 Trade name – means the name or designation identifying or

Intellectual property rights in general distinguishing an enterprise.

Rationale behind the Intellectual Property Code  Copyright – is confined to literary and artistic works which are
 The State shall protect and secure the exclusive rights of original intellectual creations in the literary and artistic domain
scientists, investors, artists and other gifted citizens to their protected from the moment of their creation.
intellectual property and creations, particularly when beneficial to
the people, for such period as may be provided by law. (Sec. 13,  Patentable inventions – refer to any technical solution of a
Art. XIV of the Constitution) problem in any field of human activity which is new, involves an
 The State recognizes that an effective intellectual and industrial inventive step and is industrially applicable.
property system is vital to the development of domestic and


creative activity.
Ownership is acquired by occupation and by intellectual creation
Patents
(Art. 712, Civil Code)
 No person shall be deprived of life, liberty, or property, nor shall Patentable inventions
any person be denied the equal protection of laws. (Sec. 1, Art. III
of the Constitution) Criteria for patentability
Any technical solution of a problem in any field of human activity which
Declaration of state policy is:
 An effective intellectual and industrial property system is vital to  New;
the development of domestic and creative activity.  Involves an inventive step; and is
 The state shall protect and secure the exclusive rights of  Industrially applicable
scientists, inventors, artists and other gifted citizens to their
intellectual property and creations. It may be, or may relate to, a product, or process, or an improvement
 The use of intellectual property bears a social function. of any of the foregoing. (Sec. 21, IPC)
 The State shall promote the diffusion of knowledge and
information for the promotion of national development and
progress and the common good.
Novelty
An invention shall not be considered new if it forms part of a prior art.
 The policy of the State is to streamline administrative procedures
(Sec. 23, IPC)
of registering patents, trademarks and copyright. (Sec. 2, IPC)

International conventions and reciprocity Prior art

1. Everything which has been made available to the public anywhere
Any person who is a national or who is domiciled or has a real and
in the world, before the filing date or the priority date of the
effective industrial establishment in a country which is a party to any
application claiming the invention;
convention, treaty or agreement relating to intellectual property rights
2. The whole contents of an application for a patent, utility model, or
or the repression of unfair competition shall be entitled to benefits to
industrial design registration, with a filing or priority date that is
the extent necessary to give effect to any provision of such convention,
earlier than the filing or priority date of the application; and
treaty or reciprocal law. (Sec. 3, IPC)
3. The applicant or the inventor identified in both applications are
different. (Sec. 24, IPC)
Definitions
Intellectual property rights
1. Copyright and Related Rights;
Non-prejudicial disclosure
The disclosure of information contained in the application during the 12
2. Trademarks and Service Marks;
months preceding the filing date or the priority date of the application
3. Geographic Indications;
shall not prejudice the applicant on the ground of lack of novelty if such
4. Industrial Designs;
disclosure was made by:
5. Patents;
1. The inventor – any person who, at the filing date of application,
6. Layout-Designs (Topographies) of Integrated Circuits; and
had the right to the patent;
7. Protection of Undisclosed Information (n, TRIPS).
2. A patent office and the information was contained:
a. in another application filed by the inventor and should not
Technology transfer arrangements
have been disclosed by the office; or
Contracts or agreements involving the transfer of systematic
b. in an application filed without the knowledge or consent of
knowledge for:
the inventor by a third party which obtained the information
- the manufacture of a product;
directly or indirectly from the inventor; or
- the application of a process; or
c. a third party which obtained the information directly or
- rendering of a service including management contracts; and
indirectly from the inventor. (Sec. 25, IPC)
- the transfer, assignment or licensing of all forms of intellectual
property rights.
Note: For industrial design, period is 6 months.
Office – refers to the Intellectual Property Office created by this Act.
IPO Gazette – refers to the gazette published by the Office under this Inventive step
Act. (Sec. 4, IPC)  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
Difference between Copyrights, Trademarks and 
application claiming the invention.
In the case of drugs and medicines, there is no inventive step if
Patents the invention results from:
Patents , copyrights, and trademarks are completely distinct and a. the mere discovery of a new form or new property of a
separate from one another and cannot be interchanged with one known substance which does not result in the enhancement
another, and the protection afforded by one cannot be used of the known efficacy of that substance; or
interchangeably to cover items or works that exclusively pertain to the b. the mere discovery of any new property or new use for a
others. known substance; or
c. the mere use of a known process unless such known
 Trademark – is any visible sign capable of distinguishing the process results in a new product that employs at least one
goods (trademark) or services (service mark) of an enterprise and new reactant. (Sec. 26, IPC)
shall include a stamped or marked container of goods.
Industrial applicability
An invention that can be produced and used in any industry shall be unless such known process results in a new product that employs
industrially applicable. (Sec. 27, IPC) at least one new reactant.

Term of patent For the purpose of this clause, salts, esters, ethers, polymorphs,
20 years from the filing date of the application. (Sec. 54, IPC)
metabolites, pure form, particle size, isomers, mixtures of
isomers, complexes, combinations, and other derivatives of a
Distinctions known substance shall be considered to be the same substance,
Invention Utility model Industrial unless they differ significantly in properties with regard to efficacy;
design
Elements 1. New; 1. New; New or 1. Schemes, rules and methods of performing mental acts,
2. Inventive 2. Industrial ornamental. playing games or doing business, and programs for
step; applicability. computers;
3. Industrial
applicability 2. Methods for treatment of the human or animal body by
. surgery or therapy and diagnostic methods practiced on the
Term of 20 years without 7 years without 5 years human or animal body. This provision shall not apply to products
protection renewal. renewal. with 2 five and composition for use in any of these methods;
from date year term
of filing renewals. 3. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision
Vargas vs. Chua shall not apply to micro-organisms and non-biological and
microbiological processes.
To entitle a man to a patent, the invention must be new to the
world. The plow upon which Vargas’ contention is based, does not Provisions under this subsection shall not preclude Congress to
constitute an invention and consequently, the privilege invoked by him consider the enactment of a law providing sui generis protection
is untenable and the patent acquired by him should be declared of plant varieties and animal breeds and a system of community
ineffective. intellectual rights protection:

The Court is firmly convinced that Vargas is not entitled to the 4. Aesthetic creations; and
protection he seeks for the simple reason that his plow does not
constitute an invention in the legal sense, and because, according to 5. Anything which is contrary to public order or morality. (Sec.
the evidence, the same type of plows had been manufactured in this 22, IPC)
country and had been in use in many parts of the Philippine
archipelago, especially in Iloilo, long before he obtained his last patent. Ownership of a Patent
Manzano vs. CA
Right to a patent
The element of novelty is an essential requisite of the The right to a patent belongs to the:
patentability of an invention or discovery. - Inventor;
If a device or process has been known or used by others prior to its - His heirs; or
invention or discovery by the applicant, an application for a patent - Assigns.
therefore should be denied; and if the application has been granted,
the court, in a judicial proceeding in which the validity of the patent is When 2 or more persons have jointly made an invention, the right
drawn in question, will hold it void and ineffective. to a patent shall belong to them jointly. (Sec. 28, IPC)

Burden of proof of proving lack of novelty

The burden of proving want of novelty is on him who avers it and the
First-to-file rule
If two 2 or more persons have made the invention separately and
burden is a heavy one which is met only by clear and satisfactory proof
independently of each other:
which overcomes every reasonable doubt. Hence, a utility model shall
- the right to the patent shall belong to the person who filed an
not be considered "new" if before the application for a patent, it has
application for such invention; or
been publicly known or publicly used or if it is substantially similar to
- where two or more applications are filed for the same invention, to
any other utility model so known, used or described within the country.
the applicant who has the earliest filing date or, the earliest
priority date. (Sec. 29, IPC)
Aguas vs. De Leon

Inventive improvement Inventions Created Pursuant to a Commission

The records disclose that de Leon's process is an improvement of the Pursuant to a commission:
old process of tile making. The tiles produced from de Leon's process - The person who commissions the work shall own the patent,
are suitable for construction and ornamentation, which previously had unless otherwise provided in the contract.
not been achieved by tiles made out of the old process of tile making.
Pursuant to employment contract:
The respondent's improvement is indeed inventive and goes beyond In case the employee made the invention in the course of his
the exercise of mechanical skill. He has introduced a new kind of tile employment contract, the patent shall belong to:
for a new purpose. He has improved the old method of making tiles a. The employee, if the inventive activity is not a part of his regular
and pre-cast articles which were not satisfactory because of an duties even if the employee uses the time, facilities and materials
intolerable number of breakages, especially if deep engravings are of the employer.
made on the tile. He has overcome the problem of producing b. The employer, if the invention is the result of the performance of
decorative tiles with deep engraving, but with sufficient durability. his regularly-assigned duties, unless there is an agreement,
express or implied, to the contrary. (Sec. 30, IPC)
Non-Patentable inventions
1. Discoveries, scientific theories and mathematical methods, Right of Priority
and in the case of drugs and medicines, the mere discovery of a An application for patent filed by any person who has previously
new form or new property of a known substance which does not applied for the same invention in another country which by treaty,
result in the enhancement of the known efficacy of that convention, or law affords similar privileges to Filipino citizens, shall be
substance, or the mere discovery of any new property or new use considered as filed as of the date of filing the foreign application:
for a known substance, or the mere use of a known process
Requisites: educational purposes and such other activities directly related to
a. the local application expressly claims priority; such scientific or educational experimental use.
b. it is filed within 12 months from the date the earliest foreign
application was filed; and 4. In the case of drugs and medicines:
c. a certified copy of the foreign application together with an
English translation is filed within 6 months from the date of filing - Where the act includes testing, using, making or selling the
in the Philippines. (Sec. 31, IPC) invention including any data related thereto, solely for purposes
reasonably related to the development and submission of
Grounds for cancellation of a Patent information and issuance of approvals by government
regulatory agencies required under any law of the Philippines or
1. That what is claimed as the invention is not new or patentable;
of another country that regulates the manufacture, construction,
2. That the patent does not disclose the invention in a manner
use or sale of any product.
sufficiently clear and complete for it to be carried out by any
person skilled in the art; or
- Provided, That, in order to protect the data submitted by the
3. That the patent is contrary to public order or morality.
original patent holder from unfair commercial use provided in
Article 39.3 of the Agreement on Trade-Related Aspects of
d. Where the grounds for cancellation relate to some of the claims
Intellectual Property Rights (TRIPS Agreement), the Intellectual
or parts of the claim, cancellation may be effected to such
Property Office, in consultation with the appropriate government
extent only. (Sec. 61, IPC)
agencies, shall issue the appropriate rules and regulations
necessary therein not later than 120 days after the enactment of
Remedy of the true and actual inventor this law;
If a person, who was deprived of the patent without his consent or
through fraud is declared by final court order or decision to be the true 5. Where the act consists of the preparation for individual cases,
and actual inventor, the court shall: in a pharmacy or by a medical professional, of a medicine in
- order for his substitution as patentee; or accordance with a medical prescription or acts concerning the
- at the option of the true inventor: medicine so prepared; and
a. cancel the patent; and
b. award actual and other damages in his favor if warranted by 6. Where the invention is used in any ship, vessel, aircraft, or
the circumstances. (Sec. 68, IPC) land vehicle of any other country entering the territory of the
Philippines temporarily or accidentally.
Rights conferred by a patent Provided, That such invention is used exclusively for the needs of
A patent shall confer on its owner the following exclusive rights:
the ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines. (Sec.
Subject matter
72, IPC)
Product Process
to restrain, prohibit and prevent to restrain, prevent or prohibit R.A No. 9502: Universally Accessible Cheaper and Quality
any unauthorized person or any unauthorized person or Medicines Act of 2008
entity from making, using, entity from using the process, Section 7 of R.A. No. 9502 amends Section 72 of the Intellectual
offering for sale, selling or and from manufacturing, dealing Property Code in that the later law unequivocally grants third persons
importing that product. in, using, selling or offering for the right to import drugs or medicines whose patent were registered in
sale, or importing any product the Philippines by the owner of the product. With the passage of R.A.
obtained directly or indirectly 9502, the State has reversed course and allowed for a sensible and
from such process. compassionate approach with respect to the importation of
pharmaceutical drugs urgently necessary for the people's
Patent owners shall also have the right to: constitutionally-recognized right to health. (Roma Drug & Romeo
- assign; Rodriguez vs. RTC et. al)
- transfer by succession the patent;
- and to conclude licensing contracts for the same. (Sec. 71, IPC)
Prior user
- Notwithstanding Section 72 hereof, any prior user, who, in good
Limitations of Patent Rights faith was using the invention or has undertaken serious
The owner of a patent has no right to prevent third parties from preparations to use the invention in his enterprise or business,
performing, without his authorization, the acts referred to in Section before the filing date or priority date of the application on which a
71 hereof in the following circumstances: patent is granted, shall have the right to continue the use thereof
as envisaged in such preparations within the territory where the
1. Using a patented product which has been put on the market patent produces its effect.
in the Philippines by the owner of the product, or with his The right of the prior user may only be transferred or assigned
express consent, insofar as such use is performed after that together with his enterprise or business, or with that part of his
product has been so put on the said market. enterprise or business in which the use or preparations for use
have been made. (Sec. 73, IPC)
As to drugs and medicines:
- the limitation on patent rights shall apply after a drug or medicine
has been introduced in the Philippines or anywhere else in the Use by the government
world by the patent owner, or by any party authorized to use the  A Government agency or third person authorized by the
invention; and Government may exploit the invention even without
- The right to import the drugs and medicines contemplated in this agreement of the patent owner where:
section shall be available to any government agency or any a. The public interest, in particular, national security, nutrition,
private third part. health or the development of other sectors, as determined by
the appropriate agency of the government, so requires; or
2. Where the act is done privately and on a non-commercial b. A judicial or administrative body has determined that the
scale or for a non-commercial purpose. manner of exploitation, by the owner of the patent or his
licensee is anti-competitive; or
Provided, That it does not significantly prejudice the economic
interests of the owner of the patent. In the case of drugs and medicines:
- there is a national emergency or other circumstance of extreme
3. Where the act consists of making or using exclusively for urgency requiring the use of the invention;
experimental use of the invention for scientific purposes or - there is public non-commercial use of the patent by the patentee,
without satisfactory reason;
- the demand for the patented article in the Philippines is not being
met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health.

