Law On IP Reviewer

Professor: Atty. Rodolfo P. Soriano Jr.
Transcribers:
Marc Roby de Chavez (MARX)
Mon Cristhoper Pasia (MON)

Angela dela Cruz (ANGELA)
Jennielyn Reyes (JEN)
April Gerero (APRIL)
INTELLECTUAL PROPERTY LAW REVIEWER BY
ANGELA, APRIL, JEN AND MON
IPL1
O Ginebra San Miguel
O 350 c.c. flint bottles of
The Intellectual Property Law consists of 3 subjects/courses:
1. TRADEMARK (easiest) TAKE NOTE CLASS: that marked or stamped container of
2. COPYRIGHT (more difficult) goods can be subject of a trademark.
3. PATENT (most difficult)
What is the nature of the action that La Tondeña filed against
The basic law in IPL is RA 8293 also known as the Intellectual Washington? The procedure what is the type of action? What
Property Code of the Philippines. do you call this type of action?
Replevin.
What is a trademark?
Any visible sign capable of distinguishing the goods What is replevin?
(trademark) or services (service mark) of an It is a possessory action. In the replevin case the
enterprise and shall include a stamped or marked issue is possession, but if a person is asking in the
container of goods. possession of property what is the implication? The
person is the owner of the personal property subject
X is a chemist by profession particularly a perfumer. A of replevin.
perfumer makes perfume. X discovered a certain perfume by
combining the extracts from cellar woods and jasmine. The Why did La Tondeña filed replevin against Washington?
cellar wood was the base tone and the jasmine was the top La Tondeña believes that it is the owner of the
tone. With respect to perfume there are many ingredients for bottles subject of replevin.
perfume and the perfume consists of 3 levels/bases/tones.
The first is high tone or the pass tone which is the smell when
How many bottles are involved?
you first apply the perfume to your skin. The second one is 18,000 bottles
the medium tone and the last one would be the base tone
(pinakahuling nawawalang amoy). He named this perfume Can you think of underlying interest aside from claim of
eternity. ownership by La Tondeña who filed against Washington fro
replevin? Is there any other interest? What did La Tondeña
Can he register the fragrance of the perfume as trademark? expects of the activities of Washington?
What is the basis in saying that the fragrance of the perfume That La Tondeña is refilling the bottles with its own
can be registered as a trademark? products called “Gin Seven” (that’s the main reason)
No, because it is not visible sign.
Did La Tondeña transfer ownership of the marking product
Supposing that a person by the name of Jopan compose a when it sold them the bottles? When it sold its product in the
music entitled “Nocturna…” Can he register his composition market to the public, did La Tondeña transfer ownership of
as a trademark? Legal basis? Can he register the the marked bottles?
music/melody as trademark? Yes, reason? What laws involve? RA 623 “An Act to
No, because it is not visible sign. Regulate the use of duly stamped or marked bottles
of another similar things” So La Tondeña trasferren
That’s why the law has its own definition. You don’t ignore or ownership of the marked bottles when it sold its
take for granted definitions of certain terms in the law products to the market. Why, what was the
because that is very important. So the fragrance of the reasoning of the court?
perfume as well as the music of Jopan cannot be registered as
trademark because under the definition provided for in IP Let say I’m a retailer, I have sales outlet and I’m selling Coca
Cod, “MARK” is any visible sign capable of distinguishing the Cola products and you are the consumer and you buy Coca
goods and services of enterprise and that includes marked or Cola products from me the Coca Cola product in bottle. When
stamped container of goods. you brought the product, you also get the ownership of the
bottle? st
DISTILLERIA WASHINGTON V. LA TODEÑA DISTILLERS Yes, this case there are 2 involve in these cases. 1
nd
CORPORATION case and the 2 case.
What are the trademarks involved in this case? That’s why the petitioners Washington moved for
O La Tondeña Incorporated the disintegration of the case .
1
st
What was wrong with the 1
st case? What was the resolution ANG V. TEODORO
of the court in the 1 case? According to the court who is the
owner of the bottle? When human rationalize why they do not want to achieve
Washington because there is transfer of the anymore a certain goal after they had failed to achieve it,
ownership of the bottles like from the sale of the what do you call that expression?
product. From the Aesop’s fable. Sour graping.
What was wrong with this decision? Aside from the fact that Between the 2 who was the first one to register the TM “Ang
the SC held that Washington Distillers should be adjudged as Tibay”?
the owners of the bottles, what was the other part of the It was Teodoro who first register the TM “Ang Tibay”
decision? Did the court resolve the matter by requiring
Washington to pay La Tondeña the amount of X pesos or the How come Ana Ang was able to register the same?
amount of the bottles? If it was Washington who is ordered to
pay La Tondeña because of the bottles but the court said that What are the functions of TM?
the ownership over the bottles remained with the To indicate the ownership of the product or to be
Washington. Is that something wrong or correct? Fair or specific the court said that it is to point distinctly
unfair? either by whole meaning or association to the origin
Unfair because it is not consistent with the adverse or ownership of the things from which you acquire
of it ownership Washington moved for or to which they are attach.
reconsideration of the first decision because
according to that decision Washington should be Can a word or device which relate only to the thing following
adjudged the owners of the bottles. the description of the merchandise be a subject of a TM?
you call this a descriptive name.
But how about the SC requires Washington to pay It cannot because there is a provision under RA 8293
the cost of the bottle to La Tondeña? which prohibits registration of a descriptive name.
That’s not fair, that’s inconsistent, that’s What is the intent of the law? Why does the law does not
wrong because in finding the owner of the
property then all attributes of ownership allow descriptive name to be the subject of TM registration?
should be belonging to me. Not to misled the buyers or you go back to the
definition of or to the function of the TM.
What’s the owner of stamped bottles? Can Washington fill
the same with it sown products? If Washington will be using Can the descriptive name serve the function of TM?
the TM of La Tondeña is there a crime committed? It cannot because it only describes the quality or the
Trademark infringement under RA 623 because the description of the goods.
marked or stamped container of the goods is
considered as a TM. In effect The SC ruled that while If the descriptive words or devices to the subject of TM are
ownership over the bottles remain with Washington what kinds of words or devices or phrase cannot be subject of
and Washington can use the bottles in any way it TM not descriptive what do you call those phrases or device?
want it cannot violate the TM of the La Tondeña. What are those words, devices or phrases that can be subject
of TM not descriptive? NIKE is that descriptive?
But how come did the issuance obey? No.
because this is not a case for TM infringement this is
a case for replevin. Had the lawyer for La Tondeña ADIDAS desciptive?
filed a case for violation of TM infringement under No.
RA 623 then it could have been a different matter.
The court can decide whether there is a violation of Can they be subject of TM?
intellectual property rights or trademark right of La Yes.
Tondeña but that’s not the issue that issue is
replevin who owns of property must possess the What do you call these words?
property. They are called Fanciful, arbitary, coined words,
phrases, or device.
2
In a word or device which nonetheless descriptive and there What was the contention of Ethepa because Ethepha is
can be subject illustration use by a person (di ko maintindihan rejecting or opposing the registration of the brand
to) how come? “ATUSSIN”?
Through we call exclusive use. That it will be damaged because “ATUSSIN” is so
confusedly similar to “PERTUSSIN” and that the
What do you call that doctrine? buying public will be misled into believing that
Doctrine of secondary meaning. Westmont’s product is that of Petioner’s which
allegedly enjoys goodwill.
Are the words “Ang Tibay” descriptive or fanciful, arbitrary or
coined? How about “TUSSIN” can you register the mark “TUSSIN”?
Fanciful, arbitrary, or coined because the SC made a No.
semantic arrangement of words. It said that “Ang” is
an article which means “THE” or an adverb of the What is “TUSSIN” is that a Latin word? French word?
constructed word “ANO” “ANG TIBAY” is not an It is Latin word for cough
adjective that’s why its not a descriptive term. You
don’t say “ANG TIBAY SAPATOS KO” but you say Can you register “TUSSIN” as TM?
“MATIBAY SAPATOS KO” if the TM is “MATIBAY” do The SC held that “TUSSIN” is a descriptive word. It is
you think it is still fanciful or arbitrary? also a generic term because it means cough. It also
No more, it is already descriptive term. make thought you cannot appropriate it as TM. But
if you add some prefix or suffix like “PERTUSSIN” or
Does it matter that Ang’s application for registration for “ANG “ATUSSIN” then it becomes registrable as TM.
TIBAY” applies to a classic of merchandise different from
Teodoros? Or does it matter that both are selling non How is the mark of “PERTUSSIN” different from “ATUSSIN”?
competing goods? “ATUSSIN” is in bold, block letters horizontally
Ang’s goods are pants and shirts. Teodoros’ goods written. “PERTUSSIN” is printed diagonally upwards
and across in semiscript style with flourishes and
are slippers and shoes. Are they of the same kind? with only the first letter “P” capitalized.
No. Are they competing? No. do they have the same
trademark? Yes. The SC says that it does not matter
whether the goods to which the trademark are What about the phonetic similarity? Do they sound alike?
attached with are not competing as long as it can They do not sound alike. There is not much phonetic
cause confusion. similarity between the 2.
(VERY GOOD!) Angela’s SHINING MOMENT!
Does it matter that “PERTUSSIN” and “ATUSSIN” is a
ETEPHA V. DIRECTOR OF PATENTS pharmaceutical product as a point of determination whether
there is confusingly similarity? If “PERTUSSIN” is a milk and
When the doctor prescribes you a medicine with a brandname “ATUSSIN” is also milk. Is that a matter? Does it have
ending with a suffic “TUSSIN”. What is your ailment? confusing similarity? What about that these 2 products are
That you have cough. pharmaceutical products not an ordinary product? Is that
important in the point of determination in confusing
Which trademark was perfected with? similarity?
“PERTUSSIN” The court said that since they are pharmaceutical
products before a person can buy such product it
Who was able to register the TM “PERTUSSIN” needed prescription and because these products
Etepha A.G. needs a prescription or requires a prescription then
the purchasing or consumers would be less because
Is it a corporation?foreign?Liechtenstin? there is a need of prescription. The doctor prescribes
yes for a medication. The pharmacy prescribes for
medication. You have to consider that for
Who was trying to register “ATUSSIN” determination.
Westmont pharmaceutical
3
This case enumerates the objects of TM, what are the 5. guarantee that those articles come up to a certain
functions of TM? standard quality;
1. to point out distinctly the origin or ownership of the 6. They advertise the articles they symbolize.
articles to which it is affixed;
2. to secure to him who has been instrumental in IPL2
bringing into market a superior or merchandise the CASE: UNO COMMERCIAL
fruit of his industry and skill;
3. to prevent fraud and imposition. Is doing business a pre requisite for the ownership of a mark?
How did General Milling Corporation became the owner of
MIRPURI V. CA the trademark All Montana?
General Milling became the owner of the trademark
FACTS: Lolita Escobar registered the name of barbizon by virtue of a deed of assignment executed by the
wherein she sold brassieres and ladies undergarments. original owner of the trademark, Centennial Milling
However BARBIZON corporation a foreign corporation
opposed such registration contending that it would cause Is Centennial Milling a domestic corporation?
confusion because it has the same name. However the No. It is a foreign corporation
Bureau of Patents allowed Escobar to register her BARBIZON
mark to be registered. Thereafter Escobar transfer her right Is General Milling a domestic corporation?
to Mirpuri. Thereafter Mirpuri failed to file an affidavit of use Yes
that resulted to cancellation of the TM BARBIZON. Escobar
filed an application again for registration and transfer it to What was the basis of Uno Commercial that it has acquired
Mirpuri. This time BARBIZON CORPO oppose again and again ownership over the mark?
on the same ground. Mirpuri contends that BARBIZON can no Uno Commercial that it has first registered the mark
longer oppose because the action is already barred by the
previous action.(res judicata) What was the relationship of Uno Commercial with
Centennial Milling?
RES JUDICATA Uno Commercial is an indentor of SH Huang who is a
An absolute bar to a subsequent action for the same distributor of Centennial Milling
cause.
Can Uno Commercial validly register the trademark All
REQUISITES: Montana?
1. former judgement or order must be final. Uno Commercial cannot register the mark, because
2. judgement or order must be one on the merits it is not the owner of the trademark All Montana.
3. it must have been rendered by a court having The right to register a mark is base on ownership.
jurisdiction over the subject matter and parties
4. there must be between the first and second actions Can SH Huang apply for the registration of the trademark All
identity of parties of subject matter and causes of Montana?
action. No. The distributor is placed in the same level as a
broker, indentor or importer until and unless it is
Proceeding in intellectual property office or formerly known duly authorized of the owner of the trademark, it
as Bureau of Patents are known as inter partes cases which cannot apply for registration.
means those parties opposing each other in different
property office. Why?
Considering that the distributor is merely an agent of
According to this case what are the other functions of TM: the principal, then the principal is estopped from
1. to assure the public that they are procuring the asserting title over the subject matter of the agency.
genuine article; Therefore his registration will be deemed that of the
2. to prevent fraud and imposition; principal. If the principal ask the agent to register the
3. to protect the manufacturer against substitution and trademark All Montana, then the registration will
sale of an inferior and different article as his inure to the benefit of the principal.
product.
4. indicate origin or ownership of the articles to which
they are attached;
4
CASE: KABUSHI KAISHA ISETAN What therefore is actual use?

Actual use means actual sale. There must be actual
What is the meaning of Kabushi Kaisha? sale of the products bearing the mark.
It is a Japanese term meaning limited company. It is
a form of corporation. If a certain trademark is registered in Spain, but not
registered in the Phils. and is not actually use here in the
Was Kabushi Kaisha (KK, for short) doing business in the Phils., can you apply for registration of that trademark here in
Phils.? the Phils.?
No Yes. Because the Spanish entity who registered the
mark in Spain and who has actually used the mark in
Did KK alleged that it actually use the trademark Isetan as Spain does not have the right to be protected of its
well as the device in commerce here in the Phils.? trademark here in the Phils.
No. There was never an allegation by KK that it has
actually used the trademark Isetan and the device Why?
here in the Phils. Because the Spanish entity does not actually use the
trademark here in the Phils.
What about Isetan Phils.? Did it use the trademark Isetan in In the instant case, the trademark Isetan was never use by KK
commerce here in the Phils.? Isetan here in the Phils. It did not allege actual use of the
Yes mark in commerce here in the Phils. Therefore, anyone can
register that mark in the Phils. Because actual use is a pre
What then is the pre requisite for the ownership of a mark, requisite to the acquisition of the ownership of the mark.
accdg. to the SC in this case?
Actual use of trademark in commerce in the Phils. Can actual use of a mark in commerce in a foreign country
can be a mode of acquisition of ownership of that mark here
If KK Isetan adverstised its products bearing the trademark in the Phils.?
Isetan, can you say that KK Isetan has gained or acquired No. Because the requirement for acquisition of
ownership of the mark is actual use of the mark in
ownership of the trademark Isetan? commerce here in the Phils.
No. Even if KK advertise its products here in the
Phils., the same does not constitute sale or actual
use of the product . Not being an actual use, Under the IP Code of the Phils. how are rights in the mark
therefore KK cannot acquire ownership of the acquired?
trademark Isetan. The same is true with the giving The rights in a mark shall be acquired through or by
out of price list of the products. The price list is not a valid registration or registration made validly in
constitutive of actual use of the marks. accordance with the provisions IP Code. Registration
per se will not result in the acquisition of the mark. It
What if KK Isetan exhibited the goods bearing the trademark should be in accordance with the provisions of the IP
Isetan as samples? Does it constitute actual sale or actual Code.
use?
No. According to the case of Pag-asa Industrial Is there a distinction in so far as the mode of acquisition of
Corporation, the SC said that the exhibition or ownership of the mark in RA 8293 (IP Code) and the old
display of the products with the mark does not trademark law, RA 166?
constitute actual use. Yes. In the old law, there must be actual use of the
trademark in not less than 2 mos. prior to the filing
What is the meaning of actual use in commerce in the Phils. of application for registration. In RA 8293, the mode
then? How do you prove actual use of the mark? What is your of acquisition of the mark is by registration made
best evidence that there is actual use of the mark in validly in accordance with the IP Code.
commerce?
The best evidence would be the sales invoices or Is RA 8293 which is a later legislative enactment has already
receipts because that would show that the products dispensed with the requirement of actual use in so far as
is actually sold. mode of acquisition of ownership of a mark is concerned?
RA 8293 does not repeal RA 166 in so far as the
mode of acquisition of ownership of the mark is
5
concerned because under Sec. 122 of RA 8293,
it
6
does not say that ownership of the mark can only be the application. Another is Sec. 168 which provides
acquired by registration. Therefore, RA 8293 does that actual use of a mark even without registration is
not dispense away with actual use. the basis for an action for unfair competition.
What then are the two modes of acquiring ownership of the Does the registration of a mark confer an absolute right upon
mark? the registrant to the registered trademark?
Registration of the mark made validly in accordance No. The right is not absolute but merely inchoate.
with the provisions of the IP Code and actual use of Under the IP Code, the certificate of registration is
the mark. merely a prima facie evidence that the registrant is
the owner of the trademark or the registered mark.
Is actual use still a pre requisite to the filing of application
under RA 8293? Does registration confer upon the registrant a permanent
No. You do not have to prove actual use before you right to the registered mark?
can file an application for registration of the mark No. If within 3 yrs from the filing date the registrant
under the present law. Under the present law you did not file declaration of actual use then his
need not have to file a declaration of actual use of registration will be cancelled. Therefore his right
the mark before filing the application for registration cannot be said to be permanent but only temporary
of the mark. which is subject to the condition that he files a
declaration of actual use.
Does registration alone perfect title of ownership of the
mark? Under the old law (RA 166), actual use is only a condition
No. Under Sec. 124.2 of the IP Code, it is provided precedent to filing a registration. But now under the present
that after filing the application for registration there law actual use is no longer a condition precedent prior to
is still a need to prove actual use of the mark registration but a condition subsequent to perfecting title of
thereafter. Therefore, registration alone will not ownership over the registered mark.
perfect ownership of the mark because you still have
to prove actual use As between a registrant and a prior actual user of the same
of the mark after filing the application for registration. mark, who owns the mark?
A prior user shall be considered the owner of the

What would then perfect title of ownership of the mark? mark and not the registrant. Because there is only a
Actual use of the mark presumption of ownership of a mark in the
certificate of registration and such can be rebutted
What is the legal significance or the rule of actual use under continuous use thereof for 5 yrs before the date of
the present law?
Under the IP Code, actual use is both a mode of
acquiring ownership over the mark as well as the
only mode for perfecting title of ownership over the
mark.
Why does actual use is the mode of perfecting title of

ownership of the mark and not registration?
Because the purchasers must come to understand
the mark as indicating the origin or ownership of the
wares. It goes to the very function of trademarks.
Aside from Sec. 124.2, what other provisions of RA 8293 will

support the argument that actual use is the mode for
perfecting title of ownership over the mark?
Sec. 123.2 which is the doctrine of secondary
meaning. A mark which is not otherwise capable of
registration may become distinctive and capable of
registration by substantially exclusive and
7
or overcome by evidence of actual use by another.
What is the importance of registration aside from being a

mode of acquiring ownership of a mark?
Registration is a prima facie evidence of the
validity of the registration, the registrant’s
ownership of the mark and of the registrant’s
exclusive right to use the same in connection with
the goods or services as specified in the
certificate. It is also a pre requisite for
maintaining an action for infringement.
Can you file a case or an action for infringement of a

trademark against somebody if you do not have a
registered mark?
You cannot. Registration is a pre requisite to
maintaining an action for infringement.
Is registration a pre requisite for maintaining an action for

unfair competition?
Unfair competition does not require for its
maintenance a registration of the mark
8
CASE: PHILIP MORRIS CASE: C.Y. GABRIEL
Is Philip Morris licensed to do business here in the Philippines? What was the business relationship before the dispute
No between Dr. Perez and Gabriel?
They entered into a distributorship agreement
Is Philip Morris doing business here in the Philippines? wherein Gabriel is the distributor of the Wonder
No. It was suing only on an isolated transaction soap of Dr. Perez.
What was Philip Morris _ _ in this case? Did Philip Morris What did Gabriel with respect to the packaging and design of
allege actual use of the mark? the wonder soap?
There was no allegation of the actual use of the It is Gabriel who has the control of the packaging
mark. and design. She was the one who marketed the
product because it is under a distributorship
But even if Philip Morris did not allege actual use of the agreement.
subject mark it argued that it can still sue Fortune Tobacco for
trademark infringement. What was the basis of Philip Morris? Can Gabriel as the exclusive distributor register the trademark
The basis was Art. 2 of the Paris Convention. Wonder?
No
Art. 2 of the Paris Convention is inconsistent with Sec. 2a of
RA 166. Under RA 166 actual use is a pre requisite or a mode Did the distributorship agreement provide that the ownership
of acquiring ownership over the mark. But under the Paris of the mark will be transferred to Gabriel?
Convention actual use is not a pre requisite. How did the SC No. There was no such stipulation although it is
reconcile these two provisions? Which prevails in case of possible that the rights in the mark may be
conflict, the treaty or the domestic law? transferred under a deed of assignment or under the
The trademark law of the Phils. must prevail because distributor agreement
trademark rights are territorial. Trademark rights
In spite of the registration of the trademark Wonder in favor
being territorial, therefore domestic or national law of Dr. Perez, what did Gabriel do in relation to the said
must prevail over a treaty even if we adhere to the
doctrine of incorporation. trademark?
She kept on using the trademark Wonder.
Is it possible for a foreign entity not doing business here in the
Phils. to have a personality or legal standing to file a suit for Who was the adminstratrix of the intestate estate of Dr.
infringement? Is Philip Morris licensed to do business here in Perez?
the Phils.?
They are not doing business in the Philippines and What did the adminstratrix do after she learned that Gabriel
are not licensed to do business in the Phils. was still using the trademark Wonder?
She filed an infringement suit
What must Philip Morris allege in its complaint so that it can
sue for trademark infringement against Fortune Tobacco? What happened to the registration of the trademark in favor
Can Philip Morris merely allege its alien origin or its alien of the intestate estate of Dr. Perez during the pendency of the
nationality in order for it to have a legal standing? civil action?
Under the Paris Convention, Philip Morris must The administratrix failed to file the affidavit of actual
allege that it is a citizen or domiciled at a country use. Under the IP Code the registrant must file an
which grants the same reciprocal rights to Filipino affidavit of actual use or declaration of actual use
nationals with respect to trademarks. The SC said in within a year after . The same goes with the
this case that it is not enough for a foreign entity to old law.
allege its alien origin or its alien nationality because
it will not have a legal standing. In order for it to Did the cancellation of the trademark Wonder render the
have legal standing it must allege that it is a citizen infringement case moot and academic?
or domiciled at a country which grants the same It did not
reciprocal rights to Filipino nationals with respect to
the protection of intellectual property rights.
9
Should the trial court dismiss the case just because the Did the SC say that there was an unfair competition in this
trademark has been cancelled? case? Is there any similarity between the products of the
No. The case in the trial court is about infringement. contending parties?
And there is no relationship between the There is no unfair competition because there is no
cancellation of a trademark and infringement. The similarity between the competing products. They
court must still determine whether or not Gabriel are the same Kananga, they are the same toilet
has indeed infringe the trademark. water but the SC said that bec. the labels are
different there is no unfair competition. The basic
There was an assignment of the trademark Wonder by Go rule under unfair competition is that there must be a
Hay to Gabriel. Did this assignment suspicion to the similarity or colorable imitation.
court? There were 2 registration in this case for Wonder. One
is a registered trademark in favor of Dr. Perez and the other CASE: COMPANIA DE GENERAL DE TABACOS
one is Wonder GH in favor of Go Hay. They are different in so
far as the application for registration is concerned. But what What did the SC say about the contention of Alhambra that
did Gabriel do with respect to the trademark assigned to her? Isabela is geographic term and therefore Compania de
Although the 2 application for registration have General de Tabacos could not have appropriated the same as
marked differences, Gabriel was able to imitate the its own trademark?
trademark of Dr. Perez. Gabriel did not actually use The SC said that the issue here is contempt and
the trademark that was assigned to her. Such would injunction. The contention of Alhambra that the
cause confusion term Isabela is a geographic and therefore cannot be
exclusively appropriated by Compania de General de
The Court ordered the cancellation of the trademark Wonder Tabacos is an issue which should be decided in the
GH in favor of Gabriel. What was the reason of the SC? merits in the trial of the merits of the case. The issue
The Wonder brand of Dr, Perez was in prior use of here is merely an injunction and one for contempt.
the Wonder brand of Go Hay
IPL3
Did Gabriel abandon the use of the trademark assigned to her
by Go Hay? What are the requisites for obtaining a filing date? How do
Yes, there was an abandonment. T herefore she did you register a trademark, service mark or tradename?
not use it any more. The applicant must file his request for registration,
he must indicate his domicile or his that of his
Was there confusion between Gabriel’s use of the trademark representative must produce the mark sought to be
assigned to her and the trademark of Dr. Perez? registered and pay the appropriate filing fees.
Yes there was an actual confusion because the goods
are related goods. That’s why the SC cancelled the What are the requisites for you to have an application
trademark of Gabriel. number?
The applicant must present the mark he seeks to
CASE: BAXTER register, his name, residence. If it is an international
corporation, its address abroad and here in the
What was the trademark registered by Baxter in this case? Philippines.
Agua de Kananga
To whom will you submit the application for registration, who
What about the trademark registered by Zosimo Zuazua? receives the application?
Kananga Superior and It is the Duty Officer of the Day and not the Trade
Examiner.
Did the SC say that Baxter has the exclusive right to the use of
Kananga? What is the duty of the officer of the day? Will he conduct a
No. The SC said that Baxter has no exclusive right to substantive examination of the application?
the use the term Kananga even though it has a NO
registered trademark of Agua de Kananga. The term
Kananga is generic therefore it cannot be the subject
of trademark registration.
10
What kind of examination is he going to perform on the right/date. And both the Japan and the Philippines
application? are members of the Paris Convention.
Only a formal examination, it is a ministerial function
to see whether the requirements for filing are What is the condition before the Japanese corporation can
complied with. He is not going to conduct a claim priority right over the same TM?
substantive examination. Within six months from its filing date, it must file an
application here in the Philippines or any country
Is it required to submit the actual label specimen (the one signatory to the Paris Convention. If it fails to do so,
found in the product itself, it is not the trademark) indicating then it loses its claim to priority right.
the trademark which you are seeking to register in your
application? What is the purpose of the Priority Right?
NO, because there is no requirement that you must For the protection of the applicant. The foreign
actually use the trademark upon submitting the applicant must claim a priority right, he must make
application. The actual use requirement has been an actual and formal declaration that he is claiming
abandoned in so far as the filing of application is as pr over the same TM.
concerned.
What does the law say about claiming a PR? Can the
But do you need to submit your actual label specimen after Philippines through IPO grant the application of the Japanese
submitting your application form? corporation on May 2, 2009 without any condition?
YES, within three years for the time you submitted NO, the law specifies that the application will not be
your application because within three years you granted unless in the home country of the foreign
have to prove that you actually used the trademark. applicant his application/registration has been
granted.
What is the importance of the filing date?
In order to determine who has the priority over the Is there any exception?
mark. If it is a well-known mark or internationally known
mark, there is no need for registration if the TM
belongs in the line of similar goods or services. But if
Is there a difference between a filing date and priority
date/right? it doesn’t belong in the same line goods or services
The filing date is the date the office has received the there is a need for registration.
application when all the requirements provided by
law are complied with, while priority date/right What are interpartes/interference proceedings?
given to the person who has able to register a TM in It is an opposition proceeding, cancellation
the Philippines or foreign countries pursuant to the proceeding.
filing date in which said foreign corporation was able
to register the same. CASE: BATA INDUSTRIES LIMITED
How a foreign corporation can claim priority right? Cite Did the BATA have the personality to sue for opposition
example. against the other party?
A corporation organized and existing in Japan filed None.
an application for the TM “Nike” in Japan on January
2, 2009. In the Philippines, a domestic corporation Did BATA stand to be prejudiced or suffer damage by the
applied for the same TM registration on March 2, registration of the TM BATA in the case?
2009. Consequently on April 2, 2009, the Japanese NO, they are not doing business in the Philippines
corporation applied in the Philippines an application and there is no actual use here.
for registration of the TM “Nike”.
What is the prescriptive period/ reglementary period for filing
Who between the two corporations has the priority right over an opposition?
the same TM having the identical line of goods and services? Within 30 days from the publication of the
The Japanese corporation because was the first to registration.
apply (we are not talking of registration here). The
filing date must be analyzed against the priority
11
Who has the exclusive jurisdiction over the application for TM *Take note of these facts:
registration? Who conducts the examination of the Same TM?
application? Similar line of goods/services?
It is the Trademark Examiner. He recommends to the Date of actual use?
Director of the Bureau of TM the publication of the
TM sought to be registered and after the publication What is the principle behind this case?
anyone who believes that he will be damaged or No need to prove because there is already a judicial
prejudiced by the registration have the right to file admission in relation to actual use because it is
an opposition which is called an borne by the records therefore there is no need for
interpartes/interference proceedings. further proof.
Is his decision appealable? Can you register “SHABU” for Cola drink?
YES, to the Director of the Bureau of TM. NO, Sec 123, par1. Prohibited – immoral, deceptive,
scandalous
When you submit your requirements to obtain the filing date,
will the office conduct a substantive examination? Can you register a name of a person as a TM?
NO. No.
When will the office conduct a substantive examination? Absolutely?

It is only when the application meets the filing No, if there is his consent.
requirements.
What are the filing requirements? President of the Philippines and is already dead?
Section 124. When you file an application to obtain a No, but if his widow consents, you can.
filing date, you need not submit all your filing
requirements because you only need to have a filing If not the president, you cannot get the consent of
date. You can go back to submit all your filing the widow. The law seems mistaken.
requirements. That is why one of the requirements CASE: HICKOCK

for obtaining a filing date is a mere
reproduction/drawing/sketch of the TM, not the
actual or formal TM (you only need to submit the 1955 for Maliwat, and Sta.Ana 1959.
actual TM when filing all the requirements). The
filing date is very important because it determines
who among the two applicants has the right or
priority right to register the same TM.
CASE: STA.ANA VERSUS MALIWAT
Flormann - Maliwat (June 1962)

Flormenn - Sta.Ana (September 1962)
What is the mode of perfecting ownership over a TM?

The actual use.
In the application given by Maliwat in the TM Flormann, what

year did he state the he actually used the TM?
1959 but he amended it to 1955
Sta. Ana?
1959
What happened in the stipulation of facts?

They agreed with the same that the actual use is
12
Is the Nice Classification controlling?
No, the court can determine whether or not the
products are related or not.
Nice Classification – comes from Nice Agreement, nice is a

town in France. The Philippines is not a party to the Nice
Agreement but it follows the nice classification
How many classes are there in Nice Classification?

34 in goods and 11 in services.
CASE: FABERGE
Section 20 TM Law and Section 4 is there a conflict?

YES
Principle: Extent of protection (limited as SPECIFIED IN THE

CERTIFICATE OF REGISTRATION, no more no less)
Did section 20 prevail over section 4?

Yes, latter intent of Congress.
13
Is the filing an application for registration an ex-parte

proceeding? Is it confidential or not? Is there unfair competition here?
Yes
CASE: BERNANDINE
The unfair competition was base on what law in this case?
What is the problem in Bernadine’s petition? Art. 28 of the Civil Code
He did not apply for the registration of the
lightboxes. His only protection is the TM of poster Assuming that Yu filed a case for unfair competition under RA
ads and copyright registration of technical drawings. 8293, could there be a case for unfair competition?
However, copyright protects only literary and artistic No. The essence of unfair competition under the
works but not to technical drawings. Intellectual property law is the passing off of one’s
goods or services on the public as that of the goods
IPL4 and services of another. In this case although the
injunction was base on Art. 28 of the Civil Code,
CASE: YU v. CA strictly speaking it is not one for unfair competition
because unfair competition under the Civil Code is
What kind of action was filed by Yu? What was the nature of _. The definition of unfair competition under the
the action? intellectual property code, that is the true meaning
Injunction of unfair competition. This case involves
importation and must strictly speaking be unfair
What was the basis? competition. But because there is a provision under
Based on the exclusive distributorship agreement Art. 28 which grants damages and injunction there is
unfair completion and you can file a case base on
What law was made as the basis in filing the injunction filed unfair competition.
by Yu? Are these provisions under RA 166 or provisions under
the civil code? CASE: LEVITON INDUSTRIES

Art. 28 of the Civil Code
What was the action filed by the foreign corporation?
Is there a provision under the Civil Code which speaks of Unfair competition
unfair competition?
Art. 28 of the Civil Code Base on which law?
Under Sec. 21-A of RA 166
The lower court and the CA denied Yu’s application for
injunction. What was the basis of the denial of the lower Can the foreign corporation file a case for unfair competition
court? base on other law aside from RA 166?
The evidence provided that _ was willing to pay Yes. Art 189 of the Revised Penal Code
damages to Yu. Then there is no reason for the
injunction. If the applicant for injunction can be Could Leviton file a case for unfair competition under Art 189
compensated for damages then injunction could not of the RPC instead of RA 166?
lie Yes
What was the SC’s decision? Should the injunction be What was Art 189 of the RPC?
granted? Unfair Competition
The SC said that injunction is the proper remedy to
prevent a wrongful interference with contracts by Assuming that the case happened today, can Leviton file a
strangers when the legal remedy would be _ _ and case for unfair competition base on Art. 189 of the RPC?
the resulting injury would be irreparable. In other No. It must be base on RA 8293. RA 8293 repealed
words, even if _ is not a party to the contract, if Art 188 an 189 of the RPC. Therefore it can no longer
_ must be enjoined because Yu must be file a case for unfair competition under the RPC. But
protected in so far as the exclusive sales agreement prior to the enactment of RA 8293, it can still file a
is concern, but not on the basis of the agreement case for unfair competition under the RPC or RA 166
itself but because there is a provision under the law
which is Art. 1314 which gives a remedy.
14
What ground was invoked by the local entity when it filed a What did the SC say about this issue? Did the SC abandoned
motion to dismiss the complaint? the ruling in Leviton? What is the difference between Leviton
Failure to state a cause of action because allegedly it and this case in so far as foreign corporations are concerned?
did not state its legal personality to sue In Leviton the basis for the case for unfair
competition is a law. In this the case the basis is a
What should the foreign entity should have alleged in its treaty. This case did not abandon the ruling in
complaint in order that it will not be dismissed? Leviton industries because the SC said that if the
Leviton, a foreign corporation must allege in its foreign corporation is suing base on a treaty then, it
complaint that its trademark is registered here in the need not allege reciprocity because the treaty is the
Phils one which supplies the reciprocity arrangement
between the Phils and the foreign country of which
(Remember: a foreign corporation not engaged in business the foreign country is a citizen or domiciled of. And
here in the Philippines can file a case for unfair competition bec. It is a treaty there is no need for you to prove a
or infringement whether or not it is licensed to do business treaty, bec. Under the law of evidence a treaty must
here in the Phils, but if it is doing business in the Phils, and be given judicial notice
not licensed to do business in the Phils. it cannot. If it is not
doing business here in the Phils and not license to do What was the ruling of the SC with regards to Litis Pendentia?
business, but it has an isolated transaction it can still sue here The Sc said that there is no litis pendentia. In order
in the Phils. You have to distinguish the activity, whether the for there to be lis pendens, the other case pending
activity is one doing business or merely an isolated involving the same parties and having the same
transaction. If it is doing business, it must have a license. If cause of action must be a court action. In this case
base on an isolated transaction it can file an action WON it is the inter partes case was before an administrative
license to do business here in the Phils.) body, the Patent Office. Therefore, there can be no
application of the doctrine of lis pendens.
Is prior registration of a mark a pre requisite for an action for
infringement? CASE: LA CHEMISE LACOSTE

Yes
How did the Court meet squarely the argument of Hermandas
Is registration of a mark a pre requisite for an action for unfair that Leviton principle should be applied in this case?
competition? The SC said that Leviton principle is not applicable in
No , registration of a mark is not a pre requisite for this case because these two cases involve different
an action for unfair competition The exception is if law. One involves a provision in the Revised Penal
the foreign corporation files a case for unfair Code the other a provision under RA 166, so the
competition, it must allege that its trademark is Leviton Industries principle is not applicable in this
registered here in the Phils. case.
Is there an exception to the exception? Do you agree with the decision of the SC? Do you think the SC
Yes. In case of a well known trademark. If it is would like to abandon the principle in the Leviton case?
determined by competent authority that it is a well In the Leviton case, the mark involve is not an
known mark, then it need not allege that it is internationally well-known mark , in this case,
registered here in the Phils. Lacoste is an internationally well known mark so the
SC have a very strong policy in favor of
CASE: PUMA internationally well known mark.
What was the defense of Mil-Oro when Puma filed an action Even if the complaint is base on RA 166, the SC could have
for infringement of trademark ? made the same decision. Even if La Chemise Lacoste failed to
Lack of legal capacity to sue and litis pendentia allege the facts bearing upon its capacity to sue, the SC would
still grant the same decision. Do you agree?
Why did Mil-Oro argue that Puma has no legal capacity to Yes. Because it is an internationally well known mark
sue? Was there any missing element in the complaint?
It failed to allege reciprocity in the complaint
15
Let’s go to the argument of Hermandas that La Chemise Granting that Hermandas’ certificate was registered under
Lacoste is doing business here in the Phils. Yet it was not the principal registry, can he be sued for infringement?
license to do business here in the Phils. What was the ruling of No. Because it gives only a prima facie presumption
the SC? on the validity of registration and the registrant’s
Lacoste is not doing business here in the Phils. exclusive ownership of the mark
because Rustan’s is doing business not for the name
or for the account of Lacoste but on its own name. Do we still have supplemental registry under RA 8293?
Therefore it not an agent, it is a middleman. We don’t have that anymore. There is no more
distinction between a principal registry and a
In this case Judge Fernandez issued two search warrants. supplemental registry
Then Hermandas filed a motion to quash search warrant.
What was the ground invoked by Hermandas in filing a What about the contention of Hermandas that the action was
motion to quash the search warrant? premature in view of the pending Inter Partes case before the
Hermandas said that the trademark use by him is Patent Office between the same parties? What was the
different from the trademark use by Lacoste. Judge Court’s ruling?
Fernandez recalled the search warrants base on this The case involve is civil. Inter partes case is not civil
allegation. in nature, they are merely administrative
Was that a correct step on the part of Judge Fernandez? What is the prescriptive period for filing a petition for
No. Because such is an issue that must be raise in cancellation for registration of a trademark?
the trial itself and not in the hearing on motion to Sec. 151.1 IP Code – prescriptive periods
quash the search warrant. In issuing the search
warrant Judge Fernandez has already complied with CASE: ROMERO
the probable cause.
If a foreign corporation under the regime of RA 166 would like
Hermandas argued that it is the holder of a certificate of to file registration of its trademark, does it need to prove
registration of the trademark Chemise Lacoste and Crocodile actual use upon filing of the application?
device. Was that enough for it to be protected from suit from No
infringement? What did SC say on this? What are the 2 kinds
of registry under RA 166? If it is a domestic corporation or a local entity who would like
Supplemental registry and principal registry to file an application for a trademark here in the Philippines
under the regime of RA 166, does it need to prove actual use
Hermandas certificate of registration was under which upon filing of the application?
registry? No, But there is a section 37. It provides that if the
Supplemental registry Phils. is a party to a convention or a treaty then the
foreign corporation need not prove actual use upon
What was the difference between a supplemental registry filing of the application. That’s why the SC said that
and a principal registry? the application in this case was filed on the basis of
A trademark registered under the supplemental Sec. 2 and not on the basis of Sec. 37. Because at
registry still has some defects with respect to its that time Phils was not yet a signatory or a member
registrability and it is not subject to any opposition of the Paris Convention
Does it have the presumption of validity of registration as well Under RA 8293, is there a need to prove actual use upon filing
as to the registrant’s right of exclusive ownership over the the application for registration whether or not it is a foreign
trademark? corporation or a local entity?
It has no presumption as to its valid registration and No. There is no more requirement of proving actual
that the holder of the certificate is the axclusive use upon filing of the application because RA 8293
owner of the trademark. Unlike in the case of a has already harmonized the rules as between a
principal registry, there is that prima facie foreign corporation and a local entity.
presumption. Therefore Hermandas’ argument was
wrong because he did not even have a prima facie
presumption in his favor.
16
There was also an argument that the registration of Adagio The first one, was it verified or unverified?
was procured fraudulently because there was a government It was unverified
restriction on the importation of the goods by Maiden Form
which resulted in the temporary use of Adagio by Maiden Was the counsel of Clorox company able to file a verified
Form. What was the ruling of the SC? petition for opposition within the reglementary period?
............... In the first opposition which is unverified, he filed it
within the 30 day period. Then it filed another
CASE: PHIL. NUT opposition, this time verified because it receive a
notice from the director of patents that it filed an
What is the dominancy test? unverified opposition. But in this verified opposition
In dominancy test, the focus is on the prevalent there was a cover letter and the cover letter states a
feature of the product different case title
How would you know if a trademark is confusingly similar to a What did the clerk of court or the of the director of
registered trademark by the test of dominancy? patents do?
The focus is on the main or the dominant feature of It did not correct the mistake
the mark. According to the SC, the main feature in
both trademark is the term Planters Therefore whose mistake was that? Was it the clerk of court
or the lawyer of Clorox?
Why not Cocktails? Why not Cordial? According to the SC it was the mistake of the Clerk of
Because it is the word Planters that catches the Court
attention of the consumers and which will lead
consumers into thinking that the source of this two Do you agree with the decision of the SC?
peanuts belong to the same origin (According to sir, it was the mistake of the counsel)
Phil. Nut argued that the word Planters has not acquired a What did the SC say about the decision of the Director of
secondary meaning or that the Standard Brands could not Patents? Was the Director of Patents correct in dismissing
have acquired or could not have owned the trademark. What the opposition filed by the counsel of Clorox?
was the Court’s ruling? No. The SC said in this case that the freedom of the
The term Planters acquired a secondary meaning in opposition on technicality grounds would amount to
favor of Standard Brands, in the same as Selecta in considerable injustice to Clorox. And therefore there
the case of Arce acquired a secondary meaning. is a possibility of such period consequence which
necessitate a careful examination of the grounds
But even if the term Planters did not acquire a secondary upon which it requires that _ _ .So if you are made
meaning, still, can you say that Standard Brand owned the to choose between a technicality and substance, of
trademark? course you have to go to substance.
Yes, Standard Brand still owned the trademark
Planters because it fulfils the requirement of Was the verified opposition filed by the counsel of Clorox ever
registrability found by the SC?
No
Can a person who failed to apply a petition for opposition
against the registration of a mark still file a petition for If there was no evidence that there was a verified opposition
cancellation of the registration of the same mark? then why did the SC that the counsel of Clorox was able to file
Yes. The SC said that this actions are alternative, the a verified opposition?
parties can choose any one of them (Achor Trading There was only an opinion of the SC that the counsel
v, Director of Patents) of Clorox filed a verified opposition. It was only an
opinion .
CASE: CLOROX
How many opposition papers were filed by the counsel of

Clorox?
Two
17
IPL5 What is your basis?

Section 151.2 of Republic Act No. 8293, otherwise
WOLVERINE WORLDWIDE VERSUS CA known as the Intellectual Property Code, provides,
as follows –
What was the defence interposed by the private respondents?
Since there were three interpartes proceedings filed Section 151.2. Notwithstanding the foregoing
in the Patent Office prior to the institution of the provisions, the court or the administrative agency
complaint in the court, Worldwide cause of action is vested with jurisdiction to hear and adjudicate any
barred by the res judicata. action to enforce the rights to a registered mark
shall likewise exercise jurisdiction to determine
Are the equitable principles of res judicata, estoppels and whether the registration of said mark may be
laches applicable in administrative decisions like before the cancelled in accordance with this Act. The filing of a
Patent Office? suit to enforce the registered mark with the proper
Yes. court or agency shall exclude any other court or
agency from assuming jurisdiction over a
Worldwide said that by virtue of the Memorandum issued by subsequently filed petition to cancel the same mark.
Minister Ongpin the doctrine of res judicata must not apply. On the other hand, the earlier filing of petition to
Why is that so? cancel the mark with the Bureau of Legal Affairs shall
Worldwide said that the three interpartes cases not constitute a prejudicial question that must be
were filed under RA 166 but the case filed before the resolved before an action to enforce the rights to
court was filed under the Memorandum issued by same registered mark may be decided.
Minister Ongpin stating that trademarks registered
prior to the issuance of the said memorandum and
Similarly, Rule 8, Section 7, of the Regulations on Inter Partes
which are issued by virtue of the Paris Convention
Proceedings, provides to wit –
should be cancelled.
What was the ruling of the Supreme Court?
Section 7. Effect of filing of a suit before the Bureau
The Memorandum did not amend the provisions of or with the proper court. - The filing of a suit to
enforce the registered mark with the proper court or
RA 166 and did not change the declaration of policy
as embodied in the said law hence res judicata is Bureau shall exclude any other court or agency from
applicable.
assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other
What was wrong with the strategy adopted by the Worldwide
hand, the earlier filing of petition to cancel the mark
in relation to their prosecution of the case?
with the Bureau shall not constitute a prejudicial
They failed to invoke the protection of Paris
question that must be resolved before an action to
Convention during the interpartes cases. Had they
enforce the rights to same registered mark may be
done so, the decision would not be adverse to them.
decided.
SHANGRILA VERSUS CA
Hence, as applied in the case at bar, the earlier institution of
What is the issue in this case? an Inter Partes case by the Shangri-La Group for the
The core issue is simply whether, despite the cancellation of the "Shangri-La" mark and "S" device/logo
institution of an Inter Partes case for cancellation of with the BPTTT cannot effectively bar the subsequent filing of
an infringement case by registrant Developers Group. The law
a mark with the BPTTT (now the Bureau of Legal
and the rules are explicit.
Affairs, Intellectual Property Office) by one party, the
adverse party can file a subsequent action for
infringement with the regular courts of justice in The rationale is plain: Certificate of Registration No. 31904,
connection with the same registered mark. upon which the infringement case is based, remains valid and
subsisting for as long as it has not been cancelled by the
What was the ruling of the Supreme Court? Bureau or by an infringement court. As such, Developers
YES. Infringement case can be filed notwithstanding Group's Certificate of Registration in the principal register
the cancelation proceedings in the Patent Office. continues as "prima facie evidence of the validity of the
registration, the registrant's ownership of the mark or trade-
name, and of the registrant's exclusive right to use the same
18
in connection with the goods, business or services specified
in
19
the certificate." Since the certificate still subsists, Developers testing this issue, fixed legal rules exist — if not in harmony,
Group may thus file a corresponding infringement suit and certainly in abundance — but, in the final analysis, the
recover damages from any person who infringes upon the application of these rules in any given situation necessarily
former's rights. reflects a matter of individual judgment largely predicated on
opinion. There is, however, and can be no disagreement with
Did the infringement case filed by Developer’s Group reach the rule that the purchaser is confused, if at all, by the marks
the CA? as a whole. The words Pertussin and Atussin do not sound
YES. alike — when pronounced. There is not much phonetic
similarity between the two. In the solution of a trademark
If a cancellation case has been filed and subsequently an infringement problem, regard too should be given to the class
infringement case is filed, the cancellation case need not be of persons who buy the particular product and the 16
suspended, because the two are different and independent circumstances ordinarily attendant to its acquisition. The
proceedings. medicinal preparation clothed with the trademarks in
question, are unlike articles of everyday use such as candies,
Why did the court allow an infringement case be maintained ice cream, milk, soft drinks and the like which may be freely
despite the filing of cancelation. What is the logical reason? obtained by anyone, anytime, anywhere. Petitioner's and
What benefit will it give to the party filing the infringement respondent's products are to be dispensed upon medical
case? What is it that you can get from filing an infringement prescription. The respective labels say so. An intending buyer
case but you cannot get in cancellation proceedings? must have to go first to a licensed doctor of medicine; he
Injunctive remedy in favour of holder of certificate of receives instructions as to what to purchase; he reads the
registration. doctor's prescription; he knows what he is to buy.
Did the SC ordered the suspension of admin proceedings? Which court has jurisdiction to take cognizance infringement
YES. It’s possible that IPO might render conflicting case?
decision with that of the CA. In this case the conflict The Regional Trial Court because it is a court of
is more possible because the trial court had already general jurisdiction.
rendered a decision. But if the trial court had not yet
rendered a decision the administrative proceedings Is there a provision in the IP Code vesting jurisdiction in RTC in
will not be suspended. infringement case?
(Classmates, I attached Republic Act No. 9502 or the
Infringement case filed ahead of cancellation case? Cheaper Medicines Law amending RA 8293. Atty.
Cancellation case will be suspended because the trial the marks are applied emanated from the same source. In
court can order the cancellation of the registered
TM.
Cancellation case filed ahead the infringement case?

They can proceed independently.
ETHEPA VERSUS DIRECTOR OF PATENTS
What is the issue in this case?

WON trademark ATUSSIN be registered, given the
fact that PERTUSSIN, another trademark, had been
previously registered in the Patent Office.
What is the ruling of the Supreme Court?

There is no infringement in this case.
*Confusion is likely between trademarks, however, only if

their over-all presentations in any of the particulars of sound,
appearance, or meaning are such as would lead the
purchasing public into believing that the products to which
20
Soriano said the answer can be found in this latest
amendatory law. Find it na lang, thank you – April
Gerero. )
FRUIT OF THE LOOM, INC., vs.

COURT OF APPEALS and GENERAL GARMENTS
CORPORATION,
What is the issue in this case?

Whether or not private respondent's trademark
FRUIT FOR EVE and its hang tag are confusingly
similar to petitioner's trademark FRUIT OF THE
LOOM and its hang tag so as to constitute an
infringement of the latter's trademark rights and
justify the cancellation of the former.
Distinguish infringement and unfair competition.
1) Infringement of trademark is the unauthorized use of a

trademark, whereas unfair competition is the passing off of
one's goods as those of another.
21
(2) In infringement of trademark fraudulent intent is In particular, and without in any way limiting the scope
unnecessary whereas in unfair competition fraudulent intent of unfair competition, the following shall be deemed
is essential. guilty of unfair competition:
(3) In infringement of trademark the prior registration of the (a) Any person, who in selling his goods
trademark is a prerequisite to the action, whereas in unfair shall give them the general appearance of
competition registration is not necessary. goods of another manufacturer or dealer,
either as to the goods themselves or in the
Section 22 of R.A. No. 166, otherwise known as the wrapping of the packages in which they are
Trademark Law, provides in part as follows: contained, or the devices or words thereon,
or in any other feature of their appearance,
Sec. 22. Infringement, what constitutes. — Any person which would likely influence purchasers to
who shall use, without the consent of the registrant, believe that the goods offered are those of
any reproduction, counterfeit, copy or colorable a manufacturer or dealer other than the
imitation of any registered mark or trade-name in actual manufacturer or dealer, or who
connection with the sale, offering for sale, or otherwise clothes the goods with such
advertising of any goods, business or services on or in appearance as shall deceive the public and
connection with which such use is likely to cause defraud another of his legitimate trade, or
confusion or mistake or to deceive purchasers or any subsequent vendor of such goods or
others as to the source or origin of such goods or any agent of any vendor engaged in selling
services or identity of such business; or reproduce, such goods with a like purpose;
counterfeit copy or colorably imitate any such mark or
trade name and apply such reproduction, counterfeit (b) Any person who by any artifice, or
copy or colorable imitation to labels, signs, prints, device, or who employs ally other means
packages, wrappers, receptacles or advertisements calculated to induce the false belief that
intended to be used upon or in connection with such such person is offering the services of
goods, business or services, shall be liable to a civil another who has identified such services in
action by the registrant for any or all of the remedies the mind of the public; or
herein provided.
(c) Any person who shall make any false
Sec. 29 of the same law states as follows: statement in the course of trade or who
shall commit any other act contrary to good
Sec. 29. Unfair competition, rights and remedies. — A faith of a nature calculated to discredit the
person who has identified in the mind of the public the goods, business or services of another.
goods he manufactures or deals in, his business or
services from those of others, whether or not a mark
or tradename is employed, has a property right in the What test was the employed by the Supreme Court?
goodwill of the said goods, business or services so Holistic test.
identified, which will be protected in the same manner
as other property rights. Such a person shall have the Why did not apply the dominancy test in this case?
remedies provided in section twenty- three, Chapter V Because there is NO dominant feature in the TM.
hereof. The word “FRUIT” is not the dominant feature. The
word FRUIT is not at all made dominant over the
Any person who shall employ deception or any other other words.
means contrary to good faith by which he shall pass off
the goods manufactured by him or in which he deals, What is the relevance of the hangtags in the Supreme Court’s
or his business, or services for those of the one having decision?
established such goodwill, or who shall commit any The SC said that the similarities of the competing
acts calculated to produce said result, shall be guilty of trademarks in this case are completely lost in the
unfair competition, and shall be subject to an action substantial differences in the design and general
therefor. appearance of their respective hang tags. It have
examined the two trademarks as they appear in the
hang tags submitted by the parties and are
22
impressed more by the dissimilarities than by the Why did the SC employed the holistic test in determining
similarities appearing therein. It held that the whether there is confusing similarity with these 2 products?
trademarks FRUIT OF THE LOOM and FRUIT FOR EVE What does the holistic test will give to the buyer which the
do not resemble each other as to confuse or deceive dominancy test will not? Is it not that the holistic test is
an ordinary purchaser. The ordinary purchaser must employed by the SC because that will benefit the buyer?
be thought of as having, and credited with, at least a Yes so what is that if the holistic test which will
modicum of intelligence. benefit the consumers or the buyers by the
employment of the dominancy test the same will not
DEL MONTE CORPORATION v. CA be enjoyed by????
What is the issue in this? In the dominancy test, do you consider the entire
WON there was infringement or UC on the part of mark and the entire label in order to determine
the private respondent in the use of the bottles. whether there is confusing similarity?
No because it is dissected
What about the trademarks?
There’s also infringement of the trademark. In this case what is the dominant feature?
(sample is the ABSOLUTE mineral water)
What part????
The catsup The word absolute. If you employed the dominancy
test the word ABSOLUTE would be the dominant
What test was employed by the SC? feature of this trademark but if you employed the
The holistic or totality test. holistic test what would you see? The color will be
considered, the background, design and the labels.
What is holistic test?
It mandates that the entirety of the marks in What is the similarity between the trademark and the label of
question must be considered in determining private respondent?
confusing similarity. The symbols of the petitioner resembles to that of
the private respondent which is not really a tomato
What is the trademark of Del Monte Corporation? but approximates or looks like as tomato.
Tomato
What about the colors?
What about ???? Green and red orange.
It is not a tomato but it approximates as that of a
tomato. The print of the catsup? Is it the same?
Yes
???? is it necessary for the court to go into the details of the
label? Take note: The SC said there is no need to scrutinize every
Yes by using totality test, there is a scrutiny of the detail of the label because the buyer does not always makes
label. So the court must scrutinize all the details of use of his scrutiny. The court made the scrutiny but the buyer
the label in order to determine whether there is has not made his scrutiny. In making purchase the buyer
confusing similarity?not necessary all the details but depends on his recollection of the appearance of the product
such details that would lead to the conclusion that which he tends to purchase. The purchaser does not dissect
there is a confusion. the label because it depends only on his recollection of the
label. He does not go into the detail. This product is a
Whose point of view is to be considered in order to determine household item
whether there is confusing similarity in these two products?
The point of view of a common buyer. What are the other factors to determine which you have to
take note of that?
The age, education of the usual purchaser, nature
and cost of the article, whether the article is bought
for immediate consumption and the condition under
which the consumer usually purchase.
23
Was Sunshine guilty in using the Del Monte bottles? What about the use of ambered colored design bottle of Asia
The SC said that it is not guilty of infringement for brewery? Does it constitute infringement?
having used the Del Monte bottle because it was No because the bottle was not registered and that
merely registered in the Supplemental Register. the glass colored constitute a functional term
Thus, there is no such presumption of validity of because it was the color which gives protection to
registration, registrant ownership and esclusive use the contents of the bottle
thereof. However despite many choices available to
it nothwithstanding that the caution “DEL MONTE CONRAD v. CA
CORP” not to be refilled still opted to use said bottle
to market a product which Philpack also produces. What was the decision of the court?
This shows private repondent’s bad faith amounting
to Unfair competition. EMERALD GRAMENT v. CA
ASIA BREWERY, INC. v. CA What test was employed by the SC in this case?
Holistic test.
What test was employed by the SC?
Dominancy test Why not the dominancy test?
Because the dominant feature being the word lee
What was the result of the application of the dominancy test? such is not being capable of an appropriation
Was there infringement or not? because LEE pertains to a surname of a person.
none Apart from that why did the SC did not apply the
dominancy test
What is the dominant feature in SAN MIGUEL PALE PILSEN?
It was SAN MIGUEL PALE PILSEN In the stylistic Mr. Lee was there a dominant feature or word?
The word Lee.
What is the dominant feature in ASIA BREWERY PALE PILSEN?
Is that a dominant feature?
The word beer Yes.
In this case was there a conjunction in the dominant feature?
None because on one hand it was San Miguel pale How would you know if the word or feature is dominant?
pilsen on the other hand it was beer. A word is dominant if such word attracts the person.
The mere presence of such word calls the attention
of the respective buyer.
Did the SC abandon the holistic test mentioned in Del Monte
case? In Stylistic Mr. Lee what is the dominant word?
No. the said test cannot be applied in this case LEE but why did the SC did not apply the dominancy
because the product involved in Del Monte which test? Because the buyer in this case are buying by
was the subject matter of the case was bought by brands. The SC said of those dominant feature stylistic
common buyer who does not scrutinize the goods Mr. Lee the similarity between the 2 trademarks
whereas in this case the beer is ordered by brand. becomes conspicuous and have to matter in the light of
Therefore the consumer is more aware of the brand. the ff variables:
1. the buyer bla bla bla the product involve is not an
Which test would benefit the unwary/unexpecting ordinary item.
consumer is it dominancy test or holistic test? The 2. together with the other cases like del monte
holistic test because it does not dissect of all the
details of the part of a trademark. You will note in the holistic test is rather more of the
exception rather than the general rule. The SC tending to
Does the presence of PALE PILSEN in the Asia Brewery’s apply the dominancy test
bottle constitute infringement?
No.... Who is an ordinary purchaser? How would you describe him?
Because it is from his point of view will that be considered
whether there is confusing similarity.
24
An ordinary purchaser is the one who is accustomed Is that descriptive or generic term?
to buy or familiar with the goods in question. No.
What about the new comer? Someone who does not care or What kind of term is that? Is it fanciful or arbitrary?
indifferent with the product? Is he an ordinary purchaser No. it is a SUGGESTIVE TERM
under IP law? Somebody buying the product for the first time.
No because he is not accustomed with the product. What is a suggestive term? How will you know if the term is
suggestive and not descriptive?
Why he needs to be accustomed with the product? Those which in phraseology of one court require
Because there is no point in determining whether imagination, thought and perception to reach a
the buyer is confuse or not. if a person is a new conclusion as to the nature of the goods.
buyer of a product he cannot be considered as an
ordinary purchaser because he has no comparison What does aperson need in order to know the nature of the
with the product but if the person buys the product product with respect to the suggestive term but which a
often than not then he can be considered an person does not mean a generic term or descriptive term?
ordinary purchaser because he knows the general In generic or descriptive term when it is related to
appearance of the product that he is buying. the product; when it describes the product; when
there is logical relation with the product and the
There was a contention or connection by the CA that the mark.
product of stylistic Mr. Lee might be mistaken as another
variation under the LEE’s trademark what was the SC said? Was there no relation between a suggestive mark and a
there was an apprehension by the CA that the stylistic Mr. product to which it attach?
Lee might be mistaken as another variand or line of products If there is no such relation at all then it is fanciful or
by Lee. What was the SC ruling on this? Because the variand arbitrary. Since it is suggestive there must be a
of HD Lee are terms in such a way that the stylistic Mr. Lee relation. That these 2 has a relationship.
cannot be considered as a variand they are aggregated as one
What does a person need to know that there is a relation?
term. Does he need some imagination, thought or perception?
Can HD Lee acquire exclusive ownership over the term LEE? Yes. Suggestive about the nature of the product.
No because Lee refers to a surname therefore The SC said that MASTER is a suggestive term
cannot be appropriated or registered. because it suggests about the nature of the product.
Did HD Lee has actual use of trademark Lee in the Philippines? What does the relation between MASTER and ROBERT
No though it has registered its name as a JAWORSKI?
requirement under our law there must be actual use Master strategist.
of the trademark.
What test employed by the SC in this case?
AMIGO MANUFACTURING v. CLUETT PEABODY The dominancy test.
What is the dominant feature in the “GOLD TOE” “GOLD Why not the holistic test?
TOP”? Because the totality test covers only the visual side
O Both have gold checkered lines against a of the trademark while in the dominancy test it
predominantly black background tackles not only the visual but also the aural or the
O The representation of a sock with a magnifying glass overall description of the trademark.
O The word linenized with arrows printed on the label
O Representation of man’s foot wearing a sock The SC said that the holistic test only relies on visual
O Same type of lettering comparison not including the aural comparison. The
court also said that it something contrary to the
SOCIETE DES PRODUITS NESTLE v. CA elementary postulate of the law on trademark but of
course that is not the ratio decidendi it is only an
What is the dominant feature in both trademarks? obiter dictum. We also use the holistic test and the
The word MASTER dominancy test.
25
Republic Act No. 9502 June 6, 2008 SEC. 6. Section 26 of Republic Act No. 8293, otherwise known
as the Intellectual Property Code of the Philippines, is hereby
AN ACT PROVIDING FOR CHEAPER AND QUALITY amended to read as follows:
MEDICINES, AMENDING FOR THE PURPOSE REPUBLIC ACT
NO. 8293 OR THE INTELLECTUAL PROPERTY CODE, REPUBLIC "SEC. 26. Inventive Step. - 26.1. An invention involves
ACT NO. 6675 OR THE GENERICS ACT OF 1988, AND an inventive step if, having regard to prior art, it is
REPUBLIC ACT NO. 5921 OR THE PHARMACY LAW, AND FOR not obvious to a person skilled in the art at the time
OTHER PURPOSES of the filing date or priority date of the application
claiming the invention. (n)
AMENDMENTS TO REPUBLIC ACT NO. 8293, OTHERWISE
KNOWN AS THE INTELLECTUAL PROPERTY CODE OF THE "26.2. In the case of drugs and medicines, there is no
PHILIPPINES inventive step if the invention results from the mere
discovery of a new form or new property of a known
SEC. 5. Section 22 of Republic Act No. 8293, otherwise known substance which does not result in the enhancement
as the Intellectual Property Code of the Philippines, is hereby of the known efficacy of that substance, or the mere
amended to read as follows: discovery of any new property or new use for a
known substance, or the mere use of a known
"SEC. 22. Non-Patentable Inventions. - The following process unless such known process results in a new
product that employs at least one new reactant."
shall be excluded from patent protection:
"22.1. Discoveries, scientific theories and SEC. 7. Section 72 of Republic Act No. 8293, otherwise known
mathematical methods, and in the case of as the Intellectual Property Code of the Philippines, is hereby
drugs and medicines, the mere discovery of amended to read as follows:
a new form or new property of a known
"SEC. 72. Limitations of Patent Rights. - The owner of
substance which does not result in the
a patent has no right to prevent third parties from
enhancement of the known efficacy of that
performing, without his authorization, the acts
substance, or the mere discovery of any
new property or new use for a known
"22.6. x x x."
substance, or the mere use of a known
process unless such known process results
in a new product that employs at least one
new reactant.
"For the purpose of this clause, salts, esters,

ethers, polymorphs, metabolites, pure
form, particle size, isomers, mixtures of
isomers, complexes, combinations, and
other derivatives of a known substance
shall be considered to be the same
substance, unless they differ significantly in
properties with regard to efficacy;
"22.2. x x x;
"22.3. x x x;
"22.4. x x x;
"22.5. x x x; and
26
referred to in Section 71 hereof in the following
circumstances:
"72.1. Using a patented product which has been put on the

market in the Philippines by the owner of the product, or
with his express consent, insofar as such use is performed
after that product has been so put on the said market:
Provided, That, with regard to drugs and medicines, the
limitation on patent rights
shall apply after a drug or medicine has been introduced in

the Philippines or anywhere else in the world by the patent
owner, or by any party authorized to use the invention:
Provided, further, That the right to import the drugs and
medicines contemplated in this section shall be available to
any government agency or any private third party;
"72.2. Where the act is done privately and on a non-

commercial scale or for a non- commercial purpose:
Provided, That it does
27
not significantly prejudice the economic on a non-

interests of the owner of the patent; commercial scale
or for a non-
"72.3. Where the act consists of making or
using exclusively for experimental use of
the invention for scientific purposes or
educational purposes and such other
activities directly related to such scientific
or educational experimental use;
"72.4. In the case of drugs and medicines,

where the act includes testing, using,
making or selling the invention including
any data related thereto, solely for
purposes reasonably related to the
development and submission of
information and issuance of approvals by
government regulatory agencies required
under any law of the Philippines or of
another country that regulates the
manufacture, construction, use or sale of
any product: Provided, That, in order to
protect the data submitted by the original
patent holder from unfair commercial use
provided in Article 39.3 of the Agreement
on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the
Intellectual Property Office, in consultation

with the appropriate government agencies,
shall issue the appropriate rules and
regulations necessary therein not later than
one hundred twenty (120) days after the
enactment of this law;
"72.5. Where the act consists of the

preparation for individual cases, in a
pharmacy
or by a medical professional, of a medicine

in accordance with a medical
shall apply after a drug or medicine has

been introduced in the Philippines or
anywhere else in the world by the patent
owner, or by any party authorized to use
the invention: Provided, further, That the
right to import the drugs and medicines
contemplated in this section shall be
available to any government agency or any
private third party;
"72.2. Where the act is done privately and

28
commercial purpose: Provided, That it does not significantly prejudice
the economic interests of the owner of the patent;
"72.3. Where the act consists of making or using exclusively for

experimental use of the invention for scientific purposes or
educational purposes and such other activities directly related to such
scientific or educational experimental use;
"72.4. In the case of drugs and medicines, where the act includes
testing, using, making or selling the invention including any data
related thereto, solely for purposes reasonably related to the
development and submission of information and issuance of
approvals by government regulatory agencies required under any law
of the Philippines or of another country that regulates the
manufacture, construction, use or sale of any product: Provided, That,
in order to protect the data submitted by the original patent holder
from unfair commercial use provided in Article 39.3 of the
Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS Agreement), the Intellectual Property Office, in consultation
with the appropriate government agencies, shall issue the appropriate
rules and regulations necessary therein not later than one hundred
twenty (120) days after the enactment of this law;
"72.5. Where the act consists of the preparation for individual cases,
in a pharmacy or by a medical professional, of a medicine in
accordance with a medical
"74.3. All cases arising from the implementation of this provision shall
be cognizable by courts with appropriate jurisdiction provided by law.
"No court, except the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other
provisional remedies that will prevent its immediate execution.
"74.4. The Intellectual Property Office (IPO), in consultation with the

appropriate
29
government agencies, shall issue the economy as determined by the appropriate agency
appropriate implementing rules and of the Government, so requires; or
regulations for the use or exploitation of
patented inventions as contemplated in this
"93.3. Where a judicial or administrative body has
section within one hundred twenty (120)
determined that the manner of exploitation by the
days after the effectivity of this law."
owner of the patent or his licensee is anti-
competitive; or
SEC. 9. Section 76.1 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, is
"93.4. In case of public non-commercial use of the
hereby amended to read as follows:
patent by the patentee, without satisfactory reason;
"SEC. 76. Civil Action for Infringement. - 76.1. The

"93.5. If the patented invention is not being worked
making, using, offering for sale, selling, or importing
in the Philippines on a commercial scale, although
a patented product or a product obtained directly or
capable of being worked, without satisfactory
indirectly from a patented process, or the use of a
reason: Provided, That the importation of the
patented process without the authorization of the
patented article shall constitute working or using the
patentee constitutes patent infringement: Provided,
patent; (Secs. 34, 34-A, 34-B, R.A. No. 165a) and
That, this shall not apply to instances covered by
Sections 72.1 and 72.4 (Limitations of Patent Rights);
Section 74 (Use of Invention by Government); "93.6. Where the demand for patented drugs and
Section 93.6 (Compulsory Licensing); and Section 93- medicines is not being met to an adequate extent
A (Procedures on Issuance of a Special Compulsory and on reasonable terms, as determined by the
License under the TRIPS Agreement) of this Code. Secretary of the Department of Health."
SEC. 11. A new Section 93-A is hereby inserted after Section

"76.2. x x x; development of other vital sectors of the
national
"76.3. x x x;
"76.4. x x x;
"76.5. x x x; and
"76.6. x x x."
SEC. 10. Section 93 of Republic Act No. 8293, otherwise

"SEC. 93. Grounds for Compulsory Licensing. - The

Director General of the Intellectual Property Office
may grant a license to exploit a patented invention,
even without the agreement of the patent owner, in
favor of any person who has shown his capability to
exploit the invention, under any of the following
circumstances:
"93.1. National emergency or other circumstances of

extreme urgency;
"93.2. Where the public interest, in particular,

national security, nutrition, health or the
30
93 of Republic Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, to read as follows:
"SEC. 93-A. Procedures on Issuance of a Special

Compulsory License under the TRIPS Agreement. - 93-A.1.
The Director General of the Intellectual Property Office,
upon the written recommendation of the Secretary of the
Department of Health, shall, upon filing of a petition, grant
a special compulsory license for the importation of
patented drugs and medicines. The special compulsory
license for the importation contemplated under this
provision shall be an additional special alternative
procedure to ensure access to quality affordable medicines
and shall be primarily for domestic consumption: Provided,
That adequate remuneration shall be paid to the patent
owner either by the exporting or importing country. The
compulsory license shall also contain a provision directing
the grantee the license to exercise reasonable measures to
prevent the re- exportation of the products imported
under this provision.
"The grant of a special compulsory license under this

provision shall be an exception to Sections 100.4 and
100.6 of Republic Act No. 8293 and shall be immediately
executory.
31
"No court, except the Supreme Court of the will only be granted after the petitioner has made
Philippines, shall issue any temporary restraining efforts to obtain authorization from the patent
order or preliminary injunction or such other owner on reasonable commercial terms and
provisional remedies that will prevent the grant of conditions but such efforts have not been successful
the special compulsory license. within a reasonable period of time.
"93-A.2. A compulsory license shall also be available "95.2. The requirement under Subsection 95.1 shall
for the manufacture and export of drugs and not apply in any of the following cases:
medicines to any country having insufficient or no
manufacturing capacity in the pharmaceutical sector
"(a) Where the petition for compulsory license seeks
to address public health problems: Provided, That, a
to remedy a practice determined after judicial or
compulsory license has been granted by such
administrative process to be anti-competitive;
country or such country has, by notification or
otherwise, allowed importation into its jurisdiction
"(b) In situations of national emergency or other
of the patented drugs and medicines from the
circumstances of extreme urgency;
Philippines in compliance with the TRIPS Agreement.
"(c) In cases of public non-commercial use; and

"93-A.3. The right to grant a special compulsory
license under this section shall not limit or prejudice
the rights, obligations and flexibilities provided "(d) In cases where the demand for the patented
under the TRIPS Agreement and under Philippine drugs and medicines in the Philippines is not being
laws, particularly Section 72.1 and Section 74 of the met to an adequate extent and on reasonable terms,
Intellectual Property Code, as amended under this as determined by the Secretary of the Department
Act. It is also without prejudice to the extent to of Health.
which drugs and medicines produced under a
compulsory license can be exported as allowed in "95.3. In situations of national emergency or other
circumstances of extreme urgency, the right holder
the TRIPS Agreement and applicable laws." shall be notified as soon as reasonably practicable.
known as the Intellectual Property Code of the Philippines, is "95.4. In the case of public non-commercial use,
hereby amended to read as follows: where the government or contractor, without
making a patent search, knows or has demonstrable
"SEC. 94. Period for Filing a Petition for a Compulsory grounds to know that a valid patent is or will be used
License. - 94.1. A compulsory license may not be by or for the government, the right holder shall be
applied for on the ground stated in Subsection 93.5 informed promptly. (n)
before the expiration of a period of four (4) years
from the date of filing of the application or three (3) "95.5. Where the demand for the patented drugs
years from the date of the patent whichever period and medicines in the Philippines is not being met to
expires last. an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of
"94.2. A compulsory license which is applied for on Health, the right holder shall be informed promptly."
any of the grounds stated in Subsections 93.2, 93.3,
93.4, and 93.6 and Section 97 may be applied for at SEC. 14. Section 147 of Republic Act No. 8293, otherwise
any time after the grant of the patent. (Sec. 34(1), R. known as the Intellectual Property Code of the Philippines, is
A. No. 165)" hereby amended to read as follows:
SEC. 13. Section 95 of Republic Act No. 8293, otherwise "SEC. 147. Rights Conferred. - 147.1. Except in cases
known as the Intellectual Property Code of the Philippines, is of importation of drugs and medicines allowed
hereby amended to read as follows: under Section 72.1 of this Act and of off-patent
drugs and medicines, the owner of a registered mark
"SEC. 95. Requirement to Obtain a License on shall have the exclusive right to prevent all third
Reasonable Commercial Terms. - 95.1. The license parties not having the owner's consent from using in
32
the course of trade identical or similar signs or
33
containers for goods or services which are identical Act No. 8293, otherwise known as the Intellectual Property
or similar to those in respect of which the trademark Code of the Philippines.
is registered where such use would result in a
likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a
likelihood of confusion shall be presumed.
"There shall be no infringement of trademarks or

tradenames of imported or sold patented drugs and
medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and
medicines: Provided, That, said drugs and medicines
bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon,
under Section 155 of this Code.
"147.2. x x x."

"SEC. 159. Limitations to Actions for Infringement. -

Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed

under this Act shall be limited as follows:
"159.1. x x x;
"159.2 x x x;
"159.3 x x x; and
"159.4 There shall be no infringement of trademarks

or tradenames of imported or sold drugs and
medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and
medicines: Provided, That said drugs and medicines
bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon as
defined under Section 155 of this Code."
SEC. 16. Implementing Rules and Regulations on

Amendments to Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines. - Unless
otherwise provided herein, the Intellectual Property Office, in
coordination with the Department of Health and the Bureau
of Food and Drugs, shall issue and promulgate, within one
hundred twenty (120) days after the enactment of this Act,
the implementing rules and regulations to effectively
implement the provisions of this Act that relate to Republic
34
FINALS What about the Value Added Theory?

That when labor produces something of value to
IPL6 others, the laborers deserve some benefit for it
What is the labor theory of property according to John Locke? Distinguish the Normative and Instrumental interpretation
According to Locke, what is the basis of granting property to Instrumental – unpleasantness of labor should be
labor? rewarded with property because people must be
motivated to perform labor
There are 2 interpretations of John Locke’s theory, what are Normative – unpleasantness of labor should be
these two interpretations? rewarded with property
Instrumental and Normative interpretation Our intellectual property laws were based on the US
Constitution and American Jurisprudence. The power of the
What is the nature of labor that needs it to be rewarded with Congress to grant intellectual property rights, is that
property? constructed under the normative or instrumental
Because labor is unpleasant interpretation? Is the US Constitution was drafted under
normative or instrumental interpretation?
Are all kinds of labor unpleasant? Is idea making labor? Or is Instrumental interpretation
it a recreation? How do you know if a certain activity is labor?
How do you characterize an activity to be a labor? Why?
Since the Congress is given the power to grant
Who is the author of a view which is opposed to John Locke? intellectual property rights in order to promote the
progress of science and the useful arts. Intellectual
Karl Marx
property rights are granted to motivate the artists or
What is Karl Marx’s theory as opposed to John Locke’s? scientists to perform labor
That property should be owned in common
What are the different intellectual property rights?
Why is he against giving individual property? Is there  Trademark,
something evil about it?   patent,
It will result to inequality  copyright,
 tradename,
How did John Locke opposed that argument?  servicemarks,
That there are, at first, properties which no one  industrial design,
owned and that individuals may appropriate it by  trade secrets,
exerting labor upon it. By using labor they can  utility model...
appropriate the property
What is the distinction between Ideas and form of expression?
What is that condition according to John Locke? If I have an intellectual creation, do i need to have a
The enough and as good condition certificate of copyright registration before I can be protected?
No. Because copyright protection is given from the
What is the enough and as good condition? Do you think all moment of creation (Sec. 172, IP Code)
the things in this world can be exhausted?
There are inexhaustible objects Sec. 172. Literary and Artistic Works. -
172.1 Literary and artistic works, hereinafter referred to as
What are the 2 theories regarding labor? "works", are original intellectual creations in the literary and
artistic domain protected from the moment of their creation
The Avoidance View of Labor and The Value Added and shall include in particular:
Theory (a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
What is the Avoidance View of Labor? (c) Lectures, sermons, addresses, dissertations
prepared for oral delivery, whether or not
Depicts labor as something which people avoid or reduced in writing or other material form;
want to avoid, something they don’t like, an activity (d) Letters;
they engage in because they must (e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb
shows;
35
(f) Musical compositions, with or without words;
36
(g) Works of drawing, painting, architecture,

sculpture, engraving, lithography or other works Yes. Mr. Ong have a certificate of copyright
of art; models or designs for works of art; registration over the two dragon design, the same
(h) Original ornamental designs or models for design use by Mr. Tan
articles of manufacture, whether or not
registrable as an industrial design, and other
works of applied art; Which office issued it?
(i) Illustrations, maps, plans, sketches, charts and The National Library
three-dimensional works relative to geography,
topography, architecture or science; Before the court can grant an injunction, what are the two
(j) Drawings or plastic works of a scientific or
technical character; requisites?
(k) Photographic works including works produced by It must establish injury and a clear legal right
a process analogous to photography; lantern
slides; The SC said that Mr. Ong does not have a right even if he is a
(l) Audiovisual works and cinematographic works
and works produced by a process analogous to holder of certificate of copyright registration. Why?
cinematography or any process for making audio- The SC said that because it appears that there is an
visual recordings; existing copyright registration of the two dragon
(m) Pictorial illustrations and advertisements; design by Ceroil, in China, then, it is now doubtful
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic whether Mr. Ong has a right. And when there is no
clear legal right there is no basis for injunction. The
works. SC also said that the author of the a work in its
original form is the one that is protected. In this case
172.2. Works are protected by the sole fact of their creation, it does not appear that Mr. Ong is the original
irrespective of their mode or form of expression, as well as of
their content, quality and purpose. creator.
Can your ideas be adopted by another person (sa example ni CASE: SAMBAR v. LEVI STRAUSS
sir, ung idea of highlighting)? The idea of carw ashing, using a What did the SC say about the requirement for copyright
machine, can anyone adopt the same idea? protection?
It must be an original creation
Yes, because ideas are not protected
When does your idea deserve a protection?

CASE: SANTOS v. McCULLOUGH
When the idea is already expressed in a tangible What is a copyright? What consists of a copyright or an
form or medium economic right?
Sec. 177, IP Code (Memorize)
If the work is protected from the moment of creation, why is
there a need for registration? Sec. 177. Copy or Economic Rights. - Subject to the provisions of
Chapter VIII, copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the following
How do you distinguish patent from a copyright?
acts:
Lines from a movie (ex. “may the force be with you”), can it be 177.1. Reproduction of the work or substantial portion of the
the object of copyright protection? work;
No. 177.2 Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of
What is the lacking element in those lines/statements which the work by sale or other forms of transfer of ownership;
do not deserve copyright protection? 177.4. Rental of the original or a copy of an audiovisual or
It lacks literary and artistic value. Remember that cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or a
copyright works are those that forms part of the
musical work in graphic form, irrespective of the ownership of the
literary and artistic domain original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
CASE: CHING KIAN CHUAN v. CA 177.6. Public performance of the work; and
177.7. Other communication to the public of the work
What is vermicelli?
Sotanghon
Can you have a business of renting out dvds without the
consent of the author, publisher or the producer? Is there a
Did Ong have a certificate of copyright registration over the
copyright infringement?
two dragon design?
37
Yes (Sec. 177.4)
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177.4. Rental of the original or a copy of an audiovisual or

cinematographic work, a work embodied in a sound recording, a What’s the meaning of copyright or economic right?
musical work in graphic form, irrespective of the ownership of the Sec. 177. Copy or Economic Rights. - Subject to the provisions of
original or the copy which is the subject of the rental; Chapter VIII, copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the following
If I buy a book from National Bookstore and I resell it, is there acts:
a copyright infringement?
No. Because copyright belongs only to the first 177.1. Reproduction of the work or substantial portion of the
work;
public distribution of the original and each copy of 177.2 Dramatization, translation, adaptation, abridgment,
the work (Sec. 177.3) arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of
177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
the work by sale or other forms of transfer of ownership; 177.4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
IPL7 musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental; (n)
What are the derivative works under the Intellectual Property 177.5. Public display of the original or a copy of the work;
Code? 177.6. Public performance of the work; and
177.7. Other communication to the public of the work
Sec. 173. Derivative Works. -

Is there a difference rental of a work and public lending of a
work under the IPL?
173.1. The following derivative works shall also be
protected by copyright: “Public lending" is the transfer of possession of the
(a) Dramatizations, translations, original or a copy of a work or sound recording for a
adaptations, abridgments, arrangements, limited period, for non-profit purposes, by an
and other alterations of literary or artistic
works; and
institution the services of which are available to the
public, such as public library or archive while
(b) Collections of literary, scholarly or "Rental" is the transfer of the possession of the
artistic works, and compilations of data and original or a copy of a work or a sound recording for
other materials which are original by reason
of the selection or coordination or a limited period of time, for profit-making purposes.
arrangement of their contents. (Sec. 2, [P]
and [Q], P. D. No. 49)
173.2. The works referred to in paragraphs (a) and (b)
I bought 1000 copies of a novel and I decided to rent them out
of Subsection 173.1 shall be protected as a new works: for free, do I need to ask permission from the writer of the
Provided however, That such new work shall not affect novel so that I will not be liable for copyright infringement?
the force of any subsisting copyright upon the original No.
works employed or any part thereof, or be construed
to imply any right to such use of the original works, or
to secure or extend copyright in such original works. What are the works that are rented out for profit which
(Sec. 8, P. D. 49; Art. 10, TRIPS) require the permission of the author?
Sec. 172. Literary and Artistic Works. -
Sec. 174. Published Edition of Work. - In addition to the right 172.1 Literary and artistic works, hereinafter referred
to publish granted by the author, his heirs or assigns, the to as "works", are original intellectual creations in the
publisher shall have a copy right consisting merely of the right of literary and artistic domain protected from the
reproduction of the typographical arrangement of the published moment of their creation and shall include in
edition of the work. particular:
Are derivative works protected as copyrights? (a) Books, pamphlets, articles and other
writings;
YES.
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses,
Give an example of adaptation of literary work. dissertations prepared for oral delivery,
The movie “Dear John” as adapted in the novel of whether or not reduced in writing or other
material form;
the same title.
(d) Letters;
(e) Dramatic or dramatico-musical
What about abridgment of a work? compositions; choreographic works or
A novel by Shakespeare, abridged version. entertainment in dumb shows;
(f) Musical compositions, with or without
39
words;
(g) Works of drawing, painting, architecture, sculpture, engraving,
lithography or other
40
works of art; models or designs for works of

art; If I sing a song in front of my family is that a public
(h) Original ornamental designs or models performance? Or I invited all my relatives and my best friend
for articles of manufacture, whether or not to watch me, is that a public performance?
registrable as an industrial design, and No, because public performance means that the
other works of applied art;
(i) Illustrations, maps, plans, sketches, audience are persons outside the normal circle of a
charts and three-dimensional works relative family and that family’s closest social acquaintances
to geography, topography, architecture or that are or can be present, irrespective of whether
science; they are or can be present at the same place and at
(j) Drawings or plastic works of a scientific
or technical character; the same time, or at different places and/or at
(k) Photographic works including works different times.
produced by a process analogous to
photography; lantern slides; *If I perform before a substantial number of individuals
(l) Audiovisual works and cinematographic
works and works produced by a process
beyond the outside the normal circle of a family and my
analogous to cinematography or any family’s closest social acquaintances, then that is public
process for making audio-visual recordings; performance.*
(m) Pictorial illustrations and
advertisements;
Is there a difference between musical work and sound
(n) Computer programs; and
recording?
(o) Other literary, scholarly, scientific and
artistic works.
172.2. Works are protected by the sole fact of their This right to public perform belongs to the copyright owner,
creation, irrespective of their mode or form of does this extend to both musical work and sound recording?
expression, as well as of their content, quality and
purpose. (Sec. 2, P. D. No. 49a)
YES.
Is there a difference between public display of a work and What are the so called moral rights of the author?
Sec. 193. Scope of Moral Rights. - The author of a work shall,
public performance of a work? independently of the economic rights in Section 177 or the grant
YES. "Public performance," in the case of a work of an assignment or license with respect to such right, have the
other than an audiovisual work, is the recitation,
right: 193.1. To require that the authorship of the works be
playing, dancing, acting or otherwise performing the
attributed to him, in particular, the right that his name,
work, either directly or by means of any device or as far as practicable, be indicated in a prominent way
process; in the case of an audiovisual work, the on the copies, and in connection with the public use of
showing of its images in sequence and the making of his work;
193.2. To make any alterations of his work prior to, or
the sounds accompanying it audible; and, in the case
to withhold it from publication;
of a sound recording, making the recorded sounds 193.3. To object to any distortion, mutilation or other
audible at a place or at places where persons outside modification of, or other derogatory action in relation
the normal circle of a family and that family’s closest to, his work which would be prejudicial to his honor or
reputation; and
social acquaintances are or can be present,
193.4. To restrain the use of his name with respect to
irrespective of whether they are or can be present at any work not of his own creation or in a distorted
the same place and at the same time, or at different version of his work. (Sec. 34, P. D. No. 49)
places and/or at different times, and where the
Sec. 194. Breach of Contract. - An author cannot be compelled to
performance can be perceived without the need for
perform his contract to create a work or for the publication of his
communication within the meaning of Subsection work already in existence. However, he may be held liable for
171.3. damages for breach of such contract. (Sec. 35, P. D. No. 49)
What are the works that can be publicly performed? Sec. 195. Waiver of Moral Rights. - An author may waive his
Musical, choreographic, literary, dramatical, audio- rights mentioned in Section 193 by a written instrument, but no
such waiver shall be valid where its effects is to permit another:
visual or motion picture, pantomine works. Examples
are the singing of the Philippine National Anthem
195.1. To use the name of the author, or the title of his
and rendition of a literary piece. work, or otherwise to make use of his reputation with
respect to any version or adaptation of his work which,
What are the works that can be publicly displayed? because of alterations therein, would substantially
tend to injure the literary or artistic reputation of
Those which are graphic in form. another author; or
Examples are painting, sculpture and murals. 195.2. To use the name of the author with respect to a
41
work he did not create. (Sec. 36, P. D. No. 49)
42
even if they are expressed, explained, illustrated or embodied in a

Sec. 196. Contribution to Collective Work. - When an author work; news of the day and other miscellaneous facts having the
contributes to a collective work, his right to have his contribution character of mere items of press information; or any official text
attributed to him is deemed waived unless he expressly reserves of a legislative, administrative or legal nature, as well as any
it. (Sec. 37. P. D. No. 49) official translation thereof. (n)
Sec. 197. Editing, Arranging and Adaptation of Work. - In the Sec. 176. Works of the Government. -
absence of a contrary stipulation at the time an author licenses or
permits another to use his work, the necessary editing, arranging 176.1. No copyright shall subsist in any work of the
or adaptation of such work, for publication, broadcast, use in a Government of the Philippines. However, prior
motion picture, dramatization, or mechanical or electrical approval of the government agency or office wherein
reproduction in accordance with the reasonable and customary the work is created shall be necessary for exploitation
standards or requirements of the medium in which the work is to of such work for profit. Such agency or office may,
be used, shall not be deemed to contravene the author's rights among other things, impose as a condition the
secured by this chapter. Nor shall complete destruction of a work payment of royalties. No prior approval or conditions
unconditionally transferred by the author be deemed to violate shall be required for the use of any purpose of
such rights. (Sec. 38, P. D. No. 49) statutes, rules and regulations, and speeches, lectures,
sermons, addresses, and dissertations, pronounced,
Sec. 198. Term of Moral Rights. - read or rendered in courts of justice, before
administrative agencies, in deliberative assemblies and
in meetings of public character. (Sec. 9, First Par., P. D.
198.1. The rights of an author under this chapter shall No. 49)
last during the lifetime of the author and for fifty (50) 176.2. The Author of speeches, lectures, sermons,
years after his death and shall not be assignable or addresses, and dissertations mentioned in the
subject to license. The person or persons to be charged preceding paragraphs shall have the exclusive right of
with the posthumous enforcement of these rights shall making a collection of his works. (n)
be named in writing to be filed with the National 176.3. Notwithstanding the foregoing provisions, the
Library. In default of such person or persons, such Government is not precluded from receiving and
enforcement shall devolve upon either the author's holding copyrights transferred to it by assignment,
heirs, and in default of the heirs, the Director of the bequest or otherwise; nor shall publication or
National Library. republication by the government in a public document
198.2. For purposes of this Section, "Person" shall of any work in which copy right is subsisting be taken
to cause any abridgment or annulment of the
mean any individual, partnership, corporation,
association, or society. The Director of the National copyright or to authorize any use or appropriation of
Library may prescribe reasonable fees to be charged such work without the consent of the copyright
for his services in the application of provisions of this owners. (Sec. 9, Third Par., P. D. No. 49)
Section. (Sec. 39, P. D. No. 49)
operation, concept, principle, discovery or mere data as such,
Is there a difference between reproduction and copying?
Reproduction is the making of one (1) or more
copies of a work or a sound recording in any manner
or form.
Give example of copying which is not reproduction. Is copying

reproduction? Is reproduction copying?
Reproduction is only one form of copyright or
economic right of the copyright owner but copying
includes all the others, infringement of a work, the
public performance of work is copying, public display
of original copy of the work is copying. The right to
reproduce is only a part of the economic right of the
author but copying a work amounts to infringement.
So the broader term is copying and the right to
reproduce is only a part of the economic right of the
author.
What works are not protected?

Sec. 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall extend,
under this law, to any idea, procedure, system method or
43
What are the rules on ownership of copyright?
Sec. 178. Rules on Copyright Ownership. - Copyright
ownership shall be governed by the following rules:
178.1. Subject to the provisions of this section, in
the case of original literary and artistic works,
copyright shall belong to the author of the work;
178.2. In the case of works of joint authorship, the
co- authors shall be the original owners of the
copyright and in the absence of agreement, their
rights shall be governed by the rules on co-
ownership. If, however, a work of joint authorship
consists of parts that can be used separately and the
author of each part can be identified, the author of
each part shall be the original owner of the
copyright in the part that he has created;
178.3. In the case of work created by an author
during and in the course of his employment, the
copyright shall belong to:
(a) The employee, if the creation of the
object of copyright is not a part of his
regular duties even if the employee uses
the time, facilities and materials of the
employer.
(b) The employer, if the work is the result
of the performance of his regularly-
assigned duties, unless there is an
agreement, express or implied, to the
contrary.
178.4. In the case of a work-commissioned by a
person other than an employer of the author and
who pays for
44
it and the work is made in pursuance of the

commission, the person who so commissioned the Ms. Reyes is an employee of a law firm. Her hobby is to make
work shall have ownership of work, but the copyright greeting cards. Who owns the copyright of the greeting
thereto shall remain with the creator, unless there is a cards?
written stipulation to the contrary; Ms. Reyes. In the case of work created by an author
178.5. In the case of audiovisual work, the copyright
shall belong to the producer, the author of the during and in the course of his employment, the
scenario, the composer of the music, the film director, copyright shall belong to the employee, if the
and the author of the work so adapted. However, creation of the object of copyright is not a part of his
subject to contrary or other stipulations among the regular duties even if the employee uses the time,
creators, the producers shall exercise the copyright to
an extent required for the exhibition of the work in any facilities and materials of the employer.
manner, except for the right to collect performing
license fees for the performance of musical Give the rules on TRANSFER OR ASSIGNMENT OF COPYRIGHT.
compositions, with or without words, which are Sec. 180. Rights of Assignee. -
incorporated into the work; and 180.1. The copyright may be assigned in whole or in
178.6. In respect of letters, the copyright shall belong part. Within the scope of the assignment, the assignee
to the writer subject to the provisions of Article 723 of is entitled to all the rights and remedies which the
the Civil Code. (Sec. 6, P. D. No. 49a) assignor had with respect to the copyright.
180.2. The copyright is not deemed assigned inter
Sec. 179. Anonymous and Pseudonymous Works. - For purposes of vivos in whole or in part unless there is a written
this Act, the publishers shall be deemed to represent the authors indication of such intention.
of articles and other writings published without the names of the 180.3. The submission of a literary, photographic or
authors or under pseudonyms, unless the contrary appears, or the artistic work to a newspaper, magazine or periodical
pseudonyms or adopted name leaves no doubts as to the author’s for publication shall constitute only a license to make a
identity, or if the author of the anonymous works discloses his single publication unless a greater right is expressly
identity. granted. If two (2) or more persons jointly own a
copyright or any part thereof, neither of the owners
shall be entitled to grant licenses without the prior
A book was written by A and B. Mr. B authored chapters 1 to written consent of the other owner or owners. (Sec.
5 while Mr. A authored chapters 6 to 10, who owns the 15, P. D. No. 49a)
copyright of the book? Sec. 181. Copyright and Material Object. - The copyright is distinct
Mr. B owns chapters 1 to 5 while Mr. A owns from the property in the material object subject to it.
Consequently, the transfer or assignment of the copyright shall
chapters 6 to 10, subject to their stipulations. not itself constitute a transfer of the material object. Nor shall a
transfer or assignment of the sole copy or of one or several copies

of the work imply transfer or assignment of the copyright. (Sec.
What if there is no division or designation as to chapters, who 16, P. D. No. 49)
owns the book?
Both of them. In the case of works of joint Sec. 182. Filing of Assignment of License. - An assignment or
authorship, the co-authors shall be the original exclusive license may be filed in duplicate with the National
owners of the copyright and in the absence of Library upon payment of the prescribed fee for registration in
books and records kept for the purpose. Upon recording, a copy
agreement; their rights shall be governed by the of the instrument shall be, returned to the sender with a notation
rules on co-ownership. If, however, a work of joint of the fact of record. Notice of the record shall be published in the
authorship consists of parts that can be used IPO Gazette. (Sec. 19, P. D. No. 49a)
separately and the author of each part can be
identified, the author of each part shall be the Sec. 183. Designation of Society. - The copyright owners or their
original owner of the copyright in the part that he heirs may designate a society of artists, writers or composers to
enforce their economic rights and moral rights on their behalf.
has created.
180.2. The copyright is not deemed assigned inter
Hallmark Company is a maker of greeting cards and Ms. vivos in whole or in part unless there is a written
Reyes is an artist employed by the company to draw sketches indication of such intention.
for the cards. Who owns the copyright of the cards?
Hallmark. In the case of work created by an author Give the rules on Fair Use of a Copyrighted Work.
during and in the course of his employment, the 185.1. The fair use of a copyrighted work for criticism, comment,
copyright shall belong to the employer, if the work is news reporting, teaching including multiple copies for classroom
the result of the performance of his regularly- use, scholarship, research, and similar purposes is not an
infringement of copyright. Decompilation, which is understood
assigned duties, unless there is an agreement, here to be the reproduction of the code and translation of the
express or implied, to the contrary. forms of the computer program to achieve the inter-operability of
an independently created computer program with other programs
may also constitute fair use. In determining whether the use
45
made of a work in any particular case is fair use, the factors to be made from audiovisual works which are
considered shall include: part of the general cinema repertoire of
(a) The purpose and character of the use, including feature films except for brief excerpts of the
whether such use is of a commercial nature or is for work;
non-profit education purposes; (g) The making of ephemeral recordings by
(b) The nature of the copyrighted work; a broadcasting organization by means of its
(c) The amount and substantiality of the portion used own facilities and for use in its own
in relation to the copyrighted work as a whole; and broadcast;
(d) The effect of the use upon the potential market for (h) The use made of a work by or under the
or value of the copyrighted work. direction or control of the Government, by
185.2 The fact that a work is unpublished shall not by itself bar a the National Library or by educational,
finding of fair use if such finding is made upon consideration of all scientific or professional institutions where
the above factors. such use is in the public interest and is
compatible with fair use;
What are the LIMITATIONS ON COPYRIGHT? (i) The public performance or the
Sec. 184. Limitations on Copyright. - communication to the public of a work, in a
184.1. Notwithstanding the provisions of Chapter V, place where no admission fee is charged in
the following acts shall not constitute infringement of respect of such public performance or
copyright: communication, by a club or institution for
(a) the recitation or performance of a work, charitable or educational purpose only,
once it has been lawfully made accessible to whose aim is not profit making, subject to
the public, if done privately and free of such other limitations as may be provided in
charge or if made strictly for a charitable or the Regulations; (n)
religious institution or society; (Sec. 10(1), (j) Public display of the original or a copy of
P. D. No. 49) the work not made by means of a film,
(b) The making of quotations from a slide, television image or otherwise on
published work if they are compatible with screen or by means of any other device or
fair use and only to the extent justified for process: Provided, That either the work has
the purpose, including quotations from been published, or, that original or the copy
newspaper articles and periodicals in the displayed has been sold, given away or
form of press summaries: Provided, That otherwise transferred to another person by
the source and the name of the author, if the author or his successor in title; and
appearing on the work, are mentioned; (k) Any use made of a work for the purpose
(Sec. 11, Third Par., P. D. No. 49) of any judicial proceedings or for the giving
(c) The reproduction or communication to of professional advice by a legal
practitioner.
the public by mass media of articles on 184.2. The provisions of this section shall be
current political, social, economic, scientific interpreted in such a way as to allow the work to be
or religious topic, lectures, addresses and used in a manner which does not conflict with the
other works of the same nature, which are normal exploitation of the work and does not
delivered in public if such use is for unreasonably prejudice the right holder's legitimate
information purposes and has not been interest.
expressly reserved: Provided, That the
source is clearly indicated; (Sec. 11, P. D.
No. 49) IPL8
(d) The reproduction and communication to
the public of literary, scientific or artistic What are the distinctions between COLLECTIVE work and
works as part of reports of current events
by means of photography, cinematography
COLLECTION OF works?
or broadcasting to the extent necessary for Sec 171.2
the purpose; (Sec. 12, P. D. No. 49) COLLECTIVE work is a work created by 2 or more
(e) The inclusion of a work in a publication, natural persons at the initiative and under the
broadcast, or other communication to the
public, sound recording or film, if such direction of another with the understanding that it
inclusion is made by way of illustration for will be disclosed by the latter under his own name
teaching purposes and is compatible with and that contributing natural persons will not be
fair use: Provided, That the source and of identified
the name of the author, if appearing in the
work, are mentioned; COLLECTION OF works
(f) The recording made in schools,
universities, or educational institutions of a Is there a agreement in collection of work that the contributor
work included in a broadcast for the use of will not be identified?
such schools, universities or educational
institutions: Provided, That such recording None.
must be deleted within a reasonable period
after they were first broadcast: Provided,
further, That such recording may not be
46
In collective work and collection of works are all the works Public performance. If you look at the
capable of protection or copyright? definition of communication to the public,
Yes, because of the term “ work.” “the public may access the works from a
place and time individually chosen by
When we say “work,” what does it mean? them.” If it show to the public on certain
This refers to “original” intellectual creations in the time then definitely the public cannot have
literary and artistic protected from access on it from a place and time in their
own choosing.
When you speak of “work” does that refer to original works or
derivative works? If the boxing match will be shown later in youtube by
the moment of their creation (Sec 172.1) HBO Sport Channel, will you consider it public
performance or communication to the public?
The provision states…Literary or artistic works under Communication to the public because you
the chapter of original works (Chapter II). can have access to this works at the time of
your own choosing.
What is the difference between COMMUNICATION TO THE
PUBLIC (Sec 171.3) and PUBLIC PERFORMANCE (Sec 171.6)? Pianist will play at the cultural center of the Philippines on
Sunday and the Concert or recital will be held in 9 am until 12
Is a showing of a motion picture or audiovisual work pm. It will composed of 3 parts but you only get 1 ticket to
st
considered only as communication to the public and not enter the concert. 3 parts because in the 1 partndthe pianist
public performance? will play compositions of Chopan, rd
in the 2 part the
Under Sec 177.6 public performance different from composition of Mozart and
st
in the 3 part the composition of
other communication to the public of the work Rachmaninov. In the 1 part only the family of Ms. Pizaña
st nd
under Sec 177.7. These are two different terms attended. They left after the 1 part. In the 2 part the rd family
which have different definitions. of Ms. Jean Marion attended and left thereafter. The 3 part
was attended the family of Ms. Masilungan.
What is the difference?
Communication to the public or communicate to the Is this a public performance or communication to the public?
public means the making of a work available to the Public performance.
public by wire or wireless means in such a way that

members of the public by wire or wireless means “in Is this a public performance or a private performance?
such a way that members of the public may access Public performance because the law says that “… at
these works from a place and time individually a place or at places where person outside the
chosen by them (at the option of the viewers.” normal circle of a family and that family’s closest
social acquaintances are or can be present at the
How about AUDIOVISUAL work can it be publicly performed or same place and at the normal circle of a family and
only communicated to the public? that the family’s closest social acquaintances are or
It can be both. can be present, irrespective of whether they are or
can be present at the same place and at the same
Can you give an example to show the difference between the time, or at different places and/or at different
two? times...”
 For public performance
 For communication to the public: Here, these families can be present at the same place at the
same time.
Give an example of audiovisual work communicated to the
public and publicly performed. What is the difference between DERIVATIVE WORK (Sec 173)
On March 14 there is going to be a boxing match and COMPILATION OF DATA (Sec 173.1, b.)?
between Pacquiao and Clottey and it will be shown DERIVATIVE works are works derived from original
in various theaters nationwide from 9 am until 1 pm. works
COMPILATION OF DATA are original by reason of the
Will you consider this communication to the public or selection or coordination or arrangement of their
public performance? contents.
47
Under 173.2 these works are protect as new works. Both are because letters per se can be capable of copyright
new works. protection.
Compilation of data are original by reason of arrangement or Give example of derivative work per se.
coordination. They are also new works. Adaptation of a book through motion picture.
Derivative work are original work but are derived from *Collection of works is under derivative works but
another. Therefore derivative work have internal changes by technically speaking collection of works is different
process of transformation, recasting or adaption of the from derivative works.
original work.
Is food pyramid capable of copyright protection?
In compilation of data there is no internal change what is No. Sec 175. Unprotected Subject Matter. It is a
present is selection, coordination or arrangement of data and system, idea, concept…
other materials.
Is the Pyramid of Giza capable of copyright protection?
Are data and other materials in compilation of data Yes. Sec 172.1 (i), mentions architecture.
individually protected as copyright?
No. Can a copyright or economic right be subject of an
assignment?
In Collection of works, are the works individually capable of Yes
copyright protection?
Yes. Under IP Code Sec 172 works are considered as What is the requirement for the assignment to be valid?
the original intellectual works or creations afforded It must be in writing. The copyright not deemed
copyright protection. assigned inter vivos in whole or in part unless there
is a written indication of such intention (Sec 180.2).
Compilation of data and other materials, does not
Can the economic right to publicly perform be assigned to Mr.
mention “works” but it mentions “data and other materials” Ponce and the economic right to publicly display the work be
therefore the data and materials of which
the compilation is composed of are not individually assigned to Ms. Pizaña? Can the right to reproduce be
capable of copy right protection. They are merely assigned to Mr. Ponce and the right to publicly perform to Ms.
compilation of facts. What is capable of copyright Bermudez?
protection is the arrangement, selection or Yes in both cases. The copyright may be assigned in
coordination of data and materials. whole or in part (Sec 180.1).
Derivative works are capable of protection because of the Can the right of the author to object to any form derogatory
internal change of the original work. action be assigned?
No. The rights of the author under the chapter on
Give an example of compilation of data and other materials. Moral Rights…shall not be assignable or subject to
Catalogs license (Sec 198.1).
Telephone directory. Thes are only facts gathered.
You don’t need intellect to generate a fact. Is there in favor ofrdthe copyright proprietor to prevent the use
of his work by a 3 person? Can the author of a book prevent
FEIST CASE others from reading it? Can the composer of the song prevent
another from singing it?
*Books under Sec 172.1 a, are considered works. No. It is not part of the copyright or economic right
rd
of the author. The right to prevent the use by a 3
What about Encyclopedias? person is not part of the copyright of the author.
Individually these works can protected by copyright.
But, does
rd
the author have the right to limit the access or the
c pile letters it becomes a collection of work
What about the book “Letters of Ronald Reagan?” o
Collection of works. Sec 172 d, “Letters.” If you m
48
use by 3 persons?
Yes
becaus
e the
author
has the
right to
reprod
uce,
publicly
perfor
m,
display,
to first
public
distribu
tion of
the
work.
Therefo
re
althoug
h the
author
has no
49
rd
right to prevent its use by a 3 person he has the
rd
right to limit the access or use by 3 person. If I can prove that I never heard or read about
Homer’s Iliad and Odyssey then I’m also the creator
INFRINGEMENT of Iliad and Odyssey, I will not be held liable from
What are the 2 allegations and proofs that plaintiff must have infringement because as far as the law is concerned I
in an infringement case? am also the original creator.
1) The plaintiff is the owner of copyright (Ownership
of copyright) Is registration necessary for copyright protection? What is the
significance of the registration and deposit with the National
Is reproduction copying? Library and SC records?
Yes It proves originality. It proves that you are the
original author.
If you reproduce a book that is reproduction and
copying at the same time. Why?
Because no one knows, until and unless you deposit
Is copying necessarily reproduction? it with the national library or SC library that you are
No, because public performance or public the original author of the work. But once you deposit
st
display or 1 distribution of the work etc is it and obtains a certificate of registration the
copying. presumption is that you are the original author of
the work. Not necessarily that you are the owner of
This is why the law says “copy”right not reproright. the work but that you are the original author of the
Copying is a broad term is encompasses all the work.
bundle of rights called copyright or economic right.
Is there a provision in IP Code saying the Certificate of
2) Copying copyright ownership is a prima facie evidence of ownership?
Is at like the Law on Trademarks that the certificate of
Does the violation of the provisions of the IP Code registration is a prima facie evidence of ownership?
constitute infringement? None.
No.
Copyrightable subject matter.
Under the broad term of ownership the plaintiff must also
prove: How can you prove copying? Can you prove copying
1) Originality. If the author is not the original creator, by direct evidence?
he is not the owner. It is rarely possible. Infringer will not
2) Copyrightable subject matter. announce to the public that he copied it.
Originality. If the author is not the original creator, he is not Example:

the owner. Assuming I have photographicst
memory, I
read a book from the 1 page to the last
Is originality different from novelty? page and memorize everything and
Yes. returned it to the library. In a piece ofstpaper
I wrote everything down from the 1 page
Example: I love poems. I’ve never read heard of to the last page.
Homer’s Iliad or Odyessy. I wrote a poem that is
exactly similar as that of Homer’s Iliad and Odyssey. Is this copying?
Yes.
Will I be held liable for infringement?
No because novelty is different from originality.
Therefore it is possible for two persons to have
similar or identical works but they will never be held
liable for infringement because originality merely
requires that the work owes its creation to the
author.
50
How can you prove that I copied the work?

Example 1:
Even if I don’t have photographic memory, I I am a comedian in comedy bar. You are my
borrowed a book and secretly copied the contents of audience and my duty is to make you laugh. I
the book. How can you prove that I copied the work? borrowed a speech from or song of Senator Villar. I
By proving the “substantial” similarity. Not made fun of it and made a parody out of the speech
necessarily exact similarity. or song.
This it alone prove copying or do you need to prove Is that an infringement of copyright?
another element? None because the use has no effect upon the
That the infringer has access to the work. potential market for or value of the copyrighted
work.
So to prove copying you need to prove two things:
1) The infringer has access to the work Example 2:
2) Substantial similarity I made a musical composition (musical notes and
lyrics). Mr. Ponce is engaged in song hits business.
FAIR USE He used the lyrics of my composition, not the
musical notes.
What is FAIR USE? What are the activities that are considered
fair use? Is he liable for copyright infringement?
The fair use of a copyrighted work for: No.
 criticism,
 comment, Example 3
 news reporting, I am a producer of a film. I read Harry Potter Book
 teaching including multiple copies for class room and had an idea to make motion picture. I copied
use, some portions which I think can be made as motion
 scholarship, picture. The motion picture that I made became a
 research and block buster hit in Holly Wood.
 other similar purposes is not infringement of
copyright. Is there an infringement?
 Decompilation…the reproduction of the code and th
translation of the forms of the computer program to A good defense to an infringement case is fair use. The 4
achieve the inter-operability of and independently factor says, if there is an effect to the use upon the potential
created computer program with other programs (Sec market for or value of the copyrighted work is not considered
185.1). as fair use. If there is no effect then there is no fair use.
rd
What is the difference between COMPILATION of data and In the 3 example I will make an argument that the motion
other materials and DECOMPILATION of data and other picture has a different market as compared to the book Harry
materials. Potter. They have different potential market. I will also make
There is no such thing as decompilation of data and an argument that because of the motion picture the value of
other materials, but there is such thing as the Harry Potter book was enhanced. Therefore I can make
decompilation of computer programs. an argument for fair use even if my purpose is a commercial
one.
What are the 4 FACTORS to be considered in determining nd
whether there is fair use? 2 Example. The market for music in graphical form is
a) The purpose and character of the use, including different from song hits. One who buys music in graphical
whether such use is for a commercial nature or is for form buys it because he wants to buy a piano or organ or
non-profit education purposes; guitar. But one who buys song hits only wants to use it for
b) The nature of the copyrighted work singing.
c) The amount or substantiality of the portion used in st
relation to the copyrighted work as a whole; and 1 Example: Parody has different market compared to that of
d) The effect of the use upon the potential market for a song.
or value of the copyrighted work (Sec 185.1).
51
That is what we mean when we say fair use. You have to What is effect of publication on copy right protection does it
factor in the 4 factors. divest copyright protection or extend copyright protection?
Whether it is for Extend. The law says for this work its 25 years of 50
1) commercial purpose or non profit purpose years from the making or 25 years or 50 years from
2) The nature of the copyrighted work the publication. Therefore it extends.
3) The amount or substantiality of the portion used in
relation to the copyrighted work as a whole; and What is the effect of publication on international copyright?
4)The effect of the use upon the potential market for or Example: I am a national of country X. country X is a
value of the copyrighted work member of Berne Convention is my work protected
in country Z which is also member of Berne
Translation of songs by another is considered infringement. Convention.
Translations are derivative works but the author has the right
to abridgment, transformation. These are part of the My country is country X, not a member of Berne Convention. If
economic rights of the person. I published my work in a country which is a member of Berne
Convention is my work protected?
Infringement happens when the person violates the copyright
or economic rights of the author. If there is no copyright or
economic right violated, there is no infringement.
Can you make a back up copy of a computer program?

Yes
At what instances?
If necessary for:
1. The use of the computer program
2. archival purposes (Sec 189.1)
Example:
You bought a computer program that works for Microsoft XP,
but your computer is Microsoft 98, can you make a backup
or adaptation copy of thest computer program?
Yes under the 1 instance.
Archival purpose. If the computer program will be lost,

destroyed or rendered unusable then you can make back up
copy. Only one.
One copy of an Autocad program will cost you about P350,

0. If you are a businessman will only buy one or two copies.
You will not buy one copy for every computer. The program is
reproduced. Reproduction is part of the bundle of economic
rights of the author. If your reproduce it then you are
violating the IP Code.
Berne Convention.
What is the terms of copyright protection?
For different work there is different term of
protection.
52
IPL8 patents applying on patents

mutatis applying mutatis
What is the difference/ differences between patent, utility mutandis. mutandis.
model and industrial design?
What is a patent?
PATENT UTILTY MODEL INDUSTRIAL DESIGN A statutory grant which confers to an inventor or his
legal successor, in return for the disclosure of the
1.New (NOVEL) – New invention to the public, the right for a limited period
Industrially
that which does not from of a Applicable of time to exclude others from making, using, selling
or importing the invention within the territory of the
prior art. country that grants the patent.
(Sec.23)
2. Inventive – an Does it give statutory right in favor of the inventor to exploit
invention his invention?
involves an No
inventive step if
having regard to prior act, it is not obvious to a person skilled in the artSoatwhat doesofitthe
the time give? if date
filing it does not give
or priority statutory
date right to claimin
of the application
3.Industrially Patentable- invention can produced exploit or use his invention?
It gives statutory right in favor of the inventor to
exclude others from exploiting it. To secure the
inventor naturally you can use or exploit your
invention without the benefit of patent but because
of the patent you have the right to exclude others
from commercially exploiting it.
Supposing I’m a medical doctor and I learned a new process

for treating human disease is this patentable subject matter?
No.
What if I invented a new drug for the treatment or curing

that disease, the subject matter patentable?
be and any Yes.
usedin Why did you say a process of treating disease is not

industry. patentable?
(Sec.27) Because it is excluded from patent protection. (Sec.
22.3 of IP Code)
Has all of the 4 essential inventive step No inventive Step and industrially applicable.
Norequisites
Why did the law exclude them?
Because the grant of a patent amounts to a
TERM monopoly. It amounts to a monopoly that others
20 years from the filing7date
years
offrom
the application
the filing
5 years
date of
from
application;
the filingnon
daterenewable cannot use
of the application, the invention.
whicheveris So if you
renewable forgrant a patent forconsecutiv
not morethan2
treatment of a human disease then no others can
use it except for the inventor.
What about for process or treatment or diagnosis for

treatment is that included?
Yes it is non patentable.
Can you have a patent for new variety of a plant?

APPLICABLE RULES No.
Secs. 20-107 Secs. 108- 111 Secs. 112-120 and certain provisions
and provisions on
53
What about Pythagorean theorem? Is that a subject of a

What about a new breed of an animal? patent?
Also not patentable. No
What about the substance inside a plant? Substance that A new business plan?
exists inside a plant? No
It is not a patentable subject matter.
A new plan of counting votes?
What about the discovery of new element for example gold, No
silver, silicon, aluminum, copper, zinc, magnesium,
manganese, is that patentable? What about the machine for counting votes?
No. Yes
TAKE NOTE: anything which exists in nature is not subject of What about the theory according to scientists that the
patent protection there must be a human intervention. dinosaurs were killed by an asteroid? No because scientific
theory cannot be subject of a patent.
What are the kinds of patent? What are the statutory classes
or kinds of patent or invention? What are the requisites of patentability?
1. useful machine 1. Technical solution to a problem which is new;
2. products 2. involves an inventive step;
3. processes 3. industrially applicable;
4. microorganism 4. it is subject of a patent.
5. improvements of those mentioned.
What are the kinds of Intellectual Property Rights under the IP
Are all microorganism subject of a patent? Code:
No. 1. Trademarks/ Tradenames/ Service mark
2. Patent
3. Copyright
What are those that can and what are those that cannot?
Microorganism by its very nature cannot be subject 4. Utility Model
5. Industrial Design
of a patent but microorganism that are made by 6. Lay out/ designs or photography of integrated
genetic engineering that can be a subject of a circuits or what we call as “computer chips”
patent. Do you know that genetic engineering can 7. Geographic Indication of the Source
produce microorganism? Even microorganism that 8. Protection of Undisclosed Information
are made by its purifying culture. Thus, the purified 9. Protection against or from Unfair Competition
from can be subject of patent. So there are 2 case:
(1) when produced in purified form; (2) produced by
a process of genetic engineering. There are only 2 classes of Intellectual Property Rights:
1. Industrial Property Rights
What about animals produced by genetic engineering? Is that 2. Copyrights and Related Rights
subject of a patent?
The US Patent in Trademark Office made a decision All IP Rights that are not part copyright and related rights
on this matter and they said that an animal belongs to Industrial Property Rights so for example
produced by genetic engineer can be the subject of a trademarks, patents, industrial designs these are all industrial
patent. But it has not yet been resolved by the property rights
courts.
Copyright and Related Rights. why do you think the term
So we said that plant varieties and animal breeds can include related rights?
be a subject of a patent but they are subject of Because the related rights refers to the performance
entirely different systems of protection. You read of performers, performer’s right in their
the plant variety act. Pinapatent yan pero you can performances and the producer’s right over some
register it under Plant Variety Act. recordings.
54
What is the geographic indication of source? Can an inventor who file an application for a patent change
An example of this is OLIVE OIL made in Tuscany. It his mind and file an application instead for utility model
indicates the source of the product. Geographic (UM)? What about the other way around?
indication of source are usually made for agricultural BOTH ARE POSIIBLE. The IP Code provides that an
and food products. For example your cheese come application for patent may be changed for
from Rocheport in France. Your coffee-BARAKO application for UM and vice versa.
comes from Batangas. In other words you have
protection for the geographic source. Your product is When will the change be made? Before the grant or refusal of
now from geography then you cannot use a patent or UM. Now why is it that the law allows such
geographic means to indicate the source. For change? What’s the difference between UM and patent?
example olive oil from Tuscany if it is not from What are the requisites of UM? What is the requisite in
Tuscany then you will be violating it. patent that is not available in UM? It is the element of
INVENTIVE STEP. Why an applicant for Patent change his
What about protection from undisclosed information? What mind and filed an application for UM? Because of their
does it refer to? differences between a patent and UM, in Patent there is
It refers to trade secrets. formal or substantive examination, examination as to from
examination as to substance. Will the examination be more
There are many types of trade secrets: rigid than in the case of UM? Yes because you need not
1. chemical formula prove inventive step in UM, in Patent there’s a need. Second
2. business plan. the term of protection in patent is 20 years. What about UM?
3. All kinds of processes, systems of business that are 7 years. While you have an easier examination for UM you
considered confidential they are called as trade have a shorter term of protection compared to patent. Third
secrets. point if you are the inventor and you cannot prove inventive
step what will you do change your application to UM because
What are about computer programs can they be subject of it’s hard to prove the inventive step. That’s why the law says
patent? all contents on the application of patents, UM, industrial
No because they under copyright. design forms part of the prior art because these are all
inventions. It is possible that you have granted a registration
What is your basis in determining novelty? for UM but your invention is actually patentable one and you
If it new and it does not form of prior art. just choose to apply for UM. Still all technologies under these
3 intellectual property rights forms part of the prior art.
What is a prior part?
It includes the whole contents of an application for What about inventive step?
patent, utility model or industrial design published A qualitative difference between a novel
by IPO. development and the “….state of the art” (that is, all
prior art) which must exist fro the development to
For example an inventor file an application for his invention be patentable. A development which is found to be
here in the Philippines that same invention was published or obvious to a person of appropriate skill in the light of
made available anywhere in the world to the public then that the state of the art would lack an inventive step.
is not already an invention capable of invention because it
lacked the element of novelty because the law says that What is not obvious in the person skilled in the art is the
anything made available to the public anywhere in the world advanced form or the development of the invention.
forms part of a prior art.
Who is the person skilled in the art?
How do we make it available to the public? He is considered an ordinary or average person in
By TV/RADIO Broadcast, internet, written articles, the technical field. For example in the case of
published journals, newspaper any form of making it pharmaceutical, they are the chemical engineers,
available to the public forms part of a prior art. pharmacologist or the pharmacist.
Why do we include patents, utility model, industrial design? Why is the person skilled in the art being average or ordinary?
The person skilled in the art is only a theoretical
person, it becomes now the standard or the
threshold for determining whether there is an
55
inventive step because if they can make the priority date for his invention in the Philippines? He cannot
advancement of the invention then there is no because the reckoning date will be the earliest date which is
inventive step because he is just an ordinary or Jan 1, 09 so pag naglapse na yung 12 months period mo wala
average person in the technical filed, there is no na di ka magrerekon dun sa Canada.
inventive step. For example you have a cellphone
which is not a touch screen and you have a new cell What about the filing of the translation? When will be the
phone which is touch screen now you think that an filing of the translation?
average person invent the advancement or From the normal application of the filing.
development from the ordinary phone to a touch
screen phone? It cannot. What’s the difference between a Patent Cooperation Treaty
(PCT) and Paris Convention? What are the benefits given by
What is the other term for inventive step? this 2?
Non-Obviousness. In Paris Convention it grants the inventor a priority
date (12 months) what about TM? 6 months. In the
While in Novelty your threshold or basis would be the prior PCT you can have file it in 1 country and it will be
art. In Inventive Step your threshold or basis is the person considered as filed in another country member of
skilled in the art. PCT.
When do you determine if there is or there is inventive step or there are 2 phases under the PCT:
novelty? What is the time? 1. International Phase Filing
At the time of the date of the filing or at the time of 2. National Phase
the priority date.
Magfifile ka pa rin naman sa national phase. That’s give you
What’s a priority date? the benefit of filing in 1 country member of PCT. That’s why
The date at which the novelty and inventive step of some foreigners they opt to file here in the Phils. Because it is
an invention is judged. much cheaper to file here in the phils than for example in
Japan. The filing in the Phils. Will give you the filing in other
It is normally the filing date of the patent application countries in international trade or national trade
that first discloses the invention.
Everything made available to the public or anywhere in the
The Paris Convention grants a priority date in favor of world is part or is prior art. Is there any exception to this rule?
nationals of members of Paris Convention. Yes Non- Prejudicial Disclosure (Sec. 25 of IP Code) take note
of this 3 instances daw sbi ni sir.
What’s the benefit of priority date?
For example I am an inventor and I was invited to a
For example a Japanese National filed an application for his conference to speak for my invention. My invention ayan
invention on January 1, 2009. He came to the Philippines to nabasa mo sa powerpoint presentation my invention of the
file his application for the same invention on December12, efficacy of Viagra. Normally that will be considered forming
2009. Can you give priority date/priority right to Japanese part of prior art but because the law grants the inventor non-
national who are both members of Paris Convention? Here prejudicial disclosure of invention the inventor must file
are the requisites for claiming priority rights: within 12 months from the disclosure to the public his
1. that the applicant must be in present claim the invention.
priority right;
2. the local application in the Philippines must be filed Why does the law allows that?
within 12 months from the earliest filing date of the Because most investors are not aware that by
application for the said invention. disclosing their invention it will already form part or
become prior art. nawawala yung novelty. It will not
So you have 3 countries, you have Japan, Canada, Phils, you form part of prior art because the information is
reckoned it from the time of the filing of the earliest date of taken directly or indirectly from the inventor.
the application form. Japan for ex. so Pag naglapse na yung
12 months period mo wala na wala na yung priority date mo. We say that a patent or any technical solution of a problem.
For ex. The applicant filed it on Jan. 1, 09. In Canada he filed Must the problem be old or new? The problem of curing
on Dec. 30, 09. In Phils. He filed it Jan. 2, 2010 can he claim heartaches/heartbreaks. In patent, problem can be old or
56
new while in technical solution the problem must be new Sec. 74 Use by government
because of the requirement of novelty.
Using a patented product which has been put on the
Should the problem be complex? market in the Philippines by the owner of the
No it can be simple. product, or with his express consent insofar as such
use is performed after that product has been so put
Example an inventor invented a safety pin, can it be subject on the said market; is there an exception to this
of a patent? rule?what about if it has been introduced in Japan?
Yes, because it will fulfill the requisites of the Except that in the case of drugs and medicines which
st
following. If you are the 1 inventor of the safety pin has been put or placed into the market or anywhere
then have it subject of a patent because it is novel, it in the world so you have to make a distinction but if
is an inventive step. We said that UM does not have it is not a drug if it is food introduced in the market
inventive step. how will you analyzed it now? There are 2 doctrines.
Why can’t lay out design for integrated circuits (chips) can’t
st
be subject of a patent? On the 1 doctrine is the doctrine of first sale also known as
Because there is no inventive step. doctrine of exhaustion of patent life. st
There are 2
interpretations of the doctrine the 1 is the national
Why can’t it be subject of Copyright? exhaustion interpretation. What is this? It means that when
Because without ?? there will no originality the invention is put into the market in 1 country it exhausts
into the right of that patentee over that invention. But in
What are rights granted to a patent? international exhaustion interpretation when the invention is
Sec.71 placed or put into the market anywhere in the world then it
1. TO RESTRAIN/PROHIBIT/PREVENT exhaust the rights of patentee. This means that in national
O SUBJJECT MATTER is PRODUCT exhaustion the introduction of the invention will exhaust
To restrain, prohibit and prevent patent rights therefore there is limitation of patent but if we
any unauthorized person or entity adopt international if the invention is introduced in the
from making, using, offering for market or anywhere in the world then anyone can use it.
sale, selling or importing that Even if it is not introduced in the Phils as in the case of drugs
product; so you have to get the amended law RA 9502 .
O SUBJECT MATTER is PROCESS
To retsrain, prevent or prohibit any Pag drugs and medicines we follow the international
unauthorized person or entity from exhaustion interpretation. But for others we follow the
using the process and from national exhaustion interpretation.
manufacturing, dealing in, using,
selling or offering for sale, or When is there Section 26an inventive step?
importing any product obtained Section 26 An invention involves an inventive step,
directly or indirectly from such having regard to prior art it skilled in the art at the
process. time of the filing date or priority date of the
2. TO ASSIGN OR TRANSFER application claiming the invention but in the case of
3. TO CONCLUDE LICENSING CONTRACTS drug and medicine there is no inventive step if the
discovery of the form or known property or
What are the rights granted to a patentee? substance does not result to efficiency of such
You have to distinguish. Sa product patent the right known substance. So if there is discovery of a new
to prevent others from some activities like form or a known substance the same is not
manufacturing, selling, importing. Sa project patent patentable if it does not increase or harness the
the right to prevent others from manufacturing and efficiency of the said substance. For ex. A drug
dealing, selling, importing a product produced by betahistene forms part of prior art but the
that patent. manufacturing company invented a drug betahistene
hydrochloride will that be patentable?
What are the limitations on patent right? Yes if it result to efficiency of the known
Sec.72. General Limitation substance. If it does not, it is not
Sec.73 Use by prior user patentable.
57
In patent there is public disclosure of a patent. Why is it there why not?

is public disclosure of patent? What do you mean by public A condition for the grant of compulsory license is
disclosure of an invention? How? that the licensee should go first to negotiate it to the
Through filing of an application. What are the licensor. However if after negotiation the 2 fail to
contents of the application? Sec. 32 come up with a full terms and conditions typically
the royalty rates then he may now go to the
What are claims? government for a compulsory license.
It determines the extent of protection or monopoly
of a patent. What are the instances by which a government can grant
compulsory licenses? Sec. 93-102
How many claims are there? Compulsory is the grant by the director of legal
2 claims: Independent and Dependent Claims. affairs of a license to exploit a patented invention
even without the agreement of the patent owner in
Ex. A contact lens, it forms part of prior art right? You have favor of any person who has shown his capability to
invented contact lens that perfectly fits the concave of the exploit the invention under certain circumstances.
eyeballs because the problems in existing contact lens is that
don’t fit the eyeball. So you claim an independent claim a Grounds
contact claim that perfectly fit the eye or a contact claim that 1. National Emergency
is very soluble in water yun yung extension ng protection mo. 2. when public interest requires
If the contact lense have the property of meeting the 3. manner of exploitation of patent is anti-
requirements of the shape of the eyes so you can claim to competitive
that and you have the monopoly over that. 4. public non commercial use of the patent
5. patented invention is not being worked in
What are the grounds for patent cancellation? the Phils. on a commercial scale although
FORMALITIES capable of being worked.
Upon petition with notice and hearing
What is the Bolar provision?
EFFECT Sec.72.4 of the amendment
Termination of rights conferred by the patent
How do we explain this?
GROUNDS
there was a patent that last for 20 years but prior to
What is claimed as the invention is not new or patentable;
the expiration of 20 yrs. Period there is 1 year (not
Patent does not disclose the invention in a manner
sure daw si sir kc may inissue dawn a rules and
sufficiently clear and complete for it to be carried out by any
regulations but he belives so that it is 1 yr.) prior to
person skilled in the art; and
expiration wherein other generic manufacturing can
Patent is contrary to public order or morality (Sec. 61)
have access to the data provided by the inventor.
Why? So that they can start manufacturing generic
version of a drug. If you don’t allow the bolar
In voluntary licensing what are the prohibited causes?
provision after the 20 year period , then that’s only
Sec.85-92 the time that genric manufacturers will have access
to the data matatagalan yung pag manufacture ng
Voluntary is the grant by the patent owner to a third
generic drugs. If before 20 years you can have the
person of the right to exploit a patented invention.
access so that you can start producing generic drugs.
Prohibited clauses (Sec. 87)
Read the amended 72.3 the Experimental Use Invention
Who grants the compulsory license?
For ex. You are using the patent or the invention
Ex. Party A licensor party B licensee usually the licensor is the only for experimental purposes that’s allowed that’s
inventor and the licensee is someone who wants to have a not an infringement. If you use the invention
license to the products. Without going or negotiating with the privately and not for educational purpose that’s also
licensor party b went to the government and ask for a license. a limitation (72.2)
Should the compulsory license be granted? Sec.72.5 Preparation of Medicinal drug, it is not
No. consider an infringement of a patent.
58
IPL9 Why?
Because there is a human intervention- Genetic
4 REQUISITES of Patent Engineering.
1. Novelty
2. Inventive Step 2. Micro-organism purified by a person. The purified state
3. Industrial Applicability of the micro-organism is capable of patent protection.
4. Patentability of Subject Matter
Give an EXAMPLE of MICRO-BIOLOGICAL and NON-
PATENTABILITY of Subject Matter BIOLOGICAL PROCESS?
The law specifies which subject matters CANNOT BE subject The use of micro-organism created by a genetic
of the patent. engineering for oil spills. This is a subject of a patent.
1. Discoveries
2. Scientific Theories The law says PLANTS and ANIMALS CANNOT be subject of a
3. Mathematical Formula cannot be the subject of a patent.
patent
But, applications of scientific principles and mathematical Why?
formulas/methods are capable of patent. Because for PLANT VARIETES they HAVE a different
SYSTEM OF PROTECTION called the PLANT VARIETY
Example: PROTECTION ACT.
If you use LASER TECHNOLOGY. This is mathematical
formula or scientific principle, but if there is device A plant variety or animal breed cannot be subject of a patent.
capable of generating laser beams such device is But what if a NON-HUMAN MULTI CELLULAR living organism,
capable of patentability. for example, mice.
What about the discovery of a NEW METAL? Can they be the subject of a patent?
The metal itself is not capable of patentability Yes
because it exists in nature. Same with MICRO-ORGANISM. Micro-organisms are the

What if the person who discovered the metal was able to smallest living organism. They are one-celled/uni-cellular;
purify the substance inside the metal, through a process consist of uni-cellular structure or composition.
known as PURIFICATION? After this there multi-cellular, like aligae, plants, or animals.
The purified state can be a subject of purification.
What if MULTI-CELLULAR organisms?
What is the REASON? They can be subject of a patent
Because there is a HUMAN INTERVENTION.
EXCEPT HUMANS. Humans cannot be a created by
Is a MICRO-ORGANISM capable of patent protection? genetic engineering cannot be subject of a patent.
The law says micro-organisms, micro-biological and
non-biological processes are subject of a patent. So What is your BASIS?
micro-organism per se is capable of patent The US Patent and Trademark Office issued a notice
protection. that humans cannot be the subject to a patent.
But isn’t it that micro-organism exists in nature? What is the REASON given the US Patent and Trademark
So what is capable of patent protection? Office?
If there is human intervention. It will VIOLATE the US CONSTITUTION, which says
that there can be NO INVOLUNTARY SERVITUDE
Examples: except as a consequence of a penal law.
1. A micro-organism that was CREATED BY a process known
as GENETIC ENGINEERING then the resulting micro- If you create a human created using a genetic engineering
organism is capable of patent protection? that human can be the subject of involuntary servitude
therefore that is not allowed by the Constitution.
59
Non-human, other multi-cellulars like mice, monkeys created The mere design of the chair is subject of an
through genetic engineering can be the subject of a patent. industrial design. But if because of the design of the
chair it serves functional value then it cannot be a
DISCOVERIES and MATHEMATICAL PRINCIPLES CANNOT be subject of Industrial design protection.
the subject of a patent. But the application themselves can be
a subject of a patent. Why?
Because it can be protected under the UTILITY
Examples: DESIGN PROTECTION REGISTRATION.
The following cannot be a subject of patent -
 Einstein’s Theory of Relativity which is a An INDUSTRIAL DESIGN intellectual creation but it have no
mathematical formula functional or utilitarian value.
 Big Bang Theory by Stephen
 Newton’s Law of Gravity But, the UTILITY MODEL serves a utilitarian value.
What about APPLICATIONS of these theories? Example:

Can be subject of a patent The design of the chair is dictated because it serves
some function like lumbar support. It cannot be the
Example: A ROCKET. It avoids the gravity of the earth because subject of and industrial design.
of its speed. The Rocket system can be a subject of a patent.
But if it simply a design it is capable of registration as
What else cannot be subject of a patent? an industrial design.
Those AGAINST PUBLIC MORALS and PUBLIC ORDER.
What is the difference between a utility model and a patent?
AESTHETIC CREATIONS cannot be the subject of a patent. A patent must fulfil the 4 requisites.
A utility model must also fulfil all the requisites
(see Section 22 for the enumeration of NON-PATENTABLE except the inventive step.
INVENTIONS) of Industrial design, what is absent?

In industrial design the design must be novel, new or
INDUSTRIAL DESIGN original.
A composition of lines or colors or any 3-
dimensional form, whether or not associated with Does it have industrial applicability?
lines or colors PROVIDED that composition form Probably none. It is not a technical solution to a
serves as a pattern or a design or special appearance problem. It is only a design. The design by itself
to the subject, product, or handicraft (Sec 112). cannot be a technical solution to a problem.
Examples: Is there an inventive step?

It also has no inventive step.
1. Car
Is a DESIGN OF A CAR subject industrial design? Consider the distinctions between a patent, utility model and
It DEPENDS. industrial design
If the design is dictated essentially by functional Take note of the Term of protection
consideration to come up with a functional result For-
then it cannot be a subject of an industrial design Patent – 20 years (Sec 54)
(Sec 113.2) utility model – 7 years (Sec 109.3)
industrial design – 5 years, renewable for another 5 years,
If the design of the car is such that the design will renewable for another 5 years for a total of 15 years (Sec
serve to maximize the speed of the car, it can’t be 118)
the subject of an industrial design because it could
dictate the design. *The reckoning point is from the date of filing the application.
2. Chair
60
Can you renew the term of protection of utility model? In other words, Sec 29 should be read in conjunction with Sec
No, it is not subject to renewal. 24. If the invention already formed part of the prior art you
cannot grant a patent to that invention.
TAKE NOTE of PRIOR ART (Sec 24 IPC)
Assuming that there is an existing invention which did not
What is prior art? form part of the prior (it was not made available to the
1. Anything which is made available to the public public). Then another person filed an application for the same
st
anywhere in the word before the filing date of invention. Under the 1 to file rule he will be granted the
registration. right to patent. But, this does not meant that the true and
2. All the contents of an application an application for actual inventor will not have any legal remedy against said
registration a patent, utility model, or industrial person.
published, filed or effective in the Philippines, with a
filing or priority date that is earlier than the filing or Why?
priority date of an earlier application. Because under the provisions of the IP Code (Sec 67) the true
and actual inventor is given the right to do the following after
Take note of Sec 24 and Sec 29: First to File Rule the publication of the application...
What is the “first to file” rule? If there is a publication of the patent he must oppose it,
1. This means if 2 or more persons made a same appeal to the court. That’s why the law says, the court by
invention the person who filed an application for “final order or decision.” If there is a decision or order by the
that invention shall have the right to the patent; or court that the person mention in Sec 29 is not the true and
2. If 2 or more applications are for the same invention, actual inventor, the true and actual creditor can do the
the right to the patent shall be given to the applicant following:
who first filed the application for that invention (Sec 1. Prosecute the application;
29). 2. File a new patent application in respect of the same
invention;
Consider
st
the 2 persons 3. Request that the application be refused; or
The 1ndperson in prior application for the invention 4. Seek cancellation of the patent, if one has already
The 2 person filed an application for the same invention been issued
st
Under the 1 to file rule, who will have the right to the This means that just because you were the one to file, but the
patent?
invention was made by another, you will be admitted
The first to file the application.
because the true and actual inventor has redress under the IP
But, it does not mean that his application will be granted if
Code.
the invention already formed part of prior art.
COMPULSORY LICENSING
Inventing something is different from an invention which
What is the difference between compulsory licensing and
already formed part of the prior art.
assignment?
If it formed part of the prior art it must be made available to
In an assignment there is a transfer of all the rights under the
the public. If your invention was not made available to the
patent. Transfer of the whole patent.
public then it does not form part of the prior art.
In a license there is transfer of the divided portion under the
So it is possible that 2nd person filing the application for the
right under the patent
same invention did not made the invention available to the
nd
public therefore no prior art. Therefore the 2 person who What are the rights under the patent?
filed the application will be granted the right to the patent.
The right to prevent others from-
1. Using
Why?
2. Making
Because that invention did not form part of the prior art.
3. Sell
4. Offer to sell
If 2 persons filed an application for the same invention the
5. Import
one who first filed the application will granted the right to the
patent, unless it be proven that the invention already formed
Therefore you can grant a license to person A right to make,
part of the prior art.
to person B the right to sell, to person C the right to import.
61
You can even grant non-exclusive licenses. The patent owner or licensor monopolizes the
I grant to both A and B the right to make. source of the raw materials therefore prohibiting the
If you want make it exclusive, that’s your right as a patentee. other sources. The latter will not grow.
2 kinds of license Another instance:

1. Voluntary License When the licensee is required to hire a person
This is also called “technology transfer dictated or instructed by the licensor. This is another
arrangement.” There is an agreement between the form of anti-competition.
patent owner (licensor) and the licensee on the
terms and conditions of the license. NOTE: In all of these prohibited clauses, they are anti-
2. Compulsory License competitive therefore they are prohibited.
Even without the agreement of the patent owner
the license is given by the government in favor of The next provisions under the IP Code says, these are the
another person who has shown the capability of mandatory provisions that must be stipulated in the license
commercially exploiting the patent. contract.
Voluntary Licensing Do you need to register a voluntary license agreement?

The patent owner and the licensee will agree on the terms It depends.
and conditions, but before they make the contract, they can’t
come up with reasonable terms and conditions on the grant, If the license agreement, transfer technology
rate or amount of royalty. Is there a government agency agreement/arrangement does not contain any of the
responsible for settling the dispute on the royalty rate? prohibited clauses and contains the mandatory
Documentation Information and Technology Transfer Bureau provisions, there is NO NEED to register. It is valid
(DITTB) under the Intellectual Property Office. It has the and enforceable.
original and exclusive jurisdiction over disputes relating to the
amount or rate of royalty in a license agreement. If it contains one or more of the prohibited clauses it
is unenforceable if not registered. The effect is
uneforceability of the agreement.
The IP Code has a provision on “Prohibited Clauses,” meaning
what the licensor and licensee cannot stipulate.
Why?
Why? The DITTB has the jurisdiction to determine whether
Because these stipulated clauses amounts to anti- it will allow a certain license agreement to contain a
competition or Anti-trust. prohibited clause Sec 91 which contains the
exceptions.
A PATENT is a grant of monopoly rights, but this doesn’t
mean that the patentee is not included in the provisions of What are these exceptions?
the Anti-trust Law. If it will spur the growth of national economy
US SC said that patent holders are not excluded from (John)
Sherman’s Anti Act, which is what we call the “Anti-trust -Increase in foreign exchange earnings, employment
Law.” generation etc.
In the Philippines, the Revised Penal Code – Prohibitions
against monopolies and prohibitions _. So you can have a prohibited clause. But if you want the
license agreement to be enforceable then you must register it
Illustration: with the DITTB. The DITTB will allow it if it complies with Sec
The licensor and the licensee have a stipulation providing that 91, containing all those exceptional circumstances.
the licensee will obtain his raw material only from the source
dictated by the licensor. What about the compulsory license agreement?
There are 6 GROUNDS under compulsory license
Is this prohibited? agreement (Sec 93).
Yes because it will amount to anti-competition.
What are these GROUNDS?
1. National emergency or other circumstances of
extreme urgency;
62
2. Where the public interest, in particular, national The patent system requires the inventor to disclose the
security, nutrition, health or the development of invention. There must be full disclosure of the invention.
other vital sectors of the national economy as
determined by the appropriate agency of the How does he disclose the invention?
Government, so requires; He discloses the invention by complying with the
3. Where a j udicial or administrative body has requirements under the IP Code.
determined that the manner of exploitation by the
owner of the patent or his licensee is anti- The documents that he must attach to the
competitive; or application should be...
4. If the patented invention is not being worked (not
being made available to the public) in the Philippines Contents of the application (Sec 32)
on a commercial scale, although capable of being 1. request for the grant of the patent
worked, without satisfactory reason: Provided, that 2. description of the patented invention
the importation of the patented article shall 3. drawing sufficient to describe the invention
constitute working or using the patent. 4. 1 or more claims
5. Public non-commercial use of the patent by the 5. abstract
patentee, without satisfactory reason;
Under Sec 24, what forms part of a prior art?
Example:
1. Xxx
I am a patent owner. I have a commercial enterprise and
2. All contents of the application...- this means the
use/give my invention for the benefit of the public for free. It
documents under Sec 32
is public because it is for the benefit of the public. It is non-
commercial because I am charging no fee for that.
CANCELLATION (Chapter VI. Sec 62-66)
What does this mean? The inventor must disclose sufficiently clear and complete so
This means that the state wants the inventor or the patentee that a person skilled in the art would be able to carry out the
to commercially exploit the invention. There must be a invention. Otherwise if he failed to do that it will be ground
commercial exploitation of the invention. for the cancellation of the patent. It is required the inventor
must fully disclose his invention.
6. If there is a demand for patented drugs and
medicines and the demand is not sufficiently met as Connect this provision with the provision for the cancellation
determined by the DOH of a patent.
Do you require the petitioner for a compulsory license to What are the grounds for the cancellation of a patent (Sec
prove that he exerted efforts in negotiating reasonable 61)?
terms and conditions under the license with the patent 1. Invention is not new or patentable;
owner? If it does not meet the requirements of novelty it is
General rule: He must. The petitioner must prove that he subject to cancellation
exerted efforts to come up with reasonable terms of
conditions with the licensor/patent owner. The term “not patentable” covers everything –
novelty, industrial applicability, inventive step,
4 Exceptions: patentability of the subject matter.
1. Public interest 2. Patent does not disclose the invention in a manner
2. Where the petition for compulsory license seeks to sufficiently clear and complete for it to be carried
remedy a practice determined after judicial or out by any person skilled in the art; or
administrative process to be anti-competitive 3. The patent is contrary to public order or morality.
3. In situations of national emergency or other
circumstances of extreme urgency; Can you think of another ground for cancellation of a patent
4. In cases of public non-commercial use that is not explicitly mentioned in the IP Code?
If the patent application was filed by a person who is
For patented drugs and medicines. not the true and actual inventor.
63
The true and actual inventor can file the cancellation process results in a new product that employs at least one new
of patent. reactant."
During the cancellation proceedings, can the patentee amend When do you determine if there is an inventive step of the
his patent? invention?
General Rule: he cannot if the patent was There is inventive step if the invention is not obvious
determined not new or patentable, or against public to a person skilled in the art the time of the filing
morals or public order the applicant cannot amend date or time of the priority date.
his application.
But in case of drugs and medicines, the mere
How? discovery of a use or property of such medicine
By sufficiently describing his invention in a manner results in the efficacy of the known substance.
that is capable of being carried out by a person
skilled in the art. The substance itself is subject of a pate. It is
patented, forms part of the prior art. Patented drug
Intellectual Property Office (IPO) Bureau of Legal Affairs forms part of the prior art.
has the jurisdiction to entertain petition for cancellation of a
patent. If there is discovery of the new use of that substance or
Once the application document has been amended by the patented drug, Does the mere discovery of the new use of a
patent owner can make a decision not cancel the patent or patented drug capable of another patent?
maintain the patent because there is already an amendment. No, unless there is a resulting increase in the efficacy
of the patented drugs.
BUT, if the patent failed to fulfill the requisites –
patentability, novelty, inventive step etc. – you can never
amend it.
Illustration:
You can only amend when there is lack of description. Minoxidil was discovered to be substance for hair
growth. Later on it was found out that minoxidil is
In the Philippines inventors are afraid to disclose all their also a drug capable of affecting the receptor cells of
inventions because they think that they might be copied. This the heart therefore it can also treat some has heart
is wrong because, you have to disclose otherwise it can be a diseases.
subject of cancellation.
In the US it is subject of a patent – the mere new use
DRUGS AND MEDECINES of a known substance is subject of a patent.
RA 9502 called the “Cheaper Medicines Law”
This amends certain provisions under the Patent Law But in Philippines after the advent of RA 9502, that
of the IP Code. mere use is not capable of a new patent protection.
Specifically, what are these provisions?

Provisions on the definition of inventive step SEC. 22. Non-Patentable Inventions. - The following shall be excluded from
patent protection:
SEC. 6. Section 26 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to read as "22.1. Discoveries, scientific theories and mathematical methods,
follows: and in the case of drugs and medicines, the mere discovery of a
new form or new property of a known substance which does not
result in the enhancement of the known efficacy of that
"SEC. 26. Inventive Step. - 26.1. An invention involves an inventive
substance, or the mere discovery of any new property or new use
step if, having regard to prior art, it is not obvious to a person
for a known substance, or the mere use of a known process unless
skilled in the art at the time of the filing date or priority date of
such known process results in a new product that employs at least
the application claiming the invention. (n)
one new reactant.
"26.2. In the case of drugs and medicines, there is no inventive

"For the purpose of this clause, salts, esters, ethers, polymorphs,
step if the invention results from the mere discovery of a new
metabolites, pure form, particle size, isomers, mixtures of
form or new property of a known substance which does not result
isomers, complexes, combinations, and other derivatives of a
in the enhancement of the known efficacy of that substance, or
known substance shall be considered to be the same substance,
the mere discovery of any new property or new use for a known
substance, or the mere use of a known process unless such known
64
unless they differ significantly in properties with regard to

efficacy; not only in the Philippines, it will also exhaust the
patent rights.
The law also mentions that the following substances are not
What does it mean?
capable of patent protection. What are these?
In the first instance we adopt the national
salts, esters, ethers, polymorphs, metabolites, pure
interpretation of the principle of
form, particle size, isomers, mixtures of isomers,
exhaustion.
complexes
Example:
Another provision affected by RA 9502 refers to limitations of
If the Invention is introduced in Russian
patent rights.
Market, can I import the invention?
Doctrine of First Sale also known as the exhaustion
No, because we adopted national
of patent right means the first introduction to the
interpretation for all kinds of
market of the patented invention will exhaust the
invention. The right to import is a
right of the patentee.
right granted to the patent owner
therefore I cannot import it unless
Example:
I am authorized by the patent
If I have an invention. If I introduced it to the Philippine
owner because we adhere to the
market, I already exhausted my right.
national interpretation.
EXCEPTION: Drugs and medicines. If the drugs and

SEC. 7. Section 72 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to read as medicine is introduced in Russian Market, can
follows: import it?
Yes, because for drugs and medicines we
"SEC. 72. Limitations of Patent Rights. - The owner of a patent has adopt the international exhaustion principle
no right to prevent third parties from performing, without his that is a very substantial change in the IP
authorization, the acts referred to in Section 71 hereof in the
following circumstances:
Code.
SPECIAL COMPULSORY LICENSING
"72.1. Using a patented product which has been put on
This appears to be in conflict with the international
the market in the Philippines by the owner of the
product, or with his express consent, insofar as such exhaustion principle because the law mentions that
use is performed after that product has been so put on for patented drugs and medicines you need a special
the said market: Provided, That, with regard to drugs compulsory license if import is granted in the
and medicines, the limitation on patent rights
Philippine market. Special compulsory license,
granted by the IPO as recommended by DOH.
shall apply after a drug or medicine has been
introduced in the Philippines or anywhere else in the
world by the patent owner, or by any party authorized Under the provision on Limitation of right, it says the
to use the invention: Provided, further, That the right introduction made anywhere in the world will
to import the drugs and medicines contemplated in exhaust patent rights.
this section shall be available to any government
agency or any private third party;
Special Compulsory Licensing
This refers to drugs and medicines – a separate
provision in compulsory licensing
The law says that in case of drugs and medicines, there is an
exhaustion of patent rights even if the drug or medicine is
It appears to be in conflict will the international
introduced anywhere in the world – not necessarily in the
exhaustion principle because the law mentions that
Philippines. What does it mean?
for patented drugs and medicines you need special
General rule, All inventions if introduced to the
compulsory license to import these drugs in the
Philippine Market will result exhaust the right of the
Philippine market granted by the IPO as
patentee and therefore a limitation of patent right.
recommended by DOH.
However in the case of drugs and medicines, if the
But under the provision on the limitation of rights, it
same has been introduced anywhere in the world,
says that the introduction anywhere in the world will
65
result to patent right into patent right exhaustion. So You don’t register this but anyone who violates this
apparently there is a conflict. So far this is a gray will be held liable.
area in the IP Code.
Those working in manufacturing companies they are
Favorite Bar Question required to sign non-disclosure agreement. They
Patentability of subject matter – i.e. product patent cannot just transfer to a competitor manufacturing
(tangible thing), process patent (intangible; mere company.
technique)
Example : ADD US IN FACEBOOK or FRIENDSTER AS A SIGN

Chemical A is a product, but the process of coming up with OF GRATITUDE
the product, chemical A is a process.
Marx de Chavez – [email protected]
Take Note of IP RIGHTS Mon Pasia – [email protected]
How many IP Rights do you have?
Jen Reyes – [email protected]
Nine (9)
Angela dela Cruz – [email protected]
1. Copyright
April Gerero – [email protected]
2. Related Rights
Soc Marbil – [email protected]
3. Trade Marks
Jam Bermudez – [email protected]
4. Service Marks
Aileen Pizania – [email protected]
5. Geographic Indications
Donna Masilungan – [email protected]
6. Industrial Designs
Theena Martinez – [email protected]
7. Patents
Me-an Ayos – [email protected]
8. Layouts-Designs (Topographies) of Integrated
Circuits ANG HINDI MAG-ADD “MAG-INGAT SA PAGTAWID”
9. Protection of Undisclosed Information (n TRIPS)
*You can only find 3 provisions –

Example:
 Provisions on copyright Provisions and related rights
(performance rights)
 Provisions on computer programs
 Provisions on architectural designs
Is computer program capable of patent protection?

No, it is capable of copyright
What about lay-out designs of integrated circuits, is it capable

of patent protection or copyright protection?
It is not capable of patent protection because there
is no inventive step in the case of lay-out designs of
computer chips.
It is not capable of copyright protection.
It has a different system of registration. Different

registration for utility model and different
registration for industrial design.
Protection of undisclosed information,

trade secrets - right to prevent other from using it
Example: Jollibee recipe for burger steak.

66

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Professor: Atty. Rodolfo P. Soriano Jr.

Mon Cristhoper Pasia (MON)

CASE: KABUSHI KAISHA ISETAN What therefore is actual use?

A prior user shall be considered the owner of the

Why does actual use is the mode of perfecting title of

Aside from Sec. 124.2, what other provisions of RA 8293 will

What is the importance of registration aside from being a

Can you file a case or an action for infringement of a

Is registration a pre requisite for maintaining an action for

CASE: PHILIP MORRIS CASE: C.Y. GABRIEL

When will the office conduct a substantive examination? Absolutely?

requirements. That is why one of the requirements CASE: HICKOCK

CASE: STA.ANA VERSUS MALIWAT

Flormann - Maliwat (June 1962)

What is the mode of perfecting ownership over a TM?

In the application given by Maliwat in the TM Flormann, what

What happened in the stipulation of facts?

Nice Classification – comes from Nice Agreement, nice is a

How many classes are there in Nice Classification?

Section 20 TM Law and Section 4 is there a conflict?

Principle: Extent of protection (limited as SPECIFIED IN THE

Did section 20 prevail over section 4?

Is the filing an application for registration an ex-parte

the civil code? CASE: LEVITON INDUSTRIES

infringement? CASE: LA CHEMISE LACOSTE

How many opposition papers were filed by the counsel of

IPL5 What is your basis?

Cancellation case filed ahead the infringement case?

ETHEPA VERSUS DIRECTOR OF PATENTS

What is the issue in this case?

What is the ruling of the Supreme Court?

*Confusion is likely between trademarks, however, only if

FRUIT OF THE LOOM, INC., vs.

What is the issue in this case?

Distinguish infringement and unfair competition.

1) Infringement of trademark is the unauthorized use of a

"For the purpose of this clause, salts, esters,

"72.1. Using a patented product which has been put on the

shall apply after a drug or medicine has been introduced in

"72.2. Where the act is done privately and on a non-

not significantly prejudice the economic on a non-

"72.4. In the case of drugs and medicines,

Intellectual Property Office, in consultation

"72.5. Where the act consists of the

or by a medical professional, of a medicine

shall apply after a drug or medicine has

"72.2. Where the act is done privately and

"72.3. Where the act consists of making or using exclusively for

"74.4. The Intellectual Property Office (IPO), in consultation with the

"SEC. 76. Civil Action for Infringement. - 76.1. The

SEC. 11. A new Section 93-A is hereby inserted after Section

SEC. 10. Section 93 of Republic Act No. 8293, otherwise

"SEC. 93. Grounds for Compulsory Licensing. - The

"93.1. National emergency or other circumstances of

"93.2. Where the public interest, in particular,

"SEC. 93-A. Procedures on Issuance of a Special

"The grant of a special compulsory license under this

"(c) In cases of public non-commercial use; and