IP Law Finals Reviewer 1
IP Law Finals Reviewer 1
IP Law Finals Reviewer 1
LAW ON COPYRIGHT
HISTORY Rationale: Author must be able to retain
Modern copyright began in 18th century some control over the dissemination of his
mainly for printed books. At that time, work.
copyright was primarily a statutory right and
for a term provided by law. Otherwise: others would be free to exploit
In the 19th century, copyright extended to his work without paying compensation.
works of arts and drama.
Copyright is the right granted by statute to the
Berne Convention (1886) proprietor of an intellectual production to its
Covered artistic and literary works exclusive use and enjoyment to the extent
1. Minimum standards specified in the statute. (Dissenting opinion of
a. Copyright arise from the moment CJ Davide, Habana v. Robles, 1999)
of creation and no need for
registration (Art. 5(2));
Intellectual Property Law ►►| 4
“Copyright, in the strict sense of the term, is Economic Rights Moral Rights
purely a statutory right. Being a mere essentially linked
statutory grant, the rights are limited to what to the author’s
the statute confers. (Pearl & Dean v. interests in the
Shoemart, 409 SCRA 231, 2003) work as an
expression of an
Merely a statutory right; covers only the individual’s
works falling within the statutory personality.
enumeration.
The fair use of a copyrighted work for of acts which do not reasonable
criticism, comment, news reporting, constitute copyright manner without his
teaching including multiple copies for infringement even if consent,
classroom use, scholarship, research, done without the notwithstanding
and similar purposes is not an consent of the the monopoly
infringement of copyright. copyright holder. granted to the
Decompilation, which is understood owner by the
here to be the reproduction of the code copyright.
and translation of the forms of the
computer program to achieve the inter- It is meant to
operability of an independently created balance the
computer program with other programs monopolies
may also constitute fair use. In enjoyed by the
determining whether the use made of a copyright owner
work in any particular case is fair use, the with the interests
factors to be considered shall include: (P- of the public and of
N-A-E) society.
(a) The Purpose and character of the These limitations, The fair use of
use, including whether such use is of however, should be copyrighted work
a commercial nature or is for non- interpreted in such a for criticism,
profit education purposes; way as to allow the news reporting,
(b) The Nature of the copyrighted work; work to be used in a teaching
(c) The Amount and substantiality of the manner which does (including
portion used in relation to the not conflict with the multiple copies
copyrighted work as a whole; and normal exploitation for classroom
(d) The Effect of the use upon the of the work and does use), research
potential market for or value of the not unreasonably and similar
copyrighted work. prejudice the right purposes is not
The fact that a work is unpublished holder’s legitimate an infringement of
shall not by itself bar a finding of fair use interest. copyright.
if such finding is made upon
consideration of all the above factors.
This right shall last during the Such works if not published before
lifetime of the author and in perpetuity shall be protected for 50 years counted
after his death. from the making of the work.
To restrain the use of his name
with respect to any work not of his own 3. Works of applied art - the protection
creation or in a distorted version of his shall be for a period of 25 years from the
work. (IP Code, Sec.193.4) date of making.
The playing of music in dine and dance IP Code as amended, Section 216.1
establishment which was paid for by the Remedies for Infringement –
public in purchases of food and drink Any person infringing a right protected
constituted “performance for profit” within a under this law shall be liable: x x x
Copyright Law.
(b) To pay to the copyright proprietor or
Philippine Education Co. v. Sotto his assigns or heirs such actual
Analyzing the language used, such news damages, including legal costs and other
items, editorial paragraphs and articles in expenses, as he may have incurred due
periodicals may be reproduced unless they to the infringement as well as the profits
contain a notice that their publication is the infringer may have made due to such
reserved or unless they contain a notice of infringement, and in proving profits the
copyright. In either event, the law specifically plaintiff shall be required to prove sales
provides that the source of the reproduction or only and the defendant shall be required
original reproduced shall be cited. to prove every element of cost which he
claims, or, in lieu of actual damages and
NBI-Microsoft Corp. v. Judy Hwang profits, such damages which to the court
These circumstances give rise to the shall appear to be just and shall not be
reasonable inference that respondents regarded as penalty: Provided, That the
mass-produced the CD-ROMs in question amount of damages to be awarded shall
without securing Microsoft’s prior be doubled against any person who:
authorization. (i) Circumvents effective
technological measures; or
(ii) Having reasonable grounds to
INFRINGEMENT AND DEFENSES know that it will induce, enable,
facilitate or conceal the
IP Code as amended, Section 216 infringement, remove or alter any
Infringement – electronic rights management
A person infringes a right protected under this information from a copy of a work,
Act when one: sound recording, or fixation of a
(a) Directly commits an infringement; performance, or distribute, import
(b) Benefits from the infringing activity for distribution, broadcast, or
of another person who commits an communicate to the public works
infringement if the person benefiting or copies of works without
has been given notice of the authority, knowing that electronic
infringing activity and has the right rights management information
and ability to control the activities of has been removed or altered
the other person; without authority.
Intellectual Property Law ►►| 14
known as TRIPS and other related laws (a) give impartial advise to the
and international conventions. alleged infringing defendant,
expected adverse party or to the
Section 6 person in charge of the premises
Grounds for the issuance of the order – to be searched as to the meaning
Before the Order can be issued, the and coverage of the writ;
evidence proffered by the applicant and (b) attempt to achieve agreement on
personally evaluated by the judge must a suitable search procedure;
show that: (c) assess what documents or
(a) the applicant is the right holder or articles come within the terms of
his duly authorized the writ;
representative; (d) ensure the accuracy of the list of
(b) there is probable cause to believe documents and articles searched,
that the applicant's right is being inspected, copied or seized by the
infringed or that such sheriff;
infringement is imminent and (e) prepare his own report on the
there is a prima facie case for final search and seizure and verify and
relief against the alleged sign the return prepared by the
infringing defendant or expected sheriff; and
adverse party; (f) generally, assist in the proper
(c) damage, potential or actual, likely execution of the writ.
to be caused to the applicant is The Commissioner shall be a member of
irreparable; the Philippine Bar and of proven
(d) there is demonstrable risk of competence, integrity and probity. He
evidence that the alleged shall receive such reasonable
infringing defendant or expected compensation as may be determined by
adverse party may destroy, hide the court which can be charged as cost of
or remove the documents or suit.
articles before any application
inter partes can be made; and
(e) the documents and articles to be
seized constitute evidence of the Section 20
alleged infringing defendant's or Failure to file Complaint -
expected adverse party's The writ shall also, upon motion of the
infringing activity or that they expected adverse party, be set aside and
infringe upon the intellectual the seized documents and articles
property right of the applicant or returned to the expected adverse party if
that they are used or intended to no case is filed with the appropriate court
be used as means of infringing or authority within thirty-one (31) calendar
the applicant's intellectual days from the date of issuance of the writ.
property right.
Section 21
Section 12 Claims for damages -
Commissioner, duties, qualifications, and Where the writ is discharged on
fees - any of the grounds provided in this Rule,
The enforcement of the writ shall be or where it is found after trial that there
supervised by the independent has been no infringement or threat of
Commissioner appointed by the court. In infringement of an intellectual property
the performance of his duty, the right, the court. Upon motion of the
Commissioner shall: alleged infringing defendant or expected
adverse party and after due hearing, shall
Intellectual Property Law ►►| 17
order the applicant to compensate the to promote the universal use of electronic
defendant or expected adverse party transactions in the government and by
upon the cash bond, surety bond or other the general public.
equivalent security for any injury or
damage the latter suffered by the Section 4
issuance and enforcement of the writ. Sphere of Application –
Should the damages exceed the amount This Act shall apply to any kind of
of the bond, the applicant shall be liable electronic document used in the context
for the payment of the excess. of commercial and non-commercial
When a complaint is already filed activities to include domestic and
in court, the motion shall be filed with the international dealings, transactions,
same court during the trial or before arrangements, agreements contracts and
appeal is perfected or before judgment exchanges and storage of information.
becomes executory, with due notice to
the applicant, setting forth the facts Section 33(b)
showing the defendant's right to Penalties –
damage's and the amount thereof. The Piracy or the unauthorized copying,
award of damages shall be included in reproduction, dissemination, or
the judgment in the main case. distribution, importation, use, removal,
Where no complaint is filed alteration, substitution, modification,
against the expected adverse party, the storage, uploading, downloading,
motion shall be filed with the court which communication, making available to the
issued the writ. In such a case, the court public, or broadcasting of protected
shall set the motion for summary hearing material, electronic signature or
and immediately determine the expected copyrighted works including legally
adverse party's right to damages. protected sound recording or phonograms
A judgment in favor of the or information material on protected works,
applicant in its principal claim, should not through the use of telecommunication
necessarily bar the alleged infringing networks, such as, but not limited to, the
defendant from recovering damages internet, in a manner that infringes
where he suffered losses by reason of the intellectual property rights shall be
wrongful issuance or enforcement of the punished by a minimum fine of One
writ. Hundred Thousand pesos (P
The damages provided for in this 100,000.00) and a maximum
section shall be independent from the commensurate to the damage incurred
damages claimed by the defendant in his and a mandatory imprisonment of six (6)
counterclaim. months to three (3) years.
a. Indicate origin
b. Guarantee quality Q: In Dermaline Inc v. Myra
c. Advertising Pharmaceutical Inc., were the competing
d. Investment marks used in closely related goods?
A: Yes. The competing trademarks of
Dermaline and Myra were used on closely
REGISTRABILITY OF MARKS related goods. In this case the Supreme
Court held that even though the products of
Examination of the trademark application
Dermaline and Myra belong to different
based on absolute and relative grounds:
classifications in their application for
Absolute
trademark registration before the IPO, the
Tests: Does it meet the definition of
purchasing public may still associate Myra
a mark? Is it distinctive?
with Dermaline especially considering that
Relative
both classifications pertain to treatments
Test: Is it identical or confusingly
for the skin.
similar to another mark?
registration issued to Phil Shoe Expo for the whatsoever over the subject mark as
same identical mark because of two reasons: Cointreau is the true and lawful owner
First, Phil Shoe Expo failed to file its tenth thereof. As such, the IPO Director
year DAU (Declaration of Actual Use) of the General and the CA were correct in
mark resulting in its automatic cancellation by declaring Cointreau as the true and
virtue of Sec. 12 RA 166. In effect, Phil Shoe lawful owner of the subject mark and as
Expo abandoned all its rights over the mark.
such, is entitled to have the same
Second, and most important, is that
registered under its name.
Birkenstock was able to establish its true and
lawful ownership over the mark
“BIRKENSTOCK”. The Court stated that to Section 123.1
be an owner, Section 2-A of RA 166 does (f) Is identical with, or confusingly similar
not require that the actual use of a to, or constitutes a translation of a mark
trademark must be within the Philippines. considered well-known in accordance
with the preceding paragraph, which is
IP Code, Section 123.1
registered in the Philippines with respect
(e) Is identical with, or confusingly similar
to goods or services which are not
to, or constitutes a translation of a mark
similar to those with respect to which
which is considered by the competent
registration is applied for: Provided, That
authority of the Philippines to be well-
use of the mark in relation to those goods
known internationally and in the
or services would indicate a connection
Philippines, whether or not it is
between those goods or services, and the
registered here, as being already the
owner of the registered mark: Provided
mark of a person other than the
further, That the interests of the owner of
applicant for registration, and used for
the registered mark are likely to be
identical or similar goods or services:
damaged by such use;
Provided, That in determining whether a
mark is well-known, account shall be
taken of the knowledge of the relevant Q: In 246 Corporation v. Daway re: Roles
sector of the public, rather than of the and Rolex Music Lounge: is determining
public at large, including knowledge in infringement a question of fact?
the Philippines which has been
obtained as a result of the promotion of 246 Corporation v. Daway
the mark; In the case at bar, the Court of Appeals did
not err in finding that no abuse of discretion
could be ascribed to the trial courts denial of
Q: In the case of Ecole De Cuisine v. petitioner’s motion for preliminary hearing
Renaud Cointreau, Is Le Cordon Bleu a on its affirmative defenses with motion to
well-known mark in the Philippines? dismiss. The issue of whether or not a
trademark infringement exists, is a
Ecole De Cuisine Manille v. Renaud question of fact that could best be
Cointreau determined by the trial court.
It is thus clear that at the time Ecole started
using the subject mark, the same was
IP Code, Section 123.1 (g)
already being used by Cointreau, albeit
Is likely to mislead the public, particularly
abroad, of which Ecole’s directress was fully
as to the nature, quality, characteristics
aware, being an alumna of the latter’s or geographical origin of the goods or
culinary school in Paris, France. Hence, services;
Ecole cannot claim any tinge of ownership
Intellectual Property Law ►►| 22
Q: Why was it not necessary for the ... to reject all pending applications for
Court to discuss the concept of Philippine registration of signature and other
secondary meaning? world famous trademarks by applicants
A: It was not necessary for the Court to other than its original owners or users.
discuss the concept of secondary meaning The conflicting claims over internationally
because it has already ruled that the phrase known trademarks involve such name
“Ang Tibay” is not a descriptive word within brands as Lacoste, Jordache, Gloria
the meaning of the Trademark Law. Hence Vanderbilt, Sasson, Fila, Pierre Cardin,
it could be registered as trademark. The Gucci, Christian Dior, Oscar de la Renta,
Doctrine of Secondary Meaning only applies Calvin Klein, Givenchy, Ralph Lauren,
when the subject mark is descriptive. Geoffrey Beene, Lanvin and Ted Lapidus.
… where warranted, Philippine registrants
The Doctrine of Secondary Meaning is to of such trademarks should be asked to
the effect that a word or phrase originally surrender their certificates of registration, if
incapable of exclusive appropriation any, to avoid suits for damages and other
because geographically or otherwise legal action by the trademarks' foreign or
descriptive, might nevertheless be local owners or original users.
registered because of long and exclusive
use of said phrase with reference to TEST TO DETERMINE CONFUSING
products and business as to acquire a SIMILARITY
proprietary connotation.
1. Dominancy Test
Maintenance The Dominancy Test focuses on the
IP Code, Section 123.2 similarity of the prevalent features of the
As regards signs or devices mentioned in competing trademarks that might cause
paragraphs (j), (k), and (l), nothing shall confusion or deception.
prevent the registration of any such sign 2. Totality or Holistic Test
or device which has become distinctive in Holistic Test entails a consideration of the
relation to the goods for which entirety of the marks as applied to the
registration is requested as a result of the products, including labels and packaging,
use that have been made of it in in determining confusing similarity. The
scrutinizing eye of the observer must
commerce in the Philippines. The Office
focus not only on the predominant words
may accept as prima facie evidence that
but also on the other features appearing in
the mark has become distinctive, as used both labels so that a conclusion may be
in connection with the applicant's goods drawn as to whether one is confusingly
or services in commerce, proof of similar to the other.
substantially exclusive and continuous
use thereof by the applicant in commerce
in the Philippines for five (5) years before
the date on which the claim of
distinctiveness is made.
Intellectual Property Law ►►| 25
developed in Del Monte Corporation with its SAN MIGUEL PALE PILSEN. SC
v. Court of Appeals and its RULING: (applying the dominancy test) The
proponent cases. trial court perceptively observed that the word
Petitioner’s trademark is the whole “BEER” does not appear in SMC’s trademark,
“STYLISTIC MR. LEE.” Although on just as the words “SAN MIGUEL” do not
its label the word “LEE” is prominent, appear in ABI’s trademark. Hence, there is
the trademark should be considered absolutely no similarity in the dominant
as a whole and not piecemeal. The features of both trademarks.
dissimilarities between the two marks
become conspicuous, noticeable and Neither in sound, spelling or appearance
substantial enough to matter can BEER PALE PILSEN be said to be
especially in the light of the following confusingly similar to SAN MIGUEL PALE
variables that must be factored in. PILSEN. There are other dissimilarities like
Purchaser is more cautious and bottle appearance, slogan and substantial
discrimination in their purchase of price difference. The fact that the words
maong pants because they are pale pilsen are part of ABI’s trademark does
expensive. not constitute an infringement of SMC’s
The average Filipino consumer buys trademark: SAN MIGUEL PALE PILSEN, for
his jeans by brand (just like in “pale pilsen” are generic words descriptive
purchase of beers). of the color (“pale”), of a type of beer
The test of fraudulent simulation is (“pilsen”), which is a light bohemian beer
to be found in the likelihood of the with a strong hops flavor that originated in
deception of some persons in some the City of Pilsen in Czechoslovakia and
measure acquainted with an became famous in the Middle Ages.
established design and desirous of HENCE NO INFRINGEMENT
purchasing the commodity with which
that design has been associated. The When as in this case, the names of the
simulation, in order to be competing products are clearly different and
objectionable, must be such as their respective sources are prominently
appears likely to mislead the printed on the label and on other parts of the
ordinary intelligent buyer who has a bottle, mere similarity in the shape and size of
need to supply and is familiar with the the container and label, does not constitute
article that he seeks to purchase. unfair competition. Stenie bottle is a standard
for beer and universally used. No proof on
record that BEER PALE PILSEN is being
2. Second, by considering what marks passed off as SAN MIGUEL PALE
could be and could not be registered. PILSEN. HENCE NO UNFAIR
A personal name or surname may not be COMPETITION.
monopolized as a trademark or tradename
as against others of the same name or What is trade dress?
surname under Sec. 4 of R.A. A trade dress refers to the characteristics of
No.166. “LEE” is primarily a surname. the general appearance of a product.
Private respondent cannot, therefore,
acquire exclusive ownership over and Del Monte Corporation v. CA
singular use of said term. Del Monte is a foreign corp not registered in
the PH but it has authorized PhilPack as its
Asia Brewery v. CA representative to apply for trademark
San Miguel Corp (SMC) filed a case for registration of its name DEL MONTE and its
infringement and unfair competition against bottle configuration. Among the products in
Asia Brewery Inc (ABI) in connection with the the case is catsup PhilPack registered, in
ABI’s BEER PALE PILSEN which competes behalf of Del Monte, the bottle configuration
Intellectual Property Law ►►| 27
and the mark DEL MONTE. Sunshine Sauce undergarments. Respondent General
Manufacturing is a domestic corp which sells Garments was the registrant of FRUIT OF
various sauces like the Sunshine fruit catsup. EVE mark also dealing with women’s
It was discovered that Sunshine uses the panties, pajamas etc. Fruit of the Loom Inc.
bottles of Del Monte which it bought from junk filed an action for infringement and unfair
shops in its catsup business. Del Monte and competition against General Garments
PhilPack sued for infringement and unfair claiming that the two marks are confusingly
competition. The court held that there was similar The Court held that there was no
infringement and unfair competition. There confusing similarity between the two there
was infringement because of the similarities in were in fact glairing dissimilarities as to
the marks. There was unfair competition appearance to the extent that the purchaser
because Sunshine used the bottles of DEL would not be likely to be confused with the
MONTE even after the latter made a demand two products.
for the former to stop.
What is the dominant feature of the
What test was used in the case? competing marks?
The test used was the holistic test. To There was no common dominant features
determine whether a trademark has been between the competing marks. In this case
infringed, we must consider the mark as a the court ruled that the similar word FRUIT
whole and not as dissected. between the two marks does not even
constitute dominant feature. In the
What is the finding of the Court: trademarks FRUIT OF THE LOOM and
infringement or unfair competition? FRUIT FOR EVE, the lone similar word is
Sunshine’s label is an infringement of the FRUIT. WE agree with the respondent court
Del Monte’s trademark, law and equity call that by mere pronouncing the two marks, it
for the cancellation of the private could hardly be said that it will provoke a
respondent’s registration and withdrawal of confusion, as to mistake one for the other.
all its products bearing the questioned label Standing by itself, FRUIT OF THE LOOM is
from the market. wholly different from FRUIT FOR EVE. The
dominant feature of both trademarks is
NOT the word FRUIT for even in the
The predominant colors used in the Del printing of the trademark in both hang tags,
Monte label are green and red-orange, the the word FRUIT is not at all made dominant
same with Sunshine. The word “catsup” in over the other words.
both bottles is printed in white and the style
of the print/letter is the same. Although the What test was used in the case?
logo of Sunshine is not a tomato, the figure No express mention but probably the
nevertheless approximates that of a tomato. dominancy test because the Court tried to
determine the dominant features of the
With regard to the use of Del Monte’s bottle, marks
the same constitutes unfair competition;
hence, the respondent should be
permanently enjoined from the use of such Berris Agricultural Co., Inc. v. Norvy
Abyadang
bottles.
Abdayang applied for the registration of its
mark “NS D-10 PLUS” for use in connection
Fruit of the Loom v. CA with fungicide. Berris Agricultural opposed the
Fruit of the Loom Inc. is the registrant of the application for registration on the ground that
mark FRUIT OF THE LOOM mark and is it is confusingly similar to its registered mark
engaged in the business of selling “D-10 80 WP” for the same product and
Intellectual Property Law ►►| 28
the same active ingredient. The Court ruled schemes (red, green, and white); and the
that the two marks are confusingly similar marks are both predominantly red in color,
applying both the dominancy and holistic with the same phrase “BROAD SPECTRUM
tests. FUNGICIDE” written underneath.
Applying the Dominancy Test, it cannot be Rules and Regulations on Trademarks, Rule 303
gainsaid that Abyadang’s “NS D-10 PLUS” Applicant may be represented by attorney.
is similar to Berris’ “D-10 80 WP,” that —
confusion or mistake is more likely to occur. The owner of a mark may file and prosecute
Undeniably, both marks pertain to the same his own application for registration, or he
type of goods—fungicide with 80% may be represented by any attorney or
Mancozeb as an active ingredient and used other person authorized to practice in such
for the same group of fruits, crops, matters by the Office. The Office shall not
aid in the selection of an attorney or agent
vegetables, and ornamental plants, using
other than the furnishing of the list of
the same dosage and manner of
Attorneys or agents authorized to practice
application. They also belong to the same before the Office.
classification of goods under R.A. No. 8293.
Both depictions of “D-10,” as found in both Note: Prior use of a mark (upon trademark
marks, are similar in size, such that this filing) not required.
portion is what catches the eye of the
purchaser. Undeniably, the likelihood of Documents/Information Necessary to
confusion is present. Support a Philippine Trademark
Application:
1. Executed Trademark Application
This likelihood of confusion and mistake is
The applicant must indicate the names of
made more manifest when the Holistic
the goods or services for which the
Test is applied, taking into consideration the registration is sought, grouped according
packaging, for both use the same type of to the Nice Classification. There are
material (foil type) and have identical color
Intellectual Property Law ►►| 29
thirty-four (34) classes of goods and eight Applications before publication are
(8) classes of businesses and services. confidential.
2. Formal Drawing of the Mark;
3. Certified Copy of the Home/Foreign After Publication
Application (IP Code, Section 131) Publication is for opposition purposes.
NOTE: This document is required
only for applications claiming Public is given an opportunity to object the
Convention priority and must be filed application.
within six (6) months from date of Third party may commence an Opposition
earliest filing. (Rule 203) Proceeding (both parties to submit evidence
to support claims)
Response
PROCEDURE
PROCEDURE FOR REGISTRATION
(IP Code, Sections 127-132) Recommendation
Rejection
for Allowance
Prior to publication
Ex-Parte Proceedings or law contest
between the examiner (representing public
interest) and the applicant. Publication
While failure to register will not prevent the The SC recognized normal potential
owner from continuing its use, the law expansion of his business
deprives him of benefits which the law
grants to registrants of marks. Dermaline, Inc v. Myra Pharmaceutical
Inc.
Modern law recognizes that the protection to
which the owner of a trademark is entitled is
Ecole De Cuisine Manille v. Renaud not limited to guarding his goods or business
Cointreau from actual market competition with identical
Republic Act No. 8293, otherwise known as or similar products of the parties, but extends
the Intellectual Property Code of the to all cases in which the use by a junior
Philippines, as amended, has already appropriator of a trade-mark or trade-name is
dispensed with the requirement of prior actual likely to lead to a confusion of source, as
use at the time of registration. Thus, there is where prospective purchasers would be
more reason to allow the registration of the misled into thinking that the complaining
subject mark under the name of Cointreau as party has extended his business into the
its true and lawful owner. field or is in any way connected with the
activities of the infringer; or when it forestalls
La Chemise Lacoste v. Fernandez the normal potential expansion of his
The law on trademarks and tradenames is business
based on the principle of business integrity
and common justice' This law, both in letter Fredco Manufacturing Corp v. Pres. &
and spirit, is laid upon the premise that, Fellows of Harvard College
while it encourages fair trade in every way There are two compelling reasons why
and aims to foster, and not to hamper, Fredco’s petition must fail.
competition, no one, especially a trader, is
Intellectual Property Law ►►| 32
Any person who believes that he would be A certificate of registration may be renewed.
damaged by the registration of the mark
may file an opposition to the application. Note: This is different from that which is
required under Sec.124.2 (DAU after
CANCELLATION/ REVOCATION application):
IP Code, Section 151.1 IP Code, Section 124.2
Cancellation – The applicant or the registrant shall file a
(a) Within five (5) years from the date of declaration of actual use of the mark with
the registration of the mark under evidence to that effect, as prescribed by
this Act. the Regulations within three (3) years
(b) At any time, if the registered mark from the filing date of the application.
becomes the generic name for the Otherwise, the application shall be
goods or services, or a portion thereof, refused or the mark shall be removed
for which it is registered, or has been from the Register by the Director.
abandoned, or its registration was
obtained fraudulently or contrary to the One time DAU (within three years from filing)
provisions of this Act, or if the
registered mark is being used by, or The submission of a DAU or Declaration of
with the permission of, the registrant Non-Use is required to maintain a trademark
so as to misrepresent the source of the application and registration. The acceptable
goods or services on or in connection grounds for non-use are restricted to:
with which the mark is used. xxx. (n)
- Prohibition of sale imposed by
government regulation;
(c) At any time, if the registered owner of
the mark without legitimate reason - Court-issued injunctions;
fails to use the mark within the - Pending application with the Food
Philippines, or to cause it to be used and Drugs;
in the Philippines by virtue of a - Administration; and
license during an uninterrupted - Pending litigation or opposition
period of three (3) years or longer. (IP Code, Section 124.2)
obligation to register trade names, dominant feature thereof and apply such
such names shall be protected, even reproduction, counterfeit, copy or
prior to or without registration, colorable imitation to labels, signs,
against any unlawful act committed prints, packages, wrappers, receptacles
by third parties. or advertisements intended to be used in
(b) In particular, any subsequent use of commerce upon or in connection with the
the trade name by a third party,
sale, offering for sale, distribution, or
whether as a trade name or a mark or
advertising of goods or services on or in
collective mark, or any such use of a
similar trade name or mark, likely to connection with which such use is likely
mislead the public, shall be deemed to cause confusion, or to cause mistake,
unlawful. or to deceive, shall be liable in a civil
action for infringement by the registrant
165.3. The remedies provided for in for the remedies hereinafter set forth:
Sections 153 to 156 and Sections 166 and Provided, That the infringement takes
167 shall apply mutatis mutandis. place at the moment any of the acts
stated in Subsection 155.1 or this
165.4. Any change in the ownership of a subsection are committed regardless of
trade name shall be made with the whether there is actual sale of goods or
transfer of the enterprise or part thereof services using the infringing material.
identified by that name. The provisions of
Subsections 149.2 to 149.4 shall apply
mutatis mutandis. IP Code, Section 156
Actions, and Damages and Injunction for
Infringement. —
TRADEMARK INFRINGEMENT 156.1. The owner of a registered mark
may recover damages from any person
IP Code, Section 155 who infringes his rights, and the measure
Remedies; Infringement. – of the damages suffered shall be either
Any person who shall, without the consent the reasonable profit which the
of the owner of the registered mark: complaining party would have made, had
155.1. Use in commerce any reproduction, the defendant not infringed his rights, or
counterfeit, copy, or colorable imitation of a the profit which the defendant actually
registered mark or the same container or a made out of the infringement, or in the
dominant feature thereof in connection with event such measure of damages cannot
the sale, offering for sale, distribution, be readily ascertained with reasonable
advertising of any goods or services certainty, then the court may award as
including other preparatory steps damages a reasonable percentage based
necessary to carry out the sale of any upon the amount of gross sales of the
goods or services on or in connection with defendant or the value of the services in
which such use is likely to cause connection with which the mark or trade
confusion, or to cause mistake, or to name was used in the infringement of the
deceive; or rights of the complaining party.
156.3. In cases where actual intent to within a circle or if the defendant had
mislead the public or to defraud the otherwise actual notice of the registration.
complainant is shown, in the discretion of
the court, the damages may be doubled.
IP Code, Section 159
156.4. The complainant, upon proper Limitations to Actions for Infringement.
showing, may also be granted injunction. — Notwithstanding any other provision of
this Act, the remedies given to the owner
IP Code, Section 157 of a right infringed under this Act shall be
Power of Court to Order Infringing limited as follows:
Material Destroyed – 159.1. Notwithstanding the
157.1. In any action arising under this provisions of Section 155 hereof,
Act, in which a violation of any right of a registered mark shall have no
the owner of the registered mark is effect against any person who, in
established, the court may order that good faith, before the filing date
goods found to be infringing be, without or the priority date, was using
compensation of any sort, disposed of the mark for the purposes of his
outside the channels of commerce in business or enterprise: Provided,
such a manner as to avoid any harm That his right may only be
caused to the right holder, or destroyed; transferred or assigned together
and all labels, signs, prints, packages, with his enterprise or business
wrappers, receptacles and or with that part of his enterprise
advertisements in the possession of the or business in which the mark is
defendant, bearing the registered mark or used.
trade name or any reproduction,
counterfeit, copy or colorable imitation 159.2. Where an infringer who is
thereof, all plates, molds, matrices and engaged solely in the business
other means of making the same, shall be of printing the mark or other
delivered up and destroyed. infringing materials for others is
an innocent infringer, the owner
157.2. In regard to counterfeit goods, the of the right infringed shall be
simple removal of the trademark affixed entitled as against such infringer
shall not be sufficient other than in only to an injunction against
exceptional cases which shall be future printing.
determined by the Regulations, to permit
the release of the goods into the 159.3. Where the infringement
channels of commerce. complained of is contained in or is
part of paid advertisement in a
IP Code, Section 158 newspaper, magazine, or other
Damages; Requirement of Notice. — similar periodical or in an
In any suit for infringement, the owner of electronic communication, the
the registered mark shall not be entitled to remedies of the owner of the right
recover profits or damages unless the acts infringed as against the publisher
have been committed with knowledge that or distributor of such newspaper,
such imitation is likely to cause confusion, magazine, or other similar
or to cause mistake, or to deceive. Such periodical or electronic
knowledge is presumed if the registrant communication shall be limited
gives notice that his mark is registered by to an injunction against the
displaying with the mark the words presentation of such advertising
'"Registered Mark" or the letter R matter in future issues of such
newspapers, magazines, or other
Intellectual Property Law ►►| 36
(c) Any person who shall make any false Jurisprudential Definition of Unfair
statement in the course of trade or Competition
who shall commit any other act
contrary to good faith of a nature Alhambra Cigar v. Mojica
calculated to discredit the goods, Unfair competition consists in passing off or
business or services of another attempting to pass off upon the public the
goods or business of one person as and for
168.4. The remedies provided by Sections the goods or business of another. It consists
156, 157 and 161 shall apply mutatis essentially in the conduct of a trade or
mutandis. business in such a manner that there is
either an express or implied representation
Section 168.1 speaks of a person who has to that effect.
earned goodwill with respect to his goods
and services and who is entitled to Coca-Cola Bottlers v. Gomez
protection under the Code, with or without a Jurisprudence defines unfair competition as
registered mark. the passing off or attempting to pass off
upon the public the goods or business of
Goodwill – property right that must be one person as the goods or business of
protected another with the end and probable effect of
Section 168.2 refers to the general definition deceiving the public.
of unfair competition.
True test of Unfair Competition: whether the
Form of unfair competition – passing off acts of defendant are such as are calculated
to deceive the ordinary buyer making his
Note: another form of unfair competition is
purchases under the ordinary conditions
false designation of origin
which prevail in the particular trade to which
Section 168.3, on the other hand, refers to the controversy relates.
the specific instances of unfair competition,
with Section 168.1 referring to the sale of Levi Strauss v. Tony Lim
goods given the appearance of the goods of Unfair competition consists in employing
another; deception or any other means contrary to
good faith by which any person shall pass
Section 168.2, to the inducement of belief off the goods manufactured by him or in
that his or her goods or services are that of which he deals, or his business, or services
another who has earned goodwill; while the for those of the one having established
disputed Section 168.3 being a “catch all” goodwill, or committing any acts calculated
clause whose coverage the parties now to produce such result.
dispute.
Elements of Unfair Competition
1. Create/capable of creating confusion as
Trademark Unfair to the enterprise, goods, industrial
Infringement Competition activities
Unauthorized use of Passing off of one’s 2. Formulate false allegations in the course
a trademark goods as those of of trade so as to discredit the enterprise,
another goods, industrial activities
Fraudulent Intent is Fraudulent intent is 3. Indications or allegations that in the
unnecessary. essential. course of trade….
Prior registration of Registration is NOT
the trademark is a necessary.
prerequisite to the
action.
Intellectual Property Law ►►| 38
been tampered, unlawfully modified, or infringed McDonald’s Corp. v. L.C. Big Mak
upon as defined under Section 155 of this Code. Big Mak Burger Inc. applied for the
registration of the mark “BIG MAK” this was
opposed by McDonalds as this was a
colorable imitation of its mark “Big Mac” over
FALSE DESIGNATION OF ORIGIN its double-decker hamburger sandwich. Big
Mak Inc. pointed out that another corp.(Isaiyas
IP Code, Section 169 Group) registered the mark “Big Mac” ahead
False Designations of Origin; False of McDonalds.In response McDonalds pointed
Description or Representation – out that Isaiyas Group’s registration was only
169.1. Any person who, on or in in the supplemental register; Also there was a
connection with any goods or services, deed of assignment made by Isaiyas Group in
or any container for goods, uses in favor of McDonalds. Trial court ruled that Big
commerce any word, term, name, symbol, Mak Inc is liable for infringement and unfair
or device, or any combination thereof, or competition. This was reversed by CA.
any false designation of origin, false or
misleading description of fact, or false or
misleading representation of fact, which:
The Court ruled that LC Big Mak is guilty of
(a) Is likely to cause confusion, or to infringement and unfair competition. LC Big
cause mistake, or to deceive as to the Mak was deemed guilty of infringement
affiliation, connection, or association because of likelihood of confusion as to
of such person with another person, goods and business and because it failed to
or as to the origin, sponsorship, or put notice that LC Big Mak is the
approval of his or her goods, manufacturer of Big Mak burgers.
services, or commercial activities by
another person; or
Distinguish Generic, Descriptive and
(b) In commercial advertising or Fanciful/ Arbitrary marks.
promotion, misrepresents the nature,
Generic marks are commonly used as the
characteristics, qualities, or
name or description of a kind of goods, such
geographic origin of his or her or
as “Lite” for beeror “Chocolate Fudge” for
another person's goods, services, or
chocolate soda drink.
commercial activities, shall be liable
to a civil action for damages and
Descriptive marks, on the other hand,
injunction provided in Sections 156
convey the characteristics, functions,
and 157 of this Act by any person
qualities or ingredients of a product to one
who believes that he or she is or is
who has never seen it or does not know it
likely to be damaged by such act.
exists, such as “Arthriticare” for arthritis
medication.
169.2. Any goods marked or labelled in
contravention of the provisions of this
On the contrary, “Big Mac” falls under the
Section shall not be imported into the
class of fanciful or arbitrary marks as it
Philippines or admitted entry at any
bears no logical relation to the actual
customhouse of the Philippines. The
characteristics of the product it represents.
owner, importer, or consignee of goods
refused entry at any customhouse under
Is there confusion of business in the
this section may have any recourse under
case?
the customs revenue laws or may have the
YES. Respondents assert that their “Big
remedy given by this Act in cases involving
Mak” hamburgers cater mainly to the low-
goods refused entry or seized.
income group while petitioners’ “Big Mac”
hamburgers cater to the middle and upper
income groups. Even if this is true, the
Intellectual Property Law ►►| 40
likelihood of confusion of business given a plausible reason for how they came
remains, since the low-income group might up with their mark.
be led to believe that the “Big Mak”
hamburgers are the low-end hamburgers Explain now Respondents came to
marketed by petitioners. After all, petitioners choose their mark. How did the Court
have the exclusive right to use the “Big react to this?
Mac” mark. On the other hand, respondents “MACJOY” is based on the name of its
would benefit by associating their low-end president’s niece, Scarlett Yu Carcell as an
hamburgers, through the use of the “Big expression of fondness and endearment.
Mak” mark, with petitioners’ high-end “Big
Mac” hamburgers, leading to likelihood of The court found the explanation to be
confusion in the identity of business. implausible. The respondent’s implausible
and insufficient explanation as to how and
Respondents have adopted in “Big Mak” not why out of the many choices of words it
only the dominant but also almost all the could have used for its trade name and/or
features of “Big Mac.” They both sound the trademark, it chose the word “MACJOY,”
same and that the letters are the same lead to the only logical conclusion deducible
except for the last (in tagalog “k” is used therefrom that the respondent would want to
instead of “c” as in Kalookan) ride high on the established reputation and
goodwill of the MCDONALD’s marks, which,
Explain how Respondents came to as applied to petitioner’s restaurant
choose their mark. business and food products, is undoubtedly
Defendants-appellants explained that the beyond question.
name “Mak” in their corporate name (BIG
MAK) was derived from both the first names of Prosource International, Inc. v. Horphag
the mother and father of defendant Francis Research
Dy, whose names are Maxima and Kimsoy. Horphag is a Swiss Corp. distributing food
supplement product in the Philippines with
Is it possible to have trademark the mark PYCNOGENOL. It discovered that
infringement without unfair competition? Prosource was also selling food supplement
Cite example. products with the mark PCO-GENOLS and
YES. There can be trademark infringement it demanded that the latter cease from
without unfair competition as when the distributing such products. Prosource the
infringer discloses on the labels containing products with PCO-GENOLS mark from the
the mark that he manufactures the goods, market and changed it into PCO-PLUS.
thus preventing the public from being Horphag then filed a case for infringement.
deceived that the goods originate from the The Court held that there was an
trademark owner. infringement because applying the
dominancy test there is likelihood of
McDonald’s Corp. v. Macjoy Fastfood confusion as the two marks sounds similar
Corp., and are both food supplement products.
MacJoy Fastfood is a domestic corp in Cebu
engaged in the fast food business and it What test was used in the case?
applied for registration of the mark “MACJOY Dominancy test. The court adhered to the
AND DEVICE” McDonalds opposed the findings of both the trial court and CA which
application saying that there is colorable both used the dominancy test. The products
imitation of their corporate logo in specifically are similar as to sounds; and both are food
the golden arches or the “M” sign. The Court supplements.
applied the dominancy test and held that the
marks were similar and MacJoy has not
Intellectual Property Law ►►| 41
Skechers USA v. Pacific Industrial exclusive right to use the mark to the
Trading prejudice of petitioner.
Skechers applied for search warrants to The GALLO trademark registration
search the warehouses of Pacific Industrial on certificates in the Philippines and in other
the ground of infringement; search warrants countries expressly state that they cover
were issued. On its defense, Pacific industrial wines only, without any evidence or
that there is no confusing similarity between indication that registrant Gallo Winery
the skechers rubber shoes and its own Strong expanded or intended to expand its
rubber shoes; hence it moved for the quashal business to cigarettes. Thus, by strict
of the search warrants. This was granted. The application of Section 20 of the Trademark
Court held that there was similarity with regard Law, Gallo Winery’s exclusive right to use
to the dominant feature of the skechers rubber the GALLO trademark should be limited to
shoes which is the stylized “S” and hence the wines, the only product indicated in its
quashal of the warrants was set aside. registration certificates.
4. The focus on the inventor who has the available for any inventions, whether
right to be named as such in the patent. products or processes, in all fields of
(Art. 4ter) technology, provided that they are
Patent ownership: new, involve an inventive step and
a. Employer-employee – if part of the are capable of industrial application.
employee’s regular work – employer Subject to paragraph 4 of Article 65,
(through a deed of assignment paragraph 8 of Article 70 and
affixed in the patent application) paragraph 3 of this Article, patents
b. Commissioned work - commissioner shall be available and patent rights
enjoyable without discrimination as
to the place of invention, the field of
THE PATENT COOPERATION TREATY technology and whether products are
AS AMENDED imported or locally produced.
1. Not a granting procedure — merely
provides a conduit whereby a single FOUR BASIC REQUIREMENTS FOR
application can be processed and PATENTABILITY
searched by a qualified international 1. There must be an invention that can be
body before being sent to national or considered as a technical solution of a
regional intellectual property offices for problem in any field of human activity;
full consideration
2. The invention must be new;
2. Anyone who is a national or resident of
a contracting state can file a single 3. The invention must involve an inventive
international patent application step;
Note: This single application is then 4. The invention must be industrially
subject to an ‘international search’ from applicable;
which an international research report is
prepared.
This international search body PATENTABLE AND NON-
determines if there is inventive step; can PATENTABLE INVENTIONS
help you decide whether to pursue your
international application
PART A:
Difference with the Madrid Protocol: you Define
deal directly with the national Intellectual
Property Offices 1. Invention
IP Code, Section 21
Patentable Inventions
TRIPS (1994) Any technical solution of a problem in
1. It is administered by the WTO and any field of human activity which is new,
parties to the Agreement are subject to involves an inventive step and is
WTO’s dispute settlement system industrially applicable shall be
2. It links obligations to protect intellectual patentable. It may be, or may relate to, a
property with the attractiveness of trade product, or process, or an improvement
privileges available under GATT of any of the following.
3. First international measure to harmonize - Technical character
substantive patent provisions: - Solution
2. Product – any physical thing resulting
Article 27(1) TRIPS from a man’s skill
Patentable Subject Matter 3. Process – mode of treatment of certain
1. Subject to the provisions of materials to produce a certain effect
paragraphs 2 and 3, patents shall be
Intellectual Property Law ►►| 48
26.2. In case of drugs and medicines, there Graham v. John Deere Co.
is no inventive step if the invention results Ruling:
from mere discovery of a new form or new 1. The flexing advantages flowing from the
property of a known substance which does ‘798 arrangement are not, in fact, a
not result in the enhancement of the known significant feature of the patent.
efficacy of that substance, or the mere 2. All of the elements of the ‘798 patent are
discovery of any new property or new use present in the Glencoe (clamp device).
for a known substance, or the mere use of a
known process unless such known process Graham Factors – used in determining non-
results in a new product that employs at obviousness:
least one new reactant. 1. Scope and content of prior art
2. Differences between the claimed
invention and the prior art
Vargas v. FM Yaptico
3. Level of ordinary skill in the prior art
The burden of proof to substantiate a charge
of infringement is with the plaintiff. Where,
Secondary considerations:
however, the plaintiff introduces the patent in
1. Commercial success
evidence, if it is in due form, it affords a prima
2. Long felt but unsolved needs
facie presumption of its correctness and
3. Failure of others
validity. The decision of the Commissioner of
Patents in granting the patent is always
presumed to be correct. The burden then
shifts to the defendant to overcome by PART 3:
competent evidence this legal presumption. Industrial Applicability
material is not available to the public, the later application is filed within four (4)
application shall be supplemented by a months after the requirement to divide
deposit of such material with an becomes final, or within such additional
international depository institution. time, not exceeding four (4) months, as
may be granted: Provided further, That
35.2. Description. – each divisional application shall not go
The Regulations shall prescribe the beyond the disclosure in the initial
contents of the description and the order application.
of presentation. 8.3. The fact that a patent has been
granted on an application that did not
IP Code, Section 36. comply with the requirement of unity of
The Claims – invention shall not be a ground to cancel
36.1. The application shall contain one (1) the patent.
or more claims which shall define the
matter for which protection is sought. Each IP Code Section 39.
claim shall be clear and concise, and shall Information Concerning Corresponding
be supported by the description. Foreign Application for Patents –
The applicant shall, at the request of the
36.2. The Regulations shall prescribe the Director, furnish him with the date and
manner of the presentation of claims. number of any application for a patent filed
by him abroad, hereafter referred to as the
IP Code, Section 37. "foreign application," relating to the same
The Abstract – or essentially the same invention as that
The abstract shall consist of a concise claimed in the application filed with the
summary of the disclosure of the Office and other documents relating to the
invention as contained in the description, foreign application.
claims and drawings in preferably not
more than one hundred fifty (150) words.
It must be drafted in a way which allows
the clear understanding of the technical Priority Date
problem, the gist of the solution of that IP Code, Section 31
problem through the invention, and the An application for patent filed by any
principal use or uses of the invention. person who has previously applied for the
The abstract shall merely serve for same invention in another country which by
technical information. treaty, convention, or law affords similar
privileges to Filipino citizens, shall be
IP Code, Section 38 considered as filed as of the date of filing
38.1. The application shall relate to one the foreign application: Provided, That: (a)
invention only or to a group of inventions the local application expressly claims
forming a single general inventive priority; (b) it is filed within twelve
concept. (12) months from the date the earliest
foreign application was filed; and (c) a
38.2. If several independent inventions certified copy of the foreign application
which do not form a single general together with an English translation is
inventive concept are claimed in one filed within six (6) months from the date
application, the Director may require that of filing in the Philippines. (Sec. 15, R.A.
the application be restricted to a single No. 165a)
invention. A later application filed for an
invention divided out shall be considered
as having been filed on the same day as
the first application: Provided, That the
Intellectual Property Law ►►| 55
Substantive Examination
Duty of applicant to file a written request for Publication After Grant
substantive examination IP Code, Section 52
Publication Upon Grant of Patent
IP Code, Section 48 52.1. The grant of the patent together with
Request for Substantive Examination other related information shall be
48.1. The application shall be deemed published in the IPO Gazette within the
withdrawn unless within six (6) months time prescribed by the Regulations.
from the date of publication under 52.2. Any interested party may inspect
Section 41, a written request to determine the complete description, claims, and
whether a patent application meets the drawings of the patent on file with the
requirements of Sections 21 to 27 and Office.
Sections 32 to 39 and the fees have been
paid on time. Issuance of Certificate of Letters Patent
IP Code, Section 53
48.2. Withdrawal of the request for The patent shall be issued in the name of
examination shall be irrevocable and the Republic of the Philippines under the
shall not authorize the refund of any fee. seal of the Office and shall be signed by
Law Contest the Director, and registered together with
An application is prosecuted ex parte by the the description, claims, and drawings, if
applicant; that is, the proceedings are like a any, in books and records of the Office.
lawsuit in which there is a plaintiff, but no
defendant, the court itself acting as adverse Term
party. IP Code, Section 54
The term of a patent shall be twenty (20)
years from the filing date of the
Amendment of Specification
application.
IP Code, Section 49
An applicant may amend the patent
application during examination: Provided, Note: for computing the term, use the local
That such amendment shall not include filing date even if the applicant made use of
new matter outside the scope of the a priority date in a foreign application
disclosure contained in the application as
filed. Patent After Grant
IP Code, Section 55.
Grant of Patent Annual Fees. —
55.1. To maintain the patent application or
- Ultimate objective of patent application
patent, an annual fee shall be paid upon
Intellectual Property Law ►►| 57
the expiration of four (4) years from the from manufacturing, dealing in,
date the application was published using, selling, or offering for sale, or
pursuant to Section 44 hereof, and on importing any product obtained
each subsequent anniversary of such directly or indirectly from such
date. Payment may be made within three process.
(3) months before the due date. The 2. Assign, or transfer the patent, and
obligation to pay the annual fees shall conclude licensing contracts
terminate should the application be
withdrawn, refused, or cancelled. Cancellation of Patent
IP Code, Section61.
55.2. If the annual fee is not paid, the Cancellation of Patents –
patent application shall be deemed 61.1. Any interested person may, upon
withdrawn or the patent considered as payment of the required fee, petition to
lapsed from the day following the cancel the patent or any claim thereof, or
expiration of the period within which the parts of the claim, on any of the following
annual fees were due. A notice that the grounds:
application is deemed withdrawn or the (a) That what is claimed as the invention
lapse of a patent for non-payment of any is not new or patentable;
annual fee shall be published in the IPO (b) That the patent does not disclose the
Gazette and the lapse shall be recorded in invention in a manner sufficiently clear
the Register of the and complete for it to be carried out by
Office. any person skilled in the art; or
(c) That the patent is contrary to public
55.3. A grace period of six (6) months shall order or morality.
be granted for the payment of the annual
fee, upon payment of the prescribed 61.2. Where the grounds for cancellation
surcharge for delayed payment. relate to some of the claims or parts of
the claim, cancellation may be effected to
The first annual fee is due after the such extent only.
expiration of four years from date of the
publication of the application and on each
subsequent anniversary thereafter. INFRINGEMENT
Payments may be made 3 months before
due date. What constitutes infringement? (Section
76)
Obligation to pay is terminated if application IP Code, Section 76
is withdrawn, refused or cancelled. Civil Action for Infringement. ‑
76.1. The making, using, offering for sale,
RIGHTS CONFERRED BY A PATENT selling, or importing a patented product or
Q: What are the exclusive rights a product obtained directly or indirectly
conferred by a patent? (Section 71) from a patented process, or the use of a
A: The following are the exclusive rights patented process without the
conferred by a patent: authorization of the patentee constitutes
1. Product v. Process patent infringement: Provided, That, this
a. product – to restrain, prohibit and shall not apply to instances covered by
prevent any unauthorized person or Sections 72.1 and 72.4 (Limitations of
entity from making, using, offering for Patent Rights); Section 74 (Use of
sale, selling or importing that product Invention by Government); Section 93.6
b. process – to restrain, prevent or (Compulsory Licensing); and Section 93-
prohibit any unauthorized person or A (Procedures on Issuance of a Special
entity from using the process and
Intellectual Property Law ►►| 58
Q: Can you file a criminal action for The powers tillers are identical in
infringement? configuration, design and appearance.
A: YES. (Section 84) DOCTRINE OF EQUIVALENTS
An infringement also occurs when a device
appropriates a prior invention by
IP Code, Section 84. incorporating its innovative concept and,
Criminal Action for Repetition of albeit with some modification and change,
Infringement. ‑ performs substantially the same function in
If infringement is repeated by the substantially the same way to achieve
infringer or by anyone in connivance with substantially the same result.
him after finality of the judgment of the
court against the infringer, the offenders Carlos Gsell v. Valerioso Veloso Yap-
shall, without prejudice to the institution Jue
of a civil action for damages, be Infringement?
criminally liable therefor and, upon
conviction, shall suffer imprisonment for “The use of a process in all respects
the period of not less than six (6) months identical with a process protected by a valid
but not more than three (3) years and/or a patent, save only that a well-known
fine of not less than One hundred mechanical equivalent is substituted in lieu
thousand pesos (P100,000) but not more of some particular part of the patented
than Three hundred thousand pesos process is an infringement upon the rights
(P300,000), at the discretion of the court. of the owner of the patent, which will be
The criminal action herein provided shall enjoined in appropriate proceeding…”
prescribe in three (3) years from date of
the commission of the crime.
Intellectual Property Law ►►| 60
justified for the protection of the legitimate BAR Q: What contractual stipulations are
interest of the licensor such as exports to required in all technology transfer
countries where exclusive licenses to agreements?
manufacture and/or distribute the licensed A: The following are the stipulations
product(s) have already been granted; required:
87.9. Those which restrict the use of the IP Code, Section 88.
technology supplied after the expiration Mandatory Provisions. ‑
of the technology transfer arrangement, The following provisions shall be
except in cases of early termination of the included in voluntary license contracts:
technology transfer arrangement due to
reason(s) attributable to the licensee; 88.1. That the laws of the Philippines shall
govern the interpretation of the same and in
87.10. Those which require payments for the event of litigation, the venue shall be
patents and other industrial property the proper court in the place where the
rights after their expiration, termination licensee has its principal office;
arrangement;
88.2. Continued access to improvements
87.11. Those which require that the in techniques and processes related to
technology recipient shall not contest the the technology shall be made available
validity of any of the patents of the during the period of the technology
technology supplier; transfer arrangement;
87.12. Those which restrict the research 88.3. In the event the technology transfer
and development activities of the licensee arrangement shall provide for arbitration,
designed to absorb and adapt the the Procedure of Arbitration of the
transferred technology to local conditions Arbitration Law of the Philippines or the
or to initiate research and development Arbitration Rules of the United Nations
programs in connection with new products, Commission on International Trade Law
processes or equipment; (UNCITRAL) or the Rules of Conciliation
and Arbitration of the International
87.13. Those which prevent the licensee Chamber of Commerce (ICC) shall apply
from adapting the imported technology to and the venue of arbitration shall be the
local conditions, or introducing Philippines or any neutral country; and
innovation to it, as long as it does not
impair the quality standards prescribed 88.4. The Philippine taxes on all
by the licensor; payments relating to the technology
transfer arrangement shall be borne by
87.14. Those which exempt the licensor the licensor.
for liability for non-fulfilment of his
responsibilities under the technology IP Code, Section 91.
transfer arrangement and/or liability Exceptional Cases. ‑
arising from third party suits brought In exceptional or meritorious cases where
about by the use of the licensed product substantial benefits will accrue to the
or the licensed technology; and economy, such as high technology
content, increase in foreign exchange
87.15. Other clauses with equivalent earnings, employment generation,
effects. regional dispersal of industries and/or
substitution with or use of local raw
materials, or in the case of Board of
Intellectual Property Law ►►| 64
primarily for domestic consumption: Smith Kline & French Lab Ltd. V. Court
Provided, That adequate remuneration shall of Appeals, July 24, 1997
be paid to the patent owner either by the Q: Whether Smith Kline was deprived of its
exporting or importing country. The property right with the grant of the
compulsory license shall also contain a Compulsory License:
provision directing the grantee the license A: NO. Smith Kline would be entitled to
to exercise reasonable measures to prevent receive royalties.
the re-exportation of the products imported
under this provision. Smith Kline & French Lab Ltd. V. Court
of Appeals, Oct. 23, 2001
The grant of a special compulsory license
Q: Whether the royalty rate under the
under this provision shall be an
Compulsory License is unreasonable.
exception to Sections 100.4 and 100.6 of
A: NO. The Director General is given
Republic Act No. 8293 and shall be
discretion to award royalty not more than
immediately executory.
5% of net wholesale price. The 2.5% royalty
is reasonable especially because there is no
No court, except the Supreme Court of
showing that petitioner granted technical
the Philippines, shall issue any temporary
assistance to the respondent.
restraining order or preliminary
injunction or such other provisional
remedies that will prevent the grant of the
special compulsory license. UTILITY MODELS
Q: Whether incidental matters such as
issuance of an injunction should be - Petty inventions
brought before the IPO Director General - As compared to patents, utility models
or the Court of Appeals: lack the element of inventive step