INTELLECTUAL PROPERTY CODE

(R.A. No. 8293)

Ownership and other real rights over property are
acquired and transmitted by law, by donation, by
testate and intestate succession, and in consequence
Intellectual property rights (IPR) are rights given to of certain contracts, by tradition. They may also be
persons over the creation of their minds. (Divina, acquired by means of prescription. (Art. 712, New
2021 citing Gepty, Intellectual Property Civil Code (NCC))
Compendium)
Ownership may be exercised over things or
Intellectual Property rights.(Art. 427, NCC)

Intellectual Property shall include the rights relating Overview of intellectual property rights
to:
Copyright and Related rights
1. Literary, artistic, and scientific works; Exists over original and derivative intellectual
2. Performances of performing artists, creations in the literary and artistic domain
phonograms, and broadcasts; protected from the moment of their creation. (Sec.
3. Inventions in all fields of human endeavor;
172.1, IPC)
4. Scientific discoveries;
Trademarks and Service marks
5. Industrial designs;
6. Trademarks, service marks, and commercial Any visible sign capable of distinguishing the goods
names and designations; (trademark) or services (service mark) of an
7. Protection against unfair competition; and enterprise and shall include a stamped or marked
8. All other rights resulting from intellectual container of goods. (Sec. 121.1, IPC)
activity in the industrial, scientific, literary or Geographic Indications
artistic fields. (Art. 2(viii), Convention Indications which identify a good as originating in
Establishing the World Intellectual Property the territory of a Member of the Agreement, or a
region or locality in that territory, where a given
Organization, as amended)
quality, reputation or other characteristic of the
good is essentially attributable to its geographical
Intellectual Property Rights
origin. (Art. 22, TRIPS Agreement)

The term “intellectual property rights” consists of: Industrial designs

Any composition of lines or colors or any three-
1. Copyright and Related Rights; dimensional form, whether or not associated with
2. Trademarks and Service Marks; lines or colors, provided that such composition or
3. Geographic Indications; form gives a special appearance to and can serve as
4. Industrial Designs; pattern for an industrial product or handicraft. It
5. Patents; must be new or ornamental. (Secs. 112 & 113, IPC)
6. Layout-Designs (Topographies) of Integrated Patents
Circuits; and Any technical solution of a problem in any field of
7. Protection of Undisclosed Information. (Sec. human activity which is new, involves an inventive
4.1., IPC) step and is industrially applicable. It may be, or may
relate to, a product, or process, or an improvement
Intellectual Property as Property of any of the foregoing. (Sec. 21, IPC)
Layout designs
Ownership is acquired by occupation and by Synonymous with ‘Topography' and means the
intellectual creation. three-dimensional disposition, however expressed,
of the elements, at least one of which is an active

1
element, and of some or all of the interconnections
of an integrated circuit, or such a three-
dimensional disposition prepared for an integrated
circuit intended for manufacture. (Sec. 112(3),
IPC)

Integrated Circuit
A product, in its final form or an intermediate
form, in which the elements are integrally
formed in and/or on a piece of material and
which is intended to perform an electronic
function. (Sec. 112.2, IPC)
Protection of Undisclosed Information
Protection of information lawfully held from
being disclosed to, acquired by, or used by
others without their consent in a manner
contrary to honest commercial practices so long
as such information: (a) is secret in the sense
that it is not, as a body or in the precise A. TRADEMARK
configuration and assembly of its components,
generally known among or readily accessible
to persons within the circles that normally deal
with the kind of information in question; (b) 1. MARKS vs. COLLECTIVE MARKS vs. TRADE
has commercial value because it is secret; and NAMES
(c) has been subject to reasonable steps under
the circumstances, by the person lawfully in Mark
control of the information, to keep it secret.
Any visible sign capable of distinguishing the goods
(Art. 39, TRIPS Agreement)
(trademark) or services (service mark) of an enterprise
Trade Secrets
and shall include a stamped or marked container of
A plan or process, tool, mechanism or
goods. (Sec. 121.1, IPC)
compound known only to its owner and those
of his employees to whom it is necessary to Trademark
confide it. The definition also extends to: (a) a
secret formula or process not patented, but It is any distinctive word, name, symbol, emblem, sign
known only to certain individuals using it in or device or any combination thereof, adopted and
compounding some article of trade having a used by a manufacturer or merchant on his goods to
commercial value; or (b) any formula, pattern, identify and distinguish them from those
manufactured, sold or dealt by others. (Dermaline,
device, or compilation of information that: (1)
Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065,
is used in one's business; and (2) gives the
employer an opportunity to obtain an 26 Aug. 2010)

advantage over competitors who do not

Goodwill
possess the information. (Air Philippines
Corporation v. Pennswell, Inc., G.R. No. 172835,
Reputation and public confidence that a business
13 Dec. 2007)
venture has earned through a period of creditable
dealings. Article 521 of NCC provides that a goodwill
of a business is a property and may be transferred

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together with the right to use the name under which
the business is conducted
Generic marks
It refers to the name of the product they seek to
identify. Generic marks are commonly used as the
name or description of a kind of goods. (FUNA,
Intellectual Property Law, supra at 279)
But under this provision, the term generic must be
understood in reference to the goods or services
associated with the word or sign in question. Read the
case of McDonald’s Corp. et al., vs. L.C. Big Mak
Burger. – the court ruled that the word “Big” in “Big
Mak” is not a generic word for hamburgers.
NOTE: Generic or descriptive words are not subject to
registration and belong to the public domain.
Descriptive marks
Are words that are usually used in trade to describe
the product in question. They convey the
characteristics, functions, qualities, or ingredients of a
product to one who has never seen it or does not
know it exists. (FUNA, Intellectual Property Law,
supra at 280 – 281)
Device
A catch – all term which usually refers to the word or
sign comprising the trademark. It can take on any
form, e.g. letters, words, logos, pictures, a
combination of words and logo, slogans, colors,
product shapes, and sounds. (FUNA, Intellectual
Property Law, supra at 262).
Mark/ Collective Mark/ Trade Name
Any visible sign capable of:
a. distinguishing the goods
(trademark) or services (service
mark) of an enterprise and;
MARK b. shall include a stamped or
marked container of goods.
(Sec. 121.1, IP Code)
Any visible sign designated as such
in the application for registration
and capable of distinguishing the
COLLECTIVE origin or any other common
MARK 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, IP Code)
Any name or designation identifying
TRADE or distinguishing an enterprise (Sec.
NAME 121.3, IP Code);
Purpose of Trademark
1. To indicate origin or ownership of the articles
to which they are attached;
2. To guarantee that those articles come up to
a certain standard of quality; and
3. To advertise the articles they symbolized.
(Mirpuri v. CA, G.R. No. 114508, 19 Nov.
1999)
Marks which may be Registered
Everything can be registered except those
enumerated under Sec. 123.1
General rule: Descriptive name, word, or phrase of the
characteristic, quality, or composition of an article
cannot be registered as trademark or trade name.
Exceptions:
1. If used as part of a Coined mark;
2. If used in an Arbitrary or fanciful manner
and with no relation to the product it
identifies;
3. If used as part of a Composite mark; and
4. If it acquired a Secondary meaning;
Collective Mark
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, IPC)
A "collective mark" or “collective trade-name" is a
mark or tradename used by the members of a
cooperative, an association or other collective group
or organization. (Sec. 40, RA. No. 166)
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 2. Use any name indicating geographical
Transliteration vs. Translation of Mark locations; (Ang Si Heng v. Wellington
Department Store, Inc., G.R. No. L-4531, 10
TRANSLITERATION TRANSLATION OF MARK Jan. 1953)
Definition
An act, process, or 3. Use any name or designation contrary to
instances of An act, process, or public order or morals;
representing or instance of translating as
spelling of words, rendering from one 4. Use a name if it is liable to deceive trade
letters, or characters language or circles or the public as to the nature of the
of one language in representational system enterprise identified by that name; (Sec.
the letters and into another. 165.1, IPC)
characters of another
language or alphabet.
5. Subsequent use of the trade name by a third
party, 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; (Sec.
165.2(b), IPC)

6. Copy or simulate the name of any domestic

Trade Name product (for imported products);

Name or designation identifying or distinguishing an 7. Copy or simulate a mark registered in

enterprise. (Sec. 121.3, IPC)
Any individual name or surname, firm name, device or
word used by manufacturers, industrialists,
merchants, and others to identify their businesses,
vocations, or occupants. (Converse Rubber Corp. v.
Universal Rubber Products Inc., G.R. No. L-27906, 08
Jan. 1987)
accordance with the provisions of IPC (for
imported products); and
8. Use mark or trade name calculated to induce
the public to believe that the article is
manufactured in the Philippines, or that it is
manufactured in any foreign country or
locality other than the country or locality
where it is in fact manufactured.

A trade name need not be registered with the IPO

NOTE: Change in the ownership of a trade name is
before an infringement suit may be filed by its owner
made with the transfer of the enterprise or part
against the owner of an infringing trademark. All that
thereof identified by that name. (Sec. 165.4, IPC)
is required is that the trade name is previously used in
trade or commerce in the Philippines. (Coffee Partners
Trademark vs. Trade name
Inc. v. San Francisco Coffee and Roastery, Inc., G.R.
No. 169504, 03 Mar. 2010)
TRADEMARK TRADE NAME
As to purpose
Limitations on Use of Trade Name or Business Name
Points out distinctly the Identifies and
A person may NOT: origin or ownership of distinguishes an
the goods to which it is enterprise. (IPC, Sec.
1. Use a name if the word is generic; (Lyceum affixed. 121.3)
of the Philippines v. CA, G.R. No. 101897, 05 As to registration and prior use
Mar. 1993)

4
 Must be registered In No need to register in Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850,
order to secure order to secure 08 Sept. 2020)
protection for them. protection for them.
Rights Over a Trademark Conferred by Registration
Trademarks are Trade names are
registered before the registered before the The rights in a mark shall be acquired through
IPO. The IPC no longer DTI. Tradenames may registration made validly in accordance with the
provides for prior use as be acquired by prior provisions of the IP Code. (Sec. 122, IPC) The filing
a condition of use. (Coffee partners date of application is the operative act to acquire
ownership of a mark. inc. vs. San Francisco) trademark rights.
(IPC, Sec. 122)
As to transferability
Q: KPII filed a trademark application for kolin mark
Change of ownership of under class 9 covering “Television sets and DVD
May be transferred with trade name must be players.” KECI opposed KPII’s trademark application
or without transfer of made with transfer of based on the fact that it is the registered owner of
the business. (IPC, Sec. enterprise or part the KOLIN mark and the registration of KPII’s kolin
149) thereof. (IPC, Sec. mark will cause confusion among consumers. KPII
165.4) asserted that KECI’s ownership over the mark is
As to example limited only in connection with the goods specified in
“McDonalds” KECI’s certificate of registration and those related
“BigMac”(McDonald’s McDonald’s thereto. KPII insisted that the “Television sets and
Corp. vs. L.C. Big Mak Corporation (Ibid) DVD players” are not related to the goods covered by
Burger, G.R. No. KECI’s registered mark. Should KPII’s trademark
application be granted?
143993)

A: NO. KECI was already declared owner of the KOLIN

2. ACQUISITION OF OWNERSHIP OF MARK
The right to register a trademark should be based on
ownership. When the applicant is not the owner of the
trademark being applied for, he has no right to apply
for the registration of the same. Under the Trademark
Law, only the owner of the trademark, trade name or
service mark used to distinguish his goods, business or
service from the goods, business or service of others is
entitled to register the same. An exclusive distributor
does not acquire any proprietary interest in the
principal's trademark and cannot register it in his own
name unless it has been validly assigned to him.
(Superior Commercial Enterprises, Inc. v. Kunnan
Enterprises, G.R. No. 169974, 20 Apr. 2010)
Trademark is acquired solely through registration. For
marks that are first used and/or registered after the
effectivity of the IP Code, ownership is no longer
dependent on the fact of prior use in light of the
adoption of the first-to-file rule and the rule that
ownership is acquired through registration. (Zuneca
mark under the Trademark Law. Section 236 of the
Intellectual Property Code states that nothing in the IP
Code – which includes registrations made pursuant
thereto – shall adversely affect the rights of the
enforcement of marks acquired in good faith prior to
the effective date of said law. Furthermore, Section
122 of the same code provides that the rights in a mark
shall be acquired through registration made validly in
accordance with the provisions of the IP Code.
By granting KPII’s trademark application, KPII would
acquire exclusive rights over the stylized version of
KOLIN (“kolin”) for a range of good/services falling
within the normal potential expansion of its business.
This will effectively amount to a curtailment of KECI’s
right to freely use and enforce the KOLIN word mark,
or any stylized version thereof, for its own range of
goods/services, especially against KPII, regardless of
the existence of actual confusion. Based on Section
122 vis-à-vis Section 236 of the Intellectual Property
Code, KPII’s trademark application for kolin cannot be
given due course. (Kolin Electronics Co, Inc. v. Kolin
Philippines International, Inc, G.R. No. 228165, 9 Feb.
2021)

5
Q: Does KECI have the right to register and use the
mark “www.kolin.ph” consistent with its exclusive
right to use the “KOLIN” mark in relation to the goods
/services covered by Class 35.
A: YES. KECI has the right to register and use the mark
“www.kolin.ph”.
Moreover, it is settled that a certificate of registration
of a mark is prima facie evidence of the validity of the
registration, the registrant's ownership of the mark,
and of the registrant's exclusive right to use the same
in connection with the goods or services and those
that are related thereto specified in the certificate.
KECI, having been issued Certificate of Registration, is
the registered owner of the "KOLIN" mark under Class
35, specifically for "the business of manufacturing,
importing, assembling, or selling electronic equipment
or apparatus." This certificate of registration vests
KECI the exclusive right to use the "KOLIN" mark in
relation to the services covered by the registration.
Unless and until the said registration of KECI is nullified
or cancelled through the proper proceeding, the rights
emanating from the said registration should be
respected.
Having been granted the right to exclusively use the
"KOLIN" mark for the business of manufacturing,
importing, assembling, or selling electronic equipment
or apparatus, KECI's application for registration of its
domain name containing the "KOLIN" mark for the
same goods and services as its Class 35 registration for
"KOLIN" is merely an exercise of its right under its Class
35 registration. The use of a registered mark
representing the owners’ goods or services by means
of an interactive website may constitute proof of
actual use that is sufficient to maintain the registration
of the same. The mark displayed over the website no
less serves its functions of indicating the goods or
services' origin and symbolizing the owner's goodwill
than a mark displayed in the physical market.
Therefore, there is no less premium to recognize
actual use of marks through websites than their actual
use through traditional means. (Kolin Electronics v.
Taiwan Kolin, supra, J. Hernando)
Prior Use of Mark as a Requirement
Actual prior use in commerce in the Philippines has
been abolished as a condition for the registration of
trademark.
Q: S Development Corporation sued Shangrila
Corporation for using the “S” logo and the trade
name “Shangrila.” The former claims that it was the
first to register the logo and the trade name in the
Philippines and that it had been using the same in its
restaurant business. Shangrila Corporation counters
that it is an affiliate of an international organization
which has been using such logo and trade name
“Shangrila” for over 20 years.
However, Shangrila Corporation registered the trade
name and logo in the Philippines only after the suit
was filed.
a. Which of the two corporations has a better right
to use the logo and the trade name? Explain.
A: S Corporation. Rights in a trademark are acquired
through valid registration. (Sec. 122, IPC) S
Development Corporation has a better right to use the
logo and the tradename, since the protective benefits
of the law are conferred by the fact of registration and
not by use. Although Shangrila Corporation's parent
had used the tradename and logo long before, the
protection of the laws will be for S Development
Corporation because it was the first entity to register
the intellectual properties. (UPLC Commercial Law
Suggested Answers)
b. How does the international affiliation of
Shangrila Corporation affect the outcome of the
dispute? Explain. (2005 BAR)
A: Shangrila’s international affiliation shall result in a
decision favorable to it. The Paris Convention
mandates that protection should be afforded to
internationally known marks as signatory to the Paris
Convention, without regard as to whether the foreign
corporation is registered, licensed, or doing business
in the Philippines. Shangrila’s separate personalities
from their mother corporation cannot be an obstacle
in the enforcement of their rights as part of the Kuok
Group of Companies and as official repository,
manager and operator of the subject mark and logo.
Besides, R.A. No. 166 did not require the party seeking
relief to be the owner of the mark but "any person
who believes that he is or will be damaged by the
6
registration of a mark or trade name". (Shangri-la
International Hotel Management, LTD., et.al v.
Developers Group of Companies, Inc. G.R. No.
159938, 31 March 2006)
Q: Natrapharm Corp. is selling citicoline under the
trademark ZYNAPSE that is used for treating stroke
and registered it with the IPO. In 2007, It filed a
complaint against Zuneca for injunction and
trademark infringement. Zuneca is selling a drug
called carbamezipine under the brand name ZYNAPS
that is used to control seizure disorders. Natrapharm
claimed that the term ZYNAPSE was registered in IPO
upon researching that there is no product using the
same. On the other hand, Zuneca alleged that it has
been using the term ZYNAPS since 2004 and already
secured a certificate of product listing from BFAD.
Also, it claimed that it was impossible for
Natrapharm not to have known the existence of
ZYNAPS before registration of ZYNAPSE since
Natrapharm promoted its products in the same
publication where ZYNAPS was advertised. RTC ruled
in favor of Natrapharm stating that it is the first filer
in good faith thus, it may prevent others. Is the court
correct?
A: YES. Under the IP Code, ownership of a mark is
acquired through registration. Subparagraph (d) of the
provision of the Trademark Law was amended in the
IP Code to, among others, remove the phrase
''previously used in the Philippines by another and not
abandoned." Under the Trademark Law, as amended,
the first user of the mark had the right to file a
cancellation case against an identical or confusingly
mark registered in good faith by another person.
However, with the omission in the IP Code provision
of the phrase "previously used in the Philippines by
another and not abandoned," said right of the first
user is no longer available. In effect, based on the
language of the provisions of the IP Code, even if the
mark was previously used and not abandoned by
another person, a good faith applicant may still
register the same and thus become the owner thereof,
and the prior user cannot ask for the cancellation of
the latter's registration.
If the lawmakers had wanted to retain the regime of
acquiring ownership through use, this phrase should
have been retained in order to avoid conflicts in
ownership. The removal of such a right unequivocally
shows the intent of the lawmakers to abandon the
regime of ownership under the Trademark Law, as
amended. (Zuneca Pharmaceutical v. Natrapharm
Inc, G.R. No. 211850, 08 Sept. 2020)
Rights Conferred to the Owner of a Registered Mark
The owner of a registered mark shall have the
exclusive right to:
1. Use the mark for one’s own goods or
services; and
2. Prevent third parties from using, without his
consent, signs or containers which are
identical or similar to the registered
trademark where such use would result in a
likelihood of confusion.
In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be
presumed. (Secs. 147 and 147.1, IPC)
Trademark owner enjoys protection in product and
market areas that are the normal potential expansion
of his business. (Dermaline Inc.. v. Myra
Pharmaceuticals, Inc., GR No. 190065, 16 Aug. 2010)
Doctrine of Secondary Meaning
Secondary meaning means that a word or phrase
originally incapable of exclusive appropriation with
reference to an article in the market (because it is
geographically or otherwise descriptive) might
nevertheless have been used for so long and so
exclusively by one producer with reference to his
article that, in the trade and to that branch of the
purchasing public, the word or phrase has come to
mean that the article was his property. (Pearl & Dean,
Inc. v. Shoemart, Inc., G.R. No. 148222, 15 Aug. 2003)
Marks which are weak, because they are not
inherently distinctive, but because of use or
popularization they have acquired distinctiveness, this
is called acquiring distinctiveness or acquiring
“secondary meaning”. (IPC, Sec. 123.2)
Requisites to acquire secondary meaning
1. The secondary meaning must have arisen as a
result of substantial commercial use of a mark in
the Philippines;
7

