INTELLECTUAL

PROPERTY
LAW
INTELLECTUAL PROPERTY OFFICE
The Intellectual Property Office of the Philippines is the lead
agency responsible for handling the registration and conflict
resolution of intellectual property rights. It was created by virtue
of Republic Act No. 8293 or the Intellectual Property Code of the
Philippines, which took effect on January 1, 1998 under the
presidency of Fidel V. Ramos.
INTELLECTUAL PROPERTIES IN A
GLANCE
Copyright Patent Trademark
New, useful and
Goods
Subject matter Literary, scientific industrially
manufactured or
of the right or artistic work applicable
produced
inventions
Where right is to
National Library IPO IPO
be registered
Protection starts Creation Application Issuance of CoR
Lifetime of the
author +
Duration of right Generally 50 20 years 10 years
years after death
of the author
PATENTS
PATENT
A patent is a grant issued by the government giving, an inventor,
designer or maker, the right to exclude others from making,
using or selling his invention, design or utility model within the
country for a specific term, in exchange of his patentable
disclosure.

An invention is a technical solution of a problem in any field of

human activity.
KINDS OF PATENTS AND APPLICABLE
REQUISITES
1. Invention Patent: Novelty, Inventive Step, Industrial
Applicability;
2. Design Patent: Novelty and Ornamentality;
3. Utility Model: Novelty and Industrial Applicability.
ELEMENTS OF A PATENT
1. Novelty: An invention shall not be considered new if it forms
part of a prior art.

Prior Art:
a. Everything which has been made available to the public
anywhere in the world before application
b. Already covered by an earlier application;

Non-prejudicial disclosure: Disclosure within 12 months prior

to application, of the information in the application itself made
by the:
a. Inventor
b. The patent office (IPO)
c. Third party who obtained the information directly or
indirectly from the inventor
ELEMENTS OF A PATENT
2. Inventive Step: - An invention involves an inventive step if,
having regard to prior art, 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.

3. Industrial Applicability: An invention that can be

produced and used in any industry shall be industrially
applicable.
NON-PATENTABLE INVENTIONS
The following shall be excluded from patent protection:
1. Discoveries, scientific theories and mathematical methods;
2. Schemes, rules and methods of performing mental acts,
playing games or doing business, and programs for
computers;
3. Methods for treatment of the human or animal body by
surgery or therapy and diagnostic methods practiced on the
human or animal body. This provision shall not apply to
products and composition for use in any of these methods;
4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision
shall not apply to micro-organisms and non-biological and
microbiological processes.
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality.
QUESTION
Which of the following cannot be patented?
A. Micro-organisms and non-biological and microbiological
processes
B. An improvement in mascots used in restaurants by the use of
a device to move facial parts of the mascot
C. Aesthetic creations
D. Anything which is not contrary to public order or morality
QUESTION
Which of the following cannot be patented?
A. Micro-organisms and non-biological and microbiological
processes
B. An improvement in mascots used in restaurants by the use of
a device to move facial parts of the mascot
C. Aesthetic creations
D. Anything which is not contrary to public order or morality
APPLICATION PROCESS
1. Filing date requirements
2. Payment of fees
3. Formal examination
4. Search of Prior Art
5. 1st publication
a. within 18 months from filing date
b. After publication, any interested party may inspect documents
c. Publication may be prohibited or restricted if it would be
prejudicial to the national security and interests
d. After publication, applicant acquires rights of a patentee – i.e.,
to exclude anyone from using the invention (if they have actual
knowledge or written notice)
e. But no action can be filed until the grant of the patent
(prescription 4 years from commission)
6. Substantive Examination (which must be done within 6 months
from first publication)
7. Publication of Patent
APPLICATION PROCESS
Contents of Application:
1. A request for the grant of a patent;
2. A description of the invention (sufficiently clear and
complete for it to be carried out by a person skilled in the
art);
3. Drawings necessary for the understanding of the invention;
4. One or more claims (define the matter for which protection
is sought; clear and concise); and
5. An abstract (concise summary of the disclosure of the
invention as contained in the description, claims, and
drawings in preferably not more than 150 words)
APPLICATION PROCESS
First to File Rule: if two or more persons separately made the
same invention, priority is given to one who filed first.

Right of Priority/Priority Claim: - Application made locally

when an earlier application is filed abroad. Process:
1. A CLAIM of priority based on an earlier filing date abroad.
2. A local application is filed within 12 months from priority date
(application date of foreign application for patent)
3. Certified copy of priority application and English translation
thereof within 6 months from filing date.

Priority date: date of filing of FOREIGN application for the same

invention.
APPLICATION PROCESS
Actual Inventor; Remedies:
1. Application still pending – file an action in court to prove
that he is the actual inventor within 1 year from first
publication. Once declared that he is the true inventor:
a. Request that the application be refused
b. File a new application but filing date will retroact to
original filing date
2. Patent already granted – within 1 year from publication
of the patent, he can either:
a. Be substituted as patentee; or
b. Seek cancellation of patent.
APPLICATION PROCESS
Unity of Invention – one application = one invention (group of
inventions forming a single general inventive concept)

Divisional Application - may be allowed if there is more than

one invention, either voluntarily or within 4 months from
recommendation of the Director.
APPLICATION PROCESS
Grounds for Cancellation of Patent:
1. Invention is not new (no novelty)
2. The patent did not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any
person skilled in the art.
3. Contrary to public order or morality
PATENT OWNERSHIP
The patent belongs to the inventor, his heirs or assigns.

