Emedies: S - 3, Ipc
Emedies: S - 3, Ipc
151.1. A petition to cancel a registration of a mark under this Act may be filed
J. R E M E D I E S with the Bureau of Legal Affairs by any person who believes that he is or will be
damaged by the registration of a mark under this Act as follows:
SEC. 3, IPC. International Conventions and Reciprocity. — (a) Within five (5) years from the date of the registration of the mark under
Any person who is a national or who is domiciled or has a real and effective this Act.
industrial establishment in a country which is a party to any convention, treaty (b) At any time, if the registered mark becomes the generic name for the
or agreement relating to intellectual property rights or the repression of unfair goods or services, or a portion thereof, for which it is registered, or has been
competition, to which the Philippines is also a party, or extends reciprocal rights abandoned, or its registration was obtained fraudulently or contrary to the
to nationals of the Philippines by law, shall be entitled to benefits to the extent provisions of this Act, or if the registered mark is being used by, or with the
necessary to give effect to any provision of such convention, treaty or reciprocal permission of, the registrant so as to misrepresent the source of the goods
law, in addition to the rights to which any owner of an intellectual property right or services on or in connection with which the mark is used. If the registered
is otherwise entitled by this Act. (n) mark becomes the generic name for less than all of the goods or services for
which it is registered, a petition to cancel the registration for only those
SEC. 160, IPC. Right of Foreign Corporation to Sue in Trademark or Service Mark goods or services may be filed. A registered mark shall not be deemed to be
Enforcement Action. — the generic name of goods or services solely because such mark is also used
Any foreign national or juridical person who meets the requirements of Section as a name of or to identify a unique product or service. The primary
3 of this Act and does not engage in business in the Philippines may bring a civil significance of the registered mark to the relevant public rather than
or administrative action hereunder for opposition, cancellation, infringement, purchaser motivation shall be the test for determining whether the
unfair competition, or false designation of origin and false description, whether registered mark has become the generic name of goods or services on or in
or not it is licensed to do business in the Philippines under existing laws. (Sec. connection with which it has been used. (n)
21-A, R.A. No. 166a) (c) At any time, if the registered owner of the mark without legitimate reason
fails to use the mark within the Philippines, or to cause it to be used in the
SEC. 231, IPC. Equitable Principles to Govern Proceedings. — Philippines by virtue of a license during an uninterrupted period of three (3)
In all inter partes proceedings in the Office under this Act, the equitable years or longer.
principles of laches, estoppel, and acquiescence where applicable, may be 151.2. Notwithstanding the foregoing provisions, the court or the
considered and applied. (Sec. 9-A, R.A. No. 166) administrative agency vested with jurisdiction to hear and adjudicate any action
to enforce the rights to a registered mark shall likewise exercise jurisdiction to
LEVITON INDUSTRIES V. SALVADOR
determine whether the registration of said mark may be cancelled in accordance
with this Act. The filing of a suit to enforce the registered mark with the proper
PUMA V. IAC
court or agency shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same mark. On the
LA CHEMISE LACOSTE V. FERNANDEZ
other hand, the earlier filing of petition to cancel the mark with the Bureau of
RULES OF PROCEDURE FOR INTELLECTUAL PROPERTY RIGHTS CASES Legal Affairs shall not constitute a prejudicial question that must be resolved
before an action to enforce the rights to same registered mark may be decided.
(Sec. 17, R.A. No. 166a)
SEC. 153, IPC SEC. 10(2), IPC. The Bureau of Legal Affairs. —
REQUIREMENTS OF PETITION; NOTICE AND HEARING. — INSOFAR AS APPLICABLE, The Bureau of Legal Affairs shall have the following functions:
THE PETITION FOR CANCELLATION SHALL BE IN THE SAME FORM AS THAT PROVIDED 10.2. (a) Exercise original jurisdiction in administrative complaints for violations
IN SECTION 134 HEREOF, AND NOTICE AND HEARING SHALL BE AS PROVIDED IN of laws involving intellectual property rights: Provided, That its jurisdiction is
SECTION 135 HEREOF. limited to complaints where the total damages claimed are not less than Two
hundred thousand pesos (P200,000): Provided, further, That availment of the
SEC. 154, IPC provisional remedies may be granted in accordance with the Rules of Court. The
CANCELLATION OF REGISTRATION. — IF THE BUREAU OF LEGAL AFFAIRS FINDS Director of Legal Affairs shall have the power to hold and punish for contempt
THAT A CASE FOR CANCELLATION HAS BEEN MADE OUT, IT SHALL ORDER THE all those who disregard orders or writs issued in the course of the proceedings.
