11.4 Right of Priority ............. .... ......... ......... ......... .

68
5.6 Where to Appeal Decision of the Director
General ............................. .. ..................... . 43 12. Procedure for the Grant of Patent .... ........ .............. .. . 68
6. The Bureaus ..... .... .... ..... .... .................................. •· 44 12.1 Procedure Outline ............... ........................ . 68
6.1 Bureau of Patents ... ....................... ............... . 44 12.2 Filing of the Application .. .......... .. ................. .. 69
6.2 Bureau of Trademarks ....... ...... ... ... ........... ...... . 44 12.3 Prohibited Matter .................... .......... .. .. ..... . . 70
6 .3 Bureau of Copyright and other Related Rights ... . 44 12.4 Unity of I nvention ... .. .................. ... ............. . 70
6.4 Bureau of Legal Affairs ............. ....................... 45 12.S Accordance of Filing Date .. .. ........................ .. 71
12.6 Formality Examination ... .......... .. ................. .. 71
Illust rative Case 2-2: They Have The Power ..... . 46
12.7 Classification and Search .......................... ... .. 72
6.5 Bureau of Documentation, Information, and 12.8 Publicat ion of Patent Application .. .......... .. ..... .. 72
Technology Transfer ................. .. .... ... .... ... . 50 12.9 Confidentiality Before Publication .... ....... ....... .. 73
6.6 Management Information Services and 12.10 Rights Conferred After Publication ................ .. 73
EDP Bureau .. ......................... ................. . 51 12.11 Observation by Third Parties ......................... . 75
6.7 Administrative, Financial and Human Resource 12.12 Substantive Examination ................. ............. . 75
Development Service Bureau ........ ........... .. 51 12.13 Law contest ..................... ..... ..................... .. 75
52 12.14 Case of "Tough Love" ........... .. ..................... .. 76
7. Enforcement and Visitorlal Power .. ............... ... ... ....... . 12.15 Amendment of Application .... ................ ....... .. 77
7 .1 IPR Enforcement Office ... ..... ..................... .. ... . 52
53 12.16 Grant of Patent .... .. ... .. .... ............. ............... . 77
7 .2 Commencing Enforcement Action .................... . 12.17 Refusal of t he Application .......... ................... . 77
7.3 Actions on the Complaint ............................ .. . . 53
54 12. 18 Publication of Grant of Patent.. ..................... .. 78
7.4 Responsibility of the Complainant .... ......... .. ..... . 78
54 12. 19 Issuance of the Certificate or Letters Patent .... .
7 .5 Visitorial Order ... .......................................... . 12.20 Term of Patent ............................................ . 78
7 .6 Compliance Order .. .................. .................... .. 55
Illustrative Case 3 - 1: End of Days ................. . 78
10 Fast Laws on Intellectual Property Office .... .. 55
12.21 Annual Fee~ .. ................ .. ... ........................ .. 80
12.22 Surrender of Patent .................. ... ............. .. .. 81
Chapter III: Law on Patents
12.23 Correction of Mistakes .................... ............. . 81
8. Patent ....................... ..... ........................................ 57 12.24 Changes in Patents ..................................... .. 82
8.1 Nature and Definition of Patents .................... .. 57 12.25 Form and Publication of Amendment ............. .. 82
8.2 Threefold Purpose and Ultimate Goal .............. . 58
13. Cancellation of Patent ............................................ . 82
9. Patentable and Non- Patentable Inventions .. ............... . 59 13.1 Grounds ....................................... ..... ..... ... . 82
9.1 Patentable Inventions ................................... . 59 13.2 Petition for Cancellation ........... .................... . 83
9.2 Non- Patentable Inventions ..... ....................... . 59 13.3 Jurisdiction and Notice of Hearing .................. . 83
10. Elements of Patentability ......................................... . . 61 13.4 Cancellation of t he Patent ... ................. .......... . 83
10.1 Elements ........ ..... ....... ..... .................. ......... . 61 13.5 Effect of Cancellat ion of Patent or Claim .. ... ... .. 84
10.2 Novelty ... .................... ..... ..... .... ....... .. :, .. ..... . . 61
14 . Remedies of Persons Deprived of Patent Ownership ..... 84
10.3 Fllllng Date ........................... ... .. .............. .... .. 62
62 14.1 Person Declared by Final Court Order as
10.4 Priority Date ..... .. .......................................... . Having Right to the Patent ..................... .. 84
10.5 Non-Prejudicial Disclosure ............... ............... . 63
64 14.2 True and Actual I nventor ........... .................. .. 85
10.6 Inventive Step .... .. ..... .... ............................... . 14.3 Publication of t he Court Order ...................... .. 85
10.7 Graham Factors .............. ............................. .. 65
65 14.4 Time to File Action in Court ........................... 85
10.8 Industrially Applicable .................................. ..
66 15. Remedies Against I nfringement .................... ....... .... . 85
11. Right to a Patent ......................... ...................... .... .
66 15.1 Rights Conferred by Patent .......... ........ : ...... .. 85
11.1 Ownership of Patent ...... .... ............. .. ............. .
66 15.2 Civil Action for Infringement ..... ... ..... ... ......... . 86
11. 2 First-to-FIie Rule ........... .................... .. ...... .... .
15.3 Infringement Action by a Foreign National .... .. . 87
11.3 l nventions Pursuant to Commission or
Employment ... ................ .. ... .... .. ............. . 66 15.4 Presumptions in Patent Infringement Actions .. . 87

xx JOO
 The La w on Trademarks. Covers how marks are acquired and
its ramifications. Case law abounds in this part considering the
number of decided cases on this subject. This part also covers
unfair competit ion, a topic so closely in tertwined with the
trademark law.
The Law on Copyrights. Definitely, the m ost relevant topic
to students particularly t hose in colleges. This explains th e
scope of economic and moral rights over one's literary or artistic CONTENTS IN BRIEF
work. The discussion on the limitations of copyright is anot her
highlight of this part.
Search Warrants and Intellectual Property Rights. Briefly Chapter I: Intellectual Property Rights
discusses how intellectual property rights are enforced through
1. Republic Act No. 8293 ...... ..... .... ......... ............. ....... .. 2
a search warrant. Included in this part is a discussion on court's
2. Intellectual Property Rights ...... .... .... .. .. .................. .. 7
jurisdict ion and specia l commercial courts.
3. Technology Transfer Arrangement ........... ..... ..... .... ... . 33
Other Related Laws. This last part features summaries and
salient features of laws that are linked to Intellectual Property Chapter II: Intellectual Property Office
Law. These laws includes The Business Name Law (Act No.
3883), I nventors and I nvention I ncentive Act (Rep. Act No . 4. Intellectual Property Office.... .................................. .. 37
5. Director General
7459) and t he Optical Media Board (Rep. Act No. 9~39).
6.
······················································
The Bureaus ..... ..... ........................................ .... .. ..
38
44
Finally, while the purpose of this text is to explain t he law in 7. Enforcement and Visitorlal Power .... ... .......... ............. . 52
preparation for t he Bar examinat ions, it would cause the author much
ful fillment if this book would also make readers resist the temptat ion Chapter III: Law on Patents
of buying those so-called "pirated" goods. It is hoped that this decision
will no longer be based on " k arma" but because we, all of us, finally 8. Patent ... ... ..... .......: ......... .... .. ............. ....... ........... .. . ,-;'157
decide not to steal anymore. 9. Patentable and Non:.Patentable Inventions ... .............. . •59
10. Elements of Patentability ................................. ....... .. 61
11. Right to a Patent .. ........... ...................................... . 66
E.C.S.
12. Procedure for the Grant of Patent ........................ .. .. . 68
13. Cancellation of Patent ............................................ .. 82
14. Remedies of Persons Deprived .of Patent Ownership ... .. 84
15. Remedies Against Infringement ......... .... ................. .. 85
16. Limitations on Patent Rights ................................ ... .. 89
17. Voluntary Licensing .. .... ........ .. ....... .......... .... ..... ..... .. . 101
18. Compulsory Licensing ................... ...... ................... . . 105
19. Assignment of Rights ......._.................. ..... ..... ... ...... .. . 112
20. Utility Models ................... .......... ....... ...... .... .... ...... . 113
21. Industrial Designs ................. ..... ...... ...... ........ ........ . 115
Chapter IV: Law o n Trademark

22. Trademark . .. .. .. .. . . . . .. ... ... .. . .. . . ... . .... ... .. .. . .. .. .. .. . .. .. . .. . 123

23. Non-Registrable Marks .. ...... .... ............ ..... .. .. ........ ... 134
24. Procedure in Trademark Registration ... ..... .. .. .. .. . .. ... ... 209
25. Certificate of Registration .... .. ....... ... .......... ............ ... 219
26. Duration of Certificate of Registration .. . .. .. . .. .. . .. . .. . .. ... 220
27. Rights Conferred .. ................................................... 222
28. Assignment and Transfer.. .. ...... .. .......... .......... .. ... ..... 229

xvi xvii
29. Cancellation of Registration ................... .. ........... .. .. .. 230
30. Remedies Against Trademark Infringement ................ . 233
31. Limi tations .......... ........................... •...... · .. •.. · · · .. · .. .. · 244
32. Trade Names or Business Names ............................. .. 24 5
33. Unfair Competition ............ ... .... ....... ... .......... .......... . 252
34 . Criminal Penalty ...................................................... 269

Chapter V: Law on Copyright CONTENTS

35. Copyright .... .. ................... .. ................................... . 273

36. Scope of Copyright .......... ...... ... ..... ........ ................. .. 278 Chapter I : Intellectual Property Rights
37. Non Copyrightable Works .................... .. .................. . 284
1. Republic Act No. 8293 .. .. .. ...................................... .. 2
38 . Copyright Ownership .. .......... ... .............. .. ............... . 290
1.1 Historical Background of Republic Act No. 8293 .. 2
39. Transfer or Assignment .......................................... .. 292
1.2 Non-Retroactivity .......................................... . 3
40. limitations on Copyright ............ ......... ... ... .. ... ........ .. 295
1.3 State Policies on Intellectual and Industrial
41 . Moral Rights ........................................................... 324
Property System ... .. ...................... ... .... .... . 3
42. Right to Proceeds in Subsequent Transfers 1.4 International Conventions and Reciprocity ....... .. 4
of Copyright ........................................................ •• 326
43. Performers, Producers, and Broadcasting Illustrative Case 1-1: Invalid " Defense" .......... .. 4
Organ ization ................................................. . 327 2. Intellectual Property Rights ..................................... . 7
44. Term of Copyright .... .. ...................... ................... .. .. 33 1 2.1 I ntellectual Property Rights, Defined ................ . 7
45. Remedies Against I nfringement ................................ 332 2.2 Differences Between Copyrights, Patents,
46. Points of Attachment .. ............. .. ............................. . 338 and Trademarks .................................... .. 8
47. Deposit and Notice ................................................ .. 339
Illustrative Case 1-2: Pearl & Dean, Inc. v.
Shoemart, Inc........................... ............. . 8
Chapter VI: Search W arrants and Intellectual Illustrative Case 1-3: Elidad Kho v. Court
Property Rights of Appeals ............................. ........ ...... . .. 25
48. Jurisdiction ........................... ...... ... ....... ... ... ........... . 345 3. Technology Transfer Arrangement .... ....................... .. 33
49. Sear ch Warrants .. ................................................... . 352 3.1 Technology Transfer Arrangement, Defined ...... .. 33
3.2 Nature .............................. ........................... . 33
Chapter VII: Related Laws 3.3 Required and Prohibited Stipulations ...... ... ..... .. . 34
50 . Optical Media Act of 2003 ...................................... .. . 3 71 10 Fast Laws on I ntellectual Property Rights 34
51. Anti-Camcording Act of 2010 ................. ................. .. 374
52 . Inventors and Inventl9n Incentives Act.. .. .................. . 375 Chapter II: Intellectual Property Office
53. Act t o Regulat e Marked Containers....................... ..... . 378
379 4 . Intellectual Property Office............ .......................... .. 37
54. Act Penalizing Fraudulent Advertising .. ..................... .. 4. 1 Creat ion ... ........ ......... .... .... .. ... ......... ... ......... . 37
Full Text of Republic Act No. 8293 as amended ....... ... ........ . 382 4.2 Organization ............................................... .. . 37
4.3 Functions .................. .................. ................. . 37
Su bject Index ............ ..... .... ............. .................. ...... .. ... . 4 37
5. Director General .... ..................................... ............ . 38
Case I ndex ............................................... .. ............... .. .. 449 5.1 Functions .... ... ...... ... ................. .. ...... .. .......... . 38
5.2 Qualificat ions ............................................... . 39
5.3 Term of Office ..... .. .... ... ... ............................. .. 39
5.4 Jurisdiction .................................................. . 39
5.5 Jurisdiction Over Interlocutory Orders of the
Bureau of Legal Affairs ............................. 40
Illust rative Case 2-1: Just The Final Order ........ 40

xviii xix
 15.5 Prescription in Action for Infringement .......... .. 88 20.3 Conversion of Patent Applicat ions or
15.6 Defenses in Action for Infringement ............... . 88 Applications for Utility Model
15. 7 Crim inal Action for Infringement..... ............... . 88 Registration ... .... ..... ....... .. ... ...... .. .......... . 115
20.4 Prohibition Against Filing of Parallel
16. Limitat ions on Patent Rights ......................... .......... .. 89 Applications ......................... ......... .. ...... . 115
16.1 Acts Allowed Even Without Authorization ........ . 89
21 . Industrial Designs .. .. ... .................. .............. .... ..... . .. 115
Illustrative Case 3-2 : Bring In The Medicine ... . 90 21.1 Industrial Designs ..... .... ... ..... .... ... ... ......... .. . 115
16.2 Prior User.......... ......................................... . 94 21.2 Substantive Conditions for Protection ............. . 116
16.3 Use of Invention by Government ................... . 95 2 1. 3 Contents of t he Application ..... .... .. .. .. ........... . . 116
16.4 Extent of Protection and I nterpretation 21.4 Several Industrial Designs in One
of Claims; Tests in Patent Infringement ... .. 97 Application .... .. ... ......... .. ..................... ... . 117
16.5 Doctrine of Equivalents .... .......................... .. 97 21.5 Examination of Application ....................... .. . . 11 7
21.6 Registration of I ndustrial Design ... ................ . 117
Illustrative Case 3-3 : Unclaimed Claim ........... . 98 21.7 Term of Registratio n ................................... . 118
17. Voluntary Licensing ................................................. . 101 21.8 Application of Other Sections and Chapters ... .. 118
17.1 Voluntary License Contract .... .. ... .................. . 101 21.9 Rights Conferred of Layout-Design
17. 2 Prohibited Clauses .......... ... ........................... 102 Registration ..... .................. .. ................. . 120
17.3 Mandatory Provisions ......... .......................... . 104 21.10 Limitations of Layout Rights .................... ..... . 120
17.4 Rights Reserved to Licensor and Licensee ....... . 105 21.11 Cancellation of Design Registration .... .......... . . 121
17.5 Registration of License Cont ract ................... .. 105 21.12 Grounds for Cancellation of Layout-Design
of Integrated Circuits ................ ............ . 121
18. Compulsory Licensing ...................................... .. ..... . 105
18.1 Nature of Compulsory Licensing ................ ... .. 105 10 Fast Laws on Patent ................................ . 122
18. 2 Jurisdiction .... ........ ......................... ........... .. 105
18.3 Grounds............. ........................................ . 106 Chapter IV: Law on Trademark
18.4 Period for Flllng a Pet ition for a Compulsory
22. Trademark ........... :~..... ....... ................. .................. . 123
License ................ ................................. . 108
22.1 Trademarks .: ........ .... .. .. .... ................ .. ....... . 123
18.5 Requirement to Obtain a License on
22.2 Collective Mark .................................... ...... . 124
Reasonable Commercial Terms ................ . 108
22.3 Acquiring a Marl<. ........ .. .............................. . 124
18.6 Compulsory Licensing of Patents I nvolving
. Semi-Conductor Technology ................. .. . . 109 Illustrative Case 4- 1: Ownership And
18.7 Compulsory License Based on Registration ................... .... ... .... ............ . 1 25
Interdependence of Patents ... .................. . 109
18.8 Forms and Contents of Petit ion............ ... ....... . 110 22.4 Functions ...... ..... .... ............... ..................... . 129
18.9 Notice of Hearing .... ............ ........ ................ . 110 23. Non-Registrable Marks ............... ..................... .... ... . 134
18.10 Terms and Conditions of Compulsory License .. . 110 23.1 Non-Reglstrable Marks Under Section 123 .. .... . 134
18.11 Amendment, Cancellation, Surrender 23.2 Falsely Suggesting Connection .... ............. .... .. 136
of Compulsory J_icense ........................... .. 111
18. 12 Licensee's Exemption from Liability ............... .. 111 Illustrative Case 4-2 : Goodwill Hunting .......... . 136
19. Assignment of Rights ................. .... ....... ................. .. 112 23.3 Identical with registered mark ...... ............... .. 144
19. 1 Assignment of Patents ................................. 112 Illustrative Case 4-3: The Durable
19.2 Form of Assignment.... .. .......................... .... .. 112 ~Ang Tibay"..................................... .. .... . 145
19.3 Recording .. ................ ..... ............................ . 112
19.4 Rights of Joint Owners ................................ .. 113 23.4 Identity of Mark Alone is Not Trademark
Infringement .. ....................... .. .............. . 148
20. Utility Models .. ..................................... ................. . 113 23.5 Colorable Imitation of a Registered Mark ....... .. 150
20.1 Utility Models ..... ...... ... .. ... ..... .. .... .... ... ... ..... . 113
20.2 Distinguished from Patentable Inventions 114 Illustrative Case 4-4: Yummy " Big Mac" 150

xxii xxiii
 Illust rative Case 4-5: One More Please ........... . 154 24.9 Reviving Abandoned Application .. .............. ... . 2 18
24.10 Opposing an Application ... ......... ................... . 2 18
23.6 Confusion in Trademark Infringement ............ . 157
23. 7 Tests to Determine Confusing Similarity 25. Certificate of Registration • ................. ................. ..... . 219
Between Marks .................... .. .. ............ . . 157 25.1 Prima Facie Evidence of Validity .... .... ........... . 219
25.2 Issuance and Publication of Certificate .......... ,. 219
Illustrative Case 4-6: Not All "S" Are Super ... . . 158 25.3 Cancellation or Amendment of Certificate .. .. .. . 2 19
23.8 Dorninancy Test .... ........... .......................... . 163 25.4 Correction in Case of a Mistake of I PO ........... . 219
25.5 Use of a Mark in a Different Form ............. .... . . 220
Illustrative Case 4-7: This Beer Is Not 25.6 Use of a Mark for Goods Belonging to the
Confusing ...................... ....................... . 164 Class Registered ... ....... ... .... ... . , ............ .. . 220
Illustrative Case 4-8 : If It Sounds Alike .... .. .... . 167 25. 7 Use of a Mark by Related Company ................ . 220
23 .9 Holistic Test ............................ ................... . 170 26. Duration of Certificate of Registration ............... ........ . 220
Illustrative Case 4-9: "Sunshine" is Not 26. 1 Duration ..... ... ..................... , .. .. .... ... .. ........ . 220
"Del Monte" .. .... ... ................ .. ............... . 171 26.2 Non-Use of Mark ... .. ..... ... .... ... .................... . 221
Illustrative Case 4- 10: "Eve" Is Not "Loom" .... . 176 26.3 Renewal .. ..... ........ ............... .. ..................... . 221
26.4 Renewal of Marks Registered Prior to
23.10 Use of Both Tests ......... ............ ... . .............. . . 179 Republic Act No. 8293 ............................ . 222
Illustrative Case 4 - 11: Not Once But 27. Rights Conferred .. ... . ... ... .. ........................ ... ........... . 222
Twice Tested ........................ ... .... ..... .... . 179 27 .1 Exclusive Right over the Mark ................. .. ... . 222
23.11 Lack of Proof of Actual Confusion ..... .............. . 182 Illustrative Case 4- 18: You Can't Touch This ... . 223
23.12 Identical With or Confusingly Similar with
Well-Known Marks ....................... ... ...... . 182 27 .2 Limitation on Trademarks Involving Medicines .. 225

Illustrative Case 4- 12: Privileged Harvard ....... . 183 Illustrative.Case 4-19: Bring I n The Medicine .. 225
,
Illustrative Case 4 - 13: The " Well-known'' 27.3 Rights Conferred to Owner of Well-
Rolex .... ........................................... ... . . 189 Known Mark .. ............ ........... ...... ... ........ . 228
Illustrative Case 4-14: Oh Paris ............... ...... . 192 27 .4 Limit ation ... ... ... ... .................... .. .. .. ... ... ...... . 228
23.13 Criteria In Determining When a Mark 28. Assignment and Transfer .... ... .. ... ........... ........... .... ... . 229
is Well- known ........................ ............... . 199 28.1 Assignment of Registered Mark ... ................. . . 229
23.14 Marks that are Considered Generic .......... ...... . 200 28.2 Form of Assignment........... .... ................... ... . 229
Illustrative Case 4- 15: Leaming "Lyceum" ...... . 202 28.3 Recording of Assignment and Transfer .. ... ..... . . 229
Illust rative Case 4- 16: Pale Pilsen For All ........ . 204 28.4 License Contracts .......... ............... .... ... .... .... . 229
29. Cancellat ion of Regist ration .............. .... .. ... .............. . 230
23.15 Marks Indicating Geographical Origin ............. . 206 29.1 Wt)en Filed ; Grounds ... ........................ ........ . 230
. '
Illustrative Case 4- 17: We Are From The 29.2 Effect of Cancellation .. .......................... ....... . 233
Same Saint .......... ..... ..... ........ ......... ... ... . 206 233
30. Remedies Against Tradem ark Infringement ................ .
24. Procedure in Trademark Registration ........................ . 209 30.1 Civil Remedies .... ........... ....... ...................... . 233
24.1 The Application .......... ...... ...... .... ... .............. . 209
Illustrative Case 4-20: Likely Infringed .. ... ..... . 234
24.2 The Appllcant ..................... .... ... ................. . 210
24.3 NICE Classification ... .................................. .. 211 30.2 Trademark Dilution ... .. ......................... ........ . 236
24.4 Disclaimers ... ..•............. ........... ... ................ 214
24 .5 Declaration of Actual Use ........ .. ......... .......... . 215 Illustrative Case 4-21: "Diluted" Jeans ......... . . 236
24.6 FIiing Date ... .. ............ ... ................ ............. . 216 30.3 Action for False or Fraudulent Declaration .... ... . 242
24. 7 Priority Right ............. ............ .. ............ ....... . 217 30.4 Damages and Injunction .............................. . 242
24.8 Examination Procedure ............................... . 217

xxiv XXV
 30.5 Destruction of Infringing Material ................. .. 243 36. Scope of Copyright ........... ........... .. ........... .... .. ... .. . .. 278
30.6 I nfringement Action by a Foreign National .... .. 243 36.1 Original Works ... ... ... ...................... ............ . 278
30.7 Presumption in Trademark 36.2 Copyright and E- commerce Act .. ....... ........... .. 282
Infringement Cases ............................... . 243 36.3 Derivative Works .............. ........ ... .. ......... .. ... . 282
36.4 Publisher's Right .. ......... ................. .... ..... .... . 284
244
31. Limitations .................. ......... •... •••••.. •••· · · ••....... · · · · · .. · 244 37. Non-Copyrightable Works .................................... ... . . 284
31.1 Limitations on Trademark ......... .................. ..
31.2 Prior User ............ .. ............... ..................... .. 244 37 .1 Unprotected Subject Matter .......................... . 284
31.3 Printer of Infringing Mark ............................ .. 244
Illustrative Case 5-1: Game Show ............... .. 286
31.4 Advertisement .................... .. ....... ... ............ . 244
31.5 Imported Drugs ......................................... .. 245 37 .2 Works of the Government ............. ............... .. 289
37.3 Government and Copyright ........................... . 290
245
32. Trade Names or Business Names ............................. .. 245 38. Copyright Ownership .............................................. . 290
32 .1 Trade name, Defined .................................. .
32.2 Names that Cannot be Used as a Trade 38.1 Rules on Copyright Ownership ................ ..... . 290
Name ........................... ....................... .. 246 38.2 Copyright Ownership in t he Course
32.3 Protected Even Without Registration .............. . 246 of Employment .... ................................. .. 291
38.3 Copyright Ownership of a Commissioned
Illustrative Case 4-22 : No Registration? Work ..... .... ......... ............ ...... .. ............. . . 291
No Problem .......................................... .. 246
38.4 Copyright Ownership of Audiovisual Work .. .. .. .. 291
252 38.5 Copyright Ownership of Letters .................... .. 292
33. Unfair Competition ................................................ .. 252 38.6 Anonymous and Pseudonymous Works .......... . 292
33 .1 Nature of Unfair Competit ion ........................ .
33.2 Elements.................................................... . 253
39. Transfer or Assignment ............................. ......... ..... . 292
33.3 Unfair Competition vis-a-vis Trademark 39.1 Transfer, Assignment and Licensing
Infringement ......................................... . 255
of Copyright ......................................... .. 292
33.4 Unfair Competition vis-a-vis Product Brands .... . 255
39.2 Copyright i~ Distinct from Material Object. ...... . 294
33.5 Unfair Competition vis-a-vis Used 39.3 For m and Recording of Assignment ................ . 294
Containers ......................................... •.. • 257
39.4 Designation of Society ................................ .. 294
33.6 Distinguished from Infringement
of Trademark ......................................... 258 40. Limitat ions on Copyright ........................................ .. 295
33. 7 False Designations of Origin; False 40.1 Limitations on Copyright ................ ............. .. 295
Description or Representation .................. . 258
Illustrative Case 5-2: Must Carry ................... . 297
Illustrative Case 4-23: Not From Portugal. ...... . 259
40.2 Fair use .................................................... .. 303
33.8 Unfair Competition under Article 28, Illustrative Case 5- 3: Unfortunate Copying ...... 305
Civil Code ..... ........................................ . 263
40.3 Plagiarism and Copyright Infringement
Illustrative Case 4-24: Bad Business ..... : ....... .. 264
Distinguished ........................................ . 313
34. Criminal Penalty ........ .......... .. .... ................. ...... •.... .. 269 40.4 Copyright in Work of Architecture ................. .. 314
34.1 Penal Provision for Trademark Infringement ... .. 269 40.5 Reproduction of Published Work .................... . 314
40.6 Reprographic Reproduction by Libraries ......... .. 315
Illustrative Case 4-25: No Doubt .... .. ............ .. 269 40.7 Reproduction of Computer Program .............. .. 315
10 Fast Laws on Trademark .. ....................... .. 272
Illustrative Case 5-4: Pirated "Installers" ....... .. 3 16
40.8 Importation and Exportation of Infringing
Chapter V : Law on Copyright
Materials .............................................. . 323
35. Copyright ...... .................... ... .................... .... ........ .. 273
35.1 Copyright .................................................. . 273 41. Moral Rights ................................................. ......... . 324
·35,2 Distinguished from Patents ........................... . 275 41.1 Nature ... .............. ..................................... .. 324

x:xvi x:xvii
 4 1.2 Scope ........ ... .... ...... ... .. ... ........................... . 324 45.9 Prescription of Action for Damages .. ............ .. 337
41 .3 Waiver .... ..... .. ........ ......... ............ .............. .. 325 45. 10 Enforcement of Moral Rights .................... ..... . 337
4 1.4 Right of Attribut ion in a Collective Work ........ .. 325
325 46. Points of Attachment ....................... ......... ........... .. .. 338
4 1.5 Editing, Arranging, and Adaptation of Work ..... . 46.1 Points of Attachment for Works under
41.6 Term of Moral Rights ................................... . 325
Sections 172 and 173 .. .. ........... ............. .. 338
4 1. 7 Breach of Contract .................. .. ....... .. .. ...... •• 326
46. 2 Points of Attachment for Performers .. ........ ..... . 338
46.3 Points of Attachment for Sound Recordings .... .. 339
42. Right t o Proceeds in Subsequent Transfers
of Copyright ........................... .................. •... •• 326 46.4 Points of Attachment for Broadcasts .............. .. 339
42.1 Sale or Lease of Work ................................ .. 326
47. Deposit and Notice ..................... .... .............. ..... ..... . 339
4 7 .1 Issuance of Certificate of Deposit ................. . 339
43. Performers, Producers, and Broadcasting
Organi zation ........... .......... ....... .................... ••• 327 47.2 Notice of Copyright ................. ...... .............. .. 340
Definitions ............................. ....... .. ....... •... •• 327 47.3 Ownership of Deposit and Instruments ........... . 340
4 3. 1 328 47.4 Effect of Registration and Deposit of Work .. .. .. . 340
43.2 Scope of Performers' Rights .... ...................... .
Moral Rights of Perfor mers ........................... . 328
43.3 329 Illustrative Case 5- 5: Unregistered Copyright... 340
43.4 Term of Rights Granted to Performer .............. .
Limitation on Right .. .. .................................. . 329 47.5 Public Records .. ..... ...................... ... ........... .. 342
43. 5
Additional Remuneration for Subsequent 4 7. 6 Copyright Division Fees ....................... .. ... .. . .. 343
4 3.6 329
Communications or Broadcasts ................ .
10 Fast Laws on Copyright ............................ . 343
43 .7 Scope of Right of Producers of Sound
Recordings .................. ......................... . . 329
330 Chapter VI: Search Warra nts and Intellectual
43.8 Communication to the Public................. ........ •
Prope rty Rights
43.9 Limitation of Right of Producers of Sound
Recordings ................. ........................... . 330
48. Jurisdiction ...... .... .. .... ....... .................................... .. 345
43.10 Scope of Right of Broadcasting 330
48.1 Over Civil and Criminal cases for IPR
Organizations ........................................ . Violations .................. ... .. ......... ......... ... .. 345
Limitations on Rights ..... ................. ............. . 330
43.11 48.2 Special Commercial Courts ........................... . 347
44. Term of Copyright ............ ...... ... .............. •••• .. •·• ...... .. 331
Illustrative Case 6-1: Special IPR Courts .. .. 348
44.1 Term of Protection ....................................... . 331
44.2 In Case of Joint Authorship ....................... .... . 331 49. Search Warrants ............. ... ..... ............................... .. 352
44.3 In Case of Anonymous or Pseudonymous 49.1 Nature of Search Warrants .. ....................... .. 352
Works .......................................... ..... .. .. 331 49.2 Requisites for Issuance ....... ......................... . 352
44.4 In Case of Works of Applied Art .................... .. 331 49.3 Probable Cause .. ........................................ .. 353
44.5 In Case of Photographic Works ...................... . 331
331 Illustrative Case 6-2: No Personal Knowledge .. . 354
44.6 I n case of Audiovisual Works ........................ .
44.7 Calculation of Term ........ : ................... .......... . 331 49.4 Determining Probable Cause ........................ .. 361
44.8 Term of Protection for Performers, Produters, 49.S Searching Questions and Answers ........ .. ...... .. 362
and Broadcasting Organizations ............... . 332
Illustrative Case 6-3 : Searching Questions
45. Remedies Against Infringement ............................... . 332 and Answers Exemplified ..... .. ............... .. 362
45.1 Infringement .. .......... .... ....... ...................... • 332
45.2 Remedies for Infringement .......................... . 332 Chapter VII: Related Laws
45.3 Criminal Penalties ...................................... .. 335
45.4 Possession of Infringing Copy of the Work ... .. . 336 so. Optical Media Act of 2003 ............................ ........... .. 371
336 50.1 Purpose .................................................... .. 371
45.5 Affidavit Evidence ........................................
45.6 Presumptions ................................. .. .. ........ . 336 SO. 2 Optical Media, Defined ................................. . 372
337 SO. 3 Penal Provisions .... ............. .... ........... ......... .. 372
45. 7 Presumption of Authorship ..................... .. ... .
45.8 Jurisdiction ........... ................................ .... .. 337

xxix
xxvili
51. Anti-Camcordlng Act of 20 10 .. ....... .. ... .. .. .. .. .... . ......... 374
r
5 1. 1 Purpose . . . . . . . . . . . . . . . . . . . . . .. . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . 374
51.2 Acts Penalized... ... .... ....... .... ..... ... .. .. ............. 375
52. Invent ors and I nvention Incentives Act................. ..... . 375
52. l Purpose ............. .. ............. .... .... ... .. ............ . 375
52.2 Invention, Defined .... ............. .. .................... . 376
52.3 Inventor, Defined ........ .... ............................ . 376
52.4 Cash Reward for Inventions ....... ................... . 376 CHAPTER I
52.5 Tax Incentives ... .......... ... ...................... ...... . 377
52.6 Tax Exempt ion .. .......... .................. ........... ... . 377
52.7 Assistance Fund .... .. ....... ............................. . 377 INTELLECTUAL PROPERTY RIGHTS
52.8 Loan Assistance .......................... ........ ... ... .. . 378
53. Act t o Regulate Marked Containers ........ .................... . 378
53.1 Acts Penalized ........ ................................... . . 378 Let us begin our study wit h this almost t rue story.
53.2 Sold Containers ........... .. .................. ........... . 379
379 Juan Is a hard-working and honest middle-aged entrepreneur
53.3 Use for Nat ive Products .................................
who managed to put up a business that offers innovative products
54. Act Penalizing Fraudulent Advertising .... ................ ... . . 379 and services. Before he started operation, he thought long and hard
54.1 Acts Penalized .............. .... ........................ .. . 379 on what is the appropriate name of his business. A trusted employee,
54.2 Other Acts Punished ... .. ............................... . 380 Pedro, suggest ed " Michael's" named after t he only son of his employer.
54.3 Penalty Provided .................................. .. ..... . 381 And so, " Michael's" came into existence.
Realizing what happened to the "lechon manok" craze during the
Appendix
B0s when kiosks selling grilled chicken mushroomed, Juan asked a
Full Text of Republic Act No. 8293 as amended ... ........ . 382 relative what he can do to prevent others from imitating his business.
437 The relative told him he has little idea about patents but estimates
Subject Index ......... .. ... ...... ... ............ ..................... .
that the cost of securing a patent registration is expensive and will
Case Index ...................... .......... ............ .. ...... ........ . 449 take an eternity considering that we are in the Philippines. The remark
discouraged Juan to pursue patent application. He, however, secured
copyright registration over t he technical drawing of his product which
he got so easily at such a low cost .
The business flourished because of Juan's sheer guts and
determination. Customers availing Juan's products increased in
number such that his production capacity is not enough to meet the
demand. To augment production, he decided to help Pedro establish
his own production unit and made him his independent supplier.
Marco, another employee was envious because he was not given
the same opportunity. Since he already learned the trick of the trade,
he established his own business. He lowered his selling price and
convinced the biggest customer of Juan, YM Superdooper St ore to
avail his services instead. Dindo, a neighbor monitoring every activity
of Juan followed suit. He started his own business offering same
products and services and even applied and successfully regist ered
"Michael's" as his trademark for instant goodwill.
Because the business was really good, YM Superdooper Store
got into the act. It established a manufacturing company similar to

XXX 1
 2 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER I 3
INTELLECTUAL PROPERTY RIGHTS

that of Juan and offered its merchandise and services at much lower 1.2 Non-Retroactivity
price.
By express provision of the law, Republic Act No. 8293 became
The events naturally led to a very significant drop in the income effective on Ja nuary 1, 1998 . Assuming t hat there is an infraction of
of Juan t hat forced him to finally consult a lawyer. He learned that his the law prior to t his date, will an action based on Republic Act No.
copyright over the technical drawing is not enough to prevent others 8293 ~ros~er? This was answered in t he negative by the Suprem e
from manufacturing similar products. He was also told that he cannot Court rn Mighty Corporation v. E & J Gallo Winery, G.R. No. 154342,
have the patent over the product because it has been in the market July 14, 2004.
already for almost five years.
In this case, t he Court said :
He, however, has one more innovative idea in his sleeves and
redesign ed his product accordingly. But just when his sales is picking "We therefore hold that the courts a quo erred in
up again, he theri got a notice demanding that he should stop from retroactively applying the IP Code in t his case.
using the trademark "Michael's" because it is registered and owned
by Dindo. Because he cannot afford the cost of litigation, he was " It is fundamental principle that the validity and
obligatory force of a law proceed from the fact that it has
forced to abandon the goodwill of the t rademark .
first been prom ulgated . A law t hat is not yet effective can-
If only Juan had been adequately advised, he should have been not be considered as conclusively known by the· populace.
protected against the "Marcosff (overly-ambitious employees),. the To make a law binding even before it takes effect may
"Dindos" (deceitful employees) and "YM Superdooper Stores" (big lead to the arbitrary exercise of the legislative power. Nova
busin.esses that gobble up every opportunity to earn). He should have constitutio futuris formam imponere debet non praeteritis.
known that exposing an invention to the public without a patent is A new state of the law ought to affect the future, not the
more precarious than buying a second-hand car without an OR/CR or past, Any doubt must generally be resolved against the
a land without a title. Clearly, patent costs could easily be justified. retro_ a ctive operatio,n of laws, whether these are original
enactments, amendments or repeals. There are only a few
instances when laws may be given ret roact ive effect none
of which is present in this case. '

"The I P Code, repealing t he Trademark Law, was

1 REPUBLIC ACT No. 8293 approved on June 6, 1997. Section 24 1 thereof expressly
decreed _that it was to take effect only on January 1,
1.1 Historical Background of Republic Act No. 829,3 1998, without any provision for retroactive application.
Thus, the Makati RTC and the CA should have limited the
Republic Act ' No. 8293 or the "Intellectual Property Code of the consideration of the present case within the parameters of
Philippines" is actually a codificati9n of the country's · v~rious the Trad.emark Law and the Paris Convention the laws in
intellectual properly laws. The law repealed all Acts and pci'rts of force at the time of the filing of the complaint'."
Acts inconsistent with it, more particularly Republic Act No. 165 that
established an indepen,c;lent pat~nt system, Republic Act- No.·Ui6 that 1.3 State Policies on Intellectual and Industrial Property
governs Trademark and, presid,ential Decree No. 49 kn,owri as the System
"Decree on Intellectual ,Property," and Articles 188 and 189 .of the
Revised Penal Code. (See Sec. 2°39) The policies of the State on intellectual property rights are stated in
Section 2 o ( the law, as follows:
The law is a consolidation of Senate Bill No. 1719 and House Bill
No. 8098. It was approved by then President Fidel V. Ramos on June "The State recognizes that an effective intellectual
6, 1997 and became effective on January 1, 1998. (See Sec. 241} and industrial property system is vital to the development
This law was. enacted to give effect to t he Agreement ofTra_ge-Related of domestic and creative activity, facilitates transfer of
Aspects of the Intellectual Property Rights' and what was refer!J!d to technology, attracts foreign investments and ensures
as TRIPS that was ratified by the Philippine Senate on Decemb.er 14, market 'access for our products. It shall protect and secure
1994. the exclusive right s of scientists, inventors, artists and
4 ESSENT IALS OF INTEU ECTUAL PROPER fY I AW
CHAPTER I 5
INl ELLEcrUAL PROPERTY RIGHTS

ot her gifted citizens to their inlellectual prope1ty and

creations, particularly when beneficial to l he peoplt:, lui
violation of Article 189 of the Revised Pena[ Code on unfair
such periods as provided in t his Act.
competition. The NBI recommended petitioners' prosecution
"The use of intellect ual property bears a sodal for unfair competition under Article 189 of the Revised Pencil
function. To this end, the State shall promote the diffusion Code. · · ~, t-
of kno wledge and Information for the promotion of national
in a Special Power oftm.orney dat~d, October 7., 1997, Rick
develo pment and progress and the common good.
Welts1 as ·President of NBA Properties, Inc., constit ut~d th~
" I t Is also the policy of the State to streamline ad- 1aw firm of Ortega, Del Castillo,· Bacorro, Odul io, Ca!ma &
ministrative procedures of registering patents, trademarks Carbonell, as the company's ,attorney~in-fact1 and to ~ct · for'
and copyright, to liberalize the registration on t he transfer and on behalf of the company, in t~e fifing of Griminal, civil
of t echnology, and to enhance the enforcement of intellec- and adrn ir'llstrative complaint s, among others. The Spe<::ial
tual property rig hts in t he Philippines." Power of Attorney was notarized by Nicole Brown of New York
county and certified by Norman Goodman, County Clerk a'n d
1.4 International Conventions and Reciprocity Clerk of tl-)e Supreme Court of the State ot New York. Consucl
Cecilia B. Re bong of the Consulate General of the Philippines"
Any person who is a national or who is domiciled or has a real and New York, aut henticated the certlficatfon. Welts also executed
effective industria l establishment in a country which is a party to any a Complaint-Affidavit on February 12, 1998, b'efore Not ary
convention, treaty or agreement relating to intellectual property rights Public Ni~ole J, Brown of the State ..Of New Yori<.
or t he repression of unfair competition, to which t he Philippines is also
Thereafter, in a Resolution dated July 15, 1998, Prosecution '
a party, or extends reciprocal rights to nationals of the Philippines
Attorney Aileen Marie S. Gutierre~ r~commenc1ed the filing of
by law, shall be entitled to benefits to the extent necessary to give an Information agai11,st petitioners for :vlolati_on of Artide ~89
effect to any provision of such convention, treaty or reciprocal law, in of the Revised Penal tpde. ·
addit ion to the rights to which any owner of an intellectual p1 operty
right is otherwise entitled by the law. (Sec. 3) J
Before arraignment, petitioners filed · Motion to Quash the
Information on the grounds that · the\· facts charged do not
Any condition, restriction, limitation, diminution, requirement,
constitut~ an 9ffense and that the court had no j urisdiction
penalty or any similar burden imposed by the law of a foreign country
over t he offer;ise charged of the p~rsori or the aG:cusect. . •
on a Philippine national seeking protection of intellectual property ..
rights in that country, shall reciprocally be enforceable upon nationals ln support ~{ their mqtion, petitiot1ers argue that the, fiscaf
of said country, within Philippine jurisdiction. (Sec. 231) should ·have 'dismissed Welts· complaint because under the
rules, the complaint must be sworn to' before tt\e prosecutor
and the cQpy on record appears to "be only a fax tranS:mittal. . .
They also,.coptend that c;omplainant is a-foreign corporation '
riot do~ng business Ji:1 the Philippines, a:nd cannot be protet;ted ·
15y Philippine ·pat-ent laws since 1t is not' a regi stered pat.en~e.e .
Petiti.oners a1✓.,er that they have been usihg the business· name
"ALLANQA!.,E. SP.ORTSUNE; INC."since 1·9 72, and their designs
are original and do not appear to l:>e similar to complainant's;
Melbarose R. Sasot an.d,:,Allandale R. Sasot .v. People of t11e and they do not use comri'lainant's logo or design.
Phiiipplnes, et al., G.R. No. _143193, June 29, 20QS The' trial prosecutor of the RTC-Mar:iila (Branch 1), Jaime M.
;.
Guray, filed his Comment/Opposition to tbe motion to quash,
Facts:
stating that he has t he original copy of the complaint, and
Sometime in May 1997, the Nat ional 61.lreau of Investigation t hat , complainant has an attorney-in~fact to represent It.
(NBI) conducted an investi gatlor:i pursuant to a complaint Prosecutor Guray also contenl1ed that the State is entitled to
by· the NBA Properties, ·1nc.1 agi:}inst . petitioners for possible prosecute the offense even without t e participat jon of the
private offended party, as the crime charged is a public crime .
...
6 ESSENT IALS OF I NTELLECTUAL PROPERTY I.AW CHAPTER I 7
INTELLECTUAL PROPERTY RIGHTS

"The trial court sustained the prosecution's arguments and a criminal offense is essentially an act agaiost the
denied petitioners' motion to quash in its Order dated March , State. I t is t he latter which is principally the injured
5, 1999. - par;ty although _there is a private right violated.
Petit ic:mers file? a ~pectal ciyjl action for: C-?r.tiorari with t he , Petitioner's t:apacity to sue would become, therefore,
Gourt: of Appeals (CA) docketed as GA- G.R. SP No. 52151 of fiot much significance in t he main case. We cannot
which was dism1sse~ per its Decision da,ted January 26, 2000. , allow a·-possible violator of·our criminal statutes to
Acc6d:ting to ttJe CA; t he'petit ion is not t he proper remedy in escape prosecutipn upon . a far-fetched contentron .
assailing a .;den_ial of a motion to q~ash, and that the .grounds - that t he:.\aggrieved l)arty or victim of a crime has no
raised-therein should be ·raised during the trial of t he case on standing to sue.
• the n;;ierits, "In upholding the right of the petitioner to
Petitioners -sought reconsideration of. t he_·oecision but ~hi~ , maintain the present, suit. before' our courts for
was denied by·the C::A. Hence, t he ·present petition for review unfair competition or infri119ement of trademarks of
on certiorari under Rufe 45 of t t,e Ruf~s of Court-., ,a foreign corpor:at]on, we are m oreover 1-ecognizing
''
·, . ;.,
our duties and t he rights of foreign states under
I ssue: the Paris Convention for the Protection of Industrial
Whether ·a foreign corporat on not engaged and licensed to do Property to which the Philippines and France are
business in t he Philippines may mpintain an action f<;>r unfair parties'. .'yVe i:lre simply interpreting and enforcing a
comp'e tition. solemn international commitment of the Philippines
er.nbodied in a multilateral t reaty to Which we are a
· Rullng: Y6S party and which, we entered into because it is in our
+· U[l.fair Competition punishable u,nder Article 189 of the-
national
. lnterest1:o . do so." ·
Revised Penal Code is a public crime. More importantly, the Lastly, with regard to petitioners ' arguments that the· NBA'
crime. of Unfaii:; Cop,pe~i~on .punishable under Article 189 of Properties, fnc., is not ent itled to protection under Philippine
· die' Revis&! Pe'n al Code is a public crime. It is essentially an pat-t1nt laws since It is not a· regl!,itered-,patentee, that· they
· act against; the S~te and it Is .tpe latter wnich principally have not committed acts amounting to unfair competitio'n
·~nds as the rnjured party. The complainant's capacity to sue for t he rea~/:>n that thelr designs ate origimal and do not
.in ~uGh, case QeGorT1e~ immaterial. . appear' to be similar to complainant's, and they do not use
In La Chemise Lacoste, S.A. v. fem.andez, a case a~in to, the , complainant's IOQO qr design, the Court finds •thatthese are
matt'ers of ciefense that are better ventilated and resolved
"' present dispute, a's it lnvolvetl'tf'ie ·crime of Unfair Competition _
, during trial 9t'l the merits of the case. ·
u nder- Article 189 of the Revlsex:I P;gnal.Coc;le., anc! the, QUi:l~ha1 ,, '\'Y ' ' •

"of search .~arrants is·suetl aglrnst[ma'nuf~cfurers"#of g'armen ts'

beari~g the same trademar~.~~ that. of t he [)eti_ti°:ner, tl)e
!fourt.succinctly l"tlled tnat: - .; _ _
• · "IY.lore-impottar'lt Is tn~ n:iure _of t he ca'se which
led to t his petition. What preceded t his petit ion for ~ 2 INTELLECTUAL P ROPERTY RIGHTS
a
cerl:/Orafl was lett~r-complalnt filed 6efore t he NBI ·
charging Hemandas wit;_h a criminal ,offens~, i.e., 2 .1 I ntellectu a l Property Rights, Defin ed
Viplatton of Article i89 of the Rev ised Penal Code. -
If pros ecut ion foll~s a~er the completion of the
preliminary Investigation being conducted by t he
Special Prosecutor the Information sh.all be in th';!
[tJ The term "intellectual property rights" has as atuto
as t hat consisting of:{a))J;;_opyrig ht and Related Rights; b
...I@dem~rks and ServiceMarks;@)}.Gepgraphic Indications;
·nition

name of the Peopre of the Ph1lipprnes and no longer cJpdusfrial Designs; ~tents;(r) ~yout Designs (Topographies) of
the petitioner wt,lch Is only an aggrieved party ~ince 1 I ntegrated Circuit s; and@ _protection of 1lodisclased InformatioQ.
'. . . '
(Sec. 4 ) This statutocv definiiTon hnwPv<>r ,i,...oc- "'"► " "'k- ---k• ·- - d .
 CHAPTER l 9
8 ESSENTI ALS OF I NT ELLECTUAL PROPERTY LAW I NT ELLECTUAL PROPERTY RIGHTS

essence of the term as it merely enumerates what comprises t he

North Edsa Market ing, Inc. (NEMI) liable for infringement of
term being defined.
t rademark
.
and copyright, . and unfair competi
:,t
t ion.'

2.2 Differe nces Between Copyrights, Patents, and Tra de- FACTUAL ANTECEDENTS
marks
_The May 22, 2001 decision of the Cpurt of Appeals
fl1 Patents, t rademark, and copyright cannot be interchanged contained a slil'rlmary oHhis dispute:
~ and must therefore be taken separately.
Plaintiff-appellant Pearl and Dean (Pfiil.), Inc. is a
The case of Elidad Kho v. Court of Appeals, G.R. No. 115758, corporation engaged in the man1,1facture of advertising display
March 19, 2002, is quit e instructive. It was in t his case that t he unit? simply ref~rred to .,as light boxes. These units utilize
Supreme Court succinctly said that: sped ally printed posters sandwiched between plastic sheets
and illuminated with back lights/Pearl and Dean was able to
" Trademark, copyright and patents are different secure a Certificate of Copyright Registration dated January
intellectual property rights that cannot be interchanged 20, 1~;81 over these Illuminated dlst.,lay uni~/rhe adv~rtislng
with one another. A ~ k is any visible sign capable of light tfoxes were marketed under the trademark "Poster Ads1/
distinguishing the goostrademark) or services (servi~e The appllcation for registration of the trademark was filed with
mark) of an enterprise and shall include a stamped or the Bureau of Patents, Trademarks and Te,chnology Transfer
marked container of goods. In relation thereto, a trade on Jun<;= 20, 1983, but wa.s approved only on September 12,
name means the name or designation identifying or 1988, per Registration No. 41165/ From 1981 to about 1988,
distinguishing an enterprise. Meanwhile, the scope of a Pearl and Dean employed the services of Metro Industrial
cogyr,[ght is confined to literary and artistic works-which Services to rnanutacture its advertising displays/
are original intellectual creations in the literary and artistic
domain prot ected from t he moment of theLr_..ci:eation. Sometime in' l985, . Pearl and Dean hegotlated with
P.aten.table i vtb~ns, on the other hand;- re fer to any defendant-appella'nt Shoernart, Inc. (SMI) for the lease and
1
technical so u I of a problem in any fi eld of human
activity which is new, involves an i n'le.,nt ive step and is
installation of the light boxes in SM Oty North Edsa./Since
SM City North Edsa was, under cgnstruction at that tirne,
~ industrially applicable." 1 \\~
SMI offered as an alterni;ltive 1 SM Makati anJ SM 'Gubao, to
---. which Pearl a nd Dean agreed/On September 11, 198-5, Pearl
These cases, quoted in full, illustrate the adverse effect of not and Dean's General Manager, Rodolfo Vergara, submitted for
having the correct registration. signature the contracts covering SM Cubao and SM Makati to
SMI'S Y\d'Verti'slrig Promotions and ~Publldlty I>ivisiori ~a nag er, .·
Ramonlito Abano(Only the contract for SM-,Makati, however,
was returned signed/On October 4, 1985, Vergara wrote
,.. Abano inqui~ing ab_ ou~ t he. ~ther ~ n7ract pn_d re~rnqing hi,rn_ .
· ~hat tbelr agre~ment for,, lOs'tallatlon of light boxes wa$ not
only for its SM Makati branch, but also for SM Cubao/ SMI did
rth Edsa Marketing, Inc. not bother to reply/ . · .
o.14822~ Au ustlS-,200~ I .. .
Instead, in a letter da'ted Janl!ary 14, f986, SMts house ,,
• Co counsel informed Pearl and Dean t hat ft was rescinding
In the instant petition for review on certiorari under Rule t he contract for SM Makati due to non-performance of t he
45 of the Rules of Court, petitioner Pearl &Dean (P~il.),, Inc. (f termsthereof,(1n his reply dated February_17, 1~86, Vergara
' & P) assails ~be May 2~, 2001 decision oftne. Court" of Appeals protesteq the unilateral action ofSMI, sayihg it was Without
reversing the October 31, 1990 decision of the Regional Trial basis/In the same letter, he pushed for t he signing of the
Court of Makati, Branch 133, In Civil Case No. 92-516 which contract for SM Cubao/ . •
declared private respondents . Shoemart, Inc. (SMI) and
. ~-
lO r"iSENT!A LS UI- JN r ELLEC r UAL PROPCR ,Y LAW
C HAPTl:R i 11
I NTELLCCl UAL PROPER I 'I' RI GHTS

Two years tater, Metro Industrial Services, the company trademark, and, as such, registration of such mark is i ~d.
formerly contracted by Pearl and Dean t o fabricate its display It also stressed tl1at Pe and Dean is not entitled to the
units, offered to construct light boxes for Shoemart's chain of reliefs praye\'.I for in •its complaint since its advertising display
stores/SMI approved the proposal and ten ( 10) light boxes units contained no copyright notice, in violation. of Se~ion,
were subsequently fabricated by Metro Industrial for SMI.( 27 of P.D. 49 . SMI alleged that Pearl and Dean: had no cause
A~er its contract with Metro Industrial was terminated, SMI of action against it and that the suit was purely Intended
. e·ngaged the services of EYD Rainbow Advertising Corporation to malign SMI's good name. On this basis, SMr, aside from:
td make the light boxes/Some 300 units were fabricated in praying for the dfsnilssal of the case, also counterclaimed for
1991/ T hese were delivered on a staggered basis and installed moral, actual an.d exemplc;1ry damages and for the cancellation
. at SM Megamall and SM City of Pearl and Dean's Certification of Copyrigtit Registration
Sometime in 1989, Peart and Dean, received repo~ tliat No. PD-R-2558 dated January · 20, 1981 and Cer tificate of
exact copies of its light boxes were Installed at SM City and Trademark Registrat i.on f'lo. 4165 dated September 12, 1988. ·
in the fastfood sec:;tion of SM Cubao;Upon investigation, Pearl NEMI, for its part, denied having manufactwred, iostalled .
and Dean found out that aside from the two ( 2) reported SM or used' any adver tising display units, nor having engaged in
branches, light boxes similar to those it manufact ures were the business of adver ti,sing. It repleaded SMI's averments,
also installed in two (2) other SM stores..(it furth er discovered admissions and' denials and prayed for similar reli efs and
that defendant-appellant North Edsa Marketing, Inc. (NEMI), counterclaims as SMI.
t hrou gh its marketing arm, Prime Spots Marketing Services,
was set up primarily to sell advertising space in lighted Tl1e RTC of Makati City decided in favor of P & D :
display units located in SMI's different branches. Pearl and Wherefore, defendants SMI and NEMI are
Dean noted _that NEMI is a sister company of SMV found jpj ntly and';severally liable for infringement of
In t he light of its discoveries, Pearl and Dean sent a letter copyright under Sect ion 2 of P.D. 49, as amended, and
dated December 11, 1991 to both SMI and NEMI enj oining infringement of t radema rk under Section 22 of R.A.
them to cease using t he subject light boxes and to re1nove 166 as amended, and are hereby penalized under
the sam.~ from SM.J's e.? tablishments;It also dem~nded the Section 28 of P.D. 49, as amended, and Sections
discontinued use of the trademark "Poster Ads, and the ;z3 and 24 of R.A. 166, as amended. Accordingly,
paym ent to .Pearl and Dean .of compensatory damages in t he defendants are hereby directed:
am~unt of Twenty Mifl\Ofl Pesos (P20,000,000.00)y (1) to pay plaintiff t he following damages:
Upon receipt of the demand letter, SMI suspended the . (a) actual damages ~ P16 1 600,000 .,00, .
leasing of "two hundre·a twenty-four {224) light boxes and
representing profits derived by defendants as a
NEMI to9k c,lpwn its advertisements fore " Postel'. Ads" from~he
result of infringement of.plaintiff's copyright from
' lighted Elisplay units in SMI:s stores/Clalrl)ir:19, that 'both SM~ " 1991 to 1992
• . I'and NEMI failed to meet all 1ts demands, Pearl and Dean f!led ,i
t his instant case for i!lfringem.ent of t rademark and copyright, . (b) · moral damages - Pl ,000,000.00
·1,10fifi~ competition and damages. / · · ·~ . •
(c) exe~plary damages - Pl,000,000.00.
ln denying the iharges hu~led ag~inst ft, SMI mai~tained · ' (d) attorney's fees - Pl,000,000.00
t hat it independently developed its· poster panels using ·
commo nly known techniques and available technology,- • plus
without notice of or reference to Pearl ·and Dean's copyright.
(e) costsofsuit;
SMI noted that the registration ·of the mark " Post er ·Ads"
was only for stationeries such as letterheads, envelopes, (2) to deliver, under oath, for impounding in the
and t he like. B~si,tjes, according to SMI, the word ",foster_ National Library, all light boxes of SMI which were
Ads" is a generic term which cannot be appropriated as a fabricated by Metro Industrial Services and EYD
----=---:.__
Rainbow Advertising Corporation;
 ESSENT I ALS OF INT ELLECTUAi. PROPERTY LAW CHAPTER I 13
12
I NTELLECTUAL PROPERT Y RIGHTS

that is precisely the point. r-io doubt aware t hat its

(3) to deliver, under oath, to the National
· alleged origina l design would never pass the rigorous
library, all fill er-poster·s using the trademark "Poster
examination of a patent application, plaintiff-appellant
Ads", for dest ruction; and
fought to foist a fraudulent monopoly on the public
(4) to permanently refrain from infringing the by cbnveniently resorting to; a copyright reg_istration
copyright on plaintiff's light boxes and its trademark which merely employs a recordal system without the
"Poster Ads". benefit of an in-depth examination of novelty.
. Defendants' counterclaims ar:e hereby ordered "The principle ii) Baker v. Selden was Hkewlse
dismissed for 'lack of merit. applied In Muller v. Triborough Bridge Authority ( 43 F.
Supp. 298 [S.D.N.Y. 1942]). In this case, Muller had
SO ORDERED. obtained a copyright over an unpt.iblis\1ed .drawing
On appeal, however, the Court or Appeals reversed the entit led Bridge Approach - the drawing showed a
t rial courl: novel bridge approach to unsnarl traffic congestion".
The defendant constructed a bridg~ approach which
"Since the light boxes cannot, by any stretcl1 was alleged to be an infringement ofthe new design
of the Imagination, be considered' as either prints, illustrated in plaintiff's drawings. In t his case[.] it was
pictorial illustrations, advertising copies, labels, held that protection of the drawing does not extend
tags or box wraps, to be properly classified as a t0 the unauthorized duplication of the object drawn
copyrightable class 'O' work, we have to agree with because copyright extends only to the description or
SMI when it posited that what was copyrighted were expression of the object and not to the object itself.
the technical drawings only, and not the light boxes It does not prevent one from using the drawings to,
. themselves, t hus: · · construct the ob~ct portrayed in the drawing.
"42. When a drawing is technical and depicts "In two other· cases, Imperial Homes Corp. v.
a utilitarian object, a copyright over the drawings . Lamont, 458 P. 2d 895 and $cholt~ Homes; Inc. v.
tiije plaintiff-appellant's w111 not extend to the actual Maddox, 379 F. 2d 84, it was held that there Is no
object. It has so been held under jurisprudence, copyright infringement when one who, without being
of which the leading case is Baker v. Selden (101 authorized, uses q copyrighted architectural plar,i to
UtS. 841 [1879))~ ln that case, Selden had obtained construct a st ructure. This is because the copyright
a copyright protection for a book entltled 'Selden's does not ext end t o the structures themselves.
Condensed Ledger or Bookkeeping Simplified' which
PlJ_rp.orte<;I ,to exRIC;!in a n~w ~ystem of b~okkeep}ng. "In finei we cannot find SMI liable for ihfringing
Iifcluded as part o'f the book were_blank forms and Pearl and Dean's copyright over the techntcal 'drawings
illustrations consist ing of ruled lines and headings, of the latter's advertlsing display units.
specially designed for use in . connectioQ with tJ1.e .. XX,X XXX XXX
system exptalnect ,ln the wot:k. "Ft1ese forms shdwed "The Supreme Court trenchantly held in Faberge,
the entire operation of a day or a week or c1 month on
Incorporated v. Intermediate Appellate Court that
a -single page, or on two pages foflowing each other. the p\otective mantle of theTrademark Law extends,
The deferi.dant Baker then, J¥rpd_uced forn;s ,whic~ were only to the goods used by the first user as specified
similar to the forms illustrated In Selden s copyrighted
in the certificate of registration, following the clear
books. The Court held t hat exclusivity to the actual
mandate conveyed qy Section 20 of Republic Ac;:t 166,
fwms Is not extended by a copyri9ht. The r~ason was as amended, otherwise known as the Trademark Law',
that 'to ·g raht a monopoly in the underlying art when
which reads:
no examination of its novelty has ever been made
would be a surprise and a fraud upon the public; that ''SEC. 20. Certification of registration prima facie
is•the province of letters patent, not of copyright.' And evidence ofvafidity. ~~ficate of registration of
14 ESSENTlALS OF INTELLECTUAL PROPERTY LAW CHAPTER I 15
INTELLECTUAL PROPERTY RI GHTS

a mark or trade name shall be prima facie evid.ence Dean for specific use in Its stationeries, in contrast to
of the validity of the registration, the registrant's defendants-appellants who used the same words in
ownership of t he mark or trade name, and of the their advertising display units. Why Pearl and Dean
registrant's exclusive right to use t he same in limited the use of its trademark to stationeries is
connection ~•th the , gooqs, busin~_ ss or servic~s simply beyond ,us. But, having already done so, it
specified in the certificate, subject to"any conditions must stand by the consequence of t he registration
and limitat ions stated therein, which it had caused.'

"The records show that on June 20, 1983, "xxx XXX XXX
, Pearl and Dean qpplied for t he registration of ·tM ''We are ·constrained to adopt : t he view of
tra'Clernark •p'b:Ster Ads'' i/4ith the Bureau of Patents, defendants-appellants that t he words 'Poster Ads'
Trademarks, and Technology Transfer. Said trademark are a simple contraction of the generic term poster
was recorded in the Principal Register on September advertising. I n the absence of any convincing proof
12, 1988 unde.r Registration No. 41165 covering ~he that 'Poster Ads' '1as acquired a secon(jary meaning
foJlo.wing products: statlo11eries sudJ as letterheads, in t his jurl5<:llcti.on, we find t hat 'Pearl and Dean's
envelopes and calling cards af'ld newsletters. exclusive right to the use of 'Poster Ads' Is limlted
" Wit h t his as factual backdrop, we see no legal to what is written in its certificate of registration,
basis to the finding of liability on t he part of the namely, stationeries.
def~nc;lants-appellants for t heir us(;? .of the ,words ''Defendants-appellants cannot thus be held llab'le
'Poster ·Ads', in the advertising display units In for infringement of the trademark 'Poster Ads.'
suit. Jurisprudence has interpreted Section 20 of
the Trademark Law as 'an implicit permission to a "There being. no finding of either copyright or
manufacturer to venture into the production of goods trademark Infringement on t.he part of SMI and NEMI,
i'.lflQ allow ~hat producer: to appropriate t he brand the monetary award grcint~d by the lower· court, to
nam.e of the senior registrant on goods other t han Pearl and Dean has no leg to stand on,
those stated in the certificate of registrat ion.' The "xxx XXX XXX
Supreme Court further emphasized t he restrictive
m eaning of Section 20 when it stated, through Justice ''WHEREFORE, premises consldereqt t he assaileq
C;;onrado V, Sar,chez, that: · :, .· decisron is REVE!lSED and SET ASIDE, and another
is rendered DISMISSING t he complaint and counter-
·'Really, If the certificate of registration were to claims in the above-entitled case for lack of merit."
be deemed as including goods not specified tgerein,
t heri a situat ion mciy arise whereby qn applicant,rpay Dis~at.isfied with the above decision~ petit ioner P & O
be .t~mpt ed t &fr~glster a .tradema~~on any ai:rd',all ·' flied the fnseant- petition assighfog t he following errors for the
gooos which liis · mind may conceive even if he had Court's consideratron: ·
never intended to use the trademark for the ~aid
A. THE HONOl;lABLE COURT OF APPEALS ERRED IN
goods. We believe that soct, omnibus registration is
RUl.ING THAT NO COPYRIGHT I NFRINGEMENT WAS COMMIT-
n~,t ~011ternplate9 by our i adema,rk~law. ., . TED BY RE:SPONDENTS SM ANO NEMii ' .,,
· 'While we ,do not discount the striking similarity
B. THE HONORABLE COURT OF APPEALS ERRED IN
between Pearl and Dean's registered trademark and
RULING THAT NO I NFRINGEMENT OF PEARL & DEAN'S
defendants-appellants' 'Poster Ads' design, as well as
TRADEMARK "POSTER ADS" WAS COMMITTED BY RES·
th.e parallel use by which said words were u..sed in PONDENTS"S['1 AND NEMi i '.
the parti ~- respective advertising coJ:)ies, we cannot
find defeni:lants-appellants liable for infringement of C. TH£ HONORABLE COURT OF APPEALS ERRED I N
trademark. ' Poster Ads' was registered by Pearl and DISMISSI NG THE AWARD OF THE TRIAL COURT, DESPITE
16 ESSENTIALS OF I NTELLECTUAL PROPE RTY LAW CHAPTER I 17
IN l t:LLECTUAL PROPERTY RIGHTS

First, petitioner's application for a copyright certificate -

THE LATTER'S FINDING, NOT DISPUTED BY T HE HONORABLE as well as Copyright Certificate No. PD-R2588 issued by the
COURT OF APPEALS, THAT SM WAS GUI LTY OF BAD FAITH National Library on January 20, .1981 - clearly stated thc1t
Ifl! ITS NEGOTIATION OF AQVERTISING ,CONTRACTS WITH it was for a class "O" work under Section 2(0) ot P.D. 49
PEARL & DEAN. . . .
(The Intellectual Property Decree) which was the statute then
. D. THE HONORABLE COURT Of APP,EALS ERRED IN NOT pr~valling. Said Sedioh 2 expressly enumerated the work$
HOLDING RESf>ONDENTS SM AND NEMI LIABLE TO PEARL subject to copyright:
& DEAN FOR ACTUAL, MORAL AND EXEMPLARY DAMAGES SEG. 2. The rig~ts granted by this Decree shall, from
ATTORNE'J'.'S FEES A NO COSTS Qr; SUIT. . · · .. . '
the moment of creation, subsist with respect to any of t he
following works: ·
ISSUES
XXX XXX XXX
In re7ohling this very interesting case, we are challenged
on~e aga~n to put Into proper perspect ive four main concerns . (0) Prints, . pictorial illust rations, advertising copies,
of 1ntetlettual property law - paten ts, copyrights, trademarks labels, tags, and box wraps;
and unfair competition arising from infringement of any of XXX XXX . XXX
the first t hree. We shall focus then on t he following issues;
Although pet itioner's copyright certificate was entitled
(l? ~ the engineering or technical drawings of an "Advertising Display Units" (which depleted the box-type
advert1~111g dJsplay unit (light bqx) are granted copyright electrical devices), its claim of copyright infringement cannot
protection ( copyright certificate of registration) by the
be sustained.
National Library, is the light box depicted in such engineering
drawings ipso facto also protected by such copyright?· · Copyright, in the· strict sense of the term, is purely
a statutory right. Being a mere statutory grant , t he right s
(2) or should the light box be registered separately are limited to what the stat ute confers~ It may be obtained
and prot~cted l;>y a patent issued by t lie Bureau of Patents, and enjoyed only with respect to the subjects and by the
Trademarks, and Technology Transfer (now Intellectual
persons, and on terms and condit ions specified in the statut e.
Property Office) - in addition t o t he. copyright of the Acqbrdingly, it' can cover only the works falling w1thin t he'
engi.neer ing drawings? ' , · ·
statutory enumeration or description.
(3) can t he. owner of .~ . reg\stereq tra~~mar~ legally '• ·. P & D secured its· copyi:ight under t he classificat ion class
prevent' ot hers from O'slrlg such t radem ark if it is ·a mere "O" work. This being so, · petitioner's copyright protection
abbreviatfon of a term descriptive of his goods services or
business? · ' eatende5' .only to ~he technical drcawings and .not to t he light ·
box itself because the latter was n ot at all in the category of
" prints, pictorial illustrations, advertising copie?, labels, tags
ON. TH E ISSUE OF COPYRIGHT INFRINGEMENT and , box wraps." Stated ot herwise, even as 'we find t hae P
" ,1 ~: . -. , ,:. , . ·l ·'· ' .

Petitioner P ·& D's complaint ·was t hat SMl infringed on & D indeed owned ~· valid. copyr,ight, t he same could have
its co pyright over t~e light boxes wheri SMI had the units referred only ~o the technical dra~ings wit hin .t he category of
. . m anuJa1stured h.y Metro andJ.:YD Ralnbbliv Advertising ·for its " pictorial illustrations." It could not have possibly stretched
ow~ acco.unt. Obviously, petitioner's pos1tion was premised out to include the underlying light box. The strict application
on 1ts belief that its copyright over.the ~ngineering drawings of the. law's enumerat1on in Section 2 prevents !JS from giving
~xtended ips~ facto t o the light boxes depicted or illustrated petitioner even a little leeway, that is, even if its copyright
in said drawings. In ruling that lt)ere ~as no co~~ri~t certificate was entitled " Advertfsing Display Units." What the
Wd!Jgernei:it, t,h~ Court of Appeals held )at ffie en r j t law does not include 1 it excludes, ahd for t he good reason:
was..lTriil'realo ttle drawings alone and not to t he Ii h the light box was not a literary or artistic piece which could
itself. ea r
_,_ be copyrighted: under the copyright law. And no less clearl y,
18 ESSENTIALS OF JNTELLECTUAL PROPERTY LAW CHAPTER I 19
INTELLECTUAL PRO PERTY RIGHTS

neither could the lack of statutory authority to make t he for infri ngement of P & D's copyright over ils technical
light box copyrightable be remedied by the simplistic act drawings of the said light boxes, should they be liable instead
of entitling the copyright certificate issued by the National for infringement of patent? We do not t hink so either.
Libral),' as "Advertising Dlsp!ay Units." · : · .· .
F9r some reason or another, petitioner never secured a
..In fin'e, if SMI '~nd NEMI reprinted p & D's tec,h nical patent for the light boxes. It therefore acquired no patent
drawings for sale, to the public without license from P & D, rights which could have protected Its invention, if in fact it
then no doubt they would have been guilty of copyright really was. And because it had no patent, petitioner could not
infringement. But this was not the case. SMI's and NEMI's legally prevent anY;one from r:i;iqnufact_u~i;ig or comme~cially
acts\ cornplained of by P & p,, were to. h.iive. units similar or using the contraption. In Creser Prec1s1on Systems, Inc. v. '
identlcal to the light box illustrated in the technical drawings Court ot.Appeals, we held that t here can be no Infringement of
manufactured by Metro and EYD Rainbow Advertising, for a patent until a patent has been issued, since whatever right
leasing·out to different advertisers. Was this an infringement one has to the invent ion covered by the patent arises alone
of petitioner's copyright over the technical drawings? We do from ~he grant of patent. x xx (A)n invent,Qr has no common
not think so. · ' law right to a monopoly of his invention. He has the right
to make use of and vend his invention, but If he vol1..mtarily
During the t rial, t he president of P & D himself admitted
discloses it, such as by offering it for sale, t he world is free to
that the light box was neither a literary nor an artistic work copy and use it with impunity. A patent, however, gives the
but an "engineering or marketing invention." Obviously, there
inventor the right to _exclude all others. As a patentee, he 1,as
appeared to be some confusion regarding what-ought or ought the exclusive right of making, selling or using the invention.
not to be t he proper subjects of copyrights, patents, and On the assumption that petitioner's advertising units were
trademarks. In the leading case of Kho v. Court of Appeals, patentable inventioi\s, petitione-r revealed them fully to the
we ruled that these t hree legal rights are completely dist inct
public by submitting the engineering drawings thereof to tl1e
and separat e from_one another, c;1.rid ~t!e protection afforded National Library. ·
by 0ne cannot be used interchangeably to cover items or
works 'that exclusively pertain to the others: To be able to effectively and legally preclude others
from copying and profiting from the invention, a patent Is
Trademark, copyright, and patents are different
a primordial requirement. No patent, no protection. The
intellectual property rights that cannot be inter:cl1,rnged
ultl,mate goal qf c;i patent system ,Is to bring new design~
~Ith o!l.e ano~he11. A trademark is an¥ visible sign capable i-. and technologies into the publfc domain through distlosure.
of distiqgulshing tile goods (trademark) or services (service
Ideas, once disclosed to the public without the protection of a
mark}of an enterprise and shall Include a stamped or marked
valid patent, are subject to appropriation without significa_nt
container of goods, In relation thereto, al'rad memeans restrai_nt. ·
the n.ame or designation .,identifying or 1st nguis.hjng an . • .9'~ '·~ ' '. I
enteq:.inse. Meanwhile, the scope of a cqpyright ii·•confined - On cone side of the coin is.t he public which will benefit
to literary and artistic works which are original rnteilectual from new ideas; on the other are the inventors whb must
creations in t he literary and artistic domain protected from be protected. As held In Bauer & Cie v. O'Donnel, "The act
the moment of their creation., Patentab~e invent ions, on the secured to the .inventor the exclusive right to make use,
~ther .~c1ad1 refer hi any ~echqi<;;al solut,p;n o'T a problem in any· · and vend the thin§! patenteq., and consequently 'to -prevent:
field of. human activity which is new, Involves an inv~ntive others from exercising like privileges without the consent of
step and is industrially applicable. the patentee. It was passed for the purpose of encouraging
useful invention ana promoting new and useful inventions by
ON THE I~SUE QF PATENT INFRINGEMENT the protection and stimulation given to inventive genius, and
was inte'n'ded to secure to the public, after t he lapse of t he
Tf\is b'rings us·to the next polnt: If', despite Its manufacture exclusive privileges granted the benefit of such inventions
and commercial use of the light boxes without license from and improvements."
petitioner, private respondents cannot be held legally liable
 CHAPT ER I 21
20 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
I NTELLECTUAL PROPERTY RIGHTS

Stated otherwise, what petitioner seeks is exclusivity

The law attempts to strike an ideal balance between the
without any opportunity for t he patent office (IPO) to
two interests: scrutinize the light box1s eligibility as a patentable invention.
The patent system thus embodies a carefully crafted The irony here is . that, had petitioner secured a patent
bargain for encouraging the creation imd disclosure of new instead, its exclusivity would have ·been for 17_ years only.
useful and non-obvious' advances in technology and design, Bt,t through the simplified procedure of copyright-registration
in return for the exclusive right to practice the inve.ntion for with the National Library - without unqergoing ,t he rigor of
·a number ·of years. The Inventor may keep his invention defending the patentability of its invention before t he IPO and
secret and reap its fruits indefinitely. In considerat ion of its the public - the petitioner would be. prot,ected for SO years.
disclosure and the consequent benefit to t he community, This sltuation'could not have been the Intention of the law.
the patent is granted. An exclusive enjoyment is guaranteed
In the oft-cited case of Baker v. $elden, the United States
him for 17 years, but upon tt,e e,xpiration of that period, the
Supreme court held t hat only the expression of an idea is
knowledge of the i11vention ln'ures to the people, who are thus
protected by copyright, not the idea itself. In that case, the
enabled to practice it and profit by its use.
plaint iff held t he copyright of a book which expounded on a
The patent law has a thr~efold purpose: "first, patent law new accounting system he had developed. The publication
seeks to foster and reward invention; second, it promotes illustrated blank forms of ledgers utilized in such a system.
disclosures of inventions tc> stimulate further innovation The defendant reproduced forms srmilar to those illustrated
and t o permit the public to practice the invention once the in the plaintiff's copyrighted book,, The US Supreme Court
patent expires; .third, the stringent requirements for patent ruled that:
protection seek to ensure that ideas in the public domain
remain there for the fr~e use of ttie public." "There is no,_doubt that a work on the subject of
bookkeeping, t h6ugh only explanatory of well known
It is only after an exhaustive examination by the patent systems, m~y be the subject of a copyright; but,
Qffice that <l patent Is issued. Such an io-depth investigation then, 'it is claimed only as a book. x x x. But there
is required because "in rewarding a useful invention, the is a clear distinction between the books, as such,
rights and welfare of the cornm,u n\tY m.ust be fairly dealt with .· and the art, whicl;l it Is, Intended to Illustrate. The
and effectively guarded. To that end, the prerequisites to mere statement of the proposition is so evident that
obtaining a patent are strictly observeo and when a patent . It requ'i re;, harqly any argument to support It. The
is issued, the limitations on its exercise are equally strjctly . . same distinction may be predicated of every ot her
enforced. To begin with, a genuine invention or discovery art .as well as that of bookkeeping. A treatise onJhe
must,be demonstrat d le~t in the .constant deman~ for _new composition ana use of medicines, be they old or new;
·'appliances, "t:he heavy hand of tribute be laid on each slight on the construction and use of ploughs or watches or ..
technologiµil advance .in art." " churns; or;,on the mixture and application of c.olors for
Tfiere is no such ~c~tin; in t h~ case of copyrights nor_any painting or dyeing; or on the mode of drawing lines
notice publtshed before its grant ,to ,the effect, th~t a person is to . produce the effect of perspective, would be the
a
dalmfng tfie creatidh of wotk. Theijlaw:confer$ the copyright subject of copyright; but no one would contend that
the copyri,g ht of the treati~e would give the exclusive
from t he moment of creation and the copyright certificate is .,
issued upon registration with the ,Natior,ial Utirary of a sworh·"" :..
./: ' -
rlghf to the art or · manufacture described therein.
ex-parte claim of creation. - The copyright of the book, if not pirated from other
works, wpuld be valid without ,regard to t he novelty
· T/~refdi'e, not having ; gone through th~ arduous or want of novelty of its subject matter. The novelty
examination for patents, the petitioner cannot exclude others of t h.e ?trt or ~hfnQ described or explained has nothing
Jrom t he manufacture; sale or commercial use of t he l1ght' to do with the validity of t he copyright. To give to the
boxes- on the sole basis of its copyright certificate over the author of the book an exclusive property in the art
technical c:lrawlngs. described therein, when no examination of its novelty
22 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER I
INTELLECTUAL PROPERTY RIGHTS

has ever been officially · made, would be a surprise ruled lines and headings of accounts must necessarily
and a fraud upon t he public. That is t he province
be used as incident t o it.
of letters patent, not of copyright. The claim to an
invention of discovery of an art or manufact ure must "The plausibility of the claim put forward by the
. •be subject€d to the examination of the Patent Office compla(nant in ·.this ·case : i3r]ses from a confusion
· bef6re an e5(cl~sive rigt,t therein tan be obtained; of Ideas produced by ' tt'\e peculiar nature of the
and a patent from t he government can only secure it. art described in the books, which have been made
the subject of copyright. In describing the art, the
~The difference between t he two things, letters illustrations and . dlagran:is employecl happened , to
patent and copyright, may be. illu$t rated by reference correspond more closely t han usual with the actual
.'t9 the subjects just ·enumeratecL" :take the c;ase of work performed by the operator who uses the art. x x
medicines. Certain mixtures are found to be of great x The description of t he art in a book, t hough entitled
value in the healing art If the discoverer writes and to the benefit of copyright, lays no foundation for an
p_ublishes a book on the subject (as regular physicians
exc~uslve claim to the art itself. The object of th~one
generally do}, he gairjs no exclusiv~ right to the. is exp,lanation; the object of the other is use. The
' manufacture and sale o(the medicine; he gives that former may be secured by copyright. The latter can
to the public. If he desires to acquire such exclusive
only be secured, if it can be secured at all, by letters
right, he must obtain a patent for the m ixture as
patent."
a new art, manufacture or composition of matter.
He may copyright his book, if he eieases; but that
only secures t o hfm the exclusive right of printing ON THE 'ISSUE OF TRADEMARK IN FRINGEMENT
and publishing his book. So of all ot her inventions or This issue concerns the use by respondents of t he mark
dJscoveries. "Poster Ads" which petitioner's president said was a contraction
''The copyright of a book on perspective, no of "pclst~,r advertisiqg." P &. D was able to_secure a tr.a demark
matter how· many drawings and illustrations 'it may certificate for It, but one where the goods specified were
contain, gives no exclusive right to the modes of "stationeries such as letterheads, envelopes, calling cards,
drawing described, though they may never have and newsletters." Petit ioner admitted it did not commercially
been known or used before, By publishing \ he book engage in or market these goods. On the contrary, it dealt in
without gettl'rtg a patent for. t he art,. the lattef is given electrk aJfy operated backlit advertising units and the sale of
te;J the public. - , advertising spaces t hereon, which, however, were not at all
specified in the trademark certtficate.
XXX
. . Under t he circumstances, t he Court of Appeals. correct ly
~ "~ow, y,-~~tno on,e ~as a right to·p int ori,gubl.ish ·· dted Fab(:rge, ·Inc> v. 1nteni:led(ate APRl:iflate, Cour:r,, where
_fHS, took, .or any material part' thereof, as a book we, invoking Section 20 of the old Trademark Law, ruled
intended to convey instruction in the art, any person that "the certificate of registration issued by the Director
may practice and use the art itself which he has of Patents can confer (upon petitioner) ttie exclusive right
described and illustrated therein. The use of the art is to use its own symbol only to .those goods specified Jn the
a
a;~otally diffel'el')t thlrJg fro,rn publii:atlon of the book certificate, subject to ariy condltions and lini.i tations specified
'explain Ing lt. The topyright of a book·on bookkeeping In the certificate x x x. One who has adopted and used a
cannot secure t he exclusive right to make, sell and trademark on his goods does not prevent the adoption and
use account books'prepared upon the plan set forth In use of the same trademark by others for products which are
such book, Whether t he art might or might .not have of a different description," Faberge, Inc: was correct and was
been patented, is a question, which is not before. us. In fact.recently reiterated in Canon Kabushikf Kaisha v. Court
It was hot patented, and is open and free to the use of Appeals.
of the public. And, of course, In using t he art, the
24 ESSENTIALS OF I NT ELLECTUAL PRO PERTY LAW CHAPTER I 25
INTELLECTUAL PROPERTY RIGHTS

Assuming arguendo that ''.Poster Ads" could validly qualify purchasing public, the word or phrase has come to mean that
as a trademark, the failure of P & D to secure a trademark the article was his property. The admission by petitioner's
registration for specific use on the light boxes meant that own expert wit ness t hat he himself could not associate
there c.ould not have been any trademark infringement since "Poster Ads" with petitioner P & D because it was "too generic"
reglst'rat,i9n was an ~ssential element thereof. definitely precluded t he 9 ppli,cation of this excepti on.
Having discussed the most important and critical issues, ,
ON THE I SSUE OF UNFAIR COMPETITION we see no need to belabor the rest.
If at all, the cause of action should have been for unfair All told, the C9urt finds no reversible error comrnittec1 by
.c9mpe@qn, a situation which was pos$ible even if P, & D the Court of Appeals wllen it reversed the Regional Trial ·Court
had nor'eglstration. However, while the petitioner's complaint of Makati City.
in t he RTC also cited unfair competition, t he trial court did
not find private respondents liable therefor. Petitioner did not WHEREFORE, the petit ion is hereby DENI ED and the
appeal this particular pointi hence, it qmnot now revive its decision of the Court of Appeals dated May 22, 2001 i~
claim of unfair competition. AFFIR.MED in toto. '.
., ,r •
But even disregarding procedural Issues, we nevertheless
cannot hold respondents guilty of unfair competition.
By the nature ofthings1 there can be no unfair competition
under the law on copyrights a lthough it is applicable to
disputes over the use of trademarks. Even a name or phrase
incapable of appropriation as a trademark or trade name
Elidad C. Kho, cfuing business under the name and
may, by long and exclusive use by a business (such t hat t he
style of KEC Cosmetics Laboratory v. Hon. Court
name or phrase !;,ecomes associated with th~ business or
of Appeals, Summerville General Merchandising
product In the mind of the pu'rchasing public), be entitled to
Company and Ang Tiam Chay
protection against unfair competition. In this case, there was
G.R. No. 115758, March 19, 2002
no evidence that P & D's use of " Poster Ads" was distinctive
De Leon, Jr., J.
or well-known. As noted by the Court of Appeals, petitioner's
~
expert witnesses '1imself h9d tt::stified th~t - 'PosterAds' was '
Before us Is a petit ion for review on certiorari of the
too generit a nam:e. So it was difficult to identify it with any Decision dated May 24, 1993 of t he Court of Appeals setting
company, honestly speaking." This crucial admission by its aside and declaring as null and void the Orders dated February
own expert witness t hat " Poster Ads" could not be associated 10, 1992 and Marcb 19, 1992 of the Regional Trial Court,
with P & p showed ,that, in the mind of-the public, th~ goods ., B1qnc~ :90, or Quezqn City granting the. issu?Jnce of a ,writ of
, Md servi~es carrying t tfetradernark "l?oster Ads" could not be · . · preliminary injunction. ·· .
distinguished from lhe goods and services of other entities.
The facts of the case are as follows:
This fact also prevented the application of the doctrine of
seco11dary meaning. "Poster Ads" was generic: and incapable On December 20, 1991; petitioner Elidad C. Kho 'filed a
6f being used as a trademar,k because it was use_d ·In the complalht for injun·ction and damages wit~ \a prayer for the
field of poster advertising, the very business engaged in by Issuance of a writ of preliminary injunction, docketed as Civil
pet itioner. "Secondary meaning" means t hat a word or phrase Case No. Q-91-10926, against the respondents Summerville
originally incapable ot exclusive appropriation with reference General Merchandising and Company (Summerville, for
to an article in th.e market (because it is geographically or brevity) /tnd Ang Tiarn Chay. ,., , ·
otherwlM descriptive) might nevertheless have been used for·
The petitioner's complaint alleges that petitioner, doing
so long and so exclusively by one producer with reference business under the name and style of KEC Cosmetics
to his article that , in the trade and to t hat branch of the
26 ESSFNTl.ALS OF INTELLECTUAL PROPERTY LAW CHAPTER I 27
INTELLECTUAL PROPERTY RI GHTS

Laboratory, is the registered owner of the copyrights Chin

Chun Su and Oval Facial Cream Container/Case, as shown The respondents moved for reconsideration but their
by Certificates of Copyright Registration No. 0· 1358 and No. motion for recon$ideration was denied by the trial court in an
Order dated March 19, 1992.
0-3678· that she also has patent rights on Chin Chun Su &
Device ~nd Chin Chun Su for medicated cream after purchasing On April 24, 1992, the respondents filed a petition for
the same from QL1intin Cheng, the re9istered ovvner th~n!?of certiorar,i with t;h~ Court--of Appea.ls, docketed as CA- G,R.
in the Supplemental Register 6f t he Philippin"e 'Patent Office · SP No. 27803, praying for the nullification of the said writ
on February 7, 1980 under Registration Certificate No. 4529; of preliminary injunction issued by the trial court. After
t hat respondent Summerville advertised and sold petitioner's the respondents filed their reply and almost a month after
cream products under th~ ,.brand name Chin Chu~ Su,_ In . petltion.e~ subm itted hr;:r comment, .-0r on August 14, 1992,
s imilar containers t hat petitioner uses, thereby· m1sleaqmg the latter movea to dismiss the · petition for violation of
the public, and resulting in the decline in the petitioner's Supreme Court Circular No. 28-91, a circular prohibiting
business sales and income; and, that the respondents should forum shopping, According to the petitioner, the respondents
oe enjoined from pjlegedly infringing on the copyrights and did notstate t he docket.number of the civil case in the caption
patents of t he petittoner. of their pet ition and, more significantly, they did not include
The respondents, on the other hand, alleged as their therein a certificate of non-forum shopping. The respondents
defense that Summervllle is· the exclusive an.d authorized opposed the petition and submitted to the am?ellate court a
importer, re-packer and distribut or of Chin Churi Su products certificate of non'-forum shopping fol"'th~ir petit ion.
manufactured by Shun Yi Factory of Taiwan; t hat the said
On May 24, 1993, the appellate court rendered a Decision
Taiwanese manufacturing company authorized Summerville
in CA-G.R. SP No. ~7803 ruling in favor of the respondents,
to register its trade name Chin Chun Su Medicated Cream
the oisposltive portion of which readf
with the Philippine P~tent Office· and other appropri.ate
govemmental agencies; that KEC Cosmetics Laboratory of~he WHEREFORE, the petition is hereby given due
pet it ioner obtained the copyrights through misrepresentation
course and the orders of respondent court dated
and falsification; and, that the authority of Quintin Ch.E~DQ, Febru.ary 10, J992 and March 19, 1992 grant ing t he
~.$signee of the J!)atent registration certificate,. to 1:fistriffo te
writ of preliminary injunction and denying petitioners'
and market Chin Chun Su products in the Philippines .had
motion for reconsideration are hereby set aside and
already been t erminated by t he said Taiwanese Manufacturing
declared null ,and void. Respondent c;ourt is directed
Company. · ,
to for.thwlt.h proceed with the trial of Civil Case No.
' After du~ hea;1ng ~n the appli~ation for preliminary Q~91-10926 and reso.lve the: issue raised by t he
injunction, t he t rial court granted the same in a..n Order dated parties on t he merits.
f'ebruary 10 1 1992, the dispositive portion .o f wnich read~:
/ · A'CCORbINGLY1 1ihe appllt ati'on of.pl~i'ntifH:ltdad C. •Kho, ·
doing business under the style of KEC Cosmetic Labora~ory, In granting the petition, the appellate court ruled that:
for preliminary injunction, is tiereby gra11ted. co:nsequent1ally,
P.laintiff is r~qul~ed to file with th~ Cburt a boQtj. executeA .to . The registration of t pe tradernark or brand name
·aerenctants 'fn the amount bf five hl.ln.dred t housand pe~os "Chin Chun Su" by KEC with the supplemental register
(PS00,000.00) to the effect that plaintiff will pay to defendants of t he Bureau of Patents, Trademarks and Technology
all damages which defendants may sustain by reason. of the Transfer cannot be equated with registration in the
injuncti9n iqhe Court should fina,lly decide that p~aintiff is •not principal register, which is duly protected by t he
entitled tt:iereto. · Trademark Law. ·

SO ORDERED. XXX XXX XXX

L8 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER I 29
INTELLECTUAL. PROPERTY RIGHTS

As ratiocinated in La Chemise Lacoste, S.A. v. Fernandez, October 22, 1993, the trial court rend ered a Decision barring
129 SCRA 373, 393 : the petitioner from using t he t rademark Chin Chun Su and
upholding the right of the respondents to use the sarne,
"Registration in t~e Supplemental Register,
but recognizing t he copyright of the petitioner over t he oval
t herefore, serves as notice that the registrant is using
.. shaped, container of her beauty cream. The trial court did not
or has -appropriated the trademark. By the very fact
award damages and costs to any of t he parties but to their
that ttie trademark cannot as yet be on guard and
.. respective counsels were awarded Seventy-Five Thousand
there are certain defects, some obstacles which the
Pesos (P75,000.00) . each as attorney's fees. The petitioner
use must .still overcome before he can claim legal
ownership of the mark or ask the courts to vindicate duly appealed t he said decision to the Court of Appeals.
his claims ofan exclu~ive right to t he use of the same. On June 3, 1994, the Court of Appeals promulgated a
It would be deceptive for a party wit h nothing more Resolution denying the petitioner's motions for reconsideratio~
than a r egistration in t he Suppl emental Register: t o and for contempt of cou1t in CA-G.R. SP No. 27803.
posture before courts of justice as If the registration
is in the Principal Registe~. Hence, this petitron anchored on the following assignment
of errors:
The reliance of the private respondent on t he last
sentence 6f the Patent office a•ction on application ,, 1. RE~PONDENT HONORABLE COURT OF APPEALS
Serial No. 30954 that 'registra nts is pr.esumed to COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING
" be 'the ·owner of the mark until after the registration TO LACK OF JURISDICTION IN FAILING TO RULE ON
is declared cancelled' is, therefore, .misplaced and PETITIONER'S MOTION TO DISMISS.
grounded · on shaky foundation. The supposed II. RESPONDENT HONORABLE COURT OF APPEALS
presumption not only runs counter to the precept COMMITTED GRAVE:° .ABUSE OF DISCRETION AMOUNTIN~
embodied in Rule 124 of t he Revised Rules of Practice TO LACK QF JURISDICTlON I N REFUSING TO PROMPTLY
. before the Philippine Patent Office In Trademark Cases RESOLVE PETITIONER'S MOTION FOR RECONSIDERATION,
but considering all the facts ventilated before us in the
four interrelated petitions Involving the petitioner and III. IN DELAYING THE RESOLUTION OF PETITIONER'S
the respondent, it is devoid of fac,t ual basis. As even in MOTION FOR REC0NSIDERATION, THE HONQRABLE COURT
cases when~· presumption and precept may factually OF APPEALS DENIED PETITIONER'S RIGHT TO SEEK Tifl:'IELY
be reconciled, yte hav~ held that, the presumption is APPELLATE RELIEF AND VIOLATED PETITlONER'S RIGHT TO
rebuttable,·not conclusive (Peopl e v. Lim Hoa, G.R. DUE PROCESS.
No. L-10612, Ma,y 30r 19SS, Unreported). One may be
IV. RESPONDENT HONORABLE COURT OF . APPEA,L~
. declared an unfair 'c ompetitor even if his compet ing
C0MMlTTED GRAVE ABUSE OF DISCRETION AMOUNTING TO
. traqemi;lrk fs regjstered (Parke, Davis & Co. V. Kiu FQo ·
LACK OF JURISDI CTION IN FAll.,ING :TO (::ITE THE PRIVATE
& Co., et al., 60 Phil 928; La Yebana Co. v. Chui:\ Seco
• &Co.,c'3.4Phil5'34)." ••,~ -· '. , , RESPONDENTS IN CONTEMPT.
The petitioner f~ults tne appellate court for not dis-
Th~ peJitioner filed a motion fcir reconsfderatlon. This missing the petition on the ground of violat!Qn of Supreme
she followed with several motions to declare respondents in Court Circular No. 28-91. Also, the petitioner contends that
, contempt of court tor publishing advertfaements notifying the appellate court violated Sectfon 6, Rule 9 of t l"Je Revised
t he public of the prom1,1fgation 9f the a~salled c]ecision of Internal Rutes of the Court of Appeals when it failed to rule
the appellate court and stating t hat genuine Chin Chun Su
on her motion for reconsideration within ninety (90) days
products could be obtained only fr.om Summerville General
Mercha ndising and Co. from the time it is submitted for resolution. The appellate
court ruled only a~er the lapse of three hLmdred fifty-four
In the meantime, tile trial courf'went on to hear peti- (354) days, or on June 3, 1994. In delaying the resolution
tioner's complaint for final injunction and damages. On thereof, the appellate court denied the petitioner's right to
30 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER I 31
I NTELLECTUAL PROPERTY RIGHT S

seek the timely appellate relief. Finally, petitioner describes name and container of a beauty cream product are proper
as arbitrary the denial of her motions for
contempt of court subjects of a trademark inasmuch as t he same falls squarely
within its definition. I n order to be entitled to exclusively use
against the respondents.
the same in the sale of the beauty crean;i product, the user
We r;1-1le in favor of ~he ~espondents. - tnust. 9.ufficlently'pi'ove that .she registered or used it before
0

Pur; ~ant to Section 1, ROI~ 58 e

of th Revised Rules of
anybody else did;' The petitioner's copyright and • patent
registration of the name and container would not guarantee
Civil Procedure, one of the grounds for the issuance of a
her the right to the exclusive use of the same for the reason
writ of preliminary injunct ion is a proof that the applicant is
that they are not aJ:lpropriate subjects of the said intellectual
•. entitled to the r:elief demanded, apd the wMole or par_t of such rights . .Consequently, a preliminary ·1njundion order cannot . ·
relief eonslsts in restrain'i ng the commission or continuance' be issued for the reason that the petitioner has not pro.ven
of the act or acts complained of, either for a limited period that she has a clear right over the said name and container
or perpetually. Thus, a preliminary injunction order may to t he. exclusion of others, not having proven that she has
be granted only when the application for the issuance of registered a trademark thereto or used the same before
the ~arne shows facts entitlipg the apgllcant .to the reli~f . · anyone,tfid. · '
demanded. This is the reason why we tiav.e ruled thatit must ·
be shown that the invasion of the right sought to be protected We cannot likewise overlook the decision of the trial court
is material and suostantial, that the right of complainant ls in the case for final injunction and damages. The dispositlve
clear and unmistakable, and, that there ls an urgent and portion of said decision held that the petitioner does not have
paramount necessity for the. wdtto prevent serious dam~ge. trademark rights on the name and container of the beat:Jty -
cream product. The said decision on the merits of the trial
In the case at bar, the petitioner applied for the issuance court rendered the_ issuance of t he writ of a preliminary
of a preliminary injunctive order on the ground that she is injunction moot and~academic notwit hstanding the fact that
entitled to the use of the trademark on Chin Chun Su and its the same has been appealed in the Court of Appeals. This Is -
. cotitain.~ •base(:! on her copyr&ht and patent over th~ -same. support;ed by our ruling in La Vista Association, Inc-. v. Court
We first find it appropriate to rule on whether the copyright of Appeals, to wit:
and patent over the name and container of a beauty cream
Considering that preliminary injunction Is a provisional
product would entitle the registrant to the use and ownership
remedy which may be gra.nted at any time after the
over the same to the -exclusion of others.
~otnmencement of the action and before judgrnent when .
Tradernark, copyright, and ~atents at~ different lntellec- It is established that the plaintiff is entitled to the relief
tual property rights that cannot be interchanged with demanded and only when his complaint shows facts
one another. A trademark fa- any visible sign capable of entitling such r:eliefs x x )( and it appearing that the trial
distinguJshing the goods (trM.~mark) or servic~s (service •cou~ _t,ad already granted the Issuance of a final lnjynction
tnark~ <?f~<:tn ~n~el;i;if'seffi!nd sff~l 1nclude.a stamped or-1"0.i:lrked in favor of petitioner in it-s'decision rendered after-tricll ori
a
container of ~ocids In relation thereto, trade name means the i;i,erits x x: 'x t he Court resolved to dismiss the instant
the name or designation identifying or distlngufshing an petition having been rendered moot- and academic. An
enterprise. Meanwhile, the scope of a copyright is confine(! injunction issued by the t rial court after it has already
to literar:Y and arti$tic worfs:s which ~re original intelli::ctuaJ mi;!de a cle~r pronouncement as to _the plaintiff's right
cre.at!oM in the literary and artistic domain protec~ed from thereto, that is, after the same issue5as been aea1ded on
the merits, t he tr\al court having appreciated the evidence
the moment of their creation. Patentable inventions, on the
other hand, refer to any technical solution of a problem In any presented, is proper, notwithstanding the fact that the
field of .human activity which is new, involves an inventive decision rendered is not yet final x x x. Being an ancillary
remedy, the proceedings fqr preliminary injunctio_ri-tannot
steR and .Is lrJdustrially clpplicable.
. . ~ .stantl separately or proceed Independently of the decision
Petitioner has no right to support her claim for the rendered on the merit of the main case for injunction. The
exclusive use of the subject trade name and its container. The merit of the main case having been already determined
 35
34 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER I
I NT ELLECTUAL PROPERTY RI GHTS

to commer cially exploit t he sam e intellert1,al property right under

r in tntellectual Prop erty
3. The principl e of reciprocity app ,es
specified terms and condit ions. Rights.
This is a highly- regulated cont ract given its role in t he fulfillment 4 Unfair Competit ion is a public crime.
of the State's desire to bring technologies into publi c domain through
5 . ./The term " intellectual property rights" consist s o~: a) Copyr_ight)
disclosun::s . Regulation of such contracts is also necessary to prevent
. and Related Rights; b) Trademarks and_ Service Marks,_ c
practices that may have an adv erse effect on competition and t rade.
Geographic Indications; d) Industrial Designs ; _e) Pa~ents, f )
(See s ec. 85) Layout Designs (Topographies) of_I ntegrated Circuits, and g)
Protection of Undisclosed I nformation.
3.3 Required and Prohib ited Stipulations
/ k ·ght and patents are differ ent intellectual
6 Trademar , copyn •h ot he[
The law man dates that Technology Transfer Arrangements contain . property rights that cannot be interchanged wit one an .
stipulat ions known as mandatory provisions. 1 At t he same time,
t he law pr oh ibits parties thereto t o include in the contract certain 7 / A t emark is any v isible sign capable of distin uishi .
. (tra e or services ' r . of an enterp rise
prohibited cla uses.'
~ hall include a stamped or marked container of g~ods ._In
Failure t o comply wit h such ma ndatory and prohibited clauses relation t hereto, a t rade name means ~he nam e or des1gnat1on I
would automatically r ender the Technology Transfer Arrangement
unenfor ceable. (See Sec. 9 2)
identifying or distinguishing an enterprise. I
8 0he scQQe of a copyri_ght is confined to lit erar . nd artist~c ~~r~s I
However, in certai n exceptional cases, 3 the Technolog y Transfer . h. . . . ·ellectua creations in the llterar an a is ic I
Arrangement may still be valid even if it contains a prohibit ed clause ~o~ ai~rprotected from the moment o their creation. I
or it does not stipulate a mandat ory clause if t he same is approved
and r egistered with the Documentation, I nformation and Technology 9 ,,,,. Patentable inventior'ls refer to any t echnical solution of a_prob~e~ I
Transfer Bureau.• . if1'1"□Y field of hpm~n actjyjty w hich is new, involves an inven '.::'..:
step and is industri ally applicable.
f Arrangement is a contract. The law states
l O. /~~~~n~~~~~ :~;s ~ ~ndatory and prohibited clauses in such
Bar Exam 20m:
contracts.
What tontractua pulatlons a
· technology transfer agr eements?
· Enumerate' three st ipulations t
in teGhnolo transfer a reements.

D~ Te n Fast Laws on Intellectual Property Rights

1. The law that primarily governs Intellect ual Pr operty Rights in our
country i s Republic Act No. 8293 which took effect on January 1,
1998 .
2 . Republic Act No. 8293 has no retroactive effect.

1 Em1mcrated in Rep. Act No. 8293, Sec. 88.

2 Enumerated in Rep. Act No. 8293, Sec. 87.
3 Enumern1cd in Rep. Act No. 8293, Sec. 9 1
4See more discussions under Voluntary Licensing, i11fra.
 CHAPTER II 37
INTELLECTUAL PROPERl Y O FFJ CE

4 INTELLECTUAL PROPERTY O FFICE

CHAPTER II 4.1 Creation

The Intellectual Property Office was created under Republic Act No.
INTELLECTUAL PROPERTY OFFICE 8293. This Office replaced t he Bureau of Patents, Trademarks and
Technology Transfer.

The creation of the Intellectual Prope1ty Office (the Office ) to replace 4 .2 Organization
the Bur eau of Patents, Trademarks and Technology Transfer is one of
the primary obj ectives of Republic Act No. 8293. IWI The Intellectua l Property Office is headed by a Director General
The creation of the new Office was brought about by the need
§llJ who is assisted by two Deputies Director General.
to restructure the existing organization handling registration of The Office is divided into seven Bureaus, each of which is headed
patents and trademarks so that the challenges brought about by the by a Director and assisted by an Assistant Director. These Bureaus
growing volume of applications may be addressed. It was also aimed are:
to improve the efficiency of the Office t hrough faster processing of
applicat ions as well as resolutions of inter partes cases. a) The Bureau of Patents;

The proponents of the law led by the late Senator Raul Roco b) The Bureau of Trademarks;
explained t hat the said objectives will be achieved through: c) The Bureau o{ Legal Affairs;

" (F)irst, dist ribution of the policy formulation, d) The Documentation, Information and Technology Transfer
adjudicatory, and administrative functions which at present Bureau;
are performed solely by the Director of Patents to different e) The Management I nformation System and EDP Bureau;
officials; second, providing the intellectual property office
wit h its own administrative and financial services in order f) The Administrative, Financial and Personnel Services
to st reamline its administrative affairs; and third, ensuring Bureau; and
the decisions on intellectual proper ty rights are consistent g) The Bureau of Copyright and Other Related Rights
and correct by centralizing the adjudicatory functions on
these cases in t he I ntellectual Property Office." 1 The Director General, Deputies Director General, Directors and
Assistant Directors of the Office are all appointed by the President.
Curiously however, t his topic about the I nt ellectual Property
The other officers and employees of the Office shall be appointed
Office is not included in t he Supreme Court Bar Exam Syllabus. by the Secretary of the Department ofTrade and Industry, conform ably
Nevertheless, there are important concepts in t his Chapter that
with and under the Civil Service Law. (Sec. 6, as amended by Rep.
students need to be familiar with specifically the organization and Act No. 10372)
the j urisdiction of the Intellectual Property Office including the
administrative penalt ies tha t the Office may impose upon an infringer.
4 .3 Functions

The following are t he declared functions of the Office:

a) Examine applications for grant of letters patent for inven-
tions and register utility models and industrial designs;
'Scna1,)r Ra ul Roco's Sponsorship Speech on Rep. Ac1 No. 8293 (Oc1obcr 8, 1996).
b) Examine applications for the regist ration of marks, geo-
36 graphic indication, integrated circuits;
 r
38 ESSE NTIA LS OF INTELLECTUAL PROPERTY LAW CHAPTER 11 39
INTELLECTUAL PROPERTY OFFlCE

c) Reg ister technology transfer arrangements and settle performed and materials furnished by the Office. (Sec.
disputes involving technology transfer payments covered 7.1)
by t he provisions of Part II, Chapter IX on Voluntary
Licensing and develop and implement strategies to promote s.2 Qualifications
and facilitate technology transfer;
d) Promote the use of patent information as a tool for techno- The Director General and the Deputies Director General must be
logy development; natural-born citizens of the Philippines, at least 35 years of age on
the day of t heir appointment, holders of a college degree, and of
e) Publish regularly in its own publication the patents, marks, proven competence, integrity, probity and independence: Provided,
utility models and industrial designs, issued and approved, That the Director General and at least one Deputy Director General
and the technology transfer arrangements registered; shall be members of the Philippine Bar who have engaged in th e
practice of law for at least ten years: Provided, further, That in th e
f) Administratively adjudicate contested proceedin gs affect-
selection of t he Director General and the Deputies Director General,
ing inte llectual property rights; and
considerat ion shall be given to such qualifications as would result, as
g) Coordinate with other government agencies and the pri- far as practicable, in the balanced representation in the Directorate
vate sector efforts to formulate and implement plans and General of the various fields of intellectual property. (Sec. 7 .2)
policies to strengthen the protect ion of intellectual proper ty
rights in the country. (Sec. 5) 5 .3 Term of Office

The Director General and the Deputies Director General shall be

appointed by the President for a term of five years and shall be
5 D IRECTOR GENERAL eligible for reappointment only once. Appointment tu any vacancy
shall be only for the unex'pired term of t he predecessor. (Sec. 7 .3)
5.1 Functions It was also provided in the law that the first Director Gene ral 2
appointed under t he law shall have a first term of seven years.
The Director General of the Intellectual Property Office, as the head
of the Office, manages and directs all functions and activities of
5.4 Jurisdiction
the Office, including the promulgation of rules and regulations to
implement the objectives, policies, plans, programs and proj ects of Section 7, paragraph (b) of Republic Act No. 8293 as amended
t he Office. This m anaging function is limited by the proviso t hat t he by Republic Act No. 10372 provides :
Director Gen era I shall be subject to the supervision of the Secretary of
Department of Trade and I ndustry when t he exercise of the authority "Sec. 7. (a) xx xx xx xx x
is to propose policies and standards in relation to the following :
"{b) Exercise excl usive appellate jurisdiction over
(1) the effective, efficient , and economical operations of the ail decisions rendered by the Director of Legal Affair s, the
Office requiring statutory enactment; Director of Patents, the Director ofTrademarks, the Director
(2) coordination with other agencies of government in r elation of Copyright and Other Related Rights, and the Director of
to the enforcement of intellectual property rights; the Documentation, Information and Technology Transfer
Bureau. The decisions of the Director General in the exercise
(3) t h e recognition of attorneys, agents, or other persons of his appellate jurisdiction in r espect of the decisions of
represen ting applicants or other parties before t he Office; the Director of Patents, the Director of Trademarks and
and the Director of Copyright and Other Related Rights shall
be appealable to the Court of Appeals in accordance with
(4) the establishment of fees for the filing and processing of
an application for a patent, the utility model or indust rial
design or mark or a collective mark, geographic indication
2
and other marks of ownership, and for all other services Atty. Emma C. Francisco, Director General of the lntcllcctual Property Office ( I 99&-
2004).
 40 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER II 4]
INTEL LECTUAL PROPERTY om cr
t he Rules of Court; and those i n respect of the decisions
or the Director of t he Documenlation, Inform ation and Injunction. The motion was denied by the BLA. The motion
Technology Transfer Bureau shall be appealable to t he for reconsideration filed by Respondent was also denied by
Secretary of Trade and Industry; " the BLA. -
Thus, the Director General by express provision of the law, as Respondent t hen f iled a ;;pecial civil action for certiorari with
amended, retains his exclusive appellate j urisdiction over all decisions the Court of Appeals assailing the resolution of the BLA. While
r endered by the Director of Legal Affairs, the Dir ector of Patents, this case was pending, t h e Respondent filed a complaint with
the Director of Trademarks, the Director of the Documentation, the Regional Trial Court ·of Makati City for Infringement arid
I nformation and Technology Transfer Bureau and now the Director of unfair compet ition. Petitioner filed a motion to dismiss based
Copyright and Other Related Rights. on the ground of forum shopping.
Wit h the creation of t he Bureau of Copyright and Other Related On :January l.8, 2005, the CA issued its questioned Resolution
Rights, the amendatory law divested the Director General with approving the bond posted by t he Respondents pursuant to
o riginal j urisdiction to resolve disputes relating to the terms of license the Resolutlon issued by the appellate court on March 23,
involving author's right to public performance. 2004 which dlrec.i:ed the issuance of a temporary ·restraini ng
order conditioned upon t he filing of a bond. On even date,
5.5 Jurisdiction Over Interlocutory Orders of the Bureau of the CA issued a temporary restraining order which prohibited
Legal Affa irs eetitioner ''from imp?~i~_g; distributing, selling ~r offering for
sale Sulbactam Amp1c1llm products to any hospital or to any
There is a n eed to qualify the j urisdiction of t he Director General other entity in t he Philippines, or from infringing Pfizer Inc.'s
insofar as the decisions of the Bureau of Legal Affairs is concerned . Philippi(le Patent No. 211 16 and impounding all the sales
The Supreme Court explained t hat only final decisions of the Burea u Invoices-Md other do.cuments evidencing sa les by [pet itioner)
of Legal Affairs are appealable to the Director General. The Court of Sulbactam Ampicitlin products."
of Appeals may exercise jurisdiction over interlocutory orders of the
Bureau of Legal Affairs. Among others, tl1e Petit ioner questioned the exercise of
'jurisdiction of the CA over t he case. Petit ioner argued that
pursuant to the doct rine of primary jurisdiction, the Director
General of the I PO and not the CA has j urisdiction to review
ILLUSTRATIVE CASE 2•1 , t he questioned Orders of the Director of t he BLA~IPO.

Issue:
Just The Final Order
Whethen t he Court of Appeals erred in exercisin9 j urisdiction'
Titfe: over the case.
, Phil. Pharmawealth, I nc. v. Pfizer, Inc. and Pfizer{Phil.), Irie.,
'G.R: No,1.,.16771~.i November n,.,~010 ·, ' ., · · , ,.Rul ing : .NO
'

1. What is In question is an interlocutory order and not a

Facts: final dedsion of the Bl.A. It Is true that under Section 7(b)
Q{ RA 8293, othel'wlse ~nown s)S the Ihtellectua-1 Property
T he case" arose f~om a complalnt¾or pat~nt infringement filed Code ofrhe Philippines, which is t he pr esently prevailing law,
by Respondent Pfizer against Petitioner Phil. Pharmawealth the Director General of t he IPO exercises exclusive appellate
with the Bureau of Legal Affairs (BLA).
jurisdiction over all deci~ions rendered by t he, Director of·
The BLA .issued ao Ord'er issufng .a prelimihafy Injunction the BLA-IPO. However, what is being questionec! before the
against the Petitioner which was effective for 90 days upon CA ls not a decision, but an interlocutory order of the BLA-
receipt. Prior to the expiration of the injunction or:der, IPO denying respondents' m otion to extend the life of the
Respondent filed a Motion for Extension of Writ of Preliminar,, .Qrellrninary injunction issu ed In th~ir favor.
 ,..-

42 ESS ENTI ALS OF INTELLECTUAL PROPERTY LAW CHAPTER II 43

I NTELLECTUAL PROPERTY OFFICE

4. The Impfementing Rufes and Regulations of RA 8293 do

2. RA 8293 law is silent on the matter, hence the Rules of
not provide for a procedural remedy to question Interlocutory
C?urt shall apply in a suppletory manner. RA 8293 is ·silent
orders issued by the BLA. Moreover, as discussed earlier,
with res~eci; to any remedy available to lltlgants' who fntend
RA 8293 anGI Its implementing rules and regulations do not
to question a~ i~~~rlocu~orv.•. ~rder iss4ed by the BLA-IPO. provide ~or a procedural remedy, t0 que$1:1on lnt er1oc;;utory · ·
· Moreov~r, Sect!on 1(c), Rule 14 of t he Rul~s and .Regul~tions orders issued by the BlA-IPO. I n this regard, it bears to
on Administrative Co~plaint~ for Violation of Laws Involving reiterate that t he judicial power of the courts, as provided
Intellectual Propercy R19hts simply provides that interlocutory for under t he .Constit ution, includes t he authority of t he
orders s~all not be ap~ealable. The said Rules and Regulations .• courts to determine in an appropriat~ action the validity .of
do n?t prescrtbe· a prb"cedure within the administrative the acts·· of t he polit ical departments. Judicial power also
, machinery to _be followed In assailing orders Issued by the includes -the duty of the cou1ts of j ustice to settle actual
BlA-IP~ pe~ding final resolution of a case filed with them . . controversies involving rights which are legally demandable ·
Hence, 1n t he absence of such a remedy, the provisions of the arid enforceable, and to determine whet her or not there has
, Rules of Co~rt shall apply in a suppletory manner, as provided been a grave abuse of discretion amounting to lack or excess
under Section 3, Rule 1 of t he same Rules and Regulations. of jurisdiction on t he part of any branch or instrumentality
Henc~, in t he pres':nt case, respondents correctly resorted to of the Government. Hence, the CA,. ~nd rot the IPO Director .
the filing of a special Civil action for certiorari with the CA to General, has jurisdiction to determine whether the BL!HPO
question ' the assailed Orders of the Bl.A-IPO,· a's they cannot committed grave abuse of discretion in denying respondents'
appeal therefrom and they have no other plain, speedy moti.on to extend the effectivity of the writ of preliminar y ..
and ~dequate remedy in the ordinary course of law. This is injunction which the said office earlier issued .
consistent with Rule 65 of the Rules of Court, as amended,
~. . T~er_e was no violation of the doctri_ne of prima~
;unsd1ct1on. Ba_sed
1
00
the foregoing, the Court finds that
5.6 Where to Appeal the Decision of the Director General
:espondents Initial fihng of their-complaint with the BLA-IPO,
m:tead o_f the ~egular courts, is in keeping with the doctrine of N I n case of an adverse decision of the Director General, appeal
pnrt'lary J~rl~d1ctlon owing to t he fact t hat t he determi,natio11 i,llJ may be m ade to the Court of Appeals or the Secretary of t he
• of the ba_s,c issue o~ whether petitionet violated respondents' Department of Trade and Industry as t he case may be.
pate~~ qgh.~ requires the exercise by the IPO of sound
adrt11nistrat1ve discret ion w~ich Is based on the agency's The rule is that decisions of the Director General in the exercise
sp~clal competence, knowledge and experience. · of his appellate jurisdiction In respect of t he decisions of the Director
~ ' . . ., ~ .
),
of Patents, the Director of Trademarks, and t he Director of Copyright
However, t he propriety of extending the life of the writ of and Other Related Rights are appealable to the Court of Appeals in
. _preliminary injunction'lssued by\ he'BLA-IPO In t he exercise of accordance with the Rules of Court.
Its q_ua~i_'."J_u~icfal power is no lon1)era matter that fall!> withtn
. the 1u_n~d1ct!on of the ~aicl a(fministr:atlve agency., particularly .· The decisions of the Director General in respect of t he decisions
- that of_1ts Director General. The res9lution of this ,issuewhWh of the Director of Documentation, Information and Technology
was raised before the ~~ does not"'defnand the exercise by Transfer Bureau, on the other hand, are appealable to t he Secretary
._t ~e IPO of sou_n.d _admmrstrative. discretion requiring special : of Trade and Industry. (Sec. 7)
knowled~e, experience and servi.ce~ in determining t echnical
and ln~r1eate matters of fact. It is settled t hat one of the
exceptions to the Gloctrine of primary jurlsdiction IS where
t he quest~on lnyolv~d is purely legal and will .ultimately have
to be decided by the courts of j ustice. This is t he case with
respect to the issue raised In the petition filed with the CA.
 CHAPTER II 45
44 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
INTELLECTUAL PROPERTY OFFICE

6.4 Bureau of Legal Affairs

The Bureau has the following funct ions:

6 THE BUREAUS
1. Hear and decide opposition to the applicat ion for registra-
The Intellectual Property Office is divided into six bureaus headed by tion of marks; ca ncellation of trademarks; subject to the
a Director and assisted by an Assistant Director. provisions of Section 64 of Republic Act No. 8293, cancel-
lation of patents, utility models, and industrial designs;
6.1 Bureau of Patents and petitions for compulsory licensing of patents.

The Bureau has t he following functions: 2. Exercise original jurisdiction in administrative complaints
for violations of laws invol ving intellectual property rights:
1. Search and examination of patent applications and t he Provided, That its jurisdiction is limited to complaints
grant of patents. where the total damages claimed are not less than Two
2. Registration of utility models, industrial designs, and inte- hundred thousand pesos (P200,000.00}: Provided, further,
grated circuits. That availment of the provisional remedies may be granted
in accordance with the Rules of Court. The Director of
3. Conduct studies and researches in the field of patents in Legal Affairs shall have the power to hold and punish for
order to assist the Director General in formulating policies contempt all those who disregard orders or writs issued in
on the administration and examination of patents. (Sec. 8)
the course of the proceedings.
6.2 Bureau of Trademarks The administrative penalties t hat may be imposed by the
Director of Legal Affairs are the following:
The Bureau has the following functions:
1. The issuance of' a cease and desist order which shall specify
1. Search and examination of the applications for t he the acts that the respondent shall cease and desist from
registration of marks, geographic indications and other and shall require him to submit a compliance report within
marks of ownership and the issuance of the certificates of
a reasonable time which shall be fixed in the order;
registration.
2. The acceptance of a voluntary assurance of compliance
2. Conduct studies and researches in the field of trademarks in
or discontinuance as may be Imposed. Such volu ntary
order to assist the Director General in formulating policies
on the administration and examination of trademarks. assurance may include one or more of the following:
(Sec. 9) a. an assurance t o comply with t he provisions of the
intellectual property law violated;
6.3 Bureau of Copyright and Other Related Rights
b. an assurance to refrain from engaging in unlawful
The Bureau has the following functions: and unfair acts and practices subject of the formal
investigation;
1. Exercise original jurisdiction to resolve disputes relating to
t he terms of a license Involving the author's right to public c. an assurance to recall, replace, repair, or refund
performance or other communication of his work. the money value of defective goods distributed in
commerce; and
2. Accept, review and decide on applications for the accredi-
tation of collective management organizations or similar d. an assurance to reimburse the complainant the
ent ities. expenses and costs incurred in prosecuting the case
in the Bureau of Legal Affairs.
3. Conduct studies and researches in the field of copyright
and related rights. The Director of Legal Affairs may also require the
respondent to submit periodic compliance reports and file
4. Provide other copyright and related rights service and
a bond to guarantee compliance of his undertaking;
charge reasonable fees therefor. (Sec. 9A)
46 ESSENTIALS O F l NTELLECTUAL PROPERTY LAW CHAPTER II 47
INTELLECTUAL PROPERTY OFFICE

3. The condemnat ion 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 int o other goods, or
any combination thereof, under such guidelines as he may
provide;
4. The forfeiture of paraphernalia and all real and personal
properties which have been used i n the commission of the
offense;
5. The imposition of administrative fines in such amount
as deemed reasonabl e by the Director of Legal Affairs,
which shall in no case be less than Five thousand pesos
(PS,000.00) nor more than One hundred fifty thousand
pesos (Pl50,000.00). In addition, an additional fine of
n ot more than One thousand pesos (Pl ,000.00) shall be
imposed for each day of continuing v iolation ;
6. The cancel lation of any permit, license, authority, or
reg istration which may have been granted by the Office;
or the suspension of the validity thereof for such period of
t ime as the Director of Legal Affairs may deem reasonable
w hich shall not exceed one year;
7. The withholding of any permit, license, authority, or
registration which is being secured by the respondent from
the Office;
8. The assessment of damages;
9. Censure; and
10. Other analogous p enalties or sanctions. (Sec. 10)
48 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER II 49
INTELLECTUAL PROPERTY OFFICI:

Section 10. The Bureau of Legal Affairs. - The and Technology Transfer Bureau. The decisions of
Bureau of Legal Affairs shall hav~ the following the Direct or General in the exercise of his appellate
functions: · jurisdictfon in respect of the decisions of the Director
10.1 Hear and decide opposition to t he of Patents, and the Director of Trademarks shall be
application for registration of marks; cancellation appealable to . the Court of Appeals in accordance
· of tr~_de,mar_ks; subjeGt to the provi~_ior,s of Se:qion with the Rules of Court; and those in respect of
· 64, cahceltat:,on of patents and utility models, and the .decisions of t he Director of Documentation,
Industrial designs; and petitions for compulsory Informat ion and Technology Transfer Bureau shall be
licensing of patents; appealable to the Secretary of Trade and Industry;
XXX . '
•!0.~ (a) Exercise original Jurisdiction in
administrative · complaints for · violations of 3. The law recognizes the current jurisdiction of civil courts
laws Involving intellectual property rights; and the IPO over unfair competition cases. The Court of
Pr~vided, That Its Jurisdiction is Hmited to Appeals erroneously reasoned that Section l0(a) of the
complaints where the total damages claimed Intellectual Property Code, conferring upon the BLA~IPO
are not less than Two hundred thousand pesos jurisdiction over administrative complaints for violations of
(Pl00,000): Provided, further, That availment intellectual property rights, is a general provision, over which
of the provisional remedies may: be granted In the specific provision of Section 163 of the same Code, found
· accordance with the ,Rules of Court. The Director under Part III thereof particularly governing trademarks,
of Legal Affairs shall have the power to hold and service marks, and trade names, must prevail. Proceeding
punish for contempt all those who disregard orders therefrom, the Cour;t of Appeals incorrectly concluded that
or writs issued in the course of the proceedings. all actions involvin_g trademarks, lnclL1ding charges of unfair:
competition, are under the exclusive jurisdiction Of civil
XXX XXX XXX courts.
Unquestionably, petitioner's complain_t, which seeks the _Such interpretation is not supported by the provi$1ons of the
car:tcellatiM .!,)f the disputed mark in the name of responclent lntellecttial Property Code. While Sectioh 163 thereof ves~s
Se,hwanl, Incorporat'ed, and damages for violatfon of in civil courts j urisdiction civer cases of unfair competftion,
petitioner's intellectual property rights, falls within the nothing in the said section states that the regular courts have
jurisdiction of the IPO Director of Legal Affairs. solejurisdiction over unfair competition cases, to t he exclusion
1
2 . ., The laW ·. reCegnizes the appellate ifurc/sdiction of the pf admln1$trative bodies. Ori the contrary, Sections 160 and
IPO Director General. The Intellectual Property Code also 170, which are also found under Part III of the Intellectual
expressly recognizes the appellate jurisdiction ·of the ! PO Property Code, recognize the concurrent jurisdiction of civil
Dkector General over.the dec!s-ions ofthe JPO Director of courts i;lno the IPO over unfair competition cases. These two
' lle~al Affair,s,'J o WI~;
C ' !,
- ', \
:provisions re.a d: 1
• :- • • ·: •• • "'

Section 7. The Director Generat and Deputies Section 160. Right of Foreign Corporation to Sue
Director· General. 7.1 Functions. -:- The Director in Tr.adr=mark or Service Mark Enforcement Action..
General ;;~hall ex-erclse the · ,followir:i1:l powers ,and - Any foreign national or j uridical person wtro meets'
functions: the requirements of Section 3 of this Act and does not
engage In business in the Philippines may bring a civil
XXX or administrative action hereunqer for opposition,
b) Exercise exclusive appellate jurlsdlctloh over cancellation, fnfrlngerrient, unfair · competltion, or ·
all decisions rendered by t he Director of Legal Affairs, false designation of origin and false description,
the Director of Patents, the Director of Trademarks, whether or not it is licensed to do business in the
and the Director of Documentat1o,n, Information PhiliP.pines under existing laws.
 CHAPTER 11 51
50 ESSENHALS OF I NTELLECTUAL PROPERTY LAW [NTFLLECTUAL PROPERTY OFF IC[

6. Promote the use of patent information as an effective tool

to facilitate the development of technology in the count,y.
X X)p:
7. Provide technical, advisory, and other services r·elat ing t o
the licensing and promotion of technology, and carry out
an efficient and effective program for tecl1nology transfer.
8. Register technology transfer arrangements, and settle
disputes involving technology t ransfer payments. (Sec.
11)
6.6 Management I nformation Services and EDP Bureau

The Bureau has the power t o :

1. Conduct automation p lanning, research and development,
testing of system s, contracts with firm s, contracting,
purchase and maintenance of equipment, design and
maint enance of systems, user consultation, and the like.
2. Provide m anagement information support and service to
the Office. (Sec. 12)

6.5 Bu1·eau of Documentation, Information, and Technology 6.7 Administrative, Financial a nd Human Resource Develop-
Transfer ment Service Bureau
This Bureau is composed of clifferent service units of the Office,
The Bureau has the following functions:
namely:
1. Support t he search and examination activities of the Office
through the following activit ies: 1. The Administrative Service that : (a) provides services
relative to procurement and allocation of supplies and
a. Maintain and upkeep classification syst ems whether equipment, transportation, messengerial work, cashiering,
they be national or international such as t he payment of salaries and other Office's obligations, o ffice
I nternational Patent Classification (IPC) system; m aintenance, proper safety and security, and other
b. Provide advisory services for the determination of utility services; and comply with government regu latory
search patterns; requirements in the areas of performance appraisal,
compensation and benefits, employment records and
c. Maintain search files and search rooms and r eference reports; (b) receives all application filed wi th the Office
libraries; and and collect f ees therefor; and ( c) publishes patent
d. Adapt and package industrial property information . applications and grants, trademark applications, and
registration of marks, industrial designs, utility models,
2. Establish networks or Intermediaries or regional represen- geographic indication, and layout designs of integrated
tatives. circuits registrations;
3. Educate the public and build awareness on Intellectual 2. The Patent and Trademark Administration Services that
property through the conduct of seminars and lectures, shall perfor m the following fu nctions: (a) Maintain registers
and other sim ilar activit ies. of assignm ents, mergings, licenses, and bibliographic on
Establish working relat ions with search and development pat ents and trademarks; (b) Collect maintenance fees,
4.
institutions as well as with local and i nternationa l intellec- issue certified copies of documents in its custody and
t ual property professional groups and the like. per form similar other activities; and (c) Hold in cust ody all
the applications filed with the Office, and all patent grants,
5. Perform state-of-the-art searches.
 52 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER ll 53
INTELLECTUAL PROPERTY OFFI CE

certificate o f re gistrations issued by the Office1 and the

like; d /y-designated personnel of the Intellectua l Property Office and
d~tailed/assigned law enforcement officers. (Ru le II, Sec. 1, 00 13-
3. The Financia l Servi ce that formu lates and manages finan- 170, s. 2013)
cia I program to ensure availability and proper utilization of
Jn the exercise of its enforcement functions, particularly in
funds; provide for an effective monitoring system of the
fin a ncia l operations of t he Office; and the conduct of visits to business establishments, t he IEO shall be
ccompanied by th e concerned enfo rcem ent agencies. If necessary,
4. The Human Resour ce Development Service shall design ~hey may request fr om the said law enforcement agencies a
and implement human resource development plans and detail of law enfor~ement officers in th~ IEO to ensure the s~?oth
programs for the personnel of the Office, provide for implementation of its enforcement functions. (Rule II, Sec. 4, 1b1d.)
p resent and future manpower needs of the organization·
maintain high morale and favorable employee attitude~ 7.2 Commencing Enforcement Action
towards the o rganization through the continuing design
and implement a tion of employee development programs. Enforcement action refers to any action taken by the IEO relative to
(Sec. 13) the complain t or r eport wi t l1 t he end view of ensuring compliance with
1,
the provisions of the I ntellectual Property Cod as amended. (Rule I,
sec. 4, oo 13-170, s. 2013)
7 ENFORCEMl:: NT AND VISITORIAL POWER Any right holder or authorized representative may file a verified

m 1.
Republic Ac t No. 10372 added the following powers to the
Director Gener·al :

Undert ake enforcemen t functions supported by concerned

complaint contain ing among others the n ature of the IPR violation,
complete details of the place or establishment to be subjected for
visit and a certification against non-forum shopping. (Rule I, Secs. 1
and 2, 00 13- 1 70, s. 2013)
agencies such as the Philippine National Police t he '
The Rules limit IPO's' enforcement power to manuf actu r ing, pro-
Nationa I Bureau of I nvestigation, the Bureau of Customs duction, importation, exportation, distribution, trading, and offering
the Opti ca l Media Board, and the local government units'. for sale, incl uding other preparatory steps necessary to car ry out the
among others;
sale of counterfeit 3 and pirated• goods.
2. Conduct visits du r ing reasonable hours to est ablishments
and b us inesses engaging in activities violating intellectual 7.3 Actions on the Complaint
property rights and provisions of this Act based on report,
information or complaint r eceived by the o ffice ; and Complaints for enforcement act ion shall be referred to an I PR
Enforcement Officer who shall evaluate and validate the allegations
3. Such o~her functions in fu rtherance of protecting IP rights
of the com plaint within 30 days from referral of the case, and upon
and ObJectives of this Act. (Sec. 7, par. [c), [d] and [e))
due evaluation t hereof and finding of evidence of violation of IPR,
Pursu ant to this amendment, the Director General issued Offi ce recommend to the Deputy Direct or General or an officer-in-charge
Order ~o. ~3 -170, Ser ies of 2013, promulgating t he Rules and for I PR Enforcement any or all of the following enforcem ent actions :
Reg ulation s m the Exercise of Enforcement Functions and Visitoria l
Power of the Int ell ectual Property Office, and Creating Thereby and
Intellectual Property Rights (IPR) Enforcement Office.
3
Counterfeit goods refer lo goods, including packaging, bearing without authorization a
For academic discussion p urposes, the said Of fice Ord er is
trademark which is identical to the trademark valtdly registered with the JPO or a well-known
discussed b elow notwithstanding the author's reser vation as to its
validity. mark declared as such by a competent authority in tl1e Philippines in respect of such goods, or
which cannot be distinguished in its essential aspects from such a trademark, and which thereby
infringes the right.I of the owner of the trademark in question. (Rule I, Sec. 4, par. c, 00 13- 170,
7 .1 IPR Enforcement Office s. 2013)
4
Pirnted goods refer to goods which are made without the consent of the right holder or
The IPR En forcem e nt Office (IEO) Is headed by the Deputy Direct or person duly authorized by the right holder and which ure made directly or indirectly from an article
General or an officer-in- charge for IPR Enforcem ent and assisted by where the making of t!Jat copy would have constituted an infringement of a copyright or a related
tight (Rule I, Sec. 4, par. h, 00 13-170, s. 2013)
 54 ESSENTIALS OF I NT ELLECTUAL PROPERTY LAW CHAPT ER !I 55
INTELLECTUAL PROPERTY OFFI CE

1. Issuance of notice/ warning to t he respondent/s to observe establishment. Upon arrival at the premises, the authori zed
compliance with the provisions of the I ntellectual Property personnel together with the product specialist or right holder or
Code, as amended; representative/s have seen in plain view the presence of counte,ieit
2. Issuance of visitorial order on the subjected premises; and/or pi rated goods, and they have reasonable ground to believe
that the business establishment is engaged in the manufacturing,
3. Issuance of compliance order against the respondent/s; production, importat ion, exportation, distribution, trading, and
4. Immediate filing of administ rative complaint before the offering for sa le, including ot her preparatory steps necessary to
local government unit concerned, and/or other government carry out t he sale of counterfeit and/or pirated goods, the said
agencies or tribunals; determination shall be forthwith relayed to t he owner/s, employees,
or representative/s of the business establishment . Any objection or
5. Referral of t he case to a law enforcement agency for case justification by the owner/s, employee/s or representative/s of the
build-up;
business establishment shall be n oted by the authorized personnel.
6. Recommendation of application for search warrant; (Rule III, Sec. 10, 00 13-170, s. 2013)
7. Dismissal of t he complaint; Within ten days from the conduct of visit, a post-operation report
8. together with the recommendation thereof must be submitted to the
Referral of the c~se ~o other governmen t agencies for filing Deputy Dir ector General or an officer-in-charge for I PR Enforcement
of charges for vIolat1on of other laws, rules or regulations· for appropriate administrative act ion. (Rule III, Sec. 11, 00 13-170,
or '
s. 2013)
9. Such other actions necessary to ensure compliance with
the pr ovisions of the IP Code, as amended. (Rule III Sec. 7 .6 Compliance Order
4, 00 13-170, S, 2013) I

The Deputy Director Ge'!;1eral or an officer-in-charge for IPR Enforce-

7 .4 Responsibility of the Complainant ment may issue a compliance order to t he concerned business
establishment before the appropriate administrative action is initiated.
Reports _an d information received by the I EO shall be du ly r ecorded (Rule III, Sec. 12, 00 13- 17 0 , s. 2013)
and va lidated by the designated IPR Enforcement Officer. Upon
r ecommendation_of the IPR Enforcement Officer, the concerned right Any per·son or business entity served wit h a compliance order
h?lder or authorized representat ive shall be r equired to coordinate relative to the complained violation of IPR or provisions of th e IP Code
with the IEO to pursue and maintain enforcement actions on the may avail of t he compliance period of not more than 60 days to avoid
rep_ort. Failure of the right holder or aut horized representative to being subjected to an adm inistrative action . (Rule III, Sec. 13, 00
m1t1ate the necessary complaint within one month from notice shall 13- 170, s . 2013)
cause the dismissal of the report, and due notice thereof sh all be
relat ed to t he informant on the apparent lack of interest of the right
holder t o pursue the complaint. (Rule III, Sec. 6, 00 13- 170, s. 2013)

7.5 Visitorial Order

Qo] Ten Fast Laws on Inte llectual Property Office
~fter due evaluation, t he Deputy Director General or an officer- 1. The I PO replaced t he Bureau of Patents, Trademarks and
m-cha_rge may issue a visitorial ord er on the subject business Technology Transfer.
esta~lishment for the purpose of en suring compliance with the 2. The IPO is headed by a Director General who is assisted by two
prov,s,_ons of the Intellectual Property Code, as amended. The Deputies Direct or General.
~rs,tonal order shall in no case be valid for more than ten days from
issuance ther eof. (Rule III, Sec. 8, 00 13-170, s. 2013) 3. The IPO is divided into seven Bureaus, each of which is headed
by a Director and assisted by an Assist ant Director.
I n thE: conduct of visit to the subject business establishment,
the authorized personnel thereof must act with courtesy to t he 4. The Director Genera l, Deputies Director General, Director s and
owner/s, employee/s, and/or representat ive/s of the busin ess Assistant Directors of the IPO are appointed by the Pr esident.
56 ESSENTIALS OF INTELLECTUAL PROPERTY LAW

5. The other officers and employees of the Office are appointed

by the Secretary of the Department of Trade and Indu stry,
conformably with and under the Civil Service Law.
6. The Director Genera l h as been divested of original jurisdiction CHAPTER III
to resolve disputes relating t o the terms of license involving the
author's right to public performance or other communication of
the work. This is now the jurisdiction of the Director of Copyright LAW ON PATENTS
and Other Related Rights.
7. The Director General has exclusive appellate jurisdiction over all
decisions r endered by the Director of Legal Affairs, the Dir ector Patent sounds so complicated since it is associated w ith invention s,
of Patents, the Director of Trademarks, Director of Copyright and discoveries, or science. Well, law students need not be daunted since
Other Relat ed Rights and the Director of the Documentation the law on patents deals wit h pri nciples they are familiar with, like
Information and Technology Transfer Bureau. ' contracts, property laws, remedies, and even constitutional law.

8. :h~ d~dsions of the Director General in his exercise of appellate The first thing we need to kn ow is when an invention patentable
Junsd1ct1on may be brought before the Court of Appeals or the or not. Only when the invention is patented may it be given protection
Secretary of Trade and Industry depending on where t l1e case under the Intellectual Property Law.
emanated.
A patent is a valuable asset that must be protected. It is best
9. The Supreme Court sustained the power of the Bureau of Legal t hat students of law know the extent of rights given to patent owners,
Affai~ to_ exercise j urisdiction over administrative complaints the correct documents that must be prepared, and t he remedies t hat
involving intellectual property rights. (ln-N-Out Burger case) may be availed of in order to help the clients to enjoy that protection.

10. The law recognizes the current jurisdiction of civil courts and the
I PO over unfair competition cases. (In-N-Out Burger case)
8 PATENT

8.1 Nature and Definition of Patents

[t] PateQ.t is a set exclusive rights

inventor or his assign~e o
e b state to an
xed period of time in excha.!l9e
for a disclosure of an invention. The term originates from the
Latin word patere which means "to lay open" (i.e., make available
for public inspection) and the term letters patent, which originally
denoted royal decrees granting exclusive rights to certain individuals
or businesses.•
While there is a recognize bias in favor of t he inventors under
the law on patents, the ult imate goal however of a patent system is
to bring new designs and technologies into the public domain through
disclosure.2

'Hllp://en.wikipedia.org/wiki/Patent
2
Pearl & Dean (Phil.). inc. v. Shoemart, Inc. , G.R. No. 148222, August 15, 2003, citing
Bonito Boats, Inc. v. Thunder Crajl Bo,,ts, Inc.. 489 US 141 ( I989).

57
 CHAPTER III 59
58 ESSENTIALS OF I NTELLECTUAL PROPERTY I AW
LAW ON PATENTS

Our Supreme Court held further in Pearl & Dean :

"On one side of the co111 is the public which will benefit from new 9 PATENTABLE AND NaN-PATENTABLE INVENTIONS
ideas; on the other are the inventors who must be protected. As held
in Bauer & Cie v. O'Donnel,
9.1 Patentable Inventions

m
"The act secur·ed to the inventor the exclusive righ t to An invention may be patentable or not. The law defines
make use, and vend the thing patented, and consequently
to prevenl others from exercising like privileges without patentable invention:
t he consent of the patentee. It was passed for the purpose
of encouraging useful invention and promoting new and "Sec. 21. Patentable Invent ions. - Any technical
useful inventions by the protect ion and stimulation given solution of a problem in any Aeld of human activity which
t o inventive genius, and was intended to secure to the is new, involves an inventive step and is industrially
public, after the lapse of the exclusive privileges granted applicable shall be patentable. It may be, or may relate
the benefit of such inventions and improvements." to, a product, or process, or an Improvement of any of the
foregoing."
"The law attempts to strike an ideal balance between the two
interests : 9.2 Non-Pate ntable Inventions
"The patent system thus embodies a carefully crafted n1 There are also inventions that are not patentable. An invention
bargain for encouraging the creation and disclosure of li'Z&1 may not be patentable because it does not comply with Section
new useful and non-obvious advances in technology and 21 or it falls under non- patentable inventions enumerated
design, in return for the exclusive right to practice the under Se~tion 22, as amended, to wit:
invention for a number of years. The inventor may keep
his invention secret and reap its fruits indefinitely. In "Sec. 22. Non-Patentable Inventions. - The following
consideration of its disclosure and the consequent benefit shall be excluded from patent protection:
to the community, t he patent is granted. An exclusive
enjoyment is guaranteed him for 17 years, 3 but upon the "22.1. Discoveries, scientific theories and math-
expiration of that period, the knowledge of t he invention e l atical methods, and in the case of drugs and medicines,
inures to the people, who are thus enabled to practice it the mere discovery of a new form or new property of a
and profit by its use." known substance which does not result in t he enhance-
ment of the known effi,cacy of that substance, or the mere
8.2 Threefold Purpose and Ultimate Goal discovery of any new property or new use for a known sub-
stance, or the mere use of a known process unless such
The ..Qa.tent I~ has a .threefold pure_o~ "first, ~tent law seeks known process results in a new product that employs at
Jo foster aoci reward invention; second, it promotes ·disclosures of least one new reactant.
~ o stim ulate further invention anttto permit the publli:--fi)
ra t ice the inventi n o t he atent ex ir.e s; lhlrd, tfie stringent "For the purpose of this clause, salts, esters, ethers,
requirements for patent protection se to ensure that ideas in the polymorphs, metabolites, pure form, pa~icle size, isomers,
R.!:Jblic domain remain there for the free use of the public."• - mixtures of isomers, complexes, combinations, ~nd other
derivatives of a known substance shall be considered to
But t he<;:;liimate ciw))of a patent system is to bring n~ designs be the same substance, unless t hey differ significantly in
!Ind technologies into t he public domain through disclosure.•

3See Rep. Act No. 8293. Sec. 54.

-- properties w ith regard to efficacy; (As amended by Rep.
Act No. 9502 otherwise known as "Universally Accessible
Cheaper and Quality Medicines Act of 2008.")
' Pearl & Dean (Phil.), Inc v. S/roemm·/, I11c., G .R. No. 148222, August 15, 2003, citing "22.2. Schemes, rules and methods of performing
Aronson v. Quick Poin1 Pencil Com.. 440 U.S. 251, 262 ( 1979), citin1:1 K~wm:ee Oil Co. v. Bicron mental acts, playing games or doing business, and
Co,p., 416 U.S. 470 (1994), cil~d Amador, Patents. p. 496. programs for computers;
5 /bicl.
60 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER Ill 61
LAW ON PATENT S

"22.3. Methods for treatment of the human or

animal body by surgery or therapy and diagnostic methods
Einstein's application on the ground that his theory of
practiced on the human or animal body. This provision relativity is no_
t patentable. Is the I~O's action correct?
sha ll not apply to products and composit ion for use in any
of these methods; Bar Exam 2010:
" 22.4. Planl varieties or animal breeds or essentially Dr. Nobel discovered a new method of treating Al-
biological process for the production of plants or animals. zheimer's Involving a special method of diagnosing the
This provision shall not apply to microorganisms and non- disease, treating it with a new medicine that has been
biological and microbiological processes. . discovered aftl:!r long experimentat(on and field-test-
ing, and novel mental isometric exercises.· He comes
Provisions under this subsection shall not preclude
to you for advice on how he can have his discoveries
Congress to consider t he enactment of a law providing sui
protected. Can he legally protect n)s ne~ .method of
generis of plant varieties and animal breeds and a system
diagnosis,' t he new medicine, and the new method of
of community intellectual rights protection; t reatment? 1f no, why? If yes, how?
ft22.5. Aesthetic creations; and
"22.6. Anything which is contrary to public order or
morality."
10 ELEMENTS OF PATENT ABILITV

Bar Exam 1989: 10.1 Ele m e nts

X invented a method of improving the tenderness
of meat by injecting an enzyme solution into t he live The law prescribes the fpllowing elements of patentability, viz.:
animal shortly before a slaughter. Is the Invent ion pat- 1. Novelty; \'t~
entable? ·
2. Inventive step; and
Bar Exam 2005:
' . Cezan . worl<s in a car manufacturing company
• 3. ••Industrial applicabil ity.
owned by Joab. Cezar is quite innovative and loves t o 10.2 Nove lty
tln~er with t hirigs. With_ the materl~,ls an~ Psirts of the
car, he was abl~ to invent a gas-saving device that wrn Novelty is defined under Section 23 in relation to Section 24. Section
enable cars to consume less gas. Francis, a co-worker, 1Jsi'mply says t hat an invention shall not b~ considered new if it
~aw how Ceza~ c:r~ated the d~vice a,ad, li~. w1$e, c~~
7 form's part of a prior art.
u~ With a sitrnlar gadget, also using scrap matenals
ar;id spare parts _of the company. Thereafter, Francis Section 24 is the laborious part of the definition as it provides
filet;I an ~eplk:ati?n fof: r,eglstration o(yhfs de:v:ice ~it~ a lengthy definition of what a prior art is. But the provision only says
t Ae Bureau of Patents:- Eighteen months later, tez:ar that there are two classes of prior art.
filed his ·a pplication for the registration of his devjce To the first classification belongs everything that is
v:rt!l) the ·Bureau_of ~at~nts, ls the ~.as-saving devfce available to the t on! in
palentable? Expl:ain. · · · .
e requirement that the thing is already in the public domain
must be present before the filing date or the priority date of the
{; .' . .. r' . application claiming the invention. The terms "filing date" and "priority
Supposing Albert E1nstein were allve today and date" both have technical definitions which l ater will be discussed.
he filed with the Intellectual Property Office (IPO) an
ap,plicatiQn for p 9 tent fo~ his .theory . 0f retsitivlty ex- The second classification includes t hose that are act11allv subject
pressed in the formDla E=mc2 : The IPO disapproved of ap lication for patent registration. Thus, the whole contents of an
~ication or a pa en , u I model, or industrial design registration
62 ESSENTI ALS OF INTELLECTUAL PROPERTY LAW CHAPTER Ill 63
LAW ON PATENTS

t h at are published in accordance with the law, filed or effective in t he or law affords similar privileges to Filipino citizens, shal l
Philippines, with a filing or priority date that is earlier than t he filing be consider ed as filed as of th e date of filing t he foreign
or priority date of the applicat ion are considered prior art, subject t o application : Provided, That: (a) the local application
certain condi t ions. expressly claims priority; (b) it is filed w ithin twelve (12)
months from t he date t he earliest foreign application was
10.3 Filing D ate filed; and (c) a certified copy of the foreign application
toget her with an English translation is filed within six (6)
Understanding "filing date" is very important because Republic Act No . months from t he date of filing in the Philippines ."
8293 follows the "First-to-File" r ule (See Sec. 29) thus abandoning
the " First -to-I n vent" system of Republ ic Act No. 16 5. Priority date therefore comes into play when there is an
application for patent for the same invention t h at was filed in an other
Th e term "filing date" should be understood not in its ordinary country. Following the "First-to-Fi le" rule, in case of two or more
meaning, i.e., the day the application was filed. Rather, it should be application s for patent over the same invent ion, an appl ication with
taken to mean according to what t he law says, i.e., " filing date" is a latter local filing date may still be the preferred appl ication over
accorded only when all the "r equirements" provided under Sect ion 40 a previous local filing date provided that it has an earl ier foreign
are present. (Sec. 41) application assuming of course that the requirements of Section 31
These requirements are: are a ll complied with.

1. An express or implicit indication that a Philippine patent is

10.5 Non-Prejudicial Disclosure
sought; 6
2. I nformation identifying t he applicant; and The element o f novelty requi res t hat the thing is not yet known to
anyone besides the inventor. Once it has been made known t o the
3. Descript ion of the invent ion and one or more claims in • public through disclosures, this requirem ent m ay be in peril.
Filipino or English. •
1 Ther e are disclosures, however, that will not prejudice the
If an y of t hese elem ents is not submitted within t he per iod set , applicat ion, i.e., the applicat ion will not be denied for lack of novelt y.
the application shall be considered wit hdrawn. If the date.Pf fiting These are disclosure of infor mation contained in the application as
cannot be accorded, the applicant sh all be given an oppor'tlylit y long as the disclosure was:
to correct the deficiencies In accordance with the implem e/lting
Regulations. If the application does not contai n all t he elements, the 1. Made dur ing the 1 2 months preceding the filing date or the
filing date should be t hat date when all the elem ents are received. If priority dat e of the application; and
t he deficiencies are not remedied within t he prescribed time limit, the
2. The disclosure was made by any of t he following person:
application shall b e considered wit hdrawn.' '
2.1. The 'in ventor;
10.4 Priority Date 2 .2 . A Patent Office and the inform ation was contai ned
Understanding t he term " prior ity date" is equally important as (a) in another applicat ion filed by t he inventor and
understandi ng "filing date" for the sam e reason, i.e., because o f the should not have been disclosed by the office, or ( b ) in
" Fir st-t o- File" rule. To understand w hat the ter m means, we need t o an applicat ion filed without the knowledge or con sent
'r efer to Section 31: of t he inventor by a third party which obtained the
information directly or indirectly from t he inventor;
or
"Sec. 31. Right of Priority. - An application for patent
filed by any person who has pr eviously applied for the same 2.3. A thi rd party w hich obt ained the inform ation dir ectly
Invention in another country which by t reaty, convention, or indirectly from t he inventor. (Sec. 25)
Considering the concerns and quer ies received by t he O ffice
"This is done through the filing orthe pateat appl ication pursuant to Sec. 32. as to whet her or not the term "third party" m entioned in Section
7 fbid. 25.1 embraces foreign patent offices, including the World Intellectual
 64 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER Ill 65
LAW ON PATENTS

Property Organization (WIPO), Memorandum Circular No. 4, Series references that are sufficiently related to one another and to the
of 2002 was issued on March 19, 2002, with title "Clarification as to pertinent art and to have knowledge of all arts reasonably pertinent
the Meaning of Third Party 1n Section 25.1 , Item (c) of Republic Act to the particular problems with which the inventor was Involved. He
No. 8293 otherwise known as the Intellect ual Property Code of the is presumed also to have had at his disposal the normal means and
Philippines." capacity for routine work and experimentation. 9

It was clarified in this Memorandum Circular that the term " third
party" as used in the phr ase " t hird party which obtained information 10.7 Graham Factors
directly or indirect ly from the inventor" appearing in Section 25.1, The factors a court will look at when determ ining obviousness and
Item (c) of the IP Code, excludes all patent offices as well as the non-obviousness in t he United States were outlined by t heir Supreme
WIPO which publishes patent applications filed through the PCT. court in Graham, et al. v. John Deere Co. of Kansas City, et al., 383
Any disclosur e of information not within the exceptions U.S. 1 (1966) and are commonly referr ed to as the "Graham factors".
specifi ed under Section 25 shall be considered prejudicial taking into The US Supreme Court held that obviousness should be determined
consideration the meaning of a "third party" as defined above. by looking at -
A disclosure that is prejudicial shall have the same adverse effect 1. the scope and content of the prior art;
on novelty whether made before or after a non-prejudicial disclosure. 2. the level of ordinary skill in the art;

10.6 Inventive Step 3. the differences between the claimed invention and the
prior art; and
The term has been defined as: 4. objective evidence of non-obviousness.
"Sec. 26. Inventive Step. - 26.1. An invention In addition, the court outlined examples of factors that show
involves an inventive step if, having regard to prior art, it "objective evidence of no'n-obviousness." They are:
is not obvious to a person skilled In the art at the time of
1. commercial success;
the filing date or priority date of t he application claiming
t he invention." 2. long- felt but unsolved needs; and
" 26.2. I n the case of drugs and medicines, there is 3. failure of others. ,o
no inventive step if t he invention results from the mere
discovery of a new form or new property of a known 10.8 Industrially Applicable
substance which does not result in the enhancement of t he
known efficacy of that substance, or the mere discovery This element of patentability also has a stat utory definition, viz.:
of any new property or new use for a known substance,
or the mere use of a known process unless such· known "Sec. 27. Industrial Applicability. - An invention
process results In a new product that employs at least one that can be produced and used in any industry shall be
new reactant ."8 industrially applicable."

I nventive step t hus connotes that the invention should not be Verily, an invention will be useless if it will be forever confined
obvious not to t he general public but to a " person skilled in th'e art" in the sphere of theories and principles. It has to have some practical
for it to be patented. application for it to be really useful.
A person skilled in the art is presumed to be an ordinary
practitioner aware of what was common general knowledge in the
art at the r elevant date. He is presumed to have knowledge of all

8Thc ~ond paragraph of Sec. 26 has heen added by Rep. Acl No. 9502 otherwise known
9 Rulcs and Regulations on Inventions, Rule 207.
as "Universally Accessible Cheaper and Quahty Medicines Act of2008." •0 source: I, t tp:/len. wi kiped ia.orglwiki/1 nventive_step_and_non-obviousness,
 66 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
CHAPTER III 67
LAW ON PATENTS

11 RIGHT TO A PATENT JiiiL. Bar Exam 2005:

11.1 Ownership of Patent

£:= Ce:zpr works in a car manufacturing company owned
by Joab. ~za(_i~ A1,.1ite lnpovative a~d 19yes t~!iqker
The right to a patent belongs to the inventor. Like any other property, ,v;,l~4t,hlngs, ,Wlt,l'.i :tf:le l'll~~rl~I$ .and ~~~of -~~~'~t, .ti~
patent may be acquired through succession or assignment . The right w1s ~ble to Invent a gas-"saving devicefhat will efia61e
to a patent may also be subject of j oint -ownership as when t wo or cars to consume less gas. -Francis, a ,co-worker, saw
more persons have jointly made an invention. (Sec. 28) ~ow Cezar created the device and likewise, came up
iWith a simil;;ir gadget, also using scrap materials .and
11.2 First-to-FIie Rule spare parts of:' the company'. Thereafter, Francis:, filed
an application for registration of his device with the
As already mentioned, our jurisdiction follows the "First-to-File" rule Bureau of Patents. Eighteen mont hs later, Cezar filed
observed by alm ost all nation in the world. The proponents of t he law his application for t he registration of his device with
deem that the "First-to-Invent" rule adopted by the United States t he. -Burec1u, of Patents
r . .•
was deficient, hence, the need to adopt the new rule. a) ls t he gas-saving device patentable? Ex plain.
The rule is embodied in Section 29 of the law, thus: b) Assuming that it is patentable, who is entitled
" Sec. 29. First-to-File Rufe. - If two (2) or more to the patent? What, If any, is the remedy of the losing
persons have made the invention separately and party.? ~·
independently of each other, the right to the patent shall c) Supposing Joab got wind of the inventions
belong t o t he person who filed an application for such of his employe'f:s and also laid claim to t he patents,
invention, or where two or m ore applications are filed for asserting that Cezar and Francis were using his
the same invention, to the applicant who has the earliest , materials ('Ind_company time In ma~ing ttye de',!4t~es, ,
filing date or, the earliest priority date." will his claim prevail over those of .his empfoyees?
Explain.
Naturally, for t his rule to apply, there must at least be two
persons who have made t he invention separately and independently
of each other. Otherwise, joint-ownership under Section 28 m ay exist
or the situation may call for the application of Section 67, Infra.
X works as a research computer eogineer with the
11.3 Inventions Pursuant to Commission or Employment
Institute of Computer Technology, a government
,Z, In case~ where invention is made pursuant to a' commission, j Qerl~y. Whe1;1 :pot bUS'fi W.i~h his__ ~ ork, but. g1,.1!lng .
lz. the person who commissions the work -shalt be the owner of office. t,ours·, .tie develope!']·a software progr'am·for law
firms t hat will allow effid__ent monitoring of the .cases,
t he patent unless t here was an agreement to the contrary.
(Sec. 30) · which software ·program ls not at ·an related 't.o his
work. Assuming tt,e program Is p,atentab(e, _who .has
When an invention is made by an employee in t he course of his tt)e r ight over; the, pat~nt? t;
employment contract, the patent shall belong to :
A. . X.
(a) The employee, if the inventive activity is not a part of his
B. Institute of Computer Technology.
regular duties even if t he employee uses t he time, facilities
and materials of the employer. C., Neither: X nor the Institute of.Gomputel'. t~chnol-. 11
ogy can .t lalm patent right ove{the inventiQh.
(b) The employer, if the invention Is the result of the
performance of his regularly-assigned duties, unless there D. X and the employer of X will jointly have the
is an agreement, express or im plied, to the contrary. rights over t he patent.
 68 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER Ill 69
LAW ON PATENTS

11 .4 Right of Priority 12. 2 Filing of the Application

m An application for patent filed by any person who has previously

applied for the sam e invention in another country which by
treaty, convention, or law affords similar pr ivileges to Filipino
citizens, shall be considered filed as of the date of filing t he foreign
The patent application shall be in Filipino or English and shall contain
the following:
(a) A request for the grant of a patent;

application; Provided, That: ( a) t he local applicat ion expressly claims (b) A description of the invention ;
priority; (b) it is filed within 12 months from the date the earliest (c) Drawings necessary for the understanding of the invention ;
foreign application was filed; and (c) a certified copy of t he foreign (d) One or more claims; and
application together with an English translation is filed within six
mont hs from the date of fil ing in the Philippines. (Sec. 31) ( e) An abstract.

Thus, if in case there is an application filed in the Philippines No patent may be granted unless the appl ication identifies the
and another filed in another country, and the Philippine applica tion inventor. If the applican t is not the inventor, t he Office m ay require to
was filed earlier than the other application, it is still possible that t he submit said authority. (Sec. 32)
foreign application will be granted by virtue of t his Right of Priority as The request shall contain a petition for t he grant of t he patent,
long as all the requisites are complied with. the name and other data of the applicant, t he inventor and the agent
and th e title of the invention. (Sec. 34)
The application shall disclose the invention in a m anner ¼uffi -
ciently clear a nd complete for it to be carried out by a person skilled
12 PROCEDURE FOR THE GRANT O F PATENT11 in t he art__,_ Where the application concerns a microbiological process
or the product t hereof and involves the use of a microorganism which
12.1 Procedure Outline cannot be sufficient ly disclosed in the application in such a way as to
enable the invention to be carried out by a person skilled in the art,
The procedure for the grant of patent may be summar ized as follows: and such m aterial is not available to the public, the application shall
1. Filing of the application be supplement ed by a deposit of such mater ial with an international
depository i nstitut ion. (Sec. 35)
2. Accordance of the filing date
The application shall contain one or more claims which shall
3. Formality examination define t he matter for which protection is sought. Each claim shall be
clear and concise, and shall be supported by the descripti on. (Sec .
4. Classification and Search
36)
s. Publication of the application
Wherever appropr iate, the claims shall contain:
6. Substantive examination
(a) a statemen t indicating the designation of t he subj ect
7. Grant of the patent12 matter of t he invention and those technical features which
are n ecessary for the definition of the claimed subject
8. Publication upon grant m atter but which, i n combinat ion, are part of the prior art;
9. Issuance of the certificate (b) a characterizing portion preceded by th e expression
"character ized in that" or "characterized by" - stating the
technical featur es which, in combin ation with the features
stated in sub-paragraph (a), It Is desired to protect; and
11 The discussion herein is limited ro what the law provides since this work is inLended for ( c) if the application contains drawings, the technical features
the students and the bar candidates. Patent applicants are advised to secure the help o f palent law mentioned in the claims shall preferably, if the intelligibility
praclitioncrs. For de1ailcd discussion of the rules, visit the Intellectual ?ropcny omce website of the claim can thereby be incr eased, be followed by
www.ioophil.gov,r;,h, refer enc':! signs relating to these features and placed
12
Application may of course be re fused in which case there are aprropriate remedies.
 CHAPTER Ill 71
70 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
LAW ON PATENTS

between parentheses. These reference signs shall not be The fact that a patent has been granted on an application t hat
construed as limiting the claim.• 3 did not comply with the requirement of unity of invention shal l not be
a ground t o cancel the patent. (Sec. 38)
The abstract shall consist of a concise summary of t he disclosure
of t he invent ion as contained in the description, claims and drawings
in pr efera bly not more than 150 words. It must be drafted in a way 12.s Accordance of Filing Dat e
which allows the clear understanding of the technical problem, the
see discussions under 9 .3 Filing Date, supra.
gist of th e solution of that problem through t he invention, and the
principal use or uses of the invention. The abst ract shall merely serve
for t echnical Informa tion. (Sec. 37) 1 2 .6 Formal ity Examination
After the patent application has been accorded a filing date and t he
12 .3 Prohibited Matter r equired fees have been paid on time,•s t he applicant shall comply
wit h the formal requirements speci fied by Section 32 of the law _and
The applicat ion shall not contain: such other r equir ement s of the implementing rules and regulations
1. a statement or other matter contrary to " public order" or wit hin the prescribed period. (Sec. 42)
morality; Such other requirements may relate t o the following :
2. statement disparaging the products or processes of any Content s of t he request for grant of a Philippine patent ;
particular person or other t han t he applicant, or the merits (a)
or validity of applicat ions or patents of any such person. ( b) Priority documents if with claim of convention pr~or~ty
Mere comparison w ith the prior art shall not be considered (i.e., file number, date of filing and country of the pnonty
disparag ing per se; applications);
3. any statement or other matter obviously irrelevant or (c) Proof of authority, if the applicant is not t he inventor;
u nnecessary under the circumstances.
(d) Deed of assignment;
If an applicat ion contains prohibited matter wit hin the m eaning
of t he Rule , the Bureau of Patents shall omit it w hen publishing the (e ) Payment of all fees (e.g., excess claim s);
application, indicating t he place and number of words or drawing (f) Signat ures of t he applicants;
omitt ed.••
(g) Identification of the inventor; and
1 2.4 Unity of I nve ntion (h) Formal dr awings. 16
The applica tion should always r elate to one invent ion only or t o a The rules and regulations provide t hat if the formality
g roup of inventions forming a single general inventive concept. examination reveals that t he drawings were filed after the filing date
of the applicat ion, t he Bureau of Patent shall send a no~ice t_o the
If several independent inventions which do not form a single applicant t hat the draw ings and t he refer ences to t he drawmgs m the
general inventi ve concept are claim ed in one applicat ion, t he Director application shall be deemed deleted unless the applicant . ~equests
may require that t he application be restricted to a single invention. A wit hin two months that the application be gr ant ed a new filing date
later application filed for an invention divided out shall be considered which is t he date on which the drawings were fil ed.
as having been filed on the same day as the first application: Provided,
That t he later application is filed within four months after the If t he formality exam ination reveals that t he drawings were not
requirement to divide becomes fin al, or wit hin such additional tim e, filed t he Bureau of Patents shall require applicant to file t hem wit hin
not exceeding four months, as m ay be granted: Provided, further, two ;,,ont hs and inform t he applicant that the application will be given
T hat each divisional application shall not go beyond the disclosure in a new filing date which is t he date on which the drawings are filed,
t he in it ial application.

13Source: h1tp://www.ipophil.gov.plv "Within one month according to Rules and Regulations on lovcntions, Rule 603.
1 "Rules and Regulations on Invention, Rule 4 12. 16Rulcsaod Rcgulali!)ns on Inventions. Rule 603.
 72 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
CHAPTER lll 73
LAW ON PATENTS

or, if they a re not filed in due time, any re ference to them in the
applicat ion sha ll be deemed deleted.'' 2. publication shall not be earl ier than six months from filing
date; and
12.7 Classification and Search 3. required fee for earl y publication is paid in full.

An applicatio n that has complied with t he formal requirements shall The appl icat ion will not be publisl1ed if it has been fin ally re_fused
be classified and a search conducted to determine the prior art. (Sec. or withdrawn or deemed to be withdra wn before the termination of
43) t he technical preparation for publication.

It is at this poi nt that the patent exa miner shall determine the The application to be published shall contain the bibliographic
requirement of novelty. The Office uses t he i nternation al Patent data, any drawing as filed and the abstract.
Classification for the purpose of classification. 18
The Office shall communicate to the applicant the date and other
The Intellectual Property Search Report is drawn up on the basis information re garding the publication of the application and draw
of the claims, description, and the drawings if there is any: his attention to the period within which the request for substantive
examination must be filed.
(a) Th e sear ch report shall mention those docu ments, available
at the Office at the time of drawing up the report, which After publication of a patent application, any inte'.ested party
may be taken into consideration in assessing novelty and may inspect the application documents filed with the Office.
inventive step of the invention.
The Director General, subject to the approval of the Secretar y
(b) The search r eport shall distinguish between cited of Trade and I ndustry, may prohibit or res trict the publirn~ion of an
documents published before the date of priority claimed, application, if in his ?Pinion, to do so would be preJ~?1c1~I to}he
between such date of priority and the date of filing, and on national security and interests of the Republic of the PhIhppmes.
or after the date of filing.
12.9 Confidenti ality Be fore Publication
(c) The search report shall contain the classification of the
subject matter of the application in accordance with the A patent application, which has not yet been publishe~, and _all r elated
International Patent Classification.
documents, shall not be made available for inspection w ithout t he
(d) The search report may include documents cited in a search consent of the applicant. (Sec. 45)
established in the corresponding foreign applicat ion. ••
12.10 Rights Conferred After Publicat ion
12.8 Pu blication of Patent Application
This is governed by Section 46, herein quoted in full:
The application shall be published in the IPO Gazette toget her with a
search document established by or on behalf of the Office citing any "Sec. 4 6. Rights Conferred by a Patent Application
document or documents that reflect prior art, after the expiration of After Publication. - The applicant shall have all the rights
18 months from the filing date or priority date. of a patent ee under Section 76 against any person ~ho,
without his authorization, exercised any of the rights
However, the applicant may r equest for the early publication of conferred under Section 71 of t his Act in relation to the
his application provided that the:
invention claimed in the published pat ent application, as
1. appl icant submits a written waiver of the: (a) above- if a patent had been granted for t hat invention : Provided,
mentioned 18-month period, and (b) establishment of a That the said person had:
search report;
"46 .1. Actual knowledge that the invention that he
was using was the subject m atter of a pu blished application;
or
l7Rules and R egu lations on Inventions, Rule 602.
18
Rules and Regulations on Inventions, Rule 70 I.
19
Rulcs and R egulations on Jnvemions, Rule 701.J. ,oRules and Regulations on ln\'enlions. Ruic 800(a) as amended by OfflCE ORDER NO.
124. S. 2003, December 17, 2003.
 74 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTl:R Ill 75
LAW ON PATENTS

11
46.2. Received written notice that the invention 76.4. The court may, according to the circumstances
that he was using was the subject matter of a published of the case, awa ,-d damages in a sum above t he amount
application being identified in the said notice by its serial found as actual damages sustained: Provided, That the
number; Provided, That the action may not be filed until award does not exceed three times the amount of such
after the grant of a patent on the published application actual damages.
and within four (4) years from the commission of the acts "76.5. The court may, in its discretion, 0I·der that
compl ained of." the infring ing goods, materials and implements predomi-
nantly used in the infringement be disposed of outside the
This is an important provIsIon since it confers certain rights channels of commerce or destroyed, w ithout compensa-
to the application even before the actual grant of approval to the tion.
application. Note that Section 76 is about remedies against patent
"76.6. Anyone w ho actively induces the infringement
infringement. The remedy, however, is limited to civil action only thus
of a patent or provides the infringer with a component of
precluding any penal sanctions against the supposed infringer.
a patented product or of a product produced because of
Note also the persons liable under Section 46. They should have a patented process knowing it to be especially adopted
either actual knowledge that the invention he was using was a subject for infringing the patented invention and not suitable
matter of a published application or at least received written notice for substantial non-infringing use shal l be liable as a
that the invention he .was using was a subject matter of a published contributory infringer and shall be jointly and severally
application subj ect to certain conditions. liable wit h the infringer.

Section 76 will be discussed under Remedies but is hereunder 12.11 Observation by Third Parties
quoted for ready reference:
Followingche publication 'pf t he patent appl ication, any person may
"Sec. 76. Civil Action for Infringement. - 76.1. The present observations in writing concerning th e patentabil ity of the
making, using, offering for sale, selling, or importing invention. Such observations shall be communicated to the applicant
a patented product or a product obtained directly or who may comment on t hem. The Office shall acknowledge and put
indirectly from a patented process, or the use of a such observations and comment in the file of t l1e application to which
patented process without the authorization of the patentee it relates. (Sec. 47)
constitutes patent infringement: Provided, That this shall
not apply to instances covered by Sections 72.1 and 72.4 12. 12 Substantive Examination
(Limitations of Patent Rights); Section 74 (Use of Invention
by Gove~nment); Section 93.6 (Compulsory Licensing); It is the duty of the applicant to fil e a written request for substantive
and Section 93-A (Pr ocedures on Issuance of a Special examination with in six months from the date of publication under
Compulsory License under the TRIPS Agreement) of this Section 41. The parameters for substantive examination are the
Code. requirements of Sections 21 to 27 and Sections 32 to 39. Payment
of fees which is an integral part of the process will also be a factor in
"76.2. Any patentee, or anyone possessing any the examination. Withdrawal of the request for examination shall be
right, t itle or interest in and to the patented Invention, irrevocable and sl1all not authorize the refund of any fee. (Sec. 48)
whose rights have been infringed, may bring a civil action
before a court of competent jurisdiction, to recover from the 12.13 Law contest
infringer such damages sustained thereby, plus attorney's
fees and other expenses of lit igation, and to secure an An application is prosecuted ex parte by the applicant; that is, the
injunction for the protection of his rights. proceedings are like a lawsuit in which there is a plai ntiff, but no
defendant, the cour t itself acting as the adverse par ty.ii
"76.3. If t he damages are inadequate or cannot
be readily ascertained with reasonable certainty, the
court may award by way of damages a sum equivalent to
reasonable roya lty. " Rules and Regulations o n Inventions, Rule 900.
 76 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPfER Ill 77
LAW ON PATENTS

An ex parte proceeding in the Bureau of Patents is a law contest 12, 15 Amendment of Application
between the Examiner, represent ing t he public and trying to give
the inventor the least possible monopoly in return for his disclosure, An applicant may amend the patent application during the examina-
and t he applicant or his attorney t rying to get as much monopoly as tion provided that such amendment will not include new matter
possible. 12 outside the scope of the disclosure contained in t he applicat ion as
filed. (Sec. 49)
The Bureau, represented by the Examiner, is not supposed to
look after the interests of an applicant. The Examiners are charged After final rejection or action, amendments may be made
with the protection of the interest of t l,e public, and hence must be canceling claims or complying wit h any requirement of form which
vigilant to see that no patent Issues for subject matter which is not has been made, and amendments pr esenting rejected claims in
patentable, and is already disclosed in prior inventions and accessible better form for consideration on appeal may be admitted; but
to t he public at larg e. 21 any proceedings relative thereto, shall not operate to relieve the
application from its condition as subj ect to appeal or to save it from
being considered wit hdrawn.
12. 14 Case of " Tough Love"
Should amendments touching t he merits of the application be
The positive value of preliminary adverse actions of the Examiner presented after final rejection, or after appeal has been taken, or
should be fully appreciated by the applicant and his attorney. A hard- when such amendment might not otherwise be proper, they may be
~ought application will produce a patent much more likely to stand admitted upon a showing of good and sufficient reasons why they are
~n court than a patent which has slid through the Bureau easily, This necessary and were not earlier presented .27
1s so for two reasons: first, the rejections have given the applicant
or his attorney suggestions of strengthening amendments so that
his claims have been made infinitely less vulnerable than would be 1 2.16 Grant of Patent
ot her wise possible; secondly, every point raised by the Examiner and The grant of patent Is the ,ultimate objective of the patent applicati on.
fi nally decid ed by the Bureau In favor of t he applicant will give him a
Patent of course is granted if the applicat ion meets the requirements
prima facie st anding on that point in court. The Office is empowered
of bot h the law and the implementing rules and regulations, including
by law to pass upon applications for patents and, because of the
timely payment of fees. (Sec. 50 )
authority vested in it, Its decisions with respect to the grant ing of an
application or on any point connected with it will be presumed to be A patent shall take effect on t he date of the publication of the
correct by the courts.2• grant of t he patent in the IPO Gazette. (Sec. 50.3)
. A r ejection by the Examiner is never to be taken literally. An
apphc~nt s_ho_uld re_m ember t hat the Examiner may not be actually 12.17 Refusal of the Application
reJectrng hrs rnventron. The Examiner may in fact be quite prepared
to admit the invention over t he references to the prior art. He may be It is of course possible also that an application will be refu sed
merely rej ecting the applicant's claims, that is, the way in which the considering that grant of patent is not a matter of right.
applicant has expressed his invention .2s In case of refusal or denial of t he application, the r emedy is
An Examiner will frequently make a blanket rej ection on some t o appeal the decision of the examiner to t he Director of Bureau of
r eference to the prior art just to be helpf ul to the applicant - just Patents. (Sec. 51)
to give t he applicant a chance to explain away some reference and The Rules provide that final decisions of the Patent Examiner
make a change in his claims to avoid It, rather t han to wait until the who has original jurisdiction over all applications shall be subject
patent is granted and is involved in a litigation, when It may be too to appeal to t he Director of Patents within four months from the
late to m ake t he explanation.26
mailing date of t he notice of the decision. As r egards information
on any specific technical or scientific matter pending final action by
22 Rules and Regulations on lnvemions. Rule 90 I. the Bureau, the applicant may, upon payment of a fee, r equest in
13Ru les and Regulations on lnvenLions. Rule 902. w riting for a conference with the Examiner specifying the query he
2•Rulcs and Regulations on Inventions, Rule 903.
25Rules and Regulations on Tnvenlions, Ruic 904.
l 6 /bid. "Rules and Regulations on Inventions, Rule 917,
78 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CH APTER Il l 79
LAW ON PATCNTS

would want to propound to the Examiner but in respect of which the

Examiner has the discr etion to grant the request or choose to reply
Facts:
to the query in writing. 28
The case arose froh1 a complaint for patent infrln'g ement
12.18 Publication of Grant of Patent filed by Respondent Pfizer against Petitioner Phil Pharmawealth
wit h the Bureau of Legal Affairs (BLA). The Complaint alleged
The grant of the patent together with other related information shall -?mong ot hers:
be published in the IPO Gazette within the time prescribed by t h e 1. Pfizer is the registered owner of Phllippine Letter s
Regulations. Patent No. 21116 (the "Patent'') which was Issued on
Any interested party may inspect t he complete descriptions, July 16, 1987.
claims, and drawings of the patent on file with the Office. (Sec. 52) 2. Tfle patent is valid until July 16, 2004. '

12.19 Issuance of the Certificate or Letters Patent 3. Patent No. 21116 covers ampicillin sodium/sulbactam
sodium (hereafter "Sulbactam Ampicillin").
The patent shall be issued In the name of the Republic of the Philip - 4 . S~metime in January and February ·2003, com-
pines under the seal of the Office and shall be signed by the Director, plainants came to know that respondent [herein
and registered together wi th the description, claims, and drawings, if petitioner ] submitted bids for the supply ofSulbactam
any, in books and records of the Office. (Sec. 53) Ampicillin to several hospitajs without the corisent of
complainants and in violation of the complainants'
12.20 Term of Patent intellectual property rights.
...
The term of a patent shall be 20 years from the filing date of the s. Pfizer wrote ·:,the above hospitals and de,m anded
application . (Sec. 54) that the latter. immediately .cease and desist from
accepting bids for the supply [of] Sulbactam Ampicillin
This is not absolute however since a patent shall cease to be in or awardi ng the same to other companies.
force and effect if any prescribed annual fees therefor is not paid within
th e prescribed t ime or if t he patent is cancelled in accordance wit h . 6. f?hil Pharmawealth and the hospitals named willfully
the provisions of the law and implementing rules and regulations. 29 Ignored complainants' j ust, plain and valid demands,
refused to comply therewith and continued to infringe
After the expiration of the patent, the monopoly ceases to exist the Patent, all to the damage and prejudice of
and t he subject matter of patent becomes part of public domain. co.mplainants. · ;
7. As registered owner of the Patent, Pfizer is entitled to
Rrotect ion under Section 76 Qf the IP Code.
ILLUSTRATIVE CASE 3-1
. The tase eveQJu'ally reached the Court 'of Appeals. Among
.others, the Pet itioner (Phil. Pharmawealth) argued that
End Of Days Pfizer's exclusive right to monopolize the subject matter- of
the patent exists qnly within the ter-rn,of the patent. Petitioner
Jitle: ttaims that since respondents' patent expirecf on July · l6,
Phil. Pharmawealth, Inc. v. Pfizer, Inc. and Pfizer (Phil.), Inc., 2004, the latter no longer possess any right of monopoly over
G.R.No. 167715, November17,2010 the substance.

·1ssue:
Whether Pfizer still holds monopoly over the substance
by virtue of their _issued Patent over the same.
28
Rulcs nod Regulations on fnvenLions, Rule 905.
29
Rulcs and Regulations on lnvcnLions, Ruic I 100.
 80 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER Il l 81
LAW ON PATENTS

Is released for circulation on January 15, 1999, t hen the first annual
fee shall be due and payable on January 15, 2003. 30
If any annual fee is not paid within the prescribed t ime, the
application shall be deemed withdrawn or the patent considered as
lapsed from the day following t he expiration of t he period within which
t he annua l fees were due. A notice that the appl ication is deemed
w ithdrawn or the lapse of a p atent for non-payment of any annual fee
shall be published in the IPO Gazette and t he lapse sh all be recorded
in t he appropriate r egister of the Office. (Sec. 55.2)
A grace period of six months from the due dat e shall be granted
for the payment of the annual fee, upon payment of the prescribed
surcharge for delayed payment . (Sec. 55. 3)

12.22 Surr ender of Patent

The owner of the patent, with the consent of all persons having grants
or licenses or other right, title or interest in and to t he patent and t he
invention covered thereby, which have been recorded in the Office,
m ay surrender his patent or any claim or claims forming part ther eof
t o the Office for cancellat ion.
A per son may give 'r.iot ice to the Office of his opposit ion to t h e
surr ender of a patent under this section, and if he does so, t he Bureau
shall not ify t he proprietor of t he patent and determine the question.
If t he Office is satisfied that the patent may properly be
surr endered, he may accept the offer and, as from t h e day when
notice of his acceptance is published in the IPO Gazette, the patent
shall cease to have effect, but no action for infringem ent shall l ie
and no right compensat ion shall accrue for any use of the patented
invention before that day for the services of the government.

12.23 Correction of Mistake s

12.21 Annual Fees The Director of Patent has the power to correct, without fee, a ny
m istake in a patent incurr ed t hrough the fault of the Office when
The_fir~t annual fee on a patent shall be due and payable on the clearly disclosed i n the records thereof, to make t he patent conform
e x p1rat 1on of four years from t he date t he application is published to t h e records. (Sec. 57)
and on each subsequent anniversa ry of such date. Payment may b~ This is done upon written pet ition of t he patent ee or assignee
made w ithin three months_ befor e t he due date. The obligat ion to pay of record and upon tender t o the Office of t he copy of the patent
t h e annual fees shall terminate should the applicat ion be withdra wn issued. 31
r efused, or cancelled. (Sec. 55) '

The date application is published for purposes of t he rule is t he

d at e when th e IPO Gazette containing the application is released for
30Rules and Regulations 011 Inventions, Ru le I 102.
c irculat ion. For example, if t he IPO Gazette containing the application
31Rules and Regulations on Inventions, Rule 1207.
 82 ESSENTIAi S Of· INT!:l.LECTUAL PRO PERTY I 1\W 83
CHAPTER llt
LAW 01\1 P.L\TE\.JT<,,

Also, on request of any interested person dnd pav111ent of the Tile 91 o u,itb for cancellation a,·e: ti·,,. fol lov'✓ i ng:
prescri bed fee, the Director is authorized to correr:i- anv mistake ;11 a
patent of a formal a nd clerical nature, nol incun cd lh: mwl1 I.tie fault (a) The mve11tIon is not n ew 01 patentcibl-::;
of the Office. (Sec. 58) - Tl1e patent does not disclose the invention in a manner
(b)
sufficiently clear and complete For it to be carried out by
12.24 Changes in Patents any pet·son ski lled in the art; or
(c) The patent is contrary to public order or morality.
The owner of a patent shall have the right to request the Bu1·eau to
make the changes i n the patent in order to: Where the grounds for cancellation relate to sorne of the claims
or parts of the claim, cancellation may be effected to su_ch extent
(a) · Limit t he extent of the protection conferred by it ;
only. (Sec. 61)
(b) Co1Tect obvious mistakes or to correct clerica l errors; and
(c) Correct m istakes or errors, other than t hose referred to 13,2 Petition for Cancellation
in letter (b), m ade in good fait h, provided that where The petition for cancellation shall be in writ ing, verified by the
the change would result in a broadening of the extent of petitioner or by any person in his behalf who knows t he facts, specify
protection conferred by the patent, no r equest may be the grounds upon w hich it is based, include a statement of the facts to
made after the expirat ion of two years from the grnnt of be r elied upon, and filed with the Office. Copies of printecl publications
a ~atent and t_he change shall not affect tl1e rights of any or ot patents of otl1er countries, and other supporting documents
t hird party wh ich has relied on t he patent, as published . mentioned in the petition shall be attached thereto, together wit h the
No change i n the patent shall be permitted under this section, translation thereof in English, if not in English language. (Sec. 62)
where the change would result in the disclosure contained in t he
patent going beyond the disclosure contained in the application filed . 13.3 Jurisdiction and Notice of Hearing
(Sec. 59)
The j urisdiction to hear the petition for cancellation is with t he Director
of Legal Affairs. (Sec. 10.1)
12.2 5 Form and Publication of Ame ndment
Upon filing of a petition for cancellation, tl1e Director of Legal
An an:i~ndment or correction of a patent shall be accom plished by Affairs shall forthw ith serve notice of t he filing tl1ereof upon the
a certificate of _such am~ndment or corr ection, authenticated by the patentee and all per sons having grants or licenses, or any other
seal of th e Office a nd signed by the Director, which ceItificate shall right, title or inte1·est in and to the patent and the i nvention covered
be attached to t he patent. Notice of such amendment or correction t her.eby, as appears of record in the Office, and of notice of the date
shall be published i n t he IPO Gazette and copies of the patent kept of hearing thereon such persons and the petitioner. Notice of t he filing
or furnished by t he Office shall include a copy of tM certificate of of t he petit ion shall be published in the IPO Gazette. (Sec. 63)
amendment or correction. (Sec. 60)
In cases involving highly technical issues, on motion of any
party, t he Director of Legal Affairs may orcler that the petition be
heard and decided by a Committee composed of the Director of Legal
Affairs as chairman and two members who have the experience or
13 CANCELLATWN OF PATENT expertise in t he Field of technology to which the patent sought to be
cancelled relates. The decision of the Committee shall be appealable
13 . 1 Grounds to the Director General. (Sec. 64)

rf:£1 Patent registrations iss11ed b\r the Intellectual Property Office 13.4 Cancellation of the Patent
lD may be cancelled. Any interested person may, upon pavrn ent If the Committee finds that a case for cancellation has been proven,
of the required fee, petition to cancel the patent or any claim
thereof, or paIts of the claim. it shall order the patent or any specified claim or claims ther eof
cancelled .
 84 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER Ill 85
LAW ON PATENTS

If the Comm ittee finds that, taking into consideration the amend- 14.2 True and Actual Inventor
ment made by the patentee during the cancellation proceedings, the
patent and the invention to which it relates meet the requiremen t of
the law, it may decide to maintain the patent as amended provided
that the fee for printing of a new patent is paid within the time limit
prescribed in the implementing rules and regulations.
m If a person, who was deprived of the patent without his con_sent
or through fraud is declared by final court order or dec1s 1on
to be the true and actual inventor, the court shall order for
his substitution as patentee, or at t he option of the t'.·ue .invento:,
cancel the patent, and award actual and other damages 111 his favor if
If the fee for the printing of a new patent is not paid in due time,
the patent should be revoked. warranted by the circumstances. (Sec. 68)

If the patent is amended under Subsection 65.2, the Bureau 14.3 Publication of the Court Order
shall, at the same time as it publishes the mention of the cancellation
decision, publish the abstract, representative claims and drawings In both instances referred above, the court shall f~rnish _the Office
indicating clearly what the amendments consist of. (Sec. 65) a copy of the order or decision, which shall be published 1n the_ I_PO
Gazette within three months from the date such order or dec1s1on
13.5 Effect o f Ca n cella tion of Pat e nt or Cla im became final and executory, and shall be recorded in the register of
the Office. (Sec. 69)
The rights conferred by the patent or any specified claim or claims
cancelled shall terminate. The rule is that t he decision or order to 14 .4 Time to File Actio n in Court
cancel the patent or claim by the Director of Legal Affairs shall be
immediately executory even pending appeal unless this decision is The actions indicated in Sections 67 and 68 shall be file~ within _one
restrained by the Director General. Notice of the cancellation shall be year from the date of publication made in accordance with Sections
published in the IPO Gazette. (Sec. 66) 44 and 51, respectively. (Sec. 70)
'

14 R EMEDIES OF PERSONS D EPRIVED OF PATENT OWNERS HIP 15 R EMEDiES AGAINST I NFRINGEMENT

14. 1 Pe rson Declare d by Fina l Court Orde r a s Having Right t o 15. 1 Rig hts Co nferred by Pa t ent
the Pat e nt

If a person referred to in Section 29 32 other t han the applicant, is

declared by final court order or decision as having the right to t he
[t] The rights conferred by patent depends on whether the subject
matter is a product or a process.

pat ent, such person m ay, within three months after t tie decision has If a product, the patent owner shall have t~e exclusive _right t o
become final: restrain, prohibit and prevent any unauthorized per:on or entity from
making, using, offering for sale, selling or importing that product.
(a) Prosecute the application as his own application in place of (Sec. 71 .l[a] )
the applicant;
If a process, the patent owner shall h ave the exclusive _right to
(b) File a new patent application in respect of the same restrain, prevent or prohibit any unauthorized P:rso_n or :nt1ty fr?m.
invention; using the process, and from manufacturing, dealing 1~, usrn_g, selling
(c) Request that t he application be refused; or or offering for sale, or importing any product obtained directly or
indir ectly from such process. (Sec. 71.l[bJ)
(d) Seek cancellation of the patent, if one has already been
issued. (Sec. 67) The patent thus is broader when its subject matter is a process
since the owner does not only control the use of the process but also
products obtained from such process, even those that are obtained
2 indirectly from the same process.
3 The "First-to-File" Rule section.
86 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER Ill 87
LAW O N PATENTS

But regardless whether the patent is over a product or a process,

the patent o wners shall have the right to assign it , transfer it by Jiiil_ Bar Exam 1991:
s uccession, or conclude licensing contracts for the same. ( Sec. 71.2) .:= Fen;Jie is a patent owner of a certain invention. He
discovered that his invention is being Infringed by Jo-
15. 2 Civil Action for Infringement hann. (1) What are the remedies available to Ferdie
against Johann.

m Th e making, using, offering for sale, selling, or importing a

patented product or a product obtained directly or indi rectly
from a patented process, or the use of a patented process
without the authorization of the patentee constitutes patent
15.3 I nfringe m e nt Action by a Foreign N ational
infrin gement. Republic Act No. 9502 otherwise known as "Universally
Accessible Cheaper and Quality Medicines Act of 2008" however Any foreign national or j uridical entity who meets t he r equir ement s
added a provision that such rule will not apply to instances covered of Section 3 and not engaged in business in t he Philippin es, to which
by Sections 72.1 and 72.4 (Lim itations of Patent Rights); Section a paten t has been granted or assigned under this Act, may bring an
74 (Use of I nvention by Government); Section 93.6 (Compulsory action for infringement of patent, whether or not it is licensed to do
Licensing); and Section 93-A (Procedures on Issuance of a Special business in the Philippines under existing law. (Sec. 77)
Compulsory License under the TRI PS Agreement) of the Intellectual
Property Code. Section 3 provides that:
Any patentee, or anyone possessin g any right, tit le or interest In f "Sec. 3. International Conventions and Reciprocity.
and to the patented invention, wh ose rights have been infringed, may - Any person wh o is a national or who is domiciled or has
brin g a civil action before a court of competent jurisdiction, to recover a real and effective industrial establishment in a count ry
from t he i nfringe r such damages sustained t hereby, plus attorn ey's which is a party to any convention, treaty or agreement
f ees and other expenses of litigation, and to secure an inj unction for relating to intellectual property rights or the repression of
the protection of his rights. unfair competition, to which the Philippines is also a party,
If the damages are inadequate or cannot be rea dily ascertai ned or ext ends reci procal rights to nationals of the Philippines
with reasonable certainty, t he court may award by way of damages a by law, shall be entitled to benefits to the extent necessa ry
s u m equiv alent t o reasonable royal ty. to give effect to any provision of such convention, treaty
or reciprocal law, in addition to the rights to which an y
The court m ay, accordi ng to the circumstances of the case, owner of an intellectual property right is otherwise entitled
a ward damages in a sum above the amount found as actual damages by this Act."
s u st ai ned provid ed that the awar d does not exceed t hree times t he
a mount of such actual damages. 15.4 Presumptions i n Pa te nt Infringem ent Actio n s
The court m ay, In its discretion, order that the infringing goods,
If the subject matter of a patent is a process for obtaining a product,
m aterials a nd implements predomi nantly used in the infringement be
any ident ical product shall be presumed to have been obtained
d isposed o f outside the channels of commerce or destroyed, with out
through the use of th e patented process if the product is new or
compensat ion.
t here is substantial likelihood that t he identical product was made
Anyone wh o actively induces t he infringement of a patent or by the process and the owner of the patent has been una ble despite
provid es t he infri nger with a component of a patented product or reasonable efforts, to det ermine t he process actually used. In ordering
of a pr oduct produced because of a patented process knowing it the defendant to prove that the process to obtain the identical
t o be especially adopted for infringing t he patented invention and product Is different from t he patented process, t he court shall adopt
n ot suit able for substantial non-infring ing use shall be liable as a measures to protect, as far as practicable, his manufacturing and
con tri butory infringer and shall be jointly and severally liable wi t h t he business secrets. (Sec. 78)
infringer. (Sec. 76)
 CHAPTER Ill 89
88 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
LAW ON PATENTS

Another important presumption is provided under Section 80, than One hundred thousand pesos (Pl00,000.00) but no t more than
viz.: Three hundred thousand pesos (P300,000.00), at t he discretion of
the court. The criminal act ion herein provided shall prescribe in three
"Sec. 80. Damages; Requirement of Notice. - Dam- years from date of the commission of the cr ime. (Sec. 84)
ages cannot be recovered for acts of infringement com-
mitted before the infringer had known; or had reasonable The law is clear therefore t hat criminal liabilit y only inures when
grounds t o know of t he patent. It is presumed that the in· t he infringement is repeated.
fringer had known of the patent if on the patented product,
or on the container or package in which the article is sup·
plied to the public, or on the advertising material relating
t o the pat ented produ ct or process, are placed the words
'Philippine Patent' with t he number of the patent." 16 LIMITATIONS ON PATENT R IGHTS

m
This provision thus creates a presumpt ion t hat the infringer had
16. 1 Acts Allowed Even Without Author ization
known the existence of t he patent and ther efore provides valuable
assistance to the patent owner in his action against the person being Like oth er rights, paten t has its limitations.
sued for infringement.

15.5 Prescription in Action for Infringemen t The owner of a patent has no righ t to prevent t hird parties
from performing, without his authorization, the acts r eferred to in

m No damages can be recovered for acts o f infringem ent

committed m ore than four years before the instit ution of the
action for infringement. (Sec. 79)
Sect ion 72, as amended by Republic Act No. 9502 otherwise known
·as " Universally Accessible Ch eaper and Quality Medicine Act of 2008,"
to wit:
1. Using a patente'd product which has been put on the m arket
15.6 Defenses in Action for Infringement
in th e Philippines by the owner of the product, or with his

m In an action for infringem ent, the defendant, in addition to

other def enses available to him, may show t he invalidity of the
patent, or any claim thereof, on any of t he groun ds on which
a petition of can cellation can be brought under Section 61. (Sec. 81)
express consent, i nsofar as such use is performed after
that product h as been so put on the said market: Provided,
That, with regard to drugs and medicines, the limitation on
patent rights sh all apply after a dr ug or medicine has been
introduced in the Philippines or anywhere else in the world
by the patent owner, or by any party authori zed to use the
ar, Exam 1991: 1 . . invention : Provided, further , That the right to import t he
dr ugs and medicines contemplated in t his section shall be
rdie is a patent owner of a certain invention. H available to any government agency or any private t hir d
scover ed_. that hJs lnv~qtion r~ being Infringed by Jo
party;
nn. ( 1) Wh at are the remedies avai lable to Ferdie
ainst Johann. (2) I f you were t he lawyer: o f Johc;1nn 2. Where the act is done pr ivately and on a non-commercial
the lnfrirwem~nt suit~, w hat are t l;le defens~s· tha t scale or for a n on-commercial purpose: Provided, That It
ur d ient can assert? does not significantly prejudice the economic interests of
the owner of the patent ;
15.7 Criminal Action for Infringeme nt 3. Wher e the act consists of making or using exclusively for
exper imental use of the invention for scientifi c purposes
I f infr ingement is repeated by the infringer or by anyone in conni- or educational purposes and such other activit ies directly
vance w ith him after finality of the judgment of the court against related to such scientific or educat ional experimental use;
the infringer, the offenders shall, w it hout pr ejudice to the institution
4. In the case of drugs and medicines, where the act includes
o f a civil action for damages, be criminally liable t herefor and, upon
testing, using, making or selling th e invention including any
conviction, shall suffer imprisonment for the period o f not less than
data related thereto, solely for purposes reason ably related
si x months but not m ore than three years and/or a fine of not less
 90 ESSENTIALS OF INTE'I LECTUAL PROPERTY LAW CHAPTER Il l 91
LAW ON PATENTS

to t he development and submission of information and

Issuance of approvals by government regulatory agencies The raiding team seized several imported medicines, i·ncluding
required under any law of the Philippines or of another Augmentin (375mg.) tablets, Orbenin (S00mg.) capsules,
country that regulates the manufacture, construction, use Amoxil (250mg.) capsules and Ampiclox (S00mg.).
or sa le of any product : Provided, That, in order to protect
the data subm itted by the original patent holder from unfair l t appears that Roma Drug is one of six drugstores Which
. · were ratded on Qraround the same t ime upon the··request
commercial use provided in Article 39.3 of the Agreement
on Trade- Related Aspects of Intellect ual Property Rights of SmithKline Beecham Research Limited (SmithKline), a
duly registered corporation which i s the local distributor of
(TRI PS Agreement), the Intellectual Property Office, in
pharmaceutical pr9ducts manufact ured by its parent London-
consultation with the appropriate government agencies,
based corporation. ·
shall issue the appropriate rules and regulations necessary . . . \ '

therein not later t han one hundred t wenty (120 ) days after · The NBI subsequently filed a complaint against Rodriguez for
the enact ment of this law; violat ion of Section 4 (in relation to Sections 3 and 5) of
Republic Act No. 8203, also known as the Special Law on
5. Where the act consists of t he preparation for individual
Counterfeit Drug,s (SLCD), with the Office of the Provincial
cases, in a pharmacy or by a medical professional, of a
Prosecutor ii') San Fernando, Pampanga. 1he section -'p rohibit:s
medicine in accordance with a medical prescription or acts
the sale of counterfeit drugs, which under Section 3(b)(3),
concerning the medicine so prepared ; and
includes "an unregistered imported drug product ." The term
6. Where the invention is used in any ship vessel aircraft "unregistered" signifies the lack of registration with the
or land vehicle of any other country ent~ring th; territory 8ureau of Patent,. Trademark and Technology Transfer of a
1 1 ,, •, 1,·I of t he Philippines temporarily or accidentally: Provided, trademark, trade name or ot her identification mark of a drug
', r That such invention is used exclusively for the needs of the lr,i the name of a natural or juridical person, the process of
k l ship, vessel, aircraft, or land vehicle and not used for the which rs governed 'µnder Part III of the Intellectual Property
manufacturing of anything to be sold within the Philippines. Code. .
' '
In this case, there is no doubt that 'the subject seize'd drugs·
are identical in content with their Philippine-registered
counterparts. There is no claim that they were adulterated
In any way or mislabeled at least. Their classificat ion as
"~ouri\::e\feit". is based solely on the fa:ct that tl)ey were.,
import-ed from abroad and not purchased from the Philippine- ·
registered owner of the patent or t rademark of t he drugs.

Roma Drug and , Romeo Rodriguez, as Proprietor Romaof Rodriguez challenged the constitutionality of the: SLCD.
Howev~r" AsslstanL ProvlnciaJ Prosec~tgf Celerina Pinedac>
· Orug.~v_..<Tbe Regional,, Trial: ®oLlrt of Gµ 9 gul:l, . .Parrjpanga,
sklrtecf the chall~nge and Issued a Resolution dated 17 ·
-. .The Provrncial Prosecutor of Pampangc:1;'-B ureau of Food and
August 2001 recommending that Rodriguez be charged with
Drugs (BfAD) and Glaxo SmftbKline, G.R: No. 14990:Z, April
i6 1 2009 . . - violation of Section 4(a) of the SLCD. The recommendation
., was approved by Provincial Prosecutor Jesus Y. Manarang
F'ai:ts: .. · · ·approved the recommendatiotL . , , . ·
f. ' '11

On 14 · August 2000, a team composed of the National The petitioner t hen filed Petition for Prohibition questing the
Bureau of I nvestigation (NBI) operat ives and inspect-ors of RTC-Guagua, Pampanga and the Provincial Prosecutor to
the Bureau of Food and Drugs (BFAD) conducte~ a raid on desist from further prosecu ting Rodriguez, and t hat Sections
· petitioner Roma 9 rug. . · .· ' 3(b)(3), 4 and 5 of t he SL..,CD be declared unconstitutional.

. The raid was conducted pursuant to a se~tch warrant issued Glaxo Smit hKline and the Office of the Solicitor General
by the Regional Trial Court (RTC), Branch 57, Angeles City. (OSG) have opposed the petition, the latter In behalf of
92 ESSENTIALS OF I NTELI. ECTUAL PROPERTY LAW
CHAPTER III 93
LAW ON PATENTS

· nt$ RTG; ProvinciaLProsecut~r and Burea_y of

.. . The ,Off,jce of ttie $oHdtor Oeneral · . h i!fppines 'is further confirmed by 't he· "Implementing Ryles:
·. •f ollcy wi · · · · · ct No . .9502'' pr:omulgatec;l on 4 . . er 2008. ··
. . . ~- .: ~ proviskins t~e~eof read: .
\. . . . :· .,. · .t . , .. ,..

,.-9.
..,- Limitations
( ·
•,
. . a pateN - has "n
:'from .performin ' . ' '.' '
·s referred j to
rated hereund '
.Int roduction .
,, Else in t he .
··ere

ing .a paten.ted pro h . t.

.· markel in the Ptiih· pine:;; . y, e 6Wr\~r of t t:iit
~' ·cir with h'i s express··cor\~eht, inspfiir as suc;p
per.formed after ttiat product'has oeen S'O put ..
id market: Provld'ed,] Jflat; With\egar,d to dr
edicines, the H[Tlitation oi:, pqteht ri ghts'•s
\i a drug or
medicine has ~yen introduce
rnes or anywhere ~lse iJTthe woi·ld by
y -Rarty a1,1t~orized to
. . ]1pt the righ t
mplated,in t
' ' .

~n the two acts, t he

the prior Jaw yields to
-; . ·• . '
94 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
r CHAPTER !IT
LAW ON PATENTS
95

I rreconcilable inconsistency between two laws embracing C. Yes, since X is the first to register his devi.ce for
t he sarne $Ubject may exist when the later law nullifies the pat ent registration.
reason or purpose of the earlier act, so t hat the latter loses D. Yes, since Y unwittingly used X's pat ented inven-
all meaning and function. L egis posteribrs pr/ores con(radas
tion.
abrogant.
For' the reasons "above-stated, the prosecvtion .of petiti,oner
is no longer warrant,!ad and the quested ·writ of
prohibition
should accordingly be issued. 16.3 Use of Invention by Government

The Government as a general rule is bound to respect t he

16.2 Prior User [t] patent . This is so because patent is a property in itself and it is
guaranteed in our Constitution that no one shall be deprived of
life, liberty or property without due process of law. 33
,Z, Any user, who, in good faith was using t he invention or has
ID underta_ken serio.us preparations to use the invention In his As an exception, a Government agency or third person autho-
enterprise or business, before the filing date or priority date of rized by the Government may exploit the invention even without
the application on which a patent is granted, shall have t he right to agreement of the patent owner wliere:
continue the use t hereof as envisaged in such preparations within the
t erritor y where the patent produces its effect. (Sec. 73.1) 1. The public interest, in particular, national security, nutrition ,
health or the development of other sectors, as determined
To protect the patent owner, however, t he prior user may only by the appr~prlate agency of the government, so req uires;
t ransfer or assign this right if it is transferred or assigned together or
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. 2. A judicial or administrative body has determined that the
(Sec. 7 3.2) manner of exploitation, by the owner of the patent or his
license, is anti-compet itive. (Sec. 74)
In other words, the prior user cannot assign the right to use t he
patented product or process without giving up entirely his enterprise. Additional exceptions were provided by Republic Act No. 9502
otherwise known as the "Universally Accessible Cheaper and Quality
Medicines Act" purposely to bring down the price of medicines in the
country. Section 74 thus has been amended to read as follows:
MC:Q Alert: 2010 Bar
X invented a oevice whlth, throogti the use of noise, "Sec. 74. Use of Invent ion by Government. - 74. 1.
can recharge a cellphone battery. He apRliecl for ang, A Government agency or third person authorized by t he
was granted a'• patlint on tiis de\tice, effectlve wfthin Government may exploit the invention even without
the Philippine~. As it tur.ns out, a year bE?fore tl'le grant agreement of the patent owner where:
a
O'f X's patent,· Y, also an inventor, fnvented similar " (a) The public interest , in particular, national
d,evice whicl1 h.e used if) his.. cellp/lone busines.S In. Ma- security, nutrition, health or the development of other
nila. But X files ari Injunctive suit against Y to stop sectors, as determined by the appropria te agency of
hirn fr.o m using the d.evjce on the ground of patent the government, so requires; or
infringement. Will the suit prosper?
A. No, since the correct remedy for X Is a civil action "(b) A j udicial or administrative body has
been determined that the manner of exploitat ion,
for damages• .
B. No, si_n ce Y is a prior user In good faith •.
331987 Philippine Constituuon, Art. III. Sec. I.
96 ESSENT IALS OF INTELLECTUAL PROPERTY LAW
CHAPTER 1ll 97
LAW ON PATENTS

by the owner of the patent or his licensee, is anti-

competitive; or "(g) Tl1e existence of a national emer gency or
other circumstances of extreme urgency, referred
"(c) I n the case of drugs and medicines, t here to under Section 74 .l(c), sha ll be subject to the
is a nat ional emergency or other circumstance of determination of the President of the Philippines for
extreme urgency requiring the use of the invention; the purpose of determining t he need for such use
or or other exploitation, which shall be immediately
executor)'.
" (d) I n the case of drugs and medicines, t here
is public non-commercia l use of the patent by the "74.3. All cases ari sing from the i mplementation of
patentee, without satisfactory reason; or this provision shall be cognizable by cou rts with appropriate
j urisdiction provided by law.
"( e) In the case of drugs and medicines, the
demand for the patented article in the Philippines "No court, except t he Supreme Court of the Philip-
Is not being met to an adequate extent and on pines, shall issue any temporary restraining order or pre-
reasonable terms, as determ ined by the Secretary of liminary inj unction or such other provisional remedies that
the Department of Health." w ill pr event its immediate execution.
"74.2. Unless otherwise provided herein, the use "74.4. The Intellectual Property Office (IPO), in con-
by t he Government, or third person authorized by t he su ltation with the appropriate government agencies, shall
Government shall be subj ect, where applicable, to the issue the appropriat e implementing rules and regulat ions
following provisions:
for the use or exploit ation of patented inventions as con-
"(a) I n situations of national emergency or templated in this section within one hundred twenty (120)
other ci rcumstances of extreme urgency as provided days after the effe~tivity of this law."
under Section 74.1 ( c), the right holder shall be '
notified as soon as reasonably practicable; 16.4 Extent of Pr ot ection and Interpretation of Cla i ms; T ests
in Pate nt Infringement
"(b) In t he case of public non-com mercial use
of t he patent by the patentee, without satisfactory
The ext ent of protection conferred by the patent shall be determined
reason, as provided under Section 74.l(d), the right by tl1e claims, which are to be interpreted in the light of the descrip-
holder shall be informed promptly : Provided, That,
tion and drawings. It is the patent claims that describe the scope of
the Government or third person authorized by the the patent .
Government, without making a patent search, knows
or has demonst rable ground to know t hat a valid For the purpose of determin ing t he extent of protection conferred
patent is or will be used by or for the Gover_nment; by the patent, due accoun t shall be taken of elements which are
equivalent to the elements expressed in the claims, so that a claim
"(c) I f the demand for the patented article
in the Philippines is not being met to an adequat e shall be considered to cover not only all the elements as expr essed
therein, but also equivalents. (Sec. 75)
extent and on reasonable terms as provided under
Section 74.l(e), the right h older shall be informed
promptly; 16.5 Doctrine of Equiva le nts /

"(d) The scope and duration of such use shall The Doctrine of Equivalents provides that an infringement also takes
be limited to the purpose for which it was authorized; place when a device appropriates a prior invention by incorporating
"(e) Such use shall be non-exclusive; its innovative concept and, although with some modification and
change, performs substantially the same function in substantially the
"(f ) The right holder shall be paid adequate same way to achieve substantially the same resu lt.
remuneration in the circumstances of each case
taking into account the economic value of th~
au thorization; and
 99
9H

--- . --·
r
, ,:; I mg cis
N') l•JG (The T ud. r 1 rt111ned
i ,; ,. w1· tt,r 1 1 ·· , ." 2 11-r,u)· ti
petitioner's palePtt"d i\ll,endazok.
Unclaimed Claim Petitioner further argues that under the doctrine of equivalents
for det~rmining patent infringement, Alb.encwzole, the active ·· ,
Title; ingr edient it allege:; was appropriated by private respondent
Smith Kline Beckman Corp. v. Court of Appeals and Tryco for its drug Imp, eqtFI, is substantially the some as methyl 5
Pharma, G.R. No. 126627, August 1 4, 2003 propylthlo-2-benzimida,ole carbamal.e covered by its patent .
since both of them Hi:! nicant to comba, worm or paiasite
Facts: infestation in animals. 1t ctles the "unrebuttcd" testimony
of Its witness Dr. Godofredo C. Orlnion (Dr. Orirnon) that
Smith Kline ~eckman Corporation (petitioner), a corporation the c11emical fo1 mula in Letters Patent No. 14561 refers to
existing by virtue of t~e laws of the state of Pennsylvania, t he compound Alhendazole Petitioner adds that t he two
~n1ted States of America (U.S.) and licensed to do busine"s substances substantially do t he saine function an substantially
in the Philippi~es'. filed ori October 8, 1976, as assigne~, the same way to achieve the same results, the1eby making
before !he__ Ph1l1ppme Patent Office (now Bureau of Patents) them truly icjcntical. Petitioner thus submits that the appellate
an appflcatro_n_ for patent over an invention entitled "Methods court should have gone beyond the literal wordings used
an? Compos1t1ons for Pf:oducing Biphasic Parasit icide Activity ln Letters Patent No 14561, beyond merely applying t l1e
Using Methyl 5 Propylthro-2-Benzimidazole Carbamcitc." literal infringement test, tor in spite of th,~ fact that the word
On Sep_te~ber ~4, 1981, Letters Patent No . 14 561 fo r· tl1e AIJ')endazole does not aµpe;,ir 1n petitioner's lette1 s patent,
aforesaid invention was is.sued Lo petitioner tor a term of it has ably shown b.y < .idence its sameness with methyl 5
seve,,teen ( 17) years. propytthio-2-benz1mfct,uole carbamate.
:he le_tters patent provides in its claims that the patented Private respondent in 1ls Answer averred that Letters Patent
rnvent1on cons,isted of a new compound named methyl s No. 14561 does not cover l11e substance Albendazole
propylt~1?-2-be~zi:11idazol e carbamate and the methods or for nowhere in it does that word appear; that even if tl1e
con:1_po~1tro~s ut,_lizmg the compound as an active ingredient patent were t o include Albendazole, such ~ubstance is
in f1~hting 1~fect1~ns caused by gastrointestinal parasites and unpatentable; that the Bure<;Ju of Food and Drugs allowed it
. lungworms m animals such as swine, sheep, cattle, goats, to manufaclure and market Impregon wlth Albendazole as
horses, and even pet animals. . its known ingredient; that there is no proof that it pas!;ed
off in any way its veterinary products as those of petitioner, .
Tryco ~hfrma Corporation (private respondent) is a domestic that Letters Patent No. 14561 is null and void, the application
. , c;orp~ratu:in that manufactures, distributes, and· sells for' the issuance thereof having been filed beyond the one-
, vetermar:y products , including Impregon, a drug tl-iat has year period from t ile filing of an application abroad for the
,, Alben?~zole '.or ,ts active ingredient and is clairned't.o be same invention ('Overed thereby, in violation of Section 15 of
, ette~t,~e agamst ga~trointe:tinal roundworms, lungworms, Republic Act No. 165 (The Patent Lavi); and t hat petitioner is
tape~orms and fluke infestat,on.m carabaos, cattle and goats. not the r egistered pat(rnt holder. ·
PetitiOner_ sued priv~~e respondent for infringement of patent As to the ' issue of t ,e application of the doctrine of
and unfair compet1t10~ . before the Caloocan City Regional equivalents, private r~spondent contends that application of
'.nal Cuun: (RTC). It cla11ned that its pa tent ('Overs or includes the doctriae of equivalents would not alter the outcome of the
• tf:le subst~~ce Albe~dazole such that private I esponderit, by case, Albendazole and methyl 5 propylthlo-2-benzimidazole
_manufacturing, selling, using, and cnuslng to be scld and carbamate being two different compounds wllh different
used LhP. drug lmpregon without ,tc; auti101 ization, infringed chemical and physical prooerties. 1t stresses that the
Claims 2,_ 3, 4, 7, 8 a11d 9 of Letters P;,,tent No. 1456 1 as well existence of a separate US. patenl for Alhendazole indicates

-------- - _____ __...,

as comrr\1tte~ unfair competition under Article 189, paragraph tl1at the same and tht2 compound 1n Letters Patent No. 14561
l of the Revised Penal Codeand Section 29 of Republit._,Act
 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER I[( 101
100
LAW ON PAT ENTS

are different from each other; apd that since it was on equivalents provides' that an infringement also takes place
account of a divisional application that the patent for methyl when a device appropriates a prior invention by incorporating
5 propylthlQ-2-benzirTJidazole carbama~e was issu~d, then, by 'its i nnov·ativ.e concept and, although with some modification
definition of a divisional applicat ion, such a compound is just and change, performs substantially th.e same functi_on in
one of several indepenqent inventions alongside Albendazole substan1;1allfthe same way to achteve substantially the same
under petitioner's original patent application. , result. Yet again, a scrutiny of petitioner's evide0ce faUs t9
convinc'e this Couri: ofi:he substantial sameness ofpetitioner'.s
·. Issue: ,. patented compound and Albendazole. While both compounds
have t he effect of neutralizing parasites in animals, identity
Is the private respondent. guilty of patent lnfringehierit? of result does not amount to infringement of patent unless
Ruling: NO
Albendazole operates in substantially the same 'way or oy
substant ially the same means as the patented compound,
L The compour,d Alhendazole was not claimed In tl1e patent '
of the petit ioner. From a reading of t he nine claims of Letters
Patent ~o. :.J,4561 In . relation to t he other portions there0f,
no mention is made of the compound Albendazole. All t hat
eveh t hough it performs the same function and achieves
the sam e result. In other words, the 'principle or mode of
operc!tlon must be the same or substantially the same.
.
The doctrine of equivalents thus requires satisfaction of t he
t ile claims disclose are: the covered invention, that is, the function-means-and-result test, the patentee having t he
com pound methyl 5 propylthio-2-benzimidazole carbamate; burden to sh ow t hat all t hree components of such equivalency
the compound's being anthelrnintic but nontoxic for animals
test are met .
or its ability to destroy parasites without harming the
ho~t animals; and the pat ented methods, compositions or AS stated early on, petitioner's evidence fails to explain how
preparations involving the compound to maximize its effica!,:Y Alb.e ndazole is in elJery essential detail Ident ical to methyl
against certain kinds of parasites infecting specified animals. 5 · propyi'thio-2-benzimidazole carbamat e. Apart from t he
fact tqa.t Albendazole !s ao aothelmlnt ic agent_like methyl
When t he language of its claims is clear and distii:i.\:t, tbe 5 propylt hlo-2-benzimidazole carbamate, nothing more 1s
pat entee is' bound t hereby and m ay not claim anything asserted and accordii:igly substantiated regarding t he method
bey ond t hem . And so are the .coµ,r1:s bound Which may not or means by which Albendazole weeds out parasites in
add t o or detract from the claims matters not expressed or anim als, t hus giving no informat ion on whether that m et hod
nec,essarU~ Jmplied, nor may they enlarge the patent beyond , · is substantially the same as the manner by which petitioner's
the sco$e 8f that which the inventor claimed and t he patent compound ,wor:ks. The testimony. of Dr. Orinlon lends no
office allowed, ~ven if the pat entee may :have been entitled t o support to pet itioner's cause, he not having been present ed
som ething more'than the words it 'had ch osen would include. or qualifi~d as an expert witness ,who ,has the knowledge o r
It bears s'tt essing that t he 'mere absence of• the word · expertise on the matter of chemical compounds,
Afbendazole In lett e(s Patent No. 14561 is not determinative
.of Albtmdazole's' non-inclusion In the dalms of the pc1tent .
While Albenaaz.ole is admittedly a cher;nical compound t hat
. exist s l!>y a name different from that covered iii .p~tltlonei'r's
. letters patent , t he langl:'ag,e or Le~ers PptenttNo1 14 561 fqi[s
at
, . to ,1eld a nything all regarding Aibendazole. And no extrinsic 17 V OLUNTARY L ICENSING
evidence had been adduced to prove that Albendaz0\e inheres
., In petitioner's patent fn spite ofits omission t herefrom or that . 17. 1 V oluntary License Contract
the m eaning of the claims of the patent embraces the same. ,Z, One of t he ways by which an inventor may reap economic
2. The doctrine of ~quivalents is not applicable in the instant ~ benefits from the invention is by granting authority to
case f or failure of petitioner ~o prove substantial sameness enterprises that can commercially exploit the invention, either
of petitioner's compound and Albendazole. The doctrine of by manufacturing, distribution or retail selling. Of course, others may
opt to exclusively manufacture and distribute his merchandise but
102 ESSENTIALS OF I NT ELLECTUAL PROPERTY LAW CHAPTER IJT 103
LAW ON PATENTS

this option may be logistically impractical for some, especially those 2. Those pursuant to which the licensor reserves the right to
who are j ust starting their operations. fix the sale or resale prices of the products m anufactured
on the basis of the license;
Necessarily, transfer, or at least dissemination, of technology will
result should the inventor opts to grant licenses to other enterprises. 3. Those that contain restrictions reg arding the volum e and
Considering the State recognition of the role of effective intellectual structure o f production;
property system in facilitating transfer of technology as well as 4. Those that prohibit the use of competitive technologies in
the social function the use of intellectual property bears,3' the law a non-exclusive technology transfer agreement;
dedicates specia l provisions that seek to regulate contracts entered
into by the inventor as the licensor and the licensee. 5. Those t hat establish a full or partial purchase option in
favor of the licensor;
Section 85 thus provides:
6. Those t hat obligate the licensee to t ransfer for free to
"To encourage t he transfer and dissemination of the licensor the inventions or improvements that m ay be
t echnology, prevent or control practices and conditions that obtained t hrough the use of the licensed technology;
may in particular cases constitute an abuse of intellectual
property rights having an adverse effect on competition 7. Those that require payment of royalties to the owners o f
and t ra de, all technology transfer arrangem ents sh all patents for patents which are not used ;
comply with the provisions of this Chapter." 8. Those that prohibit the licensee to export the licensed
product unless justified for the protection of the legitimat e
There are therefore two objectives of the law, first is to en- interest of licensor such as exports to countries where
courage transfer and dissemination of technology and second is to exclusive licenses to manufacture and/or distribute the
prevent practices that may have an adverse effect on compet ition licensed product(s) have al ready been granted;
and trade. In order to achieve these objects, the law imposes certain
restrictions on the contracts and t he stipulations thereto that will be 9. Those which·· r estrict the use of the technology supplied
entered into by the licensor and the licensee. The State as we should after the expiration of the technology t ransfer arrangement,
all know by now is empowered to impose these restrictions without except in cases of early ter mination of the technology
violating th e non-impairment of contract clause in the Constitution transfer arrangement due to reason(s) attributable to the
because of its police power. licensee;
10. Those which require payments for patents and other
17.2 Prohibited Clauses industrial property r ights after their expiration, term ination
arrangement;
One of the restrictions that law imposed is to prohibit certain
stipu lations in the licensing contract. 35 11. Those which r equire that t he technology recipient shall not
' contest the validity of any of the patents of the technology
The law provides that except in cases under Sect ion 91, the supplier;
following provisions are prohibited since they are deemed prima facie
to have an adverse effect on compet it ion and trade: 12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt
1 . T hose which impose upon the licensee the obligation to the tran sferred technology to local conditions or to init iate
acquire from a specific source capital goods, intermediate research and development programs i n connect ion with
products, raw materials, and other technologies, or new products, processes or equipment;
of permanently employing personnel indicated by the
licensor; 13. Those which prevent the licensee from adapt ing the
imported t echnology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
34
See Rep. Acl No. 8293, Sec. 2. Declaralioo of Stale Policy. standards prescribed by the licensor;
35
This is an illustralion of Civil Code, Art. 1306 which provides: "The contracting parties
14. Those which exempt the licensor for liability for non-
may establish such stipulatio,1s, clauses, terms and conditions as Lhey may deem conve11ient, pro-
vided they are not contrary to law, morals, good customs, public order, or public policy."
fulfillm ent of his responsibilities under the technology
104 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER I ll lOS
LAW ON PATENl ':,

t ransfer arrangement and/or l iability arising from third

party suil s brought about by the use of tl1e 11 ·ensed product
or the licensed tecl, nology; and
Jiiir_ Bar Exam 2010 :
~ What contractual stipulations are required in all tech-
15. Other clauses with equivalent effects. (Sec. 87) nology transfer agreements? Enumerat e three (3 )
As mentioned by the law, these provisions are prohibited st ipulations t hat ar e prohibited in technology t ransfer
because they are deemed adverse to trade and compelition. The law a_greements.
also is clear on th e exception that in cases under Section 91 , this
provision on prohibited clauses may be dispensed wit h.
Section 91 provides: 17.4 Rights Reserved t o licensor and Licensee

"Sec. 91. Exceptional Cases. - I n exceptional or In the absence of any pr ovision to the contrary in the technology
meritorious cases where substantial benefits will accrue to transfer arrangement, the grant of a license shall not prevent the
the economy, such as high technology content, increase licensor from g ranting further licenses to third per son nor from
in foreign excha nge earnings, employment generation, exploiting t he subJect matter of the technology transfer arrangement
reg ional dispersal of indust ries and/ or subst itution with himself. (Sec. 89)
or use of local raw materials, or in the case of Board of
The licen see shall be entitled to exploit t he subject malter of
Investmen ts, registered companies with pioneer status,
the technology transfer arrangement during the whole ter m of the
exemp tion from any of the above requirements may be
technology transfer arrangement. (Sec. 90)
allowed by t h e Documentat ion, Information and Technology
Tran sfer Bureau after evaluation thereof on a case by case
basis." 1 7 .5 Regist ra tion of Lice nse Contract

Technology t ransfer arrangemen ts t hat conform with the provisions of

1 7 .3 Ma ndatory Provisions Sections 86 and 87 on Prohibited and Mandatory Clauses, respectively,
Following th e same pr inciple, the law prescribes that t he followi ng need not be registered wi th th e Documentation, I n formation and
provisions shall be included in voluntary license contracts: Technology Transfer Bureau. Non-conformance with any of t he
provisions of Sections 87 and 88, however, shall automatically render
1. That t h e laws of the Philippines shall govern the the technology transfer arrangement unenforceable, unless said
interpretat ion of t he same and in the event of lit igation, technology transfer arrangement is approved and registered with the
th e venue shall be the proper court in t he place where the Documentation, I nformation and Technology Transfer Bureau under
licensee has its principal office; the provisions of Section 91 on exceptional cases. (Sec. 92)
2. Cont inued access to improvements in techniques and
pr ocesses related to the technology sh all be made available
during t h e period of the techno logy t ransf er arrangement ;
3. I n the event the technology transfer arrangement shall 18 C O MPULSORY LICENSING
provide for arbit ration, th e Procedure of Arbitration of t he
Ar bitration Law of t he Philippin es or the Arbitration Rules 18.1 Nature of Compulsory Licensing
of t he United Nations Commission on I nternational Trade
Law ( UNCITRAL) or the Rules of Conciliat ion and Arbitra-
tion of t he I nternational Chamber of Commerce (ICC) shall [t] This covers situat ions where licenses ar e awarded against the
will of the patent owner. The basis for this compulsion is again
relat ed to t he State policies on intellectual property rights .
apply and the venue of arbitrat ion shall be the Philippines
or any n eutral country ; and
18. 2 Jurisd ict io n
4. The Philippine taxes on all payments relating to t he
technology t ransfer arrangement sh all be borne by t he The Director of Legal Affairs has original j urisdiction over petition s for
licensor. (Sec. 88) compulsory licen sing of patents. (Sec. 10.1)
106 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTCR Hi l (J

LAW ON PATEN rs.

Republic Act No. 9502 otherwise known as "Universally Accessible 5. If the patented invention is not being worked in the:
Cheaper and Quality Medicines Act of 2008" however amended Section Philippines on a commercial ~c<1le, c1!L11ough c.:ipabl,.• or
93 providing that it is the Director General of the Intellectual Property being worked, without satisfacto1 y reason : Provided, Thal
Office who may grant a license to exploit patented invention under the importation of the patented ,:1rt1clc shall consbtulto
the grounds enumerated therein. Clarification either by legislation or working or using the patent; and
judicial interpretation as to who has jurisdiction t herefore should be
6. Where the demand for patented drugs and medicines is
made to avoid confusion.
not being met to an adequate extent and on reasonable
terms, as determined by the Secr etary of the Department
of Health.~
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Republic Act No . 9502 also inserted after Section 93 the following
1. Compulsory Licensing of Invention$ 'A!hich provisions:
are duly patented may be dispensed with or will be
allowed exploitation even without agr eement of " Sec. 93-A. Procedures on Issuance of a Special
the patent owner under .certain circumstances, like Compulsory License under the TRIPS Agreement. 93·
national emergency, for reason of'publfc interest, like A.1. The Di1•ector General of the Intellectual Property
national security, etc. The person who can grant such Office, upon the written recommendation of t he Secretary
authori ty is - of the Depa1tment of Healt l1, shall, upon filing of a petition,
grant a special compulso1·y license fo1 t.he importation of
A · The Director General of t he I ntellectual Property patented drugs and medicines. The specidl compulsory
Office; license for the importation contemplated under this
B. The Director of Legal Affairs of the I ntellectual provision shall be an additional special alternative proce-
Property Office; · dure to ensure access to quality affordable medicines and
shall be primarily for domestic consumption: Provided,
C. The owner of the Patent right; That adequate remuneration shall be paid to t he patent
o. Any 'agent of t he owher of the Patent right. owner either by the exporting or importing country. The
compulsory license shall also contain a provision directing
the grantee the license to exercise reasonable measures to
18.3 Grounds prevent t he re-exportation of the products imported under
this provision.
The Director General of the Intellectual Property Office may grant a "The grant of a special compulsory license under
license to exploit a patented invention, even without the agreement of this provision shall be an exception to Sections 100.4 and
t he patent owner, in favor of any person who has shown his capability 100.6 of Republic Act No. 8293 and shall be immediately
to exploit the invention, under any of the following circumstances:
execut ory.
1. National emergency or other circumstances of extreme " No court, except t he Supreme Court of tl,e Philippines,
urgency;
shall issue any temporary restraining order or preliminary
2. Where the public interest, in particular, national security, injunction or such other provisional remedi es that will
nutrit ion, healt h or the development of other vital sectors prevent t he grant of the special compLtlsory license.
of the national economy as determined by the appropriate "93-A.2. A compulsory license shall also be available
agency of the Government, so requires; or for the manufacture and export of drugs and medicines
3. Where a judicial or administrative body has determined to any country hav ing insufficient or no manufacluring
t hat the manner of exploitation by the owner of the patent capacity in the pharmaceutical sector to address public
or his licensee is anti-competitive; or
4. In case of public non-commercial use of the patent by tl1e 36 Rcp. Act No. 8293, Sec. 9:3 as amended by Rep Acr No. Q',(1> nlh.::,wi,e k11ow11 J> th,;
patentee, without satisfactory reason; "Universally Accessiblo, Cheaper and Quahty Medicine:. Act ol 201J!(."
 108 ESSENTIALS OF £NTELLECTUAL PROPERTY LAW CHAPT ER II£ 109
LAW ON PAT ENTS

health problems: Provided, That, a compulsory license 4. In cases where t he demand for the patented drug s
has been granted by such country or such country has, and medicines in the Philippines is not being met to an
by not ification or otherwise, allowed importation into its adeq uate extent and on reason able terms, as determined
jurisdiction of the patented drugs and medicines From the by the Secretary of the Department of Health .
Philippines in compliance wi th t h e TRIPS Agreement.
In situations of nation al emer gency or other circumstances
. "93-A.3. The right to grant a special compulsory of ext reme urgency, the right holder shall be notified as soon as
licen se under t his section shall not limit or prejudice t h e reasonably practicable.
ri ghts, obligations and flexibilities provided under t he TRIPS
Agreement and under Phil ippine laws, particularly Section In the case of public non-commercial use, where t he government
72 .1 and Section 74 of the Intellectual Property Code, as or contractor, w it hout makin g a patent search, knows or has
ame nded under this Act. rt is also without prejudice to demonstrable grounds to know that a valid patent is or will be u sed
the extent to which drugs and medicines produced under by or for the government, the right holder shall be informed promptly.
a compulsory license can be exported as allowed in the Wher e t he demand for t he patented drugs and medicines in tl1e
TRIPS Agreement and applicable laws." Philippines is not being met to an adequate extent and on reasonable
terms, as determined by the Secretary of the Department of Health,
18.4 Period for Filing a Petition for a Compulsory License the right holder shall be informed promptly. 38

The period depends on the ground for the petition. 18.6 Compulsory Licensing of Patents Involving Semi-Con-
A compulsory license may not be applied for on the ground ducto r Technology
stated in Subsection 93.5 befor e t he expiration of a period of four
years from the date of filing of t he appl ication or three years from the rn the; case of compulsory licensing of patents involving semi-
date of t he patent whichever period expires last. conductor technology, t h~ license may only be granted in case of
public non-commercial use or to remedy a practice determined aher
A com pulsory license which is applied for on any of the grounds j udicial or administrative process to be anti-competitive. (Sec. 96)
st ated in Subsect ions 93.2, 93.3, 93.4, and 93.6 and Section 97 may
be applied for at any t ime a~er the grant of the patent ." 18.7 Compulsory License Based on Interdependence of
Patents
18.5 Requirement to Obtain a License on Reasonable Com-
mercial Terms If the invention protected by a patent, hereafter referred to as
the "second patent," within the country cannot be worked without
The license will only be granted after t h e petitioner has made efforts to infringing anot her patent, hereafter referred to as the " first patent,"
obtain authorization from t he patent owner on reasonable commercial granted on a prior application or benefiting from an earlier priority, a
terms and conditions but such efforts have not been successful wit hin compulsory license may be granted to the owner of the second patent
a reasonable period of time. to t he extent necessary for t he working of his invention, subj ect to
the following conditions:
This r equirement shall not apply in the following cases:
1. The invention claimed in t he second patent involves an
1. Where the petit ion for compulsory license seeks to rem edy important technical advance of considerable economic
a practice determined after judicial or administrative significance in relation to t he first patent ;
process to be anti-competitive;
2. The owner of the first patent shall be entitled to a cross-
2. In situations of national emergency or ot her circumstances license on reasonable terms to use the invention claimed
of extreme urgency;
in the second patent;
3. In cases of public non-commercial use; and

37 18Rep. Act No. 8293, Sec. 95 as amended by Rep. Act No. 9502 otherwise known as "Uni-
Rcp. Act No. 8293, Sec. 94 as amc11ded by Rep. Act No. 9502 otherwise known as "Uni-
versally Accessible Cheaper and Quality Medicines Act of2008." versally Accessible Cheaper and Quality Medicines Acl of2008."
 110 ESSENTIALS OF INT ELLECTUAL PROPERTY LAW CHAPTER Ill 111
LAW ON PATENTS

3. The use authorized in respect of the first patent shall be provided t hat this limitation shall not apply where the grant
non-assignable except wi th the assignment of t he second of the license is based on the ground that the patentee's
patent; and manner of exploiting the patent is determined by judicial
or administrative process, to be anti-competitive;
4. The terms and conditions of Sections 95, 96 and 98 to 100.
(Sec. 97) s. The license may be terminated upon proper showing that
circumstances which led to its grant have ceased to exist
18.8 Form and Contents of Petition and are unlikely to recur provided that adequate protect ion
shall be afforded to the legitimate interest of the licensee;
The petition for compulsory licensing must be in writing, verified by and
the petitioner and accompanied by payment of the requir ed filing 6. The patentee shall be paid adequate remuneration taking
fee. It shall contain the name and address of the petitioner as well as into account t he economic value of the grant or authoriza-
those of the respondents, the number and date of issue of the pat ent tion, except that in cases wher e the license was granted
in connection with which compulsory license is sought, the name of to remedy a practice which was determined after judicial
the patentee, the title of the invention, the statutory ground upon or administ rative process, to be anti-competitive the need
which compulsory license is sought, the ultimate facts constituting to correct the anti-competitive practice may be taken into
the petitioner's cause of act ion, and the relief prayed for. (Sec. 98) account in fixi ng the amount of remuneration. (Sec. 100)

18,9 Notice of Hearing

18.11 Amendment, Cancellation, Surrender of Compulsory
Upon filing of a petition, the Dir ector of Legal Affairs shall forthwith License
serve notice of the filing thereof upon the patent owner and all
Upon the request of t he patentee or the licensee, t he Director of Legal
pe rsons having grants or licenses, or any other right, title or interest
Affairs may amend the decision granting the compulsory license,
in and to the patent and invention covered thereby as appears of
upon proper showing of new facts or circumstances justifying such
record in the Office, and of not ice of the date of hearing thereon, on
amendment.
such persons and petit ioner. The resident agent or representative
appointed in accordance with Section 33, shall be bound to accept Upon the r equest of the patentee, the said Director may cancel
service of notice of the filing of the petition. the compulsory license :
In every case, the not ice shall be published by the said Office in 1. If the ground for the grant of the compulsory license no
a newspaper of general circulation, once a week for three consecutive longer exists and is unlikely to recur;
weeks and once in the IPO Gazette at applicant's expense. (Sec. 99) 2. If the licensee has neither begun to supply the domestic
market nor made serious preparation therefore;
18.10 Terms and Conditions of Compulsory Lic~nse
3. If the licensee has not complied with the prescribed terms
The basic terms and conditions including the rate of royalties of a of t he license.
compulsory license shall be fixed by the Director of Legal Affairs The licensee may surrender the license by a written declaration
subject to the following conditions:
submitted to the Office.
1. The scope and duration of such license shall be lim ited to The said Di rector shall cause the amendment, surrender, or
the purpose for which it was authorized;
cancellation in the Register, notify the patentee, and/or the licensee,
2. The license shall be non-exclusive; and cause notice thereof to be published in the IPO Gazette. (Sec.
101)
3. The license shall be non-assignable, except with that part
of the enterprise or business with which the invention is
being exploited ; 18.12 Licensee's Exemption from Liability

4. Use of the subj ect matter of the license shall be devoted Any person who works a patented product, substance and/or process
predominant ly for the supply of t he Philippine market under a license granted shall be free from any liability for infringement
 112 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER III 113
LAW ON PATENTS

provided however that in the case of voluntary licensing, no collusion original or the authenticated copy to the party who Aled the same and
wit h the licensor is proven. This is without prejudice to the right of the notice of the recording shall be published in the IPO Gazette.
righ tful owner of t he patent to recover from the licensor whatever he
Such instruments shall be void as against any subsequent
m ay have received as royalties under the license. (Sec. 102)
purchaser or mortgagee for valuable co~sider~ti?n and without
notice, unless, it is so recorded in the Office, within three months
from the date of said instrument, or prior to the subsequent purchase
or mortgage. (Sec. 106)
19 ASSIGNMENT OF RIGHTS
19,4 Rights of Joint Owners
19.1 Assignment of Patents

m
If two or more persons j ointly own a patent and the invention covered
The reason why .patent is an Intellectual Property Right is thereby, either by the issuance of the patent in their joint favor or
because patent 1s a property. Even patent application is by reason of the assignment of an undivided share in t he patent and
deemed to be a property.
Thus, patents or application for patents and invention to which
invention or by reason of the succession in title to such share, each
of t he joint owners shall be entitled to personally make, use, sell, or j
they relate, shall be protected in the same way as the rights of other import the invention for his own profit provided however that neither
property under the Civil Code. (Sec. 103.1)
Inventions and any right, title or interest in and to patents
~nd i~ventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract.
of the joint owners shall be entit led to grant licenses or to assign his
right, title or interest or part thereof without the consent of the ot~er
owner or owners, or without proportionally dividing the proceeds with
such other owner or owners. (Sec. 107)
l
(Sec. 103 .2)

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 20 UTIUTV MODELS
become joint owners thereof. An assignment may be limited to a
specified territory. (Sec. 104) 20.1 Utility Mode ls

Utility model is a('petty'.,'. patent for new and industrially applicable

19.2 Form of Assignment
technical solution ofa problem. A new and useful, but obvious
The assignment must be in writing, acknowledged before a notary improvement may be protected as utility model.39
public or other officer authorized to administer oath or perform Another definition of a utility model is that it is a statutory
notarial acts, and certified under the hand and officia·1
· seal of the monopoly granted for a limited time in exchange for an inventor
notary or such other officer. (Sec. 105) providing sufficient teaching of his or her invention to permit a person
of ordinary skill in the relevant art to perform the invention. The
19.3 Recording rights conferred by u tility model laws are very similar to those granted
by patent laws, but are more suited to what may be considered as
The Office shall record assignments, licenses and other instruments "incremental inventions." Terms such as "petty patent", "innovation
relating to the transmission of any right, title or interest in and to patent", "minor patent", and "small patent" may also be considered
inventions, and patents or application for patents or inventions to to fall within the definition of "utility model."•0 1 ,~\) 1. 1, It
which they relate, which are presented in due form to the Office for
..)"f~ - d/,
registration, in books and records kept for the purpose. The original
documents together with a signed duplicate thereof shall be filed, ~-{ : rr
,. :-
v\ ·;.::, ..
and the contents thereof should be kept confidential. If the original
is not available, an authenticated copy thereof in duplicate may be
.,_
/.,"J
\ /I•
111, 1
( ;-, _t·-~·~ ;·~ ~/1
.. ~
filed. Upon recording, the Office shall retain the duplicate, r eturn the
'"Source: http://www.ipophil.gov.ph/
'"'Source: http://cn. wikipcdia.orglwiki/Utility_ model ___....,,,·,.
 'I
I

J 14 [SSH! r ,Al :·, OF INT[LLECTUAL PROPERTY LAW CHAPTER Ill 1J 5

LAW ON PATENTS

Still, in another case," util ity model was described as follows: (d) That the owner of lhe utility fll (1d• •I 11:-~q1·,lr.Jtio11 is not. tile
inventor or h is successor in title . (SP, . !O<'J.4)
"A utility m odel is c1 t echnical solu tion to a problem
20,3 Conversion of Patent Applications o r Ap plicat ions for
in a ny field of human activity which is new and industrially
Utility Model Registration
applicable. rt m ay be, or may relate t o, a p r oduct, or process,
or an improvement of any of the aforesaid. Essentially, a At any time before the grant or refusal of a palent, an applica~ t
utility model refers to an invention in t he mechan ical field. for a patent may, upon payment of the prescribed fee, _conver t his
This is the r eason why its object is som etimes described as application into an applicat ion fo r reg istratior: .o~ a utrl1ty _model,
a device or useful object." which shall be accorded the filing date of the 1n1t1al applrcqtron . An
application may be converted only once .
20.2 Distinguished from Patentable Inventions
At any time before the grant or r efu sal . of a_ utility m oclel
The provisions governing patents shall apply, mutatis mutandis,-12 to registration, an applicant for a util ity model r eg1st~at10_11 may, upon
the reg is tration of utility models (Sec. 108. 1 ) except with respect to payment of the prescribed fee, convert hrs apptrcat1on 111to a P.a~e_nt
application, which shall be accorded the filing dc1te or the rnitral
the fol lowing it ems which the law designates as special provisions
relating to u tility models (Sec. 109) : application. (Sec. 110)

1. Requir ement for patentability : (a) An invention qualifies 20,4 Prohibition Against Filing of Parallel Applications
for r~gistrat ion as a ~tility model if it is new and industrially
a pp licable; (b) Sectron 21, "Patentable Inventions" shall An applicant may not file t wo app lications for the same subject'. one
apply except the reference to inventive step as a cor~dition for utility model r egistration and the other for the grant of a patent
of protection. (Sec. 109.1) whether simultaneously or consecutively. (Sec. 111 )
2. Procedure from Sections 43 (Classi fication and Search) to
49 (Amendment of Applica tion) does not apply in case of
applications for registr ation of ut ility m odel. (Sec. 109.2)
21 I NDUSTRIAL DESIGNS
3. A u~ili_ty model r egistration shall expire, without any
possrb1 l1ty of renewal, at the end o f the seventh year after 21.1 Industrial Designs
t he date of the filing of the application. (Sec. 109.3)
This part of the law has been amended by Republic ~c! No. 91_50,
4. In proceeding.s u nder Sections 61. (Cancellat ion of Patents) approved on August 6, 2001. There are now_ three drstmct s~b!e_ct
to 64 (Commit t ee of Three), the u tilit y model registration m atter under this part, namely Industrial Design, I ntegrated Crrcurt,
shall be cancelled on the following grounds: and Layout-Design in v iew of the said amendment.
(a) That the claimed invention does no't qualify fo r An Industrial Design is any composition of lines or colors or any
registration as a utilitv model and does not meet the three- dimensiona l form, whether or not associated wit h lines or colors
requirements of registrability, in particular having provided that such composition or form gives a special appea_rance
regard to Subsection 1.09.1 an d Sections 22, 23, 24 to and can serve as pattern for an ind ustrial product or l1and 1craft.
and 27; (Sec. 112.1)
(b) T~at the descript ion and the claims do not compl y An Integrated Circuit means a product, in its fina l forr:1, ~1- an
wrt h the prescribed requirements; intermediate form in which the elements, at least one of which 1s an
active element and some or all of the interconnect ions are integrally
( c) 'That any drawing which is necessary fo r the under-
formed in and/or on a piece of m ater ial, a 11cl which is intende d t o
~tanding of the invention has not b een furnished;
perform an electronic function. (Sec. 112.2)
A Layout-Design is synonymous w ith "Topography" and n:ieans
41
tl1e three-dimen sional disposit ion, however expressed, of the
Jessie G. Chi11g i: Wil/w111 M. Sr,l111a,. el al., G.R. No. 16 1295, .June 29, 2005. elements, at least one of which is an active element, and of some or
42
WiLh iliose things hav ing been clmngecl whid 1 need 10 be changed.
 116 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER III 117
LAW ON PATENTS

a~I of t he interconnections of an integrated circuit, or such a t hree- 21.4 Several Industrial Designs in One Application
dimensional disposition prepared for an integrated circuit intended
for manufacture. (Sec. 112.3) Two or more industrial designs may be the subject of the same
application: Provided, That they relate t o the same sub-c!a_ss of
the International Classification or to the same set or com posrt1on of
21.2 Substantive Conditions for Protection
articles. (Sec. 115)
Only industrial designs that are new or ornamental shall benefit from
protection under the law. 21.s Examination of Application

. Industrial designs dictated essentially by technical or functional The Office shall accord as the fi ling date the date of receipt of the
considerations to obtain a technical result or those that are contrary application containing indications allowing the identity of the applicant
to public order, health or morals shall not be protected. to be established and a representation of the article embodying the
industrial design or the layout-design or a pictorial repr esentation
?nly layout- designs of integrated circuits that are original shall
benE:fit from protection under this Act. A layout-design shall be thereof.
considered original if it is the result of its creator's own intellectual If the application does not meet these requirements, the filing
effort and is not commonplace among creators of layout-designs and date should be that date when all the elements specified in Sec-
manufacturers of integrated circuits at the time of its creation. tion 114 are filed or the mistakes corrected. Otherwise, if the r equire-
A layout-design consisting of a combination of elements and ments are not complied within the prescribed period, the application
interc_onn~ctions that are commonplace shall be protect ed only if the shall be considered withdrawn.
combrnatron, taken as a whole, is origirial. (Sec. 113) After the application has been accorded a fi ling date and the
required fees paid on time, the applicant shall com ply with the
21.3 Contents of the Application requirements of Section ,114 within the prescribed period, otherwise
the application shall be cor:isidered withdrawn.
Every application for registration of an industrial design or layout-
design shall contain: The Office shall examine whether the indust r ial design or layout-
design complies with requi r ements of Section 112 (Definitions) and
1. A request for registration of the industrial design or layout- Section 113 (Substantive Condit ions for Protection). (Sec. 116)
des1gn;
2. Information Identifying the applicant; 21.6 Registration of Industrial Design
3. An indication of the kind of article of manufacture or Where the Office finds t hat the conditions referred to in Section
handicraft to which the industrial design or layout-design 113 are fulfilled, it shall order that registration be effected in the
shall be applied;
industrial design or layout-design register and cause the issuance
4. A representation of the article of manufactu~e or handicraft of an industrial design or layout- design certificate of registration;
by way ~f drawing:, phot~graphs or adequate graphic rep- otherwise, it shall refuse the application.
resent~t1on of the r~qustrral design or of the layout-design
The form and contents of an industrial design or layout-design
as applred to the article of manufacture or handicraft which
certificate shall be established by the Registrations p rovided that the
clearly and fully discloses those features for which protec-
tion is claimed; and name and address of the creator shall be mentioned in every case.

5. The name and address of the creator, or where the appli- Registration shall be published in the form and within the period
cant Is not the creator, a statement indicating the origin of fixed by the Regulations.
t~e right to the industrial design or layout- design registra- The Office shall record in the register any change in the
tion. identity of the proprietor of the industrial design or layout design
. The application may be accompanied by a specimen of the or his representative, if proof thereof is furnished to it. A fee shall
artr 1e embodying the industrial design or layout - design and shall be be paid, with the request to record the change in t he identity of t he
7
subJect to the payment of the prescribed fee. (Sec. 114) proprietor, if the fee is not paid, the request shall be deemed not to
 CHAPTER III
119
118 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
LAW ON PATENTS

have been filed . I n such case, the former proprietor and the former SECTION 29 - First to File Rule;
representative shall remain subject to the rights and obligations as SECTI ON 30 - I nventions Created Pursuant to a Commission ;
provided in the law.
SECTI ON 3 1 - Right of Priority: Provided, That t he applica~ion
Anyone may inspect the Register and the files of registered for industrial design shall be filed wi~hin six _
m onth~ from the earliest
indust rial designs or layout-designs including files of cancellation filing date of the corresponding for eign appl1cat1on ,
proceedings. (Sec. 117)
SECTION 33 - Appointment of Agent or Representative;

21. 7 Term of Registration SECTION 51 - Refusal of the Application;

SECTIONS 56 to 60 - Surrender, Correct ion of and Changes in
The r eg istration of an industrial design shall be for a period of five
years from the filing date of the application. Patent;
CHAPTER VII - Remedies of a Person with a Right to Patent;
The registration of an industrial design m ay be renewed for not
more than two consecutive periods of five years each, by paying the CHAPTER vrn - Rights of Patentees and Infringement of Pa-
renewal fee. tents; and
The r enewal fee shall be paid within 12 months preceding the CHAPTER XI - Assignment and Transmission of Rights
expiration of t he period of registration. However, a grace period of six
months shall be granted for payment of the fees after such expiration,
Jf the essential elements of an industrial design which the !s
subject of an application have been obtaine~ from the ~reat 1on of
upon payment of a surcharge.
another person without his consent, protection under this Chapter
Registration of a layout-design shall be valid for a period of ten cannot be invoked against the injured party.
years, w ithout renewal, and such validity to be counted from the date The following provisions relating to paten~s sha(I ap~ly 1:1utatis
of commencement of the protection accorded to the layout-design. mutandis to a layout-design of integrated c1rcU1ts reg1strat1on.
The protection of a layout-design shall commence:
SECTION 28 - Right to a Patent;
1. On the date of the first commercia l exploitation, anywhere
in the world, of the layout-design by or with the consent of SECTION 29 - First to File Rule;
the right holder provided that an application for registration SECTION 30 - Inventions Created Pursuant to a Commission;
is filed with the Intellectual Property Office within two
years from such date of first commercial exploitation; or SECTION 33 - Appointment of Agent or Representative;
2. On t he filing date accorded to the application for the SECTION 56 - Surrender of Patent;
registration of t he layout-design if t he !av.out-design has SECTION 57 - Correction of Mistakes of the Office;
not been previously exploited comm ercially anywher e in
the world. (Sec. 118) SECTION 58 - Correction of Mistakes in the Application;
SECTION 59 - Changes in Patents;
21.8 Application of Other Sections and Chapters
SECTION 60 - Form and Publication of Amendment;
The following provisions relating to patents shall apply mutatis CHAPTER VII - Remedies of a Person with a Right to Patent;
mutandis to an Industrial design registration.
CHAPTER VIII - Rights of Patentees and Infri_ng_em~nt of Pa-
SECTION 21 - Novelty; tents: Provided, That the layout-design rights and ltm1tat1on of l ay-
SECTION 24 - Prior art: Provided, That the disclosure Is con- out-design rights provided hereunder shall govern ;
tained in printed documents or in any tangible form; CHAPTER X - Compulsory Licensing;
SECTION 25 - Non prej udicial Disclosure; CHAPTER XI - Assignment and Transmission of Rights. (Sec.
SECTION 28 - Right to a Patent; 119)
 121
CHAPTER Ill
120 ESSENTIALS OF INTELLECTUAL PROPERTY LAW LAW ON PATENTS

21.9 Rights Conferr ed of Layout-Design Registration 5.

The owner of a layout-design registration shall enjoy the following

rights:
21.11 Cancellation of D e sign Registration
1. To reproduce, whether by incorporation in an integrated
e industrial design registration, any
circuit or otherwise, the registered layout- design in its At any time during the term of th . d fee may petition the Director
entirety or any part thereof, except the act of reproducing person upon_payment o,f tthh e .r~~~1;~al de;ign on any of the following
any part that does not comply with the requirement of of Legal Affairs to cance e in
originality; and grounds:
2. To sell or otherwise distribute for commercial purposes the b' t matter of the industrial design is not
1.
registered layout design, an article or an integrated circuit ~:g~:~er!~1t~ithin the terms of Sections 112 and 113;
in which t he registered layout-design is incorporated. (Sec.
2. If the subject matter is not new; or d
119.4)
matt er of the industrial design exten s
21.10 Limitations of Layout Rights 3. ~e~~~d s~hb~e~~ntent of the application as originally fil ed.
(Sec. 120.1)
The owner of a layout design has no right to prevent third parties II f relate to a part of t he
from re producing, selling or otherwise distributing for commercial Where t he grounds ! or canceb a ~~nected to such extent only.
purposes the registered layout-design in the following circumstances: Industrial design, cancellation m
d ~Y t:e form of an alteration of the
The restriction may be effecte in
1. Reproduction of the registered layout-design for private effected features of the d~sign. (Sec. 120.2)
purposes or for the sole purpose of evaluation, analysis,
research or teaching; 21.12 Grounds for Cancellation of Layout- Design oflntegrated
2. Where the act is performed in respect of a layout-design Circuits
created on the basis of such analysis or evaluation and
Any interested person may petition that the registration of a layout -
which is itself original in the meaning as provided herein;
design be canceled on the ground that:
3. Where the act is performed in respect of a registered lay- The layout-design i s not protectable under the law;
out-design, or in respect of an Integrated circuit in which
such a layout-design Is incorporated, that has been put on ~: The right holder Is not entitled to protectlon under the law;
t he market by or with t he consent of the right holder;
or d ·
4. In respect of an integrated circuit where the person 0
3 _ Where the appllcat(on for regais~~~i~ 1~t~r~~Y~~~me:;~i~l
performing or ordering such an act did not k now and was not filed within two ye
had no reasonable ground to know when acquiring the exploit ation anywhere In the world.
integrated circuit or the article incorporating such an for cancellation are established with respect
integrated circuit , that it incorporated an unlawfully Where t he grounds . I the corresponding part of the
reproduced layout-design, provided, however, t hat after only to a part of the layout-design, on Y
the time that such person has received sufficient notice registration shall be canceled.
that ·t he layout-design was unlawfully reproduced, that . ·stration or part t hereof, shall be
Any canceled layout-design reg~ . ning and may be expunged
person may perform any of t he said acts only w ith respect th 1
to t he stock on hand or ordered before such time and shall regarded as null and void fro~, : ati ; operty office. Reference to
from t he records of t~e lnte_~c ~·on shall be published in the IPO
be liable to pay to the right holder a sum equivalent to all canceled layout-design reg1s ra I
at least 5% of net sales or such other reasonable royalty
Gazette. (Sec. 120)
as would be payable under a freely negotiated license in
respect of such layout-design; or
 122 ESSEN rlAI_S OF JNTELLECTUAL PROPERTY LAW

fJ.ID Ten r=ast laws on Patent

1. There ar e inventions that are not patentable.

CHAPTER IV
2. An invention must be novel, rnust involve 1:ln inventive step, and
m ust be industrially applicable for it to b ~ patentable.
3 . The Pllilippines adopt the "First-to -File" rule. In r elation, LAW ON TRADEMARK
filing date in the patent application is accorded only when the
requisites are present. Filing date is not j ust the date when t he
application was filed.
Of all the intellectual property rights, it is the trademark that is richest
4. If an invention is done in the cour-se of an employment, the in terms of local j urisprudence. If not for the passage of Republic_ Act
employer shall own the patent if t he invent ion is part of the duty No. 8293, understanding our trademark law will be s~c~ a lab~rious
of the employee. If not, the employee shall own tl1e patent even task considering the need to reconcile seemingly confl1ct111g dec1s1ons
if he/she used the time, facilities, and materials of the employer. rendered on the matter prior to the enact ment of the current law.

5. Patent registration is valid for 20 years counted from the fil ing The present law introduced significant innovations in the law on
date of the application. trademark. Among these changes are:

6. Any interested person may petition to cancel the patent or any 1. The requirement of prior use of the mark as a r equisitde for
claim thereof. the filling of trademark registration has been remove .

7. The patent owner may file civil, administrative, and criminal 2. use or registration in the Philippine~ of wel_l-~nown mdarksf
action against an infringer. However~ criminal liability is incurred is no longer r~quired for its protection to s1m1~ar g~o s. 1
by an infringer only if there is repetition. the well-known marks are registered, such regrstra tron can
prohibit its use even to non-related products.
8. The infringer is presumed to know the existence of patent if
there is an indication "Philippine Patent" with number of the 3. The supplemental reg ister has been abolished.
patent on the container, packaging or on the article itself. With all the confusion on the law on trademark, one thing is
9 . A pr-ior user in good faith has the r ight to continue using the certain though. It is an inter esting subject as it is close to our ev~ryday
invention in his enterprise. T,-ansfer of this right however is living as consumers. It also gave us some of the most illustrative yet
limited by law. entertaining ponencias such as Del Monte Corp. v. Court of Appe~ls,
G.R. No. 78325, January 25, 1990 under the wonderful pen of Justice
10. Licensing agreements covering patented products or process Isagani Cruz.
are regulated by law.

22 TRADEMARK

22.1 Trademar ks

m Trademark has been colorfully defined as "a distinctive _mark

of authenticity t hrough which the merchandise of a particular
prod ucer 01· manufacturer may be distin_gu_ished from tha~ ?f
others, and its sole function is to designate d1st111ct1vely the ongrn

123
124 ESSENTI ALS OF I NTELLECTUAL PROPERTY LAW CHAPTER IV 125
LAW ON TRADEMARI<

o f the products to which it is altached."1 Tl1e t erm was also defined "Let It be r emember·ed tha t duly registered
in lesser fl are but equally effective manner as "any wor·d, name, t rademarks are protected by lr1w as intellectual properties
symbol or device adopted and used by a manufact urer or m er chant and cannot be appropriated by others wit hout v iolating the
to identify his goods and distinguish them from those manufactured due process clause. An infr ingement o f intellectual ri ghts
and sold by others."' is no less vicious and condemnable as theft of material
property, whether personal or real."
The law gives us now a forthright definition of what a mark is.
It says that a " ~" m eans any visible sign capable of distinguishing I t m ust be emphasized that registration of a t rademark , by
the goods (trademark ) or services (service m ark) of an enterprise itself, is not a m ode of acquiring ownership. If t he applicant is not the
and shall include a stamped or marked contain er of goods. (Sec. owner of the trademark, he has no right to apply for its registration.
121.1) Registration m erely creates a prima facie presumption of the val id ity
of t he registration, of the regist rant's ownership of the trademark, and
No matter how and when the term is defin ed, it remains that a
tradem ark is something that is a sign and its purpose is to distinguish of the exclus~ght to t he use thereof. Such presumption, j ust l ike
the presumpt ive regularity In the performance o f offi cial functions, is
one's goods from ano ther. With regards to the first element, t he law
rebuttable and must give way to evidence to the cont rary.-•
went further to declare tha t a tr ademark is a visible sign, thus barring
the possibility of audible ( or other sensory functions aside from the
. . .
visual) signs being consider ed as a trademar k.
lLI.\JST~·~ ~~E·(:~~E
'11.-.~~ . .
4~1· . :· ~ :"
, ..;1., ... ,./-
'

~-,.
~

'.,
, ,
-~'
., ,,,

. .. '•.', . '. ..·' ,

'., '
·< -~/
...,•

.·.,,--t
'

22,2 Collective Mark

m Colfective mark is also defined by the law as any visible sign

desig nated as such in the application for r egistration and
capable of distingu ishing the origin or any other common
charac teristic, including t11e quality of goods or services of different k Orthopa'- · ·
'·•'
Co. Kg (Formerly
enterpri ses which use the sign under the cont rol of the registered
k ' . Philippine Shoe . EXP,~
owner of the collective mark. (Sec. 12 1.2)
An application for regist ration of a collective mark shall design-
ate the m ar k as a collective mark and shall be accompanied by a copy
of t he agreement, if any, governing the use of the collective mark.
r(:'ti. &:~ ~JY.-gtg~
(Sec. 167.2 [ a]) Ji ~fof..,_,_y an
i-'. .af'iBI~
22.3 Acquiring a Mark

The rights in a mark sh all be acquired through r egistration made

validly in accordance with the provisions of the law. (Sec. 122)
The significance of acquiring right to a mark is captured in one
case 3 where the Supreme Court aptly reminded all that:

1 Rey11old,·
CK BAD ,
& Rey110/ds Co. ,,. Norick, et al.. 114 F 2d. 278 ci1ed in A11::e Sous and Compa11y COM PANY _ ESENTATIGN 0
v. Selecw 8isc11;1 Comp any. G.R. No. 14761, January 28, 1961.
, CRO s ND SUNB.EAW under TASN 4.21994-095
2
lJass B11s1e1; inc. ,,. Gapen ~1fg. Co., 420 F. Supp. 144, 156, 191 USPQ J IS, 325 (W.D '· . '
Mo. 1976) citccl in Societe Des Produirs Nesrle ~ Cm,rr ofAppeals, G R No. 112012, April 4.
20(11.
1Amign Mm111fr-1chwi11,~. l11c. v. C/11e/l Peaboc/1• Co.. Inc.. G.R. No. I 39300, March 14,
' Birkenstock Orr/,opaedie Gmhl, And Co. Kg (Former()' Birke11stock Orthopaedie Gmbh)
2001. v. P/,i/ippine Shoe 6'xpo lv/arke1i11g Corporation. G.R. No, 194307, November 20, 20 l3.
 T
126 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
CHAPTER IV 127
LAW ON TRADEMARK

_""
for goods falling under Class 10 of the Nice Classification with
filing date of September 5, 1994 (subject applications).
... - ~' . '
However, registration proceedings of the subject applk.ations
::vere suspen~ed illview of an e;eisting_registrall9.D of the mark
the Philippines, while on t he other hand, petit ioner failed to
present evidence of actual use in the trade and business in
this couhtry. lt opined that while Registration No. 56334 was
cancelled, it does not follow that prior right over t he mark
was lost as proof of mnti.nuous__and uninterrupted \:!Se in
BI~.KE~STOCKAND DEVLCE'' undE?r :Registration No. 56334
Tracfeand business in the Philippines was presen~ed. The BLA
. datecLQctober 21; 1993 (Registration No. 56334} in the name
,. likew'is~ opined that petitioner's njar~s are . not well -known .
of Shoe Town International and Industrial Corporation, the
in the Philippines and internatioria11y and that the ·vartous
predecessor-jn-interest of respondent Philippine Shoe Expo
certificates of registrat ion submitted by petitioners were all
·Mar~eting _Corporati?~· . I n-this r:eg~rd, on May 27, 1997 photg@pies and, therefore, not admissible as evide~ce. ,
,_Petitioner. filed a pet1t1on for cancellatl"on of Registration No.
56334 on the ground t hat it is the lawful and rightful owAer Inh~~ De~sion dated December ~2, 2009, the APO ~;reCtQ[_,7'
of the Birkenstock·marks (Cancellation Case). General reversed and set aside the ruling of the BLA, thus ·
allowing the registration of the subject applications. He
The afo~esaid cancellatioh :of Registration No. 56334 paved held that with the cancellation of Registration No. 56334
the way for the gy_blicatJ.~n of the subject applicat ions in the for respondent's failure to file the 10th Year DAU, there is
IPO e-Gazette on February_?.,--f007. In response, r.espondent • no more reason to reject the sutJject ap_Qlications on the
filed three (3) separate verifiednotices of oppositions to the ground of prior registra.t ion by .an.Qther p~oprietor. More
subject applications doc::keted as Inter Partes Case N,os. 14- ....,,irr,portanJ:j)!, he found that the evidence presented proved
~007-0~108, 14-2007- 00115, and 14-2007- 00116, claiming, that P€ione? }s the_t!:!J_~.!Jd lawu,,.~o~rer an,o_prior....Ys.e~ of
mter a/1a, that: (a) it, together with its predecessor-in=inter- "BIRKENSfOt K" marks and thus, entit ledJ o the registrat ion
est, has been using, Bir~enstqck marks In th~ P..hilippine.s for / of the marks cove~ed by t he subj~.t applica,tions. T_he IPO
moc_e than_,.16 ..year~ thN5ugh 1t'he mark ''BIRKENSTOCK AND ··· orrector.General further _held that re~ondents copyright for
DEVICE"; (b) the marks covered by the subject applications the word "BIRKENSTOCK" is of no moment since copyright
are identical to the one covered by Registration No. 56334 and trademark are different forms of intellectual property
. a.nd thus, petitioner bas no fight to the registration of suc;h ~t,at can()ot be interchanged.
· riarks; (c) ~n Noven,ber_'ls1 ¾2911 responde,nt's predecessor-
0
111-lnterest likewise obtained a Certificate of Copyright Regis- In its Decision dated June 25, 2010, the CA-reversed and set
tration No. 0-11193 for the word "BIRKENSTOCK"; (d) while aside the ruling of the IPO Director General and reinstated
,respondent and lt,s predecessor-in-interest f~il.ed to file the that of the BLA. It disallowed the registration of the subject
. :10th Year DAU, it'continued the use of "BIRkENSTOCK ;ti.ND · applications on •t he grouQd that th.e marks covered b:y such.
DEVICE" j!.1 lawful comcnerce; and (e) to record Its contln- applications "are confusingly similar, if not·outright identical"
With respondent's mark.
u_ed ownership and exclusive right to use the "BIRKENSTOCK"
~· _
O)arks1 it' has: fHecf_¾~f'J 4-2006:·010213 i:1S a '.'r:e-appllcaUon" · Dissatisfied, petitioner filed .a Motion:for Reconsideration da~ed /
of !ts old reg1sttat1on, Reglstr'at1on No: 56334. On November .· July 20, 2010, which was,, however; denied in a Resolut1or ·
13, 2007, the Bureau of Lega~ Affairs (BLA) of the !PO issued dated October 27, 2010. Hence, this petition.
Order No. 2007-2051 consolidating the aforesaid inter partes
cases (Consoljdated Opposition Cases~. ,Issues:
]_r1.-its,,pecision dated May 28, 2008, the BLA of the IPO Whether or not the subject marks should be allowed
'S~stained respo.ndent'.s opposmon, thus, ordering the rejection regis~Jpn in the name of petitioner.
of the subj~ct applicatl.o,ns; It ruled that .the c;_ompeting m{lrks . \

ef the parties are fonfusingly slmilaf· since they contained

the word "BIRKENSTOCK" and are used on the\.~same and
'

1.
.
Ruling~ YES '
~ ~

Respondent is deemed to have abandoned the mark. In

related goods. It fo£fndy espondent and its predecessor-in- this case, respondent admitted that it failed to file the 10th
inter~st as the prior.. ~ user
, , .~nd adopter of
.,.
'1 BIRK!i;NSTOCK"
'
in Yei:lf DA,U for Registratfor:i No. 5$334 with.in the requisite
128 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 129
LAW ON TRADEMARK

period, or on or before October 21, 2004. As a consequence, The presumption of ownersllip _accordep to a registrant must
it was deemed to have abandoned or withdrawn any right or then necessarily yield to superior evidence of act ual and real
interest over the mark "BIRKENSTOCK." Neither can it invoke ownership of a trademar.!<- _ • ·- · ..
Section . 236 of the IP Code which pertains to intellectual
property rights obtained under previous intellectual property I n the instant case, petitioner was able to esl;_ablish .. thg,t
laws, e.g., RA 166, precisely because it already lost any right it is_ the~·_owner of} the mark "BIRKENSTOCK." It submitte-d
or interest over the said mark. evidence relating to the origin and history of"BIRKENSTOCK"
and its use in commerce lorig before respondent was able to
2. Petition.er haS\_"-cfUij;st~hea its true ;nd lawful o;.?i~r- register the same here in the Philippines. rt has sufficiently
ship of the mark. Besides, petitioner has duly established its proven that ~'BIRKENSTOCK",.,was first adopted in Europe in
t rue and lawful ownership of the mark'"BIRKENSTOCK." 1774 by its inventor, Johann Birkenstock, a shoemaker, on his
Under Section 2, of R. 166, whiqh is also the law governing line of quality footwear and thereafter, nume.rous gene@tlons
t he subject ·applications, in order toregister a trademark, of his kin continuously engaged in the manufacture and sale
of stioes and sandals bearing the mark ''BIRKENSTOCK_H until
one must be the owner thereof and must have actually used
the mark In commerce in the Philippines for two (2) months It became the entity now known as the petitioner. Petitioner
prjor to t he application for registration. Section 2-A of the also submitted various certificates of i:.e9istration of the mar,K
same law sets out to define how one goes about acquiring ''BIRKENSTOCK" in various countries and that it has used
such mark in different countries worldwide, including the
ownership thereof. Under the same section, it 1~ clear that
actual use in commerce is alsQ the test of ownership but Philippi hes.
the provision went further by saying that t he mark must not On the other hand, a$ide from Re9istration No. 56334 whiph
ha_ve been s.0 appropriated by another: Significantly, to be an had been cancelled,', respondent only presented ci;>pies of
owner, Section 2-A does not require that the actual use of a sales in-voices -and advertisements, wl)ich aternotcoRclus!v~
trademark must be within the Philippines. Thus, under RA evidence of Its claim of ownership Qf the mark "BIRKENSTOCK"
166, one may be an owner of a mark due to its actual use but as these merely show t.h e transactions- ma~e by respopdent
may not yet ha~e the right to register such ownership here involving the same. · · -
due to the owner's failure to use the same in the Philippines
. for two (2) mont hs pri9r to registratiop, ., .
It must be ·etnP.hasiz~ th~t registration of a trademark, ·
by, , itself, ls ,not: 1a mode of <i!Cquiring ownership. If the · 22.4 Functions
applicant is not the owner of the t rademark, he has no right
to: ap_ply for;; its registration. Reg1straJ;ion merely cr.~a~' • So what Is It in Trademark that It has elicited so much legal disputes
, prim.a Jacie presum_pMn of the validity of the· registrat~~n, over the years, locally and globally? Apparently for some business, it
of... the registraqt'~ owqershJp of the trade(Tlark, a·na:of.the is all there Is to it.
exclusive rlght to t he use 'thereof. Such presumption, just Thus, it has been held that the protection of trademarks is the
like the. presumptive regularity n thE: performance of official law's recognition of the psychological function of symbols. If it is true
· f unctibns, ls rebuttable ahd must'give way to eviaence to the that we live by symbols, it is no less true that we purchase goods
contrary. by them. A t rademark is a merchandising shortcut which induces a
Clearly, it Is not the application or registration of a trademark purchaser to select what he wants, or what he has been led to believe
that ves,ts ownership t hereof, but It ,is the ownership .of a he wants. The owner of a mark exploits this human propensity by
trademark that confers the right to register the satne. A making every effort to impregnate the atmosphere of the market
trademark is an industrial ~roperty over which its owner is with the drawing power of a congenial symbol. Whatever the means
entitled to property rights which cannot be appropriated by employed, the aim is t he same- to convey through the mark, in
unscrupulous entities t hat, in one way or another, happen to the minds of potential customers, t he desirability of the commodity
register such t rademark ahead of its true and lawful owner. upon which it appears. Once this Is attained, the trademark own_er
has something of value. If another poaches upon the commercial
 130 ESSENTJALS OF ff\JT l::LLEC-1UAL PROPERTY LAW
Cl IAPTER IV 131
LAW i ,11\I ·1l"<AUEMARK

mcignetisrn ot Lf1e 5ymbol he has er-eatt>d, Lhe owner can obtain legal
redress. ' Tradema rks, pub. IJy John Wiley 8t Sons, Inc., 2cl ed. p.
19 [ 1993 l.) Archaeological discoveries of ancient c_;reek
If we go back to the definition of a trademark, it is clear that its and Roman inscriptions on sculptural works, pctmlings,
purpose is to distinguish one's goods from another. The function of vases, precious stones, glassworks, bricks, etc. reveal
trademark has been expanded as explained by the Supreme Court in some features which are thought to be marks or symbols.
the case of Mirpuri v. Court of Appeals, G.R. No. 114508, November These marks were affixed by the creator or m3ker of
19, 1999, thus: the article, or by public authorities as indicators for the
payment of tax, for disclosing state monopoly, or devices
"In Ph ilippine j urisprudence, the function of a for the settlement of accounts between an entrepreneur
t rademark ls to point out distinctly t he origin or ownership and his workmen. (Stephen P. Ladas, Patents, Trademarks,
of t he goods to which it is affixed; to secure to l1im, wl10 has and Related Rights, National and International Protection
been instrumental in bringing into the market a superior [Harvard University Press], vol. 1, pp. 3-4 [ 1975].)
article of merchandise, the frui t of his industr y and skill;
to assure the public that they are procuring the genuine "In the Middle Ages, the use of many kinds of marks
article; to prevent fraud and imposition; and to protect the on a variety of goods was commonplace. Fif teenth century
manufacturer against substitution and sale of an inferior England saw the compulsory use of identifying marks in
and clifferent article as his product. (Gabriel v. Perez, 55 certain trades. There were tl1e bak er's mark on bread,
SCRA 406,417 [1974] cit ing 52 Am Jur, p. 508; Etepha v. bottlemaker's marks, smith's marks, tanner's marks,
Director of Patents, 16 SCRA 495. 497 [ 1966); see also watermarks on paper, elc. (Foster and Shook, supra, at 20.)
Phil. Refining Co ., Inc. v. Ng Sam, 115 SCRA 472, 476-477 Every guild had its own mark and every master belonging
[ 1982); also cited in Agpalo, Traclemark Law and Practice to it had a special mark of his own. The marks were not
in the Ph ilippines, p. 5 [1990). ) trademarks but pol.ice marks compulsorily imposed by the
sovereign to let t h~ public know that the goods were not
"Modern authorities on trademark law view trade- " foreign" goods smuggled into o1n area where the guild had
marks as performing three distinct functions: ( 1) they a monopoly, as well as to aid in tracing defective work or
indicate origin or ownership of t he articles to which they poor craftsmanship to t he artisan. (Id., at 20-21; Ladas,
are attached; (2) they guarantee that those articles come supra, vol. 1, at 4-5; see Frank I. Schechter, The Rational
up to a certain standard of quality; and ( 3) they advertise Basis of Trademark Protection, 40 Harvard I.aw Review,
the articles they symbolize. (Dissenting Opinion of Justice 813, 814 [ 1927); Callmann, supra, vol. 2, p. 807; see also
Florentino Feliciano in Philip Morris, Inc. v. Court of Appeals, Richard Wincor and Irving Mandell, Copyrigh t, Patents and
224 SCRA 576, 624 [1993); see William Jay Gross, The Trademarks : The Protection of Intellectual and Industrial
Territorial Scope of Trademark Rights, Univ. of Miami Property, at 72 [1980) .) Fo,- a similar reason, merchants
Law Review, vol 44: 107S [March 1990]; see also Rudolf also used merchants' marks. Merchants dealt i n goods
Callmann, The Law of Unfair Competition and Trademarks, acquired from many sources and the marks enabled them
vol. 2, pp. 804 -8 14 [1945].) to identify and r eclaim their goods upon r ecovery after
"Symbols have been used to identify the ownership shipwreck or piracy. ( Foster and Shook, supra, al 20;
or origin of articles for several centuries. (Harry D. Nims, Schechter, supra, at 814.)'
The Law of Unfair Competition and Ti-ademarks, 4th ed., "With constant use, the mark acquired popula1·ity and
pub. by Baker, Voorhis & Co., I nc., vol. 1, p, 509 [1947].) became voluntarily adopted. It was not intended to create
As early as 5 ,000 B.C., markings on pottery have been or continue monopoly but to give the customer· an index or
found by archaeologi sts. Cave d1·awings in southwestern guarantee of quality. (Callmann, supra, vol. 2, a t 808.) It
Europe show bison with symbols on their fl anks. (Frank was fn the late 18th century when the industrial revolution
H. Foster and Robert L. Shook, Patents, Copyrights, and gave rise to mass production and distribution of consumer
goods that the mark became an important instrumentality
of trade and commerce. (Foster and Shook, supra, at 22-
5
Mishaw,,ku Mfg. Cu. " Kre.l'g e Co., 3 16 U.S. 203, 53 USPQ 323 (' 1942) cited in Societe 23; Nims, supra, at 511.) By this t ime, trademarks did not
1-: Court uj //ppco!s, C.R. No. 1120{2, April 4, 2001.
Des Prvd1'it, Ne.1·11,'. S.A.
merely identify the goods; t hey also indicated the goods to
132 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 133
LAW ON TRADEMARK

be of satisfactory quality, and t her eby stimulated further manufacture or sell the product itself. Goodwill is no longer
pur chases by the consuming public. (Callmann, supra, confined to the terri tory of actual market penetration; it
vol. 2, at 809-910.) Eventually, they came to symbolize extends to zones where the m arked article has been fixed
the goodwill and business reputation of the owner of in t he public mind through advertising. (Gross, supra,
the product and became a property right protected by at 1099- 1100; see also Dissenting opinion of Justice
law. ( Foster and Shook, supra, at 21-22.) The common , Feliciano in Philip Morris, supra, at 625-626.) Whether
law developed the doctrine of t rademarks and trade in t he print, broadcast or electronic communicat ions
names "to prevent a person from palming off his goods medium , particularly on t he Internet, (The Internet is a
as another 's, from getting anot her's business or inj uring decent ralized computer network linked together through
his reputat ion by unfair means, and, from defrauding the routers and communications protocols that enable anyone
public." (Justice Holmes in Chadwick v. Covell, 151 Man connected to it to communicate w ith others likewise
190 , 2 3 NE 1068, 1069 (18 90]; also cited in Nims, supra, connected, regardless of physical location. Users of the
at 3 7.) Subsequently, England and t he United States I nternet have a wide variety of communication methods
enacted national legislation on trademarks as par t of t he available to them and a tremendous wealth of information
law r egulating unfair tr ade. (Ladas, supra, vol. 1, at 8 . ) t hat t hey may access. The growing popularity of t he Net
It became t he right of the tr ademark owner to exclude has been driven in large part by the World Wide Web, i.e.,
ot her s from the use of his mark, or of a confusingly similar a system that facilitates use of the Net by sorting through
mark where confusion resulted in diversion of tr ade or t he gr eat mass of information available on it. Advertising
financial injury. At t he same time, t he trademark served on the Net and cybershopping are turning the Internet into
as a warning against the imitation or faking of products a commercial marketplace. - Maureen O'Rourke, Fencing
to prev ent t he imposition of fraud upon the public. (See Cyberspace : Drawing Borders in a Virt ual World, Minnesota
also Dissent ing Opinion of Justice Feliciano in Philip Morris, Law Review, vol. 1,2: 609-611, 615-6 18 [Feb. 1998].)
supra, at 624-625. ) advertising has paved the way for growth and expansion
of the product by creating and earning a reputation that
'Today, the trademark is not merely a symbol of origin
crosses over borders, vi1tually turning t he whole world into
and goodwill ; it is o~en the most effective agent for the
one vast marketplace."
actual creation and protection of goodwill. It im prints upon
the public mind an anonymous and impersonal guaranty Finally, w hat t he Supreme Court said in a case6 decided in 19 84
of sat isfaction, creating a desire for further satisfaction. In still r esonates as If it was said just today:
other words, the mark actually sells the goods. (Schechter,
supra .) Trademarks have become products In their own " One final point . It is essential that we stress our con-
right , valued as stat us symbols and indicators of the cern at the seeming inability of law enforcement officials
prefer ences and aspirations of t hose who use t hem - Alex t o stem t he t ide of fake and counterfeit consumer items
Kozinski, Trademarks Unplugged, New York University Law flooding t he Philippine market or exported abroad from our
Review, vol. 68 : 960, 965-966 (Oct. 1993). The mark country. The greater victim is not so much t he manufactur-
has become the " silent salesman," the conduit through er whose product is being faked but t he Filipino consuming
which dir ect contact bet ween the t rademark owner and public and in t he case of exportations, our image abroad.
the consumer is assured. l t has Invaded popular culture No less than the President, in issuing Executive Order No.
in ways never ant icipated that it has become a more 9 13 dat ed October 7, 1983 to strengthen the powers of
convincing selling point than even t he quality of the article the Minist er of Trade and I ndust ry for t he protection of
to which it refers. {Kozinski, supra, at 965-966; Callmann, consum ers, stated that, among other acts, the dum ping
supra, vol. 2, at 881-812 (1945], cit ing Schechter, The of substa ndard, imitated, hazardous, and cheap goods,
Historica l Foundat ions of the Law Relat ing to Trademarks the infringement of internationally known tra de names
[1 925), Note 15, p. 64. ) I n t he last half cent ury, the and trademarks, and the unfair t rade practices of business
unparalle led growth of industry and t he rapid development firms has reached such proportions as to constitute eco-
of communications technology have enabled t rademarks,
trade names and ot her distinct ive signs of a product to
penetrate regions where t he owner does not actually
 134 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 135
LAW ON TRADEMARI<

nomic sabotage. We buy a kitchen appliance, a household the Philippines, during the life of his widow, if any, except
tool, perfume, face powder, other toilet articles, watches, by written consent of t he widow. (Sec. 123.l[c])
brandy or whisky, and items of clothing like jeans, T-shirts,
neckties, etc. - t he list is quite lengthy - and pay good 4. Is identical with a registered mark belonging to a different
money relying on the brand name as guarantee of its qual- pr oprietor or a mark with an earlier filing or priority date,
ity and genuine nature only to explode in bitter fru st ration in r espect of: (a) the same goods or services; (b) or closely
and helpless anger because the purchased item turns out related goods or services; ( c) or if it nearly resembles such
to be a shoddy imitation, albeit a clever looking counter- a mark as to be likely to deceive or cause con fusion . (Sec.
feit, of t he quality product. Judges all over the country 123.l[d])
are well advised to remembe1· that court processes should 5. Is ident ical with, or confusingly similar to, or constitutes a
not be used as instruments to, unwittingly or otherwise, translation of a mark which is considered by the competent
aid counterfeiters and intellectual pirates, t ie the hands of authority of the Philippines to be well-known intern ationally
the law as i t seeks to protect the Filipino consuming public and in t he Philippines, whet her or not it is r egister E:d here, as
and frustrate executive and administrative implementation being already the mark of a person other than the applicant
of solemn commitments pursuant to i nternational conven-
for registration, and used for identical or similar goods or
t ions and treaties."
services, provided that in determin ing whether a mark is
well -known, account shall be taken of the knowledge of
t he relevant sector of the public, ra ther than of the public
at large, including knowledge in the Philippines which has
23 NON-REGISTRA BLE MARKS been obtained as a result of the promotion of the mark.
(Sec. 123.l[ e])
23.1 Non-Registrable Marks Under Section 1 23
6. Is identical witl:i, or con fusingly sim ilar to, 01· constitutes a
lfZ'I Marks may be registered as long as it does not fall under any translation of a mark considered well-known in accorda nce
11.:U cat egor y ment ioned in Section 123. with the preceding paragraph, which is registered in the
Phili ppines with respect to goods or services which ar e
Section 123 enumerates marks that cannot be registered. Many not similar to those with respect to which registration
of the cases- and the confusion-are based on some of the items in is applied for, provided that use of the mark in relat ion
the enumeration . For purposes of brevity and t o avoid contributing to to those goods or services would indicate a connection
t he confusion, care has been exerted to avoid discussing cases that between those goods or services, and the owner of the
tend to cause misunderstanding. Those that can be easily understood regist ered mark, provided further that the interests of the
are also left untouched. owner of the registered mark are likely to be damaged by
The law thus provides under Section 123 that a.mark cannot be such use. ( Sec. 123.l[f])
registered if it: 7 . Is likely to m islead the public, particularly as to the nature,
1. Consists of immoral, deceptive or scandalous matter, or quality, characteristics or geographical origin of the goods
matter which may disparage or falsely suggest a connection or services. (Sec. 123.l [ g])
with persons, l iving or dead, institutions, beliefs, or national 8 . Consists exclusively of signs that are generic for the goods
symbols, or bring t hem into contempt or disr epute. (Sec. or services that they seek to identify. (Sec. 123.l [h])
123. l [ a])
9. Consists exclusively of signs or of indications that have
2. Consists of the flag or coat of arms or other insignia of the become customary or usual to designate the goods
Philippines or any of its political subdivisions, or of any or services in everyday language or in bona fide and
foreign nation, or any sim ulation t hereof. (Sec. 123.l[ b] ) established trad e practice. (Sec. 123.l [i])
3. Consists of a name, portrait or signature identifying a 10. Consists exclusively of signs or of indications that may
particular living individual except by his written consent, or serve in tra de to designate the kind, quality, quantity, in-
the name, signature, or portrait of a deceased President of t ended purpose, value, geographical origin, time or pro-
136 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 137
LAW ON TRADEMARK

duction of the goods or re ndering of the services, or other

characteristics of t he goods or services. (Sec. 123. l [j]) t he Philippines_on 2...)an.ui3r:y 1982 by New York Garments,
a domestic co__rporation and Fr edco's predecessor-in- inter est.
1. 1. Co nsists of shapes that may be necessitated by t echnical The regist ration was later c1ssJgned t o Romeo Chuateco, a
factors o r by the nature of the goods themselves or factors member of the family that owned New York Garments:- -
that affect their intrinsic value. (Sec. 123. l [k])
Fredco alleged that it was formed and regi_st/;!red, w jtl1 the
12. Consists of color alone, unless defined by a given form. Securities,- and Excha.n ge Commission· on 9 Novemb(:lr~ 'l 99 5 , -
(Se c. 123.l [ l]) and ha.d since then handled t he manufacture, pr omotioh and
13. Is contr ary to public order or morality. (Sec. 123 .l[m]) marketing of "Harvard" clothing articles. Fredco alleg~d t hat
at the time of issuance of Registration No. 56561 t6 Harvard
Univer slty, New York Garments ha_ d already registered the
23.2 Falsely Suggesting Connection
mark "Ha1;vard1' for goods,under Class -25. ~redco alleged t hat
The law disallows false suggestion of connection to a person, an the regjstratioh was cancelled on l O July 1998 when New
institut ion , o r a belief. Actual claim of connection is unnecessary. York ~~~r!Jlents inadve,tently f~i!!!9..t9- file an._affidavit of u_se/
Also, the popularity of the person or the instltution is in1material. But non- ~§~ .on ..tl:\eJ'ifth annhier.sai:y_of, the registration but the
of course, the popularity does matter for the infringers for-this is the right tQ the mark "Harvard" remained with its predecessor
r ationale of s uch prohibition, i. e. , t h at no on'e may unj ust ly ride on • New York Garments and now w it h Fr e_9co. ·
the goodw ill of another. Har~~~ University, on the other hand., alleged that it is the
l( wful 0)n ner of the name and mark "Harvard" in numerous
coun! ries worldwide, including the P.hillppines. . .
. I LLUSTRATIVl: -CASE 4 -2 . The name and mar;k " Harvard'' was ;:idopted in 1639 .as the
name of Harvard_'~liege of Camoridge; 7vla'ssachusetts,
U.S.A. The name and mark " Harvq.[9" was allegedly used in
Goodwill Hunt ing commerce as early .as 1872. Harvard Unlversi!Y is over 350
years old and is a _higl;lly r egarded institution of higher learning
Title: i ,, ln the United . §~ates and throughbUt..the world. Harvard
.-f.redco Manufacturing Corp. v. .EJ:esident and Fellows of University promotes, uses, anq advertises its name " Harvard"
~ ar vard College, G.R. No. 185917, June 1, 2011 through various publications, services, and products in foreign
countries, including t he Ph(lippines. Harvard L!niversity Further
Facts: ailegedttiat the name and the mark Have been rated as one
of the most famous 'brands in thew'"orld, valued between US
Fredco M;:inufacturing Corporation (Fr'edco), a Philippine
$750,000,000 and US $1,000,000,000.
corporation filed a Petition for CancellatLQn of Registration No.
56561 befo~the Bureauof.:Cegal Affairs of the lntelfectual . Harvard University .alleged that In, Marf h 2QO~:?:,, iUHsco,:,iered ,
P/ o~perty ·difice (lP01 againss,..respondents: e·resident . and through its inter;national trademark watch r5'rogram, Fredco's
Fellows of_Harvard College (l;Jarvard Universityf a corporation website www.harvard-usa.com . The website advertises and
organized and existing under the laws of Massachusetts, promotes t he brand name ''.H arvard Jeans USA" w_ithout
U ited States of America. . . ' --~ . Harvard University's cQn§.tnt. The website's rn11in page shows
an oblong ·logo •bearing the mark "Harvard Jeans USA® ,"
The r~gistration (issued o~· Nov~mber 25, 1993) in qu~sti~n
"Established 1936," and " Cambridge, Massachusetts." On
pertains to the mark "Harvard Veritas Shield Symbol" for
20 April 2004, Harvard .University filed an administrative
qecals , toie bags, servin~ys, sweatshirts, t -shirts, hats
complaint agc1inst Fredeo before t'1e JPO for trademark
•·and flylhg discs. , ·:_ '
infrrngement and/or unfair..,.. competition wit .h damages.
Fredco alleged that t he mark "Harvard" for t-shlrts, polo
Harvard University alleged that its valid and existing
shirts, sandos, briefs, j ackets and slacks was first used in
certlf!_ca!es of trademark registration In the Phil!ppines are:
138 ESSENTIALS OF INTELLECTUAL PRO PERTY LAW CHAPTER IV 139
LAW ON TRADEMARK

,mark Regi~ . ·,. o. 56.5 6,l iss11ed :on ?? No: .5656 l is i;,ot only the word \'Harvard;, b.ut ·also t he logo,
rd yeritas Shield Desigf( of
emblem :br s mbol Harvar d Univ rsi .· T 1e Dir · r General

rk, i;; t J?c! ,

e owner,:
r Genei·al n -.
.niversity's
.
'~egi$tr<!ti9.
. .
140 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 141
LAW ON TRADEMARI<

. ' -
U11,d er .Section 2 of ~~pLJblic Act No. 16~, as am_ended (8-.A. Affairs of the IPO, ~redcQ. .,w~s.•oo :10·· t:i~, r~giiW'iJ.f1t or :
•. · · before a fra.d~mar.k ca,n_be reg1ste,:1:e presump.t~ vj:. .Q~rl$;LQf .tbe ·
.. ~ -~r.•·'r .
-- · e rce for. not less ti
ling.pf.an. Fr:.eCICo's registration
e'" been ·· all9we.d since
a'Har.v~rd Umiv.ersi
.ar'd''. 'aild its ., .
aefltJSetts
1, :; .
'' (als
~-r. . f , .

ines pf •its trade ,

142 ESSENTIJ\LS OF I NTELLECTUAL PROPERTY LAW CHAPTER IV 143
LAW ON T RADEMARK

hundred pounds. The earliest known official reference

of such trade name In the Philippines under Article 8 of the to Harvard as a "university" rather than "college"
Paris Convention, as well as Section 37 of R.A. No. 166 (now occurred in the new Massachusetts Constitution of
Rep. Act No. 8293). The Philippines and the United States of 1780. .
America are both signatories to the Paris Convention for the
Protection of Industrial Properi:y (Paris Convention). · Records also show that the first u·se of the name
HARVARD was in 1638 for educational services,
XXX XXX XXX
potic:;y_ cours~s of instructions and . t rlaining , at t he .
Thus, u'n de} Philippine law, a trade nan,e of a national of university level. It has a Charter. Its first commercial
a State that is a party to the Paris Convention, whether or use of the name or mark HARVARD for Class 25 was
not the t rade name forms part of a trademark, is protected on 31 December 1953 covei::ed by UPTON Reg. No.
"w.ithout th_e obligatron of filing or registration." · 2,119;339 and 2,101,295. Assuming in arguendo,
that the Appellate may have used the mark HARVARD
" Harvard" is the trade name of the world famous ,Harvard in the Philippines ahead of t he Appellant, it still
Univ~rsity, and it is also a trademark of Harvard University. cannot be denied that t he Appellant's,use t hereof was
Under Attide 8 of the Paris Gonventfon, as well as Section 3J: decades, even centu ries, ahead of t he Appellee's.
of R.A. No. 166, Harvard University is entitled to protection More importantly, the name HARVARD was the name
in the Philippines of its t rade name "Harvard" even without of a person whose deeds were considered to be a
registration of such t rade name in tf,e Ph11ippines. Thi~ .means cornerstohe of the university. ·The Appellant 's logos,
that no educational ent ity in the Philippines can use t he t rade emblems or symbols are owned by Harvard Univer-
name " Harvard" without the consent of Harvard University. sity. The name HARVARD and the logos, emblems or
Likewise, no entity in the Philippines can claim, expressly or symbols are ende.mic and cannot be separatetJ from
impli;e dly through the use of the name ahd mark "Harvard,'' t he institution. •
that its products or services are authorized, approved, or
licensed by, or sourced from, Harvard University without the Finally, in its assailed Decisioi:i, the Court of Appeals r uled:
latter's consent.
Records show t hat Harvard University is the oldest
4 . . Even without applying the Paris Convention, Harvard and one of t he foremost educational institutions in
University
~1
can Invoke , Section 4(a)- _of
-·
R.A., No. 166-;,_ which
, -..· 1
tr.he ,United States, it being established in 1636. It Is
ptoli_tbits the registration of a mark "whlc}j may dfspar;:1ge located primarily in Cambridge, Massachusetts and
or falsely suggest a connection with persons, living or dead,- was named after John Harvard, a puritan minister
instltutions. - In t he assailed Decision of t he Office of the who left to the college his books and half of his estat e ..
"Direi;;tor l;:leqefal dated 21. Apr:il 2008, the Director ,Genel"(iil :
found that: The mark "Harvard College" was first used in
commerce ln the United States in 1638 for educational
,. · Trafi_ed to its roots ~[- origin! HARV.t>.R!? Is n~t an serviqes, _spedfic1;1Uy, providing cour$~$ of in.struction , ,
Jordinary word . ':It ref~rs· to ntf other t han Harvard and training at the university level ;(Class 41) . Its •
University, a recognized and respected institution of application for registration with the United States
h igher learning located in Cambridge, Massachusetts, Patent and :rrademark Office was filed on September
l;J.S.A. j nitially· referre9 to slmply as · "the ·new ' 20, 2000 and .it was registerea on October il.6, 2001.
The marks "Harvard" and " Harvard Veritas 'Shield'
college," the Institution was named ''Harvard College"
on 13 March 1639, after its first principal donor, a Symbol" were first used in commerce in the United
young clergyman named John Harvard. A graduate States on p ecember 31, 1953 for athletic ul1iforrns,
of Emmanuel College, cambridge ln England, )ohn boxer shorts, briefs, caps, coats, leather coats,
Harvard bequeathed about four .Hundred books in his sports coats, gym shorts, 1nfant jackets, leather
w ill to form t he basis of the college library collection, jackets, night shirts, shirts, socks, sweat pants,
·along with half his person~! wealth worth several sweatshi'rts, sweaters, and underwear (Class 25). The
 144 ESSENTIALS OF INTELLECTUAL PRO PERTY LAW CHAPTER IV 145
LAW ON rRADEMAR I<

those cha 1·ged with trademark infringement is the non-reg istrabil ity
plications for registration _with the USPTO "w/ · of the mark for whatever reason.
d on Sept 9; 1996, the mark "
· · · · . r 9, t9~7 an.9

Facts: . .

Responde,nf Is>i:ibj,5>. 1;:eodoro:~.t.: . ith .Juan,

\~aJind19 •?n?, later as. sol,e'proprie uousLr..u~ed .,
. ~..:4T,tbJfY, both. i:IS a tr_~c;t~-f'l'\at,' ~-□· 1;,~~,'a; tr;ade~_liame,
in .tfie m~1~uJJftUC,f};~~j~ I!:! oti;St1p.pei;s.~f.loes~ .and -indoo
:t:€s~bal[s-srncf J:t1Q; He formally r.egrstered i~ as a trademar
on Septembe!:,__;_;!i ._JQ!,;l., and ·as _a .t'519~ -jJ9£QeM Jc1_n uary 3,
.-} ~IP.• The g.r:orth of His busin~$S is ·a thrilling ~pie of FHipin
•u;;try and busines~;eapadty. ·Startihg In ·· · cur,e shop i
10 .W1tha m.o dest capital of,P210 b·ut · ·
' nlfmit ···
OU i
. .
' .

23.3 Identical with registered mark

Among the reasons why traders would want to have their trademarks
re~istered is becau~e they want to use it exclusively. One might
th1~k that traders w ill shy away from using a mark that is already
registered by another but, surprising ly, t here are countless attempts
to use identical marks.
The law thus provides remedies in order to protect the interest C
of the proprietors of registered marks. However, there seems to be a (liis. was brou - •. n o.f ,
need to prove the regi str ability of the mark since the usual defense of
 146 E~S[~!Tl /\15 OF TNTHLECTUAL PROPERTY LAW Cl-tAPTER IV 147
LAW ON TRAf)FiVlil.Plf

the appellee t hat he consulted l1is attorneys and eventually Issue :

_ brnught the present suit." , Whether Ana Ang can register the Trademark "Ang Tibay'' for
. - ~ .
· _eitr:ia! court (J
•·, • i ~.,~ - ~ , - ~ ~
· her products pants and shirts:
't,fr\iin tr,
rquntls t Rul ing :, NO . . ··, .
9}J"Ql,ff~'. 1. ''An~"'i(b~,Y" is ;f:i1,de;~riptive~erm. We find it necessary
rl-Q_exclu , ,
to go i rytq the et5>m0Jogy and mea1iing of the Tagalog words
tl1ere had beer,(,1 the said tra
the def§,,nd~l:i ,,. ' which· it ''Ang . TJb~y" _to 'dete~rQi,ne whether they .are a descriptive
essentr:?11 'i ntjff, T;h t~m, , J.e:, _1<Yh:ethe r they rela~e tqi tile quality or description
iv'i~ion 011-' f Jlclstic of th,e me~f handis~ to which respondeQt: has applled them as
·- Padilli:i; · es1 wit a trade,~rr:i'ark', Tl1e word "ang" is" a definite article meaning
ill'a -i;l$ 61din "the'1 fr'f, english. It is, atso used ,:i's an a.( \vert), a
contraction
nintefrui'J l6 i: of th!=, """.ord "anong" (What or hoyv), For-in.sfance, Instead of
_Llre of'sl)1 ' _ saying_,.:'Ariong ',;larJdi:I!" _("HovY ,becJutiful!"), ~ve ordinarily say,
ire,d.,a, seQ . "Ang .~anda !" Tiqay is a root word from "'1hich are derived t he
the two tra _verb hlai:rnatibay (to strengthen)} the nouns pagl<amatibay
. ar'ne ,class; ·anct (strength; durability)_1 k-atibawrn (proof, support, strength),
e-mad< constitutes a . arid 7 katibay~t ibayan (superi.or strei,gth); anc( the adjectives
666 . .The .defendant DJr o . Commerce ctld not a . matibay (strong, dur.able, · lastihg), n:3p,a_katibay (very
.'.:the c;l~Cision ofti)e C . ~....-... • . • strong), kasintlbaY, or . magkasintiba'y (as :strong as, or of
,, . !'lh for tile pettt icii-i'e I . - ' brief m akes a '• • / equal strengt h). Thi? phrase .;!P-ng Tib?Jy'' is. an exclamation
dge-liammer a . .. ' ~~~po_n ~ent's 9.f qoti1 · · ·. iratiqo o.f strengt h -Pr ~lur.abili,tY:- For insta)"'rt e,
~ "Ang:Jihay."
' -- ';: . phrase
,, "An
' g.. on~ w" fails to break an-'9bject £1,Xcialms ,''~ng
· ~m _loy~ct· · the . artrcles · · 1bay! ;I'?~, used i,n a .s~nt<trice
·: . . , ' ,e6;i'y: . o!'.' "H w u · ble yo1:.1r shoes
ing:'1,,.- adj~c,tiveN. to ·
. t . ay, "•ang tibay
) ,r
. r .s~o'es," bu_t
' "(
;/ ;_.
,,~ escriptlve
Q W.,;butJ a1iier
R y :Irn&'·le,gally
at' _ .. ~.me:,. 1h thi~ .
~f'.r\ i ;, · ·,
1
.tiE/ ,p¢titior,1£T
g~t~e regfotr,{-
F' Ji~r.product2
. . a.nd .
.-,•• ,w.ords
uaHi:· Commerce was
, .1baY:' ·we
.n:, t ive· and \.~d ('\0,;~ }~q_~y) wen;! .
• ~ ,:(' •

cirm;:opµr:ly bl;l_regarded•~"! - artc1 u o · - r 1trar·y In the-legal

·• ).< . •• , • ' .
~~~ -- .e.t::.l,egpl1y !jsed and
n.s'.~:, They 1¢it~ ~everal G imiiar,.\\Vords ~ave valld . . . _ . . ri'i:S, $tuftifying ''and
en sustain ed ?JS valid,; t ch. as ')'HoleproQf': puer ·en9 o\he1cwis~; _s~iggestive of~n<fu
(" h0si'ery; '.'Ideal" fo r too d " Fasrijbnknit'; for story_ . . _ . , el f_or"the ~e~it;i6n$r says th_ a't't;he
tk'ties and sweaters. . · tunct,on .. . · ·s to point distinctively, ,either by its
' J,- • • • ~ '!
. ; ·. ~! ,i;;.;.. ''j, :,.1 '_ ,. :
 CHAl'lER I V 149
148 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
LAW ON TRADEMARK

"(a) in Acoje Minmg Co., I nc. v. Director of Patent,

own meaning or by association, to the origin or ownership we ordered the approva l of /\coje Mining's application for
of the wares to which it is applled. That is correct, and we registration of the trademark LOTUS for i ts soy sauce even
find that "Ang Tibay," as used by the respondent to designate t hough Philippine Refining Company had prior registration
his wares, had exactly performed thc,1t function for twenty- • and use of such identical mark for its edible oil which, like
two years before the petitioner adopted it as a trade-mark · soy sauce, also belonged to Class 47;
in her own business. Ang Tibay shoes and slippers are, by "( b) in Philippine Refining Co., Inc. v. Ng Sam
association, known throughout the Philipplr,es as proqucts of and Director of Patents, we upheld the Patent Director's
the Ang Tibay factory owned and operated by the respondent registration of the same trademark CAMIA for Ng Sam's
Torioio Teodoro. ham under Class 4 7 , despite Philippine Refining Company's
2_. Toriblo 's products shoes. Js similar to Ang's products,• prior trademark registrat ion and actual use of such mark
pant5 and sffirts. We t hink reasonable n1en may not disagree on its lard, butter, cooking oil (all of which belonged to
t hat shoes and shirts are not as unrelated as fountain Class 4 7), abrasive detergents, polishing materials and
pens and razor blades, for instance. The cnere relation or soaps;
association of the articles is. not cont rollin~.. As may readily · "(c) in Hickok Manufacturing Co., Inc. v. Court
be noted from what we have heretofore said, the proprietary of Appeals and Santos Um Bun Uong, we dismissed
connotation that a trade-mark or trade-name has acquired
Hickok's petit ion to cancel private respondent's HICKOK
is of more paramount consideration. The Court of. Appeals. trademark registration for its Marikina shoes as against
found in this case that by uninterrupted and exclusive use
petitioner's earlier regist ration of the same trademark for
since 1910 of respondent 's registered trade-mark on slippers
handkerchiefs, briefs, belts and wallets;
and_shoes manufactured by him, it has come to indicate
the qrigin and ownership of said goods. It js_certainly not "(d) in Shell Company of the Philippines v. Court of
farfetched to surmise that the selection by petitioner of the Appeals, in a m inute resolution, we dismissed t he petition
same trade-mark for pants and shirts was motivated by a for review for lack of merit and affirmed the Pat ent Office's
dEJSir~ to get a free ride on the reputa~ion and selling power · registration of the trademark SHELL used in the cigarettes
it has acquired at the hands of the respondent. As observed manufactured by respondent Fortune Tobacco Corporation,
in another case, the f!eld from which a person may select notwithstanding Shell Company's opposit ion as the prior
a t racte-mar~is praotically unlir:nfted,, and hence there is no , registrant of the same t rademark for its gasoline and other
e~tuse· for i mpinging u pon or even dosely approaching the-. petroleum products;
mar~J~f a business rival. I n t he unlimited field of choice, what
couli:I have be.en petitioner's purpose in $electing "Ang Tibay" "(e) in Esso Standard Eastern, Inc. v. Court of
rf not,for -l ts..fame? · .,. . · ' Appeals, we dismissed ESSO's complaint for trademark
infringement against United Cigarette Corporation and
allowed the latter to use the t rademark ESSO for its
cigarettes, t he same trademark used by ESSO for its
23.4 Identity of Mark Alone is Not Trademark Infringem ent petroleum products; and

The Supreme Court explained in Mighty Corporation v. E & J Gallo "(f) in Canon Kabushiki Kaisha v. Court of Appeals
Winery' t hat t he use of identica l mark, if taken alone, does not and NSR Rubber Corporation, we affirmed the rulings of
automatically guarantee a finding of trademark infringement, viz.: the Patent Office and t he CA that NSR Rubber Corporation
could use the t rademark CANON for its sandals (Class 25)
"But, as held in the following cases, the use of an despite Canon Kabushiki Kaisha's prior registration and use
ident ical mark does not, by itself, lead to a legal conclusion of the same trademark for its paints, chemical products,
t hat t here is trademark infringement: toner and dyestuff (Class 2)."

'G. R. N o. 154342. July 14, 2004

150 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER IV 15 1
LAW ON TRADEMARK

23.5 Colorable Imitation of a Registered Mark

, spent Pl0 ,5 millib'n'in ?tdvertisement for ''Big.Mac" harnb0rg'er
The law likewise disallows use of marks t hat resembles a registered ·s nd · · . , ·
ma rk if such is likely to deceive or cause confusion .
, . k Burger, Inc. (;'tidsponden:t corpo-
. But what is colorable imitation? This was answered in Etepha br ora:trq11 W~iqh' o' erat~s'Jat fqod
v. D1rector of Patents, 8 where colorable im itation was defined as that rQ 1i;mces.,
which denotes such a close or ingenious imitation as to be calculated 'enu ...sar;id-'
to deceive ordinary persons, or such a resem blance to the original as s. , B. D:V,
to deceive an ordinary purchaser giving such attention as a purchaser Wiliiam Araceli
usually gives, as to ca use him to purchase the one supposing it to be ' rlvate res o . · ts aJe t h_e:
the other. - ' , ·' ·.. ' .

. ~ ,j, ' '

· opio9~d : . ·
und that ''l;I s a c· .·. ron of
ed '
1
.Bm.;,~;i .the/ oclucts.,
also1nforrri' ·onde.n(
" . . ·ndent.

8
16 SCRA 495 (1966).
152 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 153
LAW ON TRADEMARK

. i't/J,J~ .
. '
.. ~ng: YES ' · - . Respondents:further claim that petitioners U$ethe "Big Mac;,
, · ·_.c,··, .~ . _>, mar.k only ori pe't itionets' doubl.e -decker hamburgers, wriil1=
·. . I 9~, Mr;Donald's owners ' resp9nd~rit?, us.e the "Big Mal<" ·mark on . hamblirgers and
·.v e" and t hus not If ~ ther products like siopao, no_odles and Riiiz9. ResAonctents
· 166 C'Segioi' · lsq p . ~tittoriers :sell their Big··
.e.-. '• . . boX' With.the )'M
· . letters at a pr,ic,~;
h ·ondents. In 'cqj1tr: -
ti , rs in plastipwrapp
e in't out that petitio
i - • .. s- with .dr ive,lhl' ·
·o t~sf1 s. .> . · ·, •
. . .
hese poni;le~ts dt e.
mdisp dents use t K
on ham · . . . ood productt i i_
with t ~ered ')lark "Bi .- . .. a
· ~arnbu le or triple-decker,. ar.id whether
wrapp · r.ofoam, "ii( retnaihs the · same
h · veri r:esppnc;Jents' use of tile "Big .
154 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
CHAPTER I V 155
LAW o r,1 TRADEMARK

,..sums of mon!;!'y' for said mark:s extensive promotion in tri-

Cebu City Whf!r~ it has bee,n ~9ing
;{ned'fa~ -~ -P.~.c:•a·11y in
bcrs-irYefs long before. the pe,.t ittoner open.ed, its outlet-thereat
so'metime
!
fn ,1992;
: :,: : ' ,. ' "
arid
.
that its use of.said mar k . would not
"<".':",-. ..... ~..., ., . . .") .- - •

· :copfuse . afl;jliattqn· wl.th t b · service.s

fooa_p,fi5J]iuj:ts pecaus :esign
· ·· · eJ'-"9 (2} · ·
\:eci'°De,\:ern ~e~ 2,8 , . .ng.
minan~e of: the letter ''M;"' a . . . . es
oth t he "IYIACJQY''. 'a'ntl~ tli.e- " MCDONALDS''
tie .(£?JlclJ.!slon tliatt~F,1te i~ \:bnfusing Simil~ri~}
·: especially · since bo.t h ate used; on •a most
ucts : falling under Classes,; ·29 f the
·" cation of Goods,/.e., food . 'I . ' fen ts
etitip ne)"s' opposltion and e 'ected·t he
I l(FZ. ,: ~
, • ,n

, t h'e 0pposition to.th'e r~gistration ·of ·

Y& DEVICE for . ' .. n
.rbecue, bu·rge i,
andwiche lo-halo, an s:tea . s 1s, t
' ' . ;;,-··· :
 CHAPTER JV JS7
156 ESSENTIALS or INTELLECTUAL PROPERTY LAW
I.AW Q~I TRADEMARK

/1"ssue : Thus with the predominance of the letter "M," and prefixes
"MaciMc" found in both marks, the inevit able conclusion
~het her respondent 's " Macjoy &. Device" mark is confusingly is t here is confusing similarity between t he trademc1rk s
similar to petitioner's "McDonald's'' marks? McDonald 's .marks and "MACJOY AND DEVICE" especially
considering t he fact that both marks are ·b ei ng used on
·w4&g;'.'YES ' " almost the .same pr oducts. falling under Classes 29 and 30
(P. There· ;i; t,cmfusing similarity &~tween the t rademarks of the -International Classification of Goods, i.e., Food and
McDonald's marks and "MAOOY AND DEVICE." Applying the ingredients of food.
dominancy tesUo the instant case, the Court finds that herein
pe titioner's ':)\!1CD0NALp;5'~ and respondent's "MACJOY,,
rne.i:ks.:._are .9onf.l,!singly similar· wlt h each other such that an
~ ina ry purchaser can c~nclude an a~sociation or .tela,tion 23 .6 Confusion in Trademark Infringement
betwe'en t he marks. ~ ·•
The cases quoted above show that t he court's finding that there is
To begin with, both marks use t he corporate "M" design logo likelihood of confusion is tantamount to a finding of infringemen t.
and the prefixes "Mc" and/or "Mac" as dominan t features. Under standi ng this confusion is therefore essential.
The fi r$t letter "M" in both . marks puts emphasis on t he
There are two types of confusion in trademark infringement:
prefixes ''Mc" and/or "Mac" by t h e similar way i n which they
are depicted, i.e., in an ar ch -like, capitalized and · stylized 1. Confusion of goods
manner.
2. Confusion of business
For sure, it-is the prefix "Mc," an abbreviation of''Mac," which
visuall y and aurally catche~ the attentJon of the consuming There is "confusron of goods" when an otherwise prudent
public·. Verily, the word "MACJOY" attracts attention the same purchaser is induced to purchase one product in the belief that he is
,way as did ''McDonalds," "Ma.c f:ries," " McSpag hett l," 1'McDo," purchasing another, in which case defendant's goods are then bought
"Big Mac" an d the rest of t he MCDONALD'S marks which all as the plain tiff's and its poor quality reflects badly on the plaintiff's
½!.~e the pr~fixes Mc and/or Mac. reputation.
Besides and most i mportantly, bc;,th t rad emarks ar~ used in There is "confusion of business" when the goods of the part ies
the sal e of fastfood pr'o ducts. lndisput'a bly, 'the respondent's are different but the defendant's pr oduct can reasonably (though
t raderi:iark appllcation for the "MACJOY & DEVI CE'-' trademark mistakenly) be assumed to originate from the plaintif~, thus deceiving
covers goods under Classes 29 and 30 'of the I nter national t he public into believing t hat t here is some conn~ct1on between the
Classification of Goods, namely, fried chicken, chicken plaintiff and defendant which, in fact, does not exist .•
b'atbeq ue, burgers'; fries, · spaghetti; etc. Likewise, the
pet ition er's t111dernark registration for t he ~CPONALD'S 2 3.7 Tests to Determine Confusing Similarity Between M arks
ii'larks: i n the PHilippfnes covers goot1s·which are similar if not
identi<;:al to th~e co~ered by ,the \~spond~ht 's applic~ation. · In Emerald Garment Manufacturing ~orporati?n_v. Cou1t of
.,; l • • : :C • . . . .

2. Noted variations in the marks are inconsequential. The

. '~
[tJ Appeals, 10 the Supreme Court emphasized that m infringement
or trademark cases in the Philippin es, particularly in
d ifferer;ices and variatio11s in sWles as ·t he device •dipictlng a ascertaining whet her one trademark is confusingly similar to or is a
head of chfcken with cap and bowtie and wings sprouting on colorable imitat ion of another, no set rules can be deduced. Each case
both sid~s of the chicken "1ead, t he heart-shaped "M," and must be decided on its own merits.
the stylistic let ters in "MACJOY & DEVICE"; in contrast to the
ar ch-lik e "M" and the one-styled gothlt letter s In McDonald's
marks are of no moment. Th ese minuscule variations are •s1erliug Pl'Ocl11~1s, t,11em a1io11a/, /uc. ,i Farbe1ifabrike11 Bayer ,lkNe11gesellsclwf/. n
overshadowed by t he appearance of the predominant fea tures · SCRA 1214, 1227 ( 1969) coting 2 Calhnnn. U11{air Compe1i11011 011d Tlud,~11arl.r, 1945 Ed.,
mentioned hereinabove. p. 1006.
1°25 I SClv\ 600 ( 1995).
 1 58 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
CHAPTER IV 159
I AW ON rRADEMARK

In the same case, it was stated that in determining whether

colora ble imitation exists, jurisprud ence has developed two kinds of
(b). COMMERCIAL QUANTITIES OF THE SEIZED . ,ITEMS
tests - the Dominancy Test applied in Asia Br ewery, Inc. v. Court of WITH THE UNAUTHORIZED REPRODUCTIONS OF THE "S''
Appeals and other cases and the Holistic Test developed in De/ Monte
TRADEMARK OWNE.D ~Y PETITIO.NER · WERE 1INTENpEio· .
Corporation v. Court of Appeals and its proponent cases. FOR :· DISTRIBUTION/ IN THE PHILIPPINE MARKl;T TO ,triE
'DETRIMENT Of PETITIONER - RET\JRNING' tt-lE GOODS:.T<::;:J.'
· RESPONDENTS WI LL ADVERSELY AFf~CT THE G00DWIL('.,, ·
/; _ANp REtUTATtor( ·oF P~O~E~. ;} . " , ' ' ' '
· :•.(c) TME SEARCH ;vv.A~~Nr : c;:ouRr i~tj_: .:r:H1::·¢cfo~1 pF,. · .
: APPEALS BO:fH •ACTED WITH GRAVE ABUSE.0F DISCRETION. ·
' , (· , ' ., • '' ,>,, ·. , , '

RcJ : wARAANT CQURT QlD, NOT PRO E l:: . RE-

E ~VIDENCE PRESENJ'E · G THE SEA . ·~ H
P.LIGATION PROCE_EDlf'ilG
i'.
:._;.:.
. D TRIANbLE CASE IS· N I
• •),!" IT IS; l;IA$'EQ ON '''A DIFFERENT .FACTU8L MILIE\J.
·,l':~:N; ARY f I NDI~G OF :GUtLT. (O_R AB$ENCE THE
HE SE/,\RC:H WA~(!ANT COU . T AND THE COU
AS IMPROPf:R. ,
' .

EARCH WAR,RANT Ca°UR D ;!

. IS 01:.:EAR. .

< .

tiie os~ .of th

160 ESSEf\JTJALS OF IN rELLECTUAL PROPEf<I Y LJ.\W
CHAPTER I V 1.61
LAW ON TRADEMARK

highly identifiable to the prodycts of petitioner alone. The

CA even supported its conclusion by stating that the letter features. As can be readily observed by simply comparing
"S" has been used in so many existing trademarks, the most petitioner's Energy model, and respondent's Strong rub~er
popular of which is the trademark "S" enclosed by an inverted shoes, respondent also used the color sch~me of ~!ue, w~,t ~
triangle, which the CA says is identifiable to Superman. Such and gray utilized by petitioner. Even the desrgn and ~avehke
reaspning, however, n) isses .the entire point, Wl')lch is that patt(lrn of the mlds9le and outer sole of respondent's shoes
respt:Jnderit had·used a styllzed "S," which is the same stylized are very similar to petitioner's shoes, if not exact patterns
"S" which petitioner has a registered trademark for. The letter- thereof. At the side of the midsole near t he heel of both shoe~
"S" .1,.1sed in the Superman logo, on- the other hand, has a are two elohgated designs in practically the same location.
t:ilocl<-llke tip on the upper portion and a round elongated tip Even the outer soles of both shoes have the same number
on the lower portion. Accordingly, the comqad?.Q.n rTJ~Qe by - of ridges, five at the back and six in front. On the sld~ of
the QA of the letter ''S" used in the Superman trademark with respondent's shoes, near the upper part, appears the styllzed
petitioner's stylized "S" is not appropriate to the case at bar. "S" placed In the exact location as that of the stylized "S"
on' petit ioner's shoes. On top of the "tongue" of bot ~ shoes
Furthermore, respQ_[l_den.t.did riot Slf12ply use the l~tter "S," but· appears the stylized "S" in practically the same location and
it appears to this Court that based on the font and the size of size. Moreover, et the back of pet itioner's shoes, near ti,e
the lettering, the stylized "S_'.'..utilized by-res-pondent.is the very .,., heel counter, appears "Skechers Sport Trail" written in white
1
same stylized ' S!'' used by petitioner; a stylized "S" which is lettering. However, on respondent's shoes appears "Str?ng
unique and aistinguishes petitioner's trademark. Indubitably, Sport Trail" not iceably written in t he same white lettenng,
t he likelihood of confusion is present as· purchasers will font size direction ani:I orientation as that of petitioner's shoes.
associate the respondent 's use of the stylized " S" as having
1 On top drthe heel c~llar of petitioner's sho~s are two grayi!j,~-
been authorized by petitioner or tha.t respondent's product is , white sernr-transparent circles. Not surprisingly, respondent s
conne'cted with etftioner's business.
shoes also have two grayish-white semi-transparent circles in
2. Respondent's spoes ('la){_not be an ex~ct repi[ta ot the e:xact same location.
, petitia,ner's•shbes, 8ut'the,featµres and ovefall design are so
Based on the foregoing, this Court is at a loss as to how the
-similar and alike that confusion is highly likely. Both the R,TC
RTC and t he CA, rn applying the hoHsti(? test, ruled t liatttiere
and the CA applie;d t~e)':l_olis.ti:c Jest, i_l'.l rullng ~hat respon~en~
was no colorable imitation, when it cannot be any more clear
had ngt infringed. petit_ioner~ trademark. For its part, the
and apparentto this Courtthatttiere is colorable imitation. T~e
_RTC noted the following supposed dissimilarities q_etween th9i
J tioes, to w;~:. .- , · . . · : ~ · dissimilarities between theshoes,are too t rftling ancf frivolous
that it is jndubitable that respondent's products will cau.s e
L The mark "S" found in Strong Shoes is not confusion and mistake In the eyes of the public. Responder::it's
.,,,, enctosed -i~ ~n "oval design." · ~- · · si-ioes rrfay not be an exact replica of petitioner's shoes, but
the features and overall design are so simllar and <;1like that
2. The word "Strong" is conspicuously placed at th.e confusjori is h"ighly likely. _:. .. - . . . -:
•.f , b,ac~?lde 9.nd insoles.
. · · _ ;; · · .·- ·
3. Neither can the difference In p/ice tJ'e a complete defef/Se
3. The hang tags and labels attached to the shoes
, bea~ the · won:t "Strong" for respondent and In trademar/< ir,ftingement..In McO-onald's Corp9ratlon v. UC.
' Big Mak Burger, Inc., this Court held:
"Skechers U.S.A." for private complaina,:it;
~4. Strong shoe$ are modestly priced -.compared to Moder.:n law recognizes that the protection to
the costs of Skec.h ers Shoes. which the owner of a trademark is entitled is not
l
limited to guarding his goods or business from actual
. While then~ rnay be dissimilarities between the appearances market competition with identical or similar products
of the shoes, to this Court's mind such disslmilarities do not of the parties, but extends to all cases in which the
outweigh the stark and blatant similarities in their general use by a junior appropriator of a trademark or t rade-
162 ESSENT I ALS OF INTELLECTUAL PROPERTY LAW
CHAPTER I V 163
LAW ON TRADEMARK

rnirne 1 .likely to lead to , a ·c:o.nfusion of source, as

· · · · purchasers 'WpUld. be misled i nto
· · · ·· · · · extended his
..et seq; 53
with ttie

,/
23.8 Dominancy Test

The Dominancy Test focuses on the similarity of t he preval ent

features of the competing trademarks which might cause confusion
or deception, and t hus infringement. If t he competing trademark
conta ins the main, essential or dominant features of another, and
confusion or deception is likely to result, infringement takes place.
Duplication or im itation is not necessary; nor is it necessary t hat the
infringing label should suggest an effort to imitate. The question is
whether the use of the marks involved is likely to cause confusion or
mistake i n the m ind of the public or deceive purchasers."

11
/bid.
164 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
CHAPTER TV 165
LAW ON TRADEMARI<

Neither is it required that the mark sought to be registered

suggests an effort to imitate. Given more consideration are the aural
On A.ugust 27, 1990, a decision was rendered by the· tria l
and v isual impressions created by t he marks on the buyers of goods,
[c]ourt, presided over by Judge Jesus 0. Bersamira,_drs-
giving little weight to factors like prices, quality, sales outlets, and
market segments . 12 mJs,sing SMC's complaint because ABI "has [10~• cbri1mittec;t
·-, tr;ademark infringement or unfair competition against" $0~:.,
1
{:"(p.·189,Roi/oJ. : • . - ~· ·:; · ::·

\. SMC appealed to the Court<of Appeals (C.A.-G.R., C.V. _No.

\,2810,4); On September/ ~O; 19.91, the Court of Appeal((Six>t
· ' . ..Divrsion <;omposed of JustJce Jose C. Gamp'(fs,,,Jr., chpJt;maii/
. .a11ct 'fJOdente, and .Justices Venancio D. ,Aldetoa, ;J.r. c,mq : '
f:ilemon H. Mendo.z a, -as member$) reversed th~ t riat,cqurt. ,,
i; -- ' \. ~· . .. . . . . . ;, . . . \~. ' ..

. · I n que t ime, AEH app~aled , to thfs Court by a petitjon for. . . '

certiorariunder
~ : t,· .
Rulif45
:~;,;_~=
of the Rules of,Court. ·
' '
. ·. . ~ .. ~~-~, .
het\:ler ABI's Beer Pale Pilsen infringes '.SMC'.s
' · , 'with R·e ctangular Mart ;:rnq Hops Desig
~~ !

'.; fabsolut~/y,no ·iLff1ilarity in the doJrn ·

1dem<1rk,s. Jnfringement iscdeter;mined ·
ncy" r,a ther. than b.Y 01_ffE\re6ces ·
· tradl;lml.l)'l$ pnd O.f anotll
ng !3.a i. : · ~ctqr ~ ·

ceiviJ.
nover
-~ .
''Berries Agric11/tura/ Co., Inc. ,, No,vy Abyadang, G.R. No. 183404, October 13, 2010.
166 ESSENTIALS or IN 11.:LLECl IIAI PROPERTY LAW CHAPTrn IV
LAW ON TRADl:-t IARK

In Forbes, Munn & Co. (Ltd.) v. Ang San To, 40 Phil. 272, whereas the words "pale pilsen" on ABI's bottle are
275, the test was similarity or "resemblance between the half the size and printed in slender bl.o ck letters on
two (t,·ademarks) such as would be ln<.el~ to .cause t he one a straight 'horttontal band:
mclrk to be mistaken for the other... .' [ But] this is not such
similitude as amounts to identity." The names of t he manufacturers are prominently
printed on their respei:;tive bottles. SAN MIGUE~ ·
' ln Phil. Nut Industry, Int . v. Standard Brands; Inc., 65 SCRA . . PALE PILSEN is " Bottled by the San Miguel
5 75, the court was more specific: the test is "similarity in the Brewery, Philippines," whereas B.EER PALE PILSEN
dominant features of th_e-trademarks." . is "Especially brewed and bottled by Asia Brewery '
I ncorporated, Philippines."
What a~e the dorrfinant featuresof t he competi~g trademarks
before us? (4 ) On the back of ABI's bottle Is printed ,in big, bql(,1
• .,, . "' ..i"" ".I'-"'"',, • ' (....- - - - -.. ~ . ..
letters, under a row of flower buds and leaves, 1ts
There is har'dly any dispute 'tbat the dominant feature of
copyrighted slogan: "BEER NA BEER!'' Whereas
SMC's t rademark is the name of the product:· SAN MIGUEL
SMC's bottle ,::arries no slogan.
PALE PILSEN, written in white Gothic lett ers with elaborate
serifs at the beginning and end of the letters "S'' and "M" (5) The back of the SAN MIGUEL PALE PILSEN bottle
on an amber background across t he upper portion of t he carries the SMC logo, whereas the BEER PALE
rectangular design. PILSEN bottle has no logo. '
On the other hand, the dominant feature of ABI's trademark T he SAN MIGUEL PALE PILSEN bottfe cap is stamped
is the name: BEER PALE PILSEN, with the word "Beer" written with a coat of .arms and the words " San Mlguel
In large amber letters, larger than any of the letters found in Brewery Philippines" encircling the same. The BEER
the SMC label. PALE PILSE:N bottle cap is stamped with t he name
"BEER" in ~he center, surrounded by t he words "Asia
Tl1e trial court ,perceptively observed that t11e· word "BEER'r Brewery Incorporated Philippines."
does not appear in SMC1s trademark, j ust as t he words "SAN
MI GUEL" do not sippear in ABI's trademark. Hence,· 'there Finally, there is a substantial ·price difference
Is abso)utefy no similarity in t he dominarf t features"f both. between BEER. PALI: PILSEN (currently i;lt P4. 25 per
trademarks.· bottle) and SAN MIGUEL PALE PILSEN (current ly at
~ ~ 7" · P7.00 per bottle). One who pays only P4.25 for a
2. P~r,chasers w_ill(not· be·deceive'r;f r;iven the dissfmilarities,. bottle of be~r cannot expect to receive San Miguel
of the marks.· Neit~er in sound, spelling or appearance can Pale Pilsen from t he storekeeper or bartender.
BEER PALE PILSEN be said to be confusingly similar to SAN
M~GUE.L PALE PILSEN . . No ; on~who p.urchas~s B~E~ PALE
' PILSEN can possi61y be deceived that ifis SAN MIGUEL PALE -. .
PILSEN. No evidence whatsoever was presented by SMC ILLUSTRATIVE CASE 4-8 . . · -. , . .' ' ,'· -. , : f
, '- I • 1 ' ; •• ' ( 1 ~.,.,
proving
,,. ' '
o'therwise.
' •1-\ ' \:•
-r ' · 1
•

· Besides the dissimilarity in their names, the following If It Sounds Alike...

ot her dissimilaritie~, ln the trade dress _o r c;1ppe,ar,,i nce of th~
competing produ'c€s abound: · · · Title:
Prosource International, Inc. v. Horphag Research Manage-
(1) The SAN MIGUEL PALE PILSEN bottle has .a slender
tapered ne<::k. The BEER PALE PILSEN bottle has a . n;ient SA, G.R. f\lo. 18007'.3, November 25, 2009
fat, bulging neck. Facts:
(2) T he words "pale pils~n''. on SMC's label are printed Respondent Horphag Research Management SA is a
·111 bold and laced letters along a diagonal band, corporation duly organized and existing under t he laws of
168 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CI-IAPTEI{ IV 169
LAW ON TRADEMARK

Switzerland and the owner of t rademark PYCNOGENOL, petitioner was made to answer only for attorney's fees
a food supplement sold and distributed by ,Zuellfg Pharma . · amounting to PS0,000.00. For lack of sufficient factual, and
Corporation. · · · · . legal basis, the court dlsmjssed petitionei"'s . counterclaim .
- . . ' . ..,
( ,. .
Petitioner's motion for r'~consideration ,yas, likev-,is~. denied;:
. Respond~~t later' dis'cove·red t hat .. petitloner . • ' • . ' ~- ~: >

Internationa l, l[ic:''. ·was also : distribUting a} sim n ·agpeal tq the CA, p ed to obt
.s\!ppleri!)~~\ i Jsing w e · m~jk PCQ-GEN9L~ : S.ilic;e cisicin, The appella,t la1n,ed · t
prompted . resp0nder;it to :·demal)d that· '· an,cy or the Hol,is ..
desist fr:om using t he aforesaid .iiiark. to PYCNOGENO
I • • •1{ ;.. i ,.~..:·': ' ~• . . "' •. '; : ".
, Withq,u t notjfying· re$'.pondent; petit io · · ;1s:s'ue :. ,
of, an(l'°Withdrew fro,m the '·market, I . ,•
n
:·
' me'PCO-Gl:NOLS asof June 19,' 20
•: · ' . · · · ·· to ·pco-
Whether p,e titioner's ' use of
rl£spondent's
,, ,. PYCNOGE~
·, QL. .
) ·

.. .. I ~

onde
· '' · wit
'fition~r, prayi e .two words ,are PfOnounced, the sound effects: ·
gly si1J7i!ar:-(11e trial and appellate ,courts appli.ed
:brand pcO-GEN ' ' .
ent's, trademark · PY ncy Test in . determining whether there ' was a,
' al and · nominal .c;J ing . similar fty petween t he marks PYGNOGENOL
. . 1 • . ENOLS. Applying ,th~· test, the triaf court· fot.indr
-
r ·contended
'
th
A affirmed, that,: ,..
. I/ ,' '
'.t' •
.,,B~tn t he , Wbrd(s:] PY'cN0GE;;NOL ·an
LS have t he same St,JfffX " G.ENOL" w
nee; appea r$' t6 -merely · des¢ripli
h );9 in.• d ie
·.
1gin, o,f
· ce
Jh i

. \;Ver~ ~ro
s tha,t purc~asers could b
tra '
0

' ing the -GEiNOLS. As ' . ' g that t hey are the same · a
at it was no I r int erested in recov.erin actual dalna e.s common source and manufacturer.
 170 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTC'R 1\/ t71
LAW O N TRADEMN{K

. .. ' . ":., l,j • . {

. We find ·no co ent reason t · depar t fro 01 such conclusion .

• ' .,> ' •·· : 'I; )·· - .

Monte a; for eign GO .

r t he I ed States arid not·
ess in ., Both t he PhiJippines
ates . to the Convention of
27, ran ts to the n at ion als Qf _
ts and advanta es .w ich f heir 0~11 'n ation als .c
repression
.·
. - . nfrin~ement .and u,ifal!T;,
. . ~ ,,

. ; ~

.69, Del Mo{l . gran e Philippine Packin;g,( oqi :

ri ght t o m,arn1fc)cture, distribute and sell irJ. the
· ·' · • · ts.;i ncludi ng cal:sup'~ '
. - \ ..
. "
•; . '

orized Philp .
e Del Monte
·· · Certifi
ippine ·•
vem
·1 ,• .

d
J 23.9 Holistic Test u
m
In contrast to Dominancy Test, the Holistic Test entails a consideration s
of the entirety of the marks as applied to the products, including
the labels and packaging, in det ermining confusing sim ilarity. The
d iscerning eye of the observer must focus not only on the predominant
words but also 011 t he other features appearing on both labels in order
that the o bserver may draw his conclusion whether one is confusingly .GI
si milar to the other.ii
e11
p confusi
sist from d
"Pros ource lnlernm io11al. Inc. ·i, Horphog Research Management SA, G.R. No. I80073, ng th at t he d
No vember 25, 2009.
 r
I
172 ESSENTIALS OF INTELLECTUAL PROPERTY U>.W CHAPTER IV 173
U>.W ON TRADEMARK

~ad be~n ig'hore<;I; Phil pack' and Del Monte ~lep a complalot · 3. As to the words or.,letterinS on label o ·
, . , . , oen,t for infringEiq,ent of ,, <· ••

\ti) _a pr_a · et ry!ontE;?: Clearly i • ·

'ternational, ,Inc,_Q
.. . . . r' ..
· ·e: Sun'shine
in' the
174 ESSENTIALS or INT FU.tl I JAL PROPl::RTY LAW CHAPTER IV 175
LAW ON TRADEMARK

careful scrutiny to determine in what points the labels of the equity. The judge must also be ;:iware of the fact that usually
products differ, as was done by the trial judge. The 01 dinary a defendant in cases of infringement does not normally copy
buyer does not usually make such scrutiny nor does he usually but makes only colorable changes. Well has it been said t hat
have the time to do so. The average shopper is usually in a the most successful form of copying is to employ el)ough
hurry. a nd does not inspect every product on t he shelf as If he · p oints of similarity to confuse the public with enough points
were b rowsing in a library.'Where the housewife h'as to ret urn of difference· to confuse the courts. ·
home as soon as possible to her baby or the working woman 3. Factors to consider by the courts; primary is the cost
has to m ake quick purchases during her off hours, she is apt of the goods. We also note that the respondent court failed
to be J:onfus~d by similar labels even if t hey do have minute · to tal<.e into ~ohsideration several factors which should ,.have

-
differe,nces, The male shopper ls worse ,as he ust/aJly does not · affected rts conclusion, to wit: age, training and education
bother about such distinctions. · of the usual purchaser, the nature and cost of the article,
2. The questions is whether a casual purchaser is confused. whet her the article is bought for immediate consumption
The question is not whether the two articles are distinguishable and also the conditions under which It is usually purchased.
by t heir label. when set side by side b ut whether the generial Among t hese, what essentially determines t he attitude of the
confusion made · by the article upon the eye of t he casual purchaser, · specifically his Inclination to be cautious, is t he
purchaser who is unsuspicious and off his guard, is such cost of the goods. To be sure, a person who buys a box of
as to likely result in his confounding it with the original. As -candies will not exercise as much care as one who buys an
observed in several cases, the general impression of t he expensive watch. As a general rule, an ordinary buyer does
ordinary purchaser, buying under the norma·11y prevalent not exercise ~s much prudence in buying an article for which
conditions in trade and giving the attention such purchasers he pays a few centavos as he does in purchasing a more
usually give in buy ing that class of goods is the touchstone. .valuable thing. Expe11sive and valuable items are normally
bought only after d'e_liberate, comparative and analytical
It has been held t hat in making purchases, the consumer , investigation. But m.ass products, low priced articles 'in wi2e,
r:nus~ cjepend. upon his recollectioh of t11e appearance of the . ' use, and ·matters of everyday purchase requiring frequent
product which he intends 'to purchase. The buyer having in replacement are bought by t he casual consumer without
mind the mark/label of t he respondent must rely upon his great care. In this latter category is catsup.
memory of the petitioner's mark. Unlike the j udge who has
am,ple time to minutely examine the labels in question in the 4 . Whe.n Sunshine ctiose to use same colors anc/ lttter§ as
conij 'ort: of his sala, the or:dinary shopper does not :·enj oy the , those used by Def .,Monte without reasonable e'Xp/a'r}ation,
same opportunity. the inevitable conclusion is that it was done deliberately to
deceive. At that, even if the labels were analyzed together
A number of courts have held that to determine whether a it is not difficult to see that t he Sunshine label is a colorable
trademark has been lnftir).ged, we must consider the mafk · , imitatiO,Q .of t he Oel Monte .trademark. The predortlipant ,.,
a:;; ·'<i ·,whole add not as aissected, I ( t l:ie buyer is deceived, 1
' ' colors used in the Del Monte !abet are green and red-orange,
it fs attributable. to t he "'m arks as a totc11ity, not ·usuaUy to the same with Sunshine. The word "catsup" in both bottles is
any part of it. The court therefore should be guided by its printed in white and the style of the print/letter is t he same.
first impression, for a buyer acts quickly and is governed by Alt hough t he logo of. Sunshine· i~ not a tomato, the figure
a ci~ual glance, the value of which may be dJssipated as nevertheless approximates that of a tomato, ·
soon a_s the court assumes to· analyze .carefully the-'respective
features of the mark. · · As previously stated,· the person who Infringes a trade mark
does not normally copy out but only makes colorable changes,
It has a lso been held that it is not the function of the court employing enough points of similarity to confuse the public
in cases of infringement and unfair competition . to e9ucate Witl1 enough points of differences to confuse. t he courts~wh;it
purd1asers butlrather to take their carelessness for granted, ,· Is undeniable is the fact that wlien a manufacturer prepares
and· to be ever conscious of t he fact t hat marks need not be to package his product, he has before him a boundless choice
identical. A confusing similarity will justify the intervention of of words, phrases, colors and symbols sufficient to distinguish
 176 ESSENTIALS OF I NTELLECTUAi PROPCRTY LAW 11> I I 1/7

his produc t from the others. When as in this case, Sunshine

____ ~------- .,..
I V

On March 31. 1965[, I p,•liti.., ,

I I

1111 lower
court, a complaint l01 111frinJ ·1 1( •1 , 1 11 I· ,Hid
chose, without a reasonable explanat ion, to use the same unfair cornpelit,on again ,1. the o1 , 1 p •.11d~int.
colors and letters as those used by Del Monte though the field Petitioner principally alleged m ll '"' 1 , r1p,.,111L II 1l private
of its selection was so broa d, t he inevitable conclusion is ,that respondent's trademark FRUIT FCW rvr -~ ,.,11111 .1111ilv simila r
it was· done delib'erately to deceive. to Its trademark FRUIT OF THE LOOM W,f•rJ dic..o 011 women's
It has been aptly observed that t he ult imate ratio in cases panties and other textile products 1 11 li,=-n-.,,,. , it was also
of grave doubt is the rule that as between a newcomer who alleged t herein that the color get-u 1> r11 I senera apµcaru, ,ce
by the confusion has nothing to lose and everything to gain of private respondent 's hang tag co.-.sisting of <1 h,q red apple
and one who by. horiest deallrig has· already achieved fa vor is ri colora ble imitation to U1e hang I d(J c,f 11... ~il i. 111,,r
with the public, any doubt sh·ould be resolved against the On April 19, 1965, private responden1 f1h:-• ri' 1 a , wt::r invoking
newcomer inasmuch as the field from which he can select a t he special defense t hat its rt.91<,1 , r,•·! t,ad--1 , •, k is not
desi rable trademark to indicate the origi n of his product is confusingly similar to that of pet1Uo11Pr ci., th ,,o1 u c1lleged.
obviously a large one. Likewise, privat e respondent: statc.:ti I hat: I lie lradema r·k
FRU!T FOR EVE is being used on l.:id1c~~• i>dl1rit•,; ,,11d pajam as
only whereas petitioner's tradem;,r ,..,, used eve on men's
.." underwear and pajamas .

Iss1,1e:
Whether respondent's FRLJTT FOR E\/1: 1c; c-, >fll:,1nqly similar
"Eve" Is Not " Loom" (
: with petitioner's FRUIT
, OF THE LOOM.
Title: Ruling:¢.
' . '
7-r-.u.Lt-of the Loom , Inc. v. Court of Appeals and General 1. Comparison of the words is n,')' U,1• onlv rleterminant
Garments Corporation, G.R. No. L-32747, November 29, 2004 factor. The trademarks in their entlrPly as LI i:iy appear in
their respecUve labels or han_g tags m• •.t '115/? ii, considered
Fact s· . . • t in relation to the goods Lu which U11•v , attc1ched ln cases
Petit(~FJer, a corporation duly,z;rgahized cind existing under t he . invol"'.in(l infringernent of Lraclern~1rk " oughl lwt·ore t his
laws ·of the State of Rhode Island, United States of America, Cou rt it has been consistently held th,, ,, _, c: is lnrri,1gemen t
is the r egi strant of a trademark, FRUIT OF THE; LOOM, in of trademark when the use of t he 111drl; involved would be
the .Philippihes Patent Office and was issued two Certificates likely to cause confusion 01 mistake in the mind of the public
. , 9r to deceive purchasers as to the orig In or sour ce of the ·
of R,~gJ,e,t ratiQn}.Jot. €1227 a w;h6680, OQ: ,Nove.rnbe,r: ?9, 1957
and~ l:Jl'jl 26, 1958, respedivefy. The classes of merchandise commodity (Co ,Tiong Sa v. Directo, of Pale11ts, 95 Phil.
covered by Registration Certificate No. 6227 are, among 1; Alhambra Cigar & Cigarette Co. v. MojiCd, 27 Phil. 266;
others,_,...P'len's, women's ancl children's underwear, which S a polin Co. v. Balmaceda, 67 Phi l. 70',, Ld Insular v. Jao Oge,
47 Phil. 75).
includes women's panties and which fall under clas~ 40 in the -
PhiUpp'ine Patent '.Office's .clas$jficatroqoJ goods. Registratlori · In cases :ot
this nature, there can be no bette,· evidence as ·
Certificate No. 6680 covers knitted, nett ed and textile fabrics. to whether there is a conrusing similarity in the contesting
Private resp ondent, a domestic corporation, ls t he registrant t rademarks than the labels or h ang luS::~ them,;~ives. A v isual
of a trademark FRUIT FOR EVE in the Philippine Patent Office pr esentation of the labels or hang lil!-JS ,s the best u1 gument
and. _was Issued a C~rtificate of Registration No. 101601 on , for one or the othe,~ hence, We c11e r L'Pt oduc:inq ltereunder
Ja'nuary 10, 1963 covering_)Jatments similar to petitioner's pictures of n1e hang tags of the produrb of t 1f! parties to
products like women's panties and pajamas, t he case. Th e pictures below are pc11t of t' 11, 1oc-umentary
evidence appearing on page 124 ot ti1c , g1:1al records.
178 ESSENTIALS O F I NTELLECTUAL PROPERTY LAW
CHAPTER IV 17 9
LAW ON TRADEMARK

Petit ioner ass~~~1·atesi in the third an(I, fou,rth . as:signment

of er rors · he main colored cent er piece. The apples which are the only
irhilarities in t he hang tcjg are differently colored.
· ·tioner;s apple is col.ored a: ·r k red; while that of.
ate resp9nden·t · ' ·· · _·
bf the comp in t his case are ..
·t in .the ~1.1bs . in t he design '
pear'ance of · , .__ ha?g tags. We
. t he t~ o t radern_ar_ks !::ts thE!y 9'ppear 'in rh
ubmit t ed , PY th e are impresse
. cHs!iimilarities llari'ties. appearin
hold t h aUhe IT ' OF THE LOO
OR EV[; I'.lo not the, asto confus
:an or-di nary ;pu . ord:i;11ary purchaser
ugh~ of ·a s havi , . ited with,.·at .l easta
·/;itell_i.genc:e ('.Ccirn·· Non Co. v_. C131ifornla Grdwe·rs.
· F. 2d ..BQ; H J¾~ and Sons v,; Penn~·
' I 79..F. 2d 8 'a ble to ?ee t j,e obvious ·
een the t r rnar_k s in9uestio.n. ·
e believe t . . uys petitioner 's
· t get confuse

23. 10 Use of Both Tests

The Supreme Court on several occasions used both tests in their

decisions. Thus, the use of one does not preclude the use of another.
 r
.130 • I , I
1,t 1Jfir• 111111 l 'IH>f'l-l{ I YI/\W
'
CHAPTER rv 181
LAW ON TRADEM ARK

. ,
with adrlr,,,·,~ ,, I' ,, J I c,wi>r QM, B<.1guio Cit y, l'iled with the est~blish its ownership of the mark. "0-10 80 VVP"
Intellectual Proi,e, r,, uirice (IPO) a t rademark application . a}"!d ,3) re~pcmclent's trademark, registratio_
for the mark N~; I•-! o PLUS" for use in connection with · .80 WP",may be cancel lee! i · ·
Fungicide (CJc1c;,; 5j v,ith wctive ingredient 80% Manqneb. multiplicity_.of suits.
.. ,- . '.•·, '•.",
Th e applicaI·10,1, r;ndei l.\pplication Serial No. 4-2004-00450,
ris fjled. a. +'lotion -for Reco
\vas gjven due couI·se arid was published in the IPO:e-.Gazette ·v: .• ,. ·. . n, thr cA denie
for opposition u•: 1, 1111 'JIJ, 2005. · r .J;

\":on August l 7, 2005, µetitioner Berris AgricttJtu.rar' Cq,, Inc.

·(Beh,s), wi th business address in Barangay Masiit, ·Calauan,
, -,t.;fl'(:Juna, fi led with the rpo Bu reau of Legal Affairs (IPO-
. BLA) a Veri fied Noltce of Opposition againstthe mark Linder t's NS D-
application q!legedly because "NS D· lO PLUS" is _similar and/ O 80 WP:
9r·
·confusi ngfy _simiJ.9.r J.o._lt~...E.ruJ§SeregJ;x:~.9~m ~r~ :~Q:!;Q so..,.
-·. , ;'{J.P-," al~ ~ usea rorFungicide (Class 5) with <JC:ti.ve. ir)Qfedient
·' 80°19 Mancozeb. rlw opposition w as.'clocketed as !PC No. 14_ ~· , elyto occur..!!flP.
, ,200S'-00099. , 'mark-~0~1080
. \ 'J-- ~~ ~ : ,'

A~er an exctiang,~ of pleading s, on April 28, 2006·, Oirectbr .as appearing on

t, Estreflita Beltran-Abelardo (Director AbeJardo)·o(the IPO- BLA _ · otice that both h
· .issued Decision No. 2006-24 (B_LA decision) hofd ing that NS · i "; On Berris' pack
4; D: 1_0 Plus is confusingly similar 'to D-10 WP. - J ~-- the
1gger. ont than
. . . 'l 8Q,

' yc1dang filed a motion for r e'consideration, and Ber ris, in

led its Of)position to the n1ot./on. ·; .~- . : .
~ .: • ., ~ ' ~' f , .•

1st 2, 2006, Direc::tor Abelar09,, issued R. solutf '

. -09 (-D) (BLA resolµtion) '. · ·· m
tiori_. ._ . '
8yadang filed ,,on :a. pea .,on ugusf:~
·ce'of t he Di'.e.t:tor, ($en,eral1jn~_el)eftUa
PPDG), docRetect ·a~,App(;lal"NoL'.1.4~06
. . '·:.;-.: Jc,, " ·.,_. r .
g o f Lhe parties' i:es)jf)_cpve mem9t a ·
· n S. t r'istobi,'11,·:.J.r. ;,of the If>P
t ed July 2.0 · 2061 ' tieii" fn ·•.:: th
-,. .,

ya~ang, • . ,I,
·ht ·i ·i ~
•·or r,. evt
'
>'! '. ,·i:'
: .
e¢isioi1 dated i'\pri,I ,14; 2008_; th'e CA
. ,decisin11. It held - ·

1n sum, Lh!:! petitio n should be grantecf, due t o

'.' :the following reasons: 1) petiti'oner'i mark. "NS D·lO .
' f• - PLUS" is not conftd11gly similar ·with re~p't1hd~i'lfs
tr aclernark "D lU 80 WP"; 2) reSJ?onden~ failed :to _
 182 ESSENTI ALS OF I NTELLECTUAL PROPERTY LAW CHAPTER JV 183
LAW ON T RADEMARK

·-~
'.-.
ff t he well- known mark is registered in the Philippines, the
. reen, an°d .i · e. niar.ks are both re omina prohibition to use that mark by another entity extends to non-related
· hras~ "B · goods or services. ( Sec. 123[f))

Case 4-1

. . . . pfotected in t he Philip ' · ·. . ' ring

d in the county,.

is e ·
23.11 Lack of Proof of Actual Confusion de n~ '
ade ·· fl
I s t here a need to prove actua l confusion? This question is answered {IV
in McDonald's Corporation v. L. C. Big Mak Burger, Inc.:"

"Petitioners' failure to present proof of actual confusion

does not negate t heir claim of trademark infrin gement.
As noted in American Wire & Cable Co. v. Director of
Patents, Section 22 requires the less stringent sta ndard
of 'likelihood of confusion' only. While proof of actual
confusion is the best evidence of infringement, its absence
is inconsequential."

23.12 Identical With or Confusingly Similar with Well-Known

Marks

1:(1 The law disallows use of a mark that is identical with or is

lz. confusingly similar with a well-known mark even if such well-
known mark is not registered in the Philippines. (Sec. 123.l[e])

"G. R. No. 1.43993, August 18, 2004.

 184 ESSENT JALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 185
LAW ON TRADEMARK

. ' .
or si ods. These provisions · ' .· me fo'rms part of a trademark, is protecte,d .
' fie essenti~I part of ·th • · f f,iling or:registr<;1tion/' ·
i ' • • . ~~·
uctio~ of ar:ty· ·~u na~e of th.El }'\(Or l9 fa111ous Harv .· .
a·,trademark 0f' Harvard Unive
t'convent/ well as Secti
U,niVersit •t itled. to proi: .
de nc:ih'\e aro;' eveh ·witnou(
·me in tl;)¢,,Philfpplnes, J bis.m ~ans ,.
y in the PH'ili\3'pineifca11 use the trade
t t he conseht .of, Harvard University. ·
e Philippines•ean' claiaj, expre_ssly o'r
·f the narpe aAd mark ~'Harva d " .
.. ,
,, , es are avthorizec), apprOV' •
6.x,. m, Hi!
. .
. . Q
00

ol!i nventi rat1vely '·

i!)es .through two directives ofthe
i1 ~nt)' of.Trade, which directives
· · iiernber- .

ran um
186 ES'-FNTTAI...S OF INTELLECTUAL PROPERTY LAW CHAPTER rv L87
LAW ON TRADEMARl<

You are also ,·equired to submit to the unders!gn~d 2. . The word trade marl<, as used in this MEMO-
a progress report on tr1.e matter.
RANDUM, ,shall include t rade names, service
For immediate tdrnplia.nce . .. . . . : logos, signs, emblems,insigni~ Qr oth:-
lar ,cd~vices used f9r~identifica~ion an:d
. Memoranaum . · .n by consumers. · .,., • : . ·
)'· . ' . ' . ";' ' ,
a.nd Indy
.e Pat ent .Qffi.ce. shall r;efuse all applica:
I canc'el the rii "f, .tr_cldern
tut e reprodu a lation or •
a trademark owne. on·, l'!atur
' te, ,who is a Citizen ot.a cou.ntG)I•signato
ARIS CONVENT.ION FOR . . .. .
STRIAL Pl{OPEF?-TY.
hasif supplieq)
'
· Qolfrt .hat ent
.
s ,of the Paris . onv atl<
cted m ust be "well ere ·
· is' soi.1 ght fi1e Cou to ..
whether a· tradema e
aLith6rity of-the tountr ·e-
· ~tated i~at the c:omp •· , · ·
. . h6rity if it h
.o vnt · · in ,

er regis,ter n
rticle 2( 3) >thereof
188 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 189
LAW ON TRADEMARK

. .
(3 . . · c ors , lC , · · " (d.) the quality-image or reputation acquired by
the mark;
) ¾ the exter:it . ro. which the mark . has l:J.een
,. ·n' tlie Wor;ld; _ . _· . _. . ,
,., " ·vtty of registra:fon attained by
cl; . ' :. . . ' '
~hich the mark
• '!': ;• . . _. .. . .
a~ b~en used '
'e:' ' :,

' ' . .. ~- :~ '

y of use attaJned b tlie, rnark

I ,~ ,.,_

·· . · er cial value attri ark

,
of ,5uccessf1-1I
*; .
tcorne of lltigations,dea i~g w,t th
rthe mark is a well-I< ri rna'r:k · an .
~~s~nc,e or: abse_nce . .,9
'validly ·registered for
ilar goods .o r·:.Service·s\ a
· · · rson dairping
190 ESSENl ! ALS OF INTELLECTUAL PROPFI' I , I :1w CHAPTER lV 191
LAW ON TRADEMARK

~-•
----,.---------------·--- . . ,.....
~ is: ssue: ·
~ e / undisputed facts sh9i,y . that on November 26, 1998, Whether Ro1i ·x .:l\-,1usjc l:ounge may be prohibitec) from using
· · . respondent$ Montres·, Rolex S.A. a'nd Rolex Centre Ph il., - fderin9 pr¢vious ruling that. tl'rere can be no
Ciniit ecl, •owners/prqprietors .' Of·•Rolex: and Cr own DeVi<':e · ·· · · ' ·•·the mark is use- ci:ri• · ·'·· · . ' different
' "a9c1 insr:pititi, ,-. ' : -- ,, -:on t he instant suit:'• ,
~mar~ .infringe s •;with prayer fort
trial, CQ\J. .
' . .. . n ' of prefirninary inj vnc:ti
· clar · , · .. · us ·
n City, Branch
!y 1996, petit101 b, s2 io
! ·, ' " .::
.. Wit hout autli · d by n
ex Music Lou , ods for: w i t :,e identic
, s - " Rolex \vi _ . . ecan be r:fo likel,ihood of confusio,,n
nctthere Is therefore no"in fringement in (he:use by the junior
efenses, petition ser' of the re.gJsfer'ed tnark on the -~ntireJy qi_ff(;!r:ent go'cds.
f action because · J.i)s .ruling, . IJ.bw~ver1 '!\as _
b een .to s·o me, e;xte_nt, } pbdifi ed by
'11fusion would ari ,~ctioQ 123.1 f .. if the Intellectu_a l ~roper~y Code (R,epubf}:C '
le x" considering th ct No. 8293) ffecton January 1, 1998. The Si:!ld
$lated t o the item ~ctior'.i reads : . .
s, ',clocks, bracele
e complaint wa "$._ec. .1~:B. Regis_trability . ..;.
forum shoppin
ounsel of reco
nQ certifi · · ·
' ..

for preli
r;,tly~·9n ..
testi fic'a
··µreli ·
a. co .
ing ·

q
er's .1
ith
;~,

n_March ·
. ti the Cou
ly ·abused I
no March 1
' -
dismisse ·
d by per
'
192 ESSENTJ/l,LS OF I N l"ELLECTUAL PROPERTY LAW
\ CHAPTER IV 193
LAW ON TRADEMARK

~ . , _ . . _ ~ ~•-A- -
Names and Marked or Stamped Containers, in
determining whether a mark Is well-·known the · Facts:
. -Ilowing criteri.a or any combination thereof m~y
ir:jto account : . · · . · · On June 2l, 19.91f1 C.qintre!'l!'.Jt a partner~liip [ e
t he laws of Fraiic~; fil~d bef<'it;e ~~e (now def
Pei tents, Tradernarks, and Tect'lnblogy Transf
} . - ,< .

D~p;:frtment .o(f~pJle a.n,d l ndu~t ry a ~ra.de ·

the mark ''LEC<'.J'RDON'-BlEW &DEVICE"
Classes 8, .9 / 16,,' :n; 24; ) ~5, 29, ~nd
das:S.ificati~n['bf: . ~o~ds ano,"services
Registrations,1
of Marks ("N.ice ijp as$ific .
The i'lPPlicati6n'was· filed ·pursuant' to S
.l\ct No. ~166; as 'a rpend~o ( R.A,:' No. 1
Flome- Registration Ne.: t,390,.912; issue
19~6 iri'Fra'ni:e. Be~ring ,s eri<1I N.o. 722.6 .. . .
was publisheo for opposit i0n in the Man:li-A' rH. rn93 issue
of t l1e BPn:T G<1Zette and r€lleased, for Circul
1993. · ,
. '
,,,
)
. ',
Oo July 23, 1993, p~tit\9~·er E_cole pe·Cui
(Etole) Ale~ a1v9ppo'siti°'r to the subject appllcati,011,
that: {a) it is tJJe own·er .of the mar k '' .
ECOLE DE CUIS-INB;MANlLLE,_, which~it h
1948 in cooking c1rid other culinary acti
.~tsrestaL!1:a1)t bu~inessr~o? ('b), _it h_as1 e
valuable g9odw1II such .that Co1ntr '
will qtJµa,lly •
I
' .. , '

.D
"th
mi
' D(1
is
194 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 195
LAW ON TRADEMARK

-~he marks ,(C<)RDON BLEU &'..DEVICE" a nd "LE CORDON B.LE

-_PARIS 1895 & DEVICE" fo r go -
' 1 qnd 41 ·of tt)e Ni_ce Clas · :
•' -_
;f
IN •
. • .
- - - -

.Ecole
school I
us~ -its approp'riatiqn /:If t_
~r, Ecole ha~ rfo certi.ft~a
intreay on notice that t,
n usihg thtil suoject r,na
9istration for the sa.
196 ESSENTIALS OF lNTELLECTUAL PROPf.TffY I AW
CHAPTER JV 197
LAW ON TRADEMARK

. ''-.._ . - -·~--
. es. Thus, as con~e,C!!t~eritioned by the CA, under
, one may be an owner of· a mark due to its provisions of this Act to the extent and under the
. t]av.e t~e rigl1t to register such .condit ions essential . to give effect to any such
·· ner;sJailu use the same cohven~ion pnd treaties so long as the Philippines .shal.l
· · · · ratro'r1 . c.onti.nue to be·, a party thereto, e·xcept .as provided in
} h1ffollowing paragraphs of this section. · \ ·
ilf 'accord
less, forei ' '•·. ~rn,es·_·b,f'p ~r,Sbhs ctescribel. the' first [ri
ed· p'retec·8 f th1s s¢dl?A ~hall'b e protec;ted without
Atthis poi 11 of filing or ·registration whether- dr not
,ancl . Fran s of rria'rks: . . .
n
s to the Pa
. ">' _,.

ithe foregoing obligatlpns under the

bpe'rty, (P.ar .ioni tl'.i'f phili~pines is obligated t9
entio\\c$tate ionals of the signatory~counfrieS .t ha
ed ·an eff~ctive, prote~tion against via
. .
tellectu.a( property rfg~ts in the Philip
'cio if t heii e.~,,same · way,. that their. own co.untde
inteniisted ated •to aGcord simil.ar protection lo Philipp·
to prohibit nals., "Thus, under Philippine law, a t rade pa
eproduction, national of a State that is a party to !;he Parjs •
nfuii'or1, of a ¢11tioh1 whether or not the trade name 'forms
the co4ntry -r 1~ad~cnark, 1is pro~~cte(il '''without the " ··
t count ry as' g or registrat!dn ,"I . ' ,:
the .benef' · ' ..
instant .ca.s disputed t ·
. ' · in France s'i '

e forego
the rriark ii ·
ppropriate .• ·
198 ES~, tN TIAI S OF I N1ELLEC1UAL PROPERTY L/\W O IAPTER IV
LAW ON TRADEMARh

It is thus clear that at t he t ime Eqole started using the subject cordance with t he law. Forthwith, Jinggy named his
mark, the same was already being used by Cointreau, albeit school the Klu wer Graduate School of Business of Min-
abroad, of which Ecole's direct re\S was fully aware, being a,n danao and Immediately secured registration with the
alumna of t he latter's culinary school in Paris, France, Hence, Bureau of Trademarks. KU did not like the- unaut hor-
Ecole cannot claim any tinge of ownership whatsoever over lzecl use of its n ame by its tbp alumnus no less. l<U
tt)e subject mark as Cointreau is the true and lawful owner sought your help. What advice can you give KU?
thereof. As such, the IPO Director General and the CA were
correct in declaring Cointreau as t he true and lawful owner
of :the subject mark an'd as such, is entitled to have the same
registered under its name.
I n any case, the present law oil t rademarks, Republlc Act No. (1>.3! MCQ Aler t: 2010 Bar
8293, otherwise known as the Intellectual Property Code of
T is the registered t rademark owner of acROCOS"
the Philippines, as amended, has already dispensed with t he which he uses on his ready-to-wear clothes. Banking
requirement of prior actual use at t he t ime of registration. on the popularity of T's trademark, B came up wit h
Thus, there is more reason to allow the registration of the
his own aCROCOS" mark, which he t hen used for his
subject m ark under the name of Cointreau as its true and
"CROCOS'' burg,ers-. T now sues B for trademark in-
lawful owner,
fringement but B argues that his product is a burger,
As a final note, "the functi on of a trademark is to point out hence, there is no infringement. ls B correct?
distinctly the origin or owner$hip of the goods (or services) /
A. No since the owner of a well- kn0wn mark
t o which it is affixed; to secure to him, who has been registered in the Philippines has rights that
instrumental in bringing into the market a superior_article of
extends even to dissimilar kinds of goods.
merchandise, the fruit of his industry and skill; to assure t he
public that they are procuring the genuine article; to prevent B- Yes, since the right of the owner of a well-known
fraud a nd imposit ion; and to protect the manufacturer against mark registered in the Philippines do.es not ex-
substitution and sale Qf a n i1,1fe.rior and different article as his t end to goods which are not of the sarne kind.
product." As such, courts will protect trade names or marks,
Yes, as B was in bad faith in coming up with his
although not registered or properly selected as trademarks,
on the broad gr:ound qf enforcing just ice and protecting one own " CROCOS" mark.
1n t he f ruits of his toil. No, since unlike T, he did not register his own
" CROCOS" mar" ·for his product.

23.13--'Criteria in Determining When a Ma rk is Well-

Bar Ex'a m2014:"' known
Jinggy went to Kluwer University (KU) In Germany A mark is well-known according to Section 123. l(e ) if it is considered
for t,js doctora~e degree (Ph.D.). H_e completed his by the competent authority of the Philippines to be well-know n
degree wfth the highest honors in the shortest tlme. internationally and in the Philippines and that in determining whether
When he came back, he decided to set-up his own a mark is well-known, account shall be taken of tl1e knowledge of
graduate sch()ol.in his nometown in Zamboanga. After the relevant sector of t he public, rather than of the public at large,
seeking free legal advice from his high-flying lawyer- including knowledge in the Philippines which has been obtained as a
friends, he learned t hat the Philippines follows the ter- result of the promotion of the mark. Competent authority as used in
ritori ality principle in trademark law, i.e., trademark this section includes Lhe Intellectual Property Office and its relevant
rights are acquired through valid registra tion in ac- officers, t he Depar tment of Trade and I ndustry and of course, the
Supreme Court, as the final arbiter in this country.
200 ESSENTI/\LS OF INTELLECTUAL PROPERTY LAW Cl~Al'TER TV 201
LAW ON TRADEM/\R I(

Rule 102 of the Rules and Regulations on Trademarks, Service invalidated as a trademark and, therefore, may be legally
Marks, Trade Names and Marked or Stamped Containers provides protected. Generic terms are those whici) constitute ' the
help in determ ining if a mark is well-known. It provides that in common descriptive name of anarticle or substance,· or
determining whether a mark is well-known, t he following criteria or comprise_ the ' geous of which the..12articuIac product js a
any combination thereof may be taken into account: species.,' or ar e 'commonly used as the name or description
o( ii kind of goods,' or 'imply reference to every member of
(a) the duration, extent and geographical area of any use of t he
mark, in particular, the duration, extent and geographical a genus and the exclusion of individuating characters,' or
area of any promotion of the mark, including advertising 'refer to the basic nature of the wares or services provided
or publicity and presentation, atfai'fsor exhibitions, of the rather t han to the more idiosyncratic characteristics of a
goods and/or services to which the mark applies; particular product,' and are not legally protectable. On the
other hand, a ~ is descriptive aod therefore iovali.q, ;is
(b) the market share in the Philippines and in other countries, a trademark if, as understood in its normal and natural
of the goods and/or services to which the mark applies; sense, it 'fort hwith conveys the characteristics, functions,
(c) the degree of the inheren t or acquired distinction of the qualities or ingredients of a product to one who has never
mark; seen it and does not know what it is,' or 'if it forthwith
conveys an immediate idea of the Ingredients, qualities or
(d) the quality-image or reputation acquir ed by the mark; characteristics of the goods,' or if it clearly denotes what
(e) the extent to which the mark has been registered in the goods or- services ar e provided in such a way that the
world; consumer does not have to exercise powers of perception
or imagination.
(f) the exclusivity of the registration attained by the mark in
the world; Rather, the term 'MASTER' is a suggestive term
brought about by , the advertising scheme of Nestle.
(g) the extent to which the mark has been used in the world; Suggestive terms are those which, in t he phraseology of
(h) the exclusivity of use attained by t he mark in the world; one court, require 'imagination, t hought and perception to
reach a conclusion as to the nature of t he goods.' Such
(1) the commercial value att ributed to t he mark in the world;
terms, 'which subt ly connote something about the product,'
(j) t he record of successful protection of the rights in the are eligible for protection in the absence of secondary
mark; meaning. While suggestive marks are capable of shedding
'some light' upon certain characteristics of the goods or
(k) t he outcome of litigations dealing with the issue of whet her
services in dispute, they nevertheless involve 'an element
the mark is a well-known mark; and
of incongruity,' 'figurativeness,' or ' imaginative effort on
(I) the presence of absence of identical or similar marks t he part of t he observer."'
validly registered for or used on identical or similar goods
or services and owned by persons other than the person A registered mark shall not be deemed to be the generic name
claiming t hat his mark is a well-known mark. of goods or services solely because such mark is also used as a name
of or to ident ify a unique product or service. The primary significance
2 3 .14 Ma rks that a re Considered Generic of the registered mark to the relevant public rather than purchaser
mot ivation shall be t he test for determining whet her the registered
The law disallows the use of marks that are considered generic for t he mark has become the generic name of goods or services on or in
goods or services that they seek to identify. (Sec. 123.l[h]) connection with which It has been used. 15
I n Soclete Des Produits Nestle v. Court of Appeals, G.R. No .
112012, April 4, 2001, the Supreme Court explained when is a term
gener ic, descriptive and suggestive, t hus:

"In addition, the word 'MASTER' is neither a generic

nor a descriptive term. As such, said term cannot be 15 RCJ>. Acl No. 8293, Sec. 155. l(c).
20 2 fSSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER [V 203
LAW ON TRADEMARK

the other corporate name. The SEC also noted t hat petitioner
had registered as a corporation ahead of t he Lyceum of
Learning "Lyceum•: Baguio, Inc. in point of time, and ordered the latter to change
Its name to another name "not similar or identical (with)" the
r;ic1mef~9~~re~jousJ~/ ~~Jste, ed~entltiesr l . .,,_. , ~, ,. • ii , • ,
g..eeum of the Philippines, In'c. v~ CQ11d: cf Appeals, et al., The Lyce'u m of 'Baguio, Inc. assailed the Order of t he SEC
/'G.R. No. 101897, March 5, 1993 before the Supreme Court in a case docketed as G.R. No.
L-46595. In a Minute Resolution dated 14 September 1977,
Facts: - _· the Court denie.d -tlie Petitl.on•'for Review for lack of: merit.
' _.
Entry of j udgment in that case Was made on 21 October '1977.
Petitioner Is an ·educational institution duly registered' with
the Securities and Exchange Commission ("SEC"). When it Armed with t he Resolution of this Court in G.R. No. L-46595,
first registered with the SEC on 21 September 1950, it used petit ioner then wrote all the educational institutions it could
the co;:porate name Lyceum of the Philippines, Inc. and has find using the word '.'Lyceum" qS part of their corporate name,
used -that name ever since. , and advised t hem to discontlnae such use of "Lyceum ." When,
wlth the passage of time, it became clear that this recourse
On 24 February 1984, petitioner instituted proceedings before
had failed, pet itioner instituted before the SEC SEC-Case No.
the SEC to compel the private respondents, which are also
2579 to enforce what petitioner claims as its proprietary right
educationa l institutions, to delete the word " Lyceum" from to the word "Lyceum." Th.e SEC hearing officer rendered a
tlJeir 'c;qrporate names and permanently to enjoin them frorii dE;CISiOr'i sustaining petitioner:s claim to an exclusive right
using "Lyceum" as part of t heir respective names. t6 use the word "Lyceum." The hearing officer relied upon
Some of the private respondents actively participated in the the SEC ruling in th~ Lyceum of Baguio, Inc. case (SEC-Case
proceedings before the SEC. These are t he following, the No. 1241) and held that the word "Lyceum" was capable of
dates of their original SEC, registration being set out below , appropt iation and tt:iar petition er had acquired an enfprceable
opposite their respective names: · exclusive right to the use of'that word. ·

Western Pangasinan Lyceum - 27 October 1950 On appeal, however, by private respondents to the SEC En
Banc, the decision of the hearing officer was reversed and set
Lyceum of Cabagan - 31 October 1962 aside. The SEC En Banc did nqt cqnslder the word " Lyceum"
Lyceum of Lallo, Inc, - 26 March 1972 , t'o have become so identifieq wit h petitioner as to' render
Lyceum of Aparri - 2,8 March 1972 use thereof by other institutions as productive of confusion
about the identity of t he schools concerned in the mind of
Lyceum of Tuao, Inc. - 28 March 1972
the general public. Unlike Its h:earing officer, the SEC En Banc
Lyceum of Camalaniugan - 28 March 1972 held thaqhe attaching of geographical names to, tbe word
~• . .Ji~ • ·.('; l'

"-' X X X X , ' ., - . " -• "Lyc'eum" served suffidently to distinguish the schodis'from

one another, espec~ally in view of the fact that the campuses
The background of the case at bar needs some recounting. of petitioner and those of t he private respondents were
Petitioner had somet ime before commenced in the SEC physically quite remot e from each other. .
a proc,eeding (SEC·Case l'J9.' 1241) agcl,i,nst, the LY,:ceum of
eaguio; Inc. to require it to chang~ its corporate name ano ' . Petlti9ner thel'l went on appea-1 to the Court of Appeals; In 1ts
to adopt another name not "similar [to] or fdentical" with Decision dated 28 June 1991, however, the Court of Appeals
that of petitioner. In an Order dated 20 April 1977, Associate affirmed the questioned Orders of the SEC En Banc. Petitioner
Commissioner Julio Sulit held that the corporate name filed a motion for reconsideration, without success.
of petitioner i;lnd t hat of the Lyceum of Baguio, Inc. were Issue:
substantially identical because of t he presence of a "dominant''
word, i.e., "Lyceum," the name of the geographical location of Whether ''Lyceum" is a generic word that cannot be
the campus being the only word which distinguished one from appropriated by the petitioner to the exclusion of others.
204 ESSENTIALS OF INTELLECTUAL PRO PERTY LAW CHAPTER IV
LAW ON TRADEMARK

Ruling: YES Issue:

1. "L'lceum" is as generic in charader as the wor.:d Whether "Pale Pilsen" may be exclusively owned by San
"university." Etymologically, the word "Lyceum" is the Latin Miguel Corporation.
word for the Greek lykeion whtch in tu~n referred to a locality
on t he river Ilisslus in ancientAthens ''comwislng an enclosure Ruling: NO
dedicated to Apollo and adorned with fountains and buildings
er'ect~d by Pisistratus; Pericles and Lycurgu,s frequented 1. Pale Plls · · · . "Pale Pilsen'' are· generic
by the youth for exercise and by the philq_sopher Aristotle words escriptive o t e color pale"), of a type of beer
and his followers for teaching.." In time, the~ord "Lyceum" ("pilsen"), which is a light boh?mian beer with a· strong hops
b'ecame associated with schools and other"'-lnstitutions flavor-that originated in the City of Pilsen in Czechoslovakia
providing public lectures. and concerts and public discussions .. and became famous in the Middle Ages. (Webster'sl Third
Thl!ls today, the word "ty:ceum" generally refers to a school or New Internat ional Dictionary of the English Language,
an institution of learning . While the Latin word " lyceum" has Unabridged. Edited by Philip Babcock Gove. Springfield,
be1:n incorporated into t he English language, the word Is also Mass.: G & C Merriam Co., [c] 1976, page 1716.) "Pflsenv is a
found in Spanish (/iceo) and in French (lycee). As the Court " primarily geographically descriptive word," (Sec. 4, subpar.
of Appeals noted in it~ Decision, Roman Ci:ltholic schools [e] Republic Act No. 166, as inserted by Sec. 2 of R.A. No.
frequently use the term; e.g., "Licea de Manila," "Licea de
638) hence, non-registerable and not appropriable by any
Baleno" (in Baleno, Masbate), "Licea de Masbate," "Liceo beer manufacturer.
·de Albay." "Lyceum" is in fai::t as generic In character as t he The words " pale pilsen'' may not be appropriated by SMC
word " university." In the name of t he petitioner, "Lyceum" fqr its exclusive use even if t hey are part of its registered
appea rs to be a substitute for "university"; in other places, trademark: SAN MH5,UEL PALE PILSEN, any more than such
however, ''Lyceum/' or "Liceo" or "Lycee" frequently denotes descriptive words as .'\evaporated milk," "tomato ketchup,''
a secondary school or i:l college. It may be (t hough this is a "cheddar cheese," · "corn flakes" and "cooking oil'' may
question offact which we need not resolve) that the use of be appropriated by any single manufacturer of these food
t he wo rd "Lyceum" may not yet be as widespread as the use products, for no other reason than that he was the first to
of."unlverslty," but it is clear that a not inconsiderable number use them in his registered t rademark. In Masso Hermanos,
of educational Institutions have adopted " Lyceum" or " Licea" S.A. v. Director of Patents, 94 Phll. 136, 139 (1953), it was
as part .of theit cerporate nar,ues, , Since " LycEtum" or ~Licea" held that a dealer in shoes cannot register "Leather Shoes" as
denotes a s~hool or institution of learning, it is not unnatural his trademark because that would be merely descripiive and
to use .this word to designate an entity wt,ich is org_anized.and i t would be unjust to deprive' other dealers in leather shoes
operating as an educational institu~ion. · · of the right to use the same words with reference to their
merchandise: ·No cm,e may appropriate generic or descripttve ·
words. They belong to t he public domain (Ong Ai Gui v.
Director of Patents, 96 Phil. 6731 676 [19~5]):
>..: ' ,.·, .~ , '

ILLUSTRATIVE CASE 4-16 A word or a combination of words which is merely descriptive

of an article of trade, or of its cornpositfon, characteri$tic:s, ,
Pale Pilsen For All or qualities, cannot be appropriated and protected as a
trademark to the exclusion of its use by others ... inasmuc.h as
Title: all persons have an equal right to produce and vend similar
· Asia Brewery, Inc. v. The Honorable ·court of Appeals and San articles, t hey also have the right to describe t hem properly
Miguel Corporati~n, G.R. No. 103543, July 5, 1993 and to use any ~ppropria,te language or words, for ,that
purpose, and no person can appropriate to himself exclusively
Facts: any word or expression, properly descriptive of the article, its
qualities, Ingredients or characteristics, and t hus limit other
See above (Illustrative Case 4-1)
 206 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 207
LAW ON TRADEMARK

23.15 Marks Indicating Geographical Origin

A 'geographically descriptive t erm' is any noun or adjective that

designates geographical location and would tend to be regarded
by buyers as descriptive of the geographic location of origin of the
goods or services. A geographica lly descript ive term can indicate any
geographic location on earth, such as continents, nations, regions,
states, cities, streets and addresses, areas of cities, rivers, and any
ot her location referred to by a recognized name. In or der to determine
whether or not the geographic term in question is descriptively used,
the following question is relevant: (1) Is t he mark the name of the
place or region from which the goods actually come? If the answer is
yes, then the geographic t erm is probably used in a descriptive sense,
and secondary meaning is required for protection. 1•

16
S/1011g Properlies Realty Corporation (Formerly The Shong Grand Tower Co1po ralio11)
and Shang Properties, Irie. (Formerly Edsa Properties Holdings. Inc.) v. St. Francis Developmem
Corporation, G.R. No. 190706, July 21,2014.
208 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 209
LAW ON TRADEMARK

that respondent is barred from claiming ownership and 24 PROCEDURE IN TRADEMARK REGISTRATION
exclusive use of the mark "ST. FRANCI S" because the same is
geographically descriptive of t he ldOOds or services for whicW 24.1 The Application
it fs Intended to baused. This' is because respondeht's as w~ft " I
as petitioners' real estate ·development projects are loc9t'ed Rights over a trademark or service mark are acquired t hrough
along the streets bearing the name "St. Francis," pai:t~eclfarly, registration made validly according to the law. (Sec. 122)
St. Francis Avenue and St. Francis Street (now known as It is thus important to understand or at least have an idea on
BankI ,Prive), both ,,witl1in the. vicinity of the Ortigas
.
Center:
' how to apply for registration. Again, discussions herein are based
on t he law and the implementing rules and regulations and are
Issue.;
meant for academic purposes only. Those who need to file t rademark
Whether or not petitioners are guilty of unfair competit ion in applications are advised t o consult with trademark practit ioners or
using the marks "THE ST. FRANCIS TOWERS" and "THE ST. visit IPO's official website www.ipophil.gov. ph.
FRANC.IS SHANGR1-LA PLA<:;E." .
The process starts with filing an application for registration of t he
Ruling: NEGATIVE mark. By express provision of t he law (Sec. 1 24 . 1 ), the application
shall be in Filipino or in English and shall contain t he following :
1. "St. Francis" is a descriptive geographical term. Here, the
. Court finds the el~ment of fra\Jd to b<;: want ing; hence, there · 1. A request for registrotion;
can b~ no unfair competition. The CA's cont rary conclusion 2. The name and address of the applicant;
was faultily premised on its impression that respondent had
the right to the exclusive use of the mark "ST. FRANCI S," 3 . The name of ~ State of which the applicant is a nati onal
for which the latter had purportedly established co,nsiderable or where he has domicile; and the name of a State in
goodwill: What t h~ CA appear s to have disregardeci or been which the applicant has a real and effective industrial or
mistaken in its disqursitlon, however, is the geographically commercial establishment, if any;
descriptive nature of t he mark " ST. FRANCIS'' which thus bars 4 . Where the applicant is a j uridical entity, the law under
its exclu.sive appropriab11ity, unless a secondary meaning Is which It is organized and existing;
acquired. As deltly explained, if\ the U.S. case of Great Southern
Bank v. First Southern Batik: "[d]escriptive geographlcal 5. The appointment of an agent or representat ive, If the
terms are in the 'public domain' in the sense that every seller applicant is not domiciled in the Philippines;
should have the right to inform customers of t he geographical
6. Where the applicant claims the priority of an earlier
origin of his good_ s . A 'geographice'IIIY descriptive term' is
application, an indication of:
any n,oun or adj~~tive that.,d~§,ignate~ geograpnicaJJocation
and wo'!Jlcl tend t0 be regarded by buyi'!rs as destnptlve of (a) The name of the State with whose national office the
the geographic loeeation of origin of the goods or services. A earlier application was filed or if filed with an office
geographically descriptive term can indicate any geographic other than a national office, t he name of that office,
location on eartr,i, such as continents, nations, regions,
(b) The date on which the earlier application was filed,
states; cities, streets. and adsJ.r esses, a.~eas of cit1.$s, rivers, · · and
arid any ·other location referred to by a recognized name . .
I n order to determine whether or not the geographic term (c) Where available, t he application number of the earlier
in question is descriptively used, the following qu~stion is application ;
relevant: (1) Is the mark the. name of the place or region
7. Where the applicant claims color as a distinctive feature of
from which the goods actu~lly come? If the answer is yes,
then t he geographic term ls probably used in a descriptive the mark, a statement to that effect as well as the nam e
or names of the color or colors claimed and an indication,
sense, and secondary m eaning is required for protection."
in respect of each color, of the principal parts of the mark
which are in that color;
210 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER JV 211
LAW ON TRADEMARK

8. Where the mark is a three-dimensional mark, a statement applicant may prosecute the application in behalf of the heirs and
to that effect; successors-in-interest of the applicant. ••
9. One or more reproductions of the mark, as prescribed in
the Regulations; 24.3 NICE Classification

10. A transliteration or t~nslation of the mark or of some parts The applicant must indicate the names of the goods or services for
of the mark, as i:ir6scribed in the Regulations; which the registration is sought, grouped according to the classes of
the Nice Classification, together with the number of the class o f t he
11. The names of t legoods or services for which t~istration
Nice Classification to which each group of goods or services belon gs.
is sought, grouped according to the classes of the Nice
Classification, together with the number of the class of the
CLASSI FICATION OF GOODS
said Classification to which each group of goods or services
belongs; TITLE Class
12. A signature by, or other self-identification of, the applicant 1. Chemical products used in industry, science, photography,
or his representative. agricu lture, horticulture, forestry; artificial and synthetic
resins ; plastics in the form of powders, liquids or pl ates,
24.2 The Applicant for industrial use; manures (natural and artificial); fire
extinguishing compositions; tempering substances and
The applicant may be a natural or a juridical person. If there are chemical preparations for soldering ; chemical substances
more than one applicant, all of them should be named as applicant for pr eserving foodstuffs; tanning substances; adhesive
but anyone may sign the application for and in behalf of all the substances used in industry.
appl icants.'7 2. Paints, varnishes, lacquers, preservatives against rust and
The applicant may file and prosecute the application through an against deterioration of wood; coloring matters; dyestuffs;
attorney or other person authorized to practice in such matters by the mordants; natural resins; metals in foil and powder form
Office. The Office shall not aid in the selection of an attorney or agent for painters and decorators.
other than the furnishing of the list of attorneys or agents authorized 3. Bleaching preparations and other substances for laundry
to practice before the Office. 18 use; cleaning, polishing, scouring and abrasive prepara-
I f the applicant is not domiciled or has no real and effective tions; soaps; perfumery; essential oils, cosmetics, hair
commercial establishment in the Philippines, he shall designate by lotions, dentifrices.
a written document filed in t he Office, the name and address of a 4. Industrial oils and greases (other than edible oils and fats
Philippine resident who may be served notices or process in proceedings and essential oils); lubricants; dust laying and absorbing
affecting the mark. The written document shall be submitted to the compositions; fuels (including motor spirit ) and illuminant s;
Office within 60 days from filing date without need of any notice from candles, tapers, nightlights and wicks.
the Office. Such notices or services may be served upon the person
so designated by leaving a copy thereof at the address specified in 5. Pharmaceutical, veterinary and sanitary substances; in-
the last designation filed. If the person so designated cannot be found fants'; and invalids' foods; plasters, material for bandag-
at the address given in the last designation, such notice or process ing; material for stopping teeth, dental wax; disinfectants;
may be served upon the Director of Bureau of Trademark. (Sec. 125) preparations for killing weeds and destroying vermin .

When the applicant dies, becomes insane or otherwise inca- 6. Unwrought and partly wrought common metals and their
pacitated, the legally appointed executor, administrator, guardian, alloys; anchors, anvils, bells, r olled and cast build ing
conservator or representative of the dead or insane or incapacitated materials; rails and other metallic materials for railway
tracks; chains (except driving chains for vehicles); cables

17
Rules and Regulations on Trademarks, Rule 300.
8
' Rules and Regulations on T rademarks, Rule 303. 19
Rules and Regulations on Tradem~rks, Rule 305.
2 12 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 213
LAW ON TRADEMARK

and wires (non-electric); locksmit hs' work; metallic pipes stopping or insulating; asbestos, mica and their products;
and tubes; safes and cash boxes; steel balls; horseshoes; hose pipes (non-metallic).
nails and screws; other goods in non-precious metal not 18. Leather and imilations of leather, articles made f~om
included In other classes; ores.
these materials, and not included in other classes; skins,
7. Machines and machine tools; motors (except for land hides, trunks and travelling bags; umbrellas, parasols and
vehicles); machine couplings and belting (except for land walking sticks; whips, harness and saddlery.
vehicles); large size agricultural implements; Incubators. 19. Building materials, natural and arti~cial stone, cement,
8 . Hand t ools and instruments; cutlery, forks and spoons; lime, mortar, plaster and grave!; pipes of eart_henw are
side arms. or cement; road··making materials; asphalt, p,tc~ and
bitumen; por table buildings; stone monuments; chimney
9. Scientific, nautical, surveying and electrical apparatus pots.
and inst rum ents (including wireless), photographic,
cinematographic, optical, weighing, m easuring, signalling, 20. Furnit ure, mirr ors, picture frames; articles (n?t included
checking (supervision), life saving and teaching apparatus in other classes) of wood, cork, reeds, cane, wicker, horn,
and instruments; coin or counter -freed apparatus; talking bone, ivory, whale-bone, shell, amber, mother-of-pe~rl,
machines; cash registers; calculating machines; fire- meerschaum, celluloid, substit utes for all these material,
extinguishing appara tus. or of plastic.

10 . Surgical, medical, dental and veterinary instruments and 21. small domestic utensils and containers (not of precious
apparatus (including artificial limbs, eyes and teeth). metal nor coated therewith); combs and sponges; bru~hes
(othe; than paint brushes) ; brush-making materials;
11. Installat ions for lighting, heating, steam gener ating, instruments a)'1d materials for cleaning purpos_es; steel
cooking, refrigerating, drying, ventilating, water supply wool • u nworked or semi-worked glass ( excluding g lass
a nd san itary purposes. used' in building); glassware, porcelain and earthenware
not included in ot her classes.
12. Vehicles; apparatus for locomotion by land, air or water.
22. Rope, st ring, nets, tents, awnings, tarpaulins, sails, sacks;
13. Firearms; amm unition and proj ectiles; explosive subs- padding and stuffing materials (hair, capoc, feathers,
tances; fireworks.
seaweeds, etc.); raw textile materials.
14 . Pr ecious metals and t heir alloys and goods in precious
23. Yarn s, threads.
m etals or coated therewith (except cutlery, forks and
spoons); jewelry, precious stones; horological and other 24. Tissues (piece goods); bed and table covers; textile articles
chronometric instruments. not included in other classes.
15 . Musical instruments (other t han talking machines and 25. Clothing, including boot s, shoes and slippers.
wireless apparatus).
26. Lace and embroidery, ribbons and braids; buttons, ~~e_ss
16 . Paper and paper articles, cardboard and cardboard buttons, hooks and eyes, pins and needles; art1fic1al
articles; printed matter, newspaper and periodicals, books; flowers.
bookbinding materials; photographs; stationery, adhesive
materials (stationery); artists' materials; paint brushes; 27. Carpets, rugs, mats and matting; linoleums ~nd other
materials for covering existing floors; wall hangings (non-
typewriters and Office requisites (other than furnit ure);
textile) .
instructional and teaching material (other than apparatus);
playing cards; (printers') type and cliches (ster eotype). 28. Games and playthings; gymnastic and s~orting arti~l es
17. Gutta percha, india rubber, balata and substitutes, articles (except clothing); ornaments and decorations for Christ-
made from these substances, and not included in ot her mas trees.
classes; plastics in the form of sheets, blocks and rods, 29. Meat , fish, poultry anQ_j@me; meat extract~; ~r es~rved'.
bei ng for use in manufacturers; materials for oackino. dried and cooked A'.ftiiti; ,liih<J vPnPtr1hlPc::· 1PlhPc:: . 1;,imc:: .
 214 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 215
LAW ON TRADEMARK

eggs; milk and other dairy products; edible oils and fats; righ ts on another application of later date if the disclaimed matter
preserves, pickles. became distinctive of the applicant's or· owner's goods, business or
30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee subs- services. (Sec. 126)
titutes; flour, and preparations made from cereals; bread The basic purpose of disclaimers is to make of record, that
biscu its, cakes pastry and confectionery, ices; honey'. a significant element of a composite mark is not being exclusively
treachel; yeast, baking- powder; salt mustard; pepper appropriated apart from the composite. The foll owing portions of a
vinegar, sauces; spices; ice. ' mark when formi ng part of the composite mark, must be discla imed
31. Agricultural, horticultural and forestry products and g;~s- to permit re gistration, namely: ( a) a generic term; (b) a descriptive
not included in other classes; living animals; fresh fruits matter in the composite mark; (c) a matter which does not function as
and vegetables; seeds; live plants and flowers; foodstuffs a t rademark, or service mark or a trade name. Such disclaimer shall
for animals, malt. not prej udice or affect the applicant's rights then existing under some
other law or thereafter arising in the disclaimed matter, nor shall such
32. Beer, ale and porter; mineral and aerated waters and other disclaimer prejudice or affect the applicant's rights t o regist ration on
non-alcoholic drinks; syrups and other preparations for another application of later date, where the disclaimed matter has
making beverages. become distinctive of the applicant's goods, business or services."
33. Wines, spirit s and liquors.
24.5 Declaration of Actu al Use
34. Tobacco, raw or manufactured; smokers' articles; matches.
CLASSIFICATION OF BUSI NESS OR SERVICES The applicant or the registrant shall file a declaration of actual use of
the mark with evidence to that effect, as prescribed by th e Regulations
35. Advertising and business within three years from the fil ing date of the application. Otherwise,
36. I nsurance and financial the application shall be refused or the mark shall be removed from
the Register by the Diret~or of Trademarks. (Sec. 124.2)
37. Construction and repair
The pertinent provisions on the Rules and Regulations on
38. Com munication Trademarks are Rules 204 and 205, t hus:
39. Transportation and storage "RULE 204 . Declaration of Actual Use. - The Office will
40. Mat erial treatment not require any proof of use in commerce in the processing
of trademark applications. However, without need of any
41. Education and entertainment notice from t he Office, all applicants or registrants shall file
42. Miscellaneous1° a declaration of actual use of the mark with evidence to that
effect within three years, without possibility of extension,
One application may relate to several goods and/or services, from the filing date of the application. Otherwise, the
whether they belong to one class or to several classes of t he Nice application shall be refused or t he mark shall be removed
Classification. (Sec. 124.3) from t he register by the Director motu proprio.
"RULE 205. Contents of the Declaration and Evidence
24.4 Disclaimers
of Actual Use. - The declarat ion shall be under oath, must
refer to only one application or registration, must contain
The applicant may be allowed or may be required to disclaim an t he name and address of the applicant or registrant
unregistrable component of an otherwise registrable mark but such declaring that the mark is in actual use in the Philippines,
disclaimer shall not prej udice or affect the applicant's or owner's list of goods where the mark is attached; list the name or
rights then exist ing or thereafter arising in the disclaimed matter, nor names and the exact location or locations of the outlet or
such shall disclaimer prejudice or affect the applicant's or owner's outlets where the products are being sold or where the

'"Rules a nd Regulntions on Trademark, Ruic 41 6. 21

Rules and Regulations on Trademark, Rule 608.
2 16 ESSENTIALS OF I NTl:LLECTUAL PROPERl Y LAW CHAPTER IV 217
LAW ON TRADEMARK

services are being r endered, recite sufficient facts to show If the application d id not satisfy u,e requirements for grant of
l hat the mark described in the application or registration a filing date at the time t hal the filing fee and other indications were
is being actually used in the Philippines and, specifying the received by the Office, the filing date that was given shall be cancelled
nature of such use. The declarant shall attach five labels as and a new filing date shall be entered in the records of the Office.
actually used on the goods or t he picture of the stamped or The new filing date shall be the date on which the Office received the
marked container visibly and legibly showing t he mark as completed or corrected application as specified in the notice to the
well as proof of payment of the prescribed fee." applicant. (Sec. 132.2)

24.6 Filing Date 24. 7 Priority Right7'

Simi lar to patents, t he filing date is essential to t rademark applicat ion Another similarity trademark and patent share is the right of priority
since the first to file the application will be preferred over the junior granted to applications filed in other countries subject to certain
applicants. Similarl y, the filing date in trademark application is not conditions.,,
j ust the date the application is filed. There are requirements an
Thus, an application for r·egistration of a mark filed in t he
a pplicant needs to comply wit h before a filing date is accorded to t he
Philippines by a person referred to in Section 3,2' and who previously
application.
duly filed an application for registration of the same mark in one
These elements are found in Section 127: of those countries, shall be considered as filed as of the day the
application was fir st filed in t he foreign country. (Sec. 131.1)
"Sec. 127. Filing Date. - 127.1. Requirements. Aside from t he conditions imposed by Seclion 3, another
The filing date of an application shall be the date on which limitation is t hat no r egist ration of a mark in the Philippines by a
the Office receive d the following indications and element s person described in Section 131 shall be granted until such mark has
m English or Filipino: been registered in the ceuntr y of origin of the applicant. (Sec. 131.2)
"(a) An exQFess or implicit iod icatjon t.bat the Section 31 also provides that nothing in this section shall entitle
registration of a mark is sought; t he owner of a registration granted under the section t o sue for acts
" (b) ~ identity of the applicant; committed prior to the date on which his mark was register ed in
t his country, provided that, notwithstanding the foregoing, the owner
"( c) Indications sufficient to contact the of a well-known mark as defined in Section 123.l(e), that is not
al)pl.ieant orhis'representat1Ve, 1f any; registered in the Philippines, may, against an identical or confusingly
similar mark, oppose its r egist ration, or petit ion the ca ncellation of
" (d) A cepcoc;l.uction of the mark whose regis- its registration or sue for unfair competition, without prejudice to
tr ation is sought; and availing himself of other remedies provided for under the law. (Sec.
"(e) ~ t of the goods or services for which 13 1.3)
the registration is sought.
24.8 Examination Procedure
"127.2. No filing date shall be accorded until the
required fee is paid." The examinat ion begins with the determinat ion whether the appli-
cation meets the filing date requirements mentioned In Section 127.
Befor e starting to examine the registrability of a mark, the
Examiner or such other personnel as the Director may authorize,
shall examine whether the application satisfies the requirem ents for 22 Rcp.Acl No. 8293, Sec. 131 in rnlulion to Sec. 31.
the grant of a filing date as provided in these Regulations. If t he 23Sec. 3. /11ter11a1wnal Convelllions mrd Reciprocity. - Any person IVhO 1s a national or
a pplication does not satisfy t he filing date requirements, the Bureau who is domiciled or has n real and effective industrial eslablisltment in a country which is 11 1>arty
shall notify the applicant who shall, wit hin a period of one month 10 uny convc111ion, treaty or ngreeme11L relating 10 iulellcc1ual property rights or lhc repression of
from mailing date of the not ice, complete or correct the application as unfair compctilion, 10 which 1hc Philippines is also a party, or extends reciprocal rights to nationals
required; otherwise, the application shall be considered withdrawn. oflhe Philippines by law, shall be en1i1led lo benefits 10 U1e extent necessary to give eITecl to any
provision ofsucb convenlion, treaty or reciprocal law, in addition to lhe rights lo which any owner
(Sec. 132.1) of an intellectual property right is 01henvisc entitled by this Act.
 r
218 ESSENTIALS OF I NTELLECTUAL PROPERTI' LAW I CHAPTER IV 219
LAW ON TRADEMARK

If so, Hie Office shall examine whether the application meets the
r eq uirements of Section 124 and the mark as defined in Section 121
is registrable under Section 123. (Sec. 13 3.1)
25 CERTIFICATE OF REGISTRATION
Where all the conditions of applicat ions requirement (Sec. 124)
and registra bility (Sec. 121 in rel ation to Sec. 123) are met, the 25.1 Prima Facie Evidence of Validity
Office shall, upon payment of the prescribed fee, forthwith cause--tbe
application, as filed, to be published in t he prescribed manner. ( Sec. A certi ficate of registration of a mark shall be prima facie evidence of
133.2)
the valid it)! of the registration'. the _registr ant·~~!J.!1?-of the ma_rk,
and of the regist r ant's exclusive right to use the same in connection
If after the examination, the applicant is not entitled to
registration for any reason, the Office shall advise the applicant with the goods or services and those that are related thereto speofied
in the certificate. (Sec. 13~)
thereof and t he reasons therefor. The applicant shall have a period of
four months in which to reply or amend his application, which shall
then be re-examined. The Regulations shall determine the procedure 25.2 Issuance and Publication of Certificate
for the re-examination or revival of an application as well as the
appeal to the Director of Trademarks from any final action by the The certificate of registration shall be issued when the period for filing
Examiner. (Sec. 133.3) t he opposition has expired, or when the Director of Legal Affairs shall
have denied the opposition, and upon payment of the required fee.
(Sec. 136)
24.9 Reviving Abandoned Application
The registered mark shall be published, in the form and w it~ln
An abandoned application ma y be revived as a pending application the period fixed by the Regulations. Marks registered at t~e Office
within three months from the date of abandonment, upon good cause may be inspected free _o f charge and any person may obtain copies
shown and the payment of the required fee. (Sec. 133.4) thereof at his own expense. This provision shall also be applicable to
transactions record ed in respect of any registered mark. (Sec. 138)
24,10 Opposing an Application
25.3 Cancellation or Amendment of Certificate
Any person who believes that he would be damaged by the registration
,, of a mark may, upon payment of the required fee and within 30 days Upon application of the registrant, the Office may permit ~ny
" after the publication referred to in Subsection 133.2, file wit h the registration to be surrendered for cancellation, and upon cancell ation
Office an opposition to application.
the appropriate entry shall be made in the records of the_ Office. Upon
The opposition shall be in writing and verified by the oppositor application of the registrant and payment_ of the prescnbed fee, the
or by any person on his behalf who knows the facts. It shall specify Office for good cause may permit any regIstrat1on to be am~nd~d or
t he ground on which it is based and include a st atement of the fa cts to be disclaimed in part, provided t hat the amendment or ~Iscla1mer
relied upon. Copies of certificates of registration of marks registered does not alter materially the character of the mark. Appropriate entry
in other countries or other supporting documents mentioned in the shall be made in t he records of the Office upon the certificat~- of
opposition shall be filed therewith, together with t he t ra nslation in registration or, if said certificate is lost or destroyed, upon a certified
English, if not in the English language. For good cause shown and upon copy thereof. {Sec. 140)
payment of the required surchar ge, the t ime for filing an opposition
may be extended by the Director of Legal Affairs, who shall notify the 25.4 Correction in Case of a Mistake of IPO
applicant of such extension. The Regulations shall fix the maximum
period of time within which to file the opposition. (Sec. 134) Mist akes in the certificate of registration may be corrected. If such
mistake is incurred through the fault of the Office, a certificate stating
Upon the filing of an opposition, the Office shall serve notice the fact and nature of sucl1 mistake shall be issued without ch~rge,
of the filing on the applicant, and of the date of the hearing thereof recorded and a printed copy thereof shall be attached to each printed
upon the applicant and t he oppositor and all other persons having copy of the registration. Such corrected ~e.gistration_shall t~ereaf:=er
any ri ght, title or interest in the mark covered by the application, as have the same effect as the original certificate; or in the d1scret1on
appear of record in the Office. (Sec. 135)
of the Director of the Administrative, Financial and Human Resource
 CHAPTER IV 221
220 ESSENT IALS OF INTELLECTUAL PROPERTY LAW
LAW ON TRADEMARK

the date of the registration of the mark. Otherwise, the mark shall be
Development Service Bureau a new certificate of registration may be
issued without charge. (Sec. 142) removed from the Register by the Office. (Sec. 145)

Whenever a mistake is made in a regi stration and such mistake 26,2 Non-Use o f Mark
occurred In good fait h t hrough the fault of the applicant, t he Offi ce m ay
issue a certifica te upon the payment of the pr escribed fee, provided Non-use of a mark may be excused if caused by cir cumstances arising
that the corr ection does not involve any cha nge in t he registration independently of the will of the t rademark owner. Lack of funds shall
27
t hat requires r epublication of the mark. (Sec. 143) not exc u s ~ r k .
The special circumstances to excuse non-use in affidavi ts of
2 5 .5 Use of a Ma rk in a Different Form non-use shall not be accepted unless they are clearly beyond t he
control of t he registrant such as the pr ohibition of sale imposed by
The use of the mark in a form different from t he form in which it is
government regulation.28
registered, which does not alter its distinct ive character, shall not be
ground foi- cancellation or removal of the mark and shall not diminish
the protection granted to the mark.>• 26,3 Renewal }.
A certificate of r egistration may be renewed for periods of t1;m_!'ears
25.6 Use of a Mark for Goods Belonging to the Class Regist ered at its expiration upon payment of the prescribed fee and upon fill ng of
a r equest. The request shall contain the following indications:
The use of a mark in connection with one or more of t he goods
or services belonging to the class in respect of which the mark is 1. An indication that renewal is sought;
r egistered shall prevent its cancellat ion or rem oval in respect of all
other goods or services of the same class. 25 2. The name and address of the registrant or his successor -
in-interest, h~reafter referred to as t he " right holder";
25.7 Use of a Ma rk by Related Company 3. The regist ration number of t he r egistration concerned;
The use of a mark by a company related wit h the registrant or 4. The filing date of the applicat ion which resulted in t he
applicant shall inure to t he latter's benefit, and such use shall not registration concerned to be r enewed;
affect the validity of such mark or of its registration, provided that Where the right holder has a representative, the nam e and
suc h mark is not used in such manner as to deceive the public. If use 5.
address of t hat representative;
of a mark by a person is controlled by the registrant or applicant with
respect to t he nature and quality of the goods or services, such use 6. The names of the recorded goods or services for which the
shall inure to the benefit of the registrant or applicant.26 renewal is requested or the names of the recorded goods
or services for which the renewal is not requested, grouped
according to t he classes of the Nice Classification to w hich
that gr oup of goods or services belongs and presented in
26 DURATION OF CERTIFICATE OF REGI STRATION t he order of t he classes of the said Classifi cation; and

7. A signature by the right holder or his representat ive. (Sec.

26.1 Duration '%, 146.1)
A certificate of registrat ion shall remain in force fo en years provided Such r equest shall be in Filipino or English and may be made
t hat the registrant shall file a declaration of actua use ana evidence at any t ime wit hin six months before t he expiration of the period for
to t hat effect , or shall show valid reasons based on the existence of which t he r egistr at ion was issued or r enewed, or it may be made
obstacles to such use, within one year from t he fifth anniversary of within six mont hs after such expirat ion on payment of the additional
fee herein pr escribed . (Sec. 146 .2)
2
•Rules and Rcgulntions on Trademark, Ruic 803.
25
Rules nnd Regulations on Trademark, Rule 804. 2 'Rules nnd Regulations on Trademark, Rule 802(a).
16 28Rulcs and Regulations on Trademark, Ruic 802(b).
R.ules and Regulations on Trade11111rk, Ruic 805.
 222 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER LV 223
LAW ON TRADEMARK

If t he Office refuses to r-enew the registration, it shall notify the

registrant of his refusal and the reasons therefor. (Sec. 146.3) from using t he course of trade identical or similar signs or conta iners
for goods or services which are identical or similar to those in r espect
An applicant for r enewal not domiciled in the Philippines shall of which t he trademark is registered where such use would re sult
be subject to and comply with the requirements of the law. ( Sec. in a likelihood of confusion. In case o f the use of an identical sign
146.4) for ide~tical goods or services, a likel ihood of con fusion sha ll be
presumed. (Sec. 147)
26.4 Renewal of Marks Registered Prior to Republic Act No.
8293
Marks registered under Republic Act No. 166 shall remain in force and
effect but shall be deemed to have been granted under Republic Act
No. 8293. Such marks shall be renewed w ithin the t ime and manner
provided for renewal of registration by the Regulations issued under
the current law.
Marks whose registration have a remaining duration as of
January 1, 1998 of more t han six and one-half years shall be required
to submit the declaration and evidence of actual use within one year
following the tenth and fifteen th anniversaries of the registration
or renewal registration under Republic Act No. 166; Provided, That
marks whose registrations have a remaining duration of six and
one-half years or less may no longer be subject to the requirement
of declara tion and evidence of use but shall be renewed within th e
time and in the manner provided for renewal of registration by these
Regulations and, upon renewal, shall be recla ssified in accordance
with the Nice Classification. The renewal shall be for a duration of
ten years. Trade names and marks registered in the Supplemental
Register under Republic Act No. 166 whose registration, including any
renewal t hereof, was subsisting as of January 1, 1998 shall remain in
force but shall no longer be subject to renewa1.29
With the application for the renewal of a registration made
under Republic Act No. 166, the certificate of registration to be
renewed must be surrendered to the Office, if the official copy of
such certificate of registration is not in the files of the Office. After he
has su rrendered the certificate of registration granted under Republic
Act No. 166, the applicant for renewal may, if he so desires, obtain a
certified copy thereof, upon payment of the usual fees.3o

27 RIGHTS CONFERRED *

27.1 Exclusive Right over the Mark

m The owner of a n:gist ere~ mark shal l have the exclu~ive rigbt,,,
to prevent all third parties not having the owner"s consent

29
Rules and Regulat ions on Trademark, Rule 92 1.
30
Rules and Regulations on Trademark, Rule 922.
224 ESSENTIALS or INTELLECTUAL PROPERTY LAW CHAPTER rv 225
LAW ON TRAD EMARK

No. 8293 to prevent third parties from usi.ng a trade'.11ark,

its intellectual property right over its trademark is protected
or similar signs or containers for goods o: services, without
under Section 147 of R.A. No. 8293. ·
its consent, identical or similar to Its registered t ra?emark,
Myra asserted that the mark "DERMAUNE DERMALiNE, INC:' whe~e such use would result in a likelihood of confusion. • ·
1
is aurally s imilar to its own .mark such t hat the registration I
and use of Dermaline's applied mar:k wjll enable it to obtain
benefit from Myra's reputation, goodwili and advertising and
will lead the pt1blic into believing that Dermaline -is, in any · 21. 2 Limitation on Trademarks Involving Medicines
way,' connected to Myra. Myra added that even if the subject Republic Act No. 9502 that aims to bring down price_ of medicines in
. application was unde, Classification 44 for various s1<.in the country removed from the rL1le cases of lmpo~at1on of drugs and
treatments, it .could still be connected to the " DERMALIN" medicines allowed under Section 72.1 of Republic Act No. 8293 as
tnark under Classification 5 for pharmaceutical products1 amended and of off-patent drugs and medicines.
since ultimately these goods are very closely related. ·
For further emphasis, t he law t hus added the following paragraph
In its Verified Answer, Dermaline countered that a simple
on Sect ion 147:
comparison of the trademark "DERMAUNE OERMALINE;, INC'.
vis-a-vis Myra's '"DERMAUNtl trademark would show that they "There shall be no infringement of trademarks or tr·ade
tiave "entirely different features and distinctive presentation, names of imported or sold patented drugs and n:,edicines
thus it cannot result in confusion, mistake or decept,ion on the allowed under Section 72 .1 of this Act, as well as imported
part of the purchasing public. Dermaline contended that, in or sold off- patent drugs and medicines: Provided, That,
deter.mining if t h,e subject trademarks are confusingly similar, said drugs and medicines bear t he registered m~rks that
a comparison of the words is not the only determinant, but . have not been tampered, unlawfully modified, or infringed
their entirety must be considered in relation to the goods upon, under Section 155 of this Code."
to which t hey are attached, including the other featLires
appearing in both labels. If claimed that there were glari,ng
and st riking dissimilarities between the two trademarks, such
that its trademark "DERMALINE DERMALINE, INC." speaks for ILLUS TRATIVE C ASE 4•19
itself (Res ipsa loquitur). Dermaline further argued that t here .
could not be any relation oetween its trademark for health ·· Bring In The Medicine
and beauty services. from Myra's t,:-ad~arl< classified under
medicinal goods against skin disorders. · Tltle:
On April i'o,
2008, the IPO~Bur~au ·of Legal Affairs rendered R,oma · Drug and Romeo Rodrigl,lez, ?IS .Proprietor of Roma
Drug v. The Regional Trial Court of Guagua, Pa~panga, The
Decision No. · 2008- 70 sustaining 'Myra's opposition' pursuant·
to. Section 123.l(d) of R.A. No, 829J. This dec;isioti was Provincial . Prosecutor of Pampanga, Bureau •of Foocls and ·
, .. a#'irmed 'oy the Director General an°o by the. Court of Appeals. prugs (BfAD) an~ Glaxo SmitbKline, G.~. .No. 149907, AP,lil
• ('• I
16, 2009 .
I ssue': . · . '.' . ~

Whether respondent Myra can preclude petitio~er Deimaline Facts:

from usi11g t he contested trademark. on 14 August 2000, a team . co~posed of 'the National
Bureau of Investigation (NBI) operatives and lnspecto_rs Of
Ruling : YES the Bureau of Fepd and Drugs (BFf,\D) conducted a raid qn .
1. A registered trademark owner may prevent third parties · petitioner Roma Drug.
from using the mark. As Myra correctly posits, as a regjstered T he raid was conducted pursuant to a search warrant iss~ed
trademark owner, lt has t he rlght under Section 147 of R.A. b.Y the Regional Trial Co1:1rt (RTC), Branch Si!, Angeles City,
226 ESSENTI ALS OF INTELLECTUAL PROPERTY LAW
CHAPTER IV 227
LAW ON TRADEMARK

·,
·... The r aiding te .· ts RTC; p· utor and. Sure~u Ci ·
· · g!nen;t;a .

event third
228 ESSENTIALS OF INT ELLECTUAL PROPERTY LAW CHAPTER IV 229
LAW ON TRADEMARK

parties from performing, without his authorization,

the acts referred to in Section 71 of the IP Code as 28 ASSIGNMENT AND TRANSFER
en umerated hereunder:
28. 1 A~signment of Registered Mark
(i) Introduction in the Philippi~es or Any-
where Else in the World. An application for registrat ion of a mark, or its regist ration, may be
assigned or transferred with or w ithout the transfer of the business
Using a' 'patented product which has been °put
using t he mark. (Sec. 149. 1)
on the market in the Philippines by the owner of the
product, or with his•expre,ss consent , insofa~ as such Such assignment or lransfer shall, however, be _null and void if
use is performed after t hat product has been so put on it is liable to mislead the public, par ticularly as regards the nature,
the said market: Provided,, That, with regard to drugs source, manufacturing process, characteristics, or suitability for t heir
and medicines, the limitation on pate_nt rights shall purpose, of the goods or services to which the mark is applied. (Sec.
apply after a drug or medicine has been Introduced in 149.2)
the Philippines or anywhere else in the world by the
patent owner, or by any' party authorized to use the 28.2 Form of Assignment
invention : Provided, further, That t he right to import
the drugs c!nd medicines contemplated In this section The assignment of the applicat ion for registration of a mark, or of
shall be available to any government agency or any its registration, shall be in writing and require the signatures of t he
pri vate t hird party. (72.1) contracting pa1ties, Transfers by mergers or other forms of succession
may be made by any document supporting such transfer. (Sec. 149.3)
The drugs and medicines are deemed introduced
when they have been sold or offered for sale anywhere
else tn the World. (n) 28.3 Recording of Assignment and Transfer

Assignments and transfers of registration of marks shall be recorded

at the Office on payment of the prescribed fee; assignment and
27.3 Rights Conferred to Owner of Well-Known Mark tr ansfers of
applications for registration shall, on payment of t he
same fee, be provisionally r ecor ded, and the mark, when reg istered,
The exclusive right of the owner of a well-known mark defined in shall be in the name of the assignee or transferee. (Sec. 149.4)
Subsection 123.l (e) which is registered in the Philippines, shall Assignments and transfers shall have no effect against third
extend to goods and services which are not similar to t hose in respect
parties until they are recorded at the Office. (Sec. 149.5)
of which t h e mark is registered, provided that use of that mark in
relation to those goods or services would indicate a connect ion The date of recording of an assignment, other document or
between those goods or services and the owner of t he registered license is the date of its receipt -at the Office in pr oper form and
m ark and provided further that t he interests of the owner of t he accompanied by t he full recording fee.31
registered mark are likely to be damaged by such use. (Sec. 147.2)
28.4 License Contracts
27.4 Limitation
The law imposes certain restrictions on contracts concerning grant of
Registration of the mark shall not confer on the registered owner license to use a validly r egistered mark. The law provides:
t he right to preclude third parties from using bona fide t heir names,
addresses, pseudonyms, a geographical name, or exact indications "Sec. 150. License Contracts. - 150.1. Any license
concerning t he kind, quality, quantity, destination, value, place contract concerning the regist ration of a mark, or an
of origin, or time of product ion or of supply, of their goods or application therefor, shal l provide for effective cont rol by
serv ices, provided that such use is confined to the purposes of mere
identification or information and cannot mislead the public as to t he
source of the goods or services. (Sec. 148) 31 Rulcs and Regulations on 1 rademark , Ruic 9 10.
232 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER I V 233
LAW ON TRADEMARK

"The rationale is plain: Certificate of Regis-

tration No. 31904, upon which the infringement
case is based, remains valid and subsisti ng for as
long as it has not been cancelled by the Bureau
or by an infringement court. As such, Develop-
ers Group's Certifi cate of Registration in the prin-
cipal register continues as 'prima facie evidence
of the va lidity of the registration, the registrant's
ownership of t he mark or trade name, and of the
registrant's exclusive right to use the same in 29.2 Effect of Cancellation
connect ion with the goods, business or services
specified in the certificate.' Since the certificate If the Bureau of Legal Affai rs finds that a case for cancellation has
still subsists, Developers Group may t hus file been made out, it shall order the cancellation of the registration.
a corresponding infringement suit and recover When the order or judgment becomes fin al, any right conferred by
damages from any person who infringes upon the such registration upon the registrant or any person in inter est of
former's rights. record shall termi nate. Notice of cancellation shall be pu blished in the
"Furthermore, the issue raised before the I PO Gazette. (Sec. 154)
BPTTT is quite different from that raised in the
trial court. The issue raised before t he BPTTf
was whether th e mark registered by Developers
Group is subject to cancellation, as the Shangri-
La Group claims prior ownership of the disputed 30 REMEDIES AGAINST TRADEMARK INFRINGEMENT
mark. On the other hand, the issue raised before
30.1 Civil Remedies
the trial court was whether the Shangri- La Group
i nfringed upon the rights of Developers Gr oup Any person who shall, without the consent of the owner of the
wit hin the contemplation of Section 22 of Republic registered mark:
Act 166."
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 sale, offering for sale, distribution, 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 li kely to cause
confusion, or to cause mistake, or to deceive; or
2. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitat ion
to labels, signs, prin ts, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or
in connection with the sale, offering for sale, distribution,
or 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, provided that the infringement takes place
at the moment any of the acts stated above are committed
 CHAPTER IV
231
230 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
LAW ON TRADEMARK

the licensor of the quality of the goods or services of the Notwithstanding the foregoing, the court or t he administrat_ive
licensee in connection with which the mark Is used. I f the agency vested with jurisdiction to hear -and adjud~cate_any act,_on
lic~nse contract does not provide for such quality control, to enfo,rce the rights to a registered m~rk s~all hke~1se exercise
or 1f such quality control is not effectively carried out the jurisdiction to determine whether the reg1st rat1on ~f said mark m~y
license contract shall not be valid." ' be cancelled. The filing of a suit to enforce the registered mark w1!_h
~ r oper coui:t ~r ~q~ncy shall exclude any o~her co~~ or agency
~k from as JDiOQ 1unsd1ctIon over a subsequently filed pet1t1on t~ ~ancel

* 29 CANCELLATION OF REGISTRATION

29.1 When Filed; Grounds ~

r· rk. On the other hand, the earlier filing of pet1t1on t ~
cancel the mark with the Bureau of Legal Affairs shall not constitute a ~
jrejudicial question that must be resolved befor~ an action to enforce
the rights to same registered mark may be decided. (~ec. lSI4J
A petition to cancel a registration of a mark may be filed with the This particular provision has been explained by the Supreme
Bureau of Legal Affairs by any person who believes t hat he is or will court in Shangri-La International Hotel v. Court of Appeals, G.R. Nos.
be damaged by t he registration of a mark. (Sec. 151.1) 111580 and 114802, June 21, 2001. In t his case, the court resol~ed
the issue on whether, despite the institution of a case for cancell~t1on
The petition may be filed within five years from the date of the of a mark with the !PO by one party, the adverse party can_fil~ a
registration of the mark. (Sec. lSl [ a] ) subsequent action for infringement with the r egular courts of Justice
The petition may be fil ed however at any t ime if it is based on in connection with the same registered mark.
t he following: The Supreme Court ruled in the affirmative, t hus:
- - 1. If the registered. m ~ ecomes the g_eneric nam_§! for
the~rv1ces, or a portion thereof for which it is "Section 151'.2 of Republic Act No. 8293, otherwise
register ed (Sec. lSl[b]); ' known as the Intellectual Property Code, provides, as
- 2. follows -
Mark has been aba~ed (Sec. lS l [ b]);
- 3. xxxx
Registration of the mark was obtained fraudu lently or
contrary to the provisions of the law (Sec. isf[b]); "Similarly, Rule 8, Section 7, of the Regulations on
Inter Partes Proceedings, provides to wit -
- 4. The registered mark is being used by, or with the permission
of, the r egistrant so as to misLepresent the source of the "Section 7. Effect of fifing of a suit before the
g oods or services on or in connection wit h which the mark Bureau or with the proper court. - The filing of
i s used (Sec. lSl[b]); a suit to enforce the r egistered mark with the
- 5. If the registered owner of the mark without legitimate proper court or Bureau shall exclude any other
court or agency from assuming jurisdiction over
reason_ fails to use the mark within the Philippines, or to
cause It to be used in the Philippines by virtue of a license a subsequently filed petition to cancel t he same
mark. On the other hand, the earlier filing of
d uring an uninterrupted period of three year s or longer.
(Sec. 151[c]) f\\..1\-.\bl. {)J.'i.t petition to cancel the mark with the Bur eau shall
not constitute a prejudicial question that must be
't
If the r egister ed mark becomes the generic name for less than resolved before an action to enforce the rights to
all of the goo~s or. services for which it is registered, a petition to same registered mark may be decided.
cance! the r egIstrat1on for only those goods or services may be filed.
A reg1stered r:nark shall not be deemed to be the generic name of "Hence, as applied in the case at bar, the
goods or services solely because such mark is also used as a name earlier instit ution of an Inter Partes case by the
of or to id~ntify a unique product or service. The primary significance Shangri-La Group for the cancellation of the
of t~e r~gIstered m ark to the relevant public ra ther than purchaser "Shangri-La" mark and "S" device/logo wit h ~he
motIvatIon s hall be the test for determining whether the r egistered BPTTT cannot effectively bar the subsequent fihng
mark has become the generic name of goods or services on or in of an infringement case by registrant Developers
connection with which it has been used. Grnoo. T hP- law and the rules are exolicit.
234 ESSENT IALS OF INTELLECTUA L PROPERTY LAW CHAPTER IV 235
LAW ON TRADEMA RI<

regardless of whether there 1s actual sale of goods or

services using the infringi11g material. (Sec. 15 5) (1) The trademark being infringed is registered in the
The Supreme Court in the case of William C. Yao, et al. v. People I ntellectual Property Office; however, In infringement
of the Philippines, et al., G.R. No. 168306, July 19, 2007, declared _, of trade name, the same neod riot be registered;
that as can be gleaned from the above provision, i.e., Section 155.1, (2) The trademark or trade na~e is reproduced,
mere unauthorized use of a container bearing a registered trademark counterfeited, copied, or colorably imitated by the
in connection with the sale, dist ribution or advertising of goods or infrlnge1·i
services which is likely to cause confusion, m istake or deception
among the buyers/consumers can be considered as trademark (3) The infringing mark or trade name is used in
infringement. connection with the sale, offering for sale, or
advertisfng of any goods, business or services; or the
In Republic Gas Corporation, et al. v. Petron Corporation, et
infringing mark or trade name is applied to labels
al., G.R. No. 194062, June 17, 2013, the Supreme Court made it
signs, prints, packages, wrappers, receptacles o~
categorically clear that t he mere unauthorized use of a container
bearing a registered trademark in connection wit h the sale, advertrs!3ments intended to be used upon or in
distribution or advertising of goods or services which is likely to cause connection with such goods, business or services;
confusion, mistake or deception among the buyers or consumers can (4) The use or application of the infringing mark or
be considered as trademark infringement. In this case, the Supreme trade name is -likely to tause con'fusion or mistake
Court ruled that tl1e petitioners have actually committed trademark or to deceive purchasers or others as to the goods
infringement when they refilled, without the respondents' consent, or services themselves or as to the source or origin
the LPG cont ainers bearing the registered marks of the respondents
of such · goods or serv.ices or tbe identity of such
as t his act inevitably confuses the consuming public, since they have
business; a~d
no way of knowing that the gas contained in the LPG tanks bearing
respondents' marks is in reality not the latter's LPG product after the (5) It is without the consent of the trademark or trade
same had been illegally refilled. .name owner or t he assignee t hereof.
In t he foregoing enumeration, it is the element of " likelihood
. . of confusion" that is the gravamen of trademark infringement.
I LLUSTRATIVE CASE 4-20 · . · · .', -. · But "likelihood of confusion'' is a relative concept. The ·
particular, and somelimes peculiar, circumstanc-es of each
Likely Infringed case are determinative of its existence. Thus, in trademark
,infringefT\ent ccises1 precedents ffi\JSt be evaluated in the l(ght
Title; of each particular case. ·

Prosource International, Inc. v. Horphag Research Manage- The trial and appellate courts applied tt\e Dominancy Test
· •io detertninlng '1hether, there was a -CC?nfusing slmilar1ty.
--~ · SA,,.B.R. No,.- ~180073,
ment . .
Novel};lber
.. 25, .2009
between t he marks PYCNOGENOL and PCO-GENOL. Applying
Facts: the test, _the trial court found, and the CA affinned, that there
is that " ljkelltiood of conf usion" i□· this case.
~e.e above (Illustr,ative Case 4 ~8)
2. Infringement is a factual issue. Finally, we reiterate
Issue: that the issue of trademark infringement is factual, with
Whether petitioner is guilty of infr'ngement, both the t rial anti appellate courts finding, the allegations of
infringement to be meritorious. As we have consistently held
Ruling: YES factual determinations of the trial court, concurred in by th~
1. Elements of {nfringem_ent. Th:e elements of infringement CA, are fincil an~ binding on this Couit. Hern~e, petitioner is
liable for t rademark infringement.
under R.A. No. 8293 are as follows:
236 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV .237
LAW ON TRADEMARK

30.2 Trademark Dilution

Philippines, It has a Certificate of' Regi!ftration No, 466;1.9 i!l
Notwithstanding t he foregoing elements of trademark infringem ent, t he Principal Register for use of said trader,na~k on . par'.its, ·.
reg ist ered mark o wners m ay maintain an action based on "trademark s hirt$, blous.es, sk.irts, shorts · sweatslieirts' ar-i'd ·acket's under
dilution." Clas$ 25 :
Trademark di lution is the lessening of the capacity of a famous · The "Dp:~!<~rs.,. QHd . . oe·
mark to identify and distinguish goods or services, regardless of / the , PhiHppines in or: ,.a b
the presence or absence of: (1) competition between the owner of cbrporatl0n e'ng'aged t ln
the famous mar k and other parties; or (2) likelihood of confusion.,-- of various prbgucts bear:i
mistake or deception, Subject to the principles of equity, the owner of date, LSPI col')'tinttes to m
a famous mark is en titled to an injunction "against another person's ·with the "Doc~ers an.d Desig
comm ercial use in commerce of a m ark or trade name, if such use . . , '
begins after the mark has become famous and causes dilution of the Ls ·& :co, :Qnd \..SPI furth'i:~r. al
distinctive quality of the mark. This is intended to protect famous presence ln
t he focar market ofje
marks from subsequent uses that blur distinctiveness of the mark or , '' Paddocks" using. a device vvfiich is s
tarnish or disparage it.'2 similar ta' tM "D9ck ers an9 Design'
registere,d in the na,:tie of IE '~ Co.,
on their ir:iformation an¢! belief; t he
m"anufactur ed and cdntinues . ·.
jeans anc~ other ap
However; since - •
. bn~ of i~plea,d
and s~le off e '" ..
. . .thrs.sui
', ' ·· P'r'oed,._. . ·. -,

.. ' A~ting on.the pr:ay

Design"; . , . .
..
32
levi Strauss & Co. v. C/in/011 Apparelle. Irie .. G.R. No. 138900, September 20, 2005,
 l
238 ESSENTI ALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 239
LAW ON TRADEMARK

and Design" trademark; (3) a pair of "Paddocks" pants · The Court of Appeals also held that -t he Issuance of the writ of
bearing respondent's assailed logo; (4) the Trends MBL preliminary injunction Is questionable. In its opinion, herein
Survey Report purportedly proving th;:it there was confusing petitioners failed to sufficiently establish its mi;lterial and
• similarity between two mar:ks;, {S) the affidavit-Of one. Bernabe substantial right to have the writ fssued. Secondly, the Cot,1rt
Alaj ar which recounted petitioners' prior ·adoption, use and of Appeals observed t hat the survey presented by petitioners
registration of the " Dockers and Design" trademark; and (6) to support t heir contentions was commissioned by petitioners.
t he .affidavit of on.e M,,~rcede$.,y\bad ofTrends MBL, Inc. whicH Th.e Court of APRtlals remarked that affidavits taken ex pqrte
'• detailed the methodology and procedure used in their survey are generally considered to be inferior to test imony given
and the results t hereof. in open court. The appellate court also considered t hat the
injury petitioners have Sl,lffered or are currently suffering .
Clinton Apparelle thereafter filec:t a Motion to-Dismiss ~nd a ' r'nay be ·compensated in terms of monetary consideration, if
Motion for Reconsideration of the Order grant ing the · writ of after trial, a final judgment shall be rendered in t heir favor.
preliminary injunction. Meantime, the trial court issued an
Order approving the bond fil~d by petitioners.'. · In .addition, the Court of Appeals strongly believed that the
imple111entatlon of the questioned writ would effectively shut
On 22 June 1998, the trial court required the parties to down respondent's business, which in its opinion should
file t heir "respective citation of authorities/jurisprudence/ not be sanctioned. The Court of Appeals thus set aside the
Suprem ~ Court decls;ions" o_n wl1ether or not t he trial court orders of the trial court dated 15 May 1998 and 4 June
may issue · tbe writ of preliminary injunction pending the 1998, respectively issuing a t emporary restraining order and
resolution of the Mot ion for Reconsideration and the Motion granting the issuance of a writ of preliminary injunction.
to Dismiss filed by respondent.
With the denla I of their Motion for Reconsideration, petitioners
On 2 October 1998, t he trial court denied Clinton Apparelle's
are now before this Court seeking a review of the appellate
Motion to Dismiss and Motion for Reconsideration in an
court's Decision and Resolut ion. LS & Co.. and LS.PI claim
Omnibus Ord~r.
tha~ t he Cou,t of Appeals committed serious error In : (1)
The ~rit of preliminary injunction was t hereafter issued on 8 disregarding the well-defined limits of the writ of certiorari
October 1998. that questions on the sufficiency of evidence are not to be
resolved in such a petition; (2) in holding that there was no
Thus, Clinton 1\:pparelle flied. with the Court of Appeals a·
confusion between the two m arks; (3) in ruling t hat the erosion
Petition for certiorari, pro hibition and mandamus w ith prayer
of petitioners' trademark is not protectable by injunction; (4)
for the issuance of a temporary restraining order and/or writ
in ignoring_the procedure P,reviously agree_ct: on by tlie parties
of pnil.imin~ey· Injunction, a;:isailing ,the o'r-detcs of >tl'ie trial.
and which was adopted by the trial court; and (5) in declaring
cou~dated 15 May 1998, 4 June 1998 and 2 October 1998.
that the preliminary injunction issued by the trial court will
On 20 October 1998,the Court of Appeals issued a Resolution lead to t he closure 9f respondent's qu~iness. ·
req1,1:rring h·er:ein petlt ioner:~ ·to file t~elr co}tlment oh the . . "
ln its Comment, Clinton Apparelle maintains that ooly
Pet1tion and at the same time issued the prayed-for t emporary ·
restraining order. quest ions of law may be raised In an appeal by certiorari under
Rule 45 of.the Ru]es of Gourt. It asserts . that the. question
'The ~ppellat'e court r en'derett' on 21 DecembElr 1998 it's now" · of whethe't the Court of Appeals erred ih: (1) d~sregardrng
assailed Decision granting Clinton Apparelle's petit ion. The the survey evidence; (2) ruling that there was no confusion
Court of Appeals held t hat the t rial court did not follow the between the two marks; and (3) finding that t he erosion of
procedure required by law_for- t tie issuance of a temporary petitioners' trademark may not be protected by injunction,
restraining order as Clinton Apparelle was riot duly notified are issues not within the ambit of a petit ion for review on
of the date of the summary hearing for its Issuance. Thus, certiorari under Rule 45. Clinton Apparelle also contends
t he Court of Appeals ruled t hat the TRO had been improperly that t he Court of -Appeals .acted corcrectly when it overturned
issued. t he writ of preliminary Injunction issued by the trial court. It
240 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER I V 241
LAW ON TRADEMARI<

Ii,.
· irigle registration of the trademarl< !)'Dockers and Design'
nfer:s on the owner the right ~o pr ev'ent the use··of a fractio
? ,_ • ~ ., • • ,., <

)
eh{in
n sum, ·
h)ay
.,
only
..., b'e es
' ' '

lscussion · we find"( a ·
sn !early and •
Ht .
proo · a 1ei
ght to warrant
:~tit1,oners ab
the writ
 242 ESSENTIA LS OF INTELLECTUAL PROPERTY LAW CHAPT ER I V 243
LAW ON T RAD EMARK

30.5 Destruction of Infringing Material

The court may order that goods found to be infringing be, without
compensation of any sort, disposed of outside the channels of
commerce in such a manner as to avoid any harm caused to the nght
holder, or destroyed; and all labels, signs, prints, packages, wrappers,
receptacles and advertisements in the possession of the defend~nt,
bearing the r egistered mark or trade name or any reproduction,
counterfeit, copy or colorable imitation thereof, all plates, molds,
matrices and other means of making the same, shall be delivered up
and destroyed. (Sec. 157 .1)
In regard to counterfeit goods, the simple removal of_ the
trademark affixed shall not be sufficient other than in exceptional
cases which shall be determined by the Regulations, to permit the
release of the goods into the channels of commerce. (Sec. 157 .2)

30. 3 Action for False or Fraudulent Declaration 30.6 Infringement Action by a Foreign National

Any person who shall procure registration in the Office of a mark by Any foreign national or juridical person who meets the requirem~nts
a false or fraudulent declaration or representation, whether oral or in of Section 3 and does not engage in business in the Philippines
writing, or by any false means, shall be liable in a civil action by any may bring a civil or administrative action hereunder for oppositi?n,
person injured thereby for any damages sustained In consequence cancellation, infringement, unfair competition, or false des1gnat1on
thereof. (Sec. 162) of origin and false des'cription, whether or not it is licensed t o do
business in the Philippines under existing laws. 33
30.4 Damages and Injunction Section 3 provides that:
The owner · of a registered mark may recover damages from any "Sec. 3. International Conventions and Reciprocity.
person who infringes his rights. The measure of the damages suffered - Any person who is a national or who is domiciled or has
shall be either t he reasonable profit which t he complaining party a real and effective industria l establishment in a country
would have made, had the defendant not infrin ged his rights, or the which is a party to any convention, treaty or agreement
profit which t h e defendant actually made out of the infringement. In relating to intellectual property rights or the repression of
the event such measure of damages cannot be readily ascertained unfair competit ion, to which t he Philippines is also a party,
w ith reasonable certainty, t hen the court may award as damages a or ext ends reciprocal rights to n ationals of the Philippines
reasonabl e percentage based upon the amount of gross sales of the by law, shall be entitled to benefits to the extent necessary
defendant or the value of the services in connection with which the to give effect to any provision of such convention, t r eaty
mark or trade name was used in the infringement of the rights of the or reciprocal law, in addition to the rights to which any
complaining party. (Sec. 156.1) owner of an intellectual property right is ot herwise entitled
On appl ication of the complainant, the court may impound by this Act."
during the pendency of the action, sales invoices and other documents
evidencing sales. (Sec. 156.2) 30.7 Presumption in Trademark Infringement Cases
In cases where actual intent to mislead the public or to defraud Similar to patents, the law provides important presumption in action
the complainant is shown, in the discretion of the court, t he damages for damages for infringement, viz.:
may be doubled. (Sec. 156.3)
The complainant, upon proper showing, may also be granted
i njunction. (Sec. 156.4) 33 Rep. Act No. 8293, Sec. 160.
244 ESSENT IALS OF I NTELLECTUAL PROPERTY LAW CHAPTER JV 245
LAW ON TRADEMARK

"Sec. 158. Damages; Requirement of Notice. - I n in an electronic communication, the remedies of the owner of the right
any suit for infrinyement , the owner of the 1-egistered mark infringed as against the publisher or distributor of such newspaper,
shall not be entitled to recover profits or damages unless magazine, or other similar periodical or electronic communication
the acts have been committed with knowledge that such shall be limited to an injunction against the presentation of such
im itation is likely to ca use confusion, or to cause m istake, adverti sing matter in future issues of such newspapers, magazines, or
or to deceive. Such knowledge is presumed if the regist ran t other similar periodicals or in future transmissions of such electronic
gives notice that his mark is registered by displaying with communications.
the mark the words " Registered Mark" or the letter R within
a circle or if the defendant had otherwise act ual notice of This limitation shall apply only to innocent infringers, provided
the registration." that such injunctive relief shall not be available to t he owner of t he
right infringed with respect to an issue of a newspaper, magazine, or
This provision thus cr eates a presumption t hat the infringer other similar periodica l or an elect ronic com municat ion containing
knows that his acts of imit ating the mark is likely to cause confusion, in fringing matter wher e restraining the dissemination of such
mistake or deception . infringing matter in any particular issue of such periodical or in an
electronic communication would delay t he delivery of such issue
or transmission of such electr onic communication is customarily
conducted in accordance wit h the sound business practice, and not
31 LIMITATIONS due to any method or device adopted to evade this section or to
prevent or delay the issuance or an inj unction or r estraining order
31.1 Limitations on T radema rk with respect to such infringing matter. (Sec. 159.3)

The law likewise provides for situations where remedies given to 31.5 Imported Drugs
the owner of the mark ca nnot be availed of. This is provided under
Section 159 of the Intellectual Property Code. Republic Act No. 9502 otherwise known as "Univer sally Accessible
Cheaper and Quality Medicines Act of 200 8 " provided another
31.2 Prior User limitation to actions for infringement by adding this paragraph:

T hus, a registered mark shall have no effect against any person who, "159.4 There shall be no infringement of t rademarks
in good faith, before the fili ng date or the priority date, was using or trade names of imported or sold drugs and m edicines
the mark for the purposes of his business or enterprise. (Sec. 159.1) allowed under Section 72.1 of this Act, as well as imported
or sold off-patent drugs and medicines: Provided, That
This right may only be transf erred or assigned together with his said drugs and m edicines bear the registered marks that
e nterprise or business or w ith that part of his enterprise or business have not been tampered, unlawfully modified, or infringed
in which the mark is used. upon as defined under Section 155 of this Code."

31.3 Printer of Infringing Mark

Where an infringer who is engaged solely in the business of printing

t he m ark or other infringing materials for others is an innocent
in fringer, t he owner of the right infringed shall be entit led as against
32 T RADE NAMES OR BUSINESS NA M ES

such In fringer only to an injunction against future printing. (Sec.

32.1 Trade name, Defi ned
159.2)
Trade name means the name or designation identifying or dist inguishing
31.4 Advertisem ent an enterprise. (Sec. 121.3) It is also known as "business identifier.''''

W hen t he infringement complained of is contained in or is part of paid

a dverti sement in a newspaper, magazine, or other similar periodical or lARules and Regulalions on Trademark, Rule 100(1).
 246 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 24 7
LAW ON TRADEMARK

Thus, whi le trademark distinguishes on e's goods from the sea of

similar goods, a trade name distinguished one's business entity frorn 1 ••• ·. • ' gistered with tl1e Securities and Ex~hange
the rest of the industry. . in January 2901-, It. ;ha$ a franchise
offee R9rtners Ltd . . (.CR s
32. 2 Names That Cannot be Used as a Trade Name isting under t~he laws
si1,;~ rfglit to .
A n ame 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 t rade circles or the public as to the nature of the enterprise
identified by t hat name. (Sec. 165.1) it' TE:i [S

32.3 Protected Even Without Registration

·.· 9. . .
Notwithstanding any laws or regulations providing for any obligation
t o register t rade names, such names shall be protected, even prior to
or without registration, against any unlawful act committed by third F .. . . ; .
parties. (Sec. 165.2[a]) r y · natne Boy_d :
In particular, any subsequent use of the trade name by a third . . .. . . BCeP.I . engaged. in ·
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 t he publ ic,
shall be deemed unlawful. (Sec. 165.2[ b])
The remedies provided for in Sections 153 to 156 and Sections
166 and 167 of Republic Act No. 8293 shall apply mutatis mutandis
to trade names. (Sec. 165.3)
Any change in t he ownership of a trade name shall be made with
the t r ansfer of the enterprise or part thereof identified by that name.
Th e provisions of Subsections 149.2 to 149.4 of the law shall apply
mutatis mutandis. (Sec. 165.4)
248 ESSENTIALS O F I NTELLECTUAL PROPERTY LAW CHAPTER [V 249
LAW ON TRADEMARK

' ·-: through fraud ) iassed off its mark as that' o held t at 'etit ioner's use of t he tr-a . . ,.
likely <;:ause cpnfusio
- ed ousiness avvay frqm . . . ·n . .
r -q:}rporatibn, testiffe
y ORene'd sci,me(im
p,would be opene'
at t he qoffee shqp
nt executed in lanu
fOnipa n{'aviiec(
· me involved- in••t
.·· . ' vest i
his!).a
)
'NCISC
·Ei "add
-~.Ii 0.0 lleagu~
· w,ere 'former
te'd S.tates, He
i;!-.an;d qdOpted
famous
.
'dty ln
.• ' .
250 ES SENT I ALS OF JNTELLECTUAL PROPERTY LAW CHAPTER IV 2S I
LAW ON TRADEM ARI<

, The Ruling of t he.cputt of Appeals (1 ) The t rademark being infringed is nigistered in

the' Intellectual Property Office; however~- in
s June 2005 Decision, ourt of Appeals set · ·· · gement of . trad · · ·same need
t&ber 2003. deds· •.•I •:) .., , • • ••· ' .· •' , . , ::

V h~re _W£!S "rio·· i ~

·eprotlu.ced,
' '

·,'<:Jecislo,n pf · · a,~tttt ·
'
,,;

used 'in
ale, dr
·or th:~
J
I
,_bels,
25 2 ESSENTJALS O F INTELLECTUAL PROPERTY LAW
, I 11• I [:r\ IV 253
I /\~I' , , ' I I f!AD[ MARI(

goodc; manufactur ed by him 0 1 111 wllich li e ?eals, or his bus1~ess,

o r se, vicE>s for lhose or l lie 111n1 11,w ing established such goodwill, or
(b) In particular, any sL1bsequent use of a trade name
who shall commit any acts c 11< ulated l o produ ce said re5ult, guilty of
by a t hi rd party, whether as a trade name or a mark or
unfair compelition, and shall be subject to an action therefor. ( Sec.
collective mark, or any such use of a similar t rade name
or mark, likely to mislead the public, shall be deemed 168.2 )
unlawful. · In particular, and without in any way li mitiny the scope of
prot ect ion against unfair com petition, the followi ng shall be deemecl
4 . Not only the law .but equity considerations hOld petftioner-
guilty of unfai r competi tion:
··fiable for infringement. In Philips ·Export 8. v: v, Cot1rt of
Appeals, t his Court held t hat a corporation has an exclusive ( a) Any person, who is selling his goods and gives t hem the
right to t he use of it s n ame. The right proceeds from t he general appearance of goods of an other manufa_cturer
t heory t hat it' is a fraud•on t h.e corporation which h as aequlred or dealer, either as to the goods themselves or 1n t h e
a right to that name and perhaps carried on it s business wrapping of the packages in w hich they are contained,
thereunder, t hat anot her should attempt to use t he same or th e devices or words thereon, or i n any other feature
na me_, or t he ,same name with a slight variation in such a way of their appearance, which would b e li kely to influence
as to induce persons to deal with it in t he belief t hat t hey are purchasers to believe that the goods offered are t hose of a
dealing wit h the corporation which has given a r eputat ion to manufacturer or dealer, other t han the actual manufacturer
the name. or dealer, or who otherwise clot hes t he goods with such
' appearance as shall deceive t he public and defraud anoth er
This court is not just a court of law, but also of equity. We
of his legit im ate tr ade, or any subsequent vendor of such
ca nnot allow pet itioner to profit by t he nam e and reputation
good or any agent of any vendor engaged in sellin g such
so far built by respondent without running c1foul of t he basic
demands of fair play. Not only t h e law but equity considerations goods wi ll1 ,a lik e purpose;
hold p etitioner liable for infringement of respondent's t rade (b) Any person who by any artifi ce, or device, or who e_ m ploys
na me. any other means calculated to induce t he false belief thal
such person is oftering t he servi ces of another who h as
identified such services in t he mind of tt}e public; or

(c) Any person who shall make any fa lse statement in the
course of t rade or who shall commit a ny ot her act contrary
33 UNFAIR CoMPETmoN to good fait h of a natur e calculated t o discredit the goods,
business or services of another. (Sec. 168.3)
33.1 Nature of Unfair Competition

The provision of t he law on Unfair Compet ition rightly commences in 33.2 Ele ments
defining the rights being protected. It provides : I n a very instruct ive ponencia, Justice Carpio in Mcdonald's Corporation
v. L. C. Big Mak Bur ger, I nc., G.R. No. 143993, August 18, 2004,
"Sec. 168. Unfair Competition, Rights, Regulation explained the elements of Unfair Competition, in t his wise:
and Rem edies. - 168.1. A person who has identified in
t h e mind of the public th e goods he manufact ures or deals ' "Section 29 ('Section 29') of Republic Act No. 166
in, his business or ser vices from t hose of others, whet her defines unfair com petition, thus:
or not a registered mark is employed, has a property right
i n the goodwill of t he said goods, business or services so XXX
identified, which will be protected in the same m anner as
Any per c:on who will employ deception or any
other proper ty righ ts."
other mean s contrary to good faith by which he shall
The la w thu s holds any person who shall employ deception or pass off the goods manufactured by him or in w hich
any other means contrary to good faith by which he sh all pass of t he he deals, or his business, or services for those of t he
254 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER l V 255
LAW ON TRADEMARK

one having established su ch goodwill, or who shall

commit any acts calculat ed to p roduce said resu lt,
shall be guilty of unfair competition, and shall be MCQ Alert:. 20.14 Ba.r
subj ect to an action therefor. In inte'llettual property cases, fra ·
In particular, and without in any way lim it ing
· the caus~ of ·-
the scope of unfair competition, the foll owing shall be I
deemed guilty o f unfair competition: . e
XX X

"The essent ial elements of an action for unfair :n

compet ition are (1) confusing similarity in the genera l
appearance of t he goods, and (2) intent to deceive the
public and defraud a competi t or. The confusing similarity
may or may not resu lt from similarity in the marks, but
)
may result from other external factors in the packaging
33.3 Unfair Competition vis-a-vis Trademark Infringement
or presentation of the goods. The intent to deceive
and defr aud may be infeffed from the similarity of the Unfair competition is totally distinct from trademark infringement ~uch
appear ance of the goods as o ffer ed for sale to the public. that it may subsist even in the absence of the latter. Cases decided
Actual fraudulent intent need not be shown. by the Supreme Court, however, show that finding (or absence) of
"Unfair competition is broader than trademark trademark infringement coincides with finding (or absence) of unfair
infringement and includes passing off goods wit h or without competition. ·:.
trademark infringement. Trademark infringement is a form In Ana Ang v. Toribio Teodoro, 35 for instance, t he Court explained
of u n fair competition. Trademark infringement constitutes sufficiently why the attempt to use "Ang Tibay" for shii::~ and pants
u nfair competition when there is not merely likelihood of constitutes trademar k infringement and unfair competItIon against
confusion, but also actual or probable d eception on the t he owner of "Ang Tibay" shoes and slippers.
public because of the general appearance of the goods.
There can be tradem ark infringem ent without unfai r Another illustration is Pearl & Dean (Phil.), Inc. v. Shoemart,~
competition as when the infringer discloses on the labels where it was held that the respondent was not guilty of trademark
cont aining the mark that he manufactures the goods, infringement for the use of "Poster Ads" m ainly because petitioner
thus preventing the public from being deceived t hat the did not have it registered. The respondent was also exonerated from
goods originate from the trademark owner." (Emphasis and unfair competition though the Court said that petitioner cou ld have
made a case for it even in the absence of registration. The reason was
footnotes deleted for brevity)
that "Poster Ads" was deemed to be too generic a nam e such that it
Th e case also explained what does t he term "passing could not be associat ed with the petitioner.
off" m eans in the context of Unfair Competition. I t said
that passing off (or palming off) takes place where the 33.4 Unfair Competition vis-a - vis Product Brands
defendant, by imitative devices on the general appearance
of the goods, mfsleads prospective purchasers into buying Jurisprudence also demonstrates that resolution of unfair competition
his merchandise under the impression that they are buying cases involve question of facts. Verily, resolution as to whet her t wo or
t h at of his competitors. Thus, the defendant gives his goods more product brands are so similar t hat they can mislead purc~asers
the general appearance of the goods of his competitor wit h are fa ct ual issues and depend primarily on the interpretation of
the intention of deceiving the public t hat the goods are applicable laws.
those of his competitor.

isG.R. No. L-48226, December 14, 1942.

l 6G.R. No. 148222, August 15, 2003.
 r""

256 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER IV 257

LAW ON TRADEMARK

Si~ply stated, il cannot be generally stated that lhere is unfair supports the view that under such cil cumstances, the
compet1t 1on merely because products m dispute are sold under same imitator must be held liable."
br~nd. For instance, in t he case of Mighty Co, poration v. E. & J. Gallo
,~merr,n t he Court. held that t he proprietors of cigarette with brand 33.5 Unfai r Competition vis-a-vis Used Containers
~al/o ~re not guilty of unfair competit ion against the owners of
wrnes with same brand " Gallo." The reason was that there was no What about t he use of second-hand containers of known brands
a~empt to pass off " Gallo" cigarettes as products of E. & J. Gallo by lesser known companies? Does it constitute unfair competition?
Wrn~ry'. the maker of " Gallo" wines. The Court, citing Shell co. of the Again, the answer will depend on the circumstances of the case.
Ph,hppmes, Ltd. v. Insular Petroleum Refining Co. Ltd. 120 Phil 434
439 ( 1964) held : ' · , This was discussed in Del Monte Corporation v. Court of Appeals,
G. R. No. L-78325, January 25, 1990. In this case, Del Monte Corp.
. " The universal test question is whether the public is i ued another company because, among other reasons, it uses the
likely to be deceived. Nothing less than conduct tending emptied Del Monte bottles which they bought from junk shops to sell
t o pass off one m an 's goods or business as that of ' their catsup and other sauce products. The Supreme Court said that
anothe_r constitutes unfair competition. Actual or probable the act of the defendant company constitutes unfair competition.
d eception and confusion on the part of customers by
r eason of defendant's practices must always appear." The ponente in Del Monte also discussed Shell Co. v. I nsular
Petroleum , 11 SCRA 4 36, wherein the defendant company was
On t he other hand, it is also not true that just because the absolved from liability though it was proved that it sold its petroleum
produ~ts are s?ld under dissimilar brands the conclusion is that products on a used Shell container.
there 1s no unfair competition . This is shown in the case of Converse The difference of Del Monte from Shell was discussed in this
Rubber Corp. v. Jacinto Ru bber & Plastics Co.38 I n t his case t he manner:
manufa.cturer of , ".Custom built " rubber shoes was adjudged guilty
of unfair compet,t,on in a suit filed by the manufacturer and local "On the ar gument that no unfair competition was
distributor of "Converse" rubber shoes. The Court said: committed, the Shell Case is not on all fours wit h the case
at bar because:
"From said exam ination, We find the shoes manu-
factured by defendants to contain, as found by the trial "(l) In Shell, the absence of intent to deceive was
court, practically all t he features of those of the plaintiff supported by the fact t hat the respondent therein, before
Converse Rubber Corporation and manufactur ed, sold market ing its product, totally obliterated and erased the
or mar~eted by plaintiff Edwardson Manufacturing brands/mark of the different companies stenciled on the
Corporation, except for their respect ive brands, of course. containers thereof, except for a single isolated transaction.
We fully agree with the t rial court that the respective The respondent in the present case made no similar effort.
designs, shapes, the color s of the ankle patches, t he bands, "(2) In Shell, what was involved was a sing le isolated
the toe patch and t he soles of the two products are exactly t ransaction. Of the many drums used, there was only one
~h: s~me . : . (such that) at a distance of a few meters, container where the Shell label was not erased, while in
it 1s 1mposs1ble to dist inguish 'Custombui/t' from 'Chuck t he case at hand, t he respondent admitted that it made
Taylor.' These elements are m ore than sufficient to serve use of several Del Monte bottles and without obliterating
as basis for a charge of unfair competition. Even if not all the embossed warning.
the details just mentioned wer e identical, with the genera/
appearances alone of the two products, any or dinary, or "(3) In Shell, the product of respondent was sold
even perhaps even a not too perceptive and discriminating to dealers, not to ultimate consumers. As a general rule,
customer. could be deceived, and, ther efore, Cust ombuilt dealers are well acquainted with the manufacturer from
could easily be passed off for Chuck Taylor. Jurisprudence whom t hey make their pur chases and since t hey are more
experienced, they cannot be so easily deceived like the
inexperienced public. There may well be similarities and
37
38
G.R No. 154342. July 14, 2004. imitations whlcl1 deceive all, but generally the interests of
O.R. Nos. L-27425 and 30505, April 28. 1980. the dealers are not regarded with the same solicitude as
 r
258 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER IV 259
LAW ON TRADEMARK

a r e the inter ests of the ordinar y consumer. For it is the Act No. 8293 by any per son who believes that he or she is
form in which the wares come to the final buyer that is of or likely to be damaged by such act. (Sec. 169.1)
s ignificance." Any goods marked or labeled in contravention of the above
shall not be imported into the Philippines or admitted entry at any
33 .6 Distinguished from Infringement of Trademark customhouse of the Philippines. The owner, importer, or consignee of
goods refused entry at any customhouse may have recourse under
In Del Monte, the distinction was made, hence: the customs revenue laws or may have the remedy given by the law
1. I nfringement of trademark is the unauthorized use of a in cases involving goods refused entry or seized .
trademark, whereas unfai r competition is the passing off
of one's goods as those of another.
2. In infringement of t rad emark, fraudulent intent is
unnecessary, whereas in unfair competition, fraudulent
intent is essential.
3. In infringement of t rad emark, the prior registration of the )
\
trademark is a prerequisite to the action, whereas in unfair I
competition, registration is not necessary. _,,/

33. 7 False Designations of Origin; False Description or

Representation

Any person who, on or in connection with any goods or services,

or any container for goods, uses in commerce any word, term,
name, sym bol, or device, or any combination t hereof, or any false
designation of ori gin, false or misleading description of fact, or false
or m isleading representation of fact, which :
1. Is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or associatipn
of such person with another person, or as to the o rigin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person; or
2. In commercial advertising or promotion, misrepresents t he
nature, characteristics, qualities, or geographic origin of his
or her or another person's goods, services, or commercial
act ivities, shall be liable t o a civil action for damages and
injunction provided in Sect ions 156 and 157 of Republic
 CHAPTER i V 261
260 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
LAW ON TRADEMARI<

I h~d already rev· · · "it took note of t he p'etitioners' admiss[on that tt;iey' used · ··
. . ords "Made in Portugal" when in fa ct, t ,h ese produ
' ln the Philippines. t-tad they intended to ref
.of t he des\gn,;or th,e histor y of the m anuf
"~ave e>'cplic.it l •·· s~id so in th_ei.r _pact<a;g
ed .:that t itioners' defenS<lS wou·I
. . ·.• fo l 'and th'at t he· adml .·
ma e U,P a, su(fitier)t baiis' fQ . ·..
,.. _:~zt· . ,_'-'..} ; <;_ .

d no rave ,abuse of discreti

e . 'ruli119.

, ..

ere ,s probable cause

, 0f 5 . '. · n relation,
'

FIRM
ducts t at in -rade .sold wei-e adrn
ippines,-- with n:o authotity "From · Ca
e find n q ,·ever sible f:!rror on t he p
,nerit reconsfderation, The pet]
ent that:t ~e product's · r
tracieri)ark? in qu,e sti ·•

lusive· license
' .
262 ESSENT IALS OF INTELLECTUAL PROPERTY LAW CHAPTER IV 263
LAW ON TRADEMARK

'. ' ,. · ' ,: . ' \: . .

he 1970's , an ·

3 3.8 Unfair Competit ion under Article 28, Civil Code

Article 28 of the Civil Code provides t hat "unfair competit ion in

agricult ural, commercial or industrial enterprises or in labor through
the use of force, intimidation, deceit, machination 01· any other unjust,
oppressive or high-handed method shall give rise to a right of action
by the person who thereby suffers damage."
From t he 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, wha t the law prohibits
is unfair competition and not competition where the means used are
fair and legitimate.
In order to qualify t he competition as "unfair," it must have
two characteristics: ( 1) it must involve an injury to a compet itor or
trade rival, and (2) it must involve acts which are ch aracterized as
"contrary to good conscience," or "shocking to judicial sensibilities,"
or ot herwise 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 m inor fact or;
the essence of the matter appears to be a private wrong perpetrated
by unconscionable means. 39

39 Wil/aware Prod11c1s Corporation v. Jesichris Man11/acturi11g Corpol'atioll, G.R. No.

195549, September 3, 2014.

264 ESSENTIALS OF INTELLECTUAL PRO PERTY LAW Cl-lAPTER IV 265
LAW ON TRADEMARK

p)ast:ic rnat eric;1 I was taken fro/n . r:esponqent's idea of using

plast (c for· automotive parts. Also, petit ioner deliberately
.an
·:f:ld, r~spon~,ent's products of whi.th acts constitute unfair
titian; is a.nd are contrar y ito law1 fllOra ls1 good customs
'olicy qnd hav · .
' I.~ • "": • ,_, '
· and unrealiz
v.Jesichris .Ma · · · s ,pf;the ..··
eptember 3,
tltioner's
. titute ti
'ay ·&{ a mci •other
ny (respontj · aunt of · · il'HOUSAND PE
es for "'Unfair .: .·
) ....
,

·nc;,tion l:o •enj

r) from )1'lariu . er,-;petitiorie allegations ' of I!
ot ive· parts. sl, except for t t hat it is ehgag
ufactur·e an itchenware . items
. I • . ade of:plastic and met physical proximity , .-<
. .. duly ,r~gisfere . p · · it i9ner:'s offic~ to e, ·a~d _tha~ sp"!1e
eoga~e m the·-manufacture and d1sfributiori of pl;;i,st ic qrid pondent's employ e s a .. rans rr . to pet itioner and
n:ietal ,products, with principf!I o,fl'ice at NO: 1_0 0 Mit_hf Street, ver t.tre years pefit!o eveloped fa'rnili · ,h .
S<iin1~pal:U~c:1n ,r c· · · · ity, •sfnce its regi$tn:itioh.·in 1992 pROndenbf<prnd1.1cts, es ': . . ' . . .
r.espondent has in its Caloocan plan ;rt~,•
· ·b_u tin ·· · · Pli'l. · · '

- made a
266 ESSENT[ALS OF I NTELLECTUAL PROPERn' LAW CH.A.PH :R rv 267
L/1.W ON TRADE-MARJ,

respondent's and t he selling of t he same·., products - tp

'respondent's customer$, which it cultivi;lted; over th~ yearsr In order to qualify t he competition as "unfqir," ft must
will have to be enjoined. ' .I . • have \11'{0. ,,c haracteristics: .(1) jt m~st involv~.,,an injury to
. 1, t;' ::,,·:;-i'..>
· · · · · · ,or,'or •trade ~jval" and ( ~) it ol,"'.e acts
'~p~al, P,~titio haraqte~izi=d fl~ ''c,ontrary-t.o . ·ce," 0r
;--. ) en',~\bllitle's/" o,r •f?t . er.w1sf,! ,u,n _awfuli ·in ·.
ff 'law, th~.s~ indu_ ge fore~, _:iJ:,ti~ 'ida_ti0ri;
chma. ,on, or any other uhju~t , oppressive or tiigJ1-
. meth.0¢,; The p1;1blic: injury or intei"e;,t rs ,a m i.rior
t he: e!;;s.erice of .tlie matte!' appears ,to he ·a private
erpet rcited by unc911scionable means '
; '

otb charac~eristics ar.e: present. ·

't~
p~'fties are competitors or trade ~lv_als, ,·b.oth &eing ·
d in the manufacture of pfastic-ma'(.le•- automotive
Sefondr • the ·acts o.f t;ni;? petitioner .were cleatly .
ary to .gpclcl conscience'l as p~titioner admitted having .
9yed ,r~spond~nt's ,f ormer employe,e$, deliberately
ied respondent's products and even went to th~ extent of
lling:these p~oduc,t s to res'pdMent's cu.stoniers. · .
,, . 1
1
· , ' '_.,.,,
,
• r< l

·boJster t l')f$ point,. ·u,e, 'CA

correctly pointed o v t
·tr ner's hiring of the former eniployees' of·respo
. tition'e r's act of
c0pyipg th,e subject plastl~ pa
1
de9't were tantam ou·nt'.to unfai1· comp~Nt ion', viz,. :,i
'·' e witnesses indicate tbiat .
eting wiy1 t he b~sihes
' b~i'' .charatteri
' ;,

h , .
268 ESSENTI ALS OF I NTELLECTUAL PROPERTY LAW CHAPTER I V 269
LAW ON TRADEMARK

'' . .
ccusatio_n: he did_ ~ot ge~

34 CRIMINAL PENALTY

34.1 Penal Provision for Trademark Infringement

,n Independent of the civil and administrative sanctions imposed

IJ:t by law, a crimin al penalty of imprisonment from t wo years
to five years and a fine ranging from Fifty thousand pesos
(P50,000.00) to Two hui}dred t housand p esos (P200,000.00) , 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
of Repu blic Act No. 8293. (Sec. 170)

This particular section superseded the Revised Penal Code,

Articles 188 and 189.
270 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER JV 271
LAW ON TRADEMARK
272 ESSENT IALS OF INTELLECTUAL PROPERTY LAW

due to their having been given the appearance of the genuine

products, particularly with the difficulty of detecting whether
the products were fake or real if the buyers had no experience CHAPTER V
and the tools for detection, like black light. He thereby
infringed the registered Fundador trademark by the colorable
i ry,itation of it through applylr:ig the dominant features of t he
tr('\'derhar~ on the f'ake products, pa'rticularly the two bottles LAW ON COPYRIGHT
filled with Fundador brandy. His acts constituted infringement
of trademark as set forth in Section 155, supra.
The special thing about copyright as compared to patent and
trademark is that it need not be registered t o be protected. The law
provides t hat intellect ual creations in the literary and artistic domain

D~ Ten Fast Laws on Trademark

are protected from the moment of its creat ion.
This seeming simplicity of copyright however is negated by the
difficulty of ascertaining infringement of copyright. This is particularly
1. Marks are visible signs that are capable of distinguishing goods true in cases where copying to a certain extent is desired under the
or services. circumstances. For instance, an author of a book may want to quote a
portion of the book of other authors in his manuscript or a songwriter
2. There are marks that are not allowed by law to be used or may include in his composition a popular song.
registered.
The difficulty lies in determining t he boundary between fairly
3. Each case must be decided on i ts own merits in ascertaining using someone else's work and infringing that person's copyright.
whet her there is colorable. There is indeed a fine line between intellectual Integrity from
4 . Likelihood of confusion is enough to make a case for trademark intellectual dishonesty in the realm of copyright considering t hat the
in fringement. Actual proof confusion is not necessary. measure of copyright infringement is not in any way mathematical.

5. Trademarks that are considered well-known may be protected In Significantly, t he realm of copyright is way beyond commerce.
the Philippines even without registr ation. This is manifested by t he fact that it is only in copyright that moral
rights• are expressly recognized and accorded to t he creator. It is in
6. Registration of a mark does not preclude a third party to use this respect that copyright cases are emotionally charged since what
their names, pseudonyms, etc., as long as such use Is confined is at stake is more than just economics for a clear case of copyright
to the purpose of m ere ident ification only. infringement will reduce a scholar to a mere scoundrel.
7. A registered mark may be transferred or assigned without t he
transfer of the business using the mark.
8. Unregistered trade names are protected from infringement.
35 COPYRIGHT
9. Unfair competit ion and trademark infringement are not the
sam e . They have d ifferent elements. 35.1 Copyright
10. Crim inal liability attaches to tradema rk infringement. Copyright is a legal concept t hat gives t he creator of an original work
exclusive rights to It , usually for a limited per iod of time. At it s most
general, it is literally "the right to copy," but also gives the copyright

' Rep. Act No. 8293, Sec. 193.

273
 274 ESSENTIALS OF INTE LLECTUAL PROPERTY LA W
r CHAPTER V
LAW ON COPYRI GHT
275

holder the right to be credited for t he wor k, to determine who (if

anyone) may adapt the work to other forms, to determ ine who may
perfor m the work, to benefit fin ancially from the work, and ot her Bar Exam 1995:
related rights! The scope of copyright is confined to literary and What intelle.ctual
artistic works which are original intellectual creations i n the literary . _eopyr igtit? ' '
and artistic domain.'

Section 177 of Republic Act No. 8293 specifically provides that

copyright is synonymous with economic rights and shall consist of the
exclusive right to carry out, authorize or prevent the following acts : 35.2 Distinguished from Patents

1. Reproduction• of the work or substantial portion of the Inventions are within t he scope of patents. Assume, however, t hat
work; the inventor authored a book describing how to cr eate that invent ion
wit hout actually producing t he invention. The book, being a subj ect
2. Dramatization, translation, adaptation, abridgment,
of copyright , is protected from the moment it was completed. Would
arrangement or ot her transformation of the work;
this mean that the invention described in the bool< is protected?
3. The first public distribution of t he original and each copy of
the work by sale or other forms of transfer of ownership; This was the subject of t he case of Pea rl and Dean v. Shoemart, •
discussed in the earlier part of this work. In that case, it was con-
4. Rentals of the original or a copy of an audiovisual or tended that the copyright over t he engineerin g drawings extended
cinemat ographic work, a work embodied in a sound ipso facto to the act ual light boxes depicted or iltustr-ated in the said
recording, a comput er program, a compilation of data drawings.
and other materials or a musical work in graphic form,
irrespective of the ownership of the ori ginal or the copy I n that case, t he':.Supreme Court sustained the ruling of the
which is t he subj ect of the rental; Court of Appeals that t h e actual light boxes are not protected by the
copyright over t he drawings. It quoted wit h approva l the following
5. Public display of the original or a copy of the work;
rationale given by the Court of Appeals, thus:
6. Public performance6 of the work; and
7. Other communication to the public' of the work. "Since the light boxes cannot, by any stretch of
the imagination, be considered as eit her prints, pictorial
illustrat ions, advertising copies, labels, tags or box wraps,
1
Http://en. wik.ipedia.org/w iki/Copyrig ht to be properly classifi ed as a copyrightable class 'O' work,
'£/idad Khov. Court of Appeals, G .R. No. I 15758, Marcil 19, 2002. we have to agree with SM! when it posited that what was
• "Reprod11clion" is the making of 0 11e ( I) or mo re copies, temporary o r penuanent, io copyrighted were t he technical drawings only, and not the
whole or in part, of a work o r a sound recording in any manner o r form without prejudice to the light boxes t hemselves, thus:
provisions of Sec. 185 of Republic Act No. 8293. (Rep. Acl No. 8293, Sec. 171 .9 as amended by
Rep. Act No. 10372) "4 2. When a drawing is technical and depicts a
5
"R ental" is the transfer of the possession of the original or a co py of a work or a sound utilitarian object, a copyright over the drawings like
reco rding for a limited period of time, for profit-making purposes. (Rep. Act No. 8293, Sec. 171.8)
0 plaintiff-appellant 's will not extend to the actual object. It
"Publicpe1fo1·111a11ce, " in the case ofa wo rk other Lhan nn aud iovisual work, is the recita- has so been held under jurispru dence, of which t he leading
tion, playing, d ancing, acting or otherwise performing the work, either directly or by means of any case is Baker v. Selden ( 101 U.S. 841 [1879)). I n that
device ~r process; in tl1e case of an audiovisual work, the showing of its images in sequence and
case, Selden had obtained a copyright pr otection for a
the making o f the sounds accompanying it audible: and. in the case of a sound recording, making
the recorded sounds aud ible al a place or ar places where persons outside the normal circle of a
family and lhai family's closest social acquaiulant es arc or can be present, irresp~ctive ofwhcther
they arc or can be present at the same place and al the same t ime. or at di ffere nt fl laees and/or at and retransmitting IJy satellite, and includes the making of a work available to the public by wire
different ti mes, and where the performance can be perceived w ithoul the need for communication or wireless means in such u way that members of the public may access these works from a place
within the meaning ofSubsec. 171.3. ( Rep. Act No. 8293. Sec. 17 l.6) and time individually chosen by them. (Rep. Act No. 8293, Sec. 17 1.3 as amended by Rep. Act
1
"Comm11nicatio11 to the public" or "co111mu11icate to the public" means any communica- No. 10372)
8
tion to the public, including broadcasting, rebroadcasting, relransmitting by cable, broadcasting G.R. No. 148222, August 15, 2003.
276 ESSENT IALS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 2 77
LAW ON COPYRIGHT

book entitled 'Selden's Condensed Ledger or Bookkeeping

Simplified' which purported to explain a new system of The Supreme Court then gave its own rationale as to why light
bookkeeping . Included as part of the book were blank boxes were not w ithin t he scope of copyrigh t over the drawings upon
fo rm s and illustrations consisting of r uled lines and which they are based, thus:
headings, specially designed for use in connection with
t he system explained in the work. These forms showed "Copyright, in the strict sense of the term, is purely
t he entire operation of a day or a week or a month on a a statutory ri ght. Being a mere statutory grant, the r ights
single page, or on two pages following each other. The are limited to what t he statute confers. It m ay be obtained
defen dant Baker then produced forms which wer e similar and enjoyed only with respect to the subjects and by the
to the forms illustrated in Selden's copyri ghted books. persons, and on terms and conditions specified in the
The Court held that exclusivity to the actual form s is not statute. Accordingly, it can cover only the works falling
e xtended by a copyright. The reason was that 'to grant a within the statu tory enumeration or description.
monopoly in the underlying art w h en no examination of
its novelty has ever been made would be a surprise and a "P & D secured its copyright under the classification
frau d u pon the public; that is th e province of letters patent, class 'O' work. This being so, petitioner's copyright
not of copyr ight.' And t hat is precisely the point. No doubt protection extended only to t he technical drawings and not
aware t hat its alleged or iginal design would never pass to the light box itself because the latter was not at all in
the r igorous examinat ion of a patent application, plaintiff- the category of 'prints, pictorial illustrations, advertising
appellant fought to foist a fra udulent monopoly on the copies, labels, t ags and box wraps.' Stated otherwise, even
p ublic by conveniently resorting to a copyright registration as we find that P & D indeed owned a valid copyright, the
which m erely employs a r ecorda l system without the same could have referre d only to the t echnical drawings
benefit of an in-depth examination of novelty. within the category of 'pictorial illustrations.' It could not
have possibly stretched out to include t he underlying light
"The princip le in Baker v. Selden was likewise applied
box. The strict applica tion of the law's enumeration i n
in Muller v. Triborough Bridge Authority ( 43 F. Supp.
Section 2 prevents us from giving petitioner even a little
298 [S.D.N.Y. 1942)). I n this case, Muller had obtained
leeway, that is, even if its copyright certificate was entit led
a copyright over an unpublished drawing entitled 'Br idge
Appr oach - the drawing showed a novel bridge approach 'Advertising Display Units.' What the law does not include,
to unsnarl t raffic congestion.' The defendant constructed a it excludes, and for the good reason: the light box was not
b ridge approach which was alleged to be an infringement a literary or artistic piece which could be copyrighted under
of t he new design illustrated in p laintiff's drawings. I n the copyright law. And no less clearly, neither could t he lack
this case it was held that protection of the drawing does of statutory authority to make t he light box copyrightable
n ot extend t o t he unauthorized duplication of the object be remedied by the simplistic act of entit ling the copyr ight
drawn because copyright extends only to the description certificate issued by the National Library as 'Advertising
o r expression of the object and not t o the object itself. It Display Un its.'
does not preven t one from using t he drawings to construct
the object portrayed in the drawing. "In fine, if SMI and NEMI reprinted P & D's technical
drawings for sale t o t he public without license from P & D,
" I n two other cases, I mperial Homes Corp. v. Lamont, then no doubt they would have been guilt y of copyright
4 58 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379 F. infringement. But this was not the case. SMI's and NEMI's
2d 84, it was held that there is no copyright infringement acts com plained of by P & D were to have units similar
when one who, without being au thorized, uses a copy- or identical to t he light box illustrated in the technical
ri ghted arch itect ural plan to construct a structure. This is drawings manufactured by Metro and EYD Rainbow
because the copyright does not extend to the structures Advertising, for leasing out to different advertisers. Was
themselves.
this an Infringement of petitioner's copyright over the
"In fine, we cannot find SM! liable for infringing Pearl technical drawings? We do not think so.
an d Dean's copyr ight over the tech n ical drawings of the
"Dur ing the trial, the president of P & D himself
latter's advertising display units."
admitted that the light box was neither a literary not an
278 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 279
LAW ON COPYRIGHT

artistic work but an 'engineering or marketing invention.' creation, a copyright may be obtained only for a work falling wit hin
Obviously, there appeared to be some confusion r egarding the statutory enumeration or description.9
what ought or ought not to be the proper subjects of This makes the enumeration of the scope of copyright under
copyrights, patents and trademarks. I n the leading case section 172 very important. It is provided in this section that the
of Kho v. Court of Appeals, we ruled that these three scope of a copyright is confined to literar y and artistic works which
legal rights are completely distinct and separate from one are original intellectual cr eations in the literary and artistic dom ain
another, and the protection afforded by one cannot be used protected from the moment of their creation. Literary ~nd ~rtistic
interchangeably to cover items or works that exclusively works, or simply " works" are original intellectual creations 1n the
pertain to the others: literary and artistic domain and shall include in particular:
"Trademark, copyright and patents are different 1. Books, pamphlets, articles and other writings;
intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of 2. Periodicals and newspaper s;
distinguishing the goods (trademark) or services (service 3. Lectures, sermons, addresses, dissertations prepared for
mark) of an enterprise and shall include a stamped or oral delivery, whether or not reduced in writing or other
marked container of goods. In rela tion thereto, a trade material form;
name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a 4. Letters;
copyright is confined to literary and artisti c works which 5. Dramatic or dramatico-musica l compositions; choreo-
are original intellectual creations in the literar y and artistic graphic works or entertainment in dumb shows;
domain protected from the moment of their creation.
6. Musical compositions, with or without words;
Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human 7 . Works of drawing, painting, architectur e, sculpture, en-
activity w hich is new, involves an inventive step and is graving, lithography or other works of art; models or de-
industrially applicable." signs for works of art;
8. Original ornamental designs or models for articles of
This case of Pearl and Dean gave the court an occasion to discuss m anufact ur e, whether or not registrable as an industrial
t he difference between patents and copyright. It also presented an design, and ot her works of applied art;
opportunity for the court to cite t he famous case of Baker v. Selden,
1 01 U.S. 84 1 (1879), considered a milestone case in t he United 9. Illustrations, maps, plans, sketches, charts and three-
States copyright histor y. dimensional works relative to geography, topography,
ar chitecture or science;
10 . Drawings or plastic works of a scientific or technical
character;
11. Photographic works including works produced by a process
36 Scope OF COPYRIGHT analogous to photography; lantern slides;

36.1. Original Works 12. Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or

DJ Copyright, in t he strict sense of t he term, is pu rely a statutory

right. It is a new or independent right granted by the statute,
and not simply a pre-existing right r egulated by the statute.
13.
any process for making audiovisual recordings;
Pictorial illustrations and advertisements;
Being a statutory grant, t he rights are only such as the statute 14 . Computer progr ams; and
confers, and may be obtained and enjoyed only with respect to the
subj ects and by t he per sons, and on terms and condit ions specified in
the statut e. Since copyright in published wor ks is purely a statutor y 9Joaquin v. Driln11, G.R. No. 108946, January 28, 1999.
 CHAPT ER V 281
280 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
LAW ON COPYRIGHT

15. Other literary, scholarly, scient ific and a1tistic works. (Sec.
172.1 ) Bar Exam 1998:
These works are protected by t he sole fact of their creation, Juan Xavier wrot e and published a story similar to an '
irrespective of their mode or form of expression, as well as of their tmpublished copyrighted story of Manoling Santiago.
content, quality and purpose. (Sec. 172.2) It yvas, howeveG conclllsively proven that Juan Xavier
was not aware that the story of Manoling Santiago was
protected by copyright. Manoling Santiago sued Juan
'"';' . ;., 1·' • Xavier' for infringement of copyright. Is Juan Xavier
MCQ Alert: 2011 (?ar liable?
Under· the lf}tellectual Property Code, l~ctures, ser•
mans, addresses or dissertations prepared for oral
delivery, whe_t her or not reduced in writing or 0th.er
material forms, are regarded as .
Bar Exam 2010:
A. n~n-orlglnal works.
While vacationing in Boracay, Valentino surrepti-
B. original works. ~iously .. took photographs of his girlfriend Monaliza in
C. derivative works. her skimpy bikini. Two weeks later, her photographs
appeared in t he I,nternet and In .a national celebrity
D. not subject to protection. magazine. ·
Monaliza fot.m,d out that Valentino had sold the photo-
graphs to the;magazine and, adding insult to injury,
uploaded them to his person?! blog on the ln~ernet,
A. Monaliza filed a complaint against Valentino for
lt31 MCQ A,lert : 2012 Bar
dc1mages based Of), am9ng other grounos, viola-
tion of her intellectual property rights. Does she
X's painting of Madonna and Child was used by her have any cause of action? Explain.
mother to print some persopalized gift wrapper. As
B. Valentino's friend Franc~sco stole the photo-
part of her mother's efforts to raise funds for Bantay
Bata, the mother of X sold the wrapper to friends. y) graphs and duplicated them and sold t hem to a
an entrepreneur, liked the painting in the' wrapper and magazine publicat ion. Valentino sued Francesco
for infringement and damages. Does V~lentino
made many copies and sold the same .through Na-
have any cause of action? Explain. ·
tio al Boo~store.Whlch,$tatement is most accurate:J
A. Y can use the painting for his use because this is C. Does Monaliza have any cause of action against
Francesco? Explain. ' ·: · ·
not a c9pyrlghtable material. ·
B. X can sue Y for infringement bec;:ause artistic
works are p otected from moment of creation :·
Works of art. need to be copyrighted also to get
protection under the law'.
1
· · ·
Bar Exam 2013:

D. Y can use the drawing even J ho~1gh not copy- Rudy i$ a fine arts student in a university. He stays in
righted because It is already a public property a boarding house with Bernie as his roommate. During
having been published already. his free time, Rudy wo~ld paint and leave his finished
282 ESSENJLI\IS<ll [IHILlf"t t!r : l':ionr' rnY I AW CHAPTER V
LAW ON COPYRIGH I

The law provides that the following derivative workc; shall also
works lying around t he boarding house. One day, Rudy be protected by copyright.
saw one of his works - an abstract painting entitled 1. Dramatizations, translations, adaptations, abridg ments,
Manila Traffic Jam - on display at t he university caf- arrangements, and other alterations of literary or artistic
eteria. The cafeteria operator said he purchased the works; and
painting from Bernie who represented himself as its
p_a inter and owner. 2. Collections of literary, scholarly or artistic works, and
compilations of data and other materials which are original
&udy and the cafeteria operator immediately con- by reason of the selection or coordination or arrangement
frnnted Bernie. While admitting that he did not do the of t heir contents. (Sec. 173.1)
painting, Bernie claimed ownership of its copyright
since he had already registered it i.n his name with the These works shall be protected as new works, provided, however,
National Library as provided in t he Intellectual Prop- that such new work shall not affect the force of any subsisting
erty Code. 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
Who owns ~he copyright to the paint ing? Explain. to secure or extend copyright in such original works. (Sec. 173.2)
' ' .

36.2 Copyright and E-commerce Act

Bar Exam 1989:
It is also noted that the advent of electronic communication and In 1999, Mocha W<;1rm, an American musician, had a hit
commerce enlarged the scope of copyright. There is a need therefore rap single called Warm Warm Honey which he himself
to relate the law E-commerce Act to Intellectual Property Code. composed and per formed. The single was produced by
a California record company, Galactic Records. Many
noticed t hat some passag~s from Wa \m Warm Hon ey
sounded eerily similar to parts Unde Hassle, a 1978 hit
song by the Brit ish rock band M9jesly. A copyright ,in-
fringement suit was fited in the United States against
D1ana and Pibio are famous p~r~onalities in show busi- Mocha Warm by Majesty. It was later settled out of
ness whoke8t t h€lir love affair sei;ret. They use a spe- cotlrt, with Majesty receiving attribution as' co-author
cial instant rnessaging, service which allows them to of Warm Warm Honey as welt as a share in t he royal-
see on~.anotper's Jyping on. their own, scl'.een a;5 each ties. · '· · ' ·
letter key is.·pressed. When Greg; t he controller -Of t he
service facility, found out their i_dentities, he kept a By 2002, Mocha yVarm was nearing bankruptcy and he
c◊-py of all the messages Diana and Piolo se/'it ·ead'\' • sold his economic rights over Warm Warm Honey to .
other aod published them . Is Greg liable for copyright Galactic", Records
.
for $10,000.
infringernent;? Reason briefly; · · ,· ·,, · ·" · · · "
In 2008, Planet Films a Filipino movie producing com-
pany, commissioned DJ Chef Jean, a Filipino musioian,
to produce an original re-m ix of Warm Warm Honey
for use jn one of i.ts latest filn,s, Astig! DJ Chef Jean
36.3 Derivative Works remixed Warm Warm Honey wit h salsa beat and in-
terspersed as well a recital of a poetic stanza by John .
Derivative works are creations that are based on an existing Blake, a 17th 'century Scottish po'e t. DJ Chef Jean
[t] work. Thus, t he series of film "Harry Potter" is a derivative
work based on the novel of the same title. A song that is a "re-
died shortly after submitting the remixed Warm Warm
Honey to Plane t Films.
make" of an old song is anot her example of derivati ve works.
284 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER V 285
LAW ON COPYRIGHT

etc. may be protected by copyright. For instance, a book may be

Prior to the release of Astig!, Mocha Warm learns of written dealing wit h healthy living through a diet of carefully selected
the remixed Warm Warm Honey and demands that food. The book may be protected by copyright but not the idea of
he be publicity identified as the author of the rem ixetf healthy living through the said diet.
song in all the CD covers and publicity releases of
The second classification pertains mainly to news of t he day for
Planet Films,
no one can have the monopoly of news or current events. This would
1. Who are the parties or entities entitled to be be a smack not only on intellectual property law but also to press
creoited as author of the remixed warm Warm freedom.
Honey?'Reason out your answer.
The last one is on official government texts from the three
2. Who are t he particular p arties or entities wild branches of the government. Thus, a law that was passed by cong ress,
exercise copyright over the remixed Warm Warm or a decision rendered by t he court or an administrative order issued
Honey? Expl9,if"\, an administrative agency cannot be copyrighted.

36.4 Publisher 's Right MCQ Alert: 2011 Bar

A publisher is someone who makes public something. This X came up with a new way of presenting a telephone
[t] word has evolved to mean as someone who is engaged in
the business of publishing reading materials such as books,
dir~ctory in a mobile phone, which he Qubbed a,s the
''ITel" and which uses lesser time for locating names
newspapers and magazines. Publisher of songs are usually and telephone numbers. May X have his "iTel" copy-
called record producer. In t he film industry, it is usually called m ovie righted in hjs name?
producer.
A. No, because it is a i;nere system or method.
The law provides that the publisher shall have a copyright
consisting merely of the right of reproduction of t he typographical B. Yes, because it is an original creation.
arrangement of the published edit ion of the work. This right of the C Yes, because it entailed t he application of X's
publisher may of course be expanded by agreement with the author intellect.
who generally owns the copyright. (Sec. 174)
D. • No, because It did not entail any application of X's
Intellect.

37 N O N-CO PYRIGHTABLE WORKS

37.1 Unprot ect e d Subje ct Ma tte r

X, ' an amateur a§trononier, stumbled upon what
No protection shall extend, under the law, to any idea, procedure,
appeared to be a massive volcanic eruption in Jupiter
system method or operation, concept, principle, discovery or mere
while peering at the planet through his telescope. The
data as such, even if they are expressed, explained, illustrated of.
following week, X, without notes, presented a lecture
embodied in a work; news of the day and other miscellaneous facts
on his findings. before the Association of Astronomers ,
having the character of mere items of press information; or any
of the Philippines. To his dismay, he later read a n
official text of a legislative, administrative or legal nature, as well as
article in a science journal written by Y, a professional
any offi cial translation thereof. (Sec. 175)
ast:ronomer, repeating exactly what X discovered
This provision of the law provides actually three major wit hout any attribution to him. Has Y infringed on X's
classifications. The first involves idea, procedure, system and ot hers copyright, If any?
that are not in tangible form. Only expressions of this idea, procedure,
286 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 287
LAW ON COPYRIGHT

A. No, sin6e X dig not reduce l1is lectu ·· . . ;.: :,

ot · · ·• ,, while . - ··
288 FSSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 289
LAW ON COPYRI GHT

b or embodied in a work; news or the day and other

Eb!I.TNe miscellaneous facts having the character of mere
"ti 1, ormat of a shqw is not copyrightable. To ·begin with, items of press information; or any offici al text of a
the format of a show is not copyrightablec/Section 2 of P.D.,- legislative, administrative or legal nat ure, as well as
No. 49, otherwise known as the DECREE aN INTELLECTUAL any official translation thereof."
PROPERTY, enumerates the classes of work entit led to
copyright protection, t9 wit) , ' What then is the subject matter :of petitioners' copyright?
This Court is of the opinion that petitioner BJPI's copyright
. XXX XXX XXX . · covers audiovisual recordings of each episode of Rhoda and
,f,<,, Me, as falling within the class of works mentioned in P.D. No.

G_82930-ryre
his provision is substa11tially the same a~ , 172 of the
NTELLECTUAL.,».OPERTY CODE OF THE PHILIPPINES (R.A.
No. ~or1;1at or me~tianics of a tel.evision st:iow is
49, §2(M), .to wit:
Cinematographic works and works produced by a process
analogous·· to cinematography or any_ process for making
· not included m the 11st of protected works in §2 of P.D. No. 49.
For this reason, the protection afforded by the. law cannot be audiovisual recordings.
extended t o '.c over t hem. 3. The copyright does not extend to the general concept
2. Copyright, in the strict sense of the term, IS purely a or format of Its dating game show. Accordingly, by the very
statutory right. It is a new or independent right granted by nature of the supject of petitioner BJPI's copyright, the
the. statute, and not simply a pre-existing right regulated by investigating prosecutor should have the opportunity to
the stat ute. Being a statutory grant, the rights are only such compare the videotapes of the two shows.
as the statute confers, and may be obtained and enjoyed only Mere description by words of the general format of the
with respect to the subjects and by t he persons, and on terms two dating game sriqws Is insufficient; the presentation of
and conditions specified in the statute: the master videotape in evidence was indispensable to the
determination of the existence of probable cause. As aptly
Since, ..._.copyright In published works is purely a statutory
cr_ea~ion, a copyright may be obtained only for a work falling observed by respondent Secretary of Justice:
. within t oe Stqtutory enumeration or description. A television show includes more than mere words
Regardless of t he historical viewpoint, it is authorftatlvely can describe bec;:ause it involves a · whole ·spectrum
settled in the United States that there is no copyright except of visuals and effects, video and audio, such that no
that whic~ is both created anq secured by act of Congress .., similarity or dissimilarity may be found by merely ·
describing the general copyright/format of both
P.D'. No. 49, §2, In enumerating _w hat are subject to copxright, d~ting game shows.
refers to fihlshed works and not to concepts. The copyright does
not extend to an idea, procedl.lre, process, system, method
of ,operation, COflcept, prl.ndple, 'Or discovery, . regardle$S
of the form in which it is described, explaiQed, illustrated. 37 .2 Works of the Government
, or embodied in ,such work. Thus , the new·' INTELLECTUAL:
A "work of the Government of the Philippines" is a work created by
PROPERTY CODE OF THE PHILIPPINES pi;-ovides:
an officer or employee of the Philippine Government or any of its
~
subdivisions and instrumentalities, including government-owned or
Sec. 175. Unprotected Subject Matter. - No.t-
controlled corporations as part of his regularly prescribed official
. withstanding the provisions of $edions 172 and
duties. (Sec. 171. 11)
173, no protection shall extend, under this la,w, to
any idea, procedure, system, method ·or operation, This is broader t han what was discussed above since its scope
concept, principle, discovery or mere data as suc;J"i, is beyond text or documents. Thus, an architectural work by a
even if t hey are expressed, explained, illustrated governmen t engineer t hat was designed as part of his duty cannot be
protected by copyright.
290 ESS ENTIALS OF INTELLECTUAL PROPERTY I.A W
CHAPTER V 291
l AW ON COPYRIGHT

Two elements must be present in order to be deemed as "work 2. In the case of works of j oint authorship, the co-authors
of t he government." The first is that the c, eator must be an officer or shall be Lhe original owners of the copyright and in the
employee of the government. The second is that the work was done absence of agreement, their rights shall be governed by
as part of his r egularly pr escribed official duties. the rules on co ownership. If, however, a work of j oint
It is provided t hat no copyright shall subsist in any work of the authorship consists of parts that can be used separat ely
Government of t he Philippines. (Sec. 176.1) and the author of each part can be ident ified, the au thor
of each part shall be the orig inal owner of the copyrig ht in
As a general rule however, prior approval of the governm ent t he par t that he has created. (Sec. 178.2)
agency or office wherein the work is created shall be necessary for
exploitation of such work for profit. Such agency or office may, among 38.2 Copyright Ownership in the Course of Em ployment
other t hings, impose as a condit ion t he payment of royalties.
As an exception to the general rule, no prior approval or In the case of work created by an author during and in the course of
condit ions shall be r equired for the use of any purpose of statutes, his employment, the copyrig ht shall belong to:
rules and regulations, and speeches, lectures, sermons, addresses, 1. The employee, if the creat ion of t he obj ect of copyright is
and dissertations, pronounced, read or rendered in courts of j ust ice, not a part of his regular duties even if the employee uses
before administrative agencies, in deliberative assemblies and the t ime, facilities and materials of t he employer.
in meetings of public character. However, the author of speeches,
lect ures, ser mons, addresses, and dissertations alone shall have the 2. The employer, if t he work is the result of the performance of
exclusive righ t of making a collection of his works. (Sec. 176.2) his r egularly-assigned duties, unless there is an agr eem ent ,
express or implied, to the contrar y. (Sec. 178.3(b])
37 .3 Government and Copyright 38.3 Copyright Ow nership of a Commissioned Work
The above discussions on "works of government" not protected by In the case of a work-commissioned by a person ot her than an
copyright does not mean however t hat t he government cannot be a employer of the author and who pays for it and the work is made in
copyright ow ner. This is clarified in Section 176.3 of the law, t hus : pursuance of t he commission, the person who so commissioned the
work shall have ownership of work, but the copyright thereto s hall
"Section 176.3. Notwithstanding the foregoing remain wit h the creator, unless there is a written stipulation to the
p rovisions, the Government ls not precluded from receiving contrary. (Sec. 178.4)
and holding copyrights transfer red to it by assignment,
bequest or otherwise; nor shall publication or republication
by t he Government in a public document of any work
in which copyright is subsisting be taken to cause any JiiiL. Bar Exam 1995:
abridgm ent or annulment of t he copyright or to authorize .c:::11 Solid ·Investment House (SOLID) commissi~ned Mon
a ny use or appropriation of such work without the consent Blanco and his son Steve, both noted artists, to paint
of the copyright owner. " a mwa.1for the Ma,in L9bby ofthe new ,building of SQL- •
'ID fcir a cont ract price of P2 Million .
. a) Who owns t he. rnural? Expli;!\n . ,.
b) Who owns t he copyright of t he mural? Explain.
38 COPYRIGHT OWNERSHIP

m
38.1 Rules on Copyright Owner ship

Copyright ownership shall be governed by the following ru~es :

1. In t he case of original literary and artistic works, copynght
38.4 Copyright Ownership of Audio visua l Work
In t he case of audiovisual work, the copyright shall belong to t he
producer, the author of the scenario, the composer of t he music, the
shall belong to the author of the work. (Sec. 178.1)
film director, and t he aut hor of the work so adapted.
 CHAPTER V 293
29 2 ESSENTI ALS OF [ NTELLECTUAL PROPERTY LAW
LAW ON COP iR!Glff

How ever, subject to contrary or other stipulations among the assignee is entitled to all rights and remedies which t he assigno r had
creators, t he producers shall exercise t he copyright to an extent with respect t o the copyright. ( Sec. 180)
required for t he exl1ibitlon of l he work in any manner, except for t he There is a particular provision concerning assignment of work
righl to collect performing license fees for t he performance of musical to newspapers or periodicals . lt is provided that t he subm ission of
compositions, with or without words, w hich are incorporat ed into the a literary, photographic or artistic work to a newspaper; magazine
work . (Sec. 1 78.5 ) or periodical for publication shall constitute only a license to m ake a
single publication unless a greater right is expressly grant ed. If two
38.5 Copyright Ownership of Le tters or more persons j ointly own a copyright or any part thereof, neither
of t he owners shall be entitled to grant licenses wit hout the prior
I n respect of letters, the copyright shall belong to t he writer subject written consent of t he other owner or owners. (Sec. 180 .3)
to the provisions of Article 723 of the Civil Code. (Sec. 178 .6)
Republic Act No. 10 372 added that any exclusivity in the
economic rights in a work may be exclusively licensed. Within the
ID! MCQ Alert: 20 11 Bar scope of the exclusive license, the licensee is entitled to all the rights
and remedies which t he licensor had with respect to t he copyright .
T, ., an associate attorney In XYZ Law Office, wrote a (Sec. 180.4)
newspaper publisher a letter disputing a columnist's
clai.m about an incident in the attoq,ey's family. T us~d The same law made it a statutory right for the copyright owner
the· law firm's letterhead ancl its computer In prepar; t o regular statem ents of accounts from the assignee or the licensee
ing t he letter. T also requested the firm's messenger with regard to assigned or licensed work. (Sec. 180.5 )
to .d eliver the letter to t he publisher. Who owns the
copyright to t he letter?
A. T, since he is t he original crec1tor qf the contents ,JI6L ' Bar Exam 20 08: · ·
of t he letter.
B. Bot Q T and t he publisher, .,one wrote the letter to
c::11 Eloise, an accomplished writer, was hired by Petong to
write a bimonthly newspaper column for Diario de Ma -
· ' t he bther who has possession of it. ·
nila, a newly-established newspaper of which Petong
C. The law office since T was an employee and he was t he editor-in-chief.· Eloise was to be paid Pl,000 , ,
:a wrote It 011 the firm's 1etterhead. · ·· . ·· for each column t hat was published. In the course of

-
D. · The publisher t o whom t he letter was sent.
.._.,,_.,...........,,..,.
two m ont hs, Eloise subm itted three columns which,
,· after some slight edit ing, were printed in t he news~
papec However, Diario de Manila proved unprofitable
38.6 Anonymous and Pseudonymous Works and closed only after two mont hs. Due to t he m ini- .
'mal amounts invo'lved, Eloise chose not to pursue any
The publishers shall be deemed to represent the aut hors of articles claim for payment f rom t he newspaper, which was
and other writings published without t he names of the aut hors or own~d by New Media Enterprise~. .
under pseu dony m s, unless the contrary appears, or the pseudonyms
or adopted name leaves no doubts as to t he aut hor's identity, or if _Three years later, Eloise was planning to publish an
t he author of the anonymous works discloses his identity. (Sec. 179) ~nthology of her works, and wanted to include. the
three columns that appeared in t he Diario de Manila In
her ant hology. Stie asks for your legal advice :
1. Does Eioise have to secure authorization from
39 TRANSFER OR A SSIGNMENT New Media Enterprises to be able to publish her
Dii;lrio de Manila colum ns in her own ant hology'?
3 9 .1 Transfer, Assignment a nd Licensing of Copyright Explain fully. (4% )

m Copyright , like an ordinary property may be assigned or licensed

in whole or in part. Wit hin t he scope of the assignment, t he
294 ESSENTlALS OF INTEI.L[CTUAL PROPERTY LAW CHAPl e ll V
LAW ON COPYRl(;IIT

their members, they shall first secure lhe necessary ace, editat1on
2. Assume that New Media Enterprises plans to pub- from the Intellectual Property Office. (Sec. 183)
lish Eloise's columns in its own anthology ent i-
tled, "The Best o.f Diario de Manila/! Eloise wants
to prevent the publication of her columns in that
anthology since she was never paid: by the news- · 40 LIMITATIONS ON COPYRIGHT
paper. Name one irrefutable legal arguments El-
oise could cite to enj oin New Media Enterprises 40. 1 Limitations on Copyright
from Including her columns in its anthology.
[t] The following acts shall not constitute infringement of
copyright:
1. The recitation or performance of a work, once 1t has been
39.2 Copyright is Distinct from Material Object lawfully made accessible to tl1e public, if do11e privately
and free of charge or if made st rictly for a charitable or
, . . The provisions on copyright made a clear distinction between religious institution or societ y. (Sec. 184 .1 [a))
illJ copyright and the covered mat erial obj ect It provides that the The work m ust therefore have been published and
copyright is distinct from the property in the material obj ect that publication must be lawfully made. Note also the
subject t o it. Consequently, the transfer, assignment or licensing requirement of the purpose of t he recit ation or performance
of the copyright shall not itself constit ute a transfer of t he material of the work.
object. Nor sha ll a transfer or assignment of the sole copy or of one
or several copies of the work imply transfer, assignment or licensing 2 . The making of quot ations from a published work if they are
of t he copyright. (Sec. 181) compatible with fair use and only to the exti:::nt j ustified for
the purpose,.-including quotations from newspaper articles
Thus, assigning copyright over a book does not imply assigning and periodicals In t he form of pr ess summ aries, provided
the inventory of printed books for that matter. Conversely, not that the source and the name of the author, if appearing on
because an author donated or assigned all printed books does not the work, are mentioned. (Sec. 184.l (b])
mean that he assigned the copyright over the book as well.
Published works are those works, which, with t he
consent of the authors, are made available to the public
39.3 Form and Recording of Assignment by wire or wireless means in such a way that member s of
t he public may access these works from a place and time
, . . The copyright is not deemed assigned or licensed inter vivos, individually chosen by them, provided that availability of
ril:J in whole or in part unless there is a written indication of such such copies has been such, as to satisfy the reasonable
intention. (Sec. 180.2) requirements of the public, having regard to the nature of
An assignment or exclusive license may be filed in duplicate with the work . (Sec. 171.7)
the National Library upon payment of the prescribed fee for registration 3. The reproduction or communication to the public by mass
in books and records kept for the purpose. Upon recording, a copy media of articles on current political, social, economic,
of the instrument shall be, returned to the sender with a notation of scientific or r eligious topic, lectures, addresses, and ot her
t he fact of record. Notice of the record shall be published in the IPO works of the same nature, wl1ich are delivered in public,
Gazette. (Sec. 182) if such use is for information purposes and has not been
expressly reserved, provided that the source is clearly
39.4 Designation of Society indicated. (Sec. 184.l[c])
Reproduction is the making of one or m ore copies,
191 The owners of copyright and rel ated rights or their heirs may temporary or permanent , in whole or in part, of a work or
5llJ designate a society of artists, writers, composers and other a sound recording in any manner or form without prejudice
right-holders to collectively manage their economic or moral to the provisions of Section 185 of Republic Act No. 8293.
rights on their behalf. For the said societies to enforce the ri ghts of (Sec. 171. 9 as amended by Rep. Act No. 10372)
296 ESSENTTALS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 297
LAW ON COPYRIGHT

4. The reproduction and communication to the public of retransmitting by cable, broa dcasting and retransmitting
literary, scientific or ar tistic works as part of reports of by satellite, and includes t he making of a work available
current events by means of photography, cinematography
to the public by wire or wireless means in such a way that
or broadcasting t o t he extent necessary for the purpose.
members of the public may access these works from a
(Sec. 184. l[d])
place and time individually chosen by them . (Sec. 171.3
S. The inclusion of a work in a publication, broadcast, or other as amended by Rep. Act No. 10372)
communication to the public, sound r ecor ding or film, if
such inclusion is made by way of illustration for teaching 10. Public display of the original or a copy of the work not made
purposes and is compatible with fair use, provided that the by means of a film, slide, television image or otherwise
source and of the name of the author, if appearing in the on screen or by means of any other device or process,
work, are mentioned. (Sec. 184.l[e)) pr ovided that either the work has been published, or, that
original or the copy displayed has been sold, given away or
6. The recording made in schools, universities, or educational otherwise transferred to another person by the aut hor or
institutions of a work included in a broadcast for the use his successor in title. (Sec. 184 .l[j])
of such schoo:s, universities or educational institutions,
provided that such recording must be deleted within 11. Any use made of a work for the purpose of any judicial
a reasonable period after they were first broadcast, proceedings or for the giving of professional advice by a
provided, further, that such recording may not be made legal practitioner. (Sec. 184. l [ k])
from audiovisual works which are part of the general 12. The reproduction or distribution of published articles or
cinema repertoire of feature films except for brief excerpts materials in a specialized format exclusively for t he use
of the work. (Sec. 184. l[f]) of the blind, visually- and reading-impaired persons :
7. The making of ephemeral recordings by a broadcasting Provided, That such copies and distribution shall be made
organization by means of its own facilities and for use in on a nonprofft basis and shall indicate the copyright owner
its own broadcast. (Sec. 184 .l(g]) and the date of t he original publication . (Sec. 184.l[IJ)
Thus, a short-lived sound clip from a song or a
movi e may be used in a radio br oadcast without infringing
copyright. Bar Exam 2006
8. The use made of a work by or under t he direction or 1n a written legal opinion for a client on the difference
control of t he government, by the National Library or by between appr~ntlceship and learnership, .LiZ?l quoted
educational, scientific or professional Institutions where without permission a labor law expert's comment ap-
such use is in the public interest and Is compatible with pearing in his book entitled ''Annotations on the Labor
fair use. (Sec. 184.l[h]) Code."
This presupposes government's use of a work for
public interest. Unlike in the exercise of power of eminent
domain, no payment of just compensation is necessary for
such use.
I LLUSTRATIVE C ASE 5-2
9. 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 communicat ion, by "Must Carry"
a club or institut ion for charitable or educational purpose
only, whose aim Is not profit making, subject to such other Title:
limitations as may be provided in the Regulations. (Sec.
184.l[i]) ABS-CBN Broadcasting Corp. v. Philippine Multi-Media
System, Inc., et al., G.R. Nos. 175769-70r January 19, 2009
Communication to the public means any communica-
tion to the public, including broadcasting, rebroadcasting,
 CHAPTER V 299
298 ESSENTIALS O F INTELLECTUAL PROPERTY LAW LAW ON COPYRIGHT

. On May 13, 2002, ABS-CBN filed with the IPO a complaint

Facts: ' 'for "Violation of Laws Involving Property Rights, with Prayer
for the Issuance of a Temporary Restraining Order and/or
ABS-CBN Broadcasting Corporation (ABS-CBN) is engaged
Writ of Preliminary Jnjun~on," which was docketed as .IPV .
in te!evision and radio broadcasting. It broadcasts television
. No, 10~2002.-00,04, It ·alleged · t hat . PMSI's unauthorized
programs by wireless means to Metro Manila and nearby ·,rebroadcasting ·of Channels 2 and 23 infringed on its
provinces, and by satel!1te to provincial stations through
bro"dcasting rights and copyright.
Channel 2 on Very High Frequency (VHF) and Channel 23
on l,.!J tr.a High Frequency (UHF). The programs air~d over On July '2, 2002, the Bureau of Legal Affairs ( BLA) of the IPO
Channels 2 · and 23 are either produced by ABS-CBN or granted ABS-CBN's application for a temporary restraining
purchased from or licensed by other producers. order. On July 12, 2002, PMSI suspended its retransmission
of Channels 2 and 23 and likewise filed a petition for certiorari
Ph ilippine Multi- Media System, Inc. (PMSI) is the oper·ator with the Court of Appeals, which was docketed as CA-G.R. SP
of Dream Broadcasting System. It delivers digital direct- No. 71597.
to-home (DTH) television via satellite to its subscribers all
over the Philippines, Herein individual respondents, Cesar<;;. S,ubsequently, PMSI filed with the BLA a Manifestation
Reyes, Francis Chua, Manuel F. Abellada, Raul B. De Mesa, reiterating that it is subject to the must-carry rule under
and Aloysius M. Colayco, are members of PMSI's Board of Memorandum Circular No. 04-08-88.
Directors. Meanwhile, on October i o, 2003., the NTCissued Memorandum
PMSI was granted a legislative franchise under Republic Circular No. 10-10-2003, entitled "Implementing Rules and
Act No. 8630 on May 7, 1998 and was given a Provisional Regulations Governing .Community Antenna/Cable Television ·
Authority by the Ni;!tional Telecommunications Commission (CATV) and Direct Broadcast Satelllte (DBS) Services to
(NTC) on February 1, 2000 to install, operate and maintain Promote Compet itio~ in t he Sector." Article 6, Section $
a nationwide DTH satellite service. When it commenced thereof states:
opera~ions, it offered as part of its program line-1,lp A~S-CBN As a general rule, the reception, distribution and/
Channels 2 and 23, NBN, Chahnel 4, ABC Channel !5, GMA or transmission by any CATV/DBS operator of any
Channel 7, RPN Channel 9, ·and !BC Channel 13, together television signals without any agreement with or
with other paid premium pro_gram channels. au~hori~ation from program/,aontent providers are .
pro~~~d. . . .
" However; on Aprti' 25,, 200.1, ABS-CBN demanded for PMS!
to cease and desist from rebroadcasting Channels 2 and 23. On whether Memorandum Circular Np. 10-10-2003 amended
On April 27, 2001, PMS! replied that the rebroadcasting was: .Memorandum Circular ·No. 04~08-88, the NTC explained to
in accordance with the auth8rlty grahted it,1,y NTC' and Its·' PMSI in a letter dated November 3, 2003 that:
obligation under NTC Memorandum Circular No. 4-08-88,
Section 6.2 of which requires all cable tele\(lslon :system . To ii!ddre~s you~ query on whether, or _not th~.
~ operators op'erating In a communitv: Within .Bracle "A" oi- 11B" · provisions of MC 10-10-2003 would -have the effect
· '" contours to carry tl'le television signals of the authorized of amending t he provisions of MC 4-08-88 on
television broadcast stations. mandatory carriage of television signals, the answer
is Iii. the hegative. · "' ·
Thereafter, . negotiatrons ensued between the parties in .
an effort to _reach a settlement; however, the negotiations XXX
were terminated on April 4, 2002 by ABS-CBN allegedly
The Commission maintains that, MC 4-08-88
due to PMSI'.s inabllity to ensure the prevention of illegal
remains valid, subsisting and enforceable.
retransmission and furth er rebroadcast of its signals, as well
as t he adverse effect of the rebroadcasts on the business Please be advised, therefore, that as duly
operations of its regional television stations. licensed direct- to-home satellite television
300 [',S EN I 11\L'S OF IN fELLFCTU AI I •ROPERTY LAW CHAPTER V 301
LAW ON COPYRIGHT

ser vice provider authorized by this Commission,

your company continues to be bound by the Ruling: NO
guidelines provided for under MC 04-08-88,
specifically your obligation under its mandatory 1. The rebroadcasting does not violate Section 211 of th~ JP
C?1rria9e provisions, in addition to your Code. There is 110 merit in ABS-CBN's contention that PMSI
obligations under MC 10- 10-2003. · (Emphasis violated its broadcaster's rights under Section 211 of the I P
added) Co(:le.
·· Please be guided accordingly. 2. PMSI is not engaged in rebroadcasting and thus amnot
be considered to ha\le infringed ABS-CBN's broadcasting
On December ·22, 2003, the. BLA rendered a decision finpirig rights and copyright. Neither is PMSI guilty of infringement
t hat PMST infringecl the b1'oadcasting rights and copyright of of ABS- CBN's copyright under Section 177 of th~ IP C,o de
ABS-CBN and ordering it to permanently cease and desist which states that copyright or: economic rights shall consist
from rebroadcas~ing Channels 2 and 23. of the exclusive right to carry out, authorize or prevent the
On February 6, 2004, PMSI filed an appeal with the Office public per formance of t he work (Section 177.6), ano other
of the Di1•ector:-General of the IPO which · was docketed as communication to the public of the work (Section 177. 7).
Appeal No. 10-2004-0002. On December 23, 2004, it also 3. "Must-Carry Rule" under NTC Circular No. 4-08-88 is a
filed with t he Court of Appeals a "Motion to Withdraw Pet ition;
limitation of copyright. It must be emphasized that t he law o n
AltenVJtively, Memorandum of the Petition for 'Certiorari"_ in copyright is not absolute. The lP Code provides that:
CA-G.R. SP No. 71597, which was granted in a resolution
dated February 17, 2005 . . Sec. 184. Limitations on Copyright. -
On December 20, 2004, the Director-General of t he !PO 184.1. Notwithstanding t he prov1sIons of
rendered a decision in favor of PMS!. Chapter V, the following acts shall not constitute
Thus, ABS-CBN fil~d a petition for review with pr~yer infringement of copyright:
for issuance of a temporary restraining order and wnt of XX X
preliminary injunctioh with the Court of Appeals, which was
docketed as CA-G.R. SP No. 88092. (h) The use made of a work by or under t he
direction or control of the Gove-rnment, by the National ·
On•July '·l8, 2005, the Court of Appea'l s issue1:J a temporary Library or by educational, scientific or professional
restraining order. Thereafter, ABS-CBN filed a petition for instituti ons where such use is \n , the public interest .
contempt aga!pst ·l?MSI fq( continuing to rebroadc~~t Chan- ~. an·d 1s compatible with fair use;
hels L ahd 2-3 despite thet restraining order. The case was
docketed as CA-G.R. SP No. 90762. The carriage of ABS-CBN's signals by virtue of the tnust-
or\N'o vember -14, twos, 'th'e c;Lrt of'App~als ortfered t he ~arry r ule In Memorcindum Clrcula'r No. 04-08-88 is under the
consolid~tion of CA-~.R. SP Nos. 88092 ~nd 90762. __ direction and cont rol of the government t hrough the NTC which
is vested v.iith exclusive jufisdidlon to 'supervise, regulate_and
Ifl tlie assailed Decision dated July 12, 2006, the Court' of control telecommunications and broadcast services/facilities
Appeals sustalned the findings of the Director-General of the in the Phinppines. The imposition of the rnust-carr:y rule is
IP_Q and d,isi:ni~~ed both Pr~~tion~.filed by ABS-C,BN. within the NTC's power to promulgate rules and regulations,
ABS-CBN's motion for reconsideration was denied, hence, as public safety and interest may require, to encourage a
this petit.l on., , larger and 1')1ore effective use of communlcaNons, radio and
television broadcasting facilities, and to maintain effective
Issue : competition among private entities in these activities when-
ever the Commission fin ds It reasonabiy feasible. As correctly
Whether ABS~CBN can prevent PMSl In rebroadcasting
observed by t he Director-General of the IPO:
Channels 2 and 23.
302 ESSENTIAi S OF JNTELLECTUfll. PROPERTY LAW CHAPTER V 303
LAW ON COPYRIGHT

Accordingly, the "Must-Carry Rule" under NTC It also explains why the author or the creator enjoys no more
Circular No. 4-08-88 falls unde·r the foregoing rights than are consistent with public welfare.
category of limitations on copyright. This Office
Further,. as correctly observed by the Court of Appeals, t he
agrees with the f.ppella.~t [tierein respondent PMSI]
must-carry rule as well as the legislative franchises granted
that the "Must-Carry Rule" is in consonance wit h_ the
to both ABS-CBN and PMSI are in consonance with state
princ~ples and objectives underlying Executive O~der
:. No. 436, to wit: :;. ·· · pelicies enshrined in t he Constitlltionf"s'peclfically Sectibns 9,
17, and 24 of Article II on the Declaration of Principles and
The Filipino pepple must be given wider State Policies.
access ' to more sources of news, informat ion,
education, sports event and entertainment
Rrograrns other t han t h.ose provided for 'by ,
40.2 Fa ir use
mass media and afforded television programs to
attain a well-informed, well-versed and culturally Fair use is using somebody else's work fairly, i.e., what is
refined citizenry and enhance th~ir socio-
economic growth:
[tJ reasonable under the circumsta~ces. It is a univ_e rsally ac~epted
limitation on copyright. But w hile the concept 1s rather simple,
WHEREAS; cable television (C:ArV) systems its application Is definitely not.
could support or supplement the services The difficulty lies in the subjectivity of what 1s fair under the
provided by ~elevision .. broadcast facilities, circum stances. It is even made more difficult since fair use is in no
local and overseas, as the national information way measured by arithn;ietic.
highway to the countryside.
The law provides in·· Section 185 that:
The Court of Appeals likewise correctly observed that:
"Sec. 185. Fair Use of a Copyrighted Work. - 185.1.
(T]he v,ery Intent and sp!rit·of theNTC Circular will The fair use of a copyrighted work for criticism, comment,
j:>revent a situation whereby station owners and a few news reporting, teaching including multiple copies for
networks would have unfettered power to make time classroom use, scholarship, research, and similar purposes
.available on·1y to t he highest bidders,"to communicate is not an infringement of copyright. Decompilation, which
only their own views on public issues, people, and to is understood here to be the reproduction of the code and
perm,lt on the air only t hose wfth whom they agreed translation of the forms of the computer program to achieve
· - contrary to the state policy that the (franchise) the inter-operability of an independently created computer
grantee like t he petitioner, private respondent and program with other programs may also constitute fair use.
. other: TV station owners, shall provide at all t imes In determining whether t he use made of a work in any
' sound and balanced programming and assist in the particular case is fair use, t he factors to be considered
-functions of,public information and educatiOf"\, shall include:
~..,. ' .:. .. .;.\ \ .:.:
This is for the first time t hat we have a structure "(a) The purpose and character of the use, including
that works to accomplish explicit state policy goals. whether such use is of a commercial nature or is for non-
profit educational purposes;
Indeed, intellectual property protection is merely a means
towards th e end of m.r king society benefit from the cr~ation "(b) The nature of the copyrighted work;
of its men and women of talent and genius. This is the
"(c) The amount and substantiality of the portion
essence of intellectual property laws, and it explains why
used in relat ion to the copyrighted work as a whole; and
certain products of in'genuity that are concealed from the
public are outside the pale of protection afforded by t he law. "(d) The effect of the use upon the potential market
for or value of the copyrighted work.
304 ESSENTIALS OF JNTELLECTUAL PROPERTY LAW C HAPTER V 305
LAW ON COPYRIGHT

"185.2. The fact that a work is unpublished shall not Thus, it was also stated in Habana that in determining
by itself bar a finding of fair use if such finding is made t he question of infringement, the amount of m atter copied
upon considera tion of all t he above factors." from t he copyrighted work is an important cons1cleration.
To constitute infri ngement, it is not necessary that the
The provision also incorpora tes the universally recognized whole or even a large portion of the work sha ll have been
factor s in determining fair use. T hese fa ctors are: copied. If so m uch is taken that the value of the ori ginal
1. T he purpose and character of the use. Thus, lifting of large is sensibly dim inished, or the labors of t he original aut hor
part of a work may be j ustifi ed for purposes of scholarly are substantially and to an injurious extent appropriated
criticism but not when it will be used to explain a similar by another, t hat is sufficient in point of law to const it ute
point. piracy.

2. The nature of the copyrighted work. For instance, rules

as to quotat ions from true- to- life story about a historical
figure may be relaxed as compared to quot ations from a lert:. 2012
, -),
Bar
'

non-fiction storybook. fr Use Doctr:ln . _ . , • . . 11ize cppy- , .

3. The amount and substantiality of the work used. Based works under ce,taln cbtl'ditions. The factors •
on the law, practice and j urisprudence, it is evident that ider whether us~ is fair or not. would be ·
substantiality weighs more than the amount. hgiract.er .of the use, nature of th.,e c9
amount and substantiality of ~he p
I n one case, 10 this was discussed in this manner: a what else?.
" When is there a substantial reproduction of a book? ., . . reator of t h.e work.
It does not necessarily require that the entire copyrighted
w ork, or even a large portion of it, be copied. I f so much ten t ial inark~t of
is taken that the value of the original work is substantially . ·• . ' 1.

diminished, there is an infringement of copyright and to an

injurious extent, the work is appropriated.
"In determining the question of infringement, the
amount of matter copied from t he copyrighted work is an
important consideration. To constitute infringement, it is
not necessary that the whole or even a large portion of the
work shall have been copied. If so much is taken that the
value of the original is sensibly diminished, or t he labors
of the original aut hor are substantially and to an injurious
extent appropriated by another, that is sufficient in point of
law to constitute piracy."
But of course, generally speaking, the lifting of 10
pages of a book consisting of 500 pages is acceptable than
if the book from which it was lifted has only 50 pages.
4. The effect on the market value of the original work. In
relation to the preceding factor, even if what was copied
is 10 out of 500 pages, if those pages proved to be the
reason why t he book is being patronized, then it may be rat'ion .
unfair use. · theJr . co
. . E E:Nc.:;LISH
10
Habana v. Robles, G.R. No. 131522, July 19, 1999.
 r
306 E:SSCN rJ A.LS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 307
LAW ON COPYRIGI 17

brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE

FRESHMAN ENGLISH, Series 1. Despite the demands of the petitioners for respondents to
desist from committing furth er acts of infringement and
Respondent r-elicidad Robles and Goodwill Trading, Co., for respondent to recall DEP from t he market, respondents
Inc. are the author/publisher and, distributor/seller of refused. Petitioners asked the court to order the submission
1
another published Work•:·entitled "DEVELOPING · ENGLISH eif all copies of the book DEP, together with t he molds, plates
PROFICIENCY" ( DEP for brevity), Books· 1 and 2 ( 1985 edition) and filrJ1S an.d other materials used in its print]ng destroyed,
• which book ~as covered by copyrights issued to the.m. and f6'r' respondents to· render an accounting of the proceeds
of all sales and profits since the t ime of its publication and
ln the course of revising their published works, petitioners
sale ..
..scouted and looked around various bookstores to check on
other textbooks dealing wit h the same subject · m atter. By · Respondent Robles was impleaded in t he suit because she
.chance they came upon the book of respondent Robl~s and authored and directly committed the acts of infringement
upori perusal of said book t hey were surprised to see that complained of, while respondent Goodwill Trading Co., Jnc.
t he book was st rikingly similar to the contents, scheme of was imp\eaded as the pul:;>li_sher and jQint ,co-owner of the
· . presentation, illustrations and illustrative examples in t heir copyright certificates of registration covering t he two books
own book, CET. authored and caused to be published by respondent Robles
with ol:>Vious connivc1nce wi'th one another.
After an itemized examination and comparison '~f t h~ two .
books (CET and DEP), petitioners found t hat several pages of On July 27, 1988, respondent Robles filed a m otion for a bill
t he respondent's book are sirriilar, if not all together a copy of of particulars which th·e trial court c1pproved on August 17,
petitioners' book, which is a case of plagiarism and copyright 1988. Petitioners complied with t he desired particularization,
infringement. and fu rnished re·~pondent Robles the •specl'flc , portibns,
inclusive of pages and lines, of the published and copyrighted
Petit ioners then made demands for damages against
, booki,1of the P,_~titioper:s vyhi~I}.: w~re, tran~pos~<;l,, ')if~ed,
, respondents and also demanded that they cease and desist " copfed ,and plagiarized and/or ot herwise found their way rnto
from further selling and distributing to the general public the
infringed copies of respondent Robles' works. ·'. re,spo~~;P.'ii:~ boo~'. '"
'On August' l, ;1.988, respondent Goodwill Trading Co., Inc.
Ho~ever, respondents ignored the demands, hence, on July
Ued ,itl an,swer tp: ~h~ complaint ,and alleged that petitJor;iers "'',
• 7, 1988, petition_ers filed with the Rei;Jior al Trial Court, Makati, · had 'no cause of action against Goodwill Trading Co., I nc.
, cl ce>mplait'\t for "Infringement and/or unfair competition wit h
since it was not privy to t he rnisrepresentati.on, plagiarism1
_damages" against private respondents.
ncor~O'rati'on an~ reprqdGctron of thl portion's of t he book of- '_,
~'In tlie complaint, petitioners alleged that in 1985, respondent- ·, petitioners; that ther1: was an agreement b~tweeri Goodw;ill ,,
Felicidad C. Ro,b les being substantfally familiar with t he ~•an,d the re~ ondeht Robles, t hat B.o.bles ,gua,ranteedi Goo_dWIII ·""'
cor\t~nts of petitionets' works, ahd 'without securing t heir ,tliat the materials utlliz.ed In t he manuscript were her own
permissio_ n , lifted, copieci, pl_agiarized and/or transposed i\Or t~~t ilJ.e , ,had ,. secQ(~c;I mShe .p~c~s~a~y , g~rmjss·on J r,or;n
_,..~ ertain portions of t heir book G6T. The textual contents and con.tributors and ,. sources; ,that t he aut hor assumed sole
·illustrations of CET were literally reproquced in the book DEP. respon~l,J;>Uirt and help t he publisher wi~~ot.tt any li~bility.
"~ .;;'t<:. ·~ ~ rs- _ lf ,. :. ,....
The -plagiarism, incorgoratiQn and reproduction of .partlcular · 1 .; ,.~

On November 28, 1988, respondent Robles filed het answer,

pbrtfons of t he book tET In t he book DEP, without the author-
ity or consent of petitioners, and t he misrepresentc;1tions of an~ 9enie.d. the ~alleg~tions of pla~iar\5m ai d c,opying th~t , t,
1
,petlf fo'hers··c1airrled. R~spondent st ressed that (1) tlie bo'ok
respondent Robles t hat the same Was her original work' anc!
DEP Is the product of her ll)dependent researches; stut;lies
concept adversely affected and substantially diminished the
and experiences; ana>'- was n,ot a copy of any existing v~lld
sat~ 9f the petiti.oners' book and caused them actual damages
copyrighted book; (2) DEP followed t he scope and sequence
by way of unrealized income.
or syllab1.1s which are <;ommoq to_all Englf~h grammar writer:?
as recommended by the Associatibn of Philippine Colleges of
308 ESSENTI ALS OF I NTELLECTUAL PROPERTY LAW CHAPT ER V 309
LAW ON COPYRIG HT

d~ however, :that similarity of the

Arts and Scie~¢ · ·· ' ·so apy similarity between Ork to t he .a_utho&'s·,o / proprietQr;
t it ioners was due to
rk's.· sind st ·
310 ESSENTIALS OF l NTELLECTUAL PRO PERTY LAW
CHAPTER V 311
LAW ON COPYRI GHT
312 ESSENT IALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 313
LAW ON COPYRIGHT

whether or not he was infringing any copyright; he at !ea.st is prohibited. The copying must produce ari "injurious effect.''
kne~ that what he was copyi'ng was not his, and he copied Here, the injury consists in that respondent Robl~ lifted from
at his peril. .,· ; pet itioners' book inaterials that were the rE:sult oMhe latter's
research work a·nd compilation and misrepresented them as
3. Respondent's copying is ' injurious. The next qu~stion
her•o~n. Slie circulated t he boo!<? DENor commerclaluse and ,. .
to re~ol~~ i~ to w~t exte'1.t !;;i;ln c;;opying be lnju[.i ous to t h'e
aut hor of the book"being copied. i s ft_enough that there are did not acknowle.dge petit ioners as her source.
simi_larltie in som~ s~~tions of t h~ bo9ks or large segments Henc~, t here is a clear case of approprlat\on of copyrighted
7
of the books are t he same? · · work for her benefit that res·pondent Robles committed.
Petit ione·rs'"work as aut hors is trie· product of tlieir long and
·~~ In the i ase at b·ar, there is no ·questi on that petitioners
assiduous research and for another to represent it as her
presented several pages of the books CET and DEP that more
. own 1s inj1} ry erio1.1gh: I n copyrighting books the purpose is
or _Jess bad the same contents. It m a.y be correct that the
to give protection to the intellectual product of an author.
books being grammar books may contain materials similar as
t his is preci:,el{'what t"'e law o:n copyright protected, under
to some t ect11:il1::~l contents with otber gram.mar books, such as
Section 184.i(b). Quotations from a published work if t hey
the segment about t he "Author card." H'owever, the numerous
are compatible with fair use and only to the e~tent justified
pi;!ges t hat t lje petit ioners -presented st,owing similarity in
by the purpose, including quotations from newspaper articles
the style and t he manner t he books were presented and t he
and periodicals in the form of press summaries are allowed
ide!1t ic<!_I_ examples:cannot pass as slmi.larities merely be.cause
provided that the source and the name of the author, if
of.technical consideration. ..
appearing
.
on the work,
r
are ment ioned.
The respondents dalm that t heir sim ilarity in style can be In the ,case at bat, .the least that respondent Robles could
attributed to the fact that bot h of them were exposed to the
have done was to acknowledge petitioners Habana, et at. as ·
APC::AS ~y,labus ar:id t heir respec~iv,e a¢ade.mic experience,
the source of the portions of DEP. The final product of an
t eaching approach and methodology are almost identical
autho r's toil Is her book. To allow another: to copy Hie book
b~use t hey;: were•of the same background .. ,•
. - without appropriate acknowledgment is injury enough.
However, we t,elieve t hj:lt even if f"etrt ioners and reseondent
... •Rol§les, .were---0f t he same. 1Jackgr6i1nd 0 in tefm·s of teS'ching·
experience and orientation,,it Is r:,ot an excuse for tliem to
.}:1e t dentical even in examples t ont alned 1n'\heir:lboc1_~;·_ The
40.3 Plagiarism and Copyri ght Infringement Distinguished
similarities_ln_examples and '!laterial cor;itents ar~ so pbv,iousl¥
,pr~e:5ent_lJ.1 this Gase. Ho~ tar, simllar/i~entlcaJ example not' · At this point, it would help if we distinguish plagiarism from copyright
be considered as a mark of copying?
infringem ent.
'·: ..4 .) ,ullif!'g ;ut'ot /J~ks from th~ sto~s are.indicia of guilt. Plagiarism ls the practice of claiming or implying original
We_.corys1de r as an _in~ici.a_o[ gyilt* or .wron;9doin_g,tb.e,,,a ct of authorship of (or incorporating material from) someone else's writt en
resptlndeht Robles· of pulling out from Goodwill bookstores or creative work, in whole or in part, into one's own without adequate
.. the _book DEP upop learning· of pet itio_n ers' complaint: whil1: acknowledgement. 11
.' pharlsa1cally deny,ng pet itioners· demand. It was further
, noted t hat when the book DEP was qHssued as a revised Plagiarism Is different from copyright iofcioaement. While both
.version; all the pagE!s cited oy pet itioners to cont ain pnrticin terms may apply to a particular act , they emphasize different aspects
of their book College English ·tor Today were eliminated.
5. .Pa/lure to acknowledge original author produce~ "injurious
effect. ,. ln cases of infringement , cop:r:ing alone rs not what
holdec's consent. On the othec han4, r·,,;•
of the transgression. Copyright infringement is a violation of t he rights
of t he copyright holder, when material is used wit hout the copyright
IS concerned w;th

11 Hup://cn.wik ipediu.org/wiki/Plagiorisrn (i;f J :I., 11. .. "" -11 jll\ _it T

 314 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 315
LAW ON COPYRIGHT

the unearned increment to the plagiarizing author's reputatjon that is

achieved through false claims of authorship.'2_

4 0.4 Copyrigh t in Work of Architecture

Copyright in a work of architecture shall include the right to control the

erection of any building which reproduces the whole or a substantial
pa~ of the work either in it s original form or in any form recognizably
derived from the original, provided t hat the copyright in any such
work shall not include t he right to control the reconstruction or
rehabilitation in the same style as the original of a building to which 40.6 Reprogra phic Reproduction by Libraries
the copyright relates. (Sec. 186)
Any library or archive whose activities are not for profit may,
without t he authorization of the author or copyright owner, make a
40.5 Reproduction of Published W ork
lim ited number of copies of the work, as may be necessary for such
The private reproduction of a published work in a single copy where institutions to fulfill their mandate, by reprographic reproduction:
the reproduction is made by a natural person exclusively for r~search 1. Where the work by reason of its fragile character or rarity
and private study, shall be permitted, without the authorization of t he cannot be lent to user in its original form;
own.er of copyright in the work. (Sec. 187.1)
2. Where the works are isolated articles contained in
. This g_overns the practice usually resorted to by students composite works or brief portions of other published works
in r eproducing a copyrighted book for t heir study. It is important
and the reproduction Is necessary to supply them; when
ther efore to be particular in the elements in order for t he practice to t his is consi,dered expedient , to person requesting their
be permissible.
loan for purposes of research or study instead of lending
First , only a natural person may avail of this right. A corporation the volumes or booklets which contain t hem ; and
may therefore not avail of t his right.
3. Where the m aking of such limlted copies is In order to
Second, the purpose Is exclusively for research and private preserve and, If necessary in the event that It Is lost ,
st ud y. Thus, reading for pleasure Is not allowed. dest royed or rendered unusable, replace a copy, or to
replace, in the permanent collection of anot her similar
Third, by express provision of Section 187.2, the permission
shall not extend to the reproduction of: library or archive, a copy which has been lost, destroyed
or rendered u nusable and copies are not available with the
1. A work of architecture in t he form of bu.f lding or other publisher. (Sec. 188.1)
construction;
It shall not be permissible to produce a volume of a work
2. An ent ire b~ok, or a s ubstant ial part thereof, or of a musical published In several volu mes or to produce missing tomes or pages of
work In which form by reprographlc means; magazines or similar works, unless t he volume, t ome or part is out of
3. A compilation of data and other materials; stock, provided that every library which, by law, is entitled to receive
copies of a printed work , shall be entitled, when special reasons so
4. A computer program except as provided in Section 189; require, to ·reproduce a copy of a published work which Is considered
and necessary for t he collection of the library but which is out of stock.
(Sec. 188.2)
5. Any ~ork In cases where reproduction would unreasonably
conflict with a normal exploitation of the work or would
otherwise unreasonably prej udice t he legitimate Interests 40.7 Reproduction of Computer Program
of the author.
The reproduction In one back-up copy or adapt ation of a computer
·.i: . ~
program shall be permitted, without the authorization of the author
12
Htt:p://en.wik.ipedia,org/wiki/Plagiwi~m of, or other ow~er of copyright In, a computer program, by the lawful
 316 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 31 7
LAW ON COPYRIGHT

owner of that computer program, provided that the copy or adaptation

is necessary for:

1. 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
2. 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. (Sec. 189.1)
As used in this section, a computer is an electronic or similar
device having information processing capabilities. (Sec. 171.4) This
broad definition therefore embraces any other electronic device aside
from the piece of equipment we normally known as "computer" or
the hardware.

A computer program, or the software, on the other hand is a

set of instructions expressed in words, codes, schemes or in any
other form which is capable when incorporated in a medium that the
computer; can read, or causing the computer to perform or achieve
a particular task or result. The computer program therefore is what
makes the computer usable and not just an oversize paper weight on
our tables. A computer program is usually purchased separately from
the computer itself.

This importance of t he computer program is recognized in this

particular limitation on copyright. A purchaser of a computer program
thus have a right to reproduce a back-up copy without violating
the copyright of the software maker provided all t he requisites are
complied with. Section 189.2 thus provides: ·

"Sec. 189.2. No copy or adaptation mentioned in

this Section shall be used for any purpose other t han 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."
318 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW
CHAPTER V
3 19
LAW ON COPYRTGHT

. '

, · ,er .. · , ,, ·ng unit ("CPU") ',

, r~n~ · · · resp'9nd~nt~ are rmt .t he "sour~ir1 of the Microsoft Windows
3:1 · · re•inst c;1lled in the CPIJ bought by Sacriz anti
· ·· n ly. of the MS-DOS software; (4) Microspft's '
' 'urchase (rece·iRt) for the 12,. CD- ROMs,. is '
se the receipt a"oes Ho · indic:at . its'sour · ; · .
nt;;-J,enito Keh, .;ion:atl
a, Judy K Chua Hwa
· t'ockholde
t be)et
nts.d id .n
26 Octob
State Pr,osecu
icrosoft's
'f e\/idenc
ismissal 6
. ~o. pros . '
hief State . os~cu or ua a ·1 • uenafe
te P(osecut0r Bµena fe"1 ·· d. State
ommendations. ·
ti::> t h,e Offf . ary, In '
·:~ust 200 . Regis
320 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 321
LAW ON COPYRI GHT

owner's prior consent renders himself civilly and criminally

liable f9r copyright infringement . We held in Columbia Beltron t o pay its overdue royalties to Microsoft. Significantly,
Pictures, Inc. v. Court of Appeals : in its Decision in CA-G.R. CV No. 54600 dated 29 November
2001, t he Court of Appeals set aside the RTC Order of 19
"lnfringemen~ pf a copyright is a trespass on a July 1996. Respondents'.n o longer contested that ruling which
private domain owned and .occupied by the owner became final on 27 December 2001.
of the copyright, and, therefore, protected by .law,
Second. There is no basis for the DOJ to rule that Microsoft
and· :Ir:-ifringement of copyright, or · piracy, whieh is
must await a prior "resolution from t he proper court of (sic)
a synonymous term in this connection, consists in
whether or not the (Agreement] is 'stlll binding between the
the doing by any person/without the consent of the
owner of the copyright, of anything the sole right to parties." Beltron has not filed any suit to question Microsoft's
do Y!hich is conferred by statute on the owner of the termination , of the Agreement . Microsoft can neither be
copyright." expect ed nor compelled to wait until Beltron decides t o
sue before Microsoft can seek remedies for violation of its
Sig nificantly, under Section S(A), a cbpyright owner is vested intellectual property rights.
with the exclusive right to "copy, distribute, multiply, [and] l Articles seized are counter(eit per se, Furtl1ermore, some
sell" his intellectual w9rks,
of the counterfeit CD-ROMs bought from respondents were
2. Evidence sufficient to support finding ofprobable cause. In "installer" CD-ROMS containing Microsoft software only or
its p lea9i11gs filed with the DOJ, Microsoft invoked three clusters both Microsoft and non-Microsoft · software. These articles
of- evidence to support its complaint against respondents, are counterfeit per se because Microsoft does not (and could
namely: (1) the 12 CD-ROMs containing Microsoft .,softwa~e not have aot horized anybne to) produce such CD- FlOMs.
Sacri:z and Samiano bought from respondents; (2) the CPU The copying of t he genuine Microsoft software to produce
with pre-installed Microsoft software Sacriz and Samiano also these fake CD-ROMs and their distribution are Illegal even
pt;1rchased From respondents; and (3) the 2,831 co-Rot-is if the cbpier or distributor is a Microsoft licensee. As far as
containing Microsoft software seized from respondents. The these installer CD-ROMs are concerned, t he Agreement (and
DOJ, o n the one hand, refused to pass upon t h e relevanc.e the alleged question cin the validity of Its termination) is
of t hese pieces of evidence because: ( 1) the "obligations immaterial to the determination of respondents' liability for
between the parties is civjl and not crimina.I" c~msideriog that copyright infringement and uofalr competition. ·
Micr osoft merely sought the Issuance of Searcfi Warrant Nos.
XXX )9(X XXX
95-684 and 95-685 to pressure Beltron to pay its obligation
under the. Agreement; and (2.) the· valitlify bf Microsoft's The Court finds that th~ 12 CD-ROMs ("installer" and ''non-
termination of the Agreement must first be resolved by the installer'') and tbe CPU.w ith pre-install~d Micrqsoft s.o ftware
"J?roper,Fourt" On t he otber hand, the DOJ .rule,;Lthat Micros@ft ·Sacriz and Samlano bought from respondents and the 2,831
failed t o present evidence prbving t hat what were obtained Micros.oft CD-ROMs seized from respondents suffice t{) support
from respondents were counterfeit Micros.oft prpducts. , ,.'
\~ ·~ . ., l• . I . ' ,~, a finding of probable cause to indict respondents for copyright
This Is grave 'abuse of discretion. · · Infringement under Section 5(A) in relation to Section 29
.Qf PD A9 for unauthorized copying and selling of protected
First. B.erng tbe copyrigMt and trademark,,owtier of Microsoft fntellect ual works. The Installer CD-ROMs with Microsoft
·software, Microsoft acted well within Its rights in filing the software, to repeat, are couriterfeit per se. On the other
complaint under r.s. No. 96-t93 ba.sed on t he. incrimir;iating ffand, the Illegality of tlie ''non-installer" CD-ROMs purchased
evidence obtained from respondents. Hence, it was highly from respondents and of the Microsoft software pre-insta.lled
irregular for t he DOJ to hold, based on the RTC Order. of ln the ·cpu is shown by the absence of the standard features
19 July: 1996, that Microsoft sought t he issuahce of Search accompanying aut hentic Microsoft products, namely, the
Warrant Nos. 95-684 and 95-685, and by inference, the filing Microsoft end-user lic;ense agreements, user's manuals,
of the complaint under I.S. No. 96-193, merely to pressure registration cards or certificates of authenticity.
 CHAPTER V 323
322 ESSENTIALS OF INTELLECTUAL PRO PERTY LAW LAW ON COPYRIG HT

------------------------
On the 2,831 Microsoft CD- ROMS seized from re~pondents,
Respondents' contention that the 12 CD- ROMS Saenz and
Sarniano purchased cannot be traced to them because the
respondent Beltron, the only respondent who was party to receipt for these articles does not indicate its source is
the Agreement, coµld not have reprOd\JCed trem,,under the un"vailfng. The rec.eipt , in qJestion should be taken together
· Agreement as-the Solicitor General c1nd fespondehts co!)tend. with Microsoft's claim that Sacriz and S.;1miano bought t~e
Beltron's rights under t he Agreement were limited to: C:D-R0Ms from re'spondents: · Together, t hese considerat ions
· (1) ;t he -;;~produc[tion] ~nd ~nst~ll[atio~ of] no more polnt to respondents as the vendor of the counterfeit CD-
than one copy; of [ r"1icrosoftJ software on each ROMs. Respondents do not give any reason why t he. Court
'Customer $ystem hard disk or Read Only Memory st,ould not give credence to Microsoft's claim. For the same
J"RO~")"; a~d . _ ., . reason,,the fact t hat t he receipt for the CPU does not indicate
"[s)oftware hard disk" does not mean that the CPU had no
(2) the "distrlbut[ ion] x x x and licens[ing of] copies of pre-installed Microsoft .software. ~espondents Keh and Chua
t he [Microsoft] Product [as reproduced atlove] and/ admit 1n their counter-affidavit t hat respondents are t he
or acquired from Authorized Replicator or Aut horized '"source" of the pre- installeq MS-DOS !:ioftware.
Distributor) In ©bject code form to end users."
The Agreement defines an authorized replicat or as "a third
. _party approved by (Microsoft] which may reproduce · and 40.8 Importation a nd Ex p o rtat io n o f Infri n ging Materials
· manufacture [Microsoft] Product[s] for [Beltron] x x x." An
authorized distributor, on tMe other hand, is a " thlr<il party l9II Subject to t he approval of the Secretary of Finance, t he
· approved by [Microsoft ] from which [ Beltron] may purchase UJ Commissioner of Customs i~ hereby_ empow~red to make r u_les
. MED , Product." Being a mere •reproducet/installer of one and regulations for preventing the 1mportat1on or exportation
Microsoft software copy 6n each customer's hard disk or ROM, of infringing articles prohibited under the Law on Copyright and under
. 13eltfon c9uld oryly ~ave•.acquired th~ hundreds 9f Mi¢rosoft relevant treaties and conventions to which the Philippines may be a
•~cD-ROMs found In respondents' possession f rom Microsoft party and for seizing and condemning and disposing of the same in
distrrb to 9r repli<Uitor case t hey are discovered after they have been imported or before
·- • ' j,
t hey are exported. (Sec. 191)
spondents ma es no such ~I
nt'er,d is •t -ROMS W Note that the provision allowing importation of a copy of work by
In is claim an individual for his personal purposes subject to certain conditions
ai , tler,tiYiKeh was deleted by Republic Act No. 10372. Hence, one may now bring
• ' er-affidavl into t he country more t han three copies of work on condition t hat
rnstlal)ae~. they were legally purchased abroad and subj ect further to the rules
m and regulations to be imposed by t he Commissioner of Customs.

to s KK Is from Bangkok, Thailand. She studies ,medicine

in the•Pontifical University of Sant<> Tomas (UST). She
. ( nts for, 1,.1ntca1f a~mp~I
learned that the same foreign books prescribed In UST
. ls~d Penal Code for passi
1cro - · he '}CD~,8.. 0 at e 40~50% cheaper .In Bangkok. So she ordered 50
· g'ini;i, one ca 1s nguls em rom the packagl copies of each book for herself and her classmates
and sold the books at 20% less than the price In the
CD-f\_0Ms cont ~inin~ gen,ui~e ,Mic;r9soft pl]~~re, 1su
plication', coupleo wit h ·t he s1mitarfty of content of t he Philippines. XX, the exclusive licensed publisher of
ake CD~ROMs anq the CD-~OMs with . genuin Ml.cros t he books in the Philippines, sued KK for copyright
'SbftV>,'.are, lmpJ[es inteht t o deceive. >Ii ~. II
infringement. Decide.
324 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER V 325
LAW O N COPYRIGHT

4 1.3 Waive r

41 MORAL RIGI-ITS An author m ay waive some but not all his moral rights by a w ritten
instrument. (Sec. 195) Thus, no such waiver shall be valid where its
41.1 Nature effects is to perrnil another:

The recognition of the moral rights by the law on copyright is a 1. To use the name of t he aut hor, or the tit le of his work,
recognition t hat t here are exists a greater dimension in copyright aside or otherwise to make use of his reputation with respect
from pecuniary interest. Since stakeholders nonnally in copyright to any version or adapt ation of his work which, because
of alterat ions therein, would substantially tend to injure
are scholars, educators and artists, the right to be given the proper
the literary or artistic reputation of another author. (Sec.
attribu t ion at times outweighs the profit that may be derived from a
particular work . 195.1)
2. To use the name of t he author with respect to a work he
These moral rights are personal rights independent from the
did not create. (Sec. 195.2)
econom ic rights mentioned in Section 177. Being a personal right, it
can only be given to a natural person. Because certain moral rights
cannot be assigned, it may happen that the owner of the copyright 41 .4 Right of Attribution in a Collective Work
is a different person from t he owner of t he moral rights. Thus, t here A collective work is a work which has been created by two or more
may also exist a situation where there are two permissions necessary natural persons at t he initiative and under the direction of another
in order to properly use another person's work. with the understanding that it w il l be disclosed by the latter under his
own name and that contributing natural persons will not be identified.
41.2 Scope (Sec. 171.2)

The aut hor of a work shall, independently of the econom ic rights in When an author contributes to a collect ive work, his right to
Section 177 or the grant of an assignment or license with respect to have his contribution attributed to him is deemed waived unless he
such right, have the right: expressly reserves it . (Sec. 196)

1. To require that the authorship of the works be attribut ed ~ 5 Editing, Arranging, a nd Adaptation of Work
t o him, in particular, the right that his name, as far as
pract ica ble, be indicated in a prominent way on the copies, In t he absence of a contrary stipulation at the same time an author
and in connection with t he public use of his work. (Sec. licenses or permi ts another to use his work, the necessary ed iting,
193.1) This is referred to as the creator's right to be arr anging or adaptation of such work, for publication, broad cast,
attribut ed or credited whenever his work will be used by use in a motion picture, dramatization, or mechanical or electrical
another. reproduction in accordance with the reasonable and customary
standards or requirem ents of the medium in which the work is to
2. To make any alterations of his work prior to, or to withhold be used, shall not be deemed t o contravene the author's r ights
it fro m publication. (Sec. 193.2) secur ed by this chapter. Nor sha ll complete destruction of a work
3. To object to any distortion, mutilation or other modification unconditionally transferred by t he author be deemed to violate such
o f, or ot her derogatory action in relat ion to, his work which right s. (Sec. 197)
would be prej udicial to his honor or reputat ion. (Sec.
193.3) This is also known as the creator's right of integrity ~ -6 T erm of Moral Rights
against "derogatory treatment."
, . . The right of an author under Section 193.1 (right to be
4. To restrain the use of his name with r espect to any work allJ attributed} shall last during t he lifetime of the author and in
not of his own creation or in a distorted version of his perpetuity after his death while the rights under Sections 1 93.2
work. (Sec. 193.4) This is the author's right against false (right to make alteration), Section 193 .3 (right against derogatory
at tribution. t reatment), and Section 193.4 (right against false attribution) shall
be coterminous with the economic r ight s, the moral rights shall not be
326 ESSENTIALS OF INTELLCCTUAL PROPERTY LAW CHAPTER V 327
LAW ON COPYRIGHT

assignable or subject to license. The person or persons to be charged the author primarily derives gain from the proceeds of reproductions.
wit h the posthu mous en forcement of these rights shall be named in (Sec. 201)
a written instrument which shall be Filed with the National Library. In
default of such person or persons, such en forcement shall devolve
upon either the autl1or's heirs, and in default of t he heirs, the Director
of the National Library. (Sec. l 98) 43 P ERFORMERS, PRODUCERS, AND BROADCASTING ORGANI-
ZATION

43.1 Defi n itions

MCQ Alert: 2011 Bar
1. "Performers" are actors, singers, musicians, dancers, and
Apart.from economic rights, t he author of a copy right other persons who act, sing, declaim, play in, interpret, or
also has moral rights which he may t ransfer by way of otherwise perform literary and artistic work. (Sec. 202.1)
assignment. The term of t hese moral rights shall last:
2. "Sound recordingn means the fixation of the sounds of
A. during the author's lifetime and for SO years after a performance or of other sounds, or representation of
his death, · sound, ot her t han in the form of a fixation incorporated in
a cinemat ographic or other audiovisual work. (Sec. 202.2)
B. forever.
3. An "audiovisual work or fixation " is a work that consists of
C. SO years from the t ime the author created his a series of related Images which impart the impression of
wor k. mot ion, with or without accompanying sounds, susceptible
D. during the author's lifetime. of being made visible and, where accompanied by sounds,
susceptible of being made audible. (Sec. 202 .3)
,
4. "Fixation" means the embodiment of sounds, or of the
41.7 Breach o f Cont ract representations ther eof, from which they can be perceived,
reproduced or communicated through a device. (Sec.
An aut hor cannot be compelled to perform his contract to create a 202.4)
work or for the publication of his work already in existence. However, S. "Producer of a sound recor ding" means the person, or
he may be held liable for damages for breach of such contract. (Sec. t he legal entity, who or which takes the initiative and has
194 ) the responsibility for the first fixa tion of the sound s of a
performance or other sounds, or the representation of
sounds. (Sec. 202.5 )

42 RIGHT TO PROCEEDS IN SUBSEQUENT TRANSFERS OF COPY-

6. " Publication of a fixed performance or a sound recording"
m eans t he offering of copies of t he fixed performance or
RIGHT
t he sound recording to t he public, with t he consent of the
right holder, provided that copies are offered to the publi c
42.1 Sale or Lease of Work
in reasonable quality. (Sec. 202.6)
I n every sale or lease of an original work of painting or sculptur e or 7. "Broadcasting" means the transmission by wireless means
of the original m anuscript of a writer or composer, subsequent to the for the public reception of sounds or of images or of
first disposition thereof by t he author, the author or his heirs shall representations ther eof; such transmission by satellite is
have an inalienable r ight to participate in t he gross proceeds of the also " broadcasting" where the means for decrypting are
sale or lease to the extent of five percent (S%). This right shall exist provided to the public by the broadcasting organization or
during the lifetime of the author and for 50 years after his deatl1. wit h its consent. (Sec. 202. 7)
(Sec. 200)
8. "Broadcasting organization" shall include a natural
This provision o f the law shall not apply to prints, etchings, person or a j uridical entity duly authorized to engage in
engravings, works of applied art, or works of similar kind wherein br oadcasting, (Sec. 202.8)
 328 CHAPTER V 329
ESSENTIALS OF !NTELLECTUAL PROPERTY LAW
LAW ON COPYRIGHT

9. " Communication Lo the public of a performance or a mutilation or other modification of his performances that would be
sound recording" means the transmission to the public prejudicial to his reputation. (Sec. 204. l)
by any medium, otherwise than by broadcasting, of
sounds or a per formance or the representations of sounds 43.4 Term of Rights Gr anted to Performer
fixed in a sound recording. For purposes of Section 209
" communication to the public" includes making the sound~ The rights granted to a performer in accordance with Subsection
or representations of sounds fixed in a sound recording 203.1 shall be maintained and exercised 50 years after his death, by
audible to the public. (Sec. 202. 9) his heirs, and in default of heirs, the government , wher e protection is
claimed. (Sec. 204.2)
43.2 Scope of Performers' Rights 43.5 Limitation on Right
Performers shall enj oy the following exclusive rights: Subject to the provisions of Section 206, once the performer has
1. As regards their performances, the right of authorizing: (a) authorized the broadcasting or fixation of his performance, the
The broadcasting and ot her communication to the public of provisions of Section 203 shall have no further application. (Sec.
their performance; and (b) The fixation of their unfixed 205.1)
performance. (Sec. 203 .1 ) The provisions of Sect ion 184 and Section 185 shall apply
2. The right of authorizing the direct or indirect reproduction of mutatis mutandis to performers . (Sec. 205.2)
t heir performances fixed in sound recordings or audiovisual
works or fixations in any manner or form. (Sec. 203.2) 43.6 Addit ional Remuneratio n for Subse quent Communica-
tions or Broadcasts
3. Subject to the pr ovisions of Section 206, the right of
authorizing the first public distribution of the original and Unless otherwise provioed in the contract, in every communication
copies of their performance fixed in sound recor dings or to the public or broadcast of a performance subsequent to the first
audiovisual works or fixations through sale or r ental of communication or broadcast thereof by the broadcasting organization,
other forms of t ransfer of ownership. (Sec. 203.3) the performer shall be entitled to an additional remuneration
4. The right of authorizing the commercial rental to the equivalent to at least five percent (5%) of t he original compensation
public of the original and copies of their performances he or she received for the first communication or broadcast. (Sec.
fixed in sound recordings or audiovisual works or fixations, 206)
even after distribution of them by, or pursuant to the
authorization by the performer. (Sec. 203 .4) 43.7 Scope of Right of Producers of Sound Recordings

5. The right of authorizing the making available to t he laSubject to the provisions of Section 212, producers of sound
public of their performances fixed in sound recordings or ~ recordings shall enjoy the following exclusive rights:
audiovisual works or fixat ions, by wire or wireless means,
in such a way that members of the public may access t hem 1. The right to authorize the direct or indirect reproduction of
their sound recordings, in any manner or form ; t he placing
from a place and t ime individually chosen by them . (Sec.
203.5) of t hese reproduct ions in the market and the right of rental
or lending;
43.3 Moral Rights of Performers 2. The right to authorize the first public distribution of the
original and copies of their sound recordings t hrough sale
19 I ndependently of a performer's economic rights, t he performer or rental or other forms of t ransferring ownership;
!iJll shall, as r egards his live aural performances or performances 3. The right to authorize the commercial rental to the public
fixed in sound recordings or in audiovisual works or fixations
have the right to claim to be identified as the perform er of hi; of the origina l and copies of their sound recordings, even
after distribution by them by or pursuant to authorization
performances, except where the omission is dictated by the manner
of the use of the performance, and to obj ect to any distortion, by the producer; and
 330 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 331
LAW ON COPYRI GHT

4. The rig ht to authorize the making available to the public of

their sound recordings in such a way that members of the
public may access the sound recor ding from a place and at
a time individually chosen or selected by them, as well as 44 TERM OF COPYRIGHT
other t ransmissions of a sound recording with like effect. 44.1 Term of Protection
(Sec. 208)
Copyright in works under Sections 172 and 173 shall be protected
43.8 Commun ica tion to the Public during the life of the author and for SO years after his death. This rule
also applies to posthumous works. (Sec. 213. 1)
If a sound recording published for commercial purposes, or a
reproductio n of such sound recording, is used directly for broadcasting 44.2 In Ca se of Joint Aut hor ship
or for other communication to the public, or is publicly performed
with the intention of making and enhancing profit, a single equitable In case of works of joint authorsl,ip, the economic righ ts shall be
remuneration for t h e performer or performers, and the producer of protected during the life of the last surviving author and for 50 years
the sound recording shall be paid by the u ser to both the performers after his death. (Sec. 213.2)
and t he producer, who, in the absence of any agreement shall share
equally. (Sec. 209) 44.3 In Case of Anonymous or Pseudonymous Works

43.9 Limit a tion of Right of Produce,·s o f Sound Record- Jn case of anonymous or pseudonymous works, the copyright shall
ings be protected for SO years from the date on which the work was first
lawfully published. Where, before tlie expiration of the said period,
Sections 184 and 185 shall apply mutatis mutandis to the producer of the author's identity Is revealed or is no longer in doubt, the provisions
sound recordings. ( Sec. 210) of Subsections 213.1 and 213.2 shall apply, as the case may be. If
the work is not published before, it shall be protected for 50 years
43.10 Scope o f Right of Broadcasting Organizations counted from the making of the work. (Sec. 213.3)

Subject to t he provisions of Section 212, broadcasting organizations 44.4 In Case of Works of Applied Art
shall enjoy the exclusive right to carry out, authorize or prevent any
of the following acts: Jn case of works of applied art, the protection shall be for a period of
25 years from the date of making. (Sec. 213.4)
1. The rebroadcasting of their broadcasts . (Sec. 211.1)
44.5 In Case of Photographic W o rks
2. Th e recording in any manner, including the making of films
or the use of videotape, of their broadcasts for t he purpose In case of photographic works, the protection shall be for 50 years
of communication to the public of television broadcasts of from publication of the work and, if unpublished, SO years from the
the same. (Sec. 211.2) making. (Sec. 213.5)
3. The use of such records for fresh transmissions or for fresh
recordin g. (Sec. 211.3) 44.6 In Case of Audiovisual Works

43.11 Limitations on Rights I n case of audiovisual works including t hose produced by process
analogous to photography or any process for making audiovisual
11111 The provisions of Chapter VIII (Lim itations on Copyright) recordings, t he term shall be 50 years from date of publication and,
if unpublished, from the date of making. (Sec. 213.6)
allJ shall apply mutatis mutandis to the rights of performers,
producers of sound recordings and broadcasting organizations.
(Sec. 212) 44.7 Calcula tion of Term

The term of protection subsequent to the death of t he author provided

in Sect ion 213 shall run from t he date of his death or of publicat ion,
332 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 333
LAW ON COPYRI GHT

but such terms shall always be deemed to begin on t he first day of infringement, immediately after customs clearance of such
January of the year following the event which gave rise to them. (Sec. goods. (Sec. 216.l [ a) )
214)
2. To pay to the copyright proprietor or his assigns or heirs
such actual damages, including legal costs and other
44.8 Term of Protection for Performers, Pr oducers, and expenses, as he may have incurr ed due to t he infringement
Broadcasting Or ganizations
as well as the profits the infringer may have made due to
The rights granted to performer s and producers of sound recordings such infringement, and in proving profit s the plaintiff shall
under this law shall expire: be requir ed to prove sales only and the defendant shall be
required to prove every element of cost which he claims,
( a) For performances not incorporated in recordings, SO years or, In lieu of actual damages and profits, such damages
from the end of the year in which the performance took which to t he court shall appear to be just and shall not
place; and be regarded as penalty: Provided, That the amount of
damages to be awarded shall be doubled against any
(b) For sound or image and sound recor dings and for perfor-
person who:
m ances incorporated t herein, SO years from the end of the
year in which the recording took place. (Sec. 215.1) (a) Circumvents effective technological measures; or
I n case of broadcasts, the term shall be 20 years from the date (b) Having reasonable grounds to know that it will
the broadcast took place. The extended term shall be applied only to induce, enable, facilitate or conceal t he infringement ,
old works with subsisting protection under the prior law. (Sec. 215.2) remove or al ter any electronic rights managem ent
information from a copy of a work, sound recording,
or fixation of a performance, or distribute, import for
distribut ion, broadcast, or communicate to the public
45 REMEDIES A GAINST IN FRINGEMENT
works or copies of works wit hout authority, knowing
that electr onic rights management information has
been removed or altered without authority. (Sec.

m
45.1 I n fringeme nt

A person Infringes a right protected under this Act when one: 3.

216.l [b])
Deliver under oath, for impounding during t he pendency
of the action, upon such t erms and conditions as t he
1. Directly commits an infringement; court may prescribe, sales invoices and other documents
evidencing sales, all articles and their packaging alleged
2. Benefits from the infringing activity of another person who
to infringe a copyright and implements for making them.
commits an infringement if the person benefiting has been
(Sec. 216.l[c)}
given notice of the infringing activity and has the right and
ability to control the activities of the other person ; or 4. Deliver under oath for destruction wit hout any compensa-
tion all infringing copies or devices, as well as all plates,
3. With knowledge of infringing activity, induces, causes or molds, or other means for making such infringing copies as
materially contributes to the infringing conduct of another. the court may order. (Sec. 216.l[d])
45.2 Reme dies for Infringe m e nt 5. Such other terms and conditions, including the payment
of moral and exemplary damages, which t he court may
Any person infringing a right protected under this law shall be deem proper, wise and equitable and the destruction of
liable: infringing copies of the work even in the event of acquittal
in a criminal case. (Sec. 216.l[ e])
1. To an injunction restraining such Infringement. The
court may also order the defendant to desist from an The copyright owner may el ect, at any time before final judgment
infringement , among others, to prevent the entry Into the is rendered, to recover Instead of actual damages and profits, an
channels of commerce of imported goods that involve an award of statutory damages for all infringements involved in an action
334 ESSENT IALS OF I NTELLECTUAL PROPERTY LAW CHAPTER V 335
LAW ON COPYRIGHT

in a sum equivalent to the filing fee of the infringement action but not as evidence in the court proceedings, in accordance with the rul es on
less than Fifty t housand pesos (PS0,000.00). In awarding statutory search and seizure involving violations of int ellectual property righ ts
damages, the court may consider the following factors: issued by the Supreme Court.
1. The nature and purpose of the Infringing act; The foregoing shall not preclude an independent suit for relief
by the injured party by way of damages, injunction, accounts or
2. The flagrancy of the infringement;
ot herwise. (Sec. 216.2)
3. Whether the defendant acted in bad faith;
4. The need for deterrence; 45 .3 Criminal Pen alties

5. Any loss that the plaintiff has suffered or is likely to suffer N Any person infringing copyright or aiding or abetting such
by reason of the infringement; and riJll infringement shall be guilty of a crime punishable by:
6. Any benefit shown to have accrued to the defendant by 1. I m prisonment of one (1) year to three (3) years plus a fine
reason of the infringement. ranging from Fifty thousand pesos (PS0,000.00) to One
hundred fifty thousand pesos (PlS0,000.00) for the first
In case the infringer was not aware and had no reason to believe
offense.
that his acts constitute an infringement of copyright, t he court in
its discretion may reduce the award of statutory damages to a sum 2. Imprisonment of three (3) years and one (1) day to si x (6)
of not more than Ten thousand pesos (Pl0,000.00), provided t hat years plus a fine ranging from One hundred fifty thousand
the amount of damages to be awarded shall be doubled against any pesos (Pl S0,000.00) to Five hundred thousand pesos
person who: (PS00,000.00) for t he second offense.
1. Circumvents effective technological measures; 13 or 3. Imprisonment of six (6) years and one (1) day to nine (9)
2. Having r easonable grounds to know that it will induce, years plus a fine ranging from Five hundred t housand pesos
enable, facilitate or conceal the infringement, remove (PS00,000.00) to One million five hundred thousand pesos
or alter any electronic rights management information,. (Pl,500,000.00) for the third and subsequent offenses.
from a copy of a work, sound recording, or fixation of a 4. In all cases, subsidiary imprisonment in cases of insolvency.
performance, or distribute, import for distribution, broad-
cast, or communicate to the public works or copies of In determining the number of years of imprisonment and the
works without authority, knowing that electronic rights amount of fine, the court shall consider the value of the Infringing
management information has been r emoved or altered materials that the defendant has produced or manufactured and
without authority. (Sec. 216. 1) the damage that the copyright owner has suffered by reason of
In an infringement action, the court shall also have the power the infringement, except that the law provides that the respective
to order the seizure and impounding of any article which may serve maximum penalty stated above shall be Imposed when the
infringement Is committed by:
(a) the circumvention of effective technological measures;
13
'"Teclmological meas11re" means any technology, device or component that, in the nor-
mal course of its operation, restricis acts in =peci or a work, perfonnancc or sound recording, (b) the removal or alteration of any electronic rights mana-
which arc not authorized by the authors, perfonners or producers of sound recordings concerned gement information from a copy of a work, sound recording,
or pem1itted by law. (Sec. 171.12 added by Rep. Act No. I 0372) or fixation of a performance, by a person, knowingly and
14
..Rights ma11agemenr informa1io11 ., means information which idcutifies the work, sound without authority; or
recording or performance; the author of the work, producer of the sound recording or perfonner
of the perfonnanec; the owner of any right in the work. sound recording or performance; or infor- (c) the distribution, importation for distribution, broadcast, or
mation about the terms and conditions of the use or the work, sound recording or perfonnonce; communication to the public of works or copies of works,
and any number or code that represent such information, when any of these items is attached to a by a person without authority, knowing that electronic
copy of lhc work., sound recording or fixation of pcrfonnance or appears in conjunction with the rights management information has been removed or
communication to the public of a work, sound recording or performance. (Sec. I 71. 13 added by
alter ed without authority. (Sec. 217)
Rep. Act No. 103 72)
 336 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 337
LAW ON COPYRJGHT

45.4 Possession of Infringing Copy of the Work t he defendant does not put in issue t he question of his
owner-ship. (Sec. 218.2[b])
A_n y person who at the time w hen copyright subsists in a work has in
his possession an article which he knows, or ought to know to be an Wher e the defendant, without good fai th, puts in issue the
infringing copy of the work for the purpose of: ' questions of whether copyri ght subsists in a work or other subject
1. matter to which the action relates, or t he ownership of copyright in
Selling, letting for hir e, or by way of t rade offering or
such work or subject matter, thereby occasioning unnecessary costs
exposing for sale, or hire, the article;
or delay in the proceedings, the court may direct that any costs to
2. Distributing t he article for purpose of trade, or for any the defendant in respect of the action shall not be allowed by him and
other purpose to an extent that will prejud ice t he rights of that any costs occasioned by the defendant t o other parties shall be
the copyright owner in t he work; or paid by him to such ot her parties. (Sec. 218. 2[c))
3. Trade exhibit of the article in public shall be guilty of an
offense and shall be liable on conviction to imprisonment 45.7 Presumption of Authorship
and fine as above ment ioned. (Sec. 217.3)
The natural person whose name is i ndicat ed on a work in t h e usual
45.5 Affida vit Evide nce ma nner as t he aut hor shall, in the absence of proof to the contrary,
be presumed to be the au thor of t he work. This provision shall be
An affidavit made before a notary public by or on beh alf of the owner applicable even if the name is a pseudonym, where the pseudonym
of the copyright in any work or otlier subject matter and stating leaves no doubt as to the identity of the author. (Sec. 219.1)
that:
The person or body corporate whose name appears on an
(a) At t he time specified t herein, copyright subsisted in the audiovisual work in the usual manner shall, in the absence of proof to
work or other subject matter; the contrary, be pres~med to be the maker of said work. (Sec. 2 19.2)

(b) He or the person named therein is the owner of the

copyright; and 45.8 Jurisdiction

(c) The copy of the work or other subject matter annexed Wit hout prejudice to t he provIsIons of Subsection 7.l(c), actions
t hereto is a true copy t hereof, shall be admitted in evidence under this Act shall be cognizable by the courts with appr opriate
in any proceedings for an offense under this Chapter and jurisdiction under exist ing law. (Sec. 225)
shall be prima facie proof of the matters therein stated
until the contrar y is proved, and the court before which 45.9 Prescription of Action for Damages
such affidavit is produced shall assume that the affidavit
was made by or on behalf of the owner of the copyright. r.1111 No damages may be recovered under t his Act after the lapse of
(Sec. 218. 1) rillJ four years from the t ime the cause of action arose.

45.6 Presumptions
45 .10 Enforcement of Moral Rights
The following presumpt ions are created by the Law on Copyright:
Violation of any of the moral rights shall entitle t hose charged with
1. Copyright shall be presumed to su bsist i n the work or their enforcement to t he sa me righ ts and remedies available to a
other subject matter to which the action r elates if the copyright owner. In addition, damages which may be availed of under
defendant does not put in issue the question whether the Civil Code may also be recovered. Any damage recovered after
copyright subsists in the work or other subject matter. the creator's death sh all be h eld in t rust for and remitted to his heirs,
(Sec. 218.2[a] ) and In default of the heirs, shall belong to the government. (Sec. 199)
2. Where the subsistence of the copyright Is established
the plaintiff sh all be presumed to be the owner of th~
copyright if he claims to be the owner of the copyright and
 338 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
CHAPTER V 339
LAW ON COPYRI GHT

46.3 Points of Attachment for Sound Recordings

46 POINTS OF ATTACHMENT The prov isions of the law on the prot ection of sound recordings sha ll
apply t o:
4 6. 1 Points of Attachment for Works under Sections 172 and
173 1. Sound recordings the producers of which are nationals of
t he Philippines; and
The protection afforded by this Act to copyrightable works under 2. Sound recordings that were first p ublished in the Phil ip-
Sections 172 and 173 sha II apply to : p i nes. (Sec. 223 )
1. Works of authors who are nationals of, or have their
habitual residence in the Philippines; 46.4 Points of Attachment for Broadcasts

2. Audiov isual works the producer of which has his headqu ar- The provisions of the law on the protection of broadcasts sha ll apply
ters or habitual residence in the Ph ilippines; to:
3. Works of architecture erected in the Philippines or other 1. Broadcasts of broadcasting organizations the headquarters
artistic works incorporated in a building or other structure of which are situa ted in the Philippines; and
located in the Philippines;
2. Broadcast s transmitted from transmitt ers situated i n the
4. Wor ks first published in the Philippines; and Ph ili ppines. (Sec. 224.1 )
5. :"'orks first_ pu ~lished i_n another country but also published The provisions of t he law shal l also apply to perform ers who,
in the Ph 1l1ppines within 30 days, irrespective of t he and to producers of sound record ings and broadcasting organ izations
n atio nality or I·esidence of the authors. (Sec. 221.1) which, ar e to be protected by virtue of and in accordance with any
international conventioh or other international agreement to which
The provisions of this Act shall also apply to works that are to the Philippines is a party. (Sec. 224.2)
be prot~cted by virtue of and in accordance with any internation al
~onvent1on or other international agr eement to which the Philippines
Is a party. (Sec. 221.2)

46. 2 Points of Attachment for Pe rform ers

47 DEPOSIT AND NOTICE

47. 1 Issuance of Certificate of Deposit

The provisio ns of the law on the protection of perfor mers shall apply
to:
After t he fi r st public dissemination of perform ance by aut hority of the
1. Performers who are nationals of the Philippines; copyright owner of a work falling under Subsections 172 .1, 172.2,
and 172.3 of this Act , t here shall, for the pur pose of completing the
2. Performers who are not nationals of t he Philippines but records of the National Library and the Supreme Court Library, w ithin
whose performances: three weeks, be regist ered and deposited with it, by personal delivery
or by registered mail, two complete copies or r eproductions of the
(a) Take place in t he Philippines; or
wor k in such form as t he directors of said libraries may prescr ibe.
(b ) Are incorporated in sound recordings that are A certificate of deposit shall be issued fo r which the prescribed fee
protected under this Act; or shall be collected and the copyright owner shall be exempt from
making additional deposit of the works with the Nat ional Library and
( c) Which has not been fixed in sound r ecording but are the Supreme Court Library under other laws. If, within three weeks
carried by broadcast qualifying f or protection under after receipt by the copyright owner of a written demand from the
the law. (Sec. 222) directors for such deposit, the required copies or reproductions are
not delivered and the fee is not paid, the copyright owner shall be
liable to pay a fine equivalent to the required f ee per month of delay
and to pay to the National Library and the Suprem e Court Library the
 340 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 34 1
LAW ON COPYRIGHT

amount of the retail price of the best edition of the work. Only the
abovementioncd classes of work shall be accepted for deposit by the or Hermes Sports Center were in possession of goods, the
National Library and the Su preme Court Library. (Sec. 191 )
copyright of which belonged to Manly Sportswear Mfg., Inc.
(MANLY).
47 .2 Notice of Copyright
Atte·rc finding reasonable grqupds that a violation of Sections
Each copy of a work published or offered for sale may contain a notice 172 and 217 of Republic Act (RA) No. 8293 has been •
bearing the name of the copyright owner, and t he year of its first committed, Judge Estrella T. Estrada of RTC-Quezon City,
publication, and, in copies produced after the creator's death, the Branch 83, issued on March 17, 2003 Search Warrant No,
year of such death. (Sec. 192) 4044(03). .
Respondents thereafter m6ved to quash.and annul the search
47.3 Ownership of Deposit and Instruments warrant contending that the same is invalid since the requisites
for its issuance have not been complied with. They insisted
All copies deposited and instruments in writing filed with the National that the sporting goods manufactured by and/or registered
Library and the Supreme Court Library in accordance with the in the name of MANLY are-ordinary and c::omrnon hence, not ·
provisions of this Act shall become the property of the Government. among the classes of work protected under Section 172 of
(Sec. 227) RA 8293.
On June 10, 2003, the trial court granted the mot ion to
47.4 Effect of Registration and Deposit of Work
.quash and decl9red Search Warr~nt No. 4044(03) null and
The registration and deposit of the work is purely for recording the void based on its finding that the copyrighted products of
MANLY do not appear to be original creations and were being
date of registration and deposit of the work and shall not be conclusive
as to copyright ownership or the term of the copyrights or the rights manufactured ar¾d distributed by different companies locally
of the copyrigllt owner, including neighboring rights. ,s and abroad under various brands, and therefore unqualified
for protection under Section 172 of RA 8293. Moreover, ·
MANLY's certificates of registrations were issued only in 2002,
whereas there were certificates of registrat ions for the same
sports articles which were issued earlier than MANLY's, thus
further negating the claim that its copyrighted products were
origfhai creations. ' · · · · · ·
On August 11, 2003, the trial court denied MANLY's motion for ·
reconsideration. Hence, it filed a petition for certiorari before
the Gourt of Appeals which was denied for lack ofmerit. Jhe -'
· Maniy,;~ortsw~amManufacturipg,. In.c. v. Dadodette .Enter- . qppe)J9te court found that the trial court correctly granted the ' '
prlses:,'a)Jd/or'Hermes Sports Center, G.R. No. 165306, Sep- motion to quash and that its ·ruling in the ancillary p roceeding
tember 20, 2005 · . did not preempt the findings of the intellectual property court
as It did not resolve with finality the status or character of the
Facts: seized items.
. ~- t ' '
On March 'l"I, 2003/ Speclaf Trriiestlgator 1:/1ezer P. Salcedo of After denial of its motion for reconsideration on September 15,
the National Bureau of Investigation (NBI) applied for a search 2004, MANLY filed the instant petit ion for review on certiorari
warrant before _the Regional Trial Court (RTC) of Quezon City, raising the sole issue of whether or not the Court of Appeals
based on the information that Dadodette Enterprise~ and/ erred in finding that the trial court did.,not gravely abuse its
dlscre.t ion in dedaring in tfie hearing for the quashal of ·the
search warrant that the copyrighted products of MANLY are
15 not original creations subject to the protection of RA 8293.
Copyright Safeguards and Regulations, Rule 7, Sec. 2 issued on August 13, 1999 pur-
suant to Sec. 228 of Rep. Act No. 8293.
 342 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER V 343
LAW ON COPYRIGHT

be opened to public inspection. The Director of the National Library

Issue: is empowered to issue such safeguards and regulations as may be
necessary to implement this Section and other provisions of the law.
Whether the copyright registration in favor of MANLY can (Sec. 228)
sustain t he action against the respondents.

Ruling : NO 47 .6 Copyright Division Fees

1. No copyright accruel In i;~or of MANLY despite issuance The Copyright Section of the National Library shall be classified as
of the certificate. Furth~r, th,e copyright certificates issue~ a Division upon the effectivity of the law. The National Library shall
In favor of MANLY const"itute merely pfima facie evidence of have the power to collect, for t he discharge of its services under this
~alii:lity and o.wnershi~. ~ow~ver, ,R.o presumption, of V,alid it y Act, such fees as may be promulgated by it from time to time subj ect
1s createo where other evidence exist that may cast doubt on to t he approval of the Department Head. (Sec. 229)
the copyright validity. 1-!ence, where th~ere is sufficient proof
that t he copyrighted products are not original creat ions but
are ~eadily available in t he market under various brands, as
-in t}:iis case, validity and originality wfll not be presumed and
the. tri al cou rt may properly quash the issued war1c.1nt for lack
of probable cause.
0~ Ten Fast Laws on Copyright

1. Copyright is confined to literary and artist ic works which are

, Besides, no copyri.9ht _accrues in favor of MANLY despite original intellectual creations in the literary and artistic domain
lss!)ance of the ·certificates of registration and deposit prot ected from the moment of their creation.
pursuant to Section 2, Rule 7 of t he Copyrights Safeguards
and Regulations which states: · 2. Ideas, concepts, ,principles, discoveries and the likes are not
subject to copyright.
Sec. 2, Effects ofRegistration and Deposit ofWotk.
- The registration and deposit of t he work is purely 3. News of t he day are not subject to copyright.
for recording t9,e date of regist ration and deposit ' of 4. Official government texts are not subject to copyright.
the work and shall not be conclusive as to copyright
pwner ship or the terin of tl:le copyrights or t he rights 5. In case of a commissioned work, t he person who so commissioned
of the copyright owner, including neighboring rights. t he work shall have ownership of work, but the copyright thereto
shall rem ain with the creator, unless the contrary has been
At 'fflt:ist, t he ertificates of regist ration and deposit issued agreed upon.
_by the National Library and the ? up~me . Court Library 6. Copyright ls distinct from the material object, such that
· ~ ·ser:ve merely·a's a notice of recording and registration of the
assignment of copyright does not necessarily mean assign ment
work but do not confer any right or title upon the. registered of t he material object, and vice versa.
copy[lghf oWo'er or automati:ltally ''put his work 'under the·
protective m antle of the copyright Jaw. It Is not a conclusive 7. Among other lim itations, recitation or performance of a work,
; proot of, eqpyright ownership,: As it is, non-regist ration and once it has been lawfully made accessible to the public, if done
deposit of t he work within the prescribed period only makes privately and free of charge or If made strictly for a charitable or
. the copyright owner liable to pay a fine. · religious institution or society will not subject the performer to
liability.
8. Fair use will exempt liability from copyright infringement.
47.5 Public Records 9 . The author enjoys not j ust economic rights but also moral rights
over t he work.
The section or division of the National Library and the Supreme Court
Library charged w ith receiving copies and Instruments deposited and 10. The author has an inalienable right to participate in t he gross
with keeping records required under this Act and everything in it shall proceeds of the sale or lease to the extent of five percent
344 ESSENT1ALS OF INTELLECTUAL PROPERTY LAW

over original work of painting, or sculplure, or of the original

manuscript of a writer or composer, subsequent to t h e first
disposition thereof during his/her lifetime and so years after
his/her death. This provision of the law shall not apply to prints
etchings, engravings, works of applied art, or works of si mila~ C H APTER VI
kind wherein the author primarily derives gain from the proceeds
of reproductions.
SEARCH W ARRANTS AND INTELLECTUAL
P ROPERTY RIGHTS

One of t he most horrifying and revolting sights for IPR owners to see
is when counterfeit items are openly sold in public. Had it been legally
possible to just dest roy the items and t he culprits that sell them
sim ilar to t he biblical account where Jesus drove out corrupt traders
in t he tem ple ar ea and called them thieves,' many will not doubt do
it just the same.
But our society is one that will not allow t hat becau se there
are certain rules that governs our conduct. All should follow certain
procedures in order to enforce their rights. Everyone should follow
proper procedures In the confiscation and destruction of the infringing
merchandise including t he apprehension of the offenders.
It is for this r eason that a discussion along this line is included
in t his work. The discussion, however, was kept at a minimum si nce
t his topic is best dealt with in a remedial law text. For those who
need actual legal representation, actual consultation with a lawyer is
i ndispensable.

48 JURISDICTION

48.1 Over Civil and Criminal Cases for IPR Violations

It has been well-settled that it is the Regional Trial Court that has
j urisdiction over civil and criminal cases for IPR violations despit e
the increase in jurisdiction of Municipal Trial Courts brought about by
Batas Pambansa Big . 129 and Republic Act No. 7691. This is actually
the issue in Samson v. Daway, G. R. Nos. 160054-55, July 21, 2004.

'Matthew 21: 12- 13.

345
346 ESSENTIALS O F INTELLECTUAL PROPERTY LAW CHAPTER VJ 347
SEARCH WARRANTS AND INTELLECTUAL PROPERTY RIGHTS

rn Samson, two in formation for unfair competit ion under Section have used the phrases 'parts of Acts' and 'inconsistent
168.3(a), in r elation to Sect ion 170, of the I ntellectual Property Code herewit h', and rt would have simply stated 'Republic Act
(Republic Act No. 8293), similarly worded save for the dates and No. 165, as amended; Republic Act No. 166, as amended;
places of commission, were fi led on March 7, 2002 against pet itioner and Articles 188 and 189 of the Revised Penal Code;
Manolo P. Samson, the r egistered owner of ITT! Shoes. The court's Presidential Decree No. 49, includ ing Presidential Decree
(RTC) j urisdiction over t he offense charged was challenged on the No. 285, as amended are hereby repealed.' lt would
ground that since under Section 170 of Republic Act No. 8293, the have removed all doubts that said specific laws had been
penalty of imprisonment for unfair competition does not exceed six rendered without force and effect. The use of the phrases
years, the offense is cognizable by the Municipal Trial Courts and not 'parts of Acts' and ' inconsistent herewith' only means that
by the Regional Trial Court per Republic Act No. 7691. the repeal pertains only to provisions which are repugnant
or not susceptible of harmonization with R.A. No. 8293.
The Supreme Court in upholding RTC's jurisdiction, said: Section 27 of R.A. No. 166, however, is consistent and
in harmony wit h Sect ion 163 of R.A. No. 8293. Had R.A.
~corollarily, Section 163 of the same Code states that No. 8293 intended to vest jurisdiction over violat ions of
actions (including criminal and civil) under Sections 150, intellectual property rights with the Metropolitan Trial
155, 164, 166, 167, 168 and 169 shall be brought before Courts, it would have expressly stated so under Section
the proper courts with appropriate j urisdiction under 163 t hereof.
existing laws, thus -
"Moreover, t he settled rule In statutory const ruction
"Sec. 163. Jurisdiction of Court. - All actions under is that in case of conflict between a general law and a
Sections 150, 155, 164 and 166 to 169 shall be brought specia l law, the latter must prevail. Jurisdiction conrerred
befor e the proper courts with appropriate jurisdiction by a special law to Regional Trial Courts must prevail over
under existing laws. t hat granted by a general law to Municipal Trial Courts.
"The existing law referred to in the foregoing provi- "In t he case at bar, R.A. No. 8293 and R.A. No. 166
sion is Section 27 of R.A. No. 166 (The Trademark Law) are special laws conferring j urisdiction over violations of
which provides that j urisdiction over cases for infringe- intellectual property rights to t he Regional Trial Court.
ment of registered m arks, unfair competition, fa lse desig- They should therefore prevail ove1· R.A. No. 7691, which
nation of origin and fa lse description or representation, is is a general law . Hence, jurisdiction over the instant
lodged with the Court of First I nstance (now Regional Trial criminal case for unfair competition is properly lodged
Court) - w it h the Regional Trial Court even if the penalty therefo r
"Sec. 27. Jurisdiction of Court of First Instance . - All is imprisonment of less than 6 years, or from 2 to 5 years
actions under this Chapter [ V-Infrin gement] and Chapters and a fine ranging from PS0,000 .00 to P200,000.00."
VI [Unfair Competition] and VII [False Designation of
Origin and False Description or Representation], hereof 48. 2 Special Commercia l Courts
shall be brought before the Court of First Instance.
One of the challenges faced by our courts is t heir clogged dockets.
"We find no merit in t he claim of petitioner t hat R.A. This is seen firsthand by both litigators like myself and our clients
No. 166 was expressly repealed by R.A. No. 8293. The every time we appear in courts that has too many cases sched uled
rep ealing clause of R.A. No. 8293, reads - for hearing in any given day. The situation is aggravated by t he lack
"Sec. 239. Repeals. - 239.1. All Acts and parts of of space In most courtrooms that results in SRO (standing room
Acts inconsistent herewith, more particularly Republic Act only), a phenomenon no longer seen in our movie houses since the
No. 165, as amended; R.A. No. 166, as amended; and proliferation of pirated CD's and DVD's.
Articles 188 and 189 of t he Revised Penal Code; Presidential Nat urally, the problem of clogged dockets also gives the lit igants
Decree No. 49, including President ial Decree No. 285, as their fair share of st ress attacks due to the very long time they have
amended, are her eby r epealed. to endure waiting for the result of their cases. There has been too
" Notably, the aforequoted clause did not expressly many j okes told along this line such that cr afting something new is a
repeal R.A. No. 166 in its entirety, otherwise, it would not task near impossible already.
348 ESSENTIALS OF JNTELLECTUAL PROPERTY LAW CHAPT ER VI 349
SEARCH WARRANTS AN O INTELLECTUAL PROPERTY R[GHTS

Remedies t o address the problem includes the creation of

admin istrative agencies vested with authority to hear cases of peculiar Facts:
nature. The Intellectual Property Office is one of t hese agencies. Other
well-known examples are the National Labor Relations Commission On Apri l 8, 1997, an information for v iolation of paragraph 1,
(NLRC), the Housing and Land Use Regulatory Board (HLURB), and Article 189 of the Revised Penal Code (RPC) was filed before
the I nsurance Commission. Branch 21 , RiC, Cebu City against pet itioners Andrea Tan,
Clarita Llamas, Victor Espina and Luisa Espina of Best Buy
Another remedy is t he creation of special courts to hear specific Mart, Inc. The Information read:
cases assigned to it. We, therefore, have the so-called Family Courts
to hear family-related cases. "That on or about June 27, 19~6 _and ,sometime
prior or subsequent thereto, in t he 'city of Cebu,
This is the philosophy behind the designat ion of certain Regional Philippines, and within t he jurisdiction of t his
Trial Courts as Special Commercial Courts. Thus, not too long ago, · Honorable Court1 above-m·entioned accused,
t he Supreme Court promulgated A.M. No. 00- 11-03-SC (effective conspiring and mutually helping each other, did
December 15, 2000) designating certain branches of the Regional Trial then and there willfully, unlawful'ly and feloniously
Courts to try and decide cases formerly cogniza ble by the Securities distribute and sell counterfeit RAY BAN sunglasses
and Exchange Commission. 2 Subsequently, the Court promulgated bearing the appearance and trademark of RAY BAN in
A.M. No. 03-03-03-SC, effective July 1, 2003, which provides in part the aforesaid store wherein they· have direct control,
that: supervision and management thereby inducing the
public to believe t!,at these goods offered "by them
"x XX are t hose of RAY BAN to the damage and prejudice of
"2. The designation of Intellectual Property Courts BAUSCH AND LOMB, INC., the exclusive owner and
under Administrative Order No. 113- 95 dated 2 October user of trader11ark RAY BAN on sunglasses'."
1995, as amended by Administrative Order No. 104 -96 On January 21, 1998, respondent fil ed a· motioh to transfer
dated 21 October 1996 and Resolution dated 19 February t he case to Brancfl 9 , RTC, Cebu City. Administrative Order
2002 in A.M. No. 02- 1- 11- SC, is hereby revoked. However, No. 113-95 (A.0, No. 113-95) designated the said branch
the Regional Trial Court, Branch 24, Manila is hereby as the special court in Region VII to handle violations of
designated as an additional Special Commercial Court in intellectual property rights.
t h e City of Manila."
On March 2, 1998, petitioners filed a motion to quash t he
The purpose of such designation is to streamline t he court information on the_ground that the RTC had oo j ur:isdiction
structu re for speedy disposition of cases due to increased court's over t he offense charged against them. The penalty provided
efficiency in handling such cases. by the RPC for the crime was within the jurisdiction of tt-le
Municipal Trial Cou rt in Cities (MTCG). '
On March 6, 1998, resp~n,d~nt fil,ed an~oppqsitlor, to the
ILLUSTRATIVE CASE 6-1 motion to quash, expfammg that BP 129 had already
transferred the exclusive jurisdiction to try and decide
violations of intellectual property. rights from 'the MTC and
MTCC t0 the RTC and t hat the Supreme Court had also issued
Title : · Adm inistrative Order No. 104-96 (A.O. No. 104-96) deleting
' and withdrawing t he designation of seve'ral branches of the
A n d re Tan,' et al. v. Bausch & Lom b, Inc., G.R. No. 148420, MTC and MTCC as spec;ial intellectual property courts.
December 15, 2005
On December 22, 1998, the trial court a quo denied
respondent's motion to transfer the case. and gr-Qntl;'!d
petitioners' motion to quash. It ruled:
2
Pursuanl to Rep. Act No. 8799, Sec. 5.2.
350 ESSENTIALS OF I NTELLECTU/\L PROPER! Y I AW CHAPTER VI 351
S EARCH WARRAN1S AND I NTCLLECTUAL PROPERTY RIGHTS

Accused (wa)s charged for violation of Att . 189

grade; and (c) not dim inish, increase or modify substantive
of Revised Penal Code t he penalty for which is prision
rig hts. As long as these limits are met, t he argument used
correccional in its minimum period o r a fin e ranging
by petitioners t hat the Supreme Court, through A,.O. Nos.
from P500.00 to P2,000.Q0, or b~th. Hence, witl1io
113-95 and 104-96, transgressed on Congress' sole power to
' the j'urisdicticin of the metropolitan and municip.a l
legislate, cannot be sustained.
trial courts (Sec. 32(2), B.P. Big. 129, as amended) .
A.O. No. 113-95 designated special int ellectual property
Administrative Orders Nos. 113-95 and 104-96,
courts to promote t he efficient adminis~ration of justice and to
cited by plaintiff, cannot pr evail over the ex press
ensure the speedy disposition of Intellectual prope,rty cases.
provisions of Batas Pambansa Big. 129, as amended,
jurrsdict!on of courts being a matter of substantive A.O. No. 104-96, on t he ot her hand, was issued pursuant
law. to Sect ion 23 of BP 129 which t ransferred the jurisdiction
over such crimes from the MTC and ·MTCC to the RTC and
I f t his Court has no jurisdiction ,over the case,
which furthermore gave the Supreme Court the atithorlty to
the same is frue with Br.anch 9 of the same court.
designate certain branches of the RTC to exclusively handle
Therefore, the motion to transfer the case to the
special cases in t he interest of the speedy and efficient
latter should fail.
administration of justice. Accordingly, the RTC was vest ed
WHEREFORE, premises considered, the motion with the exclusive and original jurlsdlGtion to try and decide
to tr·p nsfer is denied, whl_le the motion to quash is intellectual property cases. ·
granted. The case is thus dismissed.
The transfer of jurisdiction from t he MTC and MTCC to the RTC
SO ORDERED. did not in any way affect the substantive rights of pet itioners.
The administrative 'orders did not c~ange the definition or
The appe.llate court gave due course to the ap~eal m ade by scope of the crime of unfair competition With which petitioners
'the respondent despite some procedural lapses. It set aside were charged.
the trial tourt order and ordered the transfer of Crim. Case
No. CBU-45890 to Branch 9 of the Regional Trial Court of Both administrative orders therefore have the force and effect
Cebu City, and directing t he public respondent to accordingly of law, having been validly issued by the Supreme Court in
transmit _J;:~e re_cords thereof. · : · ' the exercise of its constitutional rule-making power. rhe trial
court, being a subordinate court, should have followed the
Hence, t~e present petition for review.
mandate of the later A.O. No. 104-96 which vested jurisdiction
Issue: · over the instant case on the RTC. Thus, the appellate court
correctly found that the court a quo committed g~ve abuse
Whether: t he Court!;'of Appe~IS erred in "'.reversing the trial of dis,Cretlon. · · · ·· ·
court ruling· that tHe Reglor,ial Trial Court has no jurisdiction
The transfer of this case to Branch 9, RTC, Cebu City, however,
over t he offense of unfair competition under Article 189 of the
is no longer possible. A.M. No. 03-03-03-SC consolidated
Revised Penal Code.
t he intellectual property courts and commercial SEC courts.
Ru(ing: ·No in one R:TC branch in 9 pa'rticul~r · locaHty to st reamline the
court structure and to promote expediency. The RTC branch
1. Supreme Court administrative order vesting jurisdiction so designated will try and decide cases involving violations
to the RTC is valid. Section 5(5) of the 1987 Consti tution of intellectual property rights, and cases formerly cognlzable
empowers the Supreme Court to promulgate rules concerning by the Securities and Exchange Commission. It is now called
, pleading, practice an(f ·procedure in all col)rts. Th~ limitations a spedal commern1a1 court. In Region VII, the designated
to this rute'-making power are the following: t he rules must ( a ) special commercial court is Branch 11, RTC, Cebu City. The
provide a simplified and inexpensive procedure for t he speedy t ransfer of this case to that court is therefore warranted .
disposition of cases; (b) be unlform for all courts of the sam e
 352 ESSENTIALS O F INTELLECTUAL PROPERTY LAW CHAPTER VI 353
SEARCH WARRANTS AND [NTELLECTUAL PROPERTY RIGHTS

T he requisites in the above rule were broken down in a decided

case6 where the Court held that for a valid search warrant to issue,
49 SEARCH WARRANTS there must: (1) be probable ca use; (2) which must be determined
personally by the Judge himself and not by the applicant or any other
49.1 Nature of Search Warrants person; (3) the Judge must, before issuing t he warrant, personally
examine in the form of searching questions and answers, in writing
A search warrant is an order in writing issued in the name of the and under oath, the complainant and any w itness he may produce,
People of the Philippines, signed by a judge and directed to a peace on facts personally known to t hem ; (4) the probable cause must be
officer, commanding him to search for personal property described in connection with one specific offense; (5) the warrant issued must
therein and bring it before the court. 3 This is essential in the proper particularly describe the place to be searched and the persons or
conduct of police action commonly referred to as "raids" against things t o be seized; and (6) the sworn statements together with the
counterfeit goods. affidavit s submitted by witnesses must be attached to the record.
The process of securing a search warrant however is not a simple
task. It is supposed to be issued only upon compliance with strict 49.3 Probable Cause
legal requirements. I n his work, Justice Oscar Herrera, a luminary in
Probable cause means a reasonable ground for belief in the existence
Remedial Law, wrote :
..' of facts warranting the proceedings complained of, or an apparent
state of facts found to exist upon re asonable inquiry which would
"A search warrant must conform strictly to the
requirem ents of constitutional and statutory provisions induce a reasonably intelligent and prudent man to believe t hat the
under which it is issued, otherwise, it is void. The accused per son had committed the crime. 7
proceedings upon search warrants, it has rightly been held, The basis of t his probable cause is personal knowledge. In
must be absolutely legal, for there is not a description of clea rer terms, it must be shown that the facts upon which the search
process known to the law, t he execution of which is more warrant is based must be within t he personal knowledge of the com-
distressing to the citizen. Perhaps ther e is none which plainant or the witnesses he may produce. Search warrants in ot her
incites such intense feeling in consequence of its humiliating words should never be based merely on hearsay.
and degrad ing effect. The warrant will always be construed
strictly without, however, going t he full length of requiring Justice Herrera in his work quoted above illustrated this principle
technical accuracy. A liberal construct ion should be given clearly by citing a case8 where t he Supr eme Court said:
in favor of the individual to prevent stealthy encroachmen t
"Thus, the statement of t he applicant that his
upon, or gradual depreciation of the rights secured by t he
purpose for applying for a search warrant was that: ' It
Constitution. No presumptions of regularity to be invoked had been reported to me by a person whom I consider
in aid of t he process when an officer undertakes to j ustify to be reliable that there are being kept in said premises
under it."• books, documents, receipts, lists, chits and other papers
used by him in connection with his activities as money
49.2 Requisites for Issua nce lender, charging usurious rate of interests, in violation of
law,' was held as insufficient for the purpose of issuing a
A search warrant shall not issue except upon probable cause in sear ch warrant."
con nection with one specific offense to be determined personally
by t he judge after examination under oath or affirmation of the Probable cause, however, does not require "proof beyond
complainant and the witnesses he may pr oduce, and particularly reasonabl e doubt" which is the standard required to support a
describing the place t o be searched and the t hings to be seized which judgment of conviction in a criminal case. Thus, the deciding point as
may be a nywhere in the Philippines. 5 to whether a search warrant shall be issued or not is mere probability
and not certainty.

'Rules of Court, Ruic 126, Sec. I. 5Prudem ev. Dayrit, G.R. No. 82870, December 14, 1989.
"J(emedia/ law, Volume IV, p. JO 19, Rex Book Store, Inc. (2007). 'Sec law Dictionary, p, J 11, Rex l3ook Store, Inc. (2004).
'Rules of Court. Rule 126, Sec. 4. 8Alwm>z
. v. Court ofFirst lnsta11cc. 64 PhiL 33.
354 ESSENTIALS OF lNTELLECTUAL PROPl:PT ( LAW CHAPTFR V l 3 55
',f'AI 4 t I ''""-f{l '11.h! I ~- AM O INTELLECTUAL PROPERTY RIGHTS

stacks of CDs; and that they, were t~lt fby thei r 'a.nonymous
source tha t the discs Were being i:nanufo'ctured In the· same
pre mises . Th ey al.so tes ·· · · ·
,; _(1) .~r:19~fole,d 1,p } ~'e·, re··
;~ ' V[~E!O't:01')'))'.laftS O!S<JS.
/. V, Hono~able · V8.-B, ,in , \/iolat ibn of S
· 1ar ch 14, 200,, ·a VRB certification t o such
· c::ertlfication and a Jistirig of S inging on
peti.t ioners' copyrights :in vi¢1ati (Ri:ipubl ic
Aet (RA) No. 8293, ot lierwjse I~ I Pr~)perty
epartment of code. . , .
VRB) charged. herein .
ung, Elena Lim and . On · the basis of the... foregoing \ ,wprn ,statements, the
na Corporation (~LG➔ respondent j udge issuE?d Search Wan'ant ,N_ o. ·219-00 for
) No, 1987. . 1ation of Section 208_'Of fl..A. No·. 8M3 an'cLSe'.a(ch Warrant
vio_
No. 2_2 0~00 for violation of Section 6.of PD No: 1987.
as·_ LS. No. ;29-oq- : ', . i..' . '"

ln the replication, The following day, elements of t he·Philippine :Nptional Police

grams without license . Criminal I nvestigation ·and· Detection Group, · 1ect' by P02
f this and petltioriers' Reggie Comandante, -enforced both · w~rt ants : ang brought
ement, t li'e ·National t he seized items to a private warehotJse ofCarep9 k Movjng
h Agent Ferdinand M. and Storage at q_34 ViUonco Road, S,utat, Parafi-aque City
0, with th~ ~e.giona! and tbeir custody turned over tb' VRB', An. inventory of seized
ch 80 1 presidi:ld. by it~ms, a_s well as a "Return qf ~ea rch vY;~'i·r~nt:' )V.erft. lat er filed
of sea~ch warrants with the respondent court. ' ·. · · '
' ' ') . ; \.
g , Jame~ Uy1 John .
hi;: name and ·style . fv),ean,w hile, the resp_ oJJdents it) LS . .
cUon fa cilit ·,of SLC . ·o prbve before -the DOJ . '
~8 _a nd up to the time o
B t;o operate as .r:' · ·
t h~ sfate'd findiQ
er,~d., qn Uf!au'tbb
. . .
icen::,ed to eoga' e
. '

'
.whkh they ltar'
1
• •
r-esblUtion · dat
laii1't fr( I.S.:-No
" ,, -!·- '
. 2.lis'cs n1:ebtuary'_5; . t
owners; _t~.
Witn_fSS(;i'S c_
solution adye'ited ,to, ·move rants
1.,1s Issued. ,VRB i'nte'rposed' !:! son,thaf
ch unnarned 1'e DO) ha{ _y~t
t9 resolve th eratio.n it
irag or PiR1t led 'in,I.S. No. '.,2000-1576 . .' ..,. ' -
irJ,- arf irii;iust . _, .- .f

r ·.oper,1tion, t ' Eventually, t he DOJ denied VR ideration,

r unnamed so proinPting private resp9ndents e quashat
licatin_
g eqL1ip'; of t fJe seai-qh warrants. In. its s n, private ·
,, .:-
... . .
3 56 ESSENT IALS OF I NTELLECTUAL PROPERTY LAW l CHAPTER VI
SEARCH WARRANTS AND I NTELLECTUAL PROPERTY RfGHTS
357

. .
' .
e as vid rs and documents. The minutes · · · · ·
. . - " Other it.ems/ii1achioes
not be identified as- th
· ndeni:
other 1tems/ma.5hipes
o. d t . ..
ua

5: No.
er any f
nts , a mere s
latter
1987. , 2002, indi
anuary ed a "Motl.on 1i ·
only Se eized Properti .
justify issuanc
ged that the ag>p iq:mt 9 nd t;i
ers filed w, requ personal knowle'dgeto j Y,?ti
t as I.S. N_ rrant; that-the warrant
ndents wl ' seized· and tha
172 and 2 ·s '.m oti6n t0 '.
' . ' ,. .
Altache,d
and rec
.d deli

i
5 a?sorted CDs
anizers and ·SOl'n
i
358 ESSENTTALS OF INT ELLECTUAL PROPERTY LAW n-11\PTER VY 359
SEAR<H WARRAI\Jl''> Af.lfl l ~rn:LLECTUAL PROPERTY RIGHTS

nalyzing the report e incidents rel Rulfng': YES

.. it sho1~,s~ thi3~ , ·
1. Pe.rsonal knowledge of the ·~r:i · · ; • · · , his .~vit ness.e s
· as li:fcklng. A core requipite befo t shall validly
sueJs th~ e)~istence of ·a prob •"t he
. tence of SU.ch facts and c· ' lead
cisonaoly .discreet and p · -;,an
. se has been com1'nitted t''ih
ectioh with t he offense ..a . c ed.''
•.' ' 0 t ' '
· hen the raw speaks of o acts,
or informatlon:personall nb,;rnct the
~s:;;es he ·may present.· . f p~i:sonal ·
wledge by the applicant o facts upon
&11 the lssua-ri ce of a sear stiffed, the
rran t is qeerned not base and is a
IHty, its issuance _b eing, ih . a[bitrary,
held by us. in <:;olumbia Pictu ppeals'.
timony based on What is supp(ii itness;
·ng patent_liearsay and,- as rule, 1. en 1ary we\ght
ativevah..i~ , Whether, object~' t, wot11d, alone,
e under
,
the .t·aw
~ ,-
o·n t ")'''
ause.
d not
nt

-~ ,. , ' , '

e the to the Lagu

o ~· We · erified' fsom
360 ESSEN n ALS OF INTELLECTUAL PROPERTY LAW CHAPTER Vl
36 1
SEARCH WAR RANTS ANO INTELLECTUAL PROPERTY RI GHTS

Chung, James Uy . .. under the name and style Media Group

were ,the ones replicating the infringing CDs. they saw, purchased or received were, In· fact, pirated or
infringing on petitioners' copyrights. It is not enough that
XXX XX 'X X XX
the applicant and his witness~s testify t hat they saw ~tacks,
36. Question: How do you know that all of these VCDs of several allegedly infringing, pirated and unauthorized
and CDs you purchased are lnde'ed infringing? ' oiscs in the subject facility. The more decisive cqnsideratio,n
Answer;: I have with me the VRJ3 certification that th~ VCOs determinative of whether or not a p robabfe cause obtains
are unauthorized copies. I also have with me the Complaint- .• to justify the .issuance of a s,earch, y.,arrant is t hat th~y had
Affidavit of. Sony Music and IFPI that certified tt,at these are personal knowledge that the discs were actually infringing,
infringing copies, as well as the title ltst of Sony Music wherein pirated or unauthorized copies.
some of the CDs purchased are indicated. 3. Misrepresentation on the part of the applicant and his wit-
B. Deposition of Baltazar nesses had been established in this case. lt cannot be over-
emphasized that not one of the applicant nor t he witnesses
18. Question: What did you see in that address? testified seeing the pirated discs being manufactur:ed at SL~'s
Answer: We saw t hat they had in stoc;k several infringing, premises. What they stated instead was t hat they were given
pirated and unauthorized CDs. They also had Videograms copies of " Kenny Rogers Videoke," ''Engelbert Humperdinck
without VRB labels, aside from artworks and labels. John Doe Videoke" and "Andrew E. Wholesome CD" by two anonymous
gave us a ''Wholesome" CD while Jane Doe gave us ·"Kenny sources, while yet another informant told lhem that the discs
Rogers Videoke" and "Engelbert Humperdinck Videoke" were manufactured at sald premises.
which the informant told us were being ·reproduced in that Initial hearsay information or tips from con fiden tial inforrnl;lnts
facility. The informant further showed us the rooms where could very well Sl:!rve as basis for the issuance of a search
t he replica ting and/or stamping mc;1chine was located..
warrant, if followed up personally by t he recipient and
19, Question : How did you determine that the CDs you validated.
purchased are counterfeit,' pirat ed or unauthorized?
Answer: The Att orney~in-fact of Sony f"ll.lsic and IFPI certified
in his Compiaint-Affidavit that they are unauthorized copies. 49.4 Determining Probable Cause
I also have wit h m e a listing of Sony Music titles and some of
t he CDs I putchased cire in t hat list . ·· ' Under our laws, only judges have the power to issue search warrants.
This is based on the Constitutional provision 9 that states:
c:; Deposition of Pedrarvez
. 27, ,Question: What proof do you have they are producing "The right of the people to be secure in their persons,
·iMringihg materlals? •' ·· ·· · houses, papers, and effects against unreasonable searches
and seizures of whatever nat ure and for any purpose shall
Answer: We,were given some samples by John. Doe clfl,d Jane be inviolable, and no search warrant or warrant of arrest
Doe. These are Kenny Rogers Videoke, Engelbert Humperdinck shall issue except upon probable cause to be determined
\l,ideols;e, and Andrew E. Wholesome ~D.. The i~formfnt _t?id personally by the judge after examination under oath
us thatthe said samples were being reproducedrn the·facrlity. · or affirmation of the complainant and the witnesses he
· 28.. Question: How do you know that all . of these. VCOs may produce, and particularly describing the place to be
you purchased or got are indeed unauthorized? searched and t he persons or things to be seized."
Answer: The VRB has certified that they a re unauthorized I t is incum bent upon the judge therefore to ascertain the
copies. existence of probable cause before he may issue a search warrant .
Agent Lavin and his witnesses, j udging from their above The constitutional provision explicitly mandates that the j udge should
q uoted answers, had no personal knowledge that t he discs
9
1987 Conslitulion oflhe Philippines, An. Ill, Sec. 2.
 362 ESSENT IALS OF INT ELLECTUAL PROPERTY LAW
CHAPTER VJ 363
SEARCH WARRANTS AND I NTELLECTUAL PROPERTY RI GHTS

p ersonally determine probable _c ause and this is,, don_e through a

process called "searching questions and answers. This is seen in
Sections 4 and 5 of Rule 126 that state : bf Finance; applied for a search w9 ~rant with thi::: ReQional
Trial Co()Jt (RT<=) of Angeles City, Pamp:,m · a Br-anch 56
; • ·n " rk! ondent hrisfo h . · · · .,
"Sec. 4. Requisites for Issuing Search Warrant. - A
sear ch wa rrant shall not issue except upon probable cause
in connection with one specific offense to be determined
personally by the j udge after examination under oat h
or affirmation of t he complainant and the witnesses he
may produce, and particularly describing the place to ~ h V'/fa
be searched and the things t o be seized which may be follovvs:
anywher e in t he Philippines. '
CE OPFICE
" Sec. 5. Examination of Complainant; Record. -
The judge must, befor e issuing the warrant, per sonally gs:
examine in the form of sear ching questions and answers, in
writing and under oath, the complainant and the witnesses e.aring .to t i .
und~rsi ne , after examtn/ng un.der oath 1
he may produce on facts per sonally known to them and
attach to the record t heir sworn statements, toget her with mg and protiing questic;ms, the i:lr/P'lia .
the affidavits submitted." ,N! c;r:O; 'Intelfig¢nce · 0perative, · Ec;or:fo
e Invest igation Bureau, . . Department
·of F;'inanc~, and his • witnesses Max ~avalera ar.i,d
49.S Searching Questions and Answ ers
Dav•id .Lee Sealey that · there are good and sufficient
Section 5 of Rule 126 quoted above requires no less than the judge's reasons to belie:ve that ,Christopher Choi of N6 ; 2s~
personal examination under oath the complainant and w itnesses he 13 Columbia Street, Carm~nvill~ ,Subp ., €\rig~les ·Oty'·
may produce before a warrant may be issued. The requirement is · · his ·possession, control a.11d, ?u~fo~.Y, [f]J;!an
that the examination must be in the form of searching questions and · ks of fake Marlbow ~Red Cigarettes,- ,as w
answers w hich requires that the examination must be probing and oafcl cases of fake Ma~lb ' ' ...
exhaustive, not merely routinary, general, peripheral , perfunctory or rdboa; d ·case ·contains
pro forma .10 orq and ,,ead-\'

10
Peop/e v. Chrisiopher Choi. G.R. No. 152950, August 3, 2006 quoting People v. Delos
Reyes. G.R. No. 140657, October 25, 2004.
364 ESSENT IALS OF INTELLECTUAL PROPERTY LAW CHAPTER VT
365
SEARCH WARRANT S AND I NTELLECTUAL PROPERTY RIGHTS

The search was ·conducted on the same date. . Q: Do you have any knowledge of this person named
Christopher Choi?
On May 12, 1999, respondent filed a "motion to quash search
warrant" and a "supplemental motion to quash" on June 22, A: None, your Honor.
1999. Both were denied by Judge Gatbalite in an order. dat~.d .There is an . affidavit here marked as exhibit
November 29, 1999. Reconsideration was likewise denied. executed by one David Lee Sealey, do you · know
• C ' ' •,, ' <f

On June 19, 2000, respondent filed a petition for certiorari this David Lee Sealey,?
an9 prohibition before the CA. He alleged that Judge Gatbalite A: Yes, your Honor, I am the one.
commi'tted grave abuse of' discretion in refusing to quash
the search warrant, arguing that probable cause was not Q: Whose signature is this appearing on t he printed
· sufficiently established as the examination conqucted was not name David Lee Sealey?
probing and exhaustive and the warrant did not particularly A: This is my signature, your Honor.
dese;ribe the place to be searched. Respondent , alsq prayed
that Atty. Bennie Nicdao be prohiblted from using as evidence Q: Do you affirm and :Confirm other contents of this
the -artie::les seized by virtu~ of t he search warrant. This was affidavit?
granted by the CA in a decision dated April 10, 2002. A: Yes, your Honor.
According tci the · CA, In determihing whether there was Cour:!:_: That's all.
probable cause to believe that the cigarettes purchased by
Nieto were fake and in violation of RA 8293, Judge Gatbal\te In addition, the CA ruled t hatJudge Gatbalite committed grave
failed to ask searching and probing questions of witness abuse of discretion when she merely relied on t he conclusion
David Lee Sealey. :fhe examinati0n of Seaie:y went this way; of Sealey that the cigarettes he received from Nieto were
fak~. She should have at least required Sealey to present the
. Court: alleged fake Marlboro cigarettes and the genuine ones for
There was testimony here given by Mr. Mario Nieto • comparison, instead of relying on his testimony alone. The
'. and Max Cavalera,, that fake Marlboro cigarettes CA reasoned that this was an absolute requirement under the
bought by them from Michael Chua, Christopher Supreme Court ruling in 20th Century Fox Film Corpcm1t:lorJ
. Cho\ .and Johnny Chang were turned over t o you for v. Court of Appeals.
examination, is t hat correct? Hence, this petition.
Yes, ·your Honor:.
Issoei
After the. same had been turned over to you, what
· did Wot.l ~o '-'lit h tae said merchandise, if you dl~ Wh~ther the . j udge complied with t he requirement to
anything? · " personally examine the ~appliGant and his witnesses through
searching questions and answers.
A: I examined , the sampte of cigarettes and their
, pac~aging bearing _the '>"1<1..rlboro Trade Marks which Ruling: YES
· were suspected to be ptoduc[ed) and rnam.lfac::tured
· by La Suerte or [ with) the permission of Philip 1. Searching questions propounded to the applicant depend
Morris. · . largely to the discretion of the judge. The searching que$tions
propounded to t he applicant and t he · witnesses depend:
Q: .What was the result of your examination? largely on the discretion of the j udge. Although there is no
A: Based on the packaging of the packs, the color of hard-and-fast rule governing how a judge should conduct
· the box and the printing on the front side of the his examination, it is axiomatic that t he examinat ion must
packs and the cigarettes themselves, I concluded be probing and exhaustive, not merely routinary, general,
that they are cpunt~rfeit or unauthorized product[s). peripheral, perfunctory or pro forma. The judge must
 7
366 ESSENTIALS OF INT ELLECTUAL PROPERTY LAW CHAPTER VT 367
SEARCH WARRANTS ANO INTELLECTUAL PROPERTY RfGHTS

not simply rehash the contents of the affidavit but must Q: How did you know him?
make his own Inquir y on the intent and jt,Jstification of the
application. The queslions should not merely ' be repetitious A: When I was conducting a test- buy operation against ·
of the averments stated jn the affidavits or depositions of t he Mr. Michael Chua, Mr. Michael Chua told me that the
applicant and the'witnesses. If the judge fails. to determine . bulk of supply if we nee.d more supply we can get ,
probable cause by personally examining the applicant and his from the ·source, a certain Christopher· Cheli, who
witnesses in t he form of searching questions before issuing a lives in the same village and who is actually the
search warrant, grave abuse of discretion ls committed. supplier for the entire region.

The determination of probable cause does not call for the Q: Where did you see him. This Christopher Choi?
application of rules and standards. of proof that a j udgment A: . I. went to his house., your Honor.
of conviction requires after trial on the merits. As the term
implies, probabl€-" cause is concerned with p,robability, not Q: Where?
absolute or; e)/en moral <.!:!(1:ainty. !fhe standards of j udgment
are t hose of a reasonaBly pruaent man, not t he exacting A: At No. 25- 13 Columbia St., Carmenv_ille Subd .,
Angeles City, Pampanga.
calibrations of a judge after a full-blown trial. No law or rule
states t hat probable caus~ requires a specifi~ kigd of evidence. Q: Up~n arri~ing at .the place what did you do?
No formula or fixed rule for Its determination exists. Probable ,,
cause is determined in t he light of conditions obtaining in a A: Upon arriving at t he place, y our Honor, I introduced
gl1ten situation. The entirety of the questions propounded by myself as the one who was referred by a certain
the court and the answers thereto must be con'sidered by t he Michael Chua who is interest~d in buying the
j udge. Marlboro cigarettes from him and he accommodated
me and showed me the sample that he has and I was
2. There were other testimonies considered.· Iii this Ci;lse, able to procure the samples from him, tf\e samples
aside from the testimony of Sealey, petitioner judge also that like what we did to the others were Inspected
heard t he testimony of applicant Nieto: by certain Mr. David Lee Sealey, the representative
Q: I n connection with Search Warrant 99-17, are you and authority from the Phiiip Morris.
the same Mario Nieto who is the applicant in t his Q: Did you actually buy those samples?
application for search warrant filed today April 27,
1999? .· . ' A: Yes, 'your Honor, I got the samples frorn Mr.
Christopher Choi and I submitted t hem to Mr. David
Yes1 your Honor. Lee Sealey.
Do you · know t his Christopher Chol referred to
herein? · Q: How many Marlboro cigarettes aid you buy?

Yes, your H ondl':'l A: . We bought only on~ ream., Pl 7.o·o per pack.
Why do you know him? Q: Do you know from what particular place the house
of Christopher Choi did he got (sic) t hose samples?
He was introduced to , us by 1Michael Chu·a, your
Honor. A: The volume stocks were found inside the house, tf'.)ey
are almost everywhere in the house of Christophe r
As what? Choi.
As the supplier for the goods.
Q: There is a sketch here attached to your application ,
Subject of the applicatif,m ? can you point it out here?
A: Yes, your Honor, in violation of Section 169 of R.A. A: Yes, your Honor, at t he warehouse, in the storag e
8293. room as shown in the lay out of the house, it i s
368 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER VI
369
SEARCH WARRANTS AND INTELLECTUAL PROPERTY RI GHTS
370 ESSENTIALS OF INTELLECTUAL PROPERTY LAW

warrant. It is true that such master tapes are cit)ject

evidence, with t he merit that in this class of evidence
tlJ~ ascertairiroent of th!'H :ontroyerted fact is made CHAPTER VII
ttw9u9h: dem,onst'ra.t ,i9.ps ihvolvlng 'me. direot ;~E
of
•fpe senses of~e presldtng n,aglstrpte. Su~h aux111ary,
procedure, however, does not rule out t he u~e of RELATED LAWS
testimonial or documentary evidence, depositions,
ag.tWs~lons or~ C>ther clasies of evidence tending to
prove the factum probart'Hum, especially where the This work will be incomplete without any discussion on laws that are
production In court of object evidence would result in rela ted to Intellectua l Property Law. For brevity sake, however, this
delay, inconvenience or expenses out of proportion to part presents only t he salient features of the laws.
its evidentiary, value.
XXX XXX
•Accordingly, to restrict the exercise of discretion 50 OPTICAL M EDIA ACT OF 2003
by a judge by adding a particular requirement (the
50. 1 Purpose
presentation of master tapes, as Intimated by 20th
Century Fox) not p,rovJded norc [mplied in the law for Republic Act No. 9239 entitled in full "An Act Regulating Optical Media,
a finding of probable cause Is beyond the realm of Reorganizing For This Purpose The Videogram Regulatory Board,
judicial competence or statesmanship. lt serves no Providing Penalties Therefor, And For Other PurposesH was signed into
purpose but to stu ltify and constrict the judicious law on February 10,., 2004.
exercise of a co1Jrt's prerng<;1tives and to deni,grate the
j 1Jdldal duty .of'oeterminlng the e)<lstence of pm&able The purpose of t he law is to regulate mastering, manufacture,
cause to a mere ministerial or mechanicc1I function. replication and exportation of optical media in all forms. To achieve
There is, to repeat, no law or rule which requires this purpose, then Videogram Regulatory Board (VRB) created under
that the existence of pr obable cause is or should Presidential Decree No. 1987 was reorganized into the Optical Media
. be determine,g solely b1~ specific kind of evidence. Board (OMB). 1
surely, this co_µld not hi;iv"e been cont~mplated l:iY 1:he
The law also imposes licensing and registration requirements
framers of the Constitution, and we do not believe that
on any person or entity who intend to engage In any of the following
the Court intended the statement in ~0th Century Fox
businesses:
reaardlng m?~ter. tapes as the dictUfT! for all seasons
aad•reasot)~ i:r,, fnfrir:1gem~t cases/' , ·. · . (a) I mportation, exportat ion, acquisition, sale or distribution
of optical media, manufacturing equipment, parts and
It is c.ibtious that 20th Century Fox Film ·corporation. should accessories and manufacturing materials used or intended
not be applied to t he present case since t his involves t he for use in the mastering, manufacture or replication of
offense ·of unfair competition and not copyright infringement. optical media;
Mo~ lmp.ortarlt ly, as prontforiced by tile Court in Columbia ·
Pictures, Inc. , the· j udge's exercise of discretion snould not ·' (b) Possession or operation of manufacturing equipment, parts
be unduly rest ricted by adding a requirement that is not and accessories, or the possession acquisition, sale or use
sanctioned by law. of manufacturing materials for the mastering, manufacture
or replication of optical media; and

'Rep. Act No. 9239, Sec. 4.

371
372 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW CHAPTER VII 373
RELATED LAWS

(c) The mastering, manufacture, replication, importation or optical media intended for commercial profit or pecuniary
exportation of optical m edi a.2 gain without authority or consent of the owner thereof;

The l aw actually was brought about by the obsolescence of two (4) Engage in the mast ering, manufacture, or replication of
things - the magnetic media such as Video Home System (VHS) optical media without affixing or installing in the resulting
replaced by optical media and VRB's mandate, hence the expanded products t he SID6 Code, and/or such other codes prescribed,
power of 0MB. assigned and authorized by the 0MB. The absence of the
codes prescribed, assigned and authorized by the 0MB in
any optical media shall be prima facie evidence t hat said
50. 2 Optical Media, Defined optical media are in violation of the law;
The law defines "Optica l Media" as a storage medium or device in (5) Engage in t he mastering, manufacture, or replication of
which info rmation, Including sounds and/or images, or software code, optical media using, affixing or installing in the resulting
has been stored, either by mastering and/or replication, which may products false SID or other codes. The presence of false or
be accessed and read using a lens scanning mechanism employing a unauthorized codes shall be prima facie evidence that said
high intensity light source such as a laser or any such other means as optical media are in violation of the law; and
may be developed in the future.3
(6) Engage in the mastering, manufacture, or replication of
A simpler d efinition of the term is t hat it is a storage media that optical media using, affixing or installing in the resulting
hold content in digital form and that are written and read by a laser; products false SID or other codes that have been assigned
these media include all t he various CD and DVD variations, as well as by the 0MB to another person, or, having been assigned
optical j ukeboxes and autochangers. Optical media have a number of and authorized said codes by the 0MB, allow or authorize
advantages over magnet ic media such as the floppy disk.• another person, establishment or entity to use, affix or
install sucJ:1 codes in the lat ter's products.
50.3 Pen a l Provisions The next level 'of penalty imposed by law is imprisonment of
at least one year but not more than three years and a fine not less
The law provides three-tiered penal sanctions according to the act or than One Hundred thousand pesos (P100,000.00}, but not exceeding
omission sought to be punlshed. 5 Five Hundred thousand pesos (PS00,000.00), at the discretion of t he
T he stiffest penalty imposed is imprisonment of at least three court, for the following offenses:
years but not m ore than six years, and a fine of not less than Five (1) Engaging in the importation, exportation, sale or distri-
hundred thousand pesos ( PS00,000.00) but not exceeding One Million bution of, or possess or acquire in commercial quantit ies
five hundred thousand pesos (Pl ,500,000.00), at the discretion of manufacturing materials used or intended for use in the
the Court, for those who shall: m astering, manufacture or replication of optical media
without the necessary licenses from t he 0MB;
( 1) Engage in the importation, exportation, acquisit ion, sale
or distribution of, or possess or operate manufacturing (2) Knowingly performing or rendering the service of
equipment, parts and accessories without the necessary mastering, manufact ure or replication of optical media,
licenses from the 0MB; · after having been licensed by the 0MB, to any person, in
respect of any intellectual property, who does not have the
(2) Engage in the mastering, manufacture, replication,
consent by the owner of the intellectual property or his
Importation or exportation of optical media wit hout t he
representatives or assigns;
necessary license from the 0M B;
For this purpose, any person, establishment or
( 3) By himself, or through another, cause the mastering,
entity that is licensed by the 0MB to engage in the above
manufacture or replication of any Intellectual property in mentioned activit ies shall be considered to have acted in
good faith in respect of any transaction entered into by
2
Rep. Act No. 9239, Sec. 13.
3
Rep. A.ct No. 9239, Sec. 3(i).
4 6 Sourcc Identification Code or S ID Code - a syslem of codes to identify ·the source of
Http://scarchstorage.lechtargetcom/sOefmition/0,,sid5_gci509556,00.html
so ..... ,&,., N n o ,'\Q <:pr 10 all optical media mastered, manufactured or replicated by any cstablishmcal or entity. (Sec. 3[1])
 374 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER VII 375
RELAT ED LAWS

him in respect to the preceding paragraph, if he notifies 51.2 Acts Pe n alized

the 0MB of such transaction within five working days from
receipt of the order, f urnishing to the 0MB all material The law makes it unlawful for any person, at a time when copyright
information thereof ; subsist s in a cinematographic film or other audiovisual work or it s
soundtrack and without the authorization of the copyright own er or
{3) Refusing to submit t o inspection by the 0MB, or surrender
for preventive custody any optical media, equipment exclusive licensee thereof, to:
manufacturing materials, including parts, accessories and (a) use or attempt to use an audiovisual recording device
paraphernalia found d u ring inspection operation s to be in to transmit or make a copy of any performance i n an
violation of the provisions of the law; exhi bit ion facility of such cinema tographic fi lm or other
For this purpose, violators who will employ armed audiovisual work or its soundtrack, or any part thereof;
resistance against agents of the 0MB shall be penalized (b) have in his/her possession, an audiovisu al recording device
under other applicab le laws in addition to those provided in an exhibition facility, with t he intent of using or attempts
in the law.
to use the audiovisual recording device t o transmit or
Finally, impri sonment of at feast 30 days but not more than m ake a copy of any performance in the exhibition facility
90 days or a fine of not less t han Twenty- five thousand pesos of such cinematographic film or other audiovisual work or
( P25,00~.00)_ but not exceeding Fifty thousand pesos {PS0,000.00) its soundt rack, or any part thereof ; or
at t he d1scret 1on of the _court shall be imposed on any per son:
( c) aid, abet or connive in the commission of the acts prohibited
(1) Knowingly possess item s of the same cont ent or tit le under t his section.'
produced in violation of this Act, and used for t he purpos~
with t he intent to profit; The law provides tha t it shall not be a d efense that the
transmission or makin~ of the copy of the cinematographic film or
(2) Engaging in the sale, r ent al, distribution, importat ion, oth er audiovisual work or its soundtrack, or any part t hereof, was for
exportation of, or any other com mercial activity involving private or dom estic pur poses or in connection with a fair use deal.0
optical m edia t hat are in v iolation of t he law.
. Th~ offenses p rovided by t he law is wit hout prejudice to t he
application of appropriate penalties or sanct ions provided under
Section 216 and such other appropriat e sections of the Intellectual
Property Code or Repu blic Act No. 8792 also known as the Electronic 52 INVENTORS AND INVENTION INCENTIVES Acr
Com merce Act , the Revised Penal Code or other ap plicable laws. .
52.1 Purpose
Much has been said about the lack of State su p port to Fi lipino
5 i. ANTI-CAMCORDING AcT OF 2010 Inventors. Congress t hus attempted t o ad dress this by enacting
Re public Act No. 7459 entitl ed "An Act Providing Incentives to Fi lipino
s1:1 Purpoi e I nventors and Expanding t h e Functions of the Technology Applicat ion
and Prom ot ion Inst it ut e, Appropr iating Funds Th erefore, and for
Republic Act No. 10088 entitled in full as "An Act To Prohibit And Other Purposes."9
Penalize T he Unauthorized Use, Possession And/Or Control Of The law declared as n ational policy to give priorit y to invent ion
A~diovisuaf Re~ording Devices For The Unauthorized Recording Of and its utllizat ion on the country's productive systems and national
Cinematographic Films And Other Audiovisual Wor ks And/Or Their life, and to this end provide incentives to investors and protect their
Sound t rack s I n An Exhibit ion Facility, Providin g Penalties Therefor exclusive rig ht to their invention, particular ly when the invention is
And For Ot her Pu rposes" was approved on May 13, 2010.
T he p ur pose of the law is to p r event certain acts that constitute
7
as u nauth orized possession, use and/or control of audiovisual Rep. Act No. I0088, Sec. 3.
recording d evices by penalizing t h e same. "Rep. Act No. I0088, Sec, 6.
9
Approved on April 28, 1992.
376 ESSENTIALS OF INT ELLECTUAL PROPERTY LAW CHAPTER Vil 377
RELATED LAWS

beneficial to the people and contributes to national development and 5 2.5 Tax Incentives
progress. ,o
Inventors, as certified by the Filipino Inventors Society and duly
confirmed by t he Screening Committee, shall be exempt from
52.2 Invention, Defin ed
payment of license fees, permit fees and other business taxes in the
development of their particular Inventions. This Is an exception to t he
A ny patented machine, product, process including implements
taxing power of the local government units. The certification shall
?r tool~ and other related gadgets of invention, utility model and
state t hat the manufacture of the invention is made on a commercial
industrial design patents."
scale.
52.3 Inventor, Defined Inventors shall exempt from paying any fees Involved In their
application for r egistration of their inventions. "
Refers to the patentee/s, heir/s, assignment/s, of an Invention letters
patent, Utility Model letters or Industrial Design letters patent.'2
52.6 Tax Ex emption
52.4 Cash Reward for Inve ntions
To promote, encourage, develop and accelerate commercialization of
Pr esidential awards for inventions consisting of Cash Rewards shall technologies developed by local resear chers or adapted locally from
be granted to patented inventions in the Philippines to be chosen foreign sources induding inventions, any income derived from these
by a scree~ing committee wit h members consisting of technical technologies shall be exempted from all kinds of taxes during the
r~l?r~sentatrves from the Department of Science and Technology, the first ten years from the date of the first sale, subject to the rules and
F1lrprno Inventors Society, and the Department of Environment and regulations of the Department of Finance: Provided, That this tax
Natural Resources. exemption pr ivilege pertaining to invention shall be extended t o the
legal heir or assignee uE>on the death of the inventor.
Outstanding Investors shall be divided into four categories with
the corresponding cash rewards as follows: The technologies, their manufacture or sale, shall also be
exempt from payment of license, permit fees, customs duties and
1) Invent ions. (i) First Prize, One hundred thousand pesos char ges on imports. "
(Pl00,000 .00): (ii) Second prize, Fifty thousand pesos
(PS0,000 .00); and (iii) Third prize, Twenty thousand pesos
(P20,000.00); 52.7 Assista nce Fund
2) Utility Models. (i) First Prize, Fifty thousand pesos The law established the Invention Development Assistance Fund
(PS0,000.00); (ii) Second prize, Twenty thousand pesos from t he operations of the Technology Application and Promotion
( P20,000.00); and (iii) Third prize, Ten thousand pesos Institute in the amount of at least twelve percent ( 12%) of the annual
(Pl0,000 .00); operations fund of the Institute and from donations, bequests, and
3) Industrial Design. (!) First Prize, Fifty thousand pesos other sour ces, public, private or domestic or foreign, for assisting
(PS0,000.00); (ii) Second Prize, Twenty thousand pesos potential or actual inventors in the initial experiments and prototype
{P20,000.00); and (iii) Third prize, Ten thousand pesos development and other inventor-development related activities
(Pl0,000.00); of invention or innovation. The Fund shall be administered by the
I nstit ute and in the performance of the advisory boar d of inventors
4) Creative Resear ch. (i) First prize, Twenty thousand pesos from the public and private sector. All donations to the Assistance
(P20,000 .00); (ii) Second Prize, Ten thousand pesos Fund shall be tax exempt or tax deductible. 16
(Pl0,000.00 ); and ( iii) Third prize, Five thousand pesos
(PS,000.00). 13

'°Rep. Act No. 7459, Sec. 2.

14
11
Rep. Act No. 7459. Sec. 3(a). Rcp. Act No. 7459, Sec. 5.
2 15 Rep. Act No. 7459, Sec. 6.
' Rep. Act No. 7459, Sec. 3(b).
0
Rep. Act No. 7459, Sec. 4. ' 6Rep. Act No. 7459, Se<:. 7.
 378 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER VII 379
RELATED LAWS

52.8 Loan Assistance in, or wantonly destroy the same, whether filled or not, or to use the
same for drinking vessels or glasses or for any other purpose t han
Loan assist ance for the commercial production of an invention, that registered by t he manufacturer, bottler or seller. Any violation of
either locally or for export and duly certified by the Filipino Inventors this section shall be punished by a fine or not more than One Hundred
Society and t he Screening Committee created, shall be extended by pesos (Pl00.00) or imprisonment of not more than 30 days or bot h. 20
government banks, provided, that said invention meets the criteria
set by law. The use by any person other than the r egistered manufacturer,
bottler, or seller, without written permission of the latter, of any
No limit to t he amount of loan applied for shall be granted to the such bottle, cask, barrel, keg, box or other similar container, or the
inventor who can provide fifteen per centum ( 15%) equity of the loan possession t hereof by any junk dealer or dealer in casks, barr els,
applied for, provided, that acceptable collaterals can be presented to kegs, boxes, or other similar containers, the same being duly marked
fully secure his loan . or stamped and registered as herein provided, shall be prima facie
However, when t here is existing foreign irrevocable letter of evidence that such use, or possession is unlawful. 11
credit issued in favor of the inventor or the duly registered company
producing his invention for export, all government banks, after 53.2 Sold Containers
verification of the commercial production and availability of such
products covered by the letter of credit, shall grant up to eighty No action shall be brought under law against any person to whom
per centum (80%) of the peso value of the foreign letter of credit: the registered manufacturer, bottler, or seller, has transferred by way
Provided, however, That the inventor of the manufacturing company of sale, any of the containers herein re ferred to, but the sale of the
assigns the letter of credit to the bank where the loan is arranged beverage contained in the said containers shall not include the sale of
and whatever goods that the inventor or his company will produce, the containers unless specifically so provided.
or warehouse receipts, if any, to show evidence that the goods have
been partia lly produced." 53.3 Use for Native,~roducts
,
The government is also mandated by law to provide assistance The provision of the law' shall not be interpreted as prohibiting the
to inventors in order to facilitate the granting of loans or financial use of bottles as containers for "sisi, fl "bagoong, fl "pa tis," and similar
assistance by any government bank.'" native prod ucts.

53 ACT TO REGULATE MARKED CONTAINERS 54 ACT PENALIZING FRAUDULENT ADVERTISING

53.1 Acts penalized 54.1 Acts Penalized

Act No. 3740 entitled in full, "An Act to Penallze Fraudulent Advertising,
Republic Act No. 623, ' 9 as amended, is entitled, "An Act to Regulate
Mislabeling or Misbranding of Any Product, Stock, Bond, Etc." declared
the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs,
Barrels, and other Similar Containers." as unlawf ul for any person, firm or corporation, either as principal or
agent, to display, sell, barter, or exchange, or to offer to expose for
It declared as unlawful for any p erson, without the written display, sale, barter, or exchange in the Philippines; or to possess
consent of the manufacturer, bottler or seller who has successfully with intent to sell; or to cause to be sent, carried, or brought for
registered the marks of ownership in accordance with law, to fill such display, sale, barter, or exchange from any foreign country into the
bottles, boxes, kegs, barrels, or other similar containers so marked or Philippines, or from the Philippines into any foreign countr y, any
stamped, for the purpose of sale, or to sell, dispose of, buy, or traffic article which is falsely packed, labeled, marked, or branded, or is
packed, labeled, marked or branded in such a way as to misrepresent
17
Rep. Acl No. 7459, Sec. I 0.
18
Rep. Act No. 7459, Sec. 11. '°Rep. Act No. 623, Sec. 2.
19 Approvedon JuDe 5, 195 1. 21 Rep. Act No. 623, Sec. 3.
380 ESSENTIALS OF INTELLECTUAL PROPERTY LAW CHAPTER Vil 381
RELATED LAWS

the character amount value, contents, properties, or condition of the through the mails in the Philippines of standard books,
article contai~ed or of the materials of which the article is composed ; magazines or periodicals, published in the United States
or any article which is accompanied by advertising matter ~hlch or foreign countries, but all t he provisions of t his Act shall
misrepresents the character, amount, value, contents, properties ~r apply to all classes of publications issued by persons,
condition of the article advertised, or of the materials of which 1t firms or corporations, eit her as principal or agent, for the
is composed whether or not the article or the container thereof is advertisement or the promotion of the sale of their own
mlslabeled, m isrepresented, or misbranded. merchandise, stocks, bonds, shares, etc.
The possession of any of t he article herein mentioned in
quantities in excess of t he reasonable needs of the possessor shall 54.3 Penalty Provided
constitute prima facie evidence of the possession with intent to sell. 22
Any person who shall violate any provisions of the law shall, upon
conviction, be penalized by a fine of not less than Two Hundred pesos
54.2 Other Acts Punished (Pl00.00) and not more than Five thousand pesos (PS,000.00) or
by imprisonment for not less than one month nor In excess of six
Other provisions of the law are as follows: months, or both such fine and imprisonment in the discretion of the
"Sec. 2. It shall be unlawful for any person, firm, or Court. 23
corporation, either as principal or agent, to i~se_rt or ~ause
to be inserted in any newspaper, book or penod1cal printed
in the Philippines any advertising which misrepresents
the character, value, properties or, condition of the article
advertised or of the materials of which it is composed.
"Sec. 3. It shall be unlawful for any person, firm or
corporation, either as principal or agent, in any han~bill,
billboard, sign, pamphlet, circular, projected lantern ~lldes,
or any other form of advertising whatsoever pnnted,
displayed, or circulated in the Philippines to misrepresent
the character, value, properties or condition of any article
offered or exposed for sale, barter, or exchange or of t he
m aterials of which said article is composed.
"Sec. 4 . It shall be unlawful for any person, firm or
corporation, either as principal or agent, in any prosp~ctus,
handbill, billboard, sign, pamphlet, circular, proJected
lantern slides, or any ot her form of advertising whatsoever
printed, displayed, or circulated in the Philippines, to
misrepresent the character or value of any stocks, b?nds,
or shares of any firm or corporation or of the properties or
prospectus of any firm or corporation .
"Sec. 5. It will be unlawful for any person, or
corporation, whether as principal or agent, to use t he malls
of the Philippines for the circulation of any advertising
matter prohibited by this Act; but nothing In this Act
sh all be interpreted as prohibiting the sale or delivery

22Act No. 3740, S ec. I. 23Act No. 3740, Sec. 6.

 INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 383
REPUBLIC ACT NO. 8293

a product, the application of a process, or 5.2. The Office shall have custody of
rendering of a service including manage- all records, books, drawings, specifications,
ment contracts; and the transfer, assign- documents, and otl1er papers and things
ment or licensing of all rorms of intellect ual relating to intellectual property rights
INTELLECTUAL PROPERTY CODE property r ights, including licensing of com- applicat ions flied with the Office. (n)
puter software except computer software
OF THE PHILIPPINES developed for mass market. Sec. 6. The Organizational Structure
of the IPO. - 6.1. The Office shall be
4 .3. The term "Office" refers to the headed by a Director General who shall
(REPUBLIC AcT No. 8293] Intellectual Property Office created t>y this be assisted by two ( 2) Deputies Director
Act. General.
AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE ANO 4.4. The term "lPO Gaz.ette" refers to 6,2. The Office shall be divided into
ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, the gazette published by the Office under siK (6) Bureaus, each of which shall be
PROVIDING FOR ITS POWERS AND FUNCTIONS, AND FOR OTHER this Act. (n) headed by a Director and assist ed by an
PURPOSES. Assistant Director. These Bureaus are:
Sec. S, Functions of the Intellectual
Property Office (!PO). - [a] The Bureau of Potents;

PART I 5.1. To administer and Implement [b] The Bureau of Trademarks;

national or who is domiciled or has a real
t he State po licies declared In this Act,
and effective Industrial establishm ent In a [cl The Bureau of Legal Affairs;
THE INTELLECTUAL PROPERTY there is hereby created the Intellectual
country which is a party to any convention,
OFFICE Property Office (!PO) which shall have the
treaty o r agreement relating to Intellectual [d] The Documentation, Infor-
following functions:
property rights or the repression of unfair mation and Technology Transfer
Section l. Title. - This Act shall be competition, to which the Philippines is [a] Examine appllcatlons for Bureau;
known as the "Intellectual Property Code also a party, or extends reciprocal rights grant of letters patent for inventions
of the Phi/lppines. N to nationals of the Philippines by law, [e] The Management Informa-
and register utility models and indus- tion System and EDP Bureau; and
shall be entitled to benefits to the extent trial designs;
Sec. 2. Declaration of State Polley. necessary to give effect to any provision
- The State recognizes that an effective [f] The Administrative, Fi nan-
of such convention, treaty or reciprocal [t>] Examine apptlcations for cial and Personnel Services Bureau.
intellectual and Industrial property law, In addition to the rights to which any the registration of marks, geographic
system is, vital to the development of owner of an Intellectual property right is 6.3. The Director General, Deputies
Indication, Integrated circuits;
domestic and creative activity, facilitates othe:YJise entitled by this Act. (n) Director General, Directors and Assistant
transfer of technology, attracts foreign [c] Register technology trans- Di rectors shall be appointed by the
investments, and ensures market access Sec. 4 . Definitions. - fer arrangements and settle d isputes President, and the other officers an~
for our products. It, shall protect and involving technology transfer pay- employees of the Office by the Secretary
secure t he exclusive rights of scientists, 4.1. The tenm " Intellectual property
rights" consists of: ments covered by the provisions of of Trade and Industry, conformably wit h
inventors, artists and other gifted citizens Part II, Chapter IX on Voluntary Li- and under the Civil Service Law. (n)
t o t heir intellectual property and creations, censing and develop and implement
[a) -Copyright and Related
particularly when beneficial to t he people, Rights; strategies to promote and facilitate Sec. 7. The Director General and
for such periods as provided in this Act. t echnology transfer; Deputies Dlr~ar General. -
[b] Trademarks and Service
The use of Intellectual property bears Marks; · [d] Promote the use of patent 7 . 1. Functions. The Director
a social function. To this end, the State Information as a tool for technology General shall exercise the following powers
shall promote the d iffusion of knowledge [c] Geographic Indications; development; and funct ions:
and information for t he promotion of
national development and progress and [ d] Industrial Designs; [ e) Publish regularly in its own [a] Manage and direct all
the common good. ' publication the patents, marks, utility functions and activities of the Office,
[ e] Patents; including the promulgation of rules
It Is also the policy of the State to models and Industrial designs, Issued
[fl · Layout-Designs (Topogra- and approved, and the technology and regulations to implement the
streamline administrative procedures objectives, pol icies, plans, programs
phies) of Integrated Circuits; and t ransfer arrangements registered;
of registering patents, trademarks and and projects of the Office: Provided,
copyright, to liberalize the registration on [g] Protection of Undisclosed [f] Administratively adjudicate That In the exercise of the authority
the transfer of technology, and to enhance lnfonmation (n) [TRIPS). contested proceedings affecting Intel- to propose policies and standards
the enforcement of intellect ual property lectual property rights; and In relation to the following: (1) the
rights In the Philippines. (n) 4 ,2. The term •technology trans- effective, efficient, and economical
fer arrangements• refers to contracts or [g) Coordinate with other gov- operations of the Office requiring
Sec. 3. Intematlonal Conventions agreements Involving the transfer of sys- ernment agencies and the private
and Reciprocity. - Any person who is a statutory enactment; (2) coordination
tematic knowledge for the manufacture of sector efforts to formulate and imple- with other agencies of government /
ment plans and policies to strengthen in relation to the enforcement of
the protection of Intellectual property intellectual property rights; ( 3) the
382 rights In the country. recognition of attorneys, agents, or
 INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 385
384 ESSENTIALS O F INTELLECTUAL PROPERTY LAW
REPUBLIC ACT NO. 8293

General of the various fields of intellectual of pat ents, ut ility models, and Industrial bond to guarantee compliance of his
other p ersons represent ing applicants designs; and petit ions for co mpulsory undertaking;
or other parties before the Office; property.
licensing of pat ents;
and ( 4 ) the establishment of f ees 7.3. Term of Office. - The Director (iii) The condemnation or
for the filing and processing of an General and the Deputies Director General l0.2. (a) Exercise original jurisdict ion seizure of products which are subject
application for a patent, utility model sha II be appointed by the President for a In administrat ive complaint s for violations of the offense. The goods seized
or industrial design or mark or a term of five (5) years and shall be eligible of laws involving intellectual property hereunder shall be disposed of In
co11ectlve mark, geographic indication for reappointment only once: Provided, rights: Provided, That its jurisdiction is such manner as may be deemed
and other marks of ownership, and That t he first Director General shall have a limited to complaints where t he total appropriate by t he Director of Legal
for all other services performed and first term of seven (7) years. Appointment damages claimed are not less than Two Affairs, such as by sale, donation
materials furnished by the Office, the to any vacancy shall be only for the hundred thousand pesos (P200,000): to distressed loca l governments or
Director General shall be subject to unexpired term of the predecessor. Provided, further, That availment of the to charitable or relief institutions,
the supervision or the Secretary of provisioni:1I remedies may be granted in exportation, recycling Into other
Trade c1nd Industry; 7.4. The Office of the Director accordance with the Rules of Court. The goods, or any combinat ion t hereof,
General. - The Office of the Director Director of Legal Affairs shall have the under such guidelines as he may
[bl Exercise exclusive appel- General shall consist of the Director power to hold and punish for contempt all provide;
late j urisdiction over all decisions ren- General and the Deputies Director General,
dered by the Director of Legal Affairs, those who disregard orders or writs issued (iv) The forfeiture of parapher-
their Immediate staff and such Offices and In the course of t he proceedings. (n )
the Director of Patents, the Director Services that the Director General will set nalia and all real and personal prop-
'r • of Trademarks, and the Director of up to support directly the Office of the (b) After formal investigation, the erties which have been used In the
the Documentation, Information and Director General. {n) comm ission of the offense;
Director for Legal Affairs may Impose one
Technology Transfer Bureau. The de-
Sec. 8 . The Bureau of Patents. - The (1) or more of the following administrative (v) The imposition of admin·
cisions of the Director General in the
Bureau of Patents shall have the following penalties: istrative fines In such amount as
exercise of his appellate jurisdiction
in respect of the decisions of the Di- functions: deemed reasonable by the Director of
(i) The issuance of a cease and
rector of Patents, and the Director of Legal Affairs, which shall In no case
8. 1. Searchand examination of desist order which shall specify the be less thi:ln Five thousand pesos
Trademarks shall be appealable to the i:lcts that the respondent shall cease
patent applications and the grant of {PS,000) nor more than One hundred
Court of Appeals In accordance wit h and desist from and shall require him
patents; fifty thousand pesos (PlS0,000).
the Rules of Court; and t hose In re- to submit a compliance report within In addition, an additional fine of
spect of the decisions of the Director 8.2. Registration of utility models, a reasonable t ime which shall be fixed not more t han One thousand pesos
of Documentation, Inform ation and Industrial designs, and integrated circuits; In the order ; (Pl, 000) shall be Imposed for each
Technology Transfer Burei:lu shall be and day of continuing vio lation;
appealable to the Secretary of Trade (ii) The acceptance of a vol-
8 .3. Conduct studies and researches untary assurance of compliance or (vi) The cancellation of any
and Industry; and
in the field of patents In order to assist the discontinuance as may be Imposed. permit, license, authority, or regist ra-
[c) 'Exerclseorlginaljurisdiction · Director General in formulating policies Such voluntary assurance may in- tion which may have been granted
to resolve disputes relating to the on the administration· and examination of clude one or more of the following: by the Office, or the suspension of
terms of a license involving the patents. (n) the validity t hereof for such period of
(1) An assurance to com-
author's right l:o- pub'llc performance t ime as the Director of Legal Affairs
Sec. 9. The Burei)u of Trademarks. - ply with the provisions of the in-
or other· commilnl~tloif of his work. may deem reasonable which shall not
The Bureau of Trademarks shall have the tellectual property law violated;
The decisions of the Director General exceed one ( 1} year;
in these cases shall be appealable to following functions:
(2) An assurance to re-
the Secretary of Trade and Industry. (vii) The withholding of any per-
9.1. Search and examination of the frain from engagi ng In unlawful
mit, license, authority, or registration
applications for the registration of marks, and unfair acts and practices
7.2... Qualificatlons. - The Director which Is being secured by the respon-
geographic indications and other marks subject of the formal investiga-
General and the Deputies Director General dent from the Office;
of ownership and the issuance of the tion;
must be natural born citizens of the
certificates of registTation; and (viii) The assessment of dam-
Philippines, at least thirty-five (35) years (3) An i:ISsurance to re-
ages;
of age on .the day of their appointment, 9.2. Conduct studies and researches call, replace, repair, or refund
holders of a ,college degree, and of in the field of trademarks in order to assist the money value of defective ( Ix) Censure; and
proven competence, Integrity, probity the Director General in formulating policies goods distributed in commerce;
anil independence: Provided, That the on the administration and examination of and (x) Other analogous penalties
Director - General and at least one (1) trademarks. (n) or sanctions. (Secs. 6, 7, 8, and 9,
Deputy Director General shall be members (4) An assurance to Exec. Order No. 913 [1983Ja)
of the Philippine Bar who have engaged Sec. 10. The Bureau of Legal Affairs. reimburse the complainant t he
In the practice of law for at least ten - The Bureau of Legal Affolrs shall have expenses and costs incurred 10.3. The Director General may by
(10) yec1rs: Provided, further, Tt)at In the the following functions: in prosecuting the case In t he Regulations establish the procedure to
selection of the Director General and the Bureau of Legal Affairs. govern the implementation of t his Sect ion.
Deputies Director General, consideration 10. 1. Hear and decide opposition to (n)
shall be given to such qualifications as
would result, as far cs practicable, In the
the application for registration of mari<s;
cancellation of trademarks; subject to
The Director of Legal .,Affairs may
also require the respondent.to submit Sec. 1 l. The Documentation, Infor - ---
the provisions of Section 64, cancellat ion periodic compliance reports and file a mation and Technology Transfer Bureau.
balanced representation in t he Directorate
 ESSENTIALS OF INTELLECTUAL PROPERTY V,.W INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 387
386
REPUBLIC ACT NO. 8293

systems, contracts with firm s, contracting' system of the financial operations of the is empowered to obtain the assistance of
- T he Documentation, Informat ion and purchase and maintenance of equipment ,
Techn ology Transfer eureau shall have the Office; and technical, scientific or other qualified offi-
design and maint enan_ c e of systems, user cers and employees of other departments,
following functions: consultat ion, and the like; and 13.4. The Human Resource Develop- bureaus, offices, agencies and Instrumen-
t l.1. Support the s":arch and ment Service shall d esign and implement talities of the Government, i ncluding cor-
examination activities of the Office t hroug h 12 _2 . Provide management informa- human resource development plans and porations owned, controlled or operated by
tion support and service to the omce. (n) programs for the personnel of t he Office;
the following activities: t he Government, when deemed necessary
Sec. 13. The Administrative, Financial provide for present and future manpower In the consideration of any matter submit-
(a) Maintain and upkeep clas- needs of the organization ; maintain high
and Human Resource Development Service ted to the Office relative to the enforce-
sificatio n systems whether they be morale and favorable employee attit udes
Bureau. - ment of t he provisions of this Act. (Sec. 3,
national or internat ional sue~ as ~he towa rds the organizat ion through the con- R.A. No. 165a)
International Patent Class1ficat1on
13 .1. The Administrative Service tinuing design and implementation of em-
(I PC) system; ployee development programs. (n) Sec. 16. Seal of Office. - The Office
shall :
( b) Provide advisory services shall have a seal, t he form and design of
(al Provide services relative Sec. 14. Use of Intellectual Property which shall be approved by the Director
for t he determination of search to procurement ilnd allocation of Rlght5 Fees b y the TPO. - General. (Sec. 4, R.A. No. 165a)
patterns; supplies and equipment, transporta-
tion messengeriill work, cashiering , 14 . 1. For a more effective and Sec. 17. Publication of Laws and
{ cl Maintain search files and expeditious implementation of this Act,
pay:nent of sillaries and _other Of- Regulations. - The Director General shall
search rooms and reference libraries; the Director General shall be authorized to
fice's obllgiltions, office maintenance, cause to be printed and make available for
and proper safety and security, an~ other retain, wit hout need of a sepa rate approval distribution, pamphlet copies of this Act,
{ dl Adapt and package indus- utility services; and comply with gov- from any government agency, and subject other pertinent laws, executive orders and
trial property information . ernment regulatory req uirement~ 1n only to t he existing accounting and auditing information circulars relating to matters
t he areas of performance appraisal, rules and regulations, all the fees, fines, within the jurisdiction of the Office. (Sec.
1 1.2 . Establish networks or interme- compensation and benefits, employ- roya lties and other charges, collected by 5, R.A. No. 165a)
diaries or regional representatives ; the Office under this Act and the other
ment records and reports; Sec. 18. The !PO Gazette. - Ail
laws that t he Office will be mandated to
11 _3 _ Educate the public and build (b) Receive all applications administer, for use in its operations, like matters required to b.e published under
aw a re ness on intellectual property through filed wit h the Office and collect fees upgrading of Its f acilities, equipment this Act shall be published i n the Office's
the conduct of seminars and lectures, and outlay, human resource development, and own pu blication to be known as the IPO
t herefor; and Gazette. (n)
other similar activities; the acquisition of the appropriate office
(c) Publish patent applications space, among othe rs, to improve the Sec. 19. Disqualification of Officers
l 1.4 . Establish working relations
and grants, trademark applicatio~s, delivery of its se,-vices to the public. This and Employees of the Office. - All officers
with research and development Institutions
and registrat ion of marks, lndustn ~I amount, which shall be In addition to the and employees of the Office shall not apply
ell a s with local and international
designs, ut ility models, geo_graph1c Office's annual budget, shall be deposited or act as an attorney or patent agent of an
f ite;ectual property professional groups
'•
,, indicat ion, and lay-out designs of and maintained in a separate accou nt or applicatio n for a grant of patent, for t he
and the like; Integrated circuits registrat ions. fund, which may be used or disbursed registration of a utility model, i ndustrial
ll.S. . Perform state-of-the-art search- directly by the Director General. design o r mark nor acquire, except by
13 _2 _ The Patent and Trademark hereditary succession, any patent or utility
es; Administration Services shall perform t he 14.2. After five (5) years from the model, design registration, or mark or
11 6Promote t he use of p atent following functions amon g others: com ing into force of this Act, the Director any right, t it le or interest therei n during
informati~n as an effective t ool to fa~ilitate General shall, subject to t he approval their employment and for one {l) year
(a) Maintain registers of as-
the development of technology m the of the Secretary of Trade and Industry, thereafter. (Sec. 77, R.A. No. 165a)
signments, mergings, licenses, and determ ine if the fees and charges
count ry;
bibliographic on patents and trade- mentioned in Subsect ion 14.1 hereof that
11.7. Provide technical, a_d vis~ry, marks; t he Office shall collect are sufficient to PART II
a nd other services relating to t he licensing meet its budgetary requirements. If so, It
and promotion of technology, and carry (bl collect maintenance fees, THE LAW ON PATENTS
shall retain all t he fees and charges It shall
o ut an efficient and effective program for issue certified copies of documents in collect under t he same conditions indicated
technology transfer; and its custody and perform similar other in said Subsection 14.1 but shall forthwith, Cha pte r I
act ivit ies; and cease to receive any funds from t he annual
ll.B. Register technology t~a nsfer budget of the National Government ; If not, GENERAL PROVISIONS
a r rangements, and settle disputes (cl Hold In custody all the ap-
t he provisions of said Subsection 14.1 shall Sec. 20. Definition of Terms Used In
In volving technology transfer payments. pllcations filed wi th the office, a~d all
patent grants, certificate of registra- continue to apply until su ch time when the Part II, The Law on Patents. - As used in
(n) Director General, subject t o the approval
t ions Issued by the office, and the Part 11, t he following t erms shall have t he
Sec. 12. The Management Informa- of the Secretary of Trade and Industry, following meanings:
like. certifies that the above-stated fees and
tion Services and EDP Burec1u. - The Man-
agement I nformation Services and EDP 13.3. T he Flnancial Service shall charges the Office shall collect are enough 20.1. Burea u means the Bureau of
fonmulate and manage a fi11ancial program to fund Its operations. (n) Patents ; -..
B ureau shall:
to ensure availability and proper ut1Hzat1on Sec. l 5. Special Technical and Sci- 20.2. Director means the Director of
l 2.1. cond uct automation p\~nnlng, of funds; provide for an effective monitoring
~..~.--,, r h and development, testing of entific Assis tance. - The Director General Patents;
 388 ESSENTIALS OF INTELLECTUAL PROPERTY LAW I NTEL LECTUAL PROPERTY CODE OF TH E PHILIPPINES
389
REPUBLIC ACT NO. 8293

20.3. Regulations means t he Rules 22.3. Methods for treat ment of shall not prejudice the applicant o n the Invention separately and Independently
o f Practlce in Patent Cases formulated by the human or animal body by surgery ground of lack of novelty If such disclosure of each other, the right to t he patent
the Director o f Patents and promulgated or t herapy and diagnostic methods was made by: shall belong to the person who filed an
by the Director General; p racticed on ll\e human or animal body. application for such invent ion, or where
This provisloh shall not apply to products (a) The Inventor;
two or more applications are filed for
20.4. Examiner means t he patent and composltld11 for use in any of these
(b) A patent office and the the same Invention, to the applicant who
examiner; methods;
Information was contained ( I) In has t he earliest filing date or, t h e e.-irliest
20.S. Patent applicatfon or applica- another application filed by the priority date. ( 3rd Sentence, Sec. 10, R.A.
22.4. Plant varieties or animal No. 165a.)
tion means an application for a patent for breeds or essentially biological process for Inventor and should not have been
an invention except In Chapters XII and t he production of plants or animals. This disclosed by t he office, or (ii) in
Sec. 30. Inventions Created Pursuant
XIII, where application means an applica- provision shall not apply to microorganisms an application filed without the to a Commission. -
tion for a utility model and an industrial and non-biological and m icrobiological knowledge or consent of the inventor
design, respectively; and processes. by a third party which obtained the 30.1. The person who commissions
Information directly or Indirectly from the work shall own the pate nt, unless
20.6. Priority date means the date Provisions under this subsection t he i nventor; o r otherwise provided In the contract.
of filing of the foreign application for the shall not preclude Congress to consider
same Invention referred to In Section 3 1 of the enactment of a law providing su/ (c) A third party which 30.2. In case the employee made the
this Act. (n) generis protection of plant varieties and obtained the information directly or Invention in the course of his employment
animal breeds and a system of community Indirectly from the Inventor. contract, the pate nt shall belong to :
Chapter II Intellectual rights protection;
25.2 . For the purposes of Subsec- (a) The employee, If the Inven-
22.5. Aesthetic creations; and tion 25.1, ~Inventor* also means any per- tive activity is not a part of his regular
PATENTABILITY
son who, at the filing date of application, duties even If t he employee uses the
22.6. Anything which Is contrary to had the right to the patent. (n) time, facilities and materials of the
Sec. 21. Patentable Inventions. public order or morality. (Sec. 8, R.A. No. employer.
Any techn ical solution of a problem 165a) Sec. 26. Inventive Step. - 26.1. An
in any field of human activity which is invention Involves an Inventive step if, (b) The employer; If the inven-
• ~ . Involves an "lnventjve step and Is Sec. 23. Novelty. - An Invent i on having regard to prior art, It is not obvious tion Is the result of the performance
, ind11stfi" lly applic~le, shall be patentable. shall not be considered new If it forms part to a person skilled In the art at the time of his regularly -assigned d uties, un-
It may be, or may relate to, a product, or of a prior art. (Sec. 9, R.A. No. 165a) of the filing date or prlotlty date of the less there is an agreement, express
process, or an improvement of any of the application clalmlng the Invention. (n) or Implied, t o the contrary. (n)
foregoing. (Sec. 7, R.A. No. 165a) Sec. 24. Prior Art. - Prior art shall
consist of: 26.2. In the case of drugs and Sec. 31. Right of Priori ty. - An
Sec. 22. Non-Patentable Inventions. medicines, there Is no Inventive st ep If the application for patent flied by any person
- The following shall be excluded from 24.1. Everything which has been Invention results from the mere discovery who has previously applied for the same
patent protection: made available to the public anywhere of a new form or new property of a known Invention In another country which by
In the world, before the fili ng date or t he substance which d oes not result In the t reaty, convention, or law affords similar
22.1. Discoveries, scientific theories priority date of the application claiming the enhancement of t he k nown efficacy of privileges to FIiipino citizens, shall be
and mathema6caln'lethoos, and lntie invention; and that substance, or the mere discovery of considered as filed as of the date of filing
case of drug s and tttebltmes, the mere any new property or new use for a known the foreign appllcatlon: Provided, That:
d iscovery of a new form or new property of 24.2. The whole contents of an substance, or the mere use of a known (a) the local application expressly claims
a known subst ance which does not resu lt application for a patent, utility model, or process unless such known process results priority; (b) It Is filed wit hin t welve (12)
In the enhancement of the known efficacy Industrial design registration, published In in a new product that employs at least one months from the date the earliest foreign
of that substance, or the mere discovery of accordance with this Act, filed or effective new reactant. application was filed; and (c) a certified
a ny new property or new use for a known in the Philippines, with a filing or priority copy of the foreign applkatlon together
substance, o r t he mere use of a known date that is eartler t han the filing or priority Sec. 2 7. Jndustrla/ Applicab/1/ty. - with an English translation Is filed wit hin
process unless such known process results date of the application: Provided, That the An Invention t hat can be produced and six (6) months from the date of flllng In t he
In a new product that employs at least one applkatlon which has validly claimed the used In any Industry shall be Industrially Philippines. (Sec. 15, R.A. No. 165a)
( 1) n ew reactant. filing date of an earlier application under applicable. (n)
Section 31 of this Act, shall be prior art ChapterlV
For t he purpose of this clause, salts, with effect as of t he flllng date of such Chapter III
esters, ethers, polymorphs, metabolites, earlier application: Provided, further, That PATENT APPUCATION
p ure form, particle size, Isomers, mixtures the applicant or the Inventor Identified RIGHT TO A PATENT
of isomers, complexes, combinations, and In bot h appllcatlons are not one and the Sec. 32. The Application. -
other derivat ives of a known substance same. (Sec. 9, R.A. No. 165a) Sec. 28 . Right to a Pat ent. - The
sha ll be considered to be the same right t o a patent belongs t o the Inventor, 32.1. The patent application shall be
substance, unless they differ signlflcantly Sec- 25. Non-Prejudidal Disclo- his heirs, or assigns. When two (2) or more In FIiipino or English and shall contain the
In properties with regard to efficacy; sure. - persons have Jointly made an Invention, following:
the right to a patent shall belong to them
22.2. Schemes, rules and m ethods 25.1. The disclosure of Information (a) A request for the grant of a
jolntly. (Sec. 10, R.A. No. 165a) patent;
of performing mental acts, playing games contained In the application during the
or doing business, and programs for twelve (12) months preceding the filing Sec. 29. First to File Rule. - If (b) A description of the Inven-
com puters; date or the priority date of t he application two (2) or more persons have m ade the t ion;
 INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 391
390 ESSENTIALS OF INTELLECTUAL PROPERTY LAW REPUBLIC ACT NO. 8293

by the Office of at least the following a search document established by or on

Sec. 37. Tile Abstract. - The abstract
(c) Drawings necessary for the elements: behalf of the Office citing any documents
shall consist of a concise summary of the that reflect prior art, after the expiration of
understanding of the Invention; disclosure of the invention as contained (a) An express or Implicit eighteen (18) months from the filing date
(d) One or more claims; and in the description, claims and drawings indication that a Philippine patent is or priority date,
in preferably not more than one hundred sought ;
(e) An abstract. fifty (150) words. It must be drafted in a 44.2. After publication of .:, patent
way which allows the clear understanding (b) Information identifying t he application, .:,ny interested party may
32 .2. No patent may be granted unless of the technical problem, the gist of the applicant; and inspect the application documents filed
the application identifies the inventor. If solution of that problem through the
( c ) Description of the invention with the Office.
the applicont is not the inventor, the Office invention, and the principal use or uses of
may require him to submit said authority. and o ne (1) or more claims in FIiipino
the Invention. The abstract shall merely 44.3 . The Director General, subject
or English.
(Sec. 13, R.A. No. 165a) serve for technical in formation. (n) to the approv al of t he Secret.:,ry of Trade
40.2. If any of these elements Is and Industry, may prohibit or restrict
Sec. 33. Appointment of Agent or Sec. 38. Unlry of I nvention. - not subm itted within the period set by the publication of an application, if in his
Representative. - An applicant who Is t he Regulations, the application shall be opinion, to do so would be prejudicial to
not a resident of the Philippines must 38.1. The application shall relate to
one invention only or to a group of inven- considered wit hdrawn. ( n) the national security and Interests of the
appoint and maintain a resident agent Republic of the Philippines. (n)
or representative in the Philippines upon t ions forming a single general Inventive Sec. 41. According a Filing Date.
whom notice or process for judicial or concept. - The Office shall examine whether Sec, 45. Confidentiality Before Publi -
.:,dministrative procedure relating to t he 38. 2. If several independent the patent application satisfies the cation. - A patent application, which has
application fo r patent or the patent may be inventions which do not form a single requirement s for the grant of date of not yet been published, and oil related
served. (Sec. 11, R.A. No. 165a) general inventive concept are claimed .in filing as provided in Section 40 hereof. If documents, sh.:,11not be made available for
one application, the Director may require the date of filing cannot be accorded, the inspection wit hout the consent of the ap-
Sec. 34. The Request. - The request applicant shall be given an opportunity
t hat t he applleotion be restricted to a single plicant. (n)
shall contain a petition for the grant of t he to correct the deficiencies in .:,ccordance
Invention. A later application filed for an
pat ent, the name .:,nd other d at a of the with the Implementing Regulations. If Sec. 4 6 . Rights Conferred by a
invention divided out shall be considered
applicant, t he inventor and the agent and as having been filed on the same day as the the application ·does not contain all the Patent Application After PublicaUon. -
the title or the Invention. (n) first application: Provided, That the later elements indicated in Section 40, the filing The applicant shall have all the rights of
applic.:,tion is filed within four (4) months date should be t hat datl) when all the a patentee under Section 76 against any
Sec. 35. Dlsdosure and Description of elements are received. I f the deficiencies
after t he requirement to divide becomes person who, without his authorization,
the Invention. - are not remedied within the prescribed exercised any of t he rights conferred
final, or within such additional time, not
35.1. Disclosure. - The application exceeding four (4) months, as may be time limit, the appl ication shall be under Section 71 of this Act in relation
shall d isclose the Invention in a manner granted : Provided, further, That each considered withdrawn. (n) to the Invention claimed In the p ublished
sufficient ly dear and complete for it to divisional application shall not go beyond Sec. 42. Formallty Examination. - patent application, as If a patent had been
be carried out by a person skill ed in t he the disclosure In the initial application. granted for t hat invention: Provided, That
art. Where . the application concerns a 42. 1. After the patent application the said person had:
38.3. The fact that a patent has been has been accorded a filing date and the
microbiological process or the product
g r0 nted on an application that di~ not required fees have been paid on time In 46.1. Actual knowledge that the in-
thereof and involves the use of a m icro- comply with the req uirement of unity of
organism· which cannot be sufficiently accordance with the Regulations, t he vention that he was using was the subject
invention shall not be a ground to cancel applicant shall comply with the formal matter of a published application; or
disclosed In the application In su ch a way
the patent. (Sec. 17, R.A. No. 165a) requirements specified by Section 32
as to enab le the lhventlon t o be carried
and the Regulations within the prescribed 46.2 . Received written notice that
out by a person skilled in the art, and Sec. 39. Information Concerning
period, ot herwise the application shall be the Invention that he was using was the
such material is not available to the public, Corresponding Foreign Application for
considered withdrawn. subject matter of a published application
the application s hall be supplemented Patents. - The applicant shall, at the
being Identified in the s.:,id notice by its
by a deposit of such material with an request of t he Director, furnish him with 42.2. The Regula tions shall deter-
the date and number of any application serial number : Provided, That the action
International depository institution. mine the procedure for the re-examination
for " patent flied by him abroad, hereafter may not be filed until after the grant of
and revival of an application as well as the
35.2. Description. - The Regulations referred to as t he "foreign application," appeal to the Director of Patents from any a · patent on the published application and
shall prescribe the contents of the relating to the same or essentially the sa ~e final action by the examiner. (Sec. 16, R.A. within four (4) years from the commission
description and the order of presentation. invention as that claimed in the application No. 165a) of the acts complained of. (n)
(Sec. 14, R.A. No. 165a) filed with the Office and ot her documents
Sec. 43. Class/ficatlon and Search. - Sec. 47. Observation by Third
relating to the foreign application. (n)
Sec. J6. The Claims. - An application t hat has complied with the Parties. - Following the publication of
formal requirement shall be classified and the patent application, any person may
36.1. The application shall contain Chapter V a search conducted to determine the prior present opservatlons In writing concerning
one (1) or more ·claims which shall define art. (n) the pate11tability of .the Invention. Such
the matter for which protection Is sought. PROCEDURE FOR GRANT
OF P ATENT observations shall be communicated to
Each claim shall be clear and concise, and Sec. 44 . Publication of Patent Appli- the applicant who may comment on them .
shall be supported by the description . cation. - The Office shall acknowledge and put such
Sec. 40 . Filing Date Requirements. -
36.2 . The Regulations sha ll prescribe 44 . 1. The patent application shall be observations and comment in the file of
40.1. The fillng date of a patent the application to which It relates. (n)
the manner of the presentotion of claims. published In the I PO Gazette together with
"nnlic:,ition shall be the date of receipt
392 ESSENTIALS OF INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 393
REPUBLIC ACT NO. 8293

Sec. 48. Request for Substantive Sec. 53. Contents of Patent. - The 56.3. If the Office is satisfied that Sec. 60. Form and Publication
Examination. - patent shall be Issued in t he name of the the patent may properly be surrendered , or Amendment. - An amendment or
Republic of the Philippines under the seal he may accept the offer and, as from correction of a patent shall be accomplished
48.l. The -,pplication shall be of the Office and shall be signed by the the day when notice of his acceptance is by a certificate of such amendment or
deemed withdr<lwn unless within six (6) Director, and registered together with the published in the IPO Gazette, t he patent correction, authenticated by the seal of the
months from the date of publication under description, claims, and drawings, if any, In shall cease to have effect, but no action Office and sig ned by the Director, which
Section 41, a written request to determine books and records of the Office. (Secs. 19 for Infringement shall lie and no right certificate shall be attached to the patent.
whether c1 patent application meets the and 20, R.A. No. 165a) compensation shall accrue for any use of Notice of such amendment or correction
requirements of Sections 21 to 27 and the patented invention before that day for shall be published in the !PO Gazette and
Sections 32 to 39 and the fees have been Sec. 54, Term of Patent. - The term t he services of the government. (Sec. 24, copies of the patent kept or furnished
paid on time. of a patent shall be twenty (20) years from R.A. No. 165a) by the Office shall Include a copy of the
the filing date of the application. (Sec. 21, certificate or amendment or correction .
48.2, Withdrawal of the request for Sec. 57. Correction of Mistakes of the
R.A. No. 165a) (Sec. 27, R.A. No. 165)
examination shall be irrevocable and shall Office. - The Director shall have the power
not authorize the refund of any fee. (n) sec: 55. Annual Fees. - to correct, without fee, any mistake In a
patent incurred through the fault of the Chapter VI
Sec. 49. Amendment of Appl/cation. 55.1. To maintain the patent appli-
- An applicant may amend the patent Office when clearly disclosed in t he records
cation or patent, an annual fee shall thereof, to mak,e the patent conform to the CANCELLATION OF PATENTS AND
applicatlon during examination: Provided, be paid upon the expiration of four ( 4) SUBSTITUTION OF PATENTEE
That such amendment shall not Include records. (Sec. 25, R.A. /l(o. 165)
years from the date the application was
new matter outside the scope of the published pursuant to Section 44 hereof, Sec. 58. Correction of Mistake in the Sec. 61. Cancellation of Patents. -
disclosure contained In the application .as and on each s'u bsequent anniversary of Appliratlon. - On request of any interested
flied. (n) such date. Payment may be made within person and payment of the prescribed fee, 61.1. Any Interested person may,
the Director is authorized to correct any upon payment of the required fee, petition
Sec. SO. Grant of Patent. - three (3) months before the due date.
m istake In a patent of a formal and clerical to cancel the patent or any claim thereof, or
The obligation to pay the annual fees
SO. 1. If the application meets the nature, not incurred through the fault of parts of the claim, on any or the following
shall terminate should the application be
requirements of this Act, the Office shall the Office. (Sec. 26, R.A. No. 165a) grounds:
withdrawn, refused, or cancelled.
grant the patent: Provided, That all the ' ,. (a) That what is claimed as the
fees are paid on time. 55.2. If the annual fee is not paid, Sec. 59. Changes In Patents. -'
invention is not new or patentable;
50.2. If the required fees for grant
the patent application shall be deemed
withdrawn or the patent considered
59.1. The owner of a'
patent shall
have the right to request the Bureau to (b) That the patent does not
and printing are not paid in due time, as lapsed from the day following the disclose the invention In a manner
the application shall be deemed to be make the changes in the patent In order
expiration of the period within which the sufficiently clear and complete for
withdrawn, to:
annual fees were due. A notice that the it to be carried out by any person
50.3. A patent shall take effect on application is deemed withdrawn or the (a) Limit the extent of the skilled In the art; or
the date of the publication of the grar1t of lapse of a patent for non-payment of any protection conferred by It;
annual fee shall be published In the IPO ( c) That the patent Is contrary
the patent In the IPO Gazette. (Sec. 18, to public order or morality,
Gazette and the lapse shall be recorded In (b) Correct obvious mistakes
R.A. No. 165a) or to correct clerical errors; and
the Register of the Office. 61.2. Where the grounds for cancel-
Sec. 51. Refusal of the Applfcation. - lation relate to some of the claims or parts
55.3. A grace period of six (6) (c) Correct m istakes or errors,
51.1. The final order of refusal of months shall be granted for the payment other than those referred to In letter of the claim, cancellation ·may be effected
the examiner to grant the patent shall be of the annual fee, upon payment of the (bl, made In good faith : Provided, to such extent only. (Secs. 28 and 29, R.A.
appealable to the Director In accordance That where the change would result No. 165a)
prescribed surcharge for delayed payment.
with this Act. In a broadening of the extent of
(Sec. 22, R.A. No. 165a) Sec. 62. Requirement of the Petition.
protection conferred by t he patent,
51.2. The Re'g ulatlons ·shall provide Sec. 56. Surrender of Patent. - no request may be made after the f- The petition for cancellation shall be In
for the procedure by w,h lch an appeal from expiration of two (2) years from the writing, verified by the petitioner or by
the order of refusal from the Director shall 56.1. The owner of the patent, with grant of a patent and the change shall any person In his behalf who knows the
be undertaken. (n) the consent of all persons having grants or not affect the right s of any third party facts, specify the grounds upon which it is
licenses or other right, title or Interest In which has relied on the patent, as based, include a statement of the facts to
Sec. 52. Publlcatlon Upon Grant of and to the patent and the Invention covered published. be relied upon, and filed with the Office.
Patent. - thereby, which have been recorded In the Coples of printed publications or of patents
59.2. No change in the patent shall of other countries, and other supporting
52.1. The grant of the patent Office, may surrender his patent or any
be permitted un.d er this section, where documents mentioned In the petition shall
together with other related Information claim or claims formi[lg part thereof to the
the change would result in the disclosure be attached thereto, together w ith the
shall be published In the IPO Gazette within Office for cancellation. contained In the patent going beyond the translation t hereof In English, If not In
the time prescribed by the Regulations. disclosure contained in the application English language, (Sec. 30, R.A. No. 165)
56.2. A person may give notice to the
Office of his opposition to the surrender of filed.
52.2. Any Interested party may Sec. 63. Notice of Hearing. - Upon
Inspect the complete description, claims, a patent under this settlon, and If he does 59.3. If, and to the extent to which filing of a petition for cancellation, the
and drawings of the patent on file with the so, the Bureau shall notify the proprietor of the Office changes the patent according to Director of Legal Affairs shall forthwith
Office. (Sec. 18, R.A. No. 165a) the patent and determine the question. this section, It shall publish the same. (n) serve notice of the filing thereof upon
 394 ESSENTIALS OF INTELLECTUAL PROPERTY LAW I NTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 395
REPUBLIC ACT NO. 8293

the patentee and a ll persons having Chapter VII Chapter VIII economic interests of the owner of the
grants or licenses, or any other right, t it le patent;
REMEDIES OF A PERSON WITH A RIGHTS OF PATENTEES AND
or Interest In and to the patent and the
INFRINGEMENT OF PATENTS 72 .3. Where t he act consists of mak-
Invention covered t hereby, as appears of RIGHT TO A PATENT
record in the Office, and of notice of the ing or using exclusively for experimental
date of hearing thereo n on such persons Sec. 67. PatentAppl/ection by Persons Sec. 71. Rights Conferred by Patent. - use of the invention for scientific purposes
and the petitioner. Notice of the filing of Not Having the Right to a Patent. - or educat ional purposes and such other
71.1. A patent shall confer on Its activities directly related to such scient ific
the petition shall be published In the !PO owner the following exclusive rights:
Gazette. (Sec. 31, R.A. No. 165a) 67.1. If a person referred to In or educational experimental use;
Section 29 other than the applicant, Is (a) Where t he subject matter
Sec. 64. Committee or Three. - In declared by final court order or decision as 72 .4. In t he case of drugs and medi-
of a patent is a product, to restrain, cines, where t he act Includes testing, us-
cases Involving highly technical issues, having the right to the pate nt, such person prohibit and prevent any unauthorized
on motion of any party, the Director of may, within th ree (3) months alter the ing, making or selling the invention includ-
person or entity from making, using, ing any data related thereto, sol ely for
Legal Affairs may order that the petit ion decision has become final : offering for sale, selling or Importing purposes reasonably related to the devel-
be heard and decided by a committee that product;
composed of the Director of Legal Affairs as (a) Prosecute the application opment and submission of information and
chairman and two (2) members who have as his own application in place of t he (bl Where the subject matter issuance of approvals by government reg-
the expe rience or expertise in t he field applicant; of a patent is a process, to restrain, u latory agencies required under any law of
of technology to which the patent sought prevent or prohibit any unauthorized the Philippines or of anoth er country t hat
t o be cancelled relates. The decision of (b) File a new patent appli - regulates the manufacture, construction,
cation In respect of the same inven- person or entity from using the
the committee shall be appealable to the process, and from m anufacturing, use or sale of any product : Provided, That,
Director General. (n) t ion; In order to prot ect the data submitted by
dealing in, using, selling or offering
for sale, or importing any product t he original patent holder from unfair com -
Sec. 65. Cancellation o( the Patent. - ( c) Request thatthe application
be refused; or obtained directly or indirectly from mercial use provided in Article 39.3 of the
65.1. If the Commit tee finds that such process. Agreement on Trade-Related Aspects of
a case for cancellation has been proved, ( d) Seek cancellation of t he Intellectual Property Rights (TRIPS Agree-
It shall order the patent or any specified patent, If one has already been 71.2. Patent owners shall also have ment), the Intellectual Property Office, in
claim or claims thereof cancelled. issued. the right to assign, or t ransfer. by succes- con sultation with the appropriate govern-
sion the patent, a nd to conclude licensing ment agencies, shall issue the appropriate
65.2. If t he Committee finds that, 67.2. The provisions of Subsection contracts for the same. (Sec. 37, R.A. No. rules and regulat ions necessary t herein
taking into consideration the amendment 38.2 shall apply mutatls mutandis to a new 165a) not later than one hundred twenty (120)
made by the patentee during the application filed under Subsection 67.l(b). days after the enact ment of t his law;
cancellation proceedings, the patent and (n) Sec. 72. Limitations of Patent Rights.
the Invention to which It relates meet t he - The owner of a patent has no right to 72.5. Where the act consists of
requirement of this Act, It may decide to Sec. 68. Remedies of the True and prevent third parties from performing, the preparation for indiv id ual cases, in a
maintain the patent as amended: Provided, Actual Inventor. - If a person, who was without his authorization, the acts referred pharmacy or by a medical professional, of
That t he fee for printing of a new patent is deprived of the patent without his consent to In Section 71 hereof 1n the following a medicine In accordance with a medical
paid within the t ime limit prescribed in the or through fraud is declared by final court circumstances: prescription or acts concerning t he medi-
Regulations. order or decision to be the true and actua l cine so prepared; and
Inventor, the court shall order for his 72.1. Using a patented product
65.3. If the fee for the printing of substitution as patentee, or at the option which has been put on the market In the 72.6 . Where the invention is u sed In
a new patent Is not paid in due time, t he of the true inventor, cancel the patent, and Philippines by the owner of t he product, or any ship, vessel, aircraft, or land vehicle of
p ateflt should be revoked. award actual .and other damages in his with his express consent, Insofar as such a ny other country, entering the territory of
favor if warranted by t he circumstances. use is performed after t hat product has the Philippines temporari ly or accidentally :
65.4. If the patent is amended (Sec. 33, R.A. No. 165a) been so put on the said market: Provided, Provided, That such invention is used
u nder Subsectiofl 65.2 hereof, the Bureau That, wit h regard to drugs and medicines,
shall, at the same time as It publishes exclusive ly for t he needs of the ship,
Sec. 69. Publication of the Court t he limitation on patent rights shall vessel, aircralt, or land vehicle and not
the mention of the cancellation decision, Order. - The court shall furnish the Office apply alter a drug or medicine has been used for t he manufacturing of anything to
publish the abstract, representative claims a copy of t he order or decision referred introduced In the Philippines or anywhere be sold within the Philippines. (Secs. 38
and drawings Indicating clearly what the to In Sections 57 and 68, which shall be else In the world by the patent owner, or by and 39, R.A. No. 165a)
amendments consist of. (n) published in the !PO Gazette within t hree any party authorized to use t he Invention:
Sec. 66. Effect of Cancellation of (3) months from the date such order or Provided, further, That the right to import Sec. 73. Prior User. -
Patent or Claim. - The rights conferred decision became final and executory, and the drugs and medicines contemplated
shall be recorded In the register of t he in this section shall be available to 11ny 73.1. Notwithstanding Section 72
by the patent or any specified claim or
Of fice. (n) government agency or any private tl11rd hereof, any prior user, who, In good faith
claims cancelled shall terminate. Notice
party; was using t he Invention or has undertaken
of the cancellation shall be published in
the !PO Gazette. Unless restrained by the Sec. 70. Time to File Action In Court. serious preparations to use the Invention
D irector General, the decision or order to - The actions Indicated In Sections 67 and 72.2. Where the act is done privately In his enterprise or business, before the
cancel by Director of Legal Affairs shall 68 shall be filed within one (1) year from and on a non-commercial scale or for a fl ling date or priority date of the applicat ion
the date of publication made In accordance non-commercial purpose: Provided, That on which a patent is granted, shall have
~: . l_m,m ~Eiate~~ e:~u_tory even pending w ith ,~rtinnc:- dd 2nrt C: 1 .-,::.c,-.or+.h,o h, , ... , It, Mnn.-. .-..-.f- ,,..;_......,;,;,.....,,,..+,I., ,...,..,,-., ,..-1;.-,,., +-he. t-ho rinht' t n r nnt-in, 1 0 t-ho 11co 1-t•u>r-A,nf :..c:
396 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPI NES 397
REPUBLIC ACT NO. 8293

envisaged in such preparat ions wit hin the (bl In the case of public non- Sec. 7 5. Extent of Protection and and implements predominant ly used in
territory where the patent produces Its commercial use of the patent by Interpretation of Claims. - the infringement be disposed of outside
effect. the patentee, without satisfactory the channels or commerce or destroyed,
reason, as provided under Section 75.1. The extent of protection con- without compensation.
73.2. The r ight of the pr ior user may 74. l(d), the right holder shall be ferred by the patent shall be d etermined
only be transferred or assigned together informed promptly; Provided, That, by the claims, which are to be interpreted 76.6, Anyone who actively Induces
with his enterprise or business, or with in t he light of the description and draw- the infringement of a patent or provides
the Government or third person
that part of his enterprise or business in ings. the infringer with a component of a
authorized by the Government, with-
which the use or preparations for use have patented product or of a product produced
out making a patent search, knows
been made. (Sec. 40, R.A. No. 165a) 75.2. For the purpose of determining because of a patented process knowing
or has demonstrable ground to know the extent of protection conferred by the
Sec. 74. Use of Invention by Govern- that a valid patent is or will be used it to be especially adopted for Infringing
patent, due account shall be taken of the patented invention and not suitable
ment. - by or for the Government; elements which are equivalent to the for substantial non-infringing use shall be
(c) If the demand for the elements expressed in the claims, so that liable as a contributory infringer and shall
74.1. A Government agency or third
patented article in the Philippines Is a claim shall be considered to cover not be jointly and severally liable with the
person authorized by the Government
may exploit t he invention even without only all the elements as expressed t herein, infringer. (Sec. 42, R.A. No. 165a)
not being met to an adequate extent
but also equivalents. (n)
agreement of the patent owner where : and on reasonable tenns as provided
under Section 74.1(e), t he right Sec. 77. Infringement Action by a
Sec. 76. Civil Action for Infringe-
(a) the public inte rest, in par- holder shall be infonned promptly; Foreign National. - Any foreign national or
ment. -
ticular, national security, nutrition, juridical entity who meets the requirements
health or the development of other (d) The scope and duration 76.1. The making, using, offering of Section 3 and not engaged in business
sectors, as determined by the appro- of such use shall be limited to the for sale, selling, or importing a patented In the Phi lippines, to which a patent has
priate agency of t he government, so purpose for which it was authorized; product or a product obtained directly been granted or assigned under this Act,
requires; or or Indirectly from a patented process, or may bring an action for infringement of
(e) Such use shall be non• the use of a patented process without the patent, whether or not it is licensed to do
(b) A judicial or administrative excl usive; business In the Philippines under exist ing
body has determined that t he manner authorization of the patentee constitutes
patent Infringement: Provided, That, law. (Sec. 41 -A, R.A. No. 165a)
of exp loitation, by the owner of (f) The right holder shall be
the patent or his licensee, is anti- this shall not apply to instances covered
paid adequate remuneration In the Sec. 78. Process Patents; Burden of
competitive; or by Sections 72. l and 72.4 (Llmltations
circumstances of each case, taking Proof. - If the subject matter of a patent
of Patent Rights); Section 74 ·;(Use of
into account the economic value of is a process for obtaining a product, any
(c) In the case of drugs Invention by Government); Section 93.6
the authorization; and identical product shall be presumed to
and medicines, there Is a national (Compulsory Licensing); and Section
93-A (Procedures on Issuance of a Special have been obtained t hrough the use of
emergency or other circumstance of (g) The existence of a national
extreme urgency requiring the use of Compulsory License under the TRIPS the patented process if the product Is
emergency or other circumstances new or there is substantia l likelihood that
the Invention; or of ext reme emergency, referred Agreement) of this Code.
the Identical product was made by the
( d) In the case of drugs and to under Section 74.l(c), shall be 76.2. Any patentee, or anyone process and the owner of the patent has
medicines, there Is public non- subject to the determination of t he possessi ng any right, t it le or interest In been unable despite reasonable efforts, to
commercial use of the patent by President of the Phlllpplnes for the and to the patented invention, whose determine the process actually used. In
the patentee, without satisfactory purpose of determining the need for rights have been Infringed, may bring a ordering t he defendant to prove that the
reason; or such use o r other exploitation, which civil action before a court of competent process to obtain the Identical product is
shall be Immediately executory. jurisdiction, to recover from the infringer different from the patented process, the
(e) In the case of drugs and such damages sustained thereby, plus court shall adopt measures to protect, as
medicines, the demand for the 74.3. All cases arising from the attorney's fees and other expenses of far as practicable, his manufacturing and
patented article In the Philippines implementation of this provision shall be litigation, and to secure an injunction for business secrets. (n)
is not being met to an adequate cognizable by courts with appropriate the protection of his rights.
extent and on reasonable terms, jurisdiction provided by law. No court, Sec. 79. Limlt:iJtlon of Action for
as determined by the Secret ary of except the Supreme Court of the 76.3. If the damages are i nadequate Damages. - No damages can be recovered
Department of Health. Philippines, shall issue any temporary or cannot be readily ascertained with for acts of infringement committed more
restraining order or preliminary injunction reasonable certainty, the court m!)y award than four ( 4) years before the Institution of
74.2. Unless otherwise provided by way of damages a sum equivalent to the action for infringement . (Sec. 43, R.A.
herein, the use ·by t he Government, or or such other provisional remedies that wilt
prevent Its Immediate execution. reasonable royalty. No. 165)
third person a uthorized by t he Government
shall b e subject, where applicable, to the 74.4. The I ntellectual Property 76.4. The court may, according to Sec. 80. Damages; Requirement of
following provisions: Office {!PO), in consultation with the the circumstances of the case, awc1rd Notice. - Damages cannot be recovered
appropriate government agencies, shall damages In a sum above the amount found for acts of infringement committed
(a) In situations of national as actual damages sustained: Pmvided, before the infringer had known; or had
emergency or other circumstances of Issue the appropriate Implementing rules
That the award does not exceed three (3) reasonable grounds to know of the patent.
ext reme urgency as provided under and regulations for the use or exploitation
t imes the amount of such ai:tual dam.ages. It is presumed that the Infringer had
Section 74.l(c), the r ight holder shal l of patented Inventions as contemplated
known of the patent If on the pat ented
be notlAed as soon as reasonably In this section within one hundred twenty 76.5. The court may, In its discretion, product, or on the container or package In
practicable; (120) days after the effectlvity of this law. order that the Infringing goods, materials which the article is supplied to the public,
 398 ESSENTIALS OF INTELLECTUAL PROPERTY LAW
I NTELLECTUAL PROPERTY CODE OF THE PHI LIPPINES
399
REPUBLIC ACT NO. 8293

or on the advertising material relating of the commission of the crime. (Sec. 48, 87 .7. Those t hat require payment shall be the proper court in the place
to the patented product or process, are R.A. No. 16 5a) of royalties to the owners of patents for where the licensee has its principal office;
placed the words "Philippine Patent" with
patents which are not used;
the number of the patent. (Sec. 44, R.A.
No. 165a) Chapter IX 88. 2. Continued access to improve-
87.8. Those that prohibit the ments in techniques and processes related
VOLUNTARY LICENSING licensee to export the licensed product to the technology shall be made available
Sec. 81. Defenses in Action for
unless justified for the protection of the during t he period of the technology trans·
Infringement. In an action for
Sec. 85. Voluntary Ucense Contract. legitimate Interest of the licensor such fer arrangement;
infringement, the defendant, in addition to
To encourage the t ransfer and as exports to countries where exclusive
other defenses available to him, may show
dissemination of technology, prevent or licenses to manufacture ;;,nd/or distr ibute 88.3. In the event the technology
the invalidity of the patent, or any claim transfer arrangement shall provide for
control practices and conditions that may the licensed product(s) have already been
thereof, on any of the grounds on which granted;
in particular cases constitute an abuse arbitration, t he Pro.cedure of Arbitration
a petition of cancelli:!tion can be brought
of Intellectual property rights having an of the Arbitration Law of the Philippines or
under Section 61 hereof. (Sec. 45, R.A. 87.9. Those which restrict the use of
adverse effect on competition and trade, the Arbitration Rules of the United Nations
No. 165) the technology supplied after the expiration
a ll technology transfer arrangements shall Commission on Internat ional Trade Law
of the technology transfer arrangement, (UNCITRAL) or t he Rules of Conclliatfon
Sec. 82. Patent Found Jnval/d May be comply with the provisions of this Chapter.
(n) except In cases of early termination o f the and Arbitration of the International
cancelled. - In an action for infringement, technology transfer arrangement due to
if the court shall find the patent or any claim Chamber of Commerce (TCC) shall apply
Sec. 86. Jurisdiction to Settle Dis- reason(s) attributable to the licensee; and the venue of arbitration shall be the
to be Invalid, it shall cancel the same, and
the Director of Legal Affairs upon receipt putes on Royalties. - The Director of the Philippines or any neu tral country; and
87 .10. Those which require pay-
of the final )udgment of cancellation by the Documentation, Information and Technol-
ments for patents and other industrial 88.4. The Philippine taxes on all pay-
court, shall record that fact In the register ogy Transfer Bureau shall exercise quasl-
j udfcial jurisdiction In the settl ement of property rights after their expiration, ments relating to the technology transfer
of the Office and shall publish a notice to termination arrangement; arrangement shall be borne by t he. licen-
that effect in the IPO Gazette. (Sec. 46, disputes between parties to a technology
transfer arrangement arising from technol- sor. (n)
R.A. No. 165a) 87, 11. Those which require that
ogy transfer payments, Including the fixing the technology recipient shall not contest Sec, 89. Rights of Ucensor. - In t he
Sec. 83. Assessor In Infringement of appropriate amount or rate of royalty. the validity of any of the patents of the absence of any provision to the contrary
Action. - (n)
technology supplier; in the technology transfer arrangement,
83.1. Two (2) or m ore assessors may Sec. 87, Prohibited Clauses. - Except the grant of a license shall not prevent
87.12. Those which restrict the the licensor from granting further licenses
be appointed by the court. The assessors In cases under Section 91, the following research and development act ivities of the
shall be possessed of the necessary provisions shall be deemed prima facie to to third person nor from exploiting t he
licensee designed to absorb and adapt t he subject matter of the technology transfer
scientific and technical knowledge required have an adverse on competition and trade:
transferred technology to local conditions arrangement himself. (Sec. 33-B, R.A.
by_ the subject matter .In litigation. Either or to Initiate research and development
87.1. Those which impose upon the 165a)
pa,:tY niay challenge the fitness of any programs In connection with new products,
assessor propose~ for appointment. licensee the obligation to acquire from a
specific source capital goods, Intermediate processes or equipment; Sec. 90. Rights of LicenS<!e. - The
83.2. Each assessor shall receive a products, raw materials, and other licensee shall be entitled to exploit the
technologies, or of permanently employing 87.13. Those which pr event the 11· subject matter of the technology transfer
compensation in an amount to be fixed by censee from adapting the Imported tech-
personnel Indicated tty the licensor; arrangement during the whole term of the
the court and advanced by the complaining
nology to local conditions, or Introducing technology transfer arrangement. (Sec.
party, which shall be awarded as part of his
87 .2. Those pursuant to which the Innovation to It, as long as It does not im- 33-C[l], R.A. 165a}
costs should he prevail In ttie action. (Sec. pair the quality standards prescribed by
47, • ~.A. No. 165a) licensor reserves the right t o fix the sale or
resale prices of the products manufactured the.licensor; Sec. 91. Exceptional Cases: - In
on the basis of the license; exceptional or meritorious cases where
Sec. 84. Crlmlna/ Action for Repetition 87.14. Those which exempt the substantial benefits will accrue to the
of Infringement. - If lnfringement is economy, such as high technology content,
87.3. Those that contain restrictions licensor for liability for non-fulfillment of
repeated by the infringer or by anyone In regarding the volume and structure of his responsibilities under the technology increase in foreign exchange earnings,
connivance with him after finality of the production; employment generatio,n, regional dispersal
transfer arrangement and/or liability
judgment of the court against the Infringer, arising from third party suits brought of industries and/or substitution with
the offenders shi)II, without prejudice to 87.4. Those that prohibit the use about by ttie use of the licensed product or or use of local raw materials, . or In the
the Institution of.a civil action for damages, of competitive technologies In a non- t he licensed technology; and case of Board of Investments, regls~e{ed
be criminally liable therefor and, upon exclusive technology transfer agreement; companies with pioneer status, ekemptlon
conviction, shall suffer Imprisonment for 87.15. Other clauses with equivalent from any of the above requirements
the period of not less than six (6) months 87.5. Those that establish a full effects. (Sec. 33-C[2], R.A. No. 165a)
or partial purchase option in favor of the may be allowed by the · Documentation,
but not more than three (3) years and/
or a fine of not less than One hundred
licensor; Sec. 88. Mandatory Provisions. - ie
followi ng provisions shall be Included in
Information and Technology Transfer
Bureau a~er evaluation thereof on a case
thousand pesos ( 1'100,000) but not more 87.6. Those that obligate the by case basis. (n)
than Three hundred thousand pesos voluntary license contracts:
licensee to transfer for free to the licensor
(PJ00,000), at the discretion of the court. the inventions or Improvements that may Sec. 92. Non-Registration with the
The criminal action herein provided shall 88.1. That the laws of the Philippines Documentation, Information and Tech-
be obtained through the use of the licensed shall govern the Interpretation of the same
preseribed In three (3) years from date technology; nology Transfer Bureau. - Technology
and In the event of litigation, the venue t ransfer arrangements that conform with
400 ESSENTIALS OF INTELLECTUAL PROPERTY LAW I NTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 4 01
REPUBLIC ACT NO. 8293

the provisions of Sections 86 and 87 need 93-A. l. The Director General of 94. 1. A compulsory license may not 95.5. Where t he demand for the
not be registered with t l,e Documentation, the Intellectual Pr·operty Office, upon the be applied for on the ground s tated In patented drugs and medicines m the Ph1i-
Informat ion and Technology Transfer Bu- w ritten recommendation of the Secretary Subsection 93.5 before the expiration of a lpplnes ,s not being met to an adC!quate
reau. Non-conformance with any or the of the Department of Health, shall, period of four ( 4) years from the dale of extent and on rC!asonable terms, as de-
provisions of Sections 87 and 88, however, upon filing of a petit ion, grant a special filing of the applicat ion or three (3) years termined by the Secretary of the Depart-
shall automatically render the technology compulsory license for t he Importation of from t he date of the patent whichever ment of Health, the right holder shall be
transfer arrangement unenforceable, un- patented drugs and medicines. The special period expires last. Informed promptly.
less said technology t ransfer arrangement compulsory license for the importation
is approved and registered with the Docu- contemplated under t his provision shall be 94.2. A compulsory license wh ich is Sec. 96. Compulsory Licensing of Pat -
mentation, Information and Technolog y an additional special alternat ive procedure applied for on any of the grounds stated ents I nvolving Semi-Conductor Technol-
Transfer Bureau und er the provisions or to ensure access to quality affordable In Subsections 93.2, 93.3, 93.4, and 93.6 ogy. - In the case of compulsory licensing
Section 91 on exceptional cases. (n) medicines and shall be primarily for and Sect ion 97 may be applied for at any of patents involving semi-conductor tech-
domestic consumption: Provided, Thal time after the grant of the patent. (Sec. nology, the license may only be granted In
adequat e remuneration shall be paid to the 34(1}, R.A. No. 165) case or public non-commercial use or t o
Chapter X
patent owner either by the exporting or remedy a practice determined after jud i•
Sec. 9 5. Requirement to Obtain
COMPULSORY LICENSING importing country. The compulsory license clal or administrative process to be anti-
a Ucense on Reasonable Commercial
shall also contain a provision directing the Terms. -
compet it ive. (n)
Sec. 93. Grounds for Compulsory grantee the license to exercise reasonable
Licensing. - The Director of Legal Affairs measures to prevent the re-exportation or Sec. 97. Compulsory License Based
95.1. The license will only be granted
may grant a license t o exploit a patented the products imported under t his provisior,. after the petitioner has made efforts to on Interdependence of Patents. - If the
Invention, even without the agreement of obtain authorization from the patent Invention protected by a patent, hereafter
the patent owner, in favor of any person The grant of a special compulsory referred to as the "second patent; within
owner on reasonable commercial terms
license under this provision shall be an the country cannot be worked without
who has shown his capability to exploit and condit ions but such efforts have not
t he Invention, under any of the rollowlng exception to Sections 100.4 and 100.6 infringing anot her patent, hereafter
been successful within a reasonable period
of Repu blic Act No. 8293 and shall be of time. referred l o as t he " first patent," granted
circumstances:
Immediately executory. on a prior application or benefiting from an
93.l. National emergency or other 95.2. The requirement under Sub- earlier priority, a compulsory license may
No court, except the Supreme be granted to the owner of the second
circumst ances of extreme urgency; section 95.1 shall not apply in any of the
Court of the Philippines, shall issue any following cases: :,. patent to t he extent necessary for the
93.2. Where u,e public Interest, temporary restrain ing order or preliminary working of his invention, subject to the
In particular, national security, nutrition, injunction or such other provisional (a) Where the petition for following condit ions:
health or the development of ot her remedies that will prevent t he grant of the compulsory license seeks to remedy
vital sectors of the national economy as special compulsory license. a practice determined after Judicial 97. J . The invention claimed In the
determined by the appropriate agency of or administrative process to be a nti· second patent Involves an Important
93-A.2. A compulsory license shall
t he Government, so requires; or competitive; technical advance of considerable
also be available for the manufacture and
economic significance In relation to the
93.3. Where a judicial or adminlstra· export ofdrugs and medicines to any country (b) In situations of national first patent;
tlve body has d etermined that the manner having Insufficient or no manufacturing emergency or other circumstances of
of exploltatlon by ti,e owner of the patent capacity in the phamiaceutical sector to extreme urgency; 97.2 . The owner of the first paten t
or his licensee Is anti-competitive; or address public hea lt h problems: Provided, shall be entitled to a cross-license on
That, a compulsory license has been (c) In cases of public non- reasonable terms to use the Invention
93.4. In case of public non-com- granted by such country or such country commercial use; and claimed in the second patent;
mercial use of the patent by the patentee, has, by notification or otherwise, allowed
without satisfactory reason; Importation into Its j urisdiction of the (d) I n cases where t he demand 97.3. The use author ized in respect
patented drugs and medicines from ti,e for the patented drugs and medicines of the first patent shall be non -as.signable
93.S. If the patented Invention Is Philippines in compliance with the TRIPS in the Philippines Is not being met except wit h the assignment of the second
not being worked In the Philippines on a Agreement. to an adequate ext ent and on patent; and
commercial scale, alt hough capable of reasonable terms, as determined by
being worked, w ithout satisfactory reason; 93-A.3. The right to grant a special the Secretary of t he Department of 97 .4. The terms and conditions of
Provided, That the Importation of the compulsory license under this section Health. Sections 95, 96 and 98 to 100 of this Act .
patented article shall constitute wor1<ing or shall not limit or prejudice the rights, (Sec. 34-C, R.A. No. 165a)
using the patent. (Secs. 34, 34-A, and 34· obligations and flexibilities provided under 95.3. I n situations of national emer-
8, R.A. No. 165a) the TRIPS Agreement and under Philippine gency or other circumstances of extreme Sec. 98. Form and Contents of
laws, particularly Section 72.1 and Section urgency, the right holder shall be notified Petition. - The petition for compu lsory
93.6. Where • the demand for 74 of the Intellectual Property Code, as as soon as reasonably practicable. / licensing must be in writing, verified by the
patented drugs a nd medicines Is not amended under this Act. It Is also without petitioner and accompanied by payment
being met t o an adequate extend and on 95.4. In the case of public non-com· of the required Rllng fee. I t shall contain
prejudice to the extent to which drugs and mercial use, where t he government or con-
reasonable terms, as determined by the medicines produced under a compulsory the name and address of the petitioner
Secretary of the Department of Health. tractor, without making a patent search, as well as those of the respondents, the
license can be exported as allowed In the
knows or has demonstrable grounds to number and date of issue of tl,e patent In
TRIPS Agreement and applicable laws.
Sec. 93-A. Procedures on Issuance know that a valid patent Is or will be used connection with which compulsory license
of a Spec/al Compulsory License under the Sec. 94. Period for Filin g a Petition for by or for the government, the right holder is sought, the name of the patentee,
TRIPS Agreement. - a Compulsory Ucense. - shall be Informed promptly. (n) the title of the Invention. thP ctah,tnn,
 402 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 403
REPUBLIC ACT NO. 8293

grounds upon which compulsory license Is to the legitimate interest of the licensee; from the licensor whatever he may have the recording shall be published in the IPO
sought, the ultimate facts constituting the and received as royalties under the license. Gazette.
petitioner's cause of action, and the relief
100.6. The patentee shall be paid (Sec. 35-E, R.A. No. 165a)
prayed for. (Sec. 34-D, R.A. No. 165) 106.2. Such Instruments shall be void
adequate remuneration taking Into as against any subsequent purchaser or
Sec. 99. Notice of Nearing. - account the economic value of the grant Chapter XI mortgagee for valuable consideration and
or authorization, except that in cases without notice, unless, it is so recorded in
99 .1. Upon filing of a petttion, the ASSIGNMENT AND
where the license was granted to remedy the Office, within three (3) months from
Director of Legal Affairs shall forthwith T RANSMISSIO N OF RIGHTS
a practice which was determined after the date of said inst rum ent, or prior to the
serve notice o f the filing thereof upon
j udicial or administrative process, to be subsequent purchase or mortgage. (Sec.
the patent owner and all persons having Sec 103. Transmission or Rights. -
anti-competitive, the need to correct the 53, R.A. No. 165a)
grants or licenses, or any other right,
anti-competitive practice may be taken
title or interest in and t o the patent and 103. 1. Patents or applications for
Into account in fixing the amount of Sec. 107. Rights of Join t Owners. -
Invent ion covered thereby as appears of patents and Invention to which they relate,
remuneration. (Sec. 35-B, R.A. No. 165a) shall be protected in the same way as t he If two (2 ) or more persons jointly own a
record in the Office, and of notice of the
rights of other property under the Civil patent and the Invent ion covered thereby,
date of hearing thereon, on such persons Sec. 101. Amendment, Cancellation,
Code. either by t he issuance of the patent In their
and petitioner. The resident agent or Surrender of Compulsory Ucense. - joint favor or by reason of the assignment
representative appointed in accordance of an undivided share In the patent and
101.1. Upon the request of the
103.2. Inventions and any right,
with Section 33 hereof, shall be bound to invent ion or by reason of the successio n in
patentee or t he licensee, the Director title or Interest In and to pat ents and
accept service of not ice of the filing of the
of Legal Affairs may amend the decision inventions covered thereby, may be tit le t o such share, each of the joint owners
petition within the meaning of this Section.
granting the compulsory license, assigned or transmitted by inheritance or shall be entitled to persona lly make, use,
99 .2. In every case, the notice upon proper showing of new facts or bequest or may be the subject of a license sell, or Import the invention for his o wn
shall be published by the said Office In a circumstances justifying such amendment. contract. (Sec. 50, R.A. No. 165a) profit: Provided, however, That neither of
newspaper of general circulation, once the joint owners shall be ent itled to grant
101.2. Upon the request of the Sec. 104. Assignment of Inventions. licenses or t o assign his right, t itle or
a week for t hree (3) consecut ive weeks - An assignment may be of the entire
and once In the IPO Gazette at applicant's patentee, the said Di rector may cancel the Interest or part thereof without t he consent
compulsory license: right, tit le or Interest in and to the patent of t he other owner or owners, or without
expense. (Sec. 34-E, R.A. No. 165) and the invention covered thereby, proportionally dividing the proceeds w ith
(a) If the ground for t he grant or of an undivided share of tne ent ire
Sec. 100. Terms and Conditions such other owner or owners. (Sec. 54, R.A.
of Compulsory License. - The basic of t he compulsory license no longer patent and Invention, In which event the No. 165)
terms and conditions Including the rate exists and is unlikely to recur; parties become joint owners t hereof. An
of roya lties of a compulsory license shall assignment may be limited to a specified
(b) If the licensee has neither territory. (Sec. 51, R.A. No. 165) Chapte r XII
be fixed by the Director of Legal Affairs begun to supply the domestic
subject to the following conditions: m arket nor made serious preparation Sec. 105. Form of Assignment. REGISTRATION OF UTILITY
therefor; - The assignment must be in writing, MODELS
100.1. The scope and duration of
acknowledged before a notary public or
such license shall be limited to the purpose (c) If the licensee has not other officer authorized to administer oath Sec. 108. Applicability of Provisions
for which it was authorized; compiled with the prescribed terms of or perform notarial acts, and certified Relat ing to Patents. -
100.2. The license shall be ' non- the license; under the hand and official seal of the
exclusive; notary or such other officer. (Sec. 52, R.A. 108.1. Subject to Section 109, the
101.3. The licensee may surrender No. 165) provisions governing patents shall apply,
100.3. The license shall be non - the license by a written declaration mutatis mutandls, to the registration of
assignable, except with that part of the submitted to the Office. Sec. 106. Recording. - utility models.
enterprise or business with which the 101.4. The said Director shall cause
invention is being exploited; 106.1. The Office shall record as- 108.2. Wh.e re the right to a patent
t he amendment, su rrender, or cancellation signments, licenses and other instruments conflicts with the right to a utility model
100.4. Use of the subject matter of In the Register, notify the patentee, and/ relating to the transm ission of any right, registration In the case referred to In
the license shall be devoted predominantly or the licensee, and cause notice thereof title or Int erest In and to inventlons, and Section 29, the said provision shall apply
for the supply of t h e Philippine market : to be published in t he I PO Gazette. (Sec. patents or applicat ion for patents or in- as If the word pat ent were replaced by the
Provided, That t his limitation shall not 35-0, R.A. No. 165a) ventions to which t hey relate, which are words "patent or utility model registration."
apply where the grant of the license is presented In due form to the Office for (Sec. 55, R.A. No. 165a)
based on the ground t hat the patentee's Sec. 102. Licensee's Exemption
registrat ion, In books and records kept for
manner of exploiting the patent Is from Liability. - Any person who works Sec. 109. Spe<:.ial Provisions Relating
the purpose. The original documents to-
determined by judicial or administrative a patented product, substance and/or to Utllity Models. -
gether with a signed duplicate thereofshall
process, to be anti-competitive; process under a license granted under this
be flied, and the contents thereof should 109.l. (a) An invention qualifies for
Chapter; shall be free from any liability
be kept confidential. If the original is not registration as a utility model if it is new
100.5. The license may be termi- for Infringement: 'Provided, however,
available, an authenticated copy thereof and industria lly applicable.
nated upon proper showing that circum- That in the case of voluntary licensing,
s t ances which ·/ed to its grant have ceased In duplicate may be filed. Upon recording,
no collusion with the licensor is proven. (b) Section 21, "Patentable I nven-
t he Office shall retain the duplicate, return
to exist and are unlikely to recur: Provided, This Is without prejudice to the right of tions; shall apply except the reference to
t he original or the authenticated copy t o
That adequate protection shall be afforded the rightful owner o f the patent to recover Inventive step as a condition of protection.
t he party who flied the same and notice of
 404 ESSENTIALS OF INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 405
REPUBLIC ACT NO. 8293

109.2. Sections 43 tc 49 shall Chapte r XIII of an industrial design or layout-design 116.3. After t he application has been
not apply in t he case of applications for shall contain: accorded a filing date and t he required fees
regis tration of a utility model. I NDUSTRIAL DESIGN AND LAYOUT paid on time, the applicant shall comply
DESIGNS (TOPOGRAPHIES) (a) A request for registration with the requirements of Section 114
109.3. A utility model registration OF INTEGRATED CIRCUITS of the industrial design or layout- within the prescribed period, otherwise the
shall expire, without any possibilit y of design; applicat ion shall be considered withdrawn.
renewal, at the en d of t he seventh year Sec. 112. Definition of Terms:
a~ er the date of the filing of the application. (b) Information identifying the 116.4. The Office shall exami ne
l. An Industrial Design is any com- applicant; whet her the industrial design or layout-
109.4. In proceedings under Sec- position of lines or colors or any three-di- design complies with requirem ents of
tions 6 1 to 64, the utility model registra- (c) An indication of t he kind of Section 112 ('Definitions) and Section 113
mensiona l form, whether or not associated
tion shall be canceled on the following with lines or colors: Provided, That such article of manufacture or handicraft (Substantive Conditions for Prot ection ).
grounds: to which the industrial desig n or
composition or form gives a special ap-
pearance to and can serve as pattern for layout-design shall be applied; Sec. 117. Registration. - 117.1.
(a) That t he claimed invention Where the Office finds t hat the conditions
does not qualify for registrat ion as an indust rial product or handicraft; (d) A representation of the referred to in Section 113 are fulfilled, It
a utilit y mode l and does not meet 2. I ntegrated Circuit means a pro- article of manufacture or handicraft shall order that registration be effected
the requirements of registrabillty In duct, In Its final form, or an intermediate by way of drawings, photographs In the Industrial design or layout-design
particular having regard to Subsection form, in which the elements at least o ne or adequate graphic representat ion register and cause the issuance of
109.1 and Sections 22 23 24 and of which Is an active element and some or of the Indust rial design or of the an industrial design or layout-design
27; ' ' layout -desig n as applied to the
all of the Interconnections are Integra lly certificate of registration; otherwise, it
formed In and/or on a piece of material article of manufacture or handicraft shall refuse the application.
(b) That the description and which clearly and fully discloses
the claims do not comply with the and which Is intended to perform an elec'.
tronic function; and those features for which protection Is 117.2. The form and contents
prescribed requirements; claimed ; of an industrial design or layout-desi gn
3. Layout-Design is synonymous certificat e shall be established by the
( c) That any drawing which is (e) The name and add ress of
with 'Topography' and means the three- di- Reg istrations: Provided, That the name and
necessary for t he understanding of t he crea tor, or where the applicant Is
mension al disposition, however expressed address of t he creator shall be m entioned
t he Invent ion has not been furnished; not the creator, a statement indicating
of the elements, at least one of which is a~ In every case.
{d) That the owner of the utility active element , and of some or all of the the origin of the right to t he i[Jdustrial
design or layout- design registration. 117.3. Reg istration shall be pub-
model registration Is not the Inventor Intercon nect ions of an Integrated circuit, lished in the form and within the period
or his successo r in title. (Secs. 55, or such a t hree-dimensional disposition fixed by t he Regulations.
114.2. The application may be
56, and 57, R.A. No. 165a) prepared for an integrated circuit intended
for manufacture. accompanied by a specimen of t he article
embodying the industrial design or layout - 117.4. The Office shall record in
Sec. 110. Conversion of Patent the register any change in the Identity
Applications or Appl/cations for Utility Sec. 113. Substantive Conditions/ design and shall be subject to the payment
of the proprietor of the industrial design
Model Registration. - or Protection. - 113. 1. Only Industrial of the prescribed fee.
or layout design or his representative, If
designs that are new or ornamental shall proof thereof is furnished to It. A fee shall
110.1. At an y t ime before t he benefit from protection under th is Act. Sec. 115. Several Indust rial Designs
In One Application. - Two (2) or more be pald, with the request to record t l1e
grant or refusal of a patent, an appl icant
1 ~3.2. I ndustrial designs dictat ed industrial designs may be the subj ect change in the identity of t he proprietor; if
for a patent may, upon payment of the
essentially by technical or fu nction al of the same application: Provided, That t he fee is not paid, the request shall be
prescribed fee, convert his application deemed not to have been filed. In such
Into a n application for registration of a considerat ions to obtain a technical result t hey relate t o the same sub-class of t he
or those that are contrary to public order I nternational Classification or to the same case, t he f ormer proprietor and the former
utility model, w h ich shall be accorded the representative shall remain subject to t he
filing date of the initial application. An health or morals shall not be protected . ' set or composition of articles
rights and obligations as prov ided in this
appl ication may be converted only once: Act.
113.3. Only layout -designs of inte - Sec. 116 . Examination. - 116.1.
110.2. At any t im e before the grant grat ed circuits that are original shall bene- The Office shall accord as the filing date
fit from p rotection under t his Act. A layout- 117 .5. Anyone m ay Inspect the
or refusal of a utilit y model registration, the date of receipt of the application
design shall be considered original If It is Register and t he files of registered indus-
an applicant for a utility model registratlon containing indications allowing the identity
the result of Its creator's own intellectual trial designs or layout-designs Including
may, upon paym ent of the prescribed of the applicant to be established and a
effort and is not commonplace among cre- files of cancellation proceedings.
fee, convert his appl ication Into a patent representation of the article embodying
application, which shall be accorded t he ators of layout -designs and manufacturers the industrial design or the layout-design Sec. 118. The Term of Industrial
fifing date of t h e Initial application. (Sec. of integrated circuit s at the time of Its cre - or a pictorial representation thereof. Design or Layout-Design Registration. -
58, R.A. No. 16Sa) ation. / 118.1. The reg istration of an industrial
116.2. If the application does not design shall be for a period of five (S) years
Sec. 111. Prohibition against Filing of 113.4. A layout-design consisting meet t hese requirements, the filing date
of a combinat ion of elements and from t he filing date of t he applicat ion.
Parallel Appl/cations. - An applicant may should be that date when all the elements
not file two (2) applications for the same Interconn ections t hat are com monplace 118.2. The registration of an
specified in Section 114 are filed or the
subject, one for utility model registration sha ll be prot ected only If the combination Indust rial design may be renewed for not
taken as a whole, Is original. ' mistakes corrected. Otherwise, If the
and t he other for th e grant of a patent requirement s are not complied within the more t han two (2) consecut ive periods of
whether simultaneously or consecutively. Sec. 114. Contents ofthe Application. prescribed period, t he applicat ion shall be five (5) years each, by paying t he renewal
(Sec. 59, R.A. No. 165a) - 114 .1. Every applicat ion for regist ration considered withdrawn . fee.
406 ESSENTIALS OF INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 407
REPUBLIC ACT NO. 8293

118.3. The renewal fee shall be from the earliest filing date of the corre- CHAPTER X - Compulsory Licensing notice that t he layout-design was
paid within twelve {12} months preceding sponding foreign application; unlawfully reproduced, that person
CHAPTER X1 - Assignment and Trans- may perform any of the said acts only
the expiration or the period of registration . mission of Rights
However, a grace period of six (6) months SECTION 33 - Appointment of Agent with respect to the stock on ha nd or
shall be granted for payment of the fees or Representative; ordered before such time and shall
119.4. Rights Conferred to the
after such expiration, upon payment of a be liable to pay to the right holder a
SECTION 51 - Refusal of the Appli- Owner of a Layout-Design Registration. -
surcharge. The owner of a layout-desig n registration sum equivalent to at least 5% of net
cation; sales or such other reasonable royalty
shall enjoy the following rights :
118.4. The Regulations shall fix as would be payable under a f reely
SECTI ONS 56 to 60 - Surrender,
the amount of renewal fee, the surcharge (1) to reproduce, whether by negotiated license in respect of such
Correction of and Changes in Patent; layout-design;
and other requi rements regarding the incorporation In an integrat ed circuit
recording of renewals of registration. CHAPTER VII - Remedies of a Person or otherwise, the registered layout·
design In its entirety or any part (SJ Where the act is performed
118.5. Registration of a layout• with a Right to Patent; in respect of an identical layout-
thereof, except the act of reproducing
design shall be valid for a period often CHAPTER VIII - Rights of Patentees any part that does not comply with design which Is original and has been
(10) years, without renewal, and such and Infringement of Patents; and creat ed Independently by a third
the requirement of originality; and
validity to be counted from the date of party.
commencement o f t he protection accorded CHAPTER XI - Assignment and (2) to sell or ot herwise dis·
to . t he layout- design. The protection Transmission of Rights Sec. 120. Cancellation :of Design
tribute for commercial purposes the
of a layout-design under this Act shall registered layout design, an article or Registration. - 120. 1. At any t ime
commence: 119.2. If the essential elements or an integrated circuit in which the reg- during the term of the industrial design
an industrial design which Is the subject istered layout-design is Incorporated. registration, any person u pon payment of
(a) on the date of the first of an application have been obtained from the required fee, may petition the Director
commercia l exploitat ion, anywhere t he creation of another person without his 119.5. Umltatlons of Layout of Legal Affairs to cancel the Industrial
In the world, of the layout-design consent, protection under this Chapter Rights. - The owner of a layout design design o n any of the followlng grou nds:
by or with t he consent of the right cannot be invoked against the Injured has no right to prevent third parties from
holder: Provided, That an application reproducing, selling or otherwise distribut- (a) If the subject matter of the
party. Industrial design Is not reglsterable
f or regist ration Is flied w ith t he ing for commercial purposes the registered
I ntellectual Property Office within 119.3. The following provisioos layout-design In the following circumstanc- within the terms of Sections 112 and
two ( 2) years from such date of first relating to patents shall apply mutatis 113;
es: '
commercial exploitation; or mutandls to a layout - design of Integrated ( b) If the subject matter Is not
circuits registration: {1) Reproduction of t he regis-
(b } on the filing date accorded tered layout-design for privat e pur- new; or
to the application for the registration SECTION 28 - Right to a Patent; poses or for the sole purpose of eval - ( c) I f the subject matter or the
of· the layout -desig n If t he layout• uat ion, analysis, research or teach- Industrial design extends beyond t he
d esign h as not· been previously SECTION 29 - First t o File Rule; ing; content of the application as originally
exploited commercial ly anywhere in filed.
SECTION 30 - Inventions Created Pur- (2) Where the act Is performed
the world .
suant to a Commission ; In respect of a layout-des ign created 120.2. Where the grounds for can-
Sec. 119. Appl/cation of Other s~ - on the basis of such analysis or cellation relate to a part of the Industrial
tlons <1nd Chapters. - 119. 1. The following SECTION 33 - Appointment of Agent
or Representative; evaluation and which Is Itself original design, cancellat ion may be effected to
p rovisions relating to patents shall apply in the meaning as provided herein; such ex t ent only. The restriction may be
mutatls mutandls to an Industrial design SECTION 56 - Surrender of Patent ; effected In t he form of an alteration of t he
reg istration.- (3) Where the act Is performed effected features of the design.
SECTION 57 - Correction of Mistakes In respect of a registered layout-
SECTION 21 - Novelty; of t he Office; design, or In respect of an Integrat ed 120.3. Grounds for Cancellati on of
SECTION 24 - Prior art: Provided, circuit In wh ich such a layout-design Layout-Design of I ntegrated Circuits. -
SECTION SB - Correction of Mistakes Is incorporated, that has be.en put on Any Interested person may petition that
That t he d isclosure Is contained In printed
In the Application; the market by or with the consent of the registration of a layout-design be
doc uments Of In any tangible form;
the right holder; canceled on the ground that:
SECTION 59 - Changes in Patents;
SECTION 25 - Non prejudicial Disclo-
(4) In respect of an integrated (I} the layout -design Is n ot
sur e ; SECTION 60 - Form and Publication protectable under this Act;
circuit where the person performing
of Amendment;
SECTION 28 - Right to a Patent; or ordering s uch an act did not kn'C>w (II) the right holder Is not
CHAPTER VII - Remedies of a Person and had no reasonable ground to entitled to protection under this Act;
SECTION 29 - First to FIie Ru le;
with a Right to Patent; know when acquiring t he integrated or
SECTION 30 - Inventions Created circuit or the article Incorporating
CHAPTER VIII - Rig hts of Patentees such an i ntegrated circuit, that (Ill) where the applicat ion fo r
Pursuant to a Comm ission;
and I nfringement of Patents: Provided, It Incorporated an unlawfully registration of t he layout-desig n,
SECTION 31 - Right of Priority: Pro- That the layout-design rights and llmltatlon reproduced layout-design: Provided, was not filed within two (2) years
vided, That t he application for Industrial of layout-design rights provided hereunder however, That after the t ime that from Its first commercial exploitation
des i gn shall be Hied within six (6) months shall govern: such person has received sufficient any where In t he world . ·
408 ESSENTIALS OF INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHI LIPPINES 4 09
REPUBLIC ACT NO. 8293

Whe re the g r ounds for cancellation accordance with the provisi ons of this law. as a result of the promotion of t he which registration is requested as a result
are established with respect only to (Sec. 2-A, R.A. No. 166a) mark; of the use that have been made of It in
a part of the layout-design, only the commerce in the Philippin es. The Office
corresponding part of t he registration shall Sec. 123. Regfstrabllity. - (f) Is identical with, or con- may accept as prima facfe evidence t hat
be cancelled . fusingly similar to, or const itutes a the mark has become dist inctive, as
123.1. A mark cannot be reg istered translation of a mark considered well-
if it: used in connection with the applicant's
Any canceled layout-design registra- known In accordance with the preced- goods or services in commerce, proof of
t ion or part thereof, shall be regarded as (a) Consists of immoral, lngparagraph, which is registered in substant ially exclusive and continuous use
null and void from t he beginning and may deceptive or scandalous matter, the Philipplnes with respect to goods thereof by t he appl icant i n commerce in
be expunged from the records of the In- o r matter which may disparage or or services which a.!JLllO.L.Sim;lar to the Philippines for five (5) years before the
tellectual Property Office. Reference t o all falsely suggest a connection with those with respect to which regis- date on which the cl<1im of d istinctilfen ess
ca nceled layout-design registration shall persons, living or dead, institutions, trat ion Is applied for: Provided, That is made.
be published In the ! PO Gazette. beliefs, or national symbols, or bring use of the mark In relation t o those
them into contempt or disrepute; goods or services would indicate a 123.3. The nature o f t he goods t o
~ i o n between those goods' or which t he mark is applied wil l not constitute
PART III ( b) Consists of the flag or services, and the owner of the reg - an obstacle to regist ration . (Sec. 4, R.A.
coat of arms or other insignia of istered marl<: Provided, further, That No. 166a)
TH E LAW ON T RADEMARKS,
the Philippines or any of its political the Interests of the owner of the reg-
SERVIC E MARKS AND T RADE NAMES subdivisions, or of any foreign nation, Sec. 1 24. Requirements of Appli-
istered mark are likely to be damaged
or any simulat ion t hereof; by such use; cation. -
Sec. 121. Definitions. - As used
In Part III, t he following terms have the (c) Consists of a name, portrait (g) ts likely to misle!l,d t he 124.1. The application for the
following meanings: or signature Identifying a particular public, particularly as to the nature, registration of t he mark shall be In
living individual except by h is written FIiipino or in English and shall contain the
121.1. " Mark" m ea ns any visible quality, characteristics or geographi-
consent, or the name, signature, following:
sig n capable of distinguishing the goods cal origin of the goods or services;
or portrait of a deceased Pres ident
(trademark) or services (service mark) of (a) A request for regi stration;
of t he Philippines, during the life of (h) Consists exclusively of
an enterprise and shall include a stamped his widow, if any, except by written sign s that are ,2.~neric for the goods
or marked conta iner o f goods; (Sec. 38, (b} The name and address of
consent of the widow; or services that t ey seek t~ Ident ify; the applicant;
R.A. No. 166a)
(d) Is identical with a regis- (I) Consists exclusively of (c) The name of a State of
121.2. "Collective mark" means any tered marl< belonging to a different signs or of Indications that have
visible sign designated as such In the which the applicant is a natlona l or
proprietor or a mark with an earlier become customary or usual t o where he has domicile; and the name
application for registration and capable designatetfiegolrus or services In
filing or priority date, in respect of: of a State In which t he applicant
of distinguishing the origin or any other everyday language or in bona fide has a real and effective Industrial or
common' characteristic, including the (i) The same goods or and established trade practice; commercial establishment, if any;
quality df ·goods o r services of different services, or
enterprises which . use the sign under the (J) Cons1sts exclusively of (d) Where the applicant is a
contro l of ,t he registered owner of the (ii) Closely related goods signs or of indications t hat may j uridical entity, the law under which it
collective mark; (Sec . 40, R.A. No. 166a) or services, or serve In trade to designate the kind, Is organized and existing;
quality, quantity, Intended purpose,
121.3. '• Trade name· means ~he riame (iii) If it nearly resembles value, geographical origin, t ime or (e) The appointment of an
or designation Identifying or distinguishing such a mark as to be likely to production of the goods or rendering agent or representative, if t he ap-
an enterprise; (Sec. 38, R.A. No. 166a) deceive or cause confusion; of the services, or other characteristics plicant is not domiciled in the Philip-
of the goods or services; pines;
121.4 . "Bureau" means the Bureau of (e) Is Identical wit h, or con-
Trademarl<s; fusingly similar to, or constitutes a (k) Consists of shapes that (f) Where the applicant claims
translation of a mark which is con- may be necessitated by technical t he priority of an earlier application,
121.5. "Director" means the Director sidered by the competent authority factors or by the nature of the goods an indication of :
of Trademarks; of t he Philippines to be well- known themselves or factors t hat affect their
internationally and in t he Philippines, Intrinsic value; (l) The name of t he State
121.6. "Regulations" means the
whether or not It Is registered here, with whose national office the
Rules of Practice . in Trademarks and as being already the mark of a person (1) Consists of ..l;!llOJ: alone, earlier applicat ion was filed or It
Service Marks formulated by the Director other than t he applicant for registra- unless defined by a given form; 9r flied with an office other t han a
of Trademarks and approved by the tion, and used for identical or similar / national office, the name of that
Director General; and (m) Is contrary to pub.Ile order office,
go.ads or services: Provided, That In or morality.
1 21. 7. "Examiner" means the trade- determining whet her a mark Is well- (fl) The date on which the
mark examiner. (Sec. 38, R.A. No. 166a) known, account shall be taken of the 123.2. As regards signs or devices earller application was fl ied, and
k nowledge of the relevant sector of mentioned In paragraphs (j}; (k), and ( I),
Sec. 122. How Marks are Acquired. the publlc, rather t han of the public nothing shall prevent the regist ration of (iii ) Where available, the
- The right s in a mark shall be acquired at large, including knowledge in the any such sign or device which has become applfcatlon number of the ea rlier
through registration made validly in Philippines which has been obtained dlstln'!'v! in relation .to th~ goods for appllcatlon;
 410 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF T HE PHILIPPI NES 411
REPUBLI C ACT NO. 8293

(g) Where the applicant claims be served upon the person so designated hereafter referred to as the "divisional ll)ark has been registered in the country of
color as a distinctive leature of the by leaving a copy thereof at t he address applications," by dist ributing among the orlgJn of the applicant.
marl<, a stat ement to that effect specified in the last designation filed. If the latter t he goods or services referred to
as well as the name or names of person so designat ed cannot be found at In the initial application. The divisional 131.3. Nothing In t his section shall
the color or colors claimed and an the address given in t he last designation, applications shall preserve the filing date entitle t he owner of a registration granted
Indication, in respect of each color, of such notice or process may be served upon of the Initial application or t he benefit of under t his section to sue for acts committed
the principal parts of the mark which the Director. (5ec. 3, R.A. No. 166a) the right of priority. ( n) prior t o the dat e on which his mar k was
are In that color; registered in this country: Provided, That,
Sec. 126. Disclaimers. - The Office Sec. 130. Signature and Other Means notwithstanding the foregoing, the owner
( h) Where the mar1< is a three- may allow or require the applicant to of Self-J<Jentificatlon. - of a well-known mark as defined in Section
dimensional mark, a statement to disdalm an unregistrable component of 123.l(e) or t his Act, that Is not registered
that effect ; an otherwise regist rable mark but such 130.1. Where a signature is re- in the Philippines, may, against an Identical
disclaimer shall not prejudice or affect the quired, t he Office shall accept: or confu singly similar mark, oppose its
(i) One or more reproductions applicant's or owner's rights then existing registration, or petition the cancellation
of t he mark, as prescribed in the (a) A handwritten slgn<1ture;
or t hereafter arisi ng in the disdalmed of Its registration or sue for unfair
Regulations; or
matter, nor such sha ll disclaimer prejudice competit ion, without prejudice to availing
(j) A t ransliteration or transla- or affect the applicant's or owner's right ( b) The use of other forms himself of other remedies provided for
t ion or t he m ark or of some parts or on another application of later date If t he or signature, such as a printed or under the law.
the mark, as prescribed in the Regu- disclaimed matter became distinctive of stamped signature, or the use of
the applicant's or owner's goods, business a seal, instead of a handwrit ten 13 1.4. ln like manner and subject to
lation s; the same conditions and requ irements,
or services. (Sec. 13, R.A. No. 166a) signature: Provided, That where a
( k) The names of t he goods seal Is used, It should be accompanied the right provided In this section may be
or services for which the registration Sec. 127. FIiing Date. - by an Indication in letters of the name based u pon a subsequent regularly filed
is sought, grooped according to the of the signatory. application In the same foreign country :
127.1. Requi rements. - The llllng Provided, That any foreign application filed
classes of the Nice Classification, dat e of an application shall be the date
toget her with the number of the class 130.2. The Office shall accept prior to such subsequent application has
on which the Office received the following been withdrawn, abandoned, or ot he rwise
of the said Classification to which communicatio ns to It by telecopler, or by
indications and elements in English or disposed of, without having been la id
each group of goods or services electronk means subject to t he conditions
Filipino: open to public inspection and without
belongs; and or requirements that will be prescribed by
(a) An express or implicit Indi- the Regulations. When comm-~nlcations are leaving any rights outstanding, and has
(I) A signature by, or other cation that the registration of a mark made by telefacsimile, the reproduction not served, nor thereafter shall serve, a s a
self-identification of, the applicant or is sought; of t he signature, or the reproduction or basis for claiming a nght of priority. (Sec.
his representative. the seal together wit h, where required, 37, R.A. No. J66a)
(b) The identity of the appli- the indication In letters of the name of
124. 2. By the Regulations wit hin Sec. 132. Appl/cation Number a nd
cant ; the natural person whose seal Is used,
th ree (3) y ears from the filing date of t he Filing Date. -
ap pllcation. Otherwise, t he appllcation appears . The original communicat ions
(c) Tndicatlons sufficient to
must be received by the Office within 132. 1. The Office shal l e)(am ine
shall be refused or the mark shall be contact the ap p licant or his represen-
thirty (30) days from date or receipt of the whether the application satisfies the
removed from the Register by the Director. tative, if any;
telefacslmlle. require ments for the grant of a fil ing date
124.3. One (1) application may (d) A re production of t he mark as provided In Section 127 and Regulat ions
whose registration is sought; and 130.3. No attestation, notarization, relating t hereto. H the application does
relate to several goods and/or services,
aut hentication, legalization or other not satisfy the filing requirements, the
whether t hey belo ng to one (1 ) class or to
( e) The list of t he goods or certlfic;itlon of any signature or other Office shall notify the applicant who shall
sev~ral classes of the Nice Classification.
services for which the registration Is means of self-Ident ification referred t o In within a period fixed by the Regulatio ns
124.4. I f during the examination sought. the preceding paragraphs, will be required, complete or correct the application as
of the a pplication, the Office finds f actual except , where the signature concerns the required, ot herwise, the applicat ion shall
basis to reasonably doubt the v eracity 127 .2. No filing date shall be surrender of a regist ration. (n) be considered withdrawn.
of any indication or element In the accorded until the required fee Is paid. (n)
application, It may require the applicant to
Sec. 131. Priority Right. - 132.2. Once an application meets
Sec. 128. Single Registration for t he filing requirements of Section 127, It
su bmit sufficient evidence to remove the Goods and/or Services. - Where goods 131.1. An application for registration shall be numbered In the sequential o rder,
d o ubt. (Sec. 5, R.A. No. 166a) and/or services belonging to several of a mark filed In t he Philippines by a and t he applicant shall be Informed of the
classes of the Nice Classification have been person referred to in Section 3, and who application number and the filing date of
Sec. 125. Representation; Address for Included In one ( 1) application, such an previously duly filed an application for
Seivice. - If the applicant Is not domiciled the application will be deemed to h av e
application shall result In one registratlon. reglstratJon of the same mark In one of been abandoned. (n)
or has no real and effective commercial (n) those countries, shall be considered as
est ablishment in the Philippines, he shall filed as of t he day the appQcatlon was first Sec. 133. Examln<Jtion and
designate by a written document filed Sec. 129. Division of Appl/cation. - llled In t he foreig n country. Publicat ion. -
in th e office, the name and address of a Any application referring to several goods
Phlllpplne resident who may be served or services, hereafter referred to as the 131.2. No registration or a mark In 133.1. Once the application meets
n otices or process In proceedings affecting "Initial application," may be divided by the t he Philippines by a person described In t he filing requirements of Section 127,
the mark. Such notices or services may applicant into t wo ( 2 ) or more applications, this section shall be granted until such the Office shall examine whether t he
 412 ESSENTIALS OF INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 413
REPUBLIC A CT NO. 8293

application meets the requ irements or Sec. 135, Notice and Hearing. - mark in t he n.ime of such assignee, and for Sec. 141. Sealed and Certified Copies
Section 124 and the mark as defined In Upon the filing of an opposition, the the unexpired part of the original period. as Evidence. - Copies of any records,
Section 121 is registrable under Section Office shall serve notice of t he filing books, papers, or drawings belonging t o
123. on the applicant, and of t he date of the 137.4. The Office sha ll record the Office relating to marks, and copies
hearing thereof upon t he applicant and the any cha nge of address, or add ress for of registrations, when authenticated by
133-2. Where tl1e Office finds that service, which shall be notified to it by t he
t he conditions referred to in Subsection opposltor and all ot her persons having any the se.il of the Office and certified by the
right, t itle or interest In the mark covered registered owner. Director of the Administrative, Financial
133.1 are fulfilled, it shall, upon payment
of the prescribed fee, forthwith cause t he by the application, as appear of record In 137.5. In the absence of any provi- and Human Resource Developm ent
application, as filed, to be published in the the Office. (Sec. 9, R.A. No. 165) Service Bu reau or in his name by an
sion to the contrary In this Act, communi-
prescribed manner. employee of t he Office duly authorized by
Sec. 136. Issuance and Publication cations to be made to the registered owner
by virtue of t his Act shall be sent t o him at said Director, shall be evidence in all cases
133,3. I f after t he examination, the of Certificate. - When the period for filing wherein the originals wou ld be evidence;
applicant is not entitled to registration for the opposition has expired, or when t he his last recorded address and, at the same,
and any person who applies and pays the
any r eason, the Office shall advise the Director of Legal Affairs shall have denied at his last recorded address for service.
prescribed fee shall secure such copies. (n)
applicant t hereof and t he reasons therefor. the opposition, the Office upon payment (Sec. 19, R.A. No. 166a)
The applicant shall have a period of four of the required fee, shall issue the Sec. 142. Correction o f Mistakes
Sec. 138. Certificates of Registration.
(4) months in which t o reply or amend certificate of registration. Upon issuance of Made by the Office. - Whenever a
- A certificate of registration of a mark material mistake in a reg istration incurred
his appllcatlon, which shall then be re- a certificate of registration, notice thereof shall be prima facie evidence of the
examined. The Regulations shall d etermine mak ing reference to the publication of the through the fault of the Office Is clearly
validity of the registration, the registrar\t•s disclosed by the records of the Office, a
t he p rocedure for t he re- examination or .ipplication shall be published In t he IPO ownership of the mark, and of t he
revival of an application as well as the Gazette. (Sec. 10, R.A. No. 165) certificate stating t he fact and nature
regist rant's excluslve right to use t he same of such mistake shall be issued wit hout
appeal to the Director of Trademarks from in con nection with the goods or services
a ny fina l action by the Examiner. Sec. 137. Registration of Mark and charge, recorded and a printed copy
Issuance of a Certificate to the Owner or and those that are related thereto specified thereof shall be attached t o each printed
133.4 _ An abandoned application his Assignee. - In the certificate. {Sec. 20, R.A. No. 165) copy of the registration. Such corrected
may be revived as a pending application registration shall there.ifter have the
within three (3) months from the date of Sec. 139_ PvbliCdtion of Registered
1 37.1. The Office shall maintain same effect as the original certificate;
abandonment, upon good cause shown Marks; Inspection of Register. -
a Register in which shall be registered or In the discretion of the Director of the
and the payment of the required fee. marks, numbered In the order of their 139.1. The Office shall pJbll sh, In Administrative, Financia l and Human
registration, and all transactions In respect the form and within the period fixed by Resource Development Service Bureau
1 33.S. The final decision of refusal
of each mark, required to be recorded by the Regulations, the mark registered, in a new certificate of registration may be
of t he Director of Trademarks shall be virtue of this law,
appealable to the Director General In the order of their registration, reproducing issued without charge, All certificates of
all the particulars referred to i n Subsection correction heretofore issued in accorda nce
accordance with the proceduf.~ fixed by the 137 .2. The registration of a mark
Regula tions. (Sec. 7, R.A. No. 166a) 137.2, with the Regulations and t he registration
shall Include a reproduction of t he mark to which they are attached shall have the
Sec. 134. Oppositio n. - Any person and shall mention: Its number; the name 139.2. Marks registered at the same force and effect as if such certificates
who believes that he wou ld be damaged and address of the registered owner and, Office may be Inspected free of charge and and t heir issuance had been authorized by
by the registration of a mark may, upon_ if the registered owner's address is outside any person may obtai n copies thereof at t his Act. (n)
payment of the required fee and within the country, his address for service within his own expense. This provision shall also
thirty (30) days after the publication the country; the dates of appflcatlon and be applicable to transactions recorded In Sec. 143. Correction of Mistakes
referred to In Subsection 133 .2, file with registration; If priority is claimed, an respect of any registered mark. (n) Made by Applicant. Whenever a
t he Office a,:i opposition t o the application. Indication of this fact, and the number; mistake is made in a registration and such
Such opposition shall be in writing and date and country bf the application, basis Sec. 140. Cancellation vpon Appli- m istake occurred in good faith t hroug h
verified by the oppositor or by any person of the priority claims; the list of goods or cation by Registrant; Amendment or the fault of the applicant, the Office may
on his behalf who knows the facts, and services In respect of which registration Disclaimer of Registration. Upon i ssue a certificate upon the payment of
shall specify the grounds on which It is has been granted, with the Indication of application of the registrant, the Office may the prescribed fee: Provided, That the
based and Include a statement of the t he corresponding class or classes; and permit any registration to be surrendered correction does not Involve any change In
facts relied u pon. Copies of certificates of such other data as the Regulations may for cancellation, and upon cancellat ion t he the registrat_ion that requires republication
registration of marks registered In other prescribe from t ime to time. appropriate ent ry shall be made in t he of the m ark. (n)
countries or other supporting documents records of the Office. Upon application
mentioned In the opposition shall be filed 137.3. A certificate of registration of the registrant and payment of the Sec. 144 . Cla sslficatlon of Goods and
of a mark may be Issued to the assignee prescribed fee, the Office for good cause Services, -
therewith, together with the t ranslation
In English, If not In the English language. of the applicant: Provided, That the may permit any registration to be amended 144.1. Each registration, and any
For good cause shown and upon payment assignment Is recorded In the Office. In or to be disclaimed in part: Provided, That publication of t he Office which concerns .in
of t he required surcharge, the t ime for case of a change of ownership, the Office the amendment or dlscl.i imer does not application or registration effected by the
filing an opposition may be extended by shall at the written request signed by the alter materially the character of the mark. Office shall Indicate the goods or services
the Director of Legal Affairs, who sholl owner, or his representative, or by the new Appropriate entry shall be made in the by their names, grouped according to the
notify the appl!cant of such extension. The owner, or his representative and upon a records of the Office upon t~ certificate of classes of the Nice Classification, and each
Regulations shall fix th e maximum period proper showing and the payment of the registration or; if said certificates is lost or g roup shall be preceded by the number
of time within which to fi le the opposition. prescribed fee, issue to such assignee a destroyed, upon a certifi~ereof. of the class of that Classification to which
(Sec. 8, R.A. No. 165a) new certificate of registrat ion of the said (Sec. 14, R.A. No. 166),.,,:-~\) I .1! 11-;--.,._,_ t hat group of goods or services belon gs,
 414 ESSENTIALS OF INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE O F THE PHILlPPlNES 415
REPUBLIC ACT NO. 8293

presented in the order of the classes of the 146.2. Such request sha ll be in for such qualit y control, or if such quality
said Classification. which the Mark is Used. - Registration of
Filipino or English and may be made at the mark shall not confer on t he registered control is not effectively carried out, the
any time within six (6) months before owner the right to preclude third parties license contract shall not be valid.
144.2. Goods or services may not
t he expiration of the period for which f rom using bona fide their names,
be considered as being similar or dissimilar 150.2. A license contract shall be
the registration was issue d or renewed addresses, pseudonyms, a geographical
to each other on the ground that, in any submitted to the Office which shall keep
registration or pu blication by the Office, or it may be made wit h in six ( 6 ) month~ name, or exact indications concerning the
after such expiration on payment ot the kind, quality, quant ity, destination, value, its contents confident ial but shall record it
they appear in different classes of the Nice and publish a reference thereto. A license
additional fee herein prescribed. place of origin, or time of production or of
Classificat ion. (Sec. 6, R.A. No. 166a} contract shall have no effect against third
146.3. If the Office refuses to supply, of their goods or services: Provided,
Sec. 145. Duration. - A certificat e parties until su ch recording is effected. The
renew the registration, it shall notify t he That such use Is confined to the purposes
of registration shall remain in Force for ten of mere ident ification or information and Regulations sh all fix the procedure for the
registrant of his refusal and the reasons recording of the license contract. (n)
(IO) years: Provided, T hat the registrant therefor. canriot mislead the public as to the source
$1lall file a declaration of actua l use and of t he goods or services. (n) Sec. 151. Cancellation. -
evidence to that effect, or shall show 146.4. An applicant for renewal not
va lid reasons based on the existence of domiciled In t he Philippines shall be subject Sec. 149. Assignment and Transfer of 151.1. A petition to cancel a regis-
obstacles to such use, as prescribed by to and comply with the requi rements of Appl/cation and Registration. - t ration of a mark under this Act may be
the Regulations, within one (1) year from this Ac ec. 15, R.A. No. 166a) filed with the Bureau of Legal Affairs by
149.1. An application for regist ra-
t he fifth anniversary of the date of the any person who believes t hat he Is or w ill
tion of a mark, or its regist ration, may be
registration of the mark. Otherwise, the be damaged by the registration of a mark
assigned or transferred with or without the
mark sha ll be removed from t he Register 147.1. Except In cases of Importat ion under this Act as follows:
t ransfer of the business using the mark.
by th~(Sec. 12, R.A. No. 166a) or drugs and medicines allowed und er (n) (a) Within five (5.)....y.ears_from
Section 72.1 of this Act and of off-patent
~~ Renewal. - 149.2. Such assignment or transfer the date of the regist ration of the
drugs and medicines, t he owner of a
registered mark shall have t he exclusive shall, however, be null and void if it is mark under this Act.
146.l. A certificate of registration
may be renewed for periods of ten (10) right to prevent all t hird parties not having liable to mislead .t he public, particularly as (bl Atanytime,if t heregistered
years at Its expi ration upon payment of the the owner's consent from using In t he regards the nature, source, manufacturing mark becomes the ~name for
prescribed fee and upon filing of a request. course of trade identical or similar signs or process, characteristics, or suitability for the goods or services, or a porti on
The request shall contain the following containers for goods or services which are their purpose, of the goods or sei;Ylces to thereof, for which it Is registered,
indications: identical or similar t o those In respect of which t he mark is applied. or has been ~ e d , or its
which t he trademark is regist ered where
149.3. The assignment of the registration was obtained f.cil.J,!.9J,!l.ently
(a) An Indication that renewa l such use would result In a likelihood of
application for registrat ion of a mark, or o r contrary to the provisions of this
is sought; confusion. In case of the use of an Identical
of its registration, shall be in writ ing and Act, or if t he registered mark is being
sign for Identical goods or services, a
(b) The name and address of require the signatures of the contracting used by, or with the permission of,
likeli hood of confusion shall be presumed.
t he· registrant or his successor-In- parties. Transfers by mergers or other t tie registrant so as to misrepresent
interest, hereafter r eferted to as the There shall be no Infringement of forms of succession may be made by any t he source of the goods or services
"rigti~ holder"; t rademarks or t radenam es of Imported document supporting such transfer. on or In connection with which t he
or sold - patented drugs and medicines mark Is used. If t he registered mark
(c) The regist ration number of allowed under Section 72.1 of this Act, as 149.4. Assignments and transfers becomes the generic name for less
the registration concerned; well as Imported or sold off-patent drugs of registration of marks shall be than all of the goods or services for
and medicines: Provided, That , said drugs recorded at t he Office on payment of the which it is registered, a petit ion to
( d ) The filing date of the appli- and medici nes bear the reg lsterE::ct marks prescribed fee; a~slgnment and t ransfers cancel t h e regist rat ion for only t hose
cation which resulted in the registra- t hat have not been tampered, unlawfully of applications for registration shall, on goods or services may be filed. A
t ion concerned to be renewed; modified, or infringed upon, u nder Section payment of the same fee, be provisionally registered mark shall not be deemed
155 of t his Code. recorded, and the mark, when registered, to be the generic name of goods or
(e) .Wh ere the right holder
has a representative, the name and shall be in t he name of the assignee or services solely because such mark is
147.2. The exclusive right of t he
address of t hat repr esentative; owner of a well-known mark defined In
trah~feree. also used...as a name of or.J:o identify
Subsection_ 123.l(e) which Is registered In a 11olq11e product or service. The
(f) The names of the recorded 149.5. Assignments and transfers
t he Phlllppl nes, shall ext end to goods and primary !'ignificaoce pf the regist ered
good s or services for which the shall have no effect against third parties
services which are not similar t o t hose In m ~ u bllc rather
renewa l is requested or t he names until they are recorded at t he Office. (Sec.
respect of which the mark Is registered: t han purchaser motivation sha ll be
of the recorded goods or services for 31, R.A. No. 166a)
Provided, That use of that mark In relation t he test for determining whether
which t he renewal Is not requested, ~ - License Contracts. - the registered mark has become t h e
to t hose goods or services would Indicat e
grouped according to the classes of
~
a connection between those goods or generic name of goods or services
the Nice Classificati on to which that Any license contract con- on or In connection with which It has
services and the owner of the registered
group of goods or services belongs cerning t he registration of a mark, or an been used. (n)
mark: Provided, further, That the Interests
and presented in the order of the application therefor, shall P\ovide for effec-
of the owner of the ·registered mark are ( c) At any t ime, If the regis-
classes of the said Classificat ion; and t ive control by the license, of t he quality
likely to be damaged by such use. (n ) tered owner of the mark without le-
of t he goods or ser:vlces of the licensee in
(g) A signature by the right Sec. 148. Use of Indications by Third connection with which the mark is used. gitimate reason fails to use the m ark
holder or his representative. Parties for Purposes Other t han those for If the license contract do.e s not provide within the Philippines, or t o cause It
 416
ESSENTIALS OF INTELLECTUAL PROPERTY LAW
I NTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 417
REPUBLI C ACT NO. 8293
to be used fn the Philippfnes by virtue
of a license during an Unmtell:Upl:ed Sec J 53. Requirements of Petition·
Notice and Hearing. _ Insofar as applica: measure of the damages suffered shall Sec. 158. Damages; Requirement
period of th_ree (3) year~ o.rJonger. th
ble, e petition for cancellation shall be In be either the reasonable profit which the of Notice. - In any suit for Infringement,
. 151.2. Notwithstanding the forego- the same form as that provided in Section complalnlng party would have made, had the owner of the registered mark shall not
1~g provisions, the court or the administr.i- 134 hereof, and notice and hearing shall the defendant not Infringed his rights, or be entitled to recover profits or damages
t1ve agency ves ted with jurisdiction to hear be as provided in Section 135 hereof. the profit which t he defendant actually unless the acts have been committed with
and adjudicate any action to enforce the made out of the Infringement, or In t he knowledge that such Imitat ion is likely to
rfghts to a registered mark shall likewise Sec. 154. Cancella tion ofRegistration. event such measure of damages cannot cause confusion, or to cause mistake, or
- Ir the Bureau of Legal Affairs finds that be readily ascertained with reasonable to deceive. Such knowledge Is presumed
exercise j urisdiction to determine whether
a ca~e for cancellation has been made certainty, then the court may award as If the registrant gives notice that his mark
the registration of said mark may be can-
out'. 11 shall order the cancellation of the damages a reasonable percentage based Is registered by displaying with the mark
celled In accordance with this Act. The fil-
registration. When the order or Judgment upon the amount of gross sales of the the words ~Registered Mark" or the letter
ln_g of a suit to enforce the registered mark becomes final, any right conferred by such defendant or the value of the services In R wit hin a circle or If the defendant had
with the proper court or agency shall ex- regis t~ t ion upon the registrant or any connection with which the mark or trade otherwise actual notice of the registration.
clud~ any other court or agency from as- pe'7on '" interest of record shall ter minate. name was used in the Infringement of the (Sec. 21, R.A. No. 166a)
suming jurisdiction over a subsequently Notice of cancellation shalt be publlshed In rights of the complalnlng party. (Sec. 23,
filed petition to cancel the same mark. On the IPO Gazette. (Sec. 19, R.A. No. Sec. 159. Limitations to Actions for
166a) Arst Par., R.A. No. 166a) 111

~
,
t he other hand, the earlier filing of petit ion Infringement . - Notwithstanding any

~l~
t o cancel the mark with "the Bureau of Le- Sec. 155. Remedies; f.!1fljDgemeaL - 156.2. On application of the com- other provision of this Act, the remedies
gal Affairs shall not constitute a prejudicial Any person who shall, without the consent plainant, the court may Impound during given to the owner of a r ight Infringed
question that must be resolved before an of the owner of the registered mark: . the pendency of the action, sales invoices under t his Act shall be limited as follows:
action to enforce the rights to same regis- \" { i,..,.",e /-Vl\..j ~ , w,..,ew.
tered mark may be decided. (Sec. 17 R A
No. 166a) ' · ·
155.1. 1./);e IH commerce any! re-
p~ductlon, counterfeit, copy, or colorable
and other documents evidencing sales. (n)

156.3. In cases where actual Intent

159.1. Notwithstanding t he provi-
sions of Section 155 hereof, a registered
\
Imitation of a registered mark or the same to m islead the public or to defraud the mark shall have no effect against any per-
Sec. 152. Non-use of a Mark When
Excused . -= ·
contarner or a dominant feature thereof in
connection with the sale, offering for sale,
complainant Is shown, In the discretion of
the court, the damages may be doubled.
son who, In good faith, before t he filing
date or the priority date, was using the
ri '1j
I

distribution, advertising of any goods or

services Including other preparatory steps
(Sec. 23, First Par., R.A. No. 166) mark for the purposes of his business or
enterprise: Provided, That his right may
'
152.1. Non-use of a mark may be I
excused If caused by circumstances arising necessary to carry out the sale of any 156.4. The complainant, ;.upon only be transferred or assigned together
Independently. of the will of the trademark goods or services on or in connection with proper showing, may also be granted with his enterprise or business or with that
owner. lack of funds shall not excuse non- which such use is likely to cause confusion Injunction. (Sec. 23, Second Par., R.A. No. part or his enterprise or business in_wt,ich
use of a mark. or to cause mistake, or to deceive; or ' 166a) the mark Is used.
152.2. The use of the mark In a 155-2 - Reproduce, counterfeit, copy Sec. 157. Power of Court to Order 159.2. Where an infringer who is
~orm different from the fonm In which or cororably Imitate a registered mark or a Infringing M.1terlal Destroyed. - engaged solely In the business of printing
it Is r~lstered, which does not alter its dom inant feature thereof and apply such the mark or other Infringing materials for
distinctive character; shall not be ground re~r~uctlon, counterfeit, copy or colorable 157.l. In any action arising under others Is an Innocent Infringer, the owner
for cancellation or remova l of the mark and Im itation to labels, signs, prints, packages, this Act, In which a violation of any right of the right Infringed shall be entitled as
shall not diminish -the protection granted to wrappers, receptacles or advertisements of the owner of the registered mark is against such Infringer only to an inj unction
the mark. lnt~mded to be used in commerce upon established, the court may order that against future printing.
or in connection with the sale offering for goods found t o be Infringing be, without
152.3. The use of a mark in con- sale, distribution, or advertising of goods compensation of any sort, disposed of 159.3. Where the infringement
nection with one or more of the goods or or services on or in connection with which outside the channels of commerce in such complained of Is contained In or Is part
services belo nging to the class In respect of such use is likely to cause confusion or a manner as to avoid any harm caused of paid advertisement In a newspaper,
which the m ark Is registered shall prevent to cause mistake, or to deceive shari be to t he right holder, or destroyed; and all magazine, or other similar perlodical or In
its cancellatloil or removal In respect of all liable I~ a civil action for infrlng~ment by labels, signs, prints, packages, wrappers, an.electronic communlcation, the remedies
other goods or services of the same class. the registrant for the remedies hereinafter receptades and advertisements In the of t he owner of the right infringed as
set forth : Provided, That the Infringement possession of t he defendant, bearing the against the publisher or distributor of such
152.4 . The use of a mark by a registered mark or trade name or any newspaper, magazine, or other similar
takes place at the moment any of the
company related with t he registrant or reproduction, counterfeit, copy or colorable periodical or electronic communication
acts stated In Subsection 155.l or this
applicant shalt Inure to the latter's benefit Imitation thereof, all plates, molds, shall be limited to an Injunction against the
subsection are committed regardless of
and such use shall not affect the validity of matrices and other means of making the presentat ion of such advertising matter
whe~her the_re Is actual sale of goods or
such mark or of Its registration: Provided same, shall be delivered up and destroyed. In fut ure Issues of such newspapers,
services usmg the Infringing material
That such mark Is not used In such manne~ (Sec. 22, R.A. No. 166a) · magazines, or other similar periodicals or
as t o deceive the public. If use of a mark 157 .2. In regard to counterfeit In fut ure tr.insmlsslons of such electronic
by a person Is controlled by the registrant Sec. 156. Actions, and Damages and goods, the simple removal of the communications. The limitations of this
or a~pllcant with respect to the nature and lnjunalon for Infringement. _ trademark affixed shall not be sufficient subparagraph shall apply only to innocent
quality of the goods or services, such use other than In exceptional cases which lnfrlngers: Provided, That such injunctive
156-1. The owner of a registered shall be determined by the Regulations, to relief shall not be available to the owner of
shall Inure to t he benefit o r the registrant
or applicant. (n) mark may recover damages from any penmlt the release of the goods into the the right Infringed with respect to an Issue
person who lnfrlnqes his riohts. and the channels of commerce . (Sec. 24, R.A. No. of a newspaper, magazine, or other slmlla r
nPrinrllr ;,il nr ;,in electronic communication
 418 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW INTEL1-ECTUAL PROPERTY CODE OF THE PHJUPPINES 4 19
REPUBLIC ACT NO. 8293

containing infringing matter where Sec. 163. Jurisdiction of Court. - All Imported merchandise which shall copy or use in contravention of the agreements
rest raining the dissemination of such actions under Sections 150, 155, 164, and simulate the name of any domestic product, referred to In Subsection 166.2 or that he
Infringing matter In any particular Issue 156 to 169 shall be brought before the or manufacturer, or dealer, or which shall uses or permits its use In a manner hable to
of such periodical or in an electronic proper court,; with appropriate jurisdiction copy or simulate a mark registered In deceive trade circles or the public as to the
communication would delay the delivery under existing laws. (Sec. 27, R.A. No. accordance with the provisions of th Is origin or any other common charact eristics
of such issue or transmission or such 166) Act, or shall bear a mark or trade name of t he goods or services concerned.
electronic communication is customarily calculated to Induce the public to belleve
conducted ,n accordance with t he sound Sec. 164. Notice of Aling Suit Given that the article Is manufactured In the 167.4. The registration of a collec-
business practice, and not due to any to the Director. - It shall be the duty or Philippines, or that It Is manufactured In tive mark, or an applicat ion therefor shall
method o r device adopted to evade this the clerks of such courts within one (1) any foreign country or locality other thc1n not be the subject of a license contract.
section or to prevent or delay the issuance month after the tiling or any action, suit, the country or locality where it Is In fact (Sec. 40, R.A. No. 166a)
or an injunction or restraining order with or proceeding involving a mark registered
manufactured, shall be admitted to entry
respect t o such infringing m atter. (n) under the provisions or this Act, to notify Sec. 168. Unfair Competition, Rights,
at any customhouse of the Philippines. In
the Director in writing setting forth: the Regulation .Jnd Remedies. -
order to aid the officers or the customs
159.4. There shall be no infringe- names and addresses of the litigants and
service In enforcing this prohibition, any 168.1. A person who has Identified
ment of trademarks or tradenames or designating t he number of the registration
or registrations and within one (1) month person who Is entitled to the benefits of in the mind of t he public the goods he
imported o r sold d rugs and medicines al•
after the judgment is entered or an appeal this Act, may require that his name and manufactures or deals in, his business or
lowed under Section 72.1 of this Act, as
Is tc1ken, the clerk of court shall give notice residence, and the name of the loca lity services from those of others, whether or
well as imported or sold off-patent drugs
an'd medicines: Provided, That said drugs thereof to the Office, and the latter shall In which his goods c1re manufactured, a not a registered mark Is employed, has a
and medicines bear the registered marks endorse the same upon the filewrapper copy of t he certificate or registration of property right in t he goodw111 of the said
that have not been tampered, unlawfully of the said registration or registrations his mark or trade name, to be recorded In goods, business or services so identified,
modified, or Infringed upon as defined un· and Incorporate the same as a part of the books which shall be kept for this purpose which will be protected in the same manner
der Section 155 of this Code. contents or said fllewrapper. (n) in the Bureau of Customs, under such as ot her property rights.
regulations as the Collector of Customs
Sec. 160. Right of Foreign Corpora- Sec. 165. Trade Names or Business with the approval of the Secretary of 168.2. Any person who shall e m ploy
tion to Sue In Trademark or Service Marie Names. - Finance shall prescribe, and may furnish to deception or any other means cont rary to
the said Bureau facsimiles or his name, the good faith by which he shall pass off t he
Enforcement Acti on. - Any foreign na-
tional or juridical person who meets the 165.1. A name or designation may name of the locality In which his goods are goods manufactured by him or in which
not be used as a trade name If by Its manurc1ctured, or his registered mar k or he deals, or his business, or services for
requiremen ts of Section 3 of this Act and
nature or the use to which such name or trade name, and thereupon the Collector those or the one having established such
does not engage in business In the Philip·
designation may be put, it is contrary to goodwill, or who shall commit any acts
pines may bring a civil or administrative of Customs shall cause one (1) or more
public order or morals and if, In particular, calculated to produce s.:,ld result, sh al I be
action hereunder for opposition, cancella- copies of the same to be transmitted to
It Is \lable to deceive trade circles or the each collector or to other proper omcer of guilty of unfair competition, and shall be
tion, Infringement, unfair competition, or
public as to the nature of the enterprise the Bureau of Customs. (Sec. 35, R.A. No. subject to an action therefor.
false designation of origin and false de-
Identified by that name. 166)
scription, w hether or not It is licensed to do 168.3. I n particular, and wit h out In
business In the Philippines under existing 165.2. (a) Notwithstanding any laws any way limiting the scope of protection
laws. (Sec. 21-A, R.A. No. 166a) Sec. 167. COiiective Marks. -
or regulations providing for any obligation against unfair competition, the following
to register trade names, such names shall 167.l. Subject t o Subsections 167.2 shall be deemed guilty of unfair
Sec. 161. Authority to Determine be protected, even prior to or without competition:
Right to Registration. - I n any action and 167.3, Sections 122 to 164 and 166
registration, against any unlawful act shall apply to collective marks, except that
Involvi ng a registered marl<, the court may committed by third parties. (a) Any person, who is selling
determine the right to registration, order references therein to •mark" shall be read
his goods and gives them the general
the cancellatlon of a registration, In whole (b) In particular, any subsequent as "collective mark." appearance of goods of another
or In part, and otherwise rectify t he register use of the trade name by a third party, 157.2. (a) An apJlljcation for regis- manufacturer or dealer; either as
with respect to the registration of any whether as a trade name or a mark or trat ion of a collective mark shall designate to t he goods themselves or in the
party to the action In the exerc\s~of this. collective m ark, or any such use of a s\mllar the mark as a collective mark and shall be wrapping of the packages In which
Judgment and orders shall be certified by trade name or mark, likely to mislead the accompanied by a copy or the agreement, t hey are contained, or the devices or
the court to the Director, who shall make public, shall be deemed unlawful. If any, governing the use of the collective words thereon, or In any other feature
appropriate entry upon the records of the of their appearance, which would
165.3. The remedies provided for In mark.
Bureau, and shall be controllec thereby. be likely to Influence purchasers to
(Sec. 25, R.A. No. 1 66a) Sections 153 t o 156 and Sections 166 and believe t hat the goods offered are
167 shall apply mutatls mutandls. (b) The registered owner of a
collective mark shall notify the Director those of a manufacturer or d ealer,
Sec. 162. Action for False or Fraudu- 165.4. Any change In the ownership of any changes made In respect of the other than the actual manufacturer
lent Declaration. - Any person who shall of a trade name shall be made with the or dealer, or who otherwise clothes
agreement referred to in paragraph (a).
procure registration In the Office of a mark transfer of the enterprise or part thereof the goods with such appearan ce c1s
by a false or fraudulent declaration or rep- Identified by that name. The provisions 167.3. In addition to t he grounds shall deceive the publlc and defraud
resentation, whether oral o r In writing, or of Subsections 149.2 to 149.4 shall apply provided In Section 149, the Court shall another of his legitimate trade, or
by any false means, shall be liable In a civil mutatls mutandls. cancel the registration of a collective mark any subsequent vendor of such goods
action by any person injured thereby for If t he person requesting the cancellation or any agent of any vendor engaged
any damages susta ined In consequence Sec. 166. Goods Bearing Infringing proves that only the registered owner uses In selling such goods wit h a like
thereof. (Sec. 26, R.A. No. 166) Marks or Trade Names. - No article of t he mark, or that he uses or permits its purpose;
 l 7
420 ESSENTIALS OF lNTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 421
REPUBLIC ACT NO. 8293

(b) Any person who by any given by this Act 111 cases Involving goods period, for non-profit purposes, by an in- CHAPTER II
<1rtifice, or device, or who employs rerused entry or seized. (Sec. 30, R.A. No. stitution the services of which are available
any othe r mean s calculated to induce 166a) to t he public, such as pu blic library or ar- ORIGINAL WORKS
the false belief thal such person Is chive;
offering the servkes of another who Sec. 170. Penalties. - Independent Sec. 172. Uterary and Artistic
has ident ified such services in the of the civil and administrative sanctions 171.6. "Public performance," In the Worlcs. -
mind of the public; or imposed by law, a criminal penalty of case or a work other than an audiovisual
imprisonment from two ( 2) years to five 172.1. Literary and artistic works,
work, Is the recitation, play ing, dancing,
(c) Any person who shall m ake (5) years and a fine rangi ng from Fifty hereinafter referred to as • works( are
acting or otherwise perform ing the
any false statement In the course of thousand pesos (PS0,000) to Two hundred original Intellectual creations in the literary
work, either directly or by means of
trade or who shall commit any other thousand pesos (P200,000), shall be and artistic domain protected from the
any device or process; In the case of
act contrary to good faith of a nat ure imposed on any person who Is found guilty moment of their creation and shall in clude
an audiovisual work, the showing of its
calcul<1ted to d iscredit the goods, of committing any of t he acts mentioned in In partlcula r:
Images in sequence and the making of
business or services of another. Section 155, Section 168 and Subsection the sounds accompanying it audible; and, (a} Books, pamphlets, articles
169.1. (Arts. 188 and 189, Revised Penal in the case of a sound recording, making and other writings;
168.4. The remedies provided by Code) the recorded sounds audible at a place
Sections 156, 157, and 161 shall apply ( b} Periodicals and newspa-
or at places where persons outside the
mutatls mutandls. (Sec. 29, R.A. No. pers;
PART IV nonmal circle of a family and t hat family's
166a)
closest social <1cqualntances are or can be
( c) Lectures, sermons, ad·
S ec. 169. False Designations of Origin; THE LAW ON COPYRIGHT present, Irrespective of whether they are
dresses, dissertations prepared for
Fals e Description or R epresentation. - or can be pres_ e nt at the same place and
Cha pter I oral delivery, whet her or not reduced
at the same time, or at different places
169.l. Any person who, on or In in writing or ot her material fo rm;
PREUMINARY PROVISIONS and/or at different times, and where the
connection with any goods or services, or perfonmance can be perceived without (d) letters;
any container for goods, uses In commerce the need for communication within t he
Sec. 171, Definitions. - For the
any word , term, name, symbol, or device, meaning of Subsection 171.3; (e) Dramatic or dramatlco·
purpose of t his Act , the following terms
o r any combination t hereof, or any fa lse musical compositions; choreographic
have the following meani ng: 171.7. " Published works" me<1ns
designation of origin, false or m isleading works or entertainment in dumb
description of fact, or false or misleading
representatio n of fact, which :
171.1. "Author" Is the natural
person who has created the work;
works, which, with the conse,rt of the
aut hors, are made available to the public by
wire or wireless means in such a way that
shows;
(f) Musical compositions, with
!
(a } Is likely to cause confusion, 171.2. A "collective work• is a work members of the public may access these or without words;
or to cause mistake, or to deceive wh ich has been created by two (2) or works from a place and time Individually
(g) Works of drawing, paint-
\1
as to the affiliation, connection, more natural persons at the initiative and chosen by them: Provided, Th<1t availability
or association of such person with ing, architecture, sculpture, engrav·
another person, or as to the origin,
sponsorship, or approval of his or
her goods, services, or commercial
under t he direction of another wit h the
understanding that It will be disclosed by
t he latter under his own name and that
contribut ing natural persons wlll not be
of such copies has been such, as to satisfy
t he reasonable requirements of the public,
having regard to t he natur~ of the work;
Ing, lith ography or other works of art;
models or designs for works of art; l
activities by anot her person; or 171.8. "Rental" Is t he transfer of ( h ) Original ornamental de-
Identified; signs or models for articles of manu·
t he possession of the orig inal or a copy of
(b) in commercial advertising 171.3. •c ommunication to the pub· a work or a sound record ing for a limited facture, whether or not registrable as
or promotion, misrepresents the lie' or "communicate to the public" means period of time, for profit-making purposes; an industrial design, and other works
nature, characteristics, qualities, the making of a work c1vailable to the pub· of applied art;
or geographic origin of h is or her or lie by wire or wireless means In such a way 171.9. " Reproduction• l.s the making
another person's goods, services, or of one ( l) or more copies of a work or " (I) Illustrations, maps, plans,
that members of the public may access sketches, charts and three-dimen·
commercial activities, shall be liable these wor ks from 6 place and time lnd l· sound recording In any m anner or form
s lonal works relative to geography,
to a c ivil actio n for damages and vldually chosen by them; (Sec. 41[EJ, P.O. No. 49a);
Injunction provided in Sections 156 topography, architecture or science;
and 157 of this Act by any person 171.4. A •computer• is an electronic 171.10. A •work of applied art• Is an
artistic creation with utilitarian funct ions (j) Drawings or plastic works
who believes that he or she is or likely or similar device having Information· of a scientific or technical character;
to be damaged by such act. processing capabilities, and a "computer or Incorporated In a useful article, whether
program• Is a set of Instructions eicpressed made by hand or produced on an industrial (k) Photographic works lnc lud·
169.2. Any goods marked or labeled In words, codes, schemes or In any other scale; Ing works produced by a process
In contravention of the provisions of this form, which is capable when Incorporated analogous to photography; lantern
Section shall not be imported Into the Phil· 171.U. A •work of the Government
In a medium that the computer can read, of t he Philippines• Is a work created by slides;
ippines or admitted entry at any custom· or causing the computer to perfonm or
house o f the Philippines. The owner, Im· an officer or employee of the Philippine (I) Audiovisual works and
achieve a particular task or result; Government or any of its subdivisions and
porter, or consignee of goods refused en- cinematographic works and works
try at a ny cust omhouse under this section 171. s. " Public lending· is the trans• lnstrumentalltles, Including government· produced by a process analogous to
may have any recourse under the customs fer of possession of the original or a copy owned or controlled corporations as part of cinematography or any process for
revenue laws or may have t he remedy of a work or sound recording for a limited his regular ly prescribed official duties. making audiovisual recordings;
422 ESSENTIALS O F INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 423
REPUBLIC ACT NO. 8293

(m) Pictorial illustratio ns and shall extend, under this law, to any idea, 177.1. Reproduction of the work or the employee uses the ti me, raclllt les
advertisements; procedure, system method or operation, substantial portion of t l1e work; and materials of the employer.
concept, principle, discovery or mere
(n) Computer programs; and data as such, even 1f they are expressed, 1 77 .2. Dramatization, translation, ( b) The employer; 1f the work
explained, illustrated or embodied in adaptation, abridgment, arrangement or is the result of the performance of
( o) Other hterary, scholarly, other transfo rmation of the work; his regularly-assigned duties, unles~
a work; news of the day and other
scientific and artistic works. there Is an agreement, express or
miscellaneous facts having the character 177.3. The first public distribution
of mere Items of press Information; or any implied, to t he contrary.
1 72. 2 . Wor k s are protected by the of the original and each copy of the work
sole fact of t heir creation, irrespective or official text of a legislative, administrative 178.4. In the case or a work-com•
by sale or other forms of transfer of
their mode or form or expression, as well or legal nature, as well as any official missioned by a person other than an em-
ownership;
as of their content, qual ity and purpose. translation thereof. (n) ployer or the author and who pays for it
(Sec. 2, P. D. No. 49a) 177.4. Rental of the original ora copy and the work is made in pursuance of the
Sec. 176. Works of the Govern-
of an audiovisual or cinematogra phic work, commission, the person who so com mis•
ment. - a work embodied In a sound recording, a
Chapter III sioned the work shall have ownership or
176. l. No copyright shall subsist in computer program, a compilation of data work, but the copyright thereto shall re-
DERIVATIVE WORKS any work of the Government or the Philip- and other materials or a musical work In main w,th t he creator, unless there Is a
pines. However, prior approval of the gov- graphic form, Irrespective of the ownership written stipulation to the contrary;
Sec. 173. Derivative Works. - ernment agency or offic.e wherein the work of the original or the copy which is the
is created shall be necessary for exploita- subject of the rental ; (n) 178.5. tn the case of audiovisual
173.1. The following derivative work, the copyright shall belong to lhe
tion of such work for profit. Such agency
works s hall also be protect ed by copyright: 177.S. Public display of the original producer, the author of the scenario, the
or office may, among other things, impose
as a c ondition the payment of royalties. No or a copy of the work; composer of the music, the film director,
(a) Dramatizations, transla-
prior approval or conditions shall be re- and the author of the work so adapled .
tions, adaptations, abridgments, ar- 177.6. Public performance or the
quired for the use of any purpose of stat- However, subject to contrary or other
rangem ents, and other alterations of work; and
utes, rules and regulations, and speeches, stipulations among the c reators, the
literary or artistic works; and
lectures, sermons, addresses, and dis- 177.7. Other communication to the producers sha II exercise the copyrlgh t to
(b) Collections of literary, sertations, pronounced, read or rendered public of the work. (Sec. 5, P.O. No. 49a} an extent required for the exhibition of the
scholarly or artistic works, and com- In courts of justice, before administrative work in any manner, 1.:xcept for the right
pilations of dat a and other materials agencies, in deliberative assembhes and in to collect performing license fees for t he
CHAPTER VI performance of musical compositions, with
which are original by reason or the meetings of public character. (Sec. 9, First
selection or coordination or arrange- Par., P.O. No. 49) OWNERSHIP OF COPYRIGHT or without words, which are incorporated
ment of their contents. (Sec. 2[PJ and Into the work ; and
{QJ, P.D. No. 49) 176.2. The Author of speeches,
Sec. 178. Rules on Copyright 178.6. In respect of letters, the
lectures, sermons, addresses, and disser-
Ownership. - Copyright ownership shall copyright shall belong to the writer subJect
l 73.2. The works referred to in tations mentioned In the preceding para-
be governed by the following rules: to the provisions of Article 723 of the Civll
paragraphs (a) and (b) or Subsection graphs shall have the exdusive right of
173.1 shall be protected as a new works: making a collectlon of his works. (n) 178.1. Subject to the provisions of Code. (Sec. 6, P.O. No. 4 9a)
Provided, however, That such new this section, In the case of original literary
work shall not affect the force or any 176.3. Notwithstanding the fore- Sec. 179. Anonymous and Pseudonv-
and artistic works, copyright shall belong
subsisting copyrigh t upon the ortginal going provisions, the Government Is not mous Works. - For purposes of this Act,
precluded from receiving and holding to the author of the work; the publishers shall be deemed to repre-
works employed or any part thereof, or t>e
construed to imply any right to such use of copyrights transferred to it by assignment, 178. 2. I n the case of works of joint sent the authors of articles and other writ-
the original works, or to secure or extend bequest or otherwise; nor shall publication authorship, the co-authors shall be the ings published without the names of the
copyright In such original works. (Sec. 8, or republication by the government , In a original owners of the copyright and In the authors or under pseudonyms, unless the
P.O. 49; Art. 10, TRIPS) public document of any work In which copy absence of agreement, their rights shall be contrary appears, or the pseudonyms or
right is subsistln9 be taken to cause any governed by the rules on co-ownership. If, adopted name leaves no doubts as to the
Sec. 174. Published Edition of Work. abridgment or annulment of the copyright however, a work of joint authorship consists author's identity, or if the author of the
- In addition to the right to publish granted or to authorize any use or appropriation of of parts that can be used separately and anonymous works d iscloses his identity.
by the author, his heirs or assigns, the such work without t he consent of the copy- the author of each part can be identified, (Sec. 7, P.O. No. 49)
publisher shall have a copy right consisting right owners. (Sec. 9, Third Par., P.D. No. the author of each part shall be the origInaI
merely or the rig ht of reproduction of 49) owner of the copyright In the part that he CHAPTER VII
the typographical arrangement of the
has created;
published editi on of the work. (n) TRANSFER OR ASSIGNMENT OF
CHAPTERV
178.3. In the case of work created COPYRIGHT
Chapter IV COPYRIGHT OR ECONOMIC RIGHTS by an author during and In t he course of
his employment, t he copyright shall belong Sec. 180. Righl's of Assignee. -
WORKS NOT PROTECTED Sec. 177. Copy or Economic Rights. to:
Subject to the provisions of Chapter 180.1. The copyright may be
Sec. 175. Unprotected Subject VIII, copyright or economic rights shall (a) The employee, if the assigned in whole o r in part. Within t he
Matter. - Notwithstanding the provisions consist of the exduslve right to carry out, creation of the object of copyright Is scope of the assignment, t he assignee
of Sections 172 and 173, no protection authorize or prevent the following acts: not a part or his regular duties even if Is entitled to all the rig hts and remedies
424 ESSENTIALS O F I NT ELLECTUAL PROPERTY LAW I NTELLECTUAL PROPERTY CODE OF THE PHI LIPPINES 425
REPUBLIC ACT NO. 8 293

which the assignor had with resp ect to t he lie, if done privately and free of charge (g) The making or ephemeral wit h other programs may also constitute
copynght. or if made strictly for a charitable or recordings by a broadcasting organi- fair use. I n determining whether the use
religious institution or society; (Sec. zation by means of its own facllltles made of a work in any particu lar case Is
180. 2. The copyright is no t deem ed 10(1) , P.O. No. 49) and for use in Its own broadcast; fair use, t he factors to be considered shall
assigned int er vivas in whole o r In pa rt include:
unless there is a written lndicat,on of such (b) The making of quotations {h) The use made of a work
intention. from a published work If they are by or under t he direction or control (a) The purpose and chara ct er
compat ible with fair use and only to of the Government, by the National of the use, including whether such
180.3. The submission of a literary, the extent j ustified for the purpose, Library or by educat ional, scientific or u se ,s of a commercial nature or is for
photographic or artistic work to a newspa- induding quotatio ns from newspaper professional institutions where such non-profit education purposes;
per, magazine or pe riodical for publication articles and periodicals In the form use is In the public Interest and Is
shall constitu te only a license to make a of press su mmaries: Provided, That compatible with fair use; (b) The nature of t he copy·
single publication unless a greater right is the source and the name of the righted work;
expressly granted. If two (2) or more per· author, If appearing on the work, are (i) The public performance or
sons Jointly own a copyright or any part the communication to the public of a ( c) The amount and substant l·
mentioned; (Sec. 11, Third Par., P.O.
thereof, neither or t h e owners shall be en- No. 49) . work, In a place where no admission ality o r the portion used in relation to
titled to grant licenses without t he prior fee is charged In respect of such public t he copyrighted work as a whole; and
written consent of the other owner or own• (c) The reproduction or com· performance or communication, by a
munlcatlon to the public by mass me· (d) The effect of the use upon
ers. (Sec. 15, P.O. No. 49a) club or Institution for charitable or t he potential market for or value of
dla of articles on current polltlcal, so- educational purpose only, whose aim
Sec. 181. Copyright and Material cial, economic, scientific or religious t he copyrighted work.
Is not profit making, subject to such
Object. - T h e copyright is disti nct from t opic, lectures, addresses and other other limitations as m ay be provided 185.2. The fact t hat a work Is
the property in the material object works of t he same nature, which are In the Regulations; (n) unpubl ished shall not by itself bar a finding
subj ect to it. Consequently, the t ransfer or delivered In public If such use is for of fair use if such finding is made upon
assignment of the copyright sha ll not itself information purposes and has not (j) Public display of t he original
consideration of all t he above factors.
constit ute a t r ansfer of t he material object. been expressly reserved: Provided, or a copy of the work not made by
Nor shall a transfer or assignment of the That the source Is clearly Indicated; means of a film, slide, television Sec. 186. Work of Architecture. -
sole copy or of one or several copies or the (Sec. 11, P.O. No. 49) Image or otherwise on screen or by Copyright In a work or architectur e shall
work Imply transfer o r assignmen t of the means of any other device or process: include the right to control the erection
copyright. (Sec. 16, P.O. No. 49) (d) The reproduction and com· Provided, That either the work has of any bu ilding whlcl1 reproduces the
munlcatlon to the public of literary, been published, or, t hat original or whole or a substantial part of t he w ork
Sec. 182. Fllfng of Assignment of scientific or artistic works as part of the copy displayed has been sold, either in its original form or In any f orm
License. - An assi_gnment or e xclusive reports of current events by means given away or otherwise transferred recognizably derived from t he original ;
license may b e filed i n duplicate with the of phot ography, cinematography or to another person by the author or his Provided, That the copyright in any such
National Library upon payment of the broadcast ing to the extent necessary successor In title; and work shall not Include the right to con trol
prescribed fee for registration in books for the purpose; (Sec. 12, P.O. No.
49) t he reconstruction or rehabilitation In t h e
and records kept for the purpose. Upon (k) Any use made of a work for same style as t he original of a building t o
recording, a copy of the Instrument shall the purpose of any judicial proceed·
( e) The Inclusion of a work In which the copyright relates. (n )
be, returned to t he sender with a notat ion lngs or for the giving of professional
of t he fact of record . Notice of the record a publication, broadcast, or other
advice by a legal practit ioner. Sec. 187. Reproduction of Published
shall be pub lished in the IPO Gazette. communication to the public, sound
recording or film, If such Inclusion Worlc. -
(Sec. 19, P.O. No. 49a) 184.2. The provisions of t his sect ion
Is made by way of illustration for shall be Interpreted In such a way as to 187.J. Notwithstanding the provi-
Sec. 183. Designation of Society. - teaching purposes and is compatible allow t he work to be used In a manner sion of Sectio n 177, and subject t o the
The copyright owners or their heirs .may with fair use: Provided, That the which does not conflict with the normal provisions of Subsection 187.2, the pri·
designate a s ociety of art1sts, writers or source and of the name of the exploitation of t he work and does not vate reproduction of a published work in
composers to enforce t heir economic rights author, If appearing In the work, are unreasonably prejudice the right holder's a single copy, where the reproduction Is
and moral righ ts on their behalf. (Sec. 32, mentioned; legitimate Int erest. made by a natural person exclusively for
P.D. No. 49a) research ar,d privat e study, shall be per-
(f) The ~cording made In Sec. 185. Fair Use of a Copyrighted
schools, universities, or educat ional mitted, without the authorization of the
Work. -
CHAPTER VIII Institutions of a work Included In owner of copyright in the work.
a broadcast for the use of such 185.1. The fair use of a copyrighted
187.2. The perm1ss1on granted
LIMITATIONS ON COPYRIGHT schools, universities or educational work for criticism, comment, news
under Subsection 187 .l shall not extend
Institutions: Provided, That such reporting, teaching Including multiple
Sec. 184. Limitations on Copyright. - to t he reproduction of:
recording must be deleted within a copies for classroom use, scholarship,
184.1. Notwithstand ing the provi- reasonable period after they were research, and similar purposes Is not an (a) A work of architecture in
sions of Chapte r V, t h e following acts shall first broadcast: Provided, further, Infringement of copyright. Decompilation, form of building or other constructio n;
not constitute Infringement of copyright: That such recording may not be made which Is understood here to be the
from audiovisual works which are part reproduction of the code and t ranslation (b l An entire book, or a subs-
(a) the recitation or perfor- of the general cinema repertoire of of the forms of the computer program tantial past thereof, or of a musical
mance of a work, once It has been featur.e films except for brief excerpts t o ach ieve the Int er-operability of an work In which graphics form b,y repro-
lawfully made accessible to the pub• of the work; Independently created computer program graphic means;
426 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW INT ELLECTUAL PROPERTY CODE OF T HE PHILIPPINES 427
REPUBLIC ACT NO. 8293

t he library but which is out of stock. (Sec. (iii) The importation, con- prescribe. A certificate of deposit shall be
(c) A compilation of data and
other materials; 13, P.O. No. 49a) sisting of not more than three issued for which the p rescribed fee shall be
(3) such copies or liken esses In collected and the copyright owner shall be
(d) A computer program Sec. 189. Reproduction of Computer any one invoice, is not for sa le exempt From making additional deposit of
except as provided in Section 189; Program. - but for t he use only or a ny reli- t he works with the National Library and the
and gious, charitable, or educational Supreme Court Library under other laws.
189.1. Notwithstanding the provi- society or institution duly incor- Jf, within t hree (3) weeks after receipt by
(e) Any work In cases where sions of Section 177, the reproduction in porated or registered, o r is for the copyright owner of a written demand
reproduction would unreasonably one ( 1) back-up copy or adaptation of a the encouragement of the fine from the directors for such deposit, the
conflict with a normal exploitation computer program shall be permitted, required copies or reproductions are not
arts, or for any state school, col-
of the work or would otherwise without the authorization of the author of delivered and the fee is not paid, the
lege, university, or free public
unreasonably prejudice the legitimate or other owner of copyright in, a compute~ copyright owner shall be liable to pay a fine
library in t he Philippines.
interests of the author. (n) program, by the lawful owner of that com- equivalent to the req uired fee per month of
puter program: Provided, That the copy or (bl When such copies form delay and to pay t o t he National Library
Sec. 188. Reprographic Reproduction adaptation is necessary for: parts of libraries and persona l bag- and the Supreme Court Library t he amount
by Libraries. - gage belonging to persons or families of the retail price of the best edit ion of the
(a) The use of the computer
188.1. Notwithstanding the provi- arriving from Foreign countries and work. Only the above- mentioned classes of
program in conjunction with a com-
sions of Subsection 177.6, any library or are not intended for sale: Provided, work shall be accepted for deposit by t he
puter for the purpose, and to the
archive whose activities are not for profit That such copies do not exceed three r')atlonal Library and the Supreme Court
extent, for which t he computer pro-
may, without the authorization of the au- (3). Library. (Sec. 26, P.O. No. 49a)
gram has been obtained; and
thor of copyright owner, make a sing le 190.2. Copies imported as allowed Sec. 192. Notice of Copyright. - Each
copy of the work by reprographic repro- (b) Archival purposes, and,
by this Section may not lawfully be used in copy of a work published o r offered for sale
duction: for the replacement of the lawfully
any wciy to violate t he righ ts of owner the may contain a notice bearing t he name of
owned copy of the computer program
(a) Whe re the work by reason copyright or annul or limit the protection the copyright owner, and the year of its
in the event that the lawfully obtained
secured by this Act, and such unlawful use first publication, and, In copies produced
of its fragile character or rarity cannot copy of the computer program Is lost,
shall be deemed an infringement and shall after t he creator's death, the year of such
be lent to user in its original form; destroyed or rendered unusable.
be punishable as such without prejud ice to death . (Sec. 27, P.O. No. 49a)
(b) Where the works are iso- 189.2. No copy or adaptation men- the proprietor's right of action.
lated articles contained in composite t ioned in this Section sha ll be used for any Chapter X
works or brief portions of other pub- purpose other than the ones determined 190.3. Subject to the approv al of the
lished works a nd the reproduction is in this Section, and any such copy or Secretary of Finance, the Commissioner of ~ORAL RIGHTS
necessary to supply them; when this adaptation shall be destroyed in the event Customs is hereby empowered to make
Is considered expedient, to person that continued possession of the copy of rules and regulations For preventing the sec. 193. Scope of Moral Righ ts.
requesting their loan for purposes of the computer program ceases to be lawful. importation of articles the importation of The author of a work shall, ind ependently
research or study Instead of lending which Is prohibited under this Section and of the economic rights in Section 177 or
189.3. This provision shall be with- under treaties and conventions to which the grant of an assignment or license with
the volumes or booklets which con-
out prej udice to the application of Section th e Philippines may be a party and for respect to such right, have t he rig ht:
tain them; and
185 whenever appropriate. (n) seizing and condemning and disposing of
(c) Where the making of such the same in case they are discovered after 193. 1. To require that the author~
Sec. 190. Importation for Personal ship of the works be attr ibuted to him, in
a copy Is in order to preserve and, If they have been imported. (Sec. 30, P.D.
Purposes. - particular, the right that h is name, as far
necessary In the event that It Is lost, No. 49)
destroyed or rendered unusable, 190.1. Notwithstanding the provi- as practicable, be indicated in a prominent
replace a copy, or to replace, in the sion of Subsection 177 .6, tiut subject to way on the copies, and In connection with
CHAPTER IX the public use of his work;
permanent collection of another the limitation under t he Subsection 185.2,
s_
i,r:i:flar library or archive, a copy the Importat ion of a copy of a work by an DEPOSIT ANO NOTICE 193.2. To make any alterations of
which' tias been lost, destroyed or individual for his personal purposes shall h is work prior to, or t o wit hhold it from
rendered unusable and copies are not be penmltted without the authorization of Sec. 19 t. Registration and Deposit publication;
available with the publisher. t he author of, or other owner of copyright with National Library and the Supreme
In, the work under the following circum- Court Library. - After t he nrst public 193. 3. To object to any distortion,
188.2 . Notwithstanding the above stances: dissemination of performance by aut hority mutilat ion or other modification .of, or
provisions, It shall not be penmissible to of the copyright owner of a work falling other derogatory action in relation to, his
produce a volume of a work published in (a) When copies of the work work which would be prejudicial to his
under Subsections 172.1, 172.2 and 172.3
severa l volumes or to produce m issing are not available In the Philippines honor or reputation; and
of this Act , there shall, for the purpose
tomes or pages of magazines or similar and:
of completing the records of the National 193.4. To restrain the use of his
works, unless the volume, tome or part is (i) Not more than one (1) Library and the Supreme Court Library,
out of stock; Provided, That every library name with respect to any work not of his
copy at one time Is imported for within three (3) weeks, be registered and own creation or in a distorted version of his
which, by law, is entitled to receive copies strictly individual use only; or deposited with it, by personal delivery
of a printed work, shall be entitled, when work. (Sec. 34, P.D. No. 49)
or by registered mail, two (2) complete
special reasons so require, to reprod uce (Ill The importation is by copies or reproduct ions of the work In such Sec. 194. Breach of Contract. - An
a copy of a published work which Is authority of and for the use of farm as the directors of said libraries may author cannot be compelled to · perform
considered necessary for t he collect ion of the Philippine Government; or
 428 INTELLECTUAL PROPERTY COD E OF THE PHILIPPINES 429
ESSENTI ALS OF INTELLECTUAL PROPERTY LAW
REPUBUC ACT NO. 8293

sounds fixed in a sound recording audible

his cont ract to create a work or for author's heirs, and in default of the heirs persons who act, sing, declaim, plaY In,
interpret, or otherwise perform literary to the public.
the publication of his work already in the Director of the National Library. '
existence. However, h e may be held liable and artistic work; Sec. 203 . Scope of Performers'
for damages for breach of such contract. 198.2. For purposes o f this Section Rights. - Subject to the provisions of
( Sec. 35, P.O. No. 49) "Person" shall mean any individual' 202.2. "Sound recording" means the
Section 212, performers shall enjoy the
partnership, corporation, association, o; fixation of t he sounds of a perforfllanc~
Sec. 195. Waiver of Moral Rights. - society. The Director of the National Library or of other sounds, or representation ° fol lowing exclusive rights:
An author may waive his rights mentioned may prescribe reasonable fees to be sound, other t han in the form of a fixation 203.1. As regards their performanc-
in Section 193 by a written inst rument, charged for his services in t he application incorporated In a cinematographic or other es, the right of authorizing:
but no such waiver shall be valid where its of provisions of this Section. (Sec. 39, P.D. audiovisual work;
effects is t o permit another: No. 49) ( a) The broadcasting and other
202.3. An " aud iovisual work or_ fix\ communication to the public of their
A§s.1. To use the name of t he Sec. 199. Enforcement Remed;es, - tlon" Is a work that consists of a sef1eS 0 performance; and
author, or the title of his work or Violation of any of the rights conferred by related images which Impart the irTlPres-
otherwise to make use of his repu~tion this Chapter shall entitle those charged sion of mot ion, wit h or without accomp<1- (bl The fixation of their unfixed
with respect to any version or adapt ation with their enforcement to the same rights nying sounds, susceptible of being made performance.
of his work which, because of alterations and remedies available to a copyright visible and, where accompanied by sou nds,
owner. In addition, damages which may be susceptible of being made audible; 203.2. The right of authorizing the
therein, would substantially tend to Injure direct or indirect reproduction of t heir
the l iterary or artistic ceputatjpn nf aoathPJ:- avalled of under the Civil Code may also
be recovered. Any damage recovered after 202.4. " Fixation• means t he erribodl- performances fixed In sound recordings, In
~;or ment of sounds, or of the representations an y m anner or form;
the creator's death shall be held in trust for
195.2. To use the name of the author and remitted to his heirs, and In default of thereof, from which t hey can be perceived,
reproduced or communicated through a 203.3. Subject to the provisions of
with respect to a work he did not create. t he heirs, shall belong to the gov ernment. Section 206, the right of authorizing the
(Sec. 36, P.D. No. 49) (Sec. 40, P.O. No. 49) device;
first public distribution of the original and
Sec. 196. Contribution to Collective 202.5. " Producer of a sound reco rd - copies of their performance fixed In the
Wo rk. - When an author contributes to
Chapter XI ing" means the person, or the legal en- sound recording t hrough sale or rental or
a collective work, his right t o have his tity, who or which takes the initiative and other forms of transfer of ownership;
RIGHTS TO PROCEEDS IN
contribut ion attributed to him is deemed SUBSEQUENT TRANSFERS has the responsibility for the first fixation
of the sounds of a performance or other 203.4. The right of authorizing the
waived u nless he expressly reserves it. commercial rental to the public of the
(Sec. 37, P.D. No. 49) Sec. 200. Sale or Lease of Work. - sounds, or t he repr~sentation o( sounds;
origi nal and copies of t heir performances
In every sale or lease of an original work 202.6. "Publication of a fixed perfor- fixed In sound recordings, even after
Sec. 197. Editing, Arranging and of painting or sculpture or of the original
mance or a sound recording" means t h e distr ibution of them by, or pursuant to the
Adaptation of Work. - In the absence of a manuscript of a writer or composer, offering of copies of t he fixed perforrTlan_ce authorization by the performer ; and
contrary stipulation at t he time an author subsequent to the first disposition thereof
or the sound recording to the publiC,.w,tdh
licenses or permits anqther to use his by the author, the aut hor or his heirs shall 203.5. The right of authorizing the
the consent of the right holder: Provrde ,
work, the necessary editing, arranging or have an inalienable _rig~t t,o participate in making available to the public of their
the gross proceeds of the safe or lease to That copies are offered to the public In rea-
adaptation of such work, for publication, performances fixed In sound recordings,
the extent of'fiv:e .percent (5%). This right sonable quality;
bro adcast,. use In a motion picture, by w ire or wireless m eans, In such a way
dramatization, or mechanical or electrical shall exist durln'g 't he lifetime of the author 202.7. " Broadcasting" means the that members of the public may access
reproduction in accordance with the and for fifty (SO) years after his death. transmission by wireless means for the them from a place ,i'nd t ime individually
reasonable and customary standards or (Sec. 31, P.D. No. 49)
public reception of sounds orof images 0 ~ of chosen by t h em. (Sec. 42, P. O. No. 49a)
requirements of the medium in which the Sec. 201. Works Not Covered. - The representations thereof; such t ransfTliss,on
work Is to be used,. shall not be deemed to by satellite Is also "broadcasting" where s ec. 204 . Moral Rights of Perform-
provisions of this Chapter shall not apply
cont ravene the auth r's nghts secured by to prints, etchings, engravings, works the means for decrypting are provided to ers. -
th is chapter. Nor shall complete destruction of applied art, or works of similar kind the public by the broadcasting organliatlon 204.1. Independently of a p~rform-
ol' a Wu, k mu.:onditionally transferred by wherein the author primarily derives gain or wit h its consent; er 's economic rights, t he performer, shall,
the author be deem ed to violate such from the proceeds of reproductions. (Sec. as regards h is live aural perfon:nances or
rights. (Sec. 38, P.D. No. 49) 33, P.D. No. 49) 202.8. "Broadcasting organiia_t lon "
performances fixed in sound recordings,
shall Include a natural person or a jur 1d 1c~I
Sec. 198. Term of Moral Rights. - have -the right t o claim to be identified as
Chapter XII entity duly aut horized to engage n
the performer of his performances, except
broadcasting; and
~ 8 .1. The rights of an author under RIGHTS OF PERFORMERS, whern the omission Is dictated by the man-
this c hapte r shall last during t he lifetime of PRODUCERS OF SOUNDS 202.9. "Communication to the pu b: ner of the u se of the performance, a nd to
the aut hor and for fifty (50) years after his RECORDINGS AND BROADCASTING lie of a performance o r a sound recording o bject to any distortion, mutilation or oth-
death and shall not be assignable or subject ORGANIZATIONS means the transmission to the· put,IIC, ~~ er modification of his performances t hat
to license. The person or persons to be any medium , otherwise than by i,r0 \ would be prejudicial to his reputation.
charged with the posthumous enforcement Sec. 202. Definitions. - For the pur- casting, of sounds-of a performance or t ~
pose of this Act, the following t erms shall 204.2. The rights granted to a
of these r ights shall be named In writ Ing representations of sounds fixed in a so~n
9 performer i n accordance with Subsection
to be fi led with the National Library. In have the following meanings: recording . For purposes of Sectlof1 2d ; 203.1 shall be maintained and exercised
default of such p erson or persons, such "communication to the public" incl tJ e f
202.1. " Performers· are actors, 0 fifty (50) years after his death, by his heirs,
enfo rcement shall devolve upon either the making the sounds or representation s
singers, musicians, dancers, and other
 430
ESSENTIALS OF INTELLECTUAL PROPERTY LAW
INT ELLECTUAL PROPERTY CODE OF T HE PHILIPPINES 4 31
REPUBLIC ACT NO. 8293

and In def-ault of heirs, the government,

where protection is claimed. (Sec. 43, P.O. pursuant to authorization by the producer 212.4. Fair use of the broadcast
(Sec. 46, P.O. No. 49a) · death or of publicaL,on, bul such t erms
No. 49) subject to the conditions under SectJon shal l always be deemed tQ beom Qo ~
Sec. 209. Communication to the 185. (sec. 44, P.O. No. 49a) first day o r January of the year fQUowing
Sec. 205. Limitation on Right. - ffie event which gave nse to t ~m (Sec.
Public. - If a sound recording published for
commercial purposes, or a reproduction of ~ a pte r XVI 25, P.D. No. 49)
205. 1. Subject to the provisions
or Section 206, once t he performer has such sound recording, Is used directly for
TERM OF PROTECTION Sec. 2 15. Term of Protection for
authorized the broadcasting or fixation of broadcasting or for other communication
Performers, Producers and Broadcasting
✓.213.
his performance, the provisions of Sections to ttie public, or is publicly performed With
Term of Protection. Organiz ations. -
203 shall have no fu rther application. the intention of making and enhancing
profit, a single equitable remuneration 213. L Subject t o the provisions of
2 15.l. The rights granted to per-
205.2. The provisions of Section for the performer or performers, and the Subsections 213.2 to 213.5, the copyrighl
formers and producers or sound recordings
184 and Section 185 shall apply mutatls producer of the sound recording shall be In works under Sections 172 and 173 shall under this law shall expire:
mutandls to performers. ( n) paid by the user to both t~ performers be protected during the life of the author
and the producer, who, in the· absence or and for fifty (50) years after his death. This (a) For performances not
Sec. 206. Additional Remuneration any agreement shall share equally. (Sec. rule also applies to posthumous works. incorporated in recordings, fifty (SO)
for Subsequent Communications or 47, P. O. No. 49a) (Sec. 21, First Sentence, P.O. No. 49a) years from the end or t1ie year In
Broadcasts. - Unless ottierwlse provided which the performance took place;
In the contract, in every communication to Sec. 210. Limitation of Right. _ ~ 2. I n case of works of Joint and
the public or broadcast of a performance Sections 184 and 185 shall apply mutaus authorship, the eco nomic rights shall
subsequent to the first communication mutandis to the producer of sound be protected during the life of the last (b) For sound or Image and
or broadcast thereof by the broadcasting recordings. (Sec. 48, P.O. No. 49a) surviving author and for fifty (50) years sou nd recordings and for perfor-
organization, the performer shall be alter his death. (5ec. 21, Second Sentence, mances Incorporated therein, fifty
entitled to an additional remuneration Chapter XIV P.O. No. 49) (SO) y ears from the end or the year In
equivalent t o at least five percent (5%) which t he recording took place.
of the o riginal compensation he or she BROADCAS TING fil.3. In case of anonymous or
received for the first communication or ORGANIZATIONS pseudonymous works, the copyright shall 2 15.2. In case of broadcasts, t he
broadcast. {n) be protected for fifty (50) years from the term shall be twenty (20 ) years from
Sec. 211. Scope of Right. date on which the work was first lawfully the date the broildcast took place . The
Sec. 207. Contract Terms. - Nothing Subject to the provisions or Section 212 published: Provided, That where, before extended term shall be applied only to old
in this Chapter 6hall be const rued to broadcasting organl?ations shall enjoy th~ the expiration of the said period,. the works with subsisting protection under the
deprive performers of the right to agree exclusive right to carry out, aut horize or author's Identity Is revealed or is no longer prior law. (Sec. 55, P.O. No. 49a)
by contracts on te rms and conditions more prevent any of the following acts: in doubt, the provisions of Subsect ions
favorable for them In respect of any use of 213.1 and 213.2 shall apply, as the case
their performance. (n) 211. l. The rebroadcasting of ttielr Chapter XVII .
may be: Provided, further, That such
broadcasts;
works if ngt published beCore sball ..Q!: ~ NFRINGEMENT
211.2. The rec,;>rding in any manner, ect d for fi 50 ears counted from
Chapter XIn
lndudlng the making of films or the use the making of the work. ec. , . . No. Sec. 216. Remedies for I nfringe -
PRODUCERS OF SOUND of video tape, of t heir broadcasts for the 49) ment. -
RECORDINGS purpose of communication to the public or
t elevision broadcasts of t he same; and
--i13.4. In case of works of applied 2 16.1. Any person infringing a right
Sec. 208. Scope of Right. - Subj ect art the protection shall be for a period of protected under this law shall be liable:
to the provisions of Sect ion 212, producers 211.3. The use of such records for twenty-five (25) years from the date of
fresh transmissions or for fresh recording. making. (Sec. Z4{B}, P.O. No. 49a) (a) To an Injunction restraining
of soun d recordings shall enjoy the
following exclusive rights: (Sec. 52, P.O. No. 49) such Infringement. The court may
~ 3.5. In cas e of photographic also order the defendant to desist
208.1. The right to au thorize the works, the protection shall be for fifty (50) from an infringement, among others,
Chapter XV years from publication of the work and, to prevent the entry Into t he channels
direct or indirect reproductlon of their
sound recordings, In any manner or form; UMITATIONS ON PROTECTION if unpublished, fifty (50) years from the of commerce of imported goods that
the placing of these reproductions In the making. (Sec. Z4{C}, P.O. No. 49a) Involve an Infringement, immediately
market a nd the right of rental o r lending; Sec. 212. Limitatio ns Ofl Rights. after customs d earance of such
- Sections 203, 208, and 209 shall not
~ 3 .6. I n case of audiovisual works good s.
208.2. 1lle right to authorize the Including those produced by process
apply where the acts referred to In those
first pub lic distribution of the original and Sections ilre related to: analogous t o photography or any process {b) Pay to the copyright pro-
copies of their sound recordings through for making audiovisual recordings, t he prietor or his assigns _or heirs such
sale or rental or other forms of transferring 212.1. The use by a natural person term shall be fifty {SO) years from date of actual damages, including legal_C<?Sts
ownership; and exclusively for his own personal purposes; publication and, If 110011bllsbed, from the.. and other expenses, as he may have
state of ma~. (Sec. 24[CJ, P.O. No. 49a} Incu rred due t o the Infringement as
208 .3. The right to authorize the 212.2. Using short excerpts for well as the profits the Infringer may
commercial rental to the public of the reporting cu rrent events; ~ Sec. 214, calculatlon of Term. - The have made due to such infringement,
original and copies of their sound record- term of protection subsequent to the death and In proving profits the plaintiff
ings, even alter distribution by them by or 212.3. Use solely for the purpose or of the author provided in the preceding shall be required to prove sales only
teaching or for scientific research; and Section shall run from the date of his and the defendant shall be required to I
w wnJ:JtA hi,~,./,._;,/,
I~
432 ESSENTIALS OF INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES 433
REPUBLIC ACT NO. 8293

prove ev ery element of cost which he pesos (Pl,500,000) for t he third and 218.2. In an action under this 220.2. Where the statement Is con-
claims, or, in lieu of act;ual. damages subsequent offenses. Chapter. tradicted by another statement recorded in
and profits, such damages which to the internatlonal register. (n)
(d ) 1n all cases, subsidiary (a) Copyright shall be pre•
the court shall appear to be just and surned to subsist in the work or
shall not be regarded as penalty. imprisonment In cases,of insolvency.
other subject matter to which the Chapter XVIII
( c) Deliver under oath, for 217.2. In determining the number action relates If the defendant does
of y ears of imprisonment and t he amount not put in issue the question whether SCOPE OF APPLICATION
impounding during the pendency
of the action, upon such terms and of fine, the court shall consider the value of copyright subsists In the work or
the Infringing materia.ls that the defendant Sec. 221. Points of Attachment for
conditions as the court may prescribe, other subject matter;
has produced or manufactured and the Works under Sections 172 and 173. -
sales invoices and other document s (bl Where the subsistence
evidencing sales, all articles and damage that the copyright owne r has 221.1. The protection afforded
suffered by reason of the infringement. of the copyright is established, the
their packaging alleged to infringe a plaintiff shall be presumed to be the by this Act to copyrightable works under
copyright and implements for making ~17.3. Any person who at the time owner of the copyright If he claims to Sections 172 and 173 shall apply to:
them . when copyright subsists in a work has in be the owner of the copyright and the
defendant does not put In Issue the (a) Works of authors who are
( d) Deliver under oath for his possession an article which he knows, nationals of, or have their habitual
destruction without any compensation or ought to know, to be an infringing copy question of his ownership; and
residence In the Phlllpplnes;
all Infringing copies or devices, as well of the work for the purpose of: (c) Where the defendant,
as all plates, molds, or other means wit hout good faith, puts In Issue the (b) Audiovisual works the pro-
(a) Selling, letting for hire, or
for making such inf ringing copies as by way of t rade offering or exposing questions of whether copyright sub· ducer of which has his headquarters
the court may order. sists in a work or other subject mat• or habitual residence In the Philip·
for sale, or hire, the article;
ter to which the action relates, or the pines;
( e) Such other terms and ownership of copyright in such work
(b) Distributing the article
conditions, Including t he payment of (c) Works of architecture
for purpose of trade, or fo r any or subject matter, thereby occasion-
moral and exemplary damages, which erected in the Phlllpplnes or other ar-
other purpose to an extent t hat will Ing unnecessary costs or delay in the
the court may deem proper, wise tistic works incorporated In a building
prejudice the rights of the copy right proceedings, the court may direct
• and equitable and the dest ruction of or other structure located In the Phil-
owne.r in the work ; or that any costs to the defendant in
Infringing copies of the work even in ippines;
respect of the action shall not be al-
the event of acquittal in a criminal (c) Trade exhibit of the article lowed by him and that any costs oc-
case. in public, shall be guilty of an o ffense (d) Works first published In the
casioned by the defendant to other
and shall be ~ o n conviction to parties shall be paid by him to such Philippines; and
216.2 . In an Infringement action,
the court s hall also have the power to j mw-is.ru.w ent and firq as a bo\l.e.. other parties. (n) (e) Works first published in
order the seizure <1nd Impounding of any mentioned. (Sec. 29, P.O. No. 49a)
Sec. 219. Presumption of Author· another country but also published
article which may serve as evidence in t he Sec. 218. Affidavit Evidence. - In the Phlllpplnes within thirty (30)
ship. -
court p r oceedings. (Sec. 2 8, P.O. No. 49a) days, Irrespective of the nationality
2 18. 1. In ;in action unde_r t his 219.1. The natural person whose or residence of the authors.
,,;::::- Sec. 217. Criminal Penalties . - Chapter, an affidavit made before a notary name Is indicated on a work in the usual
21, 7.1. Any person infringing any public by or on behalf of t he owner of the manner as the author shall, in the absence 221.2. The provisions of this Act
right secured by provisions of Part IV of this copyright in any work or other subject of proof to the contrary, be presumed to shall also apply to works that are to Ile
Act or a id Ing or abetting such infringement matter and stating that: be the author of the work. This provision protected by virtue of and in accordance
shall be guilty of a cr ime punishable by : shall be applicable even if the name Is a with any international convention or other
(a) At t he time specified there- pseudonym, where the pseudonym leaves international agreement to which the
(a) Imprisonment of one (1 ) in, copyright subsisted in the work or no doubt as to the identity of the author. Phl l l ? a party. (n)
year to t hree (3) years plus a fine other subject matter;
ranging from Fifty thousand pesos 219.2. The person or body, corpo- ~c. 222. Points of Attachment for
(bl He or the person named rate whose name appears on an audiovi- Performers. - The provisions of this Act on
( PS0,000) to One hundred fifty
therein Is the owner of t he copy right; sual work in the usual manner shall, in the the protection of performers shall apply to:
thousand pesos ( PlS0,000) for the
first offense. and absence of proof to the contrary, be pre-
sumed to be the maker of said work. (n) 222.1. Performers who are nationals
(b) I mprisonment of t hree ( 3) (c) The copy of the work of the Philippines;
or other subj ect mat ter annexed Sec. 220. International Registration
years and one ( 1) day to six (6) years
thereto Is a t rue copy thereof, shall of Works. - A statement concerning a 222.2. Performers who are not
plus a fine ranging from One hundred
be admitted in ev idence in any work, recorded in an international register nationals of the Philippines but whose
fifty thousand pesos (PlS0,000)
proceedings for an offense under In accordance wit h an internat ional treaty performances:
to Five hundred thousand pesos
this Chapter and shall be pr/ma facie to which the Philippines is or may become
( PS00,000) for the second offense. (a) Toke place in the Philip·
proof of the matters therein stilted a party, shall be construed as t rue until the
( c ) Imprisonment of six ( 6) until t he contrary is proved, and th e cont rary is proved except : pines; or
years and o ne ( 1) day to nine (9) court before which such affidav it
is produced sha ll assum e that t he 220.1. Where the statement cannot ( b) Are incorporated In sound
years plus a fine ranging from Fiv e
h undred thousand pesos (PS00,000) affidavit was made by or on behalf of be valid under this Act or any other law recordings that are protected under
to One millio n five hundred thousa nd t he owner of t he copyright . concerning intellect ual property. this Act; or
434 ESSENTIALS OF I NTELLECTUAL PROPERTY LAW I NTELLECTUAL PRO PERTY CODE OF T HE PHILIPPINES 435
REPUBLIC ACT NO. 8293

(c) Which has not been fixed and instruments in writing filed with the 232.2. Unless expressly provided In 235.2. All applications for registra-
In sound recording but are carried by National Library and the Supreme Court this Act or other statutes, appeals from tion of marks or trade names pendi ng In
br·oadcast qua lifylng for p rotection Library in accordance with the provisions decisions of admi nistrative officials shall the Bureau of Patents, Trademarks and
under this Act. (n) of t his Act shall become the property of t he be provided In the Regulations. (n) Technology Transfer at the effective date
Government. (Sec. 60, P.O. No. 49) of this Act may be amended, if practicable
Sec. 223. Points of Attachment for sec. 233. Organization of the Office; to bring them under the provisions of t his
Sound Recordings. - The provisions of this Sec. 228. Pub/Jc Records. - The sec- Exemption from the Salary Standardization Act. The prosecution of such applications
Act on t he protection of sound recordings tion or division of the National Library and Law and the Attrition Law. - so amended and the grant of registra-
shall apply to: the Supreme Court Library charged with tions t hereon shall be proceeded with In
receiving copies and Instruments depos- 233. 1. The Office shall be organized
223. t. sound recordings the pro- within one ( l) year a~ er the approval accordance with the provisions of this Act.
ited and with keeping records required un• lf such amendments are not made, the
ducers of which are nationals of t he der this Act and everything in it shall be of t his Act. It shall not be subject to the
provisions of Republic Act No. 7430 . prosecution of said applications shall be
Philippines; and opened to public Inspection. The Director proceed ed with and registrations thereon
223.2. Sound recordings that were of the National Library Is empowered to 233.2., The Office shall Institute its granted In accordance with the Acts und~r
,ssue such safeguards and regulations as own compensation structure: Provided, which said applications were Hied, and said
first pu blished in the Philippines. (n)
may be necessary to implement this Sec- That t he Office shall make its own system Acts hereby continued In force to this ex-
Sec. 224. Poin ts of Attachment for tion and other prov isions of this Act. (Sec. conform as closely as possible with the tent for t his purpose only, notwithstanding
Broadcasts. - 61, P.O. No. 49) princi ples provided for under Republic Act the foregoing general repeal thereof. (n)
Sec. 229. Copyright Division fees. No. 6758. (n)
224. I . The provisions of this Act on Sec. 236. Preservation of Existing
the protection of broadcasts shall apply to: - The Copyrigh t Section of the National sec. 234. Abo/It/on of the Bvreau Rights. - Nothing herein shall adversely
Library shall be classified as a Division upon of Patent's, Trademarks, and Technology affect the rights on the enforcement of
(a ) Broadcasts of broadcasting the effectlvlty of this Act. The National Transfer. - The Bureau of Patents,
organizations the headquarters of rights in patents, utility models, Industrial
Library shall have the power to collect, Trademarks, and Technology Transfer under
which are situated in the Philippines; designs, marks and works, acquired in
for the discharge of its services under this the Department or Trade and lndustry ls
and good faith prior to the effective date of this
Act, such fees as may be promulgated by hereby abolished. All unexpended funds
it from t ,me to time subject to the approval Act. (n)
(bl Broadcasts transmitted and fees, Hnes, royalties and other charges
of the Department Head. (Sec. 62, P.O. collected for the calendar year, properties, Sec. 237. Not/f/caUon on Berne
from transmrtters situated In the
No. 49a) ' . equipment and records or the Bureau Appendix. - The Philippines shall by
Philippines.
or Potents, Trademar1<s and Technology proper compliance with the requirements
224.2. The provisions of this Act PARTV Transfer, and such personnel as may set forth under t he Appendix of the Berne
shall a lso apply to performers who, and be necessary are hereby transferred to Convent ion (Paris Act, 1971 ) avail Itsel f of
to producers of sound recordings and 0 INAL PROVISIONS the Office. Personnel not absorbed or the special provisions regarding developing
broadcasting organizations which, are to transferred to the Office shall enjoy the countries, ,ncluding provisions for licenses
be protected by virtue of and in accordance Sec. 230. Equitable Prindples to retirement benefits granted under existing grantable by competent authority under
with any i nternational convention or other Govern Proceedings. - In all inter partes law otherwise, they shall be paid the the Appendix. (n}
international agreement to which the proceedings In the Office under this Act, eq~ivalent of one month basic sala ry for
Philippines Is a party. (n) t he equitable principles of laches, estoppel, every year of service, or the equivalent Sec. 238. Appropriations. - T he
and acqu,escence where applicable, may nearest fractions thereof favorable to them funds needed to carry out the provisions
be considered and applied. (Sec.. 9·A, R.A. on the basis of the highest salary received. of this Act shall be charged t o the
Ch apt er XI X No. 165) (n) appropliations of the Bureau of Patents,
INSTITUTION OF ACTIONS Trademar1<s and Technology Transfer
Sec. 231. Reverse Reciprocity of Sec. 235. Applications Pending on
foreign Laws. - Any condition, restriction, under the ~urrent General Appropriations
Effective Date of Act. -
Sec. 225. Jvrisdlction. - Without limitation, diminution, requirement, Act and t he fees, fines, royalties and other
prejudice to the p"rovis,ons of Subsection penalty or any similar burden imposed 235.1. All applications ror patents charges collected by the Bureau for the
7. l(c) , actions under this Act shall be by the law of a foreign country on a pending In the Bureau of Patents, calendar year pursuant to Sections 14, l
cognizable by the courts with appropriate Phi lippine national seeking prot ection of Tradema rks and Technology Transfer shall and 234 of t his Act. Thereafter such sums
jurisdiction under existing law. (Sec. 57, Intellectual property rig hts in t hat country, be proceeded with and patents thereon as may be necessary for its continued
P.O. No. 49a) shall reciprocally be enforceable upon granted In accordance with the Acts under implementations shall be included In the
nationals of said country, within Philippine which said applications were filed, and said annual General Appropriations Act. (n)
Sec. 226. Damages. - No damages Acts are hereby continued co be enforced,
may be recovered under this Act after four jurisd,ct,on. (n)
to t his extent and for this purpose only, Sec. 239. Repeals. -
(4) yea rs from the t,nic the cause of action Sec. 2J2. Appeals. - notwithstanding the foregoing general
arose. (Sec. 58, P.D. No. 49) 239.1. All Acts and parts of Acts
repeal thereof: Prov,ded, That applications
232. l. Appeals from decisions of for utility models or industrial designs inconsistent herewith, more particularly
regular courts shall be governed by the pending at the effective date of this Act, Republic Act No. 165, as amended;
Ch apt er X X Republic Act No. 166, as amended; and
Rules of Court. Unless restrained by a shall be proceeded with in accordance
MISCELLAN EOUS PROVISIONS higher court, the judgment of t he trial with the provisions or this Act, unless Articles t88 and 189 of the Revised Penal
court shall be e.xeculory even pending the applicants elect to prosecut e said Code· Presidential Decree No. 49, Incl uding
Sec 227. Ownership of Deposit appeal under such terms and conditions as apphcations in accordance with the Acts Presidential Decree No 285, as amend ed,
and Jnsrrumencs. - All copies deposit ed are hereby repealed .

l
t he court may presc nbe. under which they were filed
 ESSENTIALS Of INTELLECTUAL PROPERTY LAW
436

Sec. 240. Separability. - If any

239 2 Marks r e gistered under provision or lhis Act or the applicat ion of
Republ1c
.Act No l66 shall remain In force
· b granted such provision to any circumstances is held
but shall be deemed to have een Invalid, the remainder of t he Act shall not
der this Act and shall be due for renewal be affected thereby. (n) SUBJECT IND EX
~thin the period provided ror under _this
Act and, upon renewal, shall be reclas~1fied Sec. 241. Effectlvlty. - This Act shall
ance with the International take effect on 1 January 1998. (n)
In accord d marks
I sslficat ion. Trade names an
Ca t red in the Supplemental Register
1
This Act, which is a consolidation or -A-
~engd:reRepublic Act No. 166 shall remain S No 1719 and H. No. 8098, was finally
In force but shall no lo nger be subJect to p~ssed by the Senate and th e House of
Representatives on June 4, 1997 and June Act Penalizing Fraudulenl Advertising (R.A. No. 3740), 379
renewal.
s,1997, respectively. punishable acts, 379-381
239 _3 . The provisions of this Act penalties, 381
shall apply to worl<S In which copyrlg_ht Approved: 06 June 1997
rotection obtained prior to the effect1v1ty Act to Regulate Marked Containers (R.A. No. 623), 378
~f this Act Is subsisting: Provided, Th~t the puni shable acts, 378-379
application of this Act shall not result m the
Acts and Decrees Cited
diminution of such protection. {n)
P.O. No. 49, Decree on Intellectual Property, 2
R.A. No. 8293, see Intellectual Property Code of the Philippines
R.A. No. 165, Creation of Independent Patent System, 2
R.A. No. 166, Act to Protection of Trademarks, Trade Names and
Service Marks, 2
R.A. No. 9502, see Universally Accessible Cheaper and Quality
Medicines Act of 2008
R.A. No. 9239, Optical Media Act of 2003, 371
R.A. No. l.0088, Anti-Camcording Act of 2010, 374
R.A. No. 7459, Inventors and Invention Incentives Act, 375
I R.A. No. 623, Act to Regulate Marked Containers, 378
R.A. No. 3740, Act Penalizing Fraudulent Advertising, 379
I R.A. No. 10372, An Act Amending Certain Provisions of Republic
I Act No. 8293, Otherwise known as the "Intellectual Property
Code of the Philippines," and for Other Purposes, see
Intellectual Property of the Philippines
Administrative, Financial and Human Resource Development Service
Bureau
serv ice units and funct ions, 51-52
Anti-Camcording Act of 2010 (R.A. No. 10088), 374
purpose, 374
punishable acts, 375
Architecture
copyright, 314
Audiovisual Work or Fixation, 327
term of copyright , 331
Author
copyright, 273
mor-al rights, 324
waiver, 325

4 37