If two or more persons jointly make an invention, the patent

belongs to them jointly.
COMMISSIONED WORK
The person who commissions the work shall own the
patent, unless otherwise provided in the contract.
EMPLOYEE INVENTOR
In case the employee made the invention in the course of his
employment contract, the patent shall belong to:
1. The employee, if the inventive activity is not a part of his
regular duties even if the employee uses the time, facilities
and materials of the employer.
2. The employer, if the invention is the result of the
performance of his regularly-assigned duties, unless
there is an agreement, express or implied, to the contrary.
QUESTION
Which of the following statements regarding patent ownership is
incorrect?
A. The person who commissioned an invention will own the
patent
B. When two or more persons jointly make an invention, the
patent belongs to them jointly
C. The patent belongs to the inventor, his heirs or assigns
D. Even if the contract provides otherwise, the patent shall
belong to the person who commissioned the work
QUESTION
Which of the following statements regarding patent ownership is
incorrect?
A. The person who commissioned an invention will own the
patent
B. When two or more persons jointly make an invention, the
patent belongs to them jointly
C. The patent belongs to the inventor, his heirs or assigns
D. Even if the contract provides otherwise, the patent
shall belong to the person who commissioned the
work
QUESTION
Juan Dela Cruz commissioned Pedro to invent a machine of
novelty and industrial applicability. Who would own the patent
and the machine?
Patent Machine
A Juan Juan
B Juan Pedro
C Pedro Pedro
D Pedro Juan
QUESTION
Juan Dela Cruz commissioned Pedro to invent a machine of
novelty and industrial applicability. Who would own the patent
and the machine?
Patent Machine
A Juan Juan
B Juan Pedro
C Pedro Pedro
D Pedro Juan
TERM OF PROTECTION
The term of a patent shall be twenty (20) years from the filing
date of the application.
RIGHTS CONFERRED BY PATENT
A patent shall confer on its owner the following exclusive
rights:
1. Where the subject matter of a patent is a product, to
restrain, prohibit and prevent any unauthorized person or
entity from making, using, offering for sale, selling or
importing that product;
2. Where the subject matter of a patent is a 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.
3. The right to assign, or transfer by succession the patent,
and
4. The right to conclude licensing contracts for the same.
LIMITATION ON PATENT RIGHTS
The owner of a patent has no right to prevent third parties
from performing, without his authorization, acts mentioned
above in the following circumstances:
1. Using a patented product which has been put on the
market in the Philippines by the owner of the product, or
with his express consent, insofar as such use is performed
after that product has been so put on the said market;
2. Where the act is done privately and on a non-commercial
scale or for a non-commercial purpose: Provided, That it
does not significantly prejudice the economic interests of the
owner of the patent;
3. Where the act consists of making or using that relate to the
subject matter of the patented invention exclusively for the
purpose of experiments;
LIMITATION ON PATENT RIGHTS
4. Where the act consists of the preparation for individual
cases, in a pharmacy or by a medical professional, of a
medicine in accordance with a medical prescription or acts
concerning the medicine so prepared;
5. Where the invention is used in any ship, vessel, aircraft, or
land vehicle of any other country entering the territory
of the Philippines temporarily or accidentally: Provided,
that such invention is used exclusively for the needs of the
ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines.
LIMITATION ON PATENT RIGHTS
PRIOR USER
• in good faith was
• using the invention or has undertaken serious preparations to
use the invention in his enterprise or business,
• before the filing date or priority date of the application
• shall have the right to continue the use

TRANSFER: only with the business itself

USE BY THE GOVERNMENT
A Government agency or third person authorized by the
Government may exploit the invention even without agreement
of the patent owner where:
1. The public interest, in particular, national security,
nutrition, health or the development of other sectors,
as determined by the appropriate agency of the government,
so requires; or
2. A judicial or administrative body has determined that the
manner of exploitation, by the owner of the patent or his
licensee is anti-competitive.
INFRINGEMENT
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 constitutes patent
infringement.
INFRINGEMENT
LITERAL INFRINGEMENT
1. Exactness Rule – the item that is being sold, made or used
conforms exactly to the patent claim of another.

2. Addition Rule - one makes, uses or sells an item that has all
the elements of the patent claim of another plus other
elements.
INFRINGEMENT
DOCTRINE OF EQUIVALENTS - with some modification and
change, but SUBSTANTIALLY THE SAME:
1. Function
2. Way/Means/Principle or Mode of Operation
3. Result

Applying the Functions-Means-Results Test.

CASE
SMITH KLINE BECKMAN CORP (SKBC) vs. CA and TRYCO
PHARMA): SKBC was granted a patent for a compound that is
claimed to have an active ingredient in fighting various parasites
in certain types of domestic and livestock animals which they
claim includes a new compound named methyl 5 propylthio-2-
benzimidazole carbamate.

Tryco Pharma sells veterinary products including IMPREGON

which contains ALBENDAZOLE as an active ingredient which
fights against parasites in animals.

SKBC sued Tryco Pharma for Infringement and Unfair

Competition claiming that its patent covers or includes the
substance Albendazole.
CASE
HELD: The doctrine of equivalents provides that an infringement
also takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some
modification and change, performs substantially the same function
in substantially the same way to achieve substantially the same
result.
Yet again, a scrutiny of petitioners evidence fails to convince this
Court of the substantial sameness of petitioners patented
compound and Albendazole. While both compounds have the effect
of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as
the patented compound, even though it performs the same function
and achieves the same result. In other words, the principle or
mode of operation must be the same or substantially the same.
CASE
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.

Apart from the fact that Albendazole is an anthelmintic agent like

methyl 5 propylthio-2-benzimidazole carbamate, nothing more is
asserted and accordingly substantiated regarding the method or
means by which Albendazole weeds out parasites in animals,
thus giving no information on whether that method is
substantially the same as the manner by which petitioners
compound works.
REMEDIES OF A PATENTEE
1. Civil action to recover damages (not exceeding 3 times the
actual damages) plus attorney’s fees and other expenses of
litigation or reasonable royalty.
2. Injunction for the protection of rights.
3. The court may, in its discretion, order that the infringing
goods, materials and implements predominantly used in the
infringement be disposed of outside the channels of
commerce or destroyed, without compensation.
4. Criminal Action, if repetitive, where the penalty can be:
Imprisonment of 6 mos to 3 years; Fine of 100,000 to
300,000 fine; or both.

Prescription: 3 years for the criminal action; 4 years for the

other remedies.
VOLUNTARY LICENSING
Mandatory Provisions:
1. Jurisdiction of disputes – Philippines; Venue – principal place
of business of patentee
2. Continuous access to improvements in techniques and
processes
3. If it includes Arbitration – venue: PH or other neutral
countries, and the following laws are applicable:
a. the Procedure of Arbitration of the Arbitration Law of the
Philippines or
b. the Arbitration Rules of the United Nations Commission on
International Trade Law (UNCITRAL) or
c. the Rules of Conciliation and Arbitration of the
International Chamber of Commerce (ICC)
4. Taxes – borne by the licensor
COMPULSORY LICENSING
Issuance of a license by the Director General of the IPO to
exploit a patented invention without the permission of the
patent holder, either by manufacture or through parallel
importation.

Grounds:
1. National emergency/circumstances of extreme urgency
2. Public interest so requires
3. The use of the patent is anti-competitive
4. Public non-commercial use without satisfactory reasons
5. Invention is not being worked in the PH on a commercial
scale without satisfactory reasons (importation counts as
working or using)
6. Demand for patented drugs and medicine is not being met to
an adequate extent and or reasonable terms, as determined
by DOH.
TRADEMARKS
DEFINITION OF TERMS
“Mark” means 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.