CANCELLATION OF THE REGISTRATION. WHEN THE ORDER OR JUDGMENT (n) (b) After formal investigation, the Director for Legal Affairs may impose one
BECOMES FINAL, ANY RIGHT CONFERRED BY SUCH REGISTRATION UPON THE
(1) or more of the following administrative penalties:
REGISTRANT OR ANY PERSON IN INTEREST OF RECORD SHALL TERMINATE. NOTICE
(i) The issuance of a cease and desist order which shall specify the acts that
OF CANCELLATION SHALL BE PUBLISHED IN THE IPO GAZETTE. (SEC. 19, R.A. NO.
the respondent shall cease and desist from and shall require him to submit a
166A)
compliance report within a reasonable time which shall be fixed in the order;
(ii) The acceptance of a voluntary assurance of compliance or
SEC. 230, IPC
discontinuance as may be imposed. Such voluntary assurance may include one
SECTION 230. ADOPTION OF INTELLECTUAL PROPERTY (IP) POLICIES. —
or more of the following:
SCHOOLS AND UNIVERSITIES SHALL ADOPT INTELLECTUAL PROPERTY POLICIES
(1) An assurance to comply with the provisions of the intellectual
THAT WOULD GOVERN THE USE AND CREATION OF INTELLECTUAL PROPERTY
property law violated;
WITH THE PURPOSE OF SAFEGUARDING THE INTELLECTUAL CREATIONS OF THE
LEARNING INSTITUTION AND ITS EMPLOYEES, AND ADOPTING LOCALLY-
(2) An assurance to refrain from engaging in unlawful and unfair acts
ESTABLISHED INDUSTRY PRACTICE FAIR USE GUIDELINES. THESE POLICIES MAY BE and practices subject of the formal investigation;
DEVELOPED IN RELATION TO LICENSING AGREEMENTS ENTERED INTO BY THE (3) An assurance to recall, replace, repair, or refund the money value
LEARNING INSTITUTION WITH A COLLECTIVE LICENSING ORGANIZATION. of defective goods distributed in commerce; and
(4) An assurance to reimburse the complainant the expenses and
SEC. 232.2, IPC costs incurred in prosecuting the case in the Bureau of Legal Affairs. The
???????????????????????????????????????????? Director of Legal Affairs may also require the respondent to submit
periodic compliance reports and file a bond to guarantee compliance of
ROMERO V. MAIDEN FORM his undertaking.
(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
PHILIPPINE NUT INDUSTRY V. STANDARD BRANDS INC. 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
ANCHOR TRADING CO. V. DIRECTOR OF PATENTS such guidelines as he may provide;
(iv) The forfeiture of paraphernalia and all real and personal properties registered mark or trade name, and thereupon the Collector of Customs shall
which have been used in the commission of the offense; cause one (1) or more copies of the same to be transmitted to each collector or
(v) The imposition of administrative fines in such amount as deemed to other proper officer of the Bureau of Customs. (Sec. 35, R.A. No. 166)
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 2. CIVIL
(P150,000). In addition, an additional fine of not more than One thousand
pesos (P1,000) shall be imposed for each day of continuing violation; a) Infringement
(vi) The cancellation of any permit, license, authority, or registration which
SEC. 155, IPC. Remedies; Infringement. —
may have been granted by the Office, or the suspension of the validity thereof
Any person who shall, without the consent of the owner of the registered mark:
for such period of time as the Director of Legal Affairs may deem reasonable
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable
which shall not exceed one (1) year;
imitation of a registered mark or the same container or a dominant feature
(vii) The withholding of any permit, license, authority, or registration which
thereof in connection with the sale, offering for sale, distribution, advertising of
is being secured by the respondent from the Office;
any goods or services including other preparatory steps necessary to carry out
(viii) The assessment of damages;
the sale of any goods or services on or in connection with which such use is likely
(ix) Censure; and
to cause confusion, or to cause mistake, or to deceive; or
(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9, E.O.913
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or
[1983]a)
a dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
SEC. 232, IPC. Reverse Reciprocity of Foreign Laws. —
advertisements intended to be used in commerce upon or in connection with
Any condition, restriction, limitation, diminution, requirement, penalty or any
the sale, offering for sale, distribution, or advertising of goods or services on or
similar burden imposed by the law of a foreign country on a Philippine national
in connection with which such use is likely to cause confusion, or to cause
seeking protection of intellectual property rights in that country, shall
mistake, or to deceive, shall be liable in a civil action for infringement by the
reciprocally be enforceable upon nationals of said country, within Philippine
registrant for the remedies hereinafter set forth: Provided, That the infringement
jurisdiction. (n)
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
IN-N-OUT BURGER V. SEHWANI
services using the infringing material. (Sec. 22, R.A. No. 166a)
c) Prohibition of Importation SEC. 156, IPC. Actions, and Damages and Injunction for Infringement. —
156.1. The owner of a registered mark may recover damages from any person
SEC. 166, IPC. Goods Bearing Infringing Marks or Trade Names. —
who infringes his rights, and the measure of the damages suffered shall be either
No article of imported merchandise which shall copy or simulate the name of the reasonable profit which the complaining party would have made, had the
any domestic product, or manufacturer, or dealer, or which shall copy or defendant not infringed his rights, or the profit which the defendant actually
simulate a mark registered in accordance with the provisions of this Act, or shall made out of the infringement, or in the event such measure of damages cannot
bear a mark or trade name calculated to induce the public to believe that the be readily ascertained with reasonable certainty, then the court may award as
article is manufactured in the Philippines, or that it is manufactured in any damages a reasonable percentage based upon the amount of gross sales of the
foreign country or locality other than the country or locality where it is in fact defendant or the value of the services in connection with which the mark or
manufactured, shall be admitted to entry at any customhouse of the Philippines. trade name was used in the infringement of the rights of the complaining party.
In order to aid the officers of the customs service in enforcing this prohibition, (Sec. 23, first par., R.A. No. 166a)
any person who is entitled to the benefits of this Act, may require that his name 156.2. On application of the complainant, the court may impound during the
and residence, and the name of the locality in which his goods are manufactured, pendency of the action, sales invoices and other documents evidencing sales.
a copy of the certificate of registration of his mark or trade name, to be recorded (n)
in books which shall be kept for this purpose in the Bureau of Customs, under 156.3. In cases where actual intent to mislead the public or to defraud the
such regulations as the Collector of Customs with the approval of the Secretary complainant is shown, in the discretion of the court, the damages may be
of Finance shall prescribe, and may furnish to the said Bureau facsimiles of his doubled. (Sec. 23, first par., R.A. No. 166)
name, the name of the locality in which his goods are manufactured, or his
156.4. The complainant, upon proper showing, may also be granted injunction. against the presentation of such advertising matter in future issues of such
(Sec. 23, second par., R.A. No. 166a) newspapers, magazines, or other similar periodicals or in future transmissions of
such electronic communications. The limitations of this subparagraph shall apply
SEC. 157, IPC. Power of Court to Order Infringing Material Destroyed. — only to innocent infringers: Provided, That such injunctive relief shall not be
157.1 In any action arising under this Act, in which a violation of any right of the available to the owner of the right infringed with respect to an issue of a
owner of the registered mark is established, the court may order that goods newspaper, magazine, or other similar periodical or an electronic
found to be infringing be, without compensation of any sort, disposed of outside communication containing infringing matter where restraining the
the channels of commerce in such a manner as to avoid any harm caused to the dissemination of such infringing matter in any particular issue of such periodical
right holder, or destroyed; and all labels, signs, prints, packages, wrappers, or in an electronic communication would delay the delivery of such issue or
receptacles and advertisements in the possession of the defendant, bearing the transmission of such electronic communication is customarily conducted in
registered mark or trade name or any reproduction, counterfeit, copy or accordance with the sound business practice, and not due to any method or
colorable imitation thereof, all plates, molds, matrices and other means of device adopted to evade this section or to prevent or delay the issuance of an
making the same, shall be delivered up and destroyed. injunction or restraining order with respect to such infringing matter; and
157.2. In regard to counterfeit goods, the simple removal of the trademark 159.4 There shall be no infringement of trademarks or tradenames of
affixed shall not be sufficient other than in exceptional cases which shall be imported or sold drugs and medicines allowed under Section 72.1 of this Act, as
determined by the Regulations, to permit the release of the goods into the well as imported or sold off-patent drugs and medicines: Provided, That said
channels of commerce. (Sec. 24, R.A. No. 166a) drugs and medicines bear the registered marks that have not been tampered,
unlawfully modified, or infringed upon as defined under Section 155 of this
SEC. 158, IPC. Damages; Requirement of Notice. — Code.
