Professional Documents
Culture Documents
DIVINA (IPL) Highlights
DIVINA (IPL) Highlights
trademarks and
patents............................................................ 206
SiiHpcniiion or removal of director or officer... 162 206
Dissolution of banka............................................ . 162 Definition................................................................
Scope or object....................................................... 207
Anti-Money Laundering Law Term of protection................................................. 208
(R.A. No. 9160, as amended) . 163 Modes of acquiring the various rights................ 208
Policy of the law............................................................ 163 Patents............................................................................ 210
Covered institutions/persons and their obligations 163 Patentable invention...................................................... 212
Covered and suspicious transactions........................ 166 217
Non-patentable invention..............................................
Money laundering-how committed and unlawful
168 Ownership of a patent................................................... 218
activities.......................................................
Functions of the AMLC............................................... 173 Right to a patent................................................... 218
Application for a freeze order..................................... 175 First-to-file rule..................................................... 220
Safe harbor provision................................................... 180 Invention created pursuant to a commission.... 220
Forfeiture provisions..................................................... 181 Right of Priority.................................................... 221
Mutual assistance among states................................ 182 Grounds for cancellation of a patent.......................... 222
Remedy of the true and actual inventor.................... 223
Philippine Deposit Insurance Corporation............. 183
Rights conferred by a patent........................................ 224
Basic Policy..................................................................... 183
Powers and functions of PDIC................................... 184 Limitations of patent rights......................................... 225
Concept of insured deposit.......................................... 184 Patent infringement...................................................... 231
Liability to depositors.................................................. 185 Tests in patent infringement............................... 233
Deposit liabilities required to be insured Civil and criminal action..................................... 235
with PDIC........................................... 186 Prescriptive period............................................... 238
Commencement of liability................................ 187 Defenses in action for infringement................... 238
Deposit accounts not entitled to payment..... 187 Licensing................................................................ 240
Extent of liability 187 Assignment and transmission of rights............ 247
Determination of insured deposits and Trademarks............................................................................. 247
calculation of liability...................... 188 Definition of Marks, Collective Marks,
Mode of payment................................................. 191 Trade Names................................................. 247
Effect of payment of insured deposit/
Acquisition of ownership of mark................................ 250
preferred credit................................. 191
Failure of depositor to claim insured
Acquisition of ownership of trade name.................... . 253
deposits............................................... 192 Non-registrable marks.................................................. 253
Examination of banks and deposit accounts. 192 Immoral, deceptive, scandalous matter or
Splitting of deposits............................................ 193 falsely suggesting a connection with
Prohibition against issuances of temporary person, belief, institution or symbol. 255
restraining order.............................. 194 Name, portrait, signature of living individual 256
Concept of bank resolution......................................... 195 Identical mark...................................................... 256
Role of PDIC in relation to banks in distress........ 197 Tests to determine confusing similarity
Truth in Lending Act (RA No. 3765)........................ 199 between marks.................................... 257
Idem sonans.......................................................... 267
Well-known marks................................................ 273
VII. INTELLECTUAL PROPERTY CODE
Rights conferred by registration.................................. 285
Intellectual property rights in general................................ 202 Trademark Infringement.............................................. 289
202
Intellectual property rights........................................... Remedies......................................................................... 291
xxiii
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Registration of nmrku under the Madrid Protocol 300
Coverage ...................................... 303
Rights conferred .............................. 303
Term of protection 305
Copyright............................................................................................. 305
Basic Principles ......... 305
Copyrightable Works 307
Rights of the copyright owner 315 VII. INTELLECTUAL PROPERTY CODE
Reproduction 318
Derivative right 320
First public distribution 320 A. Intellectual property rights in general
Rental right 322
Right of public display 322 a. Intellectual property rights
Right of public performance 323
Right of communication to the public 323 1. What are intellectual property rights?
Rules on Ownership of Copyright 325 Intellectual property rights (IPR) are rights given to persons
Limitations on Copyright 331 O' er creation of their minds. It has two (2) categories:
Private Performance of a work 334 a. Industrial property which includes inventions (patents),
Making of quotations 335 trademarks, industrial design, and geographic indications
Information purposes 337 of source; and,
Under the direction and control of the government 338
b. Copyright and related rights. Copyright includes literary
Judicial proceedings or professional advice 339
340 and artistic works. Rights related to copyright include
Doctrine of fair use
those of performing artists in their performances,
Copyright Infringement 343 producers of phonograms in their recordings, and those of
broadcasters in their radio and television programs.1
VIII. CREDIT TRANSACTIONS 2. What are the kinds of intellectual property rights under the
Guaranty 357 Intellectual Property Code of the Philippines ("IPC")?
Surety 368 Under the IPC,2 the term Intellectual Property Rights under
Real Estate Mortgage Law 372 the Intellectual Property Code consist of:
Personal Property Security Act (R.A. No. 11057) 378
a. Copyright and related rights - Exist over original and
derivative intellectual creations in the literary and
IX. SPECIAL LAWS artistic domain protected from the moment of creation.3
Foreign Investment Act of 1991 b. Trademark and service marks—Any visible sign capable of
R.A. No. 7042, as amended by RA. No. 8179 distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or
Policy of Law A.............................. 403 marked container of goods.4
Definition of Terms 408
Registration of Investments of Non-Philippine
Nationals 430 ’Gepty: Intellectual Property Compendium citing WIPO, p. 25, 2019 edition.
Foreign Investments in Export Enterprises 430 2Section 4.1, R.A. No. 8293, or the Intellectual Property Code of the Philippines.
Section 172, R.A. No. 8293.
Foreign Investments in Domestic Market Enterprises 431 ‘Section 121.1, R.A. No. 8293.
Foreign Investment Negative List 432
202
XXV
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d. Industrial designs — Any composition of line or colors or 3. Describe intellectual property as a right.
any three-dimensional form, whether or not associated
Intellectual Property right is statutory in nature. The rights
with lines or colors; provided that such composition or conferred on Intellectual Property must be provided by law and can
form gives a special appearance to and can serve as a only be enjoyed on the terms specified by statute.
pattern for an industrial product or handicraft.6
It is also an incorporeal right which exists separate and distinct
e. Patents — Any technical solution of a problem with any from the material object to which it is attached. Thus, ownership in
field of human activity which is new, involves an inventive one does not necessarily vest ownership in the other. The transfer
step and is industrially applicable.7 of assignment of the Intellectual Property will not constitute a
conveyance of the thing it covers, nor would a conveyance of the
f. Lay out designs — Synonymous with topography, and latter imply the transfer of the Intellectual Property Right.11
it means the three-dimensional disposition, however
It is a private right, and as such, when it comes to enforcement
expressed, of the elements, at least one of which is an there is a need from the rights holder or the owner of the Intellectual
active element and of some or all of the interconnections Property to participate or cooperate in any and all investigations
of an integrated circuit, or such a three-dimensional and prosecutions involving violations of Intellectual Property Rights
disposition prepared for an integrated circuit intended for for purposes of establishing ownership of intellectual property and
manufacture.8 determining the lack of consent or authority in the commission of
any act that is deemed an infringement.12
g. Integrated circuit — A product, in its final form or an
intermediate form, in which the elements are integrally The right is also not absolute. It is subject to certain limitations
formed in and/or on a piece of material and which is and exceptions as may be provided by law depending on the kind of
Intellectual Property Rights involved.13
intended to perform an electronic function.9
h. Protection of undisclosed information - Means protection 4. Is hoarding or collection of empty bottles so that they can be
of information lawfully held from being disclosed to, withdrawn from circulation and thus impede the circulation of
acquired by, or used by others without their consent in a the bottled products a violation of IPR under the IPC?
manner contrary to honest commercial practices so long It is not a violation of the IPC. While it is contrary to good
as such information: i) is secret in the sense that it is not, faith, hoarding does not constitute an act within the contemplation
as a body or in the precise configuration and assembly of the IPC. It does not relate to any patent, trademark, trade name,
of its components, generally known among or readily
'“Article 39, TRIPS Agreement, as cited in Gepty: Intellectual Property Law
Compendium, ibid., p. 26.
'Article 22, TRIPS Agreement. "Distilleria Washington, Inc. v. Court of Appeals, G.R. No. 120961, October
'Section 112, R.A. No. 8293. 17, 1996, cited in Gepty, ibid., p. 16.
’Section 21, R.A. No. 8293. 12Gepty, ibid., p 16.
'Section 112.3, R.A. No. 8293, as amended by R.A. No. 9150; Section 112.3, 13Gepty, ibid., p. 17.
IPC.
’Section 112.2, R.A. No. 8293, as amended.
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"Coca Cola Bottlers Philippines, Inc. Naga Plant v. Quintin Gomez, G.R. No. ■'Section 121.1, IPC; Section 121.1, IPC, as amended.
154491, November 14, 2008; BAR 2016.
“G.R. No. 172835, December 13, 2007.
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The Supreme Court defined copyright as an intangible, For trademarks, a certificate of registration shall remain in
incorporeal right granted by statute to the author or originator force for 10 years, provided, that the registrant shall file a declaration
of certain literary or artistic productions, whereby he or she is of actual use and evidence to that effect, or shall show valid reasons
based on the existence of obstacles to such use, within one (1) year
invested, for a specific period, with the sole and exclusive privilege
from the fifth anniversary of the date of the registration of the mark.
of multiplying copies of the same and publishing and selling them.18 Otherwise, the mark shall be removed from the Register by the
The rights granted by copyright are, however, not limited to Office.20
multiplying copies of the literary or artistic work, publishing, and d. Modes of acquiring the various rights
selling, but also include any form of communication to the public,
as well as right of attribution, right to carry out derivative work, Trademark is acquired solely through registration in accordance
with the provisions of the Intellectual Property Code (“IPC ).21
and other moral rights. Copyright is likewise not confined to literary
Patent is likewise acquired through application with, and grant by,
and artistic work but also extend to scientific and scholarly works foe IPO. Copyright is acquired from the moment of ci’eation.
similar to those works enumerated in Section 172.1 of the IPC.
7. Are trademark, copyright and patent interchangeable?
Copyright should therefore be defined then as an incorporeal
and intangible property granted by law to the originator or creator of Trademark, copyright and patents are different intellectual
certain literary, artistic, scientific and scholarly works whereby he property rights thatcannot be interchanged with another. These three
or she is invested for a specific period of time a collection of economic are completely distinct and separate from one another
and moral rights on the terms specified by statute. an t e protection afforded by one cannot be used interchangeably
to cover items or works that exclusively pertain to the others.22 Thus,
b. Scope or object e upreme Court ruled that the name and container of a beauty
cream product are proper subjects of a trademark inasmuch as the
Trademark attaches to goods or services of an enterprise and same alls squarely within its definition. In order to be entitled to
stamped or marked containers. exc usively use the same in the sale of the beauty cream product,
e user must sufficiently prove that she registered or used it before
Copyright is confined to literary, artistic and scientific works any ody else did. The owner’s copyright and patent registration of
which are original intellectual creations in the literary and artistic e name and container would not guarantee her the right to the
domain protected from the moment of their creation. On the other
hand, patentable inventions refer to any technical solution of a
problem in any field of human activity which is new, involves an ’’Section 54, IPC, as amended.
inventive step and is industrially applicable. “Section 145, IPC, as amended.
21In Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850, September 8,
2020, the Supreme Court, in an en banc decision, abandoned its previous ru ings t at
registration does not confer ownership of the trademark and that the first user in
good faith defeats the right of the first filer in good faith; and ruled that trademark is
acquired through registration and not prior use.
’’Section 121.3, IPC, as amended. “Elidad Kho v. Court of Appeals, G.R. No. 115758, March 19, 2002.
l8Kensonic v. Uni-Line Multi Resources, Inc., supra and Fernando Juan v.
Roberto Juan, G.R. No. 221372, August 23, 2017 both citing Black's Law Dictionary,
Centennial Edition. 6th ed. West Group, St. Paul Minnesota, USA, 1990, p. 336.
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“Kho, supra. “Fernando Juan v. Roberto Juan, G.R. No. 221372, August 23, 2017.
24Jessie G. Ching v. William Salinas, Sr., et al., G.R. No. 161295, June 29,2005. 2,BAR 2010.
“Pearl & Dean Phil. v. Shoemart, Inc., G.R. No. 148222, August 15, 2003.
Section 109, IPC, as amended.
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Thus, if the inventor makes his invention available to the public Is Yosha's invention no longer patentable by virtue of the
but without obtaining a patent, he cannot restrain others from using fact that he had sold several models to the public before the
his invention. The use of the invention does not constitute patent formal application for registration of patent was filed with the
IPO?40
infringement. The rule is, no patent no protection. Neither can
anyone, however, from the public apply for and obtain a patent over
3'Angelita Manzano v. Court of Appeals, G.R. No. 113388, September 5,1997.
“Rosario Maguan v. Court of Appeals, G.R. L-45101, November 28, 1986.
^Section 23, IPC, as amended. "Section 25, IPC, as amended.
40BAR 2018.
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Yes, it is patentable because it is new, it involves an inventive 28. X invented a method of improving the tenderness of meat by
step, and it is industrially applicable.47 injecting an enzyme solution into the live animal shortly before
a slaughter. Is the invention patentable?
b. Non-patentable invention
No. A process or improvement of process that is related to
26. What are the non-patentable inventions? any field of human activity, having an inventive activity and is
These are inventions that are excluded from patent protection, industrially applicable may be patented. While the elements of
to wit: novelty and inventive step are present, the element of industrial
applicability is lacking. To be patentable, the processes must be
a. Discoveries, scientific theories and mathematical
methods, and in the case of drugs and medicines, the directed to making or improving a commercial or industrial product.50
mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the 29. X invented a bogus coin detector which can be used exclusively
known efficacy of that substance, or the mere discovery on self-operating gambling devices otherwise known as one-
of any new property or new use for a known substance, armed bandits. Can X apply for a patent? Reasons.
or the mere use of a known process unless such known
No. X may not apply for a patent since the gambling device
process results in a new product that employs at least one
referred to in the problem is itself prohibited and against public
new reactant;
order. But if the machine is used in legalized gambling, such device
b. Schemes, rules and methods of performing mental acts, can be patented.51
playing games or doing business, and programs for
computers; C. Ownership of a patent
c. Methods for treatment of the human or animal body by
i. Right to a patent
surgery or therapy and diagnostic methods practiced on
the human or animal body;
30. Who has a right to a patent?
d. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals; The right to a patent belongs to the inventor, his heirs,
e. Aesthetic creations; and or assigns. When two (2) or more persons have jointly made an
invention, the right to a patent shall belong to them jointly.52
f. Anything which is contrary to public order or morality.48
27. Supposing Albert Einstein were alive today and he filed with 31. Che-che invented a device that can convert rainwater to
the Intellectual Property Office (IPO) an application for patent automobile fuel. She asked Macon, a lawyer, to assist in
for his theory of relativity expressed in the formula E = me2. getting her invention patented. Macon suggested that they
The IPO disapproved Einstein's application on the ground that form a corporation with other friends and have the corporation
his theory of relativity is not patentable. Is the IPO's action apply for a patent, 80% of the shares of stock thereof to be
correct? subscribed by Che-che and 5% by Macon. The corporation was
Yes. The IPO’s action is correct because the theory of relativity formed and the patent application was filed. However, Che-che
is not patentable. Under Section 22.1 of the IPC, “discoveries, died three (3) months later of a heart attack.
scientific theories and mathematical methods” are non-patentable.49
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likewise came up with a similar gadget, also using scrap application together with an English translation is filed within six
materials and spare parts of the company. Thereafter, Francis (6) months from the date of filing in the Philippines.61
filed an application for registration of his device with the Bureau A patent applicant with the right of priority is given preference
of Patents. Eighteen months later, Cezar filed his application in the grant of a patent when there are two or more applicants for the
for the registration of his device with the Bureau of Patents. same invention. Since both the United States and the Philippines are
Assuming that it is patentable, who is entitled to the patent? signatories to the Paris Convention for the Protection of Industrial
What, if any, is the remedy of the losing party?57 Property, an applicant who has filed a patent application in the
United States may have a right of priority over the same invention
Francis is entitled to the Patent, because he had the earlier
in a patent application in the Philippines. However, this right of
filing date under the “First to File Rule.”68 The remedy of Cezar is to
priority does not immediately entitle a patent applicant the grant of
file a petition in court for the cancellation of the patent of Francis on
a patent. A right of priority is not equivalent to a patent. Otherwise,
the ground that he is the true and actual inventor, and ask for his a patent holder of any member-state of the Paris Convention need
substitution as patentee.59 not apply for patents in other countries where it wishes to exercise
its patent. It was, therefore, inaccurate for petitioner to argue
37. Supposing in the same question above, Joab got wind of the
that its prior patent application in the United States removed the
inventions of his employees and also laid claim to the patents, invention from the public domain in the Philippines. It should have
asserting that Cezar and Francis were using his materials and complied with the other requirements of the actual grant of the
company time in making the devices, will his claim prevail over patent. In this case, the applicant for patent was declared abandoned
those of his employees? Explain. by’ the Intellectual Property Office for failure to comply with strict
No. The claim of Joab will not prevail over those ofhis employees, procedural rules. The right of priority of the patent applicant was
therefore lost.62
even if they used his materials and company time in making the gas
saving device. The invention of the gas-saving device is not part of d. Grounds for cancellation of a patent
their regular duties as employees of a car manufacturing company.60
39. What are the grounds for cancellation of patents?
iv. Right of Priority
The following are the grounds for the cancellation of a patent,
38. What is the "Right of Priority"? a) the invention is not new or patentable; b) the patent does not
disclose the invention in a manner sufficiently clear and complete
An application for patent filed by any person who has previously for it to be carried out by any person skilled in the art; or c) the
applied for the same invention in another country which by treaty, patent is contrary to public order or morality,63 or granted when the
convention or law affords similar privileges to Filipino citizens, product or the process is non-patentable.
shall be considered as filed as of the date of the filing of the foreign
application; provided, that: a) the local application expressly claims Once cancelled, the rights conferred by the patent shall
priority; b) it is filed within 12 months from the date of the earliest terminate.
foreign application was filed; and c) certified copy of the foreign That the patent is granted not in favor of the true and actual
inventor is not a ground for cancellation of patent.
"BAR 2005.
“Section 29, IPC, as amended. 61Section 31, IPC, as amended.
“Sections 67 and 68, IPC, as amended. “E.I. Dupont De Nemours and Co. v. Director Emma C. Francisco, et al., G.R.
“Section 30.2, IPC, as amended. No. 174379, August 31, 2016.
“Section 61.1, IPC.
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40. What are the remedies of a person declared by final court order months from finality of the favorable court decision before he can
as having the right to the patent? seek for the cancellation of patent.
If a person referred to in Section 29 [First to File Rule] other 42. "I" has invented a certain device, which when attached to
than the applicant, is declared by final court order or decision the engine of a motor vehicle would cut the consumption of
as having the right to the patent, such person may, within three gasoline by 50%. Without securing a patent therefor, he started
(3) months after the decision has become final: a) prosecute the manufacturing the gadget in large quantities and promoted
its sales. An ingenious "J” bought one gadget, dismantled
application as his own application in place of the applicant; b) file a
and studied it, and in due time was himself manufacturing an
new patent application in respect of the same invention; c) request identical device. Before offering it for sale, "J" secured a patent
that the application be refused; or d) seek cancellation of the patent, for his device which he called "Gasopid" "I" learns of the patent
if one has already been issued.64 and desires to secure his own patent but fearing that he might
be sued for infringement of patents, seeks your legal advice.
41. What are the remedies of the true and actual inventor deprived How can you help him? Explain briefly.67
of the patent? T, being the first, true and actual inventor, may file an action
If a person, who was deprived of the patent without his consent in court to be declared as the one entitled to the patent and upon
or through fraud, is declared by final court order or decision to be the finality of the favorable judgment, ask the IPO to have the patent
granted to “J” cancelled and T be issued the patent. I may also
true and actual inventor, the court shall order for his substitution ask for actual and other damages as may be warranted under the
as patentee, or at the option of the true inventor, cancel the patent, circumstances.
and award actual and other damages in his favor if warranted by
the circumstances.65 f. Rights conferred by a patent
Even the true and actual inventor, who is not a patent holder, 43. What are the rights conferred by a patent?
cannot file an action for patent infringement. Such remedy is A patent shall confer on its owner the following exclusive rights:
available only to the patentee or his successors-in-interest.“ a) where the subject matter of a patent is a product, to restrain,
The remedy available to the inventor who is not issued the prohibit and prevent any unauthorized person or entity from making,
using, offering for sale, selling or importing that product; b) where
patent is not to file a petition for cancellation of patent with the IPO the subject matter of a patent is a process, to restrain, prevent or
but institute the appropriate court action to be declared the patentee prohibit any unauthorized person or entity from using the process,
and only after he has obtained judgment that he can ask the IPO to and from manufacturing, dealing in, using, selling or offering for
cancel the patent of the holder. If the inventor was deprived of patent sale, or importing any product obtained directly or indirectly from
through fraud or without his consent, he can ask for the cancellation such process.68
of patent of the holder upon finality of the favorable court decision; Patent owners shall also have the right to assign, or transfer
whereas, if the patent is issued not to the first filer but no fraud by succession the patent, and to conclude licensing contracts for the
attended the patent issuance, the inventor must wait for three (3) same.69
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iii. A judicial or administrative body has determined 48. Under what conditions can the government, or third person
that the manner of exploitation, by the owner of the authorized by the government, exploit the invention?
patent or his licensee, is anti-competitive;84 or
The use by the Government, or third person authorized by the
Government shall be subject, mutatis mutandis, to the conditions
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53. What are the tests to determine infringement of patent? in animals, identity of result does not amount to infringement of
patent unless the accused product operates in substantially the same
The tests to determine infringement of patent are: a) literal way or by substantially the same means as the patented compound,
infringement; and b) the doctrine of equivalents. even though it performs the same function and achieves the same
result. In other words, the principle or mode of operation must be
54. How is the literal infringement test used vis-a-vis the doctrine the same or substantially the same. The doctrine of equivalents thus
of equivalents? requires satisfaction of the function-means-and result test. In the
case at bar. apart from the fact the Albendozole is an anthelmintic
In using literal infringement as a test, resort must be had, in agent like methyl5propylthio-2-benzimidazole carbamate, nothing is
the first instance, to the words of the claim. If accused matter clearly more asserted regarding the method or means by which Albendozole
falls within the claim, infringement is made out and that is the end weeds out parasites in animals, thus giving no information on
of it. The Court must juxtapose the claims of the patent and the whether that method is substantially the same as the manner by
which the accused’s compound works.106
accused product within the context of the claims and specifications
to determine whether there is exact identity of all material elements. In Del Rosario v. Court of Appeals,107 a case involving patent
Under the doctrine of equivalents, infringement also occurs when a for utility model covering an audio equipment, commonly known as
device appropriates a prior invention by incorporating its innovative the sing along system or karaoke, the Supreme Court, in ruling that
there was patent infringement under the doctrine of equivalents,
concept and albeit with some modifications and change, performs
observed: (a) both are used by a singer to sing a amplify his voice;
substantially the same function in substantially the same way to (b) both are used to sing with a minus-one or multiplex tapes, or
achieve substantially the same result. It requires satisfaction of the that both are used to play minus-one or standard cassette tapes for
function-means-and-result test.10,1 singing or for listening to; (c) both are used to sing a minus-one tape
and multiplex tape and to record the singing and the accompaniment;
Applying both tests, the Supreme Court held in one case that (d) both are used to sing with live accompaniment; (d) both are used
viewed from any perspective or angle, the floating power tiller of to sing with live accompaniment and to record the same; (e) both are
petitioner is identical and similar to that of the turtle power tiller used to enhance the voice of the singer using echo effect, treble, bass
of defendant in form, configuration, design and appearance. In and other controls; (g) both are equipped with cassette tape decks
operation, the floating power tiller operates also in similar manner which are installed with one being used for playback and the other,
as the turtle power tiller. The patent issued by the Patent Office for recording the singer and the accompaniment, and both may also
referred to a “farm implement but more particularly to a turtle hand be used to record a speaker’s voice or instrumental playing, like
the guitar and other instruments; (h) both are encased in box-like
tractor having a vacuumatic housing float on which the engine drive
cabinets; and (i) both can be used with one or more microphones.
is held in place, the operating handle, the harrow housing with
its operating handle and the paddy wheel protective covering.” It Clearly, therefore, both models involve substantially the
appears from the foregoing observation of the trial court that these same modes of operation and produce substantially the same if not
identical results when used.
claims of the patent and the features of the patented utility model
were copied by petitioner. The Supreme Court is compelled to arrive 55. What’s the rationale of the doctrine of equivalents?
at no other conclusion but that there was infringement.105
The reason for the doctrine of equivalents is that to permit the
In applying this test in another case, the Supreme Court ruled imitation of a patented invention which does not copy any literal
that while both compounds have the effect of neutralizing parasites
laiSmith Kline Beckman Corporation V. Court of Appeals, G.R. No. 126627,
August 14, 2003.
101Pascua Godines v. Court of Appeals and SV-Agro Enterprises, Inc., G.R. No. mSupra.
97343, September 13, 1993; BAR 2015.
105Godines, supra.
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hollow and useless thing. Such imitation would leave room for, and
indeed encourage, the unscrupulous copyist to make unimportant b. Criminal action
and insubstantial changes and substitutions in the patent which,
though adding nothing, would be enough to take the copied matter If infringement is repeated by the infringer or by anyone in
outside the claim, and hence outside the reach of the law.108 connivance with him after finality of the judgment of the court
against the infringer, the offender shall, without prejudice to the
ii. Civil and criminal action institution of a civil action for damages, be criminally liable."3
Unlike trademark and copyright infringement, the first act of
56. What are the remedies of the patent owner in case of patent patent infringement does not give rise to criminal liability. A person
infringement? can only be held criminally liable if he repeats the commission of
the same infringing acts after finality of the court judgment (in
The remedies of the patentee in case of patent infringement a civil action for infringement) against him. The repeated acts of
are as follows: infringement will then give rise to both criminal and civil liabilities.
a. Civil action c. Provisional remedies
Any patentee, or anyone possessing any right, title or interest The patent holder may secure a preliminary injunction to
restrain acts of infringement during the pendency of the action for
in and to the patented invention, whose rights have been infringed,
patent infringement?"
may bring a civil action before a court of competent jurisdiction, to
recover from the infringer such damages sustained thereby, plus Relevantly, under the 2020 Rules of Procedure for Intellectual
attorney’s fees and other expenses of litigation, and to secure an Property Cases, at any time after the filing of the complaint, a motion
for the disposal and/or destruction of the seized infringing goods, or
injunction for the protection of his rights.'"9
materials and implements predominantly used in the infringement,
If the damages are inadequate or cannot be readily ascertained may be filed by the right-holder before the court?16
with reasonable certainty, the court may award by way of damages There is destruction when the infringing goods are completely
a sum equivalent to reasonable royalty."0 destroyed and are put beyond further use. There is disposal when
the infringing goods are effectively prohibited from re-entry into
The court may, according to the circumstances of the case, the channels of commerce but may be reused for some other lawful
award damages in a sum above the amount found as actual damages purpose.116
sustained: provided, that the award does not exceed three (3) times
the amount of such actual damages.'" The court may, in its discretion, order that the infringing goods,
materials and implements predominantly used in the infringement
Anyone who actively induces the infringement of a patent or be disposed of outside the channels of commerce or destroyed,
provides the infringer with a component of a patented product or without compensation.11’
of a product produced because of a patented process knowing it Generally, unless restrained by the Supreme Court or the
to be especially adopted for infringing the patented invention and Court of Appeals, any order issued by the court in cases involving
not suitable for substantial non-infringing use shall be liable as a intellectual property rights is immediately executory except, among
contributory infringer and shall be jointly and severally liable with
the infringer."2
"“Section 84.IPC, as amended.
‘"Section 76.2, IPC, as amended.
'“’Godines, supra. '"Rule 20, Section 1.
mIbid.
■“Section 76.2, IPC, as amended. "’Section 76.5, ibid.
■‘“Section 76.3, ibid.
'“Section 76.4, ibid.
■“Section 76.6, IPC, as amended.
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60. In an action for infringement of patent, the alleged infringer 61. What are the kinds of licensing agreements?
defended himself by stating (1) that the patent issued by
a. Voluntary Licensing
the Patent Office was not really an invention which was
patentable; (2) that he had no intent to infringe so that there b. Compulsory Licensing
was no actionable case for infringement; and (3) that there was
no exact duplication of the patentee’s existing patent but only 62. What is voluntary license in patent?
a minor improvement. A voluntary license is an authorization given by the patent
holder to another person allowing him to produce the patented
With those defenses, would you exempt the alleged article. The license usually fixes the amount of royalties, sets quality
violator from liability? Why?120 requirements and defines the markets in which the licensee can sell
I would not exempt the alleged violator from liability for the the product.
following reasons: The licensee shall be entitled to exploit the subject matter of
the technology transfer arrangement during the whole term of the
a. A patent once issued by the Patent Office raises a technology transfer arrangement.128
presumption that the article is patentable. The validity
of the patent and the question over the inventiveness, To encourage the transfer and dissemination of technology,
prevent or control practices and conditions that may in particular
novelty and usefulness of the product are matters which
cases constitute an abuse of intellectual property rights having an
are better determined by the Patent Office. There is adverse effect on competition and trade, all technology transfer
a presumption that the Philippine Patent Office has arrangements shall comply with the provisions of voluntary licensing
correctly determined the patentability of the model and under the IPC.129
such action must not be interfered with in the absence of |
12,Manzano v. Court of Appeals, G.R. No. 113388, September 5, 1997. -
I28Section 90, IPC, as amended.
'“Rosario Maguan v. Court of Appeals, G.R. L-45101, November 28,1986. 129Section 85, IPC, as amended.
'“Section 82, IPC, as amended.
'“BAR 1992.
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63. Enumerate three (3) stipulations that are prohibited in E- Those which require payments for patents and other
technology transfer agreements.1 “ industrial property rights after their expiration,
termination arrangement;
The following stipulations are prohibited in technology transfer
agreements: h. Those which require that the technology recipient shall
Those which impose upon the licensee the obligation to not contest the validity of any of the patents of the
a.
acquire from a specific source capital goods, intermediate technology’ supplier;
products, raw materials, and other technologies, or i. Those which restrict the research and development
of permanently employing personnel indicated by the activities of the licensee designed to absorb and adapt the
licensor; transferred technology to local conditions or to initiate
b. Those pursuant to which the licensor reserves the right to research and development programs in connection with
fix the sale or resale prices of the products manufactured new products, processes or equipment;
on the basis of the license; and, Those which prevent the licensee from adapting the
j.
c. Those that contain restrictions regarding the volume and imported technology to local conditions, or introducing
structure of production. innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
Other prohibited clauses are as follows:131
k. Those which exempt the licensor for liability for non
a. Those that prohibit the use of competitive technologies in fulfillment of his responsibilities under the technology
a non-exclusive technology transfer agreement; transfer arrangement and/or liability arising from third
b. Those that establish a full or partial purchase option in party suits brought about by the use of the licensed
favor of the licensor; product or the licensed technology; and
c. Those that obligate the licensee to transfer for free to 1. Other clauses with equivalent effects.
the licensor the inventions or improvements that may be
obtained through the use of the licensed technology; 64. What contractual stipulations are required in all technology
transfer agreements?
d. Those that require payment of royalties to the owners of
patents for patents which are not used; The following stipulations are required in all technology
transfer agreements:
e. Those that prohibit the licensee to export the licensed
product unless justified for the protection of the legitimate a. The laws of the Philippines shall govern its interpretation
interest of the licensor such as exports to countries where and in the event of litigation, the venue shall be the proper
exclusive licenses to manufacture and/or distribute the court in the place where the licensee has its principal
licensed product(s) have already been granted; place of business;
f. Those which restrict the use ofthe technology supplied after b. Continued access to improvements in techniques and
the expiration of the technology transfer arrangement, processes related to the technology shall be made available
except in cases of early termination of the technology during the period of the technology transfer arrangement;
transfer arrangement due to reason(s) attributable to the
licensee; c. In case it shall provide for arbitration, the Procedure of
Arbitration of the Arbitration Law of the Philippines or
the Arbitration Rules of the International Chamber of
1MBAR 2010. Commerce (ICC) shall apply and the venue of arbitration
131Section 87.4 to 87.15, IPC, as amended.
shall be the Philippines or any neutral country;
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d. The Philippine taxes on all payments relating to the the importation of the patented article shall constitute
technology transfer agreement shall be borne by the working or using the patent;'"" and
licensor. 132
f. Where the demand for patented drugs and medicines is
65. What is compulsory licensing? not being met to an adequate extent and on reasonable
terms, as determined by the Secretary of the Department
Compulsory licensing is when the government allows another of Health.'39
person to produce the patented product or process without the
consent of the patent owner or plans to use the patented invention A compulsory license shall also be available for the manufacture
itself. and export of drugs and medicines to any country having insufficient
or no manufacturing capacity in the pharmaceutical sector to address
66. What are the grounds for compulsory licensing of a patent? public health problems: provided, that, a compulsory license has
been granted by such country or such country has, by notification or
The Director General of the Intellectual Property Office may otherwise, allowed importation into its jurisdiction of the patented
grant a license to exploit a patented invention, even without the drugs and medicines from the Philippines in compliance with the
agreement of the patent owner, in favor of any person who has shown TRIPS Agreement.140
his capability to exploit the invention, under any of the following
circumstances:133 67. Super Biology Corporation (Super Biology) invented and
a. National emergency or other circumstances of extreme patented a miracle medicine for the cure of AIDS. Being the
urgency;134 sole manufacturer, Super Biology sold the medicine at an
exorbitant price. Because of the sudden prevalence of AIDS
b. Where the public interest, in particular, national security, cases in Metro Manila and other urban areas, the Department
nutrition, health or the development of other vital sectors of Health (DOH) asked Super Biology for a license to produce
of the national economy as determined by the appropriate and sell the AIDS medicine to the public at a substantially
agency of the Government, so requires;135 or lower price. Super Biology, citing the huge costs and expenses
c. Where a judicial or administrative body has determined incurred for research and development, refused. Assuming you
that the manner of exploitation by the owner of the patent are asked your opinion as the legal consultant of DOH, discuss
or his licensee is anti-competitive;136 or how you will resolve the matter.
d. In case of public non-commercial use of the patent by the DOH may file a petition for compulsory license with the
patentee, without satisfactory reason;'37 Director of Legal Affairs of the Intellectual Property Office to exploit
the patented medicine even without the agreement of the patent
e. If the patented invention is not being worked in the owner on the ground of public interest, in particular, health.141 Once
Philippines on a commercial scale, although capable of granted, the DOH may then produce and sell the AIDS medicines
being worked, without satisfactory reason: provided, that for a cheaper price subject to payment of reasonable royalties to
Super Biology.142
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68. What is the period to file a petition for compulsory license? C. The license shall be non-assignable, except with that part
of the enterprise or business with which the invention is
A compulsory license may not be applied for before the being exploited;
expiration of a period of four (4) years from the date of filing of the
application or three (3) years from the date of the patent whichever d. Use of the subject matter of the license shall be devoted
period expires last.1'13 predominantly for the supply of the Philippine market:
provided, that this limitation shall not apply where
Compulsory license may be applied for at any time after the the grant of the license is based on the ground that the
grant of the patent in the following cases:144 patentee’s manner of exploiting the patent is determined
a. Where the public interest, in particular, national security, by judicial or administrative process, to be anti
nutrition, health or the development of other vital sectors competitive; r
of the national economy as determined by the appropriate e. The license may be terminated upon proper showing
agency of the Government, so requires; or that circumstances which led to its grant have ceased to
b. Where a judicial or administrative body has determined exist and are unlikely to recur: provided, that adequate
that the manner of exploitation by the owner of the patent
protection shall be afforded to the legitimate interest of
or his licensee is anti-competitive; or the licensee; and
In case of public non-commercial use of the patent by the f. The patentee shall be paid adequate remuneration
c.
patentee, without satisfactory reason; and,
taking into account the economic value of the grant or
authorization, except that in cases where the license was
d. If the invention protected by a patent, hereafter referred granted to remedy a practice which was determined after
to as the “second patent,” within the country cannot be judicial or administrative process, to be anti-competitive,
worked without infringing another patent, hereafter the need to correct the anti-competitive practice may be
referred to as the “first patent,” granted on a prior taken into account in fixing the amount of remuneration.1”
application or benefiting from an earlier priority, a
Relevantly, in Price v. United Laboratories,146 the Supreme
compulsory license may be granted to the owner of the
Court held that a compulsory license may be granted over the entire
second patent to the extent necessary for the working of
patented invention for there is no law requiring that the license be
his invention.
limited to a specific embodiment of the invention or to a particular
claim.
69. What are the terms and conditions of compulsory license?
The basic terms and conditions including the rate of royalties 70. Does compulsory licensing amount to deprivation of the
of a compulsory license shall be fixed by the Director of Legal Affairs property right of the patent holder without due process of law?
subject to the following conditions: There is no deprivation of property without due process of law
a. The scope and duration of such license shall be limited to because the compulsory license acknowledges the patentee as the
the purpose for which it was authorized; owner of the patent and he will be paid reasonable royalties for the
exploitation of his invention by the licensee.147
b. The license shall be non-exclusive;
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the IPO and after registration, preclude others from adopting the
77. Is registration with the IPO a prerequisite in an infringement
same trademark for same and similar goods.163
suit of a trade name?
b. Acquisition of ownership of mark
No. A trade name previously used in trade or commerce
in the Philippines need not be registered with the IPO before an
81. How is trademark acquired?
infringement suit may be filed by its owner against the owner of an
infringing trademark. The IPC eliminated such requirement.158 The rights in a mark shall be acquired through registration
made validly in accordance with the provisions of the law. The
78. What is the objective of the law in protecting trademarks? applicant or the registrant shall file a declaration of actual use
The purpose of the law in protecting trademarks has a two of the mark with evidence to that effect, within three (3) years
fold objective; to protect the owner of his property and to protect the from the filing date of the application. Otherwise, the application
public from being deceived by reason of a misleading claim.169 shall be refused or the mark shall be removed from the Register
by the Director unless non-use is caused by circumstances arising
Trademarks have several functions: they indicate the origin independently of the will of the trademark owner. Lack of funds
or ownership of the articles or services in which they are used; shall not excuse non-use of a mark.164
they guarantee that the articles or services comes up to a certain
standard of quality; and they advertise the articles and services In Zuneca Pharmaceutical v. Natrapharm, Inc.,'65 the Supreme
Court abandoned its previous rulings166 that registration does not
they symbolize.160
confer ownership of the trademark and that the first user in good
79. What are the territorial limits of a trademark?
faith defeats the right of the first filer in good faith. Instead, it was
held that trademarks are acquired solely through registration.
Trademarks acknowledge no territorial boundaries of states or
nations, but extend to every market where the trader’s goods have In this case, the two competing marks involved were
become known and identified by his use of the mark.161 “ZYNAPS” and “ZYNAPSE.” They were admitted by both parties to
be confusingly similar with each other. “ZYNAPS” (without an E)
80. Does the owner of a trademark have a right of property to
is owned by Zuneca. It is a drug for the treatment of seizures like
prevent others from manufacturing, producing, or selling the
epilepsy. On the other hand, Natrapharm owns “ZYNAPSE” (with
same article to which it is attached? an E), which is also a medicine, but for stroke.
No. The owner of a trademark has no right of property to Zuneca never registered its trademark “ZYNAPS” with the
prevent others from manufacturing, producing or selling the same Intellectual Property (IP) Office, but it has been using it since 2004.
article to which it is attached. In other words, the trademark Meanwhile, Natrapharm has registered its trademark “ZYNAPSE”
confers no exclusive rights in the goods to which the mark has been on September 24, 2007.
applied.162 The owner of the trademark can have it registered with
163BAR 1982.
'“Coffee Partners v. San Francisco Coffee and Roastery, Inc., G.R. No. 169504, 16iSection 152.1, IPC, as amended.
March 3, 2010. ™Ibid.
'“63 C.J. Section 5; BAR 1982. 166These are the cases of: Mattel, Inc. v. Emma Francisco, etal., G.R. No. 166886,
'“Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, September July 30, 2008; E.Y. Industrial Sales v. Shien Dar Electricity and Machinery Co., G.R.
8,2020. No. 184850, October 20, 2010; Berris Agricultural Co., Inc v. Norvy Abyadang, G.R.
16163 C.J. Section 12; BAR 1982. No. 183404, October 13, 2010; Birkenstock Orthopaedia GMBH v. Philippine Shoe
IK63 J.C. Section 12. Expo Marketing Corporation, G.R. No. 194307, November 20, 2013; Ecole de Cuisine
Manille v. Renaud Cointreau, G.R. No. 185830, June 5, 2013.
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With that, Natrapharm sued Zuneca for trademark the rights expressed in the IP Code, the first to file rule nevertheless
infringement for using a confusingly similar trademark in the same prioritizes the first filer of the trademark application and operates
field of drugs or medicine. Zuneca counter-sued and alleged that to prevent any subsequent applicant from registering the mark.1,1
Natrapharm was the one in bad faith since it (Natrapharm) knows
Zuneca’s usage of “ZYNAPS” as a mark since 2004 considering that 83. Is the registrant still required to declare actual use of the
they both presented their products in the same pharmaceutical trademark?
convention years prior. Yes, the applicant or registrant must declare actual use of the
The trial court found Zuneca liable for trademark infringement, trademark. The applicant or the registrant shall file a declaration
essentially saying that Natrapharm was the first one to register of actual use of the mark with evidence to that effect within three
the trademark in good faith. The trial court found no bad faith on (3) years from the filing date of the application. Otherwise, the
the part of Natrapharm either since Zuneca failed to prove that application shall be refused or the mark shall be removed from the
Natrapharm actually knew the existence of Zuneca’s “ZYNAPS.” Register by the Director.108
The Court of Appeals affirmed this decision.
In Mattel v. Francisco,169 it was held that an admission in a
The Supreme Court partly affirmed the lower courts’ decision. pleading (Comment and Memorandum) that the party has not filed
It definitively ruled that the only mode of acquiring ownership of a declaration of actual use within three (3) years from application
trademark is through registration (and not use). According to the may be construed as an abandonment or withdrawal of any right or
Supreme Court: “(i) the language of the IP Code provisions clearly interest in his trademark.
conveys the rule that ownership of a mark is acquired through
The registrant is also required to file a declaration of actual
registration; (ii) the intention of the lawmakers was to abandon
the rule that ownership of a mark is acquired through use; and use and evidence to that effect within one (1) year from the fifth
(iii) the rule on ownership used in Berris and E. Y. Industrial Sales, anniversary of the date of the registration of the mark.170
Inc. [cases] is inconsistent with the IP Code regime of acquiring The Supreme Court, however, held that while the registrant
ownership though registration.” should declare actual use, this does not imply that actual use is
Indeed, Section 122 of the IP Code states “[t]he rights in a mark the recognized mode of acquisition of ownership. Rather, it must be
shall be acquired through registration made validly in accordance understood as provision requiring actual use of the mark in order for
with, the provisions of this law. ” the registered owner of a mark to maintain his ownership.171
In short, the Supreme Court held that Natrapharm’s 84. What is the significance of the certificate of registration of a
“ZYNAPSE” must prevail over Zuneca’s “ZYNAPS” since the former trademark?
was first registered. The Supreme Court, however, absolved Zuneca
from being liable for trademark infringement because it found A certificate of registration of a mark shall be prima facie
Zuneca to be a prior user in good faith. Accordingly, the IP Code evidence of the validity of the registration, the registrant’s ownership
contemplates that a prior user in good faith may continue to use of the mark, and of the registrant’s exclusive right to use the same
its mark even after the registration of the mark by the first to file in connection with the goods or services and those that are related
registrant in good faith. thereto specified in the certificate.172
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The rule on the prima facie validity of a certificate of registration d. Is identical with a registered mark belonging to a different
is merely meant to recognize the instances when such certificate is proprietor or a mark with an earlier filing or priority date,
not reflective of ownership such as when the registration was done in respect of:
contrary to the IP Code.173 i. The same goods or services; or
C. Acquisition of ownership of trade name ii. Closely related goods or services, or
Trade name is acquired by use. iii. If it nearly resembles such a mark as to be likely to
Notwithstanding any laws or regulations providing for any deceive or cause confusion (confusing similarity);
obligation to register trade names, such names shall be protected, Is identical with, or confusingly similar to, or constitutes
e.
even prior to or without registration, against any unlawful act a translation of a mark which is considered by the
committed by third parties.174 In particular, any subsequent use of
competent authority of the Philippines to be well-known
the trade name by a third party, whether as a trade name or a mark
internationally and in the Philippines, whether or not it
or collective mark, or any such use of a similar trade name or mark,
is registered here, as being already the mark of a person
likely to mislead the public, shall be deemed unlawful.176
other than the applicant for registration, and used for
The remedies provided for infringement of trademark in shall identical or similar goods or services: provided, that in
apply mutatis mutandis in case of trade name infringement.176 determining whether a mark is well-known, account
d. Non-registrable marks shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including
85. What are the so-called "unregistrable marks"? knowledge in the Philippines which has been obtained as
a result of the promotion of the mark;
A mark cannot be registered if it:
f. Is identical with, or confusingly similar to, or constitutes a
a. Consists of immoral, deceptive or scandalous matter, translation of a mark considered well-known in accordance
or matter which may disparage or falsely suggest a with the preceding paragraph, which is registered in the
connection with persons, living or dead, institutions, Philippines with respect to goods or services which are
beliefs, or national symbols, or bring them into contempt not similar to those with respect to which registration
or disrepute; is applied for: provided, that use of the mark in relation
b. Consists of the flag or coat of arms or other insignia of the to those goods or services would indicate a connection
Philippines or any of its political subdivisions, or of any between those goods or services, and the owner of the
foreign nation, or any simulation thereof; registered mark: provided, further, that the interests of
the owner of the registered mark are likely to be damaged
c. Consists of a name, portrait or signature identifying a by such use;
particular living individual except by his written consent,
or the name, signature, or portrait of a deceased President S- Is likely to mislead the public, particularly as to the
of the Philippines, during the life of his widow, if any, nature, quality, characteristics or geographical origin of
except by written consent of the widow; the goods or services;
h. Consists exclusively of signs that are generic for the goods
or services that they seek to identify;
l73Zuneca Pharmaceuticals, supra. L Consists exclusively of signs or of indications that have
174Section 165.2, (a) IPC, as amended. become customary or usual to designate the goods
176Section 165.2 (b), IPC, as amended.
or services in everyday language or in bona fide and
l76Section 165.3, IPC, as amended.
established trade practice;
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Consists exclusively of signs or of indications that may No. Fredco’s registration of the mark “Harvard” should not
j. have been allowed because the law prohibits the registration of
serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or a mark "which may disparage or falsely suggest a connection
production of the goods or rendering of the services, or with persons, living or dead, institutions, beliefs. Fredco’s use of
other characteristics of the goods or services; the mark “Harvard,” coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard
k. Consists of shapes that may be necessitated by technical University. On this ground alone, Fredco’s registration of the mark
factors or by the nature of the goods themselves or factors "Harvard” should have been disallowed.
that affect their intrinsic value;
Moreover, the Philippines and the United States of America
1. Consists of color alone, unless defined by a given form; or are both signatories to the Paris Convention for the Protection of
m. Is contrary to public order or morality.1” Intellectual Property.”8 The Philippines is obligated to assure
nationals of countries of the Paris Convention that they are afforded
Immoral, deceptive, scandalous matter or falsely suggesting a an effective protection against violation of their intellectual property
connection with person, belief, institution or symbol rights in the Philippines in the same way that their own countries
are obligated to accord similar protection to Philippine nationals.
86. Fredco Manufacturing Corporation (Fredco), filed a Petition Thus, under Philippine law, a trade name of a national of a State
for Cancellation of Registration No. 56561 before the Bureau that is a party to the Paris Convention, whether or not the trade
of Legal Affairs of the Intellectual Property Office (IPO) name forms part of a trademark, is protected “without the obligation
against President and Fellows of Harvard College (Harvard of filing or registration.””9
University), a corporation organized and existing under the
laws of Massachusetts, United States of America. Name, portrait, signature of living individual
Fredco alleged that Registration No. 56561 was issued 87. Can the name of spouses of deceased Presidents be registered
to Harvard University for the mark "Harvard Veritas Shield as a trademark?
Symbol” for decals, tote bags, serving trays, sweatshirts,
t-shirts, hats and flying discs under Classes 16, 18, 21, 25 Yes. What the law prohibits is the registration of marks that
and 28 of the Nice International Classification of Goods and consist of a name, portrait or signature identifying a particular living
Services. Fredco alleged that the mark "Harvard" for t-shirts, individual except by his written consent, or the name, signature, or
polo shirts, sandos, briefs, jackets and slacks was first used portrait of a deceased President of the Philippines, during the life of
in the Philippines by New York Garments Manufacturing & his widow, if any, except by written consent of the widow.180
Export Co., Inc. (New York Garments), Fredco's predecessor
in-interest. Identical mark
Harvard University, on the other hand, alleged that it is 88. What is the first to file rule in trademarks?
the lawful owner of the name and mark "Harvard" in numerous
The first to file rule in trademarks means that the filing of the
countries worldwide, including the Philippines.
application for registration of trademark in good faith precludes
Fredco made use of the mark "Harvard" for jeans coupled registration of the same trademark for the same goods or services or
with a claim that it originated in Cambridge. Was Fredco's closely related goods and services.
registration of such mark valid?
’’’Paris Convention.
1,9Fredco Manufacturing Corporation President and Fellows of Harvard
’’’Section 123.1, IPC, as amended. College, G.R. No. 185917, June 1,2011.
'“Section 123.1(c), IPC, as amended.
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90. What are the tests in determining likelihood of confusion? 93. Cite jurisprudence where the Supreme Court applied the
dominancy test.
Likelihood of confusion is the gravamen of the' offense of
Yes. The Supreme Court applied the dominancy test in the
trademark infringement. In determining likelihood of confusion, following cases:
jurisprudence has developed two tests, the dominancy test and the
le8UFC Philippines, Inc. (Now Merged with Nutri-Asia, Inc., with Nutri-Asia,
Inc. as the Surviving Entity) v. Fiesta Barrio Manufacturing Corporation, G.R. No.
'“'McDonald’s Corporation v. L.C. Big Mak Burger, Inc., G.R. No. 143993, 198889, January 20, 2016; BAR 1996.
August 18,2004. 1&1Dermaline, Inc. v. Myra Pharmaceuticals, G.R. No. 190065, August 1,2010.
'““Converse Rubber Corporation v. Universal Rubber Products, Inc., G.R. No.
1-27906, January 8, 1987.
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Besides and most importantly, both trademarks are used of Dermaline’s applied trademark over the radio, chances
in the sale of fastfood products. are he will associate it with Myra’s registered mark.
h. Pcynogenol v. PCO-GENOLS.102 j. "NANNY’ is confusingly similar to “NAN.”19J
Both the word[s] PYCNOGENOL and PCO-GENOLS have Applying the dominancy test in the present case, the
the same suffix “GENOL” which on evidence, appears to be Court finds that “NANNY’ is confusingly similar to
merely descriptive and furnish no indication of the origin "NAN.” “NAN” is the prevalent feature of Nestle’s line
of the article and hence, open for trademark registration of infant powdered milk products. It is written in bold
by the plaintiff thru combination with another word or letters and used in all products. The line consists of PRE-
phrase such as PYCNOGENOL, Furthermore, although
NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, “NANNY
the letters “Y” between P and C, “N” between O and C
contains the prevalent feature “NAN.” The first three
and “S” after L are missing in the [petitioner’s] mark
letters of “NANNY’ are exactly the same as the letters of
PCO-GENOLS, nevertheless, when the two words are
pronounced, the sound effects are confusingly similar “NAN.” When “NAN” and “NANNY’ are pronounced, the
not to mention that they are both described by their aural effect is confusingly similar.
manufacturers as a food supplement and thus, identified k. Comparing Berris’ mark D-10 80 WP with Abyadang’s
as such by their public consumers. mark NS D-10 PLUS, as appearing on their respective
i. Dermaline and Dermalin.103 packages, one cannot but notice that both have a common
component which is D-10. Admittedly, D-10 is the
Dermaline’s insistence that its applied trademark dominant feature of the mark.195
“DERMALINE, INC.” had differences “too striking
to be mistaken” from Myra’s “DERMALIN’ cannot 1. The use of the stylized “S” in Strong Rubber shoes infringes
be sustained. While it is true that the two marks are on the mark already registered by Sketchers. While it is
presented differently — Dermaline’s mark is written undisputed that Sketcher’s stylized “S” is with an oval
with the first “DERMALINE” in script going diagonally design and the other party did not use the oval design, the
upwards from left to right, with an upper case “D” dominant feature of the trademark is the stylized “S” as it
followed by the rest of the letters in lower case, and the is the one that catches the eye of the purchaser.196
portion “DERMALINE, INC.” is written in upper case
m. OK Hotdog Inasal Cheese Hotdog Flavor Mark for curl
letters, below and smaller than the long-hand portion;
snack product is a colorable imitation of the Mang Inasal
while Myra’s mark “DERMALIN’ is written in an
upright font, with a capital “D” and followed by lower mark for marinated chicken.19’
case letters — the likelihood of confusion is still apparent. It is undisputed that the OK Hotdog Inasal mark
This is because they are almost spelled in the same way, copied and adopted as one of its dominant features the
except for Dermaline’s mark which ends with the letter “INASAL” element of the Mang Inasal mark. Given that
“E,” and they are pronounced practically in the same the “INASAL”element is, at the same time, the dominant
manner in three (3) syllables, with the ending letter “E”
in Dermaline’s mark pronounced silently. Thus, when an
ordinary purchaser, for example, hears an advertisement
191Societe Des Produits Nestle, SA v. Dy, G.R. No. 172276, August 8, 2010.
195Berris Agricultural Co., Inc. v. Norvy Abyadang, G.R. No. 183404, October
13,2010.
192Prosource International v. Horphag Research, G.R. No. 180073, November 196Sketchers USA Inc. v. Inter Pacific Industrial Trading, G.R. No. 164321,
25,2009. March 23, 2011; BAR 2014.
193Dermaline, Inc. v. Myra Pharmaceuticals, G.R. No. 190065, August 1, 2010. 197Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation, G.R No.
221717, June 19, 2017.
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and most distinctive feature of the Mang Inasal mark, 264 DIVINA ON COMMERCIAL LAW:
the said elements incorporation in the OK Hotdog Inasal A COMPREHENSIVE GUIDE VOLUME II
mark, thus, has the potential to project the deceptive and
false impression that the latter mark is somehow linked with the IPO. Even if the second cited mark owned by
Metro International contains an accompanying device,
or associated with the former mark. and the third cited mark contains the terms “Philippine
n. PHILIPS v. PHILITES for fluorescent bulb, incandescent Daily Inquirer", (sic) the dominant feature of the subject
light, starter and ballast.'98 and cited marks is still clearly the word “Metro”, (sic)
spelled and pronounced in exactly the same way. The
Applying both the dominancy and holistic test, the identity between the marks would indubitably result in
Supreme Court ruled that the consuming public does not confusion of origin as well as goods.”
have the luxury of time to ruminate the phonetic sounds P- “CITY CASH WITH GOLDEN LION’S HEAD” for Bank
of the trademarks, to find out which one has a short or ATM service and “CITI” marks for various banking
long vowel sound. At bottom, the letters “PHILI” visually services.2®
catch the attention of the consuming public and the use The Supreme Court said that applying the dominancy test,
of respondent’s trademark will likely deceive or cause the prevalent feature of CITYSTATE SAVING’S BANK’S
confusion. Most importantly, both trademarks are used mark, the golden lion’s head device, is not present at all
in the sale of the same goods, which are light bulbs. A in any of CITIGROUP’S marks. The only similar feature
comparison between petitioner’s registered trademark between respondent’s mark and petitioner’s collection of
marks is the word “CITY” in the former, and the “CITI”
“PHILIPS” as used in the wrapper or packaging of its prefix found in the latter. The Court concluded that this
light bulbs and that of respondent’s applied for trademark similarity alone is not enough to create a likelihood of
“PHILITE” as depicted in the container or actual wrapper/ confusion.
packaging of the latter’s light bulbs will readily show that
there is a strong similitude and likeness between the two 94. Cite jurisprudence where the Supreme Court applied the
trademarks that will likely cause deception or confusion to holistic test.
the purchasing public. The fact that the parties’ wrapper a. When it comes to pants/jeans, the Supreme Court has
or packaging reflects negligible differences considering the consistently applied the holistic test. Thus, it was held
use of a slightly different font and hue of the yellow is of that the trademark “Stylistic Mr. Lee” for maong pants
cannot be deemed confusingly similar with the trademark
no moment because taken in their entirety, respondent’s
“Lee.” The test of fraudulent simulation is to be found in
trademark “PHILITES” will likely cause confusion or the likelihood of the deception of some persons in some
deception to the ordinary purchaser with a modicum of measure acquainted with an established design and
intelligence. desirous of purchasing the commodity with which that
design has been associated. When the casual buyer is
0. The word “Metro” for magazine publication.199 predisposed to be more cautious in his purchase, as in this
case where the products concerned are not inexpensive,
It was held that “the dominant feature of the applicant
the likelihood of confusion is absent. Further, maong pants
mark is the word “METRO” which is identical, both and jeans are not inexpensive and as the casual buyer
visually and aurally, to the cited marks already registered is predisposed to be more cautious and discriminating in
“‘’Citigroup, Inc. Citystate Savings Bank, Inc., G.R. No. 205409, June 13,
198Dy v. Koninklijke Philips Electronics, N.V., G.R. No. 186088, March 22, 2018.
2017.
199ABS-CBN v. Director of the Bureau of Trademarks, G.R. No. 217916, June
20,2018.
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and would prefer to mull over his/her purchase, confusion written or printed. There are visual differences between
and deception is less likely.201 LOLANE and ORLANE since the mark ORLANE is in
The Court also ruled that the jeans trademarks of Levi’s plain block upper case letters while the mark LOLANE
b.
Philippines and Diaz’s “made-to-order” ones must be was rendered in stylized word with the second letter “L”
considered as a whole in determining the likelihood of and the letter “A" co-joined. Second, as to the aural aspect
confusion between them. The consuming public could of the marks, LOLANE and ORLANE do not sound alike.
easily discern if the jeans were original or fake or were Appeals to the ear in pronouncing ORLANE and LOLANE
manufactured by other brands of jeans. Confusion and are dissimilar. The first syllables of each mark, i.e., OR
deception were remote since maong jeans are expensive and LO do not sound alike, while the proper pronunciation
and the casual buyer is predisposed to be more cautious of the last syllable LANE — “LEYN” for LOLANE and
and discriminating in and would prefer to mull over his “LAN” for ORLANE, being of French origin, also differ.2"
purchase. Further, Diaz used the trademark “LS JEANS e. Although the perceived offending word “MARK’ is itself
TAILORING” for the jeans he produced and sold. His prominent in petitioner’s trademarks “MARK VII”
trademark was visually and aurally different from the and “MARK TEN,” the entire marking system should
trademark “LEVI STRAUSS & CO” appearing on the be considered as a whole and not dissected, because a
patch of original jeans. Diaz also aptly noted that the discerning eye would focus not only on the predominant
design used by LEVIS was an image of two horses but word but also on the other features appearing in the
the evidence will show that there was no such design labels; only then would such discerning observer draw his
in the seized jeans, instead, what is shown is a ‘buffalo conclusion whether one mark would be confusingly similar
design.”202 to the other and whether or not sufficient differences
C. The trademarks FRUIT OF THE LOOM and FRUIT existed between the marks.205
FOR EVE, for hang tags do not resemble each other as It should be noted that the Supreme Court has often
to confuse or deceive an ordinary purchaser, who must
applied the dominancy test when it comes to “inexpensive
be thought of as having, and credited with, at least
and common” household items bought off the shelf by
a modicum of intelligence to be able to see the obvious
“undiscerningly rash” purchasers. As such, if the ordinary
differences between the two trademarks in question.203
purchaser is “undiscerningly rash”, then he would not
d. Based on the distinct visual and aural differences have the time nor the inclination to make a keen and
between LOLANE and ORLANE, there is no confusing perceptive examination of the physical discrepancies
similarity between the two marks. The suffix LANE is not in the trademarks of the products in order to exercise
the dominant feature of petitioner’s mark. Neither can it his choice.200 When it comes to products that require
be considered as the dominant feature of ORLANE which discernment or mulling things over, like jeans, the
would make the two marks confusingly similar. First, an Supreme Court has applied the holistic test. The Philip
examination of the appearance of the marks would show Morris case is a rare exception.
that there are noticeable differences in the way they are
f. There are distinct visual and aural differences between
Great White Shark’s Greg Norman Logo and Caralde’s
Shark and Logo Mark. There being no confusing
“'Emerald Garment Manufacturing Corporation v. Court of Appeals, G.R. No.
100098, December 29, 1995.
“2Diaz v. People of the Philippines and Levi Strauss (Phil.), G.R. No. 180677,
February 18, 2013. 2<MSeri Somboonsakdikul v. Orlane S.A., G.R. No. 188996, February 1, 2017.
203Fruit of the Loom, Inc. v. Court of Appeals, G.R. No. L-32747, November 29, ““Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June
27, 2006.
1984.
““Societe Des Produits Nestle v. Court of Appeals, April 4, 2001, supra.
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similarity between the subject marks, the matter of Great 268 DIVINA ON COMMERCIAL LAW:
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White Shark’s mark has gained recognition becomes
necessary.207
In another case, the Court also prevented the registration of
a trademark based on similarity of sound, explaining that both the
Idem sonans words PYCNOGENOL and PCO-GENOLS have the same suffix
"GENOL" which appears to be merely descriptive and furnish no
95. What is the idem sonans rule in trademark? indication of the origin of the article and hence, open for trademark
registration by the plaintiff thru combination with another word or
The rule on idem sonans is also a test to resolve the confusing phrase such as PYCNOGENOL. Although there were dissimilarities
similarity of trademarks. A mark with a different spelling but is in the trademark due to the type of letters used as well as the size,
similar in sound with a registered trademark when read may be color, and design employed on their individual packages/bottles, still
ruled as being confusingly similar with the said registered mark. the close relationship of the competing products’ name in sounds as
they were pronounced, clearly indicates that purchasers could be
96. Is there a clear-cut rule in the use of both dominancy and misled into believing that they are the same and/or originates from
a common source and manufacturer.210
holistic tests?
Similarly, the Court also used the aural effect of a trademark
None. There is no objective test for determining whether the when it ruled that ‘NANNY1 is confusingly similar to ‘NAN,’ the
confusion is likely. Likelihood of confusion must be determined prevalent feature of Nestle’s fine of infant powdered milk products
according to the particular circumstances of each case.208 In the which is written in bold letters and used in all products. The first
history of trademark cases in the Philippines, there are no hard three letters of‘NANNY1 are exactly the same as the letters of‘NAN’
and fast rules in ascertaining whether one trademark is confusingly and when ‘NAN’ and ‘NANNY1 are pronounced, the aural effect is
similar to or is a colorable imitation of another. While Section 155.1 confusingly similar.211
of the IPC explicitly refers to the dominancy test in determining 97. What is the scope of protection afforded to registered
trademark infringement, still, each case must be decided on its own trademark owners?
merits. In fact, in certain cases, the Supreme Court applied both
The scope of protection afforded to registered trademark owners
dominancy and holistic tests to determine likelihood of confusion.209
is not limited to protection from infringers with identical goods. It
The ultimate question in cases of trademark infringement is “whether also extends to protection from infringers with related goods, and
the use of the marks involved would be likely to cause confusion to market areas that are the normal expansion of business of the
or mistakes in the mind of the public or deceive purchasers”, registered trademark owners.
regardless of whether the dominancy or the holistic test is applied. This means that the registered trademark owner may use his
The universal test has been said to be whether the public is likely mark on the same or similar products, in different segments of the
to be deceived. market, and at different price levels depending on variations of the
products for specific segments of the market. The Supreme Court has
recognized that the registered trademark owner enjoys protection in
2O7Great White Shark Enterprises v. Caralde, G.R. No. 192294, November 21, product and market areas that are the normal potential expansion
2012. of his business.2'2
““CITIGROUP v. Citystate, supra.
““Berris Agricultural Co., Inc. v. Norvy Abyadang, G.R. No. 183404, October
210Prosource International, Inc. v. Horphag Research Management SA, G.R.
13,2010 involving the trademark D-10 80 WP and NS D-10 PLUS for fungicide; Amigo No. 180073, November 25, 2009.
Manufacturing, Inc. v. Cluett Peabody Co., Inc., G.R. No. 139300, March 14, 2001 211Societe Des Produits Nestle, S.A. v. Dy, Jr., G.R. No. 172276, August 8, 2010.
involving the trademark Gold Toe and Gold Top for socks; Prosource International, 212Sketchers USA, Inc. v. Inter Pacific Industrial Trading, G.R. No. 164321,
Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25, 2009 March 23, 2011; Societe Des Produits Nestle, SA v. Dy, G.R. No. 172276, August 8,
involving the trademarks PYCNOGENOL and PCO-GENOLS for food supplement; 2010.
Coffee Partners v. San Francisco Coffee and Roastery, Inc., G.R. No. 169504, March 3,
2010 involving the trademarks SAN FRANCISCO COFFEE and SAN FRANCISCO
COFFEE & ROASTERY for coffee products.
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In Societe Des Produits Nestle, S.A. u Martin Dy, Jr.,m the not. that the petitioner has supplied the flavorings for respondent’s
Supreme Court held that while there are differences between NAN product. Either way, the reputation of petitioner would be taken
and NANNY, (1) NAN is intended for infants while NANNY is advantage of and placed at the mercy of respondent.217
intended for children past their infancy and for adults; and (2) NAN
is more expensive than NANNY, the registered owner of the “NAN” 98. What is the doctrine of unrelated goods?
mark, Nestle should be free to use its mark on similar products, in
One who has adopted, used and registered a trademark on his
different segments of the market, and at different price levels.
goods cannot prevent the adoption, use and registration of the same
The same principle was applied in Sketchers, U.S.A., Inc. v. trademark by others on unrelated articles of a different kind.
Inter Pacific Industrial Trading Corporation.2" The use of the
stylized “S” by the manufacturer of its Strong rubber shoes infringes 99. What is the basis of the doctrine?
on the mark of Sketchers. It is no defense that the Strong rubber
shoes are cheaper and cater to different market segments. Sketchers The certificate of registration entitles the registrant to use the
should be free to expand its product offering in different segments trademark only for the goods specified in the certificate or goods
related thereto. Therefore, the registrant cannot preclude others
of the market.
from adopting and registering the trademark for totally unrelated
In a relevant case, it was held that “PAPA BOY& DEVICE” goods.
is confusingly similar with the previously registered mark “PAPA”
even though they refer to different products, PAPA BOY is for It was also held that the prohibition under Section 123 of the
lechon sauce while PAPA is for catsup. The Supreme Court stated Intellectual Property Code extends to goods that are related to the
that since petitioner’s product, catsup, is also a household product registered goods, not to goods that the registrant may produce in
found on the same grocery aisle, in similar packaging, the public the future. To allow the expansion of coverage is to prevent future
could think that petitioner had expanded its product mix to include registrants of goods from securing a trademark on the basis of
lechon sauce, and that the “PAPA BOY’ lechon sauce is now part of
mere possibilities and conjectures that may or may not occur at all.
Surely, the right to a trademark should not be made to depend on
the “PAPA” family of sauces. Thus, if allowed registration, confusion
of business may set in, and petitioner’s hard-earned goodwill may be mere possibilities and conjectures.218
associated to the newer product introduced by respondent.215
100. Cite jurisprudence where the Supreme Court applied the
In Mang Inasal Philippines v. IFP Manufacturing Corpora doctrine of unrelated goods.
tion,2'6 the Supreme Court ruled that the mark “Ok Hotdog Inasal
a. The registered owner of the trademark “Brut” for toilet
Cheese Flavor” for curl snack product is confusingly similar with the
articles cannot oppose the registration of the trademark
mark “Mang Inasal” for marinated chicken. The Supreme Court also
“Brute” for briefs, since the two products are unrelated,
conclude that average buyer who comes across the curls marketed
even if the former has a pending application for the
under the OK Hotdog Inasal mark is likely to be confused as to the
registration. A purchaser who is out in the market for
true source of such curls. To our mind, it is not unlikely that such
the purposes of buying Brute brief would definitely be not
buyer would be led into the assumption that the curls are of petitioner
mistaken or misled into buying BRUT after shave lotion
and that the latter has ventured into snack manufacturing or, if
or deodorant.219
mSupra.
2"Supra. 21,Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation, G.R. No.
2ISUFC Philippines, Inc. (Now Merged with Nutri-Asia, Inc., with Nutri-Asia, 221717, June 19, 2017.
Inc. as the Surviving Entity) v. Fiesta Barrio Manufacturing Corporation, G.R. No. 2iaKenaonic, Inc. v. Uni-Line Multi Resources, Inc., G.R. Nos. 211820-21 and
198889, January 20, 2016. 211834-35, June 6, 2018.
1,6 Supra. 219Faberge, Inc. v. Intermediate Appellate Court, 215 SCRA 316 (1992); BAR
1994.
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b. The owner of the registered trademark “Hickok” for its 272 DIVINA ON COMMERCIAL LAW:
diverse articles of men’s wear such as wallets, belts and A COMPREHENSIVE GUIDE VOLUME II
men’s briefs which are all manufactured here in the
Philippines by a licensee Quality House, Inc. but are so sought to be registered by Taiwan Kolin, on the one
labeled as to give the misimpression that the said goods hand, and those covered by the prior issued certificate of
registration in favor of Kolin Electronics, on the other, fall
are of foreign (stateside) manufacture cannot preclude under the same categories in the NCL is not the sole and
the registration of the same trademark exclusively for decisive factor in determining a possible violation of Kolin
shoes.220 Electronics’ intellectual property right should Taiwan
Koiin’s application be granted. It is hornbook doctrine
c. There is no infringement when the trademark “CANON” that emphasis should be on the similarity of the products
is used for paints, chemical products, toner and dyestuff involved and not on the arbitrary classification or general
while it is used by another for footwear (sandals).221 description of their properties or characteristics.
d. The trademark registration of LOTUS for soy sauce was Reiterating the doctrine in Mighty Corporation v. E & J Gallo
granted and upheld, although the trademark LOTUS Winery,224 the Supreme Court ruled that the goods should be tested
is already registered in favor of another for its product, against several factors before arriving at a sound conclusion on the
question of relatedness. Among these are: (a) the business (and
edible oil.222 its location) to which the goods belong; (b) the class of product to
e. The GALLO trademark registration certificates in the which the goods belong; (c) the product’s quality, quantity, or size,
including the nature of the package, wrapper or container; (d)
Philippines and in other countries expressly state that the nature and cost of the articles; (e) the descriptive properties,
they cover wines only, without any evidence or indication physical attributes or essential characteristics with reference to
that registrant Gallo Winery expanded or intended to their form, composition, texture or quality; (f) the purpose of the
expand its business to cigarettes. Thus, Gallo Winery, goods; (g) whether the article is bought for immediate consumption,
as registered owner of the trademark GALLO, cannot that is, day-to-day household items; (h) the fields of manufacture;
prevent the registration of the trademark GALLO for (i) the conditions under which the article is usually purchased; and
(j) the channels of trade through which the goods flow, how they are
tobacco products.223
distributed, marketed, displayed and sold.
f; Kolin Electronics, the registered owner of the mark “Kolin”, The Supreme Court then gave credence to the arguments of
for goods falling under Class 9 of the Nice Classification, Taiwan Kohn that —
such as amplifier, booster, converter, voltage regulator • Taiwan Koiin’s goods are classified as home appliances
and similar electronic products, can not preclude the as opposed to Kohn Electronics’ goods which are power
adoption, use and registration of the trademark “Kolin” supply and audio equipment accessories;
on a combination of goods, including colored televisions, • Taiwan Kohn’s television sets and DVD players perform
refrigerators, window-type and split-type air conditioners, a distinct function and purpose from Kolin Electronics’
electric fans and water dispensers with Taiwan Kolin power supply and audio equipment; and
even though they belong to the same Class 9, because they • Taiwan Kohn sells and distributes its various home
are unrelated products. The Supreme Court held that appliance products on wholesale and to accredited
whether or not the products covered by the trademark dealers, whereas Kohn Electronics’ goods are sold and
flow through electrical and hardware stores.226
““Hickok Manufacturing, Co., Inc. v. Court of Appeals, G.R. No. L-44707, 22<G.R. No. 154342, July 14, 2004.
August 31, 1982. 226Taiwan Kolin Corporation, LTD. v. Kolin Electronics Co., Inc., G.R. No.
“'Canon Kabushiki Kaisha Court of Appeals, G.R, No. 120900, July 20, 209843, March 15, 2015.
2004.
“Acoje Mining Co., Inc. v. Director of Patents, 38 SCRA 480; BAR 1978.
“’Mighty Corporation v. E.& J Gallo Winery, G.R. No. 154342, July 14, 2004.
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g. Television sets, stereo components, DVD and VCD players If the well-known mark is not registered in the Philippines, the
as against voltage regulators, portable generators, switch scope of protection only extends to marks used for identical goods or
breakers and fuses because the latter’s registration only services."'8
covered electronic audio-video products, not electrical
home appliances. The two classifications of goods are 102. What are the remedies of the owner of a well-known mark that
unrelated. For one, the first pertained to goods which is not registered in the Philippines?
belong to the information technology and audiovisual
equipment subclass while the latter pertained to the Without prejudice to other remedies under the law, the owner
apparatus and devices for controlling the distribution of of the well-known mark may:
electricity sub-class. Also, the goods of the first registrant a. Oppose the application for registration of a mark which
were final products but the latter’s products were spare is identical with or confusingly similar or constitutes a
parts.226 translation of such well-known mark;
Author’s note. When does one apply the doctrine of unrelated
b. Petition for cancellation of the registration, if one has
goods and doctrine of normal or potential expansion of business? For
been granted; and,
sure, jurisprudence which applied the doctrine of unrelated goods
could have been arguably ruled as falling under the opposite doctrine c. Unfair competition if the goods are being passed off by
of normal expansion of business, and vice-versa. For academic another as the goods of the owner of the well-known mark.
discussion, your answer to any such bar question will depend on the
similarity of facts to the foregoing jurisprudence. 103. Is the knowledge of the general public of the mark taken into
account in determining whether it is a well-known mark?
Well-known marks
No, in determining whether a mark is well-known, account shall
101. What is a well-known mark? be taken of the knowledge of the relevant sector of the public, rather
than of the public at large, including knowledge in the Philippines
A well-known mark is a mark which is considered by which has been obtained as a result of the promotion of the mark.
the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered The power to determine whether a trademark is well-known
here, as being already the mark of a person other than the applicant lies in the “competent authority of the country of registration or use.”
for registration. This competent authority would be either the registering authority
if it has the power to decide this, or the courts of the country in
If the well-known mark is registered in the Philippines, question if the issue comes before a court.229
any mark identical with, confusingly similar to, or constitutes a
translation of such well-known mark, cannot be used for identical 104. What is the role of the Paris Convention on the protection of
goods or services or be registered in the Philippines with respect to trademarks?
goods or services which are not similar to those with respect to which
registration is applied for: provided, that use of the mark in relation Under the IPC and the Paris Convention, any foreign national
to those goods or services would indicate a connection between those or juridical person has the legal capacity to sue for the protection of
goods or services, and the owner of the registered mark: provided its trademarks, albeit he or it is not doing business in the Philippines.
further, that the interests of the owner of the registered mark are
likely to be damaged by such use.227
^Supra.
226Kensonic, supra. 229Sehwani Incorporated v. In-N-Out Burger, Inc., G.R. No. 171053, October
“’Section 123.1(e), IPC. 15, 2007; Fredco Manufacturing Corporation v. President and Fellows of Harvard
College, G.R. No. 185917, June 1, 2011.
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Article 6 of the Paris Convention which governs the protection of 106. Cite examples of cases involving well-known marks.
well-known trademarks, is a self-executing provision and does a. The word "Barbizon” cannot be registered as a trademark
not require legislative enactment to give it effect in the member for ladies’ underwear, since it is an internationally well-
country. It may be applied directly by the tribunals and officials of known trademark for lingerie.234
each member country by the mere publication or proclamation of
the Convention, after its ratification according to the public law of b. In the case of Sehwani v. In-N-Out Burger, the Supreme
each state and the order for its execution. The essential requirement Court held that “In-N-Out Burger” is a well-known mark,
under this Article is that the trademark to be protected must be given its registration in various countries around the
“well-known” in the country where protection is sought.230 world and comprehensive advertisements. As such, the
mark is entitled to protection even though there is no
Applying this principle in one case, the Court ruled that in actual use of such mark in the Philippines.235
upholding the right of the petitioner to maintain a suit for unfair
competition or infringement of trademarks of a foreign corporation c. “Harvard” is the trade name of the world-famous Harvard
before the Philippine courts, the duties and rights of foreign states University, and it is also a trademark of Harvard
under the Paris Convention for the Protection of Industrial Property University. Under the Paris Convention, Harvard
to which the Philippines and France Eire parties are upheld.231 University is entitled to protection in the Philippines
of its trade name “Harvard” even without registration
105. Does the protection afforded by the Paris Convention extend to of such trade name in the Philippines. This means that
trade names? no educational entity in the Philippines can use the
trade name “Harvard” without the consent of Harvard
Yes. The Philippines is obligated to assure nationals of University. “Harvard” is a well-known name and mark
countries of the Paris Convention that they are afforded an effective not only in the United States but also internationally,
protection against violation of their intellectual property rights including the Philippines. It is internationally known as
in the Philippines in the same way that their own countries are one of the leading educational institutions in the world.
obligated to accord similar protection to Philippine nationals. Thus, As such, even before Harvard University applied for
under Philippine law, a trade name of a national of a State that is a registration of the mark “Harvard” in the Philippines, the
party to the Paris Convention, whether or not the trade name forms mark was already protected under the Paris Convention.“
part of a trademark, is protected “without the obligation of filing or
It should be noted though in that in the case of Fredco, the
registration.”232
“Harvard” mark was not for the use of an educational institution
This ruling is reiterated by the Court in a later case, explaining but for t-shirts, polo shirts, sandos, briefs, jackets and slacks. Fredco
that under the Paris Convention to which the Philippines is a filed a petition for cancellation of the mark “Harvard” against the
signatory, a trade name of a national of a State that is a party to President and Fellows of Harvard College alleging that the mark
the Paris Convention, whether or not the trade name forms part Harvard for said merchandise was first used in the Philippines by
of a trademark, is protected without the obligation of fifing or the New York Garments, Fredco’s predecessor-in-interest.
registration.233 The Supreme Court, as previously pointed out, ruled that it was
a mistake to register in favor of Fredco’s predecessor-in-interest the
trademark “Harvard” for slacks and similar merchandise because it
“Sehwani Incorporated v. In-N-Out Burger. Inc., 536 SCRA 227 (2007). suggested a connection with Harvard University.
2,lMelbarose R. Sasot and Allandale R. Sasot v. People of the Philippines, G.R.
No. 143193, June 29, 2005.
232Fredco Manufacturing Corporation v. President and Fellows of Harvard ^Pribhdas J. Mirpuri Court of Appeals, G.R. No. 114508, November 19,
CoDege, G.R. No. 185917, June 1, 2011. 1999.
233Ecole De Cuisine Manille (Cordon Bleu of the Philippines), Inc. v. Renaud a5Ibid.
Cointreau & Cie and Le Cordon Bleu Inti, B.V., G.R. No. 185830, June 5, 2013. ^Fredco Manufacturing Corporateion v. President and Fellows of Harvard
College, G.R. No. 185917, June 1, 2011.
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It is interesting to note that in one case, the Supreme Court did generic for the goods or services that they seek to identify. It is clear
not consider “GALLO” a “well-known” mark within the contemplation from the law itself, therefore, that what is prohibited is not having
and protection of the Paris Convention.2'” a generic mark but having such generic mark being identifiable to
the good or service. In one case, it was held that although SAKURA
107. What is the theory of dilution? refers to the Japanese flowering cherry and is, therefore, of a generic
nature, the manufacturer’s DVD or VCD players and other products
Trademark dilution is the lessening of the capacity of a famous could not be identified with cherry blossoms. Hence, the mark can
mark to identify and distinguish goods or services, regardless of the be appropriated.-’10
presence or absence of competition between the owner of the famous
mark and other parties; or likelihood of confusion, mistake or 110. What is a descriptive mark?
deception. Subject to the principles of equity, the owner of a famous
mark is entitled to injunction against another person’s commercial A term is descriptive and therefore invalid as a trademark if,
use in commerce of a mark or trade name, if such use begins after as understood in its normal and natural sense, it “forthwith conveys
the mark has become famous and causes dilution of the distinctive the characteristics, functions, qualities or ingredients of a product
quality of the mark. This is intended to protect famous marks from to one who has never seen it and does not know what it is,” or “if it
subsequent uses that blur distinctiveness of the mark or tarnish forthwith conveys an immediate idea of the ingredients, qualities or
or disparage it. Applying this theory, it was held that Dockers and characteristics of the goods,” or if it clearly denotes what goods or
Design has not acquired a strong degree of distinctiveness yet to be services are provided in such a way that the consumer does not have
able to get an injunction against the use of the trademark Paddocks to exercise powers of perception or imagination.241
and Design.238
Under the IPC, these are marks that consist exclusively of
108. What are generic marks?
signs or of indications that may serve in trade to designate the kind,
quality, quantity, intended purpose, value, geographical origin,
Generic marks are those which constitute “the common time or production of the goods or rendering of the services, or other
descriptive name of an article or substance,” or comprise the “genus characteristics of the goods or services.242
of which the particular product is a species,” or are “commonly used
as the name or description of a kind of goods,” or “imply reference Under the IPC, descriptive marks are those that consist
to every member of a genus and the exclusion of individuating exclusively of signs or of indications that may serve in trade to
characters,” or “refer to the basic nature of the wares or services designate the kind, quality, quantity, intended purpose, value,
provided rather than to the more idiosyncratic characteristics of a geographical origin, time or production of the goods or rendering of
particular product,” and are not legally protectable.239 the services, or other characteristics of the goods or services.213
109. Is generic mark prohibited? 111. Are the following terms generic or descriptive and as such,
non-registrable?
Section 123(h) of the Intellectual Property Code prohibits the
registration of a trademark that consists exclusively of signs that are a) Lyceum (for school)
The word “Lyceum” generally refers to a school or an institution
“’Mighty Corporation and La Campana Fabrica De Tabaco, Inc. v. E. & J. of learning. While the Latin word “lyceum” has been incorporated
Gallo Winery and the Andresons Group, Inc., G.R. No. 154342, July 14, 2004.
“Levi Strauss & Co v. Clinton Apparelle, G.R. No. 138900, September 20,
2005. 210Kensonic, Inc. v. Uni-Line Multi-Resources, Inc., G.R. Nos. 211820-21 and
“Societe Des Produits Nestle v. Court of Appeals, April 4, 2001 citing Federal 211834-35, June 6, 2018.
Unfair Competition: Lanham Act s 43 (a), p. 3-22.1; See De La Salle Montessori 21,Societe Des Produits Nestle, ibid.
International of Malolos v. De La Salle Brothers, el al., G.R. No. 205548, February 212Section 123.1(j), IPC, as amended.
U018. “Section 123.l(j), IPC, as amended.
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into the English language, the word is also found in Spanish (liceo) has no logical connection with catsup products, and that precisely
and in French (lycee). “Lyceum” is in fact as generic in character makes "PAPA" as an arbitrary mark capable of being registered, as
as the word “university.” Since “Lyceum” or “Liceo” denotes a it is distinctive, coming from a family name that started the brand
school or institution of learning, it is not unnatural to use this several decades ago. What was registered was not the word “Papa”
word to designate an entity which is organized and operating as an as defined in the dictionary, but the word “Papa” as the last name
educational institution.214 of the original owner of the brand. In fact, being part of several
of petitioner's marks, there is no question that the IPO has found
b) Master (for coffee)
"PAPA" to be a registrable mark.24’
The word MASTER is neither generic nor descriptive and
as such, it cannot be invalidated as a trademark. It is instead a e) La Salle (for educational institution)
suggestive term brought about by the advertising scheme of Nestle. The word salle only means “room” in French. The word la,
Suggestive terms are those which, in the phraseology of one court, on the other hand, is a definite article (“the”) used to modify salle.
require “imagination, thought and perception to reach a conclusion Thus, since salle is nothing more than a room, the use of the tennis
as to the nature of the goods.” Such terms, “which subtly connote actually suggestive.
something about the product,” are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable A suggestive mark is therefore a word, picture, or other symbol
of shedding “some light” upon certain characteristics of the goods that suggests, but does not directly describe something about the
or services in dispute, they nevertheless involve “an element of goods or services in connection with which it is used as a mark and
incongruity,” “figurativeness,” or “imaginative effort on the part of gives a hint as to the quality or nature of the product. Suggestive
the observer.” trademarks therefore can be distinctive and are registrable.
This is evident from the advertising scheme adopted by Nestle The appropriation of the term “la salle" to associate the words
in promoting its coffee products. In this case, Nestle has, over time, with the lofty ideals of education and learning is in fact suggestive
promoted its products as “coffee perfection worthy of masters.”245 because roughly translated, the words only mean “the room.” Thus,
c) Marlboro (for cigarette) the room could be anything—a room in a house, a room in a building,
or a room in an office.
The trademark “Marlboro” is not only valid for being neither
generic nor descriptive, but because it is also owned exclusively In fact, the appropriation by the De La Salle Brothers is fanciful,
by PMPI as evidenced by the certificate of registration issued by whimsical and arbitrary because there is no inherent connection
the IPO. It was held that the counterfeit cigarettes seized from between the words la salle and education, and it is through their
petitioner’s possession were intended to confuse and deceive the painstaking efforts that the term has become associated with one
public as to the origin of the cigarettes intended to be sold, as they of the top educational institutions in the country. Even assuming
not only bore PMPI’s mark, but they were also packaged almost arguendo that la salle means “classroom” in French, imagination
exactly as PMPI’s products.246 is required in order to associate the term with an educational
d) Papa (for catsup) institution and its particular brand of service. The phrase “De La
Salle” is not merely a generic term. De La Salle Brothers’ use of the
It is not a generic mark. The Merriam-Webster dictionary phrase being suggestive and may properly be regarded as fanciful,
defines “Papa” simply as “a person’s father.” True, a person’s father arbitrary and whimsical, it is entitled to legal protection.248
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219Coffee Partners, Inc. v. San Francisco Coffee and Roastery, G.R. No. 169504,
March 3,2010.
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the trade and to that branch of the purchasing public, the word or
113. What are genericidal marks?
phrase has come to mean that the article was his produce.250
These are marks that consist exclusively of signs or of
indications that have become customary or usual to designate the Thus, a generic or descriptive term which has acquired a
goods or services in everyday language or in bona fide and established secondary meaning may be appropriated and registered as a
trade practice.253 trademark. For instance, Ang Tibay is a descriptive mark. It means
durable in English. But, Ang Tibay had been used so long and the
114. What is a descriptively misleading mark? public had associated the mark with the manufacturer of combat
shoes. Thus, it was held that the descriptive mark can be registered
It is a mark that is likely to mislead the public, particularly as as trademark for shoes.
to the nature, quality, characteristics or geographical origin of the
goods or services.264 However, in another case, the Court considered “Lyceum” as a
generic name but the number alone of institutions using “Lyceum” as
115. In 1988, the FDA approved the labels submitted by Turbo part of their school name suggests strongly that the use of the word
Corporation for its new drug brand name, "Axilon." Turbo is "Lyceum” has not been attended with exclusivity for applicability of
now applying with the Bureau of Patents, Trademarks and the doctrine of secondary meaning.257
Technology Transfer for the registration of said brand name.
It was subsequently confirmed that "Accilonne" is a generic 117. What is the basis of the doctrine of secondary meaning?
term for a class of anti-fungal drugs and is used as such by Section 123.2 of the IPC. It provides that nothing shall prevent
the medical professional and the pharmaceutical industry, and the registration of a device (such as color, shape, signs, generic
that it is used as generic chemical name in various scientific marks) which has become distinctive in relation to the goods for
and professional publications. A competing drug manufacturer which registration is requested as a result of the use that have been
asks you to contest the registration of the brand name "Axilon"
made of it in commerce in the Philippines. The Office may accept as
by Turbo. What will be your advice?
prima facie evidence that the mark has become distinctive, as used
The application for registration by Turbo Corporation may be in connection with the applicant’s goods or services in commerce,
contested. The Trademark Law would not allow the registration proof of substantially exclusive and continuous use thereof by the
of a trademark which, when applied to or used in connection with applicant in commerce in the Philippines for five (5) years before the
his products, is merely descriptive or deceptively mis-descriptive of date on which the claim of distinctiveness is made.
them. Confusion can result from the use of “Axilon” as the generic
product itself.255 118. St. Francis Development Corporation (SFDC), a domestic
corporation engaged in the real estate business and the
116. What is the doctrine of secondary meaning? developer of St. Francis Square Commercial Center in Ortigas
Center, filed complaint for trademark infringement against
Under the doctrine of secondary meaning, a word or phrase
Shang Properties Realty Corporation (Shang) before the
originally incapable of exclusive appropriation with reference to
IPO - Bureau of Legal Affairs due to Shang’s use and filing of
an article in the market, because it is geographical or otherwise
applications for the registration of the marks "THE ST. FRANCIS
descriptive, might nevertheless have been used so long and so
TOWER" and "THE ST. FRANCIS SHANGRILA PLACE" for use
exclusively by one producer with reference to his article that, in
relative to Shang’s business, particularly the construction of
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permanent buildings or structures for residential and office not having the owner's consent from using in the course of trade
purposes. identical or similar signs or containers for goods or services which
SFDC alleged that (1) it used "ST. FRANCIS" to identify are identical or similar to those in respect of which the trademark is
numerous property development projects in Ortigas Center;
registered, where such use would result in a likelihood of confusion.
and (2) as a use of its continuous projects in Ortigas Center
In case of the use of an identical sign for identical goods or services,
a likelihood of confusion shall be presumed.
and real estate business, it has gained substantial goodwill
with the public that consumers and traders closely identify the There shall be no infringement of trademarks or trade names
mark with its property development projects. of imported or sold patented drugs and medicines allowed under the
IPC, as well as imported or sold off-patent drugs and medicines:
On the other hand, Shang contended that the mark with
provided, hat, said drugs and medicines bear the registered marks
its property cannot be exclusively owned by SFDC since the
that have not been tampered, unlawfully modified, or infringed
mark is geographically descriptive of the goods or services for upon.259
which it is intended to be used.
Has SFDC acquired a secondary meaning and, thereby, 120. When do these rights terminate?
an exclusive right to the ST. FRANCIS mark? The rights conferred by trademark registration end upon
While it is true that SFDC had been using the mark “ST. cancellation of the certificate of registration by the IPO in the cases
FRANCIS” since 1992, its use thereof has been merely confined to its allowed by law.
realty projects within the Ortigas Center. As its use of the mark is
clearly limited to a certain locality, it cannot be said that there was 121. When may the IPO cancel the certificate of trademark
substantial commercial use of the same recognized all throughout registration?
the country. Neither is there any showing of a mental recognition The certificate of registration may be cancelled in the following
in buyers’ and potential buyers’ minds that products connected with cases:
the mark “ST. FRANCIS” are associated with the same source —
a. Failure to file declaration of actual use within one (1) year
that is, the enterprise of SFDC. Thus, absent any showing that there
from the fifth anniversary of the trademark registration;260
exists a clear goods/service-association between the realty projects
located in the aforesaid area and SFDC as the developer thereof, the b. Failure to file declaration of actual use within three
latter cannot be said to have acquired a secondary meaning as to its (3) years from filing of the application for trademark
use of the “ST. FRANCIS” mark.258 registration;261
e. Rights conferred by registration A petition to cancel a registration of a mark may also be
filed with the Bureau of Legal Affairs of the IPO by any
119. What rights are conferred by the registration of trademark? person who believes that he is or will be damaged by the
registration of a mark under the IPC as follows:
Except in cases of importation of drugs and medicines which
has been introduced in the Philippines or anywhere else in the world i. Within five (5) years from the date of the registration
by the patent owner, or by any party authorized to use the invention of the mark;
and of off-patent drugs and medicines, the owner of a registered ii. At any time, if the registered mark becomes
mark shall have the exclusive right to prevent all third parties the generic name for the goods or services, or a
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portion thereof, for which it is registered, or has prove actual use of the trademark. In one case, the Supreme Court
been abandoned, or its registration was obtained ruled that the use of the mark on an interactive website sufficiently
fraudulently or contrary to the provisions of the IPC, showing an intent towards realizing a within-State commercial
or if the registered mark is being used by, or with the activity or interaction is considered actual use to keep the trademark
permission of, the registrant so as to misrepresent registration in force. That W Hotel was able to present proof of
the source of the goods or services on or in connection actual booking transactions made by the Philippine residents
with which the mark is used. though such website proves that the use of its “W” mark through its
interactive website is intended to produce a discernible commercial
C. At any time, if the registered owner of the mark without effect or activity within the Philippines, or at the very least, seeks
legitimate reason fails to use the mark within the to establish commercial interaction with local consumers. This is
Philippines, or to cause it to be used in the Philippines by enough to keep it trademark registration in force.264
virtue of a license during an uninterrupted period of three
(3) years or longer.262 In the WLand Holdings case, Starwood filed before the IPO an
application for registration of the trademark “W” for use in its hotel
122. In 2005, W Hotels, Inc., a multinational corporation engaged in business which was eventually granted. However, W Land applied
the hospitality business, applied for and was able to register for the registration of its own “W” mark which thereby prompted
its trademark "W" with the Intellectual Property Office of the Starwood to oppose the same. The BLA ruled that W Land’s “W"
Philippines (IPO) in connection with its hotelsfound in different mark is confusingly similar with Starwood’s mark, which had an
parts of the world. earlier filing date. Unperturbed, on May 29, 2009, W Land filed
In 2009, a Filipino corporation, RST Corp., filed before the a Petition for Cancellation of Starwood’s mark for non-use under
IPO a Petition for cancellation of W Hotels, Inc.'s "W" trademark Section 151.1 of the Intellectual Property Code of the Philippines,
on the ground of non-use, claiming that W Hotels, Inc. failed to claiming that Starwood has failed to use its mark in the Philippines
use its mark in the Philippines because it is not operating any because it has no hotel or establishment in the Philippines rendering
hotel in the country which bears the "W" trademark. the services covered by its registration.
In its defense, W Hotels, Inc. maintained that it has In ruling against the cancellation of Starwood’s “W” mark, the
used its "W" trademark in the Philippine commerce, pointing Supreme Court held:
out that while it did not have any hotel establishment in “Use” as contemplated by law is genuine use - that is, a
the Philippines, it should still be considered as conducting bona fide kind of use tending towards a commercial transaction
its business herein because its hotel reservation services, in the ordinary course of trade. Since the internet creates a
albeit for its hotels abroad, are made accessible to Philippine borderless marketplace, it must be shown that the owner has
residents through its interactive websites prominently actually transacted, or at the very least, intentionally targeted
displaying the "W" trademark. W Hotels, Inc also presented customers of a particular jurisdiction in order to be considered
proof of actual booking transactions made by the Philippine as having used the trademark in the ordinary course of his
residents through such websites. trade in that country. A showing of an actual commercial link
Is W Hotels, Inc.'s defense against the petition for to the country is therefore imperative. The use of the mark
cancellation of trademark tenable? Explain.263 on an interactive website, for instance, may be said to target
local customers when they contain specific details regarding
The defense of W Hotel is tenable. Having a hotel establishment
or pertaining to the target State, sufficiently showing an
in the Philippines with the trademark W is not the only way to
intent towards realizing a within-State commercial activity or
^Section 151.1, IPC. 26,W Land Holdings, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., G.R.
!S3BAR 2019. No. 222366, December 4, 2017.
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interaction. These details may constitute a local contact phone 2. Reproduce, counterfeit, copy or colorably imitate a
number, specific reference being available to local customers, registered mark or a dominant feature thereof and
a specific local webpage, whether domestic language and apply such reproduction, counterfeit, copy or colorable
currency is used on the website, and/or whether domestic imitation to labels, signs, prints, packages, wrappers,
payment methods are accepted. receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering
In this case, Starwood has proven that it owns Philippine for sale, distribution, or advertising of goods or services
registered domain names, provides a phone number for on or in connection with which such use is likely to cause
Philippine consumers, the prices for its hotel accommodations confusion, or to cause mistake, or to deceive, shall be
and/or services can be converted into the local currency or the
liable in a civil action for infringement by the registrant
Philippine Peso, among others. Taken together, these facts and
for the remedies hereinafter set forth: provided, that
circumstances show that Starwood’s use of its “W” mark through
the infringement takes place at the moment any of the
its interactive website is intended to produce a discernable
acts stated in Subsection 155.1 or this subsection are
commercial effect or activity within the Philippines, or at the
committed regardless of whether there is actual sale of
very least, seeks to establish commercial interaction with local
goods or services using the infringing material.268
consumers. Accordingly, Starwood’s use of the “W” mark in its
reservation services through its website constitutes use of the
mark sufficient to keep its registration in force. 124. What are the elements of trademark infringement?
Finally, it deserves pointing out that Starwood submitted There are five (5) elements, to wit:
in 2008 its DAU with evidence of use which the IPO, through a. The trademark being infringed is registered in the
its Director of Trademarks and later by the IPO DG in the Intellectual Property Office;
January 10, 2014 Decision, had accepted and recognized as
b. The trademark is reproduced, counterfeited, copied, or
valid. The Court finds no reason to disturb this recognition.265
colorably imitated by the infringer;
f. Trademark Infringement c. The infringing mark is used in connection with the sale,
offering for sale, or advertising of any goods, business or
123. What is and when is there trademark infringement?
services; or the infringing mark is applied to labels, signs,
Any person who shall, without the consent of the owner of the prints, packages, wrappers, receptacles or advertisements
registered mark:266 intended to be used upon or in connection with such goods,
business or services;
1. Use in commerce any reproduction, counterfeit, copy,
or colorable imitation of a registered mark or the same d. The use or application of the infringing mark is likely to
container or a dominant feature thereof in connection cause confusion or mistake or to deceive purchasers or
with the sale, offering for sale, distribution, advertising others as to the goods or services themselves or as to the
of any goods or services including other preparatory steps source or origin of such goods or services or the identity of
necessary to carry out the sale of any goods or services such business; and
on or in connection with which such use is likely to cause e. The use or application of the infringing mark is without
confusion, or to cause mistake, or to deceive;267 or the consent of the trademark owner or the assignee
thereof.269
2MW Land Holdings, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., G.R.
No. 222366, December 4, 2017, Second Division, Perlas-Bernabe, J. 26BSection 155.2, ibid.
“’'Section 155, IPC, as amended. 269Diaz v. People of the Philippines and Levi Strauss (Phil.), G.R. No. 180677,
“’Section 155.1, ibid. February 18, 2013.
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arguendo that “Poster Ads” could validly qualify as a trademark,
the failure of Pearl & Dean to secure a trademark registration for
specific use on the light boxes meant that there could not have been He may also recover attorney's fees and the costs of suit.
any trademark infringement since registration was an essential The civil action for trademark infringement may include an
element thereof.271 application with the court for the issuance of an order to impound
during the pendency of the action, sales invoices and other documents
g- Remedies evidencing sales274 and to grant a preliminary injunction to restrain
acts of infringement while the action is pending.276
125. What are the rights of the trademark owner?
He may also ask the court to issue an order that goods found
a. He may use the trademark in trade and commerce. to be infringing be, without compensation of any sort, disposed of
If he is the first user, he cannot be sued for trademark outside the channels of commerce in such a manner as to avoid any
infringement even though the trademark is registered by harm caused to the right holder, or destroyed; and all labels, signs,
prints, packages, wrappers, receptacles and advertisements in the
the first filer. possession of the defendant, bearing the registered mark or trade
b. He may register the trademark. name or any reproduction, counterfeit, copy or colorable imitation
thereof, all plates, molds, matrices and other means of making the
c. He may sue for infringement in case of unauthorized same, shall be delivered up and destroyed.276
use of his registered mark in connection with the sale of
He may also file a criminal action for trademark infringement.
the same goods or similar goods which is likely to cause
confusion to the public. 127. Is the issuance of an order granting provisional reliefs to the
complainant in a trademark infringement suit immediately
126. What are the remedies of the owner of the registered trademark executory?
if his rights to the trademark are infringed?
Under the 2020 Revised Rules of Procedure for Intellectual
He may file a civil action for trademark infringement to recover Property Rights Cases,277 unless restrained by the Supreme Court
damages from any person who infringes his rights, and the measure or the Court of Appeals, as the case may be, any order issued by
of the damages suffered shall be either the reasonable profit which the court under said Rules is immediately executory, except in the
the complaining party would have made, had the defendant not following:
infringed his rights, or the profit which the defendant actually made a. Order of destruction where a motion for reconsideration
out of the infringement, or in the event such measure of damages is filed; and
cannot be readily ascertained with reasonable certainty, then the b. Order of release of seized goods where a search warrant is
court may award as damages a reasonable percentage based upon quashed.
the amount of gross sales of the defendant or the value of the services
in connection with which the mark or trade name was used in the 128. What rules govern the issuance of a search and seizure order
infringement of the rights of the complaining party.272 in cases of trademark or trade name infringement?
Court Administrative Matter A.M. No. 02-1-06-SC (TheRuleon
In cases where actual intent to mislead the public or to defraud
Search and Seizure in Civil Actions for Infringement of Intellectual
the complainant is shown, in the discretion of the court, the damages
may be doubled.273
274Section 156.2, IPC, as amended.
z76Section 156.4, IPC, aa amended.
™Supra. 2,6Section 157.1., IPC, as amended.
277A.M. No. 10-3-10-SC.
^'Pearl & Dean (Phil.), Inc. Shoemart, Inc., G.R. No. 148222, August 15,
2003.
^Section 156.1, IPC, as amended.
^Section 156.3, IPC, as amended.
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Property Rights) governs the issuance of a writ of search and seizure 131. Does the application for administrative cancellation of a
in a civil action for infringement filed by an intellectual property registered trademark preclude the registrant from filing an
right owner against the supposed infringer of his trademark or action for trademark infringement?
name.
The application for administrative cancellation of a registered
The Rules on the Issuance of the Search and Seizure in Civil trademark does not preclude the first registrant from filing an action
Actions for Infringement of Intellectual Property Rights are not for trademark infringement. Such application cannot per se have
applicable in a case where the search warrants were applied in the effect of restraining or preventing the courts from the exercise
anticipation of criminal actions for violation of intellectual property of their lawfully conferred jurisdiction. A contrary rule would
rights under R.A. No. 8293. Rule 126 of the Revised Rules of Court unduly expand the doctrine of primary jurisdiction which, simply
would apply and a warrant shall be validly issued upon finding the expressed, would merely behoove regular courts, in controversies
existence of probable cause.278 involving specialized disputes, to defer to the findings of resolutions
of administrative tribunals on certain technical matters.280
129. What is the remedy of the owner of the goods in case of
wrongful and illegal seizure of goods and materials? However, if the IPO cancels the registered trademark and
such resolution has attained finality, the action for trademark
The owner may recover damages. The claim for damages infringement will have no more legal stand on. The cancellation of
should be filed with the same court that issued the writ of search registration of a trademark has the effect of depriving the registrant
and seizure. However, if the goods were seized pursuant to a search of protection from infringement from the moment the judgment or
and seizure warrant under the Rules on Criminal Procedure, in order of cancellation has become final.281
anticipation of a criminal offense, the owner has the right to seek
damages, if the circumstances warranted, by a separate civil action The first trademark registrant may however file an action
for the wrong inflicted on them by an improperly obtained or enforced for trademark infringement independently of any application for
search warrant. The proceeding under Rule 126, a limited criminal the administrative cancellation of the trademark of the second
one, does not provide for the filing of counterclaims for damages registrant.
against those who may have improperly sought the issuance of the
132. May the defendant in an action for trademark infringement file
search warrant.279
a petition for administrative cancellation of the registrant's
130. What are the other remedies available the owner of the trademark?
registered mark to protect his rights to the trademark? No, his remedy is to file an answer and invoke as a defense
He may oppose any other application for registration of the that the plaintiff is not entitled to the trademark registration. This
same trademark, or a dominant feature thereof, for the same goods is consistent with Section 151.2 of the IPC that the court or the
administrative agency vested with jurisdiction to hear and adjudicate
and services or good and services related thereto.
any action to enforce the rights to a registered mark shall likewise
In case of issuance of a certificate of trademark registration in exercise jurisdiction to determine whether the registration of said
favor of another, he may file a petition for cancellation of trademark mark may be cancelled in accordance with the Act. The filing of a
with the IPO. suit to enforce the registered mark with the proper court or agency
^Conrad and Company v. Court of Appeals, G.R. No. 115115, July 10, 1995;
2"Century Chinese Medicine Co., et al. v. People of the Philippines, G.R. No. Shangri-La International Hotel Management v. Court of Appeals, G.R. No. 111580,
188526, November 11, 2013. June 21, 2001.
2,8Del Rosario, et al. v. Doanto, Jr., et al., G.R. No. 180595, March 4, 2010. ■“'Superior Commercial Enterprises, Inc. v. Kunnan Enterprises Ltd. and
Sports Concept & Distributor, Inc., G.R. No. 169974, April 20, 2010.
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shall exclude any other court or agency from assuming jurisdiction 296 DIVINA ON COMMERCIAL LAW:
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over a subsequently filed petition to cancel the same mark. On the
other hand, the earlier filing of petition to cancel the mark with the
134. Define unfair competition.
Bureau of Legal Affairs shall not constitute a prejudicial question
that must be resolved before an action to enforce the rights to same Unfair competition has been defined as the passing off (or
registered mark may be decided. palming off) or attempting to pass off upon the public of the goods
or business of one person as the goods or business of another with
the end and probable effect of deceiving the public. Passing off (or
133. What are the limitations to an action for infringement? palming off) takes place where the defendant, by imitative devices
a. The owner shall not be entitled to recover profits or on the general appearance of the goods, misleads prospective
purchasers into buying his merchandise under the impression that
damages unless the acts were committed with knowledge they are buying that of his competitors. Thus, the defendant gives
that such imitation is likely to cause confusion. Knowledge his goods the general appearance of the goods of his competitor with
is presumed when the registrant gives notice that his the intention of deceiving the public that the goods are those of his
mark is registered by displaying with the mark the word competitor.283
“registered mark” or the letter “R” with a circle. Note that
135. When is a person liable for unfair competition?
good faith is not a defense in a criminal suit for trademark
infringement; Any person who shall employ deception or any other means
contrary to good faith by which he shall pass off the goods
b. The registered mark shall have no effect against any manufactured by him or in which he deals, or his business, or
person who, in good faith before filing or priority date, services for those of the one having established such goodwill, or
was using the mark for the purpose of his business; who shall commit any acts calculated to produce said result, shall
be guilty of unfair competition, and shall be subject to an action
c. Where the infringer who is engaged solely in the business therefor.284
of printing the mark or other infringing materials for In particular, and without in any way limiting the scope of
others is an innocent infringer, the owner of the right protection against unfair competition, the following shall be deemed
infringed shall only be entitled to injunction against guilty of unfair competition:
future printing; a. Any person, who is selling his goods and gives them the
general appearance of goods of another manufacturer
d. Where the infringement is part of a paid advertisement or dealer, either as to the goods themselves or in the
in a newspaper or magazine or similar periodical or in an wrapping of the packages in which they are contained,
electronic communication, the remedy of the owner of the or the devices or words thereon, or in any other feature
right infringed as against the publishers or distributor of their appearance, which would be likely to influence
shall be limited to injunction against the presentation of purchasers to believe that the goods offered are those
of a manufacturer or dealer, other than the actual
such advertising matter in future issues of such papers. manufacturer or dealer, or who otherwise clothes the
Such injunctive relief is not available where restraining goods with such appearance as shall deceive the public
the dissemination would delay the delivery of such issue and defraud another of his legitimate trade, or any
or transmission of such electronic communication, if subsequent vendor of such goods or any agent of any
customarily conduced in accordance with sound business vendor engaged in selling such goods with a like purpose;
practice.282
2S3Republic Gas Corporation v. Patron Corporation, G.R. No. 194062, June 17,
h. Unfair Competition 2013; BAR 2019.
'^Section 168.2, IPC, as amended.
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b. Any person who by any artifice, or device, or who employs 137. X, a dealer of low-grade oil, to save on expenses, uses the
any other means calculated to induce the false belief that containers of different companies. Before marketing to the
such person is offering the services of another who has public his low-grade oil, X totally obliterates and erases the
identified such services in the mind of the public; or brands or marks stenciled on the containers. Y brings an action
against X for unfair competition upon its discovery that its
C. Any person who shall make any false statement in the
containers have been used by X for his low-grade oil. Is there
course of trade or who shall commit any other act contrary
unfair competition? State briefly your reasons.
to good faith of a nature calculated to discredit the goods,
business or services of another.286 There is no unfair competition. Unfair competition is passing
off of one's goods as those of another and requires fraudulent intent
It was held that unfair competition is a transitory or continuing on the part of the user. These elements are not present in the
offense. Search warrant may be applied for in any court where any problem.288
element of the alleged offense was committed.286
138. Distinguish trademark infringement from unfair competition.
136. St. Francis Development Corporation (SFDC), a domestic
There are four basic distinctions, as follows:
corporation engaged in the real estate business and the
developer of St. Francis Square Commercial Center in Ortigas a. Infringement of trademark is the unauthorized use of a
Center, filed complaint for unfair competition against Shang trademark whereas unfair competition is the passing off
Properties Realty Corporation (Shang) before the IPO - Bureau one’s goods as those of another;
of Legal Affairs due to Shang's use and filing of applications b. In infringement of trademark, fraudulent intent in
for the registration of the marks "THE ST. FRANCIS TOWER" unnecessary, whereas in unfair competition fraudulent
and "THE ST. FRANCIS SHANGRILA PLACE" for use relative to intent is essential;289
Shang's business, particularly the construction of permanent
In infringement of trademark, prior registration of the
buildings or structures for residential and office purposes.
trademark is a prerequisite to the action whereas in
Is Shang Properties guilty of unfair competition? unfair competition, registration is not necessary;290
Shang Properties is not guilty of unfair competition in using d. There is no trademark infringement if the registered
the marks ‘THE ST. FRANCIS TOWERS” and THE ST. FRANCIS trademark is used for totally unrelated to the goods
SHANGRI-LA PLACE.” The “true test” of unfair competition has specified in the certificate of trademark registration but
thus been “whether the acts of the defendant have the intent of there can be unfair competition even if two products are
deceiving or are calculated to deceive the ordinary buyer making not related if there is passing off of one’s product as that
his purchases under the ordinary conditions of the particular trade of another manufacturer.
to which the controversy relates.” It is therefore essential to prove 139. Does the act of refilling empty LPG gas cylinder tank bearing
the existence of fraud, or the intent to deceive, actual or probable, a registered trademark amount to infringement or unfair
determined through a judicious scrutiny of the factual circumstances competition or BOTH?
attendant to a particular case. Here, the element of fraud is wanting;
hence, there can be no unfair competition.287 The act of refilling empty LPG gas cylinder tank bearing a
registered trademark amounts to both trademark infringement and
unfair competition.
’“Section 168.3, IPC, as amended.
’“Sony Computer Entertainment, Inc. Supergreen, Inc., 518 SCRA 750 288BAR 1988.
(2007).
“’BAR 2014.
28,Shang Properties Realty Corporation St. Francis Development
Corporation, G.R. No. 190706, July 21, 2014. “°Del Monte Corporation Court of Appeals, 181 SCRA 410 (1990); BAR
1996; BAR 2015.
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The mere unauthorized use of a container bearing a registered 300 DIVINA ON COMMERCIAL LAW:
trademark in connection with the sale, distribution or advertising A COMPREHENSIVE GUIDE VOLUME II
to the public, which were even packaged in bottles identical to zs’Caterpillar, Inc. v. Manolo P. Samson, G.R. No. 205972 and G.R. No. 164352,
November 9, 2016.
’’’Republic Gas Corporation v. Petron Corporation, G.R. No. 194062, June 17,
2013.
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stop solution for registering and managing marks worldwide, allows The President's ratification was valid and constitutional
the trademark owner to file one application in one language, and because the Madrid Protocol, being an executive agreement as
to pay one set of fees to protect his mark in the territories of up to determined by the Department of Foreign Affairs, does not require
97 member-states. The Madrid System is governed by the Madrid the concurrence of the Senate.-’91'
Agreement, concluded in 1891, and the Madrid Protocol, concluded
in 1989. 143. Is the Madrid Protocol in conflict with the IPC?
The Madrid Protocol, which was adopted in order to remove There is no conflict between the Madrid Protocol and the IP
the challenges deterring some countries from acceding to the Code.
Madrid. Agreement, has two objectives, namely: (1) to facilitate The IPAP also rests its challenge on the supposed conflict
securing protection for marks; and (2) to make the management of between the Madrid Protocol and the IP Code, contending that the
the registered marks easier in different countries.295 Madrid Protocol does away with the requirement of a resident agent
under Section 125 of the IP Code; and that the Madrid Protocol is
142. The Intellectual Property Office of the Philippines (IPOPHL) unconstitutional for being in conflict with the local law, which it
recommended to the Department of Foreign Affairs (DFA) that
cannot modify.
the Philippines should accede to the Madrid Protocol. After its
own review, the DFA endorsed to the President the country's The IPAP’s contentions stand on a faulty premise. The method
accession to the Madrid Protocol. Conformably with its of registration through the IPOPHL, as laid down by the IP Code,
express authority under Section 9 of Executive Order No. 459 is distinct and separate from the method of registration through the
(Providing for the Guidelines in the Negotiation of International WIPO, as set in the Madrid Protocol. Comparing the two methods of
Agreements and its Ratification) dated November 25,1997, the registration despite their being governed by two separate systems of
DFA determined that the Madrid Protocol was an executive registration is thus misplaced
agreement. President Benigno C. Aquino III ratified the Madrid In arguing that the Madrid Protocol conflicts with Section 125 of
Protocol through an instrument of accession. The Madrid the IP Code, the IPAP highlights the importance of the requirement
Protocol entered into force in the Philippines on July 25,2012. for the designation of a resident agent. It underscores that the
The Intellectual Property Association of the Philippines requirement is intended to ensure that non-resident entities seeking
(IPAP) filed a special civil action for certiorari and prohibition protection or privileges under Philippine Intellectual Property
to challenge the validity of the President's accession to the Laws will be subjected to the country’s jurisdiction. It submits that
Madrid Protocol without the concurrence of the Senate. without such resident agent, there will be a need to resort to costly,
Furthermore, the IPAP argued that the implementation of time consuming and cumbersome extraterritorial service of writs
the Madrid Protocol, specifically the processing of foreign and processes.
trademark applications, conflicts with the IP Code considering The IPAP misapprehends the procedure for examination under
that Article 2 of the Madrid Protocol means that foreign the Madrid Protocol. The difficulty, which the IPAP illustrates,
trademark applicants may file their applications through the is minimal, if not altogether inexistent. The IPOPHL actually
International Bureau or the WIPO, and their applications will requires the designation of the resident agent when it refuses the
be automatically granted trademark protection without the registration of a mark. Local representation is further required in
need for designating their resident agents in the country. the submission of the Declaration of Actual Use, as well as in the
Was the President's ratification of the Madrid Protocol submission of the license contract. The Madrid Protocol accords
valid and constitutional?
with the intent and spirit of the IP Code, particularly on the subject
of the registration of trademarks. The Madrid Protocol does not
I
“Intellectual Property Association of the Philippines v. Hon. Paquito Ochoa,
In His capacity as Executive Secretary, et al., G.R. No. 204605, July 19,2016.
2XSupra.
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amend or modify the IP Code on the acquisition of trademark rights 304 DIVINA ON COMMERCIAL LAW:
considering that the applications under the Madrid Protocol are still A COMPREHENSIVE GUIDE VOLUME II
examined according to the relevant national law. In that regard, the
IPOPHL will only grant protection to a mark that meets the local An international registration is therefore equivalent to a
registration requirements.297 bundle of national registrations. Although it is a single registration,
protection may be refused by some of the designated Contracting
1. Coverage Parties, or the protection may be limited or renounced with respect
to only some of the designated Contracting Parties. Likewise an
144. Who may use the Madrid System for the international international registration may be transferred to a new owner with
registration of trademarks? respect to only some of the designated Contracting Parties. An
international registration may also be invalidated (for example, for
An application for international registration (international non-use) with respect to one or more of the designated Contracting
application) may be filed only by a natural person or legal entity Parties. Moreover, any action for infringement of an international
having a connection through establishment, domicile or nationality registration must be brought separately in each of the Contracting
Parties concerned.
with a Contracting Party to the Madrid Agreement or the Protocol.
A mark may be the subject of an international application 146. What are the requirements for registration under the Madrid
only if it has already been registered with the trademark office of Protocol?
the Contracting Party with which the applicant has the necessary An application for international registration must designate
connections (referred to as the office of origin). However, where all one or more Contracting Parties in which protection is sought.
the designations are effected under the Protocol (see below), the Further designations can be effected subsequently. A Contracting
international application may be based simply on an application Party may be designated only if it is party to the same treaty as
the Contracting Party whose office is the office of origin. The latter
for registration filed with the office of origin. An international cannot itself be designated in the international application.
application must be presented to the International Bureau of WIPO
through the intermediary of the office of origin.298 The designation of a given Contracting Party is made either
under the Agreement or the Protocol, depending on which treaty is
2. Rights conferred common to the Contracting Parties concerned. If both Contracting
Parties are party to the Agreement and the Protocol, the designation
145. What are the rights conferred upon international registration will be governed by the Protocol.
of trademark under the Madrid Protocol? International applications can be filed in English, French
or Spanish, irrespective of which treaty or treaties govern the
From the date of the international registration (or, in the application, unless the office of origin restricts that choice to one or
case of a Contracting Party designated subsequently, from the two of these languages.
date of that designation), the protection of the mark in each of the
Once the International Bureau receives an international
designated Contracting Parties is the same as if the mark had been application, it carries out an examination for compliance with the
the subject of an application for registration filed directly with the requirements of the Protocol and its Regulations. This examination
Office of that Contracting Party. If no provisional refusal is notified is restricted to formalities, including the classification and
to the International Bureau within the relevant time limit, or if any comprehensibility of the list of goods and/or services. If there are no
such refusal is subsequently withdrawn, the protection of the mark irregularities in the application, the International Bureau records
in each designated Contracting Party is the same as if it had been the mark in the International Register, publishes the international
registered by the Office of that Contracting Party. registration in the WIPO Gazette of International Marks and
notifies it to each designated Contracting Party. Any matter of
substance, such as whether the mark qualifies for protection or
whether it is in conflict with a mark registered previously in a
2'J1Ibid.
“•Summary of the Madrid Agreement Concerning the International
Registration of Marks (1891) and the Protocol Relating to that Agreement (1989) as
prepared by the WIPO.
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z\ COMPREHENSIVE GUIDE VOLUME II
particular Contracting Party, is determined by that Contracting The rights granted by copyright are, however, not limited to
Partyts trademark office under the applicable domestic legislation. multiplying copies of the literary or artistic work, publishing and
The office of each designated Contracting Party shall issue a selling but also include any form of communication to the public,
statement of grant of protection under the pertinent Regulations. as well as right of attribution, right to carry out derivative work
and other moral rights. Copyright is likewise not confined to literary
However, when designated Contracting Parties examine and artistic work but also extend to scientific and scholarly works
the international registration for compliance with their domestic similar to those works enumerated in Section 172.1 of the IPC.
legislation, and if some substantive provisions are not complied
with, they have the right to refuse protection in their territory. As previously mentioned, copyright should be defined then
Any such refusal, including an indication of the grounds on which as an incorporeal and intangible property granted by law to the
it is based, must be communicated to the International Bureau, originator or creator of certain literary, artistic, scientific and
normally within 12 months from the date of notification. However, scholarly works whereby he or she is invested for a specific period of
a Contracting Party to the Protocol may declare that, when it is time a collection of economic and moral rights on the terms specified
designated under the Protocol, this time Emit is extended to 18 by statute.
months. That Contracting Party may also declare that a refusal
based on an opposition may be communicated to the International 149. What are the characteristics of a copyright?
Bureau even after the 18-month time Emit.299 a. It is granted to the creator or originator of the copyrightable
3. Term of protection work. But being a right, copyright can be assigned;
b. The object is original intellectual creation in the literary,
147. What is the term of protection of international registration
artistic and scientific domains;
under the Madrid Protocol?
c. It is not indefinite. The economic and moral rights are
An international registration is effective for 10 years. It may be exclusive to the creator or originator of the work during
renewed for further periods of 10 years on payment of the prescribed the term specified by law, except for the moral right of
fees.300
attribution which is in perpetuity.
D. Copyright d. Being a statutory grant, the rights derived from such
grant may only be obtained and enjoyed with respect to
1. Basic Principles the works and on the terms and conditions, specified in
the statute. The “works” must fall within the statutory
148. What is a copyright? enumeration or description.
It is an intangible, incorporeal right granted by statute to For example, eye bushing is a useful article but it has no artistic
the author or originator of certain literary or artistic productions, value. Even though it was covered by a certificate of registration and
whereby he or she is invested, for a specific period, with the sole and there was notice of deposit with the National Library, no copyright is
exclusive privilege of multiplying copies of the same and pubhshing obtained. There can be no infringement of copyright likewise despite
and selling them.301 sale by others of such article.302 Other examples of items were there
is no copyright:
a. Light boxes. They are not in the nature of pictorials or
mSupra. drawings. Light boxes—units which utilize specially
mIbid.
“‘Kensonic v. Uni-Line Multi Resources, Inc., supra and Fernando Juan v.
Roberto Juan, G.R. No. 221372, August 23, 2017 both citing Black’s Law Dictionary, “Jessie G. Ching v. William M. Salinas, Sr., et al., G.R. No. 161295, June 29,
Centennial Edition. 6th ed. West Group, St. Paul Minnesota, USA, 1990, p. 336. 2005.
-
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printed posters sandwiched between plastic sheets and 308 DIVINA ON COMMERCIAL LAW:
illuminated with backlights—are not literary or artistic A COMPREHENSIVE GUIDE VOLUME II
pieces which could be copyrighted under the copyright
law;303 d. Letters:
b. Medical creams and the name and container of a beauty e. Dramatic or dramatico-musical compositions; choreo
graphic works or entertainment in dumb shows;
cream product;30*
f. Musical compositions, with or without words;
c. There is no copyright on goods because they are not Works of drawing, painting, architecture, sculpture,
g-
intellectual creations. They should be covered by engraving, lithography or other works of art; models or
trademark instead.305 designs for works of art;
h. Original ornamental designs or models for articles of
2. Copyrightable Works manufacture, whether or not registrable as an industrial
design, and other works of applied art;
150. When is the starting point of protection of a Copyright? i. Illustrations, maps, plans, sketches, charts and three-
Works are protected by the sole fact of their creation, dimensional works relative to geography, topography,
irrespective of their mode or form of expression, as well as of their architecture or science;
content, quality and purpose.306 j. Drawings or plastic works of a scientific or technical
character;
151. What are the classifications of protected works? k. Photographic works including works produced by a
process analogous to photography; lantern slides;
There are two:
1. Audiovisual works and cinematographic works and works
a. Original and literary works; and produced by a process analogous to cinematography or
b. Derivative works. any process for making audio-visual recordings;
m. Pictorial illustrations and advertisements;
152. What are considered original literary and artistic works? n. Computer programs; and
Literary and artistic works are original intellectual creations o. Other literary, scholarly, scientific, and artistic works.308
in the literary and artistic domain protected from the moment of 153. Diana and Piolo are famous personalities in show business
their creation and shall include in particular: who kept their love affair secret. They use a special instant
a. Books, pamphlets, articles and other writings; messaging service which allows them to see one another's
typing on their own screen as each letter key is pressed.
b. Periodicals and newspapers; When Greg, the controller of the service facility, found out
c. Lectures, sermons, addresses, dissertations prepared for their identities, he kept a copy of all the messages Diana and
Piolo sent each other and published them. Is Greg liable for
oral delivery, whether or not reduced in writing or other
copyright infringement? Reason briefly.
material form;307
Yes, Greg is liable for copyright infringement. Under the
law, text messages are not expressly enumerated as among the
“Pearl & Dean Phil. v. Shoemart, 409 SCRA 231 (2003). copyrightable works. In the context of the problem, however, these
“Elidad C. Kho, doing business under the name and style of KEC Cosmetics messages are akin to letters or may at least fall under “other literary,
Laboratory v. Court of Appeals, Summerville General Merchandising and Company,
andAngTiam Chay, G.R. No. 115758, March 19, 2002.
“Manly Sportwear Manufacturing, Inc. v. Dadodette Enterprises and/or “’Section 172.1, IPC, as amended.
Hermes Sports Center, G.R. No. 165306, September 20, 2005.
“Section 172.2, IPC, as amended.
“BAR 2011.
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artistic, scientific and scholarly works.” They are therefore protected of the article or to convey information” is excluded from copyright
from the moment of creation. ™ The publication of the messages eligibility.
without the consent of their writers constitutes infringement of The only instance when a useful article may be the subject of
copyright.310 copyright protection is when it incorporates a design element that
is physically or conceptually separable from the underlying product.
154. Is the name "Charlie Brown" and its pictorial representation This means that the utilitarian article can function without the
copyrightable? design element. In such an instance, the design element is eligible
Yes, as provided for under Section 172.1 of the IPC. Since for copyright protection.
copyright was obtained thereon, the owner can prevent its use as The design of a useful article shall be considered a pictorial,
trademark by somebody else.3” graphic, or sculptural work only if, and only to the extent that,
such design incorporates pictorial, graphic, or sculptural features
155. Is a hatch door, which is defined as a small door, small gate or
that can be identified separately from, and are capable of existing
an opening that resembles a window equipped with an escape
independently of, the utilitarian aspects of the article.
for use in case of fire or emergency, copyrightable?
A belt, being an object utility with the function of preventing
Hatch door is not copyrightable. It is by nature, functional one’s pants from falling down, is in itself not copyrightable. However,
and utilitarian serving as egress access during emergency. It is not an ornately designed belt buckle which is irrelevant to or did not
primarily an artistic creation but rather an object of utility designed enhance the belt’s function hence, conceptually separable from the
to have aesthetic appeal. It is intrinsically a useful article, which, as belt, is eligible for copyright. It is copyrightable as a sculptural work
a whole, is not eligible for copyright. with independent aesthetic value, and not as an integral element of
Thus, the first fabricator of the hatch door cannot sue for the belt’s functionality.
copyright infringement all other fabricators of the same article. A table lamp is not copyrightable because it is a functional
What is copyrightable is the drawing or the sketch of the hatch door object intended for the purpose of providing illumination in a room.
itself. Reproduction of the drawing or sketch without the consent of The general shape of a table lamp is likewise not copyrightable
the creator constitutes copyright infringement.312 because it contributes to the lamp’s ability to illuminate the reaches
of a room. But, a lamp base in the form of a statue of male and
There is also no copyright infringement even if the hatch door
female dancing figures made of semi vitreous china is copyrightable
is fabricated based on the copyrighted drawing or- sketch. Unlike
as a work of art because it is unrelated to the lamp’s utilitarian
a patent, a copyright gives no exclusive right to the art disclosed;
function as a device used to combat darkness.314
protection is given only to the expression of the idea not the idea
itself.”3 Based on this test, hatch doors may become copyrightable if
they bear design elements that are physically and conceptually
156. Isa useful article copyrightable? separable, independent and distinguishable from the hatch door
itself.
A “useful article” defined as an article “having an intrinsic
utilitarian function that is not merely to portray the appearance 157. TRUE or FALSE. The Denicola Test in intellectual property law
states that if design elements of an article reflect a merger of
’“’Section 172.1, IPC, as amended; Columbia Pictures, Inc. v. Court of Appeals, aesthetic and functional considerations, the artistic aspects of
261 SCRA 144 (1996). the work cannot be conceptually separable from the utilitarian
’’“BAR 2007. aspects; thus, the article cannot be copyrighted.
’’’United Features v. Munsingwear Creation, 179 SCRA 260 (1989).
”2Sison Olano, et al. v. Lim Eng Co., G.R. No. 195835, March 14, 2016.
™Ibid. 3uIbid.
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True. Applying the Denicola Test in Brandir International, Inc. Typographical arrangement covers the layout, composition,
v. Cascade Pacific Lumber Co.,™ the United State Court of Appeals style and general appearance of a page of a published work.321 In other
for the Second Circuit held that if there is any aesthetic element words, the visual appearance of the printed page is independently
which can be separated from the utilitarian elements, then the copyrightable from the contents of the published work.
aesthetic element may be copyrighted.316
161. What are considered as unprotected subject matter or non-
158. What are derivative works? copyrightable work?
The following are considered derivative works and shall also be a. Idea, procedure, system, method or operation, concept,
protected by copyright: principle, discovery or mere data as such, even if they are
a. Dramatizations, translations, adaptations, abridgments, expressed, explained, illustrated or embodied in a work;
arrangements, and other alterations of literary or artistic b. News of the day and other miscellaneous facts having the
works; and character of mere items of press information;
b. Collections of literary, scholarly or artistic works, and c. Any official text of a legislative, administrative or legal
compilations of data and other materials which are
nature, as well as any official translation thereof;322
original by reason of the selection or coordination or
arrangement of their contents.317 d. Any work of the Government of the Philippines. However,
prior approval of the government agency or office wherein
159. What is the treatment over derivative works? the work is created shall be necessary for exploitation of
They shall be protected as new works: provided however, that such work for profit. Such agency or office may, among
such new work shall not affect the force of any subsisting copyright other things, impose as a condition the payment of
upon the original works employed or any part thereof, or be construed royalties;
to imply any right to such use of the original works, or to secure or
e. Statutes, rules and regulations, and speeches, lectures,
extend copyright in such original works.318
sermons, addresses, and dissertations, pronounced, read
One of the economic rights of the author is to carry out, or rendered in courts of justice, before administrative
prevent or authorize derivative work.319 Thus, no one carry out a agencies, in deliberative assemblies and in meetings of
work derived from the original work except the author or without public character.323
his authorization.
However, the author of speeches, lectures, sermons, addresses,
160. Does a publisher have a right over the published edition of the and dissertations of these works shall have the exclusive right of
copyrighted work? making a collection of his works.324
Yes. In addition to the right to publish granted by the author, a. Idea, procedure, system, method or operation, concept,
his heirs, or assigns, the publisher shall have a copyright consisting principle, discovery or mere data as such, even if they
merely of the right of reproduction of the typographical arrangement are expressed, explained, illustrated or embodied in such
of the published edition of the work.320 work.
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The format or mechanics of a television show is not included 314 DIVINA ON COMMERCIAL LAW:
in the list of protected works in Section 2 of P.D. No. 49, which is A COMPREHENSIVE GUIDE VOLUME II
substantially the same as Section 172 of the Intellectual Property
Code (R.A. No. 8293). The subject of copyright refers to finished b. Yes. because it is an original creation;
works and not to concepts. For this reason, the protection afforded C. Yes, because it entailed the application of X’s intellect;
by the law cannot be extended to cover format or mechanics of a d. No. because it did not entail any application of X’s
television show. The audio-visual recording of the show, however, is intellect.
copyrightable.325 b. News of the day
While an idea is not copyrightable, the expression of an idea
164. Overseas Filipino worker Angelo dela Cruz was kidnapped by
is protected by copyright. Thus, there can be a copyright of a book Iraqi militants and as a condition for his release, a demand
which expounded on a new accounting system the author had was made for the withdrawal of Filipino troops in Iraq. After
developed but the system itself is not copyrightable. negotiations, he was released by his captors and was scheduled
to return to the country. Occasioned by said homecoming and
162. An amateur astronomer, stumbled upon what appeared to be the public interest it generated, both GM A Network, Inc. and
massive volcanic eruption in Jupiter while peering at the planet ABS-CBN made their respective broadcasts and coverage of
through his telescope. The following week, X, without notes, the live event.
presented a lecture on his findings before the Association of ABS-CBN conducted live audio-video coverage of and
Astronomers of the Philippines. To his dismay, he later read broadcasted the event. ABS-CBN allowed Reuters Television
an article in a science journal written by Y, a professional Service (Reuters) to air the footages it had taken earlier under
astronomer, repeating exactly what X discovered without any a special embargo agreement.
attribution to him. Has Y infringed on X's copyright, if any?326 ABS-CBN alleged that under the special embargo
agreement, no other Philippine subscriber of Reuters would be
a. No, since X did not reduce his lecture in writing or other
allowed to use ABS-CBN footage without the latter's consent.
material form;
GMA-7 subscribes to Reuters. It received a live video feed
b. Yes, since the lecture is considered X’s original work; of the coverage of Angelo dela Cruz's arrival from Reuters.
c. No, since no protection extends to any discovery, GMA-7 immediately carried the live newsfeed in its
even if expressed, explained, illustrated, or embo program "Flash Report," together with its live broadcast.
died in a work; Allegedly, GMA-7 did not receive any notice or was not aware
that Reuters was airing footages of ABS-CBN.
d. Yes, since Y7s article failed to make any attribution to X.
ABS-CBN filed the Complaint for copyright infringement
under Sections 177and 211 of the Intellectual Property Code
163. X came up with a new way of presenting a telephone directory
against Felipe Gozon and other officers of GMA 7.
in a mobile phone, which he dubbed as the "iTel" and which
uses lesser time for locating names and telephone numbers. Is the news footage of ABS CBN copyrightable?
May X have his "iTel" copyrighted in his name?327 The event itself is not copyrightable because that is the
newsworthy event. However, any footage created from the event
a. No. because it is a mere system or method; itself is an intellectual creation which is copyrightable. While news
of the day and other miscellaneous facts having the character
of “mere items of press information” are considered unprotected
subject matter, the Code does not state that expression of the news
’“Francisco Joaquin, Jr. v. Franklin Drilon, et al., G.R. No. 108946, January
28,1999.
“BAR 2011.
“BAR 2011.
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VII. INTELLECTUAL PROPERTY CODE 315
of the day, particularly when it underwent a creative process, is not 316 DIVINA ON COMMERCIAL LAW:
entitled to protection.328 A COMPREHENSIVE GUIDE VOLUME II
Stated otherwise, copyright protection does not extend to news It was held that the Intellectual Property Code does not require
“events” or the facts or ideas which are the subject of news reports. registration of the work to fully recover in an infringement suit.333
But it is equally well-settled that copyright protection does extend to A copyright certificate nevertheless creates a presumption of
the reports themselves, as distinguished from the substance of the the validity and ownership of the copyright and as such, is useful in
information contained in the reports. Copyright protects the manner support of the claim of infringement. This presumption, however, is
of expression of news reports, “the particular form or collocation of rebuttable and it cannot be sustained where other evidence in the
words in which the writer has communicated it.”329 record casts doubt on the question of ownership.331
Moreover, the presumption of validity to a certificate of
3. Rights of the copyright owner copyright registration merely orders the burden of proof. The
applicant should not ordinarily be forced, in the first instance,
165. What is the scope of protection of a copyright? to prove all the multiple facts that underline the validity of the
copyright unless the respondent, effectively challenging them, shifts
It is immediate. The aforementioned literary and artistic works the burden of doing so to the applicant.335
are protected from the moment of their creation. Works are protected
by the sole fact of their creation, irrespective of their mode or form of 167. Rudy is a fine arts student in a university. He stays in a boarding
expression, as well as of their content, quality and purpose.330 house with Bernie as his roommate. During his free time,
Rudy would paint and leave his finished works lying around
Ownership of copyrighted material is shown by proof of the boarding house. One day, Rudy saw one of his works, an
originality and copyrightability.331 abstract painting entitled Manila Traffic Jamon display at the
university cafeteria. The cafeteria operator said he purchased
166. What then is the effect of registration and deposit with the the painting from Bernie who represented himself as its painter
and owner. Rudy and the cafeteria operator immediately
National Library?
confronted Bernie. While admitting that he did not do the
The certificates of registration and deposit issued by the painting, Bernie claimed ownership of its copyright since he
had already registered it in his name with the National Library
National Library serve merely as a notice of recording and
as provided in the Intellectual Property Code. Who owns the
registration of the work but do not confer any right or title upon the copyright to the painting? Explain.
registered copyright owner or automatically put his work under the
Rudy owns the copyright to the painting because he was the
protective mantle of the copyright law; it is not a conclusive proof of
one who actually created it. His rights existed from the moment
copyright ownership. Hence, it was held that when there is sufficient of its creation. The registration of the painting by Bernie with the
proof that the copyrighted products are not original creations but National Library did not confer copyright upon him. The registration
are readily available in the market under various brands, as in one is merely for the purpose of completing the records of the National
case, validity and originality will not be presumed.332 Library and creating a presumption of ownership and validity of the
copyright.336
’“ABS-CBN Corporation v. Felipe Gozon, el al., G.R. No. 195956, March 11, 333ABS-CBN v. Gozon, March 11, 2015.
2015. 331Sison Olano, ibid.
’“Ibid. ^Supra.
336BAR 2013.
““Section 172.1, IPC, as amended.
“'Sison Olano, ibid.
““Manly Sportwear Manufacturing, Inc. v. Dadodette Enterprises and/or
Hermes Sports Center, G.R. No. 165306, September 20, 2005.
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169. What rights are derived from a Copyright? 172. What are the instances when reproduction of the work is
legally permissible?
There are two classifications of rights derived from a copyright:
a. Quotations from a published work if they are compatible
a. Economic rights; and with fair use and only to the extent justified for the
b. Moral rights. purpose, including quotations from newspaper articles
and periodicals in the form of press summaries: provided,
170. What are economic rights? that the source and the name of the author, if appearing
on the work, are mentioned;340
Copyright or economic rights shall consist of the exclusive right
to carry out, authorize or prevent the following acts:338 b. The reproduction or communication to the public by mass
media of (i) articles on current political, social, economic,
a. Reproduction of the work or substantial portion of the
scientific or religious topics; (ii) lectures, addresses and
work;
other works of the same nature, which are delivered in
b. Dramatization, translation, adaptation, abridgment, public if such use is for information purposes and has
arrangement or other transformation of the work; not been expressly reserved: provided, that the source is
c. The first public distribution of the original and each copy clearly indicated;341
of the work by sale or other forms of transfer of ownership; c. The reproduction and communication to the public of
d. Rental of the original or a copy of an (i) audiovisual, or (ii) literary, scientific or artistic works as part of reports of
cinematographic work, (iii) a work embodied in a sound current events by means of photography, cinematography
recording, (iv) a computer program, (v) a compilation of or broadcasting to the extent necessary for the purpose;311
data and other materials, or (vi) a musical work in graphic d. The private reproduction of a published work in a single
form, irrespective of the ownership of the original or the copy, where the reproduction is made by a natural
copy which is the subject of the rental; person exclusively for research and private study, shall
e. Public display of the original or a copy of the work; be permitted, without the authorization of the owner of
f. Public performance of the work; and
& Other communication to the public of the work. ’’’Pacita, et al. ■ Felicidad Robles and Goodwill Trading Co., Inc., G.R. No.
131522, July 19, 1999.
^“Section 184.1(b), IPC, as amended.
337BAR 1998. ’"Section 184.1(C), as amended.
““Section 177, IPC, as amended. ’"Section 184.1(D), as amended. I
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copyright in the work. The permission granted under this g- The reproduction in one (1) back-up copy or adaptation
section shall not extend to the reproduction of:"’ of a computer program shall be permitted, without the
authorization of the author of, or other owner of copyright
i. A work of architecture in the form of building or in. a computer program, by the lawful owner of that
other construction; computer program: provided, that the copy or adaptation
ii. An entire book, or a substantial part thereof, or of is necessary for:340
a musical work in graphic form by reprographic i. The use of the computer program in conjunction
means; with a computer for the purpose, and to the extent,
iii. A compilation of data and other materials; for which the computer program has been obtained;
iv. A computer program. and
ii. Archival purposes, and, for the replacement of the
e. Any library or archive whose activities are not for profit
lawfully owned copy of the computer program in the
may, without the authorization of the author of copyright
event that the lawfully obtained copy of the computer
owner, make a single copy of the work by reprographic program is lost, destroyed or rendered unusable.
reproduction:344
i. Where the work by reason of its fragile character or Derivative right
rarity cannot be lent to users in its original form;
ii. Where the works are isolated articles contained in 173. How many works are protected if the author, or another person
composite works or brief portions of other published with the consent of the author, makes a transformation of the
works and the reproduction is necessary to supply original work?
them, when this is considered expedient, to persons There are two works protected and covered by copyright, the
requesting their loan for purposes of research or original and the derivative work. However, if the transformation of
study instead of lending the volumes or booklets the original work was done after the term of the copyright, then,
which contain them; and only one copyright subsists—that of the derivative work.
iii. Where the making of such a copy is in order to
preserve and, if necessary in the event that it is lost, 174. Who can carry out derivative work on the original work of the
destroyed or rendered unusable, replace a copy, or author?
to replace, in the permanent collection of another The author has the exclusive privilege to carry out derivative
similar library or archive, a copy which has been work of his original work. During the term of the copyright, the
lost, destroyed or rendered unusable and copies are author may authorize person to carry out the derivative work.
not available with the publisher.
f. First public distribution
Every library which, by law, is entitled to receive copies of
a printed work, shall be entitled, when special reasons so
175. What is the first sale doctrine?
require, to reproduce a copy of a published work which is
considered necessary for the collection of the library but The first sale doctrine provides that an individual who
which is out of stock.346 knowingly purchases a copy of a copyrighted work from the copyright
holder receives the right to sell, display or otherwise dispose of that
particular copy, notwithstanding the interests of the copyright
“Section 187, IPC, as amended.
owner.
’"Section 188, IPC, as amended.
“Section 13, P.D. No. 49a. 31cSection 189, IPC, as amended.
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The copyright holder’s right to control the distribution of his work out of it. The rights of reproduction and transformation are
work goes away after the “first sale” of the work. The “First Sale distinct from the right of first public distribution.
Doctrine” is codified in U.S. copyright law at 17 U.S.C. Section 109.
The doctrine is mirrored in our own copyright laws. Renta! right
This principle is also called the “exhaustion” principle. It also 179. May the buyerorassigneeofan audiovisual or cinematographic
applies to patent. work, work embodied in a sound recording, a computer
program, or musical work lease or rent such work without the
176. KK is from Bangkok, Thailand. She studies medicine in the consent of its creator following the first sale doctrine?
Pontifical University of Santo Tomas (UST). She learned
that the same foreign books prescribed in UST are 40-50% No, the above-enumerated works cannot be rented out to others
cheaper in Bangkok. So she ordered 50 copies of each book without the consent of the copyright holder. The right of rental is a
for herself and her classmates and sold the books at 20% less distinct economic right which is not covered by the first sale doctrine.
than the price in the Philippines. XX, the exclusive licensed However, works not covered by the foregoing enumeration, like
publisher of the books in the Philippines, sued KK for copyright books, may be leased out for profit by the buyer, without the consent
infringement. Decide. of the copyright owner.
KK did not commit copyright infringement. Under the “first
sale” doctrine, the economic rights of the author relevant to the Right of public display
question extend only to the first public distribution of each original
copy. After the first sale of the original copies, the owner may use 180. Raphael is an internationally well-known and award-winning
and re-sell the same. Hence, there is no infringement by KK since painter. Alvaro is the President of world-wide organization
the said doctrine permitted resale without the publisher’s further devoted to works of charity and the spread of the norms of
permission.347 hope, fortitude, and serenity in the face of a global pandemic
that has brought desolation to humanity. Alvaro's mother
177. What is the right of Droite de Suite? Maricor is the Chairperson. Alvaro commissioned Raphael to
do a painting with a theme of inspiring mankind to be filled
Droite de Suite means right to follow. This means that in every with faith and hope amid difficulties. After eight (8) months,
sale or lease of an original work of painting or sculpture or of the he finished the work of art. Despite the painstaking effort that
original manuscript of a writer or composer, subsequent to the first went with it, he is not proud of his opus. He showed it to his
disposition thereof by the author, the author or his heirs shall have friends, Javier, Gabriel and Michael who were all in tremendous
an inalienable right to participate in the gross proceeds of the sale or awe and considered it a magnum opus-comparable to, if not
lease to the extent of five percent (5%). This right shall exist during better than, the works of the Masters.
the lifetime of the author and for 50 years after his death.
May Alvaro organize an open for all exhibit to display the
178. May the purchaser of a copyrighted book reproduce it or create great work of Raphael?
a derivative work out of it?
Under Section 178.4 of the IPC, as amended, the person who
No, the purchaser may only distribute the work, without commissioned the work shall have ownership of the work but the
incurring liability, but cannot reproduce or carry out derivative copyright thereto pertains to the creator unless there is stipulation
to the contrary. Therefore, while Alvaro owns the painting, the
copyright belongs to Raphael. The right to display is one of the
"’BAR 2014; Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S 319, 213 WL economic rights of the creator. Thus, unless Raphael allows it,
1104736 (U.S Mar. 19, 2013), cited in Gepty, ibid., p. 179. Alvaro cannot publicly display the painting of Raphael.
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If Raphael did not transfer the copyright to Alvaro, 321 DIVINA ON COMMERCIAL LAW:
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may Alvaro organize an exhibit among his close friends and
display the painting of Raphael?
183. What are the so-called moral rights of a copyright holder?
Yes, Alvaro may display the painting to his close friends. What
The author of a work shall, independently of the economic
is prohibited is the public display of the copyrighted work.
rights or the grant of an assignment or license with respect to such
A public display is generally accepted to mean a display at a right, have the following moral rights:361
place open to the public or where a substantial number of persons a. To require that the authorship of the works be attributed
outside of a normal circle of family or its social acquaintances are to him. in particular, the right that his name, as far
gathered.348 as practicable, be indicated in a prominent way on the
copies, and in connection with the public use of his work;
flig/it of public performance (“Right of attribution”)
b. To make any alterations of his work prior to, or to withhold
181. What is public performance? it from publication;
c. To object to any distortion, mutilation or other modification
“Public performance”, in the case of a work other than an of, or other derogatory action in relation to, his work which
audiovisual work, is the recitation, playing, dancing, acting or would be prejudicial to his honor or reputation; (“Right of
otherwise performing the work, either directly or by means of any integrity”) and
device or process; in the case of an audiovisual work, the showing of
d. To restrain the use of his name with respect to any work
its images in sequence and the making of the sounds accompanying not of his own creation or in a distorted version of his
it audible; and, in the case of a sound recording, making the work.352 (“Right against false attribution”)
recorded sounds audible at a place or at places where persons
outside the normal circle of a family and that family’s closest social 184. SJ, a computer genius, commissioned Wl, former managing
acquaintances are or can be present, irrespective of whether they editor of the largest publishing company in the world, to write
are or can be present at the same place and at the same time, or at SJ's autobiography. SJ, preoccupied by his overwhelming
ambition to grow his company to be able to offer technological
different places and/or at different times, and where the performance
products that will benefit mankind, did not get to spend much
can be perceived without the need for communication within the time with his children. His intention in having the autobiography
meaning of Subsection 171.3 of the Intellectual Property Code.349 is for his children to get to know the real SJ—his virtues and
frailties. Wl accepted the engagement on one condition—it will
Right of communication to the public be a no holds barred account of SJ's life. SJ agreed. But after
the finishing the book, Wl is not happy with it and refuse to
182. What does communication to the public, as an economic right, publish it.
mean? May SJ compel Wl to publish the book?
“Communication to the public” or “communicate to the public” The copyright to the book belongs to Wl unless otherwise
means the making of a work available to the public by wire or stipulated. Therefore, it is within his moral rights to withhold the
book from publication.
wireless means in such a way that members of the public may access
these works from a place and time individually chosen by them.350 Also, an author cannot be compelled to perform his contract to
create a work or for the publication of his work already in existence.
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326 DIVINA ON COMMERCIAL LAW:
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However, he may be held liable for damages for breach of such the rules on co-ownership. If, however, a work of joint
contract.3*3 authorship consists of parts that can be used separately
and the author of each part can be identified, the author
185. May the moral rights to a copyright be waived? of each part shall be the original owner of the copyright in
An author may waive his rights by a written instrument, but the part that he has created;”0
no such waiver shall be valid where its effect is to permit another:364 c. In the case of work created by an author during and in the
a) To use the name of the author, or the title of his work, or course of his employment, the copyright shall belong to:
otherwise to make use of his reputation with respect to i. The employee, if the creation of the object of
any version or adaptation of his work which, because of copyright is not a part of his regular duties even if
alterations therein, would substantially tend to injure the the employee uses the time, facilities and materials
literary or artistic reputation of another author;356 or of the employer.
b) To use the name of the author with respect to a work he ii. The employer, if the work is the result of the
did not create.356 performance of his regularly-assigned duties, unless
Also, when an author contributes to a collective work, his right there is an agreement, express or implied, to the
to have his contribution attributed to him is deemed waived unless contrary.361
he expressly reserves it.367 d. In the case of a work commissioned by a person other than
an employer of the author, and who pays for it, and the
186. What is the term of moral right? work is made in pursuance of the commission, the person
who so commissioned the work shall have ownership of
All moral rights shall be coterminous with the economic rights the work, but the copyright thereto shall remain with
of the author or creator of the work except the right of attribution, the creator, unless there is a written stipulation to the
which is in perpetuity.358
contrary;”2
4. Rules on Ownership of Copyright e. In the case of audiovisual work, the copyright shall
belong to the producer, the author of the scenario, the
187. What rules govern copyright ownership? composer of the music, the film director, and the author
Copyright ownership shall be governed by the following of the work so adapted. However, subject to contrary
rules: or other stipulations among the creators, the producer
shall exercise the copyright to an extent required for the
a. In the case of original literary and artistic works, copyright exhibition of the work in any manner, except for the right
shall belong to the author of the work;369 to collect performing license fees for the performance of
b. In the case of works of joint authorship, the co-authors musical compositions, with or without words, which are
shall be the original owners of the copyright and in the incorporated into the work;363
absence of agreement, their rights shall be governed by f. In respect of letters, the copyright shall belong to the
writer subject to the provisions of Article 723 of the Civil
’“Section 194, IPC, as amended. Code.364 The publishers shall be deemed to represent the
35'Section 195, IPC, as amended.
“’Section 195.1, ibid. ““Section 178.2, ibid.
“Section 195.2, ibid. “'Section 178.3, ibid.
“’Section 196, IPC, as amended. “"Section 178.4, ibid.
“’Section 198.1 as amended by R.A. No. 10372. “’Section 178.5, ibid.
“’Section 178.1, IPC, as amended. “‘Section 178.6, ibid.
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188. Eloise, an accomplished writer, was hired by Petong to write 189. While vacationing in Boracay, Valentino surreptitiously took
a bimonthly newspaper column for Diario de Manila, a newly- photographs of his girlfriend Monaliza in her skimpy bikini.
Two (2) weeks later, her photograph appeared in the Internet
established newspaper of which Petong was the editor-in-
and in a national celebrity magazine. Monaliza found out
chief. Eloise was to be paid P1,000 for each column that was that Valentino had sold the photograph to the magazine and,
published. In the course of two (2) months, Eloise submitted adding insult to injury, uploaded them to his personal blog
three (3) columns which, after some slight editing, were on the Internet. Monaliza filed a complaint against Valentino
printed in the newspaper. However, Diario de Manila proved for damages based on, among other grounds, violation of
unprofitable and closed only after two (2) months. Due to the her intellectual property rights: a. Does she have any cause
of action? Explain; b. Valentino's friend Francesco stole the
minimal amounts involved, Eloise chose not to pursue any
photographs and duplicated them and sold them to a magazine
claim for payment from the newspaper, which was owned by publication. Valentino sued Francesco for infringement and
New Media Enterprises: damages. Does Valentino have any cause of action? Explain,
c. Does Monaliza have any cause of action against Franceso?
a. Does Eloise have to secure authorization from New Media
Explain.
Enterprises to be able to publish her Diario de Manila
columns in her own anthology? Explain fully. a. No. Monaliza cannot sue Valentino for violation of her
intellectual property rights, because she was not the one
b. Assume that New Media Enterprises plans to publish who took the pictures. She may sue Valentino instead for
Eloise's columns in its own anthology entitled, "The violation of her right to privacy. He surreptitiously took
Best of Diario de Manila" Eloise wants to prevent the photographs of her and then sold the photographs to a
publication of her columns in that anthology since she magazine and uploaded them to his personal blog in the
was never paid by the newspaper. Name one irrefutable Internet.
legal argument Eloise could cite to enjoin New Media b. No. Valentino cannot sue Francesco for infringement,
Enterprises from including her columns in its anthology. because he has already sold the photographs to a
magazine.
Answer:
c. Yes. Monaliza can also sue Francesco for violation of her
a. Eloise does not have to secure the authorization of New right to privacy.366
Media, because as the author, she owns the copyright to
her columns. 190. T, an associate attorney in XYZ Law Office, wrote a newspaper
publisher a letter disputing a columnist's claim about an
b. Eloise could invoke that under the IPC, as the owner of incident in the attorney's family. T used the law firm's letterhead
the copyright to the columns, she can either “authorize and its computer in preparing the letter. T also requested the
or prevent” reproduction of the work, including the firm's messenger to deliver the letter to the publisher. Who
public distribution of the original and each of the work owns the copyright to the letter?367
‘by sale or other forms of transfer of ownership”. While
the anthology as a derivative work is protected as a new
work, it does not affect the force of the copyright of Eloise 366BAR 2010.
“’BAR 2011.
upon her columns and does not imply any right to New
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330 DIVINA ON COMMERCIAL LAW:
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a. T, since he is the original creator of the contents of Can the President's widow transfer the copyright without the
the letter; consent of Matalino?
b. Both T and the publisher, one wrote the letter to the other Under the law. in case of commissioned work, the work
who has possession of it; belongs to the one who commissioned it but the copyright belongs
c. The law office since it was an employee and he wrote it on to the author, unless otherwise stipulated. Thus, unless otherwise
the firm’s letterhead; stipulated, the President’s widow cannot transfer the copyright
since it belongs to the author.
d. The publisher to whom the letter was sent.
193. What is the general term of copyright protection?
191. BR and CT are noted artists whose paintings are highly prized
by collectors. Dr. DL commissioned them to paint a mural at Subject to the other rules below, the copyright of both original
the main lobby of his new hospital for children. Both agreed to and derivative works shall be protected during the life of the author
collaborate on the project for a total fee of two million pesos and for 50 years after his death. This rule also applies to posthumous
to be equally divided between them. It was also agreed that works.370
Dr. DL had to provide all the materials for the painting and pay
194. How about in cases of joint authorship?
for the wages of technicians and laborers needed for the work
on the project. Assume that the project is completed and both In case of works of joint authorship, the economic rights shall
BR and CT are fully paid the amount of P2M as artists' fee by be protected during the life of the last surviving author and for 50
DL. Under the law on Intellectual Property, who will own the years after his death.371
mural? Who will own the copyright in the mural? Why? Explain.
195. If today a person is granted a copyright for a book, for how long
Under Section 178.4 of the IPC, as amended, in case of will the copyright be valid? If said person uses a pseudonym,
commissioned work, the creator (in the absence of a written how would this affect the length of the copyright?
stipulation to the contrary) owns the copyright, but the work itself
belongs to the person who commissioned its creation. Accordingly, A copyright endures during the lifetime of the creator and for
the mural belongs to DL. However, BR and CT own the copyright, 50 years after his death. In case he uses a pseudonym, the copyright
since there is no stipulation to the contrary.368 shall last until the end of 50 years following the date of the first
publication of the work, unless the author is identified, in which
192. The widow of a former President commissioned Matalino case, the copyright subsists during his lifetime and for 50 years after
to write a biography of her late husband for a fee. Upon his death.372
completion of the work, the widow paid Matalino the agreed
price. The biography was copyrighted. The widow, however, 196. Are there other kinds of works with different terms of
changed her mind upon reading the book and decided not to protection?
have it published. Can the President's widow sell the property Yes. In case of works of applied art, the protection shall be for
without the consent of Matalino? Explain. a period of 25 years from the date of making.373
The President’s widow can sell the property without the
consent of Matalino. The widow was the owner of the work that was
done by Matalino pursuant to their agreement.369
37oSection 213.1, IPC, as amended.
371Section 213.2, IPC, as amended.
’“BAR 1995 and 2004. 372BAR 1975.
“’BAR 1986. 373Section 213.4, IPC, as amended.
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In case of photographic works, the protection shall be for 50 198. What are the limitations on copyright?
years from publication of the work and, if unpublished, 50 years
Notwithstanding the provisions of Chapter V of the IPC, the
from the making.374
following acts shall not constitute infringement of copyright:™
In case of audio-visual works including those produced by
process analogous to photography or any process for making audio
a. The recitation or performance of a work, once it has been
lawfully made accessible to the public, (i) if done privately
visual recordings, the term shall be 50 years from date of publication and free of charge or (ii) if made strictly for a charitable or
and, if unpublished, from the date of making.376 religious institution or society;
The rights granted to performers and producers of sound Example: Students singing popular songs to entertain a
recordings under this law shall expire: professor celebrating his birthday.
a. For performances not incorporated in recordings, 50 years b. The making of quotations from a published work if they
from the end of the year in which the performance took are compatible with fair use and only to the extent justified
place; and for the purpose, including quotations from newspaper
b. For sound or image and sound recordings and for articles and periodicals in the form of press summaries:
performances incorporated therein, 50 years from the end provided, that the source and the name of the author, if
of the year in which the recording took place.376 appearing on the work, are mentioned;
For example, Juan dela Cruz composed a song. He asked Pedro Example: Lifting an insignificant portion of a book and
incorporating it in another book, with proper attribution.
to sing the musical composition. Because of his excellent rendition
of the song, it became a hit. Juan has a copyright to the musical c. The reproduction or communication to the public by mass
composition. It subsists during his lifetime and 50years after his media of (i) articles on current political, social, economic,
death. Pedro has the copyright to his performance. This is an scientific or religious topic, (ii) lectures, addresses and
example of a neighboring right to copyright. It has a term of 50 years other works of the same nature, which are delivered in
following the end of the year in which the performance took place. public if such use is for information purposes and has
not been expressly reserved: provided, that the source is
In case of broadcasts, the term shall be 20 years from the date clearly indicated;
the broadcast took place. The extended term shall be applied only to
old works with subsisting protection under the prior law. Example: News story printing a substantial part of the
speech of a public official.
197. Is there a special rule on the calculation of the term? d. The reproduction and communication to the public of
Yes. The term of protection subsequent to the death of the literary, scientific or artistic works as part of reports of
author provided in the above rules shall run from the date of his current events by means of photography, cinematography
death or of publication, but such terms shall always be deemed to or broadcasting to the extent necessary for the purpose;
begin on the first day of January of the year following the event Example: Taking a photo of paintings in art gallery
which gave rise to them.377 exhibit as part of report of current events.
5. Limitations on Copyright e. The inclusion of a work in a publication, broadcast, or
other communication to the public, sound recording
374Section 213.5, IPC, as amended. or film, if such inclusion is made by way of illustration
^Section 213.6, IPC, as amended. for teaching purposes and is compatible with fair use:
^Section 215, IPC, as amended.
^’Section 214, IPC, as amended.
■’’“Section 184.1, IPC, as amended.
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provided, that the source and of the name of the author, if j- Public display of the original or a copy of the work not
appearing in the work, are mentioned; made by means of a film, slide, television image or
Example: Slides presentation of comparative works of otherwise on screen or by means of any other device
architecture as illustration for teaching purposes of the or process: provided, that either the work has been
different types of architecture throughout the decades. published, or, that the original or the copy displayed has
been sold, given away or otherwise transferred to another
f. The recording made in schools, universities, or educational
person by the author or his successor in title;
institutions of a work included in a broadcast for the use
of such schools, universities or educational institutions; Example: Public display of a painting after its purchase
provided, that such recording must be deleted within from the owner.
a reasonable period after they were first broadcast: k. Any use made of a work for the purpose of any judicial
provided, further, that such recording may not be made proceedings or for the giving of professional advice by a
from audiovisual works which are part of the general
legal practitioner.
cinema repertoire of feature films except for brief excerpts
of the work; Example: Copying portions of a book for inclusion in a
Example: The recording made in a university of UAAP pleadings to be filed with the court or in an opinion to be
basketball games for the viewing of the university given to a client.
students. 1. The reproduction or distribution of published articles
g- The making of ephemeral recordings by a broadcasting or materials in a specialized format exclusively for the
organization by means of its own facilities and for use in use of the blind, visually- and reading-impaired persons:
its own broadcast; Provided, That such copies and distribution shall be made
on a nonprofit basis and shall indicate the copyright
Example: The recording by a broadcasting organization of
owner and the date of the original publication; and,”9
current events as part of a newscast.
h. The use made of a work by or under the direction or Example: The non-commercial reproduction of books
control of the Government, by the National Library or by under the Braille system for the use of the blind.
educational, scientific or professional institutions where m. In case of fair use of the copyrighted work.380
such use is in the public interest and is compatible with
fair use; Private Performance of a work
Example: The application of the must-carry rule of
the National Telecommunications Commission which 199. The Filipino Society of Composers (FCT) is a non-profit
obligates cable provides to carry the signals and shows association of authors, composers and publishers. Said
of free TV stations to afford the public wider viewing association is the owner of certain musical compositions
options. among which are the songs entitled: "Dahil Sa lyo," "Sapagkat
Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The
i. The public performance or the communication to the public
Nearness Of You."
of a work, in a place where no admission fee is charged in
respect of such public performance or communication, by BT is the operator of a restaurant known as "Alex Soda
a club or institution for charitable or educational purpose Foundation and Restaurant" where a combo with professional
only, whose aim is not profit making, subject to such other singers, hired to play and sing musical compositions to
limitations as may be provided in the Regulations; entertain and amuse customers therein, were playing and
Example: Poetry reading competition among students
where no admission fee is charged in respect of such
_________
’’’Section 184, IPC, as amended.
public performance. ’“Section 185, IPC, as amended.
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338 DIVINA ON COMMERCIAL LAW:
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™Pacita Habana, et al. v. Felicidad Robles and Goodwill Trading Co., Inc., 3B7GMA Network, Inc. v. Central CATV, Inc., G.R. No. 176694, July 18, 2014.
G.R. No. 131522, July 19, 1999.
388ABS-CBN Broadcasting Corporation v. Philippine Multi-Media System,
^Supra. Inc., G.R. Nos. 175769-70, January 19, 2009.
186G.R. No. 222702, April 5, 2016. 3ft9GMA Network, supra.
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No, the cable TV provider is not the origin nor does it claim
208. May Liza be held criminally liable if she did not attribute the
to be the origin of the programs broadcasted by the ABS-CBN; the portion of the work she quoted in her opinion to the labor law
former did not make and transmit on its own but merely carried the author?
existing signals of the latter and when the cable provider subscribers
The law does not require attribution when it comes to the use of
new ABS-CBN’s programs in Channels 2 and 23, they know that
the work for judicial proceeding or giving professional advice and as
the origin thereof was the latter.390 such. Liza cannot be sued for copyright infringement despite lack of
attribution. However, Liza may be held liable for plagiarism which
Judicial proceedings or professional advice is broader in scope than copyright. To plagiarize means to steal and
pass off the ideas or words of another as one’s own. It is basically a
206. May a person have photocopies of some pages of the book of literary theft.392
Professor Rosario made without violating the copyright law? a. Doctrine of fair use
No, the private reproduction of a published work in a single copy, 209. What is fair use?
where the reproduction is made by a natural person exclusively for
Fair use is “a privilege to use the copyrighted material in a
research and private study, is permitted, without the authorization reasonable manner without the consent of the copyright owner or as
of the owner of the copyright in the work does not apply to a book. copying the theme or ideas rather than their expression.”393 Fair use
Reproduction of a book is covered by a separate provision. If the is an exception to the copyright owner>s monopoly of the use of the
pages copied amount to a substantial portion, there is infringement work to avoid stifling “the very creativity which that law is designed
of copyright. to foster”.393
Under this doctrine, the fair use of a copyrighted work for: (1)
207. In a written legal opinion for a client on the difference criticism and comment; (2) news reporting; (3) teaching, including
between apprenticeship and learnership, Liza quoted without multiple copies for classroom use; and (4) scholarship, research, and
similar purposes is not an infringement of copyright.
permission a labor law expert's comment appearing in his book
entitled "Annotations on the Labor Code." Can the labor law 210. What are the factors to be considered in determining fair use?
expert hold Liza liable for infringement of copyright for quoting
Determining fair use requires application of the four-factor
a portion of his book without his permission?
test. Section 185 of the Intellectual Property Code lists four (4)
No. The labor law expert cannot hold Liza liable for infringement factors to determine if there was fair use of a copyrighted work:
of copyright. Under Section 184. l(k) of the IPC, as amended, “Any
use made of a work for the purpose of any judicial proceeding or
392Webster’s online dictionary.
for giving of professional advice by a legal practitioner” shall not 393ABS CBN case citing Habana v. Robles, 369 Phil. 764 (1999) [Per J. Pardo,
constitute infringement of a copyright.391 The use made of a work for First Division], citing 18 AM JUR2D §109, in turn citing Toksvig v. Bruce Pub. Co.,
the purpose of giving professional advice is a limitation on copyright (CA7Wis) 181 F2d 664 [1950]; Bradbury v. Columbia Broadcasting System, Inc.,
(CA9 Cal) 287 F2d 478, cert den 368 US 801, 7 L ed 2d 15, 82 S Ct 19 [1961]; Shipman
and does not require the consent of the author. v. R.K.O. Radio Pictures, Inc., (CA2 NY) 100 F2d 533 [1938].
393ABS CBN case citing Matthew D. Bunker, TRANSFORMING THE NEWS:
COPYRIGHT AND FAIR USE IN NEWS-RELATED CONTEXTS, 52 J. COPYRIGHT
SOCY U.S.A. 309, 311 (2004-2005), citing Iowa St. Univ. Research Found., Inc. v.
Am. Broad. Cos., 621 F.2d 57, 60 (2d Cir. 1980). The four factors are similarly codified
under the United States Copyright Act of 1976, Section 107.
3S0ABS-CBN Broadcasting Corporation Philippine Multi-Media System,
Ine.,G.R. Nos. 175769-70, January 19, 2009.
“'BAR 2006.
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a. The purpose and character of the use, including whether use had or will have a negative impact on the copyrighted work's
such use is of a commercial nature or is for non-profit market, then the use is deemed unfair.™5
educational purposes; Interestingly, in the ABS-CBN case, the respondents from
b. The nature of the copyrighted work; GMA-7 invoked as of one of their defenses the doctrine of fair use
since footage was only aired for five (5) seconds. It was held that
c. The amount and substantiality of the portion used in whether the alleged five-second footage may be considered fair use
relation to the copyrighted work as a whole; and is a matter of defense as the case involves determination of probable
d. The effect of the use upon the potential market for or cause at the preliminary investigation stage only.
value of the copyrighted work. GMA-7’s rebroadcast of ABS-CBN’s news footage without
First, the purpose and character of the use of the copyrighted the latter’s consent is not an issue. The mere act of rebroadcasting
material must fall under those listed in Section 185, thus: “criticism, without authority from the owner of the broadcast gives rise to
comment, news reporting, teaching including multiple copies the probability that a crime was committed under the Intellectual
for classroom use, scholarship, research, and similar purposes.” Property Code.
The purpose and character requirement is important in view of The fair use of a copyrighted work for (i) criticism and comment;
copyright’s goal to promote creativity and encourage creation of (ii) news reporting; (iii) teaching, including limited number of
works. Hence, commercial use of the copyrighted work can be copies for classroom use; and (iv) scholarship, research, and similar
weighed against fair use. purposes is not an infringement of copyright.
The “transformative test” is generally used in reviewing the Decompilation, which is understood here to be the reproduction
purpose and character of the usage of the copyrighted work. The of the code and translation of the forms of a computer program to
court must look into whether the copy of the work adds “new achieve the interoperability of an independently created computer
expression, meaning or message” to transform it into something program with other programs may also constitute fair use to the
else. “Meta-use” can also occur without necessarily transforming the extent that such decompilation is done for the purpose of obtaining
copyrighted work used. the information necessary to achieve such interoperability.396
Second, the nature of the copyrighted work is significant in
211. Virtucio was a composer of llocano songs who has been quite
deciding whether its use was fair. If the nature of the work is more
popular in the llocos Region. Pascuala is a professor of music
factual than creative, then fair use will be weighed in favor of the
in a local university with special focus on indigenous music.
user.
When she heard the musical works of Virtucio, she purchased
Third, the amount and substantiality of the portion used is a CD of his works. She copied the CD and sent the second copy
important to determine whether usage falls under fair use. An exact to her Music class with instructions for the class to listen to
reproduction of a copyrighted work, compared to a small portion of the CD and analyze the works of Virtucio. Did Pascuala thereby
it, can result in the conclusion that its use is not fan’. There may also infringe Virtucio's copyright? Explain your answer.
be cases where, though the entirety of the copyrighted work is used
Pascuala did not infringe on the rights of Virtucio. The fair
without consent, its purpose determines that the usage is still fair.
use of a copyrighted work for criticism, comment, news reporting,
For example, a parody using a substantial amount of copyrighted
teaching including limited number of copies for classroom use,
work may be permissible as fair use as opposed to a copy of a work
scholarship, research and similar purposes is not an infringement
produced purely for economic gain.
Lastly, the effect of the use on the copyrighted work’s market
is also weighed for or against the user. If this court finds that the 395ABS-CBN, ibid.
396Section 185.1, IPC, as amended.
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of copyright.3” In this case, Pascuala’s reproduction of the limited 213. What is copyright infringement?
number of CDs was for classroom use and educational purposes thus
Infringement of a copyright is a trespass on a private domain
negating copyright infringement.398
owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which
212. KLM Printers, Inc. operated a mall outlet located at the ground
is a synonymous term in this connection, consists in the doing by
floor of university building in Quezon City. It possessed soft
any person, without the consent of the owner of the copyright, of
copies of certain textbooks on file, and would print "book-
anything the sole right to do which is conferred by statute on the
alikes" of these textbooks (or in other words, reproduced
owner of the copyright.400
the entire textbooks) upon order and for a fee. It would even
display samples of such "book-alikes" in its stall for sale to the The gravamen of copyright infringement is not merely the
public. unauthorized “manufacturing” of intellectual works but rather the
unauthorized performance of any of the rights exclusively granted
Upon learning of KLM Printers, Inc.'s activities, the to the copyright owner. Hence, any person who performs any of such
authors of the textbooks filed a suit against it for copyright acts without obtaining the copyright owner’s prior consent renders
infringement. In its defense, KLM Printers, Inc. invoked the himself civilly and criminally liable for copyright infringement.
doctrine or fair use, contending that the "book-alikes" are It was held that the copying of the genuine Microsoft software to
being used for educational purposes by those who avail of produce computer system hard disk or read-only memory (CD-
them. ROMs) containing fake Microsoft software and their distribution
are illegal even if the copier or distributor is a Microsoft licensee."1
a. What is the doctrine of fair use?
Absolute similarity of the purported pirated works to the
Under this doctrine, the fair use of a copyrighted work for copyrighted works is not required. The essence of a copyright
(1) criticism, comment, (2) news reporting, (3) teaching including infringement is the similarity or at least substantial similarity of
multiple copies for classroom use, (4) scholarship, research, and the purported pirated works to the copyrighted work.402
similar purposes is not an infringement of copyright.
214. When is copyright infringement committed?
b. Is KLM Printers, Inc.'s invocation of the doctrine of fair use
proper in this case? Explain. Copyright infringement is committed by any person who shall
use original literary or artistic works, or derivative works, without
No, the invocation is improper. In determining whether the use the copyright owner’s consent in such a manner as to violate the
made of a work in any particular case is fair use, the factors to be foregoing economic and moral rights of the author.
considered shall include: a) the purpose and character of the use,
including whether such use is of a commercial nature or is for non A person infringes a right protected under the IPC when one:
profit educational purposes; b) The nature of the copyrighted work; a. Directly commits an infringement;
c) the amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and d) the effect of the use upon b. Benefits from the infringing activity of another person
the potential market for or value of the copyrighted work.399 who commits an infringement if the person benefiting
has been given notice of the infringing activity and has
6. Copyright Infringement
400ABS-CBN, supra.
401NBI-Microsoft Corporation v. Judy Hwang, et al., G.R. No. 147043, June 21,
“’Section 185, IPC, as amended. 2005.
“BAR 2017. 402Francisco G. Joaquin, Jr., and BJ Productions, Inc. v. Honorable Franklin
“Section 185.1, IPC, as amended. Drilon, et al., G.R. No. 108946, January 28, 1999.
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the right and ability to control the activities of the other 217. May corporate officers be held liable for copyright
person; infringement?
C. With knowledge of infringing activity, induces, causes Section 217 of the Intellectual Property Code states that “any
or materially contributes to the infringing conduct of person" may be found guilty of infringement. It also imposes the
another.403 penalty of both imprisonment and fine.
It has been ruled that corporate officers and/or agents may be
215. May the author or creator of the work sue for copyright held individually liable for a crime committed under the Intellectual
infringement if he fails to deposit a copy of his work to the Property Code:106
National Library (or the IPO as deputized by the National
Library)? The existence of the corporate entity does not shield from
prosecution the corporate agent who knowingly and intentionally
Yes, he may sue for copyright infringement notwithstanding caused the corporation to commit a crime. A corporate officer cannot
the lack of deposit and registration with the National Library. protect himself behind a corporation where he is the actual, present
Artistic and Literary works are now protected by its mere creation and efficient actor.107 However, the criminal liability of a corporation's
under the new Copyright Law. officers or employees stems from their active participation in the
Under P.D, No. 49, failure to comply with registration and commission of the wrongful act.
deposit does not deprive the copyright owner of the right to sue The principle applies whether or not the crime requires the
for infringement but merely limits the remedies available to him consciousness of wrongdoing. It applies to those corporate agents
because the copyright for a work is granted from the moment of who themselves commit the crime and to those, who, by virtue of their
creation. This means that the author whose work was infringed can managerial positions or other similar relation to the corporation,
only secure an injunction against infringement but cannot sue for could be deemed responsible for its commission, if by virtue of their
damages.404 relationship to the corporation, they had the power to prevent the
However, under the IPC, the copyright owner may not only act.
obtain an injunction but may also ask for damages and exercise An accused’s participation in criminal acts involving violations
other remedies provided by the law even though his work is not of intellectual property rights is the subject of allegation and proof.
deposited and registered with the IPO. The showing that the accused did the acts or contributed in a
meaningful way in the commission of the infringements is certainly
216. What are the elements of copyright infringement? different from the argument of lack of intent or good faith. Active
For a claim of copyright infringement to prevail, the evidence participation requires a showing of overt physical acts or intention
on record must demonstrate: to commit such acts. Intent or good faith, on the other hand, are
inferences from acts proven to have been or not been committed.
a. Ownership of a validly copyrighted material by the
complainant; and It was held in the ABS-CBN case that the Department of
Justice committed grave abuse of discretion when it resolved to file
b. Infringement of the copyright by the respondent.405 the Information against certain respondents despite lack of proof of
their actual participation in the alleged crime.
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218. In an action for damages on account of an infringement of a 348 DIVINA ON COMMERCIAL LAW:
copyright, the defendant (the alleged pirate) raised the defense A COMPREHENSIVE GUIDE VOLUME II
that he was unaware that what he had copied was a copyright
material. Would this defense be valid? i. Damages. The court can order the defendant to pay
to the copyright proprietor or his assigns or heirs
No. An intention to pirate is not an element of infringement. such actual damages, including legal costs and
Infringement under the Intellectual Property Code is malum other expenses, as he may have incurred due to the
prohibitum. The Intellectual Property Code is a special law. infringement as well as the profits the infringer may
Copyright is a statutory creation: Malice or criminal intent is have made due to such infringement, and in proving
completely immaterial. Hence, an honest intention is no defense to profits the plaintiff shall be required to prove sales
only and the defendant shall be required to prove
an action for infringement.408 every element of cost which he claims, or, in lieu of
A copy of a piracy is an infringement of the original, and it is no actual damages and profits, such damages which to
defense that the pirate, in such cases, did not know whether or not the court shall appear to be just and shall not be
regarded as penalty.411
he was infringing any copyright; he at least knew that what he was
copying was not his, and he copied at his peril. The amount of damages to be awarded shall be doubled against
any person who:
Thus, unless clearly provided in the law, offenses involving
(i) Circumvents effective technological measures; or
infringement of copyright protections should be considered malum
prohibitum. It is the act of infringement, not the intent, which (ii) Having reasonable grounds to know that it will induce,
enable, facilitate or conceal the infringement, remove
causes the damage. To require or assume the need to prove intent or alter any electronic rights management information
defeats the purpose of intellectual property protection. from a copy of a work, sound recording, or fixation of
Nevertheless, proof beyond reasonable doubt is still the a performance, or distribute, import for distribution,
standard for criminal prosecutions under the Intellectual Property broadcast, or communicate to the public works or copies
of works without authority, knowing that electronic rights
Code.409 management information has been removed or altered
In one case, however, the Supreme Court found no grave without authority.412
abuse of discretion on the part of the Department of Justice when it ‘Technological measure’ means any technology, device or
dismissed the complaint against the respondent who had possession component that, in the normal course of its operation, restricts
of a product after purchase from legitimate sources but which turned acts in respect of a work, performance or sound recording, which
out to be a counterfeit, without the knowledge of the purchaser/ are not authorized by the authors, performers or producers of
sound recordings concerned or permitted by law.413
possessor.410
‘Rights management information’ means information
219. What are the remedies of the copyright owner against an which identifies the work, sound recording or performance;
infringer? the author of the work, producer of the sound recording or
performer of the performance; the owner of any right in the
The copyright owner may exercise the following remedies in work, sound recording or performance; or information about
case of infringement: the terms and conditions of the use of the work, sound recording
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or performance; and any number or code that represent such The order of destruction is however not executory if
information, when any of these items is attached to a copy of defendant files a motion for reconsideration.421
the work, sound recording or fixation of performance or appears
The foregoing remedies shall not preclude an
in conjunction with the communication to the public of a work,
independent suit for relief by the injured party by
sound recording or performance.111 way of damages, injunction, accounts or otherwise.121
Moral and exemplary damages may likewise be awarded He may also file a criminal action for copyright
V.
as court may deem proper, wise and equitable.116 infringement.423
However, no damages may be recovered after the lapse of Thecopyright owner may elect, at any time before final judgment
four years from the time the cause of action arose.1'6 is rendered, to recover instead of actual damages and profits, an
ii. Preliminary injunction. The court may also order award of statutory damages for all infringements involved in an
the defendant to desist from committing any action in a sum equivalent to the filing fee of the infringement action
infringement and/or to prevent the entry into but not less than fifty thousand pesos (P50,000.00). In awarding
the channels of commerce of imported goods that statutory damages, the court may consider the following factors:
involve an infringement, immediately after customs (1) The nature and purpose of the infringing act;
clearance of such goods.117
(2) The flagrancy of the infringement;
iii. Search and seizure order. This may include the
seizure and impounding of sales invoices and (3) Whether the defendant acted in bad faith;
other documents evidencing sales, all articles and (4) The need for deterrence;
their packaging alleged to infringe a copyright and (5) Any loss that the plaintiff has suffered or is likely to suffer
implements for making them which may serve as by reason of the infringement; and
evidence in court proceedings in accordance with the
rules on search and seizure involving violations of (6) Any benefit shown to have accrued to the defendant by
intellectual property rights issued by the Supreme reason of the infringement.
Court.118 In case the infringer was not aware and had no reason to
iv. Order of Destruction. The court can also order the believe that his acts constitute an infringement of copyright, the
destruction without any compensation all infringing court in its discretion may reduce the award of statutory damages to
copies or devices, as well as all plates, molds, or a sum of not more than P10,000.00.424
other means for making such infringing copies as The amount of damages to be awarded shall be doubled against
the court may order.119 any person who circumvents effective technological measures and/
The destruction of infringing copies of the work or alters or removes electronic rights management information.421
may be ordered even in the event of acquittal in a
criminal case.120 220. Jose Santos has written many poems, some of which have been
published in Panorama Magazine but never registered with the
Copyright Office. Among his published works was the poem
‘■‘Section 171.13, IPC, as amended.
‘■’Section 216.1(e), IPC, as amended.
‘‘"Section 226, IPC, as amended. 4212020 Rules, supra.
‘■’Section 216.1(a), as amended. 4z2Section 216.2, IPC, as amended.
‘■“Section 216.2, and 216.1(c), IPC, as amended. 423Section 217.1, IPC, as amended.
‘■“Section 216.1(d), IPC, as amended. ™Supra.
‘“Section 216.1, IPC, as amended. ’“Section 216.1, IPC
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VII. INTELLECTUAL PROPERTY CODE 351 352 DIVINA ON COMMERCIAL LAW:
A COMPREHENSIVE GUIDE VOLUME II
entitled “In a Rose Garden." About a year from its publication, f. If the basis of the complaint is the benefit derived from
Jose was surprised to hear over the radio a song whose lyrics the infringing activity, lack of notice thereof and/or did
were copied from his poem. It appears that music sheets of not have the ability to control the infringement;
the song have been published and sold under the name of the
g- Prescription; and
composer, without any acknowledgment in favor of Jose. Jose
wants to know what his rights are and whether he can secure h. Lack of evidence to support the allegations of the
an injunction against the composer and/or the publisher, complaint.
perhaps with damages. How will you advise him? Explain.
I would tell Santos that he has a right to file an injunction 222. Is there copyright infringement in the following cases?’”
proceeding to restrain the composer and/or his publisher from a. Sale of illicit copies of software programs.
further committing any act of infringement of his copyright. Under
the present law, copyright is acquired from the moment of creation Yes. The mere sale of illicit copies of software programs is
of the work. Registration and deposit of the work are no longer enough by itself to show the existence of probable cause for copyright
necessary for its acquisition. The moment Santos wrote his poem, he infringement.428
acquired the right to restrain any infringement on his copyright, as b. Importation of DVDs and CDs of music, movies, and
well as the right to have the infringing copies and devices impounded.
foreign books into the Philippines by an individual for
He may recover actual damages, including legal costs and other personal purpose.
expenses, as he may have incurred due to the infringement as well
as the profits the infringer may have made due to such infringement, There is no infringement as long as the foregoing items are not
and in proving profits the plaintiff shall be required to prove sales pirated and the number of copies is compatible with fair use. The
only and the defendant shall be required to prove every element of economic rights of the author do not include the right to prevent
cost which he claims, or, in lieu of actual damages and profits, such importation or exportation of the copyrighted work. R.A. No.
damages which to the court shall appear to be just and shall not be 10372 removed the limitation on the number of copies that may be
regarded as penalty. imported into the Philippines by an individual but this should not
He may also recover moral and exemplary damages, which the mean without any limit.
court may deem proper, wise and equitable.426 c. Public display of a painting after its purchase from the
artist.
221. What are the defenses available against an action for copyright
infringement? Yes, this is one of the limitations on copyright.429
The defenses are as follows: d. Reproduction of the entire copy of a thesis by a person
other than the author.
a. The work is not copyrightable;
There is no infringement provided that the reproduction is only
b. The term of the copyright has expired;
for a single copy, made by a natural person exclusively for research
C. The use of the work falls within the limitations on and private study.430
copyright;
d. The plaintiff/complainant is not the owner of the copyright;
e. Non-participation in the commission of the infringing 427The assumption is that the copyright owner did not give his consent to any
activities; of the acts enumerated.
428Microsoft Corporation v. Manansala, G.R. No. 166391, October 21, 2015.
429Section 184. l(j), IPC, as amended.
,!6BAR 1981 but answered under the IPC. 430Section 187, IPC, as amended.
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VII. INTELLECTUAL PROPERTY CODE 353
e. Use of layout or appearance of book without the consent 354 DIVINA ON COMMERCIAL I .AW:
of the author. A COMPREHENSIVE GUIDE VOLUME II
There is no infringement as long as the use is with the Purchase of a book and then selling it for a price higher
j-
permission of the publisher. The copyright to the layout belongs to than cost of acquisition.
the publisher and not to the author.431 There is no infringement of copyright. The first sale doctrine
f. Use of an ornamental design embossed in a coffee mug provides that an individual who knowingly purchases a copy of a
copyrighted work from the copyright holder receives the right to sell,
as a design for T-shirt.
display or otherwise dispose of that particular copy, notwithstanding
There is infringement. The design can be detached from the the interests of the copyright owner. The copyright holder’s right to
usefulness of the product and as such, it is copyrightable under the control the distribution of his work goes away after the “first sale”
of the work.
Denicola test.
k. The buyer of a copyrighted book reproduced it in its
9- Removing restrictions on what and how apps content can entirety and shared it with his classmate for their private
be stored and used or "jail breaking’! study.
Circumvention of technological measure does not amount to There is infringement of copyright. The person who photocopied
the book violated the economic right of reproduction of the work of
copyright infringement but is only an aggravating circumstance the copyright owner. The law excludes books from the right granted
which may cause the imposition of the maximum penalty or doubling by law to an individual allowing a single-copy-private-reproduction
the award of damages.432 of a published work.435
h. Receipt of rentals by the owner of a mall or lessor of I. Commercial reproduction of published articles in a
specialized format for the use of the blind, visually and
an establishment where the lessee commits acts of
reading-impaired persons indicating the copyright owner
infringement. and date of publication.
The owner of the mall or lessor of the establishment is Hable There is copyright infringement. The reproduction of published
for infringement if he has been given notice of infringing activity but articles in a specialized format for the use of the blind, visually and
did not stop the infringement. Benefiting from infringing activity is reading-impaired persons is a limitation on copyright only if the
distribution of the copies is done on a non-profit basis.438
a form of copyright infringement.433
m. Cover song or new performance or recording of a
i. The composer of a song assigned his right to the contemporary or previously recorded, commercially
composition. Fifty years after the composer's death, the released song or popular song by someone other than
assignee changed the tempo from ballad to rock and the original artist without modification on the lyrics and
melody, then uploading it on the YouTube.
claimed to be the owner of the musical composition.
There is no infringement of copyright because cover song
By claiming to be the owner of the original composition, the assumes that the song, as a copyrightable work, has been lawfully
assignee violated the moral right of attribution of the original made accessible to the public, provided that the singer, (other than
composer and therefore infringed copyright. The right of attribution the original artist), did not receive any royalty from YouTube or did
of an author shall last during his lifetime and in perpetuity after his not gain any profit for the cover song.437
death.434
’“Section 187.1, IPC, as amended.
’“Section 184.1(1), IPC, as amended.
’37Based on Section 184.1(a), IPC, as amended.
“'Section 174, IPC, as amended.
“"Based on Section 216.1, IPC, as amended.
“Section 216, IPC, as amended.
“Section 198, IPC, as amended. J9JC9B0M
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VII. INTELLECTUAL PROPERTY CODE 356
o. Reprinting by a private library of a book that has gone out No copyright infringement. The term of broadcast is only 20
years from the date the broadcast took place.442
of stock.
t. Reproduction of the photograph by the owner without
There is copyright infringement because only a library allowed the consent of the person, subject of the photograph.
by law to receive copies of a printed work is entitled to reproduce
No copyright infringement. The photographer, not the subject,
copy of a published work which is necessary for the collection of has the copyright to the photograph and as such, enjoys the economic
the library but which out of stock.-138 A private library has no such right of reproduction.
privilege. u. X's painting of Madonna and Child was used by her
mother to print some personalized gift wrapper. As
P- Legislative bill pirated by another congressman and
part of her mother's efforts to raise funds for Bantay
introduced as his own. Bata, the mother of X sold the wrapper to friends. Y,
an entrepreneur, liked the painting in the wrapper and
There is no copyright infringement. Copyright does not subsist made many copies and sold the same through National
on works of government.-139 A legislative bill is a work of government. Bookstore.
q- Reproduction of a collection of classical books on There is infringement because artistic works are protected
literature (those which have been published more than 50 from the moment of creation.
years after death of the authors) by someone other than
the person who made the compilation and arrangement.
There is copyright infringement. While the classical books have
become public dominion in view of the expiration of the term of the
copyright, the collection of the classical books, as a derivative work,
is independently copyrighted from the original works by reason of
the selection or coordination or arrangement of its contents.410
r. Reproducing back-up copies or adaptation of a licensed
computer program for archival purposes.
There is copyright infringement. The law only allows
reproduction of one (1) back-up copy of a computer program for
archival purposes■1■1, except when reproduction of more than one
adaptation is allowed by the terms of the license agreement with
the copyright owner.
442Section 215.2, IPC, as amended.
“Section 188.2, IPC, as amended.
“’Based on Section 176, IPC, as amended.
“’Based on Section 173.1(b), IPC, as amended.
“'Based on Section 189.1(b), IPC, as amended. J9JC9B0M
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