"Collective mark" means any visible sign designated as such in

the application for registration and capable of distinguishing the
origin or any other common characteristic, including the quality
of goods or services of different enterprises which use the sign
under the control of the registered owner of the collective mark.

“Trade name” means the name or designation identifying or

distinguishing an enterprise.
HOW RIGHTS ARE ACQUIRED
The rights in a mark shall be acquired through registration.
MARKS WHICH CANNOT BE
REGISTERED
1. Consists of immoral, deceptive or scandalous matter, or
matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs,
or national symbols, or bring them into contempt or
disrepute;
CASE
FREDCO MANUFACTURING CORPORATION vs. HARVARD
UNIVERSITY:
Petitioner FMC filed a petition for cancellation of Harvard’s
Certificate of Registration alleging that:
1. Such COR was issued on November 25, 1993 for the mark
“Harvard Veritas Shield Symbol” for decals, tote bags, serving
trays, sweatshirts, t-shirts, hats and flying discs.
2. The mark “Harvard” for t-shirts, polo shirts, sandos, briefs,
jackets and slacks was first used in the Philippines on Jan. 2,
1982 by New York Garments Manufacturing & Export Co., Inc.
(New York Garments), Fredco’s predecessor-in-interest.
3. On Jan. 24, 1985, New York Garments filed for trademark
registration of the mark "Harvard" and such matured into a
registration and a Certificate of Registration was issued on
Dec. 12, 1988, with a 20-year term subject to renewal at the
end of the term.
CASE
Harvard University, on the other hand, alleged that it is the lawful
owner of the name and mark "Harvard" in numerous countries
worldwide, including the Philippines.

The name and mark "Harvard" was adopted in 1639 as the name of
Harvard College of Cambridge, Massachusetts, U.S.A. The name and
mark "Harvard" was allegedly used in commerce as early as 1872.

Harvard University alleged that in March 2002, it discovered, through

its international trademark watch program, Fredco’s website
www.harvard-usa.com. The website’s main page shows an oblong
logo bearing the mark "Harvard Jeans USA®," "Established 1936,"
and "Cambridge, Massachusetts." On April 20, 2004, Harvard
University filed an administrative complaint against FMC before the
IPO for trademark infringement and/or unfair competition with
damages.
CASE
HELD: In favor of Harvard. Fredco’s registration of the mark
"Harvard" and its identification of origin as "Cambridge,
Massachusetts" falsely suggest that Fredco or its goods are
connected with Harvard University, which uses the same mark
"Harvard" and is also located in Cambridge, Massachusetts. This
can easily be gleaned from the oblong logo of Fredco that it
attaches to its clothing line:

“Fredco’s registration of the mark "Harvard" should not have

been allowed because Section 4(a) of R.A. No. 166 prohibits the
registration of a mark "which may disparage or falsely suggest
a connection with persons, living or dead, institutions,
beliefs x x x."
CASE
Fredco’s use of the mark "Harvard," coupled with its claimed
origin in Cambridge, Massachusetts, obviously suggests a
false connection with Harvard University. On this ground
alone, Fredco’s registration of the mark "Harvard" should have
been disallowed.

Indisputably, Fredco does not have any affiliation or connection

with Harvard University, or even with Cambridge, Massachusetts.
Fredco or its predecessor New York Garments was not
established in 1936, or in the U.S.A. as indicated by Fredco in its
oblong logo. Fredco offered no explanation to the Court of
Appeals or to the IPO why it used the mark "Harvard" on its
oblong logo with the words "Cambridge, Massachusetts,"
"Established in 1936," and "USA."
MARKS WHICH CANNOT BE
REGISTERED
2. Consists of the flag or coat of arms or other insignia of
the Philippines or any of its political subdivisions, or of
any foreign nation, or any simulation thereof;
3. Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of
the Philippines, during the life of his widow, if any, except by
written consent of the widow;
4. Is identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing or priority
date, in respect of:
a. The same goods or services, or
b. Closely related goods or services, or
c. If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
CASE
MARVEX COMMERCIAL CO., INC. VS. PETRA HAWPIA and
Co. and Director of Patents (1966)
Petra Hawpia sought the registration of its trademark “LIONPAS”
used on medical plaster which was opposed by Marvex claiming
that it would violate its right to and interest in the registration of
“SALONPAS” used on another medical plaster.

ISSUE: WON LIONPAS is confusingly similar to SALONPAS

HELD: Yes, in sound. Both these words have the same suffix,
"PAS", which is used to denote a plaster that adheres to the body
with curative powers. "Pas, being merely descriptive, furnishes no
indication of the origin of the article and therefore is open for
appropriation by anyone.
CASE
Two letters of "SALONPAS"
letter a and the letter s. Be
are pronounced, the sound
where goods are advertised
of especial significance.
are missing in "LIONPAS"; the first
that as it may, when the two words
effects are confusingly similar. And
over the radio, similarity in sound is

"SALONPAS" and "LIONPAS", when spoken, sound very much

alike. Similarity of sound is sufficient ground for this Court to rule
that the two marks are confusingly similar when applied to
merchandise of the same descriptive properties.
CASE
ESSO STANDARD EASTERN, INC. vs. CA and UNITED
CIGARETTE CORPORATION (1982)
Petitioner ESSO Standard Eastern Inc. (ESSI) is engaged in the
sale of petroleum products which are identified by its trademark
ESSO.

Private Respondent United Cigarette Corporation (UCG), on the

other hand, is engaged in the manufacture and sale of cigarettes
when it acquired La Oriental Tobacco Corporation including the
trademark ESSO on its cigarettes.

ESSI filed an infringement case against UCG.

ISSUE: WON the use of ESSO by UCG in its cigarettes infringes

on the trademark of ESSI?
CASE
HELD: No. As to whether trademark infringement exists depends
for the most part upon whether or not the goods are
so related that the public may be, or is actually, deceived
and misled that they came from the same maker or
manufacturer. For non-competing goods may be those which,
though they are not in actual competition, are so related to each
other that it might reasonably be assumed that they originate
from one manufacturer. Non-competing goods may also be
those which, being entirely unrelated, could not reasonably
be assumed to have a common source. in the former case of
related goods, confusion of business could arise out of the use of
similar marks; in the latter case of non-related goods, it could not
CASE
In the situation before us, the goods are obviously different
from each other with "absolutely no iota of similitude" as
stressed in respondent court's judgment. They are so foreign to
each other as to make it unlikely that purchasers would think
that petitioner is the manufacturer of respondent's goods.
The mere fact that one person has adopted and used a trademark on
his goods does not prevent the adoption and use of the same
trademark by others on unrelated articles of a different kind.

The public knows too well that petitioner deals solely with petroleum
products that there is no possibility that cigarettes with ESSO brand
will be associated with whatever good name petitioner's ESSO
trademark may have generated. Although petitioner's products are
numerous, they are of the same class or line of merchandise which
are non-competing with respondent's product of cigarettes, which as
pointed out in the appealed judgment is beyond petitioner's "zone of
potential or natural and logical expansion"
CASE
Aside from the above, the Court also held that there is no
infringement on the following grounds:
1. Goods involved are non-competitive and non-related is the
appellate court's finding that they flow through different
channels of trade.
2. Considering the general appearances of each mark as a whole,
the possibility of any confusion is unlikely.
CASE
ETEPHA, A.G. vs. DIRECTOR OF PATENTS and WESTMONT
PHARMACEUTICALS, INC.

Respondent Westmont sought the registration of its cough syrup

“ATUSSIN” which was objected to by Petitioner Etepha claiming that
it will damage its registered trademark “PERTUSSIN”

ISSUE: WON “Atussin” is likely to cause confusion with/infringes

with the use of “Pertussin”?
CASE
HELD: No. Likelihood of confusion will not happen:
▪ Respondent's label underscores the trademark Atussin in bold,
block letters horizontally written. In petitioner's, on the other
hand, Pertussin is printed diagonally upwards and across in
semiscript style with flourishes and with only the first letter "P"
capitalized. Each label plainly shows the source of the
medicine. Printed prominently along the left, bottom and right
edges of petitioner's label are indications of the use. The two
labels are entirely different in colors, contents,
arrangement of words thereon, sizes, shapes and
general appearance. The contrasts in pictorial effects and
appeals to the eye is so pronounced that the label of one
cannot be mistaken for that of the other, not even by persons
unfamiliar with the two trademarks.
CASE
▪ As we take up Pertussin and Atussin once again, we cannot
escape notice of the fact that the two words do not sound
alike — when pronounced. There is not much phonetic
similarity between the two.
CASE
▪ In the solution of a trademark infringement problem, regard too
should be given to the class of persons who buy the particular
product and the circumstances ordinarily attendant to its acquisition.
The medicinal preparation clothed with the trademarks in question,
are unlike articles of everyday use which may be freely obtained by
anyone, anytime, anywhere. Petitioner's and respondent's products
are to be dispensed upon medical prescription. The respective
labels say so. An intending buyer must have to go first to a licensed
doctor of medicine; he receives instructions as to what to purchase;
he reads the doctor's prescription; he knows what he is to buy. He is
not of the incautious, unwary, unobservant or unsuspecting type;
he examines the product sold to him; he checks to find out whether it
conforms to the medical prescription. The common trade channel is
the pharmacy or the drugstore. Similarly, the pharmacist or druggist
verifies the medicine sold. The margin of error in the acquisition of
one for the other is quite remote.
MARKS WHICH CANNOT BE
REGISTERED
5. Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent
authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it
is registered here, as being already the mark of a person
other than the applicant for registration, and used for
identical or similar goods or services: Provided, That in
determining whether a mark is well-known, account shall be
taken of the knowledge of the relevant sector of the public,
rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the
promotion of the mark;
MARKS WHICH CANNOT BE
REGISTERED
6. Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in
accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or
services which are not similar to those with respect to which
registration is applied for: Provided, That use of the mark in
relation to those goods or services would indicate a
connection between those goods or services, and the owner
of the registered mark: Provided further, That the interests of
the owner of the registered mark are likely to be damaged by
such use;
7. Is likely to mislead the public, particularly as to the
nature, quality, characteristics or geographical origin of the
goods or services;
8. Consists exclusively of signs that are generic for the
goods or services that they seek to identify;
MARKS WHICH CANNOT BE
REGISTERED
9. Consists exclusively of signs or of indications that have
become customary or usual to designate the goods or
services in everyday language or in bona fide and established
trade practice;
10. Consists exclusively of signs or of indications that may serve
in trade to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time or
production of the goods or rendering of the services,
or other characteristics of the goods or services;
11. Consists of shapes that may be necessitated by technical
factors or by the nature of the goods themselves or
factors that affect their intrinsic value;
12. Consists of color alone, unless defined by a given form; or
13. Is contrary to public order or morality.
MARKS WHICH CANNOT BE
REGISTERED
EXCEPTION TO GENERIC/DESCRIPTIVE TERMS:

DOCTRINE OF SECONDARY MEANING: In Philippine Nut

Industry, Inc. v. Standard Brands, Inc., the doctrine of secondary
meaning was elaborated in the following terms: “xxx a word or
phrase originally incapable of exclusive appropriation
with reference to an article on the market, because
geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively by
one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his
product."
DURATION OF PROTECTION AND
RIGHTS
The rights to a trademark shall be 10 years from registration.

Renewal: the rights to a trademark in a certificate of

registration may be renewed for periods of 10 years at its
expiration upon payment of the prescribed fee and upon filing a
request at any time within 6 months before expiration or within 6
months after such exploration upon payment of an additional fee.
QUESTION
The duration of protection for a trade mark.
A. 10 years and non-renewable
B. 10 years and renewable for another 10 years twice
C. 10 years and renewable for another 10 years thrice
D. 10 years and renewable for another 10 years in perpetuity
QUESTION
The duration of protection for a trade mark.
A. 10 years and non-renewable
B. 10 years and renewable for another 10 years twice
C. 10 years and renewable for another 10 years thrice
D. 10 years and renewable for another 10 years in
perpetuity
DECLARATION OF ACTUAL USE
The registrant shall file a declaration of actual use and evidence
of actual use, or shall show valid reasons based on the existence
of obstacles to such use:
1. Within 3 years from application
2. Within 1 year from the 5th anniversary of the registration
3. Within 1 year from renewal of the registration.

