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Villanueva Intellectual Property Law Reviewer PDF
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Intellectual
Property
Law
Prof. Susan D. Villanueva
2 n d Semester, AY 2011-2012
Katrina Michelle Mancao
Sp eci al t han k s to K a rich i Sa n tos for hel pi n g m e c omp let e m y no tes ,
a nd to M a rie E strel la a n d Di Bo n ill a fo r sh ari ng thei r correc t a n s w ers to o ur hw J
Contents
I.
INTRODUCTION
1
II.
CONSTITUTION
2
III. INTERNATIONAL CONVENTIONS 3
IV. CIVIL CODE 5
V. COPYRIGHT AND RELATED RIGHTS 6
VI. LAW ON TRADEMARKS, TRADENAMES AND SERVICE MARKS 63
VII. LAW ON PATENTS 126
-‐ It is separate and distinct from the thing
I. Introduction created.
o Thus, it can be subject to a separate
contract.
Justin Hughes, The Philosophy of Intellectual Property,
-‐ Rules for IP are different from rules governing
77 Geo. L.J. 287 (1988) traditional property.
-‐ What’s the point of granting IP?
Marshall A. Leaffer, Protecting United States o IP is an incentive system designed to
encourage individuals to create, to
Intellectual Property Abroad: Toward a New
invent, to innovate.
Multilateralism, 76 Iowa L. Rev. 273 (1991) o BUT the higher purpose of IP is to
improve the lives of the public. It
A. Samuel Oddi, The International Patent System and operates on the assumption that
Third World Development, 1987 Duke L. J. 831 (1987) everyone would benefit from the
creation of more works. Thus, IP is
granted under the “beneficial to the
Michael A. Heller and Rebecca Eisenberg, Can Patents people” clause of the Constitution.
Deter Innovation? The Anti-‐commons in Biomedical -‐ IP, however, can be in conflict with public
Research, 280 Science 698 (1998) access. It grants a form of monopoly that
restricts people’s access to something. Thus, IP
Law must be balanced with a strong
24 November 2011
competition law.
Intellectual Property:
-‐ It is a form of property. (Note that under the
TRIPS – it is mandatory to those who would
Civil Code, intellectual creation is one of the
like to enter or join the WTO to agree to this
modes of acquiring ownership.)
Agreement.
-‐ It is an intangible property right that belongs to
the creator.
Katrina Michelle Mancao
II. Constitution their intellectual property and creations, particularly
when beneficial to the people, for such period as may be
ARTICLE XII, SECTION 6.
provided by law.
The use of property bears a social function, and all
economic agents shall contribute to the common good.
ARTS AND CULTURE
Individuals and private groups, including corporations,
cooperatives, and similar collective organizations, shall SECTION 14.
have the right to own, establish, and operate economic The State shall foster the preservation, enrichment, and
enterprises, subject to the duty of the State to promote dynamic evolution of a Filipino national culture based on
distributive justice and to intervene when the common the principle of unity in diversity in a climate of free
good so demands. artistic and intellectual expression.
ARTICLE XII, SECTION 14. SECTION 15.
The sustained development of a reservoir of national Arts and letters shall enjoy the patronage of the State.
talents consisting of Filipino scientists, entrepreneurs, The State shall conserve, promote, and popularize the
professionals, managers, high-‐level technical manpower nation's historical and cultural heritage and resources, as
and skilled workers and craftsmen in all fields shall be well as artistic creations.
promoted by the State. The State shall encourage
appropriate technology and regulate its transfer for the SECTION 16.
national benefit. The practice of all professions in the All the country's artistic and historic wealth constitutes
Philippines shall be limited to Filipino citizens, save in the cultural treasure of the nation and shall be under the
cases prescribed by law. protection of the State which may regulate its
disposition.
ARTICLE XIV, SECTIONS 10 TO 18.
SECTION 17.
SCIENCE AND TECHNOLOGY The State shall recognize, respect, and protect the rights
of indigenous cultural communities to preserve and
SECTION 10.
develop their cultures, traditions, and institutions. It shall
Science and technology are essential for national consider these rights in the formulation of national plans
development and progress. The State shall give priority and policies.
to research and development, invention, innovation, and
their utilization; and to science and technology
SECTION 18.
education, training, and services. It shall support
indigenous, appropriate, and self-‐reliant scientific and
technological capabilities, and their application to the The State shall ensure equal access to cultural
country's productive systems and national life. opportunities through the educational system, public or
private cultural entities, scholarships, grants and other
incentives, and community cultural centers, and other
SECTION 11.
public venues.
The Congress may provide for incentives, including tax
deductions, to encourage private participation in The State shall encourage and support researches and
programs of basic and applied scientific research. studies on the arts and culture.
Scholarships, grants-‐in-‐aid, or other forms of incentives
shall be provided to deserving science students, 08 December 2011
researchers, scientists, inventors, technologists, and
specially gifted citizens. Note that under the Constitution (Section 11, Article XIV),
there are “other forms of incentives” granted to
SECTION 12. encourage innovation and creation. Why is it still
The State shall regulate the transfer and promote the necessary to have IP laws despite the presence of this
adaptation of technology from all sources for the clause in the Constitution?
national benefit. It shall encourage the widest -‐ We are obligated by the TRIPS, as a signatory to
participation of private groups, local governments, and it, to pass laws that will protect IP.
community-‐based organizations in the generation and
utilization of science and technology. What makes the IP system more superior (than the mere
granting of awards)? What makes it more sustainable?
SECTION 13. -‐ Term and duration of the benefit. They may be
The State shall protect and secure the exclusive rights of enjoyed for a longer period of time.
scientists, inventors, artists, and other gifted citizens to -‐ IP System is more sustainable because the rules
2z
Intellectual Property Law
in placed and the standards of protection are III. International Conventions
objective and open. The rights granted under
the IP system attached even when the work It is important to know about the conventions
produced is not good in the subjective sense at because the States are mandated to amend
the time it was granted (note that standards their laws to comply with it.
change).
It is possible for 2 forms of IP to protect a A. Berne Convention for the Protection
single work. of Literary and Artistic Works as
-‐ e.g. Winnie the Pooh and Friends – revised in Brussels (Brussels Act)
protected by trademark and
It was concluded in 1886.
copyright.
B. Paris Convention for the Protection
of Industrial Property Rights (Paris
Convention)
The Paris Convention was concluded in 1883. It covers
industrial property in its broadest sense including
patents, trademarks, industrial design, utility models
(sometimes called “little patents”), tradenames,
geographical indications, and methods of unfair
competition. (Catindig)
C. International Convention for the
Protection of Performers, Producers
of Phonograms and Broadcasting
Organizations (Rome Convention)
It was concluded in 1961.
D. Convention Establishing the World
Intellectual Property Organization
E. Budapest Treaty on the International
Recognition of the Deposit of
Microorganisms for the Purposes of
Patent Procedure
Concluded in 1977, this Treaty requires a Contracting
State, which allows or requires the deposit of
microorganisms for purposes of patent procedure, to
recognize, for such purposes, the deposit of a
microorganism with any “international depositary
authority.”
F. Agreement on Trade Related Aspects
of Intellectual Property, Including
Trade in Counterfeit Goods of the
General Agreement in Tariffs and
Trade
TANADA V. ANGARA (1997)
Relevant issue: 4th issue
Petitioners aver that paragraph 1, Article 34 of the
General Provisions and Basic Principles of the Agreement
o3
Katrina Michelle Mancao
on
Trade-‐Related
Aspects
of
Intellectual
Property
Rights
patent
could
not
determine
the
exact
process
used
in
(TRIPS)
intrudes
on
the
power
of
the
Supreme
Court
to
obtaining
such
identical
product.
Hence,
the
“burden
of
promulgate
rules
concerning
pleading,
practice
and
proof”
contemplated
by
Article
34
should
actually
be
procedures.
understood
as
the
duty
of
the
alleged
patent
infringer
to
overthrow
such
presumption.
Such
burden,
properly
To
understand
the
scope
and
meaning
of
Article
34,
understood,
actually
refers
to
the
“burden
of
evidence”
TRIPS,
it
will
be
fruitful
to
restate
its
full
text
as
follows:
(burden
of
going
forward)
placed
on
the
producer
of
the
identical
(or
fake)
product
to
show
that
his
product
was
“Article
34.
Process
Patents:
Burden
of
Proof
produced
without
the
use
of
the
patented
process.
1.
For
the
purposes
of
civil
proceedings
in
The
foregoing
notwithstanding,
the
patent
owner
still
respect
of
the
infringement
of
the
rights
of
the
has
the
“burden
of
proof”
since,
regardless
of
the
owner
referred
to
in
paragraph
1(b)
of
Article
presumption
provided
under
paragraph
1
of
Article
34,
28,
if
the
subject
matter
of
a
patent
is
a
process
such
owner
still
has
to
introduce
evidence
of
the
for
obtaining
a
product,
the
judicial
authorities
existence
of
the
alleged
identical
product,
the
fact
that
it
shall
have
the
authority
to
order
the
defendant
is
“identical”
to
the
genuine
one
produced
by
the
to
prove
that
the
process
to
obtain
an
identical
patented
process
and
the
fact
of
“newness”
of
the
product
is
different
from
the
patented
process.
genuine
product
or
the
fact
of
“substantial
likelihood”
Therefore,
Members
shall
provide,
in
at
least
that
the
identical
product
was
made
by
the
patented
one
of
the
following
circumstances,
that
any
process.
identical
product
when
produced
without
the
consent
of
the
patent
owner
shall,
in
the
The
foregoing
should
really
present
no
problem
in
absence
of
proof
to
the
contrary,
be
deemed
changing
the
rules
of
evidence
as
the
present
law
on
the
to
have
been
obtained
by
the
patented
subject,
Republic
Act
No.
165,
as
amended,
otherwise
process:
known
as
the
Patent
Law,
provides
a
similar
presumption
in
cases
of
infringement
of
patented
design
(a)
if
the
product
obtained
by
the
or
utility
model,
thus:
patented
process
is
new;
“SEC.
60.
Infringement.
-‐
Infringement
of
a
(b)
if
there
is
a
substantial
likelihood
design
patent
or
of
a
patent
for
utility
model
that
the
identical
product
was
made
shall
consist
in
unauthorized
copying
of
the
by
the
process
and
the
owner
of
the
patented
design
or
utility
model
for
the
patent
has
been
unable
through
purpose
of
trade
or
industry
in
the
article
or
reasonable
efforts
to
determine
the
product
and
in
the
making,
using
or
selling
of
process
actually
used.
the
article
or
product
copying
the
patented
design
or
utility
model.
Identity
or
substantial
2.
Any
Member
shall
be
free
to
provide
that
the
identity
with
the
patented
design
or
utility
burden
of
proof
indicated
in
paragraph
1
shall
model
shall
constitute
evidence
of
copying.”
be
on
the
alleged
infringer
only
if
the
condition
(underscoring
supplied)
referred
to
in
subparagraph
(a)
is
fulfilled
or
only
if
the
condition
referred
to
in
Moreover,
it
should
be
noted
that
the
requirement
of
subparagraph
(b)
is
fulfilled.
Article
34
to
provide
a
disputable
presumption
applies
only
if
(1)
the
product
obtained
by
the
patented
process
3.
In
the
adduction
of
proof
to
the
contrary,
the
is
NEW
or
(2)
there
is
a
substantial
likelihood
that
the
legitimate
interests
of
defendants
in
protecting
identical
product
was
made
by
the
process
and
the
their
manufacturing
and
business
secrets
shall
process
owner
has
not
been
able
through
reasonable
be
taken
into
account.”
effort
to
determine
the
process
used.
Where
either
of
these
two
provisos
does
not
obtain,
members
shall
be
From
the
above,
a
WTO
Member
is
required
to
provide
a
free
to
determine
the
appropriate
method
of
rule
of
disputable
(note
the
words
“in
the
absence
of
implementing
the
provisions
of
TRIPS
within
their
own
proof
to
the
contrary”)
presumption
that
a
product
internal
systems
and
processes.
shown
to
be
identical
to
one
produced
with
the
use
of
a
patented
process
shall
be
deemed
to
have
been
By
and
large,
the
arguments
adduced
in
connection
with
obtained
by
the
(illegal)
use
of
the
said
patented
process,
our
disposition
of
the
third
issue
-‐-‐
derogation
of
(1)
where
such
product
obtained
by
the
patented
legislative
power
-‐
will
apply
to
this
fourth
issue
also.
product
is
new,
or
(2)
where
there
is
“substantial
Suffice
it
to
say
that
the
reciprocity
clause
more
than
likelihood”
that
the
identical
product
was
made
with
the
justifies
such
intrusion,
if
any
actually
exists.
Besides,
use
of
the
said
patented
process
but
the
owner
of
the
Article
34
does
not
contain
an
unreasonable
burden,
4z
Intellectual Property Law
consistent as it is with due process and the concept of ARTICLE 723.
adversarial dispute settlement inherent in our judicial Letters and other private communications in writing are
system. owned by the person to whom they are addressed and
delivered, but they cannot be published or disseminated
So too, since the Philippine is a signatory to most without the consent of the writer or his heirs. However,
international conventions on patents, trademarks and the court may authorize their publication or
copyrights, the adjustment in legislation and rules of dissemination if the public good or the interest of justice
procedure will not be substantial. so requires.
G. Patent Cooperation Treaty ARTICLE 724.
Special laws govern copyright and patent.
Question: Was it the right time to enter it in
2001? ARTICLE 520.
A trade-‐mark or trade-‐name duly registered in the proper
IV. Civil Code government bureau or office is owned by and pertains to
the person, corporation, or firm registering the same,
ARTICLE 712. ★
subject to the provisions of special laws.
Ownership is acquired by occupation and by intellectual
creation.
ARTICLE 521.
Ownership and other real rights over property are The goodwill of a business is property, and may be
acquired and transmitted by law, by donation, by testate transferred together with the right to use the name
and intestate succession, and in consequence of certain under which the business is conducted.
contracts, by tradition.
ARTICLE 522.
They may also be acquired by means of prescription. Trade-‐marks and trade-‐names are governed by special
laws.
ARTICLE 721.
By intellectual creation, the following persons acquire
ownership: • Differences between copyright,
trademarks and patent
(1) The author with regard to his literary, dramatic,
KHO V. COURT OF APPEALS (2002)
historical, legal, philosophical, scientific or other work;
Refresher:
(2) The composer; as to his musical composition; Elidad C. Kho, doing business under the name of KEC
Cosmetics Laboratory, alleged that she is the registered
(3) The painter, sculptor, or other artist, with respect to owner of the copyrights Chin Chun Su and Oval Facial
the product of his art; Cream Container/Case, and that she has the patent rights
on Chin Chun Su & Device and Chin Chun Su for
(4) The scientist or technologist or any other person with medicated cream. Petitioner likewise alleged that
regard to his discovery or invention. respondent Summerville General Merchandising and Co.
advertised and sold petitioner's cream and products
under the brand name Chin Chun Su in similar containers
ARTICLE 722.
that petitioner uses, thereby misleading the public and
The author and the composer, mentioned in Nos. 1 and 2 resulting in the decline in the petitioner's sales and
of the preceding article, shall have the ownership of income.
their creations even before the publication of the same.
Once their works are published, their rights are The respondents, on the other hand, alleged as their
governed by the Copyright laws. defense that Summerville is the exclusive and authorized
importer, re-‐packer and distributor of Chin Chun Su
The painter, sculptor or other artist shall have dominion products manufactured by Shun Yi Factory of Taiwan;
over the product of his art even before it is copyrighted. that the said Taiwanese manufacturing company
authorized Summerville to register its trade name Chin
The scientist or technologist has the ownership of his Chun Su Medicated Cream with the Philippine Patent
discovery or invention even before it is patented. Office and other appropriate governmental agencies;
that KEC Cosmetics Laboratory of the petitioner
obtained the copyrights through misrepresentation and
falsification; and, that the authority of Quintin Cheng,
o5
Katrina Michelle Mancao
assignee
of
the
patent
registration
certificate,
to
V. Copyright
and
Related
Rights
distribute
and
market
Chin
Chun
Su
products
in
the
Philippines
had
already
been
terminated
by
the
said
A. Legislative
history
of
the
law
on
Taiwanese
Manufacturing
Company.
Copyright
and
Related
rights
Issue:
1. Spanish
Law
on
Intellectual
Whether
the
copyright
and
patent
over
the
name
and
Property
container
of
a
beauty
cream
product
would
entitle
the
registrant
to
the
use
and
ownership
over
the
same
to
2. US
Copyright
Law
the
exclusion
of
others.
3. Act
3134
(Copyright
Law)
4. Presidential
Decree
No.
49
Doctrine:
(took
effect
on
27
Trademark,
copyright
and
patents
are
different
intellectual
property
rights
that
cannot
be
interchanged
December
1972)
with
one
another.
5. Presidential
Decree
No.
Ø A
trademark
is
any
visible
sign
capable
of
1988
(amended
by
PD
49
b y
distinguishing
the
goods
(trademark)
or
services
(service
mark)
of
an
enterprise
and
inserting
Section
56)
shall
include
a
stamped
or
marked
container
of
6. RA
8293
–
Intellectual
goods.
Property
Code
(took
effect
Ø In
relation
thereto,
a
trade
name
means
the
on
01
January
1998)
name
or
designation
identifying
or
distinguishing
an
enterprise.
Ø Meanwhile,
the
scope
of
a
copyright
is
The
Philippines
its
one
of
the
first
developing
confined
to
literary
and
artistic
works
which
countries
to
amend
its
laws.
are
original
intellectual
creations
in
the
literary
and
artistic
domain
protected
from
the
B. Law
on
Copyright
moment
of
their
creation.
Ø Patentable
inventions,
on
the
other
hand,
refer
SECTION
241.
EFFECTIVITY.
–
to
any
technical
solution
of
a
problem
in
any
This
Act
shall
take
effect
on
1
January
1998.
field
of
human
activity
which
is
new,
involves
an
inventive
step
and
is
industrially
applicable.
SECTION
239.
REPEALS.
239.3.
The
provisions
of
this
Act
shall
apply
to
works
in
Petitioner
has
no
right
to
support
her
claim
for
the
which
copyright
protection
obtained
prior
to
the
exclusive
use
of
the
subject
trade
name
and
its
container.
effectivity
of
this
Act
is
subsisting:
Provided,
That
the
The
name
and
container
of
a
beauty
cream
product
are
application
of
this
Act
shall
not
result
in
the
diminution
proper
subjects
of
a
trademark
inasmuch
as
the
same
of
such
protection.
falls
squarely
within
its
definition.
In
order
to
be
entitled
to
exclusively
use
the
same
in
the
sale
of
the
beauty
SECTION
236.
PRESERVATION
OF
EXISTING
RIGHTS.
–
cream
product,
the
user
must
sufficiently
prove
that
she
Nothing
herein
shall
adversely
affect
the
rights
on
the
registered
or
used
it
before
anybody
else
did.
The
enforcement
of
rights
in
patents,
utility
models,
petitioner’s
copyright
and
patent
registration
of
the
industrial
designs,
marks
and
works,
acquired
in
good
name
and
container
would
not
guarantee
her
the
right
to
faith
prior
to
the
effective
date
of
this
Act.
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
1.
Definition
of
Copyright
issued
for
the
reason
that
the
petitioner
has
not
proven
SECTION
177.
COPYRIGHT
OR
ECONOMIC
RIGHTS.
–
that
she
has
a
clear
right
over
the
said
name
and
Subject
to
the
provisions
of
Chapter
VIII,
copyright
or
container
to
the
exclusion
of
others,
not
having
proven
economic
rights
shall
consist
of
the
exclusive
right
to
that
she
has
registered
a
trademark
thereto
or
used
the
carry
out,
authorize
or
prevent
the
following
acts:
same
before
anyone
did.
177.1.
Reproduction
of
the
work
or
substantial
portion
of
the
work;
177.2.
Dramatization,
translation,
adaptation,
abridgment,
arrangement
or
other
transformation
of
the
work;
6z
Intellectual Property Law
177.3.
The
first
public
distribution
of
the
original
and
each
RULE
12,
COPYRIGHT
SAFEGUARDS
AND
REGULATIONS
copy
of
the
work
by
sale
or
other
forms
of
transfer
of
DEFINITION
OF
TERMS
ownership;
SECTION
1.
FIRST
PUBLIC
DISTRIBUTION
OF
WORK.
An
exclusive
right
of
first
distribution
of
work
includes
all
177.4.
Rental
of
the
original
or
a
copy
of
an
audiovisual
or
acts
involving
distribution,
specifically
including
the
first
cinematographic
work,
a
work
embodied
in
a
sound
importation
of
an
original
and
each
copy
of
the
work
recording,
a
computer
program,
a
compilation
of
data
into
the
jurisdiction
of
the
Republic
of
the
Philippines.
and
other
materials
or
a
musical
work
in
graphic
form,
irrespective
of
the
ownership
of
the
original
or
the
copy
Standard
for
Copyright
2.
which
is
the
subject
of
the
rental;
Protection
177.5.
Public
display
of
the
original
or
a
copy
of
the
work;
SECTION
172.
LITERARY
AND
ARTISTIC
WORKS.
–
172.1.
Literary
and
artistic
works,
hereinafter
referred
to
177.6.
Public
performance
of
the
work;
and
as
"works",
are
original
intellectual
creations
in
the
literary
and
artistic
domain
protected
from
the
moment
177.7.
Other
communication
to
the
public
of
the
work.
of
their
creation
and
shall
include
in
particular:
RULE
2,
COPYRIGHT
SAFEGUARDS
AND
REGULATIONS
(a)
Books,
pamphlets,
articles
and
other
DEFINITION
OF
TERMS
writings;
For
the
purpose
of
these
Copyright
Safeguards
and
(b)
Periodicals
and
newspapers;
Regulations,
the
following
terms
are
herein
defined:
x
x
x
(c)
Lectures,
sermons,
addresses,
dissertations
Copyright
is
a
right
granted
by
statute
to
the
prepared
for
oral
delivery,
whether
or
not
author
or
originator
of
literary,
scholarly,
reduced
in
writing
or
other
material
form;
scientific,
or
artistic
productions,
including
computer
programs.
A
copyright
gives
him
the
(d)
Letters;
legal
right
to
determine
how
the
work
is
used
and
to
obtain
economic
benefits
from
the
work.
(e)
Dramatic
or
dramatico-‐musical
For
example,
the
owner
of
a
copyright
for
a
compositions;
choreographic
works
or
book
or
a
piece
of
software
has
the
exclusive
entertainment
in
dumb
shows;
rights
to
use,
copy,
distribute,
and
sell
copies
of
the
work,
including
later
editions
or
versions
of
(f)
Musical
compositions,
with
or
without
the
work.
If
another
person
improperly
uses
words;
material
covered
by
a
copyright,
the
copyright
owner
can
obtain
legal
relief
(g)
Works
of
drawing,
painting,
architecture,
x
x
x
sculpture,
engraving,
lithography
or
other
works
of
art;
models
or
designs
for
works
of
RULE
11,
COPYRIGHT
SAFEGUARDS
AND
REGULATIONS
art1;
DEFINITION
OF
TERMS
SECTION
1.
COMMUNICATION
TO
THE
PUBLIC
OF
COPYRIGHTED
(h)
Original
ornamental
designs
or
models
for
WORKS.
articles
of
manufacture,
whether
or
not
registrable
as
an
industrial
design,
and
other
“Communication
to
the
public”
or
“communicate
to
the
works
of
applied
art;
public,”
also
includes
point-‐to-‐point
transmission
of
a
work,
including
video
on
demand,
and
providing
access
(i)
Illustrations,
maps,
plans,
sketches,
charts
to
an
electronic
retrieval
system,
such
as
computer
and
three-‐dimensional
works
relative
to
databases,
servers,
or
similar
electronic
storage
devices.
geography,
topography,
architecture
or
Broadcasting,
rebroadcasting,
retransmission
by
cable,
science;
and
broadcast
and
retransmission
by
satellite
are
all
acts
of
“communication
to
the
public”
within
the
meaning
of
(j)
Drawings
or
plastic
works
of
a
scientific
or
the
IPC.
technical
character;
1
“Works
of
applied
art”
à
artistic
creation
with
utilitarian
value
o7
Katrina Michelle Mancao
(k)
Photographic
works
including
works
Doctrine:
produced
by
a
process
analogous
to
A
person
to
be
entitled
to
a
copyright
must
be
the
photography;
lantern
slides;
original
creator
of
the
work.
He
must
have
created
it
by
his
own
skill,
labor
and
judgment
without
directly
(l)
Audiovisual
works
and
cinematographic
copying
or
evasively
imitating
the
work
of
another.
The
works
and
works
produced
by
a
process
grant
of
preliminary
injunction
in
a
case
rests
on
the
analogous
to
cinematography
or
any
process
sound
discretion
of
the
court
with
the
caveat
that
it
for
making
audio-‐visual
recordings;
should
be
made
with
extreme
caution.
Its
grant
depends
chiefly
on
the
extent
of
doubt
on
the
validity
of
the
(m)
Pictorial
illustrations
and
advertisements;
copyright,
existence
of
infringement,
and
the
damages
sustained
by
such
infringement.
In
our
view,
the
copies
(n)
Computer
programs2;
and
of
the
certificates
of
copyright
registered
in
the
name
of
Ceroilfood
Shandong
sufficiently
raise
reasonable
doubt.
(o)
Other
literary,
scholarly,
scientific
and
With
such
a
doubt
preliminary
injunction
is
unavailing.
artistic
works.
SAMBAR
V.
LEVI
STRAUSS
(2002)
172.2.
Works
are
protected
by
the
sole
fact
of
their
Refresher:
creation,
irrespective
of
their
mode
or
form
of
On
28
September
1987,
Levi
Strauss
&
Co.
and
Levi
expression,
as
well
as
of
their
content,
quality
and
Strauss
(Phil.),
Inc.
demanded
that
CVS
Garment
purpose.
Enterprises
(CVSGE)
desist
from
using
their
stitched
arcuate
design
on
the
Europress
jeans
which
CVSGE
CHING
KIAN
CHUAN
V.
CA
(2001)
advertised
in
Manila
Bulletin.
Refresher:
Petitioner
Wilson
Ong
Ching
Kian
Chuan
(“Ong”)
imports
Atty.
Benjamin
Gruba,
counsel
of
CVSGE,
replied
that
the
vermicelli
from
China
National
Cereals
Oils
and
arcuate
design
on
the
back
pockets
of
Europress
jeans
Foodstuffs
Import
and
Export
Corporation,
based
in
was
different
from
the
design
on
the
back
pockets
of
Beijing,
China,
under
the
firm
name
C.K.C.
Trading.
He
Levi’s
jeans.
He
further
asserted
that
his
client
had
a
repacks
it
in
cellophane
wrappers
with
a
design
of
two-‐ copyright
on
the
design
it
was
using.
dragons
and
the
TOWER
trademark
on
the
uppermost
portion.
Ong
acquired
a
Certificate
of
Copyright
Thereafter,
private
respondents
filed
a
complaint
against
Registration
from
the
National
Library
on
June
9,
1993
on
Sambar,
doing
business
under
the
name
and
style
of
the
said
design.
CVSGE.
Private
respondents
also
impleaded
the
Director
of
the
National
Library.
Ong
discovered
that
private
respondent
Lorenzo
Tan
repacked
his
vermicelli
he
imports
from
the
same
Levi
Strauss
and
Co.
(LS&Co.),
an
internationally
known
company
but
based
in
Qingdao,
China
in
a
"nearly"
clothing
manufacturer,
owns
the
arcuate
design
identical
wrapper.
On
September
16,
1993,
Ong
filed
trademark
which
was
registered
under
U.S.
Trademark
against
Tan
a
verified
complaint
for
infringement
of
Registration
No.
404,
248
on
November
16,
1943,
and
in
copyright
with
damages
and
prayer
for
temporary
the
Principal
Register
of
trademarks
with
the
Philippine
restraining
order
or
writ
of
preliminary
injunction
with
Patent
Office
under
Certificate
of
Registration
No.
20240
the
Regional
Trial
Court
in
Quezon
City.
Ong
alleged
that
issued
on
October
8,
1973;
that
through
a
Trademark
he
was
the
holder
of
a
Certificate
of
Copyright
Technical
Data
and
Technical
Assistance
Agreement
with
Registration
over
the
cellophane
wrapper
with
the
two-‐ Levi
Strauss
(Phil.)
Inc.
(LSPI)
in
1972,
LS&Co.
granted
dragon
design,
and
that
Tan
used
an
identical
wrapper
in
LSPI
a
non-‐exclusive
license
to
use
the
arcuate
his
business.
In
his
prayer
for
a
preliminary
injunction
in
trademark
in
its
manufacture
and
sale
of
Levi’s
pants,
addition
to
damages,
he
asked
that
Tan
be
restrained
jackets
and
shirts
in
the
Philippines;
that
in
1983,
LS&Co.
from
using
the
wrapper.
He
said
he
would
post
a
bond
to
also
appointed
LSPI
as
its
agent
and
attorney-‐in-‐fact
to
guarantee
the
payment
of
damages
resulting
from
the
protect
its
trademark
in
the
Philippines;
and
that
issuance
of
the
writ
of
preliminary
injunction.
sometime
in
1987,
CVSGIC
and
Venancio
Sambar,
without
the
consent
and
authority
of
private
respondents
and
in
infringement
and
unfair
competition,
sold
and
advertised,
and
despite
demands
to
cease
and
desist,
2
Class
notes:
This
is
the
outcome
of
the
lobbying
in
the
US.
At
continued
to
manufacture,
sell
and
advertise
denim
that
time,
technology
was
not
as
advanced.
They
were
pants
under
the
brand
name
“Europress”
with
back
concerned
more
on
DURATION
(copyright
protection
is
for
50
pockets
bearing
a
design
similar
to
the
arcuate
years!).
They
found
out
later
that
duration
is
not
important
in
trademark
of
private
respondents,
thereby
causing
computer
programs
because
they
are
immediately
replaced
or
confusion
on
the
buying
public,
prejudicial
to
private
upgraded.
respondents’
goodwill
and
property
right.
8z
Intellectual Property Law
He has a right to determine whether it shall be published
Doctrine: at all, and if published, when, where, by whom, and in
To be entitled to copyright, the thing being copyrighted what form. This exclusive right is confined to the first
must be original, created by the author through his own publication. When once published, it is dedicated to the
skill, labor and judgment, without directly copying or public, and the author loses the exclusive right to control
evasively imitating the work of another. subsequent publication by others, unless the work is
placed under the protection of the copyright law.
3. When does Copyright vest?
Remarks: Decided under the old law.
SANTOS V. MCCULLOUGH PRINTING CO. (1964)
Refresher: FILIPINO SOCIETY OF COMPOSERS V. BENJAMIN TAN (1987)
The complaint alleges that plaintiff Mauro Malang Refresher:
Santos designed for former Ambassador Felino Neri, for Plaintiff-‐appellant is a non-‐profit association of authors,
his personal Christmas Card greetings for the year 1959 composers and publishers duly organized under the
(Rural Christmas time scene), the artistic motif in Corporation Law of the Philippines and registered with
question. The following year the defendant McCullough the Securities and Exchange Commission. Said
Printing Company, without the knowledge and authority association is the owner of certain musical compositions
of plaintiff, displayed the very design in its album of among which are the songs entitled: "Dahil Sa Iyo",
Christmas cards and offered it for sale, for a price. "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You."
Doctrine:
Paragraph 33 of Patent Office Administrative Order No. 3 On the other hand, defendant-‐appellee is the operator of
(as amended dated September 18, 1947) entitled "Rules a restaurant known as "Alex Soda Foundation and
of Practice in the Philippines Patent Office relating to the Restaurant" where a combo with professional singers,
Registration of Copyright Claims" promulgated pursuant hired to play and sing musical compositions to entertain
to Republic Act 165, provides, among others, that an and amuse customers therein, were playing and singing
intellectual creation should be copyrighted 30 days after the above-‐mentioned compositions without any license
its publication, if made in Manila, or within 60 day's if or permission from the appellant to play or sing the
made elsewhere, failure of which renders such creation same. Accordingly, appellant demanded from the
public property. In the case at bar, even as of this appellee payment of the necessary license fee for the
moment, there is no copyright for the design in question. playing and singing of aforesaid compositions but the
We are not also prepared to accept the contention of demand was ignored.
appellant that the publication of the design was a limited
one, or that there was an understanding that only Hence, on November 7, 1967, appellant filed a complaint
Ambassador Neri should, have absolute right to use the with the lower court for infringement of copyright
same. In the first place, if such were the condition then against defendant-‐appellee for allowing the playing in
Ambassador Neri would be the aggrieved party, and not defendant-‐appellee's restaurant of said songs
the appellant. In the second place, if there was such a copyrighted in the name of the former.
limited publication or prohibition, the same was not
shown on the face of the design. When the purpose is a Issue: Whether or not the playing and signing of musical
limited publication, but the effect is general publication, compositions which have been copyrighted under the
irrevocable rights thereupon become vested in the provisions of the Copyright Law (Act 3134) inside the
public, in consequence of which enforcement of the establishment of the defendant-‐appellee constitute a
restriction becomes impossible. public performance for profit within the meaning and
contemplation of the Copyright Law of the Philippines;
It has been held that the effect of offering for sale a and assuming that there were indeed public
dress, for example manufactured in accordance with an performances for profit, whether or not appellee can be
original design which is not protected by either a held liable therefor.
copyright or a patent, is to divest the owner of his
common law rights therein by virtue of the publication Doctrine:
of a 'copy' and thereafter anyone is free to copy the There were "public performances for profit. "
design or the dress. When Ambassador Neri distributed
800 copies of the design in controversy, the plaintiff lost The word "perform" as used in the Act has been applied
control of his design and the necessary implication was to "one who plays a musical composition on a piano,
that there had been a general publication, there having thereby producing in the air sound waves which are
been no showing of a clear indication that a limited heard as music ... and if the instrument he plays on is a
publication was intended. The author of a literary piano plus a broadcasting apparatus, so that waves are
composition has a light to the first publication thereof.
o9
Katrina Michelle Mancao
thrown
out,
not
only
upon
the
air,
but
upon
the
other,
be
noted
that
for
the
playing
and
singing
the
musical
then
also
he
is
performing
the
musical
composition."
compositions
involved,
the
combo
was
paid
as
independent
contractors
by
the
appellant.
It
is
therefore
In
relation
thereto,
it
has
been
held
that
"The
playing
of
obvious
that
the
expenses
entailed
thereby
are
added
to
music
in
dine
and
dance
establishment
which
was
paid
the
overhead
of
the
restaurant
which
are
either
for
by
the
public
in
purchases
of
food
and
drink
eventually
charged
in
the
price
of
the
food
and
drinks
or
constituted
"performance
for
profit"
within
a
Copyright
to
the
overall
total
of
additional
income
produced
by
the
Law."
Thus,
it
has
been
explained
that
while
it
is
possible
bigger
volume
of
business
which
the
entertainment
was
in
such
establishments
for
the
patrons
to
purchase
their
programmed
to
attract.
Consequently,
it
is
beyond
food
and
drinks
and
at
the
same
time
dance
to
the
music
question
that
the
playing
and
singing
of
the
combo
in
of
the
orchestra,
the
music
is
furnished
and
used
by
the
defendant-‐appellee's
restaurant
constituted
orchestra
for
the
purpose
of
inducing
the
public
to
performance
for
profit
contemplated
by
the
Copyright
patronize
the
establishment
and
pay
for
the
Law.
entertainment
in
the
purchase
of
food
and
drinks.
The
defendant
conducts
his
place
of
business
for
profit,
and
Nevertheless,
appellee
cannot
be
said
to
have
infringed
it
is
public;
and
the
music
is
performed
for
profit.
In
a
upon
the
Copyright
Law.
Appellee's
allegation
that
the
similar
case,
the
Court
ruled
that
"The
Performance
in
a
composers
of
the
contested
musical
compositions
restaurant
or
hotel
dining
room,
by
persons
employed
by
waived
their
right
in
favor
of
the
general
public
when
the
proprietor,
of
a
copyrighted
musical
composition,
for
they
allowed
their
intellectual
creations
to
become
the
entertainment
of
patrons,
without
charge
for
property
of
the
public
domain
before
applying
for
the
admission
to
hear
it,
infringes
the
exclusive
right
of
the
corresponding
copyrights
for
the
same
is
correct.
owner
of
the
copyright."
The
Supreme
Court
has
ruled
that
"Paragraph
33
of
In
delivering
the
opinion
of
the
Court
in
said
two
cases,
Patent
Office
Administrative
Order
No.
3
entitled
'Rules
Justice
Holmes
elaborated
thus:
of
Practice
in
the
Philippines
Patent
Office
relating
to
the
Registration
of
Copyright
Claims'
promulgated
pursuant
If
the
rights
under
the
copyright
are
infringed
to
Republic
Act
165,
provides
among
other
things
that
an
only
by
a
performance
where
money
is
taken
at
intellectual
creation
should
be
copyrighted
30
days
after
the
door,
they
are
very
imperfectly
protected.
its
publication,
if
made
in
Manila,
or
within
the
60
days
if
Performances
not
different
in
kind
from
those
made
elsewhere,
failure
of
which
renders
such
creation
of
the
defendants
could
be
given
that
might
public
property."
Indeed,
if
the
general
public
has
made
compete
with
and
even
destroy
the
success
of
use
of
the
object
sought
to
be
copyrighted
for
30
days
the
monopoly
that
the
law
intends
the
prior
to
the
copyright
application
the
law
deems
the
plaintiffs
to
have.
It
is
enough
to
say
that
there
object
to
have
been
donated
to
the
public
domain
and
is
no
need
to
construe
the
statute
so
narrowly.
the
same
can
no
longer
be
copyrighted.
The
defendants'
performances
are
not
eleemosynary.
They
are
part
of
a
total
for
which
SECTION
2,
PD
49
(DECREE
ON
THE
PROTECTION
OF
the
public
pays,
and
the
fact
that
the
price
of
INTELLECTUAL
PROPERTY)
the
whole
is
attributed
to
a
particular
item
which
those
present
are
expected
to
order
is
The
Rights
granted
by
this
Decree
shall,
from
the
not
important.
It
is
true
that
the
music
is
not
moment
of
creation,
subsist
with
respect
to
any
of
the
following
classes
of
works:
the
sole
object,
but
neither
is
the
food,
which
probably
could
be
got
cheaper
elsewhere.
The
object
is
a
repast
in
surroundings
that
to
(A)
Books,
including
composite
and
people
having
limited
power
of
conversation
or
encyclopedic
works,
manuscripts,
directories,
and
gazetteers;
disliking
the
rival
noise,
give
a
luxurious
pleasure
not
to
be
had
from
eating
a
silent
meal.
If
music
did
not
pay,
it
would
be
given
up.
(B)
Periodicals,
including
pamphlets
and
If
it
pays,
it
pays
out
of
the
public's
pocket.
newspapers;
Whether
it
pays
or
not,
the
purpose
of
(C)
Lectures,
sermons,
addresses,
dissertations
employing
it
is
profit,
and
that
is
enough.
prepared
for
oral
delivery;
In
the
case
at
bar,
it
is
admitted
that
the
patrons
of
the
restaurant
in
question
pay
only
for
the
food
and
drinks
(D)
Letters;
and
apparently
not
for
listening
to
the
music.
As
found
(E)
Dramatic
or
dramatico-‐musical
by
the
trial
court,
the
music
provided
is
for
the
purpose
of
compositions;
choreographic
works
and
entertaining
and
amusing
the
customers
in
order
to
make
entertainments
in
dumb
shows,
the
acting
the
establishment
more
attractive
and
desirable.
It
will
form
of
which
is
fixed
in
writing
or
otherwise;
10 z
Intellectual Property Law
protection in the country of origin of the work.
(F) Musical compositions, with or without Consequently, apart from the provisions of this
words; Convention, the extent of protection, as well as the
means of redress afforded to the author to protect his
(G) Works of drawing, painting, architecture, rights, shall be governed exclusively by the laws of the
sculpture, engraving, lithography, and other country where protection is claimed.
works of art; models or designs for works of
art; SECTION 172 AND 172.2, SUPRA
(H) Reproductions of a work of art;
RULE 7, SECTIONS 2-‐4, COPYRIGHT SAFEGUARDS AND
(I) Original ornamental designs or models for REGULATIONS
articles of manufacture, whether or not SECTION 2. EFFECTS OF REGISTRATION AND DEPOSIT OF WORK.
patentable, and other works of applied art; —
The registration and deposit of the work is purely for
(J) Maps, plans, sketches, and charts; recording the date of registration and deposit of the
work and shall not be conclusive as to copyright
(K) Drawings, or plastic works of a scientific or ownership or the term of copyrights or the rights of the
technical character; copyright owner, including neighboring rights.
(L) Photographic works and works produced SECTION 3. EFFECT OF NON-‐REGISTRATION AND D EPOSIT. —
by a process analogous to photography;
If, within three (3) weeks after receipt by the copyright
lantern slides;
owner of a written demand from TNL and/or SCL3 for the
deposit of a work listed in Rule 5 Sec. 4 of this SAR, the
(M) Cinematographic works and works required copies are not delivered and the fee for
produced by a process analogous to
registration and deposit is not paid, the copyright owner,
cinematography or any process for making
his assignee, or his agent shall be liable to pay a fine
audio-‐visual recordings; equivalent to the required fee per month of delay and to
pay to TNL and SCL the amount of the retail price of the
(N) Computer programs; best edition of the work.
(O) Prints, pictorial, illustration, advertising
SECTION 4. OTHER LAWS. —
copies, labels, tags, and box wraps;
Upon issuance of a certificate of deposit, the copyright
owner shall be exempt from making additional deposits
(P) Dramatization, translations, adaptations,
of the work with TNL or the SCL under other laws.
abridgements, arrangements and other
alterations of literary, musical or artistic works
or of works of the Philippine Government as 4. Scope of Copyright
herein defined, which shall be protected as
provided in Section 8 of this Decree. ARTICLE 2, BERNE CONVENTION FOR THE PROTECTION OF
LITERARY AND ARTISTIC WORKS
(Q) Collection of literary, scholarly, or artistic
Protected Works:
works or of works referred to in Section 9 of
this Decree which by reason of the selection 1. “Literary and artistic works”;
and arrangement of their contents constitute 2. Possible requirement of fixation;
intellectual creations, the same to be protected 3. Derivative works;
as such in accordance with Section 8 of this 4. Official texts;
Decree. 5. Collections;
6. Obligation to protect; beneficiaries of
(R) Other literary, scholarly, scientific and protection;
artistic works. 7. Works of applied art and industrial designs;
8. News
ARTICLE 5(2), BERNE CONVENTION FOR THE PROTECTION
(1) The expression “literary and artistic works” shall
OF LITERARY AND ARTISTIC W ORKS include every production in the literary, scientific and
RIGHTS GUARANTEED artistic domain, whatever may be the mode or form of
(2) The enjoyment and the exercise of these rights shall
not be subject to any formality; such enjoyment and
3
such exercise shall be independent of the existence of TNL – The National Library; SCL – Library of the Supreme Court
o 11
Katrina Michelle Mancao
its
expression,
such
as
books,
pamphlets
and
other
(8)
The
protection
of
this
Convention
shall
not
apply
to
writings;
lectures,
addresses,
sermons
and
other
works
news
of
the
day
or
to
miscellaneous
facts
having
the
of
the
same
nature;
dramatic
or
dramatico-‐musical
character
of
mere
items
of
press
information.
works;
choreographic
works
and
entertainments
in
dumb
show;
musical
compositions
with
or
without
SECTION
172
AND
172.2,
SUPRA
(ON
ORIGINAL
WORKS)
words;
cinematographic
works
to
which
are
assimilated
works
expressed
by
a
process
analogous
to
SECTION
173.
DERIVATIVE
W ORKS.
–
cinematography;
works
of
drawing,
painting,
architecture,
sculpture,
engraving
and
lithography;
173.1.
The
following
derivative
works
shall
also
be
photographic
works
to
which
are
assimilated
works
protected
by
copyright:
expressed
by
a
process
analogous
to
photography;
works
of
applied
art;
illustrations,
maps,
plans,
sketches
(a)
Dramatizations,
translations,
adaptations,
and
three-‐dimensional
works
relative
to
geography,
abridgments,
arrangements,
and
other
topography,
architecture
or
science.
alterations
of
literary
or
artistic
works;
and
(2)
It
shall,
however,
be
a
matter
for
legislation
in
the
(b)
Collections
of
literary,
scholarly
or
artistic
countries
of
the
Union
to
prescribe
that
works
in
general
works,
and
compilations
of
data
and
other
or
any
specified
categories
of
works
shall
not
be
materials
which
are
original
by
reason
of
the
protected
unless
they
have
been
fixed
in
some
material
selection
or
coordination
or
arrangement
of
form.
their
contents.
(3)
Translations,
adaptations,
arrangements
of
music
and
173.2.
The
works
referred
to
in
paragraphs
(a)
and
(b)
other
alterations
of
a
literary
or
artistic
work
shall
be
of
Subsection
173.1
shall
be
protected
as
new
works:
protected
as
original
works
without
prejudice
to
the
Provided
however,
That
such
new
work
shall
not
affect
copyright
in
the
original
work.
the
force
of
any
subsisting
copyright
upon
the
original
works
employed
or
any
part
thereof,
or
be
construed
to
(4)
It
shall
be
a
matter
for
legislation
in
the
countries
of
imply
any
right
to
such
use
of
the
original
works,
or
to
the
Union
to
determine
the
protection
to
be
granted
to
secure
or
extend
copyright
in
such
original
works.
official
texts
of
a
legislative,
administrative
and
legal
nature,
and
to
official
translations
of
such
texts.
SECTION
174.
PUBLISHED
EDITION
OF
WORK.
–
In
addition
to
the
right
to
publish
granted
by
the
author,
(5)
Collections
of
literary
or
artistic
works
such
as
his
heirs,
or
assigns,
the
publisher
shall
have
a
copyright
encyclopaedias
and
anthologies
which,
by
reason
of
the
consisting
merely
of
the
right
of
reproduction
of
the
selection
and
arrangement
of
their
contents,
constitute
typographical
arrangement
of
the
published
edition
of
intellectual
creations
shall
be
protected
as
such,
without
the
work.
prejudice
to
the
copyright
in
each
of
the
works
forming
part
of
such
collections.
SECTION
175.
UNPROTECTED
SUBJECT
MATTER.
–
Notwithstanding
the
provisions
of
Sections
172
and
173,
(6)
The
works
mentioned
in
this
Article
shall
enjoy
no
protection
shall
extend,
under
this
law,
to
any
idea,
protection
in
all
countries
of
the
Union.
This
protection
procedure,
system,
method
or
operation,
concept,
shall
operate
for
the
benefit
of
the
author
and
his
principle,
discovery
or
mere
data
as
such,
even
if
they
are
successors
in
title.
expressed,
explained,
illustrated
or
embodied
in
a
work;
news
of
the
day
and
other
miscellaneous
facts
having
(7)
Subject
to
the
provisions
of
Article
7(4)
of
this
the
character
of
mere
items
of
press
information;
or
any
Convention,
it
shall
be
a
matter
for
legislation
in
the
official
text
of
a
legislative,
administrative
or
legal
nature,
countries
of
the
Union
to
determine
the
extent
of
the
as
well
as
any
official
translation
thereof.
application
of
their
laws
to
works
of
applied
art
and
industrial
designs
and
models,
as
well
as
the
conditions
under
which
such
works,
designs
and
models
shall
be
SECTION
176.
WORKS
OF
THE
GOVERNMENT.
–
protected.
Works
protected
in
the
country
of
origin
176.1.
No
copyright
shall
subsist
in
any
work
of
the
solely
as
designs
and
models
shall
be
entitled
in
another
Government
of
the
Philippines.
However,
prior
approval
country
of
the
Union
only
to
such
special
protection
as
is
of
the
government
agency
or
office
wherein
the
work
is
granted
in
that
country
to
designs
and
models;
however,
created
shall
be
necessary
for
exploitation
of
such
work
if
no
such
special
protection
is
granted
in
that
country,
for
profit.
Such
agency
or
office
may,
among
other
such
works
shall
be
protected
as
artistic
works.
things,
impose
as
a
condition
the
payment
of
royalties.
No
prior
approval
or
conditions
shall
be
required
for
the
use
of
any
purpose
of
statutes,
rules
and
regulations,
and
speeches,
lectures,
sermons,
addresses,
and
12 z
Intellectual Property Law
dissertations,
pronounced,
read
or
rendered
in
courts
of
Copyright,
in
the
strict
sense
of
the
term,
is
purely
a
justice,
before
administrative
agencies,
in
deliberative
statutory
right.
It
is
a
new
or
independent
right
granted
assemblies
and
in
meetings
of
public
character.
by
the
statute,
and
not
simply
a
pre-‐existing
right
regulated
by
the
statute.
Being
a
statutory
grant,
the
176.2.
The
author
of
speeches,
lectures,
sermons,
rights
are
only
such
as
the
statute
confers,
and
may
be
addresses,
and
dissertations
mentioned
in
the
preceding
obtained
and
enjoyed
only
with
respect
to
the
subjects
paragraphs
shall
have
the
exclusive
right
of
making
a
and
by
the
persons,
and
on
terms
and
conditions
collection
of
his
works.
specified
in
the
statute.
176.3.
Notwithstanding
the
foregoing
provisions,
the
Since
copyright
in
published
works
is
purely
a
statutory
Government
is
not
precluded
from
receiving
and
holding
creation,
a
copyright
may
be
obtained
only
for
a
work
copyrights
transferred
to
it
by
assignment,
bequest
or
falling
within
the
statutory
enumeration
or
description.
otherwise;
nor
shall
publication
or
republication
by
the
Government
in
a
public
document
of
any
work
in
which
Regardless
of
the
historical
viewpoint,
it
is
copyright
is
subsisting
be
taken
to
cause
any
abridgment
authoritatively
settled
in
the
United
States
that
there
is
or
annulment
of
the
copyright
or
to
authorize
any
use
or
no
copyright
except
that
which
is
both
created
and
appropriation
of
such
work
without
the
consent
of
the
secured
by
act
of
Congress.
copyright
owner.
P.D.
No.
49,
§2,
in
enumerating
what
are
subject
to
copyright,
refers
to
finished
works
and
not
to
concepts.
JOAQUIN,
JR.
V.
DRILON
(1999)
The
copyright
does
not
extend
to
an
idea,
procedure,
Refresher:
process,
system,
method
of
operation,
concept,
principle,
Petitioner
BJ
Productions,
Inc.
(BJPI)
is
the
or
discovery,
regardless
of
the
form
in
which
it
is
holder/grantee
of
Certificate
of
Copyright
No.
M922,
described,
explained,
illustrated,
or
embodied
in
such
dated
January
28,
1971,
of
Rhoda
and
Me,
a
dating
game
work.
In
fact,
Section
175
of
the
Intellectual
Property
show
aired
from
1970
to
1977.
Code
expressly
excluded
these
as
protected
subject
matter.
On
June
28,
1973,
petitioner
BJPI
submitted
to
the
National
Library
an
addendum
to
its
certificate
of
What
then
is
the
subject
matter
of
petitioners’
copyright
specifying
the
show’s
format
and
style
of
copyright?
This
Court
is
of
the
opinion
that
petitioner
presentation.
BJPI’s
copyright
covers
audio-‐visual
recordings
of
each
episode
of
Rhoda
and
Me,
as
falling
within
the
class
of
On
July
14,
1991,
while
watching
television,
petitioner
works
mentioned
in
P.D.
49,
§2(M),
to
wit:
Francisco
Joaquin,
Jr.,
president
of
BJPI,
saw
on
RPN
Channel
9
an
episode
of
It’s
a
Date,
which
was
produced
Cinematographic
works
and
works
produced
by
IXL
Productions,
Inc.
(IXL).
On
July
18,
1991,
he
wrote
by
a
process
analogous
to
cinematography
or
a
letter
to
private
respondent
Gabriel
M.
Zosa,
president
any
process
for
making
audio-‐visual
recordings;
and
general
manager
of
IXL,
informing
Zosa
that
BJPI
had
a
copyright
to
Rhoda
and
Me
and
demanding
that
The
copyright
does
not
extend
to
the
general
concept
or
IXL
discontinue
airing
It’s
a
Date,
because
the
latter’s
format
of
its
dating
game
show.
Accordingly,
by
the
very
game
format
was
substantially
the
same
as
the
former.
nature
of
the
subject
of
petitioner
BJPI’s
copyright,
the
The
substance
of
the
television
productions
of
the
investigating
prosecutor
should
have
the
opportunity
to
complainant’s
“RHODA
AND
ME”
and
Zosa’s
“IT’S
A
compare
the
videotapes
of
the
two
shows.
DATE”
is
that
two
matches
are
made
between
a
male
and
a
female,
both
single,
and
the
two
couples
are
Mere
description
by
words
of
the
general
format
of
the
treated
to
a
night
or
two
of
dining
and/or
dancing
at
the
two
dating
game
shows
is
insufficient;
the
presentation
expense
of
the
show.
The
major
concepts
of
both
of
the
master
videotape
in
evidence
was
indispensable
shows
is
the
same.
Any
difference
appear
mere
to
the
determination
of
the
existence
of
probable
cause.
variations
of
the
major
concepts.
As
aptly
observed
by
respondent
Secretary
of
Justice:
Doctrine:
A
television
show
includes
more
than
mere
To
begin
with,
the
format
of
a
show
is
not
copyrightable.
words
can
describe
because
it
involves
a
whole
The
format
or
mechanics
of
a
television
show
is
not
spectrum
of
visuals
and
effects,
video
and
included
in
the
list
of
protected
works
in
§2
of
P.D.
No.
audio,
such
that
no
similarity
or
dissimilarity
49,
nor
in
§172
of
the
Intellectual
Property
Code.
For
this
may
be
found
by
merely
describing
the
general
reason,
the
protection
afforded
by
the
law
cannot
be
copyright/format
of
both
dating
game
shows.
extended
to
cover
them.
o 13
Katrina Michelle Mancao
UNITED
FEATURE
SYNDICATE,
INC.
V.
MUNSINGWEAR
license
its
white
pages
listings
to
Feist
for
a
directory
covering
11
different
telephone
service
areas,
Feist
CREATION
MANUFACTURING
COMPANY
(1989)
extracted
the
listings
it
needed
from
Rural's
directory
Refresher:
without
Rural's
consent.
Although
Feist
altered
many
of
This
case
arose
from
petition
filed
by
petitioner
for
the
Rural's
listings,
several
were
identical
to
listings
in
cancellation
of
the
registration
of
trademark
CHARLIE
Rural's
white
pages.
The
District
Court
granted
summary
BROWN
(Registration
No.
SR.
4224)
in
the
name
of
judgment
to
Rural
in
its
copyright
infringement
suit,
respondent
MUNSINGWEAR
in
Inter
Partes
Case
No.
holding
that
telephone
directories
are
copyrightable.
1350
entitled
"United
Feature
Syndicate,
Inc.
v.
The
Court
of
Appeals
affirmed.
Munsingwear
Creation
Mfg.
Co.",
with
the
Philippine
Patent
Office
alleging
that
petitioner
is
damaged
by
the
Doctrine:
registration
of
the
trademark
CHARLIE
BROWN
of
T-‐
Rural's
white
pages
are
not
entitled
to
copyright,
and
Shirts
under
Class
25
with
the
Registration
No.
SR-‐4224
therefore
Feist's
use
of
them
does
not
constitute
dated
September
12,
1979
in
the
name
of
Munsingwear
infringement.
Creation
Manufacturing
Co.,
Inc.,
on
the
following
grounds:
(1)
that
respondent
was
not
entitled
to
the
Article
I,
§
8,
cl.
8,
of
the
Constitution
mandates
registration
of
the
mark
CHARLIE
BROWN,
&
DEVICE
at
originality
as
a
prerequisite
for
copyright
protection.
The
the
time
of
application
for
registration;
(2)
that
CHARLIE
constitutional
requirement
necessitates
independent
BROWN
is
a
character
creation
or
a
pictorial
illustration,
creation
plus
a
modicum
of
creativity.
Since
facts
do
not
the
copyright
to
which
is
exclusively
owned
worldwide
owe
their
origin
to
an
act
of
authorship,
they
are
not
by
the
petitioner;
(3)
that
as
the
owner
of
the
pictorial
original,
and
thus
are
not
copyrightable.
Although
a
illustration
CHARLIE
BROWN,
petitioner
has
since
1950
compilation
of
facts
may
possess
the
requisite
originality
and
continuously
up
to
the
present,
used
and
because
the
author
typically
chooses
which
facts
to
reproduced
the
same
to
the
exclusion
of
others;
(4)
that
include,
in
what
order
to
place
them,
and
how
to
arrange
the
respondent-‐registrant
has
no
bona
fide
use
of
the
the
data
so
that
readers
may
use
them
effectively,
trademark
in
commerce
in
the
Philippines
prior
to
its
copyright
protection
extends
only
to
those
components
application
for
registration.
of
the
work
that
are
original
to
the
author,
not
to
the
facts
themselves.
This
fact/expression
dichotomy
Doctrine:
severely
limits
the
scope
of
protection
in
fact-‐based
Since
the
name
"CHARLIE
BROWN"
and
its
pictorial
works.
representation
were
covered
by
a
copyright
registration
way
back
in
1950,
the
same
are
entitled
to
protection
The
Copyright
Act
of
1976
and
its
predecessor,
the
under
PD
No.
49.
Copyright
Act
of
1909,
leave
no
doubt
that
originality
is
the
touchstone
of
copyright
protection
in
directories
and
Aside
from
its
copyright
registration,
petitioner
is
also
other
fact-‐based
works.
The
1976
Act
explains
that
the
owner
of
several
trademark
registrations
and
copyright
extends
to
"original
works
of
authorship,"
17
application
for
the
name
and
likeness
of
"CHARLIE
U.S.C.
§
102(a),
and
that
there
can
be
no
copyright
in
BROWN"
which
is
the
duly
registered
trademark
and
facts,
§
102(b).
copyright
of
petitioner
United
Feature
Syndicate
Inc.
as
early
as
1957
and
additionally
also
as
TV
SPECIALS
A
compilation
is
not
copyrightable
per
se,
but
is
featuring
the
“PEANUTS”
characters
“CHARLIE
BROWN.”
copyrightable
only
if
its
facts
have
been
"selected,
coordinated,
or
arranged
in
such
a
way
that
the
resulting
FEIST
PUBLICATIONS,
INC.
V.
RURAL
TELEPHONE
SERVICE
work
as
a
whole
constitutes
an
original
work
of
CO.
(1991)
authorship.
Thus,
the
statute
envisions
that
some
ways
Refresher:
of
selecting,
coordinating,
and
arranging
data
are
not
Respondent
Rural
Telephone
Service
Company
is
a
sufficiently
original
to
trigger
copyright
protection.
Even
certified
public
utility
providing
telephone
service
to
a
compilation
that
is
copyrightable
receives
only
limited
several
communities
in
Kansas.
Pursuant
to
state
protection,
for
the
copyright
does
not
extend
to
facts
regulation,
Rural
publishes
a
typical
telephone
directory,
contained
in
the
compilation.
Lower
courts
that
adopted
consisting
of
white
pages
and
yellow
pages.
It
obtains
a
"sweat
of
the
brow"
or
"industrious
collection"
test
-‐-‐
data
for
the
directory
from
subscribers,
who
must
which
extended
a
compilation's
copyright
protection
provide
their
names
and
addresses
to
obtain
telephone
beyond
selection
and
arrangement
to
the
facts
service.
themselves
–
misconstrued
the
1909
Act
and
eschewed
the
fundamental
axiom
of
copyright
law
that
no
one
may
Petitioner
Feist
Publications,
Inc.,
is
a
publishing
copyright
facts
or
ideas.
company
that
specializes
in
area-‐wide
telephone
directories
covering
a
much
larger
geographic
range
Rural's
white
pages
do
not
meet
the
constitutional
or
than
directories
such
as
Rural's.
When
Rural
refused
to
statutory
requirements
for
copyright
protection.
While
14 z
Intellectual Property Law
Rural
has
a
valid
copyright
in
the
directory
as
a
whole
the
person
who
so
commissioned
the
work
shall
have
because
it
contains
some
forward
text
and
some
original
ownership
of
the
work,
but
the
copyright
thereto
shall
material
in
the
yellow
pages,
there
is
nothing
original
in
remain
with
the
creator,
unless
there
is
a
written
Rural's
white
pages.
The
raw
data
are
uncopyrightable
stipulation
to
the
contrary;
facts,
and
the
way
in
which
Rural
selected,
coordinated,
and
arranged
those
facts
is
not
original
in
any
way.
178.5.
In
the
case
of
audiovisual
work,
the
copyright
shall
Rural's
selection
of
listings
-‐-‐
subscribers'
names,
towns,
belong
to
the
producer,
the
author
of
the
scenario,
the
and
telephone
numbers
-‐-‐
could
not
be
more
obvious,
composer
of
the
music,
the
film
director,
and
the
author
and
lacks
the
modicum
of
creativity
necessary
to
of
the
work
so
adapted.
However,
subject
to
contrary
or
transform
mere
selection
into
copyrightable
expression.
other
stipulations
among
the
creators,
the
producer
In
fact,
it
is
plausible
to
conclude
that
Rural
did
not
truly
shall
exercise
the
copyright
to
an
extent
required
for
the
"select"
to
publish
its
subscribers'
names
and
telephone
exhibition
of
the
work
in
any
manner,
except
for
the
numbers,
since
it
was
required
to
do
so
by
state
law.
right
to
collect
performing
license
fees
for
the
Moreover,
there
is
nothing
remotely
creative
about
performance
of
musical
compositions,
with
or
without
arranging
names
alphabetically
in
a
white
pages
words,
which
are
incorporated
into
the
work;
and
directory.
It
is
an
age-‐old
practice,
firmly
rooted
in
tradition
and
so
commonplace
that
it
has
come
to
be
178.6.
In
respect
of
letters,
the
copyright
shall
belong
to
expected
as
a
matter
of
course.
the
writer
subject
to
the
provisions
of
Article
723
of
the
Civil
Code.
Remarks:
US
case.
SECTION
179.
ANONYMOUS
AND
PSEUDONYMOUS
WORKS.
5. Who
owns
Copyright?
–
For
purposes
of
this
Act,
the
publishers
shall
be
deemed
SECTION
178.
RULES
ON
COPYRIGHT
OWNERSHIP.
–
to
represent
the
authors
of
articles
and
other
writings
Copyright
ownership
shall
be
governed
by
the
following
published
without
the
names
of
the
authors
or
under
rules:
pseudonyms,
unless
the
contrary
appears,
or
the
pseudonyms
or
adopted
name
leaves
no
doubt
as
to
the
178.1.
Subject
to
the
provisions
of
this
section,
in
the
case
author's
identity,
or
if
the
author
of
the
anonymous
of
original
literary
and
artistic
works,
copyright
shall
works
discloses
his
identity.
belong
to
the
author
of
the
work;
SECTION
174.
PUBLISHED
EDITION
OF
WORK.
–
178.2.
In
the
case
of
works
of
joint
authorship,
the
co-‐ In
addition
to
the
right
to
publish
granted
by
the
author,
authors
shall
be
the
original
owners
of
the
copyright
and
his
heirs,
or
assigns,
the
publisher
shall
have
a
copyright
in
the
absence
of
agreement,
their
rights
shall
be
consisting
merely
of
the
right
of
reproduction
of
the
governed
by
the
rules
on
co-‐ownership.
If,
however,
a
typographical
arrangement
of
the
published
edition
of
work
of
joint
authorship
consists
of
parts
that
can
be
the
work.
used
separately
and
the
author
of
each
part
can
be
identified,
the
author
of
each
part
shall
be
the
original
ARTICLE
722,
CIVIL
C ODE.
owner
of
the
copyright
in
the
part
that
he
has
created;
The
author
and
the
composer,
mentioned
in
Nos.
1
and
2
of
the
preceding
article,
shall
have
the
ownership
of
178.3.
In
the
case
of
work
created
by
an
author
during
their
creations
even
before
the
publication
of
the
same.
and
in
the
course
of
his
employment,
the
copyright
shall
Once
their
works
are
published,
their
rights
are
belong
to:
governed
by
the
Copyright
laws.
(a)
The
employee,
if
the
creation
of
the
object
The
painter,
sculptor
or
other
artist
shall
have
dominion
of
copyright
is
not
a
part
of
his
regular
duties
over
the
product
of
his
art
even
before
it
is
copyrighted.
even
if
the
employee
uses
the
time,
facilities
and
materials
of
the
employer.
The
scientist
or
technologist
has
the
ownership
of
his
discovery
or
invention
even
before
it
is
patented.
(b)
The
employer,
if
the
work
is
the
result
of
the
performance
of
his
regularly-‐assigned
ARTICLE
723,
CIVIL
CODE.
duties,
unless
there
is
an
agreement,
express
or
implied,
to
the
contrary.
Letters
and
other
private
communications
in
writing
are
owned
by
the
person
to
whom
they
are
addressed
and
delivered,
but
they
cannot
be
published
or
disseminated
178.4.
In
the
case
of
a
work
commissioned
by
a
person
without
the
consent
of
the
writer
or
his
heirs.
However,
other
than
an
employer
of
the
author
and
who
pays
for
the
court
may
authorize
their
publication
or
it
and
the
work
is
made
in
pursuance
of
the
commission,
o 15
Katrina Michelle Mancao
dissemination
if
the
public
good
or
the
interest
of
justice
so
requires.
(5)
The
term
of
protection
subsequent
to
the
death
of
the
author
and
the
terms
provided
by
paragraphs
(2),
(3)
ARTICLE
520,
CIVIL
CODE.
and
(4)
shall
run
from
the
date
of
death
or
of
the
event
A
trade-‐mark
or
trade-‐name
duly
registered
in
the
proper
referred
to
in
those
paragraphs,
but
such
terms
shall
government
bureau
or
office
is
owned
by
and
pertains
to
always
be
deemed
to
begin
on
the
first
of
January
of
the
the
person,
corporation,
or
firm
registering
the
same,
year
following
the
death
or
such
event.
subject
to
the
provisions
of
special
laws.
(6)
The
countries
of
the
Union
may
grant
a
term
of
protection
in
excess
of
those
provided
by
the
preceding
6. Duration
of
Copyright
paragraphs.
ARTICLE
7,
BERNE
CONVENTION
FOR
THE
PROTECTION
OF
(7)
Those
countries
of
the
Union
bound
by
the
Rome
Act
LITERARY
AND
ARTISTIC
WORKS
of
this
Convention
which
grant,
in
their
national
TERM
OF
PROTECTION:
legislation
in
force
at
the
time
of
signature
of
the
1.
Generally;
present
Act,
shorter
terms
of
protection
than
those
2.
For
cinematographic
works;
provided
for
in
the
preceding
paragraphs
shall
have
the
3.
For
anonymous
and
pseudonymous
works;
right
to
maintain
such
terms
when
ratifying
or
acceding
4.
For
photographic
works
and
works
of
applied
to
the
present
Act.
art;
5.
Starting
date
of
computation;
(8)
In
any
case,
the
term
shall
be
governed
by
the
6.
Longer
terms;
legislation
of
the
country
where
protection
is
claimed;
7.
Shorter
terms;
however,
unless
the
legislation
of
that
country
otherwise
8.
Applicable
law;
“comparison”
of
terms
provides,
the
term
shall
not
exceed
the
term
fixed
in
the
country
of
origin
of
the
work.
(1)
The
term
of
protection
granted
by
this
Convention
shall
be
the
life
of
the
author
and
fifty
years
after
his
ARTICLE
7BIS,
BERNE
CONVENTION
FOR
THE
PROTECTION
death.
OF
LITERARY
AND
ARTISTIC
W ORKS
TERM
OF
PROTECTION
FOR
WORKS
OF
JOINT
AUTHORSHIP
(2)
However,
in
the
case
of
cinematographic
works,
the
countries
of
the
Union
may
provide
that
the
term
of
The
provisions
of
the
preceding
Article
shall
also
apply
in
protection
shall
expire
fifty
years
after
the
work
has
the
case
of
a
work
of
joint
authorship,
provided
that
the
been
made
available
to
the
public
with
the
consent
of
terms
measured
from
the
death
of
the
author
shall
be
the
author,
or,
failing
such
an
event
within
fifty
years
calculated
from
the
death
of
the
last
surviving
author.
from
the
making
of
such
a
work,
fifty
years
after
the
making.
SECTION
213.
TERM
OF
PROTECTION.
–
(3)
In
the
case
of
anonymous
or
pseudonymous
works,
213.1.
Subject
to
the
provisions
of
Subsections
213.2
to
the
term
of
protection
granted
by
this
Convention
shall
213.5,
the
copyright
in
works
under
Sections
172
and
173
expire
fifty
years
after
the
work
has
been
lawfully
made
shall
be
protected
during
the
life
of
the
author
and
for
available
to
the
public.
However,
when
the
pseudonym
fifty
(50)
years
after
his
death.
This
rule
also
applies
to
adopted
by
the
author
leaves
no
doubt
as
to
his
identity,
posthumous
works.
the
term
of
protection
shall
be
that
provided
in
paragraph
(1).
If
the
author
of
an
anonymous
or
213.2.
In
case
of
works
of
joint
authorship,
the
economic
pseudonymous
work
discloses
his
identity
during
the
rights
shall
be
protected
during
the
life
of
the
last
above-‐mentioned
period,
the
term
of
protection
surviving
author
and
for
fifty
(50)
years
after
his
death.
applicable
shall
be
that
provided
in
paragraph
(1).
The
countries
of
the
Union
shall
not
be
required
to
protect
213.3.
In
case
of
anonymous
or
pseudonymous
works,
anonymous
or
pseudonymous
works
in
respect
of
which
the
copyright
shall
be
protected
for
fifty
(50)
years
from
it
is
reasonable
to
presume
that
their
author
has
been
the
date
on
which
the
work
was
first
lawfully
published:
dead
for
fifty
years.
Provided,
That
where,
before
the
expiration
of
the
said
period,
the
author's
identity
is
revealed
or
is
no
longer
in
(4)
It
shall
be
a
matter
for
legislation
in
the
countries
of
doubt,
the
provisions
of
Subsections
213.1.
and
213.2
shall
the
Union
to
determine
the
term
of
protection
of
apply,
as
the
case
may
be:
Provided,
further,
That
such
photographic
works
and
that
of
works
of
applied
art
in
works
if
not
published
before
shall
be
protected
for
fifty
so
far
as
they
are
protected
as
artistic
works;
however,
(50)
years
counted
from
the
making
of
the
work.
this
term
shall
last
at
least
until
the
end
of
a
period
of
twenty-‐five
years
from
the
making
of
such
a
work.
16 z
Intellectual Property Law
213.4.
In
case
of
works
of
applied
art
the
protection
shall
Government
or
any
of
its
subdivisions
and
be
for
a
period
of
twenty-‐five
(25)
years
from
the
date
of
instrumentalities,
including
government-‐owned
or
making.
controlled
corporations
as
a
part
of
his
regularly
prescribed
official
duties.
213.5.
In
case
of
photographic
works,
the
protection
shall
be
for
fifty
(50)
years
from
publication
of
the
work
and,
SECTION
184.
LIMITATIONS
ON
COPYRIGHT.
–
if
unpublished,
fifty
(50)
years
from
the
making.
184.1.
Notwithstanding
the
provisions
of
Chapter
V,
the
following
acts
shall
not
constitute
infringement
of
213.6.
In
case
of
audio-‐visual
works
including
those
copyright:
produced
by
process
analogous
to
photography
or
any
process
for
making
audio-‐visual
recordings,
the
term
(a)
The
recitation
or
performance
of
a
work,
shall
be
fifty
(50)
years
from
date
of
publication
and,
if
once
it
has
been
lawfully
made
accessible
to
unpublished,
from
the
date
of
making.
the
public,
if
done
privately
and
free
of
charge
or
if
made
strictly
for
a
charitable
or
religious
SECTION
214.
CALCULATION
OF
TERM.
–
institution
or
society;
The
term
of
protection
subsequent
to
the
death
of
the
author
provided
in
the
preceding
Section
shall
run
from
(b)
The
making
of
quotations
from
a
published
the
date
of
his
death
or
of
publication,
but
such
terms
work
if
they
are
compatible
with
fair
use
and
shall
always
be
deemed
to
begin
on
the
first
day
of
only
to
the
extent
justified
for
the
purpose,
January
of
the
year
following
the
event
which
gave
rise
including
quotations
from
newspaper
articles
to
them.
and
periodicals
in
the
form
of
press
summaries:
Provided,
That
the
source
and
the
name
of
the
author,
if
appearing
on
the
work,
are
7. Limitations
on
Copyright
mentioned;
SECTION
176.
WORKS
OF
THE
GOVERNMENT.
–
(c)
The
reproduction
or
communication
to
the
176.1.
No
copyright
shall
subsist
in
any
work
of
the
public
by
mass
media
of
articles
on
current
Government
of
the
Philippines.
However,
prior
approval
political,
social,
economic,
scientific
or
religious
of
the
government
agency
or
office
wherein
the
work
is
topic,
lectures,
addresses
and
other
works
of
created
shall
be
necessary
for
exploitation
of
such
work
the
same
nature,
which
are
delivered
in
public
for
profit.
Such
agency
or
office
may,
among
other
if
such
use
is
for
information
purposes
and
has
things,
impose
as
a
condition
the
payment
of
royalties.
not
been
expressly
reserved:
Provided,
That
No
prior
approval
or
conditions
shall
be
required
for
the
the
source
is
clearly
indicated;
use
of
any
purpose
of
statutes,
rules
and
regulations,
and
speeches,
lectures,
sermons,
addresses,
and
(d)
The
reproduction
and
communication
to
dissertations,
pronounced,
read
or
rendered
in
courts
of
the
public
of
literary,
scientific
or
artistic
works
justice,
before
administrative
agencies,
in
deliberative
as
part
of
reports
of
current
events
by
means
assemblies
and
in
meetings
of
public
character.
of
photography,
cinematography
or
broadcasting
to
the
extent
necessary
for
the
176.2.
The
author
of
speeches,
lectures,
sermons,
purpose;
addresses,
and
dissertations
mentioned
in
the
preceding
paragraphs
shall
have
the
exclusive
right
of
making
a
(e)
The
inclusion
of
a
work
in
a
publication,
collection
of
his
works.
broadcast,
or
other
communication
to
the
public,
sound
recording
or
film,
if
such
inclusion
176.3.
Notwithstanding
the
foregoing
provisions,
the
is
made
by
way
of
illustration
for
teaching
purposes
and
is
compatible
with
fair
use:
Government
is
not
precluded
from
receiving
and
holding
Provided,
That
the
source
and
of
the
name
of
copyrights
transferred
to
it
by
assignment,
bequest
or
the
author,
if
appearing
in
the
work,
are
otherwise;
nor
shall
publication
or
republication
by
the
mentioned;
Government
in
a
public
document
of
any
work
in
which
copyright
is
subsisting
be
taken
to
cause
any
abridgment
(f)
The
recording
made
in
schools,
universities,
or
annulment
of
the
copyright
or
to
authorize
any
use
or
or
educational
institutions
of
a
work
included
in
appropriation
of
such
work
without
the
consent
of
the
a
broadcast
for
the
use
of
such
schools,
copyright
owner.
universities
or
educational
institutions:
Provided,
That
such
recording
must
be
deleted
SECTION
171.11.
within
a
reasonable
period
after
they
were
first
A
"WORK
OF
THE
GOVERNMENT
OF
THE
PHILIPPINES"
is
a
work
broadcast:
Provided,
further,
That
such
created
by
an
officer
or
employee
of
the
Philippine
recording
may
not
be
made
from
audiovisual
o 17
Katrina Michelle Mancao
works
which
are
part
of
the
general
cinema
whether
the
use
made
of
a
work
in
any
particular
case
is
repertoire
of
feature
films
except
for
brief
fair
use,
the
factors
to
be
considered
shall
include:
excerpts
of
the
work;
(a)
The
purpose
and
character
of
the
use,
(g)
The
making
of
ephemeral
recordings
by
a
including
whether
such
use
is
of
a
commercial
broadcasting
organization
by
means
of
its
own
nature
or
is
for
non-‐profit
educational
facilities
and
for
use
in
its
own
broadcast;
purposes;
(h)
The
use
made
of
a
work
by
or
under
the
(b)
The
nature
of
the
copyrighted
work;
direction
or
control
of
the
Government,
by
the
National
Library
or
by
educational,
scientific
or
(c)
The
amount
and
substantiality
of
the
professional
institutions
where
such
use
is
in
portion
used
in
relation
to
the
copyrighted
the
public
interest
and
is
compatible
with
fair
work
as
a
whole;
and
use;
(d)
The
effect
of
the
use
upon
the
potential
(i)
The
public
performance
or
the
market
for
or
value
of
the
copyrighted
work.
communication
to
the
public
of
a
work,
in
a
place
where
no
admission
fee
is
charged
in
185.2.
The
fact
that
a
work
is
unpublished
shall
not
by
respect
of
such
public
performance
or
itself
bar
a
finding
of
fair
use
if
such
finding
is
made
upon
communication,
by
a
club
or
institution
for
consideration
of
all
the
above
factors.
charitable
or
educational
purpose
only,
whose
aim
is
not
profit
making,
subject
to
such
other
SECTION
186.
WORK
OF
ARCHITECTURE.
–
limitations
as
may
be
provided
in
the
Copyright
in
a
work
of
architecture
shall
include
the
right
Regulations;
to
control
the
erection
of
any
building
which
reproduces
the
whole
or
a
substantial
part
of
the
work
either
in
its
(j)
Public
display
of
the
original
or
a
copy
of
the
original
form
or
in
any
form
recognizably
derived
from
work
not
made
by
means
of
a
film,
slide,
the
original:
Provided,
That
the
copyright
in
any
such
television
image
or
otherwise
on
screen
or
by
work
shall
not
include
the
right
to
control
the
means
of
any
other
device
or
process:
Provided,
reconstruction
or
rehabilitation
in
the
same
style
as
the
That
either
the
work
has
been
published,
or,
original
of
a
building
to
which
that
copyright
relates.
that
the
original
or
the
copy
displayed
has
been
sold,
given
away
or
otherwise
transferred
to
another
person
by
the
author
or
his
successor
SECTION
187.
REPRODUCTION
OF
PUBLISHED
WORK.
–
in
title;
and
187.1.
Notwithstanding
the
provision
of
Section
177,
and
subject
to
the
provisions
of
Subsection
187.2,
the
private
(k)
Any
use
made
of
a
work
for
the
purpose
of
reproduction
of
a
published
work
in
a
single
copy,
where
any
judicial
proceedings
or
for
the
giving
of
the
reproduction
is
made
by
a
natural
person
exclusively
professional
advice
by
a
legal
practitioner.
for
research
and
private
study,
shall
be
permitted,
without
the
authorization
of
the
owner
of
copyright
in
184.2.
The
provisions
of
this
section
shall
be
interpreted
the
work.
in
such
a
way
as
to
allow
the
work
to
be
used
in
a
manner
which
does
not
conflict
with
the
normal
187.2.
The
permission
granted
under
Subsection
187.1
exploitation
of
the
work
and
does
not
unreasonably
shall
not
extend
to
the
reproduction
of:
prejudice
the
right
holder's
legitimate
interests.4
(a)
A
work
of
architecture
in
the
form
of
SECTION
185.
FAIR
USE
OF
A
COPYRIGHTED
WORK.
–
building
or
other
construction;
185.1.
The
fair
use
of
a
copyrighted
work
for
criticism,
(b)
An
entire
book,
or
a
substantial
part
thereof,
comment,
news
reporting,
teaching
including
multiple
or
of
a
musical
work
in
graphic
form
by
copies
for
classroom
use,
scholarship,
research,
and
reprographic
means;
similar
purposes
is
not
an
infringement
of
copyright.
Decompilation,
which
is
understood
here
to
be
the
(c)
A
compilation
of
data
and
other
materials;
reproduction
of
the
code
and
translation
of
the
forms
of
the
computer
program
to
achieve
the
inter-‐operability
of
(d)
A
computer
program
except
as
provided
in
an
independently
created
computer
program
with
other
Section
189;
and
programs
may
also
constitute
fair
use.
In
determining
(e)
Any
work
in
cases
where
reproduction
4
IMPORTANT
NOTE:
184.1
must
be
read
with
184.2.
would
unreasonably
conflict
with
a
normal
18 z
Intellectual Property Law
exploitation
of
the
work
or
would
otherwise
and
to
the
extent,
for
which
the
computer
unreasonably
prejudice
the
legitimate
interests
program
has
been
obtained;
and
of
the
author.
(b)
Archival
purposes,
and,
for
the
replacement
SECTION
188.
REPROGRAPHIC
REPRODUCTION
BY
LIBRARIES.
of
the
lawfully
owned
copy
of
the
computer
program
in
the
event
that
the
lawfully
obtained
–
copy
of
the
computer
program
is
lost,
188.1.
Notwithstanding
the
provisions
of
Subsection
destroyed
or
rendered
unusable.
177.6,
any
library
or
archive
whose
activities
are
not
for
profit
may,
without
the
authorization
of
the
author
of
189.2.
No
copy
or
adaptation
mentioned
in
this
copyright
owner,
make
a
single
copy
of
the
work
by
Section
shall
be
used
for
any
purpose
other
than
the
reprographic
reproduction:
ones
determined
in
this
Section,
and
any
such
copy
or
adaptation
shall
be
destroyed
in
the
event
that
(a)
Where
the
work
by
reason
of
its
fragile
continued
possession
of
the
copy
of
the
computer
character
or
rarity
cannot
be
lent
to
user
in
its
program
ceases
to
be
lawful.
original
form;
189.3.
This
provision
shall
be
without
prejudice
to
the
(b)
Where
the
works
are
isolated
articles
application
of
Section
185
whenever
appropriate.
contained
in
composite
works
or
brief
portions
of
other
published
works
and
the
reproduction
is
necessary
to
supply
them,
when
this
is
SECTION
190.
IMPORTATION
FOR
PERSONAL
PURPOSES.
–
considered
expedient,
to
persons
requesting
190.1.
Notwithstanding
the
provision
of
Subsection
177.6,
their
loan
for
purposes
of
research
or
study
but
subject
to
the
limitation
under
the
Subsection
185.2,
instead
of
lending
the
volumes
or
booklets
the
importation
of
a
copy
of
a
work
by
an
individual
for
which
contain
them;
and
his
personal
purposes
shall
be
permitted
without
the
authorization
of
the
author
of,
or
other
owner
of
(c)
Where
the
making
of
such
a
copy
is
in
order
copyright
in,
the
work
under
the
following
to
preserve
and,
if
necessary
in
the
event
that
it
circumstances:
is
lost,
destroyed
or
rendered
unusable,
replace
a
copy,
or
to
replace,
in
the
permanent
(a)
When
copies
of
the
work
are
not
available
collection
of
another
similar
library
or
archive,
a
in
the
Philippines
and:
copy
which
has
been
lost,
destroyed
or
rendered
unusable
and
copies
are
not
available
(i)
Not
more
than
one
(1)
copy
at
one
with
the
publisher.
time
is
imported
for
strictly
individual
use
only;
or
188.2.
Notwithstanding
the
above
provisions,
it
shall
not
be
permissible
to
produce
a
volume
of
a
work
published
(ii)
The
importation
is
by
authority
of
in
several
volumes
or
to
produce
missing
tomes
or
pages
and
for
the
use
of
the
Philippine
of
magazines
or
similar
works,
unless
the
volume,
tome
Government;
or
or
part
is
out
of
stock:
Provided,
That
every
library
which,
by
law,
is
entitled
to
receive
copies
of
a
printed
work,
(iii)
The
importation,
consisting
of
not
shall
be
entitled,
when
special
reasons
so
require,
to
more
than
three
(3)
such
copies
or
reproduce
a
copy
of
a
published
work
which
is
likenesses
in
any
one
invoice,
is
not
considered
necessary
for
the
collection
of
the
library
but
for
sale
but
for
the
use
only
of
any
which
is
out
of
stock.
religious,
charitable,
or
educational
society
or
institution
duly
SECTION
189.
REPRODUCTION
OF
COMPUTER
PROGRAM.
–
incorporated
or
registered,
or
is
for
the
encouragement
of
the
fine
arts,
189.1.
Notwithstanding
the
provisions
of
Section
177,
the
or
for
any
state
school,
college,
reproduction
in
one
(1)
back-‐up
copy
or
adaptation
of
a
university,
or
free
public
library
in
the
computer
program
shall
be
permitted,
without
the
Philippines.
authorization
of
the
author
of,
or
other
owner
of
copyright
in,
a
computer
program,
by
the
lawful
owner
(b)
When
such
copies
form
parts
of
libraries
of
that
computer
program:
Provided,
That
the
copy
or
and
personal
baggage
belonging
to
persons
or
adaptation
is
necessary
for:
families
arriving
from
foreign
countries
and
are
not
intended
for
sale:
Provided,
That
such
(a)
The
use
of
the
computer
program
in
copies
do
not
exceed
three
(3).
conjunction
with
a
computer
for
the
purpose,
o 19
Katrina Michelle Mancao
190.2.
Copies
imported
as
allowed
by
this
Section
may
SECTION
2.
USE
IN
JUDICIAL
PROCEEDINGS
OR
BY
LEGAL
not
lawfully
be
used
in
any
way
to
violate
the
rights
of
PRACTITIONERS.
—
owner
the
copyright
or
annul
or
limit
the
protection
Without
prejudice
to
other
exceptions
to
protection,
the
secured
by
this
Act,
and
such
unlawful
use
shall
be
use
of
copyrighted
works
as
provided
in
the
IPC
“for
the
deemed
an
infringement
and
shall
be
punishable
as
such
giving
of
professional
advise
by
a
legal
practitioner”
is
without
prejudice
to
the
proprietor's
right
of
action.
limited
to
those
uses
directly
connected
to
the
rendering
of
legal
advice
with
respect
to
such
works,
or
to
190.3.
Subject
to
the
approval
of
the
Secretary
of
Finance,
individuals,
institutions,
events
or
circumstances
to
the
Commissioner
of
Customs
is
hereby
empowered
to
which
the
creation
of
exploitation
of
such
works
are
make
rules
and
regulations
for
preventing
the
directly
related.
This
exception
does
not
apply
to
the
importation
of
articles
the
importation
of
which
is
exercise
of
exclusive
rights
of
copyright
owners
in
legal
prohibited
under
this
Section
and
under
treaties
and
research
materials,
legal-‐related
computer
software,
conventions
to
which
the
Philippines
may
be
a
party
and
legal-‐related
online
material,
or
the
other
works
utilized
for
seizing
and
condemning
and
disposing
of
the
same
in
in
the
practice
of
law
on
a
regular
basis.
case
they
are
discovered
after
they
have
been
imported.
SECTION
3.
USES
COMPATIBLE
WITH
FAIR
USE.
—
RULE
14
–
LIMITATIONS
ON
COPYRIGHT,
COPYRIGHT
To
determine
whether
use
of
a
copyrighted
work
is
SAFEGUARDS
AND
REGULATIONS
“compatible
with
fair
use,”
the
criteria
set
forth
in
Sec.
185
of
the
IPC
shall
be
applied.
SECTION
1.
PUBLIC
PERFORMANCE
OR
COMMUNICATION
TO
THE
SECTION
4.
FAIR
USE
AND
DECOMPILATION
OF
COMPUTER
PUBLIC
OF
WORK
BY
NON-‐PROFIT
INSTITUTION.
—
SOFTWARE.
—
The
public
performance
or
the
communication
to
the
An
act
of
decompilation
of
software
may
qualify
for
public
of
a
work,
in
a
place
where
no
admission
fee
is
analysis
under
the
fair
use
provisions
if
it
meets
all
of
the
charged
in
respect
of
such
public
performance
or
criteria
set
out
in
the
IPC,
viz:
communication,
by
a
club
or
institution
for
charitable
or
educational
purposes
only,
whose
aim
is
not
profit-‐
(a)
It
consist
only
of
the
reproduction
of
code
making,
shall
not
constitute
infringement
of
copyright,
and
translation
of
the
forms
of
a
computer
if:
program;
(a)
The
works
are
limited
to
non-‐dramatic
(b)
The
reproduction
and
translation
are
literary
works
and
non-‐copyrighted
musical
indispensable
to
obtain
information,
such
that
compositions,
and
do
not
include
audiovisual
information
can
be
obtained
in
no
other
way
works
or
computer
programs;
than
through
decompilation;
(b)
The
clubs
or
institutions
to
which
this
(c)
The
information
is
necessary
in
order
to
subsection
applies
are
limited
to
those
achieve
interoperability
(i.e.,
interoperability
organized
exclusively
for
charitable
or
cannot
be
achieved
without
obtaining
the
educational
purposes;
and
if
the
following
information
and
without
using
decompilation
conditions
are
satisfied:
to
obtain
it)
;
and
(i)
No
fee
or
compensation
is
paid
to
(d)
The
interoperability
that
is
sought
is
any
performers,
promoters
or
between
the
decompiled
program
and
an
organizers
of
the
public
performance;
independently
created
computer
program
(i.e.,
a
computer
program
that
was
created
prior
to
(ii)
There
is
no
direct
or
indirect
and
without
reference
to
the
decompilation).
admission
charge
to
the
place
where
the
performance
occurs;
and
If
the
above
criteria
are
satisfied,
then
the
fair
use
factors
set
forth
in
the
IPC
can
be
applied
in
order
to
(iii)
Admission
to
the
performance
is
decide
whether
or
not
the
decompilation,
in
the
restricted
to
persons
who
are,
and
for
particular
circumstances
involved,
constitutes
a
fair
use.
at
least
the
preceding
thirty
days
The
fact
that
a
use
is
decompilation
(as
defined
by
the
have
been,
members
in
good
statutory
criteria)
creates
no
presumption
that
the
use
is
standing
of
the
club
or
the
institution
fair.
for
whose
charitable
or
education
purposes
the
performance
is
being
carried
out.
20 z
Intellectual Property Law
SECTION
5.
EFFECT
ON
VALUE
OF
THE
WORK.
—
publication
of
the
article
"we
reserved
all
rights,"
which
The
effect
of
the
use
upon
the
value
of
the
copyrighted
was
legally
equivalent
to
a
notice
"that
their
publication
work
shall
also
constitute
a
limitation
on
fair
use
of
is
reserved."
To
give
that
paragraph
any
other
works,
particularly
whenever
their
reproduction
will
construction
would
eliminate,
take
from
it,
and
wipe
out,
affect
their
usefulness,
reliability,
and
validity
such
as
the
words
"that
their
publication
is
reserved,"
and
this
psychological
tests
and
others
of
similar
nature.
court
has
no
legal
right
to
do
that.
It
was
contended
that
Reproduction
of
these
works
shall,
therefore,
need
prior
this
construction
would
nullify
the
use
and
value
of
the
authority
of
the
copyright
owner.
whole
Copyright
Law,
but
it
will
be
noted
that
this
exception
is
specifically
confined
and
limited
to
"news
SECTION
6.
REPRODUCTION
OR
COMMUNICATION
TO
THE
PUBLIC
items
editorial
paragraphs,
and
articles
in
periodicals,"
BY
MASS
M EDIA
OF
ARTICLES,
LECTURE,
ETC.
—
and
hence
could
not
be
made
to
apply
to
any
other
provisions
of
the
Copyright
Law.
It
will
also
be
noted
The
reproduction
or
communication
to
the
public
by
that
in
the
instant
case,
the
defendant
had
the
legal
right
mass
media
of
articles,
such
as
those
publish
in
to
publish
the
article
in
question
by
giving
"the
source
of
newspapers
or
periodicals
on
current
political,
social,
the
reproduction."
The
plaintiff
bought
and
paid
for
the
economic,
scientific,
or
religious
topics,
as
well
as
article
and
published
it
with
the
notice
that
"we
reserve
lectures,
addresses,
and
other
works
of
the
same
nature,
all
rights,"
and
the
defendant
published
the
article
in
which
are
delivered
in
public,
shall
not
constitute
question
without
citing
"the
source
of
the
infringement
of
copyright
if
such
use
is
for
information
reproduction,"
and
for
aught
that
appeared
in
his
paper,
purposes
and
has
not
been
expressly
reserved:
Provided,
the
article
was
purchase
and
paid
for
by
the
defendant.
that
the
source
is
clearly
indicated
and
that
the
use
of
the
work
should
not
unreasonably
prejudice
the
right
We
are
clearly
of
the
opinion
that
the
language
in
holder’s
legitimate
interests.
question
in
the
Copyright
Law
of
the
Philippine
Islands,
which
is
not
found
in
the
Copyright
Law
of
the
United
FILIPINO
SOCIETY
OF
COMPOSERS
V.
BENJAMIN
TAN
(1987),
States,
was
inserted
for
a
specific
purpose,
and
it
was
SUPRA
intended
to
prohibit
the
doing
of
the
very
thing
which
the
defendant
did
in
this
case;
otherwise,
the
use
of
all
PHILIPPINE
EDUCATION
CO.
V.
SOTTO
AND
ALINDADA
of
those
words
is
a
nullity.
This
construction
does
not
least
impair
the
Copyright
Law,
except
as
to
"news
items,
(1929)
editorial
paragraphs,
and
articles
in
periodicals,"
and
it
Refresher:
protects
an
enterprising
newspaper
or
magazine
that
The
True
Story
of
Mrs.
Rizal,
written
by
Prof.
Craig,
invests
its
money
and
pays
for
the
right
to
publish
an
published
by
Petitioner
in
Philippine
Education
Magazine.
original
article,
and
that
was
the
reason
why
the
It
was
alleged
that
Respondent
reproduced
the
same
in
Legislature
saw
fit
to
use
the
language
in
question.
The
Independent,
without
the
Petitioner’s
permission.
Applicable
law
is
Act
No.
3134.
Ma’am
comment
on
the
case:
This
is
erroneous!!!
Doctrine:
SONY
CORPORATION
OF
AMERICA
V.
UNIVERSAL
STUDIOS,
Analyzing
the
language
used,
it
says,
first,
that
such
news
items,
editorial
paragraphs,
and
articles
in
INC.
(1983)
periodicals
may
be
reproduced,
unless
they
contain
a
Refresher:
notice
that
their
publication
is
reserved,
or,
second,
that
Petitioner
Sony
Corp.
manufactures
home
video
tape
may
also
be
reproduced,
unless
they
contain
a
notice
of
recorders
(VTR's),
and
markets
them
through
retail
copyright.
But
in
either
event,
the
law
specifically
establishments,
some
of
which
are
also
petitioners.
provides
that
"the
source
of
the
reproduction
or
original
reproduced
shall
be
cited,"
and
is
not
confined
or
limited
Respondents
own
the
copyrights
on
some
of
the
to
case
in
which
there
is
"a
notice
of
copyright,"
and
television
programs
that
are
broadcast
on
the
public
specifically
says
that
in
either
event
"the
source
of
the
airwaves.
reproduction
or
original
reproduced
shall
be
cited."
To
give
this
section
any
other
construction
would
be
to
Respondents
brought
an
action
against
petitioners
in
nullify,
eliminate
and
take
from
the
paragraph
the
words
Federal
District
Court,
alleging
that
VTR
consumers
had
"they
contain
a
notice
that
their
publication
is
reserved,"
been
recording
some
of
respondents'
copyrighted
works
and
to
say
that
the
Legislature
never
intended
to
say
that
had
been
exhibited
on
commercially
sponsored
what
it
did
say.
This
court
must
construe
the
language
television
and
thereby
infringed
respondents'
copyrights,
found
in
the
act.
and
further
that
petitioners
were
liable
for
such
copyright
infringement
because
of
their
marketing
of
In
the
instant
case,
the
plaintiff
did
not
give
notice
of
its
the
VTR's.
Respondents
sought
money
damages,
an
copyright,
for
the
simple
reason
that
it
did
not
have
a
equitable
accounting
of
profits,
and
an
injunction
against
copyright,
but
it
did
notify
the
defendant
that
in
the
the
manufacture
and
marketing
of
the
VTR's.
o 21
Katrina Michelle Mancao
view
the
broadcast
so
that
it
can
be
watched
at
The
District
Court
denied
respondents
all
relief,
holding
a
later
time);
and
that
noncommercial
home
use
recording
of
material
broadcast
over
the
public
airwaves
was
a
fair
use
of
(2)
that
there
is
no
likelihood
that
time-‐shifting
copyrighted
works
and
did
not
constitute
copyright
would
cause
nonminimal
harm
to
the
potential
infringement,
and
that
petitioners
could
not
be
held
market
for,
or
the
value
of,
respondents'
liable
as
contributory
infringers
even
if
the
home
use
of
a
copyrighted
works.
VTR
was
considered
an
infringing
use.
The
Court
of
Appeals
reversed,
holding
petitioners
liable
for
The
VTR's
are
therefore
capable
of
substantial
contributory
infringement
and
ordering
the
District
noninfringing
uses.
Private,
noncommercial
time-‐shifting
Court
to
fashion
appropriate
relief.
in
the
home
satisfies
this
standard
of
noninfringing
uses
both
because
respondents
have
no
right
to
prevent
other
Doctrine:
copyright
holders
from
authorizing
such
time-‐shifting
for
The
sale
of
the
VTR's
to
the
general
public
does
not
their
programs,
and
because
the
District
Court's
findings
constitute
contributory
infringement
of
respondents'
reveal
that
even
the
unauthorized
home
time-‐shifting
of
copyrights.
respondents'
programs
is
legitimate
fair
use.
The
protection
given
to
copyrights
is
wholly
statutory,
Remarks:
US
Case.
and,
in
a
case
like
this,
in
which
Congress
has
not
plainly
marked
the
course
to
be
followed
by
the
judiciary,
this
HARPER
&
ROW,
PUBLISHERS,
INC.
V.
NATION
ENTERPRISES
Court
must
be
circumspect
in
construing
the
scope
of
(1985)
rights
created
by
a
statute
that
never
contemplated
such
a
calculus
of
interests.
Any
individual
may
reproduce
a
Refresher:
copyrighted
work
for
a
"fair
use";
the
copyright
owner
In
1977,
former
President
Ford
contracted
with
does
not
possess
the
exclusive
right
to
such
a
use.
petitioners
to
publish
his
as
yet
unwritten
memoirs.
The
agreement
gave
petitioners
the
exclusive
first
serial
right
Petitioner
is
not
a
“contributory
infringer.”
Kalem
Co.
v.
to
license
prepublication
excerpts.
Two
years
later,
as
Harper
Brothers
does
not
support
respondents'
novel
the
memoirs
were
nearing
completion,
petitioners,
as
theory
that
supplying
the
"means"
to
accomplish
an
the
copyright
holders,
negotiated
a
prepublication
infringing
activity
and
encouraging
that
activity
through
licensing
agreement
with
Time
Magazine
under
which
advertisement
are
sufficient
to
establish
liability
for
Time
agreed
to
pay
$25,000
($12,500
in
advance
and
the
copyright
infringement.
This
case
does
not
fall
in
the
balance
at
publication)
in
exchange
for
the
right
to
category
of
those
in
which
it
is
manifestly
just
to
impose
excerpt
7,500
words
from
Mr.
Ford's
account
of
his
vicarious
liability
because
the
"contributory"
infringer
pardon
of
former
President
Nixon.
Shortly
before
the
was
in
a
position
to
control
the
use
of
copyrighted
works
Time
article's
scheduled
release,
an
unauthorized
source
by
others
and
had
authorized
the
use
without
provided
The
Nation
Magazine
with
the
unpublished
permission
from
the
copyright
owner.
Here,
the
only
Ford
manuscript.
Working
directly
from
this
manuscript,
contact
between
petitioners
and
the
users
of
the
VTR's
an
editor
of
The
Nation
produced
a
2,250-‐word
article,
at
occurred
at
the
moment
of
sale.
And
there
is
no
least
300
to
400
words
of
which
consisted
of
verbatim
precedent
for
imposing
vicarious
liability
on
the
theory
quotes
of
copyrighted
expression
taken
from
the
that
petitioners
sold
the
VTR's
with
constructive
manuscript.
It
was
timed
to
"scoop"
the
Time
article.
As
knowledge
that
their
customers
might
use
the
a
result
of
the
publication
of
The
Nation's
article,
Time
equipment
to
make
unauthorized
copies
of
copyrighted
canceled
its
article
and
refused
to
pay
the
remaining
material.
The
sale
of
copying
equipment,
like
the
sale
of
$12,500
to
petitioners.
Petitioners
then
brought
suit
in
other
articles
of
commerce,
does
not
constitute
Federal
District
Court
against
respondent
publishers
of
contributory
infringement
if
the
product
is
widely
used
The
Nation,
alleging,
inter
alia,
violations
of
the
for
legitimate,
unobjectionable
purposes,
or,
indeed,
is
Copyright
Act
(Act).
The
District
Court
held
that
the
Ford
merely
capable
of
substantial
noninfringing
uses.
memoirs
were
protected
by
copyright
at
the
time
of
The
Nation
publication
and
that
respondents'
use
of
the
The
record
and
the
District
Court's
findings
show:
copyrighted
material
constituted
an
infringement
under
the
Act,
and
the
court
awarded
actual
damages
of
(1)
that
there
is
a
significant
likelihood
that
$12,500.
The
Court
of
Appeals
reversed,
holding
that
The
substantial
numbers
of
copyright
holders
who
Nation's
publication
of
the
300
to
400
words
it
identified
license
their
works
for
broadcast
on
free
as
copyrightable
expression
was
sanctioned
as
a
"fair
television
would
not
object
to
having
their
use"
of
the
copyrighted
material
under
107
of
the
Act.
broadcast
time-‐shifted
by
private
viewers
(i.
e.,
Section
107
provides
that
notwithstanding
the
provisions
recorded
at
a
time
when
the
VTR
owner
cannot
of
106
giving
a
copyright
owner
the
exclusive
right
to
reproduce
the
copyrighted
work
and
to
prepare
22 z
Intellectual Property Law
derivative
works
based
on
the
copyrighted
work,
the
fair
separate
factor
tending
to
weigh
against
a
use
of
a
copyrighted
work
for
purposes
such
as
finding
of
fair
use.
Fair
use
presupposes
good
comment
and
news
reporting
is
not
an
infringement
of
faith.
The
Nation's
unauthorized
use
of
the
copyright.
Section
107
further
provides
that
in
undisseminated
manuscript
had
not
merely
the
determining
whether
the
use
was
fair
the
factors
to
be
incidental
effect
but
the
intended
purpose
of
considered
shall
include:
(1)
the
purpose
and
character
supplanting
the
copyright
holders'
of
the
use;
(2)
the
nature
of
the
copyrighted
work;
(3)
commercially
valuable
right
of
first
publication.
the
substantiality
of
the
portion
used
in
relation
to
the
copyrighted
work
as
a
whole;
and
(4)
the
effect
on
the
(ii)
While
there
may
be
a
greater
need
to
potential
market
for
or
value
of
the
copyrighted
work.
disseminate
works
of
fact
than
works
of
fiction,
The
Nation's
taking
of
copyrighted
expression
Doctrine:
exceeded
that
necessary
to
disseminate
the
The
Nation's
article
was
not
a
"fair
use"
sanctioned
by
facts
and
infringed
the
copyright
holders'
107.
interests
in
confidentiality
and
creative
control
over
the
first
public
appearance
of
the
work.
In
using
generous
verbatim
excerpts
of
Mr.
Ford's
unpublished
expression
to
lend
authenticity
to
its
(iii)
Although
the
verbatim
quotes
in
question
account
of
the
forthcoming
memoirs,
The
Nation
were
an
insubstantial
portion
of
the
Ford
effectively
arrogated
to
itself
the
right
of
first
manuscript,
they
qualitatively
embodied
Mr.
publication,
an
important
marketable
subsidiary
right.
Ford's
distinctive
expression
and
played
a
key
role
in
the
infringing
article.
Though
the
right
of
first
publication,
like
other
rights
enumerated
in
106,
is
expressly
made
subject
to
the
fair
(iv)
As
to
the
effect
of
The
Nation's
article
on
use
provisions
of
107,
fair
use
analysis
must
always
be
the
market
for
the
copyrighted
work,
Time's
tailored
to
the
individual
case.
The
nature
of
the
interest
cancellation
of
its
projected
article
and
its
at
stake
is
highly
relevant
to
whether
a
given
use
is
fair.
refusal
to
pay
$12,500
were
the
direct
effect
of
The
unpublished
nature
of
a
work
is
a
key,
though
not
the
infringing
publication.
Once
a
copyright
necessarily
determinative,
factor
tending
to
negate
a
holder
establishes
a
causal
connection
defense
of
fair
use.
And
under
ordinary
circumstances,
between
the
infringement
and
loss
of
revenue,
the
author's
right
to
control
the
first
public
appearance
the
burden
shifts
to
the
infringer
to
show
that
of
his
undisseminated
expression
will
outweigh
a
claim
the
damage
would
have
occurred
had
there
of
fair
use.
been
no
taking
of
copyrighted
expression.
In
view
of
the
First
Amendment's
protections
embodied
Petitioners
established
a
prima
facie
case
of
actual
in
the
Act's
distinction
between
copyrightable
damage
that
respondents
failed
to
rebut.
More
expression
and
uncopyrightable
facts
and
ideas,
and
the
important,
to
negate
a
claim
of
fair
use
it
need
only
be
latitude
for
scholarship
and
comment
traditionally
shown
that
if
the
challenged
use
should
become
afforded
by
fair
use,
there
is
no
warrant
for
expanding,
widespread,
it
would
adversely
affect
the
potential
as
respondents
contend
should
be
done,
the
fair
use
market
for
the
copyrighted
work.
Here,
The
Nation's
doctrine
to
what
amounts
to
a
public
figure
exception
to
liberal
use
of
verbatim
excerpts
posed
substantial
copyright.
Whether
verbatim
copying
from
a
public
potential
for
damage
to
the
marketability
of
first
figure's
manuscript
in
a
given
case
is
or
is
not
fair
must
serialization
rights
in
the
copyrighted
work.
be
judged
according
to
the
traditional
equities
of
fair
use.
Remarks:
US
Case
Taking
into
account
the
FOUR
FACTORS
enumerated
in
107
as
especially
relevant
in
determining
fair
use,
leads
to
ANN
BARTOW,
EDUCATIONAL
FAIR
USE
IN
COPYRIGHT:
the
conclusion
that
the
use
in
question
here
was
not
fair.
RECLAIMING
THE
RIGHT
TO
PHOTOCOPY
FREELY
(1998)
(i)
The
fact
that
news
reporting
was
the
The
doctrine
of
fair
use
was
codified
in
§
107
of
the
general
purpose
of
The
Nation's
use
is
simply
Copyright
Act
of
1976,
which
states
in
pertinent
part:
one
factor.
While
The
Nation
had
every
right
to
be
the
first
to
publish
the
information,
it
went
The
fair
use
of
a
copyrighted
work,
including
such
use
by
beyond
simply
reporting
uncopyrightable
reproduction
in
copies
or
phonorecords
or
by
any
other
information
and
actively
sought
to
exploit
the
means
specified
[in
§§
106
and
106A],
for
purposes
such
headline
value
of
its
infringement,
making
a
as
criticism,
comment,
news
reporting,
teaching
"news
event"
out
of
its
unauthorized
first
(including
multiple
copies
for
classroom
use),
publication.
The
fact
that
the
publication
was
scholarship,
or
research,
is
not
an
infringement
of
commercial
as
opposed
to
nonprofit
is
a
copyright.
In
determining
whether
the
use
made
of
a
o 23
Katrina Michelle Mancao
work
in
any
particular
case
is
a
fair
use
the
factors
to
be
individual
copyright
owners.
Alternatively
expressed,
considered
shall
include-‐
"copyright
is
a
bargain
between
the
public
and
publishers,
in
which
the
public
consents
to
restrict
its
(1)
the
purpose
and
character
of
the
use,
rights
as
a
kind
of
bribe
to
publishers."
To
effectuate
including
whether
such
use
is
of
a
commercial
this
bargain,
copyrights
should
be
no
more
restrictive
nature
or
is
for
nonprofit
educational
purposes;
than
is
necessary
to
create
incentives
for
the
promotion
(2)
the
nature
of
the
copyrighted
work;
of
knowledge
and
learning.
Where
public
interests
(3)
the
amount
and
substantiality
of
the
conflict
with
those
of
copyright
owners,
the
public
portion
used
in
relation
to
the
copyrighted
interests
should
prevail.
work
as
a
whole;
and
(4)
the
effect
of
the
use
upon
the
potential
Fair
use
therefore
represents
an
amplitude
of
control
that
market
for
or
value
of
the
copyrighted
work.
is
withheld
from
a
copyright
owner
when
a
grant
of
copyright
is
made,
rather
than
a
right
or
privilege
The
omissions
from
§
107
are
immediately
apparent.
Fair
copyright
owners
earn
or
acquire
that
is
subsequently
use
is
not
defined,
and
no
guidance
is
offered
with
"taken."
Fair
use
is
the
"only
limitation
on
copyright
that
respect
to
an
ordering
of
priorities
in
the
application
of
applies
to
all
rights
of
the
copyright
owner
and
to
all
the
four
articulated
factors
to
be
considered.
copyrighted
works."
Fair
use
has
been
called
an
equitable
rule
of
reason
with
The
public's
statutorily
circumscribed
right
to
the
fair
use
no
real
definition.
Fair
use
is,
however,
widely
recognized
of
copyrighted
works
can
be
justified
in
several
ways.
as
a
doctrine
under
which
a
copyrighted
work
can
be
Fair
use
access
to
copyrighted
works
may
be
grounded
used
without
permission
from,
or
even
against
the
in
recognition
that
no
newly
created,
copyrighted
work
express
wishes
of
the
copyright
owner,
in
certain
can
be
truly
original.
All
authors
are
consciously
or
circumstances.
Fair
use
doctrine
embodies
a
policy
unconsciously,
directly
or
indirectly
exposed
to,
against
freighting
ideas
and
information
with
proprietary
informed
and
inspired
by
the
earlier
works
and
thoughts
rights.
Although
one
of
the
bedrock
principles
of
of
others,
and
are
therefore
obligated
to
contribute
copyright
law
is
that
only
the
expression
of
ideas
is
"free
samples"
from
their
own
works
to
the
marketplace
copyrightable,
and
not
the
ideas
that
are
expressed,
as
a
of
ideas.
In
this
construction,
fair
use
functions
almost
as
practical
matter
it
is
often
very
difficult
to
separate
the
a
tax
or
fee
that
is
levied
upon
individual
copyright
works
two.
If,
for
example,
a
unique
idea
is
expressed
in
a
for
the
common
welfare,
and
justified
by
the
copyright
highly
original,
copyrighted
book,
unless
one
is
prepared
owner's
consumption
of
common
or
public
knowledge.
to
"re-‐express"
the
idea,
thereby
rewriting
the
tome
in
one's
own
words
(and
preferably
in
a
manner
that
does
Fair
use
may
also
be
perceived
as
a
tax
perhaps
paid
as
not
induce
the
book's
author
to
sue
for
copyright
partial
reparation
for
the
costs
to
society
of
the
infringement,
while
still
retaining
the
"essence"
of
"copyright
infrastructure"
comprised
of
the
Copyright
whatever
makes
the
work
unique
and
valuable),
Office,
the
federal
court
system
(which
has
subject
monopolistic
control
over
the
idea
contained
in
the
work
matter
jurisdiction
over
copyrights),
law
enforcement
is
essentially
ceded
to
the
work's
copyright
owner.
agencies,
and
other
governmental
entities
dedicated
to
Though
ideas
are
part
of
the
public
domain,
one
requires
delineating,
allocating,
and
protecting
copyrights.
Fair
words
("expression")
to
convey
them.
When
an
idea
is
use
thus
functions
as
a
burden
on
intellectual
property
complex,
it
will
be
onerous,
if
not
impossible,
for
another
that
reciprocally
accompanies
the
benefits
provided
by
person
to
communicate
using
other
words
without
the
copyright
infrastructure.
slanting
or
shading
underlying
concepts.
Preservation
and
accurate
transmission
of
an
elaborate
original
idea
Fair
use
can
also
be
viewed
as
somewhat
similar
to
an
compel
use
of
intact,
original
expression.
easement.
The
recent
publisher-‐propelled
rush
to
expand
the
scope
of
copyright
protections
has
been
The
Copyright
Act
does
not
bestow
absolute
exclusive
aptly
analogized
to
"a
land
grab
the
likes
of
which
we
rights
upon
a
copyright
owner,
but
rather
confers
a
have
not
seen
since
the
Government
opened
up
the
limited
monopoly
with
respect
to
use
of
the
copyrighted
Northwest
Territory
for
settlement."
Fair
use
may
be
work.
A
copyright
is
intangible
(or
"intellectual")
seen
as
society's
easement
across
"servient"
creative
property
that
is
vested
with
a
public
interest,
intended
works.
Under
this
construction
authors
create
and
to
achieve
an
"important
public
purpose."
There
is
a
publish
new
works
subject
to
the
burden
of
fair
use,
and
societal
bargain
implicit
in
the
copyright
law.
Copyright
should
consider
the
possible
impact
of
the
doctrine
just
owners
are
given
tools
in
the
form
of
exclusive
rights
as
a
landowner
would
factor
in
the
ramifications
of
an
with
which
to
exploit
creative
endeavors
financially,
but
easement
when
deciding
whether
and
how
to
develop
this
gift
is
conditioned
upon
an
understanding
that
the
land.
Unlike
the
typical
effect
of
an
easement
on
land,
ultimate
goal
of
copyrights
is
to
maximize
the
number
of
however,
an
easement
doesn't
necessarily
burden
or
creative
works
available
to
the
public,
and
not
to
benefit
devalue
intellectual
property.
A
book
can
be
equally
24 z
Intellectual Property Law
valuable
to
each
in
a
series
of
new
readers
no
matter
doctrine
has
no
crisp
outlines,
no
precise
standards,
and
how
many
times
it
is
read,
with
no
diminution
in
the
no
obvious
center
or
core.
Its
flexibility
allows
judges
to
quality
of
the
work.
As
Thomas
Jefferson
stated:
"He
adjust
the
contours
of
copyright
protection
to
fit
who
receives
an
idea
from
me,
receives
instructions
individual
circumstances
as
they
arise,
in
the
true
himself
without
lessening
mine;
as
he
who
lights
his
common
law
tradition."
In
any
event,
though
§
107
has
taper
at
mine,
receives
light
without
darkening
me."
Fair
not
been
legislatively
altered
with
respect
to
the
fair
use
users
don't
erode
the
desirability
of
a
work,
and
may
of
published
works
since
it
went
into
effect
in
1978,
the
actually
augment
royalty
generating
demand
for
it
by
scope
of
fair
use
that
it
delineates
has
been
steadily
increasing
its
visibility
or
elevating
its
prominence.
shrinking.
Fair
use
has
also
been
justified
as
a
response
to
market
SECTION
107'S
FOUR-‐PART
TEST
failure,
based
on
the
premise
that
the
public
ought
to
have
free
access
to
information
and
ideas
manifested
in
Section
107
sets
out
a
non-‐exhaustive
list
of
factors
a
copyrighted
works
which
could
not
be
purchased
with
court
must
consider
when
deciding
whether
non-‐
reasonable
ease
or
efficiency.
Under
this
notion
of
fair
permissive
utilization
of
a
copy-‐righted
work
is
"fair
use."
use,
the
availability
of
a
work
or
portion
thereof
has
an
In
the
context
of
educational
photocopying,
§
107's
four-‐
inverse
relationship
with
the
prospective
scope
of
its
fair
part
test
was
intended
to
be
the
arbiter
of
fair
use
for
usability.
The
scope
of
fair
use
would
therefore
be
photocopying.
broader
with
respect
to
a
book
that
was
out
of
print,
and
narrower
for
a
book
that
was
inexpensive
and
widely
1.
"The
purpose
and
character
of
the
use
including
distributed.
Where
there
was
no
market
failure,
there
whether
such
use
is
of
a
commercial
nature
or
is
for
could
be
no
fair
use.
nonprofit
educational
purposes:"
If
the
reproduction
is
made
for
profit,
with
commercial
The
idea
that
there
was
a
fair
use
right
to
use
a
gain
as
its
primary
goal,
it
is
unlikely
to
fall
within
the
fair
copyrighted
work
without
the
copyright
owner's
use
doctrine.
The
phrase
"including
whether
such
use
is
permission
was
first
raised
in
1841
in
Folsom
v.
Marsh.
of
a
commercial
nature
or
is
for
nonprofit
educational
The
plaintiffs
in
this
case
owned
a
copyright
in
a
purposes"
was
added
to
this
first
prong
of
§
107's
four-‐
multivolume
autobiography
of
George
Washington,
part
fair
use
test
by
the
House
Judiciary
Committee
which
defendants
were
accused
of
infringing
when
they
shortly
before
passage
of
the
Copyright
Act
of
1976
"in
copied
353
pages
of
the
treatise.
Though
this
sounds
like
order
to
mollify
educators
who
had
lobbied
an
appallingly
extensive
appropriation,
it
actually
unsuccessfully
for
an
across-‐the-‐board
exemption
for
amounted
to
less
than
6%
of
the
original
lengthy
work.
nonprofit
educational
uses."
While
it
would
seem
Defendant's
fair
use
claim
failed
because
the
court
obvious
that
the
purpose
and
character
of
photocopying
concluded
that
the
most
important
parts
of
the
work
multiple
copies
for
classroom
use
is
educational
and
had
been
copied
in
an
attempt
to
supplant
uses
(and
nonprofit
in
nature,
courts
have
held
that
educational
presumably
purchases)
of
the
original
work.
In
Folsom,
copying
by
a
commercial
photocopy
business
was
a
Justice
Story
articulated
the
underpinnings
of
the
commercial
undertaking
because
the
actual
modern
test
of
fair
use,
subsequently
incorporated
into
§
photocopying
of
work
selected
by
educators
was
107
of
the
Copyright
Act,
which
comprised
a
review
of
performed
by
for-‐profit
vendors.
"the
nature
and
objects
of
the
selections
made,
the
quantity
and
value
of
the
materials
used,
and
the
degree
2.
"The
nature
of
the
copyrighted
work:"
in
which
the
use
may
prejudice
the
sale,
or
diminish
the
In
applying
this
prong
of
the
fair
use
test,
courts
have
profits,
or
supersede
the
objects,
of
the
original
work."
considered
the
originality,
informative
nature,
intended
Justice
Story
was
most
concerned
about
the
market
use,
and
availability
of
the
work.
In
an
educational
effect
of
the
accused
infringing
usage,
presaging
the
context,
courts
are
less
likely
to
find
fair
use
where
text
extensive
(though
misdirected)
focus
by
modern
courts
books
and
other
materials
prepared
for
educational
on
the
profitability
implications
of
nonpermissive
uses
markets
are
copied
than
when
works
created
for
general
asserted
to
be
fair.
public
distribution
are
reproduced
for
classroom
use.
It
has
been
argued
that
rather
than
being
"a
typical
Additionally,
in
part
because
facts
cannot
by
copyrighted,
statutory
provision
representing
Congress's
creation
of
use
of
informational
works
is
more
likely
to
be
new
law
and
establishment
of
rules
for
the
courts
to
considered
fair
than
use
of
creative
works.
Courts
apply
[§
107]
is
instead
a
direction
to
the
courts
to
sometimes
have
difficulty
classifying
a
copyrighted
work
continue
to
develop
the
common
law."
Under
this
view,
as
distinctly
informational
or
distinctly
creative.
For
§
107
is
not
a
codification
of
the
doctrine
of
fair
use,
but
example,
on
one
occasion
the
Ninth
Circuit
decided
that
rather
"statutory
recognition
of
a
judge-‐made
rule
of
it
could
not
categorize
a
cake
decorating
booklet
which
reason."
One
commentator
has
referred
to
fair
use
as
a
had
both
informational
and
creative
aspects.
As
one
"paradigmatic
"catch-‐all',"
and
asserted
that
"the
observer
uncharitably
put
it,
"If
cake
decorating
o 25
Katrina Michelle Mancao
booklets
can
stump
the
Ninth
Circuit,
then
the
ability
of
eventually
became
the
working
draft
of
the
decision.
courts
to
classify
more
complicated
materials
She
said
that,
for
most
parts,
she
did
her
research
photocopied
by
educators
and
scholars
at
universities
is
electronically.
For
international
materials,
she
sourced
doubtful."
these
mainly
from
Westlaw,
an
online
research
service
for
legal
and
law-‐related
materials
to
which
the
Court
3.
"The
amount
and
substantiality
of
the
portion
used
in
subscribes.
relation
to
the
copyrighted
work
as
a
whole:"
Photocopying
small
excerpts
of
a
copyrighted
work
for
In
the
old
days,
the
common
practice
was
that
after
a
educational
purposes
is
more
likely
to
appear
fair
than
Justice
would
have
assigned
a
case
for
study
and
report,
photocopying
large
portions
of
an
article
or
book.
Once
the
researcher
would
source
his
materials
mostly
from
the
quantities
set
out
in
the
Guidelines
are
exceeded,
available
law
books
and
published
articles
on
print.
there
is
no
bright
line
number
of
pages
or
percentage
of
When
he
found
a
relevant
item
in
a
book,
whether
for
a
work
one
can
confidently
assume
will
be
deemed
fair
one
side
of
the
issue
or
for
the
other,
he
would
place
a
or
unfair.
If
the
amount
of
copying
is
substantial
enough,
strip
of
paper
marker
on
the
appropriate
page,
pencil
some
courts
will
not
find
fair
use
regardless
of
the
mark
the
item,
and
place
the
book
on
his
desk
where
outcome
of
the
other
test
factors.
other
relevant
books
would
have
piled
up.
He
would
later
paraphrase
or
copy
the
marked
out
passages
from
In
addition
to
doing
a
quantitative
assessment,
courts
some
of
these
books
as
he
typed
his
manuscript
on
a
will
also
do
a
qualitative
assessment
of
the
portion
of
the
manual
typewriter.
This
occasion
would
give
him
a
clear
work
that
was
reproduced.
Photocopying
the
"heart"
or
opportunity
to
attribute
the
materials
used
to
their
critical
parts
of
a
work
may
be
deemed
unfair
even
if
the
authors
or
sources.
number
of
pages
or
actual
percentage
of
the
work
copied
is
insubstantial.
When
a
work
is
excerpted
for
With
the
advent
of
computers,
however,
as
Justice
Del
educational
usage,
the
very
fact
that
certain
portions
of
Castillo’s
researcher
also
explained,
most
legal
a
work
are
chosen
by
a
faculty
member
will
probably
be
references,
including
the
collection
of
decisions
of
the
sufficient
to
implicate
them
as
"critical
parts,"
which
will
Court,
are
found
in
electronic
diskettes
or
in
internet
weigh
against
a
finding
of
fair
use.
websites
that
offer
virtual
libraries
of
books
and
articles.
Here,
as
the
researcher
found
items
that
were
relevant
4.
"The
effect
of
the
use
upon
the
potential
market
for
or
to
her
assignment,
she
downloaded
or
copied
them
into
value
of
the
copyrighted
work:"
her
“main
manuscript,”
a
smorgasbord
plate
of
This
factor
echoes
aspects
of
the
second
and
third
materials
that
she
thought
she
might
need.
The
factors,
as
both
the
nature
of
the
work
and
the
amount
researcher’s
technique
in
this
case
is
not
too
far
different
and
substantiality
copied
will
be
partially
determinative
from
that
employed
by
a
carpenter.
The
carpenter
first
of
whether
a
copyright
owner
has
been
economically
gets
the
pieces
of
lumber
he
would
need,
choosing
the
injured.
Market
effect
has
been
called
"undoubtedly
the
kinds
and
sizes
suitable
to
the
object
he
has
in
mind,
say
single
most
important
element
of
fair
use"
by
the
a
table.
When
ready,
he
would
measure
out
the
portions
Supreme
Court
in
a
non-‐educational
context.
However,
he
needs,
cut
them
out
of
the
pieces
of
lumber
he
had
the
exact
extent
of
its
preeminence
among
§
107's
four
collected,
and
construct
his
table.
He
would
get
rid
of
factors
has
not
been
delineated.
the
scraps.
IN
THE
MATTER
OF
THE
CHARGES
OF
PLAGIARISM,
ETC.
Here,
Justice
Del
Castillo’s
researcher
did
just
that.
She
electronically
“cut”
relevant
materials
from
books
and
AGAINST
ASSOCIATE
JUSTICE
MARIANO
C.
DEL
CASTILLO
journals
in
the
Westlaw
website
and
“pasted”
these
to
a
(2010)
“main
manuscript”
in
her
computer
that
contained
the
Court
decision:
issues
for
discussion
in
her
proposed
report
to
the
Petitioners
point
out
that
the
Vinuya
decision
lifted
Justice.
She
used
the
Microsoft
Word
program.
Later,
passages
from
Tams’
book,
Enforcing
Erga
Omnes
after
she
decided
on
the
general
shape
that
her
report
Obligations
in
International
Law
(2006)
and
used
them
in
would
take,
she
began
pruning
from
that
manuscript
Footnote
69
with
what
the
author
thought
was
a
mere
those
materials
that
did
not
fit,
changing
the
positions
in
generic
reference.
But,
although
Tams
himself
may
have
the
general
scheme
of
those
that
remained,
and
adding
believed
that
the
footnoting
in
this
case
was
not
“an
and
deleting
paragraphs,
sentences,
and
words
as
her
appropriate
form
of
referencing,”
Unless
amply
continuing
discussions
with
Justice
Del
Castillo,
her
chief
explained,
the
above
lifting
from
the
works
of
Ellis
and
editor,
demanded.
Parenthetically,
this
is
the
standard
Criddle-‐Descent
could
be
construed
as
plagiarism.
But
scheme
that
computer-‐literate
court
researchers
use
one
of
Justice
Del
Castillo’s
researchers,
a
court-‐ everyday
in
their
work.
employed
attorney,
explained
how
she
accidentally
deleted
the
attributions,
originally
planted
in
the
Justice
Del
Castillo’s
researcher
showed
the
Committee
beginning
drafts
of
her
report
to
him,
which
report
the
early
drafts
of
her
report
in
the
Vinuya
case
and
26 z
Intellectual Property Law
these
included
the
passages
lifted
from
the
separate
standards
on
plagiarism
in
the
academe
should
apply
articles
of
Criddle-‐Descent
and
of
Ellis
with
proper
with
more
force
to
the
judiciary.
attributions
to
these
authors.
But,
as
it
happened,
in
the
course
of
editing
and
cleaning
up
her
draft,
the
But
petitioners’
theory
ignores
the
fact
that
plagiarism
is
researcher
accidentally
deleted
the
attributions.
She
and
essentially
a
form
of
fraud
where
intent
to
deceive
is
petitioners
cannot
deny
that
the
decision
did
attribute
inherent.
Their
theory
provides
no
room
for
errors
in
the
source
or
sources
of
such
passages.
Justice
Del
research,
an
unrealistic
position
considering
that
there
is
Castillo
did
not
pass
off
Tams’
work
as
his
own.
The
hardly
any
substantial
written
work
in
any
field
of
Justice
primarily
attributed
the
ideas
embodied
in
the
discipline
that
is
free
of
any
mistake.
The
theory
places
passages
to
Bruno
Simma,
whom
Tams
himself
credited
an
automatic
universal
curse
even
on
errors
that,
as
in
for
them.
Still,
Footnote
69
mentioned,
apart
from
this
case,
have
reasonable
and
logical
explanations.
Simma,
Tams’
article
as
another
source
of
those
ideas.
Indeed,
the
8th
edition
of
Black’s
Law
Dictionary
defines
The
Court
believes
that
whether
or
not
the
footnote
is
plagiarism
as
the
“deliberate
and
knowing
presentation
sufficiently
detailed,
so
as
to
satisfy
the
footnoting
of
another
person's
original
ideas
or
creative
expressions
standards
of
counsel
for
petitioners
is
not
an
ethical
as
one's
own.”
Thus,
plagiarism
presupposes
intent
and
matter
but
one
concerning
clarity
of
writing.
The
a
deliberate,
conscious
effort
to
steal
another’s
work
statement
“See
Tams,
Enforcing
Obligations
Erga
Omnes
and
pass
it
off
as
one’s
own.
in
International
Law
(2005)”
in
the
Vinuya
decision
is
an
attribution
no
matter
if
Tams
thought
that
it
gave
him
Besides,
the
Court
said
nothing
in
U.P.
Board
of
Regents
somewhat
less
credit
than
he
deserved.
Such
attribution
that
would
indicate
that
an
intent
to
pass
off
another’s
altogether
negates
the
idea
that
Justice
Del
Castillo
work
as
one’s
own
is
not
required
in
plagiarism.
The
passed
off
the
challenged
passages
as
his
own.
Court
merely
affirmed
the
academic
freedom
of
a
university
to
withdraw
a
master’s
degree
that
a
student
That
it
would
have
been
better
had
Justice
Del
Castillo
obtained
based
on
evidence
that
she
misappropriated
used
the
introductory
phrase
“cited
in”
rather
than
the
the
work
of
others,
passing
them
off
as
her
own.
This
is
phrase
“See”
would
make
a
case
of
mere
inadvertent
not
the
case
here
since,
as
already
stated,
Justice
Del
slip
in
attribution
rather
than
a
case
of
“manifest
Castillo
actually
imputed
the
borrowed
passages
to
intellectual
theft
and
outright
plagiarism.”
If
the
others.
Justice’s
citations
were
imprecise,
it
would
just
be
a
case
of
bad
footnoting
rather
than
one
of
theft
or
deceit.
If
it
IN
THE
MATTER
OF
THE
CHARGES
OF
PLAGIARISM,
ETC.
were
otherwise,
many
would
be
target
of
abuse
for
AGAINST
ASSOCIATE
JUSTICE
MARIANO
C.
DEL
CASTILLO
every
editorial
error,
for
every
mistake
in
citing
pagination,
and
for
every
technical
detail
of
form.
(2011)
Court
decision:
Notably,
neither
Justice
Del
Castillo
nor
his
researcher
Mainly,
petitioners
claim
that
the
Court
has
by
its
had
a
motive
or
reason
for
omitting
attribution
for
the
decision
legalized
or
approved
of
the
commission
of
lifted
passages
to
Criddle-‐Descent
or
to
Ellis.
The
latter
plagiarism
in
the
Philippines.
This
claim
is
absurd.
The
authors
are
highly
respected
professors
of
international
Court,
like
everyone
else,
condemns
plagiarism
as
the
law.
The
law
journals
that
published
their
works
have
world
in
general
understands
and
uses
the
term.
exceptional
reputations.
It
did
not
make
sense
to
intentionally
omit
attribution
to
these
authors
when
the
Plagiarism,
a
term
not
defined
by
statute,
has
a
popular
decision
cites
an
abundance
of
other
sources.
Citing
or
common
definition.
To
plagiarize,
says
Webster,
is
“to
these
authors
as
the
sources
of
the
lifted
passages
steal
and
pass
off
as
one’s
own”
the
ideas
or
words
of
would
enhance
rather
than
diminish
their
informative
another.
Stealing
implies
malicious
taking.
Black’s
Law
value.
Both
Justice
Del
Castillo
and
his
researcher
gain
Dictionary,
the
world’s
leading
English
law
dictionary
nothing
from
the
omission.
Thus,
the
failure
to
mention
quoted
by
the
Court
in
its
decision,
defines
plagiarism
as
the
works
of
Criddle-‐Decent
and
Ellis
was
the
“deliberate
and
knowing
presentation
of
another
unquestionably
due
to
inadvertence
or
pure
oversight.
person's
original
ideas
or
creative
expressions
as
one’s
own.”
The
presentation
of
another
person’s
ideas
as
Petitioners
of
course
insist
that
intent
is
not
material
in
one’s
own
must
be
deliberate
or
premeditated—a
taking
committing
plagiarism
since
all
that
a
writer
has
to
do,
to
with
ill
intent.
avoid
the
charge,
is
to
enclose
lifted
portions
with
quotation
marks
and
acknowledge
the
sources
from
There
is
no
commonly-‐used
dictionary
in
the
world
that
which
these
were
taken.
Petitioners
point
out
that
the
embraces
in
the
meaning
of
plagiarism
errors
in
Court
should
apply
to
this
case
the
ruling
in
University
of
attribution
by
mere
accident
or
in
good
faith.
the
Philippines
Board
of
Regents
v.
Court
of
Appeals
and
Arokiaswamy
William
Margaret
Celine.
They
argue
that
Certain
educational
institutions
of
course
assume
different
norms
in
its
application.
For
instance,
the
o 27
Katrina Michelle Mancao
Loyola
Schools
Code
of
Academic
Integrity
ordains
that
not
that
they
are
originally
crafted
but
that
they
are
fair
“plagiarism
is
identified
not
through
intent
but
through
and
correct
in
the
context
of
the
particular
disputes
the
act
itself.
The
objective
act
of
falsely
attributing
to
involved.
Justice,
not
originality,
form,
and
style,
is
the
one’s
self
what
is
not
one’s
work,
whether
intentional
or
object
of
every
decision
of
a
court
of
law.
out
of
neglect,
is
sufficient
to
conclude
that
plagiarism
has
occurred.
Students
who
plead
ignorance
or
appeal
There
is
a
basic
reason
for
individual
judges
of
whatever
to
lack
of
malice
are
not
excused.”
level
of
courts,
including
the
Supreme
Court,
not
to
use
original
or
unique
language
when
reinstating
the
laws
But
the
Court’s
decision
in
the
present
case
does
not
set
involved
in
the
cases
they
decide.
Their
duty
is
to
apply
aside
such
norm.
The
decision
makes
this
clear,
thus:
the
laws
as
these
are
written.
But
laws
include,
under
the
doctrine
of
stare
decisis,
judicial
interpretations
of
such
To
paraphrase
Bast
and
Samuels,
while
the
laws
as
are
applied
to
specific
situations.
Under
this
academic
publishing
model
is
based
on
the
doctrine,
Courts
are
“to
stand
by
precedent
and
not
to
originality
of
the
writer’s
thesis,
the
judicial
disturb
settled
point.”
Once
the
Court
has
“laid
down
a
system
is
based
on
the
doctrine
of
stare
decisis,
principle
of
law
as
applicable
to
a
certain
state
of
facts,
it
which
encourages
courts
to
cite
historical
legal
will
adhere
to
that
principle,
and
apply
it
to
all
future
data,
precedents,
and
related
studies
in
their
cases,
where
facts
are
substantially
the
same;
regardless
decisions.
The
judge
is
not
expected
to
of
whether
the
parties
or
property
are
the
same.”
produce
original
scholarship
in
every
respect.
The
strength
of
a
decision
lies
in
the
soundness
And
because
judicial
precedents
are
not
always
clearly
and
general
acceptance
of
the
precedents
and
delineated,
they
are
quite
often
entangled
in
apparent
long
held
legal
opinions
it
draws
from.
inconsistencies
or
even
in
contradictions,
prompting
experts
in
the
law
to
build
up
regarding
such
matters
a
Original
scholarship
is
highly
valued
in
the
academe
and
large
body
of
commentaries
or
annotations
that,
in
rightly
so.
A
college
thesis,
for
instance,
should
contain
themselves,
often
become
part
of
legal
writings
upon
dissertations
embodying
results
of
original
research,
which
lawyers
and
judges
draw
materials
for
their
substantiating
a
specific
view.
This
must
be
so
since
the
theories
or
solutions
in
particular
cases.
And,
because
of
writing
is
intended
to
earn
for
the
student
an
academic
the
need
to
be
precise
and
correct,
judges
and
degree,
honor,
or
distinction.
He
earns
no
credit
nor
practitioners
alike,
by
practice
and
tradition,
usually
lift
deserves
it
who
takes
the
research
of
others,
copies
passages
from
such
precedents
and
writings,
at
times
their
dissertations,
and
proclaims
these
as
his
own.
omitting,
without
malicious
intent,
attributions
to
the
There
should
be
no
question
that
a
cheat
deserves
originators.
neither
reward
nor
sympathy.
Is
this
dishonest?
No.
Duncan
Webb,
writing
for
the
But
the
policy
adopted
by
schools
of
disregarding
the
International
Bar
Association
puts
it
succinctly.
When
element
of
malicious
intent
found
in
dictionaries
is
practicing
lawyers
(which
include
judges)
write
about
the
evidently
more
in
the
nature
of
establishing
what
law,
they
effectively
place
their
ideas,
their
language,
and
evidence
is
sufficient
to
prove
the
commission
of
such
their
work
in
the
public
domain,
to
be
affirmed,
adopted,
dishonest
conduct
than
in
rewriting
the
meaning
of
criticized,
or
rejected.
Being
in
the
public
domain,
other
plagiarism.
Since
it
would
be
easy
enough
for
a
student
lawyers
can
thus
freely
use
these
without
fear
of
to
plead
ignorance
or
lack
of
malice
even
as
he
has
committing
some
wrong
or
incurring
some
liability.
Thus:
copied
the
work
of
others,
certain
schools
have
adopted
the
policy
of
treating
the
mere
presence
of
such
copied
The
tendency
to
copy
in
law
is
readily
work
in
his
paper
sufficient
objective
evidence
of
explicable.
In
law
accuracy
of
words
is
plagiarism.
Surely,
however,
if
on
its
face
the
student’s
everything.
Legal
disputes
often
centre
round
work
shows
as
a
whole
that
he
has
but
committed
an
the
way
in
which
obligations
have
been
obvious
mistake
or
a
clerical
error
in
one
of
hundreds
of
expressed
in
legal
documents
and
how
the
citations
in
his
thesis,
the
school
will
not
be
so
facts
of
the
real
world
fit
the
meaning
of
the
unreasonable
as
to
cancel
his
diploma.
words
in
which
the
obligation
is
contained.
This,
in
conjunction
with
the
risk-‐aversion
of
In
contrast,
decisions
of
courts
are
not
written
to
earn
lawyers
means
that
refuge
will
often
be
sought
merit,
accolade,
or
prize
as
an
original
piece
of
work
or
in
articulations
that
have
been
tried
and
tested.
art.
Deciding
disputes
is
a
service
rendered
by
the
In
a
sense
therefore
the
community
of
lawyers
government
for
the
public
good.
Judges
issue
decisions
have
together
contributed
to
this
body
of
to
resolve
everyday
conflicts
involving
people
of
flesh
knowledge,
language,
and
expression
which
is
and
blood
who
ache
for
speedy
justice
or
juridical
beings
common
property
and
may
be
utilized,
which
have
rights
and
obligations
in
law
that
need
to
be
developed
and
bettered
by
anyone.
protected.
The
interest
of
society
in
written
decisions
is
28 z
Intellectual Property Law
The
implicit
right
of
judges
to
use
legal
materials
cited
in
the
charges
against
him.
He
compared
the
regarded
as
belonging
to
the
public
domain
is
not
unique
divergent
views
these
present
as
they
developed
in
to
the
Philippines.
As
Joyce
C.
George,
whom
Justice
history.
He
then
explained
why
the
Court
must
reject
Maria
Lourdes
Sereno
cites
in
her
dissenting
opinion,
some
views
in
light
of
the
peculiar
facts
of
the
case
and
observed
in
her
Judicial
Opinion
Writing
Handbook:
applied
those
that
suit
such
facts.
Finally,
he
drew
from
his
discussions
of
the
facts
and
the
law
the
right
solution
A
judge
writing
to
resolve
a
dispute,
whether
to
the
dispute
in
the
case.
On
the
whole,
his
work
was
trial
or
appellate,
is
exempted
from
a
charge
of
original.
He
had
but
done
an
honest
work.
plagiarism
even
if
ideas,
words
or
phrases
from
a
law
review
article,
novel
thoughts
published
The
Court
will
not,
therefore,
consistent
with
established
in
a
legal
periodical
or
language
from
a
party’s
practice
in
the
Philippines
and
elsewhere,
dare
permit
brief
are
used
without
giving
attribution.
Thus
the
filing
of
actions
to
annul
the
decisions
promulgated
judges
are
free
to
use
whatever
sources
they
by
its
judges
or
expose
them
to
charges
of
plagiarism
for
deem
appropriate
to
resolve
the
matter
before
honest
work
done.
them,
without
fear
of
reprisal.
This
exemption
applies
to
judicial
writings
intended
to
decide
This
rule
should
apply
to
practicing
lawyers
as
well.
cases
for
two
reasons:
the
judge
is
not
writing
Counsels
for
the
petitioners,
like
all
lawyers
handling
a
literary
work
and,
more
importantly,
the
cases
before
courts
and
administrative
tribunals,
cannot
purpose
of
the
writing
is
to
resolve
a
dispute.
object
to
this.
Although
as
a
rule
they
receive
As
a
result,
judges
adjudicating
cases
are
not
compensation
for
every
pleading
or
paper
they
file
in
subject
to
a
claim
of
legal
plagiarism.
court
or
for
every
opinion
they
render
to
clients,
lawyers
also
need
to
strive
for
technical
accuracy
in
their
writings.
If
the
Court
were
to
inquire
into
the
issue
of
plagiarism
They
should
not
be
exposed
to
charges
of
plagiarism
in
respecting
its
past
decisions
from
the
time
of
Chief
what
they
write
so
long
as
they
do
not
depart,
as
officers
Justice
Cayetano
S.
Arellano
to
the
present,
it
is
likely
to
of
the
court,
from
the
objective
of
assisting
the
Court
in
discover
that
it
has
not
on
occasion
acknowledged
the
the
administration
of
justice.
originators
of
passages
and
views
found
in
its
decisions.
These
omissions
are
true
for
many
of
the
decisions
that
As
Duncan
Webb
said:
have
been
penned
and
are
being
penned
daily
by
magistrates
from
the
Court
of
Appeals,
the
In
presenting
legal
argument
most
lawyers
will
Sandiganbayan,
the
Court
of
Tax
Appeals,
the
Regional
have
recourse
to
either
previous
decisions
of
Trial
Courts
nationwide
and
with
them,
the
municipal
the
courts,
frequently
lifting
whole
sections
of
trial
courts
and
other
first
level
courts.
Never
in
the
a
judge’s
words
to
lend
weight
to
a
particular
judiciary’s
more
than
100
years
of
history
has
the
lack
of
point
either
with
or
without
attribution.
The
attribution
been
regarded
and
demeaned
as
plagiarism.
words
of
scholars
are
also
sometimes
given
weight,
depending
on
reputation.
Some
This
is
not
to
say
that
the
magistrates
of
our
courts
are
encyclopaedic
works
are
given
particular
mere
copycats.
They
are
not.
Their
decisions
analyze
authority.
In
England
this
place
is
given
to
the
often
conflicting
facts
of
each
case
and
sort
out
the
Halsbury’s
Laws
of
England
which
is
widely
relevant
from
the
irrelevant.
They
identify
and
formulate
considered
authoritative.
A
lawyer
can
do
little
the
issue
or
issues
that
need
to
be
resolved
and
evaluate
better
than
to
frame
an
argument
or
claim
to
each
of
the
laws,
rulings,
principles,
or
authorities
that
fit
with
the
articulation
of
the
law
in
Halsbury’s.
the
parties
to
the
case
invoke.
The
decisions
then
draw
While
in
many
cases
the
very
purpose
of
the
their
apt
conclusions
regarding
whether
or
not
such
laws,
citation
is
to
claim
the
authority
of
the
author,
rulings,
principles,
or
authorities
apply
to
the
particular
this
is
not
always
the
case.
Frequently
cases
before
the
Court.
These
efforts,
reduced
in
writing,
commentary
or
dicta
of
lesser
standing
will
be
are
the
product
of
the
judges’
creativity.
It
is
here— adopted
by
legal
authors,
largely
without
actually
the
substance
of
their
decisions—that
their
attribution.
genius,
originality,
and
honest
labor
can
be
found,
of
which
they
should
be
proud.
x
x
x
x
In
Vinuya,
Justice
Del
Castillo
examined
and
summarized
The
converse
point
is
that
originality
in
the
law
the
facts
as
seen
by
the
opposing
sides
in
a
way
that
no
is
viewed
with
skepticism.
It
is
only
the
one
has
ever
done.
He
identified
and
formulated
the
arrogant
fool
or
the
truly
gifted
who
will
depart
core
of
the
issues
that
the
parties
raised.
And
when
he
entirely
from
the
established
template
and
had
done
this,
he
discussed
the
state
of
the
law
relevant
reformulate
an
existing
idea
in
the
belief
that
in
to
their
resolution.
It
was
here
that
he
drew
materials
doing
so
they
will
improve
it.
While
over
time
from
various
sources,
including
the
three
foreign
authors
incremental
changes
occur,
the
wholesale
o 29
Katrina Michelle Mancao
abandonment
of
established
expression
is
8. Transfer
of
Copyright
generally
considered
foolhardy.
SECTION
180.
RIGHTS
OF
ASSIGNEE.
–
The
Court
probably
should
not
have
entertained
at
all
the
charges
of
plagiarism
against
Justice
Del
Castillo,
180.1.
The
copyright
may
be
assigned
in
whole
or
in
part.
coming
from
the
losing
party.
But
it
is
a
case
of
first
Within
the
scope
of
the
assignment,
the
assignee
is
impression
and
petitioners,
joined
by
some
faculty
entitled
to
all
the
rights
and
remedies
which
the
assignor
members
of
the
University
of
the
Philippines
school
of
had
with
respect
to
the
copyright.
law,
have
unfairly
maligned
him
with
the
charges
of
plagiarism,
twisting
of
cited
materials,
and
gross
neglect
180.2.
The
copyright
is
not
deemed
assigned
inter
vivos
for
failing
to
attribute
lifted
passages
from
three
foreign
in
whole
or
in
part
unless
there
is
a
written
indication
of
authors.
These
charges
as
already
stated
are
false,
such
intention.
applying
the
meaning
of
plagiarism
as
the
world
in
general
knows
it.
180.3.
The
submission
of
a
literary,
photographic
or
artistic
work
to
a
newspaper,
magazine
or
periodical
for
True,
Justice
Del
Castillo
failed
to
attribute
to
the
foreign
publication
shall
constitute
only
a
license
to
make
a
authors
materials
that
he
lifted
from
their
works
and
single
publication
unless
a
greater
right
is
expressly
used
in
writing
the
decision
for
the
Court
in
the
Vinuya
granted.
If
two
(2)
or
more
persons
jointly
own
a
case.
But,
as
the
Court
said,
the
evidence
as
found
by
its
copyright
or
any
part
thereof,
neither
of
the
owners
shall
Ethics
Committee
shows
that
the
attribution
to
these
be
entitled
to
grant
licenses
without
the
prior
written
authors
appeared
in
the
beginning
drafts
of
the
decision.
consent
of
the
other
owner
or
owners.
Unfortunately,
as
testified
to
by
a
highly
qualified
and
experienced
court-‐employed
researcher,
she
accidentally
SECTION
181.
COPYRIGHT
AND
MATERIAL
OBJECT.
–
deleted
the
same
at
the
time
she
was
cleaning
up
the
The
copyright
is
distinct
from
the
property
in
the
final
draft.
The
Court
believed
her
since,
among
other
material
object
subject
to
it.
Consequently,
the
transfer
reasons,
she
had
no
motive
for
omitting
the
attribution.
or
assignment
of
the
copyright
shall
not
itself
constitute
The
foreign
authors
concerned,
like
the
dozens
of
other
a
transfer
of
the
material
object.
Nor
shall
a
transfer
or
sources
she
cited
in
her
research,
had
high
reputations
in
assignment
of
the
sole
copy
or
of
one
or
several
copies
international
law.
of
the
work
imply
transfer
or
assignment
of
the
copyright.
Notably,
those
foreign
authors
expressly
attributed
the
controversial
passages
found
in
their
works
to
earlier
SECTION
182.
FILING
OF
ASSIGNMENT
OR
LICENSE.
–
writings
by
others.
The
authors
concerned
were
not
themselves
the
originators.
As
it
happened,
although
An
assignment
or
exclusive
license
may
be
filed
in
the
ponencia
of
Justice
Del
Castillo
accidentally
deleted
duplicate
with
the
National
Library
upon
payment
of
the
the
attribution
to
them,
there
remained
in
the
final
draft
prescribed
fee
for
registration
in
books
and
records
kept
of
the
decision
attributions
of
the
same
passages
to
the
for
the
purpose.
Upon
recording,
a
copy
of
the
earlier
writings
from
which
those
authors
borrowed
instrument
shall
be
returned
to
the
sender
with
a
their
ideas
in
the
first
place.
In
short,
with
the
remaining
notation
of
the
fact
of
record.
Notice
of
the
record
shall
attributions
after
the
erroneous
clean-‐up,
the
passages
be
published
in
the
IPO
Gazette.
as
it
finally
appeared
in
the
Vinuya
decision
still
showed
on
their
face
that
the
lifted
ideas
did
not
belong
to
SECTION
183.
DESIGNATION
OF
SOCIETY.
–
Justice
Del
Castillo
but
to
others.
He
did
not
pass
them
The
copyright
owners
or
their
heirs
may
designate
a
off
as
his
own.
society
of
artists,
writers
or
composers
to
enforce
their
economic
rights
and
moral
rights
on
their
behalf.
With
our
ruling,
the
Court
need
not
dwell
long
on
petitioners’
allegations
that
Justice
Del
Castillo
had
also
SECTION
4.2.
committed
plagiarism
in
writing
for
the
Court
his
The
term
"TECHNOLOGY
TRANSFER
ARRANGEMENTS"
refers
to
decision
in
another
case,
Ang
Ladlad
v.
Commission
on
contracts
or
agreements
involving
the
transfer
of
Elections.
Petitioners
are
nit-‐picking.
Upon
close
systematic
knowledge
for
the
manufacture
of
a
product,
examination
and
as
Justice
Del
Castillo
amply
the
application
of
a
process,
or
rendering
of
a
service
demonstrated
in
his
comment
to
the
motion
for
including
management
contracts;
and
the
transfer,
reconsideration,
he
in
fact
made
attributions
to
passages
assignment
or
licensing
of
all
forms
of
intellectual
in
such
decision
that
he
borrowed
from
his
sources
property
rights,
including
licensing
of
computer
although
they
at
times
suffered
in
formatting
lapses.
software
except
computer
software
developed
for
mass
market.
30 z
Intellectual Property Law
SECTION 87. PROHIBITED CLAUSES. – conditions or to initiate research and development
Except in cases under Section 91, the following programs in connection with new products, processes or
provisions shall be deemed prima facie to have an equipment;
adverse effect on competition and trade:
87.13. Those which prevent the licensee from
87.1. Those which impose upon the licensee the adapting the imported technology to local conditions, or
obligation to acquire from a specific source capital goods, introducing innovation to it, as long as it does not impair
intermediate products, raw materials, and other the quality standards prescribed by the licensor;
technologies, or of permanently employing personnel
indicated by the licensor; 87.14. Those which exempt the licensor for liability for
non-‐fulfilment of his responsibilities under the
87.2. Those pursuant to which the licensor reserves the technology transfer arrangement and/or liability arising
right to fix the sale or resale prices of the products from third party suits brought about by the use of the
manufactured on the basis of the license; licensed product or the licensed technology; and
87.3. Those that contain restrictions regarding the 87.15. Other clauses with equivalent effects.
volume and structure of production;
SECTION 88. MANDATORY PROVISIONS. –
87.4. Those that prohibit the use of competitive The following provisions shall be included in voluntary
technologies in a non-‐exclusive technology transfer license contracts:
agreement;
88.1. That the laws of the Philippines shall govern the
87.5. Those that establish a full or partial purchase interpretation of the same and in the event of litigation,
option in favor of the licensor; the venue shall be the proper court in the place where
the licensee has its principal office;
87.6. Those that obligate the licensee to transfer for free
to the licensor the inventions or improvements that may 88.2. Continued access to improvements in techniques
be obtained through the use of the licensed technology; and processes related to the technology shall be made
available during the period of the technology transfer
87.7. Those that require payment of royalties to the arrangement;
owners of patents for patents which are not used;
88.3. In the event the technology transfer arrangement
87.8. Those that prohibit the licensee to export the shall provide for arbitration, the Procedure of Arbitration
licensed product unless justified for the protection of the of the Arbitration Law of the Philippines or the
legitimate interest of the licensor such as exports to Arbitration Rules of the United Nations Commission on
countries where exclusive licenses to manufacture International Trade Law (UNCITRAL) or the Rules of
and/or distribute the licensed product(s) have already Conciliation and Arbitration of the International
been granted; Chamber of Commerce (ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral
87.9. Those which restrict the use of the technology country; and
supplied after the expiration of the technology transfer
88.4. The Philippine taxes on all payments relating to the
arrangement, except in cases of early termination of the
technology transfer arrangement due to reason(s) technology transfer arrangement shall be borne by the
attributable to the licensee; licensor.
87.10. Those which require payments for patents and SECTION 92. NON-‐REGISTRATION WITH THE
other industrial property rights after their expiration, DOCUMENTATION, INFORMATION AND TECHNOLOGY
termination arrangement; TRANSFER BUREAU . –
Technology transfer arrangements that conform with
87.11. Those which require that the technology the provisions of Sections 86 and 87 need not be
recipient shall not contest the validity of any of the registered with the Documentation, Information and
patents of the technology supplier; Technology Transfer Bureau. Non-‐conformance with any
of the provisions of Sections 87 and 88, however, shall
87.12. Those which restrict the research and automatically render the technology transfer
development activities of the licensee designed to arrangement unenforceable, unless said technology
absorb and adapt the transferred technology to local transfer arrangement is approved and registered with
o 31
Katrina Michelle Mancao
the
Documentation,
Information
and
Technology
SECTION
228.
PUBLIC
RECORDS.
–
Transfer
Bureau
under
the
provisions
of
Section
91
on
The
section
or
division
of
the
National
Library
and
the
exceptional
cases.
Supreme
Court
Library
charged
with
receiving
copies
and
instruments
deposited
and
with
keeping
records
SECTION
237.
NOTIFICATION
ON
BERNE
APPENDIX.
–
required
under
this
Act
and
everything
in
it
shall
be
The
Philippines
shall
by
proper
compliance
with
the
opened
to
public
inspection.
The
Director
of
the
National
requirements
set
forth
under
the
Appendix
of
the
Berne
Library
is
empowered
to
issue
such
safeguards
and
Convention
(Paris
Act,
1971)
avail
itself
of
the
special
regulations
as
may
be
necessary
to
implement
this
provisions
regarding
developing
countries,
including
Section
and
other
provisions
of
this
Act.
provisions
for
licenses
grantable
by
competent
authority
under
the
Appendix.
SECTION
229.
COPYRIGHT
DIVISION;
FEES.
–
The
Copyright
Section
of
the
National
Library
shall
be
9. Deposit
of
Copyrightable
classified
as
a
Division
upon
the
effectivity
of
this
Act.
Materials
The
National
Library
shall
have
the
power
to
collect,
for
the
discharge
of
its
services
under
this
Act,
such
fees
as
may
be
promulgated
by
it
from
time
to
time
subject
to
SECTION
191.
REGISTRATION
AND
DEPOSIT
WITH
NATIONAL
the
approval
of
the
Department
Head.
LIBRARY
AND
THE
SUPREME
COURT
LIBRARY.
–
After
the
first
public
dissemination
of
performance
by
RULE
5
-‐
REGISTRATION
AND
DEPOSIT
OF
WORK,
authority
of
the
copyright
owner
of
a
work
falling
under
COPYRIGHT
SAFEGUARDS
AND
REGULATIONS
Subsections
172.1,
172.2
and
172.3
of
this
Act,
there
shall,
for
the
purpose
of
completing
the
records
of
the
SECTION
1.
WHO
MAY
APPLY.
—
National
Library
and
the
Supreme
Court
Library,
within
The
owner
or
assignee
of
the
copyright
or
his
duly
three
(3)
weeks,
be
registered
and
deposited
with
it,
by
authorized
agent
or
representative,
may
apply
for
a
personal
delivery
or
by
registered
mail
two
(2)
complete
certificate
of
registration
and
deposit
of
the
work:
copies
or
reproductions
of
the
work
in
such
form
as
the
Provided,
That
if
an
author
could
not
claim
the
benefit
of
directors
of
said
libraries
may
prescribe.
A
certificate
of
copyright
protection,
his
assignee
or
agent
cannot
claim
deposit
shall
be
issued
for
which
the
prescribed
fee
shall
it.
If
the
applicant
is
not
the
owner
or
author
or
assignee
be
collected
and
the
copyright
owner
shall
be
exempt
of
the
work,
he
shall
be
required
to
submit
his
authority
from
making
additional
deposit
of
the
works
with
the
to
apply.
National
Library
and
the
Supreme
Court
Library
under
other
laws.
If,
within
three
(3)
weeks
after
receipt
by
the
An
assignee
is
a
person
to
whom
an
author
may
assign
copyright
owner
of
a
written
demand
from
the
directors
copyright
in
whole
or
in
part.
The
assignee
is
entitled
to
for
such
deposit,
the
required
copies
or
reproductions
all
the
rights
and
remedies
which
the
assignor
has
with
are
not
delivered
and
the
fee
is
not
paid,
the
copyright
respect
to
the
copyright.
owner
shall
be
liable
to
pay
a
fine
equivalent
to
the
required
fee
per
month
of
delay
and
to
pay
to
the
Although
no
copyright
should
subsist
in
any
work
of
the
National
Library
and
the
Supreme
Court
Library
the
government,
any
employee
may
claim
it
by
submitting
amount
of
the
retail
price
of
the
best
edition
of
the
work.
for
registration
any
work
that
has
been
created
during
Only
the
above
mentioned
classes
of
work
shall
be
the
time
of
his
regularly
prescribed
official
duties.
accepted
for
deposit
by
the
National
Library
and
the
Supreme
Court
Library.
SECTION
2.
IDENTIFICATION
OF
AUTHOR
OR
AUTHORS.
—
An
application
for
copyright
certificate
shall
identify
the
SECTION
192.
NOTICE
OF
COPYRIGHT.
–
author
or
authors,
as
far
as
practicable,
without
Each
copy
of
a
work
published
or
offered
for
sale
may
prejudice
to
the
provisions
of
Sections
171.2
and
179
of
contain
a
notice
bearing
the
name
of
the
copyright
the
IPC.
owner,
and
the
year
of
its
first
publication,
and,
in
copies
produced
after
the
creator's
death,
the
year
of
such
SECTION
3.
NON-‐RESIDENT
APPLICANT.
—
death.
A
non-‐resident
applicant
shall
appoint
a
resident
agent,
by
special
power
of
attorney
(SPA),
who
shall
be
SECTION
227.
OWNERSHIP
OF
DEPOSIT
AND
INSTRUMENTS.
authorized
to
pursue
the
copyright
application
for
his/her/its
behalf
with
TNL
and/or
the
SCL
and
to
receive
–
service
of
notice
or
other
legal
process
relating
to
the
All
copies
deposited
and
instruments
in
writing
filed
with
application
and
the
copyright.
In
the
event
of
death,
the
National
Library
and
the
Supreme
Court
Library
in
absence
or
incapacity
of
the
resident
agent,
the
accordance
with
the
provisions
of
this
Act
shall
become
applicant
shall
appoint
a
new
resident
agent,
by
SPA
the
property
of
the
Government.
32 z
Intellectual Property Law
with
revocation
of
the
prior
SPA,
and
file
notice
and
a
SECTION
7.
When
to
Register
and
Deposit.
—
copy
thereof
with
TNL
and/or
the
SCL.
The
registration
and
deposit
of
copies
or
reproductions
of
the
work
or
works,
using
the
prescribed
form,
shall
be
SECTION
4.
WORKS
THAT
SHALL
BE
REGISTERED
AND
DEPOSITED.
made
personally
or
by
registered
mail
within
three
(3)
—
weeks
after
the
first
public
dissemination
or
publication
Two
(2)
copies
or
reproductions
of
the
following
classes
as
authorized
by
the
author.
of
works,
and
transfers
and
assignments
related
thereto,
shall
be
registered
and
deposited
with
TNL
Copyright
08
and
15
December
2011
Division
and
another
two
(2)
copies
with
the
SCL:
COPYRIGHT
What
is
copyright?
• Books,
pamphlets,
articles
and
other
writings;
-‐ It
is
a
bundle
of
rights
enumerated
in
Section
• Periodicals
and
newspapers;
177.
• Lectures,
sermons,
addresses,
dissertations
prepared
for
oral
delivery
whether
or
not
Why
is
copyright
called
an
“economic
right”?
reduced
in
writing
or
other
material
form;
-‐ Because
the
purpose
of
the
establishment
of
• Letters;
the
right
is
to
allow
the
author
or
originator
of
• Musical
compositions
with
or
without
words.
the
work
to
maximize
the
value
that
can
be
derived
from
the
work.
SECTION
5.
REPLICAS
AND
PICTURES.
—
-‐ How
does
it
allow
the
copyright
owner
to
maximize
the
value
of
the
work?
For
practical
purposes,
only
replicas
and
pictures
of
the
o By
allowing
him
to
assign
his
rights,
following
classes
of
works,
shall
be
registered
and
grant
licenses
for
the
use
of
the
work,
deposited
with
TNL
Copyright
Division:
etc.,
thus
allowing
him
to
get
royalties
from
the
work.
• Works
of
drawing,
painting,
architecture,
sculpture,
engraving,
lithography
or
other
Beauty
of
copyright:
Duration.
It
protects
the
owner
works
of
art,
models
or
designs
for
works
of
during
his
lifetime
+
50
years
after
death.
art;
• Original
ornamental
designs
or
models
for
Standard
of
copyright
protection:
Originality.
articles
of
manufacture,
whether
or
not
-‐ “Original”
means
it
is
the
product
of
one’s
skill,
registerable
as
an
industrial
design,
and
other
labor/employment
works
of
applied
art;
-‐ Work
does
not
need
to
be
groundbreaking
or
• Illustrations,
maps,
plans,
sketches,
charts
and
revolutionary.
three-‐dimensional
works
relative
to
geography,
-‐ What
it
merely
requires
is
that
the
work
is
your
topography,
architecture
or
science;
own.
This
is
an
incredibly
low
standard!
• Drawings
or
plastic
works
of
a
scientific
or
technical
character.
Why
is
the
standard
so
low?
-‐ To
remain
very
objective.
Having
subjective
SECTION
6.
WORKS
THAT
MAY
BE
REGISTERED
AND
DEPOSITED.
standards
will
erode
the
IP
system
=
if
every
—
new
work
that
challenges
the
status
quo
will
The
following
works
may
be
registered
and
deposited:
not
be
protected,
no
one
might
challenge
the
• Dramatic
or
dramatic-‐musical
compositions,
status
quo.
choreographic
works
or
entertainment
in
-‐ Thus,
IP
should
not
look
into
the
substance
of
shows;
the
work.
(See
Section
172.2)
• Photographic
works
including
works
produced
-‐ Consequence
of
the
low
standard:
It
is
hard
to
by
a
process
analogous
to
photography,
prove
infringement.
To
prove
infringement,
lantern
slides;
you
have
to
prove
ACCESS
and
COPYING.
• Audiovisual
works
and
cinematographic
works
and
works
produced
by
a
process
analogous
to
3
things
covered
by
IP:
cinematography
or
any
process
for
making
1. Traditional
works
–
literary
and
artistic
works
audio-‐visual
recordings;
2. Derivative
works
–
translation
• Pictorial
illustrations
and
advertisements;
3. Published
works
• Computer
programs;
• Other
literary,
scholarly,
scientific
and
artistic
Issue:
Can
a
work
that
was
transformed
without
the
works;
consent
of
the
original
creator
be
considered
as
original
• Sound
recordings;
and
be
protected?
• Broadcast
recordings.
-‐ It
can
be
understood
that
the
derivative
work
should
be
AUTHORIZED.
(See
173.2)
o 33
Katrina Michelle Mancao
-‐ BUT:
Ideas
are
too
important
to
be
kept
in
the
-‐If
not
registered,
buy
only
private
domain.
If
done,
you
are
increasing
the
the
thing.
cost
for
the
creation
of
the
work.
Thus,
the
la
b. Post-‐PD49
à
Were
all
the
rights
protects
NOT
the
underlying
idea
by
the
assigned
to
one
person?
EXPRESSION
of
the
idea.
Ideas
are
basic
building
blocks.
If
you
allow
the
monopoly
of
Ownership
of
copyright
by
the
government:
idea
through
copyright,
you
would
increase
the
-‐ GR:
Government
cannot
acquire
copyright.
cost
for
further
work
and
this
may
lead
to
-‐ However,
if
somebody
would
exploit
the
work
stagnation.
Remember,
the
primary
purpose
of
for
profit,
there
must
be
prior
approval
from
IP
is
really
the
advancement
of
art
and
the
government
agency
or
office
where
the
literature,
and
this
won’t
be
achieved
if
you
work
is
created.
monopolized
the
fundamental
building
blocks
-‐ Exception
to
the
prior
approval
requirement
of
these,
i.e.
the
ideas.
exception:
176.3
o Reconcile
this
with
Section
173.1(b)
à
data
is
NOT
protected,
but
the
Ma’am
is
a
government
employee.
Are
her
oral
lectures
COMPILATIONS
of
data
are
protected
by
copyright?
protected?
-‐ Yes.
Copyright
protects
the
work
regardless
of
o Note
that
in
Feist
(which
is
a
US
case,
its
form.
thus
merely
persuasive),
the
standard
-‐ What
right
does
she
have?
of
protection
for
compilation
à
o 176.2.
She
has
the
exclusive
right
to
modicum
of
creativity.
It
required
the
reproduces,
etc.
compilation
to
be
original
by
reason
of
their
selection
or
arrangement.
Ownership
of
copyright:
There
must
be
something
unusual
or
-‐ GR:
Author
of
the
work
exceptional
with
the
collection
of
-‐ If
more
than
1
author:
data.
o Apply
their
contract
if
there
is
any.
o If
no
contract:
apply
the
rules
on
co-‐
When
does
copyright
vests?
ownership
-‐ Under
the
IP
Code:
from
the
moment
of
creation
(we
follow
the
principle
of
automatic
If
the
work
is
made
by
an
employee:
protection
under
the
Berne
Convention)
-‐ Test:
Whether
the
work
is
part
of
the
-‐ The
principle
of
automatic
protection
was
employee’s
regularly-‐assigned
duties:
followed
since
1972
under
PD49.
o If
Yes:
the
work
is
owned
by
the
o Under
PD
49,
the
copyright
owner
employer.
can
still
sue
the
infringer
even
if
the
o If
No:
the
work
is
owned
by
the
former
failed
to
deposit
the
material.
employee.
The
only
effect
of
failure
to
register
is
-‐ Note:
See
178.3
that
the
copyright
owner
won’t
be
o 178.3(b)
expressly
allows
the
allowed
to
obtain
damages
from
the
employer
and
the
employee
to
have
defendant.
an
agreement
to
the
contrary
-‐ Prior
to
that:
Under
Act
3134,
registration
and
o 178.3(a)
does
not
have
a
similar
deposit
were
needed
to
vest
copyright.
proviso
o Reglamentary
period
for
registration:
o the
difference
in
treatment
implies
30
days
from
creation.
that
an
agreement
to
make
the
o Effect
of
failure
to
register
within
that
employer
own
the
work
in
instances
period:
it
may
be
the
basis
for
where
the
employee
created
questioning
the
copyright
something
and
such
is
not
a
part
of
o Santos
v.
McCullough
Printing:
failure
his
regularly
assigned
duties
is
to
deposit
the
copyrighted
material
PROHIBITED.
made
the
material
part
of
the
public
§ But
Ma’am
also
said
that
domain.
you
can
still
argue
the
other
-‐ PD
49
was
actually
a
revolutionary
piece
of
way.
legislation!
If
the
work
is
created
by
commission:
So,
for
due
diligence
investigation:
-‐ Work:
owned
by
the
person
who
1. Ask
when
the
work
was
created.
commissioned
it
2. If:
-‐ Copyright:
owned
by
the
creator
a. Pre-‐PD49
à
Was
it
registered
or
not?
o UNLESS
there
is
a
contract
to
the
34 z
Intellectual Property Law
contrary 184.1(i) v. 184.1(a)
184.1(i) 184.1(a)
If the work is a letter: “The public performance “The recitation or
-‐ Letter: owned by the recipient or the communication to performance of a work,
-‐ Copyright: owned by the writer the public of a work, in a once it has been lawfully
place where no made accessible to the
Duration of copyright: lifetime + 50 years after death admission fee is charged public, if done privately
-‐ Copyright is best for works with long shelf life. in respect of such public and free of charge or if
-‐ Note calculation for the period after death: performance or made strictly for a
begins on January 1 of the year following the communication, by a club charitable or religious
death or institution for institution or society”
o Why? For easier computation charitable or educational
-‐ After the expiration of the period, the work purpose only, whose aim
becomes part of the public domain à why is not profit making,
classic works are significantly cheaper! subject to such other
limitations as may be
05 January 2012 provided in the
Limitations on copyright (exception to the exclusive Regulations”
right given to holder): BOTH must be present: Only EITHER of the 2 is
1. Section 184 (limitations of copyright), 176 1. Educational/ required:
(works of the government) charitable purpose 1. Religious/ charitable
2. Exceptions for certain works: library 2. Free of charge institution
3. Fair use 2. Free of charge and
private
Q: Showing of Harry Potter, done by the Religious
Society of Mary, for P50. Is the Religious Society of Mary Filipino Society of Composers v. Tan: Standard used by
liable? the court to determine whether the performance was
-‐ No! 184.1(a) embodies 2 exceptions: done free or charge or not à whether or not it is
1. Privately and free of charge; OR designed to induce more business. Plus costs already
2. Charitable or religious included in other costs.
institution/society
-‐ BUT the showing must be done AFTER the first Philippine Educ. Co. v. Sotto: Erroneous case! There was
publication of the work. no copyright on the material but with an “all rights
-‐ Follow-‐up question: What if they show the reserved” clause.
movie all over the Philippines, are they now -‐ Ma’am: If no copyright, what rights were
liable? reserved? “All rights reserved” applicable only
o Yes! See 184.2. The act must not for copyrighted works.
unreasonably prejudice the right
holder’s legitimate interests. Del Castillo cases:
o ALWAYS READ 184.1 IN -‐ 1st Court: No intent on the part of Del Castillo to
CONJUNCTION WITH 184.2 plagiarize.
o Ma’am: Intent shouldn't be required
184.1 (b) – drawing from work of others in special laws! (malum prohibitum)
-‐ Conditions: -‐ 2nd Court: Court made a distinction between
o Work has been published the standards of an academic institution and
o Compatible with fair use the standards for members of the bar.
o Only to the extent justified for the o Acad: Higher standards
purpose o Bar: Lower standards – stare decisis
o Attribution! o Ma’am: 184.1(k) was extended! They
rewrote the IP Coe! Court, in effect,
184.1(c) – exception for mass media said lawyers and justices were
-‐ Conditions: exempted from the application of the
o Delivered in public IP Code. They did not even bother
o For information purposes with 184.2!
o No “all rights reserved” in the article
o Attribution Other exceptions:
1. Work of architecture
2. Reproduction of published work
o 35
Katrina Michelle Mancao
o Old
law
(PD49)
=
complete
exception
rights
are
assigned.
granted
to
natural
person
o Now
=
subject
to
certain
conditions.
12
January
2012
o IP
Code
abolished
PD
285
3. For
libraries
Deposit
4. Importation
-‐ Not
a
requirement
for
the
vesting
of
copyright.
-‐ No
express
prohibition
of
parallel
-‐ Where
made:
TNL
and
SCL
importation
o Note
that
the
IPO
and
the
SCL
now
has
a
Memorandum
of
Agreement.
FAIR
USE:
-‐ Office
is
exercising
a
purely
ministerial
-‐ Drawn
from
US
jurisprudence
function.
-‐ Harper
&
Row
case:
-‐ Certificate
of
deposit
o Factors
of
fair
use:
o Legally
does
not
mean
anything.
§ Purpose
of
use
–
for
o It
is
merely
a
proof
of
the
fact
of
commercial
purpose
à
deposit
presumption
that
use
is
not
o Can
establish
that
as
of
the
date
of
fair
deposit,
work
was
already
created.
§ Nature
of
work
–
Thus,
may
help
establish
that
the
unpublished
à
unfair
use
depositor
is
not
an
appropriator
but
§ Amount
and
substantiality
–
the
creator
of
the
work.
measured
by
quality,
not
o With
respect
to
third
person
who
may
quantity
(heart
of
work)
want
to
deal
with
the
depositor:
may
§ Effect
on
the
market
–
impress
upon
the
third
person
that
MOST
IMPORTANT
factor
the
depositor
is
the
right
person
to
-‐ Q:
Did
we
completely
adopt
the
US
concept
of
deal
with.
fair
use?
§ Philippines
is
a
formalistic
o Not
really.
society.
§ 185.2
–
fact
that
work
is
§ This
may
reduce
transaction
unpublished…
costs.
§ 185.1
–
did
not
establish
a
§ Removes
lingering
doubt
hierarchy
among
the
4
about
copyright.
factors
-‐ Fine
for
failure
to
deposit
–
kicks
in
only
AFTER
§ commercial…
a
demand
-‐ Sony
Corp.
v.
Universal
Studios:
very
important
-‐ Why
require
a
deposit?
case
o Public
interest
=
promote
availability
o The
ruling
in
this
case
is
still
standard.
of
information
to
the
§ Standard:
capable
of
single,
public
by
making
it
non-‐infringing
use
=
no
available
in
the
National
infringement.
Library
(so
that
there
is
a
§ In
this
case,
time
shifting
is
a
public
repository
of
these
substantial,
non-‐infringing
works
of
art)
use.
o No
contributory
infringement.
10. Infringement
Transfer
of
copyright:
a. Definition
-‐ Must
be
written.
Oral
assignment
is
invalid.
-‐ Purpose
of
the
requirement
=
protect
rights
of
the
creator.
To
ensure
that
the
copyright
Ballantine’s
Law
Dictionary:
It
is
a
violation
of
a
right;
an
owner
knows
exactly
what
he/she
is
giving
encroachment.
away.
b. Remedies
Assignment
v.
License
Assignment
License
SECTION
221.
POINTS
OF
ATTACHMENT
FOR
WORKS
UNDER
Transfer
of
ownership
of
Limited.
Only
permission
SECTIONS
172
AND
173.
–
right
=
ceding
right
to
use.
Right
remains
221.1.
The
protection
afforded
by
this
Act
to
with
the
copyright
owner
who
may
declare
copyrightable
works
under
Sections
172
and
173
shall
conditions
with
which
apply
to:
36 z
Intellectual Property Law
223.2. Sound recordings that were first
(a) Works of authors who are nationals of, or published in the Philippines.
have their habitual residence in, the
Philippines; SECTION 224. POINTS OF ATTACHMENT FOR BROADCASTS.
(b) Audio-‐visual works the producer of which
–
has his headquarters or habitual residence in 224.1. The provisions of this Act on the protection of
the Philippines; broadcasts shall apply to:
(c) Works of architecture erected in the
Philippines or other artistic works incorporated (a) Broadcasts of broadcasting organizations
in a building or other structure located in the the headquarters of which are situated in the
Philippines; Philippines; and
(d) Works first published in the Philippines; and (b) Broadcasts transmitted from transmitters
situated in the Philippines.
(e) Works first published in another country
but also published in the Philippines within 224.2. The provisions of this Act shall also apply to
thirty days, irrespective of the nationality or performers who, and to producers of sound recordings
residence of the authors. and broadcasting organizations which, are to be
protected by virtue of and in accordance with any
221.2. The provisions of this Act shall also apply to works international convention or other international
that are to be protected by virtue of and in accordance agreement to which the Philippines is a party.
with any international convention or other international
agreement to which the Philippines is a party. SECTION 3. INTERNATIONAL CONVENTIONS AND
RECIPROCITY. –
SECTION 222. POINTS OF ATTACHMENT FOR PERFORMERS. Any person who is a national or who is domiciled or has a
– real and effective industrial establishment in a country
The provisions of this Act on the protection of which is a party to any convention, treaty or agreement
performers shall apply to: relating to intellectual property rights or the repression
of unfair competition, to which the Philippines is also a
222.1. Performers who are nationals of the party, or extends reciprocal rights to nationals of the
Philippines; Philippines by law, shall be entitled to benefits to the
extent necessary to give effect to any provision of such
222.2. Performers who are not nationals of the convention, treaty or reciprocal law, in addition to the
rights to which any owner of an intellectual property
Philippines but whose performances:
right is otherwise entitled by this Act.
(a) Take place in the Philippines; or
SECTION 10.2.
(b) Are incorporated in sound (a) Exercise original jurisdiction in administrative
recordings that are protected under complaints for violations of laws involving intellectual
this Act; or property rights: Provided, That its jurisdiction is limited
to complaints where the total damages claimed are not
(c) Which has not been fixed in sound less than Two hundred thousand pesos (P200,000):
recording but are carried by Provided further, That availment of the provisional
broadcast qualifying for protection remedies may be granted in accordance with the Rules
under this Act. of Court. The Director of Legal Affairs shall have the
power to hold and punish for contempt all those who
SECTION 223. POINTS OF ATTACHMENT FOR SOUND disregard orders or writs issued in the course of the
proceedings.
RECORDINGS. –
The provisions of this Act on the protection of sound (b) After formal investigation, the Director for Legal
recordings shall apply to: Affairs may impose one (1) or more of the following
administrative penalties:
223.1. Sound recordings the producers of which
are nationals of the Philippines; and (i) The issuance of a cease and desist order
which shall specify the acts that the
respondent shall cease and desist from and
shall require him to submit a compliance report
o 37
Katrina Michelle Mancao
within
a
reasonable
time
which
shall
be
fixed
in
(vi)
The
cancellation
of
any
permit,
license,
the
order;
authority,
or
registration
which
may
have
been
granted
by
the
Office,
or
the
suspension
of
the
(ii)
The
acceptance
of
a
voluntary
assurance
of
validity
thereof
for
such
period
of
time
as
the
compliance
or
discontinuance
as
may
be
Director
of
Legal
Affairs
may
deem
reasonable
imposed.
Such
voluntary
assurance
may
which
shall
not
exceed
one
(1)
year;
include
one
or
more
of
the
following:
(vii)
The
withholding
of
any
permit,
license,
(1)
An
assurance
to
comply
with
the
authority,
or
registration
which
is
being
provisions
of
the
intellectual
property
secured
by
the
respondent
from
the
Office;
law
violated;
(viii)
The
assessment
of
damages;
(2)
An
assurance
to
refrain
from
engaging
in
unlawful
and
unfair
acts
(ix)
Censure;
and
and
practices
subject
of
the
formal
investigation;
(x)
Other
analogous
penalties
or
sanctions.
(3)
An
assurance
to
recall,
replace,
SECTION
216.
REMEDIES
FOR
INFRINGEMENT.
–
repair,
or
refund
the
money
value
of
216.1.
Any
person
infringing
a
right
protected
under
this
defective
goods
distributed
in
law
shall
be
liable:
commerce;
and
(a)
To
an
injunction
restraining
such
(4)
An
assurance
to
reimburse
the
infringement.
The
court
may
also
order
the
complainant
the
expenses
and
costs
defendant
to
desist
from
an
infringement,
incurred
in
prosecuting
the
case
in
among
others,
to
prevent
the
entry
into
the
the
Bureau
of
Legal
Affairs.
channels
of
commerce
of
imported
goods
that
involve
an
infringement,
immediately
after
The
Director
of
Legal
Affairs
may
also
customs
clearance
of
such
goods.
require
the
respondent
to
submit
periodic
compliance
reports
and
file
a
(b)
Pay
to
the
copyright
proprietor
or
his
bond
to
guarantee
compliance
of
his
assigns
or
heirs
such
actual
damages,
including
undertaking;
legal
costs
and
other
expenses,
as
he
may
have
incurred
due
to
the
infringement
as
well
as
the
(iii)
The
condemnation
or
seizure
of
products
profits
the
infringer
may
have
made
due
to
which
are
subject
of
the
offense.
The
goods
such
infringement,
and
in
proving
profits
the
seized
hereunder
shall
be
disposed
of
in
such
plaintiff
shall
be
required
to
prove
sales
only
manner
as
may
be
deemed
appropriate
by
the
and
the
defendant
shall
be
required
to
prove
Director
of
Legal
Affairs,
such
as
by
sale,
every
element
of
cost
which
he
claims,
or,
in
donation
to
distressed
local
governments
or
to
lieu
of
actual
damages
and
profits,
such
charitable
or
relief
institutions,
exportation,
damages
which
to
the
court
shall
appear
to
be
recycling
into
other
goods,
or
any
combination
just
and
shall
not
be
regarded
as
penalty.
thereof,
under
such
guidelines
as
he
may
provide;
(c)
Deliver
under
oath,
for
impounding
during
the
pendency
of
the
action,
upon
such
terms
(iv)
The
forfeiture
of
paraphernalia
and
all
real
and
conditions
as
the
court
may
prescribe,
and
personal
properties
which
have
been
used
sales
invoices
and
other
documents
evidencing
in
the
commission
of
the
offense;
sales,
all
articles
and
their
packaging
alleged
to
infringe
a
copyright
and
implements
for
making
(v)
The
imposition
of
administrative
fines
in
them.
such
amount
as
deemed
reasonable
by
the
Director
of
Legal
Affairs,
which
shall
in
no
case
(d)
Deliver
under
oath
for
destruction
without
be
less
than
Five
thousand
pesos
(P5,000)
nor
any
compensation
all
infringing
copies
or
more
than
One
hundred
fifty
thousand
pesos
devices,
as
well
as
all
plates,
molds,
or
other
(P150,000).
In
addition,
an
additional
fine
of
means
for
making
such
infringing
copies
as
the
not
more
than
One
thousand
pesos
(P1,000)
court
may
order.
shall
be
imposed
for
each
day
of
continuing
violation;
(e)
Such
other
terms
and
conditions,
including
the
payment
of
moral
and
exemplary
damages,
38 z
Intellectual Property Law
which
the
court
may
deem
proper,
wise
and
(c)
Trade
exhibit
of
the
article
in
public,
shall
be
equitable
and
the
destruction
of
infringing
guilty
of
an
offense
and
shall
be
liable
on
copies
of
the
work
even
in
the
event
of
conviction
to
imprisonment
and
fine
as
above
acquittal
in
a
criminal
case.
mentioned.
216.2.
In
an
infringement
action,
the
court
shall
also
have
SECTION
218.
AFFIDAVIT
EVIDENCE.
–
the
power
to
order
the
seizure
and
impounding
of
any
218.1.
In
an
action
under
this
Chapter,
an
affidavit
made
article
which
may
serve
as
evidence
in
the
court
before
a
notary
public
by
or
on
behalf
of
the
owner
of
proceedings.
the
copyright
in
any
work
or
other
subject
matter
and
stating
that:
SECTION
217.
CRIMINAL
PENALTIES.
–
217.1.
Any
person
infringing
any
right
secured
by
(a)
At
the
time
specified
therein,
copyright
provisions
of
Part
IV
of
this
Act
or
aiding
or
abetting
such
subsisted
in
the
work
or
other
subject
matter;
infringement
shall
be
guilty
of
a
crime
punishable
by:
(b)
He
or
the
person
named
therein
is
the
(a)
Imprisonment
of
one
(1)
year
to
three
(3)
owner
of
the
copyright;
and
years
plus
a
fine
ranging
from
Fifty
thousand
pesos
(P50,000)
to
One
hundred
fifty
thousand
(c)
The
copy
of
the
work
or
other
subject
pesos
(P150,000)
for
the
first
offense.
matter
annexed
thereto
is
a
true
copy
thereof,
shall
be
admitted
in
evidence
in
any
(b)
Imprisonment
of
three
(3)
years
and
one
(1)
proceedings
for
an
offense
under
this
Chapter
day
to
six
(6)
years
plus
a
fine
ranging
from
and
shall
be
prima
facie
proof
of
the
matters
One
hundred
fifty
thousand
pesos
(P150,000)
therein
stated
until
the
contrary
is
proved,
and
to
Five
hundred
thousand
pesos
(P500,000)
for
the
court
before
which
such
affidavit
is
the
second
offense.
produced
shall
assume
that
the
affidavit
was
made
by
or
on
behalf
of
the
owner
of
the
(c)
Imprisonment
of
six
(6)
years
and
one
(1)
copyright.
day
to
nine
(9)
years
plus
a
fine
ranging
from
five
hundred
thousand
pesos
(P500,000)
to
218.2.
In
an
action
under
this
Chapter:
One
million
five
hundred
thousand
pesos
(P1,500,000)
for
the
third
and
subsequent
(a)
Copyright
shall
be
presumed
to
subsist
in
offenses.
the
work
or
other
subject
matter
to
which
the
action
relates
if
the
defendant
does
not
put
in
(d)
In
all
cases,
subsidiary
imprisonment
in
issue
the
question
whether
copyright
subsists
cases
of
insolvency.
in
the
work
or
other
subject
matter;
and
217.2.
In
determining
the
number
of
years
of
(b)
Where
the
subsistence
of
the
copyright
is
imprisonment
and
the
amount
of
fine,
the
court
shall
established,
the
plaintiff
shall
be
presumed
to
consider
the
value
of
the
infringing
materials
that
the
be
the
owner
of
the
copyright
if
he
claims
to
be
defendant
has
produced
or
manufactured
and
the
the
owner
of
the
copyright
and
the
defendant
damage
that
the
copyright
owner
has
suffered
by
reason
does
not
put
in
issue
the
question
of
his
of
the
infringement.
ownership.
217.3.
Any
person
who
at
the
time
when
copyright
(c)
Where
the
defendant,
without
good
faith,
subsists
in
a
work
has
in
his
possession
an
article
which
puts
in
issue
the
questions
of
whether
he
knows,
or
ought
to
know,
to
be
an
infringing
copy
of
copyright
subsists
in
a
work
or
other
subject
the
work
for
the
purpose
of:
matter
to
which
the
action
relates,
or
the
ownership
of
copyright
in
such
work
or
subject
(a)
Selling,
letting
for
hire,
or
by
way
of
trade
matter,
thereby
occasioning
unnecessary
costs
offering
or
exposing
for
sale,
or
hire,
the
or
delay
in
the
proceedings,
the
court
may
article;
direct
that
any
costs
to
the
defendant
in
respect
of
the
action
shall
not
be
allowed
by
(b)
Distributing
the
article
for
purpose
of
trade,
him
and
that
any
costs
occasioned
by
the
or
for
any
other
purpose
to
an
extent
that
will
defendant
to
other
parties
shall
be
paid
by
him
prejudice
the
rights
of
the
copyright
owner
in
to
such
other
parties.
the
work;
or
o 39
Katrina Michelle Mancao
SECTION
219.
PRESUMPTION
OF
AUTHORSHIP.
–
the
Philippines,
Article
50
of
the
Agreement
on
Trade
219.1.
The
natural
person
whose
name
is
indicated
on
a
Related
Aspects
of
Intellectual
Property
Rights,
otherwise
known
as
TRIPS
and
other
related
laws
and
work
in
the
usual
manner
as
the
author
shall,
in
the
international
conventions.
absence
of
proof
to
the
contrary,
be
presumed
to
be
the
author
of
the
work.
This
provision
shall
be
applicable
SECTION
2.
THE
WRIT
OF
SEARCH
AND
SEIZURE.
–
even
if
the
name
is
a
pseudonym,
where
the
pseudonym
leaves
no
doubt
as
to
the
identity
of
the
author.
Where
any
delay
is
likely
to
cause
irreparable
harm
to
the
intellectual
property
right
holder
or
where
there
is
219.2.
The
person
or
body
corporate
whose
name
demonstrable
risk
of
evidence
being
destroyed,
the
intellectual
property
right
holder
or
his
duly
authorized
appears
on
a
audio-‐visual
work
in
the
usual
manner
shall,
representative
in
a
pending
civil
action
for
infringement
in
the
absence
of
proof
to
the
contrary,
be
presumed
to
or
who
intends
to
commence
such
an
action
may
apply
be
the
maker
of
said
work.
ex
parte
for
the
issuance
of
a
writ
of
search
and
seizure
directing
the
alleged
infringing
defendant
or
expected
SECTION
220.
INTERNATIONAL
REGISTRATION
OF
WORKS.
–
adverse
party
to
admit
into
his
premises
the
persons
A
statement
concerning
a
work,
recorded
in
an
named
in
the
order
and
to
allow
the
search,
inspection,
international
register
in
accordance
with
an
international
copying,
photographing,
audio
and
audiovisual
recording
treaty
to
which
the
Philippines
is
or
may
become
a
party,
or
seizure
of
any
document
and
article
specified
in
the
shall
be
construed
as
true
until
the
contrary
is
proved
order.
except:
SECTION
3.
WHERE
APPLICATION
FILED.
–
220.1.
Where
the
statement
cannot
be
valid
The
application
shall
be
filed
with
any
of
the
Regional
under
this
Act
or
any
other
law
concerning
Trial
Courts
of
the
judicial
region
designated
to
try
intellectual
property.
violations
of
intellectual
property
rights
stationed
at
the
place
where
the
alleged
violation
occurred
or
is
to
occur,
220.2.
Where
the
statement
is
contradicted
by
or
the
place
to
be
searched,
at
the
election
of
the
another
statement
recorded
in
the
applicant:
Provided,
however,
that
where
the
complaint
international
register.
for
infringement
has
already
been
filed,
the
application
shall
be
made
in
the
court
where
the
case
is
pending.
SECTION
225.
JURISDICTION.
–
Without
prejudice
to
the
provisions
of
Subsection
7.1(c),
SECTION
4.
VERIFIED
APPLICATION
AND
AFFIDAVITS.
–
actions
under
this
Act
shall
be
cognizable
by
the
courts
The
applicant
shall
file
a
verified
application
alleging
the
with
appropriate
jurisdiction
under
existing
law.
ground
upon
which
it
is
based
and
the
specific
description
and
location
of
the
documents
and
articles
SECTION
226.
DAMAGES.
–
to
be
searched,
inspected,
copied
or
seized
and
their
No
damages
may
be
recovered
under
this
Act
after
four
value.
It
shall
also
state
the
name
applicant,
his
(4)
years
from
the
time
the
cause
of
action
arose.
representative,
witnesses
and
counsel
who
will
attend
the
search
in
the
event
that
the
application
is
granted.
The
application
shall
be
supported
by
affidavits
of
SECTION
231.
REVERSE
RECIPROCITY
OF
FOREIGN
LAWS.
–
witnesses
who
personally
know
the
facts
and
by
the
Any
condition,
restriction,
limitation,
diminution,
authenticated
or
certified
documents.
requirement,
penalty
or
any
similar
burden
imposed
by
the
law
of
a
foreign
country
on
a
Philippine
national
The
application
shall
contain
a
certification
against
seeking
protection
of
intellectual
property
rights
in
that
forum
shopping
as
prescribed
by
Section
5,
Rule
7
of
the
country,
shall
reciprocally
be
enforceable
upon
nationals
1997
Rules
of
Civil
Procedure.
of
said
country,
within
Philippine
jurisdiction.
The
applicant
shall
undertake
in
his
application
that
he
RULE
ON
SEARCH
AND
SEIZURE
IN
CIVIL
ACTIONS
FOR
will
not
use
any
of
the
documents,
articles
or
INFRINGEMENT
OF
INTELLECTUAL
PROPERTY
RIGHTS
information
obtained
by
reason
of
the
search
and
seizure
for
any
purpose
other
than
in
the
action
in
which
SECTION
1.
COVERAGE.
–
the
writ
is
issued.
This
Rule
shall
govern
the
provisional
seizure
and
impounding
of
documents
and
articles
in
pending
and
SECTION
5.
EXAMINATION
OF
APPLICANT;
RECORD;
CONFIDENTIALITY
intended
civil
actions
for
the
purpose
of
preventing
OF
PROCEEDINGS.
–
infringement
and
preserving
relevant
evidence
in
regard
The
application
shall
be
acted
upon
within
twenty-‐four
to
alleged
infringement
under
Republic
Act
No.
8293,
(24)
hours
from
its
filing.
The
judge
must,
before
issuing
otherwise
known
as
the
Intellectual
Property
Code
of
the
writ,
examine
in
the
form
of
searching
questions
and
40 z
Intellectual Property Law
answers,
in
writing
an
under
oath
or
affirmation,
the
them
into
his
custody
subject
to
the
control
of
the
court.
applicant
and
the
witnesses
he
may
produce
on
facts
The
enforcement
of
the
writ
shall
be
supervised
by
an
personally
known
to
them.
The
examination
of
the
independent
Commissioner
to
be
appointed
by
the
court.
applicant
and
his
witnesses
shall
be
recorded.
Their
sworn
statements
and
their
affidavits
shall
form
part
of
SECTION
8.
CONTENTS
OF
THE
WRIT.
–
the
record
of
the
case.
The
writ
shall
contain
the
following:
The
hearing
on
the
application
for
the
writ
shall
be
held
(a)
an
order
to
the
alleged
infringing
defendant,
in
the
chambers
of
the
judge.
Court
personnel
shall
expected
adverse
party
or
to
the
person
who
maintain
the
confidentiality
of
the
application
appears
to
be
in
charge
or
in
control
of
the
proceeding.
premises
or
residing
or
working
therein
to
permit
the
persons
named
in
the
writ
to
enter
The
court
may
require
the
applicant
to
give
other
into
the
premises
for
the
purpose
of
searching,
information
necessary
for
the
identification
of
the
inspecting,
copying,
or
removing
from
the
articles
and
documents
to
be
searched,
inspected,
premises
and
transferring
to
the
custody
of
the
copied
or
seized
and
the
premises
to
be
searched.
sheriff
and
subject
to
the
control
of
the
court
Where
feasible,
it
may
direct
the
applicant
to
submit
the
subject
documents
and
articles;
copies
and
photographs
of
the
documents
or
articles
to
be
seized
and
impounded.
(b)
an
order
to
the
alleged
infringing
defendant,
expected
adverse
party
or
to
the
person
in
SECTION
6.
GROUNDS
FOR
THE
ISSUANCE
OF
THE
ORDER.
–
charge
or
in
control
of
the
premises
to
disclose
Before
the
Order
can
be
issued,
the
evidence
proffered
to
the
sheriff
serving
the
writ
the
location
of
by
the
applicant
and
personally
evaluated
by
the
judge
the
documents
and
articles
subject
of
the
writ.
must
show
that:
(c)
the
period
when
the
writ
shall
be
enforced
(a)
the
applicant
is
the
right
holder
or
his
duly
which
in
no
case
shall
be
more
than
ten
(10)
authorized
representative;
days
from
the
date
of
issuance
by
the
court.
(b)
there
is
probable
cause
to
believe
that
the
(d)
the
names
of
the
applicant
or
his
agent
or
applicant’s
right
is
being
infringed
or
that
such
representative
and
the
Commissioner
who
shall
infringement
is
imminent
and
there
is
a
prima
supervise
the
enforcement
of
the
writ;
and
facie
case
for
final
relief
against
the
alleged
infringing
defendant
or
expected
adverse
(e)
other
terms
and
conditions
that
will
insure
party;
the
proper
execution
of
the
writ
with
due
regard
to
the
rights
of
the
alleged
infringing
(c)
damage,
potential
or
actual,
likely
to
be
defendant
or
expected
adverse
party.
caused
to
the
applicant
is
irreparable;
It
shall
also
contain
a
warning
that
violation
of
any
of
the
(d)
there
is
demonstrable
risk
of
evidence
that
terms
and
conditions
of
the
writ
shall
constitute
the
alleged
infringing
defendant
or
expected
contempt
of
court.
adverse
party
may
destroy,
hide
or
remove
the
documents
or
articles
before
any
application
SECTION
9.
BOND
AND
ITS
CONDITIONS.
–
inter
partes
can
be
made;
and
The
applicant
shall
be
required
to
post
a
cash
bond,
surety
bond
or
other
equivalent
security
executed
in
(e)
the
documents
and
articles
to
be
seized
favor
of
the
defendant
or
expected
adverse
party
in
a
constitute
evidence
of
the
alleged
infringing
reasonable
amount
to
be
fixed
by
the
court
in
its
order
defendant’s
or
expected
adverse
party’s
granting
the
issuance
of
a
writ
of
search
and
seizure.
The
infringing
activity
or
that
they
infringe
upon
the
bond
shall
be
conditioned
on
the
undertaking
of
the
intellectual
property
right
of
the
applicant
or
applicant
that
he
will
pay
all
the
costs
which
may
be
that
they
are
used
or
intended
to
be
used
as
adjudged
to
defendant
or
expected
adverse
party
and
all
means
of
infringing
the
applicant’s
intellectual
damages
which
the
latter
may
sustain
by
reason
of
the
property
right.
issuance
of
the
writ.
SECTION
7.
WHEN
WRIT
MAY
ISSUE.
–
SECTION
10.
WHEN
WRIT
SHALL
BE
SERVED .
–
If
the
judge
is
satisfied
with
the
proof
of
facts
upon
The
writ
shall
be
served
only
on
weekdays
and
from
8
which
the
application
is
based,
he
shall
issue
the
writ
o'clock
in
the
morning
to
5
o'clock
in
the
afternoon.
requiring
the
search,
inspection
or
copying
of
the
subject
However,
the
court
may
direct
that
the
writ
be
served
on
documents
or
articles
or
commanding
the
sheriff
to
take
o 41
Katrina Michelle Mancao
any
day
and
any
time
for
compelling
reasons
stated
in
charge
or
in
control
of
the
premises
or
residing
or
the
application
and
duly
proved.
working
therein
who
shall
be
given
the
opportunity
to
read
the
writ
before
its
enforcement
and
seek
its
SECTION
11.
TO
WHOM
WRIT
SHALL
BE
SERVED.
–
interpretation
from
the
Commissioner.
In
the
absence
of
The
writ
shall
be
served
on
the
alleged
infringing
the
latter,
two
persons
of
sufficient
age
and
discretion
defendant
or
expected
adverse
party
in
the
place
to
be
residing
in
the
nearest
locality.
searched.
SECTION
14.
MANNER
OF
SEARCH
AND
SEIZURE;
DUTIES
OF
THE
If
the
alleged
infringing
defendant
or
expected
adverse
SHERIFF.
–
party
cannot
be
found
in
the
premises,
the
writ
shall
be
Upon
service
of
the
writ
in
accordance
with
section
11
served
on
his
agent
or
representative.
In
the
absence
of
hereof,
the
sheriff,
under
the
supervision
of
the
an
agent
or
representative,
it
shall
be
served
on
the
Commissioner,
shall
search
for
the
documents
and
person
in
charge
or
in
control
of
the
premises,
or
articles
specified
in
the
writ,
and
take
them
in
his
residing
or
working
therein
who
is
of
sufficient
age
and
custody
subject
to
the
control
of
the
court.
discretion.
If
such
person
is
absent,
the
sheriff
or
proper
officer
shall
post
the
papers
on
the
premises
and
If
the
subject
articles
are
not
capable
of
manual
delivery,
proceed
with
the
enforcement
of
the
writ.
the
sheriff
shall
attach
to
them
a
tag
or
label
stating
the
fact
of
seizure
and
warning
all
persons
from
tampering
SECTION
12.
COMMISSIONER,
DUTIES,
QUALIFICATIONS
AND
FEES.
–
with
them.
The
enforcement
of
the
writ
shall
be
supervised
by
the
independent
Commissioner
appointed
by
the
court
in
The
sheriff
shall,
in
the
presence
of
the
applicant
or
his
the
performance
of
his
duty,
the
Commissioner
shall:
representative,
and
under
the
supervision
of
the
Commissioner,
prepare
a
detailed
list
of
the
seized
(a)
give
impartial
advice
to
the
alleged
documents
and
articles.
He
shall
give
an
accurate
copy
of
infringing
defendant,
expected
adverse
party
the
same
to
the
alleged
infringing
defendant,
expected
or
to
the
person
in
charge
of
the
premises
to
adverse
party,
his
agent
or
representative,
to
the
person
be
searched
as
to
the
meaning
and
coverage
of
in
charge
or
in
control
of
the
premises
or
residing
or
the
writ.
working
therein
in
whose
presence
the
search
and
(b)
attempt
to
achieve
agreement
on
a
suitable
seizure
were
made.
In
the
absence
of
the
person
in
search
procedure
charge
or
in
control
of
the
premises
or
residing
or
working
therein,
the
sheriff
must,
in
the
presence
of
at
(c)
assess
what
documents
or
articles
come
least
two
witnesses
of
sufficient
age
and
discretion
within
the
terms
of
the
writ
residing
in
the
same
locality,
leave
a
copy
of
the
receipt
in
the
place
in
which
he
found
the
seized
property.
(d)
ensure
the
accuracy
of
the
list
of
Where
no
witnesses
are
available
in
the
same
locality,
documents
and
articles
searched,
inspected,
the
copy
of
the
receipt
shall
be
left
by
the
sheriff
in
the
copied
or
seized
by
the
sheriff;
presence
of
two
witnesses
residing
in
the
nearest
locality
The
applicant
or
his
representative
and
the
(e)
prepare
his
own
report
on
the
search
and
Commissioner
shall
also
be
given
a
copy
of
the
receipt.
seizure
and
verify
and
sign
the
return
prepared
by
the
sheriff,
and
After
the
sheriff
has
taken
possession
of
the
documents
and
articles,
he
shall
deliver
them
to
a
bonded
(f)
generally,
assist
in
the
proper
execution
of
warehouse
or
government
warehouse
for
safekeeping.
the
writ.
The
applicant
or
his
representative
shall
be
allowed
access
to
said
materials
for
the
purpose
of
examining
The
Commissioner
shall
be
a
member
of
the
Philippine
them.
Bar
and
of
proven
competence,
integrity
and
probity.
He
shall
receive
such
reasonable
compensation
as
may
be
The
applicant
shall
be
responsible
for
the
necessary
determined
by
the
court
which
can
be
charged
as
cost
of
expenses
incurred
in
the
seizure
and
safekeeping
of
the
suit.
documents
and
articles
in
a
bonded
warehouse
or
government
warehouse.
SECTION
13.
SEARCH
TO
BE
CONDUCTED
IN
THE
PRESENCE
OF
DEFENDANT,
HIS
REPRESENTATIVE,
PERSON
IN
CHARGE
OF
THE
SECTION
15.
USE
OF
REASONABLE
FORCE
TO
EFFECT
WRIT.
–
PREMISES,
OR
WITNESSES.
–
The
sheriff,
if
refused
admittance
to
the
premises
after
The
premises
may
not
be
searched
except
in
the
giving
notice
of
his
purpose
and
authority
or
in
the
presence
of
the
alleged
infringing
defendant,
expected
absence
of
the
alleged
infringing
defendant
or
expected
adverse
party
or
his
representative
or
the
person
in
adverse
party,
his
agent
or
representative,
or
person
in
charge
or
in
control
of
the
premises
or
residing
or
42 z
Intellectual Property Law
working therein who is of sufficient age and discretion,
may use reasonable force to gain entry to the premises (b) that the bond is insufficient;
or any part of the building or anything therein, to
enforce the writ or to liberate himself or any person (c) that the safeguards provided in the writ
lawfully aiding him when unlawfully detained therein. have been violated by the applicant or the
sheriff; or
SECTION 16. SEIZURE OF COMPUTER DISKS OR OTHER STORAGE
DEVICES. – (d) that the documents and articles seized are
The seizure of a computer disk or any storage device not infringing copies or means for making the
may be executed in any of the following manner: materials alleged to infringe the intellectual
property right of the applicant.
(a) by the physical taking thereof,
The writ may be discharged in a summary hearing by the
(b) by copying its contents in suitable device or court after notice to the applicant, the sheriff and the
disk provided by the applicant; or Commissioner.
(c) by printing out the contents of the disk or If the court finds that the bond is insufficient, it shall
device with the use of a printer. order a new bond to be filed by the applicant within a
reasonable time. The discharge of the writ based on the
When the computer disks or storage device cannot be insufficiency of the bond may only be made if the
readily removed from the computer to which they are applicant fails to post the new bond within the period
fitted, the sheriff may take the subject computer from fixed by the court.
the custody of the alleged infringing defendant,
expected adverse party or person in charge or in control SECTION 19. PROCEEDINGS ON RETURN. –
of the premises or residing or working therein. Five (5) days after issuance of the writ, the issuing judge
shall ascertain if the writ has not been served or the
SECTION 17. SHERIFF’S RETURN. – return has been made by the sheriff. If the writ was not
The sheriff who executed the writ shall, within three (3) served or no return was made, it shall summon the
days from its enforcement, make a verified return to the sheriff and the applicant to whom the writ was issued
court which issued the writ. The return shall contain a and require them to explain why the writ was not served
full statement of the proceedings under the writ and a or why no return has been filed as the case may be. If the
complete inventory of the documents and articles return has been made, the judge shall, after notice to the
searched, inspected or copied or seized and impounded, applicant, the alleged infringing defendant or expected
with copies served on the applicant, the defendant or adverse party, the sheriff and the Commissioner,
expected adverse party and the Commissioner. ascertain whether the provisions of this Rule and
applicable laws have been complied with.
If not all of the documents and articles enumerated in
the order and writ were seized, the sheriff shall so report SECTION 20. FAILURE TO FILE COMPLAINT. –
to the court and state the reasons therefor. All The writ shall also, upon motion of the expected adverse
objections of the defendant expected adverse party or party, be set aside and the seized documents and articles
person in charge of the premises on the manner and returned to the expected adverse party if no case is filed
regularity of the service of the writ shall be included by with the appropriate court or authority within thirty-‐one
the sheriff in his return. (31) calendar days from the date of issuance of the writ.
SECTION 18. DISCHARGE OF WRIT BY THE DEFENDANT OR EXPECTED SECTION 21. CLAIM FOR DAMAGES. –
ADVERSE PARTY. – When the writ is discharged on any of the grounds
Without waiting for the return to be filed by the sheriff, provided in this Rule, or where it is found after trial that
the defendant, expected adverse party or the party there has been no infringement or threat of
whose property has been searched, inspected, copied or infringement of an intellectual property right, the court
seized may file a motion with the court which issued the upon motion of the alleged infringing defendant or
writ for its discharge with prayer for the return of the expected adverse and after due hearing, shall order the
documents and articles seized. applicant to compensate the defendant or expected
adverse party upon the cash bond, surety bond or other
The writ may be discharged on any of the following equivalent security for any injury or damage the latter
grounds: suffered by the issuance and enforcement of the writ.
Should the damages exceed the amount of the bond,
(a) that the writ was improperly or irregularly the applicant shall be liable for the payment of the
issued, or excessively enforced; excess.
o 43
Katrina Michelle Mancao
When
a
complaint
is
already
filed
in
court,
the
motion
SECTION
24.
SEPARATE
LOGBOOK.
–
shall
be
filed
with
the
same
court
during
the
trial
or
In
every
court,
there
shall
be
a
logbook
under
the
before
appeal
is
perfected
or
before
judgment
becomes
custody
of
the
Clerk
of
Court
wherein
shall
be
docketed
executory,
with
due
notice
to
the
applicant
setting
forth
and
entered
within
twenty-‐four
(24)
hours
after
the
the
facts
showing
the
defendant’s
right
to
damages
and
issuance
or
denial
of
the
writ
search
and
seizure,
the
amount
thereof.
The
award
of
damages
shall
be
included
filing
of
such
application
and
other
particulars
thereof.
in
the
judgment
in
the
main
case.
All
the
subsequent
proceedings
concerning
the
writ
of
search
and
seizure
shall
be
faithfully
recorded
in
the
Where
no
complaint
is
filed
against
the
expected
separate
logbook.
adverse
party,
the
motion
shall
be
filed
with
the
court
which
issued
the
writ.
In
such
a
case,
the
court
shall
set
SECTION
25.
EFFECT
OF
VIOLATION.
–
the
motion
for
summary
hearing
and
immediately
A
violation
of
any
of
the
terms
and
conditions
of
the
determine
the
expected
adverse
party’s
right
to
order
and
the
writ
of
search
and
seizure
or
any
provision
damages.
of
the
Rule
shall
constitute
contempt
of
court.
A
judgment
in
favor
of
the
applicant
in
its
principal
claim
SECTION
26.
WRIT
NOT
A
BAR
TO
OTHER
MEASURES.
–
should
not
necessarily
bar
the
alleged
infringing
The
availment
of
the
writ
of
search
and
seizure
under
defendant
from
recovering
damages
where
he
suffered
this
Rule
shall
not
prevent
the
applicant
from
resorting
losses
by
reasons
of
the
wrongful
issuance
or
to
other
provisional
measures
or
remedies
provided
in
enforcement
of
the
writ.
existing
laws
and
procedural
rules.
The
damages
provided
f
or
in
this
section
shall
be
SECTION
27.
EFFECTIVITY.
–
independent
from
the
damages
claimed
by
the
defendant
in
his
counterclaim
This
Rule
shall
take
effect
on
February
15,
2002
after
its
publication
in
two
(2)
newspapers
of
general
circulation
SECTION
22.
JUDGMENT.
–
not
later
than
January
30,
2002.
If
it
appears
after
trial
that
the
seized
documents
and
articles
are
bound
to
infringe
the
intellectual
property
RE:
CONSOLIDATION
OF
INTELLECTUAL
PROPERTY
COURTS
right
of
the
applicant
or
that
they
constitute
the
means
WITH
COMMERCIAL
COURTS
[A.M.
NO .
03-‐03-‐03-‐SC
the
means
for
the
production
of
infringing
goods,
the
2003-‐06-‐17]
court
shall
order
their
destruction
or
donation
to
charitable,
educational
or
religious
institutions
with
the
RESOLUTION
prohibition
against
bringing
the
same
in
to
the
channels
of
commerce.
In
the
latter
case,
infringing
trademarks
or
WHEREAS,
to
implement
the
provisions
of
Section
5.2
of
trade
names
found
on
labels,
tags
and
other
portions
of
Republic
Act
No.
8799
(The
Securities
Regulation
Code),
the
infringing
materials
shall
be
removed
or
defaced
and
in
the
interest
of
a
speedy
and
efficient
before
the
donation.
In
no
case
shall
the
infringing
administration
of
justice,
the
Supreme
Court
en
banc,
in
materials
be
returned
to
the
defendant.
the
(a)
Resolution
dated
21
November
2000
(Annex
1),
4
July
2001
(Annex
1-‐a),
12
November
2002
(Annex
1-‐b),
and
If
the
court
finds
no
infringement,
the
seized
material
9
July
2002
(Annex
1-‐c),
all
issued
in
A.M.
No.
00-‐11-‐03-‐SC;
shall
be
immediately
returned
to
the
defendant.
(b)
Resolution
dated
27
August
2001
in
A.M.
No.
01-‐5-‐298
RTC
(Annex
2);
and
(c)
Resolution
dated
8
July
2002
in
SECTION
23.
DIRECT
FILING,
PROVISIONAL
DOCKETING
AND
DEPOSIT
A.M.
No.
01-‐12-‐656-‐RTC
(Annex
3),
resolved
to
designate
OF
PRESCRIBED
FILING
FEE.
–
certain
branches
of
the
Regional
Trial
Courts
to
try
and
The
Regional
Trial
Courts
specially
designated
to
try
decide
cases
formerly
cognizable
by
the
Securities
and
violations
of
intellectual
property
rights
shall
keep
a
Exchange
Commission;
distinct
and
separate
logbook
for
writs
of
search
and
seizure.
The
application
for
a
writ
of
search
and
seizure
WHEREAS,
pursuant
to
the
same
Resolution,
sixty-‐five
filed
directly
with
the
said
courts
shall
be
given
a
(65)
Regional
Trial
Courts,
distributed
in
all
regions
provisional
docket
number.
The
prescribed
filing
fee
(NCJR
and
Regions
1-‐12),
were
designated
as
SEC
courts
shall
be
deposited
with
the
branch
clerk
of
court
and
("SEC
Courts"),
which
courts
have
presently
a
total
of
properly
receipted
for
and
transmitted
to
the
Clerk
of
812
pending
SEC
cases
(see
Annex
6,
Table);
Court
within
twenty-‐four
(24)
hours
from
issuance
of
the
order
granting
or
denying
the
application
for
said
writ.
If
WHEREAS,
in
A.O
No.
113-‐95,
dated
2
October
1995,
as
a
formal
complaint
is
filed
thereafter,
the
Clerk
of
Court
amended
by
A.O.
No.
104-‐96,
dated
21
October
1996,
the
may
make
a
reassessment
of
the
filing
fee.
Regional
Trial
Courts
in
the
National
Capital
Region
and
Regions
3,
4,
6,
7,
9,
10
and
11,
with-‐twenty
seven
(27)
44 z
Intellectual Property Law
judges,
were
specially
designated
to
try
and
decide
cases
the
pretrial
stage
in
civil
cases
or
those
where
any
of
the
for
violations
of
Intellectual
Property
Rights
(Annex
4),
accused
has
been
arraigned
in
criminal
cases
which
shall
and
to
ensure
the
speedy
disposition
of
cases
involving
be
retained
by
the
court
previously
assigned
to
try
them;
violations
of
intellectual
property
rights
under
the
Intellectual
Property
Code
(Rep.
Act
No.
8293),
the
4. The
Special
Commercial
Courts
shall
have
Supreme
Court
en
banc,
in
A.M.
No.
02-‐1-‐11-‐
SC,
dated
jurisdiction
over
cases
arising
within
their
respective
February
19,
2002,
designated
the
Regional
Trial
Courts
territorial
jurisdiction
with
respect
to
the
National
Capital
in
Regions
1,
2,
5,
8
and
12,
with
a
total
of
seven
(7)
Judicial
Region
and
within
the
respective
provinces
with
judges,
and
Branch
24
of
the
Regional
Trial
Court
of
respect
to
the
First
to
Twelfth
Judicial
Regions.
Thus,
Manila
with
one
(1)
judge,
as
Special
Intellectual
Property
cases
shall
be
filed
in
the
Office
of
the
Clerk
of
Court
in
Courts
("Special
IP
Courts")
(Annex
5)
the
official
station
of
the
designated
Special
Commercial
Court;
WHEREAS,
pursuant
to
A.M.
No.
02-‐1-‐11
SC
and
A.O.
No.
113-‐95,
these
Special
IP
Courts
have
a
total
caseload
of
5. In
the
event
of
inhibition
of
the
judge
of
a
503
cases.
Of
this
number
434
IP
cases
are
pending
in
the
designated
Special
Commercial
Court,
the
following
NCJR
(Annex
6,
Table);
guidelines
shall
be
observed:
(a)
where
there
is
only
one
(1)
Special
Commercial
Court,
the
case
shall
be
raffled
WHEREAS,
since
the
establishment
of
Special
IP
Courts
among
the
other
judges
in
the
station;
(b)
where
there
(except
for
the
Special
IP
Courts
in
Manila),
15
are
two
(2)
Special
Commercial
Courts
in
the
station,
the
designated
courts,
in
Regions
1,
2,
3,
4,
5,
6,
7,
8,
9
and
12
Executive
Judge
shall
immediately
assign
the
case
to
the
have
zero
(0)
IP
cases,
and
do
not
warrant
their
other
Special
Commercial
Court;
and
(c)
in
case
of
continued
designations
as
Intellectual
Property
Courts
inhibition
of
both
judges
of
the
Special
Commercial
(Annex
7,
Table);
Courts,
the
Executive
Judge
shall
raffle
the
case
among
the
judges
in
the
station;
and
WHEREAS,
intellectual
property
cases
are
commercial
in
nature;
6. In
order
to
ensure
a
just
and
equitable
distribution
of
cases,
the
designated
Special
Commercial
WHEREAS,
to
streamline
the
court
structure
and
to
Courts
shall
continue
to
participate
in
the
raffles
of
other
promote
expediency
and
efficiency
in
handling
such
cases.
Provided,
however,
that
the
Executive
Judge
special
cases,
the
jurisdiction
to
hear
and
decide
IPC
and
concerned
shall
adopt
a
procedure
whereby
every
IP
and
SEC
cases
are
best
consolidated
in
one
court;
SEC
case
assigned
to
a
Special
Commercial
Court
should
be
considered
a
case
raffled
to
it
and
duly
credited
to
NOW,
THEREFORE,
the
Court
Resolves:
such
court.
1. The
Regional
Courts
previously
designated
as
This
Resolution
shall
take
effect
on
1
July
2003
and
shall
SEC
Courts
through
the:
(a)
Resolutions
of
this
Court
be
published
in
two
(2)
newspapers
of
general
dated
21
November
2000,
4
July
2001,
12
November
2002,
circulation.
and
9
July
2002,
all
issued
in
A.M.
No.
00-‐11-‐03-‐SC,
(b)
Resolution
dated
27
August
2001
in
A.M.
No.
01-‐5-‐298-‐ 17
June
2003
RTC;
and
(c)
Resolution
dated
8
July
2002
in
A.M.
No.
01-‐
12-‐656-‐RTC
are
hereby
DESIGNATED
and
shall
be
CALLED
20TH
CENTURY
FOX
FILM
CORP.
V.
CA,
BARRETO,
SAGULLO,
as
Special
Commercial
Courts
to
try
and
decide
cases
LEDESMA
(1988)
involving
violations
of
Intellectual
Property
Rights
which
fall
within
their
jurisdiction
and
those
cases
formerly
Refresher:
In
a
letter-‐complaint
dated
August
26,
1985,
petitioner
cognizable
by
the
Securities
and
Exchange
Commission;
20th
Century
Fox
Film
Corporation
through
counsel
sought
the
NBI’s
assistance
in
the
conduct
of
searches
2. The
designation
of
Intellectual
Property
Courts
under
Administrative
Order
No.
113-‐95
dated
2
October
and
seizures
in
connection
with
the
latter's
anti-‐film
piracy
campaign.
Specifically,
the
letter-‐complaint
1995,
as
amended
by
Administrative
Order
No.
104-‐96
alleged
that
certain
videotape
outlets
all
over
Metro
dated
21
October
1996
and
Resolution
dated
19
February
Manila
are
engaged
in
the
unauthorized
sale
and
renting
2002
in
A.M.
No.
02-‐1-‐11-‐SC,
is
hereby
revoked.
However,
out
of
copyrighted
films
in
videotape
form
which
the
Regional
Trial
Court,
Branch
24,
Manila
is
hereby
designated
as
an
additional
Special
Commercial
Court
in
constitute
a
flagrant
violation
of
PD
49.
the
City
of
Manila;
Acting
on
the
letter-‐complaint,
the
NBI
conducted
surveillance
and
investigation
of
the
outlets
pinpointed
3. Upon
the
effectivity
of
this
Resolution,
all
IP
cases
shall
be
transferred
to
the
designated
Special
by
the
petitioner
and
subsequently
filed
3
applications
for
search
warrants
against
the
video
outlets
owned
by
Commercial
Courts
except
those
which
have
undergone
the
private
respondents.
o 45
Katrina Michelle Mancao
On
September
4,
1985,
the
lower
court
issued
the
Acting
on
the
applications,
then
RTC
Judge
Maria
Alicia
desired
search
warrants.
M.
Austria
conducted
a
joint
hearing
during
which
she
made
a
personal
examination
of
the
applicant
and
his
Armed
with
the
search
warrants,
the
NBI
accompanied
witnesses.
Finding
just
and
probable
cause
for
granting
by
the
petitioner's
agents,
raided
the
video
outlets
and
the
application
at
the
time,
Judge
Austria
issued
the
seized
the
items
described
therein.
An
inventory
of
the
corresponding
Search
Warrants
numbered
95,
96,
and
items
seized
was
made
and
left
with
the
private
97.
respondents.
However,
the
lower
court
subsequently
lifted
the
search
warrants
issued.
Doctrine:
It
is
not
correct
to
say
that
"the
basic
fact"
to
be
proven
Issue:
whether
or
not
the
judge
properly
lifted
the
search
to
establish
probable
cause
in
the
instant
cases
is
not
the
warrants
he
issued
earlier
upon
the
application
of
the
"unauthorized
transfer"
of
a
motion
picture
that
has
National
Bureau
of
Investigation
on
the
basis
of
the
been
recorded
but
the
"sale,
lease,
or
distribution
of
complaint
filed
by
the
petitioner.
pirated
video
tapes
of
copyrighted
films."
Held:
In
applying
for
the
search
warrants
the
NBI
charged
The
presentation
of
the
master
tapes
of
the
copyrighted
violation
of
the
entire
provisions
of
Section
56
of
P.D.
No.
films
from
which
the
pirated
films
were
allegedly
copied,
49
as
amended
by
P.D.
No.
1988.
This
included
not
only
was
necessary
for
the
validity
of
search
warrants
against
the
sale,
lease
or
distribution
of
pirated
tapes
but
also
those
who
have
in
their
possession
the
pirated
films.
The
the
transfer
or
causing
to
be
transferred
of
any
sound
petitioner's
argument
to
the
effect
that
the
presentation
recording
or
motion
picture
or
other
audio
visual
work.
of
the
master
tapes
at
the
time
of
application
may
not
be
necessary
as
these
would
be
merely
evidentiary
in
nature
But
even
assuming,
as
appellants
argue,
that
only
the
and
not
determinative
of
whether
or
not
a
probable
sale,
lease,
or
distribution
of
pirated
video
tapes
is
cause
exists
to
justify
the
issuance
of
the
search
involved,
the
fact
remains
that
there
is
need
to
establish
warrants
is
not
meritorious.
The
court
cannot
presume
probable
cause
that
the
tapes
being
sold,
leased
or
that
duplicate
or
copied
tapes
were
necessarily
distributed
are
pirated
tapes,
hence
the
issue
reverts
reproduced
from
master
tapes
that
it
owns.
back
to
the
question
of
whether
there
was
unauthorized
transfer,
directly
or
indirectly,
of
a
sound
recording
or
The
application
for
search
warrants
was
directed
against
motion
picture
or
other
audio
visual
work
that
has
been
video
tape
outlets
which
allegedly
were
engaged
in
the
recorded.
unauthorized
sale
and
renting
out
of
copyrighted
films
belonging
to
the
petitioner
pursuant
to
P.D.
49.
COLUMBIA
PICTURES,
INC.,
ET
AL.
V.
CA
(1996)
Refresher:
The
essence
of
a
copyright
infringement
is
the
similarity
Complainants
thru
counsel
lodged
a
formal
complaint
or
at
least
substantial
similarity
of
the
purported
pirated
with
the
NBI
for
violation
of
PD
49,
as
amended,
and
works
to
the
copyrighted
work.
Hence,
the
applicant
sought
its
assistance
in
their
anti-‐film
piracy
drive.
must
present
to
the
court
the
copyrighted
films
to
Agents
of
the
NBI
and
private
researchers
made
discreet
compare
them
with
the
purchased
evidence
of
the
video
surveillance
on
various
video
establishments
in
Metro
tapes
allegedly
pirated
to
determine
whether
the
latter
Manila
including
Sunshine
Home
Video
Inc.
(Sunshine
for
is
an
unauthorized
reproduction
of
the
former.
This
brevity),
owned
and
operated
by
Danilo
A.
Pelindario.
linkage
of
the
copyrighted
films
to
the
pirated
films
must
be
established
to
satisfy
the
requirements
of
probable
NBI
Senior
Agent
Lauro
C.
Reyes
applied
for
a
search
cause.
Mere
allegations
as
to
the
existence
of
the
warrant
with
the
court
a
quo
against
Sunshine
seeking
copyrighted
films
cannot
serve
as
basis
for
the
issuance
the
seizure,
among
others,
of
pirated
video
tapes
of
of
a
search
warrant.
copyrighted
films
all
of
which
were
enumerated
in
a
list
attached
to
the
application;
and,
television
sets,
video
COLUMBIA
PICTURES,
INC.,
ET
AL.
V.
CA
(1994)
cassettes
and/or
laser
disc
recordings
equipment
and
Refresher:
other
machines
and
paraphernalia
used
or
intended
to
On
07
April
1988,
the
NBI,
through
its
Agent
Lauro
C.
be
used
in
the
unlawful
exhibition,
showing,
Reyes,
filed
with
the
Pasig
RTC
3
applications
for
search
reproduction,
sale,
lease
or
disposition
of
videograms
warrant
against
private
respondents
Tube
Video
tapes
in
the
premises
above
described.
Enterprises
and
Edward
C.
Cham,
the
Blooming
Rose
Tape
Center
and
Ma.
Jajorie
T.
Uy,
and
the
Video
Channel
Main
issue:
Retroactive
application
to
the
present
and
Lydia
Nabong,
charging
said
respondents
with
controversy
of
the
ruling
in
20th
Century
Fox
Film
violation
of
Section
56
of
PD
49,
as
amended
by
P.D.
No.
Corporation
vs.
Court
of
Appeals,
et
al.,
promulgated
on
1988.
August
19,
1988,
that
for
the
determination
of
probable
46 z
Intellectual Property Law
cause
to
support
the
issuance
of
a
search
warrant
in
done
after
the
ten-‐year
period
has
lapsed
—
since
1960
copyright
infringement
cases
involving
videograms,
the
and
1964
were
both
leap
years
and
the
case
was
thus
production
of
the
master
tape
for
comparison
with
the
filed
two
(2)
days
too
late.
Since
this
case
was
filed
on
allegedly
pirated
copies
is
necessary.
September
3,
1965,
it
was
filed
one
day
too
late;
considering
that
the
730th
day
fell
on
September
2,
1965
Doctrine:
—
the
year
1964
being
a
leap
year.
Mindful
as
we
are
of
the
ramifications
of
the
doctrine
of
stare
decisis
and
the
rudiments
of
fair
play,
it
is
our
LAKTAW
V.
PAGLINAWAN
(1918)
considered
view
that
the
20th
Century
Fox
ruling
cannot
Refresher:
be
retroactively
applied
to
the
instant
case
to
justify
the
In
the
complaint
presented
in
the
Court
of
First
Instance
quashal
of
Search
Warrant
No.
87-‐053.
Herein
petitioners’
of
the
City
of
Manila
on
February
20,
1915,
it
was
alleged:
consistent
position
that
the
order
of
the
lower
court
of
(1)
That
the
plaintiff
was,
according
to
the
laws
September
5,
1988
denying
therein
defendants’
motion
regulating
literary
properties,
the
registered
owner
and
to
lift
the
order
of
search
warrant
was
properly
issued,
author
of
a
literary
work
entitled
Diccionario
Hispano-‐
there
having
been
satisfactory
compliance
with
the
then
Tagalog
(Spanish-‐Tagalog
Dictionary)
published
in
the
prevailing
standards
under
the
law
for
determination
of
City
of
Manila
in
1889
by
the
printing
establishment
La
probable
cause,
is
indeed
well
taken.
The
lower
court
Opinion,
and
a
copy
of
which
was
attached
to
the
could
not
possibly
have
expected
more
evidence
from
complaint,
as
Exhibit
A;
(2)
that
the
defendant,
without
petitioners
in
their
application
for
a
search
warrant
other
the
consent
of
the
plaintiff,
reproduced
said
literary
than
what
the
law
and
jurisprudence,
then
existing
and
work,
improperly
copied
the
greater
part
thereof
in
the
judicially
accepted,
required
with
respect
to
the
finding
work
published
by
him
and
entitled
Diccionariong
of
probable
cause.
Kastila-‐Tagalog
(Spanish-‐Tagalog
Dictionary),
a
copy
of
which
was
also
attached
to
the
complaint
as
Exhibit
B;
PEOPLE
V.
RAMOS
(1978)
(3)
that
said
act
of
the
defendant,
which
is
a
violation
of
Refresher:
article
7
of
the
Law
of
January
10,
1879,
on
Intellectual
Soccorro
Ramos,
as
the
proprietor
aid
general
manager
Property,
caused
irreparable
injuries
to
the
plaintiff,
who
of
the
National
Book
Store,
as
enterprise
engaged
in
the
was
surprised
when,
on
publishing
his
new
work
entitled
business
of
publishing,
selling
and
distributing
books,
Diccionario
Tagalog-‐Hispano
(Tagalog-‐Spanish
was
charged
with
copyright
infringement
for
willfully
Dictionary)
he
learned
of
the
fact,
and
(4)
that
the
and
illegally
selling
and
distributing
spurious
and
pirated
damages
occasioned
to
the
plaintiff
by
the
publication
of
copies
of
the
high
school
textbook,
entitled
General
defendant's
work
amounted
to
$10,000.
The
plaintiff
Science
Today
for
Philippine
School,
First
Year,
by
Gilam,
therefore
prayed
the
court
to
order
the
defendant
to
Van
Houten
and
Cornista,
which
was
duly
copyrighted
by
withdraw
from
sale
all
stock
of
the
work
herein
the
Phoenix
Publishing
House,
Inc.,
and
was
being
identified
as
Exhibit
B
and
to
pay
the
plaintiff
the
sum
of
distributed
exclusively
by
its
sister
corporation,
Alemar's
$10,000,
with
costs.
or
Sibal
and
Sons,
Inc.
The
alleged
act
happened
on
July
–
September
1963.
The
criminal
cases
were
filed
on
Doctrine:
September
1965.
In
the
judgment
appealed
from,
the
court
gives
one
to
understand
that
the
reproduction
of
another's
dictionary
Issue:
Whether
or
not
the
extra
day
in
the
leap
year,
1964
without
the
owner's
consent
does
not
constitute
a
should
be
taken
into
consideration
in
the
computation
of
violation
of
the
Law
of
Intellectual
Property
for
the
the
two-‐year
period
of
prescription
provided
in
Section
court's
idea
of
a
dictionary
is
stated
in
the
decision
itself,
24
of
the
copyright
law.
as
follows:
Held:
Dictionaries
have
to
be
made
with
the
aid
of
Resolution
of
this
issue
hinges,
in
turn,
on
whether
others,
and
they
are
improved
by
the
increase
February
28,
and
29
of
a
leap
year,
1964,
should
be
of
words.
What
may
be
said
of
a
pasture
counted
as
one
day,
as
proposed
by
the
prosecution;
or
ground
may
be
said
also
of
a
dictionary,
i.
e.,
as
separate
days,
as
alleged
by
the
defense.
that
it
should
be
common
property
for
all
who
may
desire
to
write
a
new
dictionary,
and
the
This
issue
which
was
in
1965
still
undetermined
is
now
a
defendant
has
come
to
this
pasture
ground
settled
matter.
It
was
held
in
1969
in
Namarco
vs.
Tuazon
and
taken
whatever
he
needed
from
it
in
the
that
February
28
and
29
of
a
leap
year
should
be
counted
exercise
of
a
perfect
right.
as
separate
days
in
computing
periods
of
prescription.
Thus,
this
Court,
speaking
thru
former
Chief
Justice
Such
idea
is
very
erroneous,
especially
in
relation
to
the
Roberto
Concepcion,
held
that
where
the
prescriptive
Law
of
Intellectual
Property.
Danvilla
y
Collado
the
period
was
supposed
to
commence
on
December
21,
author
of
the
Law
of
January
10,
1879,
on
Intellectual
1955,
the
filing
of
the
action
on
December
21,
1965,
was
Property,
which
was
discussed
and
approved
in
the
o 47
Katrina Michelle Mancao
Spanish
Cortes,
in
his
work
entitled
La
Propiedad
thereof.
If
the
author
of
a
book,
after
its
Intelectual
(page
362,
1st
ed.)
states
with
respect
to
publication,
cannot
prevent
its
reproduction
by
dictionaries
and
in
relation
to
article
7
of
said
law:
any
person
who
may
want
to
reproduce
it,
then
the
property
right
granted
him
is
reduced
The
protection
of
the
law
cannot
be
denied
to
to
a
very
insignificant
thing
and
the
effort
the
author
of
a
dictionary,
for
although
words
made
in
the
production
of
the
book
is
no
way
are
not
the
property
of
anybody,
their
rewarded.
definitions,
the
example
that
explain
their
sense,
and
the
manner
of
expressing
their
Indeed
the
property
right
recognized
and
protected
by
different
meanings,
may
constitute
a
special
the
Law
of
January
10,
1879,
on
Intellectual
Property,
work.
On
this
point,
the
correctional
court
of
would
be
illusory
if,
by
reason
of
the
fact
that
said
law
is
the
Seine
held,
on
August
16,
1864,
that
a
no
longer
in
force
as
a
consequence
of
the
change
of
dictionary
constitutes
property,
although
some
sovereignty
in
these
Islands,
the
author
of
a
work,
who
of
the
words
therein
are
explained
by
mere
has
the
exclusive
right
to
reproduce
it,
could
not
prevent
definitions
expressed
in
a
few
lines
and
another
person
from
so
doing
without
his
consent,
and
sanctioned
by
usage,
provided
that
the
greater
could
not
enforce
this
right
through
the
courts
of
justice
part
of
the
other
words
contain
new
meanings;
in
order
to
prosecute
the
violator
of
this
legal
provision
new
meanings
which
evidently
may
only
and
the
defrauder
or
usurper
of
his
right,
for
he
could
belonged
to
the
first
person
who
published
not
obtain
the
full
enjoyment
of
the
book
or
other
work,
them.
and
his
property
right
thereto,
which
is
recognized
by
law,
would
be
reduced,
as
Manresa
says,
to
an
In
addition
to
what
has
been
said,
according
to
article
insignificant
thing,
if
he
should
have
no
more
right
than
428
of
the
Civil
Code,
the
author
of
a
literary,
scientific,
that
of
selling
his
work.
or
artistic
work,
has
the
right
to
exploit
it
and
dispose
thereof
at
will.
In
relation
to
this
right,
there
exists
the
HABANA,
CINCO
AND
FERNANDO
V.
ROBLES
AND
exclusive
right
of
the
author,
who
is
the
absolute
owner
GOODWILL
TRADING
CO.,
INC.
(1999)
of
his
own
work,
to
produce
it,
according
to
article
2
of
the
Law
of
January
10,
1879,
and
consequently,
nobody
Refresher:
Petitioners
are
authors
and
copyright
owners
of
duly
may
reproduce
it,
without
his
permission,
not
even
to
issued
certificates
of
copyright
registration
covering
annotate
or
add
something
to
it,
or
to
improve
any
their
published
works,
produced
through
their
combined
edition
thereof,
according
to
article
7
of
said
law.
resources
and
efforts,
entitled
COLLEGE
ENGLISH
FOR
Manresa,
in
his
commentaries
on
article
429
of
the
Civil
Code
(vol.
3,
p.
633,
3d
ed.)
says
that
the
concrete
TODAY
(CET
for
brevity),
Books
1
and
2,
and
WORKBOOK
FOR
COLLEGE
FRESHMAN
ENGLISH,
Series
1.
statement
of
the
right
to
literary
properties
is
found
in
the
legal
doctrine
according
to
which
nobody
may
Respondent
Felicidad
Robles
and
Goodwill
Trading
Co.,
reproduce
another
person's
work,
without
the
consent
of
his
owner,
or
even
to
annotate
or
add
something
to
it
Inc.
are
the
author/publisher
and
distributor/seller
of
another
published
work
entitled
“DEVELOPING
ENGLISH
or
to
improve
any
edition
thereof.
And
on
page
616
of
PROFICIENCY”
(DEP
for
brevity),
Books
1
and
2
(1985
said
volume,
Manresa
says
the
following:
edition)
which
book
was
covered
by
copyrights
issued
to
them.
He
who
writes
a
book,
or
carves
a
statue,
or
makes
an
invention,
has
the
absolute
right
to
In
the
course
of
revising
their
published
works,
reproduce
or
sell
it,
just
as
the
owner
of
land
petitioners
scouted
and
looked
around
various
has
the
absolute
right
to
sell
it
or
its
fruits.
But
bookstores
to
check
on
other
textbooks
dealing
with
the
while
the
owner
of
land,
by
selling
it
and
its
fruits,
perhaps
fully
realizes
all
its
economic
same
subject
matter.
By
chance
they
came
upon
the
book
of
respondent
Robles
and
upon
perusal
of
said
value,
by
receiving
its
benefits
and
utilities,
book
they
were
surprised
to
see
that
the
book
was
which
are
presented,
for
example,
by
the
price,
strikingly
similar
to
the
contents,
scheme
of
presentation,
on
the
other
hand
the
author
of
a
book,
statue
illustrations
and
illustrative
examples
in
their
own
book,
or
invention,
does
not
reap
all
the
benefits
and
CET.
advantages
of
his
own
property
by
disposing
of
it,
for
the
most
important
form
of
realizing
the
After
an
itemized
examination
and
comparison
of
the
economic
advantages
of
a
book,
statue
or
two
books
(CET
and
DEP),
petitioners
found
that
several
invention,
consists
in
the
right
to
reproduce
it
in
similar
or
like
copies,
everyone
of
which
pages
of
the
respondent’s
book
are
similar,
if
not
all
together
a
copy
of
petitioners’
book,
which
is
a
case
of
serves
to
give
to
the
person
reproducing
them
plagiarism
and
copyright
infringement.
all
the
conditions
which
the
original
requires
in
order
to
give
the
author
the
full
enjoyment
48 z
Intellectual Property Law
Respondent
Robles
denied
the
allegations
of
plagiarism
may
be
true.
However,
in
this
jurisdiction
under
Sec
184
and
copying
that
petitioners
claimed.
Respondent
of
Republic
Act
8293
it
is
provided
that:
stressed
that
(1)
the
book
DEP
is
the
product
of
her
independent
researches,
studies
and
experiences,
and
Limitations
on
Copyright.
Notwithstanding
the
was
not
a
copy
of
any
existing
valid
copyrighted
book;
provisions
of
Chapter
V,
the
following
shall
not
(2)
DEP
followed
the
scope
and
sequence
or
syllabus
constitute
infringement
of
copyright:
which
are
common
to
all
English
grammar
writers
as
recommended
by
the
Association
of
Philippine
Colleges
x
x
x
x
of
Arts
and
Sciences
(APCAS),
so
any
similarity
between
the
respondents
book
and
that
of
the
petitioners
was
(c)
The
making
of
quotations
from
a
published
due
to
the
orientation
of
the
authors
to
both
works
and
work
if
they
are
compatible
with
fair
use
and
standards
and
syllabus;
and
(3)
the
similarities
may
be
only
to
the
extent
justified
for
the
purpose,
due
to
the
authors’
exercise
of
the
“right
to
fair
use
of
including
quotations
from
newspaper
articles
copyrighted
materials,
as
guides.”
and
periodicals
in
the
form
of
press
summaries:
Provided,
That
the
source
and
the
name
of
the
Doctrine:
author,
if
appearing
on
the
work,
are
We
believe
that
respondent
Robles’
act
of
lifting
from
mentioned.
the
book
of
petitioners
substantial
portions
of
discussions
and
examples,
and
her
failure
to
A
copy
of
a
piracy
is
an
infringement
of
the
original,
and
acknowledge
the
same
in
her
book
is
an
infringement
of
it
is
no
defense
that
the
pirate,
in
such
cases,
did
not
petitioners’
copyrights.
know
whether
or
not
he
was
infringing
any
copyright;
he
at
least
knew
that
what
he
was
copying
was
not
his,
and
When
is
there
a
substantial
reproduction
of
a
book?
It
he
copied
at
his
peril.
does
not
necessarily
require
that
the
entire
copyrighted
work,
or
even
a
large
portion
of
it,
be
copied.
If
so
much
The
next
question
to
resolve
is
to
what
extent
can
is
taken
that
the
value
of
the
original
work
is
copying
be
injurious
to
the
author
of
the
book
being
substantially
diminished,
there
is
an
infringement
of
copied.
Is
it
enough
that
there
are
similarities
in
some
copyright
and
to
an
injurious
extent,
the
work
is
sections
of
the
books
or
large
segments
of
the
books
are
appropriated.
the
same?
In
determining
the
question
of
infringement,
the
amount
In
cases
of
infringement,
copying
alone
is
not
what
is
of
matter
copied
from
the
copyrighted
work
is
an
prohibited.
The
copying
must
produce
an
“injurious
important
consideration.
To
constitute
infringement,
it
effect”.
Here,
the
injury
consists
in
that
respondent
is
not
necessary
that
the
whole
or
even
a
large
portion
Robles
lifted
from
petitioners’
book
materials
that
were
of
the
work
shall
have
been
copied.
If
so
much
is
taken
the
result
of
the
latter’s
research
work
and
compilation
that
the
value
of
the
original
is
sensibly
diminished,
or
and
misrepresented
them
as
her
own.
She
circulated
the
the
labors
of
the
original
author
are
substantially
and
to
book
DEP
for
commercial
use
and
did
not
acknowledge
an
injurious
extent
appropriated
by
another,
that
is
petitioners
as
her
source.
sufficient
in
point
of
law
to
constitute
piracy.
Hence,
there
is
a
clear
case
of
appropriation
of
The
essence
of
intellectual
piracy
should
be
essayed
in
copyrighted
work
for
her
benefit
that
respondent
Robles
conceptual
terms
in
order
to
underscore
its
gravity
by
an
committed.
Petitioners’
work
as
authors
is
the
product
appropriate
understanding
thereof.
Infringement
of
a
of
their
long
and
assiduous
research
and
for
another
to
copyright
is
a
trespass
on
a
private
domain
owned
and
represent
it
as
her
own
is
injury
enough.
In
copyrighting
occupied
by
the
owner
of
the
copyright,
and,
therefore,
books
the
purpose
is
to
give
protection
to
the
protected
by
law,
and
infringement
of
copyright,
or
intellectual
product
of
an
author.
This
is
precisely
what
piracy,
which
is
a
synonymous
term
in
this
connection,
the
law
on
copyright
protected,
under
Section
184.1
(b).
consists
in
the
doing
by
any
person,
without
the
consent
Quotations
from
a
published
work
if
they
are
compatible
of
the
owner
of
the
copyright,
of
anything
the
sole
right
with
fair
use
and
only
to
the
extent
justified
by
the
to
do
which
is
conferred
by
statute
on
the
owner
of
the
purpose,
including
quotations
from
newspaper
articles
copyright.
and
periodicals
in
the
form
of
press
summaries
are
allowed
provided
that
the
source
and
the
name
of
the
The
respondents’
claim
that
the
copied
portions
of
the
author,
if
appearing
on
the
work,
are
mentioned.
book
CET
are
also
found
in
foreign
books
and
other
grammar
books,
and
that
the
similarity
between
her
In
the
case
at
bar,
the
least
that
respondent
Robles
style
and
that
of
petitioners
can
not
be
avoided
since
could
have
done
was
to
acknowledge
petitioners
they
come
from
the
same
background
and
orientation
Habana
et.
al.
as
the
source
of
the
portions
of
DEP.
The
final
product
of
an
author’s
toil
is
her
book.
To
allow
o 49
Katrina Michelle Mancao
another
to
copy
the
book
without
appropriate
the
terms
thereof.
In
his
reply
dated
February
17,
1986,
acknowledgment
is
injury
enough.
Vergara
protested
the
unilateral
action
of
SMI,
saying
it
was
without
basis.
In
the
same
letter,
he
pushed
for
the
JOAQUIN
AND
BJ
PRODUCTIONS,
INC.
V.
DRILON,
ET
AL.
signing
of
the
contract
for
SM
Cubao.
(1999),
SUPRA
Two
years
later,
Metro
Industrial
Services,
the
company
Refresher:
formerly
contracted
by
Pearl
and
Dean
to
fabricate
its
Rhoda
and
Me
and
It’s
a
Date
dating
game
show.
display
units,
offered
to
construct
light
boxes
for
Shoemart’s
chain
of
stores.
SMI
approved
the
proposal
Doctrine:
and
ten
(10)
light
boxes
were
subsequently
fabricated
by
P.D.
No.
49,
2,
in
enumerating
what
are
subject
to
Metro
Industrial
for
SMI.
After
its
contract
with
Metro
copyright,
refers
to
finished
works
and
not
to
concepts.
Industrial
was
terminated,
SMI
engaged
the
services
of
The
copyright
does
not
extend
to
an
idea,
procedure,
EYD
Rainbow
Advertising
Corporation
to
make
the
light
process,
system,
method
of
operation,
concept,
principle,
boxes.
Some
300
units
were
fabricated
in
1991.
These
or
discovery,
regardless
of
the
form
in
which
it
is
were
delivered
on
a
staggered
basis
and
installed
at
SM
described,
explained,
illustrated,
or
embodied
in
such
Megamall
and
SM
City.
work.
Sometime
in
1989,
Pearl
and
Dean,
received
reports
that
PEARL
&
DEAN
(PHIL),
INC.
V.
SHOEMART,
INC.
AND
NORTH
exact
copies
of
its
light
boxes
were
installed
at
SM
City
EDSA
MARKETING,
INC.
(2003)
and
in
the
fastfood
section
of
SM
Cubao.
Upon
Refresher:
investigation,
Pearl
and
Dean
found
out
that
aside
from
Plaintiff-‐appellant
Pearl
and
Dean
(Phil.),
Inc.
is
a
the
two
(2)
reported
SM
branches,
light
boxes
similar
to
corporation
engaged
in
the
manufacture
of
advertising
those
it
manufactures
were
also
installed
in
two
(2)
display
units
simply
referred
to
as
light
boxes.
These
other
SM
stores.
It
further
discovered
that
defendant-‐
units
utilize
specially
printed
posters
sandwiched
appellant
North
Edsa
Marketing
Inc.
(NEMI),
through
its
between
plastic
sheets
and
illuminated
with
back
lights.
marketing
arm,
Prime
Spots
Marketing
Services,
was
set
Pearl
and
Dean
was
able
to
secure
a
Certificate
of
up
primarily
to
sell
advertising
space
in
lighted
display
Copyright
Registration
dated
January
20,
1981
over
these
units
located
in
SMI’s
different
branches.
Pearl
and
Dean
illuminated
display
units.
The
advertising
light
boxes
noted
that
NEMI
is
a
sister
company
of
SMI.
were
marketed
under
the
trademark
“Poster
Ads”.
The
application
for
registration
of
the
trademark
was
filed
Doctrine:
with
the
Bureau
of
Patents,
Trademarks
and
Technology
On
copyright
infringement:
Transfer
on
June
20,
1983,
but
was
approved
only
on
Petitioner’s
application
for
a
copyright
certificate
clearly
September
12,
1988,
per
Registration
No.
41165.
From
stated
that
it
was
for
a
class
“O”
work
under
Section
1981
to
about
1988,
Pearl
and
Dean
employed
the
2(O)
of
PD
49
(The
Intellectual
Property
Decree)
which
services
of
Metro
Industrial
Services
to
manufacture
its
was
the
statute
then
prevailing.
Said
Section
2
expressly
advertising
displays.
enumerated
the
works
subject
to
copyright:
Sometime
in
1985,
Pearl
and
Dean
negotiated
with
(O)
Prints,
pictorial
illustrations,
advertising
defendant-‐appellant
Shoemart,
Inc.
(SMI)
for
the
lease
copies,
labels,
tags,
and
box
wraps;
and
installation
of
the
light
boxes
in
SM
City
North
Edsa.
Since
SM
City
North
Edsa
was
under
construction
at
that
Although
petitioner’s
copyright
certificate
was
entitled
time,
SMI
offered
as
an
alternative,
SM
Makati
and
SM
“Advertising
Display
Units”
(which
depicted
the
box-‐
Cubao,
to
which
Pearl
and
Dean
agreed.
On
September
type
electrical
devices),
its
claim
of
copyright
11,
1985,
Pearl
and
Dean’s
General
Manager,
Rodolfo
infringement
cannot
be
sustained.
Vergara,
submitted
for
signature
the
contracts
covering
SM
Cubao
and
SM
Makati
to
SMI’s
Advertising
Copyright,
in
the
strict
sense
of
the
term,
is
purely
a
Promotions
and
Publicity
Division
Manager,
Ramonlito
statutory
right.
Being
a
mere
statutory
grant,
the
rights
Abano.
Only
the
contract
for
SM
Makati,
however,
was
are
limited
to
what
the
statute
confers.
It
may
be
returned
signed.
On
October
4,
1985,
Vergara
wrote
obtained
and
enjoyed
only
with
respect
to
the
subjects
Abano
inquiring
about
the
other
contract
and
reminding
and
by
the
persons,
and
on
terms
and
conditions
him
that
their
agreement
for
installation
of
light
boxes
specified
in
the
statute.
Accordingly,
it
can
cover
only
the
was
not
only
for
its
SM
Makati
branch,
but
also
for
SM
works
falling
within
the
statutory
enumeration
or
Cubao.
SMI
did
not
bother
to
reply.
description.
Instead,
in
a
letter
dated
January
14,
1986,
SMI’s
house
P
&
D
secured
its
copyright
under
the
classification
class
counsel
informed
Pearl
and
Dean
that
it
was
rescinding
“O”
work.
This
being
so,
petitioner’s
copyright
the
contract
for
SM
Makati
due
to
non-‐performance
of
protection
extended
only
to
the
technical
drawings
and
50 z
Intellectual Property Law
not
to
the
light
box
itself
because
the
latter
was
not
at
all
Issue:
Validity
of
the
rule?
in
the
category
of
“prints,
pictorial
illustrations,
-‐ Q:
If
you
were
a
commercial
court
judge
advertising
copies,
labels,
tags
and
box
wraps.”
Stated
hearing
a
criminal
case
(1st
offense)
and
a
otherwise,
even
as
we
find
that
P
&
D
indeed
owned
a
motion
to
quash
was
filed
by,
how
would
you
valid
copyright,
the
same
could
have
referred
only
to
the
uphold
your
jurisdiction?
technical
drawings
within
the
category
of
“pictorial
o Note:
BP
129,
jurisdiction
for
the
1st
illustrations.”
It
could
not
have
possibly
stretched
out
to
offense
is
lodged
in
the
MTC
include
the
underlying
light
box.
The
strict
application
of
the
law’s
enumeration
in
Section
2
prevents
us
from
HW
Answer
(Marie
Estrella)
giving
petitioner
even
a
little
leeway,
that
is,
even
if
its
Jurisdiction
over
the
subject
matter
of
a
case
is
copyright
certificate
was
entitled
“Advertising
Display
conferred
by
law
and
is
determined
by
the
Units.”
What
the
law
does
not
include,
it
excludes,
and
allegations
of
the
complaint,
irrespective
of
for
the
good
reason:
the
light
box
was
not
a
literary
or
whether
the
plaintiff
is
entitled
to
all
or
some
artistic
piece
which
could
be
copyrighted
under
the
of
the
claims
asserted
therein.
(Intestate
Estate
copyright
law.
And
no
less
clearly,
neither
could
the
lack
of
Alexander
Ty
v.
Court
of
Appeals,
356
SCRA
of
statutory
authority
to
make
the
light
box
661)
What
determines
the
jurisdiction
of
the
copyrightable
be
remedied
by
the
simplistic
act
of
court
in
criminal
cases
is
the
extent
of
the
entitling
the
copyright
certificate
issued
by
the
National
penalty
which
the
law
imposes
for
the
Library
as
“Advertising
Display
Units.”
misdemeanor,
crime
or
violation
charged
in
the
complaint.
(People
vs.
Fajardo,
49
Phil.,
206,
On
unfair
competition:
210)
By
the
nature
of
things,
there
can
be
no
unfair
competition
under
the
law
on
copyrights
although
it
is
With
the
penal
provisions
of
the
Intellectual
applicable
to
disputes
over
the
use
of
trademarks.
Even
Property
Code,
we
are
baffled
with
issue,
a
name
or
phrase
incapable
of
appropriation
as
a
“ Which
court
has
jurisdiction.”
The
provision
trademark
or
tradename
may,
by
long
and
exclusive
use
of
the
Code
on
jurisdiction
is
not
any
much
help
by
a
business
(such
that
the
name
or
phrase
becomes
either.
It
simply
provides
that
without
prejudice
associated
with
the
business
or
product
in
the
mind
of
to
the
provisions
of
Subsection
7.1(c),
actions
the
purchasing
public),
be
entitled
to
protection
against
under
this
Act
shall
be
cognizable
by
the
courts
unfair
competition.
In
this
case,
there
was
no
evidence
with
appropriate
jurisdiction
under
existing
that
P
&
D’s
use
of
“Poster
Ads”
was
distinctive
or
well-‐ law.
The
existing
law
conferring
jurisdiction
to
known.
As
noted
by
the
Court
of
Appeals,
petitioner’s
our
courts
is
Batas
Pambansa
Blg.
129
(BP
129),
expert
witnesses
himself
had
testified
that
“
‘Poster
Ads’
or
the
Judiciary
Reorganization
Act
of
1980.
was
too
generic
a
name.
So
it
was
difficult
to
identify
it
Under
Section
32
of
BP
129,
Municipal
Trial
with
any
company,
honestly
speaking.”
This
crucial
Courts
(MTC)
shall
have
exclusive
original
admission
by
its
own
expert
witness
that
“Poster
Ads”
jurisdiction
over
all
offenses
punishable
with
could
not
be
associated
with
P
&
D
showed
that,
in
the
imprisonment
not
exceeding
six
(6)
years
mind
of
the
public,
the
goods
and
services
carrying
the
irrespective
of
the
amount
of
fine,
and
trademark
“Poster
Ads”
could
not
be
distinguished
from
regardless
of
all
other
impossible
of
accessory
the
goods
and
services
of
other
entities.
penalties.
Taking
only
this
into
consideration,
we
are
led
to
conclude
that
with
the
first
and
12
January
2012
second
offenses,
the
MTC
has
jurisdiction.
However,
we
also
know
that
all
IP
cases
are
Infringement
heard
by
the
Regional
Trial
Court
(RTC)
acting
-‐ Violation
of
the
rights
exclusively
granted
by
as
Special
Commercial
Court.
(A.M.
N0.
03-‐03-‐
law
to
the
copyright
owner.
03-‐SC,
JULY
01,
2003)
-‐ Exception:
o Fair
use
To
reconcile
the
seeming
conflict,
I
think
it
is
o Limitations
to
copyright
also
useful
to
refer
to
Section
23
of
BP
129
which
enables
the
Supreme
Court
to
designate
Remedies:
certain
branches
of
the
Regional
Trial
Courts
to
1. Civil
handle
exclusively
criminal
cases,
juvenile
and
2. Criminal
domestic
cases,
agrarian
cases,
urban
land
3. Administrative
reform
cases
which
do
not
fall
under
the
jurisdiction
of
quasi-‐judicial
bodies
and
NOTE:
SC
issued
a
circular
à
IP
case
shall
be
filed
in
agencies
and/or
such
other
special
cases
as
the
courts
designated
as
commercial
courts
Supreme
Court
may
determine
in
the
interest
of
a
speedy
and
efficient
administration
of
o 51
Katrina Michelle Mancao
justice.
With
this
provision,
the
Supreme
Court,
nationwide
to
streamline
and
promote
expediency
and
efficiency,
designated
the
Regional
Trial
Courts,
Criminal
penalties
as
Special
Commercial
Courts
to
exclusively
-‐ No
accessories/
accomplices
hear
IP
cases.
o It
is
a
special
law
-‐ Infringer
and
those
who
aids
and
abets
=
same
I
think,
in
the
construction
of
laws
such
as
the
penalty
one
before
us,
we
are
enjoined
to
read
and
-‐ Note:
the
law
does
not
have
a
definition
of
construe
them
together
and
try
to
reconcile
“aiding
or
abetting”
=
quite
broad
them.
In
this
case,
I
think
we
can
reconcile
the
IPC
and
BP
129
by
construing
that
IPC
is
a
Issue:
Can
a
consumer
be
liable
for
aiding
or
abetting?
special
law
and,
as
such,
is
an
exception
to
the
general
rule
that
jurisdiction
is
determined
by
HW
Answer
(Katrina
Mancao):
the
extent
of
the
penalty
the
law
imposes.
We
The
buyer
of
products
that
infringe
on
the
can
also
use
the
interpretation
that
the
general
copyright
of
another
may
not
be
held
liable
for
law
yields
to
the
special
law.
aiding
and
abetting.
Lastly,
taking
into
consideration
the
purpose
of
Section
217.1
of
the
Intellectual
Property
Code
BP
129,
which
I
think
is
to
ultimately
promote
makes
any
person
aiding
or
abetting
an
justice,
expediency
and
efficiency,
the
infringement
criminally
liable.
The
law,
designation
of
the
RTC
as
Special
Commercial
however,
does
not
define
what
actions
may
be
Courts
works
to
towards
this
end.
considered
as
aiding
or
abetting.
Unlike
the
other
acts
of
infringement,
this
provision
is
Civil
Remedies:
vague,
and
thus
calls
for
an
application
of
the
1. Injunction
–
this
is
a
critical
provisional
remedy
rule
on
statutory
construction.
On
this
issue,
I
so
that
the
infringing
activity
stops
propose
that
the
provision
be
construed
2. Damages
–
plaintiff
is
only
required
to
prove
liberally
in
favor
of
the
buyers.
gross
sales
o If
gross
sales
was
not
proved
–
court
The
act
of
aiding
and
abetting
an
infringement
is
given
leeway
imposes
a
criminal
liability
upon
the
person
3. Impounding
charged
with
the
offense.
The
first
offense
4. Destruction
alone
merits
an
imprisonment
of
1
year
to
3
5. Other
damages
years,
plus
a
fine
ranging
from
P50,000.00
to
P150,000.00.
I
believe
that
the
gravity
the
law
Criminal
remedy:
placed
on
the
offense,
and
the
excessiveness
-‐ Why
is
this
more
effective
than
civil
and
of
the
penalty
and
fines
imposed
on
it
calls
for
administrative
remedies?
the
application
of
the
legal
maxim
nullum
o Because
of
the
notoriety
of
criminal
crimen,
nulla
poena
sine
lege.
There
is
no
crime
cases
à
defendant
has
reputation
when
there
is
no
law
punishing
it.
To
be
concerns;
moreover,
people
value
punishable,
the
act
must
be
clearly
defined
by
liberty
the
legislature
as
a
criminal
act.
The
Intellectual
Property
Code
does
not
explicitly
define
aiding
How
do
you
best
initiate
case
against
infringers?
or
abetting.
Neither
does
it
punish
mere
buying
-‐ By
obtaining
a
search
warrant.
or
possession
of
an
infringing
material.
The
o Timeliness
absence
of
any
intention
by
the
legislature
to
o Ex
parte
(no
notice)
punish
the
buyers
of
an
infringing
material
o No
premature
disclosure
of
the
fact
makes
it
not
punishable
under
our
jurisdiction.
-‐ Search
and
seizure
in
civil
actions
o Ma’am:
Dangerous
to
constitutional
Moreover,
punishing
the
act
violates
Article
III,
rights.
It
is
very
much
similar
to
a
Section
14,
paragraph
1
of
the
1987
Constitution
criminal
search
warrant.
which
states,
“No
person
shall
be
held
to
§ Differences:
answer
for
a
criminal
offense
without
due
• Bond
requirement
process
of
law.”
The
constitutional
right
to
due
• Independent
process
requires
that
the
law
accord
people
commissioner
fair
notice
of
which
conduct
to
avoid.
o Where
do
you
apply?
Otherwise,
the
law
may
be
said
to
undermine
§ Metro
Manila
due
process
in
two
respects:
(1)
in
failing
to
§ Writs
are
imposable
accord
persons
fair
notice
of
the
conduct
to
52 z
Intellectual Property Law
avoid,
and
(2)
in
giving
law
enforcers
unbridled
imprisonment
in
cases
of
discretion
in
implementing
the
provisions
of
insolvency.
the
law.
The
provision
on
aiding
and
abetting
does
just
that.
In
failing
to
define
or
describe
217.2.
In
determining
the
number
of
acts
that
may
be
considered
as
falling
within
years
of
imprisonment
and
the
the
provision,
it
does
not
reasonably
notify
the
amount
of
fine,
the
court
shall
public
that
mere
buying
of
infringing
material
is
consider
the
value
of
the
infringing
criminally
punishable.
It
does
not,
therefore,
materials
that
the
defendant
has
afford
them
with
the
opportunity
to
stop
doing
produced
or
manufactured
and
the
the
act
to
avoid
criminal
liability.
damage
that
the
copyright
owner
has
suffered
by
reason
of
the
HW
Answer
(Marie
Estrella):
infringement.
It
is
an
elementary
rule
of
statutory
construction
that
penal
laws
are
strictly
217.3.
Any
person
who
at
the
time
construed
against
the
State
and
liberally
in
when
copyright
subsists
in
a
work
has
favor
of
the
accused.
(People
vs
Subido,
66
in
his
possession
an
article
which
he
SCRA
545)
Penal
statutes
cannot
be
enlarged
knows,
or
ought
to
know,
to
be
an
or
extended
by
intendment,
implication,
or
any
infringing
copy
of
the
work
for
the
equitable
consideration.
(People
vs
Garcia,
85
purpose
of:
Phil.
651)
(a)
Selling,
letting
for
hire,
Section
217
of
the
Intellectual
property
Code
or
by
way
of
trade,
offering
(IPC)
of
the
Philippines
provides:
or
exposing
for
sale,
or
hire,
the
article;
Art.
217-‐217.1.
Any
person
infringing
any
right
secured
by
provisions
of
(b)
Distributing
the
article
Part
IV
of
this
Act
or
aiding
or
for
purpose
of
trade
or
for
abetting
such
infringement
shall
be
any
other
purpose
to
an
guilty
of
a
crime
punishable
by:
extent
that
will
prejudice
the
rights
of
the
copyright
(a)
Imprisonment
of
one
(1)
owner
in
the
work;
or
year
to
three
(3)
years
plus
a
fine
ranging
from
fifty
(c)
Trade
exhibit
of
the
thousand
pesos
(P50,000)
article
in
public,
shall
be
to
one
hundred
and
fifty
guilty
of
an
offense
and
thousand
pesos
(P150,000)
shall
be
liable
on
conviction
for
the
first
offense.
to
imprisonment
and
fine
as
above
mentioned.
(b)
Imprisonment
of
three
(3)
years
and
one
(1)
day
to
Certainly,
Section
217
punishes
acts
that
six
(6)
years
plus
a
fine
infringe
or
aids
or
abets
the
infringement
of
ranging
from
one
hundred
copyright
as
provided
in
the
chapter
on
and
fifty
thousand
pesos
copyright.
There
is
no
dispute
as
to
the
(P150,000)
to
five
hundred
definition
of
infringement,
that
is,
to
directly
thousand
pesos
(P500,000)
violate
the
rights
of
the
copyright
owner
as
for
the
second
offense.
provided
in
the
law.
Anyone
violating
any
of
the
rights
provided
in
Section
177,
and
other
(c)
Imprisonment
of
six
(6)
sections,
of
the
IPC
is
liable
for
years
and
one
(1)
day
to
nine
infringement.
There
is
no
question
as
to
the
(9)
years
plus
a
fine
ranging
culpability
of
direct
infringers.
However,
there
from
five
hundred
thousand
is
a
quandary
as
to
what
constitutes
“ aiding
pesos
(P500,000)
to
one
and
abetting” .
million
five
hundred
thousand
pesos
There
seems
no
established
legal
definition
of
(P1,500,000)
for
the
third
aiding
and
abetting.
The
phrase,
commonly
and
subsequent
offenses.
used
in
criminal
prosecution,
connotes
the
commission
of
a
crime
without
direct
(d)
In
all
cases,
subsidiary
involvement.
The
phrase
was
first
used
during
o 53
Katrina Michelle Mancao
the
Nuremberg
trial
in
pinning
liability
on
the
cannot
interpret
the
law
to
include
officers
and
directors
of
a
company
that
acts
which
it
does
not
penalize.
manufactured
the
gas
used
by
the
Nazis
in
the
5 Copyright
ALLOWS
parallel
creation.
Standard
annihilation
of
the
Jews .
In
aiding
and
abetting,
a
person
does
not
actually
and
only
is
originality.
To
prove
infringement,
you
directly
performs
the
acts
constitutive
of
the
must
prove
ACCESS
+
COPYING.
crime
but
however
is
instrumental
in
its
commission
because
without
him,
the
crime
C. Related
Rights
would
not
have
been
possible.
1. Moral
Rights
In
the
field
of
Intellectual
Property,
we
learn
of
the
concept
“ contributory
infringement” .
In
the
case
of
Sony
Corp.
vs
Universal
City
ARTICLE
6BIS.
Studios,
contributory
infringement
was
used
in
Moral
Rights:
referring
to
the
act
of
selling
a
machine
which
1.
To
claim
authorship;
to
object
to
certain
for
the
absolute
purpose
of
committing
modifications
and
other
derogatory
actions;
infringing
acts.
In
this
sense,
contributory
2.
After
the
author's
death;
infringement
reflects
the
same
premise
in
3.
Means
of
redress
aiding
and
abetting.
The
person
who
sells
the
machine,
although
he
does
not
do
the
actual
(1)
Independently
of
the
author's
economic
rights,
and
reproduction
of
copyrighted
materials,
is
guilty
even
after
the
transfer
of
the
said
rights,
the
author
shall
of
contributory
infringement.
have
the
right
to
claim
authorship
of
the
work
and
to
object
to
any
distortion,
mutilation
or
other
modification
Aiding
and
abetting
presupposes
that
the
of,
or
other
derogatory
action
in
relation
to,
the
said
person
charged
has
actual
or
constructive
work,
which
would
be
prejudicial
to
his
honor
or
knowledge
that
his
or
her
actions
are
likely
to
reputation.
facilitate
infringement
by
another,
and
that
he
6 (2)
The
rights
granted
to
the
author
in
accordance
with
materially
contributes
to
the
infringement .
the
preceding
paragraph
shall,
after
his
death,
be
maintained,
at
least
until
the
expiry
of
the
economic
In
all
the
above
definitions
of
aiding
and
rights,
and
shall
be
exercisable
by
the
persons
or
abetting,
and
contributory
negligence,
there
is
institutions
authorized
by
the
legislation
of
the
country
a
positive
act,
although
not
directly
infringing,
where
protection
is
claimed.
However,
those
countries
that
contributes
to
the
ultimate
act
of
whose
legislation,
at
the
moment
of
their
ratification
of
infringement.
This
positive
act
makes
the
or
accession
to
this
Act,
does
not
provide
for
the
infringement
possible.
Conversely,
without
the
protection
after
the
death
of
the
author
of
all
the
rights
positive
act
of
the
contributory
infringer,
the
set
out
in
the
preceding
paragraph
may
provide
that
infringement
would
not
have
been
some
of
these
rights
may,
after
his
death,
cease
to
be
committed.
This
is
not
the
case
with
the
maintained.
purchasers
of
pirated
DVDs.
The
act
of
the
purchasers
in
buying
the
DVDs
is
not
(3)
The
means
of
redress
for
safeguarding
the
rights
necessary.
The
infringement
would
be
granted
by
this
Article
shall
be
governed
by
the
committed
even
without
them
and
their
legislation
of
the
country
where
protection
is
claimed.
patronage.
Having
said
this,
the
purchasers
of
pirated
DVDs
or
other
copyrighted
materials
cannot
be
held
criminally
liable.
The
IPC
SECTION
193.
SCOPE
OF
MORAL
RIGHTS.
–
provisions
are
clear.
It
criminalizes
The
author
of
a
work
shall,
independently
of
the
infringement
and
the
acts
of
aiding
and
economic
rights
in
Section
177
or
the
grant
of
an
abetting
its
commission.
It
does
not
penalize
assignment
or
license
with
respect
to
such
right,
have
the
purchase
of
infringing
materials.
We
the
right:
193.1.
To
require
that
the
authorship
of
the
5
Prof.
Harry
Roque.
“Ampatuan
Victims
vs
Arroyo,”
blog
entry
from
http://harryroque.com/tag/aiding-‐and-‐abetting/,
last
works
be
attributed
to
him,
in
particular,
the
accessed
January
20,
2012.
right
that
his
name,
as
far
as
practicable,
be
6
indicated
in
a
prominent
way
on
the
copies,
Mark
Bartholomew.
“Contributory
Infringers
and
Good
and
in
connection
with
the
public
use
of
his
Samaritans,”
electronic
copy
from
work;
http://ssrn.com/abstract=1276286,
last
accessed
January
20,
2012.
54 z
Intellectual Property Law
193.2.
To
make
any
alterations
of
his
work
prior
SECTION
198.
TERM
OF
MORAL
RIGHTS.
–
to,
or
to
withhold
it
from
publication;
198.1.
The
rights
of
an
author
under
this
chapter
shall
last
during
the
lifetime
of
the
author
and
for
fifty
(50)
years
193.3.
To
object
to
any
distortion,
mutilation
or
after
his
death
and
shall
not
be
assignable
or
subject
to
other
modification
of,
or
other
derogatory
license.
The
person
or
persons
to
be
charged
with
the
action
in
relation
to,
his
work
which
would
be
posthumous
enforcement
of
these
rights
shall
be
named
prejudicial
to
his
honor
or
reputation;
and
in
writing
to
be
filed
with
the
National
Library.
In
default
of
such
person
or
persons,
such
enforcement
shall
193.4.
To
restrain
the
use
of
his
name
with
devolve
upon
either
the
author's
heirs,
and
in
default
of
respect
to
any
work
not
of
his
own
creation
or
the
heirs,
the
Director
of
the
National
Library.
in
a
distorted
version
of
his
work.
198.2.
For
purposes
of
this
Section,
"Person"
shall
mean
SECTION
194.
BREACH
OF
CONTRACT.
–
any
individual,
partnership,
corporation,
association,
or
An
author
cannot
be
compelled
to
perform
his
contract
society.
The
Director
of
the
National
Library
may
to
create
a
work
or
for
the
publication
of
his
work
prescribe
reasonable
fees
to
be
charged
for
his
services
already
in
existence.
However,
he
may
be
held
liable
for
in
the
application
of
provisions
of
this
Section.
damages
for
breach
of
such
contract.
SECTION
199.
ENFORCEMENT
REMEDIES.
–
SECTION
195.
WAIVER
OF
MORAL
RIGHTS.
–
Violation
of
any
of
the
rights
conferred
by
this
Chapter
An
author
may
waive
his
rights
mentioned
in
Section
193
shall
entitle
those
charged
with
their
enforcement
to
the
by
a
written
instrument,
but
no
such
waiver
shall
be
valid
same
rights
and
remedies
available
to
a
copyright
owner.
where
its
effects
is
to
permit
another:
In
addition,
damages
which
may
be
availed
of
under
the
Civil
Code
may
also
be
recovered.
Any
damage
recovered
195.1.
To
use
the
name
of
the
author,
or
the
after
the
creator's
death
shall
be
held
in
trust
for
and
title
of
his
work,
or
otherwise
to
make
use
of
remitted
to
his
heirs,
and
in
default
of
the
heirs,
shall
his
reputation
with
respect
to
any
version
or
belong
to
the
government.
adaptation
of
his
work
which,
because
of
alterations
therein,
would
substantially
tend
to
2. Right
to
Proceeds
in
injure
the
literary
or
artistic
reputation
of
Subsequent
Transfers
another
author;
or
(Droit
De
Suite
or
Follow
195.2.
To
use
the
name
of
the
author
with
Up
Rights)
respect
to
a
work
he
did
not
create.
SECTION
200.
SALE
OR
LEASE
OF
W ORK.
–
SECTION
196.
CONTRIBUTION
TO
COLLECTIVE
WORK.
–
In
every
sale
or
lease
of
an
original
work
of
painting
or
When
an
author
contributes
to
a
collective
work,
his
sculpture
or
of
the
original
manuscript
of
a
writer
or
right
to
have
his
contribution
attributed
to
him
is
composer,
subsequent
to
the
first
disposition
thereof
by
deemed
waived
unless
he
expressly
reserves
it.
the
author,
the
author
or
his
heirs
shall
have
an
inalienable
right
to
participate
in
the
gross
proceeds
of
the
sale
or
lease
to
the
extent
of
five
percent
(5%).
This
SECTION
197.
EDITING,
ARRANGING
AND
ADAPTATION
OF
right
shall
exist
during
the
lifetime
of
the
author
and
for
WORK.
–
fifty
(50)
years
after
his
death.
In
the
absence
of
a
contrary
stipulation
at
the
time
an
author
licenses
or
permits
another
to
use
his
work,
the
SECTION
201.
WORKS
NOT
COVERED.
–
necessary
editing,
arranging
or
adaptation
of
such
work,
The
provisions
of
this
Chapter
shall
not
apply
to
prints,
for
publication,
broadcast,
use
in
a
motion
picture,
etchings,
engravings,
works
of
applied
art,
or
works
of
dramatization,
or
mechanical
or
electrical
reproduction
similar
kind
wherein
the
author
primarily
derives
gain
in
accordance
with
the
reasonable
and
customary
from
the
proceeds
of
reproductions.
standards
or
requirements
of
the
medium
in
which
the
work
is
to
be
used,
shall
not
be
deemed
to
contravene
3. Neighboring
Rights
the
author's
rights
secured
by
this
chapter.
Nor
shall
complete
destruction
of
a
work
unconditionally
transferred
by
the
author
be
deemed
to
violate
such
SECTION
202.
DEFINITIONS.
–
rights.
For
the
purpose
of
this
Act,
the
following
terms
shall
have
the
following
meanings:
o 55
Katrina Michelle Mancao
202.1.
"PERFORMERS"
are
actors,
singers,
musicians,
Sections
203,
208
and
209
shall
not
apply
where
the
acts
dancers,
and
other
persons
who
act,
sing,
declaim,
play
referred
to
in
those
Sections
are
related
to:
in,
interpret,
or
otherwise
perform
literary
and
artistic
work;
212.1.
The
use
by
a
natural
person
exclusively
for
his
own
personal
purposes;
202.2.
"SOUND
RECORDING"
means
the
fixation
of
the
sounds
of
a
performance
or
of
other
sounds,
or
212.2.
Using
short
excerpts
for
reporting
representation
of
sound,
other
than
in
the
form
of
a
current
events;
fixation
incorporated
in
a
cinematographic
or
other
audiovisual
work;
212.3.
Use
solely
for
the
purpose
of
teaching
or
for
scientific
research;
and
202.3.
An
"AUDIOVISUAL
WORK
OR
FIXATION"
is
a
work
that
consists
of
a
series
of
related
images
which
impart
the
212.4.
Fair
use
of
the
broadcast
subject
to
the
impression
of
motion,
with
or
without
accompanying
conditions
under
Section
185.
sounds,
susceptible
of
being
made
visible
and,
where
accompanied
by
sounds,
susceptible
of
being
made
a. Rights
of
Performers
audible;
SECTION
203.
SCOPE
OF
PERFORMERS'
RIGHTS.
–
202.4.
"FIXATION"
means
the
embodiment
of
sounds,
or
of
the
representations
thereof,
from
which
they
can
be
Subject
to
the
provisions
of
Section
212,
performers
shall
enjoy
the
following
exclusive
rights:
perceived,
reproduced
or
communicated
through
a
device;
203.1.
As
regards
their
performances,
the
right
202.5.
"PRODUCER
OF
A
SOUND
RECORDING"
means
the
person,
of
authorizing:
or
the
legal
entity,
who
or
which
takes
the
initiative
and
(a)
The
broadcasting
and
other
communication
has
the
responsibility
for
the
first
fixation
of
the
sounds
to
the
public
of
their
performance;
and
of
a
performance
or
other
sounds,
or
the
representation
of
sounds;
(b)
The
fixation
of
their
unfixed
performance.
202.6.
"PUBLICATION
OF
A
FIXED
PERFORMANCE
OR
A
SOUND
203.2.
The
right
of
authorizing
the
direct
or
RECORDING"
means
the
offering
of
copies
of
the
fixed
indirect
reproduction
of
their
performances
performance
or
the
sound
recording
to
the
public,
with
fixed
in
sound
recordings,
in
any
manner
or
the
consent
of
the
right
holder:
Provided,
That
copies
form;
are
offered
to
the
public
in
reasonable
quality;
203.3.
Subject
to
the
provisions
of
Section
206,
202.7.
"BROADCASTING"
means
the
transmission
by
the
right
of
authorizing
the
first
public
wireless
means
for
the
public
reception
of
sounds
or
of
distribution
of
the
original
and
copies
of
their
images
or
of
representations
thereof;
such
transmission
performance
fixed
in
the
sound
recording
by
satellite
is
also
"broadcasting"
where
the
means
for
through
sale
or
rental
or
other
forms
of
decrypting
are
provided
to
the
public
by
the
transfer
of
ownership;
broadcasting
organization
or
with
its
consent;
203.4.
The
right
of
authorizing
the
commercial
202.8.
"BROADCASTING
ORGANIZATION"
shall
include
a
natural
rental
to
the
public
of
the
original
and
copies
of
person
or
a
juridical
entity
duly
authorized
to
engage
in
their
performances
fixed
in
sound
recordings,
broadcasting;
and
even
after
distribution
of
them
by,
or
pursuant
to
the
authorization
by
the
performer;
and
202.9
"COMMUNICATION
TO
THE
PUBLIC
OF
A
PERFORMANCE
OR
A
SOUND
RECORDING"
means
the
transmission
to
the
public,
203.5.
The
right
of
authorizing
the
making
by
any
medium,
otherwise
than
by
broadcasting,
of
available
to
the
public
of
their
performances
sounds
of
a
performance
or
the
representations
of
fixed
in
sound
recordings,
by
wire
or
wireless
sounds
fixed
in
a
sound
recording.
For
purposes
of
means,
in
such
a
way
that
members
of
the
Section
209,
"communication
to
the
public"
includes
public
may
access
them
from
a
place
and
time
making
the
sounds
or
representations
of
sounds
fixed
in
individually
chosen
by
them.
a
sound
recording
audible
to
the
public.
SECTION
204.
MORAL
RIGHTS
OF
PERFORMERS.
–
SECTION
212.
LIMITATIONS
ON
RIGHTS.
–
56 z
Intellectual Property Law
204.1.
Independently
of
a
performer's
economic
rights,
215.2.
In
case
of
broadcasts,
the
term
shall
be
twenty
the
performer,
shall,
as
regards
his
live
aural
(20)
years
from
the
date
the
broadcast
took
place.
The
performances
or
performances
fixed
in
sound
recordings,
extended
term
shall
be
applied
only
to
old
works
with
have
the
right
to
claim
to
be
identified
as
the
performer
subsisting
protection
under
the
prior
law.
of
his
performances,
except
where
the
omission
is
dictated
by
the
manner
of
the
use
of
the
performance,
b. Rights
of
Producers
and
to
object
to
any
distortion,
mutilation
or
other
of
Sound
Recording
modification
of
his
performances
that
would
be
prejudicial
to
his
reputation.
SECTION
208.
SCOPE
OF
RIGHT.
–
204.2.
The
rights
granted
to
a
performer
in
accordance
Subject
to
the
provisions
of
Section
212,
producers
of
with
Subsection
203.1
shall
be
maintained
and
exercised
sound
recordings
shall
enjoy
the
following
exclusive
fifty
(50)
years
after
his
death,
by
his
heirs,
and
in
default
rights:
of
heirs,
the
government,
where
protection
is
claimed.
208.1.
The
right
to
authorize
the
direct
or
SECTION
205.
LIMITATION
ON
RIGHT.
–
indirect
reproduction
of
their
sound
recordings,
in
any
manner
or
form;
the
placing
of
these
205.1.
Subject
to
the
provisions
of
Section
206,
once
the
reproductions
in
the
market
and
the
right
of
performer
has
authorized
the
broadcasting
or
fixation
of
rental
or
lending;
his
performance,
the
provisions
of
Sections
203
shall
have
no
further
application.
208.2.
The
right
to
authorize
the
first
public
distribution
of
the
original
and
copies
of
their
205.2.
The
provisions
of
Section
184
and
Section
185
shall
sound
recordings
through
sale
or
rental
or
apply
mutatis
mutandis
to
performers.
other
forms
of
transferring
ownership;
and
SECTION
206.
ADDITIONAL
REMUNERATION
FOR
208.3.
The
right
to
authorize
the
commercial
SUBSEQUENT
COMMUNICATIONS
OR
BROADCASTS.
–
rental
to
the
public
of
the
original
and
copies
of
Unless
otherwise
provided
in
the
contract,
in
every
their
sound
recordings,
even
after
distribution
communication
to
the
public
or
broadcast
of
a
by
them
by
or
pursuant
to
authorization
by
the
performance
subsequent
to
the
first
communication
or
producer.
broadcast
thereof
by
the
broadcasting
organization,
the
performer
shall
be
entitled
to
an
additional
SECTION
209.
COMMUNICATION
TO
THE
PUBLIC.
–
remuneration
equivalent
to
at
least
five
percent
(5%)
of
If
a
sound
recording
published
for
commercial
purposes,
the
original
compensation
he
or
she
received
for
the
first
or
a
reproduction
of
such
sound
recording,
is
used
communication
or
broadcast.
directly
for
broadcasting
or
for
other
communication
to
the
public,
or
is
publicly
performed
with
the
intention
of
SECTION
207.
CONTRACT
TERMS.
–
making
and
enhancing
profit,
a
single
equitable
Nothing
in
this
Chapter
shall
be
construed
to
deprive
remuneration
for
the
performer
or
performers,
and
the
performers
of
the
right
to
agree
by
contracts
on
terms
producer
of
the
sound
recording
shall
be
paid
by
the
and
conditions
more
favorable
for
them
in
respect
of
any
user
to
both
the
performers
and
the
producer,
who,
in
use
of
their
performance.
the
absence
of
any
agreement
shall
share
equally.
SECTION
215.
TERM
OF
PROTECTION
FOR
PERFORMERS,
SECTION
210.
LIMITATION
OF
RIGHT.
–
PRODUCERS
AND
BROADCASTING
ORGANIZATIONS.
–
Sections
184
and
185
shall
apply
mutatis
mutandis
to
the
215.1.
The
rights
granted
to
performers
and
producers
of
producer
of
sound
recordings.
sound
recordings
under
this
law
shall
expire:
SECTION
215.
TERM
OF
PROTECTION
FOR
PERFORMERS,
(a)
For
performances
not
incorporated
in
PRODUCERS
AND
BROADCASTING
ORGANIZATIONS.
–
recordings,
fifty
(50)
years
from
the
end
of
the
215.1.
The
rights
granted
to
performers
and
producers
of
year
in
which
the
performance
took
place;
and
sound
recordings
under
this
law
shall
expire:
(b)
For
sound
or
image
and
sound
recordings
(a)
For
performances
not
incorporated
in
and
for
performances
incorporated
therein,
recordings,
fifty
(50)
years
from
the
end
of
the
fifty
(50)
years
from
the
end
of
the
year
in
year
in
which
the
performance
took
place;
and
which
the
recording
took
place.
(b)
For
sound
or
image
and
sound
recordings
and
for
performances
incorporated
o 57
Katrina Michelle Mancao
therein,
fifty
(50)
years
from
the
end
of
the
digital
direct-‐to-‐home
(DTH)
television
via
satellite
to
its
year
in
which
the
recording
took
place.
subscribers
all
over
the
Philippines.
Herein
individual
respondents
are
members
of
PMSI’s
Board
of
Directors.
215.2.
In
case
of
broadcasts,
the
term
shall
be
twenty
(20)
years
from
the
date
the
broadcast
took
place.
The
PMSI
was
granted
a
legislative
franchise
under
RA
86305
extended
term
shall
be
applied
only
to
old
works
with
on
May
7,
1998
and
was
given
a
Provisional
Authority
by
subsisting
protection
under
the
prior
law.
the
National
Telecommunications
Commission
(NTC)
on
February
1,
2000
to
install,
operate
and
maintain
a
c. Rights
of
nationwide
DTH
satellite
service.
When
it
commenced
operations,
it
offered
as
part
of
its
program
line-‐up
ABS-‐
Broadcasting
CBN
Channels
2
and
23,
NBN,
Channel
4,
ABC
Channel
5,
Organizations
GMA
Channel
7,
RPN
Channel
9,
and
IBC
Channel
13,
together
with
other
paid
premium
program
channels.
SECTION
211.
SCOPE
OF
RIGHT.
–
Subject
to
the
provisions
of
Section
212,
broadcasting
However,
on
April
25,
2001,
ABS-‐CBN
demanded
for
PMSI
organizations
shall
enjoy
the
exclusive
right
to
carry
out,
to
cease
and
desist
from
rebroadcasting
Channels
2
and
authorize
or
prevent
any
of
the
following
acts:
23.
On
April
27,
2001,
PMSI
replied
that
the
rebroadcasting
was
in
accordance
with
the
authority
211.1.
The
rebroadcasting
of
their
granted
it
by
NTC
and
its
obligation
under
NTC
Memorandum
Circular
No.
4-‐08-‐88,
Section
6.2
of
which
broadcasts;
requires
all
cable
television
system
operators
operating
in
a
community
within
Grade
“A”
or
“B”
contours
to
211.2.
The
recording
in
any
manner,
carry
the
television
signals
of
the
authorized
television
including
the
making
of
films
or
the
use
of
broadcast
stations.
video
tape,
of
their
broadcasts
for
the
purpose
of
communication
to
the
public
of
television
ABS-‐CBN
contends
that
PMSI’s
unauthorized
broadcasts
of
the
same;
and
rebroadcasting
of
Channels
2
and
23
is
an
infringement
of
its
broadcasting
rights
and
copyright
under
the
211.3.
The
use
of
such
records
for
fresh
Intellectual
Property
Code
(IP
Code);
that
Memorandum
transmissions
or
for
fresh
recording.
Circular
No.
04-‐08-‐88
excludes
DTH
satellite
television
operators;
that
the
Court
of
Appeals’
interpretation
of
SUBSECTION
215.2.
the
must-‐carry
rule
violates
Section
9
of
Article
III
of
the
In
case
of
broadcasts,
the
term
shall
be
twenty
(20)
Constitution
because
it
allows
the
taking
of
property
for
years
from
the
date
the
broadcast
took
place.
The
public
use
without
payment
of
just
compensation.
extended
term
shall
be
applied
only
to
old
works
with
subsisting
protection
under
the
prior
law.
Respondents,
on
the
other
hand,
argue
that
PMSI’s
rebroadcasting
of
Channels
2
and
23
is
sanctioned
by
ABS-‐CBN
BROADCASTING
COMMUNICATION
V.
PHILIPPINE
Memorandum
Circular
No.
04-‐08-‐88;
that
the
must-‐carry
rule
under
the
Memorandum
Circular
is
a
valid
exercise
MULTIMEDIA
SYSTEM,
ET
AL.
(2009)
of
police
power;
and
that
the
Court
of
Appeals
correctly
Refresher:
dismissed
CA-‐G.R.
SP
No.
90762
since
it
found
no
need
to
ABS-‐CBN
is
licensed
to
engage
in
television
and
radio
exercise
its
power
of
contempt.
broadcasting.
It
broadcasts
television
programs
by
wireless
means
to
Metro
Manila
and
nearby
provinces,
Doctrine:
and
by
satellite
to
provincial
stations
through
Channel
2
Section
202.7
of
the
IP
Code
defines
broadcasting
as
“the
on
Very
High
Frequency
(VHF)
and
Channel
23
on
Ultra
transmission
by
wireless
means
for
the
public
reception
High
Frequency
(UHF).
The
programs
aired
over
of
sounds
or
of
images
or
of
representations
thereof;
Channels
2
and
23
are
either
produced
by
ABS-‐CBN
or
such
transmission
by
satellite
is
also
‘broadcasting’
purchased
from
or
licensed
by
other
producers.
where
the
means
for
decrypting
are
provided
to
the
public
by
the
broadcasting
organization
or
with
its
ABS-‐CBN
also
owns
regional
television
stations
which
consent.”
pattern
their
programming
in
accordance
with
perceived
demands
of
the
region.
Thus,
television
programs
shown
On
the
other
hand,
rebroadcasting
as
defined
in
Article
in
Metro
Manila
and
nearby
provinces
are
not
necessarily
3(g)
of
the
International
Convention
for
the
Protection
shown
in
other
provinces.
of
Performers,
Producers
of
Phonograms
and
Broadcasting
Organizations,
otherwise
known
as
the
Respondent
Philippine
Multi-‐Media
System,
Inc.
(PMSI)
1961
Rome
Convention,
of
which
the
Republic
of
the
is
the
operator
of
Dream
Broadcasting
System.
It
delivers
Philippines
is
a
signatory,
is
“the
simultaneous
58 z
Intellectual Property Law
broadcasting
by
one
broadcasting
organization
of
the
commercials,
etc.
In
general,
however,
the
broadcast
of
another
broadcasting
organization.”
term
“retransmission”
seems
to
be
reserved
for
such
transmissions
which
are
both
Under
the
Rome
Convention,
rebroadcasting
is
“the
simultaneous
and
unaltered.
simultaneous
broadcasting
by
one
broadcasting
organization
of
the
broadcast
of
another
broadcasting
49.
The
Rome
Convention
does
not
grant
rights
organization.”
The
Working
Paper
prepared
by
the
against
unauthorized
cable
retransmission.
Secretariat
of
the
Standing
Committee
on
Copyright
and
Without
such
a
right,
cable
operators
can
Related
Rights
defines
broadcasting
organizations
as
retransmit
both
domestic
and
foreign
over
the
“entities
that
take
the
financial
and
editorial
air
broadcasts
simultaneously
to
their
responsibility
for
the
selection
and
arrangement
of,
and
subscribers
without
permission
from
the
investment
in,
the
transmitted
content.” Evidently,
PMSI
broadcasting
organizations
or
other
would
not
qualify
as
a
broadcasting
organization
because
rightholders
and
without
obligation
to
pay
it
does
not
have
the
aforementioned
responsibilities
remuneration.
imposed
upon
broadcasting
organizations,
such
as
ABS-‐
CBN.
Thus,
while
the
Rome
Convention
gives
broadcasting
organizations
the
right
to
authorize
or
prohibit
the
ABS-‐CBN
creates
and
transmits
its
own
signals;
PMSI
rebroadcasting
of
its
broadcast,
however,
this
merely
carries
such
signals
which
the
viewers
receive
in
protection
does
not
extend
to
cable
retransmission.
The
its
unaltered
form.
PMSI
does
not
produce,
select,
or
retransmission
of
ABS-‐CBN’s
signals
by
PMSI
–
which
determine
the
programs
to
be
shown
in
Channels
2
and
23.
functions
essentially
as
a
cable
television
–
does
not
Likewise,
it
does
not
pass
itself
off
as
the
origin
or
author
therefore
constitute
rebroadcasting
in
violation
of
the
of
such
programs.
Insofar
as
Channels
2
and
23
are
former’s
intellectual
property
rights
under
the
IP
Code.
concerned,
PMSI
merely
retransmits
the
same
in
accordance
with
Memorandum
Circular
04-‐08-‐88.
With
It
must
be
emphasized
that
the
law
on
copyright
is
not
regard
to
its
premium
channels,
it
buys
the
channels
absolute.
The
IP
Code
provides
that:
from
content
providers
and
transmits
on
an
as-‐is
basis
to
its
viewers.
Clearly,
PMSI
does
not
perform
the
functions
Sec.
184.
Limitations
on
Copyright.
-‐
of
a
broadcasting
organization;
thus,
it
cannot
be
said
184.1.
Notwithstanding
the
provisions
of
that
it
is
engaged
in
rebroadcasting
Channels
2
and
23.
Chapter
V,
the
following
acts
shall
not
constitute
infringement
of
copyright:
The
Director-‐General
of
the
IPO
and
the
Court
of
Appeals
x
x
x
x
also
correctly
found
that
PMSI’s
services
are
similar
to
a
(h)
The
use
made
of
a
work
by
or
under
the
cable
television
system
because
the
services
it
renders
fall
direction
or
control
of
the
Government,
by
the
under
cable
“retransmission,”
as
described
in
the
National
Library
or
by
educational,
scientific
or
Working
Paper,
to
wit:
professional
institutions
where
such
use
is
in
the
public
interest
and
is
compatible
with
fair
(G)
Cable
Retransmission
use;
47.
When
a
radio
or
television
program
is
being
The
carriage
of
ABS-‐CBN’s
signals
by
virtue
of
the
must-‐
broadcast,
it
can
be
retransmitted
to
new
carry
rule
in
Memorandum
Circular
No.
04-‐08-‐88
is
under
audiences
by
means
of
cable
or
wire.
In
the
the
direction
and
control
of
the
government
though
the
early
days
of
cable
television,
it
was
mainly
NTC
which
is
vested
with
exclusive
jurisdiction
to
used
to
improve
signal
reception,
particularly
in
supervise,
regulate
and
control
telecommunications
and
so-‐called
“shadow
zones,”
or
to
distribute
the
broadcast
services/facilities
in
the
Philippines.
The
signals
in
large
buildings
or
building
complexes.
imposition
of
the
must-‐carry
rule
is
within
the
NTC’s
With
improvements
in
technology,
cable
power
to
promulgate
rules
and
regulations,
as
public
operators
now
often
receive
signals
from
safety
and
interest
may
require,
to
encourage
a
larger
satellites
before
retransmitting
them
in
an
and
more
effective
use
of
communications,
radio
and
unaltered
form
to
their
subscribers
through
television
broadcasting
facilities,
and
to
maintain
cable.
effective
competition
among
private
entities
in
these
activities
whenever
the
Commission
finds
it
reasonably
48.
In
principle,
cable
retransmission
can
be
feasible.
either
simultaneous
with
the
broadcast
over-‐
the-‐air
or
delayed
(deferred
transmission)
on
PD
285.
Authorizing
the
Compulsory
Licensing
or
the
basis
of
a
fixation
or
a
reproduction
of
a
Reprinting
of
Educational,
Scientific
or
Cultural
Books
fixation.
Furthermore,
they
might
be
unaltered
and
Materials
as
a
Temporary
or
Emergency
Measure
or
altered,
for
example
through
replacement
of
o 59
Katrina Michelle Mancao
Whenever
the
Prices
thereof
become
so
Exorbitant
as
to
personally
in
the
Philippines
or
their
respective
be
Detrimental
to
the
National
Interest
representative
or
branch
offices
in
the
Philippines.
WHEREAS,
the
spiralling
of
prices
of
educational,
SECTION
4.
Any
person,
natural
or
judicial,
who
shall
scientific
or
cultural
books
and
materials
has
reached
violate
the
provisions
of
this
Decree
shall,
upon
very
serious
proportion;
conviction
thereof,
be
punished
by
imprisonment
of
not
less
than
Five
Thousand
Pesos
nor
more
than
two
Ten
WHEREAS,
it
is
in
the
national
interest
that
such
books
Thousand
Pesos.
If
the
violation
is
committed
by
a
firm,
and
materials
be
made
available
to
everybody
at
the
company
or
corporation,
the
manager
or
person
in
least
cost;
and
charge
of
the
management
of
the
business
thereof
shall
be
responsible
thereof.
Books
and
materials
printed
or
WHEREAS,
this
can
be
achieved
by
the
compulsory
published
or
exported
in
violation
of
this
Decree
shall
be
licensing
and
reprinting
of
both
domestic
and
foreign
immediately
confiscated
and
the
establishment
that
educational,
scientific
or
cultural
books
and
materials,
as
printed
or
published
or
exported
them
shall
forthwith
be
a
temporary
or
emergency
measure,
whenever
their
closed
and
its
operation
discontinued.
prices
become
exorbitant;
SECTION
5.
The
Committee
herein
named
shall
promulgate
NOW,
THEREFORE,
I,
FERDINAND
E.
MARCOS,
President
rules
and
regulations
for
the
implementation
of
this
of
the
Philippines,
by
virtue
of
the
powers
vested
in
me
Degree.
by
the
Constitution
as
Commander-‐in-‐Chief
of
all
the
Armed
Forces
of
the
Philippines,
and
pursuant
to
SECTION
6.
This
Decree
shall
take
effect
immediately,
the
Proclamation
No.
1081
dated
September
21,
1972,
and
provisions
of
any
law,
decree,
executive
order,
treaty
or
General
Order
No.
1
dated
September
22,
1972,
do
hereby
executive
agreement
to
the
contrary
notwithstanding.
order
and
decree
as
follows:
Done
in
the
City
of
Manila,
this
3rd
day
of
September,
in
SECTION
1.
Whenever
the
price
of
any
educational,
the
year
of
Our
Lord,
nineteen
hundred
and
seventy-‐
scientific
or
cultural
book,
pamphlet
and
other
written
three.
materials,
whether
of
domestic
or
foreign
origin,
has
become
so
exorbitant
as
to
be
detrimental
to
the
Remarks:
Repealed
by
the
IP
Code.
national
interest,
as
determined
and
declared
by
a
committee
composed
of
the
Secretary
of
Education
and
Culture,
such
book,
pamphlet
or
written
material
may
be
SECTION
239.1.
reprinted
by
the
Government
or
by
any
private
printer
or
All
Acts
and
parts
of
Acts
inconsistent
herewith,
more
printers
for
a
limited
period
and
only
for
the
purpose
of
particularly
Republic
Act
No.
165,
as
amended;
Republic
making
the
same
available
to
the
people
at
reasonable
Act
No.
166,
as
amended;
and
Articles
188
and
189
of
the
cost.
Revised
Penal
Code;
Presidential
Decree
No.
49,
including
Presidential
Decree
No.
285,
as
amended,
are
SECTION
2.
The
reprinted
books,
pamphlets
and
materials
hereby
repealed.
shall
bear
proper
acknowledgment
of
the
source,
authorship,
copyright
proprietors
and
past
printers,
if
26
January
2012
known,
as
well
as
the
names
and
addresses
of
the
reprinter
or
reprinters.
If
abbreviated
or
edited
in
any
RELATED
RIGHTS
-‐ Separate
and
independent
from
copyright
manner,
such
fact
shall
be
stated
be
stated.
The
following
inscription
shall
also
appear
on
the
covers
thereof:
"Export
of
this
Book
or
material
from
the
MORAL
RIGHTS
Philippines
is
punishable
by
law."
The
export
of
such
-‐ Consists
of
(193.1,
193.2,
193.3,
193.4)
o Right
to
attribution
reprints
under
any
circumstance
is
hereby
prohibited.
o Right
to
integrity
of
work
-‐ Separate
from
economic
rights
SECTION
3.
The
reprinting
of
the
above
books,
pamphlets
-‐ Personal
to
the
author
and
materials
shall
be
subject
to
the
condition
that
the
-‐ Retained
by
the
author
despite
assignment
of
reprinter
shall
pay,
in
local
currency,
a
royalty
of
three
the
copyright.
per
centum
(3%)
of
the
gross
selling
price,
if
so
-‐ Not
assignable/
subject
to
license
(198.1)
demanded
by
the
authors,
publishers
or
copyright
o BUT
the
same
may
be
waived!
proprietors
concerned,
whoever
is
legally
entitled
§ Subject
to
exceptions
thereto:
Provided,
That
in
the
case
of
non-‐resident
-‐ Illustration:
Producer
obtained
the
copyright
of
authors,
publishers
or
copyright
proprietors,
the
the
work.
Such
does
not
include
the
payment
of
the
royalties
shall
be
made
only
to
them
assignment
of
moral
rights.
60 z
Intellectual Property Law
§ Right of all performers in
What is the point of giving moral right? general – Section 203.1
-‐ To protect the author à preserve how the ONLY
author is represented to the public. § Right of those whose
-‐ The work is the representation of the author – performances are fixed in
how the author is represented to the world. sound recordings – Section
203.1 + 203.2, 203.3, 203.4,
Can you compel the author to write? 203.5
-‐ No. See Section 194. Your remedy is to ask for o Why not include other works?
damages. § Ma’am: It is not financially
feasible to apportion all
Is destruction of the work allowed? rights to all performers in
-‐ Yes, only if the destruction is COMPLETE. audiovisual works because
-‐ Incomplete destruction is not allowed. these are collaborative
-‐ Why? In complete destruction, there would be works.
no misrepresentation of the author to the o But can other performers demand the
public. The purpose of the law is to prevent rights in 203.2-‐203.5?
misrepresentation of the author to the public. § YES. Section 207 allows the
If purpose of the law ceases to exist, no need parties to agree for better
for the application of the law. terms. The law does not
provide for ceilings.
Term of moral right: Lifetime of the author + 50 years -‐ Producers of sound recording and
after death (same as copyright) Broadcasting organization
-‐ Note the persons charged with posthumous o Can they also claim copyright? Yes.
enforcement of the right is enumerated in o When can they claim copyright?
Section 198.1 § The work is original, they
o Those named by the author in writing, produced content itself, and
o In default of the former, author’s such is created by their
heirs employees in the exercise of
o In default of the heirs, Director of TNL their functions. OR
§ Commissioned work AND
FOLLOW-‐UP RIGHTS (SECTION 200) the copyright is vested in
-‐ Of French origin, adopted because of the them by the contract with
Convention the author of work.
-‐ Applicable to specific class only: o Independent of copyright, they also
o Painting have other rights.
o Sculpture o Why give them copyright and other
o Original manuscript (of a writer or rights?
composer) § Because it is possible that
-‐ Ratio: These works appreciate in value. Thus, they do not own the
the purpose of the law is to allow the creator copyright of the work that
to participate in the appreciation in value of they produced. Thus, if they
their works. do not own the copyrights,
-‐ Basis: Gross proceeds. they can at least invoke
-‐ Problem with these rights: Enforcement (how other rights.
do you enforce these?)
o We have no registry system for these Issue: Why would copyright infringement be the better
works; thus, no way to monitor it. right to be invoked by a broadcasting organization
against a cable operator based in Lanao rather than the
NEIGHBORING RIGHTS: rights of a broadcasting organization under Chapter XIV
-‐ Granted to: of the IP Code? What is the LEGAL risk if the
o Performers broadcasting organization applies for a search warrant
o Producers of sound recording on the basis of the rights of a broadcasting organization
o Broadcasting corporations under chapter XIV?
-‐ Performers:
o Defined in Section 202.1 HW Answer (Di Bonilla):
o Some performers are better off than The search warrant is susceptible to being
others. How? quashed for failure to establish probable cause
o 61
Katrina Michelle Mancao
for
violation
of
the
rights
of
a
broadcasting
organization
entitles
the
latter
to
the
same
organization.
First,
as
emphasized
in
the
case
criminal
remedies,
among
others,
in
case
of
of
ABS-‐CBN
vs.
PMMI,
the
Rome
Convention
infringement
of
copyright,
the
same
rights
defines
rebroadcasting
as
the
“the
must
be
construed
strictly
against
the
State.
simultaneous
broadcasting
by
one
Thus,
these
rights
and
the
corresponding
broadcasting
organization
of
the
broadcast
of
criminal
violations
thereof
must
not
be
deemed
another
broadcasting
organization.”
For
there
to
include
acts
which
do
not
clearly
and
to
be
rebroadcasting,
the
alleged
explicitly
fall
under
them.
Criminal
acts
must
rebroadcaster
must
be
a
broadcasting
not
be
deemed
to
exist
by
implication.
organization.
However,
the
Lanao
cable
operator
does
not
meet
the
definition
of
broadcasting
organizations,
which
according
to
the
foregoing
case,
are
“entities
that
take
the
financial
and
editorial
responsibility
for
the
selection
and
arrangement
of,
and
investment
in,
the
transmitted
content.”
The
Lanao
cable
operator
does
not
select,
arrange
or
invest
in
the
content
it
transmits.
It
only
transmits
but
does
not
take
financial
and
editorial
responsibility
for
the
content.
It
is
HBO
that
creates,
selects,
arranges
and
transmits
its
own
channel
to
its
distributors
in
whole
-‐
including
movies
it
has
been
licensed
to
show
and
its
own
originally
created
miniseries.
It
is
part
of
the
package
it
offers
and
paid
for
by
its
distributors.
On
the
other
hand,
the
Lanao
cable
operator
only
carries
the
signals
of
HBO
in
its
unchanged
form.
it
does
not
perform
the
functions
of
a
broadcasting
organization
so
that
it
cannot
be
said
to
be
engaged
in
rebroadcasting
of
HBO's
broadcasts.
Second,
the
Lanao
cable
operator
is
not
engaged
in
broadcasting.
As
a
cable
television,
it
is
engaged
in
mere
cable
retransmission.
The
right
of
broadcasting
organizations
against
rebroadcasting
without
their
consent
does
not
cover
cable
retransmission
which,
according
to
the
same
ABSCBN
case,
is
a
mere
simultaneous
and
unaltered
transmission
by
a
cable
television
through
wire
or
cable.
Sec.
202.7
of
the
IP
Code
defines
broadcasting
as
"the
transmission
by
wireless
means
for
the
public
reception
of
sounds
or
of
images
or
of
representations
thereof;
such
transmission
by
satellite
is
also
"broadcasting"
where
the
means
for
decrypting
are
provided
to
the
public
by
the
broadcasting
organization
or
with
its
consent."
Thus,
the
Lanao
cable
television
operator
which
transmits
through
wire
or
cables
is
not
broadcasting
because
the
latter
is
limited
to
transmission
by
wireless
and
by
satellite.
Also,
Lanao's
transmission
is
not
for
the
public
reception
in
general
but
only
for
its
subscribers.
Finally,
since
any
violation
of
the
rights
of
a
broadcasting
62 z
Intellectual Property Law
VI. Law
on
Trademarks,
Tradenames
and
industrial
designs,
marks
and
works,
acquired
in
good
faith
prior
to
the
effective
date
of
this
Act.
Service
Marks
SECTION
241.
EFFECTIVITY.
–
A. Legislative
History
This
Act
shall
take
effect
on
1
January
1998.
REPUBLIC
ACT
166
B. Definition
of
Trademarks
An
Act
to
Provide
for
the
Registration
and
Protection
of
Trade-‐marks,
Trade-‐names
and
Service-‐marks,
defining
SECTION
121.1.
"MARK"
means
any
visible
sign
capable
of
Unfair
Competition
and
False
Marking
and
Providing
Remedies
against
the
Same,
and
for
Other
Purposes
distinguishing
the
goods
(trademark)
or
services
(service
mark)
of
an
enterprise
and
shall
include
a
stamped
or
-‐ Took
effect
20
June
1947
marked
container
of
goods
SECTION
239.
REPEALS.
–
DISTILLERIA
WASHINGTON,
INC.
V.
CA
(1996)
239.1.
All
Acts
and
parts
of
Acts
inconsistent
herewith,
Refresher:
La
Tondeña
Distillers,
Inc.
(LTDI)
filed
a
case
for
manual
more
particularly
Republic
Act
No.
165,
as
amended;
delivery
with
dmages
against
Distilleria
Washington.
Republic
Act
No.
166,
as
amended;
and
Articles
188
and
LTDI,
under
a
claim
of
ownership,
sought
to
seize
from
189
of
the
Revised
Penal
Code;
Presidential
Decree
No.
Distilleria
Washington
18,157
empty
"350
c.c.
white
flint
49,
including
Presidential
Decree
No.
285,
as
amended,
bottles"
bearing
the
blown-‐in
marks
of
"La
Tondeña
are
hereby
repealed.
Inc."
and
"Ginebra
San
Miguel."
239.2.
Marks
registered
under
Republic
Act
No.
166
shall
LTDI
asserted
that,
being
the
owner
and
registrant
of
remain
in
force
but
shall
be
deemed
to
have
been
the
bottles,
it
was
entitled
to
the
protection
so
extended
granted
under
this
Act
and
shall
be
due
for
renewal
by
Republic
Act
("R.A.")
No.
623,
as
amended,
within
the
period
provided
for
under
this
Act
and,
upon
notwithstanding
its
sale
of
the
Ginebra
San
Miguel
gin
renewal
shall
be
reclassified
in
accordance
with
the
product
contained
in
said
bottles.
International
Classification.
Trade
names
and
marks
registered
in
the
Supplemental
Register
under
Republic
Washington
countered
that
R.A.
No.
623,
invoked
by
Act
No.
166
shall
remain
in
force
but
shall
no
longer
be
LTDI,
should
not
apply
to
gin,
an
alcoholic
beverage
subject
to
renewal.
which
is
unlike
that
of
"soda
water,
mineral
or
aerated
water,
ciders,
milks,
cream,
or
other
lawful
beverages"
239.3.
The
provisions
of
this
Act
shall
apply
to
works
in
mentioned
in
the
law,
and
that,
in
any
case,
ownership
of
which
copyright
protection
obtained
prior
to
the
the
bottles
should,
considering
the
attendant
facts
and
effectivity
of
this
Act
is
subsisting:
Provided,
That
the
circumstances,
be
held
lawfully
transferred
to
the
buyers
application
of
this
Act
shall
not
result
in
the
diminution
upon
the
sale
of
the
gin
and
containers
at
a
single
price.
of
such
protection.
Doctrine:
SECTION
235.2.
The
case
before
us
goes
beyond
just
seeking
to
have
All
applications
for
registration
of
marks
or
trade
names
such
use
stopped
but
it
so
takes
on
even
the
ownership
pending
in
the
Bureau
of
Patents,
Trademarks
and
issue
as
well.
Parenthetically,
petitioner
is
not
here
being
Technology
Transfer
at
the
effective
date
of
this
Act
may
charged
with
a
violation
of
Section
2
of
R.A.
No.
623
or
of
be
amended,
if
practicable
to
bring
them
under
the
the
Trademark
Law.
The
instant
suit
is
one
for
replevin
provisions
of
this
Act.
The
prosecution
of
such
(manual
delivery)
where
the
claimant
must
be
able
to
applications
so
amended
and
the
grant
of
registrations
show
convincingly
that
he
is
either
the
owner
or
clearly
thereon
shall
be
proceeded
with
in
accordance
with
the
entitled
to
the
possession
of
the
object
sought
to
be
provisions
of
this
Act.
If
such
amendments
are
not
made,
recovered.
Replevin
is
a
possessory
action
the
gist
of
the
prosecution
of
said
applications
shall
be
proceeded
which
focuses
on
the
right
of
possession
that,
in
turn,
is
with
and
registrations
thereon
granted
in
accordance
dependent
on
a
legal
basis
that,
not
infrequently,
looks
to
with
the
Acts
under
which
said
applications
were
filed,
the
ownership
of
the
object
sought
to
be
replevied.
and
said
Acts
are
hereby
continued
in
force
to
this
extent
for
this
purpose
only,
notwithstanding
the
It
is
to
be
pointed
out
that
a
trademark
refers
to
a
word,
foregoing
general
repeal
thereof.
name,
symbol,
emblem,
sign
or
device
or
any
combination
thereof
adopted
and
used
by
a
merchant
to
SECTION
236.
PRESERVATION
OF
EXISTING
RIGHTS.
–
identify,
and
distinguish
from
others,
his
goods
of
Nothing
herein
shall
adversely
affect
the
rights
on
the
commerce.
It
is
basically
an
intellectual
creation
that
is
enforcement
of
rights
in
patents,
utility
models,
susceptible
to
ownership
and,
consistently
therewith,
o 63
Katrina Michelle Mancao
gives
rise
to
its
own
elements
of
jus
posidendi,
jus
utendi,
C. Functions
of
Trademarks
jus
fruendi,
jus
disponendi,
and
jus
abutendi,
along
with
the
applicable
jus
lex,
comprising
that
ownership.
The
ANG
V.
TEODORO
(1942)
incorporeal
right,
however,
is
distinct
from
the
property
Refresher:
in
the
material
object
subject
to
it.
Ownership
in
one
Trademark
involved:
“Ang
Tibay”
does
not
necessarily
vest
ownership
in
the
other.
Thus,
Toribo
Teodoro
–
used
it
for
slippers,
shoes,
and
indoor
the
transfer
or
assignment
of
the
intellectual
property
baseballs
since
1910.
Registered
it
as
trademark
in
1915,
will
not
necessarily
constitute
a
conveyance
of
the
thing
as
trade-‐name
in
1933.
it
covers,
nor
would
a
conveyance
of
the
latter
imply
the
transfer
or
assignment
of
the
intellectual
right.
Ana
L.
Ang
–
registered
the
trademark
for
pants
and
shirts
in
1932.
R.A.
No.
623
evidently
does
not
disallow
the
sale
or
transfer
of
ownership
of
the
marked
bottles
or
Doctrine:
containers.
In
fact,
the
contrary
is
implicit
in
the
law;
thus
We
find
it
necessary
to
go
into
the
etymology
and
—
meaning
of
the
Tagalog
words
"Ang
Tibay"
to
determine
whether
they
are
a
descriptive
term,
i.e.,
whether
they
Sec.
5.
No
action
shall
be
brought
under
this
relate
to
the
quality
or
description
of
the
merchandise
to
Act
against
any
person
to
whom
the
registered
which
respondent
has
applied
them
as
a
trademark.
manufacturer,
bottler
or
seller,
has
transferred
by
way
of
sale,
any
of
the
containers
herein
The
word
"ang"
is
a
definite
article
meaning
"the"
in
referred
to,
but
the
sale
of
the
beverage
English.
It
is
also
used
as
an
adverb,
a
contraction
of
the
contained
in
the
said
containers
shall
not
word
"anong"
(what
or
how).
For
instance,
instead
of
include
the
sale
of
the
containers
unless
saying,
"Anong
ganda!"
("How
beautiful!"),
we
ordinarily
specifically
so
provided.
say,
"Ang
ganda!"
Tibay
is
a
root
word
from
which
are
derived
the
verb
magpatibay
(to
strenghten;
the
nouns
Sec.
6.
The
provisions
of
this
Act
shall
not
be
pagkamatibay
(strength,
durability),
katibayan
(proof,
interpreted
as
prohibiting
the
use
of
bottles
as
support,
strength),
katibay-‐tibayan
(superior
strength);
containers
for
"sisi,"
"bagoong,"
"patis,"
and
and
the
adjectives
matibay
(strong,
durable,
lasting),
similar
native
products.
napakatibay
(very
strong),
kasintibay
or
magkasintibay
(as
strong
as,
or
of
equal
strength).
The
phrase
"Ang
Scarcely
disputed
are
certain
and
specific
industry
Tibay"
is
an
exclamation
denoting
administration
of
practices
in
the
sale
of
gin:
The
manufacturer
sells
the
strength
or
durability.
For
instance,
one
who
tries
hard
product
in
marked
containers,
through
dealers,
to
the
but
fails
to
break
an
object
exclaims,
"Ang
tibay!"
(How
public
in
supermarkets,
grocery
shops,
retail
stores
and
strong!")
It
may
also
be
used
in
a
sentence
thus,
"Ang
other
sales
outlets.
The
buyer
takes
the
item;
he
is
tibay
ng
sapatos
mo!"
(How
durable
your
shoes
are!")
neither
required
to
return
the
bottle
nor
required
to
The
phrase
"ang
tibay"
is
never
used
adjectively
to
make
a
deposit
to
assure
its
return
to
the
seller.
He
could
define
or
describe
an
object.
One
does
not
say,
"ang
return
the
bottle
and
get
a
refund.
A
number
of
bottles
tibay
sapatos"
or
"sapatos
ang
tibay"
is
never
used
at
times
find
their
way
to
commercial
users.
It
cannot
be
adjectively
to
define
or
describe
an
object.
One
does
not
gainsaid
that
ownership
of
the
containers
does
pass
on
say,
"ang
tibay
sapatos"
or
"sapatos
ang
tibay"
to
mean
to
the
consumer
albeit
subject
to
the
statutory
limitation
"durable
shoes,"
but
"matibay
na
sapatos"
or
"sapatos
on
the
use
of
the
registered
containers
and
to
the
na
matibay."
trademark
right
of
the
registrant.
The
statement
in
Section
5
of
R.A.
623
to
the
effect
that
the
"sale
of
From
all
of
this
we
deduce
that
"Ang
Tibay"
is
not
a
beverage
contained
in
the
said
containers
shall
not
descriptive
term
within
the
meaning
of
the
Trade-‐Mark
include
the
sale
of
the
containers
unless
specifically
so
Law
but
rather
a
fanciful
or
coined
phrase
which
may
provided"
is
not
a
rule
of
proscription.
It
is
a
rule
of
properly
and
legally
be
appropriated
as
a
trademark
or
construction
that,
in
keeping
with
the
spirit
and
intent
of
trade-‐name.
In
this
connection
we
do
not
fail
to
note
the
law,
establishes
at
best
a
presumption
(of
non-‐
that
when
the
petitioner
herself
took
the
trouble
and
conveyance
of
the
container)
and
which
by
no
means
expense
of
securing
the
registration
of
these
same
can
be
taken
to
be
either
interdictive
or
conclusive
in
words
as
a
trademark
of
her
products
she
or
her
character.
Upon
the
other
hand,
LTDI's
sales
invoice,
attorney
as
well
as
the
Director
of
Commerce
was
stipulating
that
the
"sale
does
not
include
the
bottles
undoubtedly
convinced
that
said
words
(Ang
Tibay)
with
the
blown-‐in
marks
of
ownership
of
La
Tondeña
were
not
a
descriptive
term
and
hence
could
be
legally
Distillers,"
cannot
affect
those
who
are
not
privies
used
and
validly
registered
as
a
trade-‐mark.
It
seems
thereto.
stultifying
and
puerile
for
her
now
to
contend
otherwise,
suggestive
of
the
story
of
sour
grapes.
Counsel
for
the
petitioner
says
that
the
function
of
a
trademark
is
to
64 z
Intellectual Property Law
point distinctively, either by its own meaning or by
association, to the origin or ownership of the wares to Barbizon Corporation – NY corp. = opposed the
which it is applied. That is correct, and we find that "Ang application.
Tibay," as used by the respondent to designate his wares,
had exactly performed that function for twenty-‐two Escobar later assigned all her rights and interest over the
years before the petitioner adopted it as a trade-‐mark in trademark to petitioner Pribhdas J. Mirpuri who, under
her own business. Ang Tibay shoes and slippers are, by his firm name then, the "Bonito Enterprises," was the
association, known throughout the Philippines as sole and exclusive distributor of Escobar's "Barbizon"
products of the Ang Tibay factory owned and operated products.
by the respondent Toribio Teodoro.
Doctrine:
ETEPHA, A.G. V. DIRECTOR OF PATENTS AND WESTMONT In Philippine jurisprudence, the function of a trademark
is to point out distinctly the origin or ownership of the
PHARMACEUTICALS, INC. (1966)
goods to which it is affixed; to secure to him, who has
Refresher:
been instrumental in bringing into the market a superior
Westmont Pharmaceuticals, Inc. – NY Corp. = sought to
article of merchandise, the fruit of his industry and skill;
register “Atussin” in 1959 on its "medicinal preparation to assure the public that they are procuring the genuine
of expectorant antihistaminic, bronchodilator sedative,
article; to prevent fraud and imposition; and to protect
ascorbic acid (Vitamin C) used in the treatment of
the manufacturer against substitution and sale of an
cough".
inferior and different article as his product.
Etepha, A. G. – Liechtenstein corp. = objected to the
Modern authorities on trademark law view trademarks
registration on the ground that “Atussin” is similar to its
as performing three distinct functions:
trademark “Pertussin” that they used on a preparation
(1) they indicate origin or ownership of the
for the treatment of coughs.
articles to which they are attached;
(2) they guarantee that those articles come up
Doctrine:
to a certain standard of quality; and
The objects of a trademark are "to point out distinctly
(3) they advertise the articles they symbolize.
the origin or ownership of the articles to which it is
affixed, to secure to him who has been instrumental in
Symbols have been used to identify the ownership or
bringing into market a superior article or merchandise
origin of articles for several centuries. As early as 5,000
the fruit of his industry and skill, and to prevent fraud
B.C., markings on pottery have been found by
and imposition."
archaeologists. Cave drawings in southwestern Europe
show bison with symbols on their flanks. Archaeological
Confusion is likely between trademarks, however, only if discoveries of ancient Greek and Roman inscriptions on
their over-‐all presentations in any of the particulars of sculptural works, paintings, vases, precious stones,
sound, appearance, or meaning are such as would lead
glassworks, bricks, etc. reveal some features which are
the purchasing public into believing that the products to
thought to be marks or symbols. These marks were
which the marks are applied emanated from the same
affixed by the creator or maker of the article, or by
source. In testing this issue, fixed legal rules exist — if public authorities as indicators for the payment of tax,
not in harmony, certainly in abundance — but, in the for disclosing state monopoly, or devices for the
final analysis, the application of these rules in any given
settlement of accounts between an entrepreneur and
situation necessarily reflects a matter of individual
his workmen.
judgment largely predicated on opinion. There is,
however, and can be no disagreement with the rule that In the Middle Ages, the use of many kinds of marks on a
the purchaser is confused, if at all, by the marks as a variety of goods was commonplace. Fifteenth century
whole.
England saw the compulsory use of identifying marks in
certain trades. There were the baker's mark on bread,
MIRPURI V. CA, DIRECTOR OF PATENTS AND BARBIZON bottlemaker's marks, smith's marks, tanner's marks,
CORP. (1999) watermarks on paper, etc. Every guild had its own mark
Refresher: and every master belonging to it had a special mark of
Trademark in issue = “Barbizon” his own. The marks were not trademarks but police
marks compulsorily imposed by the sovereign to let the
Lolita Escobar (predecessor-‐in-‐interest of Mirpuiri) = public know that the goods were not "foreign" goods
sought to register “Barbizon” for use in brassieres and smuggled into an area where the guild had a monopoly,
ladies undergarments. Escobar alleged that she had as well as to aid in tracing defective work or poor
been manufacturing and selling these products under craftsmanship to the artisan. For a similar reason,
the firm name "L & BM Commercial" since March 3, 1970. merchants also used merchants' marks. Merchants dealt
o 65
Katrina Michelle Mancao
in
goods
acquired
from
many
sources
and
the
marks
enabled
them
to
identify
and
reclaim
their
goods
upon
D. How
are
trademarks
acquired?
recovery
after
shipwreck
or
piracy.
SECTION
122.
HOW
MARKS
ARE
ACQUIRED.
–
With
constant
use,
the
mark
acquired
popularity
and
became
voluntarily
adopted.
It
was
not
intended
to
The
rights
in
a
mark
shall
be
acquired
through
create
or
continue
monopoly
but
to
give
the
customer
registration
made
validly
in
accordance
with
the
an
index
or
guarantee
of
quality.
It
was
in
the
late
18th
provisions
of
this
law.
century
when
the
industrial
revolution
gave
rise
to
mass
production
and
distribution
of
consumer
goods
that
the
NOTE:
mark
became
an
important
instrumentality
of
trade
and
RA
166,
SECTION
2-‐A.
OWNERSHIP
OF
TRADE-‐MARKS,
commerce.
By
this
time,
trademarks
did
not
merely
TRADE-‐NAMES
AND
SERVICE-‐MARKS,
HOW
ACQUIRED.
–
identify
the
goods;
they
also
indicated
the
goods
to
be
Anyone
who
lawfully
produces
or
deals
in
merchandise
of
satisfactory
quality,
and
thereby
stimulated
further
of
any
kind
or
who
engages
in
any
lawful
business,
or
purchases
by
the
consuming
public.
Eventually,
they
who
renders
an
lawful
service
in
commerce,
by
actual
came
to
symbolize
the
goodwill
and
business
reputation
use
thereof
in
manufacture
or
trade,
in
business,
and
in
of
the
owner
of
the
product
and
became
a
property
right
the
service
rendered,
may
appropriate
to
his
exclusive
protected
by
law.
The
common
law
developed
the
use
a
trade-‐mark,
trade-‐name,
or
a
service-‐mark
not
so
doctrine
of
trademarks
and
tradenames
"to
prevent
a
appropriated
by
another,
to
distinguish
his
merchandise,
person
from
palming
off
his
goods
as
another's,
from
business
or
service
from
the
merchandise,
business
or
getting
another's
business
or
injuring
his
reputation
by
service
of
others.
The
ownership
or
possession
of
a
unfair
means,
and,
from
defrauding
the
public."
trade-‐mark,
trade-‐name,
service-‐mark,
heretofore
or
Subsequently,
England
and
the
United
States
enacted
hereafter
appropriated,
as
in
this
section
provided,
shall
national
legislation
on
trademarks
as
part
of
the
law
be
recognized
and
protected
in
the
same
manner
and
to
regulating
unfair
trade.
It
became
the
right
of
the
the
same
extent
as
are
other
property
rights
known
to
trademark
owner
to
exclude
others
from
the
use
of
his
the
laws.
mark,
or
of
a
confusingly
similar
mark
where
confusion
resulted
in
diversion
of
trade
or
financial
injury.
At
the
UNNO
COMMERCIAL
ENTERPRISES
V.
GENERAL
MILLING
same
time,
the
trademark
served
as
a
warning
against
the
imitation
or
faking
of
products
to
prevent
the
CORPORATION
(1983)
imposition
of
fraud
upon
the
public.
Refresher:
Trademark
in
issue:
"All
Montana"
Today,
the
trademark
is
not
merely
a
symbol
of
origin
General
Milling
=
used
it
on
wheat
flour
in
the
Philippines
and
goodwill;
it
is
often
the
most
effective
agent
for
the
since
1955
actual
creation
and
protection
of
goodwill.
It
imprints
Unno
Commercial
=
(prior)
registrant
of
the
mark
since
upon
the
public
mind
an
anonymous
and
impersonal
1962,
allegedly
started
using
the
mark
since
1956
guaranty
of
satisfaction,
creating
a
desire
for
further
satisfaction.
In
other
words,
the
mark
actually
sells
the
Doctrine:
goods.
The
mark
has
become
the
"silent
salesman,"
the
The
right
to
register
trademark
is
based
on
ownership.
conduit
through
which
direct
contact
between
the
When
the
applicant
is
not
the
owner
of
the
trademark
trademark
owner
and
the
consumer
is
assured.
It
has
being
applied
for,
he
has
no
right
to
apply
for
the
invaded
popular
culture
in
ways
never
anticipated
that
it
registration
of
the
same.
Under
the
Trademark
Law
only
has
become
a
more
convincing
selling
point
than
even
the
owner
of
the
trademark,
trade
name
or
service
mark
the
quality
of
the
article
to
which
it
refers.
In
the
last
half
used
to
distinguish
his
goods,
business
or
service
from
century,
the
unparalleled
growth
of
industry
and
the
the
goods,
business
or
service
of
others
is
entitled
to
rapid
development
of
communications
technology
have
register
the
same.
enabled
trademarks,
tradenames
and
other
distinctive
signs
of
a
product
to
penetrate
regions
where
the
owner
The
term
owner
does
NOT
include
the
importer
of
the
does
not
actually
manufacture
or
sell
the
product
itself.
goods
bearing
the
trademark,
trade
name,
service
mark,
Goodwill
is
no
longer
confined
to
the
territory
of
actual
or
other
mark
of
ownership,
UNLESS
such
importer
is
market
penetration;
it
extends
to
zones
where
the
actually
the
owner
thereof
in
the
country
from
which
the
marked
article
has
been
fixed
in
the
public
mind
through
goods
are
imported.
A
LOCAL
IMPORTER,
however,
may
advertising.
Whether
in
the
print,
broadcast
or
electronic
make
application
for
the
registration
of
a
foreign
communications
medium,
particularly
on
the
Internet,
trademark,
trade
name
or
service
mark
if
he
is
duly
advertising
has
paved
the
way
for
growth
and
expansion
authorized
by
the
actual
owner
of
the
name
or
other
of
the
product
by
creating
and
earning
a
reputation
that
mark
of
ownership.
A
mere
distributor
of
the
crosses
over
borders,
virtually
turning
the
whole
world
merchandise
covered
by
the
TM
cannot
apply
for
the
into
one
vast
marketplace.
registration
of
the
TM.
66 z
Intellectual Property Law
of the name in advertisements, circulars, price lists, and
Thus, this Court, has on several occasions ruled that on signs and stationery.
where the applicant's alleged ownership is not shown in
any notarial document and the applicant appears to be The Paris Convention for the Protection of Industrial
merely an importer or distributor of the merchandise Property does not automatically exclude all countries of
covered by said trademark, its application cannot be the world which have signed it from using a tradename
granted. which happens to be used in one country. To illustrate -‐
If a taxicab or bus company in a town in the United
Ownership of a trademark is not acquired by the mere Kingdom or India happens to use the tradename "Rapid
fact of registration alone. Registration merely creates a Transportation", it does not necessarily follow that
prima facie presumption of the validity of the "Rapid" can no longer be registered in Uganda, Fiji, or
registration, of the registrant's ownership of the the Philippines.
trademark and of the exclusive right to the use thereof.
Registration does not perfect a trademark right. As Indeed, the Philippines is a signatory to this Treaty and,
conceded itself by petitioner, evidence may be hence, we must honor our obligation thereunder on
presented to overcome the presumption. Prior use by matters concerning internationally known or well known
one will controvert a claim of legal appropriation, by marks. However, this Treaty provision clearly indicated
subsequent users. the conditions which must exist before any trademark
owner can claim and be afforded rights such as the
KABUSHI KAISHA ISETAN V. IAC AND ISETANN DEPT. STORE Petitioner herein seeks and those conditions are that:
(1991)
a) the mark must be internationally known or
Refresher:
well known;
Trademark in issue: “Isetan”
Kabushi Kaisha Isetan – Japan Corp., sought to cancel
b) the subject of the right must be a trademark,
Isetann’s registration
not a patent or copyright or anything else;
Isetann Dept. Store – domestic corp., registrant of
“Isetann Dept. Store”
c) the mark must be for use in the same or
similar kinds of goods; and
Doctrine:
A fundamental principle of Philippine Trademark Law is
d) the person claiming must be the owner of
that actual use in commerce in the Philippines is a pre-‐
the mark
requisite to the acquisition of ownership over a
trademark or a tradename. Adoption alone of a
PHILIP MORRIS V. CA AND FORTUNE TOBACCO CORP.
trademark would not give exclusive right thereto. Such
right grows out of their actual use. Adoption is not use. (1993)
One way make advertisements, issue circulars, give out Refresher:
price lists on certain goods; but these alone would not Trademark in issue = “Mark”
give exclusive right of use. For trademark is a creation of Philip Morris = Virginia corp. not doing business in the
use. The underlying reason for all these is that Philippines.
purchasers have come to understand the mark as Fortune Tobacco = domestic corp.
indicating the origin of the wares. Flowing from this is
the trader's right to protection in the trade he has built Doctrine:
up and the goodwill he has accumulated from use of the A foreign corporation not doing business in the PH may
trademark. have the right to sue before PH courts but existing
adjective axioms require that qualifying circumstances
The records show that the petitioner has never necessary for the assertion of such right should first be
conducted any business in the Philippines. It has never affirmatively pleaded.
promoted its tradename or trademark in the Philippines.
It has absolutely no business goodwill in the Philippines. Foreign corporation not engaged in business in the PH
It is unknown to Filipinos except the very few who may may maintain a cause of action for infringement
have noticed it while travelling abroad. It has never paid primarily because of Sec. 21-‐A of TM Law when the legal
a single centavo of tax to the Philippine government. standing to sue is alleged.
Under the law, it has no right to the remedy it seeks.
Our municipal law on TM regarding the requirement of
The mere origination or adoption of a particular actual use in the PH must subordinate an international
tradename without actual use thereof in the market is agreement inasmuch as the apparent clash is being
insufficient to give any exclusive right to its use, even decided by a municipal tribunal. Withal, the fact that
though such adoption is publicly declared, such as by use international law has been made part of law of the land
o 67
Katrina Michelle Mancao
does
not
by
any
means
imply
the
primacy
of
Developers
Group
of
Companies,
Inc.
=
claim
ownership
international
law
over
national
law
in
the
municipal
of
the
logo
and
the
mark
that
they
used
for
their
sphere.
Under
the
doctrine
of
incorporation
as
applied
in
restaurant
business.
They
had
the
mark
registered
in
most
countries,
rules
of
international
law
are
given
a
1983.
standing
equal,
not
superior
to
the
national
legislative
enactments.
Kuok
family
owns
and
operates
a
chain
of
hotels
since
1962.
A
foreign
corporation
may
have
the
personal
to
file
a
suit
for
infringement
BUT
it
may
not
necessarily
be
entitled
Doctrine:
to
protection
due
to
absence
of
actual
use
of
the
Under
the
provisions
of
the
former
trademark
law,
RA
emblem
in
the
local
market.
166,
as
amended,
which
was
in
effect
up
to
December
31,
1997,
hence,
the
law
in
force
at
the
time
of
respondent's
PHILIP
MORRIS
V.
FORTUNE
TOBACCO
CORP.
(2006)
application
for
registration
of
trademark,
the
root
of
Doctrine:
ownership
of
a
trademark
is
actual
use
in
commerce.
Foreign
corporation
may
not
successfully
sue
on
the
Section
2
of
said
law
requires
that
before
a
trademark
basis
alone
of
their
respective
certificates
of
registration
can
be
registered,
it
must
have
been
actually
used
in
of
TM,
for
as
far
as
a
condition
to
the
availment
of
the
commerce
and
service
for
not
less
than
two
months
in
rights
and
privileges
vis-‐à-‐vis
their
TM
in
this
country,
the
Philippines
prior
to
the
filing
of
an
application
for
its
they
ought
to
show
proof
that,
on
top
of
the
PH
registration.
registration,
their
country
grants
substantially
similar
rights
and
privileges
to
Filipino
citizens
pursuant
to
Sec.
Registration,
without
more,
does
not
confer
upon
the
21-‐A
of
RA
166.
registrant
an
absolute
right
to
the
registered
mark.
The
certificate
of
registration
is
merely
a
prima
facie
proof
Members
of
the
Paris
Union
are
not
automatically
that
the
registrant
is
the
owner
of
the
registered
mark
entitled
protection
of
TM
in
this
country,
absent
actual
or
trade
name.
Evidence
of
prior
and
continuous
use
of
use
of
the
marks
in
the
local
commerce
and
trade.
True,
the
mark
or
trade
name
by
another
can
overcome
the
the
PH
adherence
to
Paris
Convention
effectively
presumptive
ownership
of
the
registrant
and
may
very
obligates
the
country
to
honor
and
enforce
its
provisions
well
entitle
the
former
to
be
declared
owner
in
an
as
regards
the
protection
of
industrial
property
of
appropriate
case.
foreign
nationals
in
this
country.
However,
any
protection
accorded
has
to
be
made
subject
to
the
Among
the
effects
of
registration
of
a
mark,
as
limitations
of
PH
laws.
catalogued
by
the
Court
in
Lorenzana
v.
Macagba,
are:
The
registration
of
TM
cannot
be
deemed
conclusive
as
1.
Registration
in
the
Principal
Register
gives
to
the
actual
use
of
such
TM
in
local
commerce.
As
it
rise
to
a
presumption
of
the
validity
of
the
were,
registration
does
not
confer
upon
the
registrant
registration,
the
registrant's
ownership
of
the
an
absolute
right
to
the
registered
mark.
The
certificate
mark,
and
his
right
to
the
exclusive
use
thereof.
of
registration
merely
constitutes
prima
facie
evidence
x
x
x
that
the
registrant
is
the
owner
of
the
registered
mark.
Evidence
of
non-‐usage
of
the
mark
rebuts
the
2.
Registration
in
the
Principal
Register
is
presumption
of
TM
ownership,
as
what
happened
here
limited
to
the
actual
owner
of
the
trademark
when
petitioners
no
less
admitted
not
doing
business
in
and
proceedings
therein
pass
on
the
issue
of
this
country.
ownership,
which
may
be
contested
through
opposition
or
interference
proceedings,
or,
Registration
in
the
PH
of
TM
does
not
ipso
facto
convey
after
registration,
in
a
petition
for
cancellation.
an
absolute
right
or
exclusive
ownership
thereof.
The
xxx
registration
of
TM
unaccompanied
by
actual
use
thereof
in
the
country
accords
the
registrant
only
the
standing
to
Ownership
of
a
mark
or
trade
name
may
be
acquired
not
sue
for
infringement
in
the
PH
courts.
Entitlement
to
necessarily
by
registration
but
by
adoption
and
use
in
protection
of
such
TM
in
the
country
is
entirely
a
trade
or
commerce.
As
between
actual
use
of
a
mark
different
matter.
without
registration,
and
registration
of
the
mark
without
actual
use
thereof,
the
former
prevails
over
the
SHANGRI-‐LA
INTERNATIONAL
HOTEL
MANAGEMENT,
LTD.
V.
latter.
For
a
rule
widely
accepted
and
firmly
entrenched,
because
it
has
come
down
through
the
years,
is
that
DEVELOPERS
GROUP
OF
COMPANIES,
INC.
(2006)
actual
use
in
commerce
or
business
is
a
pre-‐requisite
to
Refresher:
the
acquisition
of
the
right
of
ownership.
Trademark
in
issue:
“Shangri-‐la”
and
the
“S”
logo
68 z
Intellectual Property Law
While
the
present
law
on
trademarks
has
dispensed
with
or
the
name,
signature,
or
portrait
of
a
deceased
the
requirement
of
prior
actual
use
at
the
time
of
President
of
the
Philippines,
during
the
life
of
his
widow,
registration,
the
law
in
force
at
the
time
of
registration
if
any,
except
by
written
consent
of
the
widow;
must
be
applied,
and
thereunder
it
was
held
that
as
a
condition
precedent
to
registration
of
trademark,
trade
(d)
Is
identical
with
a
registered
mark
belonging
to
a
name
or
service
mark,
the
same
must
have
been
in
different
proprietor
or
a
mark
with
an
earlier
filing
or
actual
use
in
the
Philippines
before
the
filing
of
the
priority
date,
in
respect
of:
application
for
registration.
Trademark
is
a
creation
of
use
and
therefore
actual
use
is
a
pre-‐requisite
to
(i)
The
same
goods
or
services,
or
exclusive
ownership
and
its
registration
with
the
Philippine
Patent
Office
is
a
mere
administrative
(ii)
Closely
related
goods
or
services,
or
confirmation
of
the
existence
of
such
right.
(iii)
If
it
nearly
resembles
such
a
mark
as
to
be
By
itself,
registration
is
not
a
mode
of
acquiring
likely
to
deceive
or
cause
confusion;
ownership.
When
the
applicant
is
not
the
owner
of
the
trademark
being
applied
for,
he
has
no
right
to
apply
for
(e)
Is
identical
with,
or
confusingly
similar
to,
or
registration
of
the
same.
Registration
merely
creates
a
constitutes
a
translation
of
a
mark
which
is
considered
prima
facie
presumption
of
the
validity
of
the
registration,
by
the
competent
authority
of
the
Philippines
to
be
well-‐
of
the
registrant's
ownership
of
the
trademark
and
of
the
known
internationally
and
in
the
Philippines,
whether
or
exclusive
right
to
the
use
thereof.
Such
presumption,
just
not
it
is
registered
here,
as
being
already
the
mark
of
a
like
the
presumptive
regularity
in
the
performance
of
person
other
than
the
applicant
for
registration,
and
official
functions,
is
rebuttable
and
must
give
way
to
used
for
identical
or
similar
goods
or
services:
Provided,
evidence
to
the
contrary.
That
in
determining
whether
a
mark
is
well-‐known,
account
shall
be
taken
of
the
knowledge
of
the
relevant
SHANGRI-‐LA
INTERNATIONAL
HOTEL
MANAGEMENT,
LTD.
V.
sector
of
the
public,
rather
than
of
the
public
at
large,
including
knowledge
in
the
Philippines
which
has
been
DEVELOPERS
GROUP
OF
COMPANIES,
INC.
(2007)
obtained
as
a
result
of
the
promotion
of
the
mark;
Court
decision:
The
interpretation
of
Republic
Act
No.
166
in
the
(f)
Is
identical
with,
or
confusingly
similar
to,
or
Decision
does
not
in
any
way
diminish
the
protection
constitutes
a
translation
of
a
mark
considered
well-‐
afforded
to
valid
trademark
registrations
made
under
known
in
accordance
with
the
preceding
paragraph,
said
law.
It
was
glaringly
obvious,
however,
from
the
which
is
registered
in
the
Philippines
with
respect
to
testimony
of
movant’s
own
witness
that
DGCI’s
goods
or
services
which
are
not
similar
to
those
with
registration
of
the
subject
mark
and
logo
was
void
due
respect
to
which
registration
is
applied
for:
Provided,
to
the
existence
of
bad
faith
and
the
absence
of
the
That
use
of
the
mark
in
relation
to
those
goods
or
requisite
2-‐month
prior
use.
services
would
indicate
a
connection
between
those
goods
or
services,
and
the
owner
of
the
registered
mark:
E. Standard
for
registrability
Provided
further,
That
the
interests
of
the
owner
of
the
registered
mark
are
likely
to
be
damaged
by
such
use;
Distinctiveness.
(g)
Is
likely
to
mislead
the
public,
particularly
as
to
the
F. What
marks
may
be
registered?
nature,
quality,
characteristics
or
geographical
origin
of
the
goods
or
services;
SECTION
123.
REGISTRABILITY.
–
(h)
Consists
exclusively
of
signs
that
are
generic
for
the
123.1.
A
mark
cannot
be
registered
if
it:
goods
or
services
that
they
seek
to
identify;
(a)
Consists
of
immoral,
deceptive
or
scandalous
matter,
(i)
Consists
exclusively
of
signs
or
of
indications
that
or
matter
which
may
disparage
or
falsely
suggest
a
have
become
customary
or
usual
to
designate
the
goods
connection
with
persons,
living
or
dead,
institutions,
or
services
in
everyday
language
or
in
bona
fide
and
beliefs,
or
national
symbols,
or
bring
them
into
contempt
established
trade
practice;
or
disrepute;
(j)
Consists
exclusively
of
signs
or
of
indications
that
may
(b)
Consists
of
the
flag
or
coat
of
arms
or
other
insignia
serve
in
trade
to
designate
the
kind,
quality,
quantity,
of
the
Philippines
or
any
of
its
political
subdivisions,
or
of
intended
purpose,
value,
geographical
origin,
time
or
any
foreign
nation,
or
any
simulation
thereof;
production
of
the
goods
or
rendering
of
the
services,
or
other
characteristics
of
the
goods
or
services;
(c)
Consists
of
a
name,
portrait
or
signature
identifying
a
particular
living
individual
except
by
his
written
consent,
o 69
Katrina Michelle Mancao
(k)
Consists
of
shapes
that
may
be
necessitated
by
CIA
GENERAL
DE
TOBACCO
V.
AHLAMBRA
CIGAR
(1916)
technical
factors
or
by
the
nature
of
the
goods
Court
descision:
themselves
or
factors
that
affect
their
intrinsic
value;
Where
plaintiff’s
registered
TN
is
“La
Flor
de
la
Isabela”
which
it
uses
by
way
of
advertisements,
signs
over
the
(l)
Consists
of
color
alone,
unless
defined
by
a
given
place
of
business,
upon
letter
heads
and
in
other
ways
to
form;
or
furnish
the
public
a
method
of
distinguishing
the
plaintiff’s
business,
and
sends
its
manufactured
products
(m)
Is
contrary
to
public
order
or
morality.
into
the
market
with
such
TN
upon
them,
the
plaintiff
acquire
no
trade-‐name
rights
in
the
single
word
“Isabela”
123.2.
As
regards
signs
or
devices
mentioned
in
where
it
is
not
claimed
that
the
use
of
the
word
“Isabela”
paragraphs
(j),
(k),
and
(l),
nothing
shall
prevent
the
is
an
infringement
of
the
trade-‐name
“La
Flor
de
la
registration
of
any
such
sign
or
device
which
has
become
Isabela.”
distinctive
in
relation
to
the
goods
for
which
registration
is
requested
as
a
result
of
the
use
that
have
been
made
“Isabela”
is
a
name,
quality
or
description
of
the
of
it
in
commerce
in
the
Philippines.
The
Office
may
merchandise
in
connectin
with
which
the
word
is
used,
accept
as
prima
facie
evidence
that
the
mark
has
or
the
geographical
place
of
its
production
and
origin,
become
distinctive,
as
used
in
connection
with
the
and
the
statute
provides
that
such
a
name
cannot
be
applicant's
goods
or
services
in
commerce,
proof
of
appropriated
as
a
trademark
or
a
trade-‐name.
substantially
exclusive
and
continuous
use
thereof
by
the
applicant
in
commerce
in
the
Philippines
for
five
(5)
ANG
TIBAY
V.
TEODORO,
SUPRA
years
before
the
date
on
which
the
claim
of
Court
decision:
distinctiveness
is
made.
"Ang
Tibay"
is
not
a
descriptive
term
within
the
meaning
of
the
Trade-‐Mark
Law
but
rather
a
fanciful
or
coined
123.3.
The
nature
of
the
goods
to
which
the
mark
is
phrase
which
may
properly
and
legally
be
appropriated
applied
will
not
constitute
an
obstacle
to
registration.
as
a
trademark
or
trade-‐name.
ETEPHA
V.
DIRECTOR
OF
PATENTS,
SUPRA
ARCE
SONS
V.
SELECTA
BISCUITS
(1961)
Court
decision:
Court
decision:
Tussin
is
merely
descriptive;
it
is
generic;
it
furnishes
to
The
word
“Selecta”
may
be
an
ordinary
or
common
the
buyer
no
indication
of
the
origin
of
the
goods;
it
is
word
in
the
sense
that
it
may
be
used
or
employed
by
open
for
appropriation
by
anyone.
It
is
accordingly
anyone
in
promoting
his
business
or
enterprise
BUT
once
barred
from
registration
as
a
trademark.
But
while
adopted
or
coined
in
connection
with
one’s
business
as
“Tussin”
by
itself
cannot
thus
be
used
exclusively
to
an
emblem
or
sign
to
characterize
its
products,
or
as
a
identify
one’s
goods,
it
may
properly
become
the
subject
badge
of
authenticity,
it
may
acquire
a
secondary
of
a
trademark
by
“combination
with
another
word
or
meaning
as
to
be
exclusively
associated
with
its
products
phrase."
and
business.
BAXTER
V.
ZUASUA
(1905)
“DOCTRINE
OF
SECONDARY
MEANING”
a
word
or
Refresher:
phrase
originally
incapable
of
exclusive
appropriation
“Agua
de
Kananga”
and
“Kananga
Superior”
are
toilet
with
reference
to
an
article
on
the
market
because
waters
produced
by
two
competing
companies.
Baxter
geographically
or
otherwise
descriptive,
might
acquired
right
to
use
TM
of
Agua
de
Kananga.
Kananga
is
nevertheless
have
been
used
so
long
and
so
exclusively
a
flower.
by
one
producer
with
reference
to
his
article
that,
in
that
trade
and
to
that
branch
of
the
purchasing
public,
the
Doctrine:
word
or
phrase
has
come
to
mean
that
the
article
was
IF
the
goods
in
question
had
really
nothing
to
do
with
his
product.
the
said
flower,
then
it
was
not
lawful
for
the
plaintiffs
to
sell
them
to
the
public
under
the
name
of
“Agua
de
The
word
“Selecta”
may
be
placed
at
par
with
the
words
Kananga”
because
the
people
might
be
deceived
as
to
“Ang
Tibay”
which
this
Court
has
considered
not
merely
the
nature
of
the
goods,
taking
for
“Kananga”
an
article
as
descriptive
term
within
the
meaning
of
the
TM
Law
which
as
a
matter
of
fact,
had
nothing
to
do
with
the
but
as
“fanciful”
or
“coined
phrase”
or
a
trademark.
said
flower.
KABUSHI
KAISHA
ISETAN
V.
IAC,
SUPRA
The
names
and
denominations
generally
used
in
Court
decision:
commerce
to
designate
the
class
of
goods
or
It
might
be
pertinent
at
this
point
to
stress
that
what
is
merchandise
cannot
be
the
subject
of
a
trademark.
involved
in
this
case
is
not
so
much
a
trademark
as
a
tradename.
Isetann
Department
Store,
Inc.
is
the
name
70 z
Intellectual Property Law
of
a
store
and
not
of
product
sold
in
various
parts
of
the
this
ground
alone,
Fredco’s
registration
of
the
mark
country.
This
case
must
be
differentiated
from
cases
"Harvard"
should
have
been
disallowed.
involving
products
bearing
such
familiar
names
as
"colgate",
"Singer".
"Toyota",
or
"Sony"
where
the
“Harvard”
is
a
well-‐known
name
and
mark
not
only
in
products
are
marketed
widely
in
the
Philippines.
There
is
the
United
States
but
also
internationally,
including
the
not
product
with
the
name
"Isetann"
popularized
with
Philippines.
The
mark
"Harvard"
is
rated
as
one
of
the
that
brand
name
in
the
Philippines.
Unless
one
goes
to
most
famous
marks
in
the
world.
It
has
been
registered
the
store
called
Isetann
in
Manila,
he
would
never
know
in
at
least
50
countries.
It
has
been
used
and
promoted
what
the
name
means.
Similarly,
until
a
Filipino
buyer
extensively
in
numerous
publications
worldwide.
It
has
steps
inside
a
store
called
"Isetan"
in
Tokyo
or
Hongkong,
established
a
considerable
goodwill
worldwide
since
the
that
name
would
be
completely
alien
to
him.
The
records
founding
of
Harvard
University
more
than
350
years
ago.
show
that
among
Filipinos,
the
name
cannot
claim
to
be
It
is
easily
recognizable
as
the
trade
name
and
mark
of
internationally
well-‐known.
Harvard
University
of
Cambridge,
Massachusetts,
U.S.A.,
internationally
known
as
one
of
the
leading
educational
ASIA
BREWERY
V.
CA
(1933)
institutions
in
the
world.
As
such,
even
before
Harvard
Court
decision:
University
applied
for
registration
of
the
mark
"Harvard"
The
fact
that
the
words
“pale
pilsen”
are
part
of
ABI’s
in
the
Philippines,
the
mark
was
already
protected
under
trademark
does
not
constitute
an
infringement
of
SMC’s
Article
6bis
and
Article
8
of
the
Paris
Convention.
Again,
trademark
(San
Miguel
Pale
Pilsen)
for
“pale
pilsen”
are
even
without
applying
the
Paris
Convention,
Harvard
generic
words
descriptive
of
the
color
(pale),
of
a
strong
University
can
invoke
Section
4(a)
of
R.A.
No.
166
which
type
of
beer
(pilsen)
which
is
a
light
bohemian
beer
with
prohibits
the
registration
of
a
mark
"which
may
a
strong
hops
flavor
that
originated
in
the
City
of
Pilsen
disparage
or
falsely
suggest
a
connection
with
persons,
in
Czechoslovakia
and
became
famous
in
the
Middle
living
or
dead,
institutions,
beliefs
x
x
x."
Ages.
“Pilsen”
is
primarily
geographically
descriptive
word,
hence,
non-‐registrabel
and
not
appropriable
by
02
February
2012
any
beer
manufacturer.
DEFINITION
OF
“TRADEMARK”
EMERALD
GARMENT
MANUFACTURING
V.
CA
AND
H.D.
LEE
-‐ Scent
and
aural
cannot
be
trademarks
because
Phil
law
on
visible
signs
CO.,
INC.
(1995)
Refresher:
FUNCTIONS
OF
A
TRADEMARK
H.D.
Lee
Co.
=
a
Delaware
corp.,
owner
of
the
“Lee”
-‐ Traditional
purpose
–
Point
out
the
source
of
trademark
goods
or
services.
o This
began
when
artisans
decided
to
Emerald
Garment
Manufacturing
=
domestic
corp.,
put
mark
on
their
goods
to
indicate
registrant
of
“Stylistic
Mr.
Lee”
trademark
used
on
skirts,
who
made
the
goods,
where
the
jeans,
blouses,
socks,
briefs,
jackets,
jogging
suits,
good
were
made.
dresses,
shorts,
shirts
and
lingerie
under
Class
25.
-‐ Why
should
trademarks
be
recognized
and
protected?
Court
decision:
o To
encourage
the
enterprise
to
invest
"LEE"
is
primarily
a
surname.
Private
respondent
cannot,
in
the
creation
of
durable
goods
therefore,
acquire
exclusive
ownership
over
and
singular
through
the
guaranty
that
if
they
use
of
said
term.
It
has
been
held
that
a
personal
name
continue
to
bring
goods
in
such
or
surname
may
not
be
monopolized
as
a
trademark
or
market,
their
identity
is
protected,
tradename
as
against
others
of
the
same
name
or
their
market
is
secured
because
no
surname.
For
in
the
absence
of
contract,
fraud,
or
other
person
can
appropriate
their
estoppel,
any
man
may
use
his
name
or
surname
in
all
marks.
If
the
enterprise
invest
in
their
legitimate
ways.
Thus,
"Wellington"
is
a
surname,
and
its
services
and
it
acquires
goodwill,
the
first
user
has
no
cause
of
action
against
the
junior
user
of
goodwill
will
be
preserved
because
"Wellington"
as
it
is
incapable
of
exclusive
appropriation.
no
other
person
allowed
to
make
use
of
its
mark
that
would
undermine
FREDCO
MANUFACTURING
CORP.
V.
PRESIDENT
AND
your
integrity
in
the
market.
FELLOWS
OF
HARVARD
COLLEGE
(2011)
o In
turn,
the
public
will
benefit
from
the
creation
of
superior
goods.
Court
decision:
-‐ Current
purpose
changed
–
Trademark
has
Fredco’s
use
of
the
mark
“Harvard,”
coupled
with
its
evolved
with
centuries
of
use.
Because
the
claimed
origin
in
Cambridge,
Massachusetts,
obviously
marketplace
has
become
global,
trademarks
suggests
a
false
connection
with
Harvard
University.
On
has
evolved
from
mere
source
indicators,
to
o 71
Katrina Michelle Mancao
serving
very
critical
functions
especially
in
a
Royce
but
not
call
it
as
such.
crowded
marketplace.
Later,
BMW
acquired
the
o Associative
quality
for
luxury
brands
–
mark
from
Aero
Engine.
because
of
a
particular
trademark,
BMW
gave
Volkswagen
a
consumers
would
choose
to
buy
the
year
to
use
its
mark.
product
because
they
want
to
belong
to
a
particular
class.
How
are
marks
acquired?
§ Mark
is
associated
with
a
-‐ Now
(under
the
IPC):
Through
registration.
particular
class
or
lifestyle.
-‐ Previously:
Through
actual
use.
People
wearing
a
brand
(if
-‐ Because
of
this
shift/change
in
the
basis
of
genuine)
belong
to
a
special
ownership
over
trademarks,
it
presents
a
host
class
of
people.
of
interesting
transitional
problems:
§ When
a
mark
creates
a
certain
o Under
old
law,
the
owner
of
the
mark
kind
of
image,
it
can
make
was
prior
user
in
Philippine
commerce
consumers
want
it.
(Unno
Commercial
Enterprises
vs.
§ It
creates
a
segment
of
the
General
Milling).
First
user/entity
who
population.
Without
the
used
it
in
commerce
owns
the
mark.
consumers
realizing
it,
they
buy
o NOTE:
Under
the
old
law,
local
not
just
the
product
but
also
the
applicants
were
required
to
use
the
lifestyle.
mark
for
at
least
2
months
prior
to
o Bearer
of
information
–
it
is
the
heart
the
filing
of
the
application.
If
you
of
a
business.
want
to
file,
you
must
have
used
the
§ It
bears
information
that
such
mark
2
months
prior
to
filing
of
thing
was
created
by
the
application.
manufacturer.
§ It’s
a
very
risky
undertaking
à
To
o It
is
the
hear
of
the
business.
own
the
mark,
one
has
to
build
§ It
has
a
direct
effect
on
the
the
business
and
spend
for
company’s
profits;
whether
the
investments,
put
up
store,
company
that
will
flourish
or
incorporate,
hire
accountant
and
become
bankrupt.
signage
maker,
and
do
your
§ Strength
of
the
mark
dictates
marketing
materials.
Since
one
is
the
premium
of
the
price.
required
to
have
used
mark
for
§ Trademark
has
become
an
asset
at
least
2
month
prior
to
the
of
the
company.
It
is
hard
to
filing
of
application,
for
2
distinguish
between
it
and
a
months,
you’re
taking
a
risk
that
business.
If
the
company
loses
its
somebody
else
might
use
your
right
to
a
trademark,
it
also
loses
mark.
In
the
meantime,
you
the
business.
already
have
spent
your
money
§ Note:
As
an
asset,
you
can
sell
and
sunk
in
the
cost.
the
trademark
independently
of
§ That
was
the
requirement
the
business.
because
under
the
law,
actual
• Ex:
Volkswagen
and
BMW
use
was
the
basis
of
ownership.
bid
for
the
trademark
of
o Why
change
the
law?
Rolls-‐Royce.
Volkswagen
§ Because
the
Philippines
became
won
the
bidding.
Why
did
a
party
to
the
Paris
Convention.
they
want
to
acquire
the
It
required
us
to
adhere
to
the
trademark?
Because
it
is
“national
treatment”
principle.
very
difficult
to
build
a
brand.
Unfortunately,
the
Kabushi
Kaisha
Isetan
v
IAC
car
companies
did
not
do
a
-‐ Case
between
a
local
registrant
and
a
foreign
due
diligence
investigation.
non-‐user.
They
did
not
realize
that
the
-‐ Local
user
prevailed
because
the
old
law
based
trademark
did
not
belong
to
ownership
of
the
trademark
on
actual
use.
the
car
company.
The
Since
there
was
no
actual
use
for
Kabushi
trademark
belonged
to
Aero
Kaisha
in
the
PH,
there
was
no
goodwill
to
be
Engine.
What
Volkswagen
protected.
bought
was
the
factory.
-‐ BUT
the
Court
recognized
an
exception
à
Thus,
it
can
build
Rolls-‐ Under
the
Paris
Convention,
States
are
72 z
Intellectual Property Law
required to recognize well-‐known trademark. o ONLY EXCEPTION: internationally
o Exception has following elements: well-‐known mark
1. the mark must be internationally • The only way a prior registrant user will not
known or well known; prevail is if use was subsequent to the filing of
2. the subject of the mark must be the application.
a trademark;
3. the mark must be for use in the NOW à Registration is the basis of ownership.
same or similar kinds of goods; -‐ Under IPC, are you required to make use of
4. the person claiming must be the mark prior to filing of application? No.
owner of the mark.
-‐ Kabushi Kaisha was not able to prove the Standard of registerability: Distinctiveness.
RECAP: WHAT MARKS MAY NOT BE REGISTERED?
GR: First user (Established in the law and Unno) -‐ Basically, Section 123 IPC is an enumeration of
EXCEPTION: First user who did not use in PH marks that are not distinctive; i.e. Incapable of
commerce pointing our source of goods or services.
EXCEPTION TO THE EXCEPTION: First
user, unregistered and not used in PH Deceptive
Commerce AND internationally well-‐ -‐ Cannot be distinctive because suggests a false
known (e.g. Kabushi Kaisha) – connection.
Applying Paris Convention -‐ E.g. Jose Rizal Shoes
Philip Morris cases Flag/ Coat of arms
-‐ Between a registrant non-‐user vs. non-‐ -‐ Paris Convention makes obligation not to allow
registrant user of the mark in the Philippine registration of flags or national symbols. They
commerce? are outside commerce of men.
o The user prevails because ownership o Everyone can make use of the mark
of trademark is on the basis of use in to indicate origin but it cannot be a
the Philippine commerce. While Philip trademark. It cannot be appropriated
Morris was registrant, it did not make by manufacturer at the expense of
use of the same. the rest.
-‐ BUT: There are certain countries that have
Shangrila v. DGCI acquired a certain reputation for producing
-‐ Case between a registrant user (the restaurant) goods of superior quality. Companies based
and the hotel that wants to come in. here could use the country’s flag, not as
-‐ The Hotel prevailed and restaurant’s trademark, but as an indicia of the country of
registration was cancelled. Why? origin of the goods.
o Evidence showed that there was no o E.g. Switzerland. Swiss have strong
actual use prior to the filing of laws about who can use the mark. To
application. There was a violation of be able to use the flag, the Swiss
the requirements the RA 166, thus the company must be able to meet a
registration was not a valid certain quality, and undergo quality
registration. control. The Swiss government wants
o You may be the registrant and prior to ensure that those who use Swiss
user BUT if you failed to comply with flags would maintain the standard so
requirement of actual use before that their reputation of producing
filing of application, you will lose the superior goods will be maintained.
registration because the registration
will be invalid. Name, portrait or signature identifying a particular living
individual
The foregoing were cases decided under a different law -‐ If a famous doctor’s name is being used in
(RA 166) – PRIOR to the passage of the IP Code. Thus: relation to cosmetic products, will the
• Prior use was the basis of ownership of the trademark be allowed?
trademark. o Yes, if done with the consent of the
• Prior user in Philippine commerce shall own the doctor.
trademark. -‐ If the person has died, what will you do to
• Prior user in Philippine commerce will prevail as make use of the name, etc?
against a registrant non-‐user. o Get heirs’ consent.
o 73
Katrina Michelle Mancao
Identical
with
a
registered
mark,
or
a
mark
with
an
Generic
earlier
filing/priority
date
-‐ E.g.
shoes,
bags,
damit,
blusa,
pantalon,
radyo.
-‐ Very
important
because
this
indicated
the
shift.
-‐ They
refer
to
the
goods/services
themselves.
-‐ “Likely
to
deceive/cause
confusion”
means
you
Therefore,
nobody
can
monopolize
or
don’t
even
have
to
prove
actual
confusion
for
appropriate
them,
it
cannot
be
acquired
by
as
long
as
there
is
likelihood
of
confusion.
anyone.
-‐ This
shows
to
you
that
our
TM
regime
has
o If
you
allow
somebody
to
exclusively
shifted
to
a
first-‐to-‐file
system
because
a
mere
use
them,
it
would
be
to
the
application
with
an
earlier
filing
date
can
detriment
of
everyone
else.
Imagine,
prevent
subsequent
application
for
the
same
you
can
no
longer
sell
bags
because
or
confusingly
similar
mark
subsequently
filed.
bags
have
become
a
trademark!
o It’s
very
critical
now
to
file
an
application
ASAP
because
owner
of
Become
customary
or
usual
to
designate
the
goods
or
mark
with
earlier
filing
date
would
services
in
everyday
language
prevail
as
against
the
owner
of
a
mark
-‐ This
refers
to
the
phenomena
called
with
a
later
filing
date.
Time
is
critical
“genericide”
à
marks
that
used
to
be
and
essential.
distinctive
lose
their
distinctiveness
because
of
popularity
of
the
mark.
Well-‐known
mark
(123.1e
and
123.1f)
-‐ The
downside
of
being
a
strong
mark
that
-‐ E
and
F
both
deal
with
WELL-‐KNOWN
MARK
people
stop
referring
to
the
generic
term
of
locally
and
internationally.
good/services
but
actually
use
the
trademark
-‐ What’s
the
difference
between
the
two?
as
generic
term.
o Under
E:
speaks
about
well-‐known
-‐ E.g.
“Kodak”
in
Ph;
Xerox;
Sunkist
mark
WON
registered
-‐ Xerox
and
Kodak
are
arbitrary
trademarks;
i.e.
o Under
F:
speaks
about
registered
they
were
just
coined
by
the
manufacturers/
well-‐known
mark.
they
never
existed
before.
-‐ What’s
the
difference
in
terms
of
scope
of
o In
the
realm
of
trademarks,
arbitrary
protection?
marks
should
be
entitled
to
the
o E:
protected
only
against
use
for
strongest
protection.
identical
or
similar
goods
or
services.
o The
Philippines
seem
to
defy
that.
o F:
protected
also
as
against
use
for
The
more
arbitrary
the
trademark
is,
goods
or
services
not
similar
to
those
the
more
we
think
we
have
license
to
with
respect
to
which
registration
is
use
them.
(ex.
Colgate,
Frigidaire)
applied
for.
-‐ Other
trademarks
that
have
fallen
in
the
public
-‐ The
foregoing
illustrated
why
registration
in
domain
–
escalator;
elevator;
nylon;
thermos
the
Philippines
of
a
well-‐known
mark
is
still
o Owners
of
these
didn’t
work
hard
practical
à
scope
of
protection
after
enough
to
prevent
the
falling
into
registration
would
be
broader:
public
domain
of
their
trademarks.
o They
could
oppose
the
filing
of
-‐ What’s
the
best
evidence
to
prove
that
the
applications
for
the
same
or
mark
has
become
generic,
a
victim
of
confusingly
similar
mark
even
for
genericide,
has
lost
its
distinctiveness
and
goods/services
that
are
dissimilar
if
therefore,
may
be
cancelled?
you
had
registered
in
the
PH.
o Existence
of
the
word
in
the
-‐ In
short,
it
appears
that
under
the
IPC,
only
dictionary.
registered
internationally
well-‐known
mark
in
§ Existence
in
the
dictionary
the
Philippines
can
oppose
on
the
ground
of
means
it
forms
part
of
the
dilution.
lexicon.
o On
the
other
hand,
an
unregistered
§ Companies
spend
a
great
deal
well-‐known
mark
cannot
raise
for
service
watch
to
check
US
dilution.
The
scope
of
protection
for
dictionaries
to
make
sure
that
an
unregistered
well-‐known
mark
is
well-‐known
marks
have
not
been
limited
to
similar
or
identical
goods
or
incorporated
in
the
dictionary
services.
Characteristics
of
the
goods
or
services
Can
mislead
the
public
-‐ Also
known
as
“descriptive
marks”
-‐ Because
it’s
misleading,
therefore,
it
cannot
be
-‐ Being
merely
descriptive,
they
do
not
help
in
descriptive.
pointing
out
the
source
or
origin
of
the
good.
74 z
Intellectual Property Law
G. Application for registration
Contrary to public order or morality
1. Application
RECAP:
GR: The foregoing cannot be registered because they do
not meet the standards of distinctiveness. SECTION 3. INTERNATIONAL CONVENTIONS AND
RECIPROCITY. –
EXCEPTION: Certain marks may be registered Any person who is a national or who is domiciled or has
provided they acquired secondary meaning. a real and effective industrial establishment in a country
which is a party to any convention, treaty or agreement
What are these marks that may be registered? relating to intellectual property rights or the repression
1. Descriptive marks of unfair competition, to which the Philippines is also a
2. Shapes party, or extends reciprocal rights to nationals of the
3. Colors Philippines by law, shall be entitled to benefits to the
extent necessary to give effect to any provision of such
While not registrable at first instance because they are convention, treaty or reciprocal law, IN ADDITION to
deemed non-‐distinctive, they may be registered the rights to which any owner of an intellectual property
provided they have acquired secondary meaning. right is otherwise entitled by this Act.
What is “SECONDARY MEANING”? SECTION 124. REQUIREMENTS OF APPLICATION. –
-‐ Originally not distinctive but through its use by
124.1. The application for the registration of the mark
relevant public has become distinctive.
-‐ Under the old law (RA 166) à proprietor can shall be in Filipino or in English and shall contain the
use the supplemental register to support the following:
claim that the term has acquired secondary
meaning. (a) A request for registration;
o Now, there is no supplemental
register. Propritor would have to (b) The name and address of the applicant;
convince IPO that while your mark
may be descriptive, shapes, colors, he (c) The name of a State of which the applicant is a
national or where he has domicile; and the name of a
has exclusively and continuously
State in which the applicant has a real and effective
used it for at 5 years à the mark has
industrial or commercial establishment, if any;
acquired a secondary meaning that
would now entitle him to register.
(d) Where the applicant is a juridical entity, the law under
Choice of trademark is very critical to any business. If the which it is organized and existing;
proprietor makes a mistake and uses a non-‐registrable
(e) The appointment of an agent or representative, if the
TM, there is really an economic impact on the business.
-‐ Proprietor should be careful not to use generic applicant is not domiciled in the Philippines;
terms as the same cannot be registered. If the
proprietor has acquired goodwill for a generic (f) Where the applicant claims the priority of an earlier
application, an indication of:
term, he cannot prevent other people from
using it à generic term is always in the public
domain. i) The name of the State with whose national
o “Kamiseta” and “Bayo” (which is office the earlier application was filed or if filed
with an office other than a national office, the
Ilonggo for clothes) are
name of that office,
NOT registrable under the
IPC.
§ They are, however, ii) The date on which the earlier application
registrable under the was filed, and
old law.
iii) Where available, the application number of
the earlier application;
(g) Where the applicant claims color as a distinctive
feature of the mark, a statement to that effect as well as
the name or names of the color or colors claimed and an
indication, in respect of each color, of the principal parts
of the mark which are in that color;
o 75
Katrina Michelle Mancao
became
distinctive
of
the
applicant's
or
owner's
goods,
(h)
Where
the
mark
is
a
three-‐dimensional
mark,
a
business
or
services.
statement
to
that
effect;
SECTION
128.
SINGLE
REGISTRATION
FOR
GOODS
AND/OR
(i)
One
or
more
reproductions
of
the
mark,
as
prescribed
SERVICES.
–
in
the
Regulations;
Where
goods
and/or
services
belonging
to
several
classes
of
the
Nice
Classification
have
been
included
in
(j)
A
transliteration
or
translation
of
the
mark
or
of
some
one
(1)
application,
such
an
application
shall
result
in
one
parts
of
the
mark,
as
prescribed
in
the
Regulations;
registration.
(k)
The
names
of
the
goods
or
services
for
which
the
registration
is
sought,
grouped
according
to
the
classes
SECTION
130.
SIGNATURE
AND
OTHER
MEANS
OF
SELF-‐
of
the
Nice
Classification,
together
with
the
number
of
IDENTIFICATION.
–
the
class
of
the
said
Classification
to
which
each
group
of
130.1.
Where
a
signature
is
required,
the
Office
shall
goods
or
services
belongs;
and
accept:
(l)
A
signature
by,
or
other
self-‐identification
of,
the
(a)
A
hand-‐written
signature;
or
applicant
or
his
representative.
(b)
The
use
of
other
forms
of
signature,
such
as
a
printed
124.2.
The
applicant
or
the
registrant
shall
file
a
or
stamped
signature,
or
the
use
of
a
seal
instead
of
a
declaration
of
actual
use
of
the
mark
with
evidence
to
hand-‐written
signature:
Provided,
That
where
a
seal
is
that
effect,
as
prescribed
by
the
Regulations
within
three
used,
it
should
be
accompanied
by
an
indication
in
(3)
years
from
the
filing
date
of
the
application.
letters
of
the
name
of
the
signatory.
Otherwise,
the
application
shall
be
refused
or
the
mark
shall
be
removed
from
the
Register
by
the
Director.
130.2.
The
Office
shall
accept
communications
to
it
by
telecopier,
or
by
electronic
means
subject
to
the
124.3.
One
(1)
application
may
relate
to
several
goods
conditions
or
requirements
that
will
be
prescribed
by
the
and/or
services,
whether
they
belong
to
one
(1)
class
or
Regulations.
When
communications
are
made
by
to
several
classes
of
the
Nice
Classification.
telefacsimile,
the
reproduction
of
the
signature,
or
the
reproduction
of
the
seal
together
with,
where
required,
124.4.
If
during
the
examination
of
the
application,
the
the
indication
in
letters
of
the
name
of
the
natural
Office
finds
factual
basis
to
reasonably
doubt
the
person
whose
seal
is
used,
appears.
The
original
veracity
of
any
indication
or
element
in
the
application,
it
communications
must
be
received
by
the
Office
within
may
require
the
applicant
to
submit
sufficient
evidence
thirty
(30)
days
from
date
of
receipt
of
the
telefacsimile.
to
remove
the
doubt.
130.3.
No
attestation,
notarization,
authentication,
SECTION
125.
REPRESENTATION;
ADDRESS
FOR
SERVICE.
–
legalization
or
other
certification
of
any
signature
or
If
the
applicant
is
not
domiciled
or
has
no
real
and
other
means
of
self-‐identification
referred
to
in
the
effective
commercial
establishment
in
the
Philippines,
he
preceding
paragraphs,
will
be
required,
except,
where
shall
designate
by
a
written
document
filed
in
the
Office,
the
signature
concerns
the
surrender
of
a
registration.
the
name
and
address
of
a
Philippine
resident
who
may
be
served
notices
or
process
in
proceedings
affecting
SECTION
131.
PRIORITY
RIGHT.
–
the
mark.
Such
notices
or
services
may
be
served
upon
131.1.
An
application
for
registration
of
a
mark
filed
in
the
the
person
so
designated
by
leaving
a
copy
thereof
at
Philippines
by
a
person
referred
to
in
Section
3,
and
who
the
address
specified
in
the
last
designation
filed.
If
the
previously
duly
filed
an
application
for
registration
of
the
person
so
designated
cannot
be
found
at
the
address
same
mark
in
one
of
those
countries,
shall
be
considered
given
in
the
last
designation,
such
notice
or
process
may
as
filed
as
of
the
day
the
application
was
first
filed
in
the
be
served
upon
the
Director.
foreign
country.
SECTION
126.
DISCLAIMERS.
–
131.2.
No
registration
of
a
mark
in
the
Philippines
by
a
The
Office
may
allow
or
require
the
applicant
to
disclaim
person
described
in
this
section
shall
be
granted
until
an
unregistrable
component
of
an
otherwise
registrable
such
mark
has
been
registered
in
the
country
of
origin
of
mark
but
such
disclaimer
shall
not
prejudice
or
affect
the
the
applicant.
applicant's
or
owner's
rights
then
existing
or
thereafter
arising
in
the
disclaimed
matter,
nor
such
shall
disclaimer
131.3.
Nothing
in
this
section
shall
entitle
the
owner
of
a
prejudice
or
affect
the
applicant's
or
owner's
right
on
registration
granted
under
this
section
to
sue
for
acts
another
application
of
later
date
if
the
disclaimed
matter
committed
prior
to
the
date
on
which
his
mark
was
76 z
Intellectual Property Law
registered
in
this
country:
Provided,
That,
SECTION
132.
APPLICATION
NUMBER
AND
FILING
DATE.
–
notwithstanding
the
foregoing,
the
owner
of
a
well-‐ 132.1.
The
Office
shall
examine
whether
the
application
known
mark
as
defined
in
Section
123.1(e)
of
this
Act,
satisfies
the
requirements
for
the
grant
of
a
filing
date
as
that
is
not
registered
in
the
Philippines,
may,
against
an
provided
in
Section
127
and
Regulations
relating
thereto.
identical
or
confusingly
similar
mark,
oppose
its
If
the
application
does
not
satisfy
the
filing
requirements,
registration,
or
petition
the
cancellation
of
its
the
Office
shall
notify
the
applicant
who
shall
within
a
registration
or
sue
for
unfair
competition,
without
period
fixed
by
the
Regulations
complete
or
correct
the
prejudice
to
availing
himself
of
other
remedies
provided
application
as
required,
otherwise,
the
application
shall
for
under
the
law.
be
considered
withdrawn.
131.4.
In
like
manner
and
subject
to
the
same
conditions
132.2.
Once
an
application
meets
the
filing
requirements
and
requirements,
the
right
provided
in
this
section
may
of
Section
127,
it
shall
be
numbered
in
the
sequential
be
based
upon
a
subsequent
regularly
filed
application
in
order,
and
the
applicant
shall
be
informed
of
the
the
same
foreign
country:
Provided,
That
any
foreign
application
number
and
the
filing
date
of
the
application
application
filed
prior
to
such
subsequent
application
has
will
be
deemed
to
have
been
abandoned.
been
withdrawn,
abandoned,
or
otherwise
disposed
of,
without
having
been
laid
open
to
public
inspection
and
What’s
the
difference
between
“filing
date”
and
a
without
leaving
any
rights
outstanding,
and
has
not
“priority
date”?
served,
nor
thereafter
shall
serve,
as
a
basis
for
claiming
a
right
of
priority.
FILING
DATE
-‐
date
you
actually
filed
the
application,
PROVIDED
you
met
all
the
minimum
requirements
under
SECTION
239.2.
Marks
registered
under
Republic
Act
No.
Sec.
127.
166
shall
remain
in
force
but
shall
be
deemed
to
have
The
IPO
enforces
this
strictly,
if
inadvertently
the
duty
been
granted
under
this
Act
and
shall
be
due
for
renewal
officer
of
the
day
of
IPO
gave
you
a
filing
date
but
it
within
the
period
provided
for
under
this
Act
and,
upon
turns
out
that
you
did
not
submit
the
list
of
goods
and
renewal
shall
be
reclassified
in
accordance
with
the
services,
when
the
application
is
referred
to
trademark
International
Classification.
Trade
names
and
marks
examiner,
the
trademark
examiner
will
examine
and
if
he
registered
in
the
Supplemental
Register
under
Republic
discovers
that
you
did
not
comply
with
the
minimum
Act
No.
166
shall
remain
in
force
but
shall
no
longer
be
requirement,
the
TE
will
revoke
your
filing
date.
Pag
subject
to
renewal.
nirevoke
niya,
he
will
send
communication
that
you
forgot
one
requirement.
Only
when
you
submit
list
of
2. Assignment
of
Application
goods
and
services
that
you
will
be
given
another
filing
Number
and
Filing
Date
date.
Pati
application
number
mo
mawawala.
In
the
meantime,
if
somebody
else
files
and
application
for
same
or
confusingly
similar
mark,
lagot
ka
na.
Because
SECTION
127.
FILING
DATE.
–
your
filing
date
is
only
when
you
complied
with
the
127.1.
Requirements.
–
minimum
requirement.
It
takes
about
6
to
8
months
The
filing
date
of
an
application
shall
be
the
date
on
before
it
is
assigned
to
an
examiner.
So
there
is
a
high
which
the
Office
received
the
following
indications
and
probability
that
within
those
8
months
somebody
else
elements
in
English
or
Filipino:
filed
an
application
and
because
that
application
meets
the
minimum
requirement,
it
would
have
an
earlier
filing
(a)
An
express
or
implicit
indication
that
the
date.
As
between
you
with
revoked
filing
date
and
registration
of
a
mark
is
sought;
somebody
earlier
filing
date,
the
latter
will
prevail.
Yours
has
been
revoked,
so
critical.
Filing
date
is
date
you
(b)
The
identity
of
the
applicant;
actually
filed
provided
you
met
the
minimum
requirements
under
127.
(c)
Indications
sufficient
to
contact
the
applicant
or
his
representative,
if
any;
PRIORITY
DATE
-‐
date
when
you
filed
a
foreign
application
for
the
same
mark
in
another
country,
a
Paris
(d)
A
reproduction
of
the
mark
whose
Convention
country
or
TRIPS
country.
Then
you
filed
the
registration
is
sought;
and
application
in
the
Ph
within
6
months,
you
can
claim
the
earlier
foreign
filing
date
as
your
filing
date
in
the
Ph.
So
(e)
The
list
of
the
goods
or
services
for
which
the
law
will
deem
your
application
filed
as
of
that
date
of
the
registration
is
sought.
filing
of
the
foreign
application.
BUT
in
order
for
you
to
avail
of
foreign
priority
date,
you
must
have
filed
the
127.2.
No
filing
date
shall
be
accorded
until
the
required
Philippine
application
within
6
months
from
the
time
you
fee
is
paid.
filed
the
foreign
application.
o 77
Katrina Michelle Mancao
NB
Under
IP
Code
Sec
131,
there
is
no
6
months
the
mark
as
defined
in
Section
121
is
registrable
under
limitation.
This
is
an
error
on
the
part
of
the
drafters
of
Section
123.
IPC
because
priority
date
is
actually
a
convention
obligation
(Paris
Convention).
Under
which
there
is
6
133.2.
Where
the
Office
finds
that
the
conditions
referred
mos
limitation
to
avail
of
priority
date.
Since
every
other
to
in
Subsection
133.1
are
fulfilled,
it
shall
upon
payment
country
in
the
world
subjects
6-‐mo
period,
and
because
of
the
prescribed
fee,
forthwith
cause
the
application,
as
of
reciprocity,
why
would
we
adapt
a
longer
period
to
filed,
to
be
published
in
the
prescribed
manner.
claim
priority
date?
That
seems
to
be
the
effect
because
of
131
which
failed
to
reproduce
the
6
months
limitation
133.3.
If
after
the
examination,
the
applicant
is
not
under
the
Paris
Convention.
entitled
to
registration
for
any
reason,
the
Office
shall
-‐ But
what
the
IPO
did
was
to
issue
an
advise
the
applicant
thereof
and
the
reasons
therefor.
administrative
circular
that
clarifies
priority
The
applicant
shall
have
a
period
of
four
(4)
months
in
right
can
only
be
claimed
if
the
Philippine
which
to
reply
or
amend
his
application,
which
shall
then
application
is
filed
within
6
months.
be
re-‐examined.
The
Regulations
shall
determine
the
-‐ Basis
for
that:
procedure
for
the
re-‐examination
or
revival
of
an
a. Follow
basic
principles
of
reciprocity:
application
as
well
as
the
appeal
to
the
Director
of
Why
should
we
give
foreign
countries
Trademarks
from
any
final
action
by
the
Examiner.
who
only
limit
to
6mos
the
right
to
claim
priority
date
more
rights?
Why
133.4.
An
abandoned
application
may
be
revived
as
a
construe
IPC
to
be
limitless?
That
pending
application
within
three
(3)
months
from
the
would
be
contrary
to
national
date
of
abandonment,
upon
good
cause
shown
and
the
interest.
payment
of
the
required
fee.
b. Convention
obligation:
The
domestic
law
provision
that
implements
the
133.5.
The
final
decision
of
refusal
of
the
Director
of
international
treaty
obligation
should
be
read
in
conjunction
with
Trademarks
shall
be
appealable
to
the
Director
General
international
treaty.
So
only
within
6
in
accordance
with
the
procedure
fixed
by
the
months.
Regulations.
NOTE:
Priority
dates
are
important
because
as
between
SECTION
126.
DISCLAIMERS.
–
an
earlier
filing
date
and
an
earlier
priority
date,
the
The
Office
may
allow
or
require
the
applicant
to
disclaim
priority
date
prevails.
an
unregistrable
component
of
an
otherwise
registrable
E.g.
Jances
files
application
in
the
PH
on
01
Mar
2012,
to
mark
but
such
disclaimer
shall
not
prejudice
or
affect
the
comply
with
minimum
requirements
of
Sec.
127.
Earla
applicant's
or
owner's
rights
then
existing
or
thereafter
filed
application
for
the
same
mark
or
similar
arising
in
the
disclaimed
matter,
nor
such
shall
disclaimer
goods/services
and
she
filed
it
on
12
Mar
2012
BUT
she
prejudice
or
affect
the
applicant's
or
owner's
right
on
earlier
filed
in
SG
an
application
dated
15
Feb
2012.
When
another
application
of
later
date
if
the
disclaimed
matter
Earla
made
a
claim
on
the
basis
of
that
foreign
application,
became
distinctive
of
the
applicant's
or
owner's
goods,
a
priority
date
of
15
Feb
2012,
who
would
prevail?
Jances
or
business
or
services.
Earla?
Earla!
Although
filing
date
is
later,
she
has
a
claim
of
SECTION
129.
DIVISION
OF
APPLICATION.
–
priority.
The
law
will
deem
Earla’s
application
to
have
Any
application
referring
to
several
goods
or
services,
been
filed
as
of
15
Feb
2012
(date
she
filed
SG
hereafter
referred
to
as
the
"initial
application,"
may
be
application)
for
as
long
as
she
complies
with
the
divided
by
the
applicant
into
two
(2)
or
more
requirements
for
a
claim
of
priority,
namely,
applications,
hereafter
referred
to
as
the
"divisional
• Within
6
months
from
application
applications,"
by
distributing
among
the
latter
the
goods
• Certified
copy
of
the
application
and
or
services
referred
to
in
the
initial
application.
The
English
translation
divisional
applications
shall
preserve
the
filing
date
of
• Submission
of
foreign
registration
the
initial
application
or
the
benefit
of
the
right
of
priority.
3. Examination
Examination
consists
of
a
determination
of
compliance
with
the
formal
and
substantive
SECTION
133.
EXAMINATION
AND
PUBLICATION.
–
(WON
the
mark
is
registrable)
requirements
of
registration.
133.1.
Once
the
application
meets
the
filing
requirements
of
Section
127,
the
Office
shall
examine
whether
the
application
meets
the
requirements
of
Section
124
and
78 z
Intellectual Property Law
4. Publication Evidence received by the Philippine Patent Office
showed that Bata shoes made by Gerbec and Hrdina of
Czechoslovakia were sold in the Philippines prior to
SECTION 133.2. Where the Office finds that the
World War II. Some shoes made by Bata of Canada were
conditions referred to in Subsection 133.1 are fulfilled, it
perhaps also sold in the Philippines until 1948. However,
shall upon payment of the prescribed fee, forthwith
the trademark BATA was never registered in the
cause the application, as filed, to be published in the
Philippines by any foreign entity. Under the
prescribed manner. circumstances, it was concluded that opposer has, to all
intents and purposes, technically abandoned its
5. Opposition trademark BATA in the Philippines.
SECTION 134. OPPOSITION. – Upon the other hand, the Philippine Patent Office found
Any person who believes that he would be damaged by that New Olympian Rubber Products Co., Inc. has
the registration of a mark may, upon payment of the overwhelmingly and convincingly established its right to
required fee and within thirty (30) days after the the trademark BATA and consequently, its use and
publication referred to in Subsection 133.2, file with the registration in its favor. There is no gainsaying the truth
Office an opposition to the application. Such opposition that the respondent has spent a considerable amount of
shall be in writing and verified by the oppositor or by any money and effort in popularizing the trademark BATA
person on his behalf who knows the facts, and shall for shoes in the Philippines through the advertising
specify the grounds on which it is based and include a media since it was lawfully used in commerce on July 1,
statement of the facts relied upon. Copies of certificates 1970. It can not be denied, therefore, that it is the
of registration of marks registered in other countries or respondent-‐applicant's expense that created the
other supporting documents mentioned in the enormous goodwill of the trademark BATA in the
opposition shall be filed therewith, together with the Philippines and not the opposer as claimed in its
translation in English, if not in the English language. For opposition to the registration of the BATA mark by the
good cause shown and upon payment of the required respondent.
surcharge, the time for filing an opposition may be
extended by the Director of Legal Affairs, who shall PPO dismissed the opposition and ordered the
notify the applicant of such extension. The Regulations registration of Bata in favor of New Olympian Rubber
shall fix the maximum period of time within which to file Products Co.
the opposition.
Doctrine:
SECTION 135. NOTICE AND HEARING. – The Court was satisfied from the evidence that any slight
goodwill generated by the Czechoslovakian product
Upon the filing of an opposition, the Office shall serve
during the Commonwealth years was completely
notice of the filing on the applicant, and of the date of
abandoned and lost in the more than 35 years that have
the hearing thereof upon the applicant and the
passed since the liberation of Manila from the Japanese
oppositor and all other persons having any right, title or
troops.
interest in the mark covered by the application, as
appear of record in the Office.
New Olympian has reproduced excerpts from the
testimonies of the opposer-‐appellant's witnesses to
BATA INDUSTRIES V. CA AND NEW OLYMPIAN RUBBER prove that the opposer-‐appellant was never a user of the
PRODUCTS CO. (1982) trademark BATA either before or after the war, that the
Refresher: appellant is not the successor-‐in-‐interest of Gerbec and
New Olympian Rubber Products Co. wanted to register Hrdina who were not is representatives or agents, and
BATA for casual rubber shoes that it has allegedly used could not have passed any rights to the appellant, that
since 1 July 1970. Bata Industries, Ltd., a Canadian there was no privity of interest between the
corporation, opposed the same on the ground that it Czechoslovakian owner and the Canadian appellant and
owns, and has not abandoned, the trademark BATA. that the Czechoslovakian trademark has been
abandoned in Czechoslovakia.
The parties stipulated to the following:
1. Bata Industries, Ltd. has no license to do business in MIRPURI V. CA (1999), SUPRA
the Philippines; Refresher:
2. It is not presently selling footwear under the Trademark involved in this case: "Barbizon"
trademark BATA in the Philippines; and
3. It has no licensing agreement with any local entity or Relevant issue: Res judicata in 2 oppositions filed by the
firm to sell its products in the Philippines. Private respondent.
Opposition No. 1 à IPC No. 686:
o 79
Katrina Michelle Mancao
IPC
No.
2049
raised
the
issue
of
ownership
of
the
(a)
"confusing
similarity"
of
its
trademark
with
trademark,
the
first
registration
and
use
of
the
that
of
Escobar's;
trademark
in
the
United
States
and
other
countries,
and
the
international
recognition
and
reputation
of
the
(b)
that
the
registration
of
Escobar's
similar
trademark
established
by
extensive
use
and
trademark
will
cause
damage
to
private
advertisement
of
private
respondent's
products
for
over
respondent's
business
reputation
and
goodwill;
forty
years
here
and
abroad.
These
are
different
from
and
the
issues
of
confusing
similarity
and
damage
in
IPC
No.
686.
The
issue
of
prior
use
may
have
been
raised
in
IPC
No.
(c)
that
Escobar's
use
of
the
trademark
686
but
this
claim
was
limited
to
prior
use
in
the
amounts
to
an
unlawful
appropriation
of
a
Philippines
only.
Prior
use
in
IPC
No.
2049
stems
from
mark
previously
used
in
the
Philippines
which
private
respondent's
claim
as
originator
of
the
word
and
act
is
penalized
under
Section
4
(d)
of
the
symbol
"Barbizon,"
as
the
first
and
registered
user
of
the
Trademark
Law.
mark
attached
to
its
products
which
have
been
sold
and
advertised
worldwide
for
a
considerable
number
of
years
Opposition
No.
2
à
IPC
No.
2049:
prior
to
petitioner's
first
application
for
registration
of
her
trademark
in
the
Philippines.
Indeed,
these
are
(a)
as
early
as
1933,
it
adopted
the
word
substantial
allegations
that
raised
new
issues
and
"BARBIZON"
as
trademark
on
its
products
such
necessarily
gave
private
respondent
a
new
cause
of
as
robes,
pajamas,
lingerie,
nightgowns
and
action.
Res
judicata
does
not
apply
to
rights,
claims
or
slips;
demands,
although
growing
out
of
the
same
subject
matter,
which
constitute
separate
or
distinct
causes
of
(b)
that
the
trademark
"BARBIZON"
was
action
and
were
not
put
in
issue
in
the
former
action.
registered
with
the
United
States
Patent
Office
in
1934
and
1949;
and
that
variations
of
the
Respondent
corporation
also
introduced
in
the
second
same
trademark,
i.e.,
"BARBIZON"
with
Bee
case
a
fact
that
did
not
exist
at
the
time
the
first
case
design
and
"BARBIZON"
with
the
was
filed
and
terminated.
The
cancellation
of
petitioner's
representation
of
a
woman
were
also
certificate
of
registration
for
failure
to
file
the
affidavit
of
registered
with
the
U.S.
Patent
Office
in
1961
use
arose
only
after
IPC
No.
686.
It
did
not
and
could
not
and
1976;
have
occurred
in
the
first
case,
and
this
gave
respondent
another
cause
to
oppose
the
second
application.
Res
(c)
that
these
marks
have
been
in
use
in
the
judicata
extends
only
to
facts
and
conditions
as
they
Philippines
and
in
many
countries
all
over
the
existed
at
the
time
judgment
was
rendered
and
to
the
world
for
over
forty
years.
"Barbizon"
products
legal
rights
and
relations
of
the
parties
fixed
by
the
facts
have
been
advertised
in
international
so
determined.
When
new
facts
or
conditions
intervene
publications
and
the
marks
registered
in
36
before
the
second
suit,
furnishing
a
new
basis
for
the
countries
worldwide;
claims
and
defenses
of
the
parties,
the
issues
are
no
longer
the
same,
and
the
former
judgment
cannot
be
(d)
Escobar's
registration
of
the
similar
pleaded
as
a
bar
to
the
subsequent
action.
trademark
"BARBIZON"
in
1974
was
based
on
fraud;
and
this
fraudulent
registration
was
It
is
also
noted
that
the
oppositions
in
the
first
and
cancelled
in
1979,
stripping
Escobar
of
second
cases
are
based
on
different
laws.
The
whatsoever
right
she
had
to
the
said
mark;
opposition
in
IPC
No.
686
was
based
on
specific
provisions
of
the
Trademark
Law,
i.e.,
Section
4
(d)
on
(e)
Private
respondent's
trademark
is
entitled
confusing
similarity
of
trademarks
and
Section
8
on
the
to
protection
as
a
well-‐known
mark
under
requisite
damage
to
file
an
opposition
to
a
petition
for
Article
6bis
of
the
Paris
Convention,
Executive
registration.
The
opposition
in
IPC
No.
2049
invoked
the
Order
No.
913,
and
the
two
Memoranda
dated
Paris
Convention,
particularly
Article
6bis
thereof,
E.O.
November
20,
1980
and
October
25,
1983
of
the
No.
913
and
the
two
Memoranda
of
the
Minister
of
Trade
Minister
of
Trade
and
Industry
to
the
Director
and
Industry.
This
opposition
also
invoked
Article
189
of
of
Patents;
the
Revised
Penal
Code
which
is
a
statute
totally
different
from
the
Trademark
Law.
Causes
of
action
(f)
Escobar's
trademark
is
identical
to
private
which
are
distinct
and
independent
from
each
other,
respondent's
and
its
use
on
the
same
class
of
although
arising
out
of
the
same
contract,
transaction,
goods
as
the
latter's
amounts
to
a
violation
of
or
state
of
facts,
may
be
sued
on
separately,
recovery
on
the
Trademark
Law
and
Article
189
of
the
one
being
no
bar
to
subsequent
actions
on
others.
The
Revised
Penal
Code.
mere
fact
that
the
same
relief
is
sought
in
the
subsequent
action
will
not
render
the
judgment
in
the
80 z
Intellectual Property Law
prior
action
operative
as
res
judicata,
such
as
where
the
SECTION
137.
REGISTRATION
OF
MARK
AND
ISSUANCE
OF
A
two
actions
are
based
on
different
statutes.
Res
judicata
CERTIFICATE
TO
THE
OWNER
OR
HIS
ASSIGNEE.
–
therefore
does
not
apply
to
the
instant
case
and
respondent
Court
of
Appeals
did
not
err
in
so
ruling.
137.1.
The
Office
shall
maintain
a
Register
in
which
shall
be
registered
marks,
numbered
in
the
order
of
their
Intellectual
and
industrial
property
rights
cases
are
not
registration,
and
all
transactions
in
respect
of
each
mark,
simple
property
cases.
Trademarks
deal
with
the
required
to
be
recorded
by
virtue
of
this
law.
psychological
function
of
symbols
and
the
effect
of
these
symbols
on
the
public
at
large.
Trademarks
play
a
137.2.
The
registration
of
a
mark
shall
include
a
significant
role
in
communication,
commerce
and
trade,
reproduction
of
the
mark
and
shall
mention:
its
number;
and
serve
valuable
and
interrelated
business
functions,
the
name
and
address
of
the
registered
owner
and,
if
the
both
nationally
and
internationally.
For
this
reason,
all
registered
owner's
address
is
outside
the
country,
his
agreements
concerning
industrial
property,
like
those
on
address
for
service
within
the
country;
the
dates
of
trademarks
and
tradenames,
are
intimately
connected
application
and
registration;
if
priority
is
claimed,
an
with
economic
development.
Industrial
property
indication
of
this
fact,
and
the
number,
date
and
country
encourages
investments
in
new
ideas
and
inventions
and
of
the
application,
basis
of
the
priority
claims;
the
list
of
stimulates
creative
efforts
for
the
satisfaction
of
human
goods
or
services
in
respect
of
which
registration
has
needs.
They
speed
up
transfer
of
technology
and
been
granted,
with
the
indication
of
the
corresponding
industrialization,
and
thereby
bring
about
social
and
class
or
classes;
and
such
other
data
as
the
Regulations
economic
progress.
These
advantages
have
been
may
prescribe
from
time
to
time.
acknowledged
by
the
Philippine
government
itself.
The
Intellectual
Property
Code
of
the
Philippines
declares
137.3.
A
certificate
of
registration
of
a
mark
may
be
that
"an
effective
intellectual
and
industrial
property
issued
to
the
assignee
of
the
applicant:
Provided,
That
system
is
vital
to
the
development
of
domestic
and
the
assignment
is
recorded
in
the
Office.
In
case
of
a
creative
activity,
facilitates
transfer
of
technology,
it
change
of
ownership,
the
Office
shall
at
the
written
attracts
foreign
investments,
and
ensures
market
access
request
signed
by
the
owner,
or
his
representative,
or
by
for
our
products."
The
Intellectual
Property
Code
took
the
new
owner,
or
his
representative
and
upon
a
proper
effect
on
January
1,
1998
and
by
its
express
provision,
showing
and
the
payment
of
the
prescribed
fee,
issue
to
repealed
the
Trademark
Law,
the
Patent
Law,
Articles
such
assignee
a
new
certificate
of
registration
of
the
said
188
and
189
of
the
Revised
Penal
Code,
the
Decree
on
mark
in
the
name
of
such
assignee,
and
for
the
Intellectual
Property,
and
the
Decree
on
Compulsory
unexpired
part
of
the
original
period.
Reprinting
of
Foreign
Textbooks.
The
Code
was
enacted
to
strengthen
the
intellectual
and
industrial
property
137.4.
The
Office
shall
record
any
change
of
address,
or
system
in
the
Philippines
as
mandated
by
the
country's
address
for
service,
which
shall
be
notified
to
it
by
the
accession
to
the
Agreement
Establishing
the
World
registered
owner.
Trade
Organization
(WTO).
137.5.
In
the
absence
of
any
provision
to
the
contrary
in
The
law
does
not
require
the
oppositor
be
a
TM
owner,
this
Act,
communications
to
be
made
to
the
registered
so
long
as
he
will
sustain
damage
by
the
owner
by
virtue
of
this
Act
shall
be
sent
to
him
at
his
last
registration,
he
may
oppose.
recorded
address
and,
at
the
same,
at
his
last
recorded
address
for
service.
6. Issuance
and
Publication
of
SECTION
138.
CERTIFICATES
OF
REGISTRATION.
–
Certificate
A
certificate
of
registration
of
a
mark
shall
be
prima
facie
evidence
of
the
validity
of
the
registration,
the
SECTION
136.
ISSUANCE
AND
PUBLICATION
OF
CERTIFICATE.
registrant's
ownership
of
the
mark,
and
of
the
–
registrant's
exclusive
right
to
use
the
same
in
connection
with
the
goods
or
services
and
those
that
are
related
When
the
period
for
filing
the
opposition
has
expired,
or
thereto
specified
in
the
certificate.
when
the
Director
of
Legal
Affairs
shall
have
denied
the
opposition,
the
Office
upon
payment
of
the
required
fee,
shall
issue
the
certificate
of
registration.
Upon
issuance
SECTION
139.
PUBLICATION
OF
REGISTERED
MARKS;
of
a
certificate
of
registration,
notice
thereof
making
INSPECTION
OF
REGISTER.
–
reference
to
the
publication
of
the
application
shall
be
139.1.
The
Office
shall
publish,
in
the
form
and
within
the
published
in
the
IPO
Gazette.
period
fixed
by
the
Regulations,
the
marks
registered,
in
the
order
of
their
registration,
reproducing
all
the
particulars
referred
to
in
Subsection
137.2.
o 81
Katrina Michelle Mancao
139.2.
Marks
registered
at
the
Office
may
be
inspected
when
IPO
agrees
to
accept
non-‐use
are
very
rare
and
free
of
charge
and
any
person
may
obtain
copies
thereof
exceptional.
It
must
be
factors
beyond
your
control.
at
his
own
expense.
This
provision
shall
also
be
• Bankrupt?
Financial
circumstance
not
an
applicable
to
transactions
recorded
in
respect
of
any
acceptable
ground
registered
mark.
• Independent
of
your
will:
o Constitutional
prohibition
for
SECTION
144.
CLASSIFICATION
OF
GOODS
AND
SERVICES.
–
broadcasting
network.
IPO
accepted
144.1.
Each
registration,
and
any
publication
of
the
Office
it
so
the
mark
is
still
registered,
not
struck
down
for
use.
which
concerns
an
application
or
registration
effected
by
o Government
restriction/regulation
the
Office
shall
indicate
the
goods
or
services
by
their
names,
grouped
according
to
the
classes
of
the
Nice
• Within
1st
year
from
5th
anniversary
Classification,
and
each
group
shall
be
preceded
by
the
of
mark:
file
declaration
of
actual
number
of
the
class
of
that
Classification
to
which
that
use
to
show
that
you
are
still
using
group
of
goods
or
services
belongs,
presented
in
the
the
mark
order
of
the
classes
of
the
said
Classification.
• 10
years:
file
petition
for
renewal
144.2.
Goods
or
services
may
not
be
considered
as
being
similar
or
dissimilar
to
each
other
on
the
ground
that,
in
8. Voluntary
Cancellation
of
any
registration
or
publication
by
the
Office,
they
appear
Certificate
in
different
classes
of
the
Nice
Classification.
SECTION
140.
CANCELLATION
UPON
APPLICATION
BY
SECTION
4.2.
REGISTRANT;
AMENDMENT
OR
DISCLAIMER
OF
The
term
"TECHNOLOGY
TRANSFER
ARRANGEMENTS"
refers
to
REGISTRATION.
–
contracts
or
agreements
involving
the
transfer
of
Upon
application
of
the
registrant,
the
Office
may
permit
systematic
knowledge
for
the
manufacture
of
a
product,
any
registration
to
be
surrendered
for
cancellation,
and
the
application
of
a
process,
or
rendering
of
a
service
upon
cancellation
the
appropriate
entry
shall
be
made
in
including
management
contracts;
and
the
transfer,
the
records
of
the
Office.
Upon
application
of
the
assignment
or
licensing
of
all
forms
of
intellectual
registrant
and
payment
of
the
prescribed
fee,
the
Office
property
rights,
including
licensing
of
computer
for
good
cause
may
permit
any
registration
to
be
software
except
computer
software
developed
for
mass
amended
or
to
be
disclaimed
in
part:
Provided,
That
the
market.
amendment
or
disclaimer
does
not
alter
materially
the
character
of
the
mark.
Appropriate
entry
shall
be
made
7. Duration
of
Certificate
in
the
records
of
the
Office
upon
the
certificate
of
registration
or,
if
said
certificate
is
lost
or
destroyed,
SECTION
145.
DURATION.
–
upon
a
certified
copy
thereto.
A
certificate
of
registration
shall
remain
in
force
for
ten
(10)
years:
Provided,
That
the
registrant
shall
file
a
9. Correction
of
Mistakes
declaration
of
actual
use
and
evidence
to
that
effect,
or
shall
show
valid
reasons
based
on
the
existence
of
SECTION
142.
CORRECTION
OF
MISTAKES
MADE
BY
THE
obstacles
to
such
use,
as
prescribed
by
the
Regulations,
within
one
(1)
year
from
the
fifth
anniversary
of
the
date
OFFICE.
–
of
the
registration
of
the
mark.
Otherwise,
the
mark
shall
Whenever
a
material
mistake
in
a
registration
incurred
be
removed
from
the
Register
by
the
Office.
through
the
fault
of
the
Office
is
clearly
disclosed
by
the
records
of
the
Office,
a
certificate
stating
the
fact
and
Marks
acquired
under
RA
166
have
a
20-‐year
duration
nature
of
such
mistake
shall
be
issued
without
charge,
until
expiration.
Once
it
expires,
the
mark
can
only
be
recorded
and
a
printed
copy
thereof
shall
be
attached
to
renewed
for
a
period
of
10
years.
each
printed
copy
of
the
registration.
Such
corrected
registration
shall
thereafter
have
the
same
effect
as
the
Why
require
use
from
a
conceptual
basis?
Warehousing
of
original
certificate;
or
in
the
discretion
of
the
Director
of
trademarks
is
not
allowed.
What’s
the
point
of
the
Administrative,
Financial
and
Human
Resource
protecting
trademarks
if
not
use
for
contributing
the
Development
Service
Bureau
a
new
certificate
of
GDP,
pay
taxes,
hire
people,
no
economic
activity
at
all.
registration
may
be
issued
without
charge.
All
• There
is
single
6mon
extension
to
make
use
of
certificates
of
correction
heretofore
issued
in
the
mark.
accordance
with
the
Regulations
and
the
registration
to
which
they
are
attached
shall
have
the
same
force
and
Can
you
file
declaration
of
non-‐use?
Yes,
but
the
instances
effect
as
if
such
certificates
and
their
issuance
had
been
authorized
by
this
Act.
82 z
Intellectual Property Law
146.4. An applicant for renewal not domiciled in the
SECTION 143. CORRECTION OF MISTAKES MADE BY Philippines shall be subject to and comply with the
APPLICANT. – requirements of this Act.
Whenever a mistake is made in a registration and such
mistake occurred in good faith through the fault of the Can a trademark registration be in perpetuity forever and
applicant, the Office may issue a certificate upon the ever? Copyright can be lifetime. Yes. For as
payment of the prescribed fee: Provided, That the long as you keep renewing the mark. A
correction does not involve any change in the trademark can be forever for as long as 6 mos
registration that requires republication of the mark. prior to 10th year anniversary of registration,
you file petition for renewal which is granted
as a matter of course. The cycle goes on and
10. Renewal
on.
SECTION 146. RENEWAL. – H. Rights conferred
146.1. A certificate of registration may be renewed for
periods of ten (10) years at its expiration upon payment SECTION 147. RIGHTS CONFERRED. –
of the prescribed fee and upon filing of a request. The
request shall contain the following indications: 147.1.* Except in cases of importation of drugs and
medicines allowed under Section 72.1 of this Act and of
(a) An indication that renewal is sought; off-‐patent drugs and medicines, the owner of a
registered mark shall have the exclusive right to prevent
(b) The name and address of the registrant or all third parties not having the owner's consent from
his successor-‐in-‐interest, hereafter referred to using in the course of trade identical or similar signs or
as the "right holder"; containers for goods or services which are identical or
similar to those in respect of which the trademark is
(c) The registration number of the registration registered where such use would result in a likelihood of
concerned; confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall
(d) The filing date of the application which be presumed.
resulted in the registration concerned to be
renewed; There shall be no infringement of trademarks or
tradenames of imported or sold patented drugs and
(e) Where the right holder has a representative, medicines allowed under Section 72.1 of this Act, as well
the name and address of that representative; as imported or sold off-‐patent drugs and medicines:
Provided, That, said drugs and medicines bear the
(f) The names of the recorded goods or registered marks that have not been tampered,
services for which the renewal is requested or unlawfully modified, or infringed upon, under Section
the names of the recorded goods or services 155 of this Code.
for which the renewal is not requested,
grouped according to the classes of the Nice 147.2. The exclusive right of the owner of a well-‐known
Classification to which that group of goods or mark defined in Subsection 123.1(e)** which is registered
services belongs and presented in the order of in the Philippines, shall extend to goods and services
the classes of the said Classification; and which are not similar to those in respect of which the
mark is registered: Provided, That use of that mark in
(g) A signature by the right holder or his
representative. *
As amended by RA 9502 – Universally Accessible Cheaper and
Quality Medicines Act of 2008
146.2. Such request shall be in Filipino or English and may **
Section 123.1. A mark cannot be registered if: (e) Is identical
be made at any time within six (6) months before the with, or confusingly similar to, or constitutes a translation of a
expiration of the period for which the registration was mark which is considered by the competent authority of the
issued or renewed, or it may be made within six (6) Philippines to be well-‐known internationally and in the
months after such expiration on payment of the Philippines, whether or not it is registered here, as being already
the mark of a person other than the applicant for registration,
additional fee herein prescribed.
and used for identical or similar goods or services: Provided,
That in determining whether a mark is well-‐known, account
146.3. If the Office refuses to renew the registration, it shall be taken of the knowledge of the relevant sector of the
shall notify the registrant of his refusal and the reasons public, rather than of the public at large, including knowledge in
therefor. the Philippines which has been obtained as a result of the
promotion of the mark
o 83
Katrina Michelle Mancao
relation
to
those
goods
or
services
would
indicate
a
87.2.
Those
pursuant
to
which
the
licensor
reserves
the
connection
between
those
goods
or
services
and
the
right
to
fix
the
sale
or
resale
prices
of
the
products
owner
of
the
registered
mark:
Provided
further,
That
the
manufactured
on
the
basis
of
the
license;
interests
of
the
owner
of
the
registered
mark
are
likely
to
be
damaged
by
such
use.
87.3.
Those
that
contain
restrictions
regarding
the
volume
and
structure
of
production;
SECTION
148.
USE
OF
INDICATIONS
BY
THIRD
PARTIES
FOR
PURPOSES
OTHER
THAN
THOSE
FOR
WHICH
THE
MARK
IS
87.4.
Those
that
prohibit
the
use
of
competitive
USED.
–
technologies
in
a
non-‐exclusive
technology
transfer
Registration
of
the
mark
shall
not
confer
on
the
agreement;
registered
owner
the
right
to
preclude
third
parties
from
using
bona
fide
their
names,
addresses,
pseudonyms,
a
87.5.
Those
that
establish
a
full
or
partial
purchase
geographical
name,
or
exact
indications
concerning
the
option
in
favor
of
the
licensor;
kind,
quality,
quantity,
destination,
value,
place
of
origin,
or
time
of
production
or
of
supply,
of
their
goods
or
87.6.
Those
that
obligate
the
licensee
to
transfer
for
free
services:
Provided,
That
such
use
is
confined
to
the
to
the
licensor
the
inventions
or
improvements
that
may
purposes
of
mere
identification
or
information
and
be
obtained
through
the
use
of
the
licensed
technology;
cannot
mislead
the
public
as
to
the
source
of
the
goods
or
services.
87.7.
Those
that
require
payment
of
royalties
to
the
owners
of
patents
for
patents
which
are
not
used;
SECTION
4.2.**
The
term
"TECHNOLOGY
TRANSFER
ARRANGEMENTS"
refers
to
87.8.
Those
that
prohibit
the
licensee
to
export
the
contracts
or
agreements
involving
the
transfer
of
licensed
product
unless
justified
for
the
protection
of
the
systematic
knowledge
for
the
manufacture
of
a
product,
legitimate
interest
of
the
licensor
such
as
exports
to
the
application
of
a
process,
or
rendering
of
a
service
countries
where
exclusive
licenses
to
manufacture
including
management
contracts;
and
the
transfer,
and/or
distribute
the
licensed
product(s)
have
already
assignment
or
licensing
of
all
forms
of
intellectual
been
granted;
property
rights,
including
licensing
of
computer
software
except
computer
software
developed
for
mass
87.9.
Those
which
restrict
the
use
of
the
technology
market.
supplied
after
the
expiration
of
the
technology
transfer
arrangement,
except
in
cases
of
early
termination
of
the
SECTION
87.
PROHIBITED
CLAUSES.
–
technology
transfer
arrangement
due
to
reason(s)
Except
in
cases
under
Section
91 7 ,
the
following
attributable
to
the
licensee;
provisions
shall
be
deemed
prima
facie
to
have
an
adverse
effect
on
competition
and
trade:
87.10.
Those
which
require
payments
for
patents
and
other
industrial
property
rights
after
their
expiration,
87.1.
Those
which
impose
upon
the
licensee
the
termination
arrangement;
obligation
to
acquire
from
a
specific
source
capital
goods,
intermediate
products,
raw
materials,
and
other
87.11.
Those
which
require
that
the
technology
technologies,
or
of
permanently
employing
personnel
recipient
shall
not
contest
the
validity
of
any
of
the
indicated
by
the
licensor;
patents
of
the
technology
supplier;
87.12.
Those
which
restrict
the
research
and
development
activities
of
the
licensee
designed
to
absorb
and
adapt
the
transferred
technology
to
local
conditions
or
to
initiate
research
and
development
**
Relate
to
Sections
87,
88,
92
programs
in
connection
with
new
products,
processes
or
7
Section
91.
Exceptional
Cases.
-‐
In
exceptional
or
meritorious
equipment;
cases
where
substantial
benefits
will
accrue
to
the
economy,
such
as
high
technology
content,
increase
in
foreign
exchange
87.13.
Those
which
prevent
the
licensee
from
earnings,
employment
generation,
regional
dispersal
of
adapting
the
imported
technology
to
local
conditions,
or
industries
and/or
substitution
with
or
use
of
local
raw
materials,
introducing
innovation
to
it,
as
long
as
it
does
not
impair
or
in
the
case
of
Board
of
Investments,
registered
companies
the
quality
standards
prescribed
by
the
licensor;
with
pioneer
status,
exemption
from
any
of
the
above
requirements
may
be
allowed
by
the
Documentation,
Information
and
Technology
Transfer
Bureau
after
evaluation
87.14.
Those
which
exempt
the
licensor
for
liability
for
thereof
on
a
case
by
case
basis.
non-‐fulfillment
of
his
responsibilities
under
the
84 z
Intellectual Property Law
technology
transfer
arrangement
and/or
liability
arising
149.2.
Such
assignment
or
transfer
shall,
however,
be
from
third
party
suits
brought
about
by
the
use
of
the
null
and
void
if
it
is
liable
to
mislead
the
public,
licensed
product
or
the
licensed
technology;
and
particularly
as
regards
the
nature,
source,
manufacturing
process,
characteristics,
or
suitability
for
their
purpose,
87.15.
Other
clauses
with
equivalent
effects.
of
the
goods
or
services
to
which
the
mark
is
applied.
SECTION
88.
MANDATORY
PROVISIONS.
–
149.3.
The
assignment
of
the
application
for
The
following
provisions
shall
be
included
in
voluntary
registration
of
a
mark,
or
of
its
registration,
shall
be
in
license
contracts:
writing
and
require
the
signatures
of
the
contracting
parties.
Transfers
by
mergers
or
other
forms
of
88.1.
That
the
laws
of
the
Philippines
shall
govern
the
succession
may
be
made
by
any
document
supporting
interpretation
of
the
same
and
in
the
event
of
litigation,
such
transfer.
the
venue
shall
be
the
proper
court
in
the
place
where
the
licensee
has
its
principal
office;
149.4.
Assignments
and
transfers
of
registrations
of
marks
shall
be
recorded
at
the
Office
on
payment
of
the
88.2.
Continued
access
to
improvements
in
techniques
prescribed
fee;
assignment
and
transfers
of
applications
and
processes
related
to
the
technology
shall
be
made
for
registration
shall,
on
payment
of
the
same
fee,
be
available
during
the
period
of
the
technology
transfer
provisionally
recorded,
and
the
mark,
when
registered,
arrangement;
shall
be
in
the
name
of
the
assignee
or
transferee.
88.3.
In
the
event
the
technology
transfer
arrangement
149.5.
Assignments
and
transfers
shall
have
no
effect
shall
provide
for
arbitration,
the
Procedure
of
Arbitration
against
third
parties
until
they
are
recorded
at
the
Office.
of
the
Arbitration
Law
of
the
Philippines
or
the
Arbitration
Rules
of
the
United
Nations
Commission
on
SECTION
150.
LICENSE
CONTRACTS.
–
International
Trade
Law
(UNCITRAL)
or
the
Rules
of
150.1.
Any
license
contract
concerning
the
registration
of
Conciliation
and
Arbitration
of
the
International
a
mark,
or
an
application
therefor,
shall
provide
for
Chamber
of
Commerce
(ICC)
shall
apply
and
the
venue
of
effective
control
by
the
licensor
of
the
quality
of
the
arbitration
shall
be
the
Philippines
or
any
neutral
goods
or
services
of
the
licensee
in
connection
with
country;
and
which
the
mark
is
used.
If
the
license
contract
does
not
provide
for
such
quality
control,
or
if
such
quality
control
88.4.
The
Philippine
taxes
on
all
payments
relating
to
the
is
not
effectively
carried
out,
the
license
contract
shall
technology
transfer
arrangement
shall
be
borne
by
the
not
be
valid.
licensor.
150.2.
A
license
contract
shall
be
submitted
to
the
SECTION
92.
NON-‐REGISTRATION
WITH
THE
Office
which
shall
keep
its
contents
confidential
but
shall
DOCUMENTATION,
INFORMATION
AND
TECHNOLOGY
record
it
and
publish
a
reference
thereto.
A
license
contract
shall
have
no
effect
against
third
parties
until
TRANSFER
BUREAU .
–
such
recording
is
effected.
The
Regulations
shall
fix
the
Technology
transfer
arrangements
that
conform
with
procedure
for
the
recording
of
the
license
contract.
the
provisions
of
Sections
86
and
87
need
not
be
registered
with
the
Documentation,
Information
and
SECTION
231.
REVERSE
RECIPROCITY
OF
FOREIGN
LAWS.
–
Technology
Transfer
Bureau.
Non-‐conformance
with
any
Any
condition,
restriction,
limitation,
diminution,
of
the
provisions
of
Sections
87
and
88,
however,
shall
requirement,
penalty
or
any
similar
burden
imposed
by
automatically
render
the
technology
transfer
the
law
of
a
foreign
country
on
a
Philippine
national
arrangement
unenforceable,
unless
said
technology
seeking
protection
of
intellectual
property
rights
in
that
transfer
arrangement
is
approved
and
registered
with
country,
shall
reciprocally
be
enforceable
upon
nationals
the
Documentation,
Information
and
Technology
of
said
country,
within
Philippine
jurisdiction.
Transfer
Bureau
under
the
provisions
of
Section
91
on
exceptional
cases.
SECTION
149.
ASSIGNMENT
AND
TRANSFER
OF
APPLICATION
AND
REGISTRATION.
–
149.1.
An
application
for
registration
of
a
mark,
or
its
registration,
may
be
assigned
or
transferred
with
or
without
the
transfer
of
the
business
using
the
mark.
o 85
Katrina Michelle Mancao
Is
there
infringement
even
if
the
goods
are
non-‐ and
advertisements
of
the
originator
of
said
mark,
to
competing?
convey
to
the
public
a
false
impression
of
some
supposed
connection
between
the
manufacturer
of
the
article
sold
under
the
original
mark
and
the
new
articles
ANG
V.
TEODORO
(1942),
SUPRA
being
tendered
to
the
public
under
the
same
or
similar
Refresher:
“Ang
Tibay”
used
for
slippers;
tried
to
be
mark.
As
trade
has
developed
and
commercial
changes
registered
for
pants
and
shirts.
have
come
about,
the
law
of
unfair
competition
has
expanded
to
keep
pace
with
the
times
and
the
element
Doctrine:
of
strict
competition
in
itself
has
ceased
to
be
the
This
fundamental
change
in
attitude
first
manifested
determining
factor.
The
owner
of
a
trade-‐mark
or
trade-‐
itself
in
the
year
1915-‐1917.
Until
about
then,
the
courts
name
has
a
property
right
in
which
he
is
entitled
to
had
proceeded
on
the
theory
that
the
same
trade-‐mark,
protection,
since
there
is
damage
to
him
from
confusion
used
on
un-‐like
goods,
could
not
cause
confusion
in
of
reputation
or
goodwill
in
the
mind
of
the
public
as
trade
and
that,
therefore,
there
could
be
no
objection
to
well
as
from
confusion
of
goods.
The
modern
trend
is
to
the
use
and
registration
of
a
well-‐known
mark
by
a
third
give
emphasis
to
the
unfairness
of
the
acts
and
to
party
for
a
different
class
of
goods.
Since
1916
however,
classify
and
treat
the
issue
as
a
fraud.
a
growing
sentiment
began
to
arise
that
in
the
selection
of
a
famous
mark
by
a
third
party,
there
was
generally
CHUA
CHE
V.
PHILIPPINE
PATENT
OFFICE
(1965)
the
hidden
intention
to
"have
a
free
ride"
on
the
trade-‐
Refresher:
“X-‐7”
previously
used
as
a
brand
of
toilet
mark
owner's
reputation
and
good
will.
articles
was
being
registered
for
soap.
In
the
present
state
of
development
of
the
law
on
Trade-‐
Doctrine:
Marks,
Unfair
Competition,
and
Unfair
Trading,
the
TEST
Registration
of
a
trademark
should
be
refused
in
cases
employed
by
the
courts
to
determine
whether
where
there
is
a
likelihood
of
confusion,
mistake,
or
noncompeting
goods
are
or
are
not
of
the
same
class
is
deception,
even
though
the
goods
fall
into
different
confusion
as
to
the
origin
of
the
goods
of
the
second
user.
categories.
The
products
of
appellee
are
common
Although
two
noncompeting
articles
may
be
classified
household
items
nowadays,
in
the
same
manner
as
under
two
different
classes
by
the
Patent
Office
because
laundry
soap.
The
likelihood
of
purchasers
to
associate
they
are
deemed
not
to
possess
the
same
descriptive
those
products
to
a
common
origin
is
not
far-‐fetched.
properties,
they
would,
nevertheless,
be
held
by
the
Both
from
the
standpoint
of
priority
of
use
and
for
the
courts
to
belong
to
the
same
class
if
the
simultaneous
protection
of
the
buying
public
and,
of
course,
appellee's
use
on
them
of
identical
or
closely
similar
trade-‐marks
rights
to
the
trademark
"X-‐7",
it
becomes
manifest
that
would
be
likely
to
cause
confusion
as
to
the
origin,
or
the
registration
of
said
trademark
in
favor
of
applicant-‐
personal
source,
of
the
second
user's
goods.
They
would
appellant
should
be
denied.
be
considered
as
not
falling
under
the
same
class
only
if
they
are
so
dissimilar
or
so
foreign
to
each
other
as
to
make
it
unlikely
that
the
purchaser
would
think
the
first
STA.
ANA
V.
MALIWAT
(1968)
user
made
the
second
user's
goods.
Refresher:
Maliwat
wanted
to
register
the
trademark
FLORMANN,
which
is
used
on
shirts,
pants,
jackets
and
Such
construction
of
the
law
is
induced
by
cogent
shoes
for
ladies,
men,
and
children.
Sta.
Ana
filed
an
reasons
of
equity
and
fair
dealing.
The
courts
have
come
application
for
the
registration
of
the
tradename
to
realize
that
there
can
be
unfair
competition
or
unfair
FLORMEN
SHOE
MANUFACTURERS,
which
he'll
use
for
trading
even
if
the
goods
are
non-‐competing,
and
that
manufacturing
ladies'
and
children's
shoes.
such
unfair
trading
can
cause
INJURY
OR
DAMAGE
TO
THE
FIRST
USER
of
a
given
trade-‐mark,
first,
by
Doctrine:
prevention
of
the
natural
expansion
of
his
business
and,
Modern
law
recognizes
that
the
protection
to
which
the
second,
by
having
his
business
reputation
confused
with
owner
of
a
trademark
mark
is
entitled
is
not
limited
to
and
put
at
the
mercy
of
the
second
user.
Then
guarding
his
goods
or
business
from
actual
market
noncompetitive
products
are
sold
under
the
same
mark,
competition
with
identical
or
similar
products
of
the
the
gradual
whittling
away
or
dispersion
of
the
identity
parties,
but
extends
to
all
cases
in
which
the
use
by
a
and
hold
upon
the
public
mind
of
the
mark
created
by
its
junior
appropriator
of
a
trademark
or
tradename
is
likely
first
user,
inevitably
results.
The
original
owner
is
entitled
to
lead
to
a
confusion
of
source,
as
where
prospective
to
the
preservation
of
the
valuable
link
between
him
and
purchasers
would
be
misled
into
thinking
that
the
the
public
that
has
been
created
by
his
ingenuity
and
the
complaining
party
has
extended
his
business
into
the
merit
of
his
wares
or
services.
Experience
has
field
or
is
in
any
way
connected
with
the
activities
of
the
demonstrated
that
when
a
well-‐known
trade-‐mark
is
infringer;
or
when
it
forestalls
the
normal
potential
adopted
by
another
even
for
a
totally
different
class
of
expansion
of
his
business.
goods,
it
is
done
to
get
the
benefit
of
the
reputation
86 z
Intellectual Property Law
Mere
dissimilarity
of
goods
should
not
preclude
relief
be
injured
by
any
subsequent
appropriation
or
imitation
where
the
junior
user's
goods
are
not
too
different
or
by
others,
and
the
public
will
not
be
deceived.
remote
from
any
that
the
owner
would
be
likely
to
make
or
sell;
and
in
the
present
case,
wearing
apparel
is
not
so
ESSO
STANDARD
EASTERN,
INC.
V.
CA
(1982)
far
removed
from
shoes
as
to
preclude
relief.
Refresher:
“Esso”
is
used
by
Esso
Standard
for
its
petroleum
products.
Private
respondent
(United
PHILIPPINE
REFINING
COMPANY
V.
NG
SAM
(1982)
Cigarette
Corp.)
wanted
to
use
it
for
its
cigarettes.
Refresher:
“Camia”
was
used
by
Philippine
Refining
Sugar
for
its
lard,
butter,
cooking
oil,
and
soap.
Ng
Sam
Doctrine:
wanted
to
register
it
for
its
ham.
The
law
defines
infringement
as
the
use
without
consent
of
the
trademark
owner
of
any
"reproduction,
Doctrine:
counterfeit,
copy
or
colorable
limitation
of
any
A
rudimentary
precept
in
trademark
protection
is
that
registered
mark
or
tradename
in
connection
with
the
"the
right
to
a
trademark
is
a
limited
one,
in
the
sense
sale,
offering
for
sale,
or
advertising
of
any
goods,
that
others
may
use
the
same
mark
on
unrelated
goods."
business
or
services
on
or
in
connection
with
which
such
Thus,
as
pronounced
by
the
United
States
Supreme
use
is
likely
to
cause
confusion
or
mistake
or
to
deceive
Court
in
the
case
of
American
Foundries
vs.
Robertson,
purchasers
or
others
as
to
the
source
or
origin
of
such
"the
mere
fact
that
one
person
has
adopted
and
used
a
goods
or
services,
or
Identity
of
such
business;
or
trademark
on
his
goods
does
not
prevent
the
adoption
reproduce,
counterfeit,
copy
or
colorably
imitate
any
and
use
of
the
same
trademark
by
others
on
articles
of
a
such
mark
or
tradename
and
apply
such
reproduction,
different
description."
counterfeit,
copy
or
colorable
limitation
to
labels,
signs,
prints,
packages,
wrappers,
receptacles
or
Such
restricted
right
over
a
trademark
is
likewise
advertisements
intended
to
be
used
upon
or
in
reflected
in
our
Trademark
law.
Under
Section
4(d)
of
connection
with
such
goods,
business
or
services."
the
law,
registration
of
a
trademark
which
so
resembles
Implicit
in
this
definition
is
the
concept
that
the
goods
another
already
registered
or
in
use
should
be
denied,
must
be
so
related
that
there
is
a
likelihood
either
of
where
to
allow
such
registration
could
likely
result
in
confusion
of
goods
or
business.
But
likelihood
of
confusion,
mistake
or
deception
to
the
consumers.
confusion
is
a
relative
concept;
to
be
determined
only
Conversely,
where
no
confusion
is
likely
to
arise,
as
in
according
to
the
particular,
and
sometimes
peculiar,
this
case,
registration
of
a
similar
or
even
Identical
mark
circumstances
of
each
case.
It
is
unquestionably
true
that,
may
be
allowed.
as
stated
in
Coburn
vs.
Puritan
Mills,
Inc.
"In
trademark
cases,
even
more
than
in
other
litigation,
precedent
The
term
"CAMIA"
is
descriptive
of
a
whole
genus
of
must
be
studied
in
the
light
of
the
facts
of
the
particular
garden
plants
with
fragrant
white
flowers.
Some
people
case.
call
the
"CAMIA"
the
"white
ginger
plant"
because
of
its
tuberous
roots,
while
children
refer
to
it
as
the
butterfly
It
is
undisputed
that
the
goods
on
which
petitioner
uses
flower
because
of
its
shape.
Being
a
generic
and
common
the
trademark
ESSO,
petroleum
products,
and
the
term,
its
appropriation
as
a
trademark,
albeit
in
a
fanciful
product
of
respondent,
cigarettes,
are
non-‐competing.
manner
in
that
it
bears
no
relation
to
the
product
it
But
as
to
whether
trademark
infringement
exists
Identifies,
is
valid.
However,
the
degree
of
exclusiveness
depends
for
the
most
part
upon
whether
or
not
the
accorded
to
each
user
is
closely
restricted.
goods
are
so
related
that
the
public
may
be,
or
is
actually,
deceived
and
misled
that
they
came
from
the
same
maker
A
trademark
is
designed
to
Identify
the
user.
But
it
or
manufacturer.
For
non-‐competing
goods
may
be
should
be
so
distinctive
and
sufficiently
original
as
to
those
which,
though
they
are
not
in
actual
competition,
enable
those
who
come
into
contact
with
it
to
recognize
are
so
related
to
each
other
that
it
might
reasonably
be
instantly
the
Identity
of
the
user.
"
It
must
be
affirmative
assumed
that
they
originate
from
one
manufacturer.
and
definite,
significant
and
distinctive,
capable
to
Non-‐competing
goods
may
also
be
those
which,
being
indicate
origin."
entirely
unrelated,
could
not
reasonably
be
assumed
to
have
a
common
source.
In
the
former
case
of
related
It
is
evident
that
"CAMIA"
as
a
trademark
is
far
from
goods,
confusion
of
business
could
arise
out
of
the
use
being
distinctive.
By
itself,
it
does
not
Identify
petitioner
of
similar
marks;
in
the
latter
case
of
non-‐related
goods,
as
the
manufacturer
or
producer
of
the
goods
upon
it
could
not.
The
vast
majority
of
courts
today
follow
the
which
said
mark
is
used,
as
contra-‐distinguished
to
modern
theory
or
concept
of
"related
goods"
which
the
trademarks
derived
from
coined
words
such
as
"Rolex",
Court
has
likewise
adopted
and
uniformly
recognized
"Kodak"
or
"Kotex".
It
has
been
held
that
if
a
mark
is
so
and
applied.
commonplace
that
it
cannot
be
readily
distinguished
from
others,
then
it
is
apparent
that
it
cannot
Identify
a
Goods
are
related
when
they
belong
to
the
same
class
or
particular
business;
and
he
who
first
adopted
it
cannot
have
the
same
descriptive
properties;
when
they
possess
o 87
Katrina Michelle Mancao
the
same
physical
attributes
or
essential
characteristics
deodorant,
talcum
powder,
and
toilet
soap.
Thereafter,
with
reference
to
their
form,
composition,
texture
or
respondent
court,
through
Justice
Gopengco
with
quality.
They
may
also
be
related
because
they
serve
the
Justices
Patajo
and
Racela,
Jr.
concurring,
was
initially
same
purpose
or
are
sold
in
grocery
stores.
persuaded
by
petitioner's
plea
for
reversal
directed
against
the
permission
granted
by
the
Director
of
In
the
situation
before
us,
the
goods
are
obviously
Patents,
but
the
decision
of
the
Second
Special
Cases
different
from
each
other
with
"absolutely
no
iota
of
Division
handed
down
on
April
29,
1983
was
later
similitude"
as
stressed
in
respondent
court's
judgment.
reconsidered
in
favor
of
herein
private
respondent.
They
are
so
foreign
to
each
other
as
to
make
it
unlikely
that
purchasers
would
think
that
petitioner
is
the
Doctrine:
manufacturer
of
respondent's
goods.
The
mere
fact
that
Having
thus
reviewed
the
laws
applicable
to
the
case
one
person
has
adopted
and
used
a
trademark
on
his
before
Us,
it
is
not
difficult
to
discern
from
the
foregoing
goods
does
not
prevent
the
adoption
and
use
of
the
statutory
enactments
that
private
respondent
may
be
same
trademark
by
others
on
unrelated
articles
of
a
permitted
to
register
the
trademark
"BRUTE"
for
briefs
different
kind.
produced
by
it
notwithstanding
petitioner's
vehement
protestations
of
unfair
dealings
in
marketing
its
own
set
Although
petitioner's
products
are
numerous,
they
are
of
items
which
are
limited
to:
after-‐shave
lotion,
shaving
of
the
same
class
or
line
of
merchandise
which
are
non-‐ cream,
deodorant,
talcum
powder
and
toilet
soap.
In
as
competing
with
respondent's
product
of
cigarettes,
much
as
petitioner
has
not
ventured
in
the
production
of
which
as
pointed
out
in
the
appealed
judgment
is
briefs,
an
item
which
is
not
listed
in
its
certificate
of
beyond
petitioner's
"zone
of
potential
or
natural
and
registration,
petitioner
can
not
and
should
not
be
logical
expansion."
When
a
trademark
is
used
by
a
party
allowed
to
feign
that
private
respondent
had
invaded
for
a
product
in
which
the
other
party
does
not
deal,
the
petitioner's
exclusive
domain.
To
be
sure,
it
is
significant
use
of
the
same
trademark
on
the
latter's
product
that
petitioner
failed
to
annex
in
its
Brief
the
so-‐called
cannot
be
validly
objected
to.
"eloquent
proof
that
petitioner
indeed
intended
to
expand
its
mark
"BRUT"
to
other
goods."
Even
then,
a
Another
factor
that
shows
that
the
goods
involved
are
mere
application
by
petitioner
in
this
aspect
does
not
non-‐competitive
and
non-‐related
is
the
appellate
court's
suffice
and
may
not
vest
an
exclusive
right
in
its
favor
finding
that
they
flow
through
different
channels
of
that
can
ordinarily
be
protected
by
the
Trademark
Law.
trade,
thus:
"The
products
of
each
party
move
along
and
In
short,
paraphrasing
Section
20
of
the
Trademark
Law
are
disposed
through
different
channels
of
distribution.
as
applied
to
the
documentary
evidence
adduced
by
petitioner,
the
certificate
of
registration
issued
by
the
HICKOK
MANUFACTURING
CO.
V.
CA
(1982)
Director
of
Patents
can
confer
upon
petitioner
the
Refresher:
exclusive
right
to
use
its
own
symbol
only
to
those
Petitioner:
diverse
articles
of
men's
wear
such
as
wallets,
goods
specified
in
the
certificate,
subject
to
any
belts
and
men's
briefs
conditions
and
limitations
stated
therein.
Respondent:
shoes
How
do
We
now
reconcile
the
apparent
conflict
between
Section
4(d)
which
was
relied
upon
by
Justice
Doctrine:
JBL
Reyes
in
the
Sta.
Ana
case
and
Section
20?
It
would
It
is
established
doctrine,
as
held
in
the
above-‐cited
cases,
seem
that
Section
4(d)
does
not
require
that
the
goods
that
"emphasis
should
be
on
the
similarity
of
the
manufactured
by
the
second
user
be
related
to
the
products
involved
and
not
on
the
arbitrary
classification
goods
produced
by
the
senior
user
while
Section
20
or
general
description
of
their
properties
or
limits
the
exclusive
right
of
the
senior
user
only
to
those
characteristics"
and
that
"the
mere
fact
that
one
person
goods
specified
in
the
certificate
of
registration.
But
the
has
adopted
and
used
a
trademark
on
his
goods
does
rule
has
been
laid
down
that
the
clause
which
comes
not
prevent
the
adoption
and
use
of
the
same
trademark
later
shall
be
given
paramount
significance
over
an
by
others
on
unrelated
articles
of
a
different
kind."
anterior
proviso
upon
the
presumption
that
it
expresses
the
latest
and
dominant
purpose.
FABERGE
V.
IAC
(1992)
It
ineluctably
follows
that
Section
20
is
controlling
and,
Refresher:
therefore,
private
respondent
can
appropriate
its
symbol
The
Director
of
Patents
authorized
herein
private
for
the
briefs
it
manufactures
because
as
aptly
remarked
respondent
Co
Beng
Kay
to
register
the
trademark
by
Justice
Sanchez
in
Sterling
Products
International
Inc.
"BRUTE"
for
the
briefs
manufactured
and
sold
by
his
vs.
Farbenfabriken
Bayer:
Corporation
in
the
domestic
market
vis-‐a-‐vis
petitioner's
opposition
grounded
on
similarity
of
said
trademark
with
Really,
if
the
certificate
of
registration
were
to
be
petitioner's
own
symbol
"BRUT"
which
it
previously
deemed
as
including
goods
not
specified
therein,
then
a
registered
for
after
shave
lotion,
shaving
cream,
88 z
Intellectual Property Law
situation
may
arise
whereby
an
applicant
may
be
attributes
or
essential
characteristics
with
reference
to
tempted
to
register
a
trademark
on
any
and
all
goods
their
form,
composition,
texture
or
quality.
They
may
which
his
mind
may
conceive
even
if
he
had
never
also
be
related
because
they
serve
the
same
purpose
or
intended
to
use
the
trademark
for
the
said
goods.
We
are
sold
in
grocery
stores.
believe
that
such
omnibus
registration
is
not
contemplated
by
our
Trademark
Law.
PEARL
&
DEAN
(PHIL.),
INC.
V.
SHOEMART,
SUPRA
Refresher:
CANON
KABUSHIKI
V.
CA
(2000)
Light
boxes
Refresher:
Private
respondent
NSR
Rubber
Corporation
(private
respondent)
filed
an
application
for
registration
Doctrine:
of
the
mark
CANON
for
sandals.
On
trademark
infringement:
The
certificate
of
registration
issued
by
the
Director
of
Doctrine:
Patents
can
confer
the
exclusive
right
to
use
its
own
We
find
the
arguments
of
petitioner
to
be
unmeritorious.
symbol
only
to
those
goods
specified
in
the
certificate,
Ordinarily,
the
ownership
of
a
trademark
or
tradename
is
subject
to
any
conditions
and
limitations
specified
in
the
a
property
right
that
the
owner
is
entitled
to
protect
as
certificate.
One
who
has
adopted
and
used
a
trademark
mandated
by
the
Trademark
Law.
However,
when
a
on
his
goods
does
not
prevent
the
adoption
and
use
of
trademark
is
used
by
a
party
for
a
product
in
which
the
the
same
trademark
by
others
for
products
which
are
of
other
party
does
not
deal,
the
use
of
the
same
a
different
description.
trademark
on
the
latter's
product
cannot
be
validly
objected
to.
Moreover,
the
failure
of
P
&
D
to
secure
a
trademark
registration
for
specific
use
on
the
light
boxes
meant
Herein
petitioner
has
not
made
known
that
it
intends
to
that
there
could
not
have
been
any
trademark
venture
into
the
business
of
producing
sandals.
This
is
infringement
since
registration
was
an
essential
element
clearly
shown
in
its
Trademark
Principal
Register
where
thereof.
the
products
of
the
said
petitioner
had
been
clearly
and
specifically
described
as
"Chemical
products,
dyestuffs,
246
CORPORATION
V.
DAWAY
(2003)
pigments,
toner
developing
preparation,
shoe
polisher,
Refresher:
polishing
agent".
It
would
be
taxing
one's
credibility
to
246
Corporation:
Rolex
Music
Lounge
aver
at
this
point
that
the
production
of
sandals
could
be
considered
as
a
possible
"natural
or
normal
expansion"
Doctrine:
of
its
business
operation.
Under
the
old
Trademark
Law15
where
the
goods
for
which
the
identical
marks
are
used
are
unrelated,
there
The
likelihood
of
confusion
of
goods
or
business
is
a
can
be
no
likelihood
of
confusion
and
there
is
therefore
relative
concept,
to
be
determined
only
according
to
the
no
infringement
in
the
use
by
the
junior
user
of
the
particular,
and
sometimes
peculiar,
circumstances
of
registered
mark
on
the
entirely
different
goods.
This
each
case.16
Indeed,
in
trademark
law
cases,
even
more
ruling,
however,
has
been
to
some
extent,
modified
by
than
in
other
litigation,
precedent
must
be
studied
in
the
Section
123.1(f)
of
the
Intellectual
Property
Code
light
of
the
facts
of
the
particular
case.
Contrary
to
(Republic
Act
No.
8293),
which
took
effect
on
January
1,
petitioner's
supposition,
the
facts
of
this
case
will
show
1998.
The
said
section
reads:
that
the
cases
of
Sta.
Ana
vs.
Maliwat,
Ang
vs.
Teodoro
and
Converse
Rubber
Corporation
vs.
Universal
Rubber
Sec.
123.
Registrability.
–
123.1.
A
mark
cannot
Products,
Inc.
are
hardly
in
point.
The
just
cited
cases
be
registered
if
it:
involved
goods
that
were
confusingly
similar,
if
not
identical,
as
in
the
case
of
Converse
Rubber
Corporation
x
x
x
x
x
x
x
x
x
vs.
Universal
Rubber
Products,
Inc.
Here,
the
products
involved
are
so
unrelated
that
the
public
will
not
be
(f)
Is
identical
with,
or
confusingly
similar
to,
or
misled
that
there
is
the
slightest
nexus
between
constitutes
a
translation
of
a
mark
considered
petitioner
and
the
goods
of
private
respondent.
well-‐known
in
accordance
with
the
preceding
paragraph,
which
is
registered
in
the
In
cases
of
confusion
of
business
or
origin,
the
question
Philippines
with
respect
to
goods
or
services
that
usually
arises
is
whether
the
respective
goods
or
which
are
not
similar
to
those
with
respect
to
services
of
the
senior
user
and
the
junior
user
are
so
which
registration
is
applied
for:
Provided,
That
related
as
to
likely
cause
confusion
of
business
or
origin,
use
of
the
mark
in
relation
to
those
goods
or
and
thereby
render
the
trademark
or
tradenames
services
would
indicate
a
connection
between
confusingly
similar.
Goods
are
related
when
they
belong
those
goods
or
services,
and
the
owner
of
the
to
the
same
class
or
have
the
same
descriptive
registered
mark:
Provided,
further,
That
the
properties;
when
they
possess
the
same
physical
o 89
Katrina Michelle Mancao
interest
of
the
owner
of
the
registered
mark
(k)
the
outcome
of
litigations
dealing
are
likely
to
be
damaged
by
such
use;
with
the
issue
of
whether
the
mark
is
a
well-‐known
mark;
and
A
junior
user
of
a
well-‐known
mark
on
goods
or
services
which
are
not
similar
to
the
goods
or
services,
and
are
(l)
the
presence
of
absence
of
therefore
unrelated,
to
those
specified
in
the
certificate
identical
or
similar
marks
validly
of
registration
of
the
well-‐known
mark
is
precluded
from
registered
for
or
used
on
identical
or
using
the
same
on
the
entirely
unrelated
goods
or
similar
goods
or
services
and
owned
services,
subject
to
the
following
REQUISITES,
to
wit:
by
persons
other
than
the
person
claiming
that
his
mark
is
a
well-‐known
1.
The
mark
is
well-‐known
internationally
and
in
mark.
the
Philippines.
Under
Rule
102
of
the
Rules
and
Regulations
on
Trademarks,
Service
Marks,
2.
The
use
of
the
well-‐known
mark
on
the
Trade
Names
and
Marked
or
Stamped
entirely
unrelated
goods
or
services
would
Containers,
in
determining
whether
a
mark
is
indicate
a
connection
between
such
unrelated
well
known,
the
following
criteria
or
any
goods
or
services
and
those
goods
or
services
combination
thereof
may
be
taken
into
specified
in
the
certificate
of
registration
in
the
account:
well
known
mark.
This
requirement
refers
to
the
likelihood
of
confusion
of
origin
or
business
(a)
the
duration,
extent
and
or
some
business
connection
or
relationship
geographical
area
of
any
use
of
the
between
the
registrant
and
the
user
of
the
mark,
in
particular,
the
duration,
mark.
extent
and
geographical
area
of
any
promotion
of
the
mark,
including
3.
The
interests
of
the
owner
of
the
well-‐known
advertising
or
publicity
and
mark
are
likely
to
be
damaged.
For
instance,
if
presentation,
at
fairs
or
exhibitions,
the
registrant
will
be
precluded
from
of
the
goods
and/or
services
to
which
expanding
its
business
to
those
unrelated
good
the
mark
applies;
or
services,
or
if
the
interests
of
the
registrant
of
the
well-‐known
mark
will
be
damaged
(b)
the
market
share
in
the
because
of
the
inferior
quality
of
the
good
or
Philippines
and
in
other
countries,
of
services
of
the
user.
the
goods
and/or
services
to
which
the
mark
applies;
Section
123.1(f)
is
clearly
in
point
because
the
Music
Lounge
of
petitioner
is
entirely
unrelated
to
respondents’
(c)
the
degree
of
the
inherent
or
business
involving
watches,
clocks,
bracelets,
etc.
acquired
distinction
of
the
mark;
However,
the
Court
cannot
yet
resolve
the
merits
of
the
present
controversy
considering
that
the
requisites
for
(d)
the
quality-‐image
or
reputation
the
application
of
Section
123.1(f),
which
constitute
the
acquired
by
the
mark;
kernel
issue
at
bar,
clearly
require
determination
facts
of
which
need
to
be
resolved
at
the
trial
court.
The
(e)
the
extent
to
which
the
mark
has
existence
or
absence
of
these
requisites
should
be
been
registered
in
the
world;
addressed
in
a
full-‐blown
hearing
and
not
on
a
mere
preliminary
hearing.
The
respondent
must
be
given
(f)
the
exclusivity
of
the
registration
ample
opportunity
to
prove
its
claim,
and
the
petitioner
attained
by
the
mark
in
the
world;
to
debunk
the
same.
(g)
the
extent
to
which
the
mark
has
SOCIETE
DES
PRODUITS
NESTLE
V.
CA
(2001)
been
used
in
the
world;
Refresher:
CFC
Corporation
(Respondent):
“Flavor
Master”
for
(h)
the
exclusivity
of
use
attained
by
coffee
the
mark
in
the
world;
Nestle:
“Master
Roast”
and
“Master
Blend”
for
coffee
(i)
the
commercial
value
attributed
to
the
mark
in
the
world;
Doctrine:
The
protection
of
trade-‐marks
is
the
law’s
recognition
of
(j)
the
record
of
successful
protection
the
psychological
function
of
symbols.
If
it
is
true
that
of
the
rights
in
the
mark;
we
live
by
symbols,
it
is
no
less
true
that
we
purchase
goods
by
them.
A
trade-‐mark
is
a
merchandising
short-‐
90 z
Intellectual Property Law
cut
which
induces
a
purchaser
to
select
what
he
wants,
what
is
of
paramount
consideration
is
the
ordinary
or
what
he
has
been
led
to
believe
he
wants.
The
owner
purchaser
who
is,
in
general,
undiscerningly
rash
in
of
a
mark
exploits
this
human
propensity
by
making
buying
the
more
common
and
less
expensive
household
every
effort
to
impregnate
the
atmosphere
of
the
products
like
coffee,
and
is
therefore
less
inclined
to
market
with
the
drawing
power
of
a
congenial
symbol.
closely
examine
specific
details
of
similarities
and
Whatever
the
means
employed,
the
aim
is
the
same
-‐-‐-‐
to
dissimilarities
between
competing
products.
convey
through
the
mark,
in
the
minds
of
potential
customers,
the
desirability
of
the
commodity
upon
which
This
Court
cannot
agree
with
the
above
reasoning.
If
the
it
appears.
Once
this
is
attained,
the
trade-‐mark
owner
ordinary
purchaser
is
"undiscerningly
rash"
in
buying
has
something
of
value.
If
another
poaches
upon
the
such
common
and
inexpensive
household
products
as
commercial
magnetism
of
the
symbol
he
has
created,
instant
coffee,
and
would
therefore
be
"less
inclined
to
the
owner
can
obtain
legal
redress.
closely
examine
specific
details
of
similarities
and
dissimilarities"
between
the
two
competing
products,
Colorable
imitation
denotes
such
a
close
or
ingenious
then
it
would
be
less
likely
for
the
ordinary
purchaser
to
imitation
as
to
be
calculated
to
deceive
ordinary
persons,
notice
that
CFC’s
trademark
FLAVOR
MASTER
carries
the
or
such
a
resemblance
to
the
original
as
to
deceive
an
colors
orange
and
mocha
while
that
of
Nestle’s
uses
red
ordinary
purchaser
giving
such
attention
as
a
purchaser
and
brown.
The
application
of
the
totality
or
holistic
test
usually
gives,
as
to
cause
him
to
purchase
the
one
is
improper
since
the
ordinary
purchaser
would
not
be
supposing
it
to
be
the
other.
In
determining
if
colorable
inclined
to
notice
the
specific
features,
similarities
or
imitation
exists,
jurisprudence
has
developed
two
kinds
dissimilarities,
considering
that
the
product
is
an
of
tests
-‐
the
Dominancy
Test
and
the
Holistic
Test.
The
inexpensive
and
common
household
item.
test
of
dominancy
focuses
on
the
similarity
of
the
prevalent
features
of
the
competing
trademarks
which
It
must
be
emphasized
that
the
products
bearing
the
might
cause
confusion
or
deception
and
thus
constitute
trademarks
in
question
are
"inexpensive
and
common"
infringement.
On
the
other
side
of
the
spectrum,
the
household
items
bought
off
the
shelf
by
"undiscerningly
holistic
test
mandates
that
the
entirety
of
the
marks
in
rash"
purchasers.
As
such,
if
the
ordinary
purchaser
is
question
must
be
considered
in
determining
confusing
"undiscerningly
rash",
then
he
would
not
have
the
time
similarity.
nor
the
inclination
to
make
a
keen
and
perceptive
examination
of
the
physical
discrepancies
in
the
Nestle
points
out
that
the
dominancy
test
should
have
trademarks
of
the
products
in
order
to
exercise
his
been
applied
to
determine
whether
there
is
a
confusing
choice.
similarity
between
CFC’s
FLAVOR
MASTER
and
Nestle’s
MASTER
ROAST
and
MASTER
BLEND.
While
this
Court
agrees
with
the
Court
of
Appeals’
detailed
enumeration
of
differences
between
the
We
agree.
respective
trademarks
of
the
two
coffee
products,
this
Court
cannot
agree
that
totality
test
is
the
one
As
the
Court
of
Appeals
itself
has
stated,
"[t]he
applicable
in
this
case.
Rather,
this
Court
believes
that
determination
of
whether
two
trademarks
are
indeed
the
dominancy
test
is
more
suitable
to
this
case
in
light
confusingly
similar
must
be
taken
from
the
viewpoint
of
of
its
peculiar
factual
milieu.
the
ordinary
purchasers
who
are,
in
general,
undiscerningly
rash
in
buying
the
more
common
and
less
Moreover,
the
totality
or
holistic
test
is
contrary
to
the
expensive
household
products
like
coffee,
and
are
elementary
postulate
of
the
law
on
trademarks
and
therefore
less
inclined
to
closely
examine
specific
details
unfair
competition
that
confusing
similarity
is
to
be
of
similarities
and
dissimilarities
between
competing
determined
on
the
basis
of
visual,
aural,
connotative
products."
comparisons
and
overall
impressions
engendered
by
the
marks
in
controversy
as
they
are
encountered
in
the
The
basis
for
the
Court
of
Appeals’
application
of
the
realities
of
the
marketplace.
The
totality
or
holistic
test
totality
or
holistic
test
is
the
"ordinary
purchaser"
buying
only
relies
on
visual
comparison
between
two
the
product
under
"normally
prevalent
conditions
in
trademarks
whereas
the
dominancy
test
relies
not
only
trade"
and
the
attention
such
products
normally
elicit
on
the
visual
but
also
on
the
aural
and
connotative
from
said
ordinary
purchaser.
An
ordinary
purchaser
or
comparisons
and
overall
impressions
between
the
two
buyer
does
not
usually
make
such
scrutiny
nor
does
he
trademarks.
usually
have
the
time
to
do
so.
The
average
shopper
is
usually
in
a
hurry
and
does
not
inspect
every
product
on
For
this
reason,
this
Court
agrees
with
the
BPTTT
when
it
the
shelf
as
if
he
were
browsing
in
a
library.
applied
the
test
of
dominancy
and
held
that:
The
Court
of
Appeals
held
that
the
test
to
be
applied
From
the
evidence
at
hand,
it
is
sufficiently
established
should
be
the
totality
or
holistic
test
reasoning,
since
that
the
word
MASTER
is
the
dominant
feature
of
o 91
Katrina Michelle Mancao
opposer’s
mark.
The
word
MASTER
is
printed
across
the
shedding
"some
light"
upon
certain
characteristics
of
the
middle
portion
of
the
label
in
bold
letters
almost
twice
goods
or
services
in
dispute,
they
nevertheless
involve
the
size
of
the
printed
word
ROAST.
Further,
the
word
"an
element
of
incongruity,"
"figurativeness,"
or
"
MASTER
has
always
been
given
emphasis
in
the
TV
and
imaginative
effort
on
the
part
of
the
observer."
radio
commercials
and
other
advertisements
made
in
promoting
the
product.
This
can
be
gleaned
from
the
LEVI
STRAUSS
V.
CLINTON
APPARELLE
(2005)
fact
that
Robert
Jaworski
and
Atty.
Ric
Puno
Jr..,
the
Refresher:
personalities
engaged
to
promote
the
product,
are
given
The
Complaint
alleged
that
LS
&
Co.,
a
foreign
the
titles
Master
of
the
Game
and
Master
of
the
Talk
corporation
duly
organized
and
existing
under
the
laws
Show,
respectively.
In
due
time,
because
of
these
of
the
State
of
Delaware,
U.S.A.,
and
engaged
in
the
advertising
schemes
the
mind
of
the
buying
public
had
apparel
business,
is
the
owner
by
prior
adoption
and
use
come
to
learn
to
associate
the
word
MASTER
with
the
since
1986
of
the
internationally
famous
"Dockers
and
opposer’s
goods.
Design"
trademark.
This
ownership
is
evidenced
by
its
valid
and
existing
registrations
in
various
member
x
x
x.
It
is
the
observation
of
this
Office
that
much
of
the
countries
of
the
Paris
Convention.
In
the
Philippines,
it
dominance
which
the
word
MASTER
has
acquired
has
a
Certificate
of
Registration
No.
46619
in
the
through
Opposer’s
advertising
schemes
is
carried
over
Principal
Register
for
use
of
said
trademark
on
pants,
when
the
same
is
incorporated
into
respondent-‐ shirts,
blouses,
skirts,
shorts,
sweatshirts
and
jackets
applicant’s
trademark
FLAVOR
MASTER.
Thus,
when
one
under
Class
25.
looks
at
the
label
bearing
the
trademark
FLAVOR
MASTER
(Exh.
4)
one’s
attention
is
easily
attracted
to
The
"Dockers
and
Design"
trademark
was
first
used
in
the
word
MASTER,
rather
than
to
the
dissimilarities
that
the
Philippines
in
or
about
May
1988,
by
LSPI,
a
domestic
exist.
Therefore,
the
possibility
of
confusion
as
to
the
corporation
engaged
in
the
manufacture,
sale
and
goods
which
bear
the
competing
marks
or
as
to
the
distribution
of
various
products
bearing
trademarks
origins
thereof
is
not
farfetched.
x
x
x.
owned
by
LS
&
Co.
To
date,
LSPI
continues
to
manufacture
and
sell
Dockers
Pants
with
the
"Dockers
In
addition,
the
word
"MASTER"
is
neither
a
generic
nor
and
Design"
trademark.
a
descriptive
term.
As
such,
said
term
can
not
be
invalidated
as
a
trademark
and,
therefore,
may
be
legally
LS
&
Co.
and
LSPI
further
alleged
that
they
discovered
protected.
Generic
terms
are
those
which
constitute
the
presence
in
the
local
market
of
jeans
under
the
"the
common
descriptive
name
of
an
article
or
brand
name
"Paddocks"
using
a
device
which
is
substance,"
or
comprise
the
"genus
of
which
the
substantially,
if
not
exactly,
similar
to
the
"Dockers
and
particular
product
is
a
species,"
or
are
"commonly
used
Design"
trademark
owned
by
and
registered
in
the
name
as
the
name
or
description
of
a
kind
of
goods,"
or
"imply
of
LS
&
Co.,
without
its
consent.
Based
on
their
reference
to
every
member
of
a
genus
and
the
exclusion
information
and
belief,
they
added,
Clinton
Apparelle
of
individuating
characters,"
or
"refer
to
the
basic
nature
manufactured
and
continues
to
manufacture
such
of
the
wares
or
services
provided
rather
than
to
the
"Paddocks"
jeans
and
other
apparel.
more
idiosyncratic
characteristics
of
a
particular
product,"
and
are
not
legally
protectable.
On
the
other
Doctrine:
hand,
a
term
is
descriptive
and
therefore
invalid
as
a
Petitioners
anchor
their
legal
right
to
"Dockers
and
trademark
if,
as
understood
in
its
normal
and
natural
Design"
trademark
on
the
Certificate
of
Registration
sense,
it
"forthwith
conveys
the
characteristics,
issued
in
their
favor
by
the
Bureau
of
Patents,
functions,
qualities
or
ingredients
of
a
product
to
one
Trademarks
and
Technology
Transfer.*
According
to
who
has
never
seen
it
and
does
not
know
what
it
is,"
or
Section
138
of
Republic
Act
No.
8293,42
this
Certificate
"if
it
forthwith
conveys
an
immediate
idea
of
the
of
Registration
is
prima
facie
evidence
of
the
validity
of
ingredients,
qualities
or
characteristics
of
the
goods,"
or
the
registration,
the
registrant’s
ownership
of
the
mark
if
it
clearly
denotes
what
goods
or
services
are
provided
and
of
the
exclusive
right
to
use
the
same
in
connection
in
such
a
way
that
the
consumer
does
not
have
to
with
the
goods
or
services
and
those
that
are
related
exercise
powers
of
perception
or
imagination.
thereto
specified
in
the
certificate.
Section
147.1
of
said
law
likewise
grants
the
owner
of
the
registered
mark
the
Rather,
the
term
"MASTER"
is
a
suggestive
term
brought
exclusive
right
to
prevent
all
third
parties
not
having
the
about
by
the
advertising
scheme
of
Nestle.
Suggestive
owner’s
consent
from
using
in
the
course
of
trade
terms
are
those
which,
in
the
phraseology
of
one
court,
identical
or
similar
signs
for
goods
or
services
which
are
require
"imagination,
thought
and
perception
to
reach
a
identical
or
similar
to
those
in
respect
of
which
the
conclusion
as
to
the
nature
of
the
goods."
Such
terms,
trademark
is
registered
if
such
use
results
in
a
likelihood
"which
subtly
connote
something
about
the
product,"
of
confusion.
are
eligible
for
protection
in
the
absence
of
secondary
meaning.
While
suggestive
marks
are
capable
of
92 z
Intellectual Property Law
However,
attention
should
be
given
to
the
fact
that
quality
of
the
mark."
This
is
intended
to
protect
famous
petitioners’
registered
trademark
consists
of
two
marks
from
subsequent
uses
that
blur
distinctiveness
of
elements:
(1)
the
word
mark
"Dockers"
and
(2)
the
wing-‐ the
mark
or
tarnish
or
disparage
it.
shaped
design
or
logo.
Notably,
there
is
only
one
registration
for
both
features
of
the
trademark
giving
Based
on
the
foregoing,
to
be
eligible
for
protection
the
impression
that
the
two
should
be
considered
as
a
from
dilution,
there
has
to
be
a
finding
that:
(1)
the
single
unit.
Clinton
Apparelle’s
trademark,
on
the
other
trademark
sought
to
be
protected
is
famous
and
hand,
uses
the
"Paddocks"
word
mark
on
top
of
a
logo
distinctive;
(2)
the
use
by
respondent
of
"Paddocks
and
which
according
to
petitioners
is
a
slavish
imitation
of
Design"
began
after
the
petitioners’
mark
became
the
"Dockers"
design.
The
two
trademarks
apparently
famous;
and
(3)
such
subsequent
use
defames
differ
in
their
word
marks
("Dockers"
and
"Paddocks"),
petitioners’
mark.
In
the
case
at
bar,
petitioners
have
yet
but
again
according
to
petitioners,
they
employ
similar
to
establish
whether
"Dockers
and
Design"
has
acquired
or
identical
logos.
It
could
thus
be
said
that
respondent
a
strong
degree
of
distinctiveness
and
whether
the
other
only
"appropriates"
petitioners’
logo
and
not
the
word
two
elements
are
present
for
their
cause
to
fall
within
mark
"Dockers";
it
uses
only
a
portion
of
the
registered
the
ambit
of
the
invoked
protection.
The
Trends
MBL
trademark
and
not
the
whole.
Survey
Report
which
petitioners
presented
in
a
bid
to
establish
that
there
was
confusing
similarity
between
Given
the
single
registration
of
the
trademark
"Dockers
two
marks
is
not
sufficient
proof
of
any
dilution
that
the
and
Design"
and
considering
that
respondent
only
uses
trial
court
must
enjoin.
the
assailed
device
but
a
different
word
mark,
the
right
to
prevent
the
latter
from
using
the
challenged
RA
166,
SECTION
20.
CERTIFICATE
OF
REGISTRATION
PRIMA
"Paddocks"
device
is
far
from
clear.
Stated
otherwise,
it
FACIE
EVIDENCE
O F
VALIDITY.
–
is
not
evident
whether
the
single
registration
of
the
A
certificate
of
registration
of
a
mark
or
trade-‐name
shall
trademark
"Dockers
and
Design"
confers
on
the
owner
the
right
to
prevent
the
use
of
a
fraction
thereof
in
the
be
prima
facie
evidence
of
the
validity
of
the
course
of
trade.
It
is
also
unclear
whether
the
use
registration,
the
registrant's
ownership
of
the
mark
or
without
the
owner’s
consent
of
a
portion
of
a
trademark
trade-‐name,
and
of
the
registrant's
exclusive
right
to
registered
in
its
entirety
constitutes
material
or
use
the
same
in
connection
with
the
goods,
business
or
substantial
invasion
of
the
owner’s
right.
services
specified
in
the
certificate,
subject
to
any
conditions
and
limitations
stated
therein.
It
is
likewise
not
settled
whether
the
wing-‐shaped
logo,
as
opposed
to
the
word
mark,
is
the
dominant
or
central
SECTION
138.
CERTIFICATES
OF
REGISTRATION.
–
feature
of
petitioners’
trademark—the
feature
that
A
certificate
of
registration
of
a
mark
shall
be
prima
facie
prevails
or
is
retained
in
the
minds
of
the
public—an
evidence
of
the
validity
of
the
registration,
the
imitation
of
which
creates
the
likelihood
of
deceiving
the
registrant's
ownership
of
the
mark,
and
of
the
public
and
constitutes
trademark
infringement.
In
sum,
registrant's
exclusive
right
to
use
the
same
in
there
are
vital
matters
which
have
yet
and
may
only
be
connection
with
the
goods
or
services
and
THOSE
THAT
established
through
a
full-‐blown
trial.
ARE
RELATED
THERETO
specified
in
the
certificate.
From
the
above
discussion,
we
find
that
petitioners’
Question:
Was
Faberge
v.
IAC
(215
SCRA
316)
the
right
to
injunctive
relief
has
not
been
clearly
and
controlling
precedent
under
RA
166?
State
reasons
for
unmistakably
demonstrated.
The
right
has
yet
to
be
your
answer.
Research
the
cases
cited
in
your
syllabus
determined.
Petitioners
also
failed
to
show
proof
that
on
"Is
there
infringement
if
goods
are
not
competing?"
there
is
material
and
substantial
invasion
of
their
right
to
section
of
your
syllabus.
warrant
the
issuance
of
an
injunctive
writ.
Neither
were
petitioners
able
to
show
any
urgent
and
permanent
HW
Answer
(Di
Bonilla):
necessity
for
the
writ
to
prevent
serious
damage.
No,
Faberge
v.
IAC
was
not
the
controlling
precedent
under
RA
166.
Since
Faberge
Trademark
dilution
is
the
lessening
of
the
capacity
of
a
pronounced
that
Sec.
20
is
controlling
over
Sec
famous
mark
to
identify
and
distinguish
goods
or
4(d),
it
effectively
reversed
earlier
decisions
services,
regardless
of
the
presence
or
absence
of:
(1)
which
merely
used
the
"likelihood
of
confusion,
competition
between
the
owner
of
the
famous
mark
and
deception
or
mistake"
standard
and
which
did
other
parties;
or
(2)
likelihood
of
confusion,
mistake
or
not
require
similarity
between
the
goods
or
deception.
Subject
to
the
principles
of
equity,
the
owner
articles
to
which
the
mark
was
being
applied.
of
a
famous
mark
is
entitled
to
an
injunction
"against
another
person’s
commercial
use
in
commerce
of
a
mark
Faberge
held
that
the
statement
of
the
Court
in
or
trade
name,
if
such
use
begins
after
the
mark
has
the
case
of
Sta.
Ana
vs.
Maliwat
that
Sec
4(d)
become
famous
and
causes
dilution
of
the
distinctive
of
RA
166
does
not
require
that
the
subject
o 93
Katrina Michelle Mancao
articles
possess
the
same
descriptive
property
use
the
mark
in
connection
with
the
goods,
or
fall
in
the
same
category
and
that
business
or
services
specified
in
the
certificate
dissimilarity
will
not
preclude
relief
if
the
junior
is
merely
prima
facie
and
is
thus
rebuttable.
user's
goods
are
not
remote
from
any
other
product
which
the
first
user
would
likely
make
Third,
the
present
IP
Code
enumerates
the
or
sell
cannot
prevail
over
the
positive
rights
of
the
owner
of
a
registered
mark
under
requirement
of
Sec.
20
of
the
same
law
that
Sec.
147.
Subsection
147.1
grants
the
trademark
only
those
specified
in
the
certificate
of
owner
the
“exclusive
right
to
prevent
all
third
registration
are
protected.
Effectively
then,
the
parties
not
having
the
owner's
consent
from
Supreme
Court
in
the
Faberge
case
reversed
its
using
in
the
course
of
trade
identical
or
similar
earlier
ruling
in
Sta.
Ana
and
other
cases
which
signs
or
containers
for
goods
or
services
which
merely
relied
on
the
"likelihood
of
confusion,
are
identical
or
similar
to
those
in
respect
of
deception
or
mistake"
standard
and
which
did
which
the
trademark
is
registered
where
such
not
require
similarity
between
the
goods
or
use
would
result
in
a
likelihood
of
confusion.”
articles.
This
was
done
with
the
Supreme
Court
In
other
words,
the
protection
granted
by
law
not
sitting
en
banc,
in
violation
of
the
to
a
trademark
owner
extends
to
goods
or
Constitution
which
requires
the
Supreme
Court
services
which
are
only
SIMILAR
to
those
in
to
be
sitting
en
banc
in
order
to
reverse
an
respect
of
which
the
mark
is
registered.
earlier
doctrine
enunciated
by
it
(Art.
VIII,
Sec.
3(3)).
Furthermore,
Subsection
147.2
also
recognizes
the
protection
as
applicable
even
to
goods
and
Question:
Is
the
Faberge
case
still
good
law
under
the
IP
services
NOT
SIMILAR
to
those
in
respect
of
Code?
State
the
reasons
for
your
answer.
which
the
mark
is
registered
in
the
case
of
an
internationally
well
known
mark
which
is
HW
Answer
(Di
Bonilla)
registered
in
the
Philippines
provided
that
the
No,
Faberge
vs.
IAC
is
no
longer
good
law
use
would
indicate
a
connection
under
the
IP
Code.
First,
the
present
law
(under
between
the
goods
or
services
and
Sec.
138)
now
includes
related
goods,
to
wit:
A
the
owner
of
the
registered
mark
certificate
of
registration
of
a
mark
shall
be
and
the
interests
of
the
owner
or
prima
facie
evidence
of
the
validity
of
the
the
registered
mark
are
likely
to
be
registration,
the
registrant's
ownership
of
the
damaged
by
such
use.
mark,
and
of
the
registrant's
exclusive
right
to
use
the
same
in
connection
with
the
goods
or
Issue
of
parallel
importation
services
and
those
that
are
related
thereto
specified
in
the
certificate.
(emphasis
supplied)
YU
V.
CA
AND
UNISIA
MERCHANDISING
CO.
(1993)
This
provision
adds
related
goods
or
services
Doctrine:
To
Our
mind,
the
right
to
perform
an
exclusive
specified
in
the
certificate,
compared
to
Sec.
20
distributorship
agreement
and
to
reap
the
profits
of
the
old
IP
law
which
states
that:
A
certificate
resulting
from
such
performance
are
proprietary
rights
of
registration
of
a
mark
or
trade-‐name
shall
be
which
a
party
may
protect
which
may
otherwise
not
be
prima
facie
evidence
of
the
validity
of
the
diminished,
nay,
rendered
illusory
by
the
expedient
act
registration,
the
registrant's
ownership
of
the
of
utilizing
or
interposing
a
person
or
firm
to
obtain
mark
or
trade-‐name,
and
of
the
registrant's
goods
from
the
supplier
to
defeat
the
very
purpose
for
exclusive
right
to
use
the
same
in
connection
which
the
exclusive
distributorship
was
conceptualized,
with
the
goods,
business
or
services
specified
at
the
expense
of
the
sole
authorized
distributor.
in
the
certificate,
subject
to
any
conditions
and
limitations
stated
therein.
RIGHTS
CONFERRED:
-‐ Under
the
IP
Code,
we
have
shifted
to
the
The
addition
of
the
phrase
“and
those
that
are
REGISTRATION
as
the
basis
of
ownership
related
thereto”
should
be
given
its
o registration
is
the
source
of
right
–
major
significance.
change
in
the
IP
Code
(Jan.
1,
1998)
o prior
to
IP
Code
–
use
was
the
basis
of
Second,
Faberge
relied
heavily
upon
Sec.
20
of
ownership
of
tm
(RA
166)
RA
166,
which
did
not
even
define
the
rights
of
§ Prior
user
can
trump
the
rights
of
a
trademark
owner
but
merely
established
the
a
registrant
prima
facie
evidentiary
value
of
a
certificate
of
o Who
would
prevail
between
the
prior
user
registration.
The
evidentiary
value
of
the
before
Jan.
1,
1998
(since
1980),
but
certificate
as
the
registrant's
exclusive
right
to
neglected
to
file
registration,
and
another
94 z
Intellectual Property Law
entity (registrant) who has registered its be using the same
trademark before the prior user? harmful chemicals.
§ Prior user would prevail. Section o Dilution introduces
236 – confusion to the
§ Ma’am: this is a grey area market. (term coined in
because it was brought about by Ang Tibay v. Teodoro)
the transition § Junior registrant’s
• Right has been vested prior use of the mark
to the effectivity of the IP may undermine
Code. Such vested right the strength of the
cannot be impaired by the senior registrant’s
IP Code. mark. It might also
-‐ Rights of the Registrant: confuse the
o Right to prevent others from using your consuming public.
mark, or a confusingly similar mark, in § Question: Would an ordinary
respect to goods and services registrant be able to claim
§ Actual confusion is not required. protection from dilution under
What is required is a likelihood Section 147?
of confusion. • Answer: Depends on
• Used for the very same how “similar” would be
goods or services = defined. Existing
presumption that there is a jurisprudence provide
likelihood of confusion. for factors.
§ Problem: § Question: Why aren’t ordinary
• Senior registrant: Cosmetics registrants not accorded
and toiletries protection against use by
• Junior registrant: Pesticides dissimilar goods? Why are there 2
• Question: Competing? different rules?
• Answer: • Obligation to recognize
o Note the IPO ruling: if well-‐known marks is a
the goods the same to treaty obligation.
the same class, even if o Ma’am: But the
not identical = treaty does not
subsequent require broader
registration is NOT protection.
allowed • Note: “Well-‐known” –
§ “International under the IP Code,
class” = based on a internationally AND
Treaty locally
§ major factor to § Ma’am: Our law does not
determine if they sufficiently protect locally-‐
are similar = established brands. à From a
CLASSIFICATION policy perspective, we should
o Should not be allowed protect local brands, because it
even if not in the same contributes to our national
class. The business, economy.
goodwill, image and § Ma’am: For local brands, you
reputation of the should focus your arguments in
senior registrant may similarity. Argue that it is broad
be damaged. It will enough to cover the junior
cause dilution. goods. Then argue the
§ Buyers might think “trademark dilution” doctrine
that the origin of from jurisprudence. You can also
the junior argue on the reasonable scope
registrant’s of expansion.
product is the § Ma’am: Being “well-‐known”
senior registrant. internationally is difficult to
Thus, they might prove. There are several factors
o 95
Katrina Michelle Mancao
that
should
be
shown.
Note
registered?
Not
protected
against
dilution.
enumeration
in
246
Corporation
o Ma’am:
But
easy
way
out
is
invoking
Levi
v.
Daway.
Strauss
by
Justice
Tinga.
-‐ Aside:
Article
8,
Sec.
3,
Constitution
–
on
setting
-‐ Issue
of
Parallel
importation:
Does
a
registrant
have
aside
decision.
(Important
in
arguing
that
Faberge
is
the
right
to
prevent
the
importation
of
genuine
not
the
prevailing
ruling
under
RA
166)
goods
by
third
parties?
NO.
o Under
RA
166,
the
prevailing
doctrine
is
o Note
the
strategy
of
pharmaceutical
provided
in
Chua
Che
and
Sta.
Ana
cases
companies
–
entering
into
licensing
(en
banc
decisions).
The
goods
need
not
agreements.
This
is
a
tax
saving
strategy.
be
similar.
o The
IP
Code
did
not
give
a
trademark
o Subsequent
cases
(Philippine
Refining,
registrant
the
exclusive
right
to
import
Esso,
Hickok)
decided
by
division
–
goods
(they
do
not
have
the
right
given
to
patent
must
be
competing.
holders).
Importation
of
genuine
goods
o Faberge
–
an
extraordinary
case,
which
is
manufactured
elsewhere
is
not
prohibited
also
decided
by
division
–
goods
must
be
from
entering
the
Philippines.
specifically
identified
in
the
certificate
of
o NOW:
Cheaper
Medicines
Act
registration
(relying
on
Section
20
of
the
o Yu
v.
CA
–
not
about
trademark
law.
This
is
old
law).
about
contract
law.
Injunction
was
issued
§ Ma’am:
But
Section
20
does
not
because
the
other
party
fraudulently
deal
with
the
scope
of
misled
the
trademark
owner
à
the
Court
protection.
It
only
stated
that
used
third
party
contractual
tort.
Thus,
the
certificate
of
registration
this
may
not
be
used
to
argue
that
shall
be
a
prima
facie
evidence
of
trademark
owner
has
the
right
to
prevent
tm
ownership.
parallel
importation.
• This
ruling
requires
o Ma’am:
Recourse
of
the
exclusive
applicant
to
apply
for
a
distributor
should
be
against
the
lot
of
goods,
and
trademark
owner.
It’s
hard
to
go
against
applicant
must
also
use
the
parallel
importer
because
it
is
not
privy
the
same
mark
for
the
to
the
exclusive
distributorship
products
enumerated
agreement.
Thus,
make
sure
therein.
that
the
agreement
allows
the
§ But
this
case
found
its
way
in
exclusive
distributor
to
go
Canon
Kabushiki
and
Pearl
&
against
the
trademark
owner,
Dean
cases,
giving
the
or
at
least
to
ask
compensation
impression
that
it
is
the
for
any
parallel
importation.
prevailing
ruling.
• Canon
and
Pearl
&
I. Remedies
Dean
were
decided
after
the
IP
Code,
but
SECTION
3.
INTERNATIONAL
CONVENTIONS
AND
involved
facts
occurring
prior
to
the
RECIPROCITY.
–
effectivity
of
the
IP
Any
person
who
is
a
national
or
who
is
domiciled
or
has
Code.
a
real
and
effective
industrial
establishment
in
a
country
§ Faberge
is
no
longer
effective
which
is
a
party
to
any
convention,
treaty
or
agreement
under
the
IP
Code.
There
is
now
relating
to
intellectual
property
rights
or
the
repression
a
change
in
the
phraseology
of
of
unfair
competition,
to
which
the
Philippines
is
also
a
the
similar
provision
–
Section
party,
or
extends
reciprocal
rights
to
nationals
of
the
138
under
the
IP
Code.
Philippines
by
law,
shall
be
entitled
to
benefits
to
the
Furthermore,
Section
147
was
extent
necessary
to
give
effect
to
any
provision
of
such
clear
in
defining
the
scope
of
convention,
treaty
or
reciprocal
law,
IN
ADDITION
to
protection
under
the
IP
Code.
the
rights
to
which
any
owner
of
an
intellectual
property
o 246
Corporation
–
recognized
the
changed
right
is
otherwise
entitled
by
this
Act.
in
phraseology.
-‐ Illustration
of
dilution:
Seiko
watch
and
Seiko
wallet
SECTION
160.
RIGHT
OF
FOREIGN
CORPORATION
TO
SUE
IN
à
The
two
have
different
markets.
Because
of
the
TRADEMARK
OR
SERVICE
MARK
ENFORCEMENT
ACTION.
–
use
of
Seiko
wallet,
Seiko
watch
lost
its
aspirational
Any
foreign
national
or
juridical
person
who
meets
the
value.
requirements
of
Section
3
of
this
Act
and
does
not
-‐ What
about
a
well-‐known
mark
that
is
not
engage
in
business
in
the
Philippines
may
bring
a
CIVIL
96 z
Intellectual Property Law
or
ADMINISTRATIVE
action
hereunder
for
opposition,
"facts
showing
the
capacity
of
a
party
to
sue
or
be
sued
cancellation,
infringement,
unfair
competition,
or
false
or
the
authority
of
a
party
to
sue
or
be
sued
in
a
designation
of
origin
and
false
description,
whether
or
representative
capacity
or
the
legal
existence
of
an
not
it
is
licensed
to
do
business
in
the
Philippines
under
organized
association
of
persons
that
is
made
a
party,
existing
laws.
must
be
averred
"
SECTION
231.
REVERSE
RECIPROCITY
OF
FOREIGN
LAWS.
–
In
the
case
at
bar,
private
respondent
has
chosen
to
Any
condition,
restriction,
limitation,
diminution,
anchor
its
action
under
the
Trademark
Law
of
the
requirement,
penalty
or
any
similar
burden
imposed
by
Philippines,
a
law
which,
as
pointed
out,
explicitly
sets
the
law
of
a
foreign
country
on
a
Philippine
national
down
the
conditions
precedent
for
the
successful
seeking
protection
of
intellectual
property
rights
in
that
prosecution
thereof.
It
is
therefore
incumbent
upon
country,
shall
reciprocally
be
enforceable
upon
nationals
private
respondent
to
comply
with
these
requirements
of
said
country,
within
Philippine
jurisdiction.
or
aver
its
exemption
therefrom,
if
such
be
the
case.
It
may
be
that
private
respondent
has
the
right
to
sue
before
Philippine
courts,
but
our
rules
on
pleadings
LEVITON
INDUSTRIES
V.
SALVADOR
(1982)
require
that
the
necessary
qualifying
circumstances
Doctrine:
which
clothe
it
with
such
right
be
affirmatively
pleaded.
We
agree
with
petitioners
that
respondent
Leviton
Marketing
Co.,
Inc.
had
failed
to
allege
the
essential
facts
PUMA
V.
IAC
(1988)
bearing
upon
its
capacity
to
sue
before
Philippine
courts.
Private
respondent's
action
is
squarely
founded
on
Refresher:
Section
21-‐A
of
Republic
Act
No.
166,
as
amended,
which
The
petitioner,
a
foreign
corporation
duly
organized
and
we
quote:
existing
under
the
laws
of
the
Federal
Republic
of
Germany
and
the
manufacturer
and
producer
of
"PUMA
Sec.
21-‐A.
Any
foreign
corporation
or
juristic
person
to
PRODUCTS,"
filed
a
complaint
for
infringement
of
patent
which
a
mark
or
tradename
has
been
registered
or
or
trademark
with
a
prayer
for
the
issuance
of
a
writ
of
assigned
under
this
Act
may
bring
an
action
hereunder
preliminary
injunction
against
the
private
respondent
for
infringement,
for
unfair
competition,
or
false
before
the
Regional
Trial
Court
of
Makati.
designation
of
origin
and
false
description,
whether
or
not
it
has
been
licensed
to
do
business
in
the
Philippines
Doctrine:
under
Act
numbered
Fourteen
Hundred
and
Fifty-‐Nine,
The
Petitioner
may
still
bring
the
action.
Court
quoted
as
amended,
otherwise
known
as
the
Corporation
Law,
the
decision
in
La
Chemise
Lacoste
v.
Fernandez
(infra).
at
the
time
it
brings
the
complaint;
Provided,
That
the
country
of
which
the
said
foreign
corporation
or
juristic
Petitioner
maintains
that
it
has
substantially
complied
person
is
a
citizen,
or
in
which
it
is
domiciled,
by
treaty,
with
the
requirements
of
Section
21-‐A
of
Republic
Act
convention
or
law,
grants
a
similar
privilege
to
corporate
R.A.
No.
166,
as
amended.
According
to
the
petitioner,
or
juristic
persons
of
the
Philippines.
(As
amended
by
R.A.
its
complaint
specifically
alleged
that
it
is
not
doing
No.
638)
business
in
the
Philippines
and
is
suing
under
the
said
Republic
Act;
that
Section
21-‐A
thereof
provides
that
Undoubtedly,
the
foregoing
section
grants
to
a
foreign
"the
country
of
which
the
said
corporation
or
juristic
corporation,
whether
or
not
licensed
to
do
business
in
person
is
a
citizen,
or
in
which
it
is
domiciled,
by
treaty,
the
Philippines,
the
right
to
seek
redress
for
unfair
convention
or
law,
grants
a
similar
privilege
to
corporate
competition
before
Philippine
courts.
But
the
said
law
is
or
juristic
persons
of
the
Philippines"
but
does
not
not
without
qualifications.
Its
literal
tenor
indicates
as
a
mandatorily
require
that
such
reciprocity
between
the
condition
sine
qua
non
the
registration
of
the
trade
mark
Federal
Republic
of
Germany
and
the
Philippines
be
of
the
suing
foreign
corporation
with
the
Philippine
pleaded;
that
such
reciprocity
arrangement
is
embodied
Patent
Office
or,
in
the
least,
that
it
be
an
asignee
of
in
and
supplied
by
the
Union
Convention
for
the
such
registered
trademark.
The
said
section
further
Protection
of
Industrial
Property
Paris
Convention)
to
requires
that
the
country,
of
which
the
plaintiff
foreign
which
both
the
Philippines
and
Federal
Republic
of
corporation
or
juristic
person
is
a
citizen
or
domicilliary,
Germany
are
signatories
and
that
since
the
Paris
grants
to
Filipino
corporations
or
juristic
entities
the
Convention
is
a
treaty
which,
pursuant
to
our
same
reciprocal
treatment,
either
thru
treaty,
Constitution,
forms
part
of
the
law
of
the
land,
our
convention
or
law,
courts
are
bound
to
take
judicial
notice
of
such
treaty,
and,
consequently,
this
fact
need
not
be
averred
in
the
All
that
is
alleged
in
private
respondent's
complaint
is
complaint.
The
Court
agreed.
that
it
is
a
foreign
corporation.
Such
bare
averment
not
only
fails
to
comply
with
the
requirements
imposed
by
the
aforesaid
Section
21-‐A
but
violates
as
well
the
directive
of
Section
4,
Rule
8
of
the
Rules
of
Court
that
o 97
Katrina Michelle Mancao
LA
CHEMISE
LACOSTE
V.
FERNANDEZ
(1984)
Corporation
The
latter
is
an
independent
entity
which
Doctrine:
buys
and
then
markets
not
only
products
of
the
Hemandas
argues
in
his
comment
on
the
petition
for
petitioner
but
also
many
other
products
bearing
equally
certiorari
that
the
petitioner
being
a
foreign
corporation
well-‐known
and
established
trademarks
and
tradenames.
failed
to
allege
essential
facts
bearing
upon
its
capacity
in
other
words,
Rustan
is
not
a
mere
agent
or
conduit
of
to
sue
before
Philippine
courts.
He
states
that
not
only
is
the
petitioner.
the
petitioner
not
doing
business
in
the
Philippines
but
it
also
is
not
licensed
to
do
business
in
the
Philippines.
He
The
rules
and
regulations
promulgated
by
the
Board
of
also
cites
the
case
of
Leviton
Industries
v.
Salvador
to
Investments
pursuant
to
its
rule-‐making
power
under
support
his
contention
The
Leviton
case,
however,
Presidential
Decree
No.
1789,
otherwise
known
as
the
involved
a
complaint
for
unfair
competition
under
Omnibus
Investment
Code,
support
a
finding
that
the
Section
21-‐A
of
Republic
Act
No.
166
which
provides:
petitioner
is
not
doing
business
in
the
Philippines.
Rule
I,
Sec.
1
(g)
of
said
rules
and
regulations
defines
"doing
Sec.
21
—
A.
Any
foreign
corporation
or
juristic
business"
as
one"
which
includes,
inter
alia:
person
to
which
a
mark
or
tradename
has
been
registered
or
assigned
under
this
Act
may
bring
(1)
A
foreign
firm
which
does
business
an
action
hereunder
for
infringement,
for
through
middlemen
acting
on
their
own
names,
unfair
competition,
or
false
designation
of
such
as
indentors,
commercial
brokers
or
origin
and
false
description,
whether
or
not
it
commission
merchants,
shall
not
be
deemed
has
been
licensed
to
do
business
in
the
doing
business
in
the
Philippines.
But
such
Philippines
under
Act
numbered
Fourteen
indentors,
commercial
brokers
or
commission
Hundred
and
Fifty-‐Nine,
as
amended,
merchants
shall
be
the
ones
deemed
to
be
otherwise
known
as
the
Corporation
Law,
at
doing
business
in
the
Philippines.
the
time
it
brings
the
complaint;
Provided,
That
the
country
of
which
the
said
foreign
(2)
Appointing
a
representative
or
corporation
or
juristic
person
is
a
citizen,
or
in
distributor
who
is
domiciled
in
the
Philippines,
which
it
is
domiciled,
by
treaty,
convention
or
unless
said
representative
or
distributor
has
an
law,
grants
a
similar
privilege
to
corporate
or
independent
status,
i.e.,
it
transacts
business
in
juristic
persons
of
the
Philippines.
its
name
and
for
its
account,
and
not
in
the
name
or
for
the
account
of
a
principal
Thus,
We
held
that
it
was
not
enough
for
Leviton,
a
foreign
where
a
foreign
firm
is
represented
by
a
person
corporation
organized
and
existing
under
the
laws
of
the
or
local
company
which
does
not
act
in
its
State
of
New
York,
United
States
of
America,
to
merely
name
but
in
the
name
of
the
foreign
firm
the
allege
that
it
is
a
foreign
corporation.
It
averred
in
latter
is
doing
business
in
the
Philippines.
Paragraph
2
of
its
complaint
that
its
action
was
being
filed
under
the
provisions
of
Section
21-‐A
of
Republic
Act
Applying
the
above
provisions
to
the
facts
of
this
case,
No.
166,
as
amended.
Compliance
with
the
requirements
we
find
and
conclude
that
the
petitioner
is
not
doing
imposed
by
the
abovecited
provision
was
necessary
business
in
the
Philippines.
Rustan
is
actually
a
because
Section
21-‐A
of
Republic
Act
No.
166
having
middleman
acting
and
transacting
business
in
its
own
explicitly
laid
down
certain
conditions
in
a
specific
name
and
or
its
own
account
and
not
in
the
name
or
for
proviso,
the
same
must
be
expressly
averred
before
a
the
account
of
the
petitioner.
successful
prosecution
may
ensue.
It
is
therefore,
necessary
for
the
foreign
corporation
to
comply
with
But
even
assuming
the
truth
of
the
private
respondent's
these
requirements
or
aver
why
it
should
be
exempted
allegation
that
the
petitioner
failed
to
allege
material
from
them,
if
such
was
the
case.
The
foreign
corporation
facts
in
its
petition
relative
to
capacity
to
sue,
the
may
have
the
right
to
sue
before
Philippine
courts,
but
petitioner
may
still
maintain
the
present
suit
against
our
rules
on
pleadings
require
that
the
qualifying
respondent
Hemandas.
As
early
as
1927,
this
Court
was,
circumstances
necessary
for
the
assertion
of
such
right
and
it
still
is,
of
the
view
that
a
foreign
corporation
not
should
first
be
affirmatively
pleaded.
doing
business
in
the
Philippines
needs
no
license
to
sue
before
Philippine
courts
for
infringement
of
trademark
In
contradistinction,
the
present
case
involves
a
and
unfair
competition.
Thus,
in
Western
Equipment
and
complaint
for
violation
of
Article
189
of
the
Revised
Supply
Co.
v.
Reyes
(51
Phil.
115),
this
Court
held
that
a
Penal
Code.
The
Leviton
case
is
not
applicable.
foreign
corporation
which
has
never
done
any
business
in
the
Philippines
and
which
is
unlicensed
and
In
the
present
case,
however,
the
petitioner
is
a
foreign
unregistered
to
do
business
here,
but
is
widely
and
corporation
not
doing
business
in
the
Philippines.
The
favorably
known
in
the
Philippines
through
the
use
marketing
of
its
products
in
the
Philippines
is
done
therein
of
its
products
bearing
its
corporate
and
through
an
exclusive
distributor,
Rustan
Commercial
tradename,
has
a
legal
right
to
maintain
an
action
in
the
98 z
Intellectual Property Law
Philippines
to
restrain
the
residents
and
inhabitants
Protection
of
Industrial
Property
to
which
the
Philippines
thereof
from
organizing
a
corporation
therein
bearing
and
France
are
parties.
We
are
simply
interpreting
and
the
same
name
as
the
foreign
corporation,
when
it
enforcing
a
solemn
international
commitment
of
the
appears
that
they
have
personal
knowledge
of
the
Philippines
embodied
in
a
multilateral
treaty
to
which
we
existence
of
such
a
foreign
corporation,
and
it
is
are
a
party
and
which
we
entered
into
because
it
is
in
our
apparent
that
the
purpose
of
the
proposed
domestic
national
interest
to
do
so.
corporation
is
to
deal
and
trade
in
the
same
goods
as
those
of
the
foreign
corporation.
REMEDIES
1) Administrative
We
further
held:
a. Opposition
b. Cancellation
That
company
is
not
here
seeking
to
enforce
c. Intellectual
Property
right
Violation
(IPV
–
any
legal
or
control
rights
arising
from,
or
new
to
IP
Code)
growing
out
of,
any
business
which
it
has
d. Customs:
Border
enforcement
(for
transacted
in
the
Philippine
Islands.
The
sole
counterfeit
goods)
purpose
of
the
action
is
to
protect
its
2) Criminal
reputation,
its
corporate
name,
its
goodwill,
a. Infringement
whenever
that
reputation,
corporate
name
or
b. Unfair
competition
goodwill
have,
through
the
natural
c. False
designation
of
origin
development
of
its
trade,
established
d. Section
162
–
no
specific
criminal
remedy,
themselves.'
And
it
contends
that
its
rights
to
but
you
can
file
for
perjury
the
use
of
its
corporate
and
trade
name
is
a
3) Civil
property
right,
a
right
in
rem,
which
it
may
a. Infringement
assert
and
protect
against
all
the
world,
in
any
b. Unfair
competition
of
the
courts
of
the
world-‐even
in
jurisdictions
c. False
designation
of
origin
where
it
does
not
transact
business-‐just
the
d. False
or
fraudulent
declaration
(most
same
as
it
may
protect
its
tangible
property,
useless)
real
or
personal,
against
trespass,
or
conversion.
That
point
is
sustained
by
the
Who
has
the
remedy?
All
persons
who
satisfies
the
authorities,
and
is
well
stated
in
Hanover
Star
requisite
in
Section
3.
Mining
Co.
v.
Allen
and
Wheeler
Co.
in
which
-‐ Plead
capacity
to
sue.
Otherwise,
petition
will
the
syllabus
says,
“Since
it
is
the
trade
and
not
be
vulnerable
to
a
Motion
to
Dismiss.
the
mark
that
is
to
be
protected,
a
trade-‐mark
-‐ Easiest:
Allege
that
it
is
a
domiciliary
of
a
state
acknowledges
no
territorial
boundaries
of
that
is
a
party
to
a
Convention
or
Treaty
with
municipalities
or
states
or
nations,
but
extends
the
Philippines.
This
is
easier
because
then,
the
to
every
market
where
the
trader's
goods
have
court
can
take
judicial
notice.
become
known
and
Identified
by
the
use
of
the
-‐ If
foreign
corporation
not
registered
BUT
doing
mark.”
business
in
the
Philippines,
no
remedy.
General
rule
in
Corporation
Code
applies.
Foreign
Our
recognizing
the
capacity
of
the
petitioner
to
sue
is
corporation
not
given
a
remedy.
not
by
any
means
novel
or
precedent
setting.
Our
jurisprudence
is
replete
with
cases
illustrating
instances
Note:
Causes
of
action
in
criminal
and
civil
when
foreign
corporations
not
doing
business
in
the
remedies
may
also
be
filed
as
IPV.
IPV
is
broad
Philippines
may
nonetheless
sue
in
our
courts.
In
East
enough
to
cover
infringement,
unfair
Board
Navigation
Ltd,
v.
Ysmael
and
Co.,
Inc.,
we
competition,
false
designation
of
origin,
false
recognized
a
right
of
foreign
corporation
to
sue
on
or
fraudulent
declaration.
isolated
transactions.
In
General
Garments
Corp.
v.
Director
of
Patents,
we
sustained
the
right
of
Puritan
1. Administrative
Sportswear
Corp.,
a
foreign
corporation
not
licensed
to
do
and
not
doing
business
in
the
Philippines,
to
file
a
petition
for
cancellation
of
a
trademark
before
the
a. Cancellation
Patent
Office.
proceedings
In
upholding
the
right
of
the
petitioner
to
maintain
the
SECTION
151.
CANCELLATION.
-‐
present
suit
before
our
courts
for
unfair
competition
or
151.1.
A
PETITION
TO
CANCEL
a
registration
of
a
mark
infringement
of
trademarks
of
a
foreign
corporation,
we
under
this
Act
may
be
filed
with
the
Bureau
of
Legal
are
moreover
recognizing
our
duties
and
the
rights
of
Affairs
by
any
person
who
believes
that
he
is
or
will
be
foreign
states
under
the
Paris
Convention
for
the
o 99
Katrina Michelle Mancao
damaged
by
the
registration
of
a
mark
under
this
Act
as
152.2.
The
use
of
the
mark
in
a
form
different
from
follows:
the
form
in
which
it
is
registered,
which
does
not
alter
its
distinctive
character,
shall
not
be
ground
for
(a)
Within
five
(5)
years
from
the
date
of
the
cancellation
or
removal
of
the
mark
and
shall
not
registration
of
the
mark
under
this
Act.
diminish
the
protection
granted
to
the
mark.
(b)
AT
ANY
TIME,
if
the
registered
mark
becomes
152.3.
The
use
of
a
mark
in
connection
with
one
or
the
generic
name
for
the
goods
or
services,
or
a
portion
more
of
the
goods
or
services
belonging
to
the
class
in
thereof,
for
which
it
is
registered,
or
has
been
respect
of
which
the
mark
is
registered
shall
prevent
its
abandoned,
or
its
registration
was
obtained
cancellation
or
removal
in
respect
of
all
other
goods
or
fraudulently
or
contrary
to
the
provisions
of
this
Act,
or
services
of
the
same
class.
if
the
registered
mark
is
being
used
by,
or
with
the
permission
of,
the
registrant
so
as
to
misrepresent
the
152.4.
The
use
of
a
mark
by
a
company
related
with
source
of
the
goods
or
services
on
or
in
connection
with
the
registrant
or
applicant
shall
inure
to
the
latter's
which
the
mark
is
used.
If
the
registered
mark
becomes
benefit,
and
such
use
shall
not
affect
the
validity
of
such
the
generic
name
for
less
than
all
of
the
goods
or
mark
or
of
its
registration:
PROVIDED,
That
such
mark
is
services
for
which
it
is
registered,
a
petition
to
cancel
the
not
used
in
such
manner
as
to
deceive
the
public.
If
use
registration
for
only
those
goods
or
services
may
be
filed.
of
a
mark
by
a
person
is
controlled
by
the
registrant
or
A
registered
mark
shall
not
be
deemed
to
be
the
generic
applicant
with
respect
to
the
nature
and
quality
of
the
name
of
goods
or
services
solely
because
such
mark
is
goods
or
services,
such
use
shall
inure
to
the
benefit
of
also
used
as
a
name
of
or
to
identify
a
unique
product
or
the
registrant
or
applicant.
service.
The
primary
significance
of
the
registered
mark
to
the
relevant
public
rather
than
purchaser
motivation
shall
be
the
TEST
FOR
DETERMINING
WHETHER
THE
SECTION
153.
REQUIREMENTS
OF
PETITION;
NOTICE
AND
REGISTERED
MARK
HAS
BECOME
THE
GENERIC
name
of
HEARING.
–
goods
or
services
on
or
in
connection
with
which
it
has
Insofar
as
applicable,
the
petition
for
cancellation
shall
been
used.
be
in
the
same
form
as
that
provided
in
Section
1348
hereof,
and
notice
and
hearing
shall
be
as
provided
in
(c)
At
any
time,
if
the
registered
owner
of
the
Section
1359
hereof.
mark
without
legitimate
reason
fails
to
use
the
mark
within
the
Philippines,
or
to
cause
it
to
be
used
in
the
SECTION
154.
CANCELLATION
OF
REGISTRATION.
–
Philippines
by
virtue
of
a
license
during
an
If
the
Bureau
of
Legal
Affairs
finds
that
a
case
for
uninterrupted
period
of
three
(3)
years
or
longer.
cancellation
has
been
made
out,
it
shall
order
the
cancellation
of
the
registration.
When
the
order
or
151.2.
Notwithstanding
the
foregoing
provisions,
the
judgment
BECOMES
FINAL,
any
right
conferred
by
such
court
or
the
administrative
agency
vested
with
registration
upon
the
registrant
or
any
person
in
jurisdiction
to
hear
and
adjudicate
any
action
to
enforce
interest
of
record
shall
terminate.
Notice
of
cancellation
the
rights
to
a
registered
mark
shall
likewise
exercise
shall
be
published
in
the
IPO
Gazette.
jurisdiction
to
determine
whether
the
registration
of
said
mark
may
be
cancelled
in
accordance
with
this
Act.
The
filing
of
a
suit
to
enforce
the
registered
mark
with
the
proper
court
or
agency
shall
exclude
any
other
court
or
8
Section
134.
Opposition.
–
x
x
x
Such
opposition
shall
be
in
agency
from
assuming
jurisdiction
over
a
subsequently
writing
and
verified
by
the
oppositor
or
by
any
person
on
his
filed
petition
to
cancel
the
same
mark.
On
the
other
behalf
who
knows
the
facts,
and
shall
specify
the
grounds
on
hand,
the
earlier
filing
of
petition
to
cancel
the
mark
which
it
is
based
and
include
a
statement
of
the
facts
relied
with
the
Bureau
of
Legal
Affairs
shall
not
constitute
a
upon.
Copies
of
certificates
of
registration
of
marks
registered
prejudicial
question
that
must
be
resolved
before
an
in
other
countries
or
other
supporting
documents
mentioned
in
action
to
enforce
the
rights
to
same
registered
mark
the
opposition
shall
be
filed
therewith,
together
with
the
translation
in
English,
if
not
in
the
English
language.
For
good
may
be
decided.
cause
shown
and
upon
payment
of
the
required
surcharge,
the
time
for
filing
an
opposition
may
be
extended
by
the
Director
of
SECTION
152.
NON-‐USE
OF
A
MARK
WHEN
EXCUSED.
–
Legal
Affairs,
who
shall
notify
the
applicant
of
such
extension.
152.1.
Non-‐use
of
a
mark
may
be
excused
if
caused
by
The
Regulations
shall
fix
the
maximum
period
of
time
within
which
to
file
the
opposition.
circumstances
arising
independently
of
the
will
of
the
9
Section
135.
Notice
and
Hearing.
-‐
Upon
the
filing
of
an
trademark
owner.
LACK
OF
FUNDS
shall
not
excuse
non-‐ opposition,
the
Office
shall
serve
notice
of
the
filing
on
the
use
of
a
mark.
applicant,
and
of
the
date
of
the
hearing
thereof
upon
the
applicant
and
the
oppositor
and
all
other
persons
having
any
right,
title
or
interest
in
the
mark
covered
by
the
application,
as
appear
of
record
in
the
Office.
100 z
Intellectual Property Law
SECTION
230.
EQUITABLE
PRINCIPLES
TO
GOVERN
brassiere,
does
not
affect
its
registrability
as
a
trademark.”
PROCEEDINGS.
–
In
all
inter
partes
proceedings
in
the
Office
under
this
Act,
There
being
no
evidence
of
use
of
the
mark
by
others
the
equitable
principles
of
laches,
estoppel,
and
before
1932,
or
that
appellee
abandoned
use
thereof,
the
acquiescence
where
applicable,
may
be
considered
and
registration
of
the
mark
was
made
in
accordance
with
applied.
the
Trademark
Law.
Granting
that
appellant
used
the
mark
when
appellee
stopped
using
it
during
the
period
SECTION
232.2.
of
time
that
the
Government
imposed
restrictions
on
Unless
expressly
provided
in
this
Act
or
other
statutes,
importation
of
respondent's
brassiere
bearing
the
appeals
from
decisions
of
administrative
officials
shall
be
trademark,
such
temporary
non-‐use
did
not
affect
the
provided
in
the
Regulations.
rights
of
appellee
because
it
was
occasioned
by
government
restrictions
and
was
not
permanent,
ROMERO
V.
MAIDEN
FORM
BRASSIERE
CO.
(1964)
intentional,
and
voluntary.
Refresher:
Maiden
Form
filed
an
application
for
registration
of
the
To
work
an
abandonment,
the
disuse
must
be
trademark
"Adagio"
for
the
brassieres
manufactured
by
permanent
and
not
ephemeral;
it
must
be
it
with
the
Director
of
Patents.
In
its
application,
intentional
and
voluntary,
and
not
involuntary
respondent
company
alleged
that
said
trademark
was
or
even
compulsory.
There
must
be
a
first
used
by
it
in
the
United
States
on
October
26,
1937,
thorough-‐going
discontinuance
of
any
trade-‐
and
in
the
Philippines
on
August
31,
1946;
that
it
had
mark
use
of
the
mark
in
question.
been
continuously
used
by
it
in
trade
in,
or
with
the
Philippines
for
over
10
years;
that
said
trademark
"is
on
The
use
of
the
trademark
by
other
manufacturers
did
the
date
of
this
application,
actually
used
by
respondent
not
indicate
an
intention
on
the
part
of
appellee
to
company
on
the
following
goods,
classified
according
to
abandon
it.
the
official
classification
of
goods
(Rule
82)
-‐
Brassieres,
Class
40";
and
that
said
trademark
is
applied
or
affixed
Non-‐use
because
of
legal
restrictions
is
not
evidence
of
by
respondent
to
the
goods
by
placing
thereon
a
woven
an
intent
to
abandon.
Non-‐use
of
their
ancient
trade-‐
label
on
which
the
trademark
is
shown.
mark
and
the
adoption
of
new
marks
by
the
Carthusian
Monks
after
they
had
been
compelled
to
leave
France
Petitioner
filed
with
the
Director
a
petition
for
was
consistent
with
an
intention
to
retain
their
right
to
cancellation
of
the
trademark
on
the
grounds
that
it
is
a
use
their
old
mark.
Abandonment
will
not
be
inferred
common
descriptive
name
of
an
article
or
substance
on
from
a
disuse
over
a
period
of
years
occasioned
by
which
the
patent
has
expired.
Petitioner
alleged
that
statutory
restrictions
on
the
name
of
liquor.
said
trademark
has
not
become
distinctive
of
respondent
company's
goods
or
business;
that
it
has
PHILIPPINE
NUT
INDUSTRY
V.
STANDARD
BRANDS,
INC.
been
used
by
respondent
company
to
classify
the
goods
(1975)
(the
brassieres)
manufactured
by
it,
in
the
same
manner
Refresher:
as
petitioner
uses
the
same;
that
said
trademark
has
Philippine
Nut,
a
domestic
corporation,
obtained
from
been
used
by
petitioner
for
almost
6
years;
that
it
has
the
Patent
office
a
certificate
of
registration
covering
the
become
a
common
descriptive
name;
and
that
it
is
not
trademark
"Philippine
Planters
Cordial
Peanuts,"
the
registered
in
accordance
with
the
requirements
of
label
used
on
its
product
of
salted
peanuts.
Section
37(a),
Chapter
XI
of
Republic
Act
No.
166.
Standard
Brands,
a
foreign
corporation,
filed
a
case
for
Doctrine:
the
cancellation
of
Philippine
Nut's
certificate
of
The
evidence
shows
that
the
trademark
"Adagio"
is
a
registration
on
the
ground
that
such
trademark
closely
musical
term,
which
means
slowly
or
in
an
easy
manner,
resembles,
and
is
confusingly
similar
to
its
trademark
and
was
used
as
a
trademark
by
the
owners
thereof
(the
"Planters
Cocktail
Peanuts."
Rosenthals
of
Maiden
Form
Co.,
New
York)
because
they
are
musically
inclined.
Being
a
musical
term,
it
is
used
in
Issue
1:
an
arbitrary
(fanciful)
sense
as
a
trademark
for
brassieres
The
first
argument
advanced
by
petitioner
which
We
manufactured
by
respondent
company.
It
also
appears
believe
goes
to
the
core
of
the
matter
in
litigation
is
that
that
respondent
company
has,
likewise,
adopted
other
the
Director
of
Patents
erred
in
holding
that
the
musical
terms
such
as
"Etude",
"Chansonette",
dominant
portion
of
the
label
of
Standard
Brands
in
its
"Prelude",
"Over-‐ture",
and
"Concerto",
to
identify,
as
a
cans
of
salted
peanuts
consists
of
the
word
PLANTERS
trademark,
the
different
styles
or
types
of
its
brassieres.
which
has
been
used
in
the
label
of
Philippine
Nut
for
its
As
respondent
Director
pointed
out,
"the
fact
that
said
own
product.
According
to
petitioner,
PLANTERS
cannot
mark
is
used
also
to
designate
a
particular
style
of
be
considered
as
the
dominant
feature
of
the
o 101
Katrina Michelle Mancao
trademarks
in
question
because
it
is
a
mere
descriptive
word
or
phrase
has
come
to
mean
that
the
article
was
term,
an
ordinary
word
which
is
defined
in
Webster
his
product.
International
Dictionary
as
"one
who
or
that
which
plants
or
sows,
a
farmer
or
an
agriculturist."
The
applicability
of
the
doctrine
of
secondary
meaning
to
the
situation
now
before
Us
is
appropriate
because
Held:
there
is
oral
and
documentary
evidence
showing
that
the
We
find
the
argument
without
merit.
While
it
is
true
that
word
PLANTERS
has
been
used
by
and
closely
associated
PLANTERS
is
an
ordinary
word,
nevertheless
it
is
used
in
with
Standard
Brands
for
its
canned
salted
peanuts
since
the
labels
not
to
describe
the
nature
of
the
product,
but
1938
in
this
country.
Not
only
is
that
fact
admitted
by
to
project
the
source
or
origin
of
the
salted
peanuts
petitioner
in
the
amended
stipulation
of
facts,
but
the
contained
in
the
cans.
The
word
PLANTERS
printed
matter
has
been
established
by
testimonial
and
across
the
upper
portion
of
the
label
in
bold
letters
easily
documentary
evidence
consisting
of
invoices
covering
attracts
and
catches
the
eye
of
the
ordinary
consumer
the
sale
of
"PLANTERS
cocktail
peanuts".
In
other
words,
and
it
is
that
word
and
none
other
that
sticks
in
his
mind
there
is
evidence
to
show
that
the
term
PLANTERS
has
when
he
thinks
of
salted
peanuts.
become
a
distinctive
mark
or
symbol
insofar
as
salted
peanuts
are
concerned,
and
by
priority
of
use
dating
as
In
cases
of
this
nature
there
can
be
no
better
evidence
far
back
as
1938,
respondent
Standard
Brands
has
as
to
what
is
the
dominant
feature
of
a
label
and
as
to
acquired
a
preferential
right
to
its
adoption
as
its
whether
there
is
a
confusing
similarity
in
the
contesting
trademark
warranting
protection
against
its
usurpation
trademarks
than
the
labels
themselves.
A
visual
and
by
another.
Ubi
jus
ibi
remedium.
Where
there
is
a
right
graphic
presentation
of
the
labels
will
constitute
the
there
is
a
remedy.
Standard
Brands
has
shown
the
best
argument
for
one
or
the
other.
existence
of
a
property
right
and
respondent
Director,
has
afforded
the
remedy.
It
is
true
that
there
are
other
words
used
such
as
"Cordial"
in
petitioner's
can
and
"Cocktail"
in
Standard
Still
on
this
point,
petitioner
contends
that
Standard
Brands',
which
are
also
prominently
displayed,
but
these
Brands'
use
of
the
trademark
PLANTERS
was
interrupted
words
are
mere
adjectives
describing
the
type
of
during
the
Japanese
occupation
and
in
fact
was
peanuts
in
the
labeled
containers
and
are
not
sufficient
discontinued
when
the
importation
of
peanuts
was
to
warn
the
unwary
customer
that
the
two
products
prohibited
by
Central
Bank
regulations
effective
July
1,
come
form
distinct
sources.
As
a
whole
it
is
the
word
1953,
hence
it
cannot
be
presumed
that
it
has
acquired
a
PLANTERS
which
draws
the
attention
of
the
buyer
and
secondary
meaning.
We
hold
otherwise.
Respondent
leads
him
to
conclude
that
the
salted
peanuts
contained
Director
correctly
applied
the
rule
that
non-‐use
of
a
in
the
two
cans
originate
from
one
and
the
same
trademark
on
an
article
of
merchandize
due
to
legal
manufacturer.
In
fact,
when
a
housewife
sends
her
restrictions
or
circumstances
beyond
one's
control
is
not
housemaid
to
the
market
to
buy
canned
salted
peanuts,
to
be
considered
as
an
abandonment.
she
will
describe
the
brand
she
wants
by
using
the
word
PLANTERS
and
not
"Cordial"
nor
"Cocktail".
ANCHOR
TRADING
CO.
V.
DIRECTOR
OF
PATENTS
(1956)
Doctrine:
Issue
2:*
The
principal
legal
issue
here
is
whether
or
not
the
What
is
next
submitted
by
petitioner
is
that
it
was
error
failure
of
the
respondent-‐appellee
to
register
his
for
respondent
Director
to
have
enjoined
it
from
using
opposition
to
the
petition
for
registration
in
due
time
PLANTERS
in
the
absence
of
evidence
showing
that
the
estops
him
from
asking
for
the
cancellation
of
the
term
has
acquired
secondary
meaning.
Petitioner,
certificate
of
registration
issued
in
favor
of
the
invoking
American
jurisprudence,
asserts
that
the
first
petitioner-‐appellant.
The
issue
should
be
resolved
in
the
user
of
a
tradename
composed
of
common
words
is
negative.
The
only
consequence
resulting
from
a
late
given
no
special
preference
unless
it
is
shown
that
such
filing
of
an
opposition
to
any
application
for
words
have
acquired
secondary
meaning,
and
this,
registration
of
a
trademark
is
the
oppositor’s
respondent
Standard
Brands
failed
to
do
when
no
relinquishment
of
the
privilege
given
to
him
by
laws
to
evidence
was
presented
to
establish
that
fact.
object
to
such
registration,
but
such
cannot
prevent
him
from
asking
later
for
its
cancellation
when
there
are
Held:
good
grounds
justifying
it.
This
Court
held
that
the
doctrine
is
to
the
effect
that
a
word
or
phrase
originally
incapable
of
exclusive
THE
C LOROX
CO.
V.
DIRECTOR
OF
PATENTS
(1967)
appropriation
with
reference
to
an
article
on
the
market,
Refresher:
because
geographically
or
otherwise
descriptive,
might
nevertheless
have
been
used
so
long
and
so
exclusively
On
April
7,
1959,
respondent
Go
Siu
Gian
filed
with
the
Patent
Office
an
application
for
registration
of
the
by
one
producer
with
reference
to
his
article
that,
in
that
trademark
"OLDROX,"
with
an
accompanying
statement
trade
and
to
that
branch
of
the
purchasing
public,
the
that
he
is
a
citizen
of
China,
residing
and
doing
business
102 z
Intellectual Property Law
in
the
Philippines
at
838
Folgueras
St.,
Manila;
that
he
choose
which
remedy
it
deems
best
for
the
protection
of
has
adopted
the
trademark
"OLDROX"
for
his
goods
its
rights.
(whitening
agent
for
bleaching)
in
trade
and
commerce
in
the
country;
and
that
said
trademark,
shown
on
WOLVERINE
WORLDWIDE,
INC.
V.
CA
AND
LOLITO
CRUZ
printed
labels
affixed
to
the
goods,
or
to
the
containers
(1989)
thereof,
has
been
used
by
him
since
February
1,
1959.
Refresher:
The
application
was
allowed
and
published
in
the
issue
of
the
Official
Gazette
dated
April
25,
1960,
which
was
On
February
8,
1984,
the
petitioner,
a
foreign
corporation
organized
and
existing
under
the
laws
of
the
released
for
circulation
on
August
22,
1960.
United
States,
brought
a
petition
before
the
Philippine
Patent
Office,
docketed
as
Inter
Partes
Case
No.
1807,
On
September
21
of
the
same
year,
or
within
30
days
for
the
cancellation
of
Certificate
of
Registration
No.
from
the
date
of
its
publication
in
the
Official
Gazette,
an
24986-‐B
of
the
trademark
HUSH
PUPPIES
and
DOG
unverified
opposition
to
the
application
was
filed
by
the
DEVICE
issued
to
the
private
respondent,
a
Filipino
law
firm
Lichauco,
Picazo
and
Agcaoili
in
behalf
of
the
citizen.
Clorox
Company,
herein
petitioner.
Doctrine:
In
support
of
its
petition
for
cancellation,
the
petitioner
alleged,
inter
alia,
that
it
is
the
registrant
of
the
The
rule
is
well
settled
that
courts
may
vacate
judgments
internationally
known
trademark
HUSH
PUPPIES
and
the
and
grant
new
trials
or
enter
new
judgments
on
the
DEVICE
of
a
Dog
in
the
United
States
and
in
other
grounds
of
error
in
fact
or
in
law.
They
have
no
power,
of
countries
which
are
members
of
the
Paris
Convention
for
course,
to
vacate
judgments
after
they
have
become
the
Protection
of
Industrial
Property;
that
the
goods
sold
final,
in
the
sense
that
the
party
in
whose
favor
they
are
by
the
private
respondent,
on
the
one
hand,
and
by
the
rendered
is
entitled
as
of
right,
to
have
execution
petitioner,
on
the
other
hand,
belong
to
the
same
class
thereon,
but
prior
thereto,
the
courts
have
plenary
such
that
the
private
respondent's
use
of
the
same
control
over
the
proceedings
including
the
judgment,
and
in
the
exercise
of
a
sound
judicial
discretion,
may
trademark
in
the
Philippines
(which
is
a
member
of
said
Paris
Convention)
in
connection
with
the
goods
he
sells
take
such
proper
action
in
this
regard
as
truth
and
justice
constitutes
an
act
of
unfair
competition,
as
denied
in
the
may
require.
The
order
of
herein
respondent
dismissing
Paris
Convention.
the
opposition
of
petitioner
to
the
registration
of
the
trademark
in
question
may
amount
to
considerable
Subsequently,
the
private
respondent
moved
to
dismiss
injustice
to
the
opposer
Clorox
Company,
the
order
the
petition
on
the
ground
of
res
judicata,
averring
that
having
been
entered
not
upon
the
merits
of
the
in
1973,
or
more
than
ten
years
before
this
petition
(Inter
controversy;
and
the
possibility
of
such
serious
Partes
Case
No.
1807)
was
filed,
the
same
petitioner
filed
consequences
necessitates
a
careful
examination
of
the
grounds
upon
which
it
requests
that
the
order
be
set
two
petitions
for
cancellation
(Inter
Partes
Cases
Nos.
700
and
701)
and
was
a
party
to
an
interference
aside.
It
must
be
remembered
that
the
only
discretion
proceeding
(Inter
Partes
Case
No.
709),
all
of
which
conferred
upon
officers
is
a
legal
discretion,
and
when
involved
the
trademark
HUSH
PUPPIES
and
DEVICE,
anything
is
left
to
any
officer
to
be
done
according
to
his
before
the
Philippine
Patent
Office.
The
Director
of
discretion,
the
law
intends
it
to
be
done
with
a
sound
Patents
had
ruled
in
all
three
inter
parties
cases
in
favor
discretion
and
according
to
law.
And
when,
as
in
this
of
Ramon
Angeles,
the
private
respondent's
case,
the
allegation
of
the
pleading
clearly
show
predecessor-‐in-‐interest,
to
wit:
circumstances
constituting
mistake
and
excusable
negligence
which
are
grounds
for
a
motion
for
reconsideration
of
the
order
in
question,
a
dismissal
of
WHEREFORE,
for
all
the
foregoing
considerations,
the
motion
and
a
denial
of
the
relief
sought
upon
the
flimsy
excuse
that
the
same
was
filed
as
a
petition
for
1.
The
petitions
seeking
cancellation
of
relief,
will
amount
to
an
abuse
of
that
discretion.
Neither
may
we
consider
the
argument
of
herein
respondent
Registration
Nos.
SR-‐1099
and
SR-‐1526,
respectively,
are
both
denied
and
accordingly
that
the
petitioner
is
not
totally
deprived
of
its
right
to
DISMISSED;
question
the
registration
of
the
trademark
in
question
because
it
may
still
pursue
a
cancellation
proceeding
2.
Respondent-‐Registrant/Junior
Party-‐
under
Sections
17
to
19
of
Republic
Act
No.
166,
and
Rules
191
to
197
of
the
Rules
of
Practice
in
Trademark
Applicant,
Roman
Angeles,
is
hereby
adjudged
as
the
prior
user
and
adopter
of
the
trademark
Cases.
The
opposition
to
a
registration
and
the
petition
HUSH
PUPPIES
&
DEVICE,
under
Appl.
Serial
No.
for
cancellation
are
alternative
proceedings
which
a
17174,
and
therefore,
the
same
given
due
party
may
avail
of
according
to
his
purposes,
needs,
and
predicaments,
and
herein
petitioner
has
the
right
to
course;
and
o 103
Katrina Michelle Mancao
3.
Registration
No.
14969
of
Dexter
Sales
Between
the
earlier
petitions
and
the
present
one
there
Company,
assignor
to
Wolverine
Worldwide,
is
substantial
identity
of
parties,
subject
matter,
and
Inc.,
covering
the
trademark
HUSH
PUPPIES
&
cause
of
action.
Representation
of
a
Dogie
Head,
is
hereby
CANCELLED.
The
petitioner
in
all
of
these
cases
is
Wolverine
Worldwide,
Inc.
The
respondent-‐registrant
in
this
case
is
Doctrine:
the
assignee
of
Randelson
Agro-‐Industrial
Development,
The
Court
has
repeatedly
held
that
for
a
judgment
to
be
Inc.
(formerly
known
as
Randelson
Shoes,
Inc.)
which
in
a
bar
to
a
subsequent
case,
the
following
requisites
must
turn,
acquired
its
right
from
Ramon
Angeles,
the
original
concur:
(1)
it
must
be
a
final
judgment;
(2)
the
court
respondents-‐registrant.
which
rendered
it
had
jurisdiction
over
the
subject
matter
and
the
parties;
(3)
it
must
be
a
judgment
on
the
As
regards
the
subject
matter,
all
of
these
cases
refer
to
merits;
and
(4)
there
must
be
Identity
between
the
two
the
cancellation
of
registration
of
the
trademark
HUSH
cases,
as
to
parties,
—
subject
matter,
and
cause
of
PUPPIES
and
DEVICE
of
a
Dog.
action.
Finally,
there
is
identity
of
cause
of
action,
which
is
the
Contrary
to
the
petitioner's
assertion,
the
judgment
in
alleged
wrongful
or
erroneous
registration
of
the
Inter
Partes
Cases
Nos.
700,
701,
and
709
had
long
since
trademark.
become
final
and
executory.
That
Sec.
17
of
Republic
Act
166,
also
known
as
the
Trademark
Law,
allows
the
SHANGRILA
V.
CA
(1999)
cancellation
of
a
registered
trademark
is
not
a
valid
Court
decision:
premise
for
the
petitioner's
proposition
that
a
decision
The
earlier
institution
of
an
inter
partes
case
for
granting
registration
of
a
trademark
cannot
be
imbued
cancellation
of
a
registered
service
mark
and
device/logo
with
the
character
of
absolute
finality
as
is
required
in
with
BPTTT
cannot
effectively
bar
the
subsequent
filing
res
judicata.
A
judgment
or
order
is
final,
as
to
give
it
the
of
an
infringement
case
by
the
registrant.
authority
of
res
judicata,
if
it
can
no
longer
be
modified
by
the
court
issuing
it
or
by
any
other
court.
In
the
case
REASON:
The
certificate
of
registration
upon
which
the
at
bar,
the
decision
of
the
Court
of
Appeals
affirming
infringement
case
is
based
remains
valid
and
subsisting
that
of
the
Director
of
Patents,
in
the
cancellation
cases
as
long
as
it
has
not
been
cancelled
by
the
Bureau
or
by
filed
in
1973,
was
never
appealed
to
us.
Consequently,
an
infringement
court.
As
such,
the
registration
when
the
period
to
appeal
from
the
Court
of
Appeals
to
continues
as
prima
facie
evidence
of
the
validity
of
this
Court
lapsed,
with
no
appeal
having
been
perfected,
registration,
registrant’s
ownership
of
the
mark
and
the
foregoing
judgment
denying
cancellation
of
tradename
and
of
the
registrant’s
exclusive
right
to
use
registration
in
the
name
of
private
respondent's
the
same
in
connection
with
the
goods,
business
or
predecessor-‐in-‐interest
but
ordering
cancellation
of
services
specified
in
the
certificate.
registration
in
the
name
of
the
petitioner's
predecessor-‐
in-‐interest,
became
the
settled
law
in
the
case.
In
the
same
light
that
the
infringement
case
can
and
should
proceed
independently
from
the
cancellation
It
must
be
stressed
anew
that,
generally,
the
case
with
the
Bureau
so
as
to
afford
the
owner
of
fundamental
principle
of
res
judicata
applies
to
all
cases
certificates
of
registration
redress
and
injunctive
reliefs,
and
proceedings
in
whatever
form
they
may
be.
We
so
must
the
cancellation
with
the
BPTTT
continue
now
expressly
affirm
that
this
principle
applies,
in
the
independently
from
the
infringement
case
so
as
to
appropriate
cases,
to
proceedings
for
cancellation
of
determine
whether
a
registered
mark
may
ultimately
be
trademarks
before
the
Philippine
Patent
Office
(now
cancelled.
Bureau
of
Patents,
Trademarks
and
Technology
Transfer).
To
provide
a
judicious
resolution
of
the
issues,
the
Court
finds
it
apropos
to
order
the
suspension
of
the
Undoubtedly,
final
decisions,
orders,
and
resolutions,
of
proceedings
before
the
Bureau
pending
final
the
Director
of
Patents
are
clothed
with
a
judicial
determination
of
the
infringement
case,
where
the
issue
character
as
they
are,
in
fact,
reviewable
by
the
Court
of
of
validity
of
the
registration
of
the
subject
TM
and
logo
Appeals
and
by
us.
in
the
name
of
Developers
group
was
passed
upon.
The
subject
judgment
is
undeniably
on
the
merits
of
the
With
the
decision
of
the
RTC
upholding
the
validity
of
case,
rendered
after
both
parties
and
actually
submitted
registration
of
the
service
mark
“Shangri-‐La”
and
S
logo
their
evidence.
in
the
name
of
Developers
Group,
the
cancellation
case
filed
with
the
Bureau
becomes
moot.
To
allow
the
Bureau
to
proceed
with
the
cancellation
case
would
lead
104 z
Intellectual Property Law
to
a
possible
result
contradictory
to
what
the
RTC
has
voluntary
assurance
may
include
one
or
more
of
the
rendered,
albeit
the
same
is
on
appeal.
following:
SUPERIOR
COMMERCIAL
ENTERPRISES
V.
KUNNAN
(1)
An
assurance
to
comply
with
the
provisions
of
the
intellectual
property
law
ENTERPRISES
(2010)
violated;
Refresher:
Sec.
22
RA
166
provides
that
only
a
registrant
can
file
a
(2)
An
assurance
to
refrain
from
case
for
infringement.
Corollary
to
this,
Sec.
19
RA
166
engaging
in
unlawful
and
unfair
acts
and
provides
that
nay
right
conferred
upon
the
registration
practices
subject
of
the
formal
investigation;
under
the
provision
of
RA
166
terminates
when
the
judgment
or
order
of
cancellation
has
become
final.
(3)
An
assurance
to
recall,
replace,
repair,
or
refund
the
money
value
of
defective
goods
Hence,
the
cancellation
of
a
registration
of
TM
has
the
distributed
in
commerce;
and
effect
of
depriving
the
registrant
of
protection
from
infringement
the
moment
judgment
or
order
of
(4)
An
assurance
to
reimburse
the
cancellation
has
become
final.
complainant
the
expenses
and
costs
incurred
in
prosecuting
the
case
in
the
Bureau
of
Legal
In
trademark
infringement,
title
to
TM
is
indispensable
to
Affairs.
a
valid
cause
of
action
and
such
title
is
shown
by
its
certificate
of
registration.
The
Director
of
Legal
Affairs
may
also
require
the
respondent
to
submit
periodic
compliance
In
the
absence
of
any
inequitable
conduct
on
the
part
of
reports
and
file
a
bond
to
guarantee
the
manufacturer,
an
exclusive
distributor
who
employs
compliance
of
his
undertaking;
the
TM
of
the
manufacturer
does
not
acquire
proprietary
rights
of
the
manufacturer
and
a
registration
of
the
TM
(iii)
The
condemnation
or
seizure
of
products
by
the
distributor
as
such
belongs
to
the
manufacturer,
which
are
subject
of
the
offense.
The
goods
seized
provided
the
fiduciary
relationship
does
not
terminate
hereunder
shall
be
disposed
of
in
such
manner
as
may
be
before
application
for
registration
is
filed.
deemed
appropriate
by
the
Director
of
Legal
Affairs,
such
as
by
sale,
donation
to
distressed
local
b. Intellectual
property
governments
or
to
charitable
or
relief
institutions,
rights
violations
exportation,
recycling
into
other
goods,
or
any
combination
thereof,
under
such
guidelines
as
he
may
SECTION
10.2.
THE
BUREAU
OF
LEGAL
AFFAIRS
provide;
(a)
Exercise
original
jurisdiction
in
administrative
(iv)
The
forfeiture
of
paraphernalia
and
all
real
complaints
for
violations
of
laws
involving
intellectual
and
personal
properties
which
have
been
used
in
the
property
rights:
Provided,
That
its
jurisdiction
is
limited
commission
of
the
offense;
to
complaints
where
the
total
damages
claimed
are
not
less
than
Two
hundred
thousand
pesos
(P200,000):
(v)
The
imposition
of
administrative
fines
in
such
Provided
further,
That
availment
of
the
provisional
amount
as
deemed
reasonable
by
the
Director
of
Legal
remedies
may
be
granted
in
accordance
with
the
Rules
Affairs,
which
shall
in
no
case
be
less
than
Five
thousand
of
Court.
The
Director
of
Legal
Affairs
shall
have
the
pesos
(P5,000)
nor
more
than
One
hundred
fifty
power
to
hold
and
punish
for
contempt
all
those
who
thousand
pesos
(P150,000).
In
addition,
an
additional
disregard
orders
or
writs
issued
in
the
course
of
the
fine
of
not
more
than
One
thousand
pesos
(P1,000)
shall
proceedings.
be
imposed
for
each
day
of
continuing
violation;
(b)
After
formal
investigation,
the
Director
for
(vi)
The
cancellation
of
any
permit,
license,
Legal
Affairs
may
impose
one
(1)
or
more
of
the
authority,
or
registration
which
may
have
been
granted
following
administrative
penalties:
by
the
Office,
or
the
suspension
of
the
validity
thereof
for
such
period
of
time
as
the
Director
of
Legal
Affairs
(i)
The
issuance
of
a
cease
and
desist
order
which
may
deem
reasonable
which
shall
not
exceed
one
(1)
shall
specify
the
acts
that
the
respondent
shall
cease
and
year;
desist
from
and
shall
require
him
to
submit
a
compliance
report
within
a
reasonable
time
which
shall
be
fixed
in
(vii)
The
withholding
of
any
permit,
license,
the
order;
authority,
or
registration
which
is
being
secured
by
the
respondent
from
the
Office;
(ii)
The
acceptance
of
a
voluntary
assurance
of
compliance
or
discontinuance
as
may
be
imposed.
Such
o 105
Katrina Michelle Mancao
(viii)
The
assessment
of
damages;
Court
of
Appeals
held
that
BLA
did
not
have
jurisdiction
over
the
complaint
for
unfair
competition,
as
jurisdiction
(ix)
Censure;
and
is
vested
in
the
regular
courts.
The
Supreme
Court
disagreed
with
the
Court
of
Appeals.
(x)
Other
analogous
penalties
or
sanctions.
Section
10
of
the
Intellectual
Property
Code
specifically
SECTION
232.
APPEALS.
–
identifies
the
functions
of
the
Bureau
of
Legal
Affairs.
232.1.
Appeals
from
decisions
of
regular
courts
shall
be
Unquestionably,
petitioner’s
complaint,
which
seeks
the
governed
by
the
Rules
of
Court.
Unless
restrained
by
a
cancellation
of
the
disputed
mark
in
the
name
of
higher
court,
the
judgment
of
the
trial
court
shall
be
respondent
Sehwani,
Incorporated,
and
damages
for
executory
even
pending
appeal
under
such
terms
and
violation
of
petitioner’s
intellectual
property
rights,
falls
conditions
as
the
court
may
prescribe.
within
the
jurisdiction
of
the
IPO
Director
of
Legal
Affairs.
232.2.
Unless
expressly
provided
in
this
Act
or
other
The
Intellectual
Property
Code
also
expressly
recognizes
statutes,
appeals
from
decisions
of
administrative
the
appellate
jurisdiction
of
the
IPO
Director
General
officials
shall
be
provided
in
the
Regulations.
over
the
decisions
of
the
IPO
Director
of
Legal
Affairs,
to
wit:
IN-‐N-‐OUT
BURGER,
INC.
V.
SEHWANI
(2008)
Refresher:
Section
7.
The
Director
General
and
Deputies
Petitioner
IN-‐N-‐OUT
BURGER,
INC.,
a
business
entity
Director
General.
7.1
Fuctions.–The
Director
incorporated
under
the
laws
of
California,
United
States
General
shall
exercise
the
following
powers
(US)
of
America,
which
is
a
signatory
to
the
Convention
and
functions:
of
Paris
on
Protection
of
Industrial
Property
and
the
Agreement
on
Trade
Related
Aspects
of
Intellectual
x
x
x
x
Property
Rights
(TRIPS).
Petitioner
is
engaged
mainly
in
the
restaurant
business,
but
it
has
never
engaged
in
b)
Exercise
exclusive
appellate
jurisdiction
over
business
in
the
Philippines.
all
decisions
rendered
by
the
Director
of
Legal
Affairs,
the
Director
of
Patents,
the
Director
of
Respondents
Sehwani,
Incorporated
and
Benita
Frites,
Trademarks,
and
the
Director
of
Inc.
are
corporations
organized
in
the
Philippines.
Documentation,
Information
and
Technology
Transfer
Bureau.
The
decisions
of
the
Director
On
2
June
1997,
petitioner
filed
trademark
and
service
General
in
the
exercise
of
his
appellate
mark
applications
with
the
Bureau
of
Trademarks
(BOT)
jurisdiction
in
respect
of
the
decisions
of
the
of
the
IPO
for
"IN-‐N-‐OUT"
and
"IN-‐N-‐OUT
Burger
&
Director
of
Patents,
and
the
Director
of
Arrow
Design."
Petitioner
later
found
out,
through
the
Trademarks
shall
be
appealable
to
the
Court
of
Official
Action
Papers
issued
by
the
IPO
on
31
May
2000,
Appeals
in
accordance
with
the
Rules
of
Court;
that
respondent
Sehwani,
Incorporated
had
already
and
those
in
respect
of
the
decisions
of
the
obtained
Trademark
Registration
for
the
mark
"IN
N
Director
of
Documentation,
Information
and
OUT
(the
inside
of
the
letter
"O"
formed
like
a
star)."
By
Technology
Transfer
Bureau
shall
be
virtue
of
a
licensing
agreement,
Benita
Frites,
Inc.
was
appealable
to
the
Secretary
of
Trade
and
able
to
use
the
registered
mark
of
respondent
Sehwani,
Industry;
Incorporated.
The
Court
of
Appeals
erroneously
reasoned
that
Section
Petitioner
eventually
filed
on
4
June
2001
before
the
10(a)
of
the
Intellectual
Property
Code,
conferring
upon
Bureau
of
Legal
Affairs
(BLA)
of
the
IPO
an
the
BLA-‐IPO
jurisdiction
over
administrative
complaints
administrative
complaint
against
respondents
for
unfair
for
violations
of
intellectual
property
rights,
is
a
general
competition
and
cancellation
of
trademark
registration.
provision,
over
which
the
specific
provision
of
Section
Petitioner
averred
in
its
complaint
that
it
is
the
owner
of
163
of
the
same
Code,
found
under
Part
III
thereof
the
trade
name
IN-‐N-‐OUT
and
the
following
trademarks:
particularly
governing
trademarks,
service
marks,
and
(1)
"IN-‐N-‐OUT";
(2)
"IN-‐N-‐OUT
Burger
&
Arrow
Design";
tradenames,
must
prevail.
Proceeding
therefrom,
the
and
(3)
"IN-‐N-‐OUT
Burger
Logo."
These
trademarks
are
Court
of
Appeals
incorrectly
concluded
that
all
actions
registered
with
the
Trademark
Office
of
the
US
and
in
involving
trademarks,
including
charges
of
unfair
various
parts
of
the
world,
are
internationally
well-‐ competition,
are
under
the
exclusive
jurisdiction
of
civil
known,
and
have
become
distinctive
of
its
business
and
courts.
goods
through
its
long
and
exclusive
commercial
use.
Such
interpretation
is
not
supported
by
the
provisions
of
Doctrine:
(jurisdiction
of
the
Bureau
of
Legal
Affairs)
the
Intellectual
Property
Code.
While
Section
163
thereof
106 z
Intellectual Property Law
vests
in
civil
courts
jurisdiction
over
cases
of
unfair
officers
of
the
customs
service
in
enforcing
this
competition,
nothing
in
the
said
section
states
that
the
prohibition,
any
person
who
is
entitled
to
the
benefits
of
regular
courts
have
sole
jurisdiction
over
unfair
this
Act,
may
require
that
his
name
and
residence,
and
competition
cases,
to
the
exclusion
of
administrative
the
name
of
the
locality
in
which
his
goods
are
bodies.
On
the
contrary,
Sections
160
and
170,
which
are
manufactured,
a
copy
of
the
certificate
of
registration
also
found
under
Part
III
of
the
Intellectual
Property
of
his
mark
or
trade
name,
to
be
recorded
in
books
Code,
recognize
the
concurrent
jurisdiction
of
civil
courts
which
shall
be
kept
for
this
purpose
in
the
Bureau
of
and
the
IPO
over
unfair
competition
cases.
These
two
Customs,
under
such
regulations
as
the
Collector
of
provisions
read:
Customs
with
the
approval
of
the
Secretary
of
Finance
shall
prescribe,
and
may
furnish
to
the
said
Bureau
Section
160.
Right
of
Foreign
Corporation
to
facsimiles
of
his
name,
the
name
of
the
locality
in
which
Sue
in
Trademark
or
Service
Mark
Enforcement
his
goods
are
manufactured,
or
his
registered
mark
or
Action.–Any
foreign
national
or
juridical
person
trade
name,
and
thereupon
the
Collector
of
Customs
who
meets
the
requirements
of
Section
3
of
shall
cause
one
(1)
or
more
copies
of
the
same
to
be
this
Act
and
does
not
engage
in
business
in
the
transmitted
to
each
collector
or
to
other
proper
officer
Philippines
may
bring
a
civil
or
administrative
of
the
Bureau
of
Customs.
action
hereunder
for
opposition,
cancellation,
infringement,
unfair
competition,
or
false
ADMINISTRATIVE
REMEDIES
designation
of
origin
and
false
description,
Opposition
whether
or
not
it
is
licensed
to
do
business
in
-‐ Who
can
file:
Any
person
who
falls
under
the
Philippines
under
existing
laws.
Section
3.
-‐ When:
x
x
x
x
-‐ Remedy:
Denial
of
application.
No
other
remedies.
Section
170.
Penalties.–Independent
of
the
civil
and
administrative
sanctions
imposed
by
law,
a
Cancellation
(Section
151)
criminal
penalty
of
imprisonment
from
two
(2)
-‐ Who
can
file:
Any
person
who
falls
under
years
to
five
(5)
years
and
a
fine
ranging
from
Section
3.
Fifty
thousand
pesos
(P50,000)
to
Two
-‐ When:
After
the
mark
has
been
registered.
hundred
thousand
pesos
(P200,000),
shall
be
o From
the
point
of
view
of
when
to
file
imposed
on
any
person
who
is
found
guilty
of
a
petition
à
easier
to
file
cancellation
committing
any
of
the
acts
mentioned
in
than
opposition.
Section
155,
Section168,
and
Subsection169.1.
o From
the
point
of
view
of
burden
of
proof
à
easier
to
file
opposition.
No
Based
on
the
foregoing
discussion,
the
IPO
Director
of
prima
facie
presumptions
of
(1)
Legal
Affairs
had
jurisdiction
to
decide
the
petitioner’s
validity
of
registration,
(2)
ownership
administrative
case
against
respondents
and
the
IPO
of
mark,
and
(3)
exclusive
right
to
use
Director
General
had
exclusive
jurisdiction
over
the
mark
as
conferred
upon
the
appeal
of
the
judgment
of
the
IPO
Director
of
Legal
registrant
by
Section
138.
In
Affairs.
opposition,
all
the
petitioner
has
to
prove
is
damage.
c. Prohibition
of
§ Ma’am:
Why
does
Section
importation
138
only
give
prima
facie
presumption
if
registration
confers
the
right
upon
the
SECTION
166.
GOODS
BEARING
INFRINGING
MARKS
OR
registrant
(i.e.
registration
is
TRADE
NAMES.
–
the
basis
of
ownership)?
No
article
of
imported
merchandise
which
shall
copy
or
Because
registration
is
not
a
simulate
the
name
of
any
domestic
product,
or
perfect
process.
Under
the
manufacturer,
or
dealer,
or
which
shall
copy
or
simulate
law,
what
actually
confers
a
mark
registered
in
accordance
with
the
provisions
of
ownership
is
a
registration
this
Act,
or
shall
bear
a
mark
or
trade
name
calculated
to
validly
obtained,
not
just
induce
the
public
to
believe
that
the
article
is
any
kind
of
registration.
manufactured
in
the
Philippines,
or
that
it
is
Thus,
a
person
can
attack
manufactured
in
any
foreign
country
or
locality
other
the
registration
as
invalid.
than
the
country
or
locality
where
it
is
in
fact
There’s
always
a
possibility
manufactured,
shall
be
admitted
to
entry
at
any
that
the
IPO
made
a
customhouse
of
the
Philippines.
In
order
to
aid
the
mistake.
o 107
Katrina Michelle Mancao
-‐ Remedy:
Cancellation
of
the
registration.
No
advertising
of
any
goods
or
services
including
other
other
remedy.
preparatory
steps
necessary
to
carry
out
the
sale
of
any
-‐ Grounds
(does
not
prescribe):
goods
or
services
on
or
in
connection
with
which
such
o Generic
name
use
is
likely
to
cause
confusion,
or
to
cause
mistake,
or
to
§ Test:
primary
significance
to
deceive;
or
the
relevant
public
o Abandonment
155.2.
Reproduce,
counterfeit,
copy
or
colorably
§ Requisites
(as
enumerated
imitate
a
registered
mark
or
a
dominant
feature
thereof
in
Romero
v.
Maiden
Form):
and
apply
such
reproduction,
counterfeit,
copy
or
VIP
colorable
imitation
to
labels,
signs,
prints,
packages,
• Voluntary
wrappers,
receptacles
or
advertisements
intended
to
be
• Intentional
used
in
commerce
upon
or
in
connection
with
the
sale,
• Permanent
offering
for
sale,
distribution,
or
advertising
of
goods
or
o Registration
was
obtained
services
on
or
in
connection
with
which
such
use
is
likely
fraudulently
to
cause
confusion,
or
to
cause
mistake,
or
to
deceive,
o Misrepresents
the
source
of
the
shall
be
liable
in
a
civil
action
for
infringement
by
the
goods
and
services
in
connection
registrant
for
the
remedies
hereinafter
set
forth:
with
which
the
marks
was
used
Provided,
That
the
infringement
takes
place
at
the
o Non-‐use
of
the
mark
for
an
moment
any
of
the
acts
stated
in
Subsection
155.1
or
this
uninterrupted
period
of
3
years
subsection
are
committed
REGARDLESS
OF
WHETHER
§ Circumstances
which
excuse
THERE
IS
ACTUAL
SALE
OF
GOODS
OR
SERVICES
USING
non-‐use
of
trademark:
THE
INFRINGING
MATERIAL.
-‐ Inter
partes
proceeding
–
expedited,
based
on
documents.
When
you
file
petition,
attach
all
SECTION
156.
ACTIONS,
AND
DAMAGES
AND
INJUNCTION
exhibits.
FOR
INFRINGEMENT.
–
Intellectual
property
violation
(Section
10.2)
156.1.
The
owner
of
a
registered
mark
may
recover
-‐ Who
can
file:
Any
person
who
falls
within
damages
from
any
person
who
infringes
his
rights,
and
Section
3.
the
measure
of
the
damages
suffered
shall
be
either
the
-‐ Venue:
Bureau
of
Legal
Affairs
(BLA)
reasonable
profit
which
the
complaining
party
would
o As
long
as
the
amount
claimed
is
not
have
made,
had
the
defendant
not
infringed
his
rights,
LESS
than
P200,000.00
OR
the
profit
which
the
defendant
actually
made
out
of
o It
has
the
power
of
the
courts,
PLUS
the
infringement,
or
in
the
event
such
measure
of
more.
Except
that
this
“more”
has
damages
cannot
be
readily
ascertained
with
reasonable
not
really
been
exercised.
certainty,
then
the
court
may
award
as
damages
a
-‐ Advantage
of
filing
in
the
BLA
à
you
are
more
reasonable
percentage
based
upon
the
amount
of
gross
likely
to
obtained
a
resolution
at
an
earlier
sales
of
the
defendant
or
the
value
of
the
services
in
time.
Also,
no
venue
restrictions
here.
You
can
connection
with
which
the
mark
or
trade
name
was
file
in
the
BLA
regardless
of
where
used
in
the
infringement
of
the
rights
of
the
complaining
the
parties
are
located.
party.
o But
BLA
only
works
if
the
respondent
is
a
legitimate
156.2.
On
application
of
the
complainant,
the
court
business.
may
impound
during
the
pendency
of
the
action,
sales
invoices
and
other
documents
evidencing
sales.
2. Civil
156.3.
In
cases
where
actual
intent
to
mislead
the
public
or
to
defraud
the
complainant
is
shown,
in
the
a. Infringement
discretion
of
the
court,
the
damages
may
be
DOUBLED.
156.4.
The
complainant,
upon
proper
showing,
may
SECTION
155.
REMEDIES;
INFRINGEMENT.
–
also
be
granted
injunction.
Any
person
who
shall,
without
the
consent
of
the
owner
of
the
registered
mark:
SECTION
157.
POWER
OF
COURT
TO
ORDER
INFRINGING
155.1.
Use
in
commerce
any
reproduction,
counterfeit,
MATERIAL
DESTROYED.
–
copy,
or
colorable
imitation
of
a
registered
mark
or
the
157.1
In
any
action
arising
under
this
Act,
in
which
a
same
container
or
a
dominant
feature
thereof
in
violation
of
any
right
of
the
owner
of
the
registered
connection
with
the
sale,
offering
for
sale,
distribution,
mark
is
established,
the
court
may
order
that
goods
108 z
Intellectual Property Law
found
to
be
infringing
be,
without
compensation
of
any
limited
to
an
injunction
against
the
presentation
of
such
sort,
disposed
of
outside
the
channels
of
commerce
in
advertising
matter
in
future
issues
of
such
newspapers,
such
a
manner
as
to
avoid
any
harm
caused
to
the
right
magazines,
or
other
similar
periodicals
or
in
future
holder,
or
destroyed;
and
all
labels,
signs,
prints,
transmissions
of
such
electronic
communications.
The
packages,
wrappers,
receptacles
and
advertisements
in
limitations
of
this
subparagraph
shall
apply
only
to
the
possession
of
the
defendant,
bearing
the
registered
innocent
infringers:
Provided,
That
SUCH
INJUNCTIVE
mark
or
trade
name
or
any
reproduction,
counterfeit,
RELIEF
SHALL
NOT
BE
AVAILABLE
to
the
owner
of
the
copy
or
colorable
imitation
thereof,
all
plates,
molds,
right
infringed
with
respect
to
an
issue
of
a
newspaper,
matrices
and
other
means
of
making
the
same,
shall
be
magazine,
or
other
similar
periodical
or
an
electronic
delivered
up
and
destroyed.
communication
containing
infringing
matter
where
restraining
the
dissemination
of
such
infringing
matter
157.2.
In
regard
to
counterfeit
goods,
the
simple
in
any
particular
issue
of
such
periodical
or
in
an
removal
of
the
trademark
affixed
shall
not
be
sufficient
electronic
communication
would
delay
the
delivery
of
other
than
in
exceptional
cases
which
shall
be
such
issue
or
transmission
of
such
electronic
determined
by
the
Regulations,
to
permit
the
release
of
communication
is
customarily
conducted
in
accordance
the
goods
into
the
channels
of
commerce.
with
the
sound
business
practice,
and
not
due
to
any
method
or
device
adopted
to
evade
this
section
or
to
SECTION
158.
DAMAGES;
REQUIREMENT
OF
NOTICE.
–
prevent
or
delay
the
issuance
of
an
injunction
or
restraining
order
with
respect
to
such
infringing
matter;
In
any
suit
for
infringement,
the
owner
of
the
registered
and
mark
shall
not
be
entitled
to
recover
profits
or
damages
unless
the
acts
have
been
committed
with
knowledge
159.4.
There
shall
be
no
infringement
of
trademarks
or
that
such
imitation
is
likely
to
cause
confusion,
or
to
cause
mistake,
or
to
deceive.
Such
knowledge
is
tradenames
of
imported
or
sold
drugs
and
medicines
PRESUMED
if
the
registrant
gives
notice
that
his
mark
is
allowed
under
Section
72.1
of
this
Act,
as
well
as
registered
by
displaying
with
the
mark
the
words
imported
or
sold
off-‐patent
drugs
and
medicines:
'"Registered
Mark"
or
the
letter
R
within
a
circle
or
if
Provided,
That
said
drugs
and
medicines
bear
the
the
defendant
had
otherwise
actual
notice
of
the
registered
marks
that
have
not
been
tampered,
registration.
unlawfully
modified,
or
infringed
upon
as
defined
under
Section
155
of
this
Code.
SECTION
159.
LIMITATIONS
TO
ACTIONS
FOR
INFRINGEMENT.
SECTION
161.
AUTHORITY
TO
DETERMINE
RIGHT
TO
–
REGISTRATION.
–
Notwithstanding
any
other
provision
of
this
Act,
the
remedies
given
to
the
owner
of
a
right
infringed
under
In
any
action
involving
a
registered
mark,
the
COURT
this
Act
shall
be
limited
as
follows:
may
determine
the
right
to
registration,
order
the
cancellation
of
a
registration,
in
whole
or
in
part,
and
159.1.
Notwithstanding
the
provisions
of
Section
155
otherwise
rectify
the
register
with
respect
to
the
registration
of
any
party
to
the
action
in
the
exercise
of
hereof,
a
registered
mark
shall
have
no
effect
against
this.
Judgment
and
orders
shall
be
certified
by
the
court
any
person
who,
in
good
faith,
before
the
filing
date
or
to
the
Director,
who
shall
make
appropriate
entry
upon
the
priority
date,
was
using
the
mark
for
the
purposes
the
records
of
the
Bureau,
and
shall
be
controlled
of
his
business
or
enterprise:
Provided,
That
his
right
thereby.
may
only
be
transferred
or
assigned
together
with
his
enterprise
or
business
or
with
that
part
of
his
enterprise
or
business
in
which
the
mark
is
used.
SECTION
163.
JURISDICTION
OF
COURT.
–
All
actions
under
Sections
150,
155,
164,
and
166
to
169
159.2.
Where
an
infringer
who
is
engaged
solely
in
the
shall
be
BROUGHT
BEFORE
THE
PROPER
COURTS
with
business
of
printing
the
mark
or
other
infringing
appropriate
jurisdiction
under
existing
laws.
materials
for
others
is
an
innocent
infringer,
the
owner
of
the
right
infringed
shall
be
entitled
as
against
such
SECTION
164.
NOTICE
OF
FILING
SUIT
GIVEN
TO
THE
infringer
only
to
an
injunction
against
future
printing.
DIRECTOR.
–
It
shall
be
the
duty
of
the
clerks
of
such
courts
within
159.3.
Where
the
infringement
complained
of
is
one
(1)
month
after
the
filing
of
any
action,
suit,
or
contained
in
or
is
part
of
paid
advertisement
in
a
proceeding
involving
a
mark
registered
under
the
newspaper,
magazine,
or
other
similar
periodical
or
in
an
provisions
of
this
Act,
to
notify
the
Director
in
writing
electronic
communication,
the
remedies
of
the
owner
of
setting
forth:
the
names
and
addresses
of
the
litigants
the
right
infringed
as
against
the
publisher
or
and
designating
the
number
of
the
registration
or
distributor
of
such
newspaper,
magazine,
or
other
registrations
and
within
one
(1)
month
after
the
similar
periodical
or
electronic
communication
shall
be
judgment
is
entered
or
an
appeal
is
taken,
the
clerk
of
o 109
Katrina Michelle Mancao
court
shall
give
notice
thereof
to
the
Office,
and
the
same
trademark
by
others
on
unrelated
articles
of
a
latter
shall
endorse
the
same
upon
the
filewrapper
of
different
kind.
Although
petitioner's
products
are
the
said
registration
or
registrations
and
incorporate
the
numerous,
they
are
of
the
same
class
or
line
of
same
as
a
part
of
the
contents
of
said
filewrapper.
merchandise
which
are
non-‐competing
with
respondent's
product
of
cigarettes,
which
as
pointed
out
SECTION
232.
APPEALS.
-‐
in
the
appealed
judgment
is
beyond
petitioner's
"zone
of
232.1.
Appeals
from
decisions
of
regular
courts
shall
be
potential
or
natural
and
logical
expansion"
21
When
a
trademark
is
used
by
a
party
for
a
product
in
which
the
governed
by
the
Rules
of
Court.
Unless
restrained
by
a
other
party
does
not
deal,
the
use
of
the
same
higher
court,
the
judgment
of
the
trial
court
shall
be
trademark
on
the
latter's
product
cannot
be
validly
executory
even
pending
appeal
under
such
terms
and
objected
to.
conditions
as
the
court
may
prescribe.
Another
factor
that
shows
that
the
goods
involved
are
232.2.
Unless
expressly
provided
in
this
Act
or
other
non-‐competitive
and
non-‐related
is
the
appellate
court's
statutes,
appeals
from
decisions
of
administrative
finding
that
they
flow
through
different
channels
of
officials
shall
be
provided
in
the
Regulations.
trade,
thus:
"The
products
of
each
party
move
along
and
are
disposed
through
different
channels
of
distribution.
ETEPHA
V.
DIRECTOR
OF
PATENTS
(1966),
SUPRA
The
petitioner's
products
are
distributed
principally
Refresher:
through
gasoline
service
and
lubrication
stations,
Atussin
and
Pertussin
automotive
shops
and
hardware
stores.
On
the
other
hand,
the
respondent's
cigarettes
are
sold
in
sari-‐sari
Doctrine:
stores,
grocery
stores,
and
other
small
distributor
In
the
solution
of
a
trademark
infringement
problem,
outlets.
Respondent's
cigarettes
are
even
peddled
in
the
regard
too
should
be
given
to
the
class
of
persons
who
streets
while
petitioner's
'gasul'
burners
are
not.
Finally,
buy
the
particular
product
and
the
circumstances
there
is
a
marked
distinction
between
oil
and
tobacco,
as
ordinarily
attendant
to
its
acquisition.
The
medicinal
well
as
between
petroleum
and
cigarettes.
Evidently,
in
preparation
clothed
with
the
trademarks
in
question,
are
kind
and
nature
the
products
of
respondent
and
of
unlike
articles
of
everyday
use
such
as
candies,
ice
cream,
petitioner
are
poles
apart."
milk,
soft
drinks
and
the
like
which
may
be
freely
obtained
by
anyone,
anytime,
anywhere.
Petitioner's
and
FRUIT
OF
THE
LOOM
V.
CA
AND
GENERAL
GARMENTS
CORP.
respondent's
products
are
to
be
dispensed
upon
medical
(1984)
prescription.
The
respective
labels
say
so.
An
intending
buyer
must
have
to
go
first
to
a
licensed
doctor
of
Refresher:
medicine;
he
receives
instructions
as
to
what
to
Respondent:
“Fruit
for
Eve”
–
women’s
panties
and
purchase;
he
reads
the
doctor's
prescription;
he
knows
pajamas
what
he
is
to
buy.
He
is
not
of
the
incautious,
unwary,
unobservant
or
unsuspecting
type;
he
examines
the
Petitioner:
“Fruit
of
the
Loom”
–
men’s,
women’s
and
product
sold
to
him;
he
checks
to
find
out
whether
it
children’s
underwear
conforms
to
the
medical
prescription.
The
common
trade
channel
is
the
pharmacy
or
the
drugstore.
Similarly,
The
main
issue
involved
in
this
case
is
whether
or
not
the
pharmacist
or
druggist
verifies
the
medicine
sold.
private
respondent's
trademark
FRUIT
FOR
EVE
and
its
The
margin
of
error
in
the
acquisition
of
one
for
the
hang
tag
are
confusingly
similar
to
petitioner's
other
is
quite
remote.
trademark
FRUIT
OF
THE
LOOM
and
its
hang
tag
so
as
to
constitute
an
infringement
of
the
latter's
trademark
rights
and
justify
the
cancellation
of
the
former.
ESSO
STANDARD
EASTERN,
INC.
V.
CA
AND
UNITED
CIGARETTES
(1982)
Doctrine:
Refresher:
In
determining
whether
the
trademarks
are
confusingly
“Esso”
on
petroleum
and
cigarette
products
similar,
a
comparison
of
the
words
is
not
the
only
determinant
factor.
The
trademarks
in
their
entirety
as
Doctrine:
they
appear
in
their
respective
labels
or
hang
tags
must
In
the
situation
before
us,
the
goods
are
obviously
also
be
considered
in
relation
to
the
goods
to
which
they
different
from
each
other
with
"absolutely
no
iota
of
are
attached.
The
discerning
eye
of
the
observer
must
similitude"
as
stressed
in
respondent
court's
judgment.
focus
not
only
on
the
predominant
words
but
also
on
They
are
so
foreign
to
each
other
as
to
make
it
unlikely
the
other
features
appearing
in
both
labels
in
order
that
that
purchasers
would
think
that
petitioner
is
the
he
may
draw
his
conclusion
whether
one
is
confusingly
manufacturer
of
respondent's
goods.
The
mere
fact
that
similar
to
the
other.
one
person
has
adopted
and
used
a
trademark
on
his
goods
does
not
prevent
the
adoption
and
use
of
the
110 z
Intellectual Property Law
WE
hold
that
the
trademarks
FRUIT
OF
THE
LOOM
and
may
be
dissipated
as
soon
as
the
court
assumes
to
FRUIT
FOR
EVE
do
not
resemble
each
other
as
to
analyze
carefully
the
respective
features
of
the
mark.
confuse
or
deceive
an
ordinary
purchaser.
The
ordinary
purchaser
must
be
thought
of
as
having,
and
credited
It
has
also
been
held
that
it
is
not
the
function
of
the
with,
at
least
a
modicum
of
intelligence
to
be
able
to
see
court
in
cases
of
infringement
and
unfair
competition
to
the
obvious
differences
between
the
two
trademarks
in
educate
purchasers
but
rather
to
take
their
carelessness
question.
Furthermore,
We
believe
that
a
person
who
for
granted,
and
to
be
ever
conscious
of
the
fact
that
buys
petitioner's
products
and
starts
to
have
a
liking
for
marks
need
not
be
identical.
A
confusing
similarity
will
it,
will
not
get
confused
and
reach
out
for
private
justify
the
intervention
of
equity.
The
judge
must
also
be
respondent's
products
when
she
goes
to
a
garment
aware
of
the
fact
that
usually
a
defendant
in
cases
of
store.
infringement
does
not
normally
copy
but
makes
only
colorable
changes.
Well
has
it
been
said
that
the
most
DEL
MONTE
CORP.
AND
PHIL.
PACKING
CORP.
V.
CA
AND
successful
form
of
copying
is
to
employ
enough
points
of
similarity
to
confuse
the
public
with
enough
points
of
SUNSHINE
SAUCE
MANUFACTURING
INDUSTRIES
(1990)
difference
to
confuse
the
courts.
Doctrine:
It
has
been
correctly
held
that
side-‐by-‐side
comparison
is
ASIA
BREWERY,
INC.
V.
CA
AND
SAN
MIGUEL
CORP.
(1993),
not
the
final
test
of
similarity.
Such
comparison
requires
a
careful
scrutiny
to
determine
in
what
points
the
labels
SUPRA
of
the
products
differ,
as
was
done
by
the
trial
judge.
Court
held:
The
ordinary
buyer
does
not
usually
make
such
scrutiny
Only
registered
trade
marks,
trade
names
and
service
nor
does
he
usually
have
the
time
to
do
so.
The
average
marks
are
protected
against
infringement
or
shopper
is
usually
in
a
hurry
and
does
not
inspect
every
unauthorized
use
by
another
or
others.
The
use
of
product
on
the
shelf
as
if
he
were
browsing
in
a
library.
someone
else's
registered
trademark,
trade
name
or
Where
the
housewife
has
to
return
home
as
soon
as
service
mark
is
unauthorized,
hence,
actionable,
if
it
is
possible
to
her
baby
or
the
working
woman
has
to
make
done
"without
the
consent
of
the
registrant."
quick
purchases
during
her
off
hours,
she
is
apt
to
be
confused
by
similar
labels
even
if
they
do
have
minute
Infringement
is
determined
by
the
"test
of
dominancy"
differences.
The
male
shopper
is
worse
as
he
usually
rather
than
by
differences
or
variations
in
the
details
of
does
not
bother
about
such
distinctions.
one
trademark
and
of
another.
It
has
been
consistently
held
that
the
question
of
infringement
of
a
trademark
is
The
question
is
not
whether
the
two
articles
are
to
be
determined
by
the
test
of
dominancy.
Similarity
in
distinguishable
by
their
label
when
set
side
by
side
but
size,
form
and
color,
while
relevant,
is
not
conclusive.
If
whether
the
general
confusion
made
by
the
article
upon
the
competing
trademark
contains
the
main
or
essential
the
eye
of
the
casual
purchaser
who
is
unsuspicious
and
or
dominant
features
of
another,
and
confusion
and
off
his
guard,
is
such
as
to
likely
result
in
his
confounding
deception
is
likely
to
result,
infringement
takes
place.
it
with
the
original.
As
observed
in
several
cases,
the
Duplication
or
imitation
is
not
necessary;
nor
it
is
general
impression
of
the
ordinary
purchaser,
buying
necessary
that
the
infringing
label
should
suggest
an
under
the
normally
prevalent
conditions
in
trade
and
effort
to
imitate.
The
question
at
issue
in
cases
of
giving
the
attention
such
purchasers
usually
give
in
infringement
of
trademarks
is
whether
the
use
of
the
buying
that
class
of
goods
is
the
touchstone.
marks
involved
would
be
likely
to
cause
confusion
or
mistakes
in
the
mind
of
the
public
or
deceive
purchasers.
It
has
been
held
that
in
making
purchases,
the
consumer
must
depend
upon
his
recollection
of
the
appearance
of
The
universal
test
question
is
whether
the
public
is
likely
the
product
which
he
intends
to
purchase.
The
buyer
to
be
deceived.
Nothing
less
than
conduct
tending
to
having
in
mind
the
mark/label
of
the
respondent
must
pass
off
one
man's
goods
or
business
as
that
of
another
rely
upon
his
memory
of
the
petitioner's
mark.
Unlike
will
constitute
unfair
competition.
Actual
or
probable
the
judge
who
has
ample
time
to
minutely
examine
the
deception
and
confusion
on
the
part
of
the
customers
by
labels
in
question
in
the
comfort
of
his
sala,
the
ordinary
reason
of
defendant's
practices
must
always
appear.
shopper
does
not
enjoy
the
same
opportunity.
CONRAD
AND
CO.
V.
CA,
FITRITE
INC.
AND
VICTORIA
A
number
of
courts
have
held
that
to
determine
whether
BISCUITS
CO.
(1995)
a
trademark
has
been
infringed,
we
must
consider
the
Refresher:
mark
as
a
whole
and
not
as
dissected.
If
the
buyer
is
Trademark
in
question
=
“Sunshine”
deceived,
it
is
attributable
to
the
marks
as
a
totality,
not
usually
to
any
part
of
it.
The
court
therefore
should
be
Doctrine:
guided
by
its
first
impression,
for
a
buyer
acts
quickly
and
is
governed
by
a
casual
glance,
the
value
of
which
Whether
CONRAD's
acts
of
importing,
selling
and
distributing
biscuits,
cookies
and
other
food
items
o 111
Katrina Michelle Mancao
bearing
said
registered
"SUNSHINE"
trademark
in
the
Philippines
without
the
consent
of
its
registrant
As
its
title
implies,
the
test
of
dominancy
focuses
on
the
(FITRITE)
constitute
infringement
thereof
in
similarity
of
the
prevalent
features
of
the
competing
contemplation
of
Sec.
22
of
Republic
Act
No.
166,
as
trademarks
which
might
cause
confusion
or
deception
amended.
Under
Sec.
22,
the
elements
that
constitute
and
thus
constitutes
infringement.
infringement
are
simply
(1)
the
use
by
any
person,
without
the
consent
of
the
registrant,
(2)
of
any
On
the
other
side
of
the
spectrum,
the
holistic
test
registered
mark
or
trade-‐name
in
connection
with
the
mandates
that
the
entirety
of
the
marks
in
question
sale,
business
or
services,
among
other
things,
bearing
must
be
considered
in
determining
confusing
similarity.
such
registered
mark
or
trade-‐name.
Applying
the
foregoing
tenets
to
the
present
Thus,
having
the
exclusive
right
over
said
trademark,
controversy
and
taking
into
account
the
factual
FITRITE
should
be
protected
in
the
use
thereof;
and
circumstances
of
this
case,
we
considered
the
considering
that
it
is
apparent
from
the
record
that
the
trademarks
involved
as
a
whole
and
rule
that
petitioner's
invasion
of
the
right
FITRITE
sought
to
protect
is
"STYLISTIC
MR.
LEE"
is
not
confusingly
similar
to
private
material
and
substantial;
that
such
right
of
FITRITE
is
respondent's
"LEE"
trademark.
clear
and
unmistakable;
and
that
there
is
an
urgent
necessity
to
prevent
serious
damage
to
FITRITE's
Petitioner's
trademark
is
the
whole
"STYLISTIC
MR.
LEE."
business
interest,
goodwill
and
profit,
thus
under
the
Although
on
its
label
the
word
"LEE"
is
prominent,
the
authority
of
Sec.
23
of
said
Republic
Act
No.
166,
as
trademark
should
be
considered
as
a
whole
and
not
amended,
a
preliminary
injunction
may
be
issued
in
favor
piecemeal.
The
dissimilarities
between
the
two
marks
of
FITRITE
to
maintain
the
status
quo
pending
trial
of
the
become
conspicuous,
noticeable
and
substantial
enough
action
a
quo
on
the
merits
without
prejudice
to
the
to
matter
especially
in
the
light
of
the
following
variables
suspension
of
such
action
if
the
aforesaid
cancellation
that
must
be
factored
in.
proceeding
before
the
BPTTT
has
not
been
concluded.
First,
the
products
involved
in
the
case
at
bar
are,
in
the
EMERALD
GARMENT
MANUFACTURING
V.
CA
(1995),
main,
various
kinds
of
jeans.
These
are
not
your
ordinary
household
items
like
catsup,
soysauce
or
soap
which
are
SUPRA
of
minimal
cost.
Maong
pants
or
jeans
are
not
Refresher:
inexpensive.
Accordingly,
the
casual
buyer
is
“Stylistics
Mr.
Lee”
and
“Lee”
predisposed
to
be
more
cautious
and
discriminating
in
and
would
prefer
to
mull
over
his
purchase.
Confusion
Doctrine:
and
deception,
then,
is
less
likely.
The
essential
element
of
infringement
is
colorable
imitation.
This
term
has
been
defined
as
"such
a
close
or
Second,
like
his
beer,
the
average
Filipino
consumer
ingenious
imitation
as
to
be
calculated
to
deceive
generally
buys
his
jeans
by
brand.
He
does
not
ask
the
ordinary
purchasers,
or
such
resemblance
of
the
sales
clerk
for
generic
jeans
but
for,
say,
a
Levis,
Guess,
infringing
mark
to
the
original
as
to
deceive
an
ordinary
Wrangler
or
even
an
Armani.
He
is,
therefore,
more
or
purchaser
giving
such
attention
as
a
purchaser
usually
less
knowledgeable
and
familiar
with
his
preference
and
gives,
and
to
cause
him
to
purchase
the
one
supposing
it
will
not
easily
be
distracted.
to
be
the
other."
Finally,
in
line
with
the
foregoing
discussions,
more
Colorable
imitation
does
not
mean
such
similitude
as
credit
should
be
given
to
the
"ordinary
purchaser."
Cast
amounts
to
identity.
Nor
does
it
require
that
all
the
in
this
particular
controversy,
the
ordinary
purchaser
is
details
be
literally
copied.
Colorable
imitation
refers
to
not
the
"completely
unwary
consumer"
but
is
the
such
similarity
in
form,
content,
words,
sound,
meaning,
"ordinarily
intelligent
buyer"
considering
the
type
of
special
arrangement,
or
general
appearance
of
the
product
involved.
trademark
or
tradename
with
that
of
the
other
mark
or
tradename
in
their
over-‐all
presentation
or
in
their
The
definition
laid
down
in
Dy
Buncio
v.
Tan
Tiao
Bok
is
essential,
substantive
and
distinctive
parts
as
would
better
suited
to
the
present
case.
There,
the
"ordinary
likely
mislead
or
confuse
persons
in
the
ordinary
course
purchaser"
was
defined
as
one
"accustomed
to
buy,
and
of
purchasing
the
genuine
article.
therefore
to
some
extent
familiar
with,
the
goods
in
question.
The
test
of
fraudulent
simulation
is
to
be
found
In
determining
whether
colorable
imitation
exists,
in
the
likelihood
of
the
deception
of
some
persons
in
jurisprudence
has
developed
TWO
KINDS
OF
TESTS
—
some
measure
acquainted
with
an
established
design
the
Dominancy
Test
applied
in
Asia
Brewery,
Inc.
v.
Court
and
desirous
of
purchasing
the
commodity
with
which
of
Appeals
and
other
cases
and
the
Holistic
Test
that
design
has
been
associated.
The
test
is
not
found
in
developed
in
Del
Monte
Corporation
v.
Court
of
Appeals
the
deception,
or
the
possibility
of
deception,
of
the
and
its
proponent
cases.
112 z
Intellectual Property Law
person
who
knows
nothing
about
the
design
which
has
infringement.
On
the
other
side
of
the
spectrum,
the
been
counterfeited,
and
who
must
be
indifferent
holistic
test
mandates
that
the
entirety
of
the
marks
in
between
that
and
the
other.
The
simulation,
in
order
to
question
must
be
considered
in
determining
confusing
be
objectionable,
must
be
such
as
appears
likely
to
similarity.
mislead
the
ordinary
intelligent
buyer
who
has
a
need
to
supply
and
is
familiar
with
the
article
that
he
seeks
to
As
this
Court
has
often
declared,
each
case
must
be
purchase."
studied
according
to
the
peculiar
circumstances
of
each
case.
That
is
the
reason
why
in
trademark
cases,
AMIGO
V.
CLUETT
PEABODY
(2001)
jurisprudential
precedents
should
be
applied
only
to
a
Refresher:
case
if
they
are
specifically
in
point.
“Gold
Top”
and
“Gold
Toe”
mark
on
socks.
In
the
case
at
bar,
other
than
the
fact
that
both
Nestle’s
Court
decision:
and
CFC’s
products
are
inexpensive
and
common
In
the
present
case,
a
resort
to
either
the
Dominancy
household
items,
the
similarity
ends
there.
What
is
being
Test
or
the
Holistic
Test
shows
that
colorable
imitation
questioned
here
is
the
use
by
CFC
of
the
trademark
exists
between
respondent’s
“Gold
Toe”
and
MASTER.
In
view
of
the
difficulty
of
applying
petitioner’s
“Gold
Top.”
A
glance
at
petitioner’s
mark
jurisprudential
precedents
to
trademark
cases
due
to
the
shows
that
it
definitely
has
a
lot
of
similarities
and
in
fact
peculiarity
of
each
case,
judicial
fora
should
not
readily
looks
like
a
combination
of
the
trademark
and
devices
apply
a
certain
test
or
standard
just
because
of
seeming
that
respondent
has
already
registered;
namely,
“Gold
similarities.
As
this
Court
has
pointed
above,
there
could
Toe,”
the
representation
of
a
sock
with
a
magnifying
be
more
telling
differences
than
similarities
as
to
make
a
glass,
the
“Gold
Toe”
representation
and
“linenized.”
jurisprudential
precedent
inapplicable.
Admittedly,
there
are
some
minor
differences
between
Nestle
points
out
that
the
dominancy
test
should
have
the
two
sets
of
marks.
The
similarities,
however,
are
of
been
applied
to
determine
whether
there
is
a
confusing
such
degree,
number
and
quality
that
the
overall
similarity
between
CFC’s
FLAVOR
MASTER
and
Nestle’s
impression
given
is
that
the
two
brands
of
socks
are
MASTER
ROAST
and
MASTER
BLEND.
deceptively
the
same,
or
at
least
very
similar
to
each
another.
An
examination
of
the
products
in
question
We
agree.
shows
that
their
dominant
features
are
gold
checkered
lines
against
a
predominantly
black
background
and
a
It
must
be
emphasized
that
the
products
bearing
the
representation
of
a
sock
with
a
magnifying
glass.
In
trademarks
in
question
are
“inexpensive
and
common”
addition,
both
products
use
the
same
type
of
lettering.
household
items
bought
off
the
shelf
by
“undiscerningly
Both
also
include
a
representation
of
a
man’s
foot
rash”
purchasers.
As
such,
if
the
ordinary
purchaser
is
wearing
a
sock
and
the
word
“linenized”
with
arrows
“undiscerningly
rash”,
then
he
would
not
have
the
time
printed
on
the
label.
Lastly,
the
names
of
the
brands
are
nor
the
inclination
to
make
a
keen
and
perceptive
similar
-‐-‐
“Gold
Top”
and
“Gold
Toe.”
Moreover,
it
must
examination
of
the
physical
discrepancies
in
the
also
be
considered
that
petitioner
and
respondent
are
trademarks
of
the
products
in
order
to
exercise
his
engaged
in
the
same
line
of
business.
choice.
While
this
Court
agrees
with
the
Court
of
Appeals’
SOCIETES
DES
PRODUITS
NESTLE
V.
CA
(2001),
SUPRA
detailed
enumeration
of
differences
between
the
Court
decision:
respective
trademarks
of
the
two
coffee
products,
this
Under
Section
36
of
Republic
Act
165
(Patent
Law),
the
Court
cannot
agree
that
totality
test
is
the
one
Director
of
Patents
is
authorized,
in
case
the
parties
applicable
in
this
case.
Rather,
this
Court
believes
that
failed
to
submit
a
licensing
agreement,
to
fix
the
terms
the
dominancy
test
is
more
suitable
to
this
case
in
light
and
conditions
of
the
license.
of
its
peculiar
factual
milieu.
Colorable
imitation
denotes
such
a
close
or
ingenious
Moreover,
the
totality
or
holistic
test
is
contrary
to
the
imitation
as
to
be
calculated
to
deceive
ordinary
persons,
elementary
postulate
of
the
law
on
trademarks
and
or
such
a
resemblance
to
the
original
as
to
deceive
an
unfair
competition
that
confusing
similarity
is
to
be
ordinary
purchaser
giving
such
attention
as
a
purchaser
determined
on
the
basis
of
visual,
aural,
connotative
usually
gives,
as
to
cause
him
to
purchase
the
one
comparisons
and
overall
impressions
engendered
by
the
supposing
it
to
be
the
other.
In
determining
if
colorable
marks
in
controversy
as
they
are
encountered
in
the
imitation
exists,
jurisprudence
has
developed
two
kinds
realities
of
the
marketplace.
The
totality
or
holistic
test
of
tests
-‐
the
Dominancy
Test
and
the
Holistic
Test.
The
only
relies
on
visual
comparison
between
two
test
of
dominancy
focuses
on
the
similarity
of
the
trademarks
whereas
the
dominancy
test
relies
not
only
prevalent
features
of
the
competing
trademarks
which
on
the
visual
but
also
on
the
aural
and
connotative
might
cause
confusion
or
deception
and
thus
constitute
o 113
Katrina Michelle Mancao
comparisons
and
overall
impressions
between
the
two
in
which
case
defendant’s
goods
are
then
bought
as
the
trademarks.
plaintiff’s
and
its
poor
quality
reflects
badly
on
the
plaintiff’s
reputation.
The
other
is
“confusion
of
business”
MIGHTY
CORP.
V.
E.
&
J.
GALLO
WINERY
(2004)
wherein
the
goods
of
the
parties
are
different
but
the
Court
decision:
defendant’s
product
can
reasonably
(though
mistakenly)
Although
the
laws
on
trademark
infringement
and
unfair
be
assumed
to
originate
from
the
plaintiff,
thus
competition
have
a
common
conception
at
their
root,
deceiving
the
public
into
believing
that
there
is
some
that
is,
a
person
shall
not
be
permitted
to
misrepresent
connection
between
the
plaintiff
and
defendant
which,
his
goods
or
his
business
as
the
goods
or
business
of
in
fact,
does
not
exist.
another,
the
law
on
unfair
competition
is
broader
and
more
inclusive
than
the
law
on
trademark
infringement.
In
determining
the
likelihood
of
confusion,
the
Court
The
latter
is
more
limited
but
it
recognizes
a
more
must
consider:
exclusive
right
derived
from
the
trademark
adoption
and
[a]
the
resemblance
between
the
trademarks;
registration
by
the
person
whose
goods
or
business
is
[b]
the
similarity
of
the
goods
to
which
the
first
associated
with
it.
The
law
on
trademarks
is
thus
a
trademarks
are
attached;
specialized
subject
distinct
from
the
law
on
unfair
[c]
the
likely
effect
on
the
purchaser
and
competition,
although
the
two
subjects
are
entwined
[d]
the
registrant’s
express
or
implied
consent
with
each
other
and
are
dealt
with
together
in
the
and
other
fair
and
equitable
considerations.
Trademark
Law
(now,
both
are
covered
by
the
IP
Code).
Hence,
even
if
one
fails
to
establish
his
exclusive
Whether
a
trademark
causes
confusion
and
is
likely
to
property
right
to
a
trademark,
he
may
still
obtain
relief
deceive
the
public
hinges
on
“colorable
imitation”
on
the
ground
of
his
competitor’s
unfairness
or
fraud.
which
has
been
defined
as
“such
similarity
in
form,
Conduct
constitutes
unfair
competition
if
the
effect
is
to
content,
words,
sound,
meaning,
special
arrangement
or
pass
off
on
the
public
the
goods
of
one
man
as
the
general
appearance
of
the
trademark
or
tradename
in
goods
of
another.
It
is
not
necessary
that
any
particular
their
overall
presentation
or
in
their
essential
and
means
should
be
used
to
this
end.
substantive
and
distinctive
parts
as
would
likely
mislead
or
confuse
persons
in
the
ordinary
course
of
purchasing
Trademark
infringement
v.
Unfair
competition:
the
genuine
article.”
(1)
Infringement
of
trademark
is
the
Jurisprudence
has
developed
TWO
TESTS
in
determining
unauthorized
use
of
a
trademark,
whereas
similarity
and
likelihood
of
confusion
in
trademark
unfair
competition
is
the
passing
off
of
one's
resemblance
-‐
the
Dominancy
Test
and
the
Holistic
or
goods
as
those
of
another.
Totality
Test.
(2)
In
infringement
of
trademark
fraudulent
The
Dominancy
Test
focuses
on
the
similarity
of
the
intent
is
unnecessary,
whereas
in
unfair
prevalent
features
of
the
competing
trademarks
which
competition
fraudulent
intent
is
essential.
might
cause
confusion
or
deception,
and
thus
infringement.
If
the
competing
trademark
contains
the
(3)
In
infringement
of
trademark
the
prior
main,
essential
or
dominant
features
of
another,
and
registration
of
the
trademark
is
a
prerequisite
confusion
or
deception
is
likely
to
result,
infringement
to
the
action,
whereas
in
unfair
competition
takes
place.
Duplication
or
imitation
is
not
necessary;
nor
registration
is
not
necessary.
is
it
necessary
that
the
infringing
label
should
suggest
an
effort
to
imitate.
The
question
is
whether
the
use
of
the
A
crucial
issue
in
any
trademark
infringement
case
is
the
marks
involved
is
likely
to
cause
confusion
or
mistake
in
likelihood
of
confusion,
mistake
or
deceit
as
to
the
the
mind
of
the
public
or
deceive
purchasers.
identity,
source
or
origin
of
the
goods
or
identity
of
the
business
as
a
consequence
of
using
a
certain
mark.
On
the
other
hand,
the
Holistic
Test
requires
that
the
Likelihood
of
confusion
is
admittedly
a
relative
term,
to
entirety
of
the
marks
in
question
be
considered
in
be
determined
rigidly
according
to
the
particular
(and
resolving
confusing
similarity.
Comparison
of
words
is
sometimes
peculiar)
circumstances
of
each
case.
Thus,
not
the
only
determining
factor.
The
trademarks
in
their
in
trademark
cases,
more
than
in
other
kinds
of
litigation,
entirety
as
they
appear
in
their
respective
labels
or
hang
precedents
must
be
studied
in
the
light
of
each
tags
must
also
be
considered
in
relation
to
the
goods
to
particular
case.
which
they
are
attached.
The
discerning
eye
of
the
observer
must
focus
not
only
on
the
predominant
words
There
are
TWO
TYPES
OF
CONFUSION
IN
TRADEMARK
but
also
on
the
other
features
appearing
in
both
labels
in
INFRINGEMENT.
The
first
is
“confusion
of
goods”
when
order
that
he
may
draw
his
conclusion
whether
one
is
an
otherwise
prudent
purchaser
is
induced
to
purchase
confusingly
similar
to
the
other.
one
product
in
the
belief
that
he
is
purchasing
another,
114 z
Intellectual Property Law
In
comparing
the
resemblance
or
colorable
imitation
of
confusion
of
business
remains,
since
the
low-‐income
marks,
various
factors
have
been
considered,
such
as
the
group
might
be
led
to
believe
that
the
“Big
Mak”
dominant
color,
style,
size,
form,
meaning
of
letters,
hamburgers
are
the
low-‐end
hamburgers
marketed
by
words,
designs
and
emblems
used,
the
likelihood
of
petitioners.
After
all,
petitioners
have
the
exclusive
right
deception
of
the
mark
or
name's
tendency
to
confuse
to
use
the
“Big
Mac”
mark.
On
the
other
hand,
and
the
commercial
impression
likely
to
be
conveyed
by
respondents
would
benefit
by
associating
their
low-‐end
the
trademarks
if
used
in
conjunction
with
the
respective
hamburgers,
through
the
use
of
the
“Big
Mak”
mark,
goods
of
the
parties.
with
petitioners’
high-‐end
“Big
Mac”
hamburgers,
leading
to
likelihood
of
confusion
in
the
identity
of
MCDONALD’S
CORP
V.
L.C.
BIG
MAK
(2004)
business.
Court
decision:
To
establish
trademark
infringement,
the
following
The
registered
trademark
owner
may
use
his
mark
on
elements
must
be
shown:
the
same
or
similar
products,
in
different
segments
of
(1)
the
validity
of
plaintiff’s
mark;
the
market,
and
at
different
price
levels
depending
on
(2)
the
plaintiff’s
ownership
of
the
mark;
and
variations
of
the
products
for
specific
segments
of
the
(3)
the
use
of
the
mark
or
its
colorable
market.
The
Court
has
recognized
that
the
registered
imitation
by
the
alleged
infringer
results
in
trademark
owner
enjoys
protection
in
product
and
“likelihood
of
confusion.”
market
areas
that
are
the
normal
potential
expansion
of
his
business.
Thus,
the
Court
has
declared:
Of
these,
it
is
the
element
of
likelihood
of
confusion
that
is
the
gravamen
of
trademark
infringement.
Modern
law
recognizes
that
the
protection
to
which
the
owner
of
a
trademark
is
entitled
is
Section
22
covers
two
types
of
confusion
arising
from
not
limited
to
guarding
his
goods
or
business
the
use
of
similar
or
colorable
imitation
marks,
namely,
from
actual
market
competition
with
identical
confusion
of
goods
(product
confusion)
and
confusion
or
similar
products
of
the
parties,
but
extends
of
business
(source
or
origin
confusion).
to
all
cases
in
which
the
use
by
a
junior
appropriator
of
a
trade-‐mark
or
trade-‐name
is
In
confusion
of
goods,
the
ordinarily
prudent
purchaser
likely
to
lead
to
a
confusion
of
source,
as
where
would
be
induced
to
purchase
one
product
in
the
belief
prospective
purchasers
would
be
misled
into
that
he
was
purchasing
the
other.
In
confusion
of
thinking
that
the
complaining
party
has
business,
though
the
goods
of
the
parties
are
different,
extended
his
business
into
the
field
or
is
in
any
the
defendant’s
product
is
such
as
might
reasonably
be
way
connected
with
the
activities
of
the
assumed
to
originate
with
the
plaintiff,
and
the
public
infringer;
or
when
it
forestalls
the
normal
would
then
be
deceived
either
into
that
belief
or
into
the
potential
expansion
of
his
business.
belief
that
there
is
some
connection
between
the
plaintiff
and
defendant
which,
in
fact,
does
not
exist.
Test
to
determine
likelihood
of
confusion:
Thus,
while
there
is
confusion
of
goods
when
the
This
Court,
however,
has
relied
on
the
dominancy
test
products
are
competing,
confusion
of
business
exists
rather
than
the
holistic
test.
The
dominancy
test
when
the
products
are
non-‐competing
but
related
considers
the
dominant
features
in
the
competing
marks
enough
to
produce
confusion
of
affiliation.
in
determining
whether
they
are
confusingly
similar.
Under
the
dominancy
test,
courts
give
greater
weight
to
Petitioners
claim
that
respondents’
use
of
the
“Big
Mak”
the
similarity
of
the
appearance
of
the
product
arising
mark
on
respondents’
hamburgers
results
in
confusion
from
the
adoption
of
the
dominant
features
of
the
of
goods,
particularly
with
respect
to
petitioners’
registered
mark,
disregarding
minor
differences.
Courts
hamburgers
labeled
“Big
Mac.”
Since
respondents
used
will
consider
more
the
aural
and
visual
impressions
the
“Big
Mak”
mark
on
the
same
goods,
i.e.
hamburger
created
by
the
marks
in
the
public
mind,
giving
little
sandwiches,
that
petitioners’
“Big
Mac”
mark
is
used,
weight
to
factors
like
prices,
quality,
sales
outlets
and
trademark
infringement
through
confusion
of
goods
is
a
market
segments.
proper
issue
in
this
case.
Respondents
also
admit
that
their
business
includes
selling
hamburger
sandwiches,
The
test
of
dominancy
is
now
explicitly
incorporated
the
same
food
product
that
petitioners
sell
using
the
into
law
in
Section
155.1
of
the
Intellectual
Property
“Big
Mac”
mark.
Thus,
trademark
infringement
through
Code
which
defines
infringement
as
the
“colorable
confusion
of
business
is
also
a
proper
issue
in
this
case.
imitation
of
a
registered
mark
xxx
or
a
dominant
feature
thereof.”
Respondents
assert
that
their
“Big
Mak”
hamburgers
cater
mainly
to
the
low-‐income
group
while
petitioners’
“Big
Mac”
hamburgers
cater
to
the
middle
and
upper
income
groups.
Even
if
this
is
true,
the
likelihood
of
o 115
Katrina Michelle Mancao
MCDONALD’S
CORP.
V.
MACJOY
FASTFOOD
CORP.
(2007)
In
contrast,
the
Holistic
or
Totality
Test
necessitates
a
Court
decision:
consideration
of
the
entirety
of
the
marks
as
applied
to
Essentially,
the
issue
here
is
whether
there
is
a
confusing
the
products,
including
the
labels
and
packaging,
in
similarity
between
the
MCDONALD’S
marks
of
the
determining
confusing
similarity.
The
discerning
eye
of
petitioner
and
the
respondent’s
“MACJOY
&
DEVICE”
the
observer
must
focus
not
only
on
the
predominant
trademark
when
applied
to
Classes
29
and
30
of
the
words,
but
also
on
the
other
features
appearing
on
both
International
Classification
of
Goods,
i.e.,
food
and
labels
so
that
the
observer
may
draw
conclusion
on
ingredients
of
food.
whether
one
is
confusingly
similar
to
the
other.
In
determining
similarity
and
likelihood
of
confusion,
Relative
to
the
question
on
confusion
of
marks
and
trade
jurisprudence
has
developed
two
tests,
the
dominancy
names,
jurisprudence
has
noted
2
types
of
confusion,
test
and
the
holistic
test.
The
dominancy
test
focuses
on
viz.:
(1)
confusion
of
goods
(product
confusion),
where
the
similarity
of
the
prevalent
features
of
the
competing
the
ordinarily
prudent
purchaser
would
be
induced
to
trademarks
that
might
cause
confusion
or
deception.
In
purchase
one
product
in
the
belief
that
he
was
contrast,
the
holistic
test
requires
the
court
to
consider
purchasing
the
other;
and
(2)
confusion
of
business
the
entirety
of
the
marks
as
applied
to
the
products,
(source
or
origin
confusion),
where,
although
the
goods
including
the
labels
and
packaging,
in
determining
of
the
parties
are
different,
the
product,
the
mark
of
confusing
similarity.
Under
the
latter
test,
a
comparison
which
registration
is
applied
for
by
one
party,
is
such
as
of
the
words
is
not
the
only
determinant
factor.
might
reasonably
be
assumed
to
originate
with
the
registrant
of
an
earlier
product,
and
the
public
would
In
trademark
cases,
particularly
in
ascertaining
whether
then
be
deceived
either
into
that
belief
or
into
the
belief
one
trademark
is
confusingly
similar
to
another,
no
set
that
there
is
some
connection
between
the
two
parties,
rules
can
be
deduced
because
each
case
must
be
though
inexistent.
decided
on
its
merits.
In
such
cases,
even
more
than
in
any
other
litigation,
precedent
must
be
studied
in
the
Applying
the
Dominancy
Test
to
the
case
at
bar,
this
light
of
the
facts
of
the
particular
case.
That
is
the
reason
Court
finds
that
the
use
of
the
stylized
"S"
by
why
in
trademark
cases,
jurisprudential
precedents
respondent
in
its
Strong
rubber
shoes
infringes
on
the
should
be
applied
only
to
a
case
if
they
are
specifically
in
mark
already
registered
by
petitioner
with
the
IPO.
While
point.
it
is
undisputed
that
petitioner's
stylized
"S"
is
within
an
oval
design,
to
this
Court's
mind,
the
dominant
feature
While
we
agree
with
the
CA’s
detailed
enumeration
of
of
the
trademark
is
the
stylized
"S,"
as
it
is
precisely
the
differences
between
the
2
competing
trademarks
herein
stylized
"S"
which
catches
the
eye
of
the
purchaser.
involved,
we
believe
that
the
holistic
test
is
not
the
one
Thus,
even
if
respondent
did
not
use
an
oval
design,
the
applicable
in
this
case,
the
dominancy
test
being
the
one
mere
fact
that
it
used
the
same
stylized
"S",
the
same
more
suitable.
In
recent
cases
with
a
similar
factual
being
the
dominant
feature
of
petitioner's
trademark,
milieu
as
here,
the
Court
has
consistently
used
and
already
constitutes
infringement
under
the
Dominancy
applied
the
dominancy
test
in
determining
confusing
Test.
similarity
or
likelihood
of
confusion
between
competing
trademarks.
Withal,
the
protection
of
trademarks
as
intellectual
property
is
intended
not
only
to
preserve
the
goodwill
and
reputation
of
the
business
established
on
the
goods
SKETCHERS
V.
INTERPACIFIC
INDUSTRIAL
TRADING
(2011)
bearing
the
mark
through
actual
use
over
a
period
of
Court
decision:
time,
but
also
to
safeguard
the
public
as
consumers
The
essential
element
of
infringement
under
R.A.
No.
against
confusion
on
these
goods.
8293
is
that
the
infringing
mark
is
likely
to
cause
confusion.
In
determining
similarity
and
likelihood
of
Cases
on
bottles
and
containers
confusion,
jurisprudence
has
developed
tests
–
the
Dominancy
Test
and
the
Holistic
or
Totality
Test.
The
Dominancy
Test
focuses
on
the
similarity
of
the
CAGAYAN
VALLEY
ENTERPRISES
V
CA
(1989)
prevalent
or
dominant
features
of
the
competing
Court
decision:
trademarks
that
might
cause
confusion,
mistake,
and
RA
623
extends
protection
to
qualified
manufacturer
deception
in
the
mind
of
the
purchasing
public.
who
successfully
registered
with
the
PPO
its
duly
Duplication
or
imitation
is
not
necessary;
neither
is
it
stamped
or
marked
bottles,
boxes,
casks,
and
other
required
that
the
mark
sought
to
be
registered
suggests
similar
containers.
It
merely
requires
that
bottles,
in
an
effort
to
imitate.
Given
more
consideration
are
the
order
to
be
eligible
for
registration
must
be
stamped
or
aural
and
visual
impressions
created
by
the
marks
on
the
marked
with
the
names
of
their
manufacturers
or
the
buyers
of
goods,
giving
little
weight
to
factors
like
prices,
names
of
their
principals
or
products
or
other
marks
of
quality,
sales
outlets,
and
market
segments.
ownership.
No
drawings
or
labels
are
required
but
instead,
two
photos
of
the
container,
duly
signed
by
the
116 z
Intellectual Property Law
applicant,
showing
clearly
and
legibly
the
names
and
to
the
backyard,
cottage
and
small-‐scale
manufacturers
other
marks
of
ownership
sought
to
be
registered
and
a
of
indigenous
native
products
such
as
patis,
sisi
and
toyo
bottle
showing
the
name
or
other
mark
of
ownership,
who
do
not
have
the
capital
to
buy
brand
new
bottles
as
irremovably
stamped
or
marked
shall
be
submitted.
containers
nor
afford
to
pass
the
added
cost
to
the
majority
of
the
poor
Filipinos
who
use
the
products
as
Hard
liquor,
although
regulated,
is
not
probity
by
law,
their
daily
condiments
or
viands.
hence
it
is
within
the
purview
and
coverage
of
RA
623.
b. Unfair
competition
DISTILLERIA
WASHINGTON
V
CA
(1996)
Court
decision:
SECTION
168.
UNFAIR
COMPETITION,
RIGHTS,
REGULATION
RA
623
extends
TM
protection
in
the
use
of
containers
AND
REMEDIES.
–
duly
registered
with
the
PPO.
The
mere
use
of
registered
bottles
or
containers
without
the
written
consent
of
the
168.1.
A
person
who
has
identified
in
the
mind
of
the
manufacturer
is
prohibited.
Only
exceptions:
usage
as
public
the
goods
he
manufactures
or
deals
in,
his
container
for
sisi,
bagoong,
patis
and
similar
native
business
or
services
from
those
of
others,
whether
or
products.
not
a
registered
mark
is
employed,
has
a
property
right
in
the
goodwill
of
the
said
goods,
business
or
services
RA
623
does
not
disallow
the
sale
or
transfer
of
so
identified,
which
will
be
protected
in
the
same
ownership
of
the
marked
bottles
or
containers.
manner
as
other
property
rights.
While
it
may
be
unwarranted
for
the
registrant
to
simply
168.2.
Any
person
who
shall
employ
deception
or
any
seize
the
empty
containers
from
one
engaged
in
the
other
means
contrary
to
good
faith
by
which
he
shall
unauthorized
use
of
said
containers,
it
would
be
legally
pass
off
the
goods
manufactured
by
him
or
in
which
he
absurd
to
still
allow
the
latter
to
recover
possession
deals,
or
his
business,
or
services
for
those
of
the
one
thereof—the
practical
and
feasible
alternative
is
to
having
established
such
goodwill,
or
who
shall
commit
merely
require
the
payment
of
just
compensation
to
the
any
acts
calculated
to
produce
said
result,
shall
be
guilty
latter.
of
unfair
competition,
and
shall
be
subject
to
an
action
therefor.
DISTILLERIA
WASHINGTON
V.
LA
TONDEÑA
(1997)
Court
decision:
168.3.
In
particular,
and
without
in
any
way
limiting
It
is
implied
that
Section
2
and
3
of
RA
623
apply
only
the
scope
of
protection
against
unfair
competition,
the
when
the
registered
manufacturer,
bottler
or
seller
following
shall
be
deemed
guilty
of
unfair
competition:
retain
ownership
of
the
bottles
and
when
the
bottles
have
been
transferred
by
way
of
sale,
Section
5
applies,
(a)
Any
person,
who
is
selling
his
goods
thereby
precluding
the
institution
of
any
action
under
and
gives
them
the
general
appearance
of
Sections
2
and
3.
goods
of
another
manufacturer
or
dealer,
either
as
to
the
goods
themselves
or
in
the
The
transferee
of
the
marked
bottles
transferred
by
way
wrapping
of
the
packages
in
which
they
are
of
sale
is
allowed
to
enjoy
all
the
rights
of
an
owner
in
contained,
or
the
devices
or
words
thereon,
or
regard
to
such
bottles.
What
is
proscribed
is
the
use
of
in
any
other
feature
of
their
appearance,
which
bottles
in
infringement
of
another’s
trademark
or
would
be
likely
to
influence
purchasers
to
incorporeal
rights.
believe
that
the
goods
offered
are
those
of
a
manufacturer
or
dealer,
other
than
the
actual
Where
the
marked
bottles
are
transferred
by
way
of
sale,
manufacturer
or
dealer,
or
who
otherwise
the
registered
owner
relinquishes
all
its
proprietary
clothes
the
goods
with
such
appearance
as
rights
over
the
bottles
in
favor
of
the
person
who
shall
deceive
the
public
and
defraud
another
obtains
them
in
due
course.
of
his
legitimate
trade,
or
any
subsequent
vendor
of
such
goods
or
any
agent
of
any
TWIN
ACE
HOLDINGS
V.
CA
(1997)
vendor
engaged
in
selling
such
goods
with
a
like
purpose;
Court
decision:
Registered
containers
of
hard
liquor
(rhum,
gin,
brandy,
(b)
Any
person
who
by
any
artifice,
or
and
the
like)
are
protected
by
RA
623.
device,
or
who
employs
any
other
means
calculated
to
induce
the
false
belief
that
such
RA
623
was
meant
to
protect
the
intellectual
property
rights
fo
the
registrants
of
the
containers
and
prevent
person
is
offering
the
services
of
another
who
has
identified
such
services
in
the
mind
of
the
unfair
trade
practices
and
fraud
on
the
public.
HOWEVER,
public;
or
the
exemption
granted
under
the
same
law
was
deemed
extremely
necessary
to
provide
assistance
and
incentive
o 117
Katrina Michelle Mancao
(c)
Any
person
who
shall
make
any
false
circumstances
of
the
case.
The
affidavit
of
a
former
statement
in
the
course
of
trade
or
who
shall
employee
of
Universal
attesting
to
the
illegal
sale
and
commit
any
other
act
contrary
to
good
faith
of
manufacture
of
“Spalding”
balls
and
seized
“Spalding”
a
nature
calculated
to
discredit
the
goods,
products
and
instruments
from
Universal’s
factory
was
business
or
services
of
another.
sufficient
prima
facie
evidence
to
warrant
prosecution
of
private
respondents.
168.4.
The
remedies
provided
by
Sections
15610,
15711
and
16112
shall
apply
mutatis
mutandis.
That
a
corporation
other
than
the
certified
owner
of
the
TM
is
engaged
in
the
unauthorized
manufacture
of
SECTION
232.
APPEALS.
–
products
bearing
the
same
TM
engenders
a
reasonable
belief
that
a
criminal
offense
for
unfair
competition
is
232.1.
Appeals
from
decisions
of
regular
courts
shall
be
being
committed.
governed
by
the
Rules
of
Court.
Unless
restrained
by
a
higher
court,
the
judgment
of
the
trial
court
shall
be
To
hold
that
the
act
of
selling
is
an
indispensable
executory
even
pending
appeal
under
such
terms
and
element
of
the
crime
of
unfair
competition
is
illogical
conditions
as
the
court
may
prescribe.
because
if
the
law
punishes
the
seller
of
imitation
goods,
then
with
more
reason
should
the
law
penalize
the
232.2.
Unless
expressly
provided
in
this
Act
or
other
manufacturer.
statutes,
appeals
from
decisions
of
administrative
officials
shall
be
provided
in
the
Regulations.
UNIVERSAL
RUBBER
PRODUCTS
V.
CA,
CONVERSE
RUBBER
CORPORATION,
EDWARSON
MANUFACTURING
CO.
(1984)
Difference
between
infringement
and
unfair
Court
decision:
competition
General
rule:
On
obtaining
an
injunction
for
infringement
of
a
TM,
complainant
is
entitled
to
an
accounting
and
DEL
MONTE
CORPORATION
V.
CA
AND
SUNSHINE
SAUCE
recovery
of
defendant’s
profits
on
the
goods
sold
under
(1990)
the
TM
as
part
of
his
property
right.
This
rule
applies
also
Court
decision:
in
cases
of
unfair
competition.
Distinctions
between
infringement
of
TM
and
unfair
competition.
In
such
case,
the
infringer
or
unfair
trader
is
required
in
INFRINGEMENT
UNFAIR
COMPETITION
equity
to
account
for
and
yield
up
his
gains
on
a
principle
Unauthorized
use
of
a
TM
Passing
off
of
one’s
goods
analogous
to
that
which
charges
as
trustee
with
the
as
those
of
another
profits
acquired
by
the
wrongful
use
of
the
property
of
Intent
is
unnecessary
Fraudulent
intent
is
the
cestui
que
trust
and
defendant’s
profits
are
regarded
necessary
as
an
equitable
measure
of
the
compensation
plaintiff
should
receive
for
the
past
harm
suffered
by
him.
Prior
registration
of
the
Registration
is
not
TM
is
a
prerequisite
to
the
necessary
In
recovering
the
loss
suffered
by
the
aggrieved
party
action
due
to
“unfair
competition,”
Sec.
23
of
RA
166
grants
the
complainant
three
options
within
which
to
ascertain
the
Lower
court
and
CA
dismissed
Del
Monte’s
complaint
amount
of
damages
recoverable
either
against
Sunshine
Suace
for
infringement
of
TM
and
[1]
reasonable
profit
with
the
complaining
party
would
unfair
competition
because
of
Del
Monte’s
failure
to
have
made,
had
the
defendant
not
infringed
his
said
establish
defendant’s
malice
or
bad
faith,
which
was
an
rights
essential
element
of
infringement
of
TM
or
unfair
[2]
profit
which
the
defendant
actually
made
out
the
competition.
SC
reversed
the
lower
courts’
ruling
and
infringement
found
Sunshine
guilty
of
both
infringement
(logo
was
[3]
the
court
may
award
as
damages
a
reasonable
confusingly
similar)
and
unfair
competition
(refilling
of
percentage
based
upon
the
amount
of
gross
sales
of
the
Del
Monte’s
bottles
with
their
own
product).
defendant
of
the
value
of
the
services
in
connection
with
which
the
mark
or
tradename
was
issued
in
the
PRO
LINE
SPORTS
CENTER
V.
CA,
UNIVERSAL
ATHLETICS
infringement
of
the
rights
of
the
complaining
party.
INDUSTRIAL
PRODUCTS
INC,
AND
MONICO
SEHWANI
(1997)
Court
decision:
Nature
of
complaint
of
unfair
competition:
it’s
basically
The
existence
of
probable
cause
for
unfair
competition
a
suit
for
“injunction
and
damages”
because…
by
Universal
is
derivable
from
the
facts
and
-‐
Injunction:
for
the
purpose
of
enjoining
the
unlawful
competitor
from
proceeding
further
with
the
unlawful
10
For
infringement
competition
11
For
destroying
the
material
12
For
cancelation
of
registration
118 z
Intellectual Property Law
-‐
Damages:
to
allow
the
aggrieved
party
to
recover
the
SOLID
TRIANGLE
SALES
CORPORATION
V.
SHERIFF
OF
RTC
damage
he
has
suffered
by
virtue
of
the
said
unlawful
QC
(2001)
competition.
Court
decision:
Sanly
Corporation
did
not
pass
off
the
subject
goods
as
To
determine
the
amount
of
damages
allowable
only
that
of
another.
Indeed,
it
admits
that
the
goods
are
after
final
determination
of
the
unfair
competition
case
genuine
Mitsubishi
photographic
paper,
which
it
would
render
nugatory
the
right
of
the
complainant
purchased
from
a
supplier
in
HK.
Petitioner
alleges
that
under
Sec.
23
RA
166
but
would
be
a
repetitious
process
private
respondents
“made
it
appear
that
they
were
duly
causing
only
unnecessary
delay.
authorized
to
sell
or
distribute
Mitsubishi
Photo
Paper
in
the
PH.”
Assuming
this
act
constitutes
a
crime,
there
is
CONVERSE
RUBBER
CORPORATION
V.
JACINTO
RUBBER
AND
no
proof
to
establish
such
allegation.
PLASTIC
CO
(1980)
Court
decision:
SONY
COMPUTER
ENTERTAINMENT
V.
SUPERGREEN,
INC.
The
shoes
manufactured
by
defendants
(Custombuilt)
(2007)
contained
practically
all
the
features
of
those
of
the
Court
decision:
plaintiff
(Chuck
Taylors),
except
for
the
respective
Sony
filed
complaint
with
the
NBI
against
Supergreen
for
brands,
of
course.
The
respective
designs,
shapes,
colors
reproduction
and
distribution
of
counterfeit
Playstation
of
the
ankle
patches,
the
bands,
the
toe
patch
and
the
console
and
game
software.
Manufacture
is
in
Cavite
soles
of
the
two
products
are
exactly
the
same
such
that
and
distribution
is
in
Mandaluyong.
Search
warrant
was
at
a
distance
of
few
meters,
it
is
impossible
to
distinguish
issued
by
Manila
RTC.
Supergreen
moved
for
quashal
of
Custombuilt
from
Chuck
Taylor.
These
elements
are
the
search
warrants.
more
than
sufficient
to
serve
as
basis
for
a
charge
of
unfair
competition.
Even
if
not
all
the
details
just
Court
upheld
the
warrants
for
Mandaluyong
because
it
is
mentioned
were
identical,
with
the
general
appearances
within
the
judicial
region
of
Manila.
alone
of
the
two
products,
any
ordinary
or
even
perhaps
even
a
not
too
perceptive
and
discriminating
customer
Where
a
person’s
imitation
of
the
general
appearance
of
could
be
deceived,
and
therefore,
Custombuilt
could
another
person’s
goods
was
done
allegedly
in
Cavite
but
easily
be
passed
off
for
Chuck
Taylor.
is
sold
the
goods
in
Metro
Manila,
the
alleged
acts
would
constitute
a
transitory
or
continuing
offense.
The
instant
The
statute
on
unfair
competition
extends
protection
to
cause
involves
a
transitory
or
continuing
offense
of
the
goodwill
of
the
manufacturer/dealer.
It
is
not
unfair
competition
under
Sec.
168
of
RA
8293.
required
that:
Goodwill
sought
to
be
protected
in
an
action
for
unfair
competition
must
have
been
established
in
an
actual
SEHWANI,
INC
AND
BENITA’S
FRIES,
INC
V.
IN-‐N-‐OUT
competitive
situation.
BURGER,
INC
(2007)
Deception
or
other
means
contrary
to
good
faith
or
any
Court
decision:
acts
calculated
to
pass
off
other
goods
for
those
of
one
The
question
of
WON
a
trademark
is
well-‐known
is
who
has
established
good
will
must
have
been
factual
in
nature,
involving
as
it
does
the
appreciation
of
committed
in
an
actual
competitive
situation.
evidence
adduced
before
the
BLA-‐IPO.
ASIA
BREWERY
V.
CA
(1993)
Section
151
(b)
of
RA
8293
specifically
provides
that
a
Court
decision:
petition
to
cancel
the
registration
of
a
mark
which
is
In
resolving
cases
of
infringement
and
unfair
registered
contrary
to
the
provisions
thereof,
or
which
is
competition,
courts
should
take
into
consideration
used
to
misrepresent
the
source
of
the
goods
or
services
several
factors
which
would
affect
its
conclusion.
E.g.
may
be
filed
anytime.
Laches
may
not
prevail
against
a
age,
training
and
education
of
the
usual
purchaser,
the
specific
provision
of
law,
since
equity,
which
has
been
nature
and
cost
of
the
article,
whether
the
article
is
defined
as
“justice
outside
legality”
is
applied
in
the
bought
for
immediate
consumption
and
also
the
absence
of
and
not
against
statutory
law
or
rules
of
conditions
under
which
it
is
usually
purchased.
procedure.
The
ruling
in
Del
Monte
should
not
be
applied
here
COCA-‐COLA
V.
GOMEZ
(2008)
because
of
the
consideration
of
the
aforementioned
Court
decision:
factors.
Beer
is
not
usually
picked
up
from
a
store
shelf
Unfair
competition
previously
defined
in
PH
but
ordered
by
brand
by
the
beer
drinker
himself
from
jurisprudence
in
relation
with
RA
166
and
Articles
188
the
storekeeper
or
waiter
in
a
pub
or
restaurant.
and
189
of
RPC
is
now
covered
by
Section
168
IPC
as
this
Code
has
expressly
repealed
RA
165,
RA
166
and
Articles
188
and
189
of
the
RPC.
The
law
does
not
cover
every
o 119
Katrina Michelle Mancao
unfair
act
committed
in
the
course
of
business,
it
covers
to
protect
the
property
rights
of
the
only
acts
characterized
by
“deception
or
any
other
business.
means
contrary
to
good
faith”
in
the
passing
off
of
• Bottle
is
very
critical,
that’
the
most
goods
and
services
as
those
of
another
or
who
has
expensive
component.
established
goodwill
in
relation
with
these
goods
or
services
or
any
other
act
calculated
to
produce
the
same
result.
SUPERIOR
COMMERCIAL
ENTERPRISES
V.
KUNNAN
Under
Sec.
168
of
RA
8293,
[1]
deception,
[2]
passing
off
ENTERPRISES
LTD
(2010)
and
[3]
fraud
upon
the
public
are
still
the
key
elements
Court
decision:
that
must
be
present
for
unfair
competition
to
exist.
There
can
be
trademark
infringement
without
unfair
competition,
such
as
when
the
infringer
discloses
on
the
“True
test
of
unfair
competition”
–
whether
the
acts
of
labels
containing
the
mark
that
he
manufactures
the
defendant
are
such
as
calculated
to
deceive
the
ordinary
goods,
thus
preventing
the
public
from
being
deceived
buyer
making
his
purchases
under
the
ordinary
that
the
goods
originate
from
the
TM
owner.
conditions
which
prevail
in
the
particular
trade
to
which
the
controversy
relates.
INFRINGEMENT:
Elements
of
trademark
infringement:
Re
hoarding
(collection
of
the
petitioner’s
empty
bottles
1) Validity
of
the
plaintiff’s
mark
so
that
they
can
be
withdrawn
from
circulation,
and
thus
2) Plaintiff’s
ownership
of
the
mark
impede
the
circulation
of
the
petitioner’s
bottled
3) Use
of
the
mark
or
its
colorable
imitation
by
products)
the
alleged
infringer
results
in
“likelihood
or
à
The
critical
question
is
not
the
intrinsic
unfairness
of
confusion”
the
act
of
hoarding—what
is
critical
for
purposes
of
Sec.
168
(3)
is
to
determine
if
the
hoarding,
as
charged,
is
“of
UNFAIR
COMPETITION:
passing
off
(or
palming
off)
or
a
nature
calculated
to
discredit
the
goods,
business
or
attempting
to
pass
off
upon
the
public
of
the
goods
or
services”
of
another.
business
of
one
person
as
the
goods
or
business
of
another
with
the
end
and
probable
effect
of
deceive
the
Given
the
IPC’s
specific
focus,
public.
FIRST
TEST
[that
should
be
made
when
question
arises
Elements
of
unfair
competition:
on
whether
a
matter
is
covered
by
the
Code]
-‐
to
ask
if
it
1) confusing
similarity
in
the
general
appearance
refers
to
an
IP
right
as
defined
in
the
Code
of
goods
SECOND
TEST
–
if
a
disputed
matter
does
not
expressly
2) intent
to
deceive
the
public
and
defraud
a
refer
to
an
IP
right
as
defined
above,
is
whether
it
falls
competitor
under
the
general
“unfair
competition”
concept
and
definition
under
Sections
168.1
and
168.2
of
the
IPC
c. Action
for
false
or
Hoarding
of
a
competitor’s
product
does
not
fall
within
fraudulent
the
coverage
of
the
IPC
and
of
Sec.
168
in
particular.
It
declaration
does
not
relate
to
any
patent,
TM,
trade
name
or
service
that
the
respondents
have
invaded,
intruded
into
or
SECTION
162.
ACTION
FOR
FALSE
OR
FRAUDULENT
used
without
proper
authority
from
the
petitioner
nor
DECLARATION.
–
are
the
respondents
alleged
to
have
fraudulently
passed
of
their
products
or
services
as
those
of
the
petitioner.
Any
person
who
shall
procure
registration
in
the
Office
of
a
mark
by
a
false
or
fraudulent
declaration
or
Hoarding
for
purposes
of
destruction
is
closer
to
RA
representation,
whether
oral
or
in
writing,
or
by
any
623’s
provision
(which
has
not
been
expressly
repealed
false
means,
shall
be
liable
in
a
civil
action
by
any
person
by
RA
8293).
injured
thereby
for
any
damages
sustained
in
consequence
thereof
• Hoarding
is
not
within
purview
of
unfair
competition;
there
could
be
no
probable
cause.
SECTION
163.
JURISDICTION
OF
COURT.
–
Does
not
cover
unfair
act,
only
the
deception
and
All
actions
under
Sections
150,
155,
164,
and
166
to
169
contrary
to
good
faith.
shall
be
brought
before
the
proper
courts
with
• Must
be
calculated
to
discredit
appropriate
jurisdiction
under
existing
laws.
• Adverse
reputational
impact
on
the
business.
• Obiter:
in
order
for
unfair
competition
committed,
it
must
be
related
to
intellectual
property.
It’s
not
just
passing
off,
it’s
broader
than
that.
Objective
is
really
120 z
Intellectual Property Law
SECTION
164.
NOTICE
OF
FILING
SUIT
GIVEN
TO
THE
169.2.
Any
goods
marked
or
labelled
in
contravention
DIRECTOR.
–
of
the
provisions
of
this
Section
shall
not
be
imported
It
shall
be
the
duty
of
the
clerks
of
such
courts
within
into
the
Philippines
or
admitted
entry
at
any
one
(1)
month
after
the
filing
of
any
action,
suit,
or
customhouse
of
the
Philippines.
The
owner,
importer,
or
consignee
of
goods
refused
entry
at
any
customhouse
proceeding
involving
a
mark
registered
under
the
under
this
section
may
have
any
recourse
under
the
provisions
of
this
Act,
to
notify
the
Director
in
writing
customs
revenue
laws
or
may
have
the
remedy
given
by
setting
forth:
the
names
and
addresses
of
the
litigants
and
designating
the
number
of
the
registration
or
this
Act
in
cases
involving
goods
refused
entry
or
seized.
registrations
and
within
one
(1)
month
after
the
judgment
is
entered
or
an
appeal
is
taken,
the
clerk
of
SECTION
232.
APPEALS.
–
court
shall
give
notice
thereof
to
the
Office,
and
the
232.1.
Appeals
from
decisions
of
regular
courts
shall
be
latter
shall
endorse
the
same
upon
the
filewrapper
of
governed
by
the
Rules
of
Court.
Unless
restrained
by
a
the
said
registration
or
registrations
and
incorporate
the
higher
court,
the
judgment
of
the
trial
court
shall
be
same
as
a
part
of
the
contents
of
said
filewrapper.
executory
even
pending
appeal
under
such
terms
and
conditions
as
the
court
may
prescribe.
SECTION
232.
APPEALS.
–
232.1.
Appeals
from
decisions
of
regular
courts
shall
be
232.2.
Unless
expressly
provided
in
this
Act
or
other
governed
by
the
Rules
of
Court.
Unless
restrained
by
a
statutes,
appeals
from
decisions
of
administrative
higher
court,
the
judgment
of
the
trial
court
shall
be
officials
shall
be
provided
in
the
Regulations.
executory
even
pending
appeal
under
such
terms
and
conditions
as
the
court
may
prescribe.
CIVIL
REMEDIES
-‐ Venue:
Commercial
courts
232.2.
Unless
expressly
provided
in
this
Act
or
other
statutes,
appeals
from
decisions
of
administrative
CRIMINAL
REMEDIES
officials
shall
be
provided
in
the
Regulations.
-‐ Venue:
Commercial
courts
CAUSES
OF
ACTION:
d. Action
for
false
Infringement
v.
Unfair
Competition
declaration
of
origin
Infringement
Unfair
Competition
SECTION
169.
FALSE
DESIGNATIONS
OF
ORIGIN;
FALSE
Definition
Unauthorized
use
Passing
off
of
DESCRIPTION
OR
REPRESENTATION.
–
of
the
trademark
one’s
goods
as
goods
of
another
169.1.
Any
person
who,
on
or
in
connection
with
any
Registration
Required
NOT
required
–
goods
or
services,
or
any
container
for
goods,
uses
in
that’s
why
it's
the
commerce
any
word,
term,
name,
symbol,
or
device,
or
last
resort
any
combination
thereof,
or
any
false
designation
of
Fraudulent
Not
required
Required
–
harder
origin,
false
or
misleading
description
of
fact,
or
false
or
intent
to
prove
misleading
representation
of
fact,
which:
Wrongful
Use
of
mark
Damaged
good
act
without
consent
will
of
the
(a)
Is
likely
to
cause
confusion,
or
to
business
cause
mistake,
or
to
deceive
as
to
the
affiliation,
connection,
or
association
of
such
Ma’am:
Thus,
better
remedy
is
infringement.
Unfair
person
with
another
person,
or
as
to
the
origin,
competition
is
resorted
to
only
after
infringement
failed
sponsorship,
or
approval
of
his
or
her
goods,
(if
applicable).
Infringement
may
be
proved
upon
services,
or
commercial
activities
by
another
showing
certificate
of
registration.
person;
or
Question:
Why
do
we
still
have
the
remedy
of
unfair
(b)
In
commercial
advertising
or
competition
if
registration
is
the
basis
of
the
right?
To
promotion,
misrepresents
the
nature,
give
a
remedy
to
persons
with
well-‐known
mark
but
are
characteristics,
qualities,
or
geographic
origin
not
registered
in
the
Philippines.
of
his
or
her
or
another
person's
goods,
services,
or
commercial
activities,
shall
be
Basis
of
unfair
competition:
Protection
of
the
goodwill
liable
to
a
civil
action
for
damages
and
of
the
business,
which
is
a
property
right.
injunction
provided
in
Sections
156
and
157
of
this
Act
by
any
person
who
believes
that
he
or
Section
168.3’s
enumeration
–
merely
illustrative.
168.3
she
is
or
is
likely
to
be
damaged
by
such
act.
states
“without
in
any
way
limiting
the
scope
of
o 121
Katrina Michelle Mancao
protection
against
unfair
competition.”
FALSE
OR
FRAUDULENT
DECLARATION:
Ma’am:
This
is
the
most
superfluous
provision.
Only
a
Note:
Includes
a
false
statement
in
the
course
of
trade
civil
remedy,
no
criminal
aspect
because
not
included
in
calculated
to
discredit
the
goods,
business
or
services
of
Section
170.
Thus,
it
should
not
be
used
as
an
another.
à
Spreading
rumors
about
the
competitor.
independent
cause
of
action.
It
may
be
used
only
as
an
alternate
cause
of
action.
Coca
Cola
case
à
hoarding
does
not
fall
within
the
purview
of
unfair
competition.
Unfair
competition
does
FALSE
DESIGNATION
OF
ORIGIN
OR
FALSE
not
cover
every
act
unfair
to
the
business.
DESCRIPTION:
Ma’am:
Note
the
obiter,
which
states
that
for
Ma’am:
Example
–
In-‐n-‐Out
Burger
claiming
there
to
be
unfair
competition,
the
act
must
be
the
same
as
the
foreign
business.
related
to
IP.
3. Criminal
Infringement
and
unfair
competition
are
based
on
CONFUSING
SIMILARITY
between
goods,
business,
or
SECTION
170.
PENALTIES.
–
service.
Independent
of
the
civil
and
administrative
sanctions
Tests:
imposed
by
law,
a
criminal
penalty
of
imprisonment
from
1. Dominancy
test
–
does
not
require
that
every
TWO
(2)
YEARS
TO
FIVE
(5)
YEARS
and
a
fine
ranging
element
be
similar.
Requires
only
that
the
from
Fifty
thousand
pesos
(P50,000)
to
Two
hundred
dominant
element
be
similar.
Most
strict
test.
thousand
pesos(P200,000),
shall
be
imposed
on
any
More
often
than
not,
plaintiff
will
win.
person
who
is
found
guilty
of
committing
any
of
the
acts
mentioned
in
Section
155
(Infringement),
Section
168
2. Holistic
test
–
requires
a
side-‐by-‐side
comparison
(Unfair
competition)
and
Subsection
169.1
(False
of
the
goods.
Also
not
limited
to
the
visual
designation
of
origin).
similarities
and
differences,
includes
a
consideration
of
how
the
products
are
SY
V.
CA
(1982)
presented.
Most
lenient
test.
More
often
than
Court
decision:
not,
defendant
will
win.
Where
the
accused
was
charged
with
unfair
competition,
but
the
TC,
being
of
the
opinion
that
the
crime
is
Del
Monte
case
à
did
not
specify
how
to
determine
infringement
of
TM,
neither
acquitted
nor
found
the
which
test
to
use,
but
according
to
Ma’am,
it
provides
a
accused
guilty
but
ordered
the
filing
of
a
new
and
proper
rational
explanation.
According
to
the
Court,
for
information,
there
can
be
no
double
jeopardy.
ordinary,
everyday,
inexpensive
goods,
the
test
to
be
applied
is
the
dominancy
test,
because
buyers
do
not
There
can
be
no
double
jeopardy
where
there
was
usually
scrutinize
inexpensive
goods.
On
the
other
hand,
neither
acquittal
nor
conviction,
but
merely
an
order
to
for
expensive
goods,
the
test
to
be
applied
is
the
holistic
file
a
new
information
for
the
correct
offense.
test,
because
buyers
usually
take
the
time
to
scrutinize
the
products
before
buying.
A
new
preliminary
investigation
is
not
called
for
where
court
orders
filing
of
correct
information
involving
a
Ma’am:
The
guidelines
as
to
what
test
to
apply
are
not
cognate
offense
(unfair
competition
to
infringement
of
clear-‐cut.
The
courts
are
actually
given
wide
latitude
of
TM).
discretion
to
choose
which
test
to
apply.
It
would
depend
on
the
court’s
appreciation
of
the
facts
and
the
SAMSON
V.
JUDGE
DAWAY
(2004)
circumstances
of
each
case.
Court
decision:
Which
court
has
jurisdiction
over
criminal
and
civil
cases
Note:
McDonald’s
case,
SC
held
that
dominancy
test
for
violation
of
intellectual
property
rights?
Regional
Trial
should
be
applied
because
it
has
legal
basis.
Courts
UNFAIR
COMPETITION:
Sec.
163
of
IPC
states
that
actions
(both
civil
and
Elements:
criminal)
under
Sec.
150,
155,
164,
166,
167,
168
and
169
1. Confusing
similarity
shall
be
brought
before
proper
courts
with
appropriate
2. Fraudulent
intent
jurisdiction
“under
existing
laws.”
The
existing
law
referred
to
in
Sec.
163
is
Sec.
27
of
RA
166.
Solid
Triangle
case*
à
no
unfair
competition
because
the
goods
were
genuine.
Other
party
was
a
parallel
RA
166
is
not
repealed
by
RA
8293
because
of
the
importer
of
genuine
products.
wording
of
the
repealing
clause
in
239.1
wherein
it
mentioned
“parts
of
Acts”
and
“inconsistent
therewith.”
122 z
Intellectual Property Law
The
use
of
such
phrases
only
mean
that
the
repeal
CONVERSE
RUBBER
CORPORATION
V.
UNIVERSAL
RUBBER
pertains
only
to
provisions
which
are
repugnant
or
not
PRODUCTS
(1987)
susceptible
of
harmonization
with
RA
8293.
Court
decision:
WON
the
respondent’s
partial
appropriation
of
YAO,
SR.
V.
PEOPLE
OF
THE
PHILIPPINES
(2007)
petitioner’s
corporate
name
is
of
such
character
that
it
is
Court
decision:
calculated
to
deceive
or
confuse
the
public
to
the
injury
Corporation
owned
by
Yao
family
were
allegedly
of
the
petitioner
to
which
the
name
belongs?
engaged
in
unlawful
refilling
and
selling
of
LPG
tanks
owned
by
Shell
and
Petron.
A
search
warrant
was
issued
A
tradename
is
any
individual
name
or
surname,
firm
against
their
store
by
virtue
of
NBI
seized
several
name,
device
or
word
used
by
manufacturers,
cylindrical
LPG
tanks.
Yao
family
demands
return
of
the
industrialists,
merchants
and
others
to
identify
their
items
seized
by
the
raiding
team
considering
that
no
businesses,
vocations
or
occupations.
As
the
tradename
action
for
infringement
has
been
filed
against
them
or
refers
to
the
business
and
its
goodwill,
the
trademark
their
corporation,
invoking
Sec.
20
of
AM
02-‐01-‐06-‐SC
refers
to
the
goods.
which
provides
that:
There
is
a
basic
similarity
between
the
tradenames
Sec.
20.
Failure
to
file
complaint.
–
The
writ
“Universal
Converse
and
Device”
and
“Converse
Rubber
shall
also,
upon
motion
of
the
expected
Corporation”
as
in
both
names
CONVERSE
is
the
adverse
party,
be
set
aside
and
the
seized
dominant
word
and
both
parties
engaged
in
similar
documents
and
articles
returned
to
the
business.
expected
adverse
party
if
no
case
is
filed
with
the
appropriate
court
or
authority
within
31
A
tradename
may
not
be
similar
to
a
corporate
name.
–
A
calendar
days
from
the
date
of
the
issuance
of
corporation
is
entitled
to
the
cancellation
of
a
mark
that
the
writ.
is
confusingly
similar
to
its
corporate
name.
Appropriation
by
another
of
the
dominant
part
of
a
AM
02-‐1-‐06-‐SC
is
not
applicable
in
the
present
case
corporate
name
is
an
infringement.
because
it
governs
only
searches
and
seizures
in
civil
actions
for
infringement
of
intellectual
property
rights.
The
determinative
factor
in
ascertaining
whether
or
not
The
offense
complained
of
herein
is
for
a
criminal
marks
are
confusingly
similar
to
each
other
is
“not
violation
of
Sec.
155
in
relation
Sec.
170
of
RA
8293.
whether
the
challenged
mark
would
actually
cause
confusion
or
deception
of
the
purchasers
but
whether
Samson
v.
Daway
case
à
justified
the
jurisdiction
of
the
use
of
such
mark
would
likely
cause
confusion
or
mistake
RTC
on
the
basis
of
RA
166,
in
connection
with
IP
Code’s
on
the
party
of
the
buying
public.”
repealing
clause.
Ma’am:
RA
166
was
resurrected!
But
actually,
The
risk
of
damage
is
not
limited
to
a
possible
confusion
since
the
IP
Code
was
a
codification
effort,
of
goods
but
also
includes
confusion
of
reputation
if
the
there
was
actually
an
intent
to
repeal
the
entire
public
could
reasonably
assume
that
the
goods
of
the
Code.
parties
originated
from
the
same
source.
Better
resolution
would
have
been
that
the
SC
Converse
Rubber
Corporation
has
already
earned
a
has
a
delegated
power
under
BP
129
.
business
reputation
in
this
country
which
should
be
protected.
Ownership
and
search
warrant
validity.
Ownership
is
not
material.
Truck
was
seized
2. What
may
not
be
used
as
a
and
even
if
it
did
not
belong,
as
long
as
it
is
found
in
crime
scene.
Ownership
would
not
tradename?
matter.
SECTION
165.1.
J. Tradenames
A
name
or
designation
may
not
be
used
as
a
trade
name
if
by
its
nature
or
the
use
to
which
such
name
or
1. Definition
designation
may
be
put,
it
is
contrary
to
public
order
or
morals
and
if,
in
particular,
it
is
liable
to
deceive
trade
circles
or
the
public
as
to
the
nature
of
the
enterprise
SECTION
121.3.
identified
by
that
name.
"TRADE
NAME"
means
the
name
or
designation
identifying
or
distinguishing
an
enterprise
o 123
Katrina Michelle Mancao
3. Rights
of
the
tradename
This
principle
proceeds
upon
the
theory
that
it
is
fraud
on
the
corporation
which
has
acquired
a
right
to
that
owner
name
and
perhaps
carried
on
its
business
thereunder
that
another
should
attempt
to
use
the
same
name
or
SECTION
165.2.
the
same
name
with
a
slight
variation
in
such
a
way
as
to
(a)
Notwithstanding
any
laws
or
regulations
providing
induce
persons
to
deal
with
it
in
the
belief
that
they
are
for
any
obligation
to
register
trade
names,
such
names
dealing
with
the
corporation
which
has
given
a
shall
be
protected,
even
prior
to
or
without
registration,
reputation
to
the
name.
against
any
unlawful
act
committed
by
third
parties.
ARMCO
STEEL
CORPORATION
V.
SEC
(1987)
(b)
In
particular,
any
subsequent
use
of
the
trade
name
Court
decision:
by
a
third
party,
whether
as
a
trade
name
or
a
mark
or
A
trademark
is
entitled
to
protection
in
the
use
thereof
collective
mark,
or
any
such
use
of
a
similar
trade
name
in
the
Philippines.
The
owner
has
the
right
to
the
or
mark,
likely
to
mislead
the
public,
shall
be
deemed
exclusive
use
and
enjoyment
of
the
term.
unlawful.
Armco
Steel-‐Philippines
and
Armco
Steel-‐Ohio
have
not
SECTION
165.3.
only
identical
name
but
also
a
similarity
in
line
of
The
remedies
provided
for
in
Sections
153
to
156
and
business.
People
who
are
buying
and
using
products
Sections
166
and
167
shall
apply
mutatis
mutandis.
bearing
the
TM
Armco
might
be
led
to
believe
that
such
products
are
manufactured
by
the
respondent,
when
in
SECTION
165.4.
fact,
they
might
actually
be
produced
by
the
petitioners.
Any
change
in
the
ownership
of
a
trade
name
shall
be
Thus,
the
goodwill
that
should
grow
and
inure
to
the
made
with
the
transfer
of
the
enterprise
or
part
thereof
benefit
of
the
petitioners
could
be
impaired
and
identified
by
that
name.
The
provisions
of
Subsections
prejudiced
by
the
continued
use
of
the
same
term
by
the
149.2
to
149.4
shall
apply
mutatis
mutandis.
respondent.
PHILIPS
EXPORT
V.
CA
(1992)
WESTERN
EQUIPMENT
&
SUPPLY
CO
V.
REYES
(1927)
Court
decision:
Court
decision:
A
corporation’s
right
to
use
its
corporate
and
trade
An
unregistered
foreign
corporation
which
has
not
name
is
a
property
right,
a
right
in
rem
which
it
may
personally
transacted
in
the
PH
but
which
has
acquired
assert
and
protect
against
the
world
in
the
same
manner
valuable
goodwill
and
high
reputation
therein
through
as
it
may
protect
its
tangible
property,
real
or
personal
the
sale
by
importers
and
the
extensive
use
within
the
against
trespass
or
conversion.
It
is
regarded
to
a
certain
territory
of
its
products
bearing
either
its
corporate
extent,
as
a
property
right
and
one
which
cannot
be
name
or
TM
has
a
legal
right
to
restrain
an
officer
of
the
impaired
or
defeated
by
subsequent
appropriation
by
government,
who
has
full
knowledge
of
those
facts,
another
corporation
in
the
same
field.
from
issuing
a
certificate
of
incorporation
to
residents
of
the
PH
who
are
attempting
to
organize
a
corporation
for
GR
as
to
corporation:
Each
corporation
must
have
a
the
purpose
of
pirating
the
corporate
name
of
the
name
by
which
it
is
to
sue
and
be
sued
and
do
all
legal
foreign
corporation
and
of
engaging
in
the
same
acts.
A
corporation
can
no
more
use
a
corporate
name
in
business,
for
the
purpose
of
making
the
public
believe
violation
of
the
right
of
others
than
an
individual
can
use
that
the
goods
which
it
proposes
to
sell
are
the
goods
of
his
name
legally
acquired
so
as
to
mislead
the
public
and
the
foreign
corporation
and
of
defrauding
it
and
its
local
injure
another.
dealers
of
their
legitimate
trade.
The
right
to
the
exclusive
use
of
a
corporate
name
with
The
purpose
of
such
a
suit
is
to
protect
its
reputation,
freedom
from
infringement
by
similarity
is
determined
corporate
name
and
goodwill
which
have
been
with
priority
of
adoption.
established
through
the
natural
development
of
its
trade
over
a
long
period
of
years,
in
the
doing
of
which
it
does
In
determining
the
existence
of
confusing
similarity
in
not
seek
to
enforce
any
legal
or
contract
rights
arising
corporate
name,
the
test
is
whether
the
similar
is
such
as
from
or
growing
out
of
any
business
which
it
has
to
mislead
a
person
using
ordinary
care
and
transacted
in
the
Ph.
discrimination.
Under
such
state
of
facts,
the
right
to
the
use
of
the
A
corporation
has
an
exclusive
right
to
the
use
of
its
corporate
and
trade
name
of
the
foreign
corporation
is
a
name
which
may
be
protected
by
injunction
upon
a
property
right,
a
right
in
rem,
which
it
may
assert
and
principle
similar
to
that
upon
which
persons
are
protect
in
any
of
the
courts
of
the
world
even
in
protected
in
the
use
of
trademarks
and
tradenames.
à
countries
where
it
does
not
personally
transact
any
business.
124 z
Intellectual Property Law
licensed by, or sourced from, Harvard University without
It is the trade and not the mark that is to be protected, the latter's consent.
and a TM does not acknowledge any territorial
boundaries, but extends to every market where the TRADE NAME:
trader’s goods have become known and identified by the Old law: Trademark same as trade name.
use of the mark. IP Code: Trade name is different.
FREDCO MANUFACTURING CORPORATION V PRESIDENT AND Trade name is a name or designation identifying an
FELLOWS OF HARVARD COLLEGE (2011) enterprise.
Court decision:
Differences in treatment between trademark and trade
Article 8 of the Paris Convention has been incorporated
name:
in Section 37 of R.A. No. 166, as follows:
-‐ REGISTRATION – Under the IP Code,
registration is not required to acquire
Article 8, Paris Convention -‐-‐ A trade name shall
protection of trade name. The basis of
be protected in all the countries of the Union
without the obligation of filing or registration,
protection is prior use in Philippine commerce.
whether or not it forms part of a trademark. You can set this up against the trademark
owner. (Note 168.3)
Section 37, RA 166. Rights of foreign registrants. -‐-‐
Persons who are nationals of, domiciled in, or -‐ REMEDIES AVAILABLE – Note the problem
have a bona fide or effective business or with non-‐registration of trade name: There is a
commercial establishment in any foreign country, limitation of remedy available to the trade
which is a party to any international convention or name owner. Trade name owner does not
treaty relating to marks or trade-‐names, or the have criminal remedy. Only civil and
repression of unfair competition to which the administrative.
Philippines may be a party, shall be entitled to the
benefits and subject to the provisions of this Act -‐ ASSIGNABILITY – Trade name is NOT separate
to the extent and under the conditions essential to the business. Trade name may be
to give effect to any such convention and treaties transferred only with the transfer of the
so long as the Philippines shall continue to be a
business. Trademark or service mark may be
party thereto, except as provided in the following
assigned independently of the business.
paragraphs of this section.
xxxx SERVICE MARK: Trademark used in services.
Trade-‐names of persons described in the first K. Collective Marks
paragraph of this section shall be protected
without the obligation of filing or registration 1. Definition
whether or not they form parts of marks.
xxxx
SECTION 121.2.
Thus, under Philippine law, a trade name of a national of "COLLECTIVE MARK" means any visible sign designated as
a State that is a party to the Paris Convention, whether such in the application for registration and capable of
or not the trade name forms part of a trademark, is distinguishing the origin or any other common
protected “without the obligation of filing or characteristic, including the quality of goods or services
registration.” of different enterprises which use the sign under the
control of the registered owner of the collective mark
“Harvard” is the trade name of the world famous
Harvard University, and it is also a trademark of Harvard SECTION 167. COLLECTIVE MARKS. –
University. Under Article 8 of the Paris Convention, as 167.1. Subject to Subsections 167.2 and 167.3, Sections 122
well as Section 37 of R.A. No. 166, Harvard University is
to 164 and 166 shall apply to collective marks, except
entitled to protection in the Philippines of its trade name
that references therein to "mark" shall be read as
"Harvard" even without registration of such trade name
"collective mark".
in the Philippines. This means that no educational entity
in the Philippines can use the trade name "Harvard"
167.2. (a) An application for registration of a collective
without the consent of Harvard University. Likewise, no
entity in the Philippines can claim, expressly or impliedly mark shall designate the mark as a collective mark and
through the use of the name and mark "Harvard," that shall be accompanied by a copy of the agreement, if any,
its products or services are authorized, approved, or governing the use of the collective mark.
o 125
Katrina Michelle Mancao
(b)
The
registered
owner
of
a
collective
mark
shall
notify
VII. Law
on
Patents
the
Director
of
any
changes
made
in
respect
of
the
agreement
referred
to
in
paragraph
(a).
PATENTS
This
field
gives
rise
to
serious
issues
on
access.
Unlike
167.3.
In
addition
to
the
grounds
provided
in
Section
149,
copyright
that
has
a
very
low
standard,
patent
is
very
the
Court
shall
cancel
the
registration
of
a
collective
exclusionary.
Under
patents,
a
parallel
invention
is
not
mark
if
the
person
requesting
the
cancellation
proves
allowed.
Patent
is
a
monopoly.
Patent
owner
is
given
that
only
the
registered
owner
uses
the
mark,
or
that
he
exclusive
right
to
import.
uses
or
permits
its
use
in
contravention
of
the
agreements
referred
to
in
Subsection
166.2
or
that
he
Patents
are
costly
to
the
society.
Issuance
of
patent
uses
or
permits
its
use
in
a
manner
liable
to
deceive
means
that
the
state
allows
the
patent
holder
to
trade
circles
or
the
public
as
to
the
origin
or
any
other
maximize
the
economic
value
of
the
invention
to
the
common
characteristics
of
the
goods
or
services
exclusion
of
everybody
else.
Thus,
for
patents
to
work,
concerned.
the
state
must
ensure
that
it
is
given
only
to
the
one
who
deserves
it.
167.4.
The
registration
of
a
collective
mark,
or
an
application
therefor
shall
not
be
the
subject
of
a
license
In
the
Philippines,
the
patent
system
is
identified
as
the
contract.
major
cause
of
the
high
prices
in
medicines.
Philippines
are
among
the
states
that
has
the
highest
patent
COLLECTIVE
MARK
standards,
even
before
it
was
required
to
do
so.
Mark
designed
to
be
used
by
parties
other
than
the
registrant.
This
is
usually
used
by
cooperatives.
The
Philippines
also
did
not
adopt
the
flexibilities
under
the
owner
of
the
mark
is
the
one
who
registers,
but
the
TRIPS
Agreement.
For
example,
under
the
TRIPS,
the
members
of
the
cooperative
are
the
ones
who
use
it.
country
is
allowed
to
adopt
any
exhaustion
principle
it
The
registrant
only
holds
it.
But
anyone
who
qualifies
to
chooses.
A
country
may
use
the
international
exhaustion
be
a
member
(or
meets
the
standard
of
the
agreement)
principle.
The
Philippines,
however,
decided
to
adopt
the
may
use
the
collective
mark.
domestic
exhaustion
principle.
In
Canada,
this
is
used
to
protect
the
products
Purpose
of
the
patent
–
to
promote
the
advancement
of
of
indigenous
communities.
technology.
It
was
established
as
an
incentive
system
to
encourage
innovation.
But
the
ultimate
objective
is
to
In
the
Philippines,
it
has
not
been
used.
reward
the
public.
KINDS
OF
PATENTS:
1. Invention
2. Utility
model
3. Industrial
design
4. Layout
circuits
–
it
was
designed
to
encourage
semi-‐
conductor
companies
to
invest
in
the
Philippines
(but
as
of
date,
no
registration
for
this).
STANDARDS
OF
PATENT
PROTECTION:
-‐ Key
to
effective
patent
protection.
-‐ Note:
Different
rules
apply
to
different
countries.
You
might
have
to
consider
this
in
advising
clients
on
registration.
1. Novelty
-‐ Not
part
of
prior
art.
Prior
art
is
anything
made
available
on
any
part
of
the
world.
-‐ Anything
found
in
the
public
domain
is
not
novel
part.
Anything
also
part
of
prior
application
is
part
of
prior
art.
-‐ Philippine
law
exception
–
1
year
of
non-‐
prejudicial
disclosure.
2. Inventiveness
-‐ Anything
that
is
not
obvious
to
a
person
skilled
126 z
Intellectual Property Law
in the art. SECTION 236. PRESERVATION OF EXISTING RIGHTS. –
-‐ “Person skilled in the art” has no uniform Nothing herein shall adversely affect the rights on the
definition. Here in the Philippines, definition is enforcement of rights in patents, utility models,
textbook. In some countries, term limited to industrial designs, marks and works, acquired in good
those with doctorate degree. faith prior to the effective date of this Act.
-‐ “Evergreening of a patent” – attempt to
prolong the patent monopoly by RA 9502 -‐ UNIVERSALLY ACCESSIBLE CHEAPER AND
changing one element.
QUALITY MEDICINES ACT OF 2008
3. Industrial applicability -‐ amended certain provision of the Intellectual
-‐ Has some use. Property Code
Industrial SECTION 47. SEPARABILITY CLAUSE. –
Novelty Inventiveness
Applicability Any portion or provision of this Act that may be declared
Invention unconstitutional or invalid shall not have the effect of
ü ü ü
nullifying other portions and provisions hereof as long as
Utility
ü û ü such remaining portion or provision can still subsist and
model
be given effect in their entirety.
Industrial
ü û û
design
Layout SECTION 48. REPEALING CLAUSE. –
ü (originality)
circuit All laws, decrees, executive orders, proclamations and
administrative regulations or parts thereof inconsistent
A. Legislative history herewith are hereby repealed or modified accordingly.
SECTION 49. EFFECTIVITY CLAUSE. –
REPUBLIC ACT 165 -‐ AN ACT CREATING A PATENT OFFICE,
This Act shall take effect fifteen (15) days after its
PRESCRIBING ITS POWERS AND DUTIES, REGULATING THE publication in at least two (2) national papers of general
ISSUANCE OF PATENTS, AND APPROPRIATING FUNDS circulation.
THEREFOR
-‐ Took effect on 20 June 1947 B. Definition
SECTION 239. REPEALS. – “The right of monopoly secured by statute to those who
239.1. All Acts and parts of Acts inconsistent herewith, invent or discover new and useful devices and processes.
The exclusive right of manufacture, sale, or use secured
more particularly Republic Act No. 165, as amended;
by statute to one who invents or discovers a new and
Republic Act No. 166, as amended; and Articles 188 and
useful device or process.” (US Dictionary)
189 of the Revised Penal Code; Presidential Decree No.
49, including Presidential Decree No. 285, as amended,
are hereby repealed. C. Purpose
SECTION 235. APPLICATIONS PENDING ON EFFECTIVE DATE MANZANO V. CA (1997)
OF ACT. – Court decision:
The primary purpose of the patent system is not the
235.1. All applications for patents pending in the Bureau
reward of the individual but the advancement of the arts
of Patents, Trademarks and Technology Transfer shall be and sciences. The function of a patent is to add to the
proceeded with and patents thereon granted in sum of useful knowledge and one of the purposes of the
accordance with the Acts under which said applications patent system is to encourage dissemination of
were filed, and said Acts are hereby continued to be information concerning discoveries and inventions. This
enforced, to this extent and for this purpose only, is a matter which is properly within the competence of
notwithstanding the foregoing general repeal thereof: the Patent Office the official action of which has the
Provided, That applications for utility models or presumption of correctness and may not be interfered
industrial designs pending at the effective date of this with in the absence of new evidence carrying thorough
Act, shall be proceeded with in accordance with the conviction that the Office has erred. Since the Patent
provisions of this Act, unless the applicants elect to Office is an expert body preeminently qualified to
prosecute said applications in accordance with the Acts determine questions of patentability, its findings must
under which they were filed. be accepted if they are consistent with the evidence,
with doubts as to patentability resolved in favor of the
Patent Office.
o 127
Katrina Michelle Mancao
advances
in
technology
and
design,
in
return
PEARL
&
DEAN
(PHIL.),
INC.
V.
SHOEMART,
SUPRA
for
the
exclusive
right
to
practice
the
invention
Refresher:
for
a
number
of
years.
The
inventor
may
keep
Light
boxes
his
invention
secret
and
reap
its
fruits
indefinitely.
In
consideration
of
its
disclosure
Doctrine:
and
the
consequent
benefit
to
the
community,
On
patent
infringement:
the
patent
is
granted.
An
exclusive
enjoyment
For
some
reason
or
another,
petitioner
never
secured
a
is
guaranteed
him
for
17
years,
but
upon
the
patent
for
the
light
boxes.
It
therefore
acquired
no
expiration
of
that
period,
the
knowledge
of
the
patent
rights
which
could
have
protected
its
invention,
if
invention
inures
to
the
people,
who
are
thus
in
fact
it
really
was.
And
because
it
had
no
patent,
enabled
to
practice
it
and
profit
by
its
use.”
petitioner
could
not
legally
prevent
anyone
from
manufacturing
or
commercially
using
the
contraption.
In
The
patent
law
has
a
three-‐fold
purpose:
“first,
patent
Creser
Precision
Systems,
Inc.
vs.
Court
of
Appeals,
we
law
seeks
to
foster
and
reward
invention;
second,
it
held
that
“there
can
be
no
infringement
of
a
patent
until
promotes
disclosures
of
inventions
to
stimulate
further
a
patent
has
been
issued,
since
whatever
right
one
has
to
innovation
and
to
permit
the
public
to
practice
the
the
invention
covered
by
the
patent
arises
alone
from
the
invention
once
the
patent
expires;
third,
the
stringent
grant
of
patent.
An
inventor
has
no
common
law
right
to
requirements
for
patent
protection
seek
to
ensure
that
a
monopoly
of
his
invention.
He
has
the
right
to
make
ideas
in
the
public
domain
remain
there
for
the
free
use
use
of
and
vend
his
invention,
but
if
he
voluntarily
of
the
public.”
discloses
it,
such
as
by
offering
it
for
sale,
the
world
is
free
to
copy
and
use
it
with
impunity.
A
patent,
however,
It
is
only
after
an
exhaustive
examination
by
the
patent
gives
the
inventor
the
right
to
exclude
all
others.
As
a
office
that
a
patent
is
issued.
Such
an
in-‐depth
patentee,
he
has
the
exclusive
right
of
making,
selling
or
investigation
is
required
because
“in
rewarding
a
useful
using
the
invention.
On
the
assumption
that
petitioner’s
invention,
the
rights
and
welfare
of
the
community
must
advertising
units
were
patentable
inventions,
petitioner
be
fairly
dealt
with
and
effectively
guarded.
To
that
end,
revealed
them
fully
to
the
public
by
submitting
the
the
prerequisites
to
obtaining
a
patent
are
strictly
engineering
drawings
thereof
to
the
National
Library.
observed
and
when
a
patent
is
issued,
the
limitations
on
its
exercise
are
equally
strictly
enforced.
To
begin
with,
a
To
be
able
to
effectively
and
legally
preclude
others
from
genuine
invention
or
discovery
must
be
demonstrated
copying
and
profiting
from
the
invention,
a
patent
is
a
lest
in
the
constant
demand
for
new
appliances,
the
primordial
requirement.
No
patent,
no
protection.
The
heavy
hand
of
tribute
be
laid
on
each
slight
technological
ultimate
goal
of
a
patent
system
is
to
bring
new
designs
advance
in
art.”
and
technologies
into
the
public
domain
through
disclosure.
Ideas,
once
disclosed
to
the
public
without
There
is
no
such
scrutiny
in
the
case
of
copyrights
nor
the
protection
of
a
valid
patent,
are
subject
to
any
notice
published
before
its
grant
to
the
effect
that
a
appropriation
without
significant
restraint.
person
is
claiming
the
creation
of
a
work.
The
law
confers
the
copyright
from
the
moment
of
creation
and
On
one
side
of
the
coin
is
the
public
which
will
benefit
the
copyright
certificate
is
issued
upon
registration
with
from
new
ideas;
on
the
other
are
the
inventors
who
the
National
Library
of
a
sworn
ex-‐parte
claim
of
creation.
must
be
protected.
As
held
in
Bauer
&
Cie
vs.
O’Donnel,
“The
act
secured
to
the
inventor
the
exclusive
right
to
D. What
are
patentable?
make
use,
and
vend
the
thing
patented,
and
consequently
to
prevent
others
from
exercising
like
1. Inventions
privileges
without
the
consent
of
the
patentee.
It
was
passed
for
the
purpose
of
encouraging
useful
invention
SECTION
21.
PATENTABLE
INVENTIONS.
–
and
promoting
new
and
useful
inventions
by
the
Any
technical
solution
of
a
problem
in
any
field
of
human
protection
and
stimulation
given
to
inventive
genius,
and
activity
which
is
new,
involves
an
inventive
step
and
is
was
intended
to
secure
to
the
public,
after
the
lapse
of
industrially
applicable
shall
be
Patentable.
It
may
be,
or
the
exclusive
privileges
granted
the
benefit
of
such
may
relate
to,
a
product,
or
process,
or
an
improvement
inventions
and
improvements.”
of
any
of
the
foregoing.
The
law
attempts
to
strike
an
ideal
balance
between
the
two
interests:
“The
patent
system
thus
embodies
a
carefully
crafted
bargain
for
encouraging
the
creation
and
disclosure
of
new
useful
and
non-‐obvious
128 z
Intellectual Property Law
Standards: MAGUAN V. CA (1986)
a. Novelty Refresher:
Patent for powder puff (in cosmetics)
SECTION 23. NOVELTY. –
Doctrine:
An invention shall not be considered new if it forms part
It has been repeatedly held that an invention must
of a prior art.
possess the essential elements of novelty , originality
and precedence and for the patentee to be entitled to
SECTION 24. PRIOR ART. – protection, the invention must be new to the world.
Prior art shall consist of: Accordingly, a single instance of public use of the
invention by a patentee for more than two years (now
24.1. Everything which has been made available for more than one year only under Sec. 9 of the Patent
to the public anywhere in the world, before the Law) before the date of his application for his patent,
filing date or the priority date of the application will be fatal to, the validity of the patent when issued.
claiming the invention; and
It will be noted that the validity of petitioner's patents is
24.2. The whole contents of an application for a in question for want of novelty. Private respondent
patent, utility model, or industrial design contends that powder puffs Identical in appearance with
registration, published in accordance with this that covered by petitioner's patents existed and were
Act, filed or effective in the Philippines, with a publicly known and used as early as 1963 long before
filing or priority date that is earlier than the petitioner was issued the patents in question. As
filing or priority date of the application: correctly observed by respondent Court of Appeals,
Provided, That the application which has validly "since sufficient proofs have been introduced in
claimed the filing date of an earlier application evidence showing a fair question of the invalidity of the
under Section 31 of this Act, shall be prior art patents issued for such models, it is but right that the
with effect as of the filing date of such earlier evidence be looked into, evaluated and determined on
application: Provided further, That the the merits so that the matter of whether the patents
applicant or the inventor identified in both issued were in fact valid or not may be resolved."
applications are not one and the same.
All these notwithstanding, the trial court nonetheless
SECTION 25. NON-‐PREJUDICIAL DISCLOSURE. – issued the writ of preliminary injunction which under the
circumstances should be denied.
25.1. The disclosure of information contained in the
application during the twelve (12) months preceding the For failure to determine first the validity of the patents
filing date or the priority date of the application shall not before aforesaid issuance of the writ, the trial court
prejudice the applicant on the ground of lack of novelty failed to satisfy the two requisites necessary if an
if such disclosure was made by: injunction is to issue, namely: the existence of the right
to be protected and the violation of said right.
(a) The inventor;
VARGAS V. F.M. YAPTICO & CO. (1919)
(b) A patent office and the information was
contained (a) in another application filed by the Refresher:
inventor and should not have been disclosed by Adjustable plow.
the office, or (b) in an application filed without
the knowledge or consent of the inventor by a Court decision:
third party which obtained the information When a patent is sought to be enforced, "the question
directly or indirectly from the inventor; or of invention, novelty, or prior use, and each of them, are
open to judicial examination." The burden of proof to
(c) A third party which obtained the substantiate a charge of infringement is with the plaintiff.
information directly or indirectly from the Where, however, the plaintiff introduces the patent in
inventor. evidence, if it is in due form, it affords a prima facie
presumption of its correctness and validity. The decision
of the Commissioner of Patents in granting the patent is
25.2. For the purposes of Subsection 25.1, "inventor" also
always presumed to be correct. The burden then shifts
means any person who, at the filing date of application,
to the defendant to overcome by competent evidence
had the right to the patent.
this legal presumption. With all due respect, therefore,
for the critical and expert examination of the invention
by the United States Patent Office, the question of the
validity of the patent is one for judicial determination,
o 129
Katrina Michelle Mancao
and
since
a
patent
has
been
submitted,
the
exact
came
into
existence.
It
may
also
be
noted
that
Adrian
de
question
is
whether
the
defendant
has
assumed
the
Icsiar
applied
for
a
patent
on
an
invention
which
resulted
burden
of
proof
as
to
anyone
of
his
defenses.
in
the
rejection
by
the
United
States
Patent
Office
of
the
plaintiffs'
original
application
for
a
patent
on
the
so
On
the
facts,
we
think
the
testimony
shows
such
a
public
called
"spindle"
or
conical
drum
which
was
then
in
actual
use
of
the
Vargas
plow
as
to
render
the
patent
invalid.
use
in
the
Dringman
and
Icsiar
hemp
stripping
machines.
For
more
than
two
years
before
the
application
for
the
original
letters
patent,
or
before
July
22,
1908,
there
was,
b. Inventiveness
by
the
consent
and
allowance
of
Vargas,
a
public
use
of
the
invention
covered
by
them.
SECTION
26.
INVENTIVE
STEP.
–
26.1.
An
invention
involves
an
inventive
step
if,
having
VARGAS
V.
CHUA
(1933)
regard
to
prior
art,
it
is
not
obvious
to
a
person
skilled
in
Court
decision:
the
art
at
the
time
of
the
filing
date
or
priority
date
of
We
have
carefully
examined
all
the
plows
presented
as
the
application
claiming
the
invention.
exhibits
as
well
as
the
designs
of
those
covered
by
the
patent,
and
we
are
convinced
that
no
substantial
26.2.
In
the
case
of
drugs
and
medicines,
there
is
no
difference
exists
between
the
plow,
Exhibit
F,
and
the
plow,
Exhibit
3-‐Chua
which
was
originally
patented
by
inventive
step
if
the
invention
results
from
the
mere
the
appellee,
Vargas.
The
only
difference
noted
by
us
is
discovery
of
a
new
form
or
new
property
of
a
known
the
suppression
of
the
bolt
and
the
three
holes
on
the
substance
which
does
not
result
in
the
enhancement
of
metal
strap
attached
to
the
handle
bar.
These
holes
and
the
known
efficacy
of
that
substance,
or
the
mere
bolt
with
its
nut
were
suppressed
in
Exhibit
F
in
which
discovery
of
any
new
property
or
new
use
for
a
known
the
beam
is
movable
as
in
the
original
plow.
The
substance,
or
the
mere
use
of
a
known
process
unless
members
of
this
court,
with
the
plows
in
view,
arrived
at
such
known
process
results
in
a
new
product
that
the
conclusion
that
not
only
is
there
no
fundamental
employs
at
least
one
new
reactant.
difference
between
the
two
plows
but
no
improvement
whatever
has
been
made
on
the
latest
model,
for
the
AGUAS
V.
DE
LEON
(1982)
same
working
and
movement
of
the
beam
existed
in
the
Court
decision:
original
model
with
the
advantage,
perhaps,
that
its
The
records
disclose
that
de
Leon's
process
is
an
graduation
could
be
carried
through
with
more
certainty
improvement
of
the
old
process
of
tile
making.
The
tiles
by
the
use
of
the
bolt
which
as
has
already
been
stated,
produced
from
de
Leon's
process
are
suitable
for
was
adjustable
and
movable.
construction
and
ornamentation,
which
previously
had
not
been
achieved
by
tiles
made
out
of
the
old
process
In
view
of
the
foregoing,
we
are
firmly
convinced
that
of
tile
making.
De
Leon's
invention
has
therefore
the
appellee
is
not
entitled
to
the
protection
he
seeks
for
brought
about
a
new
and
useful
kind
of
tile.
The
old
type
the
simple
reason
that
his
plow,
Exhibit
F,
does
not
of
tiles
were
usually
intended
for
floors
although
there
is
constitute
an
invention
in
the
legal
sense,
and
because,
nothing
to
prevent
one
from
using
them
for
walling
according
to
the
evidence,
the
same
type
of
plows
had
purposes.
These
tiles
are
neither
artistic
nor
ornamental.
been
manufactured
in
this
country
and
had
been
in
use
They
are
heavy
and
massive.
in
many
parts
of
the
Philippine
Archipelago,
especially
in
the
Province
of
Iloilo,
long
before
he
obtained
his
last
The
respondent's
improvement
is
indeed
inventive
and
patent.
goes
beyond
the
exercise
of
mechanical
skill.
He
has
introduced
a
new
kind
of
tile
for
a
new
purpose.
He
has
FRANK
V.
KOSUYAMA
(1933)
improved
the
old
method
of
making
tiles
and
pre-‐cast
Court
decision:
articles
which
were
not
satisfactory
because
of
an
We
agree
with
the
trial
court
that,
strictly
speaking,
the
intolerable
number
of
breakages,
especially
if
deep
hemp
stripping
machine
of
the
plaintiffs
does
not
engravings
are
made
on
the
tile.
He
has
overcome
the
constitute
an
invention
on
the
ground
that
it
lacks
the
problem
of
producing
decorative
tiles
with
deep
elements
of
novelty,
originality
and
precedence.
In
fact,
engraving,
but
with
sufficient
durability.
Durability
before
the
plaintiffs
herein
obtained
their
patent,
they
inspite
of
the
thinness
and
lightness
of
the
tile,
is
assured,
themselves
had
already
publicly
used
the
same
kind
of
provided
that
a
certain
critical
depth
is
maintained
in
machine
for
some
months,
at
least,
and,
various
other
relation
to
the
dimensions
of
the
tile.
machines,
having
in
general,
the
same
characteristics
and
important
parts
as
that
of
the
said
plaintiffs,
were
MANZANO
V.
CA
(1997),
SUPRA
known
in
the
Province
of
Davao.
Machines
known
as
Court
decision:
Molo,
Riesgo,
Crumb,
Icsiar,
Browne
and
McFie
were
The
element
of
novelty
is
an
essential
requisite
of
the
already
known
in
that
locality
and
used
by
the
owners
of
patentability
of
an
invention
or
discovery.
If
a
device
or
hemp
plantations
before
the
machine
of
the
plaintiffs
process
has
been
known
or
used
by
others
prior
to
its
130 z
Intellectual Property Law
invention or discovery by the applicant, an application
for a patent therefor should be denied; and if the 113.2. Industrial designs dictated essentially by technical
application has been granted, the court, in a judicial or functional considerations to obtain a technical result
proceeding in which the validity of the patent is drawn in or those that are contrary to public order, health or
question, will hold it void and ineffective. It has been morals shall not be protected.
repeatedly held that an invention must possess the
essential elements of novelty, originality and precedence, 4. Lay-‐out designs –
and for the patentee to be entitled to the protection the
invention must be new to the world. Topographies of
Integrated Circuits
In issuing Letters Patent No. UM-‐4609 to Melecia
Madolaria for an "LPG Burner" on 22 July 1981, the REPUBLIC ACT 9150 -‐ AN ACT PROVIDING FOR THE
Philippine Patent Office found her invention novel and
PROTECTION OF LAYOUT-‐DESIGNS (TOPOGRAPHIES) OF
patentable. The issuance of such patent creates a
presumption which yields only to clear and cogent INTEGRATED CIRCUITS, AMENDING FOR THE PURPOSE OF
evidence that the patentee was the original and first CERTAIN SECTIONS OF RA 8293, OTHERWISE KNOWN AS
inventor. The burden of proving want of novelty is on THE IPC
him who avers it and the burden is a heavy one which is
SECTION 1. Sections 112,113,114,116,117,118,119 and 120
met only by clear and satisfactory proof which
overcomes every reasonable doubt. under Chapter XIII of R. A. No. 8293 are hereby amended
to read as follows:
c. Industrial
CHAPTER XIII
application INDUSTRIAL DESIGN AND LAYOUT-‐DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS
SECTION 27. INDUSTRIAL APPLICABILITY. –
An invention that can be produced and used in any SEC. 112. DEFINITION OF TERMS:
industry shall be industrially applicable.
1. An Industrial Design is any composition of
2. Utility model lines or colors or any three-‐ dimensional form,
whether or not associated with lines or colors:
Provided, That such composition or form gives
SECTION 109. SPECIAL PROVISIONS RELATING TO UTILITY
a special appearance to and can serve as
MODELS. – pattern for an industrial product or handicraft;
109.1.
(a) An invention qualifies for registration as a 2. Integrated Circuit means a product, in its
utility model if it is new and industrially final form, or an intermediate form, in which
applicable. the elements, at least one of which is an active
element, and some or all of the
(b) Section 21, "Patentable Inventions", shall interconnections are integrally formed in
apply except the reference to inventive step as and/or on a piece of material, and which is
a condition of protection. intended to perform an electronic function;
and
3. Industrial designs
3. Layout-‐Design is synonymous with
'Topography' and means the three-‐dimensional
SECTION 112. DEFINITION OF INDUSTRIAL DESIGN. –
disposition, however expressed, of the
An industrial design is any composition of lines or colors elements, at least one of which is an active
or any three-‐dimensional form, whether or not element, and of some or all of the
associated-‐with lines or colors: Provided, That such interconnections of an integrated circuit, or
composition or form gives a special appearance to and such a three-‐dimensional disposition prepared
can serve as pattern for an industrial product or for an integrated circuit intended for
handicraft. manufacture."
SECTION 113. SUBSTANTIVE CONDITIONS FOR PROTECTION. SEC. 113. SUBSTANTIVE CONDITIONS FOR PROTECTION. –
– 113.1. Only industrial designs that are new or ornamental
113.1. Only industrial designs that are new or original shall shall benefit from protection under this Act.
benefit from protection under this Act.
o 131
Katrina Michelle Mancao
113.2.
Industrial
designs
dictated
essentially
by
technical
design
or
the
layout-‐design
or
a
pictorial
representation
or
functional
considerations
to
obtain
a
technical
result
thereof.
or
those
that
are
contrary
to
public
order,
health
or
morals
shall
not
be
protected.
116.2.
If
the
application
does
not
meet
these
requirements,
the
filing
date
should
be
that
date
when
113.3.
Only
layout-‐designs
of
integrated
circuits
that
are
all
the
elements
specified
in
Sec.
114
are
filed
or
the
original
shall
benefit
from
protection
under
this
Act.
A
mistakes
corrected.
Otherwise,
if
the
requirements
are
layout-‐design
shall
be
considered
original
if
it
is
the
result
not
complied
within
the
prescribed
period,
the
of
its
creator's
own
intellectual
effort
and
is
not
application
shall
be
considered
withdrawn.
commonplace
among
creators
of
layout-‐designs
and
manufacturers
of
integrated
circuits
at
the
time
of
its
116.3
After
the
application
has
been
accorded
a
filing
creation.
date
and
the
required
fees
paid
on
time,
the
applicant
shall
comply
with
the
requirements
of
Sec.
114
within
the
113.4.
A
layout-‐design
consisting
of
a
combination
of
prescribed
period,
otherwise
the
application
shall
be
elements
and
interconnections
that
are
commonplace
considered
withdrawn.
shall
be
protected
only
if
the
combination,
taken
as
a
whole,
is
original.
116.4.
The
Office
shall
examine
whether
the
industrial
design
or
layout-‐design
complies
with
requirements
of
SEC.
114.
CONTENTS
OF
THE
APPLICATION.
–
Sec.
112
(Definitions)
and
Sec.
113
(Substantive
Conditions
114.1.
Every
application
for
registration
of
an
industrial
for
Protection).
design
or
layout-‐design
shall
contain:
SEC.
117.
REGISTRATION.
–
(a)
A
request
for
registration
of
the
industrial
117.1.
Where
the
Office
finds
that
the
conditions
referred
design
or
layout-‐design;
to
in
Sec.
113
are
fulfilled,
it
shall
order
that
registration
be
effected
in
the
industrial
design
or
layout-‐design
(b)
Information
identifying
the
applicant;
register
and
cause
the
issuance
of
an
industrial
design
or
layout-‐design
certificate
of
registration;
otherwise,
it
(c)
An
indication
of
the
kind
of
article
of
shall
refuse
the
application.
manufacture
or
handicraft
to
which
the
industrial
design
or
layout-‐design
shall
be
117.2.
The
form
and
contents
of
an
industrial
design
or
applied:
layout-‐design
certificate
shall
be
established
by
the
Regulations:
Provided,
That
the
name
and
address
of
the
(d)
A
representation
of
the
article
of
creator
shall
be
mentioned
in
every
case.
manufacture
or
handicraft
by
way
of
drawings,
photographs
or
adequate
graphic
117.3.
Registration
shall
be
published
in
the
form
and
representation
of
the
industrial
design
or
of
within
the
period
fixed
by
the
Regulations.
the
layout-‐design
as
applied
to
the
article
of
manufacture
or
handicraft
which
clearly
and
117.4.
The
Office
shall
record
in
the
register
any
change
in
fully
discloses
those
features
for
which
the
identity
of
the
proprietor
of
the
industrial
design
or
protection
is
claimed;
and
layout-‐design
or
his
representative,
if
proof
thereof
is
furnished
to
it.
A
fee
shall
be
paid,
with
the
request
to
(e)
The
name
and
address
of
the
creator,
or
record
the
change
in
the
identity
of
the
proprietor.
If
the
where
the
applicant
is
not
the
creator,
a
fee
is
not
paid,
the
request
shall
be
deemed
not
to
have
statement
indicating
the
origin
of
the
right
to
been
filed.
In
such
case,
the
former
proprietor
and
the
the
industrial
design
or
layout-‐design
former
representative
shall
remain
subject
to
the
rights
registration.
and
obligations
as
provided
in
this
Act.
114.2.
The
application
may
be
accompanied
by
a
117.5.
Anyone
may
inspect
the
Register
and
the
files
of
specimen
of
the
article
embodying
the
industrial
design
registered
industrial
designs
or
layout-‐designs
including
or
layout-‐design
and
shall
be
subject
to
the
payment
of
files
of
cancellation
proceedings.
the
prescribed
fee.
SEC.
118.
THE
TERM
OF
INDUSTRIAL
DESIGN
OR
LAYOUT-‐DESIGN
SEC.
116.
EXAMINATION.
–
REGISTRATION.
–
116.1.
The
Office
shall
accord
as
the
filing
date
the
date
of
118.1.
The
registration
of
an
industrial
design
shall
be
for
receipt
of
the
application
containing
indications
allowing
a
period
of
five
(5)
years
from
the
filing
date
of
the
the
identity
of
the
applicant
to
be
established
and
a
application.
representation
of
the
article
embodying
the
industrial
132 z
Intellectual Property Law
118.2.
The
registration
of
an
industrial
design
may
be
filing
date
of
the
corresponding
foreign
renewed
for
not
more
than
two
(2)
consecutive
periods
application;
of
five
(5)
years
each,
by
paying
the
renewal
fee.
SECTION
33
–
Appointment
of
Agent
or
118.3.
The
renewal
fee
shall
be
paid
within
twelve
(12)
Representative;
months
preceding
the
expiration
of
the
period
of
registration.
However,
a
grace
period
of
six
(6)
months
SECTION
51
–
Refusal
of
the
Application;
shall
be
granted
for
payment
of
the
fees
after
such
expiration,
upon
payment
of
a
surcharge.
SECTIONS
56
to
60
–
Surrender,
Correction
of
and
Changes
in
Patent;
118.4.
The
Regulations
shall
fix
the
amount
of
renewal
fee,
the
surcharge
and
other
requirements
regarding
the
CHAPTER
VII
–
Remedies
of
a
Person
with
a
recording
of
renewals
of
registration.
Right
to
Patent;
118.5.
Registration
of
a
layout-‐design
shall
be
valid
for
a
Chapter
VIII
–
Rights
of
Patentees
and
period
often
(10)
years,
without
renewal,
and
such
Infringement
of
Patents;
and
validity
to
be
counted
from
the
date
of
commencement
of
the
protection
accorded
to
the
layout-‐design.
The
Chapter
XI
–
Assignment
and
Transmission
of
protection
of
a
layout-‐design
under
this
Act
shall
Rights.
commence:
119.2.
If
the
essential
elements
of
an
industrial
design
a)
on
the
date
of
the
first
commercial
which
is
the
subject
of
an
application
have
been
exploitation,
anywhere
in
the
world,
of
the
obtained
from
the
creation
of
another
person
without
layout-‐design
by
or
with
the
consent
of
the
his
consent,
protection
under
this
Chapter
cannot
be
right
holder:
Provided,
That
an
application
for
invoked
against
the
injured
party.
registration
is
filed
with
the
Intellectual
Property
Office
within
two
(2)
years
from
such
119.3.
The
following
provisions
relating
to
patents
shall
date
of
first
commercial
exploitation;
or
apply
mutatis
mutandis
to
a
layout-‐design
of
integrated
circuits
registration:
b)
on
the
filing
date
accorded
to
the
application
for
the
registration
of
the
layout-‐
SECTION
28
–
Right
to
a
Patent;
design
if
the
layout-‐design
has
not
been
previously
exploited
commercially
anywhere
in
SECTION
29
–
First
to
File
Rule;
the
world.
SECTION
30
–
Inventions
Created
Pursuant
to
a
SEC.
119.
APPLICATION
OF
OTHER
SECTIONS
AND
CHAPTERS.
–
Commission;
119.1.
The
following
provisions
relating
to
patents
shall
apply
mutatis
mutandis
to
an
industrial
design
SECTION
33
–
Appointment
of
Agent
or
registration:
Representative;
SECTION
21
–
Novelty;
SECTION
56
–
Surrender
of
Patent;
SECTION
24
–
Prior
art:
Provided,
That
the
SECTION
57
–
Correction
of
Mistakes
of
the
disclosure
is
contained
in
printed
documents
or
Office;
in
any
tangible
form;
SECTION
58
–
Correction
of
Mistakes
in
the
SECTION
25
–
Non-‐prejudicial
Disclosure;
Application;
SECTION
28
–
Right
to
a
Patent;
SECTION
59
–
Changes
in
Patents;
SECTION
29
–
First
to
File
Rule;
SECTION
60
–
Form
and
Publication
of
Amendment;
SECTION
30
–
Inventions
Created
Pursuant
to
a
Commission;
Chapter
VII
–
Remedies
of
a
Person
with
a
Right
to
Patent;
SECTION
31
-‐
Right
of
Priority:
Provided,
That
the
application
for
industrial
design
shall
be
Chapter
VIII
–
Rights
of
Patentees
and
filed
within
six
(6)
months
from
the
earliest
Infringement
of
Patents:
Provided,
That
the
o 133
Katrina Michelle Mancao
layout-‐design
rights
and
limitation
of
layout-‐ may
perform
any
of
the
said
acts
only
with
design
rights
provided
hereunder
shall
govern;
respect
to
the
stock
on
hand
or
ordered
before
such
time
and
shall
be
liable
to
pay
to
the
right
Chapter
X
–
Compulsory
Licensing;
holder
a
sum
equivalent
to
at
least
5%
of
net
sales
or
such
other
reasonable
royalty
as
would
Chapter
XI
–
Assignment
and
Transmission
of
be
payable
under
a
freely
negotiated
license
in
Rights.
respect
of
such
layout-‐design;
or
119.4.
Rights
Conferred
to
the
Owner
of
a
Layout-‐Design
(5)
Where
the
act
is
performed
in
respect
of
an
Registration.
–
The
owner
of
a
layout-‐design
registration
identical
layout-‐design
which
is
original
and
has
shall
enjoy
the
following
rights:
been
created
independently
by
a
third
party.
(1)
to
reproduce,
whether
by
incorporation
in
SEC.
120.
CANCELLATION
OF
DESIGN
REGISTRATION.
–
an
integrated
circuit
or
otherwise,
the
120.1.
At
any
time
during
the
term
of
the
industrial
design
registered
layout-‐design
in
its
entirety
or
any
registration,
any
person
upon
payment
of
the
required
part
thereof,
except
the
act
of
reproducing
any
fee,
may
petition
the
Director
of
Legal
Affairs
to
cancel
part
that
does
not
comply
with
the
the
industrial
design
on
any
of
the
following
grounds:
requirement
of
originality;
and
(a)
If
the
subject
matter
of
the
industrial
design
(2)
to
sell
or
otherwise
distribute
for
is
not
registerable
within
the
terms
of
Sections
commercial
purposes
the
registered
layout-‐ 112
and
113;
design,
an
article
or
an
integrated
circuit
in
which
the
registered
layout-‐design
is
(b)
If
the
subject
matter
is
not
new;
or
incorporated.
(c)
If
the
subject
matter
of
the
industrial
design
119.5.
Limitations
of
Layout
Rights.
-‐
The
owner
of
a
extends
beyond
the
content
of
the
application
layout
design
has
no
right
to
prevent
third
parties
from
as
originally
filed.
reproducing
selling
or
otherwise
distributing
for
commercial
purposes
the
registered
layout-‐design
in
the
120.2.
Where
the
grounds
for
cancellation
relate
to
a
part
following
circumstances:
of
the
industrial
design,
cancellation
may
be
effected
to
such
extent
only.
The
restriction
may
be
effected
in
the
(1)
Reproduction
of
the
registered
layout-‐ form
of
an
alteration
of
the
effected
features
of
the
design
for
private
purposes
or
for
the
sole
design.
purpose
of
evaluation,
analysis,
research
or
teaching;
120.3.
Grounds
for
Cancellation
of
Layout-‐Design
of
Integrated
Circuits.
-‐
Any
interested
person
may
petition
(2)
Where
the
act
is
performed
in
respect
of
a
that
the
registration
of
a
layout-‐design
be
cancelled
on
layout-‐design
created
on
the
basis
of
such
the
ground
that:
analysis
or
evaluation
and
which
is
itself
original
in
the
meaning
as
provided
herein;
(i)
the
layout-‐design
is
not
protectable
under
this
Act;
(3)
Where
the
act
is
performed
in
respect
of
a
registered
layout-‐design,
or
in
respect
of
an
(ii)
the
right
holder
is
not
entitled
to
protection
integrated
circuit
in
which
such
a
layout-‐design
under
this
Act;
or
is
incorporated,
that
has
been
put
on
the
market
by
or
with
the
consent
of
the
right
(iii)
where
the
application
for
registration
of
holder;
the
layout-‐design,
was
not
filed
within
two
(2)
years
from
its
first
commercial
exploitation
(4)
In
respect
of
an
integrated
circuit
where
the
anywhere
in
the
world.
person
performing
or
ordering
such
an
act
did
not
know
and
had
no
reasonable
ground
to
Where
the
grounds
for
cancellation
are
established
with
know
when
acquiring
the
integrated
circuit
or
respect
only
to
a
part
of
the
layout-‐design,
only
the
the
article
incorporating
such
an
integrated
corresponding
part
of
the
registration
shall
be
cancelled.
circuit,
that
it
incorporated
an
unlawfully
reproduced
layout-‐design:
Provided,
however,
Any
cancelled
layout-‐design
registration
or
part
thereof,
That
after
the
time
that
such
person
has
shall
be
regarded
as
null
and
void
from
the
beginning
received
sufficient
notice
that
the
layout-‐ and
may
be
expunged
from
the
records
of
the
design
was
unlawfully
reproduced,
that
person
Intellectual
Property
Office.
Reference
to
all
cancelled
134 z
Intellectual Property Law
layout-‐design
registration
shall
be
published
in
the
IPO
22.2.
Schemes,
rules
and
methods
of
performing
mental
Gazette.
acts,
playing
games
or
doing
business,
and
programs
for
computers;
SEC.
2.
IMPLEMENTING
RULES
AND
REGULATIONS.
–
The
Intellectual
Property
Office
may
issue
Regulations
22.3.
Methods
for
treatment
of
the
human
or
animal
prescribing
details
for
the
implementation
of
this
law.
body
by
surgery
or
therapy
and
diagnostic
methods
The
Regulations
may,
in
particular,
provide
for
the
practiced
on
the
human
or
animal
body.
This
provision
payment
of
fees
in
connection
with
applications
for
the
shall
not
apply
to
products
and
composition
for
use
in
registration
of
layout-‐designs
of
integrated
circuits
and
any
of
these
methods;
matters
related
thereto,
including
Administrative
Instructions
relating
to
the
procedures
and
other
22.4.
Plant
varieties
or
animal
breeds
or
essentially
functions
of
the
responsible
unit
duly
designated
by
the
biological
process
for
the
production
of
plants
or
animals.
Director
General.
This
provision
shall
not
apply
to
micro-‐organisms
and
non-‐biological
and
microbiological
processes.
SEC.
3.
APPLICABILITY.
–
The
provisions
of
this
Act
shall
apply
to
layout-‐designs
of
Provisions
under
this
subsection
shall
not
preclude
integrated
circuits
that
were
commercially
exploited
Congress
to
consider
the
enactment
of
a
law
providing
anywhere
in
the
world
from
and
after
January
1998
sui
generis
protection
of
plant
varieties
and
animal
provided
they
meet
the
conditions
for
protection
under
breeds
and
a
system
of
community
intellectual
rights
this
Act.
protection:
SEC.
4.
REPEALING
CLAUSE.
–
22.5.
Aesthetic
creations;
and
All
acts
and
parts
of
acts
inconsistent
herewith
are
hereby
repealed
or
amended
accordingly.
22.6.
Anything
which
is
contrary
to
public
order
or
morality.
SEC.
5.
SEPARABILITY
CLAUSE.
–
If
any
provision
of
this
Act
or
the
application
of
such
UNDER
RA
165
(OLD
PATENT
LAW):
provision
to
any
circumstance
is
held
invalid,
the
SECTION
8.
INVENTIONS
NOT
PATENTABLE.
–
remainder
of
this
Act
shall
not
be
affected
thereby.
An
invention
shall
not
be
patentable
if
it
is
contrary
to
SEC.
6.
EFFECTIVITY.
–
public
order
or
morals,
or
to
public
health
or
welfare,
or
if
it
constitutes
a
mere
idea,
scientific
principle
or
This
Act
shall
take
effect
fifteen
(15)
days
after
its
abstract
theorem
not
embodied
in
an
invention
as
publication
in
two
(2)
newspapers
of
general
circulation.
specified
in
section
seven
hereof,
or
any
process
not
directed
to
the
making
or
improving
of
a
commercial
E. What
are
not
patentable?
product.
SEC.
22.
NON-‐PATENTABLE
INVENTIONS.
–
SECTION
9.
INVENTION
NOT
CONSIDERED
NEW
OR
PATENTABLE.
–
The
following
shall
be
excluded
from
patent
protection:
An
invention
shall
not
be
considered
new
or
capable
of
being
patented
if
it
was
known
or
used
by
others
in
the
22.1.
Discoveries,
scientific
theories
and
mathematical
Philippines
before
the
invention
thereof
by
the
inventor
methods,
and
in
the
case
of
drugs
and
medicines,
the
named
in
an
application
for
patent
for
the
invention;
or
if
mere
discovery
of
a
new
form
or
new
property
of
a
it
was
patented
or
described
in
any
printed
publication
in
known
substance
which
does
not
result
in
the
the
Philippines
or
any
foreign
country
more
than
one
enhancement
of
the
known
efficacy
of
that
substance,
year
before
the
application
for
a
patent
therefor;
or
if
it
or
the
mere
discovery
of
any
new
property
or
new
use
had
been
in
public
use
or
on
sale
in
the
Philippines
for
for
a
known
substance,
or
the
mere
use
of
a
known
more
than
one
year
before
the
application
for
a
patent
process
unless
such
known
process
results
in
a
new
therefor;
or
if
it
is
the
subject
matter
of
a
validly
issued
product
that
employs
at
least
one
new
reactant.
patent
in
the
Philippines
granted
on
an
application
filed
before
the
filing
of
the
application
for
patent
therefor.
For
the
purpose
of
this
clause,
salts,
esters,
ethers,
polymorphs,
metabolites,
pure
form,
particle
size,
SECTION
74.
PENALTY
FOR
FALSE
MARKING.
–
isomers,
mixtures
of
isomers,
complexes,
combinations,
Any
person
who
falsely
represents
or
indicates
that
any
and
other
derivatives
of
a
known
substance
shall
be
device,
article
or
product
made
or
sold
by
him
is
considered
to
be
the
same
substance,
unless
they
differ
patented,
or
is
the
subject
of
a
registered
design,
by
significantly
in
properties
with
regard
to
efficacy;
making
or
having
on
the
device,
article
or
product,
or
on
their
containers
or
packages,
or
using
in
advertising
or
displays
used
in
connection
with
them,
or
with
any
o 135
Katrina Michelle Mancao
process,
words
expressing
or
implying
that
the
device,
property
which
is
possessed
by
no
naturally
occurring
article,
product
or
process
is
patented
or
registered,
bacteria.
A
patent
examiner's
rejection
of
the
patent
shall
be
subject
to
a
fine
of
not
less
than
one
hundred
application's
claims
for
the
new
bacteria
was
affirmed
by
pesos
nor
more
than
one
thousand
pesos,
or
the
Patent
Office
Board
of
Appeals
on
the
ground
that
imprisonment
for
not
less
than
one
month
nor
more
living
things
are
not
patentable
subject
matter
under
§
than
one
year,
or
both,
in
the
discretion
of
the
court.
101.
The
Court
of
Customs
and
Patent
Appeals
reversed,
Actions
hereunder
shall
prescribe
in
two
years.
concluding
that
the
fact
that
micro-‐organisms
are
alive
is
without
legal
significance
for
purposes
of
the
patent
law.
UNDER
THE
TRIPS
AGREEMENT:
Court
decision:
ARTICLE
27,
PATENTABLE
SUBJECT
MATTER.
A
live,
human-‐made
micro-‐organism
is
patentable
subject
matter
under
§
101.
Respondent's
micro-‐
organism
constitutes
a
"manufacture"
or
"composition
1.
Subject
to
the
provisions
of
paragraphs
2
and
3,
of
matter"
within
that
statute.
patents
shall
be
available
for
any
inventions,
whether
products
or
processes,
in
all
fields
of
technology,
In
choosing
such
expansive
terms
as
"manufacture"
and
provided
that
they
are
new,
involve
an
inventive
step
"composition
of
matter,"
modified
by
the
and
are
capable
of
industrial
application.
(5)
Subject
to
comprehensive
"any,"
Congress
contemplated
that
the
paragraph
4
of
Article
65,
paragraph
8
of
Article
70
and
patent
laws
should
be
given
wide
scope,
and
the
paragraph
3
of
this
Article,
patents
shall
be
available
and
relevant
legislative
history
also
supports
a
broad
patent
rights
enjoyable
without
discrimination
as
to
the
construction.
While
laws
of
nature,
physical
phenomena,
place
of
invention,
the
field
of
technology
and
whether
and
abstract
ideas
are
not
patentable,
respondent's
claim
products
are
imported
or
locally
produced.
is
not
to
a
hitherto
unknown
natural
phenomenon,
but
to
a
non-‐naturally
occurring
manufacture
or
composition
of
2.
Members
may
exclude
from
patentability
inventions,
matter
-‐-‐
a
product
of
human
ingenuity
"having
a
the
prevention
within
their
territory
of
the
commercial
distinctive
name,
character
and
use."
exploitation
of
which
is
necessary
to
protect
ordre
public
or
morality,
including
to
protect
human,
animal
or
plant
The
passage
of
the
1930
Plant
Patent
Act,
which
life
or
health
or
to
avoid
serious
prejudice
to
the
afforded
patent
protection
to
certain
asexually
environment,
provided
that
such
exclusion
is
not
made
reproduced
plants,
and
the
1970
Plant
Variety
Protection
merely
because
the
exploitation
is
prohibited
by
their
Act,
which
authorized
protection
for
certain
sexually
law.
reproduced
plants
but
excluded
bacteria
from
its
protection,
does
not
evidence
congressional
3.
Members
may
also
exclude
from
patentability:
understanding
that
the
terms
"manufacture"
or
"composition
of
matter"
in
§
101
do
not
include
living
(a)
diagnostic,
therapeutic
and
surgical
things.
methods
for
the
treatment
of
humans
or
animals;
Nor
does
the
fact
that
genetic
technology
was
unforeseen
when
Congress
enacted
§
101
require
the
(b)
plants
and
animals
other
than
micro-‐
conclusion
that
micro-‐organisms
cannot
qualify
as
organisms,
and
essentially
biological
processes
patentable
subject
matter
until
Congress
expressly
for
the
production
of
plants
or
animals
other
authorizes
such
protection.
The
unambiguous
language
than
non-‐biological
and
microbiological
of
§
101
fairly
embraces
respondent's
invention.
processes.
However,
Members
shall
provide
Arguments
against
patentability
under
§
101,
based
on
for
the
protection
of
plant
varieties
either
by
potential
hazards
that
may
be
generated
by
genetic
patents
or
by
an
effective
sui
generis
system
or
research,
should
be
addressed
to
the
Congress
and
the
by
any
combination
thereof.
The
provisions
of
Executive,
not
to
the
Judiciary.
this
subparagraph
shall
be
reviewed
four
years
after
the
date
of
entry
into
force
of
the
WTO
Remarks:
US
Case
Agreement.
DIAMOND
V.
CHAKRABARTY,
447
US
303
(1980)
RA
9168
–
PHILIPPINE
PLANT
VARIETY
PROTECTION
ACT
OF
Refresher:
2002
Title
35
U.S.C.
§
101
provides
for
the
issuance
of
a
patent
SECTION
2.
STATEMENT
OF
POLICIES.
–
to
a
person
who
invents
or
discovers
"any"
new
and
useful
"manufacture"
or
"composition
of
matter."
a)
The
State
recognizes
that
an
effective
Respondent
filed
a
patent
application
relating
to
his
intellectual
property
system
in
general
and
the
invention
of
a
human-‐made,
genetically
engineered
development
of
new
plant
variety
in
particular
bacterium
capable
of
breaking
down
crude
oil,
a
is
vital
in
attaining
food
security
for
the
country.
136 z
Intellectual Property Law
To
this
end,
it
shall
protect
and
secure
the
(4)
years
or,
in
the
case
of
vines
or
tress,
more
exclusive
rights
of
breeders
with
respect
to
than
six
(6)
years
before
the
date
of
filing
of
an
their
new
plant
variety
particularly
when
application
for
Plant
Variety
Protection.
beneficial
to
the
people
for
such
periods
as
provided
for
in
this
Act.
However,
the
requirement
of
novelty
provided
for
in
this
Act
shall
not
apply
to
varieties
sold,
offered
for
sale
or
b)
The
use
of
intellectual
property
bears
a
disposed
of
to
others
for
a
period
of
five
(5)
years
before
socioeconomic
function.
To
this
end,
the
State
the
approval
of
this
Act.
Provided,
That
application
for
shall
promote
the
diffusion
of
technology
and
PVP
shall
be
filed
within
one
(1)
year
from
the
approval
information
for
the
promotion
of
national
of
this
act.
development
and
progress
for
the
common
good.
SECTION
6.
DISTINCTNESS.
-‐
A
variety
shall
be
deemed
distinct
if
it
is
clearly
distinguishable
from
any
commonly
c)
The
State
recognizes
the
indispensable
role
known
variety.
The
filing
of
an
application
for
the
of
the
private
sector,
encourages
the
granting
of
a
plant
variety
protection
or
for
the
entering
participation
of
private
enterprises
and
of
a
new
variety
in
an
official
register
of
variety
in
the
provides
incentives
to
needed
investments
in
Philippines
or
in
any
country,
shall
render
the
said
variety
the
development
of
new
plant
varieties.
a
matter
of
public
knowledge
from
the
date
of
the
said
application:
Provided,
That
the
application
leads
to
the
d)
The
State
recognizes
that
science
and
granting
of
a
Certificate
of
Plant
Variety
Protection
or
technology
are
essential
for
national
the
entering
of
the
said
other
variety
in
the
official
development
and
promotes
the
adaptation
of
register
of
variety
as
the
case
may
be.
technology
and
knowledge
from
all
sources
for
the
national
benefit.
The
State
also
recognizes
SECTION
7.
UNIFORMITY.
-‐
The
variety
shall
be
deemed
the
need
to
protect
and
secure
the
exclusive
uniform
if,
subject
to
the
variation
that
may
be
expected
rights
of
scientists
and
other
gifted
citizens
to
from
the
particular
features
of
its
propagation,
it
is
their
intellectual
property
and
creations.
sufficiently
uniform
in
its
relevant
characteristics.
e)
The
State,
while
recognizing
intellectual
SECTION
8.
STABILITY.
-‐
The
variety
shall
be
deemed
stable
if
property
rights
in
the
field
of
agriculture,
does
its
relevant
characteristics
remain
unchanged
after
so
in
a
manner
supportive
of
and
not
repeated
propagation
or,
in
the
case
of
a
particular
cycle
inconsistent
with
its
obligation
to
maintain
a
of
propagation,
at
the
end
of
each
such
cycle.
healthful
ecology
in
accord
with
the
rhythm
and
harmony
of
nature.
SECTION
17.
ENTITLEMENT.
-‐
Any
breeder,
with
respect
to
the
SECTION
4.
The
Certificate
of
Plant
Variety
Protection
shall
variety
developed,
may
apply
for
a
plant
variety
developed,
may
apply
for
a
plant
variety
protection
and
be
granted
for
varieties
that
are:
obtain
a
Certificate
of
Plant
Variety
Protection
upon
compliance
with
the
requirements
of
this
Act.
a)
New;
SECTION
18.
CO-‐OWNERSHIP
OF
THE
RIGHT.
-‐
If
two
(2)
or
more
b)
Distinct;
persons
contribute
to
the
development
of
a
new
plant
c)
Uniform;
and
variety,
all
of
them
shall
be
named
in
the
Certificate
of
Plant
Variety
Protection
and
shall
be
entitled
to
such
d)
Stable.
rights
as
agreed
upon
in
writing
or
in
the
absence
thereof,
the
rights
in
proportion
to
their
contribution
in
SECTION
5.
NEWNESS.
-‐
A
variety
shall
be
deemed
new
if
the
the
development
of
plant
variety.
propagating
or
harvested
material
of
the
variety
has
not
SECTION
19.
EMPLOYEE-‐EMPLOYER
RELATIONSHIP.
-‐
in
case
an
been
sold,
offered
for
sale
or
otherwise
disposed
of
to
others,
by
or
with
the
consent
of
the
breeder,
for
employee
develops
a
plant
variety
in
the
course
of
his
purposes
of
exploitation
of
the
variety;
employment
as
a
result
of
the
performance
of
his
regular
duty,
the
plant
variety
protection
shall
belong
to
the
a)
In
the
Philippines
for
more
than
one
(1)
year
employer,
unless
there
is
a
written
stipulation
to
the
before
the
date
of
filing
of
an
application
for
contrary.
plant
variety
protection;
or
SECTION
20.
FIRST
TO
FILE
RULE.
-‐
If
two
(2)
or
more
persons
b)
In
other
countries
or
territories
in
which
the
develop
a
new
plant
variety
separately
and
application
has
been
filed,
for
more
than
four
independently
of
each
other,
the
Certificate
of
Plant
o 137
Katrina Michelle Mancao
Variety
Protection
shall
belong
to
the
person
who
files
SECTION
36.
RIGHTS
OF
HOLDERS
OF
PLANT
VARIETY
PROTECTION.
-‐
the
application
first.
In
case
two
(2)
or
more
persons
file
In
respect
of
the
propagating
materials,
holders
of
a
an
application
for
the
same
plant
variety,
the
right
shall
Certificate
of
Plant
Variety
Protection
shall
have
the
right
be
granted
to
the
person
who
has
the
earliest
filing
date
to
authorize
any
of
the
following
acts:
or
priority
date.
a)
Production
or
reproduction;
SECTION
21.
PRIORITY
DATE.
-‐
Any
application
for
a
Certificate
of
Plant
Variety
Protection
previously
filed
by
a
breeder
b)
Conditioning
for
the
purpose
of
in
another
country,
which
by
treaty,
convention
or
law
propagation;
affords
similar
privileges
to
Filipino
citizens,
shall
be
considered
as
filed
locally
as
of
the
date
of
filing
of
the
c)
Offering
for
sale;
foreign
application:
Provided,
That:
d)
Selling
or
other
marketing;
a)
The
local
application
expressly
claims
priority;
e)
Exporting;
b)
It
is
filed
within
twelve
(12)
months
from
the
f)
Importing;
and
filing
date
of
the
earliest
foreign
application;
and
g)
Stocking
for
any
purpose
mentioned
above.
c)
The
applicant
submits,
within
six
(6)
months
SECTION
37.
THE
HOLDER
MAY
MAKE
HIS
AUTHORIZATION
SUBJECT
from
the
filing
of
the
local
application,
TO
CONDITIONS
AND
L IMITATIONS.
authenticated
copies
of
documents
which
constitute
the
foreign
application,
samples
or
SECTION
47.
WHAT
CONSTITUTES
INFRINGEMENT.
-‐
Except
as
other
evidence
showing
that
the
variety
which
otherwise
provided
in
this
Act,
any
person
who
without
is
being
applied
for
protection
is
the
same
being
entitled
to
do
so,
performs
the
following
acts:
variety
which
has
been
applied
for
protection
in
a
foreign
country.
a)
Sell
the
novel
variety,
or
offer
it
or
expose
it
for
sale,
deliver
it,
ship
it,
consign
it,
exchange
SECTION
22.
FOREIGN
NATIONALS.
-‐
For
purposes
of
this
Act,
a
it,
or
solicit
an
offer
to
buy
it,
or
any
other
person
shall
be
considered
a
national
of
a
foreign
transfer
of
title
or
possession
of
it;
or
country
if
he
is
a
citizen
of
such
country
according
to
its
laws,
a
natural
person
residing
therein,
or
is
a
legal
entity
b)
Import
the
novel
variety
into,
or
export
it
whose
office
is
registered
in
such
foreign
country.
from,
the
Philippines;
or
SECTION
23.
NATIONAL
TREATMENT.
-‐
Any
application
filed
c)
Sexually
multiply
the
novel
variety
as
a
step
locally
for
a
Certificate
of
Plant
Variety
Protection
in
marketing
(for
growing
purposes)
the
previously
granted
to
a
breeder
in
another
country,
variety;
or
which
by
treaty,
convention
or
law
affords
similar
privileges
to
Filipino
citizens,
shall
be
issued
a
Certificate
d)
Use
the
novel
variety
in
producing
(as
of
Plant
Variety
Protection
upon
payment
of
dues
and
distinguished
from
developing)
a
hybrid
or
compliance
to
all
the
provisions
of
this
Act.
This
Act
shall
different
variety
therefrom;
or
also
apply
to
the
nationals
of
foreign
countries
that
are
members
of
intergovernmental
organizations
or
party
to
e)
Use
seed
which
had
been
marked
any
multilateral
agreement
or
convention
concerning
"unauthorized
propagation
prohibited"
or
the
granting
of
intellectual
property
protection
to
plant
"unauthorized
seed
multiplication
prohibited"
varieties.
or
progeny
thereof
to
propagate
the
novel
variety;
or
SECTION
33.
TERM
OF
PROTECTION.
-‐
For
trees
and
vines,
the
period
of
protection
shall
be
twenty-‐five
(25)
years
from
f)
Dispense
the
novel
variety
to
another,
in
a
the
date
of
the
grant
of
the
Certificate
of
Plant
Variety
form
which
can
be
propagated,
without
notice
Protection
and
twenty
(20)
years
from
the
said
date
for
as
to
being
a
protected
variety
under
which
it
all
other
types
of
plants,
unless
declared
void
ab
initio
or
was
received;
or
cancelled
otherwise,
as
provided
under
Section
61
and
62,
respectively
of
this
Act.
g)
Fails
to
use
a
variety
denomination
the
use
of
which
is
obligatory
under
Section
15;
or
138 z
Intellectual Property Law
h)
Perform
any
of
the
foregoing
acts
even
in
taken
without
their
free
and
prior
informed
consent
or
in
instances
in
which
the
novel
variety
is
violation
of
their
laws,
traditions
and
customs.
multiplied
other
than
sexually,
except
in
pursuance
of
a
valid
Philippine
plant
patent;
or
SEC.
34.
RIGHT
TO
INDIGENOUS
KNOWLEDGE
SYSTEMS
AND
PRACTICES
AND
TO
D EVELOP
OWN
SCIENCES
AND
TECHNOLOGIES.-‐
i)
Instigate
or
actively
induce
performance
of
ICCs/IPs
are
entitled
to
the
recognition
of
the
full
any
foregoing
acts,
may
be
sued
by
the
holder,
ownership
and
control
and
protection
of
their
cultural
who
may
also
avail
of
all
such
relief
as
are
and
intellectual
rights.
They
shall
have
the
right
to
available
in
any
proceeding
involving
special
measures
to
control,
develop
and
protect
their
infringements
of
other
proprietary
rights.
sciences,
technologies
and
cultural
manifestations,
including
human
and
other
genetic
resources,
seeds,
SECTION
48.
WHERE
TO
COMMENCE
ACTION.
-‐
Any
holder
may
including
derivatives
of
these
resources,
traditional
petition
the
proper
regional
trial
court
for
infringement
medicines
and
health
practices,
vital
medicinal
plants,
of
his
plant
variety
protection
as
defined
in
this
Act.
animals
and
minerals,
indigenous
knowledge
systems
and
practices,
knowledge
of
the
properties
of
fauna
and
SECTION
49.
PRESUMPTION
OF
VALIDITY.
-‐
Certificate
of
Plant
flora,
oral
traditions,
literature,
designs,
and
visual
and
Variety
Protection
shall
be
presumed
valid
and
the
performing
arts.
burden
of
proof
of
their
invalidity
shall
rest
on
the
party
assailing
them.
F. Ownership
of
patent
SECTION
50.
DEFENSES
AGAINST
INFRINGEMENT
CHARGES.
-‐
The
SECTION
28.
RIGHT
TO
A
PATENT.
–
following
shall
be
valid
defenses
against
infringement
The
right
to
a
patent
belongs
to
the
inventor,
his
heirs,
charges:
or
assigns.
When
two
(2)
or
more
persons
have
jointly
made
an
invention,
the
right
to
a
patent
shall
belong
to
a)
Non-‐infringement;
them
jointly.
b)
The
plant
variety
does
not
possess
at
the
time
of
its
application
criterion
of
novelty
or
SECTION
29.
FIRST
TO
FILE
RULE.
–
distinctness;
If
two
(2)
or
more
persons
have
made
the
invention
separately
and
independently
of
each
other,
the
right
to
c)
The
alleged
infringement
was
performed
the
patent
shall
belong
to
the
person
who
filed
an
under
a
right
adverse
to
it,
prior
to
the
notice
application
for
such
invention,
or
where
two
or
more
of
infringement;
and/or
applications
are
filed
for
the
same
invention,
to
the
applicant
who
has
the
earliest
filing
date
or,
the
earliest
d)
Other
defenses
that
are
made
available
priority
date.
under
this
Act.
SECTION
30.
INVENTIONS
CREATED
PURSUANT
TO
A
SECTION
55.
PRESCRIPTION.
-‐
No
recovery
of
damages
for
any
COMMISSION.
–
infringement
case
shall
prosper
when
the
cause
of
action
30.1.
The
person
who
commissions
the
work
shall
own
has
reached
more
than
six
(6)
years
from
the
time
the
the
patent,
unless
otherwise
provided
in
the
contract.
alleged
infringement
case
was
committed.
30.2.
In
case
the
employee
made
the
invention
in
the
SECTION
56.
CRIMINAL
PENALTY.
-‐
Any
person
who
violates
course
of
his
employment
contract,
the
patent
shall
any
of
the
rights
of
the
holder
provided
for
in
this
Act
belong
to:
may
also
suffer
the
penalty
of
imprisonment
of
not
less
than
three
(3)
years
but
not
more
than
six
(6)
years
(a)
The
employee,
if
the
inventive
activity
is
not
and/or
a
fine
of
up
to
three
(3)
times
the
profit
derived
a
part
of
his
regular
duties
even
if
the
by
virtue
of
the
infringement
but
in
no
case
should
be
employee
uses
the
time,
facilities
and
materials
less
than
One
Hundred
Thousand
pesos
(P100,000.00).
of
the
employer.
RA
8371
–
INDIGENOUS
PEOPLES
RIGHTS
ACT
OF
1997
(b)
The
employer,
if
the
invention
is
the
result
SEC.
32.
COMMUNITY
INTELLECTUAL
RIGHTS.-‐
ICCs/IPs
have
the
of
the
performance
of
his
regularly-‐assigned
right
to
practice
and
revitalize
their
own
cultural
duties,
unless
there
is
an
agreement,
express
traditions
and
customs.
The
State
shall
preserve,
protect
or
implied,
to
the
contrary.
and
develop
the
past,
present
and
future
manifestations
of
their
cultures
as
well
as
the
right
to
the
restitution
of
cultural,
intellectual,
religious,
and
spiritual
property
o 139
Katrina Michelle Mancao
SECTION
67.
PATENT
APPLICATION
BY
PERSONS
NOT
G. Regular
application
for
patent
HAVING
THE
RIGHT
TO
A
PATENT.
.
–
67.1.
If
a
person
referred
to
in
Section
29
other
than
the
1. Who
may
apply?
applicant,
is
declared
by
final
court
order
or
decision
as
having
the
right
to
the
patent,
such
person
may,
within
SECTION
28.
RIGHT
TO
A
PATENT.
–
three
(3)
months
after
the
decision
has
become
final:
The
right
to
a
patent
belongs
to
the
inventor,
his
heirs,
or
assigns.
When
two
(2)
or
more
persons
have
jointly
(a)
Prosecute
the
application
as
his
own
made
an
invention,
the
right
to
a
patent
shall
belong
to
application
in
place
of
the
applicant;
them
jointly.
(b)
File
a
new
patent
application
in
respect
of
SECTION
29.
FIRST
TO
FILE
RULE.
–
the
same
invention;
If
two
(2)
or
more
persons
have
made
the
invention
separately
and
independently
of
each
other,
the
right
to
(c)
Request
that
the
application
be
refused;
or
the
patent
shall
belong
to
the
person
who
filed
an
application
for
such
invention,
or
where
two
or
more
(d)
Seek
cancellation
of
the
patent,
if
one
has
applications
are
filed
for
the
same
invention,
to
the
already
been
issued.
applicant
who
has
the
earliest
filing
date
or,
the
earliest
priority
date.
67.2.
The
provisions
of
Subsection
38.2
shall
apply
mutatis
mutandis
to
a
new
application
filed
under
SECTION
30.
INVENTIONS
CREATED
PURSUANT
TO
A
Subsection
67.
1(b).
COMMISSION.
–
SECTION
68.
REMEDIES
OF
THE
TRUE
AND
ACTUAL
30.1.
The
person
who
commissions
the
work
shall
own
the
patent,
unless
otherwise
provided
in
the
contract.
INVENTOR.
–
If
a
person,
who
was
deprived
of
the
patent
without
his
30.2.
In
case
the
employee
made
the
invention
in
the
consent
or
through
fraud
is
declared
by
final
court
order
course
of
his
employment
contract,
the
patent
shall
or
decision
to
be
the
true
and
actual
inventor,
the
court
belong
to:
shall
order
for
his
substitution
as
patentee,
or
at
the
option
of
the
true
inventor,
cancel
the
patent,
and
award
actual
and
other
damages
in
his
favor
if
warranted
by
the
(a)
The
employee,
if
the
inventive
activity
is
not
a
part
of
his
regular
duties
even
if
the
circumstances.
employee
uses
the
time,
facilities
and
materials
of
the
employer.
SECTION
69.
PUBLICATION
OF
THE
COURT
ORDER.
–
The
court
shall
furnish
the
Office
a
copy
of
the
order
or
(b)
The
employer,
if
the
invention
is
the
result
decision
referred
to
in
Sections
67
and
68,
which
shall
be
of
the
performance
of
his
regularly-‐assigned
published
in
the
IPO
Gazette
within
three
(3)
months
duties,
unless
there
is
an
agreement,
express
from
the
date
such
order
or
decision
became
final
and
or
implied,
to
the
contrary.
executory,
and
shall
be
recorded
in
the
register
of
the
Office.
SECTION
68.
REMEDIES
OF
THE
TRUE
AND
ACTUAL
SECTION
70.
TIME
TO
FILE
ACTION
IN
COURT.
–
INVENTOR.
–
If
a
person,
who
was
deprived
of
the
patent
without
his
The
actions
indicated
in
Sections
67
and
68
shall
be
filed
within
one
(1)
year
from
the
date
of
publication
made
in
consent
or
through
fraud
is
declared
by
final
court
order
or
decision
to
be
the
true
and
actual
inventor,
the
court
accordance
with
Sections
44
and
51,
respectively.
shall
order
for
his
substitution
as
patentee,
or
at
the
option
of
the
true
inventor,
cancel
the
patent,
and
award
SECTION
236.
PRESERVATION
OF
EXISTING
RIGHTS.
–
actual
and
other
damages
in
his
favor
if
warranted
by
the
Nothing
herein
shall
adversely
affect
the
rights
on
the
circumstances.
enforcement
of
rights
in
patents,
utility
models,
industrial
designs,
marks
and
works,
acquired
in
good
SECTION
3.
INTERNATIONAL
CONVENTIONS
AND
faith
prior
to
the
effective
date
of
this
Act.
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
140 z
Intellectual Property Law
party,
or
extends
reciprocal
rights
to
nationals
of
the
(c)
Drawings
necessary
for
the
understanding
Philippines
by
law,
shall
be
entitled
to
benefits
to
the
of
the
invention;
extent
necessary
to
give
effect
to
any
provision
of
such
convention,
treaty
or
reciprocal
law,
in
addition
to
the
(d)
One
or
more
claims;
and
rights
to
which
any
owner
of
an
intellectual
property
right
is
otherwise
entitled
by
this
Act.
(e)
An
abstract.
SECTION
231.
REVERSE
RECIPROCITY
OF
FOREIGN
LAWS.
–
32.2.
No
patent
may
be
granted
unless
the
application
Any
condition,
restriction,
limitation,
diminution,
identifies
the
inventor.
If
the
applicant
is
not
the
requirement,
penalty
or
any
similar
burden
imposed
by
inventor,
the
Office
may
require
him
to
submit
said
the
law
of
a
foreign
country
on
a
Philippine
national
authority.
seeking
protection
of
intellectual
property
rights
in
that
country,
shall
reciprocally
be
enforceable
upon
nationals
SECTION
33.
APPOINTMENT
OF
AGENT
OR
REPRESENTATIVE.
of
said
country,
within
Philippine
jurisdiction.
–
An
applicant
who
is
not
a
resident
of
the
Philippines
SECTION
235.
APPLICATIONS
PENDING
ON
EFFECTIVE
DATE
must
appoint
and
maintain
a
resident
agent
or
OF
ACT.
–
representative
in
the
Philippines
upon
whom
notice
or
235.1.
All
applications
for
patents
pending
in
the
Bureau
process
for
judicial
or
administrative
procedure
relating
of
Patents,
Trademarks
and
Technology
Transfer
shall
be
to
the
application
for
patent
or
the
patent
may
be
proceeded
with
and
patents
thereon
granted
in
served.
accordance
with
the
Acts
under
which
said
applications
were
filed,
and
said
Acts
are
hereby
continued
to
be
SECTION
34.
THE
REQUEST.
–
enforced,
to
this
extent
and
for
this
purpose
only,
The
request
shall
contain
a
petition
for
the
grant
of
the
notwithstanding
the
foregoing
general
repeal
thereof:
patent,
the
name
and
other
data
of
the
applicant,
the
Provided,
That
applications
for
utility
models
or
inventor
and
the
agent
and
the
title
of
the
invention.
industrial
designs
pending
at
the
effective
date
of
this
Act,
shall
be
proceeded
with
in
accordance
with
the
SECTION
35.
DISCLOSURE
AND
DESCRIPTION
OF
THE
provisions
of
this
Act,
unless
the
applicants
elect
to
INVENTION.
–
prosecute
said
applications
in
accordance
with
the
Acts
under
which
they
were
filed.
35.1.
D ISCLOSURE.
-‐
The
application
shall
disclose
the
invention
in
a
manner
sufficiently
clear
and
complete
for
235.2.
All
applications
for
registration
of
marks
or
trade
it
to
be
carried
out
by
a
person
skilled
in
the
art.
Where
the
application
concerns
a
microbiological
process
or
the
names
pending
in
the
Bureau
of
Patents,
Trademarks
product
thereof
and
involves
the
use
of
a
micro-‐
and
Technology
Transfer
at
the
effective
date
of
this
Act
organism
which
cannot
be
sufficiently
disclosed
in
the
may
be
amended,
if
practicable
to
bring
them
under
the
application
in
such
a
way
as
to
enable
the
invention
to
be
provisions
of
this
Act.
The
prosecution
of
such
carried
out
by
a
person
skilled
in
the
art,
and
such
applications
so
amended
and
the
grant
of
registrations
material
is
not
available
to
the
public,
the
application
thereon
shall
be
proceeded
with
in
accordance
with
the
provisions
of
this
Act.
If
such
amendments
are
not
made,
shall
be
supplemented
by
a
deposit
of
such
material
with
an
international
depository
institution.
the
prosecution
of
said
applications
shall
be
proceeded
with
and
registrations
thereon
granted
in
accordance
with
the
Acts
under
which
said
applications
were
filed,
35.2.
DESCRIPTION.
-‐
The
Regulations
shall
prescribe
the
and
said
Acts
are
hereby
continued
in
force
to
this
contents
of
the
description
and
the
order
of
extent
for
this
purpose
only,
notwithstanding
the
presentation.
foregoing
general
repeal
thereof.
SECTION
36.
THE
CLAIMS.
–
2. Application
36.1.
The
application
shall
contain
one
(1)
or
more
claims
which
shall
define
the
matter
for
which
protection
is
SECTION
32.
THE
APPLICATION.
–
sought.
Each
claim
shall
be
clear
and
concise,
and
shall
be
supported
by
the
description.
32.1.
The
patent
application
shall
be
in
Filipino
or
English
and
shall
contain
the
following:
36.2.
The
Regulations
shall
prescribe
the
manner
of
the
(a)
A
request
for
the
grant
of
a
patent;
presentation
of
claims.
(b)
A
description
of
the
invention;
SECTION
37.
THE
ABSTRACT.
–
The
abstract
shall
consist
of
a
concise
summary
of
the
disclosure
of
the
invention
as
contained
in
the
o 141
Katrina Michelle Mancao
description,
claims
and
drawings
in
preferably
not
more
SECTION
108.
APPLICABILITY
OF
PROVISIONS
RELATING
TO
than
one
hundred
fifty
(150)
words.
It
must
be
drafted
in
PATENTS.
–
a
way
which
allows
the
clear
understanding
of
the
technical
problem,
the
gist
of
the
solution
of
that
108.1.
Subject
to
Section
109,
the
provisions
governing
problem
through
the
invention,
and
the
principal
use
or
patents
shall
apply,
mutatis
mutandis,
to
the
registration
uses
of
the
invention.
The
abstract
shall
merely
serve
for
of
utility
models.
technical
information.
108.2.
Where
the
right
to
a
patent
conflicts
with
the
right
SECTION
38.
UNITY
OF
INVENTION.
–
to
a
utility
model
registration
in
the
case
referred
to
in
Section
29,
the
said
provision
shall
apply
as
if
the
word
38.1.
The
application
shall
relate
to
one
invention
only
or
"patent"
were
replaced
by
the
words
"patent
or
utility
to
a
group
of
inventions
forming
a
single
general
model
registration".
inventive
concept.
SECTION
109.
SPECIAL
PROVISIONS
RELATING
TO
UTILITY
38.2.
If
several
independent
inventions
which
do
not
form
a
single
general
inventive
concept
are
claimed
in
MODELS.
-‐
one
application,
the
Director
may
require
that
the
109.2.
Sections
43
to
49
shall
not
apply
in
the
case
of
application
be
restricted
to
a
single
invention.
A
later
applications
for
registration
of
a
utility
model.
application
filed
for
an
invention
divided
out
shall
be
considered
as
having
been
filed
on
the
same
day
as
the
Industrial
Design
first
application:
Provided,
That
the
later
application
is
SECTION
114.
CONTENTS
OF
THE
APPLICATION.
–
filed
within
four
(4)
months
after
the
requirement
to
divide
becomes
final
or
within
such
additional
time,
not
114.1.
Every
application
for
registration
of
an
industrial
exceeding
four
(4)
months,
as
may
be
granted:
Provided
design
shall
contain:
further,
That
each
divisional
application
shall
not
go
beyond
the
disclosure
in
the
initial
application.
(a)
A
request
for
registration
of
the
industrial
design;
38.3.
The
fact
that
a
patent
has
been
granted
on
an
application
that
did
not
comply
with
the
requirement
of
(b)
Information
identifying
the
applicant;
unity
of
invention
shall
not
be
a
ground
to
cancel
the
patent.
(c)
An
indication
of
the
kind
of
article
of
manufacture
or
handicraft
to
which
the
design
shall
be
applied;
SECTION
39.
INFORMATION
CONCERNING
CORRESPONDING
FOREIGN
APPLICATION
FOR
PATENTS.
–
(d)
A
representation
of
the
article
of
The
applicant
shall,
at
the
request
of
the
Director,
manufacture
or
handicraft
by
way
of
drawings,
furnish
him
with
the
date
and
number
of
any
application
photographs
or
other
adequate
graphic
for
a
patent
filed
by
him
abroad,
hereafter
referred
to
as
representation
of
the
design
as
applied
to
the
the
"foreign
application,"
relating
to
the
same
or
article
of
manufacture
or
handicraft
which
essentially
the
same
invention
as
that
claimed
in
the
clearly
and
fully
discloses
those
features
for
application
filed
with
the
Office
and
other
documents
which
design
protection
is
claimed;
and
relating
to
the
foreign
application.
(e)
The
name
and
address
of
the
creator,
or
SECTION
8.
THE
BUREAU
OF
PATENTS.
–
where
the
applicant
is
not
the
creator,
a
The
Bureau
of
Patents
shall
have
the
following
functions:
statement
indicating
the
origin
of
the
right
to
the
industrial
design
registration.
8.1.
Search
and
examination
of
patent
applications
and
the
grant
of
patents;
114.2.
The
application
may
be
accompanied
by
a
specimen
of
the
article
embodying
the
industrial
design
8.2.
Registration
of
utility
models,
industrial
designs,
and
and
shall
be
subject
to
the
payment
of
the
prescribed
fee.
integrated
circuits;
and
SECTION
115.
SEVERAL
INDUSTRIAL
DESIGNS
IN
ONE
8.3.
Conduct
studies
and
researches
in
the
field
of
APPLICATION.
–
patents
in
order
to
assist
the
Director
General
in
Two
(2)
or
more
industrial
designs
may
be
the
subject
of
formulating
policies
on
the
administration
and
the
same
application:
Provided,
That
they
relate
to
the
examination
of
patents.
same
sub-‐class
of
the
International
Classification
or
to
the
same
set
or
composition
of
articles.
142 z
Intellectual Property Law
3. Priority
date
are
received.
If
the
deficiencies
are
not
remedied
within
the
prescribed
time
limit,
the
application
shall
be
considered
withdrawn.
SECTION
31.
RIGHT
OF
PRIORITY.
.
–
An
application
for
patent
filed
by
any
person
who
has
SECTION
116.
EXAMINATION.
–
previously
applied
for
the
same
invention
in
another
country
which
by
treaty,
convention,
or
law
affords
116.1.
The
Office
shall
accord
as
the
filing
date
the
date
of
similar
privileges
to
Filipino
citizens,
shall
be
considered
receipt
of
the
application
containing
indications
allowing
as
filed
as
of
the
date
of
filing
the
foreign
application:
the
identity
of
the
applicant
to
be
established
and
a
Provided,
That:
(a)
the
local
application
expressly
claims
representation
of
the
article
embodying
the
industrial
priority;
(b)
it
is
filed
within
twelve
(12)
months
from
the
design
or
a
pictorial
representation
thereof.
date
the
earliest
foreign
application
was
filed;
and
(c)
a
certified
copy
of
the
foreign
application
together
with
an
116.2.
If
the
application
does
not
meet
these
English
translation
is
filed
within
six
(6)
months
from
the
requirements
the
filing
date
should
be
that
date
when
all
date
of
filing
in
the
Philippines.
the
elements
specified
in
Section
105
are
filed
or
the
mistakes
corrected.
Otherwise
if
the
requirements
are
BOOTHE
V.
DIRECTOR
OF
PATENTS
(1980)
not
complied
within
the
prescribed
period,
the
Court
decision:
application
shall
be
considered
withdrawn.
Under
the
Revised
Rules
of
Practice
in
Patent
Cases,
it
is
imperative
that
the
application
be
complete
in
order
that
116.3.
After
the
application
has
been
accorded
a
filing
it
may
be
accepted.
It
is
essential
to
the
validity
of
Letters
date
and
the
required
fees
paid
on
time,
the
applicant
Patent
that
the
specifications
be
full,
definite,
and
shall
comply
with
the
requirements
of
Section
114
within
specific.
The
purpose
of
requiring
a
definite
and
accurate
the
prescribed
period,
otherwise
the
application
shall
be
description
of
the
process
is
to
apprise
the
public
of
considered
withdrawn.
what
the
patentee
claims
as
his
invention,
to
inform
the
Courts
as
to
what
they
are
called
upon
to
construe,
and
116.4.
The
Office
shall
examine
whether
the
industrial
to
convey
to
competing
manufacturers
and
dealers
design
complies
with
requirements
of
Section
112
and
information
of
exactly
what
they
are
bound
to
avoid.
Subsections
113.2
and
113.3.
4. Filing
date
5. Formality
examination
SECTION
40.
FILING
DATE
REQUIREMENTS.
–
SECTION
42.
FORMALITY
EXAMINATION.
–
40.1.
The
filing
date
of
a
patent
application
shall
be
the
42.1.
After
the
patent
application
has
been
accorded
a
date
of
receipt
by
the
Office
of
at
least
the
following
filing
date
and
the
required
fees
have
been
paid
on
time
elements:
in
accordance
with
the
Regulations,
the
applicant
shall
comply
with
the
formal
requirements
specified
by
(a)
An
express
or
implicit
indication
that
a
Section
32
and
the
Regulations
within
the
prescribed
Philippine
patent
is
sought;
period,
otherwise
the
application
shall
be
considered
withdrawn.
(b)
Information
identifying
the
applicant;
and
42.2.
The
Regulations
shall
determine
the
procedure
for
(c)
Description
of
the
invention
and
one
(1)
or
the
re-‐examination
and
revival
of
an
application
as
well
more
claims
in
Filipino
or
English.
as
the
appeal
to
the
Director
of
Patents
from
any
final
action
by
the
examiner.
40.2.
If
any
of
these
elements
is
not
submitted
within
the
period
set
by
the
Regulations,
the
application
shall
be
6. Classification
and
search
considered
withdrawn.
SECTION
43.
CLASSIFICATION
AND
SEARCH.
–
SECTION
41.
ACCORDING
A
FILING
DATE.
–
An
application
that
has
complied
with
the
formal
The
Office
shall
examine
whether
the
patent
application
requirements
shall
be
classified
and
a
search
conducted
satisfies
the
requirements
for
the
grant
of
date
of
filing
to
determine
the
prior
art.
as
provided
in
Section
40
hereof.
If
the
date
of
filing
cannot
be
accorded,
the
applicant
shall
be
given
an
opportunity
to
correct
the
deficiencies
in
accordance
with
the
implementing
Regulations.
If
the
application
does
not
contain
all
the
elements
indicated
in
Section
40,
the
filing
date
should
be
that
date
when
all
the
elements
o 143
Katrina Michelle Mancao
7. Confidentiality
before
10. Observation
by
third
publication
parties
SECTION
45.
CONFIDENTIALITY
BEFORE
PUBLICATION.
–
SECTION
47.
OBSERVATION
BY
THIRD
PARTIES.
–
A
patent
application,
which
has
not
yet
been
published,
Following
the
publication
of
the
patent
application,
any
and
all
related
documents,
shall
not
be
made
available
person
may
present
observations
in
writing
concerning
for
inspection
without
the
consent
of
the
applicant.
the
patentability
of
the
invention.
Such
observations
shall
be
communicated
to
the
applicant
who
may
8. Publication
of
patent
comment
on
them.
The
Office
shall
acknowledge
and
put
such
observations
and
comment
in
the
file
of
the
application
application
to
which
it
relates.
SECTION
44.
PUBLICATION
OF
PATENT
APPLICATION.
–
11. Request
for
substantive
44.1.
The
patent
application
shall
be
published
in
the
IPO
examination
Gazette
together
with
a
search
document
established
by
or
on
behalf
of
the
Office
citing
any
documents
that
reflect
prior
art,
after
the
expiration
of
eighteen
(18)
SECTION
48.
REQUEST
FOR
SUBSTANTIVE
EXAMINATION.
–
months
from
the
filing
date
or
priority
date.
48.1.
The
application
shall
be
deemed
withdrawn
unless
within
six
(6)
months
from
the
date
of
publication
under
44.2.
After
publication
of
a
patent
application,
any
Section
41,
a
written
request
to
determine
whether
a
interested
party
may
inspect
the
application
documents
patent
application
meets
the
requirements
of
Sections
21
filed
with
the
Office.
to
27
and
Sections
32
to
39
and
the
fees
have
been
paid
on
time.
44.3.
The
Director
General
subject
to
the
approval
of
the
Secretary
of
Trade
and
Industry,
may
prohibit
or
restrict
48.2.
Withdrawal
of
the
request
for
examination
shall
be
the
publication
of
an
application,
if
in
his
opinion,
to
do
irrevocable
and
shall
not
authorize
the
refund
of
any
fee.
so
would
be
prejudicial
to
the
national
security
and
interests
of
the
Republic
of
the
Philippines.
12. Amendment
9. Rights
conferred
by
a
SECTION
49.
AMENDMENT
OF
APPLICATION.
–
patent
application
An
applicant
may
amend
the
patent
application
during
examination:
Provided,
That
such
amendment
shall
not
SECTION
46.
RIGHTS
CONFERRED
BY
A
PATENT
include
new
matter
outside
the
scope
of
the
disclosure
contained
in
the
application
as
filed.
APPLICATION
AFTER
PUBLICATION.
–
The
applicant
shall
have
all
the
rights
of
a
patentee
13. Conversion
under
Section
76
against
any
person
who,
without
his
authorization,
exercised
any
of
the
rights
conferred
under
Section
71
of
this
Act
in
relation
to
the
invention
SECTION
110.
CONVERSION
OF
PATENT
APPLICATIONS
OR
claimed
in
the
published
patent
application,
as
if
a
patent
APPLICATIONS
FOR
UTILITY
MODEL
REGISTRATION.
–
had
been
granted
for
that
invention:
Provided,
That
the
110.1.
At
any
time
before
the
grant
or
refusal
of
a
patent,
said
person
had:
an
applicant
for
a
patent
may,
upon
payment
of
the
prescribed
fee,
convert
his
application
into
an
46.1.
Actual
knowledge
that
the
invention
that
he
was
application
for
registration
of
a
utility
model,
which
shall
using
was
the
subject
matter
of
a
published
application;
be
accorded
the
filing
date
of
the
initial
application.
An
or
application
may
be
converted
only
once.
46.2.
Received
written
notice
that
the
invention
that
he
110.2.
At
any
time
before
the
grant
or
refusal
of
a
utility
was
using
was
the
subject
matter
of
a
published
model
registration,
an
applicant
for
a
utility
model
application
being
identified
in
the
said
notice
by
its
serial
registration
may,
upon
payment
of
the
prescribed
fee,
number:
Provided,
That
the
action
may
not
be
filed
until
convert
his
application
into
a
patent
application,
which
after
the
grant
of
a
patent
on
the
published
application
shall
be
accorded
the
filing
date
of
the
initial
application.
and
within
four
(4)
years
from
the
commission
of
the
acts
complained
of.
144 z
Intellectual Property Law
SECTION
111.
PROHIBITION
AGAINST
FILING
OF
PARALLEL
Property
Code
of
the
Philippines,
the
following
rules
on
PCT
applications
are
hereby
promulgated:
APPLICATIONS.
–
An
applicant
may
not
file
two
(2)
applications
for
the
PART
I.
same
subject,
one
for
utility
model
registration
and
the
GENERAL
PROVISIONS
other
for
the
grant
of
a
patent
whether
simultaneously
or
consecutively.
RULE
1.
TITLE.
-‐
These
rules
shall
be
known
as
the
Philippine
Rules
on
PCT
Applications
or
“PRo-‐PCT”.
H. Philippine
Rules
on
PCT
Applications
RULE
2.
D EFINITIONS.
-‐
Unless
otherwise
specified,
the
WHEREAS,
the
State
recognizes
that
an
effective
following
terms
and
acronyms
shall
be
understood
as
industrial
property
system
is
vital
to
the
development
of
follows:
domestic
creativity,
facilitates
transfer
of
technology,
attracts
foreign
investments
and
ensures
market
access
(a)
“Administrative
Instructions”
means
that
for
our
products;
body
of
instructions
for
operating
under
the
Patent
Cooperation
Treaty
referred
to
in
PCT
WHEREAS,
it
is
the
policy
of
the
State
to
streamline
Rule
89;
administrative
procedures
in
granting
patents
and
enhance
the
enforcement
of
intellectual
property
rights
(b)
“designated
Office”
means
a
national
in
the
Philippines;
patent
office
or
intergovernmental
organization
of
or
acting
for
the
State
WHEREAS,
Senate
Resolution
No.
74
dated
05
February
designated
by
the
applicant
under
Chapter
I
of
2001
was
passed
whereby
the
Philippines
ratified
the
the
Treaty;
Patent
Cooperation
Treaty
(PCT);
(c)
“designated
State”
refers
to
the
State
in
WHEREAS,
since
1978,
the
PCT
system
has
offered
which
protection
for
the
invention
is
desired
on
investors
and
industry
an
advantageous
route
for
the
basis
of
the
international
application
and
obtaining
patent
protection
internationally;
aims
to
which
is
designated
under
Chapter
I
of
the
facilitate
procedures
for
obtaining
legal
protection
for
Treaty;
inventions
and
disseminate
technical
information;
seeks
to
simplify
and
to
render
more
effective
and
more
(d)
“Director
General”
means
the
Head
of
the
economical
–
in
the
interest
of
the
applicants
and
the
Intellectual
Property
Office
of
the
Philippines;
patent
offices
–
previously
established
means
of
(e)
“elected
Office”
means
a
national
patent
applying
in
several
countries
for
patent
protection
for
office
or
intergovernmental
organization
of
or
invention;
would
substantially
benefit
Philippine
patent
acting
for
the
State
elected
by
the
applicant
agents
and
industry
from
the
filing
in
the
Philippines
of
under
Chapter
II
of
the
Treaty;
international
applications
under
the
PCT;
(f)
“elected
State”
refers
to
the
State
in
which
WHEREAS,
in
accordance
with
Article
63
of
the
PCT,
the
protection
for
the
invention
is
desired
on
the
Treaty
shall
enter
into
force
with
respect
to
the
basis
of
the
international
application
and
which
Philippines,
three
(3)
months
after
the
date
on
which
it
has
been
elected
under
Chapter
II
of
the
has
deposited
its
Instrument
of
Accession
with
the
Treaty;
Director
General
of
the
World
Intellectual
Property
Organization
(WIPO);
(g)
“IB”
and
“International
Bureau”
mean
the
International
Bureau
of
the
World
Intellectual
WHEREAS,
the
Philippines
deposited
its
Instrument
of
Property
Organization
as
referred
to
in
PCT
Accession
with
the
Director
General
of
the
WIPO
on
17
Article
2(xix);
May
2001;
and,
therefore,
the
PCT
entered
into
effect
with
respect
to
the
Philippines
on
17
August
2001;
(h)
“International
Application”
and
“PCT
Application”
mean
an
application
filed
under
WHEREAS,
there
is
a
need
to
guide
applicants,
patent
the
Treaty;
attorneys/agents,
and
other
interested
parties
in
the
Philippines
on
the
PCT
and
its
rules
and
regulations;
(i)
“International
Searching
Authority”
or
“ISA”
and
“International
Preliminary
Examining
NOW,
THEREFORE,
pursuant
to
Senate
Resolution
No.
Authority”
or
“IPEA”
mean
a
national
patent
74
dated
05
February
2001,
the
provisions
of
the
Patent
office
or
intergovernmental
organization
as
Cooperation
Treaty
and
the
Regulations
thereunder,
appointed
under
the
Treaty
which
processes
Republic
Act
No.
8293
also
known
as
the
Intellectual
o 145
Katrina Michelle Mancao
international
applications
as
prescribed
by
the
Other
terms
and
expressions
not
defined
in
this
rule
are
Treaty
and
PCT
Regulations;
to
be
taken
in
the
sense
of
the
Treaty
and
PCT
Regulations.
(j)
“IP
Code”
means
Republic
Act
No.
8293
otherwise
known
as
the
Intellectual
Property
RULE
3.
APPLICATION
OF
THE
PCT
AND
PCT
REGULATIONS.
–
In
all
Code
of
the
Philippines;
matters
not
specifically
provided
for
under
these
Rules,
the
provisions
of
the
Treaty,
PCT
Regulations
and
PCT
(k)
“IPO”
or
“Office”
means
the
Intellectual
Administrative
Instructionsshall
apply
in
the
processing
Property
Office
of
the
Philippines;
of
an
international
application
during
the
international
phase
of
the
application.
In
the
event
of
conflict
(l)
“IPO
Fee
Structure”
means
the
rules
and
between
these
Rules
and
those
of
the
PCT,
the
regulations
establishing
the
fees
and
charges
provisions
of
the
latter
shall
apply.
of
the
Intellectual
Property
Office
of
the
Philippines;
The
international
phase
covers
the
period
from
the
filing
of
the
application
in
accordance
with
the
PCT
until
the
(m)
“PCT”
and
“Treaty”
mean
the
Patent
application
enters
the
national
phase.
Cooperation
Treaty;
RULE
4.
EFFECT
OF
AN
INTERNATIONAL
APPLICATION.
–
(n)
“PCT-‐EASY”
means
the
software
made
4.1.
An
international
application
designating
the
available
by
the
International
Bureau
for
Philippines
for
the
purposes
of
obtaining
a
national
facilitating
the
preparation
of
the
request
part
patent
or
a
utility
model,
which
has
been
accorded
an
of
an
international
application,
and
printing
international
filing
date
in
accordance
with
the
Treaty
thereof,
for
filing
together
with
a
computer
and
PCT
regulations,
shall
have
the
effect
of
a
national
diskette
prepared
using
that
software,
application
for
a
patent
or
utility
model,
respectively,
containing
a
copy
in
electronic
form
of
the
data
regularly
filed
with
the
Intellectual
Property
Office
as
of
contained
in
the
request
and
of
the
abstract;
the
international
filing
date,
which
date
shall
be
considered
to
be
the
actual
filing
date
in
the
Philippines.
(o)
“PCT
Regulations”
means
the
set
of
rules,
referred
to
in
PCT
Article
58
and
annexed
to
4.2.
Subject
to
Review
by
the
IPO
under
Rule
37,
an
the
Treaty
referred
to
as
the
Regulations
Under
international
application
designating
the
Philippines
that
the
PCT;
is
withdrawn
or
considered
withdrawn
under
the
Treaty
and
PCT
Regulations,
before
the
applicant
has
entered
(p)
“Priority
Date”
for
the
purposes
of
the
national
phase
in
the
Philippines
as
provided
in
Part
3
computing
time
limits
under
the
PCT
is
defined
of
these
Rules,
that
international
application
is
likewise
in
PCT
Article
2(xi)
as
follows:
withdrawn
or
considered
withdrawn
in
the
Philippines.
(i)
where
the
international
application
RULE
5.
SEEKING
TWO
(2)
KINDS
OF
PROTECTION;
PROHIBITION
contains
a
priority
claim
under
PCT
AGAINST
FILING
OF
PARALLEL
APPLICATIONS.
-‐
In
respect
of
the
Article
8,
the
filing
date
of
the
application
whose
priority
is
so
Philippines
as
a
designated
or
elected
State,
an
applicant
claimed;
cannot
seek
two
(2)
kinds
of
protection
for
the
same
(ii)
where
the
international
subject,
one
for
utility
model
registration
and
the
other
application
contains
several
priority
for
the
grant
of
a
patent
whether
simultaneously
or
claims
under
PCT
Article
8,
the
filing
consecutively.
date
of
the
earliest
application
whose
priority
is
so
claimed;
RULE
6.
DELIVERY
SERVICE.
–
Where
the
applicant
sends
a
document
or
letter
through
mail
and
that
document
or
(iii)
where
the
international
letter
is
lost
or
reaches
the
IPO
after
the
expiration
of
application
does
not
contain
any
the
applicable
time
limit
under
the
Treaty
and
PCT
priority
claim
under
PCT
Article
8,
the
Regulations
and
these
Rules,
PCT
Rules
82.1(a)
to
(c)
international
filing
date
of
such
shall
apply
provided
that
the
delivery
service
used
is
application;
registered
mail
by
a
postal
authority.
(q)
“Receiving
Office”
means
a
national
patent
RULE
7.
APPOINTMENT
OF
RESIDENT
AGENT
OR
REPRESENTATIVE.
–
office
or
intergovernmental
organization
with
(a)
An
applicant
who
is
not
a
resident
of
the
Philippines
which
the
international
application
has
been
shall
appoint
and
maintain
an
agent
or
representative
filed;
residing
in
the
Philippines
upon
whom
notices
or
processes
for
judicial
or
administrative
procedure
may
146 z
Intellectual Property Law
be served relating to the international application filed
with the IPO as a receiving, designated or elected Office. (5) Transmitting the international application
An applicant who is a resident of the Philippines may to the IB for processing, where the IPO is not
likewise appoint and maintain an agent or representative the competent Receiving Office as defined
residing in the Philippines for the same purpose. The list under PCT Rule 19.
of registered resident agents or representatives is
available in the IPO website. RULE 9. INTERNATIONAL SEARCH AND INTERNATIONAL SEARCHING
AUTHORITY. –
(b) Where the international application is filed with the 9.1. An international application shall be the subject of an
IPO as a receiving Office, the appointment of an agent international search, which shall be carried out by an ISA.
must be effected in the Request form, signed by all The objective of the international search is to discover
applicants, or in a separate power of attorney submitted relevant prior art.
to the IPO where the Request form is signed by the
appointed agent in accordance with PCT Rule 90.4. The 9.2. The Director General shall specify one or more
separate power of attorney does not require legalization competent ISAs for international applications filed with
or notarization. the IPO and, subject to any required acceptance or
compliance with applicable requirements, the IPO shall
(c) For purposes of the procedure before the IPO as a publish in its website a list of those competent ISAs.
designated or elected Office, the manner of appointing
an agent or representative shall comply with the 9.3. The applicant shall, in his Request Form, indicate his
requirements prescribed in the implementing rules and choice of the competent ISA.
regulations of the IP Code.
RULE 10. INTERNATIONAL PRELIMINARY EXAMINATION AND
PART II.
INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY. –
INTERNATIONAL PHASE
10.1. An international application may be the subject of
RULE 8. THE IPO AS A RECEIVING OFFICE. – an international preliminary examination which shall be
carried out by an IPEA.
8.1. The IPO shall act as a Receiving Office only for
applicants who are residents or nationals of the
10.2. The objective of the international preliminary
Philippines.
examination is to formulate a preliminary and non-‐
binding opinion on the questions whether the claimed
8.2. The IPO, when acting as a Receiving Office, will be
invention appears to be novel, to involve an inventive
identified by the full title “Philippine Receiving Office” or
step (to be non-‐obvious) and to be industrially applicable.
by the abbreviation “RO/PH.”
10.3. The Director General shall specify one or more
8.3. Without prejudice to the national security and
competent IPEAs for international applications filed with
interests of the Republic of the Philippines, the IPO shall
the IPO and, subject to any required acceptance or
perform all acts connected with the discharge of duties
compliance with applicable requirements, the IPO shall
of a Receiving Office under the Treaty and PCT
publish in its website a list of those competent IPEAs.
Regulations. The functions of the IPO as a Receiving
Office include:
10.4 Where there are two or more competent IPEAs for
applications filed with the IPO, the applicant shall, in his
(1) According of international filing dates to
Demand Form, indicate his choice of the competent IPEA.
international applications fulfilling the
requirements of PCT Article 11(1) and in
RULE 11. LANGUAGE PRESCRIBED BY THE RECEIVING O FFICE. – The
particular, PCT Rule 20;
language accepted by the Philippines receiving Office for
(2) Checking that international applications the filing of international application is Filipino or English,
meet the standards for format and content of provided that it is sufficient that the description and
PCT Article 14(1) and in particular, PCT Rules 9, claims be in Filipino or English for the purposes of
26, 29.1, 37, 38, 91, and portions of PCT Rules 3 according an international filing date under PCT Article
through 11; 11(1).
(3) Assessing, collecting, and transmitting fees RULE12. TRANSLATION FOR THE PURPOSES OF INTERNATIONAL
due for processing international applications; SEARCH. –
(a) Where the international application is filed in Filipino,
(4) Transmitting the record and search copies the applicant shall, within one (1) month from the date
to the IB and ISA, respectively; and of receipt of the international application by the IPO,
o 147
Katrina Michelle Mancao
furnish
to
the
Office
a
translation
of
the
international
for
the
invention
to
be
carried
out
by
a
person
skilled
in
application
into
English
in
accordance
with
PCT
Rule
12.3
the
art.
(a)
and
(b).
The
requirements
as
to
the
format
and
content
of
the
(b)
If
the
Engish
translation
is
not
furnished
within
the
description
are
set
forth,
in
particular,
in
PCT
Rules
5,
9,
time
limit
under
paragraph
(a),
the
Office
shall
invite
the
10,
and
11,
and
Section
204
of
the
PCT
Administrative
applicant
to
furnish
it
within
one
(1)
month
from
the
date
Instructions.
of
invitation
or
two
(2)
months
from
the
date
of
receipt
of
the
international
application
by
the
IPO,
whichever
RULE
18.
THE
CLAIMS.
-‐
The
claim
or
claims
shall
define
the
expires
later.
matter
for
which
protection
is
sought.
Claims
shall
be
clear
and
concise.
They
shall
be
fully
supported
by
the
(c)
If
the
applicant
does
not
furnish
the
English
description.
translation
within
the
applicable
time
limit
under
paragraph
(b),
the
international
application
shall
be
The
requirements
as
to
the
format
and
content
of
claims
considered
withdrawn
and
the
IPO
as
a
receiving
Office
are
set
forth,
in
particular,
in
PCT
Rules
6,
9,
10,
and
11.
shall
so
declare
in
accordance
with
PCT
Rule
12.3(d).
RULE
19.
THE
D RAWINGS.
-‐
Drawings
which
are
necessary
for
(d)
The
IPO
shall
promptly
furnish
the
IB
and
the
ISA
a
the
understanding
of
the
invention
must
be
part
of
the
copy
of
the
English
translation.
international
application
as
originally
filed
in
order
to
maintain
the
international
filing
date
during
the
national
RULE
13.
D OCUMENTS
AND
CORRESPONDENCE.
–
stage.
If
drawings
are
referred
to
in
the
international
(a)
Any
paper
submitted
by
the
applicant,
other
than
the
application
but
they
are
missing
upon
filing,
the
IPO
shall
international
application
itself,
must,
if
not
itself
in
the
give
the
applicant
thirty
(30)
days
from
the
date
of
form
of
a
letter,
be
accompanied
by
a
letter
identifying
receipt
of
the
international
application
to
submit
the
the
international
application
to
which
it
relates
and
must
drawings.
If
the
missing
drawings
are
received
within
the
be
signed
by
the
applicant.
thirty-‐day
period,
the
international
filing
date
shall
be
the
date
on
which
such
drawings
are
received.
If
such
(b)
Correspondence
intended
for
the
applicant
shall
be
drawings
are
not
timely
received,
all
references
to
sent
to
the
agent
appointed
under
Rule
7.
drawings
in
the
international
application
shall
be
considered
non-‐existent.
RULE
14.
KEEPING
OF
RECORDS
AND
FILES.
-‐
The
IPO
shall
keep
the
records
relating
to
the
international
application
or
The
physical
requirements
for
drawings
are
set
forth
in
purported
international
application
for
at
least
(ten)
10
PCT
Rule
11.3.
years
from
the
international
filing
date
or,
where
no
international
filing
date
is
accorded,
from
the
date
of
RULE
20.
THE
ABSTRACT.
-‐
The
abstract
shall
merely
serve
receipt
of
the
purported
application.
for
technical
information.
Lack
of
an
abstract
upon
filing
of
an
international
application
will
not
affect
the
RULE
15.
THE
INTERNATIONAL
APPLICATION.
-‐
An
international
granting
of
a
filing
date.
If
the
abstract
is
missing,
the
application
shall
contain
a
request,
a
description,
one
or
IPO
shall
invite
the
applicant
to
submit
the
same
within
more
claims,
one
or
more
drawings
(where
required),
one
(1)
month
from
the
date
of
the
invitation
and
the
and
an
abstract.
IPO
shall
notify
the
ISA
accordingly.
RULE
16.
THE
REQUEST.
-‐
The
request
shall
be
made
in
The
requirements
as
to
the
format
and
content
of
the
accordance
with
PCT
Rules
3
and
4.
Copies
of
the
abstract
are
set
forth
in
PCT
Rule
8.
Request
form
are
available
at
the
IPO.
RULE
21.
PRIORITY
CLAIM.
–
Any
declaration
referred
to
in
The
Request
Form
may
be
made
using
PCT-‐EASY
Article
8(1)
(“priority
claim”)
shall
be
indicated
in
the
software
made
available
by
the
IB,
in
which
case,
the
Request
Form
as
set
forth
in
PCT
Rule
4.10.
applicant
is
required
to
submit
the
Request
as
a
computer
print-‐out
together
with
a
computer
diskette
Any
correction
or
addition
on
the
priority
claim
shall
be
containing
a
copy
of
the
electronic
form
of
the
data
made
in
accordance
with
PCT
Rule
26bis.
contained
in
the
Request
and
of
the
abstract
prepared
using
that
software.
RULE
22.
PHYSICAL
REQUIREMENTS.
–
22.1.
An
international
application
and
each
of
the
RULE
17.
THE
DESCRIPTION.
–
The
description
shall
disclose
documents
that
may
be
referred
to
in
the
checklist
of
the
invention
in
a
manner
sufficiently
clear
and
complete
the
Request
Form
shall
be
filed
in
one
(1)
copy
only.
148 z
Intellectual Property Law
22.2.
All
sheets
of
the
international
application
must
be
25.2.
If
the
IPO
finds
that
the
applicant
or
not
one
of
the
on
A4
size
paper
(29.7
cm
x
21
cm)
which
shall
be
flexible,
applicants
is
a
resident
or
national
of
the
Philippines
or
strong,
white,
smooth,
non-‐shiny,
and
durable.
that
the
language
is
neither
Filipino
nor
English,
the
international
application
shall
be
treated
and
22.3.
In
order
to
facilitate
processing
of
the
international
transmitted
to
the
IB
in
accordance
with
PCT
Rule
19.4,
applications,
attention
of
applicants
is
directed
to
the
subject
to
payment
of
the
transmittal
fee
under
PCT
Rule
other
physical
requirements
for
international
application
14.
which
are
set
forth
in
PCT
Rule
11
and
Section
207
of
the
PCT
Administrative
Instructions.
25.3.
If
the
IPO
finds
that
the
international
application
did
not,
at
the
time
of
receipt,
contain
the
elements
RULE
23.
WHO
MAY
FILE
AN
INTERNATIONAL
APPLICATION.
–
listed
in
Rule
25.1
item
(3),
it
shall
invite
the
applicant
to
A
resident
or
national
of
the
Philippines
may
file
an
file
the
required
correction
within
thirty
(30)
days
from
international
application.
If
there
are
two
or
more
the
date
of
the
invitation.
If
the
applicant
complies
with
applicants,
the
right
to
file
an
international
application
the
invitation,
the
IPO
shall
accord
as
the
international
shall
exist
if
at
least
one
of
them
is
a
resident
or
national
filing
date
the
date
of
receipt
of
the
required
correction.
of
the
Philippines.
If
the
applicant
does
not
comply
with
the
invitation,
the
IPO
shall
promptly
in
accordance
with
PCT
Rule
20.7(i)
RULE
24.
WHERE
TO
FILE
AN
INTERNATIONAL
APPLICATION.
–
notify
the
applicant
that
his
application
is
not
and
will
24.1.
A
resident
or
national
of
the
Philippines
may
file
an
not
be
treated
as
an
international
application
and
shall
international
application
with
the
IPO
or
the
IB.
indicate
the
reasons
therefor.
24.2.
An
international
application
may
be
filed
directly
RULE
26.
TRANSMITTAL
OF
THE
INTERNATIONAL
APPLICATION.
–
with
the
IPO
or
through
registered
mail
by
postal
26.1.
The
IPO
shall
transmit
the
“record
copy”
of
the
authority.
international
application
to
the
IB
in
accordance
with
PCT
Rule
22.
RULE
25.
ACCORDING
OF
INTERNATIONAL
FILING
D ATE
AND
ITS
EFFECT.
–
26.2.
The
IPO
shall
transmit
the
“search
copy”
of
the
international
application
to
the
competent
ISA
after
25.1.
The
IPO,
as
the
competent
receiving
Office,
shall
payment
of
the
search
fee
by
the
applicant
in
accord
as
the
international
filing
date
the
date
of
receipt
accordance
with
PCT
Rule
23.
of
the
international
application,
provided
that,
at
the
time
of
receipt:
26.3.
The
Director
General
may
prohibit
or
restrict
the
transmittal
of
an
application,
if
in
his
opinion,
to
do
so
(1)
at
least
one
applicant
is
a
resident
or
would
be
prejudicial
to
the
national
security
and
national
of
the
Philippines;chan
robles
virtual
interests
of
the
Republic
of
the
Philippines.
The
Director
law
library
General
may
apply
other
measures,
as
provided
under
PCT
Article
27(8),
that
will
not
prevent
the
transmittal
of
(2)
the
international
application
is
in
the
Filipino
the
record
copy
and
search
copy
but
will
restrict
the
or
English
language;
andchan
robles
virtual
law
contents
of
the
transmittals.
library
RULE
27.
THE
INTERNATIONAL
PUBLICATION
AND
ITS
EFFECT.
–
(3)
the
international
application
contains
at
least
the
following
elements:chan
robles
virtual
27.1.
In
accordance
with
PCT
Article
21
and
PCT
Rule
48,
law
library
the
IB
shall
publish
the
international
application
promptly
after
the
expiration
of
eighteen
(18)
months
(i)
an
indication
that
it
is
intended
as
from
the
priority
date
of
the
application.
However,
the
an
international
application;
applicant
may
ask
the
IB
to
publish
his
international
application
any
time
before
the
expiration
of
eighteen
(ii)
the
designation
of
at
least
one
(18)
months
from
the
priority
date
in
accordance
with
Contracting
State;
PCT
Rule
48.4.
(iii)
the
name
of
the
applicant;
27.2.
In
accordance
with
PCT
Article
29(1),
as
far
as
the
protection
of
any
rights
of
the
applicant
under
Section
(iv)
a
part
which
on
the
face
of
it
46
of
the
IP
Code
in
the
Philippines
is
concerned,
the
appears
to
be
a
description;
and
international
publication
in
English
of
an
international
application
shall
have
the
same
effect
as
a
publication
in
(v)
a
part
which
on
the
face
of
it
the
IPO
Gazette
under
Section
44
of
the
IP
Code
and
its
appears
to
be
a
claim
or
claims.
implementing
rules
and
regulations
provided
that
notice
of
the
international
publication
and
copy
of
the
o 149
Katrina Michelle Mancao
international
application
has
been
transmitted
by
the
accompanied
by
a
letter
indicating
the
differences
applicant
to
the
actual
unauthorized
user
of
the
between
the
replaced
sheet
and
the
replacement
sheet.
invention
claimed
in
the
international
application
pursuant
to
Sec.
46.2
of
the
IP
Code.
RULE
30.
DELAYS
IN
MEETING
TIME
LIMITS.
Delays
in
meeting
time
limits
during
international
processing
of
27.3.
If
the
language
in
which
the
international
international
applications
may
only
be
excused
as
publication
has
been
effected
is
a
language
other
than
provided
in
PCT
Rule
82.
English,
the
protection
of
any
right
of
the
applicant
under
Section
46
of
the
IP
Code
in
the
Philippines
shall
RULE
31.
RECORDING
OF
CHANGES.
-‐
Before
the
expiration
of
be
applicable
only
from
such
time
as
a
translation
into
the
time
limit
referred
to
in
PCT
Articles
22(1)
and
English
has
been
published
in
the
IPO
Gazette
under
39(1)(a),
the
IPO
may
receive
from
the
applicant
a
Section
44
of
the
IP
Code
and
its
implementing
rules
and
request
for
the
recording
of
a
change
in
the
person,
regulations,
and,
such
translation
into
English
has
been
name,
residence,
nationality
or
address
of
the
applicant
transmitted
by
the
applicant
to
the
actual
unauthorized
or
a
change
in
the
person,
name
or
address
of
the
user
of
the
invention
claimed
in
the
international
inventor,
the
agent
or
the
common
representative.
The
application
pursuant
to
Section
46.2
of
the
IP
Code.
IPO
shall
notify
the
IB
of
the
request
for
recording
a
change.
27.4.
Where
the
international
publication
has
been
effected,
on
the
request
of
the
applicant,
before
the
RULE
32.
WITHDRAWALS.
-‐
The
IPO
may
receive
from
the
expiration
of
eighteen
(18)
months
from
the
priority
date,
applicant
notice
of
withdrawal
of
the
international
the
rights
provided
for
under
Sec.
46
of
the
IP
Code
shall
application,
any
designation,
or
priority
claims
in
be
applicable
only
from
the
expiration
of
eighteen
(18)
accordance
with
PCT
Rule
90bis(1),
90bis(2),
90bis(3).
months
from
the
priority
date
subject
to
the
conditions
mentioned
in
the
preceding
paragraphs.
Withdrawal
of
a
demand
or
any
election
shall
be
made
directly
to
the
IB
in
accordance
with
PCT
Rule
90bis.4.
RULE
28.
DEMAND
FOR
INTERNATIONAL
PRELIMINARY
EXAMINATION.
–
RULE
33.
CERTIFIED
COPIES
OF
THE
INTERNATIONAL
APPLICATION
AND
PRIORITY
DOCUMENT.
–
28.1.
On
filing
of
a
demand
under
PCT
Article
31,
the
(a)
The
applicant
may
request
the
IPO
to
prepare
a
international
application
shall
be
the
subject
of
an
certified
copy
of
the
international
application
as
filed
and
international
preliminary
examination.
of
any
corrections
thereto
upon
payment
of
the
appropriate
fee.
28.2.
The
demand
for
international
preliminary
examination
shall
be
filed
directly
by
the
applicant
with
(b)
Where
the
priority
document
is
issued
by
the
IPO,
the
the
competent
IPEA
prior
to
the
expiration
of
the
applicant
may,
pursuant
to
PCT
Rule
17.1(b),
request
the
nineteenth
(19th)
month
from
the
priority
date.
IPO
to
prepare
and
transmit
the
priority
document
to
the
IB.
Such
request
shall
be
made
not
later
than
sixteen
(16)
28.3.
The
demand
shall
indicate
the
States
in
which
the
months
after
the
priority
date
and
shall
be
subject
to
applicant
intends
to
use
the
results
of
the
international
payment
of
a
fee.
preliminary
examination.
PART
III.
28.4.
In
accordance
with
PCT
Article
31
and
PCT
Rules
57
NATIONAL
PHASE
and
58,
the
demand
shall
be
subject
to
the
payment
by
the
applicant
of
the
prescribed
fees
directly
to
the
IPEA
RULE
34.
THE
IPO
AS
A
DESIGNATED
OR
ELECTED
OFFICE.
–
within
one
(1)
month
from
the
date
on
which
the
demand
was
submitted.
34.1.
The
IPO
will
act
as
the
Designated
or
Elected
Office
for
international
applications
in
which
the
Philippines
has
Copies
of
the
Demand
Form
are
available
at
the
IPO.
been
designated
or
elected.
RULE
29.
MANNER
OF
MAKING
CORRECTIONS.
–
Any
correction
34.2.
The
IPO,
when
acting
as
a
Designated
or
Elected
Office
during
international
processing
will
be
identified
offered
to
the
IPO
as
a
receiving
Office
may
be
stated
in
by
the
full
title
“Philippine
Designated
Office”
or
by
a
letter
addressed
to
the
IPO
if
the
correction
is
of
such
a
abbreviation
“DO/PH”
and
“Philippine
Elected
Office”
or
nature
that
it
can
be
transferred
from
the
letter
to
the
by
abbreviation
“EO/PH.”
record
copy
without
adversely
affecting
the
clarity
and
the
direct
reproducibility
of
the
sheet
on
to
which
the
34.3.
The
major
functions
of
the
IPO
in
respect
to
correction
is
to
be
transferred;
otherwise,
the
applicant
international
applications
in
which
the
Philippines
has
shall
be
required
to
submit
the
missing
requirement
or
a
been
designated
or
elected,
shall
include:
replacement
sheet
containing
the
correction
150 z
Intellectual Property Law
with the IP Code and its implementing rules and
(1) Receiving various notifications throughout regulations.
the international phase; and
RULE 36. ENTRY INTO THE NATIONAL PHASE OF AN INTERNATIONAL
(2) Accepting for national phase examination APPLICATION CLAIMING THE PRIORITY OF AN EARLIER PHILIPPINE
international applications which comply with NATIONAL APPLICATION. Within one (1) month from the date
Part 3 of these Rules.
of entry into the national phase of an international
application claiming the priority of an earlier Philippine
RULE 35. ENTRY INTO NATIONAL PHASE. –
national application, the IPO shall invite the applicant to
(a) An international application enters the national phase elect only one (1) application for further prosecution
when the applicant furnishes IPO a copy of the within two (2) months from the date of the invitation, or
international application in English (unless already within a longer period which the IPO may allow but not
transmitted by the IB), or, if the application was filed in to exceed six (6) months from the date of entry into the
another language, its English translation not later than national phase.
thirty (30) months from the priority date based on PCT
Article 22 (1) and PCT Article 39 (1) (a). RULE 37. REVIEW BY IPO AS A D ESIGNATED OFFICE. –
(a) Where the receiving Office other than the IPO has
Subject to the payment of an extension fee for late entry
refused to accord an international filing date to an
equal to fifty percent (50%) of the filing fee prescribed in
international application designating the Philippines or
the IPO Fee Structure, the entry into the national phase
has declared that the international application is
may be extended by one (1) month.
considered withdrawn either generally or as to the
Philippines, or where the IB has made a finding under
(b) The filing fee prescribed in the IPO fee structure shall
PCT Article 12(3) that the international application is
be paid within one (1) month from the date of entry into
considered withdrawn because it has not received the
the national phase; provided that an international
record copy within the prescribed time limit, the
application which claims the priority of an earlier
applicant may request review of the matter by the IPO
Philippine national application shall be exempt from
provided the requirements of and the time limit
payment of the filing fee.If the applicant fails to pay the
specified by the Treaty and PCT regulations as well as the
filing fee as herein provided, the application shall be
requirements for entry into national phase in these Rules
deemed withdrawn in the Philippines.
are complied with.
(c) The translation of the international application, as
(b) Where the refusal, declaration or finding mentioned
filed, referred to in paragraph (a) shall include a
in paragraph (a) was the result of an error or omission
translation into English of:
on the part of the receiving Office or that the finding
was the result of an error or omission on the part of the
(1) the description;
IB, the IPO as a designated Office may treat the
international application as if such error or omission has
(2) the claims as filed and, where applicable, as
not occurred.
amended under PCT Article 19;
RULE 38. TIME LIMIT TO SUBMIT THE PRIORITY DOCUMENT. –
(3) any text matter of the drawings;
38.1. The priority claim of an international application
(4) the abstract; and designating or electing the Philippines shall not be
disregarded by IPO, where the priority document is
(5) where applicable, amendments to the received by the IB not later than sixteen (16) months
description, claims or drawings under PCT after the priority date in accordance with PCT Rule 17.1
Article 34, as contained in the annexes to the (a) and (b).
international preliminary examination report.
38.2. If the priority document is not submitted to the IB
If the translation of the amendments under PCT Article within sixteen (16) months after the priority date in
19 or PCT Article 34, as the case may be, is not included, accordance with PCT Rule 17.1 (a) and (b), the applicant
those amendments will be considered cancelled. may submit to the IPO a certification from the national
Office concerned stating the following data regarding
(d) During the national phase, and at anytime before a the application the priority of which is claimed: name of
patent is granted or refused on the international the applicant, filing date, application number and title of
application, the applicant may present amendments to the application. The certification, and its English
the specification, claims and drawings in accordance translation if not in English, together with payment of
the fee for extension of time to submit priority
document and the surcharge for late payment provided
o 151
Katrina Michelle Mancao
for
in
the
IPO
Fee
Structure,
shall
be
submitted
within
six
902
Priority
Document
500.00
(6)
months
from
the
date
of
entry
of
the
international
Fee
PCT
Rule
17.1(b)
application
into
the
national
phase
without
need
of
903
Fee
for
Transmitting
1,750.00
notice.
The
certification
and
its
English
translation
if
not
Priority
Document
PCT
Rule
17.1(b)
in
English
do
not
require
legalization.
Failure
of
the
904
Confirmation
Fee
Fifty
(50%)
of
the
sum
applicant
to
comply
with
this
rule
shall
be
ground
to
PCT
Rules
4.9(c)
and
of
designation
fees
disregard
the
priority
claim.
15.5(a)
under
PCT
Rule
15.5
in
Philippine
currency
at
38.3
Where
the
validity
of
the
priority
claim
is
relevant
to
the
prevailing
rate
of
the
determination
of
whether
the
invention
concerned
is
exchange
at
the
time
patentable,
the
applicant
shall
be
required
to
submit
the
the
payment
is
due
English
translation
of
the
priority
document.
905
Late
Payment
Fee
PCT
3,500.00
Rule
16bis.2(a)(ii)
906
Certified
Copy
of
the
500.00
RULE
39.
PROCEDURE
FOR
GRANT
OF
PATENT.
–
International
Application
An
international
application
that
has
entered
the
Fee
PCT
Rule
20.9
national
phase
shall
be
governed
by
the
applicable
907
Transmittal
Fee
PCT
Rule
3,500.00
provisions
under
Republic
Act
No.
8293
and
its
19.4
implementing
rules
and
regulations
and
the
applicable
provisions
of
the
Treaty,
PCT
Regulations,
and
PCT
41.2.
Fees
for
the
benefit
of
the
IB
(International
Fee)
Administrative
Instructions.
The
amount
of
the
basic
fee
referred
to
in
PCT
Rule
RULE
40.
APPLICATION
OF
THE
IPO
FEE
STRUCTURE.
–
15.1(i),
the
designation
fee
referred
to
in
PCT
Rule
15.1(ii)
The
IPO
Fee
Structure
shall
apply
after
entry
into
the
for
any
designation
made
under
PCT
Rule
4.9(a),
and
the
national
phase
of
the
international
application
provided
designation
fee
referred
to
in
PCT
Rule
15.5
for
any
that:
designation
made
under
PCT
Rule
4.9(b)
and
confirmed
under
PCT
Rule
4.9(c),
are
published
in
the
PCT
Gazette
(a)
an
international
application
which
validly
and
are
available
at
the
IPO.
claims
the
priority
of
an
earlier
Philippine
national
application
shall
be
exempt
from
41.3.
Fee
for
the
benefit
of
the
ISA
(Search
Fee)chan
payment
of
fees
that
were
already
paid
in
robles
virtual
law
library
connection
with
that
earlier
Philippine
national
application;
The
amount
of
the
search
fee
referred
to
in
PCT
Rule
16.1
of
the
competent
ISA
or
ISAs
for
the
Philippines
is
(b)
the
due
date
for
payment
of
the
first
annual
published
in
the
PCT
Gazette.
fee
shall
be
computed
from
the
date
of
the
international
publication
regardless
of
the
RULE
42.
D UE
DATES
AND
EXTENSION
OF
TIME
LIMITS
FOR
language
of
publication;
and
PAYMENT
OF
FEES
COLLECTED
BY
IPO.
–
All
fees
must
be
paid
on
or
before
the
due
date
prescribed
in
the
PCT
(c)
the
international
application
shall
be
Regulations
and
these
Rules.
deemed
withdrawn
if
the
substantive
examination
fee
is
not
paid
within
six
(6)
42.1.
The
transmittal
fee,
basic
fee
and
search
fee
shall
be
months
from
the
date
of
entry
into
the
national
paid
by
the
applicant
within
one
(1)
month
from
the
date
phase.
The
applicant
may
use
a
form
for
of
receipt
by
the
IPO
of
the
international
application;
payment
prescribed
by
IPO
for
this
purpose.
42.2.
The
designation
fee
for
any
designation
made
PART
III.
under
PCT
Rule
4.9(a)
shall
be
paid
within
a
time
limit
of:
FEES
DURING
INTERNATIONAL
PHASE
(a)
one
(1)
year
from
the
priority
date,
or
RULE
41.
FEES
TO
BE
COLLECTED
BY
THE
IPO.
–
The
following
fees
shall
be
collected
by
the
IPO:
(b)
one
(1)
month
from
the
date
of
receipt
of
the
international
application
if
that
one-‐month
41.1.
Fees
for
the
benefit
of
the
IPO.
The
type
and
period
expires
later
than
one
(1)
year
from
the
amount
of
fees
for
the
benefit
of
the
IPO
are:
priority
date;
Ref.
Type
of
Fee
Amount(Philippine
42.3.
Where
the
fees
due
under
this
rule
have
not
been
Code
Peso)
paid,
or
that
the
amount
paid
is
insufficient
to
cover
the
901
Transmittal
Fee
PCT
Rule
3,500.00
total
amount
due,
the
IPO
shall
invite
the
applicant
to
14
pay
the
required
fees
together
with
the
late
payment
fee
152 z
Intellectual Property Law
within
one
(1)
month
without
extension
of
time
from
the
Other
fees
due
to
the
IPEA
in
accordance
with
the
Treaty
date
of
invitation;
and
PCT
Regulations
shall
be
paid
directly
to
the
IPEA
in
the
currency,
form
and
manner
prescribed
by
it.
42.4.
The
designation
fee
under
PCT
Rule
15.5
for
any
designation
made
under
PCT
Rule
4.9(b)
and
confirmed
The
Schedules
of
Fees
of
the
IPEAs
are
published
in
the
under
PCT
Rule
4.9(c),
together
with
the
confirmation
PCT
Gazette
and
are
available
at
the
IPO.
fee
under
PCT
Rule
15.5,
shall
be
paid
within
fifteen
(15)
months
from
the
priority
date.
RULE
46.
REFUNDS.
–
46.1
The
IPO
shall
refund
the
international
fee
to
the
RULE
43.
FEES
FOR
THE
BENEFIT
OF
IPO;
FORM,
MANNER
AND
applicant
in
accordance
with
PCT
Rule
15.6:
CURRENCY
OF
PAYMENT.
–
(a)
All
fees
for
the
benefit
of
the
IPO
shall
be
paid
in
cash,
(a)
if
the
IPO
has
found
that
the
international
money
order,
bank
drafts
and/or
checks
in
Philippine
filing
date
cannot
be
accorded
in
accordance
currency.
In
case
of
cash
payment,
the
date
of
receipt
is
with
PCT
Article
11(1);
the
date
on
which
the
full
amount
due
was
paid
in
cash.
In
case
of
money
order,
check
or
bank
draft
payment,
(b)
if,
before
the
transmittal
of
the
record
copy
the
date
of
receipt
of
the
money
order,
check
or
bank
to
the
IB,
the
international
application
is
draft
will
be
the
date
of
presentment
provided
that
the
withdrawn
or
considered
withdrawn;
or
same
is
honored
upon
first
presentment
and
provided
that
the
payment
covers
the
full
amount
due.
(c)
if,
due
to
prescriptions
concerning
the
national
security,
the
international
application
(b)
Payment
shall
be
made
to
the
IPO
Cashier
during
is
not
treated
as
such.
regular
working
days
and
business
hours
from
Monday
to
Friday,
8:00
a.m.
to
12:00
noon
and
from
1:00
p.m.
to
46.2.
The
IPO
shall
refund
the
search
fee
to
the
applicant
5:00
p.m.
in
accordance
with
PCT
Rule
16.2:
RULE
44.
FEES
FOR
THE
BENEFIT
OF
IB
AND
ISA;
FORM,
MANNER
(a)
if
the
IPO
has
found
that
the
international
AND
CURRENCY
OF
PAYMENT.
–
filing
date
cannot
be
accorded
in
accordance
with
PCT
Article
11(1);
44.1
All
fees
for
the
benefit
of
the
IB
and
the
ISA
collected
by
IPO
as
receiving
Office
shall
be
paid
to
IPO
(b)
if,
before
the
transmittal
of
the
search
copy
in
the
currency
or
any
of
the
currencies,
if
more
than
one,
to
the
ISA,
the
international
application
is
specified
by
the
IB
or
the
ISA
as
the
case
may
be,
in
the
withdrawn
or
considered
withdrawn;
or
form
of
cash
or
bank
draft.
In
case
of
cash
payment,
the
date
of
receipt
is
the
date
on
which
the
full
amount
due
(c)
if,
due
to
prescriptions
concerning
the
was
paid
in
cash.
In
case
of
bank
draft
payment,
the
date
national
security,
the
international
application
of
receipt
of
the
bank
draft
will
be
the
date
of
is
not
treated
as
such.
presentment
provided
that
the
same
is
honored
upon
first
presentment
and
provided
further
that
the
payment
RULE
47.
REDUCTION
IN
FEES.
–
An
applicant
may
be
entitled
covers
the
full
amount
due.
Payment
shall
be
made
to
the
IPO
Cashier
during
regular
working
days
and
to
a
reduction
in
fees
provided
that
the
requirements,
as
business
hours
from
Monday
to
Friday,
8:00
a.m.
to
specified
by
the
IB
and
Authorities
under
the
Treaty
12:00
noon
and
from
1:00
p.m.
to
5:00
p.m.
granting
such
reduction
in
fees,
are
fully
satisfied
and/or
duly
complied
with.
44.2.
Where
the
international
application
incurs
an
additional
fee
other
than
the
search
fee
under
PCT
Rule
RULE
48.
SEPARABILITY
CLAUSE.
–
If
any
provision
in
these
16,
the
applicant
shall
pay
directly
to
the
ISA
such
other
Rules
or
application
of
such
provision
to
any
fees
required
by
the
ISA
in
the
currency,
form
and
circumstance
is
held
invalid,
the
remainder
of
these
manner
prescribed
by
it.
Rules
shall
not
be
affected.
44.3.
The
Schedules
of
Fees
of
the
IB
and
ISAs
are
RULE
49.
FILING
OF
CERTIFIED
COPIES.
–
Mr.
Eduardo
Joson,
published
in
the
PCT
Gazette
and
are
available
at
the
IPO.
Records
Officer
II,
is
hereby
directed
to
immediately
file
three
(3)
certified
copies
of
these
Rules
with
the
Rule
45.
Fees
Payable
to
the
IPEA.
-‐
The
international
University
of
the
Philippines
Law
Center,
and,
one
(1)
preliminary
examination
fee
and
the
handling
fee
under
certified
copy
each
with
the
Office
of
the
President,
the
PCT
Rule
58
shall
be
paid
directly
to
the
IPEA
in
the
Senate
of
the
Philippines,
the
House
of
Representatives,
currency,
form
and
manner
prescribed
by
it.
the
Supreme
Court
of
the
Philippines,
and
the
National
Library.
o 153
Katrina Michelle Mancao
RULE
50.
EFFECTIVITY.
–
Without
prejudice
to
the
patentee,
he
has
the
exclusive
right
of
making,
selling
or
performance
by
the
IPO
of
its
functions
as
a
receiving
using
the
invention.
On
the
assumption
that
petitioner’s
Office,
designated
Office
or
elected
Office
under
the
advertising
units
were
patentable
inventions,
petitioner
Treaty,
from
and
as
of
the
entering
into
effect
of
the
revealed
them
fully
to
the
public
by
submitting
the
Treaty
with
respect
to
the
Philippines
on
17
August
2001,
engineering
drawings
thereof
to
the
National
Library.
these
Rules
shall
take
effect
on
October
22,
2001
after
publication
in
a
newspaper
of
general
circulation
in
the
To
be
able
to
effectively
and
legally
preclude
others
from
Philippines
on
October
4,
2001.
copying
and
profiting
from
the
invention,
a
patent
is
a
primordial
requirement.
No
patent,
no
protection.
The
I. Issuance
or
Refusal
of
Patents
ultimate
goal
of
a
patent
system
is
to
bring
new
designs
and
technologies
into
the
public
domain
through
disclosure.
Ideas,
once
disclosed
to
the
public
without
SECTION
50.
GRANT
OF
PATENT.
–
the
protection
of
a
valid
patent,
are
subject
to
50.1.
If
the
application
meets
the
requirements
of
this
appropriation
without
significant
restraint.
Act,
the
Office
shall
grant
the
patent:
Provided,
That
all
the
fees
are
paid
on
time.
On
one
side
of
the
coin
is
the
public
which
will
benefit
from
new
ideas;
on
the
other
are
the
inventors
who
50.2.
If
the
required
fees
for
grant
and
printing
are
not
must
be
protected.
The
act
secured
to
the
inventor
the
paid
in
due
time,
the
application
shall
be
deemed
to
be
exclusive
right
to
make
use,
and
vend
the
thing
patented,
withdrawn.
and
consequently
to
prevent
others
from
exercising
like
privileges
without
the
consent
of
the
patentee.
It
was
50.3.
A
patent
shall
take
effect
on
the
date
of
the
passed
for
the
purpose
of
encouraging
useful
invention
publication
of
the
grant
of
the
patent
in
the
IPO
Gazette.
and
promoting
new
and
useful
inventions
by
the
protection
and
stimulation
given
to
inventive
genius,
and
SECTION
51.
REFUSAL
OF
THE
APPLICATION.
–
was
intended
to
secure
to
the
public,
after
the
lapse
of
the
exclusive
privileges
granted
the
benefit
of
such
51.1.
The
final
order
of
refusal
of
the
examiner
to
grant
inventions
and
improvements.
the
patent
shall
be
appealable
to
the
Director
in
accordance
with
this
Act.
The
law
attempts
to
strike
an
ideal
balance
between
the
two
interests:
51.2.
The
Regulations
shall
provide
for
the
procedure
by
which
an
appeal
from
the
order
of
refusal
from
the
“The
patent
system
thus
embodies
a
carefully
Director
shall
be
undertaken.
crafted
bargain
for
encouraging
the
creation
and
disclosure
of
new
useful
and
non-‐obvious
SECTION
53.
CONTENTS
OF
PATENT.
–
advances
in
technology
and
design,
in
return
The
patent
shall
be
issued
in
the
name
of
the
Republic
of
for
the
exclusive
right
to
practice
the
invention
the
Philippines
under
the
seal
of
the
Office
and
shall
be
for
a
number
of
years.
The
inventor
may
keep
signed
by
the
Director,
and
registered
together
with
the
his
invention
secret
and
reap
its
fruits
description,
claims,
and
drawings,
if
any,
in
books
and
indefinitely.
In
consideration
of
its
disclosure
records
of
the
Office.
and
the
consequent
benefit
to
the
community,
the
patent
is
granted.
An
exclusive
enjoyment
PEARL
&
DEAN
V.
SHOEMART
(2003),
SUPRA
is
guaranteed
him
for
17
years,
but
upon
the
expiration
of
that
period,
the
knowledge
of
the
Court
decision:
invention
inures
to
the
people,
who
are
thus
For
some
reason
or
another,
petitioner
never
secured
a
enabled
to
practice
it
and
profit
by
its
use.”
patent
for
the
light
boxes.
It
therefore
acquired
no
patent
rights
which
could
have
protected
its
invention,
if
The
patent
law
has
a
three-‐fold
purpose:
“first,
patent
in
fact
it
really
was.
And
because
it
had
no
patent,
law
seeks
to
foster
and
reward
invention;
second,
it
petitioner
could
not
legally
prevent
anyone
from
promotes
disclosures
of
inventions
to
stimulate
further
manufacturing
or
commercially
using
the
contraption.
innovation
and
to
permit
the
public
to
practice
the
There
can
be
no
infringement
of
a
patent
until
a
patent
invention
once
the
patent
expires;
third,
the
stringent
has
been
issued,
since
whatever
right
one
has
to
the
requirements
for
patent
protection
seek
to
ensure
that
invention
covered
by
the
patent
arises
alone
from
the
ideas
in
the
public
domain
remain
there
for
the
free
use
grant
of
patent.
An
inventor
has
no
common
law
right
to
of
the
public.”
a
monopoly
of
his
invention.
He
has
the
right
to
make
use
of
and
vend
his
invention,
but
if
he
voluntarily
It
is
only
after
an
exhaustive
examination
by
the
patent
discloses
it,
such
as
by
offering
it
for
sale,
the
world
is
office
that
a
patent
is
issued.
Such
an
in-‐depth
free
to
copy
and
use
it
with
impunity.
A
patent,
however,
investigation
is
required
because
in
rewarding
a
useful
gives
the
inventor
the
right
to
exclude
all
others.
As
a
154 z
Intellectual Property Law
invention,
the
rights
and
welfare
of
the
community
must
on
the
composition
and
use
of
medicines,
be
be
fairly
dealt
with
and
effectively
guarded.
To
that
end,
they
old
or
new;
on
the
construction
and
use
of
the
prerequisites
to
obtaining
a
patent
are
strictly
ploughs
or
watches
or
churns;
or
on
the
observed
and
when
a
patent
is
issued,
the
limitations
on
mixture
and
application
of
colors
for
painting
its
exercise
are
equally
strictly
enforced.
To
begin
with,
a
or
dyeing;
or
on
the
mode
of
drawing
lines
to
genuine
invention
or
discovery
must
be
demonstrated
produce
the
effect
of
perspective,
would
be
lest
in
the
constant
demand
for
new
appliances,
the
the
subject
of
copyright;
but
no
one
would
heavy
hand
of
tribute
be
laid
on
each
slight
technological
contend
that
the
copyright
of
the
treatise
advance
in
art.
would
give
the
exclusive
right
to
the
art
or
manufacture
described
therein.
The
copyright
There
is
no
such
scrutiny
in
the
case
of
copyrights
nor
of
the
book,
if
not
pirated
from
other
works,
any
notice
published
before
its
grant
to
the
effect
that
a
would
be
valid
without
regard
to
the
novelty
or
person
is
claiming
the
creation
of
a
work.
The
law
want
of
novelty
of
its
subject
matter.
The
confers
the
copyright
from
the
moment
of
creation
and
novelty
of
the
art
or
thing
described
or
the
copyright
certificate
is
issued
upon
registration
with
explained
has
nothing
to
do
with
the
validity
of
the
National
Library
of
a
sworn
ex-‐parte
claim
of
creation.
the
copyright.
To
give
to
the
author
of
the
book
an
exclusive
property
in
the
art
described
Therefore,
not
having
gone
through
the
arduous
therein,
when
no
examination
of
its
novelty
has
examination
for
patents,
the
petitioner
cannot
exclude
ever
been
officially
made,
would
be
a
surprise
others
from
the
manufacture,
sale
or
commercial
use
of
and
a
fraud
upon
the
public.
That
is
the
the
light
boxes
on
the
sole
basis
of
its
copyright
province
of
letters
patent,
not
of
copyright.
certificate
over
the
technical
drawings.
The
claim
to
an
invention
of
discovery
of
an
art
or
manufacture
must
be
subjected
to
the
Stated
otherwise,
what
petitioner
seeks
is
exclusivity
examination
of
the
Patent
Office
before
an
without
any
opportunity
for
the
patent
office
(IPO)
to
exclusive
right
therein
can
be
obtained;
and
a
scrutinize
the
light
box’s
eligibility
as
a
patentable
patent
from
the
government
can
only
secure
it.
invention.
The
irony
here
is
that,
had
petitioner
secured
a
patent
instead,
its
exclusivity
would
have
been
for
17
The
difference
between
the
two
things,
letters
years
only.
But
through
the
simplified
procedure
of
patent
and
copyright,
may
be
illustrated
by
copyright-‐registration
with
the
National
Library
—
reference
to
the
subjects
just
enumerated.
without
undergoing
the
rigor
of
defending
the
Take
the
case
of
medicines.
Certain
mixtures
patentability
of
its
invention
before
the
IPO
and
the
are
found
to
be
of
great
value
in
the
healing
art.
public
—
the
petitioner
would
be
protected
for
50
years.
If
the
discoverer
writes
and
publishes
a
book
This
situation
could
not
have
been
the
intention
of
the
on
the
subject
(as
regular
physicians
generally
law.
do),
he
gains
no
exclusive
right
to
the
manufacture
and
sale
of
the
medicine;
he
gives
In
the
oft-‐cited
case
of
Baker
vs.
Selden,
the
United
that
to
the
public.
If
he
desires
to
acquire
such
States
Supreme
Court
held
that
only
the
expression
of
exclusive
right,
he
must
obtain
a
patent
for
the
an
idea
is
protected
by
copyright,
not
the
idea
itself.
In
mixture
as
a
new
art,
manufacture
or
that
case,
the
plaintiff
held
the
copyright
of
a
book
composition
of
matter.
He
may
copyright
his
which
expounded
on
a
new
accounting
system
he
had
book,
if
he
pleases;
but
that
only
secures
to
developed.
The
publication
illustrated
blank
forms
of
him
the
exclusive
right
of
printing
and
ledgers
utilized
in
such
a
system.
The
defendant
publishing
his
book.
So
of
all
other
inventions
reproduced
forms
similar
to
those
illustrated
in
the
or
discoveries.
plaintiff’s
copyrighted
book.
The
US
Supreme
Court
ruled
that:
The
copyright
of
a
book
on
perspective,
no
matter
how
many
drawings
and
illustrations
it
“There
is
no
doubt
that
a
work
on
the
subject
may
contain,
gives
no
exclusive
right
to
the
of
book-‐keeping,
though
only
explanatory
of
modes
of
drawing
described,
though
they
may
well
known
systems,
may
be
the
subject
of
a
never
have
been
known
or
used
before.
By
copyright;
but,
then,
it
is
claimed
only
as
a
book.
publishing
the
book
without
getting
a
patent
x
x
x.
But
there
is
a
clear
distinction
between
for
the
art,
the
latter
is
given
to
the
public.
the
books,
as
such,
and
the
art,
which
it
is,
intended
to
illustrate.
The
mere
statement
of
Now,
whilst
no
one
has
a
right
to
print
or
the
proposition
is
so
evident
that
it
requires
publish
his
book,
or
any
material
part
thereof,
hardly
any
argument
to
support
it.
The
same
as
a
book
intended
to
convey
instruction
in
the
distinction
may
be
predicated
of
every
other
art,
any
person
may
practice
and
use
the
art
art
as
well
as
that
of
bookkeeping.
A
treatise
itself
which
he
has
described
and
illustrated
o 155
Katrina Michelle Mancao
therein.
The
use
of
the
art
is
a
totally
different
three
(3)
months
before
the
due
date.
The
obligation
to
thing
from
a
publication
of
the
book
explaining
pay
the
annual
fees
shall
terminate
should
the
it.
The
copyright
of
a
book
on
bookkeeping
application
be
withdrawn,
refused,
or
cancelled.
cannot
secure
the
exclusive
right
to
make,
sell
and
use
account
books
prepared
upon
the
plan
55.2.
If
the
annual
fee
is
not
paid,
the
patent
application
set
forth
in
such
book.
Whether
the
art
might
shall
be
deemed
withdrawn
or
the
patent
considered
as
or
might
not
have
been
patented,
is
a
question,
lapsed
from
the
day
following
the
expiration
of
the
which
is
not
before
us.
It
was
not
patented,
period
within
which
the
annual
fees
were
due.
A
notice
and
is
open
and
free
to
the
use
of
the
public.
that
the
application
is
deemed
withdrawn
or
the
lapse
of
And,
of
course,
in
using
the
art,
the
ruled
lines
a
patent
for
non-‐payment
of
any
annual
fee
shall
be
and
headings
of
accounts
must
necessarily
be
published
in
the
IPO
Gazette
and
the
lapse
shall
be
used
as
incident
to
it.
recorded
in
the
Register
of
the
Office.
The
plausibility
of
the
claim
put
forward
by
the
55.3.
A
grace
period
of
six
(6)
months
shall
be
granted
complainant
in
this
case
arises
from
a
for
the
payment
of
the
annual
fee,
upon
payment
of
the
confusion
of
ideas
produced
by
the
peculiar
prescribed
surcharge
for
delayed
payment.
nature
of
the
art
described
in
the
books,
which
have
been
made
the
subject
of
copyright.
In
M. Surrender,
Correction
and
describing
the
art,
the
illustrations
and
diagrams
employed
happened
to
correspond
Amendment
more
closely
than
usual
with
the
actual
work
performed
by
the
operator
who
uses
the
art.
SECTION
56.
SURRENDER
OF
PATENT.
–
The
description
of
the
art
in
a
book,
though
56.1.
The
owner
of
the
patent,
with
the
consent
of
all
entitled
to
the
benefit
of
copyright,
lays
no
persons
having
grants
or
licenses
or
other
right,
title
or
foundation
for
an
exclusive
claim
to
the
art
interest
in
and
to
the
patent
and
the
invention
covered
itself.
The
object
of
the
one
is
explanation;
the
thereby,
which
have
been
recorded
in
the
Office,
may
object
of
the
other
is
use.
The
former
may
be
surrender
his
patent
or
any
claim
or
claims
forming
part
secured
by
copyright.
The
latter
can
only
be
thereof
to
the
Office
for
cancellation.
secured,
if
it
can
be
secured
at
all,
by
letters
patent.”
56.2.
A
person
may
give
notice
to
the
Office
of
his
opposition
to
the
surrender
of
a
patent
under
this
J. Publication
upon
Grant
of
Patents
section,
and
if
he
does
so,
the
Bureau
shall
notify
the
proprietor
of
the
patent
and
determine
the
question.
SECTION
52.
PUBLICATION
UPON
GRANT
OF
PATENT.
–
52.1.
The
grant
of
the
patent
together
with
other
related
56.3.
If
the
Office
is
satisfied
that
the
patent
may
information
shall
be
published
in
the
IPO
Gazette
within
properly
be
surrendered,
he
may
accept
the
offer
and,
as
the
time
prescribed
by
the
Regulations.
from
the
day
when
notice
of
his
acceptance
is
published
in
the
IPO
Gazette,
the
patent
shall
cease
to
have
effect,
52.2.
Any
interested
party
may
inspect
the
complete
but
no
action
for
infringement
shall
lie
and
no
right
description,
claims,
and
drawings
of
the
patent
on
file
compensation
shall
accrue
for
any
use
of
the
patented
with
the
Office.
invention
before
that
day
for
the
services
of
the
government.
K. Term
of
Patent
SECTION
57.
CORRECTION
OF
MISTAKES
OF
THE
OFFICE.
–
SECTION
54.
TERM
OF
PATENT.
–
The
Director
shall
have
the
power
to
correct,
without
fee,
any
mistake
in
a
patent
incurred
through
the
fault
of
the
The
term
of
a
patent
shall
be
twenty
(20)
years
from
the
Office
when
clearly
disclosed
in
the
records
thereof,
to
filing
date
of
the
application.
make
the
patent
conform
to
the
records.
L. Annual
Fees
SECTION
58.
CORRECTION
OF
MISTAKE
IN
THE
APPLICATION.
–
SECTION
55.
ANNUAL
FEES.
–
On
request
of
any
interested
person
and
payment
of
the
55.1.
To
maintain
the
patent
application
or
patent,
an
prescribed
fee,
the
Director
is
authorized
to
correct
any
annual
fee
shall
be
paid
upon
the
expiration
of
four
(4)
mistake
in
a
patent
of
a
formal
and
clerical
nature,
not
years
from
the
date
the
application
was
published
incurred
through
the
fault
of
the
Office.
pursuant
to
Section
44
hereof,
and
on
each
subsequent
anniversary
of
such
date.
Payment
may
be
made
within
156 z
Intellectual Property Law
SECTION
59.
CHANGES
IN
PATENTS.
–
complete
for
it
to
be
carried
out
by
any
person
59.1.
The
owner
of
a
patent
shall
have
the
right
to
skilled
in
the
art;
or
request
the
Bureau
to
make
the
changes
in
the
patent
in
(c)
That
the
patent
is
contrary
to
public
order
order
to:
or
morality.
(a)
Limit
the
extent
of
the
protection
conferred
61.2.
Where
the
grounds
for
cancellation
relate
to
some
by
it;
of
the
claims
or
parts
of
the
claim,
cancellation
may
be
(b)
Correct
obvious
mistakes
or
to
correct
effected
to
such
extent
only.
clerical
errors;
and
SECTION
82.
PATENT
FOUND
INVALID
MAY
BE
CANCELLED.
(c)
Correct
mistakes
or
errors,
other
than
those
–
referred
to
in
letter
(b),
made
in
good
faith:
In
an
action
for
infringement,
if
the
court
shall
find
the
Provided,
That
where
the
change
would
result
patent
or
any
claim
to
be
invalid,
it
shall
cancel
the
same,
in
a
broadening
of
the
extent
of
protection
and
the
Director
of
Legal
Affairs
upon
receipt
of
the
final
conferred
by
the
patent,
no
request
may
be
judgment
of
cancellation
by
the
court,
shall
record
that
made
after
the
expiration
of
two
(2)
years
from
fact
in
the
register
of
the
Office
and
shall
publish
a
notice
the
grant
of
a
patent
and
the
change
shall
not
to
that
effect
in
the
IPO
Gazette.
affect
the
rights
of
any
third
party
which
has
relied
on
the
patent,
as
published.
SECTION
109.
SPECIAL
PROVISIONS
RELATING
TO
UTILITY
59.2.
No
change
in
the
patent
shall
be
permitted
under
MODELS.
-‐
this
section,
where
the
change
would
result
in
the
109.4.
In
proceedings
under
Sections
61
to
64,
the
utility
disclosure
contained
in
the
patent
going
beyond
the
model
registration
shall
be
canceled
on
the
following
disclosure
contained
in
the
application
filed.
grounds:
59.3.
If,
and
to
the
extent
to
which
the
Office
changes
(a)
That
the
claimed
invention
does
not
qualify
the
patent
according
to
this
section,
it
shall
publish
the
for
registration
as
a
utility
model
and
does
not
same.
meet
the
requirements
of
registrability,
in
particular
having
regard
to
Subsection
109.1
and
Sections
22,
23,
24
and
27;
SECTION
60.
FORM
AND
PUBLICATION
OF
AMENDMENT.
–
An
amendment
or
correction
of
a
patent
shall
be
(b)
That
the
description
and
the
claims
do
not
accomplished
by
a
certificate
of
such
amendment
or
comply
with
the
prescribed
requirements;
correction,
authenticated
by
the
seal
of
the
Office
and
signed
by
the
Director,
which
certificate
shall
be
(c)
That
any
drawing
which
is
necessary
for
the
attached
to
the
patent.
Notice
of
such
amendment
or
understanding
of
the
invention
has
not
been
correction
shall
be
published
in
the
IPO
Gazette
and
furnished;
copies
of
the
patent
kept
or
furnished
by
the
Office
shall
include
a
copy
of
the
certificate
of
amendment
or
(d)
That
the
owner
of
the
utility
model
correction.
registration
is
not
the
inventor
or
his
successor
in
title.
N. Cancellation
SECTION
120.
CANCELLATION
OF
DESIGN
REGISTRATION.
–
1. Grounds
120.1.
At
any
time
during
the
term
of
the
industrial
design
registration,
any
person
upon
payment
of
the
required
SECTION
61.
CANCELLATION
OF
PATENTS.
–
fee,
may
petition
the
Director
of
Legal
Affairs
to
cancel
61.1.
Any
interested
person
may,
upon
payment
of
the
the
industrial
design
on
any
of
the
following
grounds:
required
fee,
petition
to
cancel
the
patent
or
any
claim
thereof,
or
parts
of
the
claim,
on
any
of
the
following
(a)
If
the
subject
matter
of
the
industrial
design
grounds:
is
not
registrable
within
the
terms
of
Sections
112
and
113;
(a)
That
what
is
claimed
as
the
invention
is
not
new
or
Patentable;
(b)
If
the
subject
matter
is
not
new;
or
(b)
That
the
patent
does
not
disclose
the
(c)
If
the
subject
matter
of
the
industrial
design
invention
in
a
manner
sufficiently
clear
and
extends
beyond
the
content
of
the
application
as
originally
filed.
o 157
Katrina Michelle Mancao
65.3.
If
the
fee
for
the
printing
of
a
new
patent
is
not
120.2.
Where
the
grounds
for
cancellation
relate
to
a
part
paid
in
due
time,
the
patent
should
be
revoked.
of
the
industrial
design,
cancellation
may
be
effected
to
such
extent
only.
The
restriction
may
be
effected
in
the
65.4.
If
the
patent
is
amended
under
Subsection
65.2
form
of
an
alteration
of
the
effected
features
of
the
hereof,
the
Bureau
shall,
at
the
same
time
as
it
publishes
design.
the
mention
of
the
cancellation
decision,
publish
the
abstract,
representative
claims
and
drawings
indicating
2. Proceedings
clearly
what
the
amendments
consist
of.
SECTION
62.
REQUIREMENT
OF
THE
PETITION.
–
SECTION
66.
EFFECT
OF
CANCELLATION
OF
PATENT
OR
The
petition
for
cancellation
shall
be
in
writing,
verified
CLAIM.
–
by
the
petitioner
or
by
any
person
in
his
behalf
who
The
rights
conferred
by
the
patent
or
any
specified
claim
knows
the
facts,
specify
the
grounds
upon
which
it
is
or
claims
cancelled
shall
terminate.
Notice
of
the
based,
include
a
statement
of
the
facts
to
be
relied
upon,
cancellation
shall
be
published
in
the
IPO
Gazette.
Unless
and
filed
with
the
Office.
Copies
of
printed
publications
restrained
by
the
Director
General,
the
decision
or
order
or
of
patents
of
other
countries,
and
other
supporting
to
cancel
by
Director
of
Legal
Affairs
shall
be
documents
mentioned
in
the
petition
shall
be
attached
immediately
executory
even
pending
appeal.
thereto,
together
with
the
translation
thereof
in
English,
if
not
in
the
English
language.
SECTION
230.
EQUITABLE
PRINCIPLES
TO
GOVERN
PROCEEDINGS.
–
SECTION
63.
NOTICE
OF
HEARING.
–
In
all
inter
partes
proceedings
in
the
Office
under
this
Act,
Upon
filing
of
a
petition
for
cancellation,
the
Director
of
the
equitable
principles
of
laches,
estoppel,
and
Legal
Affairs
shall
forthwith
serve
notice
of
the
filing
acquiescence
where
applicable,
may
be
considered
and
thereof
upon
the
patentee
and
all
persons
having
grants
applied.
or
licenses,
or
any
other
right,
title
or
interest
in
and
to
the
patent
and
the
invention
covered
thereby,
as
appears
of
record
in
the
Office,
and
of
notice
of
the
date
O. Rights
of
Patentee
of
hearing
thereon
on
such
persons
and
the
petitioner.
Notice
of
the
filing
of
the
petition
shall
be
published
in
1. Section
71
the
IPO
Gazette.
SECTION
71.
RIGHTS
CONFERRED
BY
PATENT.
–
SECTION
64.
COMMITTEE
OF
THREE.
–
71.1.
A
patent
shall
confer
on
its
owner
the
following
In
cases
involving
highly
technical
issues,
on
motion
of
exclusive
rights:
any
party,
the
Director
of
Legal
Affairs
may
order
that
the
petition
be
heard
and
decided
by
a
committee
(a)
Where
the
subject
matter
of
a
patent
is
a
composed
of
the
Director
of
Legal
Affairs
as
chairman
product,
to
restrain,
prohibit
and
prevent
any
and
two
(2)
members
who
have
the
experience
or
unauthorized
person
or
entity
from
making,
expertise
in
the
field
of
technology
to
which
the
patent
using,
offering
for
sale,
selling
or
importing
sought
to
be
cancelled
relates.
The
decision
of
the
that
product;
committee
shall
be
appealable
to
the
Director
General.
(b)
Where
the
subject
matter
of
a
patent
is
a
SECTION
65.
CANCELLATION
OF
THE
PATENT.
–
process,
to
restrain,
prevent
or
prohibit
any
65.1.
If
the
Committee
finds
that
a
case
for
cancellation
unauthorized
person
or
entity
from
using
the
has
been
proved,
it
shall
order
the
patent
or
any
process,
and
from
manufacturing,
dealing
in,
specified
claim
or
claims
thereof
cancelled.
using,
selling
or
offering
for
sale,
or
importing
any
product
obtained
directly
or
indirectly
from
65.2.
If
the
Committee
finds
that,
taking
into
such
process.
consideration
the
amendment
made
by
the
patentee
during
the
cancellation
proceedings,
the
patent
and
the
71.2.
Patent
owners
shall
also
have
the
right
to
assign,
or
invention
to
which
it
relates
meet
the
requirement
of
transfer
by
succession
the
patent,
and
to
conclude
this
Act,
it
may
decide
to
maintain
the
patent
as
licensing
contracts
for
the
same.
amended:
Provided,
That
the
fee
for
printing
of
a
new
patent
is
paid
within
the
time
limit
prescribed
in
the
Regulations.
158 z
Intellectual Property Law
PARKE
DAVIS
&
CO.
V.
DOCTOR ’S
PHARMACEUTICALS
the
original
patent
holder
from
unfair
commercial
use
provided
in
Article
39.3
of
the
Agreement
on
Trade-‐
(1983)
Related
Aspects
of
Intellectual
Property
Rights
(TRIPS
Court
decision:
Agreement),
the
Intellectual
Property
Office,
in
An
8%
royalty
rate
on
net
sales
is
reasonable
in
a
consultation
with
the
appropriate
government
agencies,
developing
country
like
the
PH,
vis-‐à-‐vis
a
giant
foreign
shall
issue
the
appropriate
rules
and
regulations
licensors
of
pharmaceutical
products.
It
is
in
fact
midway
necessary
therein
not
later
than
one
hundred
twenty
between
the
rates
in
Canada
and
Norway.
Liberal
(120)
days
after
the
enactment
of
this
law;
treatment
should
be
afforded
to
local
industry
for
as
reasoned
out
by
the
company,
“it
is
so
difficult
to
72.5.
Where
the
act
consists
of
the
preparation
for
compete
with
the
industrial
giants
of
the
drug
industry,
individual
cases,
in
a
pharmacy
or
by
a
medical
among
them
being
the
petitioner
herein,
that
it
always
is
professional,
of
a
medicine
in
accordance
with
a
medical
necessary
that
the
local
drug
companies
should
sell
at
presciption
or
acts
concerning
the
medicine
so
prepared;
much
lower
than
the
prices
of
said
foreign
drug
entities.”
and
Foreign
product
licensor
can
later
on
ask
for
an
increase
in
percentage
rate
of
royalty
fixed
by
the
Director
of
72.6.
Where
the
invention
is
used
in
any
ship,
vessel,
Patents
if
local
sales
of
licensee
should
increase.
aircraft,
or
land
vehicle
of
any
other
country
entering
the
territory
of
the
Philippines
temporarily
or
accidentally":
SECTION
72.
LIMITATIONS
OF
PATENT
RIGHTS.
–
Provided,
That
such
invention
is
used
exclusively
for
the
needs
of
the
ship,
vessel,
aircraft,
or
land
vehicle
and
not
The
owner
of
a
patent
has
no
right
to
prevent
third
used
for
the
manufacturing
of
anything
to
be
sold
within
parties
from
performing,
without
his
authorization,
the
the
Philippines.
acts
referred
to
in
Section
71
hereof
in
the
following
circumstances:
SECTION
73.
PRIOR
USER.
–
72.1.
Using
a
patented
product
which
has
been
put
on
73.1.
Notwithstanding
Section
72
hereof,
any
prior
user,
the
market
in
the
Philippines
by
the
owner
of
the
who,
in
good
faith
was
using
the
invention
or
has
product,
or
with
his
express
consent,
insofar
as
such
use
undertaken
serious
preparations
to
use
the
invention
in
is
performed
after
that
product
has
been
so
put
on
the
his
enterprise
or
business,
before
the
filing
date
or
said
market:
Provided,
That,
with
regard
to
drugs
and
priority
date
of
the
application
on
which
a
patent
is
medicines,
the
limitation
on
patent
rights
shall
apply
granted,
shall
have
the
right
to
continue
the
use
thereof
after
a
drug
or
medicine
has
been
introduced
in
the
as
envisaged
in
such
preparations
within
the
territory
Philippines
or
anywhere
else
in
the
world
by
the
patent
where
the
patent
produces
its
effect.
owner,
or
by
any
party
authorized
to
use
the
invention:
Provided,
further,
That
the
right
to
import
the
drugs
and
73.2.
The
right
of
the
prior
user
may
only
be
transferred
medicines
contemplated
in
this
section
shall
be
available
or
assigned
together
with
his
enterprise
or
business,
or
to
any
government
agency
or
any
private
third
party;
with
that
part
of
his
enterprise
or
business
in
which
the
use
or
preparations
for
use
have
been
made.
72.2.
Where
the
act
is
done
privately
and
on
a
non-‐
commercial
scale
or
for
a
non-‐commercial
purpose:
SECTION
74.
USE
OF
INVENTION
BY
GOVERNMENT.
–
Provided,
That
it
does
not
significantly
prejudice
the
74.1.
A
Government
agency
or
third
person
authorized
by
economic
interests
of
the
owner
of
the
patent;
the
Government
may
exploit
the
invention
even
without
agreement
of
the
patent
owner
where:
72.3.
Where
the
act
consists
of
making
or
using
exclusively
for
experimental
use
of
the
invention
for
(a)
The
public
interest,
in
particular,
national
scientific
purposes
or
educational
purposes
and
such
security,
nutrition,
health
or
the
development
other
activities
directly
related
to
such
scientific
or
of
other
sectors,
as
determined
by
the
educational
experimental
use;
appropriate
agency
of
the
government,
so
requires;
or
72.4.
In
the
case
of
drugs
and
medicines,
where
the
act
includes
testing,
using,
making
or
selling
the
invention
(b)
A
judicial
or
administrative
body
has
including
any
data
related
thereto,
solely
for
purposes
determined
that
the
manner
of
exploitation,
by
reasonably
related
to
the
development
and
submission
the
owner
of
the
patent
or
his
licensee,
is
anti-‐
of
information
and
issuance
of
approvals
by
government
competitive;
or
regulatory
agencies
required
under
any
law
of
the
Philippines
or
of
another
country
that
regulates
the
(c)
In
the
case
of
drugs
and
medicines,
there
is
manufacture,
construction,
use
or
sale
of
any
product:
a
national
emergenvy
or
other
circumstance
of
Provided,
That,
in
order
to
protect
the
data
submitted
by
o 159
Katrina Michelle Mancao
extreme
urgency
requiring
the
use
of
the
exploitation,
which
shall
be
immediately
invention;
or
executory.
(d)
In
the
case
of
drugs
and
medicines,
there
is
74.3.
All
cases
arising
from
the
implementation
of
this
public
non-‐commercial
use
of
the
patent
by
the
provision
shall
be
cognizable
by
courts
with
appropriate
patentee,
without
satisfactory
reason;
or
jurisdiction
provided
by
law.
(e)
In
the
case
of
drugs
and
medicines,
the
No
court,
except
the
Supreme
Court
of
the
Philippines,
demand
for
the
patented
article
in
the
shall
issue
any
temporary
restraining
order
or
Philippines
is
not
being
met
to
an
adequate
preliminary
injunction
or
such
other
provisional
remedies
extent
and
on
reasonable
terms,
as
determined
that
will
prevent
its
immediate
execution.
by
the
Secretary
of
the
Department
of
Health.
74.4.
The
Intellectual
Property
Office
(IPO),
in
74.2.
Unless
otherwise
provided
herein,
the
use
by
the
consultation
with
the
appropriate
government
agencies,
Government,
or
third
person
authorized
by
the
shall
issue
the
appropriate
implementing
rules
and
Government
shall
be
subject,
where
applicable,
to
the
regulations
for
the
use
or
exploitation
of
patented
following
provisions:
inventions
as
contemplated
in
this
section
within
one
hundred
twenty
(120)
days
after
the
effectivity
of
this
(a)
In
situations
of
national
emergency
or
other
law.
circumstances
of
extreme
urgency
as
provided
under
Section
74.1
(c),
the
right
holder
shall
be
SECTION
231.
REVERSE
RECIPROCITY
OF
FOREIGN
LAWS.
–
notified
as
soon
as
reasonably
practicable;
Any
condition,
restriction,
limitation,
diminution,
requirement,
penalty
or
any
similar
burden
imposed
by
(b)
In
the
case
of
public
non-‐commercial
use
of
the
law
of
a
foreign
country
on
a
Philippine
national
the
patent
by
the
patentee,
without
seeking
protection
of
intellectual
property
rights
in
that
satisfactory
reason,
as
provided
under
Section
country,
shall
reciprocally
be
enforceable
upon
nationals
74.1
(d),
the
right
holder
shall
be
informed
of
said
country,
within
Philippine
jurisdiction.
promptly:
Provided,
That,
the
Government
or
third
person
authorized
by
the
Government,
without
making
a
patent
search,
knows
or
has
TRIPS
AGREEMENT
(AGREEMENT
ON
TRADE-‐RELATED
demonstrable
ground
to
know
that
a
valid
ASPECTS
OF
INTELLECTUAL
PROPERTY
RIGHTS),
ARTICLE
6.
patent
is
or
will
be
used
by
or
for
the
EXHAUSTION
–
Government;
For
the
purposes
of
dispute
settlement
under
this
Agreement,
subject
to
the
provisions
of
Articles
3
and
4
(c)
If
the
demand
for
the
patented
article
in
the
nothing
in
this
Agreement
shall
be
used
to
address
the
Philippines
is
not
being
met
to
an
adequate
issue
of
the
exhaustion
of
intellectual
property
rights.
extent
ad
on
reasonable
terms
as
provided
under
Section
74.1
(e),
the
right
holder
shall
be
2. Action
for
infringement
informed
promptly;
(Literal
and
Equivalent)
(d)
The
scope
and
duration
of
such
use
shall
be
limited
to
the
purpose
for
which
it
was
VARGAS
V.
F.M.
YAPTICO
(1919),
SUPRA
authorized;
Court
decision:
When
a
patent
is
sought
to
be
enforced,
"the
question
(e)
Such
use
shall
be
non-‐exclusive;
of
invention,
novelty,
or
prior
use,
and
each
of
them,
are
open
to
judicial
examination."
The
burden
of
proof
to
(f)
The
right
holder
shall
be
paid
adequate
substantiate
a
charge
of
infringement
is
with
the
plaintiff.
remuneration
in
the
circumstances
of
each
Where,
however,
the
plaintiff
introduces
the
patent
in
case,
taking
into
account
the
economic
value
of
evidence,
if
it
is
in
due
form,
it
affords
a
prima
facie
the
authorization;
and
presumption
of
its
correctness
and
validity.
The
decision
of
the
Commissioner
of
Patents
in
granting
the
patent
is
(g)
The
existence
of
a
national
emergency
or
always
presumed
to
be
correct.
The
burden
then
shifts
other
circumstances
of
extreme
urgency,
to
the
defendant
to
overcome
by
competent
evidence
referred
to
under
Section
74.1
(c),
shall
be
this
legal
presumption.
With
all
due
respect,
therefore,
subject
to
the
determination
of
the
President
for
the
critical
and
expert
examination
of
the
invention
of
the
Philippines
for
the
purpose
of
by
the
United
States
Patent
Office,
the
question
of
the
determining
the
need
for
such
use
or
other
validity
of
the
patent
is
one
for
judicial
determination,
and
since
a
patent
has
been
submitted,
the
exact
160 z
Intellectual Property Law
question
is
whether
the
defendant
has
assumed
the
FRANK
V.
BENITO
(1928)
burden
of
proof
as
to
anyone
of
his
defenses.
Court
decision:
The
burden
of
proof
to
substantiate
a
charge
of
As
herein
before
stated,
the
defendant
relies
on
three
infringement
is
with
the
plaintiff.
Where,
however,
the
special
defenses.
One
such
defense,
on
which
the
plaintiff
introduces
the
patent
in
evidence,
if
it
is
in
due
judgment
of
the
lower
court
is
principally
grounded,
and
form,
it
affords
a
prima
facie
presumption
of
its
to
which
appellant
devotes
the
major
portion
of
his
correctness
and
validity.
The
decision
of
the
vigorous
argument,
concerns
the
element
of
novelty,
Commissioner
of
Patents
in
granting
the
patent
is
always
invention,
or
discovery,
that
gives
existence
to
the
right
presumed
to
be
correct.
The
burden
the
shifts
to
the
to
a
patent.
On
this
point
the
trial
court
reached
the
defendant
to
overcome
by
competent
evidence
this
conclusion
that
"the
patented
plow
of
the
plaintiff,
legal
presumption.
Exhibit
D,
is
not
different
from
the
native
plow,
Exhibit
2,
except
in
the
material,
in
the
form,
in
the
weight
and
the
FRANK
V.
KOSUYAMA
(1933),
SUPRA
grade
of
the
result,
the
said
differences
giving
it
neither
Refresher:
a
new
function
nor
a
new
result
distinct
from
the
Defendant
was
charged
with
infringing
upon
the
patent
function
and
the
result
obtained
from
the
native
plow;
rights
of
the
plaintiff
by
manufacturing
and
selling
consequently,
its
production
does
not
presuppose
the
machines
similar
to
the
ones
covered
by
plaintiff’s
exercise
of
the
inventive
faculty
but
merely
of
patent.
Plaintiff,
in
his
complaint,
described
the
machine
mechanical
skill,
which
does
not
give
a
right
to
a
patent
as
having
a
“spindle.”
When
he
amended
his
complaint,
of
an
invention
under
the
provisions
of
the
Patent
Law."
he
omitted
such
feature.
In
thus
finding,
the
court
may
have
been
right,
since
the
Vargas
plow
does
not
appear
to
be
such
a
"combination"
Court
decision:
as
contains
a
novel
assemblage
of
parts
exhibiting
Court
found
that
the
plaintiff’s
invention
shouldn’t
have
invention.
been
protected
by
a
patent
for
its
failure
to
satisfy
the
novelty
condition.
However,
since
the
action
was
A
second
line
of
defense
relates
to
the
fact
that
initiated
by
the
plaintiff
(for
infringement,
against
the
defendant
has
never
made
a
complete
Vargas
plow,
but
defendant),
and
the
defendant
did
not
file
a
cross-‐claim
only
points,
shares,
shoes,
and
heel
pieces,
to
serve
as
against
the
plaintiff,
the
Court
did
not
deem
it
proper
to
repairs.
Defendant's
contention
is,
that
in
common
with
cancel
the
patent
of
the
plaintiff.
However,
it
ruled
that
other
foundries,
he
has
for
years
cast
large
numbers
of
the
defendant
is
not
liable
for
infringement.
plow
points
and
shares
suitable
for
use
either
on
the
native
wooden
plow,
or
on
the
Vargas
plow.
A
difference
has
long
been
recognized
between
repairing
and
G.
SELL
V.
YAP
JUE
(1909)
reconstructing
a
machine.
If,
for
instance,
partial
injuries,
Refresher:
whether
they
occur
from
accident
or
from
wear
and
tear,
Petitioner
Gsell,
had
previously
secured
a
decree
of
to
a
machine
for
agricultural
purposes,
are
made
this
is
permanent
injunction
against
the
respondent,
Yap-‐Jue
only
re-‐fitting
the
machine
for
use,
and
thus
permissible.
prohibiting
the
latter
from
infringing
upon
Gsell's
Even
under
the
more
rigorous
doctrine
of
Leeds
&
Catlin
patented
process
for
manufacturing
curved
cane
Co.
vs.
Victor
Talking
Machine
Co.,
it
may
be
possible
handles
for
walking
sticks,
parasols,
and
umbrellas.
that
all
the
defendant
has
done
is
to
manufacture
and
sell
isolated
parts
to
be
used
to
replace
worn-‐out
parts.
The
injunction
described
the
process
as
involving
the
use
of
a
lamp
or
blow-‐
pipe
fed
with
petroleum
or
mineral
oil.
The
third
defense
is,
that
under
the
provisions
of
the
The
heat
generated
thereby
was
necessary
to
make
the
statute,
an
inventor's
creation
must
not
have
been
in
canes
pliable
enough
that
they
could
be
worked
into
the
public
use
or
on
sale
in
the
United
States
(and
the
desired
curvature.
Philippine
Islands)
for
more
than
two
years
prior
to
his
application.
Without,
therefore,
committing
ourselves
as
After
the
injunction
issued,
however,
Yap-‐Jue
continued
to
the
first
two
defenses,
we
propose
to
base
our
to
use
substantially
the
same
procedure
patented
by
decision
on
the
one
just
suggested
as
more
easily
Gsell,
with
the
exception
of
the
use
of
a
lamp
fueled
by
disposing
of
the
case.
We
do
so
with
full
consciousness
alcohol
instead
of
petroleum
or
mineral
oil.
of
the
doubt
which
arose
in
the
mind
of
the
trial
court,
but
with
the
belief
that
since
it
has
been
shown
that
the
Court
held:
invention
was
used
in
public
at
Iloilo
by
others
than
No
one
infringes
a
patent
for
a
combination
who
does
Vargas,
the
inventor,
more
than
two
years
before
the
not
employ
all
of
the
ingredients
of
the
combination;
but
application
for
the
patent,
the
patent
is
invalid.
if
he
employs
all
the
ingredients,
or
adopts
mere
formal
alterations,
or
substitutes,
for
one
ingredient
another
which
was
well
known
at
the
date
of
the
patent
as
a
proper
substitute
for
the
one
withdrawn,
and
which
o 161
Katrina Michelle Mancao
performs
substantially
the
same
function
as
the
one
known
as
such
at
the
date
of
his
invention,
and
which
withdrawn,
he
does
infringe.
any
constructor
acquainted
with
the
art
will
know
how
to
comply.
The
reason
for
the
qualification
of
the
rule
as
Bona
fide
inventors
of
a
combination
are
as
much
stated
is,
that
such
change
that
is,
the
mere
substitution
entitled
to
equivalents
as
the
inventors
other
patentable
of
a
well-‐
known
element
for
another
where
it
appears
improvements;
by
which
is
meant
that
a
patentee
in
that
the
substituted
element
was
well
known
as
a
usual
such
a
case
may
substitute
another
ingredient
for
any
substitute
for
the
element
left
out
is
merely
a
formal
one,
one
of
the
ingredients
of
his
invention,
if
the
ingredient
and
nothing
better
than
a
colorable
evasion
of
the
substituted
performs
the
same
function
as
the
one
patent.
omitted
and
as
well
known
at
the
date
of
his
patent
as
a
proper
substitute
for
the
one
omitted
in
the
patented
MAGUAN
V.
CA,
SUPRA
combination.
Apply
that
rule
and
it
is
clear
that
an
Court
decision:
alteration
in
a
patented
combination
which
merely
It
will
be
noted
that
the
validity
of
petitioner's
patents
is
substitutes
another
old
ingredient
for
one
of
the
in
question
for
want
of
novelty.
Private
respondent
ingredients
in
the
patented
combination,
is
an
contends
that
powder
puffs
Identical
in
appearance
with
infringement
of
the
patent,
if
the
substitute
performs
the
that
covered
by
petitioner's
patents
existed
and
were
same
function
and
was
well
known
at
the
date
of
the
publicly
known
and
used
as
early
as
1963
long
before
patent
as
a
proper
substitute
for
the
omitted
ingredient.
petitioner
was
issued
the
patents
in
question.
As
correctly
observed
by
respondent
Court
of
Appeals,
Mere
formal
alterations
in
a
combination
in
letters
"since
sufficient
proofs
have
been
introduced
in
patent
are
no
defense
to
the
charge
of
infringement
and
evidence
showing
a
fair
question
of
the
invalidity
of
the
the
withdrawal
of
one
ingredient
from
the
same
and
the
patents
issued
for
such
models,
it
is
but
right
that
the
substitution
of
another
which
was
well
known
at
the
evidence
be
looked
into,
evaluated
and
determined
on
date
of
the
patent
as
a
proper
substitute
for
the
one
the
merits
so
that
the
matter
of
whether
the
patents
withdrawn
is
a
mere
formal
alteration
of
the
issued
were
in
fact
valid
or
not
may
be
resolved."
combination
if
the
ingredient
substituted
performs
substantially
the
same
function
as
the
one
withdrawn.
GODINES
V.
CA
(1993)
Doctrine:
Bona
fide
inventors
of
a
combination
are
as
much
Tests
have
been
established
to
determine
infringement.
entitled
to
suppress
every
other
combination
of
the
These
are:
same
ingredients
to
produce
the
same
result,
not
(a)
literal
infringement;
and
substantially
different
from
what
they
have
invented
and
(b)
the
doctrine
of
equivalents.
caused
to
be
patented
as
to
any
other
class
of
inventors.
All
alike
have
the
right
to
suppress
every
colorable
invasion
of
that
which
is
secured
to
them
by
letters
In
using
LITERAL
INFRINGEMENT
as
a
test,
resort
must
patent.
be
had,
in
the
first
instance,
to
the
words
of
the
claim.
If
accused
matter
clearly
falls
within
the
claim,
A
claim
for
the
particular
means
and
mode
of
operation
infringement
is
made
out
and
that
is
the
end
of
it.
To
described
in
the
specification
extends,
by
operation
of
determine
whether
the
particular
item
falls
within
the
law,
to
the
equivalent
of
such
means
not
equivalent
literal
meaning
of
the
patent
claims,
the
court
must
juxtapose
the
claims
of
the
patent
and
the
accused
simply
because
the
same
result
is
thereby
produced
but
product
within
the
overall
context
of
the
claims
and
equivalent
as
being
substantially
the
same
device
in
structure,
arrangement
and
mode
of
operation.
specifications,
to
determine
whether
there
is
exact
identity
of
all
material
elements.
An
equivalent
device
is
such
as
a
mechanic
of
ordinary
skill
in
construction
of
similar
machinery,
having
the
Recognizing
that
the
logical
fallback
position
of
one
in
the
place
of
defendant
is
to
aver
that
his
product
is
forms,
specifications
and
machine
before
him,
could
substitute
in
the
place
of
the
mechanism
described
different
from
the
patented
one,
courts
have
adopted
without
the
exercise
of
the
inventive
faculty.
the
DOCTRINE
OF
EQUIVALENTS
which
recognizes
that
minor
modifications
in
a
patented
invention
are
All
the
elements
of
the
invention
in
this
case
are
old,
and
sufficient
to
put
the
item
beyond
the
scope
of
literal
the
rule
in
such
cases,
as
before
explained,
undoubtedly
infringement.
Thus,
according
to
this
doctrine,
"an
is
that
a
purpose
can
not
invoke
the
doctrine
of
infringement
also
occurs
when
a
device
appropriates
a
equivalents
to
suppress
all
other
improvements
of
the
prior
invention
by
incorporating
its
innovative
concept
old
machine,
but
he
is
entitled
to
treat
everyone
as
an
and,
albeit
with
some
modification
and
change,
performs
infringer
who
makes,
uses,
or
vends
his
patented
substantially
the
same
function
in
substantially
the
same
improvement
without
any
other
change
than
the
way
to
achieve
substantially
the
same
result."
The
reason
employment
of
a
substitute
for
one
of
its
elements,
well
for
the
doctrine
of
equivalents
is
that
to
permit
the
imitation
of
a
patented
invention
which
does
not
copy
162 z
Intellectual Property Law
any literal detail would be to convert the protection of Doctrine:
the patent grant into a hollow and useless thing. Such The burden of proof to substantiate a charge for patent
imitation would leave room for — indeed encourage — infringement rests on the plaintiff. In the case at bar,
the unscrupulous copyist to make unimportant and petitioner’s evidence consists primarily of its Letters
insubstantial changes and substitutions in the patent Patent No. 14561, and the testimony of Dr. Orinion, its
which, though adding nothing, would be enough to take general manager in the Philippines for its Animal Health
the copied matter outside the claim, and hence outside Products Division, by which it sought to show that its
the reach of the law. patent for the compound methyl 5 propylthio-‐2-‐
benzimidazole carbamate also covers the substance
DEL ROSARIO V. CA (1996) Albendazole.
Doctrine:
It is elementary that a patent may be infringed where From a reading of the 9 claims of Letters Patent No.
the essential or substantial features of the patented 14561 in relation to the other portions thereof, no
invention are taken or appropriated, or the device, mention is made of the compound Albendazole. All that
machine or other subject matter alleged to infringe is the claims disclose are: the covered invention, that is,
substantially identical with the patented invention. In the compound methyl 5 propylthio-‐2-‐benzimidazole
order to infringe a patent, a machine or device must carbamate; the compound’s being anthelmintic but
perform the same function, or accomplish the same nontoxic for animals or its ability to destroy parasites
result by identical or substantially identical means and without harming the host animals; and the patented
the principle or mode of operation must be substantially methods, compositions or preparations involving the
the same. compound to maximize its efficacy against certain kinds
of parasites infecting specified animals.
SMITH KLINE V. CA (2003)
When the language of its claims is clear and distinct, the
Refresher:
patentee is bound thereby and may not claim anything
Smith Kline Beckman Corp., a Pennsylvanian corp., filed
beyond them. And so are the courts bound which may
before the Philippine Patent Office an application for
not add to or detract from the claims matters not
patent over an invention entitled “Methods and
expressed or necessarily implied, nor may they enlarge
Compositions for Producing Biphasic Parasiticide Activity
the patent beyond the scope of that which the inventor
Using Methyl 5 Propylthio-‐2-‐Benzimidazole Carbamate.”
claimed and the patent office allowed, even if the
Letters Patent was issued for the same for a term of 17
patentee may have been entitled to something more
years.
than the words it had chosen would include.
The letters patent provides in its claims that the
It bears stressing that the mere absence of the word
patented invention consisted of a new compound
Albendazole in Letters Patent No. 14561 is not
named methyl 5 propylthio-‐2-‐benzimidazole carbamate
determinative of Albendazole’s non-‐inclusion in the
and the methods or compositions utilizing the
claims of the patent. While Albendazole is admittedly a
compound as an active ingredient in fighting infections
chemical compound that exists by a name different from
caused by gastrointestinal parasites and lungworms in
that covered in petitioner’s letters patent, the language
animals such as swine, sheep, cattle, goats, horses, and
of Letter Patent No. 14561 fails to yield anything at all
even pet animals.
regarding Albendazole. And no extrinsic evidence had
been adduced to prove that Albendazole inheres in
Tryco Pharma Corporation (private respondent) is a
petitioner’s patent in spite of its omission therefrom or
domestic corporation that manufactures, distributes and
that the meaning of the claims of the patent embraces
sells veterinary products including Impregon, a drug that
the same.
has Albendazole for its active ingredient and is claimed
While petitioner concedes that the mere literal wordings
to be effective against gastro-‐intestinal roundworms,
of its patent cannot establish private respondent’s
lungworms, tapeworms and fluke infestation in carabaos,
infringement, it urges this Court to apply the doctrine of
cattle and goats.
equivalents.
Smith Kline sued Tryco Pharma for infringement.
The DOCTRINE OF EQUIVALENTS provides that an
Petitioner argues that under the doctrine of equivalents
infringement also takes place when a device appropriates
for determining patent infringement, Albendazole, the
a prior invention by incorporating its innovative concept
active ingredient it alleges was appropriated by private
and, although with some modification and change,
respondent for its drug Impregon, is substantially the
performs substantially the same function in substantially
same as methyl 5 propylthio-‐2-‐benzimidazole carbamate
the same way to achieve substantially the same result.
covered by its patent since both of them are meant to
Yet again, a scrutiny of petitioner’s evidence fails to
combat worm or parasite infestation in animals.
convince this Court of the substantial sameness of
o 163
Katrina Michelle Mancao
petitioner’s
patented
compound
and
patented
product
or
of
a
product
produced
because
of
a
Albendazole.
While
both
compounds
have
the
effect
of
patented
process
knowing
it
to
be
especially
adopted
for
neutralizing
parasites
in
animals,
identity
of
result
does
infringing
the
patented
invention
and
not
suitable
for
not
amount
to
infringement
of
patent
unless
Albendazole
substantial
non-‐infringing
use
shall
be
liable
as
a
operates
in
substantially
the
same
way
or
by
contributory
infringer
and
shall
be
jointly
and
severally
substantially
the
same
means
as
the
patented
compound,
liable
with
the
infringer.
even
though
it
performs
the
same
function
and
achieves
the
same
result.
In
other
words,
the
principle
or
mode
of
SECTION
75.
EXTENT
OF
PROTECTION
AND
INTERPRETATION
operation
must
be
the
same
or
substantially
the
same.
OF
CLAIMS.
–
75.1.
The
extent
of
protection
conferred
by
the
patent
The
doctrine
of
equivalents
thus
requires
satisfaction
of
the
function-‐means-‐and-‐result
test,
the
patentee
having
shall
be
determined
by
the
claims,
which
are
to
be
the
burden
to
show
that
all
three
components
of
such
interpreted
in
the
light
of
the
description
and
drawings.
equivalency
test
are
met.
75.2.
For
the
purpose
of
determining
the
extent
of
a. Civil
action
protection
conferred
by
the
patent,
due
account
shall
be
taken
of
elements
which
are
equivalent
to
the
elements
expressed
in
the
claims,
so
that
a
claim
shall
be
SECTION
76.
CIVIL
ACTION
FOR
INFRINGEMENT.
–
considered
to
cover
not
only
all
the
elements
as
76.1.
The
making,
using,
offering
for
sale,
selling,
or
expressed
therein,
but
also
equivalents.
importing
a
patented
product
or
a
product
obtained
directly
or
indirectly
from
a
patented
process,
or
the
use
b. Criminal
action
of
a
patented
process
without
the
authorization
of
the
patentee
constitutes
patent
infringement:
Provided,
That,
this
shall
not
apply
to
instances
covered
by
SECTION
84.
CRIMINAL
ACTION
FOR
REPETITION
OF
Sections
72.1
and
72.4
(Limitations
of
Patent
Rights);
INFRINGEMENT.
–
Section
74
(Use
of
Invention
by
Government);
Section
If
infringement
is
repeated
by
the
infringer
or
by
anyone
93.6
(Compulsory
Licensing);
and
Section
93-‐A
in
connivance
with
him
after
finality
of
the
judgment
of
(Procedures
on
Issuance
of
a
Special
Compulsory
License
the
court
against
the
infringer,
the
offenders
shall,
under
the
TRIPS
Agreement)
of
this
Code.
without
prejudice
to
the
institution
of
a
civil
action
for
damages,
be
criminally
liable
therefor
and,
upon
76.2.
Any
patentee,
or
anyone
possessing
any
right,
title
conviction,
shall
suffer
imprisonment
for
the
period
of
or
interest
in
and
to
the
patented
invention,
whose
not
less
than
six
(6)
months
but
not
more
than
three
(3)
rights
have
been
infringed,
may
bring
a
civil
action
years
and/or
a
fine
of
not
less
than
One
hundred
before
a
court
of
competent
jurisdiction,
to
recover
from
thousand
pesos
(P100,000)
but
not
more
than
Three
the
infringer
such
damages
sustained
thereby,
plus
hundred
thousand
pesos
(P300,000),
at
the
discretion
of
attorney's
fees
and
other
expenses
of
litigation,
and
to
the
court.
The
criminal
action
herein
provided
shall
secure
an
injunction
for
the
protection
of
his
rights.
prescribe
in
three
(3)
years
from
date
of
the
commission
of
the
crime.
76.3.
If
the
damages
are
inadequate
or
cannot
be
readily
ascertained
with
reasonable
certainty,
the
court
may
c. Administrative
award
by
way
of
damages
a
sum
equivalent
to
reasonable
royalty.
SECTION
10.2,
SUPRA
-‐ Jurisdiction
of
the
Director
of
Legal
Affairs
76.4.
The
court
may,
according
to
the
circumstances
of
the
case,
award
damages
in
a
sum
above
the
amount
d. Who
can
file?
found
as
actual
damages
sustained:
Provided,
That
the
award
does
not
exceed
three
(3)
times
the
amount
of
SECTION
77.
INFRINGEMENT
ACTION
BY
A
FOREIGN
such
actual
damages.
NATIONAL.
–
76.5.
The
court
may,
in
its
discretion,
order
that
the
Any
foreign
national
or
juridical
entity
who
meets
the
infringing
goods,
materials
and
implements
requirements
of
Section
3
and
not
engaged
in
business
predominantly
used
in
the
infringement
be
disposed
of
in
the
Philippines,
to
which
a
patent
has
been
granted
or
outside
the
channels
of
commerce
or
destroyed,
without
assigned
under
this
Act,
may
bring
an
action
for
compensation.
infringement
of
patent,
whether
or
not
it
is
licensed
to
do
business
in
the
Philippines
under
existing
law.
76.6.
Anyone
who
actively
induces
the
infringement
of
a
patent
or
provides
the
infringer
with
a
component
of
a
164 z
Intellectual Property Law
CRESER
PRECISION
SYSTEM,
INC.
V.
CA
(1998)
SECTION
80.
DAMAGES,
REQUIREMENT
OF
NOTICE.
–
Court
decision:
Damages
cannot
be
recovered
for
acts
of
infringement
Section
42
of
R.A.
165,
otherwise
known
as
the
Patent
committed
before
the
infringer
had
known,
or
had
Law,
explicitly
provides:
reasonable
grounds
to
know
of
the
patent.
It
is
presumed
that
the
infringer
had
known
of
the
patent
if
SECTION.
42.
Civil
action
for
infringement.
–
on
the
patented
product,
or
on
the
container
or
package
Any
patentee,
or
anyone
possessing
any
right,
in
which
the
article
is
supplied
to
the
public,
or
on
the
title
or
interest
in
and
to
the
patented
advertising
material
relating
to
the
patented
product
or
invention,
whose
rights
have
been
infringed,
process,
are
placed
the
words
"Philippine
Patent"
with
may
bring
a
civil
action
before
the
proper
Court
the
number
of
the
patent.
of
First
Instance
(now
Regional
Trial
court),
to
recover
from
the
infringer
damages
sustained
g. Defenses
in
Action
by
reason
of
the
infringement
and
to
secure
an
for
Infringement
injunction
for
the
protection
of
his
right.
Under
the
aforequoted
law,
only
the
patentee
or
his
SECTION
81.
DEFENSES
IN
ACTION
FOR
INFRINGEMENT.
–
successors-‐in-‐interest
may
file
an
action
for
infringement.
In
an
action
for
infringement,
the
defendant,
in
addition
The
phrase
“anyone
possessing
any
right,
title
or
interest
to
other
defenses
available
to
him,
may
show
the
in
and
to
the
patented
invention”
upon
which
petitioner
invalidity
of
the
patent,
or
any
claim
thereof,
on
any
of
maintains
its
present
suit,
refers
only
to
the
patentee’s
the
grounds
on
which
a
petition
of
cancellation
can
be
successors-‐in-‐interest,
assignees
or
grantees
since
brought
under
Section
61
hereof.
actions
for
infringement
of
patent
may
be
brought
in
the
name
of
the
person
or
persons
interested,
whether
as
h. Patent
Found
Invalid
patentee,
assignees
or
grantees,
of
the
exclusive
right.
may
be
Cancelled
Moreover,
there
can
be
no
infringement
of
a
patent
until
a
patent
has
been
issued,
since
whatever
right
one
has
to
the
invention
covered
by
the
patent
arises
alone
from
SECTION
82.
PATENT
FOUND
INVALID
MAY
BE
CANCELLED.
the
grant
of
patent.
In
short,
a
person
or
entity
who
has
–
not
been
granted
letters
patent
over
an
invention
and
In
an
action
for
infringement,
if
the
court
shall
find
the
has
not
acquired
any
right
or
title
thereto
either
as
patent
or
any
claim
to
be
invalid,
it
shall
cancel
the
same,
assignee
or
as
licensee,
has
no
cause
of
action
for
and
the
Director
of
Legal
Affairs
upon
receipt
of
the
final
infringement
because
the
right
to
maintain
an
judgment
of
cancellation
by
the
court,
shall
record
that
infringement
suit
depends
on
the
existence
of
the
patent.
fact
in
the
register
of
the
Office
and
shall
publish
a
notice
to
that
effect
in
the
IPO
Gazette.
e. Presumptions
i. Assessors
SECTION
78.
PROCESS
PATENTS;
BURDEN
OF
PROOF.
–
If
the
subject
matter
of
a
patent
is
a
process
for
SECTION
83.
ASSESSOR
IN
INFRINGEMENT
ACTION.
–
obtaining
a
product,
any
identical
product
shall
be
83.1.
Two
(2)
or
more
assessors
may
be
appointed
by
the
presumed
to
have
been
obtained
through
the
use
of
the
court.
The
assessors
shall
be
possessed
of
the
necessary
patented
process
if
the
product
is
new
or
there
is
scientific
and
technical
knowledge
required
by
the
substantial
likelihood
that
the
identical
product
was
subject
matter
in
litigation.
Either
party
may
challenge
made
by
the
process
and
the
owner
of
the
patent
has
the
fitness
of
any
assessor
proposed
for
appointment.
been
unable
despite
reasonable
efforts,
to
determine
the
process
actually
used.
In
ordering
the
defendant
to
83.2.
Each
assessor
shall
receive
a
compensation
in
an
prove
that
the
process
to
obtain
the
identical
product
is
amount
to
be
fixed
by
the
court
and
advanced
by
the
different
from
the
patented
process,
the
court
shall
complaining
party,
which
shall
be
awarded
as
part
of
his
adopt
measures
to
protect,
as
far
as
practicable,
his
costs
should
he
prevail
in
the
action.
manufacturing
and
business
secrets.
3. Licensing
f. Damages
a. Voluntary
SECTION
79.
LIMITATION
OF
ACTION
FOR
DAMAGES.
–
No
damages
can
be
recovered
for
acts
of
infringement
SECTION
85.
VOLUNTARY
LICENSE
CONTRACT.
–
committed
more
than
four
(4)
years
before
the
institution
of
the
action
for
infringement.
To
encourage
the
transfer
and
dissemination
of
technology,
prevent
or
control
practices
and
conditions
o 165
Katrina Michelle Mancao
that
may
in
particular
cases
constitute
an
abuse
of
arrangement,
except
in
cases
of
early
termination
of
the
intellectual
property
rights
having
an
adverse
effect
on
technology
transfer
arrangement
due
to
reason(s)
competition
and
trade,
all
technology
transfer
attributable
to
the
licensee;
arrangements
shall
comply
with
the
provisions
of
this
Chapter.
87.10.
Those
which
require
payments
for
patents
and
other
industrial
property
rights
after
their
expiration,
SECTION
86.
JURISDICTION
TO
SETTLE
DISPUTES
ON
termination
arrangement;
ROYALTIES.
–
The
Director
of
the
Documentation,
Information
and
87.11.
Those
which
require
that
the
technology
recipient
Technology
Transfer
Bureau
shall
exercise
quasi-‐judicial
shall
not
contest
the
validity
of
any
of
the
patents
of
the
jurisdiction
in
the
settlement
of
disputes
between
technology
supplier;
parties
to
a
technology
transfer
arrangement
arising
from
technology
transfer
payments,
including
the
fixing
87.12.
Those
which
restrict
the
research
and
of
appropriate
amount
or
rate
of
royalty.
development
activities
of
the
licensee
designed
to
absorb
and
adapt
the
transferred
technology
to
local
SECTION
87.
PROHIBITED
CLAUSES.
–
conditions
or
to
initiate
research
and
development
Except
in
cases
under
Section
91,
the
following
programs
in
connection
with
new
products,
processes
or
provisions
shall
be
deemed
prima
facie
to
have
an
equipment;
adverse
effect
on
competition
and
trade:
87.13.
Those
which
prevent
the
licensee
from
adapting
87.1.
Those
which
impose
upon
the
licensee
the
the
imported
technology
to
local
conditions,
or
obligation
to
acquire
from
a
specific
source
capital
goods,
introducing
innovation
to
it,
as
long
as
it
does
not
impair
intermediate
products,
raw
materials,
and
other
the
quality
standards
prescribed
by
the
licensor;
technologies,
or
of
permanently
employing
personnel
indicated
by
the
licensor;
87.14.
Those
which
exempt
the
licensor
for
liability
for
non-‐fulfilment
of
his
responsibilities
under
the
87.2.
Those
pursuant
to
which
the
licensor
reserves
the
technology
transfer
arrangement
and/or
liability
arising
right
to
fix
the
sale
or
resale
prices
of
the
products
from
third
party
suits
brought
about
by
the
use
of
the
manufactured
on
the
basis
of
the
license;
licensed
product
or
the
licensed
technology;
and
87.3.
Those
that
contain
restrictions
regarding
the
87.15.
Other
clauses
with
equivalent
effects.
volume
and
structure
of
production;
SECTION
88.
MANDATORY
PROVISIONS.
–
87.4.
Those
that
prohibit
the
use
of
competitive
The
following
provisions
shall
be
included
in
voluntary
technologies
in
a
non-‐exclusive
technology
transfer
license
contracts:
agreement;
88.1.
That
the
laws
of
the
Philippines
shall
govern
the
87.5.
Those
that
establish
a
full
or
partial
purchase
interpretation
of
the
same
and
in
the
event
of
litigation,
option
in
favor
of
the
licensor;
the
venue
shall
be
the
proper
court
in
the
place
where
the
licensee
has
its
principal
office;
87.6.
Those
that
obligate
the
licensee
to
transfer
for
free
to
the
licensor
the
inventions
or
improvements
that
may
88.2.
Continued
access
to
improvements
in
techniques
be
obtained
through
the
use
of
the
licensed
technology;
and
processes
related
to
the
technology
shall
be
made
available
during
the
period
of
the
technology
transfer
87.7.
Those
that
require
payment
of
royalties
to
the
arrangement;
owners
of
patents
for
patents
which
are
not
used;
88.3.
In
the
event
the
technology
transfer
arrangement
87.8.
Those
that
prohibit
the
licensee
to
export
the
shall
provide
for
arbitration,
the
Procedure
of
Arbitration
of
the
Arbitration
Law
of
the
Philippines
or
the
licensed
product
unless
justified
for
the
protection
of
the
Arbitration
Rules
of
the
United
Nations
Commission
on
legitimate
interest
of
the
licensor
such
as
exports
to
International
Trade
Law
(UNCITRAL)
or
the
Rules
of
countries
where
exclusive
licenses
to
manufacture
Conciliation
and
Arbitration
of
the
International
and/or
distribute
the
licensed
product(s)
have
already
Chamber
of
Commerce
(ICC)
shall
apply
and
the
venue
of
been
granted;
arbitration
shall
be
the
Philippines
or
any
neutral
country;
and
87.9.
Those
which
restrict
the
use
of
the
technology
supplied
after
the
expiration
of
the
technology
transfer
166 z
Intellectual Property Law
88.4.
The
Philippine
taxes
on
all
payments
relating
to
the
93.2.
Where
the
public
interest,
in
particular,
national
technology
transfer
arrangement
shall
be
borne
by
the
security,
nutrition,
health
or
the
development
of
other
licensor.
vital
sectors
of
the
national
economy
as
determined
by
the
appropriate
agency
of
the
Government,
so
requires;
SECTION
89.
RIGHTS
OF
LICENSOR.
–
or
In
the
absence
of
any
provision
to
the
contrary
in
the
technology
transfer
arrangement,
the
grant
of
a
license
93.3.
Where
a
judicial
or
administrative
body
has
shall
not
prevent
the
licensor
from
granting
further
determined
that
the
manner
of
exploitation
by
the
licenses
to
third
person
nor
from
exploiting
the
subject
owner
of
the
patent
or
his
licensee
is
anti-‐competitive;
or
matter
of
the
technology
transfer
arrangement
himself.
"93.4.
In
case
of
public
non-‐commercial
use
of
the
patent
by
the
patentee,
without
satisfactory
reason;
SECTION
90.
RIGHTS
OF
LICENSEE.
–
The
licensee
shall
be
entitled
to
exploit
the
subject
93.5.
If
the
patented
invention
is
not
being
worked
in
the
matter
of
the
technology
transfer
arrangement
during
Philippines
on
a
commercial
scale,
although
capable
of
the
whole
term
of
the
technology
transfer
arrangement.
being
worked,
without
satisfactory
reason:
Provided,
That
the
importation
of
the
patented
article
shall
SECTION
91.
EXCEPTIONAL
CASES.
–
constitute
working
or
using
the
patent;
and
In
exceptional
or
meritorious
cases
where
substantial
93.6.
Where
the
demand
for
patented
drugs
and
benefits
will
accrue
to
the
economy,
such
as
high
technology
content,
increase
in
foreign
exchange
medicines
is
not
being
met
to
an
adequate
extent
and
on
earnings,
employment
generation,
regional
dispersal
of
reasonable
terms,
as
determined
by
the
Secretary
of
the
industries
and/or
substitution
with
or
use
of
local
raw
Department
of
Health.
materials,
or
in
the
case
of
Board
of
Investments,
registered
companies
with
pioneer
status,
exemption
SECTION
93-‐A.
PROCEDURES
ON
ISSUANCE
OF
A
SPECIAL
from
any
of
the
above
requirements
may
be
allowed
by
COMPULSORY
LICENSE
UNDER
THE
TRIPS
AGREEMENT.
–
the
Documentation,
Information
and
Technology
93-‐A.1.
The
Director
General
of
the
Intellectual
Property
Transfer
Bureau
after
evaluation
thereof
on
a
case
by
Office,
upon
the
written
recommendation
of
the
case
basis.
Secretary
of
the
Department
of
Health,
shall,
upon
filing
of
a
petition,
grant
a
special
compulsory
license
for
the
SECTION
92.
NON-‐REGISTRATION
WITH
THE
importation
of
patented
drugs
and
medicines.
The
DOCUMENTATION,
INFORMATION
AND
TECHNOLOGY
special
compulsory
license
for
the
importation
TRANSFER
BUREAU .
–
contemplated
under
this
provision
shall
be
an
additional
special
alternative
procedure
to
ensure
access
to
quality
Technology
transfer
arrangements
that
conform
with
affordable
medicines
and
shall
be
primarily
for
domestic
the
provisions
of
Sections
86
and
87
need
not
be
consumption:
Provided,
That
adequate
remuneration
registered
with
the
Documentation,
Information
and
shall
be
paid
to
the
patent
owner
either
by
the
exporting
Technology
Transfer
Bureau.
Non-‐conformance
with
any
or
importing
country.
The
compulsory
license
shall
also
of
the
provisions
of
Sections
87
and
88,
however,
shall
contain
a
provision
directing
the
grantee
the
license
to
automatically
render
the
technology
transfer
exercise
reasonable
measures
to
prevent
the
re-‐
arrangement
unenforceable,
unless
said
technology
exportation
of
the
products
imported
under
this
transfer
arrangement
is
approved
and
registered
with
provision.
the
Documentation,
Information
and
Technology
Transfer
Bureau
under
the
provisions
of
Section
91
on
The
grant
of
a
special
compulsory
license
under
this
exceptional
cases.
provision
shall
be
an
exception
to
Sections
100.4
and
100.6
of
Republic
Act
No.
8293
and
shall
be
immediately
b. Compulsory
executory.
SECTION
93.
GROUNDS
FOR
COMPULSORY
LICENSING.
–
No
court,
except
the
Supreme
Court
of
the
Philippines,
The
Director
General
of
the
Intellectual
Property
Office
shall
issue
any
temporary
restraining
order
or
may
grant
a
license
to
exploit
a
patented
invention,
even
preliminary
injunction
or
such
other
provisional
remedies
without
the
agreement
of
the
patent
owner,
in
favor
of
that
will
prevent
the
grant
of
the
special
compulsory
any
person
who
has
shown
his
capability
to
exploit
the
license.
invention,
under
any
of
the
following
circumstances:
93-‐A.2.
A
compulsory
license
shall
also
be
available
for
93.1.
National
emergency
or
other
circumstances
of
the
manufacture
and
export
of
drugs
and
medicines
to
extreme
urgency;
any
country
having
insufficient
or
no
manufacturing
capacity
in
the
pharmaceutical
sector
to
address
public
o 167
Katrina Michelle Mancao
health
problems:
Provided,
That,
a
compulsory
license
has
been
granted
by
such
country
or
such
country
has,
95.3.
In
situations
of
national
emergency
or
other
by
notification
or
otherwise,
allowed
importation
into
its
circumstances
of
extreme
urgency,
the
right
holder
shall
jurisdiction
of
the
patented
drugs
and
medicines
from
be
notified
as
soon
as
reasonably
practicable.
the
Philippines
in
compliance
with
the
TRIPS
Agreement.
95.4.
In
the
case
of
public
non-‐commercial
use,
where
93-‐A.3.
The
right
to
grant
a
special
compulsory
license
the
government
or
contractor,
without
making
a
patent
under
this
section
shall
not
limit
or
prejudice
the
rights,
search,
knows
or
has
demonstrable
grounds
to
know
obligations
and
flexibilities
provided
under
the
TRIPS
that
a
valid
patent
is
or
will
be
used
by
or
for
the
Agreement
and
under
Philippine
laws,
particularly
government,
the
right
holder
shall
be
informed
promptly.
Section
72.1
and
Section
74
of
the
Intellectual
Property
Code,
as
amended
under
this
Act.
It
is
also
without
95.5.
Where
the
demand
for
the
patented
drugs
and
prejudice
to
the
extent
to
which
drugs
and
medicines
medicines
in
the
Philippines
is
not
being
met
to
an
produced
under
a
compulsory
license
can
be
exported
as
adequate
extent
and
on
reasonable
terms,
as
allowed
in
the
TRIPS
Agreement
and
applicable
laws.
determined
by
the
Secretary
of
the
Department
of
Health,
the
right
holder
shall
be
informed
promptly.
SECTION
94.
PERIOD
FOR
FILING
A
PETITION
FOR
A
COMPULSORY
LICENSE.
–
SECTION
96.
COMPULSORY
LICENSING
OF
PATENTS
94.1.
A
compulsory
license
may
not
be
applied
for
on
the
INVOLVING
SEMI-‐CONDUCTOR
TECHNOLOGY.
–
ground
stated
in
Subsection
93.5
before
the
expiration
In
the
case
of
compulsory
licensing
of
patents
involving
of
a
period
of
four
(4)
years
from
the
date
of
filing
of
the
semi-‐conductor
technology,
the
license
may
only
be
application
or
three
(3)
years
from
the
date
of
the
patent
granted
in
case
of
public
non-‐commercial
use
or
to
whichever
period
expires
last.
remedy
a
practice
determined
after
judicial
or
administrative
process
to
be
anti-‐competitive.
94.2.
A
compulsory
license
which
is
applied
for
on
any
of
the
grounds
stated
in
Subsections
93.2,
93.3,
93.4,
and
SECTION
97.
COMPULSORY
LICENSE
BASED
ON
INTERDEPENDENCE
OF
PATENTS.
–
93.6
and
Section
97
may
be
applied
for
at
any
time
after
If
the
invention
protected
by
a
patent,
hereafter
referred
the
grant
of
the
patent.
to
as
the
"second
patent,"
within
the
country
cannot
be
worked
without
infringing
another
patent,
hereafter
SECTION
95.
REQUIREMENT
TO
OBTAIN
A
LICENSE
ON
referred
to
as
the
"first
patent,"
granted
on
a
prior
REASONABLE
COMMERCIAL
TERMS.
–
application
or
benefiting
from
an
earlier
priority,
a
95.1.
The
license
will
only
be
granted
after
the
petitioner
compulsory
license
may
be
granted
to
the
owner
of
the
has
made
efforts
to
obtain
authorization
from
the
second
patent
to
the
extent
necessary
for
the
working
patent
owner
on
reasonable
commercial
terms
and
of
his
invention,
subject
to
the
following
conditions:
conditions
but
such
efforts
have
not
been
successful
within
a
reasonable
period
of
time.
97.1.
The
invention
claimed
in
the
second
patent
involves
an
important
technical
advance
of
considerable
95.2.
The
requirement
under
Subsection
95.1
shall
not
economic
significance
in
relation
to
the
first
patent;
apply
in
any
of
the
following
cases:
97.2.
The
owner
of
the
first
patent
shall
be
entitled
to
a
(a)
Where
the
petition
for
compulsory
license
cross-‐license
on
reasonable
terms
to
use
the
invention
seeks
to
remedy
a
practice
determined
after
claimed
in
the
second
patent;
judicial
or
administrative
process
to
be
anti-‐
competitive;
97.3.
The
use
authorized
in
respect
of
the
first
patent
shall
be
non-‐assignable
except
with
the
assignment
of
(b)
In
situations
of
national
emergency
or
other
the
second
patent;
and
circumstances
of
extreme
urgency;
97.4.
The
terms
and
conditions
of
Sections
95,
96
and
98
(c)
In
cases
of
public
non-‐commercial
use;
and
to
100
of
this
Act.
(d)
In
cases
where
the
demand
for
the
SECTION
98.
FORM
AND
CONTENTS
OF
PETITION.
–
patented
drugs
and
medicines
in
the
The
petition
for
compulsory
licensing
must
be
in
writing,
Philippines
is
not
being
met
to
an
adequate
verified
by
the
petitioner
and
accompanied
by
payment
extent
and
on
reasonable
terms,
as
determined
of
the
required
filing
fee.
It
shall
contain
the
name
and
by
the
Secretary
of
the
Department
of
Health.
168 z
Intellectual Property Law
address
of
the
petitioner
as
well
as
those
of
the
100.6.
The
patentee
shall
be
paid
adequate
remuneration
respondents,
the
number
and
date
of
issue
of
the
patent
taking
into
account
the
economic
value
of
the
grant
or
in
connection
with
which
compulsory
license
is
sought,
authorization,
except
that
in
cases
where
the
license
was
the
name
of
the
patentee,
the
title
of
the
invention,
the
granted
to
remedy
a
practice
which
was
determined
statutory
grounds
upon
which
compulsory
license
is
after
judicial
or
administrative
process,
to
be
anti-‐
sought,
the
ultimate
facts
constituting
the
petitioner's
competitive,
the
need
to
correct
the
anti-‐competitive
cause
of
action,
and
the
relief
prayed
for.
practice
may
be
taken
into
account
in
fixing
the
amount
of
remuneration.
SECTION
99.
NOTICE
OF
HEARING.
–
99.1.
Upon
filing
of
a
petition,
the
Director
of
Legal
SECTION
101.
AMENDMENT,
CANCELLATION,
SURRENDER
OF
Affairs
shall
forthwith
serve
notice
of
the
filing
thereof
COMPULSORY
LICENSE.
–
upon
the
patent
owner
and
all
persons
having
grants
or
101.1.
Upon
the
request
of
the
patentee
or
the
licensee,
licenses,
or
any
other
right,
title
or
interest
in
and
to
the
the
Director
of
Legal
Affairs
may
amend
the
decision
patent
and
invention
covered
thereby
as
appears
of
granting
the
compulsory
license,
upon
proper
showing
record
in
the
Office,
and
of
notice
of
the
date
of
hearing
of
new
facts
or
circumstances
justifying
such
thereon,
on
such
persons
and
petitioner.
The
resident
amendment.
agent
or
representative
appointed
in
accordance
with
Section
33
hereof,
shall
be
bound
to
accept
service
of
101.2.
Upon
the
request
of
the
patentee,
the
said
notice
of
the
filing
of
the
petition
within
the
meaning
of
this
Section.
Director
may
cancel
the
compulsory
license:
(a)
If
the
ground
for
the
grant
of
the
99.2.
In
every
case,
the
notice
shall
be
published
by
the
compulsory
license
no
longer
exists
and
is
said
Office
in
a
newspaper
of
general
circulation,
once
a
unlikely
to
recur;
week
for
three
(3)
consecutive
weeks
and
once
in
the
IPO
Gazette
at
applicant's
expense.
(b)
If
the
licensee
has
neither
begun
to
supply
the
domestic
market
nor
made
serious
SECTION
100.
TERMS
AND
CONDITIONS
OF
COMPULSORY
preparation
therefor;
LICENSE.
–
The
basic
terms
and
conditions
including
the
rate
of
(c)
If
the
licensee
has
not
complied
with
the
royalties
of
a
compulsory
license
shall
be
fixed
by
the
prescribed
terms
of
the
license;
Director
of
Legal
Affairs
subject
to
the
following
conditions:
101.3.
The
licensee
may
surrender
the
license
by
a
written
declaration
submitted
to
the
Office.
100.1.
The
scope
and
duration
of
such
license
shall
be
limited
to
the
purpose
for
which
it
was
authorized;
101.4.
The
said
Director
shall
cause
the
amendment,
surrender,
or
cancellation
in
the
Register,
notify
the
100.2.
The
license
shall
be
non-‐exclusive;
patentee,
and/or
the
licensee,
and
cause
notice
thereof
to
be
published
in
the
IPO
Gazette.
100.3.
The
license
shall
be
non-‐assignable,
except
with
that
part
of
the
enterprise
or
business
with
which
the
SECTION
102.
LICENSEE'S
EXEMPTION
FROM
LIABILITY.
–
invention
is
being
exploited;
Any
person
who
works
a
patented
product,
substance
and/or
process
under
a
license
granted
under
this
100.4.
Use
of
the
subject
matter
of
the
license
shall
be
Chapter,
shall
be
free
from
any
liability
for
infringement:
devoted
predominantly
for
the
supply
of
the
Philippine
Provided
however,
That
in
the
case
of
voluntary
licensing,
market:
Provided,
That
this
limitation
shall
not
apply
no
collusion
with
the
licensor
is
proven.
This
is
without
where
the
grant
of
the
license
is
based
on
the
ground
prejudice
to
the
right
of
the
rightful
owner
of
the
patent
that
the
patentee's
manner
of
exploiting
the
patent
is
to
recover
from
the
licensor
whatever
he
may
have
determined
by
judicial
or
administrative
process,
to
be
received
as
royalties
under
the
license.
anti-‐competitive.
PRICE
V.
UNITED
LABORATORIES
(1988)
100.5.
The
license
may
be
terminated
upon
proper
Court
decision:
showing
that
circumstances
which
led
to
its
grant
have
Price
is
owner-‐assignee
of
Phil
Patent
No.
13540
for
a
ceased
to
exist
and
are
unlikely
to
recur:
Provided,
That
pharmaceutical
compound
used
for
anti-‐ulcer.
adequate
protection
shall
be
afforded
to
the
legitimate
Respondent
UniLab
filed
in
the
PPO
a
petition
for
the
interest
of
the
licensee;
and
issuance
of
compulsory
license
to
use
the
patented
compound
in
its
own
brands
of
medicines
and
to
sell,
o 169
Katrina Michelle Mancao
distribute
or
otherwise
dispose
of
such
med
or
SMITH
KLINE
V.
CA
&
DANLEX
RESEARCH
LABORATORIES
pharmaceutical
preparation
in
the
country.
After
hearing,
INC.
(2001)
PPO
granted
UniLab
compulsory
license
subject
to
10
Refresher:
terms
and
conditions.
Also
on
Cimetidine.
This
time
BPTTT
granted
compulsory
WON
Director’s
unilateral
determination
of
the
terms
and
license
to
Danlex.
conditions
of
the
compulsory
license
without
affording
the
Court
decision:
parties
an
opportunity
to
negotiate
the
terms
and
The
grant
of
the
compulsory
license
satisfies
the
conditions
freely
and
by
themselves
is
valid?
requirements
of
Sec.
34
of
Patent
Law.
Director
of
Patents
authorized
to
fix
the
terms
and
[1]
More
than
ten
years
have
passed
since
the
patent
for
conditions
of
the
compulsory
license.
-‐
The
terms
and
Cimetidine
was
issued
to
petitioner
and
its
predecessors-‐
conditions
of
the
compulsory
license
were
fixed
by
the
in-‐interest
Director
of
Patents
after
a
hearing
and
careful
[2]
The
compulsory
license
applied
for
by
private
consideration
of
the
evidence
of
the
parties
and
in
default
of
an
agreement
between
them
as
to
the
terms
respondent
is
for
the
use,
manufacture
and
sale
of
a
medicinal
product
of
the
license.
This
he
is
authorized
to
do
under
Section
[3]
Both
the
appellate
court
and
the
BPTTT
found
that
36
of
Republic
Act
No.
165.
private
respondent
had
the
capability
to
work
Cimetidine
or
to
make
use
thereof
in
the
manufacture
of
a
useful
In
any
event,
since
the
petitioner
Price
will
still
be
paid
product.
royalties
on
the
sales
of
any
products
the
licensee
may
manufacture
using
any
or
all
of
the
patented
compounds,
There
is
no
basis
for
the
allegation
that
the
grant
of
the
petitioner
cannot
complain
of
a
deprivation
of
compulsory
license
to
private
respondent
results
in
the
property
rights
without
just
compensation.
deprivation
of
petitioner’s
property
without
just
compensation.
Even
if
other
entities
like
private
SMITH
KLINE
V.
CA,
BPTTT
&
DOCTORS
PHARMACEUTICAL
respondent
are
subsequently
allowed
to
manufacture,
(1997)
use
and
sell
the
patented
invention
by
virtue
of
a
Refresher:
compulsory
license,
petitioner
as
owner
of
the
patent
Smith
Kline
owns
patent
for
Cimetidine.
Doctors
Pharm
would
still
receive
remuneration
for
the
use
of
such
filed
petition
for
compulsory
licensing
with
BPTTT
for
product
in
the
form
of
royalties.
authorization
to
manufacture
its
own
brand
of
medicine
from
the
drug
Cimetidine
and
to
market
the
resulting
The
rate
of
2.5%
of
net
wholesale
price
fixed
by
the
product
in
the
PH.
BPTTT
granted
the
petition.
Smith
Director
of
the
BPTTT
is
not
unreasonable,
inadequate
Kline
cries
foul.
and
is
in
fact,
in
accord
with
the
Patent
Law.
Reasons:
-‐ The
compulsory
license
awarded
to
private
Court
decision:
respondent
consists
only
of
the
bare
right
to
SC
upheld
the
BPTTT
grant
of
compulsory
license.
use
the
patented
invention
in
the
manufacture
Section
A
(2)
of
Paris
Convention
R.A.
No.
165
of
another
product,
without
any
technical
unequivocally
and
explicitly
respects
the
right
of
assistance
from
the
licensor.
member
countries
to
adopt
legislative
measures
to
-‐ Identical
royalty
rates
have
been
prescribed
by
provide
for
the
grant
of
compulsory
licenses
to
prevent
the
Director
of
the
BPTTT
in
numerous
patent
abuses
which
might
result
from
the
exercise
of
the
cases.
exclusive
rights
conferred
by
the
patent.
4. Right
to
Transfer
and
Section
34
of
R.A.
No.
165,
even
if
the
Act
was
enacted
Assign
prior
to
the
Philippines'
adhesion
to
the
Convention,
fits
well
within
the
aforequoted
provisions
of
Article
5
of
the
Paris
Convention.
In
the
explanatory
note
of
Bill
No.
1156
SECTION
4.2.
which
eventually
became
R.A.
No.
165,
the
legislative
The
term
"TECHNOLOGY
TRANSFER
ARRANGEMENTS"
refers
to
intent
in
the
grant
of
a
compulsory
license
was
not
only
contracts
or
agreements
involving
the
transfer
of
to
afford
others
an
opportunity
to
provide
the
public
systematic
knowledge
for
the
manufacture
of
a
product,
with
the
quantity
of
the
patented
product,
but
also
to
the
application
of
a
process,
or
rendering
of
a
service
prevent
the
growth
of
monopolies.
including
management
contracts;
and
the
transfer,
assignment
or
licensing
of
all
forms
of
intellectual
Certainly,
the
growth
of
monopolies
was
among
the
property
rights,
including
licensing
of
computer
abuses
which
Section
A,
Article
5
of
the
Convention
software
except
computer
software
developed
for
mass
foresaw,
and
which
our
Congress
likewise
wished
to
market.
prevent
in
enacting
R.A.
No.
165.
170 z
Intellectual Property Law
SECTION
103.
TRANSMISSION
OF
RIGHTS.
–
however,
That
neither
of
the
joint
owners
shall
be
103.1.
Patents
or
applications
for
patents
and
invention
entitled
to
grant
licenses
or
to
assign
his
right,
title
or
interest
or
part
thereof
without
the
consent
of
the
other
to
which
they
relate,
shall
be
protected
in
the
same
way
owner
or
owners,
or
without
proportionally
dividing
the
as
the
rights
of
other
property
under
the
Civil
Code.
proceeds
with
such
other
owner
or
owners.
(Sec.
54,
R.A.
No.
165)
103.2.
Inventions
and
any
right,
title
or
interest
in
and
to
patents
and
inventions
covered
thereby,
may
be
SEE
SECTIONS
85-‐92,
SUPRA
(ON
VOLUNTARY
LICENSING).
assigned
or
transmitted
by
inheritance
or
bequest
or
may
be
the
subject
of
a
license
contract.
ALBANA
V.
DIRECTOR
OF
PATENTS
(1953)
SECTION
104.
ASSIGNMENT
OF
INVENTIONS.
–
Court
decision:
An
assignment
may
be
of
the
entire
right,
title
or
interest
Assignment
of
patents
and
inventions
covered
thereby
in
and
to
the
patent
and
the
invention
covered
thereby,
may
be
recorded
in
the
books
and
records
and
kept
for
or
of
an
undivided
share
of
the
entire
patent
and
the
purpose
in
the
Patent
Office
if
presented
in
due
form.
invention,
in
which
event
the
parties
become
joint
BUT
where
a
person
other
than
the
inventor
files
a
owners
thereof.
An
assignment
may
be
limited
to
a
motion
with
the
Director
of
Patents
praying
that
the
specified
territory.
applicant-‐inventor
be
compelled
to
sign
the
contract
executed
by
a
co-‐applicant-‐inventor
and
both
applicant-‐
inventors
to
acknowledge
it
before
a
notary
public
as
SECTION
105.
FORM
OF
ASSIGNMENT.
–
well
as
another
document
which
refers
to
the
minutes
of
The
assignment
must
be
in
writing,
acknowledged
a
meeting
of
the
organizers
of
the
manufacturing
before
a
notary
public
or
other
officer
authorized
to
corporation,
and
then
to
have
both
documents
recorded
administer
oath
or
perform
notarial
acts,
and
certified
in
the
Patent
Office
and
in
the
office
of
the
registrar
of
under
the
hand
and
official
seal
of
the
notary
or
such
deeds,
the
Director
of
Patents
has
no
power
and
other
officer.
authority
to
compel
the
applicant-‐inventors
to
do
what
the
movant
is
asking
them
to
do.
SECTION
106.
RECORDING.
–
106.1.
The
Office
shall
record
assignments,
licenses
and
What
the
movant
asks
the
Director
of
Patents
to
do
for
other
instruments
relating
to
the
transmission
of
any
him
is
essentially
a
judicial
function
which
would
require
right,
title
or
interest
in
and
to
inventions,
and
patents
or
the
determination
of
finding
by
a
court
of
competent
application
for
patents
or
inventions
to
which
they
relate,
jurisdiction
as
to
whether
there
was
a
meeting
of
the
which
are
presented
in
due
form
to
the
Office
for
minds
of
the
contracting
parties
before
it
could
compel
registration,
in
books
and
records
kept
for
the
purpose.
any
of
them
to
perform
what
the
movant
prays
the
court
The
original
documents
together
with
a
signed
duplicate
to
order
him
to
do.
thereof
shall
be
filed,
and
the
contents
thereof
should
be
kept
confidential.
If
the
original
is
not
available,
an
authenticated
copy
thereof
in
duplicate
may
be
filed.
Upon
recording,
the
Office
shall
retain
the
duplicate,
return
the
original
or
the
authenticated
copy
to
the
party
who
filed
the
same
and
notice
of
the
recording
shall
be
published
in
the
IPO
Gazette.
106.2.
Such
instruments
shall
be
void
as
against
any
subsequent
purchaser
or
mortgagee
for
valuable
consideration
and
without
notice,
unless,
it
is
so
recorded
in
the
Office,
within
three
(3)
months
from
the
date
of
said
instrument,
or
prior
to
the
subsequent
purchase
or
mortgage.
SECTION
107.
RIGHTS
OF
JOINT
OWNERS.
–
If
two
(2)
or
more
persons
jointly
own
a
patent
and
the
invention
covered
thereby,
either
by
the
issuance
of
the
patent
in
their
joint
favor
or
by
reason
of
the
assignment
of
an
undivided
share
in
the
patent
and
invention
or
by
reason
of
the
succession
in
title
to
such
share,
each
of
the
joint
owners
shall
be
entitled
to
personally
make,
use,
sell,
or
import
the
invention
for
his
own
profit:
Provided,
o 171
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