whether or not it is licensed to do business
in the Philippines, may bring civil or
administrative action for:
a. Opposition
b. Cancellation
c. Infringement
d. Unfair competition
e. False designation of origin or false
description (Sec. 160).
Limitations of Action for Infringement
(Sec.159)
1. Right of Prior User – Registered
mark shall be without effect against any
person who, in good faith, before the filing
or priority date, was using the mark for
purposes of his business.
2. Relief against Printer – Injunction
against future printing against an innocent
infringer who is engaged solely in the
business of printing the mark.
3. Relief against newspaper –
Injunction against the presentation of
advertising matter in future issues of the
newspaper, magazine or in electronic
communications in case the infringement
complained of is contained in or is part of
paid advertisement in such materials.
Unfair Competition
The employment by a person of deception or
any other means contrary to good faith by
which he passes off the goods manufactured
by him or in which he deals, or his business or
services, for those of another person who has
established goodwill in the goods such person
manufactures or deals in, or his business or
services, or who shall commit any acts
calculated to produce said result, whether or
not registered mark is employed (Section
168.2).
In particular, the following shall be deemed
guilty of unfair competition:
a. Any person who is selling his goods
and gives them the general appearance of
goods of another manufacturer or dealer
or who otherwise clothes the goods with
such appearance as shall deceive the
public and defraud another of his
legitimate trade, or any subsequent vendor
of such good or any agent of any vendor
engaged in selling such goods with a like
purpose;
b. Any person who by any artifice, or
device or who employs any other means
calculated to induce the false belief that
such person is offering the services of
another who has identified such services
in the mind of the public or;
c. Any person who shall make any false
statement in the course of trade or who
shall commit any other act contrary to
good faith of a nature calculated to
discredit the goods, business or services
of another (Section 168.3).
Test: Whether certain goods have been
intentionally clothed with an appearance which
is likely to deceive the ordinary purchaser
exercising ordinary care, and not whether a
certain limited class of purchasers with special
knowledge not possessed by the ordinary
purchaser could avoid mistake by the exercise
of this special knowledge (U.S. v. Manuel, 7
Phil 221, GR 1999, December 27, 1906).
 San Beda College of Law
2010 Centralized Bar Operations
Infringement of
Unfair Competition
is so because the crime of unfair competition
Trademark punishable under Article 189 of the Revised
Definition Penal Code is a public crime. It is essentially
The passing off of an act against the State and it is the latter
Unauthorized use of a
one’s goods as those which principally stands as the injured party.
trademark
of another
The complainant’s capacity to sue in such
Fraudulent Intent
case becomes immaterial (Melbarose Sasot,
Fraudulent intent is Fraudulent intent is
unnecessary essential et al., vs. People of the Philippines, GR No.
Registration 143193, June 29, 2005).
Prior registration of the
Registration is not a While foreign corporations may have the
trademark is a
prerequisite to an
prerequisite to the capacity to sue for infringement irrespective of
action.
action lack of business activity in the Philippines but
Scope the question of whether they have an
Limited scope Wider scope exclusive right over the symbol as to justify
Goods Involved issuance of an injunctive writ will depend on
Same class of goods Different classes of actual use of their trademarks in the
or services must be goods or services may
Philippines. To be entitled to an injunctive
involved be involved
writ, a foreign corporation must show that
there exists a right to be protected and that the
Note: An action for infringement of a mark
fact against which injunction is directed are
cannot be brought at the same time with an
violative of such right (Philip Morris, et al., vs.
action for unfair competition because the
Fortune Tobacco Corporation, GR No.
element of fraud and deceit, which is essential
158589, June 27, 2006).
to the latter, is absent in the former (Clarke v.
Manila Candy Co., 36 Phil. 100, GR 10487,
Sale is not an indispensable element in an
January 23, 1917).
action for infringement or unfair competition
(Pro Line Sports v. CA, GR 118192, October
A foreign corporation not engaged in and
23, 1997).
licensed to do business in the Philippines may
maintain an action for unfair competition. This

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 Distinctions on Copyright Patent and Mark
Copyright
It is that system of legal protection
an author enjoys in the form of
expression of ideas (World
Intellectual Property Organization
[WIPO]).
An intangible, incorporeal right
granted by statute to the author or
originator of certain literary or
artistic productions, whereby he is
invested, for a limited period, with
the sole exclusive privilege of
multiplying copies of the same and
publishing and selling them
(Black’s Law Dictionary).
1. To stimulate artistic creativity for
the general public good; and
2. To promote the progress of
science and useful arts.
1. Originality; and
2. Expression
See Table on Duration of
Copyright
From the moment of creation
(fixation)
1. Duration/temporal – The owner is limited by the terms of their property rights.
2. Territorial/geographical – The owner is protected by the law of the country where the violation is committed.
3. For violations in another country, resort must be made to the law of the other country, subject to the principle
of reciprocity in Sec. 3.
(Notes on Selected Commercial Laws A Guide for Bar Reviewees, Tristan Catindig, 2003ed)
Patent
Definition
An exclusive right acquired over
an invention, to sell, use and make
the same whether for commerce or
industry.
Refers to either the grant of rights,
OR the instrument (sometimes
called letters patent) containing the
grant, giving an inventor a
monopoly on the inventor’s
invention for a limited period.
Purposes
1. Not only to reward the individual,
but the advancement of the arts
and sciences;
2. To add to the sum of useful
knowledge; and
3. To encourage dissemination of
information concerning
discoveries and inventions.
Requirements
Any technical solution of a problem
in any field of human activity which
is:
1. New or novel;
2. Inventive; and
3. Industrially applicable
(Sec. 21)
Term
20 years from the filing date of the
application (Sec. 54).
How Created/ Acquired
First-to-file system
General Limitations
Mark
Any visible sign capable of
distinguishing the goods of an
enterprise (trademark) or the
services of an enterprise (service
mark), and includes a stamped or
marked container of goods (Sec.
121.1).
1. To indicate origin or ownership
of articles to which they are
attached;
2. To guarantee that those articles
come up to a certain kind of
quality;
3. To advertise articles they
symbolize;
4. To assure the public that they
are producing genuine article;
and
5. To protect the manufacturer
against substitution and sale of
an inferior and different article.
1. Upon application:
Must be registrable (Sec.
123.1):
a. Absolutely non-registrable –
(a-i) & (m) of Sec. 123.1
b. Qualifiedly registrable – (j),
(k), (l) of Sec. 123.1; Doctrine
of secondary meaning (Sec.
123.2)
2. Within 3 years from application:
 Declaration and
evidence of actual use (Sec.
124.2)
10 years from the filing date of the
application, provided the registrant
shall file a declaration of actual
use within a year from the 5th
anniversary of registration date
(Sec. 145), and renewable for
another 10 years (Sec. 146).
Valid registration
 San Beda College of Law
2010 Centralized Bar Operations

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