REVIEWER

Intellectual Property Law

REPUBLIC ACT 8293

___________________________________________
______________
REPUBLIC ACT NO. 8293
AN ACT PRESCRIBING THE INTELLECTUAL
PROPERTY CODE AND ESTABLISHING THE
INTELLECTUAL PROPERTY OFFICE,
PROVIDING FOR ITS POWERS AND
FUNCTIONS, AND FOR OTHER PURPOSES
___________________________________________
_______________
INTELLECTUAL PROPERY
Those property rights which results from
the physical manifestation of an original
thought.
STATE POLICY IN RESPECT OF
INTELLECTUAL PROPERTY RIGHTS
The State recognizes that an effective
intellectual and industrial property system
is vital to the development of domestic
and creative activity, facilitates transfer of
technology, attracts foreign investments
and ensures market access for our
products, hence it shall protect and secure
exclusive rights of scientists, inventors,
artists, and other gifted citizens to their
intellectual property and creations. (Sec.
2)
COVERAGE
Intellectual property rights consists of:
a) Copyrights and related rights;
b) Trademarks and service marks;
c) Geographic indications;
d) Industrial designs;
e) Patents;
f) Layout-designs (Topographies) of
Integrated Circuits; and
g) Protection of Undisclosed Information.
(Sec. 4.1, Intellectual Property Code [IPC])
Kho v. CA, et al., 379 SCRA 410
[2002]
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.
INTELLECTU
AL
PROPERTIES
Copyright

Trademark

Patentable
Inventions

Geographic
indication

DEFINITION
Literary and artistic works w
hich are original intellectual
creations
in the literary and artistic do
main
protected from the moment
of their creation.
Any visible sign capable of di
stinguishing the goods (trad
emark) or services (service
mark) of an enterprise and s
hall
include a stamped or marke
d container of goods.
Any technical solution of a
problem in any field of huma
n
activity which is new, involv
es an
inventive step and is industri
ally
applicable. (Kho v. CA, G.R.
No. 115758, Mar. 11, 2002).
Its an indication which ident
ifies a good as originating in
the territory, where a given
quality,
reputation or other character
istic of the good is
essentially attributable to its
geographical origin. (Art.
22, TradeRelated Aspects
of Intellectual
Property Rights)

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Undisclosed
Information

It is an information which:
Is a secret in the sense t
hat it is not, as a body
or in precise
configuration and
assembly of
components, generally
known among, or readily
accessible to
persons within the circle
s that normally deal
with the kind of
information in
question.
Has commercial value
because it is a secret
Has been subjected to r
easonable steps under t
he circumstances, by th
e person lawfully in cont
rol of the information, to
keep it a secret.
(Article 39, TRIPS
Agreement)

What is the nature of undisclosed inf

ormation/
trade secret?
Those trade secrets are of a privileged nat
ure.
The protection of industrial property encou
rages investments in new ideas and
inventions and stimulates creative efforts f
or the satisfaction of human needs. It spe
eds up transfer of technology and
industrialization, and thereby bring
about social and economic progress.
Verily, the protection of industrial
secrets is inextricably
linked to the advancement of our econom
y and fosters healthy competition in
trade.
(Air Philippines Corporation v. Pennswell, I
nc., G.R. No. 172835, Dec. 13, 2007)
What are TECHNOLOGY TRANSFER
ARRANGEMENTS?
Technology transfer arrangements are
contracts or agreements involving the
transfer of systematic knowledge for the
manufacture of a product, the application
of a process, or rendering of a service
including management contracts; and the

transfer, assignment or licensing of all

forms of intellectual property rights,
including licensing of computer software
except computer software developed for
mass market. (Sec. 4)
INTERNATIONAL CONVENTION AND
RECIPROTICY
Any person who is a
national or
who is domiciled or
has a real and effective industrial
establishment
in a country which
1) is a party to any convention, treaty, or
agreement relating to intellectual property
rights or the repression of unfair
competition to which the Philippines is
also a party, or
2) extends reciprocal rights to nationals of
the Philippines by law, shall be entitled to
benefits to the extent necessary to give
effect to any provision of such convention,
treaty, or reciprocal law, in addition to the
rights to which any owner of an
intellectual property rights is otherwise
provided by law. (Sec. 3)

REVERSE RECIPROCITY OF FOREIGN

LAWS
Section 231 making enforceable on
nationals of a foreign state all conditions,
restrictions, limitations, diminutions,
requirements or penalties that may be
imposed by such foreign state on a Filipino
national seeking intellectual property
protection.
Reciprocal application is not
automatic.
Rather, the Philippines may apply
to the foreign national those
restrictions that his country
imposes on Filipino applicants
PRESCRIPTIVE PERIOD OF ACTIONS
FOR DAMAGES UNDER THE IPC
No damages may be recovered after four
(4) years from the time the cause of
action arose. (Sec. 226)

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JURISDICTION OVER DISPUTES UNDER

IPC
A. Original Jurisdiction
1) Director General (IPO) has
original jurisdiction to resolve
disputes relating to the terms of a
license involving the authors right
to public performance or other
communication of his work.
2) Bureau of Legal Affairs has
jurisdiction over the ff:
i.
Opposition to applications for
registration of marks;
ii.
Cancellation of trademarks;
iii.
Cancellation of patents, utility
models and industrial designs;
iv.
Petition for compulsory
licensing of patents;
v.
Administrative Complaints for
violations of laws involving IPR
where the total damages
claimed is not less than
P200,000.00
3) Documentation, Information
and Technology Transfer
Bureau has jurisdiction to settle
disputes involving technology
transfer payments
B. Appellate Jurisdiction
1) Director General -over all
decisions rendered by the ff:
Dir. of Legal Affairs
Dir. of Patents
Dir. of Trademarks
Dir. of the Documentation,
Information and Technology
Transfer
2) Court of Appeals -over decisions
of the Director General in the
exercise of his appellate jurisdiction
over the decisions of the:
Dir. of Legal Affairs
Dir. of Patents
Dir. of Trademarks
3) Secretary of Trade and
Industry-over decisions of the
Director General on the exercise of

his appellate jurisdiction of the

Director of Documentation,
Information and Technology
Transfer; and
-over decisions of the Director
General in the exercise of his
original jurisdiction relating to the
terms of license involving the
authors right.
ADMINISTRATIVE PENALTIES IMPOSED
FOR VIOLATIONS OF LAWS INVOLVING
IPR
The Director for Legal Affairs may
impose the ff:
a) Issuance of a cease and desist order
(CDO);
b) Acceptance of voluntary assurance
compliance (VAC) or voluntary assurance
of discontinuance (VAD);
c) Condemnation or seizure of products
subject of the offense;
d) Forfeiture of properties used in the
commission of the offense;
e) Imposition of administrative fines;
f) Cancellation of permit, license, authority
or registration;
g) Withholding of permit, license, authority
or registration;
h) Assessment of damages;
i) Censure
j) Analogous penalties or sanctions (Sec.
10.2 [b])
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LAW ON PATENTS
___________________________________________
______________
PATENT
A statutory grant which confers to an
inventor or his legal successor, in return
for the disclosure of the invention to the
public, the right for a limited period of
time to exclude others from making,
using, selling or importing the invention

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within the territory of the country that

grants the patent.
PATENTABLE INVENTIONS
Any technical solution of a problem in any
field of human activity which is new,
involves an inventive step and is
industrially applicable. It may be, or may
relate to, a product, or process, or an
improvement of any of the foregoing.
(Sec. 21)

Protection in Copyright is given

upon creation. Protection in Patent
and Trademark is only given upon
registration. But unlike in
trademark, the rules on patent
registration of inventions are more
strict, stringent and more rigid.

In keeping with state policy under

sec. 2 of the law, it is important
that the state, to promote the
general welfare, should build its
efforts in encouraging inventors or
persons in the filled of art to share
their knowledge. That is what the
state should do diffusion of
knowledge but as a concession in
encouraging scientists, inventors
and technical persons to share
their knowledge the state must
also afford protection. Thats why
the state should maintain a sound
patent system.

Who has the burden of proving

want
of
novelty
of
an
invention? The burden of proving
want of novelty is on him who
avers it and the burden is a heavy
one which is met only by clear and
satisfactory
proof
which
overcomes
every
reasonable
doubt. (Manzano v. CA, G.R. No.
113388. Sept. 5, 1997)

What are patentable inventions?

1. Inventions
2. Utility models and
3. Industrial designs.
Its very important to understand the
definition under Sec. 21 because the
definition also provides the 3 elements of
patentability.
Six classes of inventions
1. Useful machine
2. Product
3. Process
4. Improvement of any of the
foregoing
5. Micro-organisms
6. Process of creating
microorganisms non-biological or
microbiological processes (Rule 2.1
Rules implementing inventions)
CONDITIONS FOR PATENTABILITY
(NIA)
1. Novelty An invention shall not be
considered new if it forms part of a
prior art. (Sec. 23, IPC)
2. Involves an inventive step if,
having regard to prior art, it is not
obvious to a person skilled in the
art at the time of the filing date or
priority date of the application
claiming the invention.
3. Industrially
Applicable

An
invention that can be produced and
used in any industry, shall be
industrially applicable
(Sec. 27, IPC).

PRIOR ART
1.
Everything which has been made
available to the public anywhere in the
world, before the filing date or the priority
date of the application claiming the
invention
2.

The whole contents of a published

application, filed or effective in the
Philippines, with a filing or priority date
that is earlier than the filing or priority
date of the application. Provided, that the
application which has validly claimed the
filing date of an earlier application under
Section 31 of the IPC, there shall be a prior
art with effect as of the filing date of such
earlier application: Provided further, that
the applicant or the inventor identified in
both applications are not one and the

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same. (Sec. 24, IPC)

3.

A third party which obtained the

information directly or indirectly from the
inventor. (Sec. 25, IPC)
What forms part of prior art?
1. Covered by an existing patent,
or
2. Subject matter of a pending
application.
That is another reason why there is
full disclosure. Once disclosed
already forms part of prior art. Prior
art covers not only existing patents
and applications but everything
made available to public. Must be
made available to the public.
Examples of Non Prior Art
1. If the invention is disclosed in a
private document list in a private
library in the US. Prior art? NO.
Must be made available to public.
2. Masteral thesis (chemistry or
engineering)
submitted
for
approval for thesis requirement to
Professor. Patent protection is very
relevant in academe. Prior art? No.
student
are
not
considered
inventors with respect to their
thesis. Thesis consists of products
and
information
cant
be
considered as prior art. One
indicator is it is made available to
the public.
3. Demonstration of new process of
technology in factory and use by
employees in the factory. Adequate
information made available to the
public?
Or
a product
being
demonstrated like a new type of
weapon
before
high
ranking
officials in the military. Prior art? In
most cases these people were the
product is demonstrated are bound
by secrecy. Employees of company
are contractually obligated to keep
industrial
secrets
bound
by
confidentiality.
Examples of prior art
1. If the product is being exhibited
in a public exhibition or fair, it

would already form part of the Prior

Art because made available to the
public.
2. If the product is sold in the
market, the buyer would now have
access to product. Is it sufficient to
make product available to public?
Or the product is being used by the
public? What do you think?
Answer: Any person who is
considered as a practitioner in the
field would have access to the
product.
Like
in
reverse
engineering. So it is now prior art.
But when it comes to use by the
public, it only becomes Prior Art
when it is used within the
Philippines but if outside, it cant
form part of the prior art.
For information, it must be
accessible to the public anywhere
in the world to be considered as
prior art.
That is why College
thesis remains private unless it is
being catalogued and forms part of
a public library. Otherwise it
remains a private document and
not prior art reference.
Conduct a prior art search before
creating a product. Search for
available
database.
In
the
Philippines we have the IPO Phil
website which provides links of
other
website
outside
the
Philippines like World Intellectual
Office, the EU Patent Office.
Once the invention does not form
part of new art in now satisfies
requirement of novelty.
INVENTIVE PATENT
GR: An invention involves an
inventive step if, having regard to
prior art, it is not obvious to a
person skilled in the art at the time
of the filing date or priority date of
the
application
claiming
the
invention. (Sec. 26, IPC)
XPN: In the case of drugs and

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medicines, there is no inventive

step if the invention results from
the mere discovery of a new form
or new property of a known
substance which does not result in
the enhancement of the known
efficacy of that substance. (Sec.
26.2, as amended by R.A. 9502)

2.

Integrated circuit A product, in its

final form, or an intermediate form, in
which the elements, at least one of which
is an active elements and some of all of
the interconnections are integrally formed
in and or on a piece of material, and in
which is intended to perform an electronic
function.

TEST OF NON-OBVIOUSNESS
If any person possessing ordinary skill in
the art was able to draw the inferences
and he constructs that the supposed
inventor drew from prior art, then the
latter did not really invent.

3.

Layout design/topography The

three dimensional disposition, however
expressed, of the elements, at least one of
which is an active element, and of some or
all of the interconnections of an integrated
circuit, or such a three dimensional
disposition prepared for an integrated
circuit intended for manufacture.
Registration is valid for 10 years without
renewal counted from date of
commencement of protection.

Who is considered a person of

ordinary skill?
A person who is presumed to:
1. Be an ordinary practitioner aware
of what was common general
knowledge in the art at the
relevant date.
2. Have knowledge of all references
that are sufficiently related to one
another and to the pertinent art
and to have knowledge of all arts
reasonably
pertinent
to
the
particular problems with which the
inventor was involved.
3. Have had at his disposal the
normal means and capacity for
routine work and experimentation.
(Rules
and
Regulations
on
Inventions, Rule 207)
What are other forms of patentable
inventions?
1.

Industrial design Any composition

of lines or colors or any threedimensional
form, whether or not associated with lines
or colors. Provided that such composition
or form gives a special appearance to and
can serve as pattern for an industrial
product or handicraft.
(Sec. 112, IPC)
Note: Generally speaking, an
industrial design is the ornamental
or aesthetic aspect of a useful
article. (Vicente Amador,
Intellectual Property Fundamentals,
2007)

4. Utility model A name given to

inventions in the mechanical field
When does an invention qualify as a
utility model?
If it is new and industrially applicable. A
model of implement or tools of any
industrial product even if not possessed of
the quality of invention but which is of
practical utility. (Sec. 109.1, IPC)
What is the term of a utility model?
7 years from date of filing of the
application
(Sec. 109.3, IPC).

NON-PATENTABLE INVENTIONS (PADSCAD)

1) Discoveries, scientific theories and
mathematical methods
2) In the case of Drugs and medicines,
mere discovery of a new form or
new property of a known substance
which does not result in the
enhancement of the efficacy of that
substance
3) Schemes, rules and methods of
performing mental acts, playing
games or doing business, and

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programs for computers

4) Methods for treatment of the human
or Animal body
5) Plant varieties or animal breeds or
essentially biological process for the
production of plants or animals. This
provision shall not apply to micro
organisms and nonbiological and
microbiological processes
6) Aesthetic creations
7) Anything which is Contrary to public
order or morality.

OWNERSHIP OF A PATENT
1) Inventor, his heirs, or assigns.
2) Joint invention -Jointly by the
inventors. (Sec. 28, IPC)
3) 2 or more persons invented separat
ely and
independently of each other- To
the person who filed an application;
4) 2 or more applications are filed the
applicant who has the earliest
filing
date or, the earliest priority date. Fir
st to file rule. (Sec. 29, IPC)
5) Inventions created pursuant to a co
mmission Person who commission
s the work, unless otherwise provide
d in the contract. (Sec. 30.1, IPC)
6) Employee made the invention in
the
course of his employment contract:
The employee, if the
inventive activity is not a part of
his regular duties even if the emp
loyee uses
the time, facilities and materials
of the employer.
The employer, if the invention
is the result of the
performance of his regularly
assigned duties, unless there is
an
agreement, express or implied, to
the contrary. (Sec. 30.2, IPC)

FIRST TO FILE RULE

If two (2) or more persons have
made the invention separately and
independently of each other, the
right to the patent shall belong to the
person who filed an application for
such invention, or where two or more
applications are filed for the same
invention, to the applicant who has
the earliest filing date or, the earliest
priority date. (3rd Sentence, Sec. 10,
RA 165a.)
RIGHT OF PRIORITY
An application for patent filed by any
person who has previously applied
for the same invention in another
country which by treaty, convention,
or law affords similar privileges to
Filipino citizens, shall be considered
as filed as of the date of filing the
foreign application:
Provided, That:
(a) the local application expressly
claims priority;
(b) it is filed within twelve (12)
months from the date the earliest
foreign application was filed; and
(c) a certified copy of the foreign
application together with an English
translation is filed within six (6)
months from the date of filing in the
Philippines. (Sec. 15, RA 165a)
RIGHTS ACQUIRED BY THE
PATENTEE
The patentee acquires the following
rights under his patent
a) Where the subject matter of a
patent is a product, to restrain,
prohibit and prevent any
unauthorized person or entity from
making, using, offering for sale,
selling or importing that product;
b) Where the subject matter of a
patent is a process, to restrain,
prevent or prohibit any unauthorized
person or entity from using the
process, and from manufacturing,
dealing in, using or offering for sale,
or importing any product obtained
directly or indirectly from such

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process;
c) to assign, or transfer by
succession the patent, and to
conclude licensing contracts for the
same (Sec. 71)
CONTENTS OF PATENT
APPLICATION
A patent application shall contain:
1) a request for the grant of patent;
2) a description of the invention;
-the disclosure of the invention must
be in a manner sufficiently clear and
complete for it to be carried out by a
skilled in the art.
3) Drawings necessary for the
understanding of the invention;
4) One or more claims
5) An abstract (Sec. 32)
*must contain relevant information
as to the identity of the person (no
anonymous person)
* if the applicant is not the inventor;
he must show proof of authority to
seek application for registration
UNITY OF INVENTION
Every application for patent
registration must contain an
application over a simple invention
or several inventions but must form
part of a single general inventive
concept
PROCEDURE FOR THE GRANT OF
PARENT
a) According a filing date to the
application (Sec. 41);
b) Examination of compliance by
applicant with the formal
requirements specified in Sec. 32,
i.e., contents of application (Sec. 42);
c) Classification of application and
search for prior art (Sec. 43)
d) Publication of patent application
in the IPO Gazette (Sec. 44);
e) Inspection of the application
documents by any interested party
and written observations by any third
party concerning the patentability of
the invention (Secs. 44.2 and 47);

f) Written request by the applicant,

within 6 months from the date of
publication of his patent application,
for the substantive examination by
the IPO of his application. (Sec 48);
g) Grant of the patent (Sec. 50), or
refusal of the examiner to grant the
patent (Sec. 51); in the latter case,
the refusal may be appealed to the
Director of the Bureau of Patents;
h) Publication of the grant of
patent in the IPO Gazette (Sec. 52)
TERM OF A PATENT, UTILITY
MODEL, INDUSTRIAL DESIGN
a) Patent 20 yrs from the filing date
of application, without renewal
b) Utility model 7 yrs, w/out
renewal
c) Industrial design 5 yrs,
renewable twice
UTILITY MODELS
Models of implement or tools of any
industrial product even if not
possessed of the quality of invention
but which is of practical utility
INDUSTRIAL DESIGN
Any composition of lines or colors or
any three-dimensional form, whether
or not associated with lines or colors
provided that such composition or
form gives a special appearance to
and can serve as pattern for an
industrial product or handicraft.
CANCELLATION OF PATENTS
Who may file?
*any person
*IPO motu proprio
Grounds:
a) That the patent is invalid (Sec.
81);
b) That what is claimed as the
invention is not new or patentable;
c) That 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; or

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d) That the patent is contrary to

public order or morality. (Sec. 61)
e) failure to make payments of
annual fees or dues
Where to file?
BLA if in violation of IPC
(administrative)
RTC otherwise
INFRINGEMENT
-the making, using, offering for sale,
selling or importing a patented
product or a product obtained
directly or indirectly from a patented
process or the use of a patented
process without the authorization of
the patentee. (Sec. 76)
TEST OF PATENT INFRINGEMENT
1) Literal Infringement resort is had
to the words of the claim.
2) Doctrine of Equivalents if two
devices do the same work in
substantially the same way, the
same result, and produce
substantially the same result, they
are the same even though they differ
in name, form, or shape.
REMEDIES IN CASE OF
INFRINGEMENT
A) File civil case for the following
purposes:
1) To recover from the infringer such
damages as the court may award
considering the circumstances of the
case provided it shall not exceed 3
times the amount of the actual
damages sustained plus attorneys
fees and other expenses of litigation;
2) To secure an injunction for the
protection of his rights;
3) To receive a reasonable royalty, if
the damages are inadequate or
cannot be readily ascertained with
reasonable certainty;
4) To have the infringing goods,

materials and implements

predominantly used in the
infringement disposed of outside the
channels of commerce, or destroyed
without compensation;
5) To hold the contributory infringer
jointly and severally liable with the
infringer.
B) File criminal case within 3
years from date of commission
of the crime for repetition of
infringement (Sec. 84)

___________________________________________
_______________
LAW ON TRADEMARKS
__________________________________________________________
TRADEMARK
Anything which is adopted and used
to identify the source of origin of
goods, and which is capable of
distinguishing them from goods
emanating from a competitor.
SERVICE MARK
Distinguishes the services of an
enterprise from the service of other
enterprises. It performs for services
what a trademark does for goods.
COLLECTIVE MARK
Any visible sign designated as such
in the application for registration and
capable of distinguishing the origin
or any other common characteristic,
including the quality of goods and
services of different enterprises
which use the sign under the control
of the registered owner of the
collective mark (Sec. 121.2)
TRADE NAMES
The person (whether natural or
juridical) who does business and
produces the goods or the services is

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designated by a trade name.

*Under the law, there is no need to
register trade names in order to
secure protection for them.
TRADE DRESS
Involves the total image of a product,
including such features as size,
shape, color or color combinations,
texture, and/or graphics.
Functions of trademark
1. To point out distinctly the origin or
ownership of the articles to which it
is affixed.
2. To secure to him who has been
instrumental
in
bringing
into
market a superior article or
merchandise the fruit of his
industry and skill
3. To prevent fraud and imposition.
(Etepha v. Director of Patents, G.R.
No. L20635, Mar. 31, 1966)
HOW MARKS ARE ACQUIRED
Under RA 8293, the rights in a mark
shall be acquired through
registration made validly in
accordance with its provisions. (Sec.
122)
This proposition of law, however,
may not be converted for it is not
true that where there is no
registration, there is no
protection.
*Acquisition through use
Whether or not a registered
trademark is employed, when a
person has identified in the mind of
the public the goods he
manufactures or deals in his business
or services from those of others,
such a person has a property right in
the goodwill of said goods or services
which will be protected in the same
manner as other property rights

10

(Sec. 168.1)
RIGHTS CONFERRED
The owner of a registered mark shall
have the exclusive right to
prevent all third parties not
having the owners 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. (Sec. 147)
DURATION
The certificate of registration of a
trademark shall be ten (10) years
from the filing date of application
provided the registrant shall file a
declaration of actual use within a
year from the 5th anniversary of
registration date (Sec. 145)
Renewable for another 10 yrs. (Sec.
146)
NON-REGISTRABLE
TRADEMARKS, TRADE NAMES
AND SERVICE MARK
A mark cannot be registered if it:
a) Consists of immoral, deceptive or
scandalous matter, 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;
c) Consists of a name, portrait or
signature identifying a particular
living individual except by his written
consent, or the name, signature, or
portrait of a deceased President of
the Philippines, during the life of his

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widow, if any, except by written

consent of the window;
d) Is identical with a registered mark
belonging to a different proprietor or
a mark with an earlier filing or
priority date, in respect of:
(i) The same gods or services, or
(ii) Closely related goods or services,
or
(iii) If it nearly resembles such a
mark as to be likely to deceive or
cause confusion;
e) 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: provided,
that in determining whether a mark
is well-known, account shall be taken
of the knowledge of the relevant
sector of the public, rather than of
the public at large, including
knowledge in the Philippines which
has been obtained as a result of the
promotion of the mark;
f) Is identical with, or confusingly
similar to, or constitutes a translation
of a mark considered well-known in
accordance with the preceding
paragraph, which is registered in the
Philippines with respect to goods or
services which are not similar to
those with respect to which
registration is applied for: provided,
that use of the mark in relation to
those goods or services would
indicate a connection between those
goods or services, and the owner of
the registered trademark: Provided
further that the interests of the
owner of the registered mark are
likely to be damaged by such use;
g) Is likely to mislead the public,

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particularly as to the nature, quality,

characteristics or geographical origin
of the goods or services;
h) Consists exclusively of signs that
are generic for the goods or services
that they seek to identify;
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 a bonafide and
established trade practice;
j) Consists exclusively of signs or
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 (Sec. 123)
FILING DATE OF AN APPLICATION
The filing date of an application shall
be the date on which the office
received the following indications
and elements in English or Filipino:
a) An express or implicit indication
that the registration of a mark is
sought;
b) Indications sufficient to contact
the applicant or his representative, if
any;
c) Indications sufficient to contact
the applicant or his representative, if

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any;
d) A reproduction of the mark where
registration is sought; and
e) The list of the goods or services
for which the registration is sought.
(Sec. 127.1)
*NO filing date shall be accorded
until the required fee is paid
(Sec. 127.2)
PROCEDURE FOR REGISTRATION
a) Examination to determine whether
the application satisfies the
requirements for the grant of a filing
date.
b) Examination to determine whether
the application meets the
requirements of Sec. 124 and the
mark is registrable under Sec. 123.
c) Denial of the application or
amendment thereof or publication of
the application;
d) Opposition to the application;
notice; hearing; decision by
examiner; appeal to the Director of
Bureau of Trademarks; appeal to the
IPO Director General; appeal to the
CA;
e) Issuance of Certificate of
registration
f) Publication in the IPO Gazette of
the fact of registration
CANCELLATION OF TRADEMARK
OR TRADENAME
Who may file?
Any person who believes that he is
and will be damaged by the
registration of a mark
Where to file?
BLA
Grounds:

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a) Mark becomes generic for goods

for which it is registered;
b) Abandonment of the mark;
c) Registration obtained fraudulently
or contrary to provisions of RA 8293;
d) Mark used by, or with permission,
or, registrant;
e) Failure to use the mark within the
Philippines for 3 uninterrupted years
or longer.
EFFECTS OF NON-USE
May be excused if caused by
circumstances arising independently
of the will of the trademark owner,
such as military coup, or political
changes that impede commerce
*Registration is an administrative act
declaratory of a pre-existing right
that does not, of itself, perfect a
trademark, for what does is actual
use.
*Non-use is a ground for removing a
mark from the register
DOCTRINE OF SECONDARY
MEANING
While a generic, indicative or
descriptive mark will, as a general
rule, be denied registration, there is
a circumstance that will allow it to be
registered.
Under the doctrine of secondary
meaning, when a mark has become
distinctive of the applicants gods in
commerce and, in the mind of the
public, indicates a single source of
consumers, it may be registered.
WHAT CONSTITUTES AN
INFRINGEMENT
Under RA 8293, any person shall,
without the consent of the owner of
the registered mark:
1) Use in commerce any
reproduction, counterfeit, copy, or

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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 any
goods or services including other
preparatory steps necessary to carry
out the sale of any goods or services
on or in connection with which such
use is likely to cause confusion, or to
cause mistake, or to deceive; or
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, shall
be liable for infringement. (Sec. 155)
TEST OF TRADEMARK
INFRINGEMENT
1) Dominancy Test consists in
seeking out the main, essential or
dominant features of a mark.
2) Holistic Test takes stock of the
other features of a mark, taking into
consideration the entirety of the
marks.
Note: The dominancy test only relies on
visual
comparisons between two trademarks
whereas the
totality or holistic test relies not only on the
visual
but also on the aural and connotative
comparisons
and overall impressions between the
two
trademarks. (Societe Des Produits Nestl,
S.A. v. CA,
G.R. No. 112012, Apr. 4,
2001)

DIFFERENTIATED FROM UNFAIR

COMPETITION

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1) Cause of action: in infringement,

the cause of action is the
unauthorized use of a registered
trademark; in unfair competition, it is
the passing off of ones goods as
those of another merchant.
2) Fraudulent intent is not necessary
in infringement, but necessary in UC.
3) Registration of trademarks: in
infringement, it is a pre-requisite; in
UC, it is not required.
4) Class of goods involved: in
infringement, the goods must be of
similar class; in UC, the goods need
not be of the same class.
Infringement is a form of unfair
competition.
REMEDIES AVAILABLE IN CASE OF
INFRINGEMENT OF A
REGISTERED MARK
a) Sue for damages (Sec. 156.1);
b) Have the infringing goods
impounded (Sec. 156.2);
c) Ask for double damages (Sec.
156.3)
d) Ask for injunction (156.4)
e) Have the infringing goods
disposed of outside the channels of
commerce (Sec. 157.1)
f) Have the infringing goods
destroyed (Sec. 157.1)
g) File criminal action (Sec. 170);
h) Administrative Sanctions
UNFAIR COMPETITION
Any person who shall employ
deception or any other means
contrary to good faith by which he
shall pass off the goods
manufactured by him or in which he
deals, or his business, or services for
those of the one having established
such goodwill, or who shall commit
any acts calculated to produce said
result, shall be guilty of unfair
competition.

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How Committed?
a) Making ones goods appear as the
goods of another;
b) Use of artifice or device to induce
the false belief that ones goods are
those of another;
c) False statements in the course of
trade; or
d) Any act contrary to good faith
calculated to discredit anothers
goods
TEST OF UNFAIR COMPETITION
The test is whether certain goods
have been clothed with an
appearance likely to deceive the
ordinary purchaser exercising
ordinary care.
REMEDIES AGAINST UNFAIR
COMPETITION
a) Damages which may either be:
-reasonable profit which would have
realized, or
- actual profits collected by the
defendant, or
-a certain percentage over the gross
sales of defendant in case of the
measure of damages cannot be
readily ascertained;
b) Damages may be doubled in cases
where actual intent to mislead the
public or to defraud the complaint is
shown;
c) Impounding of sales invoices and
other documents evidencing sales;
d) Injunction
e) Destruction of goods found to be
infringing, and all paraphernalia.
___________________________________________
_______________
LAW ON COPYRIGHTS
__________________________________________________________

14

COPYRIGHT
System of legal protection an author
enjoys in the form of expression of
ideas.
BASIC PRINCIPLES
Works are protected by the sole fact
of their creation, irrespective of
their mode or form of expression, as
well as their content, quality or
purpose (Sec. 172.2)
Protection extends only to the
expression of the idea, not to the
idea itself or to any procedure,
system, method or operation,
concept or principle, discovery or
mere data.
CREATION OF A WORK
A copyright work is created when the
two(2) requirements are met:
1) Originality does not mean
novelty or ingenuity, neither
uniqueness nor creativity. It simply
means that the work owes its origin
to the author
2) Expression there must be
fixation To be fixed, a work must
be embodied in a medium
sufficiently:
permanent; or
stable, to permit it to be perceived,
reproduced, or otherwise
communicated for a period of more
than transitory duration.
*if it is not required that the medium
be visible as long as there is a
possibility of retrieval, then there is
fixation.
*it is fixation that defines the time
from when copyright subsists. Before
fixation, there can be no
infringement.
WORKS PROTECTED BY
COPYRIGHT
A. Original Work - Literary and

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artistic works are original intellectual

creations in the literary and artistic
domain protected from the moment
of their creation, irrespective of their
mode or form of expression, as well
as of their content, quality and
purpose, 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 threedimensional 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

15

cinematographic or any process for

making audio-visual recordings
m) Pictorial illustrations and
advertisements
n) Computer programs
o) Other literary, scholarly, scientific
and artistic works (Sec. 172)
B. Derivative Works the following
derivative works shall also be
protected:
a) Dramatizations, translations,
adaptations, abridgments,
arrangements, and other alterations
of literary works
b) 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. (Sec. 173)
WORKS NOT PROTECTED
The following works are not
protected:
1) Any idea, procedure, system,
method or operation, concept,
principle, discovery or mere data as
such, even if expressed, explained,
illustrated, or embodied in a work;
2) News of the day and other facts
having the character of mere items
of press information;
3) Any official text of a legislative,
administrative or legal nature, as
well as any official translation
thereof. (Sec. 175)
4) Any work of the Government of
the Philippines. (Sec. 176)
However, prior approval of the
government agency or office wherein
the work is created shall be
necessary for exploitation of such
work for profit. Such agency or office,

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may, among other things, impose as

a condition the payment of royalties
5) Pleadings;
6) Decisions of courts and tribunals.
This pertains to the original
decisions not to the SCRA published
in volumes since these are protected
under derivative works.
RIGHTS OF AN AUTHOR
Author a natural person who has
created the work.
A. Economic Rights (Sec. 177)
1) Right to reproduce;
2) Right to create derivative works;
3) Right to first public distribution or
first sale;
4) Right to rent out the original or a
cop of an audiovisual or
cinematographic work;
5) Right to public performance;
6) Right to other communication of
the work to the public.
B. Moral Rights (Sec. 193)
1) Right of attribution or paternity
right;
2) Right of alteration or nonpublication;
3) Right to preservation of integrity
4) Right not to be identified with
work of others or with distorted work.
Term of moral right
Lifetime of the author and 50 years
after his death
Waiver of moral right
1) by a written instrument (Sec. 195)
2) by contribution to a collective
work unless expressly reserved (Sec.
196)
PRINCIPLE OF AUTOMATIC
PROTECTION
Under the Berne Convention, the
enjoyment and exercise of copyright,
including moral rights, shall not be
the subject of any formality.
OWNERSHIP OF COPYRIGHT

16

1. Single creator copyright

belongs to the author of the work, his
heirs or assigns.
2. Joint creation copyright
belongs to the co-authors jointly as
co-owners. But if the work consists of
identifiable parts, the author of each
part owns the part that he has
created.
3. Employees creation copyright
belongs to the employee if the
creation is not part of his regular
duties even if he uses the time,
facilities and materials of the
employer; otherwise it belongs to the
employer
4. Commissioned work the work
belongs to the person commissioning
but the copyright remains with the
creator unless there is a written
stipulation to the contrary.
5. Cinematographic works the
producer has copyright for purposes
of exhibition; for all other purposes,
the producer, the author of the
scenario, the composer, the film
director, the author of the work are
the creators.
6. Anonymous and
pseudonymous works the
publishers shall be deemed the
representative of the author unless:
a. the contrary appears
b. the pseudonyms or adopted name
leaves no doubt as to the authors
identity or
c. if the author discloses his identity
(Sec. 179).
7. Collective works the
contributor is deemed to have
waived his right unless he expressly
reserves it. (Sec. 196)
Collective work a work created by
two or more persons at the initiative
and under the direction of another
with the understanding that it will be
disclosed by the latter under his own

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name and that the contributions of

natural persons will not be identified.
(Sec. 171.2)
8. In case of transfers, the
transferee shall own one or more or
all the economic rights transferred
provided:
a. the assignment, if inter vivos, be
in writing (Sec. 180.2)
b. the assignment be filed with the
National Library upon payment of the
prescribed fee. (Sec. 182)
DURATION OF COPYRIGHT
The term of protection shall be
counted from the first day of January
of the year following the death or of
last publication (Sec. 214)
Literary artistic works and
derivative works of a SINGLE
CREATOR - lifetime of the creator and
for 50 years after his death
Joint creation lifetime of last
surviving co-creator and for 50 years
after his death.
Anonymous or a work under a
pseudonym not identifiable with the
true name of the creator 50 years
after the date of their first
publication.
* Except where, before the expiration
of said period, the author's identity is
revealed or is no longer in doubt, the
rule for single and joint creation shall
apply
Photographic works 50 years from
the publication of the work, or from
making the same term is given to
audiovisual works produced by
photography or analogous processes.
Work of Applied Art 25 years from
the date of making
Newspaper Article lifetime of the
author and 50 years after his death

17

A pure news report will no longer

find protection under he new law,
BUT a column or published comment
will.
The work of performers not
incorporated in RECORDING,
PRODUCTS OF SOUND IMAGE
RECORDINGS, and BROADCASTS, are
protected for periods of 50 years, 50
years, and 20 years, respectively,
counted from the end of the year of
performance, recording, or
broadcasts, respectively.
LIMITATIONS TO THE RIGHTS ON
COPYRIGHT
1) Private performance, private
and personal use applicable only
when a work has been lawfully
made accessible to the public.
Personal Use
Making a single reproduction,
adaptation, arrangement or other
transformation of anothers work
exclusively for ones own individual
use in such cases as personal
research, learning or amusement
Private Use
Making a reproduction, adaptation or
other transformation of it, in a single
person as in the case of personal
use but also for a common purpose
by a specific circle of persons only.
2) Fair Use of a Copyrighted
Work
Fair Use - A privilege in persons
other than the owner of the
copyright to use the copyrighted
material in a reasonable manner
without its consent, notwithstanding
the monopoly granted to the owner
by the copyright.
The doctrine of fair use is meant
to balance the monopolies enjoyed
by the copyright owner with interests
of the public and of society.
CRITERIA TO DETERMINE
WHETHER USE IS FAIR OR NOT:

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a) Purpose and the character of the

use
b) Nature of the copyrighted work
c) Amount and substantially of the
portions used
d) Effect of the use upon the
potential market of the copyrighted
work (Sec. 185)
THE FAIR-USES OF PROTECTED
MATERIAL ARE:
a) Criticizing, commenting, and news
reporting;
b) Using for instructional purposes
including producing multiple copies
of classroom use, for scholarship,
research and similar purposes (Sec.
185)
3) WORKING OF ARCHITECTURE
(Sec. 186)
Include the right to control the
erection of any building which
reproduces the whole or a
substantial part of the work either in
its original or in any form
recognizably derived from the
original; Provided, that the copyright
in any such work shall not include
the right to control the
reconstruction, or rehabilitation in
the same style as the original of a
building to which that copyright
relates
4) REPRODUCTION OF PUBLISHED
WORK
Exclusively for research and private
study.
5) REPROGRAPHIC
REPRODUCTION BY LIBRARIES
Any library or archive whose
activities are not for profit may,
without the authorization of the
author of copyright owner, make a
single copy of the work by
reprographic reproduction.

18

6) REPRODUCTION OF COMPUTER
PROGRAMS
Allowed on the ff. conditions:
a) only one copy is made;
b) lawful owner made the copy;
c) purpose of which the reproduction
is made is legal like:
use to which the program is made
and for which it was purchased
demand the reproduction of a copy;
or
the reproduction of a copy is
necessary to guarantee against loss
or destruction (Sec. 189.1)
7) IMPORTATION FOR PERSONAL
PURPOSES
The importation of a copy of a work
by an individual for his personal
purposes shall be permitted without
the authorization of the author of, or
other owner of copyright in, the work
under the following circumstances:
a) Copies of the work are not
available in the Philippines and:
i. not more than one copy at one
time is imported for strict individual
use;
ii. importation is by authority and for
the use of Philippine Government; or
iii. Religious, charitable, or
educational society imported not
more than 3 copies per title provided
they are not for sale.
b) Copies form part of libraries and
personal baggage belonging to
persons or families arriving from
foreign countries and are not
intended for sale: Provided, that such
copies do not exceed three (3). (Sec.
190)
REMEDIES IN CASE OF
INFRINGEMENT
1) Injunction to prevent infringement
2) Damages assessed on the basis of
the proof alleged by the plaintiff of
sales made by the defendant of the
infringing work minus whatever costs

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the defendant may be able to prove

and appreciated by the court.
3) Delivery under oath of all
implements employed in the
production of the infringing products
themselves and the infringing items,
for impounding or destruction as the
court may order.
4) Payment of moral and exemplary
damages in the discretion of court.
5) Criminal Action
_____________________________________
____________
DIFFERENCE BETWEEN
COPYRIGHT, PATENT AND
TRADEMARK
1) Subject Matter of the Right:
Copyright literary, scientific or
artistic work;

19

Patent new, useful, and

industrially applicable inventions;
Trademark goods manufactured or
produced
2) Where Right Registered:
Copyright National Library
Patent and Trademark IPO
3) Duration of Right:
Patent 20 years from filing or
priority date
Trademark 10 years
Copyright Generally up to 50
years after the death of the author.
_____________________________________
_____________