Intellectual Property Law

The 1987 Constitution

Article XII, Sec. VI
The use of property bears a social function, and all economic agents shall contribute to the common good.
Individuals and private groups, including corporations, cooperatives, and similar collective organizations,
shall have the right to own, establish, and operate economic enterprises, subject to the duty of the State to
promote distributive justice and to intervene when the common good so demands.
Article XII, Sec. XIV
The sustained development of a reservoir of national talents consisting of Filipino scientists,
entrepreneurs, professionals, managers, high-level technical manpower and skilled workers and craftsmen
in all fields shall be promoted by the State. The State shall encourage appropriate technology and regulate
its transfer for the national benefit. The practice of all professions in the Philippines shall be limited to
Filipino citizens, save in cases prescribed by law.
Article XIV, Sec. X-XVIII
SCIENCE AND TECHNOLOGY
Section 10. Science and technology are essential for national development and progress. The State shall
give priority to research and development, invention, innovation, and their utilization; and to science and
technology education, training, and services. It shall support indigenous, appropriate, and self-reliant
scientific and technological capabilities, and their application to the country's productive systems and
national life.
Section 11. The Congress may provide for incentives, including tax deductions, to encourage private
participation in programs of basic and applied scientific research. Scholarships, grants-in-aid, or other
forms of incentives shall be provided to deserving science students, researchers, scientists, inventors,
technologists, and specially gifted citizens.
Section 12. The State shall regulate the transfer and promote the adaptation of technology from all
sources for the national benefit. It shall encourage the widest participation of private groups, local
governments, and community-based organizations in the generation and utilization of science and
technology.
Section 13. The State shall protect and secure the exclusive rights of scientists, inventors, artists, and
other gifted citizens to their intellectual property and creations, particularly when beneficial to the people,
for such period as may be provided by law.
ARTS AND CULTURE
Section 14. The State shall foster the preservation, enrichment, and dynamic evolution of a Filipino
national culture based on the principle of unity in diversity in a climate of free artistic and intellectual
expression.
Section 15. Arts and letters shall enjoy the patronage of the State. The State shall conserve, promote, and
popularize the nation's historical and cultural heritage and resources, as well as artistic creations.
Section 16. All the country's artistic and historic wealth constitutes the cultural treasure of the nation and
shall be under the protection of the State which may regulate its disposition.
Section 17. The State shall recognize, respect, and protect the rights of indigenous cultural communities
to preserve and develop their cultures, traditions, and institutions. It shall consider these rights in the
formulation of national plans and policies.
Section 18.
The State shall ensure equal access to cultural opportunities through the educational system, public or
private cultural entities, scholarships, grants and other incentives, and community cultural centers, and
other public venues.
The State shall encourage and support researches and studies on the arts and culture.
CASES
Tanada vs Angara
FACTS
The Philippines joined World Trade Organization as a founding member with the goal of improving
Philippine access to foreign markets, especially its major trading partners, through the reduction of tariffs
on its exports. The President also saw in the WTO the opening of new opportunities for the services
sector, the reduction of costs and uncertainty associated with exporting and the attraction of more
investments into the country. On April 15, 1994, respondent Navarro, then DTI Secretary, signed in
Marrakesh, Morocco, the Final Act Embodying the Results of the Uruguay Round of Multilateral
Negotiations. On December 14, 1994, the Senate concurred in the ratification of the President of the
Philippines of the Agreement Establishing the WTO which includes various agreements and associated
legal instruments. On December 16, 1994,the President signed the Instrument of Ratification.
ISSUES
1. Whether the WTO Agreement violated the mandated economic nationalism by the Constitution?
2. Whether the provisions of the WTO Agreement restricts and impairs Philippine sovereignty,
specifically the legislative power vested in the Congress?
3. Whether the Senate concurrence in the WTO Agreement and its annexes but not in the other documents
referred to in the Final Act is defective and insufficient and thus constitutes abuse of discretion?
RULING
1. No. The Constitution did not intend to pursue an isolationist policy. It did not shut out foreign
investments, goods and services in the development of the Philippine economy. In fact, it allows an
exchange on the basis of equality and reciprocity, frowning only on foreign competition that is unfair.
The constitutional policy of a self-reliant and independent national economy does not necessarily rule out
the entry of foreign investments, goods and services. It contemplates neither economic seclusion nor
mendicancy in the international community.
2. No. While sovereignty has traditionally been deemed absolute and all-encompassing on the domestic
level, it is however subject to restrictions and limitations voluntarily agreed to by the Philippines,
expressly or impliedly, as a member of the family of nations. Unquestionably, the Constitution did not
envision a hermit-type isolation of the country from the rest of the world. By the doctrine of
incorporation, the country is bound by generally accepted principles of international law, which are
considered to be automatically part of our laws. A treaty engagement is not a mere moral obligation on
the parties. By their inherent nature, treaties really limit or restrict the absoluteness of sovereignty. The
Philippines has effectively agreed to limit the exercise of its sovereign powers of taxation, eminent
domain and police power. The underlying consideration in this partial sovereignty is the reciprocal
commitment of the other contracting states in granting the same privilege and immunities to the
Philippines, its officials and its citizens. The same reciprocity characterizes the same commitments under
WTO-GATT. The point is that a portion of sovereignty may be waived without violating the Constitution,
based on the rationale that the Philippines adopts the generally accepted principles of international law as
part of the law of the land and adheres to the policy of cooperation and amity with all nations.
3. No. The petitioners submit that concurrence in the WTO Agreement alone is flawed because it is in
effect a rejection of the Final Act. The Court held that a final act is an instrument which records the
winding up of the proceedings of a diplomatic conference and not the treaty itself. On the other hand, the
WTO Agreement itself expresses what multilateral agreements are deemed included as its integral parts.
It should be added that the Senate was well-aware of what it was concurring in as shown by the member’s
deliberation.
INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. PAQUITO OCHOA,
GR No. 204605, 2016-07-19
Facts: the Intellectual Property Office of the Philippines (IPOPHL)
It ultimately arrived at the conclusion that accession would benefit the country and help raise the level of
competitiveness for Filipino brands. Hence, it recommended in September 2011 to the Department of
Foreign Affairs (DFA) that the Philippines should accede to the Madrid Protocol.
After its own review, the DFA endorsed to the President the country's accession to the Madrid Protocol.
the DFA determined that the Madrid Protocol was an executive agreement. The IPOPHL, the Department
of Science and Technology, and the Department of Trade and Industry concurred in the recommendation
of the DFA.
President Benigno C. Aquino III ratified the Madrid Protocol through an instrument of accession. The
instrument of accession was deposited with the Director General of the World Intellectual Property
Organization (WIPO) on April 25, 2012,[8] The Madrid Protocol entered into force in the Philippines on
July 25, 2012
IPAP, an association of more than 100 law firms and individual practitioners in Intellectual Property
Law... has commenced this special civil action for certiorari and prohibition... to challenge the validity of
the President's accession to the Madrid Protocol without the concurrence of the Senate
According to the IPAP, the Madrid Protocol is a treaty, not an executive agreement ; hence, respondent
DFA Secretary Albert Del Rosario acted with grave abuse of discretion in determining the Madrid
Protocol as an executive agreement.
The IPAP has argued that the implementation of the Madrid Protocol in the Philippines, specifically the
processing of foreign trademark applications, conflicts with the IP Code,[14] whose Section 125 states
The IPAP has insisted that Article 2 of the Madrid Protocol means that foreign trademark applicants may
file their applications through the International Bureau or the WIPO, and their applications will be
automatically granted trademark protection without the need for designating their resident agents in the
country.
The IPAP has prayed that the implementation of the Madrid Protocol in the Philippines be restrained in
order to prevent future wrongs considering that the IPAP and its constituency have a clear and
unmistakable right not to be deprived of the rights granted them by the IP Code and existing local laws.
Issues:
Whether or not the President's ratification of the Madrid Protocol is valid and constitutional;
Whether or not the Madrid Protocol is in conflict with the IP Code.
Ruling:
Accession to the Madrid Protocol was constitutional
International agreements involving political issues or changes of national policy and those involving
international arrangements of a permanent character usually take the form of treaties. But international
agreements embodying adjustments of detail carrying out well-established national policies and traditions
and those involving arrangements of a more or less temporary nature usually take the form of executive
agreements.
In view of the expression of state policy having been made by the Congress itself, the IPAP is plainly
mistaken in asserting that "there was no Congressional act that authorized the accession of the Philippines
to the Madrid Protocol."
Accordingly, DFA Secretary Del Rosario's determination and treatment of the Madrid Protocol as an
executive agreement, being in apparent contemplation of the express state policies on intellectual property
as well as within his power under Executive Order No. 459, are upheld.
There is no conflict between the Madrid Protocol and the IP Code
The IPAP also rests its challenge on the supposed conflict between the Madrid Protocol and the IP Code,
contending that the Madrid Protocol does away with the requirement of a resident agent under Section
125 of the IP Code; and that the Madrid Protocol is unconstitutional for being in conflict with the local
law, which it cannot modify,The IPAP's contentions stand on a faulty premise. The method of registration
through the IPOPHL, as laid down by the IP Code, is distinct and separate from the method of registration
through the WIPO, as set in the Madrid Protocol. Comparing the two methods of registration despite their
being governed by two separate systems of registration is thus misplaced.In arguing that the Madrid
Protocol conflicts with Section 125 of the IP Code, the IPAP highlights the importance of the requirement
for the designation of a resident agent, It underscores that the requirement is intended to ensure that non-
resident entities seeking protection or privileges under Philippine Intellectual Property Laws will be
subjected to the country's jurisdiction. It submits that without such resident agent, there will be a need to
resort to costly, time consuming and cumbersome extraterritorial service of writs and processes.[37]The
IPAP misapprehends the procedure for examination under the Madrid Protocol. The difficulty, which the
IPAP illustrates, is minimal, if not altogether inexistent. The IPOPHL actually requires the designation of
the resident agent when it refuses the registration of a mark. Local representation is further required in the
submission of the Declaration of Actual Use, as well as in the submission of the license contract.[38] The
Madrid Protocol accords with the intent and spirit of the IP Code, particularly on the subject of the
registration of trademarks. The Madrid Protocol does not amend or modify the IP Code on the acquisition
of trademark rights considering that the applications under the Madrid Protocol are still examined
according to the relevant national law. In that regard, the IPOPHL will only grant protection to a mark
that meets the local registration requirements.
Principles:
The Madrid System for the International Registration of Marks {Madrid System), which is the centralized
system providing a one-stop solution for registering and managing marks worldwide, allows the
trademark owner to file one application in one language, and to pay one set of fees to protect his mark in
the territories of up to 97 member-states.[2] The Madrid System is governed by the Madrid Agreement,
concluded in 1891, and the Madrid Protocol, concluded in 1989.
The Madrid Protocol, which was adopted in order to remove the challenges deterring some countries from
acceding to the Madrid Agreement, has two objectives, namely: (1) to facilitate securing protection for
marks; and (2) to make the management of the registered marks easier in different countries.
The Philippine Civil code.
BOOK III
DIFFERENT MODES OF ACQUIRING OWNERSHIP
Preliminary Provision
Article 712. Ownership is acquired by occupation and by intellectual creation.
Ownership and other real rights over property are acquired and transmitted by law, by donation, by testate
and intestate succession, and in consequence of certain contracts, by tradition.
They may also be acquired by means of prescription.
TITLE II
Intellectual Creation
Article 721. By intellectual creation, the following persons acquire ownership:
(1) The author with regard to his literary, dramatic, historical, legal, philosophical, scientific or other
work;
(2) The composer; as to his musical composition;
(3) The painter, sculptor, or other artist, with respect to the product of his art;
(4) The scientist or technologist or any other person with regard to his discovery or invention. (n)
Article 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article, shall have
the ownership of their creations even before the publication of the same. Once their works are published,
their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art even before it is
copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it is patented. (n)
Article 723. Letters and other private communications in writing are owned by the person to whom they
are addressed and delivered, but they cannot be published or disseminated without the consent of the
writer or his heirs. However, the court may authorize their publication or dissemination if the public good
or the interest of justice so requires. (n)
Article 724. Special laws govern copyright and patent.
CHAPTER 3
Trade-marks and Trade-names
Article 520. A trade-mark or trade-name duly registered in the proper government bureau or office is
owned by and pertains to the person, corporation, or firm registering the same, subject to the provisions of
special laws. (n)
Article 521. The goodwill of a business is property, and may be transferred together with the right to use
the name under which the business is conducted. (n)
Article 522. Trade-marks and trade-names are governed by special laws. (n)
CASES
ELIDAD C. KHO v. CA, GR No. 115758, 2002-03-19
Facts: On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages
with a prayer for the issuance of a writ of preliminary injunction,... against the respondents Summerville
General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay.
complaint alleges that petitioner, doing business under the name and style of KEC Cosmetics Laboratory,
is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case,... ; that
she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of
the Philippine Patent Office
; that respondent Summerville advertised and sold petitioner's cream products under the brand name Chin
Chun Su, in similar containers that petitioner uses, thereby misleading the public, and resulting in the
decline... in the petitioner's business sales and income; and, that the respondents should be enjoined from
allegedly infringing on the copyrights and patents of the petitioner.
respondents... alleged... that Summerville is the exclusive and authorized importer, re-packer and
distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said
Taiwanese manufacturing company authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office
and other appropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained
the copyrights through misrepresentation and falsification; and,... that the authority of Quintin Cheng,
assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the
Philippines had already been terminated by the said Taiwanese Manufacturing Company.
After... hearing on the application for preliminary injunction, the trial court granted the same...
respondents moved for reconsideration but their motion for reconsideration was denied... appellate court
rendered a Decision... in favor of the respondents... writ of preliminary injunction and denying petitioners'
motion for reconsideration are hereby set aside and declared null and... void.
appellate court ruled that:
The registration of the trademark or brandname "Chin Chun Su" by KEC with the supplemental register
of the Bureau of Patents, Trademarks and Technology Transfer cannot be equated with registration in the
principal register, which is duly protected by the Trademark
Law.
In the meantime, the trial court went on to hear petitioner's complaint for final injunction and damages.
rendered a Decision... barring the petitioner from using the trademark Chin Chun Su and upholding the
right... of the respondents to use the same, but recognizing the copyright of the petitioner over the oval
shaped container of her beauty cream.
We rule in favor of the respondents.
Issues: whether the copyright and patent over the name and container of a beauty cream product would
entitle the registrant to the use and ownership over the same to the exclusion of others.
Ruling: We rule in favor of the respondents.
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or... marked container of goods.
In relation thereto, a trade name means the name or designation identifying or distinguishing an
enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are... original
intellectual creations in the literary and artistic domain protected from the moment of their creation.
Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of
human activity which is new, involves... an inventive step and is industrially applicable.
Petitioner has no right to support her claim for the exclusive use of the subject trade name and its
container. 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. Consequently, a preliminary injunction order cannot be issued
for the reason that the petitioner has not proven that she has a clear right over the said name and...
container to the exclusion of others, not having proven that she has registered a trademark thereto or
used the same before anyone did.