 Unless otherwise provided herein, the use by the Government, or Crescer Presicion Systems, Inc. vs. CA
third person authorized by the Government shall be subject to
the following provisions: Who can file an action for patent infringement
Only the patentee or his successors-in-interest may file an action
a. In situations of national emergency or other for infringement. The phrase "anyone possessing any right, title or
circumstances of extreme urgency as provided under interest in and to the patented invention" upon which petitioner
Section 74.1(c), the right holder shall be notified as soon as maintains its present suit, refers only to the patentee's successors-in-
reasonably practicable; interest, assignees or grantees since actions for infringement of patent
may be brought in the name of the person or persons interested,
b. In the case of public non-commercial use of the patent by whether as patentee, assignees, or as grantees, of the exclusive right.
the patentee, without satisfactory reason, as provided under No patent infringement if no patent has been issued
Section 74.1 (d), the right holder shall be informed promptly: There can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the
Provided, That, the Government or third person authorized patent arises alone from the grant of patent. A person or entity who has
by the Government, without making a patent search, knows not been granted letters patent over an invention and has not acquired
or has demonstrable ground to know that a valid patent is or any light or title thereto either as assignee or as licensee, has no cause
will be used by or for the Government; of action for infringement because the right to maintain an
infringement suit depends on the existence of the patent.
c. If the demand for the patented article in the Philippines
is not being met to an adequate extent and on reasonable While petitioner claims to be the first inventor of the aerial fuze, still it
terms as provided under Section 74.1 (e), the right holder has no right of property over the same upon which it can maintain a
shall be informed promptly; suit unless it obtains a patent therefor. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has the
d. The scope and duration of such use shall be limited to the exclusive right of making, using or selling the invention.
purpose for which it was authorized;
e. Such use shall be non-exclusive;
f. The right holder shall be paid adequate remuneration in the
Tests in patent infringement
circumstances of each case, taking into account the 1. Literal infringement
economic value of the authorization; and In using literal infringement as a test, resort must be had, in the first
g. The existence of a national emergency or other instance, to the words of the claim. If accused matter clearly falls within
circumstances of extreme urgency, referred to under Section the claim, infringement is made out and that is the end of it.
74.1 (c), shall be subject to the determination of the
President of the Philippines for the purpose of determining To determine whether the particular item falls within the literal meaning
the need for such use or other exploitation, which shall be of the patent claims, the court must juxtapose the claims of the patent
immediately executory. and the accused product within the overall context of the claims and
specifications, to determine whether there is exact identity of all
 All cases arising from the implementation of this provision shall be material elements.
cognizable by courts with appropriate jurisdiction provided by law.
2. Doctrine of equivalents
No court, except the Supreme Court of the Philippines, shall issue Courts have adopted the doctrine of equivalents which recognizes that
any temporary restraining order or preliminary injunction or such minor modifications in a patented invention are sufficient to put the item
other provisional remedies that will prevent its immediate beyond the scope of literal infringement. According to this doctrine, an
execution. infringement also occurs when a device appropriates a prior invention
by incorporating its innovative concept and, albeit with some
 The Intellectual Property Office (IPO), in consultation with the modification and change, performs substantially the same function in
appropriate government agencies, shall issue the appropriate substantially the same way to achieve substantially the same result.
implementing rules and regulations for the use or exploitation
of patented inventions as contemplated in this section within one The reason for the doctrine of equivalents is that to permit the imitation
120 days after the effectivity of this law. (Sec. 74, IPC) of a patented invention which does not copy any literal detail would be
to convert the protection of the patent grant into a hollow and useless
thing. Such imitation would leave room for the unscrupulous copyist to
Patent Infringement make unimportant and insubstantial changes and substitutions in the
 The making, using, offering for sale, selling, or importing a patent which, though adding nothing, would be enough to take the
patented product or a product obtained directly or indirectly from a copied matter outside the claim, and hence outside the reach of the
patented process, or the use of a patented process without the law. (Godines vs. CA)
authorization of the patentee.
Function-means-and-results test
This shall not apply to: The doctrine of equivalents thus requires satisfaction of the function-
- Limitations of Patent Rights (Sec. 72.1 and 72.4); means-and-result test, the patentee having the burden to show that all
- Use of Invention by Government (Sec. 74) three components of such equivalency test are met. A scrutiny of
- Compulsory Licensing (Sec. 93.6); and petitioner’s evidence fails to convince this Court of the substantial
- Procedures on Issuance of a Special Compulsory License under sameness of petitioner’s patented compound and Albendazole.
the TRIPS Agreement. (Sec. 93-A)
While both compounds have the effect of neutralizing parasites in
Right of patentee animals, identity of result does not amount to infringement of patent
Any patentee, or anyone possessing any right, title or interest in and to unless Albendazole operates in substantially the same way or by
the patented invention, whose rights have been infringed may: substantially the same means as the patented compound, even though
- bring a civil action before a court of competent jurisdiction; it performs the same function and achieves the same result. In other
- to recover from the infringer such damages sustained thereby; words, the principle or mode of operation must be the same or
- plus attorney’s fees and other expenses of litigation; and substantially the same. (Smith Kline Beckman Corp. vs. CA)
- to secure an injunction for the protection of his rights. (Sec. 76,
IPC)
Damages awarded to patentee
 If the damages are inadequate or cannot be readily ascertained 3. Those that contain restrictions regarding the volume and structure
with reasonable certainty, the court may award by way of of production;
damages a sum equivalent to reasonable royalty. 4. Those that prohibit the use of competitive technologies in a non-
 The court may, according to the circumstances of the case, award exclusive technology transfer agreement;
damages in a sum above the amount found as actual damages 5. Those that establish a full or partial purchase option in favor of the
sustained: Provided, That the award does not 3 times the amount licensor;
of such actual damages. (Sec. 76, IPC) 6. Those that obligate the licensee to transfer for free to the licensor
the inventions or improvements that may be obtained through the
use of the licensed technology;
Limitation of Action for Damages 7. Those that require payment of royalties to the owners of patents
No damages can be recovered for acts of infringement committed for patents which are not used;
more than 4 years before the institution of the action for infringement. 8. Those that prohibit the licensee to export the licensed product
(Sec. 79, IPC) unless justified for the protection of the legitimate interest of the
licensor such as exports to countries where exclusive licenses to
Destruction of infringing goods manufacture and/or distribute the licensed product(s) have
already been granted;
The court may, in its discretion, order that the infringing goods,
9. Those which restrict the use of the technology supplied after the
materials and implements predominantly used in the infringement be
expiration of the technology transfer arrangement, except in
disposed of outside the channels of commerce or destroyed, without
cases of early termination of the technology transfer arrangement
compensation. (Sec. 76, IPC)
due to reason(s) attributable to the licensee;
10. Those which require payments for patents and other industrial
Contributory infringer property rights after their expiration, termination arrangement;
Anyone who actively induces the infringement of a patent or provides 11. Those which require that the technology recipient shall not
the infringer with a component of a patented product or of a product contest the validity of any of the patents of the technology
produced because of a patented process knowing it to be especially supplier;
adopted for infringing the patented invention and not suitable for 12. Those which restrict the research and development activities of
substantial non-infringing use shall be liable as a contributory infringer the licensee designed to absorb and adapt the transferred
and shall be jointly and severally liable with the infringer. (Sec. 76, IPC) technology to local conditions or to initiate research and
development programs in connection with new products,
Infringement Action by a Foreign National 13.
processes or equipment;
Those which prevent the licensee from adapting the imported
Any foreign national or juridical entity who:
technology to local conditions, or introducing innovation to it, as
1. Meets the requirements of Section 3;
long as it does not impair the quality standards prescribed by the
2. Not engaged in business in the Philippines;
licensor;
3. A patent has been granted or assigned.
14. Those which exempt the licensor for liability for non-fulfilment of
his responsibilities under the technology transfer arrangement
May bring an action for infringement of patent, whether or not it is
and/or liability arising from third party suits brought about by the
licensed to do business in the Philippines under existing law. (Sec. 77,
use of the licensed product or the licensed technology; and
IPC)
15. Other clauses with equivalent effects. (Sec. 87, IPC)

Defenses in actions for infringement Mandatory provisions

1. Invalidity of the patent; (Sec. 81, IPC) 1. That the laws of the Philippines shall govern the interpretation of
2. Any of the grounds for cancellation of patents: the same and in the event of litigation, the venue shall be the
a. That what is claimed as the invention is not new or proper court in the place where the licensee has its principal
patentable; office;
b. That the patent does not disclose the invention in a manner 2. Continued access to improvements in techniques and processes
sufficiently clear and complete for it to be carried out by any related to the technology shall be made available during the
person skilled in the art; or period of the technology transfer arrangement;
c. That the patent is contrary to public order or morality. 3. In the event the technology transfer arrangement shall provide for
(Section 61, IPC). arbitration, the Procedure of Arbitration of the Arbitration Law of
the Philippines or the Arbitration Rules of the United Nations
3. Prescription. (Sec. 79, IPC) Commission on International Trade Law (UNCITRAL) or the
Rules of Conciliation and Arbitration of the International Chamber
Licensing of Commerce (ICC) 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
Voluntary licensing transfer arrangement shall be borne by the licensor. (Sec. 88,
To encourage the transfer and dissemination of technology, prevent or IPC)
control practices and conditions that may in particular cases constitute
an abuse of intellectual property rights having an adverse effect on Rights of Licensor
competition and trade, all technology transfer arrangements shall In the absence of any provision to the contrary in the technology
comply with the provisions of this Chapter. (Sec. 85, IPC) transfer arrangement, the grant of a license shall not prevent the
licensor from granting further licenses to third person nor from
Technology transfer arrangements – the transfer, assignment or exploiting the subject matter of the technology transfer arrangement
licensing of all forms of intellectual property rights. (Sec. 4, IPC) himself. (Sec. 89, IPC)

Prohibited clauses Rights of Licensee

Except in cases under Section 91, the following provisions shall be The licensee shall be entitled to exploit the subject matter of the
deemed prima facie to have an adverse effect on competition and technology transfer arrangement during the whole term of the
trade: technology transfer arrangement. (Sec. 90, IPC)
1. Those which impose upon the licensee the obligation to acquire
from a specific source capital goods, intermediate products, raw Exceptional Cases
materials, and other technologies, or of permanently employing In exceptional or meritorious cases where substantial benefits will
personnel indicated by the licensor; accrue to the economy, such as high technology content, increase in
2. Those pursuant to which the licensor reserves the right to fix the foreign exchange earnings, employment generation, regional dispersal
sale or resale prices of the products manufactured on the basis of of industries and/or substitution with or use of local raw materials, or in
the license; the case of Board of Investments, registered companies with pioneer
status, exemption from any of the above requirements may be allowed
by the Documentation, Information and Technology Transfer Bureau The basic terms and conditions including the rate of royalties of a
after evaluation thereof on a case by case basis. (Sec. 91, IPC) compulsory license shall be fixed by the Director of Legal Affairs
subject to the following conditions:
Non-Registration with the Documentation, Information and
Technology Transfer Bureau 1. The scope and duration of such license shall be limited to the
 Technology transfer arrangements that conform with the purpose for which it was authorized;
provisions of Sections 86 and 87 need not be registered with the
Documentation, Information and Technology Transfer Bureau. 2. The license shall be non-exclusive;
 Non-conformance with any of the provisions of Sections 87 and
88, however, shall automatically render the technology transfer 3. The license shall be non-assignable, except with that part of the
arrangement unenforceable, unless said technology transfer enterprise or business with which the invention is being exploited;
arrangement is approved and registered with the Documentation,
Information and Technology Transfer Bureau under the provisions 4. Use of the subject matter of the license shall be devoted
of Section 91 on exceptional cases. (Sec. 92, IPC) predominantly for the supply of the Philippine market:

Compulsory licensing Provided, That this limitation shall not apply where the grant of the
license is based on the ground that the patentee’s manner of exploiting
Bureau of Legal Affairs shall hear and decide:
the patent is determined by judicial or administrative process, to be
 opposition to the application for registration of marks;
anti-competitive.
 cancellation of trademarks subject to the provisions of Section 64;
 cancellation of patents, utility models, and industrial designs; and
5. The license may be terminated upon proper showing that
 petitions for compulsory licensing of patents. (Sec. 10, IPC)
circumstances which led to its grant have ceased to exist and are
unlikely to recur:
Grounds for Compulsory Licensing
The Director General of the Intellectual Property Office may grant a
Provided, That adequate protection shall be afforded to the
license to exploit a patented invention, even without the agreement of
legitimate interest of the licensee; and
the patent owner, in favor of any person who has shown his capability
to exploit the invention, under any of the following circumstances:
6. The patentee shall be paid adequate remuneration taking into
account the economic value of the grant or authorization, except
1. National emergency or other circumstances of extreme urgency;
that in cases where the license was granted to remedy a practice
which was determined after judicial or administrative process, to
2. Where the public interest, in particular, national security,
be anti-competitive, the need to correct the anti-competitive
nutrition, health or the development of other vital sectors of the
practice may be taken into account in fixing the amount of
national economy as determined by the appropriate agency of the
remuneration. (Sec. 100, IPC)
Government, so requires;
Smith Kline & French vs. CA
3. Where a judicial or administrative body has determined that the
manner of exploitation by the owner of the patent or his licensee Royalties given to licensor
is anti-competitive; Even if other entities like Danlex are subsequently allowed to
manufacture, use and sell the patented invention by virtue of a
4. In case of public non-commercial use of the patent by the compulsory license, Smith Kline as owner of the patent would still
patentee, without satisfactory reason; receive remuneration for the use of such product in the form of
royalties.
5. If the patented invention is not being worked in the Philippines
on a commercial scale, although capable of being worked, without In the absence of any agreement between the parties with respect to a
satisfactory reason: compulsory license, the Director of the BPTTT may fix the terms
thereof, including the rate of the royalty payable to the licensor. The
Provided, That the importation of the patented article shall law explicitly provides that the rate of royalty shall not exceed five
constitute working or using the patent; and percent (5%) of the net wholesale price.

6. Where the demand for patented drugs and medicines is not The rate of royalty payments fixed by the Director of the BPTTT is
being met to an adequate extent and on reasonable terms, as reasonable. Considering that the compulsory license awarded consists
determined by the Secretary of the Department of Health. (Sec. only of the bare right to use the patented invention in the manufacture
93, IPC) of another product, without any technical assistance from the licensor.

Compulsory License Based on Interdependence of Patents Parke Davies & Co. vs. Doctor’s Pharmaceuticals Inc.
If the invention protected by a patent, hereafter referred to as the
“second patent,” within the country cannot be worked without infringing Invention related to drugs and medicine
another patent, hereafter referred to as the “first patent,” granted on a Indeed, it is sufficient that the invention be related to medicine. It is not
prior application or benefiting from an earlier priority, a compulsory required that it be at the same time necessary for public health or
license may be granted to the owner of the second patent to the public safety. Compulsory licensing of a patent on food or medicine
extent necessary for the working of his invention, subject to the without regard to the other conditions imposed in Section is not an
following conditions: undue deprivation of proprietary interests over a patent right because
the law sees to it that even after three years of complete monopoly
1. The invention claimed in the second patent involves an important something is awarded to the inventor in the form of a bilateral and
technical advance of considerable economic significance in workable licensing agreement and a reasonable royalty to be agreed
relation to the first patent; upon by the parties and in default of such agreement, the Director of
2. The owner of the first patent shall be entitled to a cross-license on Patents may fix the terms and conditions of the license.
reasonable terms to use the invention claimed in the second
patent; Each of these circumstances stands alone and is independent of the
3. The use authorized in respect of the first patent shall be non- others. And from them we can see that in order that any person may
assignable except with the assignment of the second patent; and be granted a license under a particular patented invention relating to
7. The terms and conditions of Sections 95, 96 and 98 to 100 of this medicine under Section 34(d), it is sufficient that the application be
Act. (Sec. 97, IPC) made after the expiration of three years from the date of the grant of
the patent and that the Director should find that a case for granting
Terms and Conditions of Compulsory License such license has been made out.
 Assignment and transmission of rights d. That the owner of the utility model registration is not the
inventor or his successor in title. (Sec. 109, IPC)

Transmission of Rights Conversion of Patent Applications or Applications

- Patents or applications for patents and invention to which they
relate, shall be protected in the same way as the rights of other for Utility Model Registration
property under the Civil Code. - At any time before the grant or refusal of a patent, an applicant for
- Inventions and any right, title or interest in and to patents and a patent may, upon payment of the prescribed fee, convert his
inventions covered thereby, may be assigned or transmitted by application into an application for registration of a utility model,
inheritance or bequest or may be the subject of a license contract. which shall be accorded the filing date of the initial application.
(Sec. 103, IPC) - An application may be converted only once.

- At any time before the grant or refusal of a utility model

Assignment of Inventions registration, an applicant for a utility model registration may, upon
payment of the prescribed fee, convert his application into a
An assignment may be of:
patent application, which shall be accorded the filing date of the
1. The entire right, title or interest in and to the patent and the
initial application. (Sec. 110, IPC)
invention covered thereby; or
2. An undivided share of the entire patent and invention, in which
event the parties become joint owners thereof. Prohibition Against Filing of Parallel Applications
An applicant may not 2 file applications for the same subject, one
An assignment may be limited to a specified territory. (Sec. 104, IPC) for utility model registration and the other for the grant of a patent
whether simultaneously or consecutively. (Sec. 111, IPC)
Form of Assignment
The assignment must be:
Ching vs. Salinas jr.
1. In Writing;
2. Acknowledged before a notary public or other officer authorized to
administer oath or perform notarial acts; and Utility model
3. Certified under the hand and official seal of the notary or such Utility model is a technical solution to a problem in any field of human
other officer. (Sec. 105, IPC) activity which is new and industrially applicable. It may be, or may
relate to, a product, or process, or an improvement of any of the
aforesaid. Essentially, a utility model refers to an invention in the
Rights of Joint Owners mechanical field. This is the reason why its object is sometimes
If 2 or more persons jointly own a patent and the invention covered described as a device or useful object.
thereby, either by the issuance of the patent in their joint favor or by
reason of the assignment of an undivided share in the patent and A utility model varies from an invention, for which a patent for
invention or by reason of the succession in title to such share, each of invention is, likewise, available, on at least three aspects:
the joint owners shall be entitled to: 1. The requisite of "inventive step" in a patent for invention is not
- Personally make, use, sell, or import the invention for his own required;
profit. 2. The maximum term of protection is only 7 years compared to a
- Provided that neither of the joint owners shall be entitled to grant patent which is twenty years, both reckoned from the date of the
licenses or to assign his right, title or interest or part thereof application; and
without the consent of the other owner or owners, or without 3. The provisions on utility model dispense with its substantive
proportionally dividing the proceeds with such other owner or examination and prefer for a less complicated system.
owners. (Sec. 107, IPC)
The petitioner's models are not works of applied art, nor artistic works.
Utility Models They are utility models, useful articles, albeit with no artistic design or
value. The bushing and cushion are not works of art. They are, as the
petitioner himself admitted, utility models which may be the subject of a
Applicability of Provisions Relating to Patents patent.
- Subject to Section 109, the provisions governing patents shall
apply, mutatis mutandis, to the registration of utility models. Del Rosario vs. CA
- Where the right to a patent conflicts with the right to a utility
model registration in the case referred to in Section 29, the said Entitlement to a patent for utility model
provision shall apply as if the word “patent” were replaced by the The Patent Law expressly acknowledges that any new model of
words “patent or utility model registration”. (Sec. 108, IPC) implements or tools of any industrial product even if not possessed of
the quality of invention but which is of practical utility is entitled to a
Special Provisions Relating to Utility Models patent for utility model.
- An invention qualifies for registration as a utility model if it is new
and industrially applicable. When a utility model is not considered new
- Section 21, “Patentable Inventions”, shall apply except the Under Section 55 of The Patent Law, a utility model shall not be
reference to inventive step as a condition of protection. considered “new”:
- Sections 43 to 49 shall not apply in the case of applications for 1. if before the application for a patent it has been publicly known
registration of a utility model. or publicly used in this country;
- A utility model registration shall expire, without any possibility of 2. it has been described in a printed publication or publications
renewal, at the end of the seventh year after the date of the filing circulated within the country, or
of the application. 3. if it is substantially similar to any other utility model so
- In proceedings under Sections 61 to 64, the utility model known, used or described within the country.
registration shall be canceled on the following grounds:
Burden of proof
a. That the claimed invention does not qualify for registration as The decision of the Director of Patents in granting the patent is always
a utility model and does not meet the requirements of presumed to be correct, and the burden then shifts to respondent to
registrability, in particular having regard to Subsection 109.1 overcome this presumption by competent evidence.
and Sections 22, 23, 24 and 27;
b. That the description and the claims do not comply with the Jacinto Corporation failed to present before the trial court competent
prescribed requirements; evidence that the utility models covered by the Letters Patent issued to
c. That any drawing which is necessary for the understanding Del Rosario were not new. He was not able to show proof that sing-
of the invention has not been furnished;
along systems were already manufactured by some companies even public as to the origin or any other common characteristics of the
before the patent application of Del Rosario. goods or services concerned.
- The registration of a collective mark, or an application therefor
Requisites for patent infringement shall not be the subject of a license contract. (Sec. 167, IPC)
It is elementary that in order to infringe a patent, a machine or device:
1. must perform the same function; or
2. accomplish the same result by identical or substantially identical
Purpose of trademark
1. To indicate origin or ownership of the articled to which they are
means; and
attached;
3. the principle or mode of operation must be substantially the same.
2. To guarantee that those articles come up to a certain standard of
quality;
3. To advertise the articles they symbolized. (Mirpuri vs. CA)
Since Jacinto Corporation failed to present a competent and reliable
comparison between its model and that of Del Rosario, clearly, both of Requirements for a mark to be registered
their models involve substantially the same modes of operation and 1. It is a visible sign (not sounds or scents);
produce substantially the same if not identical results when used. 2. Capable of distinguishing one’s goods and services from another.

Industrial designs and layout Designs Acquisition of ownership of mark

(topographies) of integrated circuits
How Marks are Acquired
 Industrial Design – any composition of lines or colors or any The rights in a mark shall be acquired through registration made
three-dimensional form, whether or not associated with lines or validly in accordance with the provisions of this law. (Sec. 122, IPC)
colors: Provided, That such composition or form gives a special
appearance to and can serve as pattern for an industrial product
or handicraft.
Registrability
A mark cannot be registered if it is identical with a registered mark
belonging to a different proprietor or a mark with an earlier filing or
 Integrated Circuit – means a product, in its final form, or an
priority date, in respect of:
intermediate form, in which the elements, at least one of which is
a. The same goods or services;
an active element, and some or all of the interconnections are
b. Closely related goods or services, or
integrally formed in and/or on a piece of material, and which is
c. If it nearly resembles such a mark as to be likely to deceive or
intended to perform an electronic function.
cause confusion. (Sec. 123, IPC) \
 Layout-Design – synonymous with ‘Topography’ and means the
three-dimensional disposition, however expressed, of the Requirements of Application
elements, at least one of which is an active element, and of some - The applicant or the registrant shall file a declaration of actual
or all of the interconnections of an integrated circuit, or such a use of the mark with evidence to that effect, as prescribed by the
three-dimensional disposition prepared for an integrated circuit Regulations within 3 years from the filing date of the application.
intended for manufacture. (Sec. 112, IPC) - Otherwise, the application shall be refused or the mark shall be
removed from the Register by the Director. (Sec. 124, IPC)
Trademarks Priority Right
- An application for registration of a mark filed in the
Marks, Collective marks and Trade names Philippines by a person referred to in Section 3, and who
Definitions previously duly filed an application for registration of the
 Mark – means any visible sign capable of distinguishing the same mark in one of those countries, shall be considered as filed
goods (trademark) or services (service mark) of an enterprise and as of the day the application was first filed in the foreign
shall include a stamped or marked container of goods. country.
- No registration of a mark in the Philippines by a person described
 Collective mark – means any visible sign designated as such in in this section shall be granted until such mark has been
the application for registration and capable of distinguishing the registered in the country of origin of the applicant.
origin or any other common characteristic, including the quality of - Nothing in this section shall entitle the owner of a registration
goods or services of different enterprises which use the sign granted under this section to sue for acts committed prior to the
under the control of the registered owner of the collective mark. date on which his mark was registered in this country:

 Trade name – means the name or designation identifying or Provided, That, notwithstanding the foregoing, the owner of a
distinguishing an enterprise. (Sec. 121, IPC) well-known mark as defined in Section 123.1(e) of this Act, that is
not registered in the Philippines, may, against an identical or
confusingly similar mark, oppose its registration, or petition the
Collective Marks cancellation of its registration or sue for unfair competition,
- Subject to Subsections 167.2 and 167.3, Sections 122 to 164 and without prejudice to availing himself of other remedies provided
166 shall apply to collective marks, except that references therein for under the law.
to “mark” shall be read as “collective mark”.
- An application for registration of a collective mark shall - In like manner and subject to the same conditions and
designate the mark as a collective mark and shall be requirements, the right provided in this section may be based
accompanied by a copy of the agreement, if any, governing the upon a subsequent regularly filed application in the same foreign
use of the collective mark. country:
- The registered owner of a collective mark shall notify the Director
of any changes made in respect of the agreement referred to in Provided, That any foreign application filed prior to such
paragraph (a). subsequent application has been withdrawn, abandoned, or
- In addition to the grounds provided in Section 149, the Court shall otherwise disposed of, without having been laid open to public
cancel the registration of a collective mark if the person inspection and without leaving any rights outstanding, and has not
requesting the cancellation proves that only the registered owner served, nor thereafter shall serve, as a basis for claiming a right of
uses the mark, or that he uses or permits its use in contravention priority. (Sec. 131, IPC)
of the agreements referred to in Subsection 166.2 or that he uses
or permits its use in a manner liable to deceive trade circles or the
Certificates of Registration
A certificate of registration of a mark shall be prima facie evidence of Once the IP Code took effect, however, the general rule on ownership
the validity of the registration, the registrant’s ownership of the mark, was changed and repealed. At present, as expressed in the language
and of the registrant’s exclusive right to use the same in connection of the provisions of the IP Code, prior use no longer determines the
with the goods or services and those that are related thereto specified acquisition of ownership of a mark in light of the adoption of the rule
in the certificate. (Sec. 138, IPC) that ownership of a mark is acquired through registration made validly
in accordance with the provisions of the IP Code.79 Accordingly, the
Duration trademark provisions of the IP Code use the term owner in relation to
- A certificate of registration shall remain in force for 10 years. registrations.
- The registrant shall file a declaration of actual use and
evidence to that effect, or shall show valid reasons based on the
existence of obstacles to such use, as prescribed by the
Regulations, within 1 year from the fifth anniversary of the date of
the registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec. 145, IPC)

Renewal
Acquisition of ownership of trade name
 A certificate of registration may be renewed for periods of 10
years at its expiration upon payment of the prescribed fee and Trade Names or Business Names
upon filing of a request. The request shall contain the following - A name or designation may not be used as a trade name if by
indications: its nature or the use to which such name or designation may be
a. An indication that renewal is sought; put, it is contrary to public order or morals and if, in particular, it is
b. The name and address of the registrant or his successor-in- liable to deceive trade circles or the public as to the nature of the
interest, hereafter referred to as the “right holder”; enterprise identified by that name.
c. The registration number of the registration concerned; - Notwithstanding any laws or regulations providing for any
d. The filing date of the application which resulted in the registration obligation to register trade names, such names shall be
concerned to be renewed; protected, even prior to or without registration, against any
e. Where the right holder has a representative, the name and unlawful act committed by third parties.
address of that representative; - In particular, any subsequent use of the trade name by a third
f. The names of the recorded goods or services for which the party, whether as a trade name or a mark or collective mark, or
renewal is requested or the names of the recorded goods or any such use of a similar trade name or mark, likely to mislead
services for which the renewal is not requested, grouped the public, shall be deemed unlawful.
according to the classes of the Nice Classification to which that - The remedies provided for in Sections 153 to 156 and Sections
group of goods or services belongs and presented in the order of 166 and 167 shall apply mutatis mutandis.
the classes of the said Classification; and - Any change in the ownership of a trade name shall be made
g. A signature by the right holder or his representative. with the transfer of the enterprise or part thereof identified by that
name. The provisions of Subsections 149.2 to 149.4 shall apply
 Such request shall be in Filipino or English and may be made at mutatis mutandis. (Sec. 165, IPC)
any time within 6 months before the expiration of the period for
which the registration was issued or renewed, or it may be made Fredco Manufacturing Corporation vs. Harvard University
within 6 months after such expiration on payment of the
additional fee herein prescribed. Internationally well-known mark cannot be registered
 If the Office refuses to renew the registration, it shall notify the Indeed, Section 123.1(e) of R.A. No. 8293 now categorically states that
registrant of his refusal and the reasons therefor. a mark which is considered by the competent authority of the
 An applicant for renewal not domiciled in the Philippines shall be Philippines to be well-known internationally and in the Philippines,
subject to and comply with the requirements of this Act. (Sec. whether or not it is registered here, cannot be registered by another in
146, IPC) the Philippines. Section 123.1(e) does not require that the well-known
mark be used in commerce in the Philippines but only that it be well-
Zuneca Pharmaceutical vs. Natrapharm known in the Philippines.

Ownership of a mark is acquired through registration There is no question then, and this Court so declares, that "Harvard" is
The language of the IP Code provisions clearly conveys the rule that a well-known name and mark not only in the United States but also
ownership of a mark is acquired through registration. The intention of internationally, including the Philippines. The mark "Harvard" is rated
the lawmakers was to abandon the rule that ownership of a mark is as one of the most famous marks in the world. It has been registered in
acquired through use. at least 50 countries. It has been used and promoted extensively in
numerous publications worldwide.
To clarify, while it is the fact of registration which confers ownership of
the mark and enables the owner thereof to exercise the rights It has established a considerable goodwill worldwide since the
expressed in Section 14775 of the IP Code, the first-to-file rule founding of Harvard University more than 350 years ago. It is easily
nevertheless prioritizes the first filer of the trademark application recognizable as the trade name and mark of Harvard University of
and operates to prevent any subsequent applicants from registering Cambridge, Massachusetts, U.S.A., internationally known as one of the
marks described under Section 123.1(d) of the IP Code. leading educational institutions in the world. As such, even before
Harvard University applied for registration of the mark “Harvard” in the
Reading together Sections 122 and 123. l(d) of the IP Code, therefore, Philippines, the mark was already protected under Article 6bis and
a registered mark or a mark with an earlier filing or priority date Article 8 of the Paris Convention. Again, even without applying the
generally bars the future registration of-and the future acquisition of Paris Convention, Harvard University can invoke Section 4(a) of R.A.
rights in an identical or a confusingly similar mark, in respect of the No. 166 which prohibits the registration of a mark which may disparage
same or closely-related goods or services, if the resemblance will likely or falsely suggest a connection with persons, living or dead,
deceive or cause confusion. institutions, beliefs.