2. Such use must result in the distinctiveness of the
mark insofar as the goods are concerned; and
3. Proof of substantially exclusive and continuous
commercial use in the Philippines for five (5)
years before the date on which the claim of
distinctiveness is made perceptibly disqualified
from trademark registration. (Shang Properties
Realty Co. and Shang Properties, Inc. vs. St.
Francis Dev’t. Co., G.R. No. 190706)
Concept of Actual Use
The actual use of the mark representing the goods or
services introduced and transacted in commerce over
a period of time creates that goodwill which the law
seeks to protect.
The use of a registered mark representing the owner's
goods or services by means of an interactive website
may constitute proof of actual use that is sufficient to
maintain the registration of the same (W Land
Holdings, Inc., v. Starwood Hotels and Resorts
Worldwide, Inc., G.R. No. 222366, 04 Dec. 2017)
It must be emphasized, however, that the mere
exhibition of goods or services over the internet,
without more, is not enough to constitute actual use.
To reiterate, the "use" contemplated by law is genuine
use – that is, a bona fide kind of use tending towards
a commercial transaction in the ordinary course of
trade. Since the internet creates a borderless
marketplace, it must be shown that the owner has
actually transacted, or at the very least, intentionally
targeted customers of a particular jurisdiction in order
to be considered as having used the trademark in the
ordinary course of his trade in that country.
A showing of an actual commercial link to the country
is therefore imperative. (W Land Holdings, Inc., v.
Starwood Hotels and Resorts Worldwide, Inc., supra.)
Duration or Effectivity of Trademark Registration
The trademark registration remains in force for 10
years, subject to indefinite renewals of 10 years each.
The registrant is required to file a declaration of actual
use and evidence to that effect, or show valid reasons
based on the existence of obstacles to such use, within
one (1) year from the fifth anniversary of the date of
the registration of the mark. Otherwise, the mark shall
be removed from the Register by the IPO. (Secs. 145
and 146, IPC)
Application for Registration of a Mark by a Foreign
National
An application for registration of a mark filed in the
Philippines by a foreign national of a country with
whom the Philippines extends reciprocity rights, and
who previously duly filed an application for
registration of the same mark in one of those
countries, shall be considered as filed as of the day the
application was first filed in the foreign country. (Sec.
131.1, IPC)
However, the owner of a well-known mark in the
Philippines that is identical with, or confusingly similar
to, or constitutes a translation of a mark, although not
registered, may oppose the application of a mark of
foreign origin, or petition the cancellation of its
registration or sue for unfair competition. (Sec. 131.3,
IPC)
Q: Birkenstock, applied for various trademark
registrations before the IPO. However, registration
proceedings of the subject applications were
suspended in view of an existing registration of the
mark "BIRKENSTOCK AND DEVICE" in the name of
STIIC, predecessor- in-interest of PSEMC. Birkenstock
filed a cancellation case on the ground that it is the
lawful and rightful owner of the Birkenstock marks.
However, STIIC/PSEMC’s registration expired,
thereby resulting in the cancellation of such mark.
Accordingly, the cancellation case was dismissed for
being moot and academic.
The aforesaid cancellation paved the way for the
publication of the subject applications in the IPO e-
Gazette. In response, STIIC/PSEMC filed three (3)
separate Inter Partes Cases. The BLA-IPO sustained
STIIC/PSEMC’s opposition. IPO Director General
reversed and set aside the ruling of the BLA. The CA
reversed and set aside the ruling of the IPO Director
General and reinstated that of the BLA.
Should registration of the subject marks be allowed
in favor of Birkenstock?
A: YES. It is not the application or registration of a
trademark that vests ownership thereof, but it is the
8
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 register
such 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.
(Divina, 2014; Birkenstock Orthopaedie GMBH and
Co. KG v. Philippine Shoe Expo Marketing
Corporation, G.R. No. 194307, 20 Nov. 2013)
NOTE: The rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of the IP Code. (Sec. 122, IPC; Zuneca
Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850,
08 Sept. 2020)
Q: E.Y. Industrial is a domestic corporation engaged
in the production, distribution and sale of air
compressors and other industrial tools and
equipment. Shen Dar is a Taiwan-based foreign
corporation engaged in the manufacture of air
compressors. Both companies claimed to have the
right to register the trademark "VESPA" for air
compressors.
On 09 June 1997, Shen Dar filed Trademark
Application with the IPO for the mark "VESPA,
Chinese Characters and Device" for use on air
compressors and welding machines. On 28 July 1999,
EYIS filed Trademark Application also for the mark
"VESPA," for use on air compressors.
On 21 June 2004, Shen Dar filed a Petition for
Cancellation of EYIS’ COR. Shen Dar primarily argued
that the issuance of the COR in favor of EYIS violated
Sec. 123.1(d), (e), and (f) of R.A. No. 8293, otherwise
known as the Intellectual Property Code (IP Code),
having first filed an application for the mark.
Who is the true owner of the mark?
A: E.Y. Industrial is the true owner of the mark. Under
the Intellectual Property Code, the registration of a
mark is prevented with the filing of an earlier
application for registration. This must not, however,
be interpreted to mean that ownership should be
based upon an earlier filing date. Notably, the Court
has ruled that the prior and continuous use of a mark
may even overcome the presumptive ownership of
the registrant and be held as the owner of the mark.
Registration, without more, does not confer upon the
registrant an absolute right to the registered mark.
The certificate of registration is merely a prima facie
proof that the registrant is the owner of the registered
mark or trade name. Evidence of prior and continuous
use of the mark or trade name by another can
overcome the presumptive ownership of the
registrant and may very well entitle the former to be
declared owner in an appropriate case.
E.Y. Industrial’s prior adoption and continuous use of
the mark "VESPA" on air compressors is bolstered by
numerous documentary evidence. The use by E.Y.
Industrial in the concept of owner is shown by
commercial documents, sales invoices unambiguously
describing the goods as "VESPA" air compressors. E.Y.
Industrial have sold the air compressors bearing the
"VESPA" to various locations in the Philippines, as far
as Mindanao and the Visayas since the early 1990s.
As such, E.Y. Industrial must be considered as the prior
and continuous user of the mark "VESPA" and its true
owner and is entitled to the registration of the mark in
its name. (E.Y. Industrial Sales v. Shen Dar Electricity
and Machinery Co., Ltd., G.R. No. 184850, 20 Oct.
2010)
Who May File Opposition to Trademark Registration;
Grounds
Any person who believes that he would be damaged
by the registration of a mark may, upon payment of
the required fee and within thirty (30) days after the
publication referred to in Subsection 133.2, file with
the Office an opposition to the application. (Sec. 134,
IPC)
3. ACQUISITION OF OWNERSHIP OF TRADE NAME
Acquisition of Trade Names
A name or designation may not be used as a trade
name if by its nature or the use to which such name or
designation may be put, it is contrary to public order
or morals and if, in particular, it is liable to deceive
trade circles or the public as to the nature of the
enterprise identified by that name. (Sec. 165.1, IPC)
9
In particular, any subsequent use of the trade name by
a third party, 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. (Sec. 165.2(b), IPC)
Ownership of a trade name may be acquired not
necessarily by registration but by adoption and use in
trade or commerce. As between actual use of a mark
without registration, and registration of the mark
without actual use thereof, the former prevails over
the latter. For a rule widely accepted and firmly
entrenched is that actual use in commerce or business
is a prerequisite to the acquisition of the right of
ownership. (Shangri-La International Hotel
Management, Ltd. v. Developers Group of Companies,
Inc., G.R. No. 159938, 31 Mar. 2006)
The two concepts of corporate name or business
name and trademark or service mark are not mutually
exclusive. It is common, indeed likely, that the name
of a corporation or business is also a trade name,
trademark, or service mark. (Shangri-La International
Hotel Management, Ltd. v. Developers Group of
Companies, Inc., supra)
A trade name of a national of a State that is a party to
the Paris Convention, whether or not the trade name
forms part of a trademark, is protected “without the
obligation of prior filing or registration.” (Fredco
Manufacturing Corporation v. President and Fellows
of Harvard College (Harvard University), G.R. No.
185917, 01 June 2011; Art. 8, Paris Convention for the
Protection of Industrial Property)
A trade name need not be registered with the IPO
before an 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 in the Philippines. A corporation
has the exclusive right to use its name. The right
proceeds from the theory that it is a fraud on the
corporation which has acquired a right to that name
and perhaps carried on its business thereunder, that
another should attempt to use the same name, or the
same name with a slight variation in such a way as to
induce persons to deal with it in the belief that they
are dealing with the corporation which has given a
reputation to the name. (Coffee Partners, Inc. v. San
Francisco Coffee & Roastery, Inc., G.R. No. 169504, 03
Mar. 2010)
Effect of Registration
The rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of the IPC. (Sec. 122, IPC)
Certificate of Registration
A certificate of registration of a mark shall be prima
facie evidence of the validity of the registration, the
registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in
connection with the goods or services and those that
are related thereto specified in the certificate. (Sec.
138, IPC)
4. NON – REGISTRABLE MARKS
Non-Registrable Marks
1. Consists of Immoral, deceptive, or scandalous
matter or falsely suggest a connection with
persons, institutions, beliefs, or national symbols;
2. Consists of the Flag or coat of arms or other
insignia of the Philippines or any of its political
subdivisions, or of any foreign nation;
3. Consists of a name, portrait or signature
identifying a particular Living individual except by
his written consent, or the name, signature, or
portrait of a deceased President of the
Philippines, during the life of his widow except by
written consent of the widow;
4. Identical with a registered mark belonging to a
different proprietor or a mark with an Earlier
filing or priority date, in respect of:
a. The same goods or services;
b. Closely related goods or services; or
c. If it nearly resembles such a mark as to
be likely to deceive or cause confusion;
First-to-file for Registration Rule
10
This rule establishes the urgency of registering your
trademark.
Thus, where two trademarks, belonging to different
proprietors, are identical or nearly resemble each
other such as to likely deceive or cause confusion and
the marks pertain to the same goods or services or are
closely related goods or services, the mark first filed
for registration would prima facie be the superior
registration.
Exceptions where first – to – file rule is not
applicable:
i. Prior registrations made in bad faith
ii. Prior registration was preceded by a prior
use in good faith and in concept of an owner
by another
iii. It would conflict with a claim to priority right
When are goods related to each other
The question of related goods is highly factual.
Several factors in determining whether goods are
related were enumerated, to wit:
a) The business (and its location) to which the
goods belong;
b) The class of product to which the goods
belong;
c) The product’s quality, quantity, or size,
including the nature of the package,
wrapper, or container;
d) The nature and cost of the articles;
e) The descriptive properties, physical
attributes or essential characteristics with
reference to their form, composition,
texture, or quality;
f) The purpose of the goods;
g) Whether the article is bought for immediate
consumption, that is, day – to – day
household items;
h) The fields of manufacture;
i) The conditions under which the article is
usually purchased; and
j) The channels of trade through which the
goods flow, how they are distributed,
marketed, displayed, and sold. (Mighty
Corporation and La Campana Pabrica de
Tabaco, Inc., vs. E & J Gallo winery, G.R. No.
154342)
5. Is identical with an internationally well-known
mark, Whether or not it is registered here, used
for identical or similar goods or services Provided,
that in determining whether a mark is well-
known, account shall be taken of;
6. Is identical with an internationally well-known
mark which is Registered in the Philippines with
respect to non-similar goods or services.
Provided, that the interests of the owner of the
registered mark are likely to be damaged by such
use;
7. Is likely to Mislead the public as to the nature,
quality, characteristics or geographical origin of
the goods or services;
8. Consists exclusively of signs that are Generic for
the goods or services that they seek to identify;
9. Consists exclusively of signs or of indications that
have become Customary or usual to designate
the goods or services in everyday language or in
bona fide and established trade practice.
10. Consists exclusively of signs or indications that
may serve in trade to Designate the kind, quality,
quantity, intended purpose, value, geographical
origin, time or production of the goods or
rendering of the services, or other characteristics
of the goods or services;
11. Consists of Shapes that may be necessitated by
technical factors or by the nature of the goods
themselves or factors that affect their intrinsic
value;
12. Consists of Color alone, unless defined by a given
form; or
13. Is Contrary to public order or morality (Sec. 123,
IPC)
Q: Laberge, Inc., manufactures and markets after-
shave lotion, shaving cream, and deodorants using
the trademark “PRUT”, which is registered with the
Intellectual Property Office. Laberge does not
manufacture briefs and underwear and these items
are not specified in the certificate of registration. JG
who manufactures briefs and underwear, wants to
know whether, under our laws, he can use and
11
register the trademark “PRUTE” for his merchandise.
Can JG register the trademark?
A: YES. The trademark registered in the name of
Laberge, Inc. covers only after-shave lotion, shaving
cream, deodorant, talcum powder and toilet soap. It
does not cover briefs and underwear. The limit of the
trademark is stated in the certificate issued to Laberge
Inc. It does not include briefs and underwear which
are different products protected by Laberge’s
trademark. JG can register the trademark “PRUTE” to
cover its briefs and underwear. (Faberge Inc. v. IAC,
G.R. No. 71189, 04 Nov. 1992)
Q: CPI was registered with the SEC in January 2001. It
has a franchise agreement with Coffee Partners Ltd.
(CPL) for a non-exclusive right to operate coffee
shops in the Philippines using trademarks designed
by CPL such as SAN FRANCISCO COFFEE. SFCRI was
registered with the SEC in May 1995. It registered the
business name SAN FRANCISCO COFFEE & ROASTERY,
INC. with the DTI in June 1995. In June 2001, SFCRI
discovered that CPI was about to open a coffee shop
under the name SAN FRANCISCO COFFEE in Libis,
Quezon City. SFCRI sent a letter to CPI demanding
that the latter stop using the name SAN FRANCISCO
COFFEE. Does CPI ‘s use of the trademark SAN
FRANCISCO COFFEE constitutes infringement of
SFCRI ‘s trade name SAN FRANCISCO COFFEE &
ROASTERY, INC., even if the trade name is not
registered with the Intellectual Property Office (IPO)?
A: YES. Petitioner’s argument that “San Francisco” is
just a proper name referring to the famous city in
California and that “coffee” is simply a generic term, is
untenable. Respondent has acquired an exclusive right
to the use of the trade name “SAN FRANCISCO COFFEE
& ROASTERY, INC.” since the registration of the
business name with the DTI in 1995. Thus,
respondent’s use of its trade name from then on must
be free from any infringement by similarity. Of course,
this does not mean that respondent has exclusive use
of the geographic word “San Francisco” or the generic
word “coffee.” Geographic or generic words are not,
per se, subject to exclusive appropriation. It is only the
combination of the words “SAN FRANCISCO COFFEE,”
which is respondent’s trade name in its coffee
business, that is protected against infringement on
matters related to the coffee business to avoid
confusing or deceiving the public. (Divina, 2014;
Coffee Partners, Inc. v. San Francisco Coffee and
Roastery, Inc., G.R. No. 169504, 03 Mar. 2010)
Q: Is there an infringement of trademark when two
similar goods use the same words, ‘PALE PILSEN’?
A: NONE, because “pale pilsen” are generic words
descriptive of the color (pale) and of a type of beer
(pilsen), which is a light bohemian beer with strong
hops flavor that originated in the City of Pilsen in
Czechoslovakia. Pilsen is a primarily geographically
descriptive word, hence, non-registrable and not appropriable by
any beer manufacturer. (Asia Brewery, Inc. v. CA,
G.R. No. 103543, 05 July 1993)
5. TEST TO DETERMINE CONFUSING SIMILARITY
BETWEEN MARKS
Similarity between Marks
The likelihood of confusion is a relative concept; to be
determined only according to the particular and
sometimes peculiar circumstances of each case. In
trademark cases, even more than in any other
litigation, precedent must be studied in light of the
facts of the particular case.
The wisdom of the likelihood of confusion test lies in
its recognition that each trademark infringement case
presents its own unique set of facts. (Societe Des
Produits Nestle, S.A. and Nestle Philippines, Inc. v.
CA and CFC Corporation, G.R. No. 112012, 04 Apr.
2001)
Actual confusion NOT required
The test is whether the public is likely to be deceived.
Only likelihood of confusion on the part of the buying
public is necessary so as to render two marks
confusingly similar so as to deny the registration of the
junior mark.
Two (2) Types of Confusion
1. Confusion of goods (product confusion) – where
the ordinarily prudent purchaser would be
induced to purchase one product in the belief
that he was purchasing the other; and
12
2. Confusion of business (source or origin Trademark infringement requires the less stringent
confusion) – where, although the goods of the standard of “likelihood of confusion” only.
parties are different, the product, the mark of
which registration is applied for by one party, is While proof of actual confusion is the best evidence of
such as might reasonably be assumed to originate infringement, its absence is inconsequential.
with the registrant of an earlier product, and the (McDonalds Corporation v. L. C. Big Mak Burger,
public would then be deceived either into that Inc., G.R. No. 143993, 18 Aug. 2004)
belief or into the belief that there is some
connection between the two parties, though Confusion of goods/services vs. Confusion of
inexistent. (Mang Inasal Philippines, Inc. v. IFP business/origin
Manufacturing Corporation, G.R. No. 221717, 19
June 2017) CONFUSION OF CONFUSION OF
GOODS/SERVICES BUSINESS/ORIGIN
NOTE: Likelihood of confusion or mistake is greater Exists when one party’s
when identical or closely similar marks are used on product or service
non – competing but related and common household Exists when the though different from
items because they are purchased by ordinary ordinary prudent that of another, is such
purchasers who usually know them by their names or purchaser would be as might reasonably be
trademarks. (Might Corp. vs. E. & J. Gallo, G.R. No. induced to purchase assumed to originate
154342) one product or service from the latter and the
because of the public would then be
Likelihood of Confusion in Other Cases similarity of the marks deceived into the belief
or trade names used on that there is some
In determining likelihood of confusion between marks the same kind of connection between
used on non-identical goods or services, several product or service. the parties, which in
factors may be taken into account, such as, but not (Skechers, USA, Inc., fact is absent. (Skechers,
limited to: vs. Inter Pacific USA, Inc., vs. Inter
Industrial Trading, Pacific Industrial
1. The strength of plaintiff's mark; G.R. No. 164321) Trading, G.R. No.
2. The degree of similarity between the 164321)
plaintiff's and the defendant's marks; Confusingly similar Confusingly similar
3. The proximity of the products or services; marks are used on the marks are employed in
4. The likelihood that the plaintiff will bridge same kinds of different or non –
the gap; competing competing
5. Evidence of actual confusion; goods/services. goods/services.
6. The defendant's good faith in adopting the
mark;
Colorable imitation
7. The quality of defendant's product or
service; and/or
It refers to such similarity in form, content, words,
8. The sophistication of the buyers.
sound, meaning, special arrangement or general
appearance of the mark or trade name with that of the
Presumption of Likelihood of Confusion
other mark or trade name in their overall presentation
or in their essential, substantive or distinctive parts as
Likelihood of confusion shall be presumed in case an
would likely mislead or confuse persons in the
identical sign or mark is used for identical goods or
ordinary course of purchasing the genuine article.
services.

Tests on Confusion of Goods or Services

Less Stringent Standard of Likelihood of Confusion

1. Dominancy Test;
Failure to present proof of actual confusion does not
2. Holistic Test, Abandoned;
negate their claim of trademark infringement.

13

Other Factors To be Considered
1. The class of Purchasers;
2. The nature and cost of Articles; and
3. Conditions under which they are Purchased.
In cases involving trademark infringement, no set of
rules can be deduced. Each case must be decided on
its own merits. (UFC Philippines, Inc. vs. Barrio
Fiesta, G.R. No. 198889)
Test on Confusing of Origin
Whether the non – competing articles may be
classified under two different classes because they are
deemed not to possess the same descriptive
properties. (Ang vs. Teodoro, G.R. No. L – 48226)
a) DOMINANCY TEST
Definition
The test of dominancy focuses on the similarity of the
prevalent features of the competing trademarks
which might cause confusion or deception, and thus
infringement. (Divina, 2021)
If the competing trademark contains the main or
essential or dominant features of another, and
confusion and deception is likely to result,
infringement takes place. (UFC Philippines, Inc. v.
Fiesta Barrio Manufacturing Corp., G.R. No. 198889,
20 Jan. 2016)
Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an
effort to imitate. The question is whether the use of
the marks involved is likely to cause confusion or
mistake in the mind of the public or deceive
purchasers. (Ibid.)
Characteristics of Dominancy Test
1. As to Consideration – Focuses on the similarity of
the main, essential, dominant, or prevalent
features of a mark (McDonald’s Corp vs. L.C.
Big Mak, G.R. No. 143993)
2. As to Basis of Comparison – Relies on visual,
aural, and connotative comparisons, and overall
impressions between the two trademarks
(Societe Des Produits Nestle, S.A. vs. CA, G.R.
No. 112012)
3. As to Test – The test is whether there is similarity
of the prevalent features of the competing
trademarks which might cause confusion or
deception and thus constitute infringement
(Societe Des Produits Nestle, S.A. vs. C.A., G.R.
No. 112012)
NOTE: Exact duplication or imitation is not
necessary (Mighty Corporation vs. E. &. J. Gallo
Winery, G.R. No. 154342)
Q: Kolin Philippine International (KPII), an affiliate of
TKC, filed Trademark Application No. 4-2006-010021
for the mark under Class 9 covering “television and
DVD players. Kolin Electronics Co., Inc (KECI) filed an
opposition against KPII’s trademark Application for
the reason that it is the registered owner of the mark
and that the registration of KPII will cause confusion
among customers. KPII argued that the promulgation
of KECI ownership cannot apply to KPII case because
it was not a party to the said case and the ownership
case is not res judicata to the KPII case. The IPO – BLA
rejected KPII claim because it will cause confusion to
the products offered by KECI and KPII. Whether or
not Kolin Philippines International Inc., should be
allowed to register its mark?
A: NO. To summarize the above discussion: (1) there
is resemblance between KECI's and KPII's marks; (2)
the goods covered by KECI's are related to the goods
covered by KPII's ; (3) there is evidence of actual
confusion between the two marks; (4) the goods
covered by KPII's fall within the normal potential
expansion of business of KECI; (5) sophistication of
buyers is not enough to eliminate confusion; (6) KPII's
adoption of KECI's coined and fanciful mark would
greatly contribute to likelihood of confusion; and (7)
KPII applied for in bad faith. Thus, KPII's application for
should be denied because it would cause likelihood of
confusion and KECI's rights would be damaged.
Further, KECI was already declared as the owner of the
mark under Trademark Law. The existence of
likelihood of confusion is already considered as
damage that would be sufficient to sustain the
opposition and rejection of KPII's trademark
application. The Court is likewise cognizant that, by
granting this registration, KPII would acquire exclusive
14
rights over the stylized version of KOLIN for a range of
goods/services, 172 i.e., covered goods, related
goods/services, goods/services falling within the
normal potential expansion of KPII's business. Owing
to the peculiar circumstances of this case, this will
effectively amount to a curtailment of KECI's right to
freely use and enforce the KOLIN word mark, or any
stylized version thereof, for its own range of
goods/services, especially against KPII, regardless of
the existence of actual confusion. (Kolin Electronics v.
Kolin Philippines, G.R. No. 228165, 09 Feb. 2021)
NOTE: The use of the Holistic Test in determining the
resemblance of marks has been abandoned. (Ibid.)
b) HOLISTIC TEST, Abandoned
Q: Petitioner Levi Strauss & Co. is a foreign
corporation and owner of the word mark "LEVI'S". It
filed before the IPO a petition for cancellation of the
trademark “LIVE’S” on the ground that it is
confusingly similar with petitioner's "LEVI'S" mark.
Both marks cover the same goods under Class 25 of
the Nice Classification. Respondent Guevarra alleged
that its mark is not confusingly similar with
petitioner's "LEVI'S" mark, claiming that the
probability of confusion arising from the alleged
similarity of the marks is negligible due to the
attention given by the purchasers to the goods they
are purchasing; and that there are sufficient
differences in the price, hand tags, and other
markings of the products. Should the Petition for
Cancellation be granted?
A: YES. The Holistic Test in determining trademark
resemblance has been abandoned. The Dominancy
Test must be used in determining the existence of
confusing similarity between the "LEVI'S" and “LIVE’S”
marks. This test relies not only on the visual but also
on the aural and connotative comparisons and overall
impressions between the two trademarks. The
dominant feature of petitioner's "LEVI'S" marks is the
word "LEVI'S" composed of five (5) letters, namely "L",
"E", "V", "I", and "S" with an apostrophe separating
the fourth and fifth letters. Notably, for petitioner's
stylized marks, the letter "E" is in lowercase format
with the rest in uppercase format. On the other hand,
the dominant feature of respondents' “LIVE’S” stylized
mark is the word "LIVE'S" also composed of the same
five (5) letters; and its only difference with petitioner's
marks is that the positioning of the letters "E" and "I"
are interchanged. Furthermore, respondents' mark
also depicts the letter "E" in lowercase format with the
rest in uppercase format.
From the foregoing, it is thus readily apparent that
although petitioner's and respondents' marks are
neither spelled identically nor pronounced in the same
way, nor possess the same meaning, they both begin
with the same letter and are in the possessive form as
denoted by the apostrophe before the letter "S" at the
end, with only the second and fourth letters re-
arranged. Simply put, respondents' “LIVE’S” mark is
but a mere anagram of petitioner's "LEVI'S" marks. It
would not be farfetched to imagine that a buyer, when
confronted with such striking similarity would be led
to confuse one over the other. Thus, by simply
applying the Dominancy Test, it can already be
concluded that there is a likelihood of confusion
between petitioner's "LEVI'S" marks and respondents'
“LIVE’S” mark. (Levi Strauss & Co. v. Sevilla, G.R. No.
219744, 01 Mar. 2021)
6. WELL – KNOWN MARKS
Well-known Marks
A well-known mark is 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.
(Divina, 2021; Sec. 123.1(e), IPC)
Scope of Protection of the Paris Convention
The scope of protection initially afforded by the Paris
Convention has been expanded via a nonbinding
recommendation that a well-known mark should be
protected in a country even if the mark is neither
registered nor used in that country. (Sehwani,
Incorporated v. In-N-Out Burger, Inc., G.R. No.
171053, 15 Oct. 2007)
Internationally Well-known Mark
1. Considered by the competent authority of the
Philippines to be “well-known” internationally
and in the Philippines as the mark of a person
other than the applicant or registrant;
15
2. Need not be used or registered in the Philippines;
and

3. Need not be known by the public at large but only

by relevant sector of the public. (Sec. 123.1(e),
IPC)

NOTE: If the well-known mark is registered in the

Philippines, any mark identical with, confusingly 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. (Sec. 123.1(i), IPC; Divina, 2022)
Factors to be considered in Determining Well- Known
Marks
1. Duration, extent, and geographical area of any
use of the mark; in particular, the duration, extent
and geographical area of any promotion of the
mark, including advertising or publicity and the
presentation, at fairs or exhibitions, of the goods
and/or services to which the mark applies;

Rules regarding Internationally Well-Known Marks 2. Market share, in the Philippines and in other
countries, of the goods and/or services to which
the mark applies;
A mark cannot be registered if it is identical with, or
confusingly similar to, or constitutes a translation of a
3. Degree of the inherent or acquired distinction of
mark which is considered by the competent authority
the mark;
of the Philippines to be well-known internationally
and in the Philippines, whether or not it is registered
4. Quality image or reputation acquired by the
here, as being already the mark of a person other than
mark;
the applicant for registration and used for identical or
similar goods or services. Provided, that in
5. Extent to which the mark has been registered in
determining whether a mark is well-known, account
the world;
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
6. Exclusivity of registration attained by the mark in
obtained as a result of the promotion of the mark.
the world;
A mark cannot be registered if it is identical with, or
7. Extent to which the mark has been used in the
confusingly similar to, or constitutes a translation of a
world;
mark considered well-known in accordance with the
preceding paragraph, which is registered in the
8. Exclusivity of use attained by the mark in the
Philippines with respect to goods or services which are
world;
NOT similar to those with respect to which registration
is applied for: Provided, That use of the mark in
9. Commercial value attributed to the mark in the
relation to those goods or services would indicate a
world;
connection between those goods or services, and the
owner of the registered mark: Provided further, That
10. Record of successful protection of the rights in
the interests of the owner of the registered mark are
the mark;
likely to be damaged by such use. (Sec. 123 (f), IPC)

