IPL Notes 2018 2019

INTELLECTUAL PROPERTY LAW
Ateneo de Davao University | College of Law

Class Transcription | Batch 2018-2019 | From the Discussions of Atty. Melissa Romana P. Suarez
PART III – The Law on Trademarks, Service San Miguel is a trademark while San Miguel Corporation is the
Marks, and Trade Names name of the company. Procter&Gamble, manufacturer of Tide.
Tide is a trademark while Procter&Gamble is a trade name.
Unilever is a trade name; products are Vaseline, etc.
JANUARY 3, 2019 | Transcribed by: Christine Paulma &
Luwalhati Villavicencio You have to know the difference between a trademark and a
trade name.
SECTION 121. Definitions. –
4. Collective mark - *we will take that up later*
As used in Part III, the following terms have the following meanings:
121.1. "Mark" means any visible sign capable of distinguishing the Q: What is the objective of the law in protecting trademarks?
goods (trademark) or services (service mark) of an enterprise and shall A: It is to give to their registered owners the full benefit
include a stamped or marked container of goods; (Sec. 38, R. A. No. accruing to them from the goodwill earned by them from the
166a)
use of said registered trademark.
121.2. "Collective mark" means any visible sign designated as such in
the application for registration and capable of distinguishing the origin In other words, the trademarks that are protected are only
or any other common characteristic, including the quality of goods or those which are registered.
services of different enterprises which use the sign under the control
of the registered owner of the collective mark; (Sec. 40, R. A. No. 166a) Q: What is the purpose of registering trademarks?
A: To protect the goodwill established
121.3. "Trade name" means the name or designation identifying or
distinguishing an enterprise; (Sec. 38, R. A. No. 166a)
For example, McDonalds, they have already established
121.4. "Bureau" means the Bureau of Trademarks;
goodwill in the business of fast food. If there is no trademark
protection, then anybody can use McDonalds as their logo and
121.5. "Director" means the Director of Trademarks; ride on the goodwill established by McDonalds. Maraming
gustong makisakay by trying to imitate the registered
121.6. "Regulations" means the Rules of Practice in Trademarks and trademark of a company with an established goodwill.
Service Marks formulated by the Director of Trademarks and approved
by the Director General; and
SECTION 122. How Marks are Acquired. –
121.7. "Examiner" means the trademark examiner. (Sec. 38, R. A. No.
The rights in a mark shall be acquired through registration made validly
166a)
in accordance with the provisions of this law. (Sec. 2-A, R. A. No. 166a)
Definitions SECTION 123. Registrability. –
123.1. A mark cannot be registered if it:

1. Trademark - Any visible sign capable of distinguishing the
goods of an enterprise (e.g.: stripes in Adidas, swoosh in Nike) (a) Consists of immoral, deceptive or scandalous matter, or matter
which may disparage or falsely suggest a connection with persons,
So visible sign, once you see that Nike swoosh. If there's a "®" living or dead, institutions, beliefs, or national symbols, or bring them
mark, not only is the swoosh registered but also the name. Nike into contempt or disrepute;
is also a trademark; it's not only the swoosh.
Section 123 talks about what cannot be registered.
2. Service mark - any visible sign capable of distinguishing
services of an enterprise If you have a business and you have a name for your business,
and you have a logo that you created yourself; that business
Any mark of a service industry (e.g. "DASIA" mark of security has become successful. Anong tendency niyan? Pag successful
agency; Philippine Airlines; Cathay Dragon) ang business mo, ayan na yung mga gusto maki-ride on. Gaya
gaya. So might as well register your trademark. But there are
Trademark and service mark are practically the same. It's just names, symbols, signs that cannot be registered.
that when you talk about trademarks, it refers to goods.
Trademark is a general term. If you want to be specific, you Section 123 is one of the most important provisions on
can use service mark. trademarks. You have to know Section 123.
3. Trade name - the name or designation identifying or Let's say Vicco wants to open a sari-sari store, pwede ba niyang
distinguishing an enterprise (e.g. San Miguel Corporation; tawaging P*****ina Sari-sari Store? You can! That's your
Procter&Gamble; Unilever) business. But can you register it? NO.
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So you have to know the difference between using something (e) Is identical with, or confusingly similar to, or constitutes a
and registering something. So immoral - pwede mo bang ilagay translation of a mark which is considered by the competent authority
diyan sa iyong logo a symbol that is obscene? Yes, but you of the Philippines to be well-known internationally and in the
cannot register that. 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
"Any matter which may disparage or falsely suggest a identical or similar goods or services: Provided, That in determining
whether a mark is well-known, account shall be taken of the knowledge
connection with persons, living or dead”-
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
Can you make your sari-sari store "Pangit si Noynoy Aquino (or result of the promotion of the mark;
Ferdinand Marcos)!" Can you? Bahala ka kung yan ang gusto
mo. But can you register your sign? NO.
We have an internationally well-known mark that is not
Ngayon pa lang, you have to separate using and registered here. Can you think of an internationally well-known
registering. mark that you think is not registered here in the Philippines?
Let’s say, Tesla. Tesla is a name of a person who is already
(b) Consists of the flag or coat of arms or other insignia of the
dead. So, Tesla is a trademark of a car. For example, hindi
Philippines or any of its political subdivisions, or of any foreign nation, registered here in the Philippines, is it internationally well-
or any simulation thereof; known? It is! Now here comes Mr. X who wants to register
“Tisla” for a trisakad. So pwede ba? Hindi! Kasi internationally
Can you wear a shirt with a flag of Switzerland (cross)? Yes, well-known. Pero what if Mr. X wants to have Tisla be
basta you do not violate any other laws under the IPC. But can registered for a tsinelas? Yes, because only for indentical or
you register that as your logo in your T-shirt printing business? similar goods.
NO. Internationally well-known mark registered here. Example:
Nike. Here comes Mr. X again, binaliktad nya lang ang swoosh,
The flag of Korea is the yin and yang - di rin yan pwedeng can he register? He cannot register for any kinds of goods and
iregister. You can use that but it's a different story to register. services. Does not matter kung tsinelas, pintura, or food.
(c) Consists of a name, portrait or signature identifying a particular It says here, under letter (e) that in determining that a mark is
living individual except by his written consent, or the name, signature, well-known, account is to be taken of the knowledge of the
or portrait of a deceased President of the Philippines, during the life of
his widow, if any, except by written consent of the widow;
relevant sector of the public rather than of the public at large.
Kelangan ba na the people there in (31:44) have to know of
Tesla for it to be internationally well-known? No, not
So Vicco, kunwari you want to put up a sari-sari store and your
necessarily. But the relevant sector of the public-the
trademark is your face, pwede mo bang iregister yan? Of
people who have cars. That is enough for it be considered
course. That's his face. You can register your own face but you
cannot register the face of another except by his written internationally well-known.
consent. Kailangan may written consent. Ganun din pag
deceased President, except by written consent of the widow. Who would determine whether a mark is
Pero pag namatay na si Imelda Marcos, pwede na siguro internationally well-known? The Intellectual Property
iregister yung mukha ni Ferdinand Marcos. "During the life of Office (IPO) “which is considered by the competent authority”
his widow" - if you want to be technical about it, if both dead, who is the competent authority here? The IPO.
president and the widow/widower, then pwede na siguro
because it says here during the lifetime. (f) Is identical with, or confusingly similar to, or constitutes a translation
of a mark considered well-known in accordance with the preceding
(d) Is identical with a registered mark belonging to a different paragraph, which is registered in the Philippines with respect to goods
proprietor or a mark with an earlier filing or priority date, in respect of: or services which are not similar to those with respect to which
(i) The same goods or services, or registration is applied for: Provided, That use of the mark in relation to
(ii) Closely related goods or services, or those goods or services would indicate a connection between those
(iii) If it nearly resembles such a mark as to be likely to goods or services, and the owner of the registered mark: Provided
deceive or cause confusion; further, That the interests of the owner of the registered mark are likely
to be damaged by such use;
If you read these provisions, they seem complicated but

actually very simple. Under paragraph (f), the McDonald’s- “provides, that use of the
mark in relation to those goods or services would indicate a
Paragraph 4 says that “you cannot register in mark that is connection between those goods or services and the owner the
identical or confusingly similar to a mark registered in the registered mark”- if you use the McDonald’s trademark, and
Philippines for identical or similar goods”. you are selling nail polish, people will say “uy McDonald’s is
now selling nail polish!” automatic yan. Yon pala ang nail polish
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may mga poisonous na ingredients, so nasunog yong kuko,

sino ang sisira ng mga tao? Ang Mcdonald’s ang masisira. Uou cannot register “Blue” for your product? A color alone?
Meron ka dapat drawing.
Those three (paragraphs are the most important under Section
123. (m) Is contrary to public order or morality.
(g) Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services; 123.2. As regards signs or devices mentioned in paragraphs (j), (k),
and (l), nothing shall prevent the registration of any such sign or device
which has become distinctive in relation to the goods for which
Let us say a trademark and you are a manufacturer of a registration is requested as a result of the use that have been made of
pamaypay. Tapos ang name mo ay “Pamaypay New Guinea”, it in commerce in the Philippines. The Office may accept as prima facie
can you register that? No! because this would likely mislead the evidence that the mark has become distinctive, as used in connection
with the applicant’s goods or services in commerce, proof of
public. People would think na the paypay is made in Papua New
substantially exclusive and continuous use thereof by the applicant in
Guinea commerce in the Philippines for five (5) years before the date on which
the claim of distinctiveness is made.
Characteristics- konyare gumagawa ka ng mga cakes, can you
register na name Sweet cakes, yong “Sweet” ipaparegister mo? 123.3. The nature of the goods to which the mark is applied will not
constitute an obstacle to registration. (Sec. 4, R. A. No. 166a)
Hindi pwede! Can you call your cakes sweet cakes? Bahala ka,
but you cannot register.
Section 123. 2 (The Doctrine of Secondary Meaning)
(h) Consists exclusively of signs that are generic for the goods or
Please do not confuse your doctrines. Section 123.2 talks
services that they seek to identify; about the doctrine of Secondary Meaning.
What is this doctrine of Equivalents?

Pwede ba na picture ng computer ang logo mo? For example,
perfume, you want to name it from a name of a flower? No, Doctrine of Secondary Meaning- where a word or phrase
you cannot register that- “generic for the goods or services that originally incapable of exclusive appropriation, because it either
they seek to indetify”. falls under (j), (k), or (l) Section 123, with reference on article
in the market because of geographical or otherwise descriptive,
but nevertheless has been used for so long exclusively by one
What about apple? Bakit pwede ang apple? Because it is not
producer for one article.
generic for a computer. Hindi sya related.
Under this doctrine, a word or phrase that is originally not

(i) Consists exclusively of signs or of indications that have become
registrable may now be registrable. Why? Its user has used it
customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice; for so long and so exclusively that people already identify him
to that product. He can now register it.
So meron tayong mga terms na ginagamit, especially the
What is the test of distinctiveness? “The prima facie
millennials, to describe something. Like noong unang panahon.
evidence is the connection with the applicant’s goods or
Yang softdrink, ang tawag ng mga matatanda “coks” mag
services in commerce, proof of substantially exclusive and
produce ka ng cheap na softdrink, can you register it under the
continuous use thereof by the applicant in commerce in the
name “coks”?
Philippines for 5 years before the date on which the claim of
distinctiveness is made.” That is already proof of
(j) Consists exclusively of signs or of indications that may serve in trade
distinctiveness.
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; In other words, it is a doctrine where a long time exclusive and
continuous of a mark or name which is not registrable, such
that the name or mark has lost its primary meaning it has
This is actually similar to the previous ones. But look at the become associated in the public mind to the particular goods
“time and production of the goods”. “Year 2012”, can you which entitles the user such name registered.
register that if your wine was produced in 2012? 2012 is the
name of your wine. No!
(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
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JANUARY 8, 2019 | Transcribed by: Cavin Jhon Cabarlo &

Kayla Paclibar Issue 2: Whether or not the trademark “Ang Tibay” has
acquired a secondary meaning. – Yes.
ANA ANG VS. TEODORO GR 48226 (1942) Rule: The Doctrine of “Secondary Meaning” is to the effect that
a word or phrase originally incapable of exclusive appropriation
This case is about the trademark “Ang Tibay”. with reference to an article of the market, because
Teodoro Toribio has continually used “Ang Tibay” both as a geographically or otherwise descriptive, might nevertheless
trademark and as a tradename in the sale and manufacture of have been used so long and so exclusively by one producer
slippers, shoes, and indoor baseballs since 1910. On September with reference to his article that, in that trade and to that
29, 1915, he formally registered it as a trademark. On January branch of the purchasing public, the word or phrase has come
3, 1933, he formally registered it as a tradename. to mean that the article was his product.
On the other hand, Ana L. Ang registered the same The application of the doctrine in this case is unnecessary
trademark “Ang Tibay” for her product pants and shirts on because the phrase “Ang Tibay” is neither geographical nor
1932. On 1937, she established a factory for the manufacture descriptive. The phrase was originally capable of exclusive
of said articles. Toribio opposed Ang’s registration because he appropriation as a trademark.
already registered the trademark since 1915.
But were it not so, the application of the doctrine of secondary
When the case reached the Court of Appeals, it ruled meaning could nevertheless be fully sustained because, in any
in favor of Toribio justifying that the uninterrupted and event, by Toribio’s long and exclusive use of said phrase with
exclusive use since 1910, Toribio’s trademark has acquired a reference to his products and his business, it has acquired a
secondary meaning. proprietary connotation.
Issue 1: Whether or not the trademark “Ang Tibay” is Therefore, Ang cannot register her trademark “Ang Tibay”.
descriptive. – No.
Question: Can Ang use it?
Rule: The Supreme Court discussed the etymology of the term
“Ang Tibay”. The word "ang" is a definite article meaning "the" Answer: No. The phrase “Ang Tibay” is not descriptive.
in English. Tibay is a root word from which are derived the verb Assuming it is, Toribio acquired a secondary meaning. Thus, his
magpatibay (to strenghten; the nouns pagkamatibay (strength, earlier registration grants him the right to exclusively use the
durability), katibayan (proof, support, strength), katibay- trademark “Ang Tibay”.
tibayan (superior strength); and the adjectives matibay
(strong, durable, lasting), napakatibay (very strong), kasintibay
or magkasintibay (as strong as, or of equal strength). The ARCE SONS VS. SELECTA BISCUITS GR L-14761 (1961)
phrase "Ang Tibay" is an exclamation denoting administration
of strength or durability.
On August 31, 1955, Selecta Biscuit Company, Inc.
filed with the Philippine Patent Office a petition for the
The phrase "ang tibay" is never used adjectively to define or
registration of the word "SELECTA" as trademark to be used in
describe an object. One does not say, "ang tibay sapatos" or
its bakery products. Its petition was referred to an examiner
"sapatos ang tibay" is never used adjectively to define or
for study who found that the trademark sought to be registered
describe an object. One does not say, "ang tibay sapatos" or
resembles the word "SELECTA" used by the Acre Sons and
"sapatos ang tibay" to mean "durable shoes," but "matibay na
Company in its milk and ice cream products so that its use by
sapatos" or "sapatos na matibay."
Selecta Biscuit Company will cause confusion as to the origin of
their respective goods.
"Ang Tibay" is not a descriptive term within the meaning of the
Trademark Law but rather a fanciful or coined phrase which
Arce Sons filed an opposition to the petition for
may properly and legally be appropriated as a trade-mark or
registration of Selecta Biscuit Company, Inc. with the following
trade-name.
grounds among others:
The function of a trademark is to point distinctively, either by
(1) the mark "SELECTA" had been continuously used
its own meaning or by association, to the origin or ownership
by Arce Sons in the manufacture and sale of its
of the wares to which it is applied. "Ang Tibay," as used by
products, including cakes, bakery products, milk
Toribio to designate his wares, had exactly performed that
and ice cream from the time of its organization
function for twenty-two years before the Ana L. Ang adopted it
and even prior thereto by its predecessor-in-
as a trade-mark in her own business. Ang Tibay shoes and
interest, Ramon Arce;
slippers are, by association, known throughout the Philippines
as products of the Ang Tibay factory owned and operated by
the Toribio Teodoro.
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(2) the mark "SELECTA" has already become as a fanciful or coined phrase, or a trade-mark because
identified with name of the Arce Sons and its “SELECTA” means “selected” in English or in Tagalog “Mag-
business; pili”.
So even if 'AngTibay', therefore, were not capable of exclusive

It appears that Ramon Arce, predecessor-in-interest of Arce appropriation as a trade-mark, the application of the doctrine
Sons & Co., started his milk business as early as 1933. He sold of secondary meaning could nevertheless be fully sustained
his milk products in bottles covered with caps on which the because, in any event, by Selecta’s long and exclusive
words 'SELECTA FRESH MILK' were inscribed. Expanding his appropriation with reference to an article on the market,
business, he established a store at Lepanto Street, City of because geographically or otherwise descriptive, might
Manila, where he sold, in addition to his products, ice cream, nevertheless have been used so long and exclusively by one
sandwiches and other food products, placing right in front of producer with reference to his article that, in that trade and to
his establishment a signboard with the name 'SELECTA' that branch of the purchasing public, the word or phrase has
inscribed thereon. Special containers made of tin cans with the come to mean that article was his product.
word 'SELECTA' written on their covers were used for his
Because the predecessors-in-interests of Arce Sons and
products.
company used the trademark Selecta since 1933. And Selecta
Issue: Whether or not Selecta Biscuit Company may register only filed its petition for registration of such trademark in 1955.
the trademark “SELECTA”. – No.
To allow Selecta here to use the word "Selecta" in spite of the
Rule: The word “SELECTA” may be an ordinary or common fact that this word has already been adopted and exploited by
word in the sense that may be used or employed by any one in Ramon Arce and by his family thru the organization of Arce
promoting his business or enterprise, but once adopted or Sons and Company, for the maintenance of its goodwill, for
coined in connection with one's business as an emblem, sign or which said Arce Sons and Company and its predecessor have
device to characterize its products, or as a badge of spent time, effort and fortune, is to permit business pirates and
authenticity, it may acquire a secondary meaning as to be buccaneers to appropriate for themselves and to their profit
exclusively associated with its products and business. In this and advantage the trade names and trademarks of well-
sense, its use by another may lead to confusion in trade and established merchants with all their attendant good will and
cause damage to its business. commercial benefit.
The term “SELECTA” may be placed at par with the words "Ang Certainly, this cannot be allowed, and it becomes the duty of
Tibay" which this Court has considered not merely as a the court to protect the legitimate owners of said trade-names
descriptive term within the meaning of the Trademark Law but and trade-marks because the same constitutes as a one kind
as a fanciful or coined phrase, or a trade-mark. In that case of of property right entitled to the necessary legal protection.
Ang vs. Teodoro, this Court found that Teodoro has constantly
used the term "Ang Tibay", both as a trademark and a Comment: Many are not aware of Ang Tibay because it is old
tradename, in the manufacture and sale of slippers, shoes and but you are aware of the Selecta. Selecta now is under a
indoor baseballs for twenty-two years before Ana L. Ang different company. It was already purchased from Arce. Arce
registered it as a tradename for pants and shirts so that it has was the one who originally manufactured Selecta Ice Cream.
performed during that period the function of a trademark to But it was purchased now by San Miguel or something. And
point distinctively, or by its own meaning or by association, to now, Arce has it’s ice cream—Arce Dairy. It’s no longer under
the origin or ownership of the wares to which it applies. the Arce. But, yes, Selecta had acquired a secondary meaning.
It has already associated with ice cream products
The rationale in the case of Ang vs. Teodoro applies on all fours manufactured by Arce and therefore, can no longer be
to the case at bar. registered as a trademark for a biscuit.
Summary: SHANG PROPERTIES v. ST. FRANCIS GR 190706 (2014)

The trademark “SELECTA” has already acquired a secondary
meaning in which the products of Arce are now associated with Comment: We are in the Doctrine of Secondary Meaning. In
the mark “SELECTA”. Thus, Selecta Biscuit Company can no that case of St. Francis, why is it being called for under this
longer register the same. provision?
The Supreme Court cited in this case “Ang vs. Teodoro” which We have two entities here. We have Shang Properties and we
we discussed earlier. The Supreme Court also discussed the have St. Francis. Now, they’re both fighting over the term “St.
Doctrine of Secondary Meaning. Francis”, to simplify.
The term 'SELECTA' may be placed at par with the words "Ang So we have St. Francis Development Corporation which
Tibay" which this Court has considered not merely as a alleges that it has used the mark “St. Francis” to identify it’s
descriptive term within the meaning of the Trade-mark Law but
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projects at Ortigas Center, a shopping mall called “St. Francis Since we are already in Trademarks, you have to read the Nice
Square”. Classification. This is because we keep on talking about similar
goods and that. What do we look at to determine the similarity
Here comes Shang Properties, which also has it’s own St. of the goods? We have this guide—the Nice Classification.
Francis Tower. Sabi ng St. Francis Properties [Development
Corp.], you cannot use “St. Francis Towers” because we have JANUARY 17, 2019 | Transcribed by: Monjid Abpi & Val
already acquired a secondary meaning—identified na yang St. Joseph Acevedo
Francis by St. Francis Square. We have been using this term St.
Francis for the longest time, exclusively. Therefore, it has Q: What does section 123 talks about?
already been identified with us.
A: What cannot be registered. Is enumerated by Section 123
a,b,c,d,e. etc.
According to Shang Properties, St. Francis cannot be registered
as a mark of St. Francis Development because it is
geographical. The St. Francis Square is located in St. Francis Q: What are the three most important provision under
Street. Therefore, anything on that particular street can be 123?
named after the Street. Just like here in Legaspi Street, we A: Paragraphs D, E, and F.
have Legaspi Suites. Walang problema yan.
Q: What D is about in a nutshell?
Here, St. Francis Development is saying that there’s secondary A: is identical with a registered mark belonging to a different
meaning. proprietor or a mark with an earlier filing or priority date, in
respect of:
ISSUE: Is St. Francis correct? Or Whether or not St. Francis (i) The same goods or services, or
has acquired secondary meaning pursuant to Sec. 1 and 3? Has (ii) Closely related goods or services, or
St. Francis acquired secondary meaning over the term “St. (iii) If it nearly resembles such a mark as to be likely
Francis”? to deceive or cause confusion
Q: What about E?
HELD: A: Is identical with, or confusingly similar to, or constitutes a
The Supreme Court said no because citing Sec. 123.2, specific translation of a mark which is considered by the competent
requirements have to be met in order to conclude that a authority of the Philippines to be well-known internationally and
geographically descriptive mark has acquired secondary in the Philippines, whether or not it is registered here, as being
meaning. already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services:
First, the secondary meaning must have arisen as a result of Provided, That in determining whether a mark is well-known,
substantial commercial use of a mark in the Philippines; account shall be taken of the knowledge of the relevant sector
of the public, rather than of the public at large, including
So, when you are talking about “mark”, it identifies goods or knowledge in the Philippines which has been obtained as a
services. Yung building—is that “goods” that is a commercially result of the promotion of the mark; Well-known by the
used in the Philippines? No. It’s just a name of the building. General public!
Second, such use must result in the distinctiveness of the mark Q: What about F?
insofar as the goods or the products are concerned; and A: Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
Third, proof of substantially exclusive and continuous the preceding paragraph, which is registered in the Philippines
commercial use in the Philippines for five (5) years before the with respect to goods or services which are not similar to those
date on which the claim of distinctiveness is made. with respect to which registration is applied for: Provided, That
use of the mark in relation to those goods or services would
Hence, definitely, there’s so many St. Francis’ here in the indicate a connection between those goods or services, and the
Philippines. Our Parish is St. Francis of Assisi Parish. Definitely, owner of the registered mark: Provided further, That the
this is not the proper use of the docrine of Secondary Meaning interests of the owner of the registered mark are likely to be
and hence, because the building of Shang is in St. Francis damaged by such use;
Street, then pwede ang St. Francis Tower. Pwede ang St.
Francis Square, Towers, Buildings, Apartment, Condominium. So, you just have to know those 3 principles.
Pwede silang lahat St. Francis diyan.
Now we are going to procedure.
The nature of the goods to which the mark is applied does not
constitute an obstacle to the registration. Section 124. Requirements of Application. - 124.1. The application for
the registration of the mark shall be in Filipino or in English and shall
contain the following:
(a) A request for registration;
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(h) Where the mark is a three-dimensional mark, a statement to that

(b) The name and address of the applicant; effect;
(c) The name of a State of which the applicant is a national or where

he has domicile; and the name of a State in which the applicant has a
Meron ding mga trademark na 3D, so state it.
real and effective industrial or commercial establishment, if any;
(i) One or more reproductions of the mark, as prescribed in the
Regulations;
It says that it should be in writing, it cannot be oral. You cannot
go there to the Bureau of Trademarks and say I want to apply.
It could be in Filipino and English. What must it contain? You will not apply and say that my mark is yellow and three
1. The registration which must be in Writing dimensional. Pero pwede ko ipakita kung ano yun. E.g scale
2. Name and address of the applicant mode.
3. Name of the state in which the applicant is a national
(so it is not limited to Filipinos. It can be a foreign (j) A transliteration or translation of the mark or of some parts of the
corporation/individual). So this is related to what mark, as prescribed in the Regulations;
section of the IPC? Section 3!
Section 3. What is a transliteration?
(d) Where the applicant is a juridical entity, the law under which it is (k) The names of the goods or services for which the registration is
organized and existing; sought, grouped according to the classes of the Nice Classification,
together with the number of the class of the said Classification to which
(e) The appointment of an agent or representative, if the applicant is each group of goods or services belongs; and
not domiciled in the Philippines;
(l) A signature by, or other self-identification of, the applicant or his
(f) Where the applicant claims the priority of an earlier application, an representative.
indication of:
i) The name of the State with whose national office the If you are an applicant of a trademark, you have to identify the
earlier application was filed or if filed with an office other than a goods to which you want to attach your mark. Hindi ito
national office, the name of that office, everything under the sun. You go to the Nice classification.
ii) The date on which the earlier application was filed, and
124.2. The applicant or the registrant shall file a declaration of actual
iii) Where available, the application number of the earlier
use of the mark with evidence to that effect, as prescribed by the
application;
Regulations within three (3) years from the filing date of the
application. Otherwise, the application shall be refused or the mark
So a corporation can apply whether it is a domestic or a foreign shall be removed from the Register by the Director.
corporation. And if there’s an agent or representative, if the
applicant is not domiciled in the Philippines. So can you use something that is not registered? YES. Unless,
that you are using that is owned or belongs to another, pwede
When we took up we talked about the earlier priority. That ka mafilean ng infringement.
is also applicable here if you want to apply a trademark. But
you applied in a foreign country, so you can claim priority IPC is saying na if you register YOU HAVE TO USE IT. You
because you already applied for application in a foreign country cannot register and you don’t use it. That’s why it says here
with an earlier priority date. Put the name of the state where that you have to file a DAU within 3 days from the filing date.
you applied/filed, the name of the office, the date of the Otherwise it will be refused.
application and when available the application number.
So if you are to claim an earlier priority date, the same with Now, the important thing in the trademark is the “Actual use”
patents, you don’t have to have a registered patent or of the trademark (RA 8293). Under RA 166, what is
trademark, all you have to do is show them that you already required before registered is “prior use”, you cannot register if
applied. you did not use it before. But now under the new law, you can.
(g) Where the applicant claims color as a distinctive feature of the 124.3. One (1) application may relate to several goods and/or
mark, a statement to that effect as well as the name or names of the services, whether they belong to one (1) class or to several classes of
color or colors claimed and an indication, in respect of each color, of the Nice Classification.
the principal parts of the mark which are in that color;
124.4. If during the examination of the application, the Office finds
Yang Macdonalds yung “M”? pwede ba yang maging green, factual basis to reasonably doubt the veracity of any indication or
element in the application, it may require the applicant to submit
red, etc.? You state there that it is YELLOW.
sufficient evidence to remove the doubt. (Sec. 5, R.A. No. 166a)
7
So you can use this particular part for a car, or tsinelas, or applications, hereafter referred to as the "divisional applications," by
pintura. Pwede as long as ilagay mo. You put all the goods and distributing among the latter the goods or services referred to in the
services that you want to attach to and you put the number initial application. The divisional applications shall preserve the filing
date of the initial application or the benefit of the right of priority. (n)
under the Nice classification.
Section 125. Representation; Address for Service. - If the applicant is So if you have several-several goods, yang marami na
not domiciled or has no real and effective commercial establishment in masyado. You can divide it. And you can retain your original
the Philippines, he shall designate by a written document filed in the filing date.
Office, the name and address of a Philippine resident who may be
served notices or process in proceedings affecting the mark. Such Section 130. Signature and Other Means of Self-Identification. -
notices or services may be served upon the person so designated by 130.1. Where a signature is required, the Office shall accept:
leaving a copy thereof at the address specified in the last designation
filed. If the person so designated cannot be found at the address given (a) A hand-written signature; or
in the last designation, such notice or process may be served upon the
Director. (Sec. 3, R.A. No. 166a) (b) The use of other forms of signature, such as a printed or stamped
signature, or the use of a seal instead of a hand-written signature:
If you are a representative you have to comply with that. Provided, That where a seal is used, it should be accompanied by an
indication in letters of the name of the signatory.
Section 126. Disclaimers. - The Office may allow or require the

applicant to disclaim an unregistrable component of an otherwise 130.2. The Office shall accept communications to it by telecopier, or by
registrable mark but such disclaimer shall not prejudice or affect the electronic means subject to the conditions or requirements that will be
applicant's or owner's rights then existing or thereafter arising in the prescribed by the Regulations. When communications are made by
disclaimed matter, nor such shall disclaimer prejudice or affect the telefacsimile, the reproduction of the signature, or the reproduction of
applicant's or owner's right on another application of later date if the the seal together with, where required, the indication in letters of the
disclaimed matter became distinctive of the applicant's or owner's name of the natural person whose seal is used, appears. The original
goods, business or services. (Sec. 13, R.A. No. 166a) communications must be received by the Office within thirty (30) days
from date of receipt of the telefacsimile.
So when you want to register, and you make claims. If the

others are not applicable, you must claim that but the others In other words, unlike filing in all the courts, although the SC
are not affected. has introduced electronic filing, but here in the IPC, pwede lang
talaga siya, you can get your filing date if you fax it, if you send
by e-mail, all those requirements necessary to get the filing
Section 127. Filing Date. - 127.1. Requirements. - The filing date of
date. As long as to follow ang original. The purpose is to get
an application shall be the date on which the Office received the
following indications and elements in English or Filipino: the early filing date.
(a) An express or implicit indication that the registration of a mark is
sought; 130.3. No attestation, notarization, authentication, legalization or other
(b) The identity of the applicant; certification of any signature or other means of self-identification
(c) Indications sufficient to contact the applicant or his representative, referred to in the preceding paragraphs, will be required, except, where
if any; the signature concerns the surrender of a registration. (n)
(d) A reproduction of the mark whose registration is sought; and
(e) The list of the goods or services for which the registration is sought.
127.2. No filing date shall be accorded until the required fee is paid. Section 131. Priority Right. - 131.1. An application for registration of
(n) a mark filed in the Philippines by a person referred to in Section 3, and
who previously duly filed an application for registration of the same
mark in one of those countries, shall be considered as filed as of the
Is your filing date the day you gonna say I want to register? day the application was first filed in the foreign country.
No. it is the submission of those elements. Which is similar to
patents. Of course, the fee. Everything that you file to the
Iba ang requirements sa patent sa trademark. Do not confuse.
government, you need to pay a fee.
So even an application on a foreign country, which is earlier,
that will be your date of filing. However, Section 131.2…
Section 128. Single Registration for Goods and/or Services. - Where
goods and/or services belonging to several classes of the Nice
Classification have been included in one (1) application, such an 131.2. No registration of a mark in the Philippines by a person
application shall result in one registration. (n) described in this section shall be granted until such mark has been
registered in the country of origin of the applicant.
So you already know that you can include other/several goods

and services in one application. There’s no duplicitous That’s what makes this one different from patent. In patent,
application when it comes to trademark. you just have to submit within 6 months your foreign
application etc. here you have an earlier priority date, you will
not be granted a trademark. You only get the earlier
Section 129. Division of Application. - Any application referring to
several goods or services, hereafter referred to as the "initial
priority date, you only be an applicant.
application," may be divided by the applicant into two (2) or more
8
131.3. Nothing in this section shall entitle the owner of a registration re-examined. The Regulations shall determine the procedure for the re-
granted under this section to sue for acts committed prior to the date examination or revival of an application as well as the appeal to the
on which his mark was registered in this country: Provided, That, Director of Trademarks from any final action by the Examiner.
notwithstanding the foregoing, the owner of a well-known mark as
defined in Section 123.1(e) of this Act, that is not registered in the The applicant is given the opportunity to rectify whatever
Philippines, may, against an identical or confusingly similar mark, mistake or portion of the application; the trademark perhaps is
oppose its registration, or petition the cancellation of its registration or not registrable. He is given the opportunity to fix it, to amend
sue for unfair competition, without prejudice to availing himself of other
his application or his drawing. That is still before the examiner.
remedies provided for under the law.
The examiner’s decision, if he rejects the application, where to
appeal? Director of Trademarks.
Take note, no one can sue for infringement of trademark unless
registered na dito. So in other words, even though meron 133.4. An abandoned application may be revived as a pending
registration abroad, to be able to sue for infringement if not application within three (3) months from the date of abandonment,
registered in Ph. However, it says here if your mark is upon good cause shown and the payment of the required fee.
internationally well-knowned, it can oppose the
registration. Or petition for cancellation or sue for unfair 133.5. The final decision of refusal of the Director of Trademarks shall
competition but not for infringement. be appealable to the Director General in accordance with the procedure
fixed by the Regulations. (Sec. 7, R.A. No. 166a)
JANUARY 22, 2019 | Transcribed by: Kristal Alaban &
Jilianne Paula Ampog The flow is the Examiner ▶︎ Director of Trademark ▶︎
DG ▶︎ CA
Section 132. Application Number and Filing Date. -
132.1. The Office shall examine whether the application satisfies the Section 134. Opposition. - Any person who believes that he would be
requirements for the grant of a filing date as provided in Section 127 damaged by the registration of a mark may, upon payment of the
and Regulations relating thereto. If the application does not satisfy the required fee and within thirty (30) days after the publication referred
filing requirements, the Office shall NOTIFY the applicant who shall to in Subsection 133.2, file with the Office an opposition to the
within a period fixed by the Regulations complete or correct the application. Such opposition shall be in writing and verified by the
application as required, otherwise, the application shall be considered oppositor or by any person on his behalf who knows the facts, and shall
withdrawn. specify the grounds on which it is based and include a statement of the
facts relied upon. Copies of certificates of registration of marks
registered in other countries or other supporting documents mentioned
So if there’s something lacking in the application requirements in the opposition shall be filed therewith, together with the translation
at the filing date, the office will inform the applicant. in English, if not in the English language.
132.2 Once an application meets the filing requirements of Section For good cause shown and upon payment of the required surcharge,
127, it shall be numbered in the sequential order, and the applicant the time for filing an opposition may be extended by the Director of
shall be informed of the application number and the filing date of the Legal Affairs, who shall notify the applicant of such extension. The
application will be deemed to have been abandoned. (n) Regulations shall fix the maximum period of time within which to file
the opposition. (Sec. 8, R.A. No. 165a)
Section 133. Examination and Publication. - 133.1. Once the

application meets the filing requirements of Section 127, the Office
Q: What is the period for filling an opposition than application?
shall examine whether the application meets the requirements of A: Period within 30 days after the publication of the application.
Section 124 and the mark as defined in Section 121 is registrable under
Section 123. Q: DO you remember if there is a time limit when it comes to
patent? What provision governs?
That is the time when the Bureau of Trademarks examiner will *Maam said to look for it in the Code*
determine whether or not the application, meaning the mark, *Several tries by classmates… Mentioned Sections 70, 48, 69,
meets the requirements of registrability. 65, 61, 67.1, 56.2, 10, 44.1, but still wrong*
*Maam said that it will come out in the exam*
133.2. Where the Office finds that the conditions referred to in
Subsection 133.1 are fulfilled, it shall upon payment of the prescribed Q: Who can file an opposition?
fee, forthwith cause the application, as filed, to be PUBLISHED in the A: Any person who believes that he would be damaged by the
prescribed manner. registration of a mark. Moreover, You cannot file an oral
application. It must be in writing and verified. Verification is
Once the application is considered filed, there will be under Rule 7 Section 4. Those are the requirements.
publication, just like patents - publication on the application.
Q: WHERE?
133.3. If after the examination, the applicant is not entitled to A: Opposition cases are filed before Bureau of Legal Affairs.
registration for any reason, the Office shall advise the applicant thereof
and the reasons therefor. The applicant shall have a period of four (4) Section 135. Notice and Hearing. - Upon the filing of an opposition,
months in which to reply or amend his application, which shall then be the Office shall serve notice of the filing on the applicant, and of the
9
date of the hearing thereof upon the applicant and the oppositor and (d) Is identical with a registered mark belonging to a
all other persons having any right, title or interest in the mark covered different proprietor or a mark with an earlier filing or
by the application, as appear of record in the Office. (Sec. 9, R.A. No. priority date, in respect of:
165)
(i) The same goods or services, or
“Office” means the Bureau of Legal Affairs. The opposition is (ii) Closely related goods or services, or
always against applicants. There will be a hearing & the 2 (iii) If it nearly resembles such a mark as to be likely
parties will be required to appear - the applicant for trademark to deceive or cause confusion;
registration and the one opposing it AND “all other persons xxx
having any right, title or interest in the mark covered by the
application”. They will all be notified by the Bureau of Legal
Affairs of the date of the hearing. SECTION 137. Registration of Mark and Issuance of a
Certificate to the Owner or his Assignee. –
Q. What if there is no opposition filed? 137.1. The Office shall maintain a Register in which shall be registered
A. If there is no opposition filed even after the 30 days-period, marks, numbered in the order of their registration, and all transactions
or if there was an opposition but was denied by the director of in respect of each mark, required to be recorded by virtue of this law.
legal affairs, the office upon payment of the required fees shall
137.2. The registration of a mark shall include a reproduction of the
issue the certification of registration. mark and shall mention: its number; the name and address of the
registered owner and, if the registered owner's address is outside the
country, his address for service within the country; the dates of
When it comes to trademark, it is not that complicated. application and registration; if priority is claimed, an indication of this
fact, and the number, date and country of the application, basis of the
If there is no opposition and all the formal requirements are priority claims; the list of goods or services in respect of which
met and upon examination, then not confusingly similar or registration has been granted, with the indication of the corresponding
identical to Section 123 enumeration, then the trademark class or classes; and such other data as the Regulations may prescribe
from time to time.
registration will be granted. Upon issuance of a Certificate of
Registration, notice thereof may be referenced to the
application of publication should be published in the IPO This says what the registration shall include
Gazette.
137.3. A certificate of registration of a mark may be issued to the
Q. So there is a second publication, what is published this time? assignee of the applicant: Provided, That the assignment is recorded in
A. The registration, or the issuance of the Certificate of the Office. In case of a change of ownership, the Office shall at the
written request signed by the owner, or his representative, or by the
Registration.
new owner, or his representative and upon a proper showing and the
payment of the prescribed fee, issue to such assignee a new certificate
If you read your cases that still applies RA 166 which is the old of registration of the said mark in the name of such assignee, and for
Trademark Law. You would know that under that law, there is the unexpired part of the original period.
a primary register and supplemental register. That has
been abolished under RA 8293. It is very simple under the You know very well that an owner of an intellectual property
current law, the office shall maintain a register, wala ng primary right has a right to dispose. So if during the application period,
or supplemental register. In this register, in which shall the the applicant assigns his application to another person which is
registered mark be numbered in order of their registration called the assignee, then the certificate of registration may be
and and all transactions in respect of each mark, required to be issued to the assignee. The only requirement is that the
recorded by virtue of this law. assignment is recorded. Dili pwede na secret assignment.
Q. What will the registration of the mark include? The first paragraph talks about a changed assignment he made
A. The list of goods or services in respect in which the during the application. The registration will be registered in the
registration has been granted. If the mark is registered only for name of the assignee already.
electric fans, yun lang.
The second, there is a change of ownership after but the
Q. Can it be used for other products? registration was already issued in the name of the applicant.
A. YES of course. Section 123 says that if somebody wants to There can be a change of ownership, there is no problem with
register a similar trademark for another kind of goods/services that.
that is not included in the registration, then that it is allowed.
(as mentioned in Section 123(d))
137.4. The Office shall record any change of address, or address for
service, which shall be notified to it by the registered owner.
Section 123. Registrability. - 123.1. A mark cannot be
registered if it: 137.5. In the absence of any provision to the contrary in this Act,
xxx communications to be made to the registered owner by virtue of this
Act shall be sent to him at his last recorded address and, at the same,
at his last recorded address for service. (Sec. 19, R.A. No. 166a)
10
SECTION 138. Certificates of Registration. – A certificate of Q. Where does he go to cancel his own mark?
registration of a mark shall be prima facie evidence of the validity of A. Bureau of Trademarks. NOT in the Bureau of Legal of Affairs,
the registration, the registrant's ownership of the mark, and of the which is a quasi-judicial body where it will decide cases that
registrant's exclusive right to use the same in connection with the have opposing parties. Here, there is none. Since the registrant
goods or services and those that are related thereto specified in the wants to cancel his own registration.
certificate. (Sec. 20, R.A. No. 165).
Q. What else can he do?
The one who registers, the first one whose name appears in A. He can amend his own certificate of registration, provided
the certificate is the prima facie the owner of the mark. Of that he does not materially alter the character of the mark.
course that can be rebutted. And that this person has the
exclusive right to use the mark in connection with the goods SECTION 141. Sealed and Certified Copies as Evidence. –
and services and those that are related thereto specified in the Copies of any records, books, papers, or drawings belonging to the
certificate Office relating to marks, and copies of registrations, when
authenticated by the seal of the Office and certified by the Director of
Q. Can he use the mark in other goods and services? the Administrative, Financial and Human Resource Development
A. Yes. We are talking about use, but not exclusive. Other Service Bureau or in his name by an employee of the Office duly
people can use the same mark for the other goods and services authorized by said Director, shall be evidence in all cases wherein the
originals would be evidence; and any person who applies and pays the
that are not included in the registration. Kung baga, free for all.
prescribed fee shall secure such copies. (n).
He can use as well as others.
But if he registers and he has this list of all the goods and This section is very useful if there is a case involved since you
services that is exclusive for him. can get documents from the Bureau of Trademarks to use as
evidence.
SECTION 139. Publication of Registered Marks; Inspection of
Register. – SECTION 142. Correction of Mistakes Made by the Office. –
139.1. The Office shall publish, in the form and within the period fixed Whenever a material mistake in a registration incurred through
by the Regulations, the marks registered, in the order of their the fault of the Office is clearly disclosed by the records of the Office,
registration, reproducing all the particulars referred to in Subsection a certificate stating the fact and nature of such mistake shall be issued
137.2. without charge, recorded and a printed copy thereof shall be attached
to each printed copy of the registration. Such corrected registration
139.2. Marks registered at the Office may be inspected free of charge shall thereafter have the same effect as the original certificate; or in
and any person may obtain copies thereof at his own expense. This the discretion of the Director of the Administrative, Financial and
provision shall also be applicable to transactions recorded in respect of Human Resource Development Service Bureau a new certificate of
any registered mark. (n). registration may be issued without charge. All certificates of correction
heretofore issued in accordance with the Regulations and the
registration to which they are attached shall have the same force and
This section says that anyone can examine or inspect. effect as if such certificates and their issuance had been authorized by
this Act. (n).
SECTION 140. Cancellation upon Application by Registrant;
Amendment or Disclaimer of Registration. – Upon application of We already discussed a similar provision under Patents. If the
the registrant, the Office may permit any registration to be surrendered
office (Bureau of Trademarks), makes a mistake (eg. wrong
for cancellation, and upon cancellation the appropriate entry shall be
made in the records of the Office. Upon application of the registrant spelling), then they will correct without charge.
and payment of the prescribed fee, the Office for good cause may
permit any registration to be amended or to be disclaimed in part: SECTION 143. Correction of Mistakes Made by Applicant. –
Provided, That the amendment or disclaimer does not alter materially Whenever a mistake is made in a registration and such mistake
the character of the mark. Appropriate entry shall be made in the occurred in good faith through the fault of the applicant, the Office may
records of the Office upon the certificate of registration or, if said issue a certificate upon the payment of the prescribed fee: Provided,
certificate is lost or destroyed, upon a certified copy thereof (Sec. 14, That the correction does not involve any change in the registration that
R.A. No. 166). requires republication of the mark. (n)
Section 140 on the other hand talks about cancellation. This time, if it is the applicant who makes the mistake, of course
Kanina, we look opposition which is usually done during the he has to pay the proper fees.
application process. Now, we have a registered
trademark. Opposition is filed by any person who will be This is the flowchart, it is easier and simpler to apply for a
damaged by the mark. trademark as it is not as complicated as patents.
Q. Who files for cancellation here? Can it be anyone?

A. NO. Cancellation here is filled by the registrant. Ayaw niya,
panggulo lang or hinaharass siya dahil sa kanyang registered
trademark.
11
Scenario 2: What if we have goods under Class 25 and Class

50, are they similar or not? It does not necessarily follow that
they are not similar just because they belong to different
classes. It is still up to the court to determine what goods are
similar or not, and not the Nice Classification. The Nice
Classification is only for classification purposes in the
registration.
SECTION 145. Duration. – A certificate of registration shall remain

in force for ten (10) years: Provided, That the registrant shall file a
declaration of actual use and evidence to that effect, or shall show valid
reasons based on the existence of obstacles to such use, as prescribed
by the Regulations, within one (1) year from the fifth anniversary of
the date of the registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec. 12, R.A. No. 166a).
Q. How long will a patent last?

A. 20 years from the filing.
Q. After that?
A. Wala na, the patent becomes part of the public domain
hence everybody can use it one the patent expires.
Q. How long will a trademark last?

A. Each certificate of registration will be valid for 10 years
(renewable)
Why not forever? Because of the requirement of actual use.

The registration must file a Declaration of Actual Use (DAU).
What if it is not being used? Then show valid reason based on

the existence of obstacles for not being able to use the
trademark.
Eg. I was not able to use because of FAME (Fraud, Accident,

Mistake, Excusable Negligence)
SECTION 144. Classification of Goods and Services. – This DAU must be filed within one year from the fifth
144.1. Each registration, and any publication of the Office which anniversary of registration, so not right away. So more or less,
concerns an application or registration effected by the Office shall
on the sixth year from the date of registration. If there is no
indicate the goods or services by their names, grouped according to
the classes of the Nice Classification, and each group shall be preceded DAU is filed, tanggal ang mark.
by the number of the class of that Classification to which that group of
goods or services belongs, presented in the order of the classes of the SECTION 146. Renewal. –
said Classification. 146.1. A certificate of registration may be renewed for periods of ten
(10) years at its expiration upon payment of the prescribed fee and
144.2. Goods or services may not be considered as being similar or upon filing of a request. The request shall contain the following
dissimilar to each other on the ground that, in any registration or indications:
publication by the Office, they appear in different classes of the Nice
Classification. (Sec. 6, R.A. No. 166a) (a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-in-interest,

We already mentioned this Nice Classification. The basis for
hereafter referred to as the "right holder";
putting the numbers is always the Nice Classification
(c) The registration number of the registration concerned;
What this provision is saying is that just because we have the
Nice Classification, it is not basis for determining on whether (d) The filing date of the application which resulted in the registration
or not the good are similar or dissimilar. concerned to be renewed;
Scenario 1: Kunwari lahat Class 25, pero it does not mean that (e) Where the right holder has a representative, the name and address
of that representative;
they are similar just because they are under Class 25.
12
(f) The names of the recorded goods or services for which the renewal registered marks that have not been tampered, unlawfully modified, or
is requested or the names of the recorded goods or services for which infringed upon, under Section 155 of this Code.
the renewal is not requested, grouped according to the classes of the
Nice Classification to which that group of goods or services belongs and
This provision is amended by the Cheaper Medicines Act. We
presented in the order of the classes of the said Classification; and
already know that under this law, importation of patented
(g) A signature by the right holder or his representative. drugs is now allowed. What about the trademark? Because
when you have a patented drug, the patent is one thing. The
146.2. Such request shall be in Filipino or English and may be made brand is another.
at any time within six (6) months before the expiration of the period
for which the registration was issued or renewed, or it may be made
within six (6) months after such expiration on payment of the additional Augmentin is a trademark. That is not the generic term of the
fee herein prescribed. drug. So, the formula of manufacturing that particular drug, is
the one being patented. But the name AUGMENTIN, that is the
146.3. If the Office refuses to renew the registration, it shall notify the brand. So that is a trademark.
registrant of his refusal and the reasons therefor.
146.4. An applicant for renewal not domiciled in the Philippines shall When you buy a product, it I not only the name that is
be subject to and comply with the requirements of this Act. (Sec. 15, protected. Example: COLGATE is a registered trademark and
R.A. No. 166a). the box, the size of the box, all kinds of packaging, those are
protected as well. So in this provision, it says “the exclusive
right to prevent all third parties not having the owner’s consent
If you look at the provision, the mark can be renewed but can from using in the course of trade identical or similar signs or
be refused. If there is no problem with the use or actual use of containers for goods or services” So, this is very common
the trademark, there would be no reason why the renewal in the Philippines. Trying to imitate a packaging of a popular
would be refused. One can have his or her registered brand.
trademark, forever. As long as he keeps renewing every ten
years and keeps on filing the DAU and keeps on paying the
“There shall be no infringement of trademarks or tradenames
prescribed fees.
of imported or sold patented drugs and medicines allowed
under Section 72.1”. so if you are the trademark and patent
JANUARY 24, 2019 | Transcribed by: Carla Louise Bayquen holder of a drug, these drugs can be readily brought in without
& Marvin Doods De Castro infringing on the patent. Pati trademark, hindi rin. If one
imports drugs that have registered trademark. “, said drugs
What are the rights conferred to a registered trademark and medicines bear the registered marks that have not been
owner? tampered, unlawfully modified, or infringed upon”
This provision is always confused with 123. 147 talks about Example: AUGMENTIN- you can import it. Wag mo lang palitan
exclusive use. Use by the trademark owner. ng pangalan.
123 talks about what cannot be registered. So do not mix up. 147.2. The exclusive right of the owner of a well-known mark defined
in Subsection 123.1(e) which is registered in the Philippines, shall
SEC. 14. Section 147 of Republic Act No. 8293, otherwise known as the extend to goods and services which are not similar to those in respect
Intellectual Property Code of the Philippines, is hereby amended to read of which the mark is registered: Provided, That use of that mark in
as follows: relation to those goods or services would indicate a connection
between those goods or services and the owner of the registered
“Sec. 147. Rights Conferred. - 147.1. Except in cases of importation mark: Provided, further, That the interests of the owner of the
of drugs and medicines allowed under Section 72.1 of this Act and of registered mark are likely to be damaged by such use.
off-patent drugs and medicines, the owner of a registered mark shall
have the exclusive right to prevent all third parties not having the When it comes to using, the trademark has the exclusive right
owner’s consent from using in the course of trade identical or similar to use his trademark for all kinds of goods and services. This
signs or containers for goods or services which are identical or similar
one is also provided under Section 123.
to those in respect of which the trademark is registered where such
use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion LIMITATIONS OF THE RIGHTS CONFERRED TO THE
shall be presumed. OWNER OF A REGISTERED MARK
“There shall be no infringement of trademarks or tradenames of Sec. 148. Use of Indications by Third Parties for Purposes Other than
imported or sold patented drugs and medicines allowed under Section those for which the Mark is Used. - Registration of the mark shall not
72.1 of this Act, as well as imported or sold off-patent drugs and confer on the registered owner the right to preclude third parties from
medicines: Provided, That, said drugs and medicines bear the using bona fide their names, addresses, pseudonyms, a geographical
13
name, or exact indications concerning the kind, quality, quantity,  Source

destination, value, place of origin, or time of production or of supply,  manufacturing process
of their goods or services: Provided, That such use is confined to the  characteristics, or
purposes of mere identification or information and cannot mislead the
 suitability for their purpose
public as to the source of the goods or services.
of the goods or services to which the mark is applied.
“Registration of the mark shall not confer on the registered

149.3. The assignment of the application for registration of a mark, or
owner the right to preclude third parties from using bona fide
of its registration, shall be in writing and require the signatures of the
their names” contracting parties. Transfers by mergers or other forms of succession
may be made by any document supporting such transfer.
Example: may registered mark na VICCO. Vicco Soap na
registered. And here comes Vicco, he wants to put up a Sari-
Note: There is no such thing as assignment that is Oral.
Sari store but the mark VICCO is already registered under Mr.
X. can Vicco register VICCO kasi name nya? YES. He can.
149.4. Assignments and transfers of registration of marks shall be
recorded at the Office on payment of the prescribed fee; assignment
Can you use an address despite the fact that it is registered?
and transfers of applications for registration shall, on payment of the
Of course. You can use pseudonym, example: PACMAN. same fee, be provisionally recorded, and the mark, when registered,
shall be in the name of the assignee or transferee.
“or exact indications concerning the kind, quality, quantity,
destination, value, place of origin, or time of production or of
Automatic na yan. Lalagay sa pangalan ng assignee or
supply, of their goods or services”- why? Because normally, this
transferee.
is unregistrable. But if it has been registered for one reason or
another, like if attains secondary meaning, there has limitations
149.5. Assignments and transfers shall have no effect against third
to the use.
parties until they are recorded at the Office.
“Provided, That such use is confined to the purposes of mere

identification or information”—meaning, si Vicco, he can use Sec. 150. License Contracts. -
the VICCO to identify himself but he cannot manufacture soap 150.1. Any license contract concerning the registration of a mark, or
and use VICCO SOAP. an application therefor, shall provide for effective control by the
licensor of the quality of the goods or services of the licensee in
connection with which the mark is used. If the license contract does
Sec. 149. Assignment and Transfer of Application and Registration. - not provide for such quality control, or if such quality control is not
149.1. An application for registration of a mark, or its registration, may effectively carried out, the license contract shall not be valid.
be assigned or transferred with or without the transfer of the business
using the mark.
Kasi normally itong marks are there to identify goods or
services. So kung merong manufacturer, kailangang may
Q: So, here’s an applicant, can he assign his
quality control. Kasi those goods will carry a registered
application?
trademark.
A: Of course. because the owner has the right to dispose.
150.2. A license contract shall be submitted to the Office which shall

Q: Does the business using the mark have to be
keep its contents confidential but shall record it and publish a reference
transferred as well?
thereto. A license contract shall have no effect against third parties until
A: NO. such recording is effected. The Regulations shall fix the procedure for
the recording of the license contract.
Example: I manufacture sardines and I have trademark
BELUGA sardines tapos gusto kong palitan. I wanna sell my
So, we already have a registered trademark. Where do you
trademark. Do I have to sell my sardines business as well? NO.
go if you wanna have that cancelled? You go to the Bureau of
Legal Affairs.
149.2. Such assignment or transfer shall, however, be null and void if
it is liable to mislead the public, particularly as regards the nature, Q: who may file?
source, manufacturing process, characteristics, or suitability for their
A: any person who believes that he is or will be damaged by
purpose, of the goods or services to which the mark is applied.
the registration of a mark
Q: When shall assignment or transfer be null and void?
A: if it is liable to mislead the public, particularly as regards Q: what is the period?
the: A: Within five (5) years from the date of the registration of the
mark under this Act
 Nature
14
Q: What about in opposition? What is the period? And if the Court sees that that mark should be cancelled, then,
A: 30 days from the publication. Mas maiksi ang opposition. So the Court has the power to do so. The BLA cannot say "ay amin
if hindi ka naka-oppose, you wait until the application is yan". So it's really not exclusive with the BLA.
granted. You have 5 years from the date of registration to
cancel the mark. So, however, let's say there is already an action in court which
involves the cancellation of a mark, although it's a different
Q: what are the grounds? action filed, pero may kasamang cancellation, the BLA can no
A: Section 123. longer entertain the cancellation case.
(b) At any time, if the registered mark becomes the generic name for If there is a case in the BLA, for cancellation case, would it
the goods or services, or a portion thereof, for which it is registered, or preclude the court, from hearing the cancellation case? No. So,
has been abandoned, or its registration was obtained fraudulently or pag nasa court na, wala nang hearing. But if it's a cancellation
contrary to the provisions of this Act, or if the registered mark is being case with the BLA the court can still hear. And this would not
used by, or with the permission of, the registrant so as to misrepresent be a prejudicial question, as to the court which has to be
the source of the goods or services on or in connection with which the
resolved before the registered mark may be decided.
mark is used. If the registered mark becomes the generic name for less
than all of the goods or services for which it is registered, a petition to
cancel the registration for only those goods or services may be filed. A Okay, that is 151.2.
registered mark shall not be deemed to be the generic name of goods
or services solely because such mark is also used as a name of or to Sec. 152. Non-use of a Mark When Excused. —
identify a unique product or service. The primary significance of the 152.1. Non-use of a mark may be excused if caused by circumstances
registered mark to the relevant public rather than purchaser motivation arising independently of the will of the trademark owner. Lack of funds
shall be the test for determining whether the registered mark has shall not excuse non-use of a mark.
become the generic name of goods or services on or in connection with
which it has been used. 152.2. The use of the mark in a form different from the form in which
it is registered, which does not alter its distinctive character, shall not
be ground for cancellation or removal of the mark and shall not diminish
Under 151.1 (b), this can be filed anytime. We have the
the protection granted to the mark.
enumeration here. Those are the grounds for cancellation that
can be filed at any time. 152.3. The use of a mark in connection with one or more of the goods
or services belonging to the class in respect of which the mark is
(c) At any time, if the registered owner of the mark without legitimate registered shall prevent its cancellation or removal in respect of all
reason fails to use the mark within the Philippines, or to cause it to be other goods or services of the same class.
used in the Philippines by virtue of a license during an uninterrupted
period of three (3) years or longer. 152.4. The use of a mark by a company related with the registrant or
applicant shall inure to the latter's benefit, and such use shall not affect
the validity of such mark or of its registration: Provided, That such mark
is not used in such manner as to deceive the public. If use of a mark
151.2. Notwithstanding the foregoing provisions, the court or the by a person is controlled by the registrant or applicant with respect to
administrative agency vested with jurisdiction to hear and adjudicate the nature and quality of the goods or services, such use shall inure to
any action to enforce the rights to a registered mark shall likewise the benefit of the registrant or applicant. (n)
exercise jurisdiction to determine whether the registration of said mark
may be cancelled in accordance with this Act. The filing of a suit to
enforce the registered mark with the proper court or agency shall Now. RA 8293 requires that the registrant use the mark. That
exclude any other court or agency from assuming jurisdiction over a is why you should file a DAU. But what if it is impossible to use
subsequently filed petition to cancel the same mark. On the other hand, that mark? Can he be excused? Yes. Non-use of a mark may
the earlier filing of petition to cancel the mark with the Bureau of Legal be excused if caused by circumstances arising independently of
Affairs shall not constitute a prejudicial question that must be resolved the will of the trademark owner. Like, napriso siya. And there's
before an action to enforce the rights to same registered mark may be
nobody running his business. How can he do that? But lack of
decided.
funds is not an excuse, for non-use of the mark. Wag ka na
lang mag-apply kung wala kang pera, pang-manufacture ng
Although it is the BLA that has jurisdiction to cancel the goods mo.
trademark, the courts are not precluded to cancel a registered
trademark if the proper action I filed. You do not file a What if the mark is used differently from the form in which it is
cancellation case with the court. Pero we will see later, registered. So, if the registered trademark is this, tapos ang
infringement cases are filed with the court. The BLA cacnnot ginamit is that, so they're kinda confusingly similar, not exactly
say na amin lang yan. It is really not exclusive to the BLA. the same, then it shall not be a ground for cancellation or
removal of the mark and shall not diminish the protection
granted to the mark.
15
So this provision is implying that we can tweak your mark a deceive, shall be liable in a civil action for infringement by the registrant
little bit. So if you feel like boring yung mark, baguhin ko konti, for the remedies hereinafter set forth: Provided, That the infringement
yun yung gamitin ko, ok lang yun. takes place at the moment any of the acts stated in Subsection 155.1
or this subsection are committed regardless of whether there is actual
sale of goods or services using the infringing material.
The use of a mark in connection with one or more of the goods
or services belonging to the class in respect of which the mark
is registered...So if the mark is registered for 25 goods, tapos Yeah. You don't really have to sell your goods. So that's use of
ginamit lang for three, dun sa 22 hindi ginamit then shall a trademark that is infringing on another's. The fact that you
prevent its cancellation or removal in respect of all other goods use it, you put it on labels, you advertise it you put it in your
or services of the same class. Basta nagamit na. One or more. boxes, packaging, wrappers, whatever, that is already
Then, the mark will not be cancelled. Despite the fact that it is infringement.
not being used for the other kinds of goods.
So then, what is the test for infringement? Do you have to
copy the exact trademark of another? You already know under
Sec. 153. Requirements of Petition; Notice and Hearing. — Insofar as
applicable, the petition for cancellation shall be in the same form as
Patents. No need. There need not be exact identity. In
that provided in Section 134 hereof, and notice and hearing shall be as trademarks, the essential element of infringement is colorable
provided in Section 135 hereof. imitation. Not exact necessary, but merely colorable.
What is colorable imitation?

Sec. 154. Cancellation of Registration. — If the Bureau of Legal Affairs
It has been defined as "a close or ingenious imitation as to the
finds that a case for cancellation has been made out, it shall order the
cancellation of the registration. When the order or judgment becomes
be calculated to deceive ordinary purchasers. Or semblance of
final, any right conferred by such registration upon the registrant or the infringing mark, with the original, as to deceive ordinary
any person in interest of record shall terminate. Notice of cancellation purchaser, gaining his attention and a purchaser usually gives,
shall be published in the IPO Gazette. and causing him to purchase the one supposedly to be the
other.
So the cancellation shall be published in the IPO Gazette.
Now for us, since we are educated, we have discerning eyes, it
Now, let's go to infringement. is always nearly impossible to fool us to buying something that
we cannot identify because there is a colorable imitation
between the items that we want to buy. But we are not the
Sec. 155. Remedies; Infringement. - Any person who shall, without
the consent of the owner of the registered mark:
ordinary purchaser. The ordinary purchaser is the one who not
so educated, goes to grocery...like yung mga Inday, nauutusan
155.1. Use in commerce any reproduction, counterfeit, copy, or bumili ng toyo. *Maam gives a narration of how a housemaid
colorable imitation of a registered mark or the same container or a purchases another soy sauce because it looks similar with
dominant feature thereof in connection with the sale, offering for sale, another brand.
distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or So, jurisprudence gives us two tests to determine whether
services on or in connection with which such use is likely to cause
colorable imitation exists. And if there is something that I
confusion, or to cause mistake, or to deceive; or
really don't like in IP, it is this. The two tests. Because it is so
hard to differentiate the two. And the examiners love to ask
So that is 155.1. Use in commerce. Use the mark of another on this in the bar. Magtatanong "what test is used? The holistic
your goods and services, distribution, advertising, et cetera. test or dominancy?" Now if you read the cases, tingnan niyo
That is tantamount to infringement. So it says "of any goods or kung kaya ninyo. Mag-review ng holistic or dominancy test.
services including other preparatory steps necessary to carry
out the sale of any goods or services on or in connection with Holistic Test
which such use is likely to cause confusion, or to cause mistake, It mandates that the entirety of the mark in question must be
or to deceive". A sign that is confusingly similar with a tax considered in determining confusing similarity.
trademark in your goods, and you sell, you advertise. Then that
is already tantamount to, infringement. Dominancy Test
Infringement takes place in the competing trademark contains
155.2. Reproduce, counterfeit, copy or colorably imitate a registered the main or essential features of another. And confusion is
mark or a dominant feature thereof and apply such reproduction, likely to result. And in several cases, like in the case of
counterfeit, copy or colorable imitation to labels, signs, prints, *indistinct, the Supreme Court tried to differentiate. Anyway
packages, wrappers, receptacles or advertisements intended to be
the reporter will report on that later.
used in commerce upon or in connection with the sale, offering for sale,
distribution, or advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to
16
So, according to the Supreme Court in Asia Brewery vs CA, 156.3. In cases where actual intent to mislead the public or to defraud
when you talk about infringement, duplication is not necessary. the complainant is shown, in the discretion of the court, the damages
Nor is it necessary that the infringing label should suggest an may be doubled. (Sec. 23, first par., R.A. No. 166)
156.4. The complainant, upon proper showing, may also be granted
effort to imitate. So you know very well that the most popular
injunction. (Sec. 23, second par., R.A. No. 166a)
case in trademarks is the case of Asia Brewery. And of course,
there are two bottles. Unang tingin mo, kung ikaw si Inday,
palit ug San Miguel. If you look at it instantly, parang pareho What will the court award the registered owner?
siya. Pero isa-isahin mo siya...oh, the one the reporter of Asia Damages. Which may either be the reasonable profit which the
Brewery. What do you think is the test applied by the Supreme owner would have realized if not for the infringement.
Court here? Siyempre, nagbago sales niya, kasi may nagbebenta ng similar
product, with the product that is confusingly similar to his. Or
Anyway, the reporters will report on that. the profit which were actually made out of the infringement.
Or, certain percentages or the gross sales of infringer if such
*Ma'am shows examples of trademarks that were contested in measure of damages cannot be readily ascertained. We call
the cases. Mixture of laughter and lecture, indistinct that temperate damages.
So, does the trademark owner have the right to prevent Impounding of sales invoices and other documents evidencing
others from manufacturing, selling, or producing the sales. And damages may be doubled in cases where the actual
same article to which it is attached? intent to mislead the public or defraud the registered owner.
No. Kunwari trademark owner ako ng Colgate. Do I have the So fraud is not required for infringement. But if it is proven that
right to prevent others from manufacturing toothpaste? Of infringement is done in a fraudulent manner, double damages.
course not. Pero kung may patent ako sa toothpaste na yun, Injunction may be further used for trademark, and destruction
then nobody else can use it, not because of my patent, but of goods found infringing and all related paraphernalia.
because of my trademark. So the trademark owner, his right
only is to prevent the use by the others of his registered mark Sec. 157. Power of Court to Order Infringing Material Destroyed. —
or a colorable imitation thereof, on similar goods manufactured 157.1. In any action arising under this Act, in which a violation of any
or sold by others. So ok lang sa iba, manufacture toothpaste, right of the owner of the registered mark is established, the court may
order that goods found to be infringing be, without compensation of
wag lang gamitin ang aking trademark. Or a colorable imitation
any sort, disposed of outside the channels of commerce in such a
thereof. manner as to avoid any harm caused to the right holder, or destroyed;
and all labels, signs, prints, packages, wrappers, receptacles and
Is fraud essential in the infringement of trademark? Do advertisements in the possession of the defendant, bearing the
you have to prove that the infringer fraudulently registered mark or trade name or any reproduction, counterfeit, copy
infringed? or colorable imitation thereof, all plates, molds, matrices and other
No. The mere use of a similar mark is sufficient to constitute means of making the same, shall be delivered up and destroyed.
infringement. The important this is, there is registered
157.2. In regard to counterfeit goods, the simple removal of the
trademark that is being infringed. So, when an infringement
trademark affixed shall not be sufficient other than in exceptional cases
case is filed, against the alleged infringer, and he is found by which shall be determined by the Regulations, to permit the release of
the court, the Special Commercial Court. So infringement cases the goods into the channels of commerce.
are filed in the court.
Sec. 158. Damages; Requirement of Notice. - In any suit for

Sec. 156. Actions, and Damages and Injunction for Infringement. —
infringement, the owner of the registered mark shall not be entitled to
156.1. The owner of a registered mark may recover damages from any
recover profits or damages unless the acts have been committed with
person who infringes his rights, and the measure of the damages
knowledge that such imitation is likely to cause confusion, or to cause
suffered shall be either the reasonable profit which the complaining
mistake, or to deceive. Such knowledge is presumed if the registrant
party would have made, had the defendant not infringed his rights, or
gives notice that his mark is registered by displaying with the mark the
the profit which the defendant actually made out of the infringement,
words '"Registered Mark" or the letter R within a circle or if the
or in the event such measure of damages cannot be readily ascertained
defendant had otherwise actual notice of the registration.
with reasonable certainty, then the court may award as damages a
reasonable percentage based upon the amount of gross sales of the
defendant or the value of the services in connection with which the Yes. So hindi automatic ang damages sa infringement. But,
mark or trade name was used in the infringement of the rights of the there must be knowledge, that the infringer is actually using a
complaining party. (Sec. 23, first par., R.A. No. 166a) mark that is similar to what is registered. So, knowledge is
156.2. On application of the complainant, the court may impound presumed if there is that "R" there. Maraming registered dito
during the pendency of the action, sales invoices and other documents
na dapat di registered. Pag may "R", there's already
evidencing sales. (n)
knowledge. Notice to the whole world. That the mark is
17
registered. And therefore, the infringer is liable for damages. JANUARY 29, 2019 | Transcribed by: Hannah Keziah Dela
And of course, there is actual notice of registration. Cerna & Vanessa Escritor
Sec. 159. Limitations to Actions for Infringement. — Notwithstanding Sec. 159. Limitations to Actions for Infringement. –
any other provision of this Act, the remedies given to the owner of a Notwithstanding any other provision of this Act, the remedies
right infringed under this Act shall be limited as follows: given to the owner of a right infringed under this Act shall be limited
159.1. Notwithstanding the provisions of Section 155 hereof, a as follows:
registered mark shall have no effect against any person who, in good
faith, before the filing date or the priority date, was using the mark for 159.1. Notwithstanding the provisions of Section 155 hereof, a
the purposes of his business or enterprise: Provided, That his right may registered mark shall have no effect against any person who,
only be transferred or assigned together with his enterprise or business  in good faith,
or with that part of his enterprise or business in which the mark is used.  before the filing date or the priority date,
 was using the mark for the purposes of his business or
enterprise:
159.2. Where an infringer who is engaged solely in the business of
printing the mark or other infringing materials for others is an innocent
Provided, That his right may only be transferred or assigned together
infringer, the owner of the right infringed shall be entitled as against with his enterprise or business or with that part of his enterprise or
such infringer only to an injunction against future printing. business in which the mark is used.
159.3. Where the infringement complained of is contained in or is part 159.2. Where an infringer who is engaged solely in the business of
of paid advertisement in a newspaper, magazine, or other similar printing the mark or other infringing materials for others is an innocent
periodical or in an electronic communication, the remedies of the owner infringer, the owner of the right infringed shall be entitled as against
of the right infringed as against the publisher or distributor of such such infringer only to an injunction against future printing.
newspaper, magazine, or other similar periodical or electronic
communication shall be limited to an injunction against the 159.3. Where the infringement complained of is contained in or is
presentation of such advertising matter in future issues of such part of paid advertisement in
newspapers, magazines, or other similar periodicals or in future  a newspaper,
transmissions of such electronic communications. The limitations of this  magazine,
 or other similar periodical or in an electronic communication,
subparagraph shall apply only to innocent infringers: Provided, That
such injunctive relief shall not be available to the owner of the right
the remedies of the owner of the right infringed as against the publisher
infringed with respect to an issue of a newspaper, magazine, or other
or distributor of such newspaper, magazine, or other similar periodical
similar periodical or an electronic communication containing infringing or electronic communication shall be limited to an injunction against
matter where restraining the dissemination of such infringing matter in the presentation of such advertising matter in future issues of such
any particular issue of such periodical or in an electronic communication newspapers, magazines, or other similar periodicals or in future
would delay the delivery of such issue or transmission of such electronic transmissions of such electronic communications. The limitations of this
communication is customarily conducted in accordance with the sound subparagraph shall apply only to innocent infringers: Provided, That
business practice, and not due to any method or device adopted to such injunctive relief shall not be available to the owner of the right
evade this section or to prevent or delay the issuance of an injunction infringed with respect to an issue of a newspaper, magazine, or other
or restraining order with respect to such infringing matter. similar periodical or an electronic communication containing infringing
matter where restraining the dissemination of such infringing matter in
any particular issue of such periodical or in an electronic communication
So, for example, ito na nga, may registered na Vicco Soap. Eh would delay the delivery of such issue or transmission of such electronic
nalaman pala na may Vicco Sari-sari Store. Or Vicco Pomelos? communication is customarily conducted in accordance with the sound
Pwede ba sabihin ni Vicco Soap na Vicco can no longer use the business practice, and not due to any method or device adopted to
Vicco. No. Pag may prior user, he can continue using it, despite evade this section or to prevent or delay the issuance of an injunction
or restraining order with respect to such infringing matter.
the fact that there is already a registered mark.
So Vicco, if you want to sell your Sari-sari, you cannot sell your So definitely noh, if someone has a registered trademark and
others commit acts of infringement, who can be made liable?
name to someone who wants to put up a grocery or internet
Of course the infringer. But the infringer may have some
cafe. Pero pwede mong ilipat yung sari-sari store and ilipat
assistance.
yung Vicco. But you cannot sell the mark. So that's the only
thing you can do because you have been using it before the What about the printing press? This printing press will just be
filing date or the earlier priority date of the registered mark. stopped from continuing the infringement that is being
committed IF the printing press is innocent. Most of the time
innocent ang mga ‘yan. People just leave and say, ‘print this’.
Especially if people who [are] left there are just employees.
They don’t know such a thing as infringement.
What about newspapers? They can also carry infringing articles

and pictures or advertisements made. They will not be held
liable for damages.
18
Again we want to emphasize that even if jurisdiction over

Amended by Republic Act 9502 or the “Universally registration cases and cancellation cases belongs to the IPO,
Accessible Cheaper and Quality Medicines Act of 2008” BLA, etc., the Court is NOT precluded from determining
whether there is a right to register or cancel a trademark and
SEC. 15. Section 159 of Republic Act No. 8293, otherwise known as IPO must have to accept the judgment of the court and make
the Intellectual Property Code of the Philippines, is hereby amended to appropriate entry in the records.
read as follows:
Sec. 162. Action for False or Fraudulent Declaration. - Any
"SEC. 159. Limitations to Actions for Infringement. - person who shall procure registration in the Office of a mark by a false
Notwithstanding any other provision of this Act, the remedies given to or fraudulent declaration or representation, whether oral or in writing,
the owner of a right infringed under this Act shall be limited as follows: or by any false means, shall be liable in a civil action by any person
injured thereby for any damages sustained in consequence thereof
"159.1. x x x;
"159.2 x x x;
"159.3 x x x; and Sec. 163. Jurisdiction of Court. - All actions under Sections 150,
155, 164, and 166 to 169 shall be brought before the proper courts
"159.4 There shall be no infringement of trademarks or tradenames with appropriate jurisdiction under existing laws.
of imported or sold drugs and medicines allowed under Section 72.1 of
this Act, as well as imported or sold off-patent drugs and medicines:
Provided, That said drugs and medicines bear the registered marks that 150 - license contract
have not been tampered, unlawfully modified, or infringed upon as 155 - Remedies; Infringement
defined under Section 155 of this Code." 164 - Notice of Filing Suit Given to the Director
5a) 166 - Goods Bearing Infringing Marks or Trade Names.
169 - False Designation of Origin
So importation of medicines is now allowed under the Cheaper
Medicines Act provided that the distributor and retailers will not Sec. 164. Notice of Filing Suit Given to the Director. — It shall
tamper with the packaging. be the duty of the clerks of such courts within one (1) month after the
filing of any action, suit, or proceeding involving a mark registered
Question: Can a foreign corporation sue here in the under the provisions of this Act, to notify the Director in writing setting
Philippines? forth: the names and addresses of the litigants and designating the
number of the registration or registrations and within one (1) month
Answer: YES.
after the judgment is entered or an appeal is taken, the clerk of court
shall give notice thereof to the Office, and the latter shall endorse the
Sec. 160. Right of Foreign Corporation to Sue in Trademark or same upon the filewrapper of the said registration or registrations and
Service Mark Enforcement Action. – ANY foreign national or incorporate the same as a part of the contents of said filewrapper.
juridical person who meets the requirements of Section 3 of this Act
and does not engage in business in the Philippines may bring a civil or
administrative action hereunder for opposition, cancellation, TRADE NAMES
infringement, unfair competition, or false designation of origin and false
description, whether or not it is licensed to do business in the Sec. 165. Trade Names or Business Names. -
Philippines under existing laws.
165.1. A name or designation may NOT be used as a trade name:
Do not forget Section 3. But here in infringement of trademark,
- if by its nature or the use to which such name or designation may be
the entity must have a REGISTERED TRADEMARK.
put, it is contrary to public order or morals
- and if, in particular, it is liable to deceive trade circles or the
SECTION 3. International Conventions and Reciprocity. –
public as to the nature of the enterprise identified by that name.
Any person who is a national or who is domiciled or has a real and
effective industrial establishment in a country which is a party to any convention,
treaty or agreement relating to intellectual property rights or the repression of 165.2.
unfair competition, to which the Philippines is also a party, or extends reciprocal (a) Notwithstanding any laws or regulations providing for any
rights to nationals of the Philippines by law, shall be entitled to benefits to the obligation to register trade names, such names shall be protected,
extent necessary to give effect to any provision of such convention, treaty or even prior to or without registration, against any unlawful act
reciprocal law, in addition to the rights to which any owner of an intellectual committed by third parties.
property right is otherwise entitled by this Act.
ACTS DEEMED UNLAWFUL:

Sec. 161. Authority to Determine Right to Registration. – In (b) In particular,
any action involving a registered mark, the court may determine the  any subsequent use of the trade name by a third party, whether
right to registration, order the cancellation of a registration, in whole as a trade name or a mark or collective mark,
or in part, and otherwise rectify the register with respect to the  or any such use of a similar trade name or mark, likely to mislead
registration of any party to the action in the exercise of this. Judgment the public, shall be deemed unlawful.
and orders shall be certified by the court to the Director, who shall
make appropriate entry upon the records of the Bureau, and shall be 165.3. The remedies provided for in Sections 153 to 156 and Sections
controlled thereby. 166 and 167 shall apply mutatis mutandis.
19
165.4. Any change in the ownership of a trade name shall be made  or shall bear a mark or trade name calculated to induce the public
with the transfer of the enterprise or part thereof identified by that to believe that the article is manufactured
name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis - in the Philippines, or that it is manufactured
mutandis. - in any foreign country or locality other than the country
- or locality where it is in fact manufactured,
Examples of Trade Names: Philippine Airlines Incorporated, shall be admitted to entry at any customhouse of the Philippines.
San Miguel Corporation, SM Holdings Incorporated
In order to aid the officers of the customs service in enforcing this
Question: Where do you register a trade name? prohibition, any person who is entitled to the benefits of this Act, may
require that his name and residence, and the name of the locality in
Answer: It depends.
which his goods are manufactured, a copy of the certificate of
registration of his mark or trade name, to be recorded in books which
If you are a corporation, you register that with the Securities shall be kept for this purpose in the Bureau of Customs, under such
and Exchange Commission (SEC). And every time there is an regulations as the Collector of Customs with the approval of the
application for registration, the applicant must submit three (3) Secretary of Finance shall prescribe, and may furnish to the said Bureau
names. It should not be similar to any name of an existing facsimiles of his name, the name of the locality in which his goods are
entity. If it does not pass the test, the SEC will require the manufactured, or his registered mark or trade name, and thereupon
applicant to submit another 3 names. the Collector of Customs shall cause one (1) or more copies of the same
to be transmitted to each collector or to other proper officer of the
Bureau of Customs.
What if single proprietorship? DTI.
Comment: With respect to the different entities that will Discussion: If you have anything na mayroong nakalagay na
approve the trade name, they have their own requirements. “Made In China”, dapat made in China talaga yan. Kung walang
But as far as IPC is considered, ito lang (not contrary to public nakalagay, the presumption is MADE IN THE PHILIPPINES.
order or morals)
PRESUMPTION IF NO DESIGNATION: Made in the
NOT covered by prohibition of use: mga kapilya, chapels. Philippines
They can use “San Miguel”
Collective Marks
Things that are still covered by prohibition: “Saint Miguel” Any visible sign designated as such in the application for
because it is still similar to San Miguel Corporation registration and capable of distinguishing the origin or any
other common characteristic including quality of goods or
Discussion: “The remedies provided for in Sections 153 to 156 services of different enterprises which use the sign under the
and Sections 166 and 167 shall apply mutatis mutandis.” control of the registered owner of the collective mark.
(mutatis mutandis = A medieval Latin phrase which means “the
necessary changes having been made” or “once the necessary changes
have been made”; means that it also applies to the main point after SECTION 167. Collective Marks. —
the alteration in terms)
167.1. Subject to Subsections 167.2 and 167.3, Sections 122 to 164
153 - Requirements of Petition; Notice and Hearing and 166 shall apply to collective marks, except that references therein
154 - Cancellation of Registration to "mark" shall be read as "collective mark".
155 - Remedies; Infringement
156 - Actions, and Damages and Injunction for Infringement. 167.2.
a. An application for registration of a collective mark shall designate
*This means that you can file for infringement and the mark as a collective mark and shall be accompanied by a copy of
cancellation for a trade name. the agreement, if any, governing the use of the collective mark.
Question: Can you transfer a trade name? b. The registered owner of a collective mark shall notify the Director of
any changes made in respect of the agreement referred to in paragraph
Answer: YES. The trade name carries with it the business.
(a).
Kasama ang busines,s kasama ang name. If the owner of San
Miguel sells it to Lucio Tan, he also needs to sell his beer and
167.3. In addition to the grounds provided in Section 149, the Court
every product he has. shall cancel the registration of a collective mark if the person requesting
the cancellation proves that only the registered owner uses the mark,
SECTION 166. Goods Bearing Infringing Marks or Trade or that he uses or permits its use in contravention of the agreements
Names. - referred to in Subsection 166.2 or that he uses or permits its use in a
manner liable to deceive trade circles or the public as to the origin or
No article of imported merchandise which shall any other common characteristics of the goods or services concerned.
 copy or simulate the name of any domestic product, or
manufacturer, or dealer,
 or which shall copy or simulate a mark registered in accordance So, if I want to apply for a trademark for my goods, nilagay ko
with the provisions of this Act, lahat ng goods attached for the trademark. I could also apply
20
for a collective mark. Ano ba yung mga products ninyo? Isali Take note, one can only sue on the ground of unfair
natin lahat para one mark tayo. So, iba-ibang products. competition, if he has established goodwill. Meaning, yung mga
McDonald’s. Kunwari there are other entities who are selling
SECTION 122. How Marks are Acquired. – The rights in a mark products na kunwari McDonald’s, that is unfair competition.
shall be acquired through registration made validly in accordance with Trying to ride on the popularity of McDonald’s. Pero kung wala
the provisions of this law. naming goodwill, what is his karapatan to file an action for
unfair competition?
“Which use the sign under the control of the registered owner.”
I’m the registered owner. Again, subject to section 122 shall But if you look at the provision, who is protected against unfair
apply to collective marks. competition?
What’s the process? SECTION 168. Unfair Competition, Rights, Regulation and
An application for the registration of a collective mark shall Remedies. —
designate the mark as a collective mark. So, I have to specify 168.1. 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
that I am applying for a collective mark and it should be
others, whether or not a registered mark is employed, has a property
accompanied by any agreement if any, governing the use of
right in the goodwill of the said goods, business or services so
the collective mark. May agreement kami in writing that I will identified, which will be protected in the same manner as other
pass, I will submit a copy. property rights.
The registered owner of the collective mark shall notify the That’s the difference between unfair competition and
Director of any changes made in respect of the agreement. infringement.
Kunwari tanggalin natin si Vicco. Then, I have to inform even
during the application process. In infringement, meron kang registrered trademark. In unfair
competition, kahit na hindi registered, kahi wala pang
Let’s say na na-approve, I was granted the collective mark and registered trademark, but you have already established
all of us are using one collective mark for all our goods and yourself as the owner of your business and these are your
services. According to 167.3, “In addition to the grounds products, it says, “has a property right in the goodwill of the
provided in Section 149, the Court shall cancel the registration said goods, business or services so identified, which will be
of a collective mark if the person requesting the cancellation protected in the same manner as other property rights.”
proves that only the registered owner uses the mark”, ako lang
talaga yung gumagamit. Hindi ginagamit nung apat. Di pwede So, if you remember the case of Ang v. Teodoro, kunwari lang
yun. They should’ve applied for a trademark. itong si Teodoro had no registered trademark sa Ang Tibay but
everybody knew the grant and that’s his. What if somebody
What if the agreement is exclusive? And then pinagamit ko si copies? He cannot sue for infringement but he can sue for
Anton, si Dan, everybody else pinagamit ko. That is again, a unfair competition.
violation.
168.2. Any person who shall employ deception or any other means
167.4. The registration of a collective mark, or an application therefor contrary to good faith by which he shall pass off the goods
shall not be the subject of a license contract. manufactured by him or in which he deals, or his business, or services
for those of the one having established such goodwill, or who shall
commit any acts calculated to produce said result, shall be guilty of
Of course. Why? Because it’s already a collective mark. Only
unfair competition, and shall be subject to an action therefor.
the parties to the agreement are allowed to use that mark.
Unlike if it’s my own trademark, I can enter into a license
contract with other entities. But for collective, kami-kami lang.
So, that’s for collective mark. That’s the other way around. You ride on the goodwill of
another, then you can be held liable for unfair competition.
UNFAIR COMPETITION
168.3. In particular, and without in any way limiting the scope of
protection against unfair competition, the following shall be deemed
What is unfair competition?
guilty of unfair competition:
The short definition is, the employment or deception, or any
other means contrary to good faith, by which one should pass a. Any person, who is selling his goods and gives them the general
off the goods manufactured by him, or which he deals, or his appearance of goods of another manufacturer or dealer, either as to
business or services for those of the one having established the goods themselves or in the wrapping of the packages in which they
such goodwill. are contained, or the devices or words thereon, or in any other feature
of their appearance, which would be likely to influence purchasers to
21
believe that the goods offered are those of a manufacturer or dealer, But fraud is not required in infringement. What is required in
other than the actual manufacturer or dealer, or who otherwise clothes infringement is that you have a registered trademark and
the goods with such appearance as shall deceive the public and defraud somebody is using is by using a similar, identical, or confusingly
another of his legitimate trade, or any subsequent vendor of such
similar mark.
goods or any agent of any vendor engaged in selling such goods with
a like purpose;
Jurisdiction?
This is the Special Commercial Court.
If you notice, it’s similar to infringement. If you imitate the
packaging, if you use the container, a brand that is established What are the remedies for unfair competition?
and is well-known. It’s just that, in infringement, there is a The same as the remedies for infringement of trademark and
registered trademark; but in unfair competition, there is none. tradenames.
If you notice in the cases, the action is normally for
infringement and unfair competition. So, it depends na lang
SECTION 169. False Designations of Origin; False Description
how the court will hold the defendant liable.
or Representation. —
b. Any person who by any artifice, or device, or who employs any other 169.1. Any person who, on or in connection with any goods or
means calculated to induce the false belief that such person is offering services, or any container for goods, uses in commerce any word, term,
the services of another who has identified such services in the mind of name, symbol, or device, or any combination thereof, or any false
the public; or designation of origin, false or misleading description of fact, or false or
misleading representation of fact, which:
c. Any person who shall make any false statement in the course of
trade or who shall commit any other act contrary to good faith of a a. Is likely to cause confusion, or to cause mistake, or to deceive as to
nature calculated to discredit the goods, business or services of the affiliation, connection, or association of such person with another
another. person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person; or
C is different from A and B. if you try to destroy the goodwill of
b. In commercial advertising or promotion, misrepresents the nature,
another by making false statements – in our advertising world characteristics, qualities, or geographic origin of his or her or another
here in the Philippines, we don’t. We do not destroy harap- person's goods, services, or commercial activities, shall be liable to a
harapan the goods of another. Palaging Brand X, Brand Y. But civil action for damages and injunction provided in Sections 156 and
in the US, “Advil, Panadol, what is better?” Even the sabon. 157 of this Act by any person who believes that he or she is or is likely
“Ariel, Tide..” Talagang nagpapatamaan sila ba. But here, we to be damaged by such act.
are more respectful because this is unfair competition if you try
to destroy the goods of another. If you put there in your label, “Made in the USA”, pero hindi
pala. That is false designation, “All organic ingredients”, yun
168.4. The remedies provided by Sections 156, 157 and 161 pala hindi. If you put there “Sugar free”, yun pala puno ng
shall apply mutatis mutandis. sugar. Or, “Low salt”. Manufacturers should be very, very
careful. Kung talagang zero sugar, zero. Pero you cannot say
zero if it’s not. That is false designation.
The remedies against infringement shall apply to unfair
competition. It’s just that, hindi lang sya infringement.
And again, where do you file?
Special Commercial Court. Simple action for damages.
What then is the test of unfair competition?
Basically, whether certain goods have been clothed with the
appearance likely to deceive the ordinary purchaser exercising 169.2. Any goods marked or labelled in contravention of the provisions
ordinary care. So, again, sino ang nabibiktima dito? Those of this Section shall not be imported into the Philippines or admitted
entry at any customhouse of the Philippines. The owner, importer, or
ordinary purchasers who really, are not aware. Unlike law
consignee of goods refused entry at any customhouse under this
students who are totally aware of these things already. What section may have any recourse under the customs revenue laws or may
about those who do not know about Intellectual Property? have the remedy given by this Act in cases involving goods refused
entry or seized.
Is fraud essential in unfair competition?
Yes. You must prove fraudulent intent to pass off one’s goods
This is very difficult to monitor – the entry of goods. So, again,
as that of another. When you file your complaint for unfair you know that all goods that are made outside the Philippines
competition and you want, if you just say that, “The defendant shall bear the “Made in” sign. But the thing is, they come in in
fraudulently committed unfair competition”. You know very well containers. How do you open each and every item there? But
that under Rule 8, Section 4, you have to particularize, you that is the law. They should not be allowed in when there’s
have to describe how was the fraud committed specifically. nothing that indicates where it comes from. Because anything
that has no indication is presumably made in the Philippines.
22
Kung walang “Made in”, nagpapanggap sila na made in the of Lim Hoa’s (Applicant’s) trademark would likely cause
Philippines. confusion or mistake or deceive purchasers.
Let’s go to the criminal liability. What did we talk about in Issue 1: Whether or not the application for registration should
patents? When is a infringement a criminal act? When it be given due course. – No.
is repeated.
Held:
Atty. Suarez: If the present law is applied, the provision
But when it comes to infringement of trademark, unfair
applicable is Section 123(d). The trademark of the two chickens
competition, and false designation, false description or
is confusingly similar to the trademark of Agricom. They are
representation, it is up to the person who files. Kung gusto nya
both using for the same kind of goods – seasoning.
civil case, pwede. Kung gusto nya criminal case, pwede din.
Option nya. Issue 2: Whether or not Lim Hoa infringed the trademark of
Agricom. – Yes.
SECTION 170. Penalties. — Independent of the civil and
administrative sanctions imposed by law, a criminal penalty of The question at issue in cases of infringement of trademarks is
imprisonment from two (2) years to five (5) years and a fine ranging whether the use of the marks involved would be likely to cause
from Fifty thousand pesos (P50,000) to Two hundred thousand pesos confusion or mistake in the mind of the public or deceive
(P200,000), shall be imposed on any person who is found guilty of purchasers.
committing any of the acts mentioned in Section 155, Section 168 and
Subsection 169.1. Test of Dominancy
Go Tiong Sa vs. Director of Patents: The question of
January 31, 2019 | Transcribed by: Dominic Estremos & infringement of a trademark is to be determined by the Test of
Najim Guinomla Dominancy.
The Test of Dominancy provides that similarity in size, form,

LIM HOA VS. DIRECTOR OF PATENTS and color of a trademark is not conclusive. Duplication or
G.R. No. L-8072 (October 31, 1956) imitation is not necessary, nor is it necessary that the
infringement label should suggest an effort to imitate. As long
as the competing trademark contains the main or essential or
Facts:
dominant features of another, and confusion and deception is
On April 26, 1949, Lim Hoa filed with the Patent Office an
likely to result, infringement takes place.
application for the registration of a trademark.
The danger of confusion in trademarks and brands which are
Agricom Development Co. Inc opposed the application on
similar may not be so great in the case of commodities or
several grounds. One of the grounds was that the trademark
articles of relatively great value, such as, radio & television sets,
sought to be registered was confusingly similar to its registered
air conditioning units, machinery, etc.
mark.
But in the case at bar, the sale of a food-seasoning product, a
BANTAM HEN BRAND kitchen article of everyday consumption, the circumstances are
Marca Manok different.
The said product is generally purchased by cooks and

household help, sometimes illiterate who are guided by pictorial
representations and the sound of the word the word descriptive
of said representations.
Note: No available photos in the internet. The reporter recreated the
above marks using the descriptions given by the SC. Comparison between trademark of Lim Hoa & Agricom
The two roosters appearing in the trademark of Lim Hoa and
the Hen appearing in the trademark of Agricom, although of
Lim Hoa claims that he used the said trademark on a food- different sexes, belong to the same family of chicken,
seasoning product since April 25, 1949. On the other hand, the commonly known as “Manok”.
said mark or brand was also used by Agricom on a food-
seasoning product, before the use of the trademark by Lim There is confusion
Hoa. For a household helper or a housewife who buys a food
seasoning product for the kitchen, the brand of “Manok” or
The Director of Patents refused the registration of the said “Marca Manok” would most likely be upper most in her mind
trademark, based on his finding that to allow the registration and would influence her in selecting the product, regardless of
whether the brand pictures a hen or a rooster or two roosters.
23
To her, they are all manok. Therein lies the confusion, even Since the term cannot be appropriated as a trademark or a
deception. tradename, no action for violation thereof can be maintained,
as none is granted by statute in such cases.
Conclusion
The Court held that there was infringement of the trademark The right to damages and injunction is only granted to those
of Agricom. Therefore, the application for registration of entitled to the exclusive use of a registered trademark or
Trademark by Lim Hoa should be denied. tradename.
DISCUSSION: Issue 2: Whether or not there is unfair competition. – No.

The dominant feature of the two is of course the chicken.
Whether it is a rooster or a hen, not everybody can distinguish. Held:
Therefore, they are confusingly similar. Even though the first Similarity: "Wellington Company" and that of "Wellington
one has two chickens, and the other has one chicken, still, Department Store," no confusion can possibly result from such
applying the Dominancy Test, they are confusingly similar. similarity because the latter is a "department store," while the
former does not purport to be so.
HENG and DEE VS. WELLINGTON DEPARTMENT STORE Neither can the public be said to be deceived into the belief
G.R. No. L-4531 (January 10, 1953) that the goods being sold originate from Heng & Dee, because
the evidence shows that Chua’s store sells no shirts or wear
bearing the trademark "Wellington," but other trademarks.
Facts:
Ang Si Heng and Salustiana Dee owns the Wellington Shirt Neither did the name acquire proprietary connotation for being
Factory, manufacturers of shirts, pants, drawers and other associated with the business or products of Heng & Dee – their
articles. Heng and Dee registered: business has not continued for so long a time for it to have
 its trademark “Wellington” in 1938; and acquired good will of considerable value.
 its tradename “Wellington Company” in 1940.
DISCUSSION:
It was renewed on June 11, 1946. Thereafter, it was not Atty. Suarez: How about the registration of trademark? Was
renewed. it cancelled?
Answer: They didn’t renew.
On the other hand, Benjamin Chua registered Wellington
Department Store on May 7, 1946. We have a trademark and a tradename. Both Wellington.
Bottomline, the term Wellington cannot be exclusively
Note: Wellington is actually a geographical name. Wellington is appropriated. If you register a trademark and was granted, that
the capital of New Zealand. means that you have the right to exclusively appropriate the
trademark. In the first place, that trademark should not have
A complaint filed by Heng and Dee alleged that “Wellington been registered under Heng and Dee. Wellington Department
Department Store” deceives the pubic into buying “Wellington Store can use the term Wellington, because it is free for all. A
Department Store’s” goods under the mistaken belief that the geographical term, a descriptive term, etc, as provided by
names are of the same source as that of Heng and Dee’s Section 123, can be used by any.
Wellington Company, thereby resulting damage to them.
On the other hand, Wellington Department Store and Chua EAST PACIFIC MERCHANDISING CORPORATION VS.
alleged that Heng and Dee are engaged in the business of DIRECTOR OF PATENTS and LUIS PELLICER
manufacture of articles of wear, whereas they are not engaged G.R. No. L-14377 (December 29, 1960)
in manufacture or sale but in keeping a store for the selling
various items different from those manufactured by Heng and Facts:
Dee. On June 14, 1947, Marcelo T. Pua filed with the Office of the
Director of Commerce an application for the registration under
Issue 1: Whether or not Wellington Department Store can be Commonwealth Act (CA) 666 of the composite trademark
made liable for infringement of tradename. – No. consisting of the word "Verbena" and representation of a
Spanish lady, more particularly described as follows:
Held:
Mere geographical names are ordinarily regarded as common
property, and the same cannot be appropriated as the subject
of an exclusive trademark or tradename.
Even if Wellington were a surname, the same cannot also be

validly registered as a tradename.
24
Issue 1: Whether or not East Pacific is entitled to the

Note: The reporter recreated the mark using the description provided registration of the trademark "Verbena" and the figure of a
by the SC. Credits to you, Mr. Eduardo Lape :) lady. – No.
Pua alleged that the trademark applied for has continuously Held:
been used by him in commerce since August 15, 1947 on such
merchandise as lotion, face powder, hair pomade, brillantine, As to the first contention – without merit
and other allied products. Contention: The composite trademark "Verbena" and the figure
of a lady, considered as a whole, is not generic in nature or
On November 4, 1953, Pua assigned his rights to the trademark descriptive or deceptively misdescriptive of the products to
in question, as well as its pending application for the which it is associated.
registration, to East Pacific Merchandising Corporation.
The term "Verbena" being descriptive of a whole genus of
On November 8, 1957, East Pacific renewed the application garden plants with fragrant flowers (Verbenaceae), its use in
under the new trademark law (R.A. 166) at the Patents Office. connection with cosmetic products, wherein fragrance is of
substantial import, evokes the idea that the products are
An examiner of the Patents Office submitted a report to the perfumed with the extract of verbena flowers, or of some oil of
Director of Patents recommending the approval of the similar aroma.
application, and the latter approved East Pacific's application
for publication in the Official Gazette. Regardless of other connotations of the word, the use of the
term cannot be denied to other traders using such extract or
Luis P. Pellicer filed an opposition to the application on the oils in their own products.
following grounds:
 the picture of a lady is common in trade, and the name Thus, the term is non-registerable in the sense that East Pacific
"Verbena" is the generic name of a flower and, would be entitled to appropriate its use to the exclusion of
therefore, neither may be exclusively appropriated or others legitimately entitled, such as Pellicer.
registered by the applicant;
 the applicant should not be allowed to bar from The denial of registration is further strengthened by the
employing this term those who actually use the Director's express findings that East Pacific does not use
genuine verbena essence in the manufacture of their verbena essences in his products.
products; and
 the applicant in the adoption and use of said As held in the case of Caswell vs. Davis - "[W]ords or phrases
trademark is deceiving the public. which have been in common use and which indicate the
character, kind, quality and composition of the thing, may not
Attached to Pellicer's opposition are certain labels bearing the be appropriated by any one to his exclusive use. x x x"
trademark "Lupel Verbena", which trademark, according to
Pellicer, was registered in his favor under Certificate of Issue 2: Is the figure of the lady registrable as trademark? –
Registration No. 5851, issued by the Patents Office on April 27, Yes.
1957, and actually being used by him in commerce to identify
his hair pomade. Held:
Yes, but the SC made a qualification. The figure was drawn on
East Pacific moved to dismiss the opposition, alleging that its arbitrary lines and styled in a peculiarly distinctive manner
own mark had already acquired a secondary significance as a (which is registrable).
trademark.
But the fact will not qualify the word "Verbena" for registration,
After due hearing, the Director of Patents held that the term since the combination of the two marks would still be
"Verbena" is "generically descriptive or misdescriptive of the inadequate to guard against the misleading effects that flow
products, namely lotion, face powder, hair pomade and from the use of the term by East Pacific.
brillantine, while the representation of a Spanish lady is not
only deceptively misdescriptive of the source or origin, but also As to the second contention – without merit
common in trade.” Contention: The trademark has acquired a secondary meaning
before the public.
Thus, East Pacific's registration was consequently denied.
This is the law applied here, which is Section 123.2 of the
East Pacific now argues that it is entitled to registration on the present Intellectual Property Code.
following CONTENTIONS:
 Editor’s Note: For convenience, I placed the
Section 4. Registration of trade-marks, trade-names and
enumerated contentions to their respective
service-marks. x x x
discussions. I did not change the flow of the report.
25
which are still subsisting under the said laws are hereby
(f) Except as expressly excluded in paragraphs (a), (b), (c) and granted the right:
(d) of this section, nothing herein shall prevent the registration (a) Within one year after the taking effect of this Act to
of a mark or trade-name used by the applicant which has surrender their certificates of registration and procure
become distinctive of the applicant's goods, business or the issuance of new certificates, in which event they shall be
services. The Director may accept as prima facie evidence that entitled to the benefits and subject to the provisions of this Act;
the mark or trade-name has become distinctive, as applied to or
or used in connection with the applicant's goods, business or
services, proof of substantially exclusive and continuous use (b) Within one year before the expiration of the period for
thereof as a mark or trade-name by the applicant in connection which the certificates of registration was issued or renewed,
with the sale of goods, business or services for the five years the registrant may renew the registration upon filing an
next preceding the date of the filing of the application for its application therefor, as provided in section fifteen, Chapter III
registration. hereof. If said application is granted a renewal certificate shall
be issued by the Director in accordance with the provisions of
this Act.
The law requires that the trademark applied for must have
"become distinctive of the applicant's goods", and that a prima
facie proof of this fact exists when the applicant has been in *So this is the Section which requires the surrender of the
the "substantially exclusive and continuous use thereof as a certificate and the renewal of registration.
mark or tradename for five years next preceding the date of
the filing of the application for its registration". This conduct of East Pacific shows that either the trademark
had not been validly registered under the old trademark law,
In the case at bar, it appears not only that East Pacific and his or else that such registration, if any, had already expired when
assignor (Pua) only began use of the alleged mark in 1947, the the new application was filed.
same year when the application was filed; but that such
trademarks as "Verbena Povil" and "Lupel Verbena" had long Therefore, East Pacific is not entitled to registration of the
been in use by Pellicer on his own cosmetic products, and that, trademark "Verbena". The application was properly denied.
as a matter of fact, he is the holder of the certificate of
registration from the Patents Office for the trademark "Lupel Atty. Suarez: The word “Verbana” cannot be registered
Verbena". because it is generic. How about the words “Lupel Verbana”?
Why is it that the other entity could register?
Therefore, the trademark in question has not become Answer: Because Verbana is connected to another word. You
distinctive of East Pacific's goods within the meaning of the law. cannot register the word Verbana. But if it is connected to
another word, then that’s fine.
As to the third contention – without merit
Contention: Appropriation of the trademark having occurred Atty. Suarez: Verbena is flower used as ingredient. Why is the
under the former law (CA 666), the right thereto cannot be term “Verbena”, or the other generic terms, cannot be
taken away under the subsequent law without violating the rule exclusively appropriated or registered as a trademark?
against ex post facto laws. Answer: Because, how about those other manufacturers who
use the ingredient “Verbena”. If they put it there in their
The question of trademark registrability being without any packaging, that would already constitute infringement.
penal aspect, the prohibition against ex post facto legislation
evidently does not apply. But if it “two-word term” which includes “Verbena”, then that
could be registrable.
But considering the argument as one against infringement of
vested rights, it should be recalled that Pua applied in 1947 for CHUA CHE v. PHILIPPINE PATENT OFFICE
a new registration under the old law (CA 666), while East Pacific G.R. No. L-18337 (January 30, 1965)
reiterated the application in 1957 under RA 166.
FACTS: Chua Che presented with the Philippines Patent Office
Neither applied for a renewal of registration under section 41 a petition praying for the registration in his favor the trade
of the RA 166, nor did East Pacific surrender the original name "X-7".
certificate of registration of the trademark for revalidation as
the Act requires. In accordance with the requirements of law, the undersigned
declares that this trademark –
Section 41. Reservation in favor of prior registration. – 1. Was first used by him in commerce in or with the Philippines
on June 10, 1957.
Owners of marks or trade-names registered under the 2. Has been continuously used by him in trade in or with the
provisions of the laws in force prior hereto, the registrations of Philippines for more than one year.
3. Is actually used by him on the following goods, classified in
Class 51 –Soap.
26
these class of goods including laundry and toilet soap, even

Sy Tuo, the oppositor, relied on the following facts: though not being used on the latter, and the fact that it is used
1. He had a Prior Use of “X-7” since July 31, 1952. on the other products (perfume, lipstick, and nail polish)
2. “X-7” was previously registered by SY TUO, and has not already satisfies the requirement of Actual Use. Even if he will
abandoned the use of such. intend to use it in the future, he is not barred for that reasons.
3. He Has built goodwill on such trademark.
4. He used it on products such as perfume, lipstick and nail MEAD JOHNSON v. VAN DORP
polish and WILL USE it on Laundry and Toilet Soap. G.R. No. L-17501 (April 27, 1963)
Contention (Chua Che):

In Inter Partes proceedings, the principal issue is "priority of FACTS: Mead Johnson Company is a corporation organized
adoption and use." Since opposer has not yet used "X-7" mark under the laws of Indiana, U.S.A. It is the owner of the
on soap, but will still use it, applicant should be entitled to the trademark "ALACTA" used for powdered half-skim milk, which
registration of the same. was registered with the Patent Office on June 12, 1951.
Contention (Sy Tuo): On the other hand, N.V.J. Van Dorp is a corporation organized
The registration of the trademark "X-7" in the name of applicant under the laws of Netherlands, located and doing business at
CHUA CHE will likely mislead the public so as to make them Gouda, Netherlands.
believe that said goods are manufactured or sponsored by or
in some way in trade associated with opposer. June 2, 1956: Van Dorp filed an application for the registration
of the trademark "ALASKA and pictorial representation of a
ISSUE: Whether or not the application for registration of CHUA Boy's Head within a rectangular design (ALASKA disclaimed)."
CHE of the trademark “X-7” should be granted. - NO
RULING: The circumstance of non-actual use of the mark on

granulated soap by SY TUO, does not detract from the fact that
he has already a right to such a trademark and should,
therefore, be protected.
The trademark was published in an issue of the Official Gazette
The Supreme court find no merit in the contention of CHUA which was officially released on June 5, 1956.
CHE that the product upon which the trademark X-7 will be
used (laundry soap) is different from those of SY TUO, and Mead Johnson filed an opposition on the ground that it will be
therefore no infringement and/or confusion may result, for it damaged by the said registration as the trademark "ALASKA"
has been held that while it is no longer necessary to and pictorial representation of a Boy's Head within a
establish that the goods of the parties possess the same rectangular design (ALASKA disclaimed), used for milk, milk
descriptive properties, as previously required under the products, dairy products and infant's foods, is confusingly
Trade Mark Act of 1905, registration of a trademark should similar to its trademark "ALACTA".
be refused in cases where there is a likelihood of
confusion, mistake, or deception, even though the
goods fall into different categories. (Application of Sylvan
Sweets Co., 205 F. 2nd, 207.)
The products are common household items nowadays, in the Van Dorp's Answer: its trademark and product "ALASKA" are
same manner as laundry soap. The likelihood of purchasers entirely different from oppositor's trademark and product
to associate those products to a common origin is not "ALACTA", since:
far-fetched. Both from the standpoint of priority of use and 1. Van Dorp's product covers milk, milk products, dairy
for the protection of the buying public and, of course, SY TUO’s products and infant's foods which fall under Class 47 Foods and
rights to the trademark "X-7", it becomes manifest that the Ingredients of Foods.
registration of said trademark in favor of CHUA CHE should be 2. Mead Johnson's products cover pharmaceutical preparations
denied. for nutritional needs which fall under Class 6, which refers to
Medicines and Pharmaceutical Preparations.
Atty. Suarez: So, obviously, the “X-7” trademark is already

registered in the name of Sy Tuo. There is even no need to ISSUE: Whether or not Van Dorp committed trademark
apply any test because the other “X-7” is identical to that infringement. NO.
registered.
RULING: It is true that there are similarities in spelling,
Now, even we apply RA 8293, which now do NOT require Prior appearance and sound for both are composed of six letters
Use but Actual Use, the fact that the “X-7” is registered under of three syllables each and each syllable has the same vowel,
27
but in determining if they are confusingly similar a comparison (1) The right to register, as may be noted, is based on
of said words is not the only determinant factor. ownership. In the case of the trademark AMBISCO, the
evidence shows that it is owned by the American Biscuit
The trademarks in their entirety as they appear in the Co., Inc., and not by petitioner Operators, Inc.
respective labels must also be considered in relation to (2) We find no cogent reason to disagree with the Director of
the goods to which they are attached. Patents that "considering the similarities in appearance and
sound between the marks AMBISCO and NABISCO, the
Furthermore: nature and similarity of the products of the parties together
In Mead Johnson's certificate of registration, it appears that the with the fact that opposer's NABISCO has been used in
same covers "Pharmaceutical Preparations which Supply commerce in the Philippines for more than fifty five (55)
Nutritional Needs" which fall under Class 6 of the official years before AMBISCO was adopted by applicant, confusion
classification as Medicines and Pharmaceutical of purchasers is likely.
Preparations", thus indicating that the products are not foods
or ingredients of foods but rather medicinal and pharmaceutical If the competing trademark contains the main or essential
preparations that are to be used as prescribed by physicians. or dominant features of another, and confusion and deception
is likely to result, infringement takes place. Duplication or
On the other hand, Van Dorp's goods cover "milk, milk imitation is not necessary; nor is it necessary that the infringing
products, dairy products and infant's foods" as set forth in its label should suggest an effort to imitate.
application for registration which fall under an entirely different
class, or under Class 47 which refers to "Foods and
"The question of infringement is to be determined by the test
Ingredients of Foods", and for use of these products there
of dominancy. The dissimilarity in size, form and color of the
is no need or requirement of a medical prescription.
label and the place where applied are not conclusive. If the
Atty. Suarez: Assuming arguendo that they are confusingly competing label contains the trademark of another, and
similar, they belong to different classes of foods. Although both confusion or deception is likely to result, infringement takes
milk, Alaska is related to baby milk formula as distinguished place, regardless of the fact that the accessories are dissimilar.
from the other. Duplication or exact imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to
FEBRUARY 12, 2019 | Transcribed by: Karlena Luz imitate.
COMMENT: If you notice, this is a registration case. The issue

OPERATOR’S INC. v. DIRECTOR OF PATENTS is w/n the Operator’s Inc. should be allowed to register the
15 SCRA 147 (29 October 1965) trademark AMBISCO. It was discussed that if you want to apply
for a trademark, you must be the owner.
This case was decided in 1965 and hence the applicable law is In this case it was very clear that the trademark AMBISCO
RA 166, the old patent law. Operator’s Inc., a domestic belonged to the American Biscuit Company and not to
corporation applied to the Philippine Patent Office for Operator’s Inc.
registration of AMBISCO as a trademark for its locally
manufactured candy products. It has been using said As to the issue of w/n AMBISCO was confusingly similar with
trademark since May 1965 by virtue of two contracts with the NABISCO, then the test for infringement will apply. In this case
American Biscuit Company, also a domestic corporation. it was the dominancy test to determine whether it was
confusingly similar, in order to reject the application for
The National Biscuit Company opposed the application, registration.
having previously registered NABISCO as trademark for its
own bakery goods, such as biscuits, crackers, cakes and ETEPHA v. DIRECTOR OF PATENTS
wafers. The oppositor, a corporation organized in the United 16 SCRA 495 (31 March 1966)
States, has had the said trademark registered in the Philippines
since 1930, and renewed the registration in 1948 under the
latest trademark law. Westmont Pharmaceuticals, Inc., a New York corporation,
sought registration of trademark "Atussin" placed on its
ISSUE/S: "medicinal preparation of expectorant antihistaminic,
bronchodilator sedative, ascorbic acid (Vitamin C) used in the
1. W/N Operator’s Inc. in the first place had the right to
treatment of cough". The trademark is used exclusively in the
register the trademark of AMBISCO. NO.
Philippines since January 21, 1959.
2. W/N the two trademarks are so similar to each other as to
cause confusion, mistake or deception of purchasers. YES.
Etepha, A. G., a Liechtenstin (principality) corporation,
objected. Etepha claims that it will be damaged because
HELD:
Atussin is so confusedly similar to its Pertussin (Registration No.
6089, issued on September 25, 1957) used on a preparation
28
for the treatment of coughs, that the buying public will be between the two. We concede the possibility that buyers might
misled into believing that Westmont's product is that of be able to obtain Pertussin or Attusin without prescription.
petitioner's which allegedly enjoys goodwill. When this happens, then the buyer must be one throughly
familiar with what he intends to get, else he would not have
ISSUE: May trademark ATUSSIN be registered, given the fact the temerity to ask for a medicine — specifically needed to cure
that PERTUSSIN, another trademark, had been previously a given ailment. In which case, the more improbable it will be
registered in the Patent Office? YES. to palm off one for the other. For a person who purchases with
open eyes is hardly the man to be deceived.
HELD: The objects of a trademark are "to point out distinctly
the origin or ownership of the articles to which it is affixed, to For the reasons given, the appealed decision of the respondent
secure to him who has been instrumental in bringing into Director of Patents — giving due course to the application for
market a superior article or merchandise the fruit of his industry the registration of trademark ATTUSIN is hereby affirmed.
and skill, and to prevent fraud and imposition."
COMMENT: So, now we are looking at whether or not these
AS TO THE WORDING two are confusingly similar. When you look at the words Atussin
That the word "tussin" figures as a component of both and Pertussin, you also look at the design. So, Nabisco and
trademarks is nothing to wonder at. Appropriately to be Ambisco – NO; Atussin and Pertussing – YES.
considered now is the fact that, concededly, the "tussin" (in
Pertussin and Atussin) was derived from the Latin root-word
BRISTOL MYERS v. DIRECTOR OF PATENTS
"tussis" meaning cough. "Tussin" is merely descriptive; it is
17 SCRA 128 (19 May 1996)
generic; it furnishes to the buyer no indication of the origin of
the goods; it is open for appropriation by anyone. It is
accordingly barred from registration as trademark. With A petition for registration in the Principal Register of the Patent
jurisprudence holding the line, we feel safe in making the Office of the trademark "BIOFERIN" was filed on October 21,
statement that any other conclusion would result in "appellant 1957 by United American Pharmaceuticals, Inc. Said domestic
having practically a monopoly"7 of the word "tussin" in a corporation first used the afore-stated trademark in the
trademark. Philippines on August 13, 1957. It covers "a medicinal
preparation of antihistamic, analgesic, antipyritic with vitamin
While "tussin" by itself cannot thus be used exclusively to C and Bioflavenoid used in the treatment of common colds,
identify one's goods, it may properly become the subject of a influenza and other febrile diseases with capillary
trademark "by combination with another word or phrase".9 And hemmorrhagic tendencies." The product falls under Class 6 of
this union of words is reflected in petitioner's Pertussin and the official classification, that is, "Medicines and Pharmaceutical
respondent's Atussin, the first with prefix "Per" and the second Preparations".
with Prefix "A".
Bristol Myers Co., a corporation of the State of Delaware,
AS TO THE TRADEMARKS U.S.A., filed on January 6, 1959 an opposition to the
The two labels are entirely different in colors, contents, application. Said oppositor is the owner in the Philippines of the
arrangement of words thereon, sizes, shapes and general trademark "BUFFERIN" under Certificate of Registration No.
appearance. The contrasts in pictorial effects and appeals to 4578 issued by the Philippine Patent Office on March 3, 1954.
the eye is so pronounced that the label of one cannot be Its trademark is also registered in the United States under
mistaken for that of the other, not even by persons unfamiliar Certificate of Registration No. 566190 issued on November 4,
with the two trademarks. 1952. It was first used in the Philippines on May 13, 1953. The
product covered by "BUFFERIN" also belongs to Class 6,
We now consider exclusively the two words — Pertussin and Medicines and Pharmaceutical Preparations. Designated as
Atussin — as they appear on the respective labels. As "Antacid analgesic", it is intended for relief in cases of "simple
previously adverted to, these words are presented to the public headaches, neuralgia, colds, menstrual pain and minor
in different styles of writing and methods of design. The muscular aches."
horizontal plain, block letters of Atussin and the diagonally and
artistically upward writing of Pertussin leave distinct visual ISSUES: W/N BIOFERIN may be registered. YES. W/N
impressions. One look is enough to denude the mind of that BIOFERIN and BUFFERIN are confusingly similar. NO.
illuminating similarity so essential for a trademark infringement
case to prosper. HELD: In determining whether two trademarks are confusingly
similar, the test is not simply to take their words and compare
As we take up Pertussin and Atussin once again, we cannot the spelling and pronunciation of said words. Rather, it is to
escape notice of the fact that the two words do not sound alike consider the two marks in their entirety, as they appear in the
— when pronounced. There is not much phonetic similarity respective labels, in relation to the goods to which they are
29
attached. Applying this test to the trademarks involved in this

case, it is at once evident that the Director of Patents did not Moreover, the word "Tango" has a well-established meaning,
err in finding no confusing similarity. For though the words for it describes a particular dance that is well known in the
"BIOFERIN" and "BUFFERIN" have the same suffix and similar Philippines. In fact, respondent's label includes the picture of a
sounding prefixes, they appear in their respective labels with man and a woman dancing. Again, "Tango" is used by Ngo
strikingly different backgrounds and surroundings, as to color , Guan for no other product than hair pomade, in which
size and design. petitioner does not deal. Upon the other hand, petitioner's
trademark is used for specified chemicals, medical and
Accordingly, taken as they will appear to a prospective pharmaceutical preparations — namely: "lipstick, creme rouge,
customer, the trademark in question are not apt to confuse. compact rouge, cleansing cream, day cream, night cream,
Furthermore, the product of the applicant is expressly stated massage cream, face lotion, astringent, face powder, powder
as dispensable only upon doctor's prescription, while that of compacts, cosmetics for lashes, brows, and hair, hair pencils,
oppositor does not require the same. The chances of being nail polish, perfumes, and toilet waters — and it is not claimed
confused into purchasing one for the other are therefore all the that Ngo Guan uses or intends to use its "Tango" trademark on
more rendered negligible. Although oppositor avers that some articles of this kind.
drugstores sell "BIOFERIN" without asking for a doctor's
prescription, the same if true would be an irregularity not STERLING PRODUCTS v. FARBENFABRIKEN BAYER
attributable to the applicant, who has already clearly stated the 27 SCRA 1214 (30 April 1969)
requirement of a doctor's prescription upon the face of the label
of its product. Sterling Products International, Inc., (SPI) and Farbenfabriken
Bayer Aktiengesellschaft (FBA), seeks to exclude the other from
GEORGE W. LUFT v. NGO GUAN use in the Philippines of the trademarks BAYER and BAYER
18 SCRA 944 (17 December 1966) CROSS IN CIRCLE. SPI asks this Court to strike down FBA's
registration of BAYER CROSS IN CIRCLE covering industrial and
George W. Luft Co., Inc. — a foreign corporation organized agricultural products — insecticides and other chemicals, not
under the laws of the State of New York — is the owner of the medicines — from the supplemental register. FBA, for its part,
trademark "Tangee", which it has allegedly used since prays for the cancellation from the principal register of SPI's
February 28, 1928, and is covered by Certificate of Registration certificates of registration of the trademarks aforesaid for
No. 2178-S of the Philippine Patent Office, dated February 21, medicines.
1950. On January 22, 1959, Ngo Guan applied for the
registration of the trademark "Tango", which he claims to have Contending parties are doing business in the Philippines. SPI
used since June, 1958. Petitioner objected thereto alleging that
markets Bayer Aspirin, Aspirin for Children and Cafiaspirina.
"Tango" is likely to be mistaken for "Tangee", upon the ground
The BAYER and BAYER CROSS IN CIRCLE are being used by
that the two trademarks are confusingly similar.
SPI in the Philippines only for said products — Bayer Aspirin,
After appropriate proceedings the Director of Patents rendered Cafiaspirina and Bayer Aspirin for Children. On the containers
a decision overruling said opposition and granting Ngo Guan's (bottles or printed celophane strips, which, in turn, are placed
application. A reconsideration of this decision having been in cardboard boxes) of Bayer Aspirin, Aspirin for Children and
denied, petitioner brought the matter before this Court for a Cafiaspirina, SPI features the trademarks BAYER and BAYER
review of said decision and of the resolution denying a CROSS IN CIRCLE.
reconsideration thereof.
FBA thru Allied Manufacturing & Trading Co., Inc. distributes
ISSUE: W/N Tango trademark is confusingly similar with the "Folidol" and other industrial and agricultural chemicals. FBA's
Tangee trademark. NO. "Folidol" (in steel or fiber drums or aluminum containers)
displays a replica of SPI's trademark BAYER CROSS IN CIRCLE;
HELD: To begin with, one of the factors essential therefor is on the tin cap and label of the container.
whether or not there is a general similarity in the appearance of
the trademarks in question, which can not be determined with ISSUE: W/N SPI may exclude FBA from the use of the
reasonable certainty without a physical examination and trademark BAYER and BAYER CROSS IN CIRCLE. NO, they
comparison thereof. Petitioner has rendered such examination cannot exclude them from using the same.
impossible, by not introducing any evidence whatsoever as to
the appearance of the "Tangee" trademark. What is more, such DISCUSSION: BAYER was originally the surname of Friedrich
omission suggests that its appearance is not analogous to that Bayer, a German, who, on August 1, 1868, organized a drug
of respondent's "Tango", for, otherwise, petitioner would not company bearing his name — Friedr Bayer et comp. — at
have failed to present a sample of its trademark, for Barmen, Germany. The company was at first engaged in the
comparison with that of respondent Ngo Guan. manufacture and sale of chemicals. The record, however, does
30
not clearly show when the word BAYER was registered as a intended to use the trademark for the said goods. We believe
trademark in Germany. The BAYER CROSS IN CIRCLE that such omnibus registration is not contemplated by our
trademark was registered in Germany on January 6, 1904 — Trademark Law.
No. 65777.
Because of this and of the fact that the Bayer trademarks were
When the company was merged with other German companies never used in the Philippines by SPI except for medicines —
in 1925 to form the I.G. Farbenindustrie, the name of the Aspirin, Aspirin for Children and Cafiaspirina — we find
former company was deleted from the trademark and what ourselves unwilling to draw a hard and fast rule which would
remained was the present BAYER CROSS IN CIRCLE. Sometime absolutely and under all circumstances give unqualified
in 1895, FFB established a subsidiary in New York, United protection to SPI against the use of said trademarks by all
States. Sometime in 1913, FFB organized another subsidiary — others on goods other than medicines.
The Bayer Co., Inc. of New York. On April 6, 1917, the United
States declared war on Germany. Between December 1918 and Neither will the 1927 (SPI) registration in the United States of
January 1919, all the assets of The Bayer Co., Inc. of New York the BAYER trademark for insecticides serve plaintiff any. The
were sold by the Alien Property Custodian to Sterling Drug, Inc. United States is not the Philippines. Registration in the United
for the sum of US $5,310,000.00. Sterling Drug, Inc. secured States is not registration in the Philippines. At the time of the
registrations of the BAYER trademarks in different countries of United States registration in 1927, we had our own Trademark
the world. Law, Act No. 666 aforesaid of the Philippine Commission, which
provided for registration here of trademarks owned by persons
AS TO USE domiciled in the United States. What is to be secured from
A rule widely accepted and firmly entrenched because it has unfair competition in a given territory is the trade which one
come down through the years is that actual use in commerce has in that particular territory. There is where his business is
or business is a prerequisite to the acquisition of the right of carried on; where the goodwill symbolized by the trademark
ownership over a trademark. This rule is spelled out in our has immediate value; where the infringer may profit by
Trademark Law: infringement. Accordingly, the 1927 registration in the United
SEC. 2-A. Ownership of trade-marks, trademark names and States of the BAYER trademark would not of itself afford SPI
service-mark; how acquired. — Anyone who lawfully protection for the use by FBA in the Philippines of the same
produces or deals in merchandise of any kind or who trademark for the same or different products.
engages in any lawful business, or who renders any lawful
service in commerce, by actual use thereof in manufacture
or trade, in business, and in the service rendered, may IN THE CASE: It would seem to us that the fact that SPI rode
appropriate to his, exclusive use a trademark, a trade- on the German reputation in the Bayer trademark has diluted
name, or a service-mark not so appropriated by another, to the rationally of its exclusionary claim. Not that the free ride in
distinguish his merchandise, business, or service from the the name of FBA’s German predecessor was sporadic. It is
merchandise, business or service of others. The ownership continuing. Proof of this is the label on the box used by plaintiff
or possession of a trademark, trade-name, service mark, (Exhibit U) in the distribution of Bayer Aspirin. This box bears
heretofore or hereafter appropriated, as in this section prominently on the front part the legend "Genuine" in red color
provided, shall be recognized and protected in the same and two arrows: the first pointing to BAYER CROSS IN CIRCLE,
manner and to the same extent as are other property rights and the second, to BAYER Aspirin. At the back thereof in big
known to the law. (As inserted by Section 1 of Republic Act letters are the words "BAYER ASPIRIN", followed in small
638) letters "Used since 1900" and down below the small words
"Mfd. in the Phil. by Winthrop Stearns, Inc. for STERLING
The BAYER trademarks registered in the Philippines to which PRODUCTS INTERNATIONAL, INCORPORATED." In plaintiff's
SPI may lay claim, as correctly stated in the decision below, are prospectus (Exhibit 1) found in the box of Bayer Aspirin tablets,
those which cover medicines only. For, it was on said children's size, there is the significant statement: "GENUINE
goods that the BAYER trademarks were actually used by it in BAYER — Each Children's Size Bayer Aspirin tablet is stamped
the Philippines. Therefore, the certificates of registration for with the Bayer Cross, the trademark of the genuine Bayer
medicines issued by the Director of Patents upon which the product. This means that your child is getting the same gentle-
protection is enjoyed are only for medicines. Nothing in those to-the-system Bayer Aspirin that has been used for over 50
certificates recited would include chemical or years by millions of normal people without ill effect."
insecticides.
With the background of prior use in the Philippines of the word
If the certificate of registration were to be deemed as including BAYER by FBA's German predecessor and the prior
goods not specified therein, then a situation may arise whereby representations that SPI’s medicines sold in the Philippines
an applicant may be tempted to register a trademark on any were manufactured in Germany, the facts just recited hammer
and all goods which his mind may conceive even if he had never on the mind of the public that the Aspirin. Cafiaspirina and
31
Aspirin for Children being marketed for plaintiff in the is such that there is a possibility or likelihood of the purchaser
Philippines come from the same source — the German source of the older brand mistaking the newer brand for it.
— and in use since 1900.
Can it be said then that petitioner's application would be likely
While it is conceded that FBA's predecessors first introduced to cause confusion or mistake on the part of the buying public?
medical products with the BAYER trademarks in the Philippine The answer should be in the negative. It does not defy common
market, it is equally true that, after World War I, no definite sense to assert that a purchaser would be cognizant of the
evidence there is that defendants or their professors traded in product he is buying. There is quite difference between soy
the Philippines in medicines with the BAYER trademarks sauce and edible oil. If one is in the market for the former, he
thereafter. FBA did not seasonably voice its objection. Lack of is not likely to purchase the latter just because of the trademark
protest thereto connoted acquiescence. And this; LOTUS. Even on the rare occasions that a mistake does occur,
notwithstanding the fact that the 1923 and 1926 agreements it can easily be rectified. Moreover, there is no denying that the
were set aside in the anti-trust suits. Defendants did use the possibility of confusion is remote considering the difference in
marks; but it was much later, i.e., in 1958 — and on chemicals the type used, the coloring, the petitioner's trademark being in
and insecticides — not on medicines. FBA only bestirred itself yellow and red while that of the Philippine Refining Company
and challenged plaintiff's right to the trademarks on medicines being in green and yellow, and the much smaller size of
when this suit was filed. Vigilantibus non dormientibus equitas petitioner's trademark. When regard is had for the principle
subvenit. that the two trademarks in their entirety as they appear in their
respective labels should be considered in relation to the goods
HELD: The net result is that, as the trial court aptly observed, advertised before registration could be denied, the conclusion
plaintiff may hold on to its BAYER trademarks for medicines. is inescapable that respondent Director ought to have reached
And defendants may continue using the same trademarks for a different conclusion. Petitioner has successfully made out a
insecticides and other chemicals, not medicines. case for registration.
DISCUSSION: It was Sterling that first registered in the DISCUSSION: So, here in the Philippines, it’s possible to have
Philippines, but it was only for medicines. So, it cannot preclude exactly the same brand but they belong to different companies,
others from using it in other products. like in this case, one is for edible oil and one is for soy sauce.
Will it cause confusion? Well possibly, but both goods are look
ACOJE MINING v. DIRECTOR OF PATENTS different, one is yellow and green the other yellow and red,
38 SCRA 480 (29 April 1971) besides they are for different products. Di mawawalan ng
customer yan.
Acoje Mining Co., Inc. a domestic corporation, filed an
application for registration of the trademark LOTUS, used on FEBRUARY 14, 2019 | Transcribed by: Emmanuel
Soy Sauce, Class 47. Use in commerce in the Philippines since Monteroyo & Anna Sophia Tarhata Piang
June 1, 1965 is asserted. The Chief trademark Examiner finally
rejected the application by reason of confusing similarity with AMERICAN CYANAMID COMPANY VS. THE DIRECTOR
the trademark LOTUS registered in this Office under Certificate OF PATENTS AND TIU CHIAN
of Registration No. 12476 issued in favor of Philippine Refining G.R. No. L-23954 (April 29, 1977)
CO., Inc., another domestic corporation. The cited mark is
being used on edible oil, Class 47.
Facts: On April 3, 1959, American Cyanamid filed a Petition
ISSUE: May Acoje Mining Company Register for the purpose to Cancel Certificate of Registration issued on July 6, 1956, in
of advertising its product, soy sauce, the trademark LOTUS, favor of Tiu Chian.
there being already in existence one such registered in favor of
This was is relation to Chian’s trademark SULMETINE which
Philippine Refining Company for its product, edible oil. YES.
was used on medicine for the control of infectious coryza and
for the prevention of cold rhinitis, roup, cecal coccidiosis and
RULING: The determinative factor in a contest involving intestinal coccidiosis of chicken and other domesticated birds.
registration of trade mark is not whether the challenging mark
would actually cause confusion or deception of the purchasers CYANAMID’S CONTENTIONS: American Cyanamid alleges
but whether the use of such mark would likely cause confusion that it had priority in the use of its trademark SULMET over
or mistake on the part of the buying public. In short, to Chian’s use of his trademark SULMETINE.
constitute an infringement of an existing trade-mark patent and
warrant a denial of an application for registration, the law does American Cyanamid further alleges that the trademark
not require that the competing trademarks must be so identical SULMETINE is confusingly similar to SULMET.
as to produce actual error or mistake; it would be sufficient, for
purposes of the law, that the similarity between the two labels,
32
Issue: WHETHER OR NOT THE PETITION FOR

CANCELLATION OF REGISTRATION SHOULD BE GRANTED. – Contrary to the allegation of Cyanamid, the source or
No. manufacturer of the article will be a most important factor in
the mind of the purchaser in selecting the article he will buy,
Rule: There are striking differences between the two labels. and a preparation manufactured by a well-known foreign
They are entirely different in size, background, colors, contents, company such as the American Cyanamid Company, New York,
and pictorial arrangement. enjoys a decided advantage over one which is locally produced
and manufactured by an unknown entity
DISTINCTIONS SULMETINE SULMET
The word SULMET is derived from a combination of the
As to the coloring Dark yellow in Has a white
syllables “SUL” which is derived from Sulfa, and “MET” from
scheme color and the background with
Methyl, both of which are chemical compounds present in the
word SULMETINE the word
article manufactured by both parties.
is printed in dark SULMET printed
blue in dark green
The addition of the syllable “INE” in Chian’s label is sufficient
Carries the colors Carries mainly
to distinguish his product or trademark from that of American
yellow, blue, and the colors white
Cyanamid.
red and green
As to the pictorial Presents the What appears on No one can claim a monopoly in the preparation of medicinal
representation pictures of two the top of its product for the treatment, control, and prevention in chicken
roosters and in label is the word of infectious diseases. The field is open for the manufacture of
between is the “CYANAMID” medicinal preparations for the same veterinary purpose.
word “HENRY’S” printed in bold
printed in an egg- and widely- What the law prohibits is that one manufacturer labels his
shaped enclosure spaced green product in a manner strikingly identical with or similar to that
letters of another manufacturer as to deceive or confuse the buying
As to the printed There is nothing The product is public into believing that the two preparations are one and
matter on the label which indicated described in bold come from the same.
that the green letters as
preparation may “Drinking Water While their products may be for a similar use, their presentation
be used for Solution” and the to the purchasing public come in totally different forms.
turkeys, ducks, or printed directions
any other indicate that it is Absent a finding of confusing similarity between the two
domesticated for use of chicken trademarks, the priority in the use of the mark SULMET by
animals flocks, turkeys, Cyanamid will have no decisive effect in the granting of the
ducks, as well as petition for cancellation of the registration of Chian’s trademark
in certain
conditions for DISCUSSION: In the instant case, the Supreme Court did not
horses, cattle, use either the holistic or dominancy test in order to determine
calves, sheep, if there was trademark infringement. By differentiating the two
and swine trademarks, it held that if one mark is not confusingly similar
As to the clear The name Indicates that the to the other, then the latter mark may be registered even if the
indication of the “HENRY’S” is product SULMET same is for similar goods.
source printed clearly is of foreign
above the word origin. At the
SULMETINE and bottom of the
VICTORIAS MILLING vs. ONG SU
at the bottom of label, the words
GR L-28499 (1977)
the label the “AMERICAN
phrase “HENRY’S CYANAMID
LABORATORIES COMPANY, NEW Facts: Victorias Milling Company, Inc., is a domestic
PHILIPPINES” is YORK, N.Y.” are corporation and engaged in the manufacture and sale of
printed in white printed in white refined granulated sugar, is the owner of the trademark
letters against a capital letters “VICTORIAS” and diamond design registered in the Philippines
dark blue against a dark Patent Office on November 9, 1961.
background green
background ONG Su is engaged in the repacking and sale of refined sugar
and is the owner of the trademark “VALENTINE” and design
In this case of SULMET and SULMETINE, the product is for registered in the Philippines Patent Office on June 20, 1961.
medicinal veterinary use and consequently, the purchaser will
be more wary of the nature of the product he is buying.
33
On October 4, 1963, Victorias Milling Company, Inc. filed with Rule:

the Philippines Patent Office a petition to cancel the registration
of the ONG Su trademark “Valentine.” DOCTRINE OF SECONDARY MEANING: A word or phrase
originally incapable of exclusive appropriation with reference to
ALLEGATIONS OF VICTORIA’S MILLING: an article in the market has, through its long and exclusive use
by one entity has effectively been distinguished and identified
 its trademark “Victorias” and diamond design has as that representing the user and its products.
become distinctive of its sugar long before Ong Su
used its trademark mark has become so distinctive, as used in connection with the
 that the registration of “Valentine” and diamond applicant's goods in commerce.
design has caused and will cause great damage to the
company by reason of mistake, confusion, or mark comes to identify not only the goods but the source of
deception among the purchasers because it is similar those goods. To establish secondary meaning, it must be
to its “Victorias” trademark shown that the primary significance of the term in the
 that registration was fraudulently obtained by Ong Su minds of the consuming public is not the product but
 that “Valentine” falsely suggests a connection with the producer.
Saint Valentine or with an institution or belief
connected therewith The Director of Patents is correct. Victorias Millling's design has
not attained secondary meaning. The contention of Victoria
DISTINCTIONS BETWEEN THE TWO TRADEMARKS: that the diamond design in its trademark is an index of origin
has no merit. It has not shown that the design portion of
the mark has been so used that purchasers recognize
the design, standing alone, as indicating goods coming from
the registrant.
As correctly stated by the Director of Patents, common

geometric shapes such as diamonds ordinarily are not
regarded as indicia of origin for goods to which the
marks are applied unless they have acquired a
secondary meaning.
And there is no evidence that the diamond design in the

trademark of Victoria has acquired a secondary meaning with
The Director of Patents denied the petition to cancel the respect to its sugar business. The word “Victorias” is what
certificate of registration of ONG Su covering the trademark identifies the sugar contained in the bag as the product
“Valentine” and design: of Victorias Milling. Indeed, it has advertised its sugar in bags
“Herein Victorias Milling failed to establish that diamond design marked “Victorias” with oval, hexagon and other designs.
component of its mark has acquired a secondary meaning
and that the literal portion of the marks have no similarity, The evidence reveals that ONG Su has been using his
there is no reasonable likelihood of purchaser confusion trademark since prior to the last World War and he
resulting from registrant’s use of VALENTINE within a obtained the registration thereof on June 20, 1961.
diamond and Victoria Milling’s use of VICTORIAS within a
diamond.” Vijandre declared that the Victorias Milling started to use its
trademark only in 1947. Said trademark was registered on
When a petition for cancellation of registration of trademark is November 9, 1961. It cannot be said, therefore, that the ONG
filed, there is a connotation that the one who files for it was Su imitated the trademark of the Victorias Milling.
the one who registered first.
It seems clear that the words “Valentine” and “Victorias” and
However, in the instant case, Ong Su was the first one to have the names and places of business of Victorias Milling Company,
his trademark “Valetine’s” registered. As such, Victoria’s had to Inc. and ONG Su are the dominant features of the trademarks
use a different ground to support its petiton for cancellation of in question. Victorias Milling has not established such a
the trademark which was registered earlier. substantial similarity between the two trademarks in question
as to warrant the cancellation of the trademark ‘Valentine’ of
In the instant case, the ground used by Victoria’s Milling was ONG Su.
that its trademark had acquired secondary meaning.
THREFORE, Victoria’s Milling’s petiton for cancellation was
Issue: Whether or not Victoria's design has attained secondary properly denied.
meaning. – No.
34
DISCUSSION: In this case, the use of the diamond was not

the main focus. Customers do not purchase Victoria’s or Issue No. 1: Whether or not Lacoste has the capacity to sue.
Valentine’s sugar because of the diamond. They purchase a – Yes.
particular type of sugar because of who produced it. Since not
everyone knows of Victoria’s diamond design, the same cannot Rule:
be said to have acquired secondary meaning. Therefore, it Hemandas’s contention:
cannot cause the cancellation of another’s trademark which
was registered ahead of its own. Under RA 166, Sec 21-A:
Sec. 21 — A. Any foreign corporation or juristic person to which

LA CHEMISE LACOSTE vs. JUDGE FERNANDEZ a mark or tradename has been registered or assigned
G.R. No. L-63796-97 (May 2, 1984) under this Act may bring an action hereunder for
infringement, for unfair competition, or false designation of
origin and false description, whether or not it has been licensed
Facts: La Chemise Lacoste is a French corporation. They to do business in the Philippines under Act numbered Fourteen
manufacture apparel, and their products are distributed in the Hundred and Fifty-Nine, as amended, otherwise known as the
country by a domestic corporation, Rustan Commercial. Corporation Law, at the time it brings the complaint; Provided,
That the country of which the said foreign corporation
In 1975, Hemandas & Co. is a domestic firm which applied for or juristic person is a citizen, or in which it is domiciled,
a supplemental register for the trademark “CHEMISE LACOSTE by treaty, convention or law, grants a similar privilege
& CROCODILE DEVICE”. to corporate or juristic persons of the Philippines
In 1977, Hemandas applied for principal register.
However, this case concerns a violation of Art. 189 of the
In1980, Lacoste filed for registration of the trademark Revised Penal Code. Therefore the requisites under RA 166,
“Crododile Device” and “Lacoste”. Sec 21-A do not apply. Lacoste may sue.
In 1982, Lacoste filed for the cancellation of the supplemental Assuming that there is no compliance with the said requisites,
register of Hemandas. there is still legal basis for Lacoste to sue.
In 1983, Lacoste filed a complaint in the NBI, alleging unfair Westmont Equipment and Supply Co. vs Reyes:
competition by Hemandas. A search warrant against Hemandas “ a foreign corporation which has never done any business in
for violation of Art. 189 of the Revised Penal Code was issued the Philippines and which is unlicensed and unregistered to do
and enforced, resulting to confiscation of several materials. business here, but is widely and favorably known in the
Philippines through the use therein of its products bearing its
Art. 189. Unfair competition, fraudulent registration of trade- corporate and tradename, has a legal right to maintain an
mark, trade-name or service mark, fraudulent designation of action in the Philippines to restrain the residents and
origin, and false description. — The penalty provided in the inhabitants thereof from organizing a corporation therein
next proceeding article shall be imposed upon: bearing the same name as the foreign corporation, when it
appears that they have personal knowledge of the existence of
1. Any person who, in unfair competition and for the purposes such a foreign corporation, and it is apparent that the purpose
of deceiving or defrauding another of his legitimate trade or the of the proposed domestic corporation is to deal and trade in
public in general, shall sell his goods giving them the the same goods as those of the foreign corporation
general appearance of goods of another manufacturer
or dealer, either as to the goods themselves, or in the Paris Convention for the Protection of Industrial
wrapping of the packages in which they are contained Property:
or the device or words thereon or in any other features
of their appearance which would be likely to induce the ARTICLE 6
public to believe that the goods offered are those of a (1) The countries of the Union undertake, either
manufacturer or dealer other than the actual administratively if their legislation so permits, or
manufacturer or dealer or shall give other persons a at the request of an interested party, to refuse or
chance or opportunity to do the same with a like to cancel the registration and to prohibit the use
purpose. of a trademark which constitutes a reproduction,
imitation or translation, liable to create confusion,
of a mark considered by the competent authority
Hemandas filed an action to quash the warrants, contending of the country of registration or use to be well-
that the trademark he used was different from Lacoste’s. The known in that country as being already the mark
motion was granted, which prompted Lacoste to file this action. of a person entitled to the benefits of the present
Convention and used for Identical or similar
Hemandas assails the petition, arguing that Lacoste, being a goods. These provisions shall also apply when the
foreign corporation not licensed to do business in the country.
35
essential part of the mark constitutes a herein Dr. Jose R. Perez. Dr. Perez, in his petition for
reproduction of any such well-known mark or an registration, claimed March 10, 1953 as the date of first use of
imitation liable to create confusion therewith. said trademark and August 1, 1953 as the date of first use of
said trademark in commerce in the Philippines.
Therefore, as the Philippines is a signatory of the Paris

Convention, it is bound to protect the rights of Lacoste.
Issue No. 2: Should the registration of La Coste in the

supplemental register be given greater weight? – No.
A certificate of registration in the Supplemental Register is

not prima facie evidence of the validity of registration, of the
registrant's exclusive right to use the same in connection with Crisanta Y. Gabriel on the other hand, earlier filed on October
the goods, business, or services specified in the certificate. 3, 1960 with the Patent Office a petition to register the same
The registration of a mark upon the supplemental register is trademark "WONDER" and claimed March 7, 1959 as the date
not, as in the case of the principal register, prima facie evidence of first use of said trademark in commerce. Said petition was
of (1) the validity of registration; (2) registrant's ownership of dismissed on November 18, 1960 by the Patents Office (thru
the mark; and (3) registrant's exclusive right to use the mark. its examiner) on the ground that said Crisanta was not the
It is not subject to opposition, although it may be cancelled owner of the trademark sought to be registered, informing at
after its issuance. Neither may it be the subject of interference the same time Crisanta that "as shown on the labels submitted,
proceedings. Registration on the supplemental register is not it appear that Dr. Jose R. Perez is the owner of the present
constructive notice of registrant's claim of ownership. A mark ...."
supplemental register is provided for the registration of marks
which are not registrable on the principal register because of ISSUE: Who is the rightful owner of the trademark “WONDER”
some defects”
Ruling:
Registration in the Supplemental Register, therefore, serves as Dr. Perez is the rightful owner of the disputed trademark
notice that the registrant is using or has appropriated the "WONDER"
trademark. By the very fact that the trademark cannot as yet
be entered in the Principal Register, all who deal with it should The consequent denial by the respondent Director of Patents
be on guard that there are certain defects, some obstacles of the petition to cancel certificate of registration No. SR-389
which the user must Still overcome before he can claim legal covering said trademark issued to and in the name of Dr. Jose
ownership of the mark or ask the courts to vindicate his claims R. Perez, were based mainly on his finding that Dr. Perez had
of an exclusive right to the use of the same. It would be priority of adoption and use of the said trademark.
deceptive for a party with nothing more than a registration in Lim Kiah vs. Kaynee Company (25 SCRA 485) and reiterated
the Supplemental Register to posture before courts of justice m in the subsequent case of Sy Ching vs. Gaw Liu (44 SCRA
as if the registration is in the Principal Register.” 150-151)
So if you notice, this was decided under 166. So we have the "It is well-settled that we are precluded from making an inquiry
supplemental register. But that is no more applicable under RA as the finding of facts of the Director of Patents in the absence
8293. We just have registration period. Wala ng Supplemental of any showing that there was grave abuse of discretion is
and Principal. binding on us. ..”
So as to the issue of WON a foreign corporation can sue here In the present case, the findings of fact of the respondent
in the Philippines, apply section 3. So if that foreign corporation Director of Patents are substantially supported by evidence and
has all that qualification under section 3. Then it can sue. no grave abuse of discretion was committed by said
respondent.
GABRIEL vs PEREZ
G.R. No. L-24075 January 31, 1974 Evidence:
1. At the time of the analysis of the soap product of
FACTS: private respondent Dr. Jose R. Perez, there was
Dr. Jose R. Perez filed with the Patents Office on February 23, already a label or trademark known as "Dr. Perez'
1961 an application for registration of the trademark WONDER Beauty Soap" as shown and supported by a
"WONDER" in the Supplemental Register. After due and proper Certificate of Label Approval dated June 6, 1958 and
proceedings, the said petition was approved and the trademark another Certificate of Label Approval dated August 10,
"WONDER" was registered. Thereafter, Certificate of 1959 both issued by the Bureau of Health to Dr. Jose
Registration No. SR-389 was issued to and in the name of
36
R. Perez as manager of the Dr. Jose R. Perez Cosmetic

Laboratory. CONVERSE RUBBER vs. UNIVERSAL
G.R. No. L-27906 January 8, 1987
Both certificates identified the product covered as "Dr.
Perez' Wonder Beauty Soap" and further indicated
that said product emanated from the Dr. Jose R. Perez FACTS:
Cosmetic Laboratory. Furthermore, the certificates Universal Rubber Products, Inc. filed an application with the
show that the Bureau of Health referred to and relied Philippine Patent office for registration of the trademark
on the said label or trademark of the product as the "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes
basis for its certification that the same (product) "was and rubber slippers.
found not adulterated nor misbranded."
Converse Rubber Corporation filed its opposition to the
2. It is not denied that private respondent Dr. Jose R. application for registration on grounds that:
Perez was the originator, producer and manufacturer a] The trademark sought to be registered is confusingly similar
of the soap product identified as "DR. JOSE R. PEREZ to the word "CONVERSE" which is part of ITS corporate name
WONDER BEAUTY SOAP.” The very boxes-containers "CONVERSE RUBBER CORPORATION" as to likely deceive
used in packing the said product also exhibit this fact. purchasers of products on which it is to be used to an extent
that said products may be mistaken by the unwary public to be
On the other hand, Crisanta Y. Gabriel appears to be manufactured by CONverse rubber corporation
a mere distributor of the product by contract with the b] The registration of universal rubber product’s trademark will
manufacturer, Dr. Jose R. Perez and the same was cause great and irreparable injury to the business reputation
only for a term. This fact is also clearly shown by the and goodwill of converse rubber corporation in the Philippines
containers-boxes used in packing the product which and would cause damage it.
indicate and describe Crisanta Y. Gabriel as the
exclusive distributor of the product. ISSUE: Whether there is a confusing similarity bet ween the
trademark sought to be registered and converse rubber
The exclusive distributor does not acquire any corporation’s tradename or trademark.
proprietary interest in the principal's trademark.
In the absence of any inequitable conduct on the part of the RULING: NO
manufacturer, an exclusive distributor who employs the
trademark of the manufacturer does not acquire proprietary Trade name is any individual name or surname, firm name,
rights of the manufacturer, and a registration of the trademark device or word used by manufacturers, industrialists,
by the distributor as such belongs to the manufacturer, merchants and others to identify their businesses, vocations or
provided the fiduciary relationship does not terminate before occupations. 8 As the trade name refers to the business and its
application for registration is filed. goodwill ... the trademark refers to the goods." 9 The
ownership of a trademark or tradename is a property right
It has been repeatedly said that the objects of a trademark are which the owner is entitled to protect "since there is damage
"to point out distinctly the origin or ownership of the goods to to him from confusion or reputation or goodwill in the mind of
which it is affixed, to secure to him, who has been instrumental the public as well as from confusion of goods. The modern
in bringing into market a superior article of merchandise, the trend is to give emphasis to the unfairness of the acts and to
fruit of his industry and skill, and to prevent fraud and classify and treat the issue as fraud.
imposition.
From a cursory appreciation of its corporate name "CONVERSE
In this instant case, the trademark "WONDER" has long been RUBBER CORPORATION,' it is evident that the word
identified and associated with the product manufactured and "CONVERSE" is the dominant word which Identifies itfrom other
produced by the Dr. Jose R. Perez Cosmetic Laboratory. It corporations engaged in similar business. Universal rubber
would thus appear that the decision under review is but in products, in the stipulation of facts, admitted converse rubber
consonance with the sound purposes or objects of a corporation’s existence since 1946 as a duly organized foreign
trademark. corporation engaged in the manufacture of rubber shoes. This
admission necessarily betrays its knowledge of the reputation
Comment: So it’s still the old law that was being applied. If and business of converse rubber corporation even before it
you look at the situation here. There is outsider, a mere applied for registration of the trademark in question. Knowing,
distributor who wants to cancel the registered trademark of therefore, that the word "CONVERSE" belongs to and is being
Doctor Perez. What are the grounds? used by converse rubber corporation, and is in fact the
dominant word in its corporate name, universal rubber product
If you want to cancel something under the IPC, you need to has no right to appropriate the same for use on its products
get the grounds from the law. You cannot just say na Ay, I’m which are similar to those being produced by converse rubber
the exclusive distributor so I have the right to use it. In this corporation.
case what was applied was the old law.
37
A corporation is entitled to the cancellation of a mark that is FEBRUARY 19, 2019 | Transcribed by: Reginald Matt
confusingly similar to its corporate name. Appropriation by Santiago
another of the dominant part of a corporate name is an
infringement
PHILIPPINE REFINING CO., INC v. NG SAM
There is confusing similarity between its trademark universal GR L-26676, July 30, 1982
converse and device and converse rubber corporation’s
corporate name and/or its trademarks “chuck taylor” and “All Facts of the Case
Star Device” which could confuse the purchasing public. Philippine 1922: First used the Products:
Refining trademark “CAMIA” vegetable and
The trademark of respondent "UNIVERSAL CONVERSE and Company animal fats like
DEVICE" is imprinted in a circular manner on the side of its lard, butter and
rubber shoes. In the same manner, the trademark of petitioner
1949: Registration of cooking oil.
which reads "CONVERSE CHUCK TAYLOR" is imprinted on a
circular base attached to the side of its rubber shoes. The trademark “CAMIA”
deteminative factor in ascertaining whether or not marks are
confusingly similar to each other "is not whether the challenged [Class 47 –
mark would actually cause confusion or deception of the Foods and
purchasers but whether the use of such mark would likely cause Ingredients of
confusion or mistake on the part of the buying public. Food]
Discussion: Ng Sam 1959: Alleged first used of Product:

The word “Converse” is also entitled to a protection whether it trademark “CAMIA”
is a trademark or a tradename. When you have a registered Ham
mark, it is not only the mark that is protected but also your
packaging, design, etc.
1960: Filing of application
for trademark “CAMIA” Class 47
From the FT of the case:
The similarity in the general appearance of respondent's
trademark and that of petitioner would evidently create a
likelihood of confusion among the purchasing public. But even Camia refers to a flower. After due publication of the
assuming arguendo that the trademark sought to be registered application, Philippine Refining Co. opposed the application of
by respondent is distinctively dissimilar from those of the Ng Sam on the ground that the trademark “Camia” as filed by
petitioner, the likelihood of confusion would still subsists, not Ng Sam is identical and confusingly similar to that of Philippine
on the purchaser's perception of the goods but on the origins Refining Co. It based its ground on the old law (RA 166, S4):
thereof.
A mark cannot be registered if it is identical or confusingly
By appropriating the word "CONVERSE," respondent's products similar to:
are likely to be mistaken as having been produced by petitioner. a. A mark which is registered in the Philippines or
"The risk of damage is not limited to a possible confusion of previously used in the Philippines and not abandoned
goods but also includes confusion of reputation if the public b. when applied to or used in connection with the goods,
could reasonably assume that the goods of the parties business services of the applicant
originated from the same source. c. To cause confusion or mistake or to deceive
purchasers.
Comment: So you all know Converse the American brand who
manufactures shoes and the tradename Converse All Star and
Issue: WON the mark CAMIA may be registered by Ng Sam?
the "Converse All Star,” “All Star Converse Chuck Taylor," or
“Converse Shoes Chuck Taylor. Here a Philippine Company, the YES
Universal wanting to register. So it was not allowed.
Trademark
A trademark is designed to identify the user but it should be so
distinctive and sufficiently original as to enable those who come
into contact with it to recognize instantly the identity of the
user. The three distinctive features:
1. Affirmative and definite;
2. Significant and distinctive;
3. Capable to indicate origin
38
"CAMIA" as a trademark is far from being distinctive. It does Is a foreign corporation organized and existing under the laws
not identify Philippine Refining Co. as the manufacturer or of Japan and the owner of the trademark “Isetan” and
producer of the goods upon which said mark is used, as contra- “Young Leave Design” registered in Japan covering more
distinguished to trademarks derived from coined words such as than 34 classes of goods (shoes, bags, shirts).
"Rolex", "Kodak" or "Kotex".
[2] Isetann Department Store
It has been held that if a mark is so commonplace that it cannot Is a domestic corporation claims that it used word “ Isetann”
be readily distinguished from others, then it is apparent that it as part of its incorporated name and on its products like it shirt
cannot identify a particular business; and he who first adopted in Joymart Department Store in 1979.
it cannot be injured by any subsequent appropriation or
imitation by others, and the public will not be deceived. On May 30, 1980 and May 20, 1980, the Isetann registered
"Isetann Department Store, Inc." and Isetann and Flower
Note here that the trademark “CAMIA” was for food like ham Design in the Philippine Patent Office.
and vegetable and animal fats, then it cannot be identified with
a particular business. Kabushiki filed with the Phil. Patent Office petitions for the
cancellation of Certificates of Isetan alleging that except for the
Suppose that the case could be decided under RA 8293: additional letter "N" in the word "Isetan", the mark registered
by the registrant is exactly the same as the trademark ISETAN
Article 123(h) of RA 8293 provides: A mark is not owned Kabushiki and that the young leaves registered by the
registrable if it consists exclusively of signs that are generic for registrant is exactly the same as the young leaves design
the goods or services that they seek to identify. owned by the Kabushiki. Isetann department store answered
that Kabushiki’s trademark have not acquired a reputation and
Exception: Doctrine of Secondary Meaning (e.g. Apple). goodwill deserving of protection from usurpation by local
competitors and therefore the petition for cancellation must be
Since Ng Sam was allowed to register and hence there is no dismissed.
infringement:
At this point, Atty. Suarez wanted to extract a different issue
Issue: WON there is unfair competition. – NO. from the reporter and then intervened:
Philippine Refining Company Ng Sam Here, we have Kabushiki the owner of Isetan in Japan, who
wanted to cancel trademark of Isetann it is confusing similar to
Lard, butter, cooking oil, Ham an internationally well-known mark because it [Isetan] is not
abrasive detergents, registered here. Isetan did not use its mark in Philippines for
polishing soaps of all kinds two months in commerce and therefore it cannot be register.
The Isetan brand of Japan did not have actual use.
Derived from vegetable oil Processed from pig’s legs
and animal fats Issue: Whether Isetan can register in Philippines – No.
The business of the parties are non-competitive and their ISETAN has never conducted a business in the Philippines. A
products so unrelated that the use of identical trademarks is fundamental principle of Philippine Trademark Law is that
not likely to give rise to confusion, much less cause damage. actual use in commerce in the Philippines is a pre-requisite to
the acquisition of ownership over a trademark or a tradename.
COMMENT: In unfair competition, the defendants here must Under RA 166, Section 2 which among the requisites for actual
show that his goods are that of the other who has that use for not less than two months.
“goodwill”. So if PRC already had that “goodwill” with CAMIA
and passed off by Ng Sam then that would constitute unfair Suppose it was decided under RA 8293:
competition. There would be a different result, as there is no requisite for
actual use in the Philippines. The old law requires actual use
but the present law does not require such.
KABUSHIKI KAISHA ISETAN v. IAC & ISETANN
GR L-75420, November 15, 1991
Atty. Suarez:
“Isetan Japan filed a Petition for Cancellation of trademark
Facts of the Case [tradename] of Isetann Department Store citing grounds under
Section 123 (which should have been the issue). According to
[1] Kabushiki Kaisha Isetan Isetann that it was confusingly similar of trademark in Japan.
39
[1] It is not registered here in the Philippines; used in one country. To illustrate - If a taxicab or bus company
[2] It is not internationally well known; in a town in the United Kingdom or India happens to use the
tradename "Rapid Transportation", it does not necessarily
Thus there is no ground for cancellation. This does not involve follow that "Rapid" can no longer be registered in Uganda, Fiji,
really of a trademark – but more of a tradename – which was or the Philippines.
not attached to the goods – you seek to cancel the ‘Isetann
Department Store’ itself.” [Atty. Suarez’s banter about similarity of “Isetann” mistaking
that the former was a branch. People would assume.]
What is involved is Not Trademark, but Trade Name
This is because Isetann Department Store, Inc. is the name of Note here that Isetann Department Store did not have the
a store and not of product sold in various parts of the country. goods attached thereto.
This case must be differentiated from cases involving products
bearing such familiar names as "Colgate", "Singer". "Toyota", FABERGE v. IAC & CO BENG KAY
or "Sony" where the products are marketed widely in the GR 71189 November 4, 1992
Philippines. There is not product with the name "Isetann"
popularized with that brand name in the Philippines.
Facts of the Case
Faberge Men’s toiletries, aftershave, “BRUT”
Unless one goes to the store called Isetann in Manila, he would
lotion, soaps
never know what the name means. Similarly, until a Filipino
buyer steps inside a store called "Isetan" in Tokyo or
Hongkong, that name would be completely alien to him. The Pending
records show that among Filipinos, the name cannot claim to application Brut
be internationally well-known 33 and Device
Issue: Can Kabushiki invoke Paris Convention. – No.
Indeed, the Philippines is a signatory to this Treaty and, hence, Co Beng Men’s underwear “BRUTE”
we must honor obligation on matters concerning internationally Kay
known or well-known marks. However, this Treaty provision
clearly indicated the conditions which must exist before any
trademark owner can claim and be afforded rights such as the Faberge was using the trademark “Brut”, and also had pending
Kabushiki herein seeks and those conditions are that: application “Brut 33 and Device”. Co Beng Kay applied for
a. the mark must be internationally known or well registration of trademark for Brute. Faberge opposed the
known; application of Co Beng Kay.
b. the subject of the right must be a trademark, not a
patent or copyright or anything else; Faberge’s Allegations:
c. the mark must be for use in the same or similar kinds  There is similarity in appearance, sound and style of
of goods; and both marks.
d. the person claiming must be the owner of the mark.  It will cause confusion, mistake and even deception to
the buying public since both products will find
ISETANN registered its trademark in 1979. It has continuously themselves in the Men’s section.
used that name in commerce. It has established a goodwill  Co Beng Kay would be riding on Faberge’s good will
through extensive advertising. The people who buy at Isetann and reputation.
Store do so because of Isetann's efforts. There is no showing  If the “BRUTE” briefs are not of good quality, it will
that the Japanese firm's registration in Japan or Hongkong has surely damage and ruin the established goodwill and
any influence whatsoever on the Filipino buying public. reputation of Faberge.
COMMENT: So what Isetan Japan is saying that you cannot Faberge also invoked test of confusing similarity. Whether
register trademark of Isetan using the same word in another the use of such mark would likely cause confusion or mistake
country according to Paris Convention (Sec. 83) that they are on the part of the buying public. In short, the law does not
protected. The SC said yes, that the provision exists, but there require that the competing marks must be so identical as to
are conditions. You have to show that it is internationally produce actual error or mistake. It would be sufficient, for
well-known. purposes of the law that the similarity between the two labels
be such that there is a possibility or likelihood of the purchaser
The Paris Convention for the Protection of Industrial Property of the older brand mistaking the newer brand for it.
does not automatically exclude all countries of the world which
have signed it from using a tradename which happens to be
40
Co Beng Kay’s Defense application by Faberge in this aspect does not suffice and may
not vest an exclusive right in its favor that can ordinarily be
protected by the Trademark Law.
COMMENT: If you use the IPC, we apply Section 123(d) as

the goods are not similar [brief from toiletries].
FEBRUARY 26, 2019 | Transcribed by: Niel Vic Suaybaguio

& Luwalhati Villavicencio
LYCEUM OF THE PHILIPPINES, INC. vs. COURT OF

APPEALS
G.R. No. 101897. March 5, 1993.
DOCTRINE OF SECONDARY MEANING:

The goods upon which the conflicting trademarks are used are The doctrine of secondary meaning originated in the field of
clearly different and the intended purpose of such goods are trademark law. Its application has, however, been extended to
likewise not the same. corporate names sine the right to use a corporate name to the
exclusion of others is based upon the same principle which
A purchaser who is out in the market for the purpose of buying underlies the right to use a particular trademark or tradename.
BRUTE briefs would definitely be not mistaken or misled into Under the doctrine of secondary meaning, a word or phrase
buying instead BRUT after shave lotion or deodorant. originally incapable of exclusive appropriation with
reference to an article in the market, because geographical or
Co Beng Kay asserts asserts that briefs and cosmetics do not otherwise descriptive might nevertheless have been used so
belong to the same class nor do they have the same descriptive long and so exclusively by one producer with reference to this
properties such that the use of a trademark on one’s goods article that, in that trade and to that group of the purchasing
does not prevent the adoption and use of the same trademark public, the word or phrase has come to mean that the article
by others on unrelated articles of a different nature in line with was his produce. This circumstance has been referred to as
the ruling of this Court in Hickok Manufacturing Co., Inc. v. the distinctiveness into which the name or phrase has
Court of Appeals. evolved through the substantial and exclusive use of the same
for a considerable period of time. Consequently, the same
doctrine or principle cannot be made to apply where the
Issue: Whether Co Beng kay can register the trademark evidence did not prove that the business (of the plaintiff) has
“BRUTE” for briefs. – YES. continued for so long a time that it has become of consequence
and acquired a good will of considerable value such that its
[The discussion as to conflicting provisions of the old law was articles and produce have acquired a well-known reputation,
omitted]. and confusion will result by the use of the disputed name (by
the defendant).
Held: This also cited Section 4(d) of the old Trademark Law.
It is not difficult to discern from the foregoing statutory Facts:
enactments that Co Beng Kay may be permitted to register the Lyceum of the Philippines is an educational institution duly
trademark "BRUTE" for briefs produced by it notwithstanding registered with the SEC. It was first registered with the SEC on
Faberge’s vehement protestations of unfair dealings in September 21, 1950; it used the corporate name Lyceum of the
marketing its own set of items which are limited to: after-shave Philippines, Inc. and has used that name ever since.
lotion, shaving cream, deodorant, talcum powder and toilet
soap. In as much as Faberge has not ventured in the production Lyceum, in February 184, instituted proceedings before the SEC
of briefs, an item which is not listed in its certificate of to compel the private respondents in this case which are also
registration, plaintiff cannot and should not be allowed to feign educational institutions, to delete the word “lyceum” from their
that Co Beng Kay had invaded its exclusive domain. corporate names and permanently to enjoin them from using
“lyceum” as part of their respective names.
To be sure, it is significant that Faberge failed to show the so-
called "eloquent proof that Co Beng Kay indeed intended to Lyceum contented that the word “lyceum” has acquired
expand its mark "BRUT" to other goods. Even then, a mere secondary meaning on its favor with the result that that word,
41
although originally generic has become appropriable by Lyceum Facts:

of the Philippines to the exclusion of the other institutions. On September 15, 1988, San Miguel Corporation filed a
complaint against Asia Brewery for Infringement of
Issue: Whether or not the use by petitioner of "Lyceum" in its Trademark and Unfair Competition on account of the
corporate name has been for such length of time and with such latter’s BEER PALE PILSEN or BEER NA BEER product which has
exclusivity as to have become associated or identified with the been competing with SMC’s SAN MIGUEL PALE PILSEN for a
petitioner institution in the mind of the general public (or at share of the local beer market.
least that portion of the general public which has to do with
schools). Issues: Whether or not Trademark Infringement was
committed?
Held: NO.
Whether or not Unfair Competition was committed?
The number alone of the private respondents in the case at bar
suggests strongly that petitioner's use of the word "Lyceum" Held: NO.
has not been attended with the exclusivity essential for
applicability of the doctrine of secondary meaning. It may be Infringement of Trademark is a form of unfair competition.
noted also that at least one of the private respondents, i.e., the Under RA 166, the definition of Infringement implies that only
Western Pangasinan Lyceum, Inc., used the term "Lyceum" registered trademarks, trade names and service marks are
seventeen (17) years before the petitioner registered its own protected against infringement or unauthorized use by another
corporate name with the SEC and began using the word or others. The use of someone else’s registered mark, trade
"Lyceum." It follows that if any institution had acquired an name or service mark is unauthorized, hence, actionable, if it
exclusive right to the word "Lyceum," that institution would is done without the consent of the registrant.
have been the Western Pangasinan Lyceum, Inc. rather than
the petitioner institution. The registered trademark of SMC for its pale pilsen beer is:
San Miguel Pale Pilsen With Rectangular Hops and Malt
SC concluded that Lyceum of the Philippines is not entitled to Design. (Philippine Bureau of Patents, Trademarks and
a legally enforceable exclusive right to use the word “Lyceum Technology Transfer Trademark Certificate of Registration No.
“in its corporate name and that the other institutions may use 36103, dated 23 Oct. 1986.
“Lyceum” as part of their corporate names.
As described by the Trial Court,
To determine whether a given corporate name is … rectangular design [is] bordered by what appears to
"identical" or "confusingly or deceptively similar" with be minute grains arranged in rows of three in which there
another entity's corporate name, it is not enough to ascertain appear in each corner hop designs. At the top is a phrase
the presence of "Lyceum" or "Liceo" in both names. One must written in small print "Reg. Phil. Pat. Off." and at the bottom
evaluate corporate names in their entirety and when the name "Net Contents: 320 Ml." The dominant feature is the phrase
of petitioner is juxtaposed with the names of private "San Miguel" written horizontally at the upper portion. Below
respondents, they are not reasonably regarded as "identical" or are the words "Pale Pilsen" written diagonally across the middle
"confusingly or deceptively similar" with each other. of the rectangular design. In between is a coat of arms and the
phrase "Expertly Brewed." The "S" in "San" and the "M" of
Discussion: "Miguel," "P" of "Pale" and "Pilsen" are written in Gothic letters
It is very clear that the term “Lyceum” is not capable of with fine strokes of serifs, the kind that first appeared in the
appropriation because it is descriptive of an education. Of 1780s in England and used for printing German as distinguished
course, everybody has heard of Lyceum, but do we know of from Roman and Italic. Below "Pale Pilsen" is the statement
any other Lyceum? Hindi natin alam. But now we know that "And Bottled by" (first line, "San Miguel Brewery" (second line),
there are other schools named “Lyceum” and "Philippines" (third line).
ASIA BREWERY, INC. vs. On the other hand, ABI's trademark, as described by the trial
THE HON. COURT OF APPEALS and SAN MIGUEL court, consists of:
CORPORATION . . . a rectangular design bordered by what appear to
G.R. No. 103543 July 5, 1993 be buds of flowers with leaves. The dominant feature is "Beer"
written across the upper portion of the rectangular design. The
phrase "Pale Pilsen" appears immediately below in smaller
Infringement is determined by the "test of dominancy"
block letters. To the left is a hop design and to the right, written
rather than by differences or variations in the details of one
in small prints, is the phrase "Net Contents 320 ml."
trademark and of another.
Immediately below "Pale Pilsen" is the statement written in
three lines "Especially brewed and bottled by" (first line), "Asia
42
Brewery Incorporated" (second line), and "Philippines" (third SMC's being the first to use the steinie bottle does not give SMC
line) a vested right to use it to the exclusion of everyone else. Being
of functional or common use, and not the exclusive invention
There is hardly any dispute that the dominant feature of SMC's of any one, it is available to all who might need to use it within
trademark is the name of the product: SAN MIGUEL PALE the industry. Nobody can acquire any exclusive right to market
PILSEN, written in white Gothic letters with elaborate serifs at articles supplying simple human needs in containers or
the beginning and end of the letters "S" and "M" on an amber wrappers of the general form, size and character commonly
background across the upper portion of the rectangular design. and immediately used in marketing such articles.
On the other hand, the dominant feature of ABI's trademark is
the name: BEER PALE PILSEN, with the word "Beer" written in With regard to the white label of both beer bottles, ABI
large amber letters, larger than any of the letters found in the explained that it used the color white for its label because white
SMC label. presents the strongest contrast to the amber color of ABI's
bottle; it is also the most economical to use on labels, and the
The trial court perceptively observed that the word "BEER" does easiest to "bake" in the furnace. No one can have a monopoly
not appear in SMC's trademark, just as the words "SAN of the color amber for bottles, nor of white for labels, nor of
MIGUEL" do not appear in ABI's trademark. Hence, there is the rectangular shape which is the usual configuration of labels.
absolutely no similarity in the dominant features of both Needless to say, the shape of the bottle and of the label is
trademarks. unimportant. What is all important is the name of the product
written on the label of the bottle for that is how one beer may
Neither in sound, spelling or appearance can BEER PALE be distinguished from the others.
PILSEN be said to be confusingly similar to SAN MIGUEL PALE
PILSEN. No one who purchases BEER PALE PILSEN can possibly In this case, the names of the competing products are clearly
be deceived that it is SAN MIGUEL PALE PILSEN. No evidence different and their respective sources are prominently printed
whatsoever was presented by SMC proving otherwise. on the label and on other parts of the bottle, mere similarity in
the shape and size of the container and label, does not
The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN constitute unfair competition… The fact that SMC's bottle is
is bottled in amber-colored steinie bottles of 320 ml. capacity registered under R.A. No. 623 (as amended by RA 5700, An Act
and is also advertised in print, broadcast, and television media, to Regulate the Use of Duly Stamped or Marked Bottles, Boxes,
does not necessarily constitute unfair competition. Casks, Kegs, Barrels and Other Similar Containers) simply
prohibits manufacturers of other foodstuffs from the
Unfair competition is the employment of deception or any unauthorized use of SMC's bottles by refilling these with their
other means contrary to good faith by which a person shall pass products. It was not uncommon then for products such
off the goods manufactured by him or in which he deals, or his as patis (fish sauce) and toyo (soy sauce) to be sold in recycled
business, or services, for those of another who has already SAN MIGUEL PALE PILSEN bottles. Registration of SMC's
established goodwill for his similar goods, business or services, beer bottles did not give SMC a patent on the steinie or
or any acts calculated to produce the same result. on bottles of similar size, shape or color.
In this case, the question to be determined is whether ABI is The record does not bear out SMC's apprehension that BEER
using a name or mark for its beer that has previously come to PALE PILSEN is being passed off as SAN MIGUEL PALE PILSEN.
designate SMC's beer, or whether ABI is passing off its BEER This is unlikely to happen for consumers or buyers of beer
PALE PILSEN as SMC's SAN MIGUEL PALE PILSEN. generally order their beer by brand. As pointed out by ABI's
counsel, in supermarkets and tiendas, beer is ordered by
The universal test question is whether the public is likely to brand, and the customer surrenders his empty replacement
be deceived. bottles or pays a deposit to guarantee the return of the
empties. If his empties are SAN MIGUEL PALE PILSEN, he will
Nothing less than conduct tending to pass off one man's goods get SAN MIGUEL PALE PILSEN as replacement. In sari-sari
or business as that of another will constitute unfair competition. stores, beer is also ordered from the tindera by brand. The
Actual or probable deception and confusion on the part of the same is true in restaurants, pubs and beer gardens — beer is
customers by reason of defendant's practices must always ordered from the waiters by brand.
appear.
The use of ABI of the steinie bottle, similar but not identical to
the SAN MIGUEL PALE PILSEN bottle, is not unlawful. SMC did
not invent but merely borrowed the steinie bottle from abroad
and it claims neither patent nor trademark protection for that
bottle shape and design.
43
EMERALD GARMENT MANUFACTURING CORPORATION

vs. COURT OF APPEALS In this case the SC used the holistic test, citing that stylistic Mr.
G.R. No. 100098. December 29, 1995. Lee should be considered as a whole. Further that since the
product in this case was jeans, hence the ordinary purchaser
cannot be deceived because when a purchaser buys jeans, they
The applicable law here is RA 166 or the Trademark law.
will automatically ask for a specific brand. Furthermore, the SC
said that the similarities of the trademarks in question are not
Facts:
sufficient as to likely cause deception and confusion
H.D. Company Incorporated is a foreign corporation registered
tantamount to infringement. Further, the SC cited Section 4 of
in Delaware, USA. It filed a petition for cancellation of
RA 166, saying that "Lee" is a surename, hence H.D. cannot
registration with the Bureau of Patents, Trademarks and
acquire exclusive ownership over the use of the said term.
Technology Transfer against Emerald Garment Manufacturing
Corporation which was the registered owner of the trademark
Comment:
“STYLISTIC MR.LEE”. So Emerald Garment is a domestic
In holistic test, you look at it as a whole. But unlike in the San
corporation under the Philippine law. H.D. cited Article 8 of the
Miguel case, they looked at the dominant features. Kung
Paris Convention Act and Section 36 of RA 166, citing that the
dominancy test ang ginamit dito, talagang klaro noh? pati yung
Sytlistic trademark is confusingly similar with its trademark Lee,
font kinopya. In this case, not confusingly similar.
which is still registered in the Philippines and was not
abandoned. It’s used on jeans. Lee Jeans.
PROLINE SPORTS vs. QUESTOR

G.R. No. 118192 October 23, 1997
Facts:
On December 31, 1971, Questor Corporation (Questor) became
the owner of the trademark “Spalding” appearing in sporting goods,
implements and apparatuses.
Pro Line Sports Center, Inc. (Pro Line) is the exclusive distributor
of “Spalding” sports products in the Philippines.
Universal Athletics and Industrial Products, Inc. (Universal) is a

domestic corporation engaged in the sale and manufacture of
Please note that this case is under RA 166, so there was still an sporting goods while Monico Sehwani is the president of the
issue of supplemental registry. corporation.
On February 11, 1981, PRO LINE sent a letter-complaint to the

Issue: Whether the trademark “Stylistic Mr. Lee” is confusingly
National Bureau of Investigation (NBI) regarding the alleged
similar with the trademark Lee resulting to trademark manufacture of fake "Spalding" balls by Universal.
infringement.
Held:
The Supreme Court ruled that No. There is no trademark
infringement. In this case the SC cited section 22 of RA 166,
citing what constitutes infringement. The SC highlighted that
colorable imitation exists and it must be decided on its own
merits or a case to case basis. Further, the SC defined that
Colorable Imitation means that such a close or ingenious
imitation as to be calculated to deceive the ordinary purchasers.
Further in this case the SC cited the two tests in determining
whether there is colorable imitation. It is the Dominancy Test
The good attached are balls for Baskteball, Volleyball etc.
and Holistic Test.
On February 23 a search warrant was authorized. In the course
of the search they were able to seize 1,200 basketballs and
1. The dominancy test is defined as such test that focuses on the
volleyballs. They sealed and padlocked the insturments at
similarity of the prevalent features of the competing trademark
which might cause confusion or deception thus constitutes Universal's Factory that were used to manufacture the fake
infringement. "Spalding Products". Therafter Pro line was Questor filed a
2. The holistic test is when the entirety of the marks in question criminal complaint for unfair competition against Sehwani.
must be considered in determining confusing similarity. The complaint was dropped because it was doubtful whether
Questor acquired registration rights over the marks "Spalding".
44
Sehwani citing Chapter 1, Rule 43 of the Rules of Practice on

Trademark Cases which requires that the mark applied for be CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
used on applicant's goods for at least 60 days prior to the filing and NSR RUBBER CORPORATION
of the trademark application and the applicant must show
substantial investment in the use of the mark. G.R. No. 120900 July 20, 2000
Sehwani was the one who filed an application for registration.
Comment:
Issue 1: The issue here is whether Sehwani can register
So what comes to your mind when hear the word Canon?
"Spalding" as a trademark of its Basketballs and Volleyballs?
Camera, Printers. Lets see what this case is all about.
Held: The SC said No.
It is because Splading is an internationally well-known brand. Facts:
Sehwani is trying to register a mark that is identical to an We have Canon Kabushiki which is duly established and is
internationally well-known brand for its fake balls. existing in Japan. NSR Rubber Corporation is a domestic
corporation here in the Philippines and they are makers of
Issue 2: Is selling an indispensable element of unfair Sandals. Here, NSR Rubber Corporation wants to register the
competition? trademark "Canon" for their product sandals. Canon opposed
Held: to the said registration and said that you cannot use the
Art. 189. Unfair competition, fraudulent registration of trade- trademark because it will confuse its buyers and the market
mark, trade-name or service mark, fraudulent designation of and such will cause damages to them because they registered
origin, and false description. — The penalty provided in the Canon in the Philippines for paints, chemical products, toner
next proceeding article shall be imposed upon: and dye stuff. It belongs to Class 2 under the Niece
1. Any person who, in unfair competition and for the purposes classification, however the products of NSR are
of deceiving or defrauding another of his legitimate trade or the sandals belonging to Class 25.
public in general, shall sell his goods giving them the general
appearance of goods of another manufacturer or dealer, either Issue: Can NSR Corporation register its tademark "Canon"
as to the goods themselves, or in the wrapping of the packages here in the Philippines?
in which they are contained or the device or words thereon or
in any other features of their appearance which would be likely Held: Yes. Ordinarily, the owner of the trademark is entitled to
to induce the public to believe that the goods offered are those the protection of the Trademark Law but if it is used by another
of a manufacturer or dealer other than the actual manufacturer applicant but for a different product which is dissimilar to your
or dealer or shall give other persons a chance or opportunity to product, you can actually register your mark. Clearly, there is a
do the same with a like purpose. world of difference between the paints, chemical products,
So it was the contention of Sehwani that he wasnt selling the toner and dyestuff of Canon Kabushiki and the sandals of NSR
fake balls. The SC here said: Rubber.
 To hold that the act of selling is an indispensable
element of the crime of unfair competition is illogical because However, Canon Kabushiki said, that "you are limiting us
if the law punishes the seller of imitation goods, then with more because maybe in the future we want to make sandals. We
reason should the law penalize the manufacturer. have made shoe polish before." The Supreme here emphasized
 In U. S. v. Manuel, the Court ruled that the test of that Canon Kabushiki failed to show proof or evidence that
unfair competition is whether certain goods have been Canon Kabushiki had actual use of the Canon trademark to its
intentionally clothed with an appearance which is likely to products like the polish etc.
deceive the ordinary purchasers exercising ordinary care.
 In this case, it was observed by the Minister of Justice In their attempt to protect their mark, they invoked the
that the manufacture of the "Spalding" balls was obviously protection of Article 8 of the Paris Convention which says that
done to deceive would-be buyers. " A tradename shall be protected in all the countries of the
Union without the obligation of filing or registration, whether
Comment: or not it forms part of the trademark."
This case was decided under the old law plus, if you remember
the Intellectual Property Code repealed the provisions of unfair In 1983 the following is the memorandum that was issued by
competition in the Revised Penal Code. So this was based on the Minister of Trade. The memorandum reads:
the criminal aspect of the Revised Penal Code. So just because
Sehwani is merely manufacturing the fake balls with the mark 1. the mark must be internationally known;
"Spalding" and not really proven to be actually selling them, 2. the subject of the right must be a trademark, not a
doesnt mean that he is not committing unfair competition. The patent or copyright or anything else;
manufacturer, the distributor, the seller, the agent, everyone 3. the mark must be for use in the same or similar class
who participates in the act of producing/selling etc. fake items of goods;
using the trademark of another should be included in those that 4. the person claiming must be the owner of the
can be held liable for unfair competition. mark.“
45
In this case, it was not similar so it cannot be registered. That The Director of Patents ruled adversely against the Amigo
is also in the case of Isettan. Manufacturing, Inc. It applied the rule of idem sonans and it
also found the existence of a confusing similarity in appearance
Comments: between two trademarks.
The law applied here is the old one. If you want to apply RA Amigo here claims that it started using the actual use of the
8293, was canon considered and internationally well-known trademark Gold Top and Device in September 1956, while
mark? No. If you apply RA 8293, if Canon was an internationally Cluett Peabody began using the trademark Fold Toe only on
well-known mark which is registered in the Philippines, no one May 1962.
can use a similar or identical or a confusingly similar mark for
any manner whether similar or dissimilar. Canon was
Issue 1: Who first used the trademark?
considered a registered in the Philippines under 123(d). So
because NSR was applying for the trademark Canon for goods
belonging to a different class, then this may be registered if Held: The court ruled that Cluett Peabody first used the
you apply RA 8293. That's why RA 8293 is clarifying the trademark on the basis of the registration of its mark. The
ambiguity of RA 166. So anyway, we are already on your way registration of the mark in favor of Cluett Peabody constitutes
to RA 8293 cases which are more easier to understand why the as prima facie evidence of its ownership of those marks, the
Supreme Court ruled in a certain way. dates of appropriation and the validity of other pertinent faces
stated therein. Also Amigo registered its trademark only with
AMIGO MANUFACTURING, INC. vs. CLUETT the supplemental register.
PEABODY CO., INC.
Comment:
G.R. No.139300 March 14, 2001 In other words, first to register is the foreign corporation.
Now, Amigo assails that the finding of the Director of Patents

The applicable law of this case is RA 166.
that its trademark is confusingly similar to that of Cluett
Peabody and points out that the Director of Patents erred in its
Facts:
 Cluett Peabody Co., Inc. (a New York corporation) application of the idem sonans rule, claiming that the two
filed for the cancellation of trademark against Amigo trademarks do not sound alike.
Manufacturing Inc. (a Philippine corporation)
 Cluett Peabody claims of exclusive ownership (as Issue 2: Is Cluett Peabody's trademark confusingly similar to
successor in interest of Great American Knitting Mills, that of Amigo's? or, Should Amigo's trademark be canceled for
Inc.) of the following trademark and devices, as used being confusingly similarr with that of Cluett Peabody's?
on men’s socks:
1. a.GOLD TOE, under Certificate of Held: Yes.
Registration No. 6797 dated
September 22, 1958; The Bureau of Patents, however, did not rely on the idem
a.DEVICE, representation of a sonans test alone in arriving at its conclusion. This fact is shown
sock and magnifying glass on in the following portion of its Decision:
the toe of a sock, under With respect to the issue of confusing
Certificate of Registration No.
similarity between the marks of the Amigo
13465 dated January 25, 1968;
and that of the Cluett Peabody applying the
2. DEVICE, consisting of a plurality
tests of idem sonans, the mark GOLD TOP
of gold colored lines arranged
in parallel relation within a & DEVICE is confusingly similar with the
triangular area of toe of the mark GOLD TOE. The difference in
stocking and spread from each sound occurs only in the final letter at
other by lines of contrasting the end of the marks. For the same
color of the major part of the reason, hardly is there any variance in
stocking under Certificate of their appearance. GOLD TOE and
Registration No. 13887 dated May GOLD TOP are printed in identical
9, 1968; and lettering. Both show
3. LINENIZED, under Certificate of [a] representation of a man’s foot
Registration No. 15440 dated April wearing a sock. GOLD TOP
13, 1970. blatantly incorporates Cluett
Peabody’s LINENIZED which by itself
Amigo's Trademark and Device Gold Top, is also linenized and is a registered mark.
also has a magnified design of the socks garter.
46
The Bureau considered the drawings and the labels, the

appearance of the labels, the lettering, and the Likewise, a verified Notice of Opposition was filed by
representation of a man’s foot wearing a Nestle Philippines, Inc., a Philippine corporation and a licensee
sock. Obviously, its conclusion is based on the totality of of Societe Des Produits Nestle S.A., against CFC’s application
the similarities between the parties trademarks and not for registration of the trademark FLAVOR MASTER. Nestle
on their sounds alone. claimed that the use, if any, by CFC of the trademark FLAVOR
MASTER and its registration would likely cause confusion in the
A resort to either the Dominancy Test or the Holistic Test shows trade; or deceive purchasers and would falsely suggest to the
purchasing public a connection in the business of Nestle, as the
that colorable imitation exists between Cluett Peabody’s Gold
dominant word present in the three (3) trademarks is
Toe and Amigo’s Gold Top. When compared, most of the
"MASTER"; or that the goods of CFC might be mistaken as
features of Amigo’s trademark are strikingly similar to those of having originated from the latter.
Cluett Peabody’s.
CFC argued that its trademark, FLAVOR MASTER, is
There are some minor differences between the two sets of not confusingly similar with Nestle’s trademarks, MASTER
marks. The similarities, however, are of such degree, number ROAST and MASTER BLEND, alleging that, "except for the word
and quality that the overall impression given is that the MASTER (which cannot be exclusively appropriated by any
two brands of socks are deceptively the same, or at person for being a descriptive or generic name), the other
least very similar to each another. words that are used respectively with said word in the three
trademarks are very different from each other – in meaning,
An examination of the products in question shows that: spelling, pronunciation, and sound". CFC further argued that its
 their dominant features are gold checkered lines trademark, FLAVOR MASTER, "is clearly very different from any
against a predominantly black background and a of Nestle’s alleged trademarks MASTER ROAST and MASTER
representation of a sock with a magnifying glass. BLEND, especially when the marks are viewed in their entirety,
 both products use the same type of lettering. by considering their pictorial representations, color schemes
 both also include a representation of a mans foot and the letters of their respective labels."
wearing a sock and the word linenized with arrows
printed on the label. Issue: Whether or not the trademark “FLAVOR MASTER” is a
 the names of the brands are similar -- Gold Top and colorable imitation of the trademarks “MASTER ROAST” and
Gold Toe. “MASTER BLEND”. – Yes.
 Moreover, it must also be considered that both parties
are engaged in the same line of business. Rule: The Supreme Court applied Section 4 (d) of Republic Act
 Clearly, Amigo violated the applicable trademark No. 166 or the Trademark Law, as amended, which was in force
provisions during that time. at the time. Said provision provides that the owner of a
trademark shall have the right to register the same unless it:
Comment: In this case, same products, very similar
trademark, so obviously there's no controversy here. You xxx xxx xxx
cannot object, that they are confusingly similar and the test
(d) Consists of or comprises a mark or trade-name which so
applied was the Dominancy test.
resembles a mark or trade-name registered in the Philippines
or a mark or trade-name previously used in the Philippines by
FEBRUARY 28, 2019 | Transcribed by: Cavin Jhon Cabarlo another and not abandoned, as to be likely, when applied to or
& Christine Paulma used in connection with the goods, business or services of the
applicant, to cause confusion or mistake or to deceive
purchasers;
SOCIETE DES PRODUITS NESTLE VS. CA The law prescribes a more stringent standard in that
GR 112012 (2001) there should not only be confusing similarity but that it should
not likely cause confusion or mistake or deceive purchasers.
On January 18, 1984, CFC Corporation filed an
application for the registration of the trademark "FLAVOR Colorable imitation denotes such a close or ingenious
MASTER" for instant coffee. The application was published in imitation as to be calculated to deceive ordinary persons, or
the Official Gazette. such a resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives,
Societe Des Produits Nestle, S.A., a Swiss company as to cause him to purchase the one supposing it to be the
registered under Swiss laws and domiciled in Switzerland, filed other. In determining if colorable imitation exists, jurisprudence
an unverified Notice of Opposition, claiming that the trademark has developed two kinds of tests - the Dominancy Test and the
of CFC Corporation “FLAVOR MASTER” is "confusingly similar to Holistic Test.
its trademarks for coffee and coffee extracts, to wit: MASTER
ROAST and MASTER BLEND."
47
The test of dominancy focuses on the similarity of SHANGRI-LA VS. CA GR 111580 (2001)
the prevalent features of the competing trademarks which
might cause confusion or deception and thus constitute
infringement. On the other side of the spectrum, the holistic Shangri-La is the operator and owner of Shangri-La
test mandates that the entirety of the marks in question must hotels which originated in Singapore. It uses the term “Shangri-
be considered in determining confusing similarity. La” in its hotels together with the S logo.
The totality or holistic test only relies on visual Developers Group of Companies, Inc. (DGC) was able
comparison between two trademarks whereas the dominancy to register the term “Shangri-La” in the Philippines together
with the S logo for its Chinese restaurant business at the time
Shangri-La vs. DGC DGC vs. Shangri-La when Shangri-La has not yet registered any of its trademarks
(Cancellation Case) (Infringement Case) in the Philippines.
Filed on June 21, 1988 when Filed on April 15, 1991 when
Shangri-La group found out Shangri-La used the term When Shangri-La wanted to build a hotel in the
that DGC was able to “Shangri-La” and the “S” Philippines, it found out that the term “Shangri-La” and the “S”
register the trademarks. logo in its EDSA Hotel similar logo was already registered under the name of DGC. Thus,
to that registered under Shangri-La group filed a petition for the cancellation of the
DGC. registration of the "Shangri-La" mark and "S" device/logo
The Shangri-La Group DGC alleged that it is the issued to the Developers Group of Companies, Inc., on the
alleged that it is the legal registered owner of the ground that the same was illegally and fraudulently obtained
and beneficial owners of the trademark and is entitled to and appropriated for the latter's restaurant business.
subject mark and logo; that protect its rights excluding
it has been using the said others from using its At the same time, Shangri-La group started to
mark and logo for its registered trademark. construct its hotel, the EDSA Shangri-La Hotel wherein they
corporate affairs and used that same name and “S” logo. Pending the petition for
business since March 1962 cancellation against DGC, Shangri-La Group filed its own
and caused the same to be application for registration of the subject mark and logo. The
specially designed for their Developers Group filed an opposition to the application.
international hotels in 1975,
much earlier than the Because of the use of Shangri-La group of the term
alleged first use thereof by “Shangri-La” and the “S” logo in its EDSA Hotel, DGC filed an
the Developers Group in infringement case against the Shangri-La group.
1982.
test relies not only on the visual but also on the aural and In summary,
connotative comparisons and overall impressions between the
two trademarks. Shangri-La moved for the suspension of the
proceeding in the infringement case on the ground that its
Thus, the Supreme Court applied the Dominancy Test cancellation case is still pending.
in this case.
Issue: Can the two cases (the cancellation case and the
The word MASTER is printed across the middle portion infringement case) proceed at the same. – Yes.
of the label in bold letters almost twice the size of the printed
word ROAST. Further, the word MASTER has always been given Rule: The cancellation case is filed with the Bureau of Legal
emphasis in the TV and radio commercials and other Affairs of the Intellectual Property Office to cancel the existing
advertisements made in promoting the trademark of DGC. On the other hand, the infringement case is
product. This can be gleaned from the fact filed before the Special Commercial Court.
that Robert Jaworski and Atty. Ric Puno
Jr.., the personalities engaged to promote Section 151.2 of Republic Act 8293 provides that “the
the product, are given the titles Master of earlier filing of petition to cancel the mark with the Bureau of
the Game and Master of the Talk Show, Legal Affairs shall not constitute a prejudicial question that
respectively. In due time, because of these must be resolved before an action to enforce the rights to same
advertising schemes the mind of the buying registered mark may be decided.”
public had come to learn to associate the
word MASTER with the opposer’s goods. In the case at bar, the filing of the cancellation case
by the Shangri-La Group for the cancellation of the "Shangri-
In addition, the word "MASTER" is neither a generic La" mark and "S" device/logo cannot effectively bar the
nor a descriptive term. As such, said term cannot be invalidated subsequent filing of an infringement case by registrant
as a trademark and, therefore, may be legally protected. Developers Group.
48
The Certificate of Registration from which the On July 18 1985, the PBPTT allowed registration of the “Big
infringement case is based remains valid and subsisting for as Mac” mark in the Principal Register on its Home Registration in
long as it has not been cancelled by the Bureau or by an the United States. McGeorge Food Industries, a domestic
infringement court. As such, Developers Group's Certificate of corporation, is McDonald’s Philippine franchisee.
Registration in the principal register continues as "prima facie
evidence of the validity of the registration, the registrant's L.C. Big Mak Burger, Inc. is a domestic corporation which
ownership of the mark or trade-name, and of the registrant's operates fast-food outlets and snack vans in Metro Manila and
exclusive right to use the same in connection with the goods, nearby provinces. L.C Big Mak Burger’s menu includes
business or services specified in the certificate." Since the hamburger sandwiches and other food items. Francis Dy, Edna
certificate still subsists, Developers Group may thus file a Dy, Rene Dy et.al are the incorporators, stockholders and
corresponding infringement suit and recover damages from any directors of the said corporation.
person who infringes upon the former's rights.
L.C Big Mak Burger, Inc. applied with the PBPTT for the
While the two cases may proceed independently of registration of the “Big Mak” mark for its hamburger
each other, Section 161 of the RA 8293 provides that: sandwiches. McDonald’s opposed the application on the ground
that Big Mak was a colorable imitation of its registered “Big
SEC. 161. Authority to Determine Right to Registration Mac” mark for the same food products. Having received no
– In any action involving a registered mark the court may reply, McDonald’s sued L.C. Big Mak Burger, Inc. and its
determine the right to registration, order the cancellation of the incorporators for trademark infringement and unfair
registration, in whole or in part, and otherwise rectify the competition.
register with respect to the registration of any party to the
action in the exercise of this. Issue (1): Is L.C. Big Mak Burger, Inc. liable for trademark
infringement? – Yes.
Section 161 merely emphasized that both cases may
proceed independently of each other. However, the Special Held: Section 22 of R.A No. 166 as amended defines trademark
Commercial Court has the power to order the cancellation of infringement as follows:
the trademark or uphold its validity. Should it uphold the
validity of the trademark, the cancellation case pending before Infringement, what constitutes.
Any person who (1) shall use, without the consent of the registrant, any
the Bureau of Legal Affairs will become moot. The proper reproduction, counterfeit, copy or colorable imitation of any registered mark or
remedy then is to appeal the decision of the Regional Trial trade-name in connection with the sale, offering for sale or advertising of any
Court with the Court of Appeals. goods, business or services on or in connection with which such use is likely to
cause confusion or mistake or to deceive purchasers or others as to the source
or origin of such goods or services, or identity of such business; or (2) reproduce,
You know already that if there’s a registration for the counterfeit, copy, or colorably imitate any such mark or trade-name and apply
trademark with a logo which go together, --- registration yan. such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or
So here, na-cancel yung kanilang "S" logo. But they were able in connection with such goods, business or services, shall be liable to civil action
to keep the term Shangri-La; but they are to use a different by the registrant for any or all of the remedies herein provided.
logo. Because their logo was cancelled. Now, you know very
well that they have the Makati Shangri-La and then the To establish trademark infringement, the following elements
Shangri-La in Cebu, using the same "S" logo. must be shown:
(1) validity of the plaintiff’s mark;
MCDONALD’S v. LC BIG MAK BURGER (2) plaintiffs ownership of the mark; and
GR 143993 (2004) (3) the use of the mark or its colorable imitation by the
alleged infringer results in likelihood of confusion.
Facts: McDonald’s Corporation is a corporation organized
Of these, it is the element of likelihood of confusion that is the
under the laws of Delaware, United States. McDonald’s owns a
gravamen of trademark infringement.
family of marks including the “Big Mac” mark for its double-
decker hamburger sandwich. McDonald’s registered this
In deciding that LC Big Mak Burger was liable for infringement,
trademark with the United States Trademark Registry on
the SC used the dominancy test and expressly ruled that the
October 16, 1979.
holistic test has already been rejected in the 2001 case of
Societe Des Produits Nestl, S.A vs. CA in this view: the totality
Based on this Home Registration, McDonald’s applied for the
or holistic test is contrary to the elementary postulate of the
registration of the same mark in the Principal Register of the
law on trademarks and unfair competition that confusing
then Philippine Bureau of Patents, Trademarks and Technology
similarity is to be determined on the basis of visual, aural,
(PBPTT), now the Intellectual Property Office (IPO). Pending
connotative comparisons and overall impressions engendered
approval of its application, McDonald’s introduced its Big Mac
by the marks in controversy as they are encountered in the
hamburger sandwiches in the Philippine market in September
realities of the marketplace.
1981.
49
The test of dominancy is now explicitly incorporated into law in

Section 155.1 of the Intellectual Property Code which defines Section 29(a) also provides that the defendant gives "his goods
infringement as the colorable imitation of a registered mark or the general appearance of goods of another manufacturer." L.C
a dominant feature thereof. Big Mac Burger’s goods are hamburgers which are also the
goods of McDonald’s.
Applying the dominancy test, the Court finds that Big Mak’s use
of the “Big Mac” mark results in likelihood of confusion. If L.C Big Mac Burger sold egg sandwiches only instead of
hamburger sandwiches, their use of the "Big Mak" mark would
First, Big Mak sounds exactly the same as Big Mac. not give their goods the general appearance of McDonald’s "Big
Second, the first word of Big Mak is exactly the same as the Mac" hamburgers. In such case, there is only trademark
first word in Big Mac. infringement but no unfair competition. However, since L.C Big
Third, the first two letters in Mak are the same as the first two Mac Burger chose to apply the "Big Mak" mark on hamburgers,
letters in Mac. just like McDonald’s use of the "Big Mac" mark on hamburgers,
Fouth, the last letter in Mak while a “k” sounds the same as a L.C Big Mac Burger has obviously clothed their goods with the
“c” when the word Mak is pronounced. general appearance of McDonald’s goods.
Fifth, in Filipino, the letter k replaces c in spelling.
There is actually no notice to the public that the "Big Mak"
Cleary, L.C Big Mak Burger Inc has adopted in Big Mak not hamburgers are products of "L.C. Big Mak Burger, Inc." and not
only the dominant but also almost all the features of Big those of McDonald’s who have the exclusive right to the "Big
Mac. Applied to the same food product of hamburgers, the two Mac" mark. This clearly shows LC Big Mac Burger’s intent to
marks will likely result in confusion in the public mind. deceive the public. Had LC Big Mac Burger placed a notice on
their plastic wrappers and bags that the hamburgers are sold
Issue (2): Is L.C. Big Mak Burger, Inc. liable for unfair by “LC Big Mak Burger, Inc.” then they could validly claim that
competition? – Yes. they did not intent to deceive the public. L.C Big Mac Burger
however, did not give such notice.
Held: Section 29 of RA 166 defines unfair competition, thus:
Comment: LC Big Mak is riding on the popularity of
Any person who will employ deception or any other means contrary to good faith McDonald's and people, the buying public, could be very likely
by which he shall pass off the goods manufactured by him or in which he deals,
or his business, or services for those of the one having established such goodwill,
deceived into buying the LC Big Mak kasi nga mas mura siya.
or who shall commit any acts calculated to produce said result, shall be guilty of "Ay eto ata yung mura na version ng McDonald's." That is unfair
unfair competition, and shall be subject to an action therefor. competition.
In particular, and without in any way limiting the scope of unfair competition, the
following shall be deemed guilty of unfair competition: MCDONALD’S v. MACJOY
GR 166115 (2007)
(a) Any person, who in selling his goods shall give them the general appearance
of goods of another manufacturer or dealer, either as to the goods themselves
or in the wrapping of the packages in which they are contained, or the devices Facts: MacJoy Fastfood Corporation is engaged in the sale
or words thereon, or in any feature of their appearance, which would be likely to
influence purchasers to believe that the goods offered are those of a
of fast food products in Cebu City. It filed with the Bureau of
manufacturer or dealer, other than the actual manufacturer or dealer, or who Patents, Trademarks and Technology Transfer (now IPO) an
otherwise clothes the goods with such appearance as shall deceive the public and application for the registration of the trademark “MACJOY &
defraud another of his legitimate trade, or any subsequent vendor of such goods
DEVICE” for fried chicken, chicken barbeque, burgers, fries,
or any agent of any vendor engaged in selling such goods with a like purpose;
spaghetti, palabok, tacos, sandwiches, halo-halo and steaks
(b) Any person who by any artifice, or device, or who employs any other means under classes 29 and 30 of the International
calculated to induce the false belief that such person is offering the services of Classification of Goods. It is for food and ingredients of
another who has identified such services in the mind of the public; or
food.
(c) Any person who shall make any false statement in the course of trade or who
shall commit any other act contrary to good faith of a nature calculated to McDonald’s Corporation is a corporation duly organized and
discredit the goods, business or services of another.
existing under the laws of the State of Delaware, USA. It fiiled
a verified Notice of Opposition against MacJoy’s application
Section 29(a) expressly provides that the similarity in the claiming that it resembles their logo which is the Golden Arches
general appearance of the goods may be in the "devices or or "M" design and their marks “Mcdonalds”, “McChicken”,
words" used on the wrappings. “McFries”, “BigMac”. “Mcdo”, “McSpaghetti”, “McSnack”, and
“Mc”.
L.C Big Mac Burger have applied on their plastic wrappers and
bags almost the same words that McDonald’s use on their (Comment: So all of those Mc – McFries, McChicken, they are
styrofoam box. What attracts the attention of the buying public all registered individually.)
are the words "Big Mak" which are almost the same, aurally
and visually, as the words "Big Mac." The dissimilarities in the McDonald’s allegations:
material and other devices are insignificant compared to the 1. “MACJOY & DEVICES” resembles its corporate logo
glaring similarity in the words used in the wrappings. 2. It resembles the McDonalds marks
50
3. The mark would falsely tend to suggest a connection

or affiliation with McDonalds services and products, Issue (2): Who between parties has the rightful claim of
constituting a fraud upon the general public and ownership over the said marks? – McDonald’s Corporation.
further cause the dilution of the distinctiveness of its
registered and internationally recognized McDonalds Held: A mark is valid if it is distinctive and hence not barred
marks to its prejudice and irreparable damage. from registration under the Trademark Law. However, once
registered, not only the mark’s validity but also the registrant’s
MACJOY’S contentions: ownership thereof is prima facie presumed.
1. Used the mark for many years in good faith
2. Spent large sums of money for the mark’s extensive RA 166
promotion, especially in Cebu City Sec. 37. Rights of Foreign Registrants. —Persons who are nationals of, domiciled
in, or have a bona fide or effective business or commercial establishment in any
3. They have been doing business long before foreign country, which is a party to an international convention or treaty relating
McDonalds open its outlet in Cebu. (1987 – Macjoy; to marks or trade names on the repression of unfair competition to which the
1992 – McDonald’s) Philippines may be a party, shall be entitled to the benefits and subject to the
4. It would not confuse affiliation with McDonalds provisions of this Act . . . x x x
“Trade names of persons described in the first paragraph of
because of the differences in the design of the two this section shall be protected without the obligation of filing
marks. or registration whether or not they form parts of marks. ”
Issue (1): Whether or not there is confusing similarity McDonald’s was able to register its marks successively:
between the two marks?– Yes. “McDonald’s” – October 4, 1971
“M” or the Golden Arches design (logo) – June 30, 1977
Held: RA 166
Section 4. Registration of trademarks, trade names and service-marks on the MacJoy’s registration of its trademark “MACJOY & DEVICE” was
principal register. – There is hereby established a register of trademarks, trade filed only on March 14, 1991 albeit the date of its first use in
names and service-marks which shall be known as the principal register. The
owner of the trade-mark, trade name or service-mark used to distinguish his
the Philippines in Dec. 7, 1987.
goods, business or services of others shall have the right to register the same on
the principal register, unless it: (Atty Suarez: Macjoy cannot register because its mark is
xxx xxx xxx confusingly similar to an already registered mark by
(d) Consists of or comprises a mark or trade name which so resembles a mark or
trade name registered in the Philippines or a mark or trade name name previously McDonald's.)
used in the Philippines by another and not abandoned, as to be likely, when
applied to or used in connection with the goods, business or services of the As for MacJoy's other contentions, it said that it was the first
applicant, to cause confusion or mistake or to deceive purchasers.
user of the mark. The SC said that there's prima facie use in
Reporter’s note: If you notice, the law cited here is RA 166 even commerce in the Philippines, not merely in Cebu. MacJoy also
though this case is dated 2007. This is because Macjoy filed said that the word "Mac" cannot be registered because it is a
their application in 1992 prior to the effectivity of the personal name which may not be monopolized. "MacJoy" is
Intellectual Property Code. based on the name of its president's niece, Scarlett Yu Carcell.
The SC said that it cannot be denied that there is absolutely no
In determining confusing similarity, the SC used the dominancy connection between the name "Scarlett Yu Carcell" and the
test citing the case of McDonald’s v LC Big Mak. McDonalds word "Mac". The only logical conclusion deducible therefrom is
Corp. v. LC Big Mak Burger, Inc & Societe Des Produits that MacJoy would want to ride high on the established
Nestle, S.A. v. CA both applied the dominancy test wherein it reputation and goodwill of the McDonald's marks.
considers the dominant features in the competing marks in
determining whether they are confusingly similar. It focused on Comment: Opposition to the Registration of trademark of
the “M’, the “Mc”. MacJoy. So obviously MacJoy is a combination of McChicken
and Chickenjoy.
The SC held that besides and most importantly, both
trademarks are used in the sale of fastfood products. MacJoy’s 246 CORPORATION v. DAWAY
trademark application for the “MACJOY & DEVICE” trademark GR 157216 (2003)
covers goods under Classes 29 and 30 of the International
Classification of Goods, namely, fried chicken, chicken Facts: 246 Corporation is engaged in the entertainment
barbeque, burgers, fries, spaghetti, etc. Likewise, the business - Rolex Music Lounge, KTV, Disco & Party Club; Rolex
Mcdonalds’ trademark registration for the MCDONALD’S is engaged in the manufacturing (of watches) business.
marks in the Philippines covers goods which are similar if
not identical to those covered by MacJoy’s application. On November 26, 1998, Rolex filed a case of trademark
infringement against 246 Corporation alleging that 246
Applying the dominancy test, the Court finds that Corporation used the mark "Rolex" in their business Rolex
MCDONALDS and MACJOY marks are confusingly similar Music Lounge and in their advertisement for the business.
with each other such that an ordinary purchaser can
conclude an association or relation between the marks.
51
246 Corporation contends that there can be no trademark discovered the existence of Vogue Traders Clothing Company
infringement considering that Rolex and 246 Corporation are trademark LIVE’S which in its view was confusingly similar to
engaged in unrelated goods and services. its trademark. Thus, LEVI'S instituted an administrative case for
its cancellation.
Issue: Whether or not the likelihood of confusion would arise
from the use of identical marks over unrelated goods or Vogue Traders Clothing Company, on the other hand, filed a
business. – Yes. civil action for damages against LEVI’S. It counterclaimed that
its trademark is infringed and moved to enjoin Vogue Traders
Reporter's note: This case does not answer whether or not from using said confusingly similar mark. Trial court ruled for
there is infringement because this case is only a Petition for LEVI’S. Court of appeals, however ordered the trial court to
Certiorari. This case only laid down whether or not there could desist from proceeding with the civil case until the pending
be the possibility of a trademark infringement for unrelated administrative action has been resolved.
goods or businesses.
Held: Under the Old Trademark Law, where the goods for Issue: Whether or not the administrative action to
which the identical marks are used are unrelated, there can be cancel the trademark registration can proceed
no likelihood of confusion and there is therefore NO independently from an action of infringement or unfair
INFRINGEMENT in the use by the junior user of the registered competition. – yes.
mark on the entirely different goods
However, Under RA 8293, Rule: The passage of Republic Act No. 8293, otherwise known
as the “Intellectual Property Code of the Philippines,” expanded
Sec.123. Registrability.
123.1. A mark cannot be registered if it: the rights accorded to an owner of a registered trademark.
(f) Sections 151 (2) thereof state:
• Is identical with, or confusingly similar to, or constitutes a translation
of a mark considered well-known in accordance with the preceding Section 151.2. Notwithstanding the foregoing provisions, the
paragraph,
• which is registered in the Philippines with respect to goods or services court or the administrative agency vested with jurisdiction to
which are not similar to those with respect to which registration is hear and adjudicate any action to enforce the rights to a
applied for:
registered mark shall likewise exercise jurisdiction to determine
Provided, That use of the mark in relation to those goods or services would whether the registration of said mark may be cancelled in
indicate a connection between those goods or services, and the owner of the accordance with this Act. The filing of a suit to enforce the
registered mark:
Provided, further, That the interest of the owner of the registered mark are likely registered mark with the proper court or agency shall exclude
to be damaged by such use; xxx any other court or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark. On the
Music Lounge is entirely unrelated to business involving other hand, the earlier filing of petition to cancel the mark with
watches, clocks, bracelets, etc. However, the Court cannot yet the Bureau of Legal Affairs {formerly BPTTT] shall not
resolve the merits of the present controversy considering that constitute a prejudicial question that must be resolved before
the requisites for the application of Section 123.1(f), which an action to enforce the rights to same registered mark may be
constitute the kernel issue at bar, clearly require determination decided. The earlier filing of a petition to cancel the mark
facts of which need to be resolved at the trial court.
before the BPTTT does not constitute a prejudicial question
which must be resolved before an action to enforce rights to
Comment: You could see that the applicable provision is
Section 123(f). Rolex being an internationally well-known mark the same registered mark before regular courts may be filed.
that is registered here in the Philippines. Therefore, no one An action for infringement or unfair competition, in regular
could use that same mark even for dissimilar goods. Definitely,
courts can proceed independently and simultaneously with an
if this provision is applicable, KTV is guilty of infringement.
action for administrative cancellation of a registered trademark
before the BPTTT.
MARCH 5, 2019 | Transcribed by: Kayla Paclibar & Monjid
Abpi Thus, the case filed in the BPTTT does not preclude LEVI’s from
filing a counterclaim of copyright infringement in the case of
LEVI STRAUSS (PHILS.) VS. VOGUE TRADERS
damages before the RTC filed by Vogue.
CLOTHING COMPANY the mark; and (3) registrant's exclusive right to use the mark.
G.R. No. 132993 It is not subject to opposition, although it may be cancelled
after its issuance. Neither may it be the subject of interference
Facts: Levi Strauss Phils. is a grantee of license by its US- proceedings. Registration on the supplemental register is not
based principal to use LEVI’S trademark in the manufacturing constructive notice of registrant's claim of ownership. A
and sale of its clothing and other goods. Later, Levi Strauss supplemental register is provided for the registration of marks
52
which are not registrable on the principal register because of 1. The leather patch showing two horses pulling a
some defects” pair of pants
2. The arcuate pattern with the inscription "LEVI
Registration in the Supplemental Register, therefore, serves as STRAUSS & CO"
notice that the registrant is using or has appropriated the 3. The arcuate design that refers to "the two parallel
trademark. By the very fact that the trademark cannot as yet stitching curving downward that are being sewn on
be entered in the Principal Register, all who deal with it should
both back pockets of a Levi’s Jeans"
be on guard that there are certain defects, some obstacles
4. The tab or piece of cloth located on the structural
which the user must Still overcome before he can claim legal
ownership of the mark or ask the courts to vindicate his claims seam of the right back pocket, upper left side.
of an exclusive right to the use of the same. It would be
All these trademarks were registered in the Philippine Patent
deceptive for a party with nothing more than a registration in
Office in the 1970’s, 1980’s and early part of 1990’s. Levi’s
the Supplemental Register to posture before courts of justice
Philippines is a licensee of Levi’s.
as if the registration is in the Principal Register.”
After receiving information that Diaz was selling counterfeit
Comment: Okay so take note what Levi’s applied here is a
LEVI’S 501 jeans in his tailoring shops in Almanza and Talon,
search warrant, without a case. The action field by Vogue here
Las Piñas City, Levi’s Philippines hired a private investigation
was Reversion.
group to verify the information.
Okay, so there is no litis pendentia. If there is a cancellation
Eventually, it was established that the jeans bought from the
case filed in the BLA and an infringement case in the courts,
tailoring shops of Diaz were counterfeit or imitations of
but the SC here did not rule on the substantive issues, this is
LEVI’S 501.
procedural.
With the help of the NBI armed with search warrants, they
searched the tailoring shops of Diaz and seized several fake
DIAZ VS. PEOPLE LEVI’S 501 jeans from them.
February 13, 2006 – The RTC rendered its decision finding

Facts: February 10, 2000 – The DOJ filed two informations Diaz guilty as charged.
in the RTC of Las Piñas City, charging Diaz with violation of
Section 155, in relation to Section 170, of Republic Act Issue: Whether or not Diaz may be held liable for infringement
No. 8293 (Intellectual Property Code). of trademark under Section 155 of RA 8293.– NO.
INFORMATION
Rule Section 155. Remedies; Infringement. - Any person
Diaz x x x engaged in commerce by reproducing, who shall, without the consent of the owner of the registered
counterfeiting, copying and colorably imitating Levi’s registered mark:
trademarks or dominant features thereof such as the ARCUATE
DESIGN, TWO HORSE BRAND, TWO HORSE PATCH, TWO 155.1. Use in commerce any reproduction, counterfeit, copy, or
HORSE LABEL WITH PATTERNED ARCUATE DESIGN, TAB AND colorable imitation of a registered mark or the same container
COMPOSITE ARCUATE/TAB/TWO HORSE PATCH, and in or a dominant feature thereof in connection with the sale,
connection thereto, sold, offered for sale, manufactured, offering for sale, distribution, advertising of any goods or
distributed counterfeit patches and jeans, including other services including other preparatory steps necessary to carry
preparatory steps necessary to carry out the sale of said out the sale of any goods or services on or in connection with
patches and jeans, which likely caused confusion, mistake, and which such use is likely to cause confusion, or to cause mistake,
/or deceived the general consuming public, without the or to deceive; or
consent, permit or authority of the registered owner, LEVI’S, 155.2. Reproduce, counterfeit, copy or colorably imitate a
thus depriving and defrauding the latter of its right to the registered mark or a dominant feature thereof and apply such
exclusive use of its trademarks and legitimate trade, to the reproduction, counterfeit, copy or colorable imitation to labels,
damage and prejudice of LEVI’S. signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in
Levi Strauss and Company (Levi’s), a foreign corporation
connection with the sale, offering for sale, distribution, or
based in the State of Delaware, United States of America, had
advertising of goods or services on or in connection with which
been engaged in the apparel business.
such use is likely to cause confusion, or to cause mistake, or to
It is the owner of trademarks and designs of Levi’s jeans like deceive, shall be liable in a civil action for infringement by the
LEVI’S 501, to which it has the following registered registrant for the remedies hereinafter set forth: Provided, That
trademarks: the infringement takes place at the moment any of the acts
53
stated in Subsection 155.1 or this subsection are committed

regardless of whether there is actual sale of goods or services
using the infringing material. DOMINANCY TEST HOLISTIC TEST
The elements of the offense of trademark infringement under
the Intellectual Property Code are the following:
1. The trademark being infringed is registered  It focuses on the

in the Intellectual Property Office; similarity of the
main, prevalent
2. The trademark is reproduced,
or essential
counterfeited, copied, or colorably
features of the
imitated by the infringer;
competing
3. The infringing mark is used in connection trademarks that  It considers the
with the sale, offering for sale, or might cause entirety of the
advertising of any goods, business or confusion marks, including
services; or the infringing mark is applied labels and
 Infringement
to labels, signs, prints, packages, packaging, in
takes place when
wrappers, receptacles or determining
the competing
advertisements intended to be used upon confusing
trademark
or in connection with such goods, business similarity
contains the
or services;
essential  The focus is not
4. The use or application of the infringing mark features of only on the
is likely to cause confusion or mistake another predominant
or to deceive purchasers or others as to words but also on
 Imitation or an
the goods or services themselves or as to the the other
effort to imitate is
source or origin of such goods or services or features
unnecessary
the identity of such business; and appearing on
 The question is the labels.
5. The use or application of the infringing mark
whether the use
is without the consent of the trademark
of the marks is
owner or the assignee thereof.
likely to cause
confusion or
deceive
purchasers.
The holistic test is applicable here considering that the

criminal cases in this case also involved trademark
infringement in relation to jeans products.
Accordingly, the jeans trademarks of Levi’s Philippines and Diaz

must be considered as a whole in determining the likelihood
of confusion between them.
FACTORS
• The maong pants or jeans made and sold by Levi’s

Philippines, which included LEVI’S 501, were very
popular in the Philippines.
• The consuming public knew that the original

LEVI’S 501 jeans were under a foreign brand and
quite expensive.
• Such jeans could be purchased only in malls or

boutiques as ready-to-wear items, and were not
54
available in tailoring shops like those of Diaz’s as So here the sC said no, the LS Trademark will not infringe the
well as not acquired on a "made-to-order" basis. Levi’s trademark, there’s no confusing similarity by looking at
the Holistic test. So, it is really not true, although it was already
• Under the circumstances, the consuming public reported in another case that the SC abandoned the Holistic
could easily discern if the jeans were original or test, this is a 2013 case, where the SC still applied it. This was
fake LEVI’S 501, or were manufactured by other also asked in the BAR.
brands of jeans.
•
Confusion and deception were less likely for the following
reasons: The SC actually came out a ruling already in 2008, Levi’s vs.
Tony Wong. Wong is the owner of Vogue, so what happened
 The products involved in the case at bar are, in the here was, the action filed here by Levi’s against Vogue was for
main, various kinds of jeans. These are not your infringement and for cancellation of trademark, and there was
ordinary household items like catsup, soy sauce or also Unfair Competition. Here the SC made a ruling already, but
soap which are of minimal cost. Maong pants or I think the ruling will be reported on the next Levi’s case…
jeans are not inexpensive. Accordingly, the casual
buyer is predisposed to be more cautious and
discriminating in and would prefer to mull over his SEHWANI, INC. v. IN-N-OUT BURGER, INC.
purchase. GR 171053 (2007)
 Like his beer, the average Filipino consumer generally

In-N-Out Burger, Inc. is a business entity incorporated under
buys his jeans by brand. He does not ask the sales the laws of California, U.S.A. It was engaged in the restaurant
clerk for generic jeans but for, say, a Levi’s, Guess, business, but it has never engaged in business in the
Wrangler or even an Armani. He is, therefore, more Philippines.
or less knowledgeable and familiar with his
preference and will not easily be distracted. It is important to note that the U.S. and the Philippines are
signatories to the Convention of Paris on the Protection of
More credit should be given to the "ordinary purchaser." Industrial Property.
Cast in this particular controversy, the ordinary
purchaser is not the "completely unwary In this case, In-N-Out filed before the Bureau of Legal Affairs
consumer" but is the "ordinarily intelligent buyer" in the Intellectual Property Office an administrative case
against Sehwani Inc. for the violation of Intellectual Property
NOTE: Ordinary purchaser was defined as one Rights.
"accustomed to buy, and therefore to some extent
familiar with, the goods in question" (Dy Buncio v. Sehwani Inc. is a corporation organized in the Philippines. It
Tan Tiao Bok) successfully obtained a trademark registration of In-N-Out.
However, the inside of the O’s is a star.
Diaz used the trademark LS JEANS TAILORING for the
jeans he produced and sold in his tailoring shops. In-N-Out demanded that Sehwani desist from claiming
ownership of the mark In-N-Out and to voluntarily cancel it’s
His trademark was visually and aurally different from
trademark registration.
the trademark appearing on the
patch of original jeans under the trademark LEVI’S 501. On the other hand, Sehwani Inc. argued that other than the
bare allegations of In-N-Out that there was fraud in obtaining
FINALLY
the registration, In-N-Out was not able to show the existence
• Based on the certificate issued by the Intellectual of any grounds for the cancellation of the Trademark
Property Office, "LS JEANS TAILORING" was a Registration under 151 of R.A. 8293.
registered trademark of Diaz. He had registered
ISSUE 1: Whether or not a ground exists for the cancellation
his trademark prior to the filing of the present cases.
of Sehwani’s trademark registration.
• The Intellectual Property Office would certainly
HELD:
not have allowed the registration had Diaz’s
The Supreme Court held that yes, citing Sec. 151(b).
trademark been confusingly similar with the registered
trademark for LEVI’S 501 jeans. A petition to canel a registration of a mark maybe filed with the
Comment: ls stood for latest style. Sabi niya the 2 animals were
Bureau of Legal Affairs at any time, if the registered mark is
being used without the permission of the registrant so as to
buffaloes not horses.
misrepresent the goods or services on or in connection with
which the mark is used.
55
internationally well-known, no one can register a mark for

In this case, other than Sehwani Inc. using the trademark of goods that are similar.
In-N-Out for their restaurant, they also used identical and
conclusively similar marks for their hamburger wrappers and What do we have here in Sehwani? Burger. In In-N-Out in the
french-fries receptacles thereby misrepresenting the source of U.S., it’s still burger.
the goods and services.
PROSOURCE v. HORPHAG
Comment: Sehwani, as you already know, is the professional GR 180073 (2009)
infringer. He looks for marks all over the world that are popular
and he uses it here for his own business. Now, the question
here is, whether or not In-N-Out can cancel the registration of Comment: Is there infringement? We have the two: PCO-
Sehwani? GENOL (Prosource) and PYCNOGENOL (Hophag).
This ground [Sec. 151(b)] is not enough. What are the grounds Yes, Prosource should be held liable. If you look at it, the two,
for cancellation? do they look similar? No. They don’t look similar at all.
You have to look at whether or not the mark can be registered. But the Supreme Court is saying “is that all you look at? Is it
That provision is Sec. 123. only the sense of sight that is catered to in determining
confusingly similarities?” No. That’s not all because we have
The Supreme Court discussed which of these provisions is other senses.
applicable—Sec. 123 d, e or f?
The issue here is that it’s not only the sense of sight. It’s
The situation of In-N-Out is that it claims to be an International hearing. Confusingly similar sounds or “Idem Sonans Rule”.
well-known mark that is not registered in the Philippines. So,
can you register something that is confusingly similar to that PCO-Genol is the alleged infringing party. The other is
Internationally well-known mark? If your goods are similar, no. PYCNOGENOL. If you look at them, they don’t look the same.
You will not be confused. But alam mo namang ang Pinoy mag
So the Supreme Court, in this case of Sehwani, said that the pronounce so ma koconfuse. It may not be the buyer, but it
question of whether or not the In-N-Out Burger’s trademark is might be the one who is giving it out.
considered well-known is factual in nature, involving as it does
the appreciation of evidence adduced before the BLA-IPO. According to the Supreme Court, when it comes to infringement
on confusingly similarities, you also have to look at the other
That Paris Convention that you were citing is related to the or different aspects—not only what you see but also what you
question to whether or not this mark is internationally well- hear.
known.
Here, the Supreme Court made a list of similar sounds:
Is the trademark internationally well-known? Yes. Art. 6 of the
Paris Convention says that “a trademark should be protected  Salonpas – Lionpas
under Art. 6 if it is well-known in the country where protection  Jantzen – Jass-Sea
is sought.”  Cutex – Cuticlean
 Kotex – Femetex
The fact that it is internationally well-known has nothing to do  Steinway Pianos – Steinberg Pianos
on whether or not In-N-Out can sue here. But it has something  Zuso – Hoo Hoo
to do with protection. Can it be protected? Meaning can it  Yusea – U-C-A
cancel the registration of Sehwani?
The Supreme Court said that these words are confusingly
The Supreme Court said that the power to determine whether similar. Kahit na tingnan mo yung logo ng Salonpas or you look
a trademark is well-known lies in the competent authority of at the spelling, they are different. But the Supreme Court said
the country of registration or use. that they are confusingly similar. Malayo pero why do they
sound similar? If you look at them, they look different. Di ka
So here, the BLA found out that it is internationally well-known talaga malilito kung tiningnan niniyo. So when it comes to
as evidence by the trademark registrations around the world confusing similarity, it’s not only what you see but also what
and its comprehensive advertisements therein. you hear.
Since it is internationally well-known, under Art. 123 (f), that According to the Supreme Court, holistic test, entails a
mark, in relation to Sec. 151 of R.A. 8293, because it consideration of the entirety of the marks as applied to the
misrepresents—Sehwani In-N-Out is trying to pretend that it is products, including the labels and packaging. But here, the
the In-N-Out from abroad—that is 155, but still because it is Supreme Court applied the Dominancy test—when the two
words are pronounced and the sound effects are confusingly
56
similar and not to mention that they are both described by their
manufacturers as a food supplement. A red tab, made of fabric, attached at the left seam of the right
backpocket of Levi Strauss’ standard five-pocket jeans, also
Although there were dissimilarities in the trademark due to the appears at the same place on "LIVE’S" jeans;
type of letters used as well as the size, color and design,
purchasers could be misled into believing that they are the
same and/or originates from a common source by the close
sounding name.
MARCH 7, 2019 | Transcribed by: Val Joseph Acevedo
LEVI STRAUSS v. TONY LIM

GR 162311 December 4, 2008
Facts:
Two parties:
LEVI STRAUSS (PHILS.) INC. There is likelihood of confusion between the competing
products because:
 a duly-registered domestic corporation
 a wholly-owned subsidiary of Levi Strauss & Co. (LS & The patch used on "LIVE’S" jeans (depicting three men on each
Co.) a Delaware, USA company. side attempting to pull apart a pair of jeans) obviously thrives
on Levi Strauss’ own patch showing two horses being whipped
TONY LIM by two men in an attempt to tear apart a pair of jeans;
doing business under the name Vogue Traders Clothing "LEVI’S" jeans are packaged and sold with carton tickets, which
Company. are slavishly copied by Lim in his own carton ticket.
LS & Co. granted Levi Strauss (Phils.) a non-exclusive license

to use its registered trademarks and trade names for the
manufacture and sale of various garment products, primarily
pants, jackets, and shirts, in the Philippines.
Levi Strauss (Phils.) lodged a complaint before the Inter-

Agency Committee on Intellectual Property Rights, alleging that
a certain establishment in Metro Manila was manufacturing
garments using colorable imitations of the LEVI’S trademarks.
The investigation revealed that Lim was engaged in the

manufacture, sale, and distribution of products similar to those
of Levi Strauss (Phils.) and under the brand name "LIVE’S."
There is likelihood of confusion between the competing

products because:
A slavish imitation of the "arcuate" trademark has been stitched

on the back pocket of "LIVE’S" jeans;
The appearance of the mark "105" on Lim’s product is obviously

a play on the "501" trademark;
The appearance of the word/phrase "LIVE’S" and "LIVE’S

ORIGINAL JEANS" is confusingly similar to the "LEVI’S"
trademark;
57
Issue: “Whether Tony Lim may be charged with unfair Emerald Garment Manufacturing Corporation v. Court
competition.”? of Appeals: “First, the products involved in the case at bar
are, in the main, various kinds of jeans. x x x Maong pants or
Ruling: No. jeans are not inexpensive. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and
The elements were not proven. Element of actual intent to would prefer to mull over his purchase. Confusion and
deceive is wanting. deception, then, is less likely. In Del Monte Corporation v. Court
of Appeals, we noted that:
UNFAIR COMPETITION
“…what essentially determines the attitudes of the purchaser,
consists in employing deception or any other means contrary specifically his inclination to be cautious, is the cost of the
to good faith by which any person shall pass off the goods goods. To be sure, a person who buys a box of candies will
manufactured by him or in which he deals, or his business, or not exercise as much care as one who buys an expensive
services for those of the one having established goodwill, or watch. As a general rule, an ordinary buyer does not exercise
committing any acts calculated to produce such result. as much prudence in buying an article for which he pays a few
centavos as he does in purchasing a more valuable
ELEMENTS thing. Expensive and valuable items are normally
a) That the offender gives his goods the general bought only after deliberate, comparative and
appearance of the goods of another manufacturer or analytical investigation. But mass products, low priced
dealer; articles in wide use, and matters of everyday purchase
b) That the general appearance is shown in the (1) goods requiring frequent replacement are bought by the casual
themselves, or in the (2) wrapping of their packages, consumer without great care.”
or in the (3) device or words therein, or in (4) any
other feature of their appearance; The Court finds no basis to give weight to Levi Strauss (Phils.)’
c) That the offender offers to sell or sells those goods or
contention that the "post sale confusion" that might be
gives other persons a chance or opportunity to do the
triggered by the perceived similarities between the two
same with a like purpose; and
products must be considered in the action for unfair
d) That there is actual intent to deceive the public or
defraud a competitor. competition against Lim.
There are differences in the spelling, meaning, and phonetics No inflexible rule can be laid down as to what will constitute
between "LIVE’S" and "LEVI’S,” unfair competition. Each case is, in the measure, a law unto
itself. Unfair competition is always a question of fact. The
The backpocket design allegedly copied by Lim from the question to be determined in every case is whether or not, as
registered arcuate design of the complainant, appears to be a matter of fact, the name or mark used by the defendant has
different in view of the longer curved arms that stretch deep previously come to indicate and designate plaintiff’s goods, or,
downward to a point of convergence where the stitches form a to state it in another way, whether defendant, as a matter of
rectangle. fact, is, by his conduct, passing off defendant’s goods as
plaintiff’s goods or his business as plaintiff’s business. The
The design of the patches attached to the backpockets are universal test question is whether the public is likely to
different. be deceived.
The manner by which Levi’s jeans are packed and sold with The probability of deception must be tested at the point of
carton tickets attached to the products cannot be appropriated sale since it is at this point that the ordinary purchaser mulls
solely by complainant to the exclusion of all other upon the product and is likely to buy the same under the belief
manufacturers of same class. that he is buying another.
Fourth, evidence shows that there is a copyright registration The test of fraudulent simulation is to be found in the likelihood
issued by the National Library over the backpocket design of of deception, or the possibility of deception of some persons in
the respondent. And this copyright registration gives the some measure acquainted with an established design and
respondent the right to use the same in his goods x x x. desirous of purchasing the commodity with which that design
has been associated.
The mark’s registration, coupled with the stark differences
between the competing marks, negate the existence of actual Discussion:
intent to deceive, in this particular case.
Atty. Suarez: We already know there is a search warrant. Why
is there no unfair competition?
58
Kunnan filed before the now defunct Bureau of Patents,

Reporter: There is no unfair competition because the products Trademarks and Technology Transfer, a petition for
involved this case are jeans or pants and these products are Cancellation on the ground of fraud.
normally not expensive. Therefore, the causal buyer is less
likely to be deceived.
Atty. Suarez: What is unfair competition? When Vogue, Lives

brand, is trying to pass of as that brand of Levis. The public
would say “Ah kapatid ito ng Levis” this is the masa version of
Levis. Is it possible, will the public be deceived into buying Lives
instead of Levis? Pending the cancellation case, the distributorship agreement
between the parties expired, and, Kunnan appointed Sports
Reporter: No. Concept as its new distributor.
How much is the Lives and how much is the Levis? Because of that, Superior filed a complaint for trademark
infringement and unfair competition against Kunnan and Sports
Reporter: I have not found the price Ma’am. But Levis is Concept before the Regional Trial Court.
generally pricey.
Atty Suarez: Anyway, the Supreme Court said: You wanna

buy Levis, buy Levis, look for Levis.”
Sa tindahan, ibagay sa iyo Lives, and pagtingin sa price you say The Intellectual Property Office granted the petition for
“Ay! No, hindi yan Levis” Fake yan, kasi ang Levis, ganito yung cancellation, pending the infringement case.
presyo. Yung gusto talagang bumili ng Levis. So, there is no
possibility that a person who intends to buy Levis will end up Hence, the trademark that was issued to Superior was
buying Lives. cancelled.
This order of cancellation, subsequently, became final and

SUPERIOR v. KUNNAN
executory. Hence, the trademark is effectively cancelled.
GR 169974
The court dismissed the complaint for infringement and unfair

Facts: Kunnan Enterprises Limited (Kunnan) manufactures competition.
sporting goods, tennis rackets, racquetball, and picketball.
Kunnan had an application for their trademark “PRO KENNEX”. However, the dismissal was on the ground that Superior failed
to establish ownership over the trademark or failed to establish
However, through fraud, Superior convinced Kunnan that it was by preponderance of evidence, it’s claim of ownership.
not qualified to register the mark.
Issue: Whether or not the complaint should be dismissed?
As a result, Kunnan assigned the application to Superior.
Ruling: Yes, only with respect to the infringement case should
Shortly thereafter, the registration of the trademark was issued be dismissed.
in behalf of Superior.
Sec. 19 of R.A. 166, as amended, provides that any right
In lieu of the assignment, Kunnan and Superior executed this conferred upon the registrant terminates when the judgement
”Distributorship Agreement” wherein Kunnan appoints Superior or order of cancellation has become final.
to be their exclusive distributor in the Philippines.
“Section 19. Cancellation of registration. - If the Director finds
In exchange, Superior is to assign to Kunnan the ownership of that a case for cancellation has been made out he shall order
the registered trademark. the cancellation of the registration. The order shall not become
effective until the period for appeal has elapsed, or if appeal is
Kunnan discovered that it was defrauded by Superior. taken, until the judgment on appeal becomes final. When the
order or judgment becomes final, any right conferred by such
registration upon the registrant or any person in interest of
record shall terminate. Notice of cancellation shall be published
in the Official Gazette. [Emphasis supplied.]”
59
Ruling 2: The court should proceed to resolve the issue on

Under the Intellectual Property Code (R.A. 8293) unfair competition.
Section 154. Cancellation of Registration. - If the Bureau of Mcdonald’s Corporation vs.

Legal Affairs finds that a case for cancellation has been made L.C. Big Mak, Inc., the court held that there can be trademark
out, it shall order the cancellation of the registration. infringement without unfair competition.
When the order or judgment becomes final, any right conferred i.e. when infringer discloses on the labels containing the mark
by such registration upon the registrant or any person in that he manufactures the goods.
interest of record shall terminate.
Issue 3: Was there unfair competition?
Notice of cancellation shall be published in the IPO Gazette.
(Sec. 19, R.A. No. 166a) Ruling 3: No.
Sec. 22 of R.A. 166 states that only a registrant of a mark can Unfair competition has been defined as “passing off or
file a case for infringement. attempting to pass off” upon the public of the goods or business
of one person as the goods or business of another with the end
Hence, the cancellation of registration of a trademark has the and probable effect of deceiving the public.
effect of depriving the registrant of protection from
infringement from the moment judgement or order of R.A. 8293, Sec. 168.3 (counterpart of Sec. 29, R.A. 166)
cancellation has become final.
the following shall be deemed guilty of unfair competition:
Section 22. Infringement, what constitutes. Any person who
[1] shall use, without the consent of (a) Any person, who is selling his goods and gives them the
the registrant, any reproduction, counterfeit, copy or general appearance of goods of another manufacturer or
colorable imitation of any registered mark or trade name in dealer, either as to the goods themselves or in the wrapping of
connection with the sale, offering for sale, or advertising the packages in which they are contained, or the devices or
of any goods, business or services on or in connection words thereon, or in any other feature of their appearance,
with which such use is likely to cause confusion or mistake or which would be likely to influence purchasers to believe that
to deceive purchasers or others as to the source or origin of the goods offered are those of a manufacturer or dealer, other
such goods or services, or identity of such business; or [2] than the actual manufacturer or dealer, or who otherwise
reproduce, counterfeit, copy, or colorably imitate any such clothes the goods with such appearance as shall deceive the
mark or trade-name and apply such reproduction, counterfeit, public and defraud another of his legitimate trade, or any
copy, or colorable imitation to labels, signs, prints, packages, subsequent vendor of such goods or any agent of any vendor
wrappers, receptacles or advertisements intended to be engaged in selling such goods with a like purpose;
used upon or in connection with such goods, business or
services, shall be liable to a civil action by the registrant ■ It was already established that Kunnan is the rightful
for any or all of the remedies herein provided. [Emphasis owner of the trademark.
supplied] ■ Hence, Superior has no effective right to make a claim
because of the finality of the cancellation of the
In the case at bar, the trademark infringement aspect of the trademark.
case has been rendered moot and academic in view of the ■ Furthermore, there is “no evidence existed that
finality of the decision in the cancellation case. Kunnan attempted to pass off the goods it sold as
those of Superior.”
Hence, Superior is “left without any cause of action” for
■ The public is not “deceived”.
trademark infringement.
■ Hence, there is no issue of confusion on the products
sold.
Even assuming it is not moot and academic, Superior is a mere
distributor and not the owner of the trademark. Discussion:
”An exclusive distributor does not acquire proprietary rights of Atty Suarez: Who filed the cancellation case?
the manufacturer, and a registration of the trademark by the
distributor belongs to the manufacturer” Answer: Kunnan.
Issue 2: What about the unfair competition case? Atty. Suarez: Trademark of?
60
Reporter: Superior. or service of others is entitled to register the

same. An exclusive distributor does not
Atty. Suarez: What about the issue on unfair competition? acquire any proprietary interest in the
principals trademark and cannot
Reporter: W/n it should be dismissed. register it in his own name unless it is
has been validly assigned to him.
Atty Suarez: Who filed the case? Who was accused of unfair
competition? You can register your mark if you created.
Reporter: Superior is accusing Kunnan and Sports concept of

infringement and unfair competition. DERMALINE v. MYRA
GR 190065 August 16, 2010
Atty. Suarez: So, here, the SC also said that Superior is a
mere distributor as its right to the trademark. It has no right to Facts:
register the mark in its name because the right to register
trademark should be based on ownership when the applicant
is not the owner of the trademark, therefore, he has no right
to apply for the same. An inclusive distributor does not acquire
any proprietary interest in the principal’s trademark and cannot
register in his name unless it is validly assigned to him.
Based on the full text
Even assuming that SUPERIORs case for trademark

infringement had not been rendered moot and academic,
there can be no infringement committed by KUNNAN
who was adjudged with finality to be the rightful owner of the Dermaline, Inc. filed before the Intellectual Property Office
disputed trademarks in the Registration Cancellation Case. (IPO) an application for registration of the trademark
Even prior to the cancellation of the registration of the disputed “DERMALINE DERMALINE, INC.“
trademarks, SUPERIOR as a mere distributor and not the
owner cannot assert any protection from trademark Myra filed a verified Opposition,
infringement as it had no right in the first place to the
registration of the disputed trademarks. In fact,
Allegation:
jurisprudence holds that in the absence of any inequitable
conduct on the part of the manufacturer, an exclusive
distributor who employs the trademark of the manufacturer Trademark sought to be registered by Dermaline so resemb
does not acquire proprietary rights of the manufacturer, and a les its trademark “DERMALIN” and will likely cause
registration of the trademark by the distributor as such confusion, mistake and deception to the purchasing public.
belongs to the manufacturer, provided the fiduciary
relationship does not terminate before application for Myra’s Contention:
registration is filed. Thus, the CA in the Registration
Cancellation Case correctly held: Dermaline’s use and registration of its applied trademark will
diminish the distinctiveness and dilute the goodwill of Myra’s
As a mere distributor, “DERMALIN,” which Myra has been extensively using
petitioner Superior undoubtedly had commercially since October 31, 1977 and registered with the
no right to register the questioned IPO way back July 8, 1986 and said mark is still valid and
mark in its name. Well-entrenched in our subsisting.
jurisdiction is the rule that the right to
register a trademark should be based on
The dominant feature is the term “DERMALINE” which is
ownership. When the applicant is not the
practically identical with its own “DERMALIN”.
owner of the trademark being applied for, he
has no right to apply for the registration of
the same. Under the Trademark Law, only
the owner of the trademark, trade name or
service mark used to distinguish his goods,
business or service from the goods, business
61
The Dominancy Test focuses on the similarity of the

prevalent features of the competing trademarks that might
cause confusion or deception. It is applied when the trademark
sought to be registered contains the main, essential and
dominant features of the earlier registered trademark, and
confusion or deception is likely to result. Duplication or
imitation is not even required; neither is it necessary that the
label of the applied mark for registration should suggest an
effort to imitate. The important issue is whether the use of the
marks involved would likely cause confusion or mistake in the
Myra asserted that the mark “DERMALINE DERMALINE, INC. mind of or deceive the ordinary purchaser, or one who is
“is aurally similar to its own mark such that the registration and accustomed to buy, and therefore to some extent familiar with,
use of Dermaline’s applied mark will enable it to obtain benefit the goods in question.
from Myra’s reputation, goodwill and advertising and will lead
the public into believing that Dermaline is, in any way, The test of dominancy is now explicitly incorporated into law in
connected to Myra. Section 155.1 of R.A. No. 8293 which provides—
ISSUE: WON the IPO should allow the registration of the 155.1. Use in commerce any reproduction, counterfeit, copy, or
Trademark “DERMALINE”? colorable imitation of a registered mark or the same container
or a dominant feature thereof in connection with the sale,
RULING: No. offering for sale, distribution, advertising of any goods or
services including other preparatory steps necessary to carry
A trademark is any distinctive word, name, symbol, emblem, out the sale of any goods or services on or in connection with
sign, or device, or any combination thereof, adopted and used which such use is likely to cause confusion, or to cause mistake,
by a manufacturer or merchant on his goods to identify and or to deceive;
distinguish them from those manufactured, sold, or dealt by
others. Inarguably, it is an intellectual property deserving On the other hand, the Holistic Test entails a consideration of
protection by law. In trademark controversies, each case must the entirety of the marks as applied to the products, including
be scrutinized according to its peculiar circumstances, such that labels and packaging, in determining confusing similarity. The
jurisprudential precedents should only be made to apply if they scrutinizing eye of the observer must focus not only on the
are specifically in point. predominant words but also on the other features appearing in
both labels so that a conclusion may be drawn as to whether
As Myra correctly posits, as a registered trademark owner, one is confusingly similar to the other.
it has the right under Section 147 of R.A. No. 8293 to
prevent third parties from using a trademark, or similar signs Relative to the question on confusion of marks and trade
or containers for goods or services, without its consent, names, jurisprudence has noted two (2) types of
identical or similar to its registered trademark, where such use confusion, viz:
would result in a likelihood of confusion.
(1) confusion of goods (product confusion), where the
• Sec. 147. Rights Conferred. - ordinarily prudent purchaser would be induced to purchase one
The owner of a registered mark shall have the exclusive right product in the belief that he was purchasing the other; and
to prevent all third parties not having the owner’s
consent from using in the course of trade identical or (2) confusion of business (source or origin confusion),
similar signs or containers for goods or services which are where, although the goods of the parties are different, the
identical or similar to those in respect of which the product, the mark of which registration is applied for by
trademark is registered where such use would result in one party, is such as might reasonably be assumed to
a likelihood of confusion. In case of the use, of an identical originate with the registrant of an earlier product, and
sign for identical goods or services, a likelihood of confusion the public would then be deceived either into that belief or into
shall be presumed. the belief that there is some connection between the two
parties, though inexistent.
In determining likelihood of confusion, case law has
developed two (2) tests, Using this test, the IPO declared that both confusion of goods
and service and confusion of business or of origin were
the Dominancy Test and the Holistic or Totality Test. apparent in both trademarks.
62
While it is true that the two marks are presented differently Further, Dermaline’s stance that its product belongs to a
Dermaline’s mark is written with the first DERMALINE in separate and different classification from Myra’s products with
script going diagonally upwards from left to right, with an upper the registered trademark does not eradicate the possibility of
case D followed by the rest of the letters in lower case, and mistake on the part of the purchasing public to associate the
the portion DERMALINE, INC. is written in upper case letters, former with the latter, especially considering that both
below and smaller than the long-hand portion; while Myra’s classifications pertain to treatments for the skin.
mark DERMALIN is written in an upright font, with a capital
D and followed by lower case letters the likelihood of confusion Discussion:
is still apparent.
Atty. Suarez: Your issue should be, whether or not ‘Dermalin’
This is because they are almost spelled in the same way, is confusingly similar to ‘Dermaline’. So Myra, is a
except for Dermaline’s mark which ends with the letter pharmaceutical company and ‘Dermalin’ is one of its trademark.
E, and they are pronounced practically in the same
manner in three (3) syllables, with the ending letter E in Reporter: This is because they are almost spelled in the same
Dermaline’s mark pronounced silently. way, except for Dermaline’s mark which ends with the letter E,
and they are pronounced practically in the same manner in
Thus, when an ordinary purchaser, for example, hears three (3) syllables, with the ending letter E in Dermaline’s mark
an advertisement of Dermaline’s applied trademark pronounced silently.
over the radio, chances are he will associate it
with Myra’s registered mark. Thus, when an ordinary purchaser, for example, hears an
advertisement of Dermaline’s applied trademark over the radio,
The IPO also upheld Myra’s right under Section 138 of R.A. chances are he will associate it with Myra’s registered mark.
No. 8293, which provides that a certification of registration of
a mark is prima facie evidence of the validity of the registration,
the registrant’s ownership of the mark, and of the registrant’s Atty Suarez: So, it is confusingly similar. So, you cannot
exclusive right to use the same in connection with the goods register because the mark is confusingly similar to a registered
and those that are related thereto specified in the certificate. trademark.
Further, Dermaline’s stance that its product belongs to a BERRIS v. ABYADANG

separate and different classification from Myra’s products with GR 183404 October 13, 2010
the registered trademark does not eradicate the possibility of
mistake on the part of the purchasing public to associate the
former with the latter, especially considering that both Facts:
classifications pertain to treatments for the skin.
The IPO also upheld Myra’s right under Section 138 of R.A.
the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the same in connection with the goods
and those that are related thereto specified in the certificate. January 16, 2004, Norvy Abyadang, Proprietor of NS Northern
Organic Fertilizer.
Further, Dermaline’s stance that its product belongs to a
separate and different classification from Myra’s products with Fungicide (Class 5) with active ingredient of 80% Mancozeb
the registered trademark does not eradicate the possibility of
mistake on the part of the purchasing public to associate the July 28, 2005 - Application Serial No. 4-2004-00450 was given
former with the latter, especially considering that both due course and published in IPO e-Gazette for opposition.
classifications pertain to treatments for the skin.
The IPO also upheld Myra’s right under Section 138 of R.A.
the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the same in connection with the goods August 17, 2005 - Berris Agricultural Co., Inc filed with IPO
and those that are related thereto specified in the certificate. Bureau of Legal Affair a Verified Notice of Opposition against
the mark under the application.
63
-ABYADANG- May 26, 2003

The mark is allegedly confusingly similar to its registered
trademark D-10 80 WP. Issue: Whether or not Abyadang is prior user of the
trademark?
Fungicide (Class 5) with active ingredient 80% Mancozeb.
Ruling: No.
Director Estrellita Beltran-Abelardo (Director Abelardo) of the
IPO-BLA issued Decision: NS D-10 PLUS is confusingly similar Berris was able to establish that it was using its mark D-10 80
and rejected the trademark application. WP since June 20, 2002, even before it filed for its registration
with the IPO on November 29, 2002, as shown by its DAU which
Director General Adrian S. Cristobal, Jr. of the IPPDG affirmed was under oath and notarized, bearing the stamp of the Bureau
the decision Director Abelardo and dismissed the appeal. of Trademarks of the IPO on April 25, 2003, and which stated
that it had an attachment as Annex B sales invoices and official
Court of Appeals: IPO Director General in Appeal No. 14-06-13 receipts of goods bearing the mark.
(IPC No. 14-2005-00099) is REVERSED and SET ASIDE, and a
new one is entered giving due course to Norvy Abyadang Indeed, the DAU, being a notarized document, especially when
application for registration of the mark NS D-10 PLUS, and received in due course by the IPO, is evidence of the facts it
canceling Berris Agricultural trademark registration for D-10 80 stated and has the presumption of regularity, entitled to full
WP. faith and credit upon its face.
BERRIS: What is more, the DAU is buttressed by the Certification dated

Trademark application: November 29, 2002. April 21, 2006 issued by the Bureau of Trademarks that Berris
The mark was first used on June 20, 2002. mark is still valid and existing.
ABYADANG: Even the FPA Certification dated October 11, 2005, stating that
 Photocopy of the packaging for his marketed the office had neither encountered nor received reports about
fungicide bearing mark NS D-10 PLUS. the sale of the fungicide D-10 80 WP within Region I and the
 Mark NS D-10 PLUS was his own creation derived Cordillera Administrative Region, could not negate the fact that
from: Berris was selling its product using that mark in 2002, especially
N for Norvy, his name; considering that it first traded its goods in Calauan, Laguna,
S for Soledad, his wifes name; where its business office is located, as stated in the DAU.
D the first letter for December, his birth month;
10 for October, the 10th month of the year and his Therefore, Berris, as prior user and prior registrant, is the
business name registration; owner of the mark D-10 80 WP. As such, Berris has in its favor
PLUS to connote superior quality. the rights conferred by Section 147 of R.A. No. 8293, which
 He did not know of the existence of Berris or any of provides
its products;
 D-10 could not have been associated with Berris Issue 2: Whether or not the trademark of Abyadangs NS D-
because the latter never engaged in any commercial
1O PLUS may be registered?
activity to sell D-10 80 WP fungicide in the local
market;
Ruling 2: No.
 He could not have copied Berris mark because he
registered his packaging with the Fertilizer and
Pesticide Authority (FPA) ahead of Berris on December According to Section 123.1(d) of R.A. No. 8293, a mark cannot
19, 2005 be registered if it is identical with a registered mark belonging
 NS D-10PLUS was marketed since July 30, 2003 to a different proprietor with an earlier filing or priority date,
 Certification dated October 11, 2005 issued by the with respect to:
FPA, stating that, per monitoring among dealers in
Region I and in the Cordillera Administrative Region (1) the same goods or services;
registered with its office, the Regional Officer neither (2) closely related goods or services; or
encountered the fungicide with mark D-10 80 WP nor (3) near resemblance of such mark as to likely deceive or cause
did the FPA provincial officers from the same area confusion.
receive any report as to the presence or sale of Berris
product. DOMINANCY TEST
 PD 936 certifying that all pesticides must be registered HOLISTIC OR TOTALITY TEST
with the said office:
-BERRIS- NOVEMBER 12, 2004
64
Focuses on the similarity of the prevalent or dominant features respect to the meaning he has given to it, what remains is the
of the competing trademarks that might cause confusion, fact that Berris is the owner of the mark D-10 80 WP, inclusive
mistake, and deception in the mind of the purchasing public. of its dominant feature D-10, as established by its prior use,
Necessitates a consideration of the entirety of the marks as and prior registration with the IPO.
applied to the products, including the labels and packaging, in
determining confusing similarity. Discussion:
Duplication or imitation is not necessary;
The discerning eye of the observer must focus not only on the
Atty. Suarez: What is the significance of prior use?
predominant words but also on the other features appearing
on both labels so that the observer may draw conclusion on
Reporter: The significance is, the prior has the right to
whether one is confusingly similar to the other.
Given more consideration are the aural and visual impressions exercise the rights under Sections 147, 147.1.
created by the marks on the buyers of goods, giving little
weight to factors like prices, quality, sales outlets, and market Atty: But the marks are not identical?
segments.
Reporter: The court said, it is confusingly similar. It is the next
issue.
APPLYING THE DOMINANCY TEST Atty S: Who is the Ponente in this case?
Undeniably, both marks pertain to the same type of goods NACHURA, J.

fungicide with 80% Mancozeb as an active ingredient and used
for the same group of fruits, crops, vegetables, and ornamental When I attended the IP convention, they were talking about
plants, using the same dosage and manner of application. this case. They did not agree with the discussion of the SC on
the prior use because this case was decided under RA 8293 and
They also belong to the same classification of goods under R.A. prior use is not the issue anymore. Under the said law, it
No. 8293. Both depictions of D-10, as found in both marks, are is‘actual use’. So, the issue here, who registered first in this
similar in size, such that this portion is what catches the eye of case, who was Berris.
the purchaser.
If you follow the new law, the registrant is presumed the
Undeniably, the likelihood of confusion is present. owner. The only way to rebut that is prove if you are oppositor,
prove that you are the real owner. But, prior use, the first one
Holistic or Totality Test to use it is not given any kind of priority under RA 8293. So,
this actually a controversial case.
In this case, taking into consideration the packaging:
FREDCO v. HARVARD
for both use the same type of material (foil type), have
GR 185917 June 1, 2011
identical color schemes (red, green, and white); and the
marks are both predominantly red in color,with the same
phrase BROAD SPECTRUM FUNGICIDE written
Facts:
underneath.
Fredco Manufacturing Corporation (Fredco) filed a Petition for
Cancellation of Registration No. 56561 before the Bureau of
In their package their were both D-10 indicated.
Legal Affairs of the Intellectual Property Office against
President and Fellows of Harvard College (Harvard University)
On Berris package, the D-10 is written with a bigger font
than the 80 WP. Admittedly, the D-10 is the dominant feature
of the mark. The D-10, being at the beginning of the mark, is
what is most remembered of it. Although, it appears in Berris
certificate of registration in the same font size as the 80 WP,
its dominancy in the D-10 80 WP mark stands since the
difference in the form does not alter its distinctive character.
D-10 is a fanciful component of the trademark, created
for the sole purpose of functioning as a trademark, and does
not give the name, quality, or description of the product for
which it is used, nor does it describe the place of origin, such NOVEMBER 25, 1993
that the degree of exclusiveness given to the mark is closely
restricted and considering its challenge by Abyadang with
65
Registration No. 56561 was issued to Harvard University for the advertises and promotes the brand name Harvard Jeans USA
mark Harvard Veritas Shield Symbol for decals, tote bags, without Harvard University’s consent.
serving trays, sweatshirts, t-shirts, hats and flying discs under The websites main page shows an oblong logo bearing the
Classes 16, 18, 21, 25 and 28 of the Nice International mark Harvard Jeans USA, Established 1936, and Cambridge,
Classification of Goods and Services. Massachusetts.
April 20, 2004

Harvard University filed an administrative complaint against
Fredco before the Intellectual Property Office for trademark
infringement and/or unfair competition with damages.
Some of Harvard University alleged valid and existing

certificates of trademark registration in the Philippines
are:
1. Trademark Registration No. 56561 issued on 25 November

JANUARY 2, 1982 1993 for "Harvard Veritas Shield Design" for goods and
The mark Harvard for services in Classes 16, 18, 21, 25 and 28 (decals, tote bags,
t-shirts, polo shirts, sandos, briefs, jackets and slacks was first serving trays, sweatshirts, t-shirts, hats and flying
used in the Philippines on by New York Garments discs) of the Nice International Classification of Goods and
Manufacturing & Export Co., Inc. (New York Garments), a Services;
domestic corporation and Fredco’s predecessor-in-interest. 2. Trademark Registration No. 57526 issued on 24 March 1994
for "Harvard Veritas Shield Symbol" for services in Class
JANUARY 24, 1985 41; Trademark Registration No. 56539 issued on 25 November
New York Garments filed for trademark registration of the mark 1998 for "Harvard" for services in Class 41; and
Harvard for goods. The application matured into a registration 3. Trademark Registration No. 66677 issued on 8 December
and a Certificate of Registration was issued on 12 December 1998 for "Harvard Graphics" for goods in Class 9. Harvard
1988, with a 20-year term subject to renewal at the end of the University further alleged that it filed the requisite affidavits of
term. The registration was later assigned to Romeo Chuateco, use for the mark "Harvard Veritas Shield Symbol" with the
a member of the family that owned New York Garments. Intellectual Property Office.
Further, on 7 May 2003 Harvard University filed Trademark
Harvard alleged: Application No. 4-2003-04090 for "Harvard Medical
International & Shield Design" for services in Classes 41
• Lawful owner of the name and mark Harvard in and 44. In 1989, Harvard University established the Harvard
numerous countries worldwide, including the Trademark Licensing Program, operated by the Office for
Philippines. Technology and Trademark Licensing, to oversee and manage
• The name and mark Harvard was adopted in the worldwide licensing of the "Harvard" name and trademarks
1639 as the name of Harvard College of Cambridge, for various goods and services.
Massachusetts, United States of America Harvard University stated that it never authorized or
• The name and mark Harvard was allegedly used in licensed any person to use its name and mark "Harvard"
commerce as early as 1872.
in connection with any goods or services in the
• Harvard University is over 350 years old and is a
Philippines.
highly regarded institution of higher learning in
the United States and throughout the world. ISSUE: Whether or not Fredco’s Petition for Cancellation
Harvard University promotes, uses, and advertises its should be granted.
name Harvard through various publications, services,
and products in foreign countries, including the Ruling: No.
Philippines.
• Harvard University further alleged that the name and HARVARD UNIVERSITY HAS A PRIORITY RIGHT OVER
the mark have been rated as one of the most THE MARK “HARVARD”.
famous brands in the world, valued between US  Under Section 2 of Republic Act Number 166, as
$750,000,000 and US $1,000,000,000. amended, before a trademark can be registered, it
must have been actually used in commerce for not
March 2002 less than two months in the Philippines prior to the
Harvard discovered, through its international trademark watch filing of an application for its registration. While
program, Fredco’s website www.harvard-usa.com. The website Harvard University had actual prior use of its marks
abroad for a long time, it did not have actual prior use
66
in the Philippines of the mark Harvard Veritas Shield Two compelling reasons why Fredco’s petition must
Symbol before its application for registration of the fail:
mark Harvard with the then Philippine Patents Office.
However, Harvard University’s registration of 1. Fredcos registration of the mark Harvard and its
the name Harvard is based on home identification of origin as Cambridge, Massachusetts
registration which is allowed under Section 37 falsely suggest that Fredco or its goods are connected
of Republic Act Number 166. with Harvard University, which uses the same mark
Harvard and is also located in Cambridge, Massachusetts.
Section 131. Priority Right. - 131.1. An application for This can easily be gleaned from the following oblong logo
registration of a mark filed in the Philippines by a person of Fredco that it attaches to its clothing line:
referred to in Section 3, and who previously duly filed an
application for registration of the same mark in one of those Fredcos registration of the mark Harvard should not
countries, shall be considered as filed as of the day the have been allowed because Section 4(a) of Republic
application was first filed in the foreign country. Act Number 166 prohibits the registration of a mark
131.2. No registration of a mark in the Philippines by a person which may disparage or falsely suggest a
described in this section shall be granted until such mark has connection with persons, living or
been registered in the country of origin of the applicant. dead, institutions, beliefs xxx
131.3. Nothing in this section shall entitle the owner of a
• Indisputably, Fredco does not have any affiliation
registration granted under this section to sue for acts
or connection with Harvard University, or even
committed prior to the date on which his mark was registered
with Cambridge, Massachusetts. Fredco, or its
in this country: Provided, That, notwithstanding the foregoing, predecessor New York Garments, was not established
the owner of a well-known mark as defined in Section 123.1(e) in 1936, or in the U.S.A. as indicated by Fredco in its
of this Act, that is not registered in the Philippines, may, against oblong logo.
an identical or confusingly similar mark, oppose its registration, • Fredco offered no explanation to the Court of
or petition the cancellation of its registration or sue for unfair Appeals or to the Intellectual Property Office why it
competition, without prejudice to availing himself of other used the mark "Harvard" on its oblong logo with the
remedies provided for under the law. words "Cambridge, Massachusetts," "Established in
131.4. In like manner and subject to the same conditions and 1936," and "USA."
requirements, the right provided in this section may be based • Fredco claims before the Court that it used these
upon a subsequent regularly filed application in the same words "to evoke a 'lifestyle' or suggest a 'desirable
foreign country: Provided, That any foreign application filed aura' of Fredco's clothing lines." Fredco's belated
prior to such subsequent application has been withdrawn, justification merely confirms that it sought to
connect or associate its products with Harvard
abandoned, or otherwise disposed of, without having been laid
University, riding on the prestige and
open to public inspection and without leaving any rights
popularity of Harvard University, and thus
outstanding, and has not served, nor thereafter shall serve, as
appropriating part of Harvard University's goodwill
a basis for claiming a right of priority. (Sec. 37, Republic Act without the latter's consent.
No. 166a)
SECTION 4(A) OF REPUBLIC ACT NUMBER 166
In any event, under Section 239.2 of Republic Act Number SECTION 2(A) OF THE LANHAM ACT
8293,[m]arks registered under Republic Act Number 166 shall Section 4. Registration of trade-marks, trade-names and
remain in force but shall be deemed to have been granted service-marks. - The owner of a trade-mark, trade-name or
under this Act x x x, which does not require actual prior use of service-mark used to distinguish his goods, business or services
the mark in the Philippines. Since the mark Harvard Veritas from the goods, business or services of others shall have the
Shield Symbol is now deemed granted under Republic Act right to register the same, unless it:
Number 8293, any alleged defect arising from the absence of (a) Consists of or comprises immoral, deceptive or
actual prior use in the Philippines has been cured by Section scandalous matter; or matter which may disparage or
239.2. falsely suggest a connection with persons, living
or dead, institutions, beliefs, or national symbols, or
bring them into contempt or disrepute;
In addition, Fredco’s registration was already cancelled on 30
XXX
July 1998 when it failed to file the required affidavit of use or
TRADEMARKS REGISTRABLE ON PRINCIPAL
non-use for the fifth anniversary of the marks registration.
REGISTER; CONCURRENT REGISTRATION
Hence, at the time of Fredco’s filing of the Petition for No trademark by which the goods of the applicant may be
Cancellation before the Bureau of Legal Affairs of the distinguished from the goods of others shall be refused
Intellectual Property Office, Fredco was no longer the registrant registration on the principal register on account of its nature
or presumptive owner of the mark Harvard. unless it—
67
(a) Consists of or comprises immoral, deceptive, or scandalous own countries are obligated to accord similar protection to
matter; or matter which may disparage or falsely suggest a Philippine nationals
connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt, or Thus, under Philippine law, a trade name of a national of a
disrepute; or a geographical indication which, when used on or State that is a party to the Paris Convention, whether or not
in connection with wines or spirits, identifies a place other than the trade name forms part of a trademark, is protected
the origin of the goods and is first used on or in connection "without the obligation of filing or registration."
with wines or spirits by the applicant on or after one year after
the date on which the WTO Agreement (as defined in
"Harvard" is the trade name of the world famous Harvard
section 3501(9) of title 19) enters into force with respect to the
University, and it is also a trademark of Harvard University.
United States.
Under Article 8 of the Paris Convention, as well as Section 37
of Republic Act No. 166, Harvard University is entitled to
Section 4(a) of Republic Act No. 166 is identical to Section 2(a) protection in the Philippines of its trade name
of the Lanham Act, the trademark law of the United States. "Harvard" even without registration of such trade name
These provisions are intended to protect the right of publicity in the Philippines. This means that no educational
of famous individuals and institutions from commercial entity in the Philippines can use the trade name
exploitation of their goodwill by others. "Harvard" without the consent of Harvard University.
Likewise, no entity in the Philippines can claim, expressly
What Fredco has done in using the mark "Harvard" and the or impliedly through the use of the name and mark
words "Cambridge, Massachusetts," "USA" to evoke a "Harvard," that its products or services are authorized,
"desirable aura" to its products is precisely to exploit approved, or licensed by, or sourced from, Harvard University
commercially the goodwill of Harvard University without the without the latter's consent.
latter's consent. This is a clear violation of Section 4(a) of
Republic Act No. 166. Under Section 17(c) of Republic Act No. Article 6bis of the Paris Convention has been administratively
166, such violation is a ground for cancellation of Fredco's implemented in the Philippines through two directives:
registration of the mark "Harvard" because the registration was
obtained in violation of Section 4 of Republic Act No. 166. 1. Memorandum (November 20, 1980) by the then Ministry
(now Department) of Trade Secretary Luis Villafuerte
2. The Philippines and the United States of America are both - upheld by this Court in several cases; issued a
signatories to the Paris Convention for the Protection of Memorandum directing the Director of Patents to reject,
Industrial Property (Paris Convention). pursuant to the Paris Convention, all pending applications for
Philippine registration of signature and other world-famous
ARTICLE 6bis trademarks by applicants other than their original owners.
(i) The countries of the Union undertake either 2. Memorandum (25 October 1983) by the then Minister of
administratively if their legislation so permits, or at the Trade and Industry Secretary Roberto Ongpin affirmed the
request of an interested party, to refuse or to cancel the earlier Memorandum of Minister Villafuerte.
registration and to prohibit the use of a trademark which
constitutes a reproduction, imitation or translation, liable To be protected, an internationally well-known mark
to create confusion or a mark considered by the competent need not be registered or used in the Philippines. All
authority of the country as being already the mark of a that is required is that the mark is well-known
person entitled to the benefits of the present internationally and in the Philippines for identical or
Convention and used for identical or similar goods.
similar goods, whether or not the mark is registered or
These provisions shall also apply when the
used in the Philippines. The Court ruled in Sehwani,
essential part of the mark constitutes a
reproduction of any such well-known mark or an Incorporated v. In-N-Out Burger, Incorporated.:
imitation liable to create confusion therewith.
The fact that In-N-Out Burger, Incorporated’s marks
ARTICLE 8 are neither registered nor used in the Philippines is of
A trade name shall be protected in all the countries of the no moment. The scope of protection initially afforded by
Union without the obligation of filing or registration, Article 6bis of the Paris Convention has been expanded in the
whether or not it forms part of a trademark. 1999 Joint Recommendation Concerning Provisions on the
Protection of Well-Known Marks, wherein the World Intellectual
The Supreme Court has ruled that the Philippines is Property OrganizationGeneral Assembly and the Paris Union
obligated to assure nationals of countries of the Paris agreed to a nonbinding recommendation that a well-known
Convention that they are afforded an effective mark should be protected in a country even if the mark
protection against violation of their intellectual is neither registered nor used in that country.
property rights in the Philippines in the same way that their
68
• Section 123.1(e) of Republic Act No. 8293 now

categorically states that "a mark which is considered Since "any combination" of the foregoing criteria is sufficient to
by the competent authority of the Philippines to be determine that a mark is well-known, it is clearly not necessary
well-known internationally and in the Philippines, that the mark be used in commerce in the Philippines. Thus,
whether or not it is registered here," cannot be while under the territoriality principle a mark must be used in
registered by another in the Philippines. commerce in the Philippines to be entitled to protection,
internationally well-known marks are the exceptions to this
• Section 123.1(e) does not require that the well-known rule.
mark be used in commerce in the Philippines but only
that it be well-known in the Philippines.
CONCLUSION:
Moreover, Rule 102 of the Rules and Regulations on
"Harvard" is a well-known name and mark not only in the
Trademarks, Service Marks, Trade Names and Marked or Stamp
United States but also internationally, including the Philippines.
Containers, which implement Republic Act No. 8293 provides:
The mark "Harvard" is rated as one of the most famous marks
in the world. It has been registered in at least 50 countries. It
Rule 102. Criteria for determining whether a mark is well-
has been used and promoted extensively in numerous
known. In determining whether a mark is well-known, the
publications worldwide. It has established a considerable
following criteria or any combination thereof may be taken into
goodwill worldwide since the founding of Harvard University
account:
more than 350 years ago. It is easily recognizable as the trade
name and mark of Harvard University of Cambridge,
(a) the duration, extent and geographical area of any use of
Massachusetts, U.S.A., internationally known as one of the
the mark, in particular, the duration, extent and geographical
leading educational institutions in the world. As such, even
area of any promotion of the mark, including advertising or
before Harvard University applied for registration of the mark
publicity and the presentation, at fairs or exhibitions, of the
"Harvard" in the Philippines, the mark was already protected
goods and/or services to which the mark applies;
under Article 6bis and Article 8 of the Paris Convention. Again,
even without applying the Paris Convention, Harvard University
(b) the market share, in the Philippines and in other countries,
can invoke Section 4(a) of Republic Act No. 166 which prohibits
of the goods and/or services to which the mark applies;
the registration of a mark "which may disparage or falsely
suggest a connection with persons, living or dead, institutions,
(c) the degree of the inherent or acquired distinction of the
beliefs x x x."
mark;
Discussion:
(d) the quality-image or reputation acquired by the mark;
Atty S: So, FREDCO ‘filed’ against Harvard. So, take note of

(e) the extent to which the mark has been registered in the
Sec. 131 on priority right. If an entity files a registration here
world;
in the Philippines and he has already a registered mark in
another country, then the date of filing will retroact to the date
(f) the exclusivity of registration attained by the mark in the
of registration in its home country.
world;
Here, Harvard nagfile 1952 pa. So nag retroact siya. So, unang
(g) the extent to which the mark has been used in the world;
una talaga ang Harvard. So this is different under priority rights
under patents.
(h) the exclusivity of use attained by the mark in the world;
Sa patents, he must have an existing application and merong

(i) the commercial value attributed to the mark in the world;
6 months window [?].
(j) the record of successful protection of the rights in the mark;
But trademark, even if the registration was done in the
1800s, there is no time limit. As long as the entity is already
(k) the outcome of litigations dealing with the issue of whether
registered in his home country, mag file siya ng registration
the mark is a well-known mark; and
dito, retroactive.
(l) the presence or absence of identical or similar marks validly
registered for or used on identical or similar goods or services
and owned by persons other than the person claiming that his
mark is a well-known mark. (Emphasis supplied)
69
GREAT WHITE SHARK v. CARALDE Caralde’s mark is more fanciful and colorful, and
GR 192294 November 21, 2012 contains several elements which are easily
distinguishable from that of the Great White Shark. It
further opined that considering their price disparity,
Great White Shark v. Caralde there is no likelihood of confusion as they travel in
Gr No. 192294 Nov 21, 2012 different channels of trade.
Facts: Issue: W/N Caralde may register the ‘ shark and logo’ as
trademark?
CARALDE
Ruling: Yes.
31 JULY 2002 filed before the BLA, IPO a trademark application
– ‘SHARK & LOGO’ WHEN REGISTRABLE
Slippers, shoes and sandals A trademark device is susceptible to registration if it is

crafted fancifully or arbitrarily and is capable of identifying and
GREAT WHITE SHARK ENTERPRISES distinguishing the goods of one manufacturer or seller from
those of another. Apart from its commercial utility, the
Foreign Corporation – Florida, USA – opposed the application benchmark of trademark registrability is distinctiveness.
Owner of a mark consisting of a representation of a shark in In the Case: A generic figure, as that of a shark in this case,
color known as ‘GREG NORMAN LOGO’ if employed and designed in a distinctive manner, can be a
registrable trademark device, subject to the provisions of the
Associated with apparel promoted by Australian Golfer Greg IP Code.
Norman
Caveat
Allegedly ‘FAMOUS MARK’
Section 123.1(d) of the IP Code provides that a mark cannot
Pending registration before the BLA since 19 February 2002 be registered if it is identical with a registered mark belonging
to a different proprietor with an earlier filing or priority date,
ALLEGATION with respect to the same or closely related goods or services,
or has a near resemblance to such mark as to likely deceive or
The confusing similarity between the (2) marks is likely to cause confusion.
deceive or confuse the purchasing public into believing that
Caralde’s goods are produced by or originated from it, or are TWO TESTS TO DETERMINE
under its sponsorship, to its damage and prejudice.
Dominancy Test
ANSWER
Focuses on the similarity of the dominant features of the
Caralde states that the two marks are easily distinguishable competing trademarks that might cause confusion, mistake,
from one another. The only similarity in the marks are the word and deception in the mind of the ordinary purchaser, and gives
“shark” alone, differing in other factors such as appearance, more consideration to the aural and visual impressions created
style shape size, format, color, ideas counted by marks and by the marks on the buyers of goods, giving little weight to
even in the goods carried by the parties. factors like prices, quality, sales outlets, and market segments.
• BLA – Rejects Caralde’s application – Their dominant Holistic or Totality Test

features, i.e., that of an illustration of a shark,
however, are of such degree that the overall Considers the entirety of the marks as applied to the products,
impression it create [sic] is that the two competing including the labels and packaging, and focuses not only on the
marks are at least strikingly similar to each other,
predominant words but also on the other features appearing
hence, the likelihood of confusion of goods is likely to
on both labels to determine whether one is confusingly similar
occur.
to the other as to mislead the ordinary purchaser.
• IPO – Director General – Rejected Caralde –
competing marks are indeed confusingly similar.
• CA - no confusing similarity between the subject In the case: NO SIMILARITY
marks notwithstanding that both contained the shape
of a shark as their dominant feature. It observed that
70
CARALDE’S CARALDE’S SHARK & LOGO

SHARK & LOGO
It is just a picture of a shark. But the trademark is known as
the great white shark. But there is no shark. Ito, meron kasing
The Court finds no confusing similarity between the subject shark nakalagay. So, it is not really confusingly similar.
marks.
What is this [Great white shark] attached to sporting goods,
While both marks use the shape of a shark, the Court noted equipment, shirts, pants, etc. This [Caralde] is for Slippers,
distinct visual and aural differences between them. shoes and sandals. Despite the fact, even if we say that it is
internationally well known, there is no confusing similarity.
In Great White Shark’s “GREG NORMAN LOGO,” there is an
outline of a shark formed with the use of green, yellow, blue
and red lines/strokes. ECOLE DE CUISINE MANILLE v. COINTREAU
GR 185830 June 5, 2013
In contrast, the shark in Caralde’s “SHARK & LOGO” mark is
illustrated in letters outlined in the form of a shark with the Facts:
letter “S” forming the head, the letter “H” forming the fins, the
letters “A” and “R” forming the body, and the letter “K” forming
the tail. In addition, the latter mark includes several more
elements such as the word “SHARK” in a different font
underneath the shark outline, layers of waves, and a tree on
the right side, and liberally used the color blue with some parts
in red, yellow, green and white.
Discussion:
Reporter: Can Caralde’s mark be registered considering there On June 21, 1990, Cointreau, a partnership registered under
is an internationally well-known mark? the laws of France, filed before the Bureau of Patents,
Trademarks, and Technology Transfer (BPTTT) of the
Atty. S: So, there is no confusing similarity because you need Department of Trade and Industry a trademark application for
the marks to be confusingly similar. There is no confusing the mark "LE CORDON BLEU & DEVICE" for goods falling under
similarity, hence it can be registered. classes 8, 9, 16, 21, 24, 25, 29, and 30 of the International
Classification of Goods and Services for the Purposes of
Here, as you can see, this is actually an internationally well- Registrations of Marks
known mark if you are a golfer. But you can see that there is
no word ‘shark’ here. On July 23, 1993, Ecole De Cuisine Manille, Inc. (Ecole) filed an
opposition to the subject application, averring that:
[Inserting the pic. based on the report]
(a) it is the owner of the mark "LE CORDON BLEU, ECOLE DE
CUISINE MANILLE," which it has been using since 1948 in
cooking and other culinary activities, including in its restaurant
business; and
(b) it has earned immense and invaluable goodwill such that

Cointreau’s use of the subject mark will actually create
GREAT WHITE SHARK ENTERPRISES confusion, mistake, and deception to the buying public
71
Section 2-A of the same law sets out to define how one goes
about acquiring ownership thereof. Under Section 2-A, it is
clear that actual use in commerce is also the test of ownership
but the provision went further by saying that the mark must
not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not

require that the actual use of a trademark must be within the
Philippines. Thus, as correctly mentioned by the CA, under R.A.
No. 166, one may be an owner of a mark due to its actual use
but may not yet have the right to register such ownership here
On October 7, 1993, Cointreau filed its answer claiming to be due to the owner’s failure to use the same in the Philippines for
the true and lawful owner of the subject mark. It averred that: two (2) months prior to registration.
(a) it has filed applications for the subject mark’s registration Nevertheless, foreign marks which are not registered are still
in various jurisdictions, including the Philippines; accorded protection against infringement and/or unfair
competition. At this point, it is worthy to emphasize that the
Philippines and France, Cointreau’s country of origin, are both
(b) Le Cordon Bleu is a culinary school of worldwide acclaim signatories to the Paris Convention for the Protection of
which was established in Paris, France in 1895; Industrial Property (Paris Convention)
In view of the foregoing obligations under the Paris Convention,
(c) Le Cordon Bleu was the first cooking school to have set the the Philippines is obligated to assure nationals of the signatory-
standard for the teaching of classical French cuisine and pastry countries that they are afforded an effective protection against
making; and violation of their intellectual property rights in the Philippines.
(d) it has trained students from more than eighty (80) In the instant case, it is undisputed that Cointreau has been
nationalities, including Ecole’s directress, Ms. Lourdes L. Dayrit. using the subject mark in France since 1895, prior to Ecole’s
Thus, Cointreau concluded that Ecole’s claim of being the averred first use of the same in the Philippines in 1948, of which
exclusive owner of the subject mark is a fraudulent the latter was fully aware thereof. In fact, Ecole’s present
misrepresentation directress, Ms. Lourdes L. Dayrit (and even its foundress, Pat
Limjuco Dayrit), had trained in Cointreau’s Le Cordon Bleu
Issue: Whether or not Cointreau is the true and lawful owner culinary school in Paris, France. Cointreau was likewise the first
of the subject mark and thus, entitled to have the same registrant of the said mark under various classes, both abroad
registered under its name? and in the Philippines, dated November 25, 1986 from its
country of origin, as well as several trademark registrations in
Ruling: Yes. the Philippines.
On the other hand, Ecole has no certificate of registration over

the subject mark but only a pending application covering
services limited to Class 41 of the Nice Classification, referring
to the operation of a culinary school. Its application was filed
only on February 24, 1992, or after Cointreau filed its
trademark application for goods and services falling under
different classes in 1990. Under the foregoing circumstances,
even if Ecole was the first to use the mark in the Philippines, it
cannot be said to have validly appropriated the same.
It is thus clear that at the time Ecole started using the subject
mark, the same was already being used by Cointreau, albeit
abroad, of which Ecole’s directress was fully aware, being an
Under Section 2 of R.A. No. 166, in order to register a alumna of the latter’s culinary school in Paris, France.
trademark, one must be the owner thereof and must have
actually used the mark in commerce in the Philippines for two Hence, Ecole cannot claim any tinge of ownership whatsoever
(2) months prior to the application for registration. over the subject mark as Cointreau is the true and lawful owner
thereof.
72
In any case, the present law on trademarks, Republic Act No. of the mark "BIRKENSTOCK AND DEVICE" in the name of Shoe
8293, otherwise known as the Intellectual Property Code of the Town International and Industrial Corporation the predecessor-
Philippines, as amended, has already dispensed with the in-interest of Philippine Shoe Expo Marketing Corporation.
requirement of prior actual use at the time of registration. Thus,
there is more reason to allow the registration of the subject Philippine Shoe Expo Marketing Corporation:
mark under the name of Cointreau as its true and lawful owner.
Has been using Birkenstock marks in the Philippines for more
Discussion: than 16 years through the mark "BIRKENSTOCK AND DEVICE";
Atty. S: We have here a French company wanting to register November 15, 1991, they obtained a Certificate of Copyright
the trademark, LE CORDON BLEU, ECOLE DE CUISINE Registration for the word "BIRKENSTOCK”.
MANILLE. Cuisine is a very popular school. Obviously this lady
studied in that school in France. When she came back to the However, Shoe Expo failed to file the 10th Year Declaration of
Philippines, she put her own cooking school copying the name Actual Use within the requisite period as required under
‘LE CORDON BLEU, ECOLE DE CUISINE MANILLE’. Again, here, Republic Act 166, and result to cancellation of such marks.
we have an international French school with a registered
trademark in France before registering here, you get the Despite such fact, it continued the use of "BIRKENSTOCK AND
priority date of registration in its own country. Even though, DEVICE" in lawful commerce; and to record its continued
the Filipino school has been using it, nauna pa rin. But since ownership and exclusive right to use the "BIRKENSTOCK"
this is Sec. 166, we have to talk about prior use and it was marks, it has a "re-application" of its old registration.
emphasized here that the prior use need not be in the
Philippines. Issue: Whether or Not Birkenstock Orthopaedie GmbH and Co.
K can register the mark “Birkenstock”?
BIRKENSTOCK v. PSEMC
GR 194307 November 20, 2013 Ruling: Yes.
The Court finds the Birkenstock Orthopaedie GmbH and

Facts: Co. K to be the true and lawful owner of the mark
"BIRKENSTOCK" and entitled to its registration.
BIRKENSTOCK
For 2 reasons:
1. Birkenstock Orthopaedie GmbH and Co. K was able to

establish that it is the OWNER of the mark
"BIRKENSTOCK.”
It submitted evidence relating to the origin and

history of "BIRKENSTOCK" and its use in commerce
long before Philippine Shoe was able to register the
same here in the Philippines.
 Philippine Shoe Expo Marketing Corporation
Birkenstock Orthopaedie GmbH and Co. KG
only presented copies of sales invoices and
(Germany) has been using “Birkenstock” in commerce since advertisements, which are not conclusive evidence of
its claim of ownership of the mark "BIRKENSTOCK" as
1774, on line of quality footwear and thereafter, numerous
these merely show the transactions made by
generations continuously engaged in the manufacture and sale
Philippine Shoe involving the same.
of shoes and sandals bearing the mark "BIRKENSTOCK”.
A trademark is an industrial property over which its
Birkenstock also has various certificates of registration of the owner is entitled to property rights which cannot be
mark "BIRKENSTOCK" in various countries and that it has used appropriated by unscrupulous entities that, in one way
such mark in different countries worldwide, including the or another, happen to register such trademark ahead
Philippines. of its true and lawful owner.
When Birkenstock applied for various trademark registrations The presumption of ownership accorded to a
before the Intellectual Property Office, the registration registrant must then necessarily yield to superior
proceedings were suspended in view of an existing registration evidence of actual and real ownership of a trademark.
73
As a consequence, it was deemed to have abandoned or

2. Failure of Philippine Shoe Expo Marketing Corporation to withdrawn any right or interest over the mark "BIRKENSTOCK."
comply with Republic Act No. 166, the governing law for
Registration which requires the filing of a Declaration of It is not the application or registration of a trademark that vests
Actual Use on specified periods, to wit: ownership thereof, but it is the ownership of a trademark that
confers the right to register the same.
a. Section 12. Duration. — Each certificate of registration
shall remain in force for twenty years: Provided, That Discussion:
registrations under the provisions of this Act shall be
cancelled by the Director, unless within one year
Atty. S: Actually, the Birkenstock, matagal na ito. But the
following the fifth, tenth and fifteenth anniversaries of
the date of issue of the certificate of registration, the German company was not able to enter. They found out that
registrant shall file in the Patent Office an affidavit there was already a Marikina Shoe Company that already
showing that the mark or trade-name is still in use or registered under its name. Again, we are talking about
showing that its non-use is due to special intellectual property. So, if you are the owner or creator of a
circumstance which excuse such non-use and is not particular trademark, then you are the one who has the right
due to any intention to abandon the same, and pay to register. So registration is only a prima facie presumption, it
the required fee. can be rebutted by proof to the contrary shown by the real
owner thereof.
REPUBLIC ACT 166

Section 12. Duration. —
REPUBLIC GAS v. PETRON
Each certificate of registration shall remain in force for twenty
GR 194063 June 17, 2013
(20) years: Provided, That registrations under the provisions of
this Act shall be cancelled by the Director, unless within one
year following the fifth, tenth and fifteenth anniversaries of the Facts:
date of issue of the certificate of registration, the registrant
shall file in the Patent Office an affidavit showing that the mark
or trade-name is still in use or showing that its non-use is due
to special circumstance which excuse such non-use and is not
due to any intention to abandon the same, and pay the required
fee.
REPUBLIC ACT 8293
SECTION 145. Duration.-
A certificate of registration shall remain in force for ten (10)
years; Provided, that the registrant shall file a declaration of
actual use and evidence to that effect, or shall show valid
reasons based on the existence of obstacles to such use, as
prescribed by the Regulations, within one (1) year from the fifth Registered owner of trademarks GASUL and GASUL cylinders
anniversary of the date of the registration of the mark.
Otherwise, the mark shall be removed from the Register by the
Office.
The aforementioned provision clearly reveals that failure to file

the Declaration of Actual Use within the requisite period results
in the automatic cancellation of registration of a trademark.
Authorized user of marks SHELLANE and SHELL device.
In turn, such failure is tantamount to the abandonment or
withdrawal of any right or interest the registrant has over his LPG Dealers’ Association received reports that certain entities
trademark. were engaged in unauthorized refilling, sale and distribution of
LPG cylinders, bearing registered tradenames and trademarks
In this case, Philippine Shoe Expo Marketing Corporation of Petron and Shell.
admitted that it failed to file the 10th Year Declaration of Actual
Use within the requisite period, on or before October 21, 2004.
74
gas contained in the LPG tanks bearing Petron’s or Shell’s marks

is in reality not the latter’s LPG product after the same had been
illegally refilled. The public will then be led to believe that
Republic Gas Corporation is authorized refillers and distributors
of Petron’s or Shell’s LPG products, considering that they are
accepting empty containers of Petron and Shell and refilling
them for resale.
Issue 2: Whether or not Republic Gas Corporation is liable for

Unfair Competition?
Engaged in unauthorized refilling and sale of LPG cylinders
bearing the marks of GASUL and SHELLANE owned by Petron Ruling 2: Yes, liable not only for trademark infringement as
and Shell respectively. defined under Section 155.1 but also unfair competition under
Section 168.3 of R.A. No. 8293
Issue: Whether or not Republic Gas Corporation is liable for
Trademark Infringement?
UNFAIR COMPETITION
RULING: Yes.
Section 168. Unfair Competition, Rights, Regulations and
TRADE Mark INFRINGMENT Remedies.
x x x.
Section 155. Remedies; Infringement. – Any person who shall, 168.3 In particular, and without in any way limiting the scope
without the consent of the owner of the registered mark: of protection against unfair competition, the following shall be
deemed guilty of unfair competition:
155.1 Use in commerce any reproduction, counterfeit, copy or (a) Any person, who is selling his goods and gives them the
colorable imitation of a registered mark of the same container general appearance of goods of another manufacturer or
or a dominant feature thereof in connection with the sale, dealer, either as to the goods themselves or in the wrapping of
offering for sale, distribution, advertising of any goods or the packages in which they are contained, or the devices or
services including other preparatory steps necessary to carry words thereon, or in any other feature of their appearance,
out the sale of any goods or services on or in connection with which would be likely to influence purchasers to believe that
which such use is likely to cause confusion, or to cause mistake, the goods offered are those of a manufacturer or dealer, other
or to deceive; or than the actual manufacturer or dealer, or who otherwise
155.2 Reproduce, counterfeit, copy or colorably imitate a clothes the goods with such appearance as shall deceive the
registered mark or a dominant feature thereof and apply such public and defraud another of his legitimate trade, or any
reproduction, counterfeit, copy or colorable imitation to labels, subsequent vendor of such goods or any agent of any vendor
signs, prints, packages, wrappers, receptacles or engaged in selling such goods with a like purpose;
advertisements intended to be used in commerce upon or in xxxx
connection with the sale, offering for sale, distribution, or Section 170. Penalties. Independent of the civil and
advertising of goods or services on or in connection with which administrative sanctions imposed by law, a criminal penalty of
such use is likely to cause confusion, or to cause mistake, or to imprisonment from two (2) years to five (5) years and a fine
deceive, shall be liable in a civil action for infringement by the ranging from Fifty thousand pesos (₱50,000) to Two hundred
registrant for the remedies hereinafter set forth: Provided, That thousand pesos (₱200,000), shall be imposed on any person
the infringement takes place at the moment any of the acts who is found guilty of committing any of the acts mentioned in
stated in Subsection 155.1 or this subsection are committed Section 155, Section 168 and Subsection 169.1.
regardless of whether there is actual sale of goods or services
using the infringing material. Unfair competition has been defined as the passing off or
attempting to pass off upon the public of goods or business of
one person as the goods or business of another with the end
The mere unauthorized use of a container bearing a registered and probable effect of deceiving the public.
trademark in connection with the sale, distribution or
advertising of goods or services which is likely to cause In the present case, by refilling and selling LPG cylinders
confusion, mistake or deception among the buyers or bearing Petron and Shell’s registered marks, Republic Gas
consumers can be considered as trademark infringement. Corporation is selling goods by giving them the general
appearance of goods of another manufacturer. There is a
Republic Gas Corporation’s acts will inevitably confuse the showing that the consumers may be misled into believing that
consuming public, since they have no way of knowing that the the LPGs contained in the cylinders bearing the marks "GASUL"
75
similar, with its "KOLIN" mark registered on November 23,

2003.
The trademark application was however eventually denied by

the Court of Appeals.
Left: Taiwan Kolin Right: Kolin electronics

Kolin Electronics hinges its case on the following grounds:
1) Taiwan Kolin’s mark is identical to the registered mark
of Kolin Electronics
and "SHELLANE" are those goods or products of the Petron and
2) Such identical mark is used on goods belonging to
Shell when, in fact, they are not. Class 9 to which the registered mark of Kolin
Electronics are also classified.
The deceit exists when REGASCO refilled and sold its LPG 3) Both products are closely-related as they both relate to
containers bearing the registered marks of Petron and Shell. electronic products, instruments, apparatus, or
The Court observed that the consumers may be misled into appliances.
believing that the LPGs contained in the cylinders bearing the
marks GASUL and SHELLANE are those goods or products of ISSUE: Whether or not TAIWAN KOLIN is entitled to its
REGASCO when, in fact, they are not. (the mere use of those trademark registration of "KOLIN" over its products.
LPG cylinders bearing the trademarks “GASUL” and
“SHELLANE” will give the LPGs sold by REGASCO the general
appearance of the products of the petitioners.) HELD: YES.
1. Identical marks may be registered for products from

the same classification.
Discussion:
Class 9
Atty. S: There is trademark infringement because they used Scientific, nautical, surveying, photographic,
the container of the two. Nilagyan sa kilid, whatever pinasok cinematographic, optical, weighing, measuring,
nila. Ideally, it should be Shell that would refill the Shellane and signalling, checking (supervision), life-saving and
petrol that would refill the gasul. When another entity does teaching apparatus and instruments; apparatus and
that, that is registered then that is trademark infringement plus instruments for conducting, switching, transforming,
unfair competition, because kunwari, Gasul pati Shellane ang accumulating, regulating or controlling electricity;
laman, people think “Ah nag order ako ng Shellane, so nag apparatus for recording, transmission or reproduction of
order ako ng Gasul pero yun pala Regasco yung laman ng sound or images; magneticdata carriers, recording discs;
container. That is unfair competition. Nawalan ng negosyo ang compact discs, DVDs and other digital recording media;
Shell and Petron. mechanisms for coin-operated apparatus; cash registers,
calculating machines, data processing equipment,
computers; computer software; fire-extinguishing
March 12, 2019| Transcribed by: Kristal Alaban & Jilianne apparatus.
Paula Ampog
HORNBOOK DOCTRINE: Emphasis should be on the
Taiwan Kolin v. Kolin Electronics similarity of the products involved and not on the arbitrary
G.R. 209843 March 25, 2015 classification or general description of their properties or
characteristics.
FACTS:
On February 29, 1996, Taiwan Kolin filed with the Intellectual In the case at bar, mere uniformity in categorization (Class 9),
Property Office (IPO), for the use of "KOLIN" on a combination by itself, does not automatically preclude the registration of
of goods, including colored televisions, refrigerators, window- what appears to be an identical mark.
type and split-type air conditioners, electric fans, water
dispensers.
2. The products covered by TAIWAN KOLIN’S
Said goods allegedly fall under Classes 9, 11, and 21 of the Nice application and KOLIN ELECTRONIC’S registration
Classification (NCL). Eventually, Taiwan Kolin opted only to are unrelated.
CLASS 9 as the subject of its application.
In ascertaining the relatedness of the products disputed –– the
On July 13, 2006, Kolin Electronics Co., Inc. (Kolin Electronics) doctrine of Mighty Corporation v. E. & J Gallo Winery is
opposed TAIWAN KOLIN’S application. As argued, the mark authoritative. There, the Court held that the goods should be
Taiwan Kolin seeks to register is identical, if not confusingly
76
tested against several factors before arriving at a sound

conclusion on the question of relatedness. The differing features between the two, though they may
appear minimal, are sufficient to distinguish one brand from the
(a) the business (and its location) to which the goods belong; other.
(b) the class of product to which the goods belong;
(c) the product’s quality, quantity, or size, including the nature
of the package, wrapper or container; Atty. Suarez: When I attended the IP Convention, the people
(d) the nature and cost of the articles; there were talking about this and they did not agree with the
(e) the descriptive properties, physical attributes or essential SC’s decision because they are exactly the same — Kolin Kolin,
characteristics with reference to their form, composition, iba lang ang background and yung font but the products are
texture or quality; really similar [they are all electronic]. There was a big protest
(f) the purpose of the goods; by the IP luminaries. Mighty Corporation v. E. & J Gallo Winery
(g) whether the article is bought for immediate consumption, was quoted in this case. READ THIS CASE.
that is, day-to-day household items;
(h) the fields of manufacture; GSIS Family Bank v. BPI Family Bank
(i) the conditions under which the article is usually purchased; G.R. 175278 September 23, 2015
and
(j) the channels of trade through which the goods flow, how
FACTS:
they are distributed, marketed, displayed and sold.
GSIS Family Bank
• Thrift Bank
TAIWAN KOLIN KOLIN ELECTRONICS
• 1971 - Royal Savings Bank
• 1984 - renamed as Comsavings Bank, Inc.
Classified as home Classified as power • 1987 - GSIS Family Bank
appliances supply and audio • Thrift Bank (DTI Registration and Monetary Board
equipment accessories Circular Approval)
BPI Family Bank

Perform distinct function and purpose • 1969 - Family First Savings Bank (registered with SEC);
Family Savings Bank; Family Bank and Trust and
Sells and distributes on Sold and flow through Company (FBTC)
wholesale and to electrical and hardware • 1985 - BPI Family Savings Bank (Upon the merger of
accredited dealers stores FBTC with the BPI, BPI acquired the right to the use of
the name of the absorbed corporation)
BPI petitioned the SEC Company Registration and Monitoring

3. The ordinarily intelligent buyer is not likely to be Department (SEC CRMD) to disallow or prevent the registration
confused. of the name "GSIS Family Bank" or any other corporate name
with the words "Family Bank" in it. It claims that since 1985:
In trademark cases, particularly in ascertaining whether one • exclusive ownership to the name "Family Bank," having
trademark is confusingly similar to another, no rigid set rules acquired the name since its purchase and merger with
can plausible be formulated. Each case must be decided on its Family Bank and Trust Company way back 1985.
merits, with due regard to the goods or services involved, the • it has been known as "BPI Family Bank" or simply "Family
usual purchaser’s character and attitude, among others Bank" both locally and internationally.
TAIWAN KOLIN KOLIN ELECTRONICS ISSUE #1:

• Whether or not GSIS be ordered to change its name. YES
• Whether or not there exists a confusing similarity between
Perform distinct function and purpose Both the corporate names BPI Family Bank and GSIS Family Bank.
competing marks refer to the word "KOLIN" written YES
in upper case letters and in bold font.
HELD:
But the Court at once notes the distinct visual and
aural differences between them CORPORATION CODE Section 18. Corporate name. – No
corporate name may be allowed by the Securities and
Plain and red color italicized and colored Exchange Commission if the proposed name is identical or
background black deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or
77
is patently deceptive, confusing or contrary to existing laws. - whether there is a joint arrangement between GSIS and
When a change in the corporate name is approved, the Family Bank; whether there is a joint arrangement
Commission shall issue an amended certificate of incorporation between BPI and GSIS regarding Family Bank;
under the amended name.
- whether Comsavings Bank has acquired Family Bank; and
TEST: In determining the existence of confusing - whether there is there an arrangement among
similarity in corporate names: Comsavings Bank, GSIS, BPI, and Family Bank regarding
1. The similarity is such as to mislead a person using ordinary BPI Family Bank and GSIS Family Bank.
care and discrimination
2. It suffices that confusion is probable or likely to occur even
without such proof of actual confusion ISSUE #2:
Whether or not the word "family" is a generic or descriptive
1. The similarity is such as to mislead a person using name. NO.
ordinary care and discrimination
Generic marks — are commonly used as the name or
GSIS Family Bank - A BPI Family Bank description of a kind of goods. Ex: "Lite" for beer or
Thrift Bank "Chocolate Fudge" for chocolate soda drink.
GSIS BPI Descriptive marks — convey the characteristics,

function, qualities or ingredients of a product to one who
Thrift has never seen it or does not know it exists. Ex:
"Arthriticare" for arthritis medication.
Arbitrary marks — are "words or phrases used as a

"BPI“ and "GSIS" - are merely the acronyms of the proper mark that appear to be random in the context of its use.
names by which the two corporations identify themselves. They are generally considered to be easily remembered
because of their arbitrariness. They are original and
But these are not sufficiently distinct words that differentiate unexpected in relation to the products they endorse, thus,
GSIS's corporate name from BPI’s. becoming themselves distinctive".
While "GSIS" is merely an acronym of the proper name by Suggestive marks — "are marks which merely suggest
which petitioner is identified, the word "thrift" is simply a some quality or ingredient of goods. The strength of the
classification of the type of bank that petitioner is. suggestive marks lies on how the public perceives the
word in relation to the product or service".
Even if the classification of the bank as "thrift" is appended
proposed corporate name, it will not make the said corporate "Family," as used in BPI's corporate name, is not generic.
name distinct from respondent's because the latter is likewise
engaged in the banking business. The word "family" cannot be separated from the word "bank”.
This coined phrase, neither being generic nor descriptive, is
The overriding consideration in determining whether a person, merely suggestive and may properly be regarded as arbitrary.
using ordinary care and discrimination, might be misled is the
circumstance that both GSIS and BPI are engaged in the same By definition, there can be no expected relation between the
business of banking. The likelihood of confusion is accentuated word "family" and the banking business of respondent. Rather,
in cases where the goods or business of one corporation are the words suggest that respondent's bank is where family
the same or substantially the same to that of another savings should be deposited.
corporation.
Atty. Suarez: This is a trade name. Since it’s a trade name it

2. It suffices that confusion is probable or likely to occur is not registered under the IPc but with the SEc. and if your
even without such proof of actual confusion egister a coproation, you have to submit first 3 corporate
names and SEC will actually do search inquiry whether there is
BPI alleged that, that upon seeing a Comsavings Bank branch a similar name. They have different rules under the sEc but
with the signage "GSIS Family Bank" displayed at its premises, they [SC] also applied our IPc on WN the term family is generic
some of the respondent’s officers and their clients began asking to what it is being used to represent and the answer is NO
questions: because the family is not related/associated to a bank like apple
- whether GSIS has acquired Family Bank; computer. Unrelated terms that you put together. so, that could
be exclusively used you have a trade name. So that is
exclusively similar to another name, the SEC can prevent the
use of such trade name.
78
is applied to labels, signs, prints, packages, wrappers,

receptacles, or advertisements intended to be used upon or
Coffee Partners v. San Francisco Coffee in connection with such goods, business, or services;
G.R. 169504 March 3, 2010 (4) The use or application of the infringing mark or trade name
is likely to cause confusion or mistake or to deceive
purchasers or others as to the goods or services themselves
FACTS:
or as to the source or origin of such goods or services or
COFFEE PARTNERS, INC. the identity of such business; and
(5) It is without the consent of the trademark or trade name
Local corporation which has a franchise agreement with Coffee
owner or the assignee thereof.
Partners LTd. (CPL) to operate coffee ships in the Philippine
using trademarks design by CPL such as “SAN FRANCISCO
SEC. 165.2
COFFEE”
(a) Notwithstanding any laws or regulations providing for any
SAN FRANCISCO COFEE & ROASTERY, INC. obligation to register trade names, such names shall be
Another local corporation registered the business name ”SAN protected, even prior to or without registration, against any
unlawful act committed by third parties.
FRANCISCO COFEE & ROASTERY, INC.” with DTI in June 1995
(b) In particular, any subsequent use of a trade name by a third
SAN FRANCISCO COFEE & ROASTERY, INC. party, whether as a trade name or a mark or collective
mark, or any such use of a similar trade name or mark,
• Discovered the Coffee Partners was about to open a coffee likely to mislead the public, shall be deemed unlawful.
shop under the name “SAN FRANCISCO COFFEE”
• Filed a complaint with Bureau of Legal Affairs - Intellectual RA 8293 has dispensed with the registration requirement. A
Property Office for infringement and/or unfair competition trade name need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner
Coffee Partners’ Contention: of an infringing trademark. All that is required is that the trade
• When a trade name is not registered, a suit for name is previously used in trade or commerce in the
infringement is not available. [Note: San Francisco Philippines.
registered its trade name with DTI and not the Intellectual
Property Office] It is the likelihood of confusion that is the gravamen of
• No confusion is likely to occur between its trademark and infringement. But there is no absolute standard for likelihood
San Francisco Coffee & Roaster’s trade name because of of confusion. Only the particular, and sometimes peculiar,
wide divergence in the channels of trade circumstances of each case can determine its existence.
• The proper noun “San Francisco” and the generic name
“coffee” are not capable of exclusive appropriation In determining similarity and likelihood of confusion, our
jurisprudence has developed two tests: the dominancy test and
the holistic test.
ISSUE: I. The dominancy test focuses on the similarity of the
Does Coffee Partners’ use of the trademark “SAN FRANCISCO prevalent features of the competing trademarks that might
COFFEE” constitute infringement of SAN FRANCISCO COFEE & cause confusion and deception, thus constituting
ROASTERY, INC’s trade name? YES. infringement. If the competing trademark contains the
main, essential, and dominant features of another, and
Can there be infringement even if the trade name is not confusion or deception is likely to result, infringement
registered with the Intellectual Property Office? YES. occurs. Exact duplication or imitation is not required. The
question is whether the use of the marks involved is likely
to cause confusion or mistake in the mind of the public or
HELD: to deceive consumers.
II. In contrast, the holistic test entails a consideration of the
Prosource International, Inc. v. Horphag Research entirety of the marks as applied to the products, including
Management SA: What constitutes infringement of an the labels and packaging, in determining confusing
unregistered trade name? similarity. The discerning eye of the observer must focus
not only on the predominant words but also on the other
(1) The trademark being infringed is registered in the features appearing on both marks in order that the observer
Intellectual Property Office; however, in infringement of may draw his conclusion whether one is confusingly similar
trade name, the same need not be registered; to the other.
(2) The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer; Applying either the dominancy test or the holistic test, Coffee
(3) The infringing mark or trade name is used in connection Partners’ "SAN FRANCISCO COFFEE" trademark is a clear
with the sale, offering for sale, or advertising of any goods, infringement of the "SAN FRANCISCO COFFEE & ROASTERY,
business or services; or the infringing mark or trade name INC." trade name.
79
Intellectual Property Office of the Philippines launched a series

The descriptive words "SAN FRANCISCO COFFEE" are precisely of consultations with stakeholders and various business groups
the dominant features of respondent’s trade name. regarding the Philippines' accession to the Madrid Protocol. It
ultimately arrived at the conclusion that accession would
The corporations are engaged in the same business of selling benefit the country and help raise the level of competitiveness
coffee, whether wholesale or retail. for Filipino brands. Hence, it recommended in September 2011
to the Department of Foreign Affairs (DFA) that the Philippines
The likelihood of confusion is higher in cases where the should accede to the Madrid Protocol.
business of one corporation is the same or substantially the
same as that of another corporation. In this case, the DFA endorsed to the President the country's accession to the
consuming public will likely be confused as to the source of the Madrid Protocol.
coffee being sold at petitioner’s coffee shops.
On March 27, 2012, President Benigno C. Aquino III ratified the
Madrid Protocol through an instrument of accession.
Atty. Suarez: Trade names need not be registered with the
Bureau of Trademark as long as there is registration with DTI The Madrid Protocol entered into force in the Philippines on July
or SEC, or even if it is merely used as a trade name and it was 25, 2012.
already known, that cannot be used anymore or registered
anymore as the trademark of another.
Intellectual Property Association of the Philippines is an
There can be infringement of a trade name. One can sue for association of more than 100 law firms and individual
infringement of trade name even though it is not registered practitioners in Intellectual Property Law and its main objective
with Bureau of Trademark. As long as the infringement case is is to promote and protect intellectual property rights in the
filed with the BLA [Now Special Commercial Court]. Before they Philippines through constant assistance and involvement in the
were not strict, the infringement case can be filed in the BLA. legislation of intellectual property law.
Now it must be filed with special commercial court which has
jurisdiction over infringement cases and unfair competition IPAP commenced this special civil action for certiorari
cases and prohibition to challenge the validity of the President's
accession to the Madrid Protocol without the concurrence of
the Senate. IPAP claims that:
Atty. Suarez: So you know the difference treaty and an • the Madrid Protocol is a treaty, not an executive
international agreement. A treaty needs to be ratified by the agreement;
Senate. An international agreement needs no ratification. • implementation of the Madrid Protocol in the Philippines;
specifically the processing of foreign trademark
The Madrid Protocol is actually an agreement relating to applications, conflicts with the Intellectual Property Code
trademarks, specifically, the processing of foreign trademark
application. There was an allegation, here, that it was in conflict IPAP cited:
with RA 8293. • SECTION 125 of the Intellectual Property Code:
Representation; Address for Service. - If the applicant is
IPAP v. Ochoa not domiciled or has no real and effective commercial
G.R. 204605 July 19, 2016 establishment in the Philippines; he shall designate by a
written document filed in the office, the name and address
FACTS: of a Philippine resident who may be served notices or
process in proceedings affecting the mark. XXX
COFFEE PARTNERS, INC.
• MADRID PROTOCOL ARTICLE 2: Securing Protection
The Madrid System for the International Registration of through International Registration — Where an application
Marks (Madrid System) — centralized system providing a for the registration of a mark has been filed with the Office
one-stop solution for registering and managing marks of a Contracting Party, or where a mark has been
worldwide; allows the trademark owner to file one application registered in the register of the Office of a Contracting
in one language and to pay one set of fees to protect his mark Party, the person in whose name that application or that
in the territories of up to 97 member-states. [GOVERNED BY registration stands may, subject to the provisions of this
THE MADRID PROTOCOL] Protocol secure protection for his mark in the territory of
the Contracting Parties, by obtaining the registration of
2004 that mark in the register of the International Bureau of the
Intellectual Property Office of the Philippines began considering World Intellectual Property Organization, provided that,
the country's accession to the Madrid Protocol. XXX
2005
80
CONTENTION of IPAP: Article 2 of the Madrid Protocol

means that foreign trademark applicants may file their
applications through the International Bureau or the World Atty. Suarez: So if you noticed, the IPAP it is composed of
Intellectual Property Organization and their applications will be 100 law firms and it is a way of making money. When we have
automatically granted trademark protection without the need a foreign corporation application wanting to register their
for designating their resident agents in the country. trademark, they hire law firms to represent them. If there is no
more express requirement for an agent, the foreign corporation
IPAP prayed that the implementation of the Madrid can directly apply and not have to hire these law firms. To
Protocol in the Philippines be restrained because it stands actually go to the SC for that issue on agency, they must be
to be injured as a result of the enforcement of the Madrid making a lot of money. But there is actually no conflict.
Protocol in the Philippines because of the acceptance and
approval of applications submitted through the Madrid Protocol Even if it is a registered trademark abroad, it does not mean
without local representation as required by Section 125 of the that they are automatically registered here. Everyone has to
Intellectual Property Code; go to the process and there is a process, the need for an
agent, maybe if not longer expressed. If they want to go to
an agent, they can go to an agent. If they want to go and just
ISSUE: Whether or not the Madrid Protocol is in conflict with hire somebody, like their own employee to apply, then they
the Intellectual Property Code. can just go through the application process, so it stays, the
Madrid Protocol.
HELD: NO. SOMBOONSAKDIKUL v ORLANE

