Outlined Memory Aid Based on the 2023 Bar Syllabus

By: Sherwin Mabanto

V. Intellectual Property Code (R.A. No. 8293) If the inventor discloses information contained in
[Note: Exclude Implementing Rules and his application for patent within a period of 12
Regulations] months preceding the filing date, such
disclosure shall not prejudice the applicant on
A. Patents the ground of lack of novelty IF THE
Is an exclusive right granted to an inventor over DISCLOSURE WAS MADE BY THE INVENTOR
an (1) Invention OR (2) Utility Model OR (3) HIMSELF. If the disclosure was made by
Industrial design to sell, use, and make the someone other than the inventor, it is no longer
same for commerce and industry. patentable for lack of novelty.

Types of Patent: Example:

1. Patentable Inventions X created something new. While preparing to
2. Industrial Designs have his invention registered with the IPO, he
3. Utility Models - is any model of implements or had several models FABRICATED AND SOLD
tools or any industrial product in his province. Is the application still
- Qualifies to be patented if it is NEW and patentable?
INDUSTRIALLY APPLICABLE
- Can only be registered for a period of 7 Ans: Yes, because ang inventor mismo ang nag
years after the date of the filing of the disclose sa information. (Doctrine of Prejudicial
application w/o renewal Disclosure).
- Ex. Leaf Spring is patentable as a utility
model since it is an automotive spare b) Inventive Step
part which conforms to the original An invention involves an inventive step, if having
structural design of the part it seeks to regard to prior art, THE INVENTION IS NOT
replace. It lacks decorative quality or OBVIOUS to a person skilled in the art at the
value time of the filing or priority date of the application
of the invention.
Purpose of Patent - To foster and reward
inventions, and promote the disclosure of NB: Only prior art available to the public before
inventions to stimulate further innovation the filing date is considered in assessing the
inventive step.
1. Patentable Inventions
Any technical solution of a problem in any field In case of Drugs and Medicines there is no
of human activity which is new, involves an inventive step if The invention results from the
inventive step, and is industrially applicable shall mere discovery of a new form or new property of
be patentable a known substance or new use for a known
substance which DOES NOT enhance the
3 Elements for patentability efficacy of the known substance. Inventive Step
a) Novelty will only exist if the discovery will result in a
- It must be new, and must NOT be a part of a NEW PRODUCT THAT EMPLOYS AT LEAST
prior art. ONE NEW REACTANT.
- Prior Art - everything which has been made
available to the public anywhere in the world, NB: In order for drugs and medicines to be
BEFORE the filing date or the priority date of the patentable it must either (1) result to the
application claiming the invention enhancement of the known efficacy of the
substance OR (2) Result in a new product that
NB: NO PATENT NO PROTECTION, thus if the employs at least one new reactant
inventor makes his invention available to the
public without obtaining a patent, he cannot c) Industrial Applicability
restrain others from using his invention. In the An Invention that can be produced and used in
same manner that no one could apply for and any industry.
obtain a patent over the same invention because
it will no longer satisfy the element of novelty. 2. Non-Patentable Inventions
1. Discoveries, scientific theories, and
- An invention shall not be considered new if mathematical methods. (Theories ni
before the application for patent it has been einstein if only he were alive today)
publicly known or publicly used. 2. In case of drugs and medicines, the
mere discovery of a new form, or new
Doctrine of Prejudicial Disclosure property of a known substance, or new
use of a known substance

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 Outlined Memory Aid Based on the 2023 Bar Syllabus
By: Sherwin Mabanto
3. Schemes, Rules, and methods of PERFORMANCE OF A REGULAR
performing mental acts, playing games, TASK UNLESS, there is an agreement
or doing business, and programs for to the contrary.
computers
4. Methods for treatment of the human or NB: Take note of the difference of ownership
animal body by surgery or therapy or pursuant to a commission for copyright.
other diagnostic methods. (method of
improving the tenderness of a meat by d) Right of Priority
injecting an enzyme solution) An application for patent filed by any person who
5. Biological process for the production of has previously applied for the same invention in
plants and animals another country which by TREATY,
6. Aesthetic Creations CONVENTION, OR LAW affords similar
7. Anything contrary to public order or privileges to Filipinos shall be considered as
morality. filed as of the date of the filing of the foreign
application provided:
3. Ownership of a Patent 1. Local application expressly claims
a) Right of a Patent priority
The right to a patent belongs to the inventor, his 2. The Local Application is filed within 12
heirs, or assigns. months from the date of the earliest
foreign application
When 2 or more persons have jointly made an 3. Certified copy of the foreign application
invention, the right to patent shall belong to them together with an english translation is
jointly. filed within 6 months from the date of the
filing in the Philippines
NB: Patent can only be issued to the
INVENTOR, HIS HEIRS OR ASSIGNS NB: An applicant with the right of priority is given
preference in the grant of a patent. However, the
The inventor must secure a patent for his right of priority does not immediately entitle the
invention in order to protect his rights under the applicant to the grant of a patent (he must still
IPC. If the inventor did not secure a patent, then establish the elements)
his ideas, once disclosed to the public, are
subject to appropriation without significant Treaty: Paris Convention for the Protection of
restraint. Industrial Property (Citizens of the country who
are signatories to this convention have a right of
b) First-to-File Rule priority in the application for patent).
If 2 or more persons have made the invention
separately and independently, the right of the 4. Grounds for Cancellation of a Patent
patent shall belong to the applicant with (1) The 1. The invention is not new or patentable
earliest filing date OR (2) The earliest priority 2. Patent does not disclose the invention in
date. a manner sufficiently clear and complete
for it to be carried out by a person skilled
However, a prior user in good faith may continue in the art.
to use the mark even after the registration of the 3. The patent is contrary to public order or
mark by the first to file registrant. morality
4. The patent is granted when the product
c) Inventions Created Pursuant to a or the process is non-patentable.
Commission
*For patents, the person who commissions the 5. Remedy of the True and Actual Inventor
work shall own the patent UNLESS otherwise The true and actual inventor who was deprived
provided in the contract. of the patent without his consent or through
fraud, must:
*Invention made by an employee in the course 1. File the appropriate court action to be
of his employment (2 Scenarios) declared the patentee
1. Patent shall be owned by EMPLOYEE 2. Once the true and actual inventor
if the inventive activity is NOT PART of obtains the judgment, he can either (1)
his regular duties even if he uses the ask the court for his substitution as
time, facilities, and materials of the patentee OR (2) cancel the patent and
employer. award actual and other damages in his
2. Patent shall be owned by EMPLOYER, favor if warranted by the circumstances.
if the invention is the RESULT OF THE

