LAW ON INTELLECTUAL PROPERTY  Trademark Law
Atty. Risel G. Castillo-Taleon  Copyright Law
MIDTERMS
Introduction
 Paris Convention on Protection of Intellectual Property
 RA 166 – Trademark Law
 RA 165 – Patent Law
 President Marcos promulgated PD 72 – Copyright Law and
other neighboring rights such as those granted to
musicians and performers
 General Agreement on Tariffs and Trade
o TRIPS agreement to protect Intellectual
Property. Some provision were different from
Treaty of Paris
 Patent – used to be protected for the span of 17 years
from the date of the grant  It is now 20 years from the
date of filing
 Because of the need to codify the requirements under the
Paris Convention, GATT, and TRIPS agreement, RA 8293 or
the Intellectual Property Code was enacted
 TRIPS Agreement required the establishment of IPR Office
headed by a director general
 The IPC does not contain a bureau on copyright. Instead,
Copyright must be registered with the National Library 
Bureau of Patents  Now with the IP Office.
 Come the entry of pirated shirts from China. All things fake
were being manufactured in the PH. We were watch listed
by the U.S. We had to intensify our drive against piracy.
Thus, the Optical Media Act was enacted creating an
Optical Media Board in order to bend to the dictates of
industrial countries
 Protection of IP is TERRITORIAL – your registration in the
Philippines does NOT protect your IP in another country if
you did not register it there. Thus, if you have a mark that
you want to register, you must register it in each and every
country. You need to hire a lawyer in each country to
assist in the registration.
o However, the Madrid Protocol system permits
the filing, registration and maintenance of trade
mark rights in more than one jurisdiction,
provided that the target jurisdiction is a party to
the system. Here, you only need to list down the
countries in which you want your trademark
protected and pay the corresponding filing fees.
If rejected, this is the time you go directly to
each country and hire a lawyer there.
o There was a debate that Madrid Protocol is a
treaty which requires ratification from the
Senate. However, the Senate did not ratify.
Hence, a petition was filed in the SC. However,
this petition was denied for the reason that it is
the choice of the executive department to
determine what is a treaty or an executive
agreement. In this case, the President treated it
as the latter. Thus, concurrence of the congress
is not required
Q: What comprises the Law on Intellectual Property?
 Intellectual Property Code – R.A. 8293
o Took effect on January 1, 1998
 Patent Law
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Q: What is Intellectual Property?
 It refers to “CREATIONS OF THE MIND”
 Inventions, literary and artistic works, symbols, names,
images, and designs used in commerce. (ILAWS-NID)
 Legal rights which result from INTELLECTUAL ACTIVITY in
the industrial, scientific, literary, and artistic (ISLA) fields
Q: Are ideas or conceptions protected by law?
 NO. Even if embodied in a work, news, other mere items
of press information or official text, translation, or work of
government ARE NOT PROTECTED BY LAW
I. INTELLECTUAL PROPERTY RIGHTS IN GENERAL
1. INTELLECTUAL PROPERTY RIGHTS
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
[Republic Act No. 8293]
Q: What comprises of Intellectual Property Rights?
 Sec. 4. Definitions.- 4.1. The term "intellectual property
rights" consists of:
o [a] Copyright and Related Rights;
o [b] Trademarks and Service Marks;
o [c] Geographic Indications;
o [d] Industrial Designs;
o [e] Patents;
o [f] Layout-Designs (Topographies) of Integrated
Circuits; and
o [g] Protection of Undisclosed Information
[TRIPS].