Otherwise, the application will be deemed abandoned or the

registration cancelled.
RIGHTS CONFERRED BY
REGISTRATION
The owner of a registered mark shall have the exclusive right to
prevent all third parties not having the owner’s consent from using
in the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of
confusion. In case of the use, of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.
RIGHTS OF AN OWNER OF A WELL-
KNOWN MARK
The exclusive right of the owner of a well-known mark which is
registered in the Philippines, shall extend to goods and services
which are not similar to those in respect of which the mark is
registered: Provided, That use of that mark in relation to those goods
or services would indicate a connection between those goods or
services and the owner of the registered mark: Provided, further, That
the interests of the owner of the registered mark are likely to be
damaged by such use.
RIGHTS OF AN OWNER OF A WELL-
KNOWN MARK
Under Philippine law, a trade name of a national of a State that is a
party to the Paris Convention, whether or not the trade name forms
part of a trademark, is protected "without the obligation of filing or
registration.” (FREDCO vs. HARDVARD)

"Harvard" is the trade name of the world famous Harvard University,

and it is also a trademark of Harvard University. Under Article 8 of
the Paris Convention, as well as Section 37 of R.A. No. 166,
Harvard University is entitled to protection in the Philippines
of its trade name "Harvard" even without registration of such
trade name in the Philippines. This means that no educational entity
in the Philippines can use the trade name "Harvard" without the
consent of Harvard University. Likewise, no entity in the
Philippines can claim, expressly or impliedly through the use
of the name and mark "Harvard," that its products or services
are authorized, approved, or licensed by, or sourced from,
Harvard University without the latter’s consent.
CANCELLATION OF REGISTRATION
A petition to cancel registration of a mark under this act may be
filed with the Bureau of Legal Affairs by any person who believes
that he is or will be damaged by the registration of a mark.

Period to File: within 5 years from the date of the registration

of the mark. Except in the following cases:
1. If the registered owner of the mark without legitimate reason
fails to use the mark within the Philippines during an
uninterrupted period of three (3) years or longer.
2. If the registered mark becomes the generic name for the
goods or services, or a portion thereof, for which it is
registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the IP Law, or if the
registered mark is being used by, or with the permission of,
the registrant so as to misrepresent the source of the goods
or services on or in connection with which the mark is used.
CANCELLATION OF REGISTRATION
3. In any action to enforce the rights to a registered mark –
the court or the administrative agency vested with jurisdiction
to hear and adjudicate any action to enforce the rights to a
registered mark shall likewise exercise jurisdiction to
determine whether the registration of said mark may be
cancelled in accordance with the Intellectual Property Law.
TRADEMARK INFRINGMENT
Any person who shall, without the consent of the owner of
the registered mark:
1. Use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark or the same container
or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or
services including other preparatory steps necessary to
carry out the sale of any goods or services on or in
connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or
TRADEMARK INFRINGMENT
2. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitation to
labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon
or in connection with the sale, offering for sale, distribution,
or advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause
mistake, or to deceive.
TRADEMARK INFRINGMENT
HOLISTIC OR TOTALITY TEST: considers the entirety of the
marks in question.

DOMINANCY TEST: focus is on prevalent or dominant

features. Confusing similarity is to be determined not only on
the visual but also on the aural and connotative comparisons and
overall impressions between the two trademarks..
TRADEMARK INFRINGMENT
CASE: DEL MONTE CORPORATION and PHILIPPINE
PACKING CORPORATION vs. CA and SUNSHINE SAUCE
MANUFACTURING INDUSTRIES

Petitioner Del Monte and PhilPack (authorized to manufacture

and sell Del Monte products) sued respondent Sunshine Sauce
for infringement and unfair competition, among others, for using
a logo similar to del monte.

ISSUE: WON Sunshine Sauce is guilty of infringement for the

use of a logo similar to that of Del Monte?

HELD: Yes. Totality Test was applied.

TRADEMARK INFRINGMENT
It has been held that in making purchases, the consumer must
depend upon his recollection of the appearance of the product which
he intends to purchase. The buyer having in mind the
mark/label of the respondent must rely upon his memory of
the petitioner's mark. Unlike the judge who has ample time to
minutely examine the labels in question in the comfort of his sala,
the ordinary shopper does not enjoy the same opportunity.

A number of courts have held that to determine whether a

trademark has been infringed, we must consider the mark
as a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it.
The court therefore should be guided by its first impression, for a
buyer acts quickly and is governed by a casual glance, the value of
which may be dissipated as soon as the court assumes to analyze
carefully the respective features of the mark.
TRADEMARK INFRINGMENT
If the labels were analyzed together it is not difficult to see that
the Sunshine label is a colorable imitation of the Del
Monte trademark. The predominant colors used in the Del
Monte label are green and red-orange, the same with Sunshine.
The word "catsup" in both bottles is printed in white and the
style of the print/letter is the same. Although the logo of
Sunshine is not a tomato, the figure nevertheless approximates
that of a tomato.
TRADEMARK INFRINGMENT
CASE: MCDONALD’S CORPORATION vs. LC BIGMAK
BURGER, INC.

Petitioner McDonald’s is the owner of a family of marks including

that for “Big Mac” sued respondent LC BigMak for infringement
and unfair competition for using “Big Mak”.

ISSUE: WON the use of “Big Mak” can cause confusion that will
amount to infringement?

HELD: Yes. Dominancy Test applied.

TRADEMARK INFRINGMENT
Respondents assert that their "Big Mak" hamburgers
cater mainly to the low-income group while petitioners' "Big Mac"
hamburgers cater to the middle and upper income groups. Even
if this is true, the likelihood of confusion of business remains,
since the low-income group might be led to believe that
the "Big Mak" hamburgers are the low-end hamburgers
marketed by petitioners. After all, petitioners have the
exclusive right to use the "Big Mac" mark. On the other
hand, respondents would benefit by associating their low-
end hamburgers, through the use of the "Big Mak" mark,
with petitioners' high-end "Big Mac" hamburgers, leading
to likelihood of confusion in the identity of business.
TRADEMARK INFRINGMENT
Respondents use their "Big Mak" mark on hamburgers, the same
food product that petitioners' sell with the use of their registered
mark "Big Mac." Whether a hamburger is single, double or triple-
decker, and whether wrapped in plastic or styrofoam, it remains
the same hamburger food product. Even respondents' use of
the "Big Mak" mark on non-hamburger food products cannot
excuse their infringement of petitioners' registered mark,
otherwise registered marks will lose their protection under the
law.
TRADEMARK INFRINGMENT
Applying the dominancy test, the Court finds that respondents' use
of the "Big Mak" mark results in likelihood of confusion. First, "Big
Mak" sounds exactly the same as "Big Mac." Second, the first
word in "Big Mak" is exactly the same as the first word in
"Big Mac." Third, the first two letters in "Mak" are the same as
the first two letters in "Mac." Fourth, the last letter in "Mak"
while a "k" sounds the same as "c" when the word "Mak" is
pronounced. Fifth, in Filipino, the letter "k" replaces "c" in
spelling, thus "Caloocan" is spelled "Kalookan."

In short, aurally the two marks are the same, with the first word
of both marks phonetically the same, and the second word
of both marks also phonetically the same. Visually, the two marks
have both two words and six letters, with the first word
of both marks having the same letters and the second word having
the same first two letters. In spelling, considering the Filipino
language, even the last letters of both marks are the same.
TRADEMARK INFRINGMENT
CASE: SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE
PHILIPPINES, INC. vs. CA and CFC CORPORATION
Respondent CFC Corporation sought the registration of the trademark
“FLAVOR MASTER” for instant coffee which was opposed by petitioners
Nestle as being confusingly similar to its trademark for coffee and coffee
products “MASTER ROAST” and “MASTER BLEND.”

ISSUE: WON there is confusing similarity?

HELD: Dominancy Test to be applied. The determination of whether

two trademarks are indeed confusingly similar must be taken
from the viewpoint of the ordinary purchasers who are, in
general, undiscerningly rash in buying the more common and
less expensive household products like coffee, and are therefore
less inclined to closely examine specific details of similarities and
dissimilarities between competing products.
TRADEMARK INFRINGMENT
It must be emphasized that the products bearing the trademarks
in question are "inexpensive and common" household items
bought off the shelf by "undiscerningly rash" purchasers. As
such, if the ordinary purchaser is "undiscerningly rash", then he
would not have the time nor the inclination to make a keen and
perceptive examination of the physical discrepancies in the
trademarks of the products in order to exercise his choice.

It is the observation of the BPTTT that much of the dominance

which the word MASTER has acquired through Opposer’s
advertising schemes is carried over when the same is
incorporated into respondent-applicant’s trademark FLAVOR
MASTER.
TRADEMARK INFRINGMENT
the term "MASTER" is a suggestive term brought about
by the advertising scheme of Nestle.

This is evident from the advertising scheme adopted by Nestle in

promoting its coffee products. In this case, Nestle has, over time,
promoted its products as "coffee perfection worthy of masters
like Robert Jaworski and Ric Puno Jr.”

The term "MASTER", therefore, has acquired a certain

connotation to mean the coffee products MASTER ROAST and
MASTER BLEND produced by Nestle. As such, the use by CFC of
the term "MASTER" in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or even
to deceive the ordinary purchasers.
REMEDIES OF REGISTERED OWNER
1. Recover damages which shall be based on the reasonable profit
which the complaining party would have made, had the defendant
not infringed his rights, or the profit which the defendant actually
made out of the infringement, or in the event such measure of
damages cannot be readily ascertained with reasonable certainty,
then the court may award as damages a reasonable percentage
based upon the amount of gross sales of the defendant or the value
of the services in connection with which the mark or trade name was
used in the infringement of the rights of the complaining party.

In cases where actual intent to mislead the public or to defraud the

complainant is shown, in the discretion of the court, the damages
may be doubled.
2. Seek injunction.
3. Seek the destruction of infringing materials without compensation
of any sort or disposed outside of commerce in such a manner as to
avoid any harm caused to the right holder
UNFAIR COMPETITION
The following shall be deemed guilty of unfair competition:
1. Any person, who in selling his goods shall give them the
general appearance of goods of another manufacturer
or dealer, either as to the goods themselves or in the
wrapping of the packages in which they are contained, or the
devices or words thereon, or in any feature of their
appearance, which would be likely to influence purchasers
to believe that the goods offered are those of a
manufacturer or dealer, other than the actual 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 goods
or any agent of any vendor engaged in selling such goods with
a like purpose;
UNFAIR COMPETITION
2. 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
3. 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.

Penalty: Imprisonment: 2 to 5 years; Fine: 50,000 to 200,000

UNFAIR COMPETITION VS.
TRADEMARK INFRINGEMENT
TRADEMARK INFRINGEMENT
Registration of the mark is a pre-
requisite
No fraudulent intent is required
Likelihood of confusion
UNFAIR COMPETITION
No registration necessary
Fraudulent intent is necessary
Sale is required
Passing-off element

Unfair competition is broader than trademark infringement and includes

passing off goods with or without trademark infringement. Trademark
infringement is a form of unfair competition. There can be trademark
infringement without unfair competition as when the infringer discloses
on the labels containing the mark that he manufactures the goods, thus
preventing the public from being deceived that the goods originate from
the trademark owner.
UNFAIR COMPETITION
MCDONALD’S CASE, LC BIG MAK IS GUILTY OF UNFAIR
COMPETITION:
1. The dissimilarities in the packaging are minor compared to
the stark similarities in the words that give respondents'
"Big Mak" hamburgers the general appearance of petitioners'
"Big Mac" hamburgers.
2. the defendant gives "his goods the general appearance of
goods of another manufacturer." Respondents' goods are
hamburgers which are also the goods of petitioners.
3. no notice to the public that the "Big Mak" hamburgers are
products of "L.C. Big Mak Burger, Inc."
COPYRIGHT
COPYRIGHT
The right of literary property as recognized and sanctioned by
positive law. An intangible, incorporeal right granted by statute to
the author or originator of certain literary or artistic productions,
whereby he is invested, for a specific period, with the sole and
exclusive privilege of multiplying copies of the same and
publishing and selling them. (Black’s Law Dictionary)

In the Philippines, the owner of a work subject of a copyright is

granted exclusive economic and moral rights.
ORIGINAL WORKS
Literary and artistic works, hereinafter referred to as "works", are
original intellectual creations in the literary and artistic domain
protected from the moment of their creation and shall include in
particular:
1. Books, pamphlets, articles and other writings;
2. Periodicals and newspapers;
3. Lectures, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writing or other material
form;
4. Letters;
5. Dramatic or dramatico-musical compositions; choreographic
works or entertainment in dumb shows;
6. Musical compositions, with or without words;
7. Works of drawing, painting, architecture, sculpture,
engraving, lithography or other works of art; models or
designs for works of art;
ORIGINAL WORKS
8. Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art;
9. Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science;
10. Drawings or plastic works of a scientific or technical
character;
11. Photographic works including works produced by a process
analogous to photography; lantern slides;
12. Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or any
process for making audio-visual recordings;
13. Pictorial illustrations and advertisements;
14. Computer programs; and
15. Other literary, scholarly, scientific and artistic works
WHEN PROTECTION STARTS
Protection commences from the moment of creation, irrespective
of the mode or form expression, as well as the content, quality or
purpose.
DERIVATIVE WORKS
The following are derivative works which shall also be protected
by copyright:
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.

The above shall be protected as a new works, but shall not

affect the force of any subsisting copyright upon the original
works employed or any part thereof, or be construed to imply
any right to such use of the original works, or to secure or
extend copyright in such original works.
RIGHT OF PUBLISHER
In addition to the right to publish granted by the author, his
heirs or assigns, the publisher shall have a copy right consisting
merely of the right of reproduction of the typographical
arrangement of the published edition of the work.

“Reproduction" is the making of one (1) or more copies of a

work or a sound recording in any manner or form.
WORKS NOT PROTECTED
No protection shall extend to:
1. Any idea
2. Procedure
3. System method or operation,
4. Concept
5. Principle
6. Discovery or
7. Mere data as such, even if they are expressed, explained,
illustrated or embodied in a work
8. News of the day and other miscellaneous facts having the
character of mere items of press information; or
9. Any official text of a legislative, administrative or legal nature,
as well as any official translation thereof
WORKS NOT PROTECTED
CASE: JOAQUIN and BJ PRODUCTIONS INC. vs. DRILON

Petitioner BJPI is the owner of a copyright certificate over the a

dating show entitled Rhoda and Me, filed a complaint against
private respondent Gabriel Zosa demanding the discontinuance
of the show It’s a Date which is said to have the same format as
Rhoda and Me.

ISSUE: WON the format of the show is protected by copyright?

HELD: No. The format or mechanics of a television show is not

included in the list of protected works in the Intellectual Property
Law. For this reason, the protection afforded by the law cannot
be extended to cover them.
WORKS NOT PROTECTED
The copyright does not extend to the general concept or format
of its dating game show. Accordingly, by the very nature of the
subject of petitioner BJPI's copyright, the investigating
prosecutor should have the opportunity to compare the
videotapes of the two shows.
WORKS OF THE GOVERNMENT
A “work of the Government of the Philippines" is a work
created by an officer or employee of the Philippine Government
or any of its subdivisions and instrumentalities, including
government-owned or controlled corporations as part of his
regularly prescribed official duties.

No copyright shall subsist in any work of the Government of

the Philippines. However, prior approval of the government
agency or office wherein the work is created shall 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.
WORKS OF THE GOVERNMENT
No prior approval or conditions shall be required for the use
of any purpose of:
1. Statutes
2. Rules and regulations, and
3. 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.

The Author of speeches, lectures, sermons, addresses, and

dissertations mentioned in the preceding paragraphs shall have
the exclusive right of making a collection of his works.
WORKS OF THE GOVERNMENT
However, the Government is not precluded from receiving
and holding copyrights transferred to it by assignment,
bequest or otherwise; nor shall publication or republication
by the government in a public document of any work in which
copy right is subsisting be taken to cause any abridgment or
annulment of the copyright or to authorize any use or
appropriation of such work without the consent of the copyright
owners.
ECONOMIC RIGHTS
Consist of the exclusive right to carry out, authorize or prevent the
following acts:
1. Reproduction of the work or substantial portion of the work;
2. Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
3. The first public distribution of the original and each copy of
the work by sale or other forms of transfer of ownership;
4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording,
a computer program, a compilation of data and other materials
or a musical work in graphic form, irrespective of the ownership
of the original or the copy which is the subject of the rental;
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
MORAL RIGHTS
The author of a work shall, independently of the economic rights
or the grant of an assignment or license with respect to such
right, have the right:
1. To require that the authorship of the works be attributed to
him, in particular, the right that his name, as far as
practicable, be indicated in a prominent way on the copies,
and in connection with the public use of his work;
2. To make any alterations of his work prior to, or to withhold
it from publication;
3. To object to any distortion, mutilation or other modification
of, or other derogatory action in relation to, his work which
would be prejudicial to his honor or reputation; and
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.
OWNERSHIP OF COPYRIGHT
Ownership of a copyright shall be governed by the following rules:

Work Owner
Original Author
Works of Joint The co-authors shall be the original owners of the
authorship copyright and in the absence of agreement, their
rights shall be governed by the rules on co-
ownership.

If, however, a work of joint authorship consists of

parts that can be used separately and the author of
each part can be identified, the author of each part
shall be the original owner of the copyright in the
part that he has created.
OWNERSHIP OF COPYRIGHT
Work Owner
Works during The employee, if the creation of the object of
employment copyright is not a part of his regular duties even if
the employee uses the time, facilities and materials
of the employer.

