IPR Notes for Midterms by Kai

II. Preliminary Matters

1. S TATE P OLICY DECLARATION – S EC . 2

The State recognizes that an effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer of technology, attracts foreign
investments, and ensures market access for our products. It shall protect and secure the exclusive rights of
scientists, inventors, artists and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people, for such periods as provided in this Act.

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion
of knowledge and information for the promotion of national development and progress and the common
good.

It is also the policy of the State to streamline administrative procedures of registering patents, trademarks
and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement
of intellectual property rights in the Philippines. (n)

TWENTIETH C ENTURY MUSIC C ORP . VS . AIKEN, 422 U.S. 151

To hold that respondent "performed" the copyrighted works would obviously result in a wholly
unenforceable regime of copyright law, and would also be highly inequitable, since (short of keeping his
radio turned off) one in respondent's position would be unable to protect himself from infringement
liability. Such a ruling, moreover, would authorize the sale of an untold number of licenses for what is
basically a single rendition of a copyrighted work, thus conflicting with the balanced purpose of the
Copyright Act of assuring the composer an adequate return for the value of his composition while, at
the same time, protecting the public from oppressive monopolies.

F EIST PUBLICATIONS, INC. VS. RURAL T ELE. SERVS. CO., 499 U.S. 340, 1991
Sweat and brow doctrine – gave copyright to anyone who invested significant amount of time and energy
into their work.
o At the trial and appeal level the courts followed this doctrine, siding with Rural.
o BUT SC said that the intent of copyright law was not, as claimed by Rural and some lower
courts, to reward the efforts of persons collecting information but rather “to promote the
Progress of Science and useful arts,” that is, to encourage creative expression

2. E FFECT ON INTERNATIONAL CONVENTIONS AND ON P RINCIPLE OF RECIPROCITY

SECTION 3. INTERNATIONAL CONVENTIONS AND RECIPROCITY . - Any person who is a national or who is domiciled or
has a real and effective industrial establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to
benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in
addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.

SECTION 231. REVERSE RECIPROCITY OF FOREIGN LAWS . - Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national
seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon
nationals of said country, within Philippine jurisdiction.

Mirpuri vs. CA, G.R. No. 114508, Nov. 19, 1999

 FACT: Lolita Escobar reapplied for registration of the cancelled trademark “BARBIZON.” Escobar
later assigned her application to Mirpuri and this application was opposed by private
respondent, Barbizon Corporation. The latter is a foreign corporation who allege that it has
adopted the trademark BARBIZON and that it is registered in the United Patents Office. It further
alleged that their goods bearing the trademark BARBIZON have been used in many countries,

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including the Philippines, for at least 40 years and has enjoyed international reputation and good
will for their quality. Barbizon Corporation invoked Article 6bis of the Convention of Paris for the
Protection of Industrial Property. further amplified by the Memorandum of the Minister of Trade
to the Honorable Director of Patents dated October 25, 1983 [sic], Executive Order No. 913 dated
October 7, 1963 and the Memorandum of the Minister of Trade and Industry to the Honorable
Director of Patents dated October 25, 1983.
The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris
Convention, is a multilateral treaty that seeks to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service marks, trade names and indications
of source or appellations of origin, and at the same time aims to repress unfair competition. The
Convention is essentially a compact among various countries which, as members of the Union,
have pledged to accord to citizens of the other member countries trademark and other
rights comparable to those accorded their own citizens by their domestic laws for an effective
protection against unfair competition. In short, foreign nationals are to be given the same
treatment in each of the member countries as that country makes available to its own
citizens. Nationals of the various member nations are thus assured of a certain minimum of
international protection of their industrial property
Both the Philippines and the United States of America, herein private respondent's country, are
signatories to the Convention.
ISSUE: Whether or not the treaty affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark.

RULING:
Mirpuri’s application for registration was denied to reaffirm the State’s commitment to the
global community as a signatory to the WTO agreement; wherein Paris Convention (1967) is one
of the bases in setting the minimum standards of protection to fulfill its objectives. (supplied)

This Article governs protection of well-known trademarks. Under the first paragraph, each
country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit
the use of a trademark which is a reproduction, imitation or translation, or any essential part of
which trademark constitutes a reproduction, liable to create confusion, of a mark considered by
the competent authority of the country where protection is sought, to be well-known in the
country as being already the mark of a person entitled to the benefits of the Convention, and
used for identical or similar goods.
Article 6bis was first introduced at The Hague in 1925 and amended in Lisbon in 1952. [51] It is a
self-executing provision and does not require legislative enactment to give it effect in the
member country. [52] It may be applied directly by the tribunals and officials of each member
country by the mere publication or proclamation of the Convention, after its ratification
according to the public law of each state and the order for its execution.
The essential requirement under Article 6bis is that the trademark to be protected must be
"well-known" in the country where protection is sought. The power to determine whether a
trademark is well-known lies in the "competent authority of the country of registration or use."
This competent authority would be either the registering authority if it has the power to decide
this, or the courts of the country in question if the issue comes before a court.
Pursuant to Article 6bis, on November 20, 1980, then Minister Luis Villafuerte of the Ministry of
Trade issued a Memorandum to the Director of Patents. Three years later, on October 25, 1983,
then Minister Roberto Ongpin issued another Memorandum to the Director of Patents. In the
Villafuerte Memorandum, the Minister of Trade instructed the Director of Patents to reject all
pending applications for Philippine registration of signature and other world-famous trademarks
by applicants other than their original owners or users. The Minister enumerated several
internationally-known trademarks and ordered the Director of Patents to require Philippine
registrants of such marks to surrender their certificates of registration. In the Ongpin
Memorandum, the Minister of Trade and Industry did not enumerate well-known trademarks
but laid down guidelines for the Director of Patents to observe in determining whether a
trademark is entitled to protection as a well-known mark in the Philippines under Article 6 bis of

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the Paris Convention. This was to be established through Philippine Patent Office procedures
in inter partes and ex parte cases pursuant to the criteria enumerated therein. The Philippine
Patent Office was ordered to refuse applications for, or cancel the registration of, trademarks
which constitute a reproduction, translation or imitation of a trademark owned by a person who
is a citizen of a member of the Union. All pending applications for registration of world-famous
trademarks by persons other than their original owners were to be rejected forthwith. The
Ongpin Memorandum was issued pursuant to Executive Order No. 913 dated October 7, 1983 of
then President Marcos which strengthened the rule-making and adjudicatory powers of the
Minister of Trade and Industry for the effective protection of consumers and the application of
swift solutions to problems in trade and industry. [59]
Both the Villafuerte and Ongpin Memoranda were sustained by the Supreme Court in the 1984
landmark case of La Chemise Lacoste, S.A. v. Fernandez. This court ruled therein that under the
provisions of Article 6bis of the Paris Convention, the Minister of Trade and Industry was the
"competent authority" to determine whether a trademark is well-known in this country
The Philippines and the United States of America have acceded to the WTO Agreement. This Agreement
has revolutionized international business and economic relations among states, and has propelled the
world towards trade liberalization and economic globalization. Protectionism and isolationism belong to
the past. Trade is no longer confined to a bilateral system. There is now "a new era of global economic
cooperation, reflecting the widespread desire to operate in a fairer and more open multilateral trading
system." Conformably, the State must reaffirm its commitment to the global community and take part in
evolving a new international economic order at the dawn of the new millenium.

3. COVERAGE OF INTELLECTUAL P ROPERTY RIGHTS - S EC . 4.1

SECTION 4. DEFINITIONS . - 4.1. The term "intellectual property rights" consists of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information (n, TRIPS)

KHO VS . CA, G.R. N O. 115758, M ARCH 19, 2002

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods.In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.
Petitioner has no right to support her claim for the exclusive use of the subject trade name and
its container. The name and container of a beauty cream product are proper subjects of a
trademark inasmuch as the same falls squarely within its definition. In order to be entitled to
exclusively use the same in the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The petitioner's copyright and
patent registration of the name and container would not guarantee her the right to the
exclusive use of the same for the reason that they are not appropriate subjects of the said
intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason
that the petitioner has not proven that she has a clear right over the said name and container
to the exclusion of others, not having proven that she has registered a trademark thereto or
used the same before anyone did.

PEARL & DEAN INC. VS. SHOEMART I NC ., G.R. N O. 148222, A UGUST 15, 2003

Petitioner P & D’s complaint was that SMI infringed on its copyright over the light boxes when SMI had the
units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously, petitioner’s
position was premised on its belief that its copyright over the engineering drawings extended ipso facto to

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the light boxes depicted or illustrated in said drawings. In ruling that there was no copyright infringement,
the Court of Appeals held that the copyright was limited to the drawings alone and not to the light box
itself. We agree with the appellate court.

Petitioner’s application for a copyright certificate — as well as Copyright Certificate No. PD-R2588 issued
by the National Library on January 20, 1981 — clearly stated that it was for a class “O” work under Section
2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. Said Section 2
expressly enumerated the works subject to copyright:

SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any
of the following works:
xxxxxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
xxxxxx xxx
Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which depicted the
box-type electrical devices), its claim of copyright infringement cannot be sustained.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.

4. T HE I NTELLECTUAL PROPERTY O FFICE - S EC . 6.2

SECTION 6.2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by a Director and
assisted by an Assistant Director. These Bureaus are:
a) The Bureau of Patents;
b) The Bureau of Trademarks;
c) The Bureau of Legal Affairs;
d) The Documentation, Information and Technology Transfer Bureau;
e) The Management Information System and EDP Bureau; and
f) The Administrative, Financial and Personnel Services Bureau.

PEST MANAGEMENT ASSOCIATION OF THE PHILIPPINES . VS . FERTILIZER AND PESTICIDE AUTHORITY , G.R. N O. 156041,
F EBRUARY 21, 2007

There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise known as
the Intellectual Property Code of the Philippines. Section 5 thereof enumerates the functions of the IPO.
Nowhere in said provision does it state nor can it be inferred that the law intended the IPO to have the
exclusive authority to protect or promote intellectual property rights in the Philippines. On the contrary,
paragraph (g) of said Section even provides that the IPO shall "[c]oordinate with other government
agencies and the private sector efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country." Clearly, R.A. No. 8293 recognizes that efforts to
fully protect intellectual property rights cannot be undertaken by the IPO alone. Other agencies dealing
with intellectual property rights are, therefore, not precluded from issuing policies, guidelines and
regulations to give protection to such rights.

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