Patent 2

KORBEL FOUNDATION COLLEGE, INC.
Purok Spring 1, Brgy. Morales, Koronadal City

Contact No. 228-1996/887-2051
Business Department
korbelbusinessdepartment@gmail.com
Lecturer: John Jay A. Locsin, JD A.Y. 2nd SEMESTER, 2022-2023
TRADEMARKS (1) A trade name is any individual name or surname, firm

name, device or word used by manufacturers,
Any visible sign (word, group of words, symbol, logo or industrialists, merchants and others to identify their
combination thereof) capable of distinguishing the goods businesses, vocations or occupations (Converse Rubber
(trademark) or services (service mark) of an enterprise Corp., v. Universal Rubber Products, Inc., G.R. No.
and shall include a stamped or marked container of goods 279076, January 8, 1987).
(Sec. 121.1, IP Code)
(2) Trade name is any designation which:
A trademark is any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof, a. is adopted and used by person to denominate goods
adopted and used by a manufacturer or merchant on his which he markets, or services which he renders, or
goods to identify and distinguish them from those business which he conducts, or has come to be so used
manufactured, sold, or dealt by others. (Société des by other, and
Produits, Nestlé, S.A. vs. Puregold Price Club, Inc., G.R.
No. 217194, September 6, 2017) b. through its association with such goods, services or
business, has acquired special significance as the name
Functions and Purpose of a Trademark thereof, and,
(1) To indicate the origin or ownership of the goods and c. the use of which for the purpose stated in (a) is
to which it is affixed; prohibited neither by legislative enactment nor by
otherwise defined public policy. (Juan vs. Juan, G.R. No.
(2) To guarantee that those articles come up to a certain 221732. August 23, 2017)
standard of quality;
(3) To advertise the goods (Mirpuri v. CA, G.R. No.

114508, November 19, 1999 Distinctiveness of Trademarks: A potential trademark may
be classified from weakest to strongest: (Zantarain’s Inc.
v. Old Grove Smokehouse, 698 F.2d 786, February 25,
MARKS vs. COLLECTIVE MARKS vs. TRADE NAMES 1983)
Marks (1) Generic – refers to a particular genus or class of which

an individual article or service is a member.
Any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise (a) It can never attain trademark protection.
and shall include a stamped or marked container of (b) If a registered trademark becomes generic as to a
goods. (Sec. 121.1, IP Code) It is “intellectual property particular product or service, the mark’s registration is
deserving protection by law”, and “susceptible to subject to cancellation.
registration if it is crafted fancifully or arbitrarily and is
capable of identifying and distinguishing the goods of one Examples: Thermos for vacuum-insulated flask,
manufacturer or seller from those of another.” (Dy vs. Styrofoam a polystyrene foam
Koninklijke Philips Electronics, N.V., G.R. No. 186088.
March 22, 2017)
Collective Marks (2) Descriptive – identifies a characteristic or quality of an

article or service such as its color, odor, function,
Any visible sign designated as such in the application for dimensions, or ingredient.
registration and capable of distinguishing the origin or any
other common characteristic, including the quality of General Rule: It is not ordinarily protectable as a
goods or services of different enterprises which use the trademark because, like a generic term, it belongs to the
sign under the control of the registered owner of the public domain. (Ong Ai Gui v. 172 Director of Patents,
collective mark (Sec. 121.2, IPC). G.R. No. L-6235, March 28, 1995)
Trade Name Examples: Fragrant for perfumes or cologne and

American Airlines provides flight services in America
The name or designation identifying or distinguishing an
enterprise (Sec. 121.3, IPC) Exception: When the doctrine of secondary meaning
applies
Contact No. 228-1996/887-2051
Business Department
Doctrine of Secondary Meaning Declaration of Actual Use (DAU)
This doctrine is to the effect that a word or phrase The applicant or the registrant is required to file a
originally incapable of exclusive appropriation with Declaration of Actual Use of the mark after filing and
reference to an article on the market, because registration.
geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively Note: Failure to file declaration of actual use automatically
by one producer with reference to his article that, in that results in the denial of the registration or the cancellation
trade and to that branch of the purchasing public, the word of the registration by operation of law. (Secs. 124.2 & 145,
or phrase has come to mean that the article was his IPC)
product (Ang vs. Teodoro, G. R. No. 48226, December
14, 1942).
EFFECT OF REGISTRATION
Secondary meaning is established when a descriptive
mark no longer causes the public to associate the goods A certificate of registration of a mark shall be prima facie
with a particular place but to associate the goods with a evidence of:
particular source. (Shang Properties Realty Corp. v. St.
Francis Development Corp., G.R. No. 190706, 2014) 1. The validity of the registration,
2. The registrant's ownership of the mark, and
ACQUISITION OF OWNERSHIP 3. The registrant's exclusive right to use the same in

connection with the goods or services and those that are
Acquisition of Ownership of Mark The rights in a mark related thereto specified in the certificate. (Sec. 138, IPC)
shall be acquired through registration made validly in
accordance with the provisions of this law. (Sec. 122, IPC)
However, such presumption may be rebutted by proof that
the registration was obtained fraudulently or contrary to
CONCEPT OF ACTUAL USE the provisions of the Intellectual Property Code. (Medina
v. Global Quest Ventures, Inc., G.R. No. 213815,
A trademark gives its owner particular rights but to keep February 8, 2021; Birkenstock Orthopaedie GMBH and
enjoying those rights, the trademark has to keep being Co. Kg vs. Philippine Shoe Expo Marketing Corporation.
used in the Philippines. For the purpose of maintaining the G.R. No. 194307, November 20, 2013)
validity of the registration, proof of actual use of the mark
must be subsequently shown. (Rule 204 of IPOPHL MC
No. 17-010)
Requirements for a mark to be registered:
(1) It is a visible sign (not sounds or scents)

Prior use of mark not required before registration Prior use
in the Philippines is not required before registration. What (2) Capable of distinguishing one’s goods and services
is necessary is that there must be actual use after from another. (Sec. 121.2, IPC).
registration. The registrant shall file a declaration of actual Acquisition of Ownership of Trade Name Ownership of a
use of the mark with evidence to that effect within 3 years trade name may be acquired not necessarily by
from the filing date of application otherwise it may be registration but by adoption and use in trade or commerce
cancelled. The registrant is required tofile a declaration of (Zuneca Pharmaceutical v. Natraphann, Inc., G.R. No,
actual use and evidence to that effect, or shall show valid 711850, September 8, 2020, J. Caguiao)
reasons for non-use within 1 year from the fifth
anniversary date of registration. (Sundiang & Aquino,
Reviewer on Commercial Law, 2017, p. 540)
Contact No. 228-1996/887-2051
Business Department
Protection of Trade Names (d) Is identical with a registered mark belonging to a

different proprietor or a mark with an earlier filing or
A trade name need not be registered with the IPO before priority date, in respect of:
an infringement suit may be filed by its owner against the
owner of an infringing trademark. Trade names shall be i. The same goods or services, or
protected, even prior to or without registration, against
any unlawful act committed by third parties. (Section ii. Closely related goods or services, or
165.2, IPC) All that is required is that the trade name is iii. If it nearly resembles such a mark as to be likely to
previously used in trade or commerce in the Philippines deceive or cause confusion; (Section 123.1 (d),
(Coffee Partners, Inc. v. San Francisco Coffee and IPC)
Roastery Inc., G.R. No. 169594, March 3; 2010)
A mark cannot be registered if it can be regarded as likely
to deceive or cause confusion upon the purchasing public,
Doctrine of Secondary Meaning a prospective mark must be shown to meet two (2)
minimum conditions:
The doctrine of secondary meaning means that a word or
phrase originally incapable of exclusive appropriation with 1. The prospective mark must nearly resemble or be
reference to an article in the market has, through its long similar to an earlier mark; and
and exclusive use by one entity has effectively been 2. The prospective mark must pertain to goods or services
distinguished and identified as that representing the user that are either identical, similar or related to the goods or
and its products. services represented by the earlier mark. (Mang Inasal
Philippines, Inc., vs. IFP Manufacturing Corporation, G.R.
No. 221717, June 19, 2017)
Applicable to Trade Names The doctrine’s application has
been extended to corporate names since the right to use (e) Is identical with, or confusingly similar to, or constitutes
a corporate name to the exclusion of others is based upon a translation of a mark which is considered by the
the same principle which underlies the right to use a competent authority of the Philippines to be well-known
particular trademark or tradename. (Lyceum of the internationally and in the Philippines, whether or not it is
Philippines, Inc. v. Court of Appeals, G.R. No. 101897, registered here, as being already the mark of a person
1993) other than the applicant for registration, and used for
identical or similar goods or services; (Section 123.1 (e),
IPC)
Non-registrable Marks (f) Is identical with, or confusingly similar to, or constitutes

