Topic: Patents Assignment of Patents (1990)

Topic: Patents; Assignment of Patents (1990)
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 died 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.
ANSWER:
I will dismiss the application of Che-che’s husband, Franco.
Section 28 of the Intellectual Property Code of the Philippines provides that the right to a patent
belongs to the inventor, his heirs, or assigns. Based on the facts of the case, Che-che already
assigned her right over the patent with the corporation in exchange of shares of stock.
Therefore, the corporation as Che-che’s assignee has the right over the patent application.
Topic: Trademark; Generic Terms (1990)
In 1998, the Food and Drug Administration approved the labels submitted by Turbo Corporation
for its new drug brand name, “Axilon.” Turbo is now applying with the Bureau of Patents,
Trademarks and Technology Transfer for the registration of said brand name. It was
subsequently confirmed that “Accilonne” is a generic term for a class of anti-fungal drugs and is
used as such by the medical profession and the pharmaceutical industry, and that it is used as a
generic chemical name in various scientific and professional publications. A competing drug
manufacturer asked you to contest the registration of the brand name “Axion” by Turbo.
What will be your advice?
ANSWER:
I will advice that the application for registration of the brand name “Axion” should not be
opposed. Section 121.3 of the Intellectual Property Code of the Philippines defines trade name
as the name or designation identifying or distinguishing an enterprise.
As held in the case of Societe Des Produits Nestlé v. Court of Appeals, (G.R No. 112012, April
4, 2001), generic terms are those which constitute the common descriptive name of an article or
substance," or comprise the "genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods," or "imply reference to every
member of a genus and the exclusion of individuating characters," or "refer to the basic nature
of the wares or services provided rather than to the more idiosyncratic characteristics of a
particular product," and are not legally protectable.
In this case, the brand name “Axion” cannot be considered as a generic term because it does
not pertain to a genus of which the particular product is a species as it is different from the word
“Accilonne” which pertains to a class of anti-fungal drugs. Furthermore, the possibility of
confusion among the consumers is slim as medical professionals are likely to be cautious in
buying products they needed in their profession.
Thus, to contest the registration would be futile.
Topic: Trademark; Infringement (1991)
SONY is a registered trademark for TV, stereo, radio, cameras, betamax and other electronic
products. A local company, Best Manufacturing, Inc. produced electric fans which it sold under
the trademark SONY without the consent of SONY. SONY sued Best Manufacturing for
infringement. Decide the case.
ANSWER:
I will dismiss the case filed by SONY for infringement.
The Court in the case of Taiwan Kolin Co. v. Kolin Electronics, (G.R. No. 209843, March 25,
2015), ruled that the emphasis in determining violation of intellectual property right should be on
the similarity of the products involved and not on the arbitrary classification or general
description of their properties or characteristics. The Court held that ordinarily intelligent buyer is
not likely to be confused as the products of the contending parties are relatively luxury items not
easily considered affordable. Accordingly, the casual buyer is predisposed to be more cautious
and discriminating in and would prefer to mull over his purchase.
In this case, SONY’s television sets and DVD players perform distinct function and purpose
from Best Manufacturing’s electric fans. Also, considering the products involved in this case, the
ordinary purchaser is not the “completely unwary consumer” but is the “ordinarily intelligent
buyer” and thus, the possibility of confusion is less likely.
Therefore, the case for infringement will not prosper as the differences from the two marks in
question are sufficient to prevent any confusion on the part of the consumers.

Topic: Patents Assignment of Patents (1990)

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Topic: Patents Assignment of Patents (1990)

Uploaded by

Copyright:

Available Formats

Topic: Patents; Assignment of Patents (1990)

I will dismiss the application of Che-che’s husband, Franco.

Topic: Trademark; Generic Terms (1990)

What will be your advice?

Thus, to contest the registration would be futile.

Topic: Trademark; Infringement (1991)

I will dismiss the case filed by SONY for infringement.

You might also like