16
11. Outcome of litigations dealing with the issue of
whether the mark is a well-known mark; and
12. Presence or absence of identical or similar marks
validly registered for or used on identical or
similar goods or services and owned by persons
other than the person claiming that his mark is a
well-known mark.
NOTE: The mark must be well-known both
internationally and in the Philippines.
NOTE: 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.
Division of Application
Any application referring to several goods or services,
hereafter referred to as the "initial application," may
be divided by the applicant into two (2) or more
applications, hereafter referred to as the "divisional
applications," by distributing among the latter the
goods or services referred to in the initial application.
The divisional applications shall preserve the filing
date of the initial application or the benefit of the right
of priority. (Sec. 129, IPC)
Priority Right
An application for registration of a mark filed in the
Philippines by a person referred to Sec. 3 of the IPC,
and who previously duly filed an application for
registration of the same mark in one of those
countries, shall be considered as filed as of the day the
application was first filed in the foreign country. No
registration of a mark shall be granted until such mark
has been registered in the country of origin of the
applicant. (Sec. 131, IPC)
The owner of a mark seeking priority right is not
entitled to sue for acts committed prior to the date on
which his mark was registered in the Philippines:
except in the case of an owner of a well-known mark
where he can oppose its registration or petition the
cancellation of its registration or sue for unfair
competition, without prejudice to availing himself of
other remedies provided for under the law. (Ibid.)
When the Well-Known Mark is Used on Unrelated
Goods
A junior user of a well-known mark on goods or
services which are not similar to the goods or services,
and are therefore unrelated, to those specified in the
certificate of registration of the well- known mark is
precluded from using the same on the entirely
unrelated goods or services, subject to the following
requisites, to wit:
1. The mark is well-known internationally and in the
Philippines;
2. The well-known mark must be registered.
3. The use of the well-known mark on the entirely
unrelated goods or services would result to the
likelihood of confusion of origin or business or
some business connection or relationship
between the registrant and the user of the mark;
and
4. The interests of the owner of the well-known
mark are likely to be damaged. (246 Corporation,
doing business under the name and style of Rolex
Music Lounge v. Hon. Reynaldo B. Daway, in his
capacity as Presiding Judge of RTC Br. 90,
Quezon City, G.R. No. 157216, 20 Nov. 2003)
7. RIGHTS CONFERRED BY REGISTRATION
Rights Conferred to the Owner of a Registered Mark
The owner of a registered mark shall have the
exclusive right to:
1. Use the mark for one’s own goods or services;
2. Prevent third parties from using, without his
consent, signs or containers which are identical or
similar to the registered trademark where such
use would result in a likelihood of confusion.
In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be
presumed. (Secs. 147 and 147.1, IPC)
Trademark owners enjoy protection in product and
market areas that are the normal potential expansion
of his business. (Dermaline Inc. v. Myra
Pharmaceuticals, Inc.., GR No. 190065, 16 Aug. 2010)
17

Limitations
Except in cases of importation of drugs and medicines
allowed under Sec. 72.1 of the IPC and of off- patent
drugs and medicines, the owner of a registered mark
shall have the exclusive right to prevent all third
parties not having the owner’s consent from using in
the course of trade identical or similar signs or
containers for goods or services which are identical or
similar to those in respect of which the trademark is
registered where such use would result in a likelihood
of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion
shall be presumed. There shall be no infringement of
trademarks or trade names of imported or sold
patented drugs and medicines allowed under Sec. 72.1
of the IPC, as well as imported or sold off-patent drugs
and medicines; Provided, That said drugs and
medicines bear the registered marks that have not
been tampered, unlawfully modified, or infringed
upon, under Sec. 155 of the IPC. (Sec. 147, IPC, as
amended by R.A. No. 9502)
When the Rights Terminate
The rights conferred by trademark registration end
upon cancellation of the certificate of registration by
the IPO in the cases allowed by law. (Divina, 2021)
Certificate of Registration Prima Facie Evidence of
Validity
A certificate of registration of a mark shall be prima
facie evidence of the validity of the registration, the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the same in
connection with the goods or services and those that
are related thereto specified in the certificate. (Sec.
138, IPC)
Issuance and Publication of Certificate of Registration
The certificate of registration shall be issued when the
period for filing the opposition has expired, or when
the Director of Legal Affairs shall have denied the
opposition, and upon payment of the required fee.
(Sec. 136, IPC)
The registered mark shall be published, in the form
and within the period fixed by the Regulations. Marks
registered at the Office may be inspected free of
charge and any person may obtain copies thereof at
his own expense. This provision shall also be
applicable to transactions recorded in respect of any
registered mark. (Sec. 138, IPC)
Duration of a Certificate of Trademark Registration
A certificate of registration shall remain in force for
ten (10) years, provided that the registrant shall file a
declaration of actual use and evidence to that effect
or shall show valid reasons based on the existence of
obstacles to such use, as prescribed by the
Regulations, within one (1) year from the fifth
anniversary of the date of the registration of the mark.
Otherwise, the mark shall be removed from the
Register by the Office. (Sec. 145, IPC)
Effect of Failure to file Declaration of Actual Use
The applicant or the registrant shall file a declaration
of actual use (DAU) of the mark with evidence to that
effect, as prescribed by the Regulations within three
(3) years from the filing date of the application.
Otherwise, the application shall be refused, or the
mark shall be removed from the Register by the
Director. (Sec. 124.2, IPC)
A fifth anniversary use is also required. This is done by
filing a declaration of actual use and evidence to that
effect within one year from the fifth anniversary of the
registration. The form and evidence of use required
are similar to the third year DAU. Failure to submit the
fifth anniversary use and evidence to that effect shall
merit the cancellation of the mark. (Sec. 145, IPC)
Renewal of Registration
A certificate of registration may be renewed for
periods of ten (10) years at its expiration. Each request
for renewal of registration must be made within 6
months before the expiration of the registration or
within 6 months after such expiration on payment of
the additional fee prescribed. (Sec. 146, IPC)
8. CANCELLATION OF REGISTRATION
A trademark registration may be cancelled by any
person who believes that he will be damaged by the
registration of the mark:
1. Within five (5) years from the date of the
registration of the mark; or
18

2. At any time;
a) If the registered mark becomes the generic
name for the goods or services, or a portion
thereof, for which it is registered;
b) If the mark has been abandoned;
c) If its registration was obtained fraudulently
or contrary to the provisions of the IPC;
d) If the registered mark is being used by, or
with the permission of, the registrant so as
to misrepresent the source of the goods or
services on or in connection with which the
mark is used; or
e) Non-use of the mark within the Philippines,
without legitimate reason, for an
uninterrupted period of 3 years. (Sec. 151,
IPC)
NOTE: If in a petition for cancellation of a trademark,
it was established that the petitioner was not its
owner, prior registration can be cancelled without
need of filing a separate petition. (E.Y. Industrial
Sales, Inc. v. Shen Dar Electricity and Machinery Co.
Ltd., G.R. No. 184850, 20 Oct. 2010)
Q: ABC Appliances Corporation (ABC) is a domestic
corporation engaged in the production and sale of
televisions and other appliances. YYY Engineers, a
Taiwanese company, is the manufacturer of
televisions and other appliances from whom ABC
actually purchases appliances. From 2000, when ABC
started doing business with YYY, it has been using the
mark "TTubes" in the Philippines for the television
units that were bought from YYY. In 2015, YYY filed a
trademark application for "TTubes." Later, ABC also
filed its application. Both claim the right over the
trademark "TTubes" for television products. YYY
relies on the principle of "first to file" while ABC
involves the "doctrine of prior use.
a. Does the fact that YYY filed its application ahead
of ABC mean that YYY has the prior right over the
trademark? Explain briefly.
A: NO. Since YYY is not the owner of the trademark, it
has no right to apply for registration. Registration of
trademark, by itself, is not a mode of acquiring
ownership. It is the ownership of a trademark that
confers the right to register the same. (Birkenstock
Orthopedia GMBH and Co. v. Philippines Shoe Expo
Marketing Corp., G.R. No. 194307, 20 Nov. 2013)
b. Does the prior registration also mean a
conclusive assumption that YYY Engineers is in
fact the owner of the trademark “TTubes?”
Briefly explain your answer. (2016 BAR)
A: NO. Registration merely creates a prima facie
presumption of validity of the registration of the
registrant’s ownership of the trademark and the
exclusive right to the use thereof. The presumption of
ownership accorded to a registrant is rebuttable and
must yield to evidence to the contrary. (Zuneca
Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850,
08 Sept. 2020)
Q: Alice Corp had been using the trademark “Mr.
Gulaman” for gulaman powder jelly mix. It registered
the same in 2006, but it found out that there was a
pending registration for the same trademark filed on
2005 by Q Corp. Alice Corp. opposed Q’s registration
on the ground that it had been using the logo since
2000 and the logo it had been using was a registered
copyright from the artist that it had commissioned to
create such logo. The artist then assigned such
copyrighted logo in its favor. Despite such
opposition, the Certificate of Registration was issued
in favor of Q Corp. Alice Corp then decides to file a
petition for cancellation of the certificate of
registration. This was granted by the BLA-IPO on the
ground of that was substantial evidence to prove
Alice Corp’s prior use of mark due to its actual use in
commerce since 1996 and that the competing logos
are identical and the same in all aspects. Is the BLA-
IPO correct in cancelling the Certificate of
Registration issued in favor of Q Corp?
A: YES. Pursuant to the case of Zuneca v. Natrapharm,
trademark can be acquired only through registration
and not through prior use. However, when a
certificate of registration is already issued in favor of a
person, it is only considered as prima facie evidence of
the ownership of such trademark. The same can be
rebutted. While registration vests ownership over a
mark, bad faith may still be a ground for the
cancellation of trademark registrations. In cancelling
petitioner's certificate of registration, the BLA-IPO
concluded that petitioner copied respondent's mark.
It compared the two and found that petitioner's mark
19
is identical with respondent's. It noted that the word
"Mr. Gulaman" in both of their marks are "exactly the
same in all aspects" This conclusion was bolstered by
its finding that in petitioner's Declaration of Actual
Use, she submitted photographs of a packaging
showing respondent's "Mr. Gulaman" and its logo
design. (Medina v. Global Quest Ventures, G.R. No.
213815, 08 Feb. 2021)
9. TRADEMARK INFRINGEMENT
Infringement is the use, without consent of the
trademark owner, of any "reproduction, counterfeit,
copy or colorable imitation of any registered mark or
tradename in connection with the sale, offering for
sale, or advertising of any goods, business or services
on or in connection with which such use is likely to
cause confusion or mistake or to deceive purchasers
or others as to the source or origin of such goods or
services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitate any such mark
or tradename and apply such reproduction,
counterfeit, copy or colorable limitation to labels,
signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in
connection with such goods, business or services."
(Esso Standard Eastern, Inc. v. CA, G.R. No. L-29971,
31 Aug. 1982)
A crucial issue in any trademark infringement case is
the likelihood of confusion, mistake, or deceit as to the
identity, source or origin of the goods or identity of the
business as a consequence of using a certain mark.
Likelihood of confusion is admittedly a relative term,
to be determined rigidly according to the particular
(and some- times peculiar) circumstances of each case.
Thus, in trademark cases, more than in other kinds of
litigation, precedents must be studied in the light of
each particular case. (Mighty Corporation v. E. & J.
Gallo Winery, G.R. No. 154342, 14 July 2004)
Guideline for courts in determining likelihood of
confusion
The guideline for courts in determining likelihood of
confusion is found in A.M. No. 10-3-10-SC, or the
Rules of Procedure for Intellectual Property Rights
Cases, Rule 18.
Evidence in Trademark Infringement and Unfair
Competition Cases
A certificate of registration of a mark shall be prima
facie evidence of:
1. The validity of the registration;
2. The registrant's ownership of the mark; and
3. The registrant's exclusive right to use the
same in connection with the goods or
services and those that are related thereto
specified in the certificate.
Elements of Trademark Infringement
1. The trademark being infringed is Registered in the
Intellectual Property Office;
2. The trademark is Reproduced, counterfeited,
copied, or colorably imitated by the infringer;
3. The infringing mark is Used in connection with the
sale, offering for sale, or advertising of any goods,
business, or services; or the infringing mark is
applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements
intended to be used upon or in connection with
such goods, business or services;
4. The use or application of the infringing mark is
likely to cause Confusion or mistake or to deceive
purchasers or others as to the goods or services
themselves or as to the source or origin of such
goods or services or the identity of such business;
and
5. The use or application of the infringing mark is
without the Consent of the trademark owner or
the assignee thereof. (Divina, 2021; Diaz v.
People, G.R. No. 180677, 18 Feb. 2013, Societe
Des Produits Nestle, S.A. vs. Dy, Jr., G.R. No.
172276))
20
NOTE: It is immaterial that there was no actual sale of intellectual property rights. (Emzee Foods, Inc. v.
goods or services using the infringing material as long Elarfoods, Inc., G.R. No. 220558, 17 Feb. 2021)
as the acts mentioned were actually committed. (Sec.
155, IP Code) Counterfeit Goods vs. Colorable Imitation

The of is the gravamen of trademark infringement. But COUNTERFEIT GOODS COLORABLE

likelihood of confusion is a relative concept, the IMITATION
particular, and sometimes peculiar, circumstances of Definition
each case being determinative of its existence. Thus,
in trademark infringement cases, more than in other
Any goods, including
kinds of litigation, precedents must be evaluated in
packaging, bearing Such a close or
the light of each particular case. (Philip Morris, Inc. v.
without authorization a ingenious imitation as
Fortune Tobacco Corp., G.R. No. 158589, 2006) trademark which is to be calculated to
identical to the deceive ordinary
Q: ELARS Lechon was established and marketed in trademark validly purchasers, or such
1970 by Sps. Lontoc. In 1989, the Sps. Lontoc registered in respect of resemblance of the
incorporated their food business. Elarfoods was such goods, or which infringing mark to the
granted a Certificate of Registration by the Securities cannot be distinguished original as to deceive an
and Exchange Commission. Since then, the Sps. in its essential aspects ordinary purchaser
Lontoc actively managed and used Elarfoods as its from such a trademark, giving such attention as
business name and marketed its roasted pig products and which thereby a purchaser usually
as “ELARS LECHON ON A BAMBOO TRAY,” popularly infringes the rights of gives, and to cause him
known by the public as “Elar’s Lechon.” However, the owner of the to purchase the one
without Elarfoods’ knowledge and permission, trademark in question supposing it to be the
Emzee sold and distributed roasted pigs using the under the law of the other. [Emerald vs. CA,
marks “ELARZ LECHON” “ELAR LECHON” “PIG country of importation. G.R. No. 100098]
DEVICE” and “ON A BAMBOO TRAY” making it appear
[TRIPS Agreement]
that Emzee was a branch or franchisee of Elarfoods.
Emzee’s officers and incorporators were former
Unauthorized Use of Container Bearing a Registered
Elarfoods employees. Is Emzee guilty of trademark
Trademark
infringement and unfair competition?

The mere unauthorized use of a container bearing a

A: YES. Applying the dominancy test to the case at bar,
it is very obvious that the Emzee's marks "ELARZ
LECHON” and "ELAR LECHON” bear an indubitable
likeness with Elarfoods' "ELARS LECHON." As can easily
be seen, both marks use the essential and dominant
word "ELAR". The only difference between the
Emzee's mark from that of Elarfoods' are the last
letters Z and S, respectively. However, the letters Z
and S sound similar when pronounced. Thus, both
marks are not only visually similar, but are
phonetically and aurally similar as well. To top it all off,
both marks are used in selling lechon products. Verily,
there exists a high likelihood that the consumers may
conclude an association or relation between the
products. Likewise, the uncanny resemblance
between the marks may even lead purchasers to
believe that Emzee and Elarfoods are the same entity.
In fine, Emzee's use of marks similar to those of the
Elarfoods' constitutes a violation of the latter's
registered trademark in connection with the sale,
distribution or advertising of goods or services which
is likely to cause confusion, mistake or deception
among the buyers or consumers can be considered as
trademark infringement. (Republic Gas Corporation v.
Petron Corporation, G.R. No. 194062, 17 June 2013)
Remedies of the Owner of the Trademark Against
Infringers
1. Civil – The remedy is filed with the Regional Trial
Courts. The owner of the registered mark may ask
the court to issue a preliminary injunction to
quickly prevent infringer from causing damage to
his business. Furthermore, the court will require
infringer to pay damages to the owner of the
mark provided defendant is shown to have had
notice of the registration of the mark (which is

21
 presumed if a letter R within a circle is appended)
and stop him permanently from using the mark.
2. Criminal – the owner of the trademark may ask
the court to issue a search warrant and in
appropriate cases, remedies available shall also
include the seizure, forfeiture, and destruction of
the infringing goods and of any materials and
implements the predominant use of which has
been in the commission of the offense.
3. Administrative – same as in patent infringement
cases. If the amount of damages claimed is not
less than P200,000.00, the registrant may choose
to seek redress against the infringer by filing an
administrative action against the infringer with
the Bureau of Legal Affairs.
Ascertainment of the Amount of Damages in a Civil
Action for Infringement
The owner of a trademark which has been infringed is
entitled to actual damages:
1. The reasonable profit which the complaining
party would have made, had the defendant
not infringed his said rights; or
2. The profit which the defendant actually
made out of infringement; or
3. The court may award as damages a
reasonable percentage based upon the
amount of gross sales of the defendant or
the value of the services in connection with
which the mark or trade name was issued.
In cases where actual intent to mislead the public or
to defraud the complainant is shown, in the discretion
of the court, the damages may be doubled. (Sec,
156.3, IPC)
Jurisdiction Over Violations of Intellectual Property
Rights
It is properly lodged with the Regional Trial Court
even if the penalty therefore is imprisonment of less
than six years, or from 2 to 5 years and a fine ranging
from P50,000 to P200,000.
R.A. No. 8293 and R.A. No. 166 are special laws
conferring jurisdiction over violations of intellectual
property rights to the Regional Trial Court. They
should therefore prevail over R.A. No. 7691, which is a
general law. (Samson v. Daway, G.R. No. 160054-55,
21 July 2004)
Q: K-9 Corporation, a foreign corporation alleging
itself to be the registered owner of trademark “K-9”
and logo “K”, filed an Inter Partes case with the
Intellectual Property Office against Kanin
Corporation for the cancellation of the latter’s mark
“K-9” and logo “K.” During the pendency of the case
before the IPO, Kanin Corporation brought suit
against K-9 Corporation before the RTC for
infringement and damages. Could the action before
the RTC prosper? Why? (2003 BAR)
A: YES. The action before the RTC can prosper.
According to Section 151.2 of the IPC, the filing of a
suit to enforce the registered mark with the proper
court or agency shall exclude any other court or
agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark.
On the other hand, the earlier filing of petition to
cancel the mark with the Bureau of Legal Affairs shall
not constitute a prejudicial question that must be
resolved before an action to enforce the rights to
same registered mark may be decided. The issues
raised before the different the IPO and the RTC are
different. The issue raised before the IPO is whether
or not the cancellation of the subsequent trademark is
proper because of the prior ownership of the disputed
mark by K-9. While the issue raised before the RTC
pertains to infringement. Furthermore, an action for
infringement or unfair competition, as well as the
remedy of injunction and relief for damages, is
explicitly and unquestionably within the competence
and jurisdiction of ordinary courts. (Shangri-la
International Hotel Management, Ltd., v. CA, G.R.
No. 111580, 21 June 2001)
Venue in Filing Actions for Infringement
22
A.M. 02-1-06-SC (The Rule on Search and Seizure in
Civil Actions for Infringement of Intellectual Property
Rights) governs the issuance of a writ of search and
seizure in a civil action for infringement filed by an
intellectual property right owner against the supposed
infringer of his trademark or name. Under this rule,
the claim for damages should be filed with the same
court that issued the writ of search and seizure.
However, Philip Morris, the manufacturer of Marlboro
cigarettes did not go by this route. Philip Morris did
not file a civil action for infringement of its trademark
against the Del Rosarios before the RTC of Angeles
City. Instead, Philip Morris sought assistance from the
NBI for the apprehension and criminal prosecution of
those reportedly appropriating its trademark and
selling fake Marlboro cigarettes. In turn, the NBI
instituted a police action that included applying for a
search and seizure warrant under Sec. 3, 4, 5 and 6 of
Rule 126 of the Rules of Criminal Procedure (not under
the provisions of A.M. 02-1-06-SC) against the Del
Rosarios upon the belief that they were storing and
selling fake Marlboro cigarettes in violation of the
penal provisions of the intellectual property law.
The proceeding under Rule 126, a limited criminal
one, does not provide for the filing of counterclaims
for damages against those who may have improperly
sought the issuance of the search warrant.
Consequently, the Del Rosarios had the right to seek
damages, if the circumstances warranted, by separate
civil action for the wrong inflicted on them by an
improperly obtained or enforced search warrant.
(Divina, 2014; Del Rosario, et al. v. Donato, Jr. et al.,
G.R. No. 180595, 05 Mar. 2010)
Limitations on the Actions for Infringement
1. Right of prior user – a registered mark shall be
without effect against any person who, in good
faith, before filing or priority date, was using the
mark for purposes of his business; (Sec. 159.1,
IPC)
NOTE: cf. (Zuneca v. Natrapharm, G.R. No.
211850, 2020 - wherein the SC held that the first
to file rule shall prevail against a user of a mark in
good faith.)
2. Relief against publisher – injunction is limited to
the future printing against an innocent infringer
who is engaged solely in the business of printing
the mark; (Sec. 159.2, IPC) and
3. Relief against newspaper – injunction against the
presentation of advertising matter in future
issues of the newspaper, magazine or in
electronic communications in case the
infringement complained of is contained in or is
part of paid advertisement in such materials.
(Sec. 159.3, IPC)
Requirement of Notice
The owner of the registered mark shall not be entitled
to recover profits or damages unless the acts have
been committed with knowledge that such imitation
is likely to cause confusion, or to cause mistake, or to
deceive.
Knowledge is presumed in the following instances:
1. The registrant gives notice that his mark is
registered by displaying with the mark the
words “Registered Mark” or the letter R
within a circle; or
2. The defendant had otherwise actual notice
of the registration. (Sec. 158, IPC)
10. UNFAIR COMPETITION
Definition
Employing deception or any other means contrary to
good faith by which a person passes off his goods or
business or services for those of one who has already
established goodwill, or who shall commit any acts
calculated to produce said result. (Sec. 168.2, IPC)
It is the passing off (or palming off) or attempting to
pass off upon the public of the goods or business of
one person as the goods or business of another with
the end and probable effect of deceiving the public.
Passing off (or palming off) takes place where the
defendant, by imitative devices on the general
appearance of the goods, misleads prospective
purchasers into buying his merchandise under the
23
impression that they are buying that of his
competitors. Thus, the defendant gives his goods the
general appearance of the goods of his competitor
with the intention of deceiving the public that the
goods are those of his competitor. (Republic Gas
Corporation v. Petron Corporation, supra)
Infringement of Trademark vs. Unfair Competition
(2015 BAR)
INFRINGEMENT OF UNFAIR COMPETITION
TRADEMARK
Definition
The passing off of one’s
Unauthorized use of a goods as those of
trademark. another.
Requirement of Fraudulent Intent
Fraudulent intent is Fraudulent intent is
unnecessary. essential.
Requirement of Prior Registration
General rule: Prior
registration of the
trademark is a Registration is not
prerequisites to the necessary. (Del Monte
action.
Corp. vs. CA, G.R. No.
L – 78325)
Exception: Well –
known marks.
NOTE: There can be unfair competition and
infringement at the same time.
Q: In what way is an infringement of a trademark
similar to that which pertains to unfair competition?
(2003 BAR)
A: The similarity lies in both their ability to disrupt fair
competition amongst business enterprises and other
businesses. They can also create confusion, mistake,
and deception as to the minds of the consumers with
regard to the source or identity of their products or
services due to its similarity in appearance or
packaging.
Unfair Competition Violates Property Rights
A person who has identified in the mind of the public
the goods he manufactures or deals in, his business or
services from those of others, whether or not a
registered mark is employed, has a property right in
the goodwill of the said goods, business or services so
identified, which will be protected in the same manner
as other property rights. (Sec. 168.1, IPC)
Persons Guilty of Unfair Competition
1. Any person, who is selling his goods and gives
them the general appearance of goods of another
manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in
which they are contained, or the devices or words
thereon, or in any other feature of their
appearance, which would be likely to influence
purchasers to believe that the goods offered are
those of a manufacturer or dealer, other than the
actual manufacturer or dealer, or who otherwise
clothes the goods with such appearance as shall
deceive the public and defraud another of his
legitimate trade, or any subsequent vendor of
such goods or any agent of any vendor engaged
in selling such goods with a like purpose;
2. Any person who by any artifice, or device, or who
employs any other means calculated to induce
the false belief that such person is offering the
services of another who has identified such
services in the mind of the public; or
3. Any person who shall make any false statement
in the course of trade or who shall commit any
other act contrary to good faith of a nature
calculated to discredit the goods, business or
services of another. (Sec. 168.3, IPC)
Essential Elements of an Action for Unfair
Competition
1. Confusing similarity in the general
appearance of the goods; and
2. Intent to deceive the public and defraud a
competitor.
The confusing similarity may or may not result from
similarity in the marks but may result from other
external factors in the packaging or presentation of
the goods. The intent to deceive and defraud may be
inferred from the similarity of the appearance of the
goods as offered for sale to the public. (McDonalds
Corporation v. L. C. Big Mak Burger, Inc., supra)
The Element of Passing-off
24
In order to prove a case of unfair competition, it is
sufficient to show that such deception will be the
natural and probable effect of defendant’s acts.
(Superior Enterprises, Inc. v. Kunnan Enterprises
Ltd., supra.)
Q: Petitioners Elidad and Violeta were charged with
Unfair Competition by respondent Summerville.
Petitioners' product which is a medicated facial
cream sold to the public is contained in the same pink
oval-shaped container which had the mark "Chin
Chun Su," as that of respondent. Petitioners' product
and that solely distributed by respondent are similar
in the following respects "1. Both are medicated
facial creams; 2. Both are contained in pink, oval-
shaped containers; and 3. Both contain the
trademark "Chin Chun Su". Is there probable cause to
charge petitioners with unfair competition?
A: YES. The essential elements of an action for unfair
competition are: (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive the
public and defraud a competitor. The confusing
similarity may or may not result from similarity in the
marks but may result from other external factors in
the packaging or presentation of the goods. Likelihood
of confusion of goods or business is a relative concept,
to be determined only according to peculiar
circumstances of each case. The element of intent to
deceive and to defraud may be inferred from the
similarity of the appearance of the goods as offered
for sale to the public.
While petitioners indicated in their product the
manufacturer's name, the same does not change the
fact that it is confusingly similar to respondent's
product in the eyes of the public. In this case, the
similarities far outweigh the differences. The general
appearance of petitioners' product is confusingly
similar to respondent." (Kho v. Summerville General
Merchandising & Co., Inc., G.R. No 213400, 04 Aug.
2021, J. Hernando)
Q: The NBI found that SG Inc. is engaged in the
reproduction and distribution of counterfeit
"playstation games" and thus applied with the
Manila RTC warrants to search respondent's
premises in Cavite. RTC granted such warrants and
thus, the NBI served the search warrants on the
subject premises. SG Inc. questioned the validity of
the warrants due to wrong venue since the RTC of
Manila had no jurisdiction to issue a search warrant
enforceable in Cavite. Is the contention of SG Inc.,
correct?
A: NO. Unfair competition is a transitory or continuing
offense under Sec. 168 of the IPC. As such, petitioner
may apply for a search warrant in any court where any
element of the alleged offense was committed,
including any of the courts within Metro Manila and
may be validly enforced in Cavite. (Sony Computer
Entertainment Inc. v. Supergreen Inc. G.R. No.
161823, 22 Mar. 2007)
NOTE: Section Sec. 2, Rule 10 of the Rules of Procedure
on IP Cases (A.M. No. 10-3-10 SC, as amended
October 6, 2020 16 Nov. 2020) provides that Special
Commercial Courts in Quezon City, Manila, Makati,
Pasig, Baguio City, Iloilo City, Cebu City, Cagayan de
Oro City, and Davao City shall have authority to act on
applications for the issuance of search warrants
involving violations of the Intellectual Property Code
IPC, which search warrants shall be enforceable
nationwide. Within their respective territorial
jurisdictions, the Special Commercial Courts in the
judicial regions where the violation of intellectual
property rights occurred shall have concurrent
jurisdiction to issue search warrants.
The "true test" of unfair competition has thus been
"whether the acts of the defendant have the intent of
deceiving or are calculated to deceive the ordinary
buyer making his purchases under the ordinary
conditions of the particular trade to which the
controversy relates." It is therefore essential to prove
the existence of fraud, or the intent to deceive, actual
or probable, determined through a judicious scrutiny
of the factual circumstances attendant to a particular
case. (Shang Properties Realty Corporation (formerly
The Shang Grand Tower Corporation) and Shang
Properties, Inc. (formerly EDSA Properties Holdings,
Inc.) v. St. Francis Development Corporation, G.R.
No. 190706, 21 July 2014)
Q: San Miguel started selling its FIESTA ham in 1980.
In 2006, it filed for trademark infringement and
unfair competition against Foodsphere for selling its
PISTA ham. San Miguel alleged that there is confusing
similarity in the general appearance of the goods and
that Foodsphere intended to deceive the public.
According to San Miguel, both products have a
25
picture of a partly sliced ham served on a plate of
fruits and both FIESTA and PISTA were printed in
white bold stylized font. Further, the packaging for
both consists of box-typed paper bags made of
cardboard materials with cut-out holes on the middle
top portion for use as handles and predominantly red
in color with a background design of Christmas balls,
stars, snowflakes, and ornate scrolls. On the other
hand, Foodsphere claimed that the marks were not
confusingly similar and visually and aurally distinct
from each other. This is because PISTA is always in
conjunction with its house mark “CDO” and FIESTA
bears house mark “PUREFOODS” rendering
confusion impossible. Further, Foodsphere claimed
that San Miguel does not have the monopoly to the
term FIESTA since there are other products in the
supermarket using the same term. Was there unfair
competition?
A: YES. The Court has held that unfair competition
consists of the passing off (or palming off) or
attempting to pass off upon the public of the goods or
business of one person as the goods or business of
another with the end and probable effect of deceiving
the public. Passing off (or palming off) takes place
where the defendant, by imitative devices on the
general appearance of the goods, misleads
prospective purchasers into buying his merchandise
under the impression that they are buying that of his
competitors. In other words, the defendant gives his
goods the general appearance of the goods of his
competitor with the intention of deceiving the public
that the goods are those of his competitor. The "true
test," therefore, of unfair competition has thus been
"whether the acts of the defendant have the intent of
deceiving or are calculated to deceive the ordinary
buyer making his purchases under the ordinary
conditions of the particular trade to which the
controversy relates."
Thus, the essential elements of an action for unfair
competition are: (1) confusing similarity in the general
appearance of the goods; and (2) intent to deceive the
public and defraud a competitor. The confusing
similarity may or may not result from similarity in the
marks but may result from other external factors in
the packaging or presentation of the goods. The intent
to deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered
for sale to the public. Actual fraudulent intent need
not be shown. (San Miguel Pure Foods Company, Inc.
v. Foodsphere, G.R. No. 217781, 20 June 2018)
Applicability of Rules on the Issuance of the Search
and Seizure Order in Civil Actions for Infringement
The Rules on the Issuance of the Search and Seizure in
Civil Actions for Infringement of Intellectual Property
Rights are not applicable in this case as the search
warrants were not applied based thereon, but in
anticipation of criminal actions for violation of
intellectual property rights under R.A. No. 8293. It
was established that respondent had asked the NBI for
assistance to conduct investigation and search
warrant implementation for possible apprehension of
several drugstore owners selling imitation or
counterfeit TOP GEL T.G. & DEVICE OF A LEAF
papaya whitening soap. What is applicable is Rule 126
of the Rules of Criminal Procedure. A core requisite
before a warrant shall validly issue is the existence of
probable cause. The pendency of a similar action for
infringement of trademark and unfair competition
against the very person who applied for search
warrant does not bar the issuance of the warrant if it
is based on probable cause. (Divina, 2014; Century
Chinese Medicine Co., et.al. v. People, G.R. No.
188526, 11 Nov. 2013)
Ordinary Purchaser
An ordinary purchaser is one accustomed to buy, and
therefore to some extent familiar with, the goods in
question. The test of fraudulent simulation is not
found in the deception, or the possibility of deception,
of the person who knows nothing about the design
which has been counterfeited, and who must be
indifferent between that and the other. The
simulation, in order to be objectionable, must be such
as appears likely to mislead the ordinary intelligent
buyer who has a need to supply and is familiar with
the article that he seeks to purchase. (Emerald
Garment Manufacturing Corporation v. CA, G.R. No.
100098, 29 Dec. 1995)
Q: MS Brewery Corporation (MS) is a manufacturer
and distributor of the popular beer "MS Lite." It faces
stiff competition from BA Brewery Corporation (BA)
whose sales of its own beer product, "BA Lighter,"
has soared to new heights. Meanwhile, sales of the
"MS Lite" decreased considerably. The distribution
and marketing personnel of MS later discovered that
BA has stored thousands of empty bottles of "MS
26
Lite" manufactured by MS in one of its warehouses.
MS filed a suit for unfair competition against BA
before the RTC. Finding a connection between the
dwindling sales of MS and the increased sales of BA,
the RTC ruled that BA resorted to acts of unfair
competition to the detriment of MS. Is the RTC
correct? Explain. (2016 BAR)
A: NO. The RTC is not correct. Hoarding, or the act of
accumulating empty bottles to impede circulation of
the bottled product, does not amount to unfair
competition. BA did not fraudulently “pass off” its
product as that of MS Lite. There was no
representation or misrepresentation on the part of BA
that would confuse or tend to confuse its goods with
those of MS Lite. (Coca Cola Bottlers Philippines v.
Gomez, G.R. No. 154491, 14 Nov. 2008)
Actions, and Damages and Injunction for
Infringement
The owner of a registered mark may recover damages
from any person who infringes his rights, and the
measure of the damages suffered shall be either the
reasonable profit which the complaining party would
have made, had the defendant not infringed his rights,
or the profit which the defendant actually made out of
the infringement, or in the event such measure of
damages cannot be readily ascertained with
reasonable certainty, then the court may award as
damages a reasonable percentage based upon the
amount of gross sales of the defendant or the value of
the services in connection with which the mark or
trade name was used in the infringement of the rights
of the complaining party. (Sec. 156.1, IPC)
B. PATENTS
Definition
A patent is an exclusive right granted to an investor
over an invention or a utility model or industrial design
to sell, use, and make the same for commerce and
industry. (Divina, 2021)
General Principles
The right granted to an inventor by a State, or by a
regional office acting for several States, which allows
the inventor to exclude anyone else from
commercially exploiting his invention for a limited
period, generally 20 years. (Understanding Industrial
Property, WIPO, 2016)
The primary purpose of the patent system is not the
reward of the individual but the advancement of the
arts and sciences. The function of a patent is to add to
the sum of useful knowledge and one of the purposes
of the patent system is to encourage dissemination of
information concerning discoveries and inventions.
(Manzano v. CA, G.R. No. 113388, 05 Sept. 1997)
Types of Patents
1. Patentable Invention – any technical solution of
a problem in any field of human activity which is
new, involves an inventive step and is industrially
applicable. It may be, or may relate to, a product
or process, or an improvement of any of the
foregoing. (Sec. 21, IPC)
2. Utility Model – an invention qualifies for
registration as a utility model if it is new and
industrially applicable. (Sec. 109, IPC)
3. Industrial Design – any composition of lines or
colors or any three-dimensional form, whether or
not associated with lines or colors, provided that
such composition or form gives a special
appearance to and can serve as pattern for an
industrial product or handicraft and must be new
or ornamental. (Secs. 112 and 113, IPC)
Generally, an industrial design is the ornamental
or aesthetic aspect of a useful article. (Amador,
2007)
An industrial design is not considered new if it
differs from prior designs only in minor respects
that can be mistaken as such prior designs by an
ordinary observe. (WIPO, 2004)
Right to a Patent
27

The right to a patent belongs to the inventor, his heirs,
or assigns. When two (2) or more persons have jointly
made an invention, the right to a patent shall belong
to them jointly. (Sec. 28, IPC)
Assignment of Patent Rights
Inventions and any right, title, or interest in and to
patents and inventions covered thereby, may be
assigned or transmitted by inheritance or bequest or
may be the subject of a license contract. (Sec. 103.2,
IPC)
The assignment must be:
1. In Writing;
2. Acknowledged before a notary public or
other officer authorized to administer oath
or perform notarial acts; and
3. Certified under the hand and official seal of
the notary or such other officer. (Sec. 105,
IPC)
1. PATENTABLE INVENTIONS
What may be Patented
Any technical solution of a problem in any field of
human activity which is:
1. New;
2. Involves an Inventive step; and
3. Is Industrially applicable.
NOTE: It may be, or may relate to, a product or process
or an improvement of any of the foregoing. (Sec. 21,
IPC)
Improvement
An enhancement or modification of any of the
foregoing subject to patentability criteria. For
example, an improvement in the tile-making process
is indeed inventive and goes beyond the exercise of
mechanical skill. The applicant has introduced a new
kind of tile for a new purpose. He has improved the old
method of making tiles and pre-cast articles which
were not satisfactory because of an intolerable
number of breakages, especially if deep engravings
are made on the tile.
He has overcome the problem of producing decorative
tiles with deep engraving, but with sufficient
durability. (Aguas v. De Leon, G.R. No. L- 32160, 30
Jan. 1982)
Three Elements for Patentability
1. Novelty;
2. Inventive Step; and
3. Industrially Applicable.
a) NOVELTY
An invention shall not be considered new if it forms
part of a prior art. (Sec. 23, IPC)
NOTE: The burden of proving want of novelty of an
invention is on the person who avers it and the burden
is a heavy one which is met only by clear and
satisfactory proof which overcomes every reasonable
doubt. (Manzano v. CA, G.R. No. 113388, 05 Sept.
1997)
Prior Art
1. Everything which has been made available to the
public anywhere in the world, before the filing
date or the priority date of the application
claiming the invention; and
2. The whole contents of an earlier published
Philippine application or application with earlier
priority date of a different inventor. (Sec. 24, IPC)
Public Disclosure
The ultimate goal of a patent system is to bring new
designs and technologies into the public through
disclosure; hence ideas, once disclosed to the public
without protection of a valid patent, are subject to
appropriation without significant restraint. (Pearl &
Dean (Phil.), v. Shoemart Inc., G.R. No. 148222, 15
Aug. 2003)
The application shall disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by a person skilled in the art. Where the
application concerns a microbiological process or the
product thereof and involves the use of a micro-
organism which cannot be sufficiently disclosed in the
application in such a way as to enable the invention to
be carried out by a person skilled in the art, and such
28
material is not available to the public, the application
shall be supplemented by a deposit of such material
with an international depository institution. (Sec. 35.1,
IPC)
Doctrine of Non-Prejudicial Disclosure
The right to patent arises from application date; If the
inventor voluntarily discloses his creation, such as by
offering it for sale, the world is free to copy and use it
with impunity. Ideas, once disclosed to the public
without the protection of a valid patent, are subject to
appropriation without significant restraint. (Pearl &
Dean (Phil.), Inc. v. Shoemart, Inc., supra)
General rule: When a work has already been made
available to the public, it shall be non-patentable for
absence of novelty.
Exception: The disclosure of information contained in
the application during the twelve (12) months
preceding the filing date or the priority date of the
application shall not prejudice the applicant on the
ground of lack of novelty if such disclosure was made
by:
a. The inventor;
b. A patent officer and the information was
contained (a) in another publication filed by the
inventor and should not have been disclosed by
the office, or (b) in an application filed, without
the knowledge or consent of the inventor, by a
third party who obtained the information directly
or indirectly from the inventor; or
c. A third party who obtained the information
directly or indirectly from the inventor. (Sec. 25,
IPC)
If the disclosure was made by the designer in the case
of industrial design, the period is six (6) months. In
other words, the application must be filed within six
(6) months after disclosure for it to be non-prejudicial.
Q: Yosha was able to put together a mechanical
water pump in his garage consisting of suction
systems capable of drawing water from the earth
using less human effort than what was then required
by existing models. The water pump system provides
for a new system which has the elements of novelty
and inventive steps. Yosha, while preparing to have
his invention registered with the IPO, had several
models of his new system fabricated and sold in his
province. Is Yosha's invention no longer patentable
by virtue of the fact that he had sold several models
to the public before the formal application for
registration of patent was filed with the IPO? (2018
BAR)
A: Yosha’s invention is still patentable. It is true that
an invention shall not be considered new if it forms
part of a prior art and that prior art shall consist of
everything which has been made available to the
public anywhere in the world, before the filing date or
the priority date of the application claiming the
invention. This, however, presupposes that the one
who has made available the patentable invention to
the public is a person other than the applicant for
patent. (UPLC Suggested Answers; Divina, 2021)
Under the doctrine of non-prejudicial disclosure, the
disclosure of information contained in the application
during the 12 months preceding the filing date or
priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such
disclosure was made by the inventor himself. (Sec. 25,
IPC)
b) INVENTIVE STEP
General rule: An invention involves an inventive step
if, having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing date
or priority date of the application claiming the
invention. (Sec. 26.1, IPC)
Exception: In the case of drugs and medicine, there is
no inventive step if the invention results from the
mere discovery of:
a. A new form or new property of a known
substance which does not result in the
enhancement of the known efficacy of that
substance; or
b. The mere discovery of any new property or
new use for a known substance; or
c. The mere use of a known process unless such
known process results in a new product that
employs at least one new reactant. (Sec.
26.2, IPC)
c) INDUSTRIAL APPLICABILITY
29
An invention that can be produced and used in any
industry meets the industrial application requirement
of patent registrability. This means an invention is not
merely theoretical, but also has a practical purpose. If
the invention is a product, it should be able to produce
a product and if the invention is a process, it should be
able to lay out a process. (WIPO, IP Handbook 2nd
Ed., 2004)
Cezar works in a car manufacturing company owned
by Joab. Cezar is quite innovative and loves to tinker
with things. With the materials and parts of the car,
he was able to invent a gas- saving device that will
enable cars to consume less gas. Francis, a co-worker,
saw how Cezar created the device and likewise, came
up with a similar gadget, also using scrap materials
and spare parts of the company. Thereafter, Francis
filed an application for registration of his device with
the Bureau of Patents. Eighteen months later, Cezar
filed his application for the registration of his device
with the Bureau of Patents. Is the gas-saving device
patentable? Explain.
A: YES, it is patentable because it is new, it involves an
inventive step, and it is industrially applicable.
(Divina, 2021)
2. NON – PATENTABLE INVENTIONS
Definition
An invention may not be patentable because it does
not comply with the elements of patentability, or it
falls under non-patentable inventions enumerated
under Sec. 23 of the IPC. (Salao, 2018)
Non-Patentable Inventions
The following are non-patentable inventions:
1. Methods for Treatment of the human or animal
body by surgery or therapy and diagnostic
methods practiced on the human or animal body.
NOTE: This provision shall not apply to products
and composition for use in any of these methods;
2. Aesthetic creations;
3. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals.
NOTE: This provision shall not apply to micro-
organisms and non-biological and microbiological
processes;
4. Schemes, rules and methods of performing
mental acts, playing games or doing business, and
programs for computers;
5. Anything which is contrary to public order or
morality;
6. In the case of Drugs and medicines, mere
discovery of a new form or new property of a
known substance which does not result in the
enhancement of the efficacy of that substance or
the new use for a known substance, or the mere
use of a known process unless such known
process results in a new product that employs at
least one new reactant; and
7. Discoveries, scientific theories and mathematical
methods. (Sec. 22, IPC)
Q: Dr. Nobel discovered a new method of treating
Alzheimer’s involving a special method of diagnosing
the disease, treating it with a new medicine that has
been discovered after long experimentation and field
testing, and novel mental isometric exercises. He
comes to you for advice on how he can have his
discoveries protected. Can he legally protect his new
method of diagnosis, the new medicine, and the new
method of treatment? If no, why? If yes, how? (2010
BAR)
A: Dr. Nobel can be protected by a patent for the new
medicine as it falls within the scope of Sec. 21 of the
Intellectual Property Code. (R.A. No. 8293, as
amended). However, no protection can be legally
extended to him for the method of diagnosis and
method of treatment which are expressly non-
patentable. (Sec. 22, IPC)
Patentability of Computer Programs
General rule: Computer programs are not patentable
but are copyrightable.
Exception: They can be patentable if they are part of a
process. (e.g., business process with a step involving
the use of a computer program)
Q: Supposing Albert Einstein were alive today and he
filed with the Intellectual Property Office (IPO) an
application for patent for his theory of relativity
30
expressed in the formula E=mc2. The IPO
disapproved Einstein’s application on the ground
that his theory of relativity is not patentable. Is the
IPO’s action correct? (2006 BAR)
a three-dimensional disposition prepared for an
integrated circuit intended for manufacture. (Sec.
112 (3), IPC)

A: YES. The IPO is correct because under the NOTE: Registration is valid for 10 years without
Intellectual Property Code, discoveries, scientific renewal counted from date of commencement of
theories, and mathematical methods are classified to protection. (Sec. 118.5, IPC)
be as “non-patentable inventions”. Einstein’s theory
of relativity falls within the category of being a non-
patentable “scientific theory”. (UPLC Commercial
Law Suggested Answers) Patentable vs. Non – Patentable Invention

Q: X invented a bogus coin detector which can be PATENTABLE NON-PATENTABLE

used exclusively on self-operating gambling devices INVENTIONS INVENTIONS
otherwise known as one-armed bandits. Can X apply
1. Discoveries, scientific
for a patent?
Any technical solution theories and
A: NO. The law provides that any invention that is of a problem in any field mathematical
contrary to public order or morality may not be of human activity which methods.
extended patent protection. The bogus coin detector is:
appears to be a device used to cheat in gambling. 2. Schemes, rules and
Therefore, it may not be patented. (UPLC (a) new, involves an methods of performing
Commercial Law Suggested Answers) (b) inventive step and mental acts, playing
is games or doing
Q: Can an article of commerce serve as trademark (c) industrially business and program
and at the same time enjoy patent and copyright
applicable shall be for computers.
protection? Explain and give an example. (2010 BAR)
patentable.
A: A stamped or marked container of goods can be 3. Methods for human or
registered as trademark. (Sec. 113, IPC) An original It may be, or may animal treatment by
ornamental design or model for articles of relate to: surgery or therapy and
manufacturer can be copyrighted. (Sec. 172.1, IPC) (a) a product, or diagnostic methods
An ornamental design cannot be patented, because (b) process, or an practiced on the
aesthetic creations cannot be patented. (Sec. 22, IPC) (c) improvement of human or animal body.
However, it can be registered as an industrial design. any of the
(Sec. 113.1, 172.1, IPC) Thus, a container of goods
foregoing. (Sec. 21, 4. Plant varieties or
which has an original ornamental design can be
IP Code) animal breeds or
registered as trademark, can be copyrighted, and can
be registered as an industrial design. biological process for
the production of
Other Kinds of Intellectual Property Rights plants or animals.