a translation of a mark considered well-known in
A mark cannot be registered if it: accordance with the preceding paragraph, which is
(a) Consists of immoral, deceptive or scandalous matter, registered in the Philippines with respect to goods or
or matter which may disparage or falsely suggest a services which are not similar to those with respect to
connection with persons, living or dead, institutions, which registration is applied for: Provided, That use of the
beliefs, or national symbols, or bring them into contempt mark in relation to those goods or services would indicate
or disrepute; (Section 123.1 (a), IPC) a connection between those goods or services, and the
owner of the registered mark: Provided further, That the
(b) Consists of the flag or coat of arms or other insignia of interests of the owner of the registered mark are likely to
the Philippines or any of its political subdivisions, or of any be damaged by such use; (Section 123.1 (f), IPC)
foreign nation, or any simulation thereof; (Section 123.1
(b), IPC) (g) Is likely to mislead the public, particularly as to the
nature, quality, characteristics or geographical origin of
(c) Consists of a name, portrait or signature identifying a the goods or services; (Section 123.1 (g), IPC)
particular living individual except by his written consent,
or the name, signature, or portrait of a deceased (h) Consists exclusively of signs that are generic for the
President of the Philippines, during the life of his widow, if goods or services that they seek to identify; (Section
any, except by written consent of the widow; (Section 123.1 (h), IPC)
123.1 (c), IP
Contact No. 228-1996/887-2051
Business Department
(i) Consists exclusively of signs or of indications that have

become customary or usual to designate the goods or
services in everyday language or in bona fide and Criteria in determining whether a mark is well known:
established trade practice; (Section 123.1 (i), IPC) (1) Duration, extent and geographical area of any use of
(j) Consists exclusively of signs or of indications that may the mark, in particular, the duration, extent and
serve in trade to designate the kind, quality, quantity, geographical area of any promotion of the mark, including
intended purpose, value, geographical origin, time or advertising or publicity and the presentation, at fairs or
production of the goods or rendering of the services, or exhibitions, of the goods and/or services to which the
other characteristics of the goods or services; (Section mark applies;
123.1 (j), IPC) (2) Market share, in the Philippines and in other countries,
(k) Consists of shapes that may be necessitated by of the goods and/or services to which the mark applies;
technical factors or by the nature of the goods themselves (3) Degree of the inherent or acquired distinction of the
or factors that affect their intrinsic value; (Section 123.1 mark;
(k), IPC)
(4) Quality-image or reputation acquired by the mark;
(l) Consists of color alone, unless defined by a given form;
(Section 123.1 (l), IPC) or (5) Extent to which the mark has been registered in the
world;
(m) Is contrary to public order or morality. (Section 123.1
(m), IPC) (6) Exclusivity of registration attained by the mark in the
world;
(7) Extent to which the mark has been used in the world;
Exceptions to Non-Registrability of Descriptive Marks,
Geographical Origin, Shapes, and Colors. (8) Exclusivity of use attained by the mark in the world;
The prohibition on the non-registrability of descriptive (9) Commercial value attributed to the mark in the world;
marks, geographical origin, shapes and colors is not
absolute. (10) Record of successful protection of the rights in the
mark;
Under Sec. 123.2, if the element of distinctiveness can be
proven and the same has been used in connection with (11) Outcome of litigations dealing with the issue of
goods for such period of time required by law then the said whether the mark is a well-known mark; and
marks can be registered. The Intellectual Property Office (12) Presence or absence of identical or similar marks
"may accept as prima facie evidence that the mark has validly registered for or used on identical or similar goods
become distinctive, as used in connection with the or services and owned by persons other than the person
applicant's goods or services in commerce, proof of claiming that his mark is a well-known mark. (Rule 102,
substantially exclusive and continuous use thereof by the Rules and Regulations on Trademarks, Service marks,
applicant in commerce in the Philippines for five (5) years Tradenames and Marked or Stamped Container)
before the date on which the claim of distinctiveness is
made." (Section 123.2, IPC)
WELL-KNOWN MARKS RIGHTS CONFERRED BY REGISTRATION
In determining whether a mark is well-known, account (1) Right to the exclusive use of the mark for one ‘s own
shall be taken of the knowledge of the relevant sector of goods or services.
the public, rather than of the 177 public at large, including
A certificate of registration of a mark shall be prima facie
knowledge in the Philippines which has been obtained as
evidence of the validity of the registration, the registrant‘s
a result of the promotion of the mark. (Sec. 123, IPC) The
ownership of the mark, and of the registrant‘s exclusive
question of whether or not a trademark is considered
right to use the same in connection with the goods or
“well-known” is factual in nature, involving as it does the
services and those that are related thereto specified in the
appreciation of evidence adduced before the BLA-IPO.
certificate. (Sec 138, IPC)
(Sehwani, Inc. v. In-N-Out Burger, Inc., G.R. No. 171053,
October 15, 2007)
Contact No. 228-1996/887-2051
Business Department
The registered trademark owner may use its mark on the Use of third parties of names, etc. similar to
same or similar products, in different segments of the registered trademark
market, and at different price levels depending on
variations of the products for specific segments of the Notwithstanding any laws or regulations providing for any
market. The Court is cognizant that the registered obligation to register trade names, such names shall be
trademark owner enjoys protection in product and market protected, even prior to or without registration, against
areas that are the normal potential expansion of his any unlawful act committed by third parties. In particular,
business. (Dermaline, Inc. vs. Myra Pharmaceuticals, any subsequent use of the trade name by a third party,
Inc., G.R. No. 190065. August 16, 2010) whether as a trade name or a mark or collective mark, or
any such use of a similar trade name or mark, likely to
mislead the public, shall be deemed unlawful. (Rule 104,
2nd par., IPOPHL Memorandum Circular No. 17-010)
(2) Exclusive right to prevent all third parties from using
identical or similar signs or containers. (Sec 147.1, IPC) However, 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
(3) General Rule: There is an exclusive right to prevent geographical name, or exact indications concerning the
third persons from using identical or similar signs or kind, quality, quantity, destination, value, place of origin,
containers for identical or similar goods or services where or time of production or of supply, of their goods or
such use would result in a likelihood of confusion In case services: Provided, that such use:
of the use of an identical sign for identical goods or (1) Is confined to the purposes of mere identification or
services, a likelihood of confusion shall be presumed. information, and
(Gepty, Intellectual Property Law Compendium, 2019, pp.
102) (2) Cannot mislead the public as to the source of the
goods or services. (Sec. 148, IP Code)
Exception: In cases of importation of drugs and
medicines, provided that said drugs or medicines bear the
registered marks that have not been tampered, unlawfully
modified, or infringed upon. (Secs. 72.1, 147.1, 155, IPC) Limitations of Rights Conferred:
(1) Duration
(4) Exclusive right to prevent all third persons from using Shall remain in force for ten (10) years: provided that the
a mark indicating a connection between those goods and registrant shall file a declaration of actual use and
services of third persons and those of the owner of the evidence to that effect, or shall show valid reasons based
registered mark. The exclusive right of the owner of a well- on the existence of obstacles to such use, as prescribed
known mark which is registered in the Philippines, shall by the Regulations, within one (1) year from the fifth
extend to goods and services which are not similar to anniversary of the date of the registration of the mark.
those in respect of which the mark is registered, provided: Otherwise, the mark shall be removed from the Register
by the Office. (Sec. 145, IPC)
(a) That the use of that mark in relation to those goods or
services would indicate a connection between those (2) Territorial
goods or services and the owner of the registered mark; As a general rule, the protection afforded to trademark is
and territorial, that is, it is only limited to the territory of the
(b) That the interests of the owner of the registered mark country that recognizes the same. As a consequence, a
are likely to be damaged by such use. (Sec. 147.2, IP mark that is not registered in the Philippines will not get
Code protection under the legal mantle of trademark.
Exception: A well-known mark is protected for identical

goods and services even if the same is not registered in
the country where it seeks protection. (Gepty, Intellectual
Property Law Compendium, 2019, p. 39
A trade name of a national of a State that is a party to the

Paris Convention, whether or not the trade name forms
Contact No. 228-1996/887-2051
Business Department
part of a trademark is protected without the obligation of (a) becomes the generic name for the goods or services,
filing or registration (Fredco Manufacturing Corp. vs. or a portion thereof, for which it is registered or,
President and Fellows of Harvard College, G.R. No.
185917, June 1, 2011) (b) has been abandoned, or,
(3) Fair Use (c) its registration was obtained fraudulently or contrary to
the provisions of this Act, or,
The registration of the mark shall not confer on the
registered owner the right to preclude third parties from (d) if the registered mark is being used by, or with the
using bona fide their names, addresses, pseudonyms, a permission of, the registrant so as to misrepresent the
geographical name, or exact indications concerning the source of the goods or services on or in connection with
kind, quality, quantity, destination, value, place of origin, which the mark is used.
or time of production or of supply, of their goods or (e) If the registered mark becomes the generic name for
services. less than all of the goods or services for which it is
Provided That: registered, a petition to cancel the registration for only
those goods or services may be filed
(a) Such use is confined to the purposes of mere
identification or information; and (f) A registered mark shall not be deemed to be the
generic name of goods or services solely because such
(b) Such use cannot mislead the public as to the source mark is also used as a name of or to identify a unique
of the goods or services. (Sec. 148, IPC) product or service. The primary significance of the
registered mark to the relevant public rather than
purchaser motivation shall be the test for determining
(4) Prior User whether the registered mark has become the generic
name of goods or services on or in connection with which
A registered mark shall have no effect against any person it has been used. (Sec. 151.1 IPC)
who, in good faith, before the filing date or the priority
date, was using the mark for the purposes of his business
or enterprise. If in a petition for cancellation of a trademark, it was
Provided, that his right may only be transferred or established that the petitioner was not its owner, prior
assigned together with his enterprise or business or with registration can be cancelled without need of filing a
that part of his enterprise or business in which the mark is separate petition (E.Y. Industrial Sales, Inc. v. Shen Dar
used. (Sec. 159.1, IPC) Electricity and Machinery Co. Ltd., G.R. No. 184850,
October 20, 2010)
While registration vests ownership over a mark, bad faith

(5) Non-Use may still be a ground for the cancellation of trademark
registrations. Bad faith and fraud, in relation to trademark
Failure to file declaration of actual use automatically registration, bad faith means that the applicant or
results in the denial of the registration or the cancellation registrant has knowledge of prior creation, use and/or
of the registration by operation of law. (Sec. 124.2, IPC) registration by another of an identical or similar
trademark. In other words, it is copying and using
somebody else's trademark. Fraud, on the other hand,
CANCELLATION OF REGISTRATION may be committed by making false claims in connection
with the trademark application and registration,
A petition to cancel a registration of a mark under this Act
particularly, on the issues of origin, ownership, and use of
may be filed with the Bureau of Legal Affairs by any
the trademark in question, among other things. (Medina
person who believes that he is or will be damaged by the
v. Global Quest Ventures, Inc., G.R. No. 213815,
registration of a mark under this Act as follows:
February 8, 2021)
(1) Within five (5) years from the date of the registration of
the mark under this Act.
(2) At any time, if the registered mark:

Contact No. 228-1996/887-2051
Business Department
TRADEMARK INFRINGEMENT The use of an identical or colorable imitation of a

registered trademark by a person for the same goods or
Trademark infringement refers to unauthorized use of a services or closely related goods or services of another
registered mark that causes confusion on the part of the party constitutes infringement. It is a form of unfair
buying public. competition because there is an attempt to get a free ride
Elements of Trademark Infringement on the reputation and selling power of another
manufacturer by passing of one’s goods as identical or
(1) The trademark being infringed is registered in the produced by the same manufacturer as those carrying the
Intellectual Property Office; Trade names, unlike other mark (brand). (Commissioner of Internal Revenue
trademarks need not be registered with the IPO before an v. San Miguel Corp., G.R. Nos. 205045 & 205723, 2017)
infringement suit may be filed by its owner against the
owner of an infringing trademark. All that is required is that
the trade name is previously used in trade or commerce Who are liable
in the Philippines (Prosource International Inc v Horphag
Research Management SA, an Na 180073, November 25, A person shall be liable for trademark infringement if,
2009). without the consent of the owner of the registered mark,
he:
(2) The trademark is reproduced, counterfeited, copied, or
colorably imitated by the infringer; (1) Uses in commerce any reproduction or colorable
imitation of a registered mark or the same container or a
(3) The infringing mark is used in connection with the sale, dominant feature thereof in connection with the sale,
offering for sale, or advertising of any goods, business or offering for sale, distribution, advertising of any goods or
services; or the infringing mark is applied to labels, signs, services which is likely to cause confusion, or to cause
prints, packages, wrappers, receptacles or mistake, or to deceive;
advertisements intended to be used upon or in connection
with such goods, business or services This includes other preparatory steps necessary to carry
out the sale of any goods or services
(4) The use or application of the infringing mark is likely to
cause confusion or mistake or to deceive purchasers or (2) Reproduces or color ably imitates a registered mark or
others as to the goods or services themselves or as to the a dominant feature thereof and applies such reproduction
source or origin of such goods or services or the identity or colorable imitation to signs, packages, or
of such business; and advertisements intended to be used in commerce upon or
in connection with the sale, offering for sale, distribution,
(5) The use or application of the infringing mark is without or advertising of goods or services which likely to cause
the consent of the trademark owner or the assignee confusion, or to cause mistake, or to deceive.
thereof. (Diaz vs. People of the Philippines, G.R. No.
180677, February 18, 2013) The “likelihood of confusion” is the gravamen of
trademark infringement. Hence, it is immaterial that there
was no actual sale of goods or services using the
The essential element of infringement is that the infringing infringing material as long as the acts mentioned were
mark is likely to cause confusion. (Forietrans actually committed. (Sec. 155, IP Code)
Manufacturing Corp. vs. Davidoff Et. Cie SA, G.R. No.
197482. March 6, 2017)
Two types of confusion arise from the use of similar or
Whether a trademark causes confusion and is likely to colorable imitation marks, namely:
deceive the public hinges on "colorable imitation" which
has been defined as "such similarity in form, content, (1) Confusion of goods (product confusion) and
words, sound, meaning, special arrangement or general
appearance of the trademark or trade name in their overall (2) Confusion of business (source or origin confusion)
presentation or in their essential and substantive and
distinctive parts as would likely mislead or confuse
persons in the ordinary course of purchasing the genuine
article." (Mighty Corporation v. E. & J. Gallo Winery, G.R.
No. 154342, July 14, 2004)
Contact No. 228-1996/887-2051
Business Department
Confusion of Confusion of Test to determine confusing similarity between marks

Goods/Services Business/Origin
To aid in determining the similarity and likelihood of
Exists when the ordinary Exists when one party's
confusion between marks, 2 tests are applied:
prudent purchaser would product or service though
be induced to purchase different from that of 1. the dominancy test
one product or service another, is such as might
because of the similarity reasonably be assumed 2. holistic test (now abandoned)
of the marks or trade to originate from the latter
names used on the same and the public would then
kind of product or service. be deceived into the belief Dominancy Test
(Skechers, U.S.A, Inc. v. that there is some
Inter Pacific Industrial connection between the The Dominancy Test focuses on the similarity of the
Trading Corp. et. al., GR parties which in fact is prevalent features of the competing trademarks which
No. 164321 March 23, absent. (Skechers, might cause confusion or deception, and thus
2011) U.S.A., Inc. v. Inter Pacific infringement. If the competing trademark contains the
industrial Trading Corp et. main, essential or dominant features of another, and
al, GR No. 164321, March confusion or deception is likely to result, infringement
23, 2011) takes place.
Duplication or imitation is not necessary; nor is it