Q: What is COPYRIGHT?
 It is confined to LITERARY or ARTISTIC work which are
ORIGINAL CREATIONS in the literary or artistic domain
PROTECTED from the moment of creation.
Q: What are TRADEMARKS OR SERVICE MARKS?
 Any VISIBLE SIGN capable of distinguishing the GOODS and
SERVICES of an enterprise. It shall include STAMPED or
MARKED container of goods
Q: What are GEOGRAPHIC INDICATIONS?
 It identifies a GOOD originating in the territory of a TRADE-
RELATED ASPECTS of INTELLECTUAL PROPERTY RIGHTS
(TRIPS) MEMBER, or a region or locality in that territory,
where a given QUALITY, REPUTATION, or other
CHARACTERSTIC of the good is essentially attributable to
its geographical origin
Q: What are INDUSTRIAL DESIGNS?
 Any composition of LINES or COLORS or any 3-D FORM,
whether or not associated with lines or colors
 Such composition or form should give a SPECIAL
APPEARANCE to and can serve as a PATTERN for an
industrial product or handicraft
Q: What PATENTS?
 PATENTABLE INVENTION – any TECHNICAL SOLUTION of a
problem in ANY FIELD of human activity which is NEW,
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 involves an INVENTIVE STEP, and is INDUSTRIALLY
APPLICABLE
Q: What are LAYOUT DESIGNS? What are INTEGRATED CIRCUITS?
 LAYOUT DESIGN (TOPOGRAPHIES) – A 3-D DISPOSITION,
however expressed, of the ELEMENTS, at least 1 of which
is an ACTIVE ELEMENT,
o And of some or all the 3-D disposition prepared
for an INTEGRATED CIRCUIT intended for
manufacture 
o Must be ORIGINAL
 ORIGINAL – they are the result of their
CREATOR’S OWN INTELLECTUAL
EFFORT and are NOT COMMONPLACE
among creators of layout designs and
manufacturers of layout circuits at the
time of creation.
 INTEGRATED CIRCUITS – it is a PRODUCT in its FINAL
FORM or an IMMEDIATE FORM,
o In which the elements, at least 1 of which is an
ACTIVE ELEMENT,
o And some or all of the INTERCONNECTIONS are
integrally formed in and/or on a piece of
material which is intended to perform an
ELECTRIC FUNCTION
Q: What is UNDISCLOSED INFORMATION?
 Information which is:
o SECRET – not generally known or readily
available to persons within the obligation which
normally deals with the kind of information in
question
o Has COMMERCIAL VALUE – because it is a secret
o Subject to REASONABLE STEPS under the
circumstances
 By the person lawfully IN CONTROL of
the information to keep it in secret
Q: What are TECHNOLOGY TRANSFER ARRANGEMENTS?
 4.2. The term "technology transfer arrangements" refers
to contracts or agreements involving the transfer of
systematic knowledge for the manufacture of a product,
the application of a process, or rendering of a service
including management contracts;
o and the transfer, assignment or licensing of all
forms of intellectual property rights, including
licensing of computer software except computer
software developed for mass market.
 NATURE: Licensing Contract
 LICENSOR: Intellectual Property Rights Owner
 LICENSEE: 2nd party who was granted authority to
commercially exploit the same intellectual property right
Q: Are TECHNLOGICAL TRANSFER ARRANGEMENTS the same as
LICENSING CONTRACTS?
 NO. TTA’s are merely in the nature of licensing contract.
4.3. The term "Office" refers to the Intellectual Property Office
created by this Act.
 copyright and patents are DIFFERENT intellectual property
4.4 The term "IPO Gazette" refers to the gazette published by the
Office under this Act.
A. RIGHT OF A FOREIGNER TO SUE FOR PROTECTION OF IP RIGHTS
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Q: Can a foreign corporation sue in the Philippines an action
involving its intellectual property rights?
 YES, under Section 3 and Section 160
 Section. 3 provides for the right to sue an action for the
enforcement of INTELLECTUAL PROPERTY RIGHTS or
REPRESSION OF UNFAIR COMPETITION.
o Requisites:
 1. The person is a NATIONAL or
DOMICILED or has an effective
industrial ESTABLISHMENT in a foreign
country
 2. The foreign country is a PARTY to a
convention, treaty or agreement
relating to IPR or repression of unfair
competition, to which the Philippines
is also a PARTY
 OR if the foreign country also
extends RECIPROCAL RIGHTS
to PH nationals
 Sec. 3. International Conventions and Reciprocity. - Any
person who is a national or who is domiciled or has a real
and effective industrial establishment in a country which is
a party to any convention, treaty or agreement relating to
intellectual property rights or the repression of unfair
competition, to which the Philippines is also a party, or
extends reciprocal rights to nationals of the Philippines by
law, shall be entitled to benefits to the extent necessary to
give effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner
of an intellectual property right is otherwise entitled by
this Act.
 Sec. 160 provides for the right to sue for an action of
enforcement of TRADE OR SERVICE MARK.
o Requisites:
 1. The foreign national or juridical
person must comply with the
requirements under Sec. 3
 2. Does NOT ENGAGE IN BUSINESS in
the Philippines
 Note: W/N it is licensed to do
business in the Philippines.
 Sec. 160. Right of Foreign Corporation to Sue in Trademark
or Service Mark Enforcement Action.- Any foreign national
or juridical person who meets the requirements of Section
3 of this Act and does not engage in business in the
Philippines may bring a civil or administrative action
hereunder for opposition, cancellation, infringement,
unfair competition, or false designation of origin and false
description, whether or not it is licensed to do business in
the Philippines under existing laws.
2. DIFFERENCES BETWEEN COPYRIGHTS, TRADEMARKS, AND
PATENT
Q: What is the difference between COPYRIGHT, TRADEMARKS, and
PATENT?
 In the case of ELIDAD KHO VS. CA, the SC held: trademark,
rights that cannot be interchanged with one another.
COPYRIGHT TRADEMARK PATENT
A TRADEMARK is Meanwhile, the PATENTABLE
any visible sign scope of a INVENTIONS, on the
capable of COPYRIGHT is other hand, refer to
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distinguishing the confined to literary any technical   EXEMPTION from any of the above
goods (trademark) and artistic works solution of a requirements may be allowed by the
or services (service which are original problem in any field Documentation, Information and
mark) of an intellectual creations of human activity Technology Transfer Bureau (DITTB) after
enterprise and shall in the literary and which is new, evaluation thereof on a case by case basis
include a stamped artistic domain involves an inventive
or marked container protected from the step and is 1. PROHIBITED CLAUSES
of goods. moment of their industrially
creation. applicable. Q: What are the PROHOBITED CLAUSES in a VLC? (2010 Bar: State 3
In relation thereto, a Prohibited Clauses)
TRADE NAME means Sec. 87. Prohibited Clauses. - Except in cases under Section 91, the
the name or following provisions shall be deemed PRIMA FACIE to have an
designation ADVERSE EFFECT on COMPETITION and TRADE:
identifying or  87.1. Those which impose upon the licensee the obligation
distinguishing an to acquire from a specific source capital goods,
enterprise. intermediate products, raw materials, and other
technologies, or of permanently employing personnel
3. TECHNOLOGY TRANSFER ARRANGEMENTS indicated by the licensor;
 87.2. Those pursuant to which the licensor reserves the
A. VOLUNTARY LICENSE CONTRACT right to fix the sale or resale prices of the products
manufactured on the basis of the license;
Chapter IX 
Voluntary Licensing  87.3. Those that contain restrictions regarding the volume
and structure of production;
Q: What is a VOLUNTARY LICENSING CONTRACT?  87.4 Those that prohibit the use of competitive
 A Voluntary Licensing Contract is an agreement for the use of technologies in a non-exclusive technology transfer
any Intellectual Property Right. agreement;
o Includes franchising agreement  87.5. Those that establish a full or partial purchase option
o I.e. the contract for the use of trademark, service in favor of the licensor;
mark, or technology of McDo, iHop, etc.  87.6. Those that obligate the licensee to transfer for free
o Includes Distributorship Right to exclusively distribute to the licensor the inventions or improvements that may
products using the mark of another be obtained through the use of the licensed technology;
o So long as it is a contract for the use of any  87.7. Those that require payment of royalties to the
intellectual property right, it is a Licensing Agreement owners of patents for patents which are not used;
o Thus, it must comply with the prohibited clauses and  87.8. Those that prohibit the licensee to export the
mandatory provisions  IN ORDER TO BE VALID licensed product unless justified for the protection of the
BETWEEN THE PARTIES legitimate interest of the licensor such as exports to
o Also, it must be registered with the IPO  IN ORDER countries where exclusive licenses to manufacture and/or
TO BE BINDING AGAINST 3RD PERSONS distribute the licensed product(s) have already been
granted;
Sec. 85. Voluntary License Contract. - To encourage the transfer and  87.9. Those which restrict the use of the technology
dissemination of technology, prevent or control practices and supplied after the expiration of the technology transfer
conditions that may in particular cases constitute an abuse of arrangement, except in cases of early termination of the
intellectual property rights having an adverse effect on competition technology transfer arrangement due to reason(s)
and trade, all technology transfer arrangements shall comply with attributable to the licensee;
the provisions of this Chapter.  87.10. Those which require payments for patents and
other industrial property rights after their expiration,
Q: What are the rights of a licensee in a VLC? termination arrangement;
 Sec. 90. Rights of Licensee. - The licensee shall be entitled to  87.11. Those which require that the technology recipient
exploit the subject matter of the technology transfer shall not contest the validity of any of the patents of the
arrangement during the whole term of the technology transfer technology supplier;
arrangement  87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
Q: Who are exempt from the requirements for a VLC? transferred technology to local conditions or to initiate
 Sec. 91. Exceptional Cases. - In exceptional or meritorious cases research and development programs in connection with
where SUBSTANTIAL BENEFITS will accrue to the economy, such new products, processes or equipment;
as  87.13. Those which prevent the licensee from adapting the
o (HIREP) imported technology to local conditions, or introducing
o High technology content, innovation to it, as long as it does not impair the quality
o Increase in foreign exchange earnings, standards prescribed by the licensor;
o Employment generation,  87.14. Those which exempt the licensor for liability for
o Regional dispersal of industries and/or substitution non-fulfillment of his responsibilities under the technology
with or use of local raw materials, or transfer arrangement and/or liability arising from third
o In the case of Board of Investments, registered
companies with pioneer status,
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 party suits brought about by the use of the licensed
product or the licensed technology; and
 87.15. Other clauses with equivalent effects
2. MANDATORY PROVISIONS
Q: What are the MANDATORY PROVISIONS in a VLC? (2010 Bar: Are
there Mandatory Provisions in VLC?)
Sec. 88. Mandatory Provisions. - The following provisions shall be
included in voluntary license contracts:
 88.1. That the laws of the Philippines shall govern the
interpretation of the same and in the event of litigation,
the venue shall be the proper court in the place where the
licensee has its principal office;
 88.2. Continued access to improvements in techniques and
processes related to the technology shall be made
available during the period of the technology transfer
arrangement;
 88.3. In the event the technology transfer arrangement
shall provide for arbitration, the Procedure of Arbitration
of the Arbitration Law of the Philippines or the Arbitration
Rules of the United Nations Commission on International
Trade Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of Commerce
(ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; and
 88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor.
B. COMPULSORY LICENSING
1. GROUNDS
Chapter X 
 after the petitioner has made EFFORTS TO OBTAIN
COMPULSORY LICENSING
Q: What are the grounds for the issuance of a COMPULSORY
LICENSE?
Sec. 93. Grounds for Compulsory Licensing. - The Director of Legal
Affairs may grant a license to exploit a patented invention, even
without the agreement of the patent owner, in favor of any person
who has shown his capability to exploit the invention, under any of
the following circumstances:
 93.1. National EMERGENCY or other circumstances of
extreme urgency;
 93.2. Where the PUBLIC INTEREST, in particular, national
security, nutrition, health or the development of other
vital sectors of the national economy as determined by the
appropriate agency of the Government, so requires; or
 93.3. Where a JUDICIAL OR ADMINISTRATIVE BODY HAS
DETERMINED that the manner of exploitation by the
owner of the patent or his licensee is ANTI-COMPETITIVE;
or
 93.4. In case of PUBLIC NON-COMMERCIAL USE of the
patent by the patentee, without satisfactory reason;
 93.5. If the patented invention is NOT BEING WORKED IN
THE PHILIPPINES ON A COMMERCIAL SCALE, although
capable of being worked, without satisfactory reason:
Provided, That the importation of the patented article
shall constitute working or using the patent.
Sec. 96. Compulsory Licensing of Patents Involving Semi-Conductor
Technology. - In the case of compulsory licensing of patents
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involving semi-conductor technology, the license may only be
granted in case of public non-commercial use or to remedy a
practice determined after judicial or administrative process to be
anti-competitive.
Sec. 97. Compulsory License Based on Interdependence of Patents. -
If the invention protected by a patent, hereafter referred to as the
"second patent," within the country cannot be worked without
infringing another patent, hereafter referred to as the "first patent,"
granted on a prior application or benefiting from an earlier priority,
a compulsory license may be granted to the owner of the second
patent to the extent necessary for the working of his invention,
subject to the following conditions:
 97.1. The invention claimed in the second patent involves
an important technical advance of considerable economic
significance in relation to the first patent;
 97.2. The owner of the first patent shall be entitled to a
cross-license on reasonable terms to use the invention
claimed in the second patent;
 97.3. The use authorized in respect of the first patent shall
be non-assignable except with the assignment of the
second patent; and
 97.4. The terms and conditions of Sections 95, 96 and 98
to 100 of this Act.
2. REQUIREMENT TO OBTAIN LICENSE
Q: What are the requirements to obtain a license?
o 1. MUST FILE A PETITION WITH THE IPO
o 2. GR: EFFORTS TO OBTAIN AUTHORIZATION were made
as provided for in Sec. 95. (This only applies if the IPR
owner REFUSES to give authorization)
o Sec. 95. Requirement to Obtain a License on Reasonable
Commercial Terms. - 95.1. The license will only be granted
AUTHORIZATION from the patent owner on REASONABLE
COMMERCIAL TERMS AND CONDITIONS but such efforts
have NOT BEEN SUCCESSFUL within a reasonable period of
time.
o EXPN:
o 95.2. The requirement under Subsection 95.1
shall NOT APPLY in the following cases:
 (a) Where the petition for compulsory
license seeks to remedy a practice
determined after judicial or
administrative process to be anti-
competitive;
 (b) In situations of national emergency
or other circumstances of extreme
urgency;
 (c) In cases of public non-commercial
use.
o 95.3. In situations of national emergency or other
circumstances of extreme urgency, the right holder shall
be NOTIFIED as soon as reasonably practicable.
o 95.4. In the case of public non-commercial use, where the
government or contractor, without making a patent
search, knows or has demonstrable grounds to know that
a valid patent is or will be used by or for the government,
THE RIGHT HOLDER SHALL BE INFORMED PROMPTLY
o 3. THE PETITION MUST BE FILED WITHIN THE
PRESCRIPTIVE PERIOD under Sec. 94.
C. PERIOD TO FILE A PETITION
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Sec. 94. Period for Filing a Petition for a Compulsory License. –
94.1. A compulsory license may not be applied for on the ground
stated in Subsection 93.5 before the expiration of a period of four
(4) years from the date of filing of the application or three (3) years
from the date of the patent whichever period expires last.
94.2. A compulsory license which is applied for on any of the
grounds stated in Subsections 93.2, 93.3, and 93.4 and Section 97
may be applied for at any time after the grant of the patent.
II. PATENTS
Patent
 Q: What is the difference between a patentable invention
and other intellectual property rights such as Industrial
Design and Undisclosed Information?
o The latter does not require an “inventive step”.
Thus, they have shorter period of protection
 A Patent is a right granted to the inventor of a process,
product or improvement
 In the IPC, the tenure of protection is 20 years from the
date of the filing of the application
o From this time, all rights shall pertain to the
patentee (We say to the patentee instead of
inventor because it is not necessarily granted to
the inventor. Reason: it may be transferred)
 Ex: Paracetamol. The right to manufacture is subject of
annuity (annual fees). Otherwise, the patent lapses and
the public can make use of it. Also, after the lapse of 20
years, anyone can use it.
1. PATENTABLE INVENTIONS
Q: What are the Conditions of Patentability?
 1. Any TECHNICAL SOLUTION of a problem in any field of
human activity
o Ex of such problems: getting sick  medicine,
need for communication  cellphone
 2. Must be NOVEL (or new)
o When it does NOT form a PRIOR ART
 3. Must involve an INVENTIVE STEP (most important)
o Should not be obvious to a person skilled in the
art
o Ex: the spraying over the top of crops does not
involve an inventive step. This is customarily
done
 4. INDUSTRIALLY APPLICABLE
o May be produced or used in an industry and that
there is a market which demands such invention
Q: For instance, Miguel invented the eraser. Laida invented the
pencil. Michael put together the 2 inventions. Is this patentable?
 NO. If the combination of the patent will NOT produce
something which is different, (i.e. the culmination of which
did NOT produce ANOTHER USE) then the same is not
patentable
 In this case, the inherent elements of each patent is still
present. There is no novelty to the combination. There is
nothing unusual. There is no surprising change of the 2
patents. Thus, the same is not patentable.
 Not new; Does not involve an inventive step.
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Chapter II
PATENTABILITY
Sec. 21. Patentable Inventions. - Any technical solution of a problem
in any field of human activity which is new, involves an inventive
step and is industrially applicable shall be patentable. It may be, or
may relate to, a product, or process, or an improvement of any of
the foregoing.
Sec. 23. Novelty. - An invention shall not be considered new if it
forms part of a prior art.
Q: What constitutes PRIOR ART?
 Everything not made available to the public from the date
of filing of the application
 Sec. 24. Prior Art. - Prior art shall consist of:
o 24.1. Everything which has been made available
to the public anywhere in the world, before the
filing date or the priority date of the application
claiming the invention; and
o 24.2. The whole contents of an application for a
patent, utility model, or industrial design
registration, published in accordance with this
Act, filed or effective in the Philippines, with a
filing or priority date that is earlier than the filing
or priority date of the application: Provided, That
the application which has validly claimed the
filing date of an earlier application under Section
31 of this Act, shall be prior art with effect as of
the filing date of such earlier application:
Provided further, That the applicant or the
inventor identified in both applications are not
one and the same.
 Note: Sec. 24 must be read together with Sec. 25
 Sec. 25. Non-Prejudicial Disclosure. –
 25.1. The disclosure of information contained in the
application during the twelve (12) months preceding the
filing date or the priority date of the application shall not
prejudice the applicant on the ground of lack of novelty if
such disclosure was made by:
o (a) The inventor;
o (b) A patent office and the information was
contained
 (a) in another application filed by the
inventor and should not have been
disclosed by the office, or
 (b) in an application filed without the
knowledge or consent of the inventor
by a third party which obtained the
information directly or indirectly from
the inventor; or
o (c) A third party which obtained the information
directly or indirectly from the inventor.
 Q: For instance, a new gadget better than the iPhone was
published in FB on Feb 14, 2016 by the inventor. The next
day, the inventor applied for patent. Is this invention
patentable? Will it be considered new or a prior art?
o YES, It is considered a non-prejudicial disclosure.
Thus, it is still patentable
o It is still considered novel.
 Q: If the same was made on June 1, 2015, in FB. The
inventor filed an application today. Is the invention still
considered new?
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 o NO. It is no longer a non-prejudicial disclosure
because it is no longer within 12 months
preceding the application.
25.2. For the purposes of Subsection 25.1, "inventor" also means
any person who, at the filing date of application, had the right to the
patent.
Sec. 26. Inventive Step. - An invention involves an inventive step if,
having regard to prior art, it is not obvious to a person skilled in the
art at the time of the filing date or priority date of the application
claiming the invention.
Sec. 27. Industrial Applicability. - An invention that can be produced
and used in any industry shall be industrially applicable
2. NON-PATENTABLE INVENTIONS
Q: What are NON-PATENTABLE INVENTIONS? (Memorize)
Sec. 22. Non-Patentable Inventions. - The following shall be excluded
from patent protection:
 22.1. Discoveries, scientific theories and mathematical
methods;
 22.2. Schemes, rules and methods of performing mental
acts, playing games or doing business, and programs for
computers;
 22.3 Methods for treatment of the human or animal body
by surgery or therapy and diagnostic methods practiced on
the human or animal body. This provision shall not apply
to products and composition for use in any of these
methods;
 22.4. Plant varieties or animal breeds or essentially
biological process for the production of plants or animals.
This provision shall not apply to micro-organisms and non-
biological and microbiological processes.
o Provisions under this subsection shall not
preclude Congress to consider the enactment of
a law providing sui generis protection of plant
varieties and animal breeds and a system of
community intellectual rights protection:
 22.5. Aesthetic creations; and
 22.6. Anything which is contrary to public order or
morality.
Q: Assuming Einstein filed an application in the IPO for his theory
of relativity. If you were the examiner, will you allow his
application?
 NO, I will REJECT his application. It falls under 22.1 of the
non-patentable inventions, “scientific theory”
Q: For instance, Miguel disclosed a new method for Alzheimer’s
disease. It is a new medicine, applied by topical application and
diagnosis of disease. Assuming you are an IP lawyer, how do you
protect this new method of application, diagnosis, and the
medicine?
 You advise him to file an application for patent but only
with respect to the medicine. The application and
diagnosis are not patentable.
Q: Glutathione is a known substance which is good for the liver. It
was later on discovered to have side effects of skin whitening. Can
glutathione be patented anew as a skin whitening agent?
 NO. Mere discovery of a new use for a property is not
patentable. It does not involve an inventive step.
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 Another example of a new use for another property is
instead of ingesting a substance thru pills, it is done thru a
patch. This is not patentable. It does not involve an
inventive step.
 Before, pharmaceutical companies were in the practice of
finding new uses of the same medicine by adding a few
ingredients. This way, they can file repeatedly applications
for patent despite the lapse of the 20-year period of
protection.
 The question asked should be: Is there a substantial
improvement?  Must check the ACTIVE INGREDIENT. If it
provides for a substantial improvement, a higher efficacy
as compared before, then it could be considered as
patentable.
3. OWNERSHIP OF PATENT
A. RIGHT TO A PATENT
Chapter III 
RIGHT TO A PATENT
Q: Who has the right to the patent?
 If only made by 1 PERSON  the inventor, his heirs, or
assigns
 If made by 2 or more persons JOINTLY  owned by them
jointly
 Sec. 28. Right to a Patent. - The right to a patent belongs
to the inventor, his heirs, or assigns. When two (2) or more
persons have jointly made an invention, the right to a
patent shall belong to them jointly
 Q: What if 2 or more persons made use of the patent
SEPARATELY, who has the right to the patent?
o It depends. Whoever filed the application first
will have the right to the patent. (First-to-File
Rule)
B. FIRST-TO-FILE RULE
Q: What is the First-To-File Rule?
 Sec. 29. First to File Rule. - If two (2) or more persons have
made the invention separately and independently of each
other, the right to the patent shall belong to the person
who filed an application for such invention, or where two
or more applications are filed for the same invention, to
the applicant who has the earliest filing date or, the
earliest priority date.
Q: For instance, Miguel steals Laida’s idea. He filed an application
for patent. Laira subsequently filed a patent application. Who is
entitled to the issuance of patent?
 If all the requirements of a valid application are present,
the patent will necessarily issue in favor of Miguel.
 However, the First-To-File Rule applies when 2 or more
persons create an invention separately and
independently. It is not applied in a case of stealing the
invention of another.
 Thus, Laida is not without remedy. She has the right to file
a petition for cancellation of the patent. If the application
is still pending, she can go to the court
C. INVENTIONS CREATED PURSUANT TO A COMMISSION
Q: In the case inventions made by employee, who has the right to
the patent?
6
  IF PURSUANT TO A COMMISSION:
o Sec. 30. Inventions Created Pursuant to a
Commission. – 30.1. The person who
commissions the work shall own the patent,
unless otherwise provided in the contract.
 GR: The person who commissions the work  EMPLOYER
o Thus, if the employee is the one who invented a
process or product, he must assign it to the
employer.
 EXPN: Unless otherwise provided in the contract 
EMPLOYEE
o The usual agreement is that when an employee
invented something pursuant to a commission,
the employer shall own the patent but the
employee shall be entitled to royalties
 IF IN THE COURSE OF EMPLOYMENT:
o 30.2. In case the employee made the invention
in the course of his employment contract, the
patent shall belong to:
 (a) The EMPLOYEE, if the inventive
activity is not a part of his regular
duties even if the employee uses the
time, facilities and materials of the
employer.
 (b) The EMPLOYER, if the invention is
the result of the performance of his
regularly-assigned duties,
 EXPN: unless there is an
agreement, express or
implied, to the contrary
D. RIGHT OF PRIORITY
Q: What is the right of priority?
 Sec. 31. Right of Priority. - An application for patent filed
by any person who has previously applied for the same
invention in another country which by treaty, convention,
or law affords similar privileges to Filipino citizens, shall be
considered as filed as of the date of filing the foreign
application: Provided, That:
o (a) the local application expressly claims priority;
o (b) it is filed within twelve (12) months from the
date the earliest foreign application was filed;
and
o (c) a certified copy of the foreign application
together with an English translation is filed
within six (6) months from the date of filing in
the Philippines.
Q: For instance, Miguel made an invention which was already an
invention of Nikon Corp. without knowing that the latter had first
thought of it. The inventions were similar, though not identical.
Nikon filed an application for patent with the Japan Patent Office
on January 2, 2014. Miguel filed an application for patent with the
IPO Philippines on June 1 ,2014. On January 2, 2016, Nikon filed an
application for patent in the IPO Philippines. To whom shall the
patent be issued?
 If we follow the First-To-File Rule, the patent should be
issued in favor of Miguel
 But there is also another rule to take into consideration:
Right of Priority under Sec. 31.
o The priority right provided under the Paris
Convention requires that if patentee in one
country desires to have priority right in another
Nudibranch
country, he must file an application in the other
country within a period of 2 months from the
first application
o The period was lengthened to 13 months in the
Patent Cooperation Treaty.
o If the application was filed within the prescribed
period, the date of first application shall be
considered the date in which the second
application was filed. Thus, having a priority right
in time
o Section 31 provides for a period of 12 months
o IPC took effect on 1998. The Philippines became
a signatory of the Patent Cooperation Treaty
only in 2001.
 In this case, Nikon filed its application in Japan on January
2, 2014. It filed its application in the Philippines on January
2, 2016. There is a 2 year difference. Thus, not having filed
the same within 12 months as provided in the IPC, Nikon
does not have priority right over the patent. The patent
should issue in Miguel’s favor.
4. GROUNDS FOR CANCELLATION OF A PATENT
Chapter VI CANCELLATION OF PATENTS 
AND SUBSTITUTION OF
PATENTEE
Q: What are the grounds for cancellation of patents?
 Sec. 61. Cancellation of Patents. –
 61.1. Any interested person may, upon payment of the
required FEE, PETITION to cancel the patent or any claim
thereof, or parts of the claim, on any of the following
GROUNDS:
o (a) That what is claimed as the invention is NOT
NEW OR PATENTABLE;
o (b) That the patent DOES NOT DISCLOSE THE
INVENTION IN A MANNER SUFFICIENTLY CLEAR
AND COMPLETE for it to be carried out by any
person skilled in the art; or
o (c) That the patent is CONTRARY TO PUBLIC
ORDER OR MORALITY.
 61.2. Where the grounds for cancellation relate to some of
the claims or parts of the claim, cancellation may be
effected to such extent only.
5. REMEDY OF THE TRUE AND ACTUAL INVENTOR
Sec. 29. First to File Rule. - If two (2) or more persons have made the
invention separately and independently of each other, the right to
the patent shall belong to the person who filed an application for
such invention, or where two or more applications are filed for the
same invention, to the applicant who has the earliest filing date or,
the earliest priority date.
Chapter VII 
REMEDIES OF A PERSON WITH A RIGHT TO A PATENT
Sec. 67. Patent Application by Persons Not Having the Right to a
Patent. –
67.1. If a person referred to in Section 29 other than the applicant, is
declared by final court order or decision as having the right to the
patent, such person may, within three (3) months after the decision
has become final:
 (a) Prosecute the application as his own application in
place of the applicant;
7
  (b) File a new patent application in respect of the same
invention;
 (c) Request that the application be refused; or
 (d) Seek cancellation of the patent, if one has already been
issued.
67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis
to a new application filed under Subsection 67.1(b).
Q: What are the remedies of a true and actual inventor?
 Sec. 68. Remedies of the True and Actual Inventor. - If a
person, who was deprived of the patent without his
consent or through fraud is declared by final court order or
decision to be the true and actual inventor, the court shall
order for his SUBSTITUTION as patentee, or at the option
of the true inventor, CANCEL the patent, and award actual
and other DAMAGES in his favor if warranted by the
circumstances
Sec. 70. Time to File Action in Court. - The actions indicated in
Sections 67 and 68 shall be filed within one (1) year from the date of
publication made in accordance with Sections 44 and 51,
respectively.
6. RIGHTS CONFERRED BY A PATENTEE
Chapter VIII 
RIGHTS OF PATENTEES AND INFRINGEMENT OF
PATENTS
Q: What are the rights conferred by a patentee?
Sec. 71. Rights Conferred by Patent. –
71.1. A patent shall confer on its owner the following EXCLUSIVE
RIGHTS:
 (a) Where the subject matter of a patent is a product, to
restrain, PROHIBIT AND PREVENT any unauthorized person
or entity from making, using, offering for sale, selling or
importing that product;
 (b) Where the subject matter of a patent is a process, to
RESTRAIN, PREVENT OR PROHIBIT any unauthorized
person or entity from using the process, and from
manufacturing, dealing in, using, selling or offering for
sale, or importing any product obtained directly or
indirectly from such process.
71.2. Patent owners shall also have the right to ASSIGN, OR
TRANSFER by succession the patent, and to CONCLUDE LICENSING
CONTRACTS for the same.
Sec. 55. Annual Fees. –
55.1. To maintain the patent application or patent, an annual fee
shall be paid upon the expiration of four (4) years from the date the
application was published pursuant to Section 44 hereof, and on
each subsequent anniversary of such date. Payment may be made
within three (3) months before the due date. The obligation to pay
the annual fees shall terminate should the application be
withdrawn, refused, or cancelled.
55.2. If the annual fee is not paid, the patent application shall be
deemed withdrawn or the patent considered as lapsed from the day
following the expiration of the period within which the annual fees
were due. A notice that the application is deemed withdrawn or the
lapse of a patent for non-payment of any annual fee shall be
published in the IPO Gazette and the lapse shall be recorded in the
Register of the Office.
Nudibranch
55.3. A grace period of six (6) months shall be granted for the
payment of the annual fee, upon payment of the prescribed
surcharge for delayed payment
7. LIMITATIONS OF PATENT RIGHTS
Sec. 71. Rights Conferred by Patent. –
71.1. A patent shall confer on its owner the following exclusive
rights:
 (a) Where the subject matter of a patent is a product, to
restrain, prohibit and prevent any unauthorized person or
entity from making, using, offering for sale, selling or
importing that product;
 (b) Where the subject matter of a patent is a process, to
restrain, prevent or prohibit any unauthorized person or
entity from using the process, and from manufacturing,
dealing in, using, selling or offering for sale, or importing
any product obtained directly or indirectly from such
process.
71.2. Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the
same.
Sec. 72. Limitations of Patent Rights. - The owner of a patent has no
right to prevent third parties from performing, without his
authorization, the acts referred to in Section 71 hereof in the
following circumstances:
 72.1 Using a patented product which has been put on the
market in the Philippines by the owner of the product, or
with his express consent, insofar as such use is performed
after that product has been so put on the said market
 72.2. Where the act is done privately and on a non-
commercial scale or for a non-commercial purpose:
Provided, That it does not significantly prejudice the
economic interests of the owner of the patent;
 72.3. Where the act consists of making or using exclusively
for the purpose of experiments that relate to the subject
matter of the patented invention;
 72.4. Where the act consists of the preparation for
individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical
prescription or acts concerning the medicine so prepared;
 72.5. Where the invention is used in any ship, vessel,
aircraft, or land vehicle of any other country entering the
territory of the Philippines temporarily or accidentally:
Provided, That such invention is used exclusively for the
needs of the ship, vessel, aircraft, or land vehicle and not
used for the manufacturing of anything to be sold within
the Philippines.
A. PRIOR USER
Q: What is the right of prior user?
 Sec. 73. Prior User. –
 73.1. Notwithstanding Section 72 hereof, any prior user,
who, in good faith was using the invention or has
undertaken serious preparations to use the invention in
his enterprise or business, before the filing date or priority
date of the application on which a patent is granted, shall
have the right to continue the use thereof as envisaged in
such preparations within the territory where the patent
produces its effect.
8
73.2. The right of the prior user may only be transferred or assigned
together with his enterprise or business, or with that part of his
enterprise or business in which the use or preparations for use have
been made.
B. USE BY GOVERNMENT
Q: When may government validly use the invention even without
agreement of patent owner?
Sec. 74. Use of Invention by Government. –
74.1. A Government agency or third person authorized by the
Government may exploit the invention even without agreement of
the patent owner where:
 (a) the public interest, in particular, national security,
nutrition, health or the development of other sectors, as
determined by the appropriate agency of the government,
so requires; or
 (b) A judicial or administrative body has determined that
the manner of exploitation, by the owner of the patent or
his licensee, is anti-competitive.
74.2. The use by the Government, or third person authorized by the
Government shall be subject, mutatis mutandis, to the conditions
set forth in Sections 95 to 97 and 100 to 102.
8. PATENT INFRINGEMENT
If there is a violation of patent right  criminal action for
infringement
If an unauthorized person makes use of patent  only civil action
for infringement. Criminal action will only apply AFTER judgment
Sec. 76. Civil Action for Infringement. –
76.1. The making, using, offering for sale, selling, or importing a
patented product or a product obtained directly or indirectly from a
patented process, or the use of a patented process without the
authorization of the patentee constitutes patent infringement.
76.2. Any patentee, or anyone possessing any right, title or interest
in and to the patented invention, whose rights have been infringed,
may bring a civil action before a court of competent jurisdiction, to
recover from the infringer such damages sustained thereby, plus
attorney’s fees and other expenses of litigation, and to secure an
injunction for the protection of his rights.
76.3. If the damages are inadequate or cannot be readily ascertained
with reasonable certainty, the court may award by way of damages
a sum equivalent to reasonable royalty.
76.4. The court may, according to the circumstances of the case,
award damages in a sum above the amount found as actual
damages sustained: Provided, That the award does not exceed three
(3) times the amount of such actual damages.
76.5. The court may, in its discretion, order that the infringing goods,
materials and implements predominantly used in the infringement
be disposed of outside the channels of commerce or destroyed,
without compensation.
76.6. Anyone who actively induces the infringement of a patent or
provides the infringer with a component of a patented product or of
a product produced because of a patented process knowing it to be
especially adopted for infringing the patented invention and not
suitable for substantial non-infringing use shall be liable as a
Nudibranch
contributory infringer and shall be jointly and severally liable with
the infringer.
Amendment – 76.6  a person actively inducing another is liable for
patent infringement as a contributory infringer = jointly and
severally liable
 In other words, contributory infringers are solidarily liable
with the infringer
A. JURISDICTION
1. A.M. No. 02-1-11
Q: Which court has jurisdiction for an action of infringement?
 Concurrent jurisdiction is granted to the RTC and IPO for
infringement and damages (200,000)
 SC Memorandum Circular 02-1-11-SC dated Feb. 19, 2013
 designation of the RTC as an IPC Court
 Was amended further designating RTC as a Special
Commercial Court
2. SAMSON VS. CABANOS
SAMSON vs. HON. DAWAY / SAMSON vs. HON. CABANOS
FACTS: The petitioner, owner/proprietor of ITTI Shoes/Mano Shoes
Manufactuirng Corporation, allegedly sold or offers the sale of
garment product using the trademark “Caterpillar” to the prejudice
of Caterpillar, Inc., private respondent in this case. The respondent
filed the case with the RTC. The petitioner questioned the
jurisdiction of the trial court over the offense charged contending
that the case should be filed with the MTC because violation of
unfair competition is penalized with imprisonment not exceeding 6
years under RA 7691.
ISSUE: Which court has jurisdiction over criminal and civil cases for
violation of intellectual property rights?
HELD: The SC held that under Section 163 of the IPC, actions for
unfair competition shall be brought before the proper courts with
appropriate jurisdiction under existing laws. The law contemplated
in Section 163 of IPC is RA 166 otherwise known as the Trademark
Law. Section 27 of the Trademark Law provides that jurisdiction over
cases for infringement of registered marks, unfair competition, false
designation of origin and false description or representation, is
lodged with the Court of First Instance (now Regional Trial Court).
Since RA 7691 is a general law and IPC in relation to Trademark
Law is a special law, the latter shall prevail. Actions for unfair
competition therefore should be filed with the RTC.
B. CRIMINAL ACTION FOR PATENT INFRINGEMENT
Sec. 84. Criminal Action for Repetition of Infringement. - If
infringement is repeated by the infringer or by anyone in connivance
with him after finality of the judgment of the court against the
infringer, the offenders shall, without prejudice to the institution of
a civil action for damages, be criminally liable therefor and, upon
conviction, shall suffer imprisonment for the period of not less than
six (6) months but not more than three (3) years and/or a fine of not
less than One hundred thousand pesos (P100,000) but not more
than Three hundred thousand pesos (P300,000), at the discretion of
the court. The criminal action herein provided shall prescribed in
three (3) years from date of the commission of the crime.
9
C. TESTS IN PATENT INFRINGEMENT
In the case of drawings, it is easily to tell if there is infringement. Just
compare the different DESIGN VIEWS to and determine whether or
not there is infringement
In the case of patents, instead of views, we have what is called
SPECIFICATIONS and CLAIMS
 Ex: a shoe has 5 claims. 1st is the sole; 2nd is the lace; 3rd is
the design on the right side; 4th is the design in the left
side; 5th is the inside of the shoe. The inventor applies for a
patent over these 5 claims.
Q: What are the 2 tests to determine whether or not there is patent
infringement?
 1. Literal Infringement
o Exactness rule
o Addition rule
 2. Doctrine of equivalence
i. LITERAL INFRINGEMENT
Q: What is the test of LITERAL INFRINGEMENT?
 Sec. 75. Extent of Protection and Interpretation of Claims.
– 75.1. The extent of protection conferred by the patent
shall be determined by the claims, which are to be
interpreted in the light of the description and drawings.
Q: What are the 2 rules associated with the Literal Infringement
test?
 1. EXACTNESS RULE – the infringing material copies exactly
the same claims and specifications
o Ex: the applicant of a patent has the same exact
claims as that of a patentee’s invention: i.e. all 5
claims are identical: in the shoe example, it has
the same design, same sole, same lace, etc.
 2. ADDITION RULE – the infringing material merely adds
additional claims or specifications without substantial
modification of the original patent
o Ex: in the shoe example, the applicant copies all
5 claims, but adds an additional 6th claim.
However, the additional claim does not
substantially modify the patent.
ii. DOCTRINE OF EQUIVALENTS
Q: What is the DOCTRINE OF EQUIVALENTS? (Bar question)
 75.2. For the purpose of determining the extent of
protection conferred by the patent, due account shall be
taken of elements which are equivalent to the elements
expressed in the claims, so that a claim shall be considered
to cover not only all the elements as expressed therein,
but also equivalents
o Ex: for instance, in the shoe example, only 3
claims are identical. In determining whether or
not there is infringement applying the Doctrine
of Equivalents, the question is whether or not
these 3 claims are elements which are
equivalent to the elements expressed in the
original patent.
o Q: W/N the new patent introduces substantial
modification or changes in the claim?
o Q: W/N it produces the same function or same
product?
Nudibranch
o Q: W/N it achieves something in the same way?
D. DEFENSES IN ACTION FOR INFRINGEMENT
Q: What are the valid defenses in an action for infringement?
 1. Patent is not a claim covered by protection
 2. Invention is not patentable
 3. Any of the grounds for cancellation are present
 4. Invalid patent or claim
 5. Grounds for petition for cancellation
 Sec. 81. Defenses in Action for Infringement. - In an action
for infringement, the defendant, in addition to other
defenses available to him, may show the INVALIDITY OF
THE PATENT, OR ANY CLAIM thereof, on any of the
GROUNDS ON WHICH A PETITION OF CANCELLATION can
be brought under Section 61 hereof
E. CONTRIBUTORY PATENT INFRINGEMENT
Sec. 75. Extent of Protection and Interpretation of Claims. -
75.1. The extent of protection conferred by the patent shall be
determined by the claims, which are to be interpreted in the light of
the description and drawings.
9. ASSIGNMENT AND TRANSMISSION OF RIGHTS
Chapter XI 
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Sec. 103. Transmission of Rights. –
103.1 Patents or applications for patents and invention to which
they relate, shall be protected in the same way as the rights of other
property under the Civil Code.
103.2. Inventions and any right, title or interest in and to patents
and inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract.
Sec. 104. Assignment of Inventions. - An assignment may be of the
entire right, title or interest in and to the patent and the invention
covered thereby, or of an undivided share of the entire patent and
invention, in which event the parties become joint owners thereof.
An assignment may be limited to a specified territory.
Sec. 105. Form of Assignment. - The assignment must be in writing,
acknowledged before a notary public or other officer authorized to
administer oath or perform notarial acts, and certified under the
hand and official seal of the notary or such other officer.
Sec. 106. Recording. –
106.1. The Office shall record assignments, licenses and other
instruments relating to the transmission of any right, title or interest
in and to inventions, and patents or application for patents or
inventions to which they relate, which are presented in due form to
the Office for registration, in books and records kept for the
purpose. The original documents together with a signed duplicate
thereof shall be filed, and the contents thereof should be kept
confidential. If the original is not available, an authenticated copy
thereof in duplicate may be filed. Upon recording, the Office shall
retain the duplicate, return the original or the authenticated copy to
the party who filed the same and notice of the recording shall be
published in the IPO Gazette.
106.2. Such instruments shall be void as against any subsequent
purchaser or mortgagee for valuable consideration and without
10
notice, unless, it is so recorded in the Office, within three (3) months
from the date of said instrument, or prior to the subsequent
purchase or mortgage.
Sec. 107. Rights of Joint Owners. - If two (2) or more persons jointly
own a patent and the invention covered thereby, either by the
issuance of the patent in their joint favor or by reason of the
assignment of an undivided share in the patent and invention or by
reason of the succession in title to such share, each of the joint
owners shall be entitled to personally make, use, sell, or import the
invention for his own profit: Provided, however, That neither of the
joint owners shall be entitled to grant licenses or to assign his right,
title or interest or part thereof without the consent of the other
owner or owners, or without proportionally dividing the proceeds
with such other owner or owners.
BAR PROBLEMS:
Q: X invented a method of improving the tenderness of meat by
injecting an enzyme solution into the liver of the animal shortly
before a slaughter. Is the invention patentable?
 The invention is patentable.
 Section 21 of IPC provides that "any technical solution of a
problem in any field of human activity which is new,
involves an inventive step and is industrially applicable
shall be patentable. It may be, or may relate to, a product,
or process, or an improvement of any of the foregoing."
 The process of improving the tenderness of meat appears
to be a new technical solution.
Q: X invented a bogus coin detector which can be used exclusively
on self-operating gambling devices otherwise known as one-armed
bandits. Can X apply for a patent?
 X may not apply for the patent.
 Section 22.6 provides that anything that is contrary to
public order or morality shall be excluded from patent
protection.
 The machine involved in this case appears to be a
gambling device or a tool that is used to cheat in gambling
or in gambling itself, hence it is contrary to public order
and morality. However, if the machine can be used in
legalized gambling such as if the in cases of exclusive use
of casinos established by the government, such device can
be patented.
Q: Che-che invented a device that can convert rainwater to
automobile fuel. She asked Macon, a lawyer, to assist in getting
her invention patented. Macon suggested that they form a
corporation with other friends and have the corporation apply for
the patent, 80% of the shares of stock thereof to be subscribed by
Che-che and 5% by Macon. The corporation was formed and the
patent application was filed. However, Che-che dies three months
later of a heart attack. Franco, the estranged husband of Che-che,
contested the application of the corporation and filed his own
patent application as the sole surviving heir of Che-che. Decide the
issue with reasons.
 The case should be decided in favor of Franco.
 Section 28 of the IPC provides that the right to a patent
belongs to the inventor, his heirs or assigns. Since Che-che
is already dead, the heirs, including Franco, can file the
application.
 In addition Section 32.2 of the IPC provides that if the
applicant is not the inventor, the IPO shall require the
applicant to submit the inventor's authority. In this case, it
does not appear that the corporation was authorized.
Nudibranch
Besides, it is clear from the problem that the corporation
was only used as a conduit of Che-che for the filing of the
application.
Q: Supposing Albert Einstein were alive today and he filed with the
Intellectual Property Office (IPO) an application for patent for his
theory of relativity expressed in the formula E = mc2. The IPO
disapproved Einstein's application on the ground that his theory of
relativity is not patentable. Is the IPO' s action correct?
 YES, the IPO is correct.
 Discoveries, scientific theories and mathematical methods
are “non-patentable inventions” under Sec. 22.1 of the IPC
 A scientific theory like Einstein’s theory of relativity is
discovered, it is not invented
III. TRADEMARKS
1. DEFINITION OF MARKS, COLLECTIVE MARKS, TRADE NAMES,
SLOGAN
Q: Generally, what is a Trademark?
 It is any word, mark, symbol, sign, 3-dimensional mark, or
combination which distinguishes the goods of an
enterprise as opposed to the goods of others
 If it distinguishes services, it is called Service Mark
 If it distinguishes goods or services owned by a group or
association, it is called Collective Mark
 A Slogan is a short phrase used to capture brand essence
or personality
PART III 
THE LAW ON TRADEMARKS, SERVICE MARKS 
AND TRADE
NAMES
Sec. 121. Definitions. - As used in Part III, the following terms have
the following meanings:
 121.1. "Mark" means 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;
 121.2. "Collective mark" means any visible sign designated
as such in the application for registration and capable of
distinguishing the origin or any other common
characteristic, including the quality of goods or services of
different enterprises which use the sign under the control
of the registered owner of the collective mark;
 121.3. "Trade name" means the name or designation
identifying or distinguishing an enterprise;
 121.4. "Bureau" means the Bureau of Trademarks;
 121.5. "Director" means the Director of Trademarks;
 121.6. "Regulations" means the Rules of Practice in
Trademarks and Service Marks formulated by the Director
of Trademarks and approved by the Director General; and
 121.7. "Examiner" means the trademark examiner
Q: Is smell registrable as a mark?
 NO. In the Philippines, it is not yet registrable.
 Q: How about snippets of sounds, are they reigstrable as
marks?
o NO. In the Philippines, they are not yet
registrable.
 (See, however, the opinion of FUNA on the registrability of
scent and sound in memaid)
11
2. ACQUISITION OF OWNERSHIP OF MARK Q: How long is the duration of protection of the Trademark?
 10 YEARS subject to indefinite renewal for periods of 10
A. SEC. 122 years each
 Sec. 145. Duration.- A certificate of registration shall
Q: How do you acquire ownership of a mark? remain in force for ten (10) years:
 1. REGISTRATION o Provided, That the registrant shall file a
 2. SUBSEQUENT ACTUAL USE declaration of actual use and evidence to that
 Sec. 122. How Marks are Acquired. - The rights in a mark effect, or shall show valid reasons based on the
shall be acquired through registration made validly in existence of obstacles to such use, as prescribed
accordance with the provisions of this law. by the Regulations, within one (1) year from the
fifth anniversary of the date of the registration
Q: What is the requirement of ACTUAL USE? of the mark. Otherwise, the mark shall be
 124.2. The applicant or the registrant shall file a removed from the Register by the Office.
declaration of actual use of the mark with evidence to that o This is also known as Declaration of Non-Use. It
effect, as prescribed by the Regulations within three (3) is in essence another required DAU but this time
years from the filing date of the application. Otherwise, within 1 year from the 5th anniversary of the
the application shall be refused or the mark shall be date of registration. Thus, 2 DAU’s are required
removed from the Register by the Director. to be filed
 The IPC no longer provides for PRIOR USE before o See Sec. 152 for exception on Declaration of
registration as a condition for ownership of a mark. Non-Use
Registration is the sole basis.
o EXPN: A trade name or business Q: A trademark registration MAY be owned in perpetuity.
 However, there must be ACTUAL USE after registration  A. True
 An applicant of a mark must have been in ACTUALLY USE o The duration of protection of a Trademark is 10
IN COMMERCE IN THE PHILIPPINES of the mark and file a YEARS subject to indefinite renewal for periods
DECLARATION OF ACTUAL USE OF MARK (DAUM). He must of 10 years each
use it within 3 years from the date of the filing of the  B. False
application
o However, this is notwithstanding the possibility Q: What is the difference between the Declaration of Prior Use and
of the refusal of the application or the Declaration of Non-Use?
cancellation of the grant of the application DAU (SEC. 124.2) DNU (SEC. 145)
o Note: DAUM alone, without proof of actual use As to Required within 3 years Within 1 year from the 5th
would not be sufficient to establish actual use period from the filing date of the anniversary of the date of
o Actual use – registration > Registration – actual of application the registration of the
use filing trademark
 Rights of a trademark are acquired thru: As to Even if registration has Mark shall be removed from
o 1. Registration; and Effect been granted, such the Register by the office
o 2. Actual Use of registration would be
 Q: Doc Martens is a brand from Germany. They wanted Failure cancelled and the mark
to sell their products in the Philippines. However, they to File removed from the
discovered that Chinese-Filipino have applied for register. If the application
trademark and were granted the same. What is the is still pending by the end
remedy of Doc Martens? of the 3 year period and
o File a petition for cancellation no declaration of actual
 Q: Assuming Doc Martens was able to file a petition and use is filed, then the
the same was granted. It now seeks to file its application application is denied
for Trademark in the Philippines. Is it necessary that Doc As to Declaration of actual use 1. Declaration of actual
Martens comply with the requirement of actual use? what with evidence to that use with evidence to
o YES. The IPO of the Philippines is lenient on the to file effect that effect; or
requirement for foreign enterprises. It considers 2. Show valid reasons
selling in a website as actual use. based on the existence
of obstacles to such use
Q: Ownership of a trademark is acquired by: (declaration of non-
 A. Long and continued use of the trademark, perfected by use)
registration thereof
 B. Registration of a trademark, together with the actual B. BIRKENSTOCK ORTHOPAEDIE GMBH VS. PHIL SHOE EXPO
use thereof MARKETING CORP.
 C. Long and continued use of a trademark, with or without
registration thereof DOCTRINE: It must be emphasized that registration of a trademark,
 D. Registration of a trademark validly acquired, with or by itself, is not a mode of acquiring ownership. If the applicant is
without actual use thereof not the owner of the trademark, he has no right to apply for its
 E. None of the above registration. Registration merely creates a prima facie presumption
of the validity of the registration

