I.

Trademark Infringement Argument

A trademark is a tool used that differentiates goods and services from each
other. It is a very important marketing tool that makes the public identify goods
and services. A trademark can be one word, a group of words, sign, symbol,
logo, or a combination of any of these. Generally, a trademark refers to both
trademark and service mark, although a service mark is used to identify those
marks used for services only.
Trademark is a very effective tool that makes the public remember the quality of
goods and services. Once a trademark becomes known, the public will keep on
patronizing the products and services.
Utilized properly, a trademark can become the most valuable business asset of
an enterprise. In addition to making goods and services distinctive, the owner of
a mark may earn revenues from the use of the mark by licensing its use by
another or though franchising agreements.
In the case of VICTORIO P. DIAZ, vs.PEOPLE OF THE PHILIPPINES AND LEVI
STRAUSS [PHILS.], INC [G.R. No. 180677 February 18, 2013]
The elements of the offense of trademark infringement under the Intellectual
Property Code are, therefore, the following:
1. The trademark being infringed is registered in the Intellectual Property
Office;
2. The trademark is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
3. The infringing mark is used in connection with the sale, offering for sale,
or advertising of any goods, business or services; or the infringing mark is
applied to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such
goods, business or services;
4. The use or application of the infringing mark is likely to cause confusion
or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the
identity of such business; and
5. The use or application of the infringing mark is without the consent of
the trademark owner or the assignee thereof.
There are two tests to determine likelihood of confusion, namely: the dominancy
test, and the holistic test. The contrasting concept of these tests was
explained in Societes Des Produits Nestle, S.A. v. Dy, Jr., thus:

x x x. The dominancy test focuses on the similarity of the main, prevalent or

essential features of the competing trademarks that might cause confusion.
Infringement takes place when the competing trademark contains the essential
features of another. Imitation or an effort to imitate is unnecessary. The question
is whether the use of the marks is likely to cause confusion or deceive
purchasers.
The holistic test considers the entirety of the marks, including labels and
packaging, in determining confusing similarity. The focus is not only on the
predominant words but also on the other features appearing on the labels.
As to what test should be applied in a trademark infringement case, we said in
McDonalds Corporation v. Macjoy Fastfood Corporation that:
In trademark cases, particularly in ascertaining whether one trademark is
confusingly similar to another, no set rules can be deduced because each case
must be decided on its merits. In such cases, even more than in any other
litigation, precedent must be studied in the light of the facts of the particular
case. That is the reason why in trademark cases, jurisprudential precedents
should be applied only to a case if they are specifically in point.

II. Copy Right Infringement Argument

http://www.ipophil.gov.ph/services/copyright/ownership-and-rights
Copyright is the legal protection extended to the owner of the rights in an
original work.
What constitutes copyright infringement in the Philippines?
Under Philippine law, copyright infringement occurs when there is a violation of
any of the exclusive economic or moral rights granted to the copyright owner.
Copying original and intellectual creations is considered as copyright
infringement and is punishable under Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines (IP Code). In order to prove
copyright infringement, one must show that he has a valid copyright in the work
allegedly infringed and that the perpetrator infringed the victims copyright by
copying protected elements of the latters work.

WHAT ARE THE WORKS COVERED BY COPYRIGHT PROTECTION UNDER

THE INTELLECTUAL PROPERTY CODE?
Section 172 of the IP Code lists the works covered by copyright protection from
the moment of their creation, namely:

1. (a) Books, pamphlets, articles and other writings

2. (b) Periodicals and newspapers
3. (c) Lectures, sermons, addresses, dissertations prepared for oral delivery,
whether or not reduced in writing or other material form
4. (d) Letters
5. (e) Dramatic or dramatico-musical compositions; choreographic works or
entertainment in dumb shows
6. (f) Musical compositions, with or without words
7. (g) Works of drawing, painting, architecture, sculpture, engraving,
lithography or other work of art; models or designs for works of art
8. (h) Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art
9. (i) Illustrations, maps, plans, sketches, charts and three-dimensional works
relative to geography, topography, architecture or science
10.(j) Drawings or plastic works of a scientific or technical character
11.(k) Photographic works including works produced by a process analogous
to photography; lantern slides
12.(l) Audiovisual works and cinematographic works and works produced by a
process analogous to cinematography or any process for making audiovisual recordings
13.(m) Pictorial illustrations and advertisements
14.(n) Computer programs
15.(o) Other literary, scholarly, scientific and artistic works.
What is fair use?
The fair use of a copyrighted work for criticism, comment, news, reporting,
teaching including multiple copies for classroom use, scholarship, research and
similar purposes is not an infringement of copyright.
Decompilation, which is the reproduction of the code and translation of the forms
of the computer programs to achieve the inter-operability of an independently
created computer program with other programs, may also constitute fair use.
To determine whether use of a work constitutes fair use, the following factors are
considered:

1. The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
4. The effect of the use upon the potential market for or value of the
copyrighted work.
WHAT ARE THE LIMITATIONS ON COPYRIGHT AND FAIR USE?

Copyright protection is not intended to give the copyright owner absolute

control over all possible exploitation of his work. The law provides for
limitations (statutory fair uses) on the economic rights of authors
comprising of acts which do not constitute copyright infringement even if
done without the consent of the copyright holder, such as:

The recitation or performance of a work, once it has been lawfully

made accessible to the public, if done privately and free of charge
or if made strictly for a charitable or religious institution or society;
(Sec. 10(1), P.D. No.49)

The making of quotations from a published work if they are

compatible with fair use and only to the extent justified for the
purpose, including quotations from newspaper articles and
periodicals in the form of press summaries: Provided, That the
source and the name of the author, if appearing on the work, are
mentioned;

The reproduction or communication to the public by mass media of

articles on current political, social, economic, scientific or religious
topic, lectures, addresses and other works of the same nature,
which are delivered in public if such use is for information purposes
and has not been expressly reserved: Provided, That the source is
clearly indicated;

The reproduction and communication to the public of literary,

scientific or artistic works as part of reports of current events by
means of photography, cinematography or broadcasting to the
extent necessary for the purpose;

The inclusion of a work in a publication, broadcast, or other

communication to the public, sound recording or film, if such
inclusion is made by way of illustration for teaching purposes and is
compatible with fair use: Provided, That the source and of the name
of the author, if appearing in the work, are mentioned;

The recording made in schools, universities, or educational

institutions of a work included in a broadcast for the use of such
schools, universities or educational institutions: Provided, That such
recording must be deleted within a reasonable period after they
were first broadcast: Provided, further, That such recording may not
be made from audiovisual works which are part of the general
cinema repertoire of feature films except for brief excerpts of the
work;

The making of ephemeral recordings by a broadcasting organization

by means of its own facilities and for use in its own broadcast;

The use made of a work by or under the direction or control of the

Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and
is compatible with fair use;

The public performance or the communication to the public of a

work, in a place where no admission fee is charged in respect of
such public performance or communication, by a club or institution
for charitable or educational purpose only, whose aim is not profit
making, subject to such other limitations as may be provided in the
Regulations;

Public display of the original or a copy of the work not made by

means of a film, slide, television image or otherwise on screen or by
means of any other device or process: Provided, That either the
work has been published, or, that original or the copy displayed has
been sold, given away or otherwise transferred to another person
by the author or his successor in title; and

Any use made of a work for the purpose of any judicial proceedings
or for the giving of professional advice by a legal practitioner.

WHAT CONSTITUTES INFRINGEMENT?

Under the IP Code

o

Copyright infringement consists in infringing any right secured or

protected under the Code. It may also consist in aiding or abetting
such infringement. The law also provides for the liability of a person
who at the time when copyright subsists in a work has in his
possession an article which he knows, or ought to know, to be an
infringing copy of the work for the purpose of:

Selling or letting for hire, or by way of trade offering or

exposing for sale or hire, the article;

Distributing the article for the purpose of trade, or for any

other purpose to an extent that will prejudice the rights of the
copyright owner in the work; or

Trade exhibit of the article in public.

III. Patent Argument

A Patent is a grant issued by the government through the Intellectual Property

Office of the Philippines (IP Philippines). It is an exclusive right granted for a
product, process or an improvement of a product or process which is new,
inventive and useful. This exclusive right gives the inventor the right to exclude
others from making, using, or selling the product of his invention during the life
of the patent.

A patent has a term of protection of twenty (20) years providing an inventor

significant commercial gain. In return, the patent owner must share the full
description of the invention. This information is made available to the public in
the form of the Intellectual Property Official Gazette and can be utilized as basis
for future research and will in turn promote innovation and development.
Patentable inventions offer a technical solution to a problem in any field of
human activity. However, theories, mathematical methods, methods of treatment
and artistic creations are Non-Patentable inventions.
PATENTABLE INVENTIONS

A Technical Solution to a Problem

In any field of human activity
It must be NEW
It must involve an INVENTIVE STEP
It must be INDUSTRIALLY APPLICABLE

Statutory Classes of Invention

A useful machine
A product or composition
A method or process, or
An improvement of any of the foregoing
Microorganism
Non-biological & microbiological process

Non-Patentable Inventions

Discovery
Scientific theory
Mathematical methods
Scheme, rule and method of
performing mental act
playing games
doing business

 program for computer

Method for treatment human or animal body by surgery or therapy &
diagnostic method
Plant variety or animal breed or essentially biological processes for the
production of plants and animals
Aesthetic creation
Contrary to public order or morality (Sec. 22, IP Code )
REQUIREMENT FOR PATENTABILITY
NOVELTY
INVENTIVE STEP
INDUSTRIAL APPLICABILITY

INVENTIVE STEP
An invention involves an inventive step, if having regard to prior art
it is not obvious to a person skilled in the art
OBVIOUSNESS
Not beyond normal progress of technology
Follows plainly or logically from the prior art
Does not require any skill or ability beyond that to be expected of the
person skilled in the art
SKILLED PERSON
Ordinary practitioner who is Aware of common general knowledge in
specific art
Has access to everything disclosed as the state of the art
Observes developments in related technical field