Ban Beda College of nwo MEMORY AID IN COMMERCIALLAW |} INTELLECTUAL PROPERTY CODE REPUBLIC ACT 829 Purpose: : To avengthen the intellectual and Industrial property system in tha Pallippines a2 mandated by the country's accension to tha Aprecmnont Estubtehing the Worle Trae Organization WTO) (Mipuri vs. CA, GR No, 114808, November 18, 1999) RENT 4. Patent Law (HA 165); 2., Trademark Law (Ra 166); 3. Copyright Law (PO 48); and 4, Aticles 188 8. 189 of the RPG Thase proparty rights which resul fron) the physical manustation of -origiwal thought (Ballantine's Law Dictionary). Note: There ore HO property sights protested by law in mere idee: ot, mental conceptions. When creations of minc. are put in tangible form, there is appropriate subject of property that Is protucted by law (634 Am Jie 3d; Property, Suction 5}, , INTELLECTUAL SROPERTY RIGHTS | (CoRa-PIMP-LG: Sopytight Related righis or neighboring rights of ‘copyright; Betants; 9g Mark: i yu dt9e Geographic ications; Industrial dastgris Layout desis, (lopagraphles) of integrated reas; 6, Protection of Undlclosed information (See, 4). 2 2 4 8 6. Exe COMMITTEE ‘COPYRIGHT Confined to leery or'attstio works wiiich are originas creatiens in the literary or artiste domal protected from the moment of thelr creation. PATENTABLE INVENTIONS Any technical solution of @ pioblem in arly fli ef human activity which Is new, Involves an Invent! stup and 1s hndusbialy apateable (Section 24, ro, TRADEMARK Any visible sgn capable of distinguishing the goods er services of an enterprise an still Include a stamped oF marked containar nf goosts (Section 121.1, IPC, and Elldad Kho ¥. Couit of Apperis, SR No, 116758, March 11, 2602), GEOGRAPHIC INDICATION One which identifies @ good as originating in te: territory of «TRIPS mombor, or @ rogion cr locality in that tortitory, where a given quot, reuan olen oe got gpeentan re hel oor 22, Wb lotus ASPOLIGe Intoveytea i) RONG SUO het). Me AN oe a te MOREA Interconnections of an integrated circuit, or such HENDERT CALVIN ADLCYA aera chal an chal cadens operas, MANCIO ADEL SANTOS ch hotel aprons, GRACE SARAM TRA itt (hal fr eparaton, JUAN CARLOS HUESTRO vaca aexshme, MAE ANGELL ETANG vk Cs or acrtari,KRSTINE ANMAREGLE FOS \enha for finenen, IREEME HINA ACOSTA Vi cal fe 0p, AEJELLO CONCEPCION ver ch le ght ‘consent: PATHISKSAINCETO sie tele MA KATRINA NICOLE CONTACTO asstn. sujet chm, JAN MANUFLLE REVS ep, JAY MASANGKA ne on Inelcta’ propery, MH TORIKNO spac laws, JOYFUL RAMON baelng ius, DIOXENOS SUNT cde a commer, NINA FURUNG necetaie Instruments, :ADE KAARQUEZ Insane nwa, SEM BULNSUCESOtarspevtnon laws, MARICOR PARIOG corpraion ws ensenss ‘Canty Sana ohn seenbapn i Sanco, Kes Chu, Mak Maan, Any Me vc, Sueto, Amy cand, Mostay ig, ey ‘fone, Ages Poder, Ash Bele. Arle Dons, 408 Mandath, Shen Strano, Agr Mure, Ramla Aut, Geren Pangivn, Roda Bs, Shar Jane Catpa Tesat agus, Ctl ah Oe Tres, than’ Nervoe, Me St, As2.12009 CerTRALIZED BAR OPERATIONS fivoe-dineraienot 4 fees 1 Integrated circult intended for manufacture (Sec. 1129}, RA. No, 8298, as amended) Note: For @ layout-design to be entitled to praicedsn rust berongsal In the seuve AMoug cleviuis OF layautUeEgiiD YH yii iy ‘and manufacturers of integrated circuits at the titae of their eroation, TECHNOLOGY TRANSFER ARRANGEMENTS Contracta or agreements involving the transfer of eystamatic knowledge for the manufacture of a product, the application of u process, or rendering of & servico Including management contracts; and the transfer, assignment oF licensing of all forms cf Intellectual property rights, Incivcing licensing ‘of computer software except coniputer software deveioped for mass mark3t (See. 4.2, IPC), UNDISCLOSED INFORMATION + nfo tian which; 4. Is u secretin the vonse that it ia not as a body or In the precise configuration and assombly of components, goneraly know, ‘among or roauily accessible to persons ‘within tne clriaa that normaly deal with the kind of Information in question; 2, han coramercial valve because It is secret; ‘end 3. has bseni subject to raasonable steps under tbe ecumstanices. by the person tewtully in contol of tne Information, (9 keep it secrel (let 9, TRIPS Agrecmentt esr mio eV beysove, nmueD ro THe anette OF an Beds Cattege of Bary In tre Philippines is suing as a perty of a veaty (o \which the Phillippines is a signctory, the fact that it is sving under Sec 3, RA 6203 need not be alleged anymore end the cout may take judiciat natieg of such fact an it ls embodied in and requirements of the aw (Puma Sportsanvabrixen Rudolf DasslenK.G. vs. JAC, GR 76067, Fat. 26, 1988), + ig anolner casa, Leviton industries, Inc. vs. Salvador, (GR No. 40163, June 19, 1982), the Cout he'd that failure to. allege reclpraclty Is fatal to forelgn corpdration's cause it Belny shown that it falad fo comply vwth the roquiremants of the law. PRINCIPI.E OF REVERSE RECIPROCITY Any condition, restriction, mitation, airinition, requirement, pensily or any similar burden imposed by the law of a foreign countly an a Philippine national seeking protection of Intallectuat oroperty rights In that country, shall reciprocally be enforceable upon nationals of said country within Pallppine jurisdiction (Soe, 291, PO. NATIONAL TREATMENT PRINCIPLE The Phillppines, upon becoming a member of the WTO, nas adhered to the Trade-Related Aspects of sntellectua’ Property Rights (TRIPS), which provides that protestion afforded to the member slate (with respect to lntellectua propery) must be extended to the nationals of other mon states. MCST-FAVORED NATION PRINCIPLE eee le grants tne Aifionals Js ROAM natcoang te2B Galego a 8, APPELLATE 1 Patent | Patten to ancel an lnvention, patent, lity | Tradamark raodel eogistration, Industrial asign cngiaratlon, oF ary | Action jam, | Inkingement 2.Fetltion for - compulscty Car elation of patent, utlity models, and industrial designs; Pet ans for compulsory licensing; Adtanistrative complaints for viola ion of fawe inveivirg Intellectual propiny cights where le total Garages claimed are not less than P200, 000, The Director of Lega Aflalia has the power te punish teentemnpl (Soe. 10, Ibid) 3, Dovumentation, Information and Technology Transfer Bureau Over disputes involving technology tranefer payments (See. 11.0), 4 Regular Courts (Soe. 225) URISDICTION ‘iveetor Ganoral ‘Ovar al declalen rendered by the: fh. Director of Legal fairs; b. Director of Patents; ©. Director af Trademarks; and d. Oirsclor of the Documentation, Infér-naton and Techrology Transfer (Sox 7,116). 2, Court of Appoals ‘Over deaielons ef tho Director Ganoral In the exciels9 of Nis oppeliate jurisdiction ‘ver the decibions of the 8, Dieetor of Legal Atars, D. Director of Patents, ©. Direntor of Trademarks (Soo, 7.4/0). 3, Becrotary of Trede and Industry a. Ove" -dacisions of the Director Geral in the exercise of his appoliate "jurisdiction, over the decisions of the Director of the Dovsimentation,’ Information and ‘Jachnology Tranis‘er (Sec. 7.110). b. Over dacisions of the Director Geroral In the axercise of his original Jurisdiction relating to terms of license fave-ving the author's right to public performance or other cotarrunicullon oF his work (See. 7. tle). eS SNe oro lleense Acris ae PRUETT VS MAN ELIE LL PTL Po cianno Unga lary wy Ce CLS SP MEMORY AID IN COMMERCIAL LAW! 3 Btradomark” Ggoselon agaieat the | Aation. fer unfair fegistintion of a math | competion published lor oppasiion, | > Peition (> cancel, the, PRINCIPLES 1 ‘Copyright is that system of legal protection fan suthor enjoys of the form of oxpresslon Of ideas (intatoctuel Proparly Low, Commants and Annotetions, Aquino, 2003). Rolator to artiete creations, such as book?, music, paintings, and sculptures, flmo ac fechnotegy-based. works as wall-as to the nin act which, in reapect of Kterary ant artistic creations, may be ‘ade only by the ‘author er his euthonzation (Understanding Copyright ond Related Rights, World Intellectual Property igantzation). ‘Works are protected by the sole fact of thelr creation, respective of thelr mede or form fof expression, a8 well ap their contort qually or purpose (Se. 172.2). Copyright If nol a right to do anything but to.slop others from doing something: k Ip therafore a negative: right (Sony? Undor the Intolloctual Property Goda, ‘Amador, V.. 199804). Pratonion extonds only to the exprussion of the Idea, not to, the idem Itsolf of 10 my piv 1 oparatiat, condal dal put 19 and an in the4 [2009 CENTRALIZED BA OPERATIONS PRIMARY PURPOSE CF COPYRIGHT Not to roward th: laber of authors, bit to aremote ths progress of science and useful atts (Copyright Undir tho intatoctual Property Cece, Ibi. REGUISITES FOR THE’ CREATION OF A COPYRIGHTABLE WORK 1, ORIGINALITY + It dosa not mean novelty or ingenuty: neltner unigueness nor creatty. tt simply’ meunu that the work "owas ts rigin to tne author.” Constituonts of originality: 8, Thg work 1 an independent creation of the author: "must NOT be coplag: and must Invnive some iteectuat tort 2. EXPRESSION + There must be “fixation”, To be fied", & work «ust be embodied ina mediun suificently permanent or stable to permit Ito be