In any suit for infringement, the owner of the registered mark shall not be
entitled to recover profits or damages unless the acts have been committed with SEC. 160, IPC. Right of Foreign Corporation to Sue in Trademark or Service Mark
knowledge that such imitation is likely to cause confusion, or to cause mistake, Enforcement Action. —
or to deceive. Such knowledge is presumed if the registrant gives notice that his Any foreign national or juridical person who meets the requirements of Section
mark is registered by displaying with the mark the words '"Registered Mark" or 3 of this Act and does not engage in business in the Philippines may bring a civil
the letter R within a circle or if the defendant had otherwise actual notice of the or administrative action hereunder for opposition, cancellation, infringement,
registration. (Sec. 21, R.A. No. 166a) 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. (Sec.
SEC. 159, IPC, AMENDED BY RA 9502. Limitations to Actions for Infringement. — 21-A, R.A. No. 166a)
Notwithstanding any other provision of this Act, the remedies given to the
owner of a right infringed under this Act shall be limited as follows: SEC. 161, IPC. Authority to Determine Right to Registration. —
159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark In any action involving a registered mark, the court may determine the right to
shall have no effect against any person who, in good faith, before the filing date registration, order the cancellation of a registration, in whole or in part, and
or the priority date, was using the mark for the purposes of his business or otherwise rectify the register with respect to the registration of any party to the
enterprise: Provided, That his right may only be transferred or assigned together action in the exercise of this. Judgment and orders shall be certified by the court
with his enterprise or business or with that part of his enterprise or business in to the Director, who shall make appropriate entry upon the records of the
which the mark is used. Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a)
159.2. Where an infringer who is engaged solely in the business of printing the
mark or other infringing materials for others is an innocent infringer, the owner SEC. 163, IPC. Jurisdiction of Court. —
of the right infringed shall be entitled as against such infringer only to an All actions under Sections 150, 155, 164, and 166 to 169 shall be brought before
injunction against future printing. the proper courts with appropriate jurisdiction under existing laws. (Sec. 27, R.A.
159.3. Where the infringement complained of is contained in or is part of paid No. 166)
advertisement in a newspaper, magazine, or other similar periodical or in an
electronic communication, the remedies of the owner of the right infringed as SEC. 164, IPC. Notice of Filing Suit Given to the Director. —
against the publisher or distributor of such newspaper, magazine, or other It shall be the duty of the clerks of such courts within one (1) month after the
similar periodical or electronic communication shall be limited to an injunction filing of any action, suit, or proceeding involving a mark registered under the
provisions of this Act, to notify the Director in writing setting forth: the names or not a registered mark is employed, has a property right in the goodwill of the
and addresses of the litigants and designating the number of the registration or said goods, business or services so identified, which will be protected in the
registrations and within one (1) month after the judgment is entered or an same manner as other property rights.
appeal is taken, the clerk of court shall give notice thereof to the Office, and the 168.2. Any person who shall employ deception or any other means contrary to
latter shall endorse the same upon the filewrapper of the said registration or good faith by which he shall pass off the goods manufactured by him or in which
registrations and incorporate the same as a part of the contents of said he deals, or his business, or services for those of the one having established such
filewrapper. (n) 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.
SEC. 232, IPC. Reverse Reciprocity of Foreign Laws. — 168.3. In particular, and without in any way limiting the scope of protection
Any condition, restriction, limitation, diminution, requirement, penalty or any against unfair competition, the following shall be deemed guilty of unfair
similar burden imposed by the law of a foreign country on a Philippine national competition:
seeking protection of intellectual property rights in that country, shall (a) Any person, who is selling his goods and gives them the general
reciprocally be enforceable upon nationals of said country, within Philippine appearance of goods of another manufacturer or dealer, either as to the
jurisdiction. (n) 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
RULES ON SEARCH AND SEIZURE IN CIVIL ACTION FOR INFRINGEMENT OF appearance, which would be likely to influence purchasers to believe that the
INTELLECTUAL PROPERTY RIGHTS goods offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
RULES OF PROCEDURE FOR INTELLECTUAL PROPERTY RIGHTS CASES (A.M. 10-3- appearance as shall deceive the public and defraud another of his legitimate
10-SC, 3 OCT 2011) trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;
SOCIETE DES PRODUITS NESTLE V. CA (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;
MIGHTY CORPORATION V. E. & J. GALLO WINERY
or
(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
MCDONALD’S CORP. V. L.C. BIG MAK
to discredit the goods, business or services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis
MCDONALD’S CORP. V. MACJOR FASTFOOD CORP. mutandis (Sec. 29, R.A. No. 166a).
SKECHERS V. INTER PACIFIC INDUSTRIAL TRADING SEC. 160, IPC. 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
UFC V. FIESTA BARRIO 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. (Sec.
b) Unfair Competition 21-A, R.A. No. 166a)
SEC. 168, IPC. Unfair Competition, Rights, Regulation and Remedies. — SEC. 163, IPC. Jurisdiction of Court. —
All actions under Sections 150, 155, 164, and 166 to 169 shall be brought before
168.1. A person who has identified in the mind of the public the goods he
the proper courts with appropriate jurisdiction under existing laws. (Sec. 27, R.A.
manufactures or deals in, his business or services from those of others, whether
No. 166)
SEC, 161, IPC. Authority to Determine Right to Registration. —
In any action involving a registered mark, the court may determine the right to c) Action for False or Fraudulent Declaration
registration, order the cancellation of a registration, in whole or in part, and
otherwise rectify the register with respect to the registration of any party to the SEC. 162, IPC. Action for False or Fraudulent Declaration. —
action in the exercise of this. Judgment and orders shall be certified by the court Any person who shall procure registration in the Office of a mark by a false or
to the Director, who shall make appropriate entry upon the records of the fraudulent declaration or representation, whether oral or in writing, or by any
Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a) false means, shall be liable in a civil action by any person injured thereby for any
damages sustained in consequence thereof (Sec. 26, R.A. No. 166)
SEC. 232, IPC
d) Action for False Designation of Origin
Difference between Infringement and Unfair Competition
DEL MONTE CORPORATION V. CA SEC.169, IPC. False Designations of Origin; False Description or Representation.
169.1. Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
CO V. SPOUSES YEUNG
or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of fact,
- which:
(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the
PRO LINE SPORTS CENTER V. CA affiliation, connection, or association of such person with another person, or as
to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person; or
UNIVERSAL RUBBER PRODUCTS V. CA (b) In commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person's
goods, services, or commercial activities, shall be liable to a civil action for
CONVERSE RUBBER CORP. V. JACINTO RUBBER AND PLASTIC CO. damages and injunction provided in Sections 156 and 157 of this Act by any
person who believes that he or she is or is likely to be damaged by such act.
169.2. Any goods marked or labelled in contravention of the provisions of this
ASIA BREWERY V. CA Section shall not be imported into the Philippines or admitted entry at any
customhouse of the Philippines. The owner, importer, or consignee of goods
refused entry at any customhouse under this section may have any recourse
SOLID TRIANGLE V. SHERIFF under the customs revenue laws or may have the remedy given by this Act in
cases involving goods refused entry or seized. (Sec. 30, R.A. No. 166a)