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 Outlined Memory Aid Based on the 2023 Bar Syllabus
By: Sherwin Mabanto
2 Scenarios Infringement under the Intellectual Property
1. If the inventor was deprived of the patent Code is the performance of any act in violation
THROUGH FRAUD OR W/O HIS CONSENT, of the rights granted by law to the owner or
he can ask for the cancellation of the patent of holder of the intellectual property right.
the holder upon finality of the favorable court
decision. There can be no infringement of a patent until a
patent has been ISSUED because whatever
2. If the Patent was issued not to the first filer right one has to the invention covered by the
BUT NO FRAUD attended in the issuance of the patent arises from the grant of the patent.
patent, the inventor must wait 3 months from the
finality of the favorable court decision before he NB: An inventor has no common law right to a
can either (1) File a new patent application with monopoly of his invention, hence, no patent no
respect to the same invention OR (2) Request protection.
that the application be refused OR (3) Seek
cancellation of the patent if one has already A patent gives the inventor the right to exclude
been issued. all others. To be able to effectively and legally
restrain others from copying, and profiting from
In both scenarios, the true and actual inventor the invention, a patent is a primordial
must first secure the judgment of the court to be requirement.
declared as having right to the patent.
Who may file: Any patentee, or anyone
NB: A true and actual inventor WHO IS NOT the possessing any right, title, or interest in and to
patent holder CANNOT file an action for patent the patented invention, whose rights have been
infringement. infringed may bring an action for patent
infringement before a court of competent
6. Rights Conferred by a Patent jurisdiction.
1. If the subject matter of the patent is a
PRODUCT - the owner has the right to restrain, Burden of Proof: Plaintiff has the burden to
prohibit, and prevent any unauthorized person or substantiate his claim.
entity from making use, offering for sale, selling
or importing that product. a) Tests in Patent Infringement
(1) Literal Infringement
2. If the subject matter of the patent is a Whether there is an exact identity of all material
PROCESS - the owner has the right to restrain, elements.
prohibit, or prevent any unauthorized person or
entity from using the process, and from (2) Doctrine of Equivalents
manufacturing, dealing, selling any product When a device appropriates a prior invention by
obtained directly or indirectly from that process. incorporating its innovative concept, and despite
the modifications, it performs substantially the
Effect of Grant - The patentee shall have the same function, in substantially the same way, to
exclusive right to make, use, and sell the achieve substantially the same result.
patented product, and/or use the patented
process throughout the Philippines for the TERM The rationale behind the doctrine of equivalents
of the Patent. The act of making, using, and is that to permit the imitation of patented
selling patented products without authority from invention which does not copy any literal detail
the patentee constitutes infringement. would be to convert the protection of the patent
TERM OF PATENT - 20 years from the filing grant into a hollow and useless thing.
date of the application without extension.
REMEDIES OF THE PATENT OWNER
7. Limitations of Patent Rights CIVIL ACTION
a) Prior User - The grantee may sue the infringer for
A prior user right is the right of a third party to damages + attorney’s fees and other
continue the use of an invention where that use expenses for litigation, and to secure an
began before a patent application was filed for injunction for the protection of his rights.
the same invention.
*If the damages are inadequate or cannot be
b) Use by Government readily ascertained, the court may award by way
See rule on Compulsory Licensing Below of damages a sum equivalent to reasonable
royalty.
8. Patent Infringement

