REPUBLIC ACT No.
8293 date, will an action based on Republic
• AN ACT PRESCRIBING THE
INTELLECTUAL PROPERTY CODE AND
ESTABLISHING THE INTELLECTUAL
PROPERTY OFFICE, PROVIDING FOR ITS
POWERS AND FUNCTIONS, AND FOR
OTHER PURPOSES
• Republic Act No. 8293 or the
"Intellectual Property Code of the
Philippines" is actually a codification of
the country's various intellectual
property laws.
• The law repealed all Acts and parts of
Acts inconsistent with it, more
particularly Republic Act No. 165 that
established an independent patent
system, Republic Act No. 166 that
governs Trademark and Presidential
Decree No. 49 known as the "Decree on
Intellectual Property," and Articles 188
and 189 of the Revised Penal Code. (See
Sec. 239)
• The law is a consolidation of Senate Bill
No. 1719 and House Bill No. 8098. It
was approved by then President Fidel V.
Ramos on June 6, 1997 and became
effective on January 1, 1998. (See Sec.
241)
• This law was enacted to give effect to
the Agreement of Trade-Related
Aspects of the Intellectual Property
Rights and what was referred to as
TRIPS that was ratified by the Philippine
Senate on December 14, 1994.
Non-Retroactivity
• By express provision of the law,
Republic Act No. 8293 became effective
on January 1, 1998. Assuming that there
is an infraction of the law prior to this
Act No. 8293 prosper? This was
answered in the negative by the
Supreme Court in Mighty Corporation v.
E & J Gallo Winery, G.R. No. 154342,
July 14, 2004.
• In this case, the Court said:
• "We therefore hold that the courts a
quo erred in retroactively applying the
IP Code in this case.
• "It is fundamental principle that the
validity and obligatory force of a law
proceed from the fact that it has first
been promulgated. A law that is not yet
effective cannot be considered as
conclusively known by the populace. To
make a law binding even before it takes
effect may lead to the arbitrary exercise
of the legislative power. Nova
constitutiousuris formam imponere
debet non praeteritis.
• A new state of the law ought to affect
the future, not the past. Any doubt
must generally be resolved against the
retroactive operation of laws, whether
these are original enactments,
amendments or repeals. There are only
a few instances when laws may be
given retroactive effect, none of which
is present in this case.
• "The IP Code, repealing the Trademark
Law, was approved on June 6, 1997.
Section 241 thereof expressly decreed
that it was to take effect only on
January 1, 1998, without any provision
for retroactive application. Thus, the
Makati RTC and the CA should have
limited the consideration of the present
case within the parameters of the
Trademark Law and the Paris
 Convention, the laws in force at the
time of the filing of the complaint."
State Policies on Intellectual and
Industrial Property System
• The policies of the State on intellectual
property rights are stated in Section 2
of the law, as follows:
• "The State recognizes that an effective
intellectual and industrial property
system is vital to the development of
domestic and creative activity,
facilitates transfer of technology,
attracts foreign investments, and
ensures market access for our products.
It shall protect and secure the exclusive
rights of scientists, inventors, artists and
other gifted citizens to their intellectual
property and creations, particularly
when beneficial to the people, for such
periods as provided in this Act.
• "The use of intellectual property bears a
social function. To this end, the State
shall promote the diffusion of
knowledge and information for the
promotion of national development and
progress and the common good.
• "It is also the policy of the State to
streamline administrative procedures of
registering patents, trademarks and
copyright, to liberalize the registration
on the transfer of technology, and to
enhance the enforcement of
intellectual property rights in the
Philippines."
• International Conventions and
Reciprocity
• Any person who is a national or who is
domiciled or has a real and effective
industrial establishment in a country
which is a party to any convention,
treaty or agreement relating to
intellectual property rights or the
repression of unfair competition, to
which the Philippines is also a party, or
extends reciprocal rights to nationals of
the Philippines by law, shall be entitled
to benefits to the extent necessary to
give effect to any provision of such
convention, treaty or reciprocal law, in
addition to the rights to which any
owner of an intellectual property right
is otherwise entitled by the law. (Sec. 3)
• Any condition, restriction, limitation,
diminution, requirement, penalty or any
similar burden imposed by the law of a
foreign country on a Philippine national
seeking protection of intellectual
property rights in that country, shall
reciprocally be enforceable upon
nationals of said country, within
Philippine jurisdiction. (Sec. 231)
INTELLECTUAL PROPERTY RIGHTS
Intellectual Property Rights, Defined
• The term "intellectual property rights"
has a statutory definition as that
consisting of:
– a) Copyright and Related Rights;
– b Trademarks and Service
Marks;
– c) Geographic Indications;
– d Industrial Designs,
– e) Patents;
– f) Layout Designs
(Topographies) of Integrated
Circuits; and
– g) Protection of Undisclosed
Information. (Sec. 4)
 This statutory definition, however, does
not quite capture the essence of the
term as it merely enumerates what
comprises the term being defined.
Differences Between Copyrights,
Patents, and Trademarks
• Trademark, copyright and patents are
different intellectual property rights
that cannot be interchanged with one
another.
• A trademark is any visible sign capable
of distinguishing the goods (trademark)
or services (service mark) of an
enterprise and shall include a stamped
or marked container of goods.
• In relation thereto, a trade name
means the name or designation
identifying or distinguishing an
enterprise.
• Meanwhile, the scope of a copyright is
confined to literary and artistic works
which are original intellectual creations
in the literary and artistic domain
protected from the moment of their
creation.
• Patentable inventions, on the other
hand, refer to any technical solution of
a problem in any field of human activity
which is new, involves an inventive step
and is industrially applicable.
TRADEMARK
• Trademark has been colorfully defined
as "a distinctive mark of authenticity
through which the merchandise of a
particular producer or manufacturer
may be distinguished from that of
others, and its sole function is to
designate distinctively the origin of the
products to which it is attached."
• The term was also defined in lesser flare
but equally effective manner as"any
word,name symbol or device adopted
and used by a manufacturer or
merchant to identify his goods and
distinguish them from those
manufactured and sold by others."
• The law gives us now a forthright
definition of what a markis It says that a
"mark" means any visible sign capable
of No matter how and when the term is
defined,it remains that a trademark is
something that is a sign and its purpose
is to distinguish one's goods from
another.
• With regards to the first element, the
law went further to declare that a
trademark is a visible sign, thus barring
the possibility of audible (or other
sensory functions aside from the visual)
signs being considered as a trademark.
• distinguishing the goods (trademark) or
services (service mark) of an enterprise
and shall include a stamped or marked
container of goods (Sec. 121.1)
Collective Mark
• Collective mark is also defined by the
law as any visible sign designated as
such in the application for registration
and capable of distinguishing the origin
or any other common characteristic,
including the quality of goods or
services of different enterprises which
use the sign under the control of the
registered owner of the collective mark.
(Sec. 121.2)
• An application for registration of a
collective mark shall designate the mark
as a collective mark and shall be
accompanied bya copy of the
 agreement, if any, governing the use of the collective mark. (Sec. 167.2[a])

Acquiring a Mark • If the applicant is not the owner of the

trademark, he has no right to apply for
• The rights in a mark shall be acquired
its registration.
through registration made validly in
accordance with the provisions of the • Registration merely creates a prima
law. (Sec. 122) facie presumption of the validity of the
registration, of the registrant's
• The significance of acquiring right to a
ownership of the trademark, and ofthe
mark is captured in one case where the
exclusive right to the use thereof.
Supreme Court aptly reminded all that:
• Such presumption, just like the
– "Let it be remembered that
presumptive regularity in the
duly registered trademarks are
performance of official functions, is
protected by law as intellectual
rebuttable and must give way to
properties and cannot be
evidence to the contrary.
appropriated by others without
violating the due process ILLUSTRATIVE CASE- Ownership and
clause. An infringement of Registration
intellectual rights is no less
• Birkenstock Orthopädie GmbH & Co. KG
vicious personal and
(Formerly Birkenstock Orthopaedie
condemnable or real." as theft
Gmbh) v. Philippine Shoe Expo
of material property, whether
Marketing Corporation, G.R. No.
personal or real.”
194307, November 20, 2013
• It must be emphasized that registration
• Facts:
of a trademark, by itself,is not a mode
of acquiring ownership. Petitioner, a corporation duly organized
and existing under the laws of
Germany, applied for various trademark
registrations before the IPO, namely: (a)
"BIRKENSTOCK" under Trademark
Application Serial No. (TASN) 4-1994-
091508 for goods falling under Class 25
of the International Classification of
Goods and Services (Nice Classification)
with filing date of March 11, 1994; (b)
"BIRKENSTOCK BAD HONNEF-RHEIN &
DEVICE
COMPRISING OF ROUND COMPANY
SEAL AND REPRESENTATION OF A
FOOT,CROSS AND SUNBEAM” under
TASN 4-1994-091509 for goods falling
under Class 25 of the Nice Classification
with filing date of March 11, 1994; and
(c) `BIRKENSTOCK BAD OF ROUND
COMPANY HONNEF-RHEIN SEAL AND
REPRESENTATION & DEVICE
COMPRISINGOF A FOOT,CROSS AND
SUNBEAM" under TASN 4-1994-
095043for goods falling under Class 10
of the Nice Classification with filing date
of September 5, 1994 (subject
applications).
However, registration proceedings of
the subject applications were
suspended in view of an existing
registration of the mark "BIRKENSTOCK
AND DEVICE" under Registration No.
56334 dated October 21, 1993
(Registration No. 56334) in the name of
Shoe Town International and Industrial
Corporation, the predecessor-in-
interest of respondent Philippine Shoe
Expo Marketing Corporation. In this
regard, on May 27, 1997 petitioner filed
a petition for cancellation of
Registration No. 56334 on the ground
that it is the lawful and rightful owner
of the Birkenstock marks (Cancellation
Case).
• The aforesaid cancellation of
Registration No. 56334 paved the way
for the publication of the subject
applications in the IPO e-Gazette on
February 2, 2007. In response,
respondent filed three (3) separate
verified notices of oppositions to the
subject applications docketed as Inter
Partes Case Nos. 142007-00108, 14-
2007-00115, and 14-2007-00116,
claiming, inter alla, that:
(a) it, together with its
predecessor-in-interest, has been using
Birkenstock marks in the Philippines for
more than 16 years through the mark
"BIRKENSTOCK AND DEVICE";
(b) the marks covered by the
subject applications are identical to the
one covered by Registration No. 56334
and thus, petitioner has no right to the
registration of such marks;
(c) on November 15, 1991,
respondent's predecessor-in-interest
likewise obtained a Certificate of
Copyright Registration No, 0-11193 for
the word "BIRKENSTOCK";
(d) while respondent and its
predecessor-in-interest failed to file the
10th Year DAU, it continued the use of
"BIRKENSTOCK AND DEVICE" in lawful
commerce; and
(e) to record its continued ownership
and exclusive right to use the
"BIRKENSTOCK" marks, it has filed TASN
4-2006-010273 as a "re-application" of
its old registration, Registration No.
56334.
 On November Order 13, 2007, the
Bureau of Legal Affairs (BLA) of the IPO
issued No. 2007-2051 consolidating
the aforesaid of the inter IPO partes
cases (Consolidated Opposition Cases).
• In its Decision dated May 28, 2008, the
BLA of the IPO sustained respondent's
opposition, thus ordering the rejection
of the subject applications. It ruled that
the competing marks of the parties are
confusingly similar since they contained
the word "BIRKENSTOCK" and are used
on the same and related goods. prior It
found respondent and its predecessor-
in-interest as the prior user and adopter
of “BIRKENSTOCK” in the Philippines,
while on the other hand, petitioner
failed to presentevidence of actual use
in the trade and business in this
country. It opined that while
Registration No. 56334 was cancelled, it
does not follow that prior right over the
mark waslost,as proof of continuous
and uninterrupted use in trade and
business in the Philippines was
presented. The BLA likewise opined that
petitioner's marks are not well-known
in the Philippines and internationally
and that the various certificates of
registration submitted by petitioners
were all photocopiesand, therefore, not
admissible as evidence.
• In his Decision dated December 22,
2009, the IPO Director General reversed
and set aside the ruling of the BLA, thus
allowing the registration of the subject
applications. He held that with the
cancellation of Registration No. 56334
for respondent's failure to file the 10th
Year DAU, there is no more reason to
reject the subject applications on the
ground of prior registration by another
proprietor. More importantly, he found
that the evidence presented proved
that petitioner is the true and lawful
owner and prior user of "BIRKENSTOCK"
marks and thus, entitled to the
registration of the marks covered by the
subject applications. The IPO Director
General further held that respondent's
copyright for the word "BIRKENSTOCK"
is of no moment since copyright and
trademark are different forms of
intellectual property that cannot be
interchanged.
• In its Decision dated June 25, 2010, the
CA reversed and set aside the ruling of
the IPO Director General and reinstated
that of the BLA. It disallowed the
registration of the subject applications
on the ground that the marks covered
by such applications "are confusingly
similar, if not outright identical" with
respondent's mark.
Dissatisfied, petitioner filed a Motion
for Reconsideration dated July 20, 2010,
which was, however, denied in a
Resolution dated October 27, 2010.
Hence, this petition
• Issues:
• Whether or not the subject marks
should be allowed registration in the
name of petitioner.
• Ruling: YES
• 1. Respondent is deemed to have
abandoned the mark. In this case,
respondent admitted that it failed to
file the 10th Year DAU for Registration
No. 56334 within the requisite period,
or on or before October 21, 2004. As a
consequence it was deemed to have
abandoned or withdrawn any rightor
interest over the mark "BIRKENSTOCK."
Neither can it invoke Section 236 of the
 IP Code which pertains to intellectual
property rights obtained under previous
intellectual property laws, e.g ., RA 166,
precisely because it already lost any
right or interest over the said mark.
• 2. Petitioner has duly established its
true and lawful ownership of the mark.
Besides, petitioner has duly
establishedits true and lawful
ownership of the mark "BIRKENSTOCK."
• Under Section 2 of RA 166, which is also
the law governing the subject
applications, in order to register a
trademark, one must be the owner
thereof and must have actually used
the mark in commerce in the
Philippines for two (2) months prior to
the application for registration. Section
2-A of the same law sets out to define
how one goes about acquiring
ownership thereof. Under the same
section, it is clear that actual use in
commerce is also the test of ownership
but the provision went further by saying
that the mark must not have been so
appropriated by another. Significantly,
to be an owner, Section 2-A does not
require that the actual use of a
trademark must be within the
Philippines. Thus, under RA 166, one
may be an owner of a mark due to its
actual use but may not yet have the
right to register such ownership here
due to the owner's failure to use the
same in the Philippines for two (2)
months prior to registration.
• It must be emphasized that registration
of a trademark, by itself, is not a mode
of acquiring ownership. If the applicant
is not the owner of the trademark, he
has no right to apply for its registration.
Registration merely creates a prima
facie presumption of the validity of the
registration, of the registrant's
ownership of the trademark, and of the
exclusive right to the use thereof. Such
presumption, just like the presumptive
regularity in the performance of official
functions, is rebuttable and must give
way to evidence to the contrary.
• Clearly, it is not the application or
registration of a trademark that vests
ownership thereof, but it is the
ownership of a trademark that confers
the right to register the same. A
trademark is an industrial property over
which its owner is entitled to property
rights which cannot be appropriated by
unscrupulous entities that,in one way
or another,happen to registers uch
trademark ahead of its true and lawful
owner. The presumption of ownership
accorded to a registrant must then
necessarily yield to superior evidence of
actual and real ownership of a
trademark.
In the instant case, petitioner was able
to establish that it is the owner of the
mark "BIRKENSTOCK." It submitted
evidence relating to the origin and
history of "BIRKENSTOCK" and its use in
commerce long before respondent was
able to register the same here in the
Philippines. It has sufficiently proven
that "BIRKENSTOCK" was first adopted
in Europe in 1774 by its inventor,
Johann Birkenstock, a shoemaker, on
his line of quality footwear and
thereafter, numerous generations of his
kin continuously engaged in the
manufacture and sale of shoes and
sandals bearing the mark
"BIRKENSTOCK" until it became the
entity now known as the petitioner.
Petitioner also submitted various
certificates of registration of the mark
 "BIRKENSTOCK" in various countries
and that it has used such mark in
different countries worldwide, including
the Philippines
FUNCTIONS OF TRADEMARK
• 1. They indicate origin or ownership of
the articles to which they are attached.
• 2. They guarantee that those articles
come up to a certain standard or
quality.
• 3. They advertise the articles they
symbolize.
NON-REGISTRABLE MARKS
• Marks may be registered as long as it
does not fall under any category
mentioned in Section 123.
• Section 123. Registrability. - 123.1. A
mark cannot be registered if it:
• (a) Consists of immoral, deceptive or
scandalous matter, or matter which
may disparage or falsely suggest a
connection with persons, living or dead,
institutions, beliefs, or national
symbols, or bring them into contempt
or disrepute;
• (b) Consists of the flag or coat of arms
or other insignia of the Philippines or
any of its political subdivisions, or of
any foreign nation, or any simulation
thereof;
• (c) Consists of a name, portrait or
signature identifying a particular living
individual except by his written consent,
or the name, signature, or portrait of a
deceased President of the Philippines,
during the life of his widow, if any,
except by written consent of the
widow;
• (d) Is identical with a registered mark
belonging to a different proprietor or a
mark with an earlier filing or priority
date, in respect of:
• (i) The same goods or services, or
• (ii) Closely related goods or services, or
• (iii) If it nearly resembles such a mark as
to be likely to deceive or cause
confusion;
• (e) Is identical with, or confusingly
similar to, or constitutes a translation of
a mark which is considered by the
competent authority of the Philippines
to be well-known internationally and in
the Philippines, whether or not it is
registered here, as being already the
mark of a person other than the
applicant for registration, and used for
identical or similar goods or services:
Provided, That in determining whether
a mark is well-known, account shall be
taken of the knowledge of the relevant
sector of the public, rather than of the
public at large, including knowledge in
the Philippines which has been
obtained as a result of the promotion of
the mark;
• (f) Is identical with, or confusingly
similar to, or constitutes a translation of
a mark considered well-known in
accordance with the preceding
paragraph, which is registered in the
Philippines with respect to goods or
services which are not similar to those
with respect to which registration is
applied for: Provided, That use of the
mark in relation to those goods or
services would indicate a connection
between those goods or services, and
the owner of the registered mark:
Provided further, That the interests of
 the owner of the registered mark are
likely to be damaged by such use;
• (g) Is likely to mislead the public,
particularly as to the nature, quality,
characteristics or geographical origin of
the goods or services;
• (h) Consists exclusively of signs that are
generic for the goods or services that
they seek to identify;
• (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 established trade
practice;
• (j) Consists exclusively of signs or of
indications that may serve in trade to
designate the kind, quality, quantity,
intended purpose, value, geographical
origin, time or production of the goods
or rendering of the services, or other
characteristics of the goods or services;
• (k) Consists of shapes that may be
necessitated by technical factors or by
the nature of the goods themselves or
factors that affect their intrinsic value;
• (l) Consists of color alone, unless
defined by a given form; or
• (m) Is contrary to public order or
morality.
Illustrative Case
• Mang Inasal Philippines, Inc. v. IFP
Manufacturing Corporation, G.R. No.
221717, June 19, 2017
• Facts:
– Petitioner is a domestic fast
food company and the owner of
the mark "Mang Inasal, Home
of Real Pinoy Style Barbeque
and Device" (Mang Inasal mark)
for services under Class 43 of
the Nice Classification. The said
mark, which was registered
with the IPO in 2006 and had
been used by petitioner for its
chain of restaurants since 2003.
Petitioner, in its opposition, contended
that the registration of respondent's OK
Hotdog Inasal mark is prohibited under
Section 123.1(d) (iii) of Republic Act No.
(RA) 8293
• Petitioner averred that the OK Hotdog
Inasal mark and the Mang Inasal mark
share similarities-both as to their
appearance and as to the goods or
services that they represent which tend
to suggest a false connection or
association between the said marks
and, in that regard, would likely cause
confusion on the part of the public.
One of the arguments raised was that
the goods that the Ok Hotdog Inasal
mark is intended to identify (i.e ., curl
snack products) are also closely related
to the servicesrepresented by the Mang
Inasal mark (i.e ., fast food restaurants).
Both marks cover inasal or inasal-
flavored food products
• Issue:
• Are goods covered by OK Hotdog Inasal
mark (i.e ., curlsnack products) closely
related to the services represented by
Mang Inasal mark (i.e ., fast food
restaurants)?
Ruling: Affirmative
• 1. There is ample reason to conclude
that the said product and services may
 nonetheless be regarded as related to likelihood of the deception
each other. ofsome persons in some
measure acquainted with
– While there can be no quibble
anestablished design and
that the curl snack product for
desirous of purchasing the
which the registration of the OK
commodity with which that
Hotdog Inasal mark is sought
design has been associated. The
cannot be considered as
test is not found in the
identical or similar to the
deception, or the possibility of
restaurant services represented
deception, of the person who
by the Mang Inasal mark, there
knows nothing about the design
is ample reason to conclude
which has been counterfeited,
that the said product and
and who must be indifferent
services may nonetheless be
between that and the other.
regarded as related to each
The simulation, in order to be
other.
objectionable, must be such as
• Related goods and services are those appears likely to mislead the
that, though non-identical or non- ordinary intelligent buyer who
similar, are so logically connected to has a need to supply and is
each other that they may reasonably be familiar with the article that he
assumed to originate from one seeks to purchase.
manufacturer or from economically-
• 3. It is the fact that the underlying
linked manufacturers. In determining
goods and services of both marks deal
whether goods or services are related,
with inasal and inasal-flavored products
several factors may be considered.
whichultimately fixes the relations
Some of those factors recognized in our
between such goods and services.
jurisprudence are: xxx
– In holding so, we took into
• 2. A very important circumstance
account the specific kind of
though is whether there exists a
restaurant business that
likelihood that an appreciable number
petitioner is engaged in, the
of ordinarily prudent purchasers will be
reputation of the petitioner's
misled, or simply confused, as to the
mark, and the particular type of
source of the goods in question.
curls sought tobe marketed by
– The "purchaser" is not the the respondent, thus:
"completely unwary consumer"
• First. Petitioner uses the Mang Inasal
but is the "ordinarily intelligent
mark in connection with its restaurant
buyer” considering the type of
services that is particularly known for its
product involved he is
chicken inasal, i.e ., grilled chicken
accustomed to buy, and
doused in a special inasal marinade. The
therefore to some extent
inasal marinade is different from the
familiar with, the goods in
typical barbeque marinade and it is
question. The test of fraudulent
what gives the chicken inasal its unique
simulation is to be found in the
taste and distinct orange color. Inasal
 refers to the manner of grilling meat Inasal mark is sought are related to the
products using an inasal marinade. services being represented by the Mang
Inasal mark.
• Second. The Mang Inasal mark has been
used for petitioner's restaurant
business since 2003. The restaurant
started in Iloilo but has since expanded
its business throughout the country.
Currently, the Mang Inasal chain of
restaurants has a total of 464 branches
scattered throughout the nation's three
major islands. It is, thus, fair to say that
a sizeable portion of the population is
knowledgeable of the Mang Inasal
mark.

• Third. Respondent, on the other hand,

seeks to market under the OK Hotdog
Inasal mark curl snack products which it
publicizes as having a cheese hotdog
inasal flavor. Accordingly, it is the fact
that the underlying goods and services
of both marks deal with inasal and
inasal-flavored products which
ultimately fixes the relations between
such goods and services. Given the
foregoing circumstances and the
aforesaid similarity between the marks
in controversy, we are convinced that
an average buyer who comes across the
curls marketed under the OK Hotdog
Inasal mark is likely to be confused as to
the true source of such curls. To our
mind, it is not unlikely that such buyer
would be led into the assumption that
the curls are of petitioner and that the
latter has ventured into snack
manufacturing or, if not, that the
petitioner has supplied the flavorings
for respondent's product. Either way,
the reputation of petitioner would be
taken advantage of and placed at the
mercy of respondent.

• All in all, we find that the goods for

which the registration of the OK Hotdog