A. Intellectual Property RIGHTS IN 2.

To guarantee that those

GENERAL articles come up to a certain
standard of quality
1. INTELLECTUAL PROPERTY RIGHTS 3. To advertise the articles
which they symbolize
The State recognizes that an effective intellectual and
1. To foster and reward
industrial property system is vital to the development
invention;
of domestic and creative activity, facilitates transfer
2. To promote disclosures of
of technology, attracts foreign investments, and
inventions to stimulate
ensures market access for our products. The use of
Patents further innovation
intellectual property bears a social function. To this
3. To ensure that ideas in the
end, the State shall promote the diffusion of
public domain remain there
knowledge and information for the promotion of
for the free use of the
national development and progress and the common
public
good. (Sec. 2, IP Code) SUBJECT MATTER
Original intellectual creations in
All agreements concerning industrial property are Copyright the literary and artistic domain
intimately connected with economic development. (literary and artistic works)
Industrial property encourages investments in new
Any visible sign capable of
ideas and inventions and Trademarks
distinguishing the goods
stimulates creative efforts for the satisfaction of A product, process or any
human needs. They speed up transfer of
Patents improvement thereof which is a
technology and industrialization, and thereby bring technical solution of a problem
about social and economic progress.
ELEMENTS
(Mirpuri v. Court of Appeals, G.R. No. 114508,
1. Literary or artistic work
1999).
2. Independently created
Copyright (originality)
Intellectual property protection is merely a means
3. Involves minimal or a
towards the end of making society benefit from the
modicum of creativity
creation of its men and women of talent and
1. Visible sign
genius. This is the essence of intellectual property
2. Capable of distinguishing
laws, and it explains why certain Trademarks
[distinctive] the goods or
products of ingenuity that are concealed from the
services of an enterprise
public are outside the pale of protection afforded by
1. Technical solution of a
the law. It also explains why the author or the
problem in a field of human
creator enjoys no more rights than are consistent with
activity
public welfare. (ABS-CBN Broadcasting
Patents 2. Must be new (novelty)
Corp. v. Philippine Multi-Media System, Inc.,
3. Involves an inventive step;
G.R. Nos. 175769-70, 2009).
(non-obvious)
4. Industrially applicable
2. DIFFERENCES BETWEEN COPYRIGHT, WHEN PROTECTION BEGINS
TRADEMARKS, AND PATENTS Upon creation (but registration
needed only to recover damages
RATIONALE Copyright
in cases of
1. To promote creativity infringement)
Copyright 2. To encourage creation of
Upon grant of trademark
works Trademarks
registration
1. To indicate origin or Patents Upon grant of patent
Trademarks ownership of the articles to TERM OF PROTECTION
which they are attached
 Generally, during the life of the
Copyright author and for 50 years after his
death [life + 50]
10 years, renewable for periods of
10 years after the expiration of
Trademarks
the original term (perpetual
protection as long as renewed)
Patents 20 years from grant
3. TECHNOLOGY TRANSFER
ARRANGEMENT
Contracts or agreements involving the transfer of
systematic knowledge for the manufacture of a
product, the application of a process, or rendering of
a service including management contracts; and the
transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of
computer software except computer software
developed for mass market. (Sec. 4, IP Code)
B. PATENTS
A patent is a grant issued by the Intellectual Property
Office of the Philippines (IPOPHL). Through the
patent, a patent holder is given the exclusive right to
exclude others from making, using, importing, and
selling the patented innovation for a limited period of
time.
The validity of the patent issued by the Philippines
Patent Office and the question over the inventiveness,
novelty, and usefulness of the improved process
therein specified and described are matters which are
better determined by the Philippines Patent Office.
The technical staff of the Philippines Patent Office,
composed of experts in their field, have, by the
issuance of the patent in question, accepted the
thinness of the private respondent's new tiles as a
discovery. There is a presumption that the Philippines
Patent Office has correctly determined the
patentability of the improvement by the private
respondent of the process in question. (Aguas v. De
Leon, G.R. No. L-32160, 1982)
1. PATENTABLE INVENTION
Any technical solution of a problem in any field of
human activity which is (a) new, involves an (b)
inventive step and is (c) industrially applicable
shall be patentable. It may be, or may relate to, a
product, or process, or an improvement of any of the
foregoing. (Sec. 21, IP Code)
A. Novelty
An invention shall not be considered new if it forms
part of a prior art. (Sec. 23, IP Code). Novelty is
an essential requisite of patentability of an invention
or discovery. An invention is not new if it has been
disclosed or used in public, or sold in the market
before the patent application for the invention is filed.
(Manzano v. Court of Appeals, G.R. No.
113388, 1997).
Prior Art – It consists of:
a. 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
b. The whole contents of an application for a
patent, utility model, or industrial design
registration, published in accordance with this
Act, filed or effective in the Philippines, with a
filing or priority date that is earlier than the
filing or priority date of the application:
Provided
i. An application which has validly
claimed the filing date of an earlier
application shall be prior art with effect
as of the filing date of such earlier
application;
ii. The applicant or the inventor identified
in both applications are not one and the
same. (Sec. 24, IP Code)
B. Inventive Step
An invention involves an inventive step if, having
regard to prior art, it is not obvious to a person
skilled in the art at the time of the filing date or
priority date of the application claiming the
invention. (Sec. 26.1, IP Code)
Person Skilled in the Art (POSITA)
A hypothetical person presumed to be an ordinary
practitioner aware of what was common general
knowledge in the art at the relevant date. He or she is
also presumed to have:
1. knowledge of all references that are sufficiently
related to one another and to the pertinent art;
2. knowledge of all arts reasonably pertinent to the
particular problems with which the inventor was
involved; and
3. normal means and capacity for routine work and
experimentation at his or her disposal.
In the case of drugs and medicines, there is no
inventive step if the invention results from:
1. the mere discovery of a new form or new
property of a known substance which does not
result in the enhancement of the known efficacy
of that substance,
2. the mere discovery of any new property or new
use for a known substance, or
3. 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,
IP Code)
C. Industrial Applicability
An invention that can be produced and used in any
industry shall be industrially applicable. (Sec. 27, IP
Code). Industrial applicability refers to an
invention’s real-life benefit and practical use.
2. NON-PATENTABLE INVENTIONS
The following shall be excluded from patent
protection:
1. Discoveries, scientific theories and mathematical
methods, and in the case of drugs and medicines,
the mere discovery of 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 the mere discovery of any
new property or 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.
For the purpose of this clause, salts, esters,
ethers, polymorphs, metabolites, pure form,
particle size, isomers, mixtures of isomers,
complexes, combinations, and other derivatives
of a known substance shall be
considered to be the same substance, unless they
differ significantly in properties with regard to
efficacy;
For drugs and medicines, the following are
unpatentable:
a. Discovery of a new form or new
property of a known substance UNLESS
it results in the enhancement of the
substance’s efficacy;
b. Discovery of any new property or use
of a known substance; and
c. Mere use of a known process
UNLESS such process results in a new
product that employs at least one new
reactant.
2. Schemes, rules and methods of performing
mental acts, playing games or doing business,
and programs for computers;
General Rule: Computer programs are subjects
of copyright.
Exceptions: The computer program is still
subject of copyright protection; in addition, the
machine or article described below may be
patentable if the computer program:
(1) is implemented by a particular machine in a
non-conventional and non-trivial manner, or
(2) transforms an article from one state to
another, then it may be patentable.
3. 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 prohibition, however, does not apply
to products and compositions for use in any of
these methods.
4. 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. Further, Congress
may enact a law providing sui
 generis protection of plant varieties and animal
employee’s regular duties UNLESS there is
breeds and a system of community intellectual
an agreement to the contrary.
rights protection.
Right of Priority
Note: Congress has already enacted the Plan
An application for patent filed by any person who has
Variety Protection Act which grants a Certificate
previously applied for the same invention in another
of Plant Variety Protection for varieties that are:
country which by treaty, convention, or law affords
(a) new, (b) distinct, (c) uniform, and (d)
similar privileges to Filipino citizens, shall be
stable. (Sec. 4, Plant Variety Protection Act)
considered as filed as of the date of filing the foreign
5. Aesthetic creations; and
application, provided that:
6. Anything which is contrary to public order or
1. The local application expressly claims
morality. (Sec. 22, IP Code)
priority;
2. It is filed within twelve (12) months from
3. OWNERSHIP OF A PATENT the date the earliest foreign application was
filed; and
Term of Patent
3. A certified copy of the foreign application
The term of a patent shall be 20 years from the filing
together with an English translation is filed
date of the application. (Sec. 54, IP Code)
within six (6) months from the date of filing
in the Philippines.
Right to a Patent
The right to a patent belongs to the inventor, his
heirs, or assigns. When two (2) or more persons have 4. GROUNDS FOR CANCELLATION OF A
jointly made an invention, the right to a patent shall PATENT
belong to them jointly. (Sec. 28, IP Code)
Any interested person may, upon payment of the
required fee, petition to cancel the patent or any claim
First-to-File Rule
thereof, or parts of the claim, on any of the following
If two (2) or more persons have made the invention
grounds:
separately and independently of each other, the right
1. That what is claimed as the invention is not
to the patent shall belong to the person who filed an
new or patentable;
application for such invention, or where two or more
2. That the patent does not disclose the
applications are filed for the same invention, to the
invention in a manner sufficiently clear and
applicant who has the earliest filing date or the
complete for it to be carried out by any
earliest priority date. (Sec. 29, IP Code)
person skilled in the art; or
3. That the patent is contrary to public order or
Invention Created Pursuant to a Commission
morality.
The person who commissions the work shall own the
patent, unless otherwise provided in the contract.
Note: Where the grounds for cancellation relate to
(Sec. 30, IP Code)
some of the claims or parts of the claim, cancellation
may be effected to such extent only.
If an employee made the invention in the course of
his regular employment, the patent shall belong to:
1. The employee, the inventive activity is not 5. REMEDY OF THE TRUE AND ACTUAL
part of his regular duties (even if the INVENTOR
employee uses the time, facilities, and
If a person, who was deprived of the patent
materials of the employer);
without his consent or through fraud, is declared
2. The employer, if the invention is the result
by final court order or decision to be the true and
of the performance of the
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 and
other damages in his favor if warranted by the
circumstances. (Sec. 68, IP Code)