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 Outlined Memory Aid Based on the 2023 Bar Syllabus
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*Anyone who actively induces the infringement a) Voluntary
of a patent knowing it to be especially adopted A voluntary license is an authorization given by
for infringing the patented invention, SHALL BE the patent holder to another person allowing him
LIABLE AS A CONTRIBUTORY INFRINGER, to produce the patented article.
and shall be jointly and severally liable with the
infringer. The licensee shall be entitled to exploit the
subject matter of the technology transfer
CRIMINAL ACTION arrangement during the whole term. It usually
If the infringement is repeated by the infringer or fixes the amount of royalties, sets quality
by anyone in connivance with him, AFTER requirement and etc.
finality of the judgment of the court, the offender
shall be criminally liable. b) Compulsory
Compulsory licensing is when the government
NB: First act of infringement will not give rise to allows another person to produce the patented
criminal liability. product or process without the consent of the
patent owner on the ff grounds:
So there has to be judgment of the civil case 1. National emergency
first, and if after the said judgment, the infringer 2. Where it is vested with Public Interest, in
repeats the commission of the infringing act after particular, national security, nutrition,
finality of the court judgment, the latter shall be health, or the development of other vital
criminally liable. sectors of the national economy.
3. Judicial and Administrative
PROVISIONAL REMEDIES determination that the manner of
Preliminary Injunction - to restrain offender from exploitation of the patent owner is anti-
further committing acts of infringement during competitive.
the pendency of the case. 4. In case of public non-commercial use of
the patent by the patentee without
Motion for the Disposal and/or Destruction of the satisfactory reason
seized infringing goods - Patentee may file this 5. If the patented invention is not being
at anytime after the filing of the complaint. It may worked in the Philippines on a
also extend to the tools, machines, materials, commercial scale, although capable of
and implements predominantly used in being worked without justifiable reason.
infringing. 6. When the demand for patented drugs
and medicines is not being met to an
NB: Any order issued by the court in cases adequate extent and on reasonable
involving the IPC is immediately executory terms. (purpose is to address public
except: health problems)
1. Restrained by the SC or the CA
2. In case of an order of destruction where Where to file: Director of Legal Affairs of the
a motion for reconsideration is filed. Intellectual Property Office

Prescriptive period to file: 4 years from the Period to File: A compulsory license may not
discovery of the act of infringement. be applied for before the expiration of (1) The
period of 4 years from the date of filing of the
b) Defenses in Action for Infringement application OR (2) Three years from the date of
1. The patent or any claim thereof is invalid the patent whichever EXPIRES LAST
2. Any of the grounds on which petition for
cancellation can be brought Exception to the period - Compulsory License
3. The patent is not new or patentable may be applied AT ANYTIME after the grant of
4. The specification of the invention does the patent in the ff instances:
not comply with the law 2, 3, and 4 above
5. The patent was issued not to the true
and actual inventor Terms and Conditions of Compulsory
6. Prescription License
1. The scope and duration of such license
NB: Lack of intent to infringe is not a valid shall be fixed, and limited to the purpose
defense because it is not an element in a case for which it was authorized
for infringement of a patent. 2. The license shall be non-exclusive
3. The license shall be non-assignable
9. Licensing

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 Outlined Memory Aid Based on the 2023 Bar Syllabus
By: Sherwin Mabanto
4. The subject matter of the license shall First to File Rule Under Trademark - The filing
be devoted predominantly for the supply of the application for registration of trademark in
of the Philippine Market good faith precludes registration of the same
5. License may be terminated upon proper mark for the same goods or services or closely
showing that circumstances which led to related goods and services.
its grant have ceased to exist and are
unlikely to recur. 1. Marks vs. Collective Marks vs. Trade
6. The patentee shall be paid adequate Names
remuneration or reasonable royalties for Mark - any visible sign capable of distinguishing
the exploitation of his invention. the goods (trademark) or services (service mark)
of an enterprise. Example:
10. Assignment and Transmission of Rights 1. Marked container of goods
Inventions, just like any other right may be
assigned, or transmitted by (1) Inheritance or (2) Collective Mark - any visible sign designated as
Bequests or (3) may be subject of a license such in the application for registration and
contract. capable of distinguishing the origin or any other
common characteristics of goods which use the
Formalities for the assignment of rights: sign under the control of the registered owner of
1. It must be in writing, and acknowledged the collective mark. Example:
before a notary public, or other officer 1. McDonalds Trademark
authorized to administer an oath.
2. The IPO shall record assignments, Trade Name - The name or designation
licenses, and other instruments relating identifying or distinguishing an enterprise.
to the transmission of rights - Trade Name must not be contrary to
3. Such instruments shall be void as public order or morals.
against any subsequent purchaser or NB: A trade name previously used in trade in the
mortgagee for valuable consideration Philippines need not be registered with the IPO
UNLESS, it was recorded in the IPO before an infringement suit may be filed by its
within 3 months from the date of the owner against the infringer.
said instrument.
2. Acquisition of Ownership of Mark
B. Trademarks Trademark is acquired SOLELY through
A trademark is any word, name, symbol, registration made validly in accordance with law.
emblem, or sign used by a manufacturer or 1. The applicant must file a declaration of
merchant to identify his goods and distinguish actual use, supported by evidence within
them from those manufactured, sold or dealt in 3 years from the filing date of the
by others. application.
2. A certificate of registration shall remain
Purpose of the Law: To protect the owner of in force for ten (10) years: Provided,
his property and to protect the public from being That the registrant shall file a declaration
deceived by reason of a misleading claim. of actual use and evidence within one
(1) year from the fifth anniversary of
Territorial Limits of A Trademark - the date of the registration of the
Trademarks have no territorial boundaries. It mark. Otherwise, the mark shall be
extends to every market where the trader’s removed from the Register by the Office
goods have become known and identified by NB: Both Requirements as to filing stated in
use of the mark or market areas that are normal 1&2 must be complied with
potential expansion of the owner’s business.
Effect of Failure to Comply - Failure to file
NB: Trademarks confer no exclusive rights in the declaration of actual use shall constitute a
goods to which the mark has been attached. ground for (1) The refusal of the application OR
The owner may have it registered with the IPO, (2) The removal from the register if a trademark
and after registration, preclude others from has already been issued.
adopting the same mark for the same goods.
NB: NON-USE caused by circumstances arising
Thus, if A registers the trademark ‘Argentina independently of the will of the owner is a valid
Beef Loaf’ the registration does not operate to defense for non filing of declaration of actual
preclude others from manufacturing and selling use.
beef loaf. What it prohibits is the subsequent use
of the name ‘Argentina’ attributed to Beef Loaf.

