Intellectual Property Code (IPC) Why is this important?

There was a bar question and it was so

There are 2 amendments: RA 9502, the Cheaper
Medicines Act and also, I hope you know that the IPC has
been amended by RA 10372.
We are still studying RA 8293, the old IPC, as amended by
other laws.
The first part has been amended by RA 10372.
vague. It was so vague. The question was: what is the scope
of intellectual property rights in the Philippines? And the
suggested answer is this Sec. 3.
Just take note of Section 3.
Definitions. There are many intellectual property rights. We
focus on copyright, trademark and patents. I just want to point
out TTA under Section 4.2, technology transfer arrangements.

We already looked at the definition of Intellectual Creation. Section 4.2. The term "technology transfer arrangements"
refers to contracts or agreements involving the transfer of
The first provision we are going to look at (we will no longer
systematic knowledge for the manufacture of a product, the
look at the definitions) is Section 3.
application of a process, or rendering of a service including
management contracts; and the transfer, assignment or
Section 3. International Conventions and Reciprocity. - Any
licensing of all forms of intellectual property rights, including
person who is a national or who is domiciled or has a real and
licensing of computer software except computer software
effective industrial establishment in a country which is a party
developed for mass market.
to any convention, treaty or agreement relating to intellectual
property rights or the repression of unfair competition, to
Agreements. Maybe the patent holder, the patentee or another
which the Philippines is also a party, or extends reciprocal
person or entity wherein the patentee will transfer systematic
rights to nationals of the Philippines by law, shall be entitled to
knowledge for the manufacture of a product. The patentee has
benefits to the extent necessary to give effect to any provision
the right to manufacture, distribute his invention. He can enter
of such convention, treaty or reciprocal law, in addition to the
into a TTA with another entity. O cge, ikaw ang mag-
rights to which any owner of an intellectual property right is
manufacture nung aking invention.
otherwise entitled by this Act. (n)
Or it may involve the application of a process, or rendering of
The Philippines is a signatory to several international treaties
a service including management contracts. And it may involve
and conventions on Intellectual Property such as the Burn (?)
transfer, assignment or licensing of all forms of intellectual
Convention in 1981, the Stockholm Act of 1967, the Paris Act
property rights including licensing of computer software except
of 1971, we also exchanged notes between the US and the
computer software.
Philippines and the Treaty of Paris on Intellectual Property.
Meron pang except. Nakakainis noh? Except computer
These are all conventions that the Philippines has adhered to
software developed for mass market. Whatever this is, I don’t
at certain points in time.
know. Just memorize that.
So, any person who is a national or who is domiciled or has a
Let’s go the organizational structure of the Intellectual
real and effective industrial establishment, it may be a factory,
Property Office (IPO).
in a country which is a party to ANY convention, treaty or
agreement relating to intellectual property rights, any of those Section 6. The Organizational Structure of the IPO. - 6.1. The
that we talked about earlier, or the repression of unfair Office shall be headed by a Director General who shall be
competition, TO WHICH the Philippines is also a party, or if assisted by two (2) Deputies Director General.
this country in which this person is a national, domiciliary or ha
a factory or establishment there, if this country extends What department is the IPO under? Department of Trade and
reciprocal rights to nationals of the Philippines by law with Industry (DTI.)
respect to intellectual property, this person shall be entitled to
benefits to the extent necessary to give effect to any provision The IPO under RA 8293 has only 6 bureaus. What was added
of such convention, treaty or reciprocal law. by RA 10372?

What does this mean? Let’s say we have X. He is an inventor Section 6.2. The Office shall be divided into six (6) Bureaus,
of this particular gadget, a new gadget. And then he has a each of which shall be headed by a Director and assisted by an
registered patent in his country which is Nigeria. He is a Assistant Director. These Bureaus are:
Nigerian, he is domiciled in the UK and has a factory in China.
If any of those countries is a signatory to any of the a) The Bureau of Patents;
conventions that the Philippines is also a signatory to, he can
invoke any of those conventions if he sues here in the b) The Bureau of Trademarks;
Philippines.
c) The Bureau of Legal Affairs;
What if somebody copies his gadgets and sells it in the
d) The Documentation, Information and Technology Transfer
Philippines? He can sue for infringement of the patent. He can
Bureau;
invoke the international conventions here. In addition to the
rights to which any owner of an intellectual property right is
e) The Management Information System and EDP Bureau; and
otherwise entitled by RA 8293. He can also invoke RA 8293,
our laws on IP. He can also invoke the treaty or convention in f) The Administrative, Financial and Personnel Services Bureau.
which the Philippines is a signatory and the country in which
this person is a national, domiciliary or has a factory or (g) The Bureau of Copyright and Other Related Rights. (Added
establishment is also a signatory. by RA 10372)
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The Bureau of Copyright and Other Related Rights. There was
no Bureau of Copyrights under RA 8293. Now we have the
Bureau of Copyright and Other Related Rights.
We have the Bureau of Patents, the Bureau of Trademarks, the
Bureau of Legal Affairs, and the Bureau of Copyright and Other
Related Rights.
*5-point quiz answered correctly by Kiang. Yehey!*
This law is not only substantive but also procedural. This is
always asked in the bar.
We also have the Documentation, Information and Technology
Transfer Bureau (DITT) in charge of the TTAs. And the AFPSB.
We now go to the powers and functions of the Director
General (DG.)
Section 7. The Director General and Deputies Director
General. –
7.1. Functions. - The Director General shall exercise the
following powers and functions:
a) Manage and direct all functions and activities of the
Office, including the promulgation of rules and
regulations to implement the objectives, policies,
plans, programs and projects of the Office: x x x
b) Exercise exclusive appellate jurisdiction over all
decisions rendered by the Director of Legal Affairs, the
Director of Patents, the Director of Trademarks, the
Director of Copyright and Other Related Rights (as
amended), and the Director of the Documentation,
Information and Technology Transfer Bureau. The
decisions of the Director General in the exercise of his
appellate jurisdiction in respect of the decisions of the
Director of Patents, the Director of Trademarks and the
Director of Copyright and Other Related Rights shall be
appealable to the Court of Appeals in accordance with
the Rules of Court; and those in respect of the decisions of
the Director of the Documentation, Information and
Technology Transfer Bureau shall be appealable to the
Secretary of Trade and Industry; and
c) Exercise 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. The
decisions of the Director General in these cases shall be
appealable to the Secretary of Trade and Industry.
Any decision rendered by Director of Legal Affairs, the Director
of Patents, the Director of Trademarks, the Director of
Copyright and Other Related Rights, and the Director of the
Documentation, Information and Technology Transfer Bureau
are appealed EXCLUSIVELY to the DG.
The decisions of the Director General in the exercise of his
appellate jurisdiction in respect of the decisions of the
Director of Patents, the Director of Trademarks and the
Director of Copyright and Other Related Rights shall be
appealable to the Court of Appeals.
So DG has exclusive appellate jurisdiction. If you are not happy
with the DG’s decision, appeal to the CA in accordance with
Rule 46 on decisions of quasi-judicial and administrative
bodies.
However, if the office that rendered the decision is the DDITT
on technology transfer, it is appealable to the DG, but from the
DG you go to the DTI Secretary, NOT the CA.
Section 8. The Bureau of Patents. - The Bureau of Patents
shall have the following functions:
8.1. Search and examination of patent applications and the
grant of patents;
8.2. Registration of utility models, industrial designs, and
integrated circuits; and
8.3. Conduct studies and researches in the field of patents in
order to assist the Director General in formulating policies on
the administration and examination of patents. (n)
Section 9. The Bureau of Trademarks. - The Bureau of
Trademarks shall have the following functions:
9.1. Search and examination of the applications for the
registration of marks, geographic indications and other marks
of ownership and the issuance of the certificates of
registration; and
9.2. Conduct studies and researches in the field of trademarks
in order to assist the Director General in formulating policies
on the administration and examination of trademarks. (n)
SEC. 9A. The Bureau of Copyright and Other Related Rights. –
the Bureau of Copyright and Other Related Rights shall have
the following functions:
9A.1. Exercise 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;
9A.2. Accept, review and decide on applications for the
accreditation of collective management organizations or similar
entities;
9A.3. Conduct studies and researches in the field of copyright
and related rights; and
9A.4. Provide other copyright and related rights service and
charge reasonable fees therefor. (As amended)
Section 10. The Bureau of Legal Affairs. - The Bureau of
Legal Affairs shall have the following functions:
10.1. Hear and decide opposition to the application for
registration of marks; cancellation of trademarks;
subject to the provisions of Section 64, cancellation of
patents, utility models, and industrial designs; and
petitions for compulsory licensing of patents;
10.2. (a) Exercise 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): Provided further,
That availment of the provisional remedies may be granted in
accordance with the Rules of Court. The Director of Legal
Affairs shall have the power to hold and punish for contempt
all those who disregard orders or writs issued in the course of
the proceedings. (n)
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(b) After formal investigation, the Director for Legal Affairs
may impose one (1) or more of the following administrative
penalties:
(i) The issuance of a cease and desist order which shall specify
the acts that the respondent shall cease and desist from and
shall require him to submit a compliance report within a
reasonable time which shall be fixed in the order;
(ii) The acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed. Such voluntary assurance
may include one or more of the following:
(1) An assurance to comply with the provisions of the
intellectual property law violated;
(2) An assurance to refrain from engaging in unlawful and
unfair acts and practices subject of the formal investigation;
(3) An assurance to recall, replace, repair, or refund the
money value of defective goods distributed in commerce; and
(4) An assurance to reimburse the complainant the expenses
and costs incurred in prosecuting the case in the Bureau of
Legal Affairs.
The Director of Legal Affairs may also require the respondent
to submit periodic compliance reports and file a bond to
guarantee compliance of his undertaking;
(iii) The condemnation or seizure of products which are subject
of the offense. The goods seized hereunder shall be disposed
of in such manner as may be deemed appropriate by the
Director of Legal Affairs, such as by sale, donation to
distressed local governments or to charitable or relief
institutions, exportation, recycling into other goods, or any
combination thereof, under such guidelines as he may provide;
(iv) The forfeiture of paraphernalia and all real and personal
properties which have been used in the commission of the
offense;
(v) The imposition of administrative fines in such amount as
deemed reasonable by the Director of Legal Affairs, which shall
in no case be less than Five thousand pesos (P5,000) nor more
than One hundred fifty thousand pesos (P150,000). In
addition, an additional fine of not more than One thousand
pesos (P1,000) shall be imposed for each day of continuing
violation;
(vi) The cancellation of any permit, license, authority, or
registration which may have been granted by the Office, or the
suspension of the validity thereof for such period of time as
the Director of Legal Affairs may deem reasonable which shall
not exceed one (1) year;
(vii) The withholding of any permit, license, authority, or
registration which is being secured by the respondent from the
Office;
(viii) The assessment of damages;
(ix) Censure; and
(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and
9, Executive Order No. 913 [1983]a)
10.3. The Director General may by Regulations establish the
procedure to govern the implementation of this Section. (n)
Section 11. The Documentation, Information and Technology
Transfer Bureau. - The Documentation, Information and
Technology Transfer Bureau shall have the following functions:
xxx
11.8. Register technology transfer arrangements, and
settle disputes involving technology transfer payments. (n)
Transcribed by: Garcia, Gil II
October 23, 2013; Part 2
Under Sec. 17, it is also the responsibility of the Director
General (DG) to print, make available for distribution, copies of
the Act and other pertinent laws. So, in other words, if you
need to download any law in relation to intellectual property,
you can go to the IPO website. RA 10372 has already been
posted there, but it’s still on PDF format.
Now, there’s also an IPO Gazette. All matters required to be
published shall be published in the IPO Gazette.
Now, under Sec. 19 there are officers and employers of the
IPO whom, during their employment and from one year
thereafter shall not apply for a patent. Even though this
particular officer is an inventor, he cannot, within one year
from resignation of termination from service, apply for a grant
of a patent. He cannot apply for registration of utility model,
industrial design, or mark, trademark or service mark. He
cannot, if he is a lawyer, act as attorney or patent agent of an
application for a grant of patent, or the registration of a utility
model, industrial design, or mark. He cannot acquire, except
by hereditary succession, any patent, or utility model, design,
registration, or mark, or title or interest therein. Ok, so no
licensing agreement, no TPA can be made in his favor, but he
can inherit by hereditary succession, intestate succession, or if
he is a compulsory heir of the patentee or the registered
trademark holder.
So that is the introduction, the introductory provisions.
We will now go to the first kind of intellectual property:
PATENT.
Ok, this is amended by RA 9502, which is the Cheaper
Medicines Act, and RA 10372. So let’s go first to the definition
of a patent. This is a grant made by the government to an
inventor, conveying and securing to him the exclusive right to
make use of his invention for a given period. So it has a limit.
It is not forever—the grant of a patent.
So we know what can be patented? Inventions. But what
specifically are inventions? Under Sec. 21, it is any technical
solution of a problem. Whatever problem: how to clean a
house; how to make a room colder; how to fly; how to
WHATEVER. In any field of human activity which (1) is new;
(2) involves an inventive step; and (3) is industrially applicable.
Those are the three requisite of patentability.
What are the things than can be patented? A product—a robot
that can clean the house, that’s a product; a process—how to
turn water into gasoline, that is a process; or an improvement
of a product or an improvement of a process.
Let’s say there is already a process, turning water into gasoline
but you have to go through 1,500,800 steps. So the
improvement is you just have to go through 800,000 steps.
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So let’s go to the three requisites of patentability. First, it are patented drugs, like maybe for the cure for Alzheimer’s.
must be new. What do you mean by “new”? It must be These are all patented drugs, noh. Big US companies that are
novel. Technicality does not tell us what is new, it tells us what really into developing drugs, noh, like cancer, alzheimer’s.
is not new. And what is “not new” is: “an invention shall not be
considered new if it forms part of prior art.” So, what is prior So, what was are topic? Inventive step. Now, with respect to
art? This is defined by Sec. 24—everything which has been drugs or medicines, according to the Cheaper Medicines Act,
made available to the public anywhere in the world before the there is no inventive step if:
filing date or priority date of the application claiming the
1) the invention results from the mere discovery of a
invention. In relation to that, the case of MAGUAN vs. CA
new form or a new property of a known substance,
(28 NOV 96). Maguan is a patent holder of a powder pack.
which does not result in the enhancement of the
Now, Maguan found out that Lu Chan is manufacturing and
known efficacy of that substance.
selling identical or substantially identical powder packs, of
So, let’s say we have for example, Substance X which
which Maguan is a patent holder. Sabi ni Lu Chan, “My
is for cough. Now, somebody discovers a new
products are different from yours. Even if they are the same,
property of this Substance X. May bagong property
your utility model is not new and patentable.” Now, is it new?
nga, it will be in another form, but the effect is the
The SC said NO. Everything has already been made available
same, it’s still for cough, and it is only to relieve, it
to the public anywhere in the world. Weren’t they using
will not cure the cough. So there’s no inventive step,
powder packs even during the time of Cleopatra? Diba? If you
nakadiscover ka lang ng new form or new property in
watch those old movies, there are different shapes and sizes,
that known substance.
but the function is the same: to put powder on the face. So,
therefore, this is an example of something that is not new
2) If it is a mere discover of any new property or new
because it has already been made available to the public
use for a known substance.
anywhere in the world before the filing date. What’s the “filing
date”? The filing date with the Bureau of Patent, the
Example (worth 2 pts.): Glutathione, it was formerly
application for patent. So, I if I had applied a patent for this,
for the liver, and then it was discovered that it can be
on June 1, 2013, if this has already been made available to the
used for skin whitening. So there is a discovery of a
public anywhere in the world before June 1, 2013, it is not
new use. So, is there an inventive step? None. It just
considered new.
so happens that it can be used to whiten the skin of a
Now, priority date of the application claiming the invention— person.
what do you mean by that? “Priority date”, we will go to that
later. 3) Use of an known process, unless such known process
results in a new product that employs at least one
Now, the second requisite, it involves an inventive step. new reactant
Under Sec. 26, an invention involves an inventive step if,
having regard to prior art, it is not obvious to a person skilled Whatever that is, I don’t know what a reactant is.
in the art at the time of the filing date or priority date. So, let’s Anyway…
say you have something, this one (naa siya’y ginatudlo wala ko
kabalo unsa), do you know how to use this? Obviously! You So, those, under the Cheaper Medicines Act, do not involve
don’t even have to read the manual. That means there’s no inventive step.
inventive step, kasi it’s so obvious how to use this. Now, you’re
Let’s go to the third requisite for patentability, industrial
given a gadget, something like the Google Glass, would you
applicability—an invention that can be produced and used in
know how to use it right away? Akala mo glasses lang! That is
any industry. So it is something that is usable, then it has
an inventive step because it is not obvious to a person skilled
industrial applicability for whatever field of human activity:
in the art at the time of the filing date. So, if you need to read
cleaning, bathing, brushing one’s teeth, driving, whatever,
instructions on how to use it, or what it does, and you are a
anything. Ok? So, those are the three requisites for
person skilled in the art, with regard to prior art, then it
patentability.
involves an inventive step.
Now, let’s go back to Sec. 25.2. Now, who can apply for a
So let me tell you in advance, what is a “utility model”? A
patent? Who can go to the Bureau of Patents and apply for the
utility model is something that is new but does not involve an
registration of his invention? (Ang maka-answer ug tama, ako
inventive step. Let’s say your invention is new and is
ang maghatag ug 2 points! In 1…2…aaand…)The inventor.
industrially applicable, that’s the easiest requisite to fulfil eh,
Now, the inventor also means, he’s not necessarily the one
but it does not have an inventive step, it will not pass the
who invented the product, it can also be any person who at
requirements for patentability. But it will be registered as a
the filing date had the right to a patent. How can one have a
utility model. So utility model is something which is new and is
right? Perhaps, the inventor transferred all his rights.
industrially applicable. Kaya ito yung powder pack, because
Remember our discussions on ownership. If one is the owner
definitely it does not involve an inventive step. But the issue
of his creation, he can dispose it, he can transfer it to another.
here is: is it new? Obviously, it is not.
And if by virtue of a Deed of Sale or Deed of Donation,
Now, here we have the tedious part. Now, drugs and whatever, he transfers his rights to his invention to X, then X
medicines are patented because this is a product. Drug can be considered the inventor because he had the right to the
companies undergo tremendous amount of research and patent before the filing date. It is important, it has to be
development. R&D budget of these drug companies are before the filing date that the right to the invention has
horrendous, they spend a lot. So, therefore, once they come already been transferred to him. He cannot first apply, and
up with a new drug to cure whatever illness, they would want then it will be transferred to him—no. Kailangan nadiyan na sa
to get exclusive rights to manufacture such drugs. So, there kanya ang right to the patent.
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Now, what cannot be patented? (Sec. 22)
1) Discoveries.Scientific theories,what’s the most
popular scientific theory? E = MC2; that cannot be
patented.Mathematical method, you know how to
compute the cotangent and the whatever of this
whatever; the parabola and all these things, these are
not patentable.And in Drugs and Medicines, those
that we took up, because they do not have an
inventive step. The same noh? This has been
amended by RA 9502.
2) Schemes. Now, what is a scheme?? I have no
idea.Rules and methods of performing mental
acts, playing games or doing business, and
programs for computers. Whatever that means,
just memorize that. So programs for computers
cannot be patented.
3) Methods for treatment of the human or animal
body by surgery – mga techniques, noh?
Laser…aahh…or diagnostic methods practiced on
the human or animal body. That cannot be
patented, you have to share that, noh. If you have a
new way of operating, you have to share that.
4) Plant varieties or animal breeds or essentially
biological process for the production of plants
or animals. Now, we have a lot of new breeds of
pets like when it comes to dogs, there are so many
different breeds. Before, there was only the English
Bulldog, which were huge, noh? When the French did
not like those big huge bulldogs, they decided to
develop their own French Bulldogs, so they mixed an
English Bulldog with a French Terrier, so now you
have a smaller one. Can that be patented? No.
5) Aesthetic Creation – you cannot. What is that? It’s
something that is nice to look at, because it is not
industrially applicable. Titignan mo lang siya, it has no
utilitarian aspect.
6) Anything which is contrary to public order or
morality – even though that is very long, what
comes out is normally no. 6.
Examples (Bar Questions):
 X invented a certain device which when attached to the
engine of a car would cut consumption of gasoline by 50%.
Without securing a patent, he started manufacturing the
gadget in large quantities and promoted its sale. So, he’s the
inventor, he manufactured, and distributed. Now, here we
have J, bright boy, bought the gadget, dismantled and
studied it, and in due time was himself manufacturing an
identical device. Before offering it for sale, J secured a
patent. Now, X learned of the patent and desired to secure
his own patent, but fearing that he might be sued for
infringement of patent, seeks your legal advice. How can
you help him?
Suggested answer: X should first bring an action for
cancellation of the patent illegally secured by J. Why? Who is
the inventor? Who can apply for the patent? The inventor or
the one who has the right to the patent before the filing
date. J never had the right to the patent, he just copied the
invention. So, X, being the inventor of the gadget is the
owner of an intellectual creation and is entitled to legal
protection of said property right from the unauthorized use
of the same by another person. While the cancellation
proceedings are pending, X may ask the court for a
preliminary injunction to prevent J from manufacturing the
gadget for any purpose.
 What inventions are patentable?
Answer: So, the answer is Sec. 21.
 X invented a bogus coin detector which can be used
exclusively on self-operating gambling devices, otherwise
known as “one-armed bandits”. Can X apply for a patent?
Suggested answer: No, he cannot, it is against public
policy. The operation of a self-gambling device is a criminal
offense in our country. The invention is therefore one which
is against public policy.
 X invented a method of improving the tenderness of meat by
injection an enzyme solution into the live animal shortly
before slaughter. Is the invention patentable?
Suggested answer: Yes, because it is a process directed
toward improving a commercial product. In general, an
invention possessing the following requisites may be the
subject of an application for patent: Novelty, originality,
_____________, and industrial applicability.
Ok, so who has the right to a patent? The inventor, his heirs,
or assigns. So, assigns, as long as he assigns his invention or
the right to the invention to somebody else, and it’s legal, then
no problem.
What if there are two or more inventors? If the invention was
made jointly, the right to the patent should belong to them
jointly. If the invention was made separately, and independent
of the other, let’s say this is the invented product, this was
invented by X, this was invented by Y, and then you put them
together, it now becomes one product. So, X will get the
patent for this, and Y will get the patent for that.
But let’s say, it’s the same product, this was invented by X, this
was invented by Y, and look at the whole, it’s the same
product. It says here, the right to the patent shall belong to
the person who filed an application for such invention. So,
does X own this? Yes. Does Y own his invention? Yes. But the
right to the patent, who will be granted the patent? The one
who filed an application first. So, when two or more
applications are filed for same invention, to the applicant who
has the earliest filing date, or the earliest priority date.
Now, what if the patent is created by commission. Ok, so X
commissions Y to invent something that will enhance the
growth of her hair. So, the general rule, the person who
commissions shall own the patent. So, who owns the patent,
the one who commissions—X, except or unless otherwise
provided in the contract. Meaning, even though Y is the
inventor, but because he was commissioned, then the one who
commissions hall own the patent. She can be the one to apply
for the patent.
What about employment? According to Sec. 30.2, the owner of
the patent, if the employee makes the invention in the course
of his employment contract, it is:
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 1) The employee, if the inventive activity is not a part of
his regular duties even if the employee uses the time,
facilities, and materials of the employer.
Siguro yung mga I.T., let’s say taga-ayos ng mga
computer ng mga establishment. And then, in the
meantime, he creates a process, and he invents
something while working their in the facility, he will
still own whatever invention he makes.
2) The employer, if the invention is the result of his
performance of this regularly assigned duties.
So itong mga drug companies that have scientists
there, they have R&D Dept., and here the scientist
invents a certain drug for this new disease. Do you
think the scientist will be the patent holder? No, it is
the drug company because that is the result of the
performance of regularly assigned duties, unless of
course there is an agreement to the contrary
Now, what do you mean by right of priority? So we have here
for example, this product, this is let’s say a patentable product,
an invention with the three requisites. They’re exactly the
same. It’s just that the color is different, same function. Now,
this is X and this is Y. So X applied on June 1, 2013. He went
to the Bureau of Patents and applied for a patent for this
particular invention. So he had the filing date of June 1, 2013.
Eto palang si Y already applied for a patent in Hong Kong in
April 1, 2013. So it says here, by any person who has
previously applied for the same invention in another country by
treaty, convention, or law, or similar privilege. So let us say
that Hong Kong affords similar privileges to Filipinos. It says, it
should be considered as filed as of the date of filing the foreign
application. So Y has the priority because he already previously
applied for a patent in another country. What are the
conditions? The local application expressly claims priority.
Meaning, Let’s say Y applies for this application for patent here
at the Bureau of Patents on July 1, 2013. So he must in his
application filed here in the Bureau of Patents expressly claim
that he has priority right (since he already applied in Hong
Kong on an earlier date). And the next condition, it must be
filed within 12 months from the date the earliest application
was filed. So, is it within 12 months? April to July, 4 months
lang. So that’s fine. What else? A certified copy of the foreign
application together with an english translation is filed within 6
months form the date of filing. So, 6 within months from July
1, 2013, Y must submit of the certified copy of the foreign
application with an english translation, to prove that indeed
there is __________. So nobody can just allege. You know
that noh? You’re a law student, allegations are not enough,
you need proof. So that is the proof of the earlier application
made in Hong Kong. So with that, Y can claim a right of
priority, the earliest priority date. So priority date means simply
the date of filing of foreign application for the same invention.
Yun lang, noh.
Now, let’s go to a bar question:
X invented a device that can convert rainwater to automobile
fuel. She asked Y, a lawyer, to assist in getting her invention
patented. Y suggested that she form a corporation with other
friends and have the corporation apply for the patent. 80% of
the shares to be subscribed for X, 5% for Y, and 15% for the
other friends. So the corporation was formed and the patent
application was filed. However, X died 3 months later of a
heart attack. H, the estranged husband of X contested the
application of the corporation and filed his own patent
application as the sole surviving heir of X. So who has the right
to apply? The corporation or H?
Suggested answer: The claim of H will prosper. The one
who created the invention, X, is the only one who can file an
application for patent over the invention. Remember, who can
apply? The inventor, his heirs, or successors-in-interest. His
assigns noh? The corporation is not her successor, she’s only
part of the corporation. Kapag wala na siya, wala na rin siya sa
corporation. So the corporation has no right. Y and X’s friends
who owned 20% had nothing to do with the invention, neither
is there a showing that they acquired by assignment or other
modes of transfer of the invention of X. It would have been a
different story if X actually assigned her rights over the
invention to them, but she did not. This is therefore a case of
an application of persons who had nothing at all to do with the
creation of the invention. So, if X dies, her heirs inherit the
invention and the right to apply for it. If H, the estranged
husband is the only heir of X, then he can file an application
for patent invention.
Let’s go to the procedure. So where do you apply? Very easy,
Bureau of Patent. The application shall contain a request, you
do not just say “I’d like to apply for a patent. This is a patent
for my invention that can cause a car to fly.” That’s not
enough. You have to submit a description of the invention,
drawings. What is this gadget of yours? How do you connect
to it? Or the understanding of the invention. So, take note, no
patent may be granted unless the application identifies the
inventor. So, if the applicant is not the inventor, the IPO may
require him to submit said authority. What is it? “I am an heir
of the inventor, and here is the death certificate of my father,
he is the inventor.” “I am the assignee of the inventor, here is
the deed of sale/donation/whatever.” Disclosure, the
application shall disclose the invention in a manner sufficiently
clear and complete for it to be carried out by a person skilled
in the art. So it should not contain formulas that cannot be
understood. But of course, ordinary persons like us are not
expected to understand. But those persons skilled in the art
must be able to understand.
Now, just like the rule against duplicitous information under
Sec. 13 or Rule 110, Sec. 38.1 says, the application should
relate to one invention only or a group of inventions for a
single general inventive concept. Pareho lang, duplicitous nga.
So you cannot put invention A, B, C, one is for cars, the other
one is shampoo, the other one is make up. No. What if several
independent applications which do not form a single general
inventive concept are claimed in one application? It is a
duplicitous application. The Director may require that the
application be restricted to single invention. So you have to
divide your application, you should file 3 instead of 1. Now, in
a duplicitous information, if it is not quashed, the accused can
be convicted of all of the crimes charged in the information.
Now, what if the Bureau issues a patent for all of the 3
inventions in the same application? According to Sec. 38.3, the
fact that a patent has been granted on an application that did
not comply with the requirement of unity of invention shall not
be a ground to cancel the patent. That is not a ground for
cancellation, meaning, nandiyan na, it was already granted,
the patent involves 3 inventions.
So, filing date, what is considered the filing date? It is the date
of receipt. You file your application, of what? They have a
minimum set of requirements for the filing date to set in. An
express or exclusive indication that a patent is sought;
6
information identifying the applicant, whether the applicant it infringement can be committed before the patent is granted,
the inventor, heir, or assignee; description of the invention. If but the filing of an action can only be made after the patent is
all of those 3 are submitted on the particular day, then the granted.
application is considered filed. If any of these elements is not
submitted within the period set by the rules, then the Said rights will be exercised by the said person, the right to file
application is considered withdrawn. Now, so once the an action for infringement when that person who looked at the
application is filed, what is the next step? Classification and application with the Bureau of Patents, had actual knowledge
search. This is the job of the Bureau of Patents. It will classify that the invention that he was using was the subject matter of
under what category is this, and it will search for prior art to a published application or this person received notice that the
determine whether that particular invention is new. So this will invention that he was using was the subject matter of a
take some time, the classification and the search. After that published application being identified in said notice by serial
step, the next step is the publication of the application. The no. So, there is already protection after publication.
application itself will be published in the IPO. It says here,
Now, can an application be amended? Yes, an application can
together with the search application established by or in behalf
be amended during examination, provided, the amendment
of the IPO citing any documents that reflect prior art, this
shall not include new matter outside the scope of the
publication should be made within 18 months from the filing
disclosure contained in the application as filed. So, when shall
date or priority date. So the search will go on, the examination
the patent be granted? After the search, after the examination,
will go on, and after that is the publication of the application.
after the publication, and nobody opposes, the patent shall be
What is the purpose? It is to inform interested parties that
granted upon payment of the fees.
somebody wants to apply for a patent for a particular invention
and they can oppose it. It says here, after publication, any
When shall the patent take effect? Sec. 51.3, on the date of
interested party may inspect the application documents. So
the publication of the grant of the patent in the IPO Gazette.
what is published is only the application. Application for a
So even if you already have your patent, naka-frame na dun sa
patent for an invention which can make a car fly; here comes
wall mo, but it has not yet been published, it cannot take
Z, he is interested in the invention, he wants to look at the
effect yet.
specifications, the accompanying documents that were filed by
the applicant. What if the Bureau of Patent says “No. We deny your
application for a patent.” What can the applicant do? He can
Now, according to Sec. 44.3, the DG, subject to the approval
appeal the decision to the Director of Patents. So ganito yan,
of the Sec. of DTI, may prohibit or restrict the publication and
sino ang magdeny? Yung mga tau-tauhan of the Bureau of
application if, in his opinion, to do so would be prejudicial to
Patent, that decision can be appealed to the Director of
the national security and interest of the Philippines. What is
Patents. After the Director of Patents, the DG. Ok? Right to
the application is for a bomb made of food? So people are
appeal, so this is the flow: Application ->and then the
going to be interested, people are going to flock to the IPO
examiner will either grant or refuse. If it is refused -> Appeal
and find out how this bomb is made, and then we will already
to the Director of Patents -> and then appeal to the DG. ->
have bomb makers all over the place. So those things can be
After the DG, to the CA, and then to the SC.
restricted or prohibited by the DG.
Transcribed by: Valles, Daryl
Now, there is a period of confidentiality, from the time of
application until the time of publication of the application, no October 24, 2013; Part 1
one will know about it. It says here, if it has not yet been
published, the application and all related documents shall not We have reached the part where the patent is granted. So
be made available for inspection without the consent of the what is the act of the examiner, either to grant or to deny the
applicant. Nobody can make usyoso on his application. It has application. So if the application is granted, it will be published.
to be kept a secret, whatever it is. Now, hence, once the The grant of the patent shall be published. In other words, in
application is published, what’s the effect? Any interested patent application we have 2 publications:
person can go to the IPO and examine all the supporting
documents, eh di nabuking na siya, his secret formula, his 1) publication of the patent application; and
secret invention will be available to the world. So, under Sec. 2) publication of the grant of the patent.
46, after his application is published, he shall have all the
The patent is the piece of paper. What does it say? Its official
rights of a patentee. What are the rights? Under Sec. 76, the
because it is issued in the name of the Republic under the seal
right to manufacture, distribute, sell, etc. He already has.
of the IPO and signed by the Director of Patent or the Director
Why? Because his invention was already exposed to the world.
General. I think it’s the Director of Patents. Patents siguro. And
Said rights may be exercised against any person who, without
registered together with the description, etc. That is a piece of
authorization, exercise any of the rights conferred under Sec.
paper, could be a hard paper, glossy paper that can be framed
71 in relation to the invention claimed in the published patent
by the patentee. So once again, when the patent is signed by
application. What will stop any Tom, Dick, and Harry from
the applicant, he now becomes the patentee.
copying whatever it is that he saw in the Bureau of Patents?
So he has the right to file an action for infringement against
How long will it last? The protection. 20 yrs from the filing
anyone who manufactures, sells, distributes, the product that
date. Not from the grant but from the filing date. So if the
he invented by copying, as if a patent had already been
application process takes 5 years, then there will be only a
granted for that invention. However, he only has the right.
remaining 15 years for the effectivity of the patent.
Meaning, that person’s already an infringer even though he
(the applicant) does not yet have the patent, but he cannot Now after the patent is granted to the patentee, is that it?
the action yet. The action may not be filed until after the grant Does he still have to do anything? Yes, he must pay annual
of the patent on the published application, and within 4 years fees upon the expiration of 4 years from the date the
of the commission of the acts complained of. So the
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application was published. You count 4 years from publication
of the application. It does not matter if the patent had already
been granted or not. And each subsequent anniversary of such
date.
Now what if the patentee is pressured with the patent. He is
being harassed left and right. Can he surrender the patent?
According to section 56 he can. He can ask that it be
cancelled. We know that cancellation cases are filed before the
Bureau of Legal Affairs (BLA). But when it comes to surrender
of patent by the owner for cancellation he need not go to the
BLA. He goes to the the Bureau of Patents (BP). Before he can
have the patent cancelled or he can surrender his patent, he
must get the consent of all persons having grants or licenses.
Later we will go to licensing. Compulsory licensing or voluntary
licensing. What if the license is to manufacture, manufacture
like 1M pieces of this product and he is already, the
manufacturer has already manufactured 900k and now he
wants the patent to be cancelled so the protection of the
manufacturer will be removed. So he needs the consent. But
he only needs the consent of those licensees, maybe his
successors-in-interest, his heirs which have been recorded in
the IPO. If we look later in licensing some need to be
recorded, some need not be recorded. If the licensee who is
manufacturing is not recorded in the IPO, malay ba ng IPO if
his consent was acquired or not. That is the requirement for
surrender and cancellation by the patent holder.
Opposition. Can a person oppose the surrender? Let’s say a
person, who is a licensee but was not registered in the IPO
therefore he will be prejudiced if the patent is surrendered and
cancelled. According to Section 56.2, he may oppose the
surrender of the patent. Again, opposition cases are filed
normally with the BLA but if a person must oppose the
surrender of the patent by the patent owner, he goes to the
BP. What should the BP do when there is a notice of
opposition? It shall notify the proprietor of the patent and
determine the question as to whether or not the patent can be
surrendered and cancelled. If the patent is surrendered and
the surrender is accepted by the BP, when shall it cease to
take effect? From the day the notice of acceptance is published
in the IPO. From that day onwards there is no more protection.
Anybody can copy the product, the process. Anybody can
manufacture, distribute, etc.
We already, as 4th yr students, you already took up those rules
on correction of the errors or entries in public documents. I
think it’s a long process. You have to go to court but if it’s a
clerical error or a first name, it can be done administratively. I
don’t know if it has already been taken up in your Land
Registration but I heard from the Register of Deeds that for
clerical errors in the title of the property like iyong mga
technical description there’s always an error, typo. It can be
done without going to court. I don’t know. That is what I
heard. But anyway, what if there are mistakes of the office?
What if the patent itself mali iyong description or the name of
the patentee is wrong. The office can correct its mistakes.
Incurred through the fault of IPO when clearly disclosed in the
records thereof, to make the patent conform to the records.
(Section 57) It’s possible, diba? Like for example, I am going
to apply for late registration then I fill up the boxes. And then
suddenly paglabas ng birth certificate, female. That is a
mistake of the civil regsitrar but then the victim, who is the
person who applied for late registration has to go to court and
change the gender from female to male. But here, this is
already in the law. That it can do so provided that it is proven
that really a mistake was made, shown in the records that this
is what I applied for, this is the name of my invention, this is
the procedure that has to be taken, then that can be
corrected.
What if the mistake was made in the application by the
applicant? Nagkamali siya in writing a certain formula. Then he
can also ask the Director, no need to go to court again as long
as he pays the prescribed fee. But it has to be formal and
clerical and not incurred to the fault of the IPO. It cannot be a
serious error. Only typo, wrong spelling, those things. As long
as it will not change the essence of the patent, it will not
change the formula or the process.
Opposition cases. We file with the BLA. This is one who wants
to oppose the application. If X is applying for a patent for this
particular invention and Y wants to oppose it, file with the BLA.
What are the grounds for the opposition? That the invention is
not patentable under Sections 21 and 22, that the applicant is
not the inventor, his heirs or assigns. X applies for a patent for
his invention. Y shall oppose on the ground that he is the real
inventor.
Cancellation this is when the patent has already been issued
by the BP. For opposition, there is no provision as to who can
file. For cancellation, any interested person can file a petition
to cancel. It will be anyone as long as he has the proper
grounds. Again with the BLA. What are the grounds? Same.
What is claimed is not new or patentable, the patent does not
disclose the invention in a manner sufficiently clear and
complete for it to be carried out by any person skilled in the
art. Even if this particular product that is already patented is
manufactured and sold in the market, nobody will know how to
use it, it is impossible to use. That is a ground for cancellation.
And then that the patent is contrary to public order or
morality. Let your imagination run wild. When the grounds to
cancellation relates to some of the claims or parts of the claim,
the cancellation may be effected to such extent only. Perhaps
a cancellation, it could only be made in part. Part of the
product, not the entire product. So, what is the effect of
cancellation? The rights conferred by the patent shall
terminate. Again the notice of cancellation shall be published.
Take note, the decision of the Director of Legal affairs to
cancel the patent is immediately executory even though an
appeal is filed with the Director General (DG). How do you stop
the execution? Ask the DG to issue a writ of injunction,
preliminary injunction or a TRO. So, immediately executory.
Remedies of a person with a right to a patent. Here we have a
situation wherein this person is the one who has a right to the
patent. He could either be the assignee or he could be an heir,
a successor-in-interest. A person referred to in Section 29
other than the applicant. We have here X apply for a patent for
this particular invention. And then we have here Y, he claims
that he is the one who has the right to a patent. What should
he do? First Y must go to court. The court must declare Y to
be the person to have the right to apply for a patent for this
invention. Once there is a final court order that it is Y who has
the right to apply for a patent, then he is now allowed to
prosecute the application as his own application in place of the
applicant. So he will go to the BP and say here is my court
order. The court already declared me to have the right to the
patent. X who is applying for the patent has no right. I want to
be the one to apply. Change the application to my name. Or
he can file a new patent application. Sabayan nya. He can
request that the application of X be refused. That is with the
BLA now. This is tantamount to an opposition. Or seek
8
cancellation of the patent if one has already been issued.
Again this is with the BLA.
When can he avail of such remedies? Within 3 months after
the decision has become final. What decision? The decision of
the court saying that he is the person who has the right to the
patent. He has file the opposition, the cancellation, he can ask
that the applicant be replaced by him. He has 3 months to do
so.
Section 67 talks about the person who has the right to a
patent by virtue of a court order. Section 68 talks about the
true and actual inventor. Ito iyong mga, remember the
situation of the bar question yesterday, there was this
inventor, he did not bother to register, he manufactured. Then
this one guy bought a product then copied it and applied for a
patent. So what happens to the true inventor? He wants to
apply for a patent but somebody has already applied or has
already been granted a patent. One who has been deprived of
a patent without his consent or through fraud, again has to go
to court. He must ask the court to issue an order or make a
decision that he is the true and actual inventor of the particular
product. Once the court issues the order, the court can, at the
option of the true inventor, order for his substitution as the
patentee. So the court will issue an order to the BP please
substitute this person X as the patentee. Or take note, the
court shall cancel the patent. Meaning, even if cancellation
cases are normally filed with the BLA the court can cancel the
patent if a case is filed by the true inventor and the court
declares him to be the true inventor, the court can cancel the
patent and the court can award actual and other damages in
his favour. Do not mix up Section 67 and 68. Sa Section 67, he
has to go to the BLA to oppose or to cancel. Section 68, the
court can cancel.
When do you file an action in court under 68? For the court to
declare you to be the one who has the right to patent or the
one who is the true and real inventor? Within 1 year from the
date of publication. Remember, the date of publication of the
application for patent or the patent itself. It has to be filed
within 1 year. While there is an application made the true
inventor, the one who has the right to patent, go to court and
ask the court to declare him to be one who has the right to
apply.
What are the rights of a patentee? Once a patent had been
issued, the patentee has the exclusive right if it is a product to
restrict, prohibit and prevent any unauthorized person or entity
from making, using, offering for sale, selling or importing that
product. He has the exclusive right to make use of the product.
If it is a process, he can restrict, prevent, prohibit any
unauthorized person or entity from using the process and from
manufacturing, dealing, in using, offering for sale any product
obtained directly or indirectly from such process. Those are the
rights of a patentee. What else? Patent owners shall also have
the right to assign or transfer by succession the patent and
conclude licensing contracts for the same.
But if we have section 71, we have section 72. Limitations. The
patent owner, even though he is already the patentee, he has
no right to prevent third parties to perform any of the following
acts number 1 using a patented product which has been put in
the market in the Philippines by the owner of the product or
with the express consent insofar as such use is performed
after the product has been so put on the said market.
We now go to Cheaper Medicine Act. With regard to __ the
drug companies, they own the patent of these drugs and
medicines that they manufacture. So nobody else can
manufacture or distribute without their authority. According to,
Section 72, with regard to drugs and medicines, the limitation
shall apply after the drug or medicine has been introduced in
the Philippines or anywhere in the world by the patent owner
or any party authorized to use the invention. And the right to
import the drugs and medicines shall be available to any
government agency or any private party. What else? When the
act of manufacturing, selling, distributing, is done privately on
a non-commercial use. It should not prejudice the economic
interest of the patentee. What if it is only done for experiment?
Like in a science class, a physics class, chemistry lab. The
patent owner cannot prevent that. Again, the amendment by
the Cheaper Medicines Act, in the case of drugs and medicines
where the act is testing, using or making or selling invention
solely for purposes related to the development and sufficient
for issuance of the approval by the government regulatory
agency. Syempre no, we have our regulatory agency, like
iyong mga BFAD and all those things. What if testing is
required, then that cannot be prohibited by the patentee.
Iyong mga pharmacists in a pharmacy, if a doctor will make a
prescription that is also not prohibited. Take note, all cases
arising from the implementation of this provision, meaning the
limitation of the right of the patentee, shall be cognizable by
the courts, not by the IPO.
Lets say somebody is performing an act under section 72, the
patentee wants to sue him, what will be his course of action?
Infringement! Where is it filed? With the court. Or somebody is
performing an act under section 72 and he is being harassed
by the patentee. He can sue the patentee. Where? In the
regular courts. Well, we have our intellectual property courts.
Courts with appropriate jurisdiction.
TRO. Supreme Court.
If it is used in a vessel, aircraft, etc and used exclusive for the
needs of the vessel, aircraft, etc. that is also allowed. That is
not tantamount to infringement.
But take note of prior user. Let’s say we have X, X is the
patent holder of this invention. Y actually invented the same
thing. Long time ago. And he is using it for his own purposes.
In his garden. Maybe it’s a lawn mower or something or
whatever. Y used the invention or has been taking serious
preparation to use his invention in his enterprise or business
before the filing date or priority date of the application of
which the patent was granted. He has the right to continue
using it provided he has been using it before X applied for the
patent.
But what about the government? Can the govt perform the
acts under section 71 which are reserved to the patentee?
According to Section 74, a government agency or authorized
third person may exploit the invention even without agreement
of the patent owner where public interest in particular national
security, nutrition, health or the development of public sectors
so require. Or a judicial ___ in the matter of exploitation with
the owner of the patent or the licensee is anti-competitive.
Those are the 2 instances where the government can actually
perform the acts under Section 71 even without the consent of
the patentee.
If a person does the following acts he can be liable for
infringement of patents. What is this? Without the
9
authorization of the patentee. Take note, if one is authorized
there’s no infringement. This is always without authorization.
The making, using, offering for sale, selling or importing of a
patented product or a product obtained from a patented
process if they use the patent thereof(?). Those are the acts
that constitute infringement of patent.
Who may bring a civil action for infringement? The patentee
himself, or any person possessing any right, title or interest in
the patented invention whose rights have been infringed.
Jurisdiction. RTC. We have our Intellectual Property Court,
Branch X here. Judge Fuentes is the judge of the Intellectual
Property Court here in Davao.
When to bring an action for infringement? 4 years from the
publication after the grant of the product(?) of the published
application. Whether the infringement was committed before
the patent was issued or after it is 4 years from the grant of a
patent on a published application.
The patentee, what can he recover from the infringer?
Damages that he sustained, attorney’s fees and expenses of
litigation. What else? Can the court issue a writ of injunction to
prevent the infringer from continuing what he is doing.
Whatever it is. Making, manufacturing, distributing, etc. Award
by way of damages is sum equivalent to reasonable royalty if
the damages are inadequate or cannot be ascertained with
reasonable certainty. According to the circumstance of the
case, award damages to a sum above the amount or meaning
on top of number 2 provided the award does not exceed 3x
the amount of the actual damages. What else? The court may
order that the infringing goods, materials, and implements be
disposed of outside the channels of commerce or destroyed.
Who else can be liable with the infringer? The one who makes,
uses, manufactures? Anyone who actively induces the
infringement of a patent or provides the infringer with a
component of a patented product or a product is produced
because of the one who gave him whatever it is that he needs
to produce the product.
So, how do you know that there is infringement? Must the
copy, be an exact copy of the patented product? The answer is
no need. In order to constitute infringement, there need only
be substantial identity between the 2 devices. (example sa
board) What is the test? The doctrine of equivalents. How do
you know that there is a substantial identity between the 2
products? The doctrine of equivalents says, when they perform
substantially the same function in substantially the same way
to obtain substantially the same result even if they differ in
form, shape or dimension.
Example. Vacuum cleaner. How many types of vacuum cleaner
do we have? What do they look like? Some of them look like
robot, some of them look like mops, some use water, air. But
they are all vacuum cleaners. They perform exactly the same
function in substantially the same way to obtain the same
result. So that is the test that will determine if there is
substantial identity. If there is substantial identity, between the
patented product and the alleged infringing product, then
there is infringement.
Can an action for infringement be brought by a foreign
national? Let’s say the inventor of this patented product
(pointing to her thermos) is a foreign national and here we
have a copy (another thermos) with substantial identity with
this and this is being sold by Y in the Philippine market. Can X,
the foreigner, who has a patent in his home country sue Y for
infringement? YES. Provided he meets the requirement of
Section 3. He is not engaged in business in the Philippines.
What do you mean by that? You mean to say anybody, any
foreigner who is engaged in business in the Philippines cannot
sue? Of course not. You already know under your corpo that a
foreign entity can sue in the Philippines if it licensed to do
business, if it is doing business here. It can only sue if it is
licensed to do business. If it is not licensed to do business
here, it can’t sue if it is not doing business. Alam niyo yan di
ba sa corpo? That’s what it means. Not doing business
meaning he is not licensed he can still sue. And he is a grantee
of a patent under RA 8293. It is not required that he is
licensed to do business here.
There are times when a person can be held liable for
infringement but not be held liable for advantages. What are
these? When the acts of infringement were committed before
the infringer had known or had reasonable grounds to know of
the patent. Is it impossible for X to invent this and Y to invent
exactly or something which is substantially identical to the
patented product of X. Of course it’s possible. (Example
pointing to her 2 thermos again) its substantially identical to
the product of X and he has been using it, this product. Did he
know? And he has been distributing the product, he had been
manufacturing this product. He did not know na meron na
palang patent si X. Can he be liable for infringement? Yes, he
can! Because this is a patented product. Only X has the right
to manufacture, distribute, sell, etc. authorize whatever. Si X
lang. Y can be liable for infringement even if he has invented
the product, hindi si X kasi may patent na eh. But Y cannot be
liable for damages if he did not know of the patent or before
he had reasonable grounds to know of the patent. When is it
presumed that the infringer had known of the patent? What if
this product comes in a package. And it is being sold in a
department store and it is placed there in the package,
Philippine patent with the patent number. Y cannot say
anything else. Kahit hindi nya alam. Evethough he doesn’t
know. He cannot say he did not know. He is presumed to
know. This is similar to registration. Notice to the whole world.
It is already in the packaging of the product, the Philippine
patent then everyone is presumed to know about it. Therefore
Y can be held liable for damages in addition to being held
liable as an infringer.
A person is sued for infringement before the courts. What
defenses can he bring before the court to escape liability? Says
here, in addition to other defenses available to him, he may
show the invalidity of the patent. Meaning, whatever defense
he can show is a proper defense along with the defenses that
he may bring or available to him. Maybe he can even include
the patent is invalid. Why? Because the product is not new, the
product does not have an invented step, the product is not
industriable. What else? The one who has the patent is not the
real and true inventor. Whatever. On any of the grounds on
which a petition for cancellation can be brought. So whatever
is available to someone who wants to file a petition for
cancellation can also be used as a defense. Baliktad na, hindi
na cause of action but defense available to the infringer. These
defenses may be brought. What else? The patent is contrary to
public order or morality. That is also a defense. Take note:
where do you file a cancellation case? If you want the patent
to be cancelled? BLA. Here we have X, he has a patent for this
product. Here we have Y making distributing his product which
is substantially identical to the product of X. So X filed an
infringement case against Y with the Intellectual Property
Court. So ito si Y brought up all the defences including the
10
patent of X is invalid. So he brought up all these arguments.
What if the court believes him, si Y? Ay, oo nga no, invalid
