Professional Documents
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Intellectual Property Law1
Intellectual Property Law1
Art 427 – Civil Code of the Philippines Trademarks and service marks – any
“Ownership may be exercised over visible sign capable of distinguishing the
things or rights” goods (trademark) or services (service
mark) of an enterprise and shall include
Art 712 – Civil Code of the Philippines a stamped or marked container of goods
“Ownership is acquired by occupation
and by intellectual creation Geograhic indications – indications
which identify a good as originating in
Ownership and other real rights over the territory of a Member of the
property are acquired and transmitted Agreement, or a region or locality in that
by law, by donation, by estate and territory, where a given quality,
intestate succession, and in reputation or other characteristic of the
consequence of certain contracts, by good is essentially attributable to its
tradition. geographical origin
Utility model
An invention qualifies for registration as
a utility model if it is new and
industrially applicable
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Intellectual Property Law –
same goods;
related goods; similar marks or non-
within the zone confusingly registerable or
of expansion of similar marks infringing mark
business
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Intellectual Property Law –
Societe Des Produits Nestle, SA vs CA – of it in commerce in the Philippines = 5
totality or holistic test is contrary to the years before the date on which the
elementary postulate of the law on claim of distinctiveness is made
trademarks and unfair competition
Doctrine of Secondary meaning – to the
Colorable imitation – denotes such a effect that a word or phrase originally
close or ingenious imitation as to be incapable of exclusive appropriation with
calculated to deceive ordinary persons, reference to an article on the market
or such a resemblance to the original as because geographically or otherwise
to deceive an ordinary purchaser giving descriptive, might nevertheless have
such attention as a purchaser usually been used so long and so exclusively by
gives, as to cause him to purchase the one producer with reference to his
one supposing it to be the other article that, in that trade and to that
branch of the purchasing public, the
Mighty Corp vs E&J Gallo – tobacco and word or phrase has come to mean that
alcohol products may be considered the article was his product
related only in cases involving special
circumstances which exist only if a Trademark infringement: without the
famous mark is involved and there is a consent of the owner of the registered
demonstrated intent to capitalize on it mark
a. use in commerce any reproduction,
McDonalds Corporation vs L.C. Big Mak counterfeit, copy or colorable imitation
Burger – courts will consider more the of a registered mark or the same
aural and visual impressions created by container or a dominant feature thereof
the marks in the public mind, giving b. reproduce, counterfeit, copy or
little weight to factors like prices, colorably imitate a registered mark or a
quality, sales outlets and market dominant feature and apply such to
segments labels, signs, prints, packages,
wrappers, receptacles or advertisements
Well known marks registrability – a
mark cannot be registered if it is: counterfeit goods – any goods, including
a. identical with packaging, bearing without
b. confusingly similar to authorization a trademark which is
c. constitutes a translation identical to the trademark validly
of a mark which is considered by the registered in respect of such goods or
competent authority of the Philippines to which cannot be distinguished in its
be well-known internationally and in the essential aspects from such a trademark
Philippines in question under the law of the country
of importation
Descriptive marks, shapes and color
alone may be registered if it has become colorable imitation – such a close or
distinctive in relation to the goods for ingenious imitation as to be calculated
which registration is requested as a to deceive ordinary purchasers or such
result of the use that have been made resemblance of the infringing mark to
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Intellectual Property Law –
the original as to deceive an ordinary 2. likelihood of confusion, mistake or
purchaser giving such attention as a deception
purchaser usually gives and to cause
him to purchase the one supposing it to Authority to determine right to
be the other registration – in any action involving a
registered mark, the court may
Republic Gas Corporation vs Petron determine the right to registration, order
Corporation – mere unauthorized use of the cancellation of a registration, in
a container bearing a registered whole or in part, and otherwise rectify
trademark in connection with the sale, the register with respect to the
distribution or advertising of goods or registration of any party to the action in
services which is likely to cause exercise of this
confusion, mistake or deception among
the buyers or consumers can be W Land Holdings, Inc vs Starwood
considered as trademark infringement Hotels and Resorts Worldwide, Inc
- mere exhibition of a trademark in a
Unfair competition – any person who is website is not sufficient
selling his goods and gives them the - there must be an actual commercial
general appearance of goods of another transaction through the website or at
manufacturer or dealer, either as to the the very least, the website must show
goods themselves or in the wrapping of that it intends to target local consumers
the packages in which they are by containing specific details geared
contained towards a commercial activity of
interaction
TM infringement Unfair
competition Madrid System – file a single application
Prior registration Registration of and pay one set of fees to apply for
of the trademark the trademark is protection in up to 124 countries
is a prerequisite not necessary
for the action An international registration is therefore
Fraudulent intent Fraudulent intent equivalent to a bundle of national
is not necessary is essential registrations
Unauthorized use Passing off of
of a trademark one’s goods for Copyright
the goods of - purely a statutory right; limited to
another what the statute confers
- can only cover the works falling within
Trademark dilution – lessening of the the statutory enumeration or description
capacity of a famous mark to identify - confined to literary and artistic works
and distinguish goods or services
regardless of the presence or absence Protected from the moment of creation
of: – works are protected by the sole fact of
1. competition between the owner of their creation, irrespective of their mode
the famous mark and other parties
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Intellectual Property Law –
or form of expression, as well as of their Exhaustion of rights
content, quality and purpose a. national exhaustion – does not allow
the IP owner to control the commercial
GR: copyright is distinct from the exploitation of works put on the
property in the material object to it domestic market by the IP owner or
with his consent
EX: work of architecture – shall include b. regional exhaustion – first sale of the
the right to control the erection of any protected work by the IP owner or with
building which reproduces the whole or his consent exhaust any IP right over
a substantial part of the work these works within the whole region,
and parallel imports within the region
Derivative works – shall also be can no longer be opposed based on the
protected by copyright as new works: IP right
1. dramatizations, translations, c. international exhaustion – IP rights
adaptations, abridgments, arrangements are exhausted once the work has been
and other alterations of literary or sold by the IP owner or with his consent
artistic works in any part of the world
2. collections of literary, scholarly, or
artistic works, and compilations of data The first sale doctrine is a defense to
and other materials which are original copyright infringement
by reason of the selection or
coordination or arrangement of their First sale doctrine – after the first sale of
contents a copyrighted work in tangible form with
the consent of the copyright owners, the
Scope of protection distribution right derived from the
Copy or Economic rights: shall consist of copyright is deemed “exhausted”
the exclusive right to carry out,
authorize, or prevent the following acts: Moral rights: author of a work shall,
1. reproduction of the work or independently of the economic rights or
substantial portion the grant of an assignment or license
2. dramatization, translation, adaptation, with respect to such right, have the
abridgment, arrangement or other right:
transformation of the work 1. to require that the authorship be
3. first distribution of the original and attributed to him
each copy of the work by sale or other 2. to make any alterations of his work
forms of transfer of ownership prior to, or to withhold it from
4. rental rights publication
5. public display of the original or a copy 3. to object to any distortion, mutilation
6. public performance of the work or other modification of or other
7. other communication to the public of derogatory action in relation to, his work
the work which would be prejudicial to his honor
or reputation
4. to restrain the use of his name with
respect to any work not of his own
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Intellectual Property Law –
creation or in a distorted version of his 5. audiovisual work = producer, author
work of the scenario, composer of the music,
film director and author of the work so
GR: Waiver of moral rights – by a adapted
written instrument, except if it permit 6. letters = writer subject to the
another to: provisions of Article 723 of the Civil
a. use the name of the author or the Code
title of his work or otherwise to make
use of his reputation with respect to any Anonymous and pseudonymous works –
version or adaptation of his work publisher shall be deemed to represent
b. use of the name of the author with the author of articles and other writings
respect to a work he did not create published without the names of the
authors or under pseudonyms
An author cannot be compelled to
perform his contract to create a work or Related rights (neighbouring rights)
for the publication of his work already in 1. performers rights
existence. However, he may be held 2. producers of sound recordings
liable for damages for breach of such 3. broadcasting organizations
contract
ABSCBN Broadcasting Corporation vs
EX: Philippine Multimedia System Inc –
a. contribution to collective work retransmission is not rebroadcasting
b. editing, arranging and adaptation of
work Terms of protection
Copyrighted Terms of
Ownership and presumption of works protection
authorship: Original and During the life of
1. in the case of original literary and derivative works, the author and for
artistic works = author of the work as well as 50 years after his
2. works of joint authorship = co- posthumous death
authors; in the absence of agreement, works
their rights shall be governed by the Works of joint Economic rights
rules on co-ownership authorship shall be protected
3. work created by an author during and during the life of
in the course of his employment: the last surviving
a. employee = not a part of his duties author and for 50
b. employer = work is the result of the years after his
performance of his regularly-assigned death
duties, unless there is an agreement to Works of applied 25 years from the
the contrary art date of making
4. work commissioned by a person other Photographic 50 yeas from
than an employer of the author and who works publication of the
pays for it and the work is made in work and if
pursuance of the commission = creator unpublished, 50
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Intellectual Property Law –
years from the Limitations – shall not constitute
making infringement of copyright:
Audio-visual 50 yeas from a. recitation or performance of a work,
works including publication of the once it has been lawfully made
those produced work and if accessible to the public, if done privately
by process unpublished, 50 and free of charge or if made strictly for
analogous to years from the a charitable or religious institution or
photography or making society
any process for b. making of quotations from a
making audio- published work if they are compatible
visual recordings with fair use and only to the extent
justified for the purpose, including
Copyright quotations from newspaper articles
Original Derivative Related Rights c. reproduction or communication to the
a. a. a. performers public by mass media of articles on
economic economic -broadcasting/ current political, social, economic,
rights rights communication scientific or religious topic, lectures and
to the public other works for information purposes
b. moral b. moral -right to and has not been expressly reserved
rights rights fixation (source should be indicated)
-moral rights d. reproduction and communication to
the public of literary, scientific or artistic
b. producers works as part of reports of current
of sound events
recordings e. inclusion of a work in a publication,
-reproduction broadcast, or other communication to
-first public the public, sound recording or film, if
distribution such inclusion is made by way of
-rental illustration for teaching purposes and is
-making compatible with fair use (source should
available to be indicated)
the public f. recording made in schools of a work
included in a broadcast
c. g. making of ephemeral recordings by a
broadcasting broadcasting organization by means of
organizations its own facilities and for use in its own
- broadcast
rebroadcasting h. use made of a work by or under the
-recording direction or control of the Government,
-fresh by the National Library or by
transmission/ educational, scientific or professional
fresh recording institutions where such use is in public
interest and is compatible with fair use
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Intellectual Property Law –
i. public performance or the not a defense against copyright
communication to the public of a work, infringement
in a place where no admission fee is
charged Copyright infringement acts:
j. public display of the original or a copy a. directly commits an infringement
of the work not made by means of a b. benefits from the infringing activity of
film, slide, television image or otherwise another person who commits
on screen or by means of any other c. with knowledge of infringing activity,
device or process induces, causes or materially contributes
k. any use made of a work for the to the infringing conduct of another
purpose of any judicial proceedings or
for the giving of professional advice by a ALSO LIABLE: any person who at the
legal practitioner time when copyright subsists in a work
l. reproduction or distribution of has in his possession an article which he
published articles or materials in a knows or ought to know to be an
specialized format exclusively for the infringing copy of the work for the
use of the blind, visually- and reading- purpose of:
impaired persons (should be nonprofit a. selling, letting for hire or by way of
and indicate owner) trade offering or exposing for sale or
hire the article
Fair use doctrine – fair use of a b. distributing the article for purpose of
copyrighted work for criticism, trade or any other purpose to an extent
comment, news reporting, teaching that will prejudice the rights of the
including limited number of copies for copyright owner in the work
classroom use, scholarship, research c. trade exhibit of the article in public
and similar purpose if not an
infringement of copyright
Factors:
a. purpose and character of the use
b. nature of the copyrighted work
c. amount and substantiality of the
portion used in relation to the
copyrighted work as a whole
d. effect of the use upon the potential
market for or value of the copyrighted
work