Professional Documents
Culture Documents
Intellectual Property Rights
Intellectual Property Rights
Intellectual Property Rights
Assignment of Inventions
An assignment may be of the entire right, title or
interest in and to the patent and the invention covered
thereby, or of an undivided share of the
C. TRADEMARKS
Spectrum of Distinctiveness of Trademark
(Zantarain’s Inc. v. Old Grove Smokehouse, 698
Modern authorities on trademark law view
F.2d 786, 1983) (from weakest to strongest)
trademarks as performing three distinct functions:
1. Generic – refers to a particular genus or class of
(1) they indicate origin or ownership of the articles to
which an individual article or service is a
which they are attached;
member (e.g. escalator, cellophane, etc.)
(2) they guarantee that those articles
a. It can never attain trademark protection.
come up to a certain standard of quality; and
b. If a registered trademark becomes
(3) they advertise the articles they symbolize.
generic as to a particular product or
(Mirpuri v. Court of Appeals, G.R. No. 114508,
service, the mark’s registration is
1999)
subject to cancellation.
2. Descriptive – identifies a characteristic or
1. DEFINITIONS OF MARKS, COLLECTIVE quality of an article or service such as its color,
MARKS, AND TRADE NAMES odor, function, dimensions, or ingredients
Mark
General Rule: It is not ordinarily protectable as
Any visible sign capable of distinguishing the goods
a trademark because, like a generic term, it
(trademark) or services (service mark) of an
belongs to the public domain. (Ong Ai Gui v.
enterprise and shall include a stamped or marked
Director of Patents, G.R. No. L-6235, 1955)
container of goods. (Sec. 121.1, IP Code)
Exception: When the doctrine of secondary
Collective Mark
meaning applies in such a way that it has
Any visible sign designated as such in the application
acquired a secondary meaning in the minds of
for registration and capable of distinguishing the
the consumers. (Sec. 123.2)
origin or any other common characteristic, including
the quality of goods or services of different
3. Suggestive – requires the consumer to exercise
enterprises which use the sign under the control of the
the imagination in order to draw a conclusion as
registered owner of the collective mark. (Sec.
to the nature of the goods or services
121.2, IP Code)
4. Arbitrary or Fanciful – bear no relationship to
the products or services to which they are
Trade Name
applied; protectable without proof of secondary
Any name or designation identifying or
meaning (e.g. Adidas, Rolex, etc.)
distinguishing an enterprise (Sec. 121.3, IP Code);
If the competing The discerning eye of The determining point in trademark infringement is a
trademark contains the the observer must focus likelihood of confusion. The fact that CEEGEEFER
main, essential, and not only on the is idem sonans for CHERIFER is enough to violate
dominant predominant words but respondent's right to protect its trademark,
features of another, and also on the other CHERIFER. (Latest SC decision is Prosel v.
confusion or deception features appearing on Tynor, G.R. No. 248021, 2020)
is likely to result, both marks in order that
infringement occurs. the observer may draw
7. WELL-KNOWN MARKS
Exact his conclusion whether
duplication or one is confusingly The countries of the Union undertake, ex officio if
imitation is not similar to the other. their legislation so permits, or at the request of an
required. interested party, to refuse or to cancel the registration,
and to prohibit the use, of a trademark which
The question is whether constitutes a reproduction, an imitation, or a
the use of the marks translation, liable to create confusion, of a mark
involved is likely to considered by the competent authority of the country
cause confusion or of registration or use to be well known in that
mistake country as being
in the mind of the
already the mark of a person entitled to the benefits
of Well-Known Marks cited with
of this Convention and used for identical or similar
approval in Sehwani v. In-N-Out)
goods. These provisions shall also apply when the
essential part of the mark constitutes a reproduction
Criteria for determining whether a mark is well-
of any such well- known mark or an imitation liable
known:
to create confusion therewith. (Art. 6 bis, Paris
1. Duration, extent and geographical area of
Convention)
any use of the mark, in particular, the
duration, extent and geographical area of
Note: The essential requirement under this Article is
any promotion of the mark, including
that the trademark to be protected must be “well-
advertising or publicity and the presentation,
known” in the country where protection is sought.