iyong patent nya! Can the court cancel the patent? The answer
is YES. YES. Eventhough a cancellation case is normally filed
before the BLA, in an infringement case, the court can cancel
the patent of the one who filed that case. Once the court
cancelled the patent, the Director of Legal Affairs upon receipt
of the final judgment of cancellation shall record that fact in
the register of the IPO and publish it. So no need to go
through another cancellation case with the BLA. In the
infringement case, the court cancels then it is as good as
cancelled and it will be published in the IPO Gazette.
Is there a criminal action for infringement? Yes under Section
84. If the infringer keeps on repeating. If the infringement is
repeated by the infringer or anyone in connivance with him
after the finality of the judgment of the court against the
infringer. The first case for infringement is normally a civil
case. The court will say, yes you are liable for infringement;
stop whatever it is that you are doing. If he does it again, then
this time he can be held criminally liable. When shall the
criminal act prescribe? Within 3 years from the date of
commission of the crime. What is the crime? Repeating the
acts of infringement.
Transcribed by: Hao, Louie Lynne
October 24, 2013; Part 2
Bar questions:
In an action for infringement of patent, the alleged infringer
defended himself stating: 1) the patent issued was not really
an invention that was patentable, 2) he had no intent to
infringe (not important) 3) there was no exact duplicate but a
minor improvement (only substantial identity is needed).
Which of the three is a valid defense?
Answer: That the patent issued is not an invention that is
patentable. (Yes. This is a valid defense if he can prove that
the invention is not new etc.)
Assume that your company is engaged in the business of
canning, processing, and manufacturing food products. In a
highly competitive field protective meaures are to be taken by
the management. Your legal advise is sought on the following:
Your firm is interested invented by Mr. Flores. It was
discovered that an application for patent was filed by Mr.Goko,
a close of Mr. Flores. What steps would you take? (this
question is very structured)
Answer: I will ask Mr. Flores to file an action in court to be
declared as having the right to the patent as the true and real
inventor under section 68. After the decision has been made I
will ask Mr. Flores to file a petition to have it declared as his
own under Section 68.
Ferdie is a patent owner of a certain invention. He discovered
that his invention is being infringed by Johan. What are the
remedies available to Ferdie? Very easy. If you are the
daughter of Johan in a suit what are the defences that your
client can assert? Very easy.
Let’s go back to the case of MaguanvsCA, we already
discussed the issue of the powder puffs not being new. But
what happened here procedurally was that Maguan was the
patent owner and Luchan was distributing and manufacturing
identical or similar powder puffs. So Luchan in July 1974 filed a
cancellation case before the PPO the Philippine patent office
before RA 8906. Luchan alleged that maguan’s patent was void
because at the time the patent was issued the powder4 puffs
were not new, obviously. At the same time or one month after
maguan filed a complaint of infringement with the RTC. The
question is can a cancellation case and an infringement case
proceed at the same time? There is an identity of parties. Is
there litispendencia? The SC said NO. In many cases the SC
said in infringement the cause of action is to have the infringer
declared liable for infringement. In cancellation it is to cancel
the patent eventhough you are talking about the same patent
and the same parties. They can procedd at the same time.
In the case of GODINES VS CA, here we have theppo issued
a patent to xv adolf enterprises for a utility model tractor
power tiller. You see how difficult it is to apply for a patent.
The luchan was a utility model, here it is still a utility model
but still they applied in the patent office.
In accordance with the patent, private respondent
manufactured and sold the patented power tillers with the
patent imprinted on them. In 1979, it suffered a decline of
more than 50% in sales. Upon investigation, SV-AGRO
discovered that power tillers similar to those patented by it
were being manufactured and sold by petitioner PASCUAL
GODINES. Consequently, SV-AGRO notified GODINES about
the existing patent and demanded that Godinesstop selling and
manufacturing similar power tillers but he failed to comply so
SV-AGRO filed before the RTC a complaint for infringement of
patent and unfair competition.
Here the SC explained the tests for infringement.
We have of course the literal infringement wherein the
copy is exactly the same as the patented product.
The SC also explained the doctrine of equivalence
eventhough the power tiller of godines does not look like the
power tiller of SG-Agro there is still infringement because it has
the same function, etc. etc.
Now one very important case involves procedure
PhilPharmavs Pfizer Nov 17, 2010—Pfizer filed a complaint
for infringement againstphilpharm. So Pfizer is this drug
company. So, philpharma obviously a Filipino company. Pfizer
is the owner of patent 2116 issued by the PPO in 1987 and the
patent is valid until 2004. Now, this patent covers subactam
ampicillin. Now Pfizer is selling subactan ampicillin under the
tradenameunasyn and the sole and sole and exclusive
distributor of unasyn products is zueligpharma. Sometime in
feb of 2003, Pfizer came to know that philpharma submitted
bids for the supply of subactan ampicillin to several hospitals
without the consent of Pfizer, in violation of pfizer’s intellectual
property rights.
The BLA issued a writ of preliminary injunction on July 15,
2003 preventing philpharma from supplying to these hospitals.
Prior to the expiration of the 90 day period of the injunction
issued by the BLA, Pfizer filed for a motion to extent the writ of
PI. Remember there is an existing infringement case. However
BLA denied the motion of Pfizer. So Pfizer filed a special civil
action of certiorari with the CA assailing the decision of the
BLA or the IPO. Take note certiorari under Rule 65. Remember
that the patent of Pfizer is valid until 2004. In 2005,phipharma
filed a motion to dismiss the case for being moot and academic
contending that pfizer’s patent had already lapsed. Philpharma
industries that the intellectual property right sought to be
11
protected has been extinguished due to the lapse of the
patent license. Also, the CA had no jurisdiction to review the
order of BLA because jurisdiction is vested by law on the DG of
the IPO. Diba, the flow.
Issue 1. Can an injunctive relief be issued based on patent
infringement where the patent allegedly infringed had already
lapse? The SC said No more. Sec 37 of RA 165, law at the
time, explicitly provides “A patentee shall have the exclusive
right to make, use and sell the patented machine, article or
product, and to use the patented process for the purpose of
industry or commerce, throughout the territory of the
Philippines for the term of the patent.” so it is clear that
the exclusive rights of a patentee exists only during the
existence of the patent. Since the patent has already expired
there is no point with continuing with the injunction and
infringement case.
Issue on jurisdiction. Was Pfizer correct in going to the CA
on certiorari when the law says that the flow is from the BLA
to the DG of the IPO? The SC said correct. Because under
section 67 when you look at the a appeal it pertains to a final
order. Order of the BLA denying the motion to extend the writ
of preliminary injunction is an interlocutory order that cannot
be appealed. So under section 7 decisions of the BLA, the BT,
the BP are appealable to the DG but this an interlocutory
order that cannot be appealed so the only remedy is certiorari
with the CA.
According to the SC RA 8293 is silent with respect to any
remedy available to litigants who intend to question an
interlocutory order issued by the BLA-IPO. Moreover, Section
1(c), Rule 14 of the Rules and Regulations on Administrative
Complaints for Violation of Laws Involving Intellectual Property
Rights simply provides that interlocutory orders shall not be
appealable. The said Rules and Regulations do not prescribe a
procedure within the administrative machinery to be followed
in assailing orders issued by the BLA-IPO pending final
resolution of a case filed with them. Hence, in the absence of
such a remedy, the provisions of the Rules of Court shall apply
in a suppletory manner.
Now, let’s go to voluntary licensing.
Sec. 85. Voluntary License Contract
To encourage the transfer and dissemination of
technology, prevent or control practices and conditions that
may in particular cases constitute an abuse of intellectual
property rights having an adverse effect on competition and
trade, all technology transfer arrangements shall comply with
the provisions of this Chapter. (n)
This involves TTAs technology transfer arrangements. We
already looked at the definition of a TTA so who has
jurisdiction. Syemprenoh, I am the patentee I will license si
Marco to manufacture my product. Not only manufacture but
to distribute and sell. So for every product that is sold I will get
a royalty because I am the inventor. Kapagnagkaroonkang
problem regarding who is entitled to the royalty, how much is
the royalty who has jurisdiction?
Section 86. Jurisdiction to Settle Disputes on Royalties. - The
Director of the Documentation, Information and
Technology Transfer Bureau shall exercise 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. (n)
Definitely as a patent owner I will not license someone for
free. I want something in return. If there is a controversy
involving that I will go to the DITT. Remember this is
appealable to the DG and the SPI not the CA.
Section 87 is an enumeration of provisions that cannot be
included in a TTA. These provisions are deemed prima facie to
have an adverse effect on competition and trade. We will not
go there you will have to read because there are too many.
Eto naming Section 88 are mandatory provisions. These
provisions have to be placed in a TTA. It could also be called a
voluntary license because the patentee is voluntarily giving
license to somebody or giving authority to somebody, an entity
or person to manufacture, distribute etc. Read them.
Section 87. Prohibited Clauses. - Except in cases under
Section 91, the following provisions shall be deemed prima
facie to have an adverse effect on competition and trade:
87.1. Those which impose upon the licensee the obligation to
acquire from a specific source capital goods, intermediate
products, raw materials, and other technologies, or of
permanently employing personnel indicated by the licensor;
87.2. Those pursuant to which the licensor reserves the right
to fix the sale or resale prices of the products manufactured on
the basis of the license;
87.3. Those that contain restrictions regarding the volume and
structure of production;
87.4. Those that prohibit the use of competitive technologies in
a non-exclusive technology transfer agreement;
87.5. Those that establish a full or partial purchase option in
favor of the licensor;
87.6. Those that obligate the licensee to transfer for free to
the licensor the inventions or improvements that may be
obtained through the use of the licensed technology;
87.7. Those that require payment of royalties to the owners of
patents for patents which are not used;
87.8. Those that prohibit the licensee to export the licensed
product unless justified for the protection of the legitimate
interest of the licensor such as exports to countries where
exclusive licenses to manufacture and/or distribute the
licensed product(s) have already been granted;
87.9. Those which restrict the use of the technology supplied
after the expiration of the technology transfer arrangement,
except in cases of early termination of the technology transfer
arrangement due to reason(s) attributable to the licensee;
87.10. Those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
87.11. Those which require that the technology recipient shall
not contest the validity of any of the patents of the technology
12
supplier;
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate research
and development programs in connection with new products,
processes or equipment;
87.13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
87.14. Those which exempt the licensor for liability for non-
fulfilment of his responsibilities under the technology transfer
arrangement and/or liability arising from third party suits
brought about by the use of the licensed product or the
licensed technology; and
87.15. Other clauses with equivalent effects. (Sec. 33-C (2),
R.A 165a)
Section 88. Mandatory Provisions. - The following provisions
shall be included in voluntary license contracts:
88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation, the
venue shall be the proper court in the place where the licensee
has its principal office;
88.2. Continued access to improvements in techniques and
processes related to the technology shall be made available
during the period of the technology transfer arrangement;
88.3. In the event the technology transfer arrangement shall
provide for arbitration, the Procedure of Arbitration of the
Arbitration Law of the Philippines or the Arbitration Rules of
the United Nations Commission on International Trade Law
(UNCITRAL) or the Rules of Conciliation and Arbitration of the
International Chamber of Commerce (ICC) shall apply and the
venue of arbitration shall be the Philippines or any neutral
country; and
88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor. (n)
Section 89. Rights of Licensor. - In the absence of any
provision to the contrary in the technology transfer
arrangement, the grant of a license shall not prevent the
licensor from granting further licenses to third person nor from
exploiting the subject matter of the technology transfer
arrangement himself. (Sec. 33-B, R.A. 165a)
Now if there is a licensing agreement or TTA inthe absence of
any provision to the contrary, the grant of a license shall not
prevent the licensor from granting further licenses to third
person.
So if I have a TTA with Marco would allow him to distribute my
product, Can I enter into another agreement with Jonathan?
Yes, unless exclusive siya. Of course if you stated there he is
the exclusive manufacturer, distributor etc, then I cannot enter
into a TTA with Jonathan.
If I enter into a TTA with Marco can I manufacture, distribute
the product myself? Yes, unless you sated in the TTA
nahindikopwedenggawin. So those are the rights of a licensor.
What about the licensee, the one authorized?
Section 90. Rights of Licensee. - The licensee shall be entitled
to exploit the subject matter of the technology transfer
arrangement during the whole term of the technology transfer
arrangement. (Sec. 33-C (1), R.A. 165a)
So whatever is written in the TTA that’s what he can do.Simple
as that.
Now look at Section 92
Section 92. Non-Registration with the Documentation,
Information and Technology Transfer Bureau. - Technology
transfer arrangements that conform with the provisions of
Sections 86 and 87 need not be registered with the
Documentation, Information and Technology Transfer Bureau.
Non-conformance with any of the provisions of Sections 87
and 88, however, shall automatically render the technology
transfer arrangement unenforceable, unless said technology
transfer arrangement is approved and registered with the
Documentation, Information and Technology Transfer Bureau
under the provisions of Section 91 on exceptional cases. (n)
Meaning if it does not have all those prohibited provisions, if it
contains all the mandatory provisions you don’t need to
register. Angproblema if the patentee wants to render his
license hindika din kasali.
Compulsory Licensing. This is entirely new. The provisions on
compulsory licensing are amended by the Cheaper Medicines
Act. What is compulsory licensing? It is the grant of a license
to exploit the patented invention, even without the agreement
of the patent owner.
The patent owner is not involved. Who may grant the license?
The DG of the IPO.
SEC. 93-A. Procedures on Issuance of a Special Compulsory
License under the TRIPS Agreement. - 93-A.1. The Director
General of the Intellectual Property Office, upon the written
recommendation of the Secretary of the Department of Health,
shall, upon filing of a petition xxx
Take note
The special compulsory license for the importation
contemplated under this provision shall be an additional special
alternative procedure to ensure access to quality affordable
medicines. Precisely because this is the Cheaper Medicines
Act.Kasingadibamaraming generic drugs that these companies
are selling at 300- 400% patong when you can actually get the
generic ones at a much cheaper price. This is what this law is
all about, to be able to get the cheaper version of patented
drugs initially, primarily for domestic consumption.
The patent owner, those drug manufacturing companies, if a
compulsory license is given to x, entity in the Philippines, to
directly import the drugs from abroad, the patent owner is
entitled to adequate remuneration to be paid either by the
exporting or importing country. Big time ito.Hindi ito sari-sari
store negotiation. A country, the Philippines, has to pay the
drug company if a special compulsory license is issued.
The compulsory license shall also contain a provision directing
13
the grantee the license to exercise reasonable measures to
prevent the re-exportation of the products imported under this
provision.
Siyempre, what is the purpose of this law, to provide cheaper
medicine for Filipinos to use it for domestic use. Let’s say 10
containers 40 foot container of generic drugs is sent thru
compulsory license taposieexportsa Bangladesh, sa Laos, di
pwedeyan.
He must take reasonable measure. Pero it’s happening people
making money out of that. Aside from PDAF and Malapayan.
The grant of a special compulsory license under this provision
shall be an exception to Sections 100.4 and 100.6 of Republic
Act No. 8293 and shall be immediately executory.
So this really a national issue not only a hospital issue.
What court can issue a TRO or preliminary injunction or such
other provisional remedies that will prevent the grant of the
special compulsory license? Supreme Court. So the drug
company is totally against the issuance of a compulsory
license. It has to go to the SC.
We have another kind, under special compulsory license.
"93-A.2. A compulsory license shall also be available for the
manufacture and export of drugs and medicines to any country
having insufficient or no manufacturing capacity in the
pharmaceutical sector to address public health problems.
Let’s say a US company has an exclusive manufacturer here in
the PH for the drugs. X can apply for a license to manufacture
the drugs here. Kasi the formula is not a secret, published
namanyan. And export these drugs to other countries that
have no manufacturing capacity.
Provided, That, a compulsory license has been granted by
such country or such country has, by notification or otherwise,
allowed importation into its jurisdiction of the patented drugs
and medicines from the Philippines in compliance with the
TRIPS Agreement.
These are the 2 kinds of compulsory license
1. Importation
2. Manufacturing and Exportation of these drugs
What is the period for the filing for a petition for a
compulsory license?
SEC. 94. Period for Filing a Petition for a Compulsory
License. - 94.1. A compulsory license may not be applied
for on the ground stated in Subsection 93.5 before the
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 period expires last.
What about the other grounds?
94.2. A compulsory license which is applied for on any of
the grounds stated in Subsections 93.2, 93.3, 93.4, and
93.6 and Section 97 may be applied for at any time after
the grant of the patent.
Okay the other provisions just read.Transmission of
Rights, this is similar to voluntary licensing
Section 103. Transmission of Rights. - 103.1. Patents or
applications for patents and invention to which they relate,
shall be protected in the same way as the rights of other
property under the Civil Code.
We will always go back to the rights of an owner: the right
to enjoy, dispose and recover. So because the owner has
the right to dispose of his property, he can dispose of his
invention, he can dispose the patent. He can assign, he
can transmit by inheritance. He can enter into licensing
contracts.
Section 104. 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 entire patent and invention, in
which event the parties become joint owners thereof. An
assignment may be limited to a specified territory. (Sec.
51, R.A. No. 165)
a. Take note, assignment may be of the entire right, title
or interest in and to the patent and the invention or
of an undivided share. Therefore the assignee will
become a co-owner with the patentee. So what if the
patent is jointly owned? Either the issuance of the
patent is joint or by reason of the assignement. He
assigned part of his patent so he is now a co-owner
with the assignee or by reason of succession. Each of
the co-owners is entitled to make, use, sell, or import
the invention for his own profit:
So each co-owner, under our lessons on co-ownership,
has the right to use the property for the purpose for which
it was intended.
But because of the co-ownership, Neither of the joint
owners shall be entitled:
a. to grant licenses, or
b. to assign his right, title or interest or part thereof
Without:
a. the consent of the other owner or owners, or
b. proportionally dividing the proceeds with such other
owner or owners.
This is an act of alteration. If you want to dispose you
need unanimous consent.
Utility models
Section 108. Applicability of Provisions Relating to
Patents. - 108.1. Subject to Section 109, the
provisions governing patents shall apply, mutatis
mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the
right to a utility model registration in the case
referred to in Section 29, the said provision shall
apply as if the word "patent" were replaced by the
words "patent or utility model registration". (Sec. 55,
R.A. No. 165a)
When shall an invention qualify for registration as a utility
model? When it is new and industrially applicable
14
 [Sec. 109.1(a)]. So we don’t have the second requisite
of inventive step.
What is the term if the Bureau of Patents issues a patent
for a utility model? 7 years from the date of the filing and
cannot be renewed. Hanggangdoonlangsiya 7 years.
What are the grounds for cancellation?
1. That the claimed invention does not:
a. qualify for registration as a utility model and
b. meet the requirements of registrability, in particular
having regard to Sec. 109.1 and Sec. 22, 23, 24 and
27;
2. That the description and the claims do not comply with
the prescribed requirements;
3. That any drawing which is necessary for the
understanding of the invention has not been furnished;
4. That the owner of the utility model registration is not the
inventor or his successor in title.
The same old grounds. Now, let’s say siRaymund goes to the
Bureau of patent and applies for a patent registration. While
the application was pending napaisipsiya, teka sandal may
inventive step baangaking invention. Parangwala. Can he
convert his registration to an application for a registration of a
utility model? Yes, at any time before the grant or refusal of
the patent upon payment of the prescribed fees. How many
times can a conversion be made? Once lang. he cannot go
back and forth.
The other way around? Yes, if the original application is for a
utility model can he convert it into a patent registration? Yes
because it’s the same office. When? Anytime before the refusal
of the grant of utility model registration.
If you convert, what is your filing date? The initial filing date.
You will retain your initial filing date even if you convert your
application. Can you file one application for patent and the
other one for utility invention? No, whether consecutively or
simultaneously.
Ah, today I will file an application for patent
bukasnalangangisa. No, you cannot.
We will not discuss this anymore (Industrial Design and Layout
Designs). Just read. This was amended by RA 9150. Anyway
very simple, just look at the definition of industrial design. Just
take note ha, an industrial design is any composition of lines
or colors or any 3-dimensional form, whether or not associated
with lines or colors. Meaning, you design, make a drawing of a
machine or something, this can also be registered. A design,
lay-out design,
Merontayong requirements. It must be new and ornamental. It
must be original. There is also a term (5 years, renewable for
not more than 2 consecutive periods of 5 years each, by
paying the renewal fee). Anyway, I will not ask this in the
exam. I don’t think it will come out in the Bar but there’s no
harm in reading. Read the amended one, RA 9150. That is too
detailed na for the exam. We are focused on patent,
trademarks, and copyrights. 
Transcribed by: Delfin, Cherry Marie
October 25, 2013; Part 1
Let’s go to trademarks and trade names. Under Section 21,
these are the definitions:
TRADEMARK it is ___ capable of distinguishing the GOODS of
an enterprise while SERVICE MARK is capable of distinguishing
the SERIVICES of the enterprise.
On the other hand, TRADE NAME-means the name or
designation identifying or distinguishing an enterprise.
Ma’am: Can you give me an example of a trade mark and a
trade name belonging to one enterprise.
Answer:
Trade name: ADIDAS
Trademark: ___
Another answer:
Trade name: NIKE
Trade mark: the check
Another answer:
Trade name: Coca cola bottlers
Trade mark: Coca cola
Another answer:
Trade name: Procter & Gamble
Trade mark: Tide, Mr. Clean
The trade name is the name of the corporation, San Miguel
Corporation, trade mark niya yung San Miguel Pale Pilsen.
Now Service Mark, mark of an enterprise that provides
services. Like a DASIA Security Agency, diba they have this
mark, that is the service mark.
Now in the case of US vs. Kyburz GR No. 9458, Nov 24,
1914, According to the SC how do you distinguish between a
trade mark and a trade name, one of the distinguishing
characteristics of a trade name is, unlike the trade mark they
are not necessarily attached or fixed to the goods of the
owner.
HAPPY is a trademark. What is the trade name? Langoyan
Corporation (not sure). It is not necessarily connected to the
product. What is connected to the product is the trade mark.
A trade name is a name, device of mark by which is intended
to be distinguished from that of others, the business,
profession, trade or occupation. So it identifies the business
the enterprise, not the product, in which one may be engaged
in goods or manufacture sold to the public, work is done to the
public or professional services are rendered to the public.
It is not essential that trade names should appear on the
goods manufactured or dealt in by the person holding or using
the name. It is sufficient that trade name is used by way of
advertisements, signs over the place of business or letterheads
and in other ways to furnish the public a method of
distinguishing the business, trade or occupation of the person
owning or using the trade name.
So, that is the discussion of US vs. Kuburz.
Let’s start with marks whether a service mark or a trade mark.
Just like a patent or in Section 122, the rights of the mark
shall be acquired through registration made validly in
accordance with the provisions of this law.
15
There is a taxi company here, MASTERCAB, I do not know who
the owner of the taxi Mastercab. Is that a trade mark? Yes. But
is it a registered trade mark? We do not know. So there are
lots of trademarks all over. But whether it is registered or not,
it is a different story.
Only registered trademarks or service marks are protected by
law. Meaning if somebody uses your registered trademark, you
can sue, for what? INFRINGEMENT.
So, Section 123 enumerates what cannot be registered. You
can run around the place using that trademark as the
trademark of your goods, products, your service but you
cannot register.
Section 123. Registrability. – 123.1. A mark cannot be
registered if it:
a. Consists of immoral, deceptive or scandalous matter,
bastos words, you cannot use that, or matter which may
disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or
bring them into contempt or disrepute;
b. Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any
foreign nation, or any simulation thereof;
Can you put up a sari-sari store and put the flag of Japan?
Sure, why not. Can you register that? NO!
c. Consists of a name, portrait or signature identifying a
particular living individual,
Floresita wants to open an internet cafe, can she put the
picture of Jonathan there?
Sure why not, if he agrees. But can you register his picture as
your trademark? If he agrees. Your picture? That’s no problem
because that is your own face.
“the name, signature, or portrait of a deceased President of
the Philippines, during the life of his widow, if any, except by
written consent of the widow;
You cannot register the face name and signature of Ferdinand
Marcos because Imelda is still alive. Unless, she agrees.
The most important are letters d, e and f. These are the
favorite sources of BAR questions. You have to be able to
distinguish between d, e, and f.
(Ma’am is making an illustration on the board)
So here we have anything that is identical to the registered
mark, so, think about a registered mark in the Philippines. Let’s
say the Jollibee bee, let’s say it is a registered trademark of
Jollibee.
Anything identical to the bee, if you want to register something
that is similar to that bee, with a different color combination,
it's a little bit different. In respect to the similar goods or
services or closely related goods or services, which would
nearly to resemble such a mark, which is likely to deceive or
cause confusion.
So, in other words you cannot register anything that is similar,
or confusingly similar to a registered trademark. If that
trademark is registered for the same goods or services or
closely related goods or services.
Going back to that “bee”, can the picture of that bee, be
registered by X for empanada, ensaymada? NO! because it is
still food. Jollibee also serves Filipino meals.
But can that “bee” be registered for electric fan? Yes! Because
they are not closely related goods or services. That is letter “d”
of Section 123.
A registered mark in the Philippines, you cannot register
anything similar to that or closely related goods or services.
Let’s go to letter “e”
You cannot register something or a mark which is identical
with, or confusingly similar to, or constitutes a translation of a
mark which is considered by the competent authority of the
Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services:
One perfect example for that is, whether you believe it or not,
the case of SEHWANI INC. vs. IN-N-OUT BURGER INC.
GR No. 171053, October 15, 2007.
In-n-out burger used to be, not anymore a popular burger
chain in US. It’s based in California USA. In-n-out burger filed
before the BLA a complaint against this guy Sehwani, for
violation of intellectual property right.
In-n-out alleged that it is the owner of the trade name “IN-N-
OUT” and trademarks “IN-N-OUT,” “IN-N-OUT Burger & Arrow
Design” and “IN-N-OUT Burger Logo,” which are used in its
business since 1948 up to the present. These trade name and
trademarks were registered in the United States as well as in
other parts of the world, although not registered here in the
Philippines.
Now, on June 1997, In-n-out applied with the IPO for the
registration of its trade mark In-n-out, but it discovered
Sehwani has already obtained a registration for the trademark
In-n-out on December 17, 1993, 4 years earlier without his
authority.
So, In-n-out demanded that Sehwani desist from claiming
ownership of the trade mark In-n-out but Sehwani refused to
accede.
According to Sehwani, In-n-out lacks a capacity to sue because
it is not doing business in the Philippines, and its mark is not
registered here. As registered owner of the In-n-out mark,
according to Sehwani, he enjoys a presumption that it is validly
acquired and he has the exclusive right to use the mark.
ISSUE: Does In-n-out have the legal capacity to sue?
SC: Just like in patents, under Section 160, YES!. Because it is
a corporation not doing business here, it is based in USA which
is a signatory of a treaty which is the Philippines is a signatory
too.
Next issue: Is the trademark In-n-out considered as
internationally well-known?
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SC: According to the Philippines, YES!
How do you know that a mark is internationally well known?
According to Article 6 of the Paris Convention, where it
involves the US and Philippines as signatories, it governs the
protection of well known trademarks.
A trademark is protected under Article 6, if it is well known in
the country where the protection is sought.
So, who will determine if the mark is internationally well-
known?
It lies in the competent authority of the country of registration
or use.
Who is this?
The Registering authority, meaning the Bureau of Trademark.
It has the power to decide this or the court of the country in
question. It can be the Bureau of trademark or the courts.
According to the SC since the Bureau of Trademark found that
In-n-out was able to prove that its mark is an internationally
well-known mark, then it is internationally well-known.
Because Sehwani is also using that mark for burgers, it is
definitely identical or similar goods. Even if the internationally
well-known mark is not registered here, if you want to use
that, if you want to register that mark for similar goods or
services to which it is identified in its country of origin, to
which it is registered, then it cannot be registered here.
What should be taken into account to determine whether a
mark is internationally well-known, according to our IPC,
knowledge of the relevant sector of the public.
Knowledge in which has been obtained as a result of the
promotion of the mark. Do they come up in magazines, or are
they sold here in the Philippines.
The third one that you have to compare is letter “f” of Section
123, is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well – known, another
internationally well-known mark which is registered in the
Philippines.
If it is internationally well-known and it is registered here, you
cannot register that mark for any kinds of goods and services
whether similar or not.
For example that Nike Swoosh, can you use that as your
trademark in a sari-sari store? Yes you can. But you can be
sued for infringement.
Can you register that in the IPO?
Definitely not, even if it is for your longanisa. Because it is
registered here.
Like Apple trademark. You think you can register that for
potato chips? No way.
You have to be able to identify paragraphs d, e, and f.
Provided, That use of the mark in relation to those goods or
services would indicate a connection between those goods or
services, and the owner of the registered mark:
So definitely, if you use that apple trademark in your electric
fan, people will say na, ngmamanufacture na pala ngayon ang
apple ng electric fan. The interest of the owner of the
registered mark would likely be damaged by such use.
So, most of the cases are filed from here.
Let’s go through some cases.
McDonalds vs. McJoy GR No. 166115, Feb 2, 2007.
In 1991, McJoy, this is a combination of Bigmac and Chicken
Joy. McJoy engaged in the sale of fast food products in Cebu
filed in the IPO of application of the registration of the
trademark “McJoy” for fried chicken, chicken barbecue,
burgers, fries, spaghetti, palabok, halo-halo, sandwiches and
steaks.
Under the __ agreement, there are different classes of goods.
These kinds of food falls under classes 29 and 30.
McDonalds of USA filed a notice of opposition against the
McJoy application. You know where opposition is filed right?
Where? The BLA.
McDonald claims that the trademark McJoy so resembles their
corporate logo, otherwise known as the golden arches or the
“M” design. Its marks Mcchicken, Mcfries such have been used
on identical and related goods the trademark applied for would
confuse or deceive purchasers believing that the goods were
delivered from the same stores or origin.
According to McJoy, why are you accusing us of copying your
design, we used the mark McJoy for many many years already
in our restaurants in Cebu. WE spent considerable amounts
money for extensive promotion of our mark McJoy in media,
especially in Cebu, where we have been doing business long
before the McDonalds outlet opened in 1992.
Our use of the mark would not confuse affiliation with
McDonals restaurants, services, food because of differences in
details and designs of the mark.
SC: It falls under letter “d” of Section 123. It is the same
products, food products. It is confusingly similar and the mark
is registered here. The McDonalds mark.
McDonalds vs. LC Big Mac Burger
This one naman is Big Mac. It is not confusingly similar daw
with the Big Mac of McDonalds.
Big Mac has a mark of that burger that particular burger that
big burger of McDonalds is actually registered here in the
Philippines. It was registered in 1985. That Big Mac trademark.
So McDonalds is the trade name and the trade mark Big Mac is
registered.
So, ito namang LC Big Mac Burger operates a fast food outlet
to a snack buds, yung mga nakapark dyan sa labas.
LC menu includes hamburger, sandwiches and other food
items. SO LC applied in 1988 with the IPO for registration of
the Big Mac mark for its hamburger and sandwiches.
Of course this was opposed by McDonalds.
According to LCBM they have been using the name Big Mac
burger for their fast food business and that McDonalds does
not have the exclusive right to the Big Mac mark.
17
So, where does this fall? Letter “d”. Registered mark in the
Philippines and same goods and services.
There are other issues in this case which we will take up later.
We will go to some BAR questions later when we finish this.
Those are the 3 related provisions, d, e and f.
Next what cannot be registered?
Something that (g) is likely to mislead the public, particularly
as to the nature, quality and characteristics or geographical
origin of the goods or services;
So let us say you are a butcher you have a steakhouse, you
want to sell Korean beef. Can you register that? The Korean
beef? NO! because that will make people think that the meat
was processed in Korea.
Can you register tasty beef? NO! because it is likely to mislead
the public as to the characteristics or the quality of your beef.
(h) consists exclusively of signs that are generic for the goods
or services that they seek to identify
In the case of East Pacific vs. Director of Patents GR No.
L-14377, Dec 29 1960
The SC said Verbena" being descriptive of a whole genus of
garden plants with fragrant flowers, the use of term cannot be
denied to others. Meaning you cannot register Verbena
because it is a genus of fragrant flowers. So, other people can
also use the term.
But generic terms are only not registrable for the goods or
services that they seem to identify. Like “apple” you can
register apple for the fruits because it is used to identify
computers, so pwede.
(i)Consists exclusively of signs or of indications that have
become customary or usual to designate the goods or services
in everyday language or in bona fide and established trade
practice;
(j) Consists exclusively of signs or of indications that may serve
in trade to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time or production of the
goods or rendering of the services, or other characteristics of
the goods or services;
(k) Consists of shapes that may be necessitated by technical
factors or by the nature of the goods themselves or factors
that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
These are the marks that cannot be registered.
(i) (j) (k) (l), they are similar to each other. In relation to those
we have the DOCTRINE OF SECONDARY MEANING.
Under Section 123.2. As regards signs or devices mentioned
in paragraphs (j), (k), and (l), nothing shall prevent the
registration of any such sign or device which has become
distinctive in relation to the goods for which registration is
requested as a result of the use that have been made of it in
commerce in the Philippines.
So, in other words even though this particular mark or sign or
word cannot be registered under Section 123, (i) (j) (k) (l), if it
has already acquired a secondary meaning then the Bureau of
Trademarks may allow it for registration.
The case that is always cited when it comes to the Doctrine of
Secondary Meaning is the case of Ana Ang vs. Teodoro 74
Phil 50, GR No. 48226, Dec 14, 1942.
The term “Ang Tibay”. In the old days maybe in 1950s or
1960s, the term “Ang Tibay” or the brand “Ang Tibay” were
shoes, sandals. This was manufactured by Mr. Teodoro and
the buying public who is always particular about quality, would
always associate that brand “Ang Tibay with quality shoes.
Here comes Ang, wanted to use the term Ang Tibay for his
own products. So itong si Mr. Teodoro opposed.
Ang said, “Ang Tibay” cannot be registered because it is an
indication of the quality of your goods, so it cannot be
registered under the Intellectual Property Code.
SC: It can be registered by Mr. Teodoro. Because the term
“Ang Tibay” has already acquired a secondary meaning. The
Doctrine of Secondary Meaning is to the effect that a word
or phrase originally incapable of exclusive appropriation with
reference to an article of the market, because geographically
or otherwise descriptive, might nevertheless have been used
so long and so exclusively by one producer with reference to
his article that, in that trade and to that branch of the
purchasing public, the word or phrase has come to mean that
the article was his product.
What are the other terms that have acquired a secondary
meaning?
Answer: Band-aid
One case related to this is the term “Selecta”. Arce Sons vs.
Selecta Biscuit 1 SCRA 253, GR No. L-14761, Jan 28,
1961.
In the past that Selecta brand of ice cream was originated by
the Arce Group, the ARCE family. They had bakeries,
restaurant and they created that Selecta ice cream, made of
Carabao’s milk. At that time, it was not registered.
Here comes Selecta Biscuit Company. So when ARCE wanted
to register the “Selecta” name for its ice cream and other
products. It was opposed by Selecta Biscuit Company.
According to Selecta Biscuit Company, this word “Selecta”
cannot be registered because it is Spanish for select, meaning
the “cream of the crop”, so it kinda describes your product. So
it cannot be registered.
SC: The SC said the term “Selecta” has already acquired a
secondary meaning in so far as the Arce family is concerned
because they have been using that term; it identifies their
products for so long and so exclusively that in the mind of the
public, when you talk about ice cream na masarap, it is already
Selecta.
But the Arce family sold the trademark Selecta to another
entity. Now, who is producing that? I do not know who is
18
producing that. The trade mark was sold, that is why there is
that Arce ice cream. The trade mark was sold but the formula,
I am not sure if it was sold, because that is not trade mark.
The formula is patent.
Arce has its own ice cream now, which is really yummy. 
Under the old IPC, RA 165 or 166, the requirement of a
registration of a mark is prior use. That is the requisite. You
have to show the Bureau of Trademark that you have been
using this mark in your business. It is that you are using to
identify your products or services before you can register it.
But this requirement has been removed under RA 8293. The
requirement now is actual use. A declaration of actual use. It
is okay that you did not use it before registration. But after
registration you have to use it. Because there are people who
would think na gamitin natin tong pangalan na to. This is a
really nice for a business. I will register it so that nobody can
use it. If in the future I will put up a restaurant I want to put
this name.
That is fine. But Section 124.2 says, The applicant or the
registrant shall file a declaration of actual use of the mark with
evidence to that effect, you have to attach pictures, proofs as
prescribed by the Regulations within three (3) years from the
filing date of the application. You have to start using that mark
whether or not the registration has been approved or granted.
Otherwise, the application shall be refused or the mark shall be
removed from the Register by the Director.
Now, this is the requirement. DAU, Declaration of Actual
Use.
3 years from the filing date of the application.
Section 124.3 says One (1) application may relate to several
goods and/or services, whether they belong to one (1) class or
to several classes of the Nice Classification.
Now, unlike patents where you can only have one invention for
your application, you can have a duplicitous trade mark
application. Meaning, let us say you want to register your
trademark for shoes, pwede rin siya for food, for electric fan,
everything under the sun that you want to put that trademark
on. Isama mo dun sa application mo. Because if you do not, it
is just like that Omnibus Motion Rule, if it is not there in your
application for registration, you cannot stop other people from
using your trademark for a different product.
You have to make sure, if you want to register your trademark,
you include everything that you can think of that you want to
associate that mark with. So pwede mong icombine goods and
then services.
Again, the filing date, Section 127. very easy, what you
should submit for your application to be considered filed:
(a) An express or implicit indication that the registration of a
mark is sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the applicant or his
representative, if any;
(d) A reproduction, a picture, of the mark whose registration
is sought; and
(e) The list of the goods or services for which the registration
is sought.
And then pay the required fees.
This one you already know. Priority Rights. Same as patents
Look at the beauty of this Section 31 for patents. Section 131
for trademarks.
Section 131.2 No registration of a mark in the Philippines by
a person described in this section shall be granted until such
mark has been registered in the country of origin of the
applicant.
Take Note: for the priority right to apply, if X applied in the
Philippines for a registration on June 1 and then Y applied in
the Philippines for registration on July 1 and then he (Y)
applied in his country on April 1, in his country of origin.
This one should be granted first. Before this application can be
granted. Until such mark has been registered in the country of
origin. (ma’am is making an illustration sa board wala ko
kabalo unsa iyang ginarefer na mgrant first, kung si X ba or Y).
Take Note under Section 131.3, said registrant cannot sue
for the acts committed prior to the date for which his mark is
registered in the Philippines.
(ma’am referring sa illustration sa board)
Even though there is an application kung walang registration,
the applicant cannot sue for infringement. That is the
difference between trademarks and patents.
For patents, once the application has been published,
somebody replicates the product, manufactures the same
product, there is already a right to sue given to the applicant
for the patent.
But that applicant for trademark registration, as long as the
registration has not been granted, there is no way. Kahit
marami ang gagaya, it is not registered, so there is no
infringement.
But, the owner of a well-known mark as defined Section (e),
that is not registered in the Philippines, like the In-n-out, for
example it is internationally well-known but it is not registered,
it can sue against an identical or confusingly similar mark or
oppose its registration or petition the cancellation of its
registration or sue for unfair competition, so even though it is
not registered here, if it is internationally well-known, it can
sue. But it cannot sue for trademark infringement, dahil wala
siyang trademark dito.
(ma’am referring sa illustration sa board)
Opposition cases. Who can file?
Section 134. Any person who believes that he would be
damaged by the registration of a mark, so ikaw Floresita if you
are trying to register the face of Jonathan as your trademark
he can oppose, because definitely he will be damaged if you
register his face in your sari-sari store. 
When?
A: Within thirty (30) days after the publication of the
application. Just like patents, the application must be
published.
Where can you file the opposition?
A: BLA.
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Very easy sa trademark there is no __ and examination the
only thing that needs to be determined is the compliance with
Section 123. If it passes the Section 123 tests then, the Bureau
of Trademark will issue and publish the Certificate of
Registration.
When shall it be issued?
A: When the period for filing an opposition expires. Ipupublish
yung application eh, so if nobody opposes, then because
before publication they would still have to determine if it
passes the Section 123 tests, then there is no opposition.
Or there may be an opposition, but the opposition is denied.
Then the Certificate of Registration will be issued and
published.
Where will it be published?
A: The IPO gazette.
Take Note: Section 138. A Certificate of Registration shall be
a prima facie evidence of the validity of the registration and
that the registrant’s ownership of the mark and of the
registrant’s exclusive right to use the same in connection with
the goods or services and those that are related thereto
specified in the certificate.
So if it is registered, the registrant has the exclusive right to
use the mark for the goods and services that he listed down in
his application and written down also in the certificate.
Section 145. Once a Certificate of Registration is issued it
shall remain in force for ten years.
What is the requirement?
A: The DAU or the Declaration of Actual Use or show valid
reasons based on the existence of obstacles to such use, if you
were not able to use it within the period of 3 years from filing
you have to give reason why within one year from the fifth
anniversary of the date of the registration of the mark.
Otherwise the mark can be removed from the Register.
Transcribed by: Paz, Ivy Rose
Oct. 25, 2013; Part 2
So Let’s continue.
So a registered mark is good for 10 years. 10 years from the
issuance of the certificate. Before that there was no
registration, there is no trademark register unlike in patent so
this can be renewed every 10 years. A certificate of
registration may be renewed every 10 years and every 10
years after that.
So what are the rights conferred to the owner of a registered
mark? Sec. 147. xxx “Shall have the exclusive right to prevent
all third parties not having the owner’s consent from using in
the course of trade identical or similar signs or containers for
goods or services which are identical or similar to those in
respect of which the trademark is registered where such use
would result in a likelihood of confusion.” So if you applied for
registration you have to include everything, the drawings of
the container if it is a box, if it is a carton, a bottle, ung label
mo, everything should be included so if ever somebody copies
it then that person or entity can be sued of infringement.
“In case of the use of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.” If the
signs are identical, the nike __, also for rubber shoes then
obviously, you don’t have to think about it. Like those sold
there in DCLA, ung crocs dba how much was it? P75 nlng ata
but if you go to the crocs store in abreeza 3K ang isa? And you
see exactly the same in DCLA and only for 75 or 3 for 100. You
think the customer would be confused? Obviously not. The
likelihood of confusion is presumed. Obviously if you only pay
75 crocs that means you buy fake. It is comfortable nman so
who cares but I am not promoting fake products ha, im just
saying.
Now, going back to well-known mark registered here in the
Philippines, “the exclusive right of the owner of a well-known
marks registered here extend to the goods and services not
similar to which the mark is registered.” As long as you are
international well known mark registered here, nobody can
register anything and nobody can use it for anything at the risk
of being sued for infringement. Look at mastercab, it is
confusingly similar with mastercard, just look at the logo, the
two circles dba, now the question is like dba ganito yan if
mastercard is not register here in the Philippines ung kanyang
trademark, pede gamitin ni (ung may-ari ng mastercab) under
Sec. 123 D or E kasi it falls with different products taxi nman
ung isa, ung isa credit card. But if it is registered here, he can
be sued for infringement because it is definitely confusingly
similar and don’t tell me it is not. “Provided that use of that
mark in relation to those goods or services…we already talk
about this.
So, if there is a limitation to the right of a patentee, registered
owner of the mark cannot preclude third parties from using
bona-fide their names, addresses, pseudonyms etc. I just want
to read this article. How Cesar Gawpo got rob of his name.
(read the article)
Anyway, can a registered mark be transferred or assigned?
Yes. ung Selecta trademark; transferred by the Arci family to I
don’t know who bought it first but how about the business?
transferred as well? The answer is no. binenta lang nila ang
pangalan bahala sila maghanap ng formula ng ice cream that
the public will buy.
When such transfer or assignment be null and void? If it is
liable to mislead the public, particularly as regards the nature,
source, manufacturing process, characteristics or suitability for
their purpose, of the goods or services to which the mark is
applied.
How do you transfer your registered trademark? It shall be in
writing, signed by the contracting parties and recorded at the
IPO. It must be recorded there so the IPO will know who is
now the registered owner. Sec. 149.5 says that assignments
and transfers shall have no effect against third parties until
they are recorded at the Office.
Sec. 151. Cancellation.
Who can file? Any person who believes that he is or will be
damaged by the registration of a mark.
What to file? Petition to cancel.
Where? Again, BLA.
Prescriptive period for cancellation of registered mark? 5 years
from the date of the registration. That is the general
prescriptive period. Just like those grounds of Sec. 123, you
want the trademark to be cancelled because it falls under any
20
of those in 123 provisions, 5 years only otherwise the action
prescribes. But there is a provision which gives us grounds for
cancellation which do not prescribed. These grounds are
available at any time.
The petition for cancellation may be filed at anytime:
1. if the registered mark becomes the generic name for the
goods and services or a portion thereof, for which it is
registered;
2. registered mark has been abandoned;
3. its registration was obtained fraudulently or contrary to the
provisions of this Act;
4. if the registered mark is being used by or with permission
of, the registrant so as to misrepresent the source of the
goods or services on or in connection with which the mark is
used; and
5. failure to use the mark here in the Philippines during the
uninterrupted period of 3 years or longer.
So these grounds are available at anytime for cancellation. But
if the grounds are under Sec.123 meaning the mark cannot be
registered because of this and that, 5 years from date of
registration.
So the requirement upon registration is that actual use of the
mark. Under Sec. 152 when is the non-use of the mark
excused.
If caused by circumstances arising independently of the will of
the trademark owner. Naaresto xa, solitary confinement.
Is lack of funds excused? The answer is No.
What if the mark is used in form different from the form in
which it is registered which does not alter its distinctive
character? (nag.drawing sa board: sign within the circle tas
tinangal ung circle but it does not alter its distinctive
character). It is not a ground for cancellation of removal.
Meaning, substantial compliance, parang ginamit mo narin ang
registered mark.
What if the mark is use in connection with one or more of the
goods or services belonging to the class in respect of which the
mark is registered? It shall prevent its cancellation or removal
in respect of all other goods or services in the same class. If
you have 100 kinds of goods or services in your registration
and you only use it for one product, that’s fine. That is already
tantamount to actual use.
Sec. 154. Cancellation. If the BLA finds that a case for
cancellation has been made out, it shall order the cancellation
of the registration. When the order or judgment becomes final,
any right conferred by such registration upon the registrant or
any person in interest of record shall terminate. Notice of
cancellation shall be published in the IPO Gazette.
So Let’s go to infringement-Sec. 155.
What is infringement then? It is the use by others of a
reproduction or colorable imitation of a registered trademark,
tradename or service mark, without the consent of the
registrant, with the purpose of causing to mislead or
misleading the public that such goods or services are those of
the registrant.
So only REGISTERED trademarks, or service marks are
protected against infringement. If you did not have your
certificate of registration kahit 20 years ago mo pa file ang
application mo, you are not protected.
Sec. 155.1 Use in commerce Any reproduction, counterfeit,
copy, or colorable imitation of a registered mark, or the same
container or a dominant feature thereof in connection with the
sale, offering for sale, distribution, advertising of any goods or
services including other preparatory steps necessary to carry
out the sale of any goods or services or in connection with
which such use is likely to cause confusion, or to cause
mistake, or
to deceive;
Definitely, those marks that are similar to popular
brands/marks, the purpose is really there, why on earth would
a person go on his way to try to imitate popular brand? That is
to cause confusion or to deceive.
Sec. 155.2 Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles 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 on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to
deceive.
So lets focus on trademark.
How do you know that there is infringement?
The test is not the exact imitation but colorable imitation.
Colorable imitation is such a close or ingenious imitation as to
be calculated to deceive ordinary purchasers, or such
resemblance of the infringing mark to the original as to
deceive an ordinary purchaser giving such attention as a
purchaser usually gives, and to cause him to purchase the one
supposing it to be the other.
And there are two tests to determine whether colorable
imitation exists:
1. Holistic Test – Mandates that the entirety of the marks in
question must be considered in determining confusing
similarity, or
2. Dominancy Test – Infringement takes place if the
competing trademark contains the main or essential features
of another, and confusion and deception is likely to result.
Duplication is not necessary, nor is it necessary that the
infringing label should suggest an effort to imitate.
And of course the landmark case of Asia Brewery vs CA & San
Miguel Corp. Now you all know that San Miguel Beer Pale
Pilsen is an amber-colored bottle with white print. Everybody
knows what it looks like kahit di ka pa umiinom dba? And here
comes Asia Brewery with its Beer na Beer, the same colored
bottle, same white print. Confusing? Is that bottle packaging of
Beer na Beer confusingly similar with San Miguel. So San
Miguel filed an action for infringement against Asia Brewery
saying that because of this Beer na Beer, their sales went
down, blaming it to infringement. But the Supreme Court said
applying the dominancy test, you look at the dominant feature
of the two bottles, you will see a lot of dissimilarities. Supreme
Court said The dominant feature of SMC's trademark is the
name of the product written in white Gothic letters, Asia
Brewery the dominant feature is the word "Beer" written in
large amber letters, larger than any of the letters found in the
SMC label. San Miguel the word "BEER" does not appear. Asia
Brewery the words "SAN MIGUEL" do not appear. There is
absolutely no similarity in the dominant features of both
trademarks.
21

What are the other dissimilarities? In SMC, the bottle has a
slender tapered neck while in AB the bottle has a fat, bulging
neck. "pale pilsen" on SMC's label are printed in bold and laced
letters along a diagonal band; "pale pilsen" on AB's bottle are
half the size and printed in slender block letters on a straight
horizontal band. What about the back? The back of SMC's
bottle carries no slogan. On the back of AB's bottle is printed in
big, bold letters, under a row of flower buds and leaves, its
copyrighted slogan: "BEER NA BEER!" The back of the SM
PALE PILSEN bottle carries the SMC logo. The back of BEER
PALE PILSEN bottle has no logo. Bottle cap is stamped with a
coat of arms and the words "San Miguel Brewery" encircling
the same. Bottle cap is stamped with the name "BEER" in the
center, surrounded by the words "Asia Brewery”. SMC was sold
for P7 per bottle at that time 1993 while Beer na Beer was sold
for P4.25 per bottle. One who pays only P4.25 for a bottle of
beer cannot expect to receive SMPP from the storekeeper or
bartender. The names of the manufacturers are prominently
printed on their respective bottles.
What about the term “pilsen”? Sabi ng SMC kami ang dapat
gumamit ng word na “pilsen”, we have been using that since
time immemorial. The Supreme Court said that the fact of SMC
using “pale pilsen” in their registered trademark does not
constitute infringement. Why? Because “pale pilsen” are
generic words descriptive of the color ("pale"), of a type of
beer ("pilsen"), which is a light bohemian beer with a strong
hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages.
"Pilsen" is a "primarily geographically descriptive word," hence,
non-registerable and not appropriable by any beer
manufacturer.
So even if San Miguel has a registered trademark of San
Miguel Beer Pale Pilsen, the “pale pilsen” term is not
registrable and can be use by others.
Now, what about the possibility of confusion? According to the
SC how can anyone be confuse? Where do you buy beer? Do
you buy beer in supermarket? Do you ask “inday, buy me beer,
san Miguel beer day.” Do you think inday knows what san
Miguel beer bottle looks like?--- She will look at the name. ang
sugo man gud kay san Miguel so san Miguel talaga ang bilhin
nia. Where else do you buy beer? You buy it by case. You
order one case of san Miguel beer. You think the kargador will
be confused? San Miguel ang g.order, San Miguel ang iload. In
restaurant, “beer please” and tubag, “anong klase sir?”do you
think the waiter will give whatever he wants? Unless the
restaurant is serve exclusive. So SC said how can you be
confused? When it comes to beer, the purchaser knows what
he wants. Anyway, you read the case.
Is fraud essential in the infringement of trademark? No. the
mere use of a similar mark likely to mislead the public is
sufficient to constitute infringement. As long as there is
registered trademark, you use something similar in a same
good or for well known mark even if for different
good/services, you can be liable for infringement.
Can the Infringer be Liable for to Owner of Registered Mark?
Sec. 156.
1. Damages. Gusto kasi ng SMC, the loss profits that they
experienced will be paid by Asia Brewery.
It shall either be the reasonable profit which the owner would
have realized if not for the infringement, or the profit which
the infringer actually made out of the infringement, or a
certain percentage over the gross sales of infringer, in the
event such measure of damages cannot be readily ascertained.
2. Impounding of sales invoices and other documents
evidencing sales
3. Damages may be doubled in cases where actual intent to
mislead the public or to defraud the registered owner
4. Injunction to prevent further use of trademark
5. Destruction of goods found to be infringing and all related
paraphernalia
Now, Sec. 158 In any suit for infringement, the owner of the
registered mark shall not be entitled to recover profits or
damages unless the acts have been committed with
knowledge that such imitation is likely to cause confusion, or
to cause mistake, or to deceive.
Such knowledge is presumed if:
1. the registrant gives notice that his mark is registered by
displaying with the mark the words "Registered Mark"
or the letter R within a circle (this is the indication that
mark is registered) or
2. if the defendant had otherwise actual notice of the
registration.
You look around you. You see this mark, store, malay mo ba if
registered yan. But is there is R there then you know.
Limitations to Actions for Infringement.
What does not constitute infringement? Under Sec. 159.1 a
registered mark shall have no effect against any person who:
1. in good faith,
2. before the filing date or the priority date,
3. was using the mark for the purposes of his business or
enterprise:
4. Provided, That his right may only be transferred or
assigned together with his enterprise or business or with
that part of his enterprise or business in which the mark is
used.
Let’s say, this mark already registered to X and have been
using it on his product. Yun pla si Z has been using exactly this
same mark even before for his pancit canton. So when X found
that Z has been using it for his pancit canton, can he sue for
infringement? If Z had been using it long before the filing date,
then Z cannot be sued for infringement. Now look at this
“Provided, That his right may only be transferred or assigned
together with his enterprise or business xxx” earlier we look at
a provision which says assign you trademark, you do not have
to assign your good to it. But if this person Z, had been using
this mark of X wants to sell his pancit canton business, he
cannot sell the mark because he does not own the mark. If he
wants to transfer it, it must go with the business and the
transferee or assignee can still use the same mark but only for
pancit canton.
Now, xmpre no ung mga packaging involves printing. Ung mga
advertisement.
Sec. 159.2 states where an infringer who is engaged solely in
the business of printing the mark or other infringing materials
for others is an innocent infringer, the owner of the right
infringed shall be entitled as against such infringer only to an
injunction against future printing.
22

Nagdala lng ng template si X, malay ba ni printer if this is an
infringing mark. So the printer, he was only ask to print. He is
an innocent infringer. What can the registered owner do? Just
stop the printer from printing the infringing materials.
What if the infringement is contained or is part of a paid
advertisement a newspaper, magazine, or other similar
periodical or in an electronic communication. Nasa internet na,
Philippine star, inquirer.
The remedies of the owner of the right infringed as against the
publisher or distributor of such newspaper, magazine, or other
similar periodical or electronic communication shall be limited
to an INJUNCTION against the presentation of such advertising
matter in future issues of such newspapers, magazines, or
other similar periodicals or in future transmissions of such
electronic communications.
This is not against accomplices of the crime. The publisher only
prints. Magbabayad lng ng fee if gusto magpapublish dba.
Injunctive relief shall NOT be available to the owner of the
right infringed meaning the registered owner, with respect to
an issue of a newspaper, magazine, or other similar periodical
or an electronic communication containing infringing matter
where restraining the dissemination of such infringing matter
in any particular issue of such periodical or in an electronic
communication would delay the delivery of such issue, or
transmission of such electronic communication is customarily
conducted in accordance with the sound business practice, and
not due to any method or device adopted to evade this
section, or to prevent or delay the issuance of an injunction or
restraining order with respect to such infringing matter.
Sec. 160 the same as patents. What can a foreign entity do?
File a case for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false
description, whether or not it is licensed to do business in the
Philippines under existing laws.
Lets go to this. Authority to determine the right to registration.
Dba opposition cases & cancellation cases are filed with BLA.
What do you normally file in court? Infringement cases. The
court will determine the right to registration or order the
cancellation of a registration, in whole or in part, and
otherwise rectify the register with respect to the registration of
any party to the action in the exercise of this.
The court then again can cancel trademark registration and
infringement case.
Judgment and orders shall be certified by the court to the
Director of trademarks, who shall make appropriate entry upon
the records of the Bureau, and shall be controlled thereby.
So no need to go to another cancellation case with BLA.
Lets go to some cases:
CANON KABUSHIKI KAISHA v. CA
NSR Rubber filed an application for registration of the mark
CANON. You know this as a brand for camera. NSR Rubber
filed an application for registration of the mark CANON for
SANDALS. An Opposition was filed by CANON KABUSHIKI
KAISHA [CKK], a foreign corporation duly organized and
existing under the laws of Japan, alleging that it will be
damaged by the registration of the trademark CANON in the
name of NSR.
The evidence presented by CKK consisted of its certificates of
registration for the mark CANON in various countries covering
goods belonging to class 2 consisting of paints, chemical
products, toner, and dye stuff. And it has Philippine Trademark
Registration No. 39398, showing its ownership over the
trademark CANON also under class 2.
CKK alleges that it is entitled to exclusive use of the mark
CANON because it is its trademark and is used also for
footwear. Naka.register xa sa with paint but they also have
footwear.
BLA dismissed the opposition of CKK and gave due course to
NSR's application for the registration of the trademark CANON.
What is this? This is paragraph D of Sec. 123.
According to the SC, there is a world of difference between the
paints, chemical products, toner, and dyestuff of CKK and the
sandals of NSR.
Then another case. “Gold Toe” and “Gold Top”. Cluett Peabody
(a New York corporation) claims exclusive ownership of the
trademark GOLD TOE as used on men's socks and it is
registered here in the Philippines. And here comes Amigo who
was able to get registration for GOLD TOP also for men’s
socks. Medyas ng lalaki ba. (everyone laughs!☺) Cluett filed a
case against Amigo for cancellation of trademark. According to
Amigo, how can Gold toe and Gold top confusingly similar? But
SC said they are confusingly similar and besides they are both
for men’s socks. Buti sana kung ibang product ung Gold top.
So registration of Amigo was cancelled.
Let me just go through the list. There is this case Prosource vs
Horphag where the SC listed all those confusingly similar
sounding names although not identical but this is for the same
products.
1. Salonpas & Lionpas, what is the popular one, salonpas dba,
lionpas not allowed registration.
2. Gold Dust & Gold Drop, confusingly similar but I don’t know
what product.
3. “Jantzen” and “Jass-Sea”, confusingly similar
4. “Silver Flash” and Supper Flash”
5. “Cascarete” and “Celborite” remember, we are talking about
same products.
6. “Celluloid” and “Cellonite”
7. “Cutex” and “Cuticlean”, what is popular one? cutex.
8. “Hebe” and “Meje”
9. “Kotex” and “Femetex”
10. “Zuso” and Hoo Hoo.”
11. “Yusea” and “U-C-A,”
12. “Steinway Pianos” and “Steinberg Pianos,”
The subject of this case is the term PYCNOGENOL, a food
supplement manufactured by Horphag , Switzerland and
distributed by Zuellig Pharma. Prosource of the Philippines
wanted to register PCO-GENOLS. According to SC, NO. what
did the Prosource do? They change it. Sabi ng SC, uu you can
change it but still you committed acts of infringement.
Before we go, there is still important case that I want to
discuss. These are two cases.
This is the case of Shangri-la vs CA. Now, in 1988, the
Shangri-la Group, this is the Shangri-la Hotels, Makati
Shangri-la & Edsa Shangri-la filed a petition for cancellation of
the registration of the “Shangri-La” mark and “S” device/logo.
Apparently, before the Shangri-la group entered in the
Philippines, the first hotel that they build was Edsa Shangri-la
23
then the Makati Shangri-la. But previous to that there was
already another group, DGC (Developers Group of Companies)
able to register that term Shangri-la & S-logo.
The Shangri-La Group alleged that it is the legal and beneficial
owners of the subject mark and logo; that it has been using
the said mark and logo for its corporate affairs and business
since March 1962 and caused the same to be specially
designed for their international hotels in 1975, much earlier
than the alleged first use thereof by the Developers Group in
1982.
Aside from the petition for cancellation, Shangri-la group also
filed its own application for registration of the subject mark
and logo. So while the cancellation case was pending, Shangri-
la constructed the Edsa Shangri-la. So what did DGC do? In
1991, instituted an action for infringement against Shangri-la
Group.
The Shangri-La Group moved for the suspension of the
proceedings in the infringement case on account of the
pendency of the cancellation case file with the BLA. But RTC
denied.
DGC likewise filed in the cancellation case a motion to suspend
the proceedings because of the pendency of the infringement
case. BLA denied.
Can these two cases proceed together? Yes. The RTC ruled in
favor of DGC & held Shangri-la for infringement. It reached
into the SC and the issue was whether or not the two cases
can proceed together and at the end of the case, the SC said
“With the decision of the Regional Trial Court upholding the
validity of the registration of the service mark “Shangri-La” and
“S” logo in the name of Developers Group, the cancellation
case filed with the Bureau hence becomes moot.” So there is a
decision in 1 venue then the other case becomes moot. Let
ssay nauna ang BLA, if it cancels the registration of DGC, then
what is the point of proceeding with the infringement in there
is no more registered trademark.
However in the next case between Shangri-la & DGC, the SC
gave a short history of both sides. The Kuok family owns and
operates a chain of hotels with interest in hotels and hotel-
related transactions since 1969. As far back as 1962, it
adopted the name "Shangri-La" as part of the corporate names
of all companies organized under the aegis of the Kuok Group
of Companies (the Kuok Group). Kouk as Trade name and the
Shangri-la & S-logo as trademark.The S-logo was
conceptualized by commissioned design artist William Lee &
launched it in Feb. 1975. Since 1975 and up to the present,
the "Shangri-La" mark and "S" logo have been used
consistently and continuously by all Shangri-La hotels and
companies in their paraphernalia, such as stationeries,
envelopes, business forms, menus, displays and receipts. To
centralize the operation of all Shangri-la hotels, the Kuok
Group had incorporated in Hong Kong and Singapore, among
other places, several companies that form part of the Shangri-
La International. So that is now the tradename, Shangri-la
International. In 1987, put up the Edsa Shangri-la & Makati
Shangri-la. & bcoz of that they were sued for infringement.
Ano naman ang kwento ng DGC? Ramon Syhunliong, President
of DGC testified that he has business interest with restaurant
name“Shangri-la” using the same S-logo. According to him, he
traveled around Asia prior to 1982, and admitted knowing the
Shangri-La Hotel in Hong Kong as early as August 1982.
According to him on how he comes up with the S-logo, the "S-
logo" was one of two (2) designs given to him in December
1982, scribbled on a piece of paper by a jeepney signboard
artist. The unnamed artist supposedly produced the two
designs after about two or three days from the time he
(Syhunliong) gave the idea of the design he had in mind.
October 15, 1982, the unknown signboard artist supposedly
created the "Shangri-La" and "S" designs. DGCI was
incorporated with the primary purpose of "owning or
operating, or both, of hotels and restaurants". On October 18,
1982, again prior to the alleged creation date of the mark and
logo, DGCI filed an application for trademark registration of the
mark "SHANGRI-LA FINEST CHINESE CUISINE & S. Logo". So
nauna ang application bago ang submission of the design. And
in 1983, DGC had gotten its certificate of registration therefor.
He is very stupid. He testified & from that alone it clearly
showed that he stole the logo of Shangri-la.
This was decided under the old law. What was the _ was prior
use. So sabi ng SC in order to register a trademark, one must
prove prior use. Prior to 1982, did you use that? No. So you
DGC is not entitled to register the trademark because it was so
obvious that DGC copied it.
What about the bad faith of DGC? The fact that he copied the
logo. It is a ground for cancellation? Nanduon ba un sa
grounds natin? The SC said Yes. Not because of the law but
because one who imitated a trademark of another cannot bring
a case for infringement particularly against the real owner of
the mark because he would be coming to the court with
unclean hand. Priority is of no avail to the bad faith plaintiff.
Good faith is required in order to ensure that a second user
may not merely take advantage of the goodwill established by
the true owner.
So here the SC declared DGC’s mark of Shangri-la & S-logo is
void.
♥Crisz Gogo♥
-end-
Transcribed by: Gogo, Forcrissa
October 29, 2013; Part 1
Where do you register a trade name? Where do you register a
trademark? Meron bang Bureau of Trade name? The answer is
that you don’t have to register a trade name.
Q: When can a name or designation not be used as a
trade name?
A: A name or designation may not be used as a trade name:
1. if by its nature or the use to which such name or
designation may be put, it is contrary to public
order or morals and
2. if, in particular, it is liable to deceive trade circles or
the public as to the nature of the enterprise identified
by that name [Sec. 165.1]
So, for example, can you use Mr. Clean as a tradename? That
will confuse the public.
24
Note: Notwithstanding any laws or regulations providing for
any obligation to register trade names, such names shall be
protected, even prior to or without registration, against any
unlawful act committed by third parties [Sec. 165.2(a)]
When we look at the registration of trademarks, nothing is said
about the registration of tradenames. Why? Because the trade
name is the name of your company. It can be your business
name, if you are a single-proprietorship business. Where do
you register that? Mayor’s office, DTI, wherever. If it is a
corporation, where do you register? SEC. So,
notwithstanding any laws or regulations providing for
any obligation to register. But, it is said here, where do you
register? As long as it is your trade name, it identifies your
business, it is protected against any unlawful act committed by
third parties.
Q: What are acts deemed unlawful when it comes to
trade name?
Sec. 165.2(b) – Acts Deemed Unlawful:
1. Any subsequent use of the trade name by a third party,
whether as a trade name or a mark or collective mark;
So, can you use San Miguel as your trademark? No way. And it
is the trade name of San Miguel Corporation
2. Or any trade name of any person, if it is used by anyone
as a trademark, service mark;
3. Any such use of a similar trade name or mark, likely to
mislead the public
Note:
1. The remedies provided for in Sec. 153 to 156 and Sec.
166 and 167 shall apply mutatis mutandis. [Sec. 165.3]
There is such a thing as infringement of trade names even
though it is not registered.
2. Any change in the ownership of a trade name shall be
made with the transfer of the enterprise or part thereof
identified by that name.
Remember the case of Selecta. The trade name was not
Selecta, it was Arce. So, the Arce Family was able to sell the
trademark, Selecta without selling the business or the formula
of the ice cream. But, if you want to sell your trade name, like
if San Miguel Corporation is sold, then everything has to go
with it.
3. The provisions of Sec. 149.2 to 149.4 shall apply mutatis
mutandis.
Sec. 166. Goods Bearing Infringing Marks or Trade
Names
No article of imported merchandise which:
1. shall copy or simulate the name of any domestic
product, or manufacturer, or dealer, or
2. which shall copy or simulate a mark registered in
accordance with the provisions of this Act, or
3. shall bear a mark or trade name calculated to induce
the public to believe that the article is manufactured in:
a. the Philippines, or
b. any foreign country or locality other than the country
or locality where it is in fact manufactured,
shall be admitted to entry at any customhouse of the
Philippines.
Like for example, there was a time when one of the plants in
Canlubang was flooded and they were not able to manufacture
the cars, some of the vehicles produce by Honda here in the
Philippines. So, there was a time when the vehicles of Honda
came from Bangkok. You cannot bring in the vehicles and
place there that it was made in the Philippines.
Cases on Trademarks and Trade names
Levis Strauss vs Vogue (2005)
You know Levi Strauss, so we don’t have to go to the whole
discussion.
The Levis Strauss is the trade name, and Levi Strauss USA is
the trademark.
The Levis is registered here in the Philippines. Levis discovered
that there is a registration under the name of Vogue Fashions,
and the trademark registered is LIVES for jeans. Levis applied
for a search warrant and raided the warehouse of Vogue.
Vogue filed a complaint for damages against Levis. So, there
was a complaint for damages against Levis. Levis, on the other
hand, filed their answer with counterclaim alleging that there
was infringement and damages.
ISSUE: Can Levis file a counterclaim for infringement in an
action for damages?
SC: YES.
The jurisdiction belongs to the RTC, so, it does not matter
whether it is the main case or the counterclaim.
SC ruled that there was infringement or colorable imitation
between Levis jeans and Lives jeans.
Diaz vs People (2013)
Still involves Levis Strauss.
Levis Strauss 501 brand has two horses pulling a pair of pants.
Levis received information that Diaz was selling counterfeit
Levis jeans in his tailoring shop. Diaz alleged that he did not
manufacture Levis jeans, rather LS jeans tailoring. The label of
LSC jeans tailoring was registered with IPO with buffalos as
the design. His shop makes made-to-order jeans in accordance
to the instructions of the customers, and that the alleged
horses were not horses, rather are buffalos.
In the other case, Vogue was held liable for infringement. In
this case, the SC ruled that there was no infringement,
because the likelihood of confusion is missing. If you apply the
wholistic test you can see between the two patches that they
are not confusing. Levis 501 is different from LS Jeans. If you
look closely, the horses are really buffalos.
But the main reason why the SC said that there is no
infringement because, where do you buy your new Levi
Strauss jeans? You go to malls and department stores. But, in
tailoring shop, you don’t buy ready-made, you order.
25
The SC said that the products involved are various kinds of
jeans. They are not ordinary household items like ketchup, soy
sauce or soap, jeans are not inexpensive. The casual buyers
are more cautious in purchasing. So, confusion there is
less likely to happen. The average consumers generally
buy these jeans by brand. They buy specific brand in a
particular shop, they just not ask for jeans, rather Wrangler,
Bench, or others. The consumers are more or less
knowledgeable or familiar with their preference and
cannot be easily be distracted.
The market of Levis definitely will not go to Diaz tailoring shop
and buy jeans there. The customers of Levis are those
who belong to class A and B. while Diaz’s customers
are those that belong to class D and E for they are only
sold for only 300 for every pair of pants.
But, naturally, people, instead of buying Levis jeans, dun ka na
lang sa 300. (haha!)
Just like the Asia Brewery Case, there was no infringement.
Mattel, Inc. vs Francisco
Facts:
On Nov. 14, 1991, Jimmy Uy filed a trademark application with
the Bureau of Trademarks of the IPO for registration of the
trademark “BARBIE” for use on confectionary products such s
milk, chocolate, candies, milkbar and chocolate candies in
Class 30 of the International Classification of Goods.
On July 19, 1993, Mattel, a corporation organize under the
laws of the USA, filed with the BLA of the IPO a Notice of
Opposition against Uy’s “Barbie” trademark as the latter was
confusingly similar to its trademark on dolls, doll clothes, and
doll accessories, toys, and other similar commercial products.
Uy files his Answer to the Notice of Opposition denying and
giving due course to Uy’s application for the registration of the
trademark “Barbie” used on confectionary products. The
Director held that there was n confusing similarity between the
two competing marks because the goods were non-competing
or unrelated.
Mattel appealed to the Director General, IPO.
On September 3, 2003, Emma Francisco, the Director General,
denied the appeal on the ground that there was no proof n
record that Mattel had ventured into the production of
chocolates and confectionary products under the trademark
“Barbie” to enable it to prevent Uy from using an identical
“Barbie” trademark on said goods; that the records were bereft
of the fact that the Director of the Bureau of Trademarks
(BOT) gas already declared the subject trademark application
abandoned due to the non-filing of the Declaration of Actual
Use (DAU) by Uy.
Mattel argues that:
1. its products are items related to Uy’s products, hence,
identical trademarks should not be used where the
possibility of confusion as to source or origin of the
product is certain;
2. the Director General of the IPO has the power ro act
on a pending trademark application considered as
“withdrawn” for failure to file the DAU;
3. by adopting an exactly identical mark, in spelling and
style, Uy should be presumed to have intended to
cash in or ride on the goodwill and widespread
recognition enjoyed by Mattel’s mark.
On the other hand Uy submits that the case has become moot
and academic since the records of the IPO will show that no
DAU was filed on or before Dec. 1, 2001, thus, he is deemed
to have abandoned his trademark application for failure to
comply with the mandatory filing of the DAU.
ISSUE: Has the case has been rendered moot and academic?
HELD: YES.
Uy’s declaration in his Comment and Memorandum before this
Court that he has not filed the DAU as mandated by pertinent
provisions of RA 8293 is a judicial admission that he has
effectively abandoned or withdrawn any right or interest in the
trademark.
Sec. 124.2 of RA 8293 provides that: The applicant or the
registrant shall file a declaration of actual use of the mark
with evidence to that effect, as prescribed by the Regulations
within 3 years from the filing date of the application.
Otherwise, the application shall be refused or the mark shall be
removed from the Register by the Director.
In the present case, Mattel is seeking a ruling on whether Uy’s
“Barbie” trademark is confusingly similar to it’s (Mattel)
“Barbie” trademark.
Given Uy’s admission that he has effectively abandoned or
withdraw any rights or interest in his trademark by his non-
filing of the required DAU, there is no more actual controversy,
or no useful purpose will be served in passing upon the merits
of the case. It would be unnecessary to rule on the trademark
conflict between the parties. A ruling on the matter would
practically partake of a mere advisory opinion, which falls
beyond the realm of judicial review. The exercise of the power
of judicial review is limited to actual cases and controversies.
Courts have no authority to pass upon issues through advisory
opinions or to resolve hypothetical or feigned problems.
EY Industrial vs Shen Dar
- Shendar is a manufacturer of air compressors.
- EY is the distributor of the air compressors of Shen
Dar. They alleged that the air compressors do not
have marks other than SD.
- EY sold these compressors as VESPA Air Compressors
without registering yet.
- Shen Dar found out applied on June 9, 1997; the
application was approved on February 8, 2007 for
VESPA as trademark.
- EY also applied on July 28, 1999; approved January
18, 2004 for VESPA
- Shen Dar filed for the cancellation of EY’s cancellation
contending that there was violation of Sec. 123.1 (d),
which you cannot register something which is similar
to a mark that has earlier filing date, and that EY are
only distributors of the air compressors
- EY alleged that they are the real owner of VESPA
ISSSUE: Who is entitled to the tradename VESPA?
HELD:
26
When we talk about trademark, we are just talking about the
mark. It does not include the product. Shen Dar is the
manufacturer of the product, but they did not name the
product as VESPA. It was EY that named the VESPA, and used
the VESPA, even though they were only the distributors.
It was EY that actually used the trademark through the use of
receipts, and other documents.
The first to file rule – According to the SC that Shen Dar
filed under the old IPC where prior use is the one applied.
ISSUE: Has the BLA the power to cancel the appllcation of
Shen Dar, even it is Shen Dar who filed the case?
HELD: Remember, EY’s application was the one granted, and
it is Shen Dar’s application that was cancelled.
It does not mean that even you were the one who filed, it your
application cannot be cancelled. The BLA, who has jurisdiction
over the case, were able to determine that it is Shen Dar’s
trademark that should not have been issued with registration,
even it is the plaintif.
Kabushi Kaisha Isetan vs IAC
- Tradename: Kabushi Kaisha Isetan
- Trademark: Isetan (registered in Japan since 1936)
- Isetan is a known mall in Japan
- In Cubao, there exist an Isetann Departmene Store
which is registered with BPO; also a known Japanese
store.
- KKI filed for the cancellation of registration of
Isetann.
ISSUE: Should petition prosper?
HELD: No.
- KKI’s Isetan is NOT registered in the Philippines.
- Isetan is NOT an internationally-known mark. (not
covered by Sec. 123 e and f)
- Isetann Department Store is NOT a trademark, rather
a trade name which is connected with the
establishment. It does not define the goods. There is
no Isetann brand.
- Paris Convention cannot be invoked because it does
not involve an internationally-known mark.
Coffee Partners vs San Francisco Coffee (2010)
- San Francisco coffee is a local corporation engaged in
the wholesale of coffee. It is a registered trade name
with SEC and DTI, San Francisco Coffee Inc.
- SFC is a supplier of coffee beans to different coffee
shops.
- In 2001, Coffee Partners Inc opened a coffee shop
under the name, San Francisco Coffee in Libis.
- SFC demanded to stop using the San Francisco
Coffee.
- CPI alleged that it is already registered with IPO, and
that it cannot be confused with SFC’s trade name.
Further, SFC is not registered with IPO, hence, there
can be no infringement.
ISSUE: Can there be infringement of trade name even it
is not registered with IPO?
HELD:
YES. A trade name need not be registered before an
infringement case may be filed.
The coffee shop is a service mark, but the original one is a
trade name.
All that is required is that the trade name is used in trade
and commerce in the Philippines, and is registered with
the proper government entity that requires registration,
that is already protected.
Prior to RA 8293, registration of trade name was required.
However, RA 8293 has dispensed such requirement for
registration.
Transcribed by: Nartatez, Carell
October 29, 2013; Part 2
October 29, 2013 (2nd half)
Maam is reading an article about G2000 brand. And about the
magnolia ice cream.
UNFAIR COMPETITION
Let’s proceed to unfair competition. Unfair competition is
deemed incorporated in the intellectual property code. It is
also a violation of intellectual property rights.
Q: What is unfair competition?
A: The employment of deception or any other means
contrary to good faith by which one shall pass off the goods
manufactured by him or in which he deals, or his business,
or services for those of the one having established such
goodwill
What you have to remember in unfair competition is that you
can only sue for unfair competition if you have established a
god will. Let us in your own barangay, you are selling your
own empanada, let us say cheke empanada, that cheke
empadana is already known in that barangay, so eto na si
chiki, manufactured its own empanda and iba na ang pangalan
and not one of them is registered. So cheke cannot sue chiki
for infringement but since cheke has already established in the
community a good reputation, cheke can sue chiki for unfair
competition.
Who is protected?
A person:
1. who has identified in the mind of the public
2. the goods he manufactures or deals in, his business or
services from those of others,
3. whether or not a registered mark is employed,
4. has a property right in the goodwill of the said
goods, business or services so identified,
which will be protected in the same manner as other property
rights
Who can be punished? This is in general.
Any person:
1. who shall employ deception or any other means contrary
to good faith:
a. by which he shall pass off the goods manufactured by
him or in which he deals, or his business, or services
b. for those of the one having established such goodwill,
or
27
2. who shall commit any acts calculated to produce said
result
So, now you can see that if you talk about unfair competition
there is now bad faith. Unlike infringement you don’t need bad
faith. The most common unfair competition is those who
committed by any acts calculated to produce said result. This
has so many cases under 168.3
Sec. 168.3. Any Person Committing any of the following
Particular Acts are Deemed Guilty of Unfair
Competition:
1. Any person,
a. who is selling his goods and gives them the general
appearance of goods of another manufacturer or
dealer, either as to the:
 goods themselves or
 in the wrapping of the packages in which they are
contained, or
 the devices or words thereon, or
 in any other feature of their appearance,
 which would be likely to influence purchasers
to believe that the goods offered are those of a
manufacturer or dealer, other than the actual
manufacturer or dealer, or
b. who otherwise clothes the goods with such
appearance as shall deceive the public and defraud
another of his legitimate trade, or any subsequent
vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;
3. Any person who by any artifice, or device, or who employs
any other means calculated to induce the false belief
that such person is offering the services of another
who has identified such services in the mind of the
public; or
4. Any person:
a. who shall make any false statement in the course
of trade (paninira), or
b. who shall commit any other act contrary to good faith
of a nature calculated to discredit the goods,
business or services of another.
That is why here in the Philippines we cannot destroy or
compare the product of the competitor. Just like in tide and
ariel, unlike in the united states that they will really name their
competitor. Ok, these are the specific acts of unfair
competition.
Q: What is the test of unfair competition?
A: Whether certain goods have been clothed with an
appearance likely to deceive the ordinary purchaser exercising
ordinary care
Q: Is fraud essential in unfair competition? [1958 Bar]
A: Yes, there must be fraudulent intent to pass off one’s
goods as those of another
So, if you were the manufacturer of cheke and another chiki is
copying your products, then you can file a case of unfair
competition, same remedies as those with trademarks and
trade names.
This is related to your general discussions on ownership.
Distillery Washington (DW) vs. La Tondena, October 2,
1997.
Ginebra San Miguel is under San Miguel Corporation, but it
used to be La Tondena Bottlers. La Tondena (LT) filed
before RTC an action of recovery under its claims of ownership
of possession against DW. According to LT, there are 80,157
empty bottles bearing blown-up marks of La Tondena and
Ginebra SM. DW was using the bottles for its own Gin
Seven(?) without the consent of LT in violation of RA 623. So,
RTC dismissed the complaint upholding the DW’s contention
that a purchaser of liquor is based on the selling price of the
liquor and is not required to return the bottle at any time. The
CA reversed the decision. Under RA 623, the use of marked
bottles by any person other than the manufacturer, bottler or
seller without the written consent is unlawful. The marks of
the LT’s ownership stand or --- in the bottle are sufficient
notice to the public that the bottles are LT’s property. Hence,
DW cannot be considered as purchaser in GF. there are 2
issues here: LT file an action for recovery of possession under
claim of ownership of those 80,157 empty bottles. Is the action
or claim prospers? NO. Precisely, when you buy a bottle of
GSM, included in the purchase price is the price of the bottle.
You do not pay a deposit. So there is a transfer of ownership
of the content and the container to the buyer. The buyer is
now the owner and has the right to dispose. And if the buyer
chooses to dispose the bottle to DW, that is his business.
When the buyer sold the bottles to DW, DW became the owner
of these bottles. The action for Replevin will not prosper
because in the action for recovery of possession under the
claim of ownership, LT was no longer the owner of these
bottles. Second issue is the violation of RA 623. What is RA
623? It is an act of use or ---- for marked bottles, boxes,
cards, and other similar containers. This was amended by RA
5700. It was meant to protect the intellectual property of the
registrants of the containers and prevent unfair trade practices
and fraud to the public. Under RA 623, sections 2 and 3, if
you use the bottles of another entity and it is clearly stated
that the bottles belong to that entity, you are violating RA 623.
Under section 5 of RA 623, “no action shall be brought under
this Act against any person to whom the registered
manufacturer, bottler, or seller, has transferred by way of sale,
any of the containers herein referred to, but the sale of the
beverage contained in the said containers shall not include the
sale of the containers unless specifically so provided.” So, in
other words, this will only apply using the containers of
another and you put your product their if the user does not
acquire ownership of the bottles, but here the supreme court
said, there was already ownership by DW, so it does not
matter whether the name la tondena or san Miguel is in the
bottle this is not a violation of RA 623. You cannot use it if it
belongs to the manufacture. The bottles are owned by the
manufacturer..section 6 of RA 623,
Sec. 6. The provision of this Act
shall not be interpreted as
prohibiting the use of bottles as
containers for "sisi", "bagoong",
"patis", and similar native products.
you are not allowed to use coca-cola bottles, why? Coca-cola
bottles are not owned by the consumers, they only pay deposit
and you must return the bottles. Can you use this for your own
backyard business? Even if you put your patis, sisi, or
bagoong, these manufactures of patis, sisi, they can use it for
their own use.
In relation to that is the case of Coca-cola vs. Quintin
Gomez, November 18, 2013, the last case, coke applied for
28
search warrant for hoarding of coke bottles in pepsi warehouse
and applied for unfair competition, coke alleged that
destruction and concealment of the bottles. So the cause of
action of coke was unfair competition for violation of section
168.3.C of the intellectual property code in relation to section
173. Is the hoarding of coke containers punishable as unfair
competition under section 168.3.C? who shall commit any
other act contrary to good faith of a nature calculated to
discredit the goods, business or services of another. Sabi ng
supreme court, ha? What are you talking about? Does not fall,
your cause of action does not fall on this, pepsi does not
discredit you or your good faith, kung nagkataon yung
products ninyo sa kanilang warehouse, this is not an act
calculated to discredit the goods. What can pepsi be sold for?
The bottles owned by coca-cola, it should have filed a case of
theft with prayer of recovery of ownership of the bottles. There
is no unfair competition if you find coca-cola bottles in the
pepsi warehouse. As held by the supreme court in this case:
“true test” of unfair competition:
whether the acts of defendant are
such as are calculated to deceive
the ordinary buyer making his
purchases under the ordinary
conditions which prevail in the
particular trade to which the
controversy relates.[13] One of the
essential requisites in an action to
restrain unfair competition is proof
of fraud; the intent to deceive must
be shown before the right to
recover can exist.[14] The advent
of the IP Code has not significantly
changed these rulings as they are
fully in accord with what Section
168 of the Code in its entirety
provides. Deception, passing
off and fraud upon the public are
still the key elements that must be
present for unfair competition to
exist.
The act alleged to violate the
petitioner’s rights under Section
168.3 (c) is hoarding which we
gather to be the collection of the
petitioner’s empty bottles so that
they can be withdrawn from
circulation and thus impede the
circulation of the petitioner’s bottled
products. This, according to the
petitioner, is an act contrary to
good faith – a conclusion that, if
true, is indeed an unfair act on the
part of the respondents. The
critical question, however, is not
the intrinsic unfairness of the act of
hoarding; what is critical for
purposes of Section 168.3 (c) is to
determine if the hoarding, as
charged, “is of a nature calculated
to discredit the goods, business or
services” of the petitioner.
We hold that it is not. Hoarding as
defined by the petitioner is not
even an act within the
contemplation of the IP Code.
Sec. 169. False Designations of Origin; False
Description or Representation
Sec.169.1.
1. Any person who, on or in connection with:
a. any goods or services, or
b. any container for goods,
2. uses in commerce any:
a. word,
b. term,
c. name,
d. symbol, or
e. device, or
f. any combination thereof, or
g. false designation of origin, false or
misleading description of fact, or
h. false or misleading representation of fact,
3. which is likely to cause confusion, or to cause mistake, or
to deceive as to the affiliation, connection, or association
of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person; or
4. in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of
his or her or another person’s goods, services, or
commercial activities,
5. shall be liable to a civil action for damages and injunction
provided in Sec. 156 and 157 by any person who believes
that he or she is or likely to be damaged by such act.
Ok now let’s go to penalties.
Sec. 170. Penalties
Independent of the civil and administrative sanctions imposed
by law, a criminal penalty of imprisonment from 2 years to 5
years and a fine ranging from P50,000 to P200,000, shall be
imposed on any person who is found guilty of committing any
of the acts mentioned in Sec. 155, Sec. 168 and Sec. 169.1.
(Art. 188 and 189, RPC)
Just take note of the criminal aspect.
Transcribed by: Gleyo, Marco
October 30, 2013; Part 1
The Law on Copyright
Take note of the definitions under Section 171.
SECTION 171. Definitions. — xxx
171.1. "Author" is the natural person who has created the
work;
A natural person can write, draw or paint. Maybe some robots
can paint now.
171.2. A "collective work" is a work which has been created
by two (2) or more natural persons at the initiative and under
the direction of another with the understanding that it will be
disclosed by the latter under his own name and that
contributing natural persons will not be identified;
29
Now, this one: Communication to the Public. This is found in
the amendment- Republic Act 103 something... I forgot. (R.A.
NO. 10372 AN ACT AMENDING CERTAIN PROVISIONS OF
REPUBLIC ACT NO. 8293, OTHERWISE KNOWN AS THE
“INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES”, AND
FOR OTHER PURPOSES)
171.3. ‘Communication to the public’ or ‘communicate
to the public’ means any communicate to the public,
including broadcasting, rebroadcasting, retransmitting by
cable, broadcasting and retransmitting by satellite, and
includes the making of a work available to the public by wire or
wireless means in such a way that members of the public may
access these works from a place and time individually chosen
by them;
Just take note of the broadcasting and rebroadcasting
because we will take up a case that involves broadcasting and
rebroadcasting.
So, what do you mean by public performance? Just
read the definition. It depends on the work.
171.6. "Public performance", in the case of a work
other than an audiovisual work, is the recitation, playing,
dancing, acting or otherwise performing the work, either
directly or by means of any device or process; in the case of
an audiovisual work, the showing of its images in sequence
and the making of the sounds accompanying it audible; and, in
the case of a sound recording, making the recorded sounds
audible at a place or at places where persons outside the
normal circle of a family and that family's closest social
acquaintances are or can be present, irrespective of whether
they are or can be present at the same place and at the same
time, or at different places and/or at different times, and
where the performance can be perceived without the need for
communication within the meaning of Subsection 171.3;
This concept on copyright means a lot of provisions
which is too much to absorb. So, take note of published
works: Works, which, with the consent of the authors, are
made available to the public. So, this is with the consent.
171.7. "Published works" means works, which,
with the consent of the authors, are made available to the
public by wire or wireless means in such a way that members
of the public may access these works from a place and time
individually chosen by them: Provided, That availability of such
copies has been such, as to satisfy the reasonable
requirements of the public, having regard to the nature of the
work;
“Reproduction” is also brought by the amendment.
171.9. ‘Reproduction’ is the making of one (1) or more
copies, temporary or permanent, in whole or in part, of a work
or a sound recording in any manner or form without prejudice
to the provisions of Section 185 of this Act (Sec. 41[E], P.D.
No. 49a);
This “work of applied art,” take note, it is an artistic
creation with utilitarian functions. So, there is a combination
of a copyright, patent, work, utility model parang gano’n. But
basically, it is an artistic creation which can be used. Normally,
our art participation is applied, di ba? You read the book,
admire a painting, watch a play or musical. It has a utilitarian
function or the artistic creation is incorporated in a usual
article. It is a work of applied art.
171.10. A "work of applied art" is an artistic creation with
utilitarian functions or incorporated in a useful article, whether
made by hand or produced on an industrial scale;
So, what is the definition of the COPYRIGHT?
Copyright - An intangible incorporeal right:
1. to certain literary, scholarly and artistic productions,
2. granted by statute to the author or creator of the work,
3. giving him, his heirs and assigns, copyright or economic
rights,
4. which shall consist of the exclusive right to carry out,
authorize or prevent the acts listed in Sec. 177.
So, take note of economic rights. What are the economic
rights?
(Sec. 177) Copyright or Economic Rights – Shall
Consist of:
The exclusive right to carry out, authorize or prevent
the acts listed in Section 177.
So, the enumerations there are the economic rights of
the creator.
What can the creator carry out, authorize or prevent?
1. Reproduction of the work or substantial portion of
the work;
2. Dramatization, translation, adaptation,
abridgment, arrangement or other
transformation of the work;
Maraming novels that are turned into movies like
Lord of the Rings, Twilight Saga, Harry Potter, etc.
3. The first public distribution of the original and
each copy of the work by sale or other forms of
transfer of ownership;
4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of
data and other materials or a musical work in
graphic form, irrespective of the ownership of the
original or the copy which is the subject of the
rental;
5. Public display of the original or a copy of the work;
Eto yong mga artworks.
6. Public performance of the work;
Siyempre noh, if you are the composer of the song,
you do not want any unauthorized person to sing it
in public... ‘a first public performance. It should be
the author, writer, or the composer himself or a
person chosen by the composer, di ba? Here in the
Philippines, etong mga reknown composers, they
choose the singer who will sing, di ba?
7. Other communication to the public of the work.
30
 So, these are the economic rights of the creator. And
take note, unlike inventions, trademarks and service marks,
literary and artistic works NEED NOT BE REGISTERED to be
protected. That’s why there is no task in the Bureau of
Copyright that says registration of copyright. No. So, they are
protected from the moment of their creation. Meaning, when
an author writes a novel, he has automatically the exclusive
right granted under SECTION 177. That is automatic, okay.
So, this is the enumeration of Literary and Artistic Works.
SECTION 172. Literary and Artistic Works. —
172.1. Literary and artistic works, hereinafter referred to
as "works", are original intellectual creations in the literary and
artistic domain protected from the moment of their creation
and shall include in particular:
a. Books, pamphlets, articles and other writings;
b. Periodicals and newspapers;
c. Lectures, sermons, addresses, dissertations prepared for
oral delivery, whether or not reduced in writing or other
material form;
d. Letters;
e. Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb shows;
f. Musical compositions, with or without words;
g. Works of drawing, painting, architecture, sculpture,
engraving, lithography or other works of art; models or
designs for works of art;
h. Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art;
i. Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science;
j. Drawings or plastic works of a scientific or technical
character;
k. Photographic works including works produced by a
process analogous to photography; lantern slides;
l. Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or
any process for making audio-visual recordings;
m. Pictorial illustrations and advertisements;
n. Computer programs; and
o. Other literary, scholarly, scientific and artistic works.
Just look at them... ‘even PHOTOGRAPHIC WORKS.
Computer Programs cannot be patented, diba?
Remember? But they can be COPYRIGHTED. They are subject
to copyright. Okay, so that is the enumeration. What are the
artistic, literary and scholarly works? Now, this enumeration
and concept is NOT EXCLUSIVE. Look at number 10 (or
perhaps the last part): Other or a new kind of scholarly,
literary and artistic work is discovered or invented or whatever,
that could also be included.
So, under Section 172.2, works are protected by the
sole fact of their creation, irrespective of their mode or
form of expression, content, quality and purpose.
Let’s go to DERIVATIVE WORKS.
Sec. 173. Derivative Works
The following derivative works shall also be protected by
copyright:
1. Dramatizations, translations, adaptations,
abridgments, arrangements, and other alterations
of literary or artistic works; and
2. Collections of literary, scholarly or artistic works, and
compilations of data and other materials which are
original by reason of the selection or coordination
or arrangement of their contents.
Derivative works are also protected by copyright, and
these are the dramatization, translation, adaptations,
arrangement and others, like the screenwriter of the “Return
of the King,” dib a? In novel form, you can turn it out into a
movie. The screenwriter transforms it into a script, then, that
is subject to a copyright.
Who OWNS it?
That’s a long discussion actually. But anyway, that is a
derivative work.
What about collections of artistic works or of literary
works? The “Tragedies of Shakespeare,” “Shakespearean
Comedies,” this is also considered a derivative work which is
original by reason of the selection or organization or
arrangement of their contents. So, in central books, there is a
very thick book there. This is a collection of the decisions of
former Chief Justice Reynato Puno on Constitutional Law. All
of these Political Law and Constitutional Law decisions are
compiled by our present SC Administrator, Justice Midas
Marquez. So, the copyright of the collection belong to him
even if the original writer of the decisions is former SC CJ
Puno. We will see later that the decisions cannot be
copyrightable but the collection is, okay. It is because it is
original – it means the selection or coordination or
arrangement of their contents.
So, how are DERIVATIVE WORKS protected?
They shall be protected as new works.
173.2. xxxx however, that such new work shall not
affect the force of any subsisting copyright upon the
original works employed or any part thereof, xxxx
So, there is a copyright on the original works. If there is
also a derivative work, that is also a copyright for that.
(con’t. Of 173.2) xxxxxxx, or the new works be
construed to imply any right to such use of the original
works, or to secure or extend copyright in such original
works.
So, walang pakialam. The copyright owner of the
derivative work since no right (extended) over the original
work. Of course, they are presuming when one compiles
works of others then they are presuming there was a
permission provided by the creator of the original work.
Let’s go to Section 174.
SECTION 174. Published Edition of Work. — In addition to
the right to publish granted by the author, his heirs, or
assigns, the publisher shall have a copyright consisting
31
merely of the right of reproduction of the typographical
arrangement of the published edition of the work. (n)
How do you distribute or publicize your novel? Under
siguro a publisher. Ano yan, i-print out sa computer, basta
you can do that man siguro noh... pero normally, authors go
to publishers because they can assist in distributing just like a
Rex Bookstore and so is Central Bookstore.
So, the publisher generates copyright consisting merely
of the right of reproduction of the typographical arrangement
of the published edition of the work. So, the publisher is under
the right to prevent or authorize... etcetera. (Publishers have)
only the right of reproduction.
So, this is one of the longest provisions to absorb but you
have to take note of this (Section 175) as this is one of the
important provisions.
Sec. 175. Works NOT Protected by Copyright
No protection shall extend, under this law, to:
1. any idea, procedure, system, method or operation,
concept, principle, discovery or mere data as such,
even if they are expressed, explained, illustrated or
embodied in a work;
IDEA - I think I have an idea to turn the leaf into a
gasoline. You cannot copyright that.
PROCEDURE: you can have it patented - the process, as
long as the three (3) requisites are present.
2. news of the day and other miscellaneous facts having
the character of mere items of press information; or
This includes newspapers. Not subject to protection.
Ahhhh, hindi pala ito yong mahaba. Sorry, this is not the
one, yong mahaba.
3. any official text of a legislative, administrative or
legal nature, as well as any official translation thereof.
Eto yong mga laws, decisions, they are not protected. 
Ahhh, hindi pala ito yong mahaba.
4. Works of the Government. (under Section 176)
Are these protected by copyright? No. So, the speech of
the president can be ---$%^&- or whoever. (Sorry
kaayo, wa gyud nako nasabtan.)
176.1. xxxx.
However, prior approval of the government agency or
office wherein the work is created shall be necessary for
exploitation of such work for profit. xxxxx
So, if you like to get money out of government work,
ask PERMISSION from that proper government agency or
office.
Xxxx
Such agency or office may, among other things, impose as
a condition the payment of royalties. xxxx
But there are instances where approval is not required for
use of any purpose of statutes, rules or regulation. So, if
you want to sell a copy of the Constitution, or this new
Intellectual Property Code, go ahead. The rules of the
IPO? Go ahead and no one will stop you.
No prior approval or conditions shall be required for the
use for any purpose of statutes, rules and regulations, and
speeches, lectures, sermons, addresses, and dissertations,
pronounced, read or rendered in courts of justice, before
administrative agencies, in deliberative assemblies
and in meetings of public character. (Sec. 9, first par.,
P.D. No. 49)
You do not need permission to publicize or reproduce...
So, what are the rights of the authors of speeches, lectures,
etcetera?
176.2. The author of speeches, lectures, sermons,
addresses, and dissertations mentioned in the preceding
paragraphs shall have the exclusive right of making a
collection of his works. (n)
Under 176.1 is works of the Government. What if, let’s just
say, the Justice makes a speech during the SC Conference or
whatever, and this was publicized. What if his office was
invited to make speeches in these public affairs? Can he
prevent others from reproducing the speech and distributing?
NO, because this is the work of the official of the government.
But with respect to making a collection of this work and
publish it - the speeches of Justice so and so, his the only one
who can publish a collection of his speeches. Nobody can
collect his speeches and publish it. It’s okay noh, let’s say X is
a big fan of this particular Justice and he collects all the
speeches of that particular Justice, that’s fine. He can keep it.
He can put it in his room or wherever. But he cannot
reproduce the compilation. It is the Justice himself. Okay.
176.3. Notwithstanding the foregoing provisions,
the
Government is not precluded from receiving and
holding copyrights transferred to it by assignment,
bequest or otherwise; xxxxx
So, just like any other right that is owned, copyright of is an
incorporeal or intangible right, which can be disposed of by the
owner.
What if the owner wants to donate his copyright to the
Government? Is the Government precluded from receiving it?
NO, the government can receive it and become the holder of
the copyright.
Xxxx
nor shall publication or republication by the
Government in a public document of any work in which
copyright is subsisting be taken to cause any abridgment or
annulment of the copyright or to authorize any use or
appropriation of such work without the consent of the
copyright owner. (Sec. 9, third par., P.D. No. 49)
32
 So, let us say, X donates his collection of literary works
(these are poems, let’s say...) to the Government. What if the
government publish his work? Government is not the copyright
holder. According to this, it shall not be taken to cause any
abridgment or annulment of the copyright or to authorize any
use or appropriation of such work without the consent of
the copyright owner.
Sec. 178. Rules on Copyright Ownership
Copyright ownership shall be governed by the following rules:
1. Original literary and artistic works - copyright shall belong
to the author of the work;
2. In the case of works of joint authorship:
a. the co-authors shall be the original owners of the
copyright and in the absence of agreement, their rights shall
be governed by the rules on co-ownership
b. if a work of joint authorship consists of parts that can be
used separately and the author of each part can be identified,
the author of each part shall be the original owner of the
copyright in the part that he has created;
3. In the case of work created by an author during and in
the course of his employment, the copyright shall belong to
the:
a. EMPLOYEE - if the creation of the object of copyright is
not a part of his regular duties even if the EE uses the time,
facilities and materials of the ER
b. EMPLOYER - if the work is the result of the performance
of his regularly-assigned duties, unless there is an agreement,
express or implied, to the contrary.
Who owns the COPYRIGHT? Very easy noh.
Original literary or artistic works should belong to the
author of the work.
JOINT OWNERSHIP - the co-authors shall be the original
owners of the copyright and in the absence of agreement,
their rights shall be governed by the rules on co-ownership.
But if a work of joint authorship can be separated, let’s say:
Chapter 1 is written by X and Chapter 2 is written by Y, then X
will own the copyright of Chapter 1, and so on and forth.
Now, remember the discussion on patents, the same. In
the case of work created by an author, the same. So, the
same rule for patents.
But look at the commissioned work:
178.4. In the case of a work commissioned by a person
other than an employer of the author and who pays for it and
the work is made in pursuance of the commission, the person
who so commissioned the work shall have ownership of the
work, but the copyright thereto shall remain with the creator,
unless there is a written stipulation to the contrary;
In patents, who owns the patent? It is the one who
commissions, diba? But look at the copyright, the person who
so commissioned the work shall have ownership of the work,
but the copyright thereto shall remain with the creator, unless
there is a written stipulation to the contrary;
So, if Madam X wants to have her portrait done by this
famous painter and the painting is finished, what does Madam
X owns? She owns the painting. But the right to distribute or
those rights under Section 177 regarding the copyright belongs
to the painter unless there is a stipulation to the contrary.
Definitely, there’s nothing wrong if you agree. Now, I own the
painting, I’m the only one who could reproduce this. NO, you
cannot -------------- you agree. (Nah. Ambot sa langit ngano
di nako makuha. Pasensya na po.)
178.5. In the case of audiovisual work, the copyright shall
belong to the producer, the author of the scenario, the
composer of the music, the film director, and the author of the
work so adapted. However, subject to contrary or other
stipulations among the creators, the producer shall exercise
the copyright to an extent required for the exhibition of the
work in any manner, except for the right to collect performing
license fees for the performance of musical compositions, with
or without words, which are incorporated into the work; and
178.6. In respect of letters, the copyright shall belong to the
writer subject to the provisions of Article 723 of the Civil Code.
In the case of audiovisual work, just read that.
Letters? You already know that. The copyright should
belong to the writer. The letter itself belongs to the recipient
but the copyright belongs to the writer.
Now, what if the work is Anonymous? Do you know
what’s Pseudonymous Works huh? Yes, who? Anyone?
Have you heard of “The Adventures of Tom Sawyer”?
Hmmm... Huckleberry Finn? Who’s the author? Yesss. Is that
his name? Mark Twain is a pseudo name. His real name is
Samuel Clemens.  they are works by anonymous authors
SECTION 179. Anonymous and Pseudonymous Works.
— For purposes of this Act, the publishers shall be deemed to
represent the authors of articles and other writings published
without the names of the authors or under pseudonyms,
unless the contrary appears, or the pseudonyms or adopted
name leaves no doubt as to the author's identity, or if the
author of the anonymous works discloses his identity. (Sec. 7,
P.D. 49)
So, nakalagay dyan sa book that it is Mark Twain but
everybody knows his real name. So, who owns the copyright?
Mark Twain? There’s no Mark Twain... or the author of the
anonymous works if he discloses his identity.
Transfer or Assignment of Copyright
SEC. 180. Rights of Assignee or Licensee. –
180.1. The copyright may be assigned or licensed in
whole or in part. Within the scope of the assignment or
license, the assignee or licensee is entitled to all the rights
and remedies which the assignor or licensor had with respect
to the copyright.
xxxx
33
 Now, just like any other thing or right owned, can one
transfer, assign the license, the copyright? YES.
Can it be partly assigned or partly licensed? YES, in
whole or in part.
What is the licensee or assignee entitled to? All the
rights and remedies which the assignor or licensor had with
respect to the copyright.
E.G. the right to sue for infringement.
What is the form of the assignment? How do you
transfer ownership of the copyright to your assignee? or how
do you license somebody to do the works that you want? The
broadcasting, the re-broadcasting, the publication, etcetera. It
says here:
180.2. The copyright is not deemed assigned or
licensed inter vivos, in whole or in part, unless there is a
written indication of such intention.
So, hindi pwede oral. It has to be written, okay. Well,
it did not say that it should be in a public document. So...
what’s the statutory construction? Anyway... 
So, what if the copyright owner submits his work to
the newspaper, magazine or periodical for publication? What is
the right given to the publisher? only a license to make a
single publication unless a greater right is expressly granted.
180.3. The submission of a literary, photographic or artistic
work to a newspaper, magazine or periodical for publication
shall constitute only a license to make a single
publication unless a greater right is expressly granted. If two
(2) or more persons jointly own a copyright or any part
thereof, neither of the owners shall be entitled to grant
licenses without the prior written consent of the other owner
or owners. (Sec. 15, P.D. No. 49a)
Okay. So the publisher published 100,000 copies of
this book that I wrote. That’s it. What if it is very popular and
the people clamouring for that? Then, another authority must
be given to the licensee or the publisher.
Who can grant a license if two or more persons jointly
owned a copyright? So, what is this? Is this an act of
administration or an act alteration? Under 180.3, If two (2) or
more persons jointly own a copyright or any part thereof,
neither of the owners shall be entitled to grant licenses without
the prior written consent of the other owner or owners.
UNANIMOUS CONSENT is required TO GRANT
LICENSES.
May any exclusivity to the economic rights in a work
be exclusively licensed? YES.
180.4. Any exclusivity in the economic rights in a work may
be exclusively licensed. Within the scope of the exclusive
license, the licensee is entitled to all the rights and remedies
which the licensor had with respect to the copyright.
Xxxx
So under Section 181.
SECTION 181. Copyright and Material Object. — The
copyright is distinct from the property in the material object
subject to it. Consequently, the transfer or assignment of the
copyright shall not itself constitute a transfer of the material
object. Nor shall a transfer or assignment of the sole copy or
of one or several copies of the work imply transfer or
assignment of the copyright. (Sec. 16, P.D. No. 49)
So, we have two things: one is a thing and one is a
right. The THING is one created, it cannot be a right on what
was created. It could be a poem, short story or a novel, a
sculpture, a painting. But the COPYRIGHT is the
INTANGIBLE INCORPOREAL RIGHT.
So, does the transfer, assignment or licensing of the
copyright automatically constitute a transfer of the material
object? The answer is NO. It is separate and distinct. They
are separate and distinct from each other.
What if you transfer, assign or license a sole copy or
several copies of the work? Does it follow automatically the
transfer, assignment of the copyright? NO, because they are
separate and distinct from each other.
Okay. Now, when you submit that written assignment or
licensed agreement, according to Section 182:
SECTION 182. Filing of Assignment or License. — An
assignment or exclusive license may be filed in duplicate with
the National Library upon payment of the prescribed fee for
registration in books and records kept for the purpose. Upon
recording, a copy of the instrument shall be returned to the
sender with a notation of the fact of record. Notice of the
record shall be published in the IPO Gazette. (Sec. 19,
P.D. No. 49a)
It does not say here who will inform the IPO. Because
the National Library, I do not think it’s part of the IPO. That’s
insane. So, maybe it is the licensee who will go to the IPO.
Anyway, I am not a licensee or the assignee who will publish it
to the IPO ---#$^$%&&(*()* (ooppps, sorry, wa nako
nasabtan). Maybe there is an agreement between the IPO
and the National Library. Anyway, according to the provision,
it shall be published.
SEC. 183. Designation of Society. – The owners of
copyright and related rights or their heirs may designate a
society of artists, writers, composers and other right-holders to
collectively manage their economic or moral rights on their
behalf. For the said societies to enforce the rights of their
members, they shall first secure the necessary accreditation
from the Intellectual Property Office. (Sec. 32, P.D. No. 49a)”
Anyway, did you take this up in second year? There is the
case of Philippine Society of Composers vs. Tan. JUST
READ THAT.
G.R.No. L-36402. March 16,1987
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHE
RS, INC.
34
vs. BENJAMIN TAN
FSCAPI is the owner of certain musical compositions
among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat
Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The
Nearness Of You." It filed a complaint with the lower court for
infringement of copyright against Tan allowing the playing in
the latter’s restaurant of said songs copyrighted in the name of
the former.
Tan countered that the complaint states no cause of
action. While not denying the playing of said copyrighted
compositions in his establishment, he maintains that the mere
singing and
playing of songs and popular tunes even if they are copyrighte
d do not constitute an infringement under the provisions
of Section 3 of the Copyright Law.
ISSUE: Whether or not the playing and signing of musical
compositions which have been copyrighted under the
provisions of the Copyright Law (Act 3134) inside the
establishment
of Tan constitute a public performance for profit within the me
aning andcontemplation of the Copyright Law of the
Philippines; and assuming that there were indeed public
performances for profit, whether or not Tan can be held liable
therefor.
Held:
NO. It has been held that "The playing of music in
dine and dance establishment which was paid for by the public
in purchases of food and drink constituted "performance for
profit"
within a Copyright Law." Thus, it has been explained that while
it is possible in such establishments for the patrons to
purchase their food and drinks and at the same time dance to
the music of the orchestra, the music is furnished and used by
the orchestra for the purpose of inducing the public to
patronize the establishment and pay for the entertainment in
the purchase of food and drinks. Tan conducts his place of
business for profit, and it is public; and the music is performed
for profit. Nevertheless, he cannot be said to have infringed
upon the Copyright Law. His allegation that the composers of
the contested musical compositions waived their right in
favor of the general public when they allowed their intellectual
creations to become property of the public domain before
applying for the corresponding copyrights for the same is
correct.
The Supreme Court has ruled that "Paragraph 33 of
Patent Office Administrative Order No. 3(as amended, dated
September 18, 1947) entitled 'Rules of Practice in the
Philippines Patent Office relating to the Registration of
Copyright Claims' promulgated pursuant to Republic Act 165,
provides among other things that an intellectual creation
should be copyrighted thirty (30)days after its publication, if
made in Manila, or within the (60) days if made elsewhere,
failure of which renders such creation public property." Indeed,
if the general public has made use of the object sought to be
copyrighted for thirty (30) days prior to the copyright
application the law deems the object to have been donated to
the public domain and the same can no longer be copyrighted.
Under the circumstances, it is clear that the musical
compositions in question had long become public property, and
are therefore beyond the protection of the Copyright Law.
Ahh, eto yong mahaba. My God. Okay. We will not
go through this one by one because it is very, very, very, very
long (sakto gyud na nga upat ka VERY hehehehe.) The only
thing that i want you to remember is this noh: we have a song
writer. He is both a composer and a lyricist, George Canseco
for example. What is his purpose in writing a song? Is it only
for him to listen to? Of course, he wants the world to know of
his talent or hear his song because he has a message in his
song, okay. So under 177, as to the composer, he has the
economic rights. He has the automatic copyright with the
song. What this provision is saying is that if the song is
performed, once it has lawfully been made accessible to the
public, you compile the record, yong mga kanta na “Mga Bituin
Walang Ningning”?? I’m not sure... that’s already made
accessible to the public. If that is done privately and free of
charge for a charitable or religious institution or society, dapat
it’s done privately. How about this karaoke or videoke? It’s not
here in the law eh. Maybe this people are authorized, the
ones who made the videoke kits with all the songs noh.
Maybe they have the copyrights to perform.
Sec. 184. The following Acts shall NOT Constitute
Infringement of Copyright:
1. The recitation or performance of a work once it has
been lawfully made accessible to the public, if done
privately and free of charge, or if made strictly for a
charitable or religious institution or society.
Anyway, those broadway shows apparently they must
be subject to a copyright. You can actually stage a broadway
show but you cannot... If you want to copy the entire show,
let’s say “Phantom of the Opera” has been shown abroad kasi
the same yan noh, that can fall under, kumbaga, one company
or somebody buys the copyright of the “Phantom of the
Opera.” If the songs of the Phantom are performed on stage
in any place, it is... hala! as long as the maximum number of
songs to perform is three (3) songs. So yong mga broadway
plays or excerpts that’s fine. No violation of the copyright. But
if you want to stage the entire “Phantom of the Opera” then
you have to buy, the ticket is 100 dollars. You go to the
website and buy (the ticket.)
With respect to MAMA MIA (giggling), they have this
production, and we staged MAMA MIA (kaw baya ang nagtake
sa lead role Ma’am hehe) and how did we get away with it?
Okay. We did not copy the entire production. Ang gi-copy lang
is yong songs  which has already been made public by ABBA
since time immemorial. I think you were not born yet. This is
controllable imitation only, not an exact duplication thereof.
But of course noh, who would mind this small Davao
productions. They are big broadway companies, diba J? 
But under Section 184, anything that has been made
publicized can be performed if you do not charge anything. Di
ba yong atin naman J is for charitable institution. So pwede na
yan sa exception. (kaw na J! nagpalaban gyud si Ma’am nimo
hahaha peace!)
2. The making of quotations from a published work if
they are compatible with fair use and only to the extent
justified for the purpose, including quotations from
newspaper articles and periodicals in the form of press
summaries: Provided, That the source and the name of
the author, if appearing on the work, are mentioned;
xxx
35

So, if you make a quotation from a published work,... So
we have a book written by X,, horrible book. Do you know
who is my least favourite author John Grisham? Why?
Things happened. And there’s this FBI chasing. Then,
the person gets from one place to another without the
author explaining how.  (Then, her story about
Grisham continues.......)
(Going back) So, you make a quotation from a published
work if they are compatible with fair use..
3. The recording made in schools, universities, or
educational institutions of a work included in a broadcast
for the use of such schools, universities or educational
institutions: Provided, That such recording must be
deleted within a reasonable period after they were first
broadcast: Provided, further, That such recording may not
be made from audiovisual works which are part of the
general cinema repertoire of feature films except for brief
excerpts of the work;
...and recording made in schools. Do you record my
lectures? Then you must delete it ha within reasonable
time after transcribing and pass on.. and send. Okay.
hehehehe
8. The public performance or the communication to
the public of a work, in a place where no
admission fee is charged in respect of such public
performance or communication, by a club or
institution for charitable or educational purpose
only, whose aim is not profit making, subject to such
other limitations as may be provided in the
Regulations;
Eto, public performance where no admission fee is
charge for charitable or educational purposes.. paulit ulit lang
man ito ba. Just read.
Eto, gwapo ito.
(part of the amendment)
The reproduction or distribution of published articles or
materials in a specialized format exclusively for the use
of the blind, visually- and reading-impaired
persons: Provided, That such copies and distribution
shall be made on a nonprofit basis and shall indicate
the copyright owner and the date of the original
publication.
Sec. 185. Fair Use of a Copyrighted Work
The fair use of a copyrighted work for criticism,
comment, news reporting, teaching including multiple copies
for classroom use, scholarship, research, and similar purposes
is not an infringement of copyright. xxxxx
Now, de-compilation may also constitute fair use. Just read
what decompilation is.
(con’t of 185) xxx
Decompilation, which is understood here to be the
reproduction of the code and translation of the forms of a
computer program to achieve the interoperability of an
independently created computer program with other programs
may also constitute fair use under the criteria established by
this section, to the extent that decompilation is done for the
purpose of obtaining the information necessary to achieve
such interoperability.
How do you know in determining whether the use made
of a work is fair use? What are the factors to be considered?
Paulit-ulit lang yan. Please read...
(Con’t. Of 185.1)
Xxx
In determining whether the use made of a work in any
particular case is fair use, the factors to be considered shall
include:
a. The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
educational purposes;
b. The nature of the copyrighted work;
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 the potential market for or value
of the copyrighted work.
Section 190 is new.
SEC. 190. Importation and Exportation of Infringing
Materials. – Subject to the approval of the Secretary of
Finance, the Commissioner of Customs is hereby empowered
to make rules and regulations for preventing the importation of
infringing articles prohibited under Part IV of this Act and
under relevant treaties and conventions to which the
Philippines may be a party and for seizing and condemning
and disposing of the same in case they are discovered after
they have been imported or before they are exported. (Sec.
30, P.D. No. 49)
Eto yong mga pirated movies. Do not say pirated DVDs
(hehehe. Grabe katawa ni Ma’am. Sakto man pud noh? Guilty
as charged. hehe)
Aw okay. Let’s go to deposit.  This is entirely new. The
entire provision was amended. Look at the old 191, it’s longer.
SEC.191. Deposit and Notice of Deposit with the
National Library and the Supreme Court Library. – At
any time during the subsistence of the copyright, the owner
of the copyright or of any exclusive right in the work may, for
the purpose of completing the records of the National Library
and the Supreme Court Library, register and deposit with
them, by personal delivery or by registered mail, two (2)
complete copies or reproductions of the work in such form as
the Directors of the said libraries may prescribe in accordance
with regulations: Provided, That only works in the field of law
shall be deposited with the Supreme Court Library. Such
registration and deposit is not a condition of copyright
protection.
36
 If you want to write a law book, so you have to deposit..
or where do you deposit it? in the Supreme Court Library. If
you want to write comics, and you want to copyright your
comics, doon ka sa National Library. Okay, take note, such
registration and deposit is not a condition of copyright
protection. This emphasizes the fact that copyrighted works
are protected on the moment of creation.
SECTION 192. Notice of Copyright. — Each copy of a work
published or offered for sale may contain a notice bearing the
name of the copyright owner, and the year of its first
publication, and, in copies produced after the creator's death,
the year of such death.
SO that’s why if you buy books, nakalagay do’n noh:
copyrighted this year; then, republished this year; first
publication, second publication, etcetera.
Moral Rights
ASIDE from economic rights, we also have moral rights.
Under section 193...
SECTION 193. Scope of Moral Rights. — The author of a
work shall, independently of the economic rights in Section 177
or the grant of an assignment or license with respect to such
right, have the right:
193.1. To require that the authorship of the works be
attributed to him, in particular, the right that his name, as far
as practicable, be indicated in a prominent way on the copies,
and in connection with the public use of his work;
xxxx
He should be identified with the work if he wants. That’s
a moral right. It has nothing to do with reproduce, the right to
authorize, the right to prevent, right to be recognized as the
creator of the work, etcetera. Of course, since he’s the
creator, he’s the only one who can make alterations.
193.2. To make any alterations of his work prior to, or to
withhold it from publication;
Don’t tell me the licensee or the assignee, NO!! it’s the
AUTHOR. OR to withhold the publication, kung ayaw nya i-
publish. That is his right.
193.3. To object to any distortion, mutilation or other
modification of, or other derogatory action in relation to, his
work which would be prejudicial to his honor or reputation;
and
193.4. To restrain the use of his name with respect to any
work not of his own creation or in a distorted version of his
work. (Sec. 34, P.D. No. 49)
What if somebody makes a distorted form of his work?
Nagpaalam sa kanya. Di nya feel. What if the composer writes
a very beautiful classical song tas ginawang hiphop? Di ba may
mga songs na ginawagang rap like “Every Breath You Take” by
the Police, diba? You know that? Huh? What if the Police or the
writer, do you know Gordon Sumner? Huh? Si Sting!  what if
he does not want the hiphop version? ------ ------ That is his
moral right.
SECTION 194. Breach of Contract. — An author cannot be
compelled to perform his contract to create a work or for the
publication of his work already in existence. However, he may
be held liable for damages for breach of such contract.
Kunwari, X commissions Y to write a novel... so, this and
that, eto yon ha... okay, so may kontrata na sila. Pero si Y, he
just cannot come out of... Can he be forced to create
something that he cannot? NO. What can X do? Just sue him
for breach of contract. He cannot be forced, an artist, to
create something if he does not like it.
What if the work is already created? Let’s say this
composer already contracted with the recording company –
Star Records that his song will be performed or whatever, and
he changed his mind. Can he be forced? NO. but he can be
sued for breach of contract.
Can moral rights be WAIVED? According to Section
195...
SECTION 195. Waiver of Moral Rights. — An author may
waive his rights mentioned in Section 193 by a written
instrument, xxx
So, the moral right exists. You do not have to register
that anywhere. It is given. This is a moral right of an author,
etcetera. If he wants to waive, there must be a document.
Xxxx but no such waiver shall be valid where its effects is to
permit another:
195.1. To use the name of the author, or the title of his work,
or otherwise to make use of his reputation with respect to any
version or adaptation of his work which, because of alterations
therein, would substantially tend to injure the literary or artistic
reputation of another author; or
195.2. To use the name of the author with respect to a work
he did not create. (Sec. 36, P.D. No. 49)
What is the term of moral rights? How long? This is also
amended. Under the old law, it is only 50 years after death.
But the new law changed it to perpetuity. So, the works of
Shakespeare, the works of Jose Rizal, there’s no prescriptive
period. So, if you see a “NOLI ME TANGERE” nandiyan ang
pangalan ni Jose Rizal. So, simple as that. So, that’s the first
moral right.
Sec. 198. Term of Moral Rights. –
198.1. The right of an author under Section 193.1. shall last
during the lifetime of the author and in perpetuity after his
death while the rights under Sections 193.2. 193.3. and 193.4.
shall be coterminous with the economic rights, the moral
rights shall not be assignable or subject to
license. Xxxx
What can be sold, assigned, or licensed? Only economic
rights.
Xxxx The person or persons to be charged with the
posthumous enforcement of these rights shall be named in a
written instrument which shall be filed with the National
Library. In default of such person or persons, such
enforcement shall devolve upon either the author’s heirs, and
in default of the heirs, the Director of the National Library.
37

SECTION 199. Enforcement Remedies. — Violation of any
of the rights conferred by this Chapter shall entitle those
charged with their enforcement to the same rights and
remedies available to a copyright owner. In addition,
damages which may be availed of under the Civil Code may
also be recovered. Any damage recovered after the creator's
death shall be held in trust for and remitted to his heirs, and in
default of the heirs, shall belong to the government.
This is still very long but i just want you to see the
definition of BROADCASTING.
202.7. "Broadcasting" means the transmission by wireless
means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also
"broadcasting" where the means for decrypting are provided to
the public by the broadcasting organization or with its consent;
So, who could broadcast? Broadcasting organization.
Okay, you can take a five-minute break. (finally! Humana.)
Note: classmates, tanan naka-underline, bold, or italic sa mga
provisions kay gi-emphasize or gibasa gyud ni Ma’am. Thank
you everyone.
--end of first part--
TRANSCRIBED BY: SUZETTE TAN
"It is not what they take away from you that counts.
It's what you do with what you have left."
Hubert H. Humphrey
October 30, 2013; Part 2
Case: ABSCBN VS Multi-Media
Facts: If you watch GMA News TV, there is a warning there, “If
you experience any technical difficulties, call blah blahblah”
anyway. Here we have PMSI, the operator of Dream
Broadcasting, a satellite provider, whatever you call that. PMSI
was granted a legislative franchise and granted by NTC a
franchise top operate and maintain a nationwide TV, direct to
home satellite TV. Dream offered ABSCBN channels – Channel
2, 23, with other program channels. ABSCN demanded to
cease and desist Dream Broadcasting from rebroadcasting
Channel 2 and 23. ABSCBN contended that PMSI’s
unauthorized rebroadcasting constitutes infringement of its
broadcasting rights under the Intellectual Property Code. To
rebroadcast is to broadcast again. So, did PMSI infringe on
ABSCBN’s copyright under Section 177 which states copyright
or economic rights shall consist of the exclusive right to carry
out, authorize, or prevent reproduction of the work? Section
211.1 says broadcasting organizations shall enjoy the exclusive
right to carry out, authorize or prevent the rebroadcasting of
their broadcasts.
Issue: So was there rebroadcasting when the two channels
were included in Dream’s lineup of channels/package?
Held: The answer is NO. The elements of broadcasting are :
a. there is a transmission of sounds or images or the
representations thereof;
b. the transmission is through satellite
c. the transmission is for public perception and the
means for decrypting are provided to the public by
the broadcasting organization or with its consent.
So when you broadcast, you must be a broadcasting
organization. It is only upon the presence of the above
elements can a determination that DEH is broadcasting and
consequently rebroadcasting ABSCBN signals in violation of
Section 211 and 177. Therefore, the transmission
contemplated presupposes that the origin of the signal is the
broadcaster. Hence, a program that is broadcasted is
attributed to the broadcaster, in the same manner as the
rebroadcasted program is attributed to the rebroadcaster.
Here, PMSI is not the origin, nor does it claim to be the origin
of the programs. It is still stated as Channel 2 – ABSCBN,
Channel 23 - Studio 23. PMSI did not make or transmit on its
own but merely carried the existing signal. Yung
nabobroadcastyung ABSBN; PMSI is merely carrying whatever
signals ABSCBN is transmitting. While PMSI subscribers view
ABSCBN and Studio 23, they know that the origin thereof but
the medium from which PMSI carrying ABSCBN signals, that is
via-satellite does not diminish the fact that it functions as a
cable TV. It remains that PMSI’s transmission of signals
through DEH satellite service cannot be considered within the
purview of broadcasting. Therefore, DEH cannot be considered
having infringed ABSCBN’s broadcasting rights and copyrights.
Another reason.Uhm. Why is Channel 2 and Studio 23 included
in the line-up in the same way as – why is GMA 7 and GMATV
News included in Sky Cable? This is because of the Must-Carry
Rule. The carriage of ABSCBN signals by virtue of the must-
carry rule, this is the NTC’s rule noh. It is under the direct
supervision of the government to the NTC which is vested with
the exclusive jurisdiction to regulate and control
telecommunications and broadcast facilities, accordingly the
must-carry rule falls under the category of the limitations on
copyright. So if Dream is infringing on the copyright of ABSCBN
over Channel 2 and Studio 23, ediangSkycablenarin on GMA7
and GMATV News. But this is an exception because it is
imposed by the NTC. There are standard line-ups and the
providers have no choice but to include.
ABS-CBN vs Philippine Multi-Media System (2009)
Held: Neither is PMSI guilty of infringement of ABS-CBN’s
copyright under Section 177 of the IP Code which states that
copyright or economic rights shall consist of the exclusive right
to carry out, authorize or prevent the public performance of
the work (Section 177.6), and other communication to the
public of the work (Section 177.7).
Section 202.7 of the IP Code defines broadcasting as “the
transmission by wireless means for the public reception of
sounds or of images or of representations thereof; such
transmission by satellite is also ‘broadcasting’ where the means
for decrypting are provided to the public by the broadcasting
organization or with its consent.” xxx
The carriage of ABS-CBN’s signals by virtue of the
must-carry rule in Memorandum Circular No. 04-08-88 is under
the direction and control of the government though the NTC
which is vested with exclusive jurisdiction to supervise,
regulate and control telecommunications and broadcast
services/facilities in the Philippines. The imposition of the
must-carry rule is within the NTC’s power to promulgate rules
and regulations, as public safety and interest may require, to
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encourage a larger and more effective use of communications, So if the author dies on December 31, 2013, one year nasiya
radio and television broadcasting facilities, and to maintain by the next day. Not December 31 of the next year.
effective competition among private entities in these activities
whenever the Commission finds it reasonably feasible. As Section 216 are the remedies for infringement, just read that.
correctly observed by the Director-General of the IPO: In 216.2, it says in an infringement action, the court shall also
have the power to order the seizure and impounding of any
article which may serve as evidence in the court proceedings.
Accordingly, the “Must-Carry Rule” under Criminal penalties in Section 217, you have imprisonment, just
NTC Circular No. 4-08-88 falls under the read that.
foregoing category of limitations on
copyright. This Office agrees with the Now let’s go to the case of San Rio vs Edgar Lim.
Appellant [herein respondent PMSI] that the
“Must-Carry Rule” is in consonance with the Case: San Rio vs Edgar Lim
principles and objectives underlying
Executive Order No. 436,1[28] to wit: Facts: Are you familiar with San Rio? Hello Kitty and Little Twin
Stars, made in Japan. The official distributor of San Rio
The Filipino products here in the Philippines is Gift Gate Corporation. Now,
people must be given the products are manufactured in the Philippines. San Rio, the
wider access to more Japanese Corporation is the trade name. The trade marks are
sources of news, Hello Kitty, Little Twin Stars. They are sold internationally.
information, education, Now Gift gate entered into some licensing agreements with
sports event and some manufacturers. GGI entered into licensing agreements
entertainment programs with JC Lucas Creative Products, Inc., Paper Line Graphics,
other than those provided Inc. and Melawares Manufacturing Corporation. These local
for by mass media and entities were allowed to manufacture certain products (bearing
afforded television petitioner's copyrighted animated characters) for the local
programs to attain a well market. So we are talking about toys, pencil cases, keychains –
informed, well-versed and these are copyrighted.
culturally refined citizenry
and enhance their socio- Due to the deluge of counterfeit Sanrio products, GGI asked IP
economic growth: Manila Associates to conduct a market research. The
research's objective was to identify those factories, department
WHEREAS, cable stores and retail outlets manufacturing and/or selling fake
television (CATV) systems Sanrio items. After conducting several test-buys in various
could support or commercial areas, IPMA confirmed that respondent's
supplement the services Orignamura Trading in Tutuban Center, Manila was selling
provided by television imitations of petitioner's products. So San Rio filed with the
broadcast facilities, local Task-Force on Anti-Intellectual Property Piracy (TAPP) of the
and overseas, as the Department of Justice against respondent for violation of
national information Section 217 of the Intellectual Property Code on Infringement.
highway to the So sabini Lim, “I did not violate the Intellectual Property Code
countryside. because I am a retailer. I did not reproduce or manufacture
any of San Rio’s copyrighted items. Thus, I did not transgress
the economic rights of San Rio. ” TAPP finds that while it
Limitations on Protection, that is Section 212. Term of appears that some of the items seized during the search are
Protection – the copyright in works shall be protected during not among those products which GGI authorized these
the life of the author and for fifty (50) years after his death. In establishments to produce, the fact remains that respondent
213.4, in case of works of applied art, the protection shall be bought these from the legitimate sources. At this juncture, it
for a period of 25 years from the rest of making. The rest of bears stressing that respondent relied on the representations
the periods here are 50 years. of these manufacturers and distributors that the items they
sold were genuine.
Now, how do you calculate the term?
Issue: So the question here is, is Lim criminally liable for
Sec. 214. Calculation of Term. - The term of protection infringement under 217?
subsequent to the death of the author provided in the
preceding Section shall run from the date of his death or of Held: The Supreme Court here said NO. To be liable for
publication, but such terms shall always be deemed to begin violation of 217.3, the following requisites must be present:
on the first day of January of the year following the event 1. possession of the infringing copy and
which gave rise to them. 2. knowledge or suspicion that the copy is an infringement of
the genuine article.

So in other words, since Lim is just a retailer, he cannot be

penalized under the IPC, maybe those manufacturers who sell
or those who manufacture exclusively for Gift Gate under the
license. The CA agreed with the DOJ that petitioner failed to
prove that respondent knew that the merchandise he sold was
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counterfeit. Respondent, on the other hand, was able to show
that he obtained these goods from legitimate sources. Okay?
So the next case is…Bayanihan Music vs BMG (I love this part!
 ) March 7, 2005.
Do you know Jose Mari Chan? O get ready ha.
(Whoooeggzoited!)
Case: Bayanihan Music VS BMG Records and Jose Mari Chan
Facts: On July 16, 1973, private respondent Jose Mari Chan
entered into a contract with petitioner Bayanihan Music
Philippines, Inc. , whereunder the former assigned to the latter
all his rights, interests and participation over his musical
composition "Can We Just Stop and Talk A While" and “Afraid
For Love To Fade”. O for 5 points, Benedict and Resci,
magduetkayo .
<Can we just stop and talk a while, get to know each other,
who are we to know? Love could be waiting at the end, 'round
that bend and so let's stop and talk a while. ♫ >
O now you have 7 points for your 2nd exam. (Yehei!!!)
Okay, so these two songs were assigned by Jose Mari Chan to
Bayanihan Music. On the strength of those contracts,
Bayanihan applied for and was granted by the National Library
a Certificate of Copyright Registration for each of the two
musical compositions, thus: November 19, 1973, for the song
"Can We Just Stop and Talk A While" and on May 21, 1980, for
the song "Afraid for Love To Fade." But without the consent of
Bayanihan, Chan authorized BMG Records to record and
distribute the aforementioned musical compositions in a then
recently released album of singer Lea Salonga. In 1999,
Bayanihan informed BMG of its existing copyrights. So the
composer was being sued for its infringement of the said
copyright under Section 216. According to Chan, (1) it was
never his intention to divest himself of all his rights and
interest over the musical compositions in question; (2) the
contracts he entered into with Bayanihan are mere music
publication agreements giving Bayanihan, as assignee, the
power to administer his copyright over his two songs and to
act as the exclusive publisher thereof; (3) he was not
cognizant of the application made by and the subsequent grant
of copyrights to Bayanihan;and (4) Bayanihan was remissed in
its obligations under the contracts because it failed to
effectively advertise his musical compositions for almost
twenty (20) years, hence, he caused the rescission of said
contracts in 1997.
Issue: Should the complaint of Bayanihan prosper?
Held: NO. Why?
Chan, being undeniably the composer and author of the lyrics
of the two (2) songs, is protected by the mere fact alone that
he is the creator thereof, conformably with Republic Act No.
8293, otherwise known as the Intellectual Property Code,
Section 172.2 of which reads: Works are protected by the sole
fact of their creation, irrespective of their mode or form of
expression, as well as of their content, quality and purpose.
But the thing is, even though he allegedly entered on an
exclusive contract with Bayanihan, he can still, as composer,
exercise the economic rights available to him under the law.
Just because there is a license, it has to be very clear, that the
composer has absolutely no more rights in his creation. The
thing here is, the contract also terminated. So, there are two
reasons why the complaint of Bayanihan cannot prosper. There
are cases on copyright, Colombia, some cases on piracy, just
read that.
We will go on some Bar Questions.
1. There is a 1965 BQ, what is copyright?
2. Next question, the widow of a former President
commissioned Neptalino to write a biography of her
late husband for a fee. Upon completion of the work,
the widow paid Neptalino the agreed price. The
biography was copyrighted. Can the widow sell the
original book without the consent of Neptalino? Yes,
because she owns the book. Can she transfer the
copyright without the consent of Neptalino? No.
Section 178.4 In the case of a work-commissioned by
a person other than an employer of the author and
who pays for it and the work is made in pursuance of
the commission, the person who so commissioned the
work shall have ownership of work, but the copyright
thereto shall remain with the creator, unless there is a
written stipulation to the contrary. In this case, there
is no stipulation. Hence, the copyright remains with
Neptalino.
3. Solid Investment commissioned Ramon Blanco and
his son, Steve, both renowned artists, to paint a
mural for a contract price of 2M. Who own the
copyright? The artist, Ramon Blanco and his son
Steve. If they want to reproduce, they may do so,
that is their economic right.
4. This next question, I don’t know where the suggested
answer came from. Felix copyrighted the oil painting
showing the oathtaking of Aquino and VP Laurel after
the EDSA Revolution. Val engaged an artist to paint
the same scene to be used as pictures in postcards.
Val then sends postcards to his friends abroad. Is
there a violation of the copyright of Felix who painted
the oathtaking? That is the extent of the question ha,
but I don’t know why is this the answer –NO, because
it was part of the reports of media on the oathtaking.
See! Nagdagdagsiyang facts! Weird!
5. Miss Solis wrote a script for Regal Films One Day,
IsangAraw. Miss Badidaywatched themovie at Ermita
Theater discovered that the story is exactly similar
with an unpublished autobiography she wrote which
was uncopyrighted. Nandunsailalimngkanyang pillow,
and now she is watching that in the theater. Miss
Badiday sued Miss Solis for infringement of copyright,
it was however conclusively proven that Miss Solis
was not aware that the autobiography of Miss
Badiday was protected by copyright. Is Miss Solis
liable? Suggested answer is yes, for infringement. The
mere fact of the repetition of it, or a substantial
portion of it without the authority from the author or
writer of the copyrighted work is sufficient. The good
faith cannot in any manner be a defense for the
infringement committed. So even the work is under
Miss Badiday’s pillow, there is already a copyright.
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But for example, Kris Aquino has an autobiography in her safe,
but everybody knows just the same. Diba?(*laughs).So can
one who writes her biography be liable for infringement? But
this is old. But that came out thrice in the Bar (1997, 1988,
1977).
6. Jose Molina Junior inherited the musical works of his
talented father, Jose Molina Sr. who in his lifetime
composed a number of well-known songs but did not
take the precaution of procuring secure copyright for
these songs. After his death, the more practical-
minded son, succeeded in having his father’s
intellectual creation registered. One of the musical
compositions is the song “Habangbuhay” which had
been popularly sung and in fact internationally
acclaimed before the senior Molina’s demise.
VilmaAunor was requested to sing “Habangbuhay” in
a free cultural presentation in Luneta Park. Jose
Molina sued VilmaAunor for infringement. Will the
case prosper? Suggested answer: NO. Section 184
provides that the following acts shall not constitute
infringement of copyright: a. the recitation or
performance of a work, once it has been lawfully
made accessible to the public and free of charge or if
made strictly for a charitable or religious institution or
society.
But angproblemadidto, sa Bar, yungvideoke, diba? You can file
a case, anyway, hopefully they won’t ask that.
7. X copyrighted a scientific research paper consisting of
50 pages about the Tasadays. Y wrote a 100-page
review of X’s work, criticizing X’s findings as a hoax
and reproducing 90% of X’s paper. Can X sue Y for
infringement? NO. A critique on a copyrighted work as
to produce portions before it can be understood by
the readers is not copyright infringement. This is
under Fair Use of Copyrighted Work (Section 185)
8. The Victoria Hotel reproduces copies and distributes
and makes them available to hotel guests. This is
when you were you not yet born noh? Mga BETAMAX.
Can I rent this movie? It charges a nomial fee for the
use of the videotape. Can Victoria Hotel be enjoined
and made liable for damages? YES. Victoria Hotel has
no right to use such in its hotel business without the
consent of the owner of the copyright. Would it make
any difference if the hotel does not charge any fee?
NO. The use of the videotapes is for business and not
for home consumption. Read the case of Philippine
Society of Composers VS Tan.
Okay, what is the test for infringement? The test for
infringement is ah, according to the case of Rodinasvs Court of
Appeals, the court has adopted the Doctrine of Equivalence in
infringement cases. Kasingadiba, if a song is composed by X
and you have here Y composing a confusingly similar song.
When we talk of the Doctrine of Equivalence, we also talk of
the purpose some authors would say.
9. Q designs for R a personalized Christmas card with an
artistic motif depicting a Philippine rural Christmas
scene with a woman and child and a man astride a
carabao beside a tree. Underneath the design is the
name of Q, the artist. R ordered from Q 500 copies of
such Christmas cards and distributed them to his
friends. One year later, X printed the same design
and intended it for sale to the general public. Q sued
X for damages despite his failure to have it copyright.
Can Q claim damages from X? YES. Registration and
deposit is no longer a requirement before the
copyright owner can file a suit. Before RA 8293,
copyright registration is required, but now, no more.
10. Jose Santos has written many poems, some of these
were publishes in Panorama magazine but never
registered these in the copyright office. Among those
poems, were the poem “In the Rose Garden”. He was
surprised when he heard over the radio a song whose
lyrics were lines from his song. It appears that music
sheets were published under the name of the
composer without the acknowledgement of Jose. Jose
wants to know what his rights are against the
composer. What will you advise him? Suggested
answer: Jose, the author of the poem, may enjoin the
publisher from publishing the sheets without putting
his name. His poems are protected from the moment
of creation. Read the other provisions.
Distinctions
Trademark Copyright Patent
Goods and services Literary, scholarly Inventions
works
50 years - duration 50 years 50 years
How many cases do we have left? 2. Khovs Summerville.
Case: ElidadKhovs Court and Appeals and Summerville (one of
the cases in PROVREM on injunction)
Facts: Elidad C. Kho filed a complaint for injunction and
damages with a prayer for the issuance of a writ of preliminary
injunction against the respondents Summerville General
Merchandising and Company and AngTiamChay.
Kho alleges that Kho, doing business under the name and style
of KEC Cosmetics Laboratory, is the registered owner of the
copyrights Chin Chun Su and Oval Facial Cream
Container/Case, Kho also has patent rights on Chin Chun Su &
Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered owner
thereof in the Supplemental Register of the Philippine Patent;
that respondent Summerville advertised and sold petitioner’s
cream products under the brand name Chin Chun Su, in similar
containers that petitioner uses, thereby misleading the public,
and resulting in the decline in the petitioner’s business sales
and income. Summerville alleged as their defense that
Summerville is the exclusive and authorized importer, re-
packer and distributor of Chin Chun Su products manufactured
by Shun Yi Factory of Taiwan.
Issue: whether or not the copyright and patent over the name
and container of a beauty cream product entitle the registrant
to use in ownership of the same to the exclusion of others.
Held: The answer is NO. Why? The container is not subject to
a copyright, but a trademark. Trademarks, copyrights, and
patents are different intellectual property rights that cannot be
interchanged. (Whoohapitnajudnahuman. T_T)
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Khovs Summerville
Held: Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged with
one another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or services (service mark)
of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means
the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field
of human activity which is new, involves an inventive step and
is industrially applicable.
Petitioner has no right to support her claim for the exclusive
use of the subject trade name and its container. The name and
container of a beauty cream product are proper subjects of a
trademark inasmuch as the same falls squarely within its
definition. In order to be entitled to exclusively use the same in
the sale of the beauty cream product, the user must
sufficiently prove that she registered or used it before anybody
else did. The petitioner’s copyright and patent registration of
the name and container would not guarantee her the right to
the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights.
Consequently, a preliminary injunction order cannot be issued
for the reason that the petitioner has not proven that she has
a clear right over the said name and container to the exclusion
of others, not having proven that she has registered a
trademark thereto or used the same before anyone did.
Another case is the case of Pearl and Dean vs SM.
(Classmates, it seems ngagi-read judni Ma’am ang entire ruling
aninga case)
Case: Pearl and Dean vsShoemart
Facts: Pearl and Dean (Phil.), Inc. is a corporation engaged in
the manufacture of advertising display units simply referred to
as light boxes. Yung mga poster ads, with the pictures of
artistas, yungmgaganun. These units utilize specially printed
posters sandwiched between plastic sheets and illuminated
with back lights. Pearl and Dean was able to secure a
Certificate of Copyright Registration dated January 20, 1981
over these illuminated display units. The advertising light
boxes were marketed under the trademark “Poster Ads”. The
application for registration of the trademark was filed with the
Bureau of Patents, Trademarks and Technology Transfer on
June 20, 1983, but was approved only on 1988. From 1981 to
about 1988, Pearl and Dean employed the services of Metro
Industrial Services to manufacture its advertising displays.
However, narealizeng SMna “angdali-
dalilangnamanpalanggawinngmga boxes”, so it did not renew
the contract, and made their own. So Pearl and Dean sued SM
for infringement, unfair competition and damages against SM.
Issues:
1. Did SM commit copyright infringement?
(1) if the engineering or technical drawings of an
advertising display unit (light box) are granted
copyright protection (copyright certificate of
registration) by the National Library, is the light
box depicted in such engineering drawings ipso
facto also protected by such copyright?
Held: The SC said NO!
P & D vs SM
Held: Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights are
limited to what the statute confers. It may be obtained and
enjoyed only with respect to the subjects and by the persons,
and on terms and conditions specified in the statute.
Accordingly, it can cover only the works falling within the
statutory enumeration or description.
P & D secured its copyright under the classification class “O”
work. This being so, petitioner’s copyright protection extended
only to the technical drawings and not to the light box itself
because the latter was not at all in the category of “prints,
pictorial illustrations, advertising copies, labels, tags and box
wraps.” Stated otherwise, even as we find that P & D indeed
owned a valid copyright, the same could have referred only to
the technical drawings within the category of “pictorial
illustrations.” It could not have possibly stretched out to
include the underlying light box. The strict application of the
law’s enumeration in Section 2 prevents us from giving
petitioner even a little leeway, that is, even if its copyright
certificate was entitled “Advertising Display Units.” What the
law does not include, it excludes, and for the good reason: the
light box was not a literary or artistic piece which could be
copyrighted under the copyright law. And no less clearly,
neither could the lack of statutory authority to make the light
box copyrightable be remedied by the simplistic act of entitling
the copyright certificate issued by the National Library as
“Advertising Display Units.”
In fine, if SMI and NEMI reprinted P & D’s technical drawings
for sale to the public without license from P & D, then no
doubt they would have been guilty of copyright infringement.
But this was not the case. SMI’s and NEMI’s acts complained
of by P & D were to have units similar or identical to the light
box illustrated in the technical drawings manufactured by
Metro and EYD Rainbow Advertising, for leasing out to
different advertisers. Was this an infringement of petitioner’s
copyright over the technical drawings? We do not think so.
During the trial, the president of P & D himself admitted that
the light box was neither a literary not an artistic work but an
“engineering or marketing invention.” Obviously, there
appeared to be some confusion regarding what ought or ought
not to be the proper subjects of copyrights, patents and
trademarks. In the leading case of KhovsCAwe ruled that
these three legal rights are completely distinct and separate
from one another, and the protection afforded by one cannot
be used interchangeably to cover items or works that
exclusively pertain to the others:
Trademark, copyright and patents are different
intellectual property rights that cannot be
interchanged with one another. A trademark is any
visible sign capable of distinguishing the
goods(trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name
means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of
a copyright is confined to literary and artistic works
which are original intellectual creations in the literary
and artistic domain protected from the moment of
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 their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in
any field of human activity which is new, involves an
inventive step and is industrially applicable.
2. If, despite its manufacture and commercial use of the
light boxes without license from petitioner, private
respondents cannot be held legally liable for
infringement of P & D’s copyright over its technical
drawings of the said light boxes, should they be liable
instead for infringement of patent? NO.
Held: For some reason or another, petitioner never secured a
patent for the light boxes. It therefore acquired no patent
rights which could have protected its invention, if in fact it
really was. And because it had no patent, petitioner could not
legally prevent anyone from manufacturing or commercially
using the contraption. In Creser Precision Systems, Inc. vs.
Court of Appeals, we held that “there can be no infringement
of a patent until a patent has been issued, since whatever right
one has to the invention covered by the patent arises alone
from the grant of patent. x xx (A)n inventor has no common
law right to a monopoly of his invention. He has the right to
make use of and vend his invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to
copy and use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has
the exclusive right of making, selling or using the invention. On
the assumption that petitioner’s advertising units were
patentable inventions, petitioner revealed them fully to the
public by submitting the engineering drawings thereof to the
National Library.
There is no such scrutiny in the case of copyrights nor any
notice published before its grant to the effect that a person is
claiming the creation of a work. The law confers the copyright
from the moment of creation and the copyright certificate is
issued upon registration with the National Library of a sworn
ex-parte claim of creation.
Therefore, not having gone through the arduous examination
for patents, the petitioner cannot exclude others from the
manufacture, sale or commercial use of the light boxes on the
sole basis of its copyright certificate over the technical
drawings.
Stated otherwise, what petitioner seeks is exclusivity without
any opportunity for the patent office (IPO) to scrutinize the
light box’s eligibility as a patentable invention. The irony here
is that, had petitioner secured a patent instead, its exclusivity
would have been for 17 years only. But through the simplified
procedure of copyright-registration with the National Library —
without undergoing the rigor of defending the patentability of
its invention before the IPO and the public — the petitioner
would be protected for 50 years. This situation could not have
been the intention of the law.
3. Is SM liable for trademark infringement? NO.
Held: This issue concerns the use by respondents of the mark
“Poster Ads” which petitioner’s president said was a
contraction of “poster advertising.” P & D was able to secure a
trademark certificate for it, but one where the goods specified
were “stationeries such as letterheads, envelopes, calling cards
and newsletters.” Petitioner admitted it did not commercially
engage in or market these goods. On the contrary, it dealt in
electrically operated backlit advertising units and the sale of
advertising spaces thereon, which, however, were not at all
specified in the trademark certificate.
Assuming arguendo that “Poster Ads” could validly qualify as a
trademark, the failure of P & D to secure a trademark
registration for specific use on the light boxes meant that there
could not have been any trademark infringement since
registration was an essential element thereof.
4. Did SM engage in unfair competition? NO!! (*high
notes si Ma’am)diba, in unfair competition, one must
establish goodwill!
Held: There can be no unfair competition under the law on
copyrights although it is applicable to disputes over the use of
trademarks. Even a name or phrase incapable of appropriation
as a trademark or tradename may, by long and exclusive use
by a business (such that the name or phrase becomes
associated with the business or product in the mind of the
purchasing public), be entitled to protection against unfair
competition. In this case, there was no evidence that P & D’s
use of “Poster Ads” was distinctive or well-known. As noted by
the Court of Appeals, petitioner’s expert witnesses himself had
testified that “ ‘Poster Ads’ was too generic a name. So it was
difficult to identify it with any company, honestly speaking.”
This crucial admission by its own expert witness that “Poster
Ads” could not be associated with P & D showed that, in the
mind of the public, the goods and services carrying the
trademark “Poster Ads” could not be distinguished from the
goods and services of other entities.
This fact also prevented the application of the doctrine of
secondary meaning. “Poster Ads” was generic and incapable of
being used as a trademark because it was used in the field of
poster advertising, the very business engaged in by petitioner.
“Secondary meaning” means that a word or phrase originally
incapable of exclusive appropriation with reference to an
article in the market (because it is geographically or otherwise
descriptive) might nevertheless have been used for so long
and so exclusively by one producer with reference to his article
that, in the trade and to that branch of the purchasing public,
the word or phrase has come to mean that the article was his
property. The admission by petitioner’s own expert witness
that he himself could not associate “Poster Ads” with petitioner
P & D because it was “too generic” definitely precluded the
application of this exception.
This was asked three years ago, what is the Denicola Test?
Mygawd.When I saw the question, I said “I haven’t
encountered this.” So I did my research. (Unfortunately, sa
Wiki na unveil ang answer, Wiki ang source niMa’am ).
(from wiki) Courts often rely on the Denicola test, which asks
whether the artistic design was significantly influenced by
functional considerations. If so, copyrightability depends on
the extent to which the work reflects the artistic expression
inhibited by functional considerations. As discussed by Judge
Oakes:
Copyrightability "ultimately should depend on the extent to
which the work reflects artistic expression uninhibited by
functional considerations." To state the Denicola test in the
language of conceptual separability, if design elements reflect
a merger of aesthetic and functional considerations, the artistic
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aspects of a work cannot be said to be conceptually separable
from the utilitarian elements. Conversely, where design
elements can be identified as reflecting the designer's artistic
judgment exercised independently of functional influences,
conceptual separability exists.

Useful articles, okay. If a pictorial, graphic, or sculptural work,

or a work of art is useful as well…can you copyright
something aesthetic which is also useful as well? According to
xxx, it is copyrightable only when its aesthetic features are
separable from its utilitarian features. A useful articleis an
article having intrinsic utilitarian features not merely…the
appearance of an article. They must be separable from the
functional aspect to be copyrighted. So you can only copyright
the portion that is aesthetic, noh? So how do you know that
the useful part can be separated from the aesthetic part?

There are several tests used:

1. Primary Use Test – how is the thing primarily used,

did you buy it as a gadget or something which you
would admire or show?
2. Marketable as Art Test – Can the article be sold as
art? This test doesn’t have much backing.
3. Temporary(?)displacement (Not sure, mejo noisy ang
audio, if temporary or temporal) – Can an individual
conceptualize the article as art without
conceptualizing functionality at the same time?
4. Denicola Test – Copyrightability should ultimately
depend on the extent to which the work reflects the
artistic expression and functional consideration, if
something is in pleasing shape because it is functional
the artistic aspect is constrained by it, meaning it
should be pleasing to be admired because it is
pleasing to look at and not because it is useful. So
that is the Denicola Test.

So I think that’s it. (whew!)

Read the cases ha.

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