The remedies of the true and actual inventor are:
(a) Substitution as patentee, and
(b) Cancellation of the patent.
In both remedies, damages may be awarded.
Note: There must first be a final court order
declaring that he is the true and actual inventor.
Patent Application by Persons Not Having
the Right to a Patent
If a person other than the applicant is declared by
final court order or decision as having the right to the
patent, such person may, within three (3) months after
the 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 that the application be refused; or
(d) Seek cancellation of the patent, if one
has already been issued. (Sec. 67, IP
Code)
6. RIGHTS CONFERRED BY A PATENT
A patent shall confer on its owner the following
exclusive rights:
1. Where the subject matter of a patent is a
product, to restrain, prohibit and prevent
any unauthorized person or entity from
making, using, offering for sale, selling or
importing that product;
2. Where the subject matter of a patent is a
process, to restrain, prevent or prohibit
any unauthorized person or entity from
using the process, and from manufacturing,
dealing in, using, selling or offering for sale,
or importing any product obtained
directly or indirectly from such process.
Rights of Joint Owners
If two or more persons own patent and invention
covered thereby, each of the joint owners shall be
entitled to personally make, use, sell or import the
invention for his own profit. Provided, neither of joint
owners shall be entitled to grant licenses or to assign
his right, title or interest or part thereof without
consent of other owner or owners, or
without proportionally dividing proceeds therewith.
(Sec. 107, IP Code)
7. LIMITATIONS OF PATENT RIGHTS
The patentee has no right to prevent third parties in
the following circumstances:
1. Using a patented product which has been put on
the market in the Philippines by the owner of
the product, or with his express consent, insofar
as such use is performed after that product has
been so put on the said market.
Note: With regard to drugs and medicines, the
limitation on patent rights shall apply after a drug
or medicine has been introduced in the
Philippines or anywhere else in the world.
The right to import the drugs and medicines shall
be available to any government agency or any
private third party.
2. Where the act is done privately and on a non-
commercial scale or for a non-commercial
purpose, and the economic interests of the
patentee are not significantly prejudiced;
3. Where the act consists of making or using
exclusively for experimental use of the invention
for scientific purposes or educational purposes
and such other activities directly related to such
scientific or educational experimental use;
4. 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;
5. Where the act consists of the preparation for
individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a
medical prescription or acts concerning the
medicine so prepared; and
6. Where the invention is used in any ship, vessel,
aircraft, or land vehicle of any other
ATENEO CENTRAL
BAR OPERATIONS 2020/21
country entering the territory of the Philippines
temporarily or accidentally.
Note: Such invention must be 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.
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
on which a patent is granted, shall have the right
to continue the use thereof within the territory where
the patent produces its effect. The right of prior user
may only be transferred or assigned together with
enterprise or business, or with the part of his
enterprise or business in which use or preparations
for use have been made.
B. 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 require; or
2. A judicial or administrative body has determined
that the manner of exploitation, by the owner of
the patent or his licensee, is anti- competitive; or
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; or
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
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.
COMMERCIAL LAW
8. PATENT INFRINGEMENT
Consists of the following acts:
(1) making, using, offering for sale, selling, or
importing a patented product or a product
obtained directly or indirectly from a
patented process; or
(2) use of a patented process without the
authorization of the patentee constitutes
patent infringement.
Notes:
To be able to effectively and legally preclude others
from copying and profiting from the invention, a
patent is a primordial requirement. No patent, no
protection. (Pearl & Dean (Phil.) v. Shoemart,
G.R. No. 148222, 2003)
There can be no infringement of a patent until a
patent has been issued, since whatever right one has
to the invention covered by the patent arises alone
from the grant of patent. (Creser Precision
Systems, Inc. v. Court of Appeals, G.R. No.
118708, 1998)
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. Court of
Appeals, G.R. No. 115106, 1996)
However: The exclusive right of a patentee to make,
use and sell a patented product, article or process
exists only during the term of the patent. (Phil
Pharmawealth, Inc. v. Pfizer, Inc., G.R. No.
167715, 2010)
A. Tests in Patent Infringement
1. Literal Infringement
Resort must be had to the words of the claim. If
accused matter clearly falls within the claim, then
there is literal infringement.
To determine whether the particular item falls within
the literal meaning of the patent claims, the Court
a. Compares the claims of the patent and the
accused product within the overall
 context of the claims and specifications, and
b. Determines whether there is exact identity of
Note: This criminal action is without prejudice to the
all material elements. (Godines
institution of a civil action for damages,
v. Court of Appeals, G.R. No. 97343,
1993)
The criminal action herein provided shall prescribe in
three (3) years from date of the commission of the
2. Doctrine of Equivalents
crime. (Sec. 84, IP Code)
Infringement also occurs when a device appropriates
a prior invention by incorporating its innovative
The burden of proof to substantiate a charge for
concept and, albeit with some modification and
patent infringement rests on the plaintiff. (Smith
change, performs substantially the same function in
Kline Beckman Corp. v. Court of Appeals, G.R.
substantially the same way to achieve substantially
No. 126627, 2003)
the same result. (Smith Kline Beckman Corp. v.
Court of Appeals, G.R. No. 126627, 2003)
Infringement Action by a Foreign National
Any foreign national or juridical entity who meets the
Under the doctrine of equivalents, there is still patent
requirements of Section 3 (Rule on
infringement when:
Reciprocity) and not engaged in business in the
a. There is an appropriation of the inventive
Philippines, to which a patent has been granted or
step of a prior invention;
assigned under this Act, may bring an action for
b. The subsequent invention has been modified
infringement of patent, whether or not it is
or changed; and
licensed to do business in the Philippines under
c. Despite such changes, the subsequent
existing law. (Sec. 77, IP Code).
invention performs substantially the same
function in substantially the same way to
1. Civil Action
achieve substantially the same result.
Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose rights
Rationale: Such imitation would leave room for the
have been infringed, may bring a civil action before a
unscrupulous copyist to make unimportant and
court of competent jurisdiction, to recover from the
insubstantial changes and substitutions in the patent
infringer such damages sustained thereby, plus
which, though adding nothing, would be enough to
attorney’s fees and other expenses of litigation, and to
take the copied matter outside the claim, and hence
secure an injunction for the protection of his rights.
outside the reach of the law. (Godines v. Court of
(Sec. 76, IP Code).
Appeals, G.R. No. 97343, 1993)
Civil remedies for infringement:
B. Civil and Criminal Action
(1) recovery of damages, attorney’s fees, and
Criminal Action for Repetition of litigation costs; and
Infringement If infringement is repeated by the (2) injunction.
infringer or by anyone in connivance with him after
finality of the judgment of the court against the Rules on Civil Remedies
infringer, the offenders shall be criminally liable 1. If the damages are inadequate or cannot be
therefor and, upon conviction, shall suffer readily ascertained with reasonable
imprisonment for the period of not less than six (6) certainty, the court may award by way of
months but not more than three (3) years and/or a fine damages a sum equivalent to reasonable
of not less than One hundred thousand pesos royalty.
(P100,000) but not more than Three hundred 2. The court may award damages in a sum
thousand pesos (P300,000), at the discretion of the above the amount found as actual damages
court. sustained.

Note: The amount may award an amount

more than the actual damages but must
 not exceed three (3) times the amount of
actual damages.
3. The court may order that the infringing
goods, materials and implements
predominantly used in the infringement be
destroyed without compensation.
4. Damages cannot be recovered for acts of
infringement committed before the infringer
had known, or had reasonable grounds to
know of the patent.
Note: It is presumed that the infringer had
known of the patent if the words “Philippine
Patent” and the number of the patent appear
on the patented product or on the container
or package or the advertising material of the
patented product or process.
Contributory Infringer – jointly and severally
liable with the infringer if he:
a. actively induces the infringement of a
patent; or
b. provides the infringer with a component of a
patented product or of a product produced
by a patented process knowing it to be used
for infringing the patented invention.
2. Criminal Action
If infringement is repeated by the infringer or by
anyone in connivance with him after finality of the
judgment against the infringer, the offenders shall,
without prejudice to the institution of a civil action
for damages, be criminally liable. Upon conviction,
the offenders shall suffer:
a. imprisonment for the period of not less than
six months but not more than three years,
and/or
b. a fine of not less than P100,000 but not more
than P300,000.
C. Prescriptive Period
1. No damages can be recovered for acts of
infringement committed more than four (4) years
before the institution of the action for
infringement. (Sec. 79, IP Code)
2. The criminal action for repetition of infringement
shall prescribe in three (3) years
from date of the commission of the crime.
(Sec. 84, IP Code)
D. Defenses in Action for Infringement
In an action for infringement, the defendant may
show the invalidity of the patent, or any claim
thereof, on any of the following grounds:
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.
Note: These are the same grounds for the
cancellation of a patent.
9. LICENSING
A. Voluntary Licensing
To encourage the transfer and dissemination of
technology, prevent or control practices and
conditions that may constitute an abuse of intellectual
property rights having an adverse effect on
competition and trade.
All technology transfer arrangements must comply
with the provisions of the IP Code.
Prohibited Clauses
The following provisions shall be deemed prima facie
to have an adverse effect on competition and trade:
1. Those which impose upon the licensee the
obligation to acquire from a specific source
capital goods, intermediate products, raw
materials, and other technologies, or of
permanently employing personnel indicated by
the licensor;
2. Those pursuant to which the licensee reserves the
right to fix the sale or resale prices of the
products manufactured on the basis of the
license;
3. Those that contain restrictions regarding the
volume and structure of production;
4. Those that prohibit the use of competitive
technologies in a non-exclusive technology
Mandatory Provisions
transfer arrangement;
The following provisions shall be included in all
5. Those that establish full or partial purchase
voluntary license contracts:
option in favor of the licensor;
1. That the laws of the Philippines shall govern the
6. Those that obligate the licensee to transfer for
interpretation of the agreement and in the event
free to the licensor the inventions or
of litigation, the venue shall be the proper court
improvements that may be obtained through the
in the place where the licensee has its principal
use of the licensed technology;
office;
7. Those that require payment of royalties to the
2. That continued access to improvements in
owners of patents for patents which are not used;
techniques and processes related to the
8. Those that prohibit the licensee to export the
technology shall be made available during the
licensed product unless justified for the
period of the technology transfer arrangement;
protection of the legitimate interest of the
3. That, in the event the technology transfer
licensor such as exports to countries where
arrangement shall provide for arbitration, the
exclusive licenses to manufacture and/or
Procedure of Arbitration of the Arbitration Law
distribute the licensed product(s) have already
of the Philippines or the Arbitration Law of the
been granted;
United Nations Commission on International
9. Those which restrict the use of the technology
Trade Law (UNCITRAL) or the Rules of
supplied after the expiration of the technology
Conciliation and Arbitration of the International
transfer arrangement, except in cases of early
Chamber of Commerce shall apply and the venue
termination of the technology transfer
of arbitration shall be the Philippines or any
arrangement due to reason(s) attributable to the
neutral country; and
licensee;
4. That the Philippine taxes on all payments
10. Those which require payments for patents and
relating to the technology transfer arrangement
other industrial property rights after their
shall be borne by the licensor.
expiration or termination of the technology
transfer arrangement;
Rights of Licensor
11. Those which require that the technology
Absent a contrary provision in technology transfer
recipient shall not contest the validity of any of
arrangement, the grant of a license shall not prevent
the patents of the technology supplier;
the licensor from granting further licenses to third
12. Those which restrict the research and
persons nor from exploiting the subject matter of the
development activities of the licensee designed
technology transfer arrangement himself.
to absorb and adapt the transferred technology to
local conditions or to initiate research and
Rights of Licensee
development programs in connection with new
The licensee shall be entitled to exploit the subject
products, processes or equipment;
matter of the technology transfer arrangement during
13. Those which prevent the licensee from adapting
the whole term of the technology transfer
the imported technology to local conditions, or
arrangement.
introducing innovation to it, as long as it does not
impair the standards prescribed by the licensor;
Non-Registration
and
Technology transfer arrangements that conform with
14. Those which exempt the licensor from liability
the previous requirements need not be registered with
for non-fulfillment of his responsibilities under
the Documentation, Information and Technology
the technology transfer arrangement and/or
Transfer Bureau (DITTB). Non- conformance,
liability arising from third party suits brought
however, shall automatically render the technology
about by the use of the licensed product or the
transfer arrangement unenforceable, unless the
licensed technology.
technology transfer agreement is considered as an
15. Other clauses with equivalent effects.
exceptional case.

Exceptional Cases
Non-conformance with the requirements in a
voluntary licensing contract may be allowed where,
after evaluation by the DITTB, substantial benefits
will accrue to the economy such as in the following
exceptional or meritorious cases:
1. High technology content,
2. Increase in foreign exchange earnings,
3. Employment generation,
4. Regional dispersal of industries and/or,
5. Substitution with or use of local raw
materials, or
6. Registered companies with pioneer
status.
B. Compulsory Licensing
The Director of Legal Affairs may grant license to
exploit patented invention, even without agreement of
patent owner, in favor of any person who has shown
his capability to exploit invention, under any of the
following circumstances:
1. National emergency or other circumstances
of extreme urgency; or
2. Where public interest, in particular, national
security, nutrition, health or development of
other vital sectors of national economy as
determined by the appropriate agency of the
Government, so requires; or
3. Where a judicial or administrative body has
determined that manner of exploitation by
patent owner or his licensee is anti-
competitive; or
4. In case of public non-commercial use of
patent by patentee, without satisfactory
reason; or
5. If patented invention is not being worked in
Philippines on commercial scale, although
not capable of being worked, without
satisfactory reason: Provided, that
importation of patented article shall
constitute working or using the patent; or
6. Where the demand for patented drugs and
medicines is not being met to an adequate
extent and on reasonable terms, as
determined by the Secretary of the
Department of Health. (Sec. 96, IP Code)
Use of Invention by Government
A Government agency or third person authorized by
the Government may exploit the invention even
without agreement of the patent owner where:
a) The public interest, in particular, national
security, nutrition, health or the development
of other sectors, as determined by the
appropriate agency of the government, so
requires; or
b) A judicial or administrative body has
determined that the manner of exploitation,
by the owner of the patent or his licensee is
anti-competitive; or
c) In the case of drugs and medicines, there is a
national emergency or other circumstance of
extreme urgency requiring the use of the
invention; or
d) In the case of drugs and medicines, there is
public non-commercial use of the patent by
the patentee, without satisfactory reason; or
e) 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. 74.1, IP
Code)
Terms and Conditions of the Compulsory
License
1. The scope and duration of such license shall
be limited to the purpose for which it was
authorized;
2. The license shall be non-exclusive;
3. The license shall be non-assignable, except
with that part of the enterprise or business
with which the invention is being exploited;
4. Use of the subject matter of the license shall
be devoted predominantly for the supply of
the Philippine market;
Note: This shall not apply where the grant
of the license is based on the ground that the
patentee’s manner of exploiting the patent is
determined by judicial or administrative
process to be anti-competitive.
 5. The license may be terminated upon proper
entire patent and invention, in which event the parties
showing that circumstances which led to its
become joint owners thereof. An assignment may be
grant have ceased to exist and are unlikely to
limited to a specified territory. (Sec. 104, IP Code)
recur;
6. The patentee shall be paid adequate
Form of Assignment
remuneration taking into account the
The assignment must be in writing, acknowledged
economic value of the grant or authorization.
before a notary public or other officer authorized to
(Sec. 100, IP Code)
administer oath or perform notarial acts, and certified
under the hand and official seal of the notary or such
Amendment, Cancellation, Surrender of
other officer. (Sec. 105, IP Code)
Compulsory License
Upon request of patentee, or licensee, Director of
Requirements for Recording of Assignment
Legal Affairs may amend decision granting
a. It must be in writing and accompanied by an
compulsory license, upon proper showing of new
English translation, if it is in a language
facts or circumstances justifying such amendment; or
other than English or Filipino;
may cancel compulsory license if:
b. It must be notarized;
1. Ground for grant of compulsory license no
c. It must be accompanied by an appointment
longer exists and is unlikely to recur;
of a resident agent, if the assignee is not
2. Licensee has neither begun to supply
residing in the Philippines;
domestic market nor made serious
d. It must identify the letters patent involved by
preparation therefore; or
number and date and give the name of the
3. Licensee not complied with prescribed terms
owner of the patent and the title of the
of license. (Sec. 101, IP Code)
invention. In the case of an application for a
patent, it should state the application number
Licensee’s Exemption from Liability
and the filing date of the application and
Any person who works a patented product, substance
give the name of the applicant and the title
and/or process under a compulsory license, shall be
of the invention. If the assignment was
free from any liability for infringement. In case of
executed concurrently with or subsequent to
voluntary licensing, it must be proven that no
the execution of the application but before
collusion with licensor existed. This is without
the application is filed or before its
prejudice to rightful patent owner to recover from
application number is ascertained, it should
licensor whatever he may receive as royalties under
adequately identify the application by its date
the license. (Sec. 102, IP Code)
of execution, the name of the applicant, and
the title of the invention.
10. ASSIGNMENT AND TRANSMISSION OF e. It must be accompanied by the required fees.
RIGHTS

Patent owners shall also have the right to assign,

transfer by succession the patent, and conclude
licensing contracts for the same.

Note: 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. (Sec. 103, IP Code)

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
 C. TRADEMARKS
Modern authorities on trademark law view
trademarks as performing three distinct functions:
(1) they indicate origin or ownership of the articles to
which they are attached;
(2) they guarantee that those articles
come up to a certain standard of quality; and
(3) they advertise the articles they symbolize.
(Mirpuri v. Court of Appeals, G.R. No. 114508,
1999)
1. DEFINITIONS OF MARKS, COLLECTIVE
MARKS, AND TRADE NAMES
Mark
Any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
container of goods. (Sec. 121.1, IP Code)
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, IP Code)
Trade Name
Any name or designation identifying or
distinguishing an enterprise (Sec. 121.3, IP Code);
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:
1. It is contrary to public order or morals;
2. It is liable to deceive trade circles or the
public as to the nature of the enterprise
identified by that name; or
3. It is similar to a mark or a trade name owned
by another person and its use would likely
mislead the public.
A trade name refers to the business and its goodwill;
a trademark refers to the goods. (Canon Kabushiki
Kaisha v. Court of Appeals, G.R. No. 120900,
2000)
Spectrum of Distinctiveness of Trademark
(Zantarain’s Inc. v. Old Grove Smokehouse, 698
F.2d 786, 1983) (from weakest to strongest)
1. Generic – refers to a particular genus or class of
which an individual article or service is a
member (e.g. escalator, cellophane, etc.)
a. It can never attain trademark protection.
b. If a registered trademark becomes
generic as to a particular product or
service, the mark’s registration is
subject to cancellation.
2. Descriptive – identifies a characteristic or
quality of an article or service such as its color,
odor, function, dimensions, or ingredients
General Rule: It is not ordinarily protectable as
a trademark because, like a generic term, it
belongs to the public domain. (Ong Ai Gui v.
Director of Patents, G.R. No. L-6235, 1955)
Exception: When the doctrine of secondary
meaning applies in such a way that it has
acquired a secondary meaning in the minds of
the consumers. (Sec. 123.2)
3. Suggestive – requires the consumer to exercise
the imagination in order to draw a conclusion as
to the nature of the goods or services
4. Arbitrary or Fanciful – bear no relationship to
the products or services to which they are
applied; protectable without proof of secondary
meaning (e.g. Adidas, Rolex, etc.)
2. ACQUISITION OF OWNERSHIP OF A
MARK
The rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of this law. (Zuneca Pharmaceutical v.
Natrapharm, Inc., G.R. No. 211850, 2020)
Note: Any person who shall procure registration in
the Office of a mark by a false or fraudulent
declaration or representation, whether oral or in
writing, or by any false means, shall be liable in a
civil action by any person injured thereby for any
damages sustained in consequence thereof. (Sec.
162, IP Code)

The registration of trademark under the law is
required to give notice to the entire world that a mark
has already been registered. The failure to give notice
of registration bars recovery of damages for
trademark infringement, without prejudice to other
causes of action based on other laws. (Cagayan
Valley Enterprises, Inc. v. Court of Appeals,
G.R. No. 78413, 1989)
The owner of the registered mark shall not be entitled
to recover profits or damages in any suit for
infringement, unless the acts have been committed
with knowledge that such limitation is likely to cause
confusion, to cause mistake, or to deceive. Such
knowledge is presumed if 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 if the defendant had otherwise
actual notice of the registration. (Sec. 158, IP
Code)
Doctrine of Secondary Meaning
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 (Phil.) v. Shoemart,
G.R. No. 148222, 2003)
Secondary meaning is established when a descriptive
mark no longer causes the public to associate the
goods with a particular place but to associate the
goods with a particular source. (Shang Properties
Realty Corp. v. St. Francis Development Corp.,
G.R. No. 190706, 2014)
Requirements for a Geographically-
descriptive Mark to Acquire Secondary
Meaning
1. The secondary meaning must have arisen as
a result of substantial commercial use of a
mark in the Philippines; and
2. Such use must result in the distinctiveness of
the mark insofar as the goods or the products
are concerned.
NOTE: 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 is prima facie evidence of
distinctiveness. (Sec. 123.2, IP Code)
Duration and Renewal
A certificate of registration shall remain in force for
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 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.
A certificate of registration may be renewed for
periods of 10 years at its expiration upon payment of
the prescribed fee and upon filing of a request.
3. ACQUISITION OF OWNERSHIP OF
TRADE NAME
Notwithstanding any laws or regulations providing for
any obligation to register trade names, such names
shall be protected, even prior to or without
registration, against any unlawful act committed by
third parties. (Sec. 165.2.a, IP Code)
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, IP Code)
Doctrine of Secondary Meaning Applicable to
Trade Names
The doctrine’s application has been extended to
corporate names since the right to use a corporate
name to the exclusion of others is based upon the
same principle which underlies the right to use a
particular trademark or tradename. (Lyceum of the
Philippines, Inc. v. Court of Appeals, G.R. No.
101897, 1993)
 4. NON-REGISTRABLE MARKS
A mark cannot be registered if it:
a. Consists of immoral, deceptive or
scandalous matter, or matter which may
disparage or falsely suggest a connection
with persons, living or dead, institutions,
beliefs, or national symbols, or bring them
into contempt or disrepute;
b. Consists of the flag or coat of arms or other
insignia of the Philippines or any of its
political subdivisions, or of any foreign
nation, or any simulation thereof;
c. Consists of a name, portrait or signature
identifying a particular living individual
except by his written consent, or the name,
signature, or portrait of a deceased President
of the Philippines, during the life of his
widow, if any, except by written consent of
the widow;
d. Is identical with a registered mark belonging
to a different proprietor or a mark with an
earlier filing or priority date, in respect of:
i. The same goods or services, or
ii. Closely related goods or services,
or
iii. If it nearly resembles such a mark
as to be likely to deceive or cause
confusion;
e. Is identical with, or confusingly similar to,
or constitutes a translation of a mark which
is considered by the competent authority of
the Philippines to be well- known
internationally and in the Philippines,
whether or not it is registered here, as being
already the mark of a person other than the
applicant for registration, and used for
identical or similar goods or services;
Note: In determining whether a mark is
well-known, account shall be taken of the
knowledge of the relevant sector of the
public, rather than of the public at large,
including knowledge in the Philippines
which has been obtained as a result of the
promotion of the mark.
f. Is identical with, or confusingly similar to,
or constitutes a translation of a mark
considered well-known in accordance with
the preceding paragraph, which is registered
in the Philippines with respect to goods or
services which are not similar to those with
respect to which registration is applied for.
Note: Under this provision, (i) the use of
the mark in relation to those goods or
services must indicate a connection between
those goods or services, and the owner of the
registered mark; and (ii) the interests of the
owner of the registered mark are likely to be
damaged by such use.
g. Is likely to mislead the public, particularly as
to the nature, quality, characteristics or
geographical origin of the goods or services;
h. Consists exclusively of signs that are generic
for the goods or services that they seek to
identify;
i. Consists exclusively of signs or of
indications that have become customary or
usual to designate the goods or services in
everyday language or in bona fide and
established trade practice;
j. Consists exclusively of signs or of
indications that may serve in trade to
designate the kind, quality, quantity,
intended purpose, value, geographical
origin, time or production of the goods or
rendering of the services, or other
characteristics of the goods or services;
k. Consists of shapes that may be necessitated
by technical factors or by the nature of the
goods themselves or factors that affect their
intrinsic value;
l. Consists of color alone, unless defined by a
given form; or
m. Is contrary to public order or morality.
(Sec. 123.1, IP Code)
5. PRIOR USE OF MARK
AS REQUIREMENT
Under Trademark Law (old rule): The rights to a
trademark were acquired through a “first-to- use”
system. (Sec. 5, Republic Act No. 166)
Under the IP Code (new rule): The rights in a
public or to deceive
mark shall be acquired through registration made
consumers.
validly in accordance with the provisions of this law.
(Citigroup v Citystate, G.R. No. 205409, 2018)
(Sec. 122, IP Code)
Idem Sonans
Prior use no longer determines the acquisition of Literally “same sound” in Latin; an identity of sound
ownership of a mark in light of the adoption of the in the pronunciation of words or names.
rule that ownership of a mark is acquired through
registration made validly in accordance with the As to the syllabication and sound of the two trade-
provisions of the IP Code. (Zuneca names “Sapolin” and “Lusolin” being used for paints,
Pharmaceutical v. Natrapharm, Inc., G.R. No. it seems plain that whoever hears or sees them
211850, 2020) cannot but think of paints of the same kind and
make. (Sapolin Co., Inc. v. Germann & Co., Ltd.,
6. TESTS TO DETERMINE CONFUSING G.R. No. 45502, 1939).
SIMILARITY BETWEEN MARKS
Two letters of “SALONPAS” are missing in
To aid in determining the similarity and likelihood of “LIONPAS”: the first letter a and the letter s. Be that
confusion between marks, our jurisprudence has as it may, when the two words are pronounced, the
developed two (2) tests: the dominancy test and the sound effects are confusingly similar. And where
holistic test. goods are advertised over the radio, similarity in
sound is of especial. The importance of this rule is
Dominancy Test Holistic Test
emphasized by the increase of radio advertising in
Focuses on the Entails a which we are deprived of the help of our eyes and
similarity of consideration of the must depend entirely on the ear. “SALONPAS” and
the prevalent features entirety of the marks as “LIONPAS”, when spoken, sound very much alike.
of the competing applied to the products, Similarity of sound is sufficient ground for this Court
trademarks that might including the labels to rule that the two marks are confusingly similar
cause confusion and and when applied to merchandise of the same descriptive
deception, thus packaging, in properties. (Marvex Commericial Co., Inc. v.
constituting determining confusing Petra Hawpia & Co.,
infringement. similarity. G.R. No. L-19297, 1966)

If the competing The discerning eye of The determining point in trademark infringement is a
trademark contains the the observer must focus likelihood of confusion. The fact that CEEGEEFER
main, essential, and not only on the is idem sonans for CHERIFER is enough to violate
dominant predominant words but respondent's right to protect its trademark,
features of another, and also on the other CHERIFER. (Latest SC decision is Prosel v.
confusion or deception features appearing on Tynor, G.R. No. 248021, 2020)
is likely to result, both marks in order that
infringement occurs. the observer may draw
7. WELL-KNOWN MARKS
Exact his conclusion whether
duplication or one is confusingly The countries of the Union undertake, ex officio if
imitation is not similar to the other. their legislation so permits, or at the request of an
required. interested party, to refuse or to cancel the registration,
and to prohibit the use, of a trademark which
The question is whether constitutes a reproduction, an imitation, or a
the use of the marks translation, liable to create confusion, of a mark
involved is likely to considered by the competent authority of the country
cause confusion or of registration or use to be well known in that
mistake country as being
in the mind of the
already the mark of a person entitled to the benefits
of Well-Known Marks cited with
of this Convention and used for identical or similar
approval in Sehwani v. In-N-Out)
goods. These provisions shall also apply when the
essential part of the mark constitutes a reproduction
Criteria for determining whether a mark is well-
of any such well- known mark or an imitation liable
known:
to create confusion therewith. (Art. 6 bis, Paris
1. Duration, extent and geographical area of
Convention)
any use of the mark, in particular, the
duration, extent and geographical area of
Note: The essential requirement under this Article is
any promotion of the mark, including
that the trademark to be protected must be “well-
advertising or publicity and the presentation,
known” in the country where protection is sought.
at fairs or exhibitions, of the goods and/or
The power to determine whether a trademark is well-
services to which the mark applies;
known lies in the “competent authority of the country
2. Market share, in the Philippines and in other
of registration or use.” This competent authority
countries, of the goods and/or services to
would be either the registering authority, if it has the
which the mark applies;
power to decide this, or the courts of the country in
3. Degree of the inherent or acquired
question if the issue comes before a court. (Sehwani,
distinction of the mark;
Inc. v. In- N-Out Burger, Inc., G.R. No. 171053,
4. Quality-image or reputation acquired by the
2007)
mark;
5. Extent to which the mark has been registered
The question of whether or not respondent's
in the world;
trademarks are considered “well-known” is factual in
6. Exclusivity of registration attained by the
nature, involving as it does the appreciation of
mark in the world;
evidence adduced before the BLA-IPO. The settled
7. Extent to which the mark has been used in
rule is that the factual findings of quasi-judicial
the world;
agencies, like the IPO, which have acquired expertise
8. Exclusivity of use attained by the mark in
because their jurisdiction is confined to specific
the world;
matters, are generally accorded not only respect, but,
9. Commercial value attributed to the mark in
at times, even finality if such findings are supported
the world;
by substantial evidence. (Sehwani, Inc. v. In-N-Out
10. Record of successful protection of the rights
Burger, Inc., G.R. No. 171053, 2007)
in the mark;
11. Outcome of litigations dealing with the issue
Factors Which Shall Not be Required in
of whether the mark is a well-known mark;
Determining Whether a Mark is a Well-known
and
Mark:
12. Presence or absence of identical or similar
1. that the mark has been used in, or that the
marks validly registered for or used on
mark has been registered, or that an
identical or similar goods or services and
application for registration of the mark has
owned by persons other than the person
been filed in or in respect of the Member
claiming that his mark is a well-known
State;
mark.
2. that the mark is well known in, or that the
mark has been registered, or that an (Rule 102, Rules and Regulations On
application for registration of the mark has Trademarks, Servicemarks, Tradenames
been filed in or in respect of, any jurisdiction and Marked or Stamped Containers)
other than the Member State;
3. that the mark is well known by the public at
large in the Member State. (Part I, Art. 2.3,
1999 Joint Recommendation
Concerning Provisions on the Protection
 8. RIGHTS CONFERRED BY
REGISTRATION
The owner of a registered mark shall have the
exclusive right:
1. to prevent all third parties not having the
owner’s consent
2. 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
3. where such use would result in a likelihood
of confusion.
Note: In case of the use of an identical sign for
identical goods or services, a likelihood of confusion
shall be presumed. (Sec. 147.1, IP Code)
The exclusive right of the owner of a well-known
mark which is registered in the Philippines, shall
extend to goods and services which are not similar to
those in respect of which the mark is registered,
Provided:
1. That the use of that mark in relation to those
goods or services would indicate a
connection between those goods or services
and the owner of the registered mark; and
2. That the interests of the owner of the
registered mark are likely to be damaged by
such use. (Sec. 147.2, IP Code)
The ownership of a trademark or tradename is a
property right that the owner is entitled to protect.
However, when a trademark is used by a party for a
product in which the other party does not deal, the
use of the same trademark on the latter's product
cannot be validly objected to. (Canon Kabushiki
Kaisha v. Court of Appeals, G.R. No. 120900,
2000)
9. USE BY THIRD PARTIES OF NAMES,
ETC. SIMILAR TO REGISTERED MARK
Registration of the mark shall not confer on the
registered owner the right to preclude third parties
from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity,
destination, value, place of origin, or time of
production or of supply, of their goods or services:
Provided, that such use
1. Is confined to the purposes of mere
identification or information, and
2. Cannot mislead the public as to the source
of the goods or services. (Sec. 148, IP
Code)
10. INFRINGEMENT AND REMEDIES
A. Trademark Infringement
A person shall be liable for trademark infringement
if, without the consent of the owner of the registered
mark, he:
i. Uses in commerce any reproduction or
colorable imitation of a registered mark
or the same container or a dominant
feature thereof in connection with the
sale, offering for sale, distribution,
advertising of any goods or services
which is likely to cause confusion, or to
cause mistake, or to deceive;
Note: This includes other preparatory steps
necessary to carry out the sale of any goods
or services.
ii. Reproduces or colorably imitates a
registered mark or a dominant feature
thereof and applies such reproduction or
colorable imitation to signs, packages,
or advertisements intended to be used in
commerce upon or in connection with
the sale, offering for sale, distribution,
or advertising of goods or services
which likely to cause confusion, or to
cause mistake, or to deceive.
Note: It is immaterial that there was no actual sale of
The general impression of the ordinary purchaser
goods or services using the infringing material as
buying under the normally prevalent conditions in
long as the acts mentioned were actually committed.
trade and giving the attention such purchasers usually
(Sec. 155, IP Code)
give in buying that class of goods, is the touchstone.
(Del Monte Corp v. Court of Appeals, G.R. No.
The “likelihood of confusion” is the gravamen of
78325, 1990)
trademark infringement. But likelihood of confusion
is a relative concept, the particular, and sometimes
Right of Foreign Corporation to Sue in
peculiar, circumstances of each case being
Trademark or Service Mark Enforcement
determinative of its existence. Thus, in trademark
Action
infringement cases, more than in other kinds of
Any foreign national or juridical person who meets
litigation, precedents must be evaluated in the light of
the requirements of Section 3 of the IP Code and does
each particular case. (Philip Morris, Inc. v. Fortune
not engage in business in the Philippines may bring a
Tobacco Corp., G.R. No. 158589, 2006)
civil or administrative action hereunder for
opposition, cancellation, infringement, unfair
To establish trademark infringement, the following
competition, or false designation of origin and false
elements must be shown:
description, whether or not it is licensed to do
i. The validity of plaintiff’s mark;
business in the Philippines under existing laws.
ii. The plaintiff’s ownership of the mark;
(Sec. 160, IP Code)
and
iii. The use of the mark or its colorable
Limitations to Actions for Infringement
imitation by the alleged infringer results
1. A registered mark shall have no effect
in “likelihood of confusion.”
against any person who, in good faith,
(McDonald's Corp. v. L.C. Big Mak
before the filing date or the priority date,
Burger, Inc., G.R. No. 143993,
was using the mark for the purposes of his
2004)
business or enterprise.
The phrase “colorable imitation” denotes such a
Note: Such right may only be transferred or
“close or ingenious imitation as to be calculated to
assigned together with his enterprise or
deceive ordinary persons, or such a resemblance to
business or with that part of his enterprise or
the original as to deceive an ordinary purchaser
business in which the mark is used.
giving such attention as a purchaser usually gives,
and to cause him to purchase the one supposing it to
Note: cf. (Zuneca v. Natrapharm, G.R.
be the other”. (Etepha, A.G. v. Director of
No. 211850, 2020 - wherein the SC held
Patents, G.R. No. L- 20635, 1966)
that the first to file rule shall prevail
against a user of a mark in good faith.)
The use of an identical or colorable imitation of a
registered trademark by a person for the same goods
2. Where an infringer who is engaged solely
or services or closely related goods or services of
in the business of printing the mark or
another party constitutes infringement. It is a form of
other infringing materials for others is an
unfair competition because there is an attempt to get a
innocent infringer, the owner of the right
free ride on the reputation and selling power of
infringed shall be entitled as against such