perceved, reproducsd, or olt.erwlse communteaied for # period of more than transitory duration. © Stety speaking, there Is no work for copyright purpose, unless there is something tangible. Is fixation that defines the thre trom when copyright subsists. Before the tine of fixation there can be no infiing2ment Single Croator Work consi UNIDENTIFIABLE por Foauthes jinly a8 co- Swnars, unleey hares fgreement tothe cor Jolot orator -eetemarttothe cian, IDENTIFIABLE pers: auihor ef each part one the pert “thet ho hos ferent | if tha orton PART ot nie uiar cules employer, unless ee Is | agreement tc Employee's Creation —— [litle OT. ene sywe Work got persos tera Commisstoned Work | Conyrignt erectar, naa there isa yiton Forel ltr purpowos producer, eulhor of the Scenarie, composer, fire ‘lnematograpihle Works San Bedn Collee of Lary were Fobkaken a6 daeriad representalve of the aur, nies he contrary appears peoudongm Gr Siopted same feaves no doubt a8 19 | the author's Identity; | oF author “slecloses |__ tie denty, | Caer ede tage ave waived his nah, Collasive Works | thleas he axprusely | toners 1 (Se. 198 | wer | Howaver, the court inay Authors their aubcaton | or dusemaion I ine pubic good or thw eat ‘of justice so requires | 1 a725, Now Civil Caay). | DURATION OF COPYRIGHT Anonyme an | noudunjmov works Lettere (S80, 213) ARETE TENTS SR iigtine of the croutor and Single Creation’ — | for 60 years after hie | death Titoumie” at The surviving coverealor and | for £0" years after tis | oa Joint Creation ie dais | ther fret pubtication, ‘xcept viners, belore the exokation of bald pesto, the authors iganty is Fovedled oF kno longer in | doubt, the 1" two Anonyinous ora peeudonymous work rmoctioned cues shal! apply, or if uepudishoa. | f froin Whew |fan Not from th the death or ofl fi Elemoais ‘oman unless directo willbe natural be ie [ee erat ‘Work crea ‘i "or Meant eat | Work pnspared by 2 or the undoretancing a it Inter under re own hate nnd. that contibu'kinn of Each a. couyright to hin” own | owners, ‘contribution. i Hieos So icy ot Low = he, torn: of protection shall ba counted he 1" day of January of the yea folowing ublicatlon (Seo, 274). ST TE Seperate elements merge ated 204 | inion uniod whoia ‘and under oF ether itt | more. ‘authove with the Intention. that thee contitvtons ‘be. merged ite ieevarab or interdependent peta of oraone wl HOT | &8 Ustary whe, wad alrcloned: ay tha szhor Fall ‘enjoy |Jolnt suthore. ehall be co Ce-ownership ane, Unless wal b expressly _reeerveu' his | 4° right, i is the putative | Sitlled bow author to whom tha work tre CUPUCE T Joint autho.s eral! be tobe Bcknowledged as authors ‘a tha work rout ————— WORKS PROTECTED: AO} 8 RIGINAL WORKS (D0*P?-CL’AIM-D'W) . Books, pamphiots, articles and other wltings Pariodiee!s end riewspapern Note. A pura news raport-no longer finds protection under tne new faw, BUT a cclumr or published comment wil, “When newszapors. and parioaicals Include works enjoying Independent copyrights, the works so inclucled continue enjoying the rights {or duration proper to them, Leoturns, "sermons, addresses, disserietions prepared for oral delivery, whather er mot récuoad in writing or other matorial arm falters Dramatic or _—_—_dramatico-mmusical sompositisns, choreagraphic werks or contetiainment in dumb shows oiypesitions, with ar without Works of crewing, painting, architecture, ‘sculpture, engraving, tthograpty or other works of ar: modwls er designs for works otart Driginal oinamental designs or models for articles of manufacture, vinether or not reg'sirable us an industal design, ard other works of applied an; ustrations,, maps, plans,’ sketches, charts ond thyae 'eimensional works rolativo 19° geography, topography, architecture or sclene MEMORY AID IN COMMERCIAL LAW) 8 7 10: Brawngs of plastic works of a cents br technical character, 11, Botographie works! Including works produced by a process analogous to photography lantern sidas; 12, Eudioviual works ard cinematograplile, ‘Woks and works produced by a procese analogous Jo clnematogrephy or any procots for’ “making auidiovisual fecordngs; 413, Betorisitusiraions and adversemur tn: +4 Gompuler programs; and 18. Othar iterary, echolarly, sclontite and ‘rtistie works (S00, 179). DERIVATIVE WORKS 4. Drainalzatione, transitions, adaplations, abridgnunts, drrangemants, and. othor altoratons of llerory or artiste works; ard 2. Collections of terary, scholarly or artiste works, and complains of ‘data and ‘thor materials which ere oiiginal by ‘teason of the selection or cocrdinatlon oF arangervent of their centenis (See 173), . Note: Derivative works shall bo protacted ac new works. Provided hewever, that «uch new works shall not = i affect the force of any subsisting copyright upon the’ original works employed oy any part thereat ibe censtrued fo imply eny right to such use of the original works, or to secure oF extend copyright In such orignal work (S20. 173.2) WORKS NOT PROTECTED: (PIN-DOO) 4, Idea, procedure, system, method or operation, concept,_ principle, discavery of Imposed prior t agoncy of office(_6 [009 CENTRALIZED BANOPERATIONS wherein the work le created shall be necessary for ‘exploitation of such work for profit, Such agency or ofa may, among other things, Impose as a cor:dition tha payment of royalties. Excoption: No prior apnroval or conditions shall be required fer the use of any purpose of statutes, rules ond regulations, and spagciss, lectures, sormons, ‘addresses, and dissertations, pronounced, read for rendeied in courts of justics, before adrinistatve —egences, in deliberative assemblios and In meclings of pubic character (Sev. 176), 5, Blandings; 8, Bclolona of coustr ond telbunets. They may therefore ba freely used or quoted. Note: This partans to the ‘orgival dec'sions" not the SCRA published volumes since these are protected under dorivallve works under S20, 173.1 (0) RIGHTS CONFERRED BY COPYRIGHT (CMO) 4. Coperight ot Econamic rights (See. 177): 2, Moral rights (Soo, 193); and 3. Right to participate in the gross proceeds of the sale or inage of the original work or droit a sulte (S00. 200) A Copyright or Economic Rights Exclusive right to (@) gary out, (b) guthorizo er (€) prevent the foliovang acts (Cary: “1. Roprodustion ct the work or substantial partion ole works 2. Crometizatlor, translation, ‘adaptation, absidgment, urrangement ‘or olhertransformetion ofthe work, 3, Flesc public distibution of the orginat ‘and each copy of the viork; 4, nial of sha original or a copy of an, ‘audiovisual or cinematographic wer 5, Puble display of the criginal or @ copy of he work 6, Publle performance cf the work; and 7. Other communication te the pubic of the wore (See. 172) 8, Absignmant of the copyright and! ut "tho materiel object in wale orn part Note: Economia rights allowe the owner ta derive financial reward from the use ai hie worke by athers WIPO, Undorstencing Copyright and Related Rights, p 2), San Beds College of unto A. Moral Rights 4. Right of Paternity ~ To require thet the authorship of the worke be attributed to him, ina prominent way ‘on the copies, ard with the public use ofthe work; 2. To meke any alterations of his works prior 1, of to withhold it from publication 3, Right of integrity ~ To object to any ictericn, mutilation or other modification of, or other derogatory ation In relation tc, hls work which ‘would be prejudicial to his honor or reputation’ and 4, To restrain the a0 of his name with Faspect to any work not of his awn ateation or In a dletorted version of bis work (See. 193), a, These rights are_distinet from economic rights and remain with the author ever after he has fansterred or assigned to ‘ailother “other rights of copyright” (WPO, 215). ¢. Moral rights’ allow the author to lake certain actions to preserve the personal link between himself ‘ani the work (WIPO, Understanding Copyright and Related Rights, p.9). © Torm/Duration Lifetime of the author and 60 years after his deat, And is NOT. ‘assignable or subject to license (Sec. 198). ‘+ Those rights may be waived by: nent (See. colectivegen Bans Lollegg gt aly 2 Workn HOT covsrad: Prints; : Etet ings: Engravings; Werks pf rpplind at; and Similar wares wherein tie wuthor prtsarly derives go's trom the proceeds of reproductions (Sec: 207,. TRANSFER OR ASSIGNMENT OF COPYRIGHT The transior or assigrment of the copyright shall ot Itself constitute a transfer of the niatortal object, A transfer o- assignnisnt of the copyright of the sole vopy of ef one or sevarul copies of the work ehall not Imp y transfor or aselgnment of copyright (S90 181), FIRST SALE DOCTRIN Alter the rirat eale of the lawhily. made copy of the copyilghted work, anyone who Is the owner of that copy can sell 0° dispose ot thal copy In any way without ani lability fer copyright Intingument, The first sate cf an authorized copy ff the work exhausts the author's right to control distribution of copies Limiiavions 70 THE RIGHTS OF COPYRIGHT ' (GF-PARRY) 1. General imitans (Soe, 1845; 2. Beir use (See, 499); 3, In the case of « Work of gretitecturs, the right to centol tre reconstruction or rahabitation in the samo syle a8 the