A. INTELLECTUAL PROPERTY RIGHTS IN 1.

Examine applications for grant of letters patent for

GENERAL inventions and register utility models and industrial designs.

1. Intellectual Property Rights 2. Examine applications for the registration of marks,

geographic indication, integrated circuits;
a. Definition
Intangible property rights granted by law to owners of 3. Register technology transfer arrangements and settle
intellectual creations such as inventions, designs, signs, and disputes involving technology transfer payments covered by
names used in commerce, and literary and artistic works. the provisions of Part II, Chapter IX on Voluntary Licensing
and develop and implement strategies to promote and facilitate
b. Intellectual Property Rights under the Intellectual technology transfer;
Property Code (RA 8293)
4. Promote the use of patent information as a tool for
Copyright and Related Rights; technology development;
Trademarks and Service Marks;
Geographic Indications; 5. Publish regularly in its own publication the patents, marks,
Industrial Designs; utility models and industrial designs, issued and approved, and
Patents; the technology transfer arrangements registered;
Utility Models; [Chapter XII]
Layout-Designs (Topographies) of Integrated 6. Administratively adjudicate contested proceedings affecting
Circuits; intellectual property rights;
Protection of Undisclosed Information. [Sec.
4.1, RA 8293] 7. Coordinate with other government agencies and the private
sector efforts to formulate and implement plans and policies to
2. Differences between copyright, trademarks, and patents strengthen the protection of intellectual property rights in the
country [Sec. 5, RA 8293];
The difference between copyright, trademarks, and patent lies
in the scope of protection. 8. Undertake enforcement functions supported by concerned
agencies such as the Philippine National Police, National
A trademark is any visible sign capable of distinguishing the Bureau of Investigation, Bureau of Customs, Optical Media
goods (trademark) or services (service mark) of an enterprise Board, Local Government Units, among others [Sec. 7. (c) RA
from that of another and shall include a stamped or marked 8293, as amended by R.A. 10372];
container of goods. In relation thereto, a trade name means the
name or designation identifying or distinguishing an 9. Conduct visits during reasonable hours to establishments
enterprise. Meanwhile, the scope of a copyright is confined to and business engaging in activities violating intellectual
literary and artistic works which are original intellectual property rights and provisions of this act based on report,
creations in the literary and artistic domain protected from the information or complaint received by the office. [Sec. 7.(d)
moment of their creation. RA 8293, as amended by R.A. 10372]

Patentable inventions, on the other hand, refer to any IPOPHL JURISDICTIONAL THRESHOLD in
technical solution of a problem in any field of human activity administrative complaints for violations of
which is new, involves an inventive step and is industrially laws involving intellectual property rights:
applicable. [Kho v. Court of Appeals, 379 SCRA 410 (2002)] Two hundred thousand pesos (P200,000) or
more in total damages claimed
3. Technology Transfer Arrangements
Role of the IPO with Respect to Technology
Definition Transfer Arrangements
Contracts/Agreements involving: The IPO shall:
1. The transfer of systematic knowledge for:
a. The manufacture of a product, 1. Register technology transfer arrangements and settle
b. The application of a process, disputes involving technology transfer payments
c. Rendering of a service including management contracts;
and 2. Develop and implement strategies to promote and facilitate
technology transfer;
2. The transfer, assignment or licensing of all forms of
intellectual property rights, including the licensing of 3. Promote the use of patent information as a tool for
computer software except computer software developed for technology development;
mass market. [Sec. 4.2, RA 8293]
4. Publish regularly in its own publication the technology
Functions of the Intellectual Property Office transfer arrangements registered. [Sec. 4.4, RA 8293]
(IPOPHL)
Voluntary Licensing & Registration of
Technology Transfer Arrangements
See 9. Licensing, a. Voluntary IV. Patentable subject matter [Sec. 22]
V. Sufficient disclosure [Sec. 35]
B. PATENTS
I. Novelty
1. Patentable Invention An invention shall not be considered new if it forms part of a
a. Inventions; prior art. [Sec. 23, RA 8293]
b. Utility Model;
c. Industrial Designs; and Prior art
d. Lay-Out Designs (Topographies of Integrated Circuits) This shall consist of:
[Note: this is actually a sui generis regime but the amendment a. Everything which has been made available to the
to RA 8293 placed this in the Law on Patents] public anywhere in the world, before the filing date
or the priority date of the application claiming the
Invention Patent invention; [Sec. 24.1, RA 8293]
A patentable invention is any technical solution of a problem b. The whole contents of an application for a patent,
in any field of human activity which is new, involves an utility model, or industrial design registration,
inventive step and is industrially applicable. It may be, or may published in accordance with this Act, filed or
relate to, a product, or process, or an improvement of any of effective in the Philippines, with a filing or priority
the foregoing. [Sec. 21, RA 8293] date that is earlier than the filing or priority date of
the application: Provided, That –
Non-patentable inventions [Sec. 22]
1. Discoveries, scientific theories, and mathematical methods, (i) The application which has validly claimed
and in the case of drugs and medicines: the filing date of an earlier application under
Section 31 of this Act, shall be prior art with
a. The mere discovery of a new form or new property of a effect as of the filing date of such earlier
known substance which does not result in enhancement of the application
known efficacy of that substance; (ii) The applicant or the inventor identified in
both applications are not one and the same.
b. The mere discovery of any new property or new use for a [Sec. 24.2, RA 8293]
known substance; or
Non-prejudicial disclosures
c. The mere use of a known process unless such known This is an exception to the General Rule on Prior Art under
process results in a new product that employs at least one new Sec. 24. It provides that the disclosure of the information
reactant. [RA 8293 as amended by RA 9502, The Cheaper contained in the application during the 12 months preceding
Medicine Act of 2008] the filing date or the priority date of the application shall not
prejudice the applicant on the ground of lack of novelty if such
2. Schemes, rules and methods of performing mental acts, disclosure was made by:
playing games or doing business, and programs for computers a. The inventor
b. A patent office and the information was contained
3. Methods for treatment of the human and animal body by a. in another application filed by the inventor and should not
surgery or therapy and diagnostic methods practiced on the have been disclosed by the office, or in an application filed,
human and animal body. without the knowledge or consent of the inventor, by a third
Exceptions: products and composition for use in any of these party which obtained the information directly or indirectly
methods from the inventor
c. A third party which obtained the information directly or
4. Plant varieties or animal breeds or essentially biological indirectly from the inventor [Sec. 25, RA 8293]
process for the production of plants or animals
Exceptions: micro-organisms; non-biological and II. Inventive Step
microbiological processes An invention involves an inventive step if, having regard to
prior art, it is not obvious to a person skilled in the art at the
5. Aesthetic creations time of the filing date or priority date of the application
claiming the invention. [Sec. 26.1, RA 8293, as amended by
6. Anything contrary to public order or Morality RA 9502]

Standards or requirements for registrability of Invention Cheaper Medicines Act: In case of drugs and medicines,
Patent [Sec. 21] there is no inventive step if the invention results from:
a. The mere discovery of a new form or new property of a
I. Novelty; known substance which does not result in enhancement of the
II. Involves an inventive step; and known efficacy of that substance;
III. Industrially applicable. b. The mere discovery of any new property or new use for a
known substance; or
Additional Requirements
c. The mere use of a known process unless such known a. Right to a Patent
process results in a new product that employs at least one new General Rule: The right to a patent belongs to the inventor,
reactant. [Sec. 26.2, RA 8293 as amended by RA 9502] his heirs, or assigns. When two or more persons have jointly
made an invention, the right to a patent shall belong to them
III. Industrial Applicability jointly. [Sec. 28, RA 8293]
An invention that can be produced and used in any industry
shall be industrially applicable. [Sec. 27, RA 8293] Exceptions: Inventions created pursuant to employment or a
commissioned work
2. Non-Patentable Inventions 1. The person who commissions the work shall own the patent.
The following shall be excluded from patent protection: [Sec. 30.1, RA 8293]
2. The employer has the right to the patent if the invention is
a. Discoveries, scientific theories and mathematical methods, the result of the performance of the employee’s regularly
and in the case of drugs and medicines, the mere discovery of assigned duties. [Sec. 30.2, RA 8293]
a new form or new property of a known substance which does
not result in the enhancement of the known efficacy of that b. First-to-file rule
substance, or the mere discovery of any new property or new RA 8293 changed the basis of ownership of a patent from
use for a known substance, or the mere use of a known process First-to-Invent under RA 165 to First-to-File.
unless such known process results in a new product that
employs at least one new reactant. Salts, esters, ethers, If two or more persons have made the invention separately and
polymorphs, metabolites, pure form, particle size, isomers, independently of each other, the right to the patent shall
mixtures of isomers, complexes, combinations, and other belong to the person who filed an application for such
derivatives of a known substance shall be considered to be the invention, or where two or more applications are filed for the
same substance, unless they differ significantly in properties same invention, to the applicant who has the earliest filing
with regard to efficacy; [Sec. 22.1, RA 8293 as amended by date or, the earliest priority date. [Sec. 29, RA 8293]
RA 9502]
Filing Date
b. Schemes, rules and methods of performing mental acts, The filing date of a patent application shall be the date of
playing games or doing business, and programs for computers; receipt by the Office of at least the following elements:
[Sec. 22.2, RA 8293]
a. An express or implicit indication that a Philippine patent is
c. Methods for treatment of the human or animal body by sought;
surgery or therapy and diagnostic methods practiced on the b. Information identifying the applicant; and
human or animal body. This provision shall not apply to c. Description of the invention and one (1) or more claims in
products and composition for use in any of these methods; Filipino or English. [Sec. 40.1, RA 8293]
[Sec. 22.3, RA 8293]
c. Invention created pursuant to a commission/in the
d. Plant varieties or animal breeds or essentially biological course of employment
process for the production of plants or animals. This provision The person who commissions the work shall own the patent,
shall not apply to micro-organisms and non-biological and unless otherwise provided in the contract. [Sec. 30.1, RA
microbiological processes; [Sec. 22.4, RA 8293] 8293]

e. Aesthetic creations; [Sec. 22.5, RA 8293] In case the employee made the invention in the course of his
employment contract, the patent shall belong to:
f. Anything which is contrary to public order or morality. a. The employee, if the inventive activity is not a part of his
[Sec.22.6, RA 8293] regular duties even if the employee uses the time, facilities and
materials of the employer.
Cheaper Medicines Act: In addition to discoveries, scientific b. The employer, if the invention is the result of the
theories and mathematical methods, the IP Code now includes performance of his regularly-assigned duties, unless there is an
(as non-patentable), in case of drugs and medicines: agreement, express or implied, to the contrary. [Sec. 30.2, RA
a. The mere discovery of a new form or new property of a 8293]
known substance which does not result in the enhancement of
the known efficacy of that substance d. Right of priority
An application for patent filed by any person who has
b. The mere discovery of any new property or new use of a previously applied for the same invention in another country
known substance which by treaty, convention, or law affords similar privileges
to Filipino citizens, shall be considered filed as of the date of
c. The mere use of a known process unless such known filing the foreign application:
process results in a new product that employs at least one
reactant [Sec. 26.2, RA 8293 as amended by RA 9502] Provided, That:
1. The local application expressly claims priority;
3. Ownership of a Patent 2. It is filed within 12 months from the date the earliest foreign
application was filed; and
3. A certified copy of the foreign application together with an 6. Rights Conferred by a Patent
English translation is filed within 6 months from the date of
filing in the Philippines. [Sec. 31, RA 8293]

4. Grounds for Cancellation of a Patent

Any interested person may petition to cancel the patent or any
claim thereof, or parts of the claim, on any of the following
grounds:
1. That what is claimed as the invention is not new or
patentable;
2. That the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any
person skilled in the art; or
3. That the patent is contrary to public order or morality. [Sec.
61.1, RA 8293]

Where the grounds for cancellation relate to some of the

claims or parts of the claim, cancellation may be effected to
such extent only. [Sec. 61.2, RA 8293]

Effect of Cancellation of Patent or Claim

The rights conferred by the patent or any specified claim or
claims cancelled shall terminate. Notice of the cancellation
shall be published in the IPO Gazette. Unless restrained by the
Director General, the decision or order to cancel by Director
of Legal Affairs shall be immediately executory even pending
appeal. [Sec. 66, RA 8293]

Remedies of a Person with a Right to a Patent

Patent Application by Persons Not Having the
Right to a Patent. — If a person referred to in Section 29 7. Limitations of Patent Rights
(First-to-File) other than the applicant, is declared by final The owner of a patent has no right to prevent third parties
court order or decision as having the right to the patent, such from performing, without his authorization, the acts referred to
person may, within three (3) months after the decision has in Section 71 hereof in the following circumstances:
become final:
a. Prosecute the application as his own application in place of a. Owner’s Consent:
the applicant; 1. National exhaustion - Using a patented product which has
b. File a new patent application in respect of the same been put on the market in the Philippines by the owner of the
invention; product, or with his express consent, insofar as such use is
c. Request that the application be refused; or performed after that product has been so put on the said
d. Seek cancellation of the patent, if one has already been market;
issued. [Sec. 67, RA 8293] 2. International exhaustion (for drugs and medicines) - A drug
or medicine has been introduced anywhere else in the world
5. Remedy of the True and Actual inventor by the patent owner, or by any party authorized to use the
If a person, who was deprived of the patent without his invention. [Sec. 72.1, RA 8293 as amended by RA 9502]
consent or through fraud, is declared by final court order or
decision to be the true and actual inventor, the court shall: b. Parallel Importation: The right to import the drugs and
(1) Order for his substitution as patentee, or medicines shall be available to any government agency or any
(2) At the option of the true inventor, cancel the patent, and private third party; [Sec. 72.1, RA 8293 as amended by RA
(3) Award actual and other damages in his favor, if warranted 9502]
by the circumstances. [Sec. 68, RA 8293]
c. Non – Commercial: Where the act is done
The action shall be filed within 1 year from the date of privately and on a non-commercial scale or for a non-
publication made in accordance with Sections 44 and 51, commercial purpose: Provided, That it does not
respectively. [Sec. 70, RA 8293] significantly prejudice the economic interests of the
owner of the patent; [Sec. 72.2, RA 8293 as amended
by RA 9502]

d. Experimental Use: 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; [Sec. 72.3, RA 8293 as amended by RA A Government agency or third person authorized by the
9502] Government may exploit the invention even without
agreement of the patent owner where:
e. Drugs and Medicine: In the case of drugs and medicines,
where the act includes testing, using, making or selling the 1. The public interest, in particular, national security, nutrition,
invention including any data related thereto, solely for health or the development of other sectors, as determined by
purposes reasonably related to the development and the appropriate agency of the government, so requires; [Sec.
submission of information and issuance of approvals by 74.1(a), RA 8293]
government regulatory agencies required under any law of the 2. A judicial or administrative body has determined that the
Philippines or of another country that regulates the manner of exploitation, by the owner of the patent or his
manufacture, construction, use or sale of any product: licensee, is anti-competitive; [Sec. 74.1(b), RA 8293]
Provided, That, in order to protect the data submitted by the 3. In the case of drugs and medicines, there is a national
original patent holder from unfair commercial use provided in emergency or other circumstance of extreme urgency
Article 39.3 of the Agreement on Trade-Related Aspects of requiring the use of the invention; [Sec. 74.1(c), RA 8293 as
Intellectual Property Rights (TRIPS Agreement), the amended by RA 9502] 4. In the case of drugs and medicines,
Intellectual Property Office, in consultation with the there is public non-commercial use of the patent by the
appropriate government agencies, shall issue the appropriate patentee, without satisfactory reason; [Sec. 74.1(d), RA 8293
rules and regulations necessary therein not later than 120 days as amended by RA 9502]
after the enactment of this law; [Sec. 72.4, RA 8293 an 5. In the case of drugs and medicines, the demand for the
amended by RA 9502] patented article in the Philippines is not being met to an
adequate extent and on reasonable terms, as determined by the
f. Medicine Individual Preparation: Where the act consists Secretary of the Department of Health. [Sec. 74.1(e), RA8293,
of the preparation for individual cases, in a pharmacy or by a as amended by RA 9502]
medical professional, of a medicine in accordance with a
medical shall apply after a drug or medicine has been CONDITIONS ON THE USE BY THE GOVERNMENT OR
introduced in the Philippines or anywhere else in the world by THIRD PERSONS
the patent owner, or by any party authorized to use the Unless otherwise provided herein, the use by the Government,
invention: Provided, further, That the right to import the drugs or third person authorized by the Government shall be subject,
and medicines contemplated in this section shall be available where applicable, to the following provisions:
to any government agency or any private third party;
[Sec.72.5, RA 8293 as amended by RA 9502] a. In situations of national emergency or other circumstances
of extreme urgency as provided under Section 74.1 (c), the
g. Where the invention is used in any ship, vessel, aircraft, or right holder shall be notified as soon as reasonably practicable;
land vehicle of any other country entering the territory of the b. In the case of public non-commercial use of the patent by
Philippines temporarily or accidentally: Provided, That such the patentee, without satisfactory reason, as provided under
invention is used exclusively for the needs of the ship, vessel, Section 74.1 (d), the right holder shall be informed promptly:
aircraft, or land vehicle and not used for the manufacturing of Provided, That, the Government or third person authorized by
anything to be sold within the Philippines. [Sec. 72.6, RA8293 the Government, without making a patent search, knows or
as amended by RA 9502] has demonstrable ground to know that a valid patent is or will
be used by or for the Government;
There shall be no infringement of trademarks or tradenames of c. If the demand for the patented article in the Philippines is
imported or sold drugs and medicines allowed as well as not being met to an adequate extent and on reasonable terms
imported or sold off-patent drugs and medicines: Provided, as provided under Section 74.1 (e), the right holder shall be
That said drugs and medicines bear the registered marks that informed promptly;
have not been tampered, unlawfully modified, or infringed. d. The scope and duration of such use shall be limited to the
[Sec.159.4 RA 8293 as amended by RA 9502] purpose for which it was authorized;
e. Such use shall be non-exclusive;
A. Prior User f. The right holder shall be paid adequate remuneration in the
Any prior user, who, in good faith was using the invention or circumstances of each case, taking into account the economic
has undertaken serious preparations to use the invention in his value of the authorization; and
enterprise or business, before the filing date or priority date of g. The existence of a national emergency or other
the application on which a patent is granted, shall have the circumstances of extreme urgency, referred to under Section
right to continue the use thereof as envisaged in such 74.1 (c), shall be subject to the determination of the President
preparations within the territory where the patent produces its of the Philippines for the purpose of determining the need for
effect. [Sec. 73.1, RA 8293] such use or other exploitation, which shall be immediately
executory. [Sec. 74.2, RA 8293 as amended by RA 9502]
The right of the prior user may only be transferred or assigned
together with his enterprise or business, or with that part of his All cases arising from the implementation of This provision
enterprise or business in which the use or preparations for use shall be cognizable by courts with appropriate jurisdiction
have been made. [Sec. 73.2, RA 8293] provided by law. No court except the Supreme Court of the
Philippines, shall issue any temporary restraining order or
b. Use by the Government preliminary injunction or such other provisional remedies that
will prevent its immediate execution. [Sec. 74.3, RA 8293 as damages, a sum equivalent to reasonable royalty. [Sec. 76.3,
amended by RA 9502] RA 8293]

8. Patent Infringement The court may, according to the circumstances of the case,
The making, using, offering for sale, selling, or importing a award damages in a sum above the amount found as actual
patented product or a product obtained directly or indirectly damages sustained: Provided, That the award does not exceed
from a patented process, or the use of a patented process three (3) times the amount of such actual damages. [Sec.
without the authorization of the patentee constitutes patent 76.4,RA 8293]
infringement: Provided, That, this shall not apply to instances
covered by Sections 72.1 and 72.4 (Limitations of Patent Criminal Action Only After Finality of Judgment in Civil
Rights); Section 74 (Use of Invention by Government); Action and After Repetition of Infringement
Section 93.6 (Compulsory Licensing); and Section 93-A If infringement is repeated by the infringer or by anyone in
(Procedures on Issuance of a Special Compulsory License connivance with him after finality of the judgment of the court
under the TRIPS Agreement) of this Code. [Sec. 76.1, RA against the infringer, the offenders shall:
8293 as amended by R.A. 9502] 1. Be criminally liable therefor, and
2. Upon conviction, suffer imprisonment for the period of not
A. Tests in Patent Infringement less than 6 months but not more than 3 years and/or a fine of
a. Literal Infringement not less than One hundred thousand pesos (P100,000) but not
In using literal infringement as a test, resort must be had in the more than Three hundred thousand pesos (P300,000), at the
first instance to the words of the claim. To determine whether discretion of the court.
the particular item falls within the literal meaning of the patent
claims, the court must juxtapose the claims of the patent and Note: Such criminal action is without prejudice to the
the accused product within the overall context of the claims institution of a civil action for damages: [Sec. 84, RA 8293]
and specifications, to determine whether there is exact identity
of all material elements. [Godinez v. CA, G.R. No. L-97343 c. Prescriptive Period
(1993)] Civil Action: No damages can be recovered for acts of
infringement committed more than four (4) years before the
The test is satisfied if: The item that is being sold, made or institution of the action for infringement. [Sec. 79, RA 8293]
used conforms exactly to the patent claim of another; One
makes, uses or sells an item that has all the elements of the Criminal Action: 3 years from date of the commission of the
patent claim of another plus other elements. crime. [Sec. 84, RA 8293]

b. Doctrine of Equivalents Under the doctrine of equivalents, d. Defenses in Actions for Infringement
an infringement occurs when a device: In an action for infringement, the defendant, in addition to
(1) Appropriates a prior invention by incorporating its other defenses available to him, may show the invalidity of
innovative concept, albeit with some modification and change, the patent, or any claim thereof, on any of the grounds on
(2) Performs substantially the same function in substantially which a petition of cancellation can be brought under Section
the same way, and 61. [Sec. 81, RA 8293]
(3) Achieves substantially the same result. [Godinez v. CA,
G.R. No. L-97343 (1993)] Patent found invalid may be cancelled
In an action for infringement, if the court shall find the patent
The doctrine of equivalents thus requires satisfaction of the or any claim to be invalid, it shall cancel the same, and the
function-means-and-result test, the patentee having the burden Director of Legal Affairs upon receipt of the final judgment of
to show that all three components of such equivalency test are cancellation by the court, shall record that fact in the register
met. [Smith Klein Beckman Corp. v. CA, G.R. No. 126627 of the Office and shall publish a notice to that effect in the IPO
(2003)] Gazette. [Sec. 82, RA 8293]

b. Civil and Criminal Actions Doctrine of File Wrapper Estoppel

Patentee is precluded from claiming as part of a patented
Civil Action for Infringement product that which he had to excise or modify in order to
Any patentee, or anyone possessing any right, title or interest avoid patent office rejection, and he may omit any additions
in and to the patented invention,whose rights have been he was compelled to add by patent office regulations.
infringed, may bring a civil action before a court of [Advance Transformer Co. v. Levinson, 837 F.2d 1081(1988)]
competent jurisdiction:
1. To recover from the infringer such damages sustained 9. Licensing
thereby, plus attorney’s fees and other expenses of litigation,
and
2. To secure an injunction for the protection of his rights. [Sec.
76.2, RA 8293]

If the damages are inadequate or cannot be readily ascertained

with reasonable certainty, the court may award, by way of
 3. In the event the technology transfer arrangement shall
provide for arbitration, the Procedure of Arbitration of the
Arbitration Law of the Philippines or the Arbitration Rules of
the United Nations Commission on International Trade Law
(UNCITRAL) or the Rules of Conciliation and Arbitration of
the International Chamber of Commerce (ICC) shall apply
and the venue of arbitration shall be the Philippines or any
neutral country; [Sec. 88.3, RA 8293]
4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor. [Sec. 88.4, RA 8293]

Prohibited Clauses
The following provisions shall be deemed prima facie to have
an adverse effect on competition and trade:
1. Those which impose upon the licensee the obligation to
acquire from a specificsource capital goods, intermediate
products, raw materials, and other technologies, or of
permanently employing personnel indicated by the licensor;
[Sec. 87.1, RA 8293]
2. Those pursuant to which the licensor reserves the right to
fix the sale or resale prices of the products manufactured on
the basis of the license; [Sec. 87.2, RA 8293]
3. Those that contain restrictions regarding the volume and
structure of production; [Sec. 87.3, RA 8293]
4. Those that prohibit the use of competitive technologies in a
non-exclusive technology transfer agreement; [Sec. 87.4, RA
8293]
5. Those that establish a full or partial purchase option in favor
of the licensor; [Sec. 87.5, RA 8293]
a. Voluntary 6. Those that obligate the licensee to transfer for free to the
Voluntary Licensing is the grant by the patent owner to a third licensor the inventions or improvements that may be obtained
person of the right to exploit the patented invention. [Sec. 85, through the use of the licensed technology; [Sec. 87.6, RA
RA 8293] 8293]
7. Those that require payment of royalties to the owners of
To encourage the transfer and dissemination of technology, patents for patents which are not used; [Sec. 87.7, RA 8293]
prevent or control practices and conditions that may in 8. Those that prohibit the licensee to export the licensed
particular cases constitute an abuse of intellectual property product unless justified for the protection of the legitimate
rights having an adverse effect on competition and trade, all interest of the licensor such as exports to countries where
voluntary technology transfer arrangements or licensing exclusive licenses to manufacture and/or distribute the
contracts shall: licensed product(s) have already been granted; [Sec. 87.8, RA
1. Not contain any of the prohibited clauses for voluntary 8293]
license contracts under Sec. 87 9. Those which restrict the use of the technology supplied after
2. Contain all of the mandatory provisions for voluntary the expiration ofthe technology transfer arrangement, except in
license contracts under Sec. 88 cases of early termination of the technology transfer
3. Be approved and registered with the Documentation, arrangement due to reason(s) attributable to the licensee;
Information and Technology Transfer Bureau [of the [Sec.87.9, RA 8293]
IPOPHL] as an exceptional case under Sec. 91, ONLY IF the 10. Those which require payments for patents and other
agreement fails to comply with Sec. 87 and 88. [See Secs. 85 industrial property rights after their expiration, termination
& 92, RA 8293] arrangement; [Sec. 87.10, RA 8293]
11. Those which require that the technology recipient shall not
Mandatory Provisions contest the validity of any of the patents of the technology
The following provisions shall be included in voluntary supplier; [Sec. 87.11, RA 8293]
license contracts: 12. Those which restrict the research and development
1. That the laws of the Philippines shall govern the activities of the licensee designed to absorb and adapt the
interpretation of the same and in the event of litigation, the transferred technology to local conditions or to initiate
venue shall be the proper court in the place where the licensee research and development programs in connection with new
has its principal office; [Sec. 88.1, RA 8293] products, processes or equipment; [Sec. 87.12, RA 8293]
2. Continued access to improvements in techniques and 13. Those which prevent the licensee from adapting the
processes related to the technology shall be made available imported technology to local conditions, or introducing
during the period of the technology transfer arrangement; innovation to it, as long as it does not impair the quality
[Sec. 88.2, RA 8293] standards prescribed by the licensor; [Sec. 87.13, RA 8293]
14. Those which exempt the licensor for liability for non- of the Government, so requires; [Sec. 93.2, RA 8293 as
fulfillment of his responsibilities under the technology transfer amended by RA 9502]
arrangement and/or liabilityarising from third party suits 3. Where a judicial or administrative body has determined that
brought about by the use of the licensed product or the the manner of exploitation by the owner of the patent or his
licensed technology; [Sec. 87.14, RA 8293] licensee is anti-competitive; [Sec. 93.3, RA 8293 as amended
15. Other clauses with equivalent effects. [Sec. 87.15, RA by RA 9502]
8293] 4. In case of public non-commercial use of the patent by the
patentee, without satisfactory reason; [Sec. 93.4, RA 8293 as
Effect of Non-compliance with any Provisions of Secs. 87 amended by RA 9502]
and 88 5. If the patented invention is not being worked in the
The technology transfer arrangement (TTA) shall Philippines on a commercial scale, although capable of being
automatically be rendered unenforceable, unless said worked, without satisfactory reason: Provided, That the
technology transfer arrangement is approved and registered importation of the patented article shall constitute working or
with the Documentation, Information and Technology using the patent; [Sec. 93.5, RA 8293 as amended by RA9502]
Transfer Bureau (DITTB of the IPOPHL) under the provisions 6. Where the demand for patented drugs and medicines is not
of Section 91 on exceptional cases. [Sec. 92, RA 8293] being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health;
Exceptional Cases [Sec. 93.6, RA 8293 as amended by RA 9502]
1. In exceptional or meritorious cases where substantial 7. If the invention protected by a patent, hereafter referred to
benefits will accrue to the economy, such as high technology as the "second patent," within the country cannot be worked
content, increase in foreign exchange earnings, employment without infringing another patent, hereafter referred to as the
generation, regional dispersal of industries and/or substitution "first patent," granted on a prior application or benefiting from
with or use of local raw materials; an earlier priority, a compulsory license may be granted to the
2. The case of BOI-registered companies with pioneer status. owner of the second patent to the extent necessary for the
[Sec. 91, RA 8293] working of his invention, subject to certain conditions;
[Sec.97, RA 8293]
Jurisdiction 8. Manufacture and export of drugs and medicines to any
Decisions of the Director of DITTB on TTAs are appealable to country having insufficient or no manufacturing capacity in
the Director General, IPOPHL, whose decisions thereon are the pharmaceutical sector to address public health problems:
appealable to the Secretary of Trade and Industry. Provided, That, a compulsory license has been granted by such
country or such country has, by notification or otherwise,
Right of Licensor allowed importation into its jurisdiction of the patented drugs
Unless otherwise provided in the technology transfer and medicines from the Philippines in compliance with the
agreement, the licensor shall have the right to: TRIPS Agreement. [Sec. 93-A.2, RA 8293 as amended by RA
1. Grant further licenses to third person; 9502]
2. Exploit the subject matter of the technology transfer
agreement. [Sec. 89, RA 8293] Period for Filing a Petition for Compulsory License
At any time after the grant of patent. However, a compulsory
Right of the Licensee license may not be applied for on the ground stated in Sec.
To exploit the subject matter of the technology transfer 93.5 before the expiration of a period of 4 years from the date
agreement during the whole term of the agreement. [Sec. 90, of filing of the application or 3 years from the date of the
RA 8293] patent whichever period expires last. [Sec. 94, RA 8293 as
amended by RA 9502]
b. Compulsory
Compulsory Licensing is the grant of the Director of Legal Requirement to Obtain a License on Reasonable
Affairs of a license to exploit a patented invention, even Commercial Terms
without the agreement of the patent owner, in favor of any General Rule: The license will only be granted after the
person who has shown his capability to exploit the invention. petitioner has made efforts to obtain authorization from the
[Sec. 93, RA 8293 as amended by RA 9502] patent owner on reasonable commercial terms and conditions
but such efforts have not been successful within a reasonable
Grounds period of time. [Sec. 95.1, RA 8293 as amended by RA 9502]
The Director General of the Intellectual Property Office may
grant a license to exploit a patented invention, even without Exceptions: The requirement of authorization shall not apply
the agreement of the patent owner, in favor of any person who in the following cases:
has shown his capability to exploit the invention, under any of 1. Where the petition for compulsory license seeks to remedy
the following circumstances: a practice determined after judicial or administrative process
1. National emergency or other circumstances of extreme to be anti-competitive;
urgency; [Sec. 93.1, RA 8293 as amended by RA 9502] 2. In situations of national emergency or other circumstances
2. Where the public interest, in particular, national security, of extreme urgency;
nutrition, health or the development of other vital sectors of 3. In cases of public non-commercial use;
the national economy as determined by the appropriate agency 4. In cases where the demand for the patented drugs and
medicines in the Philippines is not being met to an adequate
extent and on reasonable terms, as determined by the Secretary purchase or mortgage. [Sec. 106.2, RA 8293]
of the Department of Health. [Sec. 95.2, RA 8293 as amended
by RA 9502] C. TRADEMARKS
1. Definition of Marks, Collective Marks, and Trade
Terms and Conditions of Compulsory License Names
1. The scope and duration of such license shall be limited to
the purpose for which it was authorized; [Sec. 100.1, RA a. Definition
8293]
2. The license shall be non-exclusive; [Sec. 100.2, RA 8293] Marks
3. The license shall be non-assignable, except with that part of Any visible sign capable of distinguishing the goods
the enterprise or business with which the invention is being (trademark) or services (service mark) of an enterprise and
exploited; [Sec. 100.3, RA 8293] shall include a stamped or marked container of goods.
4. Use of the subject matter of the license shall be devoted [Sec.121.1, RA 8293]
predominantly for the supply of the Philippine market:
Provided, that this limitation shall not apply where the grant of
the license is based on the ground that the patentee's manner of
exploiting the patent is determined by judicial or
administrative process, to be anticompetitive; [Sec. 100.4,RA
8293]
5. The license may be terminated upon proper showing that
circumstances which led to its grant have ceased to exist and
are unlikely to recur: Provided, That adequate protection shall
be afforded to the legitimate interest of the licensee;
[Sec.100.5, RA 8293]
6. The patentee shall be paid adequate remuneration taking
into account the economic value of the grant or authorization,
except that in cases where the license was granted to remedy a
practice which was determined after judicial or administrative
process, to be anti-competitive, the need to correct the anti-
Collective Marks
competitive practice may be taken into account in fixing the
amount of remuneration. [Sec. 100.6, RA 8293] Any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any
10. Assignment and Transmission of Rights other common characteristic, including the quality of goods or
Inventions and any right, title or interest in and to patents and
services of different enterprises which use the sign under the
inventions covered thereby, may be assigned or transmitted by
control of the registered owner of the collective mark. [Sec.
inheritance or bequest or may be the subject of a license
contract. [Sec. 103.2, RA 8293] 121.2, RA 8293]
An assignment may be of: Trade Name
(i) The entire right, title or interest in and to the patent and the The name or designation identifying or distinguishing an
invention covered thereby, or enterprise [Sec. 121.3, RA 8293].
(ii) An undivided share of the entire patent and invention, in
which event the parties become joint owners thereof. Any individual name or surname, firm name, device or word
used by manufacturers, industrialists, merchants, and others to
An assignment may be limited to a specified territory. [Sec. identify their businesses, vocations or occupations. [Converse
104, RA 8293] Rubber Corp. v. Universal Rubber Products, Inc., G.R. No. L-
27906 (1987)]
Rights of Joint Owners
If two or more persons jointly own a patent and the invention DIFFERENCES BETWEEN A TRADEMARK/ SERVICE
covered thereby, each joint owner shall be entitled to MARK AND A TRADENAME UNDER THE IP CODE
personally make, use, sell, or import the invention for his own
profit. However, neither of the joint owners shall be entitled to
grant licenses or to assign his right, title or interest or part
thereof without the consent of the other owner or owners, or
without proportionally dividing the proceeds with such other
owner or owners. [Sec. 107, RA 8293]

Form of Assignment
The assignment must be in writing and must be notarized.
[Sec. 105 RA 8293] It shall be void as against any subsequent
purchaser or mortgagee for valuable consideration and without
notice, unless, it is so recorded in the Office, within 3 months
from the date of said instrument, or prior to the subsequent
 These are words that merely describe the product or service or
refer to their quality or characteristic.

General rule: Descriptive marks are not entitled to protection

and are too weak to function as a trademark.

Exception: Doctrine of Secondary meaning, infra.

Example: “YELLOW PAGES” for telephone directory having
yellow pages.

Suggestive Marks
Marks that hint or suggest the nature or quality of the good or
service without directly describing it. They are “subtly
descriptive” and are entitled to protection despite lack of
distinctiveness.

Example: “JAGUAR” for automobile.

Arbitrary Marks
Common words used as marks, but are unrelated to the good
or service they represent. They neither describe nor suggest
the characteristic of the goods or service, though they are
considered highly distinctive for purposes of registration.
Example: “APPLE” for electronic product.

Fanciful or “Coined” Marks

These are invented or “coined” words that do not have any
meaning and are made solely for the purpose of the mark.
They are considered “strong” marks for purposes of
b. Functions of a Trademark registration and protection for being inherently distinctive.
Example: “KODAK” for camera.
1. To point out distinctly the origin or ownership of the goods
and to which it is affixed; 2. Acquisition of Ownership of Mark
2. To secure him, who has been instrumental in bringing into General Rule: To acquire rights in a mark, registration is
the market a superior article of merchandise, the fruit of his required. [Sec. 122, RA 8293]
industry and skill; Exception: Well-known marks are protected even without
3. To assure the public that they are producing the genuine registration.
article; Note: However, when the well-known mark is not registered,
4. To prevent fraud and imposition; and its protection is limited, as it only prevents the registration of
5. To protect the manufacturer against substitution and sale of confusingly similar marks that are used for identical or similar
an inferior and different article as its product. [Mirpuri v. CA, goods or services. [Sec. 123.1(e), RA 8293]
G.R. No. 114508 (1999)]
While the IP Code expressly provides that the rights to a mark
c. Spectrum of Distinctiveness shall be acquired through registration, the Supreme Court held
Generic Marks that notwithstanding this express provision in the IP Code,
Generic Marks are those which constitute the name of an prior use is still the basis of trademark ownership. [Berris
article or substance; or comprise the genus of which the Agricultural Co., Inc. vs. Norvy Abyadang, G.R. No. 183404,
particular product is a species of. [Societe Des Produits Nestle (2010)]
v. CA, G.R. No. 112012, 2001]
These must remain in the public domain and can never be Registration is not a mode of acquiring ownership, rather, it
registered as a trademark. merely gives rise to a prima facie presumption of ownership of
the registrant over the mark [Sec. 138, RA 8293] Said
Examples: “SUGAR” for refined sugar, “KAPE” for instant presumption of ownership may be rebutted by the true owner
coffee, “WATER” for bottled water. of the mark in an opposition or cancellation proceeding.
Descriptive Marks Filing Date
Consists exclusively of signs or of indications that may serve The filing date of an application shall be the date on which the
in trade to designate the kind, quality, quantity, intended Office received the following indications and elements in
purpose, value, geographical origin, time or production of the English or Filipino:
goods or rendering of the services, or other characteristics of a. An express or implicit indication that the registration of a
the goods or services. [Sec.123(j), RA 8293] mark is sought;
b. The identity of the applicant;
c. Indications sufficient to contact the applicant or his a deceased President of the Philippines, during the life of his
representative, if any; widow, except by written consent of the widow; [Sec.123.1(c),
d. A reproduction of the mark whose registration is sought; RA 8293]
and d. Is identical with a registered mark of another or a mark with
e. The list of the goods or services for which the registration is an earlier filing or priority date, in respect of:
sought. [Sec. 127.1, RA 8293]
1. The same goods or services, or
Priority Right 2. Closely related goods or services, or
An application for registration of a mark filed in the 3. If it nearly resembles such a mark as to be likely to deceive
Philippines by a person referred to in Section 3, and who or cause confusion; [Sec. 123.1(d), RA 8293]
previously duly filed an application for registration of the
same mark in one of those countries, shall be considered as e. Is identical with, or confusingly similar to, or constitutes a
filed as of the day the application was first filed in the foreign translation of a well-known mark, whether or not registered in
country (Provided, the Philippine application is filed within 6 the Philippines, and used for identical or similar goods or
months from the filing of the foreign application). [Sec. 131.1, services; [Sec. 123.1(e), RA 8293]
RA 8293]No registration of a mark in the Philippines by a f. Is identical with, or confusingly similar to, or constitutes a
person described in this section shall be translation of a well-known mark which is registered in the
granted until such mark has been registered in the country of Philippines, and used for goods or services which are not
origin of the applicant. [Sec. 131.2, RA 8293] similar; [Sec. 123.1(f), RA 8293]
g. Likely to mislead the public, particularly as to the nature,
Significance of Priority Right quality, characteristics or geographical origin of the goods or
A Philippine application filed by another applicant after the services; [Sec. 123.1(g), RA 8293]
priority date but earlier than the foreign applicant’s actual h. Consists exclusively of signs that are generic for the goods
filing may be refused registration if it is identical to the mark or services that they seek to identify; [Sec. 123.1(h), RA 8293]
with a priority date. [Agpalo, The Law on Trademark, i. Consists exclusively of signs or of indications that have
Infringement and Unfair Competition (2000)] become customary or usual to designate the goods or services
in everyday language or in a bona fide and established trade
3. Acquisition of Ownership of Trade Name practice; [Sec. 123.1(i),RA 8293]
The ownership of a trade name is acquired through adoption j. Consists exclusively of signs or of indications that may serve
and use. in trade to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time or production of the
Such names shall be protected, even prior to or without goods or rendering of the services, or other characteristics of
registration, against any unlawful act committed by third the goods or services; [Sec. 123.1(j), RA 8293]
parties, [Sec. 165.2 (a), RA 8293] k. Consists of shapes that may be necessitated by technical
factors or by the nature of the goods themselves or factors that
Any subsequent use of the trade name by a third party, affect their intrinsic value; [Sec. 123.1(k), RA 8293]
whether as a trade name or a mark or collective mark,or any l. Consists of color alone, unless defined by a given form;[Sec.
such use of a similar trade name or mark, likely to mislead the 123.1(l), RA 8293] m. Is contrary to public order or morality.
public, shall be deemed unlawful. [Sec. 165.2 (b), RA 8293] [Sec. 123.1(m), RA 8293]

A name or designation may not be used as a trade name: Other instances when a mark may be registered:
1. If by its nature or the use to which such name or designation a. When it is part of a composite mark, though there should be
may be put, it is contrary to public order or morals; and a disclaimer and the person who registers them will not
2. If, in particular, it is liable to deceive trade circles or the acquire ownership thereto;
public as to the nature of the enterprise identified by that b. If they are contractions of or coined from generic and
name. [Sec. 165.1, RA 8293] descriptive terms;
c. If they are used in a fanciful or arbitrary manner;
Any change in the ownership of a trade name shall be made d. If the mark falls under the Doctrine of Secondary Meaning.
with the transfer of the enterprise or part thereof identified by
that name. [Sec. 165.4, RA 8293] DOCTRINE OF SECONDARY MEANING
Secondary meaning is acquired when a descriptive mark or a
4. Non-Registrable Marks mark that may serve in trade that consists of a shape or color
A mark cannot be registered if it: becomes distinctive because of its exclusive and continuous
a. Consists of immoral, deceptive or scandalous matter, or use in Philippine commerce.
matter which may disparage or falsely suggest a connection
with persons, living or dead, institutions, beliefs, or national A word or phrase originally incapable of exclusive
symbols, or bring them into contempt or disrepute; appropriation, might have been used so long and so
[Sec.123.1(a), RA 8293] exclusively by one producer with reference to his article that,
b. Consists of flags, coat of arms or other insignia of the in that trade and to that branch of the purchasing public, the
Philippines or any foreign country; [Sec. 123.1(b), RA 8293] word or phrase has come to mean that the article was his
c. Consists of a name, portrait or signature identifying a product. [Ang v. Teodoro, G.R. No. L-48226 (1942)]
particular living individual except by his written consent, or of
The Office may accept as prima facie evidence that the mark b. Non-Use of Mark When Excused
has become distinctive, proof of substantially exclusive and Non-use caused by circumstances arising independently of the
continuous use thereof by the applicant: will of the trademark owner shall be excused. However, non-
(i) In commerce in the Philippines use due to lack of funds shall not excuse non-useof a mark.
(ii) For 5 years before the date on which the claim of [Sec. 152.1, RA 8293]
distinctiveness is made. [Sec. 123.2, RA 8293]
The ff. shall not be grounds for cancellation or removal of a
DISCLAIMERS mark:
The Office may allow or require the applicant to disclaim an 1. Use which does not alter its distinctive character though the
unregistrable component of an otherwise registrable mark but use is different from the form in which it is registered.
such disclaimer shall not prejudice or affect: [Sec.152.2, RA 8293]
(i) The applicant’s or owner’s rights then existing or thereafter 2. Use of a mark in connection with one or more of the
arising in the disclaimed matter; nor goods/services belonging to the class in which the mark is
(ii) The applicant’s or owner’s right on another application of registered. [Sec. 152.3, RA 8293]
later date if the disclaimed matter became distinctive of the 3. Use of the mark by a company related to the applicant or
applicant’s or owner’s goods, business or services. [Sec. 126] registrant. [Sec. 152.4, RA 8293]
4. Use of the mark by a person controlled by the registrant.
The basic purpose of disclaimers is to make of record, that a [Sec. 152.4, RA 8293]
significant element of a composite mark is not being
exclusively appropriated by itself apart from the composite. Note: The use of a mark by a company related with, or
[Rule 608, Rule on Trademarks] controlled by the registrant or applicant shall inure to the
latter's benefit: Provided, that such mark is not used in such
DISCLAIMED WORDS manner as to deceive the public. [Sec.152.4, RA 8293]
Words in a mark that are not being claimed for exclusive use,
including: 1. Generic terms; 2. Descriptive words; and 3. Declaration of Non-Use (DNU)
Those that do not function as part of the trademark. [Rule In lieu of a DAU, an applicant or registrant, when warranted,
608,Rule on Trademarks] shall file a Declaration of NonUse indicating the grounds or
justification therefor.
Note: Except for generic terms, disclaimed words can later on
be registered as part of the trademark if it acquires Non-use of a mark may be excused in the following cases:
distinctiveness. 1. Where the applicant or registrant is prohibited from using
the mark in commerce because of a requirement imposed by
5. Prior use of mark as a Requirement another government agency prior to putting the goods in the
market or rendering of the services;
a. While RA 8293 No Longer Requires Prior Use Before 2. Where a restraining order or injunction was issued by the
Filing the Application, It Still Requires Use of the Mark Bureau of Legal Affairs, the courts or quasi-judicial bodies
After Filing, Registration and Renewal prohibiting the use of the mark; or
Under the old trademark law or R.A. 166, actual commercial 3. Where the mark is the subject of an opposition or
use of a trademark in the Philippines was required prior to its cancellation case. [Rule 211, Trademark Regulations of 2017]
registration. [RA 166, Sec. 2-A] RA 8293 no longer requires
prior use before filing the application (i.e., it shifted to an When to File Declaration of Non- Use (DNU)
intent to use system). However, the law still requires use of 1. Within three (3) years from filing date of the application;
the mark after filing. 2. Within the prescribed periods mentioned in Rule 204 when
use of a registered mark or a mark subject of an active
Declaration of Actual Use (DAU) application has been interrupted or discontinued by a pending
The applicant or the registrant is required to file a Declaration litigation. [See Rule 212, Trademark Regulations of 2017]
of Actual Use of the mark after filing and registration.
6. Tests to Determine Confusing Similarity between Marks
Note: Failure to file declaration of actual use automatically a. Dominancy Test
results in the denial of the registration or the cancellation of The dominancy test considers the dominant features in the
the registration by operation of law. [Secs. 124.2& 145, RA competing marks in determining whether they are confusingly
8293] similar.
When to File Declaration of Actual Use
(DAU) Under the dominancy test:
1. Within 3 years from the filing date of the application (3rd  Greater weight is given to the similarity of the appearance of
Year DAU); the product arising from the adoption of the dominant features
2. Within 1 year from the 5th anniversary of the registration of of the registered mark.
the mark (5th Year DAU);  Minor differences between the registered mark and the mark
3. Within 1 year from the date of renewal; and in question are disregarded.
4. Within 1 year from the 5th anniversary of each renewal.  The aural and visual impressions created by the marks in the
[Rule 204, Trademark Regulations of 2017] public mind are considered.
 Little weight is given to factors like prices, quality, sales 4. The nature and cost of the article;
outlets and market segments. [McDonald’s Corporation v. 5. The descriptive properties, physical attributes or essential
L.C. Big Mak Burger, Inc., et al., G.R. No. 143993 (2004)] characteristics with reference to their form, composition,
texture or quality;
The dominancy test is now embodied in Sec. 155 of the IPC 6. The purpose of the goods;
and is therefore the controlling test. [Ibid.] 7. Whether the article is bought for immediate consumption,
that is, day-to-day household items;
b. Holistic Test 8. The fields of manufacture;
The holistic test, to determine whether a trademark has been 9. The conditions under which the article is usually purchased;
infringed, considers the mark as a whole and not as dissected. and
If the buyer is deceived, it is attributable to the marks as a 10. The channels of trade through which the goods flow, how
totality, not usually to any part of it. they are distributed, marketed, displayed and sold [Mighty
Corp. v. E&J Gallo, G.R. No. 154342, (2004)]
The court therefore should be guided by its first impression.
 The buyer acts quickly and is governed by a casual glance Rationale: The wisdom of this approach is its recognition that
 The value of such casual glance may be dissipated, as soon each trademark infringement case presents its own unique set
as the court assumed to analyze carefully the respective of facts. No single factor is preeminent, nor can the presence
features of the mark. [Del Monte Corporation, et al. v. CA, or absence of one determine, without analysis of the others,
G.R. No. L-78325 (1990)] the outcome of an infringement suit. Rather, the court is
required to sift the evidence relevant to each of the criteria.
SIMILARITY/ DISSIMILARITY OF GOODS and This requires that the entire panoply of elements constituting
SERVICES the relevant factual landscape be comprehensively examined.
It is a weighing and balancing process. With reference to this
Goods or services may not be considered as being similar or ultimate question, and from a balancing of the determinations
dissimilar to each other on the ground that, in any registration reached on all of the factors, a conclusion is reached whether
or publication by the Office, they appear in different classes of the parties have a right to the relief sought. [Mang Inasal
the Nice Classification. [Sec. 44.2, RA 8293] Related goods Philippines v. IFP Manufacturing Corporation, G.R. No.
and services are those that, though non-identical or non- 221717 (2017)]
similar, are so logically connected to each other that they may
reasonably be assumed to originate from one manufacturer or It has been held that where the products are different, the prior
from economically linked manufacturers. [Mang Inasal owner’s chance of success is a function of many variables,
Philippines v.IFP Manufacturing Corporation, G.R. No. such as the:
221717, June 19, 2017] (1) Strength of his mark;
(2) Degree of similarity between the two marks;
The mere fact that one person has adopted and used a (3) Reciprocal of defendant’s good faith in adopting its own
trademark on his goods would not prevent the adoption and mark;
use of the same trademark by others on unrelated articles of a (4) Quality of defendant’s product;
different kind. [Taiwan Kolin v. Kolin Electronics Co., G.R. (5) Proximity of the products;
No. 209843 (2015)] (6) Likelihood that the prior owner will bridge the gap;
(7) Actual confusion; and
DOCTRINE OF RELATED (8) Sophistication of the buyers. [Polaroid Corp. vs. Polaroid
GOODS/SERVICES Elecs. Corp., 287 F. 2d 492, 495 (2d Cir.), (1961), as cited in
1. Goods are related when they: Mighty Corp. v. E&J Gallo, G.R. No. 154342, Jul 14, 2004]
a. Belong to the same class; or
b. Have the same descriptive properties or physical attributes; c. Idem Sonans
or The rule on idem sonans is also a test to resolve the confusing
c. Serve the same purpose or flow through the same channel of similarity of trademarks.
trade.  A mark with a different spelling but is similar in sound with
2. The use of identical marks on non-competing but related a registered mark when read, may be ruled as being
goods may likely cause confusion, as it can be reasonably confusingly-similar with the said registered mark or senior
assumed that they originate from one manufacturer. mark.
3. Corollarily, the use of identical marks on non-competing  Two names are said to be "idemsonantes" if the attentive ear
and unrelated goods is not likely to cause confusion. [Esso finds difficulty in distinguishing them when pronounced.
Standard Eastern, Inc. v. Court of Appeals, G.R. No. L-29971 [Martin v. State, 541 S.W. 2d 605 (1976)] Similarity of sound
(1982)] is sufficient to rule that the two marks are confusingly similar
when applied to merchandise of the same descriptive
In resolving whether goods are related, several factors come properties. [Marvex Commercial v. Director of Patent, G.R.
into play: No. L-19297 (1966)]
1. The business (and its location) to which the goods belong 7. Well-Known Marks
2. The class of product to which the goods belong; A well-known mark is a mark which a competent authority of
3. The product's quality, quantity, or size, including the nature the Philippines has designated to be well-known
of the package, wrapper or container; internationally and in the Philippines. [Sec. 123.1(e), RA
8293] "Competent authority" for purposes of determining Other persons or entities cannot use the registered well-known
whether a mark is well-known, means: mark even for unrelated goods, provided that:
 The Court; 1. The use of the mark in relation to those goods or services
 The Director General; would indicate a connection between those goods or services,
 The Director of the Bureau of Legal Affairs [Rule 101 (d), and the owner of the registered mark; and
Trademark Regulations of 2017]; 2. That the interests of the owner of the registered mark are
 Any administrative agency or office vested with quasi- likely to be damaged by such use. [Sec. 123.1(f)]
judicial or judicial jurisdiction to hear and adjudicate any
action to enforce the rights to a mark. [Dy v. Koninklijke 8. Rights Conferred by Registration
Philips Electronics, N.V. G.R. No. 186088
(2017)] The owner of a registered mark shall have the exclusive right
to prevent all third parties not having the owner's consent
In determining whether a mark is well-known, account shall from using in the course of trade:
be taken of the knowledge of the relevant sector of the public, (i) Identical or similar signs or containers,
rather than the public at large, including knowledge in the (ii) For goods or services which are identical or similar to
Philippines which has been obtained as a result of the those in respect of which the trademark is registered,
promotion of the mark. [Sec. 123.1(e), RA 8293] (iii) Where such use would result in a likelihood of confusion.

A. Determinants Note: In case of the use of an identical sign for identical goods
1. The duration, extent and geographical area of any use of the or services, a likelihood of confusion shall be presumed. [Sec.
mark; 147.1, RA 8293 as amended by RA 9502]
2. The market share in the Philippines and other countries of
the goods/services to which the mark applies; Exception: In cases of importation of drugs and medicines
3. The degree of the inherent or acquired distinction of the allowed under Section 72.1 of this Act and of off-patent drugs
mark; and medicines, third parties can import the same even without
4. The quality-image or reputation acquired by the mark; the owner’s consent, provided that:
5. The extent to which the mark has been registered in the
world;  Said drugs and medicines bear the registered marks
6. The exclusivity of the registration attained by the mark in  The registered marks have not been tampered, unlawfully
the world; modified, or infringed upon [Sec. 147.1, RA 8293 as amended
7. The extent of use of the mark in the world; by RA 9502]
8. The exclusivity of use in the world;
9. The commercial value attributed to the mark in the world; a. When Such Rights Are Conferred
10. The record of successful protection of the rights in the The rights of the owner are conferred upon registration of the
mark; mark, and a mark is deemed registered on the 31st day from
11. The outcome of litigations dealing with the issue of the publication for purposes of opposition, provided no
whether the mar is well-known; and opposition is filed.
12. The presence or absence of identical or similar test marks  On the 31st day from the publication for purposes of
validly registered or used on other similar goods or services opposition (if no opposition is filed)
and owned by others. [See Rule 103, Trademark Regulations  On the date the decision or final order giving due course to
of 2017] the application becomes final and executory (if opposition is
filed). [See Rule 703, Trademarks Regulations of 2017]
Note: The determinants need not concur.
Certificates of Registration
b. Protection Extended to Well-Known Marks A certificate of registration of a mark shall be
The owner of a well-known mark has the right to be protected, prima facie evidence of:
whether or not the mark is registered in the Philippines. [Sec. 1. The validity of the registration,
123.1(e)] 2. The registrant's ownership of themark, and
3. The registrant's exclusive right to use the same in
If the well-known mark is registered or not registered in connection with the goods or services and those that are
the Philippines: related thereto specified in the certificate. [Sec. 138, RA 8293]
A mark cannot be registered if it is identical with, or
confusingly similar to, or constitutes a translation of an 1. Duration
internationally well-known mark if used for identical or A certificate of registration shall remain in force for 10 years
similar goods or services. [Sec. 123.1(e)] from registration and may be renewed for periods of 10 years
at its expiration upon payment of the prescribed fee and upon
If the well-known mark is registered in the Philippines: filing of a request. [Sec. 145-146, RA 8293]
A mark cannot be registered if it is identical with, or
confusingly similar to, or constitutes a translation of an b. Limitations on Such Rights
internationally well-known mark even if it is used for goods or 1. Duration (except that, inasmuch as the registration of a
services which are NOT similar to those with respect to trademark could be renewed every 10 years, provided a
which registration is applied. [Sec. 123.1(f)]
Declaration of Actual Use is timely submitted, a trademark public as to the source of the goods or services. [Sec. 148, RA
could conceivably remain registered forever); 8293]
2. Territorial (except well-known marks);
3. Fair Use: The registration of the mark shall not confer on The IPC deems unlawful any subsequent use of the trade name
the registered owner the right to preclude third parties from by a third party, whether as a trade name or a mark or
using bona fide their names, addresses, pseudonyms, a collective mark, or any such use of a similar trade name or
geographical name, or exact indications concerning the kind, mark, likely to mislead the public. [Sec. 165.2 (b),RA 8293]
quality, quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services. Provided 10. Infringement and remedies
That:
a. Such use is confined to the purposes of mere identification a.Trademark infringement
or information; and The ff. shall be liable in a civil action for infringement:
b. Such use cannot mislead the public as to the source of the 1. Any person who shall, without the consent of the owner of
goods or services. [Sec. 148, RA 8293] the registered mark, use in commerce any reproduction,
4. Prior User: A registered mark shall have no effect against counterfeit, copy, or colorable imitation of a registered mark
any personwho, in good faith,before the filing date or the or the same container or a dominant feature thereof:
priority date,was using the mark for the purposes of his
business or enterprise. [Sec. 159.1, RA 8293] a. In connection with the sale, offering for sale, distribution,
5. Non-Use: Failure to file declaration of actual use advertising of any goods or services, including other
automatically results in the denial of the registration or the preparatory steps necessary to carry out the sale of any goods
cancellation of the registration by operation of law. or services on; or
[Sec.124.2] b. In connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive. [Sec. 155.1, RA
c. Assignment and Transfer of Application and 8293]
Registration
1. An application for registration of a mark, or its registration, 2. Any person who shall, without the consent of the owner of
may be assigned or transferred with or without the transfer of the registered mark:
the business using the mark. [Sec. 149.1, RA 8293] a. Reproduce, counterfeit, copy or colorably imitate a
2. Such assignment or transfer shall, however, be null and void registered mark or a dominant feature thereof; and
if it is liable to mislead the public, particularly as regards the b. Apply such reproduction, counterfeit, copy or colorable
nature, source, manufacturing process, characteristics, or imitation to labels, signs, prints, packages, wrappers,
suitability for their purpose, of the goods or services to which receptacles or advertisements, intended to be used in
the mark is applied. [Sec. 149.2, RA 8293] commerce:
3. The assignment of the application for registration of a mark, i. In connection with the sale, offering for sale, distribution, or
or its registration, shall be in writing and require the signatures advertising of goods or services on; or
of the contracting parties. Transfers by mergers or other forms ii. In connection with which such use is likely to cause
of succession may be made by any document. confusion, or to cause mistake, or to deceive. [Sec. 155.2, RA
supporting such transfer. [Sec. 149.3, RA 8293] 8293]
4. Assignments and transfers shall have no effect against third
parties until they are recorded at the Office. [Sec. 149.5, Note: The infringement takes place at the momentany of the
RA8293] acts stated in Subsection155.1 or 155.2 are committed,
regardless of whether there is actual sale of goods or services
Any license contract concerning the registration of a mark, or using the infringing material.
an application therefor, shall provide for effective control by
the licensor of the quality of the goods or services of the A mere distributor, and not the owner, cannot assert any
licensee in connection with which the mark is used. If the protection from trademark infringement as it had no right in
license contract does not provide for such quality control, or if the first place to the registration of the disputed trademarks.
such quality control is not effectively carried out, the license [Superior Commercial Enterprises v. Kunnan Enterprises,
contract shall not be valid. [Sec. 150.1, RA 8293] G.R. No. 169974 (2010)]

9. Use by third parties ofnames, etc. similar to registered ELEMENTS OF TRADEMARK INFRINGEMENT
mark 1. The trademark being infringed is registered in the
Use of Indications by Third Parties for Purposes Other than Intellectual Property Office; however, in infringement of trade
those for which the Mark is Used. — Registration of the mark name, the same need not be registered;
shall not confer on the registered owner the right to preclude 2. The trademark or trade name is reproduced, counterfeited,
third parties from using bona fide their names, addresses, copied, or colorably imitated by the infringer;
pseudonyms, a geographical name, or exact indications 3. The infringing mark or trade name is used in connection
concerning the kind, quality, quantity, destination, value, place with the sale, offering for sale, or advertising of any goods,
of origin, or time of production or of supply, of their goods or business or services; or the infringing mark or trade name is
services: Provided, That such use is confined to the purposes applied to labels, signs, prints, packages, wrappers, receptacles
of mere identification or information and cannot mislead the or advertisements intended to be used upon or in connection
with such goods, business or services;
4. The use or application of the infringing mark or trade name ultimately fixes the relations between such goods and services.
is likely to cause confusion or mistake or to deceive It is not unlikely that the average buyer would be led into the
purchasers or others as to the goods or services themselves or assumption that the curls are of petitioner and that the latter
as to the source or origin of such goods or services or the has ventured into snack manufacturing or, if not, that the
identity of such business; petitioner has supplied the flavorings for respondent's product.
5. It is without the consent of the trademark or trade name Either way, the reputation of petitioner would be taken
owner or the assignee thereof. [Prosource International, Inc. advantage of and placed at the mercy of respondent. [Mang
vs. Horphag Research Management S.A., G.R. No. 180073 Inasal Philippines v. IFP Manufacturing Corporation, G.R.
(2009)] No. 221717 (2017)]

Of these, it is the element of likelihood of confusion that is b. Damages

the gravamen of trademark infringement. [McDonald’s The owner of a registered mark may recover damages from
Corporation v. L.C. Big Mak Burger, Inc., et al., G.R. No. any person who infringes his rights, and the measure of the
143993 (2004)] damages suffered shall be either:
(i) The reasonable profit which the complaining party would
Whether a trademark causes confusion and is likely to deceive have made, had the defendant not infringed his rights; or
the public hinges on "colorable imitation" which has been (ii) The profit which the defendant actually made out of the
defined as "such similarity in form, content, words, sound, infringement; or
meaning, special arrangement or general appearance of the (iii) In the event such measure of damages cannot be readily
trademark or trade name in their overall presentation or in ascertained with reasonable certainty, then the court mayaward
their essential and substantive and distinctive parts as would as damages –
likely mislead or confuse persons in the ordinary course of
purchasing the genuine article." [Mighty Corporation v. E. & a. A reasonable percentage based upon the amount of gross
J. Gallo Winery, G.R. No. 154342 (2004)] Two types of sales of the defendant; or
confusion arise from the use of similar or colorable imitation b. The value of the services in connection with which the mark
marks, namely – or trade name was used in the infringement of the rights of the
1. Confusion of goods (product confusion) and complaining party. [Sec. 156.1, RA 8293]
2. Confusion of business (source or origin confusion).
C. Requirement of Notice
While there is confusion of goods when the products are The owner of the registered mark shall not be entitled to
competing, confusion of business exists when the products are recover profits or damages unless the acts have been
non-competing but related enough to produce confusion or committed with knowledge that such imitation is likely to
affiliation. [McDonald’s Corporation v. L.C. Big Mak Burger, cause confusion, or to cause mistake, or to deceive.
Inc., et al., G.R. No. 143993 (2004)]
Such knowledge is presumed if:
Likelihood of confusion is admittedly a relative term, to be  The registrant gives notice that his mark is registered by
determined rigidly according to the particular (and sometimes displaying with the mark the words '"Registered Mark" or the
peculiar) circumstances of each case. In determininglikelihood letter R within a circle or
of confusion, the court must consider:  The defendant had otherwise actual notice of the
1. The resemblance between thetrademarks; registration. [Sec. 158, RA 8293]
2. The similarity of the goods to which the trademarks are
attached; D. Penalties
3. The likely effect on the purchaser; and Independent of the civil and administrative sanctions imposed
4. The registrant’s express or implied consent and other fair by law, a criminal penalty of imprisonment from two (2) years
and equitable considerations. [Mighty Corporation v. E. & J. to five (5) years and a fine ranging from Fifty thousand pesos
Gallo Winery, G.R. No. 154342 (2004)] (P50,000) to Two hundred thousand pesos (P200,000), shall
be imposed on any person who is found guilty of committing
DOCTRINE OF NATURAL EXPANSION OF BUSINESS any of the acts mentioned in Section 155, Section 168 and
The protection to which the owner of a trademark is entitled Subsection 169.1. (Arts. 188 and 189, Revised Penal Code).
extends to cases inwhich the use of by a junior appropriator of [Sec. 170, RA 8293]
a trademark of trade name is likely to lead to a confusion of
source. 11. Unfair Competition
The ff. shall be guilty of unfair competition,and shall be
 As where prospective purchasers would be misled into subject to an action therefor:
thinking that the complaining party has extended his business (i) Any person who shall employ deception or any other means
into the field or is in any way connected with the activities of contrary to good faith, by which he shall pass off the goods
the infringer; or when it forestalls the normal potential manufactured by him or in which he deals, or his business, or
expansion of the business. [Dermaline v. Myra services for those of the one having established such goodwill;
Pharmaceuticals, Inc., G.R. No. 190065 (2010)] or
(ii) Any person who shall commit any acts calculated to
 It is the fact that the underlying goods and services of both produce said result. [Sec. 168.2, RA 8293]
marks deal with inasal and inasal-flavored products which
Particular acts of unfair competition: 179127 (2008); Prosource International, Inc.
a. Selling one’s goods and giving them the general appearance vs. Horphag Research Management S.A., G.R.
of goods of another manufacturer or dealer, either: No. 180073 (2009)]
 As to the goods themselves or in the wrapping of the The law on unfair competition is broader and
packages in which they are contained, or the devices or words more inclusive than the law on trademark
thereon; or infringement.
 In any other feature of their appearance, which would be  The latter is more limited but it recognizes
likely to influence purchasers to believe that the goods offered presentation of the goods. The intent to
are those of a manufacturer or dealer, other than the actual deceive and defraud may be inferred from the
manufacturer or dealer. [Sec. 168.3(a), RA 8293] similarity in appearance of the goods as offered
for sale to the public. Actual fraudulent intent
b. Clothing one’s goods with such appearance as shall deceive need not be shown. [McDonald’s Corporation
the public and defraud another of his legitimate trade, or any v. L.G. Big Mak Burger, Inc., et al., G.R. No.
subsequent vendor of such goods or any agent of any vendor 143993 (2004)]
engaged in selling such goods with a like purpose. Who may file an action for unfair competition:
[Sec.168.3(a), RA 8293] A person who has identified in the mind of the
publicthe goods he manufactures or deals in,
c. Using any artifice, or device, or employing any other means his business or services from those of others.
calculated to induce the false belief that such person is  Whether or not a registered mark is
offering the services of another who has identified such employed
services in the mind of the public. [Sec. 168.3(b), RA 8293]  Ratio: Such person has a property right in
the goodwillof the said goods, business or
d. Making any false statement in the course of trade or services so identified,and said right shall
committing any other act contrary to good faith of a nature be protected in the same manner as other
calculated to discredit the goods, business or services property rights. [Sec. 168.1, RA 8293]
of another. [Sec. 168.3(c), RA 8293] The "true test," therefore, of unfair competition
has thus been "whether the acts of the
The elements of an action for unfair competition are: defendant have the intent of deceiving or are
(1) Confusing similarity in the general appearance of the calculated to deceive the ordinary buyer
goods, and making his purchases under the ordinary
(2) Intent to deceive the public and defraud a competitor. conditions of the particular trade to which the
controversy relates.” [San Miguel Pure Foods
The confusing similarity may or may not result from similarity
in the marks, but may result from other external factors in the
packaging or Company, Inc., vs. Foodsphere, G.R. No.
217781 (2018)]

Company, Inc., vs. Foodsphere, G.R. No.

217781 (2018)]
Infringement of
Trademark or
Trade Name
Unfair Competition
Unauthorized use of
a trademark or trade
name
Passing off of one’s
goods as those of
another
Fraudulent intent is
unnecessary
Fraudulent intent is
essential [In and Out Burger vs. Sehwani, G.R. No.
Prior registration of
the trademark is a 179127 (2008); Prosource International, Inc.
prerequisite to the vs. Horphag Research Management S.A., G.R.
action No. 180073 (2009)]
Registration is not
necessary The law on unfair competition is broader and
[In and Out Burger vs. Sehwani, G.R. No.
more inclusive than the law on trademark The Madrid Protocol is a system facilitating, by
infringement. way of a single international application and
registration:
The law on unfair competition is broader and 1. The securing of protection of trademarks in
multiple designated territories that are
more inclusive than the law on trademark members to the Protocol [Art 2]; and
2. The management of such registered
infringement. trademarks.
Territorial Effect only on Designated
The latter is more limited but it recognizes
Territories
a more exclusive right derived from the The protection resulting from the international
registration shall extend to any Contracting
trademark adoption and registration by the Party only at the request of the person who files
the international application or who is the
person whose goods or business is first holder of the international registration.
However, no such request can be made with
associated with it
respect to the Contracting Party whose Office
Hence, even if one fails to establish his is the Office of origin. [Art.3bis]
Rights conferred
exclusive property right to a trademark, he An international registration is equivalent to a
bundle of national registrations in the
may still obtain relief on the ground of his designated Contracting Parties.
The rights conferred to the registered owner of
competitor's unfairness or fraud. [Mighty the marks are the respective exclusive rights
Corporation v. E. & J. Gallo Winery, G.R granted by the trademark law of each
designated country.
No. 154342 (2004)] The protection of the mark in each of the
designated Contracting Parties is the same as
12. Registration of marks if the mark had been the subject of an
under the Madrid Protocol application for registration filed direct with the
Note: This part contains a simplified discussion Office of that Contracting Party. [Art. 4(1)]
of the Madrid Protocol. For the full text, please If no provisional refusal is notified to the
refer to the “PROTOCOL RELATING TO THE International Bureau within the relevant time
MADRID AGREEMENT CONCERNING THE limit, or if any such refusal is subsequently
INTERNATIONAL REGISTRATION OF withdrawn, the protection of the mark in each
MARKS” designated Contracting Party is the same as if
The President's ratification [to the Madrid it had been registered by the Office of that
Protocol] is valid and constitutional because Contracting Party. [Art. 4(1)]
[it], being an executive agreement as When protection under international
determined by the Department of Foreign registration lost
Affairs, does not require the concurrence of the The protection resulting from the international
registration may no longer be invoked if, before
Senate. [Intellectual Property Association of the expiry of five years from the date of the
international registration, the basic application
the Philippines v. Ochoa et al., G.R. No. or the registration resulting therefrom, or the
204605, (2016)] basic registration, as the case may be, has
There is no conflict between the Madrid been 1) withdrawn, 2) has lapsed, 3) has been
Protocol and the IP Code […] The Madrid renounced or 4) has been the subject of a final
Protocol accords with the intent and spirit of the decision of rejection, revocation, cancellation
IP Code, particularly on the subject of the or invalidation, in respect of all or some of the
registration of trademarks. The Madrid Protocol goods and services listed in the international
does not amend or modify the IP Code on the registration.
acquisition of trademark rights consideringthat The same applies if:
the applications under the Madrid Protocol are 1. An appeal against a decision refusing the
still examined according to the relevant effects of the basic application;
national law. In that regard, the IPOPHL will 2. An action requesting the withdrawal of the
only grant protection to a mark that meets the basic application or the revocation,
local registration requirements. [Intellectual cancellation or invalidation of the
Property Association of the Philippines v. registration resulting from the basic
Ochoa et al., G.R. No. 204605 (2016)] application or of the basic registration; or
Coverage 3. An opposition to the basic application
What is the Madrid Protocol results, after the expiry of the five-year
period, in a final decision of rejection, 3. Substantive Examination by National or
revocation, cancellation or invalidation, or Regional designated Offices
ordering the withdrawal, of the basic o The respective IP Offices will assess
application, or the registration resulting the application in accordance with
therefrom, or the basic registration, as the the local legislation and decide within
case may be, provided that such appeal, 12-18 months whether the mark is
action or opposition had begun before the registrable therein, or will be
expiry of the said period. [Art. 6(3)]U.P. LAW BOC provisionally refused.
INTELLECTUAL PROPERTY LAW o WIPO will inform the applicant of the
COMMERCIAL LAW decision of the IP Office.
Page 359 of 450 The refusal of an IP Office to protect the mark
Requirements for registration will not affect the decisions of other IP Offices.
Prior application or registration Independence of International Registration
An applicant must have first 1) applied for an Upon expiry of a period of five years from the
application (“basic application”) for, or 2) date of the international registration, such
registered (“basic registration”) the mark registration shall become independent of the
sought to be internationally registered through basic application or the registration resulting
his “home” national or regional Intellectual therefrom, or of the basic registration, as the
Property Office before filing an international case may be. [Art. 6(2)]
application. See discussion above on When protection
The “Home” or Office of Origin under international registration lost in relation
Must be in a territory that is: a Contracting Party to this concept.
to the Protocol (e.g. Philippines), or within a Term of Protection
Contracting Organization (e.g. European Term
Union). Registration of a mark at the International
The Applicant Must: Bureau is effected for ten years. [Art. 6(1)]
1. be a national of; Renewal
2. be domiciled in; or Any international registration may be renewed
3. have a real and effective industrial or for a period of ten years from the expiry of the
commercial establishment in – preceding period, by the mere payment of the
the basic fee, supplementary, and complementary
Contracting fees. [Art.7]
State
or D. COPYRIGHT
Contracting
Organization. [Art.2] Copyright is the legal protection extended to
Three-step Process the owner of the rights in an “original work”,
1. Application through the National or which refers to every literary, scientific and
Regional IP Office. artistic production.
o Applicant needs to have first filed an Copyright refers to the right granted by a
application or registered the mark statute to the proprietor of an intellectual
sought to be internationally production to its exclusive use and enjoyment
registered through a national or to the extent specified in the statute. [Olaño v.
regional IP Office. Lim Eng Co, G.R. 195835 (2016)]
o Applicant submits international 1. Basic Principles
application (see Art 3) of the Protocol Works are Protected by the Sole
through the same IP Office, which Fact of Their Creation
will certify and forward it to the World PRINCIPLE OF AUTOMATIC PROTECTION
Intellectual Property Organization Copyright is vested from the very moment of
(WIPO). creation irrespective of their mode or form of
2. Formal Examination by WIPO expression, as well as of their content, quality
o WIPO. through its International and purpose. [Sec. 171.1-172.2, RA 8293]
Bureau (IB), conducts a formal The enjoyment and exercise of copyright,
examination of the international including moral rights, shall not be the subject
application. of any formality; such enjoyment and such
o Once approved, the mark is exercise shall be independent of the existence
recorded in the International of protection in the country of origin of the work.
Register and published. [Article 5(2), Berne Convention for the
o The applicant a certificate of Protection of Literary and Artistic Works]
international registration and notifies The copyright is distinct from the property in the
the IP Offices designated where material object subject to it.
protection is sought. Consequently:
(1) The transfer or assignment of the other works of applied art;
copyright shall NOT itself constitute a 9. Illustrations, maps, plans, sketches, charts
transfer of the material object and three-dimensional works relative to
(2) The transfer or assignment of the sole geography, topography, architecture or
copy or of one or several copies of the science;
work shall NOT imply transfer or 10. Drawings or plastic works of a scientific or
assignment of the copyright. [Sec. 181,RA technical character;
8293] 11. Photographic works including works
Copyright, like other intellectual produced by a process analogous to
property rights, is a Statutory Right photography; lantern slides;
Copyright, in the strict sense of the term is 12. Audiovisual works and cinematographic
purely a statutory right. works and works produced by a process
 The rights are limited to what the statute analogous to cinematography or any
confers. process for making audio-visual
 It may be obtained and enjoyed only with recordings;
respect to the subjects and by the persons, 13. Pictorial illustrations and advertisements;
and on terms and conditions specified in 14. Computer programs; and
the statute. 15. Other literary, scholarly, scientific and
 It can cover only the works falling within the artistic works [Sec. 172.1, RA 8293]
statutory enumeration or description. [Pearl When a work is considered original:
and Dean vs. Shoemart, G.R. No. 148222 1. The work is an independent creation of the
(2003)] author; and
2. Copyrightable Works 2. It must not be copied from the work of
Protection Extends Only to the another.
Expression of an Idea, Not the Idea A person must be the original creator of the
Itself work to be entitled to a copyright. He must have
No protection shall extend, under this law, to created it by his own skill, labor and judgment
any idea, procedure, system method or without directly copying or evasively imitating
operation, concept, principle, discovery or the work of another. [Ching Kian Chuan vs. CA,
mere data as such, even if they are expressed, G.R. No. 130360 (2001)]
explained, illustrated or embodied in a work. Originality is not determined by novelty,
[Sec. 175, RA 8293] aesthetic merit or ingenuity but that it is an
Original Works independent creation.
Literary and artistic works, hereinafter referred Works are protected irrespective of their mode
to as "works", are original intellectual creations or form of expression. [Sec. 172.2, RA 8293]
in the literary and artistic domain protected Derivative Works
from the moment of their creation and shall The following derivative works shall also be
include in particular: protected by copyright:
1. Books, pamphlets, articles and other Dramatizations, translations,
writings; adaptations,
2. Periodicals and newspapers; abridgments,
3. Lectures, sermons, addresses, arrangements,
dissertations prepared for oral delivery, and
whether or not reduced in writing or other other
material form; alterations of literary or artistic works; and
Collections of literary, scholarly or artistic
works, and compilations of data and other
4. Letters; materials which are original by reason of the
5. Dramatic selection or coordination or arrangement of
or their contents. [Sec. 173.1, RA 8293]
dramatico-musical Derivative works are protected as new
compositions; choreographic works or works, provided they shall not:
entertainment in dumb shows; (1) Affect the force of any subsisting copyright
6. Musical compositions, with or without upon the original works employed or any
words; part thereof; or
7. Works of drawing, painting, architecture, (2) Be construed to imply any right to such use
sculpture, engraving, lithography or other of the original works, or to secure or extend
works of art; models or designs for works copyright in such original works. [Sec.
of art; 173.2, RA 8293]
8. Original ornamental designs or models for 3. Non-Copyrightable Works
articles of manufacture, whether or not Unprotected Subject Matter
registrable as an industrial design, and (1) Any idea, procedure, system method or
operation, concept, principle, discovery or any work of the Government.
mere data as such, even if they are Exceptions
expressed, explained, illustrated or 1. When copyright is transferred by
embodied in a work; assignment or bequest in favor of the
(2) News of the day and other miscellaneous government [Sec. 176.3];
facts having the character of mere items of 2. Author of speeches, lectures, sermons,
press information; addresses and dissertations shall have
(3) Any official text of a legislative, exclusive right of making a collection of his
administrative or legal nature, as well as work.
any official translation thereof; However, prior approval of the government
(4) Pleadings; agency or the office wherein the work is
(5) Original decisions of courts and tribunals created shall be necessary for the exploitation
(Note: This pertains to the “original of such work for profit. [Sec. 176.1]
decisions” not the SCRA published Publication or republication by the Government
volumes since these are protected under in a public document of any work in which
derivative works under Sec. 173.1). [Sec. copyright is subsisting shall not be taken:
175, RA 8293] (1) To cause any abridgment or annulment of
Television newscasts are subject to copyright. the copyright; or
Although news or the events themselves areU.P. LAW BOC (2) To authorize any use or appropriation of
INTELLECTUAL PROPERTY LAW such work without the consent of the
COMMERCIAL LAW copyright owner. [Sec. 176.3, RA 8293]
Page 362 of 450 Note
not copyrightable, expression of the news Works made by an officer or employee of the
particularly when it underwent a creative Government as part of his regularly prescribed
process is entitled to copyright protection. duty do not enjoy copyright. Works made by an
[ABS-CBN Corp. vs. Gozon, G.R. No. 195956 employee of the government which is not as a
(2015)] part of his regularly prescribed official duties
The format or mechanics of a TV show is not (i.e. not considered a “Work of the
copyrightable as copyright does not extend to Government”) may enjoy copyright.
ideas, procedures, processes, systems, Works of the Public Domain
methods of operation, concepts, principles or Works of the public domain are non
discoveries regardless of the form in which copyrightable.
they are described, explained, illustrated or To this class of works belong:
embodied. [Joaquin Jr. et al vs. Drilon, et al, 1. Works, whose term of copyright has
G.R. No. 108946 (1999)] expired;
No one may claim originality as to facts as 2. Works wherein the copyright over them are
these do not owe their origin to an act of waived by the owner in favor of the public;
authorship. The first person to find and report a and
particular fact has not created the same; he has 3. Works which did not enjoy copyright
merely discovered its existence. [Feist protection in the first place, as in the case
Publication vs. Rural Telephone Services, 499 of unregistered works made under
U.S. 340 (1991)] previous laws that required the registration
A compilation is not copyrightable per se, but it of copyright [See: Santos vs. McCullough
is copyrightable only if its facts have been Printing Company, G.R. No. L-19439
selected, coordinated, or arranged in such a (1964)]U.P. LAW BOC
way that the resulting work as a while INTELLECTUAL PROPERTY LAW
constitutes an original work of authorship. COMMERCIAL LAW
Otherwise known as the Sweat of the Brow or Page 363 of 450
Industrious Collection Test. Useful Articles
[Feist A “useful article” is defined as an article “having
Publication vs. Rural Telephone Services, 499 intrinsic utilitarian function that is not merely to
U.S. 340 (1991)] portray the appearance of the article or to
Works of the Government of The convey information” is excluded from copyright
Philippines eligibility. The only instance when a useful
Work of the Government of the Philippines article may be the subject of copyright
A work created by an officer or employee of the protection is when it incorporates a design
Philippine Government or any of its element that is physically or conceptually
subdivisions and instrumentalities, including separable from the underlying product. [Olaño
government-owned or controlled corporations v. Lim Eng Co, G.R. No. 195835 (2016)]
as a part of his regularly prescribed official USEFUL ARTICLE DOCTRINE
duties. [Sec. 171.11, RA 8293] Works whose sole purpose is utilitarian, and
General Rule: No copyright shall subsist in have no separate artistic value are non
copyrightable works. recording,
In contrast, a work of applied art, which has c. A computer program,
utilitarian functions, but has an identifiable d. A compilation of data and other
artistic work or creation incorporated thereto, materials or a musical work in
can be the subject of a copyright to the extent graphic form
that the design features: e. Irrespective of the ownership ofthe
Can be identified separately from, and original or the copy which is the
Are capable of existing independently of the subject of the rental;
utilitarian aspects of the article. [Brandir Int’l v. 5. Public display of the original or a copy of
Cascade Pacific, 834 F. 2nd 1142 (2nd Cir.) the work;
(1987)] 6. Public performance of the work; and
Denicola Test: Conceptual Separability 7. Other communication to the public of the
(Aesthetics v. Functionality) work. [Sec. 177, RA 8293]U.P. LAW BOC
(1) The work cannot be copyrighted if its INTELLECTUAL PROPERTY LAW
design elements reflect a merger of COMMERCIAL LAW
aesthetic and functional considerations, Page 364 of 450
and the artistic aspects of the work cannot Publisher’s Copyright
be conceptually separable from the In addition to the right to publish granted by the
utilitarian aspects. author, his heirs, or assigns, the publisher shall
(2) Conceptual separability exists where have a copyright consisting merely of the right
design elements can be identified as of reproduction of the typographical
reflecting the designer's artistic judgment, arrangement of the published edition of the
exercised independently of functional work. [Sec.174, RA 8293]
influences Copyright in a work of architecture
(3) The relevant question should be whether The copyright in any such work shall include:
the design of a useful article, however  The right to control the erection of any
intertwined with the article’s utilitarian building which reproduces the whole or a
aspects, causes an ordinary reasonable substantial part of the work either in its
observer to perceive an aesthetic concept original form or in any form recognizably
not related to the article’s use. [BrandirInt’l derived from the original
v. Cascade Pacific, 834 F. 2nd 1142 (2nd However, it shall not include:
Cir.) (1987)]  The right to control the reconstruction or
4. Rights of Copyright Owner rehabilitation in the same style as the
Works are protected by the sole fact of their original of a building to which that copyright
creation, irrespective of their mode or form of relates. [Sec. 186, RA 8293]
expression, as well as of their content, quality Communication
and purpose. [Sec. 172.2, RA 8293] to
The issuance of the certificates of registration the
and deposit as provided by Sec. 2, Rule 7 of Public
the Copyright Safeguards and Regulations, are of
purely for recording the date of registration and Copyrighted Works
deposit of the work, and are not conclusive as This includes point-to-point transmission of a
to copyright ownership (nor does it determine work, including:
the time when copyright vests). [Manly (1) Video on demand, and
Sportwear v. Dadodette Enterprises, G.R. No. (2) Providing access to an electronic retrieval
165306 (2005)] system
Copyright or Economic Rights -
Copyright or economic rights shall consist of Such as computer databases, servers,
the exclusive right to carry out, authorize or or similar electronic storage devices.
prevent the following acts: Broadcasting, rebroadcasting, retransmission
1. Reproduction of the work or substantial by cable, and broadcast and retransmissionby
portion of the work; satellite are all acts of “communication to the
2. Dramatization, translation, adaptation, public” within the meaning of the IPC. [Rule 11,
abridgment, arrangement or other Copyright Safeguards and Regulations]
transformation of the work; First Public Distribution of Work
3. The first public distribution of the original An exclusive right of first distribution of work
and each copy of the work by sale or other includes all acts involving distribution,
forms of transfer of ownership; specifically including the first importation of an
4. Rental of the original or a copy of: original and each copy of the work into the
a. An audiovisual or cinematographic jurisdiction of the Republic of the Philippines.
work, [Rule 12, Copyright Safeguards and
b. A work embodied in a sound Regulations]
Moral Rights [Sec. 180.1]
The author of a work shall, independently of the The submission of a literary, photographic or
economic rights in Section 177 or the grant of artistic work to a newspaper, magazine or
an assignment or license with respect to such periodical for publication shall constitute only a
right, have the right: license to make a single publication unless a
1. To require that the authorship of the works greater right is expressly granted. If two (2) or
be attributed to him, in particular, the right more persons jointly own a copyright or any
that his name, as far as practicable, be part thereof, neither of the owners shall be
indicated in a prominent way on the copies, entitled to grant licenses without the prior
and in connection with the public use of his written consent of the other owner or owners.
work; [Sec. 193.1, RA 8293] [Sec. 180.3, RA 8293]
2. To make any alterations of his work prior Any exclusivity in the economic rights in a work
to, or to withhold it from publication; [Sec. may be exclusively licensed. Within the scope
193.2, RA 8293] of the exclusive license, the licensee isentitled
3. To object to any distortion, mutilation or to all the rights and remedies which the licensor
other modification of, or other derogatory had with respect to the copyright. [Sec. 180.4,
action in relation to, his work which would RA 8293]
be prejudicial to his honor or reputation; Filing of Assignment or License
[Sec. 193.3, RA 8293] An assignment or exclusive license may be
4. To restrain the use of his name with respect filed in duplicate with the National Libraryupon
to any work not of his own creation or in a payment of the prescribed fee for registration in
distorted version of his work. [Sec. 193.4, books and records kept for the purpose. [Sec.
RA 8293] 182, RA 8293]
ASSIGNMENT OR LICENSE OF MORAL Rights to Proceeds on Subsequent
RIGHTS Transfers (Droit De Suite or Follow
Moral rights cannot be assigned or licensed. Up Rights)
[Sec. 198, RA 8293] In every sale or lease of an original work of
WAIVER OF MORAL RIGHTS painting or sculpture or of the original
While Moral Rights cannot be assigned or manuscript of a writer or composer,
licensed, it can be waived. [Sec. 198, RA 8293] subsequent to the first disposition thereof
General Rule: Moral rights can be waived in by the author, the author or his heirs shall have:
writing, expressly stating such waiver. [Sec.  An inalienable right to participate in the
195, RA 8293] gross proceeds of the sale or lease to the
Exceptions extent of five percent (5%)
Even if made in writing, waiver is still not valid Duration of Right
if: This right shall exist during the lifetime of the
1. Use of the name of the author, title of his author and for 50 years after his death. [Sec.
work, or his reputation with respect to any 200, RA 8293]
version or adaptation of his work, which Works not covered
because of alterations substantially tends Prints, etchings, engravings, works of applied
to injure the literary or artistic reputation of art, or works of similar kind wherein the author
another author; [Sec. 195.1, RA 8293] primarily derives gain from the proceeds of
2. It uses the name of the author in a work that reproductions. [Sec. 201, RA 8293]
he did not create. [Sec. 195.1, RA 8293] Related
The right of attribution is waived by contribution Rights
to a collective work unless such is expressly (Neighboring
reserved. [Sec. 196, RA 8293] Rights)
Performer’s Rights
Right to Transfer, Assign, or 1) As regards their performances, the right of
authorizing:
License a) The broadcasting and other
The author has the right to assign or license the communication to the public of their
copyright and/or the material object in whole or performance; and
in part, and they allow the owner to derive b) The fixation of their unfixed
financial reward from the use of his works by performance. [Sec. 203.1, RA 8293]
others. [Sec. 180.1, RA 8293 as amended by c) Such right shall be maintained and
RA 10372] exercised 50 years after his death, by
Rights of Assignee or Licensee his heirs, and in default of heirs, the
The assignee or licensee is entitled to all the government, where protection is
rights and remedies which the assignor or claimed. [Sec. 204.2, RA 8293]
licensor had with respect to the copyright, 2) The right of authorizing the direct or indirect
within the scope of the assignment or license. reproduction of their performances fixed in
sound recordings, or audiovisual works or distribution of the original and copies of
fixations in any manner or form; [Sec. their sound recordings through sale or
203.2, RA 8293, as amended by 10372] rental or other forms of transferring
3) The right of authorizing the first public ownership; [Sec. 208.2, RA 8293]
distribution of the original and copies of 3. The right to authorize the commercial
their performance fixed in the sound rental to the public of the original and
recording or audiovisual works or fixations copies of their sound recordings, even after
through sale or rental or other forms of distribution by them by or pursuant to
transfer of ownership; [Sec. 203.3, RA authorization by the producer. [Sec. 208.3,
8293, as amended by RA 10372] RA 8293]
a) Subject to the provisions of Section Single Equitable Remuneration
206 The right to be paid a single equitable
4) The right of authorizing the commercial remuneration by the user to be shared withthe
rental to the public of the original and performers equally, in the absence of any
copies of their performances fixed in sound agreement, when a sound recording published
recordings or audiovisual works orU.P. LAW BOC for commercial purposes, or a reproduction of
INTELLECTUAL PROPERTY LAW such sound recording, is:
COMMERCIAL LAW a. Used directly for broadcasting or
Page 366 of 450 b. Used for other communication to the
fixations, even after distribution of them by, public; or
or pursuant to the authorization by the c. Publicly performed with the intention of
performer; [Sec. 203.4, RA 8293, as making and enhancing profit. [Sec. 209,
amended by RA 10372] RA 8293]
5) The right of authorizing the making Rights of Broadcasting Organizations
available to the public of their 1. The rebroadcasting of their broadcasts;
performances fixed in sound recordings or [Sec. 211.1, RA 8293]
audiovisual works or fixations, by wire or 2. The recording in any manner, includingthe
wireless means, in such a way that making of films or the use of video tape, of
members of the public may access them their broadcasts for the purpose of
from a place and time individually chosen communication to the public of television
by them; [Sec. 203.5, RA 8293, as broadcasts of the same; [Sec. 211.2, RA
amended by RA 10372] 8293]
6) The right to claim to be identified as the 3. The use of such records for fresh
performer of his performances, and to transmissions or for fresh recording. [Sec.
object to any distortion, mutilation or other 211.3, RA 8293]
modification of his performances that Must-Carry Rule
would be prejudicial to his reputation, as This rule prevents cable television companies
regards his live aural performances or from excluding broadcasting organization
performances fixed in sound recordings or especially in those places not reached by
audiovisual works or fixations; signal. Also, the rule prevents cable television
a) Exception: Where the omission is companies from depriving viewers in far-flung
dictated by the manner of the use of the areas the enjoyment of programs available to
performance. [Sec. 204.1, RA 8293,as city viewers. [ABS-CBN Broadcasting vs.
amended by RA 10372] Philippine Multi-Media System, G.R. Nos.
7) The right to an additional remuneration 175769-70 (2009)]
equivalent to at least five percent (5%) of
the original compensation he or she 5. Rules
received for the first communication or
broadcast, in every communication to the on
public or broadcast of a performance Ownership
subsequent to the first communication or of
broadcast thereof by the broadcasting Copyright
organization. [Sec. 206, RA 8293]
a) Unless otherwise provided in the a. Ownership of Copyright
contract
Rights of Producers of Sound Recordings
1. The right to authorize the direct or indirect
reproduction of their sound recordings, in
any manner or form; the placing of these
reproductions in the market and the right of
rental or lending; [Sec. 208.1, RA 8293]
2. The right to authorize the first public
A person to be entitled to copyright must be the
original creator of the work. He must have
created it by his own skill, labor and judgment
without directly copying or evasively imitating
the work of another. [Wilson Ong Ching Kian
Chuan v. CA, G.R. 130360 (2001)]
Ownership of copyrighted material is shownby
proof of originality and copyrightability. While it
is true that where the complainant presents a
copyright certificate in support of the claim of
infringement, the validity and ownership of theU.P. LAW
BOC
INTELLECTUAL PROPERTY LAW
COMMERCIAL LAW
Page 368 of 450
copyright is presumed. This presumption The owners of copyright and related rights or
however is rebuttable and cannot besustained their heirs may designate a society of artists,
where other evidence in the record casts doubt writers, composers and other right-holders to
on the question of ownership. collectively manage their economic or moral
xxx rights on their behalf.
Valid copyright ownership denotes originality of  For the said societies to enforce the
the copyrighted material. Originality means that rights of their members, they shall first
the material was not copied, evidences at least secure the necessary accreditation
minimum creativity and was independently from the Intellectual Property Office.
created by the author. [Olaño v. Lim Eng Co, [Sec. 183, RA 8293 as amended by RA
G.R. 195835 (2016)] 10372]
Presumption of Authorship The primary purpose of a CMO is to collectively
General Rule: The natural person whose manage copyright and/or related rights,
name is indicated on a work in the usual including any or all of the following activities:
manner as the author shall, in the absence of (1) Negotiation with and grant of licenses to
proof to the contrary, be presumed to be the users of protected literary, scholarly,
author of the work. scientific and artistic works, derivative
The person or body corporate, whose name works, performances, sound recordings,
appears on an audio-visual work in the usual audiovisual works and broadcasts;
manner, shall, in the absence of proof to the (2) Collection of royalties and other forms of
contrary, be presumed to be the maker of said remuneration for the use of protected
work. [Sec. 219, RA 8293] literary, scholarly, scientific and artistic
Use of Pseudonyms works, derivative works, performances,
This provision shall be applicable even if the sound recordings, audiovisual works and
name is a pseudonym, where the pseudonym broadcasts;
leaves no doubt as to the identity of the author. (3) Collection of proceeds In subsequent
[Sec. 219, RA 8293] transfers of the originals of paintings,
Transfer sculptures and manuscripts;U.P. LAW BOC
or INTELLECTUAL PROPERTY LAW
Assignment COMMERCIAL LAW
of Page 369 of 450
Copyright (4) Collection of additional remuneration for
The copyright may be assigned or licensed in subsequent communication or broadcast of
whole or in part. [Sec. 180.1, RA 8293] a performance;
 The copyright is not deemed assigned or (5) Collection of single equitable remuneration
licensed inter vivos in whole or in part for the broadcast, other communication to
unless there is a written indication of such the public or public performance of a sound
intention. [Sec. 180.2, RA 8293 as recording; and
amended by RA 10372] (6) Distribution of the abovementioned
 If two or more persons jointly own a collections to the rights holders. [IPOPHL
copyright or any part thereof, neither of the Office Order 13-173 s.2013]
owners shall be entitled to grant licenses 6. Limitations on Copyright
without the prior written consent of the Fair Use
other owner or owners. [Sec. 180.3, RA DOCTRINE OF FAIR USE
8293] The fair use of copyrighted work for criticism,
Submitted Work news reporting, teaching (including multiple
General Rule: The submission of a literary, copies for classroom use), research and similar
photographic or artistic work to a newspaper, purposes is not an infringement of copyright.
magazine or periodical for publication shall [Sec. 185.1, RA 8293]
constitute only a license to make a single A privilege, in persons other than the owner of
publication. the copyright, to use the copyrighted material
Exception: Unless a greater right is expressly in a reasonable manner without his consent,
granted. [Sec. 180.3, RA 8293] notwithstanding the monopoly granted to the
Collective owner by the copyright. It is meant to balance
Management the monopolies enjoyed by the copyright owner
Organizations (CMO) with the interests of the public and of society.
CMOs are entities composed of artists, writers, Decompilation
composers and other creators, or Refers to the reproduction of the code and
copyright/related rights holders that manage translation of the forms of the computer
the bundle of copyrights that their members program to achieve the inter-operability of an
own by providing the legal platform to efficiently independently created computer program with
enforce their intellectual property rights. other programs. This may also constitute fair
use. [Sec. 185.1, RA 8293]
Factors to consider in determining FairUse
a. The purpose and character of the use,
including whether such use is of a
commercial nature or is for non-profit
educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the
portion used in relation to the copyrighted
work as a whole; and
d. The effect of the use upon the potential
market for or value of the copyrightedwork
[Sec. 185.1, RA 8293; Harper & Row v.
Nation Enterprise, 471 US 539, (1985)]
The fact that a work is unpublished shall not by
itself bar a finding of fair use if such finding is
made upon consideration of all the above
factors. [Sec. 185.2, RA 8293]
Commercial use of the copyrighted work can
be weighed against fair use. [ABS–CBN Corp.
vs. Gozon, G.R. No. 195956 (2015)]
Parody, like other comment and criticism, may
claim fair use. The more transformative the
new work, the less will be the significance of
other factors, like commercialism. The heart of
any parodist's claim to quote from existing
material is the use of some elements of a prior
author's composition to create a new one that,
at least in part, comments on that author's
work. [Campbell v. Acuff-Rose Music Inc., 510
U.S. 569 (1994)]
Limitations
on
Protection
of
Neighboring Rights
Sections 203, 208 and 209 shall not apply
where the acts referred to in those Sections are
related to:
1. The use by a natural person exclusively for
his own personal purposes;
2. Using short excerpts for reporting current
events;
3. Use solely for the purpose of teaching or
for scientific research; and
4. Fair use of the broadcast subject to certain
conditions. [Sec. 212, RA 8293]
The term of protection subsequent to the death
c. Term of Protection of the author shall run from the date of his
death or of publication, but such terms shall
always be deemed to begin on the first day of
January of the year following the event which
gave rise to them. [Sec. 214, RA 8293]
 time when copyright subsists in a work has in
his possession an article which he known, or
ought to know, to be an infringing copy of the
work for the purpose of:
a. Selling, letting for hire, or by way of trade
offering or exposing for sale, or hire, the
article
Joint Authorship
Lifetime of the last
surviving author and
for 50 years after his
death [Sec. 213.2,
RA 8293]
Anonymous
or
Pseudonymous
Works
50 years from date of
first lawful publication
[Sec. 213.3, RA
8293]
Applied Art
25 years from date of
making [Sec. 213.4,
RA 8293]
Published
Photographic Works
50
years
from
publication
[Sec.
213.5, RA 8293]
Unpublished
Photographic Works
50 years from the
making [Sec. 213.5,
RA 8293]
Published
7. Copyright Infringement Audio
Infringement of Copyright visual Works
The IP Code was amended to expand 50
infringement not only to cover direct years
infringement from
but also publication
third party [Sec.
infringement. 213.6, RA 8293]
A person infringes a right protected under this Unpublished Audio
Act when one: visual Works
a. Directly commits an infringement; 50 years from the
b. Benefits from the infringing activity of making [Sec. 213.6,
another person who commits an RA 8293]U.P. LAW BOC
infringement if the person benefiting: INTELLECTUAL PROPERTY LAW
i. Has been given notice of the COMMERCIAL LAW
infringing activity; and Page 371 of 450
ii. Has the right and ability to control b. Distributing the article for purpose of trade,
the activities of the other person; or for any other purpose to an extent that
c. With knowledge of infringing activity, will prejudice the rights of the copyright
induces, causes or materially contributes owner in the work; or
to the infringing conduct of another. [Sec. c. Trade exhibit of the article in public. [Sec.
216, RA 8293 as amended by RA 10372] 217.3, RA 8293]
It also includes the act of any person who at the What Constitutes Infringement
Infringement consists in the doing by any extent is justified by the purpose, (3) source
person, without the consent of the owner of the and name of the author, appearing on
copyright, of anything the sole right to do which work, must be mentioned; [Sec. 184.1(b),
is conferred by statute on the owner of the RA 8293]
copyright. c. Reproduction or communication to the
It can cover a whole range of acts from public by mass media of articles oncurrent
copying, assembling, packaging to marketing, political, social, economic, scientific or
including the mere offering for sale of religious topic, lectures, addresses and
counterfeit goods. [Habana et al vs. Robles et other works, delivered in public: (1) for
al., G.R. No. 131522 (1999)] information purposes, (2) not expressly
Copyright infringement is thus committed by reserved, and (3) source is already
any person who shall use original literary or indicated; [Sec. 184.1(c), RA 8293]
artistic works, or derivative works, without the d. Reproduction and communication to the
copyright owner’s consent in such a manner as public of literary, scientific or artistic works
to violate the foregoing copy and economic as part of reports of current events by
rights. means of photography, cinematography or
xxx broadcasting to the extent necessary for
For a claim of copyright to prevail, the the purpose; [Sec. 184.1(d), RA 8293]
evidence on record must demonstrate: (1) e. Inclusion of a work in a publication,
ownership of a validly copyrighted material by broadcast or other communication to theU.P. LAW BOC
the complainant; and (2) infringement of the INTELLECTUAL PROPERTY LAW
copyright by the respondent. COMMERCIAL LAW
xxx Page 372 of 450
[W]hat was copyrighted were their public, sound recording or film if made by
sketches/drawings only, and not the actual way of illustration for teaching purposes
hatch doors themselves. To constitute compatible with fair use and the source and
infringement, the usurper must have copied or the name of the author appearing on work,
appropriated the original work of an author or must be mentioned; [Sec. 184.1(e), RA
copyright proprietor, absent copying, there can 8293]
be no infringement of copyright. Absent f. Recording made in schools, universities, or
originality and copyrightability as elements of a educational institutions of a work included
valid copyright ownership, no infringement can in a broadcast for the use of schools,
subsist. [Olaño v. Lim Eng Co, G.R. 195835 universities or educational institutions.
(2016)] Such recording must be deleted within a
Substantial Reproduction reasonable period; such recording maynot
It is not necessarily required that the entire be made from audio-visual works which are
copyrighted work, or even a large portion of it, part of the general cinema, repertoire of
be copied. If so much is taken that the value of feature films except of brief excerpts of the
the original work is substantially diminished, work; [Sec. 184.1(f), RA 8293]
there is an infringement of copyright and to an g. Making of ephemeral recordings; (1) by a
injurious extent, the work is appropriated. broadcasting organization, (2) by meansof
In cases of infringement, copying alone is not its work or facilities, (3) for use in its own
what is prohibited. The copying must produce broadcast; [Sec. 184.1(g), RA 8293]
an “injurious effect.” [Habana et al vs. Robles h. Use made of a work by or under the
et al., G.R. No. 131522 (1999)] direction or control of the government for
Knowledge not an Element of Infringement public interest compatible with fair use;
Knowledge of infringement is material only [Sec. 184.1(h), RA 8293]
when a person is charged of aiding and i. Public performance or the communication
abetting a copyright infringement. The liability to the public of a work in a place where no
for copyright infringement is in the nature of admission fee is charged by a club on
strict liability. It does not require mens rea or institution for charitable or educational
culpa. [ABS–CBN Corp vs. Gozon, G.R. No. purpose only and the aim is not profit
195956 (2015)] making; [Sec. 184.1(i), RA 8293]
The following shall NOT constitute j. Public display of the original or a copy of
infringement of copyright: the work not made by means of a film,
a. Recitation or performance of a work once it slide, television, image or otherwise on
has been made accessible to the public if screen or by means of any other device or
(1) privately done AND free of charge OR process either the work has been
(2) strictly for a charitable or religious published, sold, given away, or transferred
institution; [Sec. 184.1(a), RA 8293] to another person by the author or his
b. Making of quotations from a published successor in title; [Sec. 184.1(j), RA 8293]
work: (1) compatible with fair use, (2) k. Use made of a work for the purpose of any
judicial proceedings or for the giving of lost, destroyed or rendered unusable and
professional advice by a legal practitioner. copies are not available with the publisher.
[Sec. 184.1(k), RA 8293] [Sec. 188.1, RA 8293]
l. The reproduction or distribution of It shall not be permissible to produce a volume
published articles or materials in a of a work published in several volumes or to
specialized format exclusively for the use produce missing tomes or pages ofmagazines
of the blind, visually- and reading-impaired or similar works, unless the volume, tome or
persons: Provided, That such copies and part is out of stock:
distribution shall be made on a nonprofit  Provided, That every library which, by
basis and shall indicate the copyright law, is entitled to receive copies of a
owner and the date of the original printed work, shall be entitled, when
publication. [Sec. 184.1(l), RA 8293 as special reasons so require, to
amended by RA 10372] reproduce a copy of a published work
Reproduction of Published Work which is considered necessary for the
General Rule: The private reproduction of a collection of the library but which is out
published work in a single copy, where the of stock. [Sec. 188.2, RA 8293]
reproduction is made by a natural person Reproduction of Computer Program
exclusively for research and private study, shall The reproduction in one back-up copy or
be permitted, without the authorization of the adaptation of a computer program shall be
owner of copyright in the work. [Sec. 187.1, RA permitted, without the authorization of the
8293] author of, or other owner of copyright in, a
Exceptions: Such permission shall not extend computer program, by the lawful owner of that
to: computer program: Provided, That the copy or
a. A work of architecture in the form of adaptation is necessary for:
building or other construction; a. The use of the computer program in
b. An entire book, or a substantial part conjunction with a computer for the
thereof, or of a musical work in graphic purpose, and to the extent, for which the
form by reprographic means; computer program has been obtained; and
c. A compilation of data and other materials; b. Archival purposes, and, for the
d. A computer program except as provided in replacement of the lawfully owned copy of
Section 189; and the computer program in the event that the
e. Any work in cases where reproduction lawfully obtained copy of the computer
would unreasonably conflict with a normal program is lost, destroyed or rendered
exploitation of the work or would otherwise unusable. [Sec. 189.1, RA 8293]
unreasonably prejudice the legitimate Importation for Personal Purposes
interests of the author. [187.2, RA 8293] Sec. 190.2 of RA 8293 that limited the
Reprographic Reproduction by Libraries importation of books was repealed by RA
Any library or archive whose activities are not 10372. RA 10372 expressly limited the
for profit may, without the authorization of the prohibition to import or export only to
author of copyright owner, make a single copy counterfeit goods.
of the work by reprographic reproduction: Remedies
a. Where the work by reason of its fragile Remedies for Infringement
character or rarity cannot be lent to user in (1) An
its original form; injunction
b. Where the works are isolated articles restraining
contained in composite works or brief such
portions of other published works and the infringement; [Sec. 216.1(a)]
reproduction is necessary to supply them, (2) Actual damages, including legal costs and
when this is considered expedient, to other expenses, as he may have incurred
persons requesting their loan for purposes due to the infringement, as well as the
of research or study instead of lending the profits the infringer may have made due to
volumes or booklets which contain them; such infringement;
and  In proving profits: The plaintiff shall be
c. Where the making of such a copy is in required to prove sales only, and the
order to preserve and, if necessary in the defendant shall be required to prove
event that it is lost, destroyed or rendered every element of cost which he claims
unusable, replace a copy, or to replace, in [Sec. 216.1(b)]
the permanent collection of another similar (3) Such damages which to the court shall
library or archive, a copy which has beenU.P. LAW BOC appear to be just and shall not be regarded
INTELLECTUAL PROPERTY LAW as penalty, in lieu of actual damages and
COMMERCIAL LAW profits; [Sec. 216.1(b)]
Page 373 of 450 (4) Impounding during the pendency of the
action, upon such terms and conditions as b. Distribute, import for
the court may prescribe, sales invoices and distribution, broadcast, or
other documents evidencing sales, all communicate to the public
articles and their packaging alleged to works or copies of works
infringe a copyright and implements for without authority, knowing that
making them; [Sec. 216.1(c)] electronic rights management
(5) Deliver under oath for destruction without information has been removed
any compensation all infringing copies or or altered without authority.
devices, as well as all plates, molds, or [Sec. 216.1(b)]
other means for making such infringing However, no damages may be recovered
copies as the court may order; [Sec. under this Act after the lapse of four (4) years
216.1(d)] from the time the cause of action arose. [Sec.
(6) Such other terms and conditions, including 226, RA 8293]
the payment of moral and exemplary Criminal penalties
damages, which the court may deem Criminal Penalties for Infringement
proper, wise and equitable and the Any person infringing any right secured by
destruction of infringing copies of the work provisions of Part IV of this Act or aiding or
even in the event of acquittal in a criminal abetting such infringement shall be guilty of a
case; [Sec. 216.1(e)] crime punishable by:
(7) Criminal liability. (a) Imprisonment of one (1) year to three (3)
The copyright owner may elect, at any time years plus a fine ranging from Fifty
before final judgment is rendered, to recover thousand pesos (P50,000) to One hundred
instead of actual damages and profits, an fifty thousand pesos (P150,000) for the first
award of statutory damages for all offense.
infringements involved in an action in a sum (b) Imprisonment of three (3) years and one (1)
equivalent to the filing fee of the infringement day to six (6) years plus a fine ranging from
action but not less than Php50,000.00. In One hundred fifty thousand pesos
awarding statutory damages, the court may (P150,000) to Five hundred thousand
consider the following factors: pesos (P500,000) for the second offense.
(1) The nature and purpose of the infringing (c) Imprisonment of six (6) years and one (1)
act; day to nine (9) years plus a fine ranging
(2) The flagrancy of the infringement; from Five hundred thousand pesos
(3) Whether the defendant acted in bad faith; (P500,000) to One million five hundred
(4) The need for deterrence; thousand pesos (P1,500,000) for the third
(5) Any loss that the plaintiff has suffered or is and subsequent offenses.
likely to suffer by reason of the (d) In all cases, subsidiary imprisonment in
infringement; andU.P. LAW BOC cases of insolvency. [Sec. 217.1, RA 8293
INTELLECTUAL PROPERTY LAW as amended by RA 10372]
COMMERCIAL LAW Determination of Penalty
Page 374 of 450 In determining the number of years of
(6) Any benefit shown to have accrued to the imprisonment and the amount of fine, thecourt
defendant by reason of the infringement. shall consider:
In case the infringer was not aware and had no 1. The value of the infringing materials that
reason to believe that his acts constitute an the defendant has produced or
infringement of copyright, the court in its manufactured; and
discretion may reduce the award of statutory 2. The damage that the copyright owner has
damages to a sum of not more than Ten suffered by reason of the infringement.
thousand pesos (Php10,000.00). [Sec. 216.1] [Sec. 217.2, RA 8293 as amended by RA
Note: The amount of damages to be awarded 10372]
shall be doubled against any person who: The respective maximum penalty stated in
i. Section 217.1 for the first, second, third and
Circumvents effective technological subsequent offense, shall be imposed when
measures; or the infringement is committed by:
ii. (a) The circumvention of effective
Having reasonable grounds to know technological measures;
that it will induce, enable, facilitate or (b) The removal or alteration of any electronic
conceal the infringement: rights management information from a
a. Remove or alter any electronic copy of a work, sound recording, or fixation
rights management information of a performance, by a person, knowingly
from a copy of a work, sound and without authority; or
recording, or fixation of a (c) The distribution, importation for
performance; or distribution, broadcast, or communication
to the public of works or copies of works,
by a person without authority, knowingthat
electronic rights management information
has been removed or altered without
authority. [Sec. 217.2, RA 8293 as
amended by RA 10372]
Certificate of Registration and Deposit
The issuance of the certificates of registration
and deposit as provided by Sec. 2, Rule 7 of
the Copyright Safeguards and Regulations, are
purely for recording the date of registration and
deposit of the work, and are not conclusive asU.P. LAW BOC
INTELLECTUAL PROPERTY LAW
COMMERCIAL LAW
Page 375 of 450
to copyright ownership (nor does it determine
the time when copyright vests). [Manly
Sportswear v. Dadodette Enterprises, G.R. No.
165306 (2005)]
Purpose of Registration and Deposit:
Completing the records of the National Library
and the Supreme Court Library; provided, that
only works in the field of law shall be deposited
with the Supreme Court Library. [Sec. 191, RA
8293 as amended by RA 10372]
The National Library has deputized the
IPOPHL to receive deposited works in its
behalf.