The Madrid Protocol accords with the intent and spirit of the GR 188996 (2017)
Intellectual Property Code, particularly on the subject of the
registration of trademarks. The Madrid Protocol does not
amend or modify the Intellectual Property Code on the Seri Somboonsakdikul filed an application for registration of the
acquisition of trademark rights considering that the applications LOLANE with the IPO for goods classified under Class 3
under the Madrid Protocol are still examined according to the (personal care products).
relevant national law. The Intellectual Property Office will only
grant protection to a mark that meets the local registration Orlane S.A. filed an opposition to Seri’s application
requirements. on the ground that the mark LOLANE was confusingly similar
The injury that the IPAP will allegedly suffer from the to ORLANE: in presentation, general appearance, and
implementation of the Madrid Protocol is imaginary, incidental pronunciation, thus would amount to an infringement of its
and speculative. mark
IPAP has misinterpreted Section 125 of the IP Code on the issue Issue: Whether or not there is confusing similarity between
of representation. The provision only states that a foreign ORLANE and LOLANE which would bar the registration of
trademark applicant "shall designate by a written document LOLANE before the Intellectual Property Office (IPO). – NO
filed in the office, the name and address of a Philippine resident Ruling: The most essential requirement for the determination
who may be served notices or process in proceedings affecting of likelihood of confusion is the existence of resemblance
the mark;" it does not grant anyone in particular the between trademarks, i.e., colorable imitation.
right to represent the foreign trademark applicant.
Hence, the IPAP cannot justly claim that it will suffer irreparable Colorable imitation defined as such similarity in form, content,
injury or diminution of rights granted to it by Section 125 of the words, sound, meaning, special arrangement or general
IP Code from the implementation of the Madrid Protocol. appearance of the trademark or trade name in their overall
presentation or in their essential and substantive and distinctive
The method of registration through the IPOPHL, as laid down parts as would likely mislead or confuse persons in the ordinary
by the IP Code, is distinct and separate from the method of course of purchasing the genuine article.Absent any finding of
registration through the WIPO, as set in the Madrid Protocol. its existence, there can be no likelihood of confusion.
Comparing the two methods of registration despite their being
governed by two separate systems of registration is thus In determining colorable imitation, the Court has used either:
misplaced.
Dominancy Test Holistic Test
The IPAP misapprehends the procedure for examination under Considers the similarity Considers the entirety of
the Madrid Protocol, The difficulty, which the IPAP illustrates, of the prevalent or the marks as applied to
is minimal, if not altogether inexistent. The IPOPHL actually dominant features of the the products, including
requires the designation of the resident agent when it refuses competing trademarks the labels and
the registration of a mark. Local representation is further that might cause packaging, in
required in the submission of the Declaration of Actual Use, as confusion, mistake, and determining confusing
well as in the submission of the license contract. similarity
81
deception in the mind of BOY & DEVICE” mark is a variation or derivative of UFC’s
the purchasing public “PAPA” marks.
More consideration is
given on the aural and UFC argued that this was especially true considering that UFC’s
visual impressions ketchup product and Barrio Fiesta’s lechon sauce product are
created by the marks on related articles. Thus, IPO denied the application as it is
the buyers of the goods confusingly similar to the mark of UFC.
In the case at bar, the Court applied the Dominancy Test. Issue: whether or not “Papa Boy & Device” may be registered
as a trademark. - NO
Based on the distinct visual and aural differences between
LOLANE and ORLANE, there is NO confusing similarity between Ruling: NO, “PAPA BOY & DEVICE” cannot be registered as
the two marks. Trademark citing Section 123.l (d) of the IP Code provides:
A mark cannot be registered if it:
The suffix LANE is not the dominant feature of Seri’s mark. xxxx
Neither can it be considered as the dominant feature of (d) is identical with a registered mark belonging to a different
ORLANE which would make the two marks confusingly similar. proprietor or a mark with an earlier filing or priority date, in
respect of:
First, an examination of the appearance of the marks would i. The same goods or services, or
show that there are noticeable differences in the way they are ii. Closely related goods or services, or
written or printed, as shown below: iii. If it nearly resembles such a mark as to be likely to
There are visual differences between LOLANE and ORLANE deceive or cause confusion.
since the mark ORLANE is in plain block upper case letters,
while the mark LOLANE was rendered in stylized word with the In this case, the marks are identical since the products has
second letter L and the letter A co-joined. PAPA, and both are the same goods which is a sauce. Under
the DOMINANCY TEST, the dominant features of the competing
Second, as to the aural aspect of the marks, LOLANE and marks are considered in determining whether these competing
ORLANE do not sound alike. Appeals to the ear in pronouncing marks are confusingly similar.
ORLANE and LOLANE are dissimilar.
The first syllables of each mark, i.e., OR and LO do not sound Greater weight is given to the similarity of the appearance of
alike. The proper pronunciation of the last syllable LANE also the products arising from the adoption of the dominant features
differ – of the registered mark, disregarding minor differences. The
“LEYN” for LOLANE visual, aural, connotative, and overall comparisons and
“LAN” for ORLANE, being of French origin impressions engendered by the marks in controversy as they
are encountered in the realities of the marketplace are the main
Comment: Following universal acquiescence and comity, our considerations.
municipal law on trademarks regarding the requirement of
actual use in the Philippines must subordinate an international If the competing trademark contains the main or essential or
agreement inasmuch as the apparent clash is being decided by dominant features of another, and confusion and deception is
a municipal tribunal. We already know the principles involved likely to result, infringement takes place.
here, just wanted to show the class the latest cases on
infringement. A scrutiny of UFC's and Barrio Fiesta's respective marks would
show that the word "PAPA" is the dominant feature of UFC's
UFC PHILIPPINES INC v FIESTA BARRIO mark "PAPA KETSARAP."
MANUFACTURING CORP.
GR19889 (2016) Contrary to Barrio Fiesta's contention, "KETSARAP" cannot be
the dominant feature of the mark as it is merely descriptive of
the product. Furthermore, it is the "PAPA" mark that has been
Barrio Fiesta filed an application with the IPO for the mark in commercial use for decades and has established awareness
“PAPA BOY & DEVICE” for “lechon sauce.” and goodwill among consumers.
UFC opposed the application. It contended that “PAPA BOY & The word "PAPA" is also the dominant feature of Barrio Fiesta's
DEVICE” is confusingly similar with its “PAPA” marks and its "PAPA BOY & DEVICE" mark subject of the application, such
variations inasmuch as the former incorporates the term that "the word 'PAPA' is written on top of and before the other
“PAPA,” which is the dominant feature of UFC’s “PAPA” marks. words such that it is the first word/figure that catches the
eyes.“
UFC averred that the use of “PAPA BOY & DEVICE” mark for
lechon sauce product, if allowed, would likely lead the The part of Barrio Fiesta's mark which appears prominently to
consuming public to believe that said lechon sauce product the eyes and ears is the phrase "PAPA BOY" and that is what a
originates from or is authorized by UFC, and that the “PAPA
82
purchaser of its product would immediately recall, not the infringement occurs. his conclusion whether
smiling hog. Exact duplication or one is confusingly
imitation is not similar to the other.
Comment: This is based on Section 123 (d). If actually, Papa required. The question
Boy very same design with the Papa mark so this could fall to is whether the use of
one of them as seen by consumers as a younger version. Kase the marks involved is
Papa Boy and the Papa, that is why it is very confusing. likely to cause confusion
or mistake in the mind
CITIGROUP, INC v CITYSTATE SAVINGS BANK GR of the public or to
205409 (2018) deceive consumers.
The ATM cards issued by Citibank N.A., Philippine Branch and Applying the dominancy test,the prevalent feature of City
Citibank Savings, Inc. are labelled "CITICARD". The trademark State's mark, the golden lion's head device, is not present at all
CITICARD is owned by Citibank N.A. and is registered in the in any of Citigroup's marks. The only similar feature between
[Intellectual Property Office] of the Philippines. City State's mark and Citigroup's collection of marks is the word
"CITY" in the former, and the "CITI" prefix found in the latter.
In the mid-nineties, a group of Filipinos and Singaporean The mark is to be used for its ATM services which could only
companies formed a consortium to establish Citystate Savings be secured at Citystate Savings Bank’s premises and not in
Bank, Inc. It has a registered mark affixed in its name a lion’s open market of ATM services which diminishes the possibility
head. of confusion on the part of prospective customers.
ATM service is not an ordinary product which could be obtained

Citystate Citigroup
at any store without the public noticing its association with the
applied for registration filed an opposition to
banking institution that provides said service. The customer
of its trademark "CITY Citystate's application.
must first open an account before it could avail of its ATM
CASH WITH GOLDEN Citigroup claimed that
service.
LION'S HEAD" with the the "CITY CASH WITH
Intellectual Property GOLDEN LION'S HEAD"
Since ATM services must be secured and contracted for at the
Office. mark is confusingly
offering bank's premises, any marketing campaign for an ATM
similar to its own "CITI"
service must focus first on the offering bank. Hence, any
marks.
effective internet and newspaper advertisement for Citystate
Savings Bank would include and emphasize the golden lion's
Issue: Whether the trademark sought to be registered is head device. Indeed, a radio advertisement would not have it
confusingly similar to the trademark of Citigroup.- NO because a mark is a question of visuals, by statutory
definition. Thus, the similarity between the sounds of "CITI"
and "CITY" in a radio advertisement alone neither is sufficient
Ruling: There is no objective test for determining whether the for this Court to conclude that there is a likelihood that a
confusion is likely. Likelihood of confusion must be determined customer would be confused
according to the particular circumstances of each case.
Comment: Unlike those products that we saw earlier (yung
To aid in determining the similarity and likelihood of confusion mga orlay, orlane, ormand etc), you go to the department store
between marks, our jurisprudence has developed two (2) tests: and pick it up, may mga sariling mga counter yan so di ka
talaga malilito pero yung mga catsup, there is a possibility that
Dominancy Test Holistic Test the consumer will be confused. But when it comes to an ATM
Focuses on the Entails a consideration card, the likelihood of confusion is very unlikely. Because you
similarity of the of the entirety of the open an account then you go to the bank that you want to open
prevalent features of marks as applied to the an account with, you don't even know how the ATM card is
the competing products, including the gonna look like.
trademarks that might labels and packaging, in
cause confusion and determining confusing So if you have one ATM card with the City and Citi, does not
deception, thus similarity. The really matter because it could not influence anyone to open an
constituting discerning eye of the account with City State thinking that you are opening an
infringement. If the observer must focus not account with Citi Bank.
competing trademark only on the
contains the main, predominant words but If you notice, the rulings of the Supreme Court will also focus
essential, and dominant also on the other on the kind of product. Yung mga grocery products, ayan, kahit
features of another, and features appearing on medyo malayo (Kotex and Sanitex), since it is susceptible to
confusion or deception both marks in order that confusion. Pero impossible mangyari yan sa banko.
is likely to result, the observer may draw
83
(story on how Davao used to have a Citi Savings here but basic rule that he who alleges must prove his case, the burden
closed due to lack of customers) lies on the petitioner to show damage and non-use.
W Land Holdings v Starwood Hotels The IP Code and the Trademark Regulations have not
G.R. 222366, (2017) specifically defined "use."
However, it is understood that the "use" which the law requires

Starwood filed an opposition in the Bureau of Legal Affairs of to maintain the registration of a mark must be genuine, and
the Intellectual Property Office to the registration of the W Land not merely token. Based on foreign authorities, genuine use
Holdings mark, saying that there is striking confusion between may be characterized as a bona fide use which results or tends
the two: to result, in one way or another, into a commercial interaction
or transaction "in the ordinary course of trade."
Starwood Hotels W Land Holdings
filed an application for filed an application for Trademark Regulations , as amended by Office Order No. 056-
registration of “W” registration of its mark 13
under Class 43 and under Class 36 of the (c) The following shall be accepted as proof of actual use of the
Class 44 of the NICE NICE classification mark: (1) labels of the mark as these are used; (2) downloaded
classification pages from the website of the applicant or registrant clearly
showing that the goods are being sold or the services are being
The Bureau of Legal Affairs ruled in favor of Starwood. On rendered in the Philippines; (3) photographs (including digital
reconsideration, it ruled the same. photographs printed on ordinary paper) of goods bearing the
On May 29, 2009, W Land Holdings filed a petition for marks as these are actually used or of the stamped or marked
cancellation in the Bureau of Legal Affairs of the Starwood logo container of goods and of the establishment/s where the
for non-use, services are being rendered; (4) brochures or advertising
under Sec. 151.1 (c) of RA 8293 materials showing the actual use of the mark on the goods
-Further, that it barred the registration of their mark, even being sold or services being rendered in the Philippines; (5) for
when they have been doing business in real-estate in the online sale, receipts of sale of the goods or services rendered
country. or other similar evidence of use, showing that the goods are
151.1. A petition to cancel a registration of a mark placed on the market or the services are available in the
under this Act may be filed with the Bureau of Legal Philippines or that the transaction took place in the Philippines;
Affairs by any person who believes that he is or will (6) copies of contracts for services showing the use of the
be damaged by the registration of a mark under this mark. Computer printouts of the drawing or reproduction of
Act as follows: marks will not be accepted as evidence of use.
Xxx (d) The Director may, from time to time, issue a list of
c. At any time, if the registered owner of the mark acceptable evidence of use and those that will not be accepted
without legitimate reason fails to use the mark within by the Office.
the Philippines, or to cause it to be used in the -“Advertising on the Net and cybershopping are turning the
Philippines by virtue of a license during an Internet into a commercial marketplace.”
uninterrupted period of three (3) years or longer.
The hotel industry is no stranger to the developments and
ISSUE: Was there actual use of Starland’s mark? –YES advances in technology. In this accord, a hotel's website has
now become an integral element of a hotel business. Especially
RULING: There is actual use of the mark. The IP Code defines with the uptrend of international travel and tourism, the hotel's
a "mark" as "any visible sign capable of distinguishing the website is now recognized as an efficient and necessary tool in
goods (trademark) or services (service mark) of an enterprise." advertising and promoting its brand in almost every part of the
“The actual use of the mark representing the goods or services world.
introduced and transacted in commerce over a period of time
creates that goodwill which the law seeks to protect. Thus, the use of mark on the internet must be shown to result
into a within-State sale, or at the very least, discernibly
For this reason, the IP Code, under Section 124.2,54 requires intended to target customers that reside in that country. This
the registrant or owner of a registered mark to declare "actual being so, the use of the mark on an interactive website, for
use of the mark" (DAU) and present evidence of such use within instance, may be said to target local customers when they
the prescribed period. Failing in which, the IPO DG may cause contain specific details regarding or pertaining to the target
the motu propio removal from the register of the mark's State, sufficiently showing an intent towards realizing a within-
registration. State commercial activity or interaction. These details may
constitute a local contact phone number, specific reference
Also, any person, believing that "he or she will be damaged by being available to local customers, a specific local webpage,
the registration of a mark," which has not been used within the whether domestic language and currency is used on the
Philippines, may file a petition for cancellation. Following the website, and/or whether domestic payment methods are
84
accepted. While the case was pending, Republic Act No. 8293 was
enacted and took effect on January 1, 1998. The BPTTT was
The website is readily accessible to Philippine citizens and abolished and its functions transferred to the newly created
residents, where they can avail and book amenities and other Intellectual Property Office.
services in any of Starwood's W Hotels worldwide. Its website
also readily provides a phone number75 for Philippine Abelardo, the Director of the Bureau of Legal Affairs, IPO,
consumers to call for information or other concerns. The rendered a Decision dismissing Mattel's opposition and giving
website further uses the English language76 - considered as an
due course to Uy’s application for the registration of the
official language in this country77 - which the relevant market
trademark "Barbie" used on confectionary products. The
in the Philippines understands and often uses in the daily
Director held that there was no confusing similarity between
conduct of affairs. In addition, the prices for its hotel
accommodations and/or services can be converted into the the two competing marks because the goods were non-
local currency or the Philippine Peso.78 Amidst all of these competing or unrelated.
features, Starwood's "W" mark is prominently displayed in the
website through which consumers in the Philippines can Further, there was no proof on record that Mattel had ventured
instantaneously book and pay for their accommodations, with into the production of chocolates and confectionary products
immediate confirmation, in any of its W Hotels. Furthermore, it under the trademark "Barbie" to enable it to prevent Uy from
has presented data showing a considerably growing number of using an identical "Barbie" trademark on said goods. The
internet users in the Philippines visiting its website since 2003, records were bereft of the fact that the Director of the Bureau
which is enough to conclude that Starwood has established of Trademarks had already declared the subject trademark
commercially-motivated relationships with Philippine application abandoned due to the non-filing of the Declaration
consumers. of Actual Use by Uy.
COMMENT: Where are the hotels? Outside the Philippines but

Issue: Whether or not the application is deemed abandoned
the websites can be visited here in the Philippines.
by the non-filing of the Declaration of Actual Use.
We've already know that it is not prior use that is important
under our new RA8293 but actual use. Held: YES.
The case has been rendered moot and academic.
Q. What do you actual use? Uy's declaration in his Comment and Memorandum before this
A. You do not need to sell the goods here, you don't need your Court that he has not filed the DAU as mandated by pertinent
goods to be sold here as long as you use the trademark. What provisions of R.A. No. 8293 is a judicial admission that he has
is important is not the goods but the trademark for your goods, effectively abandoned or withdrawn any right or interest in his
even if your goods are abroad (in this case, the hotels abroad). trademark.
If Filipinos actually book for a room abroad here in the
Philippines, of course, through the internet. So the IPO has a Section 124.2 of R.A. No. 8293 provides:
lot of orders, yung mga circulars to comply to the development The applicant or the registrant shall file a declaration of actual
of technology, so na broaden na yung meaning nung actual use of the mark with evidence to that effect, as prescribed by
use. Actual use is not confined to rubber shoes, electric fan etc. the Regulations within three (3) years from the filing date of
the application. Otherwise, the applicant shall be refused
March 14, 2019| Transcribed by: Carla Lousie Bayquen & or the marks shall be removed from the Register by the
Marvin Doods De Castro Director.
MATTEL, INC. vs. FRANCISCO Discussion:

G.R. No. 101897 March 5, 1993 The requirement of DAU is very important in the new law; RA
8293. If the application is still pending, it is deemed withdrawn.
If it has been granted, it is deemed cancelled for the non-filing
Jimmy A. Uy filed a trademark application with the Bureau of
of the DAU.
Patents, Trademarks and Technology Transfer for registration
of the trademark "BARBIE" for use on confectionary products
in Class 30 of the International Classification of Goods. EY INDUSTRIAL SALES vs. SHEN DAR ELECTRICITY
AND MACHINERY CO.
Mattel, Inc., a corporation organized under the laws of the G.R. No. 184850 October 20, 2010
State of Delaware, United States of America, filed a Notice of
Oppositionagainst Uy's "Barbie" trademark as the latter was EY is a domestic corporation engaged in the production,
confusingly similar to its trademark on dolls, doll clothes and distribution and sale of air compressors and other industrial
doll accessories, toys and other similar commercial products. tools and equipment.
85
Shen Dar is a Taiwan-based foreign corporation engaged in the Shen Dar challenges the propriety of such cancellation on the
manufacture of air compressors. ground that there was no petition for cancellation as required
under Sec. 151 of RA 8293. A petition for cancellation of a mark
EY imported compressors from Shen Dar. In 1997, Shen Dar under the said provision is filed with the Bureau of Legal Affairs.
filed Trademark Application with the IPO for the mark "VESPA, According to Shen Dar, EY did not file a petition for cancellation,
Chinese Characters and Device" for use on air compressors and thus the Director General cannot cancel their registration.
welding machines. It was approved on 2007.
But according to the Supreme Court, the interests of justice
On 1999, EY filed Trademark Application also for the mark dictate, and in view of its findings, that the COR of Shen Dar
"VESPA," for use on air compressors. On 2004, the IPO issued must be cancelled.
a certificate of registration (COR) in favor of EYIS.
Quasi-judicial and administrative bodies are not bound by
Shen Dar filed a Petition for Cancellation of EY’s COR with the technical rules of procedure. Such principle, however, is
BLA. It alleged that: tempered by fundamental evidentiary rules, including due
- The issuance of the COR in favor of EY violated Section process.
123.1 paragraphs (d), (e) and (f) of Republic Act No. (RA)
8293. This is similar to the earlier filing or priority. In this case, Shen Dar was afforded due process.
- It first filed an application for the mark.
- EY was a mere distributor of air compressors bearing the Discussion:
mark "VESPA" which it imported from Shen Dar. Shen Dar The manufacturer of the compressors is Shen Dar. In this case,
also argued that it had prior and exclusive right. we are only talking about the mark VESPA, who is the one who
created that mark and used it on the air compressors. It was
EYIS denied the claim of Shen Dar to be the true owners proven that it was EY. Maybe Shen Dar found out that EY was
of the mark "VESPA" being the sole assembler and using the mark on their compressors they manufacture. But
fabricator of air compressors since the early 1990s. They trademark is different from patent.
further alleged that the air compressors that Shen Dar
allegedly supplied them bore the mark "SD" for Shen Dar Trademark is owned by the one who created it and the one
and not "VESPA." who used it for the product. Whatever product, whether
manufactured by that entity or not. That’s not an issue as to
Issue 2: Who between EY and Shen Dar has the right over the ownership of trademark.
trademark VESPA?
Even if they were not first to file, proof of ownership is
Held: EY Industrial. necessary for the intellectual creation here.
First to File Rule. The registration of a mark is prevented with
the filing of an earlier application for registration. This must
CHESTER UYCO ET AL. vs. VICENTE LO
not, however, be interpreted to mean that ownership should
G.R. No. 202423 January 28, 2013
be based upon an earlier filing date. While RA 8293 removed
the previous requirement of proof of actual use prior to the
filing of an application for registration of a mark, proof of prior The disputed marks in this case are the "HIPOLITO & SEA
and continuous use is necessary to establish ownership of a HORSE & TRIANGULAR DEVICE," "FAMA," and other related
mark. Such ownership constitutes sufficient evidence to oppose marks, service marks and trade names of Casa Hipolito S.A.
the registration of a mark. Portugal appearing in kerosene burners.
EY is the Prior User of the Mark. The use by EY in the Vicente Lo filed a complaint against the officers of Wintrade
concept of owner is shown by commercial documents, sales Industrial Sales Corporatio, including petitioners Chester Uyco,
invoices unambiguously describing the goods as "VESPA" air Winston Uychiyong and Cherry Uyco-Ong, and of National
compressors. They have sold the air compressors bearing the Hardware, including Mario Sy Chua, for violation of Section
"VESPA" to various locations in the Philippines, as far as 169.1, in relation to Section 170, of RA 8293 which is false
Mindanao and the Visayas since the early 1990s. designation of origin.
Issue 2: Whether or not the Director General can validly cancel Lo claimed in his complaint that Gasirel-Industria de Comercio
the registration of Shen Dar even if it was Shen Dar who filed e Componentes para Gass, Lda. (Gasirel), the owner of the
a case? disputed marks, executed a deed of assignment transferring
these marks in his favor, to be used in all countries except for
Held: Yes. those in Europe and America.
86
In a test buy, Lo purchased from National Hardware kerosene Davidoff and Japan Tobacco Inc. are non-resident foreign
burners with the subject marks and the designations "Made in corporations whose products are cigars while Forietrans (FMC)
Portugal" and "Original Portugal" in the wrappers. These is a domestic corporation.
products were manufactured by Wintrade.
A private investigator reported that there are counterfeit
Issue: Whether or not Uyco et al., are liable for false products bearing colorable imitation and confusing similarity
designation of origin. with that of the trademarks of Davidoff and JTI. The CIDG
conducted a search over the warehouses of Forietrans. The
Held: Yes. CIDG teams seized several boxes containing raw tobacco,
Sections 169.1 and 170 of RA 8293 cigarettes, cigarette packs, and cigarette reams bearing the
Section 169. False Designations of Origin; False Description or name DAGETA and DAGETA International. They also secured
Representation. - 169.1. Any person who, on or in connection with any machineries, receptacles, other paraphernalia, sales invoices
goods or services, or any container for goods, uses in commerce any
and official receipts.
word, term, name, symbol, or device, or any combination thereof, or
any false designation of origin, false or misleading description of fact,
or false or misleading representation of fact, which: Cases for trademark infringement and false designation of
(a) Is likely to cause confusion, or to cause mistake, or to deceive as origin were filed. Davidoff and JTI alleged that petitioners
to the affiliation, connection, or association of such person with another illegally manufactured and/or stored cigarettes bearing the
person, or as to the origin, sponsorship, or approval of his or her goods, "DAGETA" label with an indication that these cigarettes were
services, or commercial activities by another person; or made in Germany even if they were actually processed,
(b) In commercial advertising or promotion, misrepresents the nature, manufactured and packed in the premises of FMC.
characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities, shall be liable to a
civil action for damages and injunction provided in Sections 156 and
Issue: Whether or not there was a prima facie case for
157 of this Act by any person who believes that he or she is or is likely trademark infringement and false designation.
to be damaged by such act.
xxx Held: Yes. The Supreme Court limited its ruling as to whether
Section 170. Penalties. - Independent of the civil and administrative there was probable cause.
sanctions imposed by law, a criminal penalty of imprisonment from
two (2) years to five (5) years and a fine ranging from Fifty thousand The (1) machines intended for manufacturing cigarettes and
pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be (2) cigarettes' bearing the label "Made in Germany" were found
imposed on any person who is found guilty of committing any of the and seized from FMC's warehouse in the Philippines. The
acts mentioned in Section 155, Section 168 and Subsection 169.1. Supreme Court stated that these circumstances are enough to
(Arts. 188 and 189, Revised Penal Code) excite the belief that indeed petitioners were manufacturing
cigarettes in their warehouse here in the Philippines but
You can file directly a criminal case. The law on trademarks and misrepresenting the cigarettes' origin to be Germany.
trade names precisely precludes a person from profiting from
the business reputation built by another and from deceiving the The Supreme Court directed the filing of an information.
public as to the origins of products.
Discussion:
These facts support the consistent findings of the State
Prosecutor, the DOJ and the CA that probable cause exists to Again, this is an example of a case on false designation of
charge the petitioners with false designation of origin. The fact origin. As you can see this is a criminal case.
that the evidence did not come from Lo, but had been given by
Why did it reach the Supreme Court? What happened here is
the petitioners, is of no significance.
that the Secretary of justice did not find probable cause to hold
the accused for trial.
Discussion:
The burners are made here. The “Made in Portugal” placed in
the product is considered false designation by trying to deceive WILTON DY or PHILITES vs. KONINKLIJKE
the public that the product is made in Portugal. This is a G.R. No. 186088 March 22, 2017
criminal offense under the IPO. You can file a civil or criminal
case. Anybody under the sun can file a criminal case. One does Philites filed a trademark application covering its fluorescent
not need to be affected to have a cause of action. In criminal bulb, incandescent light, starter and ballast. Koninklijke Philips
cases, it is harder to prove. Electronics filed a Verified Notice of Opposition alleging that it
is identical or confusingly similar over its registered
internationally well-known mark.
FORIETRANS vs. DAVIDOFF
G.R. No. 197482 March 06, 2017 Issue: Whether the mark of Philites is identical or confusingly
similar with that of Philips.
87
ISSUE: WON Food Sphere committed copyright infringement

and unfair competition?
RULING: It did not commit copyright infringement, but it

committed unfair competition.
Held: Yes. Both are confusingly similar and identical.
The Court held that there are obvious differences. SMPFCI's
Given more consideration are the aural and visual impressions mark is a comasite mark where its house mark, namely "PURE
created by the marks on the buyers of goods, giving little FOODS" is clearly indicated and followed by the phrase "FIESTA
weight to factors like prices, quality, sales outlets, and market HAM" written in stylized font whereas Foodsphere's mark is
segments. the word "PISTA" written also in stylized font. Applying the
'Dominancy Test' and the 'Holistic Test' show that Foodsphere
An examination of the trademarks shows that their dominant cannot be held liable for trademark infringement due to the fact
or prevalent feature is the five-letter "PHILI", "PHILIPS" for
that the marks are not visually or aurally similar and that the
Koninklijke and "PHILITES" for Wilton Dy. he marks are
glaring differences in the presentation of these marks will
confusingly similar with each other such that an ordinary
purchaser can conclude an association or relation between the prevent any likely confusion, mistake, or deception to the
marks. purchasing public. Moreover, "PISTA" was duly registered in
the IPO, strengthening the position that "PISTA" is not an
In this case, what Philites sought to register was actually a infringement of "PURE FOODS FIESTA HAM" for a certificate of
different trademark that they used in the box. registration of a mark is prima facie evidence of the validity of
the registration, the registrant's ownership of the mark, and of
Applying the holistic test, entails a consideration of the entirety the registrant's exclusive right to use the same.
of the marks as applied to the products, including the labels
and packaging, in determining confusing similarity. A On the issue of unfair competition, the Court found Foodsphere
comparison between Koninklijke's registered trademark liable.
"PHILIPS" as used in the wrapper or packaging of its light bulbs
and that of Dy's applied for trademark "PHILITES" as depicted Section 168 of the IP Code provides that:
in the container or actual wrapper/packaging of the latter's light Section 168. Unfair Competition, Rights, Regulation and
bulbs will readily show that there is a strong similitude and
Remedies. - 168.1. A person who has identified in the mind of
likeness between the two trademarks that will likely cause
the public the goods he manufactures or deals in, his business
deception or confusion to the purchasing public.
or services from those of others, whether or not a registered
Discussion: mark is employed, has a property right in the goodwill of the
said goods, business or services so identified, which will be
There are times when the picture or the drawing in the protected in the same manner as other property rights.
application is different from that which is actually used. The
Court must also look at the actual packaging, not only the 168.2. Any person who shall employ deception or any other
illustrations submitted to the Bureau of Trademarks. means contrary to good faith by which he shall pass off the
goods manufactured by him or in which he deals, or his
Here, it is very clear that both are confusingly similar. In the business, or services for those of the one having established
hardware, if you want to buy Philips, it’s possible that you can such goodwill, or who shall commit any acts calculated to
pick up Philites. produce said result, shall be guilty of unfair competition, and
shall be subject to an action therefor.
SAN MIGUEL v. FOOD SPHERE 168.3. In particular, and without in any way limiting the scope
of protection against unfair competition, the following shall. be
SMPFCI filed a complaint for copyright infringement and unfair deemed guilty of unfair competition:
competition against Foodsphere, for its product "FIESTA" ham. (a) Any person, who is selling his goods and gives them the
SMPFCI alleged that Foodsphere committed infringement when general appearance of goods of another manufacturer or
it introduced its product "PISTA" ham. Foodsphere was claimed dealer, either as to the goods themselves or in the wrapping of
to have also used a similar promotional picture used by the packages in which they are contained, or the devices or
SPMFCI, a ham sliced and on a table, with fruits around it, and words thereon, or in any other feature of their appearance,
held in place with a fork. Foodsphere was also claimed to have which would be likely to influence purchasers to believe that
used a paper ham bag which looked similar to SMPFCI's own the goods offered are those of a manufacturer or dealer, other
paper ham bag, with the words "PISTA" confusingly similar to than the actual manufacturer or dealer, or who otherwise
the "FIESTA" mark. clothes the goods with such appearance as shall deceive the
public and defraud another of his legitimate trade, or any
88
subsequent vendor of such goods or any agent of any vendor without the consent of Distelleria Washington, in violation of
engaged in selling such goods with a like purpose; RA 623 and La Tondena alleging unfair competition. La
Tondena now sought for the return of its bottles.
(b) Any person who by any artifice, or device, or who employs
any other means calculated to induce the false belief that such REPUBLIC ACT NO. 623 - AN ACT TO REGULATE THE USE OF
person is offering the services of another who has identified DULY STAMPED OR MARKED BOTTLES, BOXES, CASKS, KEGS,
such services in the mind of the public; or BARRELS AND OTHER SIMILAR CONTAINERS
(c) Any person who shall make any false statement in the Sec. 1. Persons engaged or licensed to engaged in the manufacture,
bottling or selling of soda water, mineral or aerated waters, cider, milk,
course of trade or who shall commit any other act contrary to
cream, or other lawful beverages in bottles, boxes, casks, kegs, or
good faith of a nature calculated to discredit the goods,
barrels, and other similar containers, with their names or the names of
business or services of another. their principals or products, or other marks of ownership stamped or
168.4. The remedies provided by Sections 156, 157 and 161 marked thereon, may register with the Philippine Patent Office a
shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a) description of the names or are used by them, under the same
conditions, rules, and regulations, made applicable by law or regulation
The essential elements of an action for unfair competition are: to the issuance of trademarks.
(1) confusing similarity in the general appearance of the goods;
and (2) intent to deceive the public and defraud a competitor. Sec. 2. It shall be unlawful for any person, without the written consent
of the manufacturer, bottler or seller who has successfully registered
The confusing similarity may or may not result from similarity
the marks of ownership in accordance with the provisions of the next
in the marks, but may result from other external factors in the preceding section, to fill such bottles, boxes, kegs, barrels, or other
packaging or presentation of the goods. The intent to deceive similar containers so marked or stamped, for the purpose of sale, or to
and defraud may be inferred from the similarity of the sell, dispose of, buy, or traffic in, or wantonly destroy the same,
appearance of the goods as offered for sale to the public. Actual whether filled or not, or to use the same for drinking vessels or glasses
fraudulent intent need not be shown. Both packages use paper or for any other purpose than that registered by the manufacturer,
ham bags as the container for the hams, both paper ham bags bottler or seller. Any violation of this section shall be punished by a fine
or not more than one hundred pesos or imprisonment of not more than
use the red color as the main colors, and both have the layout
thirty days or both.
design appearing on the bags consisting of a partly sliced ham
and fruits on the front and other ham varieties offered at the Sec. 3. The use by any person other than the registered
back. Thus, Foodsphere's packaging in its entirety, and not manufacturer, bottler, or seller, without written permission of the latter,
merely its "PISTA" mark thereon, renders the general of any such bottle, cask, barrel, keg, box or other similar container, or
appearance thereof confusingly similar with the packaging of the possession thereof by any junk dealer or dealer in casks, barrels,
SMPFCI's ham, that would likely influence purchasers to believe kegs, boxes, or other similar containers, the same being duly marked
that these products are similar, if not the same, as those of or stamped and registered as herein provided, shall be prima facie
SMPFCI. evidence that such use, or possession is unlawful.
Sec. 4. The criminal action provided in this Act shall is no way affect
Second of all, Foodsphere's intent to deceive the public, to any civil action to which the registered manufacturer, bottler, or seller,
defraud its competitor, and to ride on the goodwill of SMPFCI's may be entitled by law or contract.
products is evidenced by the fact that not only did Foodsphere
switch from its old box packaging to the same paper ham bag Sec. 5. No action shall be brought under this Act against any person
packaging as that used by SMPFCI, it also used the same layout to whom the registered manufacturer, bottler, or seller, has transferred
design printed on the same. As the Director General observed, by way of sale, any of the containers herein referred to, but the sale of
the beverage contained in the said containers shall not include the sale
why, of the millions of terms and combinations of letters,
of the containers unless specifically so provided.
designs, and packaging available, Foodsphere had to choose
those so closely similar to SMPFCI's if there was no intent to Sec. 6. The provision of this Act shall not be interpreted as prohibiting
pass off upon the public the ham of SMPFCI as its own with the the use of bottles as containers for "sisi", "bagoong", "patis", and
end and probable effect of deceiving the public. similar native products.
Ma'am Sua: So you can see here, there is no copyright Sec. 7. This Act shall take effect upon its approval.
infringment, but there is unfair competition. For infringement,
you have tests, whether there is confusing similarity. Unfair ISSUE: 1) Can La Tondena seek the return of the bottles which
competition, its more on riding the good will of the more it sold along with its liquor products?
popular brand. 2) Can there be a case for unfair competition, with the use of
the bottles by Distelleria, when these bottles have been
La Tondena filed a case for replevin against Distelleria. La registered under the name of La Tondena?
Tondena contends that Distelleria is using its bottles bearing RULING:
the mark of “La Tondena” for its own “Gin Seven” products
89
1) No, La Tondena cannot seek the return off the bottles. mere possession of such registered containers without
La Tondena not only sold its gin products but also the the written consent of the registrant is prima facie
marked containers and bottles as well. All attributes presumed unlawful.
of ownership were then transferred to the buyer.
It appears — and this is the critical point — that
2) No, there can be no case of unfair competition. Sections 2 and 3 apply only when the "filling" up of
the bottle or the "use" of the bottle is "without the
La Tondena hinges its arguments on the following written permission" of the "registered manufacturer,
provisions of RA 623: bottler, or seller," who has registered the marks of
"ownership" of the bottles. It is thus implicit that
Sec. 2. It shall be unlawful for any person, without Sections 2 and 3 apply only when the "registered
the written consent of the manufacturer, bottler, or manufacturer, bottler, or seller" retain ownership of
seller (emphasis supplied) who has successfully the bottles.
registered the marks of ownership in accordance with
the provisions of the next preceding section, to fill Upon the other hand, when the bottles have been
such bottles, boxes, kegs, barrels, steel cylinders, "transferred by way of sale," Section 5 applies,
tanks, flasks, accumulators, or other similar thereby precluding the institution of any action "under
containers so marked or stamped, for the purpose of this Act," meaning to say, any action under Sections 2
sale, or to sell, dispose of, buy or traffic in, or and 3.
wantonly destroy the same, whether filled or not to
use the same for drinking vessels or glasses or drain
pipes, foundation pipers, for any other purpose than This is a law that prohibits the use of the bottle after.
that registered by the manufacturer, bottler or seller. But since Sec. 5 is applicable, there is no violation of
Any violation of this section shall be punished by a fine RA 623.
of not more than one thousand pesos or imprisonment
of not more than one year or both.
Sec. 3. The use by any person other than the Now what is the exception to the rule? Let's say you
registered manufacturer, bottler or seller, without are using family sized Coca-cola? What can you put in
written permission of the latter (emphasis supplied) of the Coca-cola bottle? Can you put diesel? Or gasoline?
any such bottle, cask, barrel, keg, box, steel cylinders, Ano ang pwede, under RA 623? You can sell suka,
tanks, flask, accumulators, or other similar containers, homemade products. Because this law is amended by
or the possession thereof without written permission RA 5700.
of the manufacturer, by any junk dealer or dealer in
casks, barrels, keg, boxes, steel cylinders, tanks, flask,
accumulators or other similar containers, the same
being duly marked or stamped and registered as So take note of the exception, because this came out
herein provided, shall give rise to a prima facie in the bar. What is the question?
presumption that such use or possession is unlawful.
xxx xxx xxx

"X, a dealer of homemade oil, uses the container of
Sec. 5. No action shall be brought under this Act different companies. He goes to the public selling the
(emphasis supplied) against any person to whom the oil, and totally obliterates the marks on the bottles. Y
registered manufacturer, bottler or seller, has files an action against X for unfair competition. Is
transferred by way of sale, (emphasis supplied) any there unfair competion?"
of the containers herein referred to, but the sale of
the beverage contained in the said containers shall not COCA-COLA v. GOMEZ
include the sale of the containers unless specifically so
provided. FACTS: Coca-Cola filed a search warrant against Pepsi for
hoarding empty coke bottles, an act which it claims to be
penalized as unfair competition.
A careful reading of Sections 2, 3 and 5 of R.A. 623
would lead to the conclusion that they contemplate
ISSUE: Is the act of hoarding empty bottles constitutive of
situations separate and distinct from each other.
“unfair competition”?
Section 2 prohibits any person from using, selling or
otherwise disposing of registered containers without
RULING: No, it is not constitutive of unfair competition.
the written consent of the registrant. Such rights
belong exclusively to the registrant. Under Section 3,
90
The law does not thereby cover every unfair act committed in carbon dioxide, ammonia, hydrogen, chloride, helium, sulphur dioxide,
the course of business; it covers only acts characterized by butane, propane, freon, methyl chloride or similar gases contained in
"deception or any other means contrary to good faith" in the steel cylinders, tanks, flasks, accumulators or similar containers, with
their names or the names of their principals of products, or other marks
passing off of goods and services as those of another who has
of ownership stamped or marked thereon, may register with the
established goodwill in relation with these goods or services, or Philippines Patent Office a description of the names or marks, and the
any other act calculated to produce the same result. purpose for which the containers so marked are used by them, under
the same conditions, rules, and regulations, made applicable by law or
From jurisprudence, unfair competition has been defined as the regulation to the issuance of trademarks."
passing off (or palming off) or attempting to pass off upon the
public the goods or business of one person as the goods or "Sec. 2. It shall be unlawful for any person, without the written consent
business of another with the end and probable effect of of the manufacturer, bottle, or seller, who has successfully registered
deceiving the public. It formulated the "true test" of unfair
preceding section, to fill such bottles, boxes, kegs, barrels, steel
competition: whether the acts of defendant are such as are cylinders, tanks, flasks, accumulators, or other similar containers so
calculated to deceive the ordinary buyer making his purchases marked or stamped, for the purpose of sale, or to sell, dispose of, buy
under the ordinary conditions which prevail in the particular or traffic in, or wantonly destroy the same, whether filled or not to use
trade to which the controversy relates.13 One of the essential the same for drinking vessels or glasses or drain pipes, foundation
requisites in an action to restrain unfair competition is proof of pipes, for any other purpose than that registered by the manufacturer,
fraud; the intent to deceive must be shown before the right to bottler or seller. Any violation of this section shall be punished by a fine
recover can exist.14 The advent of the IP Code has not of not more than one thousand pesos or imprisonment of not more
than one year or both."
significantly changed these rulings as they are fully in accord
with what Section 168 of the Code in its entirety provides. "Sec. 3. The use by any person other than the registered manufacturer,
Deception, passing off and fraud upon the public are still the bottler or seller, without written permission of the latter of any such
key elements that must be present for unfair competition to bottler, cask, barrel, keg, box, steel cylinders, tanks, flasks,
exist. accumulators, or other similar containers, or the possession thereof
without written permission of the manufacturer, by any junk dealer or
Under all the above approaches, we conclude that the dealer in casks, barrels, kegs, boxes, steel cylinders, tanks, flasks,
"hoarding" - as defined and charged by the petitioner - does accumulators, or other similar containers, the same being duly marked
or stamped and registered as herein provided, shall give rise to a prima
not fall within the coverage of the IP Code and of Section 168
facie presumption that such use or possession is unlawful."
in particular. It does not relate to any patent, trademark, trade
name or service mark that the respondents have invaded, Section 2. This Act shall take effect upon its approval.
intruded into or used without proper authority from the
petitioner. Nor are the respondents alleged to be fraudulently
"passing off" their products or services as those of the March 21, 2019| Transcribed by: Hannah Keziah Dela Cerna
petitioner. The respondents are not also alleged to be & Vanessa Escritor
undertaking any representation or misrepresentation that
would confuse or tend to confuse the goods of the petitioner CAGAYAN VALLEY v. CA & LA TONDEÑA
with those of the respondents, or vice versa. What in fact the GR 78413 (1989)
petitioner alleges is an act foreign to the Code, to the concepts
it embodies and to the acts it regulates; as alleged, hoarding FACTS: La Tondeña registered with the Philippine Patent Office
inflicts unfairness by seeking to limit the opposition's sales by its 350 cc white flint bottles which was used for its gin, “Ginebra
depriving it of the bottles it can use for these sales. San Miguel” pursuant to RA No. 623. On 1981, La Tondeña filed
a case for injunction against Cagayan Valley, alleging that it
REPUBLIC ACT No. 5700 used said bottles with the mark “La Tondeña Inc.” and “Ginebra
San Miguel” stamped therein by filling the same with its liquor
AN ACT AMENDING CERTAIN SECTIONS OF REPUBLIC ACT product bearing the label “Sonny Boy” for commercial sale and
NUMBERED SIX HUNDRED TWENTY-THREE AS TO INCLUDE distribution without La Tondeña’s consent, in violation of RA
THE CONTAINERS OF COMPRESSED GASES WITHIN THE No. 623.
PURVIEW OF THE SAID ACT.
Cagayan Valley’s contention:
Section 1. Section one, two and three of Republic Act Numbered Six There were 2 sets of marked bottles:
hundred twenty-three are hereby amended to read as follows: 1. Those which contain the marks “Property of La
Tondeña Inc., Ginebra San Miguel”; and
"Sec. 1. Persons engaged or licensed to engage in the manufacture,
2. Those simply marked as “La Tondeña Inc., Ginebra San
bottling, or selling of soda water, mineral or aerated waters, cider, milk,
Miguel.” (this is the one being used by Cagayan)
cream or other lawful beverages in bottles, boxes, casks, kegs, or
barrels, and other similar containers, or in the manufacture,
compressing or selling of gases such as oxygen, acetylene, nitrogen,
91
By omitting the words “property of”, the second set of bottles GENERAL RULE: The mere use of registered bottles or
were removed from the protection of the law, since these were containers without the written consent of the manufacturer is
not the registered bottles of La Tondeña. prohibited.
EXCEPTIONS: When they are used as containers for “sisi”,
The reporter’s issue: Whether the second set of bottles – “bagoong”, “patis” and similar native products. (Section 6, RA
even without the words “property of” – are still covered by La 623)
Tondeña’s registration.
Ma’am’s question: Who owns the bottles?
Held: YES. RA 623, which governs the registration of marked
bottles and containers merely require that the bottles must be: Answer: Cagayan Valley owns the bottles. When you buy the
 stamped or marked with the names of the manufacturers drink, the price of the bottle is included. There is no deposit.
or The bottles are not returned. Hence, there is a transfer of
 the names of their principals or products, ownership of the bottles upon purchase and delivery.
 or other marks of ownership.
Ma’am’s question to the reporter of Washington
The La Tondeña bottles without the words “property of” Distillers: Was Washington allowed to use the bottle?
substantially complied with the requirements of RA 623 as they Real Answer: The SC did not answer the question in that case
bear the: actually. Section 3 provides that, “The use by any person other
 Name of the principal (La Tondeña); and than the registered manufacturer, bottler or seller, without
 Of its product (Ginebra San Miguel) written permission of the latter of any such bottle, cask, barrel,
keg, box, steel cylinders, tanks, flask, accumulators, or other
Ma’am’s Issue: Whether or not there is a need to display the similar containers, or the possession thereof without written
words, “Reg Phil Pat Off” in order to file a civil action against permission of the manufacturer.” It said, “manufacturer”, it did
Cagayan for the illegal use of the bottle? not say owner. There is no requirement of ownership under
Section 3.
Held: Even assuming that RA 166, Section 21 is applicable,
said requirement is not a condition sine qua non for the filing It is in this case of La Tondena that the SC really answered the
of a civil action against the infringer for other reliefs for which question. If you are a manufacturer of bottles and you have it
the plaintiff may be entitled. registered, and the name of your company is embossed on your
Section 21. Requirements of notice of registration of trade- bottles, then no one can use it. If you want to use it at home,
mark. - The registrant of a trade-mark, heretofore registered no problem. But if you want to use it for your products and sell
or registered under the provisions of this Act, shall give those products, that cannot be done under Section 3 of RA 623.
notice that his mark is registered by displaying with the same
as used the words "Registered in the Philippines Patent The statement in Section 5 to the effect that, “the sale
Office" or "Reg. Phil. Pat. Off."; and in any suit for of beverage contained in the said container shall not
infringement under this Act by a registrant failing so to mark include the sale of the container unless specifically so
the goods bearing the registered trade-mark, no damages provided” is NOT a rule of proscription, it is a rule of
shall be recovered under the provisions of this Act unless the construction. It establishes a rule of presumption of non-
defendant has actual notice of the registration. conveyance of the container.”
Comment: Section 21 only speaks of damages, NOT Meaning, if you do not ask for the deposit or require the return
infringement or unfair competition. So it is allowed even with of the bottles, it means you do not own the bottle anymore.
the absence of “Regi Phil Pat Off”. This requirement has been But Section 3 does not require ownership for the manufacturer
carried forward in RA 8293. to be entitled to protection. The only exception you can find in
Section 6. the bagoong, patis, sisi, and other native products.
So under RA 623, if your bottles are registered, they are also
entitled to protection. What law actually protects the containers RA 623, SECTION 3. The use by any person other than the registered
and the bottles? It is RA 623. Where do you register? You manufacturer, bottler or seller, without written permission of the latter
register with the IPO. of any such bottle, cask, barrel, keg, box, steel cylinders, tanks, flask,
accumulators, or other similar containers, or the possession thereof
Reporter’s 2nd issue: Whether Cagayan Valley is guilty of without written permission of the manufacturer, by any junk
violation of RA 623. dealer or dealer in casks, barrels, kegs, boxes, steel cylinders, tanks,
flasks, accumulators or other similar containers, the same being duly
marked or stamped and registered as herein provided, shall give rise
Held: YES. The law grants protection to a qualified to a prima facie presumption that such use or possession is unlawful.
manufacturer who successfully registered with the Philippine
Patent Office its duly stamped or marked bottles, boxes, casks
and other similar containers. RA 623, SECTION 5. No action shall be brought under this Act against
any person to whom the registered manufacturer, bottler, or seller, has
transferred by way of sale, any of the containers herein referred to, but
Under RA 623:
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the sale of the beverage contained in the said containers shall not is basic rule in statutory construction that when the law is clear
include the sale of the containers unless specifically so provided. and free from any doubt or ambiguity, there is no room for
construction or interpretation. As has been our consistent
RA 623, SECTION 6. The provision of this Act shall not be interpreted ruling, where the law speaks in clear and categorical language,
as prohibiting the use of bottles as containers for "sisi", "bagoong", there is no occasion for interpretation; there is only room for
"patis", and similar native products. application.
Reporter’s 3rd issue: Whether hard liquor is covered by the “In view of these considerations, we find and so hold that the
provisions of RA 623. exemption contained in Section 6 of RA 623 applies to
all manufacturers of sisi, bagoong, patis and similar
Held: The title of the law itself – An Act to Regulate the Use of native products without distinction or qualification as
Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels to whether they are small, medium or large scale.”
and Other Similar Containers – clearly shows the legislative
intent to give protection to all marked bottles and containers of Ma’am’s Issue: Whether Twin Ace can rely on Section 5 to
all lawful beverages, regardless of the nature of their contents. support its action (replevin: meaning all of the bottles to be
returned)?
“Other lawful beverages” – refers to all beverages not
prohibited by law. Held: NO. Citing, United States v. Manuel, we held that since
“Beverage” – defined as a liquor or liquid for drinking the purchaser at his discretion could either retain or
Hard liquor, although regulated, is not prohibited by law, hence return the bottles, the transaction must be regarded as
it is within the coverage of RA 623. a sale of the bottles when the purchaser actually
exercised that discretion and decided not to return
them to the vendor.
TWIN ACE v. RUFINA
G.R. No. 160191 (2006) We also take judicial notice of the standard practice today that
the cost of the container is included in the selling price
Twin Ace vs. CA (earlier case) of the product such that the buyer of liquor or any such
Twin Ace is the owner of the Tanduay distillers’ liquor. Twin product from any store is not required to return the bottle nor
Ace filed a Complaint for Replevin against Lorenzana Food Corp is the liquor placed in a plastic container that possession of the
to recover 380,000 bottles allegedly owned by Twin Ace but bottle is retained by the store.
detained and used by Lorenzana as containers for its native
products without Twin Ace’s permission. Comment: The action for replevin is recovery of possession
filed by the owner. In this case, how can you recover
Lorenzana uses the bottles as containers for processed food possession of something you do not own? There can be no
and other related products such as patis, toyo, bagoong, recovery.
vinegar and other food seasonings.
Twin Ace vs. Rufina (present case)
Twin Ace’s allegations: Twin has registered its mark of ownership of its bottles with
1. Exemption in Section 6 refers only to criminal liability but not the Bureau of Patents, Trademarks and Technology Transfer
to civil liabilty under R.A. 623, An Act to Regulate the Use of Duly Stamped
2. That Lorenzana is not a small-scale manufacturer but a or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other
large-scale manufacturer, and is therefore not covered by the Similar Containers.
exemption
In the conduct of its business, it sells its products to the public
Held (earlier case): excluding the bottles. It makes substantial investments in
Twin Ace’s contention that the exemption in Section 6 refers brand new bottles which it buys from glass factories and which
only to criminal liability but not to civil liabilty is without merit. they use for about five times in order to recover the cost of
acquisition. It retrieves its used empty bottles, washes, and
The interpretation of Twin Ace defeats the very purpose for uses them over and over again as containers for its products.
which the exemption is provided. The exemption granted in
Sec. 6 thereof was deemed extremely necessary to Twin Ace’s Allegation: In producing Patis and other food
provide assistance and incentive to backyard, cottage seasonings, Rufina uses as containers bottles owned by Twin
and small-scale manufacturers of indigenous native Ace without any authority or permission from the latter.
products who do not have the capital to buy brand new Thereby, unduly benefiting from the use of the bottles.
bottles as containers nor afford to pass the added cost
to the majority of poor Filipinos who use the products. RTC issued an Order granting the application of Twin Ace for
the issuance of a writ of replevin. Upon implementation of the
However, the exemption in Section 6 does not distinguish said writ, the sheriff was able to seize a total of 26, 241 empty
between small-scale and large-scale manufacturers. “It
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bottles marked TANDUAY DISTILLERY, INC., at the address of

Rufina. "Sec. 3. The use by any person other than the registered
manufacturer, bottler or seller, without written permission of the latter
of any such bottler, cask, barrel, keg, box, steel cylinders, tanks, flasks,
Rufina’s Contention: Rufina claimed that the marked bottles
accumulators, or other similar containers, or the possession thereof
it used as containers for its products were purchased from junk without written permission of the manufacturer, by any junk dealer or
dealers; Hence, it became the owner thereof. dealer in casks, barrels, kegs, boxes, steel cylinders, tanks, flasks,
accumulators, or other similar containers, the same being duly marked
Held: The law does not distinguish between small-scale or or stamped and registered as herein provided, shall give rise to a prima
large-scale manufacturers. The Supreme Court cited the earlier facie presumption that such use or possession is unlawful."
case.
Proof that there was no distinction:

Attempts to amend the protection afforded Sec. 6 of RA 623:
 House Bill 20585 (affords protection only to small scale
PART IV - THE LAW ON COPYRIGHT
manufacturers or those with a capitalization of 500k)
 House Bill 30400
Sec. 171. Definitions. — For the purpose of this Act, the following
Both proved unsuccessful as the amendment proposed in both terms have the following meaning:
Bills was never passed. 171.1. "Author" is the natural person who has created the work;
Comment: If you read the law, RA 623, as amended by RA 171.2. A "collective work" is a work which has been created by two (2)
or more natural persons at the initiative and under the direction of
5700… It amended Section 1, 2, and 3 only to include some
another with the understanding that it will be disclosed by the latter
certain items. There were attempts to amend Section 6 but
under his own name and that contributing natural persons will not be
those did not push through.
identified;
Note that these are NOT included in the exemption in 171.3. "Communication to the public" or "communicate to the public"
Section 6: Vinegar and Soy Sauce means any communication to the public including broadcasting,
rebroadcasting, retransmitting by cable, broadcasting and
REPUBLIC ACT No. 5700 retransmitting by satellite, and includes the making of a work available
AN ACT AMENDING CERTAIN SECTIONS OF REPUBLIC ACT to the public by wire or wireless means in such a way that members of
NUMBERED SIX HUNDRED TWENTY-THREE AS TO INCLUDE the public may access these works from a place and time individually
THE CONTAINERS OF COMPRESSED GASES WITHIN THE chosen by them;
PURVIEW OF THE SAID ACT.
171.4. A "computer" is an electronic or similar device having
Section 1. Section one, two and three of Republic Act Numbered Six information-processing capabilities, and a "computer program" is a set
hundred twenty-three are hereby amended to read as follows: of instructions expressed in words, codes, schemes or in any other
"Sec. 1. Persons engaged or licensed to engage in the manufacture,
form, which is capable when incorporated in a medium that the
bottling, or selling of soda water, mineral or aerated waters, cider, milk,
computer can read, of causing the computer to perform or achieve a
cream or other lawful beverages in bottles, boxes, casks, kegs, or
barrels, and other similar containers, or in the manufacture, particular task or result;
compressing or selling of gases such as oxygen, acetylene, nitrogen,
carbon dioxide, ammonia, hydrogen, chloride, helium, sulphur dioxide, 171.5. "Public lending" is the transfer of possession of the original or a
butane, propane, freon, methyl chloride or similar gases contained in copy of a work or sound recording for a limited period, for non-profit
steel cylinders, tanks, flasks, accumulators or similar containers, with purposes, by an institution the services of which are available to the
their names or the names of their principals of products, or other marks public, such as public library or archive;
of ownership stamped or marked thereon, may register with the
Philippines Patent Office a description of the names or marks, and the 171.6. "Public performance", in the case of a work other than an
purpose for which the containers so marked are used by them, under audiovisual work, is the recitation, playing, dancing, acting or otherwise
the same conditions, rules, and regulations, made applicable by law or performing the work, either directly or by means of any device or
regulation to the issuance of trademarks." process; in the case of an audiovisual work, the showing of its images
in sequence and the making of the sounds accompanying it audible;
"Sec. 2. It shall be unlawful for any person, without the written consent
and, in the case of a sound recording, making the recorded sounds
of the manufacturer, bottle, or seller, who has successfully registered
audible at a place or at places where persons outside the normal circle
of a family and that family's closest social acquaintances are or can be
preceding section, to fill such bottles, boxes, kegs, barrels, steel
cylinders, tanks, flasks, accumulators, or other similar containers so present, irrespective of whether they are or can be present at the same
marked or stamped, for the purpose of sale, or to sell, dispose of, buy place and at the same time, or at different places and/or at different
or traffic in, or wantonly destroy the same, whether filled or not to use times, and where the performance can be perceived without the need
the same for drinking vessels or glasses or drain pipes, foundation for communication within the meaning of Subsection 171.3;
pipes, for any other purpose than that registered by the manufacturer,
bottler or seller. Any violation of this section shall be punished by a fine 171.7. "Published works" means works, which, with the consent of the
of not more than one thousand pesos or imprisonment of not more authors, are made available to the public by wire or wireless means in
than one year or both." such a way that members of the public may access these works from
94
a place and time individually chosen by them: Provided, That So what do you see now that we’re discussing copyright? In
availability of such copies has been such, as to satisfy the reasonable our previous discussions in patents and trademarks,
requirements of the public, having regard to the nature of the work; corporations can actually own a patent when the invention is
created by the corporation through its research and
171.8. "Rental" is the transfer of the possession of the original or a
copy of a work or a sound recording for a limited period of time, for
development programs; then, the corporation becomes the
profit-making purposes; owner of the patent or a trademark like San Miguel Corporation
which owns all of its trademarks. But when it comes to literary,
171.9. "Reproduction" is the Making of one (1) or more copies, scholarly, and artistic work, can a corporation write a poem? Or
temporary or permanent, in whole or in part, of a work or a sound paint a painting? No. Pwede siguro yung computer na owned
recording in any manner or form without prejudice to the provisions of by a corporation pero ginaya yung painting ng iba.
Section 185 of this Act;
Here, we have the natural persons, can actually have their
171.10.A "work of applied art" is an artistic creation with utilitarian
functions or incorporated in a useful article, whether made by hand or
collective work protected.
produced on an industrial scale;
Communication to the public
171.11.A "work of the Government of the Philippines" is a work created Any communication to the public including broadcasting,
by an officer or employee of the Philippine Government or any of its rebroadcasting, retransmitting by cable, broadcasting and
subdivisions and instrumentalities, including government-owned or retransmitting by satellite, and includes the making of a work
controlled corporations as a part of his regularly prescribed official available to the public by wire or wireless means in such a way
duties.
that members of the public may access these works from a
117.12. “Technological measure” means any technology, device or
place and time individually chosen by them.
component that, in the normal course of its operation, restricts acts in
respect of a work, performance or sound recording, which are not When you create something, let’s say you are an author and
authorized by the authors, performers or producers of sound recordings you write a book, nasa sa iyo yan if you wanna communicate it
concerned or permitted by law; to the public. How do you communicate it to the public? You
sell it to the bookstore. But it also includes broadcasting. You
117.13. “Rights management information” means information which want to advertise it. You want to sell it in the Internet.
identifies the work, sound recording or performance; the author of the
work, producer of the sound recording or performer of the
performance; the owner of any right in the work, sound recording or
Computer
performance; and any number or code that represent such information, An electronic or similar device having information-processing
when any of these items is attached to a copy of the work, sound capabilities.
recording or fixation of performance or appears in conjunction with the
communication to the public of a work, sound recording or Computer Program
performance. 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, of causing the computer
If you look at our definitions under Section 171, what is an to perform or achieve a particular task or result.
author?
Public Lending
Author Transfer of possession of the original or a copy of a work or
It is a natural person who has created the work. sound recording for a limited period, for non-profit purposes,
by an institution the services of which are available to the
In copyright, it is not only the author that is protected when public, such as public library or archive.
he writes a novel; but also a composer of a song, a poet, an
artist, a scholar. You already know that a copyright pertains If you’re an author and you lend your book to the library free
to literary, artistic, and scholarly works. We have so many of charge, that is public lending. That is different from the
definitions under RA 8293. banking term.
Collective Work Public Performance

Work which has been created by two (2) or more natural In the case of a work other than an audiovisual work, is the
persons at the initiative and under the direction of another with recitation, playing, dancing, acting or otherwise performing the
the understanding that it will be disclosed by the latter under work, either directly or by means of any device or process; in
his own name and that contributing natural persons will not be the case of an audiovisual work, the showing of its images in
identified. sequence and the making of the sounds accompanying it
audible; and, in the case of a sound recording, making the
recorded sounds audible at a place or at places where persons
95
outside the normal circle of a family and that family's closest the authors, performers or producers of sound recordings
social acquaintances are or can be present, irrespective of concerned or permitted by law.
whether they are or can be present at the same place and at
the same time, or at different places and/or at different times, This is a restriction imposed by the creator.
and where the performance can be perceived without the need
for communication within the meaning of Subsection 171.3. Rights Management Information
Information which identifies the work, sound recording or
Published works performance; the author of the work, producer of the sound
Works, which, with the consent of the authors, are made recording or performer of the performance; the owner of any
available to the public by wire or wireless means in such a way right in the work, sound recording or performance; and any
that members of the public may access these works from a number or code that represent such information, when any of
place and time individually chosen by them: Provided, That these items is attached to a copy of the work, sound recording
availability of such copies has been such, as to satisfy the or fixation of performance or appears in conjunction with the
reasonable requirements of the public, having regard to the communication to the public of a work, sound recording or
nature of the work. performance.
Rental Basically, the information regarding the work.

Transfer of the possession of the original or a copy of a work
or a sound recording for a limited period of time, for profit- Copyright
making purposes. An intangible – why intangible? You cannot feel it, you cannot
see it, but it’s there – incorporeal right to certain literary,
You have to differentiate rental from public lending. scholarly, artistic productions given by statute to the author or
creator of the work, giving him, his heirs, or assigns, copyright
or economic rights which shall include the exclusive right to
Reproduction carry out, authorize, or prevent the acts listed in Section 177.
Making of one (1) or more copies, temporary or permanent, in
whole or in part, of a work or a sound recording in any manner Take note, copyright or economic right. We have two kinds of
or form without prejudice to the provisions of Section 185 of copyright.
this Act.
Let’s say I write a book. I own the book because that’s my
This is an amendment of RA 10372. creation. But aside from my owning the book, I own the
copyright. What is the copyright? The right to copy. The right
Work of Applied Art to publicize my work. So, it is really my choice. Unlike itong sa
An artistic creation with utilitarian functions or incorporated in trademark, you register the trademark, you have to use it. You
a useful article, whether made by hand or produced on an are forced to. You have to register the patent for your
industrial scale. invention, pilitin ka rin to make it available to the public by
manufacturing it. Otherwise, magkakaron ng compulsory
When you talk about something that can be used, nandyan yun license ang some third person, diba?
sa patent. But there are some artistic creations that can be
used. For example, parang meron kang painting dyan, noh? But when it comes to copyright, the creator is really protected
When you open it, pwede pala sabitan ng keys. So, you can because the right to copy belongs to him.
use it as a key rack but it is actually something that pleases the
eyes, a work of art. So that is actually work of applied art *Ma’am jumps to Section 177*
incorporated in a useful article.
Sec. 177. Copyright or Economic Rights. — Subject to the
Work of the Government of the Philippines provisions of Chapter VIII, copyright or economic rights shall
Work created by an officer or employee of the Philippine consist of the exclusive right to carry out, authorize or prevent
Government or any of its subdivisions and instrumentalities, the following acts:
including government-owned or controlled corporations as a
part of his regularly prescribed official duties.
What are these rights if you are the owner or the creator?
Technological Measure Section 177 talks about copyright or economic rights. When you
Any technology, device or component that, in the normal talk about copyright, it refers to the economic rights. It shall
course of its operation, restricts acts in respect of a work, consist the exclusive right to carry out, authorize or prevent the
performance or sound recording, which are not authorized by following acts:
96
177.1. Reproduction of the work or substantial portion of the Itong mga paintings, mga sculptures. It is the creator who has
work; the right to display that.
Kaya yung mga nagpapaphotocopy ng mga libro, that is a 177.6. Public performance of the work; and
violation of the author’s copyright. General rule, of course may
mga exceptions. The only one with the right to reproduce, is If I am the composer, I can choose who will sing my song,
the author or the creator. Of course the publishing house, with Sarah Geronimo ba, or who else. Hindi pwedeng diktahan ako.
the authority given to it, has the right to produce as well. I have the right.
177.2. Dramatization, translation, adaptation, abridgment, 177.7. Other communication to the public of the work.
arrangement or other transformation of the work;
Those are the economic rights that are given to the creator of
Yung mga ano natin, yung ating mga Tagalog na telenovela, artistic, scholary, and literary works.
puro title ng mga kanta, diba? Yung mga foreign songs na
cheesy na mga songs. For example, On The Wings of Love. Now, what are the works protected?
There is a singer for On the Wings of Love. There is a composer
for On the Wings of Love. If you want to dramatize the song, Sec. 172. Literary and Artistic Works. —
magpaalam ka dun sa composer. Kanya yun. He has the right
to dramatize his creation. 172.1. Literary and artistic works, hereinafter referred to as
"works", are original intellectual creations in the literary and
Translation. You want to translate the song to Chinese, artistic domain protected from the moment of their creation
Japanese, magpaalam ka. It is only the composer or the creator and shall include in particular:
who has the right to do that.
Now you see another difference. For patents and trademarks,

Abridgement. You want to re-arrange a song? Magpaalam ka.
you have to go through a tedious registration process para lang
maprotect mo yung iyong invention, para maprotect mo yung
Whatever transformation, that right belongs to the creator. He
trademark mo.
has the copyright.
But, if you have a literary, scholarly or artistic work, you don’t

177.3. The first public distribution of the original and each copy have to register. It is protected from the moment of creation.
of the work by sale or other forms of transfer of ownership; Meaning, those economic rights are automatic. So, if you have
a book, you write a novel tapos ninakaw, and then pinublish,
Yung mga nagbebenta ng book. First public distribution should you can sue for infringement. Di pwede sabihing nung
be authorized by the author. And all of each copy, dapat meron nagpaprint, “Ay, wala ka mang copyright!” No, may copyright
syang royalty. Kasi sa kanya yung right na yan. So, when the ka. It is automatic. The moment you create something, you
publishing company distributes the book for the author, for own the copyright.
each copy, may royalty sya.
What are these works that are protected?
So, yung mga favorite singers ninyo, pakinggan ninyo sa
Spotify, tignan ninyo yung videos sa Youtube, they all get a a. Books, pamphlets, articles and other writings;
percentage.
Any kind of writing, kahit love letter. Protected yan. Diba? The
177.4. Rental of the original or a copy of an audiovisual or letter, the paper, belongs to the recipient. But the recipient
cinematographic work, a work embodied in a sound recording, cannot publish that letter. That belongs to the writer.
a computer program, a compilation of data and other materials
or a musical work in graphic form, irrespective of the ownership
b. Periodicals and newspapers;
of the original or the copy which is the subject of the rental;
Do not copy. We are talking about the articles inside. Kasi the
The creator has the right to rental.
newspaper is composed of so many items inside.
177.5. Public display of the original or a copy of the work;
97
c. Lectures, sermons, addresses, dissertations prepared for oral

delivery, whether or not reduced in writing or other material m. Pictorial illustrations and advertisements;
form;
Itong mga advertisements akala nyo pwede niyong gayahin?
So, yung pagrerecord ninyo ng mga lectures, are you violating
the IPC? We will find out. n. Computer programs; and
d. Letters; Not patentable but subject to copyright.
e. Dramatic or dramatico-musical compositions; choreographic o. Other literary, scholarly, scientific and artistic works.
works or entertainment in dumb shows;
Kahit mga sayaw. So, yung binayaran ninyo doon sa inyong So, this is not an exclusive list.
Sayawtenista? May bayad yun because that is an artistic work.
Original artistic work by the choreographer. Kahit yung mga
172.2. Works are protected by the sole fact of their creation,
dumb shows? Yung mga movements nila? That is protected.
irrespective of their mode or form of expression, as well as of
their content, quality and purpose.
f. Musical compositions, with or without words;
March 23, 2019| Transcribed by: Dominic Estremos, Najim

There are songs where the lyricist and the composer is one and
Guinomla, Karlena Luz, & Frances Ann Mana-ay
the same person. But there are songs na iba yung composer
ng music, iba rin yung lyricist. So, they have their own
copyright. Distinctions between Copyright, Trademark and
Patent:
g. Works of drawing, painting, architecture, sculpture, Student 1: Trademarks and patents can be owned by a
engraving, lithography or other works of art; models or designs corporation, while a copyright can be owned by a natural
for works of art; person.
Yung mga design ng bahay. That’s also protected. Unless Atty. Suarez: Well actually in copyright, literary, artistic and
nakapublish na dun sa mga home magazines. Hindi na yan. scholarly creations are created by natural persons. It does not
mean that it cannot be owned by a corporation, because the
Pinamigay na nila yan.
natural person who created his work can dispose (or has a right
to dispose) to a corporation. The corporation does not create
h. Original ornamental designs or models for articles of artistic works.
manufacture, whether or not registrable as an industrial design,
and other works of applied art; Student 2: For trademarks and patents, you have to undergo
the process of registration in order for it to be protected, while
copyright is protected from the moment of its creation.
Yung mga hindi patentable na mga designs, hindi pwedeng i-
register as industrial design, yan pwede yan sa copyright.
Atty. Suarez: Yes. That is definitely a very marked distinction.
Copyright is automatically owned by the creator, and that is
Applied art, not patentable but subject to copyright. expressly provided by law. There is no need to undergo the
tedious registration process. That is why Copyright is shorter,
i. Illustrations, maps, plans, sketches, charts and three- because the bulk of our discussion in Patents is the registration
dimensional works relative to geography, topography, process.
architecture or science;
j. Drawings or plastic works of a scientific or technical CHAPTER III

character; DERIVATIVE WORKS
k. Photographic works including works produced by a process Sec. 173. Derivative Works. –
analogous to photography; lantern slides;
173.1. The following derivative works shall also be protected by
copyright:
l. Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or any (a) Dramatizations, translations, adaptations, abridgments,
process for making audio-visual recordings; arrangements, and other alterations of literary or artistic works; and
98
many compilations of Shakespeare on comedies, tragedies,

(b) Collections of literary, scholarly or artistic works, and compilations melodrama, etc. What if a person compiles the works of
of data and other materials which are original by reason of the selection Shakespeare? He has a copyright, but it does “not affect the
or coordination or arrangement of their contents. (Sec. 2, [P] and [Q], force of any subsisting copyright, upon the original works
P.D. No. 49) employed or any part thereof.”
Derivative works are also protected by copyright. So the original author has his own copyright. The one who
makes the derivative work has his own copyright.
(a) Dramatizations, translations, adaptations,
abridgments, arrangements, and other alterations of or be construed to imply any right to such use of the
literary or artistic works; and original works, or to secure or extend copyright in such
original works.
The narratization of a song, or the one dramatizes the song are
also protected. Yung kanyang ginawang musical or telenovela Meaning, there is NO presumption that he asked permission
are also protected. from the original author. So if he has a copyright on his
derivative work, it does not mean that he cannot be sued for
(b) Collections of literary, scholarly or artistic works, infringement by using the original works without permission. It
and compilations of data and other materials which are does not follow that he is authorized.
original by reason of the selection or coordination or
arrangement of their contents. Sec. 174. Published Edition of Work. - In addition to the right to
publish granted by the author, his heirs, or assigns, the publisher shall
Judicial decisions or Supreme Court decisions are NOT have a copyright consisting merely of the right of reproduction of the
protected by copyright. They are not included. Anybody can typographical arrangement of the published edition of the work. (n)
photocopy a Supreme Court decision. Also, laws are not
protected. You can photocopy a law. What are the Rights of a Publisher?
The publisher shall have a copyright consisting merely of the
But, if somebody puts together certain decisions of the court right of reproduction of the typographical arrangement of the
and makes a book out of them, then it is a derivative work. It published edition of the work.
is a compilation or collection of decisions.
Unlike the copyright owner, who has all the rights under Section
One example is the book of our present Supreme Court 177 (the economic rights), the publisher, even though he is
Administrator Jose Midas Marquez. He has a book in Central given a copyright in a form of assignment or license, his right
Books on the decisions of former Chief Justice Puno in is limited to republishing or reproducing the works.
Constitutional Law. (Editor’s Note: Upon research, it is entitled
“The Constitutional Philosophy of Philippine Jurisprudence.”) So CHAPTER IV
that is protected by copyright on how he compiled the different WORKS NOT PROTECTED
decisions.
Sec. 175. Unprotected Subject Matter. - Notwithstanding the
173.2. The works referred to in paragraphs (a) and (b) of Subsection provisions of Sections 172 and 173, no protection shall extend, under
173.1 shall be protected as new works: Provided however, That such this law, to any idea, procedure, system, method or operation, concept,
new work shall not affect the force of any subsisting copyright upon principle, discovery or mere data as such, even if they are expressed,
the original works employed or any part thereof, or be construed to explained, illustrated or embodied in a work; news of the day and other
imply any right to such use of the original works, or to secure or extend miscellaneous facts having the character of mere items of press
copyright in such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS) information; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof (n)
The works referred to in paragraphs (a) and (b) of

Subsection 173.1 shall be protected as new works: What are those that are NOT protected by copyright?
1. Any idea
Take note in this Section that they “shall be protected as new
works.” For the book of Jose Midas Marquez, he owns the Vague! But maybe an idea is one which is on one’s
copyright. He does not need the permission of Chief Justice head, but if it is already written, wala na.
Puno because it is not protected.
2. Procedure
Provided however, That such new work shall not affect
the force of any subsisting copyright upon the original A procedure is not copyrightable. It is patentable. It is
works employed or any part thereof, a process. For example, procedure for turning straw
into gold.
But what if we have William Shakespeare. Assume that he was
just born 50 years ago. You know very well that there are so 3. System
99
4. Method or Operation 176.2. The author of speeches, lectures, sermons, addresses, and
5. Concept dissertations mentioned in the preceding paragraphs shall have the
6. Principle exclusive right of making a collection of his works. (n)
7. Discovery
8. Mere data as such, even if they are expressed, What is the right of the author of speeches, lectures,
explained, illustrated or embodied in a work sermons, addresses and dissertations?
9. News of the day and other miscellaneous facts having
the character of mere items of press information They shall have the exclusive right of making a collection of his
10. Any official text of a legislative, administrative or legal works. He has the right to compile his sermons and speeches.
nature, as well as any official translation thereof
176.3. Notwithstanding the foregoing provisions, the Government is
All the laws, promulgated rules and judicial decisions not precluded from receiving and holding copyrights transferred to it
are not protected. A justice cannot say, “You cannot by assignment, bequest or otherwise; nor shall publication or
quote me. You cannot quote my decision.” republication by the Government in a public document of any work in
which copyright is subsisting be taken to cause any abridgment or
Sec. 176. Works of the Government. – annulment of the copyright or to authorize any use or appropriation of
such work without the consent of the copyright owner. (Sec. 9, third
176.1. No copyright shall subsist in any work of the Government of par., P.D. No. 49)
the Philippines. However, prior approval of the government agency or
office wherein the work is created shall be necessary for exploitation of Notwithstanding the foregoing provisions, the
such work for profit. Such agency or office may, among other things, Government is not precluded from receiving and
impose as a condition the payment of royalties. No prior approval or
holding copyrights transferred to it by assignment,
conditions shall be required for the use of any purpose of statutes, rules
and regulations, and speeches, lectures, sermons, addresses, and bequest or otherwise;
dissertations, pronounced, read or rendered in courts of justice, before
administrative agencies, in deliberative assemblies and in meetings of So a certain author can actually assign his copyright to the
public character. (Sec. 9, first par., P.D. No. 49) government and that is not prohibited.
No copyright shall subsist in any work of the CHAPTER V

