REVIEWER IN COMMERCIAL LAW Courts. The moment the claim is ted with one tice, the insured does not have the right to fie it with the other. But when the claim exeseds 100,000.00, the recourse of the insured is only to the regular courts, Note: “The jurisdictional amount of cases falling under the Municipal Trial Court of the Metropolitan Trial Court thas been increased from P20,000.00 to P200,000.00 Jn Motro Manila and to F'100,000.00 in the provinces. ‘@: When does the prescriptive period to bring a sult in ‘court under an insurance policy begin? ‘A: Itbegins to run from the date ofthe insurer's rejection ‘of the claim fled by the insured, the beneficiary or any ‘person claiming under an insurance contract ©; Ininsuranoe, when mustthe notioe of claim be fled? ‘A: Thenotice of claim must be filed win sb (6) months fromthe date ofthe accident. Otherwise, the clair shall bbe deemed waived. Comment: ‘An application form does not prove thatinsurance was secured a2 “THE INSURANCE CODE Chapter 13, ‘The Copyright Law (Republic Act No 8283) Effect of the adoption of the Intellectual Proporty Code Republic Act No. 8298, otherwise known as the Intelactual Property Code (IPG), created the Intellectual Property Office (IPO). Itrepealed Republic Act No. 165, Republic Act No, 166, Articles 188 and 183, of the Revised Penal Code, and PD. No. 49 and 285. Tha ‘Bureau of Patents, Trademarks and Technology Transter \as abolished, transferring ils functions tothe IPO. But the patents, marks and copyrights, which have been obtainod ear, are maintained. Literary and Artistic Works ~ When Protected @. What are iterary and artistic works and when are they protected”? ‘A: Literary and artistic works are original intllectual ‘reations in the lterary and artistic domain protected ‘rorvtne moment of ther creation (intellectual Property Code, Sec. 172).REVIEWER IN COMMERCIAL LAW Works not Protected (@: What works are not protected? ‘A: No protection shall extond, under the IPC, to any ‘idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they ‘are expressed, explained, llustrated or embodied in a ‘work; news of the day and other miscellaneous facts ‘having the character of mere toms of press information; ‘or any oficial textot a legislative, adrnnistrative or legal nature, as well as official translation thereof (IPC. Sec. 178). @ Incase of original iterary and artistic works, to whom shall the copyright belong? A. The copyrignt shall belong to the authorof the work UPC, Sec. 178). ‘To Whom Does Copyright Belong Incase of a work, commissioned by a person other than an employer of the author and wo pays forit and the work is made in pursuance ofthe cormmission, who ‘owns the work end the copyright? |A: The person who so commissioned the work shall have ownership of the work, but the copyright shall remain with the creator, unless there is a written stipulation to the contrary (PC, Sec. 178.4). THE INSURANCE CODE Q: in respect to letters, to whom shall the copyright belong? ‘A: The copyright chall bolong to the wnier, eubject to the provisions of Article 723 of the Civil Code (IPC, ‘Seo. 1786). ‘Article 723, ofthe New Civil Code, provides: “ART, 729. Letters and ether private communications in writing are owned by. the person to whom they are ‘addressed and delivered, but tiey cannot be publishador disseminated winout the consent ofthe writer orhis hols, However, the court may authorize their publication oF dissemination f tne public goodor the interest ofjustice so requires.” © Problem: Pedro, @ well-known author, entered into a Contract with Jose. Pedro bounc himself to wro.a book concerning the le.of Jose for P100,000.00 within six (©) months. 1) Pedro failed to comply with the contract. Can Jose compe! Pedro to perform the contract? a8REVIEWER IN COMMERCIAL LAW 2) Assuming that Pedro wes able to finish writing the book. Can Jase compel Pedro to publish i? Answer: 41) No. To compel Pedro to write the book would Constitute involuntary. servitude and would also violate tne IPC (IPC, Sec. 194). 