IP Code distinguished from Trademark Law

The current rule under the IP Code is thus in stark contrast to the rule
Rights conferred by registration
on acquisition of ownership under the Trademark Law, as amended.
To recall, the Trademark Law, as amended, provided that prior use Rights Conferred
and non-abandonment of a mark by one person barred the future - Except in cases of importation of drugs and medicines allowed
registration of an identical or a confusingly similar mark by a different under Section 72.1 of this Act and of off-patent drugs and
proprietor when confusion or deception was likely. It also stated that medicines, the owner of a registered mark shall have the
one acquired ownership over a mark by actual use. 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 Provided, That in determining whether a mark is well-known,
identical or similar to those in respect of which the trademark is account shall be taken of the knowledge of the relevant sector
registered where such use would result in a likelihood of of the public, rather than of the public at large, including
confusion. knowledge in the Philippines which has been obtained as a result
- In case of the use of an identical sign for identical goods or of the promotion of the mark; or
services, a likelihood of confusion shall be presumed.
- There shall be no infringement of trademarks or tradenames of 2. Identical with, or confusingly similar to, or constitutes a
imported or sold patented drugs and medicines allowed under translation of a mark considered well-known in accordance with
Section 72.1 of this Act, as well as imported or sold off-patent the preceding paragraph, which is registered in the Philippines
drugs and medicines: with respect to goods or services which are not similar to
those with respect to which registration is applied for:
- Provided, That, said drugs and medicines bear the registered
marks that have not been tampered, unlawfully modified, or - Provided, That use of the mark in relation to those goods or
infringed upon, under Section 155 of this Code. (Sec. 147, IPC) services would indicate a connection between those goods or
Use of Indications by Third Parties for Purposes services, and the owner of the registered mark: Provided,
further, That the interests of the owner of the registered mark
Other than those for which the Mark is Used are likely to be damaged by such use. (Sec. 123, IPC)
- Registration of the mark shall not confer on the registered
owner the right to preclude third parties from using bona fide
their names, addresses, pseudonyms, a geographical name, or
exact indications concerning the kind, quality, quantity,
Criteria for determining whether a mark is well-
destination, value, place of origin, or time of production or of known
supply, of their goods or services: a. the duration, extent and geographical area of any use of the mark,
in particular, the duration, extent and geographical area of any
Provided, That such use is confined to the purposes of mere promotion of the mark, including advertising or publicity and the
identification or information and cannot mislead the public as presentation, at fairs or exhibitions, of the goods and/ or services
to the source of the goods or services. (Sec. 148, IPC) to which the mark applies;
b. the market share, in the Philippines and in other countries, of the
Assignment and Transfer of Application and c.
goods and/or services to which the mark applies;
the degree of the inherent or acquired distinction of the mark;
Registration d. the quality-image or reputation acquired by the mark;
- An application for registration of a mark, or its registration, e. the extent to which the mark has been registered in the world;
may be assigned or transferred with or without the transfer of f. the exclusivity of registration attained by the mark in the world;
the business using the mark. g. the extent to which the mark has been used in the world;
- Such assignment or transfer shall, however, be null and void if it h. the exclusivity of use attained by the mark in the world;
is liable to mislead the public, particularly as regards the nature, i. the commercial value attributed to the mark in the world;
source, manufacturing process, characteristics, or suitability for j. the record of successful protection of the rights in the mark;
their purpose, of the goods or services to which the mark is k. the outcome of litigations dealing with the issue of whether he
applied. mark is a well-known mark; and,
- The assignment of the application for registration of a mark, or of l. the presence or absence of identical or similar marks validly
its registration, shall be in writing and require the signatures of registered for or used on identical or similar goods or services and
the contracting parties. Transfers by mergers or other forms of owned by persons other than the person claiming that the mark is
succession may be made by any document supporting such a well-known mark. (Rule 103, IPO Memo Circular 17010)
transfer.
- Assignments and transfers of registrations of marks shall be
recorded at the Office on payment of the prescribed fee;
Competent authority
For purposes of determining whether a mark is well-known,
assignment and transfers of applications for registration shall, on
competent authority means the:
payment of the same fee, be provisionally recorded, and the
1. Courts;
mark, when registered, shall be in the name of the assignee or
2. Director General; and
transferee.
3. Director of the Bureau of Legal Affairs. (Rule 100d, IPO Memo
- Assignments and transfers shall have no effect against third
Circular 17010)
parties until they are recorded at the Office. (Sec. 149, IPC)
Kabushi Kaisha Isetan vs. The Intermediate Appellate Court
Nice Classification of Goods and Services
- Each registration, and any publication of the Office which Actual use in commerce required under the Trademark Law
concerns an application or registration effected by the Office shall Trademark Law is very clear. It requires actual commercial use of the
indicate the goods or services by their names, grouped mark prior to its registration. The records show that the petitioner has
according to the classes of the Nice Classification, and each never conducted any business in the Philippines. It has never
group shall be preceded by the number of the class of that promoted its tradename or trademark in the Philippines. The mere
Classification to which that group of goods or services belongs, origination or adoption of a particular tradename without actual use
presented in the order of the classes of the said Classification. thereof in the market is insufficient to give any exclusive right to its,
- Goods or services may not be considered as being similar or even though such adoption is publicly declared, such as by use of the
dissimilar to each other on the ground that, in any registration or name in advertisements, circulars, price lists, and on sig ns and
publication by the Office, they appear in different classes of the stationery.
Nice Classification. (Sec. 144, IPC)
Levi Strauss & Co. vs. Clinton Apprelle
Well-known marks
A mark cannot be registered if it is: Certificate of registration prima facie evidence of validity of
1. Identical with, or confusingly similar to, or constitutes a registration
translation of a mark which is considered by the competent According to Section 138 of Republic Act No. 8293, this Certificate of
authority of the Philippines to be well-known internationally and in Registration is prima facie evidence of the validity of the registration.
the Philippines, whether or not it is registered here, as being The said law likewise grants the owner of the registered mark the
already the mark of a person other than the applicant for exclusive right to prevent all third parties not having the owner's
registration, and used for identical or similar goods or consent from using in the course of trade identical or similar signs for
services: goods or services which are identical or similar to those in respect of
which the trademark is registered if such use results in a likelihood of
confusion.
 the registrant of the well-known mark will be damaged because of
Owner cannot prevent use by third parties of a portion of the the inferior quality of the good or services of the user.
registered mark
Notably, there is only one registration for both features of the
trademark giving the impression that the two should be considered as
Cancellation of registration
a single unit. Respondent only appropriates petitioners' logo and not
the word mark "Dockers"; it uses only a portion of the registered Cancellation
trademark and not the whole. It is not evident whether the single A petition to cancel a registration of a mark under this Act may be filed
registration of the trademark "Dockers and Design" confers on the with the Bureau of Legal Affairs by any person who believes that he is
owner the right to prevent the use of a fraction thereof in the course of or will be damaged by the registration of a mark under this Act as
trade. It is also unclear whether the use without the owner's consent of follows:
a portion of a trademark registered in its entirety constitutes material or
substantial invasion of the owner's right. (a) Within 5 years from the date of the registration of the mark
under this Act.
Trademark dilution is the lessening of the capacity of a famous mark (b) At any time, if the:
to identify and distinguish goods or services, regardless of the - registered mark becomes the generic name for the goods or
presence or absence of: services, or a portion thereof, for which it is registered;
1. competition between the owner of the famous mark and other - has been abandoned;
parties; or - its registration was obtained fraudulently or contrary to the
2. likelihood of confusion, mistake or deception. provisions of this Act;
- the registered mark is being used by, or with the permission of,
Subject to the principles of equity, the owner of a famous mark is the registrant so as to misrepresent the source of the goods or
entitled to an injunction "\against another person's commercial use in services on or in connection with which the mark is used.
commerce of a mark or trade name, if such use begins after the mark  If the registered mark becomes the generic name for
has become famous and causes dilution of the distinctive quality of the less than all of the goods or services for which it is
mark. registered, a petition to cancel the registration for only
those goods or services may be filed.
When eligible for protection from dilution
Based on the foregoing, to be eligible for protection from dilution, there  A registered mark shall not be deemed to be the
has to be a finding that: generic name of goods or services solely because
1. the trademark sought to be protected is famous and distinctive; such mark is also used as a name of or to identify a
2. the use by respondent of "Paddocks and Design" began after the unique product or service.
petitioners' mark became famous; and
3. such subsequent use defames petitioners' mark.  The primary significance of the registered mark to the
relevant public rather than purchaser motivation shall
Petitioners have yet to establish whether "Dockers and Design" has be the test for determining whether the registered
acquired a strong degree of distinctiveness and whether the other two mark has become the generic name of goods or
elements are present for their cause to fall within the ambit of the services on or in connection with which it has been
invoked protection. used.

246 Corporation vs. Hon. Daway, et al. - the registered owner of the mark without legitimate reason
fails to use the mark within the Philippines, or to cause it to be
No trademark infringement for unrelated goods under the used in the Philippines by virtue of a license during an
Trademark Law uninterrupted period of 3 years or longer.
Under the old Trademark Law where the goods for which the identical
marks are used are unrelated, there can be no likelihood of confusion  Notwithstanding the foregoing provisions, the court or the
and there is therefore no infringement in the use by the junior user of administrative agency vested with jurisdiction to hear and
the registered mark on the entirely different goods. This ruling, adjudicate any action to enforce the rights to a registered mark
however, has been to some extent, modified by Section 123.1(f) of the shall likewise exercise jurisdiction to determine whether the
Intellectual Property Code (Republic Act No. 8293), which took effect registration of said mark may be cancelled in accordance with this
on January 1, 1998. Act.
 The filing of a suit to enforce the registered mark with the proper
Use of well-known mark for unrelated goods or services under the court or agency shall exclude any other court or agency from
IP Code assuming jurisdiction over a subsequently filed petition to cancel
A junior user of a well-known mark on goods or services which are the same mark.
not similar to the goods or services, and are therefore unrelated, to  On the other hand, the earlier filing of petition to cancel the mark
those specified in the certificate of registration of the well-known mark with the Bureau of Legal Affairs shall not constitute a prejudicial
is precluded from using the same on the entirely unrelated goods or question that must be resolved before an action to enforce the
services, subject to the following requisites, to wit: rights to same registered mark may be decided. (Sec. 151, IPC)

1. The mark is well-known internationally and in the Philippines with Non-use of a mark when excused
reference to the criteria in determining a well- known mark. - Non-use of a mark may be excused if caused by circumstances
arising independently of the will of the trademark owner.
2. The use of the well-known mark on the entirely unrelated - Lack of funds shall not excuse non-use of a mark.
goods or services would indicate a connection between such - The use of the mark in a form different from the form in which
unrelated goods or services and those goods or services it is registered, which does not alter its distinctive character,
specified in the certificate of registration in the well-known mark. shall not be ground for cancellation or removal of the mark and
shall not diminish the protection granted to the mark.
This requirement refers to the likelihood of confusion of origin - The use of a mark in connection with one or more of the
or business or some business connection or relationship goods or services belonging to the class in respect of which
between the registrant and the user of the mark. the mark is registered shall prevent its cancellation or removal in
respect of all other goods or services of the same class.
3. The interests of the owner of the well-known mark are likely - The use of a mark by a company related with the registrant or
to be damaged. applicant shall inure to the latter’s benefit, and such use shall
not affect the validity of such mark or of its registration:
For instance, if the registrant will be precluded from expanding its
business to those unrelated good or services, or if the interests of
 Provided, That such mark is not used in such manner as to to be considered as having used the trade mark in the ordinary course
deceive the public. If use of a mark by a person is controlled by of his trade in that country.
the registrant or applicant with respect to the nature and quality of
the goods or services, such use shall inure to the benefit of the A showing of an actual commercial link to the country is therefore
registrant or applicant. (Sec. 152, IPC) imperative. Otherwise, an unscrupulous registrant would be able to
maintain his mark by the mere expedient of setting up a website, or by
W Land Holding, Inc. v. Starwood Hotels and Resorts posting his goods or services on another's site, although no
Worldwide, Inc. commercial activity is intended to be pursued in the Philippines. This
type of token use renders inutile the commercial purpose of the mark,
Prima facie presumption by registration may be controverted by and hence, negates the reason to keep its registration active. As the IP
proof of non-use Code expressly requires, the use of the mark must be within the
A certificate of registration of a mark, once issued, constitutes prima Philippines.
facie evidence of the validity of the registration, of the registrant's
ownership of the mark, and of the registrant's exclusive right to use the Non-registrable marks
same in connection with the goods or services and those that are
related thereto specified in the certificate. However, the prima facie
presumption brought about by the registration of a mark may be Registrability
challenged and overcome, in an appropriate action, by proof of among A mark cannot be registered if it:
others, non-use of the mark, except when excused. (a) Consists of immoral, deceptive or scandalous matter, or matter
which may disparage or falsely suggest a connection with
Use required under the IP Code persons, living or dead, institutions, beliefs, or national symbols,
The IP Code and the Trademark Regulations have not specifically or bring them into contempt or disrepute;
defined "use." However, it is understood that the use which the law (b) Consists of the flag or coat of arms or other insignia of the
requires to maintain the registration of a mark must be genuine, and Philippines or any of its political subdivisions, or of any foreign
not merely token. Based on foreign authorities, genuine use may be nation, or any simulation thereof;
characterized as a bona fide use which results or tends to result, in one (c) Consists of a name, portrait or signature identifying a particular
way or another, into a commercial interaction or transaction "in the living individual except by his written consent, or the name,
ordinary course of trade. signature, or portrait of a deceased President of the Philippines,
during the life of his widow, if any, except by written consent of
The following shall be accepted as proof of actual use of the the widow;
mark: (d) Is identical with a registered mark belonging to a different
(1) Labels of the mark as these are used; proprietor or a mark with an earlier filing or priority date, in respect
(2) Downloaded pages from the website of the applicant or of:
registrant clearly showing that the goods are being sold or i. The same goods or services, or
the services are being rendered in the Philippines; ii. Closely related goods or services, or
(3) Photographs (including digital photographs printed on ordinary iii. If it nearly resembles such a mark as to be likely to
paper) of goods bearing the marks as these are actually used or deceive or cause confusion;
of the stamped or marked container of goods and of the (e) Is identical with, or confusingly similar to, or constitutes a
establishment/s where the services are being rendered; translation of a mark which is considered by the competent
(4) Brochures or advertising materials showing the actual use of the authority of the Philippines to be well-known internationally and in
mark on the goods being sold or services being rendered in the the Philippines, whether or not it is registered here, as being
Philippines; already the mark of a person other than the applicant for
(5) For online sale, receipts of sale of the goods or services registration, and used for identical or similar goods or services:
rendered or other similar evidence of use, showing that the
goods are placed on the market or the services are available in Provided, That in determining whether a mark is well-known,
the Philippines or that the transaction took place in the account shall be taken of the knowledge of the relevant sector of
Philippines; the public, rather than of the public at large, including knowledge
(6) Copies of contracts for services showing the use of the mark. But, in the Philippines which has been obtained as a result of the
computer printouts of the drawing or reproduction of marks will promotion of the mark;
not be accepted as evidence of use.
(f) Is identical with, or confusingly similar to, or constitutes a
Use of internet in use of goods or services translation of a mark considered well-known in accordance with
Based on the amended Trademark Regulations, it is apparent that the the preceding paragraph, which is registered in the Philippines
IPO has now given due regard to the advent of commerce on the with respect to goods or services which are not similar to those
internet. Specifically, it now recognizes, among others, "downloaded with respect to which registration is applied for:
pages from the website of the applicant or registrant clearly showing
that the goods are being sold or the services are being rendered in the Provided, That use of the mark in relation to those goods or
Philippines," as well as "for online sale, receipts of sale of the goods or services would indicate a connection between those goods or
services rendered or other similar evidence of use, showing that the services, and the owner of the registered mark: Provided, further,
goods are placed on the market or the services are available in the That the interests of the owner of the registered mark are likely to
Philippines or that the transaction took place in the Philippines, as be damaged by such use;
acceptable proof of actual use.
(g) Is likely to mislead the public, particularly as to the nature, quality,
The Court therefore agrees with the IPO DG, as affirmed by the CA, characteristics or geographical origin of the goods or
that the use of a registered mark representing the owner's goods or services;Consists exclusively of signs that are generic for the
services by means of an interactive website may constitute proof of goods or services that they seek to identify;
actual use that is sufficient to maintain the registration of the same.
(h) Consists exclusively of signs or of indications that have become
Mere exhibition of goods over the internet, insufficient customary or usual to designate the goods or services in
It must be emphasized, however, that the mere exhibition of goods or everyday language or in bona fide and established trade practice;
services over the internet, without more, is not enough to constitute
actual use. To reiterate, the "use" contemplated by law is genuine use - (i) Consists exclusively of signs or of indications that may serve in
that is, a bona fide kind of use tending towards a commercial trade to designate the kind, quality, quantity, intended purpose,
transaction in the ordinary course of trade. value, geographical origin, time or production of the goods or
rendering of the services, or other characteristics of the goods or
Since the internet creates a borderless marketplace, it must be shown services;
that the owner has actually transacted, or at the very least,
intentionally targeted customers of a particular jurisdiction in order
(j) Consists of shapes that may be necessitated by technical factors
or by the nature of the goods themselves or factors that affect De La Salle Montessori International of Malolos, Inc. vs. De La
their intrinsic value; Salle Brothers Inc.