The employer, if the work is the result of the

performance of his regularly-assigned duties, unless
there is an agreement, express or implied, to the
contrary
Commissioned The person who so commissioned the work shall
work have ownership of work, but the copyright thereto
shall remain with the creator, unless there is a
written stipulation to the contrary.
OWNERSHIP OF COPYRIGHT
Work Owner
Audiovisual work The producer, the author of the scenario, the
composer of the music, the film director, and the
author of the work so adapted. However, subject to
contrary or other stipulations among the creators,
the producers shall exercise the copyright to an
extent required for the exhibition of the work in any
manner, except for the right to collect performing
license fees for the performance of musical
compositions, with or without words, which are
incorporated into the work.
Letters Writer
OWNERSHIP OF COPYRIGHT
Work Owner
Anonymous and Publishers shall be deemed to represent the authors
Pseudonymous of articles and other writings published without the
Works names of the authors or under pseudonyms, unless
the contrary appears, or the pseudonyms or
adopted name leaves no doubts as to the author’s
identity, or if the author of the anonymous works
discloses his identity.
QUESTION
Rose commissioned Jack to draw a portrait of her wearing a
special necklace. Jack did so and was paid P85,000. In this case,
who shall have ownership of the copyright and the painting?
Copyright Painting
A Jack Jack
B Rose Rose
C Rose Jack
D Jack Rose
QUESTION
Rose commissioned Jack to draw a portrait of her wearing a
special necklace. Jack did so and was paid P85,000. In this case,
who shall have ownership of the copyright and the painting?
Copyright Painting
A Jack Jack
B Rose Rose
C Rose Jack
D Jack Rose
LIMITATIONS ON COPYRIGHT
The following acts shall not constitute infringement of copyright:
1. The reproduction or distribution of published articles or materials in
a specialized format exclusively for the use of the blind,
visually and reading-impaired persons, if such copies and
distribution shall be made on a non-profit basis and shall indicate
the copyright owner and the date of the original publication.
2. The recitation or performance of a work, once it has been
lawfully made accessible to the public, if done privately and
free of charge or if made strictly for a charitable or religious
institution or society;
3. The making of quotations from a published work if they are
compatible with fair use and only to the extent justified for the
purpose, including quotations from newspaper articles and
periodicals in the form of press summaries, if the source and the
name of the author, if appearing on the work, are mentioned;
LIMITATIONS ON COPYRIGHT
4. The 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 of the
same nature, which are delivered in public if such use is for
information purposes and has not been expressly reserved, if
the source is clearly indicated;
5. The 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;
6. The inclusion of a work in a publication, broadcast, or other
communication to the public, sound recording or film, if such
inclusion is made by way of illustration for teaching purposes
and is compatible with fair use, if the source and of the name of
the author, if appearing in the work, are mentioned;
LIMITATIONS ON COPYRIGHT
7. The recording made in schools, universities, or educational
institutions of a work included in a broadcast for the use of such
schools, universities or educational institutions, provided such
recording must be deleted within a reasonable period after they
were first broadcast, Provided, further, That such recording may not
be made from audiovisual works which are part of the general
cinema repertoire of feature films except for brief excerpts of the
work;
8. The making of ephemeral recordings by a broadcasting
organization by means of its own facilities and for use in its own
broadcast;
9. The use made of a work by or under the direction or control of
the Government, by the National Library or by educational,
scientific or professional institutions where such use is in the public
interest and is compatible with fair use;
LIMITATIONS ON COPYRIGHT
10. The public performance or the communication to the public of a
work, in a place where no admission fee is charged in respect of
such public performance or communication, by a club or institution
for charitable or educational purpose only, whose aim is not
profit making, subject to such other limitations as may be provided
in the Regulations;
11.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: Provided, That either the
work has been published, or, that original or the copy displayed has
been sold, given away or otherwise transferred to another
person by the author or his successor in title; and
12. Any use made of a work for the purpose of any judicial
proceedings or for the giving of professional advice by a legal
practitioner.
FAIR USE OF COPYRIGHT
The fair use of a copyrighted work for criticism, comment, news
reporting, teaching including limited number of copies for the
classroom use, scholarship, research, and similar purposes is not
an infringement of copyright.
FAIR USE OF COPYRIGHT
In determining whether the use made of a work in any particular
case is fair use, the factors to be considered shall include:
1. The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
education purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
4. The effect of the use upon the potential market for or value
of the copyrighted work.

The fact that a work is unpublished shall not by itself bar a

finding of fair use if such finding is made upon consideration of
all the above factors.
FAIR USE OF COPYRIGHT
Reproduction of Published Work: is allowed without the authorization
of the author if the following are present:
1. The private reproduction of a published work is for a single copy
only;
2. The reproduction is made by a natural person
3. The purpose of reproduction is exclusively for research and
private study.

The permission granted shall not extend to the reproduction of:

1. A work of architecture in form of building or other construction;
2. An entire book, or a substantial past thereof, or of a musical work
in which graphics form by reprographic means;
3. A compilation of data and other materials;
4. A computer program except as provided in the next slide*; and
5. Any work in cases where reproduction would unreasonably conflict
with a normal exploitation of the work or would otherwise
unreasonably prejudice the legitimate interests of the author.
FAIR USE OF COPYRIGHT
*Exception: the reproduction in one (1) back-up copy or
adaptation of a computer program shall be permitted,
without the authorization of the author of, or other owner of
copyright in, a computer program, by the lawful owner of that
computer program, if it is necessary for:
1. The use of the computer program in conjunction with a
computer for the purpose, and to the extent, for which
the computer program has been obtained; and
2. Archival purposes, and, for the replacement of the
lawfully owned copy of the computer program in the
event that the lawfully obtained copy of the computer
program is lost, destroyed or rendered unusable
FAIR USE OF COPYRIGHT
Reproduction by Libraries: any library or archive whose activities are
not for profit may, without the authorization of the author of
copyright owner, make a single copy of the work by reprographic
reproduction:
1. Where the work by reason of its fragile character or rarity cannot
be lent to user in its original form;
2. Where the works are isolated articles contained in composite
works or brief portions of other published works and the
reproduction is necessary to supply them; when this is considered
expedient, to person requesting their loan for purposes of research
or study instead of lending the volumes or booklets which contain
them; and
3. Where the making of such limited copies is in order to preserve
and, if necessary in the event that is lost, destroyed or rendered
unusable, replace a copy, or to replace, in the permanent
collection of another similar library or achieve, a copy which has
been lost, destroyed or rendered unusable and copies are not
available with the publisher.
TERM OF PROTECTION
General During the life of the author and for fifty years after
his death. This will likewise apply to posthumous
work.
Joint Authorship The economic rights shall be protected during the
life of the last surviving author and for fifty (50)
years after his death.

Anonymous or Fifty (50) years from the date on which the work
Pseudonymous works was first lawfully published: Provided, That where,
before the expiration of the said period, the author's
identity is revealed or is no longer in doubt, the
general terms of protection shall apply, as the case
may be: Provided, further, That such works if not
published before shall be protected for fifty (50)
years counted from the making of the work.
TERM OF PROTECTION
Works of applied art
Photographic works
Audio-visual works including
those produced by process
analogous to photography or
any process for making audio-
visual recordings
The protection shall be for a period of twenty-
five (25) years from the date of making.
The protection shall be for fifty (50) years from
publication of the work and, if unpublished,
fifty (50) years from the making.
Fifty (50) years from date of publication and, if
unpublished, from the date of making.
TERM OF PROTECTION
Performers and producers For performances not incorporated in recordings,
of sound recordings fifty (50) years from the end of the year in which
the performance took place; and

For sound or image and sound recordings and for

performances incorporated therein, fifty (50) years
from the end of the year in which the recording
took place.
In case of broadcasts Twenty (20) years from the date the broadcast took
place. The extended term shall be applied only to
old works with subsisting protection under the prior
law.
TERM OF PROTECTION
CALCULATION OF TERM: The term of protection subsequent to
the death of the author shall run from the date of his death or
of publication, but such terms shall always be deemed to begin
on the first day of January of the year following the event
which gave rise to them.
TERM OF PROTECTION
Juan Dela Cruz authored a book on June 15, 2018. He died on
June 30, 2018. Until when is the term of protection?
A. Jan. 1, 2019
B. June 30, 2068
C. January 1, 2069
D. June 30, 2069
TERM OF PROTECTION
Juan Dela Cruz authored a book on June 15, 2018. He died on
June 30, 2018. Until when is the term of the moral and economic
rights over the copyright?
A. Jan. 1, 2019
B. June 30, 2068
C. January 1, 2069
D. June 30, 2069
END