1. Integrated Circuit – A product, in its final form, or 5. Aesthetic creations; and

an intermediate form, in which the elements, at
least one of which is an active element and some 6. Anything contrary to
or all of the interconnections are integrally public order or
formed in and or on a piece of material, and in morality. (Sec. 22, IP
which is intended to perform an electronic Code)
function; (Sec. 112(2), IPC) and

2. Layout Design/Topography – The three-

dimensional disposition, however expressed, of
the elements, at least one of which is an active
element, and of some or all of the
interconnections of an integrated circuit, or such

31
 The person who commissions the work shall own the
patent, unless otherwise provided in the contract.
(Sec. 30.1, IPC)

Inventions Pursuant to Employment

In case the employee made the invention in the course

of his employment contract, the patent shall belong
to:

1. The employee, if the inventive activity is not a

part of his regular duties even if the employee
3. OWNERSHIP OF A PATENT uses the time, facilities, and materials of the
employer;
2. The employer, if the inventive activity is the result
a) RIGHT OF A PATENT
of the performance of his regularly assigned
duties, unless there is an agreement, express or
Persons Entitled to a Patent
implied, to the contrary. (Sec. 30.2, IPC)
1. Inventor, his heirs, or assigns;
d) RIGHT OF PRIORITY
2. Joint invention – jointly by the inventors; (Sec. 28,
IPC) Priority Date

An application for patent filed by any person who has

3. Two or more persons invented separately and
independently of each other – to the person who
filed an application; or
4. Two or more applications are filed – the applicant
who has the earliest filing date or, the earliest
priority date. (Sec. 29, IPC)
b) FIRST – TO – FILE RULE
First – to – File Rule
1. If two (2) or more persons have made the
invention separately and independently of each
other, the right to the patent shall belong to the
person who filed an application for such
invention; or
2. Where two or more applications are filed for the
same invention, to the applicant which has the
earliest filing date. (Sec. 29, IPC)
c) INVENTIONS CREATED PURSUANT TO A
COMMISSION
Inventions Pursuant to a Commission
previously applied for the same invention in another
country which by treaty, convention, or law affords
similar privileges to Filipino citizens, shall be
considered as filed as of the date of filing the foreign
application. (Sec. 31, IPC)
Filing date is accorded only when all the requirements
provided under Sec. 40 are present. Priority Date
comes into play when there is an application for
patent for the same invention that was filed in another
country. (Salao, 2012)
Conditions in Availing of Priority Date
1. The local application expressly claims priority;
2. It is filed within 12 months from the date the
earliest foreign application was filed; and
3. A certified copy of the foreign application
together with an English translation is filed within
six (6) months from the date of filing in the
Philippines. (Sec. 31, IPC)
Three (3) Main Areas of Activity in the Grant of
Invention Patent
1. Examination as to form or formality examination;

32
2. Classification, search and first publication; and
3. Examination as to substance or substantive
examination.
Steps in the Registration of a Patent
The procedure for the grant of patent may be
summarized as follows:
1. Filing of the application;
2. Accordance of the filing date;
3. Formality examination;
4. Classification and Search;
5. Publication of application;
6. Substantive examination;
7. Grant of Patent;
8. Publication upon grant; and
9. Issuance of certificate. (Salao, 2019)
Manner of Making Disclosure
The application shall disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by a person skilled in the art. (Sec. 35, IPC)
Claims
The application for patent shall contain one (1) or
more claims which shall define the matter for which
protection is sought. Each claim shall be clear and
concise and shall be supported by the description.
(Sec. 36.1, IPC)
Abstract
A concise summary of the disclosure of the invention
as contained in the description, claims, and merely
serves as technical information. (Sec. 37, IPC)
The purpose of requiring a definite and accurate
description of the process is to apprise the public of
what the patentee claims as his invention, to inform
the Courts as to what they are called upon to construe,
and to convey to competing manufacturers and
dealers information of exactly what they are bound to
avoid. (Boothe v. Director of Patents, G.R. No. L-
24919, 28 Jan. 1980)
Unity of Invention
The application shall relate to one invention only or to
a group of inventions forming a single general
inventive concept. (Sec. 38.1, IPC)
If several independent inventions which do not form a
single general inventive concept are claimed in one
application, the application must be restricted to a
single invention. (Sec. 38.2, IPC)
Divisional Applications
Divisional applications come into play when two or
more inventions are claimed in a single application but
are of such a nature that a single patent may not be
issued for them. The applicant is thus required to
“divide”, that is, to limit the claims to whichever
invention he may elect, whereas those inventions not
elected may be made the subject of separate
applications which are called “divisional applications.”
(Smith Kline Beckman Corp. v. CA, G.R. No. 126627,
14 Aug. 2003)
Q: Leonard and Marvin applied for Letters Patent
claiming the right of priority granted to foreign
applicants. Receipt of petitioners’ application was
acknowledged by respondent Director on March 6,
1954. Their Application for Letters Patent in the US
for the same invention indicated that the application
in the US was filed on March 16, 1953. They were
advised that the "specification" they had submitted
was "incomplete" and that responsive action should
be filed with them four months from date of mailing,
which was August 5, 1959. On July 3, 1962,
petitioners submitted two complete copies of the
Specification. The Director of Patents held that
petitioners' application may not be treated as filed.
Is the director correct?
A: YES. It is imperative that the application be
complete in order that it may be accepted. It is
essential to the validity of Letters Patent that the
specifications be full, definite, and specific. To be
entitled to the filing date of the patent application, an
invention disclosed in a previously filed application
must be described within the instant application in
such a manner as to enable one skilled in the art to use
the same for a legally adequate utility. (Boothe v.
Director of Patents, G.R. No. L-24919, 28 Jan. 1980)
Rights Conferred by a Patent Application After
Publication
33
The applicant shall have all the rights of a patentee
against any person who, without his authorization,
exercised any of the rights conferred under Sec. 71 in
relation to the invention claimed in the published
patent application, as if a patent had been granted for
that invention, provided that the said person had:
1. Actual knowledge that the invention that he was
using was the subject matter of a published
application; or
2. Received written notice that the invention was
the subject matter of a published application
being identified in the said notice by its serial
number.
The action may not be filed until after the grant of a
patent on the published application and within four (4)
years from the commission of the acts complained of.
(Sec. 46, IPC)
Effectivity of a Patent
A patent shall take effect on the date of the
publication of the grant of the patent in the IPO
Gazette. (Sec. 50.3, IPC)
4. GROUNDS FOR CANCELLATION OF A PATENT
Grounds for Cancellation
Any interested party may petition to cancel any patent
or any claim or parts of a claim any of the following
grounds:
1. Invention is not new or patentable;
2. Patent does not disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by any person skilled in the art;
3. The patent is contrary to public order or morality;
(Sec. 61.1, IPC)
4. The patent is found invalid in an action for
infringement; (Sec. 82, IPC) or
5. The patent includes matters outside the scope of
the disclosure contained in the application. (Sec.
1, Rule 3, Regulations on Inter Partes Proceeding)
NOTE: If the ground for cancellation relates to some of
the claims or parts of the claim only, cancellation may
be effected to such extent only. (Sec. 61.2, IPC)
5. REMEDY OF THE TRUE AND ACTUAL INVENTOR
Remedies of Persons with a Right to a Patent
If a person other than the applicant is declared by final
court order or decision as having the right to a patent,
he may within 3 months after such decision has
become final:
1. Prosecute the application as his own;
2. File a new patent application;
3. Request the application to be refused; or
4. Seek cancellation of the patent. (Sec. 67.1,
IPC)
Remedies of the True and Actual Inventor (1993,
2005 BAR)
If a person, who was deprived of the patent without
his consent or through fraud is declared by final court
order or decision to be the true and actual inventor,
the court shall order for his substitution as patentee,
or at the option of the true inventor, cancel the
patent, and award actual damages in his favor if
warranted by the circumstances. (Sec. 68, IPC)
In the two circumstances aforementioned, the court
shall furnish the Office a copy of the order or decision
which shall be published in the IPO Gazette within
three (3) months from the date such order or decision
became final and executor and shall be recorded in the
register of the Office. (Sec. 69, IPC)
Time to File Action in Court
The actions indicated in Secs. 67 and 68 shall be filed
within one (1) year from the date of publication made
in accordance with Secs. 44 and 51, respectively. (Sec.
70, IPC)
Q: Cezar works in a car manufacturing company
owned by Joab. Cezar is quite innovative and loves to
34
tinker with things. With the materials and parts of
the car, he was able to invent a gas- saving device
that will enable cars to consume less gas. Francis, a
co-worker, saw how Cezar created the device and
likewise, came up with a similar gadget, also using
scrap materials and spare parts of the company.
Thereafter, Francis filed an application for
registration of his device with the Bureau of Patents.
Eighteen months later, Cezar filed his application for
the registration of his device with the Bureau of
Patents.
Assuming that it is patentable, who is entitled to the
patent? What, if any, is the remedy of the losing
party? (2005 BAR)
A: Cezar is entitled to the patent because he is the true
and actual inventor. While it is true that Francis was
the first to file the application for registration of
patent, the same will not work in his favor because he
was in bad faith. However, considering that under the
IPC, it adopts the first to file rule, Cezar will have to
take action against Francis within one (1) year from
the date of publication. If he is declared by final court
order or decision as having the right to a patent, he
may within 3 months after such decision has become
final: a) prosecute the application as his own
application in place of the applicant; b) file a new
patent application in respect of the same invention; c)
request the application to be refused; or d) seek
cancellation of the patent, if one has already been
issued. (UPLC Commercial Law Suggested Answers)
6. RIGHTS CONFERRED BY A PATENT
Rights Conferred by a Patent
1. In case of a Product – Right to restrain, prohibit
and prevent any unauthorized person or entity
from making, using, offering for sale, selling, or
importing the product. ;
2. In case of Process – Right to restrain prohibit and
prevent any unauthorized person or entity from
manufacturing, dealing in, using, offering for sale,
selling, or importing any product obtained
directly or indirectly from such process. ; and
(Sec. 71.1, IPC)
3. Right to assign the patent, to transfer by
succession, and to conclude licensing contracts.
(Sec. 71.2, IPC)
NOTE: The rights conferred by a patent application
take effect after publication in the IPO Gazette. (Sec.
46, IPC)
Term or Duration of a Patentable Invention
It shall be twenty (20) years from the filing date of the
application. (Sec. 54, IPC)
NOTE: The patentee’s exclusive rights exist only during
the term of the patent, hence, after the cut- off date,
the exclusive rights no longer exist. (Philippine
Pharmawealth, Inc. v. Pfizer, Inc., G.R. No. 167715,
17 Nov. 2010)
7. LIMITATIONS OF PATENT RIGHTS
The owner of a patent has no right to prevent third
parties from making, using, offering for sale, selling, or
importing a patented product in the following
circumstances:
a. Using a patented product after it has been put on
the market in the Philippines by the owner of the
product, or with his express consent.
In case of drugs or medicines, the said limitation
applies after a drug or medicine has been
introduced in the Philippines or anywhere else in
the world by the patent owner, or by any party
authorized to use the invention. This allows
parallel importation for drugs and medicines.
The right to import the drugs and medicines shall
be available to any government agency or any
private third party; (Sec. 72.1, IPC)
b. Where the act is done privately and on a non-
commercial scale or for a non-commercial
purpose: Provided that it does not significantly
prejudice the economic interest of the owner of
the patent.; (Sec. 72.2, IPC)
c. Exclusively for experimental use of the invention
for scientific purposes or educational purposes;
(Sec. 72.3, IPC)
d. In the case of drugs and medicines, where the act
includes testing, using, making, or selling the
invention including any data related thereto,
35
 solely for purposes reasonably related to the
development and submission of information and
issuance of approvals by government regulatory
agencies required under any law of the
Philippines or of another country that regulates
the manufacture, construction, use or sale of any
product.
The data submitted by the original patent holder
may be protected from unfair commercial use
provided in Art. 39.3 of the TRIPS Agreement;
(Sec. 72.4, IPC)
e. Where the act consists of the preparation for
individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a
medical prescription; and (Sec. 72.5, IPC)
f. Where the invention is used in any ship, vessel,
aircraft, or land vehicle of any other country
entering the territory of the Philippines
temporarily or accidentally. Provided, that such
invention is used exclusively for the needs of the
ship, vessel, aircraft, or land vehicle and not used
for the manufacturing of anything to be sold
within the Philippines. (Sec. 72.6, IPC)
a) PRIOR USER
Prior User
Any prior user, who, in good faith was using the
invention or has undertaken serious preparations to
use the invention in his enterprise or business, before
the filing date or priority date of the application in
which a patent is granted, shall have the right to
continue the use thereof as envisaged in such
preparations within the territory where the patent
produces its effects. (Sec. 73.1, IPC)
To protect the patent owner, however, the prior user
may only transfer or assign the right if it is transferred
or assigned together with his enterprise or business,
or with that part of his enterprise or business in which
is the use or preparation for use have been made. (Sec.
73.2, IPC)
In other words, the prior user cannot assign the right
to use the patented product or process without giving
up entirely his enterprise. (Salao, 2019)
Prior use in good faith is generally considered as a
defense against patent infringement. This defense
permits a person to continue their use of an invention
even if that invention is subsequently patented by
another. (Gepty, 2019)
Q: X invented a device which, through the use of
noise, can recharge a cellphone battery. He applied
for and was granted a patent on his device, effective
within the Philippines. As it turns out, a year before
the grant of X's patent, Y, also an inventor, invented
a similar device which he used in his cellphone
business in Manila. But X files an injunctive suit
against Y to stop him from using the device on the
ground of patent infringement. Will the suit prosper?
(2011 BAR)
A: NO, since Y is a prior user in good faith. (UPLC
Commercial Law Suggested Answers)
b) USE BY GOVERNMENT
Use by the Government
A Government agency or third person authorized by
the Government may exploit the invention even
without agreement of the patent owner where:
1. The Public Interest, in particular, national
security, nutrition, health, or the development of
other sectors, as determined by the appropriate
agency of the government, so requires;
2. A Judicial or Administrative body has determined
that the manner of exploitation, by the owner of
the patent or his licensee, is anti- competitive;
3. In the case of drugs and medicines, there is a
National emergency or other circumstance of
extreme urgency requiring the use of the
invention;
4. In the case of drugs and medicines, there is a
public Non-commercial use of the patent by the
patentee, without satisfactory reason; or
36
5. In the case of drugs and medicines, the Demand
for the patented article in the Philippines is not
being met to an adequate extent and on
reasonable terms, as determined by the Secretary
of the Department of Health. (Sec. 74, IPC)
Unless otherwise provided herein, the use by the
Government, or third person authorized by the
Government shall be subject, where applicable, to the
following provisions:
1. In situations of national emergency or other
circumstances of extreme urgency, the right
holder shall be notified as soon as reasonably
practicable;
2. In the case of public non-commercial use of the
patent by the patentee, without satisfactory
reason, the right holder shall be informed
promptly;
Provided, that, the Government or third person
authorized by the Government, without making a
patent search, knows or has demonstrable
ground to know that a valid patent is or will be
used by or for the Government.
3. If the demand for the patented article in the
Philippines is not being met to an adequate
extent and on reasonable terms as determined by
the Secretary of Health, the right holder shall be
informed promptly;
4. The scope and duration of such use shall be
limited to the purpose for which it was
authorized;
5. Such use shall be non-exclusive;
6. The right holder shall be paid adequate
remuneration in the circumstances of each case,
taking into account the economic value of the
authorization; and
7. The existence of national emergency or other
circumstances of extreme urgency, in the case of
drugs and medicines shall be subject to the
determination of the President of the Philippines
for the purpose of determining the need for such
use or other exploitation, which shall be
immediately executory. (Sec. 74.2, IPC)
Reverse Reciprocity of Foreign Law
Any condition, restriction, limitation, diminution,
requirement, penalty, or any similar burden imposed
by the law of a foreign country on a Philippine national
seeking protection of intellectual property rights in
that country, shall reciprocally be enforceable upon
nationals of said country, within Philippine
jurisdiction. (Sec. 231, IPC)
Doctrine of Exhaustion
Also known as the Doctrine of First Sale, it provides
that the patent holder has control of the first sale of
his invention. He has the opportunity to receive the
full consideration for his invention from his sale.
Hence, he exhausts his rights in the future control of
his invention. It espouses that the patentee who has
already sold his invention and has received all the
royalty and consideration for the same will be deemed
to have released the invention from his monopoly. The
invention thus becomes open to the use of the
purchaser without further restriction. (Adams v.
Burke, 84 U.S. 17, 1873)
General rule: Patent rights are exhausted by first sale
in the Philippines (DOMESTIC EXHAUSTION).
Exception: On drugs and medicines: first sale in any
jurisdiction exhausts the rights of the owner thereof
(INTERNATIONAL EXHAUSTION). (R.A. No. 9502)
8. PATENT INFRINGEMENT
Civil Infringement
General rule: The making, using, offering for sale,
selling, or importing a patented product or a product
obtained directly or indirectly from a patented
process, or the use of a patented process without the
authorization of the patentee constitutes patent
infringement. (Sec. 76.1, IPC)
Exceptions:
a. Using a patented product which has been put on
the market in the Philippines by the owner of the
product, or with his express consent, insofar as
37
 such use is performed after that product has been
so put on the said market. (Sec. 72.1, IPC)
b. In the case of drugs and medicines, where the act
includes testing, using, making or selling the
invention including any data related thereto,
solely for purposes reasonably related to the
development and submission of information and
issuance of approvals by government regulatory
agencies required under any law of the
Philippines or of another country that regulates
the manufacture, construction, use or sale of any
product; (Ibid.)
c. Compulsory licensing; (Sec. 76.1, IPC,)
d. Use of Invention by Government; (Ibid.) and
e. Procedures on Issuance of a Special Compulsory
License under the TRIPS Agreement for patented
drugs and medicines. (Ibid.)
Contributory Infringement
Anyone who actively induces the infringement of a
patent or provides the infringer with a component of
a patented product or of a product produced because
of a patented process knowing it to be especially
adopted for infringing the patented invention and not
suitable for substantial non- infringing use shall be
liable as a contributory infringer and shall be jointly
and severally liable with the infringer. (Sec. 76.6, IPC)
To succeed on a claim of inducement, patentee must
show, first, that there has been direct infringement,
and second, that the alleged infringer knowingly
induced infringement and possessed of specific intent
to encourage another’s infringement. (Amador, 2007)
In patent infringement, one who induced someone to
make, use, offer for sale, sell, or import a patented
product or a product obtained directly or indirectly
from a patented process, or facilitated the use of a
patented process without the authorization of the
patentee will also be held liable for patent
infringement. (Gepty, 2019)
Criminal Infringement
If infringement is repeated by the infringer or by
anyone in connivance with him after finality of the
judgment of the court against the infringer, the
offenders shall, without prejudice to the institution of
a civil action for damages, be criminally liable. (Sec. 84,
IPC)
Remedies of a Patent Owner
1. Civil action for infringement – The owner may
bring a civil action with the appropriate Regional
Trial Court to recover from infringer the damages
sustained by the former, plus attorney’s fees and
other litigation expenses, and to secure an
injunction for the protection of his rights. (Sec
76.2, IPC)
Limitations:
a. No damages can be recovered for acts of
infringement committed more than four (4)
years before the filing of the action for
infringement. (Sec. 79, IPC)
b. Damages cannot be recovered for acts of
infringement committed before the infringer
had known or had reasonable grounds to
know of the patent. (Sec. 80, IPC)
c. If the damages are inadequate or cannot be
reasonably ascertained with reasonable
certainty, the court may award by way of
damages a sum equivalent to reasonable
royalty. (Sec 76.3, IPC)
d. The court may, according to the
circumstances of the case, award damages in
a sum above the amount found as actual
damages sustained: Provided, That the
award does not exceed three (3) times the
amount of such actual damages. (Sec. 76.4,
IPC)
If the infringement is a continuing activity, the
aggrieved patent holder retains his cause of action for
damages and injunction but may not claim damages
beyond 4 years counted back from the institution of
the action. (Amador, 2007)
38
A civil action for infringement of a patent may be filed
despite the pendency of a petition in the IPO for
cancellation of the patent. (Luchan v. Honrado, CA-
G.R. No. 04706-SP, 06 July 1976)
2. Criminal action for repetition of infringement – If
the infringement is repeated by the infringer or
by anyone in connivance with him after finality of
the judgment of the court against the infringer,
the infringer offender shall be criminally liable
and upon conviction, shall suffer imprisonment of
not less than six (6) months but not more than
three (3) years and/or a fine not less than
P100,000.00 but not more than P300,000.00.
(Sec. 84, IPC)
Limitation: The criminal action prescribes three
(3) years from the commission of the crime.
(Ibid.)
NOTE: Infringement entails only civil liability in the
first instance, but it becomes a criminal offense when
it is repeated by the infringer after finality of the
judgment of the court against the infringer. (Amador,
2007)
3. Administrative remedy – Where the number of
damages claimed is not less than P200,000.00,
the patentee may choose to file an administrative
action against the infringer with the Bureau of
Legal Affairs (BLA). The BLA can issue injunctions
and order direct infringer to pay patentee
damages. However, unlike regular courts, the BLA
may not issue search and seizure warrants or
warrants of arrest. (Sec. 10.2(a), IPC)
4. Disposal or Destruction of Infringing material –
The court may, in its discretion, order that the
infringing goods, materials and implements
predominantly used in the infringement be
disposed of outside the channels of commerce of
destroyed, without compensation. (Sec.76.5,
IPC)
5. Provisional measures - Any patentee, or anyone
possessing any right, title, or interest in and to the
patented invention, whose rights have been
infringed, may bring a civil action before a court
of competent jurisdiction, to recover from the
infringer such damages sustained thereby, plus
attorney’s fees and other expenses of litigation,
and to secure an injunction for the protection of
his rights. (Sec. 76.2, IPC)
Exclusive right to monopolize the subject matter
of the patent exists only within the term of the
patent. Upon the expiration of the term, there is
no more basis for the issuance of a restraining
order or injunction. (Phil. Pharmawealth, Inc. v.
Pfizer, Inc., G.R. No. 167715, 17 Nov. 2010)
Jurisdiction
An action for infringement of patent falls within the
jurisdiction of the regular courts rather than the
Intellectual Property Office. (Amancor, Inc. v. Salas,
CA-G.R. No. 06049-SP, 10 Oct. 1985)
Persons who can File an Action for Infringement
1. The patentee or his successors-in-interest may
file an action for infringement. (Creser Precision
Systems, Inc. v. CA, G.R. No. 118708, 02 Feb.
1998)
A person or entity who has not been granted
letters patent over an invention and has not
acquired any light or title thereto either as
assignee or as licensee, has no cause of action for
infringement because the right to maintain an
infringement suit depends on the existence of the
patent. (Ibid.)
General rule: A licensee may NOT maintain a suit
for infringement. Only the patentees, his heirs,
assignee, grantee, or personal representatives
may bring an action for infringement.
Exception: If the licensing agreement provides
that the licensee may bring an action for
infringement or if he was authorized to do so by
the patentee through a special power of attorney.
2. Any foreign national or juridical entity who meets
the requirements of Sec. 3 and not engaged in
business in the Philippines, to which a patent has
been granted or assigned, whether or not it is
licensed to do business in the Philippines. (Sec.
77, IPC)
39
A patent holder cannot enforce his rights if he has
committed inequitable conduct in the prosecution of
his patent application. (Amador, 2007)
Burden of Proof in an Action for Infringement
The burden of proof to substantiate a charge of
infringement is with the plaintiff. Where the plaintiff
introduces the patent in evidence, and the same is due
in form, there is created a prima facie presumption of
correctness and validity.
The decision of the IPO in granting the patent is
presumed to be correct. The burden of going forward
with the evidence then shifts to the defendant to
overcome by competent evidence this legal
presumption. (Maguan v. Court of Appeals, G.R. No.
L-45101, 28 Nov. 1986)
a) TESTS IN PATENT INFRINGEMENT
Two Tests in Determining Patent Infringement
The following are the two tests in determining patent
infringement:
1. Literal Infringement; and
2. Doctrine of Equivalents
(1) LITERAL INFRINGEMENT
Literal Infringement
The extent of protection conferred by the patent shall
be determined by the claims, which are to be
interpreted in the light of description and drawings.
(Sec. 75, IPC)
There is infringement of patent under this test if one
makes, uses or sells an item that contains all elements
of the patent claim.
The test is satisfied in either of the following:
a. Exactness rule: The item being sold, made, or
used conforms exactly to the patent claim of
another; or
b. Additional rule: One makes, uses, or sells an
item that has all the elements of the patent
claim of another plus other elements.
(Aquino, 2019)
In using literal infringement, resort must be had, in the
first instance, to the words of the claim. If accused
matter clearly falls within the claim, infringement is
made out and that is the end of it. To determine
whether the particular item falls within the literal
meaning of the patent claims, the Court must
juxtapose the claims of the patent and the accused
product within the overall context of the claims and
specifications, to determine whether there is exactly
identity of all material elements. (Godines v. CA, G.R.
No. 97343, 13 Sept. 1993)
A patent may be infringed where the essential or
substantial features of the patented invention are
taken or appropriated, or the device, machine or other
subject matter to infringe is substantially identical
with the patented invention. In order to infringe a
patent, a machine or device must perform the same
function, or accomplish the same result by identical or
substantially identical means and the principle or
mode of operation must be substantially the same.
(Del Rosario v. CA, G.R. No. 115106, 15 Mar. 1996)
(2) DOCTRINE OF EQUIVALENTS
Doctrine of Equivalents (2015 BAR)
Due account shall be taken of elements which are
equivalent to the elements expressed in the claims, so
that a claim shall be considered to cover not only all
the elements expressed therein, but also equivalents.
(Sec. 75, IPC)
According to the Doctrine of Equivalents, an
infringement also occurs when a device appropriates
a prior invention by incorporating its innovative
concept and, despite some modification and change,
performs substantially the same function in
substantially the same way to achieve substantially
the same result. (Godines v. CA, supra)
The Doctrine of Equivalents thus requires satisfaction
of the function-means-and-result test, the patentee
having the burden to show that all three components
of such equivalency test are met. (Smith Kline
Beckman Co. v. CA, G.R. No. 126627, 14 Aug. 2003)
Meaning of “Equivalent Device”
An Equivalent Device is such as a mechanic of ordinary
skill in construction of similar machinery, having the
40
forms, specifications, and machine before him, could
substitute in the place of the mechanism described
without the exercise of the inventive faculty. (Gsell v.
Yap-Jue, G.R. No. L-4720, 19 Jan. 1909, citing Burden
v. Corning)
Steps in Determining the Presence of Infringement:
1. Determine if there is literal infringement. If there
is, defendant is liable; and
2. If there is no literal infringement, then the
doctrine of equivalents should be applied. (Funa,
2017)
Process Patent Infringement
If the subject matter of a patent is a process for
obtaining a product, any identical product shall be
presumed to have been obtained through the use of
the patented process if the product is new or there is
substantial likelihood that the identical product was
made by the process and the owner of the patent has
been unable despite reasonable efforts, to determine
the process actually used. (Sec. 78, IPC)
Q: Does the use of a patented process by a third
person constitute an infringement when the alleged
infringer has substituted, in lieu of some unessential
part of the patented process, a well- known
mechanical equivalent?
A: YES. Under the Doctrine of Mechanical Equivalents,
the patentee is protected from colorable invasions of
his patent under the guise of substitution of some part
of his invention by some well-known mechanical
equivalent. It is an infringement of the patent if the
substitute performs the same function and was well
known at the date of the patent as a proper substitute
for the omitted ingredient. (Gsell v. Yap-Jue, supra)
Doctrine of File Wrapper Estoppel or Prosecution
History Estoppel
Prosecution History Estoppel applies when an
applicant during a patent prosecution narrows a claim
to avoid the prior art, or otherwise to address specific
concern that arguably would have rendered the
claimed subject matter unpatentable. In these
instances, estoppel bars the applicant from later
invoking the doctrine of equivalents. (Funa, 2012)
The doctrine precludes a patentee from obtaining
under the doctrine of equivalents coverage of subject
matter that has been relinquished during the process
of its patent application. (Pharmacia & Upjohn Co. v.
Mylan Pharm., Inc., 170 F. 3d1373, 1376, 31 Mar.
1998)
b) DEFENSES IN ACTION FOR INFRINGEMENT
Defenses in Action for Infringement
1. Invalidity of the patent; (Sec. 81, IPC);
2. Any of the grounds for cancellation of patents:
a. That what is claimed as the invention is not
new or patentable;
b. That the patent does not disclose the
invention in a manner sufficiently clear and
complete for it to be carried out by any
person skilled in the art; or
c. That the patent is contrary to public order or
morality; (Sec. 61, IPC) and
3. Prescription. (Sec. 84, IPC)
Q: In an action for infringement of patent, the alleged
infringer defended himself by stating 1) that the
patent issued by the Patent Office was not really an
invention which was patentable; 2) that he had no
intent to infringe so that there was no actionable
case for infringement; and 3) that there was no exact
duplication of the patentee’s existing patent but only
a minor improvement. With those defenses, would
you exempt the alleged violator from liability? Why?
(1992 BAR)
A: I would not exempt the alleged violator from
liability for the following reasons:
a. A patent once issued by the Patent Office raises a
presumption that the article is patentable. The
validity of the patent and the question over the
inventiveness, novelty and usefulness of the
product are matters which are better determined
by the Patent Office. There is a presumption that
the Philippine Patent Office has correctly
determined the patentability of the model and
such action must not be interfered with in the
absence of competent evidence to the contrary.
41
 A mere statement or allegation is not enough to become joint owners thereof. An assignment may be
destroy that presumption; limited to a specified territory. (Sec. 104, IPC)