(k) Consists of color alone, unless defined by a given form; or The phrase "De La Salle" is not merely a generic term. Respondents'
use of the phrase being suggestive and may properly be regarded as
(l) Is contrary to public order or morality. (Sec. 123, IPC) fanciful, arbitrary and whimsical, it is entitled to legal protection.
Petitioner's use of the phrase "De La Salle" in its corporate name is
East Pacific Merchandising Corp. vs. Director of Patents patently similar to that of respondents that even with reasonable care
and observation, confusion might arise. The Court notes not only the
The term "Verbena" being descriptive of a whole genus of garden similarity in the parties' names, but also the business they are engaged
plants with fragrant flowers (Verbenaceae), its use in connection with in.
cosmetic products, wherein fragrance is of substantial import, evokes
the idea that the products are perfumed with the extract of verbena Here, the phrase "De La Salle" is not generic in relation to
flowers, or of some oil of similar aroma; and, regardless of other respondents. It is not descriptive of respondent's business as institutes
connotations of the word, the use of the term cannot be denied to of learning, unlike the meaning ascribed to "Lyceum." Moreover,
other traders using such extract or oils in their own products. respondent De La Salle Brothers, Inc. was registered in 1961 and the
De La Salle group had been using the name decades before
It follows that the Director of Patents correctly held the term to be non- petitioner's corporate registration.
registerable in the sense that petitioner company would be entitled to
appropriate its use to the exclusion of others legitimately entitled, such Generic or descriptive words cannot be appropriated
as oppositor Pellicer. The denial of registration is further strengthened A word or a combination of words which is merely descriptive of an
by the Director's express findings that petitioner does not use verbena article of trade, or of its composition, characteristics, or qualities,
essences in his products. cannot be appropriated and protected as a trademark to the exclusion
of its use by others. Inasmuch as all persons have an equal right to
produce and vend similar articles, they also have the right to describe
them properly and to use any appropriate language or words for that
purpose, and no person can appropriate to himself exclusively any
word or expression, properly descriptive of the article, its qualities,
ingredients or characteristics, and thus limit other persons in the use of
GSIS Family Bank vs. BPI Family Bank language appropriate to the description of their manufactures, the right
to the use
Requisites for use of exclusive name: of such language being common to all.
(1) that the complainant corporation acquired a prior right over the This rule excluding descriptive terms has also been held to apply to
use of such corporate name; and trade-names. As to whether words employed fall within this prohibition,
(2) the proposed name is either: it is said that the true test is not whether they are exhaustively
a. identical; descriptive of the article designated, but whether in themselves, and as
b. deceptive or confusingly similar to that of any existing they are commonly used by those who understand their meaning, they
corporation or to any other name already protected by law; are reasonably indicative and descriptive of the thing intended. If they
or are thus descriptive, and not arbitrary, they cannot be appropriated
c. patently deceptive, confusing or contrary to existing law. from general use and become the exclusive property of anyone.

These two requisites are present in this case. Following the precedent Tests to determine confusing similarity between
in the IRCP case (priority of adoption rule to determine prior right),
we rule that respondent has the prior right over the use of the marks
corporate name. As to the second requisite, On the first point (a), the
words "Family Bank" present in both petitioner and respondent's Likelihood of confusion
corporate name satisfy the requirement that there be identical names In determining the likelihood of confusion, the Court must
in the existing corporate name and the proposed one. consider:
(a) the resemblance between the trademarks;
Lyceum of the Philippines vs. CA et al. (b) the similarity of the goods to which the trademarks are attached;
(c) the likely effect on the purchaser; and
Doctrine of secondary meaning (d) the registrant’s express or implied consent and other fair and
The doctrine of secondary meaning connotes a word or phrase equitable considerations.
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 Types of Confusion
producer with reference to his article that, in that trade and to that 1. Confusion of goods – in which event the ordinarily prudent
branch of the purchasing public, the word or phrase has come to mean purchaser would be induced to purchase one product in the belief
that the article was his product. that he was purchasing the other. In which case, defendant's
goods are then bought as the plaintiff's, and the poorer quality of
LPI claimed that the word "Lyceum" has acquired a secondary the former reflects adversely on the plaintiff's reputation.
meaning in relation to it, hence, appropriable by it to the exclusion of
other institutions. The doctrine of secondary meaning originated in the 2. Confusion of business – Though the goods of the parties are
field of trademark law. Its application has been extended to corporate different, the defendant's product is such as might reasonably be
names, since the right to use a corporate name to the exclusion of assumed to originate with the plaintiff, and the public would then
others is based upon the same principle which underlies the right to be deceived either into that belief or into the belief that there is
use a particular trademark or trade name. some connection between the plaintiff and defendant which, in
fact, does not exist. (Sterling Products International, Incorporated
While LPI may have proved that it had been using the word “Lyceum” vs. Farbenfabriken Bayer Aktiengesellschaft et al.)
for a long period of time, this fact alone did not amount to mean that
the said word had acquired secondary meaning in its favor because Dominancy test
LPI failed to prove that it had been using the same word all by itself to The Dominancy Test focuses on the similarity of the prevalent
the exclusion of others. Hence, LPI is not entitled to a legally features of the competing trademarks which might cause confusion or
enforceable exclusive right to use the word "Lyceum" in its corporate deception, and thus infringement. If the competing trademark contains
name and other institutions may use "Lyceum" as part of their the main, essential or dominant features of another, and
corporate names. confusion or deception is likely to result, infringement takes place.
The question is whether the use of the marks involved is likely to cause While it is true that PLANTERS is an ordinary word, nevertheless it is
confusion or mistake in the mind of the public or deceive purchasers. used in the labels not to describe the nature of the product, but to
project the source or origin of the salted peanuts contained in the cans.
Mang Inasal Phils., Inc. vs. IFP Manufacturing Corp. The word PLANTERS printed across the upper portion of the label in
bold letters easily attracts and catches the eye of the ordinary
The fact that the conflicting marks have exactly the same dominant consumer and it is that word and none other that sticks in his mind
element is key. It is undisputed that the OK Hotdog Inasal mark copied when he thinks of salted peanuts.
and adopted as one of its dominant features the "INASAL" element of
the Mang Inasal mark. Given that the "INASAL" element is, at the The word PLANTERS, but that it also used in its label the same
same time, the dominant and most distinctive feature of the Mang coloring scheme of gold, blue, and white, and basically the same lay-
Inasal mark, the said element's incorporation in the OK Hotdog Inasal out of words such as "salted peanuts" and "vacuum packed" with
mark, thus, has the potential to project the deceptive and false similar type and size of lettering as appearing in Standard Brands' own
impression that the latter mark is somehow linked or associated with trademark, all of which result in a confusing similarity between the two
the former mark. labels.

The differences between the two marks are trumped by the overall McDonalds Corporation vs. Macjoy Fastfood Corporation
impression created by their similarity. The mere fact that there are
other elements in the OK Hotdog Inasal mark that are not present in Furthermore, In determining likelihood of confusion, the SC has relied
the Mang Inasal mark actually does little to change the probable public on the dominancy test (similarity of the prevalent features of the
perception that both marks are linked or associated. It is worth competing trademarks that might cause confusion) over the holistic test
reiterating that the OK Hotdog Inasal mark actually brandishes a literal (consideration of the entirety of the marks as applied to the products,
copy of the most recognizable feature of the Mang Inasal mark. including the labels and packaging).