orginal of the bulldng (Soo. 166): 4, Privata reproduction af published work ba a ingle copy by'a natural person for reseaich ane private stud) (S0c. 167)" |b. Reprographie rearoduction ina sinnia copy ty nonprott Herles, under’ certain circumstances “Sav. 188); 8. Keprouuction, under dertaln clrcumstances, oF 2 computer preaam In one back-up copy by the lawful owe of thy program (Soc, 16%): 7. mpottaion for persunal purpuses under ‘ceitain conditior s (Sea. 192), GENERAL LIMITATIONS (R‘QP*LMU") ‘Acts that do not itcinge copyright: 1. Rootulion of puvtormance ef a work: () riade ‘accosalble tothe publi, (i) privately dane, (i) free of chargo, (Wv) stialy for @ charable or religious inettiton; 2, Making of quotations from a pubiched work: () compaille vith falr use, fl) tort Is justified by the purpose, il) source and name Of the euhor, appaaring on work, must be mertioned; MEMOAY AID IN COMMERCIAL LAW| 7 Reproduction or communication to the public by mass mada of articles on current politcal, social, economlo, sclentife ot religious toplo, lectures, adresses and other work dolivered ia publle: (I) for Informatio purposes, (I) Not expressly reserved, and (il) source js already indicated; Reproavetion Public of teraty, sclentifc or artistic works aa part of reports of cutrent everits by moans of photography, cinematography or brosdonating to the extent necessary for tha purpose; Jnelualon of work In a publication, broadeast fr other communccatfon to the public, sound recording oF sim If made by way of iluatratlon {or teaching purposes compatible with falr use fang the source and the name of the author appearing onwork, must be mentioned: Recording mace in schools, universities, of educations! inatitutione of a work Included In m broadcast for the use of schools, universities fof educational, institutions, Such recording must be deleted with in a reasonable period; such recording may not be made from auel visual Works which are part of the generat Cinema, repertolre of feature fms except of brief excerpts of the work; ‘Making of aphemeral recordings, () by 2 * Eroadeasting organization, (i) by means of its work of fadlitins, (Hi) for use In its oom broadcast; 1. Use made of a work by or under the direction €F control af the goveinntent for public interest compatbte with fai us Public performance or the communication to the publ of a work Ina place where oo admission {20 La charged by a club on insttation for charitable or _educallonai purpose only and the aim fs not prof-making;, nal or a copy of tha Kofaa. fim, clita, Phscoen cs by if8 12409 CENTRALIZED BAN OPERATIONS > Examples 4. Criicking, commenting, ané news reporting; bo Using for Insinsctional purposes, including producing multiple copies for classroom use, for "scholarship, research and similar purposes ©. Besompilation = tne reprocuction of {he code and translation of the forms fof the computer program to achieve the —inter-aprabiity ofan Independently created computer program with thar computar Programs (Sec. 185), Criteria to dotermino whether uso te falr or not: 4.” Purposa and the charactar of tha use; 2. Nature of the copyrighted work; 3, Amount:and substantiaity of the portions “used; 43 Effect of the use upon the potential market of the copyilghted work (Sea. 188), Note: Concept of fair use only applies to ‘copyiighted Werk arid NOT to non-copyrightable matertu, + Quotations from a published work If they are wompatble with fair use and only to the extent justiled by the purpcse, ineluaing quotations from newspaper articles, and Perlodicals in she form of press summeries fra allowed provided that the source and the name of the author, appearing on the work, fe mentioned (Habana v. RoDies, GR No, 191822, July 19, 1999). INFRINGEMENT OR PIRACY Any vilalion of the owner's oxclusive rights conferred by law (Pendect of Commercial ‘av ‘and Jurisprudence, Justize Josa Vitug, 2008ed). ‘+ AR approcriation of & copyrighted wark by another who Is not authorized (Black's Law Dictionary). +The doing by any person, without tha consent of the owner , Cefanidant J. Ohectintinger; of 4 Contributory Intinger (Sec, 247). oret bookstrre and magazine store that vends pirated cnpies'of a work is in fact Violating tha copyright owner's right to exchitively distribute his woik, Such store wold theretore. be. inringing. The printer who. thougn dating under instructions. from another, sete’ Isto motion. the legal reproduction of protected materiel would, in fact, be infringing copyiight, MEMORY AID IN COMMERCIALLAWL9 2. _Proseripiive Period 4 yeas ton Te time the: cause of action arose (Sau. 226) subjest tothe genoral rules of Proscsiion "of crimes. | Petition for | rone 7 [injunctive reot _4 Pailion for the [here Himpoundag and dostuctin of infinglng matorie RELATED RIGHTS OR NEIGHBORING RIGHTS, OF COPYRIGHT (Secs, 202-211) Rights akin to but differant from copyright, granted by the taw to = ‘Av Performers, who are: Natlovals of the Phillpinos 2. NOT hatwnal of te Bitppinos bat whasa performances: a, Take place in the Philppinus; 1, “Ate incorporated In sound recordings protected under the —Intelluctuel Property Code; and ©, Viich hae not been fixed In sound recording but are carried by brendeast qualifying for_ protection under the Code (Secs, 203-207), ‘Action for damages Crieninat action Eee 8. Producers of sound recordings (Socs. 208- 270) wher eke ‘Sound recordings the proclucers of which are nationais of the Philippines (Snction 223.1); 2 Sound recordings that wera first publahed . Philippines (Section| { | +20 12009 CENTRAUZED RAR OPERATIONS ©, Broadcasting orgentzations (Sec. 211) ‘Scope’ of Right: exclusive right to cany out, ‘authorize oF prevant any of the folowing acts: 4. Tho rebrandcasting of their broadcast 2. The recording in any manner including the makiog of films or the use 2f video stlape, of their Lroadcasts for the purpose ‘of communication to tre public of lalovision broadcasts of the same; aad The use of such records for fresh ‘transmissions or for tresh secording. Application of rights: 4. Broadcasts of briadcastl.g organizations the feadkuarters of which are situated in the Philippines; Broadcasts transnittad from trensmiters ‘iluated in tha P>lippines; 8." Broadcasia by organizations which are to he protected by vitue of anc in ‘acecidance with ‘any. Intemational convendon or other intemational ‘agreement to which the Philippines isa party (Section 224). ‘Tho fight granted to an Inventor by the State, or by. the regional office acting for severai States, ‘which’allows the invenior to exclude anyone alse from commerciatly expicling his icventio. for a limited period” (World Intellectual Proparty Organization, Undersiaading industrial Property, po). A patent Is'a statutory monopoly which protects against unlicensed use of the paterted device or Process ‘even by one wha ciscovers It Froperly ‘through independent research (60 .Ar1 Jur 2d, Patents, Section 6). PURPOSES 4. The patent law seeks'to fester and reward Invertlon; 2." It promolen disclosures of Inventions to atimulate furtner innovation and ‘0 permit the publle to practice the invention once the Patent expies; 3, Tha sirngent. requirements ior patent Protection seeks to ensure that kieas in the Publlo domain remain thera for the free use .9f the publle (Paw & Dean (Phit), inc. v. Shoomart, Lie, GR No. 148222, August 15, 2003}, PRINCIPLES: 4._- Tost of Non-Obviousnass ~ If any perion Possessing ordinary sill In the art was abie to draw tho inferences and the constructs Soa Bedy Caltege of Law that the supposed Inventor drew: trom prior at, then the fater did NOT really Lwvent. 2 Unity of Invention — The application shall felate 10 one Irvertisn only orto a group of inventions forming a single general Inventive step (Sao, 38.1), 3. Ar applicant may NOT fie 2 applications for the same subject, one for utlty ‘model registration’ and the other for the grant of & patent whelher simultaneously or successively (Parallel Appication, Sep. 111}. 4, Whatever right ene has to the invention covered by the patent arises alone from the ‘grant oF patent (Creser. Pracision Systems Vs. CA, GRNo. 118708, February 2, 1998). 5. Patents “or apniication for patents and Invention to which they relate, shalt be protected In the same way es the righta of ‘other property Lnder the Civil Code (Sec, 103.1). : person, by lndependnat ©“ resoareh eves al the samo Product or that Is already. Patented, he ig restrained by the an ofthe law fom expoithng such an Invention by reason af Sie patent granted the earler alscoveres i may be vested to Work cksely simian or ‘even Hontcal to an arler, or already pateniad work, provided that the former Is truly orignal Le, i owes is (existence tots orzater, COMTTANE « eed ‘Non-patentable inventions may be subject ofa copytah erences ihe Discoveries, eerie thoares ard y angireratica mato ‘Useful machine 2. Aprodut 5. Aprocnsa_ Bx Beda Coli geo nw Note: Incase of drugs. and medicines, non- patentable produids include the mero dlsccvery of 8 new form or ne\s property of a known substance Which dova net rocuit In the enhancamant of the Known effescy ef that suit stanea, a7 tha mera Uscovery of a now,property ar new use for Known substance or tha ciere use of the known process Unless such knova process results In a new prodiict that amp ys at leart one new reactant {Soe 5 RA 9607). i ‘ay vompootion 1 Hes ox hae ty ives Sivotaiona orn nate oF fat stood wih Hon or 1 See orev ha auch man of *prnethal utili” (ef | Sop tion or foc Foserev ch. GR in| SB86e1 Appenrance 12 en Tiben,"Srch” 13 | gan aac #9 ates 100 | [fonder (so 124) ‘Naw (Novel}= Thatwhich | 2, Industialy ddoos natform | | Appifeatio partofapeor | | fat (See. 73); 2 Invnalvo ~An fnvration Involves an Inwentive siep iheving ‘gard ‘0 prior ack ts not ‘obvieus to a person. skilled Inthe att the tine of the fitng dato of preety data of ho ‘appcaton aiming tha lnventica (Sec. 20), 8, Tedusiily ppalentable = ‘An'nvention thet can be produced und fated nany Industry S00, No inventive e aap step {ndusttlly sia Tysaretomina (5. Yan's rem Mesos ot ‘at of tha 4 cessoniia requisites 0 years or ho {si ste of the Seeeeeeeeeeet MEMORY AID IN-COMMERCIAL LAW] 11 Tar ticaiiony [potest ‘om Wey non-renewable | application, which renewable fr ‘not _ move then | 2 conseoutve periods of 5 | re (eH 1a ‘Sees, 112-120 Sova, 100-141 | and” cortaln ‘arid “provisions | provisions on | ‘on patonis | patents applying mutats | spplying mutend Sees, 20.107 REQUISITES OF PATENTABILITY (Soc. 24) 4. Technical Solution of a problem In any flotd of human activity, 2. New (Novelty) = an invention shall nat be considered new If It forme: part of w prior art 4 Prior Art (S00. 24) «= That which hos been made avallapia to tha _publle anywhere in the wodle BEFORE the fling date ck the priotly date of the application; General Rule: . That which forms part of an” application whether for patent, utlity meade! or induiswlal design, effective in the Philippines, provided that 1. the laventors or applicants ara not the sama 2. the content of. the applizalion ace published im accordanea. with the requirements of patent application rules; 3, tho fing date ofthe prior artis eater Ragionahsn wo Her Betcation ie0; oF ANN as nbnths precoding iTy 442 /2009 CENTRALIZED BAR OPERATIONS Involv an invontive Step Mavantivenoss) an lnventlon Involves Inventive step of, having ragerd to prior ert, tt Ig not obvlols lo @ person ekilied in the ert at the lime of the fling date oF. prlorty date of the application claltaing the Invention {(Sootion 27). 4, Industrlally Applicable ~ an invention that ‘ean be producad ano used In any Industry (Section 26). PERSONS WHO MAY FILE AN APPLICATION FOR A PATENT IN THE PHILIPPINES: CRM CR PLE Re ac i so a aver Sno i SOM BRUNT Cie a TO foie Yoana en ., Flipino Hates; 2. Foreign Natsnuls or Yose omialnd or have a ron) and ‘ffetive eomnnresn! ‘establiatant he country ‘which is bound by Wroaty {euch 98 the Parla CCorwortfon an the TRIPS ‘Agteamen) to grant Flipinas the same righty & grunts > is own oatianals: fat, 2, Assignee of the invents 3, Feraign avian whoae court say gerap tho ion ct Note:. To ba ‘able to vifectively and legally preclude others fram copying and profiting ‘rom fhe invention, ® patent is @ pimordial requirement, NOPATENT, NO PROTECTION ‘Tho uliniate’ geal ot a patent system Is to bring new designs and technologies Into the cuble domain Uvough disclosure, Idues, orice disclosed fo tho public without the protection of @ valle patort, are subject to appropriation without agian conve ‘(Pearl & Dean (PIL) sposniart, GR No, 148222, August 18, 2003) SEIRST-TO-FILE" RULE/ SYSTEM ‘This le tho ayster of patent regletration adopted tundér the IPG In Kew of the firstto-invent systim. Right to Prlority of en oarlter-filed forelga ‘application (See. 97) Roquisites: 4. tha. loval application expressly. clalms © prloetys Fr Rad thin 12 menthe from the date of ‘the earliest foralgn application; ety eee Say Beds College of Law | 4, Fillng within 6 monihs from the certified copy ‘of the forelgn application, with an English {tanslation, rom the date -of. the local application. REQUIREMENTS FOR FILING APPLICATIONS (Secs. 32-39) ey apolicetlon shall relate to one Inventive bla only of 0 2 gtcup of inventions forming tingle general Inventiva stop The potent appliction shall be In Filipino or English and ehall consist of the folowing: 9. Araquest containing the following: 1, paiilon fr the grant a patent, I, namo snd other data of the applicant, Inventor (if he Ts fot the applicant) end the agent, and Lite af invention. b. Disclosure of the Invention in a manner ‘sulficlentiy clear and complete for It to 02 tariled out by a person skilled In the art Description ofthe invention; Drawings; (One of mere siaims In clear and concise fanguage defhing the matter for whicn protection Is sought {An abstract of technical Information ‘consisting of @ concise summary of {he disclowure, clams and drawings in preferably not more'than 150 words; 9. Appointment ofan agent oF Tepresontative in the Philippines by @ honvesident ~ applicant upon whom holiges or process for judicial or Sdministrative procedure relating to the patent may be served; ang ho At tha. aquest of the Director, the ‘applicant shall furnish him with the dale and numberof ication for a ‘employment LLHan Beda Col egs of Ama Kmmplayts = If tho invention the reauil of the pertsrmence af hia tequiedy sasigned dues" vnlors agreed a shherwins (Seo. 3), REQUIREMENTS TO GFT A FILING DATE (S2e, 40) i Gh receipt of the ehplication, an exaininer crecks If the application Includes the following requizementy 1. Roarest for a Philpp'ne patant; 2. Name and avidrace of tha applicant; and 3. Description ad eaims of the Invention in English ar Fitpino (the extent of protection. onterrad by. patent Is determined by the lava), + Peyrment of th: filing fee Is nol includad. The date of fling Is very Important because It seriea to debymine who has the right to the patent in cas of a dispute witli another ‘applicant for thy same Invention. ANNUAL FEES ‘To maintain the patent epelication of patont, an ‘annual feo shall be paid upor, the expiration of 4 years trom the ‘date tho application vias published, end of ite eubsequont anniversary of ‘ouch date. fnent taaybe made within 3 the annual fee Is not paid, the patent epplication shai te deemed withdrawa cr the patent considered ns lapsed from the day fol'cwing the expiration of the parlod with in, which the annual foas wore due. J, grave period of 6 months snail be granted for ithe payment of anual fee (Ser. 65). CONCEPT OF DIVISIGNAL APPLICATIONS When two or mora Inventions ara claimed In a single application-but are of such a nature that @ single patent may not be Iseued for them. The applicant la thus requirod "to civide* or limit the dleims to whlcxevor the invention he-may elect, whereas thote lnvent'ons not elaciod may be made, the subject of separate applications which ‘are called “divistial_ applications* (Smith lina Aeakinan Garp. v. Court-of Appeals, GR No. 126627, Aisgusl 1, 2003, cted in Reviewer on Commeretal Lavi, Sundiang anc! Aquino, 200600), RIGHTS GONFER2Z0 TO AN APPLICANT All the rights of 2 patentee in, relaticn to the invention climed in the published patent application if ha hat: 4. (a) actual knowledge that the invention was the Subject mater of a publiched application; or (©) recolved writen notice that the Invention wes the subject matter of a-published application; and had not flad tho action until afer tha grant of @ patent and within 4. years. from the Cortlain ef th aoa oped ot (Sea, 40 RIGHTS GONFERRED BY PATENT (S00. 74) 1 2. 3 ‘To rostralry prohiblt/ prevent; ‘a, Subject matters PRODUCT To restrain, prohibit, and prevent any unnuthorized person ot ently from mating, using, offering for, ale, seliing ér importing that product, b. Subject matter is PROCESS To rostrain,: prevent of prohibit any unauthorized: person or enilty from using the process, and from manufacturing, dealing In, using. auilng of offering for anle, ot sporting eny product obtained directly or Indirectly from such process, To ausign or transfor; and To conclude licensing contracts LIMITATIONS ON RIGHTS CONFERRED BY PATENT 1 Genoral Limitattons (0s. 72) The owner of @ patent has no right to prevent third partes. from performing, without is authorization, tha folowing acts: 5 Using of 8 patented product which has been put on the market inthe Pippines by the owner of the product, ar wilh his ‘exproas coneant be, Explataton of the patent done privately and en a noncommercial suale of under ay (See, 7 RA i MEMORY AID IN COMMERCIAL LAW| 13,14 ]2709 CENTRALIZED HAR OPERATIONS PERATIONS a aaeermen ane 2. Uae by Prior Use (S0e. 73) {A person other than tha applicant, who have farted using In good fat the Invention in the Philpplnes, or undertaken serious reparations to use the same, before the {ing date oF priory dale of the application that have the ight 10 continue the use thereof hut his rigit may only be transierred for avaigned further wih his ente:prise or business, by itimay use the patina yariedis oaitcony © the patent owner If ‘a. Fubliclnterast so vequires; 5, The manner of exploitation by the fownar of the patert is anti-competitive ©, Incase of drugs and medicines, there is ‘a national emergency or other Croumstanee of eyreme urgency Fequlring the use of the invention. c. Incase of drugs ahd medicines, thera Is 8 publle rons commercial use of the patent by the patentee, without ‘allsfactory reason fe. In case of drugs and medicines, the demand for the patented article in the Philppines Is not being met to an adequate extent and under reasonable terms (Sac. 8 RA 9502). CANCELLATION OF PATENT © Formalitios Jpon petition, wlth notica and hearing + Effect Tennlnation of rights canferred by the potent | Boo. 66. > Grounsts: . What ig clamed as the invention 1s not new or patentable; 2. Potent docs not ciscloce the Invention In @ manner sufficiently lost and coniplete for itto be carrled ‘ut by any peison skilled In the art; and 3. Patent te contrary to publle order oF morality (Soc. 67). INFRINGEMENT (Seo. 76.1) ‘The neklag ‘offering for sala, seling, oF Importing '@ patented product or @ product obiainec directly of Indirectly from a patented [rocoas, of tha use of a patented process without the authortetilon of the patentee, sar Theda College of Lew GUNTHIBUTORY INFRINSER Gne who actively Induces the infingement of @ patent or provides the infringer with a component Of a patented product or of a product produced Soeause of 2 patented process Knowing it 10 be especialy adopted for nfringing and not sutabla for suostantial nor-intinging. He is Jointy and severely able with the infringe DOCTRINE OF PATENT EXHAUSTION Tr capousos that the fotentee who has already {hye hvention ead hae reneived all tre royally ‘The Invention thus bezcnies oven Iw Wis ww the purchaser without further restriction (Adams v. Burke, fod In Notes on Solecod Commercial Jaws’ A, Guide for Sar Reviewoos, Cating'g, 2003ed). ‘TESTS OF PATENT INFRINGEMENT. 4. Economic Interast test Wan the process-discoverers economic interests are compromised, /.0., when others Gan import the products that result from tho process, an acts said to be pronibited. 2. Literal Infringement test Resort, in the fist Instance, must be hed te the "Words" of the claln, If the accused matter clearly falls within the | clsin infringement Is made ott and that is the end fit ‘The claims of, patent. and the accused product must be juxtaposed within the Sverall context of clalms end specification (Godines v. CA GR 97943, Seplombur 13. 1993). ng pegenot be Ginapistaniion 8 pee ne cin BSH SunaanaSan jBeda College of Law eee DOGTRINE OF Fi! WRAPPER ESTOPPEL Balances the docirino of equivalents, Patentee is precluded from slaiming as part of patented product {nat whirl he nad to excise or modify fn Corder 19 avold cétont office relection, and he may cemit any additions fe was cornpelied to add by patent office regulations, DEFENSES INACTION FOR INFRINGEMENT. (Soc. 81) 4. Invaildty of patent or claim; and 2, Exlstonce of yrounc for cancellation REMEDIES FOR INFRINGEMENT 1. Action for es © Umttetia . Ty ‘acts 2! Infringement committed within 4 yeers before Institution ef action (S80. 79); b. Dam ges cannot be rece verud if the Infinger did not krow. or hed no renscirable. grounds to know, of the patent (Sac. 20). 2. Infunetion (Sa. 76) 4. Disposal or dostruction by coua’s order of ‘the Infringing goods, materials and Implernents, without compénsation (Soe. 76) 4, Criminal astlcn for repetition of infringement (Sou. 84). | Nota: The institulon of an Inter Partes case for canceliavion of a mar with the Bureau of Legal ‘Affairs, IPO dees not bar the adverse putty rom fling & subseque-t action for infigement with the regular courts of Justice In connection with the sama ragistered. mark. ‘This is because the ‘ertticate’ of tegistration upon which the sinfingement case is basad, remains valld and | subsisting for as tong es it has not been cancelled by ‘he Bureau (Shingrla Irtensatiorel Hote! Mct.. tio, v. Court of Appeals, GR No. 111580. line 21, 2001). REMEDIES OF FERSONS NOT HAVING THE RIGHT TO A PATENT (S2e, 67) Ifa person other then tho applicant is declared by final court order or duelslon a3 having tho right to the patent, he may within 3 months after such decision has become final (a) prorecute the tion £8 hi OW, (0) Me a itaW patert arpieation, (<) request that tho application be refuses; or (d) seek cancelation of the patent, Note: Appiles to pending application and even when patent is alteady granted. Tino to file: 4 yecr from aate of putication of the application (Sec, 70), MEMORY AID IN COMMERCIAL LAW| 355 ASSIGNMENT AND TRANSFER Inventions and ény vight, tls, oF interest In and to patents and Invantiens covered thereby, may ba assigned or transmitted by Inheritance of bequest or may be. the subject of @ license contract (Section 103.2). LICENSING May be Voluntary (Secs. Compulsory (93-102, IPC). 80-62, (PC) oF A, VOLUNTARY (Secs. 65-92) The grant by the patent, owner to a third person of the right to expllt a patented Invention, Prohibited Clauses (Seo. 67) 4, Those which impse upon the lleenses the obligation to nequire fro spectic source capa! Intermediate products, raw matarlals, and other technologies, oro) permanently employing | personnel Inalcated by the tlean aor; 2, Those pursuant fo which the leur reserves the right to fix the tule or resale prices of the prexiuals manufactured on the basis of the ‘ieerse; 3. Those that’ contain» resticiione regarding the volume and etructura 2 production; 4, Those thot prot.ibit the use of compatitve techaclogles. In a riot exclusive technology’ transfer arrangement, 8 Those thal eétablish full or pastin se Cthe use of the after the Te16 |200 CENTRALIZED BAR OPERATIONS 10. 1 12. 13. 14, 16, arrangenient, except in cases of early termination of the technology transfer arrangemant due to reason(s) attributable to the luersee; These which require payments for petents and other Industial property fights ater their expiration or termination of the technology transfor rangement; Those which require that the ‘echnology recipient ehll not contest the validty of any of the patents of the tecrnclogy supplier, Those wr'ch restrict the reeearch and davelopment activities of the licensee designed to ebsoth and adapt tne trannferred technology 10 local conditions of to Initiate research end davelopment programs ip connection with new products, processes or equipment; Those which prevent the licensee from adapting the Imported technology to local ‘conditions, er Introducing Innavation tt, as long as it does not Impalr the standards prescribed by tne Aleancor; and ‘Those whieh exempt the licensor from Hiabilty for on-tutfiiment of his responsiblties- under the technology transfer sreange ment andlor tubilty ‘arising from third party suts brought about by the use of the licensed oduct cr the licensed technciogy, and COthor canes with equivatent effects. Mandatory Provisions (Soc. #8) ie “That the laws of the Phillppines shall govern the Interpretation of the agreement ard inthe evant of Itigation, the venue shall bo the proper court in the placo where ths censes hhaa its principal otice: Continued accnss to improvements In tovhniques and processes relctea to the technology shail be mao ava lable during tna period of the technelocy trnnsfer arrangement tn the event the technology transfer arrangemsnt shall provide for arbitration, the Procecure of Arbitration of the AlcHration Law of tha Phiippines or the Arbitration Lew of {the Urited Nations Commission on International Trade Low (UNCITRAL) er the Rules of Conciliation and Avbliralon of the Interiatlonat Chamber of Commerce shall apply san Meda College of Kaw and tie verue of arbitration shall-be ‘the Phillppines or any neutral country; and 4. The Philippine taxes on all payments Felating lo the technalogy transfer arrangemen, shall be borne by the Hcensor, COMPULSORY (800s. 93-102) ‘The grant by the Cirector of Lagat Affairs of a license to exploit a patented Invention even without the agreement of the patent owner in favor of any person who has shown his capability to exploit the Invention under certain circumstances. Torma and Conulitions for Compulsory License: 1. The scope and duration of such ileense shall be limited to the purpose for whlch it waa authorizee: 2. Non exclusive license; 3, Non assignable license; 4. Uso of the subject matter of the license shal he devated predominantly to the supply of the Philippine market; 5, May bo terminated if tha circumstances which led to Its grant have ceased; and 6. The patentes shall be paid adequate remuneration Grounds: 1. National — emergency or __ other circumstances of extreme emergancy; 2 When public interest requires; 3, Manner of exploltaiion of patent is ante ‘competitive; 4. Public non-commerdial use of the patent, and Patented invention is not belng worked in Code and is has bearSan Beds Collrye of ay MEMORY AID IN| COMMERCIAL LAW] 17. Note: The date of fling is vary important under the resent “frsto-fle! system because ft earves to Setarmino, in casi of a cigpute win another appleant for the Lave Invention, who has the right to the patent. 3, Clasalfcatlen and Search ‘An application-which hae complied vith (8 fornval requirements shall be clagsifiec ard a search concLgiee to determine prior at (See. 43). 4, Publleation ir. the OS ‘The search er he claselficadon of the fiald of technology to ‘hich the Invention is eatigned wi be publiched in tha IPO Gezelte afc’ tha expiration of 12 months from the fing date or priority date (Soe. 44). Note: Aer the pt lication ef the applleation, any penan may. prcvent observations in writing Concerning the pétontabilty of the Invention, Such Cheervafon hal be communicated to the applicant who may gorament on them, 6 Request for Substantive Examination Budstantive examinalicn ig conducted upon request, Tha tequent for substantive exainination of the application must be filed within six @l,mvanths from the date of the publcatian. the application 1s considered fallncrewn i Go. request Is rads within that period (Soe. #2). Jclaion to Grant Patent Roglstration oF Daclsion of etusal Ite examiner finds no reason for refusal of the applcalicn, arf the note of reason for fausal is anlistactorly complied with by fameniment or corection, the examiner fssuies. a’ decision to grant the patent registration, Othervdsa, the examiner rofuses the applcallen, 7. Inspection of Racords It anall bo published in the (PO Gazette within six (6) montns, Any Irterested party Fray. Inspect, the complete description, Galms,-ane drawings of the patent on fe with the Offs, APPEAL Every applicant ‘ay erspeai to the Director of Patents the final refusal of the examiner to grant the patont withir fo (2) months from the maling ale of the final rufucal, The decison of order of the Director shall beccme final and executory fifteen (13) days! ater receipt of a copy by the appellant uatest within the sam peciod, @ mation (ia Ui {or reconsideration ts fled with the Director or a ‘appeal to the Director General ia filed tonethor with the payment ofthe required foe. The’ decision ‘of the Director General mey be appesied to the Court of Appaaie ifthe applicant is stil not gatisflad with the decision of the Court of Apes, he ray silt appeal to the Supreme ur, ia ; TAA oaanieat i an nue nai, “The IPC dees NOT naymore provide for prlor use ‘as.a condition for ownarehip of a mark (Seo, 122). REGISTRATION [S THE SOLF BASIS, Howaver, trade name or business ame may be acovired bw prior use and naed not be regitered, PRINCIPLES: The right to the nuark fs separate and distinct from the business using auch mark, (S. 149.1), 2, Tho right of rogistvation belongs to the ove cof tha inark (Unio Conimercial Entorpr!n0s, inc. . Goreral Milling Corp., GR 20554, February 24, 1983). TRADEMARK ‘any visible sign capable of distinguishing tre goods (trademerk} or services (service mark) OF Sn enterprise and shall include a stamped or frarked container of goods..{n relation thereto, a trade name moans the name or designation dentfying of dstingulahing an enterpriso (Eldod Kho v. Court of Appoals, GR No, 118758, March 11, 2002). Basle Requitemar‘wn}2,12009 CENTRALIZED BAR OPERATIONS Acquisition ‘Acgtiréd through registretion. Registration Is moessary botgre one can fle on action for lnfingement (Ruviowar on Commercial Law, Sundisng and Aquino, 200€ed). Prior use In the Philppines Is not required before registration. However, there must be an actual usw afer registration because Sections 142.2 and 15i[3] of the Intellectual Property Code sequires that the registrent shal fla a duclealion of actual use of the mark with evidence within 3 years from the filing date of application, therwise, it would bo cuncstled For the requiemant of "actual use in commerce in the Philippines" betore one may rogistor a trademark, trace-name and service mur: under the tu pertains 10 the temiorial Juriadiction of the Mulippines and Is not oly Confined to a certain ruglon, province, oty oF harangay (MzLonatd’s Corporation v. Wodoy Fastfood Corporation, GR No. 166116, Fobructy 2, 2007) Registration fa not necossary to file a ease for unfair competion (S00. 166.1 & 2) What may NOT be ragistared (Se. £93) nmoral and daceptive matter; 2 Nelonel {ag or insignin 3. Name, portrait of signature of ‘tiving person oi deceased President; Mark ortrade name infringing another; Mack constituting reproduction of Interationaly wal-known mark, whether or not registered tnare: 6.. Mark: Iontical with well-known mark, on onscampeting goods, registered hare; 7. Mark ilkely to mistead the public; 8. Mark coasiating exclusively ‘of signs ‘generic for tho goods or services; 8 Mark consisting ax:tusbvely of signs or of Indications which are customary or usual to designate yoods or services in everyday language or bona fide and ‘qatabllaned waco precilces} 40. Mark consleting of s.gns oF of indications sed In trade; 14. Mark consisting of shapes; 42. Mark consiating of color e'une, uniess defined by form, 4%, Contrary to publio erder or morally Note: More geographisel names are ordinarily regarded ag common proverty, and It isa general. rule that the semo cannot be appropriated ae the subject of nn exclusive vadematk or trads name (Ang Si Hong v. TF Savi Wrda College of Law \Wsttogton Dapariment Store, GR No, L-4531, Jamary 10, 1953} TRADE NAME, Any individual name or surname, firm name, device or word used by _ menufacturers, industialiste, merehente, and others to idently ther businesses, vocations or eccupations (Conversa Rubber Corp., 4 Universal Rubber Products, inc, GR io, L-27425, 2-30505, Apni 28, 1980), me ‘Any visble sign dosignsted a0 such inthe ‘Any visible sign \whistis adepled “nt used to Tocntly tha ) ditlngusting | appreation source of origin | the services of | regisvation anv ot goods, urd | an enterprise | capable of ‘whichis capable | from. the | distinguishing the ‘distinguishing | servea of | origin or any olnes thom from | oar ‘common | goods fentarprces, | characioristo, | emanating from inckding te a ccmpettor guclty of gucde or services of siferent enterprises: which use the sign Under tho corto! | of the registere| | | owner of tha Ties on existence dial from the axistence of te Attached to the natural or ree coin tuetneas | vila person wna does poison dolng business ean ee bed pet rhusiness and prodSo Meda College ot Law maa Right which protecie the {ntarosia. of produasra In thelr marke and In tse goodwill ear Ropuiaion end ublc, ontidene’: “that ruslnesavantire hon eames vor gy peed Merely 6am38\ wht is Designod to tearity the | witnin the container Usererorign. | parkage: may or may not Note: In practice, a word, a name cr a phrase, coupled wih Indicators of tusinass expanizatisn, such aa ‘inc’, "Corp or "Co." will NOT be registered as tad nari of service snarks, REQUIREMENTS 10 GET A FILING DATE “On recelpt of the iapetion, an examiner checks it” the applica in Includes the» folowing requiroment Ae Request for w /hlippine registration of mark; E. Ident of aps Foant: 3. Indications suticlentto contact the applicant; 4. Reproduet'an ef thn mar; end 5. Ust of goods or services Note: No fillng dats until (ie required fos Is paid. PRIORITY RIGHT ‘An apclication for fegistration of mark fied in the Philippines by & perscn who qualifies under the reclorocity mul und who previously filed an application for registratizn of the sama mark in ‘one cf thoce coun'tios shall bo considered ae filed {88 of the day the «pplication was first filed in the. foreign country(See: 124). Significance of Pricrity Right ,APhiligpine application fled by another applicant ‘after tha prlotity date ut eartior than the foreign applicants etal fling may ba refed regisietion fi ip identical (9 the mark with a oily ste (ha Law, on Tiadomark, Infringement and Uniair Competition, Agualo, 20000). ‘Condit'on 4. The Bpptcatizn rust bo fled within 6 months from the date of earliest foreign application, Its certified copy parsed win 3 mos. tram tho date offi tn the ehilppines. 2, Tae following shoud concur. (a) the foreign country | county of origin hae allowed the mark ond (b) the county of origin is the applicants dovicie or has @ bona fide commercial estabislimant 3, The owner of the Philppive Regletretion may not sue pila” fo tho granting of the MEMORY AID IN COMMERCIALLAW] 19) registration, unloss the mark Is considered well-enown a3 provided for th IP Code. 4. The priority right may nol be basod upns a foreign apnteation thet-has baan withdrew abandanad, oF athewise disposed of In the country of origin (Rule 202, Trademark Lav). CERTIFICATE OF REGISTRATION It shall be a prima facie evidence of Validity of rogletration; Rogietrant’s ownership ofthe mark; and The regiauant's exclusive right to ute tho same in connection with the goodt of services and trove that are related thereto (Seo, 136), Gonoral Rule The trademark protection exteuids only to gvods or services related to those speclied in. tho cartiicate. Excoption Expansion of Business Rule ~ siso to those goods or terloes that’ aro related thoreto specified I the certticate (Soe, 198), + Al cases In which the use by the junior approprlatcr 18 Ikly to lnad to a confusion of scutes #8 where prospective buyers would ba misled into thinking thal the complaining party has extended his buslneas Into another eld (Sle. Ave v. Malhvat, GR 23023, August 31, 1968). DECLARATION OF ACTUAL USE OR NON: USE BRS SIT Ree penueinM rnvorsy ef te dio of reeegisvaten of tho Aaa Ta od TU12-20 12009 CENTRALIZED BAR OPERATIONS 2. In e080 ofa rogistatod wall-known mark: Exclusive ght to rosttain/ prahibl prevent third persons from usirg Identical or sisllar signs ven for dlsalniiar or unrelated goods oF sorvces, provided that the nse wll indicate 2 connection hatwron the goods and the ‘owner of the mark und thet the intarest of the ‘owner would likely he damaged (Sec. 147.2). DOCTRINE / PRINCIPLE OF RELATED GOODS OR SERVICES ‘Taere Is infingemont whan there Is use of similar ‘marks on goods that are so rolated that the public inay be, or Is acluslly deceived, and misied that the goods come trom the same maker or ‘manufacturer (Ess Staridard Eastem inc. v. CA, 116 GRN 29971, August 31, 1982). ‘An EXCEPTION to thls dorting Is the additional fight gruntad to @ registered well-known mark. WELL-KNOWN MARK ‘A inark which a competent. authorily of the Philppines has designated to be well-known Intamalenally and In the Philippines th. determinng wheth > a mar is velkknown, the knowledge of the ralevent sector of *he oublic, rather than the public at targa, including knowledge In the Philppines whict: has been obtained as a result of the proracion ofthe mark, shall be pertinent, Determinants: ‘Iv. The duration, extent and geographical area of any use of the mark; 2. The market share In the Pbillppines and fF countries o! the goods/services. to ‘whieh the mark upples: 3. Tha degies of tho Inherent or acquired ‘istination of the mark; 4; The qualty-Image ur reputation acquired by «the mor; ‘5, Tne extent to which the mark has been fegitered 'n the world; 6, Tho oxclusivity of the ragistratien attained by the mark in the world; 7, Ths extent of use of the mark in the world; Toa exclutey ofusa in ie wok a ‘commernial vulve attributed to the marc Inthe warld; 40, The record ef succevatut protection of the fights In the mark; 41. The outcome of litigations deating with the lesue of whalber the mark Is well-known, and 42. Tha prnsunce or absence of Identical or similar marks vallély rogistored or used on almlar goods (Rule on Trademarks, 102). San Beda College of Lats Blghaa Right to be protected whethar or not it Is rogistarad In the Philippines; 1! roplstered, extension of protection to goods and senices which are not similar to those in respect of which the mark Is registered, provded that: a The use of the mark in relation to unrelated or dissinilar goods or services would indicate a connection between those goods or services and the owner of the mark; and b. The interests of the owner of the registered mark are tkely to be damaged by such use. (Exception fo the rlocirine of related goods) NICE CLASSIFACT.ON This is. the system by which trademark applications are classified, There are 34 classes (of gv0c's and 8 classes of businesses or services, DIVISIONAL APPLICATIONS ‘An initial appilcaticr may be divided by the applicant into two or mere applications. However, ‘a single clasa shall not be suLoivided, Tne divisioral application must be submitted ‘within 2 months from the mailing date of the 1 action of the Bureeu of Trademarks. A new application number shall be issued, and the pilority right of the Initial. application shall be preserved. ‘An existing’ rugistration may also be subdivided Upor request. by oath and wring. A new certificate shal! be issved but a single class shall also not be subdivided (Sec, 129). BOGTRINE OF SECONDARY MEANING Indicative or 123.1) oe ery person camaged by the: ‘0been Col geah Hae poynant of hy foe M6 an oppttion to Sepleston Form: 4. inwatting 2 Vorites 3. Spectind grants 4 Slatement of acts Timo to fie: 20 days. after publication ‘of ‘appliestion; Wf unverified, the verified oopostinn must he fled within.2.months from such fing BUT Ray be axtenvled for + inonth and maxirum pperlod does not excued 4 months from publication ‘of application (Se> 134) CANCELLATION . Soe. 161) + Uper patiten, with due notice and CRRA RN jeg ; era q ‘Belet thet togistersd mark hea gamage oF vil "Becoming the genaric nana for the goods or services for which Is damage thy} registarses petitioner 2, Abandonment, 3 Iiagal or trauduent | ogistratcn, 4. Use by, oF with tho permies’on of the fagisicart 90 a8 to misrepresent the source ‘of tha goods or srvices in connection wh which the mark's weed 5. Nonwro for an uninterrupted period of 3 yonra withou' lagiienat feason Note: Actual use may ba dene by substantie! compliance (Sve, 482.2). Exempting clrcumstarices: those _ arising Indepencently of the will of the ‘rademierk owner (Sec. 162.1), stich as prohibitien of sale by government regulation, military coup, o* political changes thal impede eammerce. Note; Regietration Is an’ administrative act declaratory of a pr3-axisting right that dees Act, of self, perfect a vedernark. It fs actual use which ppoctocts 0 tracomerk. NON-USE OF A MARK WHEN EXCUSED 4. if cauesd by circumstances ar'sing independently of the will af the owner, Lack of funds not exct sed, MEMORY AID IN COMMLRCIAL LAW| 21 2. A use walch dogs not alter its dlatinetive character though the us is different from the form in which itis ragisterod, 3. Use of marin connection with one or moro of the goode/asrvleen belongicg to the class In which tho rnark is registered. 4, Tha use of @ mark by a company (elated to the appllcarvrepistrant 5. Tha Uae of a mark by's pdraon contalied by the roalstrart (See. 182). INFRINGEMENT (S00. 186) 4, Reproduction. oF colorable Inttation of a registered maik or a dominant feature thereot and epplelion “ot auch répreduction of imitation of ba's, ete. Intendad to be uaed In commerce, of usa ia. commurce ot ay reproduction er colorable Imitation of a {registered mark or 8 dominant feature tereot in‘connecton with the sala or advertising of {goods or serv 2, Likelood tb cause confusion or mistakes ka the mind of he publlo or deceive purchecurs Note: This is pteeumad In cago’ of the use it an identical sign for Identical goods or seratces. There is infringement of trademark wher the Use of tho mark Involved would be likely to cause confusion or mistake in the mind of the public of to devolve purchasers as to the cofigin of the source of the commodity (Put ‘of the Loom, Ine, v..Court of Appaals aut Ganeral Garments, Corp., GR Ne L-32747), Action fot inftingemant may be miaintoled ‘without proof of anything more tan the right to the exclusive use ofthe registered mari ot trade name und tat the defendant tat Violated t, No aliggalion oF proof of frau ¢1 iy (Comal flee Claas, 0 By Apale f AN nfrin2212009 CENTRALIZED BAR OPERATIONS ELEMENTS OF INFRINGEMENT 4. Regletration of trademark in IPO; and 2 Trademane — is reproduced, ‘counterfeited o- colorably imitated. corie, Colerabte tmnitation Such similarity in forms, corten', words, Sound, meining, specie! arrangement of General appearancn of tho mark of trade ame with that of the othar mark of trade fame in thelr ovarall presentation or in their essential, substantive or cistinctive parts ac Would likely mislead or confuse persons in the ordinary course nf purchasing the genuine article. Donotes such a "close ingen'ous initation’ as to ba culoultted to deceive ordinary persons, or such resemblance to the original es to deceive an ordinary purchaser, giving such attention as 2 Purchacer usually givot, ard to causs him to Burchasa tha one auppesing it to be the other (Elopha A.0, v. Divartor of Patents and Westmont Pharmaceuticals, Inc, GR Mo, L-20835, March 21, 1966), {tls used In connection wit the sala, or itis offsring for aie or adventsirg of yootls, servinus of business or applied to labels signs, wrappers. etc intended to be uszd 11 connection with such gords, services or business, 4. Thera is, in the use or application a Fketthood of confusiun, {Leck of content on the part of the registered 1 owner or their assignee (The Law on t Trademark, —Intringamant’” and Unle'r Compaiition, Agate, 20008, Thare shall be no in‘ringement of trademarks (oF trade names of Imported! or rokt rugs anc madicino ag defined in Sec./2.1 of the Act as well e Imprited or sold off. patent crugs and ‘ medicines (Seo, 14 RA 9592) Exists ‘hen one pasty product ar service though aiferen fom that of ancthes, is such’ as might Feasonably be aaeuined to ‘origins frory tha lite fd tho pute v ouid t be deca inte the out rat thers a some ‘connection between the Patios, whic infact Is Exseot Conitusingy Srnlay maT ‘are employed in diferent Tor Fen-compating A person's goods’ or Servlcos are purchasset as these of another and th . poorer qually ef formar rehteris adversely ‘nthe eters reputation, Sontusingly simier marks ara uged on the sina nts of goedaerslees San Meds College of Laws IDEM SONAMS RULE Two trademarks used on Identical or colated goods may be confusingly similar if tney have similar sour.d cr pronunciation, Note: Simiterty of sound or pronunciation speling may 22 sufficient (o make two marks conlusingiy similar when upplied to merchandise Of the same descriptive properties, Evamip ‘Salonpas® and *Lionpas” bath for medica! plaster (Marvox Commerclel Co, ¥, Petra Hawa aid Co,, GR 19287, Dacemter 22, 1956). Likelihood of confusion or mistake is grnater when Identicul or closely simitar marks are used on nen= competing but related and common houselicio ‘toms because they ae purchased by ordinary Purchasers who usually Know them by thelr ames or trademarks. a SORTER TE va ee Re ane RG 623), The use of the same, without apparent permission com the trademark owners thereot, shall be prima facie presumption that such possession or use is Ger go0ang, Hf aRS Pale ate 4 % Fe NERD ae ts bale ee ieSean Tied College of Lady LLU EAST SS Say An} Foouses on the siniianty ciety tha entraty f the main, easertia, | of the mazks in question dominant, of sevaloat | must be cnnalgares In fesivras ofa meek otermicingy coniuslng emiarly. Exnet_ duplicai2) ot imitation Is not necessary, | “This taat ia Incorper aad in ‘tho. Intulioetuat” -oparty fo EXAMPLES Ol CASES EXPLAINING THE Tests. DONS ML 1. E, Salnner 3d 0, 3. Neues HLoneian The use ef Wigan* for kal Cop. (Gk No, 311380, Jlantiry 13, MEMORY Alb IN COMMERCIAL LAW [23 2007} 3 MeDonaids Corporation and MeSeorge Foor! Industrien, Ino, vs, LO. Bg Mak Burger, ne, (GR No. 143983, ‘August Big Mac ve. Big Mok 48, 2003) 76, MeDonalde Corporation va, Macoy Fastfood | McDonalds ve. Corporation (GR | Macdoy No. 136118, Februsty 2, 2007) WoLIstic THET % lg Comp. va. CA (GR hn. 1060%0, Docommn® 28, 1995) 2 Brio! Mrera (GR No, L-23023, | Flonnan v3, Flormes Augus' 31, 1956) ents (GR No, f= | Hen Stand va. Macka Orr of Patonte | Botorin ve. Butlr both 6072, Octobor 34, | Menok | (GR No. 1-21504, | for medicine: 1956) 7 Hl Moy 18,1900). | eee Sta, Ana va, Matwat Same Cyanamide Co. vs. Dir of Patents {GR Not-23984, ‘Sulmetine vs, Sulmet both for veterinery medicine 1997) ae faba) cof BEER PALE PLSCM ana uot fhe siete tle ve See PALE BLSENL ‘ith Revenpuor Mat snd Hepa Design 6 Asia Breviery , tne., V8, Court of Appeals (GR No, "1013543, sly 5, 1999) ‘In, leit | Gold Tox va. Gold Peatody 60.5 ino. | Yop (GR No. 180300 % Sodele Des Produits Nestle, | Master Roa! SA. vs. Sout of | Master Blen Appenis (GM -No, | Flavor Master 442072, Agrt_4, & Pappire Mtt otenters. Cockle Apr 28,1972) __ | ndustry ves Si | ii | | Wad donnson' pga oon aad ace Brands (GR No.l. | osnuts v8. Pil Hee VeOR2e | Alaska for milk and Alacta 2s “iy | ae cot va, Vin 8 | er poyered halts 1975). pet aera zt, 2903)” | mie He & Converse Pubber | H Comp vs, Universal | Universal Converse | REMEDIES FOR INFRINGEMENT Rubber (GR No | Delco va, Converse | 1, Action fordamagon, | 22008, Jamicry 8, | Rubber Corp. Gonoral have beor omitted th knowledge that24 12009 CENTRALIZED BAR OPERATIONS such lnnitatlon Is likely to cause contusion, or {0 couse nilstehy or to deceive (Seo. 154), + The Infingement cage can and should proceed indemandently tram the cencotaton case with the Buraay $0 as to afferd the owner of tha cortiicates of registration ‘dress and Injunctive writs (Shangitle laternational Hotel Hy, Inc, ¥. Court of Appesls, GR No. 111560. Juno 21, 2003). + Pry foreign natlone}, whe qualifies under the principle on reciprocity and does act engage In business in the Philippines, whather or not itis licensed to da butisiess in the Philippines, ‘may oring civ o adiniristrative avtion for: a. Opposition ® Cancellallyn & nfringement Unfair compettion ® Falso detignation of origin or false doseriptlon (Sac, 160) UMITATIONS = ON ACTION FOR, INFRINGEMENT (!.00, 159) 1. Right of Prior Uisor ~ fRegisterod mark snail by without effect against any person whe, in good faith, before the: fling or priority date, Was using the matk for purposes of his buslness, Roliof against Printor ~ Injunction ayainst futira printing against an Innovert Infringer who is engaged sclely in the business of printing the mark, Rallof against aowspeper ~ Injunction ‘against the prusentation of advertisiig Taatter in future issues cf the newspaper, ‘magazine or In etectinle communications in case she inflingemiant complained of is Ccontelined lt or Is part of paid advertisement Ins such matertats, UNFAIR COMPETITION ‘The employmant by a person of dece.tion ur any olhier means contrary to good faith by which he. asrea ot! the goods manufactured by him or in ‘which-he deui, or his business or uerioas, for those of gnothar person who hes established ‘goodwill! In the goods euch person manufactures OF deals In, oF hie business or sarvices, or who. shall.commit ery acts calculated to produce sald result, whether or nat reylstered mark is ‘employed (Section 1€8.2), + In particular, the folowing shall be deenied guity of unfair compolition: 8. “Any peraen who Is oaling kis quocs and ‘alves them the general appearance of goods of anoitier manufacturer or dealsr of who olnarvisa ciothes tha goods with such > 3 Wege of Zawy nee EMME ge Of Eat Zan Beda ‘gppearance as shall deceive the public and defraud another of his legllimate trade, of ‘any euksequent vendor of such good or any gant of any vendor engaged In:selling such oads with a like purpose; ‘Any person who by any artifice, oF device or who amploys any other means ealeulated 10 Induce the ‘alse bellef that such’ person Is offering the services of another who has Identited such sarvices in the mind of tha ublie or; ‘Any person who shall make any false ‘satement In the course of trade or who shall commit any other act contrary to good faith i a nature calculated to discredit the goods, business or services of another (Section 169.3). TEST: Whether cetlain goods have been Intentionally ciothed wth an appearance which i Ikciy 19 decalve the ordinary purchaser exercising, ordinary care, and no! whether a certain limited class of purchasers with special knowledge not Pousessed by the ordinary purcharer could avoid mistake by the exercise of this special knowledge (US. v. Monual, 7 Phil 221, GR 1999, Dacombor 2, 906), Unauinsrzod use of ¢ | trademark iF Pro regetralon of the | trademare Fraudulent inient is cessertlat LETT Registration: ‘is prerequisite to an action, ees c by Sinus RIL Rysipally stands as the Injure? party, ‘The complainant's capacity to suefan Bebe Gale of Fo auch casa becomes imnsteral (idattarose Sasui, at ai, vs. People of the Philippines, GR 198, rn 29, 2008). While foreign corporations may have ‘he capacity fo sue for infringement irrespective of fark of businoss activi in the Philippinge but the question of whether inay have an exclusive right over the symibal as to justly issuance of an injunctive writ wi depend on actual use of thelr trademarks in the Philpplies. To be entitled to an injunctive wri, @lorelgy corporation must show that there existe’ right to be protected and that the fact against which Injunction Is directed are violative of auch right (Philp Maids, ot al. vs, Fortune Tobacr) Corporation, GR No, 158589, ‘lune 27, 2008). Sale la not an |1dinpensable element In aa action for infriagemen or unfair compatitiun (Pra Line Sporta v. CA, GY 118192, October 23, 1997). MEMORY A'D IN COMMERCIAL LAW] 25=. 36 12009 CENTRALIZED BAR OPERATIONS Dan Beds College of Lato DISTINGTIONS ON COPYRIGHT PATENT AND MARK pean Tait ‘Ao exclusive ight Beau ‘over an invention, to Ts that syalom of legal protection an author wnajoys inthe, forin af expression of Ideas (Vong Intslertua! Proverty Organization papop, ‘An Intangible, Incomporest ight granted by talute 19 the author or originator of eartain whetive for commerce Industy, Refers to elthor the giant 4. Originality; and 2 Expression problem in any. flld human activity Which es 4. New or 340 2 Inventive: and |S Indust Thiet ;mporal~ The owner ated bythe forms of alg 2° Tontesiliysographicn — The owner ie pro%e.sed uy the [aw of 3 For vloatone in ancinir county, ea ea 7 thes bh Se ncee CGRTA LOWEN Gis OPER use and make the same lMorary er aniatic productions, whereby he is | rights, OR the Instrument Invested, for a tivited period, with the sole | (sometines vale letters exclusive priviegs of mutsiing copies of the | patent) cxntaining the grant, ‘seme and publishing and sellay them (Black's | Gling a1. Inventor a Law Dietanary), mongpoly on the Inventor's Invention fora Hmited . faa eee es saa ‘Not only to reward To. ‘org or (generet pubic geod; and the Individual, But ‘ownership of artes to which 2. To promote the progress of sclance and the «advancement thoy are sttechad; usaf at, Of the arta anc} 2, To” guarentee ‘Ihat those sciences; anicles come up to @ 2 To ade te the sim Certain kind of quaily, uselul| 3. To adverliso artes they Fovige an symbolize; 3 To enicourage’| 4. To assure the pubic that they |- dissemination of sre producing genuine article; Information ‘and oncerning 5. To protect the manufacturer | discoveries and ‘against substtution and sale | inventions, ‘of an inferior and diferent fy tbc eh ote ied [Any visible sign sal, | distinguishing tho goods ef an rise (\rademark) or the services or temprise (service mark), and 2 siamped or marked ontsiner of goods (Sea, 127.1), tot aricle of Must be rogistabie (Soe, 123.1) ‘Absolutely non-reglstrablo ~ (ext) & (m) of Sec. 123.4, Quaifdly registrabie ~(),(K) (of See. 123.4; Doctrine of secondary moaning (Soa, 123.2) 78 from appilestion: foe