Government of the Philippines. COPYRIGHT OR ECONOMIC RIGHTS
The works of the government are NOT protected by copyright. Sec. 177. Copyright or Economic Rights. - Subject to the
provisions of Chapter VIII, copyright or economic rights shall consist of
However, prior approval of the government agency or the exclusive right to carry out, authorize or prevent the following acts:
office wherein the work is created shall be necessary
177.1. Reproduction of the work or substantial portion of the work;
for exploitation of such work for profit. Such agency or 177.2. Dramatization, translation, adaptation, abridgment,
office may, among other things, impose as a condition arrangement or other transformation of the work;
the payment of royalties. 177.3. The first public distribution of the original and each copy of the
work by sale or other forms of transfer of ownership;
What about itong mga SCRA? Hindi naman ito Supreme Court 177.4. Rental of the original or a copy of an audiovisual or
publication. Siguro they asked permission from the Supreme cinematographic work, a work embodied in a sound recording, a
Court, kasi this is for profit. Binebenta din nila yan. computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental; (n)
No prior approval or conditions shall be required for the 177.5. Public display of the original or a copy of the work;
use of any purpose of statutes, rules and regulations, 177.6. Public performance of the work; and
and speeches, lectures, sermons, addresses, and 177.7. Other communication to the public of the work. (Sec. 5, P. D.
dissertations, pronounced, read or rendered in courts No. 49a)
of justice, before administrative agencies, in
deliberative assemblies and in meetings of public
character. CHAPTER VI
OWNERSHIP OF COPYRIGHT
That is why in the deliberations of the legislature, like their
debates when crafting a law, they can be retrieved anytime.
Sec. 178. Rules on Copyright Ownership. - Copyright ownership
That is why sometimes in Supreme Court decisions, they quote shall be governed by the following rules:
the debates.
178.1 Subject to the provisions of this section, in the case of original
We discussed this in the case of Twin Ace Holdings vs. CA, literary and artistic works, copyright shall belong to the author of the
wherein they were attempting to amend Section 6 of R.A. 623. work;
100
178.2. In the case of works of joint authorship, the co-authors shall i.if the creation of the object of
be the original owners of the copyright and in the absence of copyright is not a part of his regular
agreement, their rights shall be governed by the rules on co-ownership. duties
If, however, a work of joint authorship consists of parts that can be ii. even if the employee uses the time,
used separately and the author of each part can be identified, the facilities and materials of the
author of each part shall be the original owner of the copyright in the employer.
part that he has created;
 The EMPLOYER,
178.3. In the case of work created by an author during and in the i. if the work is the result of the
course of his employment, the copyright shall belong to: performance of his regularly-
assigned duties,
(a) The employee, if the creation of the object of copyright is not a part ii. unless there is an agreement,
of his regular duties even if the employee uses the time, facilities and express or implied, to the contrary.
materials of the employer.
4. In the case of a work commissioned by a person other
(b) The employer, if the work is the result of the performance of his
than an employer of the author and who pays for it
regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary. and the work is made in pursuance of the commission,
 the PERSON WHO SO COMMISSIONED
178.4. In the case of a work commissioned by a person other than an THE WORK shall have ownership of the
employer of the author and who pays for it and the work is made in work,
pursuance of the commission, the person who so commissioned the  but the copyright thereto shall remain with
work shall have ownership of the work, but the copyright thereto shall the CREATOR,
remain with the creator, unless there is a written stipulation to the  unless there is a written stipulation to the
contrary;
contrary;
178.5. In the case of audiovisual work, the copyright shall belong to
the producer, the author of the scenario, the composer of the music, For example, Vicco will hire a painter to paint his portrait. He is
the film director, and the author of the work so adapted. However, the owner of the portrait. But who can exhibit the portrait? “The
subject to contrary or other stipulations among the creators, the copyright thereto shall remain with the creator.”
producer shall exercise the copyright to an extent required for the
exhibition of the work in any manner, except for the right to collect 5. In the case of audiovisual work,
performing license fees for the performance of musical compositions,  the copyright shall belong to:
with or without words, which are incorporated into the work; and
i. the producer,
178.6. In respect of letters, the copyright shall belong to the writer ii. the author of the scenario,
subject to the provisions of Article 723 of the Civil Code. (Sec. 6, P.D. iii. the composer of the music,
No. 49a) iv. the film director, and
v. the author of the work so adapted.
What are the Rules on Copyright Ownership?  However, subject to contrary or other
1. In the case of original literary and artistic works, stipulations among the creators, the
 copyright shall belong to the AUTHOR of the producer shall exercise the copyright to an
work (i.e. the one who created it); extent required for the exhibition of the work
in any manner,
2. In the case of works of joint authorship,  except for the right to collect performing
 the CO-AUTHORS shall be the original license fees for the performance of musical
owners of the copyright compositions, with or without words, which
 and in the absence of agreement, their rights are incorporated into the work;
shall be governed by the rules on co-
ownership. These artists own their creations, but they can tie up certain
production companies. For example, I used to buy music sheet
If, however, a work of joint authorship consists of books for musicals in a shop in Los Angeles. These are
parts that can be used separately and the author of composed by Rodgers and Hammerstein who are well-known
each part can be identified, composers and lyricists. But if you look at the book, the
 the AUTHOR OF EACH PART shall be the copyright belongs to Hal Leonard, its company. So bale meron
original owner of the copyright in the part na silang agreement.
that he has created (e.g. the lyricist and the
composer); 6. In respect of letters,
 the copyright shall belong to the WRITER
3. In the case of work created by an author during and subject to the provisions of Article 723 of the
in the course of his employment, the copyright shall Civil Code. (Sec. 6, P.D. No. 49a)
belong to: (Note: This is the same as patents.)
 The EMPLOYEE,
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Article 723. Letters and other private communications in writing are thereof, neither of the owners shall be entitled to grant licenses without
owned by the person to whom they are addressed and delivered, but the prior written consent of the other owner or owners. (Sec. 15, P.D.
they cannot be published or disseminated without the consent of the No. 49a)
writer or his heirs. However, the court may authorize their publication
or dissemination if the public good or the interest of justice so requires. Q: What if the copyright owner submits his works to a
(n) newspaper, magazine or periodical for publication? What right
is given to the publisher?
Sec. 179. Anonymous and Pseudonymous Works. - For purposes
of this Act, the publishers shall be deemed to represent the authors of A: Only a license to make a single publication unless a greater
articles and other writings published without the names of the authors right is expressly granted.
or under pseudonyms, unless the contrary appears, or the pseudonyms
or adopted name leaves no doubt as to the author's identity, or if the So, once lang ang publication unless nakalagay pwede once a
author of the anonymous works discloses his identity. (Sec. 7, P.D. 49) week in 10 weeks.
Now, we have a lot of novels that are written but the name of Q: Who can grant a license if two or more persons jointly own
the author is a pseudonym. Can you give an example? Si Mark a copyright or any part thereof?
Twain. What did he write? “Huckleberry Finn”. What is his real
name? Samuel Langhorne Clemens. Meron ding mga A: Neither of the owners shall be entitled to grant licenses
anonymous, ayaw talaga magpakilala. without the prior written consent of the other owner or owners.
So, everyone must consent.
To whom do you issue the check? Eh di naman niya totoong
pangalan ang Mark Twain. 180.4. Any exclusivity in the economic rights in a work may be
exclusively licensed. Within the scope of the exclusive license, the
General Rule: the publishers shall be deemed to represent the licensee is entitled to all the rights and remedies which the licensor had
authors of articles and other writings published without the with respect to the copyright.
names of the authors or under pseudonyms.
This is an amendment. Take note, economic rights in a work
Exception: Unless the contrary appears, or the pseudonyms or may be exclusively licensed.
adopted name leaves no doubt as to the author's identity, or if
the author of the anonymous works discloses his identity. (Sec. Sec. 181. Copyright and Material Object. – The copyright is
7, P.D. 49) distinct from the property in the material object subject to it.
Consequently, the transfer, assignment or licensing of the copyright
CHAPTER VII shall not itself constitute a transfer of the material object. Nor shall a
TRANSFER OR ASSIGNMENT OF COPYRIGHT transfer or assignment of the sole copy or of one or several copies of
the work imply transfer, assignment or licensing of the copyright. (Sec.
16, P.D. No. 49)
Note: some provisions are amended by RA 10372.
Sec. 180. Rights of Assignee. Do not forget that a copyright is distinct from a material
object. If you are the creator, you own two things. The
180.1. The copyright may be assigned or licensed in whole or in part. tangible – which is the creation and the intangible – which
Within the scope of the assignment or license, the assignee or licensee is the copyright.
is entitled to all the rights and remedies which the assignor or licensor
had with respect to the copyright. So, if you want to transfer your copyright, are you automatically
transferring your work? NO. Because they are separate and
Q: As an author, can you assign your copyrights? (We are not distinct from the other.
talking about the work)
If you want to donate your tangible work? Are you also
A: Yes, you make a deed of assignment or a licensing contract. donating your copyright? Again, NO.
In whole or in part.
Sec. 182. Filing of Assignment or License. - An assignment or
180.2. The copyright is not deemed assigned or licensed inter vivos, exclusive license may be filed in duplicate with the National Library
in whole or in part, unless there is a written indication of such intention. upon payment of the prescribed fee for registration in books and
records kept for the purpose. Upon recording, a copy of the instrument
shall be returned to the sender with a notation of the fact of record.
Section 180.2 refers to the form of assignment. It cannot be Notice of the record shall be published in the IPO Gazette. (Sec. 19,
oral. P.D. No. 49a)
180.3. The submission of a literary, photographic or artistic work to a

Before, there is no Bureau of Copyrights. When you file an
newspaper, magazine or periodical for publication shall constitute only
a license to make a single publication unless a greater right is expressly
assignment, you normally go with the National Library. But
granted. If two (2) or more persons jointly own a copyright or any part
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now, you go to the Bureau of Copyrights and other related not been expressly reserved: Provided, That the source is clearly
rights. Although, they did not amend this provision. indicated; (Sec. 11, P.D. No. 49)
Sec. 183. Designation of Society. Designation of Society. – the So, for purposes of information. Take note of ‘ it has not been
owners of copyright and related rights or their heirs may designate a expressly reserved’ and the ‘source is clearly indicated’. We
society of artists, writers, composers and other right-holders to have a case on this, we will go to this later.
collectively manage their economic or moral rights on their behalf. For
the said societies to enforce the rights of their members, they shall first
(d) The reproduction and communication to the public of literary,
secure the necessary accreditation from the Intellectual Property
scientific or artistic works as part of reports of current events by means
Office. (Sec. 32, P.D. No. 49a)
of photography, cinematography or broadcasting to the extent
necessary for the purpose; (Sec. 12, P.D. No. 49)
This one is an amendment. Definitely, when you are a
composer, you will never achieve fame if mag-isa ka lang. You So, this person has an exhibit. Syempre, lalabas yung mga
really have to join a society. But that society has to be paintings niya sa TV. Can you say na, “No! I’m the only one
accredited by the IPO or other government offices.
who can publish.” No. That is not included.
CHAPTER VIII
(e) The inclusion of a work in a publication, broadcast, or other
LIMITATIONS ON COPYRIGHT
communication to the public, sound recording or film, if such inclusion
is made by way of illustration for teaching purposes and is compatible
What does not constitute infringement of copyright? So, section with fair use: Provided, That the source and of the name of the author,
177 talks about economic rights. The rights that belong if appearing in the work, are mentioned;
exclusively to the copyright owner. If somebody else does the
act mentioned in 177, that constitutes infringement of Even teachers can do so, but always mention the source.
copyright. However, section 184 gives us the exceptions
to what constitutes infringement of copyright.
(f) The recording made in schools, universities, or educational
institutions of a work included in a broadcast for the use of such
schools, universities or educational institutions: Provided, That such
Sec. 184. Limitations on Copyright. – recording must be deleted within a reasonable period after they were
first broadcast: Provided, further, That such recording may not be
184.1. Notwithstanding the provisions of Chapter V, the following acts made from audiovisual works which are part of the general cinema
shall not constitute infringement of copyright: repertoire of feature films except for brief excerpts of the work;
(a) The recitation or performance of a work, once it has been lawfully

made accessible to the public, if done privately and free of charge or if These are works included in a broadcast for the use of such
made strictly for a charitable or religious institution or society; (Sec. schools. So, when you record a broadcast, you can, but delete
10(1), P.D. No. 49) it right away. Do not publicize.
So, we just had our Conflicts of Law. Diba, meron tayong (g) The making of ephemeral recordings by a broadcasting
organization by means of its own facilities and for use in its own
kinanta duon sa stage and this are copyrighted songs. Are you
broadcast;
allowed to sing such songs? Of course. Because these songs
are already made accessible to the public. And our Conflicts
event naman is free of charge. So, that is an example of (a). (h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and is
(b) The making of quotations from a published work if they are
compatible with fair use;
compatible with fair use and only to the extent justified for the purpose,
including quotations from newspaper articles and periodicals in the
form of press summaries: Provided, That the source and the name of So, the Government may use a work of another which is
the author, if appearing on the work, are mentioned; (Sec. 11, third protected by a copyright. Provided:
par., P.D. No. 49) 1. Such use is in the public interest and
2. Compatible with fair use
So, can you quote another person? Like, when you are making
a speech. Of course you can quote. But you have to indicate (i) The public performance or the communication to the public of a
that this is quoted from a particular person. Do not say it and work, in a place where no admission fee is charged in respect of such
pretends it yours. That is the meaning of fair use. public performance or communication, by a club or institution for
charitable or educational purpose only, whose aim is not profit making,
subject to such other limitations as may be provided in the Regulations;
(c) The reproduction or communication to the public by mass media of
(n);
articles on current political, social, economic, scientific or religious
topic, lectures, addresses and other works of the same nature, which
are delivered in public if such use is for information purposes and has (j) Public display of the original or a copy of the work not made by
means of a film, slide, television image or otherwise on screen or by
means of any other device or process: Provided, That either the work
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has been published, or, that the original or the copy displayed has been
sold, given away or otherwise transferred to another person by the Just take note of that.
author or his successor in title; and
So, once the original author has already given away that xxx In determining whether the use made of a work in any particular
particular work, like painting, pinamigay na niya, then it can be case is fair use, the factors to be considered shall include:
publicly displayed.
(a) The purpose and character of the use, including whether such use
is of a commercial nature or is for non-profit educational purposes;
(k) Any use made of a work for the purpose of any judicial proceedings
(b) The nature of the copyrighted work;
or for the giving of professional advice by a legal practitioner.
(c) The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
‘Any use made of a work for the purpose of any judicial (d) The effect of the use upon the potential market for or value of the
proceedings’ - So, if you are a lawyer and you want to argue copyrighted work.
with the court, can you use the work of another? Pwede.
So, kahit magpalusot pa kayo ng fair use, there are still factors
Or ‘for the giving of professional advice by a legal practitioner’ . that should be considered. Definitely, if you make money out
May client ka and you persuade your client. You can use the of it and especially you mass produce it, hindi yan mahuhulog
work of another. sa fair use.
"(1) the reproduction or distribution of published articles or materials ‘The nature of the copyrighted work’ – Depende rin naman, like
in a specialized format exclusively for the use of the blind, visually- and if that is a novel and you just quote a sentence or maybe two,
reading-impaired persons: Provided, That such copies and distribution that’s fine. But if it a painting of a some really popular painter,
shall be made on a nonprofit basis and shall indicate the copyright tinatago niya and suddenly nandoon na pala sa gallery,
owner and the date of the original publication."
claiming for educational purposes, I don’t think that will hold
water as fair use.
This is an amendment, a new provision.
‘The amount and substantiality of the portion used in relation
So, itong mga books that are written in braille. There is no need to the copyrighted work as a whole’ – Like I said, if that is a
to ask permission from the author. There is no infringement in novel and you just quote a sentence or maybe two, that’s fine.
a publication in braille as long as these books are not sold for
profit. They will be given to the blind so that they can read. ‘The effect of the use upon the potential market for or value of
the copyrighted work’ – Remember, criticism is allowed. If you
184.2. The provisions of this section shall be interpreted in such a way quote from that novel and you criticize it, then bumagsak yung
as to allow the work to be used in a manner which does not conflict sales.
with the normal exploitation of the work and does not unreasonably
prejudice the right holder's legitimate interests.
185.2. The fact that a work is unpublished shall not by itself bar a
finding of fair use if such finding is made upon consideration of all the
So, if you are a composer, Syempre you want to make money above factors.
out of your work. So, by performing your song in a charitable
show, mapre-prejudice ka ba? Hindi naman siguro noh? As long Take note not all creators want their work published. So, also
as it does not conflict with what you normally do, like the way unpublished works are protected. There can be an unfair use
you distribute the songs. of an unpublished work.
Sec. 185. Fair Use of a Copyrighted Work. – Sec. 186. Work of Architecture. - Copyright in a work of
architecture shall include the right to control the erection of any
185.1. Fair Use of a Copyrighted Work. The fair use of a building which reproduces the whole or a substantial part of the work
copyrighted work for criticism, comment, news reporting, teaching either in its original form or in any form recognizably derived from the
including limited number of copies for classroom use, scholarship, original: Provided, That the copyright in any such work shall not include
research, and similar purposes is not an infringement of copyright. xxx the right to control the reconstruction or rehabilitation in the same style
as the original of a building to which that copyright relates. (n)
185 is very popular. Fair use. This is a popularly used as
defense. So, if magpaphotocopy kayo diyan, just say we are Just take note that this is a new provision.
using it for classroom and research purposes.
Sec. 187. Reproduction of Published Work. - 187.1. Notwithstanding
xxx Decompilation, which is understood here to be the reproduction the provision of Section 177, and subject to the provisions of
of the code and translation of the forms of a computer program to Subsection 187.2, the private reproduction of a published work in a
achieve the interoperability of an independently created computer single copy, where the reproduction is made by a natural person
program with other programs may also constitute fair use under the exclusively for research and private study, shall be permitted, without
criteria established by this section, to the extent that such the authorization of the owner of copyright in the work.
decompilation is done for the purpose of obtaining the information
necessary to achieve such interoperability. xxx
104
Discussion: Reproduction of Published Work. Ito yung replace a copy, or to replace, in the permanent collection of another
ginagawa natin, no. Is reproduction of published work allowed similar library or archive, a copy which has been lost, destroyed or
without the authorization of the owner of copyright of the work rendered unusable and copies are not available with the publisher.
permitted? Yes. Only if it is the private reproduction and a
single copy. Magpa-photocopy ka para sa sarili mo lang. Discussion: Can libraries reproduce a copy of the entire book?
Well, the general rule is NO. But pwede under these conditions.
Where the reproduction is made by a natural person. Hindi The book is very, very rare. And it is fragile kasi ang kanyang
pwede na corporation. Anohin ba ng corporation ‘yan? leaves are manipis na masyado, gabok na. Example, Philippne
Reports. O ‘yon. What is the purpose of setting up a library? So
For school purposes and exclusively for research and private that the students or people can read, borrow, use it. Tapos
study. This is what you can use as another excuse aside from kung gabok na na copy, baka masira. So pwede you can have
fair use. Another defense in photocopying copyrighted books. that reproduced as an entire book.
However,
So there are other conditions here, you want to preserve. So
let’s say it is very rare and that only another library has a copy.
187.2. The permission granted under Subsection 187.1 shall not extend
It is the only book in the Philippines, kailangan hiramin from
to the reproduction of:
the Supreme Court library or the National Library. Eh yung
ibang library from other schools? Anong magawa nila? Patay
(a) A work of architecture in the form of building or other construction;
na yung author, patay na yung heirs, taga-Timbuktu or
whatever it is that you need to ask permission, so you can just
(b) An entire book, or a substantial part thereof, or of a musical work for study purposes.
in graphic form by reprographic means;
188.2. Notwithstanding the above provisions, it shall not be permissible

Discussion: And take note, an entire book. Yung tipong i- to produce a volume of a work published in several volumes or to
photocopy yung entire book then lagyan pa ng ano, Or a produce missing tomes or pages of magazines or similar works, unless
substantial part thereof, or of a a musical piece of a musical the volume, tome or part is out of stock: Provided, That every library
which, by law, is entitled to receive copies of a printed work, shall be
work in graphic form by reprographic means. So yung aking entitled, when special reasons so require, to reproduce a copy of a
mga musical books ginapa-reproduce ko pero one piyesa at a published work which is considered necessary for the collection of the
time. Not the entire book na pinapa-book bind. library but which is out of stock. (Sec. 13, P.D. 49a)
(c) A compilation of data and other materials; Discussion: Yes, so pwede ba na buong volume? Of the
SCRA? I-photocopy? No, because the SCRA is available. Only
(d) A computer program except as provided in Section 189; and
those which are not available.
(e) Any work in cases where reproduction would unreasonably conflict
with a normal exploitation of the work or would otherwise unreasonably Sec. 189. Reproduction of Computer Program. - 189.1.
prejudice the legitimate interests of the author. Notwithstanding the provisions of Section 177, the reproduction in one
(1) back-up copy or adaptation of a computer program shall be
permitted, without the authorization of the author of, or other owner
Discussion: You already know that. (referring to of copyright in, a computer program, by the lawful owner of that
“unreasonable conflict with a normal exploitation of the work computer program: Provided, That the copy or adaptation is necessary
or would otherwise unreasonably prejudice the legitimate for:
interests of the author”)
(a) The use of the computer program in conjunction with a computer
for the purpose, and to the extent, for which the computer program
has been obtained; and
Sec. 188. Reprographic Reproduction by Libraries . - 188.1.
Notwithstanding the provisions of Subsection 177.6, any library or
(b) Archival purposes, and, for the replacement of the lawfully owned
archive whose activities are not for profit may, without the
copy of the computer program in the event that the lawfully obtained
authorization of the author of copyright owner, make a single copy of
copy of the computer program is lost, destroyed or rendered unusable.
the work by reprographic reproduction:
(a) Where the work by reason of its fragile character or rarity cannot Note: This section was not discussed by Atty. Suarez. The next
be lent to user in its original form; provision that was discussed was 189.2.
(b) Where the works are isolated articles contained in composite works
or brief portions of other published works and the reproduction is 189.2. No copy or adaptation mentioned in this Section shall be used
necessary to supply them, when this is considered expedient, to for any purpose other than the ones determined in this Section, and
persons requesting their loan for purposes of research or study instead any such copy or adaptation shall be destroyed in the event that
of lending the volumes or booklets which contain them; and continued possession of the copy of the computer program ceases to
be lawful.
(c) Where the making of such a copy is in order to preserve and, if
necessary in the event that it is lost, destroyed or rendered unusable,
105
189.3. This provision shall be without prejudice to the application of Provided, that only works in the field of law shall be
Section 185 whenever appropriate. deposited with the Supreme Court Library. So only law
books, the rest National Library.
Sec. 190. Importation and Exportation of Infringing Materials. –
Such registration and deposit is not a condition of
Subject to the approval of the Secretary of Finance, the Commissioner
of Customs is hereby empowered to make rules and regulations for copyright protection. It is just to provide the National Library
preventing the importation or exportation of infringing articles with your book or the SC Library with your law book. But this
prohibited under Part IV of this Act and under relevant treaties and is not a condition precedent for protection. Again, this is just
conventions to which the Philippines may be a party and for seizing and for the purpose of providing the library with your book.
condemning and disposing of the same in case they are discovered
after they have been imported or before they are exported. (Sec. 30,
Sec. 192. Notice of Copyright. - Each copy of a work published or
P.D. No. 49).
offered for sale may contain a notice bearing the name of the copyright
owner, and the year of its first publication, and, in copies produced
DISCUSSION: A new provision. If you want to look at the old after the creator's death, the year of such death.
law, feel free. But this is an entirely new provision by RA 10372.
DISCUSSION: Each copy of a work published or offered
So kapag dumaan sa Customs any infringing article, mga books for sale may contain a notice bearing the name of the
that were illegally printed, mga DVD. Bakit kaya kung may mga copyright owner. So if for patents you have “Philippine
blockbuster na movie dito pinapalabas una? Nauuna pa tayo sa Patent number” or “Philippine Patent Pending”. If trademark
US, alam niyo ba yan? Yes, mura ang Pilipinas. Kasi pag you have “Registered Trademark” doon sa bottle, meron pang
ipalabas yan una sa US, meron na nagvivideo doon sa movie “Registered Owner blablabla”. For copyright, nakalagay doon
house at ibebenta na dito sa Pilipinas sa DVD. Pirated. So they sa book “Copyright 1985 of blablabla”.
show really blockbuster movies here para kung manuod na
yung Pinoy, mabawasan na yung mga pirated. And the year of its first publication, and, in copies
produced after the creator's death, the year of such
So once the customs sense that these are infringing materials, death. This must be made after the first public dissemination
articles, they can have them destroyed. How many times have of or performance by the authority of the copyright owner of
you seen bulldozer run over mga pirated DVDs. the work.
CHAPTER IX Okay, so we have finished the Economic Rights of a creator, of

DEPOSIT AND NOTICE the literally, scholarly, and artistic work. Now we will look at,
the Moral Rights.
Sec. 191. Deposit and Notice of Deposit with the National Library and
the Supreme Court Library. – At any time during the subsistence of the CHAPTER X
copyright, the owner of the copyright or of any exclusive right in the MORAL RIGHTS
work may, for the purpose of completing the records of the National
Library and the Supreme Court Library, register and deposit with them,
by personal delivery or by registered mail, two (2) complete copies or Sec. 193. Scope of Moral Rights. - The author of a work shall,
reproductions of the work in such form as the Directors of the said independently of the economic rights in Section 177 or the grant of an
libraries may prescribe in accordance with regulations: Provided, That assignment or license with respect to such right, have the right:
only works in the field of law shall be deposited with the Supreme Court
Library. Such registration and deposit is not a condition of copyright 193.1. To require that the authorship of the works be attributed to him,
protection. in particular, the right that his name, as far as practicable, be indicated
in a prominent way on the copies, and in connection with the public
use of his work;
Discussion: 191 is entirely new.
DISCUSSION: So sa lahat, yung sa book, or even in movies,
At any time during the subsistence of the copyright.
the writer, screenwriter, screen play, ano pa yung tawag diyan.
When does the copyright exist? From the moment of creation.
In particular, the right that his name, as far as
So ito wala itong time.
practicable, be indicated in a prominent way on the
copies, kailangan makita talaga yung pangalan, and in
The owner of the copyright or of any exclusive right in
connection with the public use of his work. So if there is
the work may, for the purpose of completing the
an exhibit of a painting, nakalagay diyan yung pangalan ng
records of the National Library and the Supreme Court
painter.
Library, register and deposit with them by personal
delivery or by registered mail two (2) complete copies
or reproductions of the work in such form as the 193.2. To make any alterations of his work prior to, or to withhold it
from publication;
Directors of the said libraries may prescribe in
accordance with regulations. Take note of the word MAY.
DISCUSSION: Who can alter the work? Only the creator.
106
193.3. To object to any distortion, mutilation or other modification of, respect to any version or adaptation of his work
or other derogatory action in relation to, his work which would be which, because of alterations therein, would
prejudicial to his honor or reputation; and substantially tend to injure the literary or artistic
reputation of another author; or
193.4. To restrain the use of his name with respect to any work not of
his own creation or in a distorted version of his work. (Sec. 34, P.D. 2. To use the name of the author with respect to a work
No. 49)
he did not create.
DISCUSSION: Pwede rin niya i-print off(?) world wide, kung Sec. 196. Contribution to Collective Work. - When an author
sikat siya, maraming gusting gumamit ng kanyang name , he contributes to a collective work, his right to have his contribution
can also prevent that. attributed to him is deemed waived unless he expressly reserves it.
(Sec. 37, P.D. No. 49)
Those are the moral rights.
DISCUSSION: His right to have his contribution attributed to
Sec. 194. Breach of Contract. - An author cannot be compelled to him, he has to reserve his right.
perform his contract to create a work or for the publication of his work
already in existence. However, he may be held liable for damages for
breach of such contract. (Sec. 35, P.D. No. 49) Sec. 197. Editing, Arranging and Adaptation of Work. - In the absence
of a contrary stipulation at the time an author licenses or permits
another to use his work, the necessary editing, arranging or adaptation
DISCUSSION: Let’s say we have here A, a publishing of such work, for publication, broadcast, use in a motion picture,
company, entered with a contract with B, the author. Na dapat dramatization, or mechanical or electrical reproduction in accordance
may book na isa-submit yung author by the end of 2018. with the reasonable and customary standards or requirements of the
Kailangan may kumpleto na novel si author B to be submitted medium in which the work is to be used, shall not be deemed to
contravene the author's rights secured by this chapter. Nor shall
by the author by the end of 2018. Ano na ngayon, 2019, hindi
complete destruction of a work unconditionally transferred by the
pa rin nagsa-submit si B. An author cannot be compelled author be deemed to violate such rights. (Sec. 38, P.D. No. 49)
to perform his contract to create a work or for the
publication of his work already in existence. Kung hindi
pa siya tapos, hindi siya dapat pilitin. Meaning hindi siya pwede Sec. 198. Term of Moral Rights. – 198.1. the right of an author under
file-an ng Specific Performance. No. Kasi artistic work, if you Section 193.1 shall last during the lifetime of the author and in
are not inspired sabi ng mga artist, wala talaga. Hindi mo perpetuity after his death while the rights under Sections 193.2, 193.3,
and 193.4 shall be coterminous with the economic rights, the moral
pwedeng pilitin yan. rights shall not be assignable or subject to license. The person or
persons to be charged with the posthumous enforcement of these
Let’s say, ano na. Let’s say tapos na ni author B, but he rights shall be named in a written instrument which shall be filed with
changed his mind, ayaw niya i-publish. Can he be forced? No. the National Library. In default of such person or persons, such
Hindi pwede ang Specific Performance, what is allowed is that enforcement shall devolve upon either the author’s heirs, and in default
he may liable for Damages for Breach of Contract. That’s it. of the heirs, the Director of the National Library.
Kasi no under your Obli Con, pwede specific performance or
rescission, depende sa plaintiff. But here, the publishing DISCUSSION: Term of moral rights. During the lifetime of
company has only the right to sue damages based on breach the author and in perpetuity after his death. Pwede bang
of contract. tanggalin yung pangalan ni Shakespeare from his books? Hindi
oy, kahit matagal na siyang patay. Si Jose Rizal, pwede bang
Sec. 195. Waiver of Moral Rights. - An author may waive his rights tanggalin? Hindi. This is a moral right.
mentioned in Section 193 by a written instrument, but no such waiver
shall be valid where its effects is to permit another: Section 193.2, 193.3, and 193.4 shall be coterminous
with the economic rights. The moral rights shall not be
195.1. To use the name of the author, or the title of his work, or
assignable or subject to license. So iba yung term ng
otherwise to make use of his reputation with respect to any version or
adaptation of his work which, because of alterations therein, would
economic rights, you will look at later. Ang moral rights, you
substantially tend to injure the literary or artistic reputation of another can not assign. What can you assign? Only economic rights.
author; or
The person or persons to be charged with the posthumous shall
195.2. To use the name of the author with respect to a work he did not devolved upon the author’s heirs, and in default of the heirs,
create. (Sec. 36, P.D. No. 49) the Director of the National Library.
DISCUSSION: Can the creator waive his moral rights? Yes, he “Person” means any individual, partnership,
may do so by a written instrument, EXCEPT no such waiver corporation, association, or society. Including juridical
shall be valid where its effects is to permit another: persons no.
1. To use the name of the author, or the title of his work,

or otherwise to make use of his reputation with
107
The Director of the National Library may prescribe In the present case, it is beyond question that the
reasonable fees to be charged for his services in the playing and singing of the combo in defendant-appellee's
application of provisions of this Section. restaurant constituted performance for profit contemplated by
the Copyright Law.
However, the SC still ruled that there is no copyright
Sec. 199. Enforcement Remedies. - Violation of any of the rights infringement because there is waiver of right. Par. 33 of Patent
conferred by this Chapter shall entitle those charged with their Office Administrative Order No. 3 (which is the governing law
enforcement to the same rights and remedies available to a copyright that time, an important AO that time) provides: “ An intellectual
owner. In addition, damages which may be availed of under the Civil creation should be copyrighted thirty (30) days after its
Code may also be recovered. Any damage recovered after the creator's publication, if made in Manila, or within the (60) days if made
death shall be held in trust for and remitted to his heirs, and in default elsewhere, failure of which renders such creation public
of the heirs, shall belong to the government. (Sec. 40, P. D. No. 49)
property." The said provision means that “If the general public
has made use of the object sought to be copyrighted for thirty
(30) days prior to the copyright application the law deems the
CASES ON COPYRIGHT object to have been donated to the public domain and the same
can no longer be copyrighted.” We have this table:
FILIPINO SOCIETY OF COMPOSERS v. TAN
GR L-36402 March 16, 1987 SONGS REGISTRATION COMMENTS
“Dahil Sayo” April 20, 1956 It became popular in
Note: Applicable law is Act. No. 3134, Old Copyright Law radios, juke boxes,
etc. long before
Facts: FILSCAP is an association of authors, composers and registration
publishers. Owner of certain musical compositions among “The Nearness January 14, 1955 Become popular
which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Of You” twenty five (25)
Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness
years prior to 1968
Of You." Benjamin Tan, on the other hand, is the owner of "Alex
(year of hearing)
Soda Foundation and Restaurant".
The said restaurant plays and sings the mentioned "Sapagkat July 10, 1966 Known and sang by
compositions without any license or permission from the Ikaw Ay Akin" the witnesses as
appellant to play or sing the same. Hence, FILSCAP alleged that and "Sapagkat early as 1965 or
the act of playing and singing of such songs constitute Kami Ay Tao three years before
infringement of copyright. However, Benjamin Tan said that Lamang" the hearing
there is no infringement of copyright since the mere singing
and playing of songs and popular tunes even if they are Under these circumstances, the musical compositions had long
copyrighted do not constitute an infringement. become public property and therefore beyond the protection of
the Copyright Law.
Issue: Whether or not there is copyright infringement.
DISCUSSION: Okay. So since that was decided under the old
Ruling: No. law that was the ruling, the Patent Office issued that order. But
The applicable law is Sec. 3 of Act 3134 which what if it will happen now?
provides:
SEC. 3. The proprietor of a copyright or his heirs or A: If it will happen now Ma’am, there is no more copyright
assigns shall have the exclusive right: infringement.
(c) To exhibit, perform, represent, produce, or M/Q: Why?
reproduce the copyrighted work in any manner or
by any method whatever for profit or otherwise; if M: Technically, if you look at the law, there is. There is a
not reproduced in copies for sale, to sell any performance of a work publicly and the people who are
manuscripts or any record whatsoever thereof; watching are being charged then technically there is. BUT, it
can be argued in this case that the people are not paying for
The Supreme Court first identified if there is public the songs but for the food. The entertainment is free. That is
performance for profit. It is the performance of a work in public. the reason of many restaurants, bars where there is a bad
However, in this case, take note that the performance is in a playing. They are all playing copyrighted songs. Kaya
restaurant. Although the customers are not paying directly to nakakalusot kasi hindi naman ang banda ang binabayaran ng
watch the show, however, the Supreme Court still held that mga tao, it is the food. That’s why it is very hard to impose
there is public performance because the main reason or the sanctions on all the establishments that play all these songs.
purpose is inducing the public to patronize the establishment Tapos meron din instances like si Atty. A, whenever he has his
and pay for the entertainment in the purchase of food and birthday party he hires his family, they sing so many different
drinks. songs. Binayaran sila ni Atty. A to sing but the public who are
108
there, mga guests niya, do not pay to listen. Besides it is a NO, there was no probable cause. Columbia Pictures was not
private affair, that the one who present these people do not able to present the master tapes of the copyrighted films. The
charge anything. applicant must present to the court the copyrighted films to
compare them with the purchased evidence of the video tapes
So with respect to public performances of songs like what we allegedly pirated to determine whether the latter is an
do, or in a bar, it is really very difficult to control. Sometimes unauthorized reproduction of the former.
there are cases filed but I think the courts will always find a
way to get them approved(?), like in this case, used an order. DISCUSSION: In this case, the SC said how can you tell that
it is pirated ang mga binebenta ng mga establishments na ito
COLUMBIA PICTURES, INC. v. CA if you don’t have the master (tapes). But this is asking too much
GR 96597-99 October 6, 1994 actually because most of the time wala naman talagang master
(tapes) kasi yung kanilang source pirated din. So it was very
difficult to impose or actually seize articles by virtue of a search
Facts: On 07 April 1988, the National Bureau of Investigation warrant validly without the master tapes.
("NBI"), through its Agent Lauro C. Reyes, filed with the
Regional Trial Court of Pasig three applications for search So what message does the SC telling the entities who are into
warrant against Tube Video Enterprises and Edward C. Cham, pirating, producing pirated copies? Itapon yung master tapes
the Blooming Rose Tape Center and Ma. Jajorie T. Uy, and the *laughs*. Anyway, that is the ruling in that case.
Video Channel and Lydia Nabong charging them with violation
of Section 56 of Presidential Decree ("P.D.") No. 49, otherwise
known as the Decree on the Protection of Intellectual Property COLUMBIA PICTURES ET. AL. v. CA, SUNSHINE HOME
as amended by P.D. No. 1988. VIDEO and PELINDARIO
GR 110318 August 28, 1996
RTC Judge Austria granted the application for the search
warrants. However, the accused filed their respective motions Facts: Different film companies, Columbia Pictures, Orion
to quash the three search warrants and Judge Austria reversed Pictures, Paramount Pictures, 20th Century Fox, United Artists,
her former stand and ordered the quashal of the search Universal City Studios, Walt Disney Companies, and Warner
warrants for the reason that Columbia Pictures failed to present Brother, Inc. filed a formal complaint with the NBI for violation
the master tapes of the copyrighted films during the application of the old Copyright Infringement Law of 1972 (PD 49). The
for the search warrants. NBI then conducted a surveillance was made on various video
establishments, one of which is Sunshine Home Video, Inc. in
Columbia Pictures argued that the master tapes of the Makati owned and operated by Danilo A. Pelindario.
copyrighted films are not necessary for the determination
whether there is probable cause for the issuance of the search After surveillance, a search warrant was applied for, it was
warrant. issued by RTC Makati Br. 133 for seizure of pirated video tapes
of copyrighted films and motion pictures as well as
Issue: paraphernalia used for piracy.
1. Whether or not the presentation of the master tapes is
necessary for the validity of the finding of the probable cause. On December 14, 1987, a search Warrant was served and NBI
Agents found and seized various video tapes of copyrighted
2. Whether or not there is probable cause for the issuance of motion pictures or films owned by the film companies.
the search warrant. However, a Motion to Lift Order of Search Warrant (technically
a “quashal”) was granted (in an MR) for failure to present the
Ruling: master tapes from which the films were copied pursuant to the
recent ruling of 20th Century Fox v. Court of Appeals in 1988.
1. Whether or not the presentation of the master tapes is (Reporter’s note: To recap, the search warrant was applied on
necessary for the validity of the finding of the probable cause. 1987 and it was granted by the Court and it was later quashed
by a 1988 ruling)
YES. The SC cited a prior case 20th Century Fox Film Corp. vs.
Court of Appeals (164 SCRA 655) where it ruled that the As discussed in the earlier case (Columbia Pictures vs. CA,
presentation of the master tapes of the copyrighted films from 1994), it required the production of the master tape for
which the pirated films were allegedly copied, was necessary comparison with the allegedly pirated as necessary to
for the validity of search warrants. The court cannot presume determine probable cause.
that duplicate or copied tapes were necessarily reproduced
from master tapes that it owns. The Film Companies argued that the 1988 ruling should not
apply retroactively in a 1987 determination of probable cause.
2. Whether or not there is probable cause for the issuance of However, Sunshine counters that failure to register and deposit
the search warrant. put them beyond protective mantle in copyright cases.
Issue:
109
1. Is there a need for registration and deposit as prerequisite Also, to find out if there is an actionable infringement of a
to invoke the court’s protective mantle in copyright cases? copyright it should be properly be determined at the trial and
not the summary proceeding for the issuance of a search
2. Can the 20th Century ruling retroactively apply to justify the warrant.
quashal of the Search Warrant?
The SC ruled here that the infringement of a copyright is a
Ruling: trespass on a private domain owned and occupied by the owner
1. Is there a need for registration and deposit as prerequisite of the copyright, and, therefore, protected by law, and
to invoke the court’s protective mantle in copyright cases? infringement of copyright, or piracy, which is a synonymous
term in this connection, consists in the doing by any person,
NO. The failure to comply with the registration requirement without the consent of the owner of the copyright, of anything
does not deprive the copyright owner of the right to sue for the sole right to do which is conferred by statute on the owner
infringement for such non-compliance only limits the remedies of the copyright.
(damages) and subjects him to sanction (liability for non-
registration). [cross reference to Sec. 191, RA 8293]. What is more deplorable is that reprehensible acts of some
unscrupulous characters have stigmatized the Philippines with
The registration and deposit requirement was not for the an unsavory reputation as a hub for intellectual piracy in this
purpose of securing copyright of the work, but only to: part of the globe xxx. Such acts must not be glossed over but
1. Avoid penalty of non-compliance of deposit should be denounced and repressed lest the Philippines
requirement; and become an international pariah in the global intellectual
2. To recover damages in an infringement suit. community.
So, the Court ruled here that the search warrants are valid and
Clearly, it is explicitly stated in Sec. 2 of PD 49 (now Sec. 172.2 reinstated and the case for violation of the Copyright
of RA 8293), that the copyright of a work is acquired by Infringement Law (PD 49) shall proceed.
intellectual creator from the moment of creation even in the
absence of registration and deposit. DISCUSSION: So in other words, no need for the master
tapes. As a general rule, hindi naman talaga. It is just that case
2. Can the 20th Century ruling retroactively apply to justify the were the NBI does not make any surveillance daw. But I think
quashal of the Search Warrant? NO. they have discreetly reversed that ruling.
As a rule, we have the principle of prospectivity of judicial  Columbia Pictures vs CA (1994)- A Third Division case,
decisions apply not only to future cases but also to pending Justice Vitug
cases. In addition, the 20th Century Fox case was a 1988 ruling  Columbia Pictures vs CA (1996) – En Banc case,
and the search warrants were already granted in 1987. It would Justice Regalado
be absurd to apply a 1988 case in a 1987 determination of a
probable cause. With respect to SC ruling as a Division, we can have conflicting
rulings like when Third Division say “yes, not needed” and the
But assuming arguendo that the 20th Century Fox case would Second Division says otherwise. They are all valid judgments,
be applicable to this case, the Court ruled that we have to look they are all final and executory judgments that cannot be
at the different facts. In this case of Sunshine Home there was changed. They are the law of the case, for that case yan yung
already surveillance and clearly the NBI agents had personal ruling, for this case yan yung ruling and that cannot be
knowledge upon seizing the pirated motion pictures as well as considered a doctrine. But if the SC made a decision En Banc it
the DVDs. But in the case of 20th Century Fox, there was an can overrule, reverse, or change any Division ruling. This being
instance there were the SC ruled that they have to produce the En Banc case, SC is saying no need. It is actually absurd to
master tapes because the NBI agents there failed to state that require the production of the master tapes. Kaya nga sila
they have personal knowledge of the piracy. SO there was also nagpa-pirate kasi they do not have the original. And they do
a factual difference between the two cases. not need the original copy, you just need a copy to copy
something.
Again, in 1987, probable cause was found as Sunshine Home
was found to have been selling, leasing, circulating, offering for And besides, what was discussed in the Columbia Case (1994)
sale the tapes with copyrighted motion pictures without the was the determination of probable cause for the issuance of
written consent of the film companies as bolstered by the the search warrant. In this case, we are talking about
seized articles. Also, the testimony of NBI agents were infringement which is a performance of an act that is only
sufficient to show that they had personal knowledge of the allowed to be done by the creator under Article 177.
unauthorized acts, there was surveillance and was
corroborated by a private researcher. Unlike in the 20th March 26, 2019| Transcribed by: Emmanuel Monteroyo &
Century Fox case. Anna Sophia Tarhata Piang
110
Joaquin, Jr. and BJ Productions vs. Drilon (N) Computer programs;

G.R. No. 108946 January 28, 1999 (O) Prints, pictorial illustrations advertising copies, labels, tags,
and box wraps;
(P) Dramatizations, translations, adaptations, abridgements,
FACTS: arrangements and other alterations of literary, musical or
BJ Productions, Inc (BJPI) is a holder of a Certificate of artistic works or of works of the Philippine government as
Copyright no. M922 issued on January 28, 1971 of “Rhoda and herein defined, which shall be protected as provided in Section
Me” which is a dating show aired from 1970 to 1977. While 8 of this Decree.
watching the television, its President, Francisco Joaquin saw on (Q) Collections of literary, scholarly, or artistic works or of
RPN Channel 9 the episode of “It’s a Date” produced by IXL works referred to in Section 9 of this Decree which by reason
Productions. of the selection and arrangement of their contents constitute
intellectual creations, the same to be protected as such in
He wrote a letter to IXL’s president Gabriel Zosa informing him accordance with Section 8 of this Decree.
that BJPI has a copyright of the same format as shown on their (R) Other literary, scholarly, scientific and artistic works.
“It’s a Date” show in their “Rhoda and Me” show Zosa sought
to register IXL’s copyright to their first episode of “It’s a Date” The Supreme Court held that the format of a show is not
to the National Library. Francisco Joaquin filed a complaint in copyrightable as provided by Section 2 of PD no. 49 otherwise
violation of PD No. 49 against the Gabriel Zosa before the RTC known as the Decree on Intellectual Property which
of Quezon City. enumerates the classes of work that are covered by the
copyright protection.
Gabriel Zosa sought a review of the resolution from the Asst.
City Prosecutor before the Department of Justice who, through This provision is substantially the same as 172 of the
Secretary Franklin Drilon, moved for the information to be INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.A.
discarded, contending that a particular format of a game show No. 8293). The format or mechanics of a television show is not
is non-copyrightable. included in the list of protected works in 2 of P.D. No. 49. For
this reason, the protection afforded by the law cannot be
ISSUE: Whether or not the format or mechanics of the extended to cover them.
Francisco Joaquin’s television show is entitled to a copyright
protection. NO Copyright, in the strict sense of the term, is purely a statutory
right. It is a new or independent right granted by the statute,
RULING: and not simply a pre-existing right regulated by the
Section 2. The rights granted by this Decree shall, from the statute. Being a statutory grant, the rights are only such as the
moment of creation, subsist with respect to any of the statute confers, and may be obtained and enjoyed only with
following classes of works: respect to the subjects and by the persons, and on terms and
conditions specified in the statute.
(A) Books, including composite and cyclopedic works,
manuscripts, directories, and gazetteers; Since . . . copyright in published works is purely a statutory
(B) Periodicals, including pamphlets and newspapers; creation, a copyright may be obtained only for a work falling
(C) Lectures, sermons, addresses, dissertations prepared for within the statutory enumeration or description.
oral delivery;
(D) Letters; Regardless of the historical viewpoint, it is authoritatively
(E) Dramatic or dramatico-musical compositions; settled in the United States that there is no copyright
choreographic works and entertainments in dumb shows, the except that which is both created and secured by act of
acting form of which is fixed in writing or otherwise; Congress.
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, Sec. 175. Unprotected Subject Matter. - Notwithstanding the
engraving, lithography, and other works of art; models or provisions of Sections 172 and 173, no protection shall extend,
designs for works of art; under this law, to any idea, procedure, system, method or
(H) Reproductions of a work of art; operation, concept, principle, discovery or mere data as such,
(I) Original ornamental designs or models for articles of even if they are expressed, explained, illustrated or embodied
manufacture, whether or not patentable, and other works of in a work; news of the day and other miscellaneous facts having
applied art; the character of mere items of press information; or any official
(J) Maps, plans, sketches, and charts; text of a legislative, administrative or legal nature, as well as
(K) Drawings or plastic works of a scientific or technical any official translation thereof.
character;
(L) Photographic works and works produced by a process Similarly, RA 8293, the Intellectual Property Code of the
analogous to photography; lantern slides; Philippines provides that format or mechanics of a television
(M) Cinematographic works and works produced by a process show is not included in the list of the protected work by the
analogous to cinematography or any process for making audio- copyright law of the Philippines.
visual recordings;
111
PD 49 enumerates the works subject to copyright protection As aptly observed by respondent Secretary of Justice: A
which refers to finished works and not on concepts. It does not television show includes more than mere words can describe
extend to an idea, procedure, process, system, method or because it involves a whole spectrum of visuals and effects,
operation, concept, principles or discovery regardless of the video and audio, such that no similarity or dissimilarity may be
form to which it is described, explained, and illustrated or found by merely describing the general copyright/format of
embodied in the work. both dating game shows.
Comment: So this case is always cited in IP cases although

not a doctrine because this was not decided en banc. Please
Habana vs. Robles G.R. No. 131522 July 19, 1999
take not of this case.
From Cutie Notes: FACTS:

If you look at Section 177, it talks about the exclusive rights of
the owner of the copyright. Let’s talk about number one: HABANA ET.AL ROBLES
Reproduction of the work or substantial portion of the work. COLLEGE ENGLISH DEVELOPING ENGLISH
FOR TODAY (CET) PROFICIENCY (DEP))
We have two shows here: “Rhoda and Me” and “It’s A Date!”.
If this copy cat show reproduced Rhoha and Me for a
substantial part thereof, that is infringement of copyright. But
if this copy cat show has just its own show having different
name with a similar concept, a dating reality show, so that is
not infringement. It is not infringement if you have more or less
the same concept or idea.
You have to be able to distinguish between what constitutes

infringement of copyright and what is not because Section 175
provides that: any idea, procedure, system, method or
operation, concept, principle, discovery or mere data as such,
even if they are expressed, explained, illustrated or embodied
in a work are not protected by copyright.
From the FT of the case: The format or mechanics of a

HABANA ET. AL vs. ROBLES
television show is not included in the list of protected works in
INFRINGEMENT SUIT (1988)
§2 of P.D. No. 49. For this reason, the protection afforded by
the law cannot be extended to cover them.
Habana et. al Robles
Copyright, in the strict sense of the term, is purely a statutory
right. It is a new or independent right granted by the statute, 1. The textual contents, 1. The similarities may due
and not simply a preexisting right regulated by the statute. style of presentation and to their similar
Being a statutory grant, the rights are only such as the statute illustrations of CET were backgrounds as English
confers, and may be obtained and enjoyed only with respect to literally reproduced in grammar teachers;
the subjects and by the persons and on terms and conditions DEP without Habana et.
specified in the statute. al’s permission; and 2. The similarities may be
due to the authors’
Since copyright in published works is purely a statutory 2. Robles's act of exercise of the right to
creation, a copyright may be obtained only for a work falling reproducing particular fair use of copyrighted
within the statutory enumeration or description. portions of CET’s materials as guides; and
contents without their
P.D. No. 49, §2, in enumerating what are subject to copyright, consent diminished the 3. Some of the topics or
refers to finished works and not to concepts. The copyright value of their own book materials appearing
does not extend to an idea, procedure, process, system, which were claimed to
method of operation, concept, principle, or discovery, have been plagiarized
regardless of the form in which it is described, explained, have appeared in earlier
illustrated, or embodied in such work. books and as such, are
not subject to copyright.
Mere description by words of the general format of the two
dating game shows is insufficient; the presentation of the ISSUE: Whether or not Robles’s acts constituted copyright
master videotape in evidence was indispensable to the infringement? YES
determination of the existence of probable cause.
112
RULING:
on the juridical precise marking of
APPLICABLE PROVISIONS:
determination of the boundary of a
Sec.177. Copy or Economic rights. Subject to the provisions of
perplexing complex
chapter VIII, copyright or economic rights shall consist of the
questions, or the government. It is
exclusive right to carry out, authorize or prevent the following
precise marking simple peace;
acts:
of the boundary sought in its natural
177.1 Reproduction of the work or substantial portion of the
of a complex course, and in its
work;
government. It is ordinary haunts. It
simple peace; is peace sought in
IN RELATION TO:
sought in its the spirit of peace,
Sec. 184.1 Limitations on copyright.-- Notwithstanding the
natural course, and laid in
provisions of Chapter V, the following acts shall not constitute
and in its principles purely
infringement of copyright:
ordinary haunts. pacific.
xxx
It is peace
(c) The making of quotations from a published work if they are
sought in the
compatible with fair use and only to the extent justified for the
spirit of peace,
purpose, including quotations from newspaper articles and
and laid in
periodicals in the form of press summaries: Provided, That the
principles purely
source and the name of the author, if appearing on the work,
pacific.”
are mentioned.
--- Edmund
(e) The inclusion of a work in a publication, broadcast, or other
Burke, Speech
communication to the public, sound recording of film, if such
on Criticism
inclusion is made by way of illustration for teaching purposes
and is compatible with fair use: Provided, That the source and
the name of the author, if appearing in the work is mentioned; While it may be true that they came from similar backgrounds,
the similarity and identity of the contents cannot be excused by
NOTABLE EXAMPLES a claim of mere technicality regarding subject matter.
Robles’s act of lifting substantial portions of discussions and

Point of Page 404 of Page 73 of DEP
examples from CET and her failure to acknowledge Habana
Similarity CET
et.al and their book as sources was an infringement of the
latter’s copyright.
Examples of He died on He died on Monday,
items in Monday, April April 25, 1975.
When is there substantial reproduction of a book?
dates and 15, 1975. Miss Reyes’s
It does not necessarily require that the entire copyrighted work,
addresses Miss Reyes lives address is 214 Taft
or even a large portion of it, be copied. If so much is taken that
in 214 Taft Avenue Manila
the value of the original work is substantially diminished, there
Avenue, Manila
is an infringement of copyright and to an injurious extent, the
Page 250 of CET Page 100 of DEP work is appropriated.
Example on “The proposition The proposition is In cases of infringement, copying alone is not what is
parallelism is peace. Not peace. Not peace prohibited. The copying must produce an injurious effect. Here,
or repetition peace through through the the injury consists in that Robles lifted from Habana et.al’s book
of sentence the medium of medium of war; not materials that were the result of the latter’s research work and
Structures war; not peace peace to be hunted compilation and misrepresented them as her own. She
to be hunted through the circulated the book DEP for commercial use and did not
through the labyrinth of intricate acknowledge the latter as her source.
labyrinth of and endless
intricate and negotiations; not The least that Robles could have done was to acknowledge
endless peace to arise out petitioners Habana et. al. as the source of the portions of DEP.
negotiations; not of universal discord, The final product of an authors toil is her book. To allow
peace to arise fomented from another to copy the book without appropriate acknowledgment
out of universal principle, in all parts is injury enough.
discord, of the empire; not
fomented from peace to depend on As to the contention that some of the portions alleged to be
principle, in all the juridical plagiarized appeared in earlier foreign books and as such were
parts of the determination of not subject to copyright:
empire; not perplexing
peace to depend questions, or the Sec. 184.1
113
(c) The making of quotations from a published work if they are (e) The inclusion of a work in a publication, broadcast, or other
compatible with fair use and only to the extent justified for the communication to the public, sound recording or film, if
purpose, including quotations from newspaper articles and such inclusion is made by way of illustration for teaching
periodicals in the form of press summaries: Provided, That the purposes and is compatible with fair use: Provided, That the
source and the name of the author, if appearing on the work, source and of the name of the author, if appearing in the work,
are mentioned. are mentioned;
A copy of a piracy is an infringement of the original, and it is Comment: When the court renders a decision on infringement
no defense that the pirate, in such cases, did not know whether it has to look at all the intricate details. Like in that Drilon case.
or not he was infringing any copyright; he at least knew that It’s about a concept. This one is about fair use. And if you read
what he was copying was not his, and he copied at his peril. the book of Salao. There is a discussion here on plagiarism.
How was it distinguished from copyright infringement? It says
ON THE CONTENTION OF FAIR USE: here that Plagiarism is the practice of claiming or implying
original authorship of (or incorporating material from) someone
else's written or creative work, in whole or in part, into one's
ROBLES HABANA ET.AL
own without adequate acknowledgement.
The similarities may be Robles abused a
due to the authors’ writer’s right to fair So without citing the person who said or wrote those words,
exercise of the right use of copyrighted that is already plagiarism.
to fair use of materials.
copyrighted materials So aside from infringement, there is also plagiarism.
as guides; and
So it is different from copyright infringement. While both terms
may apply to a particular act, they are different transgressions.
Sec. 185. Fair Use of a Copyrighted Work. - Copyright infringement is a violation of the rights of a copyright
185.1. The fair use of a copyrighted work for criticism, holder, when material protected by copyright is used without
comment, news reporting, teaching including multiple copies consent. On the other hand, plagiarism is concerned with the
for classroom use, scholarship, research, and similar purposes unearned increment to the plagiarizing author's reputation that
is not an infringement of copyright. Decompilation, which is is achieved through false claims of authorship.
understood here to be the reproduction of the code and
translation of the forms of the computer program to achieve This word plagiarism or plagiarized, we don’t have this under
the inter-operability of an independently created computer our laws. Did you see what the source of Salao was? It was
program with other programs may also constitute fair use. In Wikipedia. So it seems like we don’t have it here in the
determining whether the use made of a work in any particular Philippines. Because if we have a law in plagiarism, then it could
case is fair use, the factors to be considered shall include: have been cited as the source.
(a) The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit education Bayanihan Music vs. BMG
purposes; G.R. No. 166337 March 7, 2005
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and Jose Mari Chan entered into separate contracts with Bayanihan
(d) The effect of the use upon the potential market for or value Music Philippines, Inc. whereunder the former assigned to the
of the copyrighted work. latter all his rights, interests and participation over his musical
185.2 The fact that a work is unpublished shall not by itself composition "Can We Just Stop and Talk A While" and "Afraid
bar a finding of fair use if such finding is made upon For Love To Fade".
consideration of all the above factors.
The first contract was entered into in 1973 and the second
FAIR USE vis-à-vis COPYRIGHT INFRINGEMENT IN THE contract was entered into 1976. On the strength of these
INSTANT CASE: contracts Bayanihan Music was able to obtain copyright
registration for each of the two musical compositions. However
Sec. 184. Limitations on Copyright: years later, Jose Mari Chan, without the knowledge and
consent of Bayanihan authorized BMG Records (Pilipinas)
(b) The making of quotations from a published work if they are [BMG] to record and distribute the aforementioned musical
compatible with fair use and only to the extent justified for the compositions in a then recently released album of singer Lea
purpose, including quotations from newspaper articles and Salonga. Thus Bayanihan Music filed a complaint for copyright
periodicals in the form of press summaries: Provided, That the infringement and temporary restraining order and writ of
source and the name of the author, if appearing on the work, preliminary injunction against Jose Mari Chan and BMG Records
are mentioned; (Pilipinas). In his answer, Jose Mari Chan alleged that
Bayanihan Music was remissed on its duty under the contract
for it failed to effectively advertise his musical compositions for
114
almost twenty (20) years, hence, he caused the rescission of all his rights, interests and participation over the two songs to
said contracts in 1997. BMG. Jose Marie Chan still used the songs and produced them
to be recorded by Lea Salonga so BMG sued him for
ISSUE: WON the complaint for copyright infringement will infringement.
prosper. NO
How can the author infringe his own copyright noh? So the SC
RULING: said that aside from the fact that the contract has expired, the
copyright really belongs to Jose Marie Chan.
Unquestionably, Chan, being undeniably the composer and Section 172.2 was emphasized here: Works are protected by
author of the lyrics of the two (2) songs, is protected by the the sole fact of their creation, irrespective of their mode or
mere fact alone that he is the creator thereof, conformably with form of expression, as well as of their content, quality and
Republic Act No. 8293, otherwise known as the Intellectual purpose.
Property Code, Section 172.2 of which reads:
From the FT of the case:
172.2. Works are protected by the sole fact of their creation, Unquestionably, respondent Chan, being undeniably the
irrespective of their mode or form of expression, as well as of composer and author of the lyrics of the two (2) songs, is
their content, quality and purpose. protected by the mere fact alone that he is the creator thereof,
conformably with Republic Act No. 8293, otherwise known as
7. It is also hereby agreed to by the parties herein that in the the Intellectual Property Code (Section 172.2).
event the PUBLISHER fails to use in any manner whatsoever
within two (2) years any of the compositions covered by this An examination of petitioner's verified complaint in light of the
contract, then such composition may be released in favor of two (2) contracts sued upon and the evidence it adduced
the WRITER and excluded from this contract and the during the hearing on the application for preliminary injunction,
PUBLISHER shall execute the necessary release in writing in yields not the existence of the requisite right protectable by the
favor of the WRITER upon request of the WRITER; provisional relief but rather a lingering doubt on whether there
is or there is no such right.
xxx xxx xxx
It is noted that Chan revoked and terminated said contracts,
9. This contract may be renewed for a period of two-and-one- along with others, on July 30, 1997, or almost two years before
half (2 1/2) years at the option of the PUBLISHER. Renewal petitioner Bayanihan wrote its sort of complaint/demand letter
may be made by the PUBLISHER by advising the WRITER of dated December 7, 1999 regarding the recent "use/recording
such renewal in writing at least five (5) days before the of the songs 'Can We Just Stop and Talk A While' and 'Afraid
expiration of this contract. for Love to Fade,'" or almost three (3) years before petitioner
filed its complaint on August 8, 2000, therein praying, inter alia,
It would thus appear that the two (2) contracts expired on for injunctive relief. By then, it would appear that petitioner had
October 1, 1975 and March 11, 1978, respectively, there being no more right that is protectable by injunction.
neither an allegation, much less proof, that petitioner
Bayanihan ever made use of the compositions within the two- BAYANIHAN v. BMG
year period agreed upon by the parties. GR 166337 (2005)
Chan revoked and terminated said contracts, along with others,
on July 30, 1997, or almost two years before petitioner Continued:
Bayanihan wrote its sort of complaint/demand letter dated
December 7, 1999 regarding the recent "use/recording of the The Court took notice of these two stipulations in the
songs 'Can We Just Stop and Talk A While' and 'Afraid for Love contracts:
to Fade,'" or almost three (3) years before petitioner filed its
complaint on August 8, 2000, therein praying, inter alia, for 7. It is also hereby agreed to by the parties herein that in
injunctive relief. By then, it would appear that petitioner had the event the PUBLISHER [petitioner herein] fails to use in any
no more right that is protectable by injunction. manner whatsoever within two (2) years any of the
compositions covered by this contract, then such composition
From Cutie Notes: may be released in favor of the WRITER and excluded from this
We are talking here about copyright infringement. BMG wanted contract and the PUBLISHER shall execute the necessary
all these things from Jose Marie Chan. release in writing in favor of the WRITER upon request of the
WRITER;
The issue here is WON the complaint should prosper.
xxx xxx xxx
The SC held no. Take note that just like any other intellectual
property rights, copyright can be transferred, assigned or 9. This contract may be renewed for a period of two-and-
licensed by the owner. In this case, Jose Marie Chan assigned one-half (2 1/2) years at the option of the PUBLISHER. Renewal
may be made by the PUBLISHER by advising the WRITER of
115
such renewal in writing at least five (5) days before the NBI-MICROSOFT v. HWANG, et. al.
expiration of this contract. (JUNE 21, 2005)
It would thus appear that the two (2) contracts expired on

October 1, 1975 and March 11, 1978, respectively, there being Facts: Microsoft and Beltron entered into an Agreement
neither an allegation, much less proof, that petitioner wherein, Microsoft authorized Beltron to:
Bayanihan ever made use of the compositions within the two-
year period agreed upon by the parties. 1. Reproduce and install one (1) copy of MS software
(computer program) on each Beltron Computer
Anent the copyrights obtained by petitioner on the basis of the
selfsame two (2) contracts, suffice it to say 'that such purported 2. To distribute directly or indirectly and license copies
copyrights are not presumed to subsist in accordance with of the product acquired from “Authorized Replicator or
Section 218[a] and [b], of the Intellectual Property Code, authorized Distributor in object code form to end
because respondent Chan had put in issue the existence users.
thereof.
However, this agreement was terminated by Microsoft due to
It is noted that Chan revoked and terminated said contracts, the non-payment of royalties by Beltron. Subsequently,
along with others, on July 30, 1997, or almost two years before Microsoft learned that Beltron was illegally copying and selling
petitioner Bayanihan wrote its sort of complaint/demand letter their software. So it sought assistance from the NBI. NBI agents
dated December 7, 1999 regarding the recent "use/recording then went to Taiwan Machinery and posed as “representatives
of the songs 'Can We Just Stop and Talk A While' and 'Afraid of a computer shop”.
for Love to Fade,'" or almost three (3) years before petitioner
filed its complaint on August 8, 2000, therein praying, inter alia, The NBI agents bought:
for injunctive relief. By then, it would appear that petitioner had
no more right that is protectable by injunction. 1. CPU’s with “pre-installed” MS Software
Comment: As the composer of the two songs who assigned 2. 12 CD installers containing MS software with Non-MS
his rights to Bayanihan, did he lose his copyright over the software
songs? The case never directly answered the question,
however, Sec. 172.2 of the Intellectual Property Code which No Cert. of Authenticity, end-user license agreements, manuals
states: “Works are protected by the sole fact of their creation, accommodated the sale.
irrespective of their mode or form of expression, as well as of
their content, quality and purpose.” The NBI, pursuant to a Search Warrant, seized and confiscated
2,831 pieces of CD-ROMs.
Despite the fact that some other entity registered with the
National Library, the creator is still protected unless it can be Microsoft then filed a complaint before the Department of
seen in his contract that he waived his right over the particular Justice (DOJ) against Beltron and Taiwan Machinery for
creation and that he will no longer exercise his rights over the copyright infringement (Sec. 5(A), Sec. 29 of PD 49) alleging
same. that Beltron and Taiwan Machinery illegally copied and sold MS
software. The DOJ dismissed the complaint.
The fact that he assigned his rights means that he is merely
sharing his rights with Bayanihan. As the creator of the two Beltron’s arguments:
songs, he still has the right to copy and to allow somebody else
to exploit the songs. 1. The seized and confiscated items were bought from a
Microsoft-licensee Dealer in Singapore
If the contract did not stipulate as to the removal of the 2. That they are not the “source” of the CPU’s with pre-
creator’s rights, he still has his copyright over the songs. installed MS software
3. The complaint should be dismissed.
Comment: This is an application of Section 3. NBA is a foreign 4. The case was only filed to pressure Beltron into paying
corporation and it is suing Filipinos in the name of Sasot who the royalties.
are manufacturing products who are similar to the NBA logo 5. “No copyright infringement because Beltron and
and other products. So, according to the Sasots they have no Taiwan Machineries were not manufacturers of the
right to sue. But we have Section 3, as long as NBA as a Microsoft Software and were selling products as
national or has business in the country. genuine MS Software because they bought it from a
licensee”.
So if the US is a signatory to the convention and gives reciprocal 6. Microsoft’s counsel did not disclose the fact that the
rights – then NBA as foreign entity can sue to pursue rights it items seized were “counterfeit. “
rights of intellectual property. 7. The term used was that “the items seized were
unauthorized”.
116
8. Hence, the real issue is whether Microsoft validly

terminated the Agreement between the parties. The Agreement provided:
Issue: Whether or not there was copyright infringement? –  “reproduction and installation of no more than one
Yes. copy of MS software on each Beltron Computer;”
 ” the distribution and licensing of copies of MS Product
Held: Section 5 of P.D. 49 (now R.A. 8293, Sec. 177) as reproduced above and/or acquired from Authorized
enumerates the Economic Rights vested exclusively on the Replicator or Authorized Distributor in object code
copyright owner (Microsoft). from End Users
Copyright infringement is not merely the “unauthorized Authorized Repicator means “a third party approved by
manufacturing” of intellectual works. Microsoft which may reproduce and manufacture MS products
for Beltron;
Copyright Infringement is the unauthorized performance of the
acts enumerated under Sec. 5. Authorized Distributor means “a third party approved by
Microsoft from which Beltron may purchase it’s product.”
Section 177. Copyright or Economic Rights. – Subject to the
provisions of Chapter VIII, copyright or economic rights shall But they did not allege this.
consist of the exclusive right to carry out, authorize or prevent
the following acts: Hence, the only reasonable conclusion is that Beltron mass-
produced the CD-Roms without Microsoft’s prior authorization.
177.1. Reproduction of the work or substantial portion of the
work; On the agreement:
xxx
177.3. The first public distribution of the original and each copy It was immaterial. The copying of genuine MS software to CD’s
of the work by sale or other forms of transfer of ownership; and their distribution is illegal or is copyright infringement even
xxx if it is done by a MS licensee.
Hence, without obtaining the copyright owner’s prior consent, Hence, Beltron and Taiwan were liable for copyright
the performance of any of the acts under Sec. 5 renders himself infringement.
liable, criminally and civilly, for copyright infringement.
Sec. 189. Reproduction of Computer Program. –
A copyright owner is vested with the exclusive right to copy,
distribute, multiply and sell his intellectual works. 189.1. Notwithstanding the provisions of Section 177, the
reproduction in one (1) back-up copy or adaptation of a
computer program shall be permitted, without the
authorization of the author of, or other owner of copyright in,
On the part of the copyright owner: a computer program, by the lawful owner of that computer
program: Provided, That the copy or adaptation is necessary
Microsoft does not have to await a prior “resolution from the for:
proper court of (sic) whether or not the Agreement is still
binding between the parties.” (a) The use of the computer program in conjunction with a
computer for the purpose, and to the extent, for which the
Microsoft can neither be expected nor compelled to wait until computer program has been obtained; and
Beltron decides to sue before Microsoft can seek remedies for
violation of Intellectual Property rights (b) Archival purposes, and, for the replacement of the lawfully
owned copy of the computer program in the event that the
On the counterfeit items: lawfully obtained copy of the computer program is lost,
destroyed or rendered unusable.
The CD’s and CPU’s bought by the NBI agents were counterfeit
per se. Sec. 190. Importation for Personal Purposes. –
a. Microsoft does not produce such CD “installers”. 190.1. Notwithstanding the provision of Subsection 177.6, but
b. The illegality is shown by the absence of the “MS end- subject to the limitation under the Subsection 185.2, the
user license agreements, user’s manuals, Cert. of importation of a copy of a work by an individual for his personal
authenticity”; These are standard features of purposes shall be permitted without the authorization of the
authentic MS products. author of, or other owner of copyright in, the work under the
following circumstances:
On the confiscated items:
117
(a) When copies of the work are not available in the Philippines notice of recording and registration of the work and is not a
and: conclusive proof of copyright ownership as provided in Sec. 2,
xxx Rule 7 of the Copyrights Safeguards and Regulations in relation
to Sec. 228 of the IPC on Public Records.
Comment: In this day and age, there so many things
Section 2. Effects of registration and Deposit of Work. The
protected by copyright. Computer programs are not patentable
registration and deposit of the work is purely for recording the
but they are copyrightable.
date of registration and deposit of the work and shall not be
conclusive as to copyright ownership or the term of the
copyrights or the rights of the copyright owner,
MANLY SPORTSWEAR v. DADODETTE ENTERPRISES including neighboring rights.
G.R. No. 165306 (2005)
At most, the certificates of registration and deposit issued
Facts: On March 17, 2003, Regional Trial issued a search by the National Library and the Supreme Court Library serve
warrant against Dadodette Enterprises and/or Hermes Sports merely as a notice of recording and registration of the work but
Center after finding reasonable grounds that they violated do not confer any right or title upon the registered copyright
Sections 172 and 217 of Republic Act (RA) No. 8293 or the owner or automatically put his work under the protective
Intellectual Property Code mantle of the copyright law. It is not a conclusive proof of
copyright ownership. As it is, non-registration and deposit
Dadodette then moved to quash and annul the search warrant of the work within the prescribed period only makes the
claiming that the sporting goods manufactured by and/or copyright owner liable to pay a fine.
registered in the name MANLY are ordinary hence, not among
the classes protected under Sec. 172 of RA 8293. Comment: Only those enumerated under Sec. 172 can be
protected by copyright.
On June 10, 2003 the trial court granted the motion to quash
and declared the search warrant issued as null and void based March 28, 2019| Transcribed by: Sarah Sosoban & Reginald
on its finding that: Matt Santiago
1. The copyrighted products of MANLY do not appear to

be original creations SANRIO VS EDGAR LIM
2. The products were being manufactured and (2008)
distributed by different companies locally and abroad
under various brands Facts: In this case, Sanrio is a Japanese corporation who owns
that copyright of various animated characters such as “Hello
Therefore, unqualified for protection under Section 172 of RA Kitty”, “Little Twin Stars”, “My Melody”, “Tuxedo Sam” and
8293. “Zashikibuta” among others. While it is not engaged in business
here in the Philippines, its products are sold locally by it
Moreover, MANLYs certificates of registrations were issued exclusive distributor, Gift Gate Incorporated (GGI).
only in 2002, whereas there were certificates of registrations
for the same sports articles which were issued earlier than As such exclusive distributor, GGI entered into licensing
MANLYs, thus further negating the claim that its copyrighted agreements with JC Lucas Creative Products, Inc., Paper Line
products were original creations. Graphics, Inc., and Melawares Manufacturing Corporation to
manufacture certain products for the local market.
Issue: Whether or not the copyrighted products of MANLY are
subject to the protection of RA 8293. – No. A search warrant was issued against Edgar Lim alleged to be
selling imitations of Sanrio’s products through its Orignamura
Held: The copyright certificates issued in favor of MANLY Trading in Tutuban Center, Manila. As a result thereof, they
constitute a prima facie evidence of validity and ownership. were able to seize various Sanrio products.
However, presumption of validity is not created when a
sufficient proof or evidence exist that may cast a doubt Thereafter, Sanrio filed a complaint for copyright infringement
on the copyright validity. with the Task-Force on Anti-Intellectual Property Piracy (TAPP)
of the Department of Justice for violation of Section 217 of the
In the case at bar, validity and originality will not be presumed Intellectual Property Code (IPC)
since the copyrighted products of MANLY are not original
creations considering that these products are readily available Lim asserted that he bought his merchandise from legitimate
in the market under various brands. sources, as shown by official receipts issued by JC Lucas
Creative Products, Inc., Paper Line Graphics, Inc. and
Moreover, no copyright accrues in favor of MANLY despite the Melawares Manufacturing Corporation, Sanrio’s authorized
issuance of the copyright certificate this purely serves as a manufacturers.
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Issue: WON Lim was guilty of selling counterfeit or fake System for the May 10, 2010 Synchronized National and Local
products Elections.
Ruling: NO. To be criminally liable for violation of Section 2010: Option to Purchase – COMELEC was given until
217.3 of the IPC, the following requisites must be present: December 31, 2010 within which to exercise the option but
opted not to exercise the same except for 920 units of PCOS
 possession of the infringing copy; and
machines.
 knowledge or suspicion that the copy is an
infringement of the genuine article. 2012: Extension Agreement – Giving the COMELEC until March
Sanrio failed to prove that Lim knew that the merchandise he 31, 2012 within which to exercise the option to purchase.
sold was counterfeit. Lim, on the other hand, was able to show
that he obtained these goods from legitimate sources. 2012: Deed of Sale – COMELEC validly exercised the option and
eventually entered into a contract of sale of subject goods
On September 25, 2002, the TAPP found that evidence on
record would show that Lim bought his merchandise from 2012: The Petition – Several Entities assail the validity and
legitimate sources, as shown by official receipts issued by JC constitutionality of the Deed of Sake and Extension Agreement.
Lucas Creative Products, Inc., Paper Line Graphics, Inc. and
Melawares Manufacturing Corporation. In fact, in her letter The AES Contract entered into was a Contract of Lease with
dated May 23, 2002, Ms. Ma. Angela S. Garcia certified that JC Option to Purchase (OTP) the goods:
Lucas Creative Products, Inc., Paper Line Graphics, Inc. and 1. Precinct Count Optical Scan (PCOS)
2. Software
Melawares Manufacturing Corporation are authorized to
3. Hardware
produce certain Sanrio products. While it appears that some of
the items seized during the search are not among those
The ground for the assailing of the deed of sale is the extension
products which [GGI] authorized these establishments to of the option period and the exercise of the option without
produce, the fact remains that Lim bought these from the competitive public bidding contravene the provisions of The
above cited legitimate sources. Government Procurement Reform Act (RA 9184).
At this juncture, it bears stressing that Lim relied on the
Issue: WON the exercise of the purchase option without the
representations of these manufacturers and distributors that public bidding violates Republic Act No. 9184 (Government
the items they sold were genuine. As such, it is not incumbent Procurement Reform Act)
upon Lim to verify from these sources what items [GGI] only
authorized them to produce. Thus, as far as Lim is concerned, Ruling: NO. The essence of competition in public bidding is that
the items in his possession are not infringing copies of the the bidders are placed on equal footing which means that all
original [Sanrio's] products. qualified bidders have an equal chance of winning the auction
through their bids. Smartmatic-TIM was not granted additional
right that was not previously available to the other bidders.
DISCUSSION: So, it is also possible to copyright drawings,
designs of products like Sanrio products (Hello Kitty, Little Twin The option contract in this case was already a part of the
Stars). There is an exclusive distributor, in this case it was Gift original contract and not given only after Smartmatic-TIM
Gate, and Gift Gate was given the drawings of the products and emerged as winner. The OTP was actually a requirement by the
then the drawings were given to the manufacturers. So there Comelec when the contract of lease was bidded upon. To be
was a licensing agreement entered into with the sure, the Extension Agreement does not contain a provision
manufacturers. Unfortunately, itong mga manufacturers favorable to Smartmatic-TIM not previously made available to
they’re supposed to supply only to Gift Gate but they supplied the other bidders.
to others and this is to Orignamura Trading. So, what they were
Separate Concurring Opinion of Justice Velasco
selling were not counterfeit or infringing copies but that of
actual products form the licensed manufacturer. So, this will
The Deed of Sale is an alternative procurement that does not
not fall under Section 217 of
require a competitive public bidding.
Section 50. Direct Contracting. Direct Contracting may

be resorted to only in any of the following conditions:
ARCHBISHOP CAPALLA VS COMELEC
(2012)
a. Procurement of Goods of proprietary nature, which
can be obtained only from the proprietary source,
Facts: i.e., when patents, trade secrets and copyrights
2009: AES Contract – COMELEC and Smartmatic-TIM entered prohibit others from manufacturing the same items. (RA 9184)
into a Contract for the Provision of an Automated Election
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SECTION 50 (RA 9184) SECTION 172 (IPC) audio-video coverage of and broadcasted the arrival of Angelo
 The Deed of Sale Section 172. Literary and dela Cruz at the Ninoy Aquino International Airport and the
involves the Artistic Works – subsequent press conference.
procurement of
proprietary goods. 172.1 Literary and artistic ABS-CBN allowed Reuters to air the footages it had taken.
 It is exempt from works, hereinafter referred Under this agreement, any of the footages it took would be for
competitive bidding to as “works”, are original the "use of Reuter’s international subscribers only, and
as it involves goods intellectual creation in the shall be considered and treated by Reuters under
of “proprietary literary and artistic domain ‘embargo’ against use by other subscribers in the
nature”. protected from the moment Philippines. No other Philippine subscriber of Reuters
 Goods are of their creation and shall would be allowed to use ABS-CBN footage without ABS-
considered of include in particular: CBN’s consent.
“proprietary
nature” when they (n) Computer programs; GMA-7
are owned by a  Where FELIPE GOZON, GILBERTO R. DUAVIT,
person who has a 172.2 Works are protected JR., MARISSA L. FLORES, JESSICA A. SOHO,
protectable interest by the sole fact of their GRACE DELA PENA-REYES, JOHN OLIVER T.
in them or an creation, irrespective of their MANALASTAS are connected
interest protected mode or form of expression,  It also conducted its own coverage of Dela Cruz’s
by the intellectual as well as of their content, arrival
property laws. quality and purpose.  It subscribes to both Reuters and Cable News
Network (CNN).
ARGUMENT: Sec. 50(a) of RA 9184 cannot apply because the It received a live video feed of the coverage of Angelo dela
Election Management System (EMS) and the PCOS firmware Cruz’s arrival from Reuters which it immediately carried to its
are "mere component(s) of the entire Automated Election live news feed in its program "Flash Report," together with its
System" that also includes the PCOS hardware, canvassing live broadcast.
system and servers contained in the Deed of Sale.
GMA-7 alleged that it did not receive any notice or was not
This proprietary software is a bundled software "that is sold aware that Reuters was airing footages of ABS-CBN. GMA-7’s
together with hardware, other software, or services at a single news control room staff saw neither the "No Access Philippines"
price.“ notice nor a notice that the video feed was under embargo in
favor of ABS-CBN.
More than the PCOS machines and the other hardware, it is
these software that form the core and integral part of the Deed ABS-CBN filed a Complaint for Copyright Infringement under
of Sale. Without these applications, the PCOS hardware, the Sections 177 and 211 of the Intellectual Property Code against
canvassing system and the servers are but mere scraps of Gozon et al.
metals. EMS serves as the brain that commands all other
components in the entire Automated Election System. CONTENTION OF GMA: ABS-CBN’s news footage of Angelo dela
Cruz’s arrival is NOT COPYRIGHTABLE OR SUBJECT TO
It has been manufactured, configured, and customized by PROTECTION since there is no INGENUITY or INVENTIVENESS
Smartmatic-TIM to fit the needs of the Philippine elections, added. GMA also considered A SHORT EXCERPT OF AN
recognized as intellectual proprietary product of Smartmatic- EVENT’S "NEWS" FOOTAGE AND IS COVERED BY FAIR USE,
TIM. Therefore, procurement of which does not require the hence, this negates infringement. Lastly, it iInvokes GOOD
conduct of competitive bidding under Section 50(a) of RA 9184. FAITH.
DISCUSSION: So, take note of the ruling here wherein the CONTENTION OF ABS-CBN: The NEWS FOOTAGES IS AN
Supreme Court said that those considered to be intellectual INTELLECTUAL CREATION which are copyrightable, hence,
property, no need to go through bidding. If you’re only talking subject to copyright and the prohibited use of copyrighted
about the machine without the software, kailangan mag material is punishable under the Intellectual Property Code.
bidding. Pero anything that involves intellectual property, in this Further, the Angelo dela Cruz footage DOES NOT FALL UNDER
case computer programs, are exempt. THE RULE ON SECTION 212.4 of the Intellectual Property Code
on FAIR USE OF THE BROADCAST.
Issue #1: WON ABS-CBN’s news footage is copyrightable