Verily, to fall under the ambit of Section 123. l(d)(iii) and be regarded Applying the dominancy test, Respondents' use of the "Big Mak" mark
as likely to deceive or cause confusion upon the purchasing public, results in likelihood of confusion. Aurally the two marks are the same,
a prospective mark must be shown to meet 2 minimum conditions: with the first word of both marks phonetically the same, and the second
1. The prospective mark must nearly resemble or be similar to an word of both marks also phonetically the same. Visually, the two marks
earlier mark; and have both two words and six letters, with the first word of both marks
2. The prospective mark must pertain to goods or services that are having the same letters and the second word having the same first two
either identical, similar or related to the goods or services letters.
represented by the earlier mark.
Holistic test
The Holistic Test requires that the entirety of the marks in question
be considered in resolving confusing similarity. Comparison of words
is not the only determining factor. The trademarks in their entirety as
Skechers USA, Inc. vs. Inter Pacific Industrial Trading Corp.
they appear in their respective labels or hang tags must also be
considered in relation to the goods to which they are attached. (Mighty
The Dominancy Test focuses on the similarity of the prevalent or Corporation et al vs. E. & J. Gallo Winery et al.)
dominant features of the competing trademarks that might cause
Del Monte Corporation et al vs. CA et al.
confusion, mistake, and deception in the mind of the purchasing public.
Duplication or imitation is not necessary; neither is it required that the
The question is not whether the two articles are distinguishable by their
mark sought to be registered suggests an effort to imitate. Given more
label when set side by side but whether the general confusion made
consideration are the aural and visual impressions created by the
by the article upon the eye of the casual purchaser who is
marks on the buyers of goods, giving little weight to factors like prices,
unsuspicious and off his guard, is such as to likely result in his
quality, sales outlets, and market segments.
confounding it with the original. As observed in several cases, the
general impression of the ordinary purchaser, buying under the
Applying the Dominancy Test to the case at bar, this Court finds that
normally prevalent conditions in trade and giving the attention such
the use of the stylized "S" by respondent in its Strong rubber shoes
purchasers usually give in buying that class of goods is the touchstone.
infringes on the mark already registered by petitioner with the IPO.
While it is undisputed that petitioner's stylized "S" is within an oval
To determine whether a trademark has been infringed, we must
design, to this Court's mind, the dominant feature of the trademark is
consider the mark as a whole and not as dissected. If the buyer is
the stylized "S," as it is precisely the stylized "S" which catches the eye
deceived, it is attributable to the marks as a totality, not usually to any
of the purchaser.
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
Thus, even if respondent did not use an oval design, the mere fact that
of which may be dissipated as soon as the court assumes to analyze
it used the same stylized "S", the same being the dominant feature of
carefully the respective features of the mark.
petitioner's trademark, already constitutes infringement under the
Dominancy Test.
At that, even if the labels were analyzed together it is not difficult to see
that the Sunshine label is a colorable imitation of the Del Monte
Philippine Nut Industry, Inc. vs. Standard Brands Incorporated
trademark. The predominant colors used in the Del Monte label are
et al.
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
Test of dominancy same. Although the logo of Sunshine is not a tomato, the figure
Applying the dominancy test – In the cases involving infringement of nevertheless approximates that of a tomato.
trademark brought before the Court it has been consistently held that
there is infringement of trademark when the use of the mark involved Sunshine, despite the many choices available to it and notwithstanding
would be likely to cause confusion or mistake in the mind of the public that the caution "Del Monte Corporation, Not to be Refilled" was
or to deceive purchasers as to the origin or source of the commodity; embossed on the bottle, still opted to use the Del Monte’s bottle to
that whether or not a trademark causes confusion and is likely to market a product which Philpack also produces. This clearly shows the
deceive the public is a question of fact which is to be resolved by Sunshine Sauce's bad faith and its intention to capitalize on the latter's
applying the "test of dominancy", meaning, if the competing trademark reputation and goodwill and pass off its own product as that of Del
contains the main or essential or dominant features of another by Monte.
reason of which confusion and deception are likely to result, then
infringement takes pIace; that duplication or imitation is not necessary,
Emerald Garment Manufacturing Corp. vs. CA et al.
a similarity in the dominant features of the trademarks would be
sufficient.
The holistic test mandates that the entirety of the marks in question
must be considered in determining confusing similarity. In determining
whether the trademarks are confusingly similar, a comparison of the committed regardless of whether there is actual sale of goods
words is not the only determinant factor. The trademarks in their or services using the infringing material. (Sec. 155, IPC)
entirety as they appear in their respective labels or hang tags must
also be considered in relation to the goods to which they are attached. McDonalds Corporation et al vs. L.C. Big Mak Burger, Inc.
The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both Elements of trademark infringement:
labels in order that he may draw his conclusion whether one is (1) the validity of plaintiff's mark;
confusingly similar to the other. (2) the plaintiff's ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged
We considered the trademarks involved as a whole and rule that infringer results in likelihood of confusion.
petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private
respondent's "LEE" trademark. Etepha, A.G. vs. Director of Patents et al.

Emerald Garment Manufacturing Corporation's trademark is the whole In the solution of a trademark infringement problem, regard too
"STYLISTIC MR. LEE." Although on its label the word "LEE" is should be given to the class of persons who buy the particular
prominent, the trademark should be considered as a whole and not product and the circumstances ordinarily attendant to its
piecemeal. acquisition. The medicinal preparation clothed with the trademarks in
question, are unlike articles of everyday use such as candies, ice
The dissimilarities between the two marks become conspicuous, cream, milk, soft drinks and the like which may be freely obtained by
noticeable and substantial enough to matter especially in the light of anyone, anytime, anywhere. Petitioner's and respondent's products are
the following variables that must be factored in. to be dispensed upon medical prescription.

Bristol Myers Company vs. Director of Patents The respective labels say so. An intending buyer must have to go
first to a licensed doctor of medicine; he receives instructions as to
The trademarks are not confusingly similar. In determining whether two what to purchase; he reads the doctor's prescription; he knows what he
trademarks are confusingly similar, the test is not simply to take their is to buy. He is not of the incautious, unwary, unobservant or
words and compare the spelling and pronunciation of said words. unsuspecting type; he examines the product sold to him; he checks to
Rather, it is to consider the two marks in their entirety, as they appear find out whether it conforms to the medical prescription. The common
in the respective labels, in relation to the goods to which they are trade channel is the pharmacy or the drugstore. Similarly, the
attached. pharmacist or druggist verifies the medicine sold. The margin of error
in the acquisition of one for the other is quite remote.
Applying this test to the trademarks involved in this case, it is at once
evident that the Director of Patents did not err in finding no confusing
similarity. For though the words "BIOFERIN" and "BUFFERIN" have
the same suffix and similar sounding prefixes, they appear in their
respective labels with strikingly different backgrounds and
surroundings, as to color , size and design.

Accordingly, taken as they will appear to a prospective customer, the Marvex Commercial Co., Inc. vs. Petra Hawpia and Co. et al.
trademark in question are not apt to confuse. Furthermore, the product
of the applicant is expressly stated as dispensable only upon doctor's Similarity in sounds fatal to registration
prescription, while that of oppositor does not require the same. Two letters of "SALONPAS" are missing in "LIONPAS" : the first letter
a and the letter s. Be that as it may, when the two words are
The chances of being confused into purchasing one for the other are pronounced, the sound effects are confusingly similar. And where
therefore all the more rendered negligible. Although oppositor avers goods are advertised over the radio, similarity in sound is of especial
that some drugstores sell "BIOFERIN" without asking for a doctor's significance.
prescription, the same if true would be an irregularity not attributable to “SALONPAS" and "LIONPAS", when spoken, sound very much alike.
the applicant, who has already clearly stated the requirement of a Similarity of sound is sufficient ground for this Court to rule that the two
doctor's prescription upon the face of the label of its product. marks are confusingly similar when applied to merchandise of the
same descriptive properties. The registration of "LIONPAS" cannot
Trademark infringement therefore be given due course.

Societe Des Produits Nestle SA vs. Dy

Trademark Infringement; Remedies
Any person who shall, without the consent of the owner of the Elements of infringement under R.A. No. 8293 are as follows:
registered mark: (1) The trademark being infringed is registered in the Intellectual
1. Use in commerce any reproduction, counterfeit, copy, or Property Office; however, in infringement of trade name, the same
colorable imitation of a registered mark or the same container need not be registered;
or a dominant feature thereof in connection with the sale, offering (2) The trademark or trade name is reproduced, counterfeited,
for sale, distribution, advertising of any goods or services copied, or colorably imitated by the infringer;
including other preparatory steps necessary to carry out the sale (3) The infringing mark or trade name is used in connection with the
of any goods or services on or in connection with which such use sale, offering for sale, or advertising of any goods, business or
is likely to cause confusion, or to cause mistake, or to deceive; or services; or the infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles or advertisements
2. Reproduce, counterfeit, copy or colorably imitate a intended to be used upon or in connection with such goods,
registered mark or a dominant feature thereof and apply such business or services;
reproduction, counterfeit, copy or colorable imitation to labels, (4) The use or application of the infringing mark or trade name is
signs, prints, packages, wrappers, receptacles or advertisements likely to cause confusion or mistake or to deceive purchasers or
intended to be used in commerce upon or in connection with the others as to the goods or services themselves or as to the source
sale, offering for sale, distribution, or advertising of goods or or origin of such goods or services or the idenity of such business;
services on or in connection with which such use is likely to and
cause confusion, or to cause mistake, or to deceive, shall be (5) It is without the consent of the trademark or trade name owner or
liable in a civil action for infringement by the registrant for the the assignee thereof.
remedies hereinafter set forth:
Taiwan Kolin Corporation Ltd. vs. Kolin Electronics Co. Inc.
Provided, That the infringement takes place at the moment any of
the acts stated in Subsection 155.1 or this subsection are
Mere uniformity in categorization does not automatically preclude defraud another of his legitimate trade, or any subsequent vendor
registration of such goods or any agent of any vendor engaged in selling such
Mere uniformity in categorization, by itself, does not automatically goods with a like purpose;
preclude the registration of what appears to be an identical mark, if that
be the case. In fact, this Court, in a long line of cases, has held that (b) Any person who by any artifice, or device, or who employs
such circumstance does not necessarily result in any trademark any other means calculated to induce the false belief that
infringement. such person is offering the services of another who has identified
such services in the mind of the public; or
Verily, whether or not the products covered by the trademark sought to
be registered by Taiwan Kolin, on the one hand, and those covered by (c) Any person who shall make any false statement in the course of
the prior issued certificate of registration in favor of Kolin Electronics, trade or who shall commit any other act contrary to good faith of a
on the other, fall under the same categories in the NCL is not the sole nature calculated to discredit the goods, business or services of
and decisive factor in determining a possible violation of Kolin another.
Electronics’ intellectual property right should petitioner’s application be
granted.  The remedies provided by Sections 156, 157 and 161 shall apply
mutatis mutandis. (Sec. 166, IPC)
It is hornbook doctrine, as held in the above-cited cases, that emphasis
should be on the similarity of the products involved and not on the Coca Cola Bottlers, Phils., Inc. vs. Gomez et al.
arbitrary classification or general description of their properties
or characteristics. The mere fact that one person has adopted and Unfair competition under the IP Code
used a trademark on his goods would not, without more, prevent the Unfair competition, previously defined in Philippine jurisprudence in
adoption and use of the same trademark by others on unrelated relation with R.A. No. 166 and Articles 188 and 189 of the Revised
articles of a different kind. Penal Code, is now covered by Section 168 of the IP Code as this
Code has expressly repealed R.A. No. 165 and R.A. No. 166, and
The ordinarily intelligent buyer is not likely to be confused Articles 188 and 189 of the Revised Penal Code.
While both competing marks refer to the word “KOLIN” written in upper
case letters and in bold font, the Court at once notes the distinct visual The law does not thereby cover every unfair act committed in the
and aural differences between them: Kolin Electronics’ mark is course of business; it covers only acts characterized by deception
italicized and colored black while that of Taiwan Kolin is white in or any other means contrary to good faith in the passing off of
pantone red color background. The differing features between the two, goods and services as those of another who has established goodwill
though they may appear minimal, are sufficient to distinguish one in relation with these goods or services, or any other act calculated to
brand from the other. produce the same result. What unfair competition is, is further
particularized under Section 168.3 when it provides specifics of what
This Court finds that the differences between the two marks, subtle as unfair competition is without in any way limiting the scope of protection
they may be, are sufficient to prevent any confusion that may ensue against unfair competition.
should petitioner’s trademark application be granted. All told, the Court
is convinced that petitioner’s trademark registration not only covers Unfair competition been defined as the passing off (or palming off) or
unrelated good, but is also incapable of deceiving the ordinary attempting to pass off upon the public the goods or business of one
intelligent buyer. person as the goods or business of another with the end and probable
effect of deceiving the public.

True test of unfair competition

It formulated the "true test" of unfair competition, whether the acts of
defendant are such as are calculated to deceive the ordinary
Unfair competition buyer making his purchases under the ordinary conditions which
prevail in the particular trade to which the controversy relates.