another manufacturer by passing of one’s goods as
infringer only to an injunction against future
identical or produced by the same manufacturer as
printing.
those carrying the other mark (brand).
3. Where the infringement complained of is
(Commissioner of Internal Revenue v. San
contained in or is part of paid
Miguel Corp., G.R. Nos. 205045 & 205723,
advertisement in a periodical or in an
2017)
electronic communication, the remedies of
the owner of the right infringed as
 against the publisher or distributor of
periodical or electronic communication shall
be limited to an injunction against the
presentation of such advertising matter in
future issues.
Note: This shall apply only to innocent
infringers.
4. There shall be no infringement of
trademarks or tradenames of imported or
sold drugs and medicines as well as
imported or sold off-patent drugs and
medicines PROVIDED, the marks appearing
thereon have been registered marks that
have not been tampered or unlawfully
modified.
B. Damages
The owner of a registered mark may recover damages
from any person who infringes his rights. The
measure of the damages suffered shall be either:
1. The reasonable profit which the
complaining party would have made had
the defendant not infringed his rights, or
2. The profit which the defendant actually
made out of the infringement.
If the measure of damages cannot be readily
ascertained with reasonable certainty, 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, IP
Code)
Note: Where there was actual intent to mislead the
public or to defraud the complainant, the court may
double the amount of damages to be awarded. (Sec.
156.3, IP Code)
On application of the complainant, the court may
impound during the pendency of the action, sales
invoices and other documents evidencing sales.
(Sec. 156.2, IP Code)
C. Damages; Requirement of Notice
In any suit for infringement, 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. Such
knowledge is presumed if:
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, IP Code)
D. Penalties
Independent of the civil and administrative sanctions
imposed by law, a criminal penalty of imprisonment
from 2 to 5 years and a fine ranging from P50,000 to
P200,000 shall be imposed on any person who is
found guilty of committing any of the acts of
trademark infringement, unfair competition, or false
description or representation. (Sec. 170, IP Code)
Power of Court to Order Infringing Material
Destroyed
In any action involving a violation of a right of the
owner of the registered mark, the court may order that
goods found to be infringing be disposed of outside
the channels of commerce in such a manner as to
avoid any harm caused to the right holder or
destroyed without compensation of any sort. (Sec.
157.1, IP Code)
11. UNFAIR COMPETITION
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, IP
Code)
Any person who shall employ deception or any other
means contrary to good faith by which he shall pass
off the goods manufactured by him or
in which he deals, or his business, or services for
the effect is to pass off on the public the goods of one
those of the one having established such goodwill, or
man as the goods of another. It is not necessary that
who shall commit any acts calculated to produce said
any particular means should be used to this end.
result, shall be guilty of unfair competition. (Sec.
(Mighty Corp. v. E. & J. Gallo Winery, G.R. No.
168.2, IP Code)
154342, 2004)
Any conduct the end and probable effect of which is
Trademark Unfair
to deceive the public or pass off the goods or business
Infringement Competition
of a person as that for another constitutes actionable
Passing off of
unfair competition. (Alhambra Cigar vs. Mojica, Unauthorized
one’s goods as
G.R. No. L-8937, 1914) Essence use of a
those of
trademark
another
Essentially, what the law punishes is the act of giving
Fraudulent
one’s goods the general appearance of the goods of Unnecessary Essential
Intent
another, which would likely mislead the buyer into
Prior Prerequisite
believing that such goods belong to the latter. Unnecessary
Registration to the action
(Manuel C. Espiritu et. al. v. Petron Corp. et. al.,
G.R. No. 170891, 2009)
12. REGISTRATION OF MARKS UNDER
The “true test” of unfair competition is whether the THE MADRID PROTOCOL
acts of the defendant have the intent of deceiving or
The Madrid Protocol provides a cost-effective and
are calculated to deceive the ordinary buyer making
efficient way for trademark holders to ensure
his purchases under the ordinary conditions of the
protection for their marks in multiple countries
particular trade to which the controversy relates. One
through the filing of one application with a single
of the essential requisites in an action to restrain
office, in one language, with one set of fees, in one
unfair competition is proof of fraud; the intent to
currency. The Philippines acceded to the Madrid
deceive, actual or probable must be shown before the
Protocol with effect on July 25, 2012.
right to recover can exist. (Superior Commercial
Enterprises v. Kunnan Enterprises Ltd., et. al., A. Coverage
G.R. No. 169974, 2010)
An international application may be filed only by a
Trademark Infringement vs. Unfair natural person or a legal entity having an industrial or
Competition commercial establishment in, or being domiciled in,
The law on unfair competition is broader and more or a national of, the Philippines.
inclusive than the law on trademark infringement.
Trademark infringement is more limited, but it An international mark registered under the Madrid
recognizes a more exclusive right derived from the System can only be protected within the territories of
trademark adoption and registration by the person State parties to the Madrid Union.
whose goods or business is first associated with it.
The law on trademarks is a specialized subject The protection resulting from any international
distinct from the law on unfair competition, although registration effected under the Madrid Protocol
the two subjects are entwined with each other and are before the date of entry into force of the Philippines
dealt with together in the IP Code. cannot be extended to it. International registrations
with dates prior to July 25, 2012 are not allowed.
Hence, even if one fails to establish his exclusive
property right to a trademark, he may still obtain B. Rights Conferred
relief on the ground of his competitor's unfairness or
fraud. Conduct constitutes unfair competition if From the date of the international registration, the
protection of the mark in each of the designated
ATENEO CENTRAL
BAR OPERATIONS 2020/21
Contracting Parties is the same as if the mark had
been the subject of an application for registration
filed directly with the Office of that Contracting
Party.
An international registration is, therefore, equivalent
to a bundle of national registrations.
Limitations:
Although an international registration is a single
registration:
1. Protection may be refused by some of the
designated Contracting Parties, or the
protection may be limited or renounced with
respect to only some of the designated
Contracting Parties.
2. It may also be invalidated with respect to
one or more of the designated Contracting
Parties.
3. Any action for infringement of an
international registration must be brought
separately in each of the Contracting Parties
concerned.
C. Requirements for Registration
A mark may be the subject of an international
application only if it has already been registered, or if
its registration has been applied for in the IPOPHL to
be able to file an international application. This is
called the Basic Registration or Basic Application, as
the case may be.
An international application must be presented to the
International Bureau through the IPOPHL. An
international application which is presented direct to
the International Bureau by the applicant will not be
considered as such and will be returned to the sender.
The Philippines, as an office of origin, has designated
the English language for the filing of international
applications and any communications for transmittal
to the International Bureau through the IPOPHL. All
other documents required to be submitted directly to
the IPOPHL by the applicant must also be in English.
COMMERCIAL LAW
Minimum requirements to submit an
international application
1. Name, address, and contact details of the
applicant or the address and contact details of the
applicant’s representative, if any;
2. The Designated Contracting Parties;
3. Reproduction of the mark; and
4. Indication of the goods and services for which
registration of the mark is sought.
5. Payment of the following fees:
a. Basic fee;
b. Complementary fee in respect of each
designated Contracting Party for which
no individual fee is payable;
c. Supplementary fee in respect of each
class of goods and services beyond the
third
Note: No supplementary fee is payable
where all the designations are ones in
respect of which an individual fee has to be
paid.
D. Term of Protection
An international registration is effective for 10 years.
It may be renewed for further periods of 10 years on
payment of the prescribed fees.
The international registration may be renewed in
respect of all the designated Contracting Parties or in
respect of only some of them.
Note: It may not be renewed in respect of only some
of the goods and services recorded in the
International Register. If the holder wishes to remove
some of the goods and services from the international
registration, he must separately request cancellation
in respect of those goods and services.
The method of registration through the IPOPHL, as
laid down by the IP Code, is distinct and separate
from the method of registration through the WIPO, as
set in the Madrid Protocol. Comparing the two
methods of registration despite their being governed
by two separate systems of registration is thus
misplaced. (IPAP v. Sec. Ochoa, G.R. No.
204605, 2016)
 D. COPYRIGHT
1. BASIC PRINCIPLES
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)
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)
without copying that selection or arrangement from
another work), and that it display some minimal level
of creativity. (Feist Publications, Inc.
v. Rural Telephone Service Co., Inc., 499 U.S.
340, 1991)
Note: The requisite level of creativity is extremely
low; even a slight amount will suffice.
Authorship
An author is “he to whom anything owes its origin;
originator; maker; one who completes a work of
science or literature.” (Burrow-Giles Lithographic
Company v. Sarony, 111 U.S. 53, 1884)
Note: The author must be a natural person. (Sec.
171.1, IP Code)
2. COPYRIGHTABLE WORKS
A. Original Literary or Artistic Works

These are original intellectual creations in the literary

Idea-Expression Dichotomy
and artistic domain protected from the moment of
Unlike a patent, a copyright gives no exclusive right
their creation and shall include in particular:
to the art disclosed; protection is given only to the
a. Books, pamphlets, articles and other writings;
expression of the idea — not the idea itself. (Mazer
b. Periodicals and newspapers;
v. Stein, 347 U.S. 201, 1954)
c. Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not
Purely Statutory Right
reduced in writing or other material form;
Copyright is purely a statutory right. Being a
d. Letters;
statutory grant, the rights are only such as the statute
e. Dramatic or dramatico-musical compositions;
confers, and may be obtained and enjoyed only with
choreographic works or entertainment in dumb
respect to the subjects and by the persons, and on
shows;
terms and conditions specified in the statute.
f. Musical compositions, with or without words;
(Joaquin, Jr. v. Drilon, G.R. No. 108946, 1999)
g. Works of drawing, painting, architecture,
sculpture, engraving, lithography or other works
Originality
of art; models or designs for works of art;
Originality is the sine qua non of copyright. If the
basic design reflected in a work or art does not owe
Work of Architecture
its origin to the putative copyright holder, then that
Copyright in a work of architecture shall include
person must add something original to that design,
the right to control the erection of any building
and then only the original addition may be
which reproduces the whole or a substantial part
copyrighted. (Meshwerks, Inc. v. Toyota Motor
of the work either in its original form or in any
Sales U.S.A., 528 F.3d 1258, 2008)
form recognizably derived from the original
Originality requires only that the author make the
Note: The copyright in any such work shall not
selection or arrangement independently (i.e.,
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, IP Code)
h. Original ornamental designs or models for
articles of manufacture, whether or not
registrable as an industrial design, and other
works of applied art;
i. Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science;
j. Drawings or plastic works of a scientific or
technical character;
k. Photographic works including works produced
by a process analogous to photography; lantern
slides;
l. Audiovisual works and cinematographic works
and works produced by a process analogous to
cinematography or any process for making
audio-visual recordings;
m. Pictorial illustrations and advertisements;
n. Computer programs; and
Computer
An electronic or similar device having
information-processing capabilities
Computer Program
A set of instructions expressed in words, codes,
schemes or in any other form, which is capable
when incorporated in a medium that the
computer can read, or causing the computer to
perform or achieve a particular task or result.
o. Other literary, scholarly, scientific and artistic
works.
(Sec. 172.1, IP Code)
Note: Works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as of their content, quality and
purpose. (Sec. 172.2, IP Code)
B. Derivative Works
The following derivative works shall be protected by
copyright:
1. Dramatizations, translations, adaptations,
abridgments, arrangements, and other alterations
of literary or artistic works; and
2. Collections of literary, scholarly or artistic
works, and compilations of data and other
materials which are original by reason of the
selection or coordination or arrangement of their
contents. (Sec. 173.1, IP Code)
Derivative works shall be protected as new works,
provided however, that such new work:
a. Shall not affect the force of any subsisting
copyright upon the original works employed or
any part thereof, or
b. Be construed to imply any right to such use of
the original works, or to secure or extend
copyright in such original works.
Published Edition of Work
In addition to the right to publish granted by the
author, his heirs, or assigns, the publisher shall have a
copyright consisting merely of the right of
reproduction of the typographical arrangement of the
published edition of the work. (Sec. 174, IP Code)
3. NON-COPYRIGHTABLE WORKS
No protection shall extend to any:
1. Idea, procedure, system, method or
operation, concept, principle, discovery or
mere data [IPSMOC-PDD];
2. News of the day and other miscellaneous
facts having the character of mere items of
press information; or
3. Official text of a legislative, administrative
or legal nature, as well as any official
translation thereof. (Sec. 175, IP Code)
The expression of an idea is protected by copyright,
not the idea itself.
It is axiomatic that 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
of justice, before administrative agencies, in
protects the manner of expression of news reports,
deliberative assemblies, and in meetings of
"the particular form or collocation of words in which
public character.
the writer has communicated it." Such protection
extends to electronic news reports as well as written
Note: The author of speeches, lectures,
reports.
sermons, addresses, and dissertations
mentioned in the preceding paragraphs shall
The idea/expression dichotomy is a complex
have the exclusive right of making a
matter if one is trying to determine whether a certain
collection of his works.
material is a copy of another. This dichotomy would
be more relevant in determining, for instance,
Publication or republication by the government in a
whether a stage play was an infringement of an
public document of any copyrighted work shall not be
author’s book involving the same characters and
taken to cause any abridgment or annulment of the
setting. In this case, however, respondents admitted
copyright or to authorize any use or appropriation of
that the material under review — which is the subject
such work without the consent of the copyright
of the controversy — is an exact copy of the original.
owner. (Sec. 176.3, IP Code)
Respondents did not subject ABS-CBN’s footage to
any editing of their own. The news footage did not
undergo any transformation where there is a need to 4. RIGHTS OF COPYRIGHT OWNER
track elements of the original. (ABS-CBN Corp. v.
Copyright or Economic Rights
Gozon, G.R. No. 195956, 2015)
Copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the
Works of the Government
following acts:
A work of the Government is a work created by an
1. Reproduction of the work or substantial
officer or employee of the Philippine Government or
portion of the work;
any of its subdivisions and instrumentalities,
including government-owned or controlled
Reproduction
corporations as part of his regularly prescribed
Making of 1 or more copies, temporary or
official duties. (Sec. 171.11, IP Code)
permanent, in whole or in part, of a work or
a sound recording in any manner or form
No copyright shall subsist in any work of the
Government of the Philippines. However, the
2. Dramatization, translation, adaptation,
Government is not precluded from receiving and
abridgment, arrangement or other
holding copyrights transferred to it by assignment,
transformation of the work;
bequest or otherwise.
3. The first public distribution of the original
and each copy of the work by sale or other
General Rule: Prior approval of the government
forms of transfer of ownership;
agency or office wherein the work is created shall be
4. Rental of the original or a copy of an
necessary for exploitation of such work for profit.
audiovisual or cinematographic work, a
work embodied in a sound recording, a
Such agency or office may impose as a condition the
computer program, a compilation of data
payment of royalties.
and other materials or a musical work in
graphic form, irrespective of the ownership
Exception: No prior approval or conditions shall be
of the original or the copy which is the
required for the use of any purpose of:
subject of the rental;
1. Statutes, rules and regulations, or
2. Speeches, lectures, sermons, addresses, and
Rental
dissertations, pronounced, read or rendered
Transfer of the possession of the original or
in courts
a copy of a work or a sound recording
 for a limited period of time, for profit-
5. RULES ON OWNERSHIP OF
making purposes
COPYRIGHT
5. Public display of the original or a copy of Rules on Ownership
the work; Copyright ownership shall be governed by the following
6. Public performance of the work; and rules:

Definitions of Public Performance TYPE OF

a. For Non-audiovisual work – OWNERSHIP
WORK
reciting, playing, dancing, acting or
Original
otherwise performing the work, either
Literary and Copyright belongs to the
directly or by means of any device or
Artistic author of the work.
process
Works
b. For Audiovisual work – showing of
 Co-authors shall be the
its images in sequence and the making
original owners of the
of the sounds accompanying it audible
copyright.
c. For Sound recording – making the
 In the absence of
recorded sounds audible at a place or at
agreement, rights shall be
places where persons outside the normal
governed by the rules on
circle of a family and that family’s
co-ownership.
closest social acquaintances are or can
be present Joint
Note: If a work of joint
Authorship
authorship consists of parts that
7. Other communication to the public of the work,
can be used separately and the
e.g. online/Internet.
author of each part can be
identified, the author of each
Communication to the public
part shall be the original owner
Any communication to the public, including
of the copyright in the part
broadcasting, rebroadcasting, retransmitting by
that he
cable, broadcasting, and retransmitting by
has created.
satellite, and includes the making of a work
Copyright shall belong to:
available to the public by wire or wireless means
1. Employee: creation of
in such a way that members of the public may
the object of copyright is
access these works from a place and time
not a part of his regular
individually chosen by them
duties even if the
employee uses the time,
facilities and materials of
Employee’s
the employer.
Work
2. Employer: work is the
result of the performance
of his regularly-assigned
duties, UNLESS there is
an agreement, express or
implied, to the
contrary
Ownership of the work
Independent belongs to the person other
Contractor’s than the employer who
Work commissioned the work and
who pays for it.
The purpose and character requirement
Copyright is important
remains in viewthe
with of copyright’s goal to promote creativity and encourage creation
of works. Hence, commercial use of theunless
creator, copyrighted
there iswork can be weighed against fair use.
a written
stipulation to the
contrary. The “transformative test” is generally used
 Copyright belongs to the in reviewing the purpose and character of
producer, the author of the the usage of the copyrighted work. Courts
scenario, the composer of must look into whether the copy of the work
the music, the film adds “new expression, meaning or message”
director, and the author of to transform it into something else. (ABS-
the work so adapted. CBN Corp. v. Gozon, G.R. No. 195956,
 The producer shall 2015)
exercise the copyright to
an extent required for the 2. The nature of the copyrighted work;
Audiovisual
Work exhibition of the work in
any manner. If the nature of the work is more factual than
creative, then fair use will be weighed in
Exception: Right to collect favor of the user. (ABS-CBN Corp. v.
performing license fees for the Gozon, G.R. No. 195956, 2015)
performance of musical
compositions, with or without 3. The amount and substantiality of the
words, which are portion used in relation to the copyrighted
incorporated into the work work as a whole; and

Copyright belongs to the writer An exact reproduction of a copyrighted

subject to the provisions of work, compared to a small portion of it, can
Article 723 of the Civil Code result in the conclusion that its use is not
wherein it provides that the fair.
Letters court may authorize their
publication or dissemination if However, there may also be cases where,
the public
6. LIMITATIONS good or the interest
ON COPYRIGHT though the entirety of the copyrighted work
of justice is used without consent, its purpose
so Fair
A. requires.
Use determines that the usage is still fair. For
example, a parody using a substantial
The fair use of a copyrighted work for criticism, amount of copyrighted work may be
comment, news reporting, teaching including limited permissible as fair use as opposed to a copy
number of copies for classroom use, scholarship, of a work produced purely for economic
research, and similar purposes is not an infringement gain. (ABS-CBN Corp. v. Gozon, G.R.
of copyright. No. 195956, 2015)

In determining whether the use made of a work in 4.
any particular case is fair use, the factors to be
considered shall include: [PuCha-Nat-Su-E]
1. The purpose and character of the use,
including whether such use is of a
commercial nature or is for non-profit
educational purposes;
The effect of the use upon the potential
market for or value of the copyrighted work.
(Sec. 185.1, IP Code)
If a court finds that the use had or will have
a negative impact on the
 copyrighted work's market, then the use is
deemed unfair. (ABS-CBN Corp. v.
Gozon, G.R. No. 195956, 2015)
Note: 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. 185.2,
IP Code)
Doctrine of Fair Use
Fair use is a privilege to use the copyrighted material
in a reasonable manner without the consent of the
copyright owner or as copying the theme or ideas
rather than their expression. Fair use is an exception
to the copyright owner’s monopoly of the use of the
work to avoid stifling the very creativity which that
law is designed to foster. (ABS-CBN Corp. v.
Gozon, G.R. No. 195956, 2015)
No question of fair or unfair use arises, however, if
no copying is proved to begin with. This is in
consonance with the principle that there can be no
infringement if there was no copying. It is only where
some form of copying has been shown that it
becomes necessary to determine whether it has been
carried to an “unfair,” that is, illegal, extent.
(Habana v. Robles, G.R. No. 131522, 1999)
7. COPYRIGHT INFRINGEMENT
Any person infringes a right protected under the IP
Code when one:
a. Directly commits an infringement (direct
infringement);
b. 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 (vicarious
infringement); or
c. With knowledge of infringing activity,
induces, causes or materially contributes to
the infringing conduct of another (direct
infringement). (Sec. 216, IP Code)
Also includes the act of any person who at the time
when copyright subsists in a work has in his
possession an article which he known, or ought to
know, to be an infringing copy of the work for the
purpose of:
a. Selling, letting for hire, or by way of trade
offering or exposing for sale, or hire, the
article
b. Distributing the article for purpose of trade,
or for any other purpose to an extent that
will prejudice the rights of the copyright
owner in the work; or
c. Trade exhibit of the article in public. (Sec.
217.3, IP Code)
Copyright Infringement
Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the
copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a
synonymous term in this connection, consists 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. (Columbia Pictures, Inc. v. Court of
Appeals, G.R. No. 110318, 1996)
Gravamen of Copyright Infringement
The gravamen of copyright infringement is not
merely the unauthorized “manufacturing” of
intellectual works but rather the unauthorized
performance of any of the acts covered by Sec. 177
(economic rights). Hence, any person who performs
any of the acts thereunder 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, 2005)
When Committed
By any person who shall use original literary or
artistic works, or derivative works, without the
copyright owner’s consent in such a manner as to
violate the foregoing copy and economic rights. For a
claim of copyright infringement to prevail, the
evidence on record must demonstrate:
a. Ownership of a validly copyrighted material
by the complainant; and
b. Infringement of the copyright by the
respondent. (Olano v. Eng Co, G.R. No.
195835, 2016)
The Intellectual Property Code is malum prohibitum
and prescribes a strict liability for copyright
infringement. Good faith, lack of knowledge of the
copyright, or lack of intent to infringe is not a defense
against copyright infringement. (ABS-CBN Corp. v.
Gozon, G.R. No. 195956, 2015)
 A. Remedies
infringing copies of the work even in the event of
acquittal in a criminal case.
Any person infringing a right protected under the IP
Code shall be liable:
Statutory Damages
a. To an injunction restraining such infringement.
The copyright owner may elect, at any time before
final judgment is rendered, to recover instead of
The court may also order the defendant to desist
actual damages and profits, an award of statutory
from an infringement to prevent the entry into
damages for all infringements involved in an action
the channels of commerce of imported goods that
in a sum equivalent to the filing fee of the
involve an infringement, immediately after
infringement action but not less than P50,000.00. In
customs clearance of such goods.
awarding statutory damages, the court may consider
the following factors:
b. To pay to the copyright proprietor or his assigns
1. The nature and purpose of the infringing act;
or heirs such actual damages, including legal
2. The flagrancy of the infringement;
costs and other expenses, as he may have
3. Whether the defendant acted in bad faith;
incurred due to the infringement as well as the
4. The need for deterrence;
profits the infringer may have made due to such
5. Any loss that the plaintiff has suffered or is
infringement.
likely to suffer by reason of the
infringement; and
Note: In proving profits, the plaintiff shall be
6. Any benefit shown to have accrued to the
required to prove sales only and the defendant
defendant by reason of the infringement.
shall be required to prove every element of cost
(Sec. 216.1, IP Code)
which he claims or, in lieu of actual damages and
profits, such damages which, to the court, shall B. Criminal Penalties
appear to be just and shall not be regarded as
penalty. The copyright owner can file a criminal, civil or
administrative action for copyright infringement.
The amount of damages to be awarded shall be
doubled against any person who: Where Filed
1. Circumvents effective technological
measures; or
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

c. Deliver under oath, for impounding during the

pendency of the action, upon such terms and
conditions as the court may prescribe, sales
invoices and other documents evidencing sales,
all articles and their packaging alleged to
infringe a copyright and implements for making
them.
d. Deliver under oath for destruction without any
compensation all infringing copies or devices, as
well as all plates, molds, or other means for
making such infringing copies as the court may
order.
e. Such other terms and conditions, including the
payment of moral and exemplary damages,
which the court may deem proper, wise and
equitable and the destruction of
Filed in the court situated in the
Criminal Case place where the violation
occurred
Filed at the Bureau of Legal
Administrative Affairs at the Intellectual
Case Property Office of the
Philippines
Filed in the appropriate court
located at the place where the
defendant resides/is located, or
Civil Case
where the plaintiff resides/is
located, at
the option of the plaintiff
Penalties
Imprisonment of between 1 to 3
years and a fine of between
First Offense
50,000 to 150,000
pesos
Imprisonment of 3 years and 1
Second day to six years plus a fine of
Offense between 150,000 to 500,000
pesos
Imprisonment of 6 years and 1
Third and
day to 9 years plus a fine
Subsequent
ranging from 500,000 to
Offenses 1,500,000 pesos

In all cases, subsidiary imprisonment in cases of

insolvency. (Sec. 217.1, IP Code)

In Determining Number of Years of

Imprisonment and Amount of Fine
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:
a. The circumvention of effective technological
measures;
b. The 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
c. The 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, IP Code)

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