REPUBLIC ACT No.
165             June 20, 1947 Section 6. Publication of certain matters in the
AN ACT CREATING A PATENT OFFICE,
PRESCRIBING ITS POWERS AND DUTIES,
REGULATING THE ISSUANCE OF PATENTS, AND
APPROPRIATING FUNDS THEREFOR
CHAPTER I - Organization and Operation
Section 1. Patent Office. - There is hereby created a
"Patent Office" under the executive supervision of the
Department of Justice, where all records, books,
drawings, specifications, and other papers and things
pertaining to patents shall be safely kept and preserved.
Section 2. Officers and employees of the Patent
Office. - The Patent Office shall be under the direction of
a Director who shall have an assistant to be known as
Assistant Director. The Director and Assistant Director
shall be appointed by the President with the consent of
the Commission on Appointments of the Congress of the
Philippines, and shall hold office during good behavior.
The Director shall receive a salary of seven thousand
two hundred pesos a year, and the Assistant Director a
salary of six thousand pesos a year.
To carry into effect the provisions of this Act, there shall
also be in said office such other officers and employees
as may be appointed by the Secretary of Justice upon
recommendation of the Director.
The term "Office" used in this Act means that Patent
Office.
The term "Director" used in this Act refers to the Director
of Patents or the Assistant Director of Patents when
acting as or performing the duties of the Director.
Section 3. Special technical and scientific
assistance. - The Director is empowered to obtain the
assistance of technical, scientific or other qualified
officers or employees of other departments, bureaus,
offices, agencies and instrumentalities of the
Government, including corporations owned, controlled or
operated by the Government, when deemed necessary
in the consideration of any matter submitted to the Office
relative to the enforcement of the provisions of this Act.
Section 4. Seal of Office. - The Office shall have a seal
with which patents and other papers issued by it shall be
authenticated. The form and design of the seal shall be
approved by the President of the Philippines.
Section 5. Publication of laws and rules. - The
Director shall print, or cause to be printed, and make
available for distribution, pamphlet copies of the laws
and of the rules and regulations of the Office, and may
print circulars of information relating to matters within the
jurisdiction of the Office.
Official Gazette. - There shall be published in the
Official Gazette a suitable view of the drawing, if there be
a drawing, and the claims of each patent issued; the
rules and regulations duly promulgated and the
amendments thereto; an annual index of the names of
investors and patentees and the title of the inventions
covered by the patents issued during each fiscal year; all
notices and decisions required under this Act to be
published; and such other information relating to patents
and other matters within the jurisdiction of the Office, as
may, in the discretion of the Director, be useful to the
public.
CHAPTER II - Inventions Patentable
Section 7. Inventions patentable. - Any invention of a
new and useful machine, manufactured product or
substance, process, or an improvement of any of the
foregoing, shall be patentable.
Section 8. Inventions not patentable. - An invention
shall not be patentable if it is contrary to public order or
morals, or to public health or welfare, or if it constitutes a
mere idea, scientific principle or abstract theorem not
embodied in an invention as specified in section seven
hereof, or any process not directed to the making or
improving of a commercial product.
Section 9. Invention not considered new or
patentable. - An invention shall not be considered new
or capable of being patented if it was known or used by
others in the Philippines before the invention thereof by
the inventor named in an application for patent for the
invention; or if it was patented or described in any
printed publication in the Philippines or any foreign
country more than one year before the application for a
patent therefor; or if it had been in public use or on sale
in the Philippines for more than one year before the
application for a patent therefor; or if it is the subject
matter of a validly issued patent in the Philippines
granted on an application filed before the filing of the
application for patent therefor.
CHAPTER III - Application for Patent
Section 10. Right to patent. - The right to the patent
belongs to the true and actual inventor, his heirs, legal
representatives or assigns. If two or more persons have
an invention jointly, the right to the patent belongs to
them jointly. If two or more persons have made the
invention separately and independently of each other,
the right to the patent shall belong to the person who is
the first to file an application for such invention, unless
the contrary is shown.
Section 11. Applications by non-residents. - Any
person filing an application for patent who is not a
resident of the Philippines must appoint an agent or
representative in the Philippines upon whom notice or
process relating to the application for patent may be
served. In the event of death, absence or inability of the
agent or representative, a new agent or representative
must be appointed and notice thereof must be filed in the
Office. Upon failure to maintain an agent or
representative of record in this Office, service on the
Director shall be deemed sufficient.
Section 12. Who may apply for patent. - An
application for patent may be filed only by the inventor,
his heirs, legal representatives or assigns.
Section 13. The application. - The application for
patent shall be in English or Spanish, or in the national
language with its corresponding English translation, and
signed by the applicant, and shall include a statement
giving the name, address, and citizenship or nationality
of the applicant and of the inventor, if the applicant is not
the inventor, and:
(a) A specification;
(b) Drawings, where the invention can be shown
by drawings;
(c) Power of attorney if the filing is through an
attorney;
(d) The assignment or a certified copy of the
assignment of the invention for recording, where
the application is filed by one who derives his
title from the inventor, or proof of title if the
derivation is not by assignment;
(e) A sworn statement by the inventor of his
inventorship; or such sworn statement may be
made by his heirs or legal representatives in
case of death or incapacity of the inventor;
however, such sworn statement will not be
required if a certified copy of a previously filed
foreign application containing the same is filed;
(f) The appointment of a resident agent or
representative in cases coming under section
eleven hereof; and
(g) The required fee.
Section 14. The specification. - The specification shall
include:
(a) The title of the invention;
(b) A brief statement of its nature and purpose;
(c) A brief explanation of the drawings, where
there are drawings;
(d) A complete and detailed description of the
invention in such full, clear, concise and exact
terms as to enable any person skilled in the art
or science to which the invention relates to make
and practice the invention; and
(e) A distinct and explicit claim or claims of the
subject matter which the applicant claims as new
and seeks to have patented.
Section 15. Applications previously filed abroad. - An
application for patent for an invention filed in this country
by any person who has previously regularly filed an
application for a patent for the same invention in a
foreign country which, by treaty, convention, or law,
affords similar privileges to citizens of the Philippines
shall have the same force and effect as the same
applicant would have if filed in this country on the date
on which the application for patent for the same
invention was first filed in such foreign country: Provided,
That the application in this country is filed within twelve
months from the earliest date on which any such foreign
application was filed, and a certified copy of the foreign
application together with a translation thereof into
English, if not in the English language, is filed within six
months from the date of filing in the Philippines, unless
the Director for good cause shown shall extend the time
for filing such certified copy.
CHAPTER IV - Issuance of Patent
Section 16. Formal examination of the application. -
When an application for patent has been filed the
Director shall determine whether it complies with the
formal requirements. If the application is defective in this
respect the applicant shall be notified on the specific
defects and a time fixed, not less than four months,
within which such defects may be remedied.
If the applicant fails to request reconsideration or to
remedy the defects within the time fixed by the Director,
or within such additional time, not exceeding four
months, as may be granted, the application shall be
denied.
Section 17. Multiple inventions in one application. - If
several independent inventions which are not so closely
related as to be proper in one application are claimed,
the Director may require the application to be restricted
to a single invention in the same manner as notifications
of defects in the application. A later application filed for
an invention divided out shall be considered as having
been filed on the same day as the first application
provided the later application is filed within four months
after the requirement to divide becomes final, or within
such additional time, not exceeding four months, as may
be granted.
Section 18. Issuance of patent. - If the original or
corrected application is in order, the Director shall issue
the patent and shall, as soon as practicable, make the
publication required by section six, Chapter I hereof.
Section 19. How issued. - The patent shall be issued in
the name of the Republic of the Philippines under the
seal of the Office and shall be signed by the Director,
and registered together with the specification and
drawings, if any, in books and records of the Office to be
kept for the purpose.
Section 20. Content of patent. - The patent shall
contain the patent number, the title of the invention, the
name and residence of the inventor and of the patentee
if the patentee be other than the inventor, the date on
which the application was filed, the date on which it is
issued, and a grant to the patentee, his heirs or assigns,
of the exclusive right to the invention throughout the
Republic of the Philippines for the term thereof. A copy
of the specification and drawings shall be annexed to the
patent and be a part thereof.
CHAPTER V - Term of Patent
Section 21. Term of patent. - The term of a patent shall
begin on the date when the patent is issued as shown on
the face thereof and shall expire seventeen years
thereafter. However, a patent shall cease to be in force
and effect of the patentee fails to pay the prescribed
annual fees within the prescribed times hereinafter
provided or if the patent is cancelled in accordance with
the provisions of this Act.
Section 22. Annual fees. - The first annual fee on a
patent shall be due and payable on the expiration of four
years from the date of issue. In a similar manner, annual
fees on subsisting patents shall be due and payable on
the fifth and each subsequent anniversary of the date of
issue. If any annual fee is not paid within the prescribed
time, a notice of the non-payment shall be published in
the Official Gazette and the patentee shall have six
months from the date of the publication to pay the fee
together with the surcharge required for the delayed
payment. A notice of the lapsing of a patent for non-
payment of any annual fee shall be published in the
Official Gazette.
Section 23. Reinstatement of a lapsed patent. - Within
two years from the date on which the first unpaid annual
fee was due, a patent which has lapsed for non-payment
of any annual fee may be reinstated upon payment of all
annual fees then due and the surcharge for
reinstatement, and upon proof satisfactory to the Director
that such non-payment was due to fraud, accident,
mistake or excusable negligence: Provided, however,
That such reinstatement shall not prejudice the rights
acquired by a third person while the patent was not in
force.
CHAPTER VI - Surrender, Correction and
Amendments of Patent
Section 24. Surrender of patent. - Any patentee, with
the consent of all persons having grants or licenses or
other right, title or interest in and to the patent and the
invention covered thereby, which have been recorded in
the Office, may surrender his patent or any claim or
claims forming part thereof to the Director for
cancellation.
Section 25. Correction of mistakes of Office. - The
Director shall have the power to correct without fee any
mistake in a patent incurred through the fault of the
Office when clearly disclosed by the records thereof, to
make the patent conform to the records.
Section 26. Correction of mistake of application. - On
payment of the prescribed fee the Director is authorized
to correct any mistake in a patent of a formal or clerical
nature, not incurred through the fault of the Office.
Section 27. Form and publication of amendment. -
Amendment or correction of a patent as provided in
sections twenty-five and twenty-six hereof, shall be
accomplished by a certificate of such amendment or
correction authenticated by the seal of the Office and
signed by the Director, which certificate shall be attached
to the patent if the patent has been returned to the
Director. Notice of such amendment or correction shall
be published in the Official Gazette, and copies of the
patent furnished by the Office shall include a copy of the
certificate of the amendment or correction.
CHAPTER VII - Cancellation of Patents
Section 28. General grounds for cancellation. - Any
person may on payment of the required fee petition the
Director within three years from the date of publication of
the issue of the patent in the Official Gazette, to cancel
the patent or any claim thereof, on any of the following
grounds:
(a) That the invention is not new or patentable in
accordance with sections seven, eight and nine,
Chapter II hereof;
(b) That the specification does not comply with
the requirement of section fourteen, Chapter III
hereof; or
(c) That the person to whom the patent was
issued was not the true and actual inventor or
did not derive his rights from the true and actual
inventor.
Section 29. When patent may be cancelled at any
time. - A petition to cancel a patent on any of the
grounds specified in the next preceding section may be
filed at any time by the Solicitor General.
Section 30. Requirements of the petition. - The
petition for cancellation must be in writing and verified by
the petitioner or by any person on his behalf who knows
the facts, and shall specify the grounds upon which it is
based, and include a statement of the facts to be relied
upon. Copies of printed publications or of patents of
other countries, or other supporting documents
mentioned in the petition shall be filed therewith,
together with the transaction thereof into English, if not in
the English language.
Section 31. Notice and hearing. - Upon the filing of a
petition for cancellation, the Director shall forthwith serve
notice of the filing thereof upon the patentee and all
persons having grants or licenses, or any other right, title
or interest in and to the patent and the invention covered
thereby, as appears of record in the Office, and of notice
of the date of hearing thereon on such persons and the
petitioner. Notice of the filing of the petition shall be
published in the Official Gazette.
Section 32. Cancellation of the patent. - If the Director
finds that a case for cancellation has been made out he
shall order the patent or any specified claim or claims
thereof cancelled. The order shall not become effective
until the time for appeal has elapsed or, if appeal is
taken, until the judgment on appeal becomes final. When
the order or judgment becomes final, any rights
conferred upon the patentee by the patent or any
specified claim or claims cancelled thereby shall
terminate. Notice of cancellation shall be published in the
Official Gazette.
Section 33. Cancellation for fraud on the inventor. -
In the case of the ground specified in paragraph (c),
section twenty-eight hereof, if the petition for cancellation
is made by or on behalf of the true and actual inventor
from whom the patentee fraudulently derived the
invention and is successful on this ground, a patent may
be obtained by such inventor, if he does not have a
patent, notwithstanding any knowledge or use or
publication of the patent cancelled: Provided, That the
true and actual inventor shall file an application for
patent for such invention within six months after the
order of cancellation has become final. The term of such
patent, however, shall expire seventeen years from the
date of issue of the patent cancelled.
CHAPTER VIII - Compulsory Licensing
Section 34. Grounds for compulsory license. - Any
person may apply to the Director for the grant of a
license under a particular patent at any time after the
expiration of three years from the date of the grant of the
patent, under any of the following circumstances:
(a) If the patented invention is not being worked
within the Philippines on a commercial scale,
although capable of being so worked, without
satisfactory reason;
(b) If the demand for the patented article in the
Philippines is not being met to an adequate
extent and on reasonable terms, without
satisfactory reason;
(c) If by reason of the refusal of the patentee to
grant a license or licenses on reasonable terms,
or by reason of the conditions attached by the
patentee to licenses or to the purchase, lease or
use of the patented article or working of the
patented process or machine of production the
establishment of any new trade or industry in the
Philippines is prevented, or the trade of industry
therein is unduly restrained; or
(d) If the patented invention relates to food or
medicine or is necessary for public health or
public safety.
The term "worked" or "working" as used in this section
means the manufacture and sale of a patented article, or
the carrying on of a patented process or the use of a
patented machine for production, in or by means of a
definite and substantial establishment or organization in
the Philippines and on a scale which is adequate and
reasonable under the circumstances.
Section 35. Notice and hearing. - Upon the filing of a
petition under section thirty-four hereof, notice shall be
given in the same manner and form as that provided in
section thirty-one, Chapter VII hereof.
Section 36. Grant of license. - If the Director finds that
a case for the grant of a license under section thirty-four
hereof has been made out, he may order the grant of an
appropriate license and in default of agreement among
the parties as to the terms and conditions of the license
he shall fix the terms and conditions of the license in the
order.
The order of the Director granting a license under this
Chapter, when final, shall operate as a deed granting a
license executed by the patentee and the other parties in
interest.
CHAPTER IX - Rights of Patentees and Infringement
of Patents
Section 37. Rights of patentees. - 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.
Section 38. Experimental use of invention. - The
making or using of a patented invention when not
conducted for profit and solely for the purpose of
research or experiment, or for instruction, shall not
constitute infringement.
Section 39. Temporary presence in the country. - No
patent shall prevent the use of any invention in any ship,
vessel, aircraft, or land vehicle of any other country
entering the territory of the Philippines temporarily or
accidentally, and such use shall not constitute
infringement of the patent, provided such invention is
used exclusively for the needs of the ship, vessel,
aircraft, or land vehicle and not used for the manufacture
of anything to be sold within or exported from the
Philippines.
Section 40. Rights of third parties prior to
application. - Any person who has purchased or
acquired of the inventor, his legal representatives, or
assigns, or who, with their knowledge and consent,
constructs any newly invented device or other patentable
article, prior to the filing of the application therefor, shall
have the right to use and sell the specific thing
purchased, acquired or made, without liability therefor.
Section 41. Use of invention by the Government. -
The Government of the Philippines may use any
patented invention at any time for governmental
purposes, and the manufacture or use of the invention
by or for the Government for such purposes shall not
constitute infringement of the patent, but the patentee
shall be entitled to receive a reasonable compensation
for the use of the invention.
CHAPTER X - Actions and Remedies for
Infringement
Section 42. Civil action for infringement. - 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 the proper Court
of First Instance, to recover from the infringer damages
sustained by reason of the infringement and to secure an
injunction for the protection of his rights.
If the damages are inadequate or cannot be readily
ascertained with reasonable certainty, the court may
award as damages a sum amounting to a reasonable
royalty.
The court may, according to the circumstances of the
case, award damages in a sum above the amount found
as actual damages sustained provided the award does
not exceed three times the amount of such actual
damages.
Section 43. Limitation of action for damages. - No
damages can be recovered for acts of infringement
committed more than four years before the institution of
the action for infringement.
Section 44. Damages not recoverable for want of
notice or marking. - Damages cannot be recovered for
acts of infringement committed before the infringer had
actual notice of the patent, unless the patentee or those
exploiting the invention on his behalf or under his
authorization have given notice to the public that the
machine, device, articles or process is patented either by
placing thereon the words "Philippines Patent" with the
number of the patent, or when from the nature of the
article this cannot reasonably be done, by placing such
notice on the package or container in which the device or
article is supplied to the public, or is descriptive or
advertising matter used in connection with the patented
machine, device, article or process.
Section 45. 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 twenty-eight, Chapter VII hereof.
Section 46. Patent found invalid to be cancelled. - If
the court shall find the patent or any claim thereof
invalid, the Director shall, on certification of the final
judgment to the Office, issue an order cancelling the
patent or the claims found invalid, and shall publish a
notice thereof in the Official Gazette.
Section 47. Assessors in infringement action. - Two
or more assessors may be appointed by the court. The
assessors shall be so qualified by the necessary
scientific and technical knowledge required by the
subject matter in suit. Either party may, as a preliminary
question, challenge the fitness of any assessor to sit in
an action.
Each assessor shall receive a compensation in an
amount to be fixed by the court and advanced by the
complaining party, and thereafter to be taxed as costs in
favor of the prevailing party.
Section 48. Criminal action for repetition of
infringement. - If infringement is repeated by the
infringer or by anyone in connivance with him after final
judgment of the court against the infringer, the parties
liable shall, without prejudice to further civil action, be
punished by a fine not exceeding ten thousand pesos
and imprisonment not exceeding five years, or both such
fine and imprisonment in the discretion of the court, in a
criminal action instituted for the purpose. The criminal
action herein provided shall prescribed in two years.
Section 49. Appeal. - Appeal may be taken from the
judgment of the court in the civil and criminal actions
herein provided in the same manner as in other actions.
CHAPTER XI - Assignment and Transmission of
Rights
Section 50. Transmission of rights. - Patents and the
inventions covered thereby shall be protected as and
have the applicable rights of other property. Inventions
and any rights, title or interest in and to patents and
inventions covered thereby may be assigned, or
transmitted by inheritance or bequest.
Section 51. Assignment of inventions. - An
assignment may be on the entire right, title or interest in
and to the patent and the invention covered thereby, or
of an undivided share of the entire patent and invention
in which event the parties become joint owners thereof.
An assignment may be limited to a specified territory.
Section 52. Form of assignment. - The assignment
must be in writing, acknowledged before a notary public
or other officer authorized to administer oaths or perform
notarial acts and certified under the hand and official
seal of the notary or other officer.
Section 53. Recording. - The Director shall record
assignment, licenses and other instruments relating to
any right, title or interest in and to inventions, and
patents or inventions covered thereby, which are
presented in due form to the Office for registration, in
books and records kept for the purpose. The original
document together with a signed duplicate thereof shall
be filed, but if the original is not available, an
authenticated copy thereof in duplicate may be filed.
Upon recording, the Director shall retain the duplicate,
and return the original or the authenticated copy to the
party filing with a notation of the fact of record. Notice of
the recording shall be published in the Official Gazette.
Such instruments shall be void as against any
subsequent purchaser or mortgagee for a valuable
consideration and without notice unless it is recorded in
the Office within three months from the date thereof, or
prior to the subsequent purchase or mortgage.
Section 54. Rights of joint owners. - If two or more
persons jointly own a patent and the invention covered
thereby either by the issuing of the patent to them jointly
or by reason of the assignment of an undivided share in
the patent and invention or by reason of the succession
in title to such share, each of the joint owners, shall be
entitled to personally make, use, or sell the invention for
his own profit, subject to any contract or agreement, but
neither of the owners shall be entitled to grant licenses
or to assign his right, title or interest or part thereof
without the consent of the other owner or owners, or
without proportionately dividing the proceeds with the
other owner or owners.
CHAPTER XII - Designs
Section 55. Industrial designs. - Any new and original
creation relating to the features of shape, pattern,
configuration, ornamental, or artistic appearance of an
article or industrial product may be protected as an
industrial design by the author in the same manner and
subject to the same provisions and requirements as
relate to patents for inventions insofar as they are
applicable, except as otherwise hereinafter provided.
Section 56. Six months publication. - The period of
one year specified in section nine, Chapter II, and
section fifteen, Chapter III, hereof, for inventions shall be
six months in the case of designs.
Section 57. Notice of registration shall be
published. - Notice of the registration of the design shall
be published in the Official Gazette.
Section 58. Term and extension thereof  . - The term
of the design registration shall be five years from the
date of registration.
Before the expiration of the five-year term upon payment
of the required fee, or within a further time thereafter not
to exceed six months upon payment of the surcharge,
the owner of the registration may apply for an extension
for an additional five years. The application for extension
must be accompanied by an affidavit showing that the
design is in commercial or industrial use in the
Philippines or satisfactorily explaining non-use. In a
similar manner an extension for a third five-year period
may be obtained.
Section 59. Marking. - The marking required by section
forty-four, Chapter X, hereof, shall be "Philippines
Design Registration," or appropriate abbreviation, and
the number of the registration.
Section 60. Infringement. - Infringement of a design
registration shall consist in unauthorized copying of the
registered design for the purpose of trade or industry in
the article or product and in the making, using or selling
of the article or product copying the registered design.
Identity or substantial identity with the registered design
shall constitute evidence of copying.
CHAPTER XIII - Review of Orders or Decisions of
Director
Section 61. Appeal from the action of Director. - The
applicant for a patent or for the registration of a design,
any party to a proceeding to cancel a patent or to obtain
a compulsory license, and any party to any other
proceeding in the Office may appeal to the Supreme
Court from any final order or decision of the Director.
Section 62. Stay. - A petition for review of any order or
decision of the Director rejecting in whole or in part an
application for a patent or registration of a design, shall
not stay any order or decision of the Director in respect
of any other applications then pending for a patent or
design registration; but the Director shall proceed to act
on such other applications without regard to such petition
unless the Supreme Court shall otherwise direct.
Section 63. How appeal is perfected. - An appeal from
an order or decision of the Director shall be perfected by
filing with the Director a notice of appeal and the
payment of the required appeal fee and filing with the
Supreme Court a petition for review, within thirty days
from notice of the order or decision appealed from.
Section 64. Contents and notice of petition. - The
petition shall contain a summary statement of the issues
involved and the reasons relied upon for allowance of a
review. Copies of the petition shall be served upon the
Director and all other parties in interest.
Section 65. Docketing fee and deposits for costs. -
Upon filing the petition for review, the petitioner shall pay
to the clerk of the Supreme Court the docketing fee and
shall deposit the sum of one hundred pesos for costs.
Section 66. Elevation of copy of record. - Upon the
filing of the petition, notice thereof shall be served by the
clerk of the Supreme Court upon the Director, who,
within thirty days thereafter, shall certify and forward to
the Supreme Court a copy of the record as the same
appears in this Office.
Section 67. Answer of respondent. - Upon receipt of
the record, the clerk of the Supreme Court shall serve
notice upon the Director and all other parties in interest,
requiring them to answer within ten days from service.
Copies of such answer shall served upon the petitioner.
Section 68. Power of court. - The Supreme Court may,
on petition filed within five days after the filing of the
answer, allow the parties to adduce additional evidence
material to the matter at issue, which shall constitute a
supplementary record to be considered in connection
with the record on appeal.
Section 69. Representation by Solicitor General. - In
all appeals from an order or decision of the Director the
Solicitor General shall appeal on behalf of the Director.
Section 70. Briefs on appeal. - Upon receipt of the
answer to the petition or upon conclusion of the
presentation of additional evidence, the clerk of the
Supreme Court shall notify the parties, and the
petitioner, within thirty days from such notice, shall file
twenty copies of his brief upon the adverse parties and,
within thirty days from such service, the adverse parties
shall file twenty copies of their brief together with proof of
service of five copies thereof upon the petitioner.
Section 71. Inclusion in calendar. - Upon the filing of
the respondent's brief, or after the expiration of the time
for its filing, the case shall be included in the regular
calendar, unless the court advances the hearing for
special cause shown.
Section 72. Oral argument, its duration. - Each party
is entitled to one hour for oral argument, extendible in
the discretion of the court.
Section 73. Rules of Court applicable. - In all other
matters not herein provided, the applicable provisions of
the Rules of Court shall govern.
CHAPTER XIV - Penalty for False Marking
Section 74. Penalty for false marking. - Any person
who falsely represents or indicates that any device,
article or product made or sold by him is patented, or is
the subject of a registered design, by making or having
on the device, article or product, or on their containers or
packages, or using in advertising or displays used in
connection with them, or with any process, words
expressing or implying that the device, article, product or
process is patented or registered, shall be subject to a
fine of not less than one hundred pesos nor more than
one thousand pesos, or imprisonment for not less than
one month nor more than one year, or both, in the
discretion of the court. Actions hereunder shall prescribe
in two years.
Section 75. Fees. - The following fees shall be paid:
For filing an application for patent, which shall
include the cost of publication in the Official
Gazette, two hundred pesos;
For annual fees due at the beginning of the fifth
and each succeeding year, one hundred pesos
each year;
For surcharge for delayed payment of an annual
fee, twenty-five pesos;
For reinstating lapsed patent, one hundred
pesos;
For filing a petition for cancellation, except when
filed by the Solicitor General, fifty pesos;
For filing a petition for a compulsory license, one
hundred pesos;
For copies of records of the Office, two pesos
per photostat sheet, one peso per hundred
words of typewritten copy;
For each certification of copy of any records, ten
pesos;
For recording assignments, and other
documents relating to title, and license, ten
pesos;
For notice of appeal from the order or decision of
the Director; twenty-five pesos;
For filing application for registration of a design,
fifty pesos;
For renewing design registration, fifty pesos;
For surcharge for delayed renewal of design
registration, twenty pesos; and
 For services not otherwise specified, the Director Section 83. Effective date. - This Act shall take effect
shall provide, by regulation, the fees therefor. on its approval.

CHAPTER XVI - Miscellaneous

Section 76. Certain priority for filing application

extended. - The rights of priority provided by section
nine, Chapter II; section fifteen, Chapter III; and section
fifty-six, Chapter XII hereof for the filing of applications
for patent for inventions and designs, which rights had
not expired on the eighth day of December, nineteen
hundred and forty-one, or which rights have arisen since
the eighth day of December, nineteen hundred and forty-
one, are extended until the first day of July, nineteen
hundred and forty-eight, in favor of the citizens of the
Philippines or citizens or subjects of countries which
have extended, or which now extend, or which within
said period ending the first day of July, nineteen hundred
and forty-eight, shall extend substantially reciprocal
privileges to citizens of the Philippines.

Section 77. Disqualification of officers and

employees from acquiring patents and design
registrations. - All officers and employees of the Office
shall not, during their employment or for one year
thereafter, apply for a grant of patent or for the
registration of a design, or acquire, directly or indirectly,
except by hereditary succession, any patent of invention
or design registration, or any right, title or interest
therein.

Section 78. Rules and regulations. - The Director

subject to the approval of the Secretary of Justice, shall
promulgate the necessary rules and regulations, not
inconsistent with law, for the conduct of all business in
the Patent Office.

Section 79. Records to be public. - The records of the

Office shall be open to public inspection, and any person
may obtain an authenticated copy thereof on payment of
the prescribed fees.

Section 80. Repealing clause. - Acts Numbered

Twenty-two hundred and thirty-five, Twenty-seven
hundred and ninety-three, as amended, and all other
acts, or parts of acts, inconsistent herewith, are hereby
repealed.

Section 81. Reservation of prior rights. - Any rights

acquired under laws existing prior to the taking effect of
this Act are hereby respected and preserved.

Section 82. Appropriation. - The sum of seventy-five

thousand pesos, or so much thereof as may be
necessary, is hereby appropriated out of any funds in the
National Treasury not otherwise appropriated, for the
initial expenses of the Office, including organization
expenses, salaries, supplies, equipment, and other
sundry expenses until June thirtieth, nineteen hundred
and forty-eight.
REPUBLIC ACT No. 166             June 20, 1947 (a) Consists of or comprises immoral, deceptive
or scandalous matter; or matter which may
AN ACT TO PROVIDE FOR THE REGISTRATION AND disparage or falsely suggest a connection with
PROTECTION OF TRADE-MARKS, TRADE-NAMES persons, living or dead, institutions, beliefs, or
AND SERVICE-MARKS, DEFINING UNFAIR national symbols, or bring them into contempt or
COMPETITION AND FALSE MARKING AND disrepute;
PROVIDING REMEDIES AGAINST THE SAME, AND
FOR OTHER PURPOSES (b) Consists of or comprises the flag or coat of
arms or other insignia of the Philippines or any
CHAPTER I - Powers, Duties and Functions of Patent of its political subdivisions, or of any foreign
Office nation, or any simulation thereof;

Section 1. Transfer of powers from Bureau of (c) Consists of or comprises a name, portrait, or
Commerce to Patent Office. - The powers, duties and signature identifying a particular living individual
functions vested in, or performed and exercised by, the except by his written consent, or the name,
Bureau of Commerce in connection with the registration signature, or portrait of a deceased President of
of trade-marks, trade-names and other marks are hereby the Philippines, during the life of his widow, if
transferred to the Patent Office. The administration of any, except by the written consent of the widow;
this Act shall devolve upon the Patent Office.
(d) Consists of or comprises a mark or trade-
All books, records, documents and files of the Bureau of name which so resembles a mark or trade-name
Commerce relating to trade-marks, trade-names and registered in the Philippines or a mark or trade-
other marks, and such personnel of the said Bureau as name previously used in the Philippines by
is now discharging the functions or performing the duties another and not abandoned, as to be likely,
of the Bureau of Commerce in connection with the when applied to or used in connection with the
registration of trade-marks, trade-names and other goods, business or services of the applicant, to
marks together with the corresponding appropriation, are cause confusion or mistake or to deceive
transferred to the Patent Office, and the Budget purchases; or
Commissioner shall make immediate provision for such
transfer. (e) Consists of a mark or trade-name which,
when applied to or used in connection with the
CHAPTER II - Registration of Marks and Trade- goods, business or services of the applicant is
Names merely descriptive or deceptively misdescriptive
of them, or when applied to or used in
connection with the goods, business or services
Section 2. What are registrable. - Trade-marks, trade-
of the applicant is primarily geographically
names and service-marks may be registered in
descriptive or deceptively misdescriptive of
accordance with the provisions of this Act.
them, or is primarily merely a surname.
Section 3. Application by non-residents. - Any person
(f) Except as expressly excluded in paragraphs
filing an application for the registration of a mark or
(a), (b), (c) and (d) of this section, nothing herein
trade-name, who is not a resident of the Philippines,
shall prevent the registration of a mark or trade-
must appoint an agent or representative in the
name used by the applicant which has become
Philippines upon whom notice or process relating to the
distinctive of the applicant's goods, business or
application or registration of the mark or trade-name may
services. The Director may accept as prima facie
be served. In the event of death, absence or inability of
evidence that the mark or trade-name has
the agent or representative, a new agent or
become distinctive, as applied to or used in
representative must be appointed, and notice thereof
connection with the applicant's goods, business
must be filed in the Patent Office. Upon failure to
or services, proof of substantially exclusive and
maintain an agent or representative of record in the
continuous use thereof as a mark or trade-name
Patent Office, service on the Director shall be deemed
by the applicant in connection with the sale of
sufficient.
goods, business or services for the five years
next preceding the date of the filing of the
Section 4. Registration of trade-marks, trade-names application for its registration.
and service-marks. - The owner of a trade-mark, trade-
name or service-mark used to distinguish his goods,
Section 5. Requirements of the application. - The
business or services from the goods, business or
application for the registration of a mark or trade-name
services of others shall have the right to register the
shall be in English or Spanish, or in the national
same, unless it:
language, with its corresponding English translation, and
signed by the applicant, and shall include:
 (a) Sworn statement of the applicant's domicile
and citizenship, the date of the applicant's first
use of the mark or trade-name, the date of the
applicant's first use of the mark or trade-name in
commerce or business, the goods, business or
services in connection with which the mark or
trade-name is used and the mode or manner in
which the mark is used in connection with such
goods, business or services, and that the person
making the application believes himself, or the
firm, corporation or association on whose behalf
he makes the verification, to be the owner of the
mark or trade-name sought to be registered, that
the mark or trade-name is in use in commerce or
business, and that to the best of his knowledge
no person, firm, corporation or association has
the right to use such mark or trade-name in
commerce or business either in the identical
form thereof or in such near resemblance
thereto as might be calculated to deceive;
(b) Such number of specimens or facsimiles of
the mark or trade-name as actually used as may
be required by the Director;
(c) Power of attorney, if the filing is through
attorney;
(d) The appointment of an agent or
representative, if the applicant is not domiciled in
the Philippines; and
(e) The required fee.
Section 6. Classification of goods and services. - The
Director shall establish a classification of goods and
services, for the convenience of the Patent Office
administration, but not to limit or extent the applicant's
rights. The applicant may register his mark or trade-
name in one application for any of all the goods or
services included in one class, upon or in connection
with which he is actually using the mark or trade-name.
The Director may issue a single certificate for one mark
or trade-name registered in a plurality of classes upon
payment of a fee equaling the sum of the fees for each
registration in each class.
Section 7. Examination and publication. - Upon the
filing of an application for registration and the payment of
the required fee, the Director shall cause an examination
of the application to be made, and, if on such
examination it shall appear that the applicant is entitled
to registration, the Director, upon payment of the
required fee, shall cause the mark or trade-name to be
published in the Official Gazette.
If the applicant is found not entitled to registration, the
Director shall advise the applicant thereof and of the
reasons therefor. The applicant shall have a period of
three months in which to reply or amend his application,
which shall then be re-examined. This procedure may be
repeated until the Director finally refuses registration or
the applicant fails within the required period to reply or
amend or appeal, whereupon the application shall be
deemed to have been abandoned, unless it can be
shown to the satisfaction of the Director that the delay in
responding was unavoidable, in which event such time
may be extended in the discretion of the Director. An
abandoned application may be revived as a pending
application within three months from the date of
abandonment, upon good cause shown and the payment
of the required fee.
Section 8. Opposition. - Any person who believes that
he would be damaged by the registration of a mark or
trade-name may, upon payment of the required fee and
within thirty days after the publication under the first
paragraph of section seven hereof, file with the Director
as opposition to the application. Such opposition shall be
in writing and verified by the oppositor, or by any person
on his behalf who knows the facts, and shall specify the
grounds on which it is based and include a statement of
the facts relied upon. Copies of certificates of registration
of marks or trade-names registered in other countries or
other supporting documents mentioned in the opposition
shall be filed therewith, together with the translation
thereof into English, if not in the English language. For
good cause shown and upon payment of the required
surcharge, the time for filing an opposition may be
extended for an additional thirty days by the Director,
who shall notify the applicant of such extension.
Section 9. Notice and hearing. - Upon the filing of an
opposition, the Director shall forthwith serve notice of the
filing on the applicant, and of the date of the hearing
thereof upon the applicant and the oppositor and all
other persons having any right, title or interest in the
mark or trade-name covered by the application, as
appear of record in the Patent Office.
Section 10. Issuance and publication of certificates. -
When the period for filing the opposition has expired, or
when the Director shall have denied the opposition, the
Director, upon payment of the required fee, shall issue
the certificate of registration. Upon issuance of a
certificate of registration, notice thereof making reference
to the publication of the application shall be published in
the Official Gazette.
Section 11. Issuance and contents of the
certificate. - Certificates of registration shall be issued in
the name of the Republic of the Philippines under the
seal of the Patent Office, and shall be signed by the
Director, and a record thereof together with a copy of the
specimen or facsimile and the statement of the applicant,
shall be kept in books for that purpose. The certificate
shall reproduce the specimen or facsimile of the mark or
trade-name, contain the statement of the applicant and
state that the mark or trade-name is registered under this
Act, the date of the first use, the date of the first use in
commerce or business, the particular goods or services
for which it is registered, the number and date of the
registration, the term thereof, the date on which the
application for registration was received in the Patent
Office, a statement of the requirement that in order to
maintain the registration, periodical affidavits of use
within the specified times hereinafter in section twelve
provided, shall be filed, and such other data as the rules
and regulations may from time to time prescribe.
Section 12. Duration. - Each certificate of registration
shall remain in force for twenty years: Provided, That
registrations under the provisions of this Act shall be
cancelled by the Director, unless within one year
following the fifth, tenth and fifteenth anniversaries of the
date of issue of the certificate of registration, the
registrant shall file in the Patent Office an affidavit
showing that the mark or trade-name is still in use or
showing that its non-use is due to special circumstances
which excuse such non-use and is not due to any
intention to abandon the same, and pay the required fee.
The Director shall notify the registrant who files the
above-prescribed affidavits of his acceptance or refusal
thereof and, if a refusal, the reasons therefor.
Section 13. Disclaimers before issue. - The Director
shall require unregistrable matter to be disclaimed, but
such disclaimer shall not prejudice or affect the
applicant's or owner's rights then existing or thereafter
arising in the disclaimed matter, nor shall such
disclaimer prejudice or affect the applicant's or owner's
rights of registration on another application of later date if
the disclaimed matter has become distinctive of the
applicant's or owner's goods, business or services.
Section 14. Voluntary surrender, cancellation,
amendment and disclaimer after registration. - At any
time, upon application of the registrant and payment of
the required fee, the Director may permit any registration
to be surrendered, cancelled, or for good cause shown
to be amended, he may permit any registered mark or
trade-name to be disclaimed in whole or in part:
Provided, That the registration when so amended shall
still contain registrable matter and the mark or trade-
name as amended shall still be registrable as a whole,
and that such amendment or disclaimer does not involve
such changes in the registration as to alter materially the
character of the mark or trade-name. The Director shall
make appropriate entry upon the records of the Patent
Office and upon the certificate of registration or, if said
certificate is lost or destroyed, upon a certified copy
thereof. The Director in his discretion and upon payment
of the required fee, may issue a substitute certificate
limited to the term of the original certificate and
incorporating such amendment or correction.
CHAPTER III - Renewals of Certificate of Registration
Section 15. Renewal. - Each certificate of registration
may be renewed for periods of twenty years from the
end of the expiring period upon the filing of an
application therefor and the payment of the required fee.
Such application for renewal shall include a sworn
statement of the applicant's domicile and citizenship, the
specific goods, business or services in connection with
which the mark or trade-name is still in use, the period of
any nonuse in reference to the specific goods, business
or services covered by original or renewed certificates of
registration and any rights granted third parties for the
use of the mark or trade-name, any additional goods,
business or services to which the mark or trade-name
has been extended during the period of the original or
renewed certificates of registration, and any material
variation in the manner of display of the mark or trade-
name from that shown in the original or renewed
certificate of registration. The applicant shall file the
application within six months before the expiration of the
period for which the certificate of registration was issued
or renewed, or it may be made within three months after
such expiration for good cause shown and upon
payment of the required surcharge.
In the event the applicant for renewal be not domiciled in
the Philippines, he shall be subject to and comply with
the provisions of paragraph (d), section five, Chapter II
hereof.
Section 16. Effect of failure to renew registration. -
Mere failure to renew any registration shall not affect the
right of the registrant to apply for and obtain a new
registration under the provisions of this Act, nor shall
such failure entitle any other person to register a mark or
trade-name unless he is entitled thereto in accordance
with the provisions of this Act.
CHAPTER IV - Cancellation of Registration
Section 17. Grounds for cancellation. - Any person,
who believes that he is or will be damaged by the
registration of a mark or trade-name, may, upon the
payment of the prescribed fee, apply to cancel said
registration upon any of the following grounds:
(a) That the registered mark or trade-name
becomes the common descriptive name of an
article or substance on which the patent has
expired;
(b) That it has been abandoned;
(c) That the registration was obtained
fraudulently or contrary to the provisions of
section four, Chapter II hereof;
(d) That the registered mark or trade-name has
been assigned, and is being used by, or with the
permission of, the assignee so as to
misrepresent the source of the goods, business
or services in connection with which the mark or
trade-name is used; or
 (e) That cancellation is authorized by other
provisions of this Act.
Section 18. Requirements of petition; notice and
hearing. - Insofar as applicable, the petition herein shall
be in the same form as that provided in section eight,
Chapter II hereof, and notice and hearing shall be as
provided in section nine, Chapter II hereof.
Section 19. Cancellation of registration. - If the
Director finds that a case for cancellation has been made
out he shall order the cancellation of the registration. The
order shall not become effective until the period for
appeal has elapsed, or if appeal is taken, until the
judgment on appeal becomes final. When the order or
judgment becomes final, any right conferred by such
registration upon the registrant or any person in interest
of record shall terminate. Notice of cancellation shall be
published in the Official Gazette.
Section 23. Actions, and damages and injunction for
infringement. - Any person entitled to the exclusive use
of a registered mark or trade-name may recover
damages in a civil action 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 said 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 of 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. In cases where actual intent to
mislead the public or to defraud the complaining party
shall be shown, in the discretion of the court, the
damages may be doubled.

The complaining party, upon proper showing, may also

CHAPTER V - Rights and Remedies
be granted injunction.
Section 20. Certificate of registration prima facie
Section 24. Power of court to order infringing
evidence of validity. - A certificate of registration of a
material destroyed. - In any action arising under this
mark or trade-name shall be prima facie evidence of the
Act, in which a violation of any right of the registrant shall
validity of the registration, the registrant's ownership of
have been established, the court may order that all
the mark or trade-name, and of the registrant's exclusive
labels, sign, prints, packages, wrappers, receptacles and
right to use the same in connection with the goods,
advertisements in the possession of the defendant,
business or services specified in the certificate, subject
bearing the registered mark or trade-name or any
to any conditions and limitations stated therein.
reproduction, counterfeit, copy or colorable imitation
thereof, and all plates, molds, matrices and other means
Section 21. Requirements of notice of registration of of making the same, shall be delivered up and
trade-mark. - The registrant of a trade-mark, heretofore destroyed.
registered or registered under the provisions of this Act,
shall give notice that his mark is registered by displaying
Section 25. Authority to determine right to
with the same as used the words "Registered in the
registration. - In any action involving a registered mark
Philippines Patent Office" or "Reg. Phil. Pat. Off."; and in
or trade-name the court may determine the right to
any suit for infringement under this Act by a registrant
registration, order the cancellation of registrations, in
failing so to mark the goods bearing the registered trade-
whole or in part, restore cancelled registration, and
mark, no damages shall be recovered under the
otherwise rectify the register with respect to the
provisions of this Act unless the defendant has actual
registration of any party to the action. Judgments and
notice of the registration.
orders shall be certified by the court to the Director, who
shall make appropriate entry upon the records of the
Section 22. Infringement, what constitutes. - Any Patent Office, and shall be controlled thereby.
person who shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or
Section 26. Action for false or fraudulent
colorable imitation of any registered mark or trade-name
declaration. - Any person who shall procure registration
in connection with the sale, offering for sale, or
in the Patent Office of a mark or trade-name by a false or
advertising of any goods, business or services on or in
fraudulent declaration or representation, oral or in
connection with which such use is likely to cause
writing, or by any false means, shall be liable in a civil
confusion or mistake or to deceive purchasers or others
action by any person injured thereby for any damages
as to the source or origin of such goods or services, or
sustained in consequence thereof.
identity of such business; or reproduce, counterfeit, copy
or colorably imitate any such mark or trade-name and
apply such reproduction, counterfeit, copy, or colorable Section 27. Jurisdiction of Court of First Instance. -
imitation to labels, signs, prints, packages, wrappers, All actions under this Chapter and Chapters VI and VII
receptacles or advertisements intended to be used upon hereof shall be brought before the proper Court of First
or in connection with such goods, business or services, Instance.
shall be liable to a civil action by the registrant for any or
all of the remedies herein provided.
Section 28. Appeal. - Appeal may be taken from any
judgment or final order of the Court of First Instance in
the same manner as in other actions.
CHAPTER VI - Unfair Competition
Section 29. Unfair competition, rights and
remedies. - 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 mark or trade-name 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. Such a person shall have the
remedies provided in section twenty-three, Chapter V
hereof.
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.
In particular, and without in any way limiting the scope of
unfair competition, the following shall be deemed guilty
of unfair competition:
(a) Any person, who in selling his goods shall
give them the general appearance of goods of
another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the
packages in which they are contained, or the
devices 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 the false belief that such person is
offering the services of another who has
identified such services in the mind of the public;
(c) Any person who shall make any false
statement in the course of trade or who shall
commit any other act contrary to good faith of a
nature calculated to discredit the goods,
business or services of another.
CHAPTER VII - False Designation of Origin and False
Description
Section 30. False designation of origin and false
description forbidden. - Any person who shall affix,
apply, annex or use in connection with any goods or
services, or any container or containers for goods, a
false designation of origin, or any false description or
representation, including words or other symbols tending
falsely to describe or represent the same, and shall
cause such goods or services to enter into commerce,
and any person who shall with knowledge of the falsity of
such designation of origin or description or
representation cause or procure the same to enter into
commerce, shall be liable to a civil action for damages
and injunction provided in section twenty-three, Chapter
V hereof, by any person doing business in the locality
falsely indicated as that of origin or in the region in which
said locality is situated, or by any person who believes
that he is or is likely to be damaged by the use of any
such false description or representation.
CHAPTER VIII - Assignment and Transmission of
Rights
Section 31. Rights assignable and form of
assignment. - A registered mark or trade-name, or one
for which application to register has been filed shall be
assignable with the goodwill of the business in which the
mark or trade-name is used, or with that part of the
goodwill of the business connected with the use of and
symbolized by the mark or trade-name, and in any such
assignment it shall not be necessary to include the
goodwill of the business connected with the use of and
symbolized by any other mark or trade-name used in the
business or by the name or style under which the
business is conducted. Upon payment of the required
fee, the Director shall record assignments in due form in
books kept for that purpose.
The assignment must be in writing, acknowledged before
a notary public or other officer authorized to administer
oaths or perform other notarial acts and certified under
the hand and official seal of the notary or other officer.
An assignment shall be void as against any subsequent
purchaser for a valuable consideration without notice,
unless it is recorded in the Patent Office within three
months after the date thereof or prior to such subsequent
purchase.
Section 32. Issuance of certificate of registration to
assignee. - A certificate of registration of a mark or
trade-name may be issued to the assignee of the
applicant, but the assignment must first be recorded in
the Patent Office. In case of change of ownership the
Director shall, at the request of the owner and upon
proper showing and payment of the required fee, issue
to such assignee a new certificate of registration of the
said mark or trade-name in the name of such assignee,
and for the unexpired part of the original period.
CHAPTER IX - Review of Orders or Decisions of
Director
Section 33. Appeal from action of Director. - Any
party who has been denied registration of a mark or
trade-name, or to the renewal of the registration, or to
any cancellation proceeding in the Patent Office, may
appeal to the Supreme Court from the final order or
decision of the Director.
Section 34. Procedure on appeal. - Sections sixty-
three to seventy-three, inclusive, Chapter VIII, of
Republic Act No. _____ entitled "An Act creating a
Patent Office, prescribing its powers and duties,
regulating the issuance of patents, and appropriating
funds therefor," shall be applicable to the appeals herein
provided.
CHAPTER X - Importations Prohibited
Section 35. Goods bearing infringing marks or trade-
names. - No article of imported merchandise which shall
copy or simulate the name of any domestic product, or
manufacturer, or dealer, or of any manufacturer or dealer
located in any foreign country which, by treaty,
convention or law affords similar privileges to citizens of
the Philippines, or which shall copy or simulate a mark or
trade-name registered in accordance with the provisions
of this Act, or shall bear a mark or trade-name calculated
to induce the public to believe that the article is
manufactured in the Philippines, or that it is
manufactured in any foreign country or locality other than
the country or locality where it is in fact manufactured,
shall be admitted to entry at any customhouse of the
Philippines. In order to aid the officers of the customs
service in enforcing this prohibition, any person who is
entitled to the benefits of this Act, may require his name
and residence, and the name of the locality in which his
goods are manufactured, a copy of the certificate of
registration of his mark or trade-name to be recorded in
books which shall be kept for this purpose in the Bureau
of Customs, under such regulations as the Collector of
Customs with the approval of the Secretary of Finance
shall prescribe, and may furnish to the said Bureau
facsimiles of his name, the name of the locality in which
his goods are manufactured, or of his registered mark or
trade-name, and thereupon the Collector of Customs
shall cause one or more copies of the same to be
transmitted to each collector or other proper officer of the
Bureau of Customs.
Section 36. Goods with false designation of origin
and false description. - Any goods marked or labeled in
contravention of the provisions of section thirty, Chapter
VII hereof, shall not be imported into the Philippines or
admitted to entry at any customhouse in the Philippines.
CHAPTER XI - Provisions in Reference to Foreign
Industrial Property
Section 37. Rights of foreign registrants. - Persons
who are nationals of, domiciled in, or have a bona fide or
effective business or commercial establishment in any
foreign country, which is a party to any international
convention or treaty relating to marks or trade-names, or
the repression of unfair competition to which the
Philippines may be a party, shall be entitled to the
benefits and subject to the provisions of this Act to the
extent and under the conditions essential to give effect to
any such convention and treaties so long as the
Philippines shall continue to be a party thereto, except
as provided in the following paragraphs of this section.
No registration of a mark or trade-name in the
Philippines by a person described in the preceding
paragraph of this section shall be granted until such
mark or trade-name has been registered in the country
of origin of the applicant, unless the applicant alleges
use in commerce.
For the purposes of this section, the country of origin of
the applicant is the country in which he has bona fide
and effective industrial or commercial establishment, or if
he has not such an establishment in the country in which
he is domiciled, or if he has not a domicile in any of the
countries described in the first paragraph of this section,
the country of which he is a national.
An application for registration of a mark or trade-name
under the provisions of this Act filed by a person
described in the first paragraph of this section who has
previously duly filed an application for registration of the
same mark or trade-name in one of the countries
described in said paragraph shall be accorded the same
force and effect as would be accorded to the same
application if filed in the Philippines on the same date on
which the application was first filed in such foreign
country: Provided, That -
(a) The application in the Philippines is filed
within six months from the date on which the
applicant was first filed in the foreign country;
and within three months from the date of filing or
within such time as the Director shall in his
discretion grant, the applicant shall furnish a
certified copy of the application for or registration
in the country of origin of the applicant, together
with a translation thereof into English, if not in
the English language;
(b) The application conforms as nearly as
practicable to the requirements of this Act, but
use in commerce need not be alleged;
(c) The rights acquired by third parties before the
date of the filing of the first application in the
foreign country shall in no way be affected by a
registration obtained on an application filed
under this paragraph; and
(d) Nothing in this paragraph shall entitle the
owner of a registration granted under this
section to sue for acts committed prior to the
date on which his mark or trade-name was
 registered in this country unless the registration
is based on use in commerce.
The registration of a mark under the provisions of this
section shall be independent of the registration in the
country of origin and the duration, validity or transfer in
the Philippines of such registration shall be governed by
the provisions of this Act.
Trade-names of persons described in the first paragraph
of this section shall be protected without the obligation of
filing or registration whether or not they form parts of
marks.
Any person designated in the first paragraph of this
section as entitled to the benefits and subject to the
provisions of this Act shall be entitled to effective
protection against unfair competition, and the remedies
provided herein for infringement of marks and trade-
names shall be available so far as they may be
appropriate in repressing acts of unfair competition.
Citizens or residents of the Philippines shall have the
same benefits as are granted by this section to persons
described in the first paragraph hereof.
CHAPTER XII - Construction and Definitions
Section 38. Words and terms defined and
construed. - In the construction of this Act, unless the
contrary is plainly apparent from the context -
The term "trade-name" includes individual names and
surnames, firm names, trade-names, devices or words
used by manufacturers, industrialists, merchants,
agriculturists, and others to identify their business,
vocations or occupations; the names or titles lawfully
adopted and used by natural or juridical persons, unions,
and any manufacturing, industrial, commercial,
agricultural or other organizations engaged in trade or
commerce.
The term "trade-mark" includes 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.
The term "service-mark" means a mark used in the sale
or advertising of services to identify the services of one
person and distinguish them from the services of others
and includes without limitation the marks, names,
symbols, titles, designations, slogans, character names,
and distinctive features of radio or other advertising.
The word "business" includes vocations or occupations.
The term "mark" includes any trade-mark or service-
mark entitled to registration under this Act whether
registered or not.
The word "registrant" includes the owner of a registered
mark or trade-name.
Section 39. Fees. - The following fees shall be paid:
For filing application for registration for each
class included in the application, fifty pesos;
For filing application for revival of abandoned
application for registration, twenty-five pesos;
For publication in the Official Gazette of
allowance of application, fifty pesos;
For filing of opposition, fifty pesos;
For issuance and publication of certificate of
registration, twenty-five pesos;
For filing each affidavit required by section
twelve, Chapter II hereof, twenty-five pesos;
For filing disclaimer, amendment, surrender or
cancellation after registration, twenty pesos;
For issuance of a substitute certificate of
registration following correction of a registrant's
mistake, twenty-five pesos;
For issuance of a new certificate of registration
following change of ownership of mark, twenty-
five pesos;
For filing petition for renewal of certificate of
registration for each class, fifty pesos;
For filing petition for cancellation, fifty pesos;
For surcharge for any delayed payment or any
delayed action of an applicant or registrant,
twenty-five pesos;
For notice of appeal from orders or decisions of
Commissioner, twenty-five pesos;
For recording assignments for each mark or
trade-name, ten pesos;
For issuance of a certificate regarding the
registration or non-registration of each mark or
trade-name, ten pesos;
For issuance of an affirmative or negative
certificate regarding the registration of any
document in connection, with a mark or trade-
name, ten pesos;
 For filing any other documents in connection
with marks or trade-names not required by law
to be filed, ten pesos;
For certifying a copy to be a true and exact copy,
one peso;
was issued or renewed, the registrant may
renew the registration upon filing an application
therefor, as provided in section fifteen, Chapter
III hereof. If said application is granted a renewal
certificate shall be issued by the Director in
accordance with the provisions of this Act.

For copies of records, two pesos per photostat
sheet; one peso per one hundred words of
typewritten copy; and
For services not otherwise specified, the Director
shall, by regulation, provide the fees therefor.
Section 40. Collective marks and collective trade-
names. - Collective marks and collective trade-names
belonging to cooperatives, associations or other
collective groups or organization may also be registered
under the provisions of this Act, even though the said
collectivities may not possess an industrial, commercial
or agricultural establishment. Foreign collectivities may
not, however, procure such registration if the existence
of such collectivities is contrary to the laws of the country
of origin.
Such collective marks and collective trade-names, when
registered, shall be entitled to the protection provided
herein in the case of marks and trade-names, except
when used so as to represent falsely that the owner or a
user makes or sells the goods on which the mark or
trade-name is used, or so as to represent falsely the
origin of the goods or services.
The other provisions of this Act relating to marks and
trade-names shall apply to collective marks and
collective trade-names, except that the part of paragraph
(e), section four, Chapter II hereof, relating to
geographically descriptive marks or trade-names shall
not be applicable in appropriate cases.
A "collective mark" or collective trade-name" is a mark or
trade-name used by the members of a cooperative, an
association or other collective group or organization.
Section 42. Renewal of registrations which expired
during the war. - The provisions of this Act to the
contrary notwithstanding, registrations under prior laws
which expired after the eighth day of December,
nineteen hundred forty-one, and which the owners were
not able to renew for causes arising out of the war, may
be renewed within one year after this Act takes effect,
and non-use of the mark or trade-name may be shown to
be due to special circumstances. If the application for
renewal is granted, a renewal certificate to commence
from the date of the expiration of the prior registration
shall be issued by the Director in accordance with the
provisions of this Act.
Section 43. Pending applications. - All applications for
registration pending on the effective date of this Act may
be amended, if practicable, to bring them under the
provisions of this Act, without the payment of any
additional fee. The prosecution of such applications
whether amended or not and the grant of registrations
thereon shall conform to the provisions of this Act.
Section 44. Repealing clause. - Act Numbered Six
hundred and sixty-six of the Philippine Commission,
approved March six, nineteen hundred and three, and all
laws amendatory thereto; Act Numbered Thirty hundred
and seventy of the Philippine Legislature, approved
March sixteen, nineteen hundred and twenty-three; Act
Numbered Thirty-two hundred and two, approved
December three, nineteen hundred and twenty-four, and
all other acts, or parts of acts inconsistent herewith, are
hereby repealed.
Section 45. Effective date. - This Act shall take effect
on its approval.

CHAPTER XIV - Miscellaneous Provisions

Section 41. Reservation in favor of prior

registration. - Owners of marks or trade-names
registered under the provisions of the laws in force prior
hereto, the registrations of which are still subsisting
under the said laws are hereby granted the right:

(a) Within one year after the taking effect of this

Act to surrender their certificates of registration
and procure the issuance of new certificates, in
which event they shall be entitled to the benefits
and subject to the provisions of this Act; or

(b) Within one year before the expiration of the

period for which the certificates of registration
 those existing and create new ones; consolidate related
undertakings; transfer functions, appropriations,
equipment, property, records, and personnel from one
department, bureau, office, agency or instrumentality to
another; to eliminate duplicated services or authorize
new ones not provided for; classify, combine, split or
abolish positions; standardize salaries and do whatever
is necessary and desirable to effect economy and
promote efficiency in the government service.

Section 3. Officers and employees whose positions are

REPUBLIC ACT No. 422
AN ACT AUTHORIZING THE PRESIDENT OF THE
PHILIPPINES TO REORGANIZE WITHIN ONE YEAR
THE DIFFERENT EXECUTIVE DEPARTMENTS,
BUREAUS, OFFICES, AGENCIES AND OTHER
INSTRUMENTALITIES OF THE GOVERNMENT,
INCLUDING THE CORPORATIONS OWNED OR
CONTROLLED BY IT
Section 1. Declaration of Policy. - It is declared to be the
policy of Congress to promote simplicity, economy and
efficiency, and to improve the service in the transaction
of the public business in the departments, bureaus,
agencies, boards, commissions, offices, and other
instrumentalities of the Government, including all
corporations owned or controlled by the Government by:
abolished or who may be separated from the service as
a consequence of the reorganization provided in this Act
shall not lose their civil service eligibility for a period of
ten years from the date of their separation from the
service, nor their right to any gratuity which the Congress
may provide. In case an office needs the services of
additional personnel, preference in the appointment shall
be given to the officers or employees who may be
separated from the service as a result of this
reorganization and in accordance with the
recommendation of the Commissioner of Civil Service.
Section 4. Any action taken by the President pursuant to
the provisions of this Act shall be immediately reported
to Congress and shall be valid and subsisting until
Congress shall provide otherwise.
Section 5. This Act shall take effect upon its approval.

1. Limiting expenditures to the lowest amount

consistent with the efficient performance of
essential services, activities, and functions;

2. Eliminating duplication and overlapping of

services, activities, and functions;

3. Consolidating services, activities and

functions of a similar nature;1awphi1©

4. Abolishing services, activities, and functions

not necessary to the efficient conduct of the
Government; and

5. Defining and limiting executive functions,

services and activities.

Section 2. For the purpose of carrying out the policy set

forth in section one of this Act, the President of the
Philippines is hereby authorized to effect by executive
order from time to time, for a period not exceeding one
year from the date of the approval of this Act, and within
the limits of the total current appropriation, such reforms
and changes in the different executive departments,
bureaus, offices, agencies and other instrumentalities of
the Government including the corporations owned or
controlled by the government as he may deem
necessary, with the power to diminish, add to or abolish
 manufacturer, bottler, or seller, may be entitled by law or
contract.

Sec. 5. No action shall be brought under this Act

against any person to whom the registered
manufacturer, bottler, or seller, has transferred by way of
sale, any of the containers herein referred to, but the
sale of the beverage contained in the said containers
shall not include the sale of the containers unless
specifically so provided.

Sec. 6. The provision of this Act shall not be

interpreted as prohibiting the use of bottles as containers
for "sisi", "bagoong", "patis", and similar native products.
REPUBLIC ACT NO. 623
Sec. 7. This Act shall take effect upon its approval.
REPUBLIC ACT NO. 623 - AN ACT TO REGULATE
THE USE OF DULY STAMPED OR MARKED
BOTTLES, BOXES, CASKS, KEGS, BARRELS AND
OTHER SIMILAR CONTAINERS

Section 1. Persons engaged or licensed to engaged in

the manufacture, bottling or selling of soda water,
mineral or aerated waters, cider, milk, cream, or other
lawful beverages in bottles, boxes, casks, kegs, or
barrels, and other similar containers, with their names or
the names of their principals or products, or other marks
of ownership stamped or marked thereon, may register
with the Philippine Patent Office a description of the
names or are used by them, under the same conditions,
rules, and regulations, made applicable by law or
regulation to the issuance of trademarks.

Sec. 2. It shall be unlawful for any person, without the

written consent of the manufacturer, bottler or seller who
has successfully registered the marks of ownership in
accordance with the provisions of the next preceding
section, to fill such bottles, boxes, kegs, barrels, or other
similar containers so marked or stamped, for the
purpose of sale, or to sell, dispose of, buy, or traffic in, or
wantonly destroy the same, whether filled or not, or to
use the same for drinking vessels or glasses or for any
other purpose than that registered by the manufacturer,
bottler or seller. Any violation of this section shall be
punished by a fine or not more than one hundred pesos
or imprisonment of not more than thirty days or both.

Sec. 3. The use by any person other than the

registered manufacturer, bottler, or seller, without written
permission of the latter, of any such bottle, cask, barrel,
keg, box or other similar container, or the possession
thereof by any junk dealer or dealer in casks, barrels,
kegs, boxes, or other similar containers, the same being
duly marked or stamped and registered as herein
provided, shall be prima facie evidence that such use, or
possession is unlawful.

Sec. 4. The criminal action provided in this Act shall is

no way affect any civil action to which the registered

REPUBLIC ACT No. 5434
An Act to Provide a Uniform Procedure for Appeals
from the Court of Agrarian Relations, the Secretary
of Labor Under Section 7 of Republic Act Numbered
Six Hundred Two, also Known as "The Minimum
Wage Law", the Department of Labor Under Section
23 of Republic Act Numbered Eight Hundred
Seventy-Five, also Known as "The Industrial Peace
Act", the Land Registration Commission, the
Securities and Exchange Commission, the Social
Security Commission, the Civil Aeronautics Board,
the Patent Office, and the Agricultural Inventions
Board, and for Other Purposes
Be it enacted by the Senate and House of
Representatives of the Philippine Congress Assembled:
Section 1. Appeals from specified agencies.— Any
provision of existing law or Rule of Court to the contrary
notwithstanding, parties aggrieved by a final ruling,
award, order, decision, or judgment of the Court of
Agrarian Relations; the Secretary of Labor under Section
7 of Republic Act Numbered Six hundred and two, also
known as the "Minimum Wage Law"; the Department of
Labor under Section 23 of Republic Act Numbered Eight
hundred seventy-five, also known as the "Industrial
Peace Act"; the Land Registration Commission; the
Securities and Exchange Commission; the Social
Security Commission; the Civil Aeronautics Board, the
Patent Office and the Agricultural Inventions Board, may
appeal therefrom to the Court of Appeals, within the
period and in the manner herein provided, whether the
appeal involves questions of fact, mixed questions of fact
and law, or questions of law, or all three kinds of
questions. From final judgments or decisions of the
Court of Appeals, the aggrieved party may appeal by
certiorari to the Supreme Court as provided in Rule 45 of
the Rules of Court.
Section 2. Appeals to Court of Appeals.— Appeals to
the Court of Appeals shall be filed within fifteen (15) days
from notice of the ruling, award, order, decision of
judgment or from the date of its last publication, if
publication is required by law for its effectivity; or in case
a motion for reconsideration is filed within that period of
fifteen (15) days, then within ten (10) days from notice or
publication, when required by law, of the resolution
denying the motion for reconsideration. No more than
one motion for reconsideration shall be allowed any
party. If no appeal is filed within the periods here fixed,
the ruling, award, order, decision or judgment shall
become final and may be executed as provided by
existing law.
Section 3. How appeals taken.— Appeals shall be taken
by filing a notice of appeal with the Court of Appeals and
with the court, officer, board, award, order, decision or
judgment appealed from, serving a copy thereof on all
other interested parties.1avvphi1 The notice of appeal
shall state, under oath, the material dates to show that it
was filed within the period fixed in this Act.
Section 4. Docketing fee and deposits for costs.— Upon
filing of the notice of appeal, the appellant shall pay to
the Clerk of the Court of Appeals the docketing fee fixed
in Rule 141, Section 2 (a) of the Rules of Court and
deposit the sum of fifty pesos (₱50.00) for costs, or in
case the appellant be a laborer, employee, agricultural
lessee, or tenant, a motion setting forth said fact under
oath, and praying that he be exempted from payment of
docketing fee and the deposit for costs. Copy of the
motion shall be served on all interested parties. Should
the court find said motion to be well founded it shall grant
the same; but if the Court denies the motion, the
appellant shall pay the docketing fee and make the
deposit for costs within fifteen (15) days from notice of
the denial. Failure to pay the docketing fee and make the
deposit for costs within the period here fixed shall be a
ground to dismiss the appeal.
Section 5. Effect of appeal.— Appeal shall not stay the
award, order, ruling, decision or judgment unless the
officer or body rendering the same or the court, on
motion, after hearing, and on such terms as it may deem
just, should provide otherwise. The propriety of a stay
granted by the officer or body rendering the award,
order, ruling decision or judgment may be raised only by
motion in the main case.
Section 6. Elevation of Record.— Within five (5) days
from the payment of the docket fee and deposit for costs,
the Clerk of the Court of Appeals shall notify the clerk of
court, commission, board, or office concerned to forward
the record of the case. Within five (5) days from receipt
of such notice, the latter shall comply by forwarding the
whole original record of the case or a certified true copy
of the whole record to the Court of Appeals. Failure to
elevate the record within the period here fixed shall be
dealt with as for contempt of Court.
Section 7. Appellate procedure; Briefs.— Until the
Supreme Court shall provide otherwise by Rule of Court,
appeals shall proceed as provided by Rules 46 to 55 of
the Rules of Court, insofar as applicable, with the
following modifications:
 (a) The appellant’s brief shall be served and filed
within thirty (30) days from the date that he is
notified that the record has been received by the
Court of Appeals, within the period above fixed,
and shall contain, as an appendix, the ruling,
order, award, decision or judgment appealed
from; the appellee’s brief shall be served and
filed within thirty (30) days from receipt of the
appellant’s brief; and the appellant’s reply brief,
within fifteen (15) days from receipt of the
appellee’s brief.

(b) The Court of Appeals may extend the periods

above fixed only for good cause; and the total
extension granted any party shall not, except in
meritorious cases, be greater than the original
period above fixed.

(c) Where the appellant has been exempted

from paying the docket fee or making the deposit
for costs, or when the appellee is an employee,
laborer or tenant, he shall be allowed to file his
briefs in typewritten or mimeographed form.

Section 8. Repealing clause.— Section twelve of

Republic Act Numbered One thousand two hundred and
sixty-seven as amended; Section seven of Republic Act
Numbered Six hundred two, as amended; Section
twenty-three of Republic Act Numbered Eight hundred
and seventy-five; Section thirty-six of Commonwealth Act
Numbered Eighty-three, as amended; Section five of
Republic Act Numbered One thousand one hundred and
sixty-one, as amended, Section four of Republic Act
Numbered One thousand one hundred fifty-one;
Sections forty-eight and forty-nine of Republic Act
Numbered Seven hundred and seventy-six; Sections
sixty-three, sixty-four and sixty-five of Republic Act
Numbered One hundred and sixty-five, as amended;
Section two of Republic Act Numbered One thousand
two hundred and eighty-seven, Section thirty-three of
Republic Act Numbered One hundred sixty-six, and all
other portions of said Acts, and all other laws, rules and
regulations, or Rules of Court, or parts thereof, that are
inconsistent with the provisions of this Act, are hereby
amended, repealed or modified to conform herewith.

Section 9. Effectivity.— This Act shall take effect upon

its approval.
 assistance as it may need for the accomplishment of its
task.

Done in the City of Manila, this 20th day of November, in

the year of Our Lord, nineteen hundred and sixty-seven.

ADMINISTRATIVE ORDER NO. 94

CREATING A COMMITTEE TO UPDATE THE

PHILIPPINE PATENT SYSTEM

By virtue of the powers vested in me by law, I,

FERDINAND E. MARCOS, President of the Philippines,
do hereby create a committee to update the Philippine
patent system composed of the following:

The Secretary of Commerce and Industry Chairman

The Chairman, National Science Dev. Board Member
The Chairman, Philippines Patent Office “
The Chairman, Philippine Inventors Comm. “
The Director-General, Presidential Economic
”
Staff
The Director, Office of the National Planning,
”
National Economic Council

The Legal and Policy Research Office, Presidential

Economic Staff, shall act as Secretariat.

The Committee shall have the following powers and

functions:

1. Review the Philippine patent system and submit a

comprehensive amendatory bill to upgrade our laws
along international trends for protection of industrial
property;

2. Study and recommend means of coordinating the

activities of the Philippines Patent Office and the
Philippine Inventors Commission in order to reduce the
backlog in processing patent applications; and

3. Study and recommend means by which venture

capital may be made available to inventors to finance the
manufacture of inventions.

The Committee is empowered to call upon any

government office, agency or instrumentality for such

PRESIDENTIAL DECREE No. 721
FURTHER AMENDING PART IX OF THE
INTEGRATED REORGANIZATION PLAN BY
RECONSTITUTING THE DEPARTMENT OF TRADE.
WHEREAS, it is the declared policy of the government to
strengthen the socio-economic development in the field
of commercial activities by vigorous export promotion to
generate foreign exchange and by effective domestic
trade and marketing programs;
WHEREAS, with the creation of a separate Department
of Tourism and a Department of Industry, the role and
scope of activities of the Department of Trade
necessitate a redefinition; and
WHEREAS, there is an urgent need to realign
government efforts toward export and trade promotion
for greater effectiveness.
NOW, THEREFORE, I, FERDINAND E. MARCOS,
President of the Philippines, by virtue of the powers
vested in me by the constitution, do hereby adopt,
approve and make as part of the law of the land the
amendment to the provisions of Part IX of the Integrated
Reorganization Plan by reconstituting the Department of
Trade.
Accordingly, Part IX of the Integrated Reorganization
Plan is hereby amended to read as follows:
Section 1. Department proper.  The Department of
Trade, hereinafter referred to in this Decree as the
Department, shall be responsible for the promotion,
development, expansion, regulation and control of
foreign and domestic trade and in pursuance of this
responsibility shall be empowered and authorized to
issue such rules and regulations and adopt such
measures as to:
(a) consolidate and/or coordinate all functions and efforts
in particular and development of foreign trade in general;
(b) maintain reasonable allocation/distribution as
between domestic and export market through export
retention, export allocation, export subsidy, pricing,
export ban and other schemes and measures to ensure
price stability and supply availabilities of essential
commodities in the local market;
(c) regulate the import of essential consumers and
producers’ items a view to enhancing availability at fair
and competitive prices to end-users; and
(d) promote and regulate domestic trade, marketing and
distribution to ensure the rational, economic and steady
flow of commodities from producing and/or marketing
centers to areas in short-supply through the support of
centralized buying operations, terminal markets and
large scale and economical distribution systems
organized by the public or private sector.
Authority and responsibility for the Department is vested
in the Secretary of Trade, hereinafter referred to as the
Secretary. He shall be assisted by only one
Undersecretary.
The following are created in the Department Proper: (1)
Planning Service; (2) Financial and Management
Service; (3) Administrative Service; and (4) Legal
Service.
Section 2. Bureau of Domestic Trade.  The Bureau of
Domestic Trade shall, among others, consolidate
functions pertaining to local commerce and the
protection of the consuming public.
There are created the following divisions in the Bureau of
Domestic Trade:
(a) Trade Nationalization Division which shall implement
the provisions of Republic Act Numbered One Thousand
Three Hundred Eighteen, Republic Act Numbered One
Thousand One Hundred Eighty and all such laws relating
to the regulations of retail trade and other business in
Filipino citizens;
(b) Domestic Trade Promotion Division which shall
stimulate domestic commerce, establish trade
relationship among businessmen and encourage the
organization of merchant groups among Filipinos
engaged in different lines of business;
(c) Brokers Division which shall administer the licensing
of commercial brokers and real estate brokers and
appraisers, excluding brokers for stocks and securities;
(d) Consumer Protection Division which shall administer
the registration of business names, private merchants,
and bulk sales documents; and enforce laws on
monopolies and trade and practices in restraint of trade,
mislabeling and product misrepresentation, other unfair
trade practices and consumer protection in general, in
this last regard for which it shall coordinate with the Food
and Drug Administration of the Department of Health;
and
(e) Field Operations Divisions which shall extend the
services and functions of the Bureau to the different
regions, provinces and district of the country.
Section 3. Bureau of Foreign Trade. The Bureau of
Foreign Trade shall, among others, consolidate all
functions and efforts pertaining to the promotion of
exports in particular and development of foreign trade in
general.
The following divisions are created in the Bureau:
(a) Foreign Trade Promotion Division shall, among
others, conduct researches and studies on the promotion
and expansion of Philippine exports. It shall also provide
necessary information to interested persons and
businessmen on foreign trade development and
prospects.
(b) Export Service Coordination Division which shall,
among others, coordinate all activities and functions of
government agencies involved in the processing of
export papers. It shall also update, improve or simplify
the administrative procedures involved in the processing
of export papers.
(c) Foreign Trade Relations Division shall, among others,
deal with Philippine commercial relations with other
countries. It shall gather information on other countries’
economies and economic and commercial policies and
shall encourage Philippine participation in international
trade fairs and expositions.
All commercial attaches shall be appointed by, and
placed under the control of the Secretary and under the
supervision of the Director of the Bureau of Foreign
Trade, except when actually assigned to missions
abroad, in which case the provisions of Paragraph 3,
Article IV, Part XVIII of the Integrated Reorganization
Plan shall prevail.
Section 4. Securities and Exchange Commission. The
Securities and Exchange Commission shall, among
others, encourage the formation of partnership and
corporate ventures with widely and publicly held equity,
and protect the investing public from deceptions and
frauds in securities marketing.
The following divisions are retained in the Securities and
Exchange Commission:
(a) Stock Brokers and Exchange Division which shall,
among others, handle the regulation of activities of
securities, exchanges, brokers, dealers and their
salesmen; and
(b) Examiners and Appraisers Division which shall,
among others, handle the financial and accounting
phase of the visitorial functions of the Commission.
The Legal Enforcement Division is renamed Corporate
Division. It shall, among others, handle the processing of
corporation papers and by-laws, articles of association
and partnership agreements, the registration and
licensing of securities, and investigation of corporations.
The Securities and Exchange Commission shall be
converted into a collegial body composed of a full-time
Chairman and two full-time members who shall serve for
a term of six years for which the corresponding positions
are created. In the initial appointments of Chairman and
members, one shall be appointed to service for six
years, one for four years, and one for two years. The
positions of Commissioner and Deputy Commissioner
are hereby abolished: Provided, That the incumbent
Commissioner shall continue to serve the Commission in
accordance with Paragraph 13, Article 1, Chapter 1, Part
XXIII of the Integrated Reorganization Plan.
Section 5. Philippines  Bureau of Products
Standards. The Bureau of Standards is renamed
Philippines Bureau of Products Standards which shall,
among others, be responsible for establishing standards
for commodities, inspection and certification of products
for exports and local distribution, and inspection and
certification of products imported by the country.
Section 6. Philippines Patent office. The Philippines
Patent Office shall, among others, be responsible for the
promotion of scientific research and inventions; and for
the protection of owners of industrial property rights.
In addition to the General Organic Chemistry Division;
Chemical Technology Division; Mechanical Division;
Electrical, Design and Utility Model Examining Division;
and the Trademark Examining Division, the following
divisions are created.
(a) Legal Service Division which shall, among others,
render legal advise to the Director of Patents and to hear
and decide inter-parte cases, oppositions, cancellations,
interferences, public-use proceedings and matters
dealing with compulsory licensing.
(b) Research and Information Division which shall,
among others, be responsible for the conduct or
researches on various subjects, act as custodian of all
scientific and legal books of the Office and shall perform
library service functions, and product and disseminate
information pertaining to office and court decisions on
patent and trademark case.
Section 7. Bureau of Fiber Inspection Service.  The appropriated for the remainder of Fiscal year nineteen
Bureau of Fiber Inspection Service is renamed Bureau of hundred and seventy-five (1974-1975).
Fiber Development and Inspection Service, which shall,
among others, be responsible for the maintenance and Section 13. Personnel.  Except for such technical
enforcement of a uniform standard classification of positions as the Secretary may recommend to and be
abaca and other Philippine fibers intended for export and approved by the president, all positions in the
for domestic consumption. Department shall be subject to the provisions of Civil
Service Law and the rules and regulations of the Wage
Section 8. ECAFE UNIT.  The ECAFE Unit is renamed and Position Classification Office (WAPCO).
ESCAP (Economic and Social Commission forAsia and
the Pacific) Unit. The ESCAP Unit of the Philippine Section 14. Repeal.  Any and all existing statutes,
Committee on ESCAP matters is retained in the decree, rules and regulations, or parts thereof
Department and its functions shall include, among inconsistent herewith are repealed or modified
others, to act as liaison agency for securing quick accordingly.
exchange of information between the ESCAP Secretariat
and the Philippine Government and the various Section 15. Effectivity.  This Decree shall take effect
governments in the ESCAP region and to work for the immediately.
implementation of resolution or studies approved or
undertaken by the Commission and ESCAP Secretariat,
respectively. Done in the City of Manila, this 2nd day of June, in the
year of Our Lord, nineteen hundred and seventy-five.
Section 9. UNCTAD Unit.  The UNCTAD Unit of the
Philippine Committee on UNCTAD matters is maintained
in the Department and its functions, shall include, among
others, to act as liaison agency in the various areas of
economic and trade development between the United
Nations Conference on Trade and Development
(UNCTAD) and the Philippine Government in the various
trade aspects of international economic cooperation and
to undertake the implementation of resolution and
studies recommended and approved by the inter-agency
committee involved.

Section 10. Government-Owned or Controlled

Corporations and Agencies attached to the Department
of Trade. The following agencies are attached to the
Department: (a) Philippine Export Credit Insurance and
Guarantee Corporation; (b) Permanent Committee for
the Implementation of the Philippine Indonesian
Agreement on Economic and Technical Cooperation; d)
Design Center Philippines; (e) Metric System Board; (f)
Philippine Shipper’s Council; (g) Cottage Industry
Development Council (CIDC); (h) Cottage Industry
Development Enterprise (CIDE); (i) National Cottage
Industries Development Authority (NACIDA); and (j)
Nacida Bank.

Section 11. Price Control Council.  The Price Control

Council is renamed Price Stabilization Council and
placed under the administrative supervision of the
Department.

Section 12. Trade Assistance Centers. The putting up of

trade assistance centers with an appropriation of four
million five hundred thousand pesos (P4,500,000) under
the current Annual General Appropriation Decree is
hereby transferred from the Bureau of Domestic Trade to
the Office of the Secretary. To carry out the purposes of
the trade assistance centers, the sum of two million two
hundred fifty thousand pesos (P2,250,000) is hereby

PRESIDENTIAL DECREE No. 1263
AMENDING PORTIONS OF REPUBLIC ACT NO. 165
OTHERWISE KNOWN AS THE PATENT LAW
WHEREAS, certain provisions of Republic Act No. 165,
otherwise known as the Patent Law, have become
obsolete and are inadequate to meet the demands of our
primordial goal of industrial and overall national
economic development;
WHEREAS, this goal can, to a significant extent, be
promoted through the licensing of patents;
NOW, THEREFORE, I, FERDINAND E. MARCOS,
President of the Philippines, by virtue of the powers
vested in me by the Constitution, do hereby order and
decree the following:
Section 1. Chapter VIII of republic Act Numbered 165 is
hereby amended to read as follows:
"CHAPTER VIII Licensing
"ARTICLE ONE. Voluntary Licensing
"Sec. 33-A. Voluntary License Contracts. (1) All
voluntary license contracts as well as renewals thereof
involving payment of royalty for the use of patents,
transfer of technology, or furnishing of services
respecting patents of technology, or furnishing of
services respecting patents shall, whenever entered into
between residents and non-residents, be submitted to
the Technology Resource center for prior approval and
registration.
"(2) The royalty to be granted in all license contracts
involving manufacturing (including actual transfer of
technology services such as secret formulate,
processes, technical know-how and the like) shall,
whenever entered into between an alien licensor and a
Filipino licensee, not exceed five per cent (5%) of the net
wholesale price of the articles manufactured under the
royalty agreement and shall be equally distributed to all
the patentees in cases where more than one patent
similar to that contemplated in Section 34-C hereof are
involved.
(3) The term "net wholesale price" means the gross
amount billed for the patented product subject to royalty
less;
"(a) Trade, quality, or cash discounts, and
broker's or agent's commission, if any, allowed
or paid;
"(b) Credits or allowances, if any, given or made
on account of rejection or return of the patented
product previously delivered; and
"(c) Any tax, excise or other government charge,
included in such amount, on, or measured by,
the production, sale, use or delivery of the
patented product.
"(4) Unless and until approved and registered in
accordance with paragraph (1) of this section, the
license contract contemplated therein may not be the
subject of an application filed with either the Board of
Investment or the Central Bank of the Philippines.
Neither will it have an effect against third persons until
such registration.
"Sec. 33-B. Rights of Licensor. (1) In the absence of any
provision of the contrary in the license contract, the grant
of a license shall not prevent the licenses from granting
further licenses to third persons nor from exploiting the
invention himself.
"(2) Without prejudice to the grant of a compulsory
license in accordance with Section 34 hereof, the grant
of an exclusive license shall prevent the licensor form
granting further licenses to third persons and, unless
otherwise expressly provided in the license contract,
from exploiting the invention himself.
"Sec. 33-C. Rights of Licensee. (1) The license shall be
entitled to exploit the invention during the whole duration
of the patent in the entire territory of the Philippines
through any application of the invention, and in respect
of all acts referred to in sections 37 and 42.
"(2) Clauses of the following tenor contained in license
contracts shall be null and void:
"(a) Those which impose upon the licensee the
obligation to acquire from a specific source
capital goods, intermediate products, raw
materials, and other technologies, or of
permanently employing personnel indicated by
the licensor;
"(b) Those pursuant to which the licensor
reserves the right to fix the sale or resale prices
of the products manufactured on the basis of the
license;
"(c) Those that contain restrictions regarding the
volume and structure of production;
"(d) Those that prohibit the use of competitive
technologies;
"(e) Those that establish a full or partial
purchase option in favor of the licensor;
"(f) Those that obligate the licensee to transfer to
the licensor the inventions or improvements that
may be obtained through the use of the licensed
technology;
"(g) Those that require payment of royalties to
the owners of patents for patents which are not
used;
"(h) Those that prohibit the licensee to export the
licensed product; and
"(i) Other clauses with equivalent effects.
"ARTICLE TWO. Compulsory Licensing
"Sec. 34. Grounds for Compulsory Licensing. (1) Any
person may apply to the Director for the grant of a
license under a particular patent at any time after the
expiration of two years from the date of the grant of the
patent, under any of the following circumstances;
"(a) If the patented invention is not being worked
within the Philippines on a commercial scale,
although capable of being so worked, without
satisfactory reason;
"(b) If the demand for the patented article in the
Philippines is not being met to an adequate
extent and on reasonable terms;
"(c) If, by reason of refusal of the patentee to
grant a license or licenses on reasonable terms,
or by reason of the conditions attached by the
patentee to article or working of the patented
process or machine for production, the
establishment of any new trade or industry in the
Philippines is prevented, or the trade or industry
therein is unduly restrained;
"(d) If the working of the invention within the
country is being prevented or hindered by the
importation of the patented article; or
"(2) In any of the above cased, a compulsory license
shall be granted to the petitioner provided that he has
proved his capability to work the patented product or to
make use of the patented product in the manufacture of
a useful product, or to employ the patented process.
"(3) The term "worked" or "working" as used in this
section means the manufacture and sale of the patented
article, of the patented machine, or the application of the
patented process for production, in or by means of a
definite and substantial establishment or organization in
the Philippines and on a scale which is reasonable and
adequate under the circumstances. Importation shall not
constitute "working."
"Sec. 34-A. Products of Processes Vital to National
Defense, Economy of Health. The National Economic
Development Authority may, by order, provide that for
certain categories of such products or processes or for
certain categories of such products or processes, which
are declared in such order to be of vital importance to
the country's defense or economy or to public health,
compulsory license may be granted under the conditions
provided in the next preceding section the conditions
provided in the next preceding section even before the
expiration of the period mentioned therein.
Sec. 34-B. Product, Substances or Processes Subject of
Project Approved by the Board of Investments. (1) All
products or substances and/or processes involved in any
industrial project approved by the Board of Investments
under the Investment Incentives Act shall be deemed
products or substances and/or processes vital to the
national defense or economy or to public health. If the
proponent of the project is neither a patentee not
licensee of any of the products, substances or processes
involved therein, a compulsory license may, upon
application by the proponent or endorsement made by
the Board of Investments, be issued in his favor by the
Director of Patents without need of complying with the
provisions of Section 34 and 34-A.
"(2) In cases falling under the foregoing
paragraph, the requirements of Sections 34-D
and 34-E shall be complied with, but no hearing
shall be necessary except to determine the
identity of the patent owner of the products,
substances or processes subject of the
application or endorsement. If two or more
patents exist for the same product, substance or
process, the license shall be granted under all
subsisting patents involved.
Sec. 34-C. Compulsory License Based Upon
Interdependence of Patents. If an invention protected by
a patent within the country cannot be worked without
infringing rights derived from a patent granted on a
priority, a compulsory license may, upon application and
without necessity of complying with the requirements of
Sections 34, be granted under the conditions specified in
Section 35 to the registered owner of the latter patent, to
the extent necessary for the working of his invention and
insofar as such invention forming the subject of the
earlier patent, or constitutes noteworthy technical
progress in relation to it.
Sec. 34-D. Form and Contents of Petition. The petition
for compulsory licensing must be in writing and verified
by the petitioner and accompanied by the required filing
fee. It shall give the name and address of the petitioner
as well as those of the necessary party or parties
respondent; and shall state the number and date of issue
of the patent in connection with which compulsory
license is sought; the name of the patentee; the title of
the invention; the statutory ground of grounds upon
which compulsory license is sought; the ultimate facts
constituting the petitioner's cause of action; and relief
prayed for.
Sec. 34-E. Notice of Hearing. (1) Upon filing of a petition
under Section 34, a notice shall be given in the same
manner and form as that provided in section 31, Chapter
VII hereof. The resident agent or representative
appointed in accordance with the rules of practice before
the Patent Office in patent cases shall be found to
accept service of notice of filing of the petition within the
meaning of this section.
"(2) In every case, the notice shall be published
in a newspaper of general circulation in the
country three times for three consecutive weeks.
"Sec. 35. Grant of License. (1) If the Director finds that a
case for the grant is a license under Section 34 hereof
has been made out, he shall, within one hundred eighty
days from the date the petition was filed, order the grant
of an appropriate license. The order shall state the terms
and conditions of the license which he himself must fix in
default of an agreement on the matter manifested or
submitted by the parties during the hearing.
"(2) A compulsory license sought under Section
34-B shall be issued within one hundred twenty
days from the filing of the proponent's
application or receipt of the Board of
Investment's endorsement.
"Sec. 35-A. Rights of Compulsory License. The
compulsory license shall give the licensee the right of
patentees referred to in Section 37 and 42 hereof.
Sec. 35-B. Terms and Conditions of Compulsory
License. (1) A compulsory license shall be non-
exclusive, but this shall be without prejudice to the
licensee's right to oppose an application for a new such
license.
"(2) The terms and conditions of a compulsory
license, fixed in accordance with Section 35,
may contain obligations and restrictions both for
the licensee and for the registered owner of the
patent.
"(3) A compulsory license shall only be granted
subject to the payment of adequate royalties
commensurate with the extent to which the
invention is worked. However, royalty payments
shall not exceed five per cent (5%) of the net
wholesale price (as defined in section 33-A) of
the product, substance, or process subject of the
compulsory license is involved in an industrial
project approved by the Board of Investments,
the royalty payable to the patentee or patentees
shall not exceed three per cent (3%) of the net
wholesale price (as defined in Section 34-A) of
the patented commodity manufactured under the
patented process; the same rate of royalty shall
be paid whenever two or more patents are
involved, which royalty shall be distributed to the
patentees in rates in rates proportional to the
extent of commercial use by the licensee giving
preferential values to the holder of the oldest
subsisting product patent.
"Sec. 35-C. Transfer of Compulsory License. A
compulsory license can only be transferred with the
undertaking which uses the patented invention. Any such
transfer shall, on pain of invalidity, require the
authorization of the Director of Patents and its
registration in accordance with Section 33-A.
"Sec. 35-D. Amendment and Cancellation. (1) Upon
request of the registered owner of the patent or of the
licensee, the terms of the compulsory license may be
amended by the Director of Patents when new facts
justify it, in particular when the registered owner of the
patent grants contractual licenses on terms more
favorable to the contractual licensees.
"(2) At the request of the registered owner of the
patent, the compulsory license may be canceled
 if the licensee does not comply with the
prescribed terms of the license.
"(3) The provisions of Sections 33-A and 35
shall apply with respect to amendments and
cancellations of compulsory licenses."
"ARTICLE THREE Common Provision
"Sec. 35-E. Licensee's Exemption form Liability. (1) Any
one who works a patented product, substance and/or
process under a license granted under this Chapter shall
be free from any liability for infringement, provided that in
the case of voluntary licensee no conclusion with the
licensor is proven. This is without prejudice to the right of
the rightful owner of the patent to recover from the
licensor whatever he may have received as royalties
under the license.
"(2) The existence of a conflict between two or
more patents shall in no way affect the right of
the licensee under this Chapter to work the
invention, and no injunction or other court
process shall be valid and enforced which
interferes with this right. Any person violating
this provision shall be punished by a fine not
less than Five Thousand Pesos but not
exceeding Thirty Thousand Pesos but not
exceeding Thirty Thousand Pesos or by
imprisonment of not less than one year but not
exceeding five years."
Section 2. Section 75 of the same Act is hereby
amended to read as follows:
"Sec. 75. Fees. The following fees shall be paid for filing
an application for patent which shall include the cost of
publication in the official Gazette, Four Hundred Pesos, if
it is an invention patent and Two Hundred pesos, if it is a
utility model or design patent, upon filing each
application and, if it is on invention patent, Twenty-Five
Pesos for each claim in excess of five claims presented
on filing or at any other time.
For issuing each original invention patent, One Hundred
Pesos.
For annual fees due at the beginning of the fifth and
each succeeding year, Two Hundred Pesos each; for
surcharge for delayed payment of annual fee, Fifty
Pesos; for reinstating a lapse patent, Two Hundred
Pesos; for filing a petition for cancellation, except when
filed by the Solicitor General, One Hundred Pesos; for
filing a petition for compulsory license, Two Hundred
Pesos; for copies of records of the Office, Two Pesos
per hundred words of typewritten copy;
"For each certification of copy of any record, Twenty
Pesos;
"For recording assignment, and other documents relating
to title and license, Twenty Pesos;
"For notice of appeal to the Court of Appeals from an
order or decision of the Chief Patent Examiner, Fifty
Pesos;
For renewing a design or utility model patent, One
Hundred Fifty Pesos;
"For surcharge of delayed renewal of a design or utility
model patent, Forty Pesos; and
"For services not otherwise specified, the Director shall
provide, by regulation, the fees therefor.
"The Director may by rule fix higher fees for nationals
from the developed countries.
"The Philippine Investors Commission shall be exempt
from paying the above fees but only with respect to
application filed by it in behalf of indigent inventors."
Section 3. The same Act is further amended by inserting
between Sections eighty-two and eighty-three the
following new section:
"Sec. 82-A. The Director shall authorized to use and
spend a portion not to exceed fifty per cent of the
Office's total income for the improvement of facilities and
services as well as for equipment outlay, for
implementation of this Act including expenses for
participation in the World Intellectual Property
Organization and similar organizations concerned with
international cooperation in the expeditious processing of
patent applications."
Section 4. This Decree shall become effective thirty
days following its promulgation.
Done in the City of Manila, this 14th day of December, in
the year of Our Lord, nineteen hundred and seventy-
seven.
EXECUTIVE ORDER NO. 60

CREATING THE INTER-AGENCY COMMITTEE ON

INTELLECTUAL PROPERTY RIGHTS

WHEREAS, Intellectual Property Rights – patents,

trademarks and copyrights – have gained universal
importance because of the important role technology
plays in influencing international economics and trade;

WHEREAS, government policies related to Intellectual

Property Rights would have far-reaching economic
implications on our trade relations with our trading
partners;

WHEREAS, the recognition and adequate protection of

the rights of inventors, authors, and trademarks owners
should enhance the economic environment needed to
attract foreign investments;

WHEREAS, it is the policy of the Government to protect

intellectual properties against infringements, piracy and
counterfeiting;

WHEREAS, there is a pressing need to have close

coordination among government agencies responsible
for the protection of intellectual property rights;

WHEREAS, there is a pressing need to come up with

concerted efforts in the policy formulation of the
Government in order to effectively combat piracy and
counterfeiting of intellectual property rights;

WHEREAS, the Government is now currently in the

process of evaluating its present laws on intellectual
property rights in consonance with its multilateral and
bilateral commitments;

NOW, THEREFORE, I, FIDEL V. RAMOS, President of

the Republic of the Philippines, by virtue of the powers
vested in me by law, do hereby order:

Section 1. Organization. – There is hereby created an

Inter-Agency Committee on Intellectual Property Rights
(hereinafter called the “Committee”) under the Office of
the President.

Section 2. Composition. – The Committee shall be

composed of the Secretary of Trade and Industry, as
Chairman, the Secretary of Justice and Secretary of
Finance as Vice-Chairman, and the following as
Members: the Chief Presidential Legal Counsel, the
Director of the National Bureau of Investigation, the
Chief of the Philippine National Police, the
Commissioner of the Bureau of Customs, the Chairman
of the Videogram Regulatory Board, the Commissioner
of the National Telecommunications Commission, the
Chief of the Copyright Office of the National Library, the
Director of the Bureau of Patents, Trademarks and
Technology Transfer, the Director of the Bureau of Trade
Regulations and Consumer Protection, and one
representative each from two major non-government
organizations involved in the protection and promotion of
intellectual property rights to be determined by the
Committee.
Section 3. Powers and Functions. – The Committee
shall have the following powers and functions:
a. Recommend policies and coordinate the policy
making process in the Executive Branch of the
Government vis-a-vis protection and enforcement of
intellectual property rights;
b. Coordinate with the different agencies of the
Executive, Legislative and Judicial Branches of the
Government in order to effectively address the problem
areas arising from infringement and counterfeiting of
intellectual property rights;
c. Enlist the assistance of any branch, department,
bureau, office, agency or instrumentality of the
Government, including government-owned and
controlled corporations, in the anti-piracy and
counterfeiting drive, which may include the use of its
personnel, facilities and resources for a more resolute
prevention, detection and investigation of violations of
laws enumerated in paragraph (d) hereof, and
prosecution of criminal and administrative cases;
d. Cause and direct the immediate investigation and
speedy prosecution of cases involving violations of
copyright, trademarks, patents and other intellectual
property related laws or such intellectual property theft-
related cases that is referred to the Committee;
e. Recommend the transfer of a case involving violations
of the laws or statutes detailed in paragraph (d) hereon
from any law enforcement agency or prosecution office,
as the Committee may deem proper and necessary, in
the interest of efficient and expeditious dispensation of
criminal justice, and monitor for speedy resolution such
cases under investigation or prosecution as the case
may be, by the appropriate operating or implementing
agency herein provided;
f. Refer, as the Committee may deem proper and for the
same reasons stated in the preceding paragraph, to the
appropriate law enforcement agency or prosecution
office, the investigation or prosecution, as the case may
be, of any of the cases adverted to in paragraph (d)
hereof;
g. Monitor the progress of on-going investigation and
prosecution of cases taken cognizance of by the
Committee;
h. Prepare and implement a fast-track anti-piracy and
counterfeiting plan of action and adopt appropriate
strategies and measures to ensure an effective and
efficient anti-piracy and counterfeiting program, and
public adherence to and compliance with all domestic
and international laws for the protection of intellectual
property rights;
i. Coordinate with the appropriate government agencies
and non-governmental organizations an information
dissemination campaign on intellectual property rights
and the measures that have to be adopted to address
the issues.
j. Recommend appropriate intellectual property rights
issuances and legislation to the President and Congress;
k. Consider the granting of monetary rewards and
incentives to informants who are willing to give vital
information to build up cases for the prosecution of
criminal offenders as provided under existing laws; and
l. Perform such other functions necessary in the
pursuance of its objectives.
Section 4. Technical and Administrative Staff. – The
Committee shall organize its Secretariat under the Office
of the Secretary of Trade and Industry to be headed by
an Executive Officer designated by the Chairman.
Section 5. Funding. – The Committee shall, upon the
recommendation of the Chairman, be provided with an
initial budget to be determined and approved by the
President. Appropriations for the succeeding years shall
be incorporated in the budget proposals under the Office
of the President.
Section 6. Operating Guidelines. – The Committee
shall adopt such operating guidelines as may be
necessary to implement this Executive Order.
Section 7. Effectivity. – This Executive Order shall take
effect immediately.
DONE in the City of Manila, this 26th day of February in
the year of Our Lord, Nineteen Hundred and Ninety-
Three.

G.R. No. 148222               August 15, 2003
PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,
vs.
SHOEMART, INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED, Respondents.
DECISION
CORONA, J.:
In the instant petition for review on certiorari under Rule
45 of the Rules of Court, petitioner Pearl & Dean (Phil.)
Inc. (P & D) assails the May 22, 2001 decision1 of the
Court of Appeals reversing the October 31, 1996
decision2 of the Regional Trial Court of Makati, Branch
133, in Civil Case No. 92-516 which declared private
respondents Shoemart Inc. (SMI) and North Edsa
Marketing Inc. (NEMI) liable for infringement of
trademark and copyright, and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of
Appeals3 contained a summary of this dispute:
"Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a
corporation engaged in the manufacture of advertising
display units simply referred to as light boxes. These
units utilize specially printed posters sandwiched
between plastic sheets and illuminated with back lights.
Pearl and Dean was able to secure a Certificate of
Copyright Registration dated January 20, 1981 over
these illuminated display units. The advertising light
boxes were marketed under the trademark "Poster Ads".
The application for registration of the trademark was filed
with the Bureau of Patents, Trademarks and Technology
Transfer on June 20, 1983, but was approved only on
September 12, 1988, per Registration No. 41165. From
1981 to about 1988, Pearl and Dean employed the
services of Metro Industrial Services to manufacture its
advertising displays.
Sometime in 1985, Pearl and Dean negotiated with
defendant-appellant Shoemart, Inc. (SMI) for the lease
and installation of the light boxes in SM City North Edsa.
Since SM City North Edsa was under construction at that
time, SMI offered as an alternative, SM Makati and SM
Cubao, to which Pearl and Dean agreed. On September
11, 1985, Pearl and Dean’s General Manager, Rodolfo
Vergara, submitted for signature the contracts covering
SM Cubao and SM Makati to SMI’s Advertising
Promotions and Publicity Division Manager, Ramonlito
Abano. Only the contract for SM Makati, however, was
returned signed. On October 4, 1985, Vergara wrote
Abano inquiring about the other contract and reminding
him that their agreement for installation of light boxes
was not only for its SM Makati branch, but also for SM
Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMI’s house
counsel informed Pearl and Dean that it was rescinding
the contract for SM Makati due to non-performance of
the terms thereof. In his reply dated February 17, 1986,
Vergara protested the unilateral action of SMI, saying it
was without basis. In the same letter, he pushed for the
signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company
formerly contracted by Pearl and Dean to fabricate its
display units, offered to construct light boxes for
Shoemart’s chain of stores. SMI approved the proposal
and ten (10) light boxes were subsequently fabricated by
Metro Industrial for SMI. After its contract with Metro
Industrial was terminated, SMI engaged the services of
EYD Rainbow Advertising Corporation to make the light
boxes. Some 300 units were fabricated in 1991. These
were delivered on a staggered basis and installed at SM
Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that
exact copies of its light boxes were installed at SM City
and in the fastfood section of SM Cubao. Upon
investigation, Pearl and Dean found out that aside from
the two (2) reported SM branches, light boxes similar to
those it manufactures were also installed in two (2) other
SM stores. It further discovered that defendant-appellant
North Edsa Marketing Inc. (NEMI), through its marketing
arm, Prime Spots Marketing Services, was set up
primarily to sell advertising space in lighted display units
located in SMI’s different branches. Pearl and Dean
noted that NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a
letter dated December 11, 1991 to both SMI and NEMI
enjoining them to cease using the subject light boxes
and to remove the same from SMI’s establishments. It
also demanded the discontinued use of the trademark
"Poster Ads," and the payment to Pearl and Dean of
compensatory damages in the amount of Twenty Million
Pesos (P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the
leasing of two hundred twenty-four (224) light boxes and
NEMI took down its advertisements for "Poster Ads"
from the lighted display units in SMI’s stores. Claiming
that both SMI and NEMI failed to meet all its demands,
Pearl and Dean filed this instant case for infringement of
trademark and copyright, unfair competition and
damages.
In denying the charges hurled against it, SMI maintained
that it independently developed its poster panels using
commonly known techniques and available technology,
without notice of or reference to Pearl and Dean’s
copyright. SMI noted that the registration of the mark
"Poster Ads" was only for stationeries such as
letterheads, envelopes, and the like. Besides, according
to SMI, the word "Poster Ads" is a generic term which
cannot be appropriated as a trademark, and, as such,
registration of such mark is invalid. It also stressed that
Pearl and Dean is not entitled to the reliefs prayed for in
its complaint since its advertising display units contained
no copyright notice, in violation of Section 27 of P.D. 49.
SMI alleged that Pearl and Dean had no cause of action
against it and that the suit was purely intended to malign
SMI’s good name. On this basis, SMI, aside from praying
for the dismissal of the case, also counterclaimed for
moral, actual and exemplary damages and for the
cancellation of Pearl and Dean’s Certification of
Copyright Registration No. PD-R-2558 dated January
20, 1981 and Certificate of Trademark Registration No.
4165 dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed
or used any advertising display units, nor having
engaged in the business of advertising. It repleaded
SMI’s averments, admissions and denials and prayed for
similar reliefs and counterclaims as SMI."
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly
and severally liable for infringement of copyright under
Section 2 of PD 49, as amended, and infringement of
trademark under Section 22 of RA No. 166, as amended,
and are hereby penalized under Section 28 of PD 49, as
amended, and Sections 23 and 24 of RA 166, as
amended. Accordingly, defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - ₱16,600,000.00,
representing profits
derived by defendants
as a result of infringe-
ment of plaintiff’s copyright
from 1991 to 1992
(b) moral damages - ₱1,000.000.00
(c) exemplary damages - ₱1,000,000.00
(d) attorney’s fees - ₱1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding in the
National Library, all light boxes of SMI which
were fabricated by Metro Industrial Services and
EYD Rainbow Advertising Corporation;
(3) to deliver, under oath, to the National Library,
all filler-posters using the trademark "Poster
Ads", for destruction; and
(4) to permanently refrain from infringing the
copyright on plaintiff’s light boxes and its
trademark "Poster Ads".
Defendants’ counterclaims are hereby ordered
dismissed for lack of merit.
SO ORDERED.4
On appeal, however, the Court of Appeals reversed the
trial court:
Since the light boxes cannot, by any stretch of the
imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box
wraps, to be properly classified as a copyrightable class
"O" work, we have to agree with SMI when it posited that
what was copyrighted were the technical drawings only,
and not the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian
object, a copyright over the drawings like plaintiff-
appellant’s will not extend to the actual object. It has so
been held under jurisprudence, of which the leading
case is Baker vs. Selden (101 U.S. 841 (1879). In that
case, Selden had obtained a copyright protection for a
book entitled "Selden’s Condensed Ledger or
Bookkeeping Simplified" which purported to explain a
new system of bookkeeping. Included as part of the book
were blank forms and illustrations consisting of ruled
lines and headings, specially designed for use in
connection with the system explained in the work. These
forms showed the entire operation of a day or a week or
a month on a single page, or on two pages following
each other. The defendant Baker then produced forms
which were similar to the forms illustrated in Selden’s
copyrighted books. The Court held that exclusivity to the
actual forms is not extended by a copyright. The reason
was that "to grant a monopoly in the underlying art when
no examination of its novelty has ever been made would
be a surprise and a fraud upon the public; that is the
province of letters patent, not of copyright." And that is
precisely the point. No doubt aware that its alleged
original design would never pass the rigorous
examination of a patent application, plaintiff-appellant
fought to foist a fraudulent monopoly on the public by
conveniently resorting to a copyright registration which
merely employs a recordal system without the benefit of
an in-depth examination of novelty.
The principle in Baker vs. Selden was likewise applied
in Muller vs. Triborough Bridge Authority [43 F. Supp.
298 (S.D.N.Y. 1942)]. In this case, Muller had obtained a
copyright over an unpublished drawing entitled "Bridge
Approach – the drawing showed a novel bridge
approach to unsnarl traffic congestion". The defendant
constructed a bridge approach which was alleged to be
an infringement of the new design illustrated in plaintiff’s
drawings. In this case it was held that protection of the
drawing does not extend to the unauthorized duplication
of the object drawn because copyright extends only to
the description or expression of the object and not to the
object itself. It does not prevent one from using the
drawings to construct the object portrayed in the
drawing.
In two other cases, Imperial Homes Corp. v. Lamont,
458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379
F. 2d 84, it was held that there is no copyright
infringement when one who, without being authorized,
uses a copyrighted architectural plan to construct a
structure. This is because the copyright does not extend
to the structures themselves.
In fine, we cannot find SMI liable for infringing Pearl and
Dean’s copyright over the technical drawings of the
latter’s advertising display units.
xxx xxx xxx
The Supreme Court trenchantly held in Faberge,
Incorporated vs. Intermediate Appellate Court that the
protective mantle of the Trademark Law extends only to
the goods used by the first user as specified in the
certificate of registration, following the clear mandate
conveyed by Section 20 of Republic Act 166, as
amended, otherwise known as the Trademark Law,
which reads:
SEC. 20. Certification of registration prima facie
evidence of validity.- A certificate of registration of a
mark or trade-name shall be prima facie evidence of the
validity of the registration, the registrant’s ownership of
the mark or trade-name, and of the registrant’s exclusive
right to use the same in connection with the goods,
business or services specified in the certificate, subject
to any conditions and limitations stated therein."
(underscoring supplied)
The records show that on June 20, 1983, Pearl and
Dean applied for the registration of the trademark
"Poster Ads" with the Bureau of Patents, Trademarks,
and Technology Transfer. Said trademark was recorded
in the Principal Register on September 12, 1988 under
Registration No. 41165 covering the following products:
stationeries such as letterheads, envelopes and calling
cards and newsletters.
With this as factual backdrop, we see no legal basis to
the finding of liability on the part of the defendants-
appellants for their use of the words "Poster Ads", in the
advertising display units in suit. Jurisprudence has
interpreted Section 20 of the Trademark Law as "an
implicit permission to a manufacturer to venture into the
production of goods and allow that producer to
appropriate the brand name of the senior registrant on
goods other than those stated in the certificate of
registration." The Supreme Court further emphasized the
restrictive meaning of Section 20 when it stated, through
Justice Conrado V. Sanchez, that:
Really, if the certificate of registration were to be deemed
as including goods not specified therein, then a situation
may arise whereby an applicant may be tempted to
register a trademark on any and all goods which his
mind may conceive even if he had never intended to use
the trademark for the said goods. We believe that such
omnibus registration is not contemplated by our
Trademark Law.
While we do not discount the striking similarity between
Pearl and Dean’s registered trademark and defendants-
appellants’ "Poster Ads" design, as well as the parallel
use by which said words were used in the parties’
respective advertising copies, we cannot find
defendants-appellants liable for infringement of
trademark. "Poster Ads" was registered by Pearl and
Dean for specific use in its stationeries, in contrast to
defendants-appellants who used the same words in their
advertising display units. Why Pearl and Dean limited the
use of its trademark to stationeries is simply beyond us.
But, having already done so, it must stand by the
consequence of the registration which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-
appellants that the words "Poster Ads" are a simple
contraction of the generic term poster advertising. In the
absence of any convincing proof that "Poster Ads" has
acquired a secondary meaning in this jurisdiction, we
find that Pearl and Dean’s exclusive right to the use of
"Poster Ads" is limited to what is written in its certificate
of registration, namely, stationeries.
Defendants-appellants cannot thus be held liable for
infringement of the trademark "Poster Ads".
There being no finding of either copyright or trademark
infringement on the part of SMI and NEMI, the monetary
award granted by the lower court to Pearl and Dean has
no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed
decision is REVERSED and SET ASIDE, and another is
rendered DISMISSING the complaint and counterclaims
in the above-entitled case for lack of merit.5
Dissatisfied with the above decision, petitioner P & D
filed the instant petition assigning the following errors for
the Court’s consideration:
A. THE HONORABLE COURT OF APPEALS
ERRED IN RULING THAT NO COPYRIGHT
INFRINGEMENT WAS COMMITTED BY
RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF APPEALS
ERRED IN RULING THAT NO INFRINGEMENT
OF PEARL & DEAN’S TRADEMARK "POSTER
ADS" WAS COMMITTED BY RESPONDENTS
SM AND NEMI;
C. THE HONORABLE COURT OF APPEALS
ERRED IN DISMISSING THE AWARD OF THE
TRIAL COURT, DESPITE THE LATTER’S
FINDING, NOT DISPUTED BY THE
HONORABLE COURT OF APPEALS, THAT SM
WAS GUILTY OF BAD FAITH IN ITS
NEGOTIATION OF ADVERTISING
CONTRACTS WITH PEARL & DEAN.
D. THE HONORABLE COURT OF APPEALS
ERRED IN NOT HOLDING RESPONDENTS
SM AND NEMI LIABLE TO PEARL & DEAN
FOR ACTUAL, MORAL & EXEMPLARY
DAMAGES, ATTORNEY’S FEES AND COSTS
OF SUIT.6
ISSUES
In resolving this very interesting case, we are challenged
once again to put into proper perspective four main
concerns of intellectual property law — patents,
copyrights, trademarks and unfair competition arising
from infringement of any of the first three. We shall focus
then on the following issues:
(1) if the engineering or technical drawings of an
advertising display unit (light box) are granted
copyright protection (copyright certificate of
registration) by the National Library, is the light
box depicted in such engineering drawings ipso
facto also protected by such copyright?
(2) or should the light box be registered
separately and protected by a patent issued by
the Bureau of Patents Trademarks and
Technology Transfer (now Intellectual Property
Office) — in addition to the copyright of the
engineering drawings?
(3) can the owner of a registered trademark
legally prevent others from using such trademark
if it is a mere abbreviation of a term descriptive
of his goods, services or business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & D’s complaint was that SMI infringed on its
copyright over the light boxes when SMI had the units
manufactured by Metro and EYD Rainbow Advertising
for its own account. Obviously, petitioner’s position was
premised on its belief that its copyright over the
engineering drawings extended ipso facto to the light
boxes depicted or illustrated in said drawings. In ruling
that there was no copyright infringement, the Court of
Appeals held that the copyright was limited to the
drawings alone and not to the light box itself. We agree
with the appellate court.
First, petitioner’s application for a copyright certificate —
as well as Copyright Certificate No. PD-R2588 issued by
the National Library on January 20, 1981 — clearly
stated that it was for a class "O" work under Section 2
(O) of PD 49 (The Intellectual Property Decree) which
was the statute then prevailing. Said Section 2 expressly
enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the
following works:
x x x           x x x          x x x
(O) Prints, pictorial illustrations, advertising copies,
labels, tags, and box wraps;
x x x           x x x          x x x
Although petitioner’s copyright certificate was entitled
"Advertising Display Units" (which depicted the box-type
electrical devices), its claim of copyright infringement
cannot be sustained.
Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights
are limited to what the statute confers. It may be
obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions
specified in the statute.7 Accordingly, it can cover only
the works falling within the statutory enumeration or
description.8
P & D secured its copyright under the classification class
"O" work. This being so, petitioner’s copyright protection
extended only to the technical drawings and not to the
light box itself because the latter was not at all in the
category of "prints, pictorial illustrations, advertising
copies, labels, tags and box wraps." Stated otherwise,
even as we find that P & D indeed owned a valid
copyright, the same could have referred only to the
technical drawings within the category of "pictorial
illustrations." It could not have possibly stretched out to
include the underlying light box. The strict application9 of
the law’s enumeration in Section 2 prevents us from
giving petitioner even a little leeway, that is, even if its
copyright certificate was entitled "Advertising Display
Units." What the law does not include, it excludes, and
for the good reason: 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."
In fine, if SMI and NEMI reprinted P & D’s technical
drawings for sale to the public without license from P &
D, then no doubt they would have been guilty of
copyright infringement. But this was not the case. SMI’s
and NEMI’s acts complained of by P & D were to have
units similar or identical to the light box illustrated in the
technical drawings manufactured by Metro and EYD
Rainbow Advertising, for leasing out to different
advertisers. Was this an infringement of petitioner’s
copyright over the technical drawings? We do not think
so.
During the trial, the president of P & D himself admitted
that the light box was neither a literary not an artistic
work but an "engineering or marketing
invention."10 Obviously, there appeared to be some
confusion regarding what ought or ought not to be the
proper subjects of copyrights, patents and trademarks. In
the leading case of Kho vs. Court of Appeals,11 we ruled
that these three legal rights are completely distinct and
separate from one another, and the protection afforded
by one cannot be used interchangeably to cover items or
works that exclusively pertain to the others:
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.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its
manufacture and commercial use of the light
boxes without license from petitioner, private
respondents cannot be held legally liable for
infringement of P & D’s copyright over its technical
drawings of the said light boxes, should they be liable
instead for infringement of patent? We do not think so
either.
For some reason or another, petitioner never secured a
patent for the light boxes. It therefore acquired no patent
rights which could have protected its invention, if in fact it
really was. And because it had no patent, petitioner
could not legally prevent anyone from manufacturing or
commercially using the contraption. In Creser Precision
Systems, Inc. vs. Court of Appeals,12 we held that "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. x x x (A)n inventor has no common law
right to a monopoly of his invention. He has the right to
make use of and vend his invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is
free to copy and use it with impunity. A patent, however,
gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, selling or
using the invention.13 On the assumption that petitioner’s
advertising units were patentable inventions, petitioner
revealed them fully to the public by submitting the
engineering drawings thereof to the National Library.
To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a
primordial requirement. No patent, no protection. The
ultimate goal of a patent system is to bring new designs
and technologies into the public domain through
disclosure.14 Ideas, once disclosed to the public without
the protection of a valid patent, are subject to
appropriation without significant restraint.15
On one side of the coin is the public which will benefit
from new ideas; on the other are the inventors who must
be protected. As held in Bauer & Cie vs.
O’Donnel,16 "The act secured to the inventor the
exclusive right to make use, and vend the thing
patented, and consequently to prevent others from
exercising like privileges without the consent of the
patentee. It was passed for the purpose of encouraging
useful invention and promoting new and useful
inventions by the protection and stimulation given to
inventive genius, and was intended to secure to the
public, after the lapse of the exclusive privileges granted
the benefit of such inventions and improvements."
The law attempts to strike an ideal balance between the
two interests:
"(The p)atent system thus embodies a carefully crafted
bargain for encouraging the creation and disclosure of
new useful and non-obvious advances in technology and
design, in return for the exclusive right to practice the
invention for a number of years. The inventor may keep
his invention secret and reap its fruits indefinitely. In
consideration of its disclosure and the consequent
benefit to the community, the patent is granted. An
exclusive enjoyment is guaranteed him for 17 years, but
upon the expiration of that period, the knowledge of the
invention inures to the people, who are thus enabled to
practice it and profit by its use."17
The patent law has a three-fold purpose: "first, patent
law seeks to foster and reward invention; second, it
promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the
invention once the patent expires; 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."18
It is only after an exhaustive examination by the patent
office that a patent is issued. Such an in-depth
investigation is required because "in rewarding a useful
invention, the rights and welfare of the community must
be fairly dealt with and effectively guarded. To that end,
the prerequisites to obtaining a patent are strictly
observed and when a patent is issued, the limitations on
its exercise are equally strictly enforced. To begin with, a
genuine invention or discovery must be demonstrated
lest in the constant demand for new appliances, the
heavy hand of tribute be laid on each slight technological
advance in art."19
There is no such scrutiny in the case of copyrights nor
any notice published before its grant to the effect that a
person is claiming the creation of a work. The law
confers the copyright from the moment of creation20 and
the copyright certificate is issued upon registration with
the National Library of a sworn ex-parte claim of
creation.
Therefore, not having gone through the arduous
examination for patents, the 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.
Stated otherwise, what petitioner seeks is exclusivity
without any opportunity for the patent office (IPO) to
scrutinize the light box’s eligibility as a patentable
invention. The irony here is that, had petitioner secured a
patent instead, its exclusivity would have been for 17
years only. But through the simplified procedure of
copyright-registration with the National Library — without
undergoing the rigor of defending the patentability of its
invention before the IPO and the public — the petitioner
would be protected for 50 years. This situation could not
have been the intention of the law.
In the oft-cited case of Baker vs. Selden21 , the United
States Supreme Court held that only the expression of
an idea is protected by copyright, not the idea itself. In
that case, the plaintiff held the copyright of a book which
expounded on a new accounting system he had
developed. The publication illustrated blank forms of
ledgers utilized in such a system. The defendant
reproduced forms similar to those illustrated in the
plaintiff’s copyrighted book. The US Supreme Court
ruled that:
"There is no doubt that a work on the subject of book-
keeping, though only explanatory of well known systems,
may be the subject of a copyright; but, then, it is claimed
only as a book. x x x. But there is a clear distinction
between the books, as such, and the art, which it is,
intended to illustrate. The mere statement of the
proposition is so evident that it requires hardly any
argument to support it. The same distinction may be
predicated of every other art as well as that of
bookkeeping. A treatise on the composition and use of
medicines, be they old or new; on the construction and
use of ploughs or watches or churns; or on the mixture
and application of colors for painting or dyeing; or on the
mode of drawing lines to produce the effect of
perspective, would be the subject of copyright; but no
one would contend that the copyright of the treatise
would give the exclusive right to the art or manufacture
described therein. The copyright of the book, if not
pirated from other works, would be valid without regard
to the novelty or want of novelty of its subject matter.
The novelty of the art or thing described or explained has
nothing to do with the validity of the copyright. To give to
the author of the book an exclusive property in the
art described therein, when no examination of its
novelty has ever been officially made, would be
a surprise and a fraud upon the public. That is the
province of letters patent, not of copyright. The
claim to an invention of discovery of an art or
manufacture must be subjected to the examination
of the Patent Office before an exclusive right therein
can be obtained; and a patent from the government
can only secure it.
The difference between the two things, letters patent and
copyright, may be illustrated by reference to the subjects
just enumerated. Take the case of medicines. Certain
mixtures are found to be of great value in the healing
art. If the discoverer writes and publishes a book on
the subject (as regular physicians generally do), he
gains no exclusive right to the manufacture and sale
of the medicine; he gives that to the public. If he
desires to acquire such exclusive right, he must
obtain a patent for the mixture as a new art,
manufacture or composition of matter. He may
copyright his book, if he pleases; but that only
secures to him the exclusive right of printing and
publishing his book. So of all other inventions or
discoveries.
The copyright of a book on perspective, no matter how
many drawings and illustrations it may contain, gives no
exclusive right to the modes of drawing described,
though they may never have been known or used
before. By publishing the book without getting a patent
for the art, the latter is given to the public.
xxx
Now, whilst no one has a right to print or publish his
book, or any material part thereof, as a book intended to
convey instruction in the art, any person may practice
and use the art itself which he has described and
illustrated therein. The use of the art is a totally
different thing from a publication of the book
explaining it. The copyright of a book on bookkeeping
cannot secure the exclusive right to make, sell and use
account books prepared upon the plan set forth in such
book. Whether the art might or might not have been
patented, is a question, which is not before us. It was not
patented, and is open and free to the use of the public.
And, of course, in using the art, the ruled lines and
headings of accounts must necessarily be used as
incident to it.
The plausibility of the claim put forward by the
complainant in this case arises from a confusion of ideas
produced by the peculiar nature of the art described in
the books, which have been made the subject of
copyright. In describing the art, the illustrations and
diagrams employed happened to correspond more
closely than usual with the actual work performed by the
operator who uses the art. x x x The description of the
art in a book, though entitled to the benefit of
copyright, lays no foundation for an exclusive claim
to the art itself. The object of the one is explanation;
the object of the other is use. The former may be
secured by copyright. The latter can only be
secured, if it can be secured at all, by letters
patent." (underscoring supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark
"Poster Ads" which petitioner’s president said was a
contraction of "poster advertising." P & D was able to
secure a trademark certificate for it, but one where the
goods specified were "stationeries such as letterheads,
envelopes, calling cards and newsletters."22 Petitioner
admitted it did not commercially engage in or market
these goods. On the contrary, it dealt in electrically
operated backlit advertising units and the sale of
advertising spaces thereon, which, however, were not at
all specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly
cited Faberge Inc. vs. Intermediate Appellate
Court,23 where we, invoking Section 20 of the old
Trademark Law, ruled that "the certificate of registration
issued by the Director of Patents can confer (upon
petitioner) the exclusive right to use its own symbol only
to those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate x x
x. 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."24 Faberge, Inc. was correct and
was in fact recently reiterated in Canon Kabushiki
Kaisha vs. Court of Appeals.25
Assuming arguendo that "Poster Ads" could validly
qualify as a trademark, the failure of P & D 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.1âwphi1
ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been for unfair
competition, a situation which was possible even if P & D
had no registration.26 However, while the petitioner’s
complaint in the RTC also cited unfair competition, the
trial court did not find private respondents liable therefor.
Petitioner did not  appeal this particular point; hence, it
cannot now revive its claim of unfair competition.
But even disregarding procedural issues, we
nevertheless cannot hold respondents guilty of unfair
competition.
By the nature of things, there can be no unfair
competition under the law on copyrights although it is
applicable to disputes over the use of trademarks. Even
a name or phrase incapable of appropriation as a
trademark or tradename may, by long and exclusive use
by a business (such that the name or phrase becomes
associated with the business or product in the mind of
the purchasing public), be entitled to protection against
unfair competition.27 In this case, there was no evidence
that P & D’s use of "Poster Ads" was distinctive or well-
known. As noted by the Court of Appeals, petitioner’s
expert witnesses himself had testified that " ‘Poster Ads’
was too generic a name. So it was difficult to identify it
with any company, honestly speaking."28 This crucial
admission by its own expert witness that "Poster Ads"
could not be associated with P & D showed that, in the
mind of the public, the goods and services carrying the
trademark "Poster Ads" could not be distinguished from
the goods and services of other entities.
This fact also prevented the application of the doctrine of
secondary meaning. "Poster Ads" was generic and
incapable of being used as a trademark because it was
used in the field of poster advertising, the very business
engaged in by petitioner. "Secondary meaning" means
that a word or phrase originally incapable of exclusive
appropriation with reference to an article in the market
(because it is geographically or otherwise descriptive)
might nevertheless have been used for so long and so
exclusively by one producer with reference to his article
that, in the trade and to that branch of the purchasing
public, the word or phrase has come to mean that the
article was his property.29 The admission by petitioner’s
own expert witness that he himself could not associate
"Poster Ads" with petitioner P & D because it was "too
generic" definitely precluded the application of this
exception.
Having discussed the most important and critical issues,
we see no need to belabor the rest.
All told, the Court finds no reversible error committed by
the Court of Appeals when it reversed the Regional Trial
Court of Makati City.
WHEREFORE, the petition is hereby DENIED and the
decision of the Court of Appeals dated May 22, 2001 is
AFFIRMED in toto.
G.R. No. 115758. March 19, 2002.]
ELIDAD C. KHO, doing business under the name and
style of KEC COSMETICS LABORATORY, Petitioner,
v. HON. COURT OF APPEALS, SUMMERVILLE
GENERAL MERCHANDISING and COMPANY, and
ANG TIAM CRAY, Respondents.
DECISION
DE LEON, JR., J.:
Before us is a petition for review on certiorari of the
Decision 1 dated May 24, 1993 of the Court of Appeals
setting aside and declaring as null and void the Orders 2
dated February 10, 1992 and March 19, 1992 of the
Regional Trial Court, Branch 90, of Quezon City granting
the issuance of a writ of preliminary
injunction.chanrob1es virtua1 1aw 1ibrary
The facts of the case are as follows:chanrob1es virtual
1aw library
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, docketed
as Civil Case No. Q-91-10926, against the respondents
Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay.
The petitioner’s 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,
as shown by Certificates of Copyright Registration No. 0-
1358 and No. 0-3678; 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 on February 7,
1980 under Registration Certificate No. 4529; 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.
The respondents, on the other hand, alleged as their
defense 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 due hearing on the application for preliminary
injunction, the trial court granted the same in an Order
dated February 10, 1992, the dispositive portion of which
reads:chanrob1es virtual 1aw library
ACCORDINGLY, the application of plaintiff Elidad C.
Kho, doing business under the style of KEC Cosmetic
Laboratory, for preliminary injunction, is hereby granted.
Consequentially, plaintiff is required to file with the Court
a bond executed to defendants in the amount of five
hundred thousand pesos (P500,000.00) to the effect that
plaintiff will pay to defendants all damages which
defendants may sustain by reason of the injunction if the
Court should finally decide that plaintiff is not entitled
thereto.
SO ORDERED.
The respondents moved for reconsideration but their
motion for reconsideration was denied by the trial court
in an Order dated March 19, 1992. 4
On April 24, 1992, the respondents filed a petition
for certiorari with the Court of Appeals, docketed as CA-
G.R. SP No. 27803, praying for the nullification of the
said writ of preliminary injunction issued by the trial
court. After the respondents filed their reply and almost a
month after petitioner submitted her comment, or on
August 14 1992, the latter moved to dismiss the petition
for violation of Supreme Court Circular No. 28-91, a
circular prohibiting forum shopping. According to the
petitioner, the respondents did not state the docket
number of the civil case in the caption of their petition
and, more significantly, they did not include therein a
certificate of non-forum shopping. The respondents
opposed the petition and submitted to the appellate court
a certificate of non-forum shopping for their petition.
On May 24, 1993, the appellate court rendered a
Decision in CA-G.R. SP No. 27803 ruling in favor of the
respondents, the dispositive portion of which
reads:chanrob1es virtual 1aw library
WHEREFORE, the petition is hereby given due course
and the orders of respondent court dated February 10,
1992 and March 19, 1992 granting the writ of preliminary
injunction and denying petitioners’ motion for
reconsideration are hereby set aside and declared null
and void. Respondent court is directed to forthwith
proceed with the trial of Civil Case No. Q-91-10926 and
resolve the issue raised by the parties on the merits.
SO ORDERED.
In granting the petition, the appellate court ruled
that:chanrob1es virtual 1aw library
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.
x           x          x
As ratiocinated in La Chemise Lacoste, S.S. v.
Fernandez, 129 SCRA 373, 393:jgc:chanrobles.com.ph
"Registration in the Supplemental Register, therefore,
serves as notice that the registrant is using or has
appropriated the trademark. By the very fact that the
trademark cannot as yet he on guard and there are
certain defects, some obstacles which the use must still
overcome before he can claim legal ownership of the
mark or ask the courts to vindicate his claims of an
exclusive right to the use of the same. It would be
3 deceptive for a party with nothing more than a
registration in the Supplemental Register to posture
before courts of justice as if the registration is in the
Principal Register.
The reliance of the private respondent on the last
sentence of the Patent office action on application Serial
No. 30954 that ‘registrants is presumed to be the owner
of the mark until after the registration is declared
cancelled’ is, therefore, misplaced and grounded on
shaky foundation. The supposed presumption not only
runs counter to the precept embodied in Rule 124 of the
Revised Rules of Practice before the Philippine Patent
Office in Trademark Cases but considering all the facts
ventilated before us in the four interrelated petitions
involving the petitioner and the respondent, it is devoid of
factual basis. As even in cases where presumption and
precept may factually be reconciled, we have held that
the presumption is rebuttable, not conclusive, (People v.
Lim Hoa, G.R. No. L-10612, May 30, 1958, Unreported).
One may be declared an unfair competitor even if his
competing trademark is registered (Parke, Davis & Co. v.
Kiu Foo & Co., Et Al., 60 Phil 928; La Yebana Co. v.
chua Seco & Co., 14 Phil 534)." 6
The petitioner filed a motion for reconsideration. This she
followed with several motions to declare respondents in
contempt of court for publishing advertisements notifying
the public of the promulgation of the assailed decision of
the appellate court and stating that genuine Chin Chun
Su products could be obtained only from Summerville
General Merchandising and Co.
In the meantime, the trial court went on to hear
petitioner’s complaint for final injunction and damages.
On October 22, 1993, the trial court rendered a Decision
5 7 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. The trial court did not award damages and costs
to any of the parties but to their respective counsels
were awarded Seventy-Five Thousand Pesos
(P75,000.00) each as attorney’s fees. The petitioner duly
appealed the said decision to the Court of Appeals.
On June 3, 1994, the Court of Appeals promulgated a
Resolution 8 denying the petitioner’s motions for
reconsideration and for contempt of court in CA-G.R. SP
No. 27803.
Hence, this petition anchored on the following
assignment of errors:chanrob1es virtual 1aw library
I entitling the applicant to the relief demanded. 10 This is
RESPONDENT HONORABLE COURT OF APPEALS
COMMITTED GRAVE ABUSE OF DISCRETION
AMOUNTING TO LACK OF JURISDICTION IN FAILING
TO RULE ON PETITIONER’S MOTION TO DISMISS.
II
RESPONDENT HONORABLE COURT OF APPEALS
COMMITTED GRAVE ABUSE OF DISCRETION
AMOUNTING TO LACK OF JURISDICTION IN
REFUSING TO PROMPTLY RESOLVE PETITIONER’S
MOTION FOR RECONSIDERATION.
III
IN DELAYING THE RESOLUTION OF PETITIONER’S
MOTION FOR RECONSIDERATION, THE
HONORABLE COURT OF APPEALS DENIED
PETITIONER’S RIGHT TO SEEK TIMELY APPELLATE
RELIEF AND VIOLATED PETITIONER’S RIGHT TO
DUE PROCESS.
IV
RESPONDENT HONORABLE COURT OF APPEALS
COMMITTED GRAVE ABUSE OF DISCRETION
AMOUNTING TO LACK OF JURISDICTION IN FAILING
TO CITE THE PRIVATE RESPONDENTS IN
CONTEMPT. 9 Petitioner has no right to support her claim for the
The petitioner faults the appellate court for not
dismissing the petition on the ground of violation of
Supreme Court Circular No. 28-91. Also, the petitioner
contends that the appellate court violated Section 6,
Rule 9 of the Revised Internal Rules of the Court of
Appeals when it failed to rule on her motion for
reconsideration within ninety (90) days from the time it is
submitted for resolution. The appellate court ruled only
after the lapse of three hundred fifty-four (354) days, or
on June 3, 1994. In delaying the resolution thereof, the
appellate court denied the petitioner’s right to seek the
timely appellate relief. Finally, petitioner describes as
arbitrary the denial of her motions for contempt of court
against the respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised Rules of
Civil Procedure, one of the grounds for the issuance of a
writ of preliminary injunction is a proof that the applicant
is entitled to the relief demanded, and the whole or part
of such relief consists in restraining the commission or
continuance of the act or acts complained of, either for a
limited period or perpetually. Thus, a preliminary
injunction order may be granted only when the
application for the issuance of the same shows facts
the reason why we have ruled that it must be shown that
the invasion of the right sought to be protected is
material and substantial, that the right of complainant is
clear and unmistakable, and, that there is an urgent and
paramount necessity for the writ to prevent serious
damage. 11
In the case at bar, the petitioner applied for the issuance
of a preliminary injunctive order on the ground that she is
entitled to the use of the trademark on Chin Chun Su
and its container based on her copyright and patent over
the same. We first find it appropriate to rule on 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.
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. 12 In relation
thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. 13 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. 14 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. 15
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.
We cannot likewise overlook the decision of the trial
court in the case for final injunction and damages. The
dispositive portion of said decision held that the
petitioner does not have trademark rights on the name
and container of the beauty cream product. The said
decision on the merits of the trial court rendered the
issuance of the writ of a preliminary injunction moot and
academic notwithstanding the fact that the Same has
been appealed in the Court of Appeals. This is supported
by our ruling in La Vista Association, Inc. v. Court of
Appeals 16 , to wit:chanrob1es virtual 1aw library
Considering the preliminary injunction is a provisional
remedy which may be granted at any time after the
commencement of the action and before judgment when
it is established that the plaintiff is entitled to the relief
demanded and only when his complaint shows facts
entitling such reliefs . . . and it appearing that the trial
court had already granted the issuance of a final
injunction in favor of petitioner in its decision rendered
after trial on the merits . . . the Court resolved to Dismiss
the instant petition having been rendered moot and
academic. An injunction issued by the trial court after it
has already made a clear pronouncement as to the
plaintiff’s right thereto, that is, after the same issue has
been decided on the merits, the trial court having
appreciated the evidence presented, is proper,
notwithstanding the fact that the decision rendered is not
yet final . . . Being an ancillary remedy, the proceedings
for preliminary injunction cannot stand separately or
proceed independently of the decision rendered on the
merit of the main case for injunction. The merit of the
main case having been already determined in favor of
the applicant, the preliminary determination of its non-
existence ceases to have any force and effect.
(Emphasis supplied)
La Vista categorically pronounced that the issuance of a
final injunction renders any question on the preliminary
injunctive order moot and academic despite the fact that
the decision granting a final injunction is pending appeal.
Conversely, a decision denying the applicant-plaintiff’s
right to a final injunction, although appealed, renders
moot and academic any objection to the prior dissolution
of a writ of preliminary injunction.
The petitioner argues that the appellate court erred in not
dismissing the petition for certiorari for non-compliance
with the rule on forum shopping. We disagree. First, the
petitioner improperly raised the technical objection of
non compliance with Supreme Court Circular No. 28-91
by filing a motion to dismiss the petition for certiorari filed
in the appellate court. This is prohibited by Section 6,
Rule 66 of the Revised Rules of Civil Procedure which
provides that" (I)n petitions for certiorari before the
Supreme Court and the Court of Appeals, the provisions
of Section 2, Rule 56, shall be observed. Before giving
due course thereto, the court may require the
respondents to file their comment to, and not a motion to
dismiss, the petition . . . (Emphasis supplied)." Secondly,
the issue was raised one month after petitioner had filed
her answer/comment and after private respondent had
replied thereto. Under Section 1, Rule 16 of the Revised
Rules of Civil Procedure, a motion to dismiss shall be
filed within the time for but before filing the answer to the
complaint or pleading asserting a claim. She therefore
could no longer submit a motion to dismiss nor raise
defenses and objections not included in the
answer/comment she had earlier tendered. Thirdly,
substantial justice and equity require this Court not to
revive a dissolved writ of injunction in favor of a party
without any legal right thereto merely on a technical
infirmity. The granting of an injunctive writ based on a
technical ground rather than compliance with the
requisites for the issuance of the same is contrary to the
primary objective of legal procedure which is to serve as
a means to dispense justice to the deserving party.
The petitioner likewise contends that the appellate court
unduly delayed the resolution of her motion for
reconsideration. But we find that petitioner contributed to
this delay when she filed successive contentious motions
in the same proceeding, the last of which was on
October 27, 1993, necessitating counter-manifestations
from private respondents with the last one being filed on
November 9, 1993. Nonetheless, it is well-settled that
non-observance of the period for deciding cases or their
incidents does not render such judgments ineffective or
void. 17 With respect to the purported damages she
suffered due to the alleged delay in resolving her motion
for reconsideration, we find that the said issue has
likewise been rendered moot and academic by our ruling
that she has no right over the trademark and,
consequently, to the issuance of a writ of preliminary
injunction.
Finally, we rule that the Court of Appeals correctly
denied the petitioner’s several motions for contempt of
court. There is nothing contemptuous about the
advertisements complained of which, as regards the
proceedings in CA-G.R. SP No. 27803 merely
announced in plain and straightforward language the
promulgation of the assailed Decision of the appellate
court. Moreover, pursuant to Section 4 of Rule 39 of the
Revised Rules of Civil Procedure, the said decision
nullifying the injunctive writ was immediately executory.
WHEREFORE, the petition is DENIED. The Decision
and Resolution of the Court of Appeals dated May 24,
1993 and June 3, 1994, respectively, are hereby
AFFIRMED. With costs against the
petitioner.chanrob1es virtua1 1aw 1ibrary
SO ORDERED.