Unfair Competition, Rights, Regulation and One of the essential requisites in an action to restrain unfair
Remedies competition is proof of fraud; the intent to deceive must be shown
1. A person who has identified in the mind of the public the before the right to recover can exist. The advent of the IP Code has not
goods he manufactures or deals in, his business or services significantly changed these rulings as they are fully in accord with what
from those of others, whether or not a registered mark is Section 168 of the Code in its entirety provides. Deception, passing
employed, has a property right in the goodwill of the said goods, off and fraud upon the public are still the key elements that must be
business or services so identified, which will be protected in the present for unfair competition to exist.
same manner as other property rights.
Hoarding, not unfair competition under the IP Code
2. Any person who shall employ deception or any other means The critical question, however, is not the intrinsic unfairness of the act
contrary to good faith by which he shall pass off the goods of hoarding; what is critical for purposes of Section 168.3 (c) is to
manufactured by him or in which he deals, or his business, or determine if the hoarding, as charged, "is of a nature calculated to
services for those of the one having established such goodwill, or discredit the goods, business or services" of the petitioner. The Court
who shall commit any acts calculated to produce said result, shall holds that it is not. Hoarding as defined by the petitioner is not even an
be guilty of unfair competition, and shall be subject to an action act within the contemplation of the IP Code.
therefor.
It does not relate to any patent, trademark, trade name or service mark
3. In particular, and without in any way limiting the scope of that the respondents have invaded, intruded into or used without
protection against unfair competition, the following shall be proper authority from the petitioner. Nor are the respondents alleged to
deemed guilty of unfair competition: be fraudulently "passing off" their products or services as those of the
petitioner. The respondents are not also alleged to be undertaking any
(a) Any person, who is selling his goods and gives them the representation or misrepresentation that would confuse or tend to
general appearance of goods of another manufacturer or confuse the goods of the petitioner with those of the respondents, or
dealer, either as to the goods themselves or in the wrapping of vice versa.
the packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would Test of unfair competition
be likely to influence purchasers to believe that the goods 1. First test
offered are those of a manufacturer or dealer, other than the Given the IP Code's specific focus, a first test that should be made
actual manufacturer or dealer, or who otherwise clothes the when a question arises on whether a matter is covered by the Code
goods with such appearance as shall deceive the public and is to ask if it refers to an intellectual property as defined in the Code.
If it does not, then coverage by the Code may be negated.
2. Second test
representation
A second test, if a disputed matter does not expressly refer to an
 Any person who, on or in connection with any goods or services,
intellectual property right as defined above, is whether it falls under
or any container for goods, uses in commerce any word, term,
the general "unfair competition" concept and definition under
name, symbol, or device, or any combination thereof, or any false
Sections 168.1 and 168.2 of the Code.
designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which:
The question then is whether there is deception or any other similar
act in passing off of goods or services to be those of another who
a. Is likely to cause confusion, or to cause mistake, or to
enjoys established goodwill.
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
Sec. 168, IPC explained
sponsorship, or approval of his or her goods, services, or
- Section 168.1 speaks of a person who has earned goodwill
commercial activities by another person; or
with respect to his goods and services and who is entitled to
protection under the Code, with or without a registered mark.
b. In commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his
- Section 168.2, as previously discussed, refers to the general
or her or another person’s goods, services, or commercial
definition of unfair competition.
activities, shall be liable to a civil action for damages and
injunction provided in Sections 156 and 157 of this Act by
- Section 168.3, on the other hand, refers to the specific
any person who believes that he or she is or is likely to be
instances of unfair competition, with:
damaged by such act.
a. referring to the sale of goods given the appearance of the
 Any goods marked or labelled in contravention of the provisions of
goods of another;
this Section shall not be imported into the Philippines or admitted
b. to the inducement of belief that his or her goods or services
entry at any customhouse of the Philippines.
are that of another who has earned goodwill; and
c. being a "catch all" clause whose coverage the parties now
The owner, importer, or consignee of goods refused entry at any
dispute.
customhouse under this section may have any recourse under the
customs revenue laws or may have the remedy given by this Act
Superior Commercial Enterprises, Inc. vs. Kunan Enterprises
in cases involving goods refused entry or seized. (Sec.169, IPC)
Ltd et al.

There can be trademark infringement without unfair competition Remedies

There can be trademark infringement without unfair competition such
as when the infringer discloses on the labels containing the mark that Actions, and Damages and Injunction for
he manufactures the goods, thus preventing the public from being
deceived that the goods originate from the trademark owner. In this Infringement
case, no issue of confusion arises because the same manufactured - The owner of a registered mark may recover damages from any
products are sold; only the ownership of the trademarks is at issue. person who infringes his rights, and the measure of the damages
suffered shall be either the reasonable profit which the
Shell Company, Ltd. vs. Insular Petroleum Refining Co. et al. complaining party would have made, had the defendant not
infringed his rights, or the profit which the defendant actually
There is no prohibition for respondent to sell its goods, even in places made out of the infringement, or in the event such measure of
where the goods of petitioner had long been sold or extensively damages cannot be readily ascertained with reasonable certainty,
advertised. then the court may award as damages a reasonable percentage
based upon the amount of gross sales of the defendant or the
Respondent should not be blamed if some petitioner's dealers by Insoil value of the services in connection with which the mark or trade
oil, as long as respondent does not deceive said dealers. If petitioner's name was used in the infringement of the rights of the
dealers pass off Insoil oil as Shell oil, that is their responsibility. complaining party.
- On application of the complainant, the court may impound during
If there was any such effort to deceive the public, the dealers to whom the pendency of the action, sales invoices and other documents
the defendant (respondent) sold its products and not the latter, were evidencing sales.
legally responsible for such deception. The passing of said oil,
therefore, as product of Shell was not performed by the respondent or - In cases where actual intent to mislead the public or to
its agent, but petitioner's dealers, which act respondent had no control defraud the complainant is shown, in the discretion of the court,
whatever. the damages may be doubled.

Shell Company, Ltd. vs. Insular Petroleum Refining Co. et al. - The complainant, upon proper showing, may also be granted
injunction. (Sec. 156, IPC)
There is unfair competition even if there has been no sale
To hold that the act of selling is an indispensable element of the crime Power of Court to Order Infringing Material
of unfair competition is illogical because if the law punishes the seller
of imitation goods, then with more reason should the law penalize the Destroyed
manufacturer. - In any action arising under this Act, in which a violation of any
right of the owner of the registered mark is established, the court
Test of unfair competition may order that goods found to be infringing be, without
The test of unfair competition is whether certain goods have been compensation of any sort, disposed of outside the channels of
intentionally clothed with an appearance which is likely to deceive commerce in such a manner as to avoid any harm caused to the
the ordinary purchasers exercising ordinary care. The manufacture right holder, or destroyed; and all labels, signs, prints, packages,
of the "Spalding" balls was obviously done to deceive would-be buyers. wrappers, receptacles and advertisements in the possession of
The projected sale would have pushed through were it not for the the defendant, bearing the registered mark or trade name or any
timely seizure of the goods made by the NBI. That there was intent to reproduction, counterfeit, copy or colorable imitation thereof, all
sell or distribute the product to the public cannot also be disputed given plates, molds, matrices and other means of making the same,
the number of goods manufactured and the nature of the machinery shall be delivered up and destroyed.
and other equipment installed in the factory.
- In regard to counterfeit goods, the simple removal of the
trademark affixed shall not be sufficient other than in
False designations of origin; False description or exceptional cases which shall be determined by the Regulations,
 to permit the release of the goods into the channels of commerce. whether or not it is licensed to do business in the Philippines under
(Sec. 157, IPC) existing laws. (Sec.160, IPC)

Damages; Requirement of Notice Authority to Determine Right to Registration

- In any suit for infringement, the owner of the registered mark In any action involving a registered mark, the court may determine
shall not be entitled to recover profits or damages unless the the right to registration, order the cancellation of a registration, in
acts have been committed with knowledge that such whole or in part, and otherwise rectify the register with respect to the
imitation is likely to cause confusion, or to cause mistake, or registration of any party to the action in the exercise of this. Judgment
to deceive. and orders shall be certified by the court to the Director, who shall
make appropriate entry upon the records of the Bureau, and shall be
- Such knowledge is presumed if the registrant gives notice that controlled thereby. (Sec. 161, IPC)
his mark is registered by displaying with the mark the words
‘”Registered Mark” or the letter R within a circle or if the defendant
had otherwise actual notice of the registration. (Sec. 158, IPC)
Action for False or Fraudulent Declaration
Any person who shall procure registration in the Office of a mark by
a false or fraudulent declaration or representation, whether oral or
Limitations to Actions for Infringement in writing, or by any false means, shall be liable in a civil action by any
- Notwithstanding the provisions of Section 155 hereof, a person injured thereby for any damages sustained in consequence
registered mark shall have no effect against any person who, thereof (Sec. 162, IPC)
in good faith, before the filing date or the priority date, was
using the mark for the purposes of his business or enterprise: Marks: Well-Known Marks
1) The countries of the Union undertake, ex officio if their legislation
Provided, That his right may only be transferred or assigned
so permits, or at the request of an interested party, to refuse or to
together with his enterprise or business or with that part of his
cancel the registration, and to prohibit the use, of a trademark
enterprise or business in which the mark is used.
which constitutes a reproduction, an imitation, or a translation,
liable to create confusion, of a mark considered by the competent
- Where an infringer who is engaged solely in the business of
authority of the country of registration or use to be well known in
printing the mark or other infringing materials for others is an
that country as being already the mark of a person entitled to the
innocent infringer, the owner of the right infringed shall be
benefits of this Convention and used for identical or similar goods.
entitled as against such infringer only to an injunction against
These provisions shall also apply when the essential part of the
future printing.
mark constitutes a reproduction of any such well-known mark or
an imitation liable to create confusion therewith.
- Where the infringement complained of is contained in or is
part of paid advertisement in a newspaper, magazine, or
2) A period of at least five years from the date of registration shall be
other similar periodical or in an electronic communication,
allowed for requesting the cancellation of such a mark. The
the remedies of the owner of the right infringed as against the
countries of the Union may provide for a period within which the
publisher or distributor of such newspaper, magazine, or other
prohibition of use must be requested.
similar periodical or electronic communication shall be limited to
an injunction against the presentation of such advertising
3) No time limit shall be fixed for requesting the cancellation or the
matter in future issues of such newspapers, magazines, or other
prohibition of the use of marks registered or used in bad faith.
similar periodicals or in future transmissions of such electronic
(Art. 6bis, Paris convention)
communications.

The limitations of this subparagraph shall apply only to

innocent infringers:

Provided, That such injunctive relief shall not be available to the

owner of the right infringed with respect to an issue of a
newspaper, magazine, or other similar periodical or an electronic
communication containing infringing matter where restraining the
dissemination of such infringing matter in any particular issue of
such periodical or in an electronic communication would delay the
delivery of such issue or transmission of such electronic Trade Names
communication is customarily conducted in accordance with the A trade name shall be protected in all the countries of the Union
sound business practice, and not due to any method or device without the obligation of filing or registration, whether or not it
adopted to evade this section or to prevent or delay the issuance forms part of a trademark. (Art. 8, Paris convention)
of an injunction or restraining order with respect to such infringing
matter; and -----------------------END OF FIRST EXAM COVERAGE----------------------

Humility and
- There shall be no infringement of trademarks or tradenames of
imported or sold drugs and medicines allowed under Section
72.1 of this Act, as well as imported or sold off-patent drugs and
medicines:

Perseverance ⚖️
- Provided, That said drugs and medicines bear the registered
marks that have not been tampered, unlawfully modified, or
infringed upon as defined under Section 155 of this Code. (Sec.
159, IPC)

Right of Foreign Corporation to Sue in Trademark

or Service Mark Enforcement Action
Any foreign national or juridical person who meets the
requirements of Section 3 of this Act and does not engage in
business in the Philippines may bring a civil or administrative action
hereunder for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false description,