Exist when the products Exist when the products necessary that the infringing label should suggest an
are competing are competing effort to imitate.
(McDonald’s Corporation (McDonald’s Corporation
The test was similarity or "resemblance between the two
v. L.C. Big Mak Burger, v. L.C. Big Mak Burger,
(trademarks) such as would be likely to cause the one
Inc., et al., G.R. No. Inc., et al., G.R.No.
mark to be mistaken for the others. But this is not such a
143993, August 18, 2004) 143993, August 18, 2004)
similitude as would amount to identity." (Asia Brewery,
Inc. vs. Court of Appeals, G.R. No. 103543, July 5, 1993,
citing Forbes, Munn & Co. Ltd vs. Ang San To, 40 Phil.
272)
Test on confusion of goods or services:
"Nanny" is confusingly similar to "Nan", being the
1. dominancy test; and prevalent feature. Both are classified under Class 6, both
are milk products, and both are in powder form. Also,
2. holistic test (abandoned) Test on confusion of
NANNY and NAN are displayed in the same section of
origin: Whether the non-competing articles may be
stores the milk section (Societe Des Produits Nestle, S.A.
classified under two different classes because-they are
v. Dy, GR No. 172276, August 8, 2010)
deemed not to possess the same descriptive properties
(Ang v. Teonoro, G.R. No. L48226, December 14, 1942). Focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and
deception, thus constituting infringement.
Factors to consider in determining the likelihood of
If the competing trademark contains the main, essential,
confusion:
and dominant features of another, and confusion or
(1) The resemblance between the trademarks; deception is likely to result, infringement occurs.
(2) The similarity of the goods to which the trademarks are Exact duplication imitation is not required. The question is
attached; whether the use of the marks involved is likely to cause
confusion or mistake in the mind of the public or to
(3) The likely effect on the purchaser; and deceive consumers. (Citigroup, Inc. vs. Citystate Savings
Bank, Inc. G.R. No. 205409, June 13, 2018)
(4) The registrant’s express or implied consent and other
fair and equitable considerations. (Mighty Corporation v.
E. & J. Gallo Winery, G.R. No. 154342, July 14, 2004)
Contact No. 228-1996/887-2051
Business Department
Holistic Test Idem Sonans
The Holistic Test requires that the entirety of the marks in Idem sonans is a Latin term meaning sounding the same
question be considered in resolving confusing similarity. or similar; having the same sound. It is a legal doctrine in
Comparison of words is not the only determining factor. which a person’s identity is presumed known despite the
The trademarks in their entirety as they appear in their misspelling of his or her name.
respective labels or hang tags must also be considered in
relation to the goods to which they are attached. (Mang The rule on idem sonans is also a test to resolve the
Inasal Philippines, Inc., vs. IFP Manufacturing confusing similarity of trademarks. As to the syllabication
Corporation, G.R. No. 221717. June 19, 2017) and sound of the two trade-names “Sapolin” and “Lusolin”
being used for paints, it seems plain that whoever hears
The focus is not only on the predominant words but also or sees them cannot but think of paints of the same kind
on the other features appearing on the labels. (Societe and make. (Sapolin Co., Inc. v. Germann & Co., Ltd., G.R.
Des Produits Nestle S.A. vs. Dy, G.R. No. 172276, August No. 45502, May 2, 1939).
8, 2010)
Two names are said to be idem sonans if the attentive ear
Entails a consideration of the entirety of the marks as finds difficulty in distinguishing them when pronounced.
applied to the products, including the labels and (Martin v. State, 541 S.W. 2d 605) Two trademarks used
packaging, in determining confusing similarity. The on identical or related goods may be confusingly similar if
discerning eye of the observer must focus not only on the they have similar sound or pronunciation. (Tajanlangit V
predominant words but also on the other features Cazenas, G.R. No. L-18894, June 30, 1962)
appearing on both marks in order that the observer may
draw his conclusion whether one is confusingly similar to Likelihood of confusion or mistake is greater when
the other. (Citigroup, Inc. vs. Citystate Savings Bank, Inc. identical or closely similar marks are used on non-
G.R. No. 205409, June 13, 2018) competing but related and common household items
because they are purchased by ordinary purchasers who
usually know them by their names or trademarks. (Mighty
Corporation v. ELL Gallo Winery, G.R. No. 154342, July
IMPORTANT UPDATE: Abandonment of Holistic Test 14, 2004)
The Supreme Court (SC) has abandoned the “holistic Aural effects of the words and letters contained in the
test” in evaluating trademark resemblance and marks should be considered in determining the issue of
emphasized the adoption of the “dominancy test.” confusing similarity (Prosource International, Inc v.
The Dominancy Test focuses on the similarity of the Horphag Research Management SA, G.R. No. 180073,
prevalent features of the competing marks. Meanwhile, November 25, 2009)
the Holistic Test requires that the entirety of the marks in The determining point in trademark infringement is a
question be considered in resolving confusing similarity. likelihood of confusion. The fact that CEEGEEFER is
There was no hard and fast rule in determining which test idem sonans for CHERIFER is enough to violate
should be applied. There are more Supreme Court respondent's right to protect its trademark, CHERIFER.
decisions that applied the Dominancy Test. The SC noted (Prosel v. Tynor, G.R. No. 248021, 2020)
that Section 155.1 of the Intellectual Property Code
explicitly incorporated the “dominancy test,” by defining
infringement as the “colorable imitation of a registered
mark… or a dominant feature thereof.” (Kolin Electronics Remedies against trademark infringer:
Co. Inc. vs Kolin Phils. International Inc., G.R. No. (1) Damages. (Sec. 156.1, IPC) Damages which can be
228165, Feb. 9, 2021, J. Caguioa) recovered from infringer:
In light of the foregoing, it is submitted that the Dominancy The owner of a registered mark may recover damages
Test must be used in determining the existence of from any person who infringes his rights, and the measure
confusing similarity between the marks. Again, this test of the damages suffered shall be either:
relies not only on the visual but also on the aural and
connotative comparisons and overall impressions (a) The reasonable profit which the complaining party
between the two trademarks. (Levi Strauss & Co. v. would have made, had the defendant not infringed his
Sevilla, G.R. No. 219744, March 1, 2021) rights; or
Contact No. 228-1996/887-2051
Business Department
(b) The profit which the defendant actually made out of (2) Any person who shall commit any acts calculated to
the infringement; or produce said result. (Sec. 168.2, IPC)
(c) In the event such measure of damages cannot be Acts Constitutive of Unfair Competition
readily ascertained with reasonable certainty, then the
court may award as damages: (1) Selling one’s goods and giving them the general
appearance of goods of another manufacturer or dealer,
i) A reasonable percentage based upon the amount of either:
gross sales of the defendant; or
(a) As to the goods themselves or in the wrapping of the
ii) The value of the services in connection with which the packages in which they are contained, or the devices or
mark or trade name was used in the infringement of the words thereon; or
rights of the complaining party. (Sec. 156.1, IPC)
(b) In any other feature of their appearance, which would
(2) Double damages. (Sec. 156.3, IPC) be likely to influence purchasers to believe that the goods
offered are those of a manufacturer or dealer, other than
(3) Injunction. (Sec. 156.4, IPC) the actual manufacturer or dealer. (Sec. 168.3(a), IPC)
(4) Impounding. (Sec. 156.2, IPC) (2) Clothing one’s goods with such appearance as shall
(5) Court order for the disposal or destruction of the deceive the public and defraud another of his legitimate
infringement material. (Sec. 157.1, IPC) trade, or any subsequent vendor of such goods or any
agent of any vendor engaged in selling such goods with a
Notice requirement in recovering damages for like purpose. (Sec. 168.3(a), IPC)
infringement In any suit for infringement, the owner of the
registered mark shall not be entitled to recover profits or (3) Using any artifice, or device, or employing any other
damages unless the acts have been committed with means calculated to induce the false belief that such
knowledge that such imitation is likely to cause confusion, person is offering the services of another who has
or to cause mistake, or to deceive. identified such services in the mind of the public. (Sec.
168.3(b), IPC)
Such knowledge is presumed if the registrant gives notice
that his mark is registered by displaying with the mark the (4) Making any false statement in the course of trade or
words “Registered Mark” or the letter R within a circle or committing any other act contrary to good faith of a nature
if the defendant had otherwise actual notice of the calculated to discredit the goods, business or services of
registration. (Sec. 158, IPC) another. (Sec. 168.3(c), IPC)
Elements of Unfair Competition:
UNFAIR COMPETITION 1. Confusing similarity in the general appearance of the