at fairs or exhibitions, of the goods and/or
The power to determine whether a trademark is well-
services to which the mark applies;
known lies in the “competent authority of the country
2. Market share, in the Philippines and in other
of registration or use.” This competent authority
countries, of the goods and/or services to
would be either the registering authority, if it has the
which the mark applies;
power to decide this, or the courts of the country in
3. Degree of the inherent or acquired
question if the issue comes before a court. (Sehwani,
distinction of the mark;
Inc. v. In- N-Out Burger, Inc., G.R. No. 171053,
4. Quality-image or reputation acquired by the
2007)
mark;
5. Extent to which the mark has been registered
The question of whether or not respondent's
in the world;
trademarks are considered “well-known” is factual in
6. Exclusivity of registration attained by the
nature, involving as it does the appreciation of
mark in the world;
evidence adduced before the BLA-IPO. The settled
7. Extent to which the mark has been used in
rule is that the factual findings of quasi-judicial
the world;
agencies, like the IPO, which have acquired expertise
8. Exclusivity of use attained by the mark in
because their jurisdiction is confined to specific
the world;
matters, are generally accorded not only respect, but,
9. Commercial value attributed to the mark in
at times, even finality if such findings are supported
the world;
by substantial evidence. (Sehwani, Inc. v. In-N-Out
10. Record of successful protection of the rights
Burger, Inc., G.R. No. 171053, 2007)
in the mark;
11. Outcome of litigations dealing with the issue
Factors Which Shall Not be Required in
of whether the mark is a well-known mark;
Determining Whether a Mark is a Well-known
and
Mark:
12. Presence or absence of identical or similar
1. that the mark has been used in, or that the
marks validly registered for or used on
mark has been registered, or that an
identical or similar goods or services and
application for registration of the mark has
owned by persons other than the person
been filed in or in respect of the Member
claiming that his mark is a well-known
State;
mark.
2. that the mark is well known in, or that the
mark has been registered, or that an (Rule 102, Rules and Regulations On
application for registration of the mark has Trademarks, Servicemarks, Tradenames
been filed in or in respect of, any jurisdiction and Marked or Stamped Containers)
other than the Member State;
3. that the mark is well known by the public at
large in the Member State. (Part I, Art. 2.3,
1999 Joint Recommendation
Concerning Provisions on the Protection
8. RIGHTS CONFERRED BY
9. USE BY THIRD PARTIES OF NAMES,
REGISTRATION
ETC. SIMILAR TO REGISTERED MARK
The owner of a registered mark shall have the
Registration of the mark shall not confer on the
exclusive right:
registered owner the right to preclude third parties
1. to prevent all third parties not having the
from using bona fide their names, addresses,
owner’s consent
pseudonyms, a geographical name, or exact
2. from using in the course of trade identical or
indications concerning the kind, quality, quantity,
similar signs or containers for goods or
destination, value, place of origin, or time of
services which are identical or similar to
production or of supply, of their goods or services:
those in respect of which the trademark is
Provided, that such use
registered
1. Is confined to the purposes of mere
3. where such use would result in a likelihood
identification or information, and
of confusion.
2. Cannot mislead the public as to the source
of the goods or services. (Sec. 148, IP
Note: In case of the use of an identical sign for
Code)
identical goods or services, a likelihood of confusion
shall be presumed. (Sec. 147.1, IP Code)
10. INFRINGEMENT AND REMEDIES
The exclusive right of the owner of a well-known
A. Trademark Infringement
mark which is registered in the Philippines, shall
extend to goods and services which are not similar to A person shall be liable for trademark infringement
those in respect of which the mark is registered, if, without the consent of the owner of the registered
Provided: mark, he:
1. That the use of that mark in relation to those i. Uses in commerce any reproduction or
goods or services would indicate a colorable imitation of a registered mark
connection between those goods or services or the same container or a dominant
and the owner of the registered mark; and feature thereof in connection with the
2. That the interests of the owner of the sale, offering for sale, distribution,
registered mark are likely to be damaged by advertising of any goods or services
such use. (Sec. 147.2, IP Code) which is likely to cause confusion, or to
cause mistake, or to deceive;
The ownership of a trademark or tradename is a Note: This includes other preparatory steps
property right that the owner is entitled to protect. necessary to carry out the sale of any goods
However, when a trademark is used by a party for a or services.
product in which the other party does not deal, the
use of the same trademark on the latter's product ii. Reproduces or colorably imitates a
cannot be validly objected to. (Canon Kabushiki registered mark or a dominant feature
Kaisha v. Court of Appeals, G.R. No. 120900, thereof and applies such reproduction or
2000) colorable imitation to signs, packages,
or advertisements intended to be used in
commerce upon or in connection with
the sale, offering for sale, distribution,
or advertising of goods or services
which likely to cause confusion, or to
cause mistake, or to deceive.
Note: It is immaterial that there was no actual sale of
The general impression of the ordinary purchaser
goods or services using the infringing material as
buying under the normally prevalent conditions in
long as the acts mentioned were actually committed.
trade and giving the attention such purchasers usually
(Sec. 155, IP Code)
give in buying that class of goods, is the touchstone.
(Del Monte Corp v. Court of Appeals, G.R. No.
The “likelihood of confusion” is the gravamen of
78325, 1990)
trademark infringement. But likelihood of confusion
is a relative concept, the particular, and sometimes
Right of Foreign Corporation to Sue in
peculiar, circumstances of each case being
Trademark or Service Mark Enforcement
determinative of its existence. Thus, in trademark
Action
infringement cases, more than in other kinds of
Any foreign national or juridical person who meets
litigation, precedents must be evaluated in the light of
the requirements of Section 3 of the IP Code and does
each particular case. (Philip Morris, Inc. v. Fortune
not engage in business in the Philippines may bring a
Tobacco Corp., G.R. No. 158589, 2006)
civil or administrative action hereunder for
opposition, cancellation, infringement, unfair
To establish trademark infringement, the following
competition, or false designation of origin and false
elements must be shown:
description, whether or not it is licensed to do
i. The validity of plaintiff’s mark;
business in the Philippines under existing laws.
ii. The plaintiff’s ownership of the mark;
(Sec. 160, IP Code)
and
iii. The use of the mark or its colorable
Limitations to Actions for Infringement
imitation by the alleged infringer results
1. A registered mark shall have no effect
in “likelihood of confusion.”
against any person who, in good faith,
(McDonald's Corp. v. L.C. Big Mak
before the filing date or the priority date,
Burger, Inc., G.R. No. 143993,
was using the mark for the purposes of his
2004)
business or enterprise.
The phrase “colorable imitation” denotes such a
Note: Such right may only be transferred or
“close or ingenious imitation as to be calculated to
assigned together with his enterprise or
deceive ordinary persons, or such a resemblance to
business or with that part of his enterprise or
the original as to deceive an ordinary purchaser
business in which the mark is used.
giving such attention as a purchaser usually gives,
and to cause him to purchase the one supposing it to
Note: cf. (Zuneca v. Natrapharm, G.R.
be the other”. (Etepha, A.G. v. Director of
No. 211850, 2020 - wherein the SC held
Patents, G.R. No. L- 20635, 1966)
that the first to file rule shall prevail
against a user of a mark in good faith.)
The use of an identical or colorable imitation of a
registered trademark by a person for the same goods
2. Where an infringer who is engaged solely
or services or closely related goods or services of
in the business of printing the mark or
another party constitutes infringement. It is a form of
other infringing materials for others is an
unfair competition because there is an attempt to get a
innocent infringer, the owner of the right
free ride on the reputation and selling power of
infringed shall be entitled as against such
another manufacturer by passing of one’s goods as
infringer only to an injunction against future
identical or produced by the same manufacturer as
printing.
those carrying the other mark (brand).
3. Where the infringement complained of is
(Commissioner of Internal Revenue v. San
contained in or is part of paid
Miguel Corp., G.R. Nos. 205045 & 205723,
advertisement in a periodical or in an
2017)
electronic communication, the remedies of
the owner of the right infringed as
against the publisher or distributor of
C. Damages; Requirement of Notice
periodical or electronic communication shall
be limited to an injunction against the In any suit for infringement, the owner of the
presentation of such advertising matter in registered mark shall not be entitled to recover profits
future issues. or damages UNLESS the acts have been committed
with knowledge that such imitation is likely to cause
Note: This shall apply only to innocent confusion, or to cause mistake, or to deceive. Such
infringers. knowledge is presumed if:
1. The registrant gives notice that his mark is
4. There shall be no infringement of registered by displaying with the mark the
trademarks or tradenames of imported or words “Registered Mark” or the letter R
sold drugs and medicines as well as within a circle, or
imported or sold off-patent drugs and 2. The defendant had otherwise actual notice of
medicines PROVIDED, the marks appearing the registration. (Sec. 158, IP Code)
thereon have been registered marks that
have not been tampered or unlawfully D. Penalties
modified.
Independent of the civil and administrative sanctions
B. Damages imposed by law, a criminal penalty of imprisonment
from 2 to 5 years and a fine ranging from P50,000 to
The owner of a registered mark may recover damages P200,000 shall be imposed on any person who is
from any person who infringes his rights. The found guilty of committing any of the acts of
measure of the damages suffered shall be either: trademark infringement, unfair competition, or false
1. The reasonable profit which the description or representation. (Sec. 170, IP Code)
complaining party would have made had
the defendant not infringed his rights, or Power of Court to Order Infringing Material
2. The profit which the defendant actually Destroyed
made out of the infringement. In any action involving a violation of a right of the
owner of the registered mark, the court may order that
If the measure of damages cannot be readily goods found to be infringing be disposed of outside
ascertained with reasonable certainty, the court may the channels of commerce in such a manner as to
award as damages a reasonable percentage based avoid any harm caused to the right holder or
upon the amount of gross sales of the defendant or destroyed without compensation of any sort. (Sec.
the value of the services in connection with which the 157.1, IP Code)
mark or trade name was used in the infringement of
the rights of the complaining party. (Sec. 156.1, IP
11. UNFAIR COMPETITION
Code)
A person who has identified in the mind of the public
Note: Where there was actual intent to mislead the the goods he manufactures or deals in, his business or
public or to defraud the complainant, the court may services from those of others, whether or not a
double the amount of damages to be awarded. (Sec. registered mark is employed, has a property right in
156.3, IP Code) the goodwill of the said goods, business or services
so identified, which will be protected in the same
On application of the complainant, the court may manner as other property rights. (Sec. 168.1, IP
impound during the pendency of the action, sales Code)
invoices and other documents evidencing sales.
(Sec. 156.2, IP Code) Any person who shall employ deception or any other
means contrary to good faith by which he shall pass
off the goods manufactured by him or
in which he deals, or his business, or services for
the effect is to pass off on the public the goods of one
those of the one having established such goodwill, or
man as the goods of another. It is not necessary that
who shall commit any acts calculated to produce said
any particular means should be used to this end.
result, shall be guilty of unfair competition. (Sec.
(Mighty Corp. v. E. & J. Gallo Winery, G.R. No.
168.2, IP Code)
154342, 2004)
Any conduct the end and probable effect of which is
Trademark Unfair
to deceive the public or pass off the goods or business
Infringement Competition
of a person as that for another constitutes actionable
Passing off of
unfair competition. (Alhambra Cigar vs. Mojica, Unauthorized
one’s goods as
G.R. No. L-8937, 1914) Essence use of a
those of
trademark
another
Essentially, what the law punishes is the act of giving
Fraudulent
one’s goods the general appearance of the goods of Unnecessary Essential
Intent
another, which would likely mislead the buyer into
Prior Prerequisite
believing that such goods belong to the latter. Unnecessary
Registration to the action
(Manuel C. Espiritu et. al. v. Petron Corp. et. al.,
G.R. No. 170891, 2009)
12. REGISTRATION OF MARKS UNDER
The “true test” of unfair competition is whether the THE MADRID PROTOCOL
acts of the defendant have the intent of deceiving or
The Madrid Protocol provides a cost-effective and
are calculated to deceive the ordinary buyer making
efficient way for trademark holders to ensure
his purchases under the ordinary conditions of the
protection for their marks in multiple countries
particular trade to which the controversy relates. One
through the filing of one application with a single
of the essential requisites in an action to restrain
office, in one language, with one set of fees, in one
unfair competition is proof of fraud; the intent to
currency. The Philippines acceded to the Madrid
deceive, actual or probable must be shown before the
Protocol with effect on July 25, 2012.
right to recover can exist. (Superior Commercial
Enterprises v. Kunnan Enterprises Ltd., et. al., A. Coverage
G.R. No. 169974, 2010)
An international application may be filed only by a
Trademark Infringement vs. Unfair natural person or a legal entity having an industrial or
Competition commercial establishment in, or being domiciled in,
The law on unfair competition is broader and more or a national of, the Philippines.
inclusive than the law on trademark infringement.
Trademark infringement is more limited, but it An international mark registered under the Madrid
recognizes a more exclusive right derived from the System can only be protected within the territories of
trademark adoption and registration by the person State parties to the Madrid Union.
whose goods or business is first associated with it.
The law on trademarks is a specialized subject The protection resulting from any international
distinct from the law on unfair competition, although registration effected under the Madrid Protocol
the two subjects are entwined with each other and are before the date of entry into force of the Philippines
dealt with together in the IP Code. cannot be extended to it. International registrations
with dates prior to July 25, 2012 are not allowed.
Hence, even if one fails to establish his exclusive
property right to a trademark, he may still obtain B. Rights Conferred
relief on the ground of his competitor's unfairness or
fraud. Conduct constitutes unfair competition if From the date of the international registration, the
protection of the mark in each of the designated
ATENEO CENTRAL
BAR OPERATIONS 2020/21 COMMERCIAL LAW
Contracting Parties is the same as if the mark had Minimum requirements to submit an
been the subject of an application for registration international application
filed directly with the Office of that Contracting 1. Name, address, and contact details of the
Party. applicant or the address and contact details of the
applicant’s representative, if any;
An international registration is, therefore, equivalent 2. The Designated Contracting Parties;
to a bundle of national registrations. 3. Reproduction of the mark; and
4. Indication of the goods and services for which
Limitations: registration of the mark is sought.
Although an international registration is a single 5. Payment of the following fees:
registration: a. Basic fee;
1. Protection may be refused by some of the b. Complementary fee in respect of each
designated Contracting Parties, or the designated Contracting Party for which
protection may be limited or renounced with no individual fee is payable;
respect to only some of the designated c. Supplementary fee in respect of each
Contracting Parties. class of goods and services beyond the
2. It may also be invalidated with respect to third
one or more of the designated Contracting
Parties. Note: No supplementary fee is payable
3. Any action for infringement of an where all the designations are ones in
international registration must be brought respect of which an individual fee has to be
separately in each of the Contracting Parties paid.
concerned.
D. Term of Protection
C. Requirements for Registration
An international registration is effective for 10 years.
A mark may be the subject of an international It may be renewed for further periods of 10 years on
application only if it has already been registered, or if payment of the prescribed fees.
its registration has been applied for in the IPOPHL to
be able to file an international application. This is The international registration may be renewed in
called the Basic Registration or Basic Application, as respect of all the designated Contracting Parties or in
the case may be. respect of only some of them.
An international application must be presented to the Note: It may not be renewed in respect of only some
International Bureau through the IPOPHL. An of the goods and services recorded in the
international application which is presented direct to International Register. If the holder wishes to remove
the International Bureau by the applicant will not be some of the goods and services from the international
considered as such and will be returned to the sender. registration, he must separately request cancellation
in respect of those goods and services.
The Philippines, as an office of origin, has designated
the English language for the filing of international The method of registration through the IPOPHL, as
applications and any communications for transmittal laid down by the IP Code, is distinct and separate
to the International Bureau through the IPOPHL. All from the method of registration through the WIPO, as
other documents required to be submitted directly to set in the Madrid Protocol. Comparing the two
the IPOPHL by the applicant must also be in English. methods of registration despite their being governed
by two separate systems of registration is thus
misplaced. (IPAP v. Sec. Ochoa, G.R. No.
204605, 2016)
D. COPYRIGHT
without copying that selection or arrangement from
another work), and that it display some minimal level
1. BASIC PRINCIPLES
of creativity. (Feist Publications, Inc.
Copyright is not primarily about providing the v. Rural Telephone Service Co., Inc., 499 U.S.
strongest possible protection for copyright owners so 340, 1991)
that they have the highest possible incentive to create
more works. The control given to copyright owners is Note: The requisite level of creativity is extremely
only a means to an end: the promotion of knowledge low; even a slight amount will suffice.
and learning. The goal of copyright is to promote
creativity and encourage creation of works. (ABS- Authorship
CBN Corp. v. Gozon, G.R. No. 195956, 2015) An author is “he to whom anything owes its origin;
originator; maker; one who completes a work of
The copyright for a work is acquired by an science or literature.” (Burrow-Giles Lithographic
intellectual creator from the moment of creation even Company v. Sarony, 111 U.S. 53, 1884)
in the absence of registration and deposit (Columbia
Pictures v. CA, G.R. No. 110318, 1996) Note: The author must be a natural person. (Sec.
171.1, IP Code)
The focus of copyright is the usefulness of the artistic
design, and not its marketability. The central inquiry 2. COPYRIGHTABLE WORKS
is whether the article is a work of art. (Ching v.
Salinas Sr., G.R. No. 161295, 2005) A. Original Literary or Artistic Works
In determining whether the use made of a work in 4. The effect of the use upon the potential
any particular case is fair use, the factors to be market for or value of the copyrighted work.
considered shall include: [PuCha-Nat-Su-E] (Sec. 185.1, IP Code)
1. The purpose and character of the use,
including whether such use is of a If a court finds that the use had or will have
commercial nature or is for non-profit a negative impact on the
educational purposes;
copyrighted work's market, then the use is
a. Selling, letting for hire, or by way of trade
deemed unfair. (ABS-CBN Corp. v. offering or exposing for sale, or hire, the
Gozon, G.R. No. 195956, 2015) article
b. Distributing the article for purpose of trade,
Note: That a work is unpublished shall not by itself or for any other purpose to an extent that
bar a finding of fair use if such finding is made upon will prejudice the rights of the copyright
consideration of all the above factors. (Sec. 185.2, owner in the work; or
IP Code) c. Trade exhibit of the article in public. (Sec.
217.3, IP Code)
Doctrine of Fair Use
Copyright Infringement
Fair use is a privilege to use the copyrighted material
Infringement of a copyright is a trespass on a private
in a reasonable manner without the consent of the domain owned and occupied by the owner of the
copyright owner or as copying the theme or ideas copyright, and, therefore, protected by law, and
rather than their expression. Fair use is an exception infringement of copyright, or piracy, which is a
to the copyright owner’s monopoly of the use of the synonymous term in this connection, consists in the
work to avoid stifling the very creativity which that doing by any person, without the consent of the
law is designed to foster. (ABS-CBN Corp. v. owner of the copyright, of anything the sole right to
Gozon, G.R. No. 195956, 2015) do which is conferred by statute on the owner of the
copyright. (Columbia Pictures, Inc. v. Court of
No question of fair or unfair use arises, however, if Appeals, G.R. No. 110318, 1996)
no copying is proved to begin with. This is in
Gravamen of Copyright Infringement
consonance with the principle that there can be no The gravamen of copyright infringement is not
infringement if there was no copying. It is only where merely the unauthorized “manufacturing” of
some form of copying has been shown that it intellectual works but rather the unauthorized
becomes necessary to determine whether it has been performance of any of the acts covered by Sec. 177
carried to an “unfair,” that is, illegal, extent. (economic rights). Hence, any person who performs
(Habana v. Robles, G.R. No. 131522, 1999) any of the acts thereunder without obtaining the
copyright owner’s prior consent renders himself
civilly and criminally liable for copyright
7. COPYRIGHT INFRINGEMENT
infringement. (NBI - Microsoft Corp. v. Hwang,
G.R. No. 147043, 2005)
Any person infringes a right protected under the IP
Code when one:
When Committed
a. Directly commits an infringement (direct
By any person who shall use original literary or
infringement);
artistic works, or derivative works, without the
b. Benefits from the infringing activity of
copyright owner’s consent in such a manner as to
another person who commits an
violate the foregoing copy and economic rights. For a
infringement if the person benefiting has
claim of copyright infringement to prevail, the
been given notice of the infringing activity
evidence on record must demonstrate:
and has the right and ability to control the
a. Ownership of a validly copyrighted material
activities of the other person (vicarious
by the complainant; and
infringement); or
b. Infringement of the copyright by the
c. With knowledge of infringing activity,
respondent. (Olano v. Eng Co, G.R. No.
induces, causes or materially contributes to
195835, 2016)
the infringing conduct of another (direct
infringement). (Sec. 216, IP Code)
The Intellectual Property Code is malum prohibitum
and prescribes a strict liability for copyright
Also includes the act of any person who at the time
infringement. Good faith, lack of knowledge of the
when copyright subsists in a work has in his
copyright, or lack of intent to infringe is not a defense
possession an article which he known, or ought to
against copyright infringement. (ABS-CBN Corp. v.
know, to be an infringing copy of the work for the
Gozon, G.R. No. 195956, 2015)
purpose of:
A. Remedies
infringing copies of the work even in the event of
acquittal in a criminal case.
Any person infringing a right protected under the IP
Code shall be liable:
Statutory Damages
a. To an injunction restraining such infringement.
The copyright owner may elect, at any time before
final judgment is rendered, to recover instead of
The court may also order the defendant to desist
actual damages and profits, an award of statutory
from an infringement to prevent the entry into
damages for all infringements involved in an action
the channels of commerce of imported goods that
in a sum equivalent to the filing fee of the
involve an infringement, immediately after
infringement action but not less than P50,000.00. In
customs clearance of such goods.
awarding statutory damages, the court may consider
the following factors:
b. To pay to the copyright proprietor or his assigns
1. The nature and purpose of the infringing act;
or heirs such actual damages, including legal
2. The flagrancy of the infringement;
costs and other expenses, as he may have
3. Whether the defendant acted in bad faith;
incurred due to the infringement as well as the
4. The need for deterrence;
profits the infringer may have made due to such
5. Any loss that the plaintiff has suffered or is
infringement.
likely to suffer by reason of the
infringement; and
Note: In proving profits, the plaintiff shall be
6. Any benefit shown to have accrued to the
required to prove sales only and the defendant
defendant by reason of the infringement.
shall be required to prove every element of cost
(Sec. 216.1, IP Code)
which he claims or, in lieu of actual damages and
profits, such damages which, to the court, shall B. Criminal Penalties
appear to be just and shall not be regarded as
penalty. The copyright owner can file a criminal, civil or
administrative action for copyright infringement.
The amount of damages to be awarded shall be
doubled against any person who: Where Filed
1. Circumvents effective technological
measures; or
2. Having reasonable grounds to know that it
will induce, enable, facilitate or conceal the
infringement, remove or alter any electronic
rights management information from a copy
of a work