Nudibranch 12
FACTS: Petitioner, a corporation duly organized and existing under
the laws of Germany applied for various trademark registrations
before the 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 respondent’s 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 General’s 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: Whether or not the subject marks should be allowed
registration in the name of the petitioner?
HELD: YES. 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 10th
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
Nudibranch
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.
Q: What is the effect of issuance of a certificate of registration to a
person?
 It creates a Prima Facie Presumption
 Sec. 138. Certificates of Registration. - A certificate of
registration of a mark shall be prima facie evidence of:
o (VOE)
o 1. The VALIDITY of the registration,
o 2. The registrant’s OWENRSHIP of the mark, and
of
o 3. 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.
 Q: How is the prima facie presumption rebutted?
o 1. Evidence of the nullity of the registration
o 2. Prior use by another
Q: Which of the following statement is false?
 A. The certificate of registration of a mark shall be prima
facie evidence of the validity of the registration
 B. The certificate of registration of a mark shall be prima
facie evidence of the registrant’s ownership of the mark
 C. The certificate of registration of a mark shall be prima
facie evidence of the registrant’s a prior use of the
subject mark
o Reason: it is not one of those enumerated under
Sec. 138 of the IPC
 D. The certificate of registration of a mark shall be prima
facie evidence of 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.
 E. None of the above
Q: Who may register a trademark?
 Under the Trademark Law, only the owner of the
trademark, trade name, or service mark to distinguish
goods, business or services from the goods, business, or
services of others is entitled to register the same (UNNO
COMMERCIAL ENTERPRISES VS. GENERAL MILLING
CORPORATION)
o A mere distributor of the products bearing
trademark, even if permitted to use the
trademark has no right to and cannot register it
in his name unless it has been validly assigned to
him
3. ACQUISITION OF OWNERSHIP OF TRADE NAME
Sec. 165. Trade Names or Business Names. –
165.1. A name or designation may not be used as a trade name if by
its nature or the use to which such name or designation may be put,
it is contrary to public order or morals and if, in particular, it is liable
to deceive trade circles or the public as to the nature of the
enterprise identified by that name.
13