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- Mere lack of funds SHALL NOT excuse non- 9. Consists of signs which are generic for the
use of a mark. goods or services they seek to identify.
- Word ‘COFFEE’ cannot be registered
Rights of the Trademark Owner because it is a generic word.
1. He may use the trademark in trade or
commerce 10. Marks which are contrary to morals and
2. He may register the trademark public order.
3. He may sue for infringement in case of
unauthorized use of his registered mark 5. Test to Determine Confusing Similarity
in connection with the sale of the same Between Marks
goods or similar goods which is likely to a) Dominancy Test
cause confusion. Dominancy Test focuses on the similarity of
the prevalent features of the competing
3. Acquisition of Ownership of Trade Name trademarks which might cause confusion or
Trade Names shall be protected, even prior to or deception.
without registration, against any unlawful act
committed by third parties. This is without Tests
prejudice to any law or regulation providing for 1. If the competing trademark contains the
any obligation to register trade names. main or essential or dominant feature of
another, and confusion or deception is
4. Non-Registrable Marks likely to result, infringement takes place,
Marks cannot be registered if it: OR
1. Consists of immoral, deceptive, or 2. If there is likelihood of confusion on the
scandalous matters. part of the buying public

2. If it falsely suggests a connection with Example:

persons living or dead, institutions, beliefs. McDonald’s and MacJoy. The court in applying
(Fredco vs Harvard G.R 185917) the dominancy test held that Mcdonald’s and
MacJoy marks are confusingly similar with each
3. Consists of the flag or other insignia of the other such that an ordinary purchaser can
Philippines, or any of its political subdivisions, conclude that an association or relation between
or of any nation the marks exists. (Mcdonald's Corporation vs
MacJoy FastFood Corporation G.R 166115)
4. Consists of a name, portrait, or signature
identifying a particular living individual New Landmark Case for Trademark (Not in
except by his written consent Divina’s Book) KOLIN ELECTRONICS CO.,
INC., PETITIONER, VS. KOLIN PHILIPPINES
5. Consists of a name, portrait, or signature of a INTERNATIONAL, INC., RESPONDENT. G.R
deceased President of the Philippines, during 228165 February 9, 2021
the lifetime of his widow, EXCEPT if there is
written consent from the widow The Supreme Court (SC) has abandoned the
“holistic test” in evaluating trademark
6. If the mark is identical with a registered resemblance and emphasized the adoption of
mark belonging to a different proprietor in the “dominancy test.” In this landmark
respect of: decision, the SC rejected the application of Kolin
- The same goods or services Philippines International, Inc. (KPII), to
- Closely related goods or services trademark “kolin”—with a lowercase letter “k”
- and an italicized orange letter “i”—for its
7. It is identical with or confusingly similar to television sets and DVD players because of its
a mark which is considered by the competent similarity to the “KOLIN” mark owned by Kolin
authority of the Philippines to be well-known Electronics Co., Inc. (KECI).
internationally and in the Philippines, Sitting en banc, the court held that granting the
regardless if it is registered here or not. registration of KPII’s application for Kolin would
cause the likelihood of confusion and
8. Marks which are likely to mislead the damage the rights of KECI.
public, particularly as to the nature, quality, and
The court held:
characteristics or geographical origin of the
goods. 1. The parties goods were related.

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- the goods covered by the former were he/she/it is doing business in the Philippines or
related to those of the latter (automatic not. The Philippines is obliged to assure
voltage, regulator, converter, recharger, nationals of the countries which are signatories
stereo booster, AC-DC regulated power to the convention that they are afforded an
supply, step-down transformer, PA effective protection against violation of their
amplified AC-DC). KPII’s television sets intellectual property rights in the Philippines in
and DVD players would fall within the the same way that their own countries are
normal potential expansion of the obliged to accord similar protection to Philippine
business of KECI. Nationals.

2) That there was evidence of actual 7. Rights Conferred by Registration

confusion between the two marks; The owner of a registered mark shall have the
exclusive right to prevent all third parties not
- shown by consumer complaints about having the owner’s consent from using in the
KPII’s appliances that were sent to course of trade identical or similar signs or
KECI. containers for goods which are identical or
similar to those in respect of which the
(3) that the goods covered by KPII’s trademark is registered, where such use would
application fell within the normal potential result in a likelihood of confusion.
business expansion of KECI;
(4) that sophistication of buyers was not 8. Cancellation of Registration
enough to eliminate confusion;
A certificate of registration may be canceled
(5) that likelihood of confusion increased based on the ff grounds:
because Kolin was a coined word and
1. Failure to file declaration of actual use
therefore a strong mark; and
within one (1) year from the fifth
(6) that KPII filed its application in bad faith. anniversary of the date of the
(7) Under the idem sonans rule in trademark registration of the mark.
2. Failure to file declaration of actual use
- Applying the “dominancy test,” the SC
within three (3) years from the filing of
stressed that KPII’s “kolin” mark
the application
sounded “exactly the same” as KECI’s
3. At anytime, if the registered owner of
“KOLIN” mark, even if the former was
the mark, without legitimate reason fails
stylized differently.
to use the mark within the Philippines,
- Idem Sonans are words with a different
OR to cause it to be used in the
spelling but with a similar sound.
Philippines by virtue of a license during
6. Well-Known Marks an uninterrupted period of 3 years or
A mark which is considered by the competent longer.
authority of the Philippines to be well known
internationally and in the Philippines, whether or A petition to cancel a registration of a mark
not it is registered here, as being already the may also be filed with the Bureau of Legal
mark of a person other than the applicant for Affairs of the IPO by ANY PERSON who
registration. believes that he/she will be damaged by the
registration under the IPC as follows:
Rules: 1. Within 5 years from the date of the
1. If the well known mark is registered in the registration of the mark
Philippines, it cannot be used for(1) identical 2. At any time, if the registered mark
goods or services OR (2) goods or services becomes the generic name for the
which are not similar if the use of such mark in goods or service for which it is
relation to the goods or service would indicate a registered.
connection between those goods or service,
and the goods or service of the owner of the NB: The right to a trademark terminates either
registered mark (1) at the expiration/lapse of 10 years from the
2. If the well known mark is not registered in date of registration OR (2) Cancellation of the
the Philippines, the scope of protection only Certificate of Registration by the IPO
extends to marks used for identical goods or
services.
Paris Convention for the Protection of 9. Trademark Infringement
Industrial Property - Any foreign national or Elements of Infringement:
juridical person has the legal capacity to sue for 1. The Trademark is registered in the IPO
the protection of its trademarks, regardless if

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2. The trademark is reproduced, of infringement beyond a reasonable doubt, it
counterfeited, copied, or colorably will issue a decision of conviction.
imitated by the infringer
3. The infringing mark is used in The IP owner will participate in the civil aspect of
connection with the sale, offering for the criminal action if he is claiming damages.
sale, or advertising of any goods, OR
the infringing mark is applied to labels, A person found guilty in a criminal case for
signs, prints, packages intended to be trademark infringement, unfair competition,
used upon or in connection with such and/or false designation will be imprisoned for a
goods term of two (2) to five (5) years, and will be
4. The use or application of the infringing ordered to pay a fine ranging from Php 50,000 to
mark would likely cause confusion or Php 200,000.
mistake or to deceive the purchasers as
to the goods or service themselves, or
ADMINISTRATIVE ACTION
as to its origin
An administrative action for trademark
5. The use or application of the mark is
infringement, unfair competition and/or false
without the consent of the trademark
designation may be filed with the Bureau of
owner.
Legal Affairs (BLA) of the IPO within four (4)
years from the date of commission of the
Remedies of the Owner of the Mark
violation, or if the date be unknown, from the
CIVIL ACTION
date of discovery of the violation. The total
The owner may file a civil action for trademark
amount of damages claimed should be Php
infringement to recover damages + attorney’s
200,000 or more. Provisional remedies, such as
fees and other expenses for litigation, and to
an injunction, are available.
secure an injunction for the protection of his
rights.
The administrative penalties available may
include the issuance of a cease and desist
Measure of damage - damage that the owner
order; condemnation and seizure of infringing
may claim may be (1) the reasonable profit
products; imposition of administrative fines
which he would have made had the defendant
ranging from Php 5,000 to Php 150,000 and an
not infringed his right OR (2) The profit which the
additional fine of up to Php 1,000 for each day of
defendant actually made OR (3) If the damage
continuing violation; cancellation or withholding
cannot be ascertained with certainty, the court
of any permit, license, or registration granted or
may award as damages a reasonable
being secured from the IPO; the assessment of
percentage based on the amount of the gross
damages; censure; and other analogous
sales of the infringer.
penalties or sanctions.
Provisional Remedies for the Civil Action -
Other forms of relief, such as injunction and the NB: The application for administrative
impounding of the counterfeit products, sales cancellation of a registered trade does not
invoices and other documents evidencing sales, preclude the first registrant from filing an action
are also available as remedies to the IP owner. for trademark infringement. However, if the IPO
cancels the registered trademark, and such
CRIMINAL ACTION resolution has attained finality, the action for
A criminal action may be initiated by filing a trademark infringement will have no more legal
complaint with the prosecutor. The prosecutor basis to stand on (Shangri-la International Hotel
then conducts the preliminary investigation to vs Court of Appeals G.R 111580)
determine if there are reasonable grounds for
infringement. If there are reasonable grounds, 10. Unfair Competition
the prosecutor will issue an order recommending Unfair Competition is defined as the passing off
the filing of criminal information in court. or attempting to pass off upon the public of the
goods of one person as the goods of another
After the filing of the criminal information, the with the end and probable effect of deceiving the
court will issue a warrant of arrest. The accused public. IOW, the infringer gives his goods the
has the option to post bail. Once the accused is general appearance of the goods of his
arrested and/or posts bail, he or she will be competitor with the intention of deceiving the
arraigned. The court will then proceed to try the public that the goods are those of his competitor
criminal case and if the accused is found guilty
C. Copyright

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1. Basic Principles [Sec. 172.2, 175, and 181 14. Other literary, scholarly, scientific, and
only] artistic work
Copyright is an intangible, incorporeal right
granted by a statute to the author or originator of Useful Article - Are functional objects. It is an
certain literary or artistic productions, whereby object having an intrinsic utilitarian function that
the latter is granted the exclusive privilege of is not merely to portray the appearance of the
multiplying copies of the same, and publishing article or to convey information.
and selling them. - USEFUL ARTICLE IS NOT
COPYRIGHTABLE.
- Copyright is not limited to the privilege of
multiplying, publishing, and selling of the copies, Example:
it also includes any form of communication to - A belt, a belt is an object utility with the
the public. function of preventing one’s pants from
falling down. The belt itself IS NOT
- Copyright is not confined to literary and artistic COPYRIGHTABLE. However, if the belt
work, it also extends to scientific and scholarly was ornately designed, and such design
works. is irrelevant or did not enhance the belt’s
function, and the design is conceptually
Characteristics of a Copyright separable from the belt, then the design
1. It is granted to the creator of the copyrightable is eligible for copyright.
work - The design is copyrightable as a
2. The object is an original intellectual creating in sculptural work with independent
the literary, artistic, and scientific domains aesthetic value, and not as an integral
3. The economic and moral right are exclusive to element of the belt’s functionality
the creator during the term specified by law
EXCEPT the moral right of attribution which Denicola Test - If there is any aesthetic
exists in perpetuity. elements which can be separated from the
utilitarian elements, then the aesthetic element
2. Copyrightable Works may be copyrighted (Belt and its Ornate Design
Copyrightable works are protected by the sole Example above)
fact of their creation irrespective of their mode or
form of expression. b) Derivative Works Page
A "derivative work" is a work based upon one or
a) Original Works more preexisting works, such as a translation,
Are original intellectual creations in the literary musical arrangement, dramatization,
and artistic domain protected from the moment fictionalization, motion picture version, sound
of their creation. It shall include: recording, art reproduction, abridgment,
1. Books, pamphlets, articles, and other condensation, or any other form in which a work
writings may be recast, transformed, or adapted. A work
2. Periodicals and newspaper consisting of editorial revisions, annotations,
3. Lectures, sermons, addresses prepared elaborations, or other modifications which, as a
for oral delivery, whether or not reduced whole, represent an original work of authorship,
in writing is a "derivative work."
4. Letters (Including text messages)
5. Dramatic or dramatico-musical Examples:
compositions, 1. A new, updated, or revised, edition of a
6. Choreographic works book
7. Musical Compositions 2. A translation of a book into another
8. Works of drawing, painting, architecture, language
sculpture or other works of art, models 3. A sequel to a novel or motion picture
or design for works of art. 4. A novel adapted to a screenplay, stage
9. Original ornamental designs or models production, or motion picture
for articles of manufacture 5. A new musical arrangement of a
10. Illustrations, maps, plans, sketches, composition.
charts
11. Photographic Works NB: One of the economic rights granted to an
12. Audiovisual works, and cinematographic author is to carry out, prevent, or authorize
works derivative work. Hence, no one can carry out a
13. Computer programs work derived from the original work EXCEPT the
author himself, or a person authorized to do so.

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 Outlined Memory Aid Based on the 2023 Bar Syllabus
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3. Non-Copyrightable Works labor of the author is appropriated by
1. Idea, procedure, system, method or another to an injurious extent.
operation, principle, discovery or mere data,
even if they are expressed, explained, illustrated 1.2 Dramatization, translation or other forms of
or embodied in a work. transformation of the work

Example: X, An astronomer discovered a 1.3 The first public distribution of the original
massive volcanic eruption in jupiter while - “First Sale Doctrine” - an individual who
peering at the planet through his telescope. The purchases a copyrighted work(book)
ff week X presented a lecture on his findings from the copyright holder (publishing
before the Association of astronomers. To his house) receives the right to sell, display,
dismay, Y published an article in a science or otherwise dispose of that particular
journal repeating exactly what X discovered copy.
without any attribution to him. Has Y infringed on - The economic right of the copyright
X’s Copyright holder extend only to the first public
distribution of each original copy. After
Ans: No, because no protection extends to any the first sale of the original copies, the
discovery even if expressed, explained, owner may use and resell the same.
illustrated or embodied in a work. - Example: I bought 10 books from Rex
Publishing House, sold the 9 others to
2. News of the day, and other miscellaneous my classmates at a cheaper price. Rex
facts having the character of mere items of could not sue me for infringement
press information because their economic right only
extend to the first sale of each original
NB: The event itself for the news of the day is copy. After I bought the said books from
not copyrightable, hence, any media agency Rex, I could resell the same without the
may broadcast the said event. However, the publisher’s permission.
FOOTAGE created by respective news agencies
from the said event is an intellectual creation NB: The purchaser at the first sale may only
which is copyrightable because it already went distribute the work (resell) without incurring
through a creative process. liability. However, he CANNOT reproduce or
carry out a derivative workout of it. The right of
3. Any official text of a legislative, administrative, reproduction and transformation are distinct from
or legal nature the right of first public distribution.

4. Any work of the Government of the 1.4 Rental of the original or a copy of an
Philippines. However, if the exploitation of such audiovisual, cinematographic work, a work
work is for profit, prior approval from the agency embodied on a sound recording
concerned is required.
1.5 Public display of the original work
5. Statutes, rules, regulations, speeches, and NB: Take note of the distinction between
lectures read or rendered in courts of justice or the ownership of the work and
before administrative agencies, or assemblies of ownership of the copyright(discussion
public character. below on Item No. 5)
- The right to publicly display the work
4. Rights Conferred by a Copyright belongs to the owner of the
Literary and Artistic works are protected from the copyright. The owner of the work
moment of its creation regardless of their mode cannot publicly display the work without
or form of expression, as well as their contents, the consent of the owner of the
quality and purpose. copyright

Rights of the Owner of a Copyright 1.6 Public performance of the work

1. Economic Right - the owner of a copyright
shall have the exclusive right to carry out, 1.7 Other forms of communication to the public
authorize, or prevent the ff acts: of the work
1.1 Reproducing the work or substantial portion
of it 2. Moral Rights
- The test for substantiability is that, if so Moral Right of the Author exists independently of
much is taken that the value of the the economic right.
original is sensibly diminished, or the

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2.1 Right of Attribution presumption of ownership and validity of the
- The author has the right to require that copyright.
the authorship of the works be attributed
to him, in particular, the right that his Instances when reproduction of the work is
name be indicated in a prominent way in legally permissible
connection with the public use of his 1. Quotations from a published work if they are
work compatible with fair use, and only to the extent
- Right of attribution of an author lasts in justified for the purpose provided the author and
perpetuity after his death (even 50 years the source are mentioned.
after his death)
2. The reproduction or communication to the
2.2 Right to Make any alteration of his prior public by mass media of (1) Articles of current
work or To withhold it from publication. political, social, economic, scientific or religious
topics
2.3 Right of Integrity
- Author has the right to object to any 3. Reproduction and communication to the
distortion, mutilation or modification of public of literary, scientific, or artistic works as
his work which would be prejudicial to part of reports of current events
his honor or reputation
4. Private reproduction of a published work in a
2.4 Right Against False Attribution SINGLE COPY, where the reproduction is made
- Author has the right to restrain the use by a natural person exclusively for research and
of his name with respect to any work private study is permitted even without the
NOT of his own creation. authorization of the owner. However the
permission shall not extend to the reproduction
Registration and Deposit with the National of the ff:
Library 4.1 A work of architecture in the form of
- Copyright owners may register and deposit building or other construction
their work in the National Library 4.2 An entire book or a substantial part
- The certificate of registration issued by the thereof
National Library merely serves as a notice of
recording and registration of the work. It DOES 5. Ownership of a Copyright
NOT confer any right or title upon the registered TN: It is the owner of the copyright who has
copyright owner the right to exercise the Economic and Moral
- A copyright certificate merely creates a Rights of a copyright owner.
presumption of validity and ownership of the
copyright, and as such is useful to support the Rules:
claim for infringement. This presumption is 1. In case of original literary and artistic works,
rebuttable and it cannot be sustained where copyright shall belong to the author of the work.
other evidence in record casts a doubt on the
question of ownership 2. In case of works of joint authorship, the co
authors shall be the original owners, and in the
Example: X an artist stays in a boarding house absence of agreement, their rights shall be
with Y his roommate. During his freetime X governed by the rules on co-ownership.
would paint and leave his work in the boarding
house. One Day, X saw his work displayed in a 3. If a work of joint authorship consists of parts
cafeteria. The cafeteria owner said he that can be used separately, the author of each
purchased the painting from Y who represented part shall be the original owner of the copyright.
himself as the owner and painter. Y claimed
ownership of the painting since he already 4. In case of work created by an author during
registered it in his name with the National the course of his employment copyright shall
Library as provided in the IPC. Who owns the belong to:
copyright? 4.1 The employee if the creation of the
object of the copyright is not a part of his
Ans: X owns the copyright to the painting regular duties even if he uses the time,
because he was the one who actually painted it. facilities, and materials of employer
His right existed from the moment of its creation. 4.2 The employer if the work was a
The registration of the painting by Y in the result of the performance of his regularly
National Library did not confer any copyright assigned duties.
upon him. It merely created a disputable

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 Outlined Memory Aid Based on the 2023 Bar Syllabus
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5. In the case of a work commissioned by a accessible to the public (1) if done
person other than an employer of the author, privately and free of charge (2) If made
and who pays for it, and the work is made in strictly for a charitable or religious
pursuance of the commission institution.
5.1 Person who commissioned the work Example: Students singing a popular
shall have ownership of the work, but song to entertain a professor celebrating
the copyright thereto shall remain with his birthday.
the author unless there is a written
stipulation to the contrary. 2. The making of quotations from a
5.2 If there is stipulation, both the published work if they are compatible
ownership of the work and the copyright with fair use provided the source and
thereto shall belong to the person who author are mentioned, and the extent of
commissioned the work the use is justifiable for the purpose
intended.
6. In the case of audiovisual work, the copyright
shall belong to the producer, the author of the 3. The reproduction or communication to
scenario, the composer of the music, the film the public by mass media of articles on
director, and the author of the work so adapted. current political, social, economic,
scientific or religious topic
7. With respect to letters, the copyright shall Example: Printing a substantial part of
belong to the writer. the speech of a public official

Period of Protection of Copyright 4. The reproduction and communication to

1. The copyright of both the original and the public of literary, scientific, or artistic
derivative works shall be protected during the works as part of reports of current
life of the author and for 50 years after his death. events by means of photography,
cinematography or broadcasting
2. In case of joint authorship, the copyright shall Example: Taking a photo of paintings in
be protected during the life of the last surviving an art gallery exhibit.
author and for 50 years after his death
7. Doctrine of Fair Use
3. In case of works of applied art, the protection Fair Use is a privilege to use the copyrighted
shall be for a period of 25 years from the date of material in a reasonable manner without the
making. consent of the copyright owner.

4. In case of Photographic Works, The Under this doctrine, the fair use of a copyrighted
protection shall be for 50 years from its work for (1) Criticism and comment (2) News
publication OR if unpublished, 50 years from the Reporting (3) Teaching including multiple copies
making for classroom use and (4) Scholarship, research
and similar purposes IS NOT AN
5. In case of audio-visual works, the term shall INFRINGEMENT of copyright
be 50 years from the date of publication OR if
unpublished 50 years from the date of making Factors to consider in determining Fair Use
1. The purpose and character of the use,
6. For performers and producers of sound including whether such use is of a
recordings commercial nature or is for non-profit
6.1 If the performance was not educational purposes
incorporated in recording, 50 years from 2. The Nature of the copyrighted work
the end of the year in which the 3. The amount and substantiality of the
performance took place portion used in relation to the
6.2 If the performance was incorporated copyrighted work as a whole
in recordings, 50 years from the end of 4. The effect of the use upon the potential
the year in which the recording took market for or value of the copyrighted
place. work

6. Limitations on Copyright 8. Copyright Infringement

The following acts shall not constitute Copyright infringement is committed by any
infringement of copyright: person who shall use original, literary, or artistic
1. The recitation or performance of a work, works, or derivative works without the copyright
once it has been lawfully made owner’s consent in such a manner as to violate

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 Outlined Memory Aid Based on the 2023 Bar Syllabus
By: Sherwin Mabanto
the foregoing economic and moral rights of the 7. Lack of evidence to support the
author. allegations of the complaint.
Infringement is committed when:
1. The infringer directly commits the act of
infringement
2. A person benefits from the infringing
activity of another person who commits
an infringement if the person benefiting
has been given notice of the infringing
activity and has the right and ability to
control the activities of the other person
3. With knowledge of infringing activity,
induces, causes or materially
contributes to the infringing conduct of
another.

Elements of Infringement:
1. Ownership of a validly copyrighted
material by the complainant
2. Infringement of the copyright by the
respondent.

NB: Intent to pirate copyrighted material is not

necessary. Copyright Infringement is Mala
Prohibita, hence, good faith is not a defense.

Period to File Action: 4 years from the time

the cause of action arose.

Remedies Available to the Owner

1. Civil Action for Damages - Owner may
recover damages + legal costs + and other
expenses
- Amount of damages to be awarded shall
be doubled if (1)Infringer circumvents
technological measures or (2) Infringer
removes or alter any electronic rights
management information from a work
despite reasonable grounds to know
that it will induce, enable, facilitate or
conceal infringement.

Provisional Remedies:
1. Preliminary Injunction
2. Search and Seizure Order
3. Order of Destruction

2. Criminal Action for Copyright Infringement

Defenses available in an action for Copyright

Infringement
1. The work is not copyrightable
2. The term of the copyright has expired
3. The use of the work falls within the
limitations on copyright
4. The plaintiff/complainant is not the
owner of the copyright
5. Non-participation in the commission of
the infringing activity.
6. Prescription

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