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1. State Policies
Chapter II.
Sec. 2. Declaration of State Policy. - The State
recognizes that an effective intellectual and PATENTS
industrial property system is vital to the
development of domestic and creative activity,
1. What are Patentable
facilitates transfer of technology, attracts foreign
investments, and ensures market access for our
products. It shall protect and secure the exclusive 1.1. Inventions
rights of scientists, inventors, artists and other
gifted citizens to their intellectual property and Sec. 21. Patentable Inventions. - Any technical
creations, particularly when beneficial to the solution of a problem in any field of human
people, for such periods as provided in this Act. activity which is new, involves an inventive
The use of intellectual property bears a social step and is industrially applicable shall be
function. To this end, the State shall promote the patentable. It may be, or may relate to, a
diffusion of knowledge and information for the product, or process, or an improvement of any
promotion of national development and progress of the foregoing. (Sec. 7, RA 165a)
and the common good.
It is also the policy of the State to streamline Sec. 23. Novelty. - An invention shall not be
administrative procedures of registering patents, considered new if it forms part of a prior art.
trademarks and copyright, to liberalize the (Sec. 9, RA 165a)
registration on the transfer of technology, and to
enhance the enforcement of intellectual property Sec. 24. Prior Art. - Prior art shall consist of:
rights in the Philippines.
24.1. Everything which has been made
available to the public anywhere in the
world, before the filing date or the priority
2. Intellectual Property Rights date of the application claiming the
invention; and
Sec. 4.1 The term "intellectual property rights"
consists of: 24.2. The whole contents of an application
1. Copyright and Related Rights; for a patent, utility model, or industrial
2. Trademarks and Service Marks; design registration, published in accordance
3. Geographic Indications; with this Act, filed or effective in the
4. Industrial Designs; Philippines, with a filing or priority date that
5. Patents; is earlier than the filing or priority date of
6. Layout-Designs (Topographies) of the application: Provided, That the
Integrated Circuits; and application which has validly claimed the
7. Protection of Undisclosed Information filing date of an earlier application under
[TRIPS]. Section 31 of this Act, shall be prior art
with effect as of the filing date of such
Kho v. CA, et al., 379 SCRA 410 [2002] earlier application: Provided further, That
the applicant or the inventor identified in
Trademark, copyright and patents are different both applications are not one and the
intellectual property rights that cannot be same. (Sec. 9, RA 165a)
interchanged with one another. A trademark is any
visible sign capable of distinguishing the goods Sec. 26. Inventive Step. - An invention
(trademark) or services (service mark) of an involves an inventive step if, having regard to
enterprise and shall include a stamped or marked prior art, it is not obvious to a person skilled in
container of goods. the art at the time of the filing date or priority
date of the application claiming the invention.
In relation thereto, a trade name means the name
or designation identifying or distinguishing an Sec. 27. Industrial Applicability. - An invention
enterprise. Meanwhile, the scope of a copyright is that can be produced and used in any industry
confined to literary and artistic works which are shall be industrially applicable.
original intellectual creations in the literary and
artistic domain protected from the moment of their 1.2. Utility Model
creation. Patentable inventions, on the other hand,
refer to any technical solution of a problem in any Sec. 109.1 (a) An invention qualifies for
field of human activity which is new, involves an registration as a utility model if it is new and
inventive step and is industrially applicable. industrially applicable.
(b) Section 21, "Patentable Inventions", shall
3. Reverse Reciprocity apply except the reference to inventive step as
a condition of protection.
36.1. The application shall contain one (1) or appeal to the Director of Patents from any
more claims which shall define the matter for final action by the examiner. (Sec. 16, RA
which protection is sought. Each claim shall be 165a)
clear and concise, and shall be supported by
the description. 6.2. Classification and Search
36.2. The Regulations shall prescribe the Sec. 43. Classification and Search. - An
manner of the presentation of claims. application that has complied with the formal
requirement shall be classified and a search
Sec. 37. The Abstract. - The abstract shall consist conducted to determine the prior art.
of a concise summary of the disclosure of the
invention as contained in the description, claims 6.3. Publication
and drawings in preferably not more than one
hundred fifty (150) words. It must be drafted in a Sec. 44. Publication of Patent Application. -
way which allows the clear understanding of the
technical problem, the gist of the solution of that 44.1. The patent application shall be
problem through the invention, and the principal published in the IPO Gazette together with
use or uses of the invention. The abstract shall a search document established by or on
merely serve for technical information. behalf of the Office citing any documents
that reflect prior art, after the expiration of
6. Procedure for Grant of Patent eighteen (18) months from the filing date
or priority date.
6.1. Filing Date
44.3. The Director General, subject to the
Sec. 40. Filing Date Requirements. - approval of the Secretary of Trade and
Industry, may prohibit or restrict the
40.1. The filing date of a patent application publication of an application, if in his
shall be the date of receipt by the Office of opinion, to do so would be prejudicial to the
at least the following elements: national security and interests of the
Republic of the Philippines.
(a) An express or implicit indication
that a Philippine patent is sought; 6.4. Inspection
(b) Information identifying the
applicant; and Sec. 45. Confidentiality Before Publication. - A
(c) Description of the invention and patent application, which has not yet been
one (1) or more claims in Filipino published, and all related documents, shall not
or English. be made available for inspection without the
consent of the applicant.
40.2. If any of these elements is not
submitted within the period set by the Sec. 44.2. After publication of a patent
Regulations, the application shall be application, any interested party may inspect
considered withdrawn. the application documents filed with the Office.
Sec. 41. According a Filing Date. - The Office Sec. 47. Observation by Third Parties. -
shall examine whether the patent application Following the publication of the patent
satisfies the requirements for the grant of date application, any person may present
of filing as provided in Section 40 hereof. If the observations in writing concerning the
date of filing cannot be accorded, the applicant patentability of the invention. Such
shall be given an opportunity to correct the observations shall be communicated to the
deficiencies in accordance with the applicant who may comment on them. The
implementing Regulations. If the application Office shall acknowledge and put such
does not contain all the elements indicated in observations and comment in the file of the
Section 40, the filing date should be that date application to which it relates.
when all the elements are received. If the
deficiencies are not remedied within the 6.5. Request for Substantive Examination
prescribed time limit, the application shall be
considered withdrawn. Sec. 48. Request for Substantive Examination.
1. Formality Examination -
during examination: Provided, That such 71.2. Patent owners shall also have the
amendment shall not include new matter right to assign, or transfer by succession
outside the scope of the disclosure contained in the patent, and to conclude licensing
the application as filed. contracts for the same. (Sec. 37, RA 165a)
6.6. Grant or Refusal of Application Pearl and Dean, Inc v. Shoemart Inc (2003)
Sec. 50. Grant of Patent. - To be able to effectively and legally preclude others
from copying and profiting from the invention, a
50.1. If the application meets the patent is a primordial requirement. No patent, no
requirements of this Act, the Office shall protection. The ultimate goal of a patent system is
grant the patent: Provided, That all the to bring new designs and technologies into the
fees are paid on time. public domain through disclosure. Ideas, once
50.2. If the required fees for grant and disclosed to the public without the protection of a
printing are not paid in due time, the valid patent, are subject to appropriation without
application shall be deemed to be significant restraint.
withdrawn.
8. Term
50.3. A patent shall take effect on the date
of the publication of the grant of the patent Sec. 54. Term of Patent. - The term of a patent
in the IPO Gazette. (Sec. 18, RA 165a) shall be twenty (20) years from the filing date of
the application. (Sec. 21, RA 165a)
Sec. 51. Refusal of the Application. -
Sec. 109.3. A utility model registration shall
51.1. The final order of refusal of the expire, without any possibility of renewal, at the
examiner to grant the patent shall be end of the seventh year after the date of the filing
appealable to the Director in accordance of the application.
with this Act.
Sec. 118. The Term of Industrial Design or
51.2. The Regulations shall provide for the Layout-Design Registration. - 118.1. The
procedure by which an appeal from the registration of an industrial design shall be for a
order of refusal from the Director shall be period of five (5) years from the filing date of the
undertaken. application.
6.7. Publication of the Grant of Patent 118.2. The registration of an industrial design
may be renewed for not more than two (2)
Sec. 52. Publication Upon Grant of Patent. - consecutive periods of five (5) years each, by
paying the renewal fee. xxx xxx xxx
52.1. The grant of the patent together with
other related information shall be published 118.5. Registration of a layout-design shall be
in the IPO Gazette within the time valid for a period often (10) years, without
prescribed by the Regulations. renewal, and such validity to be counted from
the date of commencement of the protection
52.2. Any interested party may inspect the accorded to the layout-design. The protection
complete description, claims, and drawings of a layout-design under this Act shall
of the patent on file with the Office. (Sec. commence:
18, RA 165a)
a) on the date of the first commercial
7. Rights Conferred by Patent exploitation, anywhere in the world, of
the layout-design by or with the
Sec. 71. Rights Conferred by Patent. - consent of the right holder: Provided,
That an application for registration is
71.1. filed with the Intellectual Property
A patent shall confer on its owner the following Office within two (2) years from such
exclusive rights: date of first commercial exploitation;
or
(a) Where the subject matter of a patent b) on the filing date accorded to the
is a product, to restrain, prohibit and application for the registration of the
prevent any unauthorized person or layout-design if the layout-design has
entity from making, using, offering for not been previously exploited
sale, selling or importing that commercially anywhere in the world.
product;
(b) Where the subject matter of a patent 9. Limitations on Rights of Patentees
is a process, to restrain, prevent or
prohibit any unauthorized person or Sec. 72. Limitations of Patent Rights. - The owner
entity from using the process, and of a patent has no right to prevent third parties
from manufacturing, dealing in, using, from performing, without his authorization, the acts
selling or offering for sale, or referred to in Section 71 hereof in the following
importing any product obtained circumstances:
directly or indirectly from such
process. 72.1. Using a patented product which has been
put on the market in the Philippines by the
owner of the product, or with his express
74.1. A Government agency or third person 76.5. The court may, in its discretion,
authorized by the Government may exploit the order that the infringing goods, materials
invention even without agreement of the patent and implements predominantly used in the
owner where: infringement be disposed of outside the
channels of commerce or destroyed,
(a) the public interest, in particular, without compensation.
national security, nutrition, health or
the development of other sectors, as 76.6. Anyone who actively induces the
determined by the appropriate agency infringement of a patent or provides the
of the government, so requires; or infringer with a component of a patented
(b) A judicial or administrative body has product or of a product produced because
determined that the manner of of a patented process knowing it to be
exploitation, by the owner of the especially adopted for infringing the
patent or his licensee, is anti- patented invention and not suitable for
competitive. substantial non-infringing use shall be
liable as a contributory infringer and shall
74.2. The use by the Government, or third be jointly and severally liable with the
person authorized by the Government shall be infringer. (Sec. 42, RA 165a)
subject, mutatis mutandis, to the conditions set
forth in Sections 95 to 97 and 100 to 102.
(Sec. 41, RA 165a)
Chamber of Commerce (ICC) shall apply and development programs in connection with new
the venue of arbitration shall be the Philippines products, processes or equipment;
or any neutral country; and
87.13. Those which prevent the licensee from
88.4. The Philippine taxes on all payments adapting the imported technology to local
relating to the technology transfer arrangement conditions, or introducing innovation to it, as
shall be borne by the licensor. long as it does not impair the quality standards
prescribed by the licensor;
Sec. 87. Prohibited Clauses. - Except in cases
under Section 91, the following provisions shall be 87.14. Those which exempt the licensor for
deemed prima facie to have an adverse on liability for non-fulfillment of his responsibilities
competition and trade: under the technology transfer arrangement
and/or liability arising from third party suits
87.1. Those which impose upon the licensee brought about by the use of the licensed
the obligation to acquire from a specific source product or the licensed technology; and
capital goods, intermediate products, raw
materials, and other technologies, or of 87.15. Other clauses with equivalent effects.
permanently employing personnel indicated by (Sec. 33-C[2], RA 165a)
the licensor;
15. Compulsory Licensing
87.2. Those pursuant to which the licensor
reserves the right to fix the sale or resale Sec. 93. Grounds for Compulsory Licensing. - The
prices of the products manufactured on the Director of Legal Affairs may grant a license to
basis of the license; exploit a patented invention, even without the
agreement of the patent owner, in favor of any
87.3. Those that contain restrictions regarding person who has shown his capability to exploit the
the volume and structure of production; invention, under any of the following
circumstances:
87.4. Those that prohibit the use of
competitive technologies in a non-exclusive 93.1. National emergency or other
technology transfer agreement; circumstances of extreme urgency;
87.5. Those that establish a full or partial 93.2. Where the public interest, in particular,
purchase option in favor of the licensor; national security, nutrition, health or the
development of other vital sectors of the
87.6. Those that obligate the licensee to national economy as determined by the
transfer for free to the licensor the inventions appropriate agency of the Government, so
or improvements that may be obtained through requires; or
the use of the licensed technology;
93.3. Where a judicial or administrative body
87.7. Those that require payment of royalties has determined that the manner of exploitation
to the owners of patents for patents which are by the owner of the patent or his licensee is
not used; anti-competitive; or
87.8. Those that prohibit the licensee to export 93.4. In case of public non-commercial use of
the licensed product unless justified for the the patent by the patentee, without satisfactory
protection of the legitimate interest of the reason;
licensor such as exports to countries where
exclusive licenses to manufacture and/or 93.5. If the patented invention is not being
distribute the licensed product(s) have already worked in the Philippines on a commercial
been granted; scale, although capable of being worked,
without satisfactory reason: Provided, That the
87.9. Those which restrict the use of the importation of the patented article shall
technology supplied after the expiration of the constitute working or using the patent. (Secs.
technology transfer arrangement, except in 34, 34-A, and 34-B, RA 165a)
cases of early termination of the technology
transfer arrangement due to reason(s) Sec. 97. Compulsory License Based on
attributable to the licensee; Interdependence of Patents. - If the invention
protected by a patent, hereafter referred to as the
87.10. Those which require payments for "second patent," within the country cannot be
patents and other industrial property rights worked without infringing another patent, hereafter
after their expiration, termination referred to as the "first patent," granted on a prior
arrangement; application or benefiting from an earlier priority, a
compulsory license may be granted to the owner of
87.11. Those which require that the the second patent to the extent necessary for the
technology recipient shall not contest the working of his invention, subject to the following
validity of any of the patents of the technology conditions:
supplier;
97.1. The invention claimed in the second
87.12. Those which restrict the research and patent involves an important technical advance
development activities of the licensee designed of considerable economic significance in
to absorb and adapt the transferred technology relation to the first patent;
to local conditions or to initiate research and
97.2. The owner of the first patent shall be and complete for it to be carried out by
entitled to a cross-license on reasonable terms any person skilled in the art; or
to use the invention claimed in the second (c) That the patent is contrary to public
patent; order or morality.
97.3. The use authorized in respect of the first 61.2. Where the grounds for cancellation relate
patent shall be non-assignable except with the to some of the claims or parts of the claim,
assignment of the second patent; and cancellation may be effected to such extent
only. (Secs. 28 and 29, RA 165a)
97.4. The terms and conditions of Sections 95,
96 and 98 to 100 of this Act. (Sec. 34-C, RA Sec. 62. Requirement of the Petition. - The petition
165a) for cancellation shall be in writing, verified by the
petitioner or by any person in his behalf who knows
16. Assignment and Transfer of Patent the facts, specify the grounds upon which it is
based, include a statement of the facts to be relied
Sec. 104. Assignment of Inventions. - An upon, and filed with the Office. Copies of printed
assignment may be of the entire right, title or publications or of patents of other countries, and
interest in and to the patent and the invention other supporting documents mentioned in the
covered thereby, or of an undivided share of the petition shall be attached thereto, together with the
entire patent and invention, in which event the translation thereof in English, if not in English
parties become joint owners thereof. An language. (Sec. 30, RA 165)
assignment may be limited to a specified territory.
(Sec. 51, RA 165) Sec. 63. Notice of Hearing. - Upon filing of a
petition for cancellation, the Director of Legal
Sec. 105. Form of Assignment. - The assignment Affairs shall forthwith serve notice of the filing
must be in writing, acknowledged before a notary thereof upon the patentee and all persons having
public or other officer authorized to administer oath grants or licenses, or any other right, title or
or perform notarial acts, and certified under the interest in and to the patent and the invention
hand and official seal of the notary or such other covered thereby, as appears of record in the Office,
officer. (Sec. 52, RA 165) and of notice of the date of hearing thereon on
such persons and the petitioner. Notice of the filing
Sec. 106. Recording. - of the petition shall be published in the IPO
Gazette. (Sec. 31, RA 165a)
106.1. The Office shall record assignments,
licenses and other instruments relating to the Sec. 66. Effect of Cancellation of Patent or Claim. -
transmission of any right, title or interest in The rights conferred by the patent or any specified
and to inventions, and patents or application claim or claims cancelled shall terminate. Notice of
for patents or inventions to which they relate, the cancellation shall be published in the IPO
which are presented in due form to the Office Gazette. Unless restrained by the Director General,
for registration, in books and records kept for the decision or order to cancel by Director of Legal
the purpose. The original documents together Affairs shall be immediately executory even
with a signed duplicate thereof shall be filed, pending appeal. (Sec. 32, RA 165a)
and the contents thereof should be kept
confidential. If the original is not available, an
authenticated copy thereof in duplicate may be Chapter III.
filed. Upon recording, the Office shall retain the
duplicate, return the original or the INDUSTRIAL DESIGNSAND LAY-OUT
authenticated copy to the party who filed the DESIGNS (TOPOGRAPHIES) OF
same and notice of the recording shall be
published in the IPO Gazette.
INTEGRATED CIRCUITS
Sec. 119.4. Rights Conferred to the Owner of a (a) If the subject matter of the industrial
Layout-Design Registration. - The owner of a design is not registerable within the
layout-design registration shall enjoy the following terms of Sections 112 and 113;
rights: (b) If the subject matter is not new; or
(c) If the subject matter of the industrial
(1) to reproduce, whether by incorporation in design extends beyond the content of
an integrated circuit or otherwise, the the application as originally filed.
registered layout-design in its entirety or
any part thereof, except the act of 120.2. Where the grounds for cancellation
reproducing any part that does not relate to a part of the industrial design,
comply with the requirement of cancellation may be effected to such extent
originality; and only. The restriction may be effected in the
(2) to sell or otherwise distribute for form of an alteration of the effected features of
commercial purposes the registered the design.
layout design, an article or an integrated
circuit in which the registered layout- 120.3. Grounds for Cancellation of Layout-
design is incorporated. Design of Integrated Circuits.- Any interested
person may petition that the registration of a
Sec. 119.5. Limitations of Layout Rights. - The layout-design be canceled on the ground that:
owner of a layout design has no right to prevent
third parties from reproducing, selling or otherwise (a) the layout-design is not protectable
distributing for commercial purposes the registered under this Act;
layout-design in the following circumstances: (b) the right holder is not entitled to
protection under this Act; or
(1) Reproduction of the registered layout- (c) where the application for registration
design for private purposes or for the of the layout-design, was not filed
sole purpose of evaluation, analysis, within two (2) years from its first
research or teaching; commercial exploitation anywhere in
(3) Where the act is performed in respect of a the world.
layout-design created on the basis of such
analysis or evaluation and which is itself Where the grounds for cancellation are
original in the meaning as provided established with respect only to a part of the
herein; layout-design, only the corresponding part of
(4) Where the act is performed in respect of a the registration shall be canceled.
registered lay-out-design, or in respect of Any canceled layout-design registration or part
an integrated circuit in which such a thereof, shall be regarded as null and void from
layout-design is incorporated, that has the beginning and may be expunged from the
been put on the market by or with the records of the Intellectual Property Office.
consent of the right holder; Reference to all canceled layout-design
(5) In respect of an integrated circuit where registration shall be published in the IPO
the person performing or ordering such Gazette.
an act did not know and had no
reasonable ground to know when
acquiring the integrated circuit or the
article incorporating such an integrated Chapter IV.
circuit, that it incorporated an unlawfully TRADEMARKS
reproduced layout-design: Provided,
however, That after the time that such
person has received sufficient notice that 1. Marks and Names
the layout-design was unlawfully
reproduced, that person may perform any Sec. 121. Definitions. - As used in Part III, the
of the said acts only with respect to the following terms have the following meanings:
stock on hand or ordered before such
time and shall be liable to pay to the right 121.1. "Mark" means any visible sign capable
holder a sum equivalent to at least 5% of of distinguishing the goods (trademark) or
net sales or such other reasonable royalty services (service mark) of an enterprise and
as would be payable under a freely shall include a stamped or marked container of
negotiated license in respect of such goods; (Sec. 38, RA 166a)
layout-design; or
(6) Where the act is performed in respect of 121.2. "Collective mark" means any visible
an identical layout-design which is original sign designated as such in the application for
and has been created independently by a registration and capable of distinguishing the
third party. origin or any other common characteristic,
including the quality of goods or services of
1.2. Grounds for Cancellation of Registration different enterprises which use the sign under
the control of the registered owner of the Sec. 123.1. A mark cannot be registered if it:
collective mark; (Sec. 40, RA 166a)
(a) Consists of immoral, deceptive or
121.3. "Trade name" means the name or scandalous matter, or matter which may
designation identifying or distinguishing an disparage or falsely suggest a connection
enterprise; (Sec. 38, RA 166a) with persons, living or dead, institutions,
beliefs, or national symbols, or bring them
1.1. Product name and container not proper into contempt or disrepute;
subjects of copyright and patent registration (b) Consists of the flag or coat of arms or
other insignia of the Philippines or any of
Kho v. CA, et al., 379 SCRA 410 [2002] its political subdivisions, or of any foreign
nation, or any simulation thereof;
The name and container of a beauty cream product (c) Consists of a name, portrait or signature
are proper subjects of a trademark inasmuch as identifying a particular living individual
the same falls squarely within its definition. In except by his written consent, or the
order to be entitled to exclusively use the same in name, signature, or portrait of a deceased
the sale of the beauty cream product, the user President of the Philippines, during the life
must sufficiently prove that she registered or used of his widow, if any, except by written
it before anybody else did. The petitioners consent of the widow;
copyright and patent registration of the name and (d) Is identical with a registered mark
container would not guarantee her right to the belonging to a different proprietor or a
exclusive use of the same for the reason that they mark with an earlier filing or priority date,
are not appropriate subjects of the said intellectual in respect of:
rights. Consequently, a preliminary injunction order 1) The same goods or services, or
cannot be issued for the reason that the petitioner 2) Closely related goods or services,
has not proven that she has a clear right over the or
said name and container to the exclusion of others, 3) If it nearly resembles such a mark
not having proven that she has registered a as to be likely to deceive or cause
trademark thereto or used the same before anyone confusion;
did. (e) Is identical with, or confusingly similar to,
or constitutes a translation of a mark
2. Acquisition of Ownership which is considered by the competent
authority of the Philippines to be well-
Sec. 122. How Marks are Acquired. - The rights in known internationally and in the
a mark shall be acquired through registration made Philippines, whether or not it is registered
validly in accordance with the provisions of this here, as being already the mark of a
law. (Sec. 2-A, RA 166a) person other than the applicant for
registration, and used for identical or
Sec. 165. Trade Names or Business Names. - similar goods or services: Provided, That
in determining whether a mark is well-
165.1. A name or designation may not be used known, account shall be taken of the
as a trade name if by its nature or the use to knowledge of the relevant sector of the
which such name or designation may be put, it public, rather than of the public at large,
is contrary to public order or morals and if, in including knowledge in the Philippines
particular, it is liable to deceive trade circles or which has been obtained as a result of the
the public as to the nature of the enterprise promotion of the mark;
identified by that name. (f) Is identical with, or confusingly similar to,
or constitutes a translation of a mark
165.2. (a) Notwithstanding any laws or considered well-known in accordance with
regulations providing for any obligation to the preceding paragraph, which is
register trade names, such names shall be registered in the Philippines with respect
protected, even prior to or without registration, to goods or services which are not similar
against any unlawful act committed by third to those with respect to which registration
parties. is applied for: Provided, That use of the
(b) In particular, any subsequent use of the mark in relation to those goods or services
trade name by a third party, whether as a would indicate a connection between
trade name or a mark or collective mark, or those goods or services, and the owner of
any such use of a similar trade name or mark, the registered mark: Provided further,
likely to mislead the public, shall be deemed That the interests of the owner of the
unlawful. registered mark are likely to be damaged
by such use;
(g) Is likely to mislead the public, particularly
3. Use of Mark as a Requirement as to the nature, quality, characteristics or
geographical origin of the goods or
Sec. 124.2. The applicant or the registrant shall services;
file a declaration of actual use of the mark with (h) Consists exclusively of signs that are
evidence to that effect, as prescribed by the generic for the goods or services that they
Regulations within three (3) years from the filing seek to identify;
date of the application. Otherwise, the application (i) Consists exclusively of signs or of
shall be refused or the mark shall be removed from indications that have become customary
the Register by the Director. or usual to designate the goods or
services in everyday language or in bona
4. Non-Registrable Marks fide and established trade practice;
5. Tests to Determine Confusing Similarity This Court, xxx, has relied on the dominancy test
rather than the holistic test. The dominancy test
Between Marks
considers the dominant features in the competing
marks in determining whether they are confusingly
5.1. Colorable imitation similar. Under the dominancy test, courts give
greater weight to the similarity of the appearance
Societe des Produits Nestl, S.A. v. CA, 356 of the product arising from the adoption of the
SCRA 207 [2001] dominant features of the registered mark,
disregarding minor differences. Courts will
Colorable imitation denotes such a close or consider more the aural and visual impressions
ingenious imitation as to be calculated to deceive created by the marks in the public mind, giving
ordinary persons, or such a resemblance to the little weight to factors like prices, quality, sales
original as to deceive an ordinary purchaser giving outlets and market segments.
such attention as a purchaser usually gives, as to
cause him to purchase the one supposing it to be McDonalds Corp v MACJOY Fastfood Corp
the other. In ascertaining whether one mark is (2007)
confusingly similar to or is a colorable imitation of
another, no set rules can be deduced. Each case Applying the dominancy test to the instant case,
must be decided on its own merits. The the Court finds that herein petitioners
complexities attendant to an accurate assessment MCDONALDS and respondents MACJOY marks
of likelihood of confusion require that the entire are confusingly similar with each other such that an
panoply of elements constituting the relevant ordinary purchaser can conclude an association or
factual landscape be comprehensively examined. relation between the marks.
To begin with, both marks use the corporate M
design logo and the prefixes Mc and/or Mac as
5.2. Holistic test dominant features. The first letter M in both
marks puts emphasis on the prefixes Mc and/or
Del Monte Corporation, et al. v. CA, 181 SCRA Mac by the similar way in which they are depicted
410 [1990] i.e. in an arch-like, capitalized and stylized manner.
For sure, it is the prefix Mc, an abbreviation of
To determine whether a trademark has been Mac, which visually and aurally catches the
infringed, we must consider the mark as a whole attention of the consuming public. Verily, the word
and not as dissected. If the buyer is deceived, it is MACJOY attracts attention the same way as did
attributable to the marks as a totality, not usually McDonalds, MacFries, McSpaghetti, McDo,
to any part of it. The court therefore should be Big Mac and the rest of the MCDONALDS marks
guided by its first impression, for the buyer acts which all use the prefixes Mc and/or Mac.
quickly and is governed by a casual glance, the Besides and most importantly, both trademarks are
value of which may be dissipated as soon as the used in the sale of fastfood products. Indisputably,
court assumed to analyze carefully the respective the respondents trademark application for the
features of the mark. MACJOY & DEVICE trademark covers goods under
Classes 29 and 30 of the International
Classification of Goods, namely, fried chicken,
5.3. Test of dominancy chicken barbeque, burgers, fries, spaghetti, etc.
Likewise, the petitioners trademark registration for
Asia Brewery v. CA and San Miguel, 224 SCRA the MCDONALDS marks in the Philippines covers
437 [1993] goods which are similar if not identical to those
Infringement is determined by the test of covered by the respondents application.
dominancy rather than by differences or
variations in the details of one trademark and of
another. Similarity in size, form and color, while 6. Well-known Marks
relevant, is not conclusive. If the competing
trademark contains the main or essential or Sec. 123.1. (e) Is identical with, or confusingly
similar to, or constitutes a translation of a mark
section to sue for acts committed prior to the 133.1. Once the application meets the filing
date on which his mark was registered in this requirements of Section 127, the Office shall
country: Provided, That, notwithstanding the examine whether the application meets the
foregoing, the owner of a well-known mark as requirements of Section 124 and the mark as
defined in Section 123.1(e) of this Act, that is defined in Section 121 is registrable under
not registered in the Philippines, may, against Section 123.
an identical or confusingly similar mark, oppose
its registration, or petition the cancellation of 133.2. Where the Office finds that the
its registration or sue for unfair competition, conditions referred to in Subsection 133.1 are
without prejudice to availing himself of other fulfilled, it shall, upon payment of the
remedies provided for under the law. prescribed fee. Forthwith cause the application,
as filed, to be published in the prescribed
131.4. In like manner and subject to the same manner.
conditions and requirements, the right provided
in this section may be based upon a 133.3. If after the examination, the applicant
subsequent regularly filed application in the is not entitled to registration for any reason,
same foreign country: Provided, That any the Office shall advise the applicant thereof and
foreign application filed prior to such the reasons therefor. The applicant shall have a
subsequent application has been withdrawn, period of four (4) months in which to reply or
abandoned, or otherwise disposed of, without amend his application, which shall then be re-
having been laid open to public inspection and examined. The Regulations shall determine the
without leaving any rights outstanding, and has procedure for the re-examination or revival of
not served, nor thereafter shall serve, as a an application as well as the appeal to the
basis for claiming a right of priority. (Sec. 37, Director of Trademarks from any final action by
RA 166a) the Examiner.
imitation to labels, signs, prints, packages, 157.2. In regard to counterfeit goods, the
wrappers, receptacles or advertisements simple removal of the trademark affixed shall
intended to be used in commerce upon or in not be sufficient other than in exceptional cases
connection with the sale, offering for sale, which shall be determined by the Regulations,
distribution, or advertising of goods or services to permit the release of the goods into the
on or in connection with which such use is channels of commerce. (Sec. 24, RA 166a).
likely to cause confusion, or to cause mistake,
or to deceive, shall be liable in a civil action for Sec. 170. Penalties. - Independent of the civil and
infringement by the registrant for the remedies administrative sanctions imposed by law, a criminal
hereinafter set forth: Provided, That the penalty of imprisonment from two (2) years to five
infringement takes place at the moment any of (5) years and a fine ranging from Fifty thousand
the acts stated in Subsection pesos (P50,000) to Two hundred thousand pesos
(P200,000), shall be imposed on any person who is
155.1. or this subsection are committed found guilty of committing any of the acts
regardless of whether there is actual sale of mentioned in Section 155, Section 168 and
goods or services using the infringing material. Subsection 169.1. (Arts. 188 and 189, Revised
(Sec. 22, RA No 166a) Penal Code)
Sec. 156. Actions, and Damages and Injunction Sec. 159. Limitations to Actions for Infringement. -
for Infringement. - Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed
156.1. The owner of a registered mark may under this Act shall be limited as follows:
recover damages from any person who
infringes his rights, and the measure of the 159.1. Notwithstanding the provisions of
damages suffered shall be either the Section 155 hereof, a registered mark shall
reasonable profit which the complaining party have no effect against any person who, in good
would have made, had the defendant not faith, before the filing date or the priority date,
infringed his rights, or the profit which the was using the mark for the purposes of his
defendant actually made out of the business or enterprise: Provided, That his right
infringement, or in the event such measure of may only be transferred or assigned together
damages cannot be readily ascertained with with his enterprise or business or with that part
reasonable certainty, then the court may award of his enterprise or business in which the mark
as damages a reasonable percentage based is used.
upon the amount of gross sales of the
defendant or the value of the services in 159.2. Where an infringer who is engaged
connection with which the mark or trade name solely in the business of printing the mark or
was used in the infringement of the rights of other infringing materials for others is an
the complaining party. (Sec. 23, First Par., RA innocent infringer, the owner of the right
166a) infringed shall be entitled as against such
infringer only to an injunction against future
156.2. On application of the complainant, the printing.
court may impound during the pendency of the
action, sales invoices and other documents 159.3. Where the infringement complained of
evidencing sales. is contained in or is part of paid advertisement
156.3. In cases where actual intent to mislead in a newspaper, magazine, or other similar
the public or to defraud the complainant is periodical or in an electronic communication,
shown, in the discretion of the court, the the remedies of the owner of the right infringed
damages may be doubled. (Sec. 23, First Par., as against the publisher or distributor of such
RA 166) newspaper, magazine, or other similar
periodical or electronic communication shall be
156.4. The complainant, upon proper showing, limited to an injunction against the
may also be granted injunction. (Sec. 23, presentation of such advertising matter in
Second Par., RA 166a) future issues of such newspapers, magazines,
or other similar periodicals or in future
Sec. 157. Power of Court to Order Infringing transmissions of such electronic
Material Destroyed. - communications. The limitations of this
subparagraph shall apply only to innocent
157.1. In any action arising under this Act, in infringers: Provided, That such injunctive relief
which a violation of any right of the owner of shall not be available to the owner of the right
the registered mark is established, the court infringed with respect to an issue of a
may order that goods found to be infringing be, newspaper, magazine, or other similar
without compensation of any sort, disposed of periodical or an electronic communication
outside the channels of commerce in such a containing infringing matter where restraining
manner as to avoid any harm caused to the the dissemination of such infringing matter in
right holder, or destroyed; and all labels, signs, any particular issue of such periodical or in an
prints, packages, wrappers, receptacles and electronic communication would delay the
advertisements in the possession of the delivery of such issue or transmission of such
defendant, bearing the registered mark or electronic communication is customarily
trade name or any reproduction, counterfeit, conducted in accordance with the sound
copy or colorable imitation thereof, all plates, business practice, and not due to any method
molds, matrices and other means of making or device adopted to evade this section or to
the same, shall be delivered up and destroyed. prevent or delay the issuance of an injunction
or restraining order with respect to such
infringing matter.
1. Basic Principles
Del Monte Corporation, et al. v. CA, 181 SCRA
410 [1990] 1. Works are protected by the sole fact of their
creation.
The following are the distinctions between Sec. 172.2. Works are protected by the sole
infringement of trademark and unfair competition: fact of their creation, irrespective of their mode
1. Infringement of trademark is the or form of expression, as well as of their
unauthorized use of a trademark, whereas content, quality and purpose. (Sec. 2, PD No.
unfair competition is the passing off of 49a)
ones goods as those of another.
2. In infringement of trademark, fraudulent 2. Protection extends only to the expression of an
intent is unnecessary, whereas in unfair idea, not the idea itself.
competition fraudulent intent is essential.
3. In infringement of trademark the prior Sec. 175. Unprotected Subject Matter. -
registration of the trademark is a Notwithstanding the provisions of Sections 172 and
prerequisite to the action, whereas in unfair 173, no protection shall extend, under this law, to
competition registration is not necessary. any idea, procedure, system method or operation,
concept, principle, discovery or mere data as such,
even if they are expressed, explained, illustrated or
Mighty Corporation v. E. & J. Gallo Winery, embodied in a work; xxx xxx xxx
434 SCRA 473 [2004]
2. Definition
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 Sec. 177. Copy or Economic Rights. - Subject to
exclusive right derived from the trademark the provisions of Chapter VIII, copyright or
adoption and registration by the person whose economic rights shall consist of the exclusive right
goods or business is first associated with it. Hence, to carry out, authorize or prevent the following
even if one fails to establish his exclusive property acts:
right to a trademark, he may still obtain relief on
the ground of his competitors unfairness or fraud. 177.1. Reproduction of the work or substantial
Conduct constitutes unfair competition if the effect portion of the work;
is to pass off on the public the goods of one man as
the goods of another. 177.2. Dramatization, translation, adaptation,
abridgment, arrangement or other
transformation of the work;
McDonalds Corporation v. L.C. Big Mak
Burger, Inc., et al., 437 SCRA 10 [2004] 177.3. The first public distribution of the
original and each copy of the work by sale or
The elements of an action for unfair competition other forms of transfer of ownership;
are: [1] confusing similarity in the general
appearance of the goods, and [2] intent to deceive 177.4. Rental of the original or a copy of an
the public and defraud a competitor. The confusing audiovisual or cinematographic work, a work
similarity may or may not result from similarity in embodied in a sound recording, a computer
the marks, but may result from other external program, a compilation of data and other
factors in the packaging or presentation of the materials or a musical work in graphic form,
goods. The intent to deceive and defraud may be irrespective of the ownership of the original or
inferred from the similarity in appearance of the the copy which is the subject of the rental;
goods as offered for sale to the public. Actual
fraudulent intent need not be shown. 177.5. Public display of the original or a copy
of the work;
Caterpillar, Inc v. Samson (2006)
177.6. Public performance of the work; and
An action for unfair competition is based on the
proposition that no dealer in merchandise should 177.7. Other communication to the public of
be allowed to dress his goods in simulation of the the work (Sec. 5, PD No. 49a)
goods of another dealer, so that purchasers
desiring to buy the goods of the latter would be 3. Copyrightable Works
induced to buy the goods of the former. The most
usual devices employed in committing this crime Sec. 172. Literary and Artistic Works. -
are the simulation of labels and the reproduction of
form, color and general appearance of the package 172.1. Literary and artistic works, hereinafter
used by the pioneer manufacturer or dealer. referred to as "works", are original intellectual
creations in the literary and artistic domain Sec. 174. Published Edition of Work. - In addition
protected from the moment of their creation to the right to publish granted by the author, his
and shall include in particular: heirs or assigns, the publisher shall have a copy
right consisting merely of the right of reproduction
(a) Books, pamphlets, articles and other of the typographical arrangement of the published
writings; edition of the work.
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses,
dissertations prepared for oral 3.1. Format of a show not copyrightable
delivery, whether or not reduced in
writing or other material form; Joaquin, Jr., et al. v. Drilon, et al., 302 SCRA
(d) Letters; 225 [1999]
(e) Dramatic or dramatico-musical
compositions; choreographic works The format of a show is not copyrightable. Section
or entertainment in dumb shows; 2 of PD No. 49, otherwise known as the Decree on
(f) Musical compositions, with or without Intellectual Property, enumerates the classes of
words; work entitled to copyright protection. This provision
(g) Works of drawing, painting, is substantially the same as Section 172 of the
architecture, sculpture, engraving, Intellectual Property Code (R.A. No. 8293). The
lithography or other works of art; format or mechanics of a television show is not
models or designs for works of art; included in the list of protected works. For this
(h) Original ornamental designs or reason, the protection afforded by the law cannot
models for articles of manufacture, be extended to cover them. Copyright, in the strict
whether or not registrable as an sense of the term, is purely a statutory right.
industrial design, and other works of Being a statutory grant, the rights are only such as
applied art; the statute confers, and may be obtained and
(i) Illustrations, maps, plans, sketches, enjoyed only with respect to the subjects and by
charts and three-dimensional works the persons, and on terms and conditions specified
relative to geography, topography, in the statute.
architecture or science;
(j) Drawings or plastic works of a 4. Non-copyrightable Works (175, 176)
scientific or technical character;
(k) Photographic works including works Sec. 175. Unprotected Subject Matter. -
produced by a process analogous to Notwithstanding the provisions of Sections 172 and
photography; lantern slides; 173, no protection shall extend, under this law, to
(l) Audiovisual works and any idea, procedure, system method or operation,
cinematographic works and works concept, principle, discovery or mere data as such,
produced by a process analogous to even if they are expressed, explained, illustrated or
cinematography or any process for embodied in a work; news of the day and other
making audio-visual recordings; miscellaneous facts having the character of mere
(m) Pictorial illustrations and items of press information; or any official text of a
advertisements; legislative, administrative or legal nature, as well
(n) Computer programs; and as any official translation thereof.
(o) Other literary, scholarly, scientific
and artistic works. Sec. 176. Works of the Government. -
Sec. 173. Derivative Works. - 176.1. No copyright shall subsist in any work
of the Government of the Philippines. However,
173.1. The following derivative works shall prior approval of the government agency or
also be protected by copyright: office wherein the work is created shall be
necessary for exploitation of such work for
(a) Dramatizations, translations, profit. Such agency or office may, among other
adaptations, abridgments, things, impose as a condition the payment of
arrangements, and other alterations royalties. No prior approval or conditions shall
of literary or artistic works; and be required for the use of any purpose of
(b) Collections of literary, scholarly or statutes, rules and regulations, and speeches,
artistic works, and compilations of lectures, sermons, addresses, and
data and other materials which are dissertations, pronounced, read or rendered in
original by reason of the selection or courts of justice, before administrative
coordination or arrangement of their agencies, in deliberative assemblies and in
contents. (Sec. 2, [P] and [Q], PD meetings of public character. (Sec. 9, First
No. 49) Par., PD No. 49)
173.2. The works referred to in paragraphs (a) 176.2. The Author of speeches, lectures,
and (b) of Subsection 173.1 shall be protected sermons, addresses, and dissertations
as a new works: Provided however, That such mentioned in the preceding paragraphs shall
new work shall not affect the force of any have the exclusive right of making a collection
subsisting copyright upon the original works of his works.
employed or any part thereof, or be construed 176.3. Notwithstanding the foregoing
to imply any right to such use of the original provisions, the Government is not precluded
works, or to secure or extend copyright in such from receiving and holding copyrights
original works. (Sec. 8, PD 49; Art. 10, TRIPS) transferred to it by assignment, bequest or
otherwise; nor shall publication or republication
by the government in a public document of any Sec. 200. Sale or Lease of Work. - In every sale or
work in which copy right is subsisting be taken lease of an original work of painting or sculpture or
to cause any abridgment or annulment of the of the original manuscript of a writer or composer,
copyright or to authorize any use or subsequent to the first disposition thereof by the
appropriation of such work without the consent author, the author or his heirs shall have an
of the copyright owners. (Sec. 9, Third Par., PD inalienable right to participate in the gross
No. 49) proceeds of the sale or lease to the extent of five
percent (5%). This right shall exist during the
lifetime of the author and for fifty (50) years after
5. Standard for Copyright Protection his death. (Sec. 31, PD No. 49)
Ching Kian Chuan v. Court of Appeals, 363 Sec. 201. Works Not Covered. - The provisions of
SCRA 142 [2001] this Chapter shall not apply to prints, etchings,
engravings, works of applied art, or works of
A person to be entitled to a copyright must be the similar kind wherein the author primarily derives
original creator of the work. He must have created gain from the proceeds of reproductions. (Sec. 33,
it by his own skill, labor, and judgment without PD No. 49)
directly copying or evasively imitating the work of
another.
8. Moral Rights
Ching v Salinas (2005)
Sec. 193. Scope of Moral Rights. - The author of a
Ownership of copyrighted material is shown by work shall, independently of the economic rights in
proof of originality and copyrightability. By Section 177 or the grant of an assignment or
originality is meant that the material was not license with respect to such right, have the right:
copied, and evidences at least minimal creativity;
that it was independently created by the author 193.1. To require that the authorship of the
and that it possesses at least same minimal degree works be attributed to him, in particular, the
of creativity. Copying is shown by proof of access right that his name, as far as practicable, be
to copyrighted material and substantial similarity indicated in a prominent way on the copies,
between the two works. The applicant must thus and in connection with the public use of his
demonstrate the existence and the validity of his work;
copyright because in the absence of copyright
protection, even original creation may be freely 193.2. To make any alterations of his work
copied. prior to, or to withhold it from publication;
177.7. Other communication to the public of 178.3. In the case of work created by an
the work (Sec. 5, PD No. 49a) author during and in the course of his
employment, the copyright shall belong to:
7. Droit de Suite (a) The employee, if the creation of the
object of copyright is not a part of his
to another person by the author or copy which has been lost, destroyed
his successor in title; and or rendered unusable and copies are
(k) Any use made of a work for the not available with the publisher.
purpose of any judicial proceedings
or for the giving of professional 188.2. Notwithstanding the above provisions,
advice by a legal practitioner. it shall not be permissible to produce a volume
of a work published in several volumes or to
184.2. The provisions of this section shall produce missing tomes or pages of magazines
be interpreted in such a way as to allow the or similar works, unless the volume, tome or
work to be used in a manner which does part is out of stock; Provided, That every
not conflict with the normal exploitation of library which, by law, is entitled to receive
the work and does not unreasonably copies of a printed work, shall be entitled,
prejudice the right holder's legitimate when special reasons so require, to reproduce a
interest. copy of a published work which is considered
necessary for the collection of the library but
Sec. 187. Reproduction of Published Work. - which is out of stock. (Sec. 13, PD 49a)
185.2. The fact that a work is unpublished Sec. 180. Rights of Assignee. -
shall not by itself bar a finding of fair use if
such finding is made upon consideration of all 180.1. The copyright may be assigned in whole
the above factors. or in part. Within the scope of the assignment,
the assignee is entitled to all the rights and
remedies which the assignor had with respect their performances fixed in sound recordings,
to the copyright. even after distribution of them by, or pursuant
to the authorization by the performer; and
180.2. The copyright is not deemed assigned
inter vivos in whole or in part unless there is a 203.5. The right of authorizing the making
written indication of such intention. available to the public of their performances
fixed in sound recordings, by wire or wireless
180.3. The submission of a literary, means, in such a way that members of the
photographic or artistic work to a newspaper, public may access them from a place and time
magazine or periodical for publication shall individually chosen by them. (Sec. 42, PD No.
constitute only a license to make a single 49a)
publication unless a greater right is expressly
granted. If two (2) or more persons jointly own Sec. 208. Scope of Right. - Subject to the
a copyright or any part thereof, neither of the provisions of Section 212, producers of sound
owners shall be entitled to grant licenses recordings shall enjoy the following exclusive
without the prior written consent of the other rights:
owner or owners. (Sec. 15, PD No. 49a)
208.1. The right to authorize the direct or
Sec. 181. Copyright and Material Object. - The indirect reproduction of their sound recordings,
copyright is distinct from the property in the in any manner or form; the placing of these
material object subject to it. Consequently, the reproductions in the market and the right of
transfer or assignment of the copyright shall not rental or lending;
itself constitute a transfer of the material object.
Nor shall a transfer or assignment of the sole copy 208.2. The right to authorize the first public
or of one or several copies of the work imply distribution of the original and copies of their
transfer or assignment of the copyright. (Sec. 16, sound recordings through sale or rental or
PD No. 49) other forms of transferring ownership; and
Sec. 182. Filing of Assignment of License. - An 208.3. The right to authorize the commercial
assignment or exclusive license may be filed in rental to the public of the original and copies of
duplicate with the National Library upon payment their sound recordings, even after distribution
of the prescribed fee for registration in books and by them by or pursuant to authorization by the
records kept for the purpose. Upon recording, a producer. (Sec. 46, PD No. 49a)
copy of the instrument shall be, returned to the
sender with a notation of the fact of record. Notice Sec. 211. Scope of Right. - Subject to the
of the record shall be published in the IPO Gazette. provisions of Section 212, broadcasting
(Sec. 19, PD No. 49a) organizations shall enjoy the exclusive right to
carry out, authorize or prevent any of the following
Sec. 183. Designation of Society. - The copyright acts:
owners or their heirs may designate a society of
artists, writers or composers to enforce their 211.1. The rebroadcasting of their broadcasts;
economic rights and moral rights on their behalf.
(Sec. 32, PD No. 49a) 211.2. The recording in any manner, including
the making of films or the use of video tape, of
15. Neighboring Rights their broadcasts for the purpose of
communication to the public of television
Sec. 203. Scope of Performers' Rights. - Subject to broadcasts of the same; and
the provisions of Section 212, performers shall
enjoy the following exclusive rights: 211.3. The use of such records for fresh
transmissions or for fresh recording. (Sec. 52,
203.1. As regards their performances, the PD No. 49)
right of authorizing:
Sec. 215. Term of Protection for Performers,
(a) The broadcasting and other Producers and Broadcasting Organizations.-
communication to the public of their
performance; and 215.1. The rights granted to performers and
(b) The fixation of their unfixed producers of sound recordings under this law
performance. shall expire:
203.2. The right of authorizing the direct or (a) For performances not incorporated in
indirect reproduction of their performances recordings, fifty (50) years from the
fixed in sound recordings, in any manner or end of the year in which the
form; performance took place; and
(b) For sound or image and sound
203.3. Subject to the provisions of Section recordings and for performances
206, the right of authorizing the first public incorporated therein, fifty (50) years
distribution of the original and copies of their from the end of the year in which the
performance fixed in the sound recording recording took place.
through sale or rental or other forms of transfer
of ownership; 215.2. In case of broadcasts, the term shall be
twenty (20) years from the date the broadcast
203.4. The right of authorizing the commercial took place. The extended term shall be applied
rental to the public of the original and copies of only to old works with subsisting protection
under the prior law. (Sec. 55, PD 49a)
(c) Imprisonment of six (6) years and thereof, shall be admitted in evidence
one (1) day to nine (9) years plus a in any proceedings for an offense
fine ranging from Five hundred under this Chapter and shall be prima
thousand pesos (P500,000) to One facie proof of the matters therein
million five hundred thousand stated until the contrary is proved, and
pesos (P1,500,000) for the third the court before which such affidavit is
and subsequent offenses. produced shall assume that the
(d) In all cases, subsidiary affidavit was made by or on behalf of
imprisonment in cases of the owner of the copyright.
insolvency.
218.2. In an action under this Chapter.
217. 2. In determining the number of
years of imprisonment and the amount of (a) Copyright shall be presumed to
fine, the court shall consider the value of subsist in the work or other subject
the infringing materials that the defendant matter to which the action relates if
has produced or manufactured and the the defendant does not put in issue
damage that the copyright owner has the question whether copyright
suffered by reason of the infringement. subsists in the work or other subject
matter; and
217. 3. Any person who at the time when (b) Where the subsistence of the
copyright subsists in a work has in his copyright is established, the plaintiff
possession an article which he knows, or shall be presumed to be the owner of
ought to know, to be an infringing copy of the copyright if he claims to be the
the work for the purpose of: owner of the copyright and the
defendant does not put in issue the
(a) Selling, letting for hire, or by way question of his ownership.
of trade offering or exposing for (d) Where the defendant, without good
sale, or hire, the article; faith, puts in issue the questions of
(b) Distributing the article for purpose whether copyright subsists in a work
of trade, or for any other purpose or other subject matter to which the
to an extent that will prejudice the action relates, or the ownership of
rights of the copyright owner in the copyright in such work or subject
work; or matter, thereby occasioning
(c) Trade exhibit of the article in unnecessary costs or delay in the
public, shall be guilty of an offense proceedings, the court may direct that
and shall be liable on conviction to any costs to the defendant in respect
imprisonment and fine as above of the action shall not be allowed by
mentioned. (Sec. 29, PD No. 49a) him and that any costs occasioned by
the defendant to other parties shall be
SUMMERVILLE vs. CA (2007) paid by him to such other parties.