165.2. (a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected,
even prior to or without registration, against any unlawful act
committed by third parties.
(b) In particular, any subsequent use of the trade name by a third
party, whether as a trade name or a mark or collective mark, or any
such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
165.3. The remedies provided for in Sections 153 to 156 and
Sections 166 and 167 shall apply mutatis mutandis.
 Mutatis Mutandis – literally, “once the necessary changes
have been made”. It means making necessary alterations
while not affecting the main point at issue.
165.4. Any change in the ownership of a trade name shall be made
with the transfer of the enterprise or part thereof identified by that
name. The provisions of Subsections 149.2 to 149.4 shall apply
mutatis mutandis.
4. NON-REGISTRABLE MARKS
A. SEC. 123
Q: What are the non-registrable marks? (Memorize)
Sec. 123. Registrability. –
123.1. A mark cannot be registered if it:
 IFNIII-MG-CD-SCC
 (a) Consists of immoral, deceptive or scandalous matter,
or matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt
or disrepute;
 (b) Consists of the flag or coat of arms or other insignia of
the Philippines or any of its political subdivisions, or of any
foreign nation, or any simulation thereof;
 (c) Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of
the Philippines, during the life of his widow, if any, except
by written consent of the widow;
 (d) Is identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing or
priority date, in respect of:
o (i) The same goods or services, or
o (ii) Closely related goods or services, or
o (iii) If it nearly resembles such a mark as to be
likely to deceive or cause confusion;
 (e) Is identical with, or confusingly similar to, or
constitutes a translation of a mark which is considered by
the competent authority of the Philippines to be well-
known internationally and in the Philippines, whether or
not it is registered here, as being already the mark of a
person other than the applicant for registration, and used
for identical or similar goods or services:
o Provided, That in determining whether a mark is
well-known, account shall be taken of the
knowledge of the relevant sector of the public,
rather than of the public at large, including
knowledge in the Philippines which has been
obtained as a result of the promotion of the
mark;
Nudibranch
 (f) Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered well-
known mark in accordance with the preceding paragraph,
which is registered in the Philippines with respect to goods
or services which are not similar to those with respect to
which registration is applied for:
o Provided, That use of the mark in relation to
those goods or services would indicate a
connection between those goods or services,
and the owner of the registered mark:
 Provided further, That the interests of
the owner of the registered mark are
likely to be damaged by such use;
 (g) Is likely to mislead the public, particularly as to the
nature, quality, characteristics or geographical origin of
the goods or services;
 (h) Consists exclusively of signs that are generic for the
goods or services that they seek to identify;
 (i) Consists exclusively of signs or of indications that have
become customary or usual to designate the goods or
services in everyday language or in bona fide and
established trade practice;
 (j) Consists exclusively of signs or of indications that may
serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or
other characteristics of the goods or services;
 (k) Consists of shapes that may be necessitated by
technical factors or by the nature of the goods themselves
or factors that affect their intrinsic value;
 (l) Consists of color alone, unless defined by a given form;
or
 (m) Is contrary to public order or morality.
Q: The United Parcel Service also known as UPS, claimed to be the
world’s largest package delivery company and service provider of
supply chain management solutions, utilizes globally and in the
Philippines, a fleet of brown painted delivery trucks. All of the
employees and delivery staff of UPS also wear brown uniforms.
UPS therefore may successfully register with the Philippine IPO the
shade of brown it uses for use on trucks and on delivery personnel
uniforms.
 A. TRUE
 B. FALSE
Q: In the question above, UPS may also register as its service mark
the word, “brown” for “package delivery and supply chain
management services” on condition that UPS will use the subject
word to identify its said services
 A. TRUE
 B. FALSE
123.2. As regards signs or devices mentioned in paragraphs (j), (k),
and (l), nothing shall prevent the registration of any such sign or
device which has become distinctive IN RELATION TO THE GOODS
for which registration is requested as a result of the use that have
been made of it in commerce in the Philippines.
 The Office may accept as prima facie evidence that the
mark has become distinctive, as used in connection with
the applicant’s goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the
applicant in commerce in the Philippines for five (5) years
14
 before the date on which the claim of distinctiveness is
made.
123.3. The nature of the goods to which the mark is applied will not
constitute an obstacle to registration.
B. SECONDARY MEANING
Q: What is the doctrine of secondary meaning?
 GR: generic, indicative or descriptive marks (j,k, and l of
Sec. 123.1) are NON-REGISTRABLE
o EXPN: they are REGISTRABLE when such kind of
mark/design has become DISTINCTIVE as a result
of the uses that have been made of it in
commerce in the Philippines. This is proved by:
 1. Long, continuous use for 5 years, as
used in connection with the applicants
goods or services in commerce, and
 2. In the mind of the public indicates a
single source to consumers
 123.2. As regards signs or devices mentioned in
paragraphs (j), (k), and (l), nothing shall prevent the
registration of any such sign or device which has become
distinctive in relation to the goods for which registration is
requested as a result of the use that have been made of it
in commerce in the Philippines.
o The Office may accept as prima facie evidence
that the mark has become distinctive, as used in
connection with the applicant’s goods or services
in commerce, proof of substantially exclusive
and continuous use thereof by the applicant in
commerce in the Philippines for five (5) years
before the date on which the claim of
distinctiveness is made
C. FANCIFUL, ARBITRARY, SUGGESTIVE, COMPOSITE, AND COINED
MARKS
Q: What are FANCIFUL MARKS?
 Those invented for the sole purpose of functioning as a
trademark and have no other meaning than acting as a
mark (imbento lang)
o Ex: “Kodak” for camera; “Xerox” for
photocopying machine
Q: What are ARBITRARY MARKS?
 Those utilized as a device having common meaning that
has no relation to the goods or services being (binigyan ng
ibang kahulugan)
o Ex: “Dutch Boy” for paints and paint color
solutions
Q: What are SUGGESTIVE MARKS?
 Those that hint at one or some of the attributes of the
products (clue sa product)
o Ex: “SUNNY” trademark for marketing electric
heaters hinting the fact that the product is to
keep your house warm
Q: What are COMPOSITE MARKS?
 Those marks consisting of 2 or more
elements/combinations of words, phrases, designs,
symbols, or color schemes. Although they cannot be
registered by themselves, together they may be a part of a
Nudibranch
composite mark as long as they provide a disclaimer. The
person who registers them as part of a mark will not
acquire ownership thereto. (nabubuo sa 2 o higit pang
mga bahagi)
o “20th Century Nylon Shirts Factory” must be
required to disclaim “nylon” and “shirts factory”
Q: What are COINED MARKS?
 Those which may be registered even if they are
contractions of or coined from generic and descriptive
terms. (pinagdugtong na mga salita)
o Ex: “Starbrite” for metal polish; “Mirrorlike” for
floor and furniture polish
5. PRIOR USE OF MARK AS A REQUIREMENT
Sec. 122. How Marks are Acquired. - The rights in a mark shall be
acquired through registration made validly in accordance with the
provisions of this law
Sec. 152. Non-use of a Mark When Excused. –
152.1. Non-use of a mark may be excused if caused by
circumstances arising independently of the will of the trademark
owner. Lack of funds shall not excuse non-use of a mark.
152.2. The use of the mark in a form different from the form in
which it is registered, which does not alter its distinctive character,
shall not be ground for cancellation or removal of the mark and shall
not diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the
goods or services belonging to the class in respect of which the mark
is registered shall prevent its cancellation or removal in respect of
all other goods or services of the same class.
152.4. The use of a mark by a company related with the registrant
or applicant shall inure to the latter’s benefit, and such use shall
not affect the validity of such mark or of its registration: Provided,
That such mark is not used in such manner as to deceive the public.
If use of a mark by a person is controlled by the registrant or
applicant with respect to the nature and quality of the goods or
services, such use shall inure to the benefit of the registrant or
applicant.
6. TESTS TO DETERMINE CONFUSING SIMILARITY BETWEEN MARKS
Note: In a Civil Action for Infringement (To be discussed under #10
in the outline), one of the requisites for Infringement is: there is, in
the use or application a likelihood of CONFUSION.
  In connection wit this, there are 2 types of confusion of
Mark or Trade Names:
o 1. Confusion of GOODS OR SERVICES
  2 Tests (see below)
o 2. Confusion of BUSINESS
 Actual confusion is not required. The test is whether the
public is likely to be deceived.
Q: What are the tests to determine confusing similarity between
goods and services?
 1. DOMINANCY TEST
 2. HOLISTIC TEST
15
A. DOMINANCY TEST – whether there is similarity of the prevalent preference and will not be easily
features of the competing trademarks which might cause confusion distracted
or deception and thus constitute infringement  2. BRISTOL MYERS CO. VS. DIRECTOR OF PATENTS &
 Focuses on the similarity of the main, essential, dominant, UNITED AMERICAN PHARMACEUTICALS, INC.
or prevalent features of a mark o No confusion. The test is not to simply take the
 Relies on visual, aural, and connotative comparisons and words and compare the spelling and
overall impressions between the 2 trademarks pronunciation. Rather, must consider the marks
in their entirety, in relation to the goods to
Cases where SC used the Dominancy Test: which they are attached
 1. ASIA BREWERY, INC. VS. CA
o SC: There is NO confusing similarity. The fact that Q: What is the difference between the Dominancy and Holistic
“PALE PILSEN” are part of ABI’s trademark does Tests?
not constitute infringement of SMC’s trademark: DOMINANCY TEST HOLISTIC/TOTALITY TEST
San Miguel Pale Pilsen. Reason: “pale pilsen” are As to Focuses on the Mandates that the
generic words descriptive of the color “pale” and consideration similarity of the main, entirety of the marks in
of the type of beer, “pilsen” essential, dominant, question must be
 2. MCDONALD’S CORPORATION VS. L.C. BIG MAK or prevalent features considered in
MURGERS of a mark determining confusing
o Big Mac and Big Mak similarity
o SC: They are confusingly similar. Aurally (aura!), As to Basis of Relies on visual, Relies only on visual
the 2 marks are the same. Big Mac and Big Mak: the aural, and comparison
the 1st and 2nd words are phoenetically the same; Computation connotative
Visually, the 2 marks have 6 letters, with the first comparisons and
to letters of the 2nd word being the same. overall impressions
 3. SOCIETES DES PRODUITS NESTLE, S.A ET. AL. VS. CA between the 2
o Master Roast and Master Blend vs. Flavor trademarks
Master As to Test TEST: whether there TEST: whether the
o SC: They are confusingly similar. The dominance is similarity of the general confusion made
of the word “master” has acquired thru Nestle’s prevalent features of by the article upon the
advertising is carried over when incorporated the competing eye of the casual
into CFC’s trademark flavor master. Such that trademarks which purchaser who is
when one looks at the label with the trademark might cause unsuspicious and off his
flavor master, one’s attention is easily attracted confusion or guard, is such as to likely
to the word “master” rather than to the deception and thus result in his confounding
differences which exist. constitute it with the original
infringement
B. HOLISTIC/TOTALITY TEST – whether the general confusion made
by the article upon the eye of the casual purchaser who is 7. WELL-KNOWN MARKS – Even if the trademark is not registered in
unsuspicious and off his guard, is such as to likely result in his the Philippines, if it is a well-known mark, it will be protected here
confounding it with the original in the Philippines.
 Mandates that the entirety of the marks in question must  It does not require that the well-known mark be used in
be considered in determining confusing similarity commerce in the Philippines but only that it be well known
 Relies only on visual comparison in the Philippines

Cases where the SC used the Holistic/Totality Test:
 1. EMERALD GARMENT MANUFACTURING CORPORATION
VS. CA
o Stylistic Mr. Lee vs. Lee (Jeans)
o SC: No confusing similarity. “STYLISTIC MR. LEE”
is prominent. The trademark should be
considered as a whole and not piecemeal.
 With respect to Lee, the products are
not ordinary house products. Also, the
jeans are not inexpensive (mahal kaya
lee). Thus, the casual buyer will be
more cautious and would prefer to
mull over his purchase (mahal kasi).
Confusion and deception, then, is less
likely
 Q: So will the public be deceived? No.
The average Filipino consumer
generally buys jeans by brand. He is
more or less familiar with his
A. SEC. 123 (E) & (F)
Sec. 123. Registrability. –
123.1. A mark cannot be registered if it:
 (e) Is identical with, or confusingly similar to, or constitutes
a translation of a mark which is considered by the
competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is
registered here, as being already the mark of a person
other than the applicant for registration, and used for
identical or similar goods or services:
o Provided, That in determining whether a mark is
well-known, account shall be taken of the
knowledge of the relevant sector of the public,
rather than of the public at large, including
knowledge in the Philippines which has been
obtained as a result of the promotion of the
mark;
 Theory of Dilution:

Nudibranch 16
  (f) Is identical with, or confusingly similar to, or constitutes  A. “HUGO BOSS” for soaps”
a translation of a mark considered well-known in  B. “HUGO BOSS MOBILE” for cellular phones
accordance with the preceding paragraph, which is  C. “SWEET HUGO BOSS” for candies and other
registered in the Philippines with respect to goods or confectionaries
services which are not similar to those with respect to  D. All of the above
which registration is applied for: o (Suggested Answer)
o Provided, That use of the mark in relation to o Reason: a well-known mark is protected in the
those goods or services would indicate a Philippines whether or not registered. However,
connection between those goods or services, with respect to goods & services which are not
and the owner of the registered mark: registered, protection extends only to goods or
 Provided further, That the services which are similar or identical.
interests of the owner of the o ITCAB, HUGO BOSS is well-known mark.
registered mark are likely to Although it was able to file an application, it
be damaged by such use; failed to file its DAU on time. Thus, the
application is revoked. When it filed a new
Q: What is the difference between Sec. 123.1(e) and Sec. 123.1(f)? application, the above-mentioned applications
SEC. 123.1(e) SEC. 123.1(f) were filed also. However, they are not similar or
Requirement The well-known mark Must be registered in identical to the goods or services of HUGO BOSS
of may or may not be the Phils. (clothing, footwear, and perfumes)
registration registered in the Phils. o Thus, the IPO may grant the application under A,
Similarity Mark is used for Goods or services B, and C.
between identical or similar between the well-  E. None of the above
goods & goods or services as that known mark and that
services of of the well-known mark applied for are not Q: Company X sold its wine under the brand “Rose” Brandy; it
mark applied similar became very popular. So, X registered trademark “Rose” for its
for v. well- brandy. Subsequently, Company Y manufactured bicycles and sold
known mark it under the name “Rose”. Company X now sues Company Y for
Extent of If well-known mark is By analogy, If well- violation of RPC. Rule on the dispute (Bar question)
protection REGISTERED: protection known mark is NOT  The ruling should be in favor of Company Y. No violation of
extends to goods or REGISTERED: protection the IPC was committed by Company Y. The goods of
services with are not does not extend to Company Y, bicycles, are so dissimilar from the goods of
similar to those in which goods or services which Company X that there would be no confusion as to the
the mark is registered, are not similar or origin of the goods
provided: (conditions) identical.  Sec. 123.1(f) of the IPC adopts what is known as the
1. The use of the mark Theory of Dilution. However, it is necessary for the
in relation to the In connection with this application of the doctrine that the public may have been,
unrelated goods or rule: EVEN DISSIMILAR or had actually been deceived or misled as to the source of
services would GOODS DOCTRINE – If the good. This is not the case in the given problem
indicate a goods and services are
connection not identical or similar, B. CRITERIA
between goods or registration is STILL NOT
services and the ALLOWED if: 8. RIGHTS CONFERRED BY REGISTRANT
owner of the mark 1. There is
2. The interests of the connection bet. Sec. 147. Rights Conferred. – 47.1. The owner of a registered mark
owner of the goods or services shall have:
registered mark are of the junior or  GR: The exclusive right to prevent all third parties not
likely to be senior users of the having the owner’s consent from using in the course of
damaged by such well-known mark trade identical or similar signs or containers for goods or
used 2. The interests of services which are identical or similar to those in respect
the senior user are of which the trademark is registered where such use
likely to be would result in a likelihood of confusion.
damaged. o EXPN: in case of importation of drugs and
medicines allowed under Sec. 72.1 and of off-
Q: “HUGO BOSS”, a well-known mark, having been declared by the patent drugs and medicines, provided that said
then Minister of Trade as such. It has been registered in the drugs or medicines bear the registered marks
Philippines since 1985 for goods falling under class 25 of the that have not been tampered, unlawfully
classification namely, clothing, footwear, and perfumes. On the modified, or infringed upone.
last day of filing its declaration of actual use in the Philippines, the  In case of the use, of an identical sign for identical goods
owner of the subject mark failed to do so and its registration or services, a likelihood of confusion shall be presumed.
revoked. To protect its mark, it immediately filed, on the following
day, a new application for registration of its mark for the same Principle of Related Goods or Services
goods. 3 days later, the following applications for trademark  There is infringement when there is use of similar marks
registrations were filed by different applicants. Which of these on goods that are so related that the public may be, or is
applications may be granted by the IP:
Nudibranch 17
 actually deceived, and misled that the goods come from
the same maker or manufacturer
 Goods are related  when they belong to the same class
or have the same descriptive properties; possess same
physical attributes; serve the same purpose or are sold in
groceries
 SC: biscuits were held related to mile because both are
food products. Soap and perfume, lipstick and nail polish
are similarly related because they are common household
items nowadays
Q: Wally, a music instruments designer and manufacturer, applied
for registration of his mark, “Bamboo” for his line of electric
guitars. The former lead vocalist of the band Rivermaya, popularly
known as Bamboo, has legal basis to oppose Wally’s application
for registration even if his real name is Francisco Gaudencio Lope
Berardo Mañalac.
 A. TRUE
 B. FALSE
Territoriality Principle
 Trademark rights are recognized within a state only when
the goods or services are used in commerce within the
state
 Applying the territoriality principle, a foreign trademark
MAY enjoy protection rights in the Philippines only when
the goods or services are used in commerce in the
Philippines.
Q: Telefonica, a telecommunications corporation from Spain, may
validly register its trademark “TelefonoIntelegente” for its goods
namely, smart phones, in the Philippines considering they have
obtained their certificate of registration for the same mark in its
home country, 4 months ago
 A. TRUE
 B. FALSE
147.2. The exclusive right of the owner of a well-known mark
defined in Subsection 123.1(e) which is registered in the Philippines,
shall extend to goods and services which are not similar to those in
respect of which the mark is registered:
 Provided, That use of that mark in relation to those goods
or services would indicate a connection between those
goods or services and the owner of the registered mark:
o Provided, further, That the interests of the
owner of the registered mark are likely to be
damaged by such use
9. USE BY THIRD PARTIES OF NAMES, ETC. SIMILAR TO REGISTERED
MARK
Sec. 148. Use of Indications by Third Parties for Purposes Other than
those for which the Mark is Used. - Registration of the mark shall not
confer on the registered owner the right to preclude third parties
from using bona fide their names, addresses, pseudonyms, a
geographical name, or exact indications concerning the kind,
quality, quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services:
 Provided, That such use is confined to the purposes of
mere identification or information and cannot mislead
the public as to the source of the goods or services.
10. INFRINGEMENT AND REMEDIES
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A. TRADEMARK INFRINGEMENT
i. SEC. 155 – CIVIL ACTION FOR INFRINGEMENT
Sec. 155. Remedies; Infringement. - Any person who shall, without
the consent of the owner of the registered mark:
 155.1. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or the
same container or a dominant feature thereof in
connection with the:
o Sale,
o Offering for sale,
o Distribution,
o Advertising of any goods or services including
other preparatory steps necessary to carry out
the sale of any goods or services on or in
connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or
 155.2. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitation
to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or
in connection with the
o Sale,
o Offering for sale,
o Distribution, or
o Advertising of goods or services on or in
connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive,
shall be liable in a civil action for infringement
by the registrant for the remedies hereinafter
set forth:
o Provided, That the infringement takes place at
the moment any of the acts stated in Subsection
155.1 or this subsection are committed
regardless of whether there is actual sale of
goods or services using the infringing material.
Elements for Infringement (CRUIL)
1. Registration of trademark
a. Only the registrant of a mark can file a case for
infringement.
b. Any foreign national/juridical person who meets
the requirements of Sec. 3 and does not engage
in business in the Phils. May bring an action for
infringement W/N licensed to do business in the
Phils. (Sec. 160)
c. EXPN: Trade names, unlike trademarks, need not
be registered with the IPO before an
infringement suit may be filed
i. All that is required is that the trade
name be previously used in trade or
commerce in the Phils.
2. Trademark is reproduced, copied, counterfeited, or
colorably imitated
3. It is used in connection with the sale, or it is offering for
sale or advertising of goods, services, or business, or
applied labels, signs, wrappers, etc. intended to be used in
connection with such goods, services, or business
4. THERE IS, IN THE USE OR APPLICATION A LIKELIHOOD OF
CONFUSION
18
 a. Note: Likelihood of confusion is the gravamen of  Q: What if the damages cannot be ascertained with
trademark infringement. Intent to deceive is not reasonable certainty?
required. Complete imitation is not required  in the event such measure of damages cannot be readily
b. (See: Tests To Determine Confusing Similarity ascertained with reasonable certainty, then the court may
Between Marks under #6 of the outline) award as damages:
5. Lack of consent on the part of the registered owner or o 1. A reasonable percentage based upon the
their assignee amount of gross sales of the defendant or
o 2. The value of the services in connection with
ii. CONFUSION OF GOOD VS. CONFUSION OF BUSINESS which the mark or trade name was used in the
infringement of the rights of the complaining
Q: In relation to trademark infringement, what are the types of party.
confusions as to trademarks or trade names?  Requirement of Notice – the owner of the registered mark
 1. Confusion of goods or services shall NOT be entitled tor recover profits or damages unless
 2. Confusion of business or origin the acts have been committed with knowledge: that such
imitation is likely to cause confusion or to cause mistake or
Q: What is the difference between these 2? deceive
CONFUSION OF GOODS & CONFUSION OF o Presumption of Knowledge:
SERVICES BUSINESS/ORIGIN  1. If the mark is displayed with the
Kind of Exists when the ordinary Exists when one party’s words “registered mark” or the symbol
similarity prudent purchase would product or service though “®”; or
be induced to purchase different from that of  2. If the damage had otherwise actual
one product or service another is such as might notice of the registration
bec. Of the similarity of reasonably be assumed to o Note: the “™” sign to indicate trademark or the
the marks or trade names originate from the latter “SM” sign to indicate service mark has no legal
used in the same kind of and the public would then significance in the Phils.
product or service be deceived into the
belief that there is some IMPOUNDING
connection between the  156.2. On application of the complainant, the court may
parties, which in fact is impound during the pendency of the action, sales invoices
absent and other documents evidencing sales.
Kind of Confusingly similar marks Confusingly similar marks
goods or are used on the same are employed in different DOUBLE DAMAGES
services kinds of goods/services or non-competing  156.3. In cases where actual intent to mislead the public
goods/service or to defraud the complainant is shown, in the discretion
Tests 2 TESTS: of the court, the damages may be doubled.
used 1. Dominancy Test; and
2. Holistic Test INJUNCTION
 156.4. The complainant, upon proper showing, may also
be granted injunction.
iii. PARALLEL IMPORTATION
COURT ORDER FOR DISPOSAL/DESTRUCTION OF THE INFRINGING
Importation of Medicine MATERIAL
 There is no infringement of trademarks or trade names if  Sec. 157. Power of Court to Order Infringing Material
imported or sold drugs and medicines as well as imported Destroyed.
or sold off-patent drugs and medicines which bears marks  157.1. In any action arising under this Act, in which a
that have not been tampered, unlawfully modified, or violation of any right of the owner of the registered mark
infringed upon (Sec. 159.4) is established, the court may order that goods found to be
infringing be, without compensation of any sort, disposed
B. DAMAGES of outside the channels of commerce in such a manner as
to avoid any harm caused to the right holder, or
i. SEC. 156-157, SEC. 179 destroyed; and all labels, signs, prints, packages, wrappers,
receptacles and advertisements in the possession of the
DAMAGES defendant, bearing the registered mark or trade name or
Sec. 156. Actions, and Damages and Injunction for Infringement. any reproduction, counterfeit, copy or colorable imitation
156.1. The owner of a registered mark may recover damages from thereof, all plates, molds, matrices and other means of
any person who infringes his rights, making the same, shall be delivered up and destroyed.
 Q: What is the measure of the damages?  157.2. In regard to counterfeit goods, the simple removal
 and the measure of the damages suffered shall be either: of the trademark affixed shall not be sufficient other than
o 1. The reasonable profit which the complaining in exceptional cases which shall be determined by the
party would have made, had the defendant not Regulations, to permit the release of the goods into the
infringed his rights, or channels of commerce.
o 2. The profit which the defendant actually made
out of the infringement, or Sec. 179. Anonymous and Pseudonymous Works. - For purposes of
this Act, the publishers shall be deemed to represent the authors of
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articles and other writings published without the names of the
authors or under pseudonyms, unless the contrary appears, or the
pseudonyms or adopted name leaves no doubts as to the author’s
identity, or if the author of the anonymous works discloses his
identity
ii. CIVIL VS. CRIMINAL INFRINGEMENT
 Sec. 170. Penalties.—Independent of the civil and
administrative sanctions imposed by law, a criminal
penalty of imprisonment from two (2) years to five (5)
years and a fine ranging from Fifty thousand pesos
(P50,000) to Two hundred thousand pesos (P200,000),
shall be imposed on any person who is found guilty of
committing any of the acts mentioned in Section 155,
Section 168 and Subsection 169.1.
C. JURISDICTION
A. AM 2-1-11-SC, FEB. 9, 2002
 To implement and ensure the speedy disposition of cases
involving violations of intellectual property rights under
R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC dated
February 19, 2002 designating certain Regional Trial
Courts as Intellectual Property Courts. On June 17, 2003,
the Court further issued a Resolution consolidating
jurisdiction to hear and decide Intellectual Property Code
and Securities and Exchange Commission cases in specific
Regional Trial Courts designated as Special Commercial
Courts.
B. AM 03-03-03-SC JULY 1, 2003
 The Regional Courts previously designated as SEC
Courts through the: (a) Resolutions of this Court dated 21
November 2000, 4 July 2001, 12 November 2002, and 9
July 2002, all issued in A.M. No. 00-11-03-SC, (b)
Resolution dated 27 August 2001 in A.M. No. 01-5-298-
RTC; and (c) Resolution dated 8 July 2002 in A.M. No. 01-
12-656-RTC are hereby DESIGNATED and shall
be CALLED as Special Commercial Courts to try and decide
cases involving violations of Intellectual Property Rights
which fall within their jurisdiction and those cases
formerly cognizable by the Securities and Exchange
Commission;
 The Special Commercial Courts shall have jurisdiction
over cases arising within their respective territorial
jurisdiction with respect to the National Capital Judicial
Region and within the respective provinces with respect to
the First to Twelfth Judicial Regions. Thus, cases shall be
filed in the Office of the Clerk of Court in the official
station of the designated Special Commercial Court;
C. SEC. 10.2
Sec. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs
shall have the following functions:
 10.1. Hear and decide opposition to the application for
registration of marks; cancellation of trademarks; subject
to the provisions of Section 64, cancellation of patents,
utility models, and industrial designs; and petitions for
compulsory licensing of patents;
 10.2. (a) Exercise original jurisdiction in administrative
complaints for violations of laws involving intellectual
property rights:
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o Provided, That its jurisdiction is limited to
complaints where the total damages claimed are
not less than Two hundred thousand pesos
(P200,000):
 Provided, further, That availment of
the provisional remedies may be
granted in accordance with the Rules
of Court. The Director of Legal Affairs
shall have the power to hold and
punish for contempt all those who
disregard orders or writs issued in the
course of the proceedings.
 (b) After formal investigation, the Director for Legal Affairs
may impose one (1) or more of the following
administrative penalties:
o (i) The issuance of a cease and desist order
which shall specify the acts that the respondent
shall cease and desist from and shall require him
to submit a compliance report within a
reasonable time which shall be fixed in the
order;
o (ii) The acceptance of a voluntary assurance of
compliance or discontinuance as may be
imposed. Such voluntary assurance may include
one or more of the following:
 (1) An assurance to comply with the
provisions of the intellectual property
law violated;
 (2) An assurance to refrain from
engaging in unlawful and unfair acts
and practices subject of the formal
investigation;
 (3) An assurance to recall, replace,
repair, or refund the money value of
defective goods distributed in
commerce; and
 (4) An assurance to reimburse the
complainant the expenses and costs
incurred in prosecuting the case in the
Bureau of Legal Affairs.
o The Director of Legal Affairs may also require the
respondent to submit periodic compliance
reports and file a bond to guarantee compliance
of his undertaking;
o (iii) The condemnation or seizure of products
which are subject of the offense. The goods
seized hereunder shall be disposed of in such
manner as may be deemed appropriate by the
Director of Legal Affairs, such as by sale,
donation to distressed local governments or to
charitable or relief institutions, exportation,
recycling into other goods, or any combination
thereof, under such guidelines as he may
provide;
o (iv) The forfeiture of paraphernalia and all real
and personal properties which have been used in
the commission of the offense;
o (v) The imposition of administrative fines in such
amount as deemed reasonable by the Director of
Legal Affairs, which shall in no case be less than
Five thousand pesos (P5,000) nor more than One
hundred fifty thousand pesos (P150,000). In
addition, an additional fine of not more than
20
 One thousand pesos (P1,000) shall be imposed
for each day of continuing violation;
o (vi) The cancellation of any permit, license,
authority, or registration which may have been
granted by the Office, or the suspension of the
validity thereof for such period of time as the
Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
o (vii) The withholding of any permit, license,
authority, or registration which is being secured
by the respondent from the Office;
o (viii) The assessment of damages;
o (ix) Censure; and
o (x) Other analogous penalties or sanctions.
 10.3. The Director General may by Regulations establish
the procedure to govern the implementation of this
Section.
D. REQUIREMENT OF NOTICE
Requirement of Notice – the owner of the registered mark shall
NOT be entitled tor recover profits or damages unless the acts have
been committed with knowledge: that such imitation is likely to
cause confusion or to cause mistake or deceive
 Presumption of Knowledge:
o 1. If the mark is displayed with the words
“registered mark” or the symbol “®”; or
o 2. If the damage had otherwise actual notice of
the registration
11. UNFAIR COMPETITION
A. SEC. 168
Sec. 168. Unfair Competition, Rights, Regulation and Remedies. -
168.1. A person who has identified in the mind of the public the
goods he manufactures or deals in, his business or services from
those of others, whether or not a registered mark is employed, has a
property right in the goodwill of the said goods, business or services
so identified, which will be protected in the same manner as other
property rights.
Unfair Competition
 168.2. Any person who shall employ deception or any
other means contrary to good faith by which he shall pass
off the goods manufactured by him or in which he deals,
or his business, or services for those of the one having
established such goodwill, or who shall commit any acts
calculated to produce said result, shall be guilty of unfair
competition, and shall be subject to an action therefor.
o Goodwill – the advantage or benefit which is
acquired by an establishment or business in
consequence of the general public patronage
and encouragement which it receives from
constant or habitual customers on account of its
local position reputation for skill, or affluence,
etc.
 168.3. In particular, and without in any way limiting the
scope of protection against unfair competition, the
following shall be deemed guilty of unfair competition:
o (a) Any person, who is selling his goods and
 (GD-FF)
 Gives them the GENERAL
APPEARANCE of goods of another
Nudibranch
manufacturer or dealer, either as to
the goods themselves or in the
wrapping of the packages in which
they are contained, or the devices or
words thereon, or in any other feature
of their appearance, which would be
likely to influence purchasers to
believe that the goods offered are
those of a manufacturer or dealer,
other than the actual manufacturer or
dealer, or
 Who otherwise clothes the goods with
such appearance as shall DECEIVE the
public and defraud another of his
legitimate trade, or any subsequent
vendor of such goods or any agent of
any vendor engaged in selling such
goods with a like purpose;
o (b) Any person who by any artifice, or device, or
who employs any other means calculated to
induce the FALSE BELIEF that such person is
offering the services of another who has
identified such services in the mind of the public;
or
o (c) Any person who shall
 Make any FALSE STATEMENT in the
course of trade or
 Who shall commit any other act
contrary to good faith of a nature
calculated to DISCREDIT the goods,
business or services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall
apply mutatis mutandis.
TEST to determine Unfair Competition – whether certain goods have
been intentionally clothed with an appearance which is likely to
deceive the ordinary purchaser exercising ordinary care, and not
whether certain limited class of purchasers with special knowledge
not possessed by the ordinary purchaser could avoid mistake by the
exercise of his special knowledge. Inherent element: fraud/deceit
Q: N Corporation manufactures rubber shoes under the trademark
“JORDAN” which hit the Philippine market in 1985, and registered
its trademark with the BPTTT in 1990. PK Company also
manufactures rubber shoes with the trademark “JAVORSKI” which
it registered with the BPTTT in 1978. In 2002, PK Company adopted
and copied the design of N Corporation’s “JORDANN” rubber shoes,
both as to shape and color, but retained the trademark “JAVORSKI”
on its products. May PK Company be held liable to N Corporation?
Explain. (Bar question)
 YES. PK Company may be held liable by N Corporation for
Unfair Competition
 Under Sec. 168.3(a) of the IPC, a person is committing
unfair competition if he sells goods and “and gives them
the general appearance of goods of another manufacturer
or dealer, either as to the goods themselves or in the
wrapping of the packages in which they are contained, or
the devices or words thereon, or in any other feature of
their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual
manufacturer or dealer”
21
  The circumstances contemplated by Sec. 168.3(a) are However, on March 27, 2003, respondent's new counsel filed an
present in this case because PK Company gave its shoes Appearance with Motion for Reconsideration. It was only in said
the appearance of the shoes of N corporation and the motion where respondent raised for the first time, the issue of the
same will tend to mislead the public as to the origin of the impropriety of filing the Application for Search Warrant at the RTC-
goods. Naga City when the alleged crime was committed in a place within
the territorial jurisdiction of the RTC-Iriga City. Respondent pointed
B. INFRINGEMENT VS. UNFAIR COMPETITION out that the application filed with the RTC-Naga failed to state any
INFRINGEMENT UNFAIR COMPETITION compelling reason to justify the filing of the same in a court which
As to There is unauthorized Involves passing off one’s does not have territorial jurisdiction over the place of the
Definition use of trademark goods as those of another commission of the crime, as required by Section 2 (b), Rule 126 of
and giving one’s goods the the Revised Rules of Criminal Procedure.
appearance of that of In an Order dated July 28, 2003, the RTC-Naga issued an Order
another granting respondent's Motion for Reconsideration, thereby quashing
As to Not necessary to Necessary to establish the Search Warrants. Petitioner then appealed to the CA, but the
Fraudulent establish fraudulent fraudulent intent appellate court, in its Decision dated March 13, 2009, affirmed the
Intent intent RTC Order quashing the search warrants. Petitioner's motion for
As to Registration of the Prior registration of a reconsideration of the CA Decision was denied per Resolution dated
Necessity of trademark is necessary trademark is not September 14, 2009.
prior for the filing of an necessary in unfair
registration action for infringement competition ISSUES:
As to Scope Limited Scope: only Wider scope: unfair 1. Whether venue in an application for search warrant is
those cases specified competition is broader jurisdictional? - NO
under the IPC because it includes cases 2. Whether the issue of lack of jurisdiction may be waived and
that are covered not only may even be raised for the first time on appeal? - NO
by the IPC but also by Art.
27 of the Civil Code HELD:
As to Goods Same class of goods or Different classes of goods SEC. 2. Court where applications for search warrant shall be filed. -
involved services must be or services may be An application for search warrant shall be filed with the following:
involved involved cralawred
(a) Any court within whose territorial jurisdiction a crime was
C. PILIPINAS SHELL PETROLEUM, ET AL. VS. ROMARS INT’L committed.

DOCTRINE: Venue is jurisdictional
FACTS: Petitioners received information that respondent was selling,
offering for sale, or distributing liquefied petroleum gas (LPG) by
illegally refilling the steel cylinders manufactured by and bearing the
duly registered trademark and device of respondent Petron. Petron
then obtained the services of a paralegal investigation team who
went to respondent's premises located in San Juan, Baao, Camarines
Sur, bringing along four empty cylinders of Shellane, Gasul, Total and
Superkalan and asked that the same be refilled. Respondent's
employees then refilled said empty cylinders at respondent's
refilling station. Petitioners then requested the NBI to further
investigate this matter. They witnessed trucks coming from
respondent's refilling facility loaded with Gasul, Shellane and
Marsflame cylinders, which then deposit said cylinders in different
places, one of them a store called “Edrich Enterprises”.
Thus, the NBI, in behalf of Petron and Shell, filed with the Regional
Trial Court of Naga City (RTC-Naga), two separate Applications for
Search Warrant. The RTC-Naga City issued an Order granting said
Applications and Search Warrant Nos. 2002-27 and 2002-28 were
issued. On the same day, the NBI served the warrants at the
respondent's premises in an orderly and peaceful manner, and
articles or items described in the warrants were seized.
On November 4, 2002, respondent filed a Motion to Quash Search
Warrants, where the only grounds cited were: (a) there was no
probable cause; (b) there had been a lapse of four weeks from the
date of the test-buy to the date of the search and seizure
operations; (c) most of the cylinders seized were not owned by
respondent but by a third person; and (d) Edrich Enterprises is an
authorized outlet of Gasul and Marsflame. In an Order dated
February 21, 2003, the RTC-Naga denied the Motion to Quash.
(b) For compelling reasons stated in the application, any court within
the judicial region where the crime was committed if the place of
the commission of the crime is known, or any court within the
judicial region where the warrant shall be enforced.
However, if the criminal action has already been filed, the
application shall only be made in the court where the criminal action
is pending.
However, the CA gravely erred in equating the proceedings for
applications for search warrants with criminal actions themselves.
Proceedings for said applications are not criminal in nature and,
thus, the rule that venue is jurisdictional does not apply thereto.
Evidently, the issue of whether the application should have been
filed in RTC-Iriga City or RTC-Naga, is not one involving jurisdiction
because, as stated in the afore-quoted case, the power to issue a
special criminal process is inherent in all courts.
Unfortunately, the foregoing reasoning of the CA, is inceptionally
flawed, because as pronounced by the Court in Malaloan v. Court of
Appeals, and reiterated in the more recent Worldwide Web
Corporation v. People of the Philippines, to wit: an application for a
search warrant is a “special criminal process,” rather than a criminal
action. The basic flaw in this reasoning is in erroneously equating the
application for and the obtention of a search warrant with the
institution and prosecution of a criminal action in a trial court. It
would thus categorize what is only a special criminal process, the
power to issue which is inherent in all courts.
Moreover, the Court must again emphasize its previous admonition
in Spouses Anunciacion v. Bocanegra,that:

Nudibranch 22
We likewise cannot approve the trial court's act of entertaining
supplemental motions x x x which raise grounds that are already
deemed waived. To do so would encourage lawyers and litigants to
file piecemeal objections to a complaint in order to delay or
frustrate the prosecution of the plaintiff's cause of action.
D. WILLAWARE PRODUCTS CORP. V. JESICHRIS MFG. CORP.
DOCTRINE: The concept of unfair competition under article 28 of the
civil code is very much broader than that covered by intellectual
property laws
FACTS: Jesichris Manufacuring Company (Jesichris) alleges in its
complaint for damages for unfair competition that it is a company
engaged in the manufacture and distribution of plastic and metal
products. It pioneered the use of plastic in place of rubber in the
manufacture of automotive underchassis parts such as spring eye
bushing, stabiliser bushing, and others. Willaware Products
Corporation, on the other hand is engaged in the manufacture of
kitchenware items made of plastic and metal, has an office with
physical proximity to its office, and in view of the fact that some of
its employees had transferred to it, Jesichris discovered that
Willaware had been manufacturing and distributing the same
automotive parts with exactly similar design, same material and
colours as Jesichris manufactures and distributes, but at a lower
price. Willware deliberately copied its product designs which
constitute unfair competition. It thus prayed for damages in terms
of unrealised profits in the amount of P2Million. On the other hand,
Willaware, in its defense, denied all the allegations in the complaint
except as to the proximity of their office to that of Jesichris, and that
some of its employees transferred to Willaware. As an affirmative
defense, Willaware posits that there was no unfair competition as
the plastic products were mere reproductions of the original parts
which merely conform to their original designs and specifications.
Thus, Jesichris cannot claim that it originated the use of the plastic
automotive parts, and even assuming that it did so, it still has no
exclusive right to sell these products since it has no patent over
these products. In fact, other establishments were offering them for
sale.
After trial, the RTC rendered a decision in favour of Jesichris. It ruled
that Willaware clearly invaded the right of Jesichris by deliberately
copying and performing acts amounting to unfair competition. It
enjoined Willaware from continuing its activity, and awarded
damages in favor of Jesichris. On appeal to the CA, the latter
affirmed with modification that RTC decision.
Willaware is now before the Supreme Court assailing the RTC and CA
decisions.
ISSUES:
1. Whether or not there is unfair competition under human relations
when the parties are not competitors and there is actually no
damage on the part of Jesichris?
2. Consequently, if there is no unfair competition, should there be
moral damages and attorney’s fees?
3. Whether or not the addition of nominal damages is proper
although no rights have been established?
4. If ever the right of Jesichris refers to its copyright on automotive
parts, should it be considered in the light of the said copyrights were
considered to be void by no less than this Honorable Court in SC GR
No. 161295?
5. If the right involved is “goodwill” then the issue is: whether or not
Jesichris has established “goodwill?”
Nudibranch
HELD: Prefatorily, we would like to stress that the instant case falls
under Article 28 of the Civil Code on human relations, and not unfair
competition under Republic Act No. 8293,⁠1 as the present suit is a
damage suit and the products are not covered by patent
registration. A fortiori, the existence of patent registration is
immaterial in the present case.
The concept of “unfair competition” under Article 28 is very much
broader than that covered by intellectual property laws. Under the
present article, which follows the extended concept of “unfair
competition” in American jurisdictions, the term covers even cases
of discovery of trade secrets of a competitor, bribery of his
employees, misrepresentation of all kinds, interference with the
fulfillment of a competitor’s contracts, or any malicious interference
with the latter’s business.⁠2
With that settled, we now come to the issue of whether or not
petitioner committed acts amounting to unfair competition under
Article 28 of the Civil Code.
We find the petition bereft of merit.
Article 28 of the Civil Code provides that “unfair competition in
agricultural, commercial or industrial enterprises or in labor through
the use of force, intimidation, deceit, machination or any other
unjust, oppressive or high-handed method shall give rise to a right of
action by the person who thereby suffers damage.”
From the foregoing, it is clear that what is being sought to be
prevented is not competition per se but the use of unjust,
oppressive or high- handed methods which may deprive others of a
fair chance to engage in business or to earn a living. Plainly, what the
law prohibits is unfair competition and not competition where the
means used are fair and legitimate.
In order to qualify the competition as “unfair,” it must have two
characteristics: (1) it must involve an injury to a competitor or trade
rival, and (2) it must involve acts which are characterized as
“contrary to good conscience,” or “shocking to judicial sensibilities,”
or otherwise unlawful; in the language of our law, these include
force, intimidation, deceit, machination or any other unjust,
oppressive or high-handed method. The public injury or interest is a
minor factor; the essence of the matter appears to be a private
wrong perpetrated by unconscionable means⁠3.
Here, both characteristics are present.
First, both parties are competitors or trade rivals, both being
engaged in the manufacture of plastic-made automotive parts.
Second, the acts of the petitioner were clearly “contrary to good
conscience” as petitioner admitted having employed respondent’s
former employees, deliberately copied respondent’s products and
even went to the extent of selling these products to respondent’s
customers.⁠4
To bolster this point, the CA correctly pointed out that petitioner’s
hiring of the former employees of respondent and petitioner’s act of
copying the subject plastic parts of respondent were tantamount to
unfair competition, viz.:
The testimonies of the witnesses indicate that [petitioner] was in
bad faith in competing with the business of [respondent].
[Petitioner’s] acts can be characterized as executed with
23
mischievous subtle calculation. To illustrate, in addition to the
findings of the RTC, the Court observes that [petitioner] is engaged
in the production of plastic kitchenware previous to its
manufacturing of plastic automotive spare parts, it engaged the
services of the then mold setter and maintenance operator of
[respondent], De Guzman, while he was employed by the latter. De
Guzman was hired by [petitioner] in order to adjust its machinery
since quality plastic automotive spare parts were not being made. It
baffles the Court why [petitioner] cannot rely on its own mold setter
and maintenance operator to remedy its problem. [Petitioner’s]
engagement of De Guzman indicates that it is banking on his
experience gained from working for [respondent].

Another point we observe is that Yabut, who used to be a

warehouse and delivery man of [respondent], was fired because he
was blamed of spying in favor of [petitioner]. Despite this
accusation, he did not get angry. Later on, he applied for and was
hired by [petitioner] for the same position he occupied with
[respondent]. These sequence of events relating to his employment
by [petitioner] is suspect too like the situation with De Guzman⁠5.

Thus, it is evident that petitioner is engaged in unfair competition as

shown by his act of suddenly shifting his business from
manufacturing kitchenware to plastic-made automotive parts; his
luring the employees of the respondent to transfer to his employ
and trying to discover the trade secrets of the respondent.⁠6

Moreover, when a person starts an opposing place of business, not

for the sake of profit to himself, but regardless of loss and for the
sole purpose of driving his competitor out of business so that later
on he can take advantage of the effects of his malevolent purpose,
he is guilty of wanton wrong⁠7. As aptly observed by the court a
quo, the testimony of petitioner’s witnesses indicate that it acted in
bad faith in competing with the business of respondent, to wit:

In sum, petitioner is guilty of unfair competition under Article 28 of

the Civil Code.

12. TRADE NAMES OR BUSINESS NAMES

 121.3. "Trade name" means the name or designation
identifying or distinguishing an enterprise;

13. COLLECTIVE MARKS

 121.2. "Collective mark" means any visible sign designated
as such in the application for registration and capable of
distinguishing the origin or any other common
characteristic, including the quality of goods or services of
different enterprises which use the sign under the control
of the registered owner of the collective mark;

14. CASES

Nudibranch 24
FINALS o In this case, the SC distinguished Copyright
and Patent.
1. DEFINITION OF COPYRIGHTS COPYRIGHT PATENT
 It is the element of a person’s ownership of his creation Extends only to the Extends to the INVENTION.
that permits him (author, composer or artist) to DESCRIPTION or EXPRESSION of
exclusively print, publish and vend the product of his the idea/object and not to the
creation idea/object itself
o It gives the creator of an original work the  Thus, there is no
exclusive rights to it, usually for a limited period copyright infringement
of time. when one, who
o Literally: the “right to copy”, but also gives the without being
copyright-holder the right to be credited for his authorized, used a
work; to determine who may perform work; and copyrighted plan to
other related rights construct a structure.
o Scope: literary and artistic works which are  Reason: there is
original intellectual creations in the literary and protection only to the
artistic domain. (Kho vs. CA) description or
 2 Kinds of Copyright: expression, NOT the
o (a) Common Law Copyrights - that which structure itself.
secures to the owner exclusively until its public Purely a statutory right (it only
dissemination covers works falling within the
o (b) Statutory Copyright – that which secures statutory enumeration)
protection and exclusively in the owner by force Need not be registered to be There can be no patent
of law even when the work has been made protected (unlike patent and infringement if there is no
accessible to the public. trademark) patent issued. (no patent, no
protection)
2. TERRITORIAL APPLICATION OF COPYRIGHT LAWS Simple copyright registration Must have the patentable
 Our copyright laws have no extra-territorial operation and with the National library (Now invention scrutinized by the
the rights granted under our laws can only be infringed by with the IPO) Intellectual Property Office
acts done within our territorial jurisdiction Protected for 50 years Protected for 17 years (Now 20
years)
3. COPYRIGHT IS DISTINCT FROM TRADEMARKS AND PATENTS
 2. ELIDAD KHO VS. CA (2002)
Q: Inventions are within the scope of patents. Assuming that the o In this case, the SC held: trademark, copyright
inventor wrote a book describing how to create that invention and patents are DIFFERENT intellectual property
without, however, actually producing the invention. The book, rights that cannot be interchanged with one
being subject of copyright, is protected from the moment it was another.
completed. Would this mean that the invention described in the TRADEMARK COPYRIGHT PATENT
book is also protected? A TRADEMARK is Meanwhile, the PATENTABLE
 NO. See Pearl & Dean vs. SM any visible sign scope of a INVENTIONS, on the
capable of COPYRIGHT is other hand, refer to
A. Cases distinguishing the confined to literary any technical
 1. PEARL & DEAN PHILS. INC. VS. SHOEMART, INC. (2003) goods (trademark) and artistic works solution of a
o It was contended that the copyright over or services (service which are original problem in any field
the engineering drawings extended to the mark) of an intellectual creations of human activity
actual light boxes illustrated in the said enterprise and shall in the literary and which is new,
drawings include a stamped artistic domain involves an inventive
o SC sustained CA’s ruling that the light boxes or marked container protected from the step and is
are not protected by the copyright over the of goods. moment of their industrially
drawings. creation. applicable.
 Reason: when a drawing is In relation thereto, a
technical and depicts an object, a TRADE NAME means
copyright over the drawings will the name or
not extend to the actual object. designation
o In the case at bar, SMI is not liable for identifying or
infringing Pearl and Dean’s Copyright over distinguishing an
technical drawings of advertising display enterprise.
unit because the copyright does not extend
to the actual lightboxes.
 3. CHING VS. SALINAS
 What the law does not include, it
excludes, and for good reason:
B. Denicola test
the light box was not a literary or
 This test inquires into which aspects of the work are
artistic piece which could be
dictated by the functional constraints of the article and
copyrighted under the law.
Nudibranch 25
 which aspects reflect unconstrained perspective of the
artist. (Professor Robert Denicola)
C. Can an article of commerce serve as trademark and at the same
time enjoy patent and copyright protection?
 YES.
4. COPYRIGHT OVER LITERARY AND WORKS IS VESTED FROM THE
MOMENT OF CREATION
 The special thing about copyright as compared to patent
and trademark is that it need not be registered to be
protected.
o Reason: the law provides that original
intellectual creations are protected from
the moment of its creation
 ORIGINAL WORKS
 Section 172. Literary and Artistic Works. -
 Section 172.1. Literary and artistic works, hereinafter
referred to as "works", are original intellectual creations
in the literary and artistic domain protected from the
moment of their creation and shall include in particular:
o (a) Books, pamphlets, articles and other
writings;
o (b) Periodicals and newspapers;
o (c) Lectures, sermons, addresses,
dissertations prepared for oral delivery,
whether or not reduced in writing or other
material form;
o (d) Letters;
o (e) Dramatic or dramatico-musical
compositions; choreographic works or
entertainment in dumb shows;
o (f) Musical compositions, with or without
words;
o (g) Works of drawing, painting,
architecture, sculpture, engraving,
lithography or other works of art; models or
designs for works of art;
o (h) Original ornamental designs or models
for articles of manufacture, whether or not
registrable as an industrial design, and
other works of applied art;
o (i) Illustrations, maps, plans, sketches,
charts and three-dimensional works relative
to geography, topography, architecture or
science;
o (j) Drawings or plastic works of a scientific
or technical character;
o (k) Photographic works including works
produced by a process analogous to
photography; lantern slides;
o (l) Audiovisual works and cinematographic
works and works produced by a process
analogous to cinematography or any
process for making audio-visual recordings;
o (m) Pictorial illustrations and
advertisements;
o (n) Computer programs; and
o (o) Other literary, scholarly, scientific and
artistic works.
 Section 172.2. Works are protected by the sole fact of
their creation, irrespective of their mode or form of
expression, as well as of their content, quality and purpose
 UNILEVER PHILIPPINES, INC. VS. CA
Nudibranch
5. WORKS PROTECTED BY COPYRIGHT
A.1 ORIGINAL WORKS – Section 172 (See above)
A.2 DERIVATIVE WORKS – these are creations that are based on an
existing work. Thus, the series of film “Harry Potter” is a derivative
work based on the novel of the same title. A song that is a “re-make
of an old song is another example of derivative works.
 Section 173. Derivative Works. -173.1. The following
derivative works shall also be protected by copyright:
o (a) Dramatizations, translations, adaptations,
abridgments, arrangements, and other
alterations of literary or artistic works; and
o (b) Collections of literary, scholarly or artistic
works, and compilations of data and other
materials which are original by reason of the
selection or coordination or arrangement of
their contents.
 Sec. 173.2. The works referred to in paragraphs (a) and (b)
of Subsection Sec.173.1 shall be protected as a NEW
WORKS:
o Provided however, That such new work shall
NOT:
 Affect the force of any subsisting
copyright upon the original works
employed or any part thereof, or
 Be construed to imply any right to
such use of the original works, or
 To secure or extend copyright in such
original works
B. Requirements of Originality
 An original work is that which requires originality in skill or
labor in execution such that the works became individual
either in matter, forms arrangement or treatment (not
necessarily original thought, idea or research)
 SAMBOY VS. LEVI STRAUSS
Q: What are the non-copyrightable works under the law?
6. WORKS NOT PROTECTED BY COPYRIGHT
 Sec. 175. Unprotected Subject Matter. - Notwithstanding
the provisions of Sections 172 and 173, no protection shall
extend, under this law, to any:
o 1. Ideas, procedures, systems, etc. that are not
in tangible form
 Idea, procedure, system method or
operation, concept, principle,
discovery or mere data as such, even if
they are expressed, explained,
illustrated or embodied in a work;
 Reason: only the expressions of the
idea, procedure, etc. are protected
 Ex: A book about healthy living thru
diet may be protected by copyright,
but not the idea of healthy living thru
said diet
o 2. News of the day
 News of the day and other
miscellaneous facts having the
character of mere items of press
information; or
26
  Reason: no one can have monopoly of
the news or current events
o 3. Official government texts
 Any official text of a legislative,
administrative or legal nature, as well
as any official translation thereof.
 Sec. 176. Works of the Government. – these are works
created by an officer or employee of the Philippine
Government or any of its subdivisions and
instrumentalities, including GOCC’s as part of his regularly
prescribed official duties (Sec. 171.11)
o This is broader than Sec. 175 because its scope is
beyond text or documents.
o Ex: an architectural work by a government
engineer designed as part of his duty cannot be
protected by copyright
o 2 elements of a Work of Government:
 1. Creator must be an officer or
employee of government;
 2. The work is done as part of his
regularly prescribed official duties
o Sec. 176.1. No copyright shall subsist in any
work of the Government of the Philippines.
o When APPROVAL of gov’t agency is required:
 GR: However, prior approval of the
government agency or office wherein
the work is created shall be necessary
for EXPLOITATION of such work for
profit. Such agency or office may,
among other things, impose as a
condition the payment of royalties.
 EXPN: No prior approval or conditions
shall be required for the use of any
purpose of statutes, rules and
regulations, and speeches, lectures,
sermons, addresses, and
dissertations, pronounced, read or
rendered in courts of justice, before
administrative agencies, in deliberative
assemblies and in meetings of public
character.
 HOWEVER: Sec. 176.2. The
Author of speeches, lectures,
sermons, addresses, and
dissertations mentioned in
the preceding paragraphs
shall have the exclusive right
of making a COLLECTION of
his works.
o Despite the above discussions, this does not
mean the government cannot be a copyright
owner:
 Sec. 176.3. Notwithstanding the
foregoing provisions, the Government
is not precluded from receiving and
holding copyrights transferred to it by
assignment, bequest or otherwise;
nor shall publication or republication
by the government in a public
document of any work in which copy
right is subsisting be taken to cause
any abridgment or annulment of the
copyright or to authorize any use or
Nudibranch
appropriation of such work without
the consent of the copyright owners.
Q: What intellectual property rights are protected by copyright?
7. RIGHTS CONFERRED BY COPYRIGHT
 1. Economic Right
o Sec. 177. Copy or Economic Rights. - Subject to
the provisions of Chapter VIII, copyright or
economic rights shall consist of the exclusive
right to carry out, authorize or prevent the
following acts:
 177.1. Reproduction of the work or
substantial portion of the work;
 177.2 Dramatization, translation,
adaptation, abridgment, arrangement
or other transformation of the work;
 177.3. The first public distribution of
the original and each copy of the work
by sale or other forms of transfer of
ownership;
 177.4. Rental of the original or a copy
of an audiovisual or cinematographic
work, a work embodied in a sound
recording, a computer program, a
compilation of data and other
materials or a musical work in graphic
form, irrespective of the ownership of
the original or the copy which is the
subject of the rental;
 177.5. Public display of the original or
a copy of the work;
 177.6. Public performance of the
work; and
 177.7. Other communication to the
public of the work
 2. Moral Rights
o Sec. 193. Scope of Moral Rights. - The author of
a work shall, independently of the economic
rights in Section 177 or the grant of an
assignment or license with respect to such right,
have the right:
 193.1. To require that the authorship
of the works be attributed to him, in
particular, the right that his name, as
far as practicable, be indicated in a
prominent way on the copies, and in
connection with the public use of his
work;
 193.2. To make any alterations of his
work prior to, or to withhold it from
publication;
 193.3. To object to any distortion,
mutilation or other modification of, or
other derogatory action in relation to,
his work which would be prejudicial to
his honor or reputation; and
 193.4. To restrain the use of his name
with respect to any work not of his
own creation or in a distorted version
of his work
 3. Rights of Performers, Producers of Sounds Recording
and Broadcasting Organization
27
 o Sec. 203. Scope of Performers' Rights. - Subject
to the provisions of Section 212, performers shall
enjoy the following exclusive rights:
 Sec. 203.1. As regards their
performances, the right of authorizing:
 (a) The broadcasting and
other communication to the
public of their performance;
and
 (b) The fixation of their
unfixed performance.
 Sec. 203.2. The right of authorizing the
direct or indirect reproduction of their
performances fixed in sound
recordings, in any manner or form;
 Sec. 203.3. Subject to the provisions of
Section 206, the right of authorizing
the first public distribution of the
original and copies of their
performance fixed in the sound
recording through sale or rental or
other forms of transfer of ownership;
 Sec. 203.4. The right of authorizing the
commercial rental to the public of the
original and copies of their
performances fixed in sound
recordings, even after distribution of
them by, or pursuant to the
authorization by the performer; and
 Sec. 203.5. The right of authorizing the
making available to the public of their
performances fixed in sound
recordings, by wire or wireless means,
in such a way that members of the
public may access them from a place
and time individually chosen by them.
o Sec. 204. Moral Rights of Performers. -
 Sec. 204.1. Independently of a
performer's economic rights, the
performer, shall, as regards his live
aural performances or performances
fixed in sound recordings, have the
right to claim to be identified as the
performer of his performances, except
where the omission is dictated by the
manner of the use of the performance,
and to object to any distortion,
mutilation or other modification of his
performances that would be
prejudicial to his reputation.
 Sec. 204.2. The rights granted to a
performer in accordance with
Subsection 203.1 shall be maintained
and exercised fifty (50) years after his
death, by his heirs, and in default of
heirs, the government, where
protection is claimed.
o Sec. 206. Additional Remuneration for
Subsequent Communications or Broadcasts. -
Unless otherwise provided in the contract, in
every communication to the public or broadcast
of a performance subsequent to the first
communication or broadcast thereof by the
broadcasting organization, the performer shall
Nudibranch
be entitled to an additional remuneration
equivalent to at least five percent (5%) of the
original compensation he or she received for the
first communication or broadcast
o Producers of Sound Recordings: Sec. 208. Scope
of Right. - Subject to the provisions of Section
212, producers of sound recordings shall enjoy
the following exclusive rights:
 Sec. 208.1. The right to authorize the
direct or indirect reproduction of their
sound recordings, in any manner or
form; the placing of these
reproductions in the market and the
right of rental or lending;
 Sec. 208.2. The right to authorize the
first public distribution of the original
and copies of their sound recordings
through sale or rental or other forms
of transferring ownership; and
 Sec. 208.3. The right to authorize the
commercial rental to the public of the
original and copies of their sound
recordings, even after distribution by
them by or pursuant to authorization
by the producer
8. LIMITATIONS OF COPYRIGHT
 Sec. 184. Limitations on Copyright. –
 Sec. 184.1. Notwithstanding the provisions of Chapter V,
the following acts shall NOT CONSTITUTE INFRINGEMENT
of copyright:
o (a) The recitation or performance of a work,
once it has been lawfully made accessible to the
PUBLIC,
 If done privately and free of charge OR
if made strictly for a charitable or
religious institution or society;
o (b) The making of QUOTATIONS from a
PUBLISHED WORK if they are compatible with
fair use and only to the extent justified for the
purpose, including quotations from newspaper
articles and periodicals in the form of press
summaries:
 Provided, That the source and the
name of the author, if appearing on
the work, are mentioned;
 Sec. 171.7. "PUBLISHED WORKS" –
means works, which, with the consent
of the authors, are made available to
the public by wire or wireless means in
such a way that members of the public
may access these works from a place
and time individually chosen by them
o (c) The REPRODUCTION OR COMMUNICATION
to the public by mass media of ARTICLES on
current political, social, economic, scientific or
religious topic, lectures, addresses and other
works of the same nature, which are delivered in
public if such use is for information purposes and
has not been expressly reserved:
 Provided, That the source is clearly
indicated;
 Sec. 171.9. "REPRODUCTION" – is the
making of one (1) or more copies of a
28
 work or a sound recording in any
manner or form.
o (d) The REPRODUCTION AND COMMUNICATION
to the public of literary, scientific or artistic
works as part of reports of CURRENT EVENTS by
means of photography, cinematography or
broadcasting to the extent necessary for the
purpose;
o (e) The INCLUSION of a work in a publication,
broadcast, or other communication to the
public, sound recording or film, if such inclusion
is made by way of illustration for teaching
purposes AND is compatible with fair use:
 Provided, That the source and of the
name of the author, if appearing in the
work, are mentioned;
o (f) The RECORDING made in schools,
universities, or educational institutions of a
work included in a broadcast for the use of such
schools, universities or educational institutions:
 Provided, That such recording must be
deleted within a reasonable period
after they were first broadcast:
 Provided, further, That such
recording may not be made
from audiovisual works
which are part of the general
cinema repertoire of feature
films except for brief
excerpts of the work;
o (g) The making of EPHEMERAL recordings by a
broadcasting organization by means of its own
facilities and for use in its own broadcast;
 Thus, a short-lived sound clip from a
song or a movie may be used in a radio
broadcast without infringing copyright
o (h) The use made of a work by or under the
direction or control of the GOVERNMENT, by
the National Library or by educational, scientific
or professional institutions where such use is in
the public interest and is compatible with fair
use;
 The government’s use of a work must
be for public interest. Unlike in
expropriation, payment of just
compensation is not necessary
o (i) The PUBLIC PERFORMANCE or the
communication to the public of a work, in a
place where no admission fee is charged in
respect of such public performance or
communication, by a club or institution for
charitable or educational purpose only, whose
aim is not profit making, subject to such other
limitations as may be provided in the
Regulations;
 Sec. 171.3. "Communication to the
public" or "communicate to the
public" means the making of a work
available to the public by wire or
wireless means in such a way that
members of the public may access
these works from a place and time
individually chosen by them
Nudibranch
o (j) PUBLIC DISPLAY of the original or a copy of
the work not made by means of a film, slide,
television image or otherwise on screen or by
means of any other device or process:
 Provided, That either the work has
been published, or, that original or the
copy displayed has been sold, given
away or otherwise transferred to
another person by the author or his
successor in title; and
o (k) Any use made of a work for the purpose of
any JUDICIAL PROCEEDINGS or for the giving of
professional advice by a legal practitioner.
 Sec. 184.2. The provisions of this section shall be
interpreted in such a way as to allow the work to be used
in a manner which does not conflict with the normal
exploitation of the work and does not unreasonably
prejudice the right holder's legitimate interest.
 REPRODUCTION OF PUBLISHED WORK
o Sec. 187. Reproduction of Published Work. -
o Sec. 187.1. Notwithstanding the provision of
Section 177, and subject to the provisions of
Subsection 187.2, the private reproduction of a
published work in a SINGLE COPY, where the
reproduction is made by a natural person
exclusively for research and private study, shall
be PERMITTED, without the authorization of
the owner of copyright in the work.
 ELEMENTS of a permissible practice of
reproducing a copyrighted book:
1. By a Natural Person
2. For purposes of research and
private study (not mere leisure)
3. Not excluded under Sec. 187.2
o Sec. 187.2. The permission granted under
Subsection 187.1 shall NOT EXTEND to the
reproduction of:
 (a) A work of architecture in form of
building or other construction;
 (b) An entire book, or a substantial
past thereof, or of a musical work in
which graphics form by reprographic
means;
 (c) A compilation of data and other
materials;
 (d) A computer program except as
provided in Section 189; and
 (e) Any work in cases where
reproduction would unreasonably
conflict with a normal exploitation of
the work or would otherwise
unreasonably prejudice the legitimate
interests of the author.
 FAIR USE OF COPYRIGHT WORK – Fair Use is using
somebody else’s work fairly, i.e. what is reasonable under
the circumstances.
o It is a universally accepted limitation on
copyright.
o But while the concept is simple, the application
is definitely not. Reason: it is hard to determine
what is “fair” under certain circumstances
especially since it may not be measured
arithmetically.
o Sec. 185. Fair Use of a Copyrighted Work. -
29
 o Sec. 185.1. The FAIR USE of a copyrighted work
for criticism, comment, news reporting, teaching
including multiple copies for classroom use,
scholarship, research, and similar purposes is
NOT an infringement of copyright.
o DECOMPILATION, which is understood here to
be the reproduction of the code and translation
of the forms of the computer program to
achieve the inter-operability of an independently
created computer program with other programs
may also constitute fair use.
o In determining whether the use made of a work
in any particular case is fair use, the FACTORS to
be considered shall include:
 (a) The purpose and character of the
use, including whether such use is of a
commercial nature or is for non-profit
education purposes;
 (b) The nature of the copyrighted
work;
 (c) The amount and substantiality of
the portion used in relation to the
copyrighted work as a whole; and
 (d) The effect of the use upon the
potential market for or value of the
copyrighted work.
o Sec. 185.2 The fact that a work is UNPUBLISHED
shall not by itself bar a finding of fair use if such
finding is made upon consideration of all the
above factors.
 REPRODUCTION OF COMPUTER PROGRAM:
o Sec. 189. Reproduction of Computer Program. -
o Sec. 189.1. Notwithstanding the provisions of
Section 177, the reproduction in one (1) back-up
copy or adaptation of a computer program shall
be permitted, without the authorization of the
author of, or other owner of copyright in, a
computer program, by the lawful owner of that
computer program: Provided, That the copy or
adaptation is necessary for:
 (a) The use of the computer program
in conjunction with a computer for the
purpose, and to the extent, for which
the computer program has been
obtained; and
 (b) Archival purposes, and, for the
replacement of the lawfully owned
copy of the computer program in the
event that the lawfully obtained copy
of the computer program is lost,
destroyed or rendered unusable.
o Sec. 189.2. No copy or adaptation mentioned in
this Section shall be used for any purpose other
than the ones determined in this Section, and
any such copy or adaptation shall be destroyed
in the event that continued possession of the
copy of the computer program ceases to be
lawful.
o Sec. 189.3. This provision shall be without
prejudice to the application of Section 185
whenever appropriate.
 Importation for Personal Uses:
o Sec. 190. Importation for Personal Purposes. -
Nudibranch
o Sec. 190.1. Notwithstanding the provision of
Subsection 177.6, but subject to the limitation
under the Subsection 185.2, the importation of a
copy of a work by an individual for his personal
purposes shall be permitted without the
authorization of the author of, or other owner of
copyright in, the work under the following
circumstances:
 (a) When copies of the work are not
available in the Philippines and:
 (i) Not more than one (1)
copy at one time is imported
for strictly individual use
only; or
 (ii) The importation is by
authority of and for the use
of the Philippine
Government; or
 (iii) The importation,
consisting of not more than
three (3) such copies or
likenesses in any one invoice,
is not for sale but for the use
only of any religious,
charitable, or educational
society or institution duly
incorporated or registered,
or is for the encouragement
of the fine arts, or for any
state school, college,
university, or free public
library in the Philippines.
 (b) When such copies form parts of
libraries and personal baggage
belonging to persons or families
arriving from foreign countries and are
not intended for sale: Provided, That
such copies do not exceed three (3).
o Sec. 190.2. Copies imported as allowed by this
Section may not lawfully be used in any way to
violate the rights of owner the copyright or
annul or limit the protection secured by this Act,
and such unlawful use shall be deemed an
infringement and shall be punishable as such
without prejudice to the proprietor’s right of
action.
o Sec. 190.3. Subject to the approval of the
Secretary of Finance, the Commissioner of
Customs is hereby empowered to make rules
and regulations for preventing the importation
of articles the importation of which is prohibited
under this Section and under treaties and
conventions to which the Philippines may be a
party and for seizing and condemning and
disposing of the same in case they are
discovered after they have been imported
9. OWNERSHIP OF COPYRIGHT
 Sec. 178. RULES on Copyright OWNERSHIP. - Copyright
ownership shall be governed by the following rules:
 Q: Who has ownership over the copyright?
 If there is only ONE AUTHOR  AUTHOR
o Sec. 178.1. Subject to the provisions of this
section, in the case of original literary and artistic
30
 works, copyright shall belong to the author of  The letter belongs to the addressee or
the work; the person to whom it is delivered
 If there are 2 OR MORE AUTHORS  It depends.  Art. 723, Civil Code: Letters and other
o Sec. 178.2. In the case of works of JOINT private communications in writing are
AUTHORSHIP, the co-authors shall be the owned by the person to whom they
original owners of the copyright and in the are addressed and delivered, but they
absence of agreement, their rights shall be cannot be published or disseminated
governed by the rules on co-ownership. without the consent of the writer or
 If, however, a work of joint authorship his heirs. However, the court may
consists of parts that can be used authorize their publication or
SEPARATELY and the author of each dissemination if the public good or the
part can be identified, the author of interest of justice so requires
each part shall be the original owner  In case of ANONYMOUS/PSEUDONYMOUS WORKS  the
of the copyright in the part that he has AUTHORS represented by their PUBLISHERS
created; o Sec. 179. Anonymous and Pseudonymous
 If in the COURSE OF EMPLOYMENT  It depends. Works. - For purposes of this Act, the
o Sec. 178.3. In the case of work created by an PUBLISHERS shall be deemed to represent the
author during and in the course of his AUTHORS of articles and other writings
employment, the copyright shall belong to: published without the names of the authors or
o (a) The EMPLOYEE, under pseudonyms,
 If the creation of the object of  EXPN: Unless the contrary appears, or
copyright is not a part of his regular the pseudonyms or adopted name
duties even if the employee uses the leaves no doubts as to the author’s
time, facilities and materials of the identity, or if the author of the
employer. anonymous works discloses his
o (b) The EMPLOYER, identity.
 GR: If the work is the result of the
performance of his regularly-assigned
duties,
 EXPN: Unless there is an agreement,
express or implied, to the contrary.
 In case of COMMISSIONED WORK  the CREATOR
o Sec. 178.4. In the case of a work-commissioned
by a person other than an employer of the
author and who pays for it and the work is made
in pursuance of the commission, the person who
so commissioned the work shall have
ownership of WORK,
 But the COPYRIGHT thereto shall
remain with the creator, unless there is
a written stipulation to the contrary;
 In case of AUDIOVISUAL WORK the PRODUCER, etc.
o Sec. 178.5. In the case of audiovisual work, the
copyright shall belong to the producer, the
author of the scenario, the composer of the
music, the film director, and the author of the
work so adapted.
 EXTENT: However, subject to contrary
or other stipulations among the
creators, the producers shall exercise
the copyright to an extent required for
the exhibition of the work in any
manner,
 EXPN: except for the right to
collect performing license
fees for the performance of
musical compositions, with
or without words, which are
incorporated into the work;
and
 In case of LETTERS  the WRITER
o Sec. 178.6. In respect of letters, the copyright
shall belong to the WRITER subject to the
provisions of Article 723 of the Civil Code.
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