goods, and
A person who has identified in the mind of the public the
goods he manufactures or deals in, his business or 2. Intent to deceive the public and defraud a competitor.
services from those of others, whether or not a registered (Superior Commercial Enterprises, Inc. v. Kunnan
mark is employed, has a property right in the goodwill of Enterprises, G.R. No. 169974, April 20, 2010)
the said goods, business or services so identified, which The confusing similarity may or may not result from
will be protected in the same manner as other property similarity in the marks, but may result from other external
rights. (Sec. 168.1, IPC) factors in the packaging or presentation of the goods. The
intent to deceive and defraud may be inferred from the
similarity in appearance of the goods as offered for sale
The following shall be guilty of unfair competition, and to the public. Actual fraudulent intent need not be shown.
shall be subject to an action therefor: (San Miguel Pure Foods Company, Inc. vs. Foodsphere,
Inc., G.R. No. 217781, June 20, 2018)
(1) Any person who shall employ deception or any other
means contrary to good faith, by which he shall pass off
the goods manufactured by him or in which he deals, or
his business, or services for those of the one having
established such goodwill; or
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Who may file an action of Unfair Competition? COPYRIGHTS
A person who has identified in the mind of the public the Copyright is not primarily about providing the strongest
goods he manufactures or deals in, his business or possible protection for copyright owners so that they have
services from those of others, whether or not a registered the highest possible incentive to create more works. The
mark is employed. control given to copyright owners is only a means to an
end: the promotion of knowledge and learning. The goal
Such person has a property right in the goodwill of the of copyright is to promote creativity and encourage
said goods, business or services so identified, and said creation of works. (ABS-CBN Corp. v. Gozon, G.R. No.
right shall be protected in the same manner as other 195956, 2015)
property rights. (Sec. 168.1, IPC)
A copyright refers to “the right granted by a statute to the
Trademark Infringement without Unfair Competition proprietor of an intellectual production to its exclusive use
There can be trademark infringement without unfair and enjoyment to the extent specified in the statute.”
competition such as when the infringer discloses on the (Olaño vs. Lim Eng Co, G.R. No. 195835. March 14,
labels containing the mark that he manufactures the 2016)
goods, preventing the public from - being deceived that Copyright is the right of literary property as recognized
the goods originate from the trademark owner. (Superior and sanctioned by positive law. An intangible, incorporeal
Commercial Enterprises, Inc. v. Kunnan Enterprises, G.R. right granted by statute to the author or originator of
No. 169974, April 20, 2010) certain literary or artistic productions, whereby he is
Capacity of Foreign Corporation to Sue for Unfair invested, for a limited period, with the sole and exclusive
Competition privilege of multiplying copies of the same and publishing
and selling them. (Juan vs. Juan, G.R. No. 221732.
Any foreign national or juridical person who meets the August 23, 2017)
requirements of Section 3 of the Intellectual Property
Code and does not engage in business in the Philippines
may bring a civil or administrative action for opposition, GENERAL PRINCIPLES
cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not (1) Works are protected by the sole fact of their creation,
it is licensed to do business in the Philippines under irrespective of their mode or form of expression, as well
existing laws. (Sec. 160, IPC) as of their content, quality and purpose. (Section 172.2,
IPC);
A foreign corporation not engaged in and licensed to do
business in the Philippines may maintain action for unfair Principle of Automatic Protection Copyright is vested from
competition. This is so because the crime of unfair the very moment of creation irrespective of their mode or
competition is punishable under Article 189 of the Revised form of expression, as well as of their content, quality and
Penal Code, hence, is a public crime. (Sasot v. People, purpose. (Sec. 171.1-172.2, IPC)
G.R. No. 143193, June 29, 2005)
The issuance of the certificates of registration and deposit
as provided by Sec. 2, Rule 7 of Copyright Safeguards
and Regulations, are purely for recording the date of
registration and deposit of the work, and are not
conclusive as to copyright ownership (nor does it
determine the time when copyright vests). (Manly
Sportwear v. Dadodette Enterprises, G.R. No. 165306
September 20, 2005)
The enjoyment and exercise of copyright, including moral

rights, shall not be the subject of any formality; such
enjoyment and such exercise shall be independent of the
existence of protection in the country of origin of the work.
(Article 5(2), Berne Convention for the Protection of
Literary and Artistic Works)
Contact No. 228-1996/887-2051
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(2) The copyright is distinct from the property in the (a) Original Literary or Artistic Works
material object subject to it.
Literary and artistic works are original intellectual
Consequently, the transfer or assignment of the copyright creations in the literary and artistic domain protected from
shall not itself constitute a transfer of the material object. the moment of their creation and shall include:
Nor shall a transfer or assignment of the sole copy or of
one or several copies of the work imply transfer or (1) Books, pamphlets, articles and other writings;
assignment of the copyright. (Section 181, IPC) (2) Periodicals and newspapers; News as expressed in a
(3) News of today, office text of legislative or video footage is entitled to copyright protection.
administrative or legal nature, not protected. Broadcasting organizations have not only copyright on but
also neighboring rights over their broadcasts.
The facts that constitute the news are unprotected, but the Copyrightability of a work is different from fair use of a
copyright protection subsists in any work entailing work for purpose of news reporting. (ABS-CBN Corp. v.
intellectual effort that may result in the creation of a news Gozon, G.R. No. 195956, 2015)
report. (Section 175, IPC)
(3) Lectures, sermons, addresses, dissertations prepared
(4) Requisites for copyright ability for oral delivery, whether or not reduced in writing or other
material form;
For a work to enjoy copyright protection, it must be an
original creation. It should be stressed, however, that (4) Letters;
copyright is not concerned with the originality of ideas, but
with the expression of thought. Thus, the originality which (5) Dramatic or dramatico-musical compositions;
is required relates to the expression of the thought. choreographic works or entertainment in dumb shows;
(Gepty, Intellectual Property Law Compendium, 2019, pp. (6) Musical compositions, with or without words;
158-159)
(7) Works of drawing, painting, architecture, sculpture,
A work is deemed by law an original if the author created engraving, lithography or other works of art; models or
it by his own skill labor and judgment (Habana vs. Robles, designs for works of art;
G.R. No. 131522,19 July 1999)
(8) Original ornamental designs or models for articles of
It is meant that the material was not copied, and manufacture, whether or not registrable as an industrial
evidences of at least minimal creativity; that it was design, and other works of applied art; A "work of applied
independently created by the author; and that it art" is an artistic creation with utilitarian functions or
possesses at least same minimal degree of creativity. incorporated in a useful article, whether made by hand or
(Ching vs. Salinas, G.R. No. 161295, 29 June 2005, citing produced on an industrial scale. (Sec. 171.1, IPC)
Donald Bruce Company v. B.G. Multi-Comm.
Corporation, 964 F. Supp. 265 (1997) (9) Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science;
COPYRIGHTABLE WORKS (10) Drawings or plastic works of a scientific or technical
The scope of copyright is confined to literary and artistic character;
works which are original intellectual creations in the (11) Photographic works including works produced by a
literary and artistic domain protected from the moment of process analogous to photography; lantern slides;
their creation (Kho vs Court of Appeals, G.R. No. 115758, Audiovisual works and cinematographic works and works
March 19, 2002) produced by a process analogous to cinematography or
any process for making audio-visual recordings;
Copyrightable works An "audiovisual work or fixation" is a work that consists of

a series of related images which impart the impression of
(a) Original Literary or Artistic Works motion, with or without accompanying sounds,
susceptible of being made visible and, where
(b) Derivative Works accompanied by sounds, susceptible of being made
audible. (Sec. 202.3, IPC)
Contact No. 228-1996/887-2051
Business Department
(12) Pictorial illustrations and advertisements; (c) Collection of an author‘s works, said author has
exclusive right to it
(13) Computer programs; and A "computer" is an
electronic or similar device having information-processing (a) Unprotected subject matters
capabilities, and a "computer program" is a set of
instructions expressed in words, codes, schemes or in No protection shall extend, under the law, to:
any other form, which is capable when incorporated in a (1) any idea, procedure, system, method or operation,
medium that the computer can read, or causing the concept, principle, discovery or mere data as such, even
computer to perform or achieve a particular task or result. if they are expressed, explained, illustrated or embodied
(Sec. 171.4, IPC) in a work;
(14) Other literary, scholarly, scientific and artistic works. (2) news of the day and other miscellaneous facts having
(Sec. 172.1, IPC) the character of mere items of press information; or
These are protected by the sole fact of their creation, (3) any official text of a legislative, administrative or legal
irrespective of their mode or form of expression, as well nature, as well as any official translation thereof. (Sec.
as of their content, quality and purpose. (Sec. 172.2, IPC) 175, IPC)
Television newscasts are subject to copyright. Although

(b) Derivative works news or the events themselves are not copyrightable,
expression of the news particularly when it underwent a
Derivative works, which are creations that are based on creative process is entitled to copyright protection.
an existing work, shall also be protected by copyright. (ABSCBN Corp. vs. Gozon, G.R. No. 195956, March 11,
2015)
(1) Dramatizations, translations, adaptations,
abridgments, arrangements, and other alterations of The format or mechanics of a TV show is not
literary or artistic works; and copyrightable as copyright does not extend to ideas,
procedures, processes, systems, methods of operation,
(2) Collections of literary, scholarly or artistic works, and concepts, principles or discoveries regardless of the form
compilations of data and other materials which are in which they are described, explained, illustrated or
original by reason of the selection or coordination or embodied. (Joaquin Jr. et al vs. Drilon, et al, G.R. No.
arrangement of their contents. (Sec. 173.10, IPC) 108946, January 28, 1999)
The above works shall be protected as a new works: No one may claim originality as to facts as these do not
Provided however, that such new work shall not affect the owe their origin to an act of authorship. The first person to
force of any subsisting copyright upon the original works find and report a particular fact has not created the same;
employed or any part thereof, or be construed to imply any he has merely discovered its existence. (Feist Publication
right to such use of the original works, or to secure or vs. Rural Telephone Services, 499 U.S. 340 (1991))
extend copyright in such original works. (Sec. 173.2, IPC)
Publisher’s Right
(b) Works of the government
In addition to the right to publish granted by the author,
his heirs or assigns, the publisher shall have a copyright No copyright shall subsist in any work of the Government
consisting merely of the right of reproduction of the of the Philippines. (Sec. 176.1, IPC) A "work of the
typographical arrangement of the published edition of the Government of the Philippines" is a work created by an
work. (Sec. 174, IPC) officer or employee of the Philippine Government or any
of its subdivisions and instrumentalities, including
government-owned or controlled corporations as part of
NON-COPYRIGHTABLE WORKS his regularly prescribed official duties. (Sec 171.11, IPC)
Non-copyrightable works Elements:
(a) Unprotected subject matters (1) the creator must be an officer or employee of the
government
(b) Works of the government
Contact No. 228-1996/887-2051
Business Department
(2) the work was done as part of his regularly prescribed (a) Economic rights
official duties
(b) Moral rights
General Rule: Prior approval of the government agency
or office wherein the work is created shall be necessary (c) Rights to proceeds in subsequent transfer
for exploitation of such work for profit. Such agency or
office may, among other things, impose as a condition the
payment of royalties. (Sec. 176.1, IPC) Copyright or economic rights
Exception: No prior approval or conditions shall be

required for the use of any purpose of statutes, rules and
regulations, and speeches, lectures, sermons, addresses, These economic rights basically protect the economic
and dissertations, pronounced, read or rendered in courts value of the work and provide the copyright owner ways
of justice, before administrative agencies, in deliberative and means to generate revenues from his work. (Gepty,
assemblies and in meetings of public character. (Sec Intellectual Property Law Compendium, 2019, pp. 169-
176.1, IPC) 170)
Government and Copyright
Notwithstanding the foregoing provisions, the It shall consist of the exclusive right to carry out, authorize
Government is not precluded from receiving and holding or prevent the following acts:
copyrights transferred to it by assignment, bequest or
otherwise; nor shall publication or republication by the
government in a public document of any work in which (1) Reproduction of the work or substantial portion of
copyright is subsisting be taken to cause any abridgment the work;
or annulment of the copyright or to authorize any use or
Reproduction is defined as the making of one or more
appropriation of such work without the consent of the
copies, temporary or permanent, in whole or in part, of a
copyright owner. (Section 176.3, IPC)
work or a sound recording in any manner or form without
prejudice to the application of Fair Use Doctrine. (Section
171.9, IPC)
(c) Collection of an author’s work, author has
exclusive right (2) Dramatization, translation, adaptation,
abridgment, arrangement or other transformation of the
The author of speeches, lectures, sermons, addresses, work;
and dissertations mentioned in the preceding paragraphs
shall have the exclusive right of making a collection of his (3) The first public distribution of the original and
works. (Section 176.2, IPC) each copy of the work by sale or other forms of transfer of
ownership;
First Public Distribution of Work

RIGHTS CONFERRED BY COPYRIGHT
An exclusive right of first distribution of work includes all
Copyright has two rationales: the economic benefit and acts involving distribution, specifically including the first
social benefit. The economic benefit is reaped by the importation of an original and each copy of the work into
author from his work while the social benefit manifests the jurisdiction of the Republic of the Philippines. (Rule
when it creates impetus for individuals to be creative. 12, Copyright Safeguards & Regulations)
Copyright, like other intellectual property rights, grants
legal protection by prohibiting the unauthorized
reproduction of the author's work. It "create[s] a temporary
(4) Rental of the original or a copy of:
monopoly on varying types of knowledge, allowing their
owners to restrict and even prevent, other from using that i. an audiovisual or cinematographic work;
knowledge." By eliminating fear of other's appropriation
and exploitation of an author's work, intellectual creation ii.a work embodied in a sound recording;
is incentivized. (Republic v. Heirs of Tupaz IV, G.R. No.
iii.a computer program;
197335, September 7, 2020)
Contact No. 228-1996/887-2051
Business Department
iv.a compilation of data and other materials or a musical Right of Attribution in a Collective Work
work in graphic form; irrespective of the ownership of the
original or the copy which is the subject of the rental; (n) A collective work is a work which has been created by two
or more natural persons at the initiative and under the
(5) Public display of the original or a copy of the work; direction of another with the understanding that it will be
disclosed by the latter under his own name and that
(6) Public performance of the work; and contributing natural persons will not be identified. (Section
(7) Other communication to the public of the work 171.2, IPC)
(Section 177, IPC) When an author contributes to a collective work, his right
to have his contribution attributed to him is deemed
waived unless he expressly reserves it. (Section 196,
The author of a literary composition has a right to the first IPC)
publication thereof and entitled to payment for its use, but
once published, it is dedicated to the public, and the
author loses the exclusive right to control subsequent Editing, Arranging, and Adaptation of Work
publication by others, unless the work is placed under the
protection of the copyright law. (Santos vs. McCullough In the absence of a contrary stipulation at the same time
Printing Company, G.R. No. L- 19439. October 31, 1964) an author licenses or permits another to use his work, the
necessary editing, arranging or adaptation of such work,
The playing of music and singing of the combo in dine and for publication, broadcast, use in a motion picture,
dance establishment which was paid for by the public in dramatization, or mechanical or electrical reproduction in
purchases of food and constitutes “performance for profit” accordance with the reasonable and customary standards
as contemplated by the Copyright Law. Nevertheless, or requirements of the medium in which the work is to be
defendant cannot used, shall not be deemed to contravene the author's
be held to have violated the Copyright Law because the rights secured by this chapter. Nor shall complete
composers of the contested musical compositions are destruction of a work unconditionally transferred by the
deemed to have waived their rights in favor of the general author be deemed to violate such rights. (Section 197,
public because they have failed to comply with the IPC)
regulation requiring an intellectual creation to be
copyrighted within 30 days after publication. (Filipino
Society of Composers, Authors and Publishers, Inc. vs. Waiver of moral rights
Tan, G.R. No. L-36402. March 16,1987)
General Rule: An author may waive his some but not all
Moral rights his moral rights by a written instrument. (Sec. 195, IPC)
Exception: No such waiver shall be valid where its effects

are to permit another:
The term moral rights has its origins in the civil law and is
a translation of the French le droit moral, which is meant
to capture those rights of a spiritual, non-economic and
personal nature. The rights spring from a belief that an (1) To use the name of the author, or the title ofhis
artist in the process of creation injects his spirit into the work, or otherwise to make use of his reputation with
work and that the artist’s personality, as well as the respect to any version or adaptation of his work which,
integrity of the work, should therefore be protected and because of alterations therein, would substantially tend to
preserved. Because they are personal to the artist, moral injure the literary or artistic reputation of another author.
rights exist independently of an artist’s copyright in his or (Section 195.1, IPC)
her work. While the rubric of moral rights encompasses (2) To use the name of the author with respect to a
many varieties of rights, two are protected in nearly every work he did not create. (Section 195.2, IPC)
jurisdiction recognizing their existence: attribution and
integrity.
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Business Department
Right to Proceeds in Subsequent Transfers of The copyright of a derivative work solely belongs to the
Copyright (Droit De Suite or Follow Up Rights) person who fixes an idea into a tangible medium of
expression. The law on copyright only protects the
expression of an idea, not the idea itself. Thus, one who
In every sale or lease of an original work of painting or merely contributes concepts or ideas is not deemed an
sculpture or of the original manuscript of a writer or author. (Republic v. Heirs of Tupaz IV, G.R. No. 197335,
composer, subsequent to the first disposition thereof by September 7, 2020)
the author, the author or his heirs shall have an Duration of Right
inalienable right to participate in the gross proceeds of the
sale or lease to the extent of five percent (5%). This right Work Term
shall exist during the lifetime of the author and for 50 years Unpublished Anonymous 50 years counted from the
after his death. (Section 200, IPC) or pseudonymous work making of the work (Sec.
213.3, IPC)
Work of applied art 25 years from date of

OWNERSHIP OF COPYRIGHT
making or creation. (Sec.
213.4, IPC)
Ownership of copyrighted material is shown by proof of Photographic work. Published – 50 years from
originality and copyrightability. While it is true that where publication
the complainant presents a copyright certificate in support Unpublished - 50 years
of the claim of infringement, the validity and ownership of from from making. (Sec.
the copyright is presumed. This presumption, however, is 213.5, IPC)
rebuttable and it cannot be sustained where other
Audio-visual works 50 years from publication
evidence in the record casts doubt on the question of
including those produced
ownership, as in the instant case. Moreover, the
by process analogous to
presumption of validity to a certificate of copyright
photography or any
registration merely orders the burden of proof. The
process for making audio-
applicant should not ordinarily be forced, in the first
visual recordings
instance, to prove all the multiple facts that underline the
Published
validity of the copyright unless the respondent, effectively
challenging them, shifts the burden of doing so to the Unpublished 50 years from from
making. (Sec. 213.6, IPC)
applicant. (Olaño vs. Lim Eng Co, G.R. No. 195835.
March 14, 2016)
Presumptions of Authorship The term of protection subsequent to the death of the

author shall run from the date of his death or of
publication, but such terms shall always be deemed to
begin on the first day of January of the year following the
(1) The natural person whose name is indicated on a event which gave rise to them. (Section 214, IPC)
work in the usual manner as the author shall, in the
absence of proof to the contrary, be presumed to be the
author of the work. This is applicable even if the name is
a pseudonym, where the pseudonym leaves no doubt as
to the identity of the author. (Section 219.1, IPC)
(2) The person or body corporate whose name

appears on an audiovisual work in the usual manner shall,
in the absence of proof to the contrary, be presumed to
be the maker of said work. (Section 219.2, IPC)
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Business Department
LIMITATION ON COPYRIGHTS delivered in public, if such use is for information purposes

and has not been expressly reserved, provided that the
The following acts shall not constitute infringement source is clearly indicated. (Section 184.1[c], IPC)
of copyright:
Reproduction is the making of one or more copies,