ABS-CBN CORPORATION VS FELIPE GOZON
(2015)
Ruling: YES. The Intellectual Property Code is clear about the
rights afforded to authors of various kinds of work. Under the
Facts: The controversy arose from GMA-7’s news coverage on Code, "works are protected by the sole fact of their creation,
the homecoming of Filipino overseas worker and hostage victim irrespective of their mode or form of expression, as well as of
Angelo dela Cruz on July 22, 2004. ABS-CBN conducted live
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their content, quality and purpose." These include contained in the reports. Copyright protects the manner of
"[a]udiovisual works and cinematographic works and works expression of news reports, "the particular form or
produced by a process analogous to cinematography or any collocation of words in which the writer has communicated
process for making audiovisual recordings.“ it.“ Such protection extends to electronic news reports as
well as written reports.
Contrary to the old copyright law, the Intellectual Property
Code does not require registration of the work to fully recover The idea/expression dichotomy is a complex matter if one
in an infringement suit. Nevertheless, both copyright laws is trying to determin whether a certain material is a copy of
provide that copyright for a work is acquired by an intellectual another.
creator from the moment of creation.
However, in this case, GMA-7 admitted that the
It is true that under Section 175 of the Intellectual Property material under review — which is the subject of the controversy
Code, "news of the day and other miscellaneous facts having — is an exact copy of the original. GMA-7 did not subject ABS-
the character of mere items of press information" are CBN’s footage to any editing of their own. The news footage
considered unprotected subject matter. However, the Code did not undergo any transformation where there is a need to
does not state that expression of the news of the day, track elements of the original.
particularly when it underwent a creative process, is not
entitled to protection. Broadcasting organizations are entitled to several rights and to
the protection of these rights under the Intellectual Property
IDEA EXPRESSION
 A form, the look or  It is concrete ideas Code. GMA-7’s argument that the subject news footage is not
appearance of a that are generally copyrightable is erroneous. The Court of Appeals, in its assailed
thing as opposed referred to as Decision, correctly recognized the existence of ABS-CBN’s
to its reality expression copyright over the news footage:
 From the Greek  “No one infringes,
word “idein”: to unless he descends Surely, ABS-CBN has a copyright of its news
see. so far into what is coverage. Seemingly, for airing said video feed,
 No legal definition concrete as to GMA is liable under the provisions of the
of “idea” in this invade…’Expression.
Intellectual Property Code, which was enacted
jurisdiction (National Comics,
 Mentioned only Inc. vs Fawcett purposely to protect copyright owners from
once in the Publications, Inc.) infringement.
intellectual  Can be subject of
property code copyright
 Ideas can be News as expressed in a video footage is entitled to copyright
either abstract or protection. Broadcasting organizations have not only copyright
concrete on but also neighboring rights over their broadcasts.
 Cannot be a Copyrightability of a work is different from fair use of a work
subject of for purposes of news reporting.
copyright
Issue #2: WON there was fair use of the broadcast material
News or the event itself is not copyrightable. However, an
Ruling:
event can be captured and presented in a specific medium. As
DEFINITION OF FAIR USE: Fair use is a privilege to use the
recognized by this court, television "involves a whole spectrum
copyrighted material in a reasonable manner without the
of visuals and effects, video and audio." News coverage in
consent of the copyright owner or as copying the theme or
television involves framing shots, using images, graphics, and
ideas rather than their expression.
sound effects. It involves creative process and originality.
Television news footage is an expression of the news.
Fair use is an exception to the copyright owner’s monopoly of
the use of the work to avoid stifling "the very creativity which
NEWS  AN IDEA, CANNOT BE COPYRIGHTED
that law is designed to foster."
NEWS FOOTAGE  AN EXPRESSION; CAN BE
COPYRIGHTED
In determining fair use, it requires application of the four-factor
test. Section 185 of the Intellectual Property Code lists four (4)
JURISPRUDENCE: Pacific & Southern Co. v. Duncan: It is
factors to determine if there was fair use of a copyrighted work:
axiomatic that copyright protection does not extend to
a. The purpose and character of the use, including
news "events" or the facts or ideas which are the subject
whether such use is of a commercial nature or is for
of news reports. But it is equally well-settled that copyright
non-profit educational purposes;
protection does extend to the reports themselves, as
b. The nature of the copyrighted work;
distinguished from the substance of the information
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c. The amount and substantiality of the portion used in Given the insufficiency of available evidence, determination of
relation to the copyrighted work as a whole; and whether the Angelo dela Cruz footage is subject to fair use is
d. The effect of the use upon the potential market for or better left to the trial court where the proceedings are currently
value of the copyrighted work. pending. GMA-7’s rebroadcast of ABS-CBN’s news footage
without the latter’s consent is not an issue. The mere act of
First, the purpose and character of the use of the copyrighted rebroadcasting without authority from the owner of the
material must fall under those listed in Section 185, thus: "criticism, broadcast gives rise to the probability that a crime was
comment, news reporting, teaching including multiple copies for
committed under the Intellectual Property Code.
classroom use, scholarship, research, and similar purposes.” The
purpose and character requirement is important in view of
copyright’s goal to promote creativity and encourage creation of Issue #3: WON GMA-7 can raise the defense of good faith
works. Hence, commercial use of the copyrighted work can be
weighed against fair use. Ruling: NO. Infringement under the Intellectual Property Code
is malum prohibitum. The Intellectual Property Code is a special
The "transformative test" is generally used in reviewing the law. Copyright is a statutory creation.
purpose and character of the usage of the copyrighted work.
This court must look into whether the copy of the work adds Unlike other jurisdictions that require intent for a criminal
"new expression, meaning or message" to transform it into prosecution of copyright infringement, the Philippines does not
something else. "Metause" can also occur without necessarily statutorily support good faith as a defense.
transforming the copyrighted work used.
In the Philippines, the Intellectual Property Code, as amended,
Second, the nature of the copyrighted work is significant in provides for the prosecution of criminal actions for the following
deciding whether its use was fair. If the nature of the work is violations of intellectual property rights:
more factual than creative, then fair use will be weighed in
favor of the user. Repetition of Infringement of Patent (Section 84);
Utility Model (Section 108); Industrial Design (Section
119); Trademark Infringement (Section 155 in
Third, the amount and substantiality of the portion used is relation to Section 170); Unfair Competition (Section
important to determine whether usage falls under fair use. An 168 in relation to Section 170); False Designations of
exact reproduction of a copyrighted work, compared to a small Origin, False Description or Representation (Section
portion of it, can result in the conclusion that its use is not fair. 169.1 in relation to Section 170); infringement of
There may also be cases where, though the entirety of the copyright, moral rights, performers’ rights, producers’
copyrighted work is used without consent, its purpose rights, and broadcasting rights (Section 177, 193, 203,
determines that the usage is still fair. 208 and 211 in relation to Section 217); and other
The structure and nature of broadcasting as a business requires violations of intellectual property rights as may be
assigned values for each second of broadcast or airtime. In defined by law.
most cases, broadcasting organizations generate revenue The Intellectual Property Code requires strict liability for
through sale of time or timeslots to advertisers, which, in turn, copyright infringement whether for a civil action or a criminal
is based on market share. Hence, the primary reason for prosecution; it does not require mens rea or culpa.
copyrighting newscasts by broadcasters would seem to be to
prevent competing stations from rebroadcasting current news
from the station with the best coverage of a particular news Issue #4: WON GMA-7’s officers and employees can be held
item, thus misappropriating a portion of the market share. liable for infringement under the intellectual property code
since it does not expressly provide direct liability of the
corporate officers
In the case at bar, Whether the alleged five-second footage
may be considered fair use is a matter of defense. The case
involves determination of probable cause at the preliminary Ruling: Section 217 of the Intellectual Property Code states
investigation stage. Raising the defense of fair use does not that "any person" may be found guilty of infringement. It also
automatically mean that no infringement was committed. imposes the penalty of both imprisonment and fine:
The investigating prosecutor has full discretion to evaluate the Section 217. Criminal Penalties. - 217.1. Any person
facts, allegations, and evidence during preliminary infringing any right secured by provisions of Part IV of this Act
investigation. Defenses raised during preliminary investigation or aiding or abetting such infringement shall be guilty of a crime
are subject to further proof and evaluation before the trial punishable by:
court. (a) Imprisonment of one (1) year to three (3) years plus a
fine ranging from Fifty thousand pesos (₱50,000) to
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One hundred fifty thousand pesos (₱150,000) for the

first offense. DISCUSSION: So when there is a presscon, there are several
(b) Imprisonment of three (3) years and one (1) day to six media agencies there. Iba-iba ang angle nila, so they have their
(6) years plus a fine ranging from One hundred fifty own. Ang pwede lang nila i-broadcast is their own. Hindi
thousand pesos (₱150,000) to Five hundred thousand pwedeng kunin yung sa kabila. So, you can see, it’s a different
pesos (₱500,000) for the second offense. angle even though it’s the same thing that they’re recording.
(c) Imprisonment of six (6) years and one (1) day to nine So that is already an expression daw according to the Supreme
(9) years plus a fine ranging from five hundred Court of the new. Therefore, copyrightable. Nobody can
thousand pesos (₱500,000) to One million five hundred rebroadcast that. Who is allowed to rebroadcast? Those who
thousand pesos (₱1,500,000) for the third and are authorized like Reuters. Reuters is allowed to rebroadcast,
subsequent offenses. so na-rebroadcast and meron man tayong cable so merong
(d) In all cases, subsidiary imprisonment in cases of Reuters dito. Napulot ngayon ng GMA from Reuters without
insolvency. knowing na ABS-CBN yun. The thing is, that act alone is a
criminal act under the intellectual property code.so, we already
Corporations have separate and distinct personalities from their know that any news broadcast is copyrightable because it is
officers or directors. This Court has ruled that corporate officers already an expression. It’s not merely an idea.
and/or agents may be held individually liable for a crime
committed under the Intellectual Property Code:
BISHOP PABILLO VS COMELEC
Being corporate officers and/or directors, through whose (2015)
act, default or omission the corporation commits a
crime, may themselves be individually held answerable Facts: In 1997, the COMELEC enacted RA 8436. RA 8436
for the crime. . . . The existence of the corporate entity provides for the use of an Automated Election System (AES) for
does not shield from prosecution the corporate agent the process of voting, counting of voters,
who knowingly and intentionally caused the corporation canvasing/consolidation of returns. As a rule, COMELEC was to
to commit a crime. Thus, they cannot hide behind the procure by purchase, lease or otherwise any supplies,
cloak of the separate corporate personality of the equipment and services through the process of public bidding.
corporation to escape criminal liability. A corporate
officer cannot protect himself behind a corporation The COMELEC en banc, approved the recommendation of the
where he is the actual, present and efficient actor. COMELEC Special Bids and Awards Committee (SBAC)
confirming Smartmatic-Tim as the winning bidder.
However, the criminal liability of a corporation’s officers or
employees stems from their active participation in the Extended Warranty Contract: Consequently, COMELEC
commission of the wrongful act. received from Smartmatic-TIM a proposal letter to extend the
warranty of the PCOS machine for an additional three year;
In the case at bar, Gozon, Duavit, Jr., Flores, and Soho did not  Proposal covered: labor,
have active participation in the commission of the crime preventive maintenance, diagnostics, repair
charged, hence they cannot be held liable. However, the City and replacement of parts from 2014 to 2016.
Prosecutor found Dela Peña-Reyes and Manalastas liable due
to the nature of their work and responsibilities The COMELEC approved Smartmatic-TIM’s PCOS extended
warranty proposal without a public bidding.
Both of them committed acts that promoted infringement of
ABS-CBN’s footage. We note that embargoes are common As a ground for the grant, COMELEC posits that its resort to
occurrences in and between news agencies and/or broadcast Direct Contracting is valid.
organizations. Under its Operations Guide, Reuters has two (2)
types of embargoes: transmission embargo and publication One of the grounds for the grant of the Extended Warranty
embargo. Under ABS-CBN’s service contract with Reuters, Contract through direct contracting is that the--the goods
Reuters will embargo any content contributed by ABS-CBN from procured are of proprietary nature, which can be obtained only
other broadcast subscribers within the same geographical from proprietary source of the PCOS licensed technologies from
location the exclusive manufacturer, which in the case of PCOS is
SMARTMATIC.
There is probable cause that Dela Peña-Reyes and Manalastas
directly committed copyright infringement of ABS-CBN’s news Bishop Pabillo et. al opposed the direct contracting in favor of
footage to warrant piercing of the corporate veil. They are Smartmatic-TIM. They contend that there must be a public
responsible in airing the embargoed Angelo dela Cruz footage. bidding, because goods sought to be procured are not
They could have prevented the act of infringement had they protected by patents, trade secrets, or copyright owned by
been diligent in their functions as Head of News Operations and Smartmatic-TIM.
Program Manager.
123
On the other hand, the COMELEC contends that the resort to Smartmatic has already been granted the Perpetual License to
direct contracting is proper because of the sole proprietary right use such licensed technology embodied in the existing
of Smartmatic-TIM over the PCOS licensed technologies. machines, the transfer of PCOS and Election Management
System (EMS) Intellectual Property Rights, and the exclusive
In relation to Intellectual Property, direct contracting may only rights to manufacture and sell the PCOS and EMS in the
be allowed when the procurement involves goods of proprietary Philippines.
nature, which can be obtained only from the proprietary
source—that is, when patents, trade secrets and copyrights However, the term “goods” in this case refer to—the services
prohibit others from manufacturing the same item. for the machines’ repairs and maintenance and refurbishment,
which in itself constitutes a distinct contract object.
This is applicable when the goods or services being procured
are covered by a patent, trade secret or copyright duly acquired A perusal of the aforementioned patent and
under the law. copyright documents reveals that Smartmatic-TIM’s existing
intellectual property rights do not cover the services subject of
Under the Intellectual Property Code of the Philippines (R.A. these cases.
No. 8293), the registered owner of a patent, a copyright or any
other form of intellectual property has exclusive rights over the No evidence has been presented to show that it possessed
product, design or process covered by such patent, copyright intellectual property rights over the method, process, system,
or registration. Such exclusive right includes the right to use, program, or work of servicing the said PCOS machines for their
manufacture, sell, or otherwise to derive economic benefit from repair and refurbishment. Accordingly, Smartmatic-TIM cannot
the item, design or process. be said to be the services’ proprietary source, thus, negating
its purported exclusivity as the COMELEC claims.
Issue #1: WON Smartmatic-TIM has copyrights over the
automated elections system Conclusion: Smartmatic-TIM doesn’t have proprietary rights
over the goods covered by the Extended Warranty Contract.
Ruling: YES. It was held in this case the it is not been disputed
that Smartmatic-TIM has intellectual property rights over the DISCUSSION: Therefore, Smartmatic cannot resort to direct
hardware, as well as software program used to run the contracting and a public bidding is required.
technology. So, for the hardware, we have the patent
application and, finally, for the software, the US Copyright
Registration. So this falls within RA 8293 Section 172. OLAÑO VS LIM ENG CO
(2016)
Issue #2: WON the Smartmatic-TIM has intellectual property
rights over the “goods” covered by the Extended Warranty
Contract Facts: This case involves the Manansala Project. The
Manansala Project is a high-end residential building in.
Ruling: NO. Smartmatic-TIM doesn’t have intellectual property Rockwell Center, Makati City. The contractor for this project is
rights over the goods covered by the Extended Warranty Ski-First Balfour Joint Venture (SKI-FB). The contractor in this
Contract. case, asked someone to submit drawing for the interior and
exterior hatch doors of the Manansala Project.
Goods are considered to be of “proprietary nature” when they
are owned by a person who has a protectable interest in them LEC Steel Manufacturing
Metrotech Steel Industries
or an interest protected by intellectual property laws. Corp.
 Invited by the  LEC learned that
Here, it has not been disputed that Smartmatic-TIM has architects to submit Metrotech was also
intellectual property rights over the SAES 1800 AES, comprised drawings subcontracted –
of the PCOS machines, as well as the software program used  They submitted 23rd to 41st floor.
to run the technology. drawings for the  June 24, 2004 –
designs, which was received demand
Smartmatic-TIM traces its ownership over the intellectual approved (Feb. 3, to stop from LEC
property in this case on the following: 2004)  Metrotech refused
 Patent Application Publication No. US  There were to stop, LEC sought
2012/0259681 A1115—for the invention subcontracted to help from the NBI
called “Appending Audit Mark Image” manufacture and  NBI applied for
 US Copyright Registration No. TX 7-921- install the interior search warrant –
024—for the work entitled “Democracy Suite and exterior hatch confiscated
Election Management System Software doors for the 7th- finished and
version 4.14” 22nd Floor. unfinished metal
hatch doors and
124
 July 2, 2004 – the fabrication While it is true that where the complainant presents a copyright
Deposited with the materials certificate in support of the claim of infringement, the validity
National Library  Aug. 13, 2004 – and ownership of the copyright is presumed. This presumption,
 July 6, 2004 – LEC files a however, is rebuttable and it cannot be sustained where other
Certificate of complaint affidavit evidence in the record casts doubt on the question of
Copyright Class before the DOJ for ownership, as in the instant case.
Work 1 under copyright
Section 172. infringement What constitutes copyrightable work? A copyrightable work
 Dec. 9, 2004 – against Metrotech. refers to literary and artistic works defined as original
Certificate of intellectual creations in the literary and artistic domain. The
Copyright Classified general rule is that a hatch door by nature is functional and
under Section utilitarian serving as egress access during emergency. It is
172(h). intrinsically a useful article, which as a whole, is not eligible for
copyright. The exception would be when it incorporates a
Issue: WON there is probable cause for the filing of an design element that is physically or conceptually separable
information against Metrotech for copyright infirngement from the underlying product. This means that the utilitarian
article can function without the design element.
Ruling: NO. While both elements of copyright infringement
subsist in the records, they did not simultaneously concur so as In the case at bar, The hinges on LEC’s “hatch doors” have no
to substantiate infringement of LEC’s two sets of copyright ornamental or artistic value.
registration. 1. They are just similar to hinges found in truck doors
that had been in common use since 1960’s.
Copyright infringement is committed by any person who shall 2. The gasket on LEC’s “hatch doors”, aside from not
use original literary or artistic works, or derivative works, being ornamental or artistic, were merely procured
without the copyright owner’s consent in such a manner as to from a company name Pemko and are not original
violate the foregoing copy and economic rights. creations of LEC.
3. The locking device in LEC’s “hatch doors” are
For a claim of copyright infringement to prevail, the evidence ordinary drawer locks commonly used in furniture
on record must demonstrate: and office desks. All are alread existing articles of
1. Ownership of a validly copyrighted material by the manufacture from different suppliers. As such,
complainant; and cannot be considered original creations.
2. Infringement of the copyright by the respondent 4. LEC claimed that the doors were particularly
designed to blend with the floor to appeal to the
In the case at bar, this involves to copyright registrations. First aesthetic sense of the owner of the units. This
is the registration for the sketches and drawings. LEC’s means that the design on the hatch door panel was
copyright protection covered only the hatch door not a product of LEC’s independent artisctic
sketches/drawings and not the actual hatch door they depict. judgment and discretion but rather a mere
Since the hatch doors cannot be considered as either reproduction of an already existing design.
illustrations, maps, plans, sketches, charts and three
dimensional works relative to geography, topography, CONCLUSION: There is no probable cause for copyright
architecture or science, to be properly classified as a infringement imputable against Olano et. al. Also, absent
copyrightable class “I” work, what was copyrighted were their originality and copyrightability as elements of a valid copyright
sketches/drawings only, and not the actual hatch doors ownership, no infringement can subsist.
themselves.
DISCUSSION: Architectural designs – what are protected by
To constitute infringement, the usurper must have copied or copyright? Just the drawings. So if you are an architect and you
appropriated the original work of an author or copyright have a design, it is automatically copyrighted. Nobody can
proprietor, absent copying, there can be no infringement of mass produce the design and nobody can publish the design
copyright. Unlike a patent, a copyright gives no exclusive right without your consent. But what about the building of the house
to the art disclosed; protection is given only to the expression that is there in your design? Is that protected by copyright? No.
of the idea — not the idea itself. Hindi kasama yan as copyright. So, if somebody get hold of the
design and builds a house exactly the same as the one in the
The second registration is for the ornamental design of the design, that is not infringement of copyright.
hatch doors. Section 172(h) provides, “Original ornamental
designs for articles of manufacture whether or not registrable BAR QUESTION: What is the Denicola Test? It has something
as an industrial design, and other works of applied art.” to do with useful articles – yung works of applied art. It says
“Ownership of copyrighted material is shown by proof of here that when a pictorial, graphic, or sculptural work is a
originality and copyrightability.” useful article, it is copyrighted only if its aesthetic features are
separable from its utilitarian features.
125
online streaming. It contended that the MOA grants radio

A useful article is an article having an intrinsic utilitarian stations the right to simultaneously broadcast live the audio of
function that is not merely to portray the appearance of the the debates, even if the radio stations are not obliged to
article or to convey information but can also be used. They perform any obligation under the MOA. Yet, this right to
must be separable from the functional aspect to be broadcast by live streaming online the audio of the debates is
copyrighted. denied Rappler and other online media entities, which
also have the capacity to live stream the audio of the debates.
There are certain tests that are applied. These are the four (4)
tests to determine whether or not the utilitarian and the artistic Issue: May Rappler be allowed to livestream the live audio of
aspects are separable: the debates in its website without violating the law on
1. Primary use test Copyright under the IPC?
2. Marketable as art
3. Temporal displacement test Ruling: YES. Under the said Paragraph 19 of the MOA, the
4. Denicola Test – copyrightability should ultimately Lead Networks are expressly mandated to "allow the
depend on the extent to which the work reflects the debates they have produced to be shown or streamed
artistic expression inhibited by functional on other websites," but "subject to copyright
considerations. If something came to have a conditions or separate negotiations with the Lead
pleasing shape because of its functional Networks." The use of the word "or" means that compliance
consideration , the artistic aspect was constrained with the "copyright conditions" is sufficient for Rappler to
by those concerned. exercise its right to live stream the debates in its website.
You cannot copyright something that is pleasing to the eye So, what are the Copyright Conditions in this case? It is
because it can be used. Dapat pleasing talaga siya whether or provided for under Section 184.1 ( c) of the IPC. Under this
not it can be used. And it can be used whether or not is can be provision, the debates fall under "addresses and other works of
pleasing to the eye. the same nature." Further, the copyright conditions for the
debates are as follows:
1. The reproduction or communication to the public by
RAPPLER, INC. VS ANDRES BAUTISTA mass media of the debates is for information
(2016) purposes;
2. The debates have not been expressly reserved by
the Lead Networks (copyright holders);
Facts: On September 21, 2015, Andres Bautista, former 3. The source is clearly indicated
Chairman of the COMELEC, called for a meeting with various
media outlets to discuss the "Pilipinas 2016 Debates," for The copyright conditions for the debates in this case was also
presidential and vice-presidential candidates, which the complied with. First, the live streaming by Rappler is obviously
COMELEC was organizing. Bautista proposed that Rappler and for information purposes. Second, Part VI ( c), paragraph 19 of
Google be in charge of online and social media engagement. the MOA expressly “allow[s] the debates to be shown or
streamed on other or streamed on other websites”, including
Subsequently, a Memorandum of Agreement (MOA) was Rappler’s website. This means that the reproduction or
drafted, dropping Rappler's and Google's participation in favor communication of the debates (especially the use of the debate
of the Lead Networks There was a provision in the MOA audio for online streaming) to the public by mass media has
which permitted online streaming, provided proper attribution not been expressly reserved or withheld. Third, It is complied
is given the Lead Networks. Rappler expressed its concerns to by clearly indicating and acknowledging that the source of the
Bautista regarding certain provisions of the MOA, particularly debate is one or more of the Lead Networks.
regarding:
Rappler may livestream the debate in its entirety by complying
a. Online streaming; and with the copyright conditions:
b. The imposition of a maximum limit of two minutes a. The source is clearly indicated;
of debate excerpts for news reporting b. There will be no alteration (the streaming will
include the proprietary graphics used by the Lead
It was specifically provided for in Part VI ( c), paragraph 19 and Networks);
Part VI (d), paragraph 20 of the MOA. Now, this case focused c. Should Rappler opt for any alteration, it may have
more on Part VI ( c), paragraph 19 which tackles online to negotiate with the Lead Networks.
streaming. Bautista assured Rappler that its concerns will be
addressed afterwards, but it has to sign the MOA because time
was of the essence. However, after the execution of the MOA, The effects if conditions under Section 184.1 ( c) are complied
Rappler received no response regarding the said concerns. with:
a. The information – the live audi of the debates now
Rappler now alleges that it is being discriminated, particularly forms part of the public domain
as regards the MOA provisions on live audio broadcast via
126
b. There is now freedom of the press to report or In his Memorandum dated March 15, 2007, Dean Constantino
publicly disseminate the live audio of the debates. T. Yap verified Mr. Chenoweth's claim that he is one of the
authors of the textbook "Applied Engineering Mechanics".
CONCLUSION: Rappler may livestreams the love audio of the
debates unaltered on it website without violating the provisions At least three (3) books containing the names of
of the Intellectual Property Code on Copyright; provided, it Masangkay, Rocamora, Regondola, and Tolentino were
complies witht the third condition that the source is clearly copied verbatim or with slight modifications from the
indicated. following original engineering books:
Engineering Mechanics, Second Edition, by Ferdinand L.
April 2, 2019| Transcribed by: Niel Vic Suaybagio & Luwalhati Singer
Villavicencio Applied Engineering Mechanics, Metric Edition, by Alfred
Jensen, Harry H. Chenoweth, adapted by David N. Watkins
Masangkay and Regondola plagiarized the works of
UNIVERSITY OF THE EAST AND DR. ESTER Chenoweth and Singer by lifting large portions of the text
GARCIA, v. VERONICA M. MASANGKAY AND of the works of said writers without properly
GERTRUDO R. REGONDOLA attributing the copied text, and, to make matters worse,
G.R. No. 226727 April 25, 2018 they represented under oath that no portion of the Manuals
were plagiarized when, in truth and in fact, huge portions
FACTS: thereof were improperly lifted from other materials
Veronica M. Masangkay (Masangkay) and Gertrudo R.
Regondola (Regondola) were regular faculty members, Discussion
Associate Professors, and Associate Deans of petitioner So, this is an illustration of plagiarism, where authors of manual
University of the East (UE) – Caloocan Campus, prior to their textbooks in the Philippines copied books already copyrighted.
dismissal on November 26, 2007. But as you can see, it seems like we don’t really have a law that
focuses on plagiarism. Is it a crime? Is it something that gives
While holding said positions, Masangkay and Rogondola somebody a cause of action to file a case in court? We do not
submitted 3 manuals, namely: Mechanics, Statics, and know. In this case, infringement was also used and fair use.
Dynamics, requesting said manuals' temporary adoption as
instructional materials. Masangkay and Regondola
represented themselves to be the rightful authors theref, PEARL & DEAN (PHIL.), INCORPORATED, vs.
together with their co-author a certain Rocamora. SHOEMART, INCORPORATED, and NORTH EDSA
Accompanying said requests are certifications under oath, MARKETING, INCORPORATED
signed by Masangkay and Regondola, declaring under pain of G.R. No. 148222 August 15, 2003
perjury, and openly certifying that the manuals are entirely
original and free from plagiarism.
FACTS:
Pearl and Dean is a corporation engaged in the manufacture of
Thereafter, UE received 2 complaint-letters from a certain
advertising display units simply referred to as light boxes.
Harry Chenoweth and Lucy Singer Block. Chenoweth and
These units utilize specially printed posters sandwiched
Block’s father are authors, respectively, of three books, namely:
between plastic sheets and illuminated with back lights. Pearl
Applied Engineering Mechanics, Engineering Mechanics, 2nd
and Dean was able to secure a Certificate of Copyright
Edition, 1954, and Engineering Mechanics: Statics & Dynamics,
Registration dated January 20, 1981 over these illuminated
3rd Edition, 1975. Categorically they denied giving Masangkay
display units. The advertising light boxes were marketed under
and Regondola permission to copy, reproduce, imitate or alter
the trademark "Poster Ads". The application for registration of
said books, and asked for assistance from UE too stop the
the trademark was filed. From 1981 to about 1988, Pearl and
alleged unlawful acts and deal with this academic dishonesty.
Dean employed the services of Metro Industrial Services to
manufacture its advertising displays.
After thorough evaluation of the alleged plagiarized protions,
UE’s board of trustees issued a resolution dismissing
Sometime in 1985, Pearl and Dean negotiated with SMI for the
Masangkay and Regondola.
lease and installation of the light boxes in SM City North Edsa.
Since SM City North Edsa was under construction at that time,
UE maintains that plagiarism, a form of academic dishonesty,
SMI offered as an alternative, SM Makati and SM Cubao, to
is a serious misconduct that justly warrants Masangkay and
which Pearl and Dean agreed.
Regondola’s dismissal.
Two years later, Metro Industrial Services, the company
ISSUE: Whether or not Masangkay and Regondola committed
formerly contracted by Pearl and Dean to fabricate its display
plagiarism
units, offered to construct light boxes for Shoemart’s chain of
stores. SMI approved the proposal and ten (10) light boxes
HELD: YES.
were subsequently fabricated by Metro Industrial for SMI. After
its contract with Metro Industrial was terminated, SMI engaged
127
the services of EYD Rainbow Advertising Corporation to make P & D secured its copyright under the classification class "O"
the light boxes. Some 300 units were fabricated in 1991. These work. Its copyright protection extended only to the
were delivered on a staggered basis and installed at SM technical drawings and not to the light box itself because
Megamall and SM City. the latter was not at all in the category of “prints, pictorial
illustrations, advertising copies, labels, tags, and box wraps.”
Sometime in 1989, Pearl and Dean, received reports that exact Stated otherwise, even as we find that P & D indeed owned a
copies of its light boxes were installed at SM City and in the valid copyright, the same could have referred only to the
fastfood section of SM Cubao. technical drawings within the category of "pictorial
illustrations." It could not have possibly stretched out to include
In the light of its discoveries, Pearl and Dean sent a letter dated the underlying light box…neither could the lack of statutory
December 11, 1991 to both SMI and NEMI enjoining them to authority to make the light box copyrightable be remedied by
cease using the subject light boxes and to remove the same the simplistic act of entitling the copyright certificate issued by
from SMI’s establishments. It also demanded the discontinued the National Library as "Advertising Display Units."
use of the trademark "Poster Ads," and the payment to Pearl
and Dean of compensatory damages in the amount of Twenty n fine, if SMI and NEMI reprinted P & D’s technical drawings for
Million Pesos. sale to the public without license from P & D, then no doubt
they would have been guilty of copyright infringement. But this
In denying the charges hurled against it, SMI maintained was not the case. SMI’s and NEMI’s acts complained of by P &
that it independently developed its poster panels using D were to have units similar or identical to the light box
commonly known techniques and available technology, illustrated in the technical drawings manufactured by Metro and
without notice of or reference to Pearl and Dean’s EYD Rainbow Advertising, for leasing out to different
copyright. SMI noted that the registration of the mark "Poster advertisers. Was this an infringement of petitioner’s
Ads" was only for stationeries such as letterheads, envelopes, copyright over the technical drawings? The Supreme
and the like. Besides, according to SMI, the word "Poster Court did not think so.
Ads" is a generic term which cannot be appropriated as
a trademark, and, as such, registration of such mark is Trademark, copyright and patents are different intellectual
invalid. It also stressed that Pearl and Dean is not entitled property rights that cannot be interchanged with one
to the reliefs prayed for in its complaint since its advertising another. A trademark is any visible sign capable of
display units contained no copyright notice, in violation distinguishing the goods (trademark) or services (service mark)
of Section 27 of P.D. 49. SMI alleged that Pearl and Dean had of an enterprise and shall include a stamped or marked
no cause of action against it and that the suit was purely container of goods. In relation thereto, a trade name means
intended to malign SMI’s good name. the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to
P & D’s complaint was that SMI infringed on its copyright over literary and artistic works which are original intellectual
the light boxes when SMI had the units manufactured by Metro creations in the literary and artistic domain protected from the
and EYD Rainbow Advertising for its own account. moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field
This is premised on its belief that its copyright over the of human activity which is new, involves an inventive step and
engineering drawings extended ipso facto to the light boxes is industrially applicable.
depicted or illustrated in said drawings.
ON TRADEMARK INFRINGEMENT
ISSUE: was there copyright infringement? This issue concerns the use by respondents of the mark "Poster
Ads" which petitioner’s president said was a contraction of
HELD: NO. The copyright was limited to the drawings alone "poster advertising." P & D was able to secure a trademark
and not to the light boxes itself. certificate for it, but one where the goods specified were
"stationeries such as letterheads, envelopes, calling cards and
P and D’s application for a copyright clearly stated that it was newsletters." Petitioner admitted it did not commercially
for a class “O” work under Section 2 of PD 49 which was the engage in or market these goods. On the contrary, it dealt in
statute then prevailing: electrically operated backlit advertising units and the sale of
O) Prints, pictorial illustrations, advertising copies, labels, tags, advertising spaces thereon, which, however, were not at all
and box wraps specified in the trademark certificate.
Copyright, in the strict sense of the term, is purely a statutory Assuming arguendo that "Poster Ads" could validly qualify as a
right. Being a mere statutory grant, the rights are limited to trademark, the failure of P & D to secure a trademark
what the statute confers. It may be obtained and enjoyed only registration for specific use on the light boxes meant that
with respect to the subjects and by the persons, and on terms there could not have been any trademark infringement since
and conditions specified in the statute. Accordingly, it can cover registration was an essential element thereof.
only the works falling within the statutory enumeration or
description.
128
ON UNFAIR COMPETITION opened his laundry store in Makati in 1995. Thereafter, on

SMI cannot be held guilty of unfair competition. By the nature March 17, 1997, the National Library issued to him a certificate
of things, there can be no unfair competition under the law on of copyright over said name and mark. Roberto Juan then
copyrights although it is applicable to disputes over the use of formed a corporation to handle the said business, hence,
trademarks. Even a name or phrase incapable of appropriation Laundromatic Corporation was incorporated.
as a trademark or tradename may, by long and exclusive use
by a business (such that the name or phrase becomes Roberto Juan then discovered that his brother, Fernando was
associated with the business or product in the mind of the able to register the name and mark “Lavandera Ko” with the
purchasing public), be entitled to protection against unfair IPO on October 18, 2001. It was also found out by Roberto that
competition. Fernando has been selling his own franchises.
In this case, there was no evidence that P & D’s use of "Poster Roberto filed a petition for injunction. Unfair competition,
Ads" was distinctive or well-known. “Posters Ads” was too infringement of copyright, cancellation of trademark and name.
generic a name. It was too difficult to identify it with any The RTC rendered a Resolution dismissing the petition and
company. ruling that neither of the parties had a right to the exclusive
use or appropriation of the mark “Lavandera KO” because the
Discussion same was the original mark and work of a certain Santiago S.
Q. So, what is unfair competition? Suarez. According to the RTC, the mark in question was created
A. When you ride on the goodwill of the another that has an by Suarez in 1942 in his musical composition called “Lavandera
established goodwill. Ko” and both parties failed to prove that they were the
Here, Pearl and Dean is accusing SM of pretending that they originators of the same mark.
are the manufacturers of the product of Pearl and Dean.
Supreme Court, however, said that that is not what unfair ISSUE: Whether or not a mark is the same as a copyright.
competition is all about. Unfair competition is “riding on” “trying
to take advantage of somebody else’s established goodwill. HELD: NO.
Copyright and trade or service name are different. Copyright is
Q. So, what is the point of this case? the right of literary property as recognized and sanctioned by
A. This intellectual property rights (patent, trademark, positive law. An intangible, incorporeal right granted by statute
copyright) are distinct from each other. You cannot mix them to the author or originator of certain literary or artistic
up together. productions, whereby he is invested, for a limited period, with
the sole and exclusive privilege of multiplying copies of the
Copyright refers to scholarly literary works; patent refers to same and publishing and selling them.
invention; trademarks are signs which identify goods and
services. And the Supreme Court even mentioned in this case, Trade name, on the other hand, is any designation which (a) is
that what Pearl and Dean did by registering the drawings is adopted and used by person to denominate goods which he
seeking exclusivity without any opportunity for the Patent markets, or services which he renders, or business which he
Office to scrutinize the boxes’ eligibility as a patentable conducts, or has come to be so used by other, and (b) through
invention. The irony here is that, had Pearl and Dean secured its association with such goods, services or business, has
a patent its exclusivity would have been for 17 years only. What acquired a special significance as the name thereof, and (c) the
is the lifetime of a patent? 20 years from filing. But through the use of which for the purpose stated in (a) is prohibited neither
much more simplified procedure of copyright registration with by legislative enactment nor by otherwise defined public policy.
the National Library, without the rigor of defending the Section 172.1 of R.A. 8293 enumerates the following original
patentability with the IPO, Pearl and Dean will be protected for intellectual creations in the literary and artistic domain that are
50 years. This situation is not the intention of the law. protected from the moment of their creation, thus:
So, those who wish to circumvent the law by just registering (f) Musical compositions, with or without words ;
the copyright the drawings of their inventions will not get the
protection they think they are getting. One has to go to the As such, "Lavandera Ko," being a musical composition with
proper bureau and not choose what is convenient. And that is words is protected under the copyright law (Part IV, R.A. No.
exactly what Pearl and Dean did. 8293) and not under the trademarks, service marks and trade
names law (Part III, R.A. No. 8293).
FERNANDO U. JUAN, v. ROBERTO U. JUAN
(SUBSTITUTED BY HIS SON JEFFREY C. JUAN) AND The RTC's basis or source, an article appearing in a website, in
LAUNDROMATIC CORPORATION ruling that the song entitled "Lavandera Ko" is protected by a
G.R. No. 221732 August 23, 2017 copyright, cannot be considered a subject of judicial notice that
does not need further authentication or verification.
FACTS:
Roberto Juan claimed that he began using the name and mark
“Lavandera Ko” in his laundry business on July 4, 1994. He then
129
Comment: So the question here is, can you register as a What is the duration of this right?
trademark a title of a song? or a name of a title of a book? Can
you? Yes. Because what cannot be registered, go back to Under Section 200 also, it says during the lifetime of the author,
Section 123; confusingly similar or identical to. So again, these but what if the author already died? Still the right exists for fifty
intellectual property rights are different from each other. So (50) years after his death.
just because there is a song the title of which is "Lavandera
Ko", doesnt mean that you cannot register that as a trademark.
Mas lalo na because a song is totally different from a product Sec. 201. Works Not Covered. - The provisions of this Chapter shall
or a service. The RTC here, unfortunately was not able to not apply to prints, etchings, engravings, works of applied art, or works
distinguish between the different intellectual property rights, of similar kind wherein the author primarily derives gain from the
and if you really the case you will find out that nobody even proceeds of reproductions.(Sec. 33, P. D. No. 49)
brought it up. The RTC based its decision in Google, where he
found out that there is indeed a song. Nobody is denying that, So if you have works that are covered under Section 200, we
but the song is protected as a whole. Nobody can sing that also have works that are not covered under Section 201. We
song or play that song in public or publicise it, but to use it as have, prints, etchings, engravings, works of applied art, or
a trademark is an entirely different story. works of similar kind wherein the author primarily derives gain
from the proceeds of reproductions. So Section 200 can be
found in Chapter 12 under rights of performers, producers of
CHAPTER XI sounds, recordings and broadcasting organizations.
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
Sec. 202. Definitions.- For the purpose of this Act, the following terms
Previously, we have discussed already the rights of the shall have the following meanings:
copyright owners. We have economic rights, moral rights
and Droit de suite or art proceeds right. This last one is from 202.1. "Performers" are actors, singers, musicians, dancers, and other
the website of the Intellectual Property. It is also called as persons who act, sing, declaim, play in, interpret, or otherwise perform
resale right as termed in the book of Aquino Intellectual literary and artistic work;
Property.
202.2. "Sound recording" means the fixation of the sounds of a
performance or of other sounds, or representation of sound, other than
Droit de Suite or "art proceeds right" in the form of a fixation incorporated in a cinematographic or other
audiovisual work;
So what is this right? This right is the resale right, which
requires that a percentage of the resale price of an artistic work 202.3. An "audiovisual work or fixation" is a work that consists of a
is paid to the author. So as to how much is the percentage and series of related images which impart the impression of motion, with
what is this right, we look at Section 200. or without accompanying sounds, susceptible of being made visible
and, where accompanied by sounds, susceptible of being made
audible;
Sec. 200. Sale or Lease of Work. - In every sale or lease of an original
work of painting or sculpture or of the original manuscript of a writer 202.4. "Fixation" means the embodiment of sounds, or of the
or composer, subsequent to the first disposition thereof by the author, representations thereof, from which they can be perceived, reproduced
the author or his heirs shall have an inalienable right to participate in or communicated through a device;
the gross proceeds of the sale or lease to the extent of five percent
(5%). This right shall exist during the lifetime of the author and for fifty 202.5. "Producer of a sound recording" means the person, or the legal
(50) years after his death. (Sec. 31, P. D. No. 49) entity, who or which takes the initiative and has the responsibility for
the first fixation of the sounds of a performance or other sounds, or
Under Section 200, we have the sale or lease of work, it says, the representation of sounds;
in every sale or lease of work of an original work of painting or
202.6. "Publication of a fixed performance or a sound recording" means
sculpture, of the original manuscript of a writer or composer
the offering of copies of the fixed performance or the sound recording
subsequent to the first disposition thereof by the author or his to the public, with the consent of the right holder: Provided, That copies
heirs shall an inalienable right to participate in the gross are offered to the public in reasonable quality;
proceeds of the sale or lease to the extent of 5%.
202.7. "Broadcasting" means the transmission by wireless means for
So meaning, this right will start after the subsequent first the public reception of sounds or of images or of representations
disposition of the author. The author or his heirs shall have this thereof; such transmission by satellite is also "broadcasting" where the
means for decrypting are provided to the public by the broadcasting
right to participate in the gross proceeds of sale. This means
organization or with its consent;
that this is an inalienable right, meaning it cannot be
transferred to third persons. 202.8. "Broadcasting organization" shall include a natural person or a
juridical entity duly authorized to engage in broadcasting; and
130
copyright. On the other hand, PMSI argued that it is not

202.9. "Communication to the public of a performance or a sound infringing the copyright of ABS-CBN because it operates under
recording" means the transmission to the public, by any medium, the NTC Memorandum Circular 4-08-88 pursuant to the "Must-
otherwise than by broadcasting, of sounds of a performance or the Carry Rule". This "Must-Carry Rule", it orders or it mandates all
representations of sounds fixed in a sound recording. For purposes of the local channel networks of the local networks must be
Section 209, "communication to the public" includes making the sounds
included in their program line-up.
or representations of sounds fixed in a sound recording audible to the
public.
Issue 1: Whether or not PMSI is engaged in the broadcasting
of Channels 2 and 23 of ABS-CBN. This is to determine whether
Under 202, these are just definitions. there is a violation of the copyright of ABS-CBN.
Comment: So if you notice the definition in 202 is Held: The Court ruled that No. As already discussed, the
broadcasting. Lets see how it was discussed in the case of ABS- definition of broadcasting is the transmission by wireless means
CBN. for the public reception of sounds or images or of
representations thereof, and such transmission by satellite is
ABS-CBN BROADCASTING CORPORATION v. also broadcasting where the means for decrypting are provided
PHILIPPINE MULTIMEDIA SYSTEM, INC. to the public by the broadcasting organization or with its
GR 175768-70 January 19, 2009 consent. And the definition of broadcasting under Section 202.7
provides the following:
This case is decided under RA 8293 and the Rome Convention Section 202.7 of the IP Code, thus, provides two
1961 which is an international convention for the protection of instances wherein there is broadcasting, to wit:
performers... with respect to broadcasting organizations of
which the Philippines is a signatory. 1. The transmission by wireless means for the public
reception of sounds or of images or of representations
ABS-CBN is licensed under Philippine laws to engage in the thereof; and
television or radio broadcasting. It broadcasts television
programs by cable or wireless means to Metro Manila and other 2. The transmission by satellite for the public
nearby provinces and via satellite services to the provincial reception of sounds or of images or of representations
stations through Channel 2 and 23. thereof where the means for decrypting are provided
to the public by the broadcasting organization or with
 The programs aired over Channels 2 and 23 are either its consent.
produced by ABS-CBN or purchased from or licensed
by other producers.
 ABS-CBN also owns regional television stations which So it is in the second instance wherein we determine whether
pattern their programming in accordance with PMSI is engaged in the broadcasting since PMSI provides
perceived demands of the region. Thus, television services via satellite. But before invoking Section 202.7 the
programs shown in Metro Manila and nearby court provided the 4 elements of the second instance.
provinces are not necessarily shown in
other provinces.
The elements of such category are as follows:
1. There is transmission of sounds or images or of
 Philippine Multi-Media System Inc (PMSI) is the
representations thereof;
operator of Dream Broadcasting System.
 It is a signal provider which has cable and 2. The transmission is through satellite;
satellite services. 3. The transmission is for public reception; and
 PMSI has its “Free TV” and “Premium Channels”. 4. The means for decrypting are provided to the
 The Free TV includes ABS-CBN channel 2 and 23. public by the broadcasting organization or with its
 It was granted a legislative franchise under RA 8630. consent.
 It was given Provisional Authority by NTC to install,
operate and maintain DTH satellite service. However the transmission contemplated presupposes that
the origin of the signals is the broadcaster. Hence, a program
that is broadcasted is attributed to the broadcaster. In the
The issue arose in this case when the PMSI in their "Free TV", same manner, the rebroadcasted program is attributed to the
included Channels 2 and 23 of ABS-CBN, wherein ABS-CBN rebroadcaster. So this transmission required by law is not
claimed by filing a complaint before the Bureau of Legal affairs, present in this case, because PMSI is not the origin of the
claiming that PMSI is engaged in the rebroadcasting of their signal. Further it doesnt transmit channels 2 and 23 as their
Channels 2 and 23 and thus infringing or violating their
131
own. It was further cited by the court that PMSI subscribers It must be emphasized that the law on copyright is not
are aware that channels 2 and 23 are owned by ABS-CBN. absolute.
Issue 2: Whether or not PMSI is engaged in rebroadcasting The IP Code provides that:
of channels 2 and 23. This is with respect to the contention Sec. 184. Limitations on Copyright. -
of ABS-CBN that PMSI is engaged in the rebroadcasting of 184.1. Notwithstanding the provisions of Chapter V,
channels 2 and 23. the following acts shall not constitute infringement
of copyright:
Held:
No. The Court used the Rome Convention 1961 where it (h) The use made of a work by or under the direction
defines that Rebroadcasting is the simultaneous or control of the Government, by the National
broadcasting by one broadcasting organization of the Library or by educational, scientific or
broadcast of another broadcasting organization. It further professional institutions where such use is in the
defined what is a broadcasting organization as entities that public interest and is compatible with fair use;
take the financial and editorial responsibility for the selection
and arrangement of, and investment in, the transmitted The court ruled that the "Must-Carry Rule" falls under the
exceptions provided under Section 184. It is because the Must-
content.
Carry Rule is under the jurisdiction of NTC which is an agency
of the government. The Must-Carry Rule also is provided for
So here in this case, PMSI is not engaged in rebroadcasting public interest, this is to give the Filipino people a wider access
because it does not have the aforementioned responsibilities to more sources of information, education, sports and
imposed upon broadcasting organizations, such as ABS- entertainment. This is also to attain a well informed, well-
CBN. PMSI would not qualify as a broadcasting organization versed and culturally refined citizenry and enhance their socio-
because it does not have the aforementioned responsibilities economic growth.
imposed upon broadcasting organizations, such as ABS-CBN.
Thus PMSI is not engaged in broadcasting and rebroadcasting
but it is a cable retransmitter, thus there is not copyright
PMSI is not engaged in broadcasting or rebroadcasting. It is
infringement.
cable retransmission. Cable retransmission is when a radio or
television program is being broadcasted and it can be
Comment: So what is rebroadcasting then? Broadcasting of
retransmitted to new audiences by means of cable or wire
course, was already defined, where a broadcasting company
and these are simultaneous or unaltered programs by the
broadcasts its television shows, its news programs. Is
ABS-CBN. Also,the Rome Convention does not grant rights
rebroadcasting going on here? Definitely. ABS-CBN and GMA
against unauthorized cable retransmission and without such
they rebroadcast koreanovelas. Diba? NBC, SBS. They
right, cable operators can retransmit both domestic and
rebroadcast that here but that is with permission and it is
foreign (inaudible) broadcast simultaneously to their
definitely legal if you rebroadcast with permission. So who can
subscribers without the permission of the broadcasting
rebroadcast? Broadcasting companies. Kaya nga
oraganizations or other right holders and without obligation
rebroadcasting, you are broadcasting again something that was
to pay operations.
already broadcasted or maybe simultaneous. But when it
comes to cable providers whether its satellite or cable, they just
Issue 3: Whether or not PMSI infringed upon the copyrights retransmit. They are not broadcast companies. Of course ABS-
of ABS-CBN. CBN, it has its SkyCable, broadcaster rin sila. But they carry
GMA, may GMA ang SkyCable. But GMA if you watch it on
SkyCable, its blurry. So laging nakalagay doon na "if you have
Held: No. While the Rome Convention gives broadcasting
any problems viewing this broadcast please contact..." So
organizations the right to authorize or prohibit the
lagina ina-ano, i dont know what ABS-CBN does. Is that
rebroadcasting of its broadcast, however, this protection
rebroadcasting by putting GMA on their cable? No, because of
does not extend to cable retransmission.
the Must-Carry Rule. Because if you dont carry these networks,
their regular shows, nobody's gonna watch. They wont be able
to broadcast to the entire Filipino population. Why? Because
The retransmission of ABS-CBNs signals by PMSI which
most people now have cable. Very few people just rely on the
functions essentially as a cable television does not therefore
networks. So if the networks are not placed in the line-up, the
constitute rebroadcasting in violation of the formers intellectual
cable line-up, then they would reach less households than they
property rights under the IP Code.
normally would. Now its not an issue. This was a 2009 decision.
132
The issue whether or not these satellite cable channels can communication to the public or broadcast of a performance subsequent
carry all these channels, from ABS-CBN to GMA etc. to the first communication or broadcast thereof by the broadcasting
organization, the performer shall be entitled to an additional
remuneration equivalent to at least five percent (5%) of the original
compensation he or she received for the first communication or
CHAPTER XII broadcast.
RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS,
RECORDINGS AND BROADCASTING ORGANIZATIONS.
Sec. 207. Contract Terms. - Nothing in this Chapter shall be construed
to deprive performers of the right to agree by contracts on terms and
conditions more favorable for them in respect of any use of their
Sec. 204. Moral Rights of Performers. — performance.
204.1. Independently of a performer's economic rights, the performer,

shall, as regards his live aural performances or performances fixed in Comment: Yes, so itong mga artists who perform sa mga
sound recordings, have the right to claim to be identified as the variety shows, they either get that 5% or more depending on
performer of his performances, except where the omission is dictated the contract that they have with their network.
by the manner of the use of the performance, and to object to any
distortion, mutilation or other modification of his performances that
would be prejudicial to his reputation. April 4, 2019| Transcribed by: Christine Paulma & Cavin Jhon
Cabarlo
204.2. The rights granted to a performer in accordance with Subsection
203.1 shall be maintained and exercised fifty (50) years after his death, Chapter XIII
by his heirs, and in default of heirs, the government, where protection PRODUCERS OF SOUND RECORDINGS
is claimed.
Sec. 208. Scope of Right. - Subject to the provisions of

Comment: So in other words, when we talk about performers Section 212, producers of sound recordings shall enjoy the
we're talking about every performance. So if Sarah Geronimo following exclusive rights:
sings on ASAP, that is protected by Section 204. She must be
identified as the performer and her performance should not be 208.1. The right to authorize the direct or indirect reproduction
mutilated in any way. I dont know what people do but i've seen of their sound recordings, in any manner or form; the placing
a lot of things on the internet. of these reproductions in the market and the right of rental or
lending;
Sec. 205. Limitation on Right. –
208.2. The right to authorize the first public distribution of the
205.1. Subject to the provisions of Section 206, once the performer has original and copies of their sound recordings through sale or
authorized the broadcasting or fixation of his performance, the rental or other forms of transferring ownership; and
provisions of Sections 203 shall have no further application.
208.3. The right to authorize the commercial rental to the
205.2. The provisions of Section 184 (Limitations on Copyright) and public of the original and copies of their sound recordings, even
Section 185 (Fair Use of a Copyrighted work) shall apply mutatis after distribution by them by or pursuant to authorization by
mutandis to performers. the producer. (Sec. 46, P. D. No. 49a)
Section 205 provides that once the performer has authorized Sec. 209. Communication to the Public. - If a sound
the broadcasting or fixation of his performance, the provision recording published for commercial purposes, or a reproduction
of Sections 203 shall have no further application once you elect of such sound recording, is used directly for broadcasting or for
broadcasting and fixation. However, we have here the other communication to the public, or is publicly performed
amendment of RA 10372, Section 18 of the said law which with the intention of making and enhancing profit, a single
makes available to the performer the right of authorizing rental equitable remuneration for the performer or performers, and
to the public of the original and copies of their performances the producer of the sound recording shall be paid by the user
that have been fixed in some form even after distribution by to both the performers and the producer, who, in the absence
them or by their authority. of any agreement shall share equally. (Sec. 47, P. D. No. 49a)
Comment: Like me as a teacher, can actually show maybe a Sec. 210. Limitation of Right. - Sections 184 and 185 shall
clipping or a portion of a performance for educational purposes apply mutatis mutandis to the producer of sound recordings.
and that is considered fair use. (Sec. 48, P. D. No. 49a)
Sec. 206. Additional remuneration for subsequent communications or

broadcasts. - Unless otherwise provided in the contract, in every Chapter XIV
133
BROADCASTING ORGANIZATIONS
Along with her producer, she was invited by Manresa network
Sec. 211. Scope of Right. - Subject to the provisions of on their Thursday 5-6pm show to perform and discuss the
Section 212, broadcasting organizations shall enjoy the songs. Franchesca explained that the flirtatious songs were
exclusive right to carry out, authorize or prevent any of the about a lawyer who fell in love with a judge with whom she had
following acts: a pending case.
211.1. The rebroadcasting of their broadcasts; Atty. Aceveda and Atty. Amberio, both professors of Legal
211.2. The recording in any manner, including the making of Ethics in AdDU recorded several minutes of the songs as well
films or the use of video tape, of their broadcasts for the as the broadcast. In class, they presented the material telling
purpose of communication to the public of television broadcasts their students that such conduct is unbecoming of a Lawyer.
of the same; and They told their students that the practice of Law is a noble
211.3. The use of such records for fresh transmissions or for profession.
fresh recording. (Sec. 52, P. D. No. 49)
Question: Did Aceveda and Amberio violate our Copyright
laws?
The rights of broadcasting organizations are as follows: Answer: No. It was for the purpose of teaching (Sec. 212.3)
1. Rebroadcasting and is also fair use subject to the conditions of Section 185
2. Recording (non-profit educational purpose). (Sec. 212.4 in relation to Sec.
3. Use 185)
Example: Chapter XVI
Dalagang Pilipina, a late night show owned by Renegade TERM OF PROTECTION
network invited an expert Psychologist in the field of Love. This
psychologist was interviewed and demonstrated certain steps
that you need to do in order to impress your crush on social Sec. 213. Term of Protection. –
media. The broadcast was a hit and was watched by all Filipinas
in the entire archipelago. Pirate network, wanting to boost its 213.1. Subject to the provisions of Subsections 213.2 to 213.5,
views, recorded and rebroadcasted without permission the said the copyright in works under Sections 172 and 173 shall be
segment as its own knowing fully well that it belongs to protected during the life of the author and for fifty (50 years
Renegade network. after his death. This rule also applies to posthumous works.
(Sec. 21, First Sentence, P. D. No. 49a)
Question: Was there a Copyright violation?
Answer: Yes, there was violation of Section 211. There was 213.2. In case of works of joint authorship, the economic rights
illegal rebroadcasting by another network. shall be protected during the life of the last surviving author
and for fifty (50) years after his death. (Sec. 21, Second
Chapter XV Sentence, P.D. No. 49)
LIMITATIONS ON PROTECTION 213.3. In case of anonymous or pseudonymous works, the
copyright shall be protected for fifty (50) years from the date
on which the work was first lawfully published: Provided, That
Sec. 212. Limitations on Rights. - Sections 203, 208 and where, before the expiration of the said period, the author's
209 shall not apply where the acts referred to in those Sections identity is revealed or is no longer in doubt, the provisions of
are related to: Subsections 213.1 and 213.2 shall apply, as the case may be:
Provided, further, That such works if not published before shall
212.1. The use by a natural person exclusively for his own be protected for fifty (50) years counted from the making of
personal purposes; the work. (Sec. 23, P. D. No. 49)
212.2. Using short excerpts for reporting current events; 213.4. In case of works of applied art the protection shall be
212.3. Use solely for the purpose of teaching or for scientific for a period of twenty-five (25) years from the date of making.
research; and (Sec. 24(B), P. D. No. 49a)
212.4. Fair use of the broadcast subject to the conditions under 213.5. In case of photographic works, the protection shall be
section 185. (Sec. 44, P. D. No. 49a) for fifty (50) years from publication of the work and, if
unpublished, fifty (50) years from the making. (Sec. 24(C), P.
Example: D. 49a)
Atty. Franchesca, M.D. wrote 3 love songs entitled: 213.6. In case of audio-visual works including those produced
1. “Judge, huwag mo akong i-dismiss. May gusto akong by process analogous to photography or any process for
patunayan” making audio-visual recordings, the term shall be fifty (50)
2. “Your honor, I would like to file a motion. Would you years from date of publication and, if unpublished, from the
like to leave this Court?” date of making. (Sec. 24(C), P. D. No. 49a)
3. “Judge, alam mo ang Rules of Court, pero ang rules
ko alam mo?” Terms:
134
Example for 213.3 (Pseudonymous works):

1. For single authors – during the life of the author 1975 Bar Question
and 50 years thereafter (213.1)
2. For joint authors – during the life of the last Question: If today a person is granted a copyright for a book,
surviving author and 50 years thereafter. (213.2) for how long will the copyright be valid? If said person uses a
3. Anonymous and pseudonymous works pseudonym, how would this affect the length of the copyright?
a. General Rule:
i. 50 years from the date of first Answer: A person granted a copyright for a book is protected
lawful publication up to 50 years after his death. If he uses a pseudonym, the
ii. 50 years from the making of the protection lasts for 50 years from publication, unless the
work if not published pseudonym is publicly known to be his, or unless before he
b. Exception: If the identity is revealed or no dies, he disclosed his true name, in which case the protection
longer in doubt before the expiration of the lasts up to 50 years after his death; Provided that such
period (50 years from first lawful works, if not published before, shall be protected for 50 years
publication), the provisions of Sections 213.1 counted from the making of the work.
and 213.2 shall apply as the case may be.
4. Applied Art – 25 years from the date of making. Another Example:
Applied Art - these are arts that add design and In 2000, Mondid wrote and published a book entitled “On the
decoration to everyday objects in order to make them Wings of Love – Special Edition” under the pen name Angel
aesthetically pleasing. Hokage.
Works of applied art are usually functional objects Sadly, in 2020, He rode a plane which crash landed on the
which have been beautified or creatively designed parking lot of Ateneo de Davao University. There were no
with both aesthetics and function in mind. survivors.
Example: A painted porcelain tea pot trimmed with Before he died, he was able to send out a tweet saying “Ako si
gold. Angel Hokage. Ako pinaka matinik”.
5. Photographic Works Question: Which of the subsections in 213 will now apply?
a. If published – 50 years from publication Answer: Since Mondid made his identity known, Subsections
b. If unpublished – 50 years from the making. 213.1 and 213.2 will now apply. No longer 213.3. Thus, there
is 50 years of protection for both published and non-published
6. Audiovisual Works pseudonymous work.
a. If published – 50 years from publication
b. If unpublished – 50 years from the making. Example for 213.5:
Example for 213.1 and 213.2: In 2000, Guerrera, a sought after master photographer, was
In 2000, Vecca wrote and published a book entitled: “Kung hired by Don Santiago to capture his Paris wedding with Doña
mamahalin mo ako, pangako, mababaliw ka”. (Book 1) Daniella. Don Santiago said to Guerrera: “Name your price”.
In 2001, Vecca, a jealous rival photographer, took these photos
Also in 2000, Vecca and Daniella co-authored and published a and used them in her website claiming them to be her own.
book entitled: “Utang na loob. Kung iibigin mo lang din naman
ako, I-TODO MO NA”. (Book 2) Question: Did Vecca violate our Copyright laws?
Answer: Yes, the photograph is an artistic work protected by
In 2010,Vecca was caught sleeping with her paramour so she Copyright under Section 172 and protected until 2050 (Section
died violently under the circumstance contemplated under 213.5). The terms of protection are 50 years from publication
Article 247 of the RPC (Death under Exceptional Circumstance). if published and 50 years from date of making if unpublished.
Whereas in 2050, Daniella died filthy rich in the arms of her
handsome lover, SC Justice Marvino Del Castro.
Sec. 214. Calculation of Term. - The term of protection
Question: How many years were the books protected? subsequent to the death of the author provided in the
Answer: preceding Section shall run from the date of his death or of
Book 1 was protected for 60yrs (10 years during the life of the publication, but such terms shall always be deemed to begin
author plus 50 years after death.) on the first day of January of the year following the event which
gave rise to them. (Sec. 25, P. D. No. 49)
Book 2 for 100yrs (50 years as the life of the last surviving
author plus 50 years after death.
Example:
135
Daniella died in January 2050, When does the second 50 year Amorsolo. No need to ask permission from us (Atty Suarez'
protection begin to run? family) kasi nadonate. We already transferred ownership of the
painting to Ayala. But when it comes to exhibition, it has to be
Answer: It will begin to run on January 1, 2051. So it will be the heirs [of Amorsolo]. But 3 years from now, 50 years na
protected for another 50 years after the year of her death. from 1972 (death of Amorsolo), there's no need anymore to
ask the proper permission.
Sec. 215. Term of Protection for Performers, Producers
and Broadcasting Organizations.- Sec. 216. Infringement. –
215.1. The rights granted to performers and producers of A person infringes a right protected under this Act when one:
sound recordings under this law shall expire:
a) Directly commits an infringement;
b) Benefits from the infringing activity of another person who commits
(a) For performances not incorporated in recordings, fifty (50) an infringement if the person benefiting has been given notice of the
years from the end of the year in which the infringing activity and has the right and ability to control the activities
performance took place; and of the other person;
c) With knowledge of infringing activity induces, cause or materially
(b) For sound or image and sound recordings and for contributes to the infringing conduct of another.
performances incorporated therein, fifty (50) years from the
end of the year in which the recording took place.
OLAÑO v. LIM ENG CO
215.2. In case of broadcasts, the term shall be twenty (20) GR 195835 (2016)
years from the date the broadcast took place. The
extended term shall be applied only to old works with subsisting
protection under the prior law. (Sec. 55, P. D. No. 49a) Copyright infringement is committed by any person who shall
use original literary or artistic works, or derivative works,
without the copyright owner's consent in such a manner as to
Atty Suarez Discussion: violate his copy and economic rights.
Do you all know of Ayala Museum? For a claim of copyright infringement to prevail, the evidence
on must demonstrate:
Ayala Museum is a museum in Makati operated by a corporation (1) ownership of a validly copyrighted material by the
and they have different kinds of artwork. They conduct complainant; and
exhibits. A few years ago, Ayala Museum had an exhibit of (2) infringement of the copyright by the respondent
portraits that were painted by Fernando Amorsolo and they
placed an ad in a newspaper. HABANA v. ROBLES
Fernando Amorsolo died in 1972. He dominated the Philippine
art scene for 4 decades. He normally would paint sceneries – To constitute infringement, it is not necessary that the whole
farm, gardens. Amorsolo was a pre-eminent as a portraitist. or even a large portion of the work shall have been copied. It
Portraits accounted for 80% of his output - mostly is sufficient that there is substantial similarity between the
commissioned works depicting leaders in society and industry two (injurious to another).
and their loved ones, as well as Americans residing in Manila
during the American colonial period. The ad was in 2012. PLAGIARISM INFRINGEMENT
Deliberate and knowing Any of the copyright or
*Atty Suarez shows a portrait of her grandmother, Romana de presentation of another economic rights under Sec.
Jesus Suarez* person’s original ideas and 177 of the IPC is violated by
creative expressions as any other person, or when
In 2002, she was so worried about her Amorsolo portrait na one’s own work. any of the acts in Sec 217.3
baka pag-awayan ng mga anak. She decided to donate it to the are committed
Ayala Museum, which they happily accepted. There was a Deed
of Donation. (Here, we have a painting by Amorsolo. Who can Penalized under Penalized under Intellectual
donate the painting? Who owns the painting? Atty. Suarez' Cybercrime Law* Property Code
grandmother. So, she can be donor in the document.)
Looks to the intellectual Looks to the economic
The painting was brought to Ayala Museum and they exhibited integrity or deficit thereof detriment of the right holder
the painting. Now, who can authorize the exhibition of the
painting? The heirs of Amorsolo. Since 40 years pa lang patay
si Amorsolo, so all of those portraits that were exhibited in *This, according to Department of Justice, means that
Ayala Museum, Ayala has to ask permission from the heirs of plagiarism itself is not a crime but that plagiarism that also
136
amounts to copyright infringement is. Such plagiarism now The foregoing shall not preclude an independent suit for relief by the
carries a penalty of 3-6 years imprisonment and a fine of injured party by way of damages. Injunction, accounts or otherwise.
P50,000 - P150,000 ($1,200 - $3,600), if prosecuted under the
law. (DOJ Advisory Opinion 02 Series of 2012)
Sec. 217. Criminal Penalties –
Any person infringing any right secured by provisions of Part
Sec. 216.1 Remedies for Infringement – IV of this Act or aiding or abetting such infringement shall be guilty of
a crime punishable by:
Any person infringing a right protected under this law shall be liable.
A) Imprisonment of one (1) year to three (3) years plus a fine ranging
A. Injunction: This relief will lie to restrain an infringement, to order from Fifty thousand pesos (P50,000) to One hundred fifty thousand
a defendant to desist from infringement, and to close the channels of pesos (P150,000) for the first offense.
commerce in imported goods to the fruits of infringement;
B) Imprisonment of three (3) years and one (1) day to six (6) years
B and E. Damages and Indemnity: The copyright holder is entitled plus a fine ranging from One hundred fifty thousand pesos (P150,000)
to actual damages including legal costs incurred as a result of the to Five hundred thousand pesos (P500,000) for the second offense.
infringement, and to the profits made by the infringer by his offense.
The court may also order the payment of moral and exemplary C) Imprisonment of six (6) years and one (1) day to nine (9) years plus
damages. a fine ranging from Five hundred thousand pesos (P500,000) to One
million five hundred thousand pesos (P1,500,000) for the third and
C and D. Impounding, Confiscation and Destruction: The court subsequent offenses.
may order the infringer to deliver for impounding all evidence of
infringement, and also destruction of the same without compensation. In all cases, subsidiary imprisonment in cases of insolvency.
The copyright owner may elect, at any time before final judgment is 217.2. In determining the number of years of imprisonment and the
rendered to recover instead of actual damages and profits, an award amount of fine, the court shall consider the value of the infringing
of statutory damages for all infringements involved in an action in a materials that the defendant has produced or manufactured and the
sum equivalent to the filing fee of the infringement action but no less damage that the copyright owner has suffered by reason of the
than Fifty thousand pesos (Php 50,000.00). In awarding statutory infringement: Provided. That the respected maximum penalty stated in
damages the court may consider the following factors: Section 217.1. (a), (b) and (c) herein for the first, second third and
subsequent offense, shall be imposed when the infringement is
1) The nature and purpose of the infringing act; committed by:
2) The flagrancy of the infringement;
3) Whether the defendant acted in bad faith; a) The circumvention of effective technological measures;
4) The need for deterrence; b) The removal or alteration of any electronic rights management
5) Any loss that the plaintiff has suffered or is a likely to information from a copy of a work, sound recording or fixation of a
suffer by reason of the Infringement; and performance by a person knowingly and without authority; or
6) Any benefits shown to have accrued to the defendant by c) The distribution, importation for distribution, broadcasting, or
reason of the infringement. communication to the public of works or copies of works, by a person
without authority knowing that electronic rights management
In case the infringer was not aware and had no reason to believe that information has been removed or altered without authority.
his acts constitute an infringement of copyright, the court in its
discretion may reduce the award of statutory damages to a sum of not 217.3. Any person who at the time when copyright subsists in a work
more than Ten thousand pesos (Php10,000.00): Provided, That the has in his possession an article which he knows, or ought to know, to
amount of damages to be awarded shall be doubled against any person be an infringing copy of the work for the purpose of
who:
a. Selling, letting for hire, or by way of trade offering or exposing for
i. Circumvents effective technological measures; or sale, or hire, the article;
ii. Having reasonable grounds to know that it will induce, enable, b. Distributing the article for purpose of trade, or for any other purpose
facilitate or conceal the infringement, remove or alter any electronic to an extent that will prejudice the rights of the copyright owner in the
rights management information from a copy of a work, sound work; or
recording, or fixation of a performance or distribute import for the c. Trade exhibit of the article in public,
distribution, broadcast, or communicate to the public works or copies shall be guilty of an offense and shall be liable on conviction to
of works without authority, knowing that electronic rights management imprisonment and fine as above mentioned.
information has been removed or altered without authority.
Possession of Infringing Copy of the Work

Sec. 216.2
In an infringement action, the court shall also have the power to order Applicable Case: Sanrio Case reported by Monteroyo which
the seizure and impounding of any article which may serve as evidence provided for the elements for 217.3 to occur which are the
in the proceedings, in accordance with the rules on search and seizure possession of the infringing copy and suspicion that the copy is
involving violations of intellectual property rights issued by the an infringement of the genuine article.
Supreme Court.
137
Atty Suarez: Those are the provisions on infringement. In 219.1. The natural person whose name is indicated on a work in the
infringement of copyright, there are also criminal liabilities just usual manner as the author shall, in the absence of proof to the
like trademarks and unfair competition. But, for patents, we contrary, be presumed to be the author of the work. This provision
need to have repeated infringement. shall be applicable even if the name is a pseudonym, where the
pseudonym leaves no doubt as to the identity of the author.
(Sections 218 – 221) 219.2. The person or body corporate whose name appears on an
Report by: Jamero, Pauline audio-visual work in the usual manner shall, in the absence of proof to
Note: Report was cut short due to time constraints. Report and the contrary, be presumed to be the maker of said work. (n)
transcription until 220 only.
How do you prove copyright ownership if you file infringement Sec. 220. International Registration of Works. –
cases? By filing an affidavit evidence under Sec. 218.
A statement concerning a work, recorded in an international register in
accordance with an international treaty to which the Philippines is or
What is affidavit evidence? may become a party, shall be construed as true until the contrary is
An affidavit made before the notary public by or on proved except:
behalf of the owner of the copyright in any work or
other subject matter in actions for infringement, 220.1. Where the statement cannot be valid under this Act or any
reciting the facts required to be stated under the IPC. other law concerning intellectual property.
(Section 218.1)
220.2. Where the statement is contradicted by another statement
recorded in the international register. (n)
Sec. 218. Affidavit Evidence. –
218.1. In an action under this Chapter, an affidavit made before a Sec. 220A. Disclosure of Information –
notary public by or on behalf of the owner of the copyright in any work
or other subject matter and stating that: Where any article or its packaging or an implement for
(a) At the time specified therein, copyright subsisted in the work or making it is seized or detained under a valid search and seizure under
other subject matter; this Act is, or is reasonably suspected to be, by an authorized
(b) He or the person named therein is the owner of the copyright; and enforcement officer, in violation of this Act, the said officer, shall,
(c) The copy of the work or other subject matter annexed thereto is a wherever reasonably practicable, notify the owner of the copyright in
true copy thereof. question or his authorized agent of the seizure or detention, as the case
may be. (Added by R.A. 10372)
The affidavit shall be admitted in evidence in any proceedings for an
offense under this Chapter and shall be prima facie proof of the matters
therein stated until the contrary is proved, and the court before which
such affidavit is produced shall assume that the affidavit was made by
Atty Suarez: When an action for infringement of copyright is
or on behalf of the owner of the copyright. (As amended by RA No. filed, the burden of proof belongs to the plaintiff. He has to
10372) produce evidence to show that indeed, he is the copyright
holder of the work and the affidavits required were discussed
earlier.
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject What about these registrations in foreign countries?
matter to which the action relates if the defendant does not put in issue
Different countries have different laws in Intellectual Property.
the question whether copyright subsists in the work or other subject
matter; and But we have the World Intellectual Property Office which
(b) Where the subsistence of the copyright is established, the plaintiff is the basis of almost all Intellectual Property Laws. We have
shall be presumed to be the owner of the copyright if he claims to be different laws but they are also similar because almost all are
the owner of the copyright and the defendant does not put in issue the based on the WIPO Rules.
question of his ownership.
(c) Where the defendant, without good faith, puts in issue the But when there's conflict in our Intellectual Property Code, then
questions of whether copyright subsists in a work or other subject that registration can be questioned. There's a rebuttable
matter to which the action relates, or the ownership of copyright in
presumption that if somebody's registered in another country,
such work or subject matter, thereby occasioning unnecessary costs or
delay in the proceedings, the court may direct that any costs to the
then that registration is valid.
defendant in respect of the action shall not be allowed by him and that
any costs occasioned by the defendant to other parties shall be paid by
him to such other parties. (n)
Sec. 219. Presumption of Authorship. –
138
April 23, 2019| Transcribed by: Monjid Abpi, Val Acevedo, author of the work. This provision shall be applicable
Kristal Alaban, Jilianne Paula Ampog, & Carla Louise Bayquen even if the name is a pseudonym, where the
pseudonym leaves no doubt as to the identity of the
author. (Sec. 219.1, IPC)
Sec. 218. Affidavit Evidence. - 218.1. In an action under this Chapter, • The person or body corporate whose name appears
an affidavit made before a notary public by or on behalf of the owner on a audio-visual work in the usual manner shall, in
of the copyright in any work or other subject matter and stating that: the absence of proof to the contrary, be presumed
(a) At the time specified therein, copyright subsisted in the work or
to be the maker of said work. (n)
other subject matter;
(Sec. 219.2, IPC)
(b) He or the person named therein is the owner of the copyright; and
Sec. 219. Presumption of Authorship. - 219.1. The natural person
(c) The copy of the work or other subject matter annexed thereto is a whose name is indicated on a work in the usual manner as the author
true copy thereof, shall be admitted in evidence in any proceedings for shall, in the absence of proof to the contrary, be presumed to be the
an offense under this Chapter and shall be prima facie proof of the author of the work. This provision shall be applicable even if the name
matters therein stated until the contrary is proved, and the court before is a pseudonym, where the pseudonym leaves no doubt as to the
which such affidavit is produced shall assume that the affidavit was identity of the author.
made by or on behalf of the owner of the copyright.
219.2. The person or body corporate whose name appears on a audio-
218.2. In an action under this Chapter: visual work in the usual manner shall, in the absence of proof to the
(a) Copyright shall be presumed to subsist in the work or other subject contrary, be presumed to be the maker of said work. (n)
matter to which the action relates if the defendant does not put in issue
the question whether copyright subsists in the work or other subject
matter; and Sec. 220. International Registration of Works. - A statement
concerning a work, recorded in an international register in accordance
(b) Where the subsistence of the copyright is established, the plaintiff with an international treaty to which the Philippines is or may become
shall be presumed to be the owner of the copyright if he claims to be a party, shall be construed as true until the contrary is proved except:
the owner of the copyright and the defendant does not put in issue the
question of his ownership. 220.1. Where the statement cannot be valid under this Act or any other
law concerning intellectual property.
(c) Where the defendant, without good faith, puts in issue the
questions of whether copyright subsists in a work or other subject 220.2. Where the statement is contradicted by another statement
matter to which the action relates, or the ownership of copyright in recorded in the international register. (n)
such work or subject matter, thereby occasioning unnecessary costs or
delay in the proceedings, the court may direct that any costs to the
defendant in respect of the action shall not be allowed by him and that A statement concerning a work, recorded in an international
any costs occasioned by the defendant to other parties shall be paid by register in accordance with an international treaty to which
him to such other parties. (n) the Philippines is or may become a party, shall be construed
as true until the contrary is proved
How do you prove copyright ownership if you file infringement EXCEPT:
cases? • Where the statement cannot be valid under this Act
• By filing an affidavit evidence under Sec. 218 or any other law concerning intellectual property.
(Sec. 220.1, IPC)
What is affidavit evidence? • Where the statement is contradicted by another
 An affidavit made before the notary public by or on statement recorded in the international register. (n)
behalf of the owner of the copyright in any work or (Sec. 220.2, IPC)
other subject matter
in actions for infringement, reciting the facts req
CHAPTER XVIII
uired to be stated under the IPC. (Sec. 218.1)
SCOPE OF APPLICATION
• The affidavit shall be admitted in evidence in any
proceedings for an offense under this Chapter and Sec. 221. Points of Attachment for Works under Sections 172 and 173.
- 221.1. The protection afforded by this Act to copyrightable works
shall be prima facie proof of the matters therein stated
under Sections 172 and 173 shall apply to:
until the contrary is proved, and the court before (a) Works of authors who are nationals of, or have their habitual
which such affidavit is produced shall assume that the residence in, the Philippines;
affidavit was made by or on behalf of the owner of the (b) Audio-visual works the producer of which has his headquarters or
copyright. (As amended by RA No. 10372) habitual residence in the Philippines;
(c) Works of architecture erected in the Philippines or other artistic
What is the presumption of authorship? works incorporated in a building or other structure located in the
Philippines;
(d) Works first published in the Philippines; and
• The natural person whose name is indicated on a work
(e) Works first published in another country but also published in the
in the usual manner as the author shall, in the absence Philippines within thirty days, irrespective of the nationality or residence
of proof to the contrary, be presumed to be the of the authors.
139
221.2. The provisions of this Act shall also apply to works that are to Sec. 224. Points of Attachment for Broadcasts. - 224.1. The provisions
be protected by virtue of and in accordance with any international of this Act on the protection of broadcasts shall apply to:
convention or other international agreement to which the Philippines is (a) Broadcasts of broadcasting organizations the headquarters of which
a party. (n) are situated in the Philippines; and
(b) Broadcasts transmitted from transmitters situated in the Philippines.

