Rights Conferred: Sec. 149. Assignment and Transfer of Application and Registration.

RIGHTS CONFERRED SEC. 149.
ASSIGNMENT AND TRANSFER OF

APPLICATION AND REGISTRATION. -
149.1. An application for registration of a mark, or its

registration, may be assigned or transferred with or
SEC. 147. RIGHTS CONFERRED. -
without the transfer of the business using the mark.
147.1. The owner of a registered mark shall have the (n)
exclusive right to prevent all third parties not having
149.2. Such assignment or transfer shall, however, be
the owner’s consent from using in the course of trade
null and void if it is liable to mislead the public,
identical or similar signs or containers for goods or
particularly as regards the nature, source,
services which are identical or similar to those in
manufacturing process, characteristics, or suitability
respect of which the trademark is registered where
for their purpose, of the goods or services to which
such use would result in a likelihood of confusion. In
the mark is applied.
case of the use, of an identical sign for identical
goods or services, a likelihood of confusion shall be 149.3. The assignment of the application for
presumed. registration of a mark, or of its registration, shall be in
writing and require the signatures of the contracting
147.2. The exclusive right of the owner of a well-
parties. Transfers by mergers or other forms of
known mark defined in Subsection 123.1(e) which is
succession may be made by any document
registered in the Philippines, shall extend to goods
supporting such transfer.
and services which are not similar to those in respect
of which the mark is registered: Provided, That use of 149.4. Assignments and transfers of registration of
that mark in relation to those goods or services would marks shall be recorded at the Office on payment of
indicate a connection between those goods or the prescribed fee; assignment and transfers of
services and the owner of the registered mark: applications for registration shall, on payment of the
Provided, further, That the interests of the owner of same fee, be provisionally recorded, and the mark,
the registered mark are likely to be damaged by when registered, shall be in the name of the assignee
such use. (n) or transferee.
149.5. Assignments and transfers shall have no effect

against third parties until they are recorded at the
SEC. 148. USE OF INDICATIONS BY THIRD PARTIES FOR
Office. (Sec. 31, R. A. No. 166a)
PURPOSES OTHER THAN THOSE FOR WHICH THE MARK
IS USED. –
Registration of the mark shall not confer on the SEC. 150. LICENSE CONTRACTS. -
registered owner the right to preclude third parties
from using bona fide their names, addresses, 150.1. Any license contract concerning the
pseudonyms, a geographical name, or exact registration of a mark, or an application therefor,
indications concerning the kind, quality, quantity, shall provide for effective control by the licensor of
destination, value, place of origin, or time of the quality of the goods or services of the licensee in
production or of supply, of their goods or services: connection with which the mark is used. If the license
Provided, That such use is confined to the purposes contract does not provide for such quality control, or
of mere identification or information and cannot if such quality control is not effectively carried out,
mislead the public as to the source of the goods or the license contract shall not be valid.
services. (n)
150.2. A license contract shall be submitted to the
Office which shall keep its contents confidential but
shall record it and publish a reference thereto. A
license contract shall have no effect against third
parties until such recording is effected. The
Regulations shall fix the procedure for the recording
of the license contract. (n)
SEC. 231. REVERSE RECIPROCITY OF FOREIGN LAWS. – 87.8. Those that prohibit the licensee to export the
licensed product unless justified for the protection of
Any condition, restriction, limitation, diminution,
the legitimate interest of the licensor such as exports
requirement, penalty or any similar burden imposed
to countries where exclusive licenses to manufacture
by the law of a foreign country on a Philippine
and/or distribute the licensed product(s) have
national seeking protection of intellectual property
already been granted;
rights in that country, shall reciprocally be
enforceable upon nationals of said country, within 87.9. Those which restrict the use of the technology
Philippine jurisdiction. (n) supplied after the expiration of the technology
transfer arrangement, except in cases of early
termination of the technology transfer arrangement
4.2. THE TERM "TECHNOLOGY TRANSFER ARRANGE- due to reason(s) attributable to the licensee;
MENTS" refers to contracts or agreements involving
87.10. Those which require payments for patents and
the transfer of systematic knowledge for the
other industrial property rights after their expiration,
manufacture of a product, the application of a
termination arrangement;
process, or rendering of a service including
management contracts; and the transfer, 87.11. Those which require that the technology
assignment or licensing of all forms of intellectual recipient shall not contest the validity of any of the
property rights, including licensing of computer patents of the technology supplier;
software except computer software developed for
87.12. Those which restrict the research and
mass market.
development activities of the licensee designed to
absorb and adapt the transferred technology to
local conditions or to initiate research and
SEC. 87. PROHIBITED CLAUSES. –
development programs in connection with new
Except in cases under Section 91, the following products, processes or equipment;
provisions shall be deemed prima facie to have an
87.13. Those which prevent the licensee from
adverse on competition and trade:
adapting the imported technology to local
87.1. Those which impose upon the licensee the conditions, or introducing innovation to it, as long as
obligation to acquire from a specific source capital it does not impair the quality standards prescribed
goods, intermediate products, raw materials, and by the licensor;
other technologies, or of permanently employing
87.14. Those which exempt the licensor for liability for
personnel indicated by the licensor;
non-fulfillment of his responsibilities under the
87.2. Those pursuant to which the licensor reserves technology transfer arrangement and/or liability
the right to fix the sale or resale prices of the products arising from third party suits brought about by the use
manufactured on the basis of the license; of the licensed product or the licensed technology;
and
87.3. Those that contain restrictions regarding the
volume and structure of production; 87.15. Other clauses with equivalent effects. (Sec. 33-
C[2], R. A. 165a)
87.4 Those that prohibit the use of competitive
technologies in a non-exclusive technology transfer
agreement;
87.5. Those that establish a full or partial purchase

option in favor of the licensor;
87.6. Those that obligate the licensee to transfer for

free to the licensor the inventions or improvements
that may be obtained through the use of the
licensed technology;
87.7. Those that require payment of royalties to the

owners of patents for patents which are not used;
SEC. 88. MANDATORY PROVISIONS. –
The following provisions shall be included in voluntary

license contracts:
88.1. That the laws of the Philippines shall govern the

interpretation of the same and in the event of
litigation, the venue shall be the proper court in the
place where the licensee has its principal office;
88.2. Continued access to improvements in

techniques and processes related to the technology
shall be made available during the period of the
technology transfer arrangement;
88.3. In the event the technology transfer

arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of the
Philippines or the Arbitration Rules of the United
Nations Commission on International Trade Law
(UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of
Commerce (ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral
country; and
88.4. The Philippine taxes on all payments relating to

the technology transfer arrangement shall be borne
by the licensor. (n)
SEC. 92. NON-REGISTRATION WITH THE

DOCUMENTATION, INFORMATION AND
TECHNOLOGY TRANSFER BUREAU. –
Technology transfer arrangements that conform with

the provisions of Sections 86 and 87 need not be
registered with the Documentation, Information and
Technology Transfer Bureau. Non-conformance with
any of the provisions of Sections 87 and 88, however,
shall automatically render the technology transfer
arrangement unenforceable, unless said technology
transfer arrangement is approved and registered
with the Documentation, Information and
Technology Transfer Bureau under the provisions of
Section 91 on exceptional cases. (n)
PROTECTION OF TRADEMARKS
SEC. 3. INTERNATIONAL CONVENTIONS AND

RECIPROCITY. –
Any person who is a national or who is domiciled or

has a real and effective industrial establishment in a
country which is a party to any convention, treaty or
agreement relating to intellectual property rights or
the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights
to nationals of the Philippines by law, shall be entitled
to benefits to the extent necessary to give effect to
any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise
entitled by this Act. (n)
SEC. 160. RIGHT OF FOREIGN CORPORATION TO SUE

IN TRADEMARK OR SERVICE MARK ENFORCEMENT
ACTION.-
Any foreign national or juridical person who meets

the requirements of Section 3 of this Act and does
not engage in business in the Philippines may bring a
civil or administrative action hereunder for
opposition, cancellation, infringement, unfair
competition, or false designation of origin and false
description, whether or not it is licensed to do
business in the Philippines under existing laws. (Sec.
21-A, R. A. No. 166a)
SEC. 231. REVERSE RECIPROCITY OF FOREIGN LAWS. –
Any condition, restriction, limitation, diminution,

requirement, penalty or any similar burden imposed
by the law of a foreign country on a Philippine
national seeking protection of intellectual property
rights in that country, shall reciprocally be
enforceable upon nationals of said country, within
Philippine jurisdiction. (n)

Rights Conferred: Sec. 149. Assignment and Transfer of Application and Registration.

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RIGHTS CONFERRED SEC. 149.

ASSIGNMENT AND TRANSFER OF

149.1. An application for registration of a mark, or its

149.5. Assignments and transfers shall have no effect

87.5. Those that establish a full or partial purchase

87.6. Those that obligate the licensee to transfer for

87.7. Those that require payment of royalties to the

The following provisions shall be included in voluntary

88.1. That the laws of the Philippines shall govern the

88.2. Continued access to improvements in

88.3. In the event the technology transfer

88.4. The Philippine taxes on all payments relating to

SEC. 92. NON-REGISTRATION WITH THE

Technology transfer arrangements that conform with

SEC. 3. INTERNATIONAL CONVENTIONS AND

Any person who is a national or who is domiciled or

SEC. 160. RIGHT OF FOREIGN CORPORATION TO SUE

Any foreign national or juridical person who meets

SEC. 231. REVERSE RECIPROCITY OF FOREIGN LAWS. –

Any condition, restriction, limitation, diminution,

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