DEFINITION/SCOPE

TRADEMARK A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.

WHO MAY APPLY

An applicant for a trademark may be a natural person, or juridical person and all applications should be in the name of the applicant, who may sign the application. If there is more than one applicant, all of them should be named as applicant but anyone may sign the application for and in behalf of all applicants. If the applicant is a juridical person, any officer may sign the application.

PATENT A Patent is a grant issued by the government through the Intellectual Property Office of the Philippines (IP Philippines). It is an exclusive right granted for a product, process or an improvement of a product or process which is new, inventive and useful. This exclusive right gives the inventor the right to exclude others from making, using, or selling the product of his invention during the life of the patent. No patent may be granted unless the application identifies the inventor; if not the inventor, IPO may require him to submit an authority from inventor. An applicant who is not a resident of the Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for judicial or administrative procedure relating to application may be served (Sec. 33 of the IPC)
Patent protection on inventions or functional creations can be availed of only if there is a patent grant on them. Hence, there is a need to secure a patent from the government to protect the invention or functional creation from being appropriated by any entity other than the patentee. A patent gives the exclusive right to use and exploit the patented invention and consequently to prevent others from exercising the same privileges without the consent of the patentee.

COPYRIGHT Copyright is confined to literary and artistic works which are original intellectual creations in the literary or artistic domain and protected from the moment of their creation.

Natural persons

PROTECTION

Protection on a registered trademark is confined to the use of the trademark on the goods specified in the certificate of registration. Thus, the use of a registered trademark on other items or goods not contemplated in the certificate of registration is not trademark infringement. (Note: It appears that the Supreme Court, while it correctly cited the case of Faberge, Inc. v. Intermediate Appellate Court on the limitation of the use of trademarks to those specified in the certificate, failed to appreciate that Section 20 of the old Trademark Law [R.A. No. 166] had already been modified by Section 138 of the Republic Act No. 8293 or the Intellectual Property Code ["IP Code"] to include the phrase "and those that are related thereto." Corollarily, Section 123(f) of the IP Code already bars the registration of identical or confusingly similar trademarks used on goods or services different from those contemplated in the registration provided that the trademark is well-known and the use of the trademarks on the goods will create in the mind of the public the impression that they are from the owner of the registered mark.)

Copyright protection is strictly limited to the copyrightable materials as enumerated under the law, i.e. technical drawings falling under the domain of literary and artistic works. Protection cannot extend to the object being depicted in the copyrightable work. (Peal & Dean v Shoemart)

TERM OF REGISTRATION/PROTECTION

A certificate of registration shall remain in force for ten (10) years; provided that, without need of any notice from the Bureau of Trademarks, the applicant shall file a Declaration of Actual Use (DAU) and evidence to that effect within three years from the filing date of the mark. If the DAU is not filed within the prescribed period, the mark may be refused or removed from the registry. The registration may also be renewed for a period of ten (10) years after its expiration and there is no limit as to the number of times the registrant may request for the renewal of his registration provided the prescribed fees are paid.

A patent has a term of protection of twenty (20) years providing an inventor significant commercial gain. In return, the patent owner must share the full description of the invention. This information is made available to the public in the form of the Intellectual Property Official Gazette and can be utilized as basis for future research and will in turn promote innovation and development.

OWNERSHIP

Right to a trademark belongs to a person who registered it in accordance with the provisions of the IPC.

Right to patent shall belong to: 1. The inventor, his heirs, or assigns. When 2 or more persons have jointly made an invention, right shall belong to them jointly. (Sec 28 of the IPC). 2. 2 or more persons who have made the invention separately and independently of each other, right shall belong to applicant who has the earliest filing date or earliest priority date (Sec. 29 of the IPC). First to File Rule. 3. Person who commissions work, unless otherwise provided in the contract. However, in case employee made invention in the course of his employment contract, unless there is an agreement, express or implied, to the contrary, patent shall belong to: a. Employee, if inventive activity is not part of his regular duties, even if he uses time, facilities and materials of employer; b. Employer, if invention is a result of his regular assigned duties (Sec. 30 of the IPC).

Works are protected upon their creation, irrespective of their mode or form of expression, as well as their content, quality and purpose. a. Term of protection copyright on works, including posthumous works, shall be protected during the authors life and for 50 years after his death (Sec. 213 of the IPC). 1. Joint Authorship Economic rights shall be protected during the life of the last surviving author and for 50 years after his death (Sec. 213.2 of the IPC). 2. Anonymous or Pseudonymous works 50 years from date on which work was first lawfully published, provided before expiration of said period, authors identity is revealed or is no longer in doubt; provided further, that if work is not published before expiration of said period, it shall be protected for 50 years from the making of the work (Sec 213.3 of the IPC). Ownership of copyright shall be governed by the following rules: (Sec. 178 of the IPC) 1. In original literary and artistic works, copyright shall belong to the author; 2. In joint authorship, co-authors shall be the original owners of copyright; in the absence of an agreement, their rights shall be governed by the rules on co-ownership. However, a work of joint ownership which consists of parts that can be used separately such that authors of each part can be identified, author of each part shall be the original owner of the copyright on such part he has created. 3. Work created by an author during and in the course of is employment, unless there is a contrary agreement, express or implied, copyright shall belong to: a. Employee, if creation of object of copyright is not part of his regular duties even if he uses time, facilities and materials of employer;

Patent shall take effect on the date of publication of grant of patent in the IPO Gazette. (Secs. 50.3 and 52.1 of the IPC)

b. Employer, if work or creation is the result of his regular assigned duties. 4. In case of commissioned work, person who so commissioned work shall have ownership of the work, but copyright shall remain with creator, unless there is a written stipulation to the contrary. 5. In case of audio-visual work, it shall belong to the producer, author of the scenario, composer of the music, film director, and author of the work so adapted, however, subject to contrary stipulations, the producer shall exercise the copyright to an extent required for the exhibition of the work. 6. As regards to letters, it shall belong to the writer, subject to the provisions of Art. 723 of the Civil Code, the recipient of letters and other private communications in writing shall be the owner of copyright, they cannot be published or disseminated without the consent of the writer or his heirs, however, the court may authorize its publication if the public good or interest of justice, so requires. 7. In anonymous and pseudonymous works, the publishers shall be deemed to represent the authors of articles and writings published without their names or under pseudonyms, EXCEPT when contrary appears, or the pseudonyms or adopted name leaves no doubts as to the authors identity, or if the author of the anonymous works discloses his identity.

PRIORITY RIGHT OF FOREIGN APPLICANT

An application by a foreign person, and who previously duly filed an application for registration of the same mark in one of those countries, shall be considered as filed as of the day the application was first filed in the foreign country; however no registration of a mark in the Phils shall be granted until such mark has been registered in the applicants country and nothing shall entitle owner of registration

Application filed by any person who has previously applied for same invention in another country by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of date of filing the foreign application, provided that: a. the local application expressly claims priority; b. it is filed within 12 months from the date of the earliest foreign application was filed; and

granted to, to sue for acts committed prior to date on which his mark was registered in the Phils.

c. a certified copy of the foreign application together with an English translation is filed within 6 months from the date of filing in the Philippines. A petition to cancel patent may be filed on any of the grounds: invention is not new nor patentable; patent does not disclose invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or patent is contrary to public order or morality. (a) Upon a final court decision ordering the cancellation of the certificate; (b) By final order of proper quasi-judicial or administrative bodies; (c) Upon registration of deeds of transfers, assignments, and other transactions affecting copyright, including transfers by inheritance, conveying copyright over a specific work; (d) Upon expiration of the term of copyright The National Library or Supreme Court Library Director may cancel the Certificate of Copyright Registration and Deposit covering a specific work on the following grounds:

CANCELLATION

A petition to cancel a mark registration may be filed with the BLA by any person who believed he is or will be damaged by the registration of a mark, within 5 years from the date of registration; the registered mark becomes a generic name of the goods or services; has been abandoned; its registration was obtained fraudulently; if it misrepresents the source of such goods which the mark is used.

ACTION FOR INFRINGEMENT

Civil Action for Infringement consists of use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container or a dominant feature in connection with the sale or other dealings thereof, and apply such to labels, signs, prints,

1. Civil Action for Infringement consists of selling, making, using, offering for sale or importing patented product or obtained from patented processes; or use of patented process without authorization of patentee. Therefore, when there is infringement, patentee

Infringement is the unauthorized importation, duplication, exhibition or distribution of any original (literary and artistic works) and derivative works. An infringement constitutes both civil and criminal penalties.

packages, wrappers, receptacles or advertisements without the consent the consent of the owner of the registered mark. There are 2 tests to determine whether colorable imitation, an essential element of infringement, exists or whether similarity and likelihood of confusion in trademark resemblance exists: the test of dominancy which focuses on the similarity of the prevalent features of marks which might cause confusion or deception and the holistic test which focuses on the entirety of the marks in question. Thus, the owner of registered mark that has been infringed may recover damages from the infringer; court may impound during pendency of action, sales invoices and other documents evidencing sales; here actual intent to defraud is shown, damages may be doubled; may also be granted injunction; have the infringing goods destroyed.

may bring civil action before courts to recover from infringer such damages sustained and to secure an injunction for the protection of his rights. Award of damages shall not exceed 3x the amount of actual damages. 2. Criminal Action for Repetition of Infringement, such action shall prescribe in 3 years from date of commission of crime.

Under the Intellectual Property Code of the Philippines, the following are the remedies that may be exercised by the person whose rights are protected under copyright law: (a) To file an injunction restraining such infringement. The court may also order the infringer to desist from an infringement to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods. (b) To file a civil action for actual damages, including legal costs and other expenses, which the victim may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement. (c) To file an action for moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case. In an infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. (d) To file a criminal action of infringement under Section 217 of the Intellectual Property Code of the Philippines. The Fair Use of a Copyrighted Work for criticism, news reporting, teaching and the like is not an infringement of a copyright.

ACTION FOR UNFAIR COMPETITION

An action for unfair competition consists of employment of deception or any other means contrary to good faith by a person who passes off the goods manufactured by him.

No unfair competition involving design patents

There is no unfair competition under the law on copyrights. Instead, unfair competition is usually applicable to disputes over the use of trademarks.

Kho v. Court of Appeals (G.R. No. 115758, March 19, 2002), where it ruled that copyrights, trademarks and patents are "completely distinct and separate from one another, and the protection afforded by one cannot be used interchangeably to cover items or works that exclusively pertain to the others." In said case, the following distinctions were made: "Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. In relation, thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary or artistic works which are original intellectual creations in the literary or artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable."