INTELLECTUAL PROPERTY CODE - DEAN NILO T.

DIVINA distribution or advertising of goods or services which is likely to cause confusion,

mistake or deception among the buyers or consumers can be considered as
• ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC.VS. RENAUS trademark infringement.
COINTREAU & CIE AND LE CORDON BLEU INT'L, B.V On the other hand, unfair competition has been defined as the passing off (or palming
G.R. NO. 185830. JUNE 5, 2013 J. PERLAS-BERNABE off) or attempting to pass off upon the public of the goods or business of one person
Under Section 2 of RA No. 166, in order to register a trademark, one must be the as the goods or business of another with the end and probable effect of deceiving the
owner thereof and must have actually used the mark in commerce in the Philippines public.
for two (2) months prior to the application for registration. It is clear that actual use
in commerce is the test of ownership. Thus, under R.A. No. 166, one may be an owner • CENTURY CHINESE MEDICINE CO., ET AL. VS. PEOPLE OF THE PHILIPPINES AND
of a mark due to its actual use but may not yet have the right to register such LING NA NAU
ownership here due to the owner’s failure to use the same in the Philippines for two G.R. NO. 188526; NOVEMBER 11, 2013 J. PERALTA
(2) months prior to registration. Where the Search and Seizure Warrants are applied for in anticipation of criminal
actions for violation of the intellectual property rights under RA 8293, otherwise
However, under the Paris Convention to which the Philippines is a signatory, a trade known as the Intellectual Property Code, Rule 126 of the Rules of Criminal Procedure
name of a national of a State that is a party to the Paris Convention, whether or not and not the Rules on the Issuance of the Search and Seizure in Civil Actions for
the trade name forms part of a trademark, is protected “without the obligation of Infringement of Intellectual Property Rights applies.
filing or registration".
• TAIWAN KOLIN CORPORATION, LTD. vs. KOLIN ELECTRONICS CO., INC.,
• BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG VS. PHILIPPINE SHOE EXPO G.R. No. 209843, March 25, 2015, J. Velasco, Jr.
MARKETING CORPORATION In trademark registration, while both competing marks refer to the word “KOLIN”
G.R. NO. 194307, NOVEMBER 20, 2013 J. PERLAS-BERNABE written in upper case letters and in bold font, but one is italicized and colored black
The registration of trademark, by itself, is not a mode of acquiring ownership. If the while the other is white in pantone red color background and there are differing
applicant is not the owner of the trademark, he has no right to apply for its features between the two, registration of the said mark could be granted. It is
registration. Registration merely creates a prima facie presumption of the validity of hornbook doctrine that emphasis should be on the similarity of the products involved
the registration, of the registrant’s ownership of the trademark, and of the exclusive and not on the arbitrary classification or general description of their properties or
right to the use thereof. Such presumption, just like the presumptive regularity in the characteristics. The mere fact that one person has adopted and used a trademark on
performance of official functions, is rebuttable and must give way to evidence to the his goods would not, without more, prevent the adoption and use of the same
contrary. trademark by others on unrelated articles of a different kind.

• REPUBLIC GAS CORPORATION, et al. vs. PETRON CORPORATION, PILIPINAS SHELL

PETROLEUM CORPORATION AND SHELL INTERNATIONAL PETROLEUM COMPANY, • UFC PHILIPPINES, INC. V. BARRIO FIESTA MANUFACTURING CORPORATION
LIMITED G.R. No. 194062, June 17, 2013 J. Peralta G.R. NO. 198889, JANUARY 20, 2016, LEONARDO-DE CASTRO, J:
Trademark infringement is the unauthorized use in commerce any reproduction, The test of dominancy is now explicitly incorporated into law in Section 155.1 of the
counterfeit, copy or colorable imitation of a registered mark. The mere unauthorized Intellectual Property Code which defines infringement as the "colorable imitation of
use of a container bearing a registered trademark in connection with the sale, a registered mark x x x or a dominant feature thereof.
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 liable therefor. Although liable for unfair competition, the Court deems it apt to clarify
Under the dominancy test, if the competing trademark contains the main or essential that Co was properly exculpated from the charge of trademark infringement
or dominant features of another, and confusion and deception is likely to result, considering that the registration of the trademark "Greenstone" – essential as it is in
infringement takes place. Actual confusion is not required. Only likelihood of a trademark infringement case – was not proven to have existed during the time the
confusion on the part of the buying public is necessary so as to render two marks acts complained of were committed.
confusingly similar so as to deny the registration of the junior mark.
• ABS-CBN CORPORATION v. FELIPE GOZON, GILBERTO R. DUAVIT, JR. MARISSA L.
• SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG GRAND TOWER FLORES, JESSICA SOHO, GRACE DELA PENA-REYES, JOHN OLIVER T. MANALASTAS,
CORPORATION) and SHANG PROPERTIES, INC. (formerly EDSA PROPERTIES JOHN DOES AND JANE DOES G.R. No. 195956, March 11, 2015, LEONEN, J.
HOLDINGS, INC.), vs. ST. FRANCIS DEVELOPMENT CORPORATION News or the event itself is not copyrightable. However, an event can be captured and
G.R. No. 190706, July 21, 2014, J. Perlas-Bernabe presented in a specific medium. News as expressed in a video footage is entitled to
Section 168 of Republic Act No. 8293, otherwise known as the “Intellectual Property copyright protection.
Code of the Philippines” (IP Code), provides for the rules and regulations on unfair
competition. Section 168.2 proceeds to the core of the provision, describing forthwith • GMA NETWORK, INC. vs. CENTRAL CATV, INC.
who may be found guilty of and subject to an action of unfair competition — that is, G.R. No. 176694, July 18, 2014, J. Brion
“any person who shall employ deception or any other means contrary to good faith The must carry rule mandates that the local television (TV) broadcast signals of an
by which he shall pass off the goods manufactured by him or in which he deals, or his authorized TV broadcast station, such as the GMA Network, Inc., should be carried in
business, or services for those of the one having established such goodwill, or who full by the cable antenna television (CATV) operator, without alteration or deletion.
shall commit any acts calculated to produce said result x x x.” In this case, the Court In this case, the Central CATV, Inc. was found not to have violated the must-carry rule
finds the element of fraud to be wanting; hence, there can be no unfair competition. when it solicited and showed advertisements in its cable television (CATV) system.
Such solicitation and showing of advertisements did not constitute an infringement
• ROBERTO CO vs. KENG HUAN JERRY YEUNG and EMMA YEUNG of the “television and broadcast markets” under Section 2 of E.O. No. 205.
G.R. No. 212705, September 10, 2014, J. Perlas-Bernabe
Unfair competition is defined as the passing off (or palming off) or attempting to pass • MICROSOFT CORPORATION v. ROLANDO D. MANANSALA AND/OR MEL
off upon the public of the goods or business of one person as the goods or business MANANSALA, DOING BUSINESS AS DATAMAN TRADING COMPANY AND/OR
of another with the end and probable effect of deceiving the public. This takes place COMIC ALLEY
where the defendant gives his goods the general appearance of the goods of his G.R. No. 166391, October 21, 2015, BERSAMIN, J.
competitor with the intention of deceiving the public that the goods are those of his The mere sale of the illicit copies of the software programs was enough by itself to
competitor. show the existence of probable cause for copyright infringement.

Here, it has been established that Co conspired with the Laus in the sale/distribution • SISON OLANO, ET. AL. V. LIM ENG CO
of counterfeit Greenstone products to the public, which were even packaged in G.R. NO. 195835, MARCH 14, 2016, REYES, J:
bottles identical to that of the original, thereby giving rise to the presumption of Copyright infringement is committed by any person who shall use original literary or
fraudulent intent. In light of the foregoing definition, it is thus clear that Co, together artistic works, or derivative works, without the copyright owner's consent in such a
with the Laus, committed unfair competition, and should, consequently, be held manner as to violate the foregoing copy and economic rights. For a claim of copyright
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 infringement to prevail, the evidence on record must demonstrate: (1) ownership of application to revive the same. Section 133.4 of the Intellectual Property Code even
a validly copyrighted material by the complainant; and (2) infringement of the provides for a shorter period of three (3) months within which to file for revival. In
copyright by the respondent. this case, petition for revival of the patent application should be denied. The rules do
not provide any exception that could extend this four (4)-month period to 13 years.
Certificate of Registration Nos. I-2004-13 and I-2004-14 pertain to class work "I" The right of priority given to a patent applicant is only relevant when there are two
under Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans, sketches, or more conflicting patent applications on the same invention. Because a right of
charts and three-dimensional works relative to geography, topography, architecture priority does not automatically grant letters patent to an applicant, possession of a
or science." As such, LEC's copyright protection there under covered only the hatch right of priority does not confer any property rights on the applicant in the absence
door sketches/drawings and not the actual hatch door they depict. of an actual patent.
A hatch door, by its nature is an object of utility. It is defined as a small door, small
gate or an opening that resembles a window equipped with an escape for use in case • CATERPILLAR, INC v. SAMSON,
of fire or emergency. It is thus by nature, functional and utilitarian serving as egress G.R. No. 205972, November 09, 2016
access during emergency. It is not primarily an artistic creation but rather an object An action for the cancellation of trademark is a remedy available to a person who
of utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as believes that he is or will be damaged by the registration of a mark. On the other
a whole, is not eligible for copyright. hand, the criminal actions for unfair competition involved the determination of
whether or not Samson had given his goods the general appearance of the goods of
• EI DU PONT DE NEMOURS V. DIR. FRANCISCO, Caterpillar, with the intent to deceive the public or defraud Caterpillar as his
G.R. NO. 174379, AUGUST 31, 2016 competitor. In the suit for the cancellation of trademark, the issue of lawful
It is the Rules of Court, not the 1962 Revised Rules of Practice, which governs the registration should necessarily be determined, but registration was not a
Court of Appeals' proceedings in appeals from the decisions of the Director-General consideration necessary in unfair competition. Indeed, unfair competition is
of the Intellectual Property Office regarding the revival of patent applications. Rule committed if the effect of the act is "to pass off to the public the goods of one man
19 of the Rules of Court provides that a court has the discretion to determine whether as the goods of another; it is independent of registration. As fittingly put in R.F. &
to give due course to an intervention. If an administrative agency's procedural rules Alexander & Co. v. Ang,"one may be declared unfair competitor even if his competing
expressly prohibit an intervention by third parties, the prohibition is limited only to trade-mark is registered."
the proceedings before the administrative agency. Once the matter is brought before
the Court of Appeals in a petition for review, any prior prohibition on intervention
does not apply since the only question to be determined is whether the intervenor
has established a right to intervene under the Rules of Court. In this case, respondent
Therapharma, Inc. filed its Motion for Leave to Intervene before the Court of Appeals,
not before the Intellectual Property Office and therefore, the intervention of
Therapharma, Inc.is not prohibited.

Rule 930 of the Rules and Regulations on Inventions, and Rule 929 of the Revised
Implementing Rules and Regulations for Patents, Utility Models and Industrial Design
provide for a period of four (4) months from the date of abandonment of a patent
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