b. An intention to infringe is not necessary nor an Form of Assignment

element in a case for infringement of a patent;
c. There is no need of exact duplication of the
patentee’s existing patent such as when the
improvement made by another is merely minor.
Under the doctrine of equivalents, infringement
is committed if the accused product introduced
only minor innovations or improvement but
performs the same function in the same way to
accomplish the same result. Exact duplication of
the patentee’s existing patent is not necessary for
infringement to lie. (Divina, 2021)
The assignment must be in writing, acknowledged
before a notary public or other officer authorized to
administer oath or perform notarial acts, and certified
under the hand and official seal of the notary or such
other officer. (Sec. 105, IPC)
Effect of an Assignment of a Patent
The assignment works as an estoppel by deed,
preventing the assignor from denying the novelty and
utility of the patented invention when sued by the
assignee for infringement.

Effect of Invalid Patent Effect if the Assignment was not recorded in the IPO

In an action for infringement, if the court shall find the
patent or any claim to be invalid, it shall cancel the
same, and the Director of Legal Affairs upon receipt of
the final judgement of cancellation by the court, shall
record that fact in the registrar of the Office and shall
publish a notice to that effect in the IPO Gazette. (Sec.
82, IPC)
A deed of assignment affecting title shall be void as
against any subsequent purchaser or mortgagee for
valuable consideration and without notice unless, it is
so recorded in the Office, within three (3) months
from the date of said instrument, or prior to the
subsequent purchase or mortgage. However, even
without recording, the instruments are binding upon
the parties.

9. ASSIGNMENT AND TRANSMISSION OF RIGHTS

Patents or applications for patents and invention to

which they relate, shall be protected in the same way
as the rights of other property under the Civil Code.

Inventions and any right, title or interest in and to

patents and inventions covered thereby, may be
assigned or transmitted by inheritance or bequest or
may be the subject of a license contract. (Sec. 103,
IPC)

Manner of Effecting Transfer of Rights

1. By inheritance or bequest; or
2. License contract

Assignment of Inventions

An assignment may be of the entire right, title or

interest in and to the patent and the invention
covered thereby, or of an undivided share of the entire
patent and invention, in which event the parties

42

C. COPYRIGHT
A right over literary and artistic works which are
original intellectual creations in the literary and artistic
domain protected from the moment of creation.
Duration of the Author’s Copyright
Copyright shall last during the lifetime of the author
and 50 years after his death. (Sec. 213.1, IPC)
Copyright protection is not absolute. (ABS-CBN
Corporation v. Gozon, G.R. No. 195956, 11 Mar.
2015) There is no absolute protection unlike the
protection in tangible properties where one can do
anything so long as you will not violate the rights of
others. In the case of copyright, there is a limitation on
the term of protection.
1. BASIC PRINCIPLES
(Sec. 172. 2, 175, and 181 of the IPC)
Definition
It is an intangible, incorporeal right granted by statute
to the author or originator of certain literary or artistic
productions, whereby he or she is invested, for a
specific period, with the sole and exclusive privilege of
multiplying copies of the same and publishing and
selling them. (Black’s Law Dictionary, 1990)
Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the
rights are limited to what the statute confers. It may
be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and
conditions specified in the statute. Accordingly, it can
only cover the works falling within the statutory
enumeration or description. Only the expression of an
idea is protected by copyright, not the idea itself.
(Pearl & Dean Inc. v. Shoemart, Inc., G.R. No. 148222,
15 Aug. 2003; Joaquin, Jr. v. Drilon, G.R. No. 108946,
28 Jan. 1999; Ching v. Salinas, G.R. No. 161295, 29
June 2005)
Copyright is not primarily about providing the
strongest possible protection for copyright owners so
that they have the highest possible incentive to create
more works. The control given to copyright owners is
only a means to an end: the promotion of knowledge
and learning. The goal of copyright is to promote
creativity and encourage creation of works. (ABS-
CBN Corp. v. Gozon, G.R. No. 195956, 2015)
The copyright for a work is acquired by an intellectual
creator from the moment of creation even in the
absence of registration and deposit (Columbia
Pictures v. CA, G.R. No. 110318, 1996
Functional components of useful articles, no matter
how artistically designed, have generally been denied
copyright protection unless they are separable from
the useful article. A useful article may be
copyrightable only if and only to the extent that such
design incorporates pictorial, graphic, and sculptural
features that can be identified separately from and are
capable of existing independently of the utilitarian
aspects of the article. The focus of copyright is the
usefulness of the artistic design, and not its
marketability. The central inquiry is whether the
article is a work of art. (Ching v. Salinas Sr., G.R. No.
161295, 2005)
Requirement of Originality
Originality means that it must have been created by
the author’s own skill, labor, and judgment without
directly copying or evasively imitating the work of
another.; and (Ching Kian Chuan v. CA, G.R. No.
130360, 15 Aug. 2001)
NOTE: Minimal degree of creativity suffices.
Elements of Originality
1. Independently created by the author; and
2. Possesses some minimal degree of creativity.
43
Time when Copyright Vests the original of a building to which that copyright
relates. (Sec. 186, IPC)
Principle of Automatic Protection – Works are
protected from the moment of their creation,
irrespective of their mode or form of expression, as
well as of their content, quality, and purpose (Sec.
172.2, IPC).

The certificates of registration and deposit issued by

the National Library and the Supreme Court Library
serve merely as a notice of recording and registration
of the work but do not confer any right or title upon
the registered copyright owner or automatically put
his work under the protective mantle of the copyright
law. It is not a conclusive proof of copyright
ownership. As it is, non- registration and deposit of the
work within the prescribed period only makes the
copyright owner liable to pay a fine. (Manly
Sportswear Manufacturing Inc. v. Dadodette
Enterprises and/or Hermes Sports Center, G.R. No.
2. COPYRIGHTABLE WORKS
165306, 20 Sept. 2005)

a) ORIGINAL WORKS
NOTE: Under PD 49, registration of copyright is
necessary to avoid the penalty for non-compliance of
the deposit requirement and to recover damages in an Original works include in particular the following
infringement suit. While under R.A. No. 8293, the literary and artistic works:
purpose of registration/deposit is limited to avoiding
fine. However, under RA 8293 as amended by R.A. No. 1. Books, pamphlets, articles, and other writings;
10372, non-registration/deposit of copies of the work 2. Lectures, sermons, addresses, dissertations
will not result in the imposition of the fine nor
prepared for oral delivery, whether or not
forfeiture of the right to recover damages.
reduced in writing or other material form;
3. Letters;
Copyright as Distinct from Material Object
4. Dramatic, choreographic works;
5. Musical compositions;
General rule: The copyright is distinct from the
6. Works of Art;
property in the material object subject to it.
7. Periodicals and Newspapers;
Consequently, the transfer or assignment of the
8. Works relative to Geography, topography,
copyright shall not itself constitute a transfer of the
architecture, or science;
material object. Nor shall a transfer or assignment of
9. Works of Applied art;
the sole copy or of one or several copies of the work
10. Works of a Scientific or technical character;
imply transfer or assignment of the copyright. (Sec.
11. Photographic works;
181, IPC)
12. Audiovisual works and cinematographic works;
13. Pictorial illustrations and advertisements;
Exception: Work of Architecture – Copyright in a work 14. Computer programs; and
of architecture shall include the right to control the 15. Other literary, scholarly, scientific, and artistic
erection of any building which reproduces the whole works. (Sec. 172.1, IPC)
or a substantial part of the work either in its original
form or in any form recognizably derived from the
NOTE: Par. 15/Par. O is a catch – all provision for the
original: Provided, That the copyright in any such work
copyright.
shall not include the right to control the
reconstruction or rehabilitation in the same style as
b) DERIVATIVE WORKS

44

Derivative Works
1. Dramatizations, translations, adaptations,
abridgements, arrangements, and other
alterations of literary or artistic works; and
2. Collections of literary, scholarly, or artistic works
and compilations of data and other materials
which are original by reason of the selection or
coordination or arrangement of their contents.
(Sec. 173.1, IPC)
NOTE: Derivative works shall be protected as new
works, provided that such new work shall not affect
the force of any subsisting copyright upon the original
works employed or any part thereof or be construed
to imply any right to such use of the original works, or
to secure or extend copyright in such original works.
(Sec. 173.2, IPC)
Q: P&D was granted a copyright on the technical
drawings of light boxes as "advertising display units".
SMI, however, manufactured similar or identical to
the light box illustrated in the technical drawings
copyrighted by P&D for leasing out to different
advertisers. Was this an infringement of P&D’s
copyright over the technical drawings?
A: NO. P&D’s copyright protection extended only to
the technical drawings and not to the light box itself.
The light box was not a literary or artistic piece which
could be copyrighted under the copyright law. If SMI
reprinted P&D’s technical drawings for sale to the
public without license from P&D, then no doubt they
would have been guilty of copyright infringement.
Only the expression of an idea is protected by
copyright, not the idea itself. If what P&D sought was
exclusivity over the light boxes, it should have instead
procured a patent over the light boxes itself. (Pearl
and Dean Inc. v. Shoemart Inc., supra)
Q: Juan Xavier wrote and published a story similar to
an unpublished copyrighted story of Manoling
Santiago. It was, however, conclusively proven that
Juan Xavier was not aware that the story of Manoling
Santiago was protected by copyright. Manoling
Santiago sued Juan Xavier for infringement of
copyright. Is Juan Xavier liable? (1998 BAR)
A: YES. Juan Xavier is liable for infringement of
copyright. It is not necessary that Juan Xavier is aware
that the story of Manoling Santiago was protected by
copyright. The work of Manoling Santiago is protected
from the time of its creation.
There will still be originality sufficient to warrant
copyright protection if “the author, through his skill
and effort, has contributed a distinguishable variation
from the older works.” In such a case, of course, only
those parts which are new are protected by the new
copyright. Hence, in such a case, there is no case of
infringement. Juan Xavier is no less an “author”
because others have preceded him. (Habana v.
Robles, G.R. No. 131522, 19 July 1999)
3. NON – COPYRIGHTABLE WORKS
Non-Copyrightable Works
1. Any Idea, procedure, system, method or
operation, concept, principle, discovery, or mere
data as such, even if they are expressed,
explained, illustrated or embodied in a work;
2. News of the day and other items of press
information;
NOTE: Copyright protection does not extend to
news “events” or the facts or ideas which are the
subject of news reports.
But it is equally well – settled that copyright
protection does extend to the reports
themselves, as distinguished from the substance
of the information contained in the reports.
Copyright protects the manner of expression of
news reports “the particular form or collocation
of words in which the writer has communicated
it”.
3. Any official text of a legislative, administrative, or
legal nature, as well as any official translation
thereof; (Sec. 175, IPC)
45

4. Any work of the Government of the Philippines;
A “work of the Government of the Philippines “
is a work created by an officer or employee of the
Philippine Government or any of its subdivisions
and instrumentalities, including government-
owned or controlled corporations as a part of his
regularly prescribed official duties. (Sec. 171.11,
IPC)
General rule: Conditions imposed prior the
approval of the government agency or office
wherein the work is created shall be necessary for
exploitation of such work for profit. Such agency
or office, may, among other things, impose as
condition the payment of royalties.
Exception: No prior approval or conditions shall
be required for the use of any purpose of
statutes, rules and regulations, and speeches,
lectures, sermons, addresses, and dissertations,
pronounced, read, or rendered in courts of
justice, before administration agencies, in
deliberative assemblies and in meetings of public
character. (Sec. 176, IPC)
5. Statutes, rules and regulations, and speeches
made in courts of justice, administrative agencies
and in meetings of public character. (Sec.176.1,
IPC)
NOTE: The author of the works mentioned shall
have the exclusive right of making a collection of
his works. (Sec. 176.2, IPC)
6. TV programs, format of TV programs; and
(Joaquin v. Drilon, G.R. No. 108946, 28 Jan.
1999)
7. Systems of bookkeeping.
Q: X, an amateur astronomer, stumbled upon what
appeared to be a massive volcanic eruption in Jupiter
while peering at the planet through his telescope.
The following week, X, without notes, presented a
lecture on his findings before the Association of
Astronomers of the Philippines. To his dismay, he
later read an article in a science journal written by Y,
a professional astronomer, repeating exactly what X
discovered without any attribution to him. Has Y
infringed on X's copyright, if any? (2011 BAR)
A: NO, because no protection extends to any
discovery, even if expressed, explained, illustrated, or
embodied in a work. (Sec. 175, IPC)
Q: Rural is a certified public utility providing
telephone service to several communities in Manila.
It obtains data for the directory from subscribers,
who must provide their names and addresses to
obtain telephone service. Feist Publications, Inc., is a
publishing company that specializes in area-wide
telephone directories covering a much larger
geographic range than directories such as Rural's.
Feist extracted the listings it needed from Rurals’s
directory without its consent. Are directories
copyrightable?
A: NO. Directories are not copyrightable and therefore
the use of them does not constitute infringement. The
IPC mandates originality as a prerequisite for
copyright protection. This requirement necessitates
independent creation plus a modicum of creativity.
Since facts do not owe their origin to an act of
authorship, they are not original, and thus are not
copyrightable. A compilation is not copyrightable per
se, but is copyrightable only if its facts have been
"selected, coordinated, or arranged in such a way that
the resulting work as a whole constitutes an original
work of authorship." Nonetheless, a compilation that
is copyrightable receives only limited protection, for
the copyright does not extend to facts contained in the
compilation. (Feist Publications, Inc. v. Rural
Telephone Service Co., 499 U.S. 340, 27 Mar. 1991)
Q: ABS-CBN conducted a live audio-video coverage of
and broadcasted the arrival of Angelo dela Cruz at
the Ninoy Aquino International Airport (NAIA) and
the subsequent press conference. ABS-CBN allowed
Reuters Television Service (Reuters) to air the
footages it had taken earlier under a special embargo
agreement. It received a live video feed of the
coverage of Angelo dela Cruz’s arrival from Reuters.
GMA-7 immediately carried the live news feed in its
program "Flash Report," together with its live
broadcast. ABS-CBN filed the Complaint for copyright
infringement. Are news footages considered
copyrightable under the law?
A: YES. The arrival of Angelo dela Cruz is not
copyrightable because that is the newsworthy event.
However, any footage created from the event itself, in
this case the arrival of Angelo dela Cruz, are
intellectual creations which are copyrightable. The IPC
46
does not state that expression of the news of the day,
particularly when it underwent a creative process, is
not entitled to protection. News coverage in television
involves framing shots, using images, graphics, and
sound effects. It involves creative process and
originality. Television news footage is an expression of
the news. Thus, being an expression, it is considered
copyrightable under the law. (ABS-CBN Corp. v.
Gozon, supra)
An Object of Utility is not Copyrightable
A copyrightable work refers to literary and artistic
works defined as original intellectual creations in the
literary and artistic domain. A hatch door, by its nature
is an object of utility. It is defined as a small door, small
gate or an opening that resembles a window equipped
with an escape for use in case of fire or emergency. It
is thus by nature, functional and utilitarian serving as
egress access during emergency. It is not primarily an
artistic creation but rather an object of utility designed
to have aesthetic appeal. It is intrinsically a useful
article, which, as a whole, is not eligible for copyright.
The only instance when a useful article may be the
subject of copyright protection is when it incorporates
a design element that is physically or conceptually
separable from the underlying product. This means
that the utilitarian article can function without the
design element. In such an instance, the design
element is eligible for copyright protection. (Olaño, et
al. v. Lim Eng Co, G.R. No. 195835, 14 Mar. 2016)
4. RIGHTS CONFERRED BY A COPYRIGHT
Rights of Copyright Owners (1995 BAR)
1. Economic rights – The right to carry out,
authorize or prevent the following acts:
a. Reproduction of the work or substantial
portion thereof;
b. Carry-out derivative work (dramatization,
translation, adaptation, abridgement,
arrangement, or other transformation of the
work) ;
c. First distribution of the original and each
copy of the work by sale or other forms of
transfer of ownership;
d. Rental right;
e. Public display;
f. Public performance;
g. Other communications to the public.
NOTE: Assignment of rights must be in writing to
be valid.
2. Moral rights – For reasons of professionalism and
propriety, the author has the right:
a. To require that the authorship of the works
be attributed to him (attribution right);
b. To make any alterations of his work prior to,
or to withhold it from publication;
c. To preserve integrity of work, object to any
distortion, mutilation or other modification
which would be prejudicial to his honor or
reputation; and
d. To restrain the use of his name with respect
to any work not of his own creation or in a
distorted version of his work. (Sec. 193, IPC)
3. Droit de suite or “art proceeds right” is the artist’s
resale right, which requires that a percentage of
the resale price of an artistic work is paid to the
author. The right is exercisable even after the
author’s death, provided the work is still in
copyright.
In every sale or lease of an original work of
painting or sculpture or of the original manuscript
of a writer or composer, subsequent to the first
disposition thereof by the author, the author or
his heirs shall have an inalienable right to
participate in the gross proceeds of the sale or
lease to the extent of five percent (5%). (Sec. 200,
IPC)
Rights which are not Covered under a Droit de suite
1. Prints;
2. Etchings;
3. Engravings;
4. Works of applied art; or
5. Similar works wherein the author primarily
derives gain from the proceeds of
reproductions. (Sec. 201, IPC)
Q: ABC is the owner of certain musical compositions
among which are the songs entitled: "Dahil Sa Iyo",
47
"Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You.” Soda Fountain
Restaurant hired a combo with professional singers
to play and sing musical compositions to entertain
and amuse customers. They performed the above-
mentioned compositions without any license or
permission from ABC to play or sing the same.
Accordingly, ABC demanded from Soda Fountain
payment of the necessary license fee for the playing
and singing of aforesaid compositions, but the
demand was ignored. ABC filed an infringement case
against Soda Fountain. Does the playing and singing
of musical compositions inside an establishment
constitute public performance for profit?
A: YES. The patrons of the Soda Fountain pay only for
the food and drinks and apparently not for listening to
the music, but the music provided is for the purpose
of entertaining and amusing the customers in order to
make the establishment more attractive and
desirable. For the playing and singing the musical
compositions involved, the combo was paid as
independent contractors by Soda Fountain.
It is therefore obvious that the expenses entailed
thereby are added to the overhead of the restaurant
which are either eventually charged in the price of the
food and drinks or to the overall total of additional
income produced by the bigger volume of business
which the entertainment was programmed to attract.
Consequently, it is beyond question that the playing
and singing of the combo in Soda Fountain Restaurant
constituted performance for profit. (Filipino Society of
Composers, Authors, Publishers, Inc. (FILSCAP) v.
Tan, G.R., No. L-36402, 16 Mar. 1987)
Performance of a Contract
An author cannot be compelled to perform his
contract to create a work or for the publication of his
work already in existence. However, he may be held
liable for damages for breach of such contract. (Sec.
194, IPC)
Nature of Moral Rights
These are personal rights independent from the
economic rights. Being a personal right, it can only be
given to a natural person. Hence, even if he has
licensed or assigned his economic rights, he continues
to enjoy the above-mentioned moral rights. (Amador,
2007)
Term of Moral Rights
The rights of an author shall last during the lifetime of
the author and in perpetuity after his death while the
rights under Sections 193.2, 193.3, and 193.4 shall be
coterminous with the economic rights, the moral
rights shall not be assignable or subject to license. The
person or persons to be charged with the posthumous
enforcement of these rights shall be named in a
written instrument which shall be filed with the
National Library. In default of such person or persons,
such enforcement shall devolve upon either the
author’s heirs, and in default of the heirs, the Director
of the National Library. (Sec. 198, IPC, as amended by
Sec. 17 of R.A. No. 10372 )
Exceptions to Moral Rights
1. Absent any special contract at the time creator
licenses/permits another to use his work, the
following are deemed not to contravene creator’s
moral rights, provided they are done in
accordance with reasonable customary standards
or requisites of the medium:
a. Editing;
b. Arranging;
c. Adaptation;
d. Dramatization; or
e. Mechanical and electric reproduction.
2. Complete destruction of work unconditionally
transferred by creators. (Sec. 197, IPC)
Waiver of Moral Rights
General rule: Moral rights can be waived in writing,
expressly so stating such waiver.
Exception: Even in writing, no such waiver shall be
valid where its effects are to permit another to:
1. Use the name of the author, title of his work,
or his reputation with respect to any
version/adaptation of his work, which
because of alterations, substantially tend to
injure literary/artistic reputation of another
author; or
48
 2. Use the name of the author in a work that he
did not create. (Sec. 195, IPC)
Neighboring Rights
1. Performer’s Rights
2. Producers of Sound Recordings Broadcasting
3. Organizations
Performer’s Rights
Performers shall enjoy the following exclusive rights:
1. As regards their performances, the right of
authorizing the:
a. Broadcasting and other communication to
the public of their performance; and
b. Fixation of their unfixed performance.
2. Right of authorizing the direct or indirect
reproduction of their performances fixed in sound
recordings or audiovisual works or fixations in any
manner or form;
3. Right of authorizing the first public distribution of
the original and copies of their performance fixed
in sound recordings or audiovisual works or
fixations through sale or rental of other forms of
transfer of ownership;
4. Right of authorizing the commercial rental to the
public of the original and copies of their
performances fixed in sound recordings or
audiovisual works or fixations, even after
distribution of them by, or pursuant to the
authorization by the performer; and
5. Right of authorizing the making available to the
public of their performances fixed in sound
recordings or audiovisual works or fixations, by
wire or wireless means, in such a way that
members of the public may access them from a
place and time individually chosen by them. (Sec.
203, IPC, as amended by Sec. 18 of R.A. No.
10372)
Loss of Performer’s Rights
Once the performer has authorized the broadcasting
or fixation of his performance, his performer’s rights
provided for in Sec. 203 shall have no further
application.
Fair use and limitations to copyrights shall apply
mutatis mutandis to performers. (Sec. 205, IPC)
Moral Rights of Performers
The performer, shall, as regards his live aural
performances or performances fixed in sound
recordings, have the right to claim to be identified as
the performer of his performances, except where the
omission is dictated by the manner of the use of the
performance, and to object to any distortion,
mutilation or other modification of his performances
that would be prejudicial to his reputation. (Sec. 204,
IPC)
Additional Remuneration for Subsequent
Communications or Broadcasts
The performer shall be entitled to an additional
remuneration equivalent to at least 5% of the original
compensation he received for the first communication
or broadcast in every communication to the public or
broadcast of a performance subsequent to the first
communication or broadcast, unless otherwise
provided in the contract. (Sec. 206, IPC)
Producers of Sound Recordings
Producers of sound recordings shall have exclusive
right to authorize the:
1. Direct or indirect reproduction of their sound
recordings, in any manner or form; the placing of
these reproductions in the market and the right
of rental or lending;
2. First public distribution of the original and copies
of their sound recordings through sale or rental
or other forms of transferring ownership;
3. Commercial rental to the public of the original
and copies of their sound recordings, even after
49
 distribution by them by or pursuant to
authorization by the producer; and
4. Making available to the public of their sound
recordings in such a way that members of the
public may access the sound recording from a
place and at a time individually chosen or
selected by them, as well as other transmissions
of a sound recording with like effect. (Sec. 208,
IPC, as amended by Sec. 20 of R.A. No. 10372)
Broadcasting Organization’s Rights
Broadcasting organizations shall enjoy the exclusive
right to carry out, authorize or prevent any of the
following acts:
1. Rebroadcasting of their broadcasts;
2. Recording in any manner, including the
making of films or the use of video tape, of
their broadcasts for the purpose of
communication to the public of television
broadcasts of the same; and
3. Use of such records for fresh transmissions
or for fresh recording. (Sec. 211, IPC)
Broadcasting
It is the transmission by wireless means for the public
reception of sounds or of images or of representations
thereof; such transmission by satellite is also
broadcasting where the means for decrypting are
provided to the public by the broadcasting
organization or with its consent. (ABS- CBN
Broadcasting Corp. v. Philippine Multimedia System,
Inc., G.R. Nos. 175769-70, 19 Jan. 2009)
Rebroadcasting
It is the simultaneous broadcasting by one
broadcasting organization of the broadcast of another
broadcasting organization. While the Rome
Convention gives broadcasting organizations the right
to authorize or prohibit the rebroadcasting of its
broadcast, however, this protection does not extend
to cable retransmission. (Ibid.)
Must-Carry Rule
It is limitation on copyright which obligates operators
to carry the signals of local channels within their
respective systems. This is to give the people wider
access to more sources of news, information,
education, sports event and entertainment programs
other than those provided for by mass media and
afforded television programs to attain a well-
informed, well-versed and culturally refined citizenry
and enhance their socio-economic growth. (ABS-
CBN Broadcasting Corp. v. Philippine Multimedia
System, supra)
This rule mandates that the local television (TV)
broadcast signals of an authorized TV broadcast
station, such as the GMA Network, Inc., should be
carried in full by the cable antenna television (CATV)
operator, without alteration or deletion. In this case,
the Central CATV, Inc. was found not to have violated
the must-carry rule when it solicited and showed
advertisements in its cable television (CATV) system.
Such solicitation and showing of advertisements did
not constitute an infringement of the “television and
broadcast markets” under Sec. 2 of E.O. 205. (GMA
Network, Inc. v. Central CATV, Inc., G.R No. 176694,
18 July 2014)
NOTE: The provisions of IPC shall also apply to works,
performers, producers of sound recordings and
broadcasting organizations that are to be protected by
virtue of and in accordance with any international
convention or other international agreement to which
the Philippines is a party. (Sec. 221.2 and 224.2, IPC)
Applicability of Rights
The provisions of Chapter VIII shall apply mutatis
mutandis to the rights of performers, producers of
sound recordings and broadcasting organizations, as
an exception to infringement and allowing the
following:
1. Exclusive use of a natural person for own
personal purposes;
2. Short excerpts for reporting current events;
3. Sole use for the purpose of teaching or for
scientific research;
4. Fair use of the broadcast. (Sec. 212, IPC, as
amended by Sec. 21 of R.A. No. 10372)
Term of Protection
50

1. For performances not incorporated in recordings,
50 years from the end of the year in which the
performance took place;
2. For sound or image and sound recordings and for
performances incorporated therein, 50 years
from the end of the year in which the recording
took place;
3. In case of broadcasts, the term shall be 20 years
from the date the broadcast took place. The
extended term shall be applied only to old works
with subsisting protection under the prior law.
(Sec. 215, IPC)
Persons to whom the Rights are Granted
(Copyrightable Works applicable)
1. For works
a. Works of authors who are nationals of, or
have their habitual residence in, the
Philippines;
b. Audio-visual works the producer of which
has his headquarters or habitual residence in
the Philippines;
c. Works of architecture erected in the
Philippines or other artistic works
incorporated in a building or other structure
located in the Philippines;
d. Works first published in the Philippines; and
e. Works first published in another country but
also published in the Philippines within thirty
days, irrespective of the nationality or
residence of the authors. (Sec. 221.1, IPC)
2. For performers
a. Performers who are nationals of the
Philippines;
b. Performers who are not nationals of the
Philippines but whose performances:
i. Take place in the Philippines;
ii. Are incorporated in sound recordings
that are protected under IPC; or
iii. Which has not been fixed in sound
recording but are carried by broadcast
qualifying for protection under the
IPC. (Sec. 222, IPC)
3. Of sound recordings
a. Sound recordings the producers of which are
nationals of the Philippines; and
b. Sound recordings that were first published in
the Philippines. (Sec. 223, IPC)
4. For broadcasts
a. Broadcasts of broadcasting organizations the
headquarters of which are situated in the
Philippines; and
b. Broadcasts transmitted from transmitters
situated in the Philippines. (Sec. 224, IPC)
5. OWNERSHIP OF A COPYRIGHT
Presumption of Authorship
The natural person whose name is indicated on a work
in the usual manner as the author shall, in the absence
of proof to the contrary, 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 identity of the author. (Sec. 219.1, IPC)
The person or body corporate, whose name appears
on the audio-visual work in the usual manner shall, in
the absence of proof to the contrary, be presumed to
be the maker of said work. (Sec. 219.2, IPC)
Rules on Ownership of Copyright
OWNER OF COPYRIGHT
Original Literary and Artistic Works
Author of the work. (Sec. 178.1, IPC)
Joint Authorship
51
Co-authors – in case of works of joint authorship; in In respect of letters, the copyright shall belong to
the absence of agreement, their rights shall be the writer subject to the provisions of Art. 723 of
governed by the rules on co-ownership. the Civil Code. (Sec. 178.6, IPC)

NOTE: If work of joint authorship consists of parts Letters and other private communications in
that can be used separately, then the author of writing are owned by the person to whom they are
each part shall be the original owner of the addressed and delivered, but they cannot be
copyright in the part that he has created. (Sec. published or disseminated without the consent of
178.2, IPC) the writer or his heirs. However, the court may
Audiovisual Work authorize their publication or dissemination if the
General rule: Producer, the author of the scenario, public good or the interest of justice so requires.
the composer of the music, the film director, and (Art. 723, NCC)
the author of the work so adapted.
Collective work vs. Joint Work
Exception: Unless otherwise provided in an
agreement, the producers shall exercise the COLLECTIVE WORK JOINT WORK
copyright to an extent required for the exhibition of Integration of Elements
the work in any manner, except for the right to Elements remain
collect performing license fees for the performance unintegrated and Separate elements are
of musical compositions, with or without words, disparate. merged.
which are incorporated into the work. (Sec. 178.5,
IPC) Intention of the Authors
Anonymous and Pseudonymous Works Work created by two or
The publishers shall be deemed to represent the more persons at the Work prepared by two
authors of articles and other writings published initiative and under the or more authors with
without the names of the authors or under direction of another the intention that their
pseudonyms, unless the contrary appears, or the with the understanding contributions be
pseudonyms or adopted name leaves no doubt as that it will be disclosed merged into
to the author's identity, or if the author of the by the latter under his inseparable or
anonymous works discloses his identity. (Sec. 179, own name and that of independent parts of
IPC) the contributions of the unitary whole.
Commissioned Work natural persons will not
The person who commissioned the work shall own be identified. (Sec.
the work but the copyright thereto shall remain 171.2, IPC)
with the creator, unless there is a written Right of the Authors
stipulation to the contrary. (Sec. 178.4, IPC)
Collective Works Each author shall enjoy Joint authors shall be
When an author contributes to a collective work, copyright to his own co-owners. Co-
his right to have his contribution attributed to him contribution ownership shall apply.
is deemed waived unless he expressly reserves it.
(Sec. 196, IPC) Persons to whom the Work will be Attributed
In the Course of Employment The work will be
The employee, if not a part of his regular duties attributed to the person
even if the employee uses the time, facilities and under whose initiative Joint authors shall be
materials of the employer. and direction it was both entitled to the
The employer, if the work is the result of the created unless the acknowledgment as
performance of his regularly-assigned duties, contributor expressly authors of the work.
unless there is an agreement, express or implied, to reserves his right.
the contrary. (Sec. 178.3, IPC)
Letters Q: T, an associate attorney in XYZ Law Office, wrote
a newspaper publisher a letter disputing a

52
columnist’s claim about an incident in the attorney’s
family. T used the law firm’s letterhead and its
computer in preparing the letter. T also requested
the firm’s messenger to deliver the letter to the
publisher. Who owns the copyright to the letter?
(2011 BAR)
A: T, since he is the original creator of the contents of
the letter.
Q: Solid Investment House commissioned Mon
Blanco and his son Steve, both noted artists, to paint
a mural for the Main Lobby of the new building of
Solid for a contract price of P2M. (1995 BAR)
a. Who owns the mural? Explain.
A: The mural is owned by Solid. It commissioned the
work and paid Mon and Steve Blanco P2M for the
mural.
b. Who owns the copyright of the mural? Explain.
A: Even though Solid owns the mural, the copyright of
the mural is jointly owned by Mon and Steve, unless
there is a written stipulation to the contrary. (Sec.
178.4, IPC)
Q: Rudy is a fine arts student in a university. He stays
in a boarding house with Bernie as his roommate.
During his free time, Rudy would paint and leave his
finished works lying around the boarding house. One
day, Rudy saw one of his works—an abstract painting
entitled Manila Traffic Jam—on display at the
university cafeteria. The cafeteria operator said he
purchased the painting from Bernie who represented
himself as its painter and owner.
Rudy and the cafeteria operator immediately
confronted Bernie. While admitting that he did not
do the painting, Bernie claimed ownership of its
copyright since he had already registered it in his
name with the National Library as provided in the
Intellectual Property Code.
Who owns the copyright to the painting? Explain.
(2013 BAR)
A: Rudy owns the copyright to the painting because he
was one who actually created it. His rights existed
from the moment of its creation. The registration of
the painting by Bernie with the National Library did
not confer copyright upon him. The registration is
merely for the purpose of completing the records of
the National Library.
Q: BR and CT are noted artists whose paintings are
highly prized by collectors. Dr. DL commissioned
them to paint a mural at the main lobby of his new
hospital for children. Both agreed to collaborate on
the project for a total fee of 2 million pesos to be
equally divided between them. It was also agreed
that Dr. DL had to provide all the materials for the
painting and pay for the wages of technicians and
laborers needed for the work on the project.
Assume that the project is completed and both BR
and CT are fully paid the amount of P2M as artists'
fee by DL. Under the law on intellectual property,
who will own the mural? Who will own the copyright
in the mural? Why? Explain. (2004 BAR)
A: DL owns the mural, while both BR and CT jointly
own the copyright thereto. This is so because the
mural was commissioned by DL and a consideration
was paid to BR and CT in exchange thereof. According
to Sec. 178.4 of the IPC, when the work is
commissioned by a person other than an employer of
the author, the owner of the work shall be the one
who commissioned the work, but the copyright of the
work shall be owned by the person who is responsible
for its creation, unless there is a written stipulation to
the contrary.
6. LIMITATIONS ON COPYRIGHT
General Limitations on Copyright
The following acts shall not constitute infringement of
copyright:
1. Recitation or performance of a work, once it has
been lawfully made accessible to the public, if
done privately and free of charge or if made
strictly for a charitable or religious institution or
society; (e.g. students singing popular songs to
entertain a professor celebrating his birthday)
2. Making of quotations from a published work if
they are compatible with fair use and only to the
extent justified for the purpose, including
quotations from newspaper articles and
periodicals in the form of press summaries:
53
 Provided, That the source and the name of the
author, if appearing on the work, are mentioned;
(e.g. lifting an insignificant portion of a book and
incorporating it in another book, with proper
attribution).
3. The reproduction or communication to the public
by mass media of articles on current political,
social, economic, scientific or religious topic,
lectures, addresses and other works of the same
nature, which are delivered in public if such use is
for information purposes and has not been
expressly reserved: Provided, That the source is
clearly indicated; (e.g. news story printing a
substantial part of the speech of a public official)
4. The reproduction and communication to the
public of literary, scientific or artistic works as
part of reports of current events by means of
photography, cinematography or broadcasting to
the extent necessary for the purpose; (taking a
photo of paintings in art gallery exhibit as part of
report of current events.)
5. The inclusion of a work in a publication,
broadcast, or other communication to the public,
sound recording or film, if such inclusion is made
by way of illustration for teaching purposes and is
compatible with fair use: Provided, That the
source and of the name of the author, if
appearing in the work, are mentioned;(e.g. Slides
presentation of comparative works of architecture
as illustration for teaching purposes of the
different types of architecture throughout the
decades)
6. The recording made in schools, universities, or
educational institutions of a work included in a
broadcast for the use of such schools, universities
or educational institutions: Provided, That such
recording must be deleted within a reasonable
period after they were first broadcast: Provided,
further, That such recording may not be made
from audiovisual works which are part of the
general cinema repertoire of feature films except
for brief excerpts of the work; (e.g. the recording
made in a university UAAP basketball games for
the viewing of the university students.)
7. The making of ephemeral recordings by a
broadcasting organization by means of its own
facilities and for use in its own broadcast; (e.g. the
recording by a broadcasting organization of
current events as part of a newscast)
8. The use made of a work by or under the direction
or control of the Government, by the National
Library or by educational, scientific or
professional institutions where such use is in the
public interest and is compatible with fair use;
(e.g. The application of the must carry rule of the
National Telecommunications Commission which
obligates cable providers to carry the signals and
shows of free TV stations to afford the public wider
viewing options.
9. The public performance or the communication to
the public of a work, in a place where no
admission fee is charged in respect of such public
performance or communication, by a club or
institution for charitable or educational purpose
only, whose aim is not profit making, subject to
such other limitations as may be provided in the
Regulations; (n)(e.g. poetry reading competition
among students where no admission fee is charged
in respect of such public performance.)
10. Public display of the original or a copy of the work
not made by means of a film, slide, television
image or otherwise on screen or by means of any
other device or process: Provided, That either the
work has been published, or, that the original or
the copy displayed has been sold, given away or
otherwise transferred to another person by the
author or his successor in title; and (e.g. Public
display of a painting after its purchase from the
owner).
11. Any use made of a work for the purpose of any
judicial proceedings or for the giving of
professional advice by a legal practitioner; (e.g.
copying portions of a book for inclusion in a
pleading to be filed with the court or in an opinion
to be given to a client)
12. The reproduction or distribution of published
articles or materials in a specialized format
exclusively for the use of the blind, visually- and
reading-impaired persons: Provided, That such
54
 copies and distribution shall be made on a
nonprofit basis and shall indicate the copyright
owner and the date of the original publication.
(e.g. the non – commercial reproduction of books
under the Braille system for the use of the blind.)
13. In case of fair use of the copyrighted work.
Other Limitations on Copyright
1. Copyright in a work of architecture shall include
the right to control the erection of any building
which reproduces the whole or a substantial part
of the work either in its original form or in any
form recognizably derived from the original,
provided, that the copyright in any such work
shall not include the right to control the
reconstruction or rehabilitation in the same style
as the original of a building to which that
copyright relates. (Sec. 186, IPC)
2. Reproduction of Published Works - The private
reproduction of a published work in a single copy,
where the reproduction is made by a natural
person exclusively for research and private
study, shall be permitted, without the
authorization of the owner of copyright in the
work but shall not extend to the reproduction of:
a. A work of architecture in the form of building
or other construction;
b. An entire book, or a substantial part thereof,
or of a musical work in graphic form by
reprographic means;
c. A compilation of data and other materials;
d. A computer program except as provided in
Section 189; and
e. Any work in cases where reproduction would
unreasonably conflict with a normal
exploitation of the work or would otherwise
unreasonably prejudice the legitimate
interests of the author. (Sec. 187, IPC)
3. The reproduction in one back-up copy or
adaptation of a computer program shall be
permitted, without the authorization of the
author of, or other owner of copyright in, a
computer program, by the lawful owner of that
computer program, provided, the copy or
adaptation is necessary for:
a. The use of the computer program in
conjunction with a computer for the
purpose, and to the extent, for which the
computer program has been obtained; and
b. Archival purposes, and, for the replacement
of the lawfully owned copy of the computer
program in the event that the lawfully
obtained copy of the computer program is
lost, destroyed, or rendered unusable. (Sec.
187, IPC)
Q: In a written legal opinion for a client on the
difference between apprenticeship and learnership,
Liza quoted without permission a labor law expert’s
comment appearing in his book entitled
“Annotations on the Labor Code.” Can the labor law
expert hold Liza liable for infringement of copyright
for quoting a portion of his book without his
permission?
A: NO. Liza cannot be held liable for infringement of
copyright. Any use made of a work for the purpose of
judicial proceedings or for giving of professional
advice by a legal proceedings or for giving of
professional advice by a legal practitioner shall not
constitute infringement of copyright. (Sec. 184(k),
IPC)
Q: May a person have photocopies of some pages of
the book of Professor Rosario made without violating
the copyright law?
A: YES. The private reproduction of a published work
in a single copy, where the reproduction is made by a
natural person exclusively for research and private
study, shall be permitted, without the authorization of
the owner of copyright in the work. This rule
contemplates that reproduction of the book shall not
extend to an entire book or a substantial part thereof.
(Secs. 187.1 to 187.2[b], IPC)
55
 begin on the first day of January of the year following
the event which gave rise to them. (Sec. 214, IPC)

Term of Copyright Protection

TERM OF PROTECTION
Original and Derivative Works, as well as
Posthumous works
During the life of the author and for fifty (50) years
7. DOCTRINE OF FAIR USE
after his death. (Sec. 213.1, IPC)
Works of joint authorship
The fair use of a copyrighted work for criticism,
Economic rights shall be protected during the life of
comment, news reporting, teaching including limited
the last surviving author and for fifty (50) years
number of copies for classroom use, scholarship,
after his death. (Sec. 213.2, IPC)
research, and similar purposes is not an infringement
Published Anonymous or Pseudonymous Works
of copyright. (Sec. 185, IPC, as amended by Sec. 12 of
Fifty (50) years from the date on which the work
R.A. No. 10372)
was first lawfully published.

If the author's identity is revealed or is no longer in
doubt before the 50-year period, the provisions on
original and derivative works, as well as works of
joint authorship, shall apply. (Sec. 213.3, IPC)
Unpublished Anonymous or Pseudonymous
Works
Fifty (50) years counted from the making of the
work. (Sec. 213.3, IPC)
Work of Applied Art
Twenty-five (25) years from the time of the making.
(Sec. 213.4, IPC)
Photographic works
Fifty (50) years from publication of the work and, if
unpublished, fifty (50) years from the making. (Sec.
213.5, IPC)
Audio-visual works
Fifty (50) years from date of publication and, if
unpublished, from the date of making. (Sec. 213.6,
IPC)
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
“Fair use” permits a secondary use that “serves the
copyright objective of stimulating productive thought
and public instruction without excessively diminishing
the incentives for creativity.”
Decompilation may be considered Fair Use
Decompilation, which is the reproduction of the code
and translation of the forms of the computer program
to achieve the inter-operability of an independently
created computer program with other programs, may
also constitute fair use under the criteria established
by Sec. 185, to the extent that such decompilation is
done for the purpose of obtaining the information
necessary to achieve such interoperability. (ibid)
Factors to be considered in determining Fair Use
1. Purpose and character of the use, including
whether such use is of a commercial nature or is
for non-profit educational purpose;
2. Amount and substantiality of the portion used in
relation to the copyrighted work as a whole;

56
3. Nature of the copyrighted work; and
4. Effect of the use upon the potential market for or
value of the copyrighted work.
NOTE: The fact that a work is unpublished shall not by
itself bar a finding of fair use if such finding is made
upon consideration of all the above factors (Sec.
182.2, IPC). If you copy to the extent that you reduce
the marketability of the book, it is no longer fair use.
Q: KLM Printers, Inc. operated a small outlet located
at the ground floor of a university building in Quezon
City. It possessed soft copies of certain textbooks on
file and would print “book-alikes” of these textbooks
(or in other words, reproduced the entire textbooks)
upon order and for a fee. It would even display
samples of such “book-alikes” in its stall for sale to
the public.
Upon learning of KLM Printers, Inc.’s activities, the
authors of the textbooks filed a suit against it for
copyright infringement. In its defense, KLM Printers,
Inc. invoked the doctrine of fair use, contending that
the “book-alikes” are being used for educational
purposes by those who avail of them.
Is KLM Printers, Inc.’s invocation of the doctrine of
fair use proper in this case? Explain. (2019 BAR)
A: NO. In determining whether the use made of a work
in any particular case is fair use, the factors to be
considered shall include:
a. The purpose and character of the use,
including whether such use is of a
commercial nature or is for non-profit
educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion
used in relation to the copyrighted work as a
whole; and
d. The effect of the use upon the potential
market for or value of the copyrighted work.
Based on these factors, the invocation of the doctrine
of fair use is not proper. The reproduction of the
copies is commercial in nature, where the entire book
is reproduced thereby violating the economic right of
the author and the offer to the public of copies of the
book has an injurious effect upon the potential market
or value of the copyrighted work.
ABS – CBN vs. Gozon Jurisprudence
First, the purpose and character of the use of the
copyrighted material must fall under those listed in
Section 185, thus: "criticism, comment, news
reporting, teaching including multiple copies for
classroom use, scholarship, research, and similar
purposes." The purpose and character requirement is
important in view of copyright's goal to promote
creativity and encourage creation of works. Hence,
commercial use of the copyrighted work can be
weighed against fair use.
The "transformative test" is generally used in
reviewing the purpose and character of the usage of
the copyrighted work. This court must look into
whether the copy of the work adds "new expression,
meaning or message" to transform it into something
else. "Meta-use" can also occur without necessarily
transforming the copyrighted work used.
Second, the nature of the copyrighted work is
significant in deciding whether its use was fair. If the
nature of the work is more factual than creative, then
fair use will be weighed in favor of the user.
Third, the amount and substantiality of the portion
used is important to determine whether usage falls
under fair use. An exact reproduction of a copyrighted
work, compared to a small portion of it, can result in
the conclusion that its use is not fair.
There may also be cases where, though the entirety of
the copyrighted work is used without consent, its
purpose determines that the usage is still fair. For
example, a parody using a substantial amount of
copyrighted work may be permissible as fair use as
opposed to a copy of a work produced purely for
economic gain.
Lastly, the effect of the use on the copyrighted work's
market is also weighed for or against the user. If this
court finds that the use had or will have a negative
impact on the copyrighted work's market, then the
use is de
Published Works
57
Works which, with the consent of the authors, are persons outside the otherwise than by
made available to the public by wire or wireless means normal circle of a family broadcasting, of sounds
in such a way that members of the public may access and that family’s of a performance or the
these works from a place and time individually chosen closest social representations of
by them: Provided, that availability of such copies has acquaintances are or sounds fixed in a sound
been such, as to satisfy the reasonable requirement of can be present. recording. (Sec. 202.9,
the public, having regard to the nature of the work. IPC)
(Sec. 171.7, IPC) Mode of Access
The communication can
Reprographic Reproduction by Libraries be accessed through
It is performed at a wired or wireless means
Any library or archive whose activities are not for specific time and place. at a time and place
profit may, without the authorization of the author or (e.g. The Pacquiao- convenient to the
copyright owner, make a limited number of copies of Clottey Match in Dallas viewer (e.g. The
the work, as may be necessary for such institutions to Texas Stadium) Pacquiao- Clottey Match
fulfill their mandate, by reprographic reproduction: watched via YouTube)
a. Where the work by reason of its fragile character
or rarity cannot be lent to user in its original form;
Transfer or Assignment of Copyright
b. Where the works are isolated articles contained
in composite works or brief portions of other
The copyright may be assigned or licensed in whole or
published works and the reproduction is
in part. Within the scope of the assignment or license,
necessary to supply them, when this is considered
the assignee or licensee is entitled to all the rights and
expedient, to persons requesting their loan for
remedies which the assignor or licensor had with
purposes of research or study instead of lending
respect to the copyright. (Sec. 180.1, IPC)
the volumes or booklets which contain them; and

c. Where the making of such limited copies is in
order to preserve and, if necessary, in the event
that it is lost, destroyed or rendered unusable,
replace a copy, or to replace, in the permanent
collection of another similar library or archive, a
copy which has been lost, destroyed or rendered
unusable and copies are not available with the
publisher.
But it shall not be permissible to produce a volume of
a work published in several volumes or to produce
missing tomes or pages of magazines or similar works,
unless the volume, tome or part is out of stock. (Sec.
188, IPC, as amended by Sec. 13 of R.A. No. 10372)
Public Performance vs. Communication to the Public
of a Performance
Requisites for a Transfer of Copyright to Take Effect
1. If inter vivos, there must be a written indication
of such intention; and
2. Filed in National Library upon payment of
prescribed fees. (Sec. 182, IPC)
The filing of the assignment or license of copyright is
NOT a mandatory requirement
Section 182 uses the permissive word “may” in
reference to the filing of the deed of assignment or
transfer of copyright, this filing should not be
understood as mandatory for validity and
enforceability. The filing is entirely optional for the
parties and may be useful only for evidentiary and
notification purposes. (Amador, 2007)

COMMUNICATION TO Limitation regarding submission of a literary,

PUBLIC photographic, or artistic work to a newspaper,
THE PUBLIC OF A
PERFORMANCE magazine or periodical for publication
PERFORMANCE
Definition
Unless a greater right is expressly granted, such
Performance at a place The transmission to the submission shall constitute only a license to make a
or at places where public, by any medium, single publication. If two or more persons jointly own
a copyright or any part thereof, neither of the owners

58
shall be entitled to grant licenses without the prior
written consent of the other owner or owners. (Sec.
180.3, IPC)
Q: In a written legal opinion for a client on the
difference between apprenticeship and learnership,
Liza quoted without permission a labor law expert's
comment appearing in his book entitled
"Annotations on the Labor Code." Can the labor law
expert hold Liza liable for infringement of copyright
for quoting a portion of his book without his
permission? (2006 BAR)
A: NO. One of the limitations on copyright is the
making of quotations from a published work if they are
compatible with fair use, provided that the source and
the name of the author, if appearing on the work, are
mentioned. The legal opinion made by Liza is
consistent with fair use since the quoted part is merely
used to explain a concept of law for the benefit of the
client and not to defeat the rights of the author over
his copyright. (Sec. 184.1(b), IPC)
8. COPYRIGHT INFRINGEMENT
It is the doing by any person, without the consent of
the owner of the copyright, of anything the sole right
to do which is conferred by statute on the owner of
the copyright. The act of lifting from another’s book
substantial portions of discussions and examples and
the failure to acknowledge the same is an
infringement of copyright. (Habana v. Robles, G.R.
No. 131522, 19 July 1999)
Copying alone is not what is prohibited. The copying
must produce an “injurious effect”. A copy of a piracy
is an infringement of the original, and it is no defense
that the pirate, in such cases, did not know whether or
not he was infringing any copyright; he at least knew
that what he was copying was not his, and he copied
at his peril. (Ibid.)
The gravamen of copyright infringement is not merely
the unauthorized "manufacturing" of intellectual
works but rather the unauthorized performance of
any of the rights exclusively granted to the copyright
owner. Hence, any person who performs any of such
acts under without obtaining the copyright owner’s
prior consent renders himself civilly and criminally
liable for copyright infringement. (NBI-Microsoft
Corp. v. Hwang, G.R. No. 147043, 21 June 2005)
Infringement
A person infringes a right protected under this Act
when one:
1. Directly commits an infringement;
2. Benefits from the infringing activity of another
person who commits an infringement if the
person benefiting has been given notice of the
infringing activity and has the right and ability to
control the activities of the other person; or
3. With knowledge of infringing activity, induces,
causes, or materially contributes to the infringing
conduct of another. (Sec. 216, IPC, as amended
by Sec. 22 of R.A. No. 10372)
Q: Diana and Piolo are famous personalities in
showbusiness who kept their love affair secret. They
use a special instant messaging service which allows
them to see one another’s typing on their own screen
as each letter key is pressed. When Greg, the
controller of the service facility, found out their
identities, he kept a copy of all the messages Diana
and Piolo sent each other and published them. Is
Greg liable for copyright infringement? Reason
briefly. (2007 BAR)
A: YES. The messages which Diana and Pablo sent each
other fall under the category of letters as provided in
Sec. 172.1.d 172.1(d) which provides that literary and
artistic works, hereinafter referred to as “works,” are
original intellectual creations in the literary and artistic
domain protected from the moment of their creation
and shall include in particular, among others, letters.
Infringement of such consist in the doing by any
person, without the consent of the owner of the
copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright.
Reproduction and first public distribution of the work
are economic rights of the authors of the work. Such
cannot be done by the person not the author of the
work. In this instance, Greg is not the owner of the
messages. He merely copied it without the consent of
the authors thereof and subsequently published the
same in violation of the latter’s economic rights.
Q: The Victoria Hotel chain reproduces videotapes,
distributes the copies thereof to its hotels and makes
59
them available to hotel guests for viewing in the
hotel guest rooms. It charges a separate nominal fee
for the use of the videotape player. (1994 BAR)
a. Can the Victoria Hotel be enjoined for infringing
copyrights and held liable for damages?
A: YES. Victoria Hotel may be held liable for infringing
copyrights of the said videotapes because the
reproduction and distribution thereof are not merely
for private viewing. Instead, it was used as a means to
gain extra profit by making it as an extra amenity for
its hotel services. However, if such performances
contained in the videotapes became available to the
public even prior to its registration, then there is no
copyright infringement because the videotapes are
already considered as public property.
b. Would it make any difference if Victoria Hotel
does not charge any fee for the use of the
videotape?
A: NO. Notwithstanding the non-charging of fee for
the use of the videotapes, Victoria Hotel still uses the
videotapes for business purposes, serving as an
attraction to prospective and current guests, unless
the performances in the videotapes had been long
before available to the public prior to registration;
hence, it is already public property. (FILSCAP v. Tan,
supra)
Q: In an action for damages on account of an
infringement of a copyright, the defendant (the
alleged pirate) raised the defense that he was
unaware that what he had copied was a copyright
material. Would this defense be valid? (1997 BAR)
A: NO. In copyright infringement, intent is irrelevant.
A person may consciously or unconsciously copy or
infringe a copyrighted material and still be held liable
for such act.
Q: KK is from Bangkok, Thailand. She studies
medicine in the Pontifical University of Santo Tomas
(UST). She learned that the same foreign books
prescribed in UST are 40-50% cheaper in Bangkok. So
she ordered 50 copies of each book for herself and
her classmates and sold the books at 20% less than
the price in the Philippines. XX, the exclusive licensed
publisher of the books in the Philippines, sued KK for
copyright infringement. Decide. (2014 BAR)
A: KK did not commit copyright infringement. Under
the “first sale” doctrine, the owner of a particular copy
or phonorecord lawfully made is entitled, without the
authority of the copyright owner, to sell or otherwise
dispose of the possession of that copy or
phonorecord. Hence,
Substantial Reproduction
It is not necessarily required that the entire
copyrighted work, or even a large portion of it, be
copied. If so much is taken that the value of the
original work is substantially diminished, there is an
infringement of copyright and to an injurious extent,
the work is appropriated. It is no defense that the
pirate did not know whether or not he was infringing
any copyright; he at least knew that what he was
copying was not his, and he copied at his peril. In cases
of infringement, copying alone is not what is
prohibited. The copying must produce an “injurious
effect”. (Habana v. Robles, supra)
How Copying is Demonstrated
Copying is demonstrated by:
1. Direct evidence; or
2. Circumstantial evidence of access and substantial
inquiry or the most common test. (Amador,
2007).
Q: May a person have photocopies of some pages of
the book of Professor Rosario made without violating
the copyright law? (1998 BAR)
A: YES, a person may photocopy some of pages of
Professor Rosario’s book for as long as it is not for
public use or distribution, and it does not copy the
substantial text or “heart” of the book. It is considered
as fair use of the copyrighted work.
Plagiarism
Plagiarism means the theft of another person’s
language, thoughts, or ideas. To plagiarize is to take
(ideas, writings, etc.) from (another) and pass them off
as one’s own. The passing off of the work of another
as one’s own is thus an indispensable element of
plagiarism.
60
Plagiarism presupposes intent and a deliberate, 1. Injunction;
conscious effort to steal another’s work and pass it off
as one’s own. (In the matter of the charges of 2. Impounding during the pendency of the action
plagiarism against Associate Justice Mariano C. Del sales invoices and other documents evidencing
Castillo, A.M. No. 10-7-17-SC, 15 Oct. 2010) sales;

3. Damages, including legal costs and other

Copyright infringement vs. Plagiarism
expenses, as he may have incurred due to the
infringement as well as the profits the infringer
COPYRIGHT PLAGIARISM
may have made due to such infringement;
INFRINGEMENT
Definition
4. Destruction without any compensation all
The unauthorized use of
infringing copies;
copyrighted material in
a manner that violates The use of another’s
5. Moral and Exemplary damages (Sec. 216.1, IPC);
one of the copyright information, language, or
or
owner’s exclusive writing, when done
rights, such as the right without proper
to reproduce or acknowledgment of the 6. Seizure and impounding of any article, which may
perform the original source serve as evidence in the court proceedings. (Sec.
copyrighted work, or to 216.2, IPC)
make derivative works
that build upon it. The copyright owner may elect, at any time before
Coverage final judgment is rendered, to recover instead of
Copyright infringement actual damages and profits, an award of statutory
is a very broad term damages for all infringements involved in an action in
that describes a variety a sum equivalent to the filing fee of the infringement
of acts, such as the action but not less than Fifty thousand pesos
duplication of a work, Plagiarism is specific as it (P50,000.00). (Sec. 216.1, IPC, as amended by R.A.
rewriting a piece, refers only to using No. 10372)
performing a written someone else’s work
work or doing anything without proper Factors to be considered by the court in awarding
that is normally acknowledgment.
statutory damages
considered to be the
exclusive right of the
1. Nature and purpose of the infringing act;
copyright holder.
2. Flagrancy of the infringement;
Public Document 3. Whether the defendant acted in bad faith;
There is no copyright Public documents can be 4. Need for deterrence;
infringement on public plagiarized so long as it is 5. Any loss that the plaintiff has suffered or is likely
documents. not acknowledged. to suffer by reason of the infringement; and
6. Any benefit shown to have accrued to the
Manner of Copying
defendant by reason of the infringement. (Sec.
The copying must be The copying need not be
216.1, IPC, as amended by R.A. No. 10372)
substantial substantial
Expression
Double damages
The copying must refer Plagiarism may exist even
to an expression of an if none of the same words
The amount of damages to be awarded shall be
idea. are used to express the
doubled against any person who:
idea.

1. Circumvents effective technological measures; or

Remedies in case of copyright infringement

61
2. Having reasonable grounds to know that it will
induce, enable, facilitate or conceal the
infringement, remove or alter any electronic
rights management information from a copy of a
work, sound recording, or fixation of a
performance, or distribute, import for
distribution, broadcast, or communicate to the
public works or copies of works without
authority, knowing that electronic rights
management information has been removed or
altered without authority. (Sec. 216.1, IPC, as
amended by R.A. No. 10372)
Technological Measure
It is any technology, device, or component that, in the
normal course of its operation, restricts acts in respect
of a work, performance or sound recording, which are
not authorized by the authors, performers or
producers of sound recordings concerned or
permitted by law. (Sec. 171.12, IPC, as amended by
R.A. No. 10372)
Rights Management Information
It is information which identifies the work, sound
recording or performance; the author of the work,
producer of the sound recording or performer of the
performance; the owner of any right in the work,
sound recording or performance; or information
about the terms and conditions of the use of the work,
sound recording or performance; and any number or
code that represent such information, when any of
these items is attached to a copy of the work, sound
recording or fixation of performance or appears in
conjunction with the communication to the public of a
work, sound recording or performance. (Sec. 171.13,
IPC, as amended by R.A. No. 10372)
Criminal Penalties in Case of Copyright Infringement
1. Imprisonment of one (1) year to three (3) years
plus a fine ranging from Fifty thousand pesos
(P50,000) to One hundred fifty thousand pesos
(P150,000) for the first offense.
2. Imprisonment of three (3) years and one (1) day
to six (6) years plus a fine ranging from One
hundred fifty thousand pesos to Five hundred
thousand (P500,000) for the second offense.
3. Imprisonment of six (6) years and one day to nine
(9) years plus a fine ranging from Five hundred
thousand pesos (P500,000) to P1,500,000 for the
third offense.
4. In all cases, subsidiary imprisonment in cases of
insolvency. (Sec. 217, IPC)
Determination of Penalty
The court shall consider the value of the infringing
materials that the defendant has produced or
manufactured and the damage that the copyright
owner has suffered by reason of the infringement:
Provided, that the respective maximum penalty stated
in Section 217.1. (a), (b) and (c) herein for the first,
second, third and subsequent offense, shall be
imposed when the infringement is committed by:
1. Circumvention of effective technological
measures;
2. Removal or alteration of any electronic rights
management information from a copy of a
work, sound recording, or fixation of a
performance, by a person, knowingly and without
authority; or
3. Distribution, importation for distribution,
broadcast, or communication to the public of
works or copies of works, by a person without
authority, knowing that electronic rights
management information has been removed or
altered without authority. (Sec. 217.2, IPC, as
amended by R.A. No. 10372)
Affidavit Evidence
It is an affidavit made before the notary public in
actions for infringement, reciting the facts required to
be stated under Sec. 216.1 of the IPC. As a prima facie
proof, the affidavit shifts the burden of proof to the
defendant, to prove the ownership of the copyrighted
work.
Q: Due to the amendment of the IPC under R.A. No.
10372 APPROVED ON 28 FEB. 2013, deleting the
provision entitling importation in the Philippines of
up to three (3) copies of copyrighted works in a
personal baggage, can one still be allowed to import
books, DVDs, and CDs from abroad?
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A: YES. In fact, the amendments to the IPC have
removed the original limitation of three copies when
bringing legitimately acquired copies of copyrighted
material into the country. Only the importation of
pirated or infringed material is illegal. As long as they
were legally purchased, you can bring as many copies
you want, subject to Customs regulations. (FAQs on
the amendments to the Intellectual Property Code of
the Philippines, officialgazette.gov.ph, 08 Mar 2013)
Reproduction of copyrighted material for personal
purposes is not punishable by R. A. No. 10372
Infringement in this context refers to the economic
rights of the copyright owner. Transferring music from
a lawfully acquired CD into a computer, then
downloading it to a portable device for personal use,
is not infringement. But if, multiple copies of the CD
were reproduced for sale, then infringement occurs.
(Ibid.)
Possession of a music file procured through an
infringing activity is a violation of the law
The possession of a music file procured through an
infringing activity is a violation of the law only if it can
be proven that the person benefitting from the music
file has knowledge of the infringement, and the power
and ability to control the person committing the
infringement. (Ibid.)
Liability of mall owners for the infringement
activities of their tenants
Mall owners are not automatically penalized for the
infringing acts of their tenants. When a mall owner or
lessor finds out about an infringement activity, he or
she must give notice to the tenant, then he or she will
be afforded time to act upon this knowledge. The law
requires that one must have both proven knowledge
of the infringement, and the ability to control the
activities of the infringing person, to be held liable. The
mall owner must also have benefitted from the
infringement. (Ibid.)
Other beneficial provisions brought by R.A. No.
10372
1. Grant of enforcement powers to IPOPHL (Sec. 2)
The law grants visitorial powers to IPOPHL and allows
it to undertake enforcement functions with the
support of concerned agencies such as PNP, NBI, BOC,
OMB and LGUs. IPOPHL itself will not be conducting
raids or seizures but will be coordinating with the said
agencies. However, as IP rights remain to be private
rights, there must be a complaint from the IP right
owner. So, if an author sees pirated copies of his book
in a certain store, he may notify IPOPHL. IPOPHL can
now initiate together with any of the said agencies to
address the problem.
2. Establishment of the Bureau of Copyright and
other related rights (Secs. 1 and 3)
At present there is no entity performing the more
substantial function of policy formulation, rulemaking,
adjudication, research and education, which is
envisioned to be handled by the Bureau of Copyright.
Although a Copyright Division exists in the National
Library, the function of such office is merely to accept
deposits of copyrighted works. The Copyright Bureau
is dedicated to serving the needs of the copyright-
based industries and stakeholders could give more
focus and rally more resources and support for the
creative industry, which is very important for
protection of works by Filipinos both here and abroad.
3. Accreditation of collective management
organizations or CMOs (Sec. 10)
CMOs are organizations that enforce the copyright of
the copyright holders. Through this mandate, IPOPHL
will be able to monitor and promote good corporate
governance among CMOs, benefitting not only the
rights holders themselves but also the users of
copyrighted works. Members of the Philippine
Retailers Association (PRA), mall owners, restaurants,
and other heavy users of music in their establishments
will greatly benefit from this provision, as they are
ensured that only legitimate collecting agencies can
collect royalties from them on behalf of copyright
owners.
4. Clarification of the concept of copyright
infringement, including secondary liability (Secs.
22 and 23)
The provisions on copyright infringement have been
refined to include contributory infringement
(secondary liability), circumvention of technological
measures and rights management information as
63
aggravating circumstances, and the option to collect
statutory damages instead of actual damages.
However, under Sec. 22 of the amendments, to be
secondarily liable, a landlord or mall must: (1) benefit
from the infringing activity; (2) must have been given
notice of the infringing activity and a grace period to
act on the same; and (3) has the right and ability to
control the activities of the person who is doing the
infringement. The complainant has the burden of
proof to provide evidence that all 3 elements are
present. If a landlord or mall owner is not aware of the
infringement, he cannot be liable for infringement,
even if he benefits from it (from rental payments) or
has control over the premises.

5. Fair use for the blind, visually- and reading-

impaired (Sec. 11)

This provision would give a special fair use exemption

for the non-commercial reproduction of works for use
by visually impaired persons. Before this amendment,
hundreds of thousands of blind Filipinos could not buy
Braille works at cheap prices because copyright
protection operates. Now with this amendment, blind
and visually impaired Filipinos can have easier access
to copyrighted works in Braille.

6. Formulation of IP Policies within universities and

colleges (Sec. 27)

This will ensure that the rights of the academic

community (professors, researchers, students) over
their literary, scholarly, and artistic works are clearly
delineated and respected. With an IP Policy in
existence, these sectors within the academe will have
a clear delineation of their respective rights and
benefits, thus, avoiding disputes and costly litigation
within their ranks which would be detrimental to
education, research, and development.

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