Copyright

I NTELLECTUAL P ROPERTY It is confined to literary or artistic works which are

C ODE
R.A. N O . 8293
( E F F E C T I V I T Y : J A N U A R Y 18, 1998)
Laws Specifically Repealed by the Intellectual
Property Code:
1. Patent Law (Republic Act 165);
2. Trademark Law (Republic Act 166);
3. Copyright Law (Presidential Decree 49); and
4. Articles 188 & 189 of the Revised Penal Code
original creations in the literary or artistic domain
protected from the moment of their creation.
Industrial Design
It refers to 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
(IPC, Sec. 112).

Trademark
I NTELLECTUAL P ROPERTY It is any visible sign capable of distinguishing the
goods or services of an enterprise and shall include
Intellectual Property a stamped or marked container of goods (IPC,
It refers to creations of the mind: inventions, literary Section 121.1; Elidad Kho v. CA, G.R. No. 115758,
and artistic works, symbols, names, images, and March 19, 2002).
designs used in commerce.
Patentable Invention
It means the legal rights which result from It refers to any technical solution of a problem in any
intellectual activity in the industrial, scientific, literary field of human activity which is new, involves an
and artistic fields (World Intellectual Property inventive step and is industrially applicable (IPC,
Organization (WIPO) Intellectual Property Sec. 21).
Handbook (2004)).
Layout Design (Topography) of an Integrated
Note: There are NO property rights protected by law Circuit
in mere ideas or mental conceptions. Specifically, It is a product, in its final form or an immediate form,
even if expressed or embodied in a work, news of in which the elements, at least one of which is an
the day and others, having the character of mere element, and some or all of the interconnections are
items of press information or any official text, integrally formed in and/ or on a piece of material
translation or work of the government and which is intended to perform an electric function
(INTELLECTUAL PROPERTY CODE OF THE (THE AGREEMENT ON TRADE RELATED
PHILIPPINES [IPC], Sec. 175). Those works under ASPECTS OF INTELLECTUAL PROPERTY
Non-Patentable Inventions are also not protected by RIGHTS AGREEMENT, Art. 35 [hereinafter TRIPS
law. AGREEMENT]).

Intellectual Property Rights (CoRe-PIMP-LG) Geographic Indication

1. Copyright and Related or neighboring rights;
2. Protection of Undisclosed information;
3. Industrial designs;
4. Trademark and Service Marks;
5. Patents;
6. Layout designs (Topographies) of Integrated
Circuits; and
7. Geographic indications (IPC, Sec. 4).
It identifies a good as originating in the territory of a
Trade-Related Aspects of Intellectual Property
Rights (TRIPS) member, or a region or locality in
that territory, where a given quality, reputation or
other characteristic of the good is essentially
attributable to its geographical origin (TRIPS
AGREEMENT, Art. 22).
Example: Champagne from France.

EXECUTIVE COMMITTEE SUBJECT COMMITTEE MEMBERS

SYLVESTER AUSTRIA overall chairperson,
REYNOLD ORSUA chairperson for
academics, JOE VINCENT AGUILA
chairperson for hotel operations, LYNDON
RUTOR vice-chairperson for operations,
RODEL JAMES PULMA vice-chairperson
for secretariat, DENISE DIANE
MAGBUHOS vice-chairperson for finance,
IAN DANIEL GALANG vice-chairperson for
electronic data processing, JOMARC
PHILIP DIMAPILIS vice-chairperson for
logisticsALBERTO RECALDE, JR. vice-
chairperson for membership
LARA ANGELA MAGULTA subject chair, Jeffrey Bajita, Mark Julius Batugal,
JOSE AMELITO BELARMINO II assistant Frances Juliene Buendia, Dan Yunus
subject chair, CAMILLE MAY MEDINA Cabrera, Jennel Chu, Edgar Cruz, Charles
edp, ROWNEYLIN SIA negotiable De Belen, Jennyllette Dignadice, Clarissa
instruments law, ALFREDERICK Heromina Esguerra, Pamela Faller,
ARANETA insurance law, YVETE MARIE Hanna Sharleen Florendo, Celine-Maria
SOLA, transportation law, LOWELL Janolo, Charlotte King, Lorena Lerma
Lunar, Rosecellini Mamaclay, Jasmine
FREDRICK MADRILENO, corporation
Rose Maquiling, Florianne Marzan, Rose
law, LE BON EIRRES PASCUA, law on Anne Menor, Trixie Jane Neri,
intellectual property, KHARIS Charmagne Pedrozo, Louisa Marie
MANAHAN, banking law, REI-ANNE Quintos, Toni Faye Tan, Patricia Ester
SANTOS, special laws Verzosa
Layout Design (Topography)
It refers to the three-dimensional disposition,
however expressed, of the elements, at least one of
which is an active element, and of some or all the
three-dimensional disposition prepared for an
integrated circuit intended for manufacture (IPC,
Sec. 112.3).
For a layout-design to be entitled to protection it
must be original in the sense that they are the result
of their creators own intellectual effort and are not
commonplace among creators of layout-designs
(topographies) and manufacturers of integrated
circuits at the time of their creation.
A layout-design consisting of a combination of
elements and interconnections that are
commonplace shall be protected only if the
combination, taken as a whole, is original (IPC, Sec
113.4).
Technology Transfer Arrangements
These 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 (IPC, Sec. 4.2).
Undisclosed Information
It refers to information which:
1. Is a secret in the sense that it is not, as a body
or in the precise configuration and assembly of
components, generally known among or readily
accessible to persons within the circles that
normally deal with the kind of information in
question;
2. Has commercial value because it is a secret;
and
3. Has been subject to reasonable steps under the
circumstances, by the person lawfully in control
of the information, to keep it in secret (TRIPS
AGREEMENT, Art. 39).
I NTERNATIONAL L AW R ELATED
P ROVISIONS
Persons Entitled to the Benefits of the IPC
(Principle of Reciprocity)
Any person who is a national or who is domiciled or
has a real or 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 right is otherwise
entitled by the IPC (IPC, Sec. 3).
If a foreign corporation not doing business in the
Philippines is suing as a party of a treaty to which
the Philippines is a signatory, the fact that it is suing
under Section 3 of R.A. 8293 need not be alleged as
the court must take judicial notice of such fact as it is
embodied in and supplied by the Paris Convention
which forms part of the law of the land, provided that
the party suing substantially complied with the
requirements of the law (Puma Sportschufabriken
Rudolf Dassler, K.G. v. IAC, G.R. No. 75067,
February 26, 1988).
However, if a foreign corporation is suing under any
other agreement other than R.A. 8293, failure to
allege reciprocity is fatal to foreign corporations
cause, it being shown that it failed to comply with the
requirements of the law (Leviton Industries, Inc. v.
Salvador, G.R. No. L- 40163, June 19, 1982)
Principle of Reverse Reciprocity
Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed
by the law of a foreign country on a Philippine
national seeking protection of intellectual property
rights in that country, shall reciprocally be
enforceable upon nationals of said country within
Philippine jurisdiction (IPC, Sec. 231).
National Treatment Principle
The Philippines, upon becoming a member of the
World Trade Organization (WTO), has adhered to
the TRIPS, which provides that protection afforded
to the member-state (with respect to intellectual
property) must be extended to the nationals of other
member-states.
Most-Favored Nation Principle
Whatever favor, allowance, consideration, privilege
or immunity a member-state grants the nationals of
another country is immediately and unconditionally
accorded to the nationals of other member-states
(TRIPS, Art. 4).
 San Beda College of Law
2010 Centralized Bar Operations

authors right to public performance or other

communication of his work (IPC, Sec. 7.1.c)

Inter Partes Cases

P ART I: T HE I NTELLECTUAL These are contested cases filed before the
P ROPERTY O FFICE Intellectual Property Office.
S ECTIONS 1-19
Inter Partes Proceedings v. Civil Proceedings
JURISDICTION OVER DISPUTES Inter Partes
Civil Proceedings
1. Original Jurisdiction Proceedings
a. Director General Jurisdiction
Over disputes relating to the terms of a Intellectual Property
license involving the authors right to public Regular Courts
Office
performance or other communication of his
Kinds
work (IPC, Sec. 7.1.c).
b. Bureau of Legal Affairs 1. Petition to cancel an
i. Opposition to applications for registration of invention, patent,
marks; utility model
ii. Cancellation of trademarks; registration, industrial
iii. Cancellation of patent, utility models, and design registration, or
Action for infringement.
industrial designs; any claim or parts of a
iv. Petitions for compulsory licensing; and claim.
v. Administrative complaints for violation of 2. Petition for
laws involving intellectual property rights compulsory licensing
where the total damages claimed is not less or a license to exploit
than P200,000. The Director of Legal Affairs a patented invention.
has the power to punish contempt (IPC, Trademark
Sec. 10). 1. Opposition against the
registration of a mark Trademark
c. Documentation, Information and Technology
published for 1. Action for unfair
Transfer Bureau
opposition. competition.
Over disputes involving technology transfer
payments (IPC, Sec. 11.8) 2. Petition to cancel the
d. Regular Courts (IPC, Sec. 225) registration of a mark.

Nature of Proceedings
2. Appellate Jurisdiction
a. Director General Administrative Judicial
Over all decision rendered by the: Quantum of Evidence
i. Director of Legal Affairs; Preponderance of
ii. Director of Patents; Substantial evidence
evidence
iii. Director of Trademarks; and
iv. Director of the Documentation, Information
and Technology Transfer (IPC, Sec. 7.1.b).
b. Court of Appeals P ART II: T HE L AW ON
Over decisions of the Director General in the P ATENTS
exercise of his appellate jurisdiction over the
decisions of the: S ECTIONS 20-120
i. Director of Legal Affairs; Patent
ii. Director of Patents; and It is the right granted to an inventor by the State, or
iii. Director of Trademarks (IPC, Sec. 7.1.b). by the regional office acting for several States,
c. Secretary of Trade and Industry which allows the inventor to exclude anyone else
i. Over decisions of the Director General in from commercially exploiting his invention for a
the exercise of his appellate jurisdiction over limited period (WIPO, Understanding Industrial
the decisions of the Director of the Property, p.5).
Documentation, Information and Technology
Transfer (IPC, Sec. 7.1.b) A patent is a statutory monopoly which protects
ii. Over decisions of the Director General in against unlicensed use of the patented device or
the exercise of his original jurisdiction process even by the one who discovered it through
relating to terms of license involving the

3
independent research (60 AM Jur. 2d, Patents,
Section 6).
Three-Fold Purpose
1. The patent law seeks to foster and reward
invention;
2. It promotes disclosures of inventions to stimulate
further innovation and to permit the public to
practice the invention once the patent expires;
and
3. The stringent requirements for patent protection
seeks to ensure that ideas in the public domain
remain there for the free use of the public (Pearl
& Dean v. Shoemart, G.R. 148222, August 15,
2003).
Principles:
1. Test of Non-Obviousness If any person
possessing ordinary skill in the art was able to
draw the inferences and the constructs that the
supposed inventor drew from prior art, then the
latter did not really invent.
2. Unity of Invention The application shall relate
to one invention only or to a group of inventions
forming a single general inventive step (IPC,
Sec. 38.1).
3. Parallel Application Prohibited - An applicant
may not file two (2) applications for the same
subject, one for utility model registration and the
other for the grant of a patent whether
simultaneously or successively (IPC, Sec. 111).
4. Whatever right one has to the invention covered
by the patent arises alone from the grant of
patent (Creser Precision Systems v. CA, G.R.
No. 118708, February 2, 1998).
5. Patents or application 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 (IPC, Sec. 103.1).
Term of Patent
The term of patent is twenty (20) years counted from
the filing date of application (IPC, Sec. 54).
Upon expiration of that period, the knowledge of the
invention inures to the people, who are thus enabled
to practice it and profit its use (Pearl & Dean (Phil.),
Inc. v. Shoemart, Inc., G.R. No. 148222, August 15,
2003).
Patent v. Copyright
Patent Copyright
When a person, by It may be vested in a
independent research work closely similar or
arrives at the same even identical to an
product or that is already earlier, or already
patented, he is patented work, provided
restrained by the arm of that the former is truly
the law from exploiting original, i.e., it owes its
such an invention by existence to its creator.
reason of the patent
already granted to the
earlier discoverer.
Non-patentable Non-patentable
inventions may not be inventions may be
the subject of a patent subject of a copyright
I NTERNATIONAL T REATIES
R ELATED TO P ATENTS
1. Paris Convention on the Protection of
Industrial Property
Substantive Provisions:
a. National Treatment or Assimilation
Each contracting State must extend the same
protection granted to its own nationals to the
nationals of the other contracting State.
Nationals of non-contracting States are
protected if they are domiciled or have a real
and effective industrial or commercial
establishment in a Contracting State.
b. Right of Priority
An applicant after filing in one of the
contracting State may, within a period of time
(12 months for patents and utility models; 6
months for industrial designs and trademarks)
apply for protection in any of the other
contracting States; the latter application will be
regarded as if they had been filed on the
same day as the first application.
c. Independence of Patents
The grant, refusal, invalidation or termination
in one country does not oblige any other
member country to grant, refuse, invalidate or
terminate a patent invention for the same
invention.
d. Right of the Inventor to be Named
e. Importation of Patents
Importation by the patentee, into the country
where the patent has been granted, of articles
covered by the patent and manufactured in
any country of the Union will not entail
forfeiture of the patent.
f. Failure to Work and Compulsory Licenses
The compulsory license for non-working or
insufficient working must be a non-exclusive
license and can only be transferred together
with the part of the enterprise benefiting from
the compulsory license (AMADOR, Patents
under the Intellectual Property Code, p. 17)
[hereinafter AMADOR, Patent].
Senate adopted Resolution No. 97 on December
14, 1994 concurring in the ratification by the
 San Beda College of Law
2010 Centralized Bar Operations
President of the agreement establishing the World
Trade Organization. The ratification was later
sustained by the Supreme Court (Taada, et al. v.
Angara, G.R. No. 118295, May 2, 1997).
2. Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS)
Substantive Provisions:
a. National Treatment Each member of the
WTO must treat the nationals of every other
member as favorable as its own with respect
to intellectual properties.
b. Most-Favored Nation Treatment It precludes
preferences against members nationals in
bilateral or smaller multilateral compacts with
members or non-members.
c. Public Order as an Exception to Patentable
subject matter Members are allowed to
exclude invention, the prevention of which
within their territory is necessary to protect
public order or morality, including the
protection of human, animal, plant, life, health
or to avoid serious prejudice to the
environment.
d. Exclusive Rights
i. The minimum level of exclusive rights:
ii. Product patentee: Right to prevent others,
without authorization, from making, using,
offering for sale, selling, or importing the
patented product.
iii. Process patentee: Right to prevent others,
without authorization, from using the
process and from using, offering for sale,
selling, or importing the product obtained
directly by that process.
iv. In either case, the rights must be capable of
assignment, transfer by succession and
transfer by licensing.
e. Aspects of Compulsory Licensing
i. Procedural: Considered on its individual
merits, on a case-to-case basis and only
after negotiations toward a commercial
license over a reasonable period of time
have failed to bear fruit;
ii. Substantive: Terms of the license;
iii. Non-exclusive and non-transferable; and
iv. Adequate remuneration to the patentee
based upon the economic value of the
authorization.
f. Term of Protection
i. The protection must be available for at least
a period of twenty (20) years counted from
the filing date.
3. Patent Cooperation Treaty (PCT)
A U.S. applicant can file an "international
application" in a standardized format in English in
the U.S. Receiving Office and have that
5
application acknowledged as a regular national or
regional filing in as many Contracting States to
the PCT as the applicant "designates" or "elects".
PCT likewise provides for an international search
and written opinion (AMADOR, Patents supra at
18).
P ATENTABILITY
S ECTIONS 21-27
Patentable Invention
It refers to any technical solution of a problem in any
field of human activity which is new, involves an
inventive step and is industrially applicable.
Requisites of Patentability: (TINI-P)
1. Any Technical solution of a problem in any field
of human activity;
2. Inventive Step;
An invention involves 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 (IPC, Sec. 26).
3. Novelty;
An invention shall be considered new if it does
not form part of a prior art (IPC, Sec. 23).
4. Industrial applicability; and
An invention that can be produced and used in
any industry (IPC, Sec. 27).
5. Patentable Subject Matter
An invention that does not fall within the
prohibitions of a Non-Patentable Invention under
Sec. 22 of the IPC.
A Person Skilled in the Art
He is presumed to be an ordinary practitioner aware
of what was common general knowledge in the art
at the relevant date. He is presumed to 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. He is presumed also to have had at his
disposal the normal means and capacity for routine
work and experimentation (RULES AND
REGULATIONS ON INVENTIONS, Rule 207).
Note: If application relates to a Utility Model,
requisite 3 (Novelty) is not necessary. If the
application relates to an Industrial Design,
requisites 3 (Novelty) and 4 (Industrial Applicability)
are not necessary.
 Patentable Inventions
Utility Model v. Industrial Design They may be, or relate to:
Utility Model Industrial Design 1. A product, such as a machine, a device, an
Any new model of Any composition of article of manufacture, a composition of matter, a
implements or tools of lines or colors or any microorganism;
any industrial product three-dimensional 2. A process, such as a method of use, a method
even if not possessed of form whether or not of manufacturing, a non-biological process, a
the quality of invention associated with lines microbiological process;
but which is of practical or colors provided 3. Computer-related inventions; and
utility (Del Rosario v. that such composition 4. An improvement of any of the foregoing
CA, G.R. No. 115106, or form gives a (REVISED IRR FOR PATENTS, UTILITY
March 15, 1996) special appearance MODELS AND INDUSTRIAL DESIGNS, Rule
Usually inventions in the to and can serve as 201 (2011)).
mechanical field. pattern for an
industrial product or Non-Patentable Inventions (DAS-MMAAPP)
handicraft (Sec. The following are excluded from patent protection:
112.1). 1. Discoveries, scientific theories, and
Ornamental or mathematical methods, a law of nature, a
aesthetic aspect of a scientific truth, or knowledge as such;
useful article but 2. Abstract ideas or theories, fundamental
without a functional concepts apart from the means or processes for
characteristic. carrying the concept to produce a technical
Utility Industrial effect;
Patent 3. Schemes, rules, and methods of performing
Model Design
mental acts and playing games;
Conversion
4. Method of doing business, such as a method or
May be system for transacting business without the
converted technical means for carrying out the method or
If not inventive May be
into a patent system;
may convert to registered
application if 5. Methods for treatment of the human or animal
utility model as copyright
it complies body by surgery or therapy and diagnostic
application work
with all methods practiced on the human or animal body.
requisites This provision shall not apply to products and
Term compositions for use in any of these methods;
Five (5) 6. Anything which is contrary to public order,
years from health, welfare, or morality, or process for cloning
the filing or modifying the germ line genetic identity of
date of the humans or animals or uses of the human
Seven (7)
application, embryo;
years from
Twenty (20) which is 7. Aesthetic creations;
the filing
years from the renewable 8. Programs for computers; and
date of the
filing date of for not 9. Plant varieties or animal breeds or essentially
application;
the application more than biological process for the production of plants
non-
two (2) and animals. This provision shall not apply to
renewable
consecutiv microorganisms and non-biological and
e periods of microbiological processes (REVISED IRR FOR
five (5) PATENTS, UTILITY MODELS AND INDUSTRIAL
years each DESIGNS, Rule 202 (2011)).
Applicable Rules
Secs. 112- An improver who appropriates, without license, the
Secs. 108- basic patent of another is an infringer and liable as
120 and
111 and such.
certain
provisions
provisions
Secs. 20-107 on patents An improvement patent is void for want of novelty
on patents
applying where it was merely carrying forward a new or more
applying
mutatis extended application of the original thought and
mutatis
mutandis doing the same thing in the same way, by
mutandis
 San Beda College of Law
2010 Centralized Bar Operations
substantially the same means, with better results
(AMADOR, Patents supra at 45).
In the case of drugs and medicines, there is no
patentable invention in the following instances:
1. The mere discovery of a new form or new
property of a known substance which does not
result in the enhancement of a known efficacy of
that substance;
2. The mere discovery of any new property; or new
use for a known substance; or
3. The mere use of a known process, unless such
known process results in a new product that
employs at least one new reactant (R.A. 9502,
Sec. 5).
Prior Art (Sec. 24, IPC)
General Rule
Prior art shall consist of:
1. That 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; or
2. The whole contents of an application for a
patent, utility model, or industrial design
registration, filed or effective in the Philippines,
with a filing or priority date that is earlier than the
filing or priority date of the application.
Note: Under item 2, the application that has validly
claimed the filing date of an earlier application under
Right of Priority (IPC, Sec. 31), shall be prior art with
effect as of the filing date of such earlier application.
Also, the applicant or the inventor identified in both
applications must not be one and the same (IPC,
Sec. 24).
Exception: Non-Prejudicial Disclosure - The
disclosure of information contained in the application
during the twelve (12) months preceding the filing
date or the priority date of application shall not
prejudice the applicant on the ground of lack of
novelty, if such disclosure was made by:
1. The inventor; including any person, who, at the
filing date of application, had the right to the
patent;
2. Patent office and the information was contained:
a. In another application filed by the inventor and
should not have been disclosed by the office;
b. In an application filed without the knowledge
or consent of the inventor by a third party
which obtained the information directly or
indirectly from the inventor; or
c. A third party which obtained the information
directly or indirectly from the inventor (IPC,
Sec. 25.1).
R IGHT TO A P ATENT
S ECTIONS 28-31
7
The right to a patent belongs to the inventor, his
heirs or assigns.
When two or more persons have jointly made an
invention, the right to a patent shall belong to them
jointly (IPC, Sec. 28).
First-to-File Rule
Patent priority is determined by which inventor was
the first to file a patent application rather than who
was the first to actually invent it. This is the system
of patent registration adopted under the IPC in lieu
of the first-to-invent system.
If two 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 (IPC, Sec. 29).
First-to-Invent Rule
The right to patent belongs to the first true and
actual inventor, his heirs, legal representatives or
assigns (AMADOR, Patents, supra at 253).
Note: The Philippines adheres to the first to file rule.
General Rule: The conditions of novelty and
inventive step must exist at a certain date, generally
the date on which the application is filed.
Exception:
The right of priority which means that when one has
filed an application in one member country of the
Paris Convention, the same applicant (or his
successor in title) may, within a specified time
period, apply for protection for the same invention in
any of the other member countries. The latter
applications will be regarded as if they had been
filed on the same day as the earliest application
(WIPO, Understanding Industrial Property, p. 6).
Right to Priority of an Earlier-Filed Foreign
Application
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:
1. The local application expressly claims priority;
2. It is filed within twelve (12) months from the Applicant who has
Two (2) or more
date of the earliest foreign application; and the earliest filing date
applications filed for the
3. A certified copy of the foreign application, with or earliest priority
same invention
an English translation, is filed within six (6) date
months from the date of Philippine application. Person who
Inventions created
commissioned the
pursuant to a
work, unless agreed
commission
otherwise
Rules for Multiple Priorities Employee: If
1. An application can claim more than one priority invention not part of
even from different countries. If more than one his regular duties
(1) priority is claimed, time limits computed from even if he uses the
the priority date will be based upon the earliest time, facilities and
priority date; Provided, that the local application materials of the
Employee makes the
and the priority applications have common employer;
invention in the course
inventors or applicants. of employment
Employer: If the
Note: The corresponding multiple priority claim invention is the result
fee shall be paid upon filing of the claim of the performance of
his regularly assigned
duties unless agreed
2. If one or more priorities are claimed, the right of otherwise (IPC, Sec.
priority shall cover only those technical feature or 30).
features of the invention which are included in
the application or applications whose priority is No Patent, No Protection
claimed. The ultimate goal of a patent system is to bring new
3. If the technical feature or features of the designs and technologies into the public domain
invention for which priority is claimed does not through disclosure. Ideas, once disclosed to the
appear among the claims formulated in the public without the protection of a valid patent, are
previous application, priority may nonetheless be subject to appropriation without significant restraint
granted; provided, that the previous application (Pearl & Dean (Phil.) v. Shoemart, G.R. No. 148222,
as a whole specifically discloses such technical August 15, 2003).
feature or features.
4. Where an application could have claimed the Persons who may file an Application for a Patent in
priority of an earlier application, but when filed, the Philippines
did not contain such priority claim, the applicant As to the Legal
shall be given two (2) months from the filing date As to Nationality Personality of the
to submit priority claim. Submission of priority Applicant
claim after the filing of the application shall be 1. Filipino Nationals; 1. Inventor or his
accompanied by: 2. Foreign Nationals or attorney-in-fact;
a. A declaration of the applicant stating that the those domiciled or 2. Assignee of the
delay in submitting the priority claim was have a real and inventor
unintentional; and effective commercial
b. The full payment of the prescribed fee. establishment in a
(Revised Implementing Rules and country which is
Regulations for Patents, Utility Models and bound by treaty
Industrial Designs, Rule 306 (2011)). (such as the Paris
Convention and the
Persons Entitled to TRIPS Agreement)
Status
Patent to grant Filipinos the
Two (2) or more same rights it grants
persons invent to its own nationals;
He who first files 3. Foreign Nationals
separately and
independently whose country also
accepts the patent
application of
Filipinos.
 San Beda College of Law
2010 Centralized Bar Operations
P ATENT A PPLICATION
S ECTIONS 32-39
Requirements for Filing Applications
1. The patent application, shall be in Filipino or
English and shall consist of: (RDDCAI)
a. Request, which shall contain the following:
i. Petition to grant patent;
ii. Applicants name and other data;
iii. Inventor and the agent;
iv. Title of the invention;
v. If with claim for convention priority, it shall
contain the file number, country of origin and
the date of filing in the said country where
the application was first filed;
vi. Resident agent/representative if any and the
address of the agent; and
vii. Signature of the applicant.
b. Description of the Invention
Disclosure of the Invention
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.
In case of microbiological process or the
product thereof involving the use of a micro-
organism which cannot be sufficiently
disclosed, and such material is not available
to the public, the application shall be
supplemented by a deposit of such material
with the international depository institution.
c. Drawings necessary for the understanding
of the invention
d. One or more Claims
The claims shall define the matter for which
protection is sought; must be clear, concise,
and shall be supported by the description
e. Abstract
It shall consist of a concise summary of the
disclosure of the invention contained in the
description, claims and drawings in preferably
not more than one hundred fifty (150) words.
f. Identification of the Inventor
If the applicant is not the inventor, he may be
required to submit authorization
2. Appointment of Agent or Representative
An agent or representative is required if the
applicant is a non-resident of the Philippines.
The non-resident applicant must appoint and
maintain a resident agent or representative in the
Philippines upon whom notice or process for
judicial or administrative procedure relating to the
9
application for patent or the patent may be
served.
3. Request
It shall contain:
a. A petition for the grant of the patent;
b. The name and other data of the applicant;
c. The name of the inventor and the agent; and
d. The title of the invention.
4. Unity of Invention
The application shall relate to one inventive step
only or to a group of inventions forming a single
general inventive step.
Requirement for Restriction/ Requirement of
Division
If two or more independent and distinct inventions
are claimed in a single application and they are of
such nature that a single patent may not be issued
to cover them, the applicant will be required to elect
the invention to which his claim is restricted
(AMADOR, Patents, supra at 348).
P ROCEDURE FOR THE G RANT
OF THE P ATENT
S ECTIONS 40-60
Requirements to Get a Filing Date
On receipt of the application, an examiner checks if
the application includes the following requirements:
1. Request for a Philippine patent;
2. Name and address of the applicant; and
3. Description and claims of the invention in English
or Filipino (the extent of protection conferred by a
patent is determined by the claims) (IPC, Sec.
40).
Note: If the application does not contain all the
elements, the filing date should be the date when all
the elements are received. If the deficiencies are not
remedied within the prescribed time limit, the
application shall be considered withdrawn.
Payment of the filling fee is not included.
Filing Date is of great importance in the
determination of who has the right to the patent in
case of dispute with another applicant for the same
invention.
An amendment of an application for patent which is
seasonably and properly made and which does not
involve new matter relates back and speaks of the
date of the original application, the whole matter
being regarded as one continuous application.

Application
It is filed with the Bureau of Patents (BOP) of the
Intellectual Property Office (IPO) (IPC, Sec. 32).
Procedure for Application
1. Formality Examination
It refers to the determination of whether the
application form has complied with the IP Code
and Regulations, after the filing date has been
accorded and the required fees have been paid
(IPC, Sec. 42).
2. Classification and Search
An application which has complied with the
formal requirements shall be classified and a
search conducted to determine prior art (IPC,
Sec. 43).
3. Publication in the IPO Official Gazette
The search and the classification of the field of
technology to which the invention is assigned will
be published in the IPO Official Gazette after the
expiration of eighteen (18) months from the filing
date or priority date (IPC, Sec. 44).
Prior to publication, a patent application and all
related documents shall not be made available
for inspection without consent of the applicant
(IPC, Sec. 45). After the publication of the
application, any person may present
observations in writing concerning the
patentability of the invention. Such observation
shall be communicated to the applicant who may
comment on them (IPC, Sec. 44.2).
Rights Conferred by a Patent Application after
Publication
The applicant shall have the right to maintain a civil
action for infringement against any person who,
without his authorization, exercised any of the rights
of a patentee, in relation to the invention claimed in
the published application, as if a patent had been
granted for that invention, provided that the latter:
1. Actual knowledge that the invention was the
subject matter of a published application; or
received written notice that the invention was the
subject matter of a published application; and
2. Had not filed the action until after the grant
of a patent and within four (4) years from the
commission of the acts complained of (IPC, Sec.
46).
3. Request for Substantive Examination
Substantive examination is conducted upon
request. The request for substantive examination
of the application must be filed within six (6)
months from the date of the publication. The
application is considered withdrawn if no request
is made within the period (IPC, Sec. 48).
4. Decision to Grant Patent Registration or
Decision of Refusal
a. Decision to Grant Patent
If the application meets the requirements, the
Office shall grant the patent. The fees for the
grant and printing must be paid on time,
otherwise, the application shall be deemed
withdrawn.
b. Decision of Refusal of Application
Every applicant may appeal to the Director of
Patents as to the final refusal of the examiner
to grant the patent within two (2) months from
the mailing date of the final refusal. The
decision or order of the Director shall become
final and executory fifteen (15) days after
receipt of a copy by the appellant unless
within the same period, a motion for
reconsideration is filed with the Director or an
appeal to the Director General is filed together
with the payment of the required fee.
The decision of the Director General may be
appealed to the Court of Appeals. If the
applicant is still not satisfied with the decision
of the Court of Appeals, he may still appeal to
the Supreme Court.
5. Publication upon Grant of Patent
The grant of the patent together with other
related information shall be published in the IPO
Gazette within six (6) months.
Inspection of Records
Any interested party may inspect the complete
description, claims, and drawings of the patent on
file with the Office.
Effectivity of Patent
A patent shall take effect on the date of the
publication of the grant of the patent in the IPO
Gazette.
Term of Patent
The term of a patent shall be twenty (20) years
counted from the filing date of the application.
Annual Fees
To maintain the patent application or patent, an
annual fee shall be paid upon the expiration of four
(4) years from the date the application was
published, and of its subsequent anniversary of such
date. Payment maybe made within three (3) months
before the due date.
 San Beda College of Law
2010 Centralized Bar Operations
A grace period of six (6) months shall be granted for
the payment of annual fee (IPC, Sec. 55).
Non-Payment of Annual Fees
1. The patent application shall be deemed
withdrawn; or
2. The patent considered as lapsed from the day
following the expiration of the period within which
the annual fees were due.
Concept of Divisional Applications
When two or more inventions are claimed in a single
application but are of such a nature that a single
patent may not be issued for them, the applicant is
required to divide or limit the claims to whichever
the invention he may elect, whereas those
inventions not elected may be made the subject of
separate applications which are called divisional
applications (Smith Kline Beckman Corp. v.CA,
G.R. No. 126627, August 14, 2003).
Doctrine of File Wrapper Estoppel
Patentee is precluded from claiming as part of
patented product that which he had to excise or
modify in order to avoid patent office rejection, and
he may omit any additions he was compelled to add
by patent office regulations. It balances the Doctrine
of Equivalents.
Inequitable conduct is the failure to disclose material
information, or the submission of false material
information, with intent to deceive. A patent holder
cannot enforce his rights if he has committed
inequitable conduct in the prosecution of his patent
application.
Doctrine of Prosecution History Estoppel
Prosecution history estoppel applies when an
applicant during patent prosecution narrows a claim
to avoid the prior art, or otherwise to address a
specific concern that arguably should have rendered
the claimed subject matter unpatentable.
It precludes a patentee from obtaining under the
doctrine of equivalents coverage of subject matter
that has been relinquished during the process of
patent application (FUNA, Intellectual Property Law
(2012), p. 154) [hereinafter FUNA, Intellectual
Property].
Similar to the File Wrapper Estoppel, this is used to
indicate when a person who has filed a patent
application, subsequently makes narrowing
amendments to the application to accommodate the
patent law. Such person may be precluded from
invoking the doctrine of equivalents to broaden the
11
scope of their claims to cover subject matter ceded
by the amendments.
C ANCELLATION OF P ATENTS
AND S UBSTITUTION OF
P ATENTEE
Formalities
Upon petition, notice and hearing by any interested
person, and after payment of the required fee.
The petition shall:
1. Be in writing;
2. Be verified;
3. Specify the grounds upon which it is based;
4. Include a statement of facts; and
5. Attach copies of printed publications, or of
patents of other countries, together with their
translations in English.
Effect: Termination of rights conferred by the patent.
Grounds: (CIN)
1. Patent is Contrary to public order or morality
2. Insufficient disclosure; and
3. What is claimed as the invention is not New or
patentable (IPC, Sec. 61).
Where the grounds for cancellation relate to some of
the claims or parts of the claim, cancellation may be
effected to such extent only.
R EMEDIES OF A P ERSON
WITH A R IGHT TO P ATENT
S ECTIONS 67-70
Remedies of Persons Not Having the Right to a
Patent
If a person other than the applicant is declared by
final court order or decision as having the right to the
patent, he may within three (3) months after such
decision has become final:
1. Prosecute the application as his own;
2. File a new patent application;
3. Request that the application be refused; or
4. Seek cancellation of the patent (IPC, Sec. 67.1).
Remedies of the True and Actual Inventor
If a person, who was deprived of the patent without
his consent or through fraud is declared by final
court order or decision to be the true and actual
inventor, the court shall order for his substitution as
patentee, or at the option of the true inventor, cancel
the patent, and award actual and other damages in
his favor if warranted by the circumstances (IPC, d. In case of drugs and medicines, where the act
Sec. 68). includes testing, using, making or selling the
invention, including any data related thereto,
Section 67.1 Section 68 solely for the purpose of reasonably related to
When two (2) or more Deprivation is without the development and submission of
persons have made an his consent or thru information and issuance of approvals by
invention separately and fraud and has been government regulatory agencies required
independently of each declared entitled to under any Philippine or foreign law (R.A.
other. the patent by final 9502, Sec. 7);
court order or e. Preparation for individual cases, in a
decision. pharmacy or by a medical professional, a
medicine in accordance with a medical
prescription; and
Applies to pending application and even when f. Use of the patented product if it occurs in
patent is already granted. vehicles in transit in the country, provided that
such invention is used exclusively for the
Time to File Action in Court needs of the ship, vessel aircraft, or land
The actions indicated in Sec. 67 and 68 shall be vehicle and not used for the manufacturing of
filed within one (1) year from date of publication of things to be sold in the Philippines;
the application (IPC, Sec. 70).
2. Use by Prior User
A person other than the applicant, who have
R IGHTS OF P ATENTEES AND started using in good faith the invention in the
I NFRINGEMENT OF P ATENTS Philippines, or undertaken serious preparations
to use the same, before the filing date or priority
S ECTIONS 71-84 date of the application, shall have the right to
continue the use thereof but his right may only be
Rights Conferred by Patent transferred or assigned further with his enterprise
1. To restrain, prohibit and prevent or business (IPC, Sec. 73).
a. Where the subject matter of a patent is a
product: any unauthorized person or entity 3. Use by Government
from making, using, offering for sale, selling or The government or a third person authorized by it
importing that product. may use the patent without authority of the patent
b. Where the subject matter of a patent is a owner if: (IPC, Sec. 74)
process: any unauthorized person or entity a. Public interest so requires;
from using the process, and from b. The manner of exploitation by the owner of
manufacturing, dealing in, using, selling or the patent is anti-competitive;
offering for sale, or importing any product c. In case of drugs and medicines, there is a
obtained directly or indirectly from such national emergency or other circumstance of
process. extreme urgency requiring the use of the
2. To assign or transfer by succession the patent; invention;
and d. In case of drugs and medicines, there is a
3. To conclude licensing contracts. public non-commercial use of the patent by
the patentee, without satisfactory reason; or
Limitations of Rights Conferred by Patent e. In case of drugs and medicines, the demand
1. General Limitations for the patented article in the Philippines is not
The owner of a patent has no right to prevent third being met to an adequate extent and under
parties from performing, without his authorization, reasonable terms (RA 9502, Sec. 8).
the following acts:
a. Using of a patented product which has been Unless otherwise provided in the Code, the use by
put on the market in the Philippines by the Government shall be subject to the following:
owner of the product, or with his express 1. In the above situations c, d, and e, the right
consent; holder shall be notified as soon as practicable;
b. Exploitation of the patent if done privately and 2. The scope and duration of such use shall be
on a non-commercial scale or purpose; limited to the purpose for which it was authorized;
c. Act of making or using the patent if for the 3. Use shall be non-exclusive;
sole purpose of scientific research and
experiment;
 San Beda College of Law
2010 Centralized Bar Operations
4. The right holder shall be paid adequate
remuneration in the circumstances of each case;
and
5. The existence of national emergency or other
circumstances of extreme urgency in situation
number 3 shall be subject to the determination by
the President of the Philippines.
Infringement (MUSSI)
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 (IPC, Sec. 76.1).
Contributory Infringer
He actively induces the infringement of a patent or
provides the infringer with a component of a
patented product or of a product produced because
of a patented process knowing it to be especially
adopted for infringing and not suitable for substantial
non-infringing. He is jointly and severally liable with
the infringer.
Doctrine of Patent Exhaustion
It espouses that the patentee who has already sold
his invention and has received all the royalty and
consideration for the same will be deemed to have
released the invention from his monopoly. The
invention thus becomes open to the use of the
purchaser without further restriction (CATINDIG,
Notes on Selected Commercial Laws: A Guide for
Bar Reviewees (2003)).
Steps in Determining the Presence of
Infringement:
1. Determine if there is literal infringement. If there
is, defendant is liable.
2. If there is no literal infringement, then the doctrine
of equivalents should be applied.
Tests of Patent Infringement
1. Economic Interest Test
When the process-discoverers economic
interests are compromised, i.e., when others can
import the products that result from the process,
an act is said to be prohibited.
2. Literal Infringement Test
There is infringement of patent under this test if
one makes, uses or sells an item that contains all
the elements of the patent claim. It is satisfied by
either of the following:
a. Exactness Rule: The item that is being sold,
made or used conforms exactly to the patent
claim of another; or
b. Addition Rule: One makes, uses, or sells an
item that has all the elements of the patent
13
claim of another plus other elements
(SUNDIANG & AQUINO, Reviewer in
Commercial Law (2009) [hereinafter
SUNDIANG & AQUINO, Reviewer]).
3. Doctrine of Equivalents Test
An infringement also takes place when a device
appropriates a prior invention by incorporating its
innovative concept and, although with some
modification and change, performs substantially
the same way to achieve the same result. In
other words, the principle or mode of
operation must be the same or substantially the
same. The doctrine of equivalents thus requires
satisfaction of the function-means-and-result test,
the patentee having the burden to show that all
three components of such equivalency test are
met (Smith Kline Beckman v.CA, G.R. No.
126627, August 12, 2003).
The doctrine of equivalents cannot be applied
when the infringing invention is clearly beyond
what is written in the claim.
R EMEDIES FOR P ATENT
I NFRINGEMENT
1. Action for damages plus attorneys fees and
other expenses for litigation
Any patentee, or anyone possessing any right,
title or interest in and to the patented invention,
whose rights have been infringed, may bring a
civil action before a court of competent
jurisdiction, to recover from the infringer such
damages sustained thereby, plus attorney's fees
and other expenses of litigation, and to secure an
injunction for the protection of his rights (IPC,
Sec. 76 [2]).
Limitations:
a. Recoverable damages are limited to acts of
infringement committed within four (4) years
before institution of action (IPC, Sec. 79);
b. Damages cannot be recovered if the infringer
did not know, or had no reasonable grounds to
know, of the patent (IPC, Sec. 80);
c. If the damages are inadequate or cannot be
readily ascertained with reasonable certainty,
the court may award by way of damages a
sum equivalent to reasonable royalty (IPC,
Sec. 76.3); and
d. The court may, according to the
circumstances of the case, award damages in
a sum above the amount found as actual
damages sustained, provided, that the award
does not exceed three (3) times the amount of
such actual damages.(IPC, Sec. 76.4).

2. Injunction (IPC, Sec. 76)
Exclusive right to monopolize the subject matter
of the patent exists only within the term of the
patent; Hence, upon the expiration of the term
there is no more basis for the issuance of a
restraining order or injunction (Phil
Pharmawealth, Inc. v. Pfizer Inc., G.R. No.
167715, November 17, 2010).
3. Disposal or destruction
The court may, in its discretion, order that the
infringing goods, materials and implements
predominantly used in the infringement be
disposed of outside the channels of commerce or
destroyed, without compensation (IPC, Sec.
76.5).
4. Criminal action for repetition of infringement
If infringement is repeated by the infringer or by
anyone in connivance with him after finality of
judgment of the court, the offenders shall, without
prejudice to the institution of a civil action for
damages, be criminally liable therefore and, upon
conviction, shall suffer imprisonment for 6 months
to 3 years and/or a fine of P100,000 to P300,000,
at the discretion of the court.
The Criminal action shall prescribe in three (3)
years from date of the commission of the crime
(IPC, Sec. 84).
Burden of Proof in Process Patents
If the subject matter of a patent is a process for
obtaining a product, any identical product shall be
presumed to have been obtained through the use of
the patented process, if the product is new or there
is substantial likelihood that the identical product
was made by the process, and the owner of the
patent has been unable, despite reasonable efforts,
to determine the process actually used.
In ordering the defendant to prove that the process
to obtain the identical product is different from the
patented process, the court shall adopt measures to
protect, as far as practicable, his manufacturing and
business secrets (IPC, Sec. 78).
The institution of an Inter Partes Case for
cancellation of a mark with the Bureau of Legal
Affairs, IPO does not bar the adverse party from
filing a subsequent action for infringement with the
regular courts of justice in connection with the same
registered mark. This is because the certificate of
registration upon which the infringement case is
based, remains valid and subsisting for as long as it
has not been cancelled by the Bureau (Shangri-La
International Hotel Mgt., Inc., v. CA, G.R. No.
111580, June 21, 2001).
Defenses in Action for Infringement
1. Invalidity of patent or claim; and
2. Existence of ground for cancellation (IPC, Sec.
81).
Effect if the Patent is Found Invalid
In an action for infringement, if the court shall find
the patent or any claim to be invalid, it shall cancel
the same, and the Director of Legal Affairs upon
receipt of the final judgment of cancellation by the
court, shall record that fact in the register of the
Office and shall publish a notice to that effect in the
IPO Gazette (IPC, Sec. 82).
V OLUNTARY L ICENSING
S ECTIONS 85-92
Voluntary Licensing
It refers to the grant by the patent owner to a third
person of the right to exploit a patented invention.
Prohibited Clauses
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;
2. Those pursuant to which the licensee reserves
the right to fix the sale or resale prices of the
products manufactured on the basis of the
license;
3. Those that contain restrictions regarding the
volume and structure of production;
4. Those that prohibit the use of competitive
technologies in a non-exclusive technology
transfer arrangement;
5. Those that establish full or partial purchase
option in favor of the licensor;
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;
7. Those that require payment of royalties to the
owners of patents for patents which are not used;
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;
9. Those which restrict the use of the technology
supplied after the expiration of the technology
transfer arrangement, except in cases of early
 San Beda College of Law
2010 Centralized Bar Operations
termination of the technology transfer
arrangement due to reason(s) attributable to the
licensee;
10. Those which require payments for patents and
other industrial property rights after their
expiration or termination of the technology
transfer arrangement;
11. Those which require that the technology recipient
shall not contest the validity of any of the patents
of the technology supplier;
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;
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 standards prescribed by the licensor;
14. Those which exempt the licensor from liability for
non-fulfillment 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
15. Other cases with equivalent effects.
Mandatory Provisions (TAIL)
1. The Philippine Taxes on all payments relating to
the technology transfer arrangement shall be
borne by the licensor;
2. 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 Law of the
United Nations Commission on International
Trade Law (UNCITRAL) or the Rules of
Conciliation and Arbitration of the International
Chamber of Commerce shall apply and the
venue of arbitration shall be the Philippines or
any neutral country;
3. Continued access to Improvements in
techniques and processes related to the
technology shall be made available during the
period of the technology transfer arrangement;
and
4. That the Laws of the Philippines shall govern
the interpretation of the agreement and in the
event of litigation, the venue shall be the proper
court in the place where the licensee has its
principal office.
Exceptional cases when an agreement may
contain any of the prohibited clauses and lack
any of the mandatory provisions:
1. Where substantial benefit will accrue to the
economy, such as high technology content,
15
increase in foreign exchange earnings,
employment generation, regional dispersal of
industries and/or substitution with or use of local
raw materials; or
2. In case of Board of Investments, registered
companies with pioneer status, exemption from
the requirements may be allowed by the Bureau
after evaluation.
a. Registration of the Technology Transfer
Agreement with the Bureau of Registration
is not needed if it does not contain any of the
prohibited clauses and contains all the
mandatory provisions.
b. Registration is needed if it contains any of the
prohibited clauses or lacks any of the
mandatory provisions, otherwise the same
shall be unenforceable.
Right of the Licensor
Unless otherwise provided in the technology transfer
agreement, the licensor shall have the right to:
1. Grant further licenses to third person; and
2. Exploit the subject matter of the technology
transfer agreement.
Right of the Licensee
To exploit the subject matter of the technology
transfer arrangement during the whole term of the
agreement.
C OMPULSORY LICENSING
S EC . 93-102
Compulsory Licensing
It refers to the grant by the Director of Legal Affairs
of a license to exploit a patented invention without
the permission of the patent holder, either by
manufacture or through parallel importation (R.A.
9502, Sec. 4).
A compulsory license should be granted to any
person shown capable to exploit an invention.
Parallel Importation
It is the importation of drugs and medicines by a
government agency or by any third party (IPC, as
amended by RA No. 9502, Secs. 72.1 & 72.5)
Parallel Importer
It refers to one which imports, distributes, and sells
genuine products in the market, independently of an
exclusive distributorship or agency agreement with
the manufacturer (Solid Triangle Sales Corp. v.
Sheriff of RTC QC, G.R. No. 144309, November 23,
2001).
Private parties must first secure a license to import Those mentioned
from BFAD. No specific grounds under Section 10 of
Republic Act 9502
Terms and Conditions for Compulsory License:
(TEARSS)
1. May be Terminated if the circumstances which
led to its grant have ceased;
A SSIGNMENT
AND
2. Non-Exclusive license; T RANSMISSION OF R IGHTS
3. Non-Assignable license; SECTIONS 103-111
4. The patentee shall be paid adequate
Remuneration;
5. The Scope and duration of such license shall be Inventions and any right, title, or interest in and to
limited to the purpose for which it was authorized; patents and inventions covered thereby, may be
and assigned or transmitted by inheritance or bequest or
6. Use of the Subject matter of the license shall be may be the subject of a license contract (IPC, Sec.
devoted predominantly to the supply of the 103.2).
Philippine market.
Such instruments shall be void as against any
Grounds: (EPiCD) subsequent purchaser or mortgagee for valuable
1. National Emergency or other circumstances of consideration and without notice unless, it is so
extreme emergency; recorded in the Office, within three (3) months from
2. When Public interest requires; the date of said instrument, or prior to the
3. Manner of exploitation of patent is anti- subsequent purchase or mortgage. Even if not
Competitive; recorded, the instruments are binding upon the
parties (IPC, Sec. 106.2).
4. Public non-Commercial use of the patent without
satisfactory reason;
Rights of Joint Owners
5. Patented invention is not being worked in the Each of the joint owners shall be entitled to
Philippines on a Commercial scale although personally make, use, sell, or import the invention
capable of being worked; and for his own profit: Provided, however, that neither of
6. Where the Demand for the patented drugs and the joint owners shall be entitled to grant licenses or
medicines is not being met to an adequate extent to assign his right, title or interest or part thereof
and on reasonable terms (RA 9502, Sec. 10). without the consent of the other owner or owners, or
without proportionally dividing the proceeds with
Period for Filing Petition for Compulsory License such other owner or owners (IPC, Sec. 107).
Ground Period
If the patented version Before the expiration Prohibition against Filing of Parallel Applications
is not being worked in of a period of four (4) An applicant may not file two (2) applications for the
the Philippines on a years from the date of same subject, one for utility model registration and
commercial scale, filing of the the other for the grant of a patent whether
although capable of application or three simultaneously or consecutively (IPC, Sec. 111).
being worked without (3) years from the
satisfactory reason date of the patent
(IPC, Sec. 93.5). whichever period P ART III: T HE L AW ON
expires last.
See sections 93.2, 93.3, Anytime after the
T RADEMARKS , S ERVICE
93.4 and 97 of the IPC. grant of the patent. M ARKS AND T RADENAMES
S ECTIONS 121-170
Voluntary Licensing v. Compulsory Licensing

Compulsory Mark
Voluntary Licensing It is any visible sign capable of distinguishing the
Licensing
Grantor goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
Patent Owner Director of Legal Affairs container of goods.
Grounds
Collective Mark
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2010 Centralized Bar Operations

It refers to any visible sign, designated as such in Registration

the application for registration and capable of Must be registered in No need to register in
distinguishing the origin or any other common order to secure order to secure
characteristics, including the quality of goods or protection for them. protection for them.
services of different enterprises which use the sign
under the control of the registered owner of the Transferability
collective mark. Change of ownership
May be transferred with of trade name must
Trade Name/ Business Identifier or without transfer of the be made with transfer
It means the name or designation identifying or business (IPC, Sec. of enterprise or part
distinguishing an enterprise; any individual name or 149.1) thereof (IPC, Sec.
surname, firm name, device or word used by 165.4)
manufacturers, industrialists, merchants, and others
to identify their businesses, vocations or Trademark v. Goodwill
occupations (Converse Rubber Corp., v. Universal Trademark Goodwill
Rubber Products, Inc., G.R. No. L-27906, January Reputation and public
8, 1987). Right which protects the confidence that a
interests of producers in business venture has
Principles their marks and in the earned through a
1. The right to the mark is separate and distinct from goodwill earned. period of creditable
the business using such mark (IPC, Sec. 149.1). dealings.
2. The right of registration belongs to the owner of Trademark v. Label
the mark (Unno Commercial Enterprises, Inc. v.
Trademark Label
General Milling Corp., G.R. No. L-28554,
February 28, 1983). Merely names what is
within the container
Designed to identify the
Functions of a Trademark: or package; may or
user or origin.
may not be
1. To indicate the origin of the goods to which they trademark.
are attached;
2. To guarantee the standard of quality of the In practice, a word, a name or a phrase, coupled
goods; and with indicators of business organization, such as
3. To advertise the goods (Mirpuri v. CA, G.R. No. Inc., Corp. or Co. will not be registered as
114508, November 19, 1999). trademarks or service marks.

Trademark v. Trade Name The IPC no longer provides for prior use as a
Trademark Trade Name condition for ownership of a mark (IPC, Sec. 122).
Registration is the sole basis. However, a trade
Separate Existence
name or business name may be acquired by prior
Has an existence use and need not be registered.
distinct from the
Attached to the
existence of the Acquisition of Trademark
natural or juridical
proprietor or juridical A trademark is acquired through registration with the
person who does
person doing business IPO. Registration is necessary before one can file
business and
and producing the an action for infringement.
produces the goods
goods or the services
or services.
offered by such person Prior use in the Philippines is not required before
or enterprise. registration. However, there must be an actual use
Examples after registration.
Nike or Coca-Cola
The Nike swoosh or (the latter is also an For the requirement of "actual use in commerce in
the check mark looking example of the trade the Philippines" before one may register a
logo or Big Mac name used as a trademark, trade name and service mark under the
trademark. law pertains to the territorial jurisdiction of the
Purpose Philippines and is not only confined to a certain
region, province, city or barangay (McDonalds
Designates the goods Identifies and
Corporation v. McJoy Fastfood Corporation, G.R.
or services offered by distinguishes an
No. 166115, February 2, 2007).
person or enterprise. enterprise.

17
The Philippines is a signatory to the Paris
Convention for the Protection of Industrial Property.
Article 8 of the Paris Convention provides that a
trade name shall be protected in all countries of the
Union without the obligation of filing or registration,
whether or not it forms part of the trademark This
provision has been incorporated in Section 37 of RA
No. 166 (Fredco Manufacturing Corporation v.
President and Fellows of Harvard College, G.R. No.
185917, June 1, 2011).
Registration is not necessary to file a case for unfair
competition or false designation (IPC, Sec. 168.1-
168.2).
Duration of the Trademark
Ten (10) years subject to indefinite renewal for
periods of ten years each.
A PPLICATION
S ECTIONS 123-129
What May Not Be Registered (IPC, Sec. 123.1)
IFNI3 MG-CD-SCC
1. Consists of Immoral and deceptive 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;
2. 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;
3. Consists of Name, portrait or signature identifying
a living person, except by his written consent, or
the name, portrait or signature of a deceased
President of the Philippines during the life of his
widow, if any, except by written consent of the
widow;
4. Is Identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing
priority date, in respect of:
i. Same goods or service, or
ii. Closely-related goods or services, or
iii. If it nearly resembles such mark as to be likely
to deceive or cause confusion.
5. Is Identical with, or confusingly similar to, or
constitutes a translation of a well-known mark,
whether or not registered in the Philippines, and
used for identical or similar goods or services;
6. Identical with, or confusingly similar to, or
constitutes a translation of a well-known mark,
registered in the Philippines with respect to
goods or services which are not similar to which
registration is applied for, provided that:
a. Use of mark in relation to the goods would
indicate a connection between those goods or
services, and the owner of the registered mark;
and
b. That the interests of the owner of the
registered mark are likely to be damaged by
such use.
7. Is likely to Mislead the public, particularly as to
the nature, quality, characteristics or
geographical origin of the goods or services;
8. Consists exclusively of signs Generic for the
goods or services;
9. Consists exclusively of signs or of indications that
have become Customary or usual to designate
goods or services in everyday language or bona
fide and established trade practices;
10. Consists exclusively of signs or of
indications that may serve in trade to Designate
the quality, quantity, intended purpose, value,
geographical origin, time or production of goods
or rendering of the services, or other
characteristics of goods;
11. 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;
12. Consists of Color alone, unless defined by a
given form; and
13. Is Contrary to public order or morality.
If by mistake or error, a mark or trade name which is
prohibited by law to be registered is registered, the
registration is invalid and gives the registrant no
protection (Agpalo, The Law on Trademark,
Infringement and Unfair Competition (2000), p. 15)
[hereinafter AGPALO, Trademark}.
Well-known Mark
It refers to a mark which a competent authority of
the Philippines has designated to be well-known
internationally and in the Philippines.
In determining whether a mark is well-known, the
knowledge of the relevant sector of the public, rather
than the public at large, including knowledge in the
Philippines which has been obtained as a result of
the promotion of the mark, shall be pertinent.
It does not require that the well-known mark be used
in commerce in the Philippines but only that it be
well-known in the Philippines (Fredco Manufacturing
Corporation v. President and Fellows of Harvard
College, G.R. No. 185917, June 1, 2011).
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The IPO Director of Legal Affairs emphasized that
the IPO had already declared in a previous inter
partes case that In-N-Out Burger and Arrow
Design was an internationally well-known mark
given its numerous trademark registrations and
comprehensive advertisements presented during the
trial (In-N-Out Burger, Inc. v. Sehwani, Inc. and/or
Benitas Frites, Inc., G.R. No. 179127, December
24, 2008).
Even if the trademark is not registered in the
Philippines, if it is a well-known mark, it will be
protected here in the Philippines.
a. The use of the mark in relation to unrelated or
dissimilar goods or services would indicate a
connection between those goods or services
and the owner of the mark; and
b. The interests of the owner of the registered
mark are likely to be damaged by such use.
(Exception to the Doctrine of Related Goods)
Expiration of patent or copyright renders the name
of the patented article or copyrighted works a
generic designation of such article or work and such
name may not therefore be monopolized as a
trademark (AGPALO, Trademark, supra at 37).

Determinants: (UMD-RR-EEE-CSLI) General Rule:

1. The duration, extent and geographical area of Descriptive name, word or phrase of the character,
any Use of the mark; qualities or composition of an article cannot be
2. The Market share in the Philippines and other registered as trademark or trade name.
countries of the goods/services to which the mark
applies; Exceptions:
3. The degree of the inherent or acquired Distinction 1. If used in an arbitrary or fanciful manner and
of the mark; with no relation to the product it identifies;
4. The quality-image or Reputation acquired by the 2. If used as part of coined mark;
mark; 3. If used as part of composite mark; and
5. The extent to which the mark has been 4. If it acquired a secondary meaning.
Registered in the world; Doctrine of Secondary Meaning
6. The Exclusivity of the registration attained by the While as a general rule, generic, indicative or
mark in the world; descriptive marks ([j], [k], [l] of Sec. 123.1) are non-
7. The Extent of use of the mark in the world; registrable, when such kind of mark has become
8. The Exclusivity of use in the world; distinctive, because of its long, continuous and
9. The commercial value attributed to the mark in exclusive use for five (5) years, as used in
the world; connection with the applicant's goods or services in
10. The record of Successful protection of the rights commerce and in the mind of the public indicates a
in the mark; single source to consumers, it may be registered
11. The outcome of Litigations dealing with the issue (R.A. 8293, Section 123 [2]).
of whether the mark is well-known; and
12. The presence or absence of Identical or similar Example: Ang Tibay for shoes (Ang v. Teodoro,
marks validly registered or used on other similar G.R. No. L-48226, December 14, 1942)
goods (RULE ON TRADEMARKS, Rule 102).
Composite Marks
IPC, Sec. 123.1 (e) IPC, Sec. 123.1 (f) Marks consisting of two or more elements or
Well-known mark may combination of words, phrases, designs, symbols or
or may not be Registered in the color schemes. Although they cannot be registered
registered in the Philippines. by themselves, together they may be a part of a
Philippines. composite mark as long as they provide a
Goods or services disclaimer. The person who registers them as part of
Mark is used for identical
between the well- a mark will not acquire ownership thereto.
or similar goods or
known mark and that Example: 20th Century Nylon Shirts Factory
services as that of the
applied for are not must be required to disclaim nylon and shirts
well-known mark.
similar. factory.

Rights of a Well-known Mark: Coined Marks

1. Right to be protected whether or not it is
registered in the Philippines;
2. If registered, extension of protection to goods and
services which are not similar to those in respect
of which the mark is registered, provided that:
Marks may be registered even if they are
contractions of or coined from generic and
descriptive terms.
Examples: Starbrite for metal polish, Gaslam
for lamps, and Mirrorlike for furniture and floor

19
 polish are corruptions or coined terms for star
bright, gas lamp, or mirror like.
Arbitrary Use
Generic and descriptive terms may be registered if
they are used in an arbitrary or fanciful manner.
Examples: Adagio as a musical instrument used
to identify brassieres or the word Cosmopolite for
canned fish.
Use of Identical Marks not Necessarily
Prohibited
This does not automatically lead to the conclusion
that there is trademark infringement if they are not
used for identical, similar or related goods.
Examples: SHELL for cigarettes when there was a
prior registrant for gasoline and petroleum products.
The mark which contains the word GALLO for
cigarettes and another product for wine (Shell
Company of the Philippines v. CA, G.R. No. L-
49145, May 21, 1979 and Mighty Corporation v. E &
J Gallo Winery, G.R. No. 154342, July 14, 2004).
Importation of Medicine
There is no infringement of trademarks or trade
names of imported or sold drugs and medicines as
well as imported or sold off-patent drugs and
medicines which bears marks that have not been
tampered, unlawfully modified or infringed upon
(IPC, Sec. 159.4).
Application Requirements
The application shall be in Filipino or English and
shall contain:
1. Request for registration;
2. Applicants name and address;
3. State of which the applicant is a national, or
where he is domiciled; and in which he has real
and effective industrial or commercial
establishment, if any;
4. Reproduction(s) of the mark;
5. Transliteration or translation of the mark or some
parts thereof;
6. Names of goods or services for which the
registration is sought;
7. Signature or other self-identification of the
applicant or his representative;
8. Where the applicant is a juridical entity, the law
under which it is organized and existing;
9. Where the applicant is not domiciled in the
Philippines, the appointment of an agent or
representative;
10. Where the applicant claims a priority right, the
indication of:
a. Where the earlier application was filed;
b. Date of earlier application; and
c. If available, the application number of the
earlier application.
11. Where the applicant claims color as distinctive
feature of the mark, a statement to that effect as
well as the name or names of the color (s)
claimed and an indication of the principal parts of
the mark which are in that color; and
12. Where mark is 3D, a statement to that effect
(IPC, Sec. 124).
Declaration of Non-Use
A Declaration of Non-Use may be filed within three
(3) years from filing of the application or within the
extension period, if a request for extension is timely
made:
1. Where the applicant or registrant is prohibited
from using the mark in commerce because of a
requirement imposed by another government
agency prior to putting the goods in the market or
rendering of the services;
2. Where a restraining order or injunction was
issued by the Bureau of Legal Affairs, the courts
or quasi-judicial bodies prohibiting the use of the
mark; or
3. Where the mark is the subject of an opposition or
cancellation case (IPO Order No. 13-056, April 5,
2013).
The Office will not require any proof of use in
commerce in the processing of trademark
applications. However, without need of any notice
from the Office, all applicants or registrants shall file
a declaration of actual use of the mark with
evidence to that effect within three years from the
filing date of the application. Otherwise, the
application shall be refused registration or the
registered mark shall be removed from the register
by the Director motu proprio (IPO Office Order No.
13-056, April 5, 2013).
Declaration of Actual Use or Non-Use
Under Sec. 124.2 Under Sec. 145
When to File
Required within three Within one (1) year
(3) years from the filing from the 5th
date of application. anniversary of the
date of the
registration of the
mark.
Effect of Failure to File
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Even if registration has Mark shall be

been granted, such removed from the Divisional Applications
registration would be Register by the office. An initial application may be divided by the applicant
cancelled and the mark into two or more applications. However, a single
removed from the class shall not be subdivided.
register. If the
application is still The divisional application must be submitted within
pending by the end of two (2) months from the mailing date of the first
the three year period, action of the Bureau of Trademarks. A new
and no declaration of application number shall be issued, and the priority
actual use is filed, then right of the initial application shall be preserved.
the application is
denied. An existing registration may also be subdivided
What to File upon request by oath and writing. A new certificate
shall be issued but a single class shall also not be
Declaration of actual 1.Declaration of
subdivided (IPC, Sec. 129).
use with evidence to actual use with
that effect. evidence to that
Priority Right
effect; or
An application for registration of mark filed in the
2. Show valid Philippines by a person who qualifies under the
reasons based on reciprocity rule and who previously filed an
the existence of application for registration of the same mark in one
obstacles to such of those countries shall be considered as filed as of
use (declaration of the day the application was first filed in the foreign
non- use). country.
Under Sec. 145, the filing of a Declaration of Actual Prior registration of the mark in the country of origin
Use is mandated as a condition for the continued is required to grant local registration under priority
validity of the registration after it is granted. right (IPC, Sec. 131).
A six-month extension period may be granted upon Conditions:
request, provided such request is made prior to the 1. The application must be filed within six (6)
expiration of the three-year period and the required months from the date of earliest foreign
fee is paid (Rule 204 [b], Rules and Regulations on application. Its certified copy passed within three
Trademarks, as amended by IPO Office Order No. (3) months from the date of filing in the
13-056, April 5, 2013). Philippines.
2. The following should concur: (a) the foreign
Actual use of the mark may commence within the country / country of origin has allowed the mark
extension period. The fee must be paid on the day and (b) the country of origin is the applicants
of filing of the declaration of actual use or the domicile or has a bona fide commercial
request for extension of time to file the document. establishment.
The date of payment shall be considered as the date 3. The owner of the Philippine Registration may not
of filing of the declaration. The date of first use of the sue prior to the granting of the registration,
mark shall not be required (Rules and Regulations unless the mark is considered well-known as
on Trademarks, as amended by IPO Office Order provided for the IP Code.
No. 13-056, Rule 204 [b], April 5, 2013). 4. The priority right may not be based upon a
foreign application that has been withdrawn,
Filing Date abandoned, or otherwise disposed of in the
The filing date of an application shall be the date on country of origin (TRADEMARK LAWS, Rule
which the Office received the following indications 202).
and elements in English or Filipino:
1. Request for a Philippine registration of mark; Certificate of Registration
2. Identity of applicant; It shall be a prima facie evidence of:
3. Indications sufficient to contact the applicant; 1. Validity of registration;
4. Reproduction of the mark; and 2. Registrants ownership of the mark; and
5. List of goods or services. 3. The registrants exclusive right to use the same
in connection with the goods or services and
No filing date shall be accorded until the required those that are related thereto (IPC, Sec. 138).
fee is paid (IPC, Sec. 127).

21

The prima facie presumption arising from the
registration of the mark or trade name may be
overcome by (1) evidence of the nullity of the
registration; and (2) prior use by another.
A certificate of registration shall remain in force for
ten (10) years. Provided, the applicant will file a
declaration of actual use.
General Rule:
The trademark protection extends only to goods or
services related to those specified in the certificate.
Exception:
Expansion of Business Rule -Protection extends
also to those goods or services that are related
thereto specified in the certificate (IPC, Sec. 138).
All cases in which the use by the junior appropriator
is likely to lead to a confusion of source as where
prospective buyers would be misled into thinking
that the complaining party has extended his
business into another field (Sta. Ana v. Maliwat,
G.R. No. 23023, August 31, 1968).
R IGHTS C ONFERRED BY A
T RADEMARK
In case of registered marks, in general:
Exclusive right to prevent third persons from using
identical or similar signs or containers for identical or
similar goods or services, where such use would
result in a likelihood of confusion
Note: In case of the use of an identical sign for
identical goods or services, a likelihood of confusion
shall be presumed.
Exception: In cases of importation of drugs and
medicines allowed under Sec. 72.1 and of off-patent
drugs and medicines. Provided that said drugs or
medicines bear the registered marks that have not
been tampered, unlawfully modified, or infringed
upon.
In case of a registered well-known mark:
Exclusive right to prevent third persons from using
identical or similar signs even for dissimilar or
unrelated goods or services, provided that the use
will indicate a connection between the goods and
the owner of the mark and that the interest of the
owner would likely be damaged.
Doctrine/ Principle of Related Goods or Services
There is infringement when there is use of similar
marks on goods that are so related that the public
may be, or is actually deceived, and misled that the
goods come from the same maker or manufacturer
(Esso Standard Eastern Inc. v. CA, G.R. No. 29971,
August 31, 1982).
An exception to this doctrine is the additional right
granted to a registered well-known mark.
Doctrine of Dilution
Copying which, while not sufficiently confusing to
divert sales in the short run, will tend to divert them
in the long run by weakening the instantaneous
favorable associations the public makes with highly
regarded products.
McDonalds claimed to have suffered and continue
to suffer actual damages in the form of injury to their
business reputation and goodwill and of the dilution
of the distinctive quality of the McDonalds marks, in
particular, the mark Big Mac (McDonalds Corp. vs.
L.C. Big Mak Burger, Inc., G.R. No. 143993, August
18, 2004).
Nice Classification
This is the system by which trademark applications
are classified. There are 34 classes of goods and 8
classes of businesses or services.
O PPOSITION
Opposition
Any person who believes that he would be damaged
by the registration of a mark may, upon payment of
the fee file an opposition to application.
Form:
1. In writing;
2. Verified;
3. Specified grounds; and
4. Statement of facts.
Time to file:
Thirty (30) days after publication of application; if
unverified, the verified opposition must be filed
within two (2) months from such filing BUT It may be
extended for one (1) month and maximum period
 San Beda College of Law
2010 Centralized Bar Operations

does not exceed four (4) months from publication of Belief that the 1. Becoming the
application (IPC, Sec. 134). registered mark has generic name for
damaged or will the goods or
Issues: damage the petitioner. services for which
1. Whether or not the marks or trade names it is registered;
involved are confusingly similar. 2. Abandonment;
2. If confusingly similar, who among the parties is 3. Illegal or fraudulent
entitled to the exclusive use of the same. registration;
4. Use by, or with the
Bad Faith or Clean-Hands Doctrine permission of the
While the two marks are confusingly similar, Kee registrant so as to
Boc lost the right to object to the registration of misrepresent the
Race because he was a party to an earlier case in source of the
which the Court rules that Asari Yoko Co. Ltd. is goods or services
entitled to use Race (Kee Boc v. Director of in connection with
Patents, G.R. No. L- 14086, January 20, 1961). which the mark is
used;
Grounds for Loss of Trademark Right 5. Non-use for an
1. By sale or assignment; uninterrupted
2. By abandonment or non- use; period of three (3)
To be considered as abandonment, the disuse of years without
the mark or trade name must be permanent, legitimate reason
intentional and voluntary. Non- use because of
legal restrictions is not evidence of an intent to The earlier filing of a petition to cancel the mark
abandon. shall not constitute a prejudicial question that must
3. Acquiescence; be resolved before an action to enforce the rights to
4. Estoppel; the same registered mark may be decided (IPC,
5. Closure of business; Sec. 151.2).
6. Same manner and circumstances as any other
property right; and Actual use may be done by substantial compliance
7. When mark becomes descriptive. (IPC, Sec. 152.2-152.4).

Exempting Circumstances:
Those arising independently of the will of the
trademark owner (IPC, Sec. 152.11), such as
C ANCELLATION OF prohibition of sale by government regulation, military
R EGISTRATION coup, or political changes that impede commerce.

Any person who believes that he is or will be

damaged by the registration of a mark may file for
the cancellation of the registration.
Registration is an administrative act declaratory of a
pre-existing right that does not, of itself, perfect a
trademark. It is actual use which perfects a
trademark (AGPALO, Trademark, supra).
Formalities: Upon petition, with due notice and
hearing.
Grounds:
Within 5 Years from
At Any Time
Registration
When Non-Use of a Mark is Excused:
1. If caused by circumstances arising independently
of the will of the owner. Lack of funds is not
excused.
2. A use which does not alter its distinctive
character though the use is different from the
form in which it is registered.
3. Use of mark in connection with one or more of
the goods/services belonging to the class in
which the mark is registered.
4. The use of a mark by a company related to the
applicant/registrant.
5. The use of a mark by a person controlled by the
registrant (IPC, Sec. 152).

Remedies of the Losing Party:

1. Motion for reconsideration filed within fifteen (15)
days from receipt of the adverse decision; or

23
2. Appeal to the Director General of the IPO.
C IVIL A CTION FOR
I NFRINGEMENT
Any person who shall commit the following acts
without the consent of the owner shall be liable in a
civil action for infringement:
1. Use in commerce of any reproduction or
colorable imitation of a registered mark or a
dominant feature thereof, in connection with:
a. Sale;
b. Offering for sale;
c. Distribution; or
d. Advertising of 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; and
2. Reproduction, counterfeit, copy or colorable
imitation of a registered mark or dominant
feature thereof and application of the same to
labels, signs, prints packages, wrappers,
receptacles, or advertisements intended to be
used in commerce upon or in connection with
the:
a. Sale;
b. Offering for sale;
c. Distribution; or
d. Advertising of 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.
There is infringement of trademark when the use of
the mark involved would be likely to cause confusion
or mistake in the mind of the public or to deceive
purchasers as to the origin of the source of the
commodity (Fruit of the Loom, Inc., v. CA and
General Garments, Corp., G.R. No. L-32747,
November 29, 1984).
Action for infringement may be maintained without
proof of anything more than the right to the exclusive
use of the registered mark or trade name and that
the defendant has violated it. No allegation or proof
of fraud or intent to defraud is necessary (Compania
General de Tabacos v. Alhambra Cigar, Co., G.R.
No. L-10619, February 10, 1916).
Factors to Consider in Confusingly Similar
Goods:
1. Value of the Goods (Emerald Garment
Manufacturing Corp. v. CA, G.R. No. 100098,
December 29, 1995);
2. Common Trade Channel (Ang v. Teodoro, G.R.
No. 48226, December 14, 1942);
3. Type of Consumers (Mead Johnson v.
McCullough, G.R. No. 6217, December 26,
1911);
4. Necessary Expansion of the Business (Ang v.
Teodoro, G.R. No. 48226, December 14, 1992).
Elements of Infringement
1. Registration of trademark in IPO;
2. Trademark is reproduced, copied, counterfeited
or colorably imitated;
3. It is used in connection with the sale, or it is
offering for sale or advertising of goods, services
or business or applied to labels, signs, wrappers,
etc intended to be used in connection with such
goods, services or business;
4. There is, in the use or application a likelihood of
confusion; and
5. Lack of consent on the part of the registered
owner or their assignee (AGPALO, Trademarks,
supra).
Note: There shall be no infringement of trademarks
or trade names of imported or sold drugs and
medicine as defined in Sec.72.1 of the Act as well
as imported or sold off- patent drugs and medicines
(R.A. 9502, Sec. 14).
Trade names, unlike trademarks, need not be
registered with the IPO before an infringement suit
may be filed by its owner against the owner of an
infringing trademark. All that is required is that the
trade name is previously used in trade or commerce
in the Philippines (Prosource International, Inc. v.
Horphag Research Management SA, G.R. No.
180073, November 25, 2009).
Types of Confusion of Marks or Trade Names
1. Confusion of goods or services; or
2. Confusion of business or of origin;
Actual confusion is not required. The test is whether
the public is likely to be deceived.
The word purchasers refers to average or
ordinarily intelligent purchasers or the unwary
customers.
Confusion of Goods/ Services v. Confusion of
Business/ Origin
Confusion of Goods / Confusion of
Services Business/ Origin
 San Beda College of Law
2010 Centralized Bar Operations

Exists when one Des Produits Nestle, S.A. v. Dy, G.R. No. 172276,
partys product or August 8, 2010).
service though
Exists when the
different from that of Test on Confusion of Goods or Services
ordinary prudent
another, is such as 1. Dominancy Test; and
purchaser would be
might reasonably be 2. Holistic Test.
induced to purchase
assumed to originate
one product or service
from the latter and Other Factors to be Considered:
because of the
the public would then 1. The class of purchasers;
similarity of the marks
be deceived into the 2. The nature and cost of articles; and
or trade names used
belief that there is 3. Conditions under which they are purchased.
on the same kind of
some connection
product or service.
between the parties, The Court has said that in view of the difficulty of
which in fact is applying jurisprudential precedents to trademark
absent. cases due to the peculiarity of each case, judicial
Confusingly similar fora should not readily apply a certain test or
Confusingly similar
marks are employed standard just because of seeming similarities. There
marks are used on the
in different or non- could be more telling differences than similarities as
same kinds of
competing to make a jurisprudential precedent inapplicable
goods/services.
goods/services. (Societe Des Produits Nestle v. CA, G.R. No.
112012, April 4, 2001).
Colorable Imitation
It refers to such similarity in form, content, words, It has been consistently held that the question of
sound, meaning, special arrangement or general infringement of a trademark is to be determined by
appearance of the mark or trade name with that of the test of dominancy.
the other mark or trade name in their overall
presentation or in their essential, substantive or Similarity in size, form and color, while relevant, is
distinctive parts as would likely mislead or confuse not conclusive. If the competing trademark contains
persons in the ordinary course of purchasing the the main or essential or dominant features of
genuine article (Emerald Garment Manufacturing another, and confusion and deception is likely to
Corporation v. CA, G.R. No. 100098, December 29, result, infringement takes place (Asia Brewery Inc.
1995). v.CA, G.R. No. 103543, July 5, 1993).

Idem Sonans Rule
Two trademarks used on identical or related goods
may be confusingly similar if they have similar
sound or pronunciation.
Similarity of sound or pronunciation and spelling
may be sufficient to make two marks confusingly
similar when applied to merchandise of the same
descriptive properties. Example: Salonpas and
Lionpas both for medical plaster (Marvex
Commercial Co. v. Petra Hawpia and Co., G.R. No.
L-19297, December 22, 1966).
Likelihood of confusion or mistake is greater when
identical or closely similar marks are used on non-
competing but related and common household items
because they are purchased by ordinary purchasers
who usually know them by their names or
trademarks.
Aural effects of the words and letters contained in
the marks should be considered in determining the
issue of confusing similarity.
Example: NANNY is confusingly similar to
NAN,NAN being the prevalent feature (Societe
Even if respondent did not use an oval design, the
mere fact that it used the same stylized S, the
same being the dominant feature of the petitioners
trademark, already constitutes infringement under
the Dominancy Test (Skechers, USA, Inc v. Inter
Pacific Industrial Trading Corp, G.R. No. 164321
March 23, 2011).
Test on Confusion of Origin
Whether the non-competing articles may be
classified under two different classes because they
are deemed not to possess the same descriptive
properties.
When goods are related, confusion of origin is likely
to arise. Goods are related when:
1. They belong to the same class or have same
descriptive properties;
2. Both possess the same physical attributes or
essential characteristics with reference to form,
composition, texture or quality; and

25
3. Both serve the same purpose or are sold in This test is incorporated
groceries or flow through the same channel of in the Intellectual
trade. Property Code and is
controlling.
General Rule:
Where the product on which a mark is used is Cases where the Supreme Court Used the
identical or similar with that of another is entirely Dominancy Test
unrelated to the product of the latter, the use by the 1. Hen Brand v. Marka Manok
junior user may unlikely cause confusion or mistake Confusingly similar. The two roosters appearing
as to the source or origin of the product. in the trademark of the applicant and the hen
appearing on the trademark of the Oppositor,
Exception: although of different sexes, belong to the same
Where the mark is considered well known by family of chicken, known as manok in all the
competent authority of the Philippines, the use on principal dialects of the Philippines, and when a
unrelated good or service would indicate a cook or a household help or even a housewife
connection between those goods or services in buys a food seasoning product for the kitchen the
which case the junior user cannot register the mark brand of Manok or Marca Manok would most
on the entirely unrelated good (AGPALO, likely be upper most in her mind and would
Trademarks, supra). influence her in selecting the product, regardless
of whether the brand pictures a hen or a rooster
Dominancy Test v. Holistic/Totality Test or two roosters. To her, they are all manok.
Dominancy Test Holistic/ Totality Test Therein lies the confusion, even deception (Lim
Focuses on the similarity Mandates that the Hoa v. Director of Patents, G.R. No. L-8072,
of the main, essential, entirety of the marks in October 31, 1956).
dominant, or prevalent question must be
features of a mark. considered in 2. Flormann (shirts, pants, jackets and shoes for
determining confusing ladies, men, and children,) v. Flormen (ladies'
similarity. and children's shoes)
Confusingly similar. Whether or not shirts and
Basis of Comparison
shoes have the same descriptive properties, or
Relies on visual, aural, whether or not it is the prevailing practice or the
and connotative tendency of tailors and haberdashers to expand
comparisons and overall their business into shoes making, are not
impressions between the Relies only on visual controlling. The meat of the matter is the
two trademarks (Societe comparison. likelihood of confusion, mistake or deception
Des Produits Nestle, upon purchasers of the goods of the junior user
S.A. v.CA, G.R. No. of the mark and the goods manufactured by the
112012, April 4, 2001) previous user. Here, the resemblance or
Test similarity of the mark Flormann and the name
Flormen and the likelihood of confusion, one to
The test is whether The test is whether
the other, is admitted; therefore, the prior
there is similarity of the the general confusion
adopter, has the better right to the use of the
prevalent features of the made by the article
mark (Sta. Ana v. Maliwat, G.R. No. L-23023,
competing trademarks upon the eye of the
August 31, 1968).
which might cause casual purchaser who
confusion or deception is unsuspicious and
3. Planters Cocktail Peanuts v. Phil Planters
and thus constitute off his guard, is such
Cordial Peanuts
infringement Societe as to likely result in
Confusingly similar. As a whole it is the word
Des Produits Nestle, his confounding it
Planters which draws the attention of the buyer
S.A. v. CA, G.R. No. with the original (Del
and leads him to conclude that the salted
112012, April 4, 2001). Monte Corp. v. CA,
peanuts contained in the two cans originate from
G.R. No. L-78325,
one and the same manufacturer. In fact, when a
Note: Exact duplication January 25, 1990).
housewife sends her housemaid to the market to
or imitation is not
buy canned salted peanuts, she will describe the
necessary. Note: Comparison of
brand she wants by using the word Planters
the words is not the
and not "Cordial" nor "Cocktail."
only determinant
factor.
 San Beda College of Law
2010 Centralized Bar Operations
4. Universal Converse Deice v. Converse
Rubber Corp.
Confusingly similar. "CONVERSE" has grown to
be identified with Converse Rubber Corp's
products, and in this sense, has acquired a
second meaning. The trademark of Universal
Rubber Product "UNIVERSAL CONVERSE and
DEVICE" is imprinted in a circular manner on the
side of its rubber shoes while the trademark of
Converse Rubber Corps "CONVERSE CHUCK
TAYLOR" is imprinted on a circular base attached
to the side of its rubber shoes. Even if the details
were not identical, with the general appearance
alone of the two products, any ordinary, or even
perhaps a not too perceptive and discriminating
customer could be deceived (Converse Rubber
Corp. v. Universal Rubber, G.R. No. L-27906,
January 8, 1997).
5. Asia Brewery, Inc.s label of BEER PALE
PILSEN and its use of the steinie bottle v.
SMBs PALE PILSEN with Rectangular Malt
and Hops Design
No confusing similarity. Infringement is
determined by the test of dominancy rather than
by differences or variations in the details of one
trademark and of another. The fact that the words
pale pilsen are part of ABIs trademark does not
constitute an infringement of SMCs trademark:
San Miguel Pale Pilsen, for pale pilsen are
generic words descriptive of the color pale, and
of a type of beer pilsen (Asia Brewery, Inc., v.
CA, G.R. No. 103543, July 5, 1993).
6. Gold Toe v. Gold Top
Confusingly similar. The dominant features of the
products are gold checkered lines against a
predominantly black background and a
representation of a sock with a magnifying glass.
Also, both products use the same type of lettering
and a representation of a man's foot wearing a
sock and the word "linenized" with arrows printed
on the label. Lastly, the names of the brands are
similar -- "Gold Top" and "Gold Toe." Lastly, the
parties are engaged in the same line of business
(Amigo Manufacturing Inc., v. Cluelett Peabody
Co., Inc., G.R. No. 139300, March 14, 2001).
7. Master Roast and Master Blend v. Flavor
Master
Confusingly similar. Much of the dominance
which the word master has acquired through
Nestles advertising schemes is carried over
when the same is incorporated into CFCs
trademark flavor master. Thus, when one looks
at the label bearing the trademark flavor master,
ones attention is easily attracted to the word
master, rather than to the dissimilarities that exist
27
(Societe Des Produits Nestle, S.A. v. CA, G.R.
No. 112012, April 4, 2001).
8. Big Mac v. Big Mak
Confusingly similar. Aurally the two marks are the
same, with the first word of both marks
phonetically the same, and the second word
of both marks also phonetically the same.
Visually, the two marks have both two words and
six letters, with the first word of both marks
having the same letters and the second word
having the same first two letters. In spelling,
considering the Filipino language, even the last
letters of both marks are the same (McDonalds
Corporation and McGeorge Food Industries, Inc.
v. L.C. Big Mak Burger, Inc., G.R. No. 143993,
August 18, 2003).
9. McDonalds v. MacJoy
Confusingly similar. Both marks use the
corporate "M" design logo and the prefixes "Mc"
and/or "Mac" as dominant features. The first
letter "M" in both marks puts emphasis on the
prefixes "Mc" and/or "Mac" by the similar way in
which they are depicted i.e. in an arch-like,
capitalized and stylized manner. It is the prefix
"Mc," an abbreviation of "Mac," which visually
and aurally catches the attention of the
consuming public. Verily, the word "MACJOY"
attracts attention the same way as did
"McDonalds," "MacFries," "McSpaghetti,"
"McDo," "Big Mac" and the rest of the
MCDONALDS marks which all use the prefixes
Mc and/or Mac.Besides and most importantly,
both trademarks are used in the sale of fastfood
products (McDonalds Corporation v. MacJoy
Fastfood Corporation, G.R. No. 166115,
February 2, 2007).
Cases where the Supreme Court Used the
Totality/Holistic Test
1. Stylistic Mr. Lee v. Lee for jeans
No Confusion. Petitioners whole trademark
STYLISTIC MR. LEE is prominent. The
trademark should be considered as a whole and
not piecemeal. The Court considered the
following:
a. The products involved are not ordinary
household products, and Maong pants or
jeans are not inexpensive. Accordingly, the
casual buyer is predisposed to be more
cautious and discriminating in and would
prefer to mull over his purchase. Confusion
and deception, then, is less likely.
b. The average Filipino consumer generally buys
his jeans by brand. He is more or less
 knowledgeable and familiar with his
preference and will not easily be distracted.
c. Respondent's variation follows a standard
format "LEERIDERS," "LEESURES" and
"LEELEENS." It is improbable that the public
would immediately and naturally conclude that
"STYLISTIC MR. LEE" is but another variation
under private respondent's "LEE" mark
(Emerald Garment Mfg Corp. v. CA, G.R. No.
100098, December 29, 1995).
2. Bioferin v. Bufferin for medicine
No Confusion. The test is not simply to take their
words and compare the spelling and
pronunciation of said words. Rather, it is to
consider the two marks in their entirety, as they
appear in the respective labels, in relation to the
goods to which they are attached (Bristol Myers
v. Director of Patents, G.R. No. L-21587, May 19,
1966).
I NFRINGEMENT OF N AME AND
M ARK OF O WNERSHIP S TAMP
ON C ONTAINERS
(R.A. N O . 623 AS AMENDED
BY R.A. N O . 5700)
General Rule:
It is unlawful for any person, without written consent
of the manufacturer, bottler or seller who has
registered the mark of ownership to fill such bottles,
boxes, kegs, barrels or other containers so marked
and stamped, for the purpose of sale, dispose of, or
wantonly destroy the same, whether filled or not, to
use the same for drinking vessels or drain pipes,
foundation pipes, for any other purpose than that
registered (R.A. 623, Sec. 2).
The use of the same, without apparent permission
from the trademark owners thereof, shall be prima
facie presumption that such possession or use is
unlawful (R.A. 623, Sec 3).
Exceptions:
1. Use of the bottles as containers for sisi, bagoong,
patis and similar native products (R.A. 623, Sec
6); and
2. Persons in whose favor the containers were sold
(Distilleria Washington, Inc. v. LA Tondea
Distillers, G.R. No. 120961, October 2, 1997).
The general rule is that in the sale of beverages, it
already includes the containers, unless there is an
agreement to the contrary (AGPALO, Trademarks,
supra).
The exemption under Sec. 6, RA 623 covers not
only criminal but also civil liability (Twin Ace Holding
Corp. v. CA, G.R. No. 123248, October 16, 1997).
Conditions, rules and regulations on registration of
trademarks are applicable to names and marks on
containers. Accordingly, the certificate of registration
shall remain in force for ten (10) years without
prejudice to its renewal for a period of 10 years
(R.A. 623, Sec. 1).
R EMEDIES FOR T RADEMARK
I NFRINGEMENT
1. Action for damages
The owner of a registered mark may recover
damages from any person who infringes his
rights.
General Rule: Only those acts of infringement
committed from registration onwards may be
sued upon.
Exception: In case of infringement of a well-
known mark.
Measure of Damages
a. The reasonable profit which the complaining
party would have made, had the defendant
not infringed his rights; or
b. The profit which the defendant actually made
out of the infringement.
If measure of damages cannot be ascertained
with reasonable certainty, court may award as
damages (i) a reasonable percentage based
upon the amount of defendants gross sales or (ii)
the value of the services in connection with which
the mark or trade name was used in the
infringement of the rights of the complaining party
(IPC, Sec. 156.1).
Requirement of Notice:
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.
Knowledge is presumed if: (a) mark is displayed
with the words '"Registered Mark" or symbol
or (b) if the defendant had otherwise actual notice
of the registration (IPC, Sec. 158).
 San Beda College of Law
2010 Centralized Bar Operations
2. Injunction
The complainant, upon proper showing, may also
be granted injunction (IPC, Sec. 156.4).
3. Impounding
On application of the complainant, the court may
impound during the pendency of the action, sales
invoices and other documents evidencing sales
(Sec. 152.2).
4. Double Damages
In cases where actual intent to mislead the public
or to defraud the complainant is shown, in the
discretion of the court, the damages may be
doubled (IPC, Sec. 156.3).
5. Court order for the disposal or destruction of
the infringing material
Court may order that goods found to be infringing
be, without compensation, disposed of outside
the channels of commerce, or destroyed; and all
labels, signs, prints, packages, wrappers,
receptacles and advertisements in defendants
possession, bearing the registered mark or trade
name or any reproduction, counterfeit, copy or
colorable imitation thereof, all plates, molds,
matrices and other means of making the same,
shall be delivered up and destroyed (IPC, Sec.
157.1).
With regard to counterfeit goods, the simple
removal of the trademark affixed shall not be
sufficient (save in exceptional cases) to permit
the release of the goods into the channels of
commerce (IPC, Sec. 157.2).
6. Criminal Action
7. Administrative Sanctions
The infringement case can and should proceed
independently from the cancellation case with the
Bureau so as to afford the owner of the
certificates of registration redress and injunctive
writs (Shangri-La International Hotel Mgt., Inc.,
v.CA, G.R. No. 111580, June 21, 2001).
Any foreign national, who qualifies under the
principle on reciprocity and does not engage in
business in the Philippines, whether or not it is
licensed to do business in the Philippines, may
bring civil or administrative action for:
a. Opposition;
b. Cancellation;
c. Infringement;
d. Unfair competition; or
e. False designation of origin or false description
(IPC, Sec. 160).
29
Limitations of Action for Infringement
1. Right of Prior User Registered mark shall be
without effect against any person who, in good
faith, before the filing or priority date, was using
the mark for purposes of his business.
2. Relief against Printer Injunction against future
printing against an innocent infringer who is
engaged solely in the business of printing the
mark.
3. Relief against Newspaper Injunction against the
presentation of advertising matter in future issues
of the newspaper, magazine or in electronic
communications in case the infringement
complained of is contained in or is part of paid
advertisement in such materials (IPC, Sec.159).
Possible Defenses for an Infringer:
1. The mark or trade name is invalid or incapable of
registration;
2. The mark has become generic;
3. The registration was fraudulently secured;
4. The mark has been abandoned for non-use for a
long period;
5. Plaintiff is guilty of laches, estoppel or consented
to the use by defendant;
6. The mark or trade name is not confusingly
similar; and
7. Superior rights as prior user.
U NFAIR C OMPETITION
The employment by a person of deception or any
other means contrary to good faith by which he
passes off the goods manufactured by him or in
which he deals, or his business or services, for
those of another person who has established
goodwill in the goods such person manufactures or
deals in, or his business or services, or who shall
commit any acts calculated to produce said result,
whether or not registered mark is employed (IPC,
Sec. 168.2).
Unfair competition is the act of passing off or
attempting to pass off upon the public the goods,
business or services of one and for the goods,
business or services of another.
Goodwill means the advantage or benefit which is
acquired by an establishment or business in
consequence of the general public patronage and
encouragement which it receives from constant or
habitual customers on account of its local position,
reputation for skill or affluence etc. (AGPALO,
Trademarks, supra).
After sometime, the purchasers buy the product or
service because of the mark or trade name
associated with it. Thus, a trademark or trade name
may not be transferred or assigned except with the
good will of the business connected with the use of
and symbolized by it.
In particular, the following shall be deemed guilty of
unfair competition:
1. Any person who is selling his goods and:
a. Gives them the general appearance of goods
of another manufacturer or dealer; or
b. Clothes the goods with such appearance as
shall deceive the public and defraud another
of his legitimate trade, or any subsequent
vendor of such good or any agent of any
vendor engaged in selling such goods with a
like purpose.
2. 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.
3. Any person who shall:
a. Make any false statement in the course of
trade; or
b. Commit any other act contrary to good faith of
a nature calculated to discredit the goods,
business or services of another (IPC, Sec.
168.3).
Test: Whether certain goods have been intentionally
clothed with an appearance which is likely to
deceive the ordinary purchaser exercising ordinary
care, and not whether a certain limited class of
purchasers with special knowledge not possessed
by the ordinary purchaser could avoid mistake by
the exercise of this special knowledge (U.S. v.
Manuel, G.R. No. L-1999, December 27, 1906).
The inherent element of unfair competition is fraud
or deceit (Shell Co. of the Philippines v. Insular
Petroleum Refining Co., Ltd., G.R. No. L-19441,
June 30, 1964).
Infringement of Trademark v. Unfair Competition
Infringement of
Unfair Competition
Trademark
Definition
The passing off of
Unauthorized use of a
ones goods as those
trademark
of another
Fraudulent Intent
Fraudulent intent is Fraudulent intent is
unnecessary essential
Registration
Prior registration of the
Registration is not a
trademark is a
prerequisite to an
prerequisite to the
action.
action
Scope
Limited scope W Wider scope
Goods Involved
Same class of goods or Different classes of
services must be goods or services
involved may be involved
The law on unfair competition is broader and more
inclusive than the law on trademark
infringement. The latter is more limited but it
recognizes a more exclusive right derived from the
trademark adoption and registration by the person
whose goods or business is first associated with
it. The law on trademarks is thus a specialized
subject distinct from the law on unfair competition,
although the two subjects are entwined with each
other and are dealt with together in the Trademark
Law (now, both are covered by the IP Code).
Hence, even if one fails to establish his exclusive
property right to a trademark, he may still obtain
relief on the ground of his competitors unfairness or
fraud. Conduct constitutes unfair competition if the
effect is to pass off on the public the goods of one
man as the goods of another. It is not necessary
that any particular means should be used to this end
(E. Spinner & Co. v. Neuss Hesslein Corporation, 54
Phil. 225, 231-232 [1930] cited in Mighty
Corporation v. E & J Gallo, G.R. No. 154342, July
14, 2004).
Infringement of a trademark is, in truth, a form of
unfair competition, both of which causes confusion
as to deceive an ordinary person into thinking that
the product or service of one is that of the other.
A foreign corporation not engaged in and licensed to
do business in the Philippines may maintain an
action for unfair competition. This is so because the
crime of unfair competition punishable under Article
189 of the Revised Penal Code is a public crime. It
is essentially an act against the State and it is the
latter which principally stands as the injured party.
The complainants capacity to sue in such case
becomes immaterial (Melbarose Sasot, et al. v.
People of the Philippines, G.R. No. 143193, June
29, 2005).
While foreign corporations may have the capacity to
sue for infringement irrespective of lack of business
activity in the Philippines, the question of whether
they have an exclusive right over the symbol as to
justify issuance of an injunctive writ will depend on
 San Beda College of Law
2010 Centralized Bar Operations
actual use of their trademarks in the Philippines. To
be entitled to an injunctive writ, a foreign corporation
must show that there exists a right to be protected
and that the fact against which injunction is directed
are violative of such right (Philip Morris, et al. v.
Fortune Tobacco Corporation, G.R. No. 158589,
June 27, 2006).
Sale is not an indispensable element in an action for
infringement or unfair competition (Pro Line Sports
v. CA, G.R. No. 118192, October 23, 1997).
F ALSE D ESIGNATION
False Designation
Any person who, on or in connection with any goods
or services, or any container for goods, uses in
commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation
of origin, false or misleading description of fact, or
false or misleading representation of fact, which:
1. 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
2. In commercial advertising or promotion,
misrepresentation of the nature, characteristics,
qualities, or geographic origin of his or her or
another persons goods, services, or commercial
activities, shall be liable to a civil action for
damages and injunction provided in Sections 156
and 157 of this Act by any person who believes
that he or she is or likely to be damaged by such
act.
PART IV: T HE L AW ON
C OPYRIGHT
The Law on Copyright has been amended by R.A.
No. 10372 dated February 28, 2013.
The definition proposed by the World Intellectual
Property Organization (WIPO) makes explicit the
following elements:
31
1. Copyright has to do with the rights of intellectual
creators, particularly those usually, though not
exclusively, connected with mass communication.
2. It is that system of legal protection an author
enjoys of the form of expression of ideas
(AQUINO, Intellectual Property Law, Comments
and Annotations, (2006)) [hereinafter AQUINO,
Intellectual Property].
Copyright
It is the right over literary and artistic works which
are original intellectual creations in the literary and
artistic domain protected from the moment of
creation (Elidad Kho v.CA, G.R. No. 115758, March
19, 2002).
Primary Purpose of Copyright
Not to reward the labor of authors, but to promote
the progress of science and useful arts.
Principles in Copyright
1. Relates to artistic creations, such as books,
music, paintings, and sculptures, films and
technology-based works as well as to the main
act which, in respect of literary and artistic
creations, may be made only by the author or his
authorization (WIPO, Understanding Copyright
and Related Rights).
2. 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 (IPC, Sec. 172.2).
3. Copyright consists of the exclusive right to carry
out, authorize or prevent rights which violate the
economic rights of the owner (IPC, Sec. 177).
4. 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 (IPC, Sec.
175).
5. The copyright is distinct from the property in the
material object subject to it (IPC, Sec. 181).
6. 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
(Pearl & Dean (Phil.) v. Shoemart, Inc., G.R. No.
148222, August 15, 2003).
7. The rights conferred by the Intellectual Property
Code insofar as copyright is concerned subsist
from the moment of creation (IPC, Sec. 172.1).
There is creation when an idea is expressed in
some tangible medium, or is at least expressed in
such a way that the critical transition from bare idea Author of the work, his
Single Creator
or concept to product is effected. heirs or assigns.
If work consists of
Under R.A. 10372, the Bureau of Copyright and unidentifiable parts: co-
Related Rights (BCCR) is the seventh (7 th) bureau in authors jointly as co-
the Organizational Structure of the IPO. owners, unless there is
agreement to the
Functions of the BCCR: Joint Creator contrary.
1. Exercise original jurisdiction to resolve disputes If work consists of
relating to the terms of a license involving the identifiable parts:
authors right to public performance or other author of each part owns
communication of his work; the part that he has
2. Accept, review and decide on applications for the created.
accreditation of collective management If the creation is part of
organizations or similar entities; his regular duties:
3. Conduct studies and researches in the field of employer, unless there is
copyright and related rights; and Employees Creation agreement to the
4. Provide other copyright and related rights service contrary
and charge reasonable fees therefor. If it is not: employee
Appeal of the Decisions of the BCCR Work itself: person
commissioning
The Director General exercises exclusive appellate
jurisdiction over all decisions rendered by the Copyright: creator,
Commissioned Work
BCRR, as well as those of the Director of Legal unless there is a written
Affairs, the Director of Patents and the Director of stipulation to the
Trademarks. contrary.
In turn, decisions of the Director General shall be For exhibition purposes:
appealable to the Court of Appeals in accordance producer
with the Rules of Court (IPC, Sec. 7 (b)). For all other purposes:
Cinematographic
producer, author of the
Works
Requisites for the Creation of a Copyrightable scenario, composer, film
Work director, author of the
1. Originality work
It does not mean novelty or ingenuity; neither Publishers are deemed
uniqueness nor creativity. It simply means that representative of the
the work "owes its origin to the author. author, unless:
1. The contrary appears;
Anonymous and
Constituents of originality: 2. Pseudonyms or
pseudonymous
a. The work is an independent creation of the adopted name
works
author; leaves no doubt as to
b. It must not be copied; and the authors identity;
c. It must involve some intellectual effort. 3. Author discloses his
identity.
Contributor is deemed to
have waived his right,
2. Expression Collective Works unless he expressly
There must be "fixation". To be "fixed", a work reserves it (IPC, Sec.
must be embodied in a medium sufficiently 196).
permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a
period of more than transitory duration.
Strictly speaking, there is no work for copyright
purpose, unless there is something tangible. It is
fixation that defines the time from when copyright
subsists. Before the time of fixation there can be
no infringement.

Creator To Whom it Belongs

 San Beda College of Law
2010 Centralized Bar Operations

Writer owns the

copyright but the
recipient owns the letter
itself. Collective Work v. Joint Work
However, the court may Collective Work Joint Work
authorize their Elements remain Separate elements
Letters
publication or unintegrated and merge into a unified
dissemination if the disparate whole
public good or the Work created by two or
interest of justice so more persons at the
requires (CIVIL CODE, Work prepared by two
initiative and under
Art.723). or more authors with
direction of another with
the intention that their
the understanding that it
Duration of Copyright (IPC, Sec. 213) contributions be
will be disclosed by the
Type of Work Duration merged into
latter under his own
inseparable or
Lifetime of the creator name and that
interdependent parts
Single Creation and in perpetuity after contributions of natural
of the unitary whole.
his death. persons will not be
Lifetime of the last identified
surviving co-creator and Each author shall enjoy Joint authors shall be
Joint Creation
in perpetuity after his copyright to his own co-owners. Co-
death. contribution ownership shall apply
Fifty (50) years after the Unless the contributor
Joint authors shall be
date of their first expressly reserves his
entitled both to be
publication; right, it is the putative
acknowledged as
except where, before author to whom the
authors of the work
the expiration of said work will be attributed
Anonymous or a period, the authors
pseudonymous work identity is revealed or is
no longer in doubt, the O RIGINAL W ORKS
first two mentioned rules
shall apply; or if
unpublished, fifty (50) Works Protected:
years from their making Original Works (BO-PPP-CLLAIM-DDWO)
Work of applied art, 1. Books, pamphlets, articles and other writings;
an artistic creation Note: It matters not whether the works are
with utilitarian published or not, whether they be in verbal or
functions or numerical symbol (AQUINO, Intellectual
incorporated in a Twenty-five (25) years Property, supra)
useful article, from the date of making 2. Original ornamental designs or models for
whether made by articles of manufacture, whether or not
hand or produced on registrable as an industrial design, and other
an industrial scale works of applied art;
(IPC, Sec. 171.10). Work of Applied Art - An artistic creation with
Photographic work, utilitarian functions or incorporated in a useful
Fifty (50) years from the
audiovisual work article, whether made by hand or produce on an
publication of the work,
produced by industrial scale (IPC, Sec, 171.10).
or if unpublished, from
photography or 3. Periodicals and newspapers;
making the same
analogous processes Note: The Journal of the Integrated Bar of the
Lifetime of the author Philippines, as a journal, enjoys copyright
Newspaper article and in perpetuity after protection.
his death. A writer, artist or photographer who submits a
work to a newspaper or periodical editor for
The term of protection shall be counted from the 1 st publication thereby licenses such editor to
day of January of the year following the last publish the work only once unless more ample
publication (IPC, Sec. 214). provision is otherwise made. While the work may
then belong to the newspaper or the periodical,

33
 copyright is not comprehensively transferred by
license for a single publication (IPC, Sec. 188.3).
A pure news report no longer finds protection
under the new law, but a column or published
comment will. When newspapers and periodicals
include works enjoying independent copyrights,
the works so included continue enjoying the
rights for duration proper to them.
4. Photographic works including works produced by
a process analogous to photography; lantern
slides;
5. Pictorial illustrations and advertisements;
6. Computer programs; and
Computer Programs - Set of instructions
expressed in words, codes, schemes or in any
other form, which is capable, if incorporated in a
medium that the computer can read, of causing
the computer to perform or achieve a particular
task or result (IPC, Sec 171.4).
7. Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not reduced
in writing or other material form;
While a speech or lecture is being mulled over by
its author mentally, there is, as yet nothing to
protect. The moment, however, it is delivered-
whether or not from a written text or from
memory- there is protected material (IPC, Sec.
188.3).
8. Letters;
Letters and other private communications in
writing are owned by the person to whom they
are addressed or delivered, but they cannot be
published or disseminated without the consent of
the writer of his heirs (CIVIL CODE, Art 723).
The physical object the letter is owned by the
addressee to whom the letter is sent; but
copyright thereto is enjoyed by the sender.
9. Audiovisual works and cinematographic works
and works produced by a process analogous to
cinematography or any process for making
audiovisual recordings;
10. Illustrations, maps, plans, sketches, charts and
three dimensional works relative to geography,
topography, architecture or science;
Note: What is copyrightable in a map is the
selection, arrangement and presentation of the
component parts (AQUINO, Intellectual Property,
supra).
11. Musical compositions, with or without words;
12. Dramatic or dramatic-musical compositions,
choreographic works or entertainment in dumb
shows;
Examples: Plays, operas, ballets, musicals
13. Drawings or plastic works of a scientific or
technical character;
14. Works of drawing, painting, architecture,
sculpture, engraving, lithography or other works
of art; models or designs for works of art;
15. Other literary, scholarly, scientific and artistic
works (IPC, Sec. 172).
D ERIVATIVE W ORKS
Derivative Works
These are works based upon one or more
preexisting works, such as translation, musical
arrangement, dramatization, fictionalization, motion
picture version, sound recordings, art reproduction,
abridgment, condensation or any other form in which
a work may be recast, transformed or adapted
(AQUINO, Intellectual Property Law, Comments and
Annotations, 2006).
It Includes:
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
(IPC, Sec. 173).
Derivative works shall be protected as new works.
Provided however, that such new works shall not:
1.Affect the force of any subsisting copyright upon
the original works employed or any part thereof; or
2.Be construed to imply any right to such use of the
original works, or to secure or extend copyright in
such original work (IPC, Sec. 173.2).
W ORKS N OT P ROTECTED
Works Not Protected: (PIN-DOG)
1. Pleadings;
2. 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 (IPC, Sec. 175);
Note: Format or mechanics of a television show
are not copyrightable. The law in enumerating
what are subject to copyright refers to finished
works and not to concepts (Joaquin, Jr. v. Drilon,
G.R. No. 108946, January 28, 1999).
3. News of the day and other miscellaneous facts
having the character of mere items of press
information (IPC, Sec. 175);
4. Decisions of courts and tribunals. They may
therefore be freely used or quoted.
Note: This pertains to the "original decisions" not
the SCRA published volumes since these are
protected under derivative works under Sec.
173.1 (b).
 San Beda College of Law
2010 Centralized Bar Operations
5. Any Official text of a legislative, administrative or
legal nature, as well as any official translation
thereof (IPC, Sec. 175);and
6. Any work of the Government of the Philippines.
General Rule: 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 may, among others, impose
as a condition the payment of royalties.
Exception: No prior approval or conditions shall be
required for the use of 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 (IPC, Sec. 176.1).
R IGHTS C ONFERRED BY
C OPYRIGHT
Rights Conferred to a Copyright Owner: (CMD)
1. Copyright or Economic rights (IPC, Sec. 177);
2. Moral rights (IPC, Sec. 193); and
3. Right to participate in the gross proceeds of the
sale or lease of the original work or Droit de suite
(IPC, Sec. 200).
1. Copyright or Economic Rights
Exclusive right to:
a. Carry out;
b. Authorize; or
c. Prevent the following acts:
i. Reproduction of the work or substantial
portion of the work;
Reproduction The making of one 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 R.A. 10372.
ii. Dramatization, translation, adaptation,
abridgment, arrangement or other
transformation of the work;
Note: Article 12 of the Berne-Paris
Convention guarantees authors of literary or
artistic works the exclusive right of
authorizing adaptations, arrangements and
other alterations of their works.
iii. First public distribution of the original and
each copy of the work;
iv. Rental of the original or a copy of an
audiovisual or cinematographic work;
Rental It refers to the transfer of the
possession of the original or a copy of a
work for a limited period of time, for profit-
making purposes (IPC, Sec 171.8).
35
v. Public display of the original or a copy of the
work;
vi. Public performance of the work;
Public Performance To perform it in a
place open to the public or at any place
where a substantial number of persons
outside of a normal circle of a family and its
social acquaintances is gathered
(BOORSTYN, Copyright Law, (1981) p.
107).
vii. To transmit or otherwise communicate a
performance of the work to a place specified
above or to the public, by means of any
device or processes, whether the members
of the public capable of receiving the
performance receive it in the same place or
in separate places and at the same time or
at different times;
viii. Other communication to the public of the
work (IPC, Sec. 177); and
ix. Assignment of the copyright and/ or the
material object in whole or in part.
Note: Economic rights allow the owner to derive
financial reward from the use of his works by
others (WIPO, Understanding Copyright and
Related Rights], [hereinafter WIPO, Copyright
and Related Rights]).
2. Moral Rights
a. Right of Paternity To require that the
authorship of the works be attributed to him, in
a prominent way on the copies, and with the
public use of the work (IPC, Sec. 193.1);
b. To make any alterations of his work prior to, or
to withhold it from publication (IPC, Sec.
193.2);
c. Right of Integrity 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 (IPC, Sec. 193.3); and
d. 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. 193.4).
These rights are distinct from economic rights and
remain with the author even after he has transferred
or assigned to another other rights of copyright
(WIPO, Copyright and Related Rights, supra at
215).
Moral rights allow the author to take certain actions
to preserve the personal link between himself and
the work (WIPO, Copyright and Related Rights,
supra at 9).
Term/ Duration
Lifetime of the author and in perpetuity after his
death for the moral rights under Sec. 193.1 (i.e. 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). The rights under Secs. 193.2, 193.3, 193.4,
shall be coterminous with the economic rights (R.A.
10372, Sec. 17).
Moral rights shall not be assignable or subject to
license.
Works NOT covered:
1. Prints;
2. Etchings;
3. Engravings;
4. Works of applied art; and
5. Similar works wherein the author primarily
derives gain from the proceeds of reproductions
(IPC, Sec. 201).
These rights may be waived by:
1. By a written instrument;
Except: where its effects is to permit another to:
a. 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; (IPC, Sec. 195.1) or
b. To use the name of the author with respect to
a work he did not create (IPC, Sec. 195.2).
2. By contribution to a collective work unless
expressly reserved (IPC, Sec. 196).
3. Droit de Suit
It is the inalienable right to receive to the extent
of 5% of the gross proceeds of the sale or lease
of a work (IPC, Sec. 200).
Requisites:
a. Sale or lease;
b. Of an original work;
c. Of painting or sculpture, or of the original
manuscript of a writer or composer; and
d. Subsequent to the first disposition thereof by
the author.
Transfer or Assignment of Copyright
The transfer or assignment of the copyright shall not
itself constitute a transfer of the material object. A
transfer or assignment of the copyright of the sole
copy or of one or several copies of the work shall
not imply transfer or assignment of copyright (IPC,
Sec 181).
First Sale Doctrine
After the first sale of the lawfully made copy of the
copyrighted work, anyone who is the owner of that
copy can sell or dispose of that copy in any way
without any liability for copyright infringement. The
first sale of an authorized copy of the work exhausts
the authors right to control distribution of copies.
Copyright Licensing
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.
The copyright is not deemed assigned or licensed
unless there is a written indication of such intention
(RA 10372, Sec. 180).
The copyright is distinct from the property in the
material object subject to it. Consequently, the
transfer, assignment or licensing 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, assignment or licensing of the copyright.
L IMITATIONS ON C OPYRIGHT
Limitations to the Rights of Copyright (GF-
PRRI):
1. General limitations (IPC, Sec. 184);
2. Fair use (IPC, Sec. 185);
In the case of a work of architecture, the right to
control the reconstruction or rehabilitation in the
same style as the original of the building (IPC,
Sec. 186);
3. Private reproduction of published work in a single
copy by a natural person for research and private
study (IPC, Sec. 187);
4. Reprographic reproduction in a single copy by
non-profit libraries, under certain circumstances
(IPC, Sec. 188);
5. Reproduction, under certain circumstances, of a
computer program in one back-up copy by the
lawful owner of the program (IPC, Sec. 189); and
6. Importation for personal purposes under certain
conditions (IPC, Sec. 190).
General Limitations (RRRR-QPPI-MUU)
Acts that do not infringe copyright:
1. Recitation or performance of a work, once made
accessible to the public, that is either, (i) privately
done and free of charge, or (ii) strictly for a
charitable or religious institution;
 San Beda College of Law
2010 Centralized Bar Operations
2. Reproduction or communication to the public by
mass media of articles on current political, social,
economic, scientific or religious topic, lectures,
addresses and other works, delivered in public:
(i) for information purposes, (ii) not expressly
reserved, and (iii) source is clearly indicated;
3. Reproduction and communication to the public of
literary, scientific or artistic works as part of
reports of current events by means of
photography, cinematography or broadcasting to
the extent necessary for the purpose;
4. Recording made in schools, universities, or
educational institutions of a work included in a
broadcast for the use of schools, universities or
educational institutions. Such recording must be
deleted within a reasonable period; such
recording may not be made from audio-visual
works which are part of the general cinema,
repertoire of feature films except of brief excerpts
of the work;
5. Making of Quotations from a published work: (i)
compatible with fair use, (ii) extent is justified by
the purpose, (iii) source and name of the author,
appearing on work, must be mentioned;
6. Public performance or the communication to the
public of a work in a place where no admission
fee is charged by a club on institution for
charitable or educational purpose only and the
aim is not profit-making;
7. Public display of the original or a copy of the work
not made by means of a film, slide, television,
image or otherwise on screen or by means of any
other device or process either the work has been
published, sold, given away, or transferred to
another person by the author or his successor in
title;
8. Inclusion of a work in a publication, broadcast or
other communication to the public, sound
recording or film if made by way of illustration for
teaching purposes compatible with fair use and
the source and the name of the author appearing
on work, must be mentioned;
9. Making of ephemeral recordings; (i) by a
broadcasting organization, (ii) by means of its
work or facilities, (iii) for use in its own broadcast;
10. Use made of a work by or under the direction or
control of the government for public interest
compatible with fair use; and
11. Use made of a work for the purpose of any
judicial proceedings or for the giving of
professional advice by a legal practitioner (IPC,
Sec. 184).
Fair Use
A privilege, of persons other than the owner of the
copyright, to use the copyrighted material in a
reasonable manner without his consent,
37
notwithstanding the monopoly granted to the owner
by the copyright. It does not constitute infringement.
The fair use of a copyrighted work for criticism,
comment, news reporting, teaching including limited
number of copies for classroom use, scholarship,
research, and similar purposes is not an
infringement of copyright. Decompilation or 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 (IPC, Sec. 185.1, as amended by
R.A. 10372).
Factors to be considered in determining whether
use is fair or not:
1. Purpose and the character of the use;
2. Nature of the copyrighted work;
3. Amount and substantiality of the portions used;
and
4. Effect of the use upon the potential market of the
copyrighted work (IPC, Sec. 185.1).
Note: Concept of fair use only applies to
copyrighted work and not to non-copyrightable
material.
Quotations from a published work if they are
compatible with fair use and only to the extent
justified by the purpose, including quotations from
newspaper articles, and periodicals in the form of
press summaries are allowed provided that the
source and the name of the author, if appearing on
the work, are mentioned (Habana v. Robles, GR No.
131522, July 19, 1999).
Copyright Infringement
A person infringes a right protected under R.A.
10372 when one:
1. Directly commits an infringement;
2. Benefits from the infringing activity of another
person who commits an infringement if the
person benefiting has been given notice of the
infringing activity and has the right and ability to
control the activities of the other person;
3. With knowledge of infringing activity, induces,
causes or materially contributes to the infringing
conduct of another (IPC, Sec. 216, as amended
by Sec. 22 of RA 10372).
Infringement or Piracy
Any violation of the owners exclusive rights
conferred by law.
An appropriation of a copyrighted work by another
who is not authorized (Blacks Law Dictionary).
The doing by any person, without the consent of the
owner of the copyright, of anything the sole right to
do which is conferred by statute to the owner of the
copyright (Habana v. Robles, GR No. 131522, July
19, 1999; Columbia Pictures v. CA, G.R. No.
110318, August 28, 1996).
Copying alone is not what is prohibited. The copying
must produce an injurious effect ( Habana v. Robles,
GR No. 131522, July 19, 1999; Columbia Pictures v.
CA, G.R. No. 110318, August 28, 1996).
It is not necessary that the whole or even a large
portion of the work shall have been copied. If so
much is taken that the value of the original is
sensibly diminished, or the labors of the original
author are substantially and to an injurious extent
appropriated by another, that is sufficient in point of
law to constitute a piracy ( Habana v. Robles, GR
No. 131522, July 19, 1999; Columbia Pictures v.
CA, G.R. No. 110318, August 28, 1996).
It is the overall appearance or impression that
establishes infringement. Trivial or minor changes
do not necessarily negate infringement
(BOORSTYN, Copyright Law (1981), p. 293, cited in
AQUINO, Intellectual Property, supra).
A pirated copy is an infringement of the original and
it is no defense that the pirate in such cases did not
know whether or not he was infringing any copyright;
he at least knew that what he was copying was not
his and he copied at his peril ( Habana v. Robles,
GR No. 131522, July 19, 1999; Columbia Pictures v.
CA, G.R. No. 110318, August 28, 1996).
The fact that the work is unpublished shall not itself
bar a finding of fair use (IPC, 185.2).
Copyright in a work of architecture shall include: (I)
the right to control the erection of any building; (ii)
which reproduces the whole or a substantial part
thereof; (iii) shall not include the right to control the
reconstruction or rehabilitation in the same style as
the original of a building to which the copyright
relates (IPC, Sec. 186).
Plagiarism
It is the act of appropriating the literary composition
of another, or parts or passages of his writings, or
the ideas or language of the same and passing them
off as the product of ones mind.
The incorporation in ones own work of that of
another without the proper acknowledgement
thereof.
Related Rights or Neighboring Rights of
Copyright (IPC, Secs. 202-211)
Rights akin to but different from copyright, granted
by the law to:
1. Performers, who are:
a. Nationals of the Philippines;
b. Not nationals of the Philippines but whose
performances:
i. Take place in the Philippines;
ii. Are incorporated in sound
recordingsprotected under the Intellectual
Property Code; and
iii. Which has not been fixed in sound
recording but are carried by broadcast
qualifying for protection under the Code
(IPC, Secs. 203-207).
Scope of Performer's Rights
1. As regards their performance:
a. The broadcasting and other communication to
the public of their performances; and
b. The fixation of their unfixed performance.
2. The right of authorizing the direct or indirect
reproduction of their performances fixed in sound
recordings, in any manner or form;
3. The right of authorizing first public distribution
through sale or rental or other forms of transfer of
ownership;
4. The right of authorizing the commercial rental to
the public of the original even after distribution of
them by, or pursuant to the authorization by the
performer; and
5. The right of authorizing the making available to
public of their performance, in such a way that
members of the public may access them from a
place and time individually chosen by them.
Moral Rights of a Performer
As regards his live aural performances or
performances fixed in sound recording:
1. The right to be identified as the performer of his
performances, except, where the omission is
dictated by the use of the performance; and2.
The right to object to any distortion, mutilation or
other modification of his performance that will be
prejudicial to his reputation (IPC, Sec. 204.1).
Producers of Sound Recordings
The protection of sound recordings shall apply
to:
1. Sound recordings the producers of which are
nationals of the Philippines (IPC, Sec. 223.1);
2. Sound recordings that were first published in the
Philippines (IPC, Sec. 223.1); and
3. Sound recordings which are to be protected by
virtue of and in accordance with any international
convention or other international agreement to
 San Beda College of Law
2010 Centralized Bar Operations
which the Philippines is a party (IPC, Sec.
224.1).
Scope of Right
1. The right to authorize the direct or indirect
reproduction of their sound recordings;
2. The right of authorizing first public distribution
through sale or rental or other forms of transfer of
ownership; and
3. The right of authorizing the commercial rental to
the public of the original even after distribution of
them by, or pursuant to the authorization by the
producer.
Broadcasting Organizations
Scope of Right
Exclusive right to carry out, authorize or prevent any
of the following acts:
1. The rebroadcasting of their broadcasts;
2. The recording in any manner including the
making of films or the use of video tape, of their
broadcasts for the purpose of communication to
the public of television broadcasts of the same;
and
3. The use of such records for fresh transmissions
or for fresh recording (IPC, Sec. 211).
Application of Rights
1. Broadcasts of broadcasting organizations the
headquarters of which are situated in the
Philippines;
2. Broadcasts transmitted from transmitters situated
in the Philippines; and
3. Broadcasts by organizations which are to be
protected by virtue of and in accordance with any
international convention or other international
agreement to which the Philippines is a party
(IPC, Sec. 224).
Limitations on Rights
Secs. 203, 208 and 209 shall not apply where the
acts referred to are related to:
1. The use by a natural person exclusively for his
own personal purposes;
2. Using short excerpts from reporting current
events;
3. Use solely for the purpose of teaching or for
scientific research; and
4. Fair use (IPC, Sec. 212).
R EMEDIES FOR
I NFRINGEMENT
1. Judicial
a. Action for damages;
39
The copyright proprietor or his assigns or
heirs is entitled to such actual damages,
including legal costs and other expenses, as
he may have incurred due to the infringement
as well as the profits the infringer may have
made due to such infringement.
In proving profits the plaintiff shall be required
to prove sales only and the defendant shall be
required to prove every element of cost which
he claims.
Damages may be doubled if the infringer:
i. Circumvents effective technological
measures; or
ii. Having reasonable grounds to know that it
will induce, enable, facilitate or conceal the
infringement, remove or alter any electronic
rights management information from a copy
of a work, sound recording, or fixation of a
performance, or distribute, import for
distribution, broadcast, or communicate to
the public works or copies of works without
authority, knowing that electronic rights
management information has been removed
or altered without authority (IPC, Sec. 216.1
as amended by RA 10372).
The copyright owner may elect, at any time
before final judgment is rendered, to recover
instead of actual damages and profits, an
award of statutory damages for all
infringements involved in an action in a sum
equivalent to the filing fee of the infringement
action but not less than Fifty Thousand Pesos
(Php50,000.00) (IPC, Sec. 216.1 as amended
by RA 10372).This is also subject to double
damages.
b. Criminal Action
Any person infringing any copyright or aiding
or abetting such infringement shall be guilty of
a crime punishable by:
i. 1st Offense: Imprisonment of one (1) year to
three (3) years plus a fine from P50,000 to
P150,000.
ii. 2nd Offense: Imprisonment three (3) years
and one (1) day to six (6) years plus a fine
from P150,000 to P500,000.
iii. 3rd and Subsequent Offense: Imprisonment
of six (6) years and one (1) day to nine (9)
years plus a fine from P500,000 to
P1,500,000.
In all cases, subsidiary imprisonment in cases
of insolvency (IPC, Sec. 217.1).
 In determining the number of years of
imprisonment and the amount of fine, the
court shall consider the value of the infringing
materials that the defendant has produced or
manufactured and the damage that the
copyright owner has suffered by reason of the
infringement (IPC, Sec. 217.2).
Persons Criminally Liable for Infringement
Any person who at the time when copyright
subsists in a work has in his possession an
article which he knows, or ought to know, to
be an infringing copy of the work for the
purpose of:
i. Selling, letting for hire, or by way of trade
offering or exposing for sale, or hire, the
article;
ii. Distributing the article for purpose of trade,
or for any other purpose to an extent that
will prejudice the rights of the copyright
owner in the work; or
iii. Trade exhibit of the article in public, shall be
guilty of an offense and shall be liable on
conviction to imprisonment and fine as
above mentioned (IPC, Sec. 217.3).
c. Injunction
The court may also order the defendant to
desist from 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 (Sec. 216.1.a).
d. Court order for impounding or destruction of
infringing materials (Sec. 216.1.c & d).
e. Payment of moral and exemplary damages
even in case of acquittal by the accused (Sec.
216.1.e).
f. Seizure and impounding of infringing
materials for the purpose of evidence (Sec.
216.2.).
2. Administrative
a. Administrative action;
b. Cease and desist order;
c. Forfeiture of paraphernalia used in committing
the offense; and
d. Administrative fines.
Affidavit Evidence
It is an affidavit made before a notary public in
actions for infringement, reciting the facts required to
be stated under the IP Code (IPC, Sec. 218.1).
Required Statement of Facts:
1. Copyright subsisted in the work or other subject
matter at the time specified therein;
2. He or the person specified therein is the owner of
the copyright; and
3. The copy of the work or subject matter annexed
thereto is a true copy.
As prima facie proof, the affidavit shifts the burden
of proof to the defendant, to prove the ownership of
the copyrighted work.
Defendant must put in issue the question of whether
copyright subsists in the work or other subject
matter, otherwise, copyright shall be presumed to
subsist in the work or other subject matter to which
the action relates and the plaintiff shall be presumed
to be the owner of the copyright, if he claims to be
the owner of the copyright (IPC, Sec. 218.2).
If the defendant, in bad faith, puts in issue the
questions of whether copyright subsists in a work or
other subject matter to which the action relates, or
the ownership of copyright in such work or subject
matter, thereby occasioning unnecessary costs or
delay in the proceedings, the court may direct that
any costs to the defendant in respect of the action
shall not be allowed by him, and that any costs
occasioned by the defendant to other parties shall
be paid by him to such other parties (IPC, Sec.
218.2).
Presumption of Authorship
The natural person whose name is indicated on a
work in the usual manner as the author shall, in the
absence of proof to the contrary, be presumed to be
the author of the work. This is applicable even if the
name is a pseudonym, where the pseudonym
leaves no doubt as to the identity of the author (IPC,
Sec. 219.1).
The person or body corporate whose name appears
on an audio-visual work in the usual manner shall, in
the absence of proof to the contrary, be presumed to
be the maker of said work (IPC, Sec. 219.2).
F INAL P ROVISIONS
1. Parties
a. Plaintiff
i. Legal owner; or
ii. Beneficial owner; since they are "parties in
interest."
b. Defendant
i. Direct infringer; or
ii. Contributory infringer (IPC, Sec. 217).
A corner bookstore and magazine store that vends
pirated copies of a work is in fact violating the
 San Beda College of Law
2010 Centralized Bar Operations

copyright owner's right to exclusively distribute his
work. Such store would therefore be infringing. The
printer, who, though acting under instructions from
another, sets into motion the illegal reproduction of
protected material would, in fact, be infringing
copyright.
2. Prescriptive Period
Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed
by the law of a foreign country on a Philippine
national seeking protection of intellectual property
rights in that country, shall reciprocally be
enforceable upon nationals of said country, within
Philippine jurisdiction (IPC, Sec. 231).

Remedy Prescriptive Period Appeals

Four (4) years from the Appeals from decisions of regular courts shall be
Action for damages time the cause of action governed by the Rules of Court. Unless restrained
arose (IPC, Sec. 226) by a higher court, the judgment of the trial court shall
be executory even pending appeal under such terms
Subject to the general
and conditions as the court may prescribe (IPC,
Criminal action rules of prescription of
232.1).
crimes
Petition for
None Unless expressly provided in this Act or other
injunctive relief
statutes, appeals from decisions of administrative
Petition for the
officials shall be provided in the Regulations (IPC,
impounding and
None 232.2).
destruction of
infringing material

Equitable Principles to Govern Proceedings

In all inter partes proceedings, the equitable
principles of laches, estoppel, and acquiescence
where applicable, may be considered and applied.
(IPC, Sec. 230).

Reverse Reciprocity of Foreign Laws.

41
 Distinctions of Copyright, Patent and Trademark
Copyright
It is that system of legal protection
an author enjoys in the form of
expression of ideas (World
Intellectual Property Organization
[WIPO]).
It is an intangible, incorporeal right
granted by statute to the author or
originator of certain literary or
artistic productions, whereby he is
invested, for a limited period, with
the sole exclusive privilege of
multiplying copies of the same and
publishing and selling them
(Blacks Law Dictionary).
1.To stimulate artistic creativity for
the general public good; and
2.To promote the progress of
science and useful arts.
Originality and
Expression
See Table on Duration of Copyright
From the moment of creation
1. Duration/temporal The owner is limited by the terms of their property rights.
2. Territorial/geographical The owner is protected by the law of the country where the violation is committed.
3. For violations in another country, resort must be made to the law of the other country, subject to the principle of
reciprocity in Sec. 3.
Patent
Definition
An exclusive right acquired over an
invention, to sell, use and make the
same whether for commerce or
industry.
It refers to either the grant of rights,
or the instrument (sometimes called
letters patent) containing the grant,
giving an inventor a monopoly on the
inventors invention for a limited
period.
Purposes
1.Not only to reward the individual,
but to promote the advancement of
the arts and sciences;
2.To add to the sum of useful
knowledge; and
3.To encourage dissemination of
information concerning discoveries
and inventions.
Requirements
Any technical solution of a problem in
any field of human activity which is:
1. New or novel;
2.Inventive; and
3.Industrially applicable
(IPC, Sec. 21).
Term
Twenty (20) years from the filing date
of the application (IPC, Sec. 54).
How Created/ Acquired
First-to-file system
General Limitations
Trademark
Any visible sign capable of
distinguishing the goods of an
enterprise (trademark) or the
services of an enterprise (service
mark), and includes a stamped or
marked container of goods (IPC,
Sec. 121.1).
1.To indicate origin or ownership of
articles to which they are attached;
2.To guarantee that those articles
come up to a certain kind of
quality;
3.To advertise articles they
symbolize;
4.To assure the public that they are
producing genuine article; and
5.To protect the manufacturer
against substitution and sale of an
inferior and different article.
1. Upon application:
Must be registrable (IPC, Sec.
123.1):
a. Absolutely non-registrable -
(a-i) & (m) of Sec. 123.1
b. Qualifiedly registrable (j), (k),
(l) of Sec. 123.1; Doctrine of
secondary meaning (IPC, Sec.
123.2).
2.Within three (3) years from
application: Declaration and
evidence of actual use (IPC, Sec.
124.2).
Ten (10) years from the filing date of
the application, provided the
registrant shall file a declaration of
actual use within a year from the fifth
(5th) anniversary of registration date
(Sec. 145), and renewable for
another ten (10) years (IPC, Sec.
146).
Valid registration
(CATINDIG, Notes on Selected Commercial Laws: A Guide for Bar Reviewees)