JOCEL V.

BOBILA
1.4B Copyright & Intellectual Property Law
JMCFI
April 15, 2024

MIDTERM EXAMINATION
Copyright and Intellectual Property Law
Second Semester – Academic Year 2023 – 2024

I.

Identify which office or court has jurisdiction over the following cases:

(a) Exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs,
the Director of Patents, the Director of Trademarks, and the Director of the Documentation,
Information and Technology Transfer Bureau. (2 pts.)
Ans.
The Director General has the original jurisdiction to resolve disputes relating to the terms of a license
involving the author’s right to public performance or other communication of his work according to
Part 1, Section VII (c) of R.A.8293 .

(b) Original jurisdiction to resolve disputes relating to the terms of a license involving the
author’s right to public performance or other communication of his work. (2 pts.)

Ans.
The Director General has still the jurisdiction in terms of license involving author’s right to public
performance or other communication of his work, however, decisions of the Director General in these
cases shall be appealable to the Secretary of Trade and Industry.

(c) Original jurisdiction in administrative complaints for violations of laws involving intellectual
property rights: Provided, That its jurisdiction is limited to complaints where the total damages
claimed are not less than Two hundred thousand pesos (P200,000). (2. pts.)

Ans.

The Bureau of Legal Affairs has the power to hold and punish for contempt all those who disregard orders
or writs issued in the course of the proceedings and after hearing impose administrative penalties.
(d) Quasi-judicial jurisdiction in the settlement of disputes between parties to a technology
transfer arrangement arising from technology transfer payments, including the fixing of
appropriate amount or rate of royalty. (2 pts.)

Ans.

Under the Revised Rules & Regulations on Settlement of Disputes Involving Techology Transfer
Payments and the Terms of a License Involving the Author's Right to Public Performance or Other
Communication of His Work, the Director of the Documentation, Information and Technology
Transfer Bureau has the jurisdiction of the ruling.

(e) Appellate jurisdiction over decisions of the Director General in the exercise of his appellate
jurisdiction in respect of the decisions of the Director of Patents, and the Director of Trademarks.
(2 pts.)

Ans.

In compliance with the Rules of Court, the decisions made by the Director General in the exercise
of his appellate jurisdiction regarding the decisions made by the Directors of Trademarks and
Patents may be appealed to the Court of Appeals.

II.

The "Yakult drink" bottle possesses a distinctive shape. Yakult Honsha Co., Ltd. submitted a
trademark application seeking registration for a three-dimensional (3D) mark representing the
bottle shape of Yakult drinks, devoid of any accompanying words or distinguishing features. Is it
permissible for the 3D depiction of the bottle to be registered as a trademark? (5 pts.)

Ans.

For a three-dimensional trademark to be protectable, it needs to be distinctive. It is not enough

that the shape or form is completely new, it needs to depart significantly from the norms or
customs of the sector so the goods can be identified just by their shape. The mere fact that the
shape is new and nobody else uses that shape is not enough. Small variations from shapes
normally used for similar products do not make the shape distinctive and protectable as a
trademark.

III.

StyleFirst, a well-known fashion retailer, has been using a distinctive store layout and color
scheme for its boutiques nationwide, known for their elegant black and gold theme. Recently,
TrendyWear, a new entrant in the fashion retail market, opened several stores with a strikingly
similar black and gold color scheme and layout. While TrendyWear does not sell counterfeit
StyleFirst products,

their store presentation closely mimics that of StyleFirst, leading to confusion among some
consumers.

StyleFirst is considering legal action against TrendyWear for unfair competition.

a. Identify and explain the elements of unfair competition that StyleFirst needs to establish
against TrendyWear. (2.5 pts.)

Ans. The essential elements of an action for unfair competition are: (1) confusing similarity in
the general appearance of the goods, and (2) intent to deceive the public and defraud a
competitor. The general appearance of StyleFirst (black and gold theme) is present in
TrendyWear. The offender TrendyWear gives his goods the general appearance of the
goods of another manufacturer or dealer.

b. Discuss how the similarity in store layout and color scheme could constitute "passing off"
in the context of unfair competition. (2.5 pts.)

Ans. Passing off happens when someone deliberately or unintentionally passes off their goods
or services as those belonging to another party. 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, for those of the one having
established such good will or who shall commit any acts calculated to produce said results
is guilty of unfair competition.

c. Evaluate the relevance of consumer confusion in this case and how it affects StyleFirst's
claim against TrendyWear. (2.5 pts.)

Ans. The similarly confusing layout and color scheme may result to misrepresentation where
the acts of TrendyWear can cause confusion and deceived or misled the customers into
believing that their goods and services are of complainant StyleFirst. As such
misrepresentation might damage or is likely to damage goodwill or cause actual or
foreseeable financial or reputational loss.

d. Consider potential defenses TrendyWear might raise in response to the unfair competition
claim and how StyleFirst might effectively counter these defenses. (2.5 pts.)

Ans.
Strong defenses of StyleFirst are:
-it has been already well-known fashion retailer
- it has boutiques nationwide
- and is already known for their elegant black and gold theme.
It has been using the trademark for quite sometime and has gained nationwide reputation
compared to the new entrant TrendyWear.
 IV.

Explain the following doctrines/rules in relation to trademark registration:

(a) First-to-file Rule (5pts.)

The first to file rule, which grants the right to claim intellectual property to the first person
to file a patent, also applies to patent applications.

(b) Telle Quelle Rule (5pts.)

Provides that a country must accept for filing and protect a trademark duly registered in the
foreign applicant’s country of origin as to the form of the trademark as registered in the
applicant’s country of origin.

(c) Idem Sonans Rule (5pts.)

Idem Sonans Rule is a legal doctrine whereby a person’s identity is presumed known despite
the misspelling of his/her name. The presumption lies in the similarity between phonology or
sounds of the current name and the name as written.

V.

Natrapharm has lodged a formal complaint against Zuneca, alleging that Zuneca's product
designation "ZYNAPS" bears significant resemblance to Natrapharm's registered trademark,
"ZYNAPSE." The trademark “ZYNAPSE” was registered with the IPO on September 24, 2007.
Zuneca contends that it has been marketing its medical drug under the "ZYNAPS" label since
2004. Moreover, Zuneca argues that Natrapharm could not have been oblivious to the existence
of "ZYNAPS" prior to registering "ZYNAPSE," citing shared promotional activities in
publications and conventions. Finally, Zuneca asserts its status as the original user of the
"ZYNAPS" mark, thereby claiming ownership rights over it. Who is the rightful owner of the
trademark? (10 pts.)

Ans.

The Supreme Court upheld the RTC's ruling that respondent Natrapharm is the legitimate owner
of the "ZYNAPSE" mark, but it also decided that petitioners, who had previously used the mark
in good faith, could keep using it. The goal of the legislation is to do away with the notion that a
mark's ownership is acquired through use. The Supreme Court emphasized the importance of
registration and use in maintaining ownership of a trademark.

In a trademark infringement case, the Supreme Court ruled in favor of Natrapharm, affirming
their ownership of the "ZYNAPSE" mark and holding Zuneca liable for infringement,
emphasizing the importance of registration and use in maintaining ownership of a trademark.
 VI.

PharmCo, a well-established pharmaceutical company, has been using the trademark

"MediCure" for its line of over-the-counter pain relievers since 2000 and has duly registered the
trademark with the Intellectual Property Office. In 2023, PharmSol, a competitor, launched a
new line of dietary supplements under the name "Medi-Cure," which they also registered.
PharmCo learned about this and observed that the packaging of PharmSol's products closely
resembles its own, potentially causing confusion among consumers.

PharmCo decides to file a case against PharmSol for trademark infringement and unfair
competition. You are the counsel for PharmCo.

a. Discuss the elements necessary to establish a case of trademark infringement against

PharmSol. (2.5 pts.)

b. Explain whether PharmCo can claim infringement based on the facts presented, especially
considering the slight variation in the trademark ("MediCure" vs. "Medi-Cure"). (2.5 pts.)

c. Outline the elements of unfair competition and assess whether PharmCo can also pursue a
case of unfair competition against PharmSol. (2.5 pts.)

d. Given the facts, how significant is the similarity in packaging in determining the likelihood
of confusion, and what defense might PharmSol raise to counter the claims of PharmCo?
(2.5 pts.)

VII.

FashionForward, a renowned fashion designer, has a registered trademark for its logo, which
includes a unique stylized "FF" design used on all its clothing. This trademark is well-recognized
in the fashion industry. Recently, FastFashions, a new clothing company, started using a logo
with a very similar stylized "FF" on its apparel, which has led to confusion among consumers
and retailers alike.

FashionForward is contemplating legal action against FastFashions for trademark infringement.

a. Explain the "Dominancy Test" and its relevance in determining trademark

infringement. (2.5 pts.)

Ans. Dominancy test focuses on the similarity of the main, prevalent, or essential features
 of the competing trademarks that might cause confusion. This upholds the principle
that the protection of trademarks extends to where the use of a similar mark is likely
to lead to confusion or deceive the public. In line with the purpose of trademark
protection, the test will prevent confusion or deception among consumers and to
safeguard the goodwill and reputation of businesses. It also emphasizes the
importance of considering the distinct differences in appearance, spelling, sound,
meaning, and style, as well as the difference in the goods covered by the marks.

b. Analyze whether FashionForward's trademark rights are likely to be upheld when

applying the "Dominancy Test" to the logos in question. (2.5 pts.)

Yes. . If the competing trademark contains the main, essential or dominant features of
another, and confusion or deception is likely to result, infringement takes place. Since
Dominancy Test focuses on similarity of the prevalent features of the competing
trademarks which might cause confusion or deception, and thus infringement
Duplication or imitation is not necessary; nor is it necessary that the infringing label
should suggest an effort to imitate.

b. Discuss the potential impact of consumer confusion on FashionForward's

infringement claim against FastFashions. (2.5 pts.)

FastFashions can cause confusion and deceived or misled the customers into
believing that their goods and services and misrepresentation might damage or is
likely to damage goodwill or cause actual or foreseeable financial or reputational loss.

c. Assuming FastFashions argues that the overall design and aesthetic of their logo are
different despite the similar "FF," how should FashionForward respond to assert their
rights under the "Dominancy Test"? (2.5 pts.)

Ans. In the Dominancy Test, there is no doubt that “FastFashions” FF is confusingly

similar to “FashionForward” FF. The marks are conspicuous and noticeable, and
there is no likelihood of confusion between the goods covered by the marks.

VIII.

TechGiant, a leading electronics manufacturer, has a registered trademark for its series of
smartphones under the name "SmartEcho." This trademark encompasses not only the name but
also a distinctive logo and color scheme used in the product's branding. NewTech, a competitor,
recently launched a series of tablets named "SmartEchoPro," featuring a logo and color scheme
that, while not identical, bear resemblances to those of TechGiant's.

TechGiant is considering suing NewTech for trademark infringement.

a. Define the "Holistic Test" and explain its importance in evaluating trademark
infringement. (2.5 pts.)
 Ans. The holistic test considers the mark as a whole in determining confusing similarity
among the trademarks. Under the holistic test, the marks are considered as a whole. An
essential factor in determining whether two trademarks are confusingly similar is whether
or not there is a general similarity in their appearance. This requires a comparison of the
marks in their entirety as they appear in their respective labels and in relation to the goods
to which they are attached since the discerning eye of the observer must focus not only on
the predominant words, but also on the other features appearing on the labels. Factors
such as sound; appearance; form, style, shape, size or format; color; ideas connoted by
the marks; the meaning, spelling, and pronunciation of words used; and the setting in
which the words appear’ may be considered.

b. Assess the likelihood of TechGiant successfully proving infringement by NewTech

using the "Holistic Test." (2.5 pts.)

c. Evaluate the role of the overall look and feel of the products' branding in influencing
consumer perception and potential confusion. (2.5 pts.)

d. If NewTech argues that their product is in a different category (tablets vs.

smartphones) and that the similarities are superficial, how should TechGiant counter
this argument under the "Holistic Test"? (2.5 pts.)

IX.

Suppose Channel One Television Network aired a new game show called "Celebrity Match,"
which garnered immediate attention for its innovative format where celebrities paired with
regular contestants in a series of challenges. SuperTV, a rival network, noticed striking
similarities between "Celebrity Match" and their own defunct show "Star Pair-Up" which aired a
decade ago and was a pioneer in the celebrity-regular contestant pairing concept.

SuperTV claims that Channel One's "Celebrity Match" infringes upon their copyright in the
format of "Star Pair-Up."

a. Is the format of a television game show, specifically the concept of pairing celebrities
with regular contestants, copyrightable? (2.5 pts.)

b. Assess whether the production aspects of "Star Pair-Up" could be protected under
copyright law. (2.5 pts.)

c. Discuss what elements, if any, of a television show can be protected by copyright and
how this applies to "Celebrity Match." (2.5 pts.)

d. What legal strategies could SuperTV pursue if any aspect of "Celebrity Match"
potentially violates their rights? (2.5 pts.)
 X.

Imagine you are a lawyer approached by EduGov, a government-owned corporation in the

Philippines that specializes in creating educational materials for public schools. EduGov has
developed a series of textbooks and is planning to publish and distribute them to schools
nationwide. A private publishing company, LearnMax Inc., is interested in using the materials
created by EduGov for a commercial online learning platform they are developing.

EduGov seeks your advice on the copyright implications of their textbooks and the potential
partnership with LearnMax Inc.

a. Determine whether EduGov's textbooks can be copyrighted under the Philippine

laws. (2.5 pts.)

b. Advise EduGov on the legal requirements for LearnMax Inc. to exploit the textbooks
for profit. (2.5 pts.)

c. Discuss any exceptions to the general rule regarding the exploitation of government
works for profit. (2.5 pts.)

d. Should EduGov decide to allow LearnMax Inc. to use the textbooks, what conditions
might they impose under the law? (2.5 pts.)

*** Nothing Follows***