(e) Q: A book is published in Somalia by a citizen of Somalia.
Is it possible for him to obtain protection in RP? 224.2. The provisions of this Act shall also apply to performers who,
and to producers of sound recordings and broadcasting organizations
A: Yes. Provided, he should publish in RP within 30 days. He which, are to be protected by virtue of and in accordance with any
does not need to be a Filipino or a resident of RP to obtain international convention or other international agreement to which the
the protection. Philippines is a party. (n)
(221) 224.1. The provisions of this Act on the protection of broadcasts
shall apply to:
Q: What if you are not able to publish within the 30 day a. Broadcasts of broadcasting organizations the
window, can you ever obtain protection? headquarters of which are situated in the Philippines;
and
A: Yes. If you are a national of a country which ratified the b. Broadcasts transmitted from transmitters situated in
TRIPS or the Berne Convention, the treaty provisions require the Philippines.
that protection be extended to all citizens of signatory 224.2. The provisions of this Act shall also apply to:
countries. Therefore, if you publish in Japan, you are given  Performers,
protection in RP.  Producers of sound recording
 Broadcasting organizations
Sec. 222. Points of Attachment for Performers. - The provisions of this Which are to be protected by virtue of and in accordance with
Act on the protection of performers shall apply to: any national convention and other international agreement to
222.1. Performers who are nationals of the Philippines; which the Philippines is a party.
222.2. Performers who are not nationals of the Philippines but whose CHAPTER XIX
performances:
INSTITUTION OF ACTIONS
(a) Take place in the Philippines; or
(c) Are incorporated in sound recordings that are protected under this Sec. 225. Jurisdiction. - Without prejudice to the provisions of
Act; or Subsection 7.1(c), actions under this Act shall be cognizable by the
(d) courts with appropriate jurisdiction under existing law. (Sec. 57, P.D.
(c) Which has not been fixed in sound recording but are carried by No. 49a)
broadcast qualifying for protection under this Act. (n)
Without prejudice to the provisions of Subsection 7.1 (c), actions under
this act Act shall be cognizable by the courts with appropriate
The provisions of the law on the protection of performers shall jurisdiction under existing law.
apply to:
1. Performers who are national of the Philippines;
2. Performers who are not nationals of the Philippines Comment: Let’s go to this situation. So how many copyrights
but whose performances: existing for a single song? So we have the Composer of the
a. Take place in the Philippines; or music, the lyricist is different. They each have their own
b. Are incorporated in sound recordings that are copyright. So in other words, with respect with these two, the
protected under this Act; or protection refers to that who can perform the song. No one can
c. which has not been fixed in sound recording but are perform the song without the permission of the composer.
carried by the broadcast qualifying for protection under the law. Now, let’s go to the performer, the one who sings the song.
Definitely when this person sings the song for the first time,
this is with the blessing and the consent of the Composer and
Sec. 223. Points of Attachment for Sound Recordings. - The provisions
the lyricist.
of this Act on the protection of sound recordings shall apply to:
223.1. Sound recordings the producers of which are nationals of the
Philippines; and What is protected here? For example Sarah Geronimo sings the
223.2. Sound recordings that were first published in the Philippines. (n) song. What kind of protection does she get? Her performance.
Who can publicize her performance? NOBODY can publicize
The provisions of the law on the protection of sound recordings unless with her consent. It is not the song but it is her
shall apply to: performance that is protected.
1. Sound recordings the producers of which are nationals Now what about the Producer? Meron din. The same. Who can
of the Philippines; and publicize or air the song produced by the producer. And then
2. Sound recordings that were first published in the we have the Broadcaster, same thing meron ding copyright.
Philippines. So kahit isang song lang maraming copyright.
140
That’s why it is different from trademarks and patents because guidelines. These policies may be developed in relation to licensing
in trademarks it is only the order of the trademark that is agreements entered into by the learning institution with a collective
protected, and same with the patent, but in copyright there’s licensing organization.
so many branches of protection.
PART V
Sec. 226. Damages. - No damages may be recovered under this Act FINAL PROVISIONS
after four (4) years from the time the cause of action arose. (Sec. 58,
P.D. No. 49) Sec. 231. Equitable Principles to Govern Proceedings. - In all inter
partes proceedings in the Office under this Act, the equitable principles
of laches, estoppel, and acquiescence where applicable, may be
considered and applied. (Sec. 9-A, R.A. No. 165)
CHAPTER XX
MISCELLANEOUS PROVISIONS
Schools and universities shall adopt intellectual property
Sec. 227. Ownership of Deposit and Instruments. - All copies policies that would govern the use and creation of intellectual
deposited and instruments in writing filed with the National Library and property with the purpose of safeguarding the intellectual
the Supreme Court Library in accordance with the provisions of this Act creations of the learning institution and its employees, and
shall become the property of the Government. (Sec. 60, P.D. No. 49) adopting locally-established industry practice fair use
guidelines. These policies may be developed in relation to
Sec. 228. Public Records. - The section or division of the National
licensing agreements entered into by the learning institution
Library and the Supreme Court Library charged with receiving copies with a collective licensing organization.
and instruments deposited and with keeping records required under
this Act and everything in it shall be opened to public inspection. The INTELLECTUAL PROPERTY POLICY – a formal document
Director of the National Library is empowered to issue such safeguards which:
and regulations as may be necessary to implement this Section and  clarifies the ownership of and right to use the
other provisions of this Act. (Sec. 61, P.D. No. 49) IP resulting from the institution’s own or collaborative
R&D activities;
Sect. 229. Copyright Division; Fees. - The Copyright Section of the  sets out the rules of the institution on how to
National Library shall be classified as a Division upon the effectivity of accurately identify, evaluate,
this Act. The National Library shall have the power to collect, for the protect and manage IP for its further
discharge of its services under this Act, such fees as may be development, usually through some form of
promulgated by it from time to time subject to the approval of the commercialization; and
Department Head. (Sec. 62, P.D. 49a)
 provides a transparent framework for cooperation
with third parties and provides guidelines on
Comment: So if you remember, when we look at the functions the sharing of economic benefits arising from
of the Bureau of Copyright and other related rights, it is not the commercialization of IP.
incharge of registration, unlike the Bureau of Trademarks
and/or Bureau of Patents because under the law it is the TYPICAL CONTENTS OF AN IP POLICY
National Library and/or the SC, but as already mentioned, the Rules for the management of IP resulting from research
Bureau of Copyright is pointed as a receiving office only. It was Ownership of IP and research results
also mentioned, satellite offices, they can also receive deposits The person or department responsible for the protection and
and registrations, but everything is transmitted to the National management of IP
Library or the Supreme Court. Responsibilities of the institution, staff and students
Engagement with third parties
If you look at your cases, why are there infringement cases Management of conflicts of interest
filed with the BLA? (Ma’am was referring to Section 7) Because Incentives to reward researchers for their engagement with
the BLA has jurisdiction over the violations of the IP code, it is innovation and knowledge transfer for socio-economic benefit.
very general but infringement is one of the violations, as long
as the damages exceed PHP 200,000.00 .so even though that Rules for dissemination of knowledge and transfer of IP
is is stated that the courts has jurisdiction (like Special Publication/dissemination policy
commercial court), if there is a violation over 200k you can file Commercialization options and responsibilities
it with the court or with the BLA. But if less than 200k, then Distribution and allocation of benefits
only with the courts. That’s why sometimes you see, that an Protection of national or public interests
infringement is filed in the BLA because there’s substantive law
or IPC that provides for that. Rules regarding collaborative and contract research
Ownership of IP, including “background” IP held by participants
Sec. 230. Adoption of Intellectual Property (IP) Policies. – Schools and before a project is started and potential “foreground” IP arising
universities shall adopt intellectual property policies that would govern through the collaboration
the use and creation of intellectual property with the purpose of Responsibilities of all parties with respect to IP protection,
safeguarding the intellectual creations of the learning institution and its maintenance and funding
employees, and adopting logically-established industry practice fair use
141
Conflicts of interest in relation to collaborative and contract

research Sec. 2. Appeal to the Director General. - The decisions or final orders
Sharing of revenues of the Bureau Director shall become final and executory thirty
Collaborative research and contract research agreements (30) days after receipt of a copy thereof by the parties unless,
Who are mandated to adopt intellectual property within the same period,
policies? a motion for reconsideration is filed with the Bureau Director
1. Schools and or
an appeal to the Director General has been perfected;
2. Universities
Provided, that only one (1) motion for reconsideration of the decision
or order of the Bureau Director shall be allowed; and, in case the
What are these policies? motion for reconsideration is denied, the appellant or appellants
1. They would govern the: has/have the balance of the period prescribed above within which to
a. use and file the appeal.
b. creation of intellectual property
2. with the purpose of safeguarding the intellectual Upon proper motion citing meritorious reasons and the payment of the
creations of: full amount of appeal fee and other applicable fees before the
expiration of the reglementary period to perfect an appeal, the Office
a. the learning institution and
of the Director General may grant an additional period of fifteen (15)
b. its employees, and days within which to file the appeal. No further extension of the period
3. adopting locally-established industry practice fair to file the appeal, however, shall be allowed.
use guidelines
4. developed in relation to licensing agreements
a. entered into by the learning institution Sec. 3. Appeal Memorandum. - The appeal shall be perfected
by filling or submitting in the Office of the Director General the
b. with a collective licensing organization.
following:
a) an appeal memorandum in two (2) legible copies;
Sec. 232. Reverse Reciprocity of Foreign Laws. - Any condition, b) proof of service of a copy of the appeal memorandum on the
restriction, limitation, diminution, requirement, penalty or any similar appellee(2) and the Bureau Director concerned; and
burden imposed by the law of a foreign country on a Philippine national c) payment of the appeal fee and other applicable fees.
seeking protection of intellectual property rights in that country, shall
reciprocally be enforceable upon nationals of said country, within
Philippine jurisdiction. (n) Sec. 4. Contents of the Appeal Memorandum. - The appeal
memorandum shall:
a) State the full name or names, capacity and address or addresses of
In all inter partes proceedings in the Office under this Act, the parties;
the equitable principles of b) Indicate the material dates showing that it was filed on time;
 laches, c) Set forth concisely a statement of the matters involved, the
 estoppel, and issues raised, the specification of errors or arguments relied
 acquiescence upon for the allowance of the appeal; and
where applicable, may be considered and applied. d) Be accompanied by legible copies of the decision or final order of
the Bureau Director and of the material portions of the record as
Any
would support the allegations of the appeal.
 condition,
 restriction,
 limitation, Sec. 5. Action on the Appeal Memorandum. –
 diminution, a) If the appeal memorandum is filed on time and complies with the
 requirement, jurisdictional and formal requirements under these rules, the Office
 penalty or of the Director General shall order the appellee(s) or the
 any similar burden imposed Bureau Director concerned to file comment to the appeal
within 30 days from receipt of a copy of the order. The Bureau
by the law of a foreign country on a Philippine national Director shall also be ordered within the same period to forward the
seeking protection of intellectual property rights in that records of the case to the Office of the Director General.
country, shall reciprocally be enforceable upon nationals of b) The appeal shall be dismissed outright on any of the following
said country, within Philippine jurisdiction. grounds:
1. the appeal is filed out of time;
Sec. 233. Appeals. – 2. the subject of the appeal is an interlocutory order, or is not
a decision or final order;
233.1. Appeals from decisions of regular courts shall be governed by
the Rules of Court. Unless restrained by a higher court, the judgment 3. the appeal fee and other applicable fees are not paid within
of the trial court shall be executory even pending appeal under such the reglementary period.
c) If the Appeal Memorandum appeal is filed and the appeal fee and
terms and conditions as the court may prescribe.
other applicable fees have been paid on time, but is not accompanied
233.2. Unless expressly provided in this Act or other statutes, appeals by the requisite number of legible copies of the decision, and the
proof of service of a copy of the appeal to the adverse party and the
from decisions of administrative officials shall be provided in the
Bureau Director concerned, the Office of the Director General shall
Regulations. (n)
order the appellant(s) to submit or complete within five (5) days from
receipt of the order the said requirements. Failure to comply with the
UNIFORM RULES ON APPEAL order shall cause the dismissal of the appeal.
142
Sec. 6. Submission of Memoranda. - After appellee or the Bureau

Personnel not absorbed or transferred to the Office shall enjoy the
Director concerned has filed the comment to the appeal, the Office of
retirement benefits granted under existing law, otherwise, they shall
the Director General shall order the parties to submit their
be paid the equivalent of one month basic salary for every year of
respective memoranda within 15 days from receipt of a copy of the
service, or the equivalent nearest fractions thereof favorable to them
order.
on the basis of the highest salary received. (n)
Sec. 7. Clarificatory Hearing and Conferences. - At any time -Prior to the establishment of the IPO, the Bureau of Patents
before the promulgation of the decision, the Office of the Director Trademark and Technology Transfer under the DTI was the
General motu proprio or upon proper motion by any party, may call
one facilitating the IP rights. But now it is the IPO.
the parties for a clarificatory hearing or conference to take up
any matter pertinent to the resolution of the case including the
possibility of amicable settlement or mediation. -As we all know, we have 7 bureaus under the office right now.
[Inserting the 7 Bureaus]

Sec. 8. Submission for Decision.- The case is deemed submitted for
decision upon the filing of the memoranda and draft decisions, if any,
of the parties or the filing of the last pleading required by these Rules
Sec. 6. The Organization Structure of the IPO.
or by the Director General. xxx
6.2. The Office shall be divided into six (6) Bureaus, each of which
The case is also deemed submitted for decision after the lapse of the shall be headed by a Director and assisted by an Assistant Director.
period prescribed by these rules or by the Director General whether or These Bureaus are:
not the parties submitted the last pleading required.
a) The Bureau of Patents;
b) The Bureau of Trademarks;
Sec. 9. Decision.- The decision or order of the Director General c) The Bureau of Legal Affairs;
shall be final and executory fifteen (15) days after receipt of a copy
d) The Documentation, Information and Technology Transfer
thereof by the parties unless appealed to the Court of Appeals in
Bureau;
case of appeals from decisions or final orders of the BLA, BOP
and BOT, or the Secretary of the Department of Trade and
e) The Management Information System and EDP Bureau; and
Industry in case of appeals from the decisions or final orders f) The Administrative, Financial and Personnel Services Bureau; and
of the DITTB. The appeal shall not stay the decision or order of the g) The Bureau of Copyright and Other Related Rights."
Director General unless the Court of Appeals or the Secretary of the
Department of Trade and Industry directs otherwise. No motion for
Sec. 236. Applications Pending on Effective Date of Act. -
reconsideration of the decision or order of the Director General shall be
allowed.
236.1. All applications for patents pending in the Bureau of Patents,
On motion of the prevailing party and upon payment of the applicable Trademarks and Technology Transfer shall be proceeded with and
fees, the Office of the Director General may issue an order of execution patents thereon granted in accordance with the Acts under which said
pending appeal: Provided, That the motion is filed before the expiration applications were filed, and said Acts are hereby continued to be
of the 15-day period to appeal the decision of the Director General: enforced, to this extent and for this purpose only, notwithstanding the
Provided further, That the CA has not directed otherwise. If an appeal foregoing general repeal thereof: Provided, That applications for utility
has been perfected in the CA, the motion for execution of the decision models or industrial designs pending at the effective date of this Act,
of the Director General must be filed with the CA. shall be proceeded with in accordance with the provisions of this Act,
unless the applicants elect to prosecute said applications in accordance
with the Acts under which they were filed.
Sec. 234. Organization of the Office; Exemption from the Salary
Standardization Law and the Attrition Law. –
234.1. The Office shall be organized within one (1) year after the -There is a tabular form under this provision.
approval of this Act. It shall not be subject to the provisions of Republic
Act No. 7430.
234.2. The Office shall institute its own compensation structure:

Provided, That the Office shall make its own system conform as closely
as possible with the principles provided for under Republic Act No.
6758. (n)
Sec. 235. Abolition of the Bureau of Patents, Trademarks, and

Technology Transfer. - The Bureau of Patents, Trademarks, and
Technology Transfer under the Department of Trade and Industry is
hereby abolished. All unexpended funds and fees, fines, royalties and
other charges collected for the calendar year, properties, equipment
and records of the Bureau of Patents, Trademarks and Technology
Transfer, and such personnel as may be necessary are hereby
transferred to the Office.
143
 Under Memorandum Order No. 1040, pursuant to

Sec. 235.1 says that:
1) “The patents notwithstanding as of December 31,

1997, will be governed by RA 165.
2) The utility model or industrial design that is pending

as of Dec. 31, 1997 is governed by RA 8293 or the
IPC.
3) However, if the applicant elected RA 165 prior to June

13, 1998 RA 165 will govern this application.
4) In relation to marks or trade names pending as of Dec.

31, 1997, if it was amended by the applicant, RA 8293
or the IPC will govern.
But if it was not amended, Acts when the applications

were filed will govern which was RA 166.
Examples:
a. Industrial design in which the application was

filed on September 1, 1996, the effectivity of the
IPC was in January 1998, the applicable is RA
8293.
But if the applicant elected RA 165, it will govern

such application.
b. If the trademark application was filed on Sept.

1996, the effectivity of the IPC was in January
1998, if it was amended before June 30, RA 8923
will govern.
If there was no amendment, RA 165 will govern.
Sec. 237. Preservation of Existing Rights. - Nothing herein shall

adversely affect the rights on the enforcement of rights in patents,
utility models, industrial designs, marks and works, acquired in good
236.2. All applications for registration of marks or trade names faith prior to the effective date of this Act. (n)
pending in the Bureau of Patents, Trademarks and Technology
Transfer at the effective date of this Act may be amended, if -Any rights that the applicant has already acquired, we cannot
practicable to bring them under the provisions of this Act. The get that from them anymore.
prosecution of such applications so amended and the grant of
registrations thereon shall be proceeded with in accordance Sec. 238. Notification on Berne Appendix. - The Philippines shall
with the provisions of this Act. If such amendments are not by proper compliance with the requirements set forth under the
made, the prosecution of said applications shall be proceeded Appendix of the Berne Convention (Paris Act, 1971) avail itself of the
with and registrations thereon granted in accordance with the special provisions regarding developing countries, including provisions
Acts under which said applications were filed, and said Acts for licenses grantable by competent authority under the Appendix. (n)
hereby continued in force to this extent for this purpose only,
notwithstanding the foregoing general repeal thereof. (n) The Berne Convention for the Protection of Literary and Artistic
Works, usually known as the Berne Convention, is an
international agreement governing copyright, which was first
-In 1947, RA No. 165 in relation to patent and RA 166 in relation accepted in Berne, Switzerland, in 1886. The Berne
to trademarks, were enacted. Convention formally mandated several aspects of modern
copyright law. Currently, 176 nations are members of the
-In 1998 the IPC was passed and enforced.
Convention.
144
240.1. All Acts and parts of Acts inconsistent herewith, more

particularly Republic Act No. 165, as amended; Republic Act no. 166,
as amended; and Articles 188 and 189 of the Revised Penal Code;
Presidential Decree No. 49, including Presidential Decree No. 285, as
amended, are hereby repealed.
1) RA 165—An Act Creating A Patent Office, Prescribing Its Powers And

Duties, Regulating The Issuance Of Patents, And Appropriating Funds
Therefor
2) RA 166—An Act To Provide For The Registration And Protection Of

Trade-Marks, Trade-Names And Service-Marks, Defining Unfair
Competition And False Marking And Providing Remedies Against The
Same, And For Other Purposes
3) Article 188. Subsisting and altering trade-mark, trade-names, or

service marks.
4) Article 189. Unfair competition, fraudulent registration of trade-

mark, trade-name or service mark, fraudulent designation of origin,
and false description.
5) PD 49—Decree On The Protection Of Intellectual Property
6) PD 285-- Authorizing The Compulsory Licensing Or Reprinting Of

Educational, Scientific Or Cultural Books And Materials As A Temporary
Or Emergency Measure Whenever The Prices Thereof Become So
Exorbitant As To Be Detrimental To The National Interest
240.2. Marks registered under Republic Act No. 166 shall remain in
force but shall be deemed to have been granted under this Act and
shall be due for renewal within the period provided for under this Act
and, upon renewal, shall be reclassified in accordance with the
International Classification.
-This is in relation to:
SEC. 146. Renewal. – 146.1. A certificate of registration may be

-The Berne Convention for the protection of literary and artistic renewed for periods of ten (10) years at its expiration upon payment
works usually known as the Berne Convention is an of the prescribed fee and upon filing of a request.
international agreement governing copyright which was
accepted in Berne Switzerland in 1886. Right now, we are a Trade names and marks registered in the Supplemental Register under
member of the Berne Convention that is why it is why it is also Republic Act No. 166 shall remain in force but shall no longer be subject
applicable under our laws. to renewal.
239.3. The provisions of this Act shall apply to works in which copyright
Sec. 239. Appropriations. - The funds needed to carry out the protection obtained prior to the effectivity of this Act is subsisting:
provisions of this Act shall be charged to the appropriations of the Provided, That the application of this Act shall not result in the
Bureau of Patents, Trademarks, and Technology Transfer under the diminution of such protection. (n)
current General Appropriations Act and the fees, fines, royalties and
other charges collected by the Bureau for the calendar year pursuant
to Sections 14.1 and 234 of this Act. Thereafter such sums as may be
necessary for its continued implementations shall be included in the JURISPRUDENCE APPLYING OLD LAWS
annual General Appropriations Act. (n)
EMERALD GARMENT V COURT OF APPEALS
-Section 14 talks about the use of intellectual property rights
fees by the IPO while Section 234 talks about the abolition of RA 166 Trademark Law Intellectual Property
the Bureau of Patents Trademarks and Technology Transfer. Code
Prior use is required for No requirement of prior use
trademarks but actual use.
Sec. 240. Repeals. -
145
Sec. 2. In what courts applicable. – These Rules shall be observed by

the Regional Trial Courts designated by the Supreme Court as Special
Commercial Courts.
Atty. Suarez: In your IPC, if you see RTC or proper that refers
MANZANO V COURT OF APPEALS to the Special Commercial Court. Here in Davao, that’s RC
Branch 10. Special Commercial Court does not only handle
RA 165 Patent Law Intellectual Property intellectual property case, but also corporate cases, and maybe
Code tax cases.
Section 7. Inventions Section 21. Patentable
patentable. - Any Inventions. - Any technical Sec. 3. Applicability of the regular rules. – When the court determines
invention of a new and solution of a problem in any that the civil or criminal action involves complex issues, it shall issue a
special order that the regular procedure prescribed in the Rules of Court
useful machine, field of human activity which
shall apply, stating the reason therefor.
manufactured product or is new, involves an inventive
substance, process, or an step and is industrially Where applicable, the Rules of Court shall apply suppletorily to
improvement of any of the applicable shall be proceedings under these Rules.
foregoing, shall be Patentable. It may be, or
patentable. may relate to, a product, or Atty. Suarez: This Rule even though it’s new it’s not really
process, or an improvement complete. There is suppletory applicability of Rules of Court.
of any of the foregoing.
(Sec. 7, R.A. No. 165a) Under…
Rule 1 Section 4: In what case not applicable. —
These Rules shall not apply to election cases, land
registration, cadastral, naturalization and insolvency
proceedings, and other cases not herein provided
for, except by analogy or in a suppletory
character and whenever practicable and
convenient. (R143a)
In an intellectual property case that is filed before the special

commercial court, automatically, the IP Rules will apply, but we
have Section 3 [suppletory application of the RoC] that we read
earlier.
Sec. 241. Separability. - If any provision of this Act or the application
of such provision to any circumstances is held invalid, the remainder of
the Act shall not be affected thereby. (n) What is the first big difference between IP rules and the
ordinary rules? That is Section 4.
Sec. 242. Effectivity. - This Act shall take effect on 1 January 1998. Sec. 4. Executory nature of orders. – Any order issued by the court
(n) under these Rules is immediately executory unless restrained by a
superior court.
*Only the provisions discussed by Atty. Suarez are included in Atty. Suarez:
this TSN. Please refer to the full text of AM No. 10-3-10-SC for
the remaining provisions. “Immediately executory” — you can file a motion for execution
even though the losing files and appeal. Decisions of the special
A.M. No. 10-3-10-SC. commercial court are appealable. What kind of appeal? How?
RULES OF PROCEDURE “Unless restrained by a superior court” — Unless one asks for
FOR INTELLECTUAL PROPERTY RIGHTS CASES a TRO or a writ preliminary injunction.
Rule 1 Sec. 5. Verification and supporting documents. -- Any pleading,

GENERAL PROVISIONS motion, opposition, defense or claim filed by any interested party shall
be supported by verified statements that the affiant has read the same
and that the factual allegations therein are true and correct of his
Sec. 1. Title. – These Rules shall be known and cited as the ―Rules of personal knowledge or based on authentic records, and shall contain
Procedure for Intellectual Property Rights Cases. as annexes such documents as may be deemed by the party submitting
the same as supportive of the allegations in the affidavits.
146
Atty. Suarez: •Other violations of intellectual property rights as may be defined by

law.
“Any pleading, motion, opposition, defense or claim xxx shall
be supported by verified statements” — All pleadings, motion Atty. Suarez:
(ANY!), etc. that are filed before the special commercial in an
intellectual property case has to be verified vs. Under the INFRINGEMENT CASES: Lahat ng infringement cases you
regular Rules where not all pleadings need to be verified. can file before the special commercial court. What about the
Bureau of Legal Affairs? It is the quasi judicial body in the IPO
Sec. 6. Duty of the clerk of court. – It shall be the duty of the branch and under the IPC. The BLA has jurisdiction over all violations
clerk of court to notify in writing the Director-General of the Intellectual of the IPC, if the damages are not less than 200,000 pesos.
Property Office (IPO) of any action, suit or proceeding involving If you notice the cases you read in IP, why are infringement
a copyright, trademark, service mark, patent, industrial cases filed before the BLA? The BLA can try infringement case
design, utility model, undisclosed information and technology
because infringement is a violation of the IPC. But if the
transfer agreement. Such notice shall set forth: the names and
addresses of the litigants and the copyright, trademark, service mark, damages if less than 200,000, it shall be filed before the regular
patent or design registrations involved and, where applicable, the courts. What if it’s 300,000 pesos?Is it required to be filed
numbers of their certificates of registration. The notice shall be before the BLA? NO, it could also be filed before the special
submitted within one (1) month after the filing thereof. commercial court. If an infringement case is filed and the
amount of damages is not less than 200,000, it will be filed
Atty. Suarez: Even if the special commercial court has before either special commercial court or BLA.
jurisdiction over intellectual property cases, the IPO is always
involved and informed of every action that is filed. RA 8293 Section 10. The Bureau of Legal Affairs. -
The Bureau of Legal Affairs shall have the following
Where are the cases that are filed before ether special functions:
commercial court? Rule 2 Section 1 xxx
CIVIL PROCEDURE 10.2.

(a) Exercise original jurisdiction in administrative
Rule 2 complaints for violations of laws involving intellectual
NATURE OF PROCEEDINGS property rights: Provided, That its jurisdiction is
limited to complaints where the total damages
Sec. 1. Scope. – claimed are not less than Two hundred
Rules 2 to 9 shall apply to all civil actions for violations of intellectual thousand pesos (P200,000): xxx
property rights provided for in Republic Act 8293 or the Intellectual
Property Code, as amended, including:
CANCELLATION OF REGISTRATION: You do not file that
•Civil actions for Infringement of Patent (Section 76), Utility Model
before the regular courts. You file that before the Bureau of
(Section 108) and Industrial Design (Section 119),
Legal Affairs. But hone it comes to a collective mark, you don’t
•Trademark Infringement (Section 155 in relation to Section 163), go to the BLA but to the special commercial courts.
•Unfair Competition (Section 168 in relation to Section 163), TAKE NOTE OF SECTION 2!
•Actions concerning trademark license contracts (Section 150 in Sec. 2. Special Commercial Courts in the National Capital Judicial
relation to Section 163), Region with authority to issue writs of search and seizure enforceable
nationwide. – Special Commercial Courts in Quezon City, Manila,
•Actions concerning imported merchandise or goods bearing infringing Makati, and Pasig shall have authority to act on applications for the
marks or trade names (Section 166 in relation to Section 163), issuance of writs of search and seizure in civil actions for violations of
the Intellectual Property Code, which writs shall be enforceable
•Actions for cancellation of the registration of a collective mark (Section nationwide. The issuance of these writs shall be governed by the rules
167 in relation to Section 163), prescribed in Re: Proposed Rule on Search and Seizure in Civil Actions
for Infringement of Intellectual Property Rights (A.M. No. 02-1-06-SC,
•False Designations of Origin; which took effect on February 15, 2002). Within their respective
territorial jurisdictions, the Special Commercial Courts in the judicial
•False Description or Representation (Section 169 in relation to Section regions where the violation of intellectual property rights occurred shall
163), have concurrent jurisdiction to issue writs of search and seizure.
•Breach of Contract (Section 194),
Rule 3
•Civil actions for infringement of copyright, moral rights, performers’ COMMENCEMENT OF ACTION
rights, producers’ rights, and broadcasting rights (Sections 177, 193,
203, 208, 211, and 216), and Sec. 1. Pleadings. – The only pleadings allowed to be filed are
the complaints, compulsory counterclaims and cross-claims
147
pleaded in the answer, and the answers thereto. All pleadings

shall be verified. The affidavits in question-and-answer format referred to in Sec. 5
hereof and the relevant evidence shall be made part of the complaint.
The complaint shall include a certification that the party commencing
Atty Suarez: Under the regular rules, there are 7 pleadings, the action has not filed any other action or proceeding involving the
but under this Rule, there are only 2 — complaint and the same issue or issues before any tribunal or agency nor is such action
answer. The answer must contain the compulsory counterclaim or proceeding pending in other quasi-judicial bodies; Provided,
and cross claim, and the answers thereto are also considered however, that if any such action is pending, the status of the same
an answer. And remember, as discussed earlier, all pleadings must be stated, and should knowledge thereof be acquired after the
must be verified. filing of the complaint, the party concerned shall undertake to notify
the court within five (5) days from such knowledge.
When the party-litigant is a corporation, the verification/certification of
Sec. 2. Who may file an action under these Rules. – Any non-forum shopping required should be executed by a natural person
intellectual property right owner, or anyone possessing duly authorized by the corporation, through a special power of attorney
any right, title or interest under claim of ownership in or a board resolution for the purpose, attached to the complaint.
any intellectual property right, whose right may have been
violated, may file an action under these Rules. The complaint shall further be accompanied by proof of payment of
docket and other lawful fees.
Any person who is a national or who is domiciled or has a real Failure to comply with the foregoing requirements shall not be
and effective industrial establishment in a country which is a remedied by mere amendment of the complaint. The court, motu
party to any convention, treaty or agreement relating to proprio, shall dismiss the case without prejudice.
intellectual property rights or the repression of unfair
competition, to which the Philippines is also a party, or extends The submission of a false certification or non-compliance with any of
reciprocal rights to nationals of the Philippines by law, shall be the undertakings therein shall constitute indirect contempt, without
entitled to file an action under these Rules. prejudice to the corresponding administrative, civil and criminal
liabilities. If the acts of a party or his counsel clearly constitute willful
and deliberate forum shopping, the same shall be a ground for
Any foreign national or juridical person who meets the summary dismissal with prejudice and shall constitute direct contempt.
requirements of the immediately preceding paragraph, and
does not engage in business in the Philippines, may also file an
Atty Suarez:
action under these Rules.
• What a complaint should state must have to be stated in the
complaint whether under the regular rules or the Rules as
Atty Suarez: These are the possible plaintiffs in a civil action:
long as capacity to sue are there. Remember, it has to be
registered owner of trademarks, patentee, nadale sa mga TTA
verified.
or licensing agreement, copyright holders, producers,
broadcasters. This is just a reiteration of Section 3 of our IPC. • You must attach a Certificate of Non Forum Shopping, and
Can a foreigner file? Yes provided he meets the requirements most important of all, pay the docket fees.
of Section 3 of IPC. • Juridical persons — needs what? Board Resolution to sign the
Section 3. International Conventions and Reciprocity. - Certificate of Non Forum Shopping and Verification.
Any person who is a national or who is domiciled or has • Who can sign the Complaint? Party or Lawyer
a real and effective industrial establishment in a country • What about Certificate of Non Forum Shopping & Verification?
which is a party to any convention, treaty or agreement Party and the lawyer cannot be granted a SPA to sign
relating to intellectual property rights or the repression of • “The court, motu proprio, shall dismiss the case without
unfair competition, to which the Philippines is also a prejudice.” — Under the regular rules, complaint pa lang
party, or extends reciprocal rights to nationals of the tayo, the court cannot dismiss, kailangan ng lack of
Philippines by law, shall be entitled to benefits to the jurisdiction, litis pendentia, etc.… pero di pwede motu
extent necessary to give effect to any provision of such proprio. But here, pwede maghanap ng ground for dismissal
convention, treaty or reciprocal law, in addition to the ang court even at this early stage.
rights to which any owner of an intellectual property right • Under Rule 7 Section 5 of the RoC — Certificate of Non Forum
is otherwise entitled by this Act. (n) Shopping
Sec. 3. Form and contents of the complaint. – The complaint shall be

Sec. 4. Prohibited pleadings. – The following pleadings are prohibited:
verified and shall state the full names of the parties to the case. Facts 1) Motion to dismiss;
showing the capacity of a party to sue or be sued, or the authority of
2) Motion for a bill of particulars;
a party to sue or be sued in a representative capacity, or the legal 3) Motion for reconsideration of a final order or judgment, except with
existence of an organized association of persons that is made a party, regard to an order of destruction issued under Rule 20 hereof;
must be averred. In case of juridical persons, proof of capacity to sue
4) Reply;
must be attached to the complaint.
5) Petition for relief from judgment;
6) Motion for extension of time to file pleadings or other written
The complaint shall contain a concise statement of the ultimate facts submissions, except for the answer for meritorious reasons;
constituting the complainant’s cause or causes of action. It shall specify
7) Motion for postponement intended for delay;
the relief(s) sought, but it may add a general prayer for such further or 8) Third-party complaint;
other relief(s) as may be deemed just or equitable.
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9) Intervention; Is there a need for a pending case for an application of

10) Motion to hear affirmative defenses; and a search warrant? NO.
11) Any pleading or motion which is similar to or of like effect as any
of the foregoing. The situation here is that wala pang kaso.
Atty Suarez: The court issue the writ and goods of Y are sized form the
• Motion to dismiss — the court can motu proprio dismiss. Wala warehouse. Once the goods are seized, X should file an action
pa gyud exception. Ang Summary Rule may exception. Ang for infringement. If he does not file within 31 calendar days
Small Claims Rule, meron rin. YOU CANNOT FILE A MOTION from date of issuance of the writ with the appropriate court
OT DISMISS. and/or appropriate quasi-judicial agency — meaning the special
commercial court or BLA — Y may file a motion to lift the writ
• Motion for reconsideration of a final order or judgment —
with notice to X and the issuing court may lift its write an order
what does that mean? APPEAL na direcho. Under regular
return seized goods to Y.
rules, pwede ka mag MR and another period is granted to you
after denial of MR to file notice of appeal.
What if Y does not file a motion to lift? The court shall order
• Motion for postponement intended for delay —You can the disposal of the goods, as may be warranted, after hearing
postpone. But you must have really a very good reason. If
with notice to the parties.
the court thinks that it is just to delay the case, it will be
denied.
*Mentions Live’s Jeans
• Motion to hear affirmative defenses — If you file your answer,
just file your answer. Under the regular rules, you can file a Rule 4
motion to hear affirmative defenses was if a motion to dismiss ANSWER
has been filed. Dito, wala.
Sec. 1. Summons. – The summons and the complaint, including its
Sec. 5. Affidavits. – The affidavits required to be submitted with the attachments, shall be served not later than five (5) days from receipt
complaint shall be in question-and-answer format numbered of the complaint by the court to which it is assigned or raffled.
consecutively, and shall state only facts of direct personal knowledge
of the affiants which are admissible in evidence. The affidavits shall
also show the competence of the affiants to testify to the matters Atty Suarez: Under the regular courts, once the complaint is
stated therein. filed, the court will issue summons and the summons shall be
served, without any time frame! But under here, the summons
A violation of this requirement may subject the party or the counsel shall be served not later than five (5) days from receipt of the
who submits the same to disciplinary action, and shall be a ground for complaint by the court.
the court to order that the inadmissible affidavit or portion thereof be
expunged from the records.
Sec. 2. Service of summons, orders and other court processes.
— Summons, orders and other court processes may be served by the
Atty Suarez: It should be of the own personal knowledge of sheriff, his deputy or other proper court officer or for justifiable
the affiant. Hindi pwede ang hearsay or kwento. reasons, by the counsel or representative of the plaintiff or any suitable
person authorized by the court issuing the summons.
Sec. 6. Failure to file complaint where a writ of search and seizure is
issued. – Upon motion of the party whose goods have been seized, Any private person who is authorized by the court to serve summons,
with notice to the applicant, the issuing court may lift its writ and order orders and other court processes shall, for that purpose, be considered
the return of the seized goods if no case is filed with the appropriate an officer of the court.
court and/or appropriate quasi-judicial agency, including the
Intellectual Property Office of the Philippines, within thirty-one (31) When the defendant is a foreign private juridical entity, service may be
calendar days from the date of issuance of the writ. made on its resident agent designated in accordance with law for that
purpose, or, if there be no such agent, on the government official
If no motion for the return of the seized goods is filed within sixty (60) designated by law to that effect, or on any of its officers or agents
days from the issuance of the writ under the preceding paragraph, the within the Philippines. If the foreign private juridical entity is not
court shall order the disposal of the goods, as may be warranted, after registered in the Philippines or has no resident agent, service may, with
hearing with notice to the parties. leave of court, be effected out of the Philippines through any of the
following means:
Atty Suarez: a) By personal service coursed through the appropriate court in the
foreign country with the assistance of the Department of Foreign
SITUATION Affairs;
X files na application for writ of search and seizure of alleged
infringing items against Y. Maybe there was infringement of b) By publication once in a newspaper of general circulation in the
patent like when someone is producing patentee’s invention or country where the defendant may be found and by serving a copy of
the summons and the court order by registered mail at the last known
someone is selling goods with trademark that is confusingly
address of the defendant;
similar to that of a registered trademark.
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c) By facsimile or any recognized electronic means that could generate The same, 15 days from receipt of the summons and 10 days
proof of service; or for cross-claims and compulsory counterclaims. Cross-claims and
compulsory counterclaims not included in the answer shall be
d) By such other means as the court may, in its discretion, direct. considered barred.
Should either personal or substituted service fail, summons by Affirmative and negative defenses not pleaded in the answer
publication shall be allowed. In the case of juridical entities, summons shall be deemed waived. So in other words, you don't get your
by publication shall be done by indicating the names of the officers or
hearing on your affirmative defenses. You don't but you must
their duly authorized representative.
plead them in your answer, whatever affirmative defense there,
ilagay mo lahat.
Q. Who may served?
A. Pwede na ang counsel or representative of the plaintiff. This Q. What are those that are not deemed waived?
is not found under the regular rules, provided there are A. The four, under Rule 9, Section 1
justifiable reasons and take note, anyprivate person who is 1. Court has no jurisdiction over the subject matter;
authorized by the court to serve summons, orders and other 2. When there is another action pending between the
court processes shall, for that purpose, be considered an officer same parties for the same cause (Litis Pendentia);
of the court. 3. When the action is barred by a prior judgment (Res
Judicata); and
Q. How is service made if the defendant is foreign private 4. Barred by the statute of limitations (Prescription)
juridical entity?
A. Under Rule 14, Section 12, there are three ways. But under
Sec. 4. Effect of failure to answer. — Should the defendant fail to
this Rule, service may be made with leave of court, this is for answer the complaint within the period stated above, the court, motu
out of the country, not registered in the Philippines and has no proprio or on motion of the plaintiff, shall render judgment as may be
resident agent through any of the following means: warranted by the allegations of the complaint, as well as the affidavits
and other evidence on record, unless the court in its discretion requires
a)By personal service coursed through the the plaintiff to submit additional evidence. Such reception of additional
appropriate court in the foreign country with the evidence may be delegated to the clerk of court. In no case shall the
assistance of the Department of Foreign Affairs; court award a relief beyond or different from that prayed for; Provided,
that the court may, in its discretion, reduce the amount of damages
b) By publication once in a newspaper of general
and attorney's fees claimed for being excessive or otherwise
circulation in the country where the defendant may be unconscionable.
found and by serving a copy of the summons and the
court order by registered mail at the last known
Q. What if there is a failure of the defendant to answer?
address of the defendant;
A. Under the regular rules, what happens and the plaintiff does
c) By facsimile or any recognized electronic means
do anything. Wala, magcontinue lang. But under this Rule, it
that could generate proof of service; or
says that the court may motu propio or by motion of the
d) By such other means as the court may, in its
plaintiff, render judgment as may be warranted by the
discretion, direct.
allegations of the complaint. Wala ng order of default, diretso
na sa judgment by default. The court will decide motu propio,
Should either personal or substituted service fail, publication is
based on the complaint of the plaintiff unless the court in its
allowed agad-agad. Unlike in Rule 14, masyadong stricto,
discretion requires the plaintiff to submit additional evidence,
where publication is only allowed in certain situations. Dito,
yung mga presentation of evidence ex parte and then the clerk
failure of personal or substitued, publication diretso.
of court can have the ex parte presentation under Section 4.
In case of juridical entities or foreign corporations, summons of
publication shall done in any given name of the officers or duly Sec. 5. Affidavits. — The affidavits required to be submitted with the
answer shall be in questionand-answer format numbered
authorized representatives. This does not only apply to foreign
consecutively, and shall state only facts of direct personal knowledge
corporations but also domestic corporations
of the affiants which are admissible in evidence. The affidavits shall
also show the competence of the affiants to testify to the matters
Sec. 3. Answer. — Within fifteen (15) days from service of summons, stated therein. A violation of this requirement may subject the party or
the defendant shall file his answer to the complaint and serve a copy the counsel who submits the same to disciplinary action, and shall be
thereof on the plaintiff. Affirmative and negative defenses not pleaded ground for the court to order that the inadmissible affidavit or portion
in the answer shall be deemed waived, except when the court has no thereof be expunged from the records.
jurisdiction over the subject matter, when there is another action
pending between the same parties for the same cause, or when the
action is barred by a prior judgment or by the statute of limitations.
Q. Anong klaseng affidavits?
Cross-claims and compulsory counterclaims not asserted in the answer A. Judicial Affidavits, wag ka'g magsubmit ng affidavit na
shall be considered barred. The answer to counterclaims or cross- simple. It says here, the answer shall be in question and answer
claims shall be filed and served within ten (10) days from service of the format. So it is a judicial affidavit. A violation of this
answer in which they are pleaded. requirement may subject the party or the counsel who submits
the same to disciplinary action, and shall be ground for the
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court to order that the inadmissible affidavit or portion thereof

be expunged from the records.
Rule 6: PRE-TRIAL
So if the defendant wants to attack to your answer, do not
attach a simple affidavit, you have to attach a judicial affidavit. Sec. 1. Pre-trial; mandatory nature. — Within five (5) days after
the period for availing of, or compliance with, any of the modes of
discovery prescribed in Rule 5 hereof, whichever comes later, the
RULE 5: MODES OF DISCOVERY handling court shall immediately set the case for pre-trial and direct
the parties to submit their respective pre-trial briefs. The parties shall
file with the court and furnish each other copies of their respective pre-
Sec. 1. In general. — A party can avail of any of the modes of trial briefs in such manner as to ensure receipt by the court, and the
discovery not later than thirty (30) days from the joinder of issues. other party at least five (5) days before the date set for the pre-trial.
Q. When can avail of any of the modes of discovery? The parties shall set forth in their pre-trial briefs, among other matters,
A. Not later than thirty (30) days from the joinder of issues. the following:
a) Brief statement of the nature of the case, which shall summarize the
theory or theories of the party in clear and concise language;
Q. When are the issues joint? b) Allegations expressly admitted by either or both parties;
A. Upon the filing of an answer. So limited ang period of the c) Allegations deemed admitted by either or both parties;
parties to avail the mode of discovery, 30 days lang. Beyond d) Documents not specifically denied under oath by either or both
the 30 days, wala na. parties;
e) Amendments to the pleadings;
f) Statement of the issues, which shall separately summarize the factual
Sec. 2. Objections. — Any mode of discovery, such as interrogatories,
and legal issues involved in the case;
request for admission, production or inspection of documents or things,
may be objected to within ten (10) days from receipt of the request for g) Names, addresses and contact numbers of affiants and their judicial
affidavits supporting the parties' respective positions on each of the
discovery and only on the ground that the matter requested is
issues;
manifestly incompetent, immaterial, or irrelevant or is undisclosed
h) All other pieces of evidence, whether documentary or otherwise, and
information or privileged in nature, or the request is for harassment.
their respective purposes;
The requesting party may comment in writing within three (3) days
i) Specific proposals for an amicable settlement;
from receipt of the objection. Thereafter, the court shall rule on the
j) Possibility of referral to mediation or other alternative modes of
objection not later than ten (10) days from receipt of the comment or
dispute resolution;
the expiration of the three-day period.
k) Requests for closed door hearings in cases involving trade secrets,
undisclosed information and patents; and
Q. When can objections to any mode of discovery be made? l) Such other matters as may aid in the just and speedy disposition of
A. Ten (10) days from receipt of the request for discovery the case.
Grounds of objections are limited. What are the Comment: Mandatory ang pre-trial, under the IP Rule within
grounds? 5 days after the period for availing of, or compliance with, any
 The matter requested is manifestly incompetent, of the modes of discovery. So una ang mode of discovery ha,
immaterial, or irrelevant or is undisclosed information within 30 days from filing the answer tapos pre-trial. Whichever
or privileged in nature comes later, the handling court shall immediately set the case
 The request is for harassment for pre-trial and direct the parties to submit their respective
pre-trial briefs. Wala na yung rule na kailangan pa ang plaintiff
Procedure after objections are made: mag set ng case for pre-trial, yung court na diretso.
 The requesting party may comment in writing within
three (3) days from receipt of the objection. Note that the parties shall file to the court and furnish each
 The court shall rule on the objection not later than ten other copies of their respective pre-trial briefs to ensure receipt
(10) days from receipt of the comment or the by the court, and the other party at least five (5) days before
expiration of the three-day period. the date set for the pre-trial.
Q. What should be state in the pre-trial brief?
Sec. 3. Compliance. — Compliance with any mode of discovery shall A. May mga additional statements pag sa IP cases like:
be made within ten (10) days from receipt of the request for discovery, - Requests for closed door hearings in cases involving trade
or if there are objections, from notice of the ruling of the court. secrets, undisclosed information and patents;
Sec. 4. Sanctions. — The sanctions prescribed by the Rules of Court Sec. 2. Nature and purpose of pre-trial. — Upon appearance of
in relation to the modes of discovery shall apply. the parties during the pre-trial, the court shall order the parties to
appear before the Philippine Mediation Center in accordance with
mediation rules of the Supreme Court.
Modes of discovery is very simple. The same mode of discovery
available but only for limited periods. Should the parties fail to settle the case after mediation, the pairing
court shall conduct judicial dispute resolution (JDR) conferences upon
151
request of the court handling the case in accordance with the guidelines entitled to a judgment on the counterclaim unless the court requires
of the Supreme Court. evidence ex parte for a judgment. Any cross-claim shall be dismissed.
Pending mediation before the Philippine Mediation Center and JDR with The failure of the defendant to submit a pre-trial brief within the
the pairing court, the court handling the case shall suspend the specified period or to appear in the pre-trial shall be a cause for the
proceedings. If either mediation or JDR fails, the case shall be returned dismissal of the counterclaim. The plaintiff who submits a pre-trial brief
to the court with dispatch for the pre-trial. and who appears during the pre-trial shall be entitled to a judgment on
the complaint unless the court requires evidence ex parte for a
Before the pre-trial, the court may require the marking of documentary judgment.
or object evidence by the branch clerk of court or any authorized court
personnel.
Comment: The same with Rule 18.
During the pre-trial, the court shall, with its active participation, ensure
that the parties consider in detail all of the following: Sec. 4. Termination. — The pre-trial shall be terminated not later
a) The possibility of an amicable settlement; than thirty (30) working days after its commencement, excluding the
b) Facts that need not be proven, either because they are matters of period for mediation and judicial dispute resolution (JDR).
judicial notice, or expressly or deemed admitted;
c) Permissible amendments to the pleadings;
d) The possibility of obtaining stipulations and admissions of facts and Q. When shall pre-trial be terminated?
documents; A. Not later than thirty (30) working days after its
e) Objections to the admissibility of testimonial, documentary and other commencement, excluding the period for mediation and judicial
evidence; dispute resolution.
f) Submission of judicial affidavits of witnesses and objections to the
form or substance of any affidavit, or part thereof;
Sec. 5. Record of pre-trial. — The proceedings in the pre-trial shall
g) Simplification of the issues; and
be recorded, excluding mediation and JDR. Within ten (10) days after
h) Such other matters as may aid in the speedy and summary
the termination of the pre-trial, the court shall issue an order which
disposition of the case.
shall recite in detail the matters taken up in the pre-trial, the actions
taken on such matters, the amendments allowed in the pleadings, and
Comment: We already know this. But it says here, upon the the agreements or admissions made by the parties as to any of the
appearance of the parties during pre-trial. Sa tingin niyo, matters considered. The court shall rule on all objections to or
magpre-trial sila? Under this Rule, hindi. The parties will submit comments on the admissibility of any documentary or other evidence,
including any affidavit or any part thereof.
their pre-trial briefs at least 5 days before the pre-trial
conference. Pagdating ng parties, di magpre-trial. Anong The court shall indicate whether the case shall be submitted for
gagawin? They will be sent to the mediation center, they will decision immediately after pre-trial, or on the basis of position papers,
try to settle the issues. or after clarificatory hearing, or after trial
Q. Should they fail to settle?

Comment: The pre-trial is recorded.
A. The pairing the court shall conduct conferences upon
request of the court handling the case. So if they failed to
Let's go the part that is different. After pre-trial, there are
settle, ipadala sila sa another RTC, not the Special Commercial
several situations that may arise. There is a possibility that the
Court but the pairing court who will try again to settle the issues court will, indicate whether the case be submitted for decision
between the parties.
immediate after pre-trial.
Pending mediation before the Philippine Mediation Center and
So the court can say, "We don't need to go to trial anymore, I
JDR (Judicial Dispute Resolution), the court handling the case
will decide the case", pwede yan sabihin ng judge. So the
shall suspend the proceedings. So the special commercial
different scenarios:
court will just wait. So If either mediation or JDR fails, the case
i. decision immediately after pre-trial
shall be returned to the court with dispatch for the pre-trial. ii. on the basis of position papers -
Diyan pa lang ang pre-trial mangyayari.
iii. after clarificatory hearing
iv. after trial.
Before the pre-trial, the court may require the marking of
documentary or object evidence by the branch clerk of court or
So during pre-trial, that will be determined by the court kung
any authorized court personnel.
anong gusto niya, four scenarios. if the court renders a decision
Q. What is done during the pre-trial? after pre-trial, tapos na ang kaso.
A. The same, submission of judicial affidavits as well will done
during this time.
Sec. 6. Submission of position papers. — If the case is to be
submitted for decision on the basis of position papers, the court, in the
Sec. 3. Effect of failure to appear. — The failure of the plaintiff to Pre-Trial Order, shall direct the parties to file simultaneously their
submit a pre-trial brief within the specified period or to appear in the respective position papers, setting forth the law and the facts relied
pre-trial shall be a cause for the dismissal of the complaint with upon by them and attaching thereto affidavits of their witnesses in
prejudice, unless otherwise ordered by the court. The defendant who question-and-answer format numbered consecutively, and other
submits a pre-trial brief and who appears during the pre-trial shall be evidence on the factual issues defined in the order, together with their
152
respective draft decisions, if so desired, within a non-extendible period

of thirty (30) days from receipt of the order. No reply or rejoinder shall
be allowed.
RULE 7: CLARIFICATORY HEARING AND TRIAL
Comment: After clarificatory hearing, or after trial.: Now,
what if the court decides, parties you just submit your position Sec. 1. Clarificatory hearings. — During clarificatory hearing or
papers. The court direct the parties to file simultaneously their hearings, the parties must have representatives and their counsels
respective position papers, setting forth the law and the facts ready for questioning by the court.
relied upon by them and attaching thereto affidavits of their
witnesses in question-and-answer format numbered Immediately after termination of such clarificatory hearing or hearings,
consecutively. the court shall order the parties to simultaneously file, within ten (10)
days from such date, their respective position papers as required under
Section 6, Rule 6, above.
Q. When shall the position papers be submitted?
A. Within a non-extendible period of thirty (30) days from
receipt of the order. No reply or rejoinder shall be allowed. Kase Q. What happens in clarificatory hearing? Who will attend?
sabay, nobody knows what the other party will say and nobody A. The parties must have representatives and their counsels
can reply with the position paper. ready for questioning by the court.
After the submission of the position paper, possible na Q. Sino ang magtatanong?
magdecide na ang court. A. Unlike in formal trial where may direct or cross examination,
in a clarificatory hearing, it is the judge that will ask
questions. Immediately after termination of such clarificatory
Sec. 7. Clarificatory hearing or hearings following pre-trial. —
If there are matters to be clarified, the court shall include in the Pre- hearing or hearings, the court shall order the parties to
Trial Order the schedule of clarificatory hearing or hearings, which must simultaneously file, within ten (10) days from such date, their
commence within thirty (30) days from the termination of the pre-trial, respective position papers as required under Section 6, Rule 6,
and be completed not later than fifteen (15) days thereafter. above.
At least three (3) days before the scheduled clarificatory hearing, the So here, pwede na clarificatory hearing then followed by
parties may submit clarificatory questions which the court, in its position papers.
discretion, may propound.
Sec. 2. Clarificatory hearing or hearings following submission

Q. What if the court says, gusto ko ng clarificatory hearing hindi of position papers. — Upon submission of the parties' position papers
position paper. immediately after the pre-trial as required under Sec. 6 of the
A. Pwede rin. If there are matters to be clarified, the court shall preceding Rule, and the court deems it necessary to hold clarificatory
include in the Pre-Trial Order the schedule of clarificatory hearing or hearings on any matter before rendering judgment, it shall
hearing or hearings, IT must commence within thirty (30) days set the case for such purpose.
from the termination of the pre-trial, and be completed not
The order setting the case for clarificatory hearing must be issued not
later than fifteen (15) days thereafter.
later than fifteen (15) days after receipt of the last position papers or
the expiration of the period for filing the same and the clarificatory
At least three (3) days before the scheduled clarificatory hearing must be scheduled within fifteen (15) days from the issuance
hearing, the parties may submit clarificatory questions which of such order and completed not later than fifteen (15) days.
the court, in its discretion, may propound. So here, pre-trial
then clarificatory hearing. During said clarificatory hearing or hearings, the parties must have
representatives and their counsels ready for questioning by the court.
The court can decide the case after the clarificatory hearing, if
the court is satisfied. Q. What if nauna ang position papers and the court is not yet
satisfied?
Sec. 8. Schedule of trial. — If the court deems it necessary to hold A. Pwede mag clarificatory hearing. So reverse ito, tapos may
trial, the court shall include in the Pre-Trial Order the schedule of mga period pa to.
hearings to be conducted expeditiously and completed not later than
sixty (60) days from the date of the initial trial which must commence
Sec. 3. Judicial affidavits. — The judicial affidavits shall serve as the
within thirty (30) days from the termination of the pre-trial.
direct testimonies of the witnesses during trial, subject to cross-
examination by the adverse party.
Q. What if the decision of the court is, mag-trial tayo?
A. The court shall include in the Pre-Trial Order the schedule Comment: This talks about trial. The judicial affidavits shall serve as
of hearings to be conducted. The initial trial which must the direct testimonies of the witnesses during trial, subject to cross-
examination by the adverse party.
commence within thirty (30) days from the termination of the
pre-trial. The trial shall be conducted expeditiously and
completed not later than sixty (60) days from the date of the We already know this under the Judicial Affidavit Rule.
initial trial.
153
Sec. 4. Period of trial. A period not exceeding thirty (30) days shall allowed. It shall be filed within five (5) days from completion of
be allotted to the plaintiff and a similar period to the defendant in the the presentation of the evidence. The opposing party will be
manner prescribed in the Pre-Trial Order. The failure of a party to furnished a copy and then he is again given 5 days to make his
present a witness on a scheduled trial date shall be deemed a waiver objections. Then the court will make its ruling, on the admission
of such trial date. However, a party may present such witness or of the evidence.
witnesses within the party's remaining allotted trial dates. No extension
shall be allowed by the judge except for justifiable reasons.
Sec. 6. Mandatory submission of draft decisions. — Immediately
after an oral ruling on the last offer of evidence, the court shall order
Comment: If the case goes to trial, 30 days lang ang ibigay the parties to simultaneously submit their respective draft decisions,
sa plaintiff to present evidence and the defendant is also given within a non-extendible period of thirty (30) days. In case the ruling is
30 days. If the parties or the witness does not appear on the in writing, the court shall order the parties to simultaneously submit
scheduled date, it is deemed waived.However, a party may their respective draft decisions within a non-extendible period of thirty
present such witness or witnesses within the party's remaining (30) days from receipt of the order.
allotted trial dates. Note, waived ang date but not the witness,
pwede pa susunod kung meron pang time. This provision is the most glaring difference between this rule
and all the other rules of court. Why?
As a general rule, no extension shall be allowed by the judge A. Because the parties are now required to submit draft
except for justifiable reasons. decisions to help the court. Bale as party, gumawa ka ng
decision in your favor.
Sec. 5. Offer of and ruling on exhibits. Evidence presented during
the trial and not otherwise admitted by the parties or ruled upon by the Q. When is the draft decision required?
court during the pre-trial shall be offered orally immediately after the A. After an oral ruling on the last offer of evidence kung oral.
completion of the presentation of evidence of the party concerned. The If it is a written offer, 30 days after the receipt of order.
opposing party shall immediately raise the objections on the offer of
exhibits and thereafter, the court shall at once rule on the offer and In order words, draft decisions are only required after trial. Pag
objections in open court.
yung mga clarificatory hearing, position papers, di kailangan ng
In case the court requires the submission of written formal offer of draft decision.
exhibits, the same shall be submitted to the court within five (5) days
from completion of the presentation of the evidence of the party, RULE 8: JUDGMENT
furnishing copies thereof on the other party, who may submit
comments or objections to the formal offer within five (5) days from Sec. 1. Judgment immediately after pre-trial. — Where the case
receipt. The court shall make its ruling on the offer within five (5) days is submitted for decision immediately after pre-trial in accordance with
from the expiration of the period to file comments or objections. Sec. 5, Rule 6, the court shall render judgment within forty-five (45)
days after pre-trial.
Comment: If there are exhibits during the trial, what should
be offered? Orally. Remember, yung formal offer is after Q. When will the court render judgment?
presentation of evidence. A. Ayan, section 1-5. The court shall render judgment
immediately after pre-trial, within forty-five (45) days after pre-
Q. When a party rests, tapos na lahat ang kanyang witnesses. trial the court must render judgment.
What will the party say?
A. The plaintiff rests. Then the court will order the plaintiff to
Sec. 2. Judgment after submission of position papers. — Within
formally offer in writing under the regular rules. In this rule, forty-five (45) days after receipt of the last position paper, affidavits,
ORAL. documentary and real evidence, or the expiration of the period for filing
the same under Sec. 6 of Rule 6 and Sec. 1 of Rule 7, the court shall
What should be offered orally immediately after the completion render judgment on the basis of the parties' position papers, affidavits,
of the presentation of evidence, evidence presented during the documentary and real evidence.
trial and not otherwise admitted by parties or ruled by the
court during pre-trial. Comment: After submission of position papers, whether or not
there was a clarificatory hearing before that, 45 days.
Q. How is the oral offered?
A. "Your honor, this is exhibit A. The purpose of this exhibit is Sec. 3. Judgment after clarificatory hearing. — Within forty-five
this and that" (45) days after termination of clarificatory hearing or hearings under
"Objection your honor, violation of the best evidence rule" Sec. 7 of Rule 6 and Sec. 2 of Rule 7, the court shall render judgment.
Oral lahat, both the offer and the objection. Thereafter, the
court shall at once rule on the offer and objections in open
Comment: After clarificatory hearing, whether or not there
court. So dapat prepated ang mga lawyers.
was a position paper before that, 45 days.
Q. Pwede ba writtend?
A. If the court says na, "magwritten na lang kayo kapoy
makinig ng formal offer," written offer of the evidence is
154
Sec. 4. Judgment after trial. — Within sixty (60) days after receipt Unfair completion, pwedeng civil, pwedeng criminal. ‘
of the draft decision of the parties under Sec. 6 of Rule 7, the court False Designation – criminal case.
shall render judgment. And other violation of IPR
Comment: When it comes to trial, 60 days after receipt of the Sec. 2. Special Commercial Courts in the National Capital Judicial
draft position. So you cannot get a judgment if you do not Region with authority to issue search warrants enforceable nationwide.
submit draft positions in intellectual property cases. 22 Special Commercial Courts in Quezon City, Manila, Makati, and Pasig
shall have authority to act on applications for the issuance of search
warrants involving violations of the Intellectual Property Code, which
Sec. 5. Judgments executory pending appeal. — Unless search warrants shall be enforceable nationwide. Within their
restrained by a higher court, the judgment of the court shall be respective territorial jurisdictions, the Special Commercial Courts in the
executory even pending appeal under such terms and conditions as the judicial regions where the violation of intellectual property rights
court may prescribe. occurred shall have concurrent jurisdiction to issue search warrants.
Comment: Decisions are immediately executory pending Accordingly, the Executive Judges are hereby relieved of the
appeal. But you can get a TRO or a Writ of Preliminary duty to issue search warrants involving violations of the
Injuction. Intellectual Property Code in criminal cases as stated in Sec.
12, Chapter V of A.M. No. 03-8-02-SC (Guidelines on the
So when the court renders decision in this case, it is in the Selection and Appointment of Executive Judges and Defining
exercise of its original jurisdiction and we know under the their Powers, Prerogatives and Duties).
regular rules that the mode of appeal is notice of appeal.
However, take note, who may appeal? Anybody may appeal a Now let us review our Crimpro, on the issuance of Seacrh
final decisions or order but section 2 decisions or final order warrant. If you ask a search warrant in the RTC of DAVAO
should be appealable to the court of appeals for petition for where should that search warrant be implemented? ONLY
review under Rule 43. The RTC acting as a special commercial within the TERRITOIAL Jurisdiction of RTC of DAVAO. But it
court is treated like a quasi-judicial body that’s why all the says here that for compelling reason, the search warrant may
decisions of the special commercial courts are immediately be implemented in the JUDICIAL region, Region 11
executory.
If you remember in the case we have discussed which said that
Ano pa ba ang mga decisions ng RTC reviewable through executive judges of the RTC of MANILA and QUEZON City can
petition for review? If it acts as a special agrarian court, just issue search warrant for the crimes under the IPC, and these
compensation cases, tax case filed with RTC it is appealable to search warrant can be implemented nationwide. Provided, ang
the court of tax appeals via petition for review. So there are mag aaply, NBI, PNP, ACTAF and etc. so mas malaki ang scope
decisions from the RTC in the exercise of its original jurisdiction ng RTC under this Administrative matter.
that is not appealable via a notice of appeal but petition for
certiorari under rule 43 and 42. You have to distinguish 42 and However, under our IP rules, iba na. The special commercial
43. court of Quezon City, Manila, Makati, and Pasig, shall have the
authority to act upon the application …(Search warrant) which
The period of appeal is again 15vdays, motions for extension shall be enforceable nationwide.
pareho lang.
It says here the executive judges of Manila and Quezon City
RULE 9: APPEAL are relived from the duty of issuing search warrant involving
violations of IPC in Criminal case. So if IP cases wala na
What is the mode of appeal in criminal cases? Notice of appeal. requirement na NBI blah blah ang mag apply. You can go
directly to the special commercial courts of those 4 mentioned
Sec. 2. How appeal taken. – The appeal shall be taken in the manner and the warrants can be enforced nationwide.
provided under Rule 122 of the Rules of Court.
This does not apply to criminal cases but also in Civil cases.
In criminal cases ordinary notice of appeal in Civil cases petition for
review under 43. RULE 11: COMMENCEMENT OF ACTION
CRIMINAL PROCEDURE Sec. 2. Where to file. – The information, together with attachments,
RULE 10: NATURE OF PROCEEDINGS shall be filed with the court referred to in Section 2 of Rule 1, which
has jurisdiction over the territory where any of the elements of the
When it comes to PATENT when is there criminal action? offense occurred.
Repetition of patent, utility model, industrial design.
How to file?
In Trademark infringement, the TM registrant can opt to file a You file a complaint with the prosecutor; the prosecutor will file
civil case or criminal case. the information.
155
Where do you file? The special commercial court who has affidavits executed by non-residents of the Philippines shall be
jurisdiction over the offense or the elements. duly authenticated by the concerned Philippine consular or
diplomatic office.
Sec. 3. When warrant of arrest may issue. – Within ten (10) days from
the filing of the information, the judge shall personally evaluate the If you want to send affidavit of witnesses from abroad
information together with the resolution of the prosecutor and its kailangan may red ribbon, dalhin sa Phili Embassy or consulate.
supporting documents. The judge may immediately dismiss the case if
the evidence on record clearly fails to establish probable cause. If he Preliminary Investigation, Inquest, arraignment, mediation are
finds probable cause, he shall issue a warrant of arrest, or a all the same to regular rules.
commitment order if the accused has already been arrested. In case of
doubt on the existence of probable cause, the judge may order the
prosecutor to present additional evidence within five (5) days from The affidavits that was submitted by the parties will be
notice and the issue must be resolved by the court within fifteen (15) considered as a direct testimony.
days from the presentation of the additional evidence.
In criminal cases under IPC no need to submit draft decisions,
Warrant of arrest. – can be issued only when there is a pending they only need to submit their respective memoranda within 30
case. days.
RULE 14: TRIAL

Sec. 4. Disposition of goods seized pursuant to search warrant. –If a
criminal action has been instituted, only the trial court shall rule on a
motion to quash a search warrant or to suppress evidence obtained Sec. 4. Judgment. – The court shall promulgate the judgment not
thereby or to release seized goods. later than sixty (60) days from the time the case is submitted for
decision, with or without the memoranda. A copy of the judgment shall
It shall be the duty of the applicant or private complainant to file a be furnished the IPO.
motion for the immediate transfer of the seized goods to the trial court,
which motion shall be immediately acted upon by the issuing court.
If no criminal action has been instituted, the motion to quash a search

warrant or to suppress evidence obtained thereby or to release seized --END OF INTELLECTUAL PROPERTY--
goods may be filed in and resolved by the issuing court. If pending 24
resolution of the motion, a criminal case is meanwhile filed in another
court, the incident shall be transferred to and resolved by the latter
court.
Upon motion of the party whose goods have been seized, with notice
to the applicant, the issuing court may quash the search warrant and
order the return of the seized goods if no criminal complaint is filed
within sixty (60) days from the issuance of the search warrant.
If no criminal action is filed before the office of the prosecutor and no

motion for the return of the seized goods is filed within sixty (60) days
from the issuance of the search warrant, the issuing court shall require
the parties, including the private complainant, if any, to show cause
why the search warrant should not be quashed.
Sec. 5. Prohibited motions. – The following motions shall not be

allowed:
a) Motion to quash the information, except on the ground of lack of
jurisdiction;
b) Motion for extension of time to file affidavits or any other papers;
and
c) Motion for postponement intended for delay
Where do you file complaint? DOJ or prosecutor office
You know very well when you file a criminal case kailangan
subscribed by the prosecutor.
Now, take Note under IP rules notarized affidavits of the

witnesses shall be allowed and admitted with the complaint.
Under the criminal rules, hindi. As a general rule kailangan
prosecutor ang mag swear ng witnesses. Provided that
156

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INTELLECTUAL PROPERTY LAW

Ateneo de Davao University | College of Law

Definitions SECTION 123. Registrability. –

123.1. A mark cannot be registered if it:

If you read these provisions, they seem complicated but

may mga poisonous na ingredients, so nasunog yong kuko,

What is this doctrine of Equivalents?

Under this doctrine, a word or phrase that is originally not

(k) Consists of shapes that may be necessitated by technical factors or

(l) Consists of color alone, unless defined by a given form; or

JANUARY 8, 2019 | Transcribed by: Cavin Jhon Cabarlo &

So even if 'AngTibay', therefore, were not capable of exclusive

Summary: SHANG PROPERTIES v. ST. FRANCIS GR 190706 (2014)

(h) Where the mark is a three-dimensional mark, a statement to that

(c) The name of a State of which the applicant is a national or where

Section 126. Disclaimers. - The Office may allow or require the

So when you want to register, and you make claims. If the

So you already know that you can include other/several goods

Section 133. Examination and Publication. - 133.1. Once the

Q. Who files for cancellation here? Can it be anyone?

Scenario 2: What if we have goods under Class 25 and Class

SECTION 145. Duration. – A certificate of registration shall remain

Q. How long will a patent last?

Q. How long will a trademark last?

Why not forever? Because of the requirement of actual use.

What if it is not being used? Then show valid reason based on

Eg. I was not able to use because of FAME (Fraud, Accident,

(b) The name and address of the registrant or his successor-in-interest,

name, or exact indications concerning the kind, quality, quantity,  Source

“Registration of the mark shall not confer on the registered

“Provided, That such use is confined to the purposes of mere

150.2. A license contract shall be submitted to the Office which shall

What is colorable imitation?

Sec. 158. Damages; Requirement of Notice. - In any suit for

What about newspapers? They can also carry infringing articles

Again we want to emphasize that even if jurisdiction over

ACTS DEEMED UNLAWFUL:

The Test of Dominancy provides that similarity in size, form,

The said product is generally purchased by cooks and

DISCUSSION: Issue 2: Whether or not there is unfair competition. – No.

Even if Wellington were a surname, the same cannot also be

Issue 1: Whether or not East Pacific is entitled to the

these class of goods including laundry and toilet soap, even

Contention (Chua Che):

RULING: The circumstance of non-actual use of the mark on

Atty. Suarez: So, obviously, the “X-7” trademark is already

COMMENT: If you notice, this is a registration case. The issue

attached. Applying this test to the trademarks involved in this

Issue: WHETHER OR NOT THE PETITION FOR

On October 4, 1963, Victorias Milling Company, Inc. filed with Rule:

As correctly stated by the Director of Patents, common

And there is no evidence that the diamond design in the

DISCUSSION: In this case, the use of the diamond was not

Sec. 21 — A. Any foreign corporation or juristic person to which

Therefore, as the Philippines is a signatory of the Paris

Issue No. 2: Should the registration of La Coste in the

A certificate of registration in the Supplemental Register is

R. Perez as manager of the Dr. Jose R. Perez Cosmetic

Discussion: Ng Sam 1959: Alleged first used of Product:

COMMENT: If you use the IPC, we apply Section 123(d) as

FEBRUARY 26, 2019 | Transcribed by: Niel Vic Suaybaguio

LYCEUM OF THE PHILIPPINES, INC. vs. COURT OF

DOCTRINE OF SECONDARY MEANING: