TNQ Reviewer in IP Law

The topical outline used is based on the Supreme Court

Syllabus. This reviewer is equipped with bar questions from
1975 to 2014, relevant jurisprudence from Dean Divina’s
syllabus and codal citations. Moreover, this reviewer includes
the discussions of Dean Divina from my handwritten notes.

A. Intellectual Property Rights in General

1. Intellectual Property Rights

Remedy in case of Interlocutory Orders of the BLA-IPO:

RA 8293 is silent with respect to any remedy available to
litigants who intend to question an interlocutory order issued
by the BLA-IPO. Moreover, Section 1(c), Rule 14 of the Rules
and Regulations on Administrative Complaints for Violation
of Laws Involving Intellectual Property Rights simply
provides that interlocutory orders shall not be appealable.
The said Rules and Regulations do not prescribe a procedure
within the administrative machinery to be followed in
assailing orders issued by the BLA-IPO pending final
resolution of a case filed with them. Hence, in the absence of
such a remedy, the provisions of the Rules of Court shall apply
in a suppletory manner, as provided under Section 3, Rule 1
of the same Rules and Regulations. In the present case,
respondents correctly resorted to the filing of a special civil
action for certiorari with the CA to question the assailed
Orders of the BLA-IPO, as they cannot appeal therefrom and
they have no other plain, speedy and adequate remedy in the
ordinary course of law. This is consistent with Sections 1 and
4, Rule 65 of the Rules of Court, as amended. (Philippine
Pharmawealth vs. Pfizer, Inc., G.R. No. 167715, November
17, 2010).

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2. Differences between Copyrights, Trademarks and Patent
Patent
What are 1. Discoveries, scientific theories and
excluded mathematical methods;
 E.g. theory of relativity
2. Schemes, rules and methods of
performing mental acts, playing games
or doing business, and programs for
computers;
3. 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;
 E.g. yoga, acupuncture
4. 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.
5. Aesthetic creations; and
6. Anything which is contrary to public
order or morality.
Notes:
 No right to prevent third
party from importing
medicines as long as it has
been introduced in the
Philippines or anywhere else
in the world.
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Trademark Copyright
(a) Consists of immoral, deceptive or scandalous matter, or matter which may 1. Pleadings
disparage or falsely suggest a connection with persons, living or dead, 2. Idea, system, procedure, etc.
institutions, beliefs, or national symbols, or bring them into contempt or  Discovery of planet
disrepute; (Harvard case)  System to access telephone
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of numbers (iTel bar question)
its political subdivisions, or of any foreign nation, or any simulation thereof;  System to make filing efficient
(c) Consists of a name, portrait or signature identifying a particular living 3. News of the day
individual except by his written consent, or the name, signature, or portrait of  E.g. tweet, retweet
a deceased President of the Philippines, during the life of his widow, if any,  Violation of right to privacy
except by written consent of the widow; but not infringement: when
(d) Is identical with a registered mark belonging to a different proprietor or a mark you took a photo of someone
with an earlier filing or priority date, in respect of: and uploaded it on the
(i) The same goods or services, or internet.
(ii) Closely related goods or services, or 4. Decisions of courts and tribunals
(iii) If it nearly resembles such a mark as to be likely to deceive or cause 5. Any Official text of a legislative,
confusion (source or origin – if the goods are not competing); administrative, or legal nature, as well
 Doctrine of Unrelated Goods – protection extends only to goods specified as any official translation thereof.
in the certificate of registration and those related thereto 6. Works of the Government
 Taiwan Kolin vs. Kolin Electronics: TEST is not whether they belong to  Bills that will turn into law
the same Nice Classification but various other factors such as how sold,  XPN: for profit, in which case,
distributed, price differentials prior approval of the
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark government agency or office
which is considered bythe competent authority of the Philippines to be wherein the work is created
well-known internationally and in the Philippines, whether or not it is shall be necessary.
registered here, as being already the mark of a person other than the applicant  XPN to XPN: Even if
for registration, and used for identical or similar goods or services: Provided, for profit, no prior
That in determining whether a mark is well-known, account shall be taken of approval shall be
the knowledge of the relevant sector of the public, rather than of the public at required for the use for
large, including knowledge in the Philippines which has been obtained as a any purpose of
result of the promotion of the mark; statutes, rules and
 XPN: Owner of a well-known mark is entitled to injunction even if it is regulations, and
not registered, for dissimilar goods/services, if use of the mark will cause speeches, lectures,
dilution of its goodwill. E.g. Louis Vuitton – bag vs. napkin (will dilute LV’s sermons, addresses,
name) and dissertations,
 There must be extensive use to be considered well-known. (Mighty Gallo pronounced, read, or
Case) rendered in courts of
 Dockers – no extensive use, not well-known justice, before
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark administrative
considered well-known inaccordance with the preceding paragraph, which is agencies, in
registered in the Philippines with respect to goods or services which are not deliberative
similar to those with respect to which registration is applied for: Provided, That assemblies, and in
use of the mark in relation to those goods or services would indicate a meetings of public
connection between those goods or services, and the owner of the registered character.
 mark: Provided further, That the interests of the owner of the registered mark  E.g. Lecture on
are likely to be damaged by such use; discovery of new
(g) Is likely to mislead the public, particularly as to the nature, quality, planet – still not
characteristics or geographical originof the goods or services; copyrightable because
(h) Consists exclusively of signs that are generic for the goods or services that they it relates to a discovery
seek to identify; (what matters is the
 Descriptive vs. Generic, Descriptive – characteristic, function, quality of a subject/object of the
product (e.g. light, pale); Generic – genus of which the specie is a part lecture)
without individuating characteristic (e.g. beer)
 Lyceum is generic Note: Useful article cannot be copyrighted
 San Francisco + Coffee – registrable if combined, but alone they cannot unless aesthetic design can be separated
be registered because they are generic (Denicola Test).
 Marlboro neither generic nor descriptive
 MASTER – suggestive, requires imagination
(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 Is contrary to public
order or morality.

Note: For (j) (k) (l), XPN: Doctrine of Secondary Meaning – 5 years (Ang Tibay vs.
CA)
Ownership  Belongs to inventors, heirs,
assigns
 BAR: Subscription not
assignment (inventor may
bequeath or assign, assignee
is the licensee also)
 Inventor will not file patent
in a voluntary licensing
agreement
 Right to a patent based on
first to file rule not first to
invent
1. St. Francis vs. Shangri-La – locally and only for realty projects, cannot
acquire a secondary meaning because it must be of general application
2. Limited to condo projects only in Ortigas
 Acquired through registration plus actual use  Please see table
 Now: there is no more proof of actual use  How acquired: moment of
 Basis of registration is ownership – the one using it locally or abroad creation
 Issuance of Certificate of Registration is prima faci evidence only of (3)  No longer any need to register
things in order to be entitled to
 DAU: 3 years from filing or one year from 5th anniversary (failure to file protection under the law
DAU: motu proprio the application of any person may be cancelled or  William Ching vs. Salinas:
the mark may be delisted) useful article cannot be
 EYIS vs. Shen Dar: 2 Certificates of Registration for the same trademark copyrighted but the aesthetic
issued to different entities, EYIS proved that it was first to use. RTC design aspect can.
cancelled Shen Dar’s mark even if Shen Dar was the one who filed a
petition for cancellation against EYIS’ mark. SC: Valid. As long as the IPO
had basis to conclude and rule that the other was the first one to use
therefore such other person owns the mark. (TAKE NOTE!!!)
 Superior vs. Kunan: a distributor cannot file an application for
registration

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Rights A patent shall confer on its owner the
Conferred following exclusive rights:
(a) Where the subject matter of a
patent is a product, to
restrain, prohibit and prevent
any unauthorized person or
entity from making, using,
offering for sale, selling or
importing that product;
(MUOSI)
(b) Where the subject matter of a
patent is a process, to
restrain, prevent or prohibit
any unauthorized person or
entity from using the process,
and from manufacturing,
dealing in, using, selling or
offering for sale, or importing
any product obtained directly
or indirectly from such
process. (D-MUOSI)
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 Ecole: Use of the trademark may be locally or abroad, superseded
Morris case (there, Philip Morris was not able to establish use of the
mark in the Phil., only in the US), in Ecole, it was not well-known but it
was used in France.
 Birkenstock: owner can prevent others from registering even if the
true owner is not registered, the true owner can file an opposition.
The owner of a registered mark shall have the exclusive right to prevent all third Copyright or Economic Rights. - Subject to
parties not having the owner's consent from using in the course of trade identical the provisions of Chapter VIII, copyright
or similar signs or containers for goods or services which are identical or similar or economic rights shall consist of the
to those in respect of which the trademark is registered where such use would exclusive right to carry out, authorize or
result in a likelihood of confusion. In case of the use of an identical sign for prevent the following acts:
identical goods or services, a likelihood of confusion shall be presumed. 177.1. Reproduction of the work or
substantial portion of the work;
177.2. Dramatization, translation,
adaptation, abridgment, arrangement or
other transformation of the work;
177.3. The first public distribution of the
original and each copy of the work by sale
or other forms of transfer of ownership;
177.4. Rental;
177.5. Public display of the original or a
copy of the work;
177.6. Public performance of the work;
and
177.7. Other communication to the public
of the work. (Sec. 5, P. D. No. 49a)
Moral Rights. - The author of a work shall,
independently of the economic rights in
Section 177 or the grant of an assignment
or license with respect to such right, have
the right:
193.1. To require that the authorship of
the works be attributed to him,
 In perpetuity, the other moral
rights are coterminous with
economic rights (they expire
along with the economic rights)
 E.g. Composer assigned
copyright, can assignee modify
from rock to jazz? The assignee
cannot claim he is the author,
 moral right of attribution exists
forever. The assignee must
attribute the original
composition to the author.

193.2. To make any alterations of his work

prior to, or to withhold it from
publication;

193.3. To 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

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. No. 49)

Note: The right to use or possess is not

included in the economic rights under the
IPC but under the amendment, mere use
of pirated software or mere possession
thereof is an infringement. It does not
even qualify as to temporary
possession.
Limitations 1. Use of the product after it has 1. Prior Use – first one to use can oppose or cancel registration 1. Private
been put in the market 2. Printer – unaware that the trademark is owned by another (good faith),  Cover song (e.g. Adele’s Hello) –
2. Privately on a non- only injunction not damages if there is no alteration and
commercial scale 3. Newspaper – only injunction against future publication not damages singing is not for profit, no
3. Experiment infringement. Otherwise (pop to
4. Medicine rock), there is infringement.
5. Vessel 2. Quotation of a published work –
6. Government consistent with fair use and
7. Prior User with right of attribution
 Habana vs. Robles – not the
number of pages but injury
caused, to the extent that the
work was substantially
diminished
 No definition of “substantial
portions” – question of fact on
injury caused to the author
3. Items of mere press information
by mass media
4. Report of current events

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  By photography,
cinematography
 Orlina glass sculpture (current
exhibit), you took a photo and
had it published
5. Illustration for teaching
purposes
6. Recordings made by schools
7. Ephemeral Recording
8. Public display
 Work of sculpture, photo taken
after purchase and photo
displayed publicly
9. Government – must carry rule,
no alteration in retransmission
(ABS CBN), includes paid
commercials (GMA)
10. Public performance
11. Judicial
12. Visually impaired – not for
profit
13. Fair Use
Terms of 20 years from registration. 10 years from registration. Generally, 50 years.
Protection
Infringemen Unauthorized MUOSI and D-MUOSI RIS-LC Performance of any of the economic or
t moral rights, the sole right to do is vested
by law to the copyright owner.
Direct and 3rd party liability
 Copying a pirated copy is an
infringement
 Lessee copies a pirated copy of
original movie and sells to
customers with knowledge on
their part, parties liable 1.
Owner (if 3 elements of 3rd
party liability – benefiting, are
present) 2. Lessee (direct
infringer) 3. Customer (mere
possession is infringement)
Tests Literal and Doctrine of Equivalents Dominancy and Holistic Test No test. Just determine whether there is
(identity of result not automatically similarity between the works or a
infringement, it must satisfy means, substantial portion thereof.
ways, results)
Remedies Common:
1. Infringement (civil action) – actual damages
2. Injunction
3. Impound, seize, confiscate
4. Destroy
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 Damages based on royalty, not to
exceed 3x
Inducer can be held liable.
Repeat infringement in order to file
criminal case.
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Profits which plaintiff would have made or defendant actually made Legal costs, moral, exemplary, may be
doubled, statutory damages: fixed
amount no need to prove, must not
exceed PhP50,000
Inducer cannot be held liable. Inducer can be held liable.
One act of infringement is enough.
3. Technology Transfer Arrangements
B. Patents
1. Patentable Inventions
Section 21. Patentable Inventions. - Any technical solution of
a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable shall
be Patentable. It may be, or may relate to, a product, or
process, or an improvement of any of the foregoing.
Novelty - An invention shall not be considered new if it forms
part of a prior art.
Prior Art - Prior art shall consist of:
1. Everything which has been made available to the
public anywhere in the world, before the filing date
or the priority date of the application claiming the
invention; and
2. (Previous application for patent registration) The
whole contents of an application for a patent, utility
model, or industrial design registration, published in
accordance with this Act, filed or effective in the
Philippines, with a filing or priority date that is
earlier than the filing or priority date of the
application: Provided:
(1) That the application which has validly
claimed the filing date of an earlier
application under Section 31 of this Act,
shall be prior art with effect as of the filing
date of such earlier application and
(2) That the applicant or the inventor
identified in both applications are not one
and the same.
Non-Prejudicial Disclosure: The disclosure of
information contained in the application during the
twelve (12) months preceding the filing date or the
priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such
disclosure was made by:
(a) The inventor;
(b) A patent office and the information was contained
(a) in another application filed by the inventor
andshould not have been disclosed by the office, or
(b) in an application filed without the knowledge or
consent of the inventor by a third party which
obtained the information directly or indirectly
from the inventor; or
(c) A third party which obtained the information
directly or indirectly from the inventor.
Note: "inventor" also means any person who, at the
filing date of application, had the right to the patent.
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.
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Industrial Applicability - An invention that can be produced
and used in any industry shall be industrially applicable.
Note: In the case of utility models, they need not have the
requisite “inventive step”, while an industrial design need not
have the following requisites: “inventive step” and “industrial
applicability”.
Terms of Protection
Invention Utility Model Industrial Design
20 years from 7 years from 5 years from the date
the date of the date of of filing and is
filing filing without renewable for not
renewal more than 2
consecutive periods of
5 years each
Relevant Jurisprudence: A utility model is a technical solution to
a problem in any field of human activity which is new and
industrially applicable; it may be, or may relate to, a product, or
process, or an improvement of any of the aforesaid. Being plain
automotive spare parts that must conform to the original
structural design of the components they seek to replace, the Leaf
Spring Eye Bushing and Vehicle Bearing Cushion are not
ornamental; they lack the decorative quality or value that must
characterize authentic works of applied art and in actuality, they
are utility models, useful articles, albeit with no artistic design or
value. (Jessie Ching vs. William Salinas, et. al., G.R. No. 161295,
June 29, 2005)
Bar Questions:
1. Can an article of commerce serve as a trademark and at the
same time enjoy patent and copyright protection? Explain and
give an example.
Answer: A stamped or marked container of goods can be registered
as a trademark. An original ornamental design or model for articles
of manufacturer can be copyrighted. An ornamental design cannot
be patented, because aesthetic creations cannot be patented.
However, it can be registered as an industrial design. Thus, a
container of goods which has an original ornamental design can be
registered as a trademark, can be copyrighted, and can be registered
as an industrial design. (BAR 2010)
2. X invented a method of improving the tenderness of meat by
injecting an enzyme solution into the live animal shortly before
a slaughter. Is the invention patentable?
Answer: To be patentable, the invention must be new and should
consist in a useful machine, manufactured product or process.
Among those that cannot be patented are processes which are not
directed to making or improving a commercial product. Viewed
from the above light, X may lawfully patent his invention. (BAR
1989)
3. Laberge, Inc. manufactures and markets after-shave lotion,
shaving cream, deodorant, talcum powder and toilet soap,
using the trademark “PRUT”, which is registered with the
Philippine Patent Office. Laberge does not manufacture briefs
and underwear and these items are not specified in the
certificate of registration.
JG, who manufactures briefs and underwear, wants to know
whether, under our laws, he can use and register the trademark
“PRUTE” for his merchandise. What is your advice?
Answer: Yes. The trademark registered in the name of Laberge, Inc.
covers only after-shave lotion, shaving cream, deodorant, talcum
powder and toilet soap. It does not cover briefs and underwear.
The limit of the trademark is stated in the certificate issued to
Laberge, Inc. It does include briefs and underwear which are
different products protected by Laberge’s trademark.
JG can register the trademark “PRUTE” to cover its briefs and
underwear. (BAR 1994)
4. Cezar works in a car manufacturing company owned by Joab.
Cezar is quite innovative and loves to tinker with things. With
the materials and parts of the car, he was able to invent a gas-
saving device that will enable cars to consume less gas. Francis,
a co-worker, saw how Cezar created the device and likewise,
came up with a similar gadget, also using scrap materials and
spare parts of the company. Thereafter, Francis filed an
application for registration of his device with the Bureau of
Patents. 18 months later, Cezar filed an application for
registration his device with the Bureau of Patents.
Is the gas-saving device patentable? Explain.
Answer: It is patentable because it is new, it involves an inventive
step and it is industrially applicable. (BAR 2005)
5. Dr. Nobel discovered a new method of treating Alzheimer’s
involving a special method of diagnosing the disease, treating it
with a new medicine that has been discovered after long
experimentation and field testing, and novel mental isometric
exercises. He comes to you for advice on how he can have his
discoveries protected. Can he legally protect his new method of
diagnosis, the new medicine, and the new method of treatment?
If no, why? If yes, how?
Answer: Dr. Nobel can be protected by a patent for the new medicine
as it falls within the scope of Section 21 of the Intellectual Property
Code. But no protection can be legally extended to him for the
method of diagnosis and method of treatment which are expressly
non-patentable. (BAR 2010)
2. Non-Patentable Inventions
Section 22. Non-Patentable Inventions. - The following shall
be excluded from patent protection:
22.1. Discoveries, scientific theories and mathematical
methods;
22.2. Schemes, rules and methods of performing mental acts,
playing games or doing business, and programs for
computers;
22.3. 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;
22.4. 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.
Provisions under this subsection shall not preclude Congress
to consider the enactment of a law providing sui generis
protection of plant varieties and animal breeds and a system
of community intellectual rights protection:
22.5. Aesthetic creations; and
22.6. Anything which is contrary to public order or morality.
Bar Questions:
1. X invented a bogus coin detector which can be used
exclusively on self-operating gambling devices otherwise
known as one-armed bandits. Can X apply or a patent?
Answer: X may not apply for the patent since the gambling device
mentioned in the problem itself is prohibited and against public
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order. But if the machine is used in legalized gambling such as in
cases of exclusive use of casinos established by the government,
such device can be patented. (BAR 1989)
2. Supposing that Albert Einstein were alive today and he filed
with the Intellectual Property Office (IPO) an application for
patent for his theory of relativity expressed in the formula
E=mc2. The IPO disapproved Einstein’s application on the
ground that his theory of relativity is not patentable.
Is the IPO’s action correct?
Answer: Yes. The IPO’s action is correct that the theory of relativity
is not patentable. Under Section 22.1 of the Intellectual Property
Code (RA 8293), “Discoveries, scientific theories and mathematical
methods” are not patentable. (BAR 2006)
3. Ownership of a Patent
Relevant Jurisprudence: When petitioner never secured a
patent for the light boxes, it therefore acquired no patent rights
which could have protected its invention. The ultimate goal of a
patent system is to bring new designs and technologies into the
public through disclosure; hence, ideas, once disclosed to the
public without protection of a valid patent, are subject to
appropriation without significant restraint. (Pearl & Dean
(Phil.), Inc. vs. Shoemart, Inc., G.R. No. 148222, August 15,
2003)
Bar Question: X works as a research computer engineer with
the Institute of Computer Technology, a government agency.
When not busy with his work, but during office hours, he
developed a software program for law firms that will allow
efficient monitoring of the cases, which software program is not
at all related to his work. Assuming the program is patentable,
who has the right over the patent? a) X; b) Institute of Computer
Technology; c) Neither X nor the Institute Computer
Technology can claim patent right over the invention; d) X and
the employer of X will jointly have the rights over the patent.
Answer: a) X. (BAR 2012)
Right to a Patent
Section 28. Right to a Patent. - The right to a patent belongs to
the inventor, his heirs, or assigns. When two (2) or more
persons have jointly made an invention, the right to a patent
shall belong to them jointly. (Sec. 10, R.A. No. 165a)
Section 29. 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.
(3rd sentence, Sec. 10, R.A. No. 165a.)
Right of Priority - An application for patent filed by any
person who has previously applied for the same invention in
another country which by treaty, convention, or law affords
similar privileges to Filipino citizens, shall be considered as
filed as of the date of filing the foreign application: Provided,
That: (a) the local application expressly claims priority; (b) it
is filed within twelve (12) months from the date the earliest
foreign application was filed; and (c) a certified copy of the
foreign application together with an English translation is
filed within six (6) months from the date of filing in the
Philippines. (Sec. 15, R.A. No. 165a)

Section 30. Inventions Created Pursuant to a Commission. -
30.1. The person who commissions the work shall own the
patent, unless otherwise provided in the contract.
30.2. In case the employee made the invention in the course
of his employment contract, the patent shall belong to:
(a) The employee, if the inventive activity is
not a part of his regular duties even if the employee
uses thetime, facilities and materials of the employer.
(b) The employer, if the invention is the
result of the performance of his regularly-assigned
duties, unlessthere is an agreement, express or
implied, to the contrary.
Bar Questions:
1. Che-che invented a device that can convert rainwater to
automobile fuel. She asked Macon, a lawyer, to assist in getting
her invention patented. Macon suggested that they form a
corporation with other friends and have the corporation apply
for a patent, 80% of the shares of stock thereof to be subscribed
by Che-Che and 5% by Macon. The corporation was formed and
the patent application was filed. However, Che-che died 3
months later of a heart attack.
Franco, the estranged husband of Che-che, contested the
application of the corporation of the corporation and filed his
own patent application of the corporation and filed his own
patent application as the sole surviving heir of Che-che. Decide
the issue with reasons.
Answer: The estranged husband of Che-che cannot successfully
contest the application. The rights over inventions accrue from the
moment of creation and as a right it can lawfully be assigned. Once
the title thereto is vested in the transferee, the latter has the right to
apply for its registration. The estranged husband of Che-che, if not
disqualified to inherit, merely would succeed to the interest of Che-
che. (BAR 1990)
2. Cezar works in a car manufacturing company owned by Joab.
Cezar is quite innovative and loves to tinker with things. With
the materials and parts of the car, he was able to invent a gas-
saving device that will enable cars to consume less gas. Francis,
a co-worker, saw how Cezar created the device and likewise,
came up with a similar gadget, also using scrap materials and
spare parts of the company. Thereafter, Francis filed an
application for registration of his device with the Bureau of
Patents. 18 months later, Cezar filed an application for
registration his device with the Bureau of Patents.
Supposing Joab got wind of the inventions of his employees and
also laid claim to the patents, asserting that Cezar and Francis
were using his materials and company time in making the
devices, will his claim prevail over those of his employees?
Explain.
Answer: The claim of Joab will not prevail over those of his
employees, even if they used his materials and company time in
making the gas-saving device. The invention of the gas-saving device
is not part of their regular duties as employees. (BAR 2005)
4. Grounds for Cancellation of a Patent
Section 61. Cancellation of Patents. - 61.1. Any interested
person may, upon payment of the required fee, petition to
cancel the patent or any claim thereof, or parts of the claim, on
any of the following grounds:
(a) That what is claimed as the invention is not new or
Patentable;
10 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
(b) That the patent does not disclose the invention in a
manner sufficiently clear and complete for it to
becarried out by any person skilled in the art; or
(c) That the patent is contrary to public order or
morality.
5. Remedy of the True and Actual Inventor
Section 67. Patent Application by Persons Not Having the Right
to a Patent. . - 67.1. If a person referred to in Section 29 other
than the applicant, is declared by final court order or decision
as having the right to the patent, such person may, within three
(3) months after the decision has become final:
(a) Prosecute the application as his own application in
place of the applicant;
(b) File a new patent application in respect of the same
invention;
(c) Request that the application be refused; or
(d) Seek cancellation of the patent, if one has already
been issued.
Section 68. Remedies of the True and Actual Inventor. - If a
person, who was deprived of the patent without his consent or
through fraud is declared by final court order or decision to be
the true and actual inventor, the court shall order for his
substitution as patentee, or at the option of the true inventor,
cancel the patent, and award actual and other damages in his
favor if warranted by the circumstances. (Sec. 33, R.A. No. 165a)
Section 70. Time to File Action in Court. - The actions indicated
in Sections 67 and 68 shall be filed within one (1) year from the
date of publication made in accordance with Sections 44 and 51,
respectively. (n)
Bar Questions:
1. Basilio invents and secures registration of patent of a mini-
threshing machine which he manufactures. Rudy, his employee,
assisted him in the actual making of the machine. Later, after
resigning from his employment with Basilio, Rudy bought tools
and equipments to manufacture similar mini-threshing
machine which he sold for his own benefit.
What legal steps will you take if you were hired as counsel of
Basilio to protect his rights?
Answer: As counsel for Basilio, I will institute the following steps:
“Within 4 years from the commission of acts of infringement, I will
bring a civil action for infringement of patent before the proper
court to recover from the infringer damages sustained by reason of
the infringement.
In the same civil action I will secure an injunction to enjoin the
infringer from the use of such patented invention.”
“If after a final judgment is rendered by the Court against the
infringer, he repeated the infringement, I will again institute a civil
action for damages with a prayer for the issuance of a writ of
injunction, as well as criminal action for repetition of infringement.”
(BAR 1977)
2. “I” has invented a certain device, which when attached to the
engine of a motor vehicle would cut the consumption of
gasoline by 50%. Without securing a patent therefore, he
started manufacturing the gadget in large quantities and
promoted it sales.
An ingenious “J” bought one gadget, dismantled and studied it,
and in due time was himself manufacturing an identical device.
Before offering it for sale, “J” secured a patent for his device
which he called “Gasopid”.
“I” learns of the patent and desires to secure his own patent but
fearing that he might be sued for infringement of patent, seeks
your legal advice.
How can you help him? Explain briefly.
Answer: It depends. “I” may still apply for a patent of his invention,
he being the first true and actual inventor, and have the patent of “J”
be cancelled, for having been issued to one who is not the true and
actual inventor; provided that “I” shall file the application for patent
within 1 year from the time of his sale of his said device in the
Philippines; otherwise, without those requirements above-stated,
“I” may no longer apply for a patent on his said invention. (Secs. 9,
10 and 28 Patent Law) (BAR 1981)
3. Ferdie is a patent owner of a certain invention. He discovered
that his invention is being infringed by Johann.
What are the remedies available to Ferdie against Johann?
Answer: The following are the remedies available to Ferdie against
Johann:
a. Seize and destroy b. Injunction c. Damages in such amount may
have been obtained from the use of the invention if properly
transacted which can be more than what the infringer (Johann)
received. d. Attorney’s fees and costs. (BAR 1993)
4. Cezar works in a car manufacturing company owned by Joab.
Cezar is quite innovative and loves to tinker with things. With
the materials and parts of the car, he was able to invent a gas-
saving device that will enable cars to consume less gas. Francis,
a co-worker, saw how Cezar created the device and likewise,
came up with a similar gadget, also using scrap materials and
spare parts of the company. Thereafter, Francis filed an
application for registration of his device with the Bureau of
Patents. 18 months later, Cezar filed an application for
registration his device with the Bureau of Patents.
Assuming that it is patentable, who is entitled to the patent?
What, if any, is the remedy of the losing party?
Answer: Francis is entitled to the patent, because he had the earlier
filing date. The remedy of Cezar is to file a petition in Court for the
cancellation of the patent of Francis on the ground that he is the true
and actual inventor, and ask for his substitution as patentee. (BAR
2005)
6. Rights Conferred by a Patent
Section 71. Rights Conferred by Patent. - 71.1. A patent shall
confer on its owner the following exclusive rights:
(c) Where the subject matter of a patent is a product, to
restrain, prohibit and prevent any unauthorized person
or entity from making, using, offering for sale, selling or
importing that product; (MUOSI)
(d) Where the subject matter of a patent is a process, to
restrain, prevent or prohibit any unauthorized person
or entity from using the process, and from
manufacturing, dealing in, using, selling or offering for
sale, or importing any product obtained directly or
indirectly from such process. (D-MUOSI)
71.2. Patent owners shall also have the right to assign, or
transfer by succession the patent, and to conclude licensing
contracts for the same. (Sec. 37, R.A. No. 165a)
Relevant Jurisprudence:
The tiles produced from respondent’s process are suitable for
construction and ornamentation, which previously had not been
achieved by tiles made out of the old process of tile making;
therefore, the said invention having brought about a new and useful
kind of tile, the patent is legally issued. With this, the act of making,
using and selling tiles embodying said patented invention constitute
infringement. (Domiciano Aguas vs. Conrado De Leon, G.R. No. L-
32160, January 30, 1982)
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The validity of the patent issued by the Philippine Patent Office and
the question over the inventiveness, novelty and usefulness of the
improved model of the LPG burner are matters which are better
determined by the Patent Office. There is a presumption that the
Philippine Patent Office has correctly determined the patentability
of the model and such action must not be interfered with in the
absence of competent evidence to the contrary. (Manzano vs. Court
of Appeals, G.R. No. 113388, September 5, 1997)
There can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the
patent arises alone from the grant of patent. A patent gives the
inventor the right to exclude all others from making, using or selling
his invention. (Creser Precision Systems, Inc. vs. Court of
Appeals, G.R. No. 118708, February 2, 1998)
Any new model of implements or tools of any industrial product
even if not possessed of the quality of invention but which is of
practical utility is entitled to a patent for utility model. The decision
of the Director of Patents in granting the patent is always presumed
to be correct. In view of this presumption, the holder of a utility
patent for an improved audio equipment known as the sing-along
system is entitled to a writ of preliminary injunction to enjoin the
use and sale of a sing-along system which is substantially identical
to it and accomplishes the same result. (Del Rosario vs. Court of
Appeals, 255 SCRA 152, 1996)
When the language of its claims is clear and distinct, the patentee is
bound thereby and may not claim anything beyond them. the
language of Letter Patent No. 14561 fails to yield anything at all
regarding Albendazole and no extrinsic evidence had been adduced
to prove that Albendazole inheres in petitioner’s patent in spite of its
omission therefrom or that the meaning of the claims of the patent
embraces the same. (Smith Kline Beckman Corporation vs. Court
of Appeals, G.R. No. 126627, August 14, 2003)
The patent law has a three-fold purpose: first, it seeks to foster and
reward invention; second, it promotes disclosure of inventions to
stimulate further innovation and to permit the public to practice the
invention once the patent expires; and third, the stringent
requirements for patent protection seek to ensure that ideas in the
public domain remain there for the free use of the public and it is
only after an exhaustive examination by the patent office that patent
is issued. Not having gone through the arduous examination for
patents, petitioner cannot exclude others from the manufacture, sale
or commercial use of the light boxes on the sole basis of its copyright
certificate over the technical drawings. (Pearl & Dean (Phil.), Inc.
vs. Shoemart, Inc., G.R. No. 148222, August 15, 2003)
A patentee shall have the exclusive right to make, use and sell the
patented machine, article or product, and to use the patented
process for the purpose of industry or commerce, throughout the
territory of the Philippines for the term of the patent; and such
making, using, or selling by any person without the authorization of
the patentee constitutes infringement of the patent. The patentee’s
exclusive rights exist only during the term of the patent, hence, after
the cut-off date, the exclusive rights no longer exist and the
temporary restraining order can no longer be issued in its favor.
(Phil. Pharmawealth, Inc. vs. Pfizer, Inc., G.R. No. 167715,
November 17, 2010)
Bar Questions:
1. Nestor Dionisio invented a space age revolutionary mini
room air-conditioner and was able to secure the registration
patent and issuance of patent certificate for said invention by
the Philippines’ Patent Office. He immediately went into
commercial production and sale of his invention. Later, Carlos
Asistio, who used to be Nestor’s plant manager, organized his
own company, and engaged in the manufacture of exactly the
same mini-room air-conditioners for his own outfit and which
he sold for his own benefit.
As counsel of Dionisio, what legal steps would you take to
protect his rights and interests? Discuss.
Answer: As counsel of Nestor Dionisio, the registrant of a patent for
an air-conditioner, I may file with the RTC the action for
infringement of patent against Carlos Asistio. My client, being the
patentee, has the exclusive right to make, use and sell his invention,
and he is entitled to recover damages and even injunction against
the infringer. (BAR 1985)
2. For years, Y has been engaged in the parallel importation of
famous brands, including shoes carrying the foreign brand
MAGIC. Exclusive distributor X demands that Y cease
importation because of his appointment as exclusive
distributor of MAGIC shoes in the Philippines.
Y countered that the trademark MAGIC is not registered with
the Intellectual Property Office as a trademark and therefore
no one has the right to prevent its parallel importation.
1. Who is correct? Why?
Answer: X is correct. His rights under his exclusive distributorship
agreement are property rights entitled to protection. The
importation and sale by Y of MAGIC shoes constitutes unfair
competition. Registration of the trademark is not necessary in case
of an action for unfair competition.
2. Suppose the shoes are covered by a Philippine patent issued
to the brand owner, what would your answer be? Explain.
Answer: A patent for a product confers upon its owner the exclusive
right of importing the product. The importation of a patented
product without authorization of the owner of a patent constitutes
infringement of the patent. X can prevent the parallel importation of
such shoes by Y without its authorization. (BAR 2010)
7. Limitations of Patent Rights
Section 72. Limitations of Patent Rights. - The owner of a
patent has no right to prevent third parties from performing,
without his authorization, the acts referred to in Section 71
hereof in the following circumstances:
72.1. Using a patented product which has been
put on the market in the Philippines by the owner
of the product, or with his express consent, insofar
as such use is performed after that product has
been so put on the said market;
Note: In case of drugs or medicines, the
said limitation applies after a drug or
medicine has been introduced in the
Philippines or anywhere else in the world
by the patent owner, or by any party
authorized to use the invention. (parallel
importation)
72.2. Where the act is done privately and on a
non-commercial scale or for a non-commercial
purpose: Provided, That it does not significantly
prejudice the economic interests of the owner of
the patent;
72.3. In the case of drugs and medicines,
testing, using, making or selling the invention
including any data related thereto of durgs and
medicine, solely for purposes reasonably related to
the development and submission of information
and issuance of approvals by government
regulatory agencies required under any law of the
Philippines or of another country that regulates the
manufacture, construction, use or sale of any
product. (as amended by RA 9502)
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72.4. Where the act consists of the preparation
for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a
medical prescription after a drug or medicine has
been introduced in the Philippines or anywhere
else in the world by the patent owner, or by any
party authorized to use the invention. (as amended
by RA 9502)
72.5. The act consists of making or using
exclusively for experimental use of the invention
for scientific purposes or educational purposes and
such other activities directly related to such
scientific or educational experimental use. (as
amended by RA 9502)
72.6. Where the invention is used in any ship,
vessel, aircraft, or land vehicle of any other country
entering the territory of the Philippines
temporarily or accidentally: Provided, That such
invention is used exclusively for the needs of the
ship, vessel, aircraft, or land vehicle and not used
for the manufacturing of anything to be sold within
the Philippines. (Secs. 38 and 39, R.A. No. 165a)
a. Prior User
Section 73. Prior User. - 73.1. Notwithstanding Section 72
hereof, any prior user, who, in good faith was using the
invention or has undertaken serious preparations to use the
invention in his enterprise or business, before the filing date
or priority date of the application on which a patent is
granted, shall have the right to continue the use thereof as
envisaged in such preparations within the territory where
the patent produces its effect.
73.2. The right of the prior user may only be transferred or
assigned together with his enterprise or business, or with
that part of his enterprise or business in which the use or
preparations for use have been made. (Sec. 40, R.A. No. 165a)
b. Use by the Government
Section 74. Use of Invention by Government. - 74.1. A
Government agency or third person authorized by the
Government may exploit the invention even without agreement
of the patent owner where:
(a) The public interest, in particular, national security,
nutrition, health or the development of other sectors, as
determined by the appropriate agency of the
government, so requires; or
(b) A judicial or administrative body has determined
that the manner of exploitation, by the owner of the
patent or his licensee is anti-competitive.
74.2. The use by the Government, or third person authorized by
the Government shall be subject, mutatis mutandis, to the
conditions set forth in Sections 95 to 97 and 100 to 102. (Sec. 41,
R.A. No. 165a)
Bar Questions:
1. X invented a device which, through the use of noise, can
recharge a cellphone battery. He applied for and was granted a
patent on his device, effective within the Philippines. As it turns
out, a year before the grant of X’s patent, Y, also an inventor,
invented a similar device which he used in his cellphone
business in Manila. But X files an injunctive suit against Y to
stop him from using the device on the ground of patent
infringement. Will the suit prosper?
a. No, since the correct remedy for X is a civil action for
damages. b. No, since Y is a prior user in good faith. c. Yes, since
X is the first to register his device for patent registration. d. Yes,
since Y unwittingly used X’s patented invention.
Answer: b. No, since Y is a prior user in good faith. (BAR 2011)
8. Patent Infringement
Bar Question: In an action for infringement of patent, the
alleged infringer defended himself by stating (1) that the patent
issued by the Patent Office was not really an invention which
was patentable; (2) that he had no intent to infringe so that
there was no actionable case for infringement; and (3) that
there was no exact duplication of the patentee’s existing patent
but only a minor improvement.
With those defenses, would you exempt the alleged violator
from liability? Why?
Answer: I would not exempt the alleged violator from liability for the
following reasons:
1. A patent once issued by the Patent Office raises a presumption
that the article is patentable; it can, however be shown otherwise. A
mere statement or allegation is not enough to destroy that
presumption.
2. An intention to infringe is not necessary nor an element in a case
for infringement of a patent.
3. There is no need of exact duplication of the patentee’s existing
patent such as when the improvement made by another is merely
minor. To be independently patentable, an improvement of an
existing patented invention must be a major improvement. (BAR
1992)
a. Tests in Patent Infringement
1) Literal infringement – Godines case (power tiller and
hand tiller), there are two products which are exactly
the same
2) Doctrine of Equivalents – product appropriates the
innovate concept of another with only slight
modification
 They must have the same functions, operate in
the same way, and achieve the same results
(Smith Kline case)
i. Literal Infringement
Relevant Jurisprudence: To determine whether the particular
item falls within the literal meaning of the patent claims, the court
must juxtapose the claims of the patent and the accused product
within the overall context of the claims and specifications, to
determine whether there is exact identity of all material elements.
Viewed from any perspective or angle, the power tiller of the
defendant is identical and similar to that of the turtle power tiller
of plaintiff in form, configuration, design, appearance, and even in
the manner of operation. (Pascual Godines vs. Court of Appeals,
G.R. No. 97343, September 13, 1993)
Bar Questions:
1. Nestor Dionisio invented a space age revolutionary mini
room air-conditioner and was able to secure the registration
patent and issuance of patent certificate for said invention by
the Philippines’ Patent Office. He immediately went into
commercial production and sale of his invention. Later, Carlos
Asistio, who used to be Nestor’s plant manager, organized his
own company, and engaged in the manufacture of exactly the
13 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
same mini-room air-conditioners for his own outfit and which
he sold for his own benefit.
As counsel of Dionisio, what legal steps would you take to
protect his rights and interests? Discuss.
Answer:
As counsel of Nestor Dionisio, the registrant of a patent for an air-
conditioner, I may file with the RTC the action for infringement of
patent against Carlos Asistio. My client, being the patentee, has the
exclusive right to make, use and sell his invention, and he is entitled
to recover damages and even injunction against the infringer. (BAR
1985)
ii. Doctrine of Equivalents
Relevant Jurisprudence:
Under the doctrine of equivalents, there is infringement if two
devices do the same work in substantially the same way, and
accomplish substantially the same result, even though they differ
in name, form, or shape. The reason for the doctrine of equivalents
is that to permit the imitation of a patented invention which does
not copy any literal detail would be to convert the protection of
the patent grant into a hollow and useless thing. (Pascual
Godines vs. Court of Appeals, G.R. No. 97343, September 13,
1993)
The doctrine of equivalents provides that an infringement 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; it requires satisfaction of the function-means-and-
result test. In this case, while both compounds have the effect of
neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as
the patented compound, even though it performs the same
function and achieves the same result. (Smith Kline Beckman
Corporation vs. Court of Appeals, G.R. No. 126627, August 14,
2003)
b. Defenses in Action for Infringement
Section 76. Civil Action for Infringement. - 76.1. The making,
using, offering for sale, selling, or importing a patented
product or a product obtained directly or indirectly from a
patented process, or the use of a patented process without the
authorization of the patentee constitutes patent
infringement.
76.2. Any patentee, or anyone possessing any
right, title or interest in and to the patented
invention, whose rights have been infringed, may
bring a civil action before a court of competent
jurisdiction, to recover from the infringer such
damages sustained thereby, plus attorney's fees
and other expenses of litigation, and to secure an
injunction for the protection of his rights.
76.3. If the damages are inadequate or cannot
be readily ascertained with reasonable certainty,
the court may award by way of damages a sum
equivalent to reasonable royalty.
76.4. The court may, according to the
circumstances of the case, award damages in a sum
above the amount found as actual damages
sustained: Provided, That the award does not
exceed three (3) times the amount of such actual
damages.

76.5. The court may, in its discretion, order
that the infringing goods, materials and
implements predominantly used in the
infringement be disposed of outside the channels of
commerce or destroyed, without compensation.
76.6. Anyone who actively induces the
infringement of a patent or provides the infringer
with a component of a patented product or of a
product produced because of a patented process
knowing it to be especially adopted for infringing
the patented invention and not suitable for
substantial non-infringing use shall be liable as a
contributory infringer and shall be jointly and
severally liable with the infringer. (Sec. 42, R.A. No.
165a)
Section 77. Infringement Action by a Foreign National. - Any
foreign national or juridical entity who meets the
requirements of Section 3 and not engaged in business in the
Philippines, to which a patent has been granted or assigned
under this Act, may bring an action for infringement of patent,
whether or not it is licensed to do business in the Philippines
under existing law. (Sec. 41-A, R.A. No. 165a)
Section 79. Limitation of Action for Damages. - No damages
can be recovered for acts of infringement committed more
than four (4) years before the institution of the action for
infringement. (Sec. 43, R.A. No. 165)
Section 80. Damages, Requirement of Notice. - Damages
cannot be recovered for acts of infringement committed
before the infringer had known, or had reasonable grounds
to know of the patent. It is presumed that the infringer had
known of the patent if on the patented product, or on the
container or package in which the article is supplied to the
public, or on the advertising material relating to the patented
product or process, are placed the words "Philippine Patent"
with the number of the patent. (Sec. 44, R.A. No. 165a)
Section 81. Defenses in Action for Infringement. - In an action
for infringement, the defendant, in addition to other defenses
available to him, may show the invalidity of the patent, or any
claim thereof, on any of the grounds on which a petition of
cancellation can be brought under Section 61 hereof. (Sec. 45,
R.A. No. 165)
Section 82. Patent Found Invalid May be Cancelled. - In an
action for infringement, if the court shall find the patent or
any claim to be invalid, it shall cancel the same, and the
Director of Legal Affairs upon receipt of the final judgment of
cancellation by the court, shall record that fact in the register
of the Office and shall publish a notice to that effect in the IPO
Gazette. (Sec. 46, R.A. No. 165a)
Section 84. Criminal Action for Repetition of Infringement. - If
infringement is repeated by the infringer or by anyone in
connivance with him after finality of the judgment of the
court against the infringer, the offenders shall, without
prejudice to the institution of a civil action for damages, be
criminally liable therefor and, upon conviction, shall suffer
imprisonment for the period of not less than six (6) months
but not more than three (3) years and/or a fine of not less
than One hundred thousand pesos (P100,000) but not more
than Three hundred thousand pesos (P300,000), at the
discretion of the court. The criminal action herein provided
shall prescribe in three (3) years from date of the commission
of the crime. (Sec. 48, R.A. No. 165a)
Valid Defenses:
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1. Does not have the elements of patentability
(originality, novelty, precedence)
2. Non-patentable invention
3. Covered by a voluntary licensing agreement or
compulsory licensing agreement
Relevant Jurisprudence: An invention must possess the essential
elements of novelty, originality and precedence and for the patentee to
be entitled to protection, the invention must be new to the world. When
a patent is sought to be enforced, the questions of invention, novelty or
prior use, and each of them, are open to judicial examination; in cases
of infringement of patent no preliminary injunction will be granted
unless the patent is valid and infringed beyond question and the record
conclusively proves the defense is sham. (Rosario Maguan vs. Court
of Appeals, G.R. L-45101, November 28, 1986)
Bar Question: Ferdie is a patent owner of a certain invention.
He discovered that his invention is being infringed by Johann.
If you were the lawyer of Johann in the infringement suit, what
are the defenses that your client can assert?
Answer: These are the defenses that can be asserted in an
infringement suit:
a. Patent is invalid
b. Patent is not new or patentable
c. Specification of the invention does not comply with Sec.14
d. Patent was issued not to the true and actual inventor, designer or
author of the utility model or the plaintiff did not derive his rights
from the true and actual inventor, designer or author of the utility
model. (BAR 1993)
9. Licensing
Voluntary Compulsory
By agreement between the No agreement. A third party
parties or the government can
exploit even without the
patent owner’s consent
Granted by the licensor Granted by the Director of
Legal Affairs
a. Voluntary
Section 89. Rights of Licensor. - In the absence of any
provision to the contrary in the technology transfer
arrangement, the grant of a license shall not prevent the
licensor from granting further licenses to third person nor
from exploiting the subject matter of the technology transfer
arrangement himself. (Sec. 33-B, R.A. 165a)
Section 90. Rights of Licensee. - The licensee shall be entitled
to exploit the subject matter of the technology transfer
arrangement during the whole term of the technology
transfer arrangement. (Sec. 33-C (1), R.A. 165a)
b. Compulsory
Section 94. Period for Filing a Petition for a Compulsory
License. - 94.1. A compulsory license may not be applied for
on the ground stated in Subsection 93.5 before the expiration
of a period of four (4) years from the date of filing of the
application or three (3) years from the date of the patent
whichever period expires last.
94.2. A compulsory license which is applied for on any of the
grounds stated in Subsections 93.2, 93.3, and 93.4 and Section
 97 may be applied for at any time after the grant of the patent.
(Sec. 34(1), R.A. No. 165)
Q: Does compulsory licensing violate due process?
A: No because the licensor or patent holder will be paid
royalties with acknowledgement that such licensor or patent
holder owns the patent. (Smith Kline)
Bar Question: Compulsory Licensing of Inventions which are
duly patented may be dispensed with or will be allowed
exploitation even without agreement of the patent owner
under certain circumstances, like national emergency, for
reason of public interest, like national security, etc. The person
who can grant such authority is—
a) The Director General of the Intellectual Property Office; b)
The Director of Legal Affairs of the Intellectual Property Office;
c) The owner of the Patent right; d) Any agent of the owner of
the Patent right.
Answer: b) The Director of Legal Affairs of the Intellectual Property
Office. (BAR 2012)
10. Assignment and Transmission of Rights
Bar Question: Che-che invented a device that can convert
rainwater to automobile fuel. She asked Macon, a lawyer, to
assist in getting her invention patented. Macon suggested that
they form a corporation with other friends and have the
corporation apply for a patent, 80% of the shares of stock
thereof to be subscribed by Che-Che and 5% by Macon. The
corporation was formed and the patent application was filed.
However, Che-che died 3 months later of a heart attack.
Franco, the estranged husband of Che-che, contested the
application of the corporation of the corporation and filed his
own patent application of the corporation and filed his own
patent application as the sole surviving heir of Che-che. Decide
the issue with reasons.
Answer: The estranged husband of Che-che cannot successfully
contest the application. The rights over inventions accrue from the
moment of creation and as a right it can lawfully be assigned. Once
the title thereto is vested in the transferee, the latter has the right to
apply for its registration. The estranged husband of Che-che, if not
disqualified to inherit, merely would succeed to the interest of Che-
che. (BAR 1990)
C. Trademarks
Relevant Jurisprudence: A "trademark" is any word, name,
symbol, emblem, sign or device or any combination thereof
adopted and used by a manufacturer or merchant to identify his
goods and distinguish them from those manufactured, sold or
dealt in by others; it is any visible sign capable of distinguishing
goods. The trademark is not merely a symbol of origin and
goodwill; it is often the most effective agent for the actual creation
and protection of goodwill. (Pribhdas J. Mirpuri vs. Court of
Appeals, G.R. No. 114508, November 19, 1999)
Bar Questions:
1. (a) What is the objective of the law in protecting trademarks?
(b) What are the territorial limits of a trademark?
Answer: (a) The purpose of the law in protecting trademarks is two-
fold object: to protect the owners in his property and to protect the
public from being deceived by reason of a misleading claim.
(b) Trademarks acknowledge no territorial boundaries of states or
nations, but extends to every market where the trader’s goods have
become known and identified by the use of his mark. (BAR 1982)
15 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
2. Can an article of commerce serve as a trademark and at the
same time enjoy patent and copyright protection? Explain and
give an example.
Answer: A stamped or marked container of goods can be registered
as a trademark. An original ornamental design or model for articles
of manufacturer can be copyrighted. An ornamental design cannot
be patented, because aesthetic creations cannot be patented.
However, it can be registered as an industrial design. Thus, a
container of goods which has an original ornamental design can be
registered as a trademark, can be copyrighted, and can be registered
as an industrial design. (BAR 2010)
1. Definition of Marks, Collective Marks, Trade
Names
Trademark – any visible sign capable of distinguishing the
goods
Rationale of Trademark:
1. To protect property rights
2. To protect the public from deceiving claims
 It should attach to the goods it represents
 No territorial boundary for trademark – attaches to
the goods wherever it may be sold or distributed
 Name and container are proper subjects of
trademark
 Proof of prior use has already been eliminated
Kho vs. CA – obtained a patent for a container, SC said it was
the wrong remedy, not entitled to protection under the law
on trademark. IP rights are NOT interchangeable.
Trademark Tradename
Must be registered Need not be registered
2. Acquisition of Ownership of Mark
Section 122. How Marks are Acquired. - The rights in a mark shall
be acquired through registration made validly in accordance with
the provisions of this law. (Sec. 2-A, R A. No. 166a)
Section 131. Priority Right. - 131.1. An application for registration
of 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 day the application was first filed in the foreign
country.
131.2. No registration of a mark in the
Philippines by a person described in this section shall be
granted until suchmark has been registered in the
country of origin of the applicant.
 Trademark is acquired through registration and use.
 Ownership confers the right to register and not the
other way around.
 Issuance of Certificate of Registration (COR) is only
prima facie proof of:
Section 138. Certificates of Registration. - A certificate
of registration of a mark shall be prima facie evidence
of the validity of the registration, the registrant's
ownership of the mark, and of the registrant's exclusive
right to use the same in connection with the goods or
 services and those that are related thereto specified in
the certificate. (Sec. 20, R.A. No. 165)
 COR does not prove ownership, it is just a prima facie
presumption that can be overcome by proof to the
contrary.
 A certificate of registration shall remain in force for
10 years and may be renewed for periods of 10 years
at its expiration.
 Right of priority is also available (like patents) as
long as the mark was granted registration in the
country of origin.
Relevant Jurisprudence:
The name and container of a beauty cream product are proper
subjects of a trademark inasmuch as the same falls squarely
within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must
sufficiently prove that she registered or used it before anybody
else did. The petitioner’s copyright and patent registration of the
name and container would not guarantee her the right to the
exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. (Elidad C. Kho,
doing business under the name and style of KEC Cosmetics
Laboratory vs. Court of Appeals, et. al., G.R. No. 115758, March
19, 2002)
Even if the registration of a mark is prevented with the filing of an
earlier application for registration, this must not, however, be
interpreted to mean that ownership should be based upon an
earlier filing date. 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 and
continuous use is necessary to establish ownership of a mark,
which constitutes sufficient evidence to oppose the registration of
a mark. (E.Y. Industrial Sales vs. Shien Dar Electricity and
Machinery Co. , G.R. No. 184850, 20 October 2010)
The cancellation of registration of a trademark has the effect of
depriving the registrant of protection from infringement from the
moment the judgment or order of cancellation has become final.
Accordingly, a distributor has no right to the registration of the
disputed trademarks since the right to register a trademark is
based on ownership. An exclusive distributor who employs the
trademark of the manufacturer does not acquire proprietary
rights of the manufacturer, and a registration of the trademark by
the distributor as such belongs to the manufacturer, provided the
fiduciary relationship does not terminate before application for
registration is filed. (Superior Commercial Enterprises, Inc. vs.
Kunnan Enterprises Ltd. and Sports Concept & Distributor,
Inc., G.R. No. 169974, April 20, 2010)
It is not the application or registration of a trademark that vests
ownership thereof, but it is the ownership of a trademark that
confers the right to register the same. Registration merely creates
a prima facie presumption of the validity of the registration, of the
registrant’s ownership of the trademark, and of the exclusive right
to the use thereof; it is rebuttable, thus, it must give way to
evidence to the contrary. (Birkenstock Orthopaedie Gmbh and
Co. Kg vs. Philippine Shoe Expo Marketing Corporation, G.R.
No. 194307, November 20, 2013)
Bar Question: S Development Corporation sued Shangrila
Corporation for using the “S” logo and the tradename
“Shangrila”. The former claims that it was the first to register
the logo and the tradename in the Philippines and that it had
been using the same in its restaurant business.
Shangrila Corporation counters that it is in an affiliate of an
international organization which has been using such logo and
tradename “Shangrila” for over 20 years.
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However, Shangrila Corporation registered the tradename and
logo in the Philippines only after the suit was filed.
a) Which of the 2 corporations has a better right to use the logo
and the tradename? Explain. b) How does the international
affiliation of Shangrila Corporation affect the outcome of the
dispute? Explain.
Answer: a) S Development Corporation has a better right to use the
logo and tradename, since it was the first to register the logo and
tradename. b) Since Shangrila Corporation is not the owner of the
logo and tradename but is merely an affiliate of the international
organization which has been using them it is not the owner and does
not have the rights of an owner. (BAR 2005)
3. Acquisition of Ownership of Trade Name
Bar Questions:
1. S Development Corporation sued Shangrila Corporation for
using the “S” logo and the tradename “Shangrila”. The former
claims that it was the first to register the logo and the
tradename in the Philippines and that it had been using the
same in its restaurant business.
Shangrila Corporation counters that it is in an affiliate of an
international organization which has been using such logo and
tradename “Shangrila” for over 20 years.
However, Shangrila Corporation registered the tradename and
logo in the Philippines only after the suit was filed.
c) Which of the 2 corporations has a better right to use the logo
and the tradename? Explain.
Answer: c) S Development Corporation has a better right to use the
logo and tradename, since it was the first to register the logo and
tradename.
2. “Eagleson Refillers, Co.,” a firm that sells water to the public,
opposes the trade name application of “Eagleson Laundry, Co.,”
on the ground that such trade name tends to deceive trade
circles or confuse the public with respect to the water firm’s
registered trade name. Will the opposition prosper?
a. Yes, since such use is likely to deceive or confuse the public.
b. Yes, since both companies use water in conducting their
business. c. No, since the companies are not engaged in the
same line of business. d. No, since the root word “Eagle” is a
generic name not subject to registration.
Answer: c. No, since the companies are not engaged in the same line
of business. (BAR 2011)
4. Non-Registrable Marks
Section 123. Registrability. - 123.1. A mark cannot be registered
if it:
(m) Consists of immoral, deceptive or scandalous
matter, or matter which may disparage or falsely
suggesta connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring
them into contempt or disrepute; (Harvard case)
(n) 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;
(o) Consists of a name, portrait or signature identifying
a particular living individual except by his
writtenconsent, 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;
 (p) Is identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing
orpriority date, in respect of:
(iv) The same goods or services, or
(v) Closely related goods or services, or
(vi) If it nearly resembles such a mark as to be
likely to deceive or cause confusion;
(q) Is identical with, or confusingly similar to, or
constitutes a translation of a mark which is
considered bythe 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;
(r) Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered
well-known inaccordance 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;
(s) Is likely to mislead the public, particularly as to the
nature, quality, characteristics or geographical
originof the goods or services;
(t) Consists exclusively of signs that are generic for the
goods or services that they seek to identify;
(u) Consists exclusively of signs or of indications that
have become customary or usual to designate
thegoods or services in everyday language or in
bona fide and established trade practice;
(v) 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;
(w) 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.
Doctrine of Secondary Meaning
 Codal: As regards signs or devices mentioned in
paragraphs (j), (k), and (l), nothing shall prevent the
registrationof any such sign or device which has
become distinctive in relation to the goods for which
registration is requested as a result of the use that
have been made of it in commerce in the Philippines.
The Office may accept as prima facie evidence that
the mark has become distinctive, as used in
connection with the applicant's goods or services in
commerce, proof of substantially exclusive and
continuous use thereof by the applicant in commerce
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in the Philippines for five (5) years before the date
on which the claim of distinctiveness is made.
 General Rule: Descriptive, Generic, etc. cannot be
appropriated. XPN: Doctrine of Secondary Meaning –
associates marks with a particular manufacturer
(Ang Tibay vs. CA).
 Shangri-La vs. St. Francis Development: Saint
Francis’ project has not acquired a secondary
meaning, it cannot be associated with a
manufacturer because it is confined only to a
particular locality (Ortigas only).
o It must be of general application.
Declaration of Actual Use (DAU)
124.2. The applicant or the registrant shall file a
declaration of actual use of the mark with evidence to that
effect,as prescribed by the Regulations within three (3) years
from the filing date of the application. Otherwise, the
application shall be refused or the mark shall be removed
from the Register by the Director.
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)
 Mattel Inc. vs. Francisco: Abandonment of
trademark application is a judicial admission that he
did not file a DAU.
Doctrine of Unrelated Goods
 Protection does not extend to unrelated goods
 E.g. Faberge case – BRUT for shaving, BRUTE for
underwear; LOTUS for soya and the other for oil,
CANON for sandals and the other for paint and
chemicals.
 Not yet asked in the bar but sir said he is sure that
this will be asked in 2016: TAIWAN KOLIN CASE, one
for tv, appliances, and the other for adaptors, etc.
o Even though they have the same Nice
classification (electronic products), it is not
really the test. The test is a combination of
other factors such as whether they have the
same properties, same market segments,
same channels of trade, etc.
Theory of Dilution
 If the use of the mark will impair or dilute the
goodwill of the trademark, the owner can file a case
for injunction even if the mark is not registered in the
Philippines and the protection extends to non-
similar goods. (Paddocks vs. Dockers)
Descriptive vs. Generic
 Descriptive –
 Generic – specie forming part of the genus
 FLAVOR MASTER – Master is suggestive
 Lyceum is generic, it cannot be appropriated
 Marlboro is neither generic nor descriptive
Bar Questions:
1. X applies for registration in his favor the tradename “Loving
Care” for a hair dye on the ground that he has been using said
tradename for almost 3 years before filing his application. Y
opposes the application on the ground that he has been using
the tradename “Loving Care” with the same design for hair
pomade which is registered in his name since 1963. X replied
that although the said trademark was registered in Y’s name it
was however, for a different article. Can X’s application be
sustained? Reasons.
Answer: X’s application cannot be sustained. Although the
trademark he applied for is for a different article, hair dye and hair
pomade are both preparations for hair grooming, and the use of the
same mark for both is likely to confuse or deceive purchasers as to
the origin and source of the goods. (BAR 1976)
2. In 1988, the FDA approved the labels submitted by Turbo
Corporation for its new drug brand name, “Axilon”. Turbo is
now applying with the Bureau of Patents, Trademarks and
Technology Transfer for the registration of said brand name. It
was subsequently confirmed that “Accilonne” is a generic term
for a class of anti-fungal drugs and is used as such by the
medical professional and the pharmaceutical industry, and that
it is used as generic chemical name in various scientific and
professional publications. A competing drug manufacturer asks
you to contest the registration of the brand name “Axilon” by
Turbo.
What will be your advice?
Answer: The application for registration by Turbo Corporation may
be contested. The Trademark Law would not allow the registration
of a trademark which, when applied to or used in connection with
his products, is merely descriptive or deceptively misdescriptive of
them. Confusion can result from the result from the use of “Axilon”
as the generic product itself. (BAR 1990)
3. After disposing of his last opponent in only two rounds in Las
Vegas, the renowned boxer Sonny Bachao arrived at the NAIA
met by thousands of hero-worshipping fans and hundreds of
media photographers. The following day, a colored photograph
of Sonny wearing a black polo short embroidered with the 2-
inch Lacoste crocodile logo appeared on the front page of every
Philippine newspaper.
Lacoste International, the French firm that manufactures
Lacoste apparel and owns the Lacoste trademark, decided to
cash in on the universal popularity of the boxing icon. It
reprinted the photographs, with the permission of the
newspaper publishers, and went on a world-wide blitz of print
commercials in which Sonny is shown wearing a Lacoste shirt
alongside the phrase “Sonny Bachao just loves Lacoste”.
When Sonny sees the Lacoste advertisements, he hires you as a
lawyer and asks you to sue Lacoste International before a
Philippine court:
e) XXX
f) XXX
g) For injunction in order to stop Lacoste International from
featuring him in their commercials.
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Will these actions prosper?
Answer: The complaint for injunction to stop Lacoste International
from featuring him in its advertisements will prosper. This is a
violation of subsection 123.4© of the IPC and Art. 169 in relation to
Article 170 of the RPC. (BAR 2008)
4. Jinggy went to Kluwer University (KU) in Germany for his
doctorate degree (Ph.D.). He completed his degree with the
highest honors in the shortest time. When he came back, he
decided to set-up his own graduate school in his hometown in
Zamboanga. After seeking free legal advice from his high-flying
lawyer-friends, he learned that the Philippines follows the
territoriality principle in trademark law, i.e., trademark rights
are acquired through valid registration in accordance with the
law. Forthwith, Jinggy named his school the Kluwer Graduate
School of Business of Mindanao and immediately secured
registration with the Bureau of Trademarks. KU did not like the
unauthorized use of its name by its top alumnus no less. KU
sought your help. What advice can you give KU?
Answer: I will advice KU to seek for the cancellation of the Kluwer
Graduate School of Business of Mindanao with the Bureau of
Trademarks. Jinggy’s registration of the mark “Kluwer” should not
have been allowed because the law prohibits the registration of the
mark “which may disparage or falsely suggests a connection with
persons, living or dead, institutions, beliefs”. Moreover, the
Philippines is a signatory to the Paris Convention for the Protection
of Intellectual Property (Paris Convention), it is obligated to assure
nationals of countries of the Paris Convention that they are afforded
an effective protection against violation of their intellectual
property rights in the Philippines. Thus, under the Philippine law, a
trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a
trademark, is protected “without the obligation of filing or
registration”. (BAR 2014)
5. Prior Use of Mark as a Requirement
Bar Questions:
1. Does the owner of a trademark have a right of property to
prevent others from manufacturing, producing, or selling the
same article to which it is attached?
Answer: No. The basis of registration is actual use in commerce in
the Philippines (not less than 2 months) before an application for its
registration can be filed in the Patent Office, except when the
Philippines is a party to a trademark treaty, in which case the
trademark sought to be registered need not be in use in the
Philippines. (BAR 1982)
2. Rubberworld, Inc. sought registration of the trademark
“Juggler” for its casual rubber shoes in Inter Pater case No. 602
filed with the Patent Office. The registration was opposed by a
Belgian Corporation which alleges that it owns and has not
abandoned the trademark “Juggler” although it admits that it
has no license to do business in the Philippines, it is not
presently selling footwear under the trademark “Juggler” in the
Philippines, and it has not been licensed nor does it have any
agreement with any local entity or firm to sell any of its product
in the Philippines.
At the trial, it was established that Rubberworld had spent a
considerable amount and effort in popularizing said trademark
in the Philippines, had been using the same since 1969 and had
built up enormous goodwill.
Acting on the petition, the Patent Office dismissed the
opposition and ordered the registration of the trademark
“Juggler” in the name of Rubberworld.
Discuss the validity of the aforesaid decision.
Answer: The action of the Patent Office in dismissing the opposition
of the Belgian Corporation and ordering the registration of the
trademark “Juggler” in the name Rubberworld, Inc. is valid. One of
the requisites of registration is actual use in commerce of not less
than 2 months of the mark or name, in the Philippines, of which
Rubberworld, Inc., has complied with and spending even
considerable amount and effort in popularizing said trademark in
the Philippines; while, on the other hand, the Belgian Corporation,
the oppositor, according to facts, has not even been selling in the
Philippines the footwear under the trademark “Juggler”. (Pagasa
Industrial Corp. vs. Court of Appeals, Nov. 19, 1982; 118 SCRA 526)
(BAR 1984)
6. Tests to Determine Confusing Similarity between
Marks
Relevant Jurisprudence:
Both Berris’ (“D-10 80 WP”) and Abyadang’s mark (“NS D-10
PLUS”) have “D-10” as a common component, which also
happened to be the dominant feature of Berris’ mark. In applying
both the dominancy test and holistic test, the likelihood of
confusion is present considering the fact that both marks pertain
to the same type of goods; both products use the same type of
material for the packaging and have identical color schemes.
Considering these striking similarities, the buyers of both
products, mainly farmers, may be misled into thinking that “NS D-
10 PLUS” could be an upgraded formulation of the “D-10 80 WP”;
hence, Berris properly opposed Abyadang’s application for
registration. (Berris Agricultural Co., Inc. vs. Norvy Abyadang,
G.R. No. 183404, October 13, 2010)
A resort to either the Dominancy Test or the Holistic Test shows
that colorable imitation exists between respondent's "Gold Toe"
and petitioner's "Gold Top." An examination of the products in
question shows that their dominant features are gold checkered
lines against a predominantly black background and a
representation of a sock with a magnifying glass; in addition, both
products use the same type of lettering; both also include a
representation of a man's foot wearing a sock and the word
"linenized" with arrows printed on the label; lastly, the names of
the brands are similar -- "Gold Top" and "Gold Toe." (Amigo
Manufacturing, Inc. vs. Cluett Peabody Co., Inc., G.R. No.
139300, March 14, 2001)
Dominancy Test Holistic Test
Focuses on the similarity of Mandates that the entirety
the main, essential, of the marks in question
dominant or prevalent must be considered in
features of a mark. determining confusing
similarity.
Relies on visual, aural, and Relies only on visual
connotative comparisons comparison.
and overall impressions
between the two
trademarks.
 The test of dominancy should be applied in this
jurisdiction because it is provided for in Section 125.
 To determine whether there is a likelihood of
confusion is not so much dominancy or holistic,
always best to go by jurisprudence.
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Ordinary Purchaser Rule
This rule is attached to the dominancy test. If the acquisition
of goods require mulling things over, apply the holistic test. If
is just an ordinary purchaser and he is indiscriminate in his
purchases, apply the dominancy test.
XPN: The SC applied the holistic test even if the
goods did not require mulling over in the cases of
Great White Shark and Fruit of the Loom. RATIO:
Because even after examining the two marks, there
are marked differences.
 Holistic test applied when it comes to jeans because
they require mulling things over. Purchasers are
likely to be discriminate.
Expansion of Business Rule
Nan vs. Nanny: It is not a defense that Nanny, while attached
to milk products, is for adults while Nan is for babies and that
Nanny is relevantly cheaper than NAN because of the
potential expansion of business rule.
 General Rule: The trademark protection extends
only to goods or services related to those specified in
the certificate. XPN: Expansion of Business Rule –
protection extends also to those foods or services
that are related thereto specified in the certificate. All
cases in which use by the junior appropriator is likely
to lead to a confusion of source as where prospective
buyers would be misled into thinking that the
complaining party has extended his business into
another field.
a. Dominancy Test
Relevant Jurisprudence:
The word MASTER, the dominant feature of the opposer’s mark, is
neither generic nor descriptive and as such, it cannot be
invalidated as a trademark. When the term “MASTER” has
acquired a certain connotation to mean the coffee products
MASTER ROAST and MASTER BLEND produced by Nestle, the use
by the CFC of the term “MASTER” in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake
or even deception of the ordinary purchasers. (Societe Des
Produits Nestle, S.A. vs. Court of Appeals and CFC Corporation,
G.R. No. 112012, April 4, 2001)
Respondents have adopted in "Big Mak" not only the dominant but
also almost all the features of "Big Mac." Applied to the same food
product of hamburgers, with both marks aurally and visually the
same, it will likely result in confusion in the public mind.
(McDonald’s Corporation vs. L.C. Big Mak Burger, Inc., G.R. No.
143993, August 18, 2004)
With the predominance of the letter "M," and prefixes "Mac/Mc"
found in both marks, the inevitable conclusion is there is confusing
similarity between the trademarks Mc Donald’s marks and
"MACJOY AND DEVICE" especially considering the fact that both
marks are being used on almost the same products falling under
Classes 29 and 30 of the International Classification of Goods i.e.
Food and ingredients of food. In this case, the common awareness
 or perception of customers that the trademarks McDonalds mark
and MACJOY & DEVICE are one and the same, or an affiliate, or
under the sponsorship of the other is not far-fetched.
(McDonald’s Corporation vs. Macjoy Fastfood Corporation,
G.R. No. 166115, February 2, 2007)
Both the words PYCNOGENOL and PCO-GENOLS have the same
suffix “GENOL” which appears to be merely descriptive and
furnish no indication of the origin of the article and hence, open
for trademark registration by the plaintiff thru combination with
another word or phrase such as PYCNOGENOL. Although there
were dissimilarities in the trademark due to the type of letters
used as well as the size, color and design employed on their
individual packages/bottles, still the close relationship of the
competing products’ name in sounds as they were pronounced,
clearly indicates that purchasers could be misled into believing
that they are the same and/or originates from a common source
and manufacturer. (Prosource International, Inc. vs. Horphag
Research Management SA, G.R. No. 180073, November 25,
2009)
In applying the dominancy test, both confusion of goods and
confusion of business were apparent in both trademarks as the
mark “Dermaline Dermaline, Inc.” is confusingly similar with the
registered trademark “Dermalin”. Dermaline’s stance that its
product belongs to a separate and different classification from
Myra’s products with 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 classifications pertain to treatments for the skin.
(Dermaline, Inc. Vs. Myra Phamaceuticals, Inc., G.R. No.
190065, August 1, 2010)
“NANNY” is confusingly similar to “NAN,” the prevalent feature of
Nestle’s line of infant powdered milk products which is is written
in bold letters and used in all products. The first three letters of
“NANNY” are exactly the same as the letters of “NAN” and when
“NAN” and “NANNY” are pronounced, the aural effect is
confusingly similar. (Soceite Des Produits Nestle, S.A. vs. Dy, Jr.,
G.R. No. 172276, August 8, 2010)
The Dominancy Test focuses on the similarity of the prevalent or
dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing
public. Respondent’s use of the stylized “S” in its Strong rubber
shoes infringes on the mark of the petitioner as it is the dominant
feature of the latter’s trademark; the likelihood of confusion is
present as purchasers may associate the respondent’s product as
connected with petitioner’s business. (Sketchers USA vs. Inter
Pacific Industrial Trading Corporation, GR No. 164321, March
28, 2011)
Bar Questions:
1. What is the “test of dominancy”?
Answer: The test of dominancy requires that if the competing
trademark contains the main or essential features of another and
confusion and deception is likely to result, infringement takes place.
Duplication or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. Similarity in size,
form and color, while relevant, is not conclusive. (BAR 1996)
2. The “test of dominancy” in the Law on Trademarks, is a way
to determine whether there exists an infringement of a
trademark by—
a) Determining if the use of the mark has been dominant in the
market; b) Focusing on the similarity of the prevalent features
of the competing marks which might create confusion; c)
Looking at the mark whether they are similar in size, form or
color; d) Looking at the mark whether there is one specific
feature that is dominant.
20 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
Answer: b) Focusing on the similarity of the prevalent features of the
competing marks which might create confusion. (BAR 2012)
3. Skechers Corporation sued Inter-Pacific for trademark
infringement claiming that Inter-Pacific used Skechers’
registered “S” logo mark on Inter-Pacific’s shoe products
without its consent. Skechers has registered the trademark
“SKECHERS” and the trademark “S” (with an oval design) with
the Intellectual Property Office (IPO).
In its complaint, Skechers points out the following similarities:
the color scheme of the blue, white and gray utilized by
Skechers. Even the design and “wave-like” pattern of the mid-
sole and outer sole of Inter-Pacific’s shoes are very similar to
Skechers’ shoes, if not exact patterns thereof. On the side of
Inter-Pacific’s shoes, near the upper part, appears the stylized
“S” placed in the exact location as that of the stylized “S” the
Skechers shoes. On top of the “tongue” of both shoes, appears
the stylized “S” in practically the saem location and size.
In its defense, Inter-Pacific claims that under the Holistic Test,
the following dissimilarities are present: the mark “S” found in
Strong shoes is not enclosed in an “oval design”; the word
“Strong” is conspicuously placed at the backside and insoles;
the hang tags labels attached to the shoes bear the word
“Strong” for Inter-Pacific and Skeckers U.S.A.” for Skechers; and,
Strong shoes modestly priced compared to the cost of Skechers
shoes.
Under the foregoing circumstances, which is the proper test to
be applied—Holistic or Dominancy Test? Decide.
Answer: The proper test to be applied is the dominancy test.
Applying the dominancy test, there is a confusing similarity
“Skechers” rubber shoes and “Strong” rubber shoes. The use of the
stylized “S” by Inter-Pacific in its Strong Shoes infringes on the
trademark “Skechers” already registered by Skechers U.S.A. with the
IPO. While it is undisputed that Skechers U.S.A. stylized “S” is within
an oval design, the dominant feature of the trademark is stylized “S”
as it is precisely the stylized “S” which catches the eye of the
purchaser. (BAR 2014)
b. Holistic Test
 SC applied holistic test in Asia Brewery vs. San
Miguel, although the Court did not declare it outright.
SC said customers buy beer products of Asia Brewery
because they like it, there is no attempt to mislead
the public because there is “Asia Brewery” in ABI’s
bottle. Moreover, “pale Pilsen” is generic and
descriptive.
Relevant Jurisprudence:
The similarities of the competing trademarks in this case are
completely lost in the substantial differences in the design and
general appearance of their respective hang tags. The trademarks
FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each
other as to confuse or deceive an ordinary purchaser, who must
be thought of as having, and credited with, at least a modicum of
intelligence to be able to see the obvious differences between the
two trademarks in question. (Fruit of the Loom, Inc. vs. Court of
Appeals, G.R. No. L-32747, November 29, 1984)
In applying the holistic test, petitioner’s trademark, “STYLISTIC
MR. LEE,” which pertains to jeans, should be considered as a
whole. The test of fraudulent simulation is to be found in the
likelihood of the deception of some persons in some measure
acquainted with an established design and desirous of purchasing
 the commodity with which that design has been associated. When
the casual buyer is predisposed to be more cautious in his
purchase, as in this case where the products concerned are not
inexpensive, the likelihood of confusion is absent. (Emerald
Garment Manufacturing Corporation vs. Court of Appeals,
G.R. No. 100098, December 29, 1995)
The application of the holistic test entails a consideration of the
entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity.
Although the perceived offending word “MARK” is itself
prominent in petitioner’s trademarks “MARK VII” and “MARK
TEN,” the entire marking system should be considered as a whole
and not dissected, because a discerning eye would focus not only
on the predominant word but also on the other features appearing
in the labels; only then would such discerning observer draw his
conclusion whether one mark would be confusingly similar to the
other and whether or not sufficient differences existed between
the marks. (Philip Morris, Inc. vs. Fortune Tobacco
Corporation, G.R. No. 158589, June 27, 2006)
The gravamen of the offense of infringement of a registered
trademark is the likelihood of confusion. In applying the Holistic
Test, confusion was remote because the jeans made and sold by
Levi’s Philippines were not only very popular but also quite
expensive, as opposed to Diaz’s tailored jeans which were
acquired on a “made-to-order” basis; moreover, since the jeans
are expensive, the casual buyer is predisposed to be more cautious
and discriminating in and would prefer to mull over his purchase.
(Victorio Diaz vs. People of the Philippines, G.R. No. 180677,
February 18, 2013)
7. Confusion of Goods and Confusion of Services
Bar Questions:
1. The trademark LOTUS is already registered in favor of ABC
for its product, edible oil. DEF applied for the registration of the
same trademark for its own product, soy sauce, assuming that
the trademark applied for is in smaller type, colored differently
of much smaller size, and set on a background which is
dissimilar, as to yield a distinct appearance, may the
application be denied on the ground that its grant would likely
to cause confusion or mistake on the part of the buying public?
Decide. Give reasons.
Answer: Yes. The application of DEF of the trademark LOTUS for soy
sauce should be granted, although the trademark LOTUS is already
registered in favor of ABC for its product, edible oil. The rule is not
whether the challenging mark would actually cause confusion, but
whether the use of such mark would likely cause confusion on the
part of the buying public. There is quite a difference between soy
sauce and edible oil; hence, it can be said that DEF’s trademark
LOTUS on soy sauce would likely not cause confusion on the part of
the buying public. (Acoje Mining Co., Inc. v. Director of Patents, 38
SCRA 480) (BAR 1978)
2. Company X sold its wine under the brand “Rose” Brandy, and
it became very popular. So, X registered the trademark “Rose”
for its brandy. Subsequently, Company Y manufactured bicycles
and sold it under the name of “Rose”. Company X now sues
Company Y for violation of the Trademark Law. Rule on the
dispute.
Answer: No, there is no violation of the Trademark Law. Company
X’s registered trademark “Rose” is on its brandy (wine), while
Company Y’s on its bicycle. There is quite a difference between
brandy (wines) and bicycles; hence, it can be said that Company Y’s
trademark “Rose” on bicycles would not likely cause confusion on
the part of the buying public. (1979)
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8. Well-Known Marks
Section 123. Registrability. - 123.1. A mark cannot be
registered if it:
xxx
(a) Is identical with, or confusingly similar to, or
constitutes a translation of a mark which is
considered bythe 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;
(b) Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered
well-known inaccordance 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;
Section 131. 3. Nothing in this section shall entitle the owner
of a registration granted under this section to sue for
actscommitted prior to the date on which his mark was
registered in this country: Provided, That, 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
Philippines, may, against an identical or confusingly similar
mark, oppose its registration, or petition the cancellation of
its registration or sue for unfair competition, without
prejudice to availing himself of other remedies provided for
under the law.
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 extend to goods and services which are not
similar to those in respect of which the mark is registered:
Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or
services and the owner of the registered mark: Provided
further, That the interests of the owner of the registered
mark are likely to be damaged by such use.
 For well-known marks, it is the relevant sector of the
public and not the public in general.
o E.g. Barbizon is not well-known to men but
to women.
Relevant Jurisprudence:
Respondent’s BARBIZON as well as its BARBIZON and Bee Design
and BARBIZON and Representation of a Woman trademarks
qualify as well-known trademarks entitled to protection. Hence,
“Barbizon” cannot be registered as a trademark for ladies’
underwear. (Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No.
114508, November 19, 1999)
The Paris Convention for the Protection of Industrial Property
does not automatically exclude all countries of the world which
have signed it from using a tradename which happens to be used
 in one country. “GALLO” cannot be considered a “well-known”
mark within the contemplation and protection of the Paris
Convention in this case since GALLO wines and GALLO cigarettes
are neither the same, identical, similar nor related goods. (Mighty
Corporation and La Campana Fabrica De Tabaco, Inc. vs. E. &
J. Gallo Winery and the Andresons Group, Inc., G.R. No.
154342, July 14, 2004)
The scope of protection under Article 6bis of the Paris Convention,
wherein both the United States and the Philippines are
signatories, extends to a well-known mark, which should be
protected in a country even if the mark is neither registered nor
used in that country. Respondent, the owner of a well-known
mark, has the legal capacity to sue petitioners for the latter’s use
of the IN-N-OUT Burger trademark for the name of their
restaurant and for the identical or confusingly similar mark for
their hamburger wrappers and french-fries receptacles, which
effectively misrepresent the source of the goods and services.
(Sehwani, Inc. vs. In-N-Out Burger, Inc., G.R. No. 171053,
October 15, 2007)
The essential requirement under the Paris Convention (and the
Intellectual Property Code) is that the trademark to be protected
must be “well-known” in the country where protection is sought
and the power to determine whether a trademark is well-known
lies in the competent authority of the country of registration or
use. “Harvard” is a well-known name and mark not only in the
United States but also internationally, including the Philippines; as
such, even before Harvard University applied for registration of
the mark “Harvard” in the Philippines, the mark was already
protected under the Paris Convention. (Fredco Manufacturing
Corporation vs. President and Fellows of Harvard College, GR
No. 185917, June 1, 2011)
Bar Question: T is the registered trademark owner of “CROCOS”
which he uses on his ready-to-wear clothes. Banking on the
popularity of T’s trademark, B came up with his own “CROCOS”
mark, which he then used for his “CROCOS” burgers. T now sues
B for trademark infringement but B argues that his product is a
burger, hence, there is no infringement. Is B correct?
a. No, since the owner of a well-known mark registered in the
Philippines has rights that extends even to dissimilar kinds of
goods. b. Yes, since the right of the owner of a well-known mark
registered in the Philippines does not extend to goods which
are not of the same kind. c. Yes, as B was in bad faith in coming
up with his own “CROCOS” mark. d. No, since unlike T, he did not
register his own “CROCOS” mark for his product.
Answer: a. No, since the owner of a well-known mark registered in
the Philippines has rights that extends even to dissimilar kinds of
goods. (BAR 2011)
9. Rights Conferred by Registration
Section 138. Certificates of Registration. - A certificate of
registration of a mark shall be prima facie evidence of the
validity of the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use the same
in connection with the goods or services and those that are
related thereto specified in the certificate. (Sec. 20, R.A. No.
165)
Section 147. Rights Conferred. - 147.1. The owner of a
registered mark shall have the exclusive right to prevent all
third parties not having the owner's consent from using in the
course of trade identical or similar signs or containers for
goods or services which are identical or similar to those in
respect of which the trademark is registered where such use
would result in a likelihood of confusion. In case of the use of
an identical sign for identical goods or services, a likelihood
of confusion shall be presumed.
22 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
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 extend to goods and services which are not
similar to those in respect of which the mark is registered:
Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or
services and the owner of the registered mark: Provided
further, That the interests of the owner of the registered
mark are likely to be damaged by such use.
Relevant Jurisprudence:
Emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their
properties or characteristics. The mere fact that one person has
adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others on unrelated
articles of a different kind. (Hickok Manufacturing, Co., Inc. vs.
Court of Appeals, G.R. No. L-44707, August 31, 1982)
The adoption and use of a trademark on one’s goods does not
prevent the adoption and use of the same trademark by others for
products which are of different description. The registered owner
of the trademark “Brut” for toilet articles such as after shave lotion
and deodorant cannot oppose the registration of the trademark
“Brute” for briefs, since the two products are unrelated,
notwithstanding the former’s pending application for registration.
(Faberge, Inc. vs. Intermediate Appellate Court, G.R. No.
71189, November 4, 1992)
One who has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others for
products which are of a different description. The GALLO
trademark registration certificates in the Philippines and in other
countries expressly state that they cover wines only, without any
evidence or indication that registrant Gallo Winery expanded or
intended to expand its business to cigarettes. (Mighty
Corporation and La Campana Fabrica De Tabaco, Inc. vs. E. &
J. Gallo Winery and the Andresons Group, Inc., G.R. No.
154342, July 14, 2004)
Section 147 of R.A. No. 8293 provides for the exclusive right of the
owner of a registered mark to prevent third parties not having the
owner’s consent from using in the course of trade identical or
similar signs or containers for goods or services which are
identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of
confusion. Berris, as a prior user and prior registrant, is the owner
of the mark “D-10 80 WP”; hence, it has acquired the rights
conferred under the law. (Berris Agricultural Co., Inc. vs. Norvy
Abyadang, G.R. No. 183404, October 13, 2010)
Bar Question: Does the owner of a trademark have a right of
property to prevent others from manufacturing, producing, or
selling the same article to which it is attached?
Explain all answers.
Answer: No. The owner of a trademark has no right of property to
prevent others from manufacturing, producing or selling the same
article to which it is attached. In other words, the trademark confers
no exclusive rights in the goods to which the mark has been applied.
(BAR 1982)
10. Use by Third Parties of Names, etc. Similar to
Registered Mark
Section 148. Use of Indications by Third Parties for Purposes
Other than those for which the Mark is Used. Registration of
the mark shall not confer on the registered owner the right to
preclude third parties from using bona fide their names,
addresses, pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity,
 destination, value, place of origin, or time of production or of
supply, of their goods or services: Provided, That such use is
confined to the purposes of mere identification or
information and cannot mislead the public as to the source of
the goods or services.
11. Infringement and Remedies
Section 134. Opposition. - Any person who believes that he
would be damaged by the registration of a mark may, upon
payment of the required fee and within thirty (30) days after
the publication referred to in Subsection 133.2, file with the
Office an opposition to the application.
Section 151. Cancellation. - 151.1. A petition to cancel a
registration of a mark under this Act may be filed with the
Bureau of Legal Affairs by any person who believes that he is
or will be damaged by the registration of a mark under this
Act as follows:
(a) Within five (5) years from the date of the
registration of the mark under this Act.
(b) At any time, if the registered mark becomes the
generic name for the goods or services, or a
portion thereof, for which it is registered, or has
been abandoned, or its registration was obtained
fraudulently or contrary to the provisions of this
Act, or if the registered mark is being used by, or
with the permission of, the registrant so as to
misrepresent the source of the goods or services
on or in connection with which the mark is used.
xxx
(c) At any time, if the registered owner of the mark
without legitimate reason fails to use the mark within
the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an
uninterrupted period of three (3) years or longer.
151.2. Notwithstanding the foregoing provisions, the court or
the administrative agency vested with jurisdiction to hear
and adjudicate any action to enforce the rights to a registered
mark shall likewise 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
exclude any other court or agency from assuming jurisdiction
over a subsequently filed petition to cancel the same mark.
On the other hand, the earlier filing of petition to cancel the
mark with the Bureau of Legal Affairs shall not constitute a
prejudicial question that must be resolved before an action to
enforce the rights to same registered mark may be decided.
(Modified by Superior Kennex and Shangri-La cases)
Cancellation
Within 5 Anytime
years
Any person 1. Becoming generic for the goods or
who services for which it is registered
believes 2. Abandonment
that he is or 3. Illegal or fraudulent registration
will be 4. The mark is being used by, or with
damaged the permission of, the registrant so
by the as to misrepresent the source of the
registration goods or services
of the mark 5. Non-use for an uninterrupted
period of 3 years without legitimate
reason
23 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
 An action for infringement may be dismissed if the
trademark has already been cancelled. It can no
longer continue.
 EYIS vs. Shen Dar: there were 2 certificates of
registration for the same trademark.
 File a petition for cancellation with the IPO. Do not
file a case for infringement with the IPO because it
cannot accord full relief.
 A petition for cancellation is not a bar to an action for
trademark infringement and vice versa.
 Shangri-La vs. CA and Conrad vs. CA: The effect of
a judgment rendered by the RTC on administrative
proceedings is to suspend proceedings in the IPO in
order to prevent conflicting decisions.
Remedies Available to the owner of the trademark
1. Oppose the application for registration
 E.g. ground: oppositor is the owner
(evidence of prior and continuous use of the
trademark locally or abroad – Ecole)
2. File a petition to cancel the registration of the mark
3. File a civil action for infringement or unfair
competition, or both
Q: Remedy of the true owner of the trademark?
A: (1) if application is still pending – opposition
(2) if the trademark has been granted – cancellation
 The true owner of the mark who is using the mark,
but it is not registered, can oppose registration of the
trademark by another even if it is not a well-known
mark. (Ecole case – Cordon Blue is not a well-known
mark)
o If it is not a well-known mark, it is used
abroad and not in the Philippines, the
evidence of actual use by another will
prevent registration of the same mark here
in the Phlippines. Remember: the prima
facie presumption of registrant’s ownership
may be overcome by proof to the contrary.
o The proof contemplated is: Showing that the
registrant is not the actual owner through
proof of actual use by the true owner.
o To recapitulate: As a rule, only a well-known
mark is entitled to protection even if the
mark is not registered here in the
Philippines. XPN: Ecole case – even if it is not
registered and it is not a well-known mark,
it is still entitled to protection as long as
ownership is proven by actual use, either
locally or abroad.
o Le Cordon Blue is entitled to protection
because it is the first user.
 It is possible to cancel a trademark. In Shien Dar vs.
EYIS, Shien Dar filed a petition to cancel the
trademark of EYIS but the trial court cancelled Shien
 Dar’s trademark registration instead. The SC said
this is possible. IPO is not bound by the Rules on
Evidence. As long as the other can prove that he owns
the trademark and as long as the IPO had the chance
to evaluate the evidence, the mark of the petitioner
can be cancelled. It need not be filed in a separate
proceeding.
Relevant Jurisprudence:
In upholding the right of the petitioner to maintain a suit for unfair
competition or infringement of trademarks of a foreign corporation
before the Philippine courts, the duties and rights of foreign states
under the Paris Convention for the Protection of Industrial Property to
which the Philippines and France are parties are upheld. (Melbarose
R. Sasot and Allandale R. Sasot vs. People of the Philippines, G.R.
No. 143193, June 29, 2005)
It is not evident whether the single registration of the trademark
“Dockers and Design” confers on the owner the right to prevent the use
of a fraction thereof in the course of trade and it is also unclear whether
the use without the owner’s consent of a portion of a trademark
registered in its entirety constitutes material or substantial invasion of
the owner’s right. Injunction will not lie when the petitioners’ right to
injunctive relief has not been clearly and unmistakably demonstrated
and when the right has yet to be determined. (Levi Strauss & Co., Levi
Strauss (Phils.), Inc. vs. Clinton Apparelle, Inc., G.R. No. 138900,
September 20, 2005)
San Miguel claims that it has invested hundreds of millions over a
period of 170 years to establish goodwill and reputation now being
enjoyed by the “Ginebra San Miguel” mark such that the full extent of
the damage cannot be measured with reasonable accuracy.
Nonetheless, a writ of preliminary injunction cannot be issued in favor
of San Miguel when it failed to prove the probability of irreparable
injury which it will stand to suffer if the sale of “Ginebra Kapitan” is not
enjoined. Moreover, the right to the exclusive use of the word “Ginebra”
has yet to be determined in the main case. (Tanduay Distillers, Inc. vs.
Ginebra San Miguel, Inc., G.R. No. 164324, August 14, 2009)
a. Trademark Infringement
Section 160. Right of Foreign Corporation to Sue in
Trademark or Service Mark Enforcement Action. - Any
foreign national or 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,
infringement, unfair competition, or false designation of
origin and false description, whether or not it is licensed to
do business in the Philippines under existing laws. (Sec. 21-A,
R.A. No. 166a)
 Unauthorized use of a trademark
 Elements: (RIS-LC)
1. Registered with the IPO – no infringement if
trademark not registered (contra: unfair
competition (UC))
2. The trademark is reproduced, copied or
imitated
3. The trademark is used in connection with
the sale, offering for sale of the goods, etc.
4. There is a likelihood of confusion as to origin
or goods
5. The use is without the consent of the
registrant
24 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
 Regasco case: There is both infringement and UC.
Infringement: unauthorized use of the cylinder tank;
UC: intent to pass off to the public that the goods are
that of Shellane or Petron
 A foreign corporation ma sue for TMI even if it is not
licensed to do business as long as it is a signatory to
the Paris Convention. Each country signatory to such
is mandated to protect the IP rights of signatory
countries.
Infringement Unfair Competition
Unauthorized use of a Passing off of one’s goods
trademark as those of another
Fraudulent intent is Fraudulent intent is
unnecessary necessary
Prior registration of the Registration is not a
trademark is a prerequisite
prerequisite to the action
No infringement if used for There is unfair
totally unrelated goods competition even for
dissimilar goods or
services
Relevant Jurisprudence:
The question is not whether the two articles are distinguishable
by their label when set side by side but whether the general
confusion made by the article upon the eye of the casual purchaser
who is unsuspicious and off his guard, is such as to likely result in
his confounding it with the original. It is not difficult to see that
the Sunshine label is a colorable imitation of the Del Monte
trademark; the predominant colors used in the Del Monte label are
green and red-orange, the same with Sunshine; the word "catsup"
in both bottles is printed in white and the style of the print/letter
is the same; and although the logo of Sunshine is not a tomato, the
figure nevertheless approximates that of a tomato. (Del Monte
Corporation and Philippine Packing Corporation vs. Court of
Appeals, G.R. No. L-78325, January 25, 1990)
The fact that the words pale pilsen are part of ABI's trademark
does not constitute an infringement of SMC's trademark: SAN
MIGUEL PALE PILSEN, for "pale pilsen" are generic words
descriptive of the color ("pale"), of a type of beer ("pilsen"), which
is a light bohemian beer with a strong hops flavor that originated
in the City of Pilsen in Czechoslovakia and became famous in the
Middle Ages. Moreover, ABI’s use of the steinie bottle, similar but
not identical to the SAN MIGUEL PALE PILSEN bottle, is not
unlawful as SMC did not invent but merely borrowed the steinie
bottle from abroad and it has not claimed neither patent nor
trademark protection for that bottle shape and design. (Asia
Brewery, Inc. vs. Court of Appeals and San Miguel
Corporation, G.R. No. 103543, July 5, 1993)
One who has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others for
products which are of a different description. Assuming arguendo
that "Poster Ads" could validly qualify as a trademark, the failure
of Pearl & Dean to secure a trademark registration for specific use
on the light boxes meant that there could not have been any
trademark infringement since registration was an essential
element thereof. (Pearl & Dean (Phil.), Inc. vs. Shoemart, Inc.,
G.R. No. 148222, August 15, 2003)
When a trademark is used by a party for a product in which the
other party does not deal, the use of the same trademark on the
latter’s product cannot be validly objected to. There is no
infringement when the trademark “CANON” is used by the
 petitioner for paints, chemical products, toner and dyestuff while
it is used by the private respondent for footwear (sandals).
(Canon Kabushiki Kaisha vs. Court of Appeals, G.R. No.
120900, July 20, 2004)
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/consumers can be considered as
trademark infringement. The petitioners, as directors/officers of
MASAGANA, are utilizing the latter in violating the intellectual
property rights of Petron and Pilipinas Shell; thus, petitioners
collectively and MASAGANA should be considered as one and the
same person for liability purposes. (William C. Yao, Sr., et. al. vs.
People of the Philippines, G.R No. 168306, June 19, 2007)
The trademark “ Marlboro “ is not only valid for being neither
generic nor descriptive, it was also exclusively owned by PMPI, as
evidenced by the certificate of registration issued by the
Intellectual Property Office. Infringement of trademark clearly
lies since the counterfeit cigarettes not only bore PMPI’s
trademark, but they were also packaged almost exactly as PMPI’s
products. (Ong vs. People of the Philippines, GR No. 169440,
November 23, 2011)
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 among the
buyers or consumers can be considered as trademark
infringement. Petitioners’ act of refilling, without the respondents’
consent, the LPG containers bearing the registered marks of the
respondents will inevitably confuse the consuming public, who
may also be led to believe that the petitioners were authorized
refillers and distributors of respondent’s LPG products. (Republic
Gas Corporation (REGASCO), et. al. vs. Petron Corporation, et.
al., G.R. No. 194062, June 17, 2013)
The Rules on the Issuance of the Search and Seizure in Civil
Actions for Infringement of Intellectual Property Rights are not
applicable in a case where the search warrants were applied in
anticipation of criminal actions for violation of intellectual
property rights under RA 8293. Rule 126 of the Revised Rules of
Court would apply and a warrant shall be validly issued upon
finding the existence of probable cause. (Century Chinese
Medicine Co., et. al. vs. People of the Philippines, G.R. No.
188526, November 11, 2013)
Bar Questions:
1. SONY is a registered trademark for TV, stereo, radio,
cameras, betamax and other electronic products. A local
company, Best Manufacturing, Inc., produced electric fans
which it sold under the trademark’s SONY without the consent
of SONY. SONY sued Best Manufacturing for infringement.
Decide the case.
Answer: In order that a case for infringement of trademark can
prosper, the products on which the trademark is used must be of the
same kind. The electric fans produced by Best Manufacturing cannot
be said to be similar to such products as TV, stereo and radio sets or
cameras or betamax products of SONY. (BAR 1991)
2. What is the distinction between infringement and unfair
competition?
Answer: The distinction between infringement (presumably of
trademark) and unfair competition are as follows:
1. Infringement of a trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of one’s
goods as those of another;
2. Fraudulent intent is unnecessary in infringement of trademark,
whereas fraudulent intent is essential in unfair competition;
25 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
3. The prior registration of the trademark is a prerequisite to an
action for infringement of trademark, whereas registration of the
trademark is not necessary in unfair competition. (BAR 1996)
3. After disposing of his last opponent in only two rounds in Las
Vegas, the renowned boxer Sonny Bachao arrived at the NAIA
met by thousands of hero-worshipping fans and hundreds of
media photographers. The following day, a colored photograph
of Sonny wearing a black polo short embroidered with the 2-
inch Lacoste crocodile logo appeared on the front page of every
Philippine newspaper.
Lacoste International, the French firm that manufactures
Lacoste apparel and owns the Lacoste trademark, decided to
cash in on the universal popularity of the boxing icon. It
reprinted the photographs, with the permission of the
newspaper publishers, and went on a world-wide blitz of print
commercials in which Sonny is shown wearing a Lacoste shirt
alongside the phrase “Sonny Bachao just loves Lacoste”.
When Sonny sees the Lacoste advertisements, he hires you as a
lawyer and asks you to sue Lacoste International before a
Philippine court:
h) For trademark infringement in the Philippines because
Lacoste International used his image without his permission
Answer: Sonny Bachao cannot sue for infringement of trademark.
The photographs showing him wearing a Lacoste shirt were not
registered as a trademark. (BAR 2009)
4. In intellectual property cases, fraudulent intent is not an
element of the cause of action except in cases involving:
a. Trademark infringement b. Copyright infringement c. Patent
infringement d. Unfair competition
Answer: a. Trademark infringement (BAR 2014)
b. Damages
Section 156. Actions, and Damages and Injunction for
Infringement. - 156.1. The owner of a registered mark may
recover damages from any person who infringes his rights,
and the measure of the damages suffered shall be either the
reasonable profit which the complaining party would have
made, had the defendant not infringed his rights, or the profit
which the defendant actually made out of the infringement,
or in the event such measure of damages cannot be readily
ascertained with reasonable certainty, then the court may
award as damages a reasonable percentage based upon the
amount of gross sales of the defendant or the value of the
services in connection with which the mark or trade name
was used in the infringement of the rights of the complaining
party. (Sec. 23, first par., R.A. No. 166a)
156.2. On application of the complainant, the
court may impound during the pendency of the
action, sales invoices and other documents
evidencing sales. (n)
156.3. In cases where actual intent to mislead
the public or to defraud the complainant is shown,
in the discretionof the court, the damages may be
doubled. (Sec. 23, first par., R.A. No. 166)
156.4. The complainant, upon proper showing,
may also be granted injunction. (Sec. 23, second
par., R.A. No.166a)
Section 157. Power of Court to Order Infringing Material
Destroyed. - 157.1 In any action arising under this Act, in
which a violation of any right of the owner of the registered
mark is established, the court may order that goods found to
be infringing be, without compensation of any sort, disposed
of outside the channels of commerce in such a manner as to
avoid any harm caused to the right holder, or destroyed; and
 all labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing
the registered mark or trade name or any reproduction,
counterfeit, copy or colorable imitation thereof, all plates,
molds, matrices and other means of making the same, shall
be delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal of the
trademark affixed shall not be sufficient other than in exceptional cases
which shall be determined by the Regulations, to permit the release of
the goods into the channels of commerce. (Sec. 24, R.A. No. 166a)
Section 170. Penalties. - Independent of the civil and administrative
sanctions imposed by law, a criminal penalty of imprisonment from two
(2) years to five (5) years and a fine ranging from Fifty thousand pesos
(P50,000) to Two hundred thousand pesos(P200,000), shall be
imposed on any person who is found guilty of committing any of the acts
mentioned in Section 155, Section 168 and Subsection 169.1. (Arts. 188
and 189, Revised Penal Code)
In a nutshell: The remedies of the registrant in case of
trademark infringement are:
1. Civil action for damages (actual damages)
 Basis of the computation: (1) profits which
the registrant would have made or (2)
profits which defendant actually made.
 If the foregoing could not be ascertained:
reasonable percentage based upon the
amount of gross sales of the defendant or
the value of the services.
 Where there is actual intent to mislead the
public or defraud the complainant, damages
may be doubled.
2. Provisional remedy of injunction
3. Side by side with injunction: seizure, forfeiture and
impounding of infringing materials
4. Final injunction – does not mean that judgment has
become final, injunction can be final when judgment
is rendered in favor of the petitioner
notwithstanding an appeal
5. Destruction of goods – requires finality of judgment
6. Trademark infringement (TMI) under the Revised
Penal Code
 TMI is a continuing crime – one act of
infringement is different from the
subsequent acts of infringement
Limitations on Action for Infringement (Section
159)
1. Right of Prior User – registered mark shall be
without effect against any person who, in good faith,
before the filing or priority date, was using the mark
for purposes of his business
2. Relief against printer – limited only to an injunction
(not damages) against future printing when the
printer is an innocent infringer who is engaged solely
in the business of printing the mark
3. Relief against newspaper publisher - limited only to
an injunction (not damages) against the presentation
of advertising matter in future issues of the
newspaper, magazine or in electronic
communications in case the infringement
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complained of is contained in or is part of paid
advertisement in such materials
c. Requirement of Notice
Section 158. Damages; Requirement of Notice. ­ In any suit for
infringement, the owner of the registered mark shall not be
entitled to recover profits or damages unless the acts have
been committed with knowledge that such imitation is likely
to cause confusion, or to cause mistake, or to deceive. Such
knowledge is presumed if the registrant gives notice that his
mark is registered by displaying with the mark the words
'"Registered Mark" or the letter R within a circle or if the
defendant had otherwise actual notice of the registration.
(Sec. 21, R.A. No. 166a)
12. Unfair Competition
Section 168. Unfair Competition, Rights, Regulation and Remedies. -
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
others, whether or not a registered mark is employed, has a property
right in the goodwill of the said goods, business or services so identified,
which will be protected in the same manner as other property rights.
168.2. Any person who shall employ deception or any
other means contrary to good faith by which he shall pass off
the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established
such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and
shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the
scope of protection against unfair competition, the following
shall be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and
gives them the general appearance of goods of
another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the
packages in which they are contained, or the
devices or words thereon, or in any other feature of
their appearance, which would be likely to
influence purchasers to believe that the goods
offered are those of a manufacturer or dealer, other
than the actual manufacturer or dealer, or who
otherwise clothes the goods with such appearance
as shall deceive the public and defraud another of
his legitimate trade, or any subsequent vendor of
such goods or any agent of any vendor engaged in
selling such goods with a like purpose;
(b) Any person who by any artifice, or device,
or who employs any other means calculated to
induce thefalse belief that such person is offering
the services of another who has identified such
services in the mind of the public; or
(c) Any person who shall make any false
statement in the course of trade or who shall
commit any other actcontrary to good faith of a
nature calculated to discredit the goods, business
or services of another.
Relevant Jurisprudence:
Mere similarity in the shape and size of the container and label
does not constitute unfair competition. SMC cannot claim unfair
competition arising from the fact that ABI's BEER PALE PILSEN is
sold, like SMC's SAN MIGUEL PALE PILSEN in amber steinie
bottles absent any showing that the BEER PALE PILSEN is being
passed off as SAN MIGUEL PALE PILSEN. (Asia Brewery, Inc. vs.
Court of Appeals and San Miguel Corporation, G.R. No.
103543, July 5, 1993)
 The essential elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the goods, and
(2) intent to deceive the public and defraud a competitor. The
confusing similarity may or may not result from similarity in the
marks, but may result from other external factors in the packaging
or presentation of the goods. In this case, the intent to deceive and
defraud may be inferred from the fact that there was actually no
notice (on their plastic wrappers) to the public that the “Big Mak”
hamburgers are products of “L.C. Big Mak Burger,
Inc.”(McDonald’s Corporation vs. L.C. Big Mak Burger, Inc.,
G.R. No. 143993, August 18, 2004)
Hoarding does not relate to any patent, trademark, trade name or
service mark that the respondents have invaded, 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 petitioner. The respondents
are not also alleged to be undertaking any representation or
misrepresentation that would confuse or tend to confuse the
goods of the petitioner with those of the respondents, or vice
versa. What in fact the petitioner alleges is an act foreign to the
Code, to the concepts it embodies and to the acts it regulates; as
alleged, hoarding inflicts unfairness by seeking to limit the
opposition’s sales by depriving it of the bottles it can use for these
sales. (Coca-Cola Bottlers Philippines, Inc. (CCBPI), Naga Plant
vs. Quintin Gomez, et, al., G.R. No. 154491, November 14,
2008)
Unfair competition has been defined as the passing off (or palming
off) or attempting to pass off upon the public of the goods or
business of one person as the goods or business of another with
the end and probable effect of deceiving the public. The mere use
of the LPG cylinders for refilling and reselling, which bear the
trademarks "GASUL" and "SHELLANE" will give the LPGs sold by
REGASCO the general appearance of the products of the
petitioners. (Republic Gas Corporation (REGASCO), et. al. vs.
Petron Corporation, et. al., G.R. No. 194062, June 17, 2013)
Bar Questions:
1. Ashley Manufacturing Company, a manufacturer in France of
a certain brand of cigarette paper, appoints “X” Company the
exclusive agent to sell its paper in the Philippines. Among its
customers are well-known cigarette manufacturers in the
Philippines.
“Y” Company imports from a dealer in France the same
cigarette paper which Ashley Manufacturing Company
produces, and sells it to several outlets. The dealer in France
has no restriction whatsoever from the manufacturer
regarding the sale of such paper for export, nor did “Y”
Company have any dealings with “X” Company. Nonetheless, “Y”
Company is fully aware of the exclusive right of “X” Company to
handle the distributorship of the said cigarette paper in the
Philippines.
Is “Y” Company liable for unfair competition under the
Trademark Law, as amended, and could it be enjoined from
selling said cigarette paper?
Answer: No, Y Company is not liable for unfair competition under
the Trademark Law. First Alternative Reason—If X Company has
suffered any damage, it is merely the indirect result of legitimate
competition in business, from which no right of action can arise.
(W.E. Olsen & Co., Inc. v. Lambert, 42 Phil 633) Second Alternative
Reason— the requisites of unfair competition in the Trademark Law
are not present. (BAR 1980)
2. For the past 10 years, Rubberworld Co. has been using the
tradename FORMIDAS for its rubber shoes and slippers, but has
never registered it in the Patent Office. Its business has
flourished and it is now exporting its products to other
countries.
27 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
The Philippine Knittiing Mills Co., a new enterprise, is now
selling socks manufactured by it with the label FORMIDAS,
without having registered the same either as a trademark or a
trade name.
Rubberworld Co. wants to stop Philippine Knitting Mills from
using the tradename FORMIDAS, but it entertains some
misgivings about its right to do so because firstly, it has not
registered the tradename, and secondly, its products and those
of Philippine Knitting Mills are different and; therefore, not
competing items.
Are the doubts of Rubberworld Co. well-founded? Why?
Answer: No. Although Rubberworld has not registered the
tradename, it has already acquired a goodwill and the use by another
of such name would likely confuse the consuming public as to the
source of the goods, especially in this case where the tradename is
used on socks which like shoes and slippers are footwear. By using
the well- known tradename of Rubberworld, Philippines, Knitting
Mills is taking advantage of the reputation of Rubberworld, and may
even adversely affect such reputation if its goods are inferior quality.
The consumers may likely identify the shoes, slippers and socks as
coming from one and the same source, they are all footwear.
Philippine Knitting Mills is therefore guilty of unfair competition,
and can thus be enjoined from using the tradename FORMIDAS.
(BAR 1981)
3. “G” Corporation, organized under Philippine laws is the
owner of the trademark “Jumbo” under Registry No. 50025
issued on February 15, 1979 by the Philippine Patent Office, for
assorted kitchen ware. On June 10, 1980, the Jumbo Cookware
Corporation, organized and existing under the U.S. laws, filed a
petition with the Philippine Patent Office for the cancellation of
the trademark “Jumbo” registered in the name of “G”
Corporation alleging ownership and prior use in the
Philippines since 1949 of said trademark on the same kind of
goods, which use it had not abandoned.
“G” Corporation moved to dismiss the petition alleging that the
Jumbo Cookware Corporation, being foreign entity, which is not
licensed to do and is not doing business in the Philippines has
no personality under the Philippine laws to maintain such
petition.
Is “G’s” contention meritorious?
Explain each of your answers.
Answer: “G’s” contention is not meritorious. First alternative
reason—A foreign corporation is not transacting business in the
Philippines may sue in the Philippines (Pacific Vegetable Oil Corp. v.
Singzon, Apr. 29, 1965); thus, it is well settled that if a foreign
corporation is not engaged in business in the Philippines, it may not
be denied the right to file an action in the Philippine Courts (Aetna
Casualty & Surety Co. v. Pacific Star Line, Dec. 29, 1977; 80 SCRA
635). Since Jumbo Cookware Corporation is not transacting business
in the Philippines but merely exporting its goods to the Philippines;
therefore, its trademark shall be protected also in the Philippines.
(Western Equipment & Supply Co. v. reyes, 51 Phil 115).
Second alternative reason—Under the Trademark Law, a foreign
corporation may bring an action for unfair competition in the
Philippines, whether or not it has been licensed to do business in the
Philippines, provided that the country of which the said foreign
corporation is a citizen or in which it is domiciled, by treaty or law
grants a similar privilege to corporation of the Philippines; and this
is granted in the “Convention of Paris” and by law in the United
States of America. (Converse Rubber Corp. v. Jacinto Rubber and
Plastics Co. Inc., April 28, 1980; 97 SCRA 158) (BAR 1981)
4. In 1979, Smash Manufacturing Company, a foreign
corporation registered in New York, but not doing business in
the Philippines, filed a complaint for unfair competition against
Nilo Malakas. The plaintiff alleged that since 1939, it had been
exporting tennis rackets under the trademark “Smash Mfg. Co.”,
and that after the trademark and tradename became familiar to
Filipino consumers, defendant Malakas began manufacturing
similar products under the same trademark and tradename
which he registered with the Philippine Patent Office. Actually,
after 1948, Smash Tennis rackets produced by the foreign
corporation were no longer imported in the Philippines.
The complaint failed to allege that its trademark or tradename
has been registered with the Philippine Patents Office or that
the State of New York grants Philippine corporations the
privilege to bring an action for unfair competition in that State.
Claiming that these are conditions sine qua non before a foreign
corporation may file suit in the Philippines, defendant Malakas
filed a motion to dismiss the complaint.
c) How would you decide the motion to dismiss? State your
reasons. d) Regardless of how you decide the motion to dismiss,
how would you decide the merits of the case? Does the foreign
corporation have other administrative remedies?
Answer: c) The motion of Malakas to dismiss the complaint of Smash
Manufacturing Company shall be sustained. A foreign corporation
may bring an action for infringement or unfair competition,
provided as conditions sine qua non that the trademark or
tradename of the suing foreign corporation be registered in the
Philippine Patent Office or, in the least, that it be an assignee of such
registered trademark or tradename, and that the country of which
the plaintiff foreign corporation is a citizen or domicillary, grants to
Filipino corporation the same reciprocal treatment, either thru
treaty, convention or law. But said conditions sine qua non were not
even stated in the complaint of the plaintiff.
d) First suggested answer: This is still a case of unfair competition,
although Malakas had the trademark “Smash” registered in the
Philippine Patent Office, all the requisites of unfair competition
being present. Its remedy is the administrative cancellation of the
registration of the trademark “Smash” in the Philippine patent
Office, for having obtained the registration contrary to trademark
law. (Law Parke Davis & Co. v. Kiu Foo & Co., 60 Phil 928)
Second suggested answer: Smash manufacturing Company may
have no more remedy, since its trademark “Smash” had been already
abandoned for more than 30 years. (Bata Industries, Ltd. V. C.A., May
31, 1982; 114 SCRA 318) (BAR 1982)
5. Prince Manufacturing Co., Inc. filed a complaint for unfair
competition under section 21-A of R.A. 166 against Prince
Industries, Inc. the complaint substantially alleges that plaintiff
is a foreign corporation organized under the laws of California,
USA., with offices in San Francisco; that defendant Prince
Industries, Inc. is a corporation organized under the laws of the
Philippines with principal office at Sucat Road, Paranaque,
Metro Manila; that plaintiff, founded in 1920 by Iver Prince, is
the largest manufacturer of ball bearings with the trademark
“Prince” and the tradename “Prince Manufacturing Co., Inc.”
had been exported to the Philippines since 1960; that due to the
superior quality and widespread use of its products by the
public, the same are well known to Filipino consumers under
the tradename “Prince Manufacturing Industries, Inc.” and
trademark “Prince”; that long after the commencement of the
use of plaintiff’s trademark and tradename in the Philippines,
defendant began manufacturing and selling ball bearings under
the trademark “Prince” and tradename “Prince Industries, Co.”;
28 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
that defendant has registered with the Philippine Patent Office
the trademark “Prince”, which registration is contrary to Sec. 4
of RA 166, as amended, and violative of plaintiff’s right to the
trademark “Prince”; that the defendant not only uses the
trademark “Prince” but likewise has copied the design used by
plaintiff in distinguishing its trademark; and that the use
thereof by defendant on its products would cause confusion in
the minds of the consumers and likely deceive them as to the
source or origin of the goods, thereby enabling the defendant to
pass off their products as those of plaintiff.
Invoking the provisions of Sec. 21 A of RA 166, as amended,
plaintiff prayed for damages. It also sought the issuance of a
writ of injunction to prohibit defendants from using the
tradename “Prince Industries Co.” and the trademark “Prince”.
If you were the counsel for the plaintiff, what administrative
remedy would you advise your client to pursue in the event the
court action fails?
Answer: Administrative cancellation of the trademark under
Section 17 of RA 166 as amended. Such remedy is available to a
foreign corporation as said section does not require that the
trademark of the foreign corporation alleged to have been infringed
should have been registered in the Philippine Patent Office (General
Garments v. Directors of Patents, 41 SCRA 50 [1971]) (BAR 1984)
6. X, a dealer of low grade oil, to save on expenses, uses the
containers of different companies. Before marketing to the
public his low grade oil, X totally obliterates and erases the
brands or marks stenciled on the containers.
Y brings an action against X for unfair competition upon its
discovery that its containers have been used by X for his low
grade oil.
Is there unfair competition? State briefly your reasons.
Answer: There is no unfair competition, unfair competition is
passing off of one’s goods as those of another and requires
fraudulent intent on the part of the user. These elements are not
present in the problem. (BAR 1988)
7. N Corporation manufactures rubber shoes under the
trademark “Jordann” which hit the Philippine Market in 1985,
and registered its trademark with the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) in 1990. PK
Company also manufactures rubber shoes with the trademark
“Javorski” which it registered with the BPTTT in 1978.
In 1992, PK Company adopted and copied the design of N
Corporation’s “Jordann” rubber shoes, both as to shape and
color, but retained the trademark “Javorski” on its products.
May PK Company be held liable to N Corporation? Explain.
Answer: PK may be held liable for unfairly competing against N
Corporation. By copying the design, shape and color of N’s “Jordann”
rubber shoes and using the same in its rubber shoes trademarked
“Javorski”, PK is obviously trying to pass off its shoes for those of N.
it is of no moment that the trademark “Javorski” was registered
ahead of the trademark “Jordann”. Priority in registration is not
material in an action for infringement of trademark. The basis of an
action for unfair competition is confusing and misleading similarly
in general appearance, not similarity of trademarks. (BAR 1996)
8. What is the distinction between infringement and unfair
competition?
Answer: The distinction between infringement (presumably of
trademark) and unfair competition are as follows:
1. Infringement of a trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of one’s
goods as those of another;
2. Fraudulent intent is unnecessary in infringement of trademark,
whereas fraudulent intent is essential in unfair competition;
3. The prior registration of the trademark is a prerequisite to an
action for infringement of trademark, whereas registration of the
trademark is not necessary in unfair competition. (BAR 1996)
13. Trade Names or Business Names
Section 165. Trade Names or Business Names. - 165.1. A name
or designation may not be used as a trade name if by its nature
or the use to which such name or designation may be put, it is
contrary to public order or morals and if, in particular, it is
liable to deceive trade circles or the public as to the nature of
the enterprise identified by that name.
Section 165.2. (a) Notwithstanding any laws or
regulations providing for any obligation to register
trade names, such names shall be protected, even prior
to or without registration, against any unlawful act
committed by third parties.
(b) In particular, any subsequent use of the trade name
by a third party, whether as a trade name or a mark or
collective mark, or any such use of a similar trade name
or mark, likely to mislead the public, shall be deemed
unlawful.
Relevant Jurisprudence:
The ownership of a trademark or tradename is a property right
which the owner is entitled to protect since there is damage to him
from confusion or reputation or goodwill in the mind of the public
as well as from confusion of goods. By appropriating the word
"CONVERSE," respondent's products are likely to be mistaken as
having been produced by petitioner. The risk of damage is not
limited to a possible confusion of goods but also includes
confusion of reputation if the public could reasonably assume that
the goods of the parties originated from the same source.
(Converse Rubber Corporation vs. Universal Rubber
Products, Inc., G.R. No. L-27906, January 8, 1987)
A trade name previously used in trade or commerce in the
Philippines need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner of
an infringing trademark. Nonetheless, respondent does not have
the right to the exclusive use of the geographic word “San
Francisco” or the generic word “coffee.” It is only the combination
of the words “SAN FRANCISCO COFFEE,” which is respondent’s
trade name in its coffee business, that is protected against
infringement on matters related to the coffee business to avoid
confusing or deceiving the public. (Coffee Partners vs. San
Francisco Coffee and Roastery, Inc., G.R. No. 169504, 3 March
2010)
The Philippines is obligated to assure nationals of countries of the
Paris Convention that they are afforded an effective protection
against violation of their intellectual property rights in the
Philippines in the same way that their own countries are obligated
to accord similar protection to Philippine nationals. Thus, under
Philippine law, a trade name of a national of a State that is a party
to the Paris Convention, whether or not the trade name forms part
of a trademark, is protected “without the obligation of filing or
registration.” (Fredco Manufacturing Corporation vs.
President and Fellows of Harvard College, GR No. 185917,
June 1, 2011)
Under the Paris Convention to which the Philippines is a signatory,
a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a
trademark, is protected without the obligation of filing or
registration. It follows then that the applicant for registration of
trademark is not the lawful owner thereof and is not entitled to
registration if the trademark has been in prior use by a national of
a country which is a signatory to the Paris Convention. (Ecole De
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Cuisine Manille (Cordon Bleu of the Philippines), Inc. vs.
Renaus Cointreau & Cie and Le Cordon Bleu Int’l, B.V., G.R. No.
185830, June 5, 2013)
14. Collective Marks
Section 167. Collective Marks. - 167.1. Subject to Subsections
167.2 and 167.3, Sections 122 to 164 and 166 shall apply to
collective marks, except that references therein to "mark"
shall be read as "collective mark".
Section 167.2. (a) An application for registration of
a collective mark shall designate the mark as a
collective mark and shall be accompanied by a copy
of the agreement, if any, governing the use of the
collective mark.
(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 (a).
D. Copyrights
 A copyright is an incorporeal, intangible right
granted by statute to the author or assignee of
certain literary or artistic works, whereby he is
invested, for a limited period of time, certain moral
or economic rights, on the terms specified by statute.
 Kho case: beauty cream and container thereof are
not copyrightable.
 Eye Leaf Bushing not proper for copyright.
 Pearl & Dean case – light boxes not copyrightable
but the posters therein are.
 Manly case: trading goods not copyrightable.
 There is no territorial limit for copyright. Works
published abroad are entitled to copyright
protection because of the Paris Convention.
Relevant Jurisprudence: At most, the certificates of registration
and deposit issued by the National Library and the Supreme Court
Library serve merely as a notice of recording and registration of
the work but do not confer any right or title upon the registered
copyright owner or automatically put his work under the
protective mantle of the copyright law; it is not a conclusive proof
of copyright ownership. Hence, when there is sufficient proof that
the copyrighted products are not original creations but are readily
available in the market under various brands, as in this case,
validity and originality will not be presumed. (Manly Sportwear
Manufacturing, Inc. vs. Dadodette Enterprises and/or Hermes
Sports Center, G.R. No. 165306, September 20, 2005)
Bar Question: Can an article of commerce serve as a trademark
and at the same time enjoy patent and copyright protection?
Explain and give an example.
Answer: A stamped or marked container of goods can be registered
as a trademark. An original ornamental design or model for articles
of manufacturer can be copyrighted. An ornamental design cannot
be patented, because aesthetic creations cannot be patented.
However, it can be registered as an industrial design. Thus, a
container of goods which has an original ornamental design can be
registered as a trademark, can be copyrighted, and can be registered
as an industrial design. (BAR 2010)
1. Basic Principles, Sections 172.2, 175 and 181
172.2. Works are protected by the sole fact of their creation,
irrespective of their mode or form of expression, as well as of
their content, quality and purpose. (Sec. 2, P.D. No. 49a)

Section 175. Unprotected Subject Matter. - Notwithstanding
the provisions of Sections 172 and 173, no protection shall
extend, under this law, to 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; news of the day and other
miscellaneous facts having the character of mere items of
press information; or any official text of a legislative,
administrative or legal nature, as well as any official
translation thereof. (n)
SEC. 181. Copyright and Material Object. – the copyright is
distinct from the property in the material object subject to it.
Consequently, the transfer, assignment or licensing of the
copyright shall not itself constitute a transfer of the material
object. Nor shall a 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)
Section 180. Rights of Assignee. - 180.1. The copyright may be
assigned in whole or in part. Within the scope of the
assignment, the assignee is entitled to all the rights and
remedies which the assignor had with respect to the
copyright.
The submission of a literary, photographic or artistic work to
a newspaper, magazine or periodical forpublication shall
constitute only a license to make a single publication unless a
greater right is expressly granted.
Bar Question: Jose Santos has written many poems, some of
which have been published in Panorama Magazine but never
registered with the Copyright Office. Among his published
works was the poem entitled “In a Rose Garden.” About a year
from its publication, Jose was surprised to hear over the radio
a song whose lyrics were copied from his poem. It appears that
music sheets of the song have been published and sold under
the name of the composer, without any acknowledgment in
favor of Jose.
Jose wants to know what his rights are and whether he can
secure an injunction against the composer and/or the
publisher, perhaps with damages. How will you advise him?
Explain.
Answer:
I would tell Santos that he has a right to file injunction proceedings
to restrain the composer and/or his publisher from further
committing any act of infringement of his copyright. Under the
present law, copyright is acquired from the moment of the creation
of the work. Registration and deposit of the work are no longer
necessary for its acquisition. The moment Santos wrote his poem, he
acquired the right to restrain any infringement on his copyright, as
well as the right to have the infringing copies and devices
impounded. However, what Santos cannot demand without such
registration and deposit are damages resulting from the
infringement. He is therefore not entitled to such damages. (BAR
1981)
2. Copyrightable Works
a. Original Works
Section 172. Literary and Artistic Works. - 172.1. 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:
(a) Books, pamphlets, articles and other writings;
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 Books include directories, gazettes and yellow pages.
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for
oral delivery, whether or not reduced in writing or other
material form;
 XPN: Read, pronounced or delivered in courts of justice,
administrative agencies, deliberative assemblies, meetings of a
public character.
(d) Letters;
(e) Dramatic or dramatico­musical compositions;
choreographic works or entertainment in dumb shows;
 e.g. stage play, theatricals
(f) Musical compositions, with or without words;
 If you downloaded a musical composition from a website which
the US has banned, you are liable for infringement because the
amendment to RA 8293 punishes downloading.
(g) Works of drawing, painting, architecture, sculpture,
engraving, lithography or other works of art; modelsor
designs for works of art;
(h) Original ornamental designs or models for articles of
manufacture, whether or not registrable as anindustrial
design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science;
 Lotus notes used by architecture students are not copyrightable.
(j) Drawings or plastic works of a scientific or technical
character;
 E.g. skeleton
(k) Photographic works including works produced by a
process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or
any process for making audio­visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
 A cookbook is not copyrightable – it is a functional
listing of ingredients of a course or viand. If it
includes how to do the dishes: still not copyrightable.
Bar Question: Under the Intellectual Property Code, lectures,
sermons, addresses or dissertations prepared for oral delivery,
whether or not reduced in writing or other material forms, are
regarded as
a. Non-original works. b. Original works. c. Derivative works. d. Not
subject to protection.
Answer: b. Original works. (BAR 2011)

b. Derivative Works
Section 173. Derivative Works. - 173.1. The following derivative
works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations,
abridgments, arrangements, and other alterations of
literaryor artistic works; and
(b) Collections of literary, scholarly or artistic works,
and compilations of data and other materials which
areoriginal by reason of the selection or coordination or
arrangement of their contents. (Sec. 2, [P] and [Q], P.D.
No. 49)
173.2. The works referred to in paragraphs (a) and (b) of
Subsection 173.1 shall be protected as new works: Provided
however, That such new work shall not affect the force of any
subsisting copyright upon the original works employed or any
part thereof, or be construed to imply any right to such use of
the original works, or to secure or extend copyright in such
original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)
Section 174. Published Edition of Work. - In addition to the right
to publish granted by the author, his heirs, or assigns, the
publisher shall have a copyright consisting merely of the right
of reproduction of the typographical arrangement of the
published edition of the work. (n)
1. Dramatizations, etc.
 E.g. turned script into a play
 Abridgement means condense
 Translations: e.g. RB Gorospe’s book –
consent of Atty. Gorospe must first be
obtained because the right to carry out a
derivative work belongs exclusively to the
author
 E.g. Manresa’s book – since it is already
more than 50 years after Manresa’s death, it
has already become of public dominion
 E.g. UPLC books used by the Dean’s Circle –
can argue that it is education, not for profit,
for free (a limitation to copyright)
2. Compilation or collection which became original by
reason of their selection or coordination
 E.g. classical books – compilation, if more
than 50 years from the original authors’
death: it is already a property of public
dominion.
3. Non-Copyrightable Works
Section 175. Unprotected Subject Matter. - Notwithstanding
the provisions of Sections 172 and 173, no protection shall
extend, under this law, to 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; news of the day and other
miscellaneous facts having the character of mere items of
press information; or any official text of a legislative,
administrative or legal nature, as well as any official
translation thereof. (n)
Section 176. Works of the Government. - 176.1. No copyright
shall subsist in 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
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agency or office may, among other things, impose as a
condition the 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. 9, first par., P.D. No. 49)
176.2. 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. (n)
 Lectures before the SEC or any regulatory board are
not copyrightable because of Section 176.1, thus,
there will no infringement for any use of such work.
 Text of all commercial laws, compiled in a book and
distributed for free – no infringement because works
of government are not copyrightable. XPN: if the
distribution is for profit.
Excluded works: (PINDOG)
1. Pleadings
2. Idea, system, procedure, etc.
 Discovery of planet
 System to access telephone numbers (iTel
bar question)
 System to make filing efficient
3. News of the day
 E.g. tweet, retweet
 Violation of right to privacy but not
infringement: when you took a photo of
someone and uploaded it on the internet.
4. Decisions of courts and tribunals
5. Any Official text of a legislative, administrative, or
legal nature, as well as any official translation
thereof.
6. Works of the Government
 XPN: for profit, in which case, prior approval
of the government agency or office wherein
the work is created shall be necessary.
 XPN to XPN: Even if for profit, no prior
approval shall be required for the use for
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.
Relevant Jurisprudence:
The format or mechanics of a television show is not included in the
list of protected works in Sec. 2 of P.D. No. 49, which is
substantially the same as Sec. 172 of the Intellectual Property
Code (R.A. No, 8293). For this reason, the protection afforded by
the law cannot be extended to cover them. (Francisco Joaquin, Jr.
vs. Franklin Drilon, et. al., G.R. No. 108946, January 28, 1999)
Pearl & Dean’s copyright protection extended only to the technical
drawings and not to the light box itself as the latter does not fall
 under the category of “prints, pictorial illustrations, advertising
copies, labels, tags and box wraps.” The light box was not a literary
or artistic piece which could be copyrighted under the copyright
law; and no less clearly, neither could the lack of statutory
authority to make the light box copyrightable be remedied by the
simplistic act of entitling the copyright certificate issued by the
National Library as "Advertising Display Units.” (Pearl & Dean
(Phil.), Inc. vs. Shoemart, Inc., G.R. No. 148222, August 15,
2003)
Bar Questions:
1. TRUE OR FALSE. Answer TRUE if the statement is true, or
FALSE if the statement is FALSE. Explain your answer in not
more than 2 sentences.
The Denicola Test in intellectual property law states that if
design elements of an article reflect a merger of aesthetic and
functional considerations, the artistic aspects of the work
cannot be conceptually separable from the utilitarian aspects;
thus, the article cannot be copyrighted.
Answer: True. Applying the Denicola Test in Brandir International,
Inc. v. Cascade Pacific Lumber Co. (834 F.2d 1142, 1988 Copr.L.Dec.
P26), the United State Court of Appeals for the Second Circuit held
that if there is any aesthetic element which can be separated from
the utilitarian elements, then the aesthetic element may be
copyrighted. (BAR 2009)
2. X, an amateur astronomer, stumbled upon what appeared to
be massive volcanic eruption in Jupiter while peering at the
planet through his telescope. The following week, X, without
notes, presented a lecture on his findings before the
Association of Astronomers of the Philippines. To his dismay,
he later read an article in a science journal written by Y, a
professional astronomer, repeating exactly what X discovered
without any attribution to him. Has Y infringed on X’s copyright,
if any?
a. No, since X did not reduce his lecture in writing or other
material form. b. Yes, since the lecture is considered X’s original
work. c. No, since no protection extends to any discovery, even
if expressed, explained, illustrated, or embodied in a work. d.
Yes, since Y’s article failed to make any attribution to X.
Answer: c. No, since no protection extends to any discovery, even if
expressed, explained, illustrated, or embodied in a work. (BAR
2011)
3. X came up with a new way of presenting a telephone directory
in a mobile phone, which he dubbed as the “iTel” and which
uses lesser time for locating names and telephone numbers.
May X have his “iTel” copyrighted in his name?
a. No, because it is a mere system or method. b. Yes, because it
is an original creation. c. Yes, because it entailed the application
of X’s intellect. d. No, because it did not entail any application of
X’s intellect.
Answer: d. No, because it is a mere system or method. (BAR 2011)
4. Rights of Copyright Owner
Economic Right Moral Right
Remuneration for Connection of the author
exploitation with the work
Section 177. Copyright or Economic Rights. - Subject to the
provisions of Chapter VIII, copyright or economic rights shall
consist of the exclusive right to carry out, authorize or
prevent the following acts:
177.1. Reproduction of the work or substantial
portion of the work;
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177.2. Dramatization, translation, adaptation,
abridgment, arrangement or other transformation
of the work;
177.3. The first public distribution of the original
and each copy of the work by sale or other forms of
transfer of ownership;
177.4. 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 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)
177.5. Public display of the original or a copy of the
work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the
work. (Sec. 5, P. D. No. 49a)
Section 213. Term of Protection. - 213.1. Subject to the
provisions of Subsections 213.2 to 213.5, the copyright in
works under Sections 172 and 173 shall be protected during
the life of the author and for fifty (50) years after his death.
This rule also applies to posthumous works. (Sec. 21, first
sentence, P.D. No. 49a)
213.2. In case of works of joint authorship, the
economic rights shall be protected during the life of
the last surviving author and for fifty (50) years
after his death. (Sec. 21, second sentence, P.D. No.
49)
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 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. (Sec. 23, P.D. No. 49)
213.4. In case of works of applied art the protection
shall be for a period of twenty-five (25) years from
the date of making. (Sec. 24(B), P.D. No. 49a)
213.5. In case of photographic works, the
protection shall be for fifty (50) years from
publication of the work and, if unpublished, fifty
(50) years from the making. (Sec. 24(C), P.D. 49a)
213.6. In case of audio-visual works including those
produced by process analogous to photography or
any process for making audio-visual recordings,
the term shall be fifty (50) years from date of
publication and, if unpublished, from the date of
making. (Sec. 24(C), P.D. No. 49a)
Section 215. Term of Protection for Performers, Producers
and Broadcasting Organizations. - 215.1. 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
theperformance took place; and
 (b) For sound or image and sound recordings and for
performances incorporated therein, fifty (50)
yearsfrom the end of the year in which the recording
took place.
215.2. In case of broadcasts, the term shall be 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. (Sec. 55,
P.D. No. 49a)
Section 193. Scope of Moral Rights. - The author of a work
shall, independently of the economic rights in Section 177 or
the grant of an assignment or license with respect to such
right, have the right:
193.1. To 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;
193.2. To make any alterations of his work prior to,
or to withhold it from publication;
193.3. To 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
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. No. 49)
Section 194. Breach of Contract. - An author cannot be
compelled to perform his contract to create a work or for the
publication of his work already in existence. However, he may
be held liable for damages for breach of such contract. (Sec.
35, P.D. No. 49)
Section 195. Waiver of Moral Rights. - An author may waive
his rights mentioned in Section 193 by a written instrument,
but no such waiver shall be valid where its effects is to permit
another:
195.1. To use the name of the author, or the title of
his work, or otherwise to make use of his
reputation with respect to any version or
adaptation of his work which, because of
alterations therein, would substantially tend to
injure the literary or artistic reputation of another
author; or
195.2. To use the name of the author with respect
to a work he did not create. (Sec. 36, P.D. No. 49)
SEC. 198. Term of Moral Rights. – 198.1. the right of an author
under Section 193.1. shall last during the lifetime of the
author and in perpetuity after his death while the rights
under Sections 193.2. 193.3. and 193.4. shall be coterminous
with the economic rights, the moral rights shall not be
assignable or subject to license. the person or persons to be
charged with the posthumous enforcement of these rights
shall be named in a written instrument which shall be filed
with the National Library. In default of such person or
persons, such enforcement shall devolve upon either the
author’s heirs, and in default of the heirs, the Director of the
National Library.
First Sale Doctrine
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After the first sale of the lawfully made copy of the
copyrighted work, anyone who is the owner of that copy can
sell or dispose of that copy in any way without any liability
for copyright infringement. The first sale of an authorized
copy of the work exhausts the author’s right to control
distribution of copies.
 What is only protected is the first sale
 E.g. reselling of books you bought at a higher price –
no infringement
 Subsequent sale after transfer of ownership – no
violation of economic rights
Driot de Suite
Section 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 or composer, subsequent to the first
disposition thereof by the author, the author or his heirs shall
have an inalienable right to participate in the gross proceeds
of the sale or lease to the extent of five percent (5%). This
right shall exist during the lifetime of the author and for fifty
(50) years after his death. (Sec. 31, P.D. No. 49)
Section 201. Works Not Covered. - The provisions of this
Chapter shall not apply to prints, etchings, engravings, works
of applied art, or works of similar kind wherein the author
primarily derives gain from the proceeds of reproductions.
(Sec. 33, P.D. No. 49)
 Applies only to an original work of painting or
sculpture, or the original manuscript of a writer or
composer
 Works wherein the author primarily derives gain
from the proceeds of reproductions are not covered
Moral Rights
1. Attribution – Habana vs. Robles
 In Habana, infringer used exactly the same
examples without attribution
 TEST: not the quantity of pages copies but
the injurious effect on the author
(reputation, work)
 E.g. Bar prob – making a critique on a work
but copied 85% thereof, there is
infringement because quotation must be
compatible with fair use. Attribution is not
enough.
2. Alteration
3. Withholding Publication
 Author can be sued for damages (Section
194 – breach of contract) but cannot be
compelled
 Right to Integrity – If it is something that will
enhance the value of the work, the author
cannot object (as it appears from how the
law is couched).
4. Restraint
Bar Questions:
1. Jose Santos has written many poems, some of which have
been published in Panorama Magazine but never registered
with the Copyright Office. Among his published works was the
poem entitled “In a Rose Garden.” About a year from its
publication, Jose was surprised to hear over the radio a song
whose lyrics were copied from his poem. It appears that music
sheets of the song have been published and sold under the
name of the composer, without any acknowledgment in favor of
Jose.
Jose wants to know what his rights are and whether he can
secure an injunction against the composer and/or the
publisher, perhaps with damages. How will you advise him?
Explain.
Answer: I would tell Santos that he has a right to file injunction
proceedings to restrain the composer and/or his publisher from
further committing any act of infringement of his copyright. Under
the present law, copyright is acquired from the moment of the
creation of the work. Registration and deposit of the work are no
longer necessary for its acquisition. The moment Santos wrote his
poem, he acquired the right to restrain any infringement on his
copyright, as well as the right to have the infringing copies and
devices impounded. However, what Santos cannot demand without
such registration and deposit are damages resulting from the
infringement. He is therefore not entitled to such damages. (BAR
1981)
2. The widow of a former President commissioned Matalino to
write a biography of her late husband for a fee. Upon
completion of the work, the widow paid Matalino the agreed
price. The biography was copyrighted. The widow, however,
changed her mind upon reading the book and decided not to
have it published.
a) Can the President’s widow sell the property without the
consent of Matalino? Explain. b) Can the President’s widow
transfer the copyright without the consent of Matalino?
Answer: a) The President’s widow can sell the property without the
consent of Matalino. The widow was the owner of the work that was
done by Matalino pursuant to their agreement.
b) Since the copyright is likewise owned by the widow, the transfer
thereof may be effected even without the consent of Matalino. Of
course, Matalino, as the creator, retains certain moral rights but
consent on transfer is not among such rights. (BAR 1986)
3. What intellectual property rights are protected by copyright?
Answer: Section 5 of PD 49 provides that Copyright shall consist the
exclusive right:
a) To print, reprint, publish, copy, distribute, multiply, sell and make
photographs, photo engravings, and pictorial illustrations of the
works; b) To make any translation or other version or extracts or
arrangements or adaptation thereof; to dramatize if it be a non-
dramatic work; to convert it into a non-dramatic work if it be a
drama; to complete or execute if it be a model or design; c) To
exhibit, perform, represent, produce, or reproduce the work in any
manner or by any method whatever for profit or otherwise; if not
reproduced in copies for sale, to sell any manuscripts or any record
whatsoever thereof; d) To make any other use or disposition of the
work consistent with the laws of the land. (BAR 1995)
4. In 1999, Mocha Warm, an American musician, had a hit rap
single called Warm Warm Honey which he himself composed
and performed. The single was produced by a California record
company, Galactic Records. Many noticed that some passages
from Warm Warm Honey sounded eerily similar to parts of
Under Hassle, a 1978 hit song by the British rock band Majesty.
A copyright infringement suit was filed in the United States
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against Mocha Warm by Majesty. It was later settled out of
court, with Majesty receiving attribution as co-author of Warm
Warm Honey as well as share in the royalties.
By 2002, Mocha Warm was nearing bankruptcy and he sold his
economic rights over Warm Warm Honey to Galactic Records
for $10,000.
In 2008, Planet Films, a Filipino move producing company,
commissioned DJ Chef Jean, a Filipino musician, to produce an
original re-mix of Warm Warm Honey for use in one of its latest
films, Astig!. DJ Chef Jean remixed Warm Warm Honey with a
salsa beat, and interspersed as well a recital of a poetic stanza
by John Blake, a 17th century Scottish poet. DJ Chef Jean died
shortly after submitting the remixed Warm Warm Honey to
Planet Films.
Prior to the release of Astig!, Mocha Warm learns of the remixed
Warm Warm Honey and demands that he be publicly identified
as the author of the remixed song in all the CD covers and
publicity releases of Planet Films.
a) Who are the parties or entities entitled to be credited as
author of the remixed Warm Warm Honey? Reason out your
answers. b) Who are the particular parties or entities who
exercise copyright over the remixed Warm Warm Honey?
Explain.
Answer: a) Mocha Warm, Majesty and Chef Jean are entitled to be
credited as authors of the remixed Warm Warm Honey, because it is
their joint work. Mocha Warm retained his moral right to be credited
as an author of the remixed Warm Warm Honey despite the sale of
his economic rights to Galactic Records, because his moral rights
exist independently of his economic rights. John Blake cannot be
credited for the use of his work because copyright extends only
during the lifetime of the author and 50 years after his death. (BAR
2008)
5. Eloise, an accomplished writer, was hired by Petong to write
a bimonthly newspaper column for Diario de manila, a newly-
established newspaper of which Petong was the editor-in-chief.
Eloise was to be paid P1,000 for each column that was
published. In the course of 2 months, Eloise submitted 3
columns which, after some slight editing, were printed in the
newspaper. However, Diario de Manila proved unprofitable
and closed only after 2 months. Due to the minimal amounts
involved, Eloise chose not to pursue any claim for payment
from the newspaper, which was owned by New Media
Enterprises.
a) Does Eloise have to secure authorization from New Media
Enterprises to be able to publish her Diario de Manila columns
in her own anthology? Explain fully. b) Assume that New Media
Enterpises plans to publish Eloise’s columns in it own
anthology entitled, “The Best of Diario de Manila”. Eloise wants
to prevent the publication of her columns in that anthology
since she was never paid by the newspaper. Name one
irrefutable legal argument Eloise could cite to enjoin New
Media Enterprises from including her columns in its anthology.
Answer: a) Eloise does not have to secure the authorization of New
Media, because as the author, she owns the copyright to her
columns.
b) Eloise could invoke that under the Intellectual Property Code, as
the owner of the copyright to the columns, she can either “authorize
or prevent” reproduction of the work, including the public
distribution of the original and each of the work “by sale or other
forms of transfer of ownership”. While the anthology as a derivative
work is protected as a new work, it does not affect the force of the
copyright of Eloise upon her columns and does not imply any right
to New Media to use the columns without the consent of Eloise. (BAR
2008)

6. Apart from economic rights, the author of a copyright also has
moral rights which he may transfer by way of assignment. The
term of these moral rights shall last
a. During the author’s lifetime and for 50 years after his death.
b. Forever. c. 50 years from the time the author created his
work. d. During the author’s lifetime.
Answer: c. During the author’s lifetime and for 50 years after his
death. (BAR 2011)
5. Rules on Ownership of Copyright
Creator To whom it belongs
Single Creator Author of the work, his
heirs or assigns
Works of joint If work consists of
authorship identifiable parts that can
be used separately: the
author of each part shall be
the original owner of the
copyright in the part he has
created (e.g. UST Law
Review)
Otherwise: the co-authors
shall be the original
owners of the copyright
and their rights shall be
governed by the rules on
co-ownership XPN:
contrary agreement
Employee’s Creation Employee: If the creation
of the object of copyright is
not a part of his regular
duties even if the employee
uses the time, facilities and
materials of the employer
Employer: If the work is
the result of the
performance of his
regularly-assigned duties
XPN: Contrary agreement,
express or implied
Commissioned Work (e.g. Person who
Mural in UST Faculty of commissioned: owns the
Civil Law – author has the work
right to make Creator: Copyright shall
modifications because of remain with him XPN: a
his moral rights) written stipulation to the
contrary
Audiovisual Work For exhibition purposes:
producer XPT: the right to
collect performing license
fees for the performance of
musical compositions
which are incorporated
into the work
All other purposes:
producer, author of the
scenario, composer of the
35 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
music, film director, author
of the adapted work
Letters Writer
Anonymous and The publishers shall be
Pseudonymous Works deemed to represent the
authors XPN: (1) contrary
appears, (2) the
pseudonyms or adopted
name leaves no doubt as to
the identity of the author,
or (3) if the author of the
anonymous work discloses
his identity.
 Bar question about columnist: there is a distinction
between the work and the copyright that attaches to
it. The consent of the publisher is not necessary to
reproduce the column because the copyright belongs
to the columnist, he being the owner, as such, he has
the right to reproduce, etc., unless otherwise
stipulated in their contract.
 The publisher compiled the best columns – the
columnist can sue for infringement because the right
to authorize derivative works belong to the author.
Bar Questions:
1. If today a person is granted a copyright for a book, for how
long will the copyright be valid? If said person uses a
pseudonym, how would this affect the length of the copyright?
Answer: A copyright endures during the lifetime of the creator and
for 50 years after his death. In case he uses pseudonym, the
copyright shall last until the end of 50 years following the date of the
first publication of the work. (BAR 1975)
2. The widow of a former President commissioned Matalino to
write a biography of her late husband for a fee. Upon
completion of the work, the widow paid Matalino the agreed
price. The biography was copyrighted. The widow, however,
changed her mind upon reading the book and decided not to
have it published.
Can the President’s widow sell the property without the
consent of Matalino? Explain.
Answer: The President’s widow can sell the property without the
consent of Matalino. The widow was the owner of the work that was
done by Matalino pursuant to their agreement. (BAR 1986)
3. Felix copyrighted the oil painting showing the oath taking of
Pres. C. Aquino and Vice-President S. Laurel after the EDSA
revolution. Val engaged an artist to paint the same scene for use
as picture postcards. Val then started sending the picture
postcards to his friends abroad. Is there a violation of Felix’s
copyright? Reasons.
Answer: While Felix can have a copyright on his own painting which
is expressive of his own artistic interpretation of the event he has
portrayed, the scene or the event itself however, is not susceptible
to exclusive ownership. Accordingly, there would be no violation of
Felix’s copyright if another painter were to do the similar work.
(BAR 1989)
4. Solid Investment House (SOLID) commissioned Mon Blanco
and his son Steve, both noted artist, to paint a mural for the
Main Lobby of the new building of SOLID for a contract price of
P2 M.
a) Who owns the mural? Explain. b) Who owns the copyright of
the mural? Explain.
Answer: a) SOLID owns the mural. SOLID was the one who
commissioned the artists to do the work and paid for the work in the
sum of P2 M.
b) Unless there is a stipulation to the contrary in the contract, the
copyright shall belong in joint ownership to SOLID and Mon Blanco
and his son Steve. (BAR 1995)
5. BR and CT are noted artists whose paintings are highly prized
by collectors. Dr. DL commissioned them to paint a mural at the
main lobby of his new hospital for children. Both agreed to
collaborate on the project for a total fee of P2 M to be equally
divided between them. It was also agreed that Dr. DL had to
provide all the materials for the painting and pay for the wages
of technicians and laborers needed for the work on the project.
Assume that the project is completed and both BR and CT are
fully paid the amount of P2 M as artists’ fee by DL. Under the law
on intellectual property, who will own the mural? Who will own
the copyright in the mural? Why?
Answer: Under Section 178.4 of the Intellectual Property Code, in
case of commissioned work, the creator (in the absence of a written
stipulation to the contrary) owns the copyright, but the work itself
belongs to the person who commissioned its creation. Accordingly,
the mural belongs to DL. However, BR and CT own the copyright,
since there is no stipulation to the contrary. (BAR 2004)
6. In 1999, Mocha Warm, an American musician, had a hit rap
single called Warm Warm Honey which he himself composed
and performed. The single was produced by a California record
company, Galactic Records. Many noticed that some passages
from Warm Warm Honey sounded eerily similar to parts of
Under Hassle, a 1978 hit song by the British rock band Majesty.
A copyright infringement suit was filed in the United States
against Mocha Warm by Majesty. It was later settled out of
court, with Majesty receiving attribution as co-author of Warm
Warm Honey as well as share in the royalties.
By 2002, Mocha Warm was nearing bankruptcy and he sold his
economic rights over Warm Warm Honey to Galactic Records
for $10,000.
In 2008, Planet Films, a Filipino move producing company,
commissioned DJ Chef Jean, a Filipino musician, to produce an
original re-mix of Warm Warm Honey for use in one of its latest
films, Astig!. DJ Chef Jean remixed Warm Warm Honey with a
salsa beat, and interspersed as well a recital of a poetic stanza
by John Blake, a 17th century Scottish poet. DJ Chef Jean died
shortly after submitting the remixed Warm Warm Honey to
Planet Films.
Prior to the release of Astig!, Mocha Warm learns of the remixed
Warm Warm Honey and demands that he be publicly identified
as the author of the remixed song in all the CD covers and
publicity releases of Planet Films.
Who are the particular parties or entities who exercise
copyright over the remixed Warm Warm Honey? Explain.
Answer: The copyright over the remixed Warm Warm Honey
belongs to Galactic records, Majesty, and Chef Jean. The copyright of
Mocha Warm belongs to Galactic Records, because he assigned it to
Galactic Records. Majesty also has a copyright, because it is a co-
author. The copyright of Chef Jean belongs to him even if his work
was commissioned by Planet Firm, because the copyright remained
with him. (BAR 2008)
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7. While vacationing in Boracay, Valentino surreptitiously took
photographs of his girlfriend Monaliza in her skimpy bikini. 2
weeks later, her photograph appeared in the Internet and in a
national celebrity magazine.
Monaliza found out that Valentino had sold the photograph to
the magazine and, adding insult to injury, uploaded them to his
personal blog on the Internet.
1. Monaliza filed a complaint against Valentino for damages
based on, among other grounds, violation of her intellectual
property rights. Does she have any cause of action? Explain.
Answer: No. Monaliza cannot sue Valentino for violation of her
intellectual property rights, because she was not the one who took
the pictures. She may sue Valentino instead for violation of her right
to privacy. He surreptitiously took photographs of her and then sold
the photographs to a magazine and uploaded them to his personal
blog in the Internet.
2. Valentino’s friend Francesco stole the photographs and
duplicated them and sold them to a magazine publication.
Valentino sued Francesco for infringement and damages. Does
Valentino have any cause of action? Explain.
Answer: No. Valentino cannot sue Francesco for infringement,
because he has already sold the photographs to a magazine.
3. Does Monaliza have any cause of action against Franceso?
Explain.
Answer: Yes. Monaliza can also sue Francesco for violation of her
right to privacy. (BAR 2010)
8. T, an associate attorney in XYZ Law Office, wrote a newspaper
publisher a letter disputing a columnist’s claim about an
incident in the attorney’s family. T used the law firm’s
letterhead and its computer in preparing the letter. T also
requested the firm’s messenger to deliver the letter to the
publisher. Who owns the copyright to the letter?
a. T, since he is the original creator of the contents of the letter.
b. Both T and the publisher, one wrote the letter to the other
who has possession of it. c. The law office since it was an
employee and he wrote it on the firm’s letterhead. d. The
publisher to whom the letter was sent.
Answer: b. T, since he is the original creator of the contents of the
letter. (BAR 2011)
9. Rudy is a fine arts student in a university. He stays in a
boarding house with Bernie as his roommate. During his free
time, Rudy would paint and leave his finished works lying
around the boarding house. One day, Rudy saw one of his
works—an abstract painting entitled Manila Traffic Jam—on
display at the university cafeteria. The cafeteria operator said
he purchased the painting from Bernie who represented
himself as its painter and owner.
Rudy and the cafeteria operator immediately confronted
Bernie. While admitting that he did not do the painting, Bernie
claimed ownership of its copyright since he had already
registered it in his name with the National Library as provided
in the Intellectual Property Code.
Who owns the copyright to the painting? Explain.
Answer: Rudy owns the copyright to the painting because he was the
one who actually created it. His rights existed from the moment of
its creation. The registration of the painting by Bernie with the
National Library did not confer copyright upon him. The registration
is merely for the purpose of completing the records of the National
Library. (BAR 2013)
6. Limitations on Copyright
 Section 184. Limitations on Copyright. - 184.1. Notwithstanding
the provisions of Chapter V, the following acts shall not
constitute infringement of copyright:
(a) The recitation or performance of a work, once it has
been lawfully made accessible to the public, if
doneprivately and free of charge or if made strictly for
a charitable or religious institution or society; (Sec.
10(1), P.D. No. 49)
(b) The making of quotations from a published work if
they are compatible with fair use and only to theextent
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)
(c) The reproduction or communication to the public
by mass media of articles on current political,
social,economic, scientific or religious topic, lectures,
addresses and other works of the same nature, which
are delivered in public if such use is for information
purposes and has not been expressly reserved:
Provided, That the source is clearly indicated; (Sec. 11,
P.D. No. 49)
(d) The reproduction and communication to the public
of literary, scientific or artistic works as part ofreports
of current events by means of photography,
cinematography or broadcasting to the extent
necessary for the purpose; (Sec. 12, P.D. No. 49)
(e) The inclusion of a work in a publication, broadcast,
or other communication to the public, sound recording
or film, if such inclusion is made by way of illustration
for teaching purposes and is compatible with fair use:
Provided, That the source and of the name of the author,
if appearing in the work, are mentioned;
(f) The recording made in schools, universities, or
educational institutions of a work included in a
broadcastfor the use of such schools, universities or
educational institutions: Provided, That such recording
must be deleted within a reasonable period after they
were first broadcast: Provided, further, That such
recording may not be made from audiovisual works
which are part of the general cinema repertoire of
feature films except for brief excerpts of the work;
(g) The making of ephemeral recordings by a
broadcasting organization by means of its own facilities
andfor use in its own broadcast;
(h) The use made of a work by or under the direction
or control of the Government, by the National Libraryor
by educational, scientific or professional institutions
where such use is in the public interest and is
compatible with fair use;
(i) The public performance or the communication to
the public of a work, in a place where no admission feeis
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)
(j) Public display of the original or a copy of the work
not made by means of a film, slide, television image
orotherwise 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
(k) Any use made of a work for the purpose of any
judicial proceedings or for the giving of
professionaladvice by a legal practitioner.
(l) the reproduction or distribution of published
articles or materials in a specialized format exclusively
for the use of the blind, visually- and reading-impaired
37 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
persons: Provided, That such copies and distribution
shall be made on a nonprofit basis and shall indicate the
copyright owner and the date of the original
publication.
Section 186. Work of Architecture. - Copyright in a work of
architecture shall include the right to control the erection of
any building which reproduces the whole or a substantial
part of the work either in its original form or in any form
recognizably derived from the original: Provided, That the
copyright in any such work shall not include the right to
control the reconstruction or rehabilitation in the same style
as the original of a building to which that copyright relates.
(n)
Section 187. Reproduction of Published Work. - 187.1.
Notwithstanding the provision of Section 177, and subject to
the provisions of Subsection 187.2, the private reproduction
of a published work in a single copy, where the reproduction
is made by a natural person exclusively for research and
private study, shall be permitted, without the authorization
of the owner of copyright in the work.
187.2. The permission granted under Subsection 187.1 shall
not extend to the reproduction of:
(a) A work of architecture in the form of building or
other construction;
(b) An entire book, or a substantial part thereof, or of
a musical work in graphic form by
reprographicmeans;
(c) A compilation of data and other materials;
(d) A computer program except as provided in
Section 189; and
(e) Any work in cases where reproduction would
unreasonably conflict with a normal exploitation
of thework or would otherwise unreasonably
prejudice the legitimate interests of the author.
(n)
SEC. 188. Reprographic Reproduction by Libraries. – 188.1.
Notwithstanding the provisions of Subsection 177.1., any
library or archive whose activities are not for profit may,
without the authorization of the author or copyright owner,
make a limited number of copies of the work, as may be
necessary for such institutions to fulfill their mandate, by
reprographic reproduction:
(a) Where the work by reason of its fragile
character or rarity cannot be lent to user in its
original form;
(b) Where the works are isolated articles
contained in composite works or brief portions of
other publishedworks and the reproduction is
necessary to supply them, when this is
considered expedient, to persons requesting
their loan for purposes of research or study
instead of lending the volumes or booklets which
contain them; and
(c) Where the making of such limited copies
is in order to preserve and, if necessary in the
event that it is lost, destroyed or rendered
unusable, replace a copy, or to replace, in the
permanent collection of another similar library
or archive, a copy which has been lost, destroyed
or rendered unusable and copies are not
available with the publisher."
188.2. Notwithstanding the above provisions, it shall not be
permissible to produce a volume of a work published in
several volumes or to produce missing tomes or pages of
magazines or similar works, unless the volume, tome or part
is out of stock: Provided, That every library which, by law, is
entitled to receive copies of a printed work, shall be entitled,
when special reasons so require, to reproduce a copy of a
published work which is considered necessary for the
 collection of the library but which is out of stock. (Sec. 13, P.D.
49a)
Section 189. Reproduction of Computer Program. - 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, a
computer program, by the lawful owner of that computer
program: Provided, That the copy or adaptation is necessary
for:
(a) The use of the computer program in conjunction with a
computer for the purpose, and to the extent, for which
the computer program has been obtained; and
(b) Archival purposes, and, for the replacement of the
lawfully owned copy of the computer program in the
event that the lawfully obtained copy of the computer
program is lost, destroyed or rendered unusable.
189.2. No copy or adaptation mentioned in this
Section shall be used for any purpose other
than the ones determined in this Section, and
any such copy or adaptation shall be
destroyed in the event that continued
possession of the copy of the computer
program ceases to be lawful.
Limitations (Dean’s): PQ IRIS PAGE JIF (pregnant queen
IRIS PAGE jumping in fantasy)
1. Private use after it has been made accessible to the public,
for charitable or religious purposes or for free
 Filipino Society of Composer’s vs. Tan – the
performance here was for profit even though the
combo group did not charge any fee. Payment
will be part of overhead which will eventually be
charged to customers.
 Hotels showing movies without fee – similar to
the foregoing case.
2. Quotations with proper attribution and compatible with
fair use
 Critic reproduced 85% of the work – no longer
compatible with fair use, tantamount to
infringement even with attribution
3. Items for press information
 Done by mass media e.g. campaign or political or
economic speeches
4. Report of current events
Report of current Items of press
events information
For photography, Done by mass
cinematography, e.g. media.
posting in own blog
5. Illustrations for teaching purposes
6. Recording made in schools or by universities
 E.g, broadcast of UAAP games, cheerdance
competition shown in campus
7. Public display of an original work after it has been
sold, not for film slide, television, photography
 Mode: Xerox, photocopy of a paintaing
8. Admission is free – public performance of a work
9. Under supervision and control of the government
 “Must Carry Rule” – by the NTC, must carry
signals of local stations, no infringement
38 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
 GMA vs. Central CATV: Must Carry Rule
includes commercials (not solely programs)
 ABS-CBN vs. PMIS: There is no
infringement on the right to broadcast
because PMIS has not ability to alter or
change the program, it shows it as is.
10. Ephemeral Recording by broadcast stations
 Ephemeral meaning temporary
11. Judicial proceedings and giving of legal advice
 Quotation in 2nd: Not limited to judicial
proceeding or for legal advice
12. Reproduction of work for visually impaired persons
 E.g. braille system
 Must not be FOR PROFIT
13. Fair Use
Relevant Jurisprudence:
Under Sec. 184.1 (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 compatible with fair use will not
constitute copyright infringement. The carriage of ABS-CBN’s
signals by virtue of the must-carry rule is under the direction and
control of the government through the NTC. The imposition of the
must-carry rule is within the NTC’s power to promulgate rules and
regulations, as public safety and interest may require, to
encourage a larger and more effective use of communications,
radio and television broadcasting facilities, and to maintain
effective competition among private entities in these activities
whenever the Commission finds it reasonably feasible. (ABS-CBN
Broadcasting Corporation vs. Philippine Multi-Media System,
Inc., G.R. Nos. 175769-70, January 19, 2009)
PMSI cannot be said to be infringing upon the exclusive
broadcasting rights of ABS-CBN under the IP Code for PMSI does
not perform the functions of a broadcasting organization, thus, it
cannot be said that it is engaged in rebroadcasting Channels 2 and
23. PMSI is not the origin nor does it claim to be the origin of the
programs broadcasted by the ABS-CBN; the former did not make
and transmit on its own but merely carried the existing signals of
the latter and when PMSI’s subscribers view ABS-CBN’s programs
in Channels 2 and 23, they know that the origin thereof was the
latter. ibid
a. Doctrine of Fair Use
SEC. 185. Fair Use of a Copyrighted Work. – 185.1. the fair use of
a copyrighted work for criticism, comment, news reporting,
teaching including limited number of copies for classroom use,
scholarship, research, and similar purposes is not an
infringement of copyright. Decompilation, which is understood
here to be the reproduction of the code and translation of the
forms of a computer program to achieve the interoperability of
an independently created computer program with other
programs may also constitute fair use under the criteria
established by this section, to the extent that such
decompilation is done for the purpose of obtaining the
information necessary to achieve such interoperability.
Bar Questions:
1. Jose Molina, Jr. inherited the musical works of his talented
father, Jose Molina, Sr., who, before his death, had composed a
number of well-known songs. When he was alive, the senior
Molina never took the precaution of procuring copyright for his
compositions, but his son, Molina Jr, who appears to be more
practical-minded, succeeded in having his father’s intellectual
creations registered under the Copyright Law. One such
composition was a song entitled “Habang Buhay”, which had
been popularly sung and had in fact received international
acclaim long before the senior Molina’s demise.
Vilma Aunor, a popular singer, was requested to sing “Habang
Buhay” in a free cultural presentation at the Luneta Park.
Jose Molina, Jr. sued Vilma Aunor for infringement of copyright.
How would you decide the case?
Answer: I would rule in favor of Wilma Aunor. There is no
infringement of copyright where the performance is “in a free
cultural presentation”. Additionally, the problem speaks of a musical
composition that had been popularly sung and had received
international acclaim long before the creator’s demise, indicating
that the composition must have been during the regime of the then
copyright law where registration of the copyright (within 30 days in
the case of Manila and 60 days elsewhere) from publication was
required; otherwise, the creation under that law would thereby
become public property. (BAR 1987)
2. X copyrighted a scientific research paper consisting of 50
pages dealing with the Tasadays. Y wrote a 100-page review of
X’s paper criticizing X’s findings and dismissing X’s story as a
hoax. Y’s review literally reproduced 90% of X’s paper. Can X
sue Y for infringement of his copyright?
Answer: The Copyright Law provides that to an external compatible
with fair practice and justified by scientific, critical, informatory or
educational purpose, it is permissible to make quotations or
excerpts from a work already made accessible to the public. Such
quotations may be utilized in their original form or in translation.
Viewed from the foregoing, a review by another that “literally
reproduced 90%” of the research work done by X may no longer be
considered as fair play, and X can sue Y for the violation of the
copyright. (BAR 1989)
3. May a person have photocopies of some pages of the book of
Professor Rosario made without violating the copyright law?
Answer: Yes. The private reproduction of a published work in a
single copy, where the reproduction is made by a natural person
exclusively for research and private study, is permitted, without the
authorization of the owner of the copyright in the work. (BAR 1998)
4. In a written legal opinion for a client on the difference
between apprenticeship and learnership, Liza quoted without
permission a labor law expert’s comment appearing in his book
entitled “Annotations on the Labor Code.”
Can the labor law expert hold Liza liable for infringement of
copyright for quoting a portion of his book without his
permission?
Answer: No. the labor law expert cannot hold Liza liable for
infringement of copyright. Under Section 184.1(k) of the Intellectual
Property Code, “Any use made of a work for the purpose of any
judicial proceeding or for giving of professional advice by a legal
practitioner” shall not constitute infringement of a copyright. (BAR
2006)
5. The Fair Use Doctrine allows others to utilize copyrighted
works under certain conditions. The factors to consider
whether use is fair or not would be the purpose and character
of the use, nature of the copyrighted work, amount and
substantially of the portions used, and else?
a) Effect of the use upon the creator of the work; b) Effect upon
the potential market of the work; c) Effect of the use upon the
public in general; d) Effect of the use upon the class in which the
creator belongs.
Answer: b) Effect upon the potential market of the work. (BAR 2012)
39 | I n t e l l e c t u a l P r o p e r t y L a w R e v i e w e r b y T N Q
b. Copyright Infringement
SEC. 216. Infringement. – A person infringes a right protected
under this Act when one:
(a) Directly commits an infringement;
(b) Benefits from the infringing activity of another
person who commits an infringement if the person
benefiting has been given notice of the infringing
activity and has the right and ability to control the
activities of the other person;
(c) With knowledge of infringing activity, induces,
causes or materially contributes to the infringing
conduct of another.
 Infringement in general: Performance of any act that
violates the rights of the author, trademark owner, or
patentee.
 In case of unauthorized use, can the copyright owner
file or sue for infringement even without registration
with the SC Library or National Library?
o Yes, PD 49 – limits the remedies available to
the author if no registration or deposit. Can
file an action for infringement but cannot
recover damages. (Columbia case)
o New law – no limit, can ask for damages
even if there is no registration or deposit.
 E-Commerce Act: Copyright extends to softwares
and downloads
 Use of computer software/program – Before, it can
be used without consent because possession or use
is not part of economic rights, so there will be no
liability for infringement, but under the amendment,
mere possession is an infringement.
 Downloading, uploading and software piracy are acts
of infringement.
 Importation of a book or dvd – before amendment: 3
copies for personal use, amendment: provision was
deleted. You can now import as many copies because
the 3 copy rule has been removed.
 Jailbreaking is not an infringement.
Infringement in two ways: (1) Direct Infringement
and (2) 3rd Party Liability
Direct Infringement: one who commits the infringement
3rd Party Liability:
1. Benefit
1. Benefits from an act of infringement
2. He must have had notice of the infringement
3. Ability to control the infringing activity
 E.g. mall owners – selling in one of
their stalls pirated copies of dvds,
payment of rentals is a benefit
 Bloggers in their websites
 Book-a-like – parties liable:
o Student: depends on how
many pages (if whole book,
liable for infringement),
 person photocopying or
o 216.2. In an infringement action, the court shall also have the
owner of the
establishment: direct
infringer,
o lessor: if 3rd party liability
requisites are present
 If you received a share of the
proceeds, you could be liable for
infringement if you benefited from
it. The 3 requisites must concur.
2. By inducement
Remedies
Section 216. Remedies for Infringement. - 216.1. Any person
infringing a right protected under this law shall be liable:
(a) To an injunction restraining such infringement.
The court may also order the defendant to desist
froman infringement, among others, to prevent the
entry into the channels of commerce of imported goods
that involve an infringement, immediately after
customs clearance of such goods.
(b) To pay to the copyright proprietor or his assigns or
heirs such actual damages, including legal costs and
other expenses, as he may have incurred due to the
infringement as well as the profits the infringer may
have made due to such infringement, and in proving
profits the plaintiff shall be required to prove sales only
and the defendant shall be required to prove every
element of cost which he claims, or, in lieu of actual
damages and profits, such damages which to the court
shall appear to be just and shall not be regarded as
penalty: Provided, That the amount of damages to be
awarded shall be doubled against any person who:
(i) Circumvents effective technological measures;
or
(ii) Having reasonable grounds to know that it will
induce, enable, facilitate or conceal the
infringement, remove or alter any electronic rights
management information from a copy of a work,
sound recording, or fixation of a performance, or
distribute, import for distribution, broadcast, or
communicate to the public works or copies of
works without authority, knowing that electronic
rights management information has been removed
or altered without authority.
(c) Deliver under oath, for impounding during the
pendency of the action, upon such terms and
conditionsas the court may prescribe, sales invoices
and other documents evidencing sales, all articles and
their packaging alleged to infringe a copyright and
implements for making them.
(d) Deliver under oath for destruction without any
compensation all infringing copies or devices, as well
asall plates, molds, or other means for making such
infringing copies as the court may order.
(e) Such other terms and conditions, including the
payment of moral and exemplary damages, which the
court may deem proper, wise and equitable and the
destruction of infringing copies of the work even in the
event of acquittal in a criminal case.
The copyright owner may elect, at any time before final
judgment is rendered, to recover instead of actual damages
and profits, an award of statutory damages for all
infringements involved in an action in a sum equivalent to the
filing fee of the infringement action but not less than Fifty
thousand pesos (Php50,000.00).
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power to order the seizure and impounding of any article
which may serve as evidence in the court proceedings, in
accordance with the rules on search and seizure involving
violations of intellectual property rights issued by the
Supreme Court. (Sec. 28, P.D. No. 49a) The foregoing shall not
preclude an independent suit for relief by the injured party
by way of damages, injunction, accounts or otherwise.
Section 217. Criminal Penalties. - 217.1. Any person infringing
any right secured by provisions of Part IV of this Act or aiding or
abetting such infringement shall be guilty of a crime punishable
by:
(a) Imprisonment of one (1) year to three (3) years plus
a fine ranging from Fifty thousand pesos (P50,000)
to One hundred fifty thousand pesos (P150,000) for
the first offense.
(b) Imprisonment of three (3) years and one (1) day to
six (6) years plus a fine ranging from One hundred
fifty thousand pesos (P150,000) to Five hundred
thousand pesos (P500,000) for the second offense.
(c) Imprisonment of six (6) years and one (1) day to
nine (9) years plus a fine ranging from five hundred
thousand pesos (P500,000) to One million five
hundred thousand pesos (P1,500,000) for the third
and subsequent offenses.
(d) In all cases, subsidiary imprisonment in cases of
insolvency.
In a nutshell: Remedies in Infringement of Copyright
1. Civil (Action for Damages)
 Actual: Actual damages suffered, legal costs,
expenses, profits which infringer earned
(theoretically, entire profits, only establish
sales)
 Moral
 Exemplary
 Statutory Damages
2. Criminal case – take note of the consequences for
each offense
Defenses in Copyright Infringement
1. Out of print, out of stock, rare (library)
2. For security – having a back up copy e.g. computer
3. Fair use – scholarship, research, private study
Acceptable conditions for classroom copying:
o single copy for teaching/research, not the entire
book
o multiple copies: brief and only for one course, cannot
reproduce the same copy from term to term by the
same faculty
Relevant Jurisprudence:
For the playing and singing the musical compositions involved, the
combo was paid as independent contractors; it is therefore
obvious that the expenses entailed thereby are either eventually
charged in the price of the food and drinks or to the overall total
of additional income produced by the bigger volume of business
which the entertainment was programmed to attract.
Consequently, it is beyond question that the playing and singing of
the combo in defendant-appellee's restaurant constituted
performance for profit contemplated by the Copyright Law.
(Filipino Society of Composers, Authors and Publishers, Inc.
vs. Benjamin Tan, G.R. No. L-36402, March 16, 1987)

Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which
is a synonymous term in this connection, consists in the doing by
any person, without the consent of the owner of the copyright, of
anything the sole right to do which is conferred by statute on the
owner of the copyright. Failure to comply with registration and
deposit does not deprive the copyright owner of the right to sue
for infringement but merely limits the remedies available to him
because the copyright for a work is granted from the moment of
creation. (Columbia Pictures, Inc., et. al. vs. Court of Appeals,
G.R. No. 110318, August 28, 1996)
To constitute infringement, it is not necessary that the whole or
even a large portion of the work shall have been copied; if so much
is taken that the value of the original is sensibly diminished, or the
labors of the original author are substantially and to an injurious
extent appropriated by another, that is sufficient in point of law to
constitute piracy. The injury is sustained when respondent lifted
from petitioners’ book materials that were the result of the latter’s
research work and compilation and misrepresented them as her
own, even circulating the book DEP for commercial use without
acknowledging petitioners as her source. (Pacita Habana, et. al.
vs. Felicidad Robles and Goodwill Trading Co., Inc., G.R. No.
131522, July 19, 1999)
The gravamen of copyright infringement is not merely the
unauthorized “manufacturing” of intellectual works but rather the
unauthorized performance of any of the rights exclusively granted
to the copyright owner. Hence, any person who performs any of
such acts without obtaining the copyright owner’s prior consent
renders himself civilly and criminally liable for copyright
infringement. (NBI-Microsoft Corporation vs. Judy Hwang, et.
al., G.R. No. 147043, June 21, 2005)
Bar Questions:
1. X wrote and published a story exactly similar to an
unpublished copyrighted story of A. A sues X for infringement
of Copyright. It was, however, conclusively proven that X was
not aware that the story of A was protected by copyright. Is X
liable? Answer with reasons.
Answer: X is liable for infringement of copyright. As defined,
infringement of a copyright consists in the doing by any person,
without the consent of owner of the copyright, of anything the sole
right to which is conferred by the statute on the owner of the
copyright.
Evidently, the animus furandi, or intention to pirate, is not an
essential element of infringement; and ignorance of the copyright, or
honest intention, affords no defense to an action for infringement.
The author’s property is absolute when perfected by copyright, and
the intent of purpose of an invasion is nowhere made an excuse for
it. (BAR 1977)
2. “Q”, a well-known artist, designs for “P” a personalized
Christmas card with an artistic motif depicting a Philippine
rural Christmas scene with a woman and a child, a nipa hut
adorned with star-shaped lanterns and a man astride a carabao
beside a tree. Underneath the design appears the name “Q”. “R”
orders from “Q” 500 of such Christmas cards and distributes
them to his friends.
A year later, “X” copies and prints the same design for his album
of Christmas cards intended for sale to the general public.
Several customers order Christmas cards from “X” with the
same design as that printed for “R”.
“Q” files a suit against “X” claiming damages under the
Copyright Law despite his failure to copyright the work
mentioned above. He further claims that the printing or
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publication of the design he prepared for “R” was special and
limited.
Decide the case.
Answer: No, Q’s suit against X claiming for damages under the
former Copyright Law cannot prosper due to his failure to copyright
his work. Failure to copyright a work renders the intellectual
creation public property and the author loses the exclusive right to
control subsequent publication by others. (Santos v. McCullough
Printing Co., Oct. 31, 1964; 12 SCRA 322) (Note: Artistic and Literary
works are now protected by its mere creation under the new
Copyright Law) (BAR 1980)
3. Miss Solis wrote a script for Regal Films for the movie “One
Day—Isang Araw”. Ms. Badiday, while watching the movie in
Ermita Theatre, discovered that the story of the movie is exactly
similar to an unpublished copyrighted autobiography which
she wrote. Ms. Badiday sued Miss Solis for infringement of
copyright. It was however, conclusively proven that Miss Solis
was not aware that the autobiography of Ms. Badiday was
protected by a copyright.
Is Miss Solis liable? State briefly your reasons.
Answer: Yes, Miss Solis may be held liable. Animus furandi or
intention to pirate is not an element of infringement; hence, an
honest intention is no defense to an action for infringement. (BAR
1988)
Page | 351
4. The Victoria Hotel chain reproduces videotapes, distributes
the copies thereof to its hotels and makes them available to
hotel guests for viewing in the hotel guest rooms. It charges a
separate normal fee for the use of the videotape player.
1. Can the Victoria Hotel be enjoined for infringing copyrights
and held liable for damages?
2. Would it make any difference if Victoria Hotel does not
charge any fee for the use of the videotape?
Answer: 1. Yes. Victoria Hotel has no right to use such video tapes in
its hotel business without the consent of the creator/owner of the
copyright.
2. No. The use if the videotapes are for business and not merely for
home consumption. (BAR 1994)
5. In an action for damages on account of an infringement of a
copyright, the defendant (the alleged pirate) raised the defense
that he was unaware that what he had copied was a copyright
material. Would this defense be valid?
Answer: No. An intention to pirate is not an element of infringement.
Hence, an honest intention is no defense to an action for
infringement. (BAR 1997)
6. Juan Xavier wrote and published a story similar to an
unpublished copyrighted story of Manoling Santiago. It was,
however, conclusively proven that Juan Xavier was not aware
that the story of Manoling Santiago was protected by copyright.
Manoling Santiago sued Juan Xavier for infringement of
copyright. Is Juan Xavier liable?
Answer: Yes. Juan is liable for infringement of copyright. It is not
necessary that Juan is aware that the story of Manoling was
protected by copyright. The work of Manoling is protected from the
time of its creation. (BAR 1998)
7. Diana and Piolo are famous personalities in showbusiness
who kept their love affair secret. They use a special instant
messaging service which allows them to see one another’s
typing on their own screen as each letter key is pressed. When
Greg, the controller of the service facility, found out their doctrine permitted importation and resale without the publisher’s
identities, he kept a copy of all the messages Diana and Piolo further permission. (BAR 2014)
sent each other and published them. Is Greg liable for copyright
infringement? Reason briefly.
Answer: Yes, Greg is liable for copyright infringement. Letters are
among the works which are protected from the moment of their
creation. The publication of the letters without the consent of their
writers constitutes infringement of copyright. (BAR 2007)

8. After disposing of his last opponent in only two rounds in Las

Vegas, the renowned boxer Sonny Bachao arrived at the NAIA
met by thousands of hero-worshipping fans and hundreds of
media photographers. The following day, a colored photograph
of Sonny wearing a black polo short embroidered with the 2-
inch Lacoste crocodile logo appeared on the front page of every
Philippine newspaper.
Lacoste International, the French firm that manufactures
Lacoste apparel and owns the Lacoste trademark, decided to
cash in on the universal popularity of the boxing icon. It
reprinted the photographs, with the permission of the
newspaper publishers, and went on a world-wide blitz of print
commercials in which Sonny is shown wearing a Lacoste shirt
alongside the phrase “Sonny Bachao just loves Lacoste”.
When Sonny sees the Lacoste advertisements, he hires you as a
lawyer and asks you to sue Lacoste International before a
Philippine court:
j) For copyright infringement because of the unauthorized use
of the published photographs.
Answer: Sonny Bachao cannot sue for infringement of copyright for
the unauthorized use of the photographs showing him wearing a
Lacoste shirt. The copyright to the photographs belong to the
newspaper which published them inasmuch as the photographs
were the result of the performance of the regular duties of the
photographers. Moreover, the newspaper publishers authorized the
reproduction of the photographs. (BAR 2009)

9. X’s painting of Madonna and Child was used by her mother to

print some personalized gift wrapper. As part of her mother’s
efforts to raise funds for Bantay Bata, the mother of X sold the
wrapper to friends. Y, an entrepreneur, liked the painting in the
wrapper and made many copies and sold the same through
National Bookstore. Which statement is most accurate?
a) Y can use the painting for his use because this is not a
copyrightable material; b) X can sue Y for infringement because
artistic works are protected from the moment of creation; c)
Works of art need to be copyrighted also to get protection
under the law; d) Y can use the drawing even though not
copyrighted because it is already a public property having been
published already.
Answer: b) X can sue Y for infringement because artistic works are
protected from the moment of creation. (BAR 2012)

10. KK is from Bangkok, Thailand. She studies medicine in the

Pontifical University of Santo Tomas (UST). She learned that the
same foreign books prescribed in UST are 40-50% cheaper in
Bangkok. So she ordered 50 copies of each book for herself and
her classmates and sold the books at 20% less than the price in
the Philippines. XX, the exclusive licensed publisher of the
books in the Philippines, sued KK for copyright infringement.
Decide.
Answer: KK did not commit copyright infringement. Under the “first
sale” doctrine, the owner of a particular copy or phonorecord
lawfully made is entitled, without the authority of the copyright
owner, to sell or otherwise dispose of the possession of that copy or
phonorecord. Hence, there is no infringement by KK since the said

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