(a) The recitation or performance of a work, once it temporary or permanent, in whole or in part, of a work or
has been lawfully made accessible to the public, if done a sound recording in any manner or form without prejudice
privately and free of charge or if made strictly for a to the provisions of Section 185 of Republic Act No. 8293.
charitable or religious institution or society. (Section (Sec. 171.9 as amended by Rep. Act No. 10372)
184.1[a], IPC)
Under this provision, the 2016 Presidential and Vice-

(b) The making of quotations from a published work Presidential debates fall under “addresses and other
if they are compatible with fair use and only to the extent works of the same nature.” Thus, the copyright conditions
justified for the purpose, including quotations from for the debates are: (1) the reproduction/communication
newspaper articles and periodicals in the form of press to the public by mass media of the debates is for
summaries, provided, that the source and the name of the
author, if appearing on the work, are mentioned. (Section
184.1[b], IPC)
information purposes; (2) the debates have not been
The private reproduction of a published work in a single expressly reserved by the Lead Networks (copyright
copy, where the reproduction is made by a natural person holders); and (3) the source is clearly indicated. (Rappler,
exclusively for research and private study, shall be Inc. vs. Bautista, G.R. No. 222702. April 5, 2016)
permitted, without the authorization of the owner of
copyright in the work. (Section 187.1, IPC)
(d) The reproduction and communication to the
public of literary, scientific or artistic works as part of
However, the permission granted under Subsection 187.1 reports of current events by means of photography,
shall not extend to the reproduction of: cinematography or broadcasting to the extent necessary
for the purpose. (Section 184.1[d], IPC)
i. A work of architecture in the form of building or

other construction; (e) The inclusion of a work in a publication,
broadcast, or other communication to the public, sound
ii. An entire book, or a substantial part thereof, or of recording or film, if such inclusion is made by way of
a musical work in graphic form by reprographic means; illustration for teaching purposes and is compatible with
iii. A compilation of data and other materials; fair use, provided that the source and of the name of the
author, if appearing in the work, are mentioned. (Section
iv. A computer program except as provided in 184.1[e], IPC)
Section 189; and
v. Any work in cases where reproduction would

unreasonably conflict with a normal exploitation of the (f) The recording made in schools, universities, or
work or would otherwise unreasonably prejudice the educational institutions of a work included in a broadcast
legitimate interests of the author. (n) for the use of such schools, universities or educational
institutions, provided that such recording must be deleted
within a reasonable period after they were first broadcast,
provided, further, that such recording may not be made
(c) The reproduction or communication to the public from audiovisual works which are part of the general
by mass media of articles on current political, social, cinema repertoire of feature films except for brief excerpts
economic, scientific or religious topic, lectures, of the work. (Section 184.1[f], IPC)
addresses, and other works of the same nature, which are
Contact No. 228-1996/887-2051
Business Department
communication within the meaning of Subsection 171.3.

(Section 171.6, IPC)
(g) The making of ephemeral recordings by a
broadcasting organization by means of its own facilities
and for use in its own broadcast. (Section 184.1[g], IPC)
(k) Public display of the original or a copy of the work
not made by means of a film, slide, television image or
otherwise on screen or by means of any other device or
(h) The use made of a work by or under the direction process, provided that either the work has been
or control of the government, by the National Library or by published, or, that original or the copy displayed has been
educational, scientific or professional institutions where sold, given away or otherwise transferred to another
such use is in the public interest and is compatible with person by
fair use. (Section 184.1[h], IPC)
This presupposes the government's use of a work for

public interest. Unlike in the exercise of power of eminent the author or his successor in title. (Section 184.1[j], IPC)
domain, no payment of just compensation is necessary
for such use.
(i) The public performance or the communication to (l) Any use made of a work for the purpose of any
the public of a work, in a place where no admission fee is judicial proceedings or for the giving of
charged in (m) professional advice by a legal practitioner.
(Section 184.1[k], IPC)

(j) respect of such public performance or (n) The reproduction or distribution of published
communication, by a club or institution for charitable or articles or materials in a specialized format exclusively for
educational purpose only, whose aim is not profit making, the use of the blind, visually- and reading-impaired
subject to such other limitations as may be provided in the persons: Provided, That such copies and distribution shall
Regulations. (Section 184.1[i], IPC) be made on a nonprofit basis and shall indicate the
Communication to the public means any communication copyright owner and the date of the original publication.
to the public, including broadcasting, rebroadcasting, (Section 184.1[l], IPC)
retransmitting by cable, broadcasting and retransmitting
by satellite, and includes the making of a work available
to the public by wire or wireless means in such a way that (o) Any library or archive whose activities are not for
members of the public may access these works from a profit may, without the authorization of the author or
place and time individually chosen by them. (Section copyright owner, make a limited number of copies of the
171.3, IPC) work, as may be necessary for such institutions to fulfill
their mandate, by reprographic reproduction:
Public performance, in the case of a work other than an

audiovisual work, is the recitation, playing, dancing, acting (1) Where the work by reason of its fragile character
or otherwise performing the work, either directly or by or rarity cannot be lent to user in its original form;
means of any device or process; in the case of an
audiovisual work, the showing of its images in sequence (2) Where the works are isolated articles contained
and the making of the sounds accompanying it audible; in composite works or brief portions of other published
and, in the case of a sound recording, making the works and the reproduction is necessary to supply them;
recorded sounds audible at a place or at places where when this is considered expedient, to persons requesting
persons outside the normal circle of a family and that their loan for purposes of research or study instead of
family’s closest social acquaintances are or can be lending the volumes or booklets which contain them; and
present, irrespective of whether they are or can be (3) Where the making of such limited copies is in
present at the same place and at the same time, or at order to preserve and, if necessary in the event that it is
different places and/or at different times, and where the lost, destroyed or rendered unusable, replace a copy, or
performance can be perceived without the need for to replace, in the permanent collection of another similar
Contact No. 228-1996/887-2051
Business Department
library or archive, a copy which has been lost, destroyed Factors in determining if the use of a copyrighted work is
or rendered unusable and copies are not available with within the limits of the doctrine of fair use:
the publisher. (Section 188, IPC)
In determining whether the use made of a work in any

(p) The reproduction in one (1) back-up copy or particular case is fair use, the factors to be considered
adaptation of a computer program shall be permitted, shall include:
without the authorization of the author of, or other owner
of copyright in, a computer program, by the lawful owner
of (1) The purpose and character of the use, including
whether such use is of a commercial nature or is for non-
profit educational purposes;
(q) That computer program: Provided, That the copy or
adaptation is necessary for:
(2) The nature of the copyrighted work;
(1) The use of the computer program in conjunction (3) The amount and substantiality of the portion used
with a computer for the purpose, and to the extent, for in relation to the copyrighted work as a whole; and
which the computer program has been obtained; and (4) the effect of the use upon the potential market for
(2) Archival purposes, and, for the replacement of or value of the copyrighted work. (Section 185.1, IPC)
the lawfully owned copy of the computer program in the
event that the lawfully obtained copy of the computer
program is lost, destroyed or rendered unusable. (Section Decompilation, which is the reproduction of the code and
189.1, IPC) translation of the forms of a computer program to achieve
the interoperability of an independently created computer
The provisions of this section shall be interpreted in such program with other programs, may also constitute fair use
a way as to allow the work to be used in a manner which under the criteria established by this section, to the extent
does not conflict with the normal exploitation of the work that such decompilation is done for the purpose of
and does not unreasonably prejudice the right holder's obtaining the information necessary to achieve such
legitimate interests. (Section 184.2, IPC) interoperability. (Section 185.1, IPC)
DOCTRINE OF FAIR USE Above factors also applicable to unpublished work
Fair use has been defined as a privilege to use the The fact that a work is unpublished shall not by itself bar
copyrighted material in a reasonable manner without the a finding of fair use if such finding is made upon
consent of the copyrighted owner or as copying the theme consideration of all the above factors. (Section 185.2,
or ideas rather than their expression. xxx Commercial use IPC)
of the copyrighted work can be weighed against fair use.
(ABS-CBN Corp. vs. Gozon, G.R. No. 195956, March 11,
2015)
The fair use of a copyrighted work for criticism, comment,

news reporting, teaching including limited number of
copies for classroom use, scholarship, research, and
similar purposes is not an infringement of copyright.
(Section 185.1, IPC)
Contact No. 228-1996/887-2051
Business Department
COPYRIGHT INFRINGEMENT What Constitutes Infringement
Infringement of a copyright is a trespass on a private To constitute infringement, the usurper must have copied
domain owned and occupied by the owner and, therefore, or appropriated the original work of an author or copyright
protected by law. proprietor, absent copying, there can be no infringement
of copyright. Unlike a patent, a copyright gives no
exclusive right to the art disclosed; protection is given only
How committed to the expression of the idea · not the idea itself. (Olaño
vs. Lim Eng Co, G.R. No. 195835. March 14, 2016)
Any person infringes a right protected when one:
Infringement consists in the doing by any person, without
(a) Directly commits an infringement; the consent of the owner of the copyright, of anything the
sole right to do which is conferred by statute on the owner
(b) Benefits from the infringing activity of another of the copyright.
person who commits an infringement if the person
benefiting has been given notice of the infringing activity It can cover a whole range of acts from copying,
and has the right and ability to control the activities of the assembling, packaging to marketing, including the mere
other person; offering for sale of counterfeit goods. (Habana et al vs.
Robles et al., G.R. No. 131522, July 19, 1999)
With knowledge of infringing activity, induces, causes or
materially contributes to the infringing conduct of another. Copyright infringement is thus committed by any person
(Section 216, IPC) who shall use original literary or artistic works, or
derivative works, without the copyright owner’s consent in
such a manner as to violate the foregoing copy and
economic rights.
It also includes the act of any person who at the time when xxx
copyright subsists in a work has in his possession an For a claim of copyright to prevail, the evidence on record
article which he known, or ought to know, to be an must demonstrate: (1) ownership of a validly copyrighted
infringing copy of the work for the purpose of: material by the complainant; and (2) infringement of the
copyright by the respondent.
(a) Selling, letting for hire, or by way of trade offering xxx

or exposing for sale, or hire, the article What was copyrighted were their sketches/drawings only,
(b) Distributing the article for purpose of trade, or for and not the actual hatch doors themselves. To constitute
any other purpose to an extent that will prejudice the rights infringement, the usurper must have copied or
of the copyright owner in the work; or appropriated the original work of an author or copyright
proprietor, absent copying, there can be no infringement
(c) Trade exhibit of the article in public. (Section of copyright. Absent originality and copyrightability as
217.3, IPC) elements of a valid copyright ownership, no infringement
can subsist. (Olaño vs. Lim Eng Co, G.R. No. 195835.
March 14, 2016)
Copyright infringement is committed by any person who
shall use original literary or artistic works, or derivative
works, without the copyright owner’s consent in such a
manner as to violate the foregoing copy and economic
rights. For a claim of copyright infringement to prevail, the
evidence on record must demonstrate: (1) ownership of a
validly copyrighted material by the complainant; and (2)
infringement of the copyright by the respondent. (Olaño
vs. Lim Eng Co, G.R. No. 195835. March 14, 2016)
Contact No. 228-1996/887-2051
Business Department
Substantial Reproduction Except:
It is not necessarily required that the entire copyrighted (a) Where the statement cannot be valid under this
work, or even a large portion of it, be copied. If so much Act or any other law concerning intellectual property.
is taken that the value of the original work is substantially (Section 220.1, IPC)
diminished, there is an infringement of copyright and to an
injurious extent, the work is appropriated. In cases of Where the statement is contradicted by another statement
infringement, copying alone is not what is prohibited. The recorded in the international register. (Section 220.2, IPC)
copying must produce an “injurious effect.” (Habana et al
vs. Robles et al., G.R. No. 131522, July 19, 1999)
Disclosure of Information
Where any article or its packaging or an implement for

Knowledge not an Element of Infringement making it is seized or detained under a valid search and
Knowledge of infringement is material only when a person seizure is, or is reasonably suspected to be, by an
is charged of aiding and abetting a copyright infringement. authorized enforcement officer, in violation of this law, the
The liability for copyright infringement is in the nature of said officer shall, wherever reasonably practicable, notify
strict liability. It does not require mens rea or culpa. (ABS- the owner of the copyright in question or his authorized
CBN Corp. vs. Gozon, G.R. No. 195956, March 11, 2015) agent of the seizure or detention, as the case may be.
(Section 220A, IPC)
Remedies against Copyright Infringement
Any person infringing a right protected under this law shall

be liable:
(a) Injunctive relief. (Section 216.1 (a), IPC)
(b) Impoundment. (Section 216.1 (c), IPC)
(c) Destruction. (Section 216.1 (d), IPC)
(d) Search and Seizure. (Section 216.2, IPC)
(e) Damages. (Section 216.1 (b), Section 216.1 (e),

Section 199, Section 226, IPC)
(f) Other relief including moral and exemplary.

(Section 216.1 (e), IPC)
(g) Imprisonment. (Section 217.1, IPC)
International Registration of Works
A statement concerning a work, recorded in an

international register in accordance with an international
treaty to which the Philippines is or may become a party,
shall be construed as true until the contrary is proved

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KORBEL FOUNDATION COLLEGE, INC.

Purok Spring 1, Brgy. Morales, Koronadal City

TRADEMARKS (1) A trade name is any individual name or surname, firm

(3) To advertise the goods (Mirpuri v. CA, G.R. No.

Marks (1) Generic – refers to a particular genus or class of which

Collective Marks (2) Descriptive – identifies a characteristic or quality of an

Trade Name Examples: Fragrant for perfumes or cologne and

Doctrine of Secondary Meaning Declaration of Actual Use (DAU)

2. The registrant's ownership of the mark, and

ACQUISITION OF OWNERSHIP 3. The registrant's exclusive right to use the same in

(1) It is a visible sign (not sounds or scents)

Protection of Trade Names (d) Is identical with a registered mark belonging to a

Non-registrable Marks (f) Is identical with, or confusingly similar to, or constitutes

(i) Consists exclusively of signs or of indications that have

WELL-KNOWN MARKS RIGHTS CONFERRED BY REGISTRATION

Exception: A well-known mark is protected for identical

A trade name of a national of a State that is a party to the

While registration vests ownership over a mark, bad faith

(2) At any time, if the registered mark:

TRADEMARK INFRINGEMENT The use of an identical or colorable imitation of a

Confusion of Confusion of Test to determine confusing similarity between marks

Duplication or imitation is not necessary; nor is it

Holistic Test Idem Sonans

Elements of Unfair Competition:

UNFAIR COMPETITION 1. Confusing similarity in the general appearance of the

Who may file an action of Unfair Competition? COPYRIGHTS

The enjoyment and exercise of copyright, including moral

Copyrightable works An "audiovisual work or fixation" is a work that consists of

Television newscasts are subject to copyright. Although

Non-copyrightable works Elements:

Exception: No prior approval or conditions shall be

Government and Copyright

First Public Distribution of Work

Exception: No such waiver shall be valid where its effects

Work of applied art 25 years from date of

Presumptions of Authorship The term of protection subsequent to the death of the

(2) The person or body corporate whose name

LIMITATION ON COPYRIGHTS delivered in public, if such use is for information purposes

Reproduction is the making of one or more copies,

Under this provision, the 2016 Presidential and Vice-

i. A work of architecture in the form of building or

v. Any work in cases where reproduction would

communication within the meaning of Subsection 171.3.

This presupposes the government's use of a work for

(Section 184.1[k], IPC)

Public performance, in the case of a work other than an

In determining whether the use made of a work in any

DOCTRINE OF FAIR USE Above factors also applicable to unpublished work

The fair use of a copyrighted work for criticism, comment,

COPYRIGHT INFRINGEMENT What Constitutes Infringement

(a) Selling, letting for hire, or by way of trade offering xxx

Substantial Reproduction Except:

Where any article or its packaging or an implement for

Remedies against Copyright Infringement

Any person infringing a right protected under this law shall

(a) Injunctive relief. (Section 216.1 (a), IPC)

(b) Impoundment. (Section 216.1 (c), IPC)

(c) Destruction. (Section 216.1 (d), IPC)

(d) Search and Seizure. (Section 216.2, IPC)

(e) Damages. (Section 216.1 (b), Section 216.1 (e),

(f) Other relief including moral and exemplary.

(g) Imprisonment. (Section 217.1, IPC)