2) No. Pedro cannotbe compelled to publish the book ever if itis already in existence (IPC, Soc; 194), Q: Inthe two (2) nstancas under the preceding problem, ‘hat isthe remedy of Jose? ‘A; Jose's romedy would be to'sue Pedro for damages {or breach of contract (IPC, Sec. 194), ‘Term of Copyright (@: What the term ofthe rights. of the author under the onytight? ‘As The rights ofthe author shaliast during his etme ‘and fr fity (60) years after his death and shall not be accignabie‘orcubjctto license. Tho person or persons tobe crarged wih the posthumous enforcement ofthese tights shall be named in wing to be fled withthe THE INSURANCE CODE ‘National Library. In default of such person or persone, ‘such enforcement shall devolve upon efter the author's his, and in default of the heirs, the Director of the National Library. (IPC, Sec. 188) Problem: Cosme spent several yaars gathering materials for and in wating a book. After completing the preparation of the Book, he cbtained a copyright in his Due 1 his illness, he sold all his rights and interests in the book and the copyright to Evergreen. Publishing Co. for and in consideration of the sum of 100,000.00. A year later, Cosme diod, leaving threo. (@) heirs. Six (6) monthe after the death of Cosme, his helrs wrote to Evergreen Publishing Co. asking for a pait of the proceeds ofthe sale ofthe book. ‘Are the heirs of Cosme entitled to thoir claim? Explain briefly. ‘Answer: Yes, they are ented to their claim for a part of the proceeds of the sale of the book. In every sale or lease of an original work of painting or sculpture or of the original manuscript of @ writer or composer, ‘subsequent to the first dispostion thereof by the author, the author or his heirs shall have an inalienable right to Participate in the grose-proceeds of the sale or laase to a7REVIEWER IN COMMERCIAL LAY the extent of five percent (5%). This right shall exist ddutiog the Ifetime of the author and for fy (60) years after his death. (IPC, Seo. 200) Fixation @: What i fixation"? ‘A: “Fixation’ means the embociment of sounds, oF of the representations thereol, from which they can be perceived, reproduced or communicated through a deviea. (IPC, See, 202.4} Remedies in infringement Action ‘Q; Enumerate the romedios available to the plain in ‘an action for infingemont? ‘A: Any person infringing right protected under tho IPC shall be lable 1: a) An injunction restraining such infringement. The court may also order the detendant to desist {rom an infringement, among others, to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs ‘clearance of such goods '). Pay tothe copyright proprietor or his assigns ‘orhoirs such actual damages, including egal costs and other expenses, as he may have “THE INGURANGE CODE incurred due to the infringement as well as. profs the infringer may have made dus to such infringement, and in proving profits the plaintif shall be required to prove sales only And the defendant shall be required o prove every slament of cost which he claims, of, in lieu of actual damages and profits, such damages wiich to the cour. chall appear to be just and shall not be regarded as penalty. ©} Deliver underoath, forimpounding during the pendency ofthe action, upon such terms and ‘concitions as the court may prescribe, sales invoiges-and other documents evidencing sales, allarticles and tei packaging, alleged {o infringe a copyright and implements for ‘making them. ) Deliver underoath for destruction without any compensation allintringing copies or devices, 8 well as all plates, molds, or other means ‘or making such ininnging copies as the court may order. @) Such ether terms and conditions, including the payment of moral and exemplary ‘damages, which the court may deem propor, ‘wise and equitable and the destruction of Infringing copies ofthe work even inthe event ‘of acquittal in-a criminal case. (IPC, See. 216.1) a9REVIEWER IN COMMERCIAL LAW Ivan infringement action, the court shall also have. the power fo order the seizure and impounding of any article which may serve as evidence in the court proceecings (IPC, Sec. 216.2) Presumption of Authorship. Is there any presumption of authorshis? A: Yes. The natural person whose name is indicated fon a work in the usual manner as the author, an the ‘absence of proof to the contrary, shall be presumed to bbe the author of the work. This presumption apples ‘ven if tiename is a pseudonym, vitere the pseudonym eaves no doubt as tothe identity of the author. (IPC, ‘Sec: 219) Prescriptive Period for ‘Actions Under the IPC @: What ist 1Po? prescriptive period for actions under the ‘A: The action for damages undor tho |PC prescribes, after four (4) years from the time the cause of action arose. (IPC, Sec. 226) {: After dissemination, can you apply fora copyright? ‘A: No, because after dissemination, the material ‘belongs to the pubic domain. The moment the material ‘belongs to the public domain, nobody has the right to “THE INSURANCE CODE apply for the exclusive right ike @ copyright because a copyright glvee you the exclusive right. Bult the moment the material becomes part of the public domain, i.e., it has been published or ‘isseminated/excosed tothe publi, this can no longer be the subject of an exclusive right to any individual because that is now what is known as part ofthe public domain, wyREVIEWER IN COMMERCIAL Lavy Chapter 14 ‘The Patent Law (Republic Act No. 8293) Patent Defined @ Whatis a patent? A: Ite an exclusive ight acquited over an invention in favor ofthe inventor. Its the exclusive ight 10 sek 0 use or to make the invention, Patentable Works ‘Q: What may be patentable? ‘A: Any tochnical solution of a problom in any field of ‘human activity which is (a) new, (b) invelvesan inventive ‘tox, and (eis industialy applicable shal be patentable (intellectual Property Code, Sec. 21). ‘Aniinvention ie not considered new fit forms part of prior, thats, eveything made available tothe public ‘anywhere in the wr'd, betore the date of ling or pronty date of application a0 “THE PareNTLAW Disclosure Requirement (@: What must the application fora patent disclose? ‘A: Tho application must disclose the invention in a ‘manner sufficiently loar and eompiete fritto be cariog ‘out by-a person skiled inthe art (IPC, Sec. 36) Non-Resident Applicant (@: Whats required of a non-resident applicant? ‘A: ANon-tesidant applicant must appoint and maintain 2 resident agont ot representative the Philppines (IPC, Sec. 33). ‘Term of Patent @ What is the torm of a patent? ‘A: The term of a patent is twenty (20) yeavs from the date offing ofthe application (IPC, See. 54). Cancellation of Patents - Grounds @ Enumerate the grounds for cancellation of patents, A: The following are the grounds for cancelation of patents: (2) the invention isnot new or patentableFEVIEWER IN COMMERCIAL LAW {b) the patent does not disclose in a manner sufficiently clear and complete foritto be carried out by a person skilled In the art: or (©) the patent is contary to public ‘order or morality. (IPC, Sec. 61) Aights of Patont Owner ©: What are the rights conferred by a patent on its owner? [A: Apatent confers on its owner the folewing rights: (a) Where the subject matter o a patent is a produet, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or Importing that product; (©) Where the subject matter of a patent is a process. to. restrain, prevent or pprobibitany unauthorized person or entity from using the process, and from manufacturing, dealing in, Using, seling orolerng tor sale, of importing any product obtained directly or 4ndirectly from such process. ‘THE PATENTLAW Patent owners shall also have the right to assign ‘or transfer by suocession the patent, and to conclude licensing contracts for the same, (IPC, Sec. 71) Rights of Prior User (Q: What is the right of a prior user? A: Any prior user, who, in good faith was using the lvention or has undertaken serious. preparations to se the invention in his enterprise or business, before ‘the fing date or priority date ofthe application on which ‘3 patent is granted, shall have the night to continue the Use thereof as envisaged in such preparation within the {onilory where the patent produces is effect. (PC, Sec. 73) Patent intringement (Q: What constitutes patent infringement? A: The making, using. offering for sale, selling, or Importing a patented product or a product obtained directly or indirectly trom a patented process, orthe use ‘of a patented process without the authorization of the patontoo constitutos a patent infringement. (IPC, Sec. 78) Q: Who can il an action for infingement ofa patent? ‘A: Only the patentee or his suocessors-n-interast may file an action for infringement. A person or entity wnoREVIEWEF IN COMMERCIAL LAW has notbeen granted etter of satant over an invention ‘and has not acquired any right or tite thoroto ethor as assignee oF as licensee, has no cause of action for infringement because the right to maintain an inftingement suit epends on the existence ofthe patent. ‘A person claiming tobe an inventor of an article has no:right of property over the same upon which it ‘can maintain a suil uniess it obtains a patent therefor. (Creser Precision Systoms, Inc. v. Court of Appeals, 286 SCRA 13 [1998}) : What damages may be awarded against an infringer of patented invention? ‘A: The patentee may recover from the infringer the damages sustained, plus attorney's fees and other ‘expenses of tigation, and to secure injunction forthe protection of his rights. ifthe damages are inadequate fr cannot be readily ascertained with reasonable Certainty, the court may award by way of damages @ ‘sum equivalent 1 reasonable royally. According tothe cireumstancos of the case, the court may award damages in a sum above the amount found as actual damages sustained, but the award shall not exceed three (3) times the amount of such actual damages. (IPC, Sec. 76) Liability of Contributory Infringor Q: What is the lability of @ contributory intinger? [Ac Anyone who actively induces the inringement of a patent or provides the infnger with a component of a Patented product or of @ product produced because of ‘a patented process knowing it tobe especialy adopted {orinfringing the patented invention and not suitable for substantial non-infringing use shall be liable as a ‘contributory infinger and shal be jointly and severally Fable wih the infringer. (IPC, Sec. 76.6) Prescription of Action {or infringement ‘@: Within what time should an action for damages for ‘cs of infringement be brought?” ‘A: No damages can be recovered ifthe action for infringement is instituted four years afar such infringement, In othor words, the action preserbos in four years Requisite for Infringement ‘Action for Damages @: What is the requisite for recovery of damages for acts of inringament? A: Damages cannot be recovered for acts of infringement commited before the inringerhad known. for had reasonable grounds to know ofthe patent. tis presumed that the infinger had known ofthe patent if fn the patented preduct, or an the containar or package in which the article is supplied to the publi, or on tha aREVIEWER IN COMMERCIAL LAW ‘advertising material relating tothe patentod product or process, are placed the words Philippine Patent” with the numberof the patont. (IPC, Sec. 80) Defenses in Infringement Action @: What defenses may a defendant. in an action for infringement, raise? A: In adttlon to other defenses availabe to him, the dofendant may show the invalidity ofthe patent. or any claim thereat, on any of te grounds on which the petition ‘of cancellation can be brought under Section 61 of the IPC. (IPC, Sec. 81) Criminal Liability for infringement @: Is there any criminal iaily for infringement of patent? A I Infringement is repeated by the infringer or by anyone in connivance with him after tinalty of the Judgment ofthe court against the infringar, the offenders ‘hall, without prejudice tothe institution of acivi action {for damages, be criminally lable therefor and, upon ‘conviction, shall suffer imprisonment for he period of ‘ot ess than six (6) months but nat more than three (3) ‘years endior a fine of not less than One Hundred ‘Thousand Pesos (P100,000) but not moro than Three Hundred Thousand Pesos (P00,000), at ine discretion 20 THEPATENTLAW of the cour. The orminalaction shall presets in three {@)yearstrom the dete of commission athe crime (IPC, See. 04) Compulsory Licensing : Enumerate the grounds for compulsory licensing ‘A: The Director of Legal Aas of the IPO may grent a license to explotta patentad invention, even without the ‘agreement of the patent owner, in favor of any person. who has shown his capability fo exploit the Invention, Under any ofthe following circumstances: 1) National emergency or other cirourstances of extreme urgency; 2) Where the public interest, n particular, ‘ational security, nuttion, health or the development of other vital sectors ofthe rational economy asdetermminedby the appropriate agency of tne Government, 0 requires; or 9) Where a judicial or administrative body. has determined that the matter ‘of exploitation by the owner of the patent (oF his licenses fs anti-competitive; or 4) In case of public non-commercial use ‘of the patent by the patentee, without salisfactory reason;[AEVIEWER IN COMMERCIAL LAW '5) if the patented invention is not being worked in the Philippines on @ commercial scale athoush capable of being worked, without satistactory reason: Provided, That the importation of the patented article shall consitute \working or using the patent. (IPC, Sec. 83) : When may a patition for a compulcory liconse be filed? ‘A: Acompulsory license may not be applied for belore the expiration ofa period of four (4) years trom the date of fling of application or three (3) years from the date of ‘the patent, whichever period expires last, IPC, See. 94) Utity Model @: When is a pay entitled to patent for utility model? A: Any new model of implements oF tools of any industrial product even it not possessed ofthe quality of invention but which 's of practical uty is ond to a patent or utility mode! (Del Rosario v. CA, 255 SCRA 152 (1996) ‘A.tlty mode shallnot be considered "new' before the application fora patent ittias been publicly known Cor publicly used in this country orhas been described in 430 ‘THE PATENTLAW {printed publication or pubicationscirculated within the country, oF iis substantially similar to any other utility model so known, used or descrived within the country (abi) : When may an invention quail for registration as utity mod? A: An invention qualifies for registration as a usilty ‘model fits new and indusivally applicabl. (IPC, Sec. 109.1) : When does the registration of utility mod expire? A: Auility model registration shall expire, without any possibilty of renewal, at the end of the seventh year after the date of ling ol the application. (IPC, Sec. 109.3) Industrial Design © Define indusirial design. ‘A: An industrial design 's any composition of line or colors oF any three-dimensional form, whothar or not associated with ines or colors: Provided, That such compostion or form gives special appearance to and an serve as pattern for an industrial product or hhancicraft. (PC, Sec. 112) ©: What is the torm of industrial design registration?REVIEWER IN COMMERCIAL LAW ‘A: The regisiration ofan industial design shall be for 4 pariod of five (5) years from the fling date of the application. The registration ofan indusiral design may bbe renewed for not mare than two (2) consecutive lode of five (5) yoars each, by paying tho ronowal (PG, Sec. 118) ‘THE TRADEMARK LAW ‘Chapter 15 ‘The Trademark Law (Republic Act No. 8293) Detinition lark’ means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped oF marked container of goods. (IPC, Seo. 121.1) “Trade name means the name or designation ‘dentitying or sisting.ishing an enterprise. (PC, Sec. 121.3) @: How are rights in a mark acoulred? ‘A: The rights in a mark are acquired through registration ‘mada valldly In accordance with the provision of the IPC. IPC, See. 122) (Q: What mark cannot be registered? ‘Ac Amatk cannot be registered it it {a)Consists of Immoral, deceptive or ‘scandalous matter, or mater which may cisparage or falsely suggest connection with persons, ving or dead, insttutions, beliefs, or national symbols, or bring them into contempt or disrepute:REVIEWER IN COMMERCIAL LAW” (6) Consiets of the flag oF coat of arms or other Insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereot, (o) Consists of a name, portrait or signature ‘dentiying a particular lving indvidual except by his ‘ele consent, ofthe name, signature, or portal of a ‘deceased President ofthe Philippines, during ne ife of tis widow tary, excepto writen consent cf tne widow, (@) ls Mdantcal with a registered mark belonging toa different proprietor oramark with an ear fling or prifily date, in respect of: 1) The same goods or services, or 2) Closely related goods or servioas, or 3) Wit nearly resembles such a mark as to be likely to deceive or cause ‘contusion: (6) is identical with, or eontusingly similar to, or Constitutes a translation of a mark which is considered bby competent authority of the Philippines to be well- known internationally andin the Philippines, whether or not tis registered here, as being alweady the mark of a person other than he applicant for registration, andused foridentical or similar goods or services: Provided. That in determiring whether a mark is well-known, acoount ‘shall be taken of the knowledge ofthe relevant sector a “THE TRADEMARK LAW ofthe public, rather than the public at large, including kknowiedige in the Philippines which has been obtained. 18a result ofthe promotion of the mark; (0) Is identical wth, or confusingly sia o, or constitutes transiation of a matk considered wall known in assordance with the prececing paragraph, hich is registered inthe Philippines with respect to ‘goods or services which are not similar to those with respect to which registration is apoled for: Provided, That use of the mark in relation to those goods of services would indicate a connection betwoon those {goods or services. andthe ower ofthe egistered mark Provided further. That the interest ofthe owner ofthe reglatered mark are likely to be damaged by such use: {g) Is tkely to mislead the public, particularly as to the nature, quality, characteristics or geographical otign ofthe goods of services; (n) Consists exclusively of signs that are generic for goods or services that they sok to identity; (0) Consists exclusively of signs or indications ‘that have become customary or usual to designate the ‘90008 oF servioes in everyday language orin bona fide land established trade practice: @) Consists exclusively of signs or of indications that may serve in rade to designate the kind, ualty, quant, intended purpese, value, geographicalEVIEWERIN COMMERCIAL LAW origin, time oF production of the goods or rendering of the services, or other characteristics of the goods or services: (Consists of shapes that may be necessitated by technical factors or by the nature ofthe goods themselves or factors that affect their intrinsic value? (0) Consists of color alone, uniess defined by a sven fomn; or (em) Is contrary to public order or morally. ‘As regards signs or devices mentioned in paragraphs (j, (k), and (), nothing shall prevent the ‘egistraion ofan such sign or device which has become distinctive in elation to the goods for which registration is requested aa recut of the use that have beon mado ofitin commerce in the Philppines. The IPO may accept as prima facle evidence that the mark has become distinctive, as used in connection with the applicant's {goods oF services in commerce, proof of substantially exclusive and continuous use thereot by the applicant in commerce in the Phiigpines for {ve (8) years betore the date on which the claim of distinctiveness Is made, ‘The nature of the goods to which the mark Is apalied wit aot censtie an oblate to recitation. (PC, Sec. 123), ‘THE TRADEMARK LAM Declaration of Actual Use Qi: Whatis the necessity of declaration of actual use? ‘A: The applicant or registrant shal fis a declaration of actual use of the mark with evidence to that effect, as 'prosoribed by the Regulations within three (@) years rom the filing date of the epplication. Otherwise, the application shall be refused or the mark shall ‘removed from the Register by the Director. (IPC, Sec. 1242) 11 should be remembered always that actual use is the lifeblood of a mark. That is why itis further requiced thata declaration of actual use and the evidence thereof should be submitted within one (1) year from the fith anniversary of the date of registration ofthe mark. (IPC, ‘Sec. 145) Problem: On January 5, 1982, Pater fled an application for the registration of his trademark PETRO’ for his T- shirt product which he manufactures. On March St, 1992, his application was spproved ans his trademark was registered, Due to financial difficulties, he stopped manufacturing his preduct on Apel 21, 1994. On Apiil 5, 1998, the Director removed the trademark of Peter from the Register. Is the action ofthe Director correct? Expiain orEVIEWER IN COMMERCIAL LAW Answer: ‘Yes, The action af the Director is correct. Within ‘one (1) year from the fith anniversary of the date of registration of his trademark, Petar should have filed 2 declaration of actual use and evidence to that effect. (Sec. 145, 1PC) Peter could not fle such declaration of actual usa. because he stopped manufacturing his product on Apri 21, 1994 due to financial dficulties. Lack of funds shall rot excuse non-use of ttadamark (See. 182, IPC) Problem: In 1980, Marcos applied forand was cranted the registration of trademark ‘DRAGON’ in the principal register for a mosquito repellant product which he was developing and intending to market in the Philippines. ‘Due to rapid dovoiopments in science and technology, he had fo make a series of changestmodifications in the produet from time to time, This prevented him from marketing his product (On Oetobor 1, 1997, after marketing his mosquito ‘repellant product under the mark “DRAGON” since 1890, Josue filed an application for the registration of ‘said mark. Matcos filed an opposition based on his earlier registration of exactly the same trademark covering an identical product: Will the application of Josue prosper? Explain. “THE TRADEMARK LAE Answer: ‘Ys, The trademark of Marcos, though registered, was not. used with his product, On the other hand, the ‘trademark of Josue has been used wih his product since +1990. Actual use isthe ifblood cf trademarks. Probler Pedro applied or anc was granted the registration of the mark "BRUT" which was usedas logo for histoliet products. "BRUT" mark has been used by Pedro for ‘the manulacturing and marketing of his tolls products sings 1970, (On uly 1, 1999, Tomas fled an application for ‘he regstation ofthe mark "BRUT" which has been used ‘as logo for his underwear products since 1990. Pedro filed an opposition based on the certificate of registration ‘of the trademark “BRUT” which was issued to hiry in +1995. Wil the application of Tomas prosper? Expiain Answer: ‘Yes. Protection of Pedro forthe use of the mark “BRUT” eavers only the products specified in the certificate of registration, thats. only for tolet products. (On the other hand, the mark BRUT, subject matter of ‘tho application for registration ofthe mark “BRUT” covers lunderwear products which does not involve toilet producis. The products of Pedro being protected by the registration are limited to those spectied in the fourREVIEWER IN COMMERCIAL LAW corners ofthe certficate of registration. Such protection ‘d06s not go beyond the four comers of the certificate. Duration of a Certificate of Registration of a Mark : What is the duration ofthe catiticate of registration ‘ofa mark? ‘A: Accattlicate of registration shall remain n-force,for ten (10} years, subject tothe fing ofthe declaration of ‘actual use, renewal for periods of ten (10) years at ts ‘expiration upon payment ofthe prescribed fee and upon fing @ request. (IPC, Sections 145 and 145), Test of Dominancy {Q: What isthe “test of dominancy"? (BAR 1996) A: Under the "test of dominancy’, infringement is etermined rather than by differences or variations in the dota's of one trademark and of another. Similarity insize, form end oolo, vile relevant, is not conclusive, ite compoting tadomark contains ine maint nical ce gaeanesireecharethor end orton ‘and deception. is lksly to result inflingoment takes ‘place. Duplication or imitation is not necessary; nor 's it necessary thatthe inftnging label should suggest an effort to imitate. (Asla Brewery, Ine. v. Court of ‘Appeals, 224 SCRA 437, 445-448 [1993}) ‘THE TRADEMARK LAW Comment: Under the “Dominancy Test’. infringement is determined rather than by differences or variations in the detais of one trademark and of another. Similarty insize, form and color, while relavart, is not conclusive, HW the competing trademark contains the main or ‘essential or dominant features of ancther, and contusion and deception is key to result, infingementtakes place, Duplication or imitation is not necessary; nor itis ‘necessary thatthe infringing label should suggest an effort to imitate, (Asia Browory, Inc. vs. Court of ‘Appeals, 224 SCRA 437, 447-446 (1893) Holistic Test ‘On the other side of the spectrum, the "Holistle ‘Test’ mandetes thatthe entirety ofthe marks in question must be considered in determining confusing similaity. ‘A-comparison of the words is not the only determinant facior. The trademarks in their entirety as they aoe: in their respective than ‘considered in relation to to which they are attached. The diecoming eye ofthe obsarver must focus ‘not only onthe predominant words but also on the other features appearing in both labels in order that he may draw his conelusion whether one is confusingly similar to the other. (Emerald Garment Manufacturing Corporation vs. Court of Appeals, G.A. No. 100098, December 29, [1995])REVIEWER IN COMMERCIAL LAM In both the ABI case (applying the “test of dominaney’) and the Emerald Garment case (applying the "holistic test”), the Supreme Court ruled that there |was no infringement or unfaircornpettion 2s the marks in question were not confusingly eimiar, Doctrine of Secondary Meaning Q: What is the Doctrine of Secondary Meaning? ‘A: The possessor or user of the trademark has been using it for @ long time exclusively such that the name has been clasely associated with the product so much ssothat the public identifies the product with trade name resulting in goodwill. (See Sec. 123.2, IPC) Goodwill @: What is goodwit? [A> tis the good reputation gained by the product over ‘a patiod of time, Infringement @: The tradomark of a certain products reqstorod in the principal register. Another product belonging to another company similar to the product first registered is being introduced here. Has the owner ofthe product ‘whose trademark has been registered in the principal register any cause of action against the owner of the new product? ‘THE TRADEMARK LAW ‘A: Yes: The cause’of action is infingament. In such ‘€2s8, thera is no problom bocause thor is registration. In infringement, malice is not an essential element for the cause of action. Unfair Competition Q: Assuming that the first product has not been registered in any of the registers. A similar product bang introduced. Has the ownar of the fist product ‘any cause of action against the owner of the second product? ‘A: Yes, for unfair competition. In unfair competition, ‘mali isan essential element fora cause of action. @: What isthe test of unfair competition? ‘A: Whether or not an ordinary buyer using ordinary ‘iscretion would bs misled into thinking or belaying that the new product he is buying now is the same as the ‘old product that has already acquired goodkll in the market, Problem: Laberge, nc. manufactures and markets afler- ‘shave lotion, shaving cream. dacdorant, talcum powdor ‘and tollet soap, using the trademark “PRUT", whichis registered with the Intellectual Progerty office, Laberge ‘does not manufacture brits and underwear and these items are not specified in the centfcate of registration.REVIEWER IN COMMERCIAL LAW JG, who manulactures briefs and undorweat, wants to know whether, under our laws, he can usa.and ‘ogistor the tracomark "PRUTE” for his merchandise, What is your advice? (BAR 1994) Answer: Yos. JG can use and repister the trademark “PRUTE” for his merchandise. The trademark ‘agistered in the name of Laberge, Inc. covers only affer-shave lotion, shaving cream, deodorent, talcum ppovider and toilet soap. It does not cover briefs and underwear The trademarks ned centcate of registration issued io Laberge, ro does net cover of inckide fie and underwear wich ave Atfrent products protected by Laberge trademark. ‘Tocoverits briefs and underwoar, JG can register the trademark "PRUTE” (Faberge, Inc. v. 1AC, 215 SCRA 316). i; What does the Paris Convention eek to provent? ‘A: Soction 1, Article § of the Paris Convention seeks to pravent monopolies (Smith Kline & French Laboratories, Lid. v. Court of Appeals, 276 SCRA 224 (1997) Q: What is the effect ofthe transfer by sale of marked bottles? ‘THE TRADEMARK LAW? A: The transferee of the marked botlos ranstorred by ‘way of sale is alowed to enjoy allthe rights of an owner in regardte such botles. Where the marked bottles are transferred by way of sale, the registered owner rolinquishes alts propriotary rights ovar the bottios in favor oftho parson who obtains them in due course. To disallow a small disilar the use of cycled bottles would necessarily deprive ta share ofthe markel which 2 big, ‘and established distillery secks fo monopolize = in the country's march toward economic development and independance, tis essential that a balanes protecting ‘small industries and large scale businesses be maintained. (Distilleria Washington, Inc. v. La Tondena Distillers, Inc., 280 SCRA 116 [1997]} Problem: X Corporation is the certified owner of the ltadernark for a particular product, Without being authorized by X Corporation, Y Corporation manufactures the product beating the same trademark, Inthe case fled by X Corporation for unfair competition, YY Corporation puts up the defense that i is not seling the product in question. Is such contention tenable? Explain.REVIEWER IN COMMERCIAL LAW Answer: No. Such contention is not tenable, That a corporation other than the certitiod owner of tho trademarks engaged inthe unauthorized manufacture ‘of @ product bearing the same trademark engenders a reasonable belief that a erminal offense for untair ‘competition is being committed. To hoid thatthe act of selling isan indispensable element of the orme of untair competion is logical because if tha law punishes the ‘eller o imation goods; then with more. reason should the law penalize the manulacturer. (Pro Line Sports Center, inc. v. Court of Appeals, 281 SCRA 162 (1987) “as “THE INSOLVENCY LAW Chapter 18, The Insolvency Law (Act No, 1956, as amended) Insolvency @ What is insolvency undar the Insolvency Law? ‘A: Insolvency under the Insolvency Law is that the liabilities of @ person are greater than his assets. @: When is @ person considered insolvent under the Insolvency Law? A: In voluntary Insolvency, a dabtor is considered ith tho court. The fiing of such petition shall be an act of insolvency (Section 14, Act No, 1956). The order voluntary insolvency petition Is a matter of course, automatio, because the act ofthe debtor himesltin fling the peiion is an admission on his par that he is insolvent. Usually the ofder includes an appointment ofthe assignee, and notice tothe crediiors by way of certlying tothe claims, In Involuntary Insolvency, a dobtor is considered insolvent upon the order of the court dectaring him an “insolvent because such pation is instituted by erediors. a“