Intellectual Property Code

INTELLECTUAL PROPERTY CODE
The term “INTELLECTUAL PROPERTY”

consists of:
a. Copyright and related rights
b. Trademarks and Service Marks
c. Patents
d. Geographic Indications
e. Layout designs (Topographies) of Integrated
Circuits
f. Protection of Undisclosed Information; and
g. Industrial Designs (Sec. 4.1, IPC)
CONCEPTS
a. Geographic indications – indications which
identify a good as originating in the territory or a
region or locality in that territory, where a given
quality, reputation or other characteristics of the
good is essentially attributable to its geographical
origin (Sec. 3, Art. 22 [1], TRIPS)
Example: Indications which identify wine as coming

from coming from a specific region in France
CONCEPTS
b. Protection of Undisclosed Information –
natural and legal persons shall have the
possibility of preventing information lawfully
within their control from being disclosed to,
acquired by, or used by others without their
consent in a manner contrary to honest
commercial practices (i.e., breach of contract,
breach of confidence, fraudulent inducement,
etc. ) so long as the information:
CONCEPTS
Cont’d.
1. Is secret in the sense that it is not , as a body or in
the precise configuration and assembly of its
components, generally known among or readily
accessible to persons within the circles that normally
deal with the kind of information in question;
2. Has commercial value because it is secret; and
3. Has been subject to reasonable steps under the
circumstances, by the person lawfully in control of
the information, to keep it secret (Sec. 7, Art. 39[2],
TRIPS)
CONCEPTS
c. Trademark, copyright and patent are different
intellectual property rights that cannot be
interchanged with one another. A trademark is
any visible sign capable of distinguishing the
goods(trademark) or services (service mark) of
an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a
trade name means the name or designation
identifying or distinguishing an enterprise.
CONCEPTS
Meanwhile, the scope of a copyright is confined
to literary and artistic works which are original
intellectual creations in the literary and artistic
domain protected from the moment of creation.
Patentable inventions, on the other hand, refer
to any technical solution of a problem in any
field of human activity which is new, involves
and inventive step and is industrially applicable.
(Kho v. CA, GR 115758, March 11, 2002).
CONCEPTS
d. Utility Model - models of implement or tools
of any industrial product even if not possessed
of the quality of invention but which is of
“practical utility”
e. Industrial design – any composition of lines or
colors or any three-dimensional form, whether
or not associated with lines or colors (Sec. 112,
ICP)
CONCEPTS
f. Drugs and medicines – refer to any chemical
compound or biological substance, other than
food, intended for use in the treatment,
prevention or diagnosis of disease in humans or
animals (Sec. 4[c], RA 9502, otherwise known as
Universally Accessible Cheaper and Quality
Medicine Act of 2008)
THE INTELLECTUAL PROPERTY OFFICE
(IPO)
– the body that administers the policies sought
to be implemented under the IPC
FUNCTIONS OF THE IPO (Sec. 5, IPC)
a) Examine applications for grant of letters
patent for inventions and register utility models
and industrial designs;
b) Examine applications for the registration of
marks, geographic indication, integrated circuits;
c) Register technology transfer arrangements
and settle disputes involving technology transfer
payments covered by the provisions of Part II,
Chapter IX on Voluntary Licensing and develop
and implement strategies to promote and
facilitate technology transfer;
d) Promote the use of patent information as a
tool for technology development;
e) Publish regularly in its own publication the
patents, marks, utility models and industrial
designs, issued and approved, and the
technology transfer arrangements registered;
f) Administratively adjudicate contested
proceedings affecting intellectual property
rights; and
g) Coordinate with other government agencies
and the private sector efforts to formulate and
implement plans and policies to strengthen the
protection of intellectual property rights in the
country.
NOTES: (1) While registration of other
intellectual properties are with the IPO,
copyrighted works are still deposited with the
National Library and the Supreme Court.
COPYRIGHT (Sec. 171, IPC)
a. “Copyright” – right over literary and artistic
works which are original intellectual
creations in the literary and artistic domain
protected from the moment of creation (Kho
v. CA, supra)
b. "Author" is the natural person who has
created the work
c. 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 another
with the understanding that it will be disclosed
by the latter under his own name and that
contributing natural persons will not be
identified;
d. “Joint work” – is a work prepared by two or
more authors with the intention that their
contributions be merged into inseparable or
interdependent parts of a unitary whole, i.e.,
medical textbook that is jointly authorized by
two or three experts.
e. A "work of applied art" is an artistic creation
with utilitarian functions or incorporated in a
useful article, whether made by hand or
produced on an industrial scale
f. “Performers” – are actors, singers, musicians,
dancers, and other persons who act, sing,
declaim, play in, interpret, or otherwise perform
literary and artistic work.
CIVIL CODE PROVISIONS
Intellectual creation is one of the modes of
acquiring ownership under the Civil Code.
a. The following persons acquire ownership by
intellectual creation:
(1) The author with regard to his literary,
dramatic, historical, legal, philosophical,
scientific or other work;
(2) The composer; as to his musical
composition;
Cont’d.
(3) The painter, sculptor, or other artist,
with respect to the product of his art;
(4) The scientist or technologist or any
other person with regard to his discovery or
invention. (Art. 721, NCC)
b. Letters and other private communications in
writing are owned by the person to whom they
are addressed and delivered, but they cannot be
published or disseminated without the consent
of the writer or his heirs. However, the court
may authorize their publication or dissemination
if the public good or the interest of justice so
requires. (Art. 723, NCC)
WHEN RIGHTS OVER COPYRIGHTS ARE
CONFERRED
Rights over copyrights are conferred form the
moment of creation (Section 172.1, IPC). The
work is deemed created if something original is
expressed in a fixed manner.
WHO OWNS THE COPYRIGHT?
a. One creator – creator, his heirs or assigns
own the copyright
b. Joint creation – co-authors shall be the
original owners of the copyright and in the
absence of agreement, their rights shall be
governed by the rules on co-ownership.
Exception: Work of joint authorship consists of
parts that can be used separately and the author
of each part can be identified, the author of
each part shall be the original owner of the
copyright in the part that he has created.
c. Commissioned Work – the person
commissioning owns the work; ownership of the
copyright remains with the creator, unless there
is written stipulation to the contrary.
d. Audio-visual work – producer for purposes of
exhibition; for all other purposes, the producer,
the author of the scenario, the composer, the
film director, the photographic director and the
author of the work are the owners.
e. Pseudonyms and anonymous works – unless
the author is undisputably known, the publisher
shall be presumed to be the representative of
the author (Secs. 178 and 179, IPC).
f. Employee’s work during course of
employment – employer, if the result of regular
functions or duties but the employee owns it if
it is not part of his duties.
DURATION OF COPYRIGHT
a. Literary artistic works and derivative works -
during the life of the author and for fifty (50)
years after his death. This rule also applies to
posthumous works.
b. Joint creation - the economic rights shall be
protected during the life of the last surviving
author and for fifty (50) years after the death of
the last surviving author.
c. Anonymous or pseudonymous works – till the
end of fifty (50) years following the date of their
first publication. The fifty (50) year duration
commences from January 1 following the date
of publication.
The copyright shall be protected for fifty (50)
years from the date on which the work was first
lawfully published: Provided, That where, before
the expiration of the said period, the author's
identity is revealed or is no longer in doubt, the
provisions of Subsections 213.1. and 213.2 shall
apply, as the case may be: Provided, further,
That such works if not published before shall be
protected for fifty (50) years counted from the
making of the work.
d. Works of applied art - twenty-five (25) years
from the date of making.
e. Photographic works - fifty (50) years from
publication of the work and, if unpublished, fifty
(50) years from the making.
f. Audio-visual works including those produced
by process analogous to photography or any
process for making audio-visual recordings -
fifty (50) years from date of publication and, if
unpublished, from the date of making.
g. Broadcasts - twenty (20) years from the date
the broadcast took place. The extended term
shall be applied only to old works with
subsisting protection under the prior law.
CALCULATION OF TERM
The term of protection subsequent to the death
of the author provided in the preceding Section
shall run from the date of his death or of
publication, but such terms shall always be
deemed to begin on the first day of January of
the year following the event which gave rise to
them. (Sec. 25, P.D. No. 49)
TERM OF PROTECTION FOR
PERFORMERS, PRODUCERS AND
BROADCASTING ORGANIZATIONS.
The rights granted to performers and producers
of sound recordings under this law shall expire:
(a) For performances not incorporated in
recordings, fifty (50) years from the end of the
year in which the performance took place; and
(b) For sound or image and sound recordings
and for performances incorporated therein, fifty
(50) years from the end of the year in which the
recording took place.
COPYRIGHTABLE OBJECTS
a. LITERARY AND ARTISTIC WORKS

Literary and artistic works, hereinafter referred
to as "works", are original intellectual creations
in the literary and artistic domain protected
from the moment of their creation and shall
include in particular:
(1) Books, pamphlets, articles and other
writings;
(2) Periodicals and newspapers;

Cont’d.
(3) Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not
reduced in writing or other material form;
(4) Letters;
(5) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb
shows;

Cont’d.
(6) Musical compositions, with or without
words;
(7) Works of drawing, painting, architecture,
sculpture, engraving, lithography or other works
of art; models or designs for works of art;
(8) Original ornamental designs or models for
articles of manufacture, whether or not

Cont’d.
registrable as an industrial design, and other
works of applied art;
(9) Illustrations, maps, plans, sketches, charts
and three-dimensional works relative to
geography, topography, architecture or science;
(10) Drawings or plastic works of a scientific or
technical character;

Cont’d.
(11) Photographic works including works
produced by a process analogous to
photography; lantern slides;
(12) Audiovisual works and cinematographic
works and works produced by a process
analogous to cinematography or any process for
making audio-visual recordings;

Cont’d.
(13) Pictorial illustrations and advertisements;
(14) Computer programs; and
(15) Other literary, scholarly, scientific and
artistic works. (Sec. 172, IPC)

Cont’d.
Note: The author of speeches, lectures,
sermons, addresses, and dissertations
mentioned in the preceding paragraphs shall
have the exclusive right of making a collection of
his works. (Sec. 176.2, IPC)
b. DERIVATIVE WORKS
(1) Dramatizations, translations, adaptations,
abridgments, arrangements, and other
alterations of literary or artistic works; and
(2) Collections of literary, scholarly or artistic
works, and compilations of data and other
materials which are original by reason of the
selection or coordination or arrangement of
their contents. (Sec. 173, IPC).
UNPROTECTED WORKS
a. 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
(Sec. 175, IPC; Art. 10[1], TRIPS). Thus, the
format of a television game show is not subject
to a copyright (Joaquin v. Drilon, GR No. 108946,
Jan. 28, 1999)
UNPROTECTED WORKS
b. News of the day and other miscellaneous

facts having the character of mere items of press
information (Sec. 175, IPC).
1. No protection is given to “news of the day and other
miscellaneous facts having the character of mere items
of press information” (Sec. 175, IPC). Example: The
writings of a columnist in a newspaper is subject to
copyright but if he mentions a news item like bomb
explosion in a certain place, he cannot claim protection
regarding this news item.
UNPROTECTED WORKS
c. Any official text of a legislative, administrative

or legal nature, as well as any official translation
thereof (Sec. 175, IPC).
d. Any work of the Government of the
Philippines – However, prior approval of the
government agency or office wherein the work
is created shall be necessary for exploitation of
such work for profit. Such agency or office may,
among other things, impose as a condition the
UNPROTECTED WORKS
payment of royalties. No prior approval or

conditions shall be required for the use of any
purpose of statutes, rules and regulations, and
speeches, lectures, sermons, addresses, and
dissertations, pronounced, read or rendered in
courts of justice, before administrative agencies,
in deliberative assemblies and in meetings of
public character. (Sec. 176, IPC).
UNPROTECTED WORKS
e. The trade name and container of a medicated

cream is the proper subject of trademark.
Hence, copyright and patent registration of the
name and container would not guarantee the
registrant the right to the exclusive use of the
same, not being the proper subjects thereof.
(Kho v. CA, supra)
UNPROTECTED WORKS
f. In the same manner, copyright registration of a

drawing or pictorial illustration which depicts
light boxes or box-type electrical devices
protects the drawing but not the light box
depicted therein (Pearl & Dean [Phil.] v.
Shoemart, Inc. et. al., GR No. 148222, Aug. 15,
2003).
RIGHTS OF AUTHORS
a. Economic Rights
Copyright or economic rights shall consist of the
exclusive right to: (a) carry out, (b) authorize or
(c) prevent the following acts:
1. Reproduction of the work or substantial
portion of the work;
2. Dramatization, translation, adaptation,
abridgment, arrangement or other
transformation of the work;
RIGHTS OF AUTHORS
a. Economic Rights
Cont’d.
3. The first public distribution of the original and
each copy of the work by sale or other forms of
transfer of ownership;
4. Rental of the original or a copy of an
audiovisual or cinematographic work, a work
embodied in a sound recording, a computer
program, a compilation of data and other
RIGHTS OF AUTHORS
a. Economic Rights
Cont’d.
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)
5. Public display of the original or a copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work.
(Sec. 177, IPC)
RIGHTS OF AUTHORS
b. Moral Rights
1. Require that the authorship of the works be
attributed to him, 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;
2. Make any alterations of his work prior to, or
to withhold it from publication;
RIGHTS OF AUTHORS
b. Moral Rights
Cont’d
3. Object to any distortion, mutilation or other
modification of, or other derogatory action in
relation to, his work which would be prejudicial
to his honor or reputation; and
4. Restrain the use of his name with respect to
any work not of his own creation or in a
distorted version of his work. (Sec. 193, IPC)
ACTS THAT DO NOT INFRINGE
COPYRIGHT
(a) Recitation or performance of a work, once it

has been lawfully made accessible to the public,
if done privately and free of charge or if made
strictly for a charitable or religious institution or
society; (Sec. 10(1), P.D. No. 49)
COPYRIGHT
(b) Making of quotations from a published work

if they are compatible with fair use and only to
the extent justified for the purpose, including
quotations from newspaper articles and
periodicals in the form of press summaries:
Provided, That the source and the name of the
author, if appearing on the work, are
mentioned; (Sec. 11, third par., P.D. No. 49)
COPYRIGHT
(c) Reproduction or communication to the public

by mass media of articles on current political,
social, economic, scientific or religious topic,
lectures, addresses and other works of the same
nature, which are delivered in public if such use
is for information purposes and has not been
expressly reserved: Provided, That the source is
clearly indicated; (Sec. 11, P.D. No. 49)
COPYRIGHT
(d) Reproduction and communication to the

public of literary, scientific or artistic works as
part of reports of current events by means of
photography, cinematography or broadcasting
to the extent necessary for the purpose; (Sec.
12, P.D. No. 49)
COPYRIGHT
(e) Inclusion of a work in a publication,

broadcast, or other communication to the
public, sound recording or film, if such inclusion
is made by way of illustration for teaching
purposes and is compatible with fair use:
Provided, That the source and of the name of
the author, if appearing in the work, are
mentioned;
COPYRIGHT
(f) Recording made in schools, universities, or

educational institutions of a work included in a
broadcast for the use of such schools,
universities or educational institutions:
Provided, That such recording must be deleted
within a reasonable period after they were first
broadcast: Provided, further, That such
recording may not be made from audiovisual
works which are part of the general cinema
COPYRIGHT
repertoire of feature films except for brief

excerpts of the work;
(g) Making of ephemeral recordings by a

broadcasting organization by means of its own
facilities and for use in its own broadcast;
COPYRIGHT
(h) Use made of a work by or under the

direction or control of the Government, by the
National Library or by educational, scientific or
professional institutions where such use is in the
public interest and is compatible with fair use;
COPYRIGHT
(i) Public performance or the communication to

the public of a work, in a place where no
admission fee is charged in respect of such
public performance or communication, by a club
or institution for charitable or educational
purpose only, whose aim is not profit making,
subject to such other limitations as may be
provided in the Regulations; (n)
COPYRIGHT
(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 has been published, or,
that the original or the copy displayed has been
sold, given away or otherwise transferred to
another person by the author or his successor in
title; and
COPYRIGHT
(k) Any use made of a work for the purpose of

any judicial proceedings or for the giving of
professional advice by a legal practitioner;
COPYRIGHT
(l) Single copy reproduction of a published work

by natural person exclusively for research and
private study (even without authorization of
owner);
COPYRIGHT
(m) Reproduction by non-profit libraries of: (i)

fragile works, (ii) isolated articles in composite
works, (iii) brief portions of published works, (iv)
to preserve or replace copy that is lost,
destroyed or rendered unusable;
(n) One back-up copy of computer program.

FAIR USE
Fair use of a copyrighted work for criticism,

comment, news reporting , teaching including
multiple copies for classroom use, scholarship,
research and similar purposes is not an
infringement of copyright (Sec. 185, IPC)
FAIR USE
a. Factors to consider to determine whether use

is fair or not:
1. Purpose and the character of the use;
2. Nature of the copyrighted work;
3. Amount and substantiality of the
portions used; and
4. Effect of the use upon the potential
market of the copyrighted work
INFRINGEMENT
a. how made – when there is piracy or

substantial reproduction. If so much is taken
that the value of the original work is
substantially diminished or the labors of the
original author are substantially and to an
injurious extent appropriated by another
(Habana v, Robles, G.R. No. 131522, July 19,
1999)
INFRINGEMENT
b. A person infringes a right protected under this

Act when one:
(a) Directly commits an infringement;
(b) Benefits of the infringing activity of
another person who commits an infringement if
the person benefiting has been giving notice of
the infringing activity and has the right and
ability to control the activities of the other
person;
INFRINGEMENT
b. A person infringes a right protected under this

Act when one:
Cont’d.
(c) With knowledge of infringing activity
induces, cause or materially contributes to the
infringing conduct of another. (Sec. 216, as
amended by RA 10372).
INFRINGEMENT
c. Remedies
1. Injunction to prevent infringement (Sec. 216)
2. Action for damages which should be filed
within four (4) years. Damages are assessed on
the basis of the proof alleged by the plaintiff of
sales made by the defendant of the infringing
work minus whatever costs the defendant may
be able to prove and appreciated by the court.
INFRINGEMENT
c. Remedies
3. Criminal case. The infringer also exposes
himself to criminal liability wherein the law
prescribes penalties of imprisonment and fines,
including subsidiary imprisonment in case of
insolvency (Sec. 218)
TRADEMARKS
a. TRADEMARK - A trademark is any visible sign

capable of distinguishing the goods (trademark)
or services (service mark) of an enterprise and
shall include a stamped or marked container of
goods. In relation thereto, a trade name means
the name or designation identifying or
distinguishing an enterprise (Kho v. CA, supra).
TRADEMARKS
Thus, the basis requirements are:

1. There must be a visible sign. Example: A
sound of a musical instrument cannot be a scent
of a perfume. It can be words, acronyms, logos,
slogans, designs , figures, pictographs, or
portraits.
2. It must be capable of distinguishing the goods
of an enterprise. (Distinctiveness)
TRADEMARKS
b. COLLECTIVE MARK – any visible sign

designated as such in the application for
registration and capable if distinguishing the
origin or any other common characteristic,
including the quality of goods or services of
different enterprises which use the sign under
the control of the registered owner of the
collective mark.
TRADEMARKS
NOTE: There is no need to register trade names

in order to secure protection for them. (Sec.
165.2[a], IPC)
FUNCTIONS of TRADEMARKS
(1) they indicate origin or ownership of the

articles to which they are attached;
(2) they guarantee that those articles come up
to a certain standard of quality; and
(3) they advertise the articles they symbolize.
HOW MARKS ARE ACQUIRED
The right in a mark shall be acquired through

registration with the Intellectual Property Office
or IPO (Sec. 122, IPC)
1. Registration is necessary before one can
file an action for infringement.
2. Actual use
i. Prior use in the Philippines is not
required before registration
ii. However, there must be actual use

after registration. The registrant shall file a
declaration of actual use of the mark with
evidence to that effect within three (3)
years from the filing date of application
otherwise it may be cancelled (Secs. 142.2
and 151[c], IPC ). The registrant is required
to file a declaration of actual use and
evidence to that effect, or shall show valid
reasons for non-use within one (1) year

from the fifth anniversary date of
registration (Sec. 145, IPC).
reasons for non-use within one (1) year

from the fifth anniversary date of
registration (Sec. 145, IPC).
iii. It is also provided that a certificate of

registration of a mark shall be prima facie
evidence of the validity of the registration,
the registrant’s ownership of the mark,
and of the registrant’s exclusive right
to use the same (Sec. 138, IPC). This means

that registrant’s right may be questioned
by a person who has a better right,
including a prior actual user. This also
includes persons with intentionally known
marks.
iv. Registration is also not important to

protect the goodwill that identifies in the
mind of the public the goods he
manufactures or deals in (Sec. 168.1, IPC)
iv. Registration is also not important to

protect the goodwill that identifies in the
mind of the public the goods he
manufactures or deals in (Sec. 168.1, IPC)
Registration of a mark is not necessary for

purposes of filing a case for unfair
competition or false designation of origin
(Sec. 168.2 and 169, IPC).
Unfair competition is present when : (1)

there is passing off of a product format of
another; (2) giving goods (or service) the
appearance of goods of another.
b. When the law states the right is
acquired from the time of registration, it is
actually referring to the filing date of
application.
1. The filing date of an application shall be the

date on which the IPO received the following
indications and elements: (i) express or implicit
indication that the registration of the mark is
sought; (ii) identity of the applicant; (iii)
indications sufficient to contact the application
or his representatives; (iv) reproduction of the
mark; (v) list of good s or services for which
registration is sought (Sec.127, IPC)
2. However, the right may also be protected from

the priority date. Subject to the rules on reciprocity,
where the application is filed in the Philippines and
the same applicant previously filed an application in
the countries covered by the reciprocity rule under
Section 3 of the IPC, the application is deemed filed
as of the date the application was first filed in the
foreign country (Sec. 131, IPC). However, there will
be no registration in the Philippines until registered
in such foreign country (Sec. 131.2, IPC)
MARKS THAT CANNOT BE REGISTERED
(a) Consists of immoral, deceptive or scandalous

matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia
of the Philippines or any of its political subdivisions, or
of any foreign nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying

a particular living individual except by his written
consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of
his widow, if any, except by written consent of the
widow;
(d) Is identical with a registered mark belonging to a

different proprietor or a mark with an earlier filing or
priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or
constitutes a translation of a mark which is considered
by the competent authority of the Philippines to be
well-known internationally and in the Philippines,
whether or not it is registered here, as being already
the mark of a person other than the applicant for
registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark
is well-known, account shall be taken of the knowledge
of the relevant sector of the public, rather than of the
public at large, including knowledge in the Philippines
which has been obtained as a result of the promotion
of the mark;
(f) Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to
goods or services which are not similar to those with
respect to which registration is applied for: Provided,
That use of the mark in relation to those goods or
services would indicate a connection between those
goods or services, and the owner of the registered
mark: Provided further, That the interests of the owner
of the registered mark are likely to be damaged by such
use;
(g) Is likely to mislead the public, particularly as to the
nature, quality, characteristics or geographical origin of
the goods or services;
(h) Consists exclusively of signs that are generic for the
goods or services that they seek to identify;
(i) Consists exclusively of signs or of indications that
have become customary or usual to designate the
goods or services in everyday language or in bona fide
and established trade practice;
(j) Consists exclusively of signs or of indications that
may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin,
time or production of the goods or rendering of the
services, or other characteristics of the goods or
services;
(k) Consists of shapes that may be necessitated by
technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given
form; or
(m) Is contrary to public order or morality. (Section 123, IPC)
LIMITATIONS
a. Doctrine of Secondary Meaning –A generic or
descriptive mark may later acquire the
characteristic of distinctiveness and can later be
registered if it acquires a meaning which is different
from its ordinary connotation. For this to happen,
there must be exclusive an continuous use for a
period of at least five (5) years (Sec. 123.2, IPC)
Examples: (1) “Selecta” for bakery products; (2)
“Ang Tibay” for shoes (Are & Sons v. Selecta Biscuit
Co., Inc., 110 Phil. 858 [1961]; Ang v. Teodoro , 74
Phil 50 [1942]).
LIMITATIONS
b. Composite Marks – Although they cannot be
registered by themselves, generic and
descriptive marks, colors and shapes may be
part of a composite mark but there should be a
disclaimer and the person who registers them as
part of a mark will not acquire ownership
thereto.
LIMITATIONS
c. Contractions and Coined Marks – Similarly,
marks may be registered even if they are
contractions of or coined from generic and
descriptive terms (Examples: “Salompas”
[Marvez Commercial Co. v. Petra Hawpia & Co.,
18 SCRA 1178. 1966]).
LIMITATIONS
d. Arbitrary Use – Generic and descriptive terms
may also be registered as trademarks if they are
used in an arbitrary or fanciful manner. Example:
“Ivory” is generic for elephant tusk but arbitrary
and can be registered for soap.
INTERNATIONALLY WELL-KNOWN
MARKS
a. The persons who may question the mark (that
is, oppose registration, petition for cancellation
thereof, sue for unfair competition) include
persons whose internationally well-known mark,
whether or not registered, is identical with or
confusingly similar to or constitutes a translation
of a mark that is sought to be registered or is
actually registered (Secs. 123[3] and 131.3, IPC)
INTERNATIONALLY WELL-KNOWN
MARKS
b. There is also protection for internationally
known marks registered in the Philippines for
goods that are not similar with respect to which
registration is applied for (Rule 101[f], Rules and
Regulations on Trademarks, etc.).
RIGHTS CONFERRED
a. The right to the exclusive use of the mark for
one’s own goods or services.
b. The right to prevent others from the use of
the same mark for identical goods or services in
the course of trade.
c. The right to the exclusive use of one’s already
registered mark even for goods or services into
which one’s venture expands, if use by others
for dissimilar products is likely to damage the
business interests of the first venture (Sec. 147,
IPC)
DURATION
The duration is ten (10) years subject to
indefinite renewal for periods of ten (10) years
each.
INFRINGEMENT
a. The elements of trademark infringement
under R.A. No. 8293 are as follows:
(1) The trademark being infringed is registered
in the Intellectual Property Office; however, in
infringement of trade name, the same need not
be registered;
(2) The trademark or trade name is reproduced,
counterfeited, copied, or colorably imitated by
the infringer;
INFRINGEMENT
Cont’d
(3) The infringing mark or trade name is used in
connection with the sale, offering for sale, or
advertising of any goods, business or services; or
the infringing mark or trade name is applied to
labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be
used upon or in connection with such goods,
business or services;
(4) The use or application of the infringing mark
or trade name is likely to cause confusion or
INFRINGEMENT
Cont’d
mistake or to deceive purchasers or others as to
the goods or services themselves or as to the
source or origin of such goods or services or the
identity of such business; and
(5) It is without the consent of the trademark or
trade name owner or the assignee thereof.
(Prosource International, Inc vs. Horphag
Research Management, G.R. No. 180073,
November 25, 2009, Secs. 155.1 and 155.2, IPC)
Types of Confusion
1. “Confusion of goods” -- when an otherwise
prudent purchaser is induced to purchase one
product in the belief that he is purchasing
another, in which case defendant’s goods are
then bought as the plaintiff’s and its poor
quality reflects badly on the plaintiff’s
reputation. (Mighty Corporation vs. E. & J. Gallo,
G.R. No. 154342, July 14, 2004)
Types of Confusion
2. “Confusion of business" -- wherein the goods
of the parties are different but the defendant’s
product can reasonably (though mistakenly) be
assumed to originate from the plaintiff, thus
deceiving the public into believing that there is
some connection between the plaintiff and
defendant which, in fact, does not exist (ibid.)
Types of Confusion
Jurisprudence has developed two tests in
determining similarity and likelihood of
confusion in trademark resemblance:
1. The Dominancy Test focuses on the similarity
of the prevalent features of the competing
trademarks which might cause confusion or
deception, and thus infringement. If the
competing trademark contains the main,
essential or dominant features of another, and
confusion or deception is likely to result,
Types of Confusion
infringement takes place. Duplication or
imitation is not necessary; nor is it necessary
that the infringing label should suggest an effort
to imitate. The question is whether the use of
the marks involved is likely to cause confusion or
mistake in the mind of the public or deceive
purchasers. (Ibid). The Dominancy test is now
embodied in Section 155 of the IPL and is
therefore the controlling test (McDonald’s Corp.
v. LC Big Mk Burger, Inc. 437 SCRA 10, 37 [2004])
Types of Confusion
Examples:
• (i) “McJoy” and “Big Mack” infringe the
trademark of McDonald’s and the latter’s
dominant feature is “Mc” or “Mac” (Ibid.,
McDonald’s Corp. v. McJoy, 514 SCRA 95
[2007]);
• (II) “Master Flavor” is an infringement of the
registered marks “Master Roast” and “Master
Blend” (Societe Des Produit Nestle v. CA, 356
SCRA 207, 217)
Types of Confusion
2. The Holistic Test requires that the entirety of
the marks in question be considered in resolving
confusing similarity. Comparison of words is not
the only determining factor. The trademarks in
their entirety as they appear in their respective
labels or hang tags must also be considered in
relation to the goods to which they are
attached. The discerning eye of the observer
must focus not only on the predominant words
but also on the other features appearing in both
labels in order
Types of Confusion
that he may draw his conclusion whether one is
confusingly similar to the other. (Mighty
Corporation vs. E. & J. Gallo, G.R. No. 154342,
July 14, 2004)
Types of Confusion
d. Aural Effects/ Idem Sonans Rule. In dominant
test, what are taken into account are signs,
color, design, peculiar shape or name, or some
special, easily remembered earmarks of the
brand that readily attracts and catches the
attention of the ordinary consumer (Dermaline,
Inc. v. Myra Pharmaceuticals , Inc. GR No.
190065, Aug. 16, 2010). In addition, the aural
effects of the words and letters contained in the
marks should be considered in determining the
issue of confusing similarity.
Types of Confusion
Examples of confusingly similar marks:
• (1) PYCNOGENOL is confusingly similar to PCO-
GENOL
• (2) DERMALINE DERMALINE, INC. is
confusingly similar to DERMALIN
• (3) NANNY is confusingly similar to NAN;
“NAN” is the prevalent feature
Types of Confusion
e. Expansion of Business Rule. The protection to
which the owner of a trademark is entitled is not
limited to guarding his goods or business from
actual market competition with identical or
similar products of the parties, but extends to all
cases in which the use by a junior appropriator
of a trademark or trade name is likely to lead to
a confusion of source, as where prospective
purchasers would be misled into thinking that
the complaining party has extended his business
into the
Types of Confusion
field or is in any way connected with the
activities of the infringer; or when it forestalls
the normal potential expansion of his business
(Dermaline, Inc. v. Myra Pharmaceuticals , Inc.
GR No. 190065, Aug. 16, 2010)
Types of Confusion
f. Use of Identical Marks Not Necessarily
Prohibited. The use of identical mark does not,
by itself, lead to a legal conclusion that there is
trademark infringement if they are NOT used for
identical, similar or related goods.
Examples:
1. Registration of the trademark “SHELL” for
cigarettes was allowed although there is prior
registrant for gasoline and petroleum products
(Shell Company of the Philippines v. CA, GR No
L-49145, May 21, 1979)
Types of Confusion
2. The trademark ESSO was allowed for
cigarettes although thte saem was regisreted by
another for petroleum products (Esso Standard
Eastern, Inc. v. CA)
3. The registration of the trademark CANNON
was allowed for sandals despite the prior
registration of the same for paints, chemical
products, toner and dyestuff (Canon Kabushiki
Kaisha v. CA)
Types of Confusion
4. The mark which contains the word GALLO can
be used for cigarettes without infringing the
rights of the owner of another mark which also
contains the same word but which was
registered for wine. It was noted that the
dominant feature of the GALLO cigarette
trademark is the device of a rooster and the
name of the manufacturer are clearly stated.
The labels for the GALLO wine are diverse
(Mighty Corporation v. EJ Gallo, supra)
Types of Confusion
g. Related Goods and Non-related. Confusion of
goods is evident where the litigants are actually
in competition. However, confusion of business
may arise between non-competing interests and
goods that are related or would tend to indicate
a connection between the goods and the owner
of the mark (Sec. 147.1, IPC)
Types of Confusion
1. Related Goods. Non-competing goods may be
those which, though they are not in actual
competition, are so related to each other that It
can be reasonably be assumed that they
originate from one manufacturer, in which case,
confusion of business can arise out of the use of
similar marks.
Types of Confusion
Related Goods How Determined. In resolving
whether goods are related, several factors come
into play. No single factor is preeminent on:
(a) the business (and its location) to which the
goods belong
(b) the class of product to which the goods
belong
(c) the product's quality, quantity, or size,
including the nature of the package, wrapper or
container
Types of Confusion
(e) the descriptive properties, physical attributes or
essential characteristics with reference to their form,
composition, texture or quality
(f) the purpose of the goods
(g) whether the article is bought for immediate
consumption, that is, day-to-day household items
(h) the fields of manufacture
(i) the conditions under which the article is usually
purchased and
(j) the channels of trade through which the goods flow,
how they are distributed, marketed, displayed and sold.
(Mighty Corp v. E&J Gallo)
Types of Confusion
• In the case of internationally “well-known” marks, it
is expressly provided under the IPC that other
persons or entities cannot use the internationally
“well-known” mark even for unrelated goods (Sec.
123.1[f], 246 Corp. v. Daway, 416 SCRA 315[2003])
Types of Confusion
Use of Container. The mere unauthorized use of a
container bearing a registered trademark in connection
with the sale, distribution or advertising of goods or
services which is likely to cause confusion, mistake or
deception among the buyers or consumers can be
considered as trademark infringement. Hence,
trademark infringement is committed when one LPG
dealer refilled the LPG containers bearing the
registered marks of the trademark owner, without the
consent of the latter. (Republic Gas Corp. v. Petron et.
al., July 17, 2013).
PROTECTION OF TRADE NAME
A trade name(including a corporate name) need not be
registered with the IPO before an infringement suit may
be filed by its owner against the owner of an infringing
trademark (Sec. 165.2, IPL).
UNFAIR COMPETITION
This involves employing deception or any other means
contrary to good faith by which a person passes off his
goods or business or services for those of one who has
already established goodwill thereto (Sec. 168.2, IPC)
a. The essential elements of unfair competition with
respect to goods are:
(1) confusing similarity in the general appearance
of the goods; and
(2) intent to deceive the public and defraud a
competitor.
UNFAIR COMPETITION
This involves employing deception or any other means
contrary to good faith by which a person passes off his
goods or business or services for those of one who has
already established goodwill thereto (Sec. 168.2, IPC)
a. The essential elements of unfair competition with
respect to goods are:
(1) confusing similarity in the general appearance
of the goods; and
(2) intent to deceive the public and defraud a
competitor.
UNFAIR COMPETITION
TEST of unfair competition: whether the acts of the
defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer making his
purchases under the ordinary conditions of the
particular trade to which the controversy relates
(Superior Commercial Enterprises, Inc. v. Kunnan
Enterprises Ltd., GR No. 169974, April 20, 2010)
Distinguish infringement of trademark
from unfair competition
The distinctions between infringement and
unfair competition are as follows:
1. In infringement of trademark, there is the
unauthorized use of a trademark, while unfair
competition under the IPC involves passing off
of one's goods as those of another and giving
one’s goods the appearance of that of another.
2. It is not necessary to establish fraudulent
intent a case for infringement of trademark
while it is necessary to establish fraudulent
intent in an unfair competition case.
3. Registration of a trademark is necessary for
the filing of an action for infringement of
trademark while prior registration of a
trademark is not necessary in unfair
competition
4. Unfair competition is broader as it includes
cases that are covered not only by the IPC but
also by Article 27 of the New Civil Code (Del
Monte Corp. et. al. v. CA, 181 SCRA 410)
PATENTS
Patentable inventions refer to any technical

solution of a problem in any field of human
activity which is new, involves an inventive step
and is industrially applicable. (Kho v. CA, supra)
PATENTS
a. Requisites:
1. A technical solution of a problem in any
field of human activity;
2. It must be a novel invention;
3. Industrially applicable.
PATENTS
b. Definitions:
1. Novel – does not form part of a prior art (Sec.
23, IPC).
2. Prior Art – (i) that which has been made
available to the public anywhere in the world
before the filing date or the priority date of
application;
PATENTS
(ii) that which forms part of an application

whether for patent, utility model or industrial
designed, effective in the Philippines: Provided,
that the inventor or applicants are not the same
and the contents of the application are
published in accordance with the requirements
of patent application rules and the filing date of
prior art is earlier (Sec. 24, IPC)
PATENTS
3. Inventive Step - An invention involves an

inventive step if, having regard to prior art, it is
not obvious to a person skilled in the art at the
time of the filing date or priority date of the
application claiming the invention. (Sec. 26, IPC)
PATENTS
NOTE: In the case of drugs and medicines, there

is no inventive step if the invention results from:
(i) mere discovery of a new form or new
property of a known substance which does not
result in the enhancement of the known efficacy
of that substance,
(ii) mere discovery of any new property or new
use for a known substance, or
PATENTS
(iii) mere use of a known process unless such

known process results in a new product that
employs at least one new reactant (Sec. 26, IPC
as amended by RA 9502)
PATENTS
4. Person skilled in the Art – presumed to be an

ordinary practitioner aware of what was
common general knowledge in the art of
relevant date. He is presumed to have
knowledge of all references that are sufficiently
related to one another and to the pertinent art
and to have knowledge of all arts reasonably
pertinent to the particular problems with which
the inventor was
PATENTS
involved. He is presumed also to have had at his

disposal the normal means and capacity to
routine work and experimentation.
5. Industrial applicability - An invention that can
be produced and used in any industry shall be
industrially applicable. (Sec. 27, IPC)
Classes of Patentable Inventions
a) Useful machine;
b) Product;
c) Process
d) Improvement of any of the foregoing (a), (b)
or (c);
e) microorganism; and
f) non-biological and microbiological processes.
(Rule 201, Rules and Regulations on Inventions)
Non- Patentable Inventions
a. Discoveries, scientific theories and

mathematical methods;
b. Schemes, rules and methods of performing
mental acts, playing games or doing business,
and programs for computers;
c. Methods for treatment of the human or
animal body by surgery or therapy and
diagnostic methods practiced on the human or
animal body. This provision shall not apply
to products and composition for use in any of

these methods;
d. Plant varieties or animal breeds or essentially
biological process for the production of plants or
animals. This provision shall not apply to micro-
organisms and non-biological and
microbiological processes.
e. Aesthetic creations; and
f. Anything which is contrary to public order or

morality. (Sec. 22, IPC )
g. In the case of drugs and medicines, there is no
patentable invention in the following instances:
1. Mere discovery of a new form or new
property of a known substance which does
not result in the enhancement of the
known efficacy of that substance;
2. Mere discovery of any new property or

new use for a known substance;
3. Mere use of a known process unless
such known process results in a new
product that employs at least one new
reactant.
PERSON ENTITLED TO RIGHT
a. The right to a patent belongs to the inventor,

his heirs, or assigns.
b. When two (2) or more persons have jointly

made an invention, the right to a patent shall
belong to them jointly. (Sec. 28, IPC)
PERSON ENTITLED TO RIGHT
c. First to File Rule. - If two (2) or more persons

have made the invention separately and
independently of each other, the right to the
patent shall belong to the person who filed an
application for such invention, or where two or
more applications are filed for the same
invention, to the applicant who has the earliest
filing date or, the earliest priority date. (Sec. 29,
IPC)
TERM OF A PATENT
The term of patent is twenty (20) years from the

filing date of application (Sec. 54, IPC).
INFRINGEMENT
Patent infringement is the making, using,

offering for sale, selling, or importing a patented
product or a product obtained directly or
indirectly from a patented process, or the use of
a patented process without the authorization of
the patentee (Sec. 76.1, IPC)
a. Steps in determining the presence
of infringement.
1. Determine if there is literal infringement. If
there is literal infringement, the defendant is
liable.
2. If there is no literal infringement, then the
doctrine of equivalents should be applied.
b. Literal Infringement
There is infringement of patent under this test if

one makes, uses or sells an item that contains all
the elements of the patent claim. This test is
satisfied in either of the following:
1. Exactness rule – the item that is being
sold, made, or used conforms exactly to the
patent claim of another;
2. Addition rule – one makes, uses, or sells
an item that has all the elements of the patent
claim of another plus other elements.
c. Doctrine of Equivalents
The doctrine of equivalents provides that an

infringement also takes place when a device
appropriates a prior invention by incorporating
its innovative concept and, although with some
modification and change, performs substantially
the same function in substantially the same way
to achieve substantially the same result. In other
words, the principle or mode of operation must
be the same or substantially the same.
The doctrine of equivalents thus requires

satisfaction of the function-means-and-result
test, the patentee having the burden to show
that all three components of such equivalency
test are met. (Smith Kline Beckman Corp. v. CA)
The doctrine of equivalents thus requires

satisfaction of the function-means-and-result
test, the patentee having the burden to show
that all three components of such equivalency
test are met. (Smith Kline Beckman Corp. v. CA)

Intellectual Property Code

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INTELLECTUAL PROPERTY CODE

The term “INTELLECTUAL PROPERTY”

Example: Indications which identify wine as coming

a. LITERARY AND ARTISTIC WORKS

a. LITERARY AND ARTISTIC WORKS

a. LITERARY AND ARTISTIC WORKS

a. LITERARY AND ARTISTIC WORKS

a. LITERARY AND ARTISTIC WORKS

a. LITERARY AND ARTISTIC WORKS

a. LITERARY AND ARTISTIC WORKS

a. Any idea, procedure, system, method or

b. News of the day and other miscellaneous

c. Any official text of a legislative, administrative

payment of royalties. No prior approval or

e. The trade name and container of a medicated

f. In the same manner, copyright registration of a

(a) Recitation or performance of a work, once it

(b) Making of quotations from a published work

(c) Reproduction or communication to the public

(d) Reproduction and communication to the

(e) Inclusion of a work in a publication,

(f) Recording made in schools, universities, or

repertoire of feature films except for brief

(g) Making of ephemeral recordings by a

(h) Use made of a work by or under the

(i) Public performance or the communication to

(j) Public display of the original or a copy of the

(k) Any use made of a work for the purpose of

(l) Single copy reproduction of a published work

(m) Reproduction by non-profit libraries of: (i)

(n) One back-up copy of computer program.

Fair use of a copyrighted work for criticism,

a. Factors to consider to determine whether use

a. how made – when there is piracy or

b. A person infringes a right protected under this

b. A person infringes a right protected under this

a. TRADEMARK - A trademark is any visible sign

Thus, the basis requirements are:

b. COLLECTIVE MARK – any visible sign

NOTE: There is no need to register trade names

(1) they indicate origin or ownership of the

The right in a mark shall be acquired through

ii. However, there must be actual use

reasons for non-use within one (1) year

reasons for non-use within one (1) year

iii. It is also provided that a certificate of

to use the same (Sec. 138, IPC). This means

iv. Registration is also not important to

iv. Registration is also not important to

Registration of a mark is not necessary for

Unfair competition is present when : (1)

1. The filing date of an application shall be the

2. However, the right may also be protected from

(a) Consists of immoral, deceptive or scandalous

(c) Consists of a name, portrait or signature identifying

(d) Is identical with a registered mark belonging to a

Patentable inventions refer to any technical

(ii) that which forms part of an application

3. Inventive Step - An invention involves an

NOTE: In the case of drugs and medicines, there

(iii) mere use of a known process unless such

4. Person skilled in the Art – presumed to be an