MODULE 3: IPL ** Which agency of the government issues the

R.A. 8293 INTELLECTUAL PROPERTY CODE OF THE patent rights?

PHILIPPINES
June 6, 1997 - Intellectual Property Office of the
Philippines
A. THE LAW ON PATENTS
** What does this right give to the
inventor/creator? What is the important aspect of
1. Patent defined the patent right?
- An exclusive right granted to the inventor - The inventor is being granted an “exclusive
over an invention, to sell, use and make the right”, which means that he has also the
same whether for commerce or industry. right to exclude others from making, using,
- A patent is an exclusive right granted for an or selling the product, otherwise you can
invention, which is a product or a process file a suit “infringement” against those who
that provides, in general, a new way of copy or mimic the invention.
doing something, or offers a new technical
2. Mode of creation of right
solution to a problem. To get a patent,
- The creation of right is made through
technical information about the invention
application of patent to the Bureau of
must be disclosed to the public in a patent
Patents.
application. (WIPO)
- There are three types of patents you can ** Register the same with IPO to be protected by
apply for: patentable inventions, industrial the law.
design, and utility model.
3. Term of patent
a. Patentable Invention – Any - SEC. 54. Term of Patent. - The term of a
technical solution of a problem in any field patent shall be twenty (20) years from the
of human activity which is new, involves an filing date of the application. **providing an
inventive step, and is industrially applicable inventor significant commercial gain. For
shall be patentable. It may be, or may relate the pirated creations, whatever profit that
to, a product, or process, or an they have acquired by reason of selling such
improvement of any of the foregoing. (Sec. fake goods, you can demand from them
7, R.A. No. 165a) damages because of “loss of income
b. Industrial Design - Any composition opportunity”. (Sec. 21, R.A. No. 165a)
of lines or colors or any three-dimensional a. The term of a patent shall be twenty
form, whether or not associated with lines (20) years from the filing date of the
or colors; provided that such composition or application.
form gives a special appearance to and can b. The term of a utility model is seven
serve as pattern for an industrial product or (7) years, without any possibility of renewal.
handicraft. c. The term of an industrial design is
c. Utility Model - any model of five (5) years from the filing date of the
implements or tools or any industrial application. It may be renewed for not more
product, or of part of the same which is of than two (2) consecutive periods of five (5)
practical utility by reason of its form, years each, by paying the renewal fee.
configuration or composition.
Under section 109.3 of RA 8293, otherwise 4. Requisites of Patentable inventions
known as the Intellectual Property Code (IP - SEC. 21. Patentable Inventions. - Any
Code) of the Philippines, a utility model can technical solution of a problem in any field
no longer be renewed. It can only be of human activity which is new, involves an
registered for a period of seven (7) years inventive step and is industrially applicable
after date of filing of the application, shall be patentable. It may be, or may
without any possibility of renewal. relate to, a product, or process, or an
improvement of any of the foregoing. (Sec.
** By definition in IPL, patent is a right granted for 7, R.A. No.165a)
a product/process or an improvement of a i. Novelty – An invention is considered
product/process issued by the government. new if it does not form part of a prior art.
Prior art shall consist of:
 (a) Everything which has been skilled in the art at the time of the filing
made available to the public date or priority date of the application
anywhere in the world, before the claiming the invention.
filing date or the priority date of the In the case of drugs and medicines, there is
application claiming the invention; no inventive step if the invention results
and from the mere discovery of a new form or
(b) The whole contents of an new property of a known substance which
application for a patent, utility does not result in the enhancement of the
model, or industrial design known efficacy of that substance, or the
registration, published in mere discovery of any new property or new
accordance with this Act, filed or use for a known substance, or the mere use
effective in the Philippines, with a of a known process unless such known
filing or priority date that is earlier process results in a new product that
than the filing or priority date of the employs at least one new reactant.
application: Provided, That the - iii. Industrial Applicability – An
application which has validly invention that can be produced and used in
claimed the filing date of an earlier any industry shall be industrially
application under Section 31 of this applicable.
Act, shall be prior art with effect as
5. Non-patentable inventions
of the filing date of such earlier
- SEC. 22. Non-Patentable Inventions. - The
application: Provided further, That
following shall be excluded from patent
the applicant or the inventor
protection:
identified in both applications are
- 22.1. Discoveries, scientific theories and
not one and the same. (Sec. 9, R.A.
mathematical methods, and in the case of
No. 165a) cdt
drugs and medicines, the mere discovery of
- Non-Prejudicial Disclosure.
a new form or new property of a known
(a) The disclosure of information
substance which does not result in the
contained in the application during the
enhancement of the known efficacy of that
twelve (12) months preceding the filing date
substance, or the mere discovery of any
or the priority date of the application shall
new property or new use for a known
not prejudice the applicant on the ground of
substance, or the mere use of a known
lack of novelty if such disclosure was made
process unless such known process results in
by:
a new product that employs at least one
(1) The inventor;
new reactant.
(2) A patent office and the
For the purpose of this clause, salts, esters,
information was contained (a) in
ethers, polymorphs, metabolites, pure form,
another application filed by the
particle size, isomers, mixtures of isomers,
inventor and should not have been
complexes, combinations, and other
disclosed by the office, or (b) in an
derivatives of a known substance shall be
application filed without the
considered to be the same substance, unless
knowledge or consent of the
they differ significantly in properties with
inventor by a third party which
regard to efficacy;
obtained the information directly or
- 22.2. Schemes, rules and methods of
indirectly from the inventor; or
performing mental acts, playing games or
(3) A third party which obtained
doing business, and programs for
the information directly or indirectly
computers;
from the inventor.
- 22.3 Methods for treatment of the human
(b) For the purposes of Subsection 25.1,
or animal body by surgery or therapy and
"inventor" also means any person who, at
diagnostic methods practiced on the human
the filing date of application, had the right
or animal body. This provision shall not
to the patent. (n)
apply to products and composition for use
- ii. Inventive Step – An invention
in any of these methods;
involves an inventive step if, having regard
- 22.4. Plant varieties or animal breeds or
to a prior art, it is not obvious to a person
essentially biological process for the
 production of plants or animals. This 8. Right to a patent
provision shall not apply to micro-organisms - SEC. 28. Right to a Patent. - The right to a
and non-biological and microbiological patent belongs to the inventor, his heirs, or
processes. assigns. When two (2) or more persons have
Provisions under this subsection shall not jointly made an invention, the right to a
preclude Congress to consider the patent shall belong to them jointly (co-
enactment of a law providing sui generis ownership). (Sec. 10, R.A. No. 165a)
protection of plant varieties and animal
9. Invention created pursuant to a commission
breeds and a system of community - SEC. 30. Inventions Created Pursuant to a
intellectual rights protection; Commission.
- 22.5. Aesthetic creations; and - 30.1. The person who commissions the work
- 22.6. Anything which is contrary to public shall own the patent, unless otherwise
order or morality. (Sec. 8, R.A. No. 165a) provided in the contract.
** Why are these non-patentable? - 30.2. In case the employee made the
- These are generic. invention in the course of his employment
contract, the patent shall belong to:
6. First to file rule (a) The employee, if the inventive activity is
- SEC. 29. First to File Rule. - If two (2) or
not a part of his regular duties even if
more persons have made the invention
the employee uses the time, facilities
separately and independently of each other,
and materials of the employer.
the right to the patent shall belong to the
(b) The employer, if the invention is the
person who filed an application for such
result of the performance of his
invention, or where two or more
regularly-assigned duties, unless there is
applications are filed for the same
an agreement, express or implied, to the
invention, to the applicant who has the
contrary. (n)
earliest filing date or, the earliest priority
date. (3rd sentence, Sec. 10, R.A. No. 165a.) 10. Patent infringement
- SEC. 76. Civil Action for Infringement.
**Prior tempore, potior jure. He who is before in - 76.1. The making, using, offering for sale,
time, is preferred in right. selling, or importing a patented product or
7. Right of priority a product obtained directly or indirectly
- SEC. 31. Right of Priority. - An application from a patented process, or the use of a
for patent filed by any person who has patented process without the authorization
previously applied for the same invention in of the patentee constitutes patent
another country which by treaty, infringement. Provided, That, this shall not
convention, or law affords similar privileges apply to instances covered by Sections 72.1
to Filipino citizens (rule on reciprocity – if a and 72.4 (Limitations of Patent Rights);
foreign country grants the same privileges Section 74 (Use of Invention by
to Filipinos, the same privilege will be Government); Section 93.6 (Compulsory
accorded to that at the citizen of the foreign Licensing); and Section 93-A (Procedures on
country by reason of our membership of Issuance of a Special Compulsory License
state.), shall be considered as filed as of the under the TRIPS Agreement) of this Code.
date of filing the foreign application: - Patent infringement is ordinarily
Provided, That: understood to mean as the unauthorized
(a) the local application expressly replication or use of a patented invention or
claims priority; process.
(b) it is filed within twelve (12)
months from the date the earliest
foreign application was filed; and
(c) a certified copy of the foreign
application together with an English
translation is filed within six (6)
months from the date of filing in the
Philippines. (Sec. 15, R.A. No. 165a)
 - 76.2. Any patentee, or anyone possessing - In cases of literal infringement, every
any right, title or interest in and to the limitation recited in a patent claim is found
patented invention, whose rights have been in the infringing device (or process). The
infringed, may bring a civil action before a infringing product literally has every feature
court of competent jurisdiction, to recover that is in the claims of the patent. It is very
from the infringer such damages sustained infrequent that an infringer will
thereby, plus attorney’s fees and other unabashedly and directly copy and sell the
expenses of litigation, and to secure an exact same product as the patent holder -
injunction for the protection of his rights. although copycat cases do occur, especially
- 76.3. If the damages are inadequate or when the infringer is someone in another
cannot be readily ascertained with country. More often, when infringement
reasonable certainty, the court may award disputes involving literal infringement
by way of damages a sum equivalent to escalate to the level of litigation, there is
reasonable royalty. usually some other underlying issue or
- 76.4. The court may, according to the potential defense to the infringement
circumstances of the case, award damages allegations. For instance, the accused
in a sum above the amount found as actual infringer might raise the defense that they
damages sustained: Provided, That the have licensed the right to make or sell the
award does not exceed three (3) times the product from the patent holder, or that the
amount of such actual damages. patent in question is invalid.
- 76.5. The court may, in its discretion, order - Literal infringement:
that the infringing goods, materials and i. exists when every limitation recited
implements predominantly used in the in a patent claim is found in the
infringement be disposed of outside the infringing device (or process).
channels of commerce or destroyed, ii. means that each and every element
without compensation; and recited in a claim has identical
- 76.6. Anyone who actively induces the correspondence in the allegedly
infringement of a patent or provides the infringing device or process.
infringer with a component of a patented iii. a claim is literally infringed if the
product or of a product produced because accused product or process includes
of a patented process knowing it to be all elements or limitations of the
especially adopted for infringing the claim.
patented invention and not suitable for b. Doctrine of equivalents infringement
substantial non-infringing use shall be liable - One of the principal concerns with relying
as a contributory infringer and shall be on the literal language of the claims in a
jointly and severally liable with the patent is that, even though you avoid literal
infringer. (Sec. 42, R.A. No. 165a) infringement, you may still infringe the
patent under the "doctrine of equivalents."
** What can the court award to the one who
The "doctrine of equivalents" is a judicially
would file a case for infringement of patent? What
created doctrine having a three part
will be the right of the person whose patent has
"function/way/result" substantial identity
been infringed?
test embodying the following steps:
- Money for the actual damages by injury
1. Determine whether the accused device
caused to the owner of the patent.
or process achieves substantially the same
11. Tests of patent infringement result as the claimed invention. If it does
- To determine the presence of infringement, literal not, the infringement inquiry ends.
infringement must be proven. If literal infringement 2. Determine whether the accused device
exists, the defendant is liable. If there is no literal or process performs substantially the same
infringement, the doctrine of equivalents will apply. function as the claimed invention. If it does
not, the infringement inquiry ends.
a. Literal Infringement
3. Determine whether the accused device
- The term "literal infringement" means that
or process operates in substantially the
each and every element recited in a claim
same way as the claimed invention. If it
has identical correspondence in the
does not, the infringement inquiry ends.
allegedly infringing device or process.
** Invention / Prior invention by incorporating its
innovative concept in “substantially the same way
to achieve substantially the same result and
function.”
- The doctrine of equivalents provides that an
infringement also takes place when a device
appropriates a prior invention by
incorporating its innovative concept and,
although with some modification and
change, performs substantially the same
function in substantially the same way to
achieve substantially the same result.
- The allegations are that the accused
infringing product doesn’t necessarily meet
every limitation in the claims contained in
the issued patent, but the accused
infringing product is an equivalent of the
patented product. Under the doctrine of
equivalents, if the two products are
substantially the same, work in the same
way and accomplish the same result, then
the two products are equivalents of each
other for the purposes of infringement
under the doctrine of equivalents.
- While the doctrine of equivalents may seem
straight forward, in application this is
hardly ever the case. What is and is not
equivalent often comes down to a battle of
the experts, with each side of the litigation
strongly arguing for their position. You will
need experienced patent litigation lawyers
on your side to help champion your patent
infringement claims.
- For the purpose of determining the extent
of protection conferred by the patent, due
account shall be taken of elements which
are equivalent to the elements expressed in
the claims, so that a claim shall be
considered to cover not only all the
elements as expressed therein, but also
equivalents.
B. THE LAW ON TRADEMARKS, SERVICE MARKS, organizations engaged in trade or
AND TRADE NAMES commerce.
2. Mode of creation of right
1. Definition of Terms - Valid Registration of right to the Bureau of
a. Trademark Trademarks.
- Includes any word, name, symbol, emblem, - The rights in a mark shall be acquired
sign or device or any combination thereof through registration made validly in
adopted and used by a manufacturer or accordance with the provisions of this law.
merchant to identify his goods and
**
distinguish them from those manufactured,
sold or dealt in by others. 3. Non-registrable marks
- means any visible sign capable of - A mark cannot be registered if it:
distinguishing the goods (trademark) of an a) Consists of immoral, deceptive or
enterprise and shall include a stamped or scandalous matter, or matter which
marked container of goods; (Sec. 38, R.A. may disparage or falsely suggest a
No. 166a) connection with persons, living or
b. Service mark dead, institutions, beliefs, or
- A mark used in the sale or advertising of national symbols, or bring them into
services to identify the services of one contempt or disrepute;
person and distinguish them from the b) Consists of the flag or coat of arms
services of others and includes without or other insignia of the Philippines or
limitation the marks, names, symbols, titles, any of its political subdivisions, or of
designations, slogans, character names, any foreign nation, or any
and distinctive features of radio or other simulation thereof;
advertising. c) Consists of a name, portrait or
- 121.1. means any visible sign capable of signature identifying a particular
distinguishing the services (service mark) of living individual except by his written
an enterprise and shall include a stamped consent, or the name, signature, or
or marked container of goods; (Sec. 38, R.A. portrait of a deceased President of
No. 166a) the Philippines, during the life of his
c. Collective mark widow, if any, except by written
- 121.2. "Collective mark" means any visible consent of the widow;
sign designated as such in the application d) Is identical with a registered mark
for registration and capable of belonging to a different proprietor
distinguishing the origin or any other or a mark with an earlier filing or
common characteristic, including the priority date, in respect of: cd
quality of goods or services of different i. The same goods or services,
enterprises which use the sign under the or
control of the registered owner of the ii. Closely related goods or
collective mark; (Sec. 40, R.A. No. 166a) services, or
d. Tradename iii. If it nearly resembles such a
- 121.3. "Trade name" means the name or mark as to be likely to
designation identifying or distinguishing an deceive or cause confusion;
enterprise; (Sec. 38, R.A. No. 166a) e) Is identical with, or confusingly
- Includes individual names and surnames, similar to, or constitutes a
firm names, tradenames, devices or words translation of a mark which is
used by manufacturers, industrialists, considered by the competent
merchants, agriculturists, and others to authority of the Philippines to be
identify their business, vocations or well-known internationally and in
occupations; the names or titles lawfully the Philippines, whether or not it is
adopted and used by natural or juridical registered here, as being already the
persons, unions, and any manufacturing, mark of a person other than the
industrial, commercial, agricultural or other applicant for registration, and used
 for identical or similar goods or themselves or factors that affect
services: Provided, That in their intrinsic value;
determining whether a mark is well- l) Consists of color alone, unless
known, account shall be taken of the defined by a given form; or
knowledge of the relevant sector of m) Is contrary to public order or
the public, rather than of the public morality.
at large, including knowledge in the - As regards signs or devices mentioned in
Philippines which has been obtained paragraphs (j), (k), and (l), nothing shall
as a result of the promotion of the prevent the registration of any such sign or
mark; device which has become distinctive in
f) Is identical with, or confusingly relation to the goods for which registration
similar to, or constitutes a is requested as a result of the use that have
translation of a mark considered been made of it in commerce in the
well-known in accordance with the Philippines. The Office may accept as prima
preceding paragraph, which is facie evidence that the mark has become
registered in the Philippines with distinctive, as used in connection with the
respect to goods or services which applicant's goods or services in commerce,
are not similar to those with respect proof of substantially exclusive and
to which registration is applied for: continuous use thereof by the applicant in
Provided, That use of the mark in commerce in the Philippines for five (5)
relation to those goods or services years before the date on which the claim of
would indicate a connection distinctiveness is made.
between those goods or services, - The nature of the goods to which the mark
and the owner of the registered is applied will not constitute an obstacle to
mark: Provided further, That the registration. (Sec. 4, R.A. No. 166a)
interests of the owner of the
4. Term of trademark
registered mark are likely to be
- SEC. 145. Duration. - A certificate of
damaged by such use;
registration shall remain in force for ten
g) Is likely to mislead the public,
(10) years: Provided, That the registrant
particularly as to the nature, quality,
shall file a declaration of actual use and
characteristics or geographical
evidence to that effect, or shall show valid
origin of the goods or services;
reasons based on the existence of obstacles
h) Consists exclusively of signs that are
to such use, as prescribed by the
generic for the goods or services
Regulations, within one (1) year from the
that they seek to identify;
fifth anniversary of the date of the
i) Consists exclusively of signs or of
registration of the mark. Otherwise, the
indications that have become
mark shall be removed from the Register by
customary or usual to designate the
the Office. (Sec. 12, R.A. No. 166a)
goods or services in everyday
- SEC. 146. Renewal. - 146.1. A certificate of
language or in bona fide and
registration may be renewed for periods of
established trade practice;
ten (10) years at its expiration upon
j) Consists exclusively of signs or of
payment of the prescribed fee and upon
indications that may serve in trade
filing of a request. The request shall contain
to designate the kind, quality,
the following indications:
quantity, intended purpose, value,
(a) An indication that renewal is sought;
geographical origin, time or
(b) The name and address of the registrant
production of the goods or rendering
or his successor-in-interest, hereafter
of the services, or other
referred to as the "right holder";
characteristics of the goods or
(c) The registration number of the
services;
registration concerned;
k) Consists of shapes that may be
(d) The filing date of the application which
necessitated by technical factors or
resulted in the registration concerned to be
by the nature of the goods
renewed;
 (e) Where the right holder has a about the source of the goods and/or
representative, the name and address of services.
that representative; - Infringement of trademark is a form of
(f) The names of the recorded goods or unfair competition (Clarke vs. Manila Candy
services for which the renewal is requested Co., 36 Phil. 100, 106). Sec. 22 of Republic
or the names of the recorded goods or Act No. 166, otherwise known as the
services for which the renewal is not Trademark Law, defines what constitutes
requested, grouped according to the classes infringement:
of the Nice Classification to which that - Sec. 22. Infringement, what constitutes. —
group of goods or services belongs and Any person who shall use, without the
presented in the order of the classes of the consent of the registrant, any reproduction,
said Classification; and counterfeit, copy or colorable imitation of
(g) A signature by the right holder or his any registered mark or trade-name in
representative. connection with the sale, offering for sale,
or advertising of any goods, business or
5. Trademark infringement
services on or in connection with which such
- (Section 155) Any person who shall, without
use is likely to cause confusion or mistake or
the consent of the owner of the registered
to deceive purchasers or others as to the
mark:
source or origin of such goods or services, or
- 155.1. Use in commerce any reproduction,
identity of such business; or reproduce,
counterfeit, copy, or colorable imitation of a
counterfeit, copy or colorably imitate any
registered mark or the same container or a
such mark or trade-name and apply such
dominant feature thereof in connection
reproduction, counterfeit, copy, or colorable
with the sale, offering for sale, distribution,
imitation to labels, signs, prints, packages,
advertising of any goods or services
wrappers, receptacles or advertisements
including other preparatory steps necessary
intended to be used upon or in connection
to carry out the sale of any goods or
with such goods, business or services, shall
services on or in connection with which
be liable to a civil action by the registrant
such use is likely to cause confusion, or to
for any or all of the remedies herein
cause mistake, or to deceive; or
provided. (Emphasis supplied.)
- 155.2. Reproduce, counterfeit, copy or
- This definition implies that only registered
colorably imitate a registered mark or a
trade marks, trade names and service
dominant feature thereof and apply such
marks are protected against infringement
reproduction, counterfeit, copy or colorable
or unauthorized use by another or others.
imitation to labels, signs, prints, packages,
The use of someone else's registered
wrappers, receptacles or advertisements
trademark, trade name or service mark is
intended to be used in commerce upon or
unauthorized, hence, actionable, if it is done
in connection with the sale, offering for
"without the consent of the registrant."
sale, distribution, or advertising of goods or
(Ibid.)
services on or in connection with which
- Trademark infringement is the
such use is likely to cause confusion, or to
unauthorized use in commerce of a
cause mistake, or to deceive, shall be liable
registered trademark or a copy or colorable
in a civil action for infringement by the
imitation thereof, which results in the
registrant for the remedies hereinafter set
likelihood of confusion among the
forth: Provided, That the infringement takes
consuming public.
place at the moment any of the acts stated
- The elements of trademark infringement
in Subsection 155.1 or this subsection are
are:
committed regardless of whether there is
(1) a registered trademark in the
actual sale of goods or services using the
Philippines,
infringing material. (Sec. 22, R.A. No 166a)
(2) plaintiff’s ownership of said mark, and
- The unauthorized use of a trademark or
(3) use of the trademark or imitation
service mark on or in connection with goods
thereof by a third person, which results in
and/or services in a manner that is likely to
likelihood of confusion.
cause confusion, deception, or mistake
6. Tests of trademark infringement - The holistic test requires the court to
a. Dominancy test consider the entirety of the marks as
- The Supreme Court describes the applied to the products, including the labels
dominancy test as follows: and packaging, in determining confusing
The dominancy test focuses on 'the similarity.
similarity of the prevalent or dominant
7. Differences between trademark
features of the competing trademarks that
infringement and unfair competition
might cause confusion, mistake, and
a. Trademark infringement defined
deception in the mind of the purchasing
- It is the unauthorized use in commerce of a
public. Duplication or imitation is not
registered trademark or a copy or colorable
necessary; neither is it required that the
imitation thereof, which results in the
mark sought to be registered suggests an
likelihood of confusion among the
effort to imitate. Given more consideration
consuming public. The elements of
are the aural and visual impressions created
trademark infringement are: (1) a
by the marks on the buyers of goods, giving
registered trademark in the Philippines, (2)
little weight to factors like prices, quality,
plaintiff’s ownership of said mark, and (3)
sales outlets, and market segments.
use of the trademark or imitation thereof by
- It has been consistently held that the
a third person, which results in likelihood of
question of infringement of a trademark is
confusion.
to be determined by the test of dominancy.
- SECTION 155. Infringement. Any person
Similarity in size, form and color, while
who shall, without the consent of the owner
relevant, is not conclusive. If the competing
of the registered mark:
trademark contains the main or essential or
a. Use in commerce any reproduction,
dominant features of another, and
counterfeit, copy, or colorable imitation of a
confusion and deception is likely to result,
registered mark or the same container or a
infringement takes place. Duplication or
dominant feature thereof in connection
imitation is not necessary; nor it is
with the sale, offering for sale, distribution,
necessary that the infringing label should
advertising of any goods or services
suggest an effort to imitate. [C. Neilman
including other preparatory steps necessary
Brewing Co. vs. Independent Brewing Co.,
to carry out the sale of any goods or
191 F., 489, 495, citing Eagle White Lead
services on or in connection with which such
Co., vs. Pflugh (CC) 180 Fed. 579]. The
use is likely to cause confusion, or to cause
question at issue in cases of infringement of
mistake, or to deceive; or
trademarks is whether the use of the marks
b. Reproduce, counterfeit, copy or
involved would be likely to cause confusion
colorably imitate a registered mark or a
or mistakes in the mind of the public or
dominant feature thereof and apply such
deceive purchasers. (Auburn Rubber
reproduction, counterfeit, copy or colorable
Corporation vs. Honover Rubber Co., 107 F.
imitation to labels, signs, prints, packages,
2d 588; . . . .) (Emphasis supplied.)
wrappers, receptacles or advertisements
- The dominancy test focuses on the similarity
intended to be used in commerce upon or in
of the prevalent features of the competing
connection with the sale, offering for sale,
trademarks that might cause confusion.
distribution, or advertising of goods or
b. Holistic test
services on or in connection with which such
- The holistic or totality test necessitates a
use is likely to cause confusion, or to cause
'consideration of the entirety of the marks
mistake, or to deceive, shall be liable in a
as applied to the products, including the
civil action for infringement by the
labels and packaging, in determining
registrant for the remedies hereinafter set
confusing similarity. The discerning eye of
forth: Provided, That the infringement takes
the observer must focus not only on the
place at the moment any of the acts stated
predominant words, but also on the other
in Subsection 155.1 (a) or this subsection
features appearing on both labels so that
are committed regardless of whether there
the observer may draw conclusion on
is actual sale of goods or services using the
whether one is confusingly similar to the
infringing material. (Sec. 22, R.A. No 166a)
other.
b. Unfair competition
- From jurisprudence, unfair competition has any other feature of their appearance,
been defined as the passing off (or palming which would be likely to influence
off) or attempting to pass off upon the purchasers to believe that the goods
public of the goods or business of one offered are those of a manufacturer or
person as the goods or business of another dealer, other than the actual
with the end and probable effect of manufacturer or dealer, or who
deceiving the public. The essential elements otherwise clothes the goods with such
of unfair competition are (1) confusing appearance as shall deceive the public
similarity in the general appearance of the and defraud another of his legitimate
goods; and (2) intent to deceive the public trade, or any subsequent vendor of such
and defraud a competitor. goods or any agent of any vendor
- Unfair competition is a form of copying and engaged in selling such goods with a like
making false statements by one who passes purpose;
off his own goods for those of another that (b) Any person who by any artifice, or
has an established goodwill. The copying device, or who employs any other
and or passing off may include copying of means calculated to induce the false
the trademark or giving one’s own goods belief that such person is offering the
the general appearance of another, which services of another who has identified
causes likelihood of confusion. The elements such services in the mind of the public;
of unfair competition are: (1) confusing or
similarity in the appearance of the goods (c) Any person who shall make any false
involved, and (2) intent to deceive the public statement in the course of trade or who
and defraud a competitor. shall commit any other act contrary to
- Unfair competition is the employment of good faith of a nature calculated to
deception or any other means contrary to discredit the goods, business or services
good faith by which a person shall pass off of another.
the goods manufactured by him or in which - 168.4. The remedies provided by Sections
he deals, or his business, or services, for 156, 157 and 161 shall apply mutatis
those of another who has already mutandis. (Sec. 29, R.A. No. 166a)
established goodwill for his similar goods, c. Trademark infringement vs. unfair
business or services, or any acts calculated competition
to produce the same result. (Sec. 29, (1) Infringement of trademark is the
Republic Act No. 166, as amended.) unauthorized use of a trademark, whereas
- 168.2. Any person who shall employ unfair competition is the passing off of one's
deception or any other means contrary to goods as those of another.
good faith by which he shall pass off the (2) In infringement of trademark fraudulent
goods manufactured by him or in which he intent is unnecessary whereas in unfair
deals, or his business, or services for those competition fraudulent intent is essential.
of the one having established such goodwill, (3) In infringement of trademark the prior
or who shall commit any acts calculated to registration of the trademark is a
produce said result, shall be guilty of unfair prerequisite to the action, whereas in unfair
competition, and shall be subject to an competition registration is not necessary.
action therefor. - Put simply, trademark infringement focuses
- 168.3. In particular, and without in any way on the plaintiff’s rights in a source-
limiting the scope of protection against identifying symbol; unfair competition
unfair competition, the following shall be focuses on the marketplace effects of
deemed guilty of unfair competition: defendant’s conduct. Trademark
(a) Any person, who is selling his goods and infringement aims to assure that a mark
gives them the general appearance of owner’s exclusive rights are protected;
goods of another manufacturer or unfair competition aims to assure that
dealer, either as to the goods consumers are not deceived or confused
themselves or in the wrapping of the and that sellers are not placed at risk of
packages in which they are contained, harm from that deception or confusion.
or the devices or words thereon, or in
** Can there be trademark infringement without
unfair competition?
- Yes. It boils down to ownership of the
trademark as the issue. There can be
trademark infringement without unfair
competition, such as when the infringer
discloses on the labels containing the mark
that he manufactures the goods, thus
preventing the public from being deceived
that the goods originate from the
trademark owner (manufactured by). In a
distributor scenario, this is not unfair
competition and trademark infringement
because this information (manufactured by
and distributed by) prevents the public form
being deceived that the goods originate
from the trademark owner. There is this
exclusively distributed by/manufactured
for. So there is no unfair competition and
there is no case of confusion arising
therefrom because the same manufacturing
products are sold only the ownership of the
trademark is at issue. There is no issue of
confusion because it was disclosed, only the
ownership of the trademark is at issue in
infringement of trademark, unlike in unfair
competition.
 C. THE LAW ON COPYRIGHT lithography or other works of art; models or
designs for works of art;
(h) Original ornamental designs or models
1. Copyright defined
for articles of manufacture, whether or not
- Protects original works of authorship
registrable as an industrial design, and
including literary, dramatic, musical, and
other works of applied art;
artistic works, such as poetry, novels,
(i) Illustrations, maps, plans, sketches,
movies, songs, computer software, and
charts and three-dimensional works relative
architecture.
to geography, topography, architecture or
- Copyright (or author’s right) is a legal term
science;
used to describe the rights that creators
(j) Drawings or plastic works of a scientific
have over their literary and artistic works.
or technical character;
Works covered by copyright range from
(k) Photographic works including works
books, music, paintings, sculpture, and
produced by a process analogous to
films, to computer programs, databases,
photography; lantern slides;
advertisements, maps, and technical
(l) Audiovisual works and cinematographic
drawings. (WIPO)
works and works produced by a process
- Copyright is the legal protection extended
analogous to cinematography or any
to the owner of the rights in an original
process for making audio-visual recordings;
work. “Original work” refers to every
(m) Pictorial illustrations and
production in the literary, scientific and
advertisements;
artistic domain.
(n) Computer programs; and
- Copyright laws grant authors, artists and
(o) Other literary, scholarly, scientific and
other creators automatic protection for
artistic works.
their literary and artistic creations, from the
- 172.2. Works are protected by the sole fact
moment they create it.
of their creation, irrespective of their mode
** Under the IPL, it is the legal protection or form of expression, as well as of their
extended to the owner of the rights in an original content, quality and purpose. (Sec. 2, P.D.
work. No. 49a)
2. Original work defined 3. Mode of creation of right
- SEC. 172. Literary and Artistic Works. - a. Registration by the owner of the
172.1 Literary and artistic works, work or his/her assignees or successors-in-
hereinafter referred to as "works", are interest has the right to apply for a
original intellectual creations in the literary copyright registration.
and artistic domain protected from the b. Copyrightable works are protected
moment of their creation and shall include from the moment of their creation.
in particular:
** Independent creation in a form of expression.
(a) Books, pamphlets, articles and other
Works are protected by the sole fact of their
writings;
creation (mode of creation).
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, 4. Term of copyright
dissertations prepared for oral delivery, Type Term
whether or not reduced in writing or other 1. Copyright In the Philippines,
material form; protection copyright protection for
(d) Letters; artistic, literary and
(e) Dramatic or dramatico-musical derivative works lasts
compositions; choreographic works or during the lifetime of
the author plus 50 years
entertainment in dumb shows;
after the author’s death.
(f) Musical compositions, with or without
This term of protection
words; also applies to
(g) Works of drawing, painting, posthumous works. In
architecture, sculpture, engraving, the case of joint
 authorship, the - The author has the exclusive right to carry
economic rights shall be out, authorize or prevent the:
protected during the i. Reproduction of the work or
lifetime of the last substantial portion of the work;
surviving author plus 50 ii. Dramatization, translation,
years after such adaptation, abridgment,
author’s death.
arrangement or other
2. Works with Copyright protection
transformation of the work;
anonymous shall last for 50 years
iii. The first public distribution of
owner/creato from the date on which
r the work was first the original and each copy of the
lawfully published. If the work by sale or other forms of
work was not published, transfer of ownership;
it shall be protected for iv. Rental of the original or a
50 years counted from copy of an audio-visual or
the creation of the cinematographic work, a work
work. embodied in a sound recording, a
3. Works of Shall be protected for 25 computer program, a compilation of
applied art years from the date of data and other materials or a
its creation. musical work in graphic form,
4. Audio-visual Shall be protected for 50 irrespective of the ownership of the
works years from the date of
original or the copy which is the
publication. If it is
subject of the rental;
unpublished, it is
v. Public display of the original
protected for 50 years
from the date of or a copy of the work;
creation. vi. Public performance of the
5. Performers Performances not work; and
and incorporated in vii. Other communication to the
producers of recordings shall be public of the work.
sound protected for 50 years - It refers to the exclusive right of the right
recordings from the end of the year holder to authorize or prohibit the
in which the reproduction, distribution, exportation or
performance took place. importation, or other exploitative activities,
Sound or image and such as rental and lending, public
sound recordings and
performance, communication to the public
performances
and adaptation in cases of copyrighted
incorporated therein
work or use and storage in cases of
shall be protected for 50
years from the end of trademarks, of the by IPR protected
the year in which the creation by third parties, which have not
recording took place. previously obtained a license, within the
6. Protection for Broadcasts shall be borders of the states in which the
broadcasts protected for 20 years intellectual property right has been granted
from the date the or obtained.
broadcast took place. b. Moral rights
- Calculation of Term. — The term of - Moral rights confer the following on the
protection subsequent to the death of the author of a work:
author provided in the preceding Section i. To require that the
shall run from the date of his death or of authorship of the works be
publication, but such terms shall always be attributed to him, in particular; the
deemed to begin on the first day of January right that his name, as far as
of the year following the event which gave practicable, be indicated in a
rise to them. (Sec. 25, P.D. No. 49) prominent way on the copies, and in
connection with the public use of his
5. Two rights under copyright
a. Economic rights work;
 ii. To make any alterations of d. If the work was commissioned, the one
his work prior to, or to withhold it who commissioned the work jointly
from publication; owns it with the author/creator – but
iii. To object to any distortion, the copyright of the work remains with
mutilation or other modification of, author/creator, unless otherwise agreed
or other derogatory action in upon;
relation to, his work which would be e. In the case of audio-visual work, the
prejudicial to his honor or copyright belongs to the producer, the
reputation; and author of the scenario, the music
iv. To restrain the use of his composer, the film director, and the
name with respect to any work not author of the work adapted. However,
of his own creation or in a distorted unless otherwise agreed upon among
version of his work. the creators, the producer has the right
- Moral rights protect those non-economic to exercise copyright to the extent
interests. Moral rights are only available for required for the exhibition of the work in
literary, dramatic, musical and artistic any manner, except for the right to
works and film, as well as some collect license fees for the performance
performances. Unlike economic rights, of musical compositions, with or without
moral rights cannot be sold or otherwise words, which are incorporated into the
transferred. However, the rights holder can work.
choose to waive these rights. f. With respect to letters, the copyright
belongs to the writer subject to the
** Economic rights allow right owners to derive
following:
financial reward from the use of their works by
i. Letters and other private
others. Moral rights allow authors and creators to
communications in writing are
take certain actions to preserve and protect their
owned by the person to whom they
link with their work.
are addressed and delivered, but the
6. Ownership of copyright same cannot be published or
The owners of original literary and artistic disseminated without the consent of
works are: the writer or his heirs.
a. The author of the work; ii. However, the court may authorize
b. If the work is of joint ownership: the publication or dissemination if
i. The co-authors are the original the public goods or the interest of
owners and in the absence of justice so requires.
agreement, their rights shall be - Anonymous and Pseudonymous Works -
governed by the rules on co- For purposes of this Act, the publishers shall
ownership. be deemed to represent the authors of
ii. The author of each part is the owner articles and other writings published
of such part he/she created, if the without the names of the authors or under
work consists of parts that can be pseudonyms, unless the contrary appears,
used separately and the author of or the pseudonyms or adopted name leaves
each part can be identified. no doubts as to the author’s identity, or if
c. If the work is created in the course of the author of the anonymous works
employment: discloses his identity. (Sec. 7, P.D. 49)
i. Employee is the owner, if the work
7. Infringement of copyright
created is not part of employee’s
- Under Philippine law, copyright infringement
regular duties even if he uses the
occurs when there is a violation of any of the
time, facilities and materials of the
exclusive economic or moral rights granted to the
employer;
copyright owner. It may also consist in aiding or
ii. Employer is the owner, if the work
abetting such infringement. The IP Code also
created is the result of the
provides for the liability of a person who at the
performance of employee’s
time when copyright subsists in a work has in his
regularly-assigned duties, unless
possession an article which he knows, or ought to
otherwise agreed upon.
know, to be an infringing copy of the work for the 8. Works that can be protected by copyrights
following purposes: (copyrightable works)
(a) selling or letting for hire, or by way of Literary and Artistic Works
trade offering or exposing for sale or hire, - Original intellectual creations in the literary and
the article; artistic domain protected from the moment of their
(b) distributing the article for the purpose of creation and shall include in particular:
trade, or for any other purpose to an extent a. Books, pamphlets, articles and other
that will prejudice the rights of the writings;
copyright owner in the work; or b. Periodicals and newspapers;
(c) trade exhibit of the article in public. c. Lectures, sermons, addresses, dissertations
Remedies available to an owner of a copyright prepared for oral delivery, whether or not
against an infringer reduced in writing or other material form;
- The copyright owner can file a criminal, civil or d. Letters;
administrative action for copyright infringement. A e. Dramatic or dramatico-musical
criminal case for copyright infringement must be compositions; choreographic works or
filed in the court situated in the place where the entertainment in dumb shows;
violation occurred. The administrative suit is filed at f. Musical compositions, with or without
the Bureau of Legal Affairs at the Intellectual words;
Property Office of the Philippines. A civil g. Works of drawing, painting, architecture,
infringement lawsuit is filed in the appropriate sculpture, engraving, lithography or other
court located at the place where the defendant works of art; models or designs for works of
resides/is located, or where the plaintiff resides/is art;
located, at the option of the plaintiff. h. Original ornamental designs or models for
Penalties provided by Philippine law for copyright articles of manufacture, whether or not
infringement registrable as an industrial design, and
- Under Philippine law, copyright infringement is other works of applied art;
punishable by the following: i. Illustrations, maps, plans, sketches, charts
1. Imprisonment of between 1 to 3 years and a and three-dimensional works relative to
fine of between 50,000 to 150,000 pesos for geography, topography, architecture or
the first offense. science;
2. Imprisonment of 3 years and 1 day to six j. Drawings or plastic works of a scientific or
years plus a fine of between 150,000 to technical character;
500,000 pesos for the second offense. k. Photographic works including works
3. Imprisonment of 6 years and 1 day to 9 produced by a process analogous to
years plus a fine ranging from 500,000 to photography; lantern slides;
1,500,000 pesos for the third and l. Audiovisual works and cinematographic
subsequent offenses. works and works produced by a process
- The offending party may also be ordered to pay analogous to cinematography or any
civil damages. process for making audio-visual recordings;
- Injunction and destruction of the infringing goods m. Pictorial illustrations and advertisements;
or products can also be obtained, as well as seizure n. Computer programs; and
and impounding of any article which may serve as o. Other literary, scholarly, scientific and
evidence in the court proceedings. artistic works.
- Works are protected by the sole fact of their
** Infringing a copy of the work for the purpose of creation, irrespective of their mode or form of
selling, the moment that a person uses the work of expression, as well as of their content, quality and
another and cashing it on it, is unjust enrichment. purpose. (Sec. 2, P.D. No. 49a) cda
(A general equitable principle that no person
should be allowed to profit at another's expense Derivative Works
without making restitution for the reasonable value The following derivative works shall also be
of any property, services, or other benefits that protected by copyright:
have been unfairly received and retained.) a. Dramatizations, translations, adaptations,
abridgments, arrangements, and other
alterations of literary or artistic works; and
 b. Collections of literary, scholarly or artistic text of a legislative, administrative or legal nature,
works, and compilations of data and other as well as any official translation thereof. (n)
materials which are original by reason of Works of the Government
the selection or coordination or - No copyright shall subsist in any work of the
arrangement of their contents. (Sec. 2, [P] Government of the Philippines. However, prior
and [Q], P.D. No. 49) approval of the government agency or office
- The works referred to in paragraphs (a) and (b) of wherein the work is created shall be necessary for
Subsection 173.1 shall be protected as new works: exploitation of such work for profit. Such agency or
Provided however, That such new work shall not office may, among other things, impose as a
affect the force of any subsisting copyright upon condition the payment of royalties. No prior
the original works employed or any part thereof, or approval or conditions shall be required for the use
be construed to imply any right to such use of the for any purpose of statutes, rules and regulations,
original works, or to secure or extend copyright in and speeches, lectures, sermons, addresses, and
such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS) dissertations, pronounced, read or rendered in
courts of justice, before administrative agencies, in
Published Edition of Work
deliberative assemblies and in meetings of public
- In addition to the right to publish granted by the
character. (Sec. 9, first par., P.D. No. 49)
author, his heirs, or assigns, the publisher shall
- The author of speeches, lectures, sermons,
have a copyright consisting merely of the right of
addresses, and dissertations mentioned in the
reproduction of the typographical arrangement of
preceding paragraphs shall have the exclusive right
the published edition of the work. (n)
of making a collection of his works. (n)
9. Works that are not protected by copyrights - Notwithstanding the foregoing provisions, the
(non-copyrightable works) Government is not precluded from receiving and
Copyright protection does not cover: holding copyrights transferred to it by assignment,
a. Idea, procedure, system method or bequest or otherwise; nor shall publication or
operation, concept, principle, discovery or republication by the Government in a public
mere data as such, even if they are document of any work in which copyright is
expressed, explained, illustrated or subsisting be taken to cause any abridgment or
embodied in a work; annulment of the copyright or to authorize any use
b. News of the day and other miscellaneous or appropriation of such work without the consent
facts having the character of mere items of of the copyright owner. (Sec. 9, third par., P.D. No.
press information; 49)
c. Official text of a legislative, administrative
or legal nature, as well as any official 10. Doctrine of fair works
- The fair use of a copyrighted work for criticism,
translation thereof;
comment, news, reporting, teaching including
d. Work of the Philippine Government, unless
multiple copies for classroom use, scholarship,
there was a prior approval by the
research and similar purposes is not an
appropriate government agency; and
infringement of copyright.
e. Statutes, rules and regulations, and
- Decompilation, which is the reproduction of the
speeches, lectures, sermons, addresses, and
code and translation of the forms of the computer
dissertations, pronounced, read or rendered
programs to achieve the inter-operability of an
in courts of justice, before administrative
independently created computer program with
agencies, in deliberative assemblies and in
other programs, may also constitute fair use.
meetings of public character.
- To determine whether use of a work constitutes
Unprotected Subject Matter
fair use, the following factors are considered:
- Notwithstanding the provisions of Sections 172
1. The purpose and character of the use,
and 173, no protection shall extend, under this law,
including whether such use is of a
to any idea, procedure, system, method or
commercial nature or is for non-profit
operation, concept, principle, discovery or mere
educational purposes;
data as such, even if they are expressed, explained,
2. The nature of the copyrighted work;
illustrated or embodied in a work; news of the day
3. The amount and substantiality of the
and other miscellaneous facts having the character
portion used in relation to the copyrighted
of mere items of press information; or any official
work as a whole; and
 4. The effect of the use upon the potential
market for or value of the copyrighted
work.
** Fair use is any copying of copyrighted material
done for a limited and transformative purpose.
** Ex. When you gave a criticism or comment
regarding Reader’s Digest and you reproduced it.
Can this be considered as infringement of the
copyright? Do you need to request permission from
the copyright owner?
- No.
** Doctrine of Fair Use is the defense against a
copyright claim. Fair use has been defined as a
privilege to use the copyrighted material in a
reasonable manner without the consent of the
copyright owner or as copying the theme or ideas
rather than their expression.