Intellectual Property (IP)

Philippine Definition: Intellectual Property is an intangible asset that can be

protected from theft or unauthorized use. Any person can own IP and have the
right to sell or give it to others.

American Definition: Intellectual property is a property right that can be

protected under federal and state law, including copyrightable works, ideas,
discoveries, and inventions. The term intellectual property relates to intangible
property such as patents, trademarks, copyrights, and trade secrets. Thus, in
today's legal marketplace most registered patent attorneys hold themselves
out as intellectual property law attorneys, as opposed to merely a patent
attorney.

POWERS AND FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE

FROM SEC. 5 OF THE INTELLECTUAL PROPERTY LAW (RA 8293) AS
AMENDED:

Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To administer

and implement the State policies declared in this Act, there is hereby created
the Intellectual Property Office (IPO) which shall have the following functions:

a) Examine applications for grant of letters patent for inventions and

register utility models and industrial designs;

b) Examine applications for the registration of marks, geographic

indication, integrated circuits;

c) Register technology transfer arrangements and settle disputes

involving technology transfer payments covered by the provisions of Part
II, Chapter IX on Voluntary Licensing and develop and implement
strategies to promote and facilitate technology transfer;

d) Promote the use of patent information as a tool for technology

development;

e) Publish regularly in its own publication the patents, marks, utility

models and industrial designs, issued and approved, and the technology
transfer arrangements registered;
 f) Administratively adjudicate contested proceedings affecting
intellectual property rights; and

g) Coordinate with other government agencies and the private sector

efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country.

5.2. The Office shall have custody of all records, books, drawings, specifications,
documents, and other papers and things relating to intellectual property rights
applications filed with the Office. (n)

DIFFERENT RIGHTS PROTECTED BY THE INTELLECTUAL PROPERTY

OFFICE FROM SEC. 4.1 OF THE INTELLECTUAL PROPERTY LAW (RA 8293)
AS AMENDED:

The term "intellectual property rights" consists of:

a) Copyright and Related Rights;

Copyright relates to literary and artistic creations, such as books,
music, paintings and sculptures, films and technology-based works (such
as computer programs and electronic databases). In certain languages,
copyright is referred to as authors rights. Although international law has
brought about some convergence, this distinction reflects an historic
difference in the evolution of these rights that is still reflected in many
copyright systems. The expression copyright refers to the act of copying
an original work which, in respect of literary and artistic creations, may
be done only by the author or with the authors permission.
Related rights, also referred to as neighboring rights, protect the
legal interests of certain persons and legal entities that contribute to
making works available to the public or that produce subject matter
which, while not qualifying as works under the copyright systems of all
countries, contains sufficient creativity or technical and organizational
skill to justify recognition of a copyright-like property right. The law of
related rights deems that the productions that result from the activities
of such persons and entities merit legal protection as they are related to
the protection of works of authorship under copyright. Some laws make
 clear, however, that the exercise of related rights should leave intact, and
in no way affect, the protection of copyright.

b) Trademarks and Service Marks;

A trademark is a tool used that differentiates goods and services from

each other. It is a very important marketing tool that makes the public
identify goods and services. A trademark can be one word, a group of
words, sign, symbol, logo, or a combination of any of these. Generally, a
trademark refers to both trademark and service mark, although a service
mark is used to identify those marks used for services only. Trademark is
a very effective tool that makes the public remember the quality of goods
and services. Once a trademark becomes known, the public will keep on
patronizing the products and services. If utilized properly, a trademark
can become the most valuable business asset of an enterprise. In addition
to making goods and services distinctive, the owner of a mark may earn
revenues from the use of the mark by licensing its use by another or
though franchising agreements. One can be an owner of a trademark or
service mark, whether or not it is registered. This is common law
protection. Registration is proof of ownership and makes ownership
rights easier to enforce. The basic question in lawsuits over marks is
whether or not the general public is likely to be confused as to the origin
of the service or product.

c) Geographic Indications;

Indications which identify a good as originating in the territory of

a Member, or a region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially attributable
to its geographic origin. Geographical indications are quality indicators,
are widely used by producers, distributors and retailers as an advertising
or promotional tool to attract consumers and investors.

d) Industrial Designs;

The industrial design as any composition of lines or colors or any

three-dimensional form, whether or not associated with lines or colors;
provided that such composition or form gives a special appearance to and
can serve as pattern for an industrial product or handicraft. Simply put,
it is that aspect of a useful article which is ornamental or aesthetic.
 Generally, industrial designs are important for handicrafts, jewelry,
mobile phones, packaging materials, furniture, electrical appliances,
accessories, boxes, architectural structures and other products. It is
important to protect an industrial design because it enables the owner to
prevent others from copying or imitating the industrial design without
his consent. He can also prevent parties from importing, selling,
manufacturing or making products bearing his industrial design

e) Patents;

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.
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.

f) Layout-Designs (Topographies) of Integrated Circuits; and

Integrated Circuits are commonly known as chips or micro-

chips. They are the electronic circuits in which all the components
(transistors, diodes and resistors) have been assembled in a certain order
on the surface of a thin semi-conductor material (usually silicon).

g) Protection of Undisclosed Information (n, TRIPS)

This refers to a process, formula, tool, plan, mechanism or

compound that is only known by the owner or disclosed to a
selected number of employees. The trade secret is used to produce
a service or product with commercial value.
 Related Cases:

1. G.R. No. 204605, 19 July 2016, EN BANC (Bersamin, J.):

INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. HON.
PAQUITO OCHOA, IN HIS CAPACITY AS EXECUTIVE SECRETARY, ET AL.

FACTS:
The Madrid System for the International Registration of Marks (Madrid
System), which is the centralized system providing a one-stop solution for
registering and managing marks worldwide, allows the trademark owner to file
one application in one language, and to pay one set of fees to protect his mark
in the territories of up to 97 member-states. The Madrid System is governed by
the Madrid Agreement, concluded in 1891, and the Madrid Protocol, concluded
in 1989. The Madrid Protocol has two objectives, namely: (1) to facilitate
securing protection for marks; and (2) to make the management of the
registered marks easier in different countries.
In 2004, the Intellectual Property Office of the Philippines (IPOPHL),
began considering the country's accession to the Madrid Protocol. After a
campaign for information dissemination, and a series of consultations with
stakeholders, IPOPHL ultimately arrived at the conclusion that accession would
benefit the country and help raise the level of competitiveness for Filipino
brands. Hence, it recommended to the Department of Foreign Affairs (DFA) that
the Philippines should accede to the Madrid Protocol. After its own review, the
DFA endorsed to the President the country's accession to the Madrid Protocol.
The DFA determined that the Madrid Protocol was an executive agreement.
On March 27, 2012, President Benigno C. Aquino III ratified the Madrid
Protocol through an instrument of accession, which was deposited with the
Director General of the World Intellectual Property Organization (WIPO) on
April 25, 2012. The Madrid Protocol entered into force in the Philippines on July
25, 2012.
Thus, the Intellectual Property Association of the Philippines (IPAP)
commenced this special civil action for certiorari and prohibition to challenge
the validity of the President's accession to the Madrid Protocol without the
concurrence of the Senate. According to the IPAP, the Madrid Protocol is a
treaty, not an executive agreement; hence, respondent DFA Secretary Albert
Del Rosario acted with grave abuse of discretion in determining the Madrid
Protocol as an executive agreement. Also, the IPAP has argued that the
implementation of the Madrid Protocol in the Philippines; specifically the
processing of foreign trademark applications, conflicts with the Intellectual
Property Code of the Philippines.

ISSUE
Is the Madrid Protocol unconstitutional for lack of concurrence by the
Senate?

RULING:
NO. The Court finds and declares that the Presidents ratification is valid
and constitutional because the Madrid Protocol, being an executive agreement
as determined by the Department of Foreign Affairs, does not require the
concurrence of the Senate.
Under prevailing jurisprudence, the registration of trademarks and
copyrights have been the subject of executive agreements entered into without
the concurrence of the Senate. Some executive agreements have been
concluded in conformity with the policies declared in the acts of Congress with
respect to the general subject matter.
Accordingly, DFA Secretary Del Rosarios determination and treatment of
the Madrid Protocol as an executive agreement; being in apparent
contemplation of the express state policies on intellectual property as well as
within his power under Executive Order No. 459, are upheld.
The Court observed that there are no hard and fast rules on the propriety
of entering into a treaty or an executive agreement on a given subject as an
instrument of international relations. The primary consideration in the choice
of the form of agreement is the parties intent and desire to craft their
international agreement in the form they so wish to further their respective
interests. The matter of form takes a back seat when it comes to effectiveness
and binding effect of the enforcement of a treaty or an executive agreement;
inasmuch as all the parties; regardless of the form, become obliged to comply
conformably with the time-honored principle of pacta sunt servanda. The
principle binds the parties to perform in good faith their parts in the
agreements.
 2. UFC PHILIPPINES v BARRIO FIESTA GR No. 198889

FACTS:
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and
existing under Philippine laws. It is the emergent entity in a merger with UFC
Philippines Inc. that was completed on Feb. 11, 2009.

On April 4, 2002, respondent Barrio Fiesta Manufacturing Coroporation filed

ofr the mark PAPA BOY & DEVICE for goods under Class 30, specifically for
lechon sauce. The Intellectual Property Office (IPO) published said
application for opposition in the IP Phil e-Gazette on Sept. 8 2006.

Petitioner Nutri-asia filed with the IPO Bureau of Legal Affairs a Verified Notice
of Opposition to the application alleging that the mark PAPA is for use on
banana catsup and other similar goods first used in 1954 by Neri Papa.

After using PAPA for 27 years, Neri Papa subsequently assigned the mark to
Herman Reyes who filed an application to register the said PAPA mark for use
on banana catsup, chili sauce, achara, banana chips and instate ube powder.

On November 7, 2006 the registration was assigned to Nutri-Asia. The company

has not abandoned the use of the mark PAPA and the variations (such as
PAPA BANANA CATSUP label and PAPA KETSARAP.) thereof as it continued
the use of the mark up to the present. Petitioner further allege that PAPA BOY
& DEVICE is identical to the mark PAPA owned by Nutri-Asia and duly
registered in its favor. The petitioner contends that the use of PAPA by the
respondent-applicant would likely result in confusion and deception. The
consuming public, particularly the unwary customers, will be deceived,
confused, and mistaken into believing that respondent-applicant's goods come
from Nutri-Asia, which is particularly true since Southeast Asia Food Inc, sister
company of Nutri-Asia, have been major manufacturers and distributors of
lechon sauce since 1965 under the registered mark Mang Tomas.

The IPO-BLA rejected Barrio Fiestas application for PAPA BOY & DEVICE.
Respondent appealed before the IPO Director General, but the appeal was
denied. The CA, however, reversed the decision of the IPO-BLA and ruled to
grant the application.
Petitioner brought the case before the Supreme Court, seeking the reversal of
the decision and resolution of the CA.

ISSUE:
Whether or not by using the dominant feature of Nutri-Asias PAPA mark
for PAPA BOY & DEVICE would constitute trademark infringement.

RULING:
Petition has merit.

In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., 43 we defined a trademark as

"any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those manufactured, sold, or dealt
by others." We held that a trademark is "an intellectual property deserving
protection by law."

The Intellectual Property Code provides:

Section 147. Rights Conferred. - 147.1. The owner of a registered
mark shall have the exclusive right to prevent all third parties not having
the owner's consent from using in the course of trade identical or similar
signs or containers for goods or services which are identical or similar to
those in respect of which the trademark is registered where such use
would
result in a likelihood of confusion. In case of the use of an identical sign
for identical goods or services, a likelihood of confusion shall be
presumed.

To determine the likelihood of confusion, the Rules of Procedure for Intellectual

Property Rights Cases, Rule 18, provides:
RULE 18
Evidence in Trademark Infringement and Unfair Competition Cases
SECTION 1. Certificate of Registration. - A certificate of
registration of a mark shall be prima facie evidence of:
a) the validity of the registration;
b) the registrant's ownership of the mark; and
c) the registrant's exclusive right to use the same in connection
with the goods or services and those that are related thereto
specified in the certificate.
SECTION 3. Presumption of Likelihood of Confusion. -
Likelihood of confusion shall be presumed in case an identical sign or
mark is used for identical goods or services.

SECTION 4. Likelihood of Confusion in Other Cases. - In

determining whether one trademark is confusingly similar to or is a
colorable imitation of another, the court must consider the general
impression of the ordinary purchaser, buying under the normally
prevalent
conditions in trade and giving the attention such purchasers usually give
in
buying that class of goods. Visual, aural, connotative comparisons and
overall impressions engendered by the marks in controversy as they are
encountered in the realities of the marketplace must be taken into
account.
Where there are both similarities and differences in the marks, these
must
be weighed against one another to see which predominates.

In determining likelihood of confusion between marks used on

non-identical goods or services, several factors may be taken into
account,
such as, but not limited to:
a) the strength of plaintiffs mark;
b) the degree of similarity between the plaintiffs and the defendant's
marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.

"Colorable imitation" denotes such a close or ingenious imitation

as to be calculated to deceive ordinary persons, or such a resemblance to
the original as to deceive an ordinary purchaser giving such attention as
a
purchaser usually gives, as to cause him to purchase the one supposing it
 to be the other.

SECTION 5. Determination of Similar and Dissimilar Goods or

Services. - Goods or services may not be considered as being similar or
dissimilar to each other on the ground that, in any registration or
publication by the Office, they appear in different classes of the Nice
Classification.

On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word,
name, symbol, emblem, sign, or device, or any combination thereof, adopted
and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by another. A
trademark, being a special property, is afforded protection by law. But for one
to enjoy this legal protection, legal protection ownership of the trademark
should right be established.

The ownership of a trademark is acquired by its registration and its actual use
by the manufacturer or distributor of the goods made available to the
purchasing public. The prima facie presumption brought by the registration of
a mark may be challenge in an appropriate action. Moreover the protection may
likewise be defeated by evidence of prior use by another person. This is because
the trademark is a creation of use and belongs to one who first used it in trade
or commerce.

The essential element of infringement under the law is that the infringing mark
is likely to cause confusion. There are two tests used to determine likelihood of
confusion: the dominancy test and the holistic test. The dominancy test applies
to this case.

The Dominancy Test

focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and
deception
in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered
suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving
little weight to factors like prices, quality, sales outlets, and market
segments.
 The Totality Test
The totality or holistic test is contrary to
the elementary postulate of the law on trademarks and
unfair competition that confusing similarity is to be
determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the
marks in controversy as they are encountered in the
realities of the marketplace. The totality or holistic test only
relies on visual comparison between two trademarks
whereas the dominancy test relies not only on the visual but
also on the aural and connotative comparisons and overall
impressions between the two trademarks.

There are two types of confusion in trademark infringement: confusion of

goods and confusion of business. In Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, the Court distinguished the two types
of confusion:

Callman notes two types of confusion. The first is the

confusion of goods "in which event the ordinarily prudent
purchaser would be induced to purchase one product in the
belief that he was purchasing the other." In which case,
"defendant's goods are then bought as the plaintiff's, and
the poorer quality of the former reflects adversely on the
plaintiff's reputation." The other is the confusion of
business: "Here though the goods of the parties are
different, the defendant's product is such as might
reasonably be assumed to originate with the plaintiff, and
the public would then be deceived either into that belief or
into the belief that there is some connection between the
plaintiff and defendant which, in fact, does not exist."

In relation to this, the court has held that the registered trademark owner may
use his mark on the same or similar products, in different segments of the
market, and at different price levels depending on variations of the products for
specific segments of the market. The Court has recognized that the registered
trademark owner enjoys protection in product and market areas that are the
normal potential expansion of his business. The scope of protection thus
extends to protection from infringers with related goods.
It cannot be denied that since petitioners product, catsup, and respondents
product, lechon sauce, are both household products in similar packaging the
public could think that petitioner Nutri-Asia has expanded its product mix to
include lechon sauce, which is not unlikely considering the nature of
petitioners business.

Moreover, the CA erred in finding that PAPA is a common term of endearment

for father and therefore could not be claimed for exclusive use and ownership.
What was registered was not Papa as denied in dictionary, but Papa as the
last name of the owner of the brand, making it a registrable mark.

Petition granted.

3. Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock

Orthopaedie GMBH) vs. Philippine Stock Expo Marketing
Corporation 15 SCRA 469

FACTS:

Petitioner, a corporation duly organized and existing under the laws of

Germany applied for various trademark registrations before the Intellectual
Property Office (IPO). However, the applications were suspended in view of the
existing registration of the mark BIRKENSTOCK AND DEVICE under
Registration No. 56334 dated October 21, 1993 in the name of Shoe Town
International and Industrial Corporation, the predecessor-in-interest of
respondent Philippine Shoe Expo Marketing Corporation.

On May 27, 1997, petitioner filed a petition (Cancellation Case) for

cancellation of Registration No. 564334 on the ground that it is the lawful and
rightful owner of the Birkenstock marks. During its pendency, however,
respondent and/or it predecessor-in-interest failed to file the required 10th
Year Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on
or before October 21, 2004, thereby resulting the cancellation of such mark.
Accordingly, the cancellation case was dismissed for being moot and academic
thereby paving the way for the publication of the subject applications.
 In response, respondent filed with the Bureau of Legal Affairs (BLA) of
the IPO three separate verified notices of opposition to the subject applications
docketed as Inter Partes Cases claiming, among others, it, together with its
predecessor-in-interest, has been using the Birkenstock marks in the
Philippines for more than 16 years through the mark BIRKENSTOCK AND
DEVICE. In its Decision, the BLA of the IPO sustained respondents opposition,
thus ordering the rejection of the subject applications. Aggrieved, petitioner
appealed to the IPO Director General whereby in its decision, the latter
reversed and set aside the ruling of the BLA thus allowing the registration of
the subject applications.

Finding the IPO Director Generals reversal of the BLA unacceptable,

respondent filed a petition for review with the Court of Appeals. In its decision
dated June 25, 2010, the CA reversed and set aside the ruling of the IPO Director
General and reinstated that of the BLA. The petitioner filed a Motion for
Reconsideration but was denied by the CA. Hence , this petition to the Supreme
Court.

ISSUE:

1. Whether or not the petitioners documentary evidence, although

photocopies, are admissible in court?
2. Whether or not the subject marks should be allowed registration in the
name of the petitioner?

RULING:

1. The court ruled yes. It is a well-settled principle that the rules of

procedure are mere tools aimed at facilitating the attainment of justice,
rather than its frustration. A strict and rigid application of the rules must
always be eschewed when it would subvert the primary objective of the
rules, that is, to enhance fair trials and expedite justice. In the light of this,
Section 5 of the Rules on Inter Partes Proceedings provides that, The
Bureau shall not be bound by strict technical rules of procedure and
evidence but may adopt, in the absence of any applicable rule herein, such
mode of proceedings which is consistent with the requirements of fair
play and conducive to the just, speedy and inexpensive disposition of
cases, and which will the Bureau the greatest possibility to focus on the
contentious issues before it.
 In the case at bar, it should be noted that the IPO had already obtained
the originals of such documentary evidence in the related Cancellation
Case earlier before it. Under the circumstance and the merits of the
instant case as will be subsequently discussed, the Court holds that the
IPO Director Generals relaxation of procedure was a valid exercise of his
discretion in the interest of substantial justice.

2. The court ruled in favour of the petitioner. Under Section 12 of Republic

Act 166, it provides that, Each certificate of registration shall remain in
force for twenty years: Provided, that the registration under the
provisions of this Act shall be cancelled by the Director, unless within one
year following the fifth, tenth and fifteenth anniversaries of the date of
issue of the certificate of registration, the registrant shall file in the Patent
Office an affidavit showing that the mark or trade-name is still in use or
showing that its non-use is due to special circumstance which excuse
such non-use and is not due to any intention to abandon the same, and
pay the required fee.

In the case at bar, respondent admitted that it failed to file the 10 th Year
DAU for Registration No. 56334 within the requisite period, or on or
before October 21, 2004. As a consequence, it was deemed to have
abandoned or withdrawn any right or interest over the mark
BIRKENSTOCK. It must be emphasized that registration of a trademark,
by itself, is not a mode of acquiring ownership. If the applicant is not the
owner of the trademark, he has no right to apply for its registration.
Registration merely creates a prima facie presumption of the validity of
the registration. Such presumption, just like the presumptive regularity
in the performance of official functions, is rebuttable and must give way
to evidence to the contrary. Besides, petitioner has duly established its
true and lawful ownership of the mark BIRKENSTOCK. It submitted
evidence relating to the origin and history of BIRKENSTOCK and it use
in commerce long before respondent was able to register the same here
in the Philippines. Petitioner also submitted various certificates of
registration of the mark BIRKENSTOCK in various countries and that it
has used such mark in different countries worldwide, including the
Philippines.
SOURCES:
http://www.ovcrd.upd.edu.ph/up-intellectual-property/ipr/
http://www.wipo.int/patents/en/topics/integrated_circuits.html
http://www.lawphil.net/judjuris/juri2013/nov2013/gr_194307_2013.html
https